Day
Greyfriars Bobby’s Bar is just round the corner from the National Museum of Scotland. The famous statue of the ‘wee terrier dug’ is just outside the pub. Please DO NOT rub any more bronze from Bobby’s nose!
Maggie Ramage
Eric Ramage
Keith Havelock Local Organising Committee ECTA
ECTA members 15, 110 and 705 bid you “Welcome to Edinburgh and the 38th ECTA annual conference”
The ‘big yin’ (did you read the phrase These make clear that all registered EU book?) asked us to write a short article on trade marks and registered community Edinburgh and Brexit for the ECTA Daily. designs existing before Brexit will continue “Aye, nae problem, big man!” we said. to be protected and enforceable in the UK. This will be done by providing an equivaThen Theresa May decided to stand down lent UK trade mark or design right that will as UK Prime Minister! come into force at the point of the UK’s exit from the EU, which will be treated as if it Two candidates are left for the job, Boris had been applied for and registered under Johnson and Jeremy Hunt, each having a dif- UK law. ferent opinion on how to handle Brexit. Pending applications will not be carried Despite the uncertainty, the technical over but will need to be refiled, with cornotices published by the UK IPO are responding UK application fees falling due. the most up-to-date and authoritative For a period of nine months from exit, filinformation available on the post-Brexit ing dates and claims to earlier priority and continued on page 7 IP landscape.
Through the haze
Treading new paths
Hills and valleys
Members of Honour
Understanding the implementation
Olivier Vrins previews his session on
Mireia Currell analyses the unique
Hear from Luis-Alfonso Durán
of the EU Copyright Directive and its wide
strategies for enforcing
challenges that rights holders in the
and João Pereira Da Cruz
reaching effects
unregistered/non-examined rights
sports industries face
as they become Members of Honour
The opinons expressed within this publication are those of the authors and not ECTA
Need IP innovation?
Here’s the solution
Seeing through the haze As the EU Copyright Directive enters the implementation stage, Christian Freudenberg, Chair of the ECTA Copyright Committee, explains its wide reaching effects Now that the EU Copyright Directive is done and countries are discussing the directive’s implementation, what sort of impact will Article 17 have on smaller companies? It is a matter of fact that the implementation of Article 17 will lead to the need of technical and organisational structures to run a platform in compliance with the new rules. While it will be easy for the big players to invest into such structures, staff and technical solutions, small and medium-sized enterprises (SMEs) do not have the same capacities, and the necessary investments will be made on the costs of other business related investments, which may stagnate for that reason. At the same time, the big players will develop such technical solutions not only for their internal use, but also for offering and selling them to SMEs, which will strengthen the position of the big players and the dependency of their SME customers.
provision that prevents compliance with these instruments shall be unenforceable in relation to authors and performers. Nevertheless, the big players exploiting the content will try to negotiate the economic terms and conditions in their own favour, and the national courts and the Court of Justice of the EU will be in charge of protecting the interests of the rights holders in accordance with the provisions of the Directive. Have rights holders already begun working on licensing agreements with platforms affected by the Directive, such as Google or Facebook? As far as I know, some of the copyright collecting societies are already working on strategies how to adapt and negotiate the platform related terms and conditions for the use of the protected content represented by the collecting societies.
Some critics have claimed that the additions to the Directive will damage freedom How could the directive impact piracy/ on the internet. How will the web look once copyright infringement numbers? the directive’s additions are implemented? The Directive does not really deal with piracy The additions to the Directive, many of them and copyright infringement issues at all. The resulting from political bargaining, have mainly general setup of the copyright rules will not damaged the technical and logical structure change, but the liability of online content-sharof the text. This has already led to different ing service providers may cut off some copyinterpretations and wording when the text right infringements like playing music in the was translated into the various language ver- background of a nice cat video, but this will not sions, and the uncertainties will be a long-term have an effect on professional piracy activities. playground for attorneys and courts. In my Such commercially organised piracy activities personal opinion, the implementation of the are already the main target for the legal instruDirective will not change the look of the web ments and authorities established on the basis dramatically with regard to the freedom of the of the enforcement Directive. internet. The freedom of the internet is not based on the use of protected content without the rights holder’s approval or licence.
Members of Honour Recent ECTA Member of Honour and Past President Luis-Alfonso Durán explains what is so special about ECTA and why he keeps coming back for its Annual Conference You have recently received the highest honour of the association and been approved as ECTA Members of Honour. What is special about ECTA? ECTA from its inception has always been a very friendly organisation where members were able to share their IP knowledge with peers and at the same time establish nice personal connections that in many cases develop into real friendships. This is why, since the early days, we address the association as the ECTA family. At the same time ECTA has always been known by the high quality of its Annual Conferences, with very interesting topics and high quality speakers, as well as excellent social events, attracting a lot of attendees. The first Annual Conference that I attended was in 1987 in Copenhagen and since then I have tried to attend as many as possible.
