EPO: The Unified Patent Court

4iP Council: Wilful infringement

Interview: Aktion Plagiarius e.V.

Ask the Helpline

Events

Quizzes

Solutions previous quizzes

Glossary

WIPO: Building respect for IP

EUIPO: EDB Forum

EEIA EMECA: Trade fairs & exhibitions

Interview: ninjatrader

The European IPR Helpdesk

Bulletin N°30, July - September 2018

2

4

5

7

8

10

12

14

The generalised infringement of intellectual property rights is a serious problem that affects everyone: companies, consumers, workers and society. It reduces revenues, discourages innovation, causes job losses and hinders economic growth. To fight this and reap the benefits of their efforts, right holders need to be able to rely on effective IP enforcement measures.

We have dedicated this new Bulletin issue to common IP infringements and the enforcement actions that are available to stop them.

Firstly, WIPO introduces the topic of IP enforcement in the wider context of building respect for IP. EUIPO speaks about the third edition of the Enforcement Database Forum and the upcoming IP Enforcement Portal, while Barbara Weizsäcker, Secretary General at EEIA and EMECA, develops the topic of IP protection at trade fairs and exhibitions through an infringement case which occurred at a German international exhibition.

In this issue we have interviewed a financial news website that explains us how it was accused of filing its EUTM in bad faith. EPO tells us about the future of patent litigation in Europe with an article on the Unified Patent

Court, and 4iP Council describes how to protect your IP rights from wilful infringement.

In addition, Aktion Plagiarius e.V. provides us with an interview on counterfeiting practices and their Plagiarius Prizes.

As per usual, the Bulletin reports information about the European IPR Helpdesk’s past and future events together with the latest updates from our Helpline service.

Finally, we invite you to test your knowledge on patent searching with our usual patent quiz and to solve our brand-new IP infringement and enforcement quiz.

Wishing you an inspiring read!

Your Editorial Team

CONTENTS

17

18

19

20

www.iprhelpdesk.eu

2

The European IPR Helpdesk N°30, July - September 2018

María Teresa Beyeler SapienteLegal Officer, Building respect for IP Division, Global Issues Sector, WIPO

Introduction

A system of protection of intellectual property (IP) is an essential tool for stimulating creativity and innovation. However, the efficiency and credibility of IP protection is ensured only insofar as the intellectual property rights (IPRs) can be effectively enforced. The enforcement of IPRs, cornerstone of a healthy system of IP protection, plays therefore a role in encouraging innovation, creativity and dynamism in the market. It is consequently no wonder that, at international level, no less than 21 provisions of the Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) are dedicated to the enforcement of IPRs. Hence, IP enforcement – through administrative, civil and/or criminal procedures and remedies – has to be construed as one of the elements contributing to building a sustainable environment of respect for IP. However, there are also other elements contributing to building respect for IP, such as voluntary measures or awareness-raising campaigns targeting consumers. The World Intellectual Property Organization (WIPO) approaches IP enforcement in the wider context of building respect for IP, which is one of WIPO’s strategic goals.

IP enforcement in the international context1

The inclusion of IP enforcement within the politics of global trade under the TRIPS Agreement marked a change in the approach to IP in international public law. In the past, international conventions, such as the Paris2

or Berne3 Conventions, contained limited obligations as to enforcement beyond the requirement of national treatment, which were satisfied by the enactment of suitable legislation but no mechanism for securing compliance with those commitments was provided for. This changed with the TRIPS Agreement, which is the only multilateral treaty in force containing a whole set of detailed provisions relating to the enforcement of IPRs.

Part III of the TRIPS Agreement “Enforcement of Intellectual Property Rights” deals with “General Obligations” (Article 41); “Civil and Administrative Procedures and Remedies” (Articles 42-49); “Provisional Measures” (Article 50); “Special Requirements Related to Border Measures” (Articles 51-60); and “Criminal Procedures” (Article 61).

Those provisions establish a minimum set of obligations that the Members States of the World Trade Organization (WTO) have

1 Further information on IP enforcement in the international and EU context is provided in the European IPR Helpdesk Fact Sheet on “IP enforcement: asserting your rights”.

2 See Paris Convention Articles 9 (on seizure of infringing goods) and Article 10ter(2) (on the standing of federations and associations).3 See Berne Convention Articles 13, 16 (on seizure of infringing copies) and Article 15 (on presumption of authorship).4 Or at regional level: In the European Union, for instance, the provisions relating to civil procedures and remedies, and provisional measures of the TRIPS Agreement are implemented in the Enforcement Directive No 2004/48/EC (which in many aspects go even beyond the requirements of the TRIPS Agreement). Similarly, the provisions of the TRIPS Agreement relating to border measures are implemented at EU level by Customs Regulation No 608/2013 (also in this case the EU provisions go beyond the minimum obligations of the TRIPS Agreement).

5 Article 7 states: “The protection and enforcement of IPRs should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.” Article 8 states: “Members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement. Appropriate measures, provided that they are consistent with the provisions of this Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.”.

WIPO’s balance approach to building respect for Intellectual Property

to implement in their national laws4. The Agreement also contains further optional provisions that Member States may adopt in their national laws, if they wish. WTO Members States may decide to go beyond the minimum obligations, though such a decision should take into consideration prevailing socio-economic circumstances and public health and development-oriented concerns, as mentioned in Articles 7 and 8 of the TRIPS Agreement5.

WIPO strategic goal VI: “International cooperation on building respect for IP”

WIPO is committed to building respect for IP, which constitutes its Strategic Goal VI, and conducts various activities within the framework of this Strategic Goal and under the guidance of Recommendation 45 of the WIPO Development Agenda (DA).

© P

hoto

by

raw

pixe

l on

Uns

plas

h©

Pho

to b

y ra

wpi

xel o

n U

nspl

ash

3

The European IPR Helpdesk N°30, July - September 2018

Recommendation 45 aims, in accordance with Article 7 of the TRIPS Agreement, at reaching a balance between the private interests of the holders of IP rights and the interests of the public at large. It encourages WIPO to “approach intellectual property enforcement in the context of broader societal interests and especially development-oriented concerns”, with a view that “the protection and enforcement of IPRs should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations”.

WIPO’s activities in the framework of strategic goal VIWIPO Advisory Committee on Enforcement

(ACE)6

Established in 2002, the ACE is WIPO’s forum for policy dialogue on questions of IP enforcement and building respect for IP, with a focus on coordinating with certain organisations and the private sector to combat counterfeiting and piracy activities; public education; assistance; coordination to undertake national and regional training programs for all relevant stakeholders; and exchange of information on enforcement issues7.

As a “market place of ideas”, the ACE allows WIPO Member States to share experiences and exchange information about new developments in the area of building respect which are relevant for IP offices, law enforcement officials and the judiciary.

The current work plan8 of the ACE addresses:

(i) Awareness-building activities and strategic campaigns as a means for building respect for IP among the general public, especially the youth;

(ii) Institutional arrangements concerning IP enforcement policies and regimes,

including mechanisms to resolve IP disputes in a balanced, holistic and effective manner;

(iii) Legislative assistance to Member States; and

(iv) Capacity-building activities.

Other WIPO activities under strategic goal VI9

Upon request of Member States, WIPO provides:• Legislative assistance (strictly bilateral,

neutral and confidential) on IP enforcement, tailored to the specific needs of the requesting country and taking into account the flexibilities and options of Part III of the TRIPS Agreement10;

• Capacity-building activities on topics related to the international framework of Part III of the TRIPS Agreement and its implementation at national level, and other topics emerged from the ACE sessions such as attitudes of consumers towards IP, IP enforcement in the digital environment, mechanisms to complement IP enforcement, and private international law issues in IP infringements11;

• Assistance in designing national strategies for building respect for IP and developing tools for use in awareness-raising. With the support of the Ministry of Culture, Sports and Tourism of the Republic of Korea (MCST), WIPO developed The Consumer Survey Toolkit on Respect for IP, to assist Member States in analysing consumer attitudes and behaviour and design effective communications campaigns as well as teaching materials on Respect for Copyright to raise awareness among young people. A similar resource, funded by the Japan Patent Office, was developed on respect for trade marks12.

Furthermore, WIPO maintains close relationships with multiple international and national International Governmental Organizations (IGOs), including the European Union Intellectual Property Office (EUIPO) Observatory, to enhance international policy

6 http://www.wipo.int/meetings/en/topic.jsp?group_id=142 7 http://www.wipo.int/edocs/mdocs/govbody/en/wo_ga_28/wo_ga_28_7.pdf 8 http://www.wipo.int/meetings/en/details.jsp?meeting_id=42290 and http://www.wipo.int/edocs/mdocs/enforcement/en/wipo_ace_12/wipo_ace_12_2_rev.pdf 9 New developments and topical issues in building respect for IP at the national and international level are reflected in a periodic Newsletter available at http://www.wipo.int/newsletters-archive/en/building_respect.html

10 http://www.wipo.int/edocs/mdocs/enforcement/en/wipo_ace_12/wipo_ace_12_2_rev.pdf11 http://www.wipo.int/edocs/mdocs/enforcement/en/wipo_ace_11/wipo_ace_11_10.pdf 12 The online resources are accessible at www.respectforip.org. A Spanish version of the web site is available at www.respetoporelderechodeautor.org.

cohesion and to ensure a balanced approach to building respect for IP.

