ECTA Member’s Voice: Benelux IPO abolishes paper applications and changes Rules on evidence submission
COMMISSION PUBLISHED THE INCEPTION IMPACT ASSESSMENT ON GI PROTECTION AT EU LEVEL FOR NON-AGRI PRODUCTS
EUROPEAN COMMISSION (DG AGRI) AND EUIPO - DIGITAL CONFERENCE ‘STRENGTHENING GEOGRAPHICAL INDICATIONS’
ECTA MEMBERS’ VOICE: The Dark Knight rises above…again. WIPO reveals Batman was the most used Franchise Character in Movies and Games throughout the years.
ECTA MEMBERS’ VOICE: Do You Like “Anji Bai Cha”? EU-China Agreement on Geographical Indications is Signed!
EUIPO Observatory: Intellectual Property Infringement and Enforcement Tech Watch Discussion Paper 2020
ECTA MEMBERS’ VOICE - WIPO new free database of judicial decisions on intellectual property from around the world has been launched
EUROPEAN COMMISSION STUDY ON EVALUATION OF PRACTICES FOR COMBATING SPECULATIVE AND ABUSIVE .EU DOMAIN NAME REGISTRATIONS
EUROPEAN COMMISSION: NEW REPORTS DEMONSTRATING THE IMPACT OF MoU ON FIGHTING ONLINE COUNTERFEITING AND PIRACY
ECTA WEBINAR 'PARALLEL IMPORTS: HOW IMPORTANT IS A TRADE MARK? A LIMITLESS SEA? (PHARMA PERSPECTIVE)' - 11 JUNE 2020!
INFORMATION EXCHANGE ON COVID-19 PROTECTION PRODUCTS VIA THE EUIPO OBSERVATORY IP ENFORCEMENT PORTAL
Publication: WIPO Collection of Leading Judgments on Intellectual Property Rights People’s Republic of China (2011–2018)
The WIPO Mediation Pledge for IP and Technology Disputes: Why consider mediation for IP- and tech-related disputes?
Withdrawal of the notification made under Rule 20bis(6)(a) of the Common Regulations under the Madrid Agreement and the Madrid Protocol: Germany
EUIPO Observatory Publications: Case-law Collection on the Liability and Obligations of Intermediary Service Providers
SMEs fund – second application window is now open
SMEs can apply for financing support under the new Ideas Powered for Business SME Fund until 31 March 2021. This is the second of five windows for applications that will be open in alternate months until September 2021. The Fund is a € 20 million grant scheme to help enterprises in the EU, that fit the official definition of a SME, access their IP rights. Applications can be made for financial support in the form of reimbursements for trade mark and design application and for IP pre-diagnostic services (IP scan) available at participating national and regional IP offices*. Each SME that applies can be reimbursed up to a maximum amount of € 1.500. Thanks to the efforts of some User Associations, including ECTA, professional IP representatives can now assist SMEs in deciding about the services offered through the SME Fund as well as requesting the funding in their name. This is a change in comparison to January window 1. Kindly note that next applications windows will be open according to the following timetable: Window 3 (1 May 2021 - 31 May 2021), Window 4 (1 July 2021 - 31 July 2021), Window 5 (1 September 2021 - 30 September 2021). Full information about the requirements and how to apply for financing support can be consulted on the EUIPO website here. Grants are awarded on a first come, first served basis. *Before applying, you should check the list to ensure that the IP office in your Member State offers this service.
