From March to September 2016 the team is joined by Guest Kats Emma Perot and Mike Mireles.

From April to September 2016 the team is also joined by InternKats Eleanor Wilson and Nick Smallwood.

Friday, 1 July 2016

Kanye West's 'Famous' music video: publicity rights vs the First Amendment

Kanye West’s music video for “Famous” has sparked outrage for portraying naked celebrities in bed, in the form of life-like wax figures. It is not simply the nudity, but the individuals portrayed, which has led to criticism; Rihanna is seen lying next to former boyfriend and abuser, Chris Brown, alleged serial rapist Bill Cosby is featured, as well as Taylor Swift, Anna Wintour and Amber Rose. Subsequent to the release of the video, Kanye tweeted, “Can somebody sue me already #I’llwait” but later deleted it.

Kanye upstaging Taylor Swift at the notorious 2009 VMAs

While Kanye waits, this Kat contemplates on whether publicity rights can help those featured (this Kat thinks specifically of Taylor Swift who, lying next to Kanye in the video, is also mentioned in the song lyrics, ““I feel like me and Taylor might still have sex. Why? I made that b**ch famous.”). It is an unusual issue, as publicity rights are usually invoked by celebrities against companies who use them in unauthorised advertising and merchandising, rather than their celebrity peers. Also, there have been few cases which have been brought to protect moral rather than economic interests. An exception is Waits v Frito Lay, 978 F. 2d 1093 (9th Cir. 1992). In this case, Tom Waits sued Frito Lay for imitating his distinctive voice in an advertisement. Waits had publicly denounced using artistic talent for commercials. The 9th circuit court in California found that the right of publicity was not limited to economic harm, and instructed the jury to consider damages for mental distress.

Since it is possible to claim for damage to non-economic interests, the main challenge potential claimants will have is whether the use of their likeness is ‘commercial’ or ‘expressive’. For the purposes of this post, the California publicity right is analysed because many of the individuals portrayed are domiciled there, and the video premiered and was likely created there.

Is the use ‘commercial’?
To succeed under the statutory publicity right under s.3344(a) of the California Civil Code, use has to be “for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services without such a person’s prior consent…”. Uses which do not require consent include “news, public affairs, or sports broadcast or account, or any political campaign” (s.3344(d) California Civil Code). Since the music video does fit squarely in any of the aforementioned uses, s.3344(3)(e) needs to be considered as it sheds light on when use will be commercial:

“The use of a name, voice, signature, photograph, or likeness in a commercial medium shall not constitute a use for which consent is required under subdivision (a) solely because the material containing such use is commercially sponsored or contains paid advertising.  Rather it shall be a question of fact whether or not the use of the person's name, voice, signature, photograph, or likeness was so directly connected with the commercial sponsorship or with the paid advertising as to constitute a use for which consent is required under subdivision (a)”

A potential argument for proving commercial use is that the release of the video exclusively on the ‘Tidal’ platform, which requires users to pay for content access, functions as a type of advertisement. However, unless Kanye has shares in Tidal, this might not fulfil the criteria that the use be “directly connected with commercial sponsorship” under s.3344(3)(e). Alternatively, it could be argued that music videos are created to encourage people to buy the song, and in this way they act as an advertisement. This argument is more likely to meet the ‘direct connection criteria’, but it is still not a solid foundation for litigation, particularly considering the First Amendment Defence.

The First Amendment Defence
The First Amendment protects expressive uses of celebrity persona against publicity claims.  In California, the ‘transformative use’ test, as developed in Comedy III Productions v Saderup Inc., 25 Cal. 4th 387 (Cal. 2001) is used to determine whether a work should be protected by the First Amendment. The test considers [47] “whether a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness”. The court also noted that [30] “having recognized the high degree of First Amendment protection for noncommercial speech about celebrities, we need not conclude that all expression that trenches on the right of publicity receives such protection…[33] depictions of celebrities amounting to little more than the appropriation of the celebrity’s economic value are not protected expression under the First Amendment.”