Upcoming “International Conference on respect for IP – growing from the tip of Africa”

The Conference is organised by WIPO jointly with the Companies and Intellectual Property Commission (CIPC) of South Africa, International Criminal Police Organization (INTERPOL), World Customs Organization (WCO) and the World Trade Organization (WTO).

The event illustrates WIPO’s commitment to enhancing international cooperation by bringing together a wide range of stakeholders to create opportunities for collaboration and to strengthen existing partnerships between countries. The Conference will serve as an incubator of ideas in which different actors involved in IP enforcement will discuss the challenge of a global IP system, driving sustainable economic growth, cultural and social development and a strengthened level of consumer protection.

RESPECT FOR IP – GROWING

FROM THE TIP OF AFRICA –

Sandton, South Africa – October

23-25, 2018 http://www.wipo.int/respectip2018

Conclusion

Respect for IP is a basic principle endorsed by all the WIPO Member States. Although IP infringing activities – most notably, trade mark counterfeiting and copyright piracy – remain prevalent in many parts of the world, a broad spectrum of remedial and preventive measures is available for adoption by countries in the light of their strategic needs. WIPO is committed to enhance international cooperation and policy cohesion to ensure a balanced and transparent approach to building respect for IP, in accordance with the principles set out in its Strategic Goal VI and DA Recommendation 45.

4

The European IPR Helpdesk N°30, July - September 2018

The EDB Forum, an intellectual property rights (IPR) enforcement networking event for rights holders and enforcement authorities, is organised every 2 years by the EUIPO with a view to improving and developing communications as well as exchanging experiences.

The EDB Forum offers EDB users the opportunity to meet and exchange ideas and best practices.

In this third EDB Forum edition, held at the EUIPO premises in Alicante on 13 and 14 June, rights holders, police and customs from all EU Member States, as well as Europol and the EU Commission (Directorate-General for Taxation and Customs Union), met with the objective to jointly find concrete solutions to improve IPR enforcement.

The Forum also saw the prelaunch of the upcoming IP Enforcement Portal, which will go live at the end of 2018. The Portal will become

The Enforcement Database (EDB) is a secure database designed for customs and police to find the IPR, products and contact information uploaded by rights holders including product details, authentication signs, images, logistics, etc., which help enforcers to detect counterfeits. It contains a number of functionalities developed to facilitate the exchange of information between authorities and companies, namely:

• electronic filing and the extension of customs Applications for Action (AFAs)• alerts to rights holders of potential infringements, trends or online infringements• option for enforcers to consult rights holders about suspicious cases involving

detained goods.

Currently, some 700 companies, representing over 23,000 trade marks, have EDB accounts. 54 EU enforcement authorities, including Europol and the EU anti-fraud office OLAF, have access to the database and account for the 350 accesses registered per month.For further information on the Enforcement Database (EDB) please go to: https://euipo.europa.eu/ohimportal/en/web/observatory/enforcement-databaseIf you are interested in sharing your product, IPR and contact information with police and customs authorities from 28 Member States, please follow this link: https://www.tmdn.org/enforcementdb-ui-webapp/new-user.html

a single, secure, online and multilingual window to maximise the cooperation between rights holders and enforcers, and support them in the daily management of IPR enforcement activities.

In order to capitalise as much as possible on the available expertise of the participants, brainstorming sessions were held in the form of working groups, ‘speed dating’ and other networking activities during the two day event, which concluded with an exhibition during which rights holders were able to show their fake and original products and authentication signs.

The programme scheduled meetings amongst peers on day one, so that rights holders, police and customs could address possible solutions amongst themselves before sharing and discussing them with the other parties on day two.

The panel, held on 14 June, helped to exchange views and find common ground for

more effective IP enforcement.Below you will find a summary of the main conclusions.• All participants agreed that enforcers

need rights holders to provide as much information as possible on logistics and other companies involved, to be able to enhance their risk profiling and analysis.This applies very much to the quality of customs Applications for Action (AFAs), but also to the alerts on potential infringements or trends in the EDB. Rights holders have agreed to increase their use of these instruments and to improve the quality of the information sent where possible. The new e-AFA, to be developed in conjunction with the EU Commission (DG Taxation and Customs Union) based on the EDB AFAs, will improve the quality of the AFAs and harmonise their content.

• The customs meeting also shed some light on how applications for action (AFA) are treated in the different Member States. Minimum quantities are not really welcome in any, but accepted in some of them. In

European Union Intellectual Property Office (EUIPO)

5

The European IPR Helpdesk N°30, July - September 2018

BREXIT and the customs Applications for Action

The representative of the EU Commission (DG Taxation and Customs Union) informed the audience of the recent notice on the impact of Brexit on customs IPR enforcement matters (and in particular AFAs).The notice explains that decisions granting EU applications adopted by the competent customs department of the United Kingdom as a Member State on the basis of EU law will no longer be valid in the EU 27, while decisions granting EU applications adopted in one of the EU 27 Member States will remain valid in the EU 27 after the withdrawal date.Rights holders intending to refile their AFAs can count on the assistance of the EUIPO through the usual means: one-to-one workshops in Brussels, remote desktop connections, and email and telephone assistance. If interested, please contact: observatory.EDB@euipo.europa.eu

any case, all customs authorities agree that the setting of minimum quantities contradicts the application of the small consignment procedure and can therefore not be requested in combination.

• Authorities intend to improve the communication between police and customs by sharing information on cases - for example, if detained goods are released into the EU market. The EDB alert on interesting cases can be used for this purpose.

The Forum’s participants rated it very positively, being happy to contribute to an improved exchange with enforcers, while stakeholders showed their willingness to strengthen cooperation and make increased use of the enforcement tools at their

Barbara WeizsäckerSecretary General, European Exhibition Industry Alliance and European Major Exhibition Centres Association

During the last edition of “Light and Building”, a leading international exhibition for the light and building technology industry at Messe Frankfurt in Germany, Mr Martin Muller made an unpleasant discovery: not far from his own company’s booth another exhibitor offered a product that looked very similar to his own new launch – a high-tech and high-end design luminaire. Mr Muller was unsure about what to do, and as it happened on a Sunday he did not succeed in reaching his company lawyer in the office or by phone. Luckily, the trade fair organiser ran an information and awareness raising service and a help centre where exhibitors could get advice on any questions concerning intellectual property (IP). Therefore, Mr Muller phoned the trade fair’s IP helpline and immediately scheduled a meeting with the legal service present on site. He described his case and product, showed the IP rights which the company had registered for this new product, and discussed possible ways of enforcing his rights.

Mr Muller decided to seek direct contact with his opponent and to find an immediate solution by way of a “cease and desist declaration”. He mandated the lawyer present at the show to assist him. When they arrived at the booth of the presumed infringing exhibitor, the team present at the stand declared not knowing anything about the product’s origin, rights

Intellectual Property at trade fairs and exhibitions

or a possible infringement. Furthermore, the company’s manager was not present at the booth and no one was able to say when he would be back. As time is a decisive factor during exhibitions, Mr Muller and his lawyer took a different approach: they phoned the exhibition’s security service to get permission for taking photos of the product in question at the booth, in order to collect and secure evidence for possible further legal action.

Mr Muller then contacted the representatives of the German customs service present at the exhibition venue. The exhibitor showing the infringing product was not from the EU, therefore in such cases of suspected infringement, EU right holders may ask the customs service to check the potentially infringing products imported to the EU and exhibited on the exhibition floor. If customs

officers confirmed the similarity of goods and agreed that, in their view, the product infringes the rights of the EU right holder, he could then officially report the offence and the customs officers would confiscate the products in question as evidence for the law suit to follow.

Mr Muller was lucky: the exhibition’s customs team was about to start its check on the exhibition floor and upon his request, the team visited the booth of the alleged infringer. This time, the manager from the company was present at the booth. He was unable to show any registered rights of the product or other valid proofs for his country of origin or for Europe. So, the customs team checked the evidence of the IP rights and compared the product found at the booth with images provided and the descriptions in the registered

disposal. As discussed at the EDB Forum, the EUIPO’s enforcement tools (EDB, ACIST and ACRIS) will soon be united under the umbrella of the IP Enforcement Portal.

And with this, we need to say good bye. So long to the EDB Forum and welcome to the new IP Enforcement Portal Forum for our next edition!

© H

aupt

zolla

mt

Dar

mst

adt

German customs control

6

The European IPR Helpdesk N°30, July - September 2018

1 For further information consult the European IPR Helpdesk Fact Sheets “Intellectual property management at trade fairs” and “IP considerations for trade fair organisers”.2 These exhibitions are defined by national law and a list is usually published every year in the national official journal.3 A list of officially recognised international exhibitions can be found at the Bureau International des Expositions.

rights. The luminaire in question was found to be nearly identical to the original product of the right holder and therefore was seized. The customs’ team searched the entire booth and found several additional luminaires of this design hidden in the booth’s storage space. For the duration of the trade fair, Mr Muller was relieved that the copy of his luminaire was not on sale any more. However, in order to find a long term solution, he still needs to go to court.

This example shows that information, awareness and preparation before attending an exhibition is vital, especially for smaller companies that may not have a legal team or external lawyer immediately available if needed.

