ECTA Members’ Voice: National implementation of the new Directive on copyright: the deadline has passed, but not much is happening. An update.
ECTA TAKES A STAND - POSITION PAPER ON THE INTERPRETATION OF TECHNICAL FUNCTIONALITY UNDER ART. (8)1 CDR
ECTA Members’ Voice: The fight against counterfeit cannot be only legal. Technological solutions are essential to increase the effectiveness of anti-counterfeiting strategies - The Observatory publishes an Anti-Counterfeiting Technology Guide.
Sign up for the ECTA virtual Round Table - Influencers, super brands and celebs: just fame or a brand with a repute? - 11 February 2021
European Commission: Consultation on the revision of the EU GIs systems in agricultural products and foodstuffs, wines and spirit drinks
ECTA TAKES A STAND - POSITION PAPER ON THE CONCEPT OF “REPUTATION” IN GEOGRAPHICAL INDICATIONS BY ECTA GI COMMITTEE
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
DG TAXUD/EUIPO JOINT PUBLICATION: EU ENFORCEMENT OF IPRs
DG TAXUD and the EUIPO have just published a joint factual document, which presents the results at the EU border and internal market regarding the enforcement of IPRs in 2020. The document is based on data on the detentions at the EU border reported by the customs authorities of all the Member States, through the EU-wide anti-counterfeit and anti-piracy information system (COPIS), as well as the data on detentions within the internal market reported by the enforcement authorities of 23 out of 27 EU Members States, through the IP Enforcement Portal (IPEP). The document aims to support the analysis of IPR infringements in the EU and the development of countermeasures, as well as provides an evidence base for EU policymakers. To read the report in full, please click HERE.
ECTA ANNUAL CONFERENCE ‘WALTZING WITH IP’ - PHOTOS AND SUMMARY
This year, ECTA held its Annual Conference in October and in a hybrid format for the first time. By doing so, we were able to meet in person again for the first time since spring 2020. It was truly special to have our community back together again and enjoy the ECTA Family feeling after such a long break. The academic part of the event, opened by WIPO Director General Daren Tang, Deputy Executive Director of EUIPO Andrea Di Carlo and Head of DG Grow with the European Commission Kamil Kiljanski, was a day-long learning experience with top speakers and guests. Our attendees were updated on the latest IP news and trends with a focus on SMEs and AI, EU case law developments, and many other hot IP topics such as the conflict of interest, brand ethics, and the role of GIs in communicating with consumers. Also, in pace with the times, we introduced a session on soft skills, sharing some good tips on how to acquire clients and network online. The Conference was also a good opportunity for our Committees to move forward with their projects, and for the Supervisory Board to discuss ECTA’s strategic aspects. Being true to the traditions of ECTA’s Annual Conferences, we certainly did not forget about the social aspect! After intense meetings with interesting discussions, we toasted at the Welcome Reception on Thursday and enjoyed a mesmerising Viennese Waltz during the Friday Gala Dinner at the Museum of Applied Arts. It was great to see so many cheerful colleagues and friends getting together again! The high rate of attendance, active participation and incredible enthusiasm of our attendees made it one of the largest in-person IP events this year and proved the strenght of our network of professionals and friends. We thank all participants for the trust and continued support to our Association! Looking ahead, we hope to see many colleagues in Copenhagen at ECTA 40th Annual Conference ‘Designing the Future’, 15-18 June 2022! Save the dates in your calendar!
EUIPO OBSERVATORY DISCUSSION PAPER ON E-PAYMENT SERVICES
The EUIPO Observatory unveiled a discussion paper on challenges and good practices that e-payment service providers, IP owners and law enforcement authorities are facing to prevent the use of such services for IP-infringing activities. The e-payment ecosystem is complex and is changing fast, giving rise to new services and types of payment intermediaries. In particular, IPR infringers increasingly engage in sophisticated uses of these services to make the flow of funds more complicated to trace and undermine the investigative measures to detect illegal activity. To read the executive summary, please click here. To read the report in full, please click here.
