IP Annual Review: Brands, Designs & Copyright

It’s business. But it’s personal.mishcon.com

Welcome to our review of the significant developments in protection and enforcement of brands, designs and copyright in 2017. Key themes last year included the proper boundaries of what is registrable as a brand, and the ongoing need to ensure that IP law keeps up with technological developments.

In 2018, we will hear the Supreme Court’s views on the question of who should pay to implement website blocking orders against sites selling counterfeit products: the brand owners or the ISPs. We should also receive some much-needed clarity from the Government as to the treatment of unitary IP rights post-Brexit. Whilst the EUIPO and Commission has issued a ‘doomsday notice’ stating that EUTMs and designs will no longer extend to the UK post-Brexit, we anticipate a system will be put in place by the UK Government to preserve those rights. However, details on the exact model are yet to be agreed, and rights holders will be watching the ongoing discussions very closely.

If you would like to discuss any of the issues discussed, please get in touch with your usual contact. We hope you enjoy reading the Review.

Jeremy HertzogPartnerT +44 20 3321 7264E jeremy.hertzog@mishcon.com

Introduction

Trade Marks

Non-traditional marks Issues over non-traditional marks were hotly debated in 2017. Whilst the EU trade mark reform package paved the way for certain new types of marks to be registrable, issues continue to arise, in particular, in relation to the protection of shapes and packaging.

KitKat – Court of Appeal sets high bar for acquired distinctivenessMost people in the UK would recognise the KitKat shape. Yet, in the long-running dispute between Nestlé and Cadbury, the Court of Appeal decided that the shape of Nestlé’s four-finger chocolate bar does not have the necessary acquired distinctiveness to qualify for protection as a UK trade mark. The decision demonstrates how high the hurdles are for those seeking to establish distinctiveness in relation to inherently non-distinctive marks, such as the shapes of products and packaging. In the decision, the Court of Appeal stressed the significant distinction between recognition and association on the one hand (which is not enough), and perception as to exclusive origin on the other.

Nestlé had relied upon a survey which indicated that, when shown a picture of the product, and asked questions relating to source, at least half the respondents gave answers to the effect of “It’s a KitKat”. Whilst many might understandably consider this sufficient to demonstrate that the shape had acquired distinctiveness, the Court of Appeal decided that this evidence only demonstrated that consumers recognised and associated the shape with KitKat - and therefore with Nestlé - but no more than that. It did not satisfy the proper test to be applied, which had been laid down by the European Court of Justice (CJEU), namely whether consumers would perceive the shape as originating from a particular undertaking, and not from others.

Establishing the relevant perception in each case will depend upon how the mark has been used. Businesses need to consider very carefully the use they make of a particular mark - such as a shape - in order to promote a product. This will put them in a position to compile the necessary evidence to demonstrate that the shape qualifies for trade mark protection through acquired distinctiveness, including in any survey evidence.

Read more.

London black cab shape trade marks lack distinctive characterIn a trade mark infringement dispute between LTC (the makers of London’s iconic black cab) and the makers of the forthcoming hybrid electric taxi, the Metrocab, the Court of Appeal decided that the features of the shape of the London cab (such as the slope of the windscreen, the deep/high bonnet and the extended front grille) did not depart significantly from the norms of the car sector. As a result, LTC’s trade marks were cancelled as the shape marks lack inherent distinctive character.

Applying the test laid down in KitKat, the marks also lacked acquired distinctiveness - adverts on flip-up seats in the cabs advertising the name of the manufacturer were not enough to educate the consumer that the shape of the taxi indicated its origin. There must be evidence from which it can be deduced that a consumer understands there is only one manufacturer of products of that shape.

It remains to be seen whether the Supreme Court will grapple with some of these issues relating to distinctiveness.

Read more.

Protection of colour combination marks Colour combination marks also faced difficulties in 2017, and it is not yet apparent whether things will be more straightforward under the EUTM reform package.

In November 2017, the EU General Court decided that Red Bull’s well-known blue/grey colour combination was insufficiently precise to be validly registered as a trade mark. Subject to any appeal by Red Bull to the CJEU, the decision was a blow for brand owners, setting the test for registrability of two-colour marks very high. Indeed, the effect of the decision seems to be that colour marks comprising colour combinations are harder to register than those of single colours.