The IPR service desk of “Messe Frankfurt against Copying”, such as similar services of many other trade fair organisers in Europe, offers both general material about IP rights, possible ways of protecting and enforcing these rights, and practical support in case of problems with other exhibitors or visitors during the show. This material is available on the exhibition websites for preparation of the trade fair visit as well as on-site at the respective IP service booths. It includes the publications of the European IPR Helpdesk.

The European Exhibition Industry Alliance and the European IPR Helpdesk have cooperated and developed several Fact Sheets and leaflets for companies about everything they need to know regarding IP when attending a trade fair1.

Exhibitions and trade fairs are platforms where R&D, innovations and the latest trends are showcased. They are important platforms for established companies to market their brand, launch new products, and test innovations. They represent the first step into the market or first international contacts for a large number of SMEs in Europe. Exhibitions mirror the respective industries and – unfortunately – they also attract companies that do not play by the rules. However, trade fairs need to offer an open, inspiring and lawful environment where new products can be shown and business shall be the main focus.

This is why most leading international exhibitions take measures to make the business environment as safe and equitable as possible. In addition to widely distributed information, regulations in the stand contracts and trade fairs’ house rules already set out a clear commitment and emphasise consequences in case of infringements. Furthermore, cooperation with the relevant authorities like police, customs, bailiffs and the local courts for speedy decisions, even on weekends, is key to enable fast and smooth enforcement measures without substantially disturbing the ongoing business on the exhibition floor – as in the case of Mr Muller.

Some shows also offer a mediation/arbitration service with binding decisions for the parties involved. The panels that assess the disputes are either composed of specialised lawyers, former judges or even sometimes by specialists of the respective industry, if technical or other specialised expertise is needed.

Leading trade fairs are also entitled to issue so-called Exhibition Priority Certificates, certifying that a product has been exhibited at a trade fair. This Certificate may be used for later IP rights registration with the protection

starting at the date of the trade fair or as a proof for unregistered rights. These certificates are recognised by national patent offices but not by the European Intellectual Property Office (EUIPO). However, only officially recognised international or national trade fairs2 or recognised international exhibitions (EXPOS)3

issue these Priority Certificates.

More about the European Exhibition Industry Alliance: www.exhibition-alliance.eu

© H

aupt

zolla

mt

Dar

mst

adt

© H

aupt

zolla

mt

Dar

mst

adt

German customs control

7

The European IPR Helpdesk N°30, July - September 2018

Could you briefly tell us about ninjatrader’s activity?

Ninjatrader.es is a website that provides news and information in the sector of financial trading in general, including a financial news magazine, training and general information particularly concerning financial markets, stock exchanges or trading platforms. It also contains more technical news on available tools and systems to operate in stock markets.

The domain name was registered in 2011 and over the years, the website has become well-known in the Spanish and Spanish-speaking investment world with a constant increase in the number of visitors.

You bear the trade mark (™) logo. Why is TM protection important for ninjatrader? Have you faced any infringement or enforcement issue?

After several years of running the website, we received an email from a US software company requesting the deletion of all the content and the immediate shutdown of our domain name on the basis of some of their US trade marks. We initially followed the request to prevent any adverse legal consequence, as threatened by this American company.

With the domain offline, we completely lost our business. We discussed the issue with an IP professional and learned that trade marks are territorial in nature, and therefore the US company might not have been entitled to request the cease of all use under the ninjatrader domain.

Therefore, after considering how we could continue and protect our previously established activity, we decided to file a trade mark application at EU level (EUTM). No opposition was filed during the granting process.

We resumed our activity under the said domain name after the EUTM was granted, although we have not been able to regain the high degree of online visibility we used

INTERVIEW“The fact that a bigger company brings an infringement claim does not automatically mean that they are right.”

In this issue we have interviewed ninjatrader, a financial news website that was accused of filing its EUTM in bad faith. http://www.ninjatrader.es / https://www.ninjatrader.eu

to enjoy after being in the business for several years with a good reputation.

Soon after, the American company filed a request for declaration of invalidity of our EUTM before the European Intellectual Property Office (EUIPO) claiming that the application for registration of our EUTM was filed in bad faith.

Why did you decide to apply for EU trade mark protection and not national protection?

When considering trade mark protection and, taking into account the territorial scope of trade marks, our first step was deciding where exactly ninjatrader wanted to seek protection. As we were in the process of expanding into other EU countries, it seemed reasonable to benefit from the EU trade mark system run by EUIPO that provides for trade mark protection in all EU Member States through a single online application.

The EUTM was filed in 2016, as a word mark matching the domain name. Since then, as part of our strategy to expand to other EU countries, we have registered the domain name ninjatrader.eu to offer a new magazine focused on financial news from all EU countries. Furthermore, we are currently developing a financial coaching program and envisage the possibility of providing trading books through our website.

What has been the outcome of the invalidity proceedings against your EUTM?

When seeking to declare the invalidity of a trade mark on the basis of bad faith, the burden of proof regarding the existence of bad faith lies with the person that requests the invalidity. Therefore, it is necessary to prove that the intentions of the EUTM holder, at the time of filling the application for protection, were dishonest.

In its decision EUIPO found it obvious that we intended to use the EUTM as we had being doing until then, not trying to take advantage of the American company’s US prior trade marks. Furthermore, it was found that we had legitimately been using the domain

name ninjatrader.es since its registration, not having the intention to harm them by seeking trade mark protection.

Finally, it was found that even though domain name protection does not require the registration of a EUTM, the registration of a trade mark provides a positive right to use, which concurred with our decision to resume use of the domain only after the EUTM protection was granted. Therefore, it was established that there was a commercial justification for us to file the EUTM.

What advice could be given to SMEs facing a similar situation?

It has been crucial to obtain trade mark protection as we can now carry on our business in the European Union with strong confidence in succeeding against potential attacks of third parties thanks to the protection granted by the EUTM.

In our opinion, as there is no precise legal definition of the term “bad faith”, it is both challenging to prove that there has been bad faith in the person applying for protection and to defend oneself when accused of acting in bad faith.

However, when accused of infringement we find it crucial to ascertain what exactly has been the motivation for the infringement allegations. Seeking professional advice is of utmost importance to establish these initial facts.

The fact that a bigger company brings an infringement claim does not automatically mean that they are right. Therefore, it is important to overcome the initial fear regarding the adverse legal consequences which may arise and start building up a defence strategy.

By analysing the case it is possible to find out if the accusation is well-founded and, therefore there is an infringement, or if, on the contrary, the counterparty is merely seeking to enter your market and trying to get rid of potential competitors unlawfully.

8

The European IPR Helpdesk N°30, July - September 2018

Directorate European and International Legal AffairsPCT, European Patent Office

I. Background

The years have passed but still high on the wish-list of the EU’s innovative companies is the demand for cost-effective patent protection in the Internal Market, together with efficient patent enforcement through a single court stand. The current system – based on the European patent which is granted by the European Patent Office – remains too costly and fragmented in the phase after grant. In particular, since European patents have the same effect and are subject to the same conditions as national patents, any infringement is dealt with by national courts on a country-by-country level. In practice, when enforcement in several countries is necessary, parallel litigation before different national courts is therefore inevitable, resulting in high costs for all parties – both patent proprietors and alleged infringers – who must pay for representatives and court fees in several countries. Worse, due in particular to differences in national procedural laws, there is a risk that the different national courts reach diverging decisions – although the cases relate to the same European patent and involve the same parties – which again result in legal uncertainty for all parties.

It is now more than five years ago that the reform was agreed to: in December 2012, the European Parliament and the Council adopted two EU Regulations creating a new Unitary Patent, and in February 2013 the governments of 25 Member States signed an international treaty establishing a new Unified Patent Court (referred to as the “UPC Agreement”). Obviously, such projects cannot be implemented overnight, and some patience has been required while preparations were underway. Over the years, Member States, the European Patent Office and the Commission have joined forces to finalise the technical and legal preparations for the launch of the Unitary Patent1 and for the start of operations of the new Court. In parallel the parliamentary ratification procedures of

The future of patent litigation in Europe: From national courts to the Unified Patent Court

the UPC Agreement has been completed in sixteen Member States2.

Following the ratification by the United Kingdom in April 2018 – which plainly signals this particular country’s commitment to the reform – the last remaining step before the entry into force of the UPC Agreement is now ratification by Germany. Since March 2017, a constitutional complaint in Germany is however holding up ratification. Thankfully, this delay seems to be coming to an end since a final decision by the German Constitutional Court can now be expected in the second half of this year. The new system could thus become operational in early 2019. It therefore appears timely to cast a look at the future patent enforcement system in Europe as it will gradually take shape in the coming years.

II. The new Unified Patent Court

1. Organisation: two instances with internationally composed panelsMost remarkable is no doubt the establishment of the Unified Patent Court (UPC) which has been designed as a specialised European patent court with two instances dealing with litigation between private parties. To ensure proximity to users, the new Court in the first instance comprises not only a central division – with its seat in Paris and sections in London and in Munich – but also some 15 local and regional divisions set up in the Member States. A common Court of Appeal will have its seat in Luxembourg. Further key features of the new Court are the internationally composed panels where not only legally qualified judges but also technically qualified judges, all with experience in patent litigation, will deal with cases, on the basis of a common set of Rules of Procedure drawn up specifically for patent proceedings3. Parties to proceedings must be represented before the UPC either by lawyers authorised to practice before a court

of a Member State (attorneys-at-law) or by European Patent Attorneys with appropriate additional qualifications in patent litigation.