This test was applied in Keller v Electronic Arts Inc., F.3d 1268 (9th Cir. 2013) where the court found that the portrayal of a footballer in a video game did not transform the plaintiff’s identity. Considering the aforementioned outcome, it is apparent that Kanye’s video has not transformed the likenesses used. However, claimants may still find it difficult to prove that the use was commercial. Kanye did not use the celebrities because of their commercial value, rather, the use was for the shock factor that could be created because of their personal histories. Each person portrayed was either significant because of her relationship with Kanye or because he/she had appeared in the news, such as Caitlyn Jenner, former US president George Bush, and presumptive Republican presidential nominee, Donald Trump.

Since the music video itself is not for sale, and is arguably an expressive work, this case walks a thin line between a publicity rights violation and First Amendment protection. This Kat suspects it runs too close to the First Amendment to have a favourable outcome for those featured.

Openness, Innovation and Patents

Image via IMDB
The September issue of Research Policy, a multi-disciplinary journal focusing on economic, policy, management and related issues posted by innovation, is out. Research Policy often has IP-related papers, and this issue has a special section devoted to patents edited by Professor Suma Athreye.  I’ve selected three papers for a closer look.

"The paradox of openness revisited: Collaborative innovation and patenting by UK innovators" by Ashish Arora, Suma Athreye and Can Huang (open access.)  Examining the "paradox of openness," in which "opening up to outside sources of knowledge to innovate may weaken the firm's power to capture rents from that knowledge." (Rent, in very simplified economic terms, is excess returns. E.g. the legal profession earns rent by requiring lawyers meet membership criteria and therefore restricting competition.) The authors use comprehensive UK survey data to study how firms set out their strategies. One interesting finding was that firms with incremental innovations (i.e. not breakthroughs), "may be less willing to patent because it makes them a less attractive open partner and perhaps also less able to derive value from collaboration." Firms that are too bombastic about protecting their IP are off-putting (I've heard similar things in the creative industries and non-disclosure agreements.) The authors describe two phenomena in the interaction between patenting and open innovation/collaboration. In "spillover prevention," firms patent to prevent unintended knowledge spillovers in collaborations, in "organizational openness," firms don't patent as it makes them a less attractive partner. Firms are described as leaders and followers in innovation races (followers are sometimes called imitators.)  Leaders are more likely to patent due to "spillover prevention" and followers, due to "organizational openness."

Types and reasons for patent non-use (Walsh et al)
Innovation collaboration and appropriability by knowledge-intensive business services firms” by Marcela Miozzoa, Panos Desyllas, Hsing-fen Leec, Ian Miles (also open access.) The researchers look at the “paradox of formal appropriability mechanisms.” Appropriability is the ability to reap, or appropriate, the returns from investment; in patenting terms it’s the ability of a patent to translate the success of the innovation into financial benefits for the innovator.  Examining a survey of UK knowledge-intensive business services (KIBS) firms, which consistently do not prioritise formal appropriability mechanisms such as patents, the authors find KIBS do use these mechanisms when collaborating.  It’s a nuance on open innovation, and a possible explanation for this paradox is that, “leading innovators may be more likely to stress formal appropriability mechanisms in order to prevent knowledge leakages, but may not value strongly innovation collaboration.”  The answer, is as often the case in economics, is "it depends," and the paper shines an empirical light on collaboration.

Win, lose or draw? The fate of patented inventions” by John P. Walsh, You-Na Leea, and Taehyun Jung focuses on non-use of patents (pay walled.) The study looks a ‘triadic’ patents (patents which have been applied for at the EPO, JPO and granted by the USPTO.)  The key finding is that, “55% of triadic patents are commercialized. We also find that 17% of all triadic patents are not commercialized but are at least partially for preemption, though only 3% of all triadic patents are purely preemptive patents.” Preemption is patenting for strategic purposes, rather than commercial. (You could argue the two are one and the same, but the paper focuses on preemptive non-use, as in strategic patenting with no intention to use the patent.) The paper goes into much more detail, but the punchline is that nearly half of triadic patents are not used, but ‘strategic’ patenting may be less prevalent than popular discourse would have you believe.

