As a business the value you place on your reputation is immense – but are you doing all you can to safeguard your good name and great ideas? We’ve teamed up with The Insider magazine in Manchester, to discover how North West businesses are protecting themselves from copycats, at home and overseas. We’d like to know: are you monitoring misuse and have you ever taken action against an infringement?
Your help will provide us with valuable insight into this area. Click here to fill in our short survey.
China is one of the leading global manufacturing hubs and the fastest growing consumer market in the world. As an operating base, manufacturing for export to other Asian economies, and as a consumer market in its own right, China offers almost unparalleled opportunity for foreign businesses looking to trade.
Chinese businesses are very IP savvy, and clearly see the value in registration and enforcement of their IP rights in China. The numbers are staggering. China received 2.88 million single-class trade mark applications in 2015, an increase of 24% from 2014. 96% of applications were from domestic applicants. Every year, the Chinese authorities oversee hundreds of thousands of administrative trade mark disputes (oppositions, revocations and cancellation actions).
This IP landscape is what UK businesses will face when looking to expand into China. Please click here to read an article in which we explain some important considerations for those looking to trade in China and what to prepare for.
On 27 April 2017, the long-awaited Intellectual Property (Unjustified Threats) Act 2017 received Royal Assent. The Act follows the Law Commission’s recommendations to reform the regime relating to groundless threats of IP infringement proceedings, and has been heralded as long-overdue, particularly in relation to trade marks and designs, following reforms to patent legislation in 2004. Although the provisions of the Act will not take effect immediately, they are expected to enter into force in October 2017. As a result, practitioners and rights owners should be aware of the upcoming changes.
The Act replaces or amends the current groundless threats provisions in the relevant legislation relating to patents, UK and EU trade marks, UK registered designs, UK design rights and Community designs, and introduces several new changes which aim to make it easier for rights owners to enforce their IP rights. In particular, the Act:
The aim of the Act is to update the current framework in response to criticisms that the current legislation is overly complex, inconsistent and uncertain. In particular, the Act seeks to introduce certainty as to what constitutes a threat, therefore encouraging parties to enter into communications and resolve their IP disputes outside of court without fear of an unjustified threats action being brought against them.
For more information about this contact [email protected] or your usual Mathys & Squire contact.
On 6th March 2017 the Indian government introduced new rules governing trade mark registrations.
One of the most interesting developments is the ability to now apply to protect a ‘well-known mark’. Companies can apply (via a form) for their mark to be recognised as ‘well-known’. This should mean that the issuing of opposition proceedings and/or infringement actions moving forward should be simplified and more cost effective.
In order to register a well-known mark, companies must provide evidence to support the claim. It must be proven that the mark is well recognised by the relevant public, and a record of successful enforcement of the mark must be provided. To indicate relevance it will also be important to show the marks’ geographical influence, and the number of potential customers of the goods or services. With sufficient evidence, it is possible to prove fame without the mark being in use in India, as long as it is deemed to be well-known among the relevant public. This is likely to be beneficial to foreign companies who have not yet used their mark in India, but require protection against infringement.
Once a trade mark is granted the status of a ‘well-known’ mark, it can be protected across classes. This one step process will then mean that evidence of use and reputation needn’t be provided every time an action is filed in India, thereby reducing cost and most likely timescales.
If you believe you could support a claim to a well-known mark and often have to enforce your mark in India, this could be a worthwhile exercise to reduce the administrative burden in the future.
Please do get in touch if this is of interest to you.
Successful IP strategy is built on awareness of innovation and astute commercial focus. It is simple, but it does not happen by accident. In this Brexit year, our recommendation to MTA members is this: raise a culture of IP awareness throughout your business so we can turn UK innovation into real commercial leverage.
This survey shows that amongst MTA members there is a wide gulf between the IP culture of the most savvy and those who are less engaged. Market leaders take care to recognise their IP where it arises, and to protect it by registration where it makes commercial sense to do so. Over time, by this approach, their IP strength accumulates.
Failing to capture and protect IP assets represents a loss of immediate value and puts future opportunities at risk. Implementation needs leadership from management, engagement on the shop floor, and understanding at all levels throughout a business. In short, it is cultural.
The gold standard of IP protection in technology business is patent protection. But, what inventions can a business protect? And, what should they protect? The latter question, of course is the more important and its answer needs commercially sensitive decision making on IP investment. Invention spotting needs IP awareness amongst the engineers solving everyday technical problems to meet customer need. Those engineers, and the business as a whole, must also protect confidentiality of those inventions if patent protection is ever to be available.
The routine use of non-disclosure agreements (NDAs) is a starting point, but much more is needed. One respondent in the survey observed that an NDA is “not worth the paper it is written on”. This is not a view we share, but it is true that confidential information requires proper management, and training on the part of those who handle it.
It is now certain that the UK is leaving both the single market and the EU’s customs union. Huge change is coming – economic, regulatory, and logistical. Whatever form that change takes, UK manufacturing must seize the opportunities it brings, and act intelligently to control any new risks. One thing is certain: the world will not become less competitive. Whatever business asset or competitive edge might be available to UK business must be brought to bear.