EUIPO TUESDAY WEBINARS IN MARCH
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. Please note that the recorded webinars are available via the same link 2 days after the broadcast. The March schedule of the webinars is as follows: Tuesday 9 March, 10:00-11:00 (CET): €20 m SME Fund for Intellectual Property. Get your refund! Questions & Answers - Basic Tuesday 16 March, 10:00-11:00 (CET): AG examination of trade marks that refer to the content of the goods and services. Talking about what things are about - Intermediate Tuesday 23 March, 10:00-11:00 (CET): Need an IP strategy? IP pre-diagnostic service (IP Scan). 75% off with SME Fund - Basic Tuesday 23 March, 11:30-12:30 (CET): Introduction to the Geneva Act & Lisbon system for the International Registration of Appellations of Origin and Geographical indications - Intermediate Tuesday 30 March, 10:00-12:00 (CET): Track on case Law: Decision of the trimester of the GC and CJEU – Decisions of the trimester of the EUIPO BoA - 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: Ideas Powered for Business Support Services for SMEs: What’s new in 2021 - Basic - Link New kinds of evidence deriving from the internet - how should right holders present evidence to ensure success? - Intermediate - Link Discover how to moderate like a professional - Basic - Link Strengthening geographical indications - Basic - Link For further information please visit the Academy's Learning Portal
SIGN UP FOR FREE FOR THE ECTA (R)ETREAT, 10 MARCH 2021 (VIRTUAL EVENT)
The 2021 edition of the ECTA (R)etreat entitled 'Case Law of the EUIPO Boards of Appeal and German Courts in relation to trade marks and designs' is coming up soon on 10 March 2021 (15:30-18:00 Brussels time) and is co-organised with Müller Schupfner & Partner, DE. The event is usually organised in March in one of the largest cities in central Europe, though this year’s edition will be taking place online, allowing a larger number of IP professionals to benefit from a high-level discussion. Seize this chance and sign up free of charge! You will be welcomed by ECTA President Anette Rasmussen who will introduce the event and our Association before handing over to our skilful moderator Marie-Christine Seiler (ECTA Harmonization Committee Vice-Chair, Müller Schupfner & Partner, DE) and speakers: Lars Meinhardt (Judge at the Higher Regional Court Munich, 29th Civil Senate, DE), Harri Salmi (Member of the Boards of Appeal, EUIPO, ES) and Christoph Bartos (Member of the Boards of Appeal and Mediator, EUIPO, ES). Kindly note that the event will be in English, while some presentations will be in the German language (no translations or subtitles will be provided). To consult the programme, please click here. Upon request, you will receive a certificate of attendance, in order to ask for CLE credits from your national Bar Association, if applicable. 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 organisations in all other Member States, where CLE credits are required. If you would like to secure your virtual place, please REGISTER HERE. ---
ECTA GENERAL COMMITTEE ELECTIONS – LAST DAYS TO APPLY FOR A COMMITTEE!
General Committee Elections are still running. Don’t forget to apply for a Committee of your choice by 5 March 2021 (no late applications can be accepted)! Being part of an ECTA Committee is an invaluable opportunity to cooperate with many experienced professionals throughout the EU and beyond, actively contribute to relevant projects, get first-hand knowledge on all the developments in your area of interest within IP and much more. If you are interested, please carefully read the following documents before submitting your application: - ECTA Committee Member Expectation Sheet (available when you log in to the ECTA private site/Library/Important ECTA policies) - ECTA Bulletin article on General Committee Elections 2021 - Overview of our Committees COMMITTEE TERM: The Committee term constitutes two years and Committee members may serve on the same Committee for a maximum consecutive term of six years* (three periods of two years each). Please note that Committee membership is not renewed automatically. Current Committee members will have to re-apply, if they have not yet reached the maximum term and wish to stay on the same Committee for a further term. Check how long you have been a member of the same Committee in ‘My Profile’ section of the ECTA website, in order to determine your eligibility. If you are not eligible, you can still submit your application for another Committee or, after a break of two years (in 2023), it is possible to reapply for your current Committee. APPLICATION PROCESS: ECTA members should apply for ONLY ONE Committee membership* by filling in the online Application Form only ONCE. All ECTA members, both from EU and non-EU, are invited to apply for a Committee. When completing the Application Form, please indicate where required your 1st and 2nd Committee choice of preference. The list of nominations will be forwarded to the respective Committee Chair for evaluation. In case you cannot be accepted in your 1st choice, you will be automatically considered for your 2nd choice. Please, supplement your application by describing briefly your IP expertise and your previous ECTA involvement (if any) where indicated in the Application Form. The outcome of your application will be known in May/June 2021. The Committees change-over date is on 1 July 2021, the newly composed Committees will become operational from that date onwards. In order to apply for a Committee of your choice make sure to submit your candidacy by completing the APPLICATION FORM. *There may be exceptions to the general rules, namely the possibility to serve in two Committees or to exceed the maximum consecutive term of six years in the same Committee. In such cases, the member has to complete the application form accordingly and contact the related Committee Chair (Chairs) at the same time. Any exception is to be approved by the ECTA Board of Directors. We are looking forward to receiving your application and thank you in advance for the interest in serving ECTA!
