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31/01/2020
20/01/2020
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ECTA Member’s Voice: Benelux IPO abolishes paper applications and changes Rules on evidence submission
04/12/2020
By Andrej Bukovnik, Data Committee member, Bukovnik & Kulbaba IP Guardians (BE) On 1 December 2020, the Benelux Intellectual Property Office (BOIP) issued a decision to abolish paper applications for trade marks and designs. The decision will come into force on 1 January 2021 and paper applications filed after that date will be disregarded. On the same day, the BOIP's Director General issued new Rules governing the submission of documents and evidence in opposition and cancellation proceedings as well as provisional refusal proceedings. The new Rules, which will also come into force on 1 January 2021, will introduce an obligation to bundle and number pieces of evidence, introduce tables of content for easier identification of each piece of evidence and recommend that a limit of 110 pages of evidence materials is observed. 1. Abolishment of paper applications and e-communication Following the abolishment of applications sent via fax on 1 November 2020, the abolishment of paper applications for trade marks and designs is another BOIP's step which reflects modern and most common means of communication with the Office. In their announcement of the change, BOIP explained that, in recent years, over 99% of all applications were filed electronically via “My BOIP” platform, while in 2019 there was not a single design application received in the paper form. According to BOIP, the new exclusive means of communication eliminates the risk of manual-entry errors, increases the speed of document processing and aligns the single method of applying for Benelux trade marks and designs with the one already used for international applications. In addition, BOIP believes the new approach reflects developments in electronic filing in Benelux countries and reduces the costs of maintaining a paper-entry infrastructure. BOIP's online services already allows full electronic communication between the Office and its clients. "My BOIP" Message Box allows the exchange of all e-communications related to national and international applications, oppositions, renewals, transfers, name/address changes and agent information, while online contact forms are used for cancellation actions and recordal/cancellation of pledges, licence or seizure, as well as for limitations of goods and services. 2. Changes to the Rules on supporting documents and evidence submission According to the BOIP communication, the aim of the new Rules on submission of documents and evidence is to help parties ensure that large quantities of evidence are correctly interpreted and understood and that it is immediately clear which part of the substantiation and legal grounds is supported by each piece of evidence. They should also help reduce unnecessary work and processing time for the BOIP and the parties involved. As of 1 January 2021, any evidence not meeting the criteria described below will be rejected by the BOIP: All pieces of evidence and documents must be included in a bundle, which must start with a table of contents indicating: i) the number of each piece of numbered evidence/document within the bundle; ii) a short description of each piece of evidence; iii) the facts proved by each piece of evidence. Examples of short descriptions and the facts they prove (provided by the BOIP) include: • "Invoices for [products] with [brand] from period [month year] - [month year]; including turnover figures for [products] with [brand] from period [month year] - [month year]". • "Examples of advertisements for [products] with [brand] in [newspaper, country]; [magazine, country] from period [month year] - [month year]". • "Market research by [name of research institute] on knowledge of [trade mark] in [country], d.d. [dd-mm-yyyy]". • Annual reports of [submitter] covering the period [year] - [year]. When relying on the evidence in substantiation of a claim, grounds or arguments, a number of the referenced evidence should be included in the text, which allows easier identification of the exact document discussed. This helps parties to the dispute to refer more easily to the piece of evidence when it supports more than one statement or legal ground. To make identification of relevant parts of larger documents easier (for example in a long article, a full annual report, or a full-page advertisement), relevant parts should be marked or highlighted with an index, page marker, or a similar precise indicator. Finally, BOIP encourages the parties to limit the size of bundles of evidence. BOIP strongly recommends observing a maximum of 110 pages. New Rules will apply to all proceedings where an invitation to submit evidence is issued by the BOIP after 1 January 2021 or to proceedings where a provisional refusal was pronounced after that date. Source: https://www.boip.int/en/entrepreneurs/news/registering-a-trademark-or-design-from-2021-online-only https://www.boip.int/en/ip-professionals/news/boip-introduces-new-rules-for-submitting-evidence https://www.boip.int/en/explanation-of-rule ---- The views expressed are those of our members and not necessarily of ECTA as an association. The content has not been subjected to a verification process, the accuracy of the information contained in the article is responsibility of the author.
