On 28 March 2018, almost a year to the day since the UK submitted the notification of its intention to withdraw from the European Union, the European Commission published a Notice To Stakeholders regarding the consequences of the withdrawal for the 300,000 .eu domain names currently registered in the UK.
As of the withdrawal date, currently set at 30 March 2019, the UK will become a ‘third country’ and the following rules will apply for .eu domain names:
1. Eligibility
The following will no longer be eligible to register or renew .eu domain names
(i) undertakings and organisations that are established in the United Kingdom but not in the EU; and
(ii) natural persons who reside in the United Kingdom.
2. Revocation
The Registry for .eu domain names will be entitled to revoke domain names on its own initiative if a holder of a domain name no longer fulfils the general eligibility criteria.
3. Rights
Rights recognised or established in the United Kingdom, but not in the 27 Member States of the EU or by the Union can no longer be used as a basis for seeking the revocation of a domain name confusingly similar thereto.
If the above provisions are likely to affect you or your business, and you would like to explore the strategy your business should take, please do contact your Mathys & Squire Attorney.
Join us on Thursday 26th April to celebrate World Intellectual Property Day: ‘Powering Change: Women in innovation and creativity’
In 2000, the World Intellectual Property Organisation (WIPO) designated 26 April as World Intellectual Property Day.
The aim? To increase the general understanding of intellectual property.
World Intellectual Property Day is a unique opportunity for those around the globe to consider and celebrate how intellectual property and innovation drives change and shapes our future.
We will be hosting a drinks reception in our offices in the Shard.
When: Thursday April 26th 2018
Time: 18:00 – 21:00
Where: Mathys & Squire, The Shard, 32 London Bridge Street, SE1 9SG
For canapés, cocktails, cupcakes and more, click to RSVP by Friday 20th April.
For any enquiries, please email [email protected].
On 28 March 2018, the European Commission published a document highlighting the effects of Brexit on UK copyright law.
The notice, which was addressed to the European Commission’s stakeholders, notes that preparing for the UK’s withdrawal from the EU “is not just a matter for EU and national authorities but also for private parties”, and seeks to remind persons concerned of the “legal repercussions” which need to be considered when the UK becomes a country outside of the EU.
In essence, the message of the notice is to highlight that once the UK leaves the EU, EU copyright law will cease to have effect in the UK:
“subject to any transitional arrangement that may be contained in a possible withdrawal agreement, as of the withdrawal date, the EU rules in the field of copyright will no longer apply to the United Kingdom.”
The notice also highlights that once the UK leaves the EU, all EU directives and regulations concerning copyright will cease applying to the UK, and that any relationships between the UK (as a non-EU member) and the EU will be governed by the relevant international agreements to which both are parties, including the World Intellectual Property Organization (WIPO) Copyright Treaty and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
Importantly, the European Commission warns that the international agreements which will govern the relationship between the UK and the EU following Brexit “do not provide for the same type or level of protection in relation to certain rights and where applicable exceptions or limitations to those rights as that set out today in the EU copyright acquis”, and that they also lack “particular cross-border measures for the benefit of rightholders and/or the management of rights”.
The notice highlights several specific consequences that Brexit will have in the field of copyright.
1. Broadcasters
UK-based broadcasters will cease to benefit from the country of origin principle set out in Directive 93/83/EEC concerning satellite broadcasting and cable retransmission.
2. Collective Rights Management (online rights in musical works)
EU collective management organisations (CMOs) will cease to be subject to the obligation to represent CMOs based in the UK for multi-territorial licensing under Directive 2014/26/EU concerning collective rights management.
3. Orphan Works
The mechanism of mutual recognition provided for by Directive 2012/28/EU will no longer apply between the UK and the EU, with the consequence that orphan works which have been recognised in the UK by the withdrawal date will no longer be recognised in the EU and vice versa.
4. Access to published works
UK-based blind, visually impaired or otherwise print-disabled persons will no longer be able to obtain accessible format copies from authorised entities in the EU under the framework provided for by Directive 2017/1564.
5. Online Content Portability
UK residents will no longer benefit from their digital content subscriptions when travelling to the EU; and a provider of online content services established in the UK will need to comply with the rules of the relevant EU Member State or States where it wishes to offer services to its subscribers.
6. Sui generis database rights
UK nationals (unless they have their habitual residence in the EU) and companies/firms formed in accordance with UK law will no longer be entitled to maintain or obtain a sui generis database right (a right existing to recognise investments made in compiling a database) in respect of databases in the EU.
Whilst it is clear from the notice that EU law concerning copyright will no longer apply to the UK following Brexit, the European Commission itself recognises the “considerable uncertainties” surrounding Brexit, in particular concerning the content of a possible withdrawal agreement.
Whether any provision will be made for UK copyright law in any transitional agreement remains to be seen in advance of the withdrawal date of 30 March 2019.
To discuss any of the above further, or to find out more, please contact Daniel Ramos via email: [email protected].
In a ruling by the General Court of the European Union, the EU Registered Design directed to the (in)famous Crocs shoe design has been found invalid following an appeal to Gifi Diffusion’s successful invalidation action.
For an EU Registered Design to be valid, it is required that the design is new and sufficiently different to existing designs.
However, EU Registered Design law allows public self-disclosures of a design to be disregarded from prejudicing the validity of a Registered Design if it was filed within 12 months from the earliest such public self-disclosure. As pointed out by Gifi Diffusion, the Crocs’ design had in fact been disclosed (at least on Crocs’ website and at an exhibition in the US) well before this 12-month self-disclosure “grace period”.
In a further aspect of European Design law, a design can still be considered new over a prior disclosure (no matter when the disclosure took place) if the disclosure could not reasonably have become known to the circles specialised in the sector concerned operating within the EU; this provision effectively allows the most obscure disclosures to be disregarded from prejudicing validity.