2. Jurisdiction for infringement and revocationThe new Court will have exclusive jurisdiction to deal with disputes relating to the infringement and validity of Unitary Patents and European patents, provided the patent proprietors do not opt-out their European patents and European patent applications from the competence of the UPC during the 7-year transitional period.

3. Court fees: reductions for small enterprises and micro-entitiesAs regards the procedural fees to be paid to the UPC, the UPC Agreement provides that the plaintiff shall pay a basic fee for starting an action at the UPC as well as an additional value-based fee whenever a case has a value

1 For more information about the Unitary Patent, see http://www.epo.org/law-practice/unitary/unitary-patent/start.html 2 Mid-2018, Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Sweden and United Kingdom had ratified the UPC Agreement.

© P

hoto

by

Die

go P

H o

n U

nspl

ash

9

The European IPR Helpdesk N°30, July - September 2018

above €500,000. The level of fees – as set out in the schedule of court fees published on the UPC’s website4 – have been set with the objective that the UPC shall be self-financing in the long-term. Some fees may therefore appear high – in particular when compared to the low or very low national court fees payable in some countries today. However, other countries do charge significant court fees, and the level of court fees which parties will have to pay to the UPC is actually comparable to the current fee levels in the very successful German patent litigation system. In addition, the UPC Agreement provides not only for legal aid for natural persons who are unable to meet the costs of the proceedings but also for various reductions of court fees, for example a 40% fee reduction for small enterprises and micro-entities. Finally, the UPC will have the power to order reimbursement of court fees if the economic existence of a party is threatened.

4. Powers of the CourtInspired by Directive 2004/48/EC on the enforcement of IPR, the UPC will have wide powers to issue orders and impose measures and remedies, for example orders to preserve evidence, orders to inspect premises, provisional and protective measures against an alleged infringer, including seizure and delivery up of products suspected of infringing a patent. Finally, the UPC may grant permanent injunctions aimed at prohibiting continuation of the infringement and award any injured party damages appropriate to the harm actually suffered as a result of the infringement.

5. Summary of benefits for usersThese Europe-wide powers will make the UPC an effective forum for enforcing European patents and Unitary patents in all the Member States which have ratified the UPC Agreement, thus putting an end to parallel litigation in different countries and reducing costs for all parties involved in patent litigation. Over time, the UPC will greatly contribute to enhancing legal certainty for all users by developing a harmonised body of substantive patent law relating not only to patentability but also to issues such as scope of protection, rights conferred and limitations of the rights conferred by patents.

III. The role of national courts

The start of the UPC will not imply that national courts will cease to exist from one day to the next. Not only will national courts continue in future to deal with litigation involving national patents as well as litigation concerning issues such as employees’ inventions, proprietorship, patent licensing including compulsory licensing5, they will also continue to deal with litigation involving European patents which have been opted-out from the competence of the UPC. It should be noted that Unitary Patents cannot be opted-out. Over the full transitional period of 7 years, the opt-out scheme will be maintained to ensure a smooth transition from the existing national courts to the UPC.

In addition, during the transitional period, plaintiffs – whether patent proprietors, licence holders or third parties – may freely decide to initiate infringement actions and revocation actions relating to European patents either before the UPC or before the national courts or other competent authorities of one or more Member States. Once a plaintiff has chosen a particular forum (having jurisdiction under either national law or the UPC Agreement), that forum will have exclusive jurisdiction to deal with the action. Where proceedings are pending before a national court at the end of the 7-year transitional period, the action will be dealt with by the national court concerned.

IV. Preparations for the start of operations of the UPC

Shortly after signing the UPC Agreement in February 2013, the Signatory States established a Preparatory Committee tasked with preparations for the start of operations of the UPC6. Numerous issues and challenges have been addressed over the years in that framework, including the UPC’s IT systems and electronic case management system, human resources and the training of judges, budget and finances, as well as the indispensable secondary legal texts, in particular the Rules on court fees and legal aid, Rules governing the UPC’s Registry, Rules on Mediation and Arbitration, a Code of Conduct for representatives, and, last but not least, the UPC’s Rules of Procedure which will contribute greatly to providing simple, quick and efficient judicial procedures from day one of the Court.

For questions please contact:

EPO’s Directorate European and International Legal Affairs, PCT

International_Legal_Affairs@epo.org

3 The latest version of the UPC’s Rules of Procedure (18th version, 15.3.2017) is available at https://www.unified-patent-court.org/documents4 See https://www.unified-patent-court.org/documents?page=15 See the overview of Member States’ national patent litigation systems at http://www.epo.org/learning-events/materials/litigation.html6 See https://www.unified-patent-court.org/

© P

hoto

by

Thom

as M

artin

sen

on U

nspl

ash

10

The European IPR Helpdesk N°30, July - September 2018

Adrian Howes4iP Council

You have ticked all the boxes; you have created a successful business or technology and you have wisely protected it through a well-considered intellectual property (IP) strategy. The strategy may have involved different types of IP: trade marks, design rights, copyright, trade secrets and/or patents. Obtaining this protection has come at no small cost to you (let alone the costs and risk of creating the business or technology it seeks to protect). You recognised that this protection has numerous potential advantages, and you may hope that it will increase the value of your business, enable you to better collaborate with others or help protect your business against competitors.

But what if the competition does not care about your investments and protection and they are happy to “wilfully” or “blindly” infringe and trespass on your IP rights? And worse, you are an SME with limited funds, personnel and expertise at your disposal to deal with this. What can you do? In the end, an IP right is only of real use if you are willing and able to exploit it, which means in the worst case enforcing your rights through court proceedings - as a right that cannot practically be enforced is no real right. While large companies may have the resources to do this (though even they can equally suffer from wilful infringement1), for SMEs this is a real issue.

Plus enforcing your IP rights to stop such infringement may not be straightforward. The competitor may be based or operate in another jurisdiction; court proceedings may be too complex, lengthy or costly; the remedies available inadequate; and success may be uncertain.

Furthermore, other SMEs may often be the problem. A large company infringing your IP is relatively easy to identify, but identifying infringing SMEs may be more challenging. How do you deal with a company that may simply disappear from one day to the next,

Protecting your IPR from wilful infringement

or may not have adequate resources to pay for the damage caused to you, or, once a court has declared the infringement, may just start up again under a new name in a slightly different location to continue infringing your rights? And even though a large company may be an easier target, how do you deal with the cost and resources imbalance? This again can be a significant concern.

In truth, most courts are not well placed to deal with these issues - such as awarding increased damages or legal cost awards to the IP right holder for the bad behaviour of the infringer. This lack of negative consequences for bad behaviour exacerbates the problem and does nothing to discourage wilful or even blind infringement (i.e. the infringer simply does not care or even wish to know whether it is infringing). The latter though can be dealt to some degree at an early stage by putting the infringer on notice of infringement, sending a letter informing them of your IP rights2. However, you may simply get a “return to sender” response.

This situation of wilful infringement has also not been helped - particularly in the field of patents - by past rhetoric and terms such as “patent troll” or “patent assertion entity” - understood as entities whose business model is to enforce aggressively their patents3. These terms are often thrown at any patent holder wishing to license its patents, in particular SMEs, with little consideration of the impact this has on encouraging reduced remedies from courts and the continued infringement by companies who care little about abusing others’ IP rights.

Fortunately, there are now encouraging signs that renewed support is being given by governments and policy makers around the world to IP rights owners and SMEs. For example, the European Commission has been keen to provide support to SMEs in R&D, and the recent Commission Guidance on the IPR Enforcement Directive4 very much had

SMEs in mind when it noted that damage awards equating to double royalty fees might be appropriate in certain cases. Equally, a number of countries are actively increasing the expertise of their respective courts – most notably in recent years in China.

Although wilful infringement will always exist, it can be reduced by improving national court systems and available remedies, and by governments and policy makers actively discouraging such infringement.

The problem of wilful infringement is particularly acute for patents. Part of the reason for this is that for some technologies it can be difficult to prove infringement. Furthermore, the alleged infringer of your patent will invariably claim that it is neither infringed nor valid, which in turn means you have to show that its assertions are incorrect. It is also always possible that new prior art may be found or new arguments made than those originally considered by the granting patent office. That said, if a court judges a patent to be infringed and valid, the patent will be all the more valuable for it.

A good example of wilful patent infringement faced by SMEs is the EPO’s case study of Picote5, a Finnish company. This innovative company is in the business of drain cleaning. Not long ago this industry was still using old

1 Please see “Patent Trespass and the Royalty Gap, Exploring the Nature and Impact of “Patent Holdout”” by Bowman Heiden and Nicolas Petit, 4iP Council, June 2017.2 Please note that such a letter should be written with care, following legal advice, as some countries place limitations on what can be said due to concerns relating to groundless threats or unfair competition.

3 Please see “Are PAEs a Threat to Europe?” by Igor Nikolic, 4iP Council, June 2018.

Adrian Howes4iP Council

11

The European IPR Helpdesk N°30, July - September 2018

tried and tested technologies to clean and repair pipes. However, Picote broke the mould to develop new technologies in this area. In doing so, it created new ways for internally repairing leaks in small pipes that did not require ripping up floors or walls. Through a mix of clever new cutting tools and pipe coatings it was able to do something which no other company could.