Over to you, IPKat readers, as I know you have quite strong feelings about patent, and economic analysis of!

Thursday, 30 June 2016

In Memoriam of David Goldring

IPKat has received the sad news that David Goldring has passed away at the age of 61. David was a highly respected trade mark practitioner in London and this Kat was proud to have met him in both his professional and personal capacities. After reading Law at University College London, David practised initially as a UK trade mark attorney and subsequently as a European one. His career encompassed both in-house and private practice sectors. David's commitment to the trade mark community was best-exemplified by his long-term involvement with MARQUES, where he was a founder member and Treasurer of the organization. In 1984, even before the organization came into existence, he served as a member of the steering committee that contemplated the establishment of a European trade mark owners’ association.

David's son, Simon Goldring, has provided the following information about the burial and other arrangements. Today (June 30, 2016), the funeral will take place at 1.30pm (arrive at 1.00pm/1.15pm) at Bushey Cemetery, Little Bushey Lane, Bushey, Hertfordshire, WD23 3TP. After the funeral, the family will be heading back to 28 Oakleigh Avenue, Whetstone, London, N20 9JH for the afternoon and prayers in the evening at 8pm. In accordance with Jewish mourning practice, the family will be sitting Shiva (a week of mourning). The family will welcome visitors from 2pm-5pm on Friday, Sunday, Monday and Tuesday with evening prayers at 8pm on Sunday, Monday and Tuesday, again at 28 Oakleigh Avenue, Whetstone, London, N20 9JH.

Blessed be his memory.

Wednesday, 29 June 2016

Brexit and UK copyright: the story of a loss

On 23 June 2016 UK voters decided that their country would be better off outside the EU. 

To say the least, the historical outcome of the Brexit referendum will have a tremendously serious impact on the UK, the overall EU integration project, and the remaining Member States alike.

From an IP perspective, it is still very unclear what will happen, and what effects forthcoming developments will have on both UK law and the professional (and necessarily personal) lives of IP rightholders, practitioners, academics, students, civil servants, judges, and public affairs executives alike. 

Serious uncertainty surrounds the destiny of EU-wide registered rights, including trade marks and designs, and imminent EU-wide novelties, such as the Unitary Patent System [see here for an interesting take], in the UK. In the aftermath of the referendum outcome, the complexities of these rights  have seemingly overshadowed what will happen to copyright, an IP right that – it has now become apparent – is territorial only on paper.

During the CREATe Festival held in London last week, an understandably emotional Prof Lionel Bently (University of Cambridge) provided participants with thoughtful remarks regarding the fate of UK copyright. His conclusion? That, overall, Brexit 'freedom' will likely turn out to be an illusion, in the sense that UK copyright might become increasingly irrelevant on a global scale.

As both a non-UK, proudly Italian, citizen who has nonetheless found in the UK a fantastic place to learn, work and have fun in, and someone who has been an enthusiastic follower of EU copyright adventures since her PhD days, I am very concerned about the consequences of the Brexit referendum.

Here are my thoughts (to be hosted also on the Journal of Intellectual Property Law & Practice) on what the future of UK copyright in a post-Brexit world might look like.

UK courts and the CJEU?
What options for UK copyright?

Over the past few years, the copyright laws of EU Member States have increasingly become more similar, less alien to each other, less perched in the summa divisio common law’s copyright/French-style droit d’auteur

On the one hand, EU legislature has adopted several directives that have had the laudable objective of facilitating the free movement of goods and services based on or incorporating copyright works. 

On the other hand, the Court of Justice of the European Union (CJEU) – prompted by questions of national judges – has become a primary player in the EU copyright scene, acting in certain cases as de facto policy- and law-maker.

If and when Brexit happens, what will be the legacy of EU harmonisation in the area of copyright? The answer will depend on what route is eventually pursued.

