In preparation of Brexit, the European Commission published its Draft Withdrawal Agreement on 28 February 2018, which sets out the arrangements for the withdrawal of the United Kingdom (UK) and Northern Ireland from the European Union (EU). Title IV of the Withdrawal Agreement is in Articles 50 to 57 suggesting a framework for continued protection of intellectual property in the United Kingdom after Brexit.

The suggested provisions on intellectual property are preserving the interest of the industry in maintaining legal positions obtained by registered or granted EU rights. Holders of European trademarks, community designs and community plant varieties, registered or granted before the end of the transmission period (31 December 2020),shall become the holder of a comparable registered and enforceable intellectual property right in the UK. Such right is to be obtained automatically without re-examination, providing the priority of the Community right to be free of charge for the holder. Continued protection of European intellectual property rights in the UK and maintaining priority of such rights is/and was an important demand of the European IP community. An automatism providing that holders of European intellectual property rights obtain equal protection under a UK national right would ensure obtained legal positions in the respective rights and avoid cost intense Brexit filings. Whether the Commission will prevail with its demand that trademarks are not liable to revocation because the EU trademark had not been put into genuine use in the UK is to be seen.

The EC’s position however becomes clear: robust protection for EU granted intellectual property in the UK after Brexit. Therefore, the draft agreement also ensures that trademarks having a reputation in the EU shall enjoy equivalent rights in the UK and that the UK shall ensure that international registrations designating the EU continue to have the protection in the UK. For registered designs and plant varieties the term of protection shall be at least equal to the remaining period of protection under EU law and the unregistered community design shall enjoy protection as an enforceable intellectual property right in the UK. The draft agreement also provides for continued protection of databases in the UK.

The draft is yet to be discussed with the EU Council and the Brexit Steering Group of EU Parliament level before transmission to the UK. Although not every aspect has been set out to the very last detail the suggested provisions on intellectual property are a solid point of departure for further discussions and negotiations.

Back in 2015 Constantin Film AG, the production company of the German movie „Fack ju Göhte“, filed an European Union trademark application (“EUTM”) for its movie title „Fack ju Göhte“ with the European Union Intellectual Property Office (“EUIPO”). The EUTM application was refused by the EUIPO based on an alleged infringement of public policy and common decency. On top of that, EUIPO was of the opinion that the title of the movie is an offensive insult that would damage the German highly respected writer Johann Wolfgang von Goethe posthumously. Constantin Film’s appeal against this decision was also not successful, so that they now brought that case before the General Court of the European Union.

The Facts: Protection of Word Trademarks

Since Article 7(1)(f) of the European Union trademark regulation (“EUTMR”) prohibits the registration of trademarks which infringe public policy or morality, the core key was whether the General Court of the European Union classifies the movie title as immoral in the sense of Article 7(1)(f)  EUTMR.  The purpose of Art. 7 EUTMR is in particular to ensure the public interest that adolescents will be protected from being confronted with words that are offensive or disturbing. Therefore the question whether or not immorality is given depends on the relevant public and that is the average consumer who the EUTM is meant to address.

Trademark registrations are prohibited for all signs that are degrading, vicious or racial. Since “Fack ju” can be understood as a misspelling of the expression “Fuck you”, an offensive expression that insults the dislike for another person which is usually used with the intention to hurt or degrade someone, examiners of the EUIPO saw the movie title and EUTM-application as an offensive insult of the German writer Goethe. In this respect the word „Fuck“ had already been confirmed as a violation of European trademark law in several other judgments. The EUIPO rejected in the past EUTM- applications like “fucking freezing!” and “FUCK CANCER”.

Constantin Film contradicted that the decision of whether the movie title actually conflicts with good morals or not has to be determined as a whole and not only by analyzing one part of it. They argue that the expression “Fuck you” has neither a sexual meaning nor can be considered as insulting in the present case, but is used as a synonym for school frustration in context with the word “Göhte”. It further argued that this understanding is confirmed by the cheerful and entertaining character of the movie which in no way refers to the writer in a disrespectful way.

