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
ECTA GENERAL COMMITTEE ELECTIONS COMING UP NEXT WEEK!
ECTA General Committee Elections are coming up soon on 18 January 2021! Don’t miss to submit your candidacy when the call for applications opens and no later than 5 March 2021! Being part of an ECTA Committee is an invaluable opportunity to cooperate with many experienced professionals throughout the EU and beyond, as well as actively contribute to relevant projects in your IP area of interest. To find out everything you need to know, kindly consult the Committee Member Expectation Sheet (available when you log in to the ECTA private site/Library/Important ECTA policies), as well as the ECTA Bulletin article explaining all relevant rules on General Committee Elections. 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 remember that Committee membership is limited in time and is not renewed automatically. If you are a current Committee member and wish to reapply for your Committee, please check how long you have been a member of the same Committee in the ECTA private site/My Profile, in order to determine your eligibility to stay on the same Committee for another term. If you have missed the video message of ECTA Second Vice-President Carina Gommers about the upcoming elections and the advantages of being a Committee member, please watch it here. To learn more about our Committees, their mission and description, please click here More information on General Committee Elections will follow in due course. Regularly check our Website, LinkedIn and Twitter to stay updated!
ECTA AWARD 2021: CALL FOR PAPERS!
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 email@example.com 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.
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.
EUIPO TUESDAY WEBINARS IN JANUARY
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 January schedule of the webinars is as follows: Tuesday 12 January, 10:00-11:00 (CET): Digital Single Act: new rules of the game - Intermediate Tuesday 19 January, 10:00-11:00 (CET): Ideas Powered for Business Support Services for SMEs: What’s new in 2021 - Basic Tuesday 26 January, 11:00-12:00 (CET): Fax Phased out (eComm Roadmap) - Basic 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 right to be heard, the right of defence and the obligation to state reasons, exercising discretion and the notion of misuse of powers - Intermediate - Link Refiling of trade marks and bad faith - Intermediate - Link IP Tech Watch - Basic - Link Crowdfunding and IP - Basic - Link For further information please visit the Academy's Learning Portal
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 firstname.lastname@example.org, we will be pleased to help you.
UPCOMING GENERAL COMMITTEE ELECTIONS - VIDEO MESSAGE OF CARINA GOMMERS, ECTA SECOND VICE PRESIDENT
ECTA General Committee Elections are coming up soon on 18 January 2021! Watch the VIDEO MESSAGE of Carina Gommers, ECTA Second Vice President, to find out more about the upcoming elections and all the advantages of being a Committee member: “Being part of an ECTA Committee is truly a great experience! It provides you with first-hand knowledge on all the new developments in the world of IP laws. It’s also an opportunity for you to showcase your expertise and experience, to help and assist ECTA in its Committees’ work and, in some cases, you will be able to represent ECTA in meetings with European Institutions, EUIPO or WIPO.” Don't miss the chance to submit your candidacy when call for applications opens! Check regularly ECTA channels and learn more about our Committees here.
Commission proposes new rules for digital platforms
The Commission has proposed set of new rules for all digital services, including social media, online market places, and other online platforms that operate in the EU: the Digital Services Act and the Digital Markets Act. The aim is to foster innovation, growth and competitiveness as well as provide users with new, better and reliable online services. These new rules will also support the scaling up of smaller platforms, small and medium-sized enterprises and start-ups thanks to easy access to customers across the single market and lower compliance costs. In particular, the Digital Service Act will introduce a series of new harmonised EU obligations for digital services, that connect consumers to goods, services, or content, as well as new procedures for faster removal of illegal content in order to protect users' fundamental rights online. The Digital Markets Act will institute harmonised rules defining and prohibiting unfair practices by platforms acting as digital gatekeepers to the single market. Also, it will provide an enforcement mechanism based on market investigations. The European Parliament and the Member States will discuss the Commission's proposals in the ordinary legislative procedure. If adopted, the final text will be directly applicable across the European Union. To find out more, please read the press release. --- ECTA Internet Committee actively contributed to the open consultation in preparation of this legislative package, launched by the Commission in June 2020. If you are interested in becoming a member of the Internet Committee, don’t forget to submit your application in January 2021 when the General Committee Elections will be launched.
