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We are a few years on from the Supreme Court’s decision in Actavis. This decision undoubtedly has had a sizeable impact on how the Court approaches the question of infringement of patents. And inevitably, there are knock-on effects when it comes to the assessment of the validity of those patents.
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Collaborations to develop new IP are becoming more prevalent across many sectors, so it’s important to know how to best protect your interests.
In a world where businesses are becoming increasingly specialised in developing technology or creating powerful brands, new opportunities for growth may require working with another entity to jointly design and test new solutions. From the beginning of any collaboration, it is important to consider what IP each party will bring to the table and how new IP will be owned and licensed. Getting IP right can make the difference between a lucrative partnership or an investment flop.
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In previous webinars, which can be viewed here, Mauro Paiano and Daniel Goodall provided insight into how Brexit would impact UK and EU intellectual property rights and offered some practical advice for IP owners.
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With Mauro Paiano – Partner, and Daniel Goodall - Associate
Thursday 19 November 2020
The UK Government has confirmed that the transition period will not extend past the end of 2020. The changes will affect nearly every business as well as the future IP legal landscape across the UK and EU.
At the end of the transition period, new rules will come into force in connection with the parallel importation of IP protected goods into the UK and the parallel export of IP protected goods to the EEA.
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- The regime’s impact on businesses
- What will happen to ongoing IP proceedings as well as future IP applications
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Webinar transcript
(Please note this is auto-generated and un-edited)
0:09
Hello, I'm Mauro Paiano, a partner in the IP team, and welcome to the second in our series of webinars, looking at the changes to the protection of intellectual property in the UK, following the end of the transition period.
0:22
Having discussed the status of EU and UK IP rights in our last webinar, we're going to look at some of the difficulties associated with the end of the transition period for rights holders, the effect on existing licenses and assignments, along with some practical suggestions to help limit any adverse impact on businesses.
0:41
We'll also discuss the status of Ongoing IP proceedings, the IP landscape across the UK, and the EU, parallel imports, and customer enforcement, and their impact on businesses.
0:53
So, first of all, to look at some of the practical considerations, I'd like to hand over to my colleague, Dan Goodin.
1:00
OK, so from the first of January 2021, UK attorneys will no longer be able to represent Rights owners in respect of new applications when you proceedings at the Intellectual Property Office or EU IPO.
1:14
So for those who haven't already done so, rights owners should appoint an attorney based in the EEA to represent them on new trademark and community register design applications, and proceedings before the EU IPO.
1:29
For EU IPO proceedings still ongoing at the end of the transition period.
1:33
The withdrawal agreement provides that UK representatives may continue to act on behalf of their clients at all stages of those proceedings.
1:41
For the UK comparable rights discussed in our earlier webinar, the address for service roles won't change for at least three years from, for the 31st of December 2020, So no immediate changes are required to your EU representatives.
1:58
The IPO has the UK.
1:59
A PO is issued a consultation on limiting addresses for service for other UK IP registrations to the UK and Channel Islands from the first of January 2021, so effectively reciprocating the same arrangements for UK rights and we are currently awaiting the outcome of that inquiry.
2:22
So, in terms of pending applications, where you have a pending application for an EU, right, on 31st December, 2020, and you want to benefit from equivalent protection in the UK, make sure that you apply for the UK Comparable right within the nine month grace period.
2:39
And, if you haven't yet applied to register IP, and do you intend to do so before the end of this year, Consider making an application for both the UK and EU, right?
2:49
To get the examination process in the UK, underway early on, Have a faster route to registration, and, therefore enforcement of your rights.
3:01
So inevitably with both an EU right and a UK comparable right, Clients will be faced with additional application and maintenance costs going forward. So we'll need to reflect this in our IP budgets.
3:13
Rights owners also now face the prospect of parallel proceedings, running in both the UK and EU courts and intellectual property offices and malraux we'll discuss this in more detail shortly.
3:27
So let's trademarks where the reputation and trademarks are not only infringed when an identical or similar markers use for identical or similar goods and services. They may also be infringed where a third party takes unfair advantage it off or damages the reputation attached to that trademark.
3:46
So a comparable UK trademark rights will benefit from any reputation acquired by the corresponding EU trademark in the EU, but only until the 31st of December 2020.
3:58
After this date, the comparable UK Monk's continuing reputation will be based only on use in the UK.
4:06
Now, this could potentially be limiting for owners to be trademarks with a strong reputation in the EU, but not in the UK, who later wished to enforce that equivalent, a comparable monks.
4:21
So, onto existing licenses, The UK has put in place provisions meaning the existing licenses of community registered designs and EU registered trademarks.
4:31
Or equivalent international rates designating the EU, would also apply to the equivalent UK Reregistered designs or comparable trademarks.
4:40
With licenses of UK registered trademarks, there are certain advantages to having those licenses register at the UK IPO.
4:48
For example, the license will become effective against innocent third parties acquiring conflicting interest in the mark, and licensees will not be prohibited from claiming certain costs and infringement proceedings relating to the Mark.
5:03
Since there is no equivalent provision or cost recovery for EU trademarks, licensees should consider recording their licenses of the UK comparable rights with the UK IPO within 12 months of the first of January 2021.
5:17
However, this is not obligatory.
5:21
Rights owners should also check their license agreements to ensure that the creation of the UK comparable rights, their name, in itself, will not put them in breach of contract, if applicable. And consider whether an opt out of the UK comparable right, may be appropriate.
5:42
In terms of assignments, it is possible to assign IP that hasn't yet been created, So clients should consider reviewing the territory provided for license agreements and any future assignments of rights.
5:55
Any references to the E A and E, you will need to be considered.
6:01
Also where owners of EU RET rights haven't yet informed the EU IPO of the assignment before the end of the transition period, The UK comparable rate will be registered in the name of the previous owner.
6:14
So, to avoid having to record the assignment at the UK RPO as well, rights owners should notify the EU IPO of any assignment.
6:21
Now, moving on now, two dot EU domain names.
6:26
For those who haven't seen our previous webinar on Brexit and IP rights, it's important to note the provisions on dot EU domain names.
6:34
If you hold a dot in your domain name, and, uh, a UK organization with no establishment in the EU, a UK citizen not resident in any EU member state, or a UK resident who is not an EU citizen, your dot edu domain name will be withdrawn as of the first of January 2021, and you should already have received notification of this.
7:00
So, ensure that you make provisions for the continuity of your websites, whether through alternative domain names or otherwise.
7:09
So in terms of IP proceedings in the UK and EU, one huge advantage of having a single trademark or a registered design covering the whole of the EU is that an injunction preventing the sale off and other acts relating to infringing products will cover every EU member states.
7:29
Fortunately for rights owners, any pan EU injunction is granted before the transition period ends, will continue to apply in the UK.
7:39
Effectively, any future enforcement in the UK will be in respect of the UK comparable right, mask that remains valid and registered.
7:48
Now provided that they are granted prior to the end of the transition period.
7:53
Pan EU injunctions from the UK courts will continue to be enforceable in the remaining EU member states.
8:02
Now during the transition period, the UK IP Courts have still been able to act as EU trademark and community design courts, with jurisdiction over infringement, validity, replication of iie trademarks and community design.
8:18
However, from the first of January 2021, this will no longer be the case.
8:23
Any ongoing new proceedings relating to infringement, validity, or revocation in the UK, will be limited to the UK comparable rates alone.
8:33
To the extent that, parties to existing litigation in the UK, wish to address any of these matters in relation to the equivalent in trademarks or community registered designs, they'll need to consider commencing parallel proceedings in the appropriate EU forum, whether that may be the EU IPO and or the courts of an EU member state.
8:55
Also, make sure that you keep in mind any local limitation periods to avoid your cause of action becoming time barred.
9:05
Now, in terms of ongoing proceedings of the EU IPO, that's from the end of the transition period.
9:10
Any pending or new oppositions or invalidity invalidity requests based solely on one or more UK rights will be dismissed.
9:19
Applicant seeking to challenge you registered rights on relative grounds are therefore need to rely on preexisting rights in the remaining member states.
9:29
Equally, challenges to UK registered rights on relative grounds will no longer be possible based on EU rights. In practice these challenges may proceed based on UK comparable rates.
9:42
Do note, however, that if an EU trademark or registered community design is revokes or invalidated before the end of the transition period.
9:50
The UK courts will recognize this as a revocation or invalidation of the equivalent UK comparable, right, Unless the ground for embedded or revocation did not apply in the UK.
10:05
So, for example, an EU registered trademark, revoked for having become generic by excuse in mainland EU, but not in the UK, would not be sufficient for the replication of the UK comparable trademark.
10:22
So moving forward from the first of January 2020, the UK IP courts will not have jurisdiction to hear any new cases based on EU rights.
10:33
Any remedies granted by an EU court regarding EU rights, will not extend to the UK.
10:39
So, Malraux is now going to talk in a little more detail about the future of legal landscape for IP across the UK and the EU.
10:48
Whilst we're getting nearer to the end of the transition period, the UK and the EU continue to negotiate to try and reach an agreement which will set out the feature relationship and hopefully included free trade agreement.
10:59
The UK at AU's understanding of the future relationship was set out in the Political Declaration, which was a great alongside the withdrawal agreement on 17th October, 2019.
11:09
And, in the context of intellectual property, the main objective for both the UK, the EU, there's to provide for the protection and enforcement of IP rights to stimulate innovation, creativity, and economic activity.
11:23
The political declaration itself didn't provide much detail. I pay, it only focused on the protection of database rights and geographical indications.
11:31
It allowed the UK and the EU to established around regimes for the exhaustion of IP rights.
11:36
And it said that a mechanism should be established, co-operate and exchange information on IP issues of mutual interest.
11:44
Bedsides published proposed legal test, texts in relation to the proposed future relationship concerning IP, and during their negotiations, they focused on the enforcement of IP rights in the digital environment and at the border and on maintaining the current high levels of IP protection.
12:01
Whilst negotiations in respect of non IP related areas may still be ongoing.
12:06
In the main, with one exception, at least the UK India, you have managed to agree how future IP should be dealt with.
12:13
The one exception referred to concerns new geographical indications.
12:17
So whilst it remains the case that anyone holding an existing geographical indication will be able to continue using it in the UK.
12:25
The UK has insisted on establishing its own scheme for processing new applications going forward with the exception Northern Ireland which will continue to use the EU's geographical indication scheme.
12:38
Of course, whilst much of what needs to be a great has been agreed, the changes to a number of IP rights, which will follow the end of the transition period, means that pan-European remedies will no longer be available in the UK.
12:50
IP rights holders who have multi jurisdictional infringement problems and vote in the UK and at least one other EU member state will now have to litigate twice, once in the EU and again, in the UK.
13:04
As well as increasing costs, this may have an impact on the predictability, can perhaps the perceived standard of litigation.
13:10
Since there must be an increasing risk that cases brought in the UK and the EU result in conflicting judgements, especially where there are parallel cases of illiteracy and infringement, running simultaneously, or whether UK's protection of IP starts to diverge from the US.
13:27
Turning now to the power of the import regime and the exhaustion of rights.
13:32
Under the withdrawal agreement, IP rights exhausted either in the EU or in the UK before the end of the transition period will remain exhausted in both territories.
13:42
This means that during the transition period, the importation of IP protected goods into an EU member state from the UK will not have infringed IP rights, provided those goods had already been placed on the market in the UK before the end of the transition period.
13:58
Similarly, the importation of IP protected goods into the UK from an EU member state has also been permitted, provided the goods had already been placed on the market in an EU member state.
14:12
As regards the position concerning the E a F States during the transition period, the government's already agreed with Norway, Iceland and Liechtenstein, than any IP rights which were exhausted, both in the A, F, the State, and the UK before the end of the transition period.
14:28
Would also remain exhausted in the EFTA States as well as the UK.