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EUIPO TUESDAY WEBINARS IN DECEMBER and other EUIPO updates
04/12/2020
On Tuesdays EUIPO’s Academy offers webinar courses of 30 to 60 minutes. These sessions are open to all and a live chat with the speakers will be made available. One day after the broadcast the recorded webinars will be available online. The December schedule of the webinars is as follows: Tuesday 8 December, 10:00-11:00 (CET): Decisions of the Trimester of the GC and the CJEU - Adavanced Tuesday 8 December, 11:30-12:30 (CET): Digits and numbers: When do they COUNT as trade marks? - Intermediate Tuesday 15 December, 10:00-10:30 (CET): The new services offered by alternative dispute resolution - Basic Tuesday 15 December, 11:00-12:00 (CET): Decisions of the Trimester of the EUIPO Boards of Appeal - Advanced Visit the Academy's Calendar to access the webinars and see the latest updates for the upcoming months. On the EUIPO Learning Portal you can also find the following recently published eLearning courses: eSearch Case Law Database and Automatic Translation - Advanced - link Case Law Publications - Advanced - link Use of a trade mark in a form differing from the one registered - Convergence Programme 8 - Advanced - link. For further information please visit the Academy's Learning Portal Please, note that the EUIPO’s Executive Director has recently announced by Decision No EX-20-9 the abolition of the fax transmission option for EUTM and RCD procedures as of 1 March 2021, while the EUIPO’s User Area will play an even more important role. To find out more, please consult the Decision.
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COMMISSION PUBLISHED THE EVALUATION OF THE OBSERVATORY – APPLICATION OF REGULATION No 386/2012
02/12/2020
The European Commission has recently published the Evaluation of the European OBSERVATORY on Infringements of Intellectual Property Rights – application of the Regulation (EU) No 386/2012. The report showed that thanks to the work carried out by the EUIPO from 2012 to 2019, with its observatory team, network of stakeholders and departments of the Commission, the work of EU bodies, national authorities and right holders in IP enforcement has been made easier. According to the report, 'the EUIPO has become a hub of excellence on IP infringements, a central source of knowledge, development and sharing of best practice in the EU and internationally. The EUIPO acts as a facilitator and driver for cooperation between national authorities and right holders across the EU and is an important contributor to the Commission’s initiatives in IP within the EU and further afield'. --- ECTA gave input to the public consultation, which took place in this topic in 2018.
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COMMISSION PUBLISHED THE INCEPTION IMPACT ASSESSMENT ON GI PROTECTION AT EU LEVEL FOR NON-AGRI PRODUCTS
02/12/2020
The European Commission has recently published the Inception Impact Assessment (IIA) on GI protection at EU level for non-agricultural products which is open for feedback until 28 December 2020. There is currently no harmonised mechanism for the protection of GIs of non-agricultural products. Those products often make an important part of local identity, attract tourism and are an important source of jobs. A uniform system could support producers stay competitive and cooperate in niche markets, provide consumers with better visibility and authenticity indications for these products, as well as boost regional economies. Feedback will be taken into account for further development and fine tuning of the initiative. --- ECTA GI Committee is looking into the issues of non-agri GIs. If you are interested in this topic and would like to join our GI Committee, do not miss the General Committee Elections coming up in January 2021.
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WIPO ANTI-CYBERSQUATTING SERVICE: 50.000 CASES
01/12/2020
The WIPO Arbitration and Mediation Center has administered its 50.000th cybersquatting case, after two decades of pro-consumer activity. The Uniform Domain Name Dispute Resolution Policy (UDRP) is the heart of WIPO anti-cybersquatting service created in 1999 by WIPO, an essential tool used by brand owners to combat abuse of their trademarks in domain names. Any domain name registered in the international domains, such as .com, is subject to this dispute resolution mechanism. Many operators of national domains, such as .ch and .io, have also been adopting this WIPO service. According to WIPO, the COVID-19 pandemic has increased cybersquatting cases filed with WIPO Arbitration and Mediation Center. From January to October 2020, the WIPO Center handled 3.405 cases, an 11% increase over the same period during 2019. To read the press release, please click here.
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SIGN UP TO ECTA WEBINAR: Is a design reform needed? 3D printing / virtual printing?
01/12/2020
ECTA is ready to provide our members and the IP Community with another engaging discussion in the field of IP. If you are an ECTA member, remember that you can participate at a reduced fee! • 4 December 2020 (10:00 - 12:00 Brussels time) Is a design reform needed? 3D printing / virtual printing? ECTA Design Committee Chair and moderator Andrea De Gaspari (DeosIP, IT), together with Amaryllis Verhoeven and Virginie Fossoul (European Commission, BE), Mette Andersen (LEGO System A/S, DK), Dinusha Mendis (Bournemouth University, UK) and Katri Kiviniemi (Castrén & Snellman, FIN) will convene to analyse how 3D printing and virtual printing issues will be treated in the context of the upcoming reform of the design legislation, which are the grey areas and which legal questions need to be addressed. REGISTER HERE The webinar is open to all and will be held in English via the Zoom Webinar platform. The cost is 50,00€ for ECTA members and officials/80,00€ for non-members. Upon request, you will receive a certificate of attendance, in order to request CLE credits from national Bar Associations, if needed. CLE credits are awarded or are positively considered by the responsible authorities in the Benelux, France, Poland, Germany, Estonia, Italy, UK, Cyprus, Hungary, Romania and Lithuania, among others. ECTA has contacted the responsible organizations in all other Member States, where CLE credits are required. If you’d like to join our learning hub, seize the opportunity and reserve your place!