If the UK leaves the EU but remains in the European Economic Area (possibly the most optimistic outlook in the very aftermath of the referendum), then the relevant body of EU copyright legislation will continue to apply in this country. 

The same could not be however true for CJEU case law, at least from a formal standpoint. Although the judgments rendered in the context of references for a preliminary ruling ex Article 267 of the Treaty on the Functioning of the European Union (ie the types of actions relevant in the area of copyright) would likely maintain a certain relevance for UK copyright, UK courts would arguably lose their power to make themselves references for a preliminary to ruling to the CJEU. In fact Article 267(2) reserves this possibility to the courts or tribunals of Member States. The result would be odd: the UK would still apply EU legislation but its judges would be no longer able to make queries on their correct interpretation (and application).

In any other scenario, the future relevance of EU copyright legislation and CJEU case law in the UK is extremely uncertain. Possibly bound to international copyright instruments only, the UK might decide to pursue routes that – so far – have appeared extremely unlikely to be followed at the EU level. For instance, it could decide to abandon a closed system of copyright defences and adopt an open norm instead, possibly modelled on US fair use.

... in a nutshell
The legacy of EU harmonisation

In times of profound confusion, what appears clear – yes – is that EU action in the area of copyright has BENEFITTED and IMPROVED UK law. 

First, it has created a harmonised space for 28 Member States that, albeit imperfect, is much better – for rightholders and users alike – than what, in a much more fragmented fashion, was the case 20-25 years ago. 

In addition, the harmonising, (possibly even undue in certain cases) efforts of the CJEU have brought increased uniformity and sometimes compelled Member States to either re-think/question certain approaches or meet the challenges facing technological advancement and digitisation of contents and their distribution channels. 

An example of the former is the impact of CJEU case law on the UK notion of originality and the (outdated, yet still formally in place) closed subject-matter categorisation envisaged by the Copyright, Designs and Patents Act (CDPA). 

An example of the latter is the availability of injunctions against intermediaries under s97A CDPA (introduced to implement into UK law ... an EU directive): the jurisprudence of UK courts, influenced by parallel developments at the CJEU level, has developed solidly and thoughtfully and has been looked at (whether with admiration or concern, but in any case regarded as IMPORTANT case law) in other Member States.

Will UK copyright be better off without EU copyright and the CJEU? 

No: the improvements to UK copyright over the past few years are in many instances greatly indebted to parallel developments at the EU level. 

Among other things, losing the dialogue between thoughtful UK judges and the CJEU will be one of the many other great losses for UK copyright.

Wednesday Whimsies

US Chamber Report measures the magnitude of global counterfeiting

counterfeiting copycats are everywhere!

According to the recent Counterfeiting Report from the Global Intellectual Property Center (GIPC) part of the Chamber of Commerce, global counterfeiting remains a 'tremendous and ever increasing global threat'. The report estimated that China alone is the source of more than 70% of global physical trade-related counterfeiting, or $285 billion worth. Physical counterfeiting makes up 12.5% of China’s exports of goods and over 1.5% of its GDP.

However, as the report shows, counterfeiting is far from confined to China (and Hong Kong) - it damages economies and public health across the globe. GIPC have modelled estimates of rates of physical counterfeiting and analysed the value of seized counterfeit goods of 38 economies sampled, totting up to a total of $5.2 billion, which is itself a mere 1.2% of the estimate of total global physical counterfeiting. The full report is available online here.

Unitary Patent

The Unitary Patent has been many years in the making, and its future is still not entirely clear. Dr. Ingve Bj√∂rn Stjerna has published a series of papers on the subject, all of which are available to read along with links to other useful resources here. IPKat readers in particular may be interested in the “expert teams” of the Preparatory Committee, and the immediate implications for SMEs.


CIPA's shining stars will be performing on 5 July at The Borderline in London. You may have heard enough about borders to last you a lifetime recently, but this event promises to be something completely different - a very special night, featuring musical performances from CIPA members, and with profits raised going to Generating Genius, a charity supporting young people from disadvantaged backgrounds in STEM. You can register for the event through the CIPA website, or for non-members, by email. More information is here.