eComm is the new way to communicate with the EUIPO
As we have informed you before (Upcoming changes in the way of communication with the EUIPO - Decisions No Ex-20-9 and No Ex-20-10), some changes are coming into force on the 1 March in terms of communicating with the Office. eComm will become the way to communicate with the EUIPO in EUTM and RCD procedures and all EUIPO users who previously selected ‘Fax or Post’ as communication mode with the Office, will now receive e-communications. Kindly note that the EUIPO has shared a brief guide on how to use eComm and its features HERE.
ECTA VIRTUAL ROUND TABLE - WATCH THE RECORDING!
Have you missed the engaging discussion of our virtual Round Table ‘Influencers, super brands and celebs: just fame or a brand with a repute?’ The recording of it is now available on demand! We all know how hard it is to prove the renown character of the trade mark, how much evidence you have to gather and how much time you have to spend on good argumentation. The Massi/Messi case shows that celebrities may be able to rely on their general renown, with little or no evidence. Will the courts apply a similar assessment to super brands, and how famous does a ‘celebrity’ need to be? Our skilful moderator Shane Smyth (FRKelly, IE) and speakers Jordi Güell (Guell IP, ES), Ewa Skrzydlo-Tefelska (Koźmiński University, SK&S, PL), Péter Sipos (EUIPO) and Javier Corrales (Schweppes International Limited, NL) discussed this topic in depth from different perspectives, as well as answered the numerous questions raised by our attendees. If you are interested in receiving access to the recording of the Round Table, please send a request to email@example.com. The price of this on demand offering is 25,00 € for ECTA members and 55,00 € for non-members.
ECTA, INTA and MARQUES submit joint comments on designs review
ECTA has recently joined forces with INTA and MARQUES in order to submit comments on the European Commission's Inception Impact Assessment on the review of the Design Directive and Community Design Regulation. The three associations strongly support the intention of the European Commission to review the EU legislation on design protection and agree that there are some shortcomings that need to be addressed to modernise the legal framework, making it more harmonised, user-friendly and in line with the digital and green transitions. The paper also underlined some issues that were not addressed in the Inception Impact Assessment such as the enforcement, international dimension, unregistered designs, and the implications of 3D printing. You can find the joint comments by consulting the position paper here. This is the second time the three organisations submit joint feedback to the European Commission in relation to design issues. The earlier joint paper submitted can be found here. ----- We would like to thank the ECTA Design Committee as well as the Design teams of INTA and MARQUES for their relevant contribution to this joint position paper. We are looking forward to continuing to contribute and partecipatie in the upcoming stages of the reform. ECTA Design Committee is strongly involved in design-related matters. If you are interested and would like to join this Committee, seize the chance of General Committee Elections and apply by 5 March 2021.
EUIPO-OECD joint study on misuse of containerised maritime transport for trade in counterfeit goods
Over the years, international trade has grown considerably and the increase in counterfeit trade has come as an inevitable side effect, with maritime transport being a major channel for the shipping of counterfeit goods. The just released EUIPO-OECD joint study provides an in depth analysis of the scale of misuse of containers for this illicit trade. The research shows that 80% of international trade is operated by sea transport as container ships boost efficiency and reduce the costs of international trade. Nevertheless, containers are also the major channel to transport counterfeit goods as 56% of the total value of seized counterfeits are shipped via this means, especially from East Asia. In particular, China accounts for 79% of the total value of containers containing fakes seized worldwide. The study also provides other relevant information such as what types of fake products are traded in containers ships, where these counterfeits are produced, which geographic markets are targeted, which ports of entry are most often used for containers with counterfeits, how products are transported in container ships without being intercepted. Since less than 2% of containers are physically inspected, maritime transport is considered a significant opportunity for criminal networks. This is the reason why the report considers the need for counterfeits to be a key priority for customs officials with search and inspection techniques and tools better tailored to detect fakes. To read the full joint study, please click here. To read the executive summary, please click here. --- ECTA is one of the leading organisations within the European Union that strongly works for the improvement of the IP system by collaborating with relevant Institutions (e.g. European Commission, WIPO, EUIPO, etc.), conducting transparent analysis and sharing high-quality knowledge on a wide variety of IP topics.