Fortunately, its management also had the foresight to invest in protecting its technologies by applying for patent rights in these areas. Yet it did not take long for competitors to start copying Picote’s methods and tools, especially as reverse engineering them was a relatively simple matter.

Since 2012 Picote has faced infringement of its patents. However, despite this, Picote’s management has supported its continued investment in IP rights and has gone so far as to enforce its patent in Finland against a competitor and is looking to get out-licensing deals for its IP rights.

The example of Picote nicely shows the potential value of IP rights to SMEs, but also that its value lies only in the willingness to enforce it, if necessary. However, Picote had some advantages that are important lessons: it had a supportive management with a strong belief in the value of its IP rights, a well-considered IP rights strategy and, not least, the chance to enforce its IP rights in its own country.

Another relevant EPO case study is that of Fractus6, a Spanish telecommunications SME, which also faced problems of wilful infringement relating to its antennae technology. This company, which actively sought to license its technology, faced difficulties over a number of years, until it engaged a US law firm on a “no-win, no-fee” basis, whereby the law firm would not charge Fractus but would receive a share of the eventual damages award, if successful.

Simply bringing these enforcement proceedings led to a number of companies agreeing to a licence with Fractus.

This success shows that even in the US, a notoriously expensive jurisdiction in which to bring proceedings, it is possible as an SME to successfully assert good quality IP rights, and to get support from others whether it be service based, financial or a mix of both.

Law firms, IP consultants/monetisers, IP venture capitalists and even insurance providers are all possible sources for such support to an SME, and should be considered by an SME in developing a comprehensive strategy to support its efforts to protect its IP rights and stop infringement. Such entities can provide a wealth of experience, especially in their respective countries.

It only takes one successful infringement claim against a company to reduce significantly continued unlicensed, wilful infringements by others. Key to this is picking the appropriate target(s). Part of that will depend on: the nature of the product; the location(s) of the possible target(s); the potential impact of a finding of infringement on the target (such as an injunction preventing the manufacture or sale of an infringing product) and other infringers; the likely cost, length and complexity of the proceedings; and the available support network. This will require careful consideration with IP lawyers or similar experts.

As noted in the Picote case, sometimes the easiest target is the one infringing in your

home jurisdiction. However, using your home jurisdiction may not be possible, if no good target is infringing there, or even the best place, for example if another country might be where the target manufactures or has greater sales. Just stopping the manufacture of a product or its import is potentially a huge threat to an infringing company.

However, while a court judgment might lead to an injunction, some courts may require the posting of a lot of money as security against the injunction pending an appeal. So it may not in the end be possible for an SME with limited resources to enforce its IP rights quickly. An SME will need to persuade the court as to what is a reasonable and proportionate bond given the situation.

Also, some countries have highly experienced courts, whereas others do not. This is very important in considering where to enforce. As maybe whether a country has courts or procedures which serve specific SME needs or simple IP rights cases, such as the UK’s Intellectual Property Enterprise Courts. Such courts may help keep costs down.

Costs are another important factor to be considered, and whether you may be able to recover some of your legal costs from your opponent should you win. Some countries allow recovery and others either do not or have very low caps on this.

There are numerous other factors that need to be considered in addressing wilful infringement. Outlined above are simply some of them for developing successful strategies to protect your IP investments.

Fortunately, in Europe at least, enforcement of IP rights may become simpler in the future with the forthcoming Unified Patent Court, the procedures of which take into account some of the concerns of SMEs. Furthermore, together with increasing awareness of the concerns of SMEs, better experienced IP courts, more adequate remedies, and governments and regulators providing increasing support for the enforcement of IP rights, the future is looking less bright for wilful infringers.

4 Communication, Guidance on certain aspects of Directive 2004/48/EC (COM(2017) 708), Section II, 1.5 European Patent Office SME Case Studies, Picote.6 European Patent Office SME Case Studies, Fractus.

© Photo by Samuel Zeller on Unsplash

12

The European IPR Helpdesk N°30, July - September 2018

The annual Plagiarius Prizes have been granted to the most flagrant imitations since 1977. What has been the evolution in these counterfeiting practices and what is your take in the fight against them?

Back in the 70s, 80s and 90s, counterfeiting was a cottage industry where the plagiarised (consumer or luxury) products were manufactured amateurishly and of poor quality. Many counterfeiters still use inferior materials, deliberately omit quality and safety controls and produce under degrading working conditions and thus recklessly put the health of factory workers and consumers at risk. However, nowadays, due to the experience and know-how gathered over the years, more and more fake products are available at diverse prices and quality levels, from cheap and dangerous knock-offs to high-quality imitations that are hardly cheaper than the original product. In these times of Internet and globalisation, counterfeiting has developed into a professionally operating business with a global network, affecting all industrial sectors.Statistics reveal that China is still the number one country of origin of counterfeits. However, at the same time, many Chinese companies develop from the extended workbench of Western enterprises and become serious competing firms that successfully operate in global markets. Companies from industrial nations are often those responsible for ordering or importing these imitations.Western offenders select a competitor’s successful product and purposely check whether the product is protected by intellectual property. When no such protection exists, they blatantly copy the product.Since 1977, Aktion Plagiarius e.V. grants its anti-prize “Plagiarius” to manufacturers and distributors of the most flagrant plagiarisms and counterfeits. The goal is to denounce and shed light on the unscrupulous business practices of counterfeiters who pilfer intellectual property and pass it off

INTERVIEW

“IP rights should be registered in all relevant markets”

In this issue we have interviewed Christine Lacroix, Consultant/Media Spokesperson at Aktion Plagiarius e.V.

as their own creative achievement, as well as to raise public awareness of this complex problem that concerns industry, consumers and policy makers. The “Plagiarius” award remains, nevertheless, silent about whether a plagiarism is legal or otherwise.

How would you classify today’s different types of infringers?

Unfortunately, the “business model counterfeit” is extremely lucrative while the risk of being prosecuted is far too low. Accordingly, the offenders are comprised of unimaginative competitors and unscrupulous free riders, from small-time up to organised criminals, and - recently verified - terrorist groups. The latter use cigarette smuggling and trade of counterfeits to finance their criminal/terrorist activities. With regard to the world-wide distribution of illicit goods, they often use the existing infrastructure, for example traffic in drugs, arms and human beings.In any case, cheap copies are never created inadvertently. Rather, the counterfeiters act deliberately, unscrupulously and driven by greed.

Does infringement indiscriminately affect any type of business or do you think, on the contrary, that small businesses face more infringement cases than big ones? If yes, do you think that small businesses usually lack IP protection and/or enforcement strategies?

I do not think that being affected by plagiarism is a matter of company size but rather of innovation and creativity skills and above all market success. Counterfeiters only copy market-ready products for which there is already a demand and thus minimise their own entrepreneurial risk.Our advice for SMEs: To best secure their product know-how and their trade marks against theft, they should clearly signal to potential offenders that they do not accept product imitations and focus on a holistic strategy that involves legal, organisational and, where appropriate, technical measures.Our most important recommendation: Register IP rights to effectively fight product and brand piracy:1. IP rights should be registered in all relevant

markets – production and sales countries.2. IP rights should be registered early (prior

to a potential offenders’ registration).3. Technical products should not only be

protected by patents, but additionally by utility models and design patents. These latter IP rights are inexpensive and above all easier and quicker to enforce. Imitators often act according to the principle “It’s all on the surface” and thus the design patent is generally a strong instrument against plagiarism.

4. As an alternative to legal proceedings – and also considering the cost-benefit-ratio – it has proven successful in specific cases to work with the local authorities and take civil action.

Registered IP rights are also a prerequisite in order to have fakes and plagiarisms removed from online platforms, and in order to cooperate with customs in the form of seizures - a very effective instrument to already ward off counterfeits at the borders.

The anti-prize “Plagiarius”

13

The European IPR Helpdesk N°30, July - September 2018

What is the importance of the Plagiarius Prizes? Do they create any consequences for the copycats?

Our main focus is on a hands-on information and raising public awareness. Aktion Plagiarius does not, nor wants to, pass judgement. However, the campaign can call attention to injustice and proffer the opinion that clumsy 1:1 imitations are unimaginative, morally objectionable and lead to stagnation.It is encouraging that over the past decades the huge publicity of “Plagiarius” has successfully achieved a deterring effect: Prior to evaluating submissions and selecting the “anti-prize winners”, Aktion Plagiarius notifies the imitator that he has been nominated and provides him with an opportunity to share his point of view. Due to fear of public disgrace and bad publicity, many of the nominated imitators have withdrawn their remaining stock from the market, have signed cease and desist letters or even revealed their suppliers.With our diverse activities, such as the annual award ceremony, our Museum Plagiarius, exhibitions, lectures, seminars etc., we have reached consumers and entrepreneurs alike. Showing real examples and giving crucial background information on the topic helps affected companies and contributes to a rethinking towards more fairness, respect and appreciation of genuine innovations and creative work.

Infringement and counterfeit have always existed, but we are nowadays more aware than ever about these practices and the available means to fight them. Why the disparity between the effort to fight these practices by policy makers, the legislative, etc. and its prevalence?