Mars in trade mark dispute with Mondelez International over m&m's 

A pawful outcome for Swedish
 m&m lovers?

The Svea Court of Appeal has ruled that Mars is not allowed to use its lower case m&m's logo in Sweden, as it is too similar to Mondelez International's Marabou brand (see left). Mars Nordic's corporate affairs director expressed disappointment at the court's decision, telling the press: "we have always believed no confusion exists between the colourful m&m's brand — one of the world's favourite chocolate products — and the Marabou M Peanut Brand." 

Marabou's 'm' branded chocolates have been on sale in Sweden since the 1950s. The m&m brand has existed in the USA since 1941, but took a while to expand into the global market. Swedish website The Local reports that Mondelez (then Kraft) signed an agreement with Mars in 1989 promising not to sell m&m's in Scandinavia. This agreement expired, and in 2009 Mars started selling m&m's in Sweden. It is not clear why it took Kraft/Mondelez so long to challenge Mars' use of the m&m's mark. If this decision is of interest you can read a summary of the decision here. Katfriend Nedim Malovic tells the IPKat that non-Swedish speakers will shortly be able to read about the decision in the Journal of Intellectual Property Law and Practice.

Beijing's Intellectual Property Bureau says iPhone 6 and iPhone 6+ infringe patent held by Chinese company

The Wall Street Journal reports that Chinese company Shenzhen Baili won a surprise injunction against sales of Apple's iPhone 6 and iPhone6+ in Beijing based on a design patent for its 100c smartphone. It's difficult to tell at this stage whether the Chinese company is a troll or whether it has a genuine case, but either way, this is an interesting example of what may become an increasingly common sight: Chinese companies using the domestic patent system to successfully attack Western tech giants. The iPhone models in question are still available in Beijing, as the injunction that was issued against their sale was stayed pending an appeal.

Book Review: IP Strategy, Valuation and Damages

I learned a few things reading this book. One, don’t judge a book by its green cover, and two, the IP valuation world is fascinatingly complex. A new book by Michelle Rakiec and Stevan Porter contains some very interesting insights on the evolving world of IP valuation and damages.

The meat of the book begins in the third chapter, where the authors address the principles of valuation.  Here the authors do an excellent job of laying out the principles of valuation and the variations of market, income and cost models.  Their explanation of binomial models and Monte Carlo methods was clear and not scary. (On a side note, not much appears to have fundamentally changed in valuation since this Kat was a bank-kitten at the beginning of the noughties.)

A chapter on damages presents a methodical, clear process for determining how damages might be assessed in the case of infringement.  There is an in-depth discussion of the Georgia-Pacific factors and some handy flow charts.  The authors discuss how courts may view various damages scenarios. For example, where lost profits may be accepted as a damages valuation method even if the patentee isn’t actually selling -- “lost profits also have been awarded when the patentee lost sales of its product not covered by the patent as a result of infringing use of the patented technology in a competitor’s product.”

Gildor Elendil. CC-BY
The section on strategic management of IP covers a lot more ground than just IP.  It looks at wider issues in business risk and financial decision-making.  It provides four generalised intellectual property strategies: commercialise, license, sell and abandon. The final chapter looks at managerial uses of intellectual property and includes a fascinating discussion on the role of IP in signalling. The authors frame signalling as the use of IP to send market signals about business strategy. Patenting activity sends subtle signals about a company’s intentions and can be used intentionally (‘actively’) to encourage a “beneficial competitive consensus.” Using the example of Apple and Microsoft, they detail how strategic signalling of IP assets thwarted Android’s market expansion. In an example of failed IP-backed market strategy, they examine Procter & Gamble’s attempt to use IP to block competitors from entering the new and profitable at-home teeth whitening market (clearly more popular in the US than elsewhere). The strategy back-fired as competitors worked around P&G’s patents and introduced much cheaper whitening products, driving prices and profits down.

