AIPPI World Congress
- Introducing the 2021 Opening Keynote Speaker: Trevor Albery of WarnerMedia.
- How to navigate the online platform.
- Download the Congress App.
- Meet the Sponsor Days.
- Japanese Group's Journal "A.I.P.P.I." Latest Issue (Vol 46, No.4) is Now Available to AIPPI members.
Articles & Case Notes:
- Sky v SkyKick: UK Court of Appeal interprets CJEU reference C-371/18 and General Court decision in Hasbro T-663/19
- Promising Courtroom Win for Trademarking Video Game Titles in Thailand
- The Supreme People’s Court of China confirms that Chinese courts have the jurisdiction to determine global rates of SEP licenses
- Summary of the first year of the Polish IP courts
- Intellectual Property in a pandemic
- Changes in Border Measures and Criminalization of IP (Ecuador)
- Abolishment of Signature & Seal – Affected by COVID-19 (Japan)
- New bill to replace decades old industrial property law in Poland
- Eating the Cake and Having It
AIPPI National and Regional News:
Introducing the 2021 Opening Keynote Speaker: Trevor Albery
Trevor currently co-manages the global WarnerMedia Content Protection & Analytics group with specific responsibility for the EMEA region. This role encompasses setting content protection policies across the company, enforcement activities at both the company and industry level and data analytics.
He is also responsible for IP Policy in EMEA, ensuring that IP frameworks are in place to allow WarnerMedia to bring its much loved movies, TV series and video games to consumers around the world.
Trevor attained a law degree from the University of Bristol and holds a Post Graduate Diploma in UK, European and US Law of Copyright and Related Rights from King’s College, London.
You can watch Trevor speak at the Opening Ceremony on Friday, October 15, from 1:30 PM to 2:00 PM (CEST).
How to navigate the online platform.
Download the Congress App.
From your mobile phone stay up to date with the latest Congress news and announcements, see your personal schedule, check out the sponsors and exhibitors, schedule appointments and much more!
Download the ‘Cvent Events’ App and search for AIPPI there. The official 2021 AIPPI Congress App will then appear.
Meet the Sponsor Days – October 12 to 14!
Our Platinum Sponsors have each created a unique programme on various IP topics. This is a great opportunity to connect with your industry peers prior to the Congress. Add these sessions to your schedule now!
Some of the topics include:
• Pitfalls and solutions in trademark registration in China
• How will blockchain affect IP?
• Challenges For Pharma Patent Litigations In Turkey
• Tricky issues of SEPs (or alleged SEPs?) in Brazil
You can find these sessions under the ‘Pre-Congress’ section of the programme.
Japanese Group's Journal "A.I.P.P.I." Latest Issue (Vol 46, No.4) is Now Available.
The Japanese Group is pleased to inform you that the latest 2021 issue (Vol 46, No.4) of the Japanese Group's Journal "A.I.P.P.I." is now available to all AIPPI members.
Please sign in to the “Membership Portal” on the AIPPI website and visit “Member Offers” to read the current and past editions of the journals.
Since 1965, the Japanese Group has been publishing its bimonthly journal "A.I.P.P.I." in English for the purpose of disseminating information on the Japanese intellectual property system to the foreign countries.
AIPPI members can read the entire issue online (not available for download or print).
We hope that many AIPPI members around the world will find it interesting.
Back issues are also available to read in the Members Area of the AIPPI website.
Masatoshi ABE, AIPPI JAPAN
By Tristan Sherliker of Bird & Bird, London. Edited by Edward Cronan, Hogarth Chambers, AIPPI UK NGR.
The UK Court of Appeal has overturned an earlier decision of the UK High Court in relation to the application of the doctrine of bad faith to over-broad trade mark registrations. In doing so the Court of Appeal interpreted the CJEU’s judgment in C-371/18 and provides helpful guidance on the important aspects of the General Court decision in Hasbro, T-663/19.
The UK Court of Appeal concluded that the High Court had been wrong to invalidate part of the specification of Sky’s mark for bad faith. The judgment means that an application for a trade mark for an indication such as ‘Computer Services’ would not normally be considered to be made in bad faith if the applicant intends to use the mark for even a single product or service within that term.
This is the latest judgment in a long dispute between Sky and IT services provider Skykick, which has already been several times before the UK High Court, before the CJEU, and again before the High Court — and now before the UK Court of Appeal. We have previously reported on the outcome of the CJEU Reference [Link] and the High Court decision now under appeal [Link].
In the High Court, before Mr Justice Arnold, the outcome was already, broadly, against Skykick. Various of Sky’s trade mark rights were pruned back from a very broad base, to a much tighter scope of services. However, that made little difference. Sky retained the broad term “Electronic mail services”, which had not been attacked, and so SkyKick’s provision of IT services for migration of email to the cloud was found to infringe. The other arm of SkyKick’s business (backing up data to the cloud) also infringed Sky’s marks, because Sky held on to registration of the similar term “computer services for accessing … documents via a computer”. Overall, although SkyKick’s counterattack was partly successful on paper, it had no commercial effect to the outcome of the case against them.
Even though it was the commercial winner, Sky had lost on a key point in relation to bad faith, leaving its trade marks partly cancelled, and it appealed against the partial cancellation of its registrations. The appeal was determined by the leading judgment of Sir Christopher Floyd, another leading IP judge (with whom Lord Justice Newey and Lord Justice Nugee agreed), as  EWCA Civ 112 [Link]. Since the case began, Mr Justice Arnold (as he was) has become a Lord Justice of Appeal, meaning that the same case has now been determined differently by two different leading IP judges.
