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
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.
EUIPO LEARNING AND TRAINING IN JULY
The EUIPO’s Academy offers the following webinar on Tuesday 6 July, 10:00-12:00 (CET): ITrack on case-Law: decisions of the trimester of the EUIPO's Boards of Appeal - decisions of the trimester of the GC and the CJEU, 2021 Q2 - Advanced. The session is open to all and a live chat with the speakers will be made available. Please note that the recorded webinar is available on the EUIPO learning portal after the broadcast. Visit the Academy's Calendar to access the webinar and see the latest updates for the upcoming months. On the EUIPO Learning Portal you can also find the following eLearning courses: - Plant Variety Rights: insights and tips for enforcers - Intermediate - Link - Judicial Cooperation in Online Intellectual Property Cases - Intermediate - Link -Register and fees operations – the great unknown - Advanced - Link - Proof of Reputation: What evidence to submit - Intermediate - Link For further information please visit the Academy's Learning Portal. Besides, the application period for the EUIPO Trade Mark and Design Education Programme for practitioners has been extended until 31 July. The 4th edition will offer 60 places which will be allocated on a ’first come first served‘ basis. For more information about the study plans, indicative dates and the tuition fees, please read here.
WIPO RELEASED THE MADRID SYSTEM YEARLY REVIEW
WIPO has recently released the latest edition of the Madrid System Yearly Review, providing facts and figures as well as an analysis of international trade mark registrations in 2020. The report shows that the number of international applications filed fell by 0.6% in 2020, while international registrations fell by 3.2%. However, the overall number of active (in force) registrations increased by 4%, while renewals increased by 11.6%. Despite one-year declines, applicants based in the US (10.005) and Germany (7.334) continued to file the highest numbers of Madrid applications in 2020. From among the top 10 origins, China recorded the higher growth in 2020 (+16.4%). However, the UK (+5.1%) and Italy (+3.6%) also reported notable growth. On the other hand, Madrid applications from France (-16.3%), Switzerland (-5.4%) and Turkey (-15.4%) saw the biggest declines among the top 10 origins. The Review also includes a special theme, comparing the ongoing COVID-19 pandemic in 2020 and the global financial crisis of 2008-2009. Read the Executive Summary here.
SMEs fund - fourth application window is now open
SMEs can apply for financing support under the new Ideas Powered for Business SME Fund until 31 July 2021. This is the fourth of five windows for applications, 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 the fifth and last application window will be open between 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.
ECTA-WIPO BILATERAL MEETING
On 28 June 2021, ECTA and WIPO held a virtual meeting to discuss topics of mutual interest and importance such as: • Consequences for the Madrid and Hague System after Brexit; • WIPO’s information and communication technology (ICT) strategy; • Next steps planned by WIPO in respect of the AI issues; • Issues and concerns regarding security on existence of rights in China. Newly elected WIPO Director General Daren Tang attended the Bilateral Meeting, along with other WIPO colleagues, ECTA President, Head of Legal Affairs and WIPO-Link Committee representatives. ECTA is extremely grateful to WIPO and ECTA members for the willingness to discuss ways to improve Global IP systems, especially during the many Bilateral Meetings we have held regularly over the past years. We look forward to further fruitful collaboration with WIPO and continuation of the open dialogue we have established together.
EUIPO TRADE MARK AND DESIGN EDUCATION PROGRAMME – REGISTRATION CLOSES ON 30 JUNE
Last days to register for the 4th edition of the EUIPO Trade Mark and Design Education Programme for Practitioners and the 1st edition of the Programme for Paralegals. The Education Programme, which is held annually, has been created to offer structured training to the community of intellectual property professionals, helping them to better support EU businesses and, in so doing, to strengthen the trade mark and design registration systems managed by the EUIPO. - 4th edition of the ETMD EP for Practitioners The EUIPO Trade Mark and Design Education Programme for Practitioners has been specially designed to accommodate the training needs of intellectual property practitioners dealing with the registration and prosecution of European Union trade marks and Community designs. This edition offers 60 places, starts in September 2021 and lasts until May 2022. - 1st edition of the ETMD EP for Paralegals This newly introduced programme is a custom-made training course mainly intended for professionals working as intellectual property administrators, legal assistants, company employees who deal with legal matters or similar. This edition offers 50 places, starts in September 2021 and lasts until February 2022. Registration for both programmes closes on 30 June 2021 and places will be allocated on a first come - first served basis. For more information about the programme, please visit the ETMD EP website. ECTA is honoured to continue to be closely involved in this initiative by participating actively on the Steering Committee and Examination Board as well as nominating speakers/teachers for the programme. ECTA has been advocating for the need of a special programme for paralegals and is looking forward with enthusiasm to the first edition of this important initiative. We encourage our members and paralegals in their firms to enrol and take part in the programmes.