Crocs had argued that their earliest self-disclosures were not relevant because of their obscurity; however, the General Court of the European Union was unconvinced by Crocs’ arguments on this point. As a result, the earliest self-disclosures of Crocs’ design were admissible and therefore rendered the EU Registered Design not new.
This decision highlights the paramount importance of seeking registered design protection before any public disclosure of a design, and at the very latest within the self-disclosure grace period that is available in some – but not all – territories. It is also confirmed in this decision that there is a high bar for a disclosure to be disregarded on the grounds of obscurity.
To discuss protecting the IP in your designs, reach out to to our Designs team.
On Monday 19 March 2018, the UK government released an updated Draft Agreement on the withdrawal of the UK and Northern Ireland from the EU and the European Atomic Energy Community. The Draft Agreement was colour coded to represent the level at which the content had been agreed.
As at March 19th, guidelines relating to intellectual property were coloured green meaning they are agreed at the negotiators level but are still subject to technical legal revisions.
Impacts for Trade Marks and Design
If implemented, the proposed guidelines will allow for existing EU registered rights effectively to be transformed into two rights; a continuing EU right and a newly formed UK right. The latter will not be subject to any re-examination in terms of validity and will mirror the subsisting EU right in all aspects (save, of course, for territorial coverage).
Rights owners will be pleased to hear that under the proposed guidelines they are not required to take action in order to effect this change and that it will automatically happen without charge.
For those that may have accrued unregistered design rights in the EU before the end of the transition period, those rights will still be enforceable as such, albeit they will be administered as a UK right subject to the relevant provisions of EU Law.
For applications filed at the EU IPO before the end of the transition period, owners will be given a right to file a corresponding UK application within a prescribed period.
For the full draft text, click here and keep an eye out for further updates on our News and Insights page.
To discuss further, reach out to your attorney.
On Tuesday 13th March 2018, Mathys & Squire Partner, Martin MacLean, and Managing Associate, David Hobson hosted an event at the British Embassy in Copenhagen together with the Danish UK Association and Food Matters Live.
The event focused on means for Danish companies to gain a competitive foothold in the lucrative UK food and beverage market, exploring current trends and regulations, the avoidance of commercial pitfalls, and the commercial advantages provided by appropriate intellectual property protection and due diligence.
Presentations were delivered by Mathys & Squire, UK government (Public Health England), the Department for International Trade, EBS Ltd and Giant Peach, and were well-received by the 50+ industry attendees.
For further information about gaining a competitive edge in the UK food and beverage market click here or please contact David Hobson or Martin MacLean.
On February 26th 2018, Mathys & Squire Partner, Dani Kramer, spoke at the 4th Annual Foreign Law Firms Conference in Tel Aviv, Israel.
Entitled Tomorrow’s Innovation, Today, the conference included panel discussions on topics such as cyber-security, fin-tech, international disputes and AI.
Dani represented the UK in a panel session on intellectual property covering issues such as the implications of Brexit for Israeli firms and the need for Israeli innovators to adopt an international outlook when seeking to protect their innovation and not ignore European and Chinese markets.
With over 400 international attorneys in attendance, the conference is considered the largest international networking event of the year in Israel’s legal market.
To watch the panel in action, please click here. For further questions about our Israeli desk, please contact Dani Kramer.
Most firms take reasonable steps to protect their intellectual property.
Some go with a… tastier approach.
Mathys & Squire Associate, Laura Clews, was interviewed by the host of BBC Radio’s The Food Chain series, Emily Thomas, to discuss trade secrets in the food industry.
Laura’s work in the food technology, chemistry and packaging sectors provided fascinating insight (and the inside scoop) in to just some of the layers of secrecy shrouding the creation of the most common food brands and products.
To hear Laura’s interview on The Food Chain, click here.
For more information about trade secrets and intellectual property in the food industry, contact Laura Clews on [email protected]
On 13 March 2018 the UK deposited its instrument of ratification of the Hague Agreement for Industrial Designs, meaning the UK will shortly join the Hague system for registered designs.
The Hague system provides a centralised process for seeking registered design protection in over 80 countries and therefore provides an efficient way to seek registered design protection in multiple jurisdictions.
The UK’s accession to the Hague Agreement will allow (from 13 June 2018) UK-based applicants to access the Hague system directly – rather than as a Member State of the European Union – even after the UK’s departure from the European Union.
Although the Hague system has historically been relatively underused, several major territories have recently joined including the US, Japan and Russia, giving the Hague system renewed interest.
The Hague system is not however without its pitfalls, not least due to nuances in practices and procedures in many of the Contracting Parties. Care must therefore be taken when using the ever-expanding Hague system.
Please click here to read more, and for any questions about the Hague System please contact your Mathys & Squire attorney.
This year we are delighted to be partnering with Guide Dogs.
The Guide Dogs for the Blind Association is a British charitable organisation founded in 1934. Guide Dogs helps blind and partially sighted people across the UK through the provision of guide dogs, mobility and other rehabilitation services.
We recently held a firm quiz night and were joined by Craig, Dave, his Guide dog Chad – see photos below.
Dave gave a fantastic talk about the life-changing services that Guide Dogs provide to those with sight loss.
Guide Dogs are responsible for 8000 dogs and every penny that is raised will go towards the lifetime cost of a guide dog which is around £55,000.
With over 4,950 guide dog owners in the UK, every little helps.
- £30.00 could help to support a working guide dog partnership for a week
- £60.00 could buy an Off to School Kit for a puppy moving into its first stage of training
For more information about Guide Dogs and the amazing work they do please click here.