The key issue of international relevance in the appeal was the extent to which broad specification terms in trade marks may be held to be invalid due to bad faith, by virtue of a lack of intention to use the mark across the breadth of the term at the time of filing. This required the court to consider the reference by Mr Justice Arnold to the CJEU, C-371/18 (Link), and the recent decision of the General Court in Hasbro, T-663-19 (Link).
The Court of Appeal’s interpretation of C-371/18
As mentioned above, in the course of this long running case, several questions had to be referred to the CJEU for determination because they raised new points of law which had not previously been considered at that level. When the CJEU's decision was published, the answers they gave to the various questions did not address the referral as directly as many practitioners would have liked. This led to practitioners being unsure about the real meaning of the referral.
One of the main questions for the CJEU had been whether it can constitute bad faith simply to apply to register a trade mark without any intention to use it. The Court of Appeal noted the lack of express answer to this question, and helpfully interpreted the CJEU’s response. The UK Court of Appeal found that the answer implicitly given was that it was not bad faith simply to apply to register a trade mark without an intention to use. Such bad faith would only arise when those circumstances are coupled with objective, relevant and consistent indications of an additional positive intention which was inconsistent with the functions of a trade mark.
The Court of Appeal’s assessment of UK law and Hasbro T-663-19
The Court identified 13 key principles from the case law of the CJEU, and also reviewed decisions in the UK’s lower courts, drawing out principles of application for future cases. One English authority of particular interest was the decision of Mr Daniel Alexander QC in HTC Corp v One Max Ltd. Mr Alexander QC in that case discussed not just the legal principles of bad faith, but also how the court should apply those principles so as to provide a fair outcome to trade mark applicants and trade mark attorneys.
Mr Alexander QC noted that “it is necessary to give an applicant for a trade mark very considerable latitude” before making a finding of bad faith. Mr Alexander QC also said that trade mark attorneys drafting a trade mark specification should not have to interrogate their client in meticulous detail to come up with a workable trade mark specification, the object being to put forward a specification that bears a reasonable relationship to the applicant’s business. This might be the business the applicant is already in, or that it has some prospect of entering in the future. The court therefore needed to look at all the circumstances, asking whether the applicant had commercial reason to make the application it did.
In relation to the decision of the General Court in Hasbro the Court of Appeal noted a key principle, namely that the concept of bad faith requires a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other sinister motive. The Court of Appeal also considered that it was wrong to say that a trade mark applicant had to have some commercial strategy for their business which might lead to their need to use the mark in respect of all the goods and services covered by the registration (see  and ). It could not be inferred from the lack of such a strategy that the mark had been applied for in bad faith.
Instead, in light of Hasbro, the Court of Appeal noted that an applicant is entitled to say "I am using the mark for specific goods falling within description X. I have no idea precisely where my business in goods of that description will develop in the next 5 years, but there will undoubtedly be more such goods than there are now." The Court of Appeal held that such a strategy is “fully in accordance with the aims of the Regulation”.
The outcome of the case
The Court of Appeal reversed the earlier judgment on the issue of bad faith. It was clear, said the court, that Sky's application was supported by both good and bad reasons, and this was not a case such as others, where the sole objective in applying for the marks was unlawful.
In the earlier judgment, the judge had questioned, against each of the described specification terms, (a) whether there was a foreseeable prospect that Sky would use the mark for those goods; and (b) whether they were applied for pursuant to a strategy of seeking very broad protection, irrespective of the commercial rationale.
However, the Court of Appeal preferred to examine broad categories from the starting point that a broad term could be a fair way of describing an applicant’s business, even if it did not capture every nuance of that business. For example, the fact that a term such as ‘computer services’ was broad did not mean it was applied for in bad faith. There was obvious commercial justification for applying for ‘computer software’ which formed part of Sky's business and therefore that term was justified. The same principle was applied to the other aspects of the decision of Arnold J.
The Future of Bad Faith
Trade Mark practitioners will watch with interest to see if other European countries approach this issue in the same manner. There is still a difficult tension, between (on one hand) an applicant being allowed to register its mark before knowing how its business will evolve; and (on the other hand) the very broad rights that can be used to restrain others — even those operating in very different businesses.
It is still possible that this case will go on to the UK Supreme Court for a final analysis and determination — which would be popular with UK trade mark practitioners given the different approaches that have now taken by two of the UK’s leading IP judges to this complicated issue.
By Kannicha Wungmuthitakul of Tilleke & Gibbins, Bangkok, Thailand.
The title of a video game is likely one of the most valuable assets that a game developer holds. Registering a game title as a trademark secures exclusive rights over that title and prevents third parties from using it for games or related goods or services of their own.
However, whether a game title is descriptive of the computer game is an issue that has come up repeatedly in Thailand with applications to register video game titles as trademarks. According to current practice, the trademark registrar and the Board of Trademarks at Thailand’s Department of Intellectual Property (DIP) do consider a game title to be descriptive of a computer game, regardless of whether the title is related to the actual features or characteristics of the game.
Video game title trademark challenged
In a recent case, a mobile game developer decided to mount a challenge to one such rejection of a video game title trademark application. The developer, which has brought many popular mobile games to the global market, had submitted a trademark application for the title of their mobile game “Clash Royale” in classes of computer game software (class 9) and electronic games (class 28). This application was rejected by the registrar and the Board of Trademarks for non-distinctiveness.
The registrar and the board decided that the words “Clash Royale” can be interpreted to mean “battle of the kings.” In connection with goods in the applied-for classes, these words describe the nature of the goods as “games related to battles of the kings” and therefore are not registrable because they do not exhibit the distinctiveness required by Thailand’s Trademark Act.
The game developer enlisted Tilleke & Gibbins to appeal the board’s decision to the Intellectual Property and International Trade Court (IP&IT Court), arguing that the mark “Clash Royale” is inherently distinctive and not directly descriptive of the underlying products.
