On 13 June 2018, the UK Supreme Court handed down its long-awaited judgment in the Richemont litigation, holding that where rights holders obtain an order for internet service providers (ISPs) to implement a website-blocking order, the rights holders should indemnify the ISPs in respect of the ISPs’ reasonable costs of compliance (Cartier International AG and others (Respondents) v British Telecommunications Plc and another [2018] UKSC 28).
The Supreme Court’s judgment marks the latest and final determination in a series of decisions dating back to 2014, confirming that ISPs may be ordered by the UK Courts to implement website-blocking orders to prevent trade mark infringement.
In the first-instance proceedings, the Claimants (Cartier, Montblanc and Richemont), which design, manufacture and sell luxury goods under the well-known trade marks CARTIER, MONTBLANC, IWC (and other brands), were successful in obtaining an injunction against five of the UK’s leading ISPs (Sky, BT, EE, TalkTalk, and Virgin), requiring the ISPs to block or attempt to block access to specified websites which were advertising and selling counterfeit copies of the Claimants’ goods. This also included various other internet addresses whose purpose was to enable access to such websites. Importantly, the first-instance judge ordered the ISPs to pay the costs of the proceedings, as well as the costs for implementing the website-blocking orders.
This was a landmark decision, as it was the first time that the UK Courts had held that a website-blocking order may be used to prevent trade mark infringement, and such relief had only previously been granted by the courts in order to prevent copyright infringement.
The first-instance decision was reaffirmed in a further action between the parties, and confirmed by the Court of Appeal in 2016. Two of the five ISPs then appealed to the Supreme Court with respect to the order to pay for the costs of the proceedings and for implementing the website-blocking orders.
The Supreme Court has now unanimously confirmed that, where rights holders obtain an order that ISPs should block access to certain websites, the rights holders should indemnify the ISPs in respect of the ISPs’ costs of compliance with the order. As regards the costs of the litigation, the Supreme Court found that the judge at first-instance had been entitled to award costs against the ISPs as, somewhat unusually, the ISPs had made the litigation a test case and had strenuously resisted the application.
The Supreme Court’s decision will come as a disappointment to brand owners, as the costs of indemnifying ISPs for the costs of implementing blocking orders are likely to be high. However, the Supreme Court’s decision does not change the fact that brand owners now have at their disposal an important tool with which to tackle effectively the online sale of counterfeit goods.
Whether the Supreme Court’s latest decision will impact blocking orders sought for reasons other than the prevention of trade mark infringement remains to be seen. For example, the current case law with respect to cases involving blocking orders for the prevention of copyright infringement establishes that ISPs must pay the costs of implementation of any injunction ordered by the Courts, while rights holders bear the costs of the application. It is too early to assess whether the Supreme Court’s judgment will lead to this principle (and potentially others) being revised for copyright cases, but there is now scope for debate that a similar principle should be applied to blocking orders in respect of other intellectual property rights.
For more information about trade marks or how to protect your brand from the threat of online counterfeit sales, please contact Daniel Ramos or Margaret Arnott.
It’s the 20th World Anti-Counterfeiting Day! Established by the Global Anti-Counterfeiting Network, the day enables the organisation of local, national and regional events under the umbrella of an international campaign focussed on the problems of counterfeiting and piracy.
What is the Global Anti-Counterfeiting Group (GACG) Network?
The GACG is an international network of national and regional IP protection and enforcement organisations who aim to exchange and share best practices, information, and participate in joint activities to solve international IP enforcement challenges.
What is Counterfeiting?
How can I prevent my products from being counterfeited?
The main prevention method many brand owners adopt is educating their consumers on how to spot a potential counterfeit product. Awareness is key in the fight against fakes and most brand owners encourage their consumers to check for the quality and consistency of a product. Many brand owners advise consumers to avoid products with prices that seem uncharacteristically low. Technology brand, Apple inc., lists the exact trade marks they have registered on their website, so that consumers can familiarise themselves with the particular fonts and terms used.
Are there any legal measures in place to prevent this?
Yes! Counterfeiting is illegal and, as such, there are a number of laws in place to help brand owners protect their products. Launched on the 12th September 2013, the UK’s first specialist police unit for intellectual property crime (known as PIPCU) often deals with cases of counterfeiting and forgery. Not only do they offer advice to consumers on avoiding forged products, they also seek to collaborate and liaise with brand owners in order to clamp down on counterfeiting in the UK. Furthermore, customs are given the authority to destroy small arrivals of counterfeit goods (up to 3 items or less than 2kg in weight) without seeking the brand owner’s permission. Although brand owners can opt out of this scheme, it can prove very useful for those who struggle to keep track of small consignments of counterfeit goods entering the country.
What should I do if someone has counterfeited my products?