An early chapter on the role of IP in society provides a whirlwind tour of IP; it touches on philosophical and policy debates that are interesting but seem a bit out of place. I was a bit frustrated by the use of American football to illustrate innovation in the absence of incentives. One, I associate football with bad food, and two, it’s not a great example. “Professional football teams also have been known to advance new formations and plays despite the fact that successful innovations can be quickly replicated by opposing teams.”  Surely IP over formations would be the equivalent of IP over chess moves – completely against the spirit of competition.

This book is handy for IP-savvy professionals, particularly US-based, who are not au-fait on the financial machinations of IP as an asset.  I found the non-IP/valuation bits clunky, but the IP discussions insightful and clearly written by experts. Ultimately it does what a book like this should to – enables the IP professional to know when to call a valuation expert, and how to have an intelligent conversation on valuation.

Porter, S., Rakiec, M., & In Kimball, A. B. (2015). IP strategy, valuation, and damages. Lexis Nexus. Rupture factor: low  Price: curiously $209 hard copy, $224 e-book

Tuesday, 28 June 2016

A possible way for a non-EU UK to participate in the Unitary Patent and Unified Patent Court?

The IPKat is delighted to receive this paper from Prof. Dr. Winfried Tilmann of Hogan Lovells which suggests that it might be possible for the UK, post-Brexit, to nevertheless be involved in the Unitary Patent (European Patent with Unitary Effect or EPUE) and Unified Patent Court (UPC).  Many have wondered whether this could be the case; few have come up with a plausible legal basis for such a scenario (given that the CJEU ruled the previous proposal for a European patent litigation system incompatible with the EU Treaties for reasons including the involvement of non-EU states).  The IPKat will present the paper and hopes that our dear readers may provide their comments.

EPUE-Reg and UPCA after Brexit
The British voters have voted for a Brexit. What does that mean for the EPUE-Reg and for the UPC Agreement (UPCA)?

There is no immediate effect, since Art 50(2) EUC provides for a two-year period for agreeing on the details of an exit. During that period, the details of any UK participation in the patent package must be agreed upon for the time after the legal effect of the exit has taken place (legal exit).

What are the options for the EPUE-Reg and for the UPCA if a continuing participation of the UK in the patent package is desired?

1. EPUE-Reg 
In case the UK leaves the EU, not having found a solution for the EPUE-Reg, the UK participation in the EPUE-Reg would end automatically with the UK losing the status of an EU Member State (EU-MS). 

However, since one of the two bases of the EPUE-Reg is Art 142 EPC [Merpel notes this is the European Patent Convention, and so independent of the EU and the UK's involvement in it] an agreement may be reached between the EPC member states being UPCA signatory states, including the UK, in the form of a Protocol to the UPCA agreeing that a unitary effect of an EPUE would be extended to the UK on the basis of Art 142 EPC. That agreement would be binding on the Participating Member States (PMS) and the UK on the basis of international law only. It would lead to two parallel unitary effects of the EPUE (1) in the participating member states of the EPUE-Reg (PMS) on the basis of the EPUE-Reg and (2) in the UK on the basis of the agreement pursuant to Art 142 EPC.

Union law would not definitely prohibit such internal agreement between EPC member states. The blocking effect of an EU competence used by the EU normally includes external agreements of the EU-MS on the same matter. But this is not the case, if the EU decides not to make use of its competence or even allow the external agreement by endorsing it. It could be envisaged that the endorsement would be included in the exit-agreement EU-UK. The unitary effect in UK would still be only a matter of international law. The endorsement is only needed for securing the competence of the contracting member states of the UPCA (CMS) to agree on that extension.

a) Art 84 UPCA provides that only EU Member States (EU-MS) may ratify the UPCA. If the UK has ratified at the time of the legal exit, absent any change of the UPCA, the UK (or the other CMS, being the other party) may theoretically cancel the adherence of the UK to the UPCA pursuant to Art 62, 65, 67 of the Vienna Convention, because a fundamental circumstance has changed (Art 62 Vienna Convention).

b) What kind of change of the UPCA would admit an adherence of the UK to a modified UPCA after the legal exit?