Joint EUIPO/EPO IP Contribution Report
EUIPO and the European Patent Office (EPO) recently published a joint report, entitled “Intellectual property rights and firm performance in the EU”. The research examines the role of IPRs by analysing a representative sample of over 127.000 European firms from all 28 EU Member States as of 1 January 2020. According to this analysis, companies which own at least one patent, registered design or trade mark generate on average 20% higher revenues per employee than companies which do not own any of those IPRs. Moreover, these IPR-owning companies were found to be paying 19% higher wages on average than other companies. The study also includes an econometric analysis which makes it possible to isolate the effect of IPR ownership from other factors (e.g. the size of a firm or the countries and sectors in which it operates). The results confirm the positive link between IPR ownership and economic performance, with revenue per employee 55% higher for IPR owners than for non-owners. Furthermore, the research shows that this relationship is even more pronounced when it comes to small and medium-sized enterprises (SMEs). SMEs that own IPRs have a 68% higher revenue per employee than those without IPR portfolios. For large companies, this revenue premium is 18%. Although, as we know from earlier studies and reports, fewer than 9% of European SMEs currently rely on IPRs, compared to 60% of large companies, it highlights the significant potential among smaller firms of further exploiting IPRs. To read the press release, please click here. To read the executive summary, please click here. --- ECTA is one of the leading organisations within the European Union that strongly works for the improvement of the IP system by collaborating with relevant Institutions (e.g. European Commission, WIPO, EUIPO, etc.), conducting transparent analysis and sharing high-quality knowledge on a wide variety of IP topics.
UPCOMING CHANGES IN THE WAY OF COMMUNICATING WITH THE EUIPO (DECISIONS NO EX-20-9 AND NO EX-20-10)
We would like to draw your attention to some changes concerning the means of communications with the Office, which will enter into force as of 1 March 2021. Kindly be reminded of the Decision No EX-20-9 of the Executive Director of the Office of 3 November on communication by electronic means. In particular, please note that: - fax will no longer be offered and used as a mean of communication in procedures before the Office. - in the event of a malfunction during an electronic transmission via the e-operation or e-filing tool in the User Area, the transmission must be resubmitted via one of the other accepted means of communication or back-up solutions such as an upload solution in the Communications section of the User Area or a file-sharing solution outside the User Area. To learn more, please consult the Decision in full. In case of any problem, EUIPO first line should be contacted for support and recommending the best solution in any given circumstance. We would also like to draw your attention to another recent Decision No EX-20-10 of the Executive Director of the Office of 22 December 2020 on technical specifications for annexes submitted on data carriers. In particular, kindly note that: - the Office accepts the following data carriers: small portable storage drives such as USB flash drives, pen drives or similar memory units. The Office does not accept external hard drives, memory cards, CD ROMs, DVDs, other optical discs or magnetic data carriers of any kind. Art.1 (1) and (2) of the Decision. - the maximum size of each individual annex saved on the data carrier is restricted to 20 MB. To learn more, please read the Decision in full. Kindly note that the 20 MB restriction only affects the individual annex and not the overall size of all annexes. In case the individual annex exceeds 20 MB, it could be split in different annexes. As these Decisions will introduce some changes in the way of communicating with the EUIPO, if you are an ECTA Member and would like to share your opinion with us in this regard, kindly fill in a short survey in the Private Site/New Messages. Many thanks for taking note of this information.
ECTA-EUIPO BILATERAL MEETING
On 12 February 2021, ECTA and EUIPO held a virtual Bilateral Meeting to discuss topics of mutual interest and importance for ECTA members, including EUIPO initiatives and projects and related ECTA contributions (e.g. EUIPO SME Programme, EUIPO Guidelines, SQAP, etc.), ongoing legislative reforms, recent case law, and other issues, such as the use of the EUIPO User Area, EUIPO tools and so on. EUIPO delegation, composed of 17 officials, was headed by Executive Director Christian Archambeau, while ECTA was represented by its President Anette Rasmussen, Head of Legal Affairs Anna Ostanina and ECTA EUIPO-Link Committee members, namely Benjamin Fontaine, Monique Granneman, Cristina Bercial-Chaumier, Manuel Mínguez Balaguer, Seamus Doherty, Luis Soriano Albert, and Fabio Angelini. ECTA is extremely grateful to the EUIPO for the willingness to discuss ways to improve the IP system and looks forward to further fruitful collaboration and continuation of the open dialogue we have established together over the past years.