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EUIPO launched GIview
26/11/2020
The EUIPO recently launched GIview at the EUIPO/DG AGRI online conference Strengthening GIs, a new search database for all geographical indications (GIs) protected at European Union level. This new tool provides a single entry point for data on GIs registered in the EU, and is a useful asset for consumers, producers and IP professionals. GIview also contains detailed information on non-EU GIs protected at EU level through bilateral and multilateral agreements, and on EU GIs protected in non-EU countries. The database is continually updated with official registered data from the European Commission (DG AGRI) and is maintained by the EUIPO. GIs are a key economic asset for the EU: according to research by the EUIPO and the European Patent Office, industries intensive in GI rights support nearly 400.000 jobs across the EU, and contribute over €20 billion to the EU’s GDP. In addition, a study of the European Commission puts the yearly sales value of GI-protected products at €74.76 billion annually, a fifth of which results from exports outside the EU. The tool contains data such as GI type (PDO, PGI, GI), priority date, legal status, basis of protection in relation to all GIs covering wines, spirit drinks and aromatised wines, agricultural products and foodstuffs protected at EU level. The database is made open to national authorities and to producer groups to upload extended data, such as the contact data of the GI producer groups and control bodies, maps, photographs of the product, product description, the geographical area, sustainability statements, and other information. This is designed both to maximize information about GIs, and to directly support anti-fraud authorities, who will easily see the descriptions and photos of genuine product and be able to directly contact the concerned authorities and the producer group of the genuine product in case of an investigation. A video by EUIPO introducing the tool is available on YouTube.
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IP ACTION PLAN ADOPTED BY THE EUROPEAN COMMISSION
25/11/2020
The European Commission has just published the IP Action Plan to help companies, in particular SMEs, to make the most in valorising their intangible assets. These assets are indeed increasingly important as IP-intensive industries account for 45% of all GDP and 93% of all EU exports, while the added value of IP is growing across most EU industrial ecosystems. The Action Plan builds on the strengths of the EU IP framework to support EU economic recovery and resilience in the most relevant economic areas. In particular, it consists in the following key steps and respective measures: - Improve the protection of IP The document proposes to enhance some of the existing IP tools in order to make them fit for the digital age, including improving the supplementary protection certificates for patented medicinal and plant protection products and modernising EU design protection. Also, it aims at enhancing the protection of agricultural geographical indications and considers the feasibility of a GI protection system for non-agricultural products at EU level. The European Commission launches an industry dialogue to address the impact of new technologies (such as AI and block chain) on the IP system. The goal is to let companies have access to fast, effective and affordable protection tools as well as decrease the current fragmentation and complexity. The document invites Member States for a quick rollout of the unitary patent system to create a one-stop-shop for patent protection and enforcement across the EU. - Enhance the uptake of IP by SMEs EU innovators and creators, especially SMEs, are often not aware of the advantages of integrating IP in their business strategy. In this regard, European Commission proposes measures to enhance information and advice. It will support SMEs, affected by the COVID pandemic, to better manage their IP portfolios via a new financial assistance scheme with € 20 million provided from EUIPO funds for the first year. In addition, the European Commission will also make IP advice and help available to all participants of EU funded research and innovation programmes as well as work with all stakeholders to better valorise IPR across the R&I community. Also, it acts to make it easier to use IP as a lever for access to finance. - Facilitate the sharing of IP to increase the technological uptake in the industry The document aims to protect intangibles but also aims to enhance the access to critical intangibles. Recognising the relevant role the IP system can play in tackling health emergencies, the European Commission proposes ways to facilitate the sharing of critical IP in times of crisis, while at the same time ensuring return on investment. The Commission will also work on an enhanced copyright infrastructure, to better mobilise IP-protected data as well as boost transparency and predictability in the licensing of standard-essential patents which are key element for the digital transformation of EU industry. - Fight counterfeiting and improve the enforcement of IPRs As the import of counterfeited and pirated goods amounts to 6.8% of EU GDP, the European Commission will enhance an enforcement of IPRs. As a complement to the upcoming Digital Services Act package, it will establish an EU anti-counterfeiting toolbox to promote and facilitate effective cooperation between IPR holders, intermediaries (such as online market places) and law enforcement authorities, mainstream best practice as well as the use of adequate tools and new technologies. - Promote a global level playing field Our businesses still face great challenges when operating in third countries. For this reason, the European Commission aims to strengthen the EU position as a global standard-setter in IP. It will also enhance the EU response to unfair practices committed by third country players (e.g. industrial espionage, attempts to misappropriate IP in the context of R&D cooperation). Commissioner for the Internal Market Thierry Breton said: “Europe is home to some of the world's leading innovations, but companies are still not fully able to protect their inventions and capitalise on their intellectual property. Today, we are proposing to overhaul our intellectual property system to strengthen Europe's ability to develop next generation technologies, reflect advances in data and AI; allow companies to quickly pool their knowledge in times of crisis, and support Europe's path towards economic recovery and the green transition.” To find out more, please click here.