Creating a culture of IP awareness throughout a business requires careful effort and attention, but costs little in monetary terms. The advantage is that it enables IP issues to be managed early, and in IP the difference in cost between acting early and acting too late may be measured in tens of thousands of pounds.
To read the Executive Summary of the report please click here.
On 5 April 2017, the UK High Court handed down a much anticipated judgment in the Unwired Planet v Huawei FRAND proceedings. The full judgment is not available, as it contains information that is confidential to the parties, however, a public version has been made available and may be accessed here.
The decision considers the interplay between EU competition law and the meaning of fair, reasonable and non-discriminatory (FRAND) licensing in the context of global mobile telephone patents essential to the European Telecommunications Standards Institute’s (“ETSI”) standards. Importantly, the judgment marks the first outside of the German courts to consider the application of the decision of the European Court of Justice in Case C‑170/13 Huawei Technologies Co. Ltd v ZTE Corp, which established principles that a patentee and an implementer should follow in the context of a standard essential patent (“SEP”) dispute.
This judgment will be welcomed by those licensing patents relevant to SEPs, as Mr Justice Birss’ decision (which numbers a striking 166 pages) not only considers whether licence offers are FRAND, but also goes about setting a worldwide FRAND rate.
Following unsuccessful attempts to license consensually a portfolio of patents acquired from Ericsson in 2013, Unwired Planet commenced patent infringement proceedings against Huawei, Samsung and Google in March 2014. Huawei, Samsung and Google counterclaimed against Unwired Planet, challenging the validity and infringement of the patents, and alleging that Unwired Planet’s conduct was not FRAND and was in breach of EU competition law.
The claims against Google and Samsung were settled in May 2015 and July 2016, respectively. However, the claims against Huawei proceeded to trial over the course of seven weeks from November to December 2016. Unwired Planet requested an order stating that the offers it made to Huawei during the course of the proceedings were FRAND, and in the event that Huawei refused to accept a FRAND offer, then it was appropriate for the Court to grant an injunction restraining Huawei from offering infringing products for sale in the UK.
At trial, Huawei argued that Unwired Planet should not be entitled to an injunction. In so doing, Huawei contended that: (i) it was not FRAND for Unwired Planet to require Huawei to enter into a global licence; (ii) that the rates Unwired Planet was seeking were not FRAND; (iii) that, by initiating proceedings against Huawei without making a FRAND offer, Unwired Planet was in breach of the principles laid out in the CJEU’s judgment in Huawei v ZTE; and (iv) that, contrary to Article 102 TFEU, Unwired Planet had abused its dominant position in the market.
In summary, Mr Justice Birss’ found: (a) that it was FRAND for a patent holder to insist on a global licence (and, conversely, that it was not FRAND for a prospective licensee to insist on licensing on a country-by-country basis) where the patent portfolio being licensed was global; (b) that none of the offers made by either party were FRAND (although he then went on to determine the FRAND rate for Unwired Planet’s portfolio); (c) that all of Huawei’s competition law counterclaims should be dismissed (including its argument that Unwired Planet was in breach of the Huawei v ZTE principles, since, in his view, a failure by a patentee to comply with those principles would not mean that an abuse has taken place); and (d) since Huawei had refused to enter into a licence on terms that the Court had determined to be FRAND, and Unwired Planet was not in breach of competition law, that it was appropriate to grant a final injunction against Huawei to restrain infringement of Unwired Planet’s patents in the UK.
Importantly, Mr Justice Birss’ decision confirms that the English Court has jurisdiction to set the terms of a worldwide licence in relation to patents which are essential to ETSI standards. Although the impact of this decision will likely be limited to the specific factors relevant to the circumstances of this case, the decision provides useful guidance for the Courts when assessing FRAND royalty rates.
A further hearing has been scheduled for May 2017, at which the parties will make additional submissions and the final injunction will be considered.
It has been 40 years in the making and it was widely considered that the Unified Patent Court Agreement (UPCA), which builds on the success of the established European Patent Organisation and aims to simplify and streamline patent enforcement across Europe, was on the verge of realisation. The Agreement has overcome many obstacles over the past 5 years, from actions in the CJEU to challenge its legal validity, to difficult negotiations around issues such as costs, and uncertainty arising from the UK’s Brexit vote, but the decision by Theresa May on 18 April 2017 to call a general election could be the straw that finally breaks the back of the UPCA.
The Agreement requires ratification by the UK before the new pan-European system of patent enforcement can be brought into effect and the Brexit vote on 23 June 2016 was initially considered to have signalled an end for the project, but the UPCA rose again and the UK Government’s announcement in November 2016 that ratification of the Agreement would proceed led to patentees and their advisors around Europe hastening to resurrect plans to develop new patent strategies under the UPCA.
Only a small number of fairly minor procedural steps remain outstanding to enable the UK to ratify the UPC Agreement and complete our part in bringing the UPC into effect. However, these steps do require the presence of a government and it seems highly unlikely that there will now be sufficient time to complete the necessary steps before parliament is dissolved on 3 May 2017.