ECTA AWARD 2021: TWO WEEKS LEFT TO SUBMIT YOUR PAPER!
Don't forget about the opportunity to submit your paper for the ECTA Award 2021, a competition conceived for all IP professionals and IP students from Europe and beyond. 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 firstname.lastname@example.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 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 opportunity for IP students and professionals and we are looking forward to receiving your papers! The papers of the current winners can be found here.
WTR CONNECT SPRING COMING UP ON 15-19 MARCH 2021 - ECTA MEMBERS CAN ATTEND AT HALF-PRICE!
WTR Connect returns with its spring edition entitled "Exchanging cost-effective and resource-efficient best practices" for a week of purpose-built trade mark and brand protection discussions. From 15 to 19 March, WTR will be hosting live more than 20 individual interactive digital sessions on key topic areas and challenges facing trade mark and brand leaders (e.g. A global view: the ‘need to know’ lowdown from the US, Europe and China; Counterfeits in the age of COVID; Demonstrating trade mark value within the business; Cost-effectively protecting and enforcing brands in the global environment, etc.) with leading experts at Microsoft, Dyson, Gilead, Red Bull, Facebook, Burberry, Mattel, Vodafone, Nestle and many more. Each day will start with a keynote address from a major industry figure, followed by live breakout discussions lasting for a maximum of 60 minutes. These will be in different formats such as masterclasses, open discussions forums, solution rooms and closed-door, invite-only boardrooms. You can register for as many sessions as you like across the week, building your own schedule. To consult and download the full agenda of the event, please click here. ------ ECTA is happy to announce that ECTA MEMBERS CAN ATTEND THE EVENT FOR 50% OFF THE FULL TICKET PRICE. If you are an ECTA member and would like to attend the event at a discounted rate, please log in to the ECTA Private Site/New Messages section with your credentials to learn more about this offer.
Sign up for the ECTA virtual Round Table - Influencers, super brands and celebs: just fame or a brand with a repute? - 11 February 2021
The Alicante Round Table is one of ECTA flagship events: a high-level discussion with EUIPO representatives and IP professionals on cutting-edge topics in the field of IP, usually taking place in the city of Alicante, Spain. This year’s edition Influencers, super brands and celebs: just fame or a brand with a repute? will be held online on 11 February 2021 (16:00 - 17:30 Brussels time) and it’s a unique chance for the majority of IP professionals who do not regularly travel to Alicante to attend the event. We all know how hard it is to prove the renown character of the trade mark, how much evidence you have to gather and how much time you have to spend on good argumentation. The Massi/Messi case shows that celebrities may be able to rely on their general renown, with little or no evidence. Will the courts apply a similar assessment to super brands, and how famous does a ‘celebrity’ need to be? You will be welcomed by ECTA Secretary General Carolin Kind (Greyhills Rechtsanwälte, DE) who will briefly introduce the event and our Association before handing over to our skillful moderator Shane Smyth (FRKelly, IE) and speakers: Jordi Güell (Guell IP, ES), Ewa Skrzydlo-Tefelska (Koźmiński University, SK&S, PL), Péter Sipos (EUIPO) and Javier Corrales (Schweppes International Limited, NL). If you would like to send any advance question to the panel, which you would like to be addressed during the virtual event, kindly enter it via the registration form. Please note that there is also a possibility to submit questions live via the Q&A option. The virtual round table is open to all and will be held in English via the Zoom Webinar platform. The cost is 40,00€ for ECTA members / 65,00€ for non-members. Students and officials can attend free of charge. On demand, you will receive a certificate of attendance, in order to request CLE credits from your national Bar Associations, if applicable. 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. Seize this year’s opportunity to attend the Alicante Round Table virtually and reserve your place! REGISTER HERE -----
EUIPO TUESDAY WEBINARS IN FEBRUARY
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. Please note that the recorded webinars are available via the same link 2 days after the broadcast. The February schedule of the webinars is as follows: Tuesday 2 February, 10:00-11:00 (CET): New kinds of evidence deriving from the internet: How should right holders present evidence to ensure success - Intermediate Tuesday 9 February, 10:00-11:00 (CET): The multifaceted notion of bad faith - Intermediate Tuesday 16 February, 10:00-11:00 (CET): Artificial intelligence and IP right - Basic Tuesday 23 February, 10:00-11:00 (CET): New Edition of EUIPO Guidelines - Intermediate 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: The new services offered by alternative dispute resolution - Basic - Link Leading digital transformation - Basic - Link Joint EUIPO-EPO interactive webinar: IP rights in the food industry - Intermediate - Link For further information please visit the Academy's Learning Portal