14:36
First of January 2021, the position concerning exhaustion, will change.
14:41
After the end of the transition period, IP rights in goods placed on the UK market by, with the consent of a rights holder after the transition period may no longer be considered exhausted in the day.
14:55
As a consequence, the parallel importation of IP protected goods into the A from the UK may no longer be lawful.
15:03
Conversely, the parallel importation of IP protected goods into the UK from an AA country will effectively remain the same.
15:13
The IP rights in goods placed on a market by with the consent of the rights holder after the transition period will continue to be exhausted in the UK which will make IPR protected goods freely and portable from the a to the K.
15:30
As a consequence of these changes, unless the UK and the subsequent they agree reciprocal arrangements, it may not be possible for businesses to freely export IP protected goods from the UK to the EEA. without the consent of the IP rights holder.
15:46
Any UK businesses, which export goods, in which may be affected by this change, should check whether the rights clearances will meet, will be necessary oral, tentatively ensure that their customers have security clearance before the goods are imported into the day.
16:01
Those businesses, which on A you IP rights in goods, where, historically, they've been unable to do very much about that goods being parallel export it to the AEA.
16:12
This change will mean that they may not be in a position to place any inputs into the AEA where consent hasn't been provided.
16:21
What we don't know is whether this exhaustion regime will remain the same going forwards.
16:26
Ultimately, it will be for the UK government to decide how liberal and exhaustion regime it wishes to adopt in future years.
16:34
Whilst the government may choose to maintain the status quo, It's also possible that in the future, it may consider it more advantageous to adopt a system of International exhaustion, under which goods from anywhere in the world may be imported into the UK if they've already been lawfully placed on the market elsewhere in the world.
16:51
The adoption of this approach is likely to be popular amongst consumers given the likely impact on prices paid for goods in the UK.
16:58
There's little doubt that that would be strongly resisted by brand diner's so we'll have to see which way the government, guys.
17:06
Finally, I want to look at the changes to customer enforcement.
17:10
Up to now it has been possible to file a single application for action in any EU member state which would require UK customs to search for and detain infringing goods entering the UK.
17:22
This arrangement's been extremely beneficial to brand and is fighting to stop the trade in counterfeit and copycat products throughout the year.
17:30
Going forward, IP owners will need to have separate arrangements in place for the UK and the EU.
17:36
Then the existing arrangements put in place in an EU member state will no longer cover the UK.
17:42
Any arrangements which had previously been put in place through UK customs authorities, which will typically be the case for you, kept akins, will also become invalid after 31st December 2020, both in the UK and in the remaining EU member states.
17:58
Instead, it will be necessary to refile AAU arrangements through an alternative Customs office in an EU member state.
18:05
As a consequence of those changes, subject to one exception, any IP owners that have put EU arrangements in place through the UK customs, should take immediate steps to secure separate UK and EU arrangements, if they can to avoid a gap in cover after 31st December, 2020.
18:23
As for the one exception I mentioned, again, this relates to Northern Ireland, where the existing customs regulation will continue to apply in certain respects, up to the end of the transition period.
18:34
So what are some of the takeaway points from today's webinar? Well, ensure that you're properly represented before the EU intellectual property of this.
18:44
Now the parallel proceedings in the UK and the EU may become necessary for the proper protection and enforcement of your rights.
18:51
Check whether changes to parallel imports will affect you, and arrange for separate Customs arrangements in the UK, and the EU wants the transition period has ended.
19:02
That concludes our series of webinars dealing with the impact of Brexit on IP.
19:07
We hope you found the series helpful.
19:08
And if there's anything you'd like further information on, or if you have a specific query on any matter that you'd like to discuss, please let us know, and we'd be happy to help.
19:17
In the meantime, we've launched a free Helpline, giving, you direct access to a senior team of experts for free legal guidance on your life and business matters. The details are on the screen, if you'd like to book a session.
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With Kim Walker, Partner
Wednesday 18 November 2020
On 1 January next year, a UK version of the GDPR will replace the current general data protection regulation. The UK will become a “third country” for the purposes of cross-border transfers of personal data from the European Economic Area. On top of this, the effectiveness of the safeguards provided by the Standard Contractual Clauses, which have up to now been the way most UK businesses have ensured transfers of personal data to the US and elsewhere were lawful, has recently been cast into doubt by the European Court’s Schrems II decision.
This webinar explores:
- What will change for businesses that need to transfer personal data into or out of the UK or process the personal data of EEA customers, employees and others
- What these changes mean and what practical steps businesses should be taking to ensure personal data can keep flowing lawfully.
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Webinar transcript
(Please note this is auto-generated and un-edited)
Hello. I'm Kim Walker, partner in the commercial team here at Shakespeare Martineau.
0:17
Welcome today's webinar on Brexit and Data Protection.
0:23
We live in a time of uncertainty about so many things.
0:27
The new normal, as my CEO likes to call it and I doubt preparing for data protection. Data protection strategies has been top of your agenda recently.
0:39
What is certain, however, is that data protection laws will change from the first of January.
0:46
The end of the transition period.
0:48
This is going to affect every business in the UK in some way or other, even those who don't really do much business outside the UK, and there are definitely preparations which need to be made between now and the end of this year.
1:02
So I'm going to explain what the changes will be and the steps businesses can be taking.
1:08
We'll start by looking at the new legislation, how it takes over from the GDPR, as we know it, the possible consequences of having separate, but overlapping UK and EU data protection regimes.
1:22
Then I'm gonna look at what will change, as far as flows of data between the UK, and the EU, and elsewhere, concerned. And what steps businesses need to take to ensure that data flows aren't disrupted from the first of January next year.
1:39
And finally, we'll look at the other steps that you need to take to be ready for transition into transition periods, such as checking.
1:47
I'm changing your contractual terms.
1:51
I should mention that there is a chat function on the webinar, so if you have any questions, please do. Feel free to leave them in the chat, and we'll get back to you later with some answers.
2:03
So, let's start by looking at the new legal framework, what data protection laws would apply from the end of the transition period from the first of January?
2:14
Now, this is going to depend on whether the UK is given what's called an adequacy decision by the EPA.
2:21
By this, I mean that the EU has formerly declared the UK Data Protection Laws adequate to protect the rights abuse of EU citizens.
2:34
Now, the intention was, has always been that the EU would issue an adequacy decision during 2020, That's unfortunately not looking, very unlikely.
2:45
You would have thought that what that's all UK is doing is transposing the GDPR into UK Law, that it would be very straightforward, but the EU has reservations about a number of other things.
3:01
Such as, for example, the UK's mass surveillance rights under its investigatory powers regime.
3:08
Membership with the five Fight Eyes, Intelligence Sharing community, which means that theoretically, EU citizens data could pass, for example, to the US on the fact that the laws of the UK and the EU candidates search after the transition period.
3:28
There's also been a recent decision of the EU Courts.
3:31
Notice that Quadrature Janette.
3:35
Where the CJ founded the national doors at the UK and a number of other EU countries which require bulk data for communications to be made available to the security agencies.
3:48
The contrary to the fundamental rights. So, all those things are currently standing in the way of getting an adequacy decision, and, of course, the politics of tune it out.
4:01
So, I'm going to assume for today's talk that there is no adequacy to this decision if and when there is, then life will become a whole lot simpler, as far as data protection is concerned.
4:15
So, what's going to happen? First of all, from the first of January, the UK will adopt the GDPR as national law, and turn it into what is known as the UK GDPR.
4:28
This will include the parts of the Data Protection Act 20 18, which extend the GDPR to aspects, which aren't covered by the basic GDPR, such as processing for law enforcement purposes in some other public sector processing.
4:44
So the UK, GDPR, the EU GDPR will coexist.
4:51
The withdrawal agreement, Article 71, Treatment as a safety net for a Citizen. This will also provide the data of non UK citizens processed in the UK.
5:06
As at the last day of the transition period, must continue to be processed in the UK in accordance with the EU GDPR, as it stands on that date.
5:15
So, it has at 31st December, so there'll be a kind of frozen version of the EU GDPR, which applies two EU citizens data, the UK's processing at that point.
5:27
The same will apply to the data of EU citizens who are resident in the UK, who benefit from the work withdrawal agreements with cool agreements, citizens rights provisions.
5:41
So the problem, therefore, for UK businesses, which have any operations in the EU, which sell to customers in the EU, or monitor EU citizens activities through their websites, is that they're, potentially subject to three data protection regimes.
6:00
You've got the EU GDPR, which will apply, for example, if you target your customers from the UK, off to the end of the transition period, where, if you were established in the EU, then you have to comply with the EU GDPR, will have the withdrawal agreement version of the EU GDPR.
6:19
That's the sort of Frozen version, is a 31st December, reply to personal data, processed by UK businesses, before the end of the transition period.
6:29
And we'll have, importantly, the new UK, GDPR slightly expanded UK customized version of the GDPR, which will apply going forward for data processed in the UK, or Buddy, you are the international company targeting customers in the UK on TV, UK GPOs, Extraterritoriality provisions.
6:55
So in some ways, this shouldn't make any difference, because, of course, the withdrawal agreement version, two GDPR, UK, GDPR, the EU GDPR should all be very similar when the transition period and so on the first to generate. The rate will be much difference between them.
7:14
In reality, however, over time, it's very possible that the EU GDPR and the UK GDPR search, for example, the withdrawal agreement allows the UK Supreme Court to depart from the retained caseload of the EU up to the transition period.
7:34
The government has given itself powers in the withdrawal agreement to allow other lower UK course to do this.
7:42
So, about to be eventually some divergence there, and, of course, also, the UK courts aren't obliged to follow ECG decisions about the transition period.
7:54
So, the two sets of laws could diverged over time.
8:01
So, ideally, therefore, UK businesses should be arranging the processing of data so that they can, if necessary, distinguish between the various categories of data, in case they need to try to treat them differently in the UK, GPR, and teacher.
8:22
So, this is something that businesses should be thinking about now.
8:26
If you, if you target customers in the EU, when you've got non UK data in your database, can your database be set up to differentiate to tag the different categories of data?
8:36
And so, you should be getting that.
8:40
Of course, an adequacy decision, we'll help simplify things.
8:48
Said that the UK GDPR is adequate and businesses don't have to worry about applying different versions of the EU GDPR in the UK. So, the sooner we get an adequacy decision, the better.
9:04
Another aspect of not having an adequacy decision is the difficulties, or slightly increased difficulties, that will be correlates to cross border data transfers.
9:18
Currently, transfer presentation around the EU can be done free.
9:24
But transfers from the EU to third countries, so-called third countries, can only take place. if appropriate safeguards are put in place.
9:34
These safeguards are there to ensure that the data is properly protected by contract.
9:40
in that local jurisdiction and the EU citizens have suitable rights to redress.
9:46
OK, if that data is processed.
9:51
Of course, from the end of transition period, you can become, just as the country, GDPR Pepsis, so, until there's an adequacy decision, personal data can't be transferred from the UK, from the EU, to the UK, without appropriate safeguards.
10:11
Normally, as I'm sure you know, this will be by the exporting company and the importing company, putting EU standard contractual clauses in place between them.
10:24
Traditionally, this has been straightforward through it. First, get a copy of the clauses. You turn them into a contract.
10:30
You fill in the blanks, and you sign the contract.
10:35
The shrimps to decision in the ECG July, however, has made this a little bit more complicated. And this now requires a bit more thought.
10:46
That decision trends to decision.
10:49
As well as invalidating the privacy shield, which was one of the ways that the countries could for the EU companies, could be could lawfully transfer data to the US.
11:02
The CJ also made it clear in that decision that if you want to rely on the standard contractual clauses, you need to make sure the adequate to protect individuals' data under the laws of the particular country.
11:15
Wait, you're sending that data.