Red Bull’s two trade mark applications included the following descriptions:

‘Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%’.

‘The two colours will be applied in equal proportion and juxtaposed to each other’ (this wording was adopted following correspondence with the examiner).

The General Court decided that the combination of the representation with either description did not enable the sign to be precisely identified. Each description enabled some degree of ambiguity; the mere juxtaposition of colours, without shape or contour, did not exhibit precision and uniformity. Customers would be unable to use the mark as a badge of origin, and competitors would lack legal certainty as to the scope of protection provided by it.

Read more.

Meanwhile, in a dispute between Glaxo and Sandoz, the Court of Appeal decided that Glaxo’s colour trade mark registration for its Seretide inhaler was invalid because it lacked the clarity, intelligibility, precision, specificity and accessibility required. The public, looking at the trade mark on the register would be in a position of ‘complete uncertainty’ as to what the protected sign actually was. The decision demonstrates the difficulties in filing colour combination trade marks but it also serves as a reminder of the potential value in passing off claims in enforcing trade mark rights in a colour or colour combination, as that claim continues before the Court.

Glaxo’s registration was for the above visual representation, as well as a description, which read: “The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler.”

Brand Portfolios: New types of EU marks now availableSignificant changes to the EU trade mark regime came into force in October 2017, opening up a number of opportunities for brand owners to obtain protection for a range of new types of marks. Previously, a trade mark had to be capable of being represented graphically to be registered. This meant it was difficult to register marks such as sound or motion marks, with very few making it through to registration. It is now possible to apply for an EU trade mark even if it cannot be represented graphically (this development will also apply to UK marks, most likely from January 2019). Trade marks which can only be represented electronically (e.g. multimedia marks) may be accepted, and non-visual marks (e.g. sound marks) will also be easier to file.

However, marks will still be subject to the usual examination of whether they are distinctive in relation to the relevant goods and services. Whilst marks can be represented in any appropriate form using generally available technology, they must also be reproduced on the register in a manner which enables the public to identify what is protected with clarity and precision.

The list of protectable marks is not exhaustive and others may be added, given advances in technology and branding practices. An EU certification mark is also now available (some Member States already provided for national certification marks).

Read more.

Trade mark infringement and validity highlights Sales of “grey” goods can be a criminal offenceCriminal trade mark offences can apply not only to the distribution and sale of counterfeit goods but also to ‘grey’ goods, under the Supreme Court’s ruling in R v C. Grey goods bear a registered trade mark and were produced with the trade mark owner’s consent, but were never permitted to be released onto the market. In this case, the appellants unsuccessfully challenged a Court of Appeal decision that they could be prosecuted for unlawfully selling various branded goods, some of which were counterfeit and some of which were grey goods.

The decision also provides a strong argument that unauthorised parallel imports – that is, goods manufactured and sold with the trade mark owner’s authorisation in a non-EU country but which have subsequently been imported and sold in the EU without consent – could also potentially be a criminal offence.

It will also allow brand owners to bring private prosecutions against anyone trading in grey goods, as well as counterfeits. Private prosecutions allow victims of crime greater control over the case and costs, and send a strong message to counterfeiters and those trading in grey goods, who face up to 10 years in prison where successfully convicted.

Read more.

COTY - The CJEU sides with owners of luxury brandsIn December 2017, the CJEU ruled that a supplier of luxury goods can prevent its authorised distributors - part of the supplier’s selective distribution system - from selling those luxury goods via third-party platforms (the case concerned ‘amazon.de’).

In a judgment that will please luxury brand owners, the CJEU confirmed that properly constituted selective distribution schemes can be used to preserve the luxury image of luxury goods. The Court observed that an obligation imposed on authorised distributors to sell the luxury goods online solely through their own online shops and not via third-party platforms, provides the luxury brand owner with a guarantee that its luxury goods will be exclusively associated with the authorised distributors. It went on to say that such an association is one of the objectives behind a luxury brand owner setting up a selective distribution scheme for its products.

Whilst the position in respect of luxury goods has now been clarified, this does not mean that all brand owners can restrict sales of their products via third-party platforms. The German Competition Authority, for example, has consistently held that restrictions on internet sales via third-party platforms are not justified for mainstream, non-luxury brands.