In considering the distinctiveness of the game title, the IP&IT Court in this case took a different view than the registrar and the Board of Trademarks. The court ruled that the mark is distinctive for registration, and held that “Clash Royale” is simply a suggestive mark rather than an actual descriptor of the game. Consumers would not immediately understand the association between the mark “Clash Royale” and the computer game without using further imagination.
The IP&IT Court’s decision in this case laid down solid reasoning regarding the differences between suggestive and descriptive marks when used as game titles—even providing examples of titles that actually describe the appearance and features of a game (e.g., Action Game, Role-Playing Game or RPG, Adventure Game, Simulation Game, etc).
The IP&IT Court’s decision is not yet finalized, as the DIP may still opt to file an appeal. However, this decision is a promising development, and depending on the final outcome of this case may even signal a possible change in the criteria for considering the registration of a game title as a trademark in Thailand.
This article first appeared in Managing Intellectual Property.
By Xiao JIN of CCPIT Patent and Trademark Law Office, Beijing, PR China.
More global standard essential patents (SEP) license disputes in China in the future? The Supreme People’s Court of China confirms that Chinese courts have the jurisdiction to determine global rates of SEP licenses if the license is more closely linked to China.
On August 19, 2021, the Supreme People’s Court (the SPC) of China made a final decision that Chinese courts had the jurisdiction to determine global rates of SEP licenses in OPPO vs. Sharp case. The much-watched case was accepted by the SPC in December 2020 and came to a conclusion after a collegial bench of three justices heard all parties’ arguments.
In the ruling, the SPC begins by considering the nature of a SEP license dispute. In the SPC’s eyes, a SEP license dispute is more like a contractual dispute than a patent infringement issue. In this connection, the Chinese courts may exercise the jurisdiction if any of the following places is in China:
- the place where the SEPs were granted
- the place where the SEPs are implemented
- the place where the SEP license agreement was signed or negotiated
- the place where the patent license agreement is performed
- and the place where the interested party has property available for seizure
The SPC goes on to consider if the Shenzhen Intermediate People’s Court has the jurisdiction needed to determine the global rate of the SEP license. The SPC finds that two implementers are implementing the SEPs in Shenzhen and all the parties once negotiated the license agreement there. These facts give the jurisdiction to the Shenzhen Intermediate People’s Court to rule on the SEP license dispute.
Finally, the SPC holds that the trial court is a suitable forum because:
- All parties have the intention to reach terms on an SEP global license and the terms of the global license agreement were part of the foregoing negotiations;
- Most of the SEPs involved in the dispute are Chinese patents,
- China is the main place where the implementers run their business, generate their revenues, and implement the SEPs,
- China is the place where the parties once negotiated the terms of the license agreement,
- China is the place where the implementers have properties available for seizure.
In addition, the SPC also emphasizes that the parties may have a forum selection agreement. However, that agreement is not an essential condition for a Chinese court to have jurisdiction on the dispute of terms on SEP global licenses. The Chinese courts have the jurisdiction to determine a global rate of an SEP license if the parties have the intention to reach terms on an SEP global license and the dispute is more closely linked to China.
By Klaudia Błach Morysińska, Zaborski, Morysiński Law Firm, Poland and Paweł Poznański, Zaborski, Morysiński Law Firm, Poland.
Due to the complexity of the IP matters and the specific character of the IP proceedings, the need for the creation of IP courts with IP experts as judges were raised by IP professionals for many years. The increasing number of IP cases and their specific character requires creating specialised IP courts, as in the other European countries. On July 1, 2020, Polish IP courts entered into force. There are 5 District Courts where IP Departments are located: Warsaw, Gdańsk, Poznań, Katowice and Lublin and 2 appeal courts in Warsaw and Poznań.
Taking advantage of the first anniversary, we decided to prepare statistics on the specialized IP Departments' cases. We requested these IP Departments to provide information on the overall number of cases, a matter of the cases and moreover about new procedural measures like motion to secure evidence, the request to disclose or release evidence and the information request for the period of a year. Please find below the summary report:
The number of IP cases
|IP Department||No. of cases|
|Appeal IP Department||No. of cases|
As could be foreseen, most cases were filed in the IP Department in the District Court in Warsaw. As of June 22, since the beginning of the IP Department in July 2020, 1024 cases have been filed. It is significantly more than in other IP Departments. In second place is the District Court in Katowice with 638 cases, then Poznań with 535 cases. In Gdańsk 299 cases have been filed. In Lublin, so far, there have been 197 cases.
From the information provided, it seems that throughout the year the number of resolved cases is as follows: in Warsaw 649 cases, in Katowice 369 cases, in Poznań 283 cases, in Gdańsk 215 cases and in Lublin 139 cases.
To present a comprehensive picture of the first year of IP Departments, we contacted the Courts of Appeal as well. Their statistics, as of June 16, 2021, were as follows:
- 95 cases were filed to the Court of Appeal in Warsaw
- 67 cases were filed to the Court of Appeal in Poznań
The matters of the cases
|IP Department||copyright||trademark||design||patent||plant variety||utility models or semiconductors topographies|
Please note that the presented numbers may not represent the real quantity of the cases concerning copyright, trademarks or industrial designs. In many cases the dispute concerns more than one IP right, nevertheless there may be only one symbol assigned to the case.
The Warsaw IP Department is exclusively for technical issues. However, there were no cases concerning utility models or semiconductors topographies in the Warsaw IP Department. The disproportion between the overall number of cases and what has been presented above derives from the fact that most cases in the Department concerned the payment of remuneration for the use of IP rights. No information in that regard has been provided for 2021, but in 2020 there were 229 cases.