11:17
So, for example, if it's a country like the US, then you need to consider supplementing the clauses to cover off any concerns.
11:28
Remember, you're not allowed to amend the standing standard contractual clauses, but you are allowed to supplement.
11:33
So, you might add a clause, for example, requiring the importer to give you a warranty that it has never been subject to government of any governmental order to disclose data, and it will tell you if it ever is, and allowing you to freeze, any processing or transfers, if that happens.
11:56
So that's, That's the bad news until And unless there's an adequacy decision for the UK, if you or your processes transfer data from the VA to the UK, You need to put the standard contractual clauses, suitably supplemented, in place.
12:13
I should've mentioned when I say, the EAA, Amin, European Economic Area.
12:19
Which means, as you know, I'm sure the EU plus Liechtenstein, Norway, Iceland.
12:28
So, that's the bad news. The good news is that this doesn't apply the other way around. So, if you transfer personal data from the UK to the EA, then you can government has already confirmed that it will treat the EEA is having adequate data protection rules.
12:46
It has, however, made it clear that it's going to keep that under review. And, it can apply, Keep applying pressure on the EU tickets, and you can proceed decision.
12:56
The threat of that UK Effectivity withdrawing its adequacy decision.
13:05
Here's a summary, on-screen of the flows of the potential for you free cross border data flows, post transition. It's recently complicated.
13:17
The other thing I would remind you is that data being accessed via a computer outside the UK counts as a cross border transfer of data. Even if the data is still sitting on the survey, the UK.
13:30
So, think the transfer isn't actually probably the best word to use, because it includes data being accessed from outside jurisdiction.
13:44
So far as the action points are concerned, the things that businesses should be doing now, I think, are reviewing that key.
13:52
International data flows and recording them in that article 30 records of processing.
13:59
Try to prioritize them. In other words, look at your data flows and work out, which the most important in terms of volume. Or other key details tends to.
14:09
Special category data that's flowing, um, and tackle that first, clearly, because that'll be the most important start, putting together some ready to use version of versions of your standard contractual clauses.
14:28
And don't forget, the standard contractual clauses will be needed for intra group transfers from, yay, companies, you know, took a company in the UK.
14:38
We're not just talking about unrelated businesses, think about the kinds of situations because you might have to consider, even if, even if you're a ..., a UK based business. So, for example, have you outsource any services to an EU country? For example, your payroll.
14:57
Your HR, your IT platform services, or whatever.
15:02
Do you use cloud service provider in any country?
15:06
Are you a UK business managing stuff in the EU, or are you an EU organization with stuff in the UK?
15:14
In all these cases, there'll be cross border transfers of data taking place.
15:20
And so, you'll need to ensure that adequate, appropriate safeguards are in place, such as the standard contractual clauses, so that you cover your transfers of, the data back from the E A, to B, K.
15:33
Remember, also, that the only approved, standard contractual clauses, which currently exist offer controllers to processes, or from controllers to another controller, not the other way round.
15:46
So, if, for example, you're a UK.
15:48
Controller sending data to be processed on your behalf by a service provider in Germany, say, than the German process account, as things currently stand, send your data back to the UK from 20 21, because there are no applicable standard contractual clauses.
16:07
That was the case until very recently, however, fortunately, the European Data Protection Board published very recently on the 12th of November.
16:16
In fact, its long awaited drafts of some brand new GDPR versions of the standard contractual clauses, which include, for the first time, close the switch, can be used for processor to controller, process a process of processor transfers.
16:33
So that's good news, that solve, fill the hole in the, in the EU legislation.
16:40
Finally, if these new clauses are adopted by the EU before the 31st of December, then that Autumn off automatically become part of the UK GDPR.
16:52
If not, UK monitored, and later, by regulations, under our Data Protection Act 20 18.
17:00
In the meantime, you should check with your German processor and all your other EU processes, how they plan to comply with EU GDPR after transition, and you should be getting ready to put the new, standard contractual clauses in place soon, as they are.
17:19
The current pay out for consultation until the 10th of December.
17:25
They have been adopted than the previous standard contractual clauses. The ones we're referring to know and love over the last few years will be repealed with a one-year traditional period the contract entered into before the new clauses come into force.
17:40
So you can look forward to major contracting, contract updating exercise, which are all going to need to carry out over the next year or so to put these new standard clauses into our existing processor agreements.
17:56
Some other steps for you to take, as you need to consider, whether you're you're going to appoint, going to need to appoint an EU representative because you're based in the UK, means your name, OK.
18:11
Post transition, based in the EU.
18:17
So if you don't have any establishment of some sort of permanent base in the EU, put your focus and service to individuals in the EU or monitor them.
18:29
Then, obviously, under Article 32, with the GP off the EU GDPR would apply to this processing.
18:38
Because you have a good base that you'll have to appoint any representative in an EU member state where you target customers, your appointment and writing is quite straightforward, natural appropriate to the supervisory authority.
18:53
For example, if there's a data breach, you don't need to appoint a representative, however, if you're processing using the occasional or low risk.
19:04
And it doesn't cover special category data but it's something to bear in mind.
19:12
The other thing to think about is a consequence of the ICA ceasing to be a supervisory authority for GDPR purposes.
19:22
So if you trade in multiple, you countries, you need to work out which EU supervisory authority will be your lead supervisory authority in future.
19:34
Cindy, you said that your faces in the EU at least can benefit for the EU's one stop shop in terms of supervisory authorities under the EU GDPR.
19:48
If however, you don't have a base in the EU, do you do business there?
19:54
Than you probably won't benefit any longer from the one stop shop?
20:00
You'll need to think about what implications this will have.
20:03
For example, if there's a data breach, and it affects the data of individuals in multiple jurisdictions.
20:12
Then you may well need to make commercial applications to the ICA as well as to every one of those EU supervisory authorities where customer data has been affected, And obviously, this could be serious exercise you need to show in the data breach notification processes are up to date, updated, to take this into account.
20:36
So that you don't find yourself with 72 hours to work out what you're supposed to be doing if a data breach, obviously the first of January.
20:45
Another thing to do is to review your privacy notice, Thomas bound to need updating So that it works with the new regime following transition.
20:58
So we need to adjust what it says about international data transfers.
21:03
Probably many cases still includes references to the Privacy Shield, which will need to get rid of putting the right wording about standard contractual clauses and how you use them.
21:15
It refers to transfers outside the EEA, Killarney exchange, because now, what's important? Transfers out of the UK?
21:25
Certainly, privacy notice to cover that.
21:31
You'll obviously need to refer to the correct version of the GDPR and use the correct terminology.
21:37
You'll need to identify your E representatives if you're required to have one.
21:42
And if you, again, if you have establishment in the EU, you probably need to list the relevant supervisory authorities that apply.
21:54
The same with your contracts, You will need to look at the data terminology, if necessary, say, references, for example, to union law, EU references to the GDPR.
22:07
You'll need to update that to refer to the correct version of the GDPR. Probably, the UK GDPR.
22:15
And if you're contracts talk about requiring consent for transfers outside the EEA, you again, you'll need to change them to references to transfer as entity.
22:28
So, go through your contracts, look at the data processing, and data protection clauses.
22:32
Yeah.
22:35
Decide whether any changes need to make.
22:39
And one final thing, if you have staff who are responsible for data protection, buprenorphine each update, that training center, they understand how the new regime works.
22:53
So, to sum up that until the UK received an adequacy decision from the EU, then the legal landscape is going to be potentially confusing.
23:06
Potentially diverging data protection laws.
23:09
So be prepared to avoid confusion.
23:14
Make sure you have your appropriate safeguards in place, your standard contractual clauses.
23:21
I'm ready so that, well, the first of January to find cross border data flows are disrupted.
23:28
Um, decide whether you need to appointing a year representative.
23:34
If you need one with members of an organization called Privacy Rules and Networkers.
23:41
Privacy lawyers across the EU, my technology companies crusty, so if you need what we can help you find one.
23:48
And, of course, thanks again to update you privacy Notice of Contracts documentation.
23:58
So, that brings us to the end of this webinar. I hope you found it useful and relevant.
24:04
If there's something you would like further information on it.
24:06
Or if you go to a specific inquiry about anything else, please do that.
24:12
Of course, be very happy to help.
24:14
There'll be a recording of this webinar on on demand page, on our website.
24:22
Webinars, leadership talks, I've been trust, And also, a reminder that we do have our free Legal Help line, which gives you direct access to senior team of experts, who offer free legal guidance for a 20 minute telephone, or video call.
24:44
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24:50
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25:01
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With Mauro Paiano – Partner, and Daniel Goodall - Associate
Thursday 5 November 2020
Brexit will bring about a series of changes and challenges for the protection of intellectual property (IP). When the transition period ends on 31 December this year, the laws will change and businesses will need to revisit their IP rights. There is also great uncertainty as to what extent the UK may – or may not - diverge with EU law moving forward.
Companies and owners of intellectual property rights should act now to ensure they protect their IP assets prior to the transition period ending 31 December.
This webinar cover:
- Brexit impact on existing registered EU intellectual property
- Creation of comparable UK rights
- Immediate steps to take to protect your IP rights
- Impact on unregistered rights such as copyright and unregistered designs
Our thoughts
All the latest views and insights.
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Webinar transcript
(Please note this is auto-generated and un-edited)
0:28
Ah, hello. I'm Mauro Paiano, one of the partners and in the Intellectual property team here at Shakespeare Martineau and welcome to today's Webinar, which is the first of a series looking at how Brexit will affect various issues relating to IP.
0:53
To give a flavor of what we'll be discussing I've highlighted on the slide the areas which we'll be looking at today.
0:59
Now whilst the UK Lefty on the 31st January 2020 the UK has remained within the EU's legal framework during a transition period that expires at 11 0 AM on 31st December this year.
1:12
So over the past year or so, from an IP perspective, at least, it's effectively been business as usual, whilst the transition period counts down.
1:20
But as we quickly approached the end of the transition period, what will that mean for existing IP rights?
1:27
Well you needn't worry that come the first of January 2021 Everything has got to change.
1:33
The UK's intellectual property laws and the extent of protection which is provided to right turners, will largely be changed.
1:40
That's because many rights and national rights.
1:43
some European rights for example, European patents are not affected in any event and a lot of existing UKIP law has been harmonized.
1:51
It adopts many of the EU's IP laws already and will be retained after the end of the transition period.
1:57
Having said that there are changes which will affect owners of AAU trademarks and community design rights both registered and unregistered.
2:06
AAU trademarks have been available since April 19 96.
2:09
Rich, the community design since 2003 and community enriched the designs since 2002.
2:16
They've helped to harmonize IP frameworks across the EU to give businesses predictable and efficient protection for their innovation, and to a large extent, they've proved to be very popular.
2:27
In each case they offer a unitary rights giving protection within all current and future EU member states.
2:34
Of course, whilst a number of EU member states have joined, since the rights were first made available, no member state has left the system. So Brexit has required some fundamental changes.
2:44
And to discuss how the landscape concerning trademarks and designs will be changing.
2:48
I'll hand over to my colleague, Dan Goodall.
2:51
There's an associate in our IP team.
2:54
Thank you, Mark.
2:56
And so, from, from first of January 2000 to 21, And once the transition period has ended, registered EU trademarks and community design rights will continue to give protection in the remaining EU member States, but they will no longer provide protection in the UK.
3:13
Existing UK national trademarks and register designs will be unaffected.
3:17
However, holders of EU trademarks, community registered designs, and community plant variety rights, which have been registered or granted before first of January 2021, will become the holders of a comparable UK right, without re-examination or payment of a fee.
3:35
The UK IPA will place on the UK trademarks Register, new UK registrations for each EU trademark that was on the register the previous day.
3:45
The Brexit trademark regulation's call this new type of rights, a comparable trademark EU, adopting the language used in the withdrawal agreement.