ECTA Podcast: CJEU Cofemel decision and its interpretation by National Courts
Enjoy the first ECTA Podcast, developed by the ECTA Design Committee on the CJEU Cofemel decision and how the intricacies of the interaction between Copyright and Design Law have been interpreted by National Courts. You can find the episode on Spreaker HERE and Spotify HERE. The episode is a lively discussion between Shane Smyth (IE) and Niccolò Ferretti (IT) from the Design Committee, together with other colleagues from the Committee: Janne Brit-Hansen (DK), Patrick Wheeler (UK), Filipe Baptista (PT) and Jan Schumacher (DE), who provided engaging insights on how Cofemel has already interacted with National Court Decisions. ECTA podcasts are focused on Intellectual Property related matters. Our episodes are developed by ECTA members and specialised Committees with the aim of providing our listeners with high-quality discussions on key topics in the field of IP, such as designs, copyright, trade marks, geographical indications, anti-counterfeiting and much more. Stay updated with ECTA many initiatives and IP news! Don't forget to regularly check ECTA social media and website at www.ecta.org and download the ECTA APP!
EUIPO STUDY – ONLINE COPYRIGHT INFRINGEMENT IN THE EU: FILM, MUSIC AND TV
EUIPO has recently unveiled the report Online Copyright Infringement in the EU: Film, Music and TV, based on an analysis of the 30 most frequently pirated creative works in each of the EU Member States, including 316 films, 500 music artists and 309 TV series. The study finds that piracy mainly affects creative works recently produced and released. In the case of film, piracy is suffered mainly by films that were commercially successful in cinemas with wide international distribution. Piracy of films from US, UK, France and Italy represents 96 % of film piracy in the EU. Another piracy pattern affects films that were successful in the producing country and that did not enjoy a wide international distribution. In this case, most of the piracy occurred in countries where the films were not released. Piracy of films from Canada, Australia, China, Finland, Germany, India and Russia represents 2.8 % of film piracy and 1.8 % of admissions in EU cinemas. Also, piracy was concentrated in new releases: films produced before 2017 suffered 58 % less piracy than 2017 productions. TV series are the most frequently pirated creative works but the link between piracy and popularity is more difficult to ascertain, as is also the case for music. The study also looks at the tastes of consumers of pirated content across the EU showing a high degree of homogeneity among the Member States, especially for film. The list of the top 30 most pirated film in each Member State is similar to the top 30 list for the EU as a whole. This is less so for TV series and music, where the tastes of pirated content vary significantly across the Member States. -- ECTA Copyright Committee is strongly involved in copyright-related matters. If you are interested and would like to join our Copyright Committee, do not miss the General Committee Elections coming up in January 2021.
ECTA Member’s Voice: Benelux IPO abolishes paper applications and changes Rules on evidence submission
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.
COMMISSION PUBLISHED THE EVALUATION OF THE OBSERVATORY – APPLICATION OF REGULATION No 386/2012
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.
COMMISSION PUBLISHED THE INCEPTION IMPACT ASSESSMENT ON GI PROTECTION AT EU LEVEL FOR NON-AGRI PRODUCTS
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.
WIPO ANTI-CYBERSQUATTING SERVICE: 50.000 CASES
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.
SIGN UP TO ECTA WEBINAR: Is a design reform needed? 3D printing / virtual printing?
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!
EUIPO launched GIview
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.
IP ACTION PLAN ADOPTED BY THE EUROPEAN COMMISSION
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.
EUIPO: IP PERCEPTION STUDY 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.
ECTA MEMBERS’ VOICE: UK IPO Guidance re new IP law post Brexit
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.
FAKE RENEWAL INVOICES: SUCCESSFUL CONCLUSION OF THE RECENT CASE AGAINST THE ECTO AND EPTO SCAMMERS
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.