What caused the disproportion between the general number of cases and what has been presented above for Poznań? In that IP Department, like in Warsaw, most cases concerned remuneration for the use of IP rights - 315 cases.
The IP Department in Warsaw issued 1038 decisions on the security of claims, of which 598 motions were accepted in the analysed period. The Katowice IP Department examined 52 interim injunction motions, of which 18 were accepted. In Poznań, there were 44 motions filed, of which 16 were accepted. In IP Department in Lublin 30 motions were filed and most of them were effective because 28 were accepted. In the IP Department in Gdańsk, 22 motions were filed, of which 3 were accepted.
According to the law, the Court has 7 days from filing a motion to secure the claim for issuing the decision. However, not every Court can comply with that provision. The District Court in Warsaw did not provide any information in that regard. The average time in Katowice was 20 days. In Poznań it was 6/7 days. The average time in Lublin was 8/9 days. District Court in Gdańsk did not any provide information in that regard.
Within the introduction of IP Courts, new procedural measures were introduced to IP proceedings. The first measure, the motion to secure evidence, assures that the rights holder gains information about the infringement of its rights. In Warsaw 13 motions were filed and only one was accepted so far. In Katowice 4 motions were filed (4 decisions in that regard were issued). In Poznań 3 motions were filed, in Lublin no one filed such a motion and in Gdańsk in 2020 there were 3 motions (2 accepted).
The next measure, the request to disclose or release evidence, allows the rights holder to obtain evidence from the infringer about the case requirements, which is impossible to legally obtain outside of court proceedings. In that regard, the District Court in Warsaw did not provide an answer. In Katowice there were 9 requests - 4 decisions were issued in that regard. In Poznań there were 5 requests. In Lublin no one filed such a motion, the same as in Gdańsk.
By the last measure, an information request, a rights holder can obtain information on the defendant's co-operators and the quantity and prices of counterfeit products. In Warsaw there were 16 requests, among which 5 were accepted. In Katowice there were 12 requests and Court issued 5 decisions in that regard. In Poznań there were 5 requests, but some requests appeared as well in the lawsuits and motions to secure the claim. In Lublin there were 9 requests. In Gdańsk there was 1 request.
The Polish Group of AIPPI took an active role in the legislations works. In conclusion, from analyzing the previous half-year with the current one, there is an upward trend. It seems that the number of cases and use of new procedural measures may increase. The practitioners are waiting for the verdicts of the IP courts. The more IP cases in the future, the more clues for attorneys in similar cases.
By Artemis Kirkinis of Allens, Australia.
The COVID-19 pandemic shines a spotlight on IP rights. While the rapid development of safe and effective COVID-19 vaccines has been an incredible achievement, supply in some parts of the world has not yet been able to meet demand for the doses required in the race to vaccinate the global population. From the early stages of the pandemic, there has been a question as to whether IP rights are hindering these efforts. One question is whether governments would deploy rarely used instruments such as compulsory licences or government authorisation (also known as Crown use in Australia and the United Kingdom).
Coercive measures such as compulsory licences and government authorisations are not new, and are contained in the patents legislation of many jurisdictions. They are based on standards including those set in the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS) to which all 164 World Trade Organisation (WTO) members are parties. A compulsory licence compels a patentee to grant a licence to a third party where the patentee has failed to exploit the patented invention, and government authorisation permits governments to exploit patented technology absent the patentee's approval to do so. These measures are designed to act as safeguards for emergencies and other public interest needs, and aim to strike a balance between access to necessary patented technology, and incentivising innovation through the granting of IP rights.
Despite these existing coercive measures, it has additionally been proposed that there be a temporary waiver of these TRIPS IP rights in relation to technology relating to COVID-19 prevention, containment or treatment. India and South Africa made this suggestion in October 2020, and issued a revised proposal in May 2021 in collaboration with a number of other nations. This would include an IP waiver in relation to diagnostics, therapeutics, vaccines, medical devices and personal protective equipment, their materials or components, and their methods and means of manufacture, and is proposed to be in place for at least 3 years. Given its traditional stance on IP rights, it may have surprised some that in May this year the United States changed its initial position and announced its support for a temporary waiver on IP rights, albeit limited to COVID-19 vaccines.
Compulsory licences and Crown use in the COVID-19 pandemic
In an article I co-authored with Sarah Matheson AM, which was published in the Journal of Intellectual Property Law & Practice (Oxford University Press) in May 2021, we contended that it may not be necessary to invoke coercive measures such as compulsory licence and Crown use provisions, notwithstanding that such measures may, at least in part, be intended to provide access to patent protected technology in an emergency, such as a public health crisis: Compulsory licence and Crown use provisions in the Covid-19 pandemic—the Australian perspective | Journal of Intellectual Property Law & Practice | Oxford Academic (oup.com).
At the time of writing that article, several COVID-19 vaccine candidates were in clinical trials. We were seeing some IP rights holders taking unconventional approaches to their IP, governments taking steps to facilitate industry-led innovation, and unprecedented levels of collaboration and cooperation across industry, governments and regulators. These approaches had prevailed throughout the initial push to develop vaccine candidates. In the article, it was recognised that in the context of the challenges presented in a pandemic, the traditional coercive measures of compulsory licences and government authorisations may not be effective in allowing third parties to exploit patented technology. This is for reasons including that any vaccine technology, and particularly COVID-19 vaccine technology, is complex and requires bespoke manufacturing capability and capacity. We did however conclude that the mere existence of such measures could act as safeguards and encourage timely negotiation and collaboration. However, our prediction was that once effective vaccines were developed, vaccine supply to multiple jurisdictions simultaneously would be the next big challenge.