ECTA MEMBERS’ VOICE: KAMPOT PEPPER FROM CAMBODIA GOES INTERNATIONAL
By Andrea Ringle, ECTA Geographical Indications Committee Secretary, BRL Boege Rohde Luebbehuesen mbB (DE) On 18 January 2021 the World Intellectual Property Organization (WIPO) announced ‘Kampot Pepper’ being the first geographical indication (GI) registered via the Geneva Act of WIPO's Lisbon System, which provides protection for names identifying the geographic origin of agricultural and non-agricultural products. The Lisbon System is a powerful legal and economical tool for local producers to market and protect their products with a strong geographical link and quality worldwide. By means of a single registration procedure, the holder of a domestic appellation of origin or GI may obtain the protection of the registered name in the other Contracting Parties of the Lisbon System. This means that local producers have the possibility to enforce their rights in more than 30 countries, including the Member States of the European Union. This also works the other way around as European GI’s gain easy access to territories that would be difficult to reach by individual means, such as Cambodia. After joining as the first contracting party of the Geneva Act of the Lisbon Agreement, Cambodia is also the first applicant registering a GI under the Geneva Act. About Kampot Pepper: Kampot Pepper (ម្រេចកំពត) is protected as a GI in Cambodia and identifies a specific product originating in some districts of southern Cambodia whose quality and reputation is attributable to its geographical origin. The Product Specification provides detailed information on the historical background, geographical link and the production of the Protected Geographical Indication ‘Kampot Pepper’. There are four different types of Kampot Pepper depending on the time of harvesting and the processing they receive afterwards: Green pepper / Black pepper / Red pepper / White pepper. The characteristic of the Kampot Pepper lies in its strong (but not ‘burning’) pungency, not aggressive but developing progressively in the mouth. Besides the spicy character, its aromatic intensity gives its particular quality. Further Legal Background: The Lisbon Agreement, concluded in 1958, revised at Stockholm in 1967 and amended in 1979, provides for the protection of appellations of origin, that is the ‘geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors’. Such denominations are registered by the International Bureau of WIPO in Geneva upon the request of the competent authority of a Contracting State. The International Bureau keeps the International Register of Appellations of Origin and formally notifies the other Contracting States of the registrations. The Geneva Act of the Lisbon Agreement, adopted on 20 May 2015 and entered into force on 26 February 2020, completes the Lisbon System by allowing the international registration of GIs in addition to appellations of origin through a single registration procedure with WIPO. Since relevant members such as the European Union and the African Intellectual Property Organization (OAPI) joined the Geneva Act, the Lisbon System recently gained new international importance for GIs. Registrations under the Lisbon System are published in the official Bulletin and can be searched through the Lisbon Express Database. ---- 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.
European Commission: Consultation on the revision of the EU GIs systems in agricultural products and foodstuffs, wines and spirit drinks
The European Commission (DG AGRI) has recently launched a public consultation on the revision of the EU GIs systems in agricultural products and foodstuffs, wines and spirit drinks. The EU protects almost 3400 names of specific products under one of its EU quality schemes: Geographical Indication (GI), Protected Designations of Origin (PDO), Protected Geographical Indication (PGI) and Traditional Speciality Guaranteed (TSG). The aim of the consultation is to gather contributions on the major challenges identified that would need to be addressed in the revision, as well as their underlying causes, the policy options that can be envisaged to address these challenges and their respective impacts. Contributions to the consultation are possible until 9 April 2021 via https://ec.europa.eu/info/law/better-regulation/have-your-say/initiatives/12664-Revision-of-the-EU-geographical-indications-GI-systems-in-agricultural-products-and-foodstuffs-wines-and-spirit-drinks/public-consultation --- ECTA Geographical Indications Committee is the Committee most closely involved in various GI matters within ECTA and contributes actively to ECTA submissions and position papers on GI topics. If you are interested in GI-related matters and would like to join our GIs Committee, apply by 5 March here.