While preventative methods can strongly limit forgeries, it is also important to have a set of systems in place in case counterfeit products are still being sold. We can assist you in setting up strategic solutions for tackling these issues. Having trade marks registered and recorded with local customs offices is vital in this respect. Once proven that you have a legitimate claim that your products have been counterfeited, you may be eligible to conduct raids in collaboration with local authorities and seize fake products. We can advise you in filing civil actions against those responsible.
For queries or advice about counterfeiting and protecting your brand, please contact Mathys and Squire Managing Associate, Laura West, via [email protected].
The European Commission has recently published draft proposals for the introduction of a manufacturing exemption for export purposes during the term of an SPC.
The current SPC regulations prohibit the manufacture of a product covered by an SPC for any purpose. This means that EU-based manufacturers are not able to export generics and biosimilars to non-EU countries during the SPC term, nor place generics and biosimilars on the EU market immediately following expiry of the SPC term (‘day-1’ entry).
This is believed to place EU-based manufacturers at a competitive disadvantage as compared to manufactures outside the EU.
The proposed legislation is intended to address these problems by introducing an exemption from infringement for “making [a product] for the exclusive purpose of export to third countries” and “any related act that is strictly necessary for that making or for the actual export itself” during the term of the SPC. Interestingly, the proposed legislation has not provided an exemption for manufacturing in preparation for day-1 entry and, as such, is not as wide-ranging as it could have been.
The proposals also include measures which promote transparency and safeguard SPC holders from their product being diverted onto the EU market including the setting up of a public register which holds information on manufacturers making use of the exemption, a requirement to label the exported products, and a requirement that any contractors with which a manufacturer works be made aware of the manufacturing exemption and its limitations.
The manufacturing exception will only apply to SPCs that have not yet granted, with transitional provisions applied for SPC applications already pending on the (yet to be determined) date of entry into force of the new regulations.
The European Commission hope that the exemption will provide opportunities for growth and jobs within the EU, particularly with the first generation of blockbuster biologics coming off patent in the next few years.
For queries or advice about SPCs, please contact James Wilding via [email protected]
Businesses invest a large amount of time and money in developing and marketing a product or service, and understandably want the public to recognise it as being theirs and theirs alone.
Trade marks allow a person or business to indicate the origin of their goods and/or services, whilst helping to distinguish their business from those of third parties.
FACT – A trade mark can take a number of forms, including words, logos or more unconventional indicators of trade origin such as smells, sounds or even multimedia marks.
Here are our Top Trade Mark Tips highlighting the benefits of protecting your IP!
It secures for the owner exclusive rights in the trade mark in relation to the goods/services for which it is registered.
A trade mark registration entitles the owner to use the ® symbol. This puts third parties on notice that using the mark may constitute an infringement.
It provides the owner with rights and remedies to stop competitors infringing the trade mark, i.e. utilising an identical or similar mark within the same sector. The remedies available include a permanent injunction to stop the infringing use, destruction of the infringing goods and packaging, damages or an account of profits, and payment of legal fees.
It acts as a deterrent to third parties wishing to adopt identical/similar trade marks.
It provides authorities with the required ammunition to bring action against counterfeiters.
It adds value to your business. The wealth of some of the world’s largest and most successful companies lies in their trade marks.
Once registered, the trade mark becomes intangible property and can be licensed, franchised or assigned; thereby potentially generating revenue.
Our trade mark team has a wealth of experience across a number of sectors. The team will be able to help you with everything from registering your trade mark, through to anti-counterfeiting, watching services and maximising the commercial output of your trade mark.
Click for more information about our trade marks services and to meet our trade mark team.
On the 13th-14th June 2018, agri-food researchers across the N8 universities: Durham, Lancaster, Leeds, Liverpool, Manchester, Newcastle, Sheffield and York join leaders in the global food and supply chain ecosystem in Liverpool to connect, collaborate and re-imagine the market places of tomorrow.
The aim?
To inspire, educate and foster the future of a truly sustainable food system.
Anna Gregson, Partner at Mathys and Squire, will be speaking alongside the following to name but a few:
Click for further information about the N8 event People, Health & Food Systems: Challenges & Solutions for 2030.
To find out more about our Agri-Tech and Food sectors explore our site or contact Anna Gregson via [email protected]
The 16th May 2018 saw the new UK Life Sciences Council meet for the first time. The UK Life Sciences Council is a partnership between government and industry, which follows on from the Life Sciences Sector Deal, involving commitments and investments into the UK by 25 global organisations from across the life sciences sector.
The main objectives of the partnership are:
Co-chaired by Business Secretary, Greg Clark, and Health and Social Care Secretary, Jeremy Hunt, the meeting was attended by a range of life sciences industry experts, representing medical devices, biotech and pharmaceuticals.