Globalisation, digital communication, the Internet and gullible (online) bargain-hunters are four very strong catalysts for the rampant spread of brand and product piracy. High profits and low risks do one more thing. And as long as there is demand for copied products, there will be adequate supply. That is why realistic information and awareness in the consumer world is crucial.One problem is that the Internet is barely controllable: Although international police authorities close down tens of thousands of websites for trade of counterfeits annually, the supply of illegal fakes and design imitations is unabatedly high. Often,

INTERVIEW

these vendors reappear in a minimum of time with new brand and domain names to continue their business. Also, well-known global eCommerce platforms do not only offer original goods but also large scale illicit plagiarisms and counterfeits. Mainly, the last-mentioned are being distributed by third-party suppliers who change their (fake) identities whenever required, and successfully veil themselves in the anonymity of the World Wide Web. Practice has shown that voluntary commitments and promises with public appeal of online platforms to stronger fight product and brand piracy are woefully insufficient.

Consumers are looking for high-quality products but are not always ready to pay a high price, so do you think it affects the success of counterfeits? What would be your solution?

It’s true: At shortest intervals consumers are looking for new multifaceted products of the highest quality and attractive design. I think that two factors are responsible for the success of counterfeits:1. Consumers are label- and bargain-hunters

at the same time.2. A lack of appreciation of and respect for the

original product.

When it comes to buying fake products, consumers often apply double standards. Seeing an alleged bargain, all scruples vanish into thin air and social standards in the counterfeiters’ factories do not seem to matter anymore. In fact, original and plagiarised products are only misleadingly similar at first glance. Thus, consumers should not delude themselves into thinking that an identical product appearance automatically implies the same quality, functionality, precision and safety. As markets regulate themselves by supply and demand, each consumer bears considerable responsibility: Users who deliberately purchase counterfeit products not only specifically undermine the brand name producers, they also support child labour and criminal business practices.Experience shows that many consumers are not aware of the fact that product development is a very time-consuming and costly process and that each new product is the result of creativity, technical know-how, entrepreneurial spirit, perseverance and passion. Therefore, innovative companies should enthuse consumers about the original product and convince them of the added

value of their product in comparison with a visually identical but substandard plagiarism.

Politicians, IPR organisations, entrepreneurs, teachers, parents – they all should contribute to a better understanding of the risks, damages and circumstances of counterfeiting and foster more respect for innovations and creativity.

www.plagiarius.com

Museum Plagiarius, Solingen (Germany)The Museum Plagiarius in Solingen (Germany) displays more than 350 product units, originals of all sectors and their brazen plagiarisms in direct comparison. In guided tours, seminars and consumer events, both industry and consumers experience a ‘first-hand view’ of the problem and receive information about the sweeping extent of the damages and dangers incurred by fakes. The collection is complemented by counterfeits seized by customs.

www.museum-plagiarius.de

Original (left) and copy

2008, Börner Vegetable Slicer

2013, WMF Eggcup

2018, Puky Rutscher

14

The European IPR Helpdesk N°30, July - September 2018

FREQUENTLY ASKED QUESTIONS

The European IPR Helpdesk Helpline answers your questions concerning intellectual property (IP) within three working days. You get practical, and free-of-charge, first-line support directly from our IP experts.

If you are curious about the type of IP queries that the Helpline has recently been dealing with, these are shown in this illustration.

If you would like to talk to one of the IP experts of our Helpline, please dial +352 - 25 22 33 – 333

www.iprhelpdesk.eu/helpline

Your IPR Queries Matter to Us: Ask the Helpline

EU SMEs involved in transnational activities

IP in EU-funded projectsAs part of the dissemination activities of the XXX project, we are presenting a paper in poster format in a congress in the next few weeks. In this poster, we have planned to include a QR code to allow interested audience to download the full paper from the project web page. However, we are not sure if we should include some disclaimer in the paper to protect it.

In our H2020 project one of the beneficiaries has a linked third party, executing certain tasks in the project. How this should be handled in the Consortium Agreement? Shall we include the third party in the CA? Do they have to sign the CA?

We are a young high-tech start-up situated in Germany and are currently in the process of securing intellectual property rights (patent) for a new enabling technology. We are up to this point unfamiliar with the procedure of transferring a patent from one EU Member State to another or from an EU member state to Switzerland (as this might be necessary at a later stage). What legal/tax implications does a transfer of IPR within the EU have? I am painting a picture for a competition, for the SAA. In the picture I want to put the poem by John Macrae “In Flanders Fields”. Is this acceptable or will I breach copyright?I invented a new model in order to analyse the structure of prime numbers. As an application of this model I created new algorithms of primality testing. How can I protect my theorems which are useful in internet security? If I publish them the Journal requires me to disclaim the copyright.

On page 19 “Your guide to IP in Horizon 2020” it is said “one new feature of H2020 concerns the granting of access rights to a project’s results, not only to the EU but also in specific cases to Member States. Access rights for the EU’s Institutions will be granted on a royalty free basis...”. What is the scope of the term “access rights” and “project results”? Do those terms involve background IP? I assume that access rights do not mean that a license is granted to the EU?

Exhibition organisers’ liability for IP infringementWe would like to know what is the responsibility of event organizers and online marketing promotion companies in the case where we have some disputes about companies infringing our IP rights (trade mark and design), which are marketed and sold on the exhibition events and online web site. We have recently had a bad experience on an exhibition where we complained to the exhibition organizer about one company infringing our trade mark and design IP rights at the same time, but the event organizer said that we need to get a court order to do anything against them and from our standpoint they seemed to be protecting the Chinese infringer by discouraging us and offering high-price legal services. The exhibition took place in the EU. Is there a commonly expected behaviour in such cases for event organizers (or online stores), which would quickly limit infringers from continuing to market or sell such products?

We would first like to point out that intellectual property rights (IP) are territorial in nature: they are only valid and enforceable in territories in which they are registered or, in the case of unregistered rights such as unregistered designs or copyright, in which

they are recognised. If the trade fair took place in a country where your IP rights are not protected, then no course of action is available to you as no infringing act has occurred.

The law on IP enforcement is not fully harmonised at EU level, and laws in the context of trade fairs may therefore vary from country to country. The European IPR Helpdesk is here to provide first line advice on questions regarding IP law at EU level and IP rules applicable to EU-funded projects. We are unfortunately unable to help you on questions of national law.

We can tell you however that it is indeed usually necessary to obtain a court order or an administrative decision from the competent law enforcement authorities to have actions against alleged infringers implemented. While trade fair organisers are greatly encouraged to take steps to prevent IP infringement, or to provide assistance to right owners (see our Fact Sheet on this topic), in most countries they have neither the obligation nor the authority to take independent action against alleged infringers unless clauses to that effect were inserted in the contract between the exhibitors and the organisers. We therefore encourage you to review the contract which had been signed with the fair organiser for clauses related to IP infringements.

In relation to the sale of IP infringing goods online, a distinction must be drawn between online shops/retailers (such as ASOS) and online marketplaces (such as Amazon or eBay). Online shops take responsibility for the goods which they sell and will be held liable in case they are selling IP-infringing products made by a third party.

Regarding the responsibility of online marketplaces for the sale of IP-infringing goods on their website, while there is no comprehensive EU-wide law covering this topic, there have been some attempts at harmonisation. Under European law (the E-commerce Directive), online marketplaces do not have a general duty to monitor for illegal content or activity – such as IP infringement – and cannot be held responsible for it as such (Article 15) if they are merely acting as a neutral intermediary service provider. However, if it can be shown that they are aware or should be aware that their website is hosting such illegal activity, then they may be found legally responsible for having failed to take steps to prevent and/or stop it (Article 14). Whether that is the case or not will depend on the national law of each Member State, though an official communication to this effect from the IP right holder to the website owners should suffice to presume knowledge.

15

The European IPR Helpdesk N°30, July - September 2018

FREQUENTLY ASKED QUESTIONS

The advised course of action to quickly stop the sale of IP infringing goods online is to first notify the platform/shop of this illegal activity, and in the absence of ensuing effects to seek an injunction through legal action in order to bring an end to the infringing activity and to prevent future infringements. If the online shop or marketplace is based in China and the infringing goods are being sold from there to Europe, you should bear in mind that due to the territorial nature of IP rights mentioned above, customs actions will be available to you in territories in which you have registered IP rights so that you will be able to prevent any counterfeiting goods from being imported into the territory. For example, if you possess an EU trade mark and Community design right, no infringing good manufactured in China may be imported to the EU. You may wish to contact the customs authority and register your IP rights with them so that they can prevent infringing goods from entering the territories in which your IP rights are valid.

Neos Surgery (Cranial Loop) and patent infringement by a company in ChinaI work for a Spanish company; it develops, manufactures and distributes innovative products for neurosurgery. Our product line is a postoperative cranial bone fixation system. We distribute our products in more than 20 markets around the globe and have more than a decade of experience in neurosurgery. We have distributed our products in China since 2014. The product is patented in many countries and we hold rights to a European patent, a Chinese patent and a USA patent. As you know, we have contacted you in the past (in 2015), when we became aware that a Chinese company had made a copy of our product. We have since then worked hard with our IP lawyers, towards understanding the Chinese patent protection/infringement system, gaining and acquiring evidence of this infringement, notarising this evidence, etc. We have not been able to verify whether this company is currently selling this product in the Chinese market (investigations so far have not provided this information), but have recorded an international (alarming) promotion of the replica out of China, for example in commercial fairs in Brazil and Germany. I am writing to you to understand how the

EU laws and regulations, etc. could help us in avoiding their entry into the European market.