The Ruling

As expected, the General Court of the European Union denied protection to the expression “Fack Ju Göhte” as a word trademark on 24 January 2018 and once again confirmed that immoral and degrading expressions cannot be protected by European trademark law.

The Court stated that neither the special spelling nor the intended irony can mitigate vulgarity. Moreover, a breach of public order or morality must be determined by the trademark itself and in connection with the goods and services for which it is to be registered. The goods and services in question are those of daily use, e.g. games and clothes so that not only people who watched the movie, but rather any person shall be taken as reference, and it cannot be guaranteed that these people in general would recognize the trademark as a title of a successful film and as a joke. As a result, the average consumer will rather see the sign as the commonly used English expression “fuck you”, which is immoral and therefore cannot be registered as a trademark pursuant to Art. 7(1)(f) EUTMR.

 

 

 

The Regulation (EU) 2017/745 on Medical Devices (MDR) entered into force in 2017. Although most of the provisions will only apply as of 26 May 2020, the time for impact assessments, such as content-related evaluations of the new legal text and approaches to the implementation of the MDR has begun. On 13 November 2017, the EC published its first roadmap for the implementation of the MDR.

The article linked below and written by our lawyers Geneviève Michaux and Chistoph J. Crützen highlights the key dates for the MDR and explains the roadmap towards implementation.

https://www.mayerbrown.com/files/Publication/5178b6c8-36f0-4cb8-9fc7-0722ed05d5ef/Presentation/PublicationAttachment/ba26dd28-f49a-433c-ace2-0c10eda9b81e/Update-Europe-Key-Dates-Roadmap-120117_V4.pdf

Court of Justice of The EU Ruled on Trade Marks Used Only to Indicate Quality Standards

Trade marks will not only be associated with the company they origin from, but might also be associated with certain quality or ethical standards. Certain associations are using their trade marks only to license it to producers who fulfill a certain standard. While some jurisdictions recognize such use of a trade mark as sufficient to maintain trademark protection, the European Union Trade Mark Regulation (EUTMR) does only mentioning the term “genuine use” of a trade mark. On 8 June 2017, the Court of Justice of the European Union (CJEU) has decided whether using a trade mark only to indicate certain quality or ethical standards can be seen as “genuine use”.

The Facts

The Verein Bremer Baumwolle (VBB), an association under German law, owns an individual European Union trade mark (EUTM) displaying a cotton flower. The VBB concludes license agreements under this trade mark with associated producers of textiles who oblige themselves to comply with certain quality standards concerning the cotton they use. The defendant, a German manufacturer of textiles, displayed this trade mark on its products without having an appropriate license to do so.

VBB sued the defendant for trade mark infringement. The defendant brought a counterclaim for declaration of invalidity of this trade mark. In first instance the Düsseldorf District Court found infringement , but the Düsseldorf Court of Appeals referred the case to the CJEU with the following questions: Is the use of a trade mark as a label for quality a “genuine use” in regards to an individual trade mark? Must such a trade mark be declared invalid, if the holder of said trade mark does not ensure the quality standard by carrying out periodic quality controls?

First Question

According to the CJEU, the essential function of a trade mark is to guarantee that all goods or services marked by the sign come from the same undertaking or economically linked undertakings. It might be a secondary purpose of a trade mark to ensure a certain quality, but the “genuine use” of a trade mark is only to guarantee that the goods origin from the same or an economically linked entity. Therefore, the proprietor is not using the trade mark in terms of the EUTMR, if it is only licensing the trade mark to ensure a certain quality. This is particularly relevant, because, if there is no “genuine use” of a trade mark for five years, the trade mark proprietor might face an application for revocation of its trade mark.

Second Question

In relation to the second question, the CJEU stated that an individual trade mark is not to be declared invalid, if the proprietor does not conduct quality controls on a regular basis. While this is a reason for invalidation of collective trade marks, it cannot be applied to individual trade marks because these trade marks are not designed to guarantee a certain quality standard. Individual trademarks might be declared invalid, however, if the public is made to believe that there will be quality controls while the trade mark proprietor never intended to conduct them.