The Coty judgment is unlikely to be the final word on this issue. Numerous questions still remain unanswered including: how will brand owners respond when operators of third-party platforms modify their websites to include a “luxury” section and voluntarily offer to adhere to brand owners’ guidelines for the presentation of their goods? And what view will the CJEU take when it is asked to explain why “high-quality goods” should not be treated in the same way as “luxury goods”?

Unauthorised garage infringed BMW trade marksBrand owners faced with the all too common problem of independent businesses using their marks in a way which suggests a commercial connection or affiliation welcomed a Court of Appeal decision that the use of BMW’s registered trade marks by an independent garage on its staff uniform, van and Twitter handle was trade mark infringement and passing off. Each type of use created the impression that the garage’s BMW repairing service was affiliated to BMW’s network, or that there was a special relationship between them.

The Court drew a key distinction between misleading use and merely informative use. Whilst it would be acceptable for a business to say, for example, “The BMW specialists” or any use which conveyed the message “my business provides a service which repairs BMWs and/or uses genuine BMW spare parts”, a message to the effect of “my repairing service is commercially connected with BMW” would amount to a false one. In each case, it will be necessary to consider the detail and the context of the use that is being made of the brand.

Read more.

EUTMs: Unitary nature and co-existenceAn EU trade mark is a unitary right, providing the proprietor with the same exclusive rights throughout the EU. However, what should happen where a mark and sign co-exist in one part of the EU, but there is a claim for infringement in another?

The owners of KERRYGOLD EUTMs claimed infringement in Spain for use of the sign KERRYMAID. The Alicante Commercial Court referred three questions to the CJEU, focusing on how to apply the peaceful coexistence of the mark and sign in the UK and Ireland to the Spanish proceedings. The CJEU decided, broadly, that the peaceful coexistence and geographical, demographic, economic or other circumstances prevalent in some Member States should form part of the global assessment of likelihood of confusion and due cause, but was not itself definitive. The court should have regard to the different market conditions and sociocultural circumstances between Member States. Accordingly, a trade mark proprietor can prevent infringement in any part of the EU, whether or not such infringement extends throughout the EU (and so, an agreement to co-exist in one part of the EU will not prevent an infringement claim in another).

Flynn prevents parallel imports of third party products bearing its brand In a rare parallel import case, the Court of Appeal decided that a trade mark owner could prevent parallel imports of pharmaceutical products sold under its trade mark where the relevant goods were not put on the market by the trade mark owner, but by a third party. The decision focuses on the issue of ‘control’, which was material on the question of whether the trade mark owner could prevent the particular parallel imports.

The Court concluded that Flynn (the trade mark owner) did not have the ability to exercise control over the goods before they were placed on the market by the third party, Pfizer, in the exporting state. Further, the links between Flynn and Pfizer were not such that use of the Flynn trade mark was under Pfizer’s control. Accordingly, Flynn’s enforcement of its trade mark against parallel imports of products manufactured by Pfizer, and bearing Flynn’s mark, would not breach free movement of goods provisions.

Mark referring to name of Macedonian village not invalid as geographical descriptorMarks which designate a geographical origin cannot be registered if the geographical name is known to the relevant class of people as the designation of a place, and if it suggests (or could suggest) a current association with the goods or services. However, a mark may acquire distinctiveness through use where the average consumer perceives the mark as identifying the goods or services as originating from a single undertaking. If a geographical name is very well known, it can only acquire distinctive character if the owner has made long-standing and intensive use of the mark.

In Mermeren v Fox Marble, the IPEC decided that Mermeren’s mark for SIVEC was inherently distinctive. Mermeren extracts and sells marble from the Prilep region of Macedonia, including from a quarry near the small village of Sivec. It owns an EU trade mark for SIVEC in relation to marble. Fox, a UK company, also extracts and sells marble from the Prilep region, also under the mark “Sivec”.

The relevant public, i.e. those in the EU who purchased marble, would not have heard of Sivec (as it is a little-known place), and so it did not inherently designate the geographical origin of the goods. Further, even if the mark, through its use in the period prior to registration, did designate the marble’s geographical origin, by the time Mermeren applied for its trade mark, this had been reversed by use. This case demonstrates that, in certain circumstances, it is possible to acquire distinctiveness, and turn a mark from being a geographical descriptor into a trade mark (in this case in a period of two years, which is quite a low threshold).