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EUIPO: IP PERCEPTION STUDY 2020
24/11/2020
Today, the EUIPO has published its IP Perception Study 2020, an updated edition on how IP rights are perceived by EU citizens as well as a roadmap for all the EU countries about counterfeiting and piracy attitudes and behaviours. In total, 25.636 interviews were conducted with EU residents aged 15 and above. Following the previous surveys by the EUIPO in 2013 and 2017, this third edition shows an encouraging change in understanding and attitudes. The vast majority of EU citizens agree about the importance that those who invest time and money in innovation have their rights protected and are paid for their work, with a large increase in particularly for artists and creators. People also seem to have a better understanding of IP rights in general, which means they will be less inclined to infringe them. There has been a slight drop from 7% to 5% for the intentional purchase of counterfeits and from 10% to 8% for intentional piracy. Young people continue to be the biggest group that buy counterfeits and download illegally. At the same time, the trend to perceive the purchase of counterfeits as harmful continues to rise up from 12% to 17%. This is likely to be reinforced by the public response against fake medicines and personal protective equipment during the Covid-19 pandemic. As concerns downloads, EU citizens are now more willing to pay for legal content, especially if it is made available at a reasonable price. This change may be partially linked to the increase in the availability of legal sources. Such changes and their reasons need to be further investigated, and this updated document will continue to be a relevant resource for researchers, IP professionals and policymakers. Nevertheless, these data will help stakeholders at the national level to better combat IP crime and shape future public awareness strategies. If you would like to consult the infographic of the Study, please click here. If you would like to consult the executive summary of the Study, please click here.
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ECTA MEMBERS’ VOICE: UK IPO Guidance re new IP law post Brexit
22/11/2020
By Carin Burchell, ECTA International Trade Committee Secretary, Publications Committee and Supervisory Board member, BRANDED! (UK) On 28 October, the UK IPO published information about the operation of the IP system and the IPO itself after the end of the transition period on 31 December 2020 here. Key changes will be made to the UK IP law with effect from 1 January 2021 in order to ensure a smooth departure from the EU IP systems as follows: Trade Marks - Without any application or fee, the UK IPO will create a comparable UK trade mark for every registered EU trade mark (EUTM). Each right will automatically: • be recorded on the UK trade mark register • have the same legal status as if applied for under UK law • keep the original EUTM filing date • keep the original priority or UK seniority dates • be a fully independent UK right which will exist separately from the original EUTM • be able to be accessed on GOV.UK from which a screen shot can be taken as evidence of the existence of the right EUTMs which have not yet reached registration at the end of the transition period will have 9 months to apply in the UK for the same protection. Fees will then be payable, and the application will be examined and published for opposition purposes. Both digital and paper forms will contain a new section for claiming the earlier EUTM filing date. Designs - Re-registered UK designs will be created automatically with no application form nor fee payable in the same way as trade marks (see above). Any RCDs which have not yet reached registration or have deferred publication at the end of the transition period will have 9 months to apply in the UK for the same protection. UK application fees will then be payable and the application will be subject to UK examination requirements. Both digital and paper forms will contain a new section for claiming the earlier filing date of the corresponding RCD application. International Trade Marks and Designs - Which designate the EU will continue to have protection in the UK under the terms of the Withdrawal Agreement (WA) by creating: • a comparable UK trade mark for every international trade mark (EU) that is protected at the end of the transition period • a re-registered UK design for every international design (EU) that is protected at the end of the transition period Where an international trade mark or design designating the EU has been applied for, but is not yet protected, the holder will have 9 months to apply for the same right as a UK trade mark or design. UK application fees will then be payable, and the application will be subject to UK examination requirements and trade marks publication requirements. Unregistered Designs - a “supplementary unregistered design” (SUD) will become available in UK law. This will enable SUDs to continue to be protected in the UK (only) for the remainder of their 3 year term. The SUD will be established by first disclosure in the UK or another qualifying country. It could destroy the novelty of the design should you later seek to establish UK unregistered rights and business will therefore need to consider carefully where to disclose their products to ensure they have adequate protection in their most important market. Guidance for parallel trade between the UK and the EEA - The IP rights in goods placed on the UK market by or with the consent of the right holder after the transition period may no longer be considered exhausted in the