As you probably know, patents are territorial titles and their geographic scope of protection is limited, depending on the country(s) of registration. Put simply, a patent protection is limited exclusively to the country(s) where the registration was obtained.

When talking about the ‘European patent’, its concept is often being misunderstood. For the sake of explanation, the European Patent Convention (EPC) has established a single European procedure for the grant of patents on the basis of a single application and has created a uniform body of substantive patent law designed to provide easier, cheaper and stronger protection for inventions in the contracting states. Grant however gives rise to a bundle of national patents which need to be validated to take effect in the European states designated in the patent (you have to choose these states) - it is not a single patent right (!) Therefore, once the grant formalities have been completed, further steps have to be taken to validate the European patent in the designated states of interest.

The contracting states are: Albania, Austria, Belgium, Bulgaria, Cyprus, Croatia, Czech Republic, Denmark, Estonia, Finland, Former Yugoslav Republic of Macedonia, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and United Kingdom.

In each contracting state for which it is granted, a European patent gives its proprietor the same rights as would be conferred by a national patent granted in that state. If its subject matter is a process, protection is extended to products directly obtained by that process. Any infringement of a European patent is dealt with by national law.

Having in mind the aforementioned, holding rights to a European patent does not automatically mean protection in the whole of Europe. Please check which countries are being covered by your European patent

(we assume not all the contracting states, as enumerated above). If, for example, Germany is not covered, you would not be able to block the promotion activities of the replica at commercial fairs in that country.

In order to avoid potential future infringements of your patent in the countries covered by your European patent we suggest the following: • Due diligence: this is a complex

investigation – a watch on the IP activity of competitors. There are many companies offering for-fee due diligence services.

• You should also file for an application for action with the competent customs department requesting them to take action in the case of suspicious goods being spotted. The following manual explains the procedure for submitting an application for action or a request for extension of the period during which customs authorities are to take action:https://ec.europa.eu/taxation_customs/sites/taxation/files/resources/documents/customs/customs_controls/counterfeit_piracy/right_holders/manual-application-for-action_en.pdf

Forms are available here: https://ec.europa.eu/taxation_customs/business/customs-controls/counterfeit-piracy-other-ipr-violations/defend-your-rights/forms-rightholders_en

Unauthorised reproduction of a doctoral thesis in patent documentsA large part of the introductory part of my doctoral thesis was copied to a patent of a company without any citation or reference to my work. I would like to know if you can advise me on the right steps that I should take in this situation?

Your doctoral thesis would usually be protected by copyright, as a literary work. While copyright does not protect the ideas developed in your thesis (which will always remain free to use or further develop), it does protect the form in which these ideas are expressed - the text itself. Copyright protection allows the owner of the work to prevent third parties from carrying out potentially infringing acts without its consent, such as: reproduction of the

16

The European IPR Helpdesk N°30, July - September 2018

FREQUENTLY ASKED QUESTIONSwork, distribution of the work to the public, translation of the work, etc. Courts usually consider that copyright infringement occurs when a “substantial” part of the work has been copied (which may be the case in the situation described, where a large part of your introduction was copied). In other words, if the company copied your work textually without authorisation, it is likely to be guilty of copyright infringement. The first thing to do in that case is to identify who owns the copyright on your work: you, or (as is often the case), the university/institution where you did your PhD. This question is relevant since this will help you identify who owns the rights, and therefore who has the right to take steps in relation to infringement. If your institution owns the rights to your work, you cannot take any steps concerning infringement without consulting them. Once this is sorted, you and/or the institution may take some steps to enforce your rights - firstly, by informing the company via letter of the existence of an infringement. You should include some examples/proofs of the alleged infringement in your letter, and ask for compensation (in this case, the patent documents are published already - so we do not think it is possible to amend them in order to remove your text or in order to add your name). You can read more about such letters in our Fact Sheets on enforcement: https://www.iprhelpdesk.eu/sites/default/files/newsdocuments/Fact-Sheet-Defending-and-Enforcing-IP.pdf

https://iprhelpdesk.eu/news/ip-enforcement

As in any case of infringement, other resources are always possible if the company refuses to compensate you. You may even start litigation proceedings for copyright infringement. We would like to stress however that this will not make much sense in your case: the fact that a part of your thesis was “stolen” for the purposes of a patent application does constitute infringement, but you have not suffered any direct losses because of that infringement; and since the patent is published the possibilities of asking the court for an injunction (an order to stop the infringement immediately) does not seem likely to us. The only thing you can do is ask for compensation - but as mentioned, this may prove difficult in the absence of any direct loss on your side.

How to protect my pictures from being used by others without my authorisationI’m a photographer, specialising in cycling. Quite often, what happens is that brands and especially media outlets use a photo of mine without permission. From what I have gathered after some research, if I register the copyright of my photos, it should help me to pursue these unauthorised usages more successfully.My only problem is that the very nature of my job means that the number of photos I need protected grows incrementally, week after week. Is there a way to do that? The solutions I’ve found so far covers big batches and no incremental growth.

Photos are protected by copyright as long as they are original. Copyright arises automatically and is free of charge - there is no need to register it. As soon as a photo is taken in any country which is a signatory to the Berne Convention for the Protection of Literary and Artistic Works, copyright protection automatically arises in every other country which is also a party to the Convention. There are currently 167 member countries of the Berne Convention, which includes all EU Member States.

Despite the automatic nature of copyright, it is common practice to include a copyright notice, in order to inform third parties of the existence of such rights. A copyright notice can for instance take the following form: © [name of copyright holder] [year of creation – current year]

Professional photographers usually include such notice on each picture as a semi-transparent “watermark” covering some part of the picture – therefore, in order to use the picture without the watermark, third parties have to contact the photographer and request the original.

While respecting the principle of formality-free protection established in the Berne Convention, several Berne Convention parties (including a few European countries but excluding UK) have established voluntary national registration systems for copyright. A registration certificate does not in itself create any intellectual property right, and therefore does not offer any protection. It can be, however, considered as a presumptive evidence of copyright ownership and serves as proof of the date of the photo’s creation - especially in litigation - if you ever need

to enforce your copyright rights in court. For the applicable fees, please directly contact the respective national copyright registering/recording bodies (if existing); a list of these can be found here: http://www.wipo.int/export/sites/www/copyright/en/registration/pdf/a1_copyright_offices.pdf

As mentioned, there is no such body in the UK. Having in mind the aforementioned and the nature of your works, we do not consider registration of your photos as a useful idea. As the copyright holder, you are already able to prevent acts such as the unauthorised copying or distribution of your photos without your prior authorisation.

Using a project acronym identical to an existing TMI am a Project Manager of the H2020 project X. We just found out that there is a company which has a registered trade mark X. Does that constitute a problem for our project name?

First of all and as a preliminary remark, trade marks are regional titles and their geographic scope of protection is limited and depends on the country(s) or region of registration. Put simply, the trade mark protection which one obtains will be limited exclusively to the country(s) or region (EU) where the registration was obtained.

As a general principle, participants in EU-funded projects should refrain from using acronyms which are identical or similar to registered trade marks of others, especially when applying such acronyms in similar areas of activities and on the same territory on which they were registered as trade marks. Under certain circumstances, this could be regarded as an unauthorised use of a trade mark and lead to a trade mark infringement. On the other hand, not all uses of logos which are identical or similar to registered trade marks lead to legal consequences.

Having in mind the aforementioned, you should first check in which country(s) the acronym that you are using has been registered as a trade mark. If the registration was made for example in Spain and/or Bulgaria, and you plan to use your acronym only in Italy and Belgium (where, for example, there is no such trade mark), you are on the safe side.

17

The European IPR Helpdesk N°30, July - September 2018

FREQUENTLY ASKED QUESTIONSIf the territory of registration overlaps with the territory in which you are planning to use your acronym (e.g. Czech Republic), you should then check the goods and services for which the trade mark has been registered. The proprietor of a trade mark registration is entitled to prevent all third parties not having his consent from using identical signs in the course of trade (the interpretation of this condition varies however from country to country) for similar or identical goods and/

or services and such use creates a likelihood of confusion on the part of the public on the territory of registration.

Put simply, if you plan to use your acronym in the territory in which it is already registered as a trade mark, in connection with similar or identical goods/services, and your future activity might have a commercial character (“used in the course of a commercial activity with a view to gain and not as a private

matter”), then the use of such project acronym might be potentially considered as a trade mark infringement. In such a case, a decision about changing the acronym would be advisable. On the other hand, if the use of your acronym lacks commercial character (this is to be assessed by a relevant professional) you may be on the safe side.

The European IPR Helpdesk on tour: Take a look at a selection of our recent events

In the last three months the European IPR Helpdesk Team participated in a number of IP events all over Europe, and provided several IP workshops building capacities in IP management among SMEs and researchers.