ECTA TAKES A STAND - POSITION PAPER ON THE CONCEPT OF “REPUTATION” IN GEOGRAPHICAL INDICATIONS BY ECTA GI COMMITTEE
By Arnaud Lellinger, ECTA Geographical Indications Committee member, Gilbey Legal (FR) On 30 November 2020, the European Commission launched a public consultation on the EU-wide protection of geographical indications for non-agricultural products. Such consultation shows the increasing importance of the Geographical Indications in the IP landscape. The Commission indicates in the “preliminary assessment of expected impacts” that “the initiative may empower producers to protect their rights against unfair competition from operators trying to ‘free-ride’ on the reputation of regional products”. The notion of “reputation” appears to be one of the core concepts that founds the GI protection system. Nevertheless, it is one of the most unclear and complex notions to define. Considering this, the ECTA Geographical Indications Committee decided to initiate a reflection on this key concept in 2019, and to draft a position paper with the aim of defining this notion in GI law. Through its work and studies of the case law over the year, the ECTA GI Committee found that, in many disputes involving GIs at the stage of their registration or enforcement, a thorough understanding and interpretation of the intangible concept of reputation was needed, in order not to be underestimated or broadened beyond measure. Such misinterpretation of this concept could lead to the overcrowding of the registries with GIs with a weak reputational link and related growth of disputes involving GIs and the use/registration of conflicting signs. This project of a position paper was contemporary with the recent publication on 20 February 2020 of the long-time expected Study on Economic aspects of geographical indication protection at EU level for non-agricultural products (NON-AGRI GIs), which adopts an unusual dynamic conception of the notion of reputation, stating that the “GI protection can help building the reputation of the product”. Based on its extensive research, reflection, and discussion, ECTA GI Committee’s position paper proposes a complete overview of the notion of reputation in the EU GI law and tries to define it and to show the relevance of this concept in GI ex officio or ex parte protection procedures, to finally make proposals for a clearer notion of reputation in GI law. Such reflection is essential in view of the new NON-AGRI GI scheme, which shall be introduced soon. This new scheme could be the ideal laboratory to evaluate, and possibly introduce, new and more specific rules with respect to the concept of reputation at the GI registration stage and in protection procedures. -- ECTA Geographical Indications Committee is strongly involved in GI-related matters. If you are interested and would like to join our Geographical Indications Committee, do not miss the General Committee Elections starting on 18 January 2021.
European Commission: Counterfeit and Piracy Watch List 2020
The Commission’s second Counterfeit and Piracy Watch List has recently been published. The document names websites and physical marketplaces outside the EU that are reported to engage in, facilitate or benefit from counterfeiting and piracy. In particular, it focuses on four areas: 1) Websites providing copyright-protected content; 2) E-commerce platforms; 3) Online pharmacies; 4) Physical marketplaces. The aim of Watch List is to encourage the operators of these marketplaces and of the intermediaries providing services to them, as well as local enforcement authorities and governments to take action to stop or prevent IP infringements. Also, it aims to raise awareness among EU citizens on the environmental, product safety and other risks of purchasing from these markets. The list reports on the input received during a public consultation, run from 19 February to 1 June 2020, where the Commission invited all stakeholders to share their views. The European Union Intellectual Property Office, European Anti-Fraud Office and Europol have also contributed to the preparation of the document. ---- ECTA Anti-Counterfeiting Committee is strongly involved in fighting against counterfeiting and piracy by sharing of professional experience and best practices. The aim of this Committee is to promote the most adequate legislation and practical enforcement techniques, as well as to raise awareness in this field. If you are interested and would like to join our Anti-Counterfeiting Committee, do not miss the General Committee Elections starting on 18 January 2021.
Would you like to be part of the ECTA family? Find out everything you need to know! 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 email@example.com, we will be pleased to help you.