XKING crossed out by European Court of JusticeIn a case which raises a number of issues for those looking to clear marks, the CJEU upheld a finding of a likelihood of confusion between an application by German tyre company Continental for the mark XKING with Michelin’s earlier French registration for a stylised letter X. Both marks covered identical or highly similar goods relating to tyres.

The CJEU rejected the argument that a single letter element of a sign constitutes, as a general rule, a weakly distinctive element of a sign. Whilst there are certain categories of signs, including single letters, which are less likely to have distinctive character initially, the CJEU said there was not a general, abstract rule that the distinctiveness of such letters must, in all cases, be considered to be weak. Single letter marks, including those featuring a limited degree of stylisation, should therefore be considered seriously when identified in clearance searches, as they will not automatically be presumed to be weak.

Read more.

Distinctive to the maxxWhilst it was based on consistent reasoning, this General Court decision was noteworthy because the Opponent found it easy to establish rights in a sign that seems widely used in the English language to refer to the laudatory word “maximum”. The decision serves as a reminder of the potentially unexpected linguistic differences that can occur in different EU Member States and which can be crucially important in clearing trade marks for wider use and registration in Europe.

The EU General Court decided that an earlier registration of the word mark MAXX in Bulgaria was sufficient to prevent registration of a similar mark which featured the suffix “-MAXX” as an EUTM. The Opponent owns the T.K MAXX brand and the application was for a stylised form of NARAMAXX:

The Naramaxx Mark

The key issue was whether the visual, phonetic and arguable conceptual differences between the earlier mark MAXX and the Naramaxx Mark were sufficient to avoid a likelihood of confusion. In particular, was the element “MAXX” sufficiently distinctive so that its mere inclusion as part of the Naramaxx Mark was enough to establish a likelihood of confusion?

The Court decided that the sign MAXX had no conceptual meaning for Bulgarian consumers. There was no laudatory connotation as the term “maxx” would not be understood to refer to the word “maximum”. It was notable that Bulgaria uses the Cyrillic alphabet. It went on to conclude that there was a likelihood of confusion.

Pizza mark invalid on the basis of earlier use in a particular locality The Court of Appeal has upheld a finding of invalidity in relation to the trade mark CASPIAN in a dispute between the operators of a Birmingham chain of restaurants and a Worcester restaurant, both called ‘Caspian Pizza’. The Claimants’ trade mark, CASPIAN, was found to be invalid based on the Defendant’s earlier use in Worcester, which would have meant it could have succeeded in an action for passing off. Whilst the earlier use was only in Worcester, the Court confirmed that an opposition based on earlier use of a mark did not have to be use throughout the UK, or even in a geographical area which overlaps with the place where the trade mark applicant actually carries on business using the same or a similar mark. Accordingly, goodwill (as opposed to reputation) established in a particular locality may be capable of preventing registration of a countrywide trade mark.

Online infringements Supreme Court to consider costs of website blocking orders In 2016, the Court of Appeal confirmed that orders can be made against ISPs requiring them to block their customers from accessing websites selling counterfeit products, upholding an order in relation to six websites selling counterfeit Cartier and Mont Blanc products.

The Court of Appeal’s decision extending this jurisdiction to websites selling counterfeit products based on trade mark infringement was a significant development for brand owners in their ongoing fight against counterfeiting but, to date, there has not been a raft of similar applications by brand owners. This is no doubt due to the outstanding appeal which will be heard by the Supreme Court in January 2018. The appeal will not focus on whether such orders can made as that is a settled issue; instead it will focus on who should bear the costs of implementing the website blocking order, the brand owner or the ISP?

Read more.

Trade mark infringement for using Claimant’s Amazon listingsThe Courts continue to deal with new issues presented by technology, and different methods of selling and marketing goods and services. The Intellectual Property Enterprise Court issued an interesting decision in Jadebay v Clarke-Coles finding that the Defendant’s use of the Claimant’s Amazon listing for its flagpole products (flagpoles ‘by DesignsElements’) was trade mark infringement of the Claimant’s ‘Design Elements’ trade mark on the basis of a likelihood of confusion, and passing off. The Defendant’s products are sourced and purchased from a different manufacturer in China to that used by the Claimants and are different in design, but of comparable quality. The case is on appeal to the Court of Appeal.

