This week in IP: French TM cases plummet, UPC complaints not important, WTO weighs COVID waivers

According to new statistics on European litigation revealed by Managing IP this week, trademark cases in France plummeted between 2015 and 2019.

While the data, provided by Darts-IP, shows that the Paris High Court was the second most popular forum for trademark litigation in Europe after the Milan IP Court, France has seen a notable year-on-year decrease as a whole.

The country saw a 20% drop from 2015 to 2016, a 29% decrease from 2016 to 2017, and a 33% fall from 2017 to 2018.

Sources say the time it takes to get through IP cases and the low damages awards are two possible reasons why trademark litigators may have decided to go elsewhere in Europe.

Click here to read the full analysis – including trademark case statistics for the UK, Germany, Italy and the Netherlands.

Other stories published by Managing IP this week include:

Coffee brands show how IP strategies can grind to a halt

Why confidentiality clubs may allow full FRAND disclosure

Patent budget rises provide opportunity for outside counsel

A (hitchhiker’s) guide to willingness in FRAND

EPO Enlarged Board: computer simulations can be patented

Counsel reveal how pharma can benefit from patent arbitration

SCOTUS ‘shouldn’t eliminate assignor estoppel altogether’

The German Federal Constitutional Court published its annual preview of the important cases it intends to decide during the year, on Tuesday, March 9, but neglected to include the new complaints made against the constitutionality of the Unified Patent Court.  

Two complaints were filed on December 18 2020 against the draft legislation enabling Germany to ratify the UPC Agreement. One was filed by Ingve Stjerna, the German lawyer who made the first complaint against the UPC in 2017, and the other was made by a private individual, a company and an association.

The fact that these new complaints, which are once again holding up German ratification of the UPCA, were not included will likely come as a disappointment to proponents of the harmonised European patent proposal.

The previous complaint, which was decided in March 2020 after Justice Peter Huber announced to Managing IP in November 2019 that he would decide the case in early 2020, was included in the 2018, 2019 and 2020 lists.

Every year, very few cases listed are actually heard and many are just carried over, which makes the fact that the UPC complaints were not listed this year all the more disconcerting.

Gregory Bacon, partner at Bristows in London, says non-inclusion of the two complaints on this year’s list suggests that they will not be decided this year or next.

The World Trade Organization’s TRIPS council gathered on Wednesday, March 10, for a two-day meeting to review the joint India-South Africa proposal for a temporary IP waiver on vaccines and other equipment related to COVID.

The proposal comes amid concerns about vaccine inequality in developing countries. Although the EU, US and UK make up nearly 11% of the world’s population, they have received 50% of COVID vaccinations to date.

Meanwhile, Africa has just over 17% of the global population but just 1.5% of vaccinations. 

Fifty-seven countries, including Pakistan, Bolivia, Mongolia and Egypt, have supported this proposal, but the US, EU, Japan and Brazil have opposed it.

On March 2, the US Chamber of Commerce announced its opposition to this policy. Senior Vice President Patrick Kilbride said in a statement that the proposal to waive IP was a distraction from the work of administering vaccines to billions of people.

“Diminishing intellectual property rights would make it more difficult to quickly develop and distribute vaccines or treatments in the future pandemics the world will face,” he said.

The WTO has yet to announce whether it will accept the waiver proposal.

Yesterday, March 11, a UK-based anti-counterfeiting organisation warned of a potential increase in counterfeiting and illicit trade if “lightly regulated” freeports were introduced in the UK.

Rishi Sunak, the UK chancellor of the exchequer, announced plans to establish eight new regional freeports in the UK earlier this month.

But the Anti-Counterfeiting Group (ACG) has claimed that the misuse of freeports in other countries has led to increases in illicit trade, including counterfeiting, because they are often lightly regulated, which makes them attractive to illegal groups and activity.

Phil Lewis, ACG director, said: “Unless enforcement and policing is strong, [freeports] run a severe risk of becoming transit points and complex distribution centres for the trade in counterfeit goods.