How will the Directive help rights holders to secure fair remuneration for their work? It is one of the main purposes of the directive to ensure the fair remuneration of the rights holders for the use of their work, for example by implementing transparency obligations (Article 19), contract adjustment mechanisms (Article 20), alternative dispute resolution procedures (Article 21) and the right of revocation (Article 22). According to Article 23 the Member States shall ensure that any contractual
Luis-Alfonso Durán Member of Honour and Past President ECTA, Spain
In a nutshell, I believe ECTA is an excellent association and the combination of knowledge and friends that you gain is fantastic. Dr. Christian Freudenberg Chair of the Copyright Committee ECTA
I feel very proud of becoming a Member of Honour.
3
ECTA 2019 Annual Conference sees record registrants ECTA’s 2019 Annual Conference opened yes- participants with the opportunity to “take terday with more than 850 delegates, its high- part in an informed debate on many conest attendance number to date. temporary topics of interest: constructing evidence from the internet, the new EU trade The 38th annual event, which is being hosted mark legislation in practice, the Brexit situat the Edinburgh International Conference ation, strategies for enforcing unregistered Centre between 26 and 29 June, has registered rights, sports law, digital content availabil864 delegates from many countries, bringing ity, and geographical indications, among together attorneys from all over the world for many others”. three days of informative discussion. “As it is now known, the goal of the ECTA This is the conference’s highest attendance Annual Conferences is twofold: to intensify the number ever. exchange of ideas for the benefit of the intellectual property world and to have a good time Last year, ECTA saw just over 800 registrants. with colleagues and friends.” According to ECTA President Sozos-Christos “We very much hope to achieve both in these Theodoulou, the event aims to provide few days we spend together in Edinburgh.”
Editor: Barney Dixon barneydixon@blackknightmedialtd.com +44 (0)208 075 0928
Reporter: Ben Wodecki benwodecki@blackknightmedialtd.com +44 (0)208 075 0926
Designer: James Hickman jameshickman@blackknightmedialtd.com
Contributors: Rebecca Delaney Account Manager: Bea Ipaye beaipaye@blackknightmedialtd.com +44 (0)208 075 0933
Associate Publisher: John Savage johnsavage@blackknightmedialtd.com +44 (0)208 075 0931
Publisher: Justin Lawson justinlawson@blackknightmedialtd.com +44 (0)208 075 0929
Office Manager: Chelsea Bowles accounts@blackknightmedialtd.com
Published by Black Knight Media Ltd Copyright © 2018 All rights reserved
4
>Bank Fees >Data Entry >Currency Risk IP firms waste thousands in bank fees and currency costs IP firms lose many thousands of dollars each year paying and being paid by their foreign agents, and up to a third of their annual revenue is tied up in unpaid bills. Billtrader solves these age-old problems by:
Paying you instantly We give you instant credit for any bill you’re owed. You can use that credit to pay any foreign agent’s bill, thus freeing up your cash.
Cutting bank fees We have bank accounts around the world, so we pay locally, without bank fees for you or your agents.
Reducing staff costs We automate the process of paying your foreign agents, reducing the need for low-level data entry staff. Lower staff costs mean higher firm profits.
Get in touch with us at sales@billtrader.com to schedule an obligation-free demo of our innovative platform today.
www.billtrader.com
|
sales@billtrader.com
Session preview: Keeping to well-worn tracks or treading new paths? Olivier Vrins, Chair of the ECTA Anti-Counterfeiting Committee discusses evolving solutions to enforcing unregistered/non-examined rights, ahead of his session on the subject later today As every practitioner knows, enforcing intellectual property rights brings with it a number of questions and considerations: how can I prove entitlement to sue? What claims can I make? Where should I preferably raise them? What are the advantages and disadvantages of sending cease-and-desist letters before initiating a legal action? What are the time constraints regarding the commencement of proceedings? Are there viable alternatives to litigation? How can I prevent further infringements or disputes in the future, in and/or out of court?