No trade mark infringement for use of a domain name in conjunction with advertsIn Argos Ltd v Argos Systems, the Court decided that Delaware company Argos Systems’ use of ARGOS in its domain name in conjunction with the display of advertisements under the Google AdSense programme did not infringe Argos’ EUTMs for ARGOS. The complaint had been on the basis that the use was directed at UK users because adverts displayed in Google AdSense were of interest to UK consumers (some of the adverts were for Argos) and allowed Argos Systems to generate advertising revenue. Some 89% of traffic to the Defendant’s argos.com website was from the UK, and 85% of UK visitors left the website after 0 seconds, with almost none clicking past the landing page. The case is on appeal to the Court of Appeal and will be heard in July 2018.

The Court decided that, as Argos had also signed up to the Google AdSense program, it had under its terms consented to Argos Systems’ use of the sign in its domain name, together with the advertisements. On the question of targeting, the Court concluded that UK users would not regard the adverts as directed at them because they appeared on a page which they would not regard as directed to them.

Merck v Merck: Global website targeted UK consumersThe Court of Appeal also considered the question of targeting in Merck KgaA (Merck Global) v Merck Sharp & Dohme (Merck US) in a dispute concerning a claim for breach of contract and trade mark infringement relating to online use by Merck US of the word MERCK. The Court decided that the use either as a trade mark or company name was in breach of a 1970 Agreement between the two parties, which provided that Merck US should not use MERCK outside of the US.

On the issue of targeting consumers in the UK, the Court noted that Merck US’s web presence was an integrated group of websites which were accessible by and directed at users in the UK and other countries. The architecture of the sites was also such that users accessing the ‘msd-uk’ site were directed to the ‘merck.com site’. Visitor numbers were also material – the sites were not visited by ‘strays’, but by non-US residents in search of information and who had been directed or drawn to the merck.com site.

Copyright and Designs

Protection of TV formats as copyright worksFormat right disputes rarely end up in court but the decision in Banner v Endemol has provided some useful clarification that TV formats may be protected by copyright as dramatic works, if particular criteria are met.

The decision highlights the level of detail required to demonstrate the features of the show which distinguish it from similar shows, and how those distinguishing features connect with each other in a coherent framework to enable the show to be reproduced in recognisable form.

In this case, the idea of playing games against the clock for one minute was not sufficiently set out in a specific and coherent framework, and the show in question contained features much like other game shows, and so copyright protection was not available.

Read more.

Crackdown on ‘fully-loaded’ media playersAs an advertising message, “Want to watch free films, series, sport without having to pay? Who doesn’t?!” was clearly too good to be true. In the UK, sales of media players incorporating pre-installed add-ons linking to websites giving access to unauthorised content have attracted the attention of criminal prosecution authorities in recent months. In Stichting Brein v Wullems, the CJEU decided that the sale of such ‘fully-loaded’ devices amounts to a communication to the public and therefore is likely to infringe copyright. Further, users who unlawfully stream copyright content will be unable to rely upon the temporary reproduction defence.

Rights owners in the creative industries welcomed the decision, which demonstrates the CJEU is prepared to adopt an extremely broad interpretation of the ‘communication to the public’ right – an interpretation that the European Commission had argued would alter and jeopardise the fair balance between the rights and interests of all parties involved.

Read more.

The Pirate Bay and ‘communication to the public’The CJEU also adopted a broad and flexible interpretation of ‘communication to the public’ in Stichting Brein v Ziggo, a case concerning the infamous file-sharing website The Pirate Bay. Despite the copyright works in question not being hosted by The Pirate Bay itself (they were shared by its users), the CJEU decided that, by making available and managing an online sharing platform, it was intervening with full knowledge of the consequences of its conduct, to provide access to copyright protected works.

It was evident that the operators of The Pirate Bay took an active role in operating the site, beyond the mere provision of facilities to enable or make a communication, by indexing and categorising protected content, providing a search engine facility and by actively managing the content available. Other key findings were that the operators could not be unaware that their site was providing access to protected content, and that the site plainly existed for the purpose of obtaining a profit.