Proposed IP waiver in the COVID-19 pandemic
The IP waiver now being proposed is wider than the compulsory licence and Crown use provisions set out in TRIPS. It is a blanket exclusion of IP rights for COVID-19 products, technologies and methods.
Proponents of the IP waiver contend that it will accelerate access to vaccines, treatments and medical suppliesOpponents contend that IP rights are not a barrier to access and waiving them will not solve the immediate problem of accelerating supply. For example, several WTO members suggest that manufacturing capacity, and underfunded healthcare and procurement systems are the real barriers to the availability of COVID-19 vaccines, not IP rights. Further, COVID-19 vaccine manufacturers have expressed concerns that the proposed waiver could impact safety and quality.
The TRIPS Council has engaged in text-based discussions to develop an IP waiver proposal for the WTO Ministerial Council. In a meeting in July 2021, WTO members agreed to continue consideration of the proposed temporary IP waiver and the next formal TRIPS Council meeting is scheduled for October 2010. However, its status is far from concluded as discussions continue and views diverge. Consensus, or at least a majority vote amongst WTO members, is a requirement for it to pass.
What is certain however is that collaborative efforts have thus far prevailed during this pandemic, leading to an unprecedented timeframe for the development of multiple safe and effective vaccines; that robust IP systems have encouraged innovation that has been deployed to further develop technology to protect against and treat COVID-19; and that IP has not yet proven to be a barrier to the development of such technology or its supply. Just as collaboration has played a major part in fast-tracking the development of vaccines, it is to be hope that collaboration is the way to also ensure that supply is directed to countries that do not have sovereign manufacturing capability.
 For example, on 8 October 2010, Moderna announced that while the pandemic continues, it 'will not enforce our COVID-19 related patents against those making vaccines intended to combat the pandemic.
 World Health Organization, ‘Members Discuss Intellectual Property Response to the COVID-19 Pandemic’ 20 October 2020 <https://www.wto.org/english/news_e/news20_e/trip_20oct20_e.htm> accessed 16 September 2021.
By Eduardo Ríos, Associate at CorralRosales, Ecuador.
The Congress gave way to the partial objection issued by the Executive Branch, thus approving the “Law that Reforms Various laws to Reinforce the Prevention and Combat of Illicit Commerce in order to Strengthen the National Industry and Promote Electronic Commerce.” In addition, the law foresees reforms in intellectual property matters.
In particular, this reform includes provisions regarding (i) intellectual property crimes, their punishment and handling, expanding the punishable acts, and (ii) the border measures proceedings.
- Intellectual Property Crimes
The Executive Branch veto sought to correct certain inconsistencies and drafting errors in the text approved by the Assembly. As a result, it details criminal conducts in a much better way, the conditions that must be taken into account to assess the existence of the crime and how these crimes are to be treated and judged.
The reform of the criminal law establishes that, for these behaviors to be considered crimes, they must include several elements that would differentiate it from a “simple” infringement of intellectual property rights as it conditions its sanction to the infringement happening in knowledge, that it has a lucrative purpose, and that it is on a commercial scale.
These conditions include criminal offense and penalizing whoever manufactures, commercializes, or stores labels, stamps, or containers containing trademarks or denominations of origin registered in the country.
It also sanctions whoever separates, starts, replaces, or uses labels, stamps, or containers that contain registered trademarks in the country to use them in goods of different origin, fills containers identified with trademarks belonging to a third party with spurious goods; stores, manufactures, uses, offers for sale, sells, imports or exports goods covered by a patent, utility model, industrial design, a plant variety (including its material for reproduction, propagation or multiplication) or a layout design.
It also includes possible infringements - which from our experience, will make up the vast majority of intellectual property criminal actions - against whoever stores, manufactures, uses, offers for sale, sells, imports or exports a product or service that uses an unregistered trademark identical or similar to one registered in the country; the competitive connection between the infringing goods or services and those identified by the registered trademarks must be clear.
In addition, the law eliminates the condition of a minimum amount to constitute a crime, clarifying that to consider the offending conduct a crime (on a commercial scale), the magnitude, economic value, quantity, and impact on the market must be considered. It also specifies that in foreign trade cases, it is regarded as a crime when the goods are valued at more than 50 unified basic salaries (SBU) – US $ 20,000 to date – stating that the cost of the original product must be taken into account for this appraisal.
Regarding the sanctions, the law establishes an incarceration sentence of 6 months to 1 year, confiscation (of the seized goods), and a fine of 8 to 300 SBU (US $ 3,200 to US $ 120,000 to date). In addition, the following are reinstated as an aggravating factor for the criminal offense: (i) having received a warning of the offense; (ii) that health-related goods cause damage to health; and (iii) that the crime is committed concerning unpublished works.
Regarding copyright, the same conditions described before apply. In addition, the following actions are sanctioned with the penalty mentioned in the previous paragraph: alteration or mutilation of a piece of work; the registration, publication, distribution, communication, or reproduction of a foreign work as one’s own; unauthorized reproduction or in a number greater than the authorized number of the work, provided that the damage is greater than 50 SBU (US $ 20,000 to date); public communication of works or phonograms; introduction to the country, storage, offering for sale, sale, lease or circulation of illicit reproductions of works, by any means; unauthorized retransmission of radio broadcasting, television and in general any signal that is transmitted through the radioelectric spectrum; manufacture, import, export, sale or lease of devices, systems or software that allow deciphering an encrypted satellite signal carrying programs or telecommunications in general.
The reform makes an essential clarification about certain conditions of the crime, such as the precise meaning of the term “commercial scale” and how to assess the appraisal of the goods.
The law also includes provisions on the destination of the seized goods, which may be considered donations to cover social needs by the State or destroyed. An expert report issued by an expert duly accredited by the Judicial Council is needed. The expert has to establish whether the goods must be destroyed or rendered useless.