Background

The judgment is apparently guided by the fact that the EUTMR provides two specific instruments to mark products that come from certain undertakings. There is the possibility to file a collective trade mark to display that the user of the trade mark is a member of a certain association that follows certain standards. Further, as of 1 October 2017, a certification trade mark could be used to show that certain standards are met. The CJEU apparently tries to ensure that individual trade marks cannot be used to circumvent the requirements for collective and certification trade marks.

German Reichstag in Berlin, GermanyThe future of the European Unified Patent Court (UPC) appears to look a bit clearer following recent ratification activities. On 16 January 2017, the Preparatory Committee for the UPC announced on its website that it is working under the assumption that the UPC can become operational in December 2017. However, the Committee stated that this timeline is conditional on a number of factors, with the most important being “the necessary ratifications of the [UPC Agreement] and accession to the Protocol on Provisional Application”. So far, twelve EU Member States have ratified the UPC Agreement, including France (14 March 2014) and Italy (10 February 2017).

The three countries with the highest number of patent applications in Europe (France, Germany and the UK) are mandatory ratifying countries of the UPC Agreement.

On 10 March 2017, the German Parliament, Bundestag, approved ratification of the UPC Agreement and related amendments to the German Patent Act. As a next step in the legislative process, the German Federal Council, Bundesrat, will need to approve the draft legislation. After approval by the Bundesrat, the resulting laws would then need to be signed by the newly elected Federal President Frank-Walter Steinmeier. The laws would take effect on the day following promulgation in the German Federal Law Gazette.

On 28 November 2016, the UK government issued a press release that, despite the UK’s planned leave from the EU, commonly known as “Brexit,” it still plans to ratify the UPC Agreement over the coming months. However, it is not clear how the ratification of the UPC agreement will play out with the UK’s heralded rejection of the supremacy of EU law and the jurisdiction of the Court of Justice of the European Union (CJEU). The UK government’s White Paper on exiting the EU specifies that “[the UK] will bring an end to the jurisdiction of the CJEU in the UK.”

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Cloud conceptOn 14 February 2017, the organization Cloud Infrastructure Services Providers in Europe (CISPE) issued a press release that a number of leading cloud computing vendors operating in Europe have declared compliance with the CISPE Data Protection Code of Conduct (the “Code”) for some or all their services. All cloud infrastructure services compliant with the Code requirements are listed on the CISPE Public Register. The providers of these services can display a certification mark on their websites to notify their customers of their services’ compliance with the Code.

CISPE said that the Code is supposed to guide customers in assessing whether cloud infrastructure services being offered by a particular provider are suitable for the data processing activities that they wish to perform. This includes, in particular, compliance with all EU data protection laws that are applicable and binding on them, including the EU Data Protection Directive and the General Data Protection Regulation (GDPR). The GDPR will come into effect on 25 May 2018. Cloud service providers adhering to the Code must, inter alia, give customers the choice to store and process their data entirely within the European Economic Area. They must also commit that they will not access or use their customers’ data for their “own purposes, including, in particular, for the purposes of data mining, profiling or direct marketing.”

In creating the Code, the CISPE acknowledged that there are a wide variety of cloud computing models and that data protection considerations vary based on the type of model a service provider uses. The Code focuses on Infrastructure-as-a-Service providers (IaaS) which host hardware, software, servers, storage and other infrastructure components on behalf of their customers. (Other categories of cloud computing services include Software-as-a-Service (SaaS) and Platform-as-a-Service (PaaS).)

The Code has yet to be approved by the European Commission or any national data protection supervisory authority for GDPR purposes.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Infection And Disease ControlOn 18 November 2016, the European Commission published a notice on the application of certain key provisions within Regulation (EC) No. 141/2000 on orphan medicinal products (the “Orphan Regulation”). Orphan medicinal products are medicinal products that are used for the diagnosis, prevention or treatment of rare diseases. An orphan designation allows a pharmaceutical company to benefit from EU incentives to develop a medicinal product, such as fee waivers for the regulatory procedures or a ten year market exclusivity.