EEA and may therefore need the right holder’s consent. The Guidance also states that IP rights in goods placed on the EEA market by, or with the consent of the right holder after the transition period will continue to be considered exhausted in the UK. The Guidance also states that, in consequence, parallel imports into the UK from the EEA will be unaffected. Comment – however, in the author’s view, since Article 61 WA states:” Intellectual property rights which were exhausted both in the Union and in the United Kingdom before the end of the transition period under the conditions provided for by Union law shall remain exhausted both in the Union and in the United Kingdom, ” and does not address the position of goods placed on the EEA market after the end of the transition period, the Guidance on this aspect therefore needs to be approached with some caution. Actions for parallel exporters of IP protected goods to the EEA and actions for IP rights holders – suggests that parallel exporters may need to review their business arrangements, business model or supply chain based on the outcome of the discussion with the IP rights holder. Actions for IP rights holders - Businesses that own IP rights (trade marks, patents, designs or copyright) may wish to seek legal advice if their IP-protected goods are parallel exported from the UK to the EEA. Copyright - Most UK copyright works (such as books, films and music) will still be protected in the EU and the UK because of the UK’s continued participation in the international treaties on copyright. EU copyright works will similarly continue to be protected in the UK – for works made before and after 1 January 2021. Current cross-border copyright arrangements unique to EU member states will stop at end of the transition period - including cross-border portability of online content services, copyright clearance for satellite broadcasts, reciprocal protection for database rights and the orphan works exception. Geographical Indications - The IPO has worked with Defra to ensure new schemes wheeby the existing relationship between trade marks and GIs is maintained. Business guidance on this area will be published in due course. Use of representatives and address requirements to represent - UK trade mark owners will have to appoint an EEA attorney to represent them on new applications and proceedings before the EUIPO (UK attorneys will no longer be able to do so). The WA however ensures that UK legal representatives can continue to represent their clients before the EUIPO in cases that are still ongoing at the end of the transition period. The UK IPO announced on 19 November 2020 that it will amend the Address for Service rules to remove the reference to the European Economic Area. This means that any new applications for patents, trade marks and designs and any other proceedings (such as oppositions) already covered by the existing Address for Service rules, which are begun after the end of the Transition Period will have to be made by representatives with an Address for Service in the UK or Channel Islands. However, a UK or Channel Islands Address for Service will not be required for renewals. The rules will also include transitional provisions for ongoing cases so they will not apply to actions which are lodged with the UK IPO before the end of the Transition Period. Patents and Supplementary Protection Certificates - are also discussed. ---- The views expressed are those of our members and not necessarily of ECTA as an association. The content has not been subjected to a verification process, the accuracy of the information contained in the article is responsibility of the author.
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FAKE RENEWAL INVOICES: SUCCESSFUL CONCLUSION OF THE RECENT CASE AGAINST THE ECTO AND EPTO SCAMMERS
18/11/2020
On 29 April 2020, the Brussels Criminal Court convicted a Finnish man to four years of imprisonment for being part of a huge European scam network which sent misleading invoices on trade marks renewals. In 2011, the Benelux Association for Trade Mark and Design Law (BMM) was informed that trade mark owners were warned about the expiration of their trade marks and the need of renewal via invoices from fictitious companies named ECTO and EPTO. ECTO and EPTO falsely gave the impression to the trade mark owners of having been contacted by an official EU organisation. These fictitious companies charged for the renewal of one trade mark up to 3.750 Euro and payments was to be made to a Belgian bank account. The amounts were then transferred to bank accounts in Denmark, Switzerland and even Hong Kong. As a demonstration of how organised the scam network was, despite the Finnish man was arrested, his role was quickly replaced by another person and the overall amount achieved was over 1 million Euro. The Brussels Court characterized the offenses as "bearing witness of an anti-social attitude and a course of life based solely on deception, abuse and self-enrichment to the detriment of social order and the security of trade, which are seriously disrupted by such offences". If you would like to read the full judgement in its English translation, please click here. --- We would like to congratulate BMM on this success which will hopefully be a deterrent for other scammers and a precedent for future legal actions in this regard. ECTA takes an active role in the fight against this type of fraud. To learn more about ECTA Anti-Scam Activities and also to report any such activity to ECTA, please visit our ECTA Anti-Scam Activities page.
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ECTA WEBINAR ON BREXIT: WATCH THE RECORDING!