EU PARLIAMENT ASSESSED ON COMMISSION’S IP ACTION PLAN
In a report adopted with 454 votes for, 94 against and 23 abstentions, the EU Parliament assessed the ambitions of the Commission’s EU Intellectual Property Action plan and presented an array of recommendations. In particular, MEPs: - Recommend that Member States, Commission, customs authorities, Europol, Interpol and law enforcement authorities work together more closely to fight counterfeiting and piracy. New technologies (AI and blockchain) could be used more to help tackle these crimes. - Support the plan to assess the feasibility of a GI protection system for non-agri products in the EU and expect to see a legislative proposal before the end of 2021. - Call on the 25 participating Member States to quickly ratify the agreement for the unitary patent system and for those not yet engaged to follow suit. - Call for establishing clear criteria for protecting AI-generated inventions. - Encourage Member States to transpose the EU Copyright Directive ‘without delay’. To find out more, please read here.
EUIPO TMD WEBINAR SERIES: ECTA AND BMM JOINT WEBINAR (9 DEC)
The EUIPO ECP7 TMD Implementation Training project has organised, in collaboration with the National IPOs and User Associations, including ECTA, a series of live webinars which are covering topics related to the changes brought about by the transposition of the EU Trade Mark Directive in each Member State. In particular, ECTA and BMM will jointly participate in a webinar on 9 December (10.00-12.00 CET) within the framework of the EUIPO TMD webinar series. Speakers from both Associations, Delia Belciu (ECTA), Mara Mondolfo (ECTA), Carina Gommers (BMM), Lenneke van Gaal (BMM) will discuss what has changed in the trade mark opposition procedure as well as in the cancellation, invalidity, revocation procedure from the Benelux, Romania, Italy and other EU jurisdictions’ perspectives. The webinar will be held in English via the Zoom Webinar platform. To find out more and register, please visit here.
EUIPO ACADEMY'S LEARNING AND TRAINING IN NOVEMBER
The EUIPO’s Academy offers webinar courses every Tuesday. 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 on the EUIPO learning portal after the broadcast. The November schedule of the webinars is as follows: Tuesday 9 November, 10:00-11:00 (CET): EUIPO and WIPO Intellectual property support initiatives for your business - Basic Tuesday 16 November, 10:00-11:30 (CET): Interactive webinar: Packaging as a product: an IPR perspective - Intermediate Tuesday 30 November, 10:00-11:00 (CET): Find a backer for your business - How intellectual property can boost access to financing from private equity investors - 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 eLearning courses: - Green EUTM study - Intermediate - Link - IP and Pop culture: Batman, James Bond, Pinocchio, Mowgli and trade mark right. Webinar organised in collaboration with CEIPI - Intermediate - Link - Empowering & protecting creativity through intellectual property - Basic - Link For further information please visit the Academy's Learning Portal.
EUIPO OBSERVATORY: RELEASE OF TWO NEW STUDIES
The EUIPO Observatory has recently released two new studies: 1) Vendor accounts on third party trading platforms This research unveils online business models infringing IPRs, in particular tactics, techniques and procedures used by vendors on third-party trading platforms. It also provides an overview of the various stages of infringing goods online, enforcement actions that can be deployed, as well as emerging forms of marketing of IP-infringing goods on social media and live streaming. The study shows how the supply of counterfeit and pirated products via online marketplaces is a lucrative and well-organised activity and aims to raise awareness in this regard among EU and third-country citizens, businesses, authorities and policy makers. To read the full study, please click here. 2) OECD-EUIPO Misuse of e-commerce for trade in counterfeits The misuse of e-commerce has become particularly alarming during the COVID-19 pandemic, given the increasing volume of e-crimes. This study uses a statistical methodology to evaluate the degree of abuse of the online environment and provides highlights of government actions and industry initiatives to counter trade in counterfeit goods. The aim is to better understand such threat and develop effective governance responses to support post-COVID recovery. To read the full study, please click here.