EUIPO webpage on E-commerce marketplaces’ IP protection tools
The EUIPO has recently launched a new webpage that gathers useful information regarding e-commerce marketplaces’ IP protection tools. The purpose is to make it easier for businesses to take action against IP infringements and protect customers by using the resources made available by these marketplaces. In particular, the EUIPO platform provides guidance on notification systems, IP protection programmes and contact points for those e-commerce marketplaces that have provided the Office with such information (e.g. Ebay, Etsy, Amazon, Subito, Wish, Facebook, etc.). If you need any further information in this regard, please contact firstname.lastname@example.org.
ECTA JUNE BULLETIN IS OUT!
Many interesting updates in IP are waiting for you in the June edition of the ECTA Bulletin! You will find a report from our successful 2021 ECTA ®etreat and learn more about the work of our Committees. Among other interesting articles, flip through the review on the implementation into French Law of the Art. 45 of the Directive 2015/2436 (EU Trade Mark Reform Package) and the analysis of judgement C-833/18 (Brompton Bicycle v. Chedech/Get2Get), where the CJEU evaluated how appearance features of products with technical functions can benefit from copyright protection. You will also read about the Allatini Case (Decision No. 87/2020 Athens Court of First Instance), the protection against architectural plagiarism, the enforcement of well-known trade marks in Africa as well as the innovative solutions offered by IP service providers. Not to be missed: the review of the book for kids ‘How the World Really Works: Intellectual Property’ and our 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 MEETINGS START TODAY!
Starting from today to 25 June, ECTA will hold the Supervisory Board and Committee Meetings to discuss ECTA strategic and financial aspects, network with peers, advance projects as well as learn about recent case law, legislative and policy developments. Besides, all ECTA members are invited to join us at the Annual General Meeting on 25 June. Don’t forget that two other sessions of the ECTA Debate Club are taking place in the upcoming days: Friday, 25 June (14.00-15.30 CET): Proof of use of a trade mark. A very important factor for all countries? (Session Partner: Koushos Korfiotis Papacharalambous LLC) Tuesday, 29 June (11.00-12.30 CET): Are we in a new era in the fight against trade mark squatting in China? (Session Partner: AWA) The ECTA Debate Club June 2021 is organised with the support of Knowledge Partner Koushos Korfiotis Papacharalambous LLC. If you are a member interested to debate on these topics, pre-register free of charge via the ECTA Private Site/News Section. Hurry up, few places are still available! We wish good luck and very fruitful meetings and debates to our fellow ECTA members!
ECTA Members’ Voice: National implementation of the new Directive on copyright: the deadline has passed, but not much is happening. An update.