18/11/2020
Have you missed the engaging discussion of our latest webinar IP strategy for trade marks and GIs in connection with the Brexit? As Brexit is a very relevant topic with practical and sometimes uncertain implications for IP professionals, you still have the chance to watch it for a slightly lower fee! Maggie Ramage (Edwin Coe LLP, UK) from the ECTA International Trade Committee moderated a distinguished panel of speakers comprised of Oscar Benito (GSK, UK), Massimo Vittori (OriGIn, CH), Catherine Wolfe (Boult Wade Tennant, UK), and Kay Rupprecht (Meissner Bolte, DE) who discussed what impact Brexit already had on companies, what companies expect from external counsels and how they and external counsels can still prepare. Our speakers also answered several practical questions raised by our attendees. Upon request at ecta@ecta.org, we will be pleased to send you the full video recording as well as the slides projected from our speakers. The price is 40,00€ for ECTA members and officials/70,00€ for non-members. Don’t forget that another engaging discussion is upcoming in the next ECTA webinar: ‘Is a Design Reform Needed? 3D Printing / Virtual Printing?’ (4 December, 10:00 - 12:00 Brussels time). To find out more and sign up, please click herehere. Follow us on the ECTA Website, Twitter, LinkedIn and the ECTA APP to stay informed about our next events and initiatives!
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JOIN ECTA!
16/11/2020
Would you like to be part of the ECTA family? This is the most convenient time of the year to make this choice! If you become a member now, you will get 2 MONTHS ECTA MEMBERSHIP FREE as your membership subscription will cover the remainder of 2020 as well as 2021 (November, December, plus all of 2021). ECTA has different membership categories for a very low annual fee (Ordinary, Associate, Affiliate, Retired, Corporate and Member in Education). Select the one that suits you best and start benefitting from our members-only advantages! Being an ECTA member will give you the opportunity to meet IP professionals from all around the EU and beyond, exchange experiences, learn and have fun during the multiple networking events, especially the ECTA Annual Conference where, as a member, you can participate at a reduced fee! Besides, ECTA regularly organises many other initiatives and learning opportunities, such as the ECTA Alicante Round Table in February, ECTA ®etreat in March, ECTA Autumn Meeting in October (for Supervisory Board and Committee members) and several other workshops and webinars on the latest IP case law, legislative and policy developments, which are accessible at a reduced fee for our members. You might also like to join one of our Committees, depending on your area of interest in IP. As a Committee member, you will actively strive for the balance of IP rights by contributing to many projects, working groups, meetings, initiatives with the European Commission, WIPO, EUIPO and other stakeholders. In this regard, the ECTA General Committee Elections are just around the corner, and the call for applications will be launched in January 2021! As an ECTA member, you will also have access to the private part of our website, where you will find past ECTA Bulletins, the recordings of all ECTA learning initiatives, follow the work of our Committees closely, consult our updated calendar and much more. But that is not all! The ECTA APP also provides a dedicated feature for our members, namely the ECTA Member Guide. With a few clicks, you can easily contact other ECTA members through a membership list, be updated on the upcoming ECTA events and activities, as well as follow the latest IP news. Last but not least, you can get yourself noticed in the IP Community by contributing to the ECTA Bulletin and news section of our website. If you are already an ECTA member, please remember to renew your membership by January 2021! We are looking forward to welcoming you to the ECTA family! Should you need any support or have any questions, please don’t hesitate to contact us at ecta@ecta.org, we will be pleased to help you.
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EUROPEAN COMMISSION PUBLISHED THE REPORT ON THE EVALUATION OF EU LEGISLATION ON DESIGN PROTECTION
10/11/2020
The European Commission has just published the Report on the evaluation of EU legislation on design protection. The purpose of this study is to analyse to what extent the EU legislation on design protection has achieved its objectives in terms of efficiency, effectiveness, relevance, coherence and EU added value. It aims to assess to what extent the legislation is still fit for purpose, in particular in view of the digital transformation underway. The evaluation shows that the objectives pursued by the EU design legislation continue to be highly relevant. In this regard, the legislation works well and it is still broadly fit for purpose. However, the document shows some shortcomings that need to be addressed, including the lack of clarity and robustness of key elements of design protection (subject matters, scope of rights and limitations), inappropriate fee levels and structure, outdated or overly complicated procedures, lack of coherence of the procedural rules and an incomplete single market for spare parts. The aim would be enhancing the legal framework in order to better support the digital and green transition of EU industry, make it more accessible and efficient for industries, SMEs and individual designers. The evaluation, launched in 2014, included a comprehensive legal and economic assessment, supported by a series of studies: the Economic review of industrial design in Europe (2015), the Legal review on design protection in Europe (2016) and the Intellectual property implications of the development of industrial 3D printing (2020). --- ECTA, with the assistance of highly skilled members of the ECTA Design Committee, submitted input during the consultation process, provided position papers (including Joint Statement on the Legal Review on Industrial Design Protection in Europe as well as individual submissions such as Brief Report on 3D Printing and comments to a related EC Study, and others), organised events and round tables on design related topics and continues to follow and contribute to the ongoing discussion on this important issue. In this regard, do not miss the upcoming ECTA Webinar on 4 December 2020, dedicated to the Design reform and the issue of 3D printing and virtual printing! To REGISTER, please click here. Also, if you are interested in becoming a member of our Design Committee, don’t forget to submit your application in January 2021 when the General Committee Elections will be launched for the new Committee term of 2 years.