Finally, the law includes conciliation as a dispute resolution mechanism.
In conclusion, the reform is positive because it seeks greater agility in processing and prosecuting intellectual property crimes.
- Border Measures
After almost five years of a legal vacuum in this matter, the Executive Branch veto, also corrected the inadequate text approved by the Legislature returning the “mixed” system to the country for the execution of border measures. It allows the National Customs Service of Ecuador (SENAE) to be the first filter of infringing goods entering or exiting the country, suspending the customs process provisionally, which has to be confirmed by the local intellectual property office.
The reform empowers SENAE to: (i) suspend the customs procedure for goods that, in any way, violate intellectual property rights, (ii) alert the holders of these rights, and (iii) provide adequate information to act in these cases.
The suspension of the customs process will initially be five days. During these five days, this suspension must be communicated to the importer, the rights holder, and the local intellectual property office. After that, it will have three days to decide on a resolution.
The law maintains the obligation to provide sufficient information to the intellectual property authority about the infringing goods and the conditions of the infringement, and the possibility of inspecting the goods involved.
The authority may sanction the offender with a cash penalty ranging between 1.5 and 142 SBU (US $ 600 to 56,800 to date).
Per the regulations of the Andean Community, the reform provides that the right holder may bring either an administrative, civil, or criminal action when the adoption of the border measure has been confirmed. Although there is a contradiction with the Andean supranational norm regarding the term to bring it (10 days), the Andean Law prevails. The holders of intellectual property rights will have a predominant performance in these cases since they must participate actively, both in the criminal proceedings and in the cases of border measures, accompanying the authorities through all the steps.
The law maintains the possibility of requiring the person requesting the adoption of a border measure to provide a guarantee that will be proportional to the possible economic and commercial impact generated by the suspension to protect the importer or exporter from a possible case of abuse of rights.
This reform corrects elements that have caused a notable increase in intellectual property infringements in Ecuador and led to actions against retailers or small merchants. Unfortunately, these elements were leaving importers or wholesalers who are the primary beneficiaries of the illicit trade unpunished.
The reforms will come into force after its publication in the Official Registry.
This reform is in force since August 27, 2021.
By KATO Chiaki of Kubota, Tokyo, Japan.
With the aim of preventing the spread of COVID-19, and further improving the convenience of administrative procedures, the JPO has decided to partially abolish signature and seal on a wide variety of deeds and documents.
Japan is the only country in the world that uses a seal registration system. However, due to the COVID-19 pandemic, we found that this traditional seal system hampers teleworking in ordinary society. The ironical thing was that workers had to head to the office to press seals! Much the same is true of the IP field. It was mandatory to submit originals of Power of Attorneys, deeds, and other written documents with signature (for foreign nationals) or seal (for Japanese.) Surprisingly, the number of the kinds of procedures before the JPO that required such signatures and seals was 800!
Under the circumstances, the JPO abolished signature and seal for 764 procedures. In order to prevent counterfeiting, however, the following procedures remain subject to the requirement of original documents with a handwritten signature and registered seal. Electronic signatures and/or seals are still not accepted.
(1) Pending Application
- a) Transfer of Pending Application
- b) Change of Applicant's Name or Address
(2) Registered Rights
- a) Transfer of Registration (due to Assignment, Merger, Succession, etc.)
- b) Change of Owner's Name or Address
- c) Recordal of Pledge, Use Right, Division of Right, etc.
We believe this is good news especially for Madrid users, make no mistake. The JPO has indicated their intention to continue discussions on this matter.
By Klaudia Błach Morysińska of Zaborski, Morysiński Law Firm, Poland.
In 2021, the Polish Patent Office and, subsequently, the Ministry of Economic Development, Labour and Technology initiated drafting work on a new Act on Industrial Property Law. The Ministry has announced a brand new bill on intellectual property, which replaces the Industrial Property Law of 30 June 2000, which has been amended more than 20 times to date.
The legislator highlights that due to the numerous amendments, the current law is unclear, with multiple interpretational doubts. Moreover, the registration procedure is slow and overly formalised. The projected law aims to rectify this to the benefit of businesses. In addition to the current law, the industrial property legal system as a whole is struggling to keep up with the needs of a modern and fast-growing economy.
The proposed new bill has not yet been published in its entirety, only the essence of solutions included in the project have been released.
With regard to inventions, the draft act introduces the institution of preliminary notification of an invention, and proposes to consolidate the provisions on patents in one act, thus transferring solutions to this act and repealing the Act of 14 March 2003 on filing European patent applications and the effects of a European patent in the Republic of Poland (Journal of Laws of 2016, item 2).
In the field of utility models, the draft act provides for the introduction of provisions accelerating the application procedure by replacing the current research system with a registration system. It is foreseen that this will allow for faster processing of applications and shortening this time from an average of 24 months to approx. 12 months.
Considering designs, the definition of a design and the conditions for obtaining protection is going to be changed so that Polish regulation is fully harmonized with Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (Journal UE L 298 of 28.10.1998, p. 28). Additionally, the provisions are going to be systematized with the registration right, the content of the registration right and exclusions from protection.
With regard to trademarks, the announcement mentions:
- changing the scope of making public all documents at the stage of filing the mark on the website of the Patent Office;
- shortening the period for submission of opposition to two months after the date of publication of information about the application;
- removing the obligatory two-month conciliatory agreement period for the parties in the course of the opposition proceedings; and
- abolishing the joint protection right.
The legislator believes that these changes will speed up the process of trademark registration. It is emphasised that the amendments will be consistent with the principle of freedom of contract, where it is up to the parties to shape their own legal relationship.