By Fabio Angelini, ECTA Copyright Committee Vice-Chair, Bugnion S.p.A. (IT) Despite much fanfare and somewhat wishful thinking headlines by the European Commission (cf. ‘New EU copyright rules that will benefit creators, businesses and consumers start to apply'), 7 June 2021 marked another disappointing step in the so far quite arduous path of the Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC (the ‘New Copyright Directive’). Indeed, while according to Art. 29 of the New Copyright Directive Member States were required to bring into force the laws, regulations and administrative provisions necessary to comply with this Directive by 7 June 2021, at this time, only a handful have done so. To the best of my knowledge, only Denmark and Germany have actually passed bills to implement the full text of the New Copyright Directive, (cf. here), while the European Commission website reports that only France, Hungary and Czech Republic have notified the Commission of having implemented some part of the New Copyright Directive (cf. here). Surely it did not help Member States that the European Commission waited until 4 June 2021 to publish its ‘Guidance on Article 17 of Directive 2019/790’ (possibly the most contested and controversial article of the New Copyright Directive), which is certainly an interesting document to read, but whose effectiveness at this time, when many Member States have already engaged in lengthy internal discussions and various draft bills are pending, is doubtful. Another factor in the delay of implementation could also be the challenge by Poland at the Court of Justice (cf. case C-401/19, action brought on 24 May 2019 — Republic of Poland v European Parliament and Council of the European Union) where Poland is seeking the annulment of Article 17(4)(b) and Article 17(4)(c), in fine (i.e. the part containing the following wording: ‘and made best efforts to prevent their future uploads in accordance with point (b)’) or in the alternative, should the Court find that the contested provisions cannot be deleted from Article 17 without substantively changing the rules contained in the remaining provisions of that article, that the Court annul Article 17 in its entirety. As widely reported, Poland alleged infringement of the right to freedom of expression and information guaranteed by Article 11 of the Charter of Fundamental Rights of the European Union, claiming specifically that the imposition on online content-sharing service providers of the obligation to make best efforts to ensure the unavailability of specific works and other subject-matter for which the right holders have provided the service providers with the relevant and necessary information and the imposition on online content-sharing service providers of the obligation to make best efforts to prevent the future uploads of protected works or other subject-matter for which the rightsholders have lodged a sufficiently substantiated notice, make it necessary for the service providers (in order to avoid liability) to carry out prior automatic verification (filtering) of content uploaded online by users, and therefore make it necessary to introduce preventive control mechanisms. Thus, according to Poland, such mechanisms undermine the essence of the right to freedom of expression and information and do not comply with the requirement that limitations imposed on that right be proportional and necessary. The Advocate General had said it would render his opinion in April 21, but then the Court of Justice announced that the opinion would be delayed until July 15 (cf. here). Thus, it is perhaps comprehensible that Member States are not rushing to implement the New Copyright Directive. The ECTA Copyright Committee is closely following the implementation of the New Copyright Directive and welcomes contributions and comments by all ECTA members. ---- 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.
EUIPO LAUNCHED A NEW OUT-OF-COMMERCE WORKS PORTAL
The EUIPO launched a new Out-Of-Commerce Works Portal, a platform where to access information about ongoing and future uses of out-of-commerce works: books, films, or visual works, that are still protected by copyright but are no longer or have never been commercially available. Cultural heritage institutions contain millions of out-of-commerce works in their collections, which still hold value for research or education purposes or are simply entertaining. Directive (EU) 2019/790 introduced a legal framework to support the digitisation and cross-border dissemination of out-of-commerce works. Information about these works has to be stored in a public single online portal, the creation and management of which has been entrusted to the EUIPO. The regime will complement the measures already in place for the use of orphan works at European level such as the Orphan Works Database.
EUIPO TUESDAY WEBINARS IN JUNE
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 June schedule of the webinars is as follows: Tuesday 15 June, 10:00-11:30 (CET): IP behind and inside movies – a practical analysis of today's movie industry. Webinar organised in collaboration with the EPO - intermediate Tuesday 22 June, 10:00-11:00 (CET): Promote creativity, innovation and entrepreneurship with IdeasPowered@school resources! - Basic Tuesday 29 June, 10:00-11:00 (CET): The new services offered by alternative dispute resolution - 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 eLearning courses: - Digital infringement study - Intermediate - Link - Track on Case Law: Judgments of the GC and CJEU- Decisions of the EUIPO Boards of Appeal 2021 - Advanced - Link - Introduction to the Geneva Act & Lisbon System for the International Registration of Appellations of Origin and Geographical indications - Intermediate - Link - New Common Practices 2021: new types of trade marks and appeal proceedings - Advanced - Link For further information please visit the Academy's Learning Portal.