3:55
So, these comparable rates will have the same renewal dates, and it'll take the same firing, or priority, dates, that's, the corresponding EU, writes from, which they will derive.
4:05
And, this means that a comparable mark will have the same status and effect as a trademark registered under the UK trademarks.
4:14
A comparable EU mark will be entirely independent and separate from the EU trademark from which it arrives.
4:22
There will be no need to apply for the comparable MOX.
4:25
The ... will not issue any registration certificates for comparable marks and in the case of comparable marks derived from E trademarks. Registration number will be the last eight digits of the EU market from which they were derived with the added prefix UK series. There are nine, so it will be easy to identify.
4:44
Now, there is an opt out option for owners of existing EU trademark registrations, and to opt out owners have to serve notice on the UK trademarks Registrar at any time, whether, during or after the transition period that they wish to opt out of owning the corresponding comparable mark.
5:02
The opt out will not be available if and the comparable UK rate has been used in the UK.
5:09
It's been assigned or licensed, or an agreement relating to it has been entered into, or if it's the subject of litigation.
5:17
If a request for an opt out is accepted, it'll be deemed to have taken effect from the date of the transition period.
5:23
And the registrar will have a duty to remove that comparable mark from the register.
5:28
So why might owners wish to opt out?
5:31
And, well, one example might be, if any trademark owner has only use the EU mark outside of the UK, and they're absolutely certain that they're not going to use it in the UK and future, or at least not in the first five years.
5:46
And they may wish to avoid the prospect of featured renewal costs, because no renewal costs will be increased with, with two separate rights. And they may not want to become engaged in any challenge to its validity in the UK, when the mark is of no importance to them.
6:03
Another important thing to check is whether the creation of the UK comparable right will actually put holders of EU marks in breach of license arrangements.
6:16
And if this is the case, then the owner might want to consider opting out.
6:21
And this is something that we'll cover in our next talk.
6:27
So on to renewing trademarks once a comparable UK trademark has been created, there will be separate renewal fees for each comparable UK mark and the existing trademark from which it was derived, cable to the UK IPO and the EU eichler, respectively.
6:42
So there will be some additional costs for trademark owners going forwards. In terms of renewable letters, the UK IPO will remind trademark UK trademark owners six months in advance of their trademark expiring.
6:58
But it's going to be possible for them to give six months advance warning and where a comparable mark is due to expire less than six months from the first of January 2021. So what the UK IPOs are going to do is right to hold as soon as reasonably practicable and give the owner six months from the date of the notice to renew their comparable mark.
7:20
So an important practical step would be to make sure that your representative contact details, the EU IPO are up to date before the end of this year.
7:32
Where the comparable right is not renewed, there'll be removed from the register, but may be restored at a later date in accordance with existing UK law.
7:42
Birney, you trademark renewal date falls after the first of January 2021.
7:47
An early renewal payment to the EU IPO will not be enough to avoid having to pay the renewal fee to the UK IPO as well. So watch out for them.
7:58
So where an EU trademark has expired in the six months, leading up to the first of January, 2021.
8:06
And they remain on the register.
8:10
I didn't but it's expired.
8:12
And they may still be rescued in the six months from expiry.
8:16
In which case, the comparable mark will also be treated as expired unless and until the owner of the EU trademark want to use it.
8:25
So if the EU trademark is resurrected by late renewal, the UK IPO would also resurrect or renew the registration of the corresponding comparable mark with no additional fee to be paid.
8:37
But conversely, if an international trademark is renewed late, the owner will have to notify the UK IPO within nine months of the end of the transition period.
8:48
Where no renewals are made in these circumstances, the comparable mark will be removed from the eukaryote register.
8:57
So, finally, on trademarks, pending applications where, where an EU trademark application or an international application designating, the EU is still pending and the taste at the end of the transition period. So it hasn't actually proceeded to registration.
9:13
Applicants will then have a grace period of nine months from the first of January to apply for equivalent rights in the UK and take advantage of the earlier form applications, finding date, or if there is one of the priorities that date.
9:27
So positive steps will be need, will be needed by trademark owners in these circumstances.
9:35
In the case of community registered designs, which existed prior to the first of January 2021, the UK IPO will also place on the UK. Designs, register new UK registrations for each registered community design. These are classified as reregistered UK designs.
9:55
The reregistered design will be a fully independent UK right, and will inherit the registration application and priority dates from the corresponding community design.
10:07
Like comparable marks, these equivalent rights will be created at no cost to the owner of the community design.
10:14
They can be identified by the number allocated to the re-register design, which will consist of the full Registered Community design number, with the prefix nine.
10:26
Again, like the comparable trademark, right, there will be a similar ability to opt out, in which case, the re registered design will be treated as if it had never been applied for or existed under UK law. This will not be possible where the rewritten to design has been assigned licensed, or is the subject of an agreement where the re re-register design is the subject of litigation.
10:51
So moving on to renewables. Once a re register designed has been created, it will retain the renewal date if the parent community registered design, and then we will be renewable every five years up to a maximum of 25 years.
11:07
Separate renewal fees will be payable for each comparable UK, re-emerges to design.
11:12
And the existing community designed from which it was derived.
11:16
These will be payable to the UK IPO and the EU IPL respectively.
11:21
The UK IPO will continue to send renewal reminders to any UK register design owners and advances the expiry date.
11:29
However, as with comparable trademark rights, where the re-register design expires, within six months, of the end of the transition period, the UK IPO's introduced a modified procedure, allowing for renewal within six months of notification by the UK IPA.
11:46
Again, as with the comparable mark, if the renewal date falls after the end of the transition period, renewal fee will be payable to the ... PO, even if the community design renewal fee had already been paid previously.
11:58
So, make sure that you pay both renewal fees or risk of losing your rights.
12:04
And we're at Richland Community Design has expired within six months of the first of January 2021 but remains on the Community Design Register.
12:13
Reregistered design will be created will expire status, if the corresponding community design is renewed late, The corresponding re-register design will also be treated as having been renewed without the need to pay a renewal fee for the UK IPO, and when rent no revenue is made, the reregistered design will be removed from the UK IPO Register.
12:37
Where a rich the community design is re-instated after the first of January 2021, the owner will be entitled to a re-register design provided the filing date predates the first of January 2021, where applications are pending at the end of the transition period. Applicants can take advantage of the application filing date by making an application to registry UK design within nine months of the end of the transition period.
13:05
To do so, the application must relate to the same design as the corresponding registered Community Design.
13:14
Where an applicant of a register Community design has opted to defer publication of the application for up to 30 months and the deferment is ongoing as that first of January.
13:25
The applicant will be able to preserve the only finding and priority date, provided that it applies for an equivalent registered design and a UK IPO within nine months of the end of the transition period.
13:37
In this scenario, there'll be no need for a substantive examination, since this would already have been carried out by the EU IPA.
13:45
Provisions have also been made put it in place to allow deferment of the corresponding application by up to a maximum of 12 months.
13:58
Full protected, registered international designs with an EU designation, existing at the end of the transition period.
14:05
The UK IPA will create a reregistered International design, which will be identical to the re registered Designs created from registered Community Designs.
14:15
The number allocated to the reregistered International Design will reflect the International Registration number prefixed with the Number eight.
14:22
Similarly, there are provisions which deal with pending applications and applicants need to apply within nine months of the end of the transition period.
14:32
It's also possible to claim earlier registration and any priority date, whether it's an earlier corresponding UK National Register design application.
14:42
Similar provisions apply in connection with the ability to opt out, renewals, late renewals, restoration, and deferred publication.
14:52
Moving on now to unregistered designs.
14:58
We will shortly see several new unregistered design rights and work within the UK.
15:06
Where community, unregistered designs are protected in the UK, as an unregistered community design, before the first of January 2021, they will continue to be protected for the remainder of the three year term.
15:19
That's UK, continuing unregistered community designs effected from first of January.
15:26
The fact that the corresponding unregistered community design was established before first of January, through first disclosure in the EU, but outside of the UK, will not affect the validity of the continuing unregistered design in the UK.
15:44
Following the end of the transition period, the UK will also be creating a new unregistered design, right, called a supplementary unregistered design.
15:53
This will ensure that the full range of unregistered design protection available in the UK before the end of the transition period will remain available.
16:03
Supplementary, unregistered design will effectively provide the same protection as the community on registered design of both 3 and 2 dimensional designs for a period of three years.
16:13
Although, of course, the scope of protection will be limited to the UK, its protection will not extend to the EU.
16:21
The supplementary, unregistered design will be established by first disclosure in the UK.
16:27
So first disclosure in the EU will not establish the UK equivalent design, and it may destroy the novelty in that design from a UK perspective.
16:38
Should you latency to claim UK unregistered rights, and similarly first disclosure in the UK may not establish community unregistered design right, could destroy the novelty, and that design should unite to seek to claim EU unregistered rights.
16:55
So it's not clear yet whether the marketing of a design simultaneously in the UK and EU, for example, by live streaming online, would give rise to both community unregistered design and UK, supplementary, unregistered design?
17:10
So it's now more important than ever, to carefully consider how when and where you first is going to designs in order to establish unregistered protection in the markets, most important to you.
17:25
To existing UK, unregistered design, right? We'll carry on as before, and will exist alongside the continuing and supplementary on registered design rights. So we'll have three to think about.
17:38
It will continue to provide protection for the shape and configuration of three-dimensional articles for up to 15, up to 15 years, from the date of the end of the year, in which the design was first recorded, or a corresponding article, was first made, which is cutshort to 10 years from first marketing, of the, product, made the design.
18:01
However, the qualifying criteria, UK design right will change, on the first of January.
18:09
Until the end of the transition period, UK design right could be established, and in the following circumstances.
18:15
So, by a designer who is resident in the EU, by a business employing designer formed on the laws of an EU member state, or where the first disclosure of the design code in an EU member state? This means the activity inside the EU to outside the UK could be sufficient for establishing UK design right.
18:40
But from the end of the transition period, the qualifications for the UK design right will be limited to individuals resident in the UK, or a qualifying country as defined by the act.
18:52
Businesses formed under the rules of the UK or qualifying country Where qualification for UK unregistered design, right Is as a result, first marketing, you'll need to have first marketed articles made to your design in the UK or a qualifying country, so no longer EU member States. So, I'll just pass you back over to Margaret is going to talk about copyright.
19:18
That was, the main change is focus on trademarks and designs. I want to quickly look at the position of other IP rights. First of all, I want to look at copyright.
19:30
Copyright Law has largely been harmonized across the EU, primarily by way of directives, rather than directly applicable AQ regulations.
19:38
In addition, the UK is a signatory to a variety of international copyright treaties.
19:43
So as a consequence, most copyright law will remain, at least for the time being unaffected by Brexit.
19:49
There are, however some minor changes which will occur after the end of the transition period, which have been set out in the relevant regulations.
19:57
As part of the UK's qualification requirements for copyright protection, the UK currently recognizes copywriting works made by a national, resident, or business of, or first published in or transmitted from, the UK, another a state, or another third country that participates in the international treaties on copyright.
20:17
Following the end of the transition period, all references to the EEA will be removed from the existing qualifying criteria.
20:24
However, since all AEA states currently participate in the treaties, the status quo will be maintained And so far, for the time being, at least, qualification for copyright protection, when change.
20:38
The position of orphan copyright works. That's where the rights holder is either unknown or can't be found, will change.
20:45
The Orphan Works directive will no longer extend to UK cultural heritage institutions, and those institutions will no longer be entitled to make works available online in the AEA under the orphan works exception.
20:59
In the UK, the exception to copyright infringement for orphan works, will cease institutions that wish to digitize and make orphan works available online in their collections, will no longer be able to do so in the UK under the exception to copyright.