ECTA AWARD 2021 WINNERS
ECTA is pleased to announce the 1st, 2nd and 3rd prize winners of the ECTA Award (2021) competition: Professional category: 1. Daniel Inguanez - A Refined Approach to Originality in EU Copyright Law in Light of the ECJ’s Recent Copyright/Design Cumulation Case Law 2. Silvia Francazi - The CJEU denies the extensibility of the protection afforded to the denomination “Aceto Balsamico di Modena” (Balsamic Vinegar of Modena, translator’s note) to the single nongeographical components of the PGI: reconstruction of the arguments and analysis of the critical aspects of the ruling 3. Marc Mimler, Uma Suthersanen - An Autonomous EU Functionality Doctrine for Shape Exclusions Student category: 1. Vera Sevastianova - Trademark Functions in the Age of Voice Shopping: A Search Costs Perspective 2. Mikko Antikainen - Differences in Immaterial Details: Dimensional Conversion and Its Implications for Protecting Digital Designs Under EU Design Law 3. Ángela Helena Martínez López - The Interface between Trade Marks and Plant Variety Denominations: Towards Clearer Coexistence at International and EU level Papers have been judged by the ECTA Professional Affairs Committee and several members from other specialised ECTA Committees, followed by an approval by the Board of Directors. We would like to sincerely congratulate our winners for the relevance of their work and thank the many participants who have submitted their papers during this competition. We highly encourage all the IP students and professionals, as well as those who have not been selected as winners for last year’s Award, to apply/reapply for the 2022 edition. THE NEXT EDITION OF THE COMPETITION WILL BE LAUNCHED SOON and we are looking forward to receiving your article or essay of importance for the development of European Trade Mark, Design, Copyright or Geographical Indications Law. Besides a monetary prize, you can win 18 months of ECTA membership. To find out more about ECTA Award, please visit HERE.
The October Bulletin is out!
Many interesting updates in IP are waiting for you in the October edition of the ECTA Bulletin! You will find an interview with Jess Honculada (Senior Counsellor, Department for Trademarks, Industrial Designs and Geographical Indications, WIPO) about her career and role at WIPO, the effects of COVID-19 and her outlook on interacting with organisations such as ECTA. Among the numerous engaging articles, you will learn more about recent copyrights decisions by the Paris Court of Appeal, General Courts decisions on the matter Chanel/Huawei, Spanish Supreme Court’s judgment about bullfighting and boundaries of copyright law, as well as Russia’s largest bank – Sberbank dispute on the gTLD ‘Sbarbank-info.com’. You will also find the review of the book ‘Brand, political brands and Donald Trump’ by Jess M. Collen, an overview of ECTA Debate Club June sessions and all features of the ECTA APP. Not to be missed: 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! If you would like to contribute to the next ECTA Bulletin or other ECTA publications, please contact our Publications Committee at email@example.com.
ECTA 39th Annual Conference - Access the Virtual Hub!
Get ready for the Conference and access the Virtual Hub! Log in with your First Name/Last Name/Registered Email Address, check your phone and email for the One Time Passcode and you are all set to navigate the platform. In the Virtual Hub you can: • Browse through the list of all attendees (both, attending online and onsite), exhibitors and media partners; • Exchange messages with other attendees, exhibitors and media partners; • Join ECTA Coffee Breaks to network around a virtual table with up to six participants per table, as of 13 October every day from 2:00 to 2:30 pm CET and between each session on the Conference day. Our President Anette Rasmussen will be joining the ECTA Coffee Breaks on 15 and 18 October; • Consult the Conference Programme; • Attend the online workshops on 13 October 2021; • Attend your Committee meetings and all sessions on 21 and 22 October, if you are an online attendee; • Access the recordings of all workshops and sessions afterwards. Please make sure to open the Hub with the latest version of Google Chrome / Firefox / Microsoft Edge or Safari. Only Conference registrants can access the Hub! Should you have any questions, please send an email to firstname.lastname@example.org. Enjoy the event!
ECTA MEETINGS WITH THE EUROPEAN COMMISSION
ECTA recently took part in a number of online meetings with relevant DGs of the European Commission (DG GROW, DG TRADE, DG AGRI) and the Permanent Representation of France in the EU to discuss most important topics of the IP agenda in Europe at this moment, including: • Support for SMEs; • Design Reform; • EU anti-counterfeiting toolbox; • Geographical indication protection for non-agricultural products at EU level; • Other topics of interest to our members, their work and the projects ongoing within the ECTA Committees. The meetings were attended by the ECTA Board of Directors (President, Anette Rasmussen; First Vice-President, Mladen Vukmir; Second Vice-President, Carina Gommers; Secretary General, Carolin Kind; Treasurer, Jordi Güell) and ECTA Head of Legal Affairs (Anna Ostanina). Some of the meetings were also supported by representatives from our specialised ECTA Committees, such as the Geographical Indications Committee Chair (Paola Ruggiero) and International Trade Committee Chair (Renate Pouw). Maintaining direct contact and open dialogue with our colleagues within the European Commission, Parliament, Council, EUIPO, WIPO and other institutions is highly important to ECTA and is an integral part in our pursuit of the balance of IP rights.