Under Article 3 of the Orphan Regulation, an orphan designation is subject to the following two conditions:

  • The product is intended for the diagnosis, prevention or treatment of a rare condition (“prevalence criterion”), or the marketing of the product intended for the diagnosis, prevention or treatment of a life-threatening or serious condition would not generate sufficient return to cover the investment made (“financial criterion”); and
  • There is no satisfactory treatment for the condition in the EU, or if there is, the future medicinal product will be of significant benefit to patients affected by that condition (“significant benefit”).

The Notice, inter alia, specifies that a “significant benefit” may no longer be based on a possible increased availability due to shortages of existing authorized products; or a new pharmaceutical form, a new strength or a new route of administration, unless it brings a major contribution to patient care. The Notice further reiterates that treatments for communicable diseases with very low or close-to-zero prevalence in the EU, such as the Ebola and the Zika virus diseases, are also eligible for orphan designation in the EU. The eligibility is based on the risk of EU residents becoming affected by the disease.

Click here to read the full Mayer Brown Legal Update on the Commission’s Notice.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

BrexitOn 28 November 2016, the UK government issued a press release that, despite the UK’s leave from the EU, commonly known as “Brexit,” it still plans to ratify the Agreement on a Unified Patent Court (“UPC Agreement”) over the coming months. The UPC Agreement was signed by 24 out of 25 EU Member States that participate in the enhanced cooperation procedure to create a unitary patent system in the EU, including the UK.

The UK Minister of State for Intellectual Property, Baroness Neville Rolfe, said that for as long as the UK was a Member State of the EU, “the UK will continue to play a full and active role.” She added that the (long-developed) new patent system “will provide an option for businesses that need to protect their inventions across Europe.”

At present, patent protection in Europe can either be obtained through national patents, issued by the respective national offices, or European patents, granted by the European Patent Office. However, the granted European patent is only a “bundle” of individual national patents. Pursuant to article 64(3) of the European Patent Convention, any infringement of a European patent shall be dealt with by national law. Thus, despite the name European patent, there is no unitary property right with effect for all member states and no unitary judicial protection. Judicial relief can only be obtained on a national level and only applies to the territory of each respective member state.

Under the new unitary patent system, it will be possible for businesses to protect and enforce their patent rights across Europe with a single pan-European patent right and through a single unified patent court. The central division of the UPC will have its seat in Paris, with London (life sciences) and Munich (mechanical engineering) each hosting specialist seats.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Hands playing a cube gameOn 10 November 2016, the Court of Justice of the European Union (CJEU) ruled that a trademark on the shape of the Rubik’s Cube—supposedly the world’s bestselling toy of all time—is invalid (Case C‑30/15 P). With its judgment, the Court, inter alia, annulled a 2009 decision of the European Union Intellectual Property Office (EUIPO) that initially confirmed registration of the cube as an EU trademark.

The Rubik’s Cube was invented in 1974 by Hungarian architect Ernő Rubik. It was originally named “Magic Cube.” In 1980, the toy was renamed Rubik’s Cube and launched internationally.

The Facts of the Case

In 1999, the company behind the Rubik’s Cube brand, Seven Towns Ltd., registered a “three-dimensional mark in the shape of a cube with surfaces having a grid structure” with the EUIPO. On 15 November 2006, German toy manufacturer Simba Toys GmbH & Co. KG filed an application for a declaration of invalidity of that mark. The company, inter alia, claimed that the cube’s rotating capability may be protected only by patent and not as a trademark. On 14 October 2008, the Opposition Division of the EUIPO rejected that application in its entirety. On 1 September 2009, the rejection was confirmed by the EUIPO Boards of Appeal (Case R 1526/2008-2).