21:14
This means that works that UK institutions have previously placed online will have to be removed to avoid infringing the copyright in those works.
21:21
Alternatively, in the institutions that wish to maintain their online collections within the UK, will now need to do so via the UK's own Orphan Works licensing scheme.
21:34
The government intends to repeal the portability regulation.
21:37
This is the regulation which allows consumers across the to access online content, for example, Netflix and Amazon Prime, as if they were at home when they travel in the AEA.
21:48
This means that UK consumers visiting the EU and EU consumers as consumers visiting the UK.
21:55
I like to see restrictions to the content ordinarily available to them when they're in their home state.
22:02
And finally, the government also intends to make it an offense to use a satellite broadcast Dakota device, intended for an EU audience to access a program included in a UK broadcast and thereby avoid paying access charges.
22:16
So what's the long-term outlook for UK copyright law?
22:20
We're looking forward beyond the transition period.
22:22
It's unclear whether the UK will retain Harmonize laws and if it does, whether the UK Courts will interpret them afresh or whether they'll follow the Court of Justice's rulings.
22:32
The government has already indicated that it has no plans to implement the directive on copyright in the digital single market into UK law.
22:40
That's the directive, which represents the EU's program of reforms.
22:44
Covering the press publication rights.
22:46
Online content sharing service providers and protections for authors and performance.
22:52
And additionally, we'll have to see whether the Court of Justice's ever widening approach to the protection of utilitarian industrial designs through copyright will find favor with the UK cordes whether this will be an area where the UK courts will readily divert away from the EU's approach to copyright protection.
23:12
There will be changes concerning the EU database, right.
23:16
This was created in the UK, following the implementation of the database directive in 19 96, and gives protection for databases.
23:24
Although a database doesn't have to be original for a 25 database, right, it does need to be a substantial investment in obtaining, verifying, or presenting the data.
23:33
The relevant regulations provide that following the end of the transition period.
23:38
Any EU database rights, existing at the end of the transition period, will be preserved for their entire normal duration.
23:45
UK citizens, residents, and businesses will be eligible for a new, UK specific database rights and qualifying databases, which they make after the end of the transition period, And that new right will give the same rights in the UK, as the EU database Rights, Gibson a.
24:03
Conversely, when new databases are created by residents, nationals, and businesses in the EEA after 31st December 2020, they'll continue to be protected by an AAU database, right. But that right, will no longer get protection in the UK.
24:19
So, as a consequence, a new database created after 31st of December 2020 will either attract UK database, right, or a new database, right, depending on where it was created.
24:34
As for patents, there's little harmonization of substantive patent law at EU level, and Brexit has a direct impact on the application processes, and the registration systems for UK Domestic Patents, which are administered by the UK IPA.
24:47
And European Patents Designating the UK, which are administered by the European Patent Office, which is not itself an AAU institution.
24:56
The UK's membership of the Patent co-operation Treaty and the European Patent Convention remains unaffected, and the UK and European patents continue to be enforceable in the UK in the same way.
25:09
With regard to supplementary protection certificates, which can extend the duration of patents for plant protection products or additional products, a yellow will continue to apply to applications that are pending in the UK, as not the end of the transition period.
25:23
Future supplementary protection certificates for the UK will be granted only by the UK IPO and will be based on either national or European patents at a UK marketing or thought authorization, there'll be no change to the length of protection, all the fees incurred in connection with those certificates.
25:42
And that's for the unitary patents.
25:45
The UK's participation in a system for the registration of a unitary patent covering multiple EU countries appears to be quite remote.
25:53
The UK Government ratified the UPC in April 2018 that in July 2020, the government withdrew its ratification, announced its withdrawal in Parliament.
26:03
Indeed, the very future of the system itself is open to doubt in any event, participation in the unitary patent and indeed, the court is only intended to be open to your AU members.
26:14
So Brexit means that the UK won't be able to participate after transition period ends unless there's a special agreement reached with the AAU and participating states to permit the UK to participate as a third country.
26:27
With regard to trade secrets and confidentiality, the government implemented the Trade Secrets Directive in 20 18, The trade secrets enforcement regulations, as the directive largely reflected the UK law position, the regulations are essentially procedural.
26:43
Nevertheless the UK's departure from the EU, what directly affect the law on trade secrets, or confidentiality.
26:49
Any UK entity is doing business in the EU, will still be able to rely on and enforce the directives terms in any EU member states, because the directive applies regardless of where the secret holder is domiciled provided that damage suffered took place in an EU member state.
27:07
There are also regulations which touch on geographical indications and community plant variety rights.
27:15
Anyone holding a geographical indication, including designations of origin, traditional speciality is guaranteed in traditional terms of wine.
27:22
At the end of the transition period we'll be entitled to continue to use it in the UK, without any need for re-examination, unless its protection is derived from an international agreement to which the EU is a party.
27:34
If, however, a geographical indication loses its protection in the EU, at anytime after the transition period ends, then that look that right will also be lost in the UK.
27:47
As for the community plant variety, right, this is only enforceable in the, so the UK will be establishing its own plant variety registration system to operate from the end of the transition period.
28:00
Finally, with regard to dot EU domain names, it's currently the case that undertakings and organizations established in the UK and UK residents and citizens have been able to hold and register dot edu domain names during the transition period.
28:16
Once the transition period ends, UK undertakings, and organizations established in the UK, but not in the EU UK citizens who are not residents of an EU member state, and UK residents who are not EU citizens, will all lose the right to own adult a domain name.
28:36
And, from the end of the transition period, applications for the AAU domain names will not be accepted, from any of those entities, normal dot edu domain names, Paler to be transferred to them.
28:49
That concludes our run through of how IP rights will be changing following the end of the transition period and the key takeaway points around the slide.
28:56
Comparable rights will maintain protection of existing EU Registered trademarks and community rich designs.
29:02
Positive action will be required to maintain protection of applications not registered by 11 0 PM on the 31st of December.
29:09
And you'll need to watch this space regarding the extent to which ... may diverged from EU law, on the first of January 2021 onwards.
29:19
Have you found it useful and relevant in the current circumstances?
29:22
And if there was something you'd like further information on, or have a specific query on any matter that you'd like to discuss, please let us know. We'll be happy to help.
29:31
In the meantime, we've launched a free Helpline giving you direct access to a senior team of experts for free legal guidance on your life and business matters details on the screen if you'd like to book a session.
29:41
Thanks very much for watching, and we hope that you'll be able to join us for our next Brexit IP webinar.
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Webinar
Intellectual property: Crown use and compulsory licensing for new inventions
Intellectual property: Crown use and compulsory licensing for new inventions
The search for a vaccine for COVID 19 is a painful reminder that necessity can be the mother of invention. How do patent rights fit into this dynamic? When should private rights give way to the public good?
In this webinar, we look at compulsory licensing and in particular Crown Use, and how those provisions might apply to new inventions.
Please do let us know of future topics that you are interested in, or for more information about our webinars please contact us and you can view past webinars at SHMA®ON DEMAND.
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Webinar transcript
(Please note this is auto-generated and un-edited)
0:33
Hi, everybody. My name is Nick Breaks and I'm a partner in the IEP team here at Shakespeare Ma today. Welcome to our webinar today and thank you very much for taking time out to join us.
0:45
Before we start, just a few points on how this work is a Q and A icon at the bottom. So please use that to ask any questions that you have and we'll come back to you afterwards and directly. So my topic today is on compulsory licensing and crown use. Before we dive into the detail. Just a few words by way of introduction.
1:07
The idea for this webinar started when Kobe nine team exploded into our world, roundabout late February, early March.
1:16
And many people running businesses of course were concerned that probably their immediate concerns were controlling costs, stuff going on furlough.
1:26
What to do about IP, probably wasn't the top of most people or executives worry list. However, learning to live with the virus, most certainly was on top of governments. And frankly, everyone's concern.
1:40
That gave rise to comment in the press about IP patents in particular. And whether they were going to be a help or hindrance in this process. For professionals like myself. And presumably many of you listening in to this webinar, this is quite a familiar theme that we've heard or used to about whether patents are a help or a hindrance.
2:03
And, of course, it's a, it's a bargain with the state, Isn't it that you would disclose your invention in return for which you get a time limited monopoly And this is supposed to further the interests of mankind.
2:14
So those are the questions that covert 19 has raised, I think, you know, patterns can be a bit misunderstood and the the concern would be that there would be a lifesaving vaccine and somehow, patents would get in the way of vaccines being made available to the world's population.
2:36
This was the problem. But, of course, that's only a problem if a patent is able to or enforces patents in such a way as to deny product, to the market.
2:50
Or, he's not able to provide enough product to the market. So, how is the public interest to be protected?
2:59
So here are some of the points I was just talking about there, but, you know, how is the public interest to be protected and what is the access that's going to be given to the stock saving vaccine?
3:09
So the topics for today are compulsory licenses, crown yeas, and injunctions. So let's start with compulsory licenses.
3:20
Now there's a group of sections in the Patents Act talks are set out there set out in detail how this is going to work. Now, compulsory licenses really frankly have been little used over the years, and in fact competition law has proved a more effective way of policing. Those companies with many patents which might be regarded as abusing a dominant position.
3:45
Now if we put ourselves in the in the scenario of thinking, you know, how would a compulsory license help access to vaccines? There's a fundamental problem in that you can't apply there's a provision in the Patents Act which says that you can't apply for compulsory license until the expiry of three years from grant. Well, let's just assume that someone's filing a patent for a vaccine today is going to take what a minimum of something like 18 months to get the patents granted. And then another three years till you get a compulsory license. So I'm not sure necessarily a compulsory license is going to be the way forward but let's just finish looking at compulsory licensing as a topic. You make an application.
4:27
Someone who might want a compulsory license makes an application to the controller and he may set the terms of the license principally as to royalty rates.
4:38
Here are the grounds for a compulsory license that a controller might wish to consider.
4:44
Fundamentally, it's demand for products not being met on reasonable terms.
4:50
So, for example, the proprietor may refuse the license and the result of him doing so hinders.
4:58
Unimportant technical advance of considerable economic significance, not some wording from the act or the manufacture of products, which do not infringe is unfairly prejudice. That's another ground or example of demand not being met on reasonable terms.
5:15
Not if a license is to be given. A very restricted.
5:18
They're not exclusive or non assignable have to provide adequate remuneration to the patentee. And they are limited in time.
5:28
So the criteria for the controller to think about when he is considering those reasons, or the nature of the invention, you might pause and think, Well, the next invention, in this particular case, might be for a vaccine. So, rather, critical.
5:41
And whether the patent is making full use of it, hopefully, invention that is, what is the ability of the applicant to work? The invention.
5:51
The applicant for the compulsory license, that is not for the pattern. What is the ability of the applicant for compulsory license to work the invention to public advantage? How's that going to help the public? if he's given a compulsory license? So, let's just move on to Crown Yeas and it's this one, I think I think is going to be the most opposite for the covert situation.
6:11
For those of you following the numbers, you'll see that's the next group of sections in the Patents Act.
6:15
Now, Crown Use is really effectively a compulsory license, albeit that section 55 of the Act makes clear that Crown use is not technically an infringement of a patent. I think that, some, it makes good sense. If you go back and, you know, the history of patents, patents were a form of patronage given by the Crown and clearly they wouldn't want to set up a situation where the crown itself could be an infringer.
6:41
So the Crown use powers in the Act are really very broad and frankly, seemingly without limit.
6:47
And if that wasn't enough, there are even wider powers' provided for if there's an emergency in a subsequent section.
6:56
So very broad range of powers for the crown to authorize crown use.
7:02
Now, certainly, I've always thought of Crown is up until six months ago or even 3 or 4 months ago as being something that wouldn't most likely involve either military products or intelligence material.