“These zones can facilitate the export of fakes by concealing and disguising consignments of counterfeit products through mixed shipments and false transport documentation.”

In February last year, the European Commission said it was clamping down on freeports and free zones.

According to the Commission, these zones allow counterfeiters to land consignments, tamper with loads or associated paperwork, and re-export the products without customs intervention, disguising the true origin and nature of the goods, and the identity of the original supplier.

The ACG said there must be assurances that there will be effective detection systems at any new freeports, including specialised officers and modern technology, to assist surveillance, inspections and preventative customs controls.

Websites that display links to copyright-protected material under contract may be subject to restrictions imposed by copyright owners, the Court of Justice of the EU confirmed on Tuesday, March 9.

The judgment, which was handed down in a case between German visual arts society VG Bild-Kunst and virtual library Stiftung Preußischer Kulturbesitz (SPK), clarified that a copyright owner can restrict linking by imposing a contractual obligation on a licensee to implement technological measures to protect works against infringement.

The case arose after the two parties negotiated a licence fee and a provisional agreement enabling SPK to display thumbnails of the society’s works.

Bild-Kunst claimed that SPK should have adopted technical measures that would have prevented third parties from integrating the thumbnails via embedding, thus allowing third-party content to be included in a web page.

The court found that the effect of this technique was to make the posted element available to all the potential users of a website. Consequently, the court decided that this was a communication to the public that had to be authorised by the copyright owners.

According to commentators, the CJEU has consistently found that there is an act of communication under Article 3 of the EU’s Information Society Directive where links have communicated protected material to a new public that was not taken into account when the rights owner authorised initial publication of its work.

Nokia and Samsung announced on Wednesday, March 10, that they had made a licensing agreement to cover the electronics manufacturer’s use of Nokia’s inventions in video standards.

Under the terms of the agreement, which will remain confidential, Samsung will make royalty payments for use of the technology.

Jenni Lukander, president of Nokia Technologies in Finland, said: “We are delighted to have reached an agreement with Samsung which further validates Nokia’s decades-long investments to R&D and contributions to multimedia and video technology standards.”

The Finnish telecoms company’s patent portfolio is composed of around 20,000 families and includes over 3,500 patents essential to 5G technology.

A spokesperson for Nokia confirmed that the video licensing deal is separate from the two companies’ existing smartphone agreement.

The deal comes several months after telecoms rival Ericsson filed a lawsuit in Texas against Samsung in a dispute over royalty payments and patent licences.

On Wednesday, March 10, the EPO announced that it had conducted 1,000 virtual opposition hearings as part of its VICO pilot programme, which was implemented last summer.

“This week the EPO reached an important milestone: 1,000 oral proceedings in opposition by VICO since the start of the pilot programme last summer,” said EPO spokesperson Luis Berenguer. “The office is grateful to all its users, interpreters and colleagues for their patience, trust and support in this change.”

The programme originally required the consent of both parties to appear virtually. As of January 4, however, the EPO announced that all examination and opposition proceedings would be virtual until September 2021, even if one or both parties withdrew consent.

This announcement came after the Boards of Appeal (BoA), which sits independently from the office, decided that boards could conduct VICO hearings without the agreement of the parties involved.

The BoA amended its procedural rules to include Article 15a, which sets out “that a board may decide to hold oral proceedings by videoconference if it considers it appropriate, either upon request by a party or of the board's own motion”.

Virtual conferences at the EPO have been controversial. Sources have told Managing IP that some patentees have refused to appear in online hearings as a delay tactic to stall the invalidation of their patents.

In an interview with Managing IP, EPO president António Campinos agreed that some patentees were using the virtual hearings in this manner.

“We had to make this move [to introduce VICO] now to address the growing backlog [of cases],” he said. “I understand discussions around the right to be heard and that parties should be able to state their preference, but you have to counterbalance the right to be heard – or what you understand by it – with access to justice.

“As we speak, that right of access to justice could be denied by one of the parties,” he said.