As regards geographical indications, in order to encourage producers to notify geographical indications, the draft law provides for a new registration procedure for these rights. The draft regulations apply only to non-agricultural products - the scope of protection granted to non-agricultural geographical indications is of particular importance for domestic traditional handicraft products.
The draft changes how disputes with the Polish Patent Office are handled, including trademark cancellation proceedings. At present, the principle is that dispute proceedings before the office take place during hearings. Pursuant to the planned amendments, these proceedings will, as a rule, be adjudicated in closed sessions.
The prospective bill introduces the possibility of mediation as an alternative method of dispute resolution tailored to industrial property cases. Mediation will be voluntary and take place at the request of the parties.
The draft act provides new regulations regarding fees and keeping registers. There will be one fee paid on the application date instead of additional first protection period fee paid once the trademark is registered. The draft act also introduces a new solution, according to which, if at least three different industrial property objects are filed within 3 months, the fee for filing each of them may be reduced by 30%.
For practitioners, the shortened period to file an opposition and the removal of the cooling-off period may be disadvantageous. Often the time between the publication of the trademark and the opposition deadline is used to negotiate an agreement, thus avoiding litigation. Additionally, resignation of hearings during dispute proceedings before the Polish Patent Office does not seem to be a good direction. The dispute proceeding shall be contradictory, where parties shall have a right to present their arguments not only in writing but also during the hearing. While it is hard to foresee that mediation will succeed in trademark proceedings, it is still good to have a new alternative method of dispute resolution made available.
Members of the Polish Group of AIPPI provide their expertise as outside consultants to said authorities in the course of their drafting work. The Polish Group of AIPPI will take active part in work on the new act on Polish Industrial Law once it is forwarded to public consultation.
By Vladimir Biriulin, President of the AIPPI Russian Group.
The first English patent for invention was granted in 1449 for a glass making method. The inventor was granted a 20-year monopoly for the invention. One year later, a patent was granted in Venice in 1450 with a duration of 10 years also for glass making. Since then, other, individual countries adopted their patent laws and granted patents. A 20-year term became a gold standard for the duration of patents.
Patents were granted for all kinds of things including in the field of chemistry, such as medicines and agrochemicals. As time went on, it became clear that patents in the field of pharmaceuticals and agrochemicals have some particulars. Before a medicine goes to the public it should be tested and the developer of the medicine should obtain regulatory approval. This process may take time so that effective duration of patent may be curtailed by several years. Nevertheless the 20 years standard persisted for many years until USA passed its “Drug Price Competition and Patent Restoration Act” in 1984. The Act provided for an extension of term of a patent for the years spent for obtaining the regulatory approval. The maximum term of extension was five years.
This idea found a good response in other countries which passed their own regulations for patent extension term at different times. In Russia, this happened in 2003 when relevant amendments were made in the Russian Patent Law. China produced its Fourth Amendment to the Patent Law quite recently, in October 2020 with effect from June 2021.
Pharmaceutical companies immediately seized at the extension opportunity and beginning from 2004 about 250 patents were extended for several years in Russia. It may be assumed that the number of petitions for extension was larger however not all of them complied with the extension requirements. In the absence of accurate statistics in different countries it may be assumed however that the extension procedure is quite popular among pharmaceutical and agrochemical companies.
There is yet another procedure for extension of patents in various countries. For instance, according to EU Regulation 1901/2006, a supplementary patent certificate can be issued for further extension of the term of a patent for additional six months if the marketing authorization preparations included clinical trials specifically addressing pediatric use of a drug. Similar provisions are adopted in other countries (no pediatric extension is available in Russia). Additional term of extension may be explained by the fact that adults and children respond differently to the application of drugs so that drugs intended for the use by children need more research and investigation. Besides, additional term serves as encouragement for the companies to conduct more research.
The regulatory approval is not the only hurdle in the life of patents. Pharmaceuticals and agrochemicals, before they go to the patients (users) must be developed in the first place. Development of a pharmaceutical takes sometimes years and definitely lots of money. First, a potential drug should be discovered, perhaps one of thousands of synthesized substances. This should be followed by long and expensive preclinical and clinical studies. In all, development of a drug may involve years of research and an outlay of hundreds of millions of dollars and reach a billion before it reaches the final user.
When a medicine appears in the hospitals and pharmacies many patients discover that they cannot afford such a medicine. Attempts can be made to remedy the disease by cheaper methods however this may not be helpful so that that the patient cannot return to normal life and perhaps the state will have in any case to support the suffering person. So, inability to use an optimal medicine will inevitably lead to losses by the patient himself and by the state that in any case will have to care for that patient in different ways (keep him in a hospital, pay money if the person becomes disabled). The person may lose employment and become additional burden for the state. Possible losses are difficult to calculate when a patient does not receive the required treatment.
As is shown, high price of the medicine on the market is a forced option. A high price limits the number of patients who can afford such a medicine. But the patent owner cannot afford reducing the price because he has to redeem the expense made during the development of the drug and have money for further research of new drugs. Extension of patent term due to regulatory approval does not help much. The extended term of a patent cannot go beyond 25 years.
One of the options that could be proposed for the patent owners can be further extension of the patent term on the voluntary obligation of the patent owner to sell the medicine at a price affordable for the patients with simultaneous extension of the patent in proportion to the reduced price.
In order to make it possible it would be necessary to correct national laws. The law may provide that the patent owner should provide a document confirming his expenses. In his turn, the patent owner may collect the documents proving the expense for the development of a given drug and send them to an independent evaluator, such as the World Health Organization which could confirm that the cost of bringing the drug to the market is indeed justified. The World Health Organization does not opine on the market price of the medicine but only examines the documents relative to expenses made during the development of the medicine and either confirms the amount spent or not.