7:17
But it's really come to the fore here, as I say, in with a pandemic. And one of the grounds for one of the authorized acts that you can authorize for crown yeast is sales of infringing products, where the invention is a specified trunk or medicine.
7:34
So, if you apply that to the situation, situation we've got here, you could well imagine that there might be.
7:40
You'd authorized sales off by drug manufacturers to the National Health Service, PP. Personal protective equipment is clearly not a drug or medicine. but I don't actually think that would create any practical problem because at the very wide terms of crown use provided for in the act. So who does Crown use help? Well, the crown, obviously, but in practical terms, that's likely to be a government department or a person authorized in writing by a government department.
8:14
So the way this would work is the government department, say, the Ministry of Health, would authorize a particular manufacturer to make product X That would be a Crown Yeas.
8:28
Perhaps surprisingly, the patent T need not be told in advance of these arrangements. But he must be told at some point and informed of the extent of use.
8:40
So, Authority can in fact also be granted retrospectively. So A would be infringer, if you like, could start making product and subsequently be authorized by the crown or a Government Minister, and acts committed before that authorization, was given, would still be covered by that authorization.
9:02
What about compensation for the patentee?
9:04
Cool terms can be agreed between the parties or, if not determined by the Court on a reference. So, with faculty is able to get appropriate, what would essentially be royalty payments by that method?
9:19
And under this references, Section 58 reference, it is, His award may considerably be enhanced by a provision that was added by, I think it was the 1988 Copyright Designs and Patents Act that provided in addition for payment for loss of profit, or not being awarded a contract for manufacturing goods. In question.
9:39
Probably the biggest open question on this is, who pays the compensation to the patentee? Is it to be the contractor? You know, in other words, the person authorized by the government or is it to be the government? In? Other words, the taxpayer.
9:53
There's no provision on that in the act, and I suspect it was just going to depend on the facts and circumstances in each in each case. So just some practical considerations: If you'd like to read some more about this, there has, in fact, been a very recent case on this: not to do with pharmaceuticals, pharmaceuticals, but to do with that telecommunications.
10:12
I become against Vodafone and you've got the reference, that decision of his Deputy Judge Douglas Campbell QC.
10:19
There were some quite tricky points in this case. I just picking up a few of them, what amounts to an authorization question. So in this particular case, broadly speaking, what was happening was that Vodafone was accused of infringing IP Commerce Patent. And Water Vodafone, we're doing, we're responding to a police request to provide information.
10:45
And the authorization was essentially a a police notice given to Vodafone to do these things and provide this information.
10:54
And it was held that this amounted to authorization So it wasn't authorization, by the crown that is. So it wasn't a nice letter headed from the Ministry of Justice, or something authorizing Vodafone to do these things. It was, in fact, a police instruction given to Vodafone, but that was held still to be the appropriate inappropriate authorization.
11:18
Next, slightly tricky question was, do the patent or patents need to buy identified in this authorization? The implication being that if they're not covered, then there could potentially be infringement under them. And mister Douglas Campbell decided that no, they didn't, it not need to be identified because I could be a very great number of patents and it put a rather big burden on the people being authorized to identify all possible patents that might be infringed.
11:51
What about the question of, is infringement necessary? In other words, would there be a possible workaround? So authorization could only be given if infringement was absolutely necessary. And it was decided, again, it wasn't necessary that they could only be the route to the solution by using an infringement, So it wasn't necessary.
12:15
And finally, well, not quite fondly on whom should the risk for, should the risk for getting into these things wrong, fall on the person being authorized all the government? And as I understand the decision, it was the risks to fall on the government on that.
12:31
Mister Douglas Campbell made the observation that if there was any difficulty with that point about risk, or that could always be addressed in by way of appropriate indemnities in the contractual arrangements Agreed.
12:43
OK, moving on to the third and final limb of my talk, Let's just say a few words about injunctions.
12:50
So, most importantly, you gotta remember, the injunctions are always the discretionary remedy, and, of course, they're not the only remedy available to patent eve. Injunction, he was also going to want some form of financial compensation.
13:05
And it's only really an injunction that is going to bring about a situation whereby people wanting to get on the market are not able to do so, because they have injuncted from doing so. So, in other words, we're only gonna have a problem with vaccines not being available if the court is prepared to grant an injection in any particular circumstance. So, the question arises, Dennis, can public interest be a factor?
13:34
Well, certainly a Canon, there's a decision of mister Justice newberger on that a couple of years ago. But this discretion is to be exercised with caution.
13:43
And as has been observed on several occasions, they're already checks and balances that have been considered by Parliament And the set out in the statute based exceptions, IE, compulsory licensing or crown you start just talked about.
13:59
Just on the subject of injunctions, I thought I'd mention this recent case that evolve against abbott's. So I evolve and abbott against Edward Life sciences. This is all about heart valves so decision of mister colon birth, early this year.
14:14
I did in this case, mister Justice Burst was not persuaded not to grant an injunction.
14:21
In other words, he did got an injunction, even though there was evidence from clinicians saying that they would prefer to use they would be infringing products, and he decided the clinical clinical preference clinicians' preference was not sufficient to avoid an injunction.
14:40
It has to be, you know, it would need to be if something more extreme than that.
14:47
So in conclusion, I really can't see a situation whereby lifesaving drugs or vaccine.
14:56
Are going to be denied to the public because of a monopoly, right. Involving patents being enforced at a cost of human life. I can't see a judge in this country or indeed any other, making an award along those lines.
15:09
If there really wasn't an emergency, almost certainly crowned use would be invoked say in practical terms, you gotta get mechanical or one of his colleagues authorizing manufacturers of whether it be drugs, vaccines, personal equipment, personal protective equipment. So I of engine latest.
15:32
To alleviate any situation, an emergency that arises, as I say, the big question on crown users who actually pays.
15:40
So in conclusion I thought we'd just finish with a quote here from Colin version that heart, heartfelt patent case, which I thought was quite opposite. I'd just like to draw your attention to the date 12th of March 2020. So this was just before lockdown started, and I think it was rather prophetic. Collins said this. So he says, Another factor must be the nature of the competitive product. I doubt a generic version of lifesaving of a lifesaving drug would usually engage the public interest in this way at all. I say, usually, because, one can think of a special cases such as a novel pandemic disease. But, if that happened, and the government could invoke cronies.
16:21
So, I hope that was helpful. That brings us to the end of this webinar. I hope you found it useful in the current circumstances. If there's something that you'd like further information on, I'd like to discuss further, to, please get in touch, and we'll get back to you.
16:35
In the meantime, we've launched a free Helpline, giving you access to a senior team of experts for free legal advice over 20 minute phone call details on the screen, if you'd like to book a session. And finally: please do visit our small on demand pages to access recordings of other webinars and small talks, angina conversations on LinkedIn and Twitter.
16:55
Thank you for joining.
How can we help?
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Webinar
Intellectual Property update
Intellectual Property update
In this webinar, we will provide an update on the current state of affairs in the UK and EU intellectual property offices and the UK courts and what we might expect to see as the lockdown continues to ease.
We will also select a handful of recent decisions to give a flavour of current intellectual property issues and how they may be relevant to your business.
You can view past webinars at SHMA®ON DEMAND or read the latest news and views from us.
Please do let us know of future topics that you are interested in, or for more information about our webinars please contact us.
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Webinar transcript
(Please note this is auto-generated and un-edited)
0:01
I welcome to today's webinar on Dan Goodall, an associate and the intellectual property team. And I'll be talking firstly about how the IP registries and courts are coping during the current pandemic, and then I'll move on to discuss some recent cases and how they may be relevant to your businesses.
0:22
So, even with the UK and EU Intellectual property office, doors closed and staff working remotely, the majority of their services remain unaffected. Many findings are carried out online. So you can carry on finding applications and progressing substantive matters. As you were before, an automatic extensions to deadlines were granted where possible, with those for ag rights having already ended, and the UK IPO extensions next being reviewed on the 22nd of June.
0:54
I only the minimum notice period, before things up and running, again, off two weeks, And we expect the registries to be very busy, and therefore, is the extension has come to an end, having had to adapt to new ways of working like everybody else. So, it's fair to expect things to take a little bit longer. And, with a potential said, in new publications, now may be a good time to write Sonia's, to sign up to watching services if they haven't done so already, just to make sure they don't miss out on any third party applications that they should be challenging.
1:28
Hearings is still taking place, but remotely via telephone or video conferencing. No physical hearings are currently being listed.
1:37
It will be interesting to see how effective these remote hearings are. Particularly in terms of cross-examination of witnesses from their own homes or offices.
1:45
But if they do work well, this could potentially be good news for clients in terms of convenience and cost savings.
1:53
So the UK IP Courts have been working hard to limit disruption at the same time as minimizing risks to its staff and the public they already use online filing. So new claims and applications can be issued as normal.
2:08
Potential claimants will need to be very mindful of limitation, periods at the moment, just to make sure that they don't miss out on the opportunity to issue their claims at all.
2:18
And service of claims and documents may be causing some extra headaches, particularly where the parties are overseas, and even domestically, e-mail service is only possible by agreement or order the core, which may not always be appropriate.
2:33
The courts have adapted very quickly to the Super Mike hearings where possible, and the Lord Chief Justice has already confirmed that they're here to stay. So, maybe part of the new, normal or into new abnormal. As our CEO, Sarah Walker Smith describes in her letter to business leaders, understandably, parties have been requesting stays and extensions as a result of covered nine team related disruption. And a rule on parties agreeing extension between themselves has been temporarily relaxed.
3:05
And one recent decision, the court stated that its recognize that things do take longer for remote working, but existing deadlines shipping that where possible. More we expect that legal professionals and how they use modern technology. And also the courts will be reluctant to grant extensions, which result in the loss of a trial date.
3:29
Now, in an IP specific case, the claimant suggested that the trial should go ahead last year on paper with a series of written submissions and short hearings focused on specific issues using video conferencing with limited cross-examination. And the High Court appreciated the suggestion. But, again, that trial, in any case, that's the approach, just wasn't an out by the rules and the Court guidance. So, maybe this and highlight some of the issues with remote hearings in IP cases and, often with cross-examination, of multiple witnesses and experts.
4:05
Now, in terms of timings in new and ongoing proceedings, it would be sensible to ask the court to build in more time into case management orders and particularly with the parties and experts, remote working remotely and often in multiple countries as well.
4:21
Now, as always, parties should be considering the possibility of settlement throughout the proceedings, as it's usually quicker and cheaper than mitigation. And mediations are certainly capable of being capable of being held remotely.
4:37
Now, moving on to the recent decisions, starting with patents. I haven't put the case references in the slides, but if you do want next case that, let me know and I'll be happy to.
4:49
So, on the whole, it does appear to be a good time to be a UK patent owner. We've seen the courts in a number of cases continue to grapple with the landmark decision of the Supreme Court, in ..., and Eli Lilly, which effectively broadened the scope of protection of UK patterns by introducing a doctrine of equipments infringement test.
5:13
The doctrine of equivalence takes climate adaptation, the UK's preexisting and generally more literal interpretation of the patent claims to include immaterial variations from the invention or equivalents. one way of limiting the scope of equivalence is preventing the patent owner from asserting that the patent covers by equivalents, aspects that were amended out during the defining stage.
5:40
Then, ..., the Supreme Court, said that the reference to the patent file would only be appropriate. Where either the point at issue is truly unclear if looking at the specification and claims of the patent alone and the contents of the file resolve the point unambiguously. Or, there would be contrary to the public interest for the contents of the file to be ignored.
6:04
So the bar on reference to the prosecution history was therefore set quite high. And in another case, the following year, the same Supreme Court judge this time sitting in the Court of Appeal, declined to refer to the file in a case concerning ice rink technology.