In proceedings based upon non-examined rights that benefit from a presumption of validity (like registered community designs), abusive claims are not uncommon and can have far-reaching consequences
Regarding the burden of proof of the merits of the claim, it is a well-settled principle that it lies, as a rule, on the claimant in accordance with the adage ‘actori probatio incumbit’. However, the onus of proving entitlement and the validity or existence of the rights upon which the action relies is not always dealt with in the same way for registered and unregistered rights. Moreover, as far as registered rights are concerned, one can wonder whether some distinction should not be made, regarding the burden of proof of (in)validity, between rights that have been examined prior to registration and those that have not. For example, it is a well-established principle that, in the framework of infringement proceedings, the EU trade mark courts and community design courts must treat EU trade marks and community designs, respectively, as valid, unless their validity is put in issue by 6
the defendant with a counterclaim for revocation or for a declaration of invalidity (Article 127(1) EU Trade Mark Regulation; Article 85(1) Community Design Regulation (CDR)). By contrast, for unregistered community designs, the courts are supposed to treat the design as valid only if the rights holder produces proof that the conditions laid down in Article 11 CDR have been met and indicates what constitutes the design’s individual character (Article 85(2) CDR; CJEU’s judgment in case C-345/13). Whether such a difference of treatment between registered and unregistered community designs is objectively justified is questionable, bearing in mind that registered community designs are granted without any prior substantive examination of the validity requirements. In proceedings based upon non-examined rights that benefit from a presumption of validity (like registered community designs), abusive claims are not uncommon and can have far-reaching consequences, especially in preliminary proceedings in which counterclaims for revocation cannot be filed and the courts are sometimes reluctant to carry out even a limited assessment of the right’s prima facie validity. Admittedly, however, to get rid of the presumption of validity attached to registered community designs would de facto reduce the community design registration system to some kind of digital deposit system, whose added-value would in essence be limited to providing a time stamp. In the context of the review of EU design law, it would thus seem preferable to keep the presumption of validity for registered designs, but to ‘back’ it by, at least, some limited examination of the novelty requirement (or by the release of a novelty search report), before registrations are granted. As long as the law remains as it is, questions arise: is the presumption of validity consistent with the ‘equality of arms’ principle; and what defences can the defendant raise to battle on an equal footing with the plaintiff? As far as copyright is concerned, while the plaintiff might be able to rely on a
presumption of ownership (Article 5 of the Infosoc Directive; Article 15 of the Berne Convention), they bear the onus of proving that the work on which they rely is original (and therefore enjoys copyright protection) and that the copyright is being, has been or is about to be infringed. In this framework, proof of the date of creation is often key. The threshold of evidence required may also differ depending on whether the claim is made in proceedings on the merits (‘main action’) or in preliminary proceedings, ex parte or inter partes.
Session name: “Keeping to well-worn tracks or treading new paths? Strategies for enforcing unregistered/non-examined rights” - 3rd Session: Strategies for enforcing unregistered / no examined rights Time: 15.45 - 17.30 Panellists: Moderator: Olivier Vrins, Chair of the ECTA Anti-Counterfeiting Committee, ECTA Council member, Member of the ECTA GI Committee, Altius, BE Designs, Peter Schramm, Chair of the ECTA Design Committee, Meyerlustenberger Lachenal Rechtsanwälte, CH Copyrights, Chris Hoole, Member of the ECTA Copyright and EUIPO-Link Committees, Appleyard Lees, UK Unregistered trade mark rights incl passing off and get up/marketing law, Frank Jørgensen, ECTA Council member and Member of the ECTA AntiCounterfeiting Committee, NJORD Law Firm, DK Blockchain – digital tool to register, monetize and enforce unregistered rights, Olivia Klimis, Member of the ECTA Copyright Committee, Klimis Law, FR / BE
continued from front cover UK seniority recorded on the corresponding EU application will be recognised.
Today’s session will address those and other related issues. The evidential rules on entitlement or ownership, the threshold of evidence required to prove originality or individual character and infringement, both in substantive proceedings and in preliminary proceedings, will be examined. The panel of speakers will consider what can be done to strengthen the plaintiffs’ position in litigation relating to unregistered or unexamined rights: to what extent should the possibility of forum shopping be taken into account? Is it appropriate to record creations and ownership of the works through digital envelopes or other deposit systems? The pros and cons of alternative enforcement strategies compared with court proceedings, such as notice and takedown procedures, as well as practical tips to reduce the chances of infringements (including, amongst others, Google Image searches or other reverse image search tools), will also be examined. Peter Schramm will focus on the enforcement of designs, Chris Hoole on copyright, Frank Jorgensen on unregistered trade marks, unfair competition and passing-off. Finally, Olivia Klimis will discuss the implications and effectiveness of blockchain in the registration, monetisation and enforcement of unregistered rights. I am sure you have got the point by now: if you want to know everything on how best to enforce unregistered or non-examined rights, you should attend this session. There is no need to register!