The patent owner could apply to a competent body in a country with a certificate obtained from the independent evaluator and conclude an agreement with that competent body, e.g., patent office or the government as the case may be. The agreement may provide that the patent owner sells a drug at a price affordable for the patients in that country and the competent body extends the duration of the patent to a number of years that would allow the patent owner to recover the money spent on the development of the drug and accumulate some money for further research. The system may be flexible: the cheaper the sales price the longer extension may be granted. This is a problem of easy mathematical calculation.
This setup has obvious advantages. The drug can be used by a larger number of patients which is in the interests of the patent owner as well as of the country where the drug is sold. The patent owner will recover the money spent on the development and trials of the drug. The activities of generics producers will be undermined by cheap prices of the original drug and longer period of patent validity. Even if a generic company obtains a marketing authorization in a country it will be difficult for it to compete with the company originator. Besides, the longer patent term will keep away generic companies from the market.
The sword of Damocles hanging over each patent owner in the threat of a compulsory license will be put away because the drug becomes affordable for rank and file.
In order to prevent transborder shipments of the drug from the country where such procedure is implemented to a country where such law is not yet in place the customs authorities will have to exercise more care or introduce regulations not to allow unauthorized import of the relevant drug.
There may also be underlying problems. There may be cases where the patent owner may wish to assign his patent or issue a license. In case of a license agreement the arrangements regarding the prices and duration of the patent should be reflected in the agreement because the rights and obligations rest with the patent owner. In case of assignment a two-fold solution is possible. The assignee may follow the line of conduct of the previous patent owner, or he may set the selling price of the medicine at will, however the duration of patent shall be corrected accordingly. The question arises if the assignment is effected beyond the term of 20/25 years. In this case the assignee shall keep to the price of the medicine previously set. Alternatively, assignment should not be allowed.
A patent may protect several different products if each of those products is based on the same basic substance. In this connection the question arises: should all those products be included in the extension permission and sold cheaply. It is difficult to predict at this point of time how the situation might develop should such extension be allowed.
In any case, the patent owner will have a choice: either to sell the drug dearly, generate discontent in the patients, have a limited patent term and compete with generic companies or sale it cheaper, have more consumers and enjoy a longer duration of the patent depending on the sales price of the drug.
It seems that the proposed solution may expand the opportunities for the patent owners as well as be beneficial for potential patients. And, what is good for the people, is good for the state.
Copyright and Architecture – Recent Cases from Europe
Buildings may be copyright protected on the outside and on the inside. In various European countries, court decisions answered questions like: What are the requirements for copyright protection of architecture? May the architect stop re-modeling of a building due to moral rights? This seminar looks at case law from France, Germany, Italy and Turkey.
The AIPPI Belgian Group will hold their annual Study Day in November. The event will be held online, as was the case last year, with the support of AIPPI International. With speakers from Belgium and abroad, the event will be split into five online seminars, covering Injunctions & patents, Recent Belgian case law on patents, Reasonable steps in Trade Secrets, Bad Faith in trademarks, Collective trademarks, and Geographical indications and Trademarks. The seminars will be held in English.
The draft programme is as follows:
|8:30 – 8:45||Log-in to Zoom|
|8:50 – 9:00||Welcome & Introduction
André Clerix, Director IP (Imec), President BNVBIE/ANBPPI
|9:00 – 10:15||Webinar 1: Injunctions & patents
Moderators: Simone Vandewynckel, Attorney at law (Inteo) & Kristof Neefs, Attorney at law (Inteo)
Dr. Alina Wernick, LLM
Discussion panel (+ Q&A)
Speaker to be confirmed
|10:15 – 10:30||Break|
10:30 – 11:15
11:15 – 12:30
Webinar 2: Recent case law on patents (+ Q&A)
Christophe Ronse, Attorney-at-law (Altius)
Philippe de Jong, Attorney-at-law (Altius)
Webinar 3: Reasonable Steps in Trade Secrets (+ Q&A)
Moderator: Domien Op de Beeck, Attorney at law (Bird & Bird)
Claudia Pappas, PhD, Attorney at law (Thyssen Krupp)
Ewan Van Minnebruggen, Attorney at law (Atlas Copco)
André Clerix, Director IP (Imec)
|12:30 – 13:30||Lunch Break
13:30 – 13:40
13:40 – 16:05
Welcome & Introduction
Dominique Kaesmacher, Senior IP Counsel, Lecturer (UCLouvain), President Belgian group AIPPI
Webinar 4: Capita selecta in Trademarks: Bad Faith, Collective trademarks, Geographical indications
Moderator: Emmanuel Cornu, Attorney-at-law (Simont Braun)
Part 1: “Trademarks registrations in bad faith”
Alexander Tsoutsanis, Attorney at Law (DLA Piper, Amsterdam, Legal Director)
Part 2: “Key points on the European Union certification trademark and on the European Union collective trademark”
Sophie Pétrequin, Lawyer (Board of Appeal of EUIPO)
Part 3: “Trademarks and geographical indications”
Bernard O’Connor, Attorney at Law (CTM) and Professor at the State University of Milan
|16.05 – 16.30||Q&A and Conclusion
Dominique Kaesmacher, Senior IP Counsel, Lecturer (UCLouvain), President Belgian group AIPPI
By Firas Qumsieh, National Group Reporter, AIPPI Jordan.
KHARTOUM - Pursuant to Ministerial Decree No. 1917 of 2021, the Ministry of Justice has announced an increase in the official fees for all IP-related matters. This comes after the Ministry of Finance to the Ministry of Justice issued a memorandum suggesting a new official fee structure back in February 2021. The decision was published on 5 August 2021 in the Official Gazette of Sudan number 1917, with a retroactive effective date of 8 August 2021.
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