6:20
However, in the recent decision of Akiba therapeutics and five region, the High Court found circumstances where it was appropriate to refer to the patent file on public policy grounds and pointed out that it would be contradictory for the claimant's on the one hand, to amendment claim down, particularly to save its validity over some prior art. And yet at the same time, as the scope of protection of the amendment claims extends well beyond what it was narrowed down to during prosecution.
6:50
So whilst the High Court applied the decision in that tell you this, as it's bound to do, its interpretation somehow failed. The Bar on reference to the fall may not be quite so high. But even so, and with the doctrine of Equivalent still not applicable to the question of novelty, there is scope for UK patent owners to assert a wide degree of protection.
7:12
So the next case is about interim injunctions, which are often sought in intellectual property cases and the recent Patents Court decision, and hopefully set out the principles routinely applied by the Court. So an interim injunction is a strong remedy effectively preventing defendants from carrying out the allegedly infringing acts before the court has determined the outcome of the substantive case.
7:39
So the court needs to decide where the balance of convenience lines between ongoing harm courts to the applicant, and the harm to the defendant, if it turns out that the injunction was wrongly granted.
7:51
And the first stage of this process is whether there is a serious issue to be tried based on the supporting evidence provided by the applicant.
8:00
Now, preparing evidence can involve some intense activity over a very short period of time.
8:08
So after this stage, the Court considers whether damages would be sufficient to compensate the claimant and if they would be interim relief won't be granted even if the underlying claim is very strong.
8:20
Now, if damages aren't an appropriate remedy, then the court will next consider whether a cross undertaking in damages would be adequate to protect the defendant.
8:32
And applicants should seriously consider the risk of paying the defendant insignificant, or potentially significant compensation, under cross-examine, angler cross undertaking to defend them. If that substantive case later lost, an injunction was wrongly granted.
8:48
If it's still unclear, it not point where the balance of convenience lies the court can take into account the relevant strengths of each party's case on the basis of soul and evidence, but they will avoid trying to conduct a trial within a trial.
9:03
Finally, on interim injunctions, another point to remember if the applications without notice to the other party, require full and frank disclosure by the applicant of the relevant facts and legal principles, and that includes any weaknesses in the applicant's n-case. And an application, for interim relief, has been turned down recently, on the basis that disclosure wasn't frank info.
9:28
So, whilst interim injunctions can be a very powerful tool, just remember that they do come with risks attached Yes, I'm moving on now to trademarks. And you may have seen trademarks mentioned in the news, amongst the reporting of Prince Harry and Megan Meghan Markle stepping down the senior Royals. And there's a few learning points here that I'd just like to, just like to share with you, may help you with your own trademark strategies.
9:56
Say: UK Trademark applications were filed in June 20 19, and for Sussex Roil, Sussex role the foundation of the Duke and Duchess of Sussex.
10:09
So, first thing to say really is when considering a new brand. Be aware that certain words, images and emblems may be prohibited from registration is trademarks or they may have specific limitations applicable to them. And Royal, it's one of these restricted terms. So this might explain why it took approximately six months after that amongst OK through the examination phase.
10:34
Is also advisable to file applications before the new brand is announced. As trademark squatters may try to get him with an application first, and then hold you to ransom.
10:46
And the Duke and Duchess of Sussex had set up the Sussex ... dot com website two months prior to finding the marks, so it does seem like some risk may have been taken there.
10:57
And ultimately the prospect of having to challenge the squatters applications or at worst dropping the new brand is best and easily avoided with any findings of your own. Since trademarks or territorial rights, and squatting is a global phenomenon. Unsurprisingly various applications were filed for Sussex Royal across the world. And, according to reports, one of these applications with specifically made with the intention of teaching the Duke and Duchess a lesson about how trademarks work. They didn't really need that lesson because they filed international applications claiming priority from the UK application. So they benefited from the protection date of the application, and I know that was necessary.
11:46
And so when it comes to your starting your own strategies, remember to cover your key territories, and remember that you can claim priority from earlier applications. And now as it turns out, in February, the Duke and Duchess of Sussex dropped the word evolved from their brand. They say the trademark applications were withdrawn.
12:08
Now the next case is very interesting and in-depth. And the Court of Justice of the European Union and the High Court decisions confirmed that descriptions of goods and services that lack clarity and precision not sufficient in themselves to wholly or partially invalidate a registered trademark.
12:31
And but an application made without any real intention to use, the mark is sufficient to invalidate on grounds.
12:40
And this is quite significant, because there are concerns for brand owners. That many existing trademark registrations containing broad terms would be wiped from existence, following the earlier opinion of the EU attorney general.
12:55
Now, just to give an example of a broad term, And in this case it was computer software, which can obviously cover a huge array of different types of software, and there'll be many, many trademarks out there with list and computer software.
13:09
And the decision also serves as a warning to organizations that seek to use trademarks as a weapon by casting the net protection over the white.
13:20
Now, in this, in this case, Sky won its trademark infringement case. And but only afterwards registrations will narrow down to a fraction of what they once were on the basis of bad faith.
13:32
The court decided that skies applications were made in bad faith because they clearly didn't intend to use the mark for all the goods and services lifted. And they also fall for impossibly broad Categories. Now, just give you an example. And Sky had applied for a wider range of goods and services, including bleaching, preparations and whips.
13:57
Now skycap wanted the court to find, the bad faith in respect to some of the goods and services should take, the whole sky. It's registrations. Meaning, the holes, skies registrations would be invalidated. And because of the earlier result, the other decision in the CJA EU skies marks are only partially invalidated. And the high court found that was enough for infringement of the marks and that surviving form.
14:27
So I think the take home points here really are paths.
14:32
Land grabbing basically, you know, using trademarks as a weapon won't be tolerated by the courts, and but also in multiple. Fortunately for trademark proprieties specifications, lacking clarity and precision won't be invalidated on that basis alone. And prices may still expect them to be challenged and potentially narrowed based on monies if reporting them against the parties.
15:01
So, moving on to them in Bentley, this is an example of how strong the registered trademark can be for brand awareness.
15:06
And the claimants were the owners, an exclusive licensee of three longstanding. UK register trademarks containing the Word Bentley for various clothing and headgear items, and the defendants with a well-known bendy motors who had been moving into selling clothing and headgear.
15:26
Now there's a history between the parties and bedding clothing having made itself known to Bentley Motors in 19 98. And subsequently, Bendy Motors had tried to clear a path for itself by challenging Bentley Clothings registered trademarks. Since they haven't succeeded in counseling or monks Bentley, clothing Sue for infringement.
15:47
And although Bentley Motors was using Bentley as part of a combination mark with the links logo which I've put on the slide there, the court found that the average consumer would have seen this as two separate marks as this is how Bentley had been using them beforehand.
16:03
So in perhaps a David and Goliath moment, bending back his competitors extensive reputation to the modest reputation, authentic clothing and argued that consumers would only think of Ben Motors when seeing clothing barinas combination mark.
16:19
However, this wasn't relevant in the case because trademarks can be infringed in different ways. And the owner of a registered trademark doesn't have to use it to an extent sufficient to create a likelihood of confusion in the marketplace, and the court went on to find an infringement on this basis.
16:37
The fact that the marks had coexisted for awhile and there was no evidence of actual consumer confusion didn't make any difference to the outcome. And then the motors was entitled to carry on setting jackets and ties, and caps and scarves, and based on some of its prior use, but that's probably a little constellation when, you know, announced to expand further.
17:04
So it's another example of the shear strength of a registered trademark, irrespective of the respective cached commercial strength of the parties.
17:15
OK, so moving on to the case this interesting to me personally. It's Video Gamer. Many Knighted has sued the publisher and developer of the Popular Football Manager Game.
17:26
Trademark case itself is slightly unusual since there's not only an allegation of infringement based on unauthorized use of the word Manchester United and but also infringement of the trademark for the Monday night crest logo by not having used it, and instead having replaced it with a simplified red and white stripes logo.
17:47
So many nights had argued that came as expect to see the club crest alongside its name. details and say, the defendants deprived magnitude of its right to license and control.
17:58
and exploitation of Israel trademark and related video games. And so, therefore infringed this very interesting argument. But sadly, not the subject matter of this particular hearing, so we'll have to wait and see how that one goes. And the recent hearings. Interesting, insane, right? Because it concerned an application to amend the pleadings to hold the defendant's jointly liable for patches developed by third parties, which effectively. And our game is to put the Manchester United logo back in and independently of the publisher and the developer. So Monday night, it had relied on a provision which is really designed to prevent preparatory X, which aid infringement effectively. And so examples are creating packaging with marks on labels that are attached to the goods.
18:52
But even in this case, even if the patches were prepared to act, the the ultimate use of the monks would be by game as in their personal capacities. And so the game has some sales wouldn't be infringing the marks. And the court therefore rejected the application as the defendants couldn't possibly be infringing on the spaces that can possibly be live on this basis.
19:19
Now, some interesting arguments have been raised by counsel for Monday night teacher in the hearing, including that many gamers are now acting commercially.
19:27
And this is true because many gamers to stream their gameplay online for advertising revenue revenue. And so, a streamer using the patch displaying Manchester united's trademarks could potentially be infringing.
19:40
But, unfortunately, for the applicant, since it wasn't reflected in their draft amended pleadings, the application failed. But, I think we might expect, and there might be another application.
19:54
So moving on to copyright designs, and as my colleague Malraux Pion I discussed recently in his webinar, of course across the EU is starting to apply the ....
20:04
You use decision and cut them out and G-Star raw, and if you haven't seen the webinar, the outcome of the customer decision was that the only requirement for copyright to subsist in a work in the EU, is originality. In the sense that it's the result of the author's own intellectual creation.
20:22
National goals shouldn't impose additional requirements such as esthetic or artistic value, since the approach in the UK.
20:31
So therefore, an interesting time for copyright, as it appears to me, extend copyright protection to you to determine designs, at least as far as the UK is concerned. And this blurring of the lines between copyright and designs is significant, because of a much longer period of protection of copyright works.
20:49
So we may therefore see claimants' adding copyright claims to what would have more traditionally been patent infringement cases.
20:56
And unless the copyright claim really doesn't add anything, it's procedurally difficult. Or without significant cost it seems to be nothing to lose in doing so.
21:06
And this is probably even more likely following the CJA EU's decision last week in the Brompton bicycles case.
21:15
So in a referral from the Belgian court concerning the shape of the Brompton Bicycles, the CJA EU was asked whether works whose shape is necessary to achieve the technical results. So effectively, functional function functional articles can be protected by copyright.
21:32
In assessing this, the referring court was asked also asked whether the existence of earlier patents and the intention of the infringer were relevant.
21:43
So in February, we had the non binding opinion if the attorney, the advocate general, that there should be no copyright protection for products with an industrial application. Shape is exclusively dictated by their technical function. In his view, copyright protection of functional designs could potentially undermine the patent and design systems. And CJ, he is now determined that the question is really just about whether the author is able to reflect their own personality in the relevant work as an expression of free and creative choices.
22:18
So provided that, any technical considerations, don't completely restrict those creative choices, which would only seemed to apply, and very few circumstances and copyright can subsist in functional articles.
22:31
The intention of the alleged infringer is completely irrelevant, and the existence of an earlier patent is relevant, but only to the extent that it shed light on the creative choices available to the creator at the time.
22:44
So this does get back to the point on overlapping intellectual property rights. As has always been the case, intellectual property rights are not mutually exclusive. So it's always worth considering the bigger picture before taking action against infringers. And each IP right will be considered on its own, merits, and will have its own requirements for subsistence.
23:05
It will be interesting to see how the case law develops in this area, with cough from our already having been applied to a shop layout in Italy. In particular, will the UK carry on down this path once we no longer subject to EU law. And, in my view, that the advocate general's concerns about copyright protection of functional articles undermining the patent and design systems seem justified. And if you'd like to hear more about this subject, Matter discusses Coffer Mount and its recent application by the UK codes in more detail in his webinar, which is available on our website.