(1) The CJEU, in its Opinion 1/09, has decided, that the UPCA may be concluded only if the referral procedure under Art 267 TFEU is not jeopardized. Pursuant to Art 21 UPCA and its referral to Art 267 TFEU the UPC is obliged to refer all questions on the construction of EU law applied by it to the CJEU. Therefore, the requirements of Art 267 TFEU are met to a full extent. It is true that under Art 267 TFEU only the courts of EU-MS are permitted to refer questions pursuant to Art 267 TFEU, but the UPC is a common court of EU-MS (Art 71 a Brussels Ia-Reg) and would not lose that character, if a non-EU-MS (UK) who has ratified the UPCA being an EU-MS would continue to participate in the UPCA after leaving the Union, because that state, in ratifying, had fully accepted Art 21 UPCA and Art 267 TFEU and is bound to accept the Union law as defined by the CJEU. A statement to that effect could be included in the agreement based on Art 142 UPCA and also be endorsed in the exit-agreement EU-UK.

(2) Therefore, Union law would allow a change of the UPCA permitting a CMS, who had been an EU-MS at the time of ratification, to remain as a member state of the UPCA (CMS). This change could be made by the Administrative Council of the UPC pursuant to Art 87 (2) UPCA, if the exit-agreement (having the legal status of Union law) would contain a parallel text. In that case, no ratification by the CMS would be necessary (see 3. a below).

3. Implemention
a) EPUE-Reg 
The possibility of an extension of the unitary effect of an EPUE to the UK could be provided for by a Protocol of the Administrative Committee prepared by the Preparatory Committee. The competence of the Administrative Committee for that part of the proposed Protocol could be based not only on Art 142 EPC but also later on the exit-agreement UK-EU. If the Protocol were based (also) on the exit-agreement UK-EU, the competence of the Administrative Committee could be based on Art 87(2) UPCA, because the Protocol would bring the UPCA into line with Union law. In that case ratification by the CMS or by the UK would not be needed.

b) UPCA 
The same applies for the part of the proposed agreement of the CMS according to which a CMS who, at the time of ratification, was an EU-MS but does not continue to be an EU-MS may stay within the UPCA. This change may be brought about by a Protocol to the UPCA based on Art 149a(1)(a) EPC and later on the exit-agreement UK-EU, in combination with Art 87(2) UPCA, because the Protocol would bring the UPCA into line with Union law. Ratification by the CMS and by the UK would not be needed.

4.  The way forward (timetable)
a) The UK should use its present position as EU-MS and deposit its instrument of ratification of the UPCA as soon as possible. In that case the UPCA could enter into force well before the exit-agreement becomes operative.

b) After the entry into force of the UPCA, the Administrative Committee of the UPCA should amend Art 84 UPCA in saying that a CMS will not lose its contractual position if it leaves the EU.

c) The Administrative Committee should, at the same time, establish a Protocol containing an agreement of the EPC-MS providing for an extension of the unitary effect of an EPUE to the UK.

c) Both agreements should be endorsed in the exit-agreement EU-UK. With the exit-agreement becoming operative, the two agreements (b and c) would be covered by Union law (the exit-agreement being of such quality) thus providing the basis for a retroactive application of Art 87(2)) UPCA.

d) At the date when the exit-agreement becomes operative, the UK will stop being an EU-MS but its further adherence to the UPCA would be based on the amended Art 84 UPCA. The UK would be ready to receive the unitary effect of an EPUE on the basis of Art 142 EPC.

This Kat supposes there are two sets questions in response to this proposed route forward: 
1) is this legally possible - would the CJEU endorse the legal basis and conformity with EU law?; and 
2) is it politically achievable?
What do our readers think?

EU Trade Mark Owners: Article 28 declarations – have you filed yours yet?

Former Guest Kat, Darren Meale, of Simmons & Simmons, London, continues to share his thoughts about Article 28 declarations.  Over from one Darren to another...