Olivier Vrins Chair of the Anti-Counterfeiting Committee ECTA
Nothing has been said about oppositions, but the notes state that: “Provision will be made regarding the status of legal disputes involving EU trade marks or registered community designs which are ongoing before the UK courts.”
All unregistered community designs, which exist at the point [of Brexit] will continue to be protected and enforceable in the UK for the remaining period of protection of the right
All unregistered community designs, which exist at the point that the UK leaves the EU, will continue to be protected and enforceable in the UK for the remaining period of protection of the right. In addition the UK will create a new unregistered design right in UK law which mirrors the characteristics of the unregistered community design. This means that designs disclosed after the UK exits the EU will also be protected in the UK under the current terms of the unregistered community design. This new right will be known as the supplementary unregistered design right. Until now, it has been sufficient to supply an address for service from anywhere in the European Economic Area and legal professional privilege is given in the UK to communications between registered IP representatives and their clients, which also extends in relevant matters to those IP representatives who are on the ‘list of representatives’ for the EUIPO. After the UK leaves the EU, it is expected there will be no immediate changes to the UK address for service and privilege rules. Despite the political uncertainty, we should still enjoy the UK. Edinburgh itself is a captivating city full of historical wonders. You’ll find all the attractions, restaurants and nightlife you might wish. The city has everything from fine dining to ‘pub grub’. Among a number of international cuisines, you’ll find
authentic Scottish dishes. But be warned— the best restaurants are generally fully booked. Our personal favourites in the city centre include Stac Polly (Dublin Street), The Witchery by The Castle, and Number One, which is located in the lobby of the Balmoral Hotel. Both on and off the Royal Mile there are many late night pubs and clubs. You’ll find pubs serving traditional Scottish ales and whiskies in the Grassmarket and Victoria Street that joins the Grassmarket to George IV Bridge is well worth a visit.
We have thoroughly enjoyed helping to put this event together and look forward to meeting up with many of you during the course of the week
Many clubs will stay open until 3am and you’ll find a wide range of musical tastes catered for from rock to drum and bass to jazz to electro. The Hive Club on Niddry Street is very popular with students and has dance floors and bar areas. You might also consider El Barrio, a Latin themed bar, grill and dance club located in the New Town on Rose Street. The Auld Hoose (St. Leonards Street) claims to be Edinburgh’s only alternative pub with a jukebox that covers punk, goth and metal music and an impressive selection of malt whisky, ales, and food. Henry’s Cellar Bar (Morrison Street) describes itself as an intimate basement bar hosting live music, and other arts events, open until 3am Friday and Saturday. Greyfriars Bobby’s Bar (Candlemaker Row) is one of the most photographed pubs in Scotland and is just round the corner from the National Museum of Scotland. The famous statue of the ‘wee terrier dug’ (the small terrier dog) is just outside the pub. Please DO NOT rub any more bronze from Bobby’s nose! We have thoroughly enjoyed helping to put this event together and look forward to meeting up with many of you during the course of the week. 7
Updates on Chinese trade mark law Lei Zhao of Unitalen gives an update on Chinese trade mark law as it stands in 2019
Background In recent years, with the in-depth implementation of the trade mark and brand strategy and the continuous promotion of the reform of trade mark registration facilitation, the number of trade mark applications in China has been growing continuously. China has held the top rank in new trade mark applications in the world for many years. In 2018, 7.3 million trade mark applications were unbelievably filed nationwide with an increase of 1.4 million over 2017 and a growth rate of 23.72 percent. At the same time, many malicious ‘free-ride’ applications and a large number of hoarded trade mark for transfer also appeared, which severely disrupted the market’s economic order and the trade mark management order, caused social backlash and resulted in a call for regulation.
source, so that the trade mark application system can return to its original purpose
Basically, “with the purpose of use” is a kind of subjective ideology on the directive, however, how to show the use purpose in the On 23 April 2019, the 10th session of the trade mark applications is unclear at this mostanding committee of the 13th Chinese ment. Some think applicants need to provide National People’s Congress adopted a de- evidence for use or show the intent to use in cision to amend the Trade Mark Law of the future new trade mark applications. Some People’s Republic of China. even think defensive applications of famous brands, such as full-class applications, will be There are many highlights in this revision, simply rejected in the non-used classes. which have also attracted the attention and discussion of relevant practitioners and brand Second, the trade mark agency shall be owners. The changes involve six articles and standardised, adding that “trade mark agency will take effect on 1 November 2019. The shall not accept the entrustment if the trade National Intellectual Property Administration mark agency knows or should know that the will study and draft relevant laws and supple- entrusting party has engaged in malicious apmentary regulations and departmental regu- plication” in paragraph 3 of Article 19. lations as soon as possible to fully ensure the smooth implementation of the revised Trade At present, majority trade mark agencies in Mark Law. the market are very professional, however, there are some agencies which assist and Change one: strengthen the regula- were even directly engaged in malicious aption against bad faith applications plication, hoarding trade mark applications.