Discussions unsurprisingly included Brexit, particularly the importance of the supply of medicines, regulatory alignment and the needs of patients. The Government emphasised its commitment to achieving a good outcome for the life sciences sector during the Brexit negotiations, and its desire to continue the UK’s history of innovation in this area. The UK continues to have extremely buoyant health and life sciences sectors, worth over £70 billion to the UK economy and providing jobs for almost 241,000 people across the country.
If you have any questions about life sciences and strategies ahead of Brexit, please contact Managing Associate, Bethanny Gibbs on [email protected].
Bethany has a Master’s degree in Natural Sciences, specialising in Neuroscience, from the University of Cambridge, and is a qualified European Patent Attorney and UK qualified Chartered Patent Attorney. Working alongside Mathys & Squire Partners Monika Rai and David Miller, Bethany is involved in European prosecution, opposition and appeal work in the fields of pharmacology and biotechnology, as well as the provision of freedom-to-operate opinions and associated strategic advice.
Tax, business structuring, patents and intellectual property protection can be a minefield, whether you are setting up a new tech venture or growing and expanding your existing business.
Want to learn more about getting it right from the outset?
Join us for an interactive panel discussion and networking reception on Wednesday 13th June with professional experts and like-minded members of the tech community.
The panel comprises those experienced in working with UK and international tech businesses with regards to tax, business structuring, IP protection and commercialisation.
Tech entrepreneurs Varun Shoor – Founder of Kayako and Norman Shaw – Founder of ExactTrak will also be joining and providing their insights and lessons learned from their start-up journey!
When: Wednesday 13 June 2018
Where: Mathys & Squire, The Shard, 32 London Bridge Street, SE1 9SG
Time: 18:00 registration / 18:30 panel / 19:30 drinks & networking
Remember to bring PHOTO ID.
The European Commission has recently published a notice on the consequences of Brexit on supplementary protection certificates (SPCs) for medicinal and plant protection products.
According to the law on SPCs, the date of the first authorisation to place a medicinal or plant protection product on the market in the European Economic Area is used to calculate the duration of supplementary protection that is available, as well as the deadline for filing an application for an SPC.
The notice confirms, perhaps unsurprisingly, that as of the date of withdrawal of the UK from the EU and subject to any transitional provisions, an authorisation to place a medicinal or plant protection product on the market granted by a UK authority will not be considered a first authorisation for SPC purposes in the EU. Any UK authorisations granted before the withdrawal date will, however, continue to be accepted.
The notice also confirms that, as of the withdrawal date, the EU SPC legislation will no longer apply to the UK. The EU and UK are in the process of agreeing how an application for an SPC in the UK that was submitted before, but is pending at, the withdrawal date should be treated. The EU’s position is that any such applications should, when granted, provide protection comparable to that provided for by EU law.
The UK is currently set to leave the EU on 30 March 2019, although the withdrawal date may be delayed on agreement between the EU and UK. Furthermore, transitional provisions will, quite likely, mean that EU law will continue to apply in the UK beyond the withdrawal date. Whilst the UK has yet to confirm the arrangements for any future domestic SPC regime, it seems likely that it will still be possible to apply for and obtain SPCs in the UK after Brexit.
For queries or advice about SPCs, please contact Mathys & Squire Partner, James Wilding via [email protected]
James’ practice is focused on EPO prosecution and opposition work in the life sciences sector. He also has extensive experience with SPCs and has prosecuted SPC applications covering a number of blockbuster drugs. James has a master’s degree in biochemistry and a doctorate on the biochemistry of heart disease, both from Oxford University.
The Mathys & Squire Litigation team are currently working on an exciting research project to look at organisations’ experience and approach to IP litigation.
We are looking for organisations/individuals that have experience of IP litigation and would be interested in taking part in a short telephone survey.
If you are interested in being involved in this exciting project or have any questions, please email [email protected].
Join Mathys & Squire at London’s Tech Week start-up event – Project Kairos, a dedicated start-up programme which is aimed at connecting startups with industry and investment.
From 12th-14th June our intellectual property attorneys will be at the Excel Centre and ready to answer any questions about intellectual property protection, strategy and key insights to turn start-ups to success stories.
Managing Associate, Andy White, will also be taking part in a panel discussion on 14th June at 12:15. If you want to know more about “Getting your operational ship in shape” we will see you there!
For the full agenda and registration information click here.
Andrew is a European Patent Attorney, a chartered UK Patent Attorney and holds both a Master’s degree and a PhD in physics from the University of Bristol. During the course of his PhD, sponsored by GSK, Andrew gained valuable insights into the world of commercial R&D and published a number of papers, book chapters and spoke at numerous international conferences – a skill which he now uses to give presentations on IP to both students and clients.