Like this and this, this one is about Article 28 declarations. Those are the declarations you have until September 2016 to file to ensure your pre-22 June 2012 EUTMs cover all the goods and services you think they cover.

We are now halfway through the six month period the EUIPO has granted trade mark owners to file Article 28 declarations.

In that time, the EUIPO has made a few public statements on how these are going, and I have my own experience from filing a significant number of them. So here are a few pearls of wisdom, and a few of frustration, to help you along with your portfolio reviews and your declarations:

1.    More relevant to you than you think. It is surprising how some portfolio owners assume their portfolios will not be eligible for or benefit from Article 28 declarations. Experience tells me there are many more EUTMs with specifications covering entire class headings than their owners think. Remember that your registration only has to cover the class heading, it doesn’t have to have the exact wording.

2.    Plenty of declarations to come? The EUIPO has undoubtedly (optimistically) underestimated the number too. It reported in its April Alicante News newsletter than around 300 declarations had been filed in the first month, reflecting, in its view, that “affected trade mark owners have essentially understood that declarations should only be considered when there is a real interest in filing one”. In my view, the reality is that while some very well prepared EUTM owners will have filed once the window opened in March, most still have it on their to do list for the summer. We have recently filed more than 120 declarations for just one (major) portfolio owner. We also know, based on analysis we have conducted using software we have developed to automate Article 28 declarations, that there are a significant number of EUTM owners who can (if they wish) file declarations at this order of magnitude. World Wrestling Entertainment, for example, could file up to 285 declarations. El Corte Ingles, the largest department store group in Europe, could file up to 379. Intesa Sanpaolo, the Italian banking group, could file up to a massive 425.

3.    What declarants are getting wrong. Those who have filed declarations early on have frequently made mistakes, according to the EUIPO. Most of those mistakes arise from not reading the EUIPO’s guidance and a failure to understand exactly what Article 28 declarations are and what they are for. Here are the top mistakes according to the Office:
a.    Declarations containing long lists of terms clearly covered by the literal meaning of the relevant class heading. The EUIPO was very clear it would not accept these – it will only accept terms not clearly covered already. It has already published a list of “orphan” goods and services which it will accept. If a term is not in that list, you can still file a declaration, but be prepared to argue for it as and when the EUIPO issues a deficiency notice.
b.    Declarations for goods and services not contained in the Nice classification alphabetical list in force at the time of filing. The Nice classification has changed over time – make sure you are using the right one, or you’ll get a rejection.

4.    Unhelpful online form. The EUIPO is not making life easy for us all. Its online form, which it encourages us all to use, only allows a declaration for one mark at a time, which is a slow and tedious way of dealing with a large portfolio. The form is not mandatory.

5.    Too much paper. To make matters worse, even if declarations are filed together in a batch – because they all relate to one EUTM owner – the EUIPO is dealing with them all individually. So individual recordal numbers, potentially multiple examiners, individual acknowledgement letters, individual deficiency notices, individual acceptances, and so on. So if you file 100 declarations, you’ll be getting 100s of pieces of paper back. This is not how things are done for other recordals. Thanks EUIPO!

6.    Are you authorised? The EUIPO has refused to accept declarations where the filer is not the representative on file. It is often the case that EUTM owners manage their own portfolios, but instruct external counsel to correspond with the EUIPO on particular issues. This additional red tape simply adds time and cost to the whole exercise. The EUIPO tells us it is requiring this because of “the risks of our users being targeted by companies employing the sharp practice of filing declarations without their consent or authorisation in an attempt to charge for unsolicited services”. Different examiners are taking different approaches. Some require a power of attorney, some require a letter of authorisation, some require nothing. So be warned!

7.    Once a declaration is accepted. In future, it is not going to be easy to see whether or not a declaration has been filed for a particular EUTM and what was in the declaration, at least not until the EUIPO makes some updates to its database software. If you take a look at this example, which is one of the early declarations which has now been recorded, although there is a notice in the “Publications” and “Recordals” section of the EUTM’s