snIPpets – June 2012
- Volkswagen loses GTI battle with Suzuki
- CJEU confirms "date of filing" of a Community Trade Mark
- No GLEE for claimant as PCC case transferred to the High Court
- You-Q not allowed to use BEATLE mark for wheel chairs
- CJEU rules in Winstersteiger on where to bring an adwords claim
- CJEU rules that F1 mark is distinctive
- ISPs ordered to block access to Pirate Bay website
- Social networking site not obliged to install filtering system to prevent unlawful downloading
- CJEU rules on database rights in fixture lists
- BT and Talk Talk lose challenge to the Digital Economy Act
- O2 ordered to disclose customer details
- CJEU rules on the broadcasting sound recordings in hotel guest rooms
- CJEU rules on the scope of copyright protection for computer programs
- Court of Appeal reverses PCC decision on validity of honey wound dressing
- Defendants CellXion lose out on costs due to conduct
New gTLD Application System reopened by ICANN
The introduction of new gTLDs means that for the first time, domain extensions can be brand names e.g. .Fieldfisher. Applicants wishing to register a new gTLD are likely to be large companies given the expense associated with registering a new gTLD (approximately $185K/£117K).
On 12 April 2012, following an embarrassing "technical glitch" (which enabled some applicants to see details of others), the Internet Corporation for Assigned Names and Numbers (ICANN) was forced to shut down its new generic Top Level Domain (gTLD) Application System (TAS). It has been reported that before the TAS was shut down, 2091 applications for new gTLDs had been submitted. ICANN recently reopened its TAS for 7 days from 7pm on 21 May to 11.59pm on 30 May 2012, giving brand owners a rather small window in which to submit applications for new gTLDs.
ICANN will reveal a list of new gTLD applications on 13 June 2012. Once the 'reveal' has taken place, brand owners and other interested parties will have approximately 7 months to file objections. Information on the grounds of objection and further information generally on the new gTLDs can be found on ICANN's new gTLD website. ICANN also just published on 4 June 2012 an updated version of its guidelines for applicants for new gTLDs.
Enterprise and Regulatory Reform Bill
On 23 May 2012, the Government introduced the Enterprise and Regulatory Reform Bill 2012-13, which includes a number of copyright and design-related provisions.
The Government intends to repeal the exception under section 52 of the Copyright, Designs and Patents Act 1988 (CDPA), which currently limits the term of protection for artistic works which have been produced through an industrial process. The term of copyright protection for an artistic work is life of the creator plus 70 years. Currently if an artistic work is exploited through mass-production, then the section 52 exception only protects that work for 25 years from the date on which the work is first on the market - the same as the term of protection for registered designs. The UK is one of the few EU member states which has this exception. The reform will mean that if an artistic work is exploited by an industrial process, it will enjoy the full term of copyright protection rather than just 25 years.
The proposed reforms to copyright legislation will also enable certain exceptions to copyright and performers' rights under the CDPA to be amended by secondary legislation.
Public consultation on procedures for notifying and acting on illegal content hosted by service providers
On 4 June 2012, the European Commission launched a public consultation on the procedures for notifying and acting on illegal content hosted by online intermediaries. Article 14 of the E-Commerce (Directive 2000/31/EC) currently provides a basis for the development of these procedures, but does not regulate them in any specific detail. The Commission has therefore issued the public consultation to elicit comments from stakeholders as to how effective notice and take down procedures can best be achieved. The consultation aims to cover the issue of notification of illegal content: e.g., whether or not ISPs should put in place mechanisms to notify illegal content. The consultation also covers other issues such as whether particular terms (e.g. "hosting", "actual knowledge") are sufficiently clear and the issue of acting on illegal content: i.e. should ISPs consult the providers of alleged illegal content? The consultation period ends on 5 September 2012.
Agreement on new EU laws for orphan works
The European Commission, European Parliament and Council of Ministers have reached an agreement on a new EU directive regarding orphan works – these are copyright works where the owner cannot be located. Currently, orphan works lie in storage in libraries, museums and other institutions but cannot be digitised or otherwise used without permission until the copyright term expires. The proposals for the new EU directive will allow public libraries and museums across the EU to digitise and make orphan works available online without having to wait for the copyright term to expire. Plans include granting permits to allow specific institutions (such as publicly accessible libraries, educational establishments or museums and archives, film heritage institutions and public service broadcasting organisations) to digitise orphan works. There will however be a requirement for these institutions to carry out a 'diligent search' for the copyright owner before using the material.