and bad faith litigations
As for malicious ‘free-ride’ applications, the current law is relatively clear, and in recent years, the crackdown has been very strong, so that this kind of behavior has been effectively contained. However, in terms of the regulation against hoarding registration behavior, there are currently only provisions in principle in the law, and no direct, clear and operable provisions, leading to insufficient crackdowns in practice. This amendment aims to stop the malicious applications at the 8
First, enhance obligation to use trade mark, adding a new provision “bad faith applications without use purpose, shall be rejected” in paragraph 1 of Article 4. This new provision could even be applied in the very early examination stage by the Chinese Trade Mark Office (CTMO) and could be used in opposition and invalidation actions as a reasonable ground by the CTMO and any parties including brand owners.
Some agencies set up affiliated companies in the field unrelated to the business which filed a large number of trade mark applications for sale. Some use their professional knowledge to maliciously file application for the trade mark of customers, ask for high transfer fees. Those have caused a bad impact on society. Under the new amendment, the trade mark agency shall not accept entrustment for bad faith applications, otherwise, the trade mark agency will be punished.
Third, enhance the punishment against bad by the trade mark agency which violate the faith applications and bad faith litigations. above provisions. Pursuant to paragraph 4 of Article 68, those At the same time, it stipulates that any organisation or individual that finds any abnormal trade mark applications may provide clues to help the CNIPA to identify and punish the violator.
manufacture the counterfeits. Counterfeit goods may not enter into commercial channels after only removing trade marks.
In recent years, China has been advocating to strengthen the protection of IP rights, imwho apply for trade mark applications in bad prove the system of punitive damages of IP faith shall be given administrative penalties infringement. In judicial practice, such as the such as warning or fine according to the cir- Beijing IP Court, it has been gradually enhanccumstances. Where a trade mark lawsuit is ing the damages for infringement of IP rights. brought in bad faith, the People’s Court shall We could see few millions and more than ten punish it according to law. millions of damages for patent cases.
The overall aim of this amendment is mainly to strengthen the protection of IP rights, hit bad faith trade mark application behavior without the real purpose of use, improve remedy system against the bad faith application and bad faith litigation, and increase the damages for the trade mark infringement, especially willful trade mark infringement in bad faith.
The low amount of damage for infringement has greatly dampened the enthusiasm of intellectual property right owners
As introduced, these kind of bad faith applications will hopefully be directly rejected in the first pass of examination, but rejection is still far from enough because of abuse of trade mark rights. Bad faith litigation is not only detrimental to the alleged enterprises, but also will be a waste of judicial resources, does not comply with the legislation purpose for trade mark protection. Therefore, it is necessary to increase the provisions of punishment, which could give bad faith applications and bad faith litigations a real blow.
The above measures to take destruction and prohibition of access to commercial channels greatly increases the illegal cost of the counterfeiters and forms an effective deterrent to them. At the same time, the added provision The regulation is now closed for public com- makes the protection of trade mark rights ment, and will be improved according to feed- more comprehensive. back, so as to implement the revised content of the new Trade Mark Law. In recent years officials and heads from all different levels of courts, CNIPA and other deMajor change two: strengthen the en- partments have been implementing and emforcement and raise possible damag- phasising the system of punitive damages for es for brand owners IP to effectively curb IP rights infringement.
On trade mark side, it is rare to see more than a few millions and even ten millions of damage, which mostly ranges from more than tens of thousands to less than one million, which is far less than the profit of the infringing party.
Therefore, the illegal cost will be significantly increased. It can be predicted that the cost of IP rights infringement will be higher and higher in the future.