ECTA 39TH ANNUAL CONFERENCE – REGISTRATION OPEN FOR NON-MEMBERS AND MEMBERS ALIKE!
All IP colleagues can now register for the ECTA 39th Annual Conference ‘Waltzing with IP’ on 21/22 October, either in Vienna and online! If you register as a non-member to attend the event on-site, you will also get the opportunity to join ECTA free of charge for the rest of 2021. If you are a member who has not signed up yet, secure your place fast at a reduced fee: on-site places will be allocated on a first come-first served basis until capacity is reached. HURRY UP AND REGISTER HERE! **ECTA Committee members kindly be reminded to be registered accordingly, irrespective of which attendance option you have chosen (1. On-site Conference in Vienna 2. Online Conference 3. Online Committee Meetings only).** This year we have worked even harder to ensure a captivating programme! Thursday, 21 October will be fully dedicated to ECTA Supervisory Board and Committee meetings, whereas Friday, 22 October will be an immersive educational and networking day with most distinguished guests and speakers such as WIPO Director General Daren Tang, who will open the academic part of the Conference with a keynote speech. Besides, to evoke the original format of the ECTA’s Annual Conference, our usual Wednesday workshops will be offered exclusively online one week before the event on 13 October, as part of the ‘Conference package’. Consult the full schedule here! On-site registrants are also invited to our usual Gala Dinner, organised in accordance with all safety protocols at the Museum of Applied Arts (MAK)! After a welcome drink, you will have the opportunity to visit the permanent exhibition, dedicated to the development of Viennese arts and crafts between 1890 and 1938. The dinner will be accompanied by jazz music and…an enchanting surprise! Last, but not least, all registrants can navigate the virtual Attendee Hub from the beginning of October by receiving via email the link to access the platform. Here you will be able to browse the list of participants, exhibitors and media partners, exchange messages, join group discussions, consult the program and much more. During the event, the platform will deliver live broadcast quality viewing of all meetings and sessions to those attending virtually. The health and safety of our Conference participants is ECTA’s main concern, therefore, our attendees will be required to strictly comply with all Austrian COVID-19 regulations (Austrian State, Federal Government or City of Vienna) at the time of registration and at the time of travelling and participating in the event. Austrian COVID-19 regulations are regularly updated here and here. In addition, participants may be required to provide proof of their Covid eligibility to enter Austria and to participate in the event, if requested on-site. We are looking forward to welcoming many IP colleagues either in Vienna or online!
BREXIT - IMPORTANT DEADLINE (GRACE PERIOD ENDING: 30 SEPTEMBER 2021)
By ECTA International Trade Committee Although EU trade mark and design rights which were registered and fully protected with the EUIPO prior to ‘Brexit Day’ (1st January 2021) were automatically ‘cloned’ and reciprocal UK rights granted, any EUIPO rights which were pending or whose status may have been unclear were NOT cloned and immediate action is needed to protect them in the UK. Such rights include: - Trade Mark applications under opposition; - Registered rights being challenged (for any reason); - International Registrations (‘IRs’) designating the EU whose protection had not been confirmed by the EU; - IRs designating the EU whose renewal had not been notified to the EUIPO by WIPO before Brexit Day (whether or not renewed); and - Registered Community Designs with deferred publication. The deadline for protecting these rights in the UK expires on 30 September 2021 and cannot be extended. It is important to note that IRs (whether trade mark or design) designating the EU have not been treated as though they have become IRs designating the UK. Instead, a new UK right has been created. This means that: i) renewal of the corresponding IR at WIPO will have no bearing on renewal of the new UK right; ii) early payment of the renewal fee at WIPO, prior to 1 January 2021, will have had no effect in respect of the new UK right; iii) the new UK right will be subject to a UK renewal action and fee, whether or not renewal action was taken on the corresponding IR before 1 January 2021; and iv) a UK right was not created for any IR which had not received a Statement of Grant from the EUIPO prior to 1 January 2021.