The directive still needs to be formally approved by Parliament and the Council which the EU Internal Markets Commissioner has indicated should be in the 'coming months'.
The future of ACTA is still in question after a fresh wave of global protests in June and a recent rejection by the European Parliament (EP).
The Anti-Counterfeiting Trade Agreement (ACTA) has been negotiated since 2007 between the US, Japan, Canada, Australia, Korea, Mexico, Morocco, New Zealand, Singapore, Switzerland and the EU. It aims to establish an agreement for the enforcement of IP rights and sets out procedures and measures to act against large-scale infringement (counterfeit goods, generic medicines and copyright infringement on the internet). The UK, together with 21 other countries, signed ACTA in January 2012 (others e.g. Australia, Canada, Japan, US signed in October 2011). Signatories now need to fulfil their internal ratification procedures.
Because of controversy over copyright on the internet provisions (closer monitoring of internet use/ISPs monitoring customers' communications) some governments (e.g. Poland, Slovenia, Czech Republic, Germany) are postponing ratification and ACTA must be ratified by all signatories to go through. There have been continuous widespread international protests with activists claiming that ACTA will stifle freedom of expression and privacy.
The EU suspended efforts to ratify ACTA in February due to a wave of protests from human rights activists and in May 2012, the European Commission referred ACTA to the Court of Justice of the European Union (CJEU) to determine whether it is compatible with fundamental rights. The European Parliament, however, refused to delay its vote this month to wait for the CJEU's opinion.
On 4 June 2012, four committees of the EP voted for a rejection of ACTA. These positions however are not binding on the Trade Committee which will vote on 21 June 2012 and forward its recommendation to the members of the EP for a plenary vote on 3 July 2012.
The Patent Box will apply a reduced rate of corporation tax to profits from patents and certain other forms of qualifying intellectual property from 1 April 2013. Legislation to implement the Patent Box was included in the Finance Bill 2012, published on 29 March 2012.
It is hoped that the UK's Patent Box will benefit companies as a result of the reduced rate of corporation tax on profits from inventions protected by a qualifying patent. The legislation provides for a 10% corporation tax which will apply to 60% of qualifying profits in 2013-14, increasing to a full 100% of profits in 2017, as part of a phased amendment to tax rates.
Unitary Patent update
On 30 May 2012, the EU Competitiveness Council met to continue the ongoing discussions relating to the adoption of the unitary patent proposals, in particular, the location of the Central Division of the first instance court. Unsurprisingly and as predicted, no agreement was reached. The Danish Minister, Ole Sohn, issued a statement indicating that he hoped and believed that they would 'arrive to a solution by the end of June'. Although EU ministers have been reported as saying that the location of the Central Division is the one remaining issue to be finalised, some industry commentators and MPs have refuted this and implied that there are other underlying issues that also need to be ironed out, such as addressing how harmful and 'prohibitively expensive' the Unitary Patent Court could be for small businesses.
Serving proceedings via Facebook
In February 2012, in AKO Capital and Anor v TFS Derivatives and Ors, a High Court Judge, Mr Justice Teare, granted permission to serve a claim form via Facebook. Proceedings had been served at the defendant's last known address but there was some concern that he was no longer living there.
Under rule 6.15 of the Civil Procedure Rules (CPR), the Court has power to authorise service by a method or at a place that is not one of the traditional methods or places specified under the CPR, if there is a good reason for doing so.
Australia and New Zealand have routinely served proceedings via Facebook for some time but this is the first time it has gone this far in the UK courts and been approved. This decision is in line with a previous decision in 2009 when Mr Justice Lewison allowed an injunction to be served by Twitter because the defendant could not be identified in any other way.
This case indicates that the High Court is willing to recognise modern methods of communication and that it is willing to adapt to social media and the digital age. Claimants will still need to overcome certain hurdles if they wish to serve claims via Facebook in future. They will need to make an application under CPR 6.15 and will need to demonstrate that they have taken sufficient steps to bring the issued claim form to the defendant’s attention by one of the traditional methods.
New registrable image right in Guernsey
A new registrable intellectual property right - the image right – is being introduced under new legislation in Guernsey. The legislation will allow celebrities to register rights related to their image and personality and gain the exclusive right to exploit their image. Guernsey will be the first jurisdiction in the world to introduce such a registrable image and personality right. Having anticipated this summer for the new legislation to come into force, it seems more likely that it will be towards the end of this year.