For those who violate IP rights in bad faith, The low amount of damage for infringement they may be punished until they lose all their has greatly dampened the enthusiasm of in- money and have ‘nowhere to continue’. This tellectual property right owners. is also good news for honest and trustworthy operators in China. Therefore, higher level for punitive damages needs to be introduced to substantially Therefore, it will undoubtedly be more and Fourth, as a supporting measure for the re- raise the cost of breaking the law and make more meaningful for operators to actively vision of the trade mark law, the Chinese infringers pay a heavy price. In order to fur- design and build their own IP rights protecNational IP Administration (CNIPA) is study- ther aggravate the infringement cost, punish tion system, timely and effectively detect ing and drafting a departmental regulation, infringers in bad faith, strictly protect trade infringements and vigorously take rights the “Regulation for Standardising the Trade mark rights, and award more adequate com- protection actions. Mark Application Behavior”, which will be pensation to the legitimate brand owners. operating level of refinement, the content of the law to modify the specific behavior of bad More specifically, for the statutory damage, it faith applications and hoarding trade marks is raised from 3 million to 5 million RMB. For and possible punishment measures. For in- willful infringement, it could be punitive, and stance, very obvious large number of trade it is raised from one time but not more than mark applications beyond a reasonable limit three times to the one time but not more and repeated applications based on improp- than five times. er purpose will be listed. The new trade mark law also provides that, in In addition to the possible rejection in ex- the trial of a trade mark infringement litigaamination, opposition and invalidation, tion, the People’s Court may, at the request CNIPA also will use the credit record, indus- of the right holder, order the destruction of try self-discipline measures. And if the cir- the commodities that bear a registered trade Lei Zhao Partner cumstances are serious, the CNIPA could mark which owned by brand owners and the Unitalen stop accepting applications represented materials and tools that are mainly used to 10
Hills and valleys to conquer ECTA Past President Mireia Currell analyses the unique challenges that rights holders in the sports industries face In 2019, what challenges do rights holders in the sports industries face? The rise in the popularity of sports, added to globalisation and new technologies, means a rise in a number of challenges. The sports industry is faced with the challenge of trying to design new strategies to capture its audience. The rise of technology has made it exponentially easier to view sporting events from the comfort of home, on your mobile or tablet, that is not only on TV but also through mobile applications. More and more consumers wish to view sporting events on-the-go streamed on their mobile devices. One of the challenges is to capture these consumers.
A correct protection of IP rights is key to face piracy and counterfeiting problems
In what ways can IP benefit sport? WIPO director general Francis Gurry once said that Intellectual property “underpins the many commercial relationships that exist in the world of sport, and offers enormous potential as a driver of economic development”. An important part of the economic value of sports is linked to IP rights. We are talking about copyright, trade marks, designs, advertising and image, and media rights. In the effective enforcement of these rights lies an important part of the health of the sport
There is also the challenge of facing counterfeits. It happens in any successful area of trade and so does in sports. The putting into place of the right enforcement mechanisms, with tools that can be used with fast results is very important. When we talk about sports events if the solutions arrive when they are over, they are pointless. Another challenge is descriptive use versus trade mark protection. Monopoly versus freedom. Where the limits should be? Finally, ambush marketing is also a problem to tackle. 12
Without a good protection of IP the risks for all the stakeholders in the sports world are tremendous. Sponsorships can create a win-win situation both for the franchise and their partners, but there are also risks that should be avoided and this is possible through the signature of contracts that clearly delimit who is entitled to do what and which are the red lines not to trespass. Merchandising cannot be made without a good protection of trade marks, designs
economy and of the economy at large.
and copyright.
A correct protection of IP rights is key to face piracy and counterfeiting problems. Also, the implementation of the correct procedures -civil and/or criminal- is of the essence for an effective enforcement of these rights. Unfair competition is also a tool when addressing ambush marketing situations.
Media rights partnership also help to drive growth and to continue expanding the reach of sports events and the popularity of the brands of the teams. The correct agreements must be put in place taking into account technological issues.
Problems in brand protection often appear in respect of signs which are not considered distinctive according to trade mark law. Are they ownable? Slogans are very much the example in this regard. Which is more troublesome in the current IP climate—counterfeiting or piracy?
All in all, the danger of piracy increases in the digital age.
How open are sports teams and tournaments to embracing and protecting IP?
Both generate trouble to the organisations of sports events, clubs, sponsors and holders of IP rights in general.The value of piracy conflicts is higher: it has a bigger effect in terms of figures because of the amounts involved in media rights agreements.
The impact of the marketing activities must be measured once a good strategy to protect IP rights is designed. This being said, branding is critical for sport teams: fans must love the brand of their team, mobilise the followers to fill the stadiums and drive merchandise sales. But branding for sports is more challenging than in other areas. It is influenced by the strong personalities of the players, coaches, clubs and sports organisations. Also, sponsors are increasingly demanding a better integration with the sports organisation’s brand and be part of the event.
The online space is saturated with content providers, so issues of tackling piracy and protection of content are there. However, counterfeiting has a more negative effect on consumers. It has a stronger social impact, because it has a clear negative impact on economic growth, including job losses. For clubs counterfeiting is a major problem they must face and fight. This does not mean that piracy does not affect them. It does and when sports organisations tackle piracy issues it is also to protect the IP rights of the clubs.