23:41
OK, so, last but not least, and the recent application for strike count. The Court has given a useful indication of the availability of injunctions and damages in breach of confidence claims.
23:53
And so in this case concerning the defendant's access, to the claimant's IT systems, the defendant had applied to strike out the claim on the basis that they could only be liable for misuse of confidential information if they knew that its use or retention was not authorized by the claimant, which they said was not the case. And also, this knowledge must be depleted by the claimant, which it hadn't done.
24:19
So having reviewed all the case law, the Court found that for damages to be available, the defendants had to have sufficient knowledge that they lacked the authorization from the claimant to act as they did.
24:32
Whereas it wasn't a requirement for injunctive relief. And since the claimant hadn't actually pleaded knowledge of the defendant, the damages claim was doomed and was struck out although the claim for an injunction was not.
24:45
And so it might be re-assuring that injunctions may be innovative or without having to show the defendant's knowledge of wrongdoing.
24:53
And also, in IP cases, it's important to remember that the most valuable remedy is often the injunction.
25:01
That's not to say that financial remedies aren't important because they are. But it's the injunctive relief. That will help protect your market share and your brand from further damage. So that brings us to the end of this webinar, and I hope you found that useful. If you would like any further information, or if you've got a specific query on any matter that you'd like to discuss, please do let me know, and I'll be happy to help.
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Webinar
Covid-19 vs. IP
Covid-19 vs. IP
What is the impact of Covid-19 on intellectual property practices? The long term effects are largely unknown, but there has been a significant impact in the wake of the outbreak of this unprecedented pandemic.
In this webinar, we look at a number of subjects, including how to deal with remote IP transactions, the impact on litigation and the future role of IP in a changed landscape.
You can view past webinars at SHMA®ON DEMAND or read the latest news and views from us.
Please do let us know of future topics that you are interested in, or for more information about our webinars please contact us.
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Webinar transcript
(Please note this is auto-generated and un-edited)
0:40
Hello, my name is Martin Noble and in this webinar, I'm going to have a look at some of the issues that affect intellectual property rights in the light of Coronavirus or COVID-19.
0:56
The long-term effects are largely unknown, but there has been a significant impact in the wake of this unprecedented pandemic.
1:06
So, I'm going to have a look through, as I've said, the impact on intellectual property practices and in particular these areas here, I'm going to have a look at how it's affected falling prices investment in IP, how it affects branding and trademarks, for example.
1:28
Also, how it can affect information sharing.
1:33
Then we'll move on to some of the practical side of things. So, how you complete transactions that might involve IP, for example. And then finally, we're going to have a look at the impact on mitigation.
1:49
So, looking at firing Practices, now I can't tell you how it's affected farming practices around the world, but I can give you a few tips in terms of what's been happening at the UK IPO. It's quite clear that I just pointing out to the worldwide situation that patent and trademark offices around the world are adapting the working practices as we all are to cope with coronavirus. So this means, for example, moving away from paper, avoiding the use of post where possible, and paper and fax services, and also using online services such as web based, filing portals, and e-mail.
2:39
So what is going on at the UK IPO?
2:44
For example, there is no facts. The fax machine has completely been shut down. The UKIP has also introduced the concept of interrupted days. So for example, since the 24th of March, if a deadline falls in, in an interrupt a day, then the deadline itself has been extended. And currently, the UK IPO is giving people at least two weeks notice before we come out of the interrupted day period. And at present, we are currently within the period.
3:24
There are other measures, as well, So, for example, you can receive certified copies of documents, if you agree to save them in a digital format, rather than receiving hard copies.
3:44
Now, I wrote about this when we had the 2008 recession.
3:48
I'm not going to go into great detail here, but that is a wealth of information and research that supports the fact that companies that invest in IP and take steps to protect the IP during a downturn tend to come out of it fast, stronger than those who don't.
4:09
one thing that I would say is that this also means policing your rights, as well as investing because during this unprecedented time, there will be those unscrupulous individuals and organizations that try and take advantage of the fact that perhaps attention is diverted elsewhere.
4:32
To shortcut the time, effort and skill set has been put into, you know, innovating in order to make a quick buck for themselves. And that kind of activity tends to be more prevalent in hard times.
4:52
And that takes me quite neatly onto a little spotlight on branding during the covert 19 pandemic because organizations have found that it has changed the way in which businesses reach their target audience.
5:13
So investing in IP is one way of trying to ensure that you do communicate and keep in touch with those target audiences. Any business, for example, that relied on footfall has had a significant impact because of the closure of the High streets under the Government restrictions.
5:38
And so businesses have had to find other ways of reaching consumers. And in a very short space of time, they've had to change those practices.
5:49
So, this concept of using content, marketing, which too many businesses, was quite foreign, Now becomes, content marketing is king, so I've put it. one example is Doubletree, which is a brand owned by Hilton, part of the hotel group. And they always used to create the customers that guests with a chocolate chip cookie. And people have tried to emulate making the cookies, but the recipe has always been known as a bit of a secret corporate secret. But one of the things they've done, and it's attracted quite a lot of attention, is they've actually released the version of the recipe into the marketplace, and it had a real positive effect on their guests and consumers.
6:40
Again, it's just one way of them being able to keep in touch with people, because than not able to, in what would otherwise be the traditional way of people turning up.
6:53
Many subscription models, for example, are also opening their doors for free, at least for temporary Paris, or perhaps for much longer introductory periods to try and affect crop people's attention and hope that they would then stay with those subscriptions when they enter into the payment period.
7:17
But what is important in terms of trademarks, for example, is that if you're a business and you've had to change your business activities, then what you need to do is ensure that your trademark portfolio is also aligned with what you're actually doing. Trademarks are susceptible to attack from third parties. If you don't use them in the way that you've registered them. So non use is an issue. But the opposite of that is that if your registration isn't broad enough to cover what you're doing, then perhaps you ought to be thinking about whether your registration should be broadened to make sure it's in line with your business activities as they have, may have changed quite significantly.
8:10
Another aspect of Coburn 19 is information sharing.
8:17
IP protects, but I've mentioned here, it's also a way of sharing information and ideas. And it underpins, for example, the patent system in the UK, which regarded as the strongest IP right with the strongest monopoly. But in return for the monopoly that a patent teahouse, they also have to share the information with the general public as to how their patent can be worked.
8:52
So for example, as many companies rushed to find vaccines, for example, IP could provide the tools for protecting, you know, collaborations between multiple parties, for example, and I'll put that a government ventilator challenge.
9:10
There'll be, I'm sure, a wealth of information and legal documents that underpins the collaboration between the parties involved in art.
9:22
And licensing will be a feature within not. And we may also say they rarely used crown use defense, which is where it can be a defense for someone to use a patent if it has been legitimized by the state.
9:44
So, just moving on to some more practical issues. We are all now working from home, Or many of us are some people still in the office and their workplaces, but there comes some practical considerations about how you complete transactions that include IP. For example, How do you enter into a contract with another party or multiple parties on a remote basis?
10:16
But actually, I'm pleased to say that English law is, is very flexible in this regard. Generally speaking, you just have to be able to evidence that both parties are quite clear about what they've agreed and that they are acting in accordance with that agreement.
10:37
So, you can have something quite simple as an e-mail Exchange, where one party says, This is what I am prepared to do with the other party saying, Yes, I'm happy to do that, and you can then, in fact, have a legal agreement come into force into being.
10:58
There are, as I've mentioned, that some ... providers that are already in the marketplace and have been for some time before, covert 19, came along, which provide platforms that parties can use in order to evidenced that to a document. For example, a PDF version of an IP license has been signed and accepted by certain signatories.
11:26
And all that does is, it effectively provides a way of being able to avoid one party from arguing at a later date that they didn't agree to the terms. Someone's given login details, they sign up. They initial, every page, the initial the end, with an electronic signature, and English all recognize this, as far as a normal contract goes, that would be sufficient for an agreement to come into force.
11:58
And I've already mentioned that intellectual property officers have had to get to grips with different working practices, and many of them are already used to online filing.
12:12
one type of document, or transaction that is worth mentioning, and this is in the middle of the slide, is the swearing and witnessing of documents where the law at the moment hasn't quite caught up. In the sense that, for example, if you need a document to be witnessed by a third party then that third party has to be in the vicinity of the person signing.
12:42
And I know that some of my colleagues have had to deal with this so far. It could be as simple as putting the document on a table and then socially distancing yourself as a witness. Whilst the signatory signs that document, they then step away and socially distance from the person who's witnessing the document.
13:08
And then obviously, everybody ensures that they wash their hands properly afterwards, et cetera, et cetera. Follow government guidance. But there are ways of swearing and witness in documents during covert 19.
13:29
Finally, I'm going to have a look at the impact on litigation and IP disputes.
13:37
I'm sure you'll be aware that there was a massive judicial building shutdown at the start of the pandemic as it affected everyone.
13:49
The court buildings then started to re-open gradually, and the court system has worked out which buildings should be used and, which ones should remain closed. We are saying now that some cool buildings are actually looking to re-open. The court system was actually found or found its place in an exclusion as, as part of some of the restrictions in that necessary core business hunt to continue. And it was effectively left to judges to decide whether or not hearing should take place in person.
14:30
one could imagine that or certain types of hearing wear having the parties present and dealing with urgently meant that they had to take place. But as far as IP litigation is concerned, initially many matters did not take place in person.
14:51
There was an initial switch to telephone hearings, and we are now seeing much more of a move to video conferencing.
15:04
If you wanted to issue an IEP claim, for example, IP cases have already been using for some time, the online filing system that's available. So, actually, covered 19 doesn't have any impact on that. On the course, are willing to accept documents, which are electronically signed.
15:27
Just as, for example, in many cases, the UK IPA. So, that has not been affected, clearly, there has been a bit of a delay in some of the responses. In response times in terms of how quickly the Court might get back to you, but generally speaking, the online system is working.
15:48
There have also been meshes, similar to the UK IPO, where the court has been more willing to grant extensions to deadlines. Particularly where the parties have been affected by coverity 19, in one way or another.
16:07
It's difficult to tell precisely how this is having an effect on everyone at the moment in terms of if you had to make a court application. But I do know from speaking to Colleagues to actually there was a real insistence on making progress through the court system and holding hearings either by telephone in videoconference. So actually.
16:32
There are some juice, some people that think that is actually more difficult to postpone, because of Qubit 19. If the facility is take, you are available, as they are becoming more widely available, for hearings to actually take place.
16:48
And as I've put that on my notes, many of the court buildings are now looking to ward's, opening on a broader basis with social distancing in place.
17:01
I think that video or telephone hearings will be more prevalent. And as I said to my last point, they are something that will be here to stay something that we will have to get used to.
17:16
It's very much. If you like business as usual, the court system is carrying on, as best as I can with. Litigates, is also supporting using the online systems, for filing, et cetera, and hopefully being pragmatic in the way that they deal with opponents in terms of trying to create extensions when necessary.
17:42
So, finally, just a few key points. I will say, that I pay still remains a very useful tool in the Business Toolkit, both during and after Kogod ....
17:54
And, in this respect, some practical advice is that businesses should take steps, to understand what IP rights they have. So, for example, they should be carrying out an IP audit. So, they are sure of what IP rights they have, whether they're best protected or not, whether any registration would put them in a better position or not.
18:18
And, of course, whether they need to be a little bit more proactive policing that IP rights, because, as I've mentioned, any business to invest in their IP, more during difficult times, is likely to come out of it stronger. The other end. And so, finally, I would say that IP systems still up and running, and are here to help businesses during this difficult time. And it could be particularly beneficial.
18:52
So, thank you very much for listening.
18:54
I hope I provide some useful input for you, and look forward to receiving some questions.
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