Court grants first ‘live’ blocking order against streaming serversThe Football Association Premier League (FAPL) won a landmark ruling in its ongoing battle to tackle illegal streaming of Premier League fixtures. The Court’s order obliges the six largest retail ISPs to block access to servers which allow delivery of infringing Premier League content to UK consumers. Previously, blocking orders had only been obtained against websites that allow users to watch infringing content, the most prominent in the sports arena being FirstRow Sports in 2013.

In practice, the success of such orders can be limited, as sites that stream content have tended to shut down, and then reappear under a different guise. Further, consumers have increasingly switched to accessing illegally streamed content via set top devices like Amazon Fire sticks or Kodi boxes as well as mobile device apps, which would not be caught by a traditional website blocking order.

The Court’s order seeks to root out the problem before streams can spread to websites, add-ons and apps, thereby breaking the chain leading to infringement – as one streaming server could feed multiple client browsers.

In December 2017, the court granted a further order against streaming servers delivering infringing live streams of UEFA Champions and Europa League matches.

Read more.

Planning permission – check for copyright in architects’ drawingsA High Court case (Signature Realty v Fortis Developments) was a timely reminder for property developers to ensure they have the right to use architects’ drawings relating to their developments. This is especially important if they did not commission drawings which form the basis of a planning permission they intend to rely upon. The case may also cause problems for residential purchasers buying a house with the benefit of, say, planning permission for an extension.

In 2013, Signature Realty retained an architect to prepare drawings to obtain planning permission for a development site in Sheffield. The permission stipulated that the development should “be carried out in complete accordance with” the architect’s drawings. The site was subsequently acquired by Fortis, who proceeded to develop the site in accordance with the permission. When Signature discovered what had happened, it sued Fortis for breach of copyright as the drawings had been used without permission.

The court decided that Fortis had infringed Signature’s copyright in the drawings in a number of ways including using them for marketing, tendering and estimating purposes, and constructing the development in accordance with the drawings. Whilst the court declined to grant an injunction, Signature was as a result entitled to claim damages or an account of profits.

Read more.

Show’s over for cable-retransmission?The decision of the CJEU in ITV v TVCatchup finally brought to an end a long-running complex dispute relating to the TVCatchup service, which has seen its fair share of twists and turns and cliff hangers. The decision went beyond a finding that TVCatchup cannot stream public service broadcasting channels like ITV1 via the internet without paying copyright fees: the CJEU concluded that the UK’s ‘cable re-transmission’ defence more generally was incompatible with EU copyright law.

However, the section 73 defence was already on borrowed time, as it has now been repealed by the Digital Economy Act. Of broader interest is the potential impact of the repeal of the cable retransmission defence on the complex commercial arrangements in the broadcasting industry.

Read more.

Multiple drinks can Community design registration held invalidIP protection for food and drinks packaging is a significant asset and prevents others from copying valuable designs. Coca-Cola has a registered EU trade mark for its distinctive bottle shape, and Red Bull has a Community Registered design for its can design. However, registering the shape of packaging as a trade mark is not straightforward: Voss’ EU trade mark for the shape of its water bottle was cancelled on the grounds that it was not distinctive.

Whilst obtaining design protection for packaging is less complex, a General Court decision this year affirmed the importance of getting the representation of your design registration right. The Court upheld a decision that a Community registered design featuring three sizes of drinks can, registered by Ball Beverage Packaging, was invalid on the basis that it did not have individual character over earlier similar drinks can designs on the market. Applicants should consider carefully how to depict their designs when filing their application and may need to file multiple registrations, and different views.

Read more.

IP law and reform EU IP protection and enforcement: Commission proposes improvementsAs part of its Digital Single Market strategy, the European Commission has published a series of papers setting out its commitment to protection of intellectual property rights in an effort to encourage innovation and creativity. The Commission’s proposals cover three main areas:

— Stepping up the fight against counterfeiting and piracy, by tackling the ‘big fish’ through a ‘follow the money’ approach. The Commission proposes doing more by way of Memoranda of Understanding between rights holders and relevant intermediaries, such as those already in place with internet platforms and under discussion with the transport and payment industries; and the creation of a new IP markets watch-list which will identify online and physical markets that engage in or facilitate substantial infringements.