Spanish TourPamplona, Spain

17 April 2018

ETPN Conference 2018 Berlin, Germany

29 May 2018

StandarDays @CenCenelec Brussels, Belgium03-04 May 2018

World IP Day

Ville de Luxembourg, Luxembourg

26 April 2018

World IP DayValencia, Spain26 April 2018

Meet us at these upcoming conferences:• 10–11 September 2018: Berlin, Germany

EIC Innovators’ Summit 2018• 4–6 December 2018: Vienna, Austria

ICT 2018: Imagine Digital - Connect Europe

Upcoming IP training events:• 20 September 2018: Athens, Greece

ATHENS! IPforBusiness Training • 09 October 2018: Porto, Portugal

PORTO! IPforBusiness Training

Upcoming webinars:• 04 July 2018: Maximise the Impact of

Horizon 2020 project results• 12 Sept 2018: Introduction to IP• 26 September 2018: IP

Commercialisation • 17 October 2018: IP Management in

H2020 • 31 October 2018: Technology Transfer • 07 November 2018: Geographical

Indications• 14 November 2018: Freedom to Operate

in Horizon 2020

• 21 November 2018: IP Management in H2020

• 28 November 2018: Effective IP and Outreach Strategies Help Increase the Impact of Research and Innovation

• 12 December 2018: Impact and Innovation in H2020

• 19 December 2018: Maximize the impact of H2020 project results

For further information, please have a look at our online event calendar.

BERLIN! IPforBusiness Training

Berlin, Germany

31 May 2018

18

The European IPR Helpdesk N°30, July - September 2018

1. No less than………..provisions of the Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) are dedicated to the enforcement of IPRs.

2. The Enforcement Database (EDB) is a secure……………….designed for customs and police to find the IPR, products and contact information uploaded by rights holders including product details, authentication signs, images, logistics, etc., which help enforcers to detect counterfeits.

3. Leading trade fairs are also entitled to issue so-called Exhibition Priority………., certifying that a product has been exhibited at a trade fair.

4. When seeking to declare the invalidity of a trade mark on the basis of bad faith, the burden of proof regarding the existence of bad faith lies with the person that…………..the invalidity.

5. To ensure proximity to users, the new Unified Patent Court in the first instance comprises not only a central division – with its seat in……..and sections in……………and in…………….– but also some 15 local and regional divisions set up in the Member States.

6. Since 1977, Aktion Plagiarius e.V. grants its anti-prize “……………..” to manufacturers and distributors of the most flagrant plagiarisms and counterfeits.

INFRINGEMENT AND ENFORCEMENT QUIZ

You can now test the lessons learned with this new Bulletin thanks to the following quiz. Find the missing word in the following sentences:

PATENT QUIZ

Did you take your medicine?

Many patients with chronic diseases do not take medicines as prescribed, possibly limiting the effectiveness of those medicines. This can lead to disease relapse and recurrence.Imagine tablets containing a sensor communicating with a monitoring system. When it comes into contact with fluids in the stomach, the sensor is activated and communicates this to the monitoring system.

Using ESPACENET, try finding the patent that covers this invention.

19

The European IPR Helpdesk N°30, July - September 2018

The breathing shirt

A team of researchers from MIT has developed a sport suit which incorporates microbial cells into flaps that allow it to self-ventilate. This new fabric combines biological systems and engineering. The clothing is made from latex and is covered with ventilating flaps that open and close depending on how much heat your body puts out. What is controlling the flaps is

Usually, we start our searches by identifying the most pertinent aspects of the invention – common technical features that may be found in related patents – and for each aspect, defining a comprehensive set of synonyms. In this case, this approach would prove to be in vain. Those are the patents you would find by combining: sport - ventil* - shirt*.

Similarly, MIT combined with shirt does not result in a list of patents containing the relevant patents which we are looking for.We will approach this search by looking for the inventor names mentioned in the related articles describing the invention.

One can easily find relevant articles like this one by Googling shirt ventilating MIT. This article links to a more scientific one mentioning a scientific publication and the whole team behind this innovation:

Lining Yao, concept creation, interaction design and fabrication, MIT Media Lab. Wen Wang, biotechnology and material science, MIT Dept. of Chemical Engineering. Guanyun Wang, industrial design and fabrication, MIT Media Lab/Zhejiang University.

SOLUTION PREVIOUS PATENT QUIZ

US2018154627 (A1) - Methods and apparatus for hygromorphic shape control

not something you’ll find woven into your usual workout gear – it’s bacteria. Strain of E. coli are printed onto ventilating flaps in the workout suit. These flaps open and close in reaction to the heat and sweat generated by an athlete’s body.

Watch this film to know more about this invention.

Helene Steiner, interaction design, MIT Media Lab/Royal College of Art.Chin-Yi Cheng, computational design and simulation, MIT Architecture.Jifei Ou, concept design and fabrication, MIT Media Lab.Oksana Anilionyte, fashion design, MIT Media Lab/Royal College of Art.Prof. Hiroshi Ishii, direction, Tangible Media Group, MIT Media Lab.

An ESPACENET search on the inventor Lining Yao combined with Massachusetts results in this list, out of which you can find a patent relating to our invention:

The claim of this patent relates to the 3D printer used to produce such ventilated shirts.

Interestingly, the patent does not relate to the shirt itself but the apparatus used to produce them.

1. What is claimed is: 1. An apparatus comprising a 3D printer, wherein the 3D printer is configured to apply hygromorphic material to a first side of an object, in such a way that:• (a) the amount of the hygromorphic

material that adheres to the first side varies substantially from region to region of the first side;

• (b) the hygromorphic material adheres in a first spatial distribution on the first side of the object, which first spatial distribution is the amount of hygromorphic material adhering to the first side as a function of spatial position; and

• (c) the hygromorphology of the object, after the hygromorphic material is applied to the first side, (A) depends at least in part on the first spatial distribution, and (B) includes changing from a state in which the shape of the object does not include a sharply angled bend to a state in which the shape of the object includes a sharply angled bend.

SOLUTIONS TO IP AND FASHION QUIZ

Using ESPACENET, try finding the patent that covers this invention.

20

The European IPR Helpdesk N°30, July - September 2018

The European IPR Helpdesk project receives funding from the European Union’s Horizon 2020 research and innovation programme under Grant Agreement No 641474. It is managed by the European Commission’s Executive Agency for Small and Medium-sized Enterprises (EASME), with policy guidance provided by the European Commission’s Internal Market, Industry, Entrepreneurship and SMEs Directorate-General. Even though this Bulletin has been developed with the financial support of the EU, its content is not and shall not be considered as the official position of the EASME or the European Commission.

Neither EASME nor the European Commission nor any person acting on behalf of EASME or of the European Commission is responsible for the use which might be made of this content. Although the European IPR Helpdesk endeavours to deliver a high level service, no guarantee can be given on the correctness or completeness of the content of this Bulletin and the European IPR Helpdesk consortium members are not responsible and may not be held accountable for any use which might be made of this content.

The support provided by the European IPR Helpdesk should not be considered as of a legal or advisory nature.

DISCLAIMER / LEGAL NOTICE

EDITORIAL BOARDThe following members have actively participated to the shaping of the current Bulletin.

External members

Mr Thomas Bereuter European Patent Office (EPO)

Ms Claire CastelEuropean Union Intellectual Property Office (EUIPO)

Mr Andrew CzajkowskiWorld Intellectual Property Organization (WIPO)

Ms Valérie Marie d’Avigneau European Commission

Ms Pascale Foujols Executive Agency for Small and Medium-sized Enterprises (EASME)

European IPR Helpdesk

Ms Alejandra AlujaMs Paula BarnolaMr Cyril DuboisMr Onur EmülMs Claire FentschMs Inès Garlantezec Mr Nicolas Gutierrez DouënelMs Léa MontesseMs Katrin NeisiusMr Jakub RamockiMs Ulrike WaltsgottMs Stephanie WeberMs Nina Weiler

Ms María Teresa Beyeler SapienteLegal Officer, Building Respect for IP Division, Global Issues Sector, WIPO

Ms Barbara WeizsäckerSecretary General, European Exhibition Industry Alliance and European Major Exhibition Centres Association

Mr Adrian Howes4iP Council

GUEST AUTHORS

GLOSSARYWilful infringement: deliberate and intentional infringement of a patent, being aware of the patent’s validity.

Patent troll: pejorative term used to describe the enforcement of a patent for profit making purposes or to disturb competition, and not to develop a product or service based on the patent.

Unitary Patent Court: a court common to the Contracting Member States of the Unitary Patent Court Agreement and thus part of their judicial system. It will have exclusive competence in respect of European patents and European patents with unitary effect.

Should you have any ideas, comments or suggestions related to topics you would like us to cover in future Bulletin issues, please get in touch with us:

European IPR Helpdesk Phone: +352 25 22 33 - 333 (Helpline)c/o infeurope S.A. Fax: +352 25 22 33 - 334 (Helpline)62, rue Charles Martel Email: service@iprhelpdesk.euL-2134, Luxembourg www.iprhelpdesk.eu

Or find us on Twitter or LinkedIn: https://twitter.com/IPRHelpdeskhttp://www.linkedin.com/in/european-ipr-helpdesk

GET IN TOUCH

© European Union (2018)

SUBSCRIPTION

The Bulletin is published three-monthly by the European IPR Helpdesk and it is distributed free of charge.

All issues of the Bulletin are available at www.iprhelpdesk.eu/library/bulletins.