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EUROPEAN COMMISSION (DG AGRI) AND EUIPO - DIGITAL CONFERENCE ‘STRENGTHENING GEOGRAPHICAL INDICATIONS’
10/11/2020
DG AGRI (DG agriculture and rural development) of the European Commission, together with EUIPO (EU Intellectual Property Office) is organizing ‘Strengthening Geographical Indications – on-line Conference 2020’, which will take place on 25-26 November 2020. The Conference has three principle aims: • To be the launch-event for the formal, open, internet-based public consultation for the ‘strengthening GIs’ review, • To incorporate the annual GI controls and enforcement seminar, • To deepen the dialogue between GI and trade mark practitioners on IP rights. We are pleased to announce that Paola Ruggiero, ECTA Geographical Indications Committee Chair and Benjamin Fontaine, ECTA EUIPO-Link Committee Chair will be representing ECTA as Conference speakers. To find out more about the Conference, its topics and programme, please consult the official document here. Please, register via this link by 23 November.
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DOWNLOAD THE ECTA APP AND ITS MEMBER GUIDE!
08/11/2020
ECTA Autumn is fully under way with many initiatives. Check out all ECTA channels! Be sure to frequently visit the ECTA Website, LinkedIn and Twitter and, if you want to have ECTA always in your pocket, download the ECTA APP and its Member Guide by following the steps below. The ECTA Member Guide is a recent addition to the ECTA APP, conceived as a benefit for ECTA members. Thanks to this new permanent feature, our members can be on track with what is going on in the association and the IP field in just a few clicks. The ECTA Member Guide provides not only a full membership list where to easily get in contact with other ECTA members, but also allows an overview of the upcoming ECTA events and planned activities, as well as the latest news from our website and social media. In addition to the Member Guide, the ECTA APP provides dedicated sections for the Annual Conference and the Autumn Meeting, which will be released ahead of each physical event. As an attendee, you will find there all the necessary information such as programme, speakers, maps, list of attendees, exhibitors, media partners and much more. Step 1: Download the ECTA APP! The first thing you'll need to do is download the ECTA APP on your device. Event Password: ECTAmember19 Don't have iOS or Android? Skip Step 1 and go straight to Step 2 to verify your account and use the mobile web version of the APP. DOWNLOAD THE APP Step 2: Verify Your Account Come back to this page using the same device from Step 1 and click Verify Account to unlock all of the APP advanced features. VERIFY ACCOUNT Please, note that the most important information about ECTA, its events and activities will be notified as a pop-up on your mobile screens. In case you would prefer not to receive them, deactivate the ECTA APP notifications option in the general settings of your mobile. Please contact our team at ecta@ecta.org if you have any questions. **You do not need to take any further step, if you had already downloaded the ECTA APP and its Member Guide when it was first released this summer.**
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SCAM ALERT! FAKE EUIPO RENEWAL INVOICES
06/11/2020
EUIPO warns about a new scam in the format of a Fake EUIPO Renewal Invoice, recently reported to the Office by users. Its modus operandi is highly similar to scams recently reported in relation to WIPO. Anonymized samples of these Fake Renewal Invoices have been included in the searchable list on the EUIPO’s misleading invoices webpage. The most notable features of this fake renewal invoice scam is the usage of the EUIPO’s logo, name, acronym and other official information, such as address. It is mailed to users from Geneva, Switzerland, and includes a demand for a renewal payment to be transferred to a Polish bank account with a PL IBAN prefix. For more information on this scam, please read the news item on EUIPO’s website HERE. --- ECTA takes an active role in the fight against such type of fraud. To learn more about ECTA Anti-Scam Activities and also to report any such activity to ECTA, please visit our ECTA Anti-Scam Activities page
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ECTA AWARD 2021: CALL FOR PAPERS IS NOW OPEN!
02/11/2020
As of today, all IP students and professionals can submit their papers for the ECTA Award 2021 in their respective category! The purpose is to grant an Award to an individual who has written an article or essay of importance for the development of European trade mark law, design law, copyright law or geographical indications law. Please, send your paper to ecta@ecta.org by 1 March 2021. Before submitting your paper, consult the ECTA Award submission requirements and judging criteria. The papers will be judged by the ECTA Professional Affairs Committee with the support of other ECTA Committees, subject to the approval of the ECTA Board of Directors. The Award consists of a sum of EUR 2.000 for the First Prize in the student category, EUR 3.000 for the First Prize in the professional category and EUR 1.000 and EUR 500 respectively for the Second and Third prizes in both categories. All winners will also be granted with 18 months of ECTA Membership. All the winning papers will be published on the ECTA website and the First Prize Award winners shall be invited to the ECTA Annual Conference and honoured by the ECTA President. This is a valuable initiative for all IP students and professionals who would like to improve their knowledge in their IP areas of interest, as well as give a unique contribution in creating more unified solutions within the European Union jurisdictions. We are looking forward to receiving your papers! The papers of the current winners can be read here.