— Providing greater legal certainty over enforcement of IP rights by giving national courts guidance on how they should interpret key provisions in the IP Enforcement Directive. However, many see this as a missed opportunity to overhaul the enforcement regime which has been in force for over 10 years and has been applied inconsistently between Member States.

— Creating a fair and balanced system for licensing and enforcing Standard Essential Patents.

Read more.

Navigating the new groundless threats regimeThe Intellectual Property (Unjustified Threats) Act 2017 came into force on 1 October 2017. Whilst the revisions are ‘evolutionary,’ rather than ‘revolutionary’, it is now much easier for trade mark and design rights holders to correspond with infringers without being at risk of a claim for groundless threats of proceedings. In particular, the new regime:

— introduces a new statutory two-part test for a groundless threat, based on the threat being about acts done or to be done in the UK

— aligns the threats regime across the relevant IP rights, for example, allowing trade mark and design owners to challenge primary actors about their primary and secondary acts of infringement (in respect of the same goods)

— provides guidance as to permitted ‘safe harbour’ communications with secondary infringers (e.g. retailers)

— introduces a defence where the right holder has taken ‘reasonable steps’ to discover the identity of the primary infringer

Read more.

Digital Economy Act 2017: Key IP ProvisionsThe Digital Economy Act 2017 contains a number of important provisions relating to IP. In particular, the Act:

— Increases the maximum sentence for the copyright offence of communicating copyright works to the public to ten years, a controversial measure (albeit the Government has suggested that the maximum penalty will only be applied in the most serious of circumstances).

— Repeals section 73 of the Copyright, Designs and Patents Act 1988 which had provided a defence where copyright works are immediately retransmitted by cable in the jurisdiction that they are first broadcast in (see article above).

— Provides for web-marking for UK registered designs (but not EU designs) – a product can now be marked or stamped with a relevant internet link (instead of the design number) as a way of countering any defence that an infringement was ‘innocent’.

Read more.

The reform agenda in 2018Developments to watch out for in 2018 include:

— Further progress in the controversial copyright proposals forming part of the EU Digital Single Market project, including the proposed related right for press publishers, and increased obligations on platforms such as YouTube to prevent infringements of IP rights (Read more on the initial proposals).

— The Portability Regulation will apply from 1 April 2018 and will allow subscribers to access online content when temporarily in another Member State e.g. when on holiday.

— The Trade Secrets Directive must be implemented by Member States, including the UK, by 9 June 2018. It is not yet clear what approach the UK Government will take to implementation – it is possible that it will decide that the UK law is already largely compliant with the Directive and it will not be necessary to implement specific legislation, with any issues that arise being dealt with by judicial interpretation. Otherwise, any legislation will need to jostle for priority.

— The Trade Marks Directive meanwhile must be implemented by Member States by 14 January 2019, which will bring national laws in line with the reforms already implemented in relation to EU trade marks.

— Finally, the UK Government has indicated that it intends to ratify by 31 March 2018 the Hague Agreement on Industrial Designs (in its own right, as the UK is already a member through EU membership) with the new registration service being available from Spring 2018. By joining the Hague system, UK businesses will continue to have access to the international system of design registration after Brexit.

Ray BlackPartnerT +44 20 3321 7191E ray.black@mishcon.com

Martyn HannPartnerT +44 20 3321 7110E martyn.hann@mishcon.com

Key contacts

David RosePartnerT +44 20 3321 6331E david.rose@mishcon.com

Nina O’SullivanLegal DirectorT +44 20 3321 6328E nina.osullivan@mishcon.com

Jeremy HertzogPartner, Head of Intellectual PropertyT +44 20 3321 7264E jeremy.hertzog@mishcon.com

Sally BrittonPartnerT +44 20 3321 6014E sally.britton@mishcon.com

Lewis CohenPartnerT +44 20 3321 6296E lewis.cohen@mishcon.com

Liz EllenPartnerT +44 20 3321 7456E liz.ellen@mishcon.com

Peter NunnLegal DirectorT +44 20 3321 6768E peter.nunn@mishcon.com

Adam RosePartnerT +44 20 3321 7197E adam.rose@mishcon.com

Mishcon de Reya LLPAfrica House70 KingswayLondonWC2B 6AH

T +44 20 3321 7000F +44 20 7404 5982E contactus@mishcon.com

www.mishcon.com

It’s business. But it’s personal.mishcon.com