WIPO: VIRTUAL EXHIBITION AND WORLDWIDE SYMPOSIUM ON GIs
As of today until 6 March 2022, WIPO hosts a Virtual Exhibition on Geographical Indications. The exhibition offers visitors the opportunity to learn more about geographical indications, including the Lisbon System for the International Registration of Appellations of Origin and Geographical Indications, as well as examples of geographical indications from numerous countries around the world for different types of products. The initiative is organised on the occasion of the Worldwide Symposium on Geographical Indications (6-8 September 2021), which brings together representatives of national administrations, GI producers and specialists to exchange ideas on issues relating to the topic as well as offers technical insights and information on recent developments in the field. ECTA Data Committee Chair Delia Belciu has the pleasure to intervene as a speaker in the panel ‘Challenges for Geographical Indications and the Internet Domain Name System’ (Wednesday, 8 September), while ECTA Geographical Indications Chair Paola Ruggiero will attend the event on behalf of our Association. To find out more about the Symposium and follow the discussions via webcasting, please click here. The Virtual Exhibition is also open to the public on WIPO’s website in six languages: English, Arabic, Chinese, French, Russian and Spanish.
SMEs fund - fifth and last application window open until 30 September
SMEs can apply for financing support under the new Ideas Powered for Business SME Fund until 30 September. This is the fifth and last windows for applications. 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. 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 IP Course for Paralegals (14-15 September)
This year’s EUIPO IP Course for Paralegals will be held online on 14 and 15 September 2021. The course will give participants in-depth knowledge of the updates made to the EUIPO’s practice with practical examples and exercises. The programme will also include two panel discussions covering brand protection in the online environment and the EUIPO initiatives to support SMEs (ADR, pro bono services, easy e-filing, SME corner). As an ECTA, you are entitled to attend this course free of charge by registering HERE before 9 September.
EUIPO TMD Webinar series - including ECTA and BMM joint webinar
The EUIPO ECP7 TMD Implementation Training project has organised, in collaboration with National IPOs and User Associations, including ECTA, a series of live webinars which will cover topics related to the changes brought about by the transposition of the Trade Mark Directive in each country. This first set of webinars will be broadcasted via Zoom every Thursday, from 16 September until 9 December, and will be done in the respective national language (as appropriate) and English. Each presentation will take approximately 20 minutes plus 10 extra minutes for Q&A. In particular, ECTA and BMM will run a joint webinar on 9 December (10.00-12.00 CET). Both Associations representatives will speak about what has changed in the trade mark opposition procedure as well as in the cancellation, invalidity, revocation procedure from the Benelux, Romania, Italy and other EU jurisdictions perspectives. To find out more about the scheduled webinars and register for those you are interested in, please click here.
EUIPO LEARNING AND TRAINING IN AUGUST
On the EUIPO Learning Portal you can find the following recently published eLearning courses: - New Forms of Trade Marks in the European Union - Basic - Link - Amendment and restriction of lists of goods and services: practice, tricks and tips - Basic - Link -Generating income and impact with IP licensing - Basic - Link - IP behind and inside movies – a practical analysis of today's movie industry. Webinar organised in collaboration with the EPO - Intermediate - Link For further information please visit the Academy's Learning Portal. To find out more about the upcoming EUIPO Tuesday webinars viisit the Academy's Calendar.
New Decision of the Executive Director on the payment of fees and charges
The EUIPO Executive Director signed a new Decision (No EX-21-5) on 21 July concerning methods of payment of fees and charges. This decision repeals previous decision No EX-17-7. This new decision expressly allows those defined as ‘authorised persons’ in renewal proceedings (pursuant to Article 53(1) EUTMR and Article 13(1) CDR respectively) to now hold a current account with the Office so they can process and pay their renewals for both EUTMs and RCDs, pursuant to Article 3(d. The change has been implemented to enhance the efficiency of the renewal payments process and to remove any discrimination in the payment methods made available to authorised persons compared to other types of user.
ECTA CREATES THE SME TASK FORCE
As the SME topic is very high on the agenda of the EUIPO, WIPO and European Commission, ECTA decided to create an ad hoc Task Force to better follow the developments in this regard. The task force is Chaired by Past ECTA President Sozos-Christos Theodoulou (CY) and composed of other experienced members of the ECTA Advisory Board, Supervisory Board and Professional Affairs Committee. The task force, already involved in the ECP6 Working Group ‘Supporting SMEs’ and EUIPO Expert Group on ‘SMEs’, will also deal with other SME-related projects and initiatives to empower SMEs across and beyond the EU to protect and enforce their competitive advantage through IP rights.