On 6 November 2009, Simba Toys brought an action seeking annulment of the EUIPO decision before the EU General Court. In support of its action, the company, inter alia, argued that the shape of the Rubik’s Cube was necessary to obtain a technical result (rotation), which is grounds for invalidity of the three-dimensional mark (now codified in Article 3(1)(e)(ii) of the Trademark Directive (2008/95/EC)). On 25 November 2014, the EU General Court dismissed the action. The court held that the graphic representation of the mark, the grid structure on each surface of the cube, gave no indication as to the well-known rotating capability of the Rubik’s Cube. Therefore, Simba Toys’ reasoning was not based on the representation of the mark as filed but on an “invisible element” (Case T-450/09).

The CJEU’s Decision

On 25 May 2016, Advocate General Maciej Szpunar delivered an opinion that the grid structure of the cube did not constitute “a decorative and imaginative element” but performed a technical function (Case C‑30/15 P). The cube’s structure divided the movable elements of the puzzle so that they were rotatable. Beyond these functional characteristics, the mark in question contained “no arbitrary or decorative characteristics.”

In its judgment, the CJEU followed the advocate general’s opinion and held that the sign at issue consisted of the shape of actual goods and not of an abstract shape. The EU General Court should have taken the fact that the goods function as a three-dimensional puzzle into account when assessing the functionality of the essential characteristics of the sign. While it was indeed necessary to consider the graphic representation of the shape at issue, that analysis could not be made “without taking into consideration, where appropriate, the additional elements relating to the function of the actual goods at issue.”

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Hand holding smartphone with wi-fi connection in cafeOn 15 September 2016 (C-484/14), the Court of Justice of the European Union (CJEU) ruled that the operator of a shop, hotel or bar that offers free Wi-Fi to the public is not liable for copyright infringements committed by the network’s users. However, the operator may be required to password-protect its network in order to prevent—or cease—these infringements.

The Facts of the Case

The case concerns a dispute between Tobias Mc Fadden, the owner of a lighting and sound system shop, and Sony Music Germany. Mc Fadden’s shop offered free Wi-Fi in order to bring in new customers. In 2010, someone used Mc Fadden’s Wi-Fi network to unlawfully offer a copyright-protected musical for downloading. The Regional Court of Munich, Germany, took the view that while Mc Fadden was not the actual infringer, he could be indirectly liable on the grounds that his Wi-Fi network had not been made secure. However, the court was not sure whether the E-Commerce Directive (2000/31/EC) precluded such indirect liability and referred a series of preliminary questions to the CJEU.

Opinion of the Advocate General

On 16 March 2016, Advocate General Maciej Szpunar recommended to the CJEU that the operators of free Wi-Fi networks should not be held liable for copyright infringements committed over their networks. The opinion confirmed the applicability of the E-Commerce Directive—and the “mere conduit” defense in Article 12 of that directive—to free Wi-Fi providers. While acknowledging that the scope of application of Article 12 largely depended on the potential economic nature of the provision of the service, the advocate general opined that the safe harbor provisions should also apply to operators who, as an adjunct to their principal economic activity, offer a Wi-Fi network that is accessible to the public free of charge.

He further commented that the safe harbor provisions prevent courts from making orders against these intermediary service providers for payment of damages and even for the costs of giving formal notices. However, the advocate general said this limitation of liability would not prevent the right holder from seeking an injunction against the Wi-Fi operator to end the infringement. But that injunction could not go so far as to require that the operator terminate or password-protect the internet connection or examine all communications transmitted through it.

Judgment of the CJEU

In its judgment, the CJEU largely followed the opinion of the advocate general while disagreeing on two crucial points. The Court ruled that the operator of a free Wi-Fi network provides an “information society service” within the meaning of Article 12(1) of the E-Commerce Directive if he provides access to the network for the purpose of advertising the goods sold or services supplied by him. This means that the operator can directly rely on the liability exemption laid down in Article 12(1).

However, in the eyes of the Court, the operator of the free Wi-Fi network could be required to protect the network with a password in order to deter users from infringing copyrights. The CJEU further ruled that the right holder can claim from the network operator the costs of giving formal notices and court costs when such claims are made to obtain injunctive relief to prevent the operator from allowing the infringement to continue.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.