WORLD ANTI-COUNTERFEITING DAY 2021: RISKS AND DAMAGES POSED BY IPR INFRINGEMENT IN EUROPE
Today is the World Anti-Counterfeiting Day and the EUIPO has launched a Pan-European Campaign to raise awareness of the risks and damages posed by IPR infringement in Europe. According to the EUIPO study European Citizens and Intellectual Property, consumers still find it difficult to distinguish between genuine and fake goods. Nearly one in ten Europeans (9%) claimed that they were misled into buying counterfeits, with significant differences among EU Countries: Member States with a higher proportion of misled consumers are Bulgaria (19%), Romania (16%) and Hungary (15%), while Sweden (2%) and Denmark (3%) have the lowest figures within the EU. In a context where e-commerce is booming (over 70% of Europeans shopped online in 2020, according to Eurostat) uncertainty regarding counterfeit products remains a concern among EU citizens. According to the study, a third of Europeans (33%) wondered whether a product they had bought was original. A joint study by the EUIPO and the OECD shows that counterfeits represent 6.8% of EU imports worth EUR 121 billion and they impact every sector: cosmetics, toys, wine and beverages, electronics, clothing and even pesticides. During the COVID-19 pandemic, concern over counterfeit products has risen with a sensitive increase of counterfeit medicines and other medical products (e.g. antibiotics, painkillers, personal protective equipment, face masks, etc.). In addition to the health and safety risks, counterfeits often lead to security breaches and financial losses. Digital piracy is another lucrative market for infringers, especially in the case of IPTV - televised content acquired through an internet connection. Providers of illegal IPTV gain almost EUR 1 billion euro every year in the EU, harming content creators and legitimate businesses. Besides, counterfeiting not only affects consumers but also entails significant damage to the EU economy and, in particular, to SMEs. According to the IP SME scoreboard published by the EUIPO, one out of four SMEs in Europe claims to have suffered from IP infringement. To find out more about risks and damages posed by IPR infringement in Europe, please read here and here. ----- ECTA is also actively contributing to the fight against counterfeiting by sharing professional experience and best practices at the EU level and beyond, inter alia in its Anti-Counterfeiting Committee. To learn more about our Anti-Counterfeiting Committee, please click here.
ECTA Debate Club and June Meetings
June has just arrived, and we are looking forward to having you on board for our upcoming initiatives and meetings! We are about to launch the registration for the new online ECTA Debate Club, a series of educational and networking IP sessions open to a maximum of 30 members. Here is what you can expect to debate on: Tuesday, 15 June (14.00-15.30 CET): Registrability of trade marks against public order or morality Thursday, 17 June (14.00-15.30 CET): NFTs – A brave new world, or the emperor’s new clothes? (Session Partner: Wiggin LLP) Friday, 25 June (14.00-15.30 CET): Proof of use of a trade mark. A very important factor for all countries? (Session Partner: Koushos Korfiotis Papacharalambous LLC) Tuesday, 29 June (11.00-12.30 CET): Are we in a new era in the fight against trade mark squatting in China? (Session Partner: AWA) All sessions are organised with the support of Knowledge Partner of the ECTA Debate Club June 2021 Koushos Korfiotis Papacharalambous LLC. Save the date and look out for ECTA emails announcing each session separately with the respective registration link or check the ECTA Private Site/News Section. Places will be assigned on a first come-first served basis, so make sure you apply quickly! Besides, from 21 to 25 June, we will hold online Supervisory Board and Committee Meetings. While the Supervisory Board will discuss ECTA strategic and financial aspects, Committee Meetings will be an invaluable opportunity to network with peers, advance projects and learn about recent case law, legislative and policy developments. All ECTA members are invited to join us at the Annual General Meeting on 25 June. To consult the schedule of June events, please click here.
ECTA MEMBER’S VOICE - AT LAST: COUNTERFEITING ON THE POLITICAL PRIORITY LIST IN BRUSSELS
By Gie van den Broek, ECTA Anti-Counterfeiting Committee, LXA The Law Firm (NL) and Bartosz Krakowiak, ECTA Anti-Counterfeiting Committee, POLSERVICE Patent and Trademark Attorneys Office (PL) Over the past years, various international institutions have hit the alarm regarding the undermining impact of counterfeit products on society as a whole. Counterfeiting costs jobs, it can endanger health, it can be interrelated with money laundering and funding of terrorism, in most cases, it is related to tax evasion. It hurts the economy and is theft of intellectual property in any case. Counterfeit products find their way to consumers in a few online clicks nowadays. This requires action and political courage to change the rules. With a set of conclusions under the name EMPACT (European multi-disciplinary platform against criminal threats administered by Europol), the Council of the European Union has now formally earmarked IP crime and counterfeiting as one of the priorities to be implemented in an operational action plan with an aim defined as follows: 'to combat and disrupt criminal networks and criminal individual entrepreneurs involved in IP crime and in the production, sale or distribution (physical and online) of counterfeit goods or currencies, with a specific focus on goods harmful to consumers’ health and safety, to the environment and to the EU economy.' To find out more, please read here and here. ---- ECTA is a recognised discussion partner for the most important public and political bodies such as EU Institutions, EUIPO, WIPO and other national and international organizations. Yearly official meetings with the European Commission, EUIPO and WIPO allow us to maintain a strong influence on the developments impacting our members as well as on future of intellectual property rights policy and regulation. ECTA was one of the associations which successfully joined their forces to convince the decision makers at the EU and national levels to list IP crime and counterfeiting as one of the priorities for Europol’s EMPACT.