Mireia Currell Past President ECTA
COUNTRY HEADING
2019 GLOBAL IP DIRECTORY
Debunking online disclosure Wednesday (26 June) saw ECTA Annual Conference attendees furthering their understandings on the ability to construct evidence based on disclosure on the internet.
Photos from ECTA’s Committee Meetings (26th June 2019)
In the Sidlaw Auditorium at 2:30pm was the first of many engaging workshops, which was, according to workshop moderator and ECTA Past President Luis-Alfonso Durán, “dedicated to how IP practitioners have to adapt to new horizons”. In a packed auditorium, world-renowned IP professionals gave enlightening advice on the best practices for dealing with disclosure in the digital world. According to Durán, most disclosures take place on the internet, with emails or social media being emphasised by speakers as common sources of disclosure. Speakers on the workshop’s panel emphasised the importance of internet evidence in trademark cases Sergio Rizzo, Member of the ECTA Design and EUIPO-Link Committees, as well as ECTA’s representative in CP10, explained that uploading of files to file-sharing services can be seen as an act of disclosure. He also warned that submitting online evidence via a screenshot can reveal multiple dates or designs. He emphasised to attendees that it must be clear in the evidence submitted from the screenshot what the date is and represents. Rizzo stated that the rules applying to disclosure online can still apply to apps. He said that the reliability of information obtained via the internet is assumed, unless otherwise. Giving a US perspective, Robert Sacoff of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson explained that online disclosure rules in the US have “evolved like most of us in life and the law”. He explained how the US Court of Appeals for the Federal Circuit operates a model order on e-discovery for patent cases, but added that its use is not just limited to patents. One notable example was mentioned by Sacoff, whereby Wikipedia images were manipulated to feature the North Face brand logos. The beautiful Isle of Skye in Northern Scotland was one of those manipulated by the company. 14
Kristóf Váczi Photography
15
Deep fakes: ‘a whole new nightmare’ Deep fakes and manipulated photos are “a whole new nightmare” for courts and society according to Robert Sacoff, partner at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson. During a Workshop on constructing evidence based on disclosure on the internet at ECTA’s 2019 Annual Conference, Sacoff explained examples of online content manipulation to the audience and why they should all be aware of it. Deep fakes are online videos that have been manipulated to feature another person’s face. Various deep fakes have been posted online showing celebrities in pornographic films by posting their faces on the videos. There are currently no laws governing the use of deep fakes from an intellectual property perspective, nor has there been any legislation regarding deep fakes and privacy concerns. This means that somebody could effectively use a celebrity or public figure—perhaps UK Prime Minister Theresa May—to market a product, without their consent. Sacoff said that deep fakes “produce new challenges for this workshop” and warned that they are “a whole new nightmare that the courts and society are going to have to deal with”. 16
Members of Honour New ECTA Member of Honour João Pereira Da Cruz gives his views on the association. What is special about ECTA? ECTA is, shall I say, another child of mine, such is the fondness that I have for this association. ECTA is almost 40 years old and I have been closely involved with the association since 1986, when Portugal joined what is now the EU. I was co-opted to the ECTA Council— which at the time had only 12 countries represented—that year, and I remained a member until very recently. I have been a member and chairman of the Professional Affairs Committee and the Law Committee, I am currently a member of the Membership and Disciplinary Committees, and I was also chair of the OHIM Link Committee, (now known as the EUIPO Link Committee), and President of our association from 1996 to 1998. I am also a member of the Advisory Committee.
which made it possible to discuss and decide on a wide range of issues, many of which now form part of the EUIPO Guidelines. All this was possible due to the extraordinarily good name of ECTA with the European authorities, as an association with solid credentials in the field of intellectual property known for its independent and upright stance, composed of members with great professional careers. All these factors, together with incredible atmosphere among the Committees and at international meetings, make ECTA a very special association, with the particularity of being the first European association totally devoted to the study of trade mark and design matters. What is the most rewarding thing about being an ECTA member? As well as the fact that being a member of ECTA is a reward in itself, it is a privileged way of contacting with high-level people in the world of IP, while at the same time making many friends.