Furthermore, with the UPC Preparatory Committee relying on the UK being ready to ratify in May 2017 in order to establish a number of bodies necessary to prepare for the practical operation of the UPC, even pushing the UK ratification timetable out to June 2017 raises significant questions over whether it will be possible to meet the target start date of 1 December 2017.
In summary, it looks very likely that the UK general election will at the very least further delay the start date of the UPC system, and we now cannot expect it to come into existence before Spring 2018. At worst, the UK election may push the UPC start date back to a time when significant further questions are raised over the viability of this European-conceived project in a post-Brexit Britain.
As soon as we have any further news we will circulate it.
Now that we are in March 2017, most New Year’s resolutions have been forgotten, exercise equipment is starting to build dust in the corners of spare bedrooms across the country and dry January is a distant memory. Businesses may also have had commercial resolutions for 2017, which have already fallen by the wayside.
The best intentions can often be overlooked when budgetary constraints are brought into the picture; one of the most common of these is protecting and maintaining intellectual property rights (IP). This may become more common as the political and economic landscape takes an uncertain turn with Brexit, general elections take place in a number of European countries, and the Trump administration shakes things up on the other side of the Atlantic.
Whilst IP rights, such as trade marks, patents and designs are intangible, they can be invaluable to a business. They encapsulate the brand, ideas and innovation of a business and its employees. In the ‘digital age’ technology is developing and progressing at a dramatic pace; so protecting these ideas is vital. However, these protections may be futile without ensuring there is a strong and well managed brand available to make sure the ideas can be marked in a profitable way.
As we head further into 2017 it is essential that businesses ensure they have some basic IP checks and balances in place. If IP is managed properly and all disputes are handled well, maintaining an IP portfolio can be cost effective and instrumental in the future success of a business.
To read more :
http://datacentrenews.co.uk/2017/03/importance-ip-business/
The Kit-Kat design is iconic and distinctive for chocolate lovers across Europe and the rest of the world, however, is it in the eyes of the law? In 2002 Nestle applied to register the shape of its chocolate bar as an EU trade mark. The registration was later challenged by its major rival, Cadbury, through an application for a declaration of invalidity on the basis that the shape was devoid of distinctive character.
The bad blood between Nestle and Cadbury was likely fuelled by Nestle’s successful opposition to Cadbury’s application to register the colour purple as a trade mark. The dispute has been unending and has extended to the national trade mark applications in the UK and Singapore.
The EUIPO and its Board of Appeal initially dismissed Cadbury’s application for a declaration of invalidity. However, in December 2016 the European General Court annulled that ruling, cancelling Nestle’s trade mark registration. This is despite research indicating that in 10 of the 15 EU countries who were Member States at the time of the application, the chocolate bar had acquired distinctive character, including the UK, Germany, Spain, France and Italy. This covered almost 80% of the EU population at the relevant time.
The parties appear to be exhausting every appeal process available and Nestle has now appealed to the Court of Justice of the European Union, which will now have to consider whether the registration should be cancelled.
This dispute demonstrates how high the threshold is to register a shape as a trade mark. It is likely to become even more difficult and more expensive to achieve in the future, as survey evidence may be required to prove the shape is seen as distinctive by more than 80% of the EU population. This means evidence may be required from countries comprising just 1% of the EU population. This will be especially problematic for future applications by UK businesses following Brexit, as their largest market (the UK) may be excluded from the survey evidence figures.
IP implications of the UK leaving the EU
It is important to note that Mathys & Squire’s ability to represent its clients in the UK or in Europe will not be affected during, or after the Article 50 negotiating period. As a firm, we remain a European business with offices in the UK, Germany and France and we will take all necessary steps to ensure that the services that we provide in respect of EU Trade Marks and Registered Designs remain unaffected.
Wednesday 29 March, the UK delivered to the European Council notice under Article 50 of the Lisbon Treaty of its intention to with draw from the EU.
What does this mean for IP?
EP Patents
Leaving the EU will not affect the UK’s relationship with the European Patent Office (EPO).
The EPO is governed by the European Patent Convention (EPC) and is not an EU institution. There are already several non-EU member states that are members of the EPC, including Switzerland, Norway and Turkey.
The UK will therefore remain a member of the EPC, regardless of its departure from the EU, and patent protection in the UK will still be available by filing a European patent application at the EPO. Our European Patent Attorneys will continue to be able to file and prosecute European patent applications, and handle EPO oppositions and appeals on behalf of all our clients.
EU Trade Marks and Registered Designs
Although the UK’s exit from the EU will have an impact on EU Trade Marks and Registered Designs, the ramifications are not immediately clear. For now, however, the UK is still a Member State of the EU, and all the legislation that gives effect to EU law is still in place and this will remain the case throughout the negotiating period.
Nothing as a matter of law has changed as a result of Article 50 being triggered. Instead, it marks the beginning of the negotiation period with the EU.
In the immediate future, there are unlikely to be any changes to existing rights or to new applications for EU Trade Marks and Registered Designs. However, we will monitor the situation and provide updates as and when we know more.
We will continue to report on any developments, however if you have any questions or concerns please contact your usual Attorney at Mathys & Squire for more information.
To read more on this topic please visit our Brexit hub.