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ECTA OCTOBER BULLETIN IS OUT!
29/10/2020
Many interesting insights in the IP field are waiting for you in the latest issue of the ECTA Bulletin! You will know more about our newly created Data and International Trade Committee, their mission, plans and aspirations for the years to come. This issue contains very engaging and interesting interviews. You will read about Amaryllis Verhoeven (Head of the Intellectual Property Unit at the European Commission, DG GROW F3), her career in IP and the main challenges facing the EU in the field of TM and design regulations, and you will also learn from Yo Takagi (WIPO Assistant Director General, Global Infrastructure Sector) about WIPO PROOF, the new WIPO service for IP professionals. But that’s not all! Read about the growing recognition on IPRs in Africa, bad faith filings in PRC, important changes to the Romanian TM system, Cyprus’ efforts to align its laws with Directive 2015/2436 as well as the effect of Coronavirus on IP. In the case law section, our members analysed two important decisions of the French Constitutional Court and CJEU about copyright infringers on the Internet and the proportionality of the mechanism to deal with this issue as well as United States Patent and TM Office vs. Booking.com, recently judged by the Supreme Court of the United States. On the Bulletin pages you will find, for the very first time, the Book Review section, with an insight of the book Enforcement of Intellectual Property Rights in Africa by Marius Schneider and Vanessa Ferguson, and you will surely learn more about the work of various ECTA Committees by reading their reports. Would you like to join one of the ECTA Committees? This is the right time to find out everything you need to know before the ECTA General Committee Elections that are coming up in January 2021, including learn from the testimonials of some long-standing Committee members! Last but not least, our warm welcome to the new members of the ECTA family! For ECTA members the print friendly pdf version is available in the Library section of the ECTA Private Site. Enjoy reading it! Yours sincerely, ECTA --- If you would like to contribute to the next ECTA Bulletin or other ECTA publications, please contact our Publications Committee at ecta@ecta.org
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ECTA MEMBERS’ VOICE: REQUEST TO LIFT SEIZURE OF TOBACCO STICKS IN TRANSIT GONE UP IN SMOKE
27/10/2020
By Gie van den Broek, ECTA Anti-Counterfeiting Committee Vice-Chair, LXA (NL) In a preliminary Court decision, the Court of Rotterdam ruled on 19 October 2020 in favour of famous tobacco industry in a ‘goods-in-transit’-case. The EU Trademark Regulation (Reg. 2017/1001), which entered into force in October 2017 rules in Article 9 par. 4: ‘Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorisation a trade mark which is identical with the EU trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark.’ This article was applied correctly by the Court in Rotterdam on 19 October 2020 in a tobacco case, where goods were physically held in a customs warehouse in the Netherlands but PM found out in time that something was seriously wrong. RPM is a Dutch wholesaler of, among other things, cigarettes, liqueurs and medical devices. Philip Morris (PM, the tobacco manufacturer) seized a container of tobacco sticks (original branded goods from Philip Morris) on a cargo ship bound for the Philippines. RPM filed a request to the Court to lift the seizure of the goods stored under T-1 status (custom status of goods in transit bound for release outside the EU). The destination of the goods, as confirmed by PM, was Armenia. PM pointed out that the goods could not be marketed anywhere else than in Armenia. However, RPM did not want to cooperate with transport to Armenia. PM pointed to the dubious route the tobacco sticks have travelled so far and more specifically to facts and circumstances surrounding the consignment’s transport to the Philippines. In addition, PM pointed to flaws in the documents. The suspect documents raised doubts about RPM's assertion that it owns the lot and that the lot indeed has T-1 status. The Court held that PM's fear was justified and that the consignment is ultimately intended, without PM’s consent, to be marketed elsewhere, resulting in infringing acts. RPM's course of action throughout the proceedings contributed to this judgment. RPM's claim is dismissed. The goods remain seized. This case is the first time a Dutch Court applies the rule of Article 9 par. 4 of the Trademark Regulation that came into force three years ago, which enables Customs to also act against fraudulent goods in transit not intended for the EU but for non-EU countries. RPM was sentenced to bear all legal costs on the side of PM, exceeding 12,000 Euro. This is only the beginning as it is the refusal of the Court to lift the seizure. Litigation on the merits of the cases will follow. To be continued. ---- The views expressed are those of our members and not necessarily of ECTA as an association. The content has not been subjected to a verification process, the accuracy of the information contained in the article is responsibility of the author.
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