The years preceding the implementation of the first Trade Mark Harmonisation Directive and the approval of the Community Trade Mark Regulation were exciting years during which ECTA played an extremely important role in the study and preparation of these documents. Later, our relationship with the EUIPO was greatly strengthened with the creation of the EUIPO Link Committee,
João Pereira Da Cruz Member of Honour and Past President ECTA
17
Agenda
08.00-18.30
Registration and Information Desk Strathblane Hall, EICC
09.05-09.25
Annual General Meeting (by invitation only)
09.05-09.25
Welcome Sozos-Christos Theodoulou, ECTA President, The Law Offices of Dr. Christos A. Theodoulou LLC, CY Natasha Chick, Divisional Director Tribunals, Trade Marks and Designs, IPO, UK Eric Ramage, Local Organising Committee, ECTA Council member, UK Maggie Ramage, Local Organising Committee, Vice-Chair of the ECTA Membership & Disciplinary Committee, Edwin Coe, UK Keith Havelock, Local Organising Committee, Past ECTA Secretary General, UK Anette Rasmussen, ECTA First Vice-President, Awa Denmark A/S, DK
09.30-11.10
Latest IP News and Trends Moderator: Mladen Vukmir, ECTA Second Vice-President, Vukmir & Associates, HR An Interview with the new EUIPO Executive Director, Christian Archambeau, Executive Director, EUIPO, ES The Hague System, Gregoire Bisson, Director, The Hague Registry, Brands and Designs Sector, WIPO, CH
11.10-11.40
Coffee Break - Cromdale Hall, EICC
11.40-13.00
Scenery from a Highland hilltop - 1st Session: Trade marks - new legislation and new practices Moderator: Klaudia Blach-Morysinska, Secretary of the ECTA Law Committee, Zaborski Morysinska, PL Implementing the TM Directive – where does national law differ from regulation and EUIPO practice, Elena Miller, Vice-Chair of the ECTA Harmonization Committee, Bojinov & Bojinov, BG Industry view on new rights – are they being used / specific challenges/experience so far?, Nastassia Saint-Severin, Member of the ECTA Internet Committee, Procter & Gamble International Operations SA, CH Update on the new types of marks including names of plant varieties, Dimitris Botis, Deputy Director, ICLAD, EUIPO, ES Colour marks and the undefined association of colours, Dr. Andreas Renck, ECTA member, Hogan Lovells, ES
13.00-14.30
Lunch - Cromdale Hall, EICC
14.30-15.30
Emerging from the Highland haze - 2nd Session: Brexit - status thus far Moderator & Speaker Fabio Angelini, ECTA Council Member and Vice-Chair of the ECTA Copyright Committee, Of Counsel, BUGNION S.p.A, IT Colin Hulme, ECTA member, Burness Paull LLP, UK Natasha Chick, Divisional Director Tribunals, Trade Marks and Designs, IPO, UK
15.30-15.45
Coffee break - Cromdale Hall, EICC)
15.45-17.30
Keeping to well-worn tracks or treading new paths? - 3rd Session: Strategies for enforcing unregistered / no examined rights Moderator: Olivier Vrins, Chair of the ECTA Anti-Counterfeiting Committee, ECTA Council member, Member of the ECTA GI Committee, Altius, BE Designs, Peter Schramm, Chair of the ECTA Design Committee, Meyerlustenberger Lachenal Rechtsanwälte, CH Copyrights, Chris Hoole, Member of the ECTA Copyright and EUIPO-Link Committees, Appleyard Lees, UK Unregistered trade mark rights incl passing off and get up/marketing law, Frank Jørgensen, ECTA Council member and Member of the ECTA Anti-Counterfeiting Committee, NJORD Law Firm, DK Blockchain – digital tool to register, monetize and enforce unregistered rights, Olivia Klimis, Member of the ECTA Copyright Committee, Klimis Law, FR / BE
18.00-19.15
ECTA Committee Chairs meeting - Carrick 2 + 3, EICC (by invitation only)
18
,
Don t gamble with your IP rights
Since 1950, Modiano & Partners provides highly specialized assistance on all facets of Intellectual Property Law, with over 120 Patent-Trademark A�orneys, serving more than 6,000 clients worldwide.
E u ro p e a n Pate nt a n d Tra d e m a r k A�o r n e ys MUNICH
www.modiano.com
MILAN
LUGANO
info@modiano.com
+33 (0) 1 84 17 45 32 contact@ipzen.com www.ipzen.com
Case Management Manage files online
Trademark Management
Track activities
Access your portfolios online
Attach documents
Automatically calculate deadlines
Share Information
Integrate trademark data easily
Integrated Invoicing Generate invoices directly from your files
Domain Name Management Manage your domain names online
Consolidate files into a invoice
Track deadlines
Track payments
Sort domain names by category Check availability online
Deadline Tracking View all deadlines in a snap Select people and delegate task
Watch Services Trademarks Domain names Social media
YOUR IP SOFTWARE SOLUTION IN THE CLOUD