ECTA WEBINAR ON SLOGANS - WATCH THE RECORDING!
Have you missed the interactive discussion of our latest Webinar ‘Slogans..but made for branding. A new threshold for registrability of slogans after Oatly?’ The recording of it is now available on demand! ECTA Second Vice-President Carina Gommers (Wiggin, BE) moderated a high-level panel of speakers: Klaudia Błach-Morysińska (Zaborski, Morysiński Law Office, PL), Luc Suykens (UBA,BE), and Bart ten Doeschate (Heineken, NL). How easy is it to register slogans, should they be registered, and what can be done to ensure their protection? After an overview of relevant EU judgements, including the last ‘milky’ case, our speakers discussed the degree of distinctiveness required and whether it will be easier to register slogans as trade marks. They also provided insights from a marketing perspective, such as how a slogan is practically developed as well as addressed in-house legal challenges around this topic. If you are interested in receiving access to the recording of the Webinar, please send a request to firstname.lastname@example.org. The price of this on demand offering is 25,00 € for ECTA members and 55,00 € for non-members.
ECTA TAKES A STAND - POSITION PAPER ON THE INTERPRETATION OF TECHNICAL FUNCTIONALITY UNDER ART. (8)1 CDR
By Barnabas Mezo, ECTA Design Committee member, Oppenheim (HU) and Ralf Hackbarth, ECTA Design Committee member, Klaka (DE) With its recent DOCERAM decision (Case C 395/16), the CJEU gave an interpretation on how to assess if a product appearance is solely dictated by its technical function and hence excluded from Community design protection. The CJEU has opted for the theory of causality, according to which the exclusion laid down in Article 8(1) CDR should come into play where aesthetic considerations do not have the slightest influence in developing the design. However, this does not mean that a design must have an aesthetic quality. At first glance, the DOCERAM decision might give a different impression. Through its work, ECTA Design Committee found that the now applicable theory of causality, also called ‘no-aesthetical-consideration-test’, might lead to a greater legal uncertainty as to when features of appearance of a product are solely dictated by function. Furthermore, ECTA Design Committee has realised that some national courts interpret the technical functionality exception too broadly, thereby excluding designs that should be protected from protection. Against this background, ECTA considers it necessary to comment on the interpretation of technical functionality under Article 8(1) CDR and proposes a clarification to the Recitals of the future European Design package. ECTA wants to express that technical designs features are still protected by design law, as opposed to designs features solely dictated by function under Article 8(1) CDR. ECTA's position paper, recently submitted to the European Commission, welcomes the applicability of the causality theory (‘no-aesthetical-consideration-test’). However, this position paper also notes that the DOCERAM decision does not mean that aesthetic considerations become more important and does not at all affect the interpretation of technical features of designs with regard to the overall impression under Art. 6 and 10 CDR. Finally, it gives some practical guidance as to determining the features solely dictated by technical function.
ECTA JUNE MEETINGS AND EVENTS
A lot is cooking for ECTA members in June! Here a glimpse of what to expect: As you know, we are launching soon our new online event concept ECTA Debate Club, a series of educational and networking IP sessions exclusively open to ECTA members for free. The sessions will take place virtually on 15, 17, 25 and 29 June and will be open to a maximum of 30 members to allow interactivity. Places will be assigned on a first come-first served basis, so make sure to apply as soon as the registration opens in the coming weeks! From 21 to 25 June, we will hold online Supervisory Board and Committee Meetings. While the Supervisory Board will discuss ECTA strategic and financial aspects, Committee Meetings will be an invaluable opportunity to network with peers, advance projects and learn about recent case law, legislative and policy developments. Besides, all ECTA members are invited to join us at the Annual General Meeting on 25 June. To consult the schedule of June events, please check the News Section in the private site. We invite you to stay updated by checking the ECTA website, LinkedIn, Twitter and the ECTA APP regularly.
ECTA TAKES A STAND - POSITION PAPER ON 3D PRINTING AND ITS IMPLICATIONS ON DESIGN LAW BY ECTA
By Katri Kiviniemi, ECTA Design Committee member, Castrén & Snellman Attorneys Ltd (FI) and Marta Alves Vieira, ECTA Design Committee Secretary, Vieira de Almeida & Associados (PT) ECTA’s Design Committee has been carefully following the developments of industrial 3D and 4D printing and their potential impact on intellectual property rights, particularly in design law and practice. A task force was created within the ECTA Design Committee to monitor the developments in this field and to assess whether a change in the current legislation would be appropriate and recommended in order to deal with the challenges brought by these new technical developments. 3DP is a fast-developing technology, even if it still is somewhat unclear to what extent and how fast it will become more widely spread and used in the industry and in private use. It is, however, clear that this technology and other developing technologies alike are challenging intellectual property laws, and when reviewing changes to these laws, their implications should be anticipated or, at least, taken into consideration. In April 2020, the European Commission launched a Study carried out for the European Commission, entitled ‘The Intellectual Property Implications of the Development of Industrial 3D Printing’ dated February 2020. In June 2020, the Committee had already been engaged in ECTA’s Brief Report on 3D Printing and Comments to this European Commission Study. Moreover, ECTA is strongly committed with the European Union Design Reform project and has already contributed to the Public Consultation with an assessment on design law and protection. This contribution led to the European Commission’s Evaluation of EU legislation on design protection published in November 2020. In this context and based on the ECTA Design Committee’s reflections and discussions in the last years, a Position Paper on 3D Printing and its Implications on Design Law has been approved and submitted by ECTA to the European Commission in April 2021. This paper addresses several aspects of the design law to be carefully evaluated in relation to 3D printing. Firstly, the definition of a product should be reconsidered to clearly include new technologies. In this sense, a design within a CAD file should be considered a ‘product’ and a CAD file encompassing the design of a digital item should be eligible for design protection. Besides, the defence available for acts done privately and for non-commercial purposes in accordance with the Design Regulation should be interpreted narrowly. However, it may be too early to fully understand the practical implications of the use of this exemption considering that widespread use of the 3D printing technology is not yet a reality. Therefore, it may be too early for an actual change in the law in this aspect. Also, it would be relevant and necessary to explicitly include contributory infringement in the design law to provide legal clarity and more effective tools for rights holders in defending their right. Considering the potential impact of 3D printing in relation to spare parts, it is advisable to maintain limited and balanced protection for spare parts. In line with the ‘ECTA Position Paper – Designs and Spare Parts’ published back in 2016, it is useful to explore alternatives to achieve a balance between total liberalisation (removing all design protection from items categorised as spare parts) and full exclusivity of design rights in spare parts (even if time restricted). Finally, considering that there is already a multitude of legal tools, including other IP laws in place to stimulate innovation and control the markets, at the time being there is no further need for a specific sui generis law to govern 3D printing technology. Moreover, ECTA does not see any clear obstacles to further amending the current EU design laws to cover the implications of 3D printing or other related foreseeable digital technologies (such as 4D printing).
ECTA WEBINAR ON SLOGANS (18 MAY 2021)
Don’t forget to register for the ECTA webinar “Slogans..but made for branding. A new threshold for registrability of slogans after Oatly?” - 18 May 2021 (14.00-15.30 Brussels time)! ECTA Second Vice-President Carina Gommers (Wiggin, BE) will moderate a high-level panel of speakers comprised of Klaudia Błach-Morysińska (Zaborski, Morysiński Law Office, PL), Luc Suykens (UBA,BE), and Bart ten Doeschate (Heineken International, NL). How easy is it to register slogans, should they be registered, and what can be done to ensure their protection? After an overview of relevant EU judgements, including the last ‘milky’ case, our speakers will discuss the degree of distinctiveness required and whether it will be easier to register slogans as trade marks. They will also provide insights from a marketing perspective, such as how a slogan is practically developed as well as address in-house legal challenges around this topic. The webinar will be held in English via the Zoom Webinar platform. The cost is: • ECTA members - 40,00€ • Non-members - 65,00€ • Students and full-time academics - 15,00€ • Officials - Free of charge Upon request, you will receive a certificate of attendance, in order to ask for CLE credits from your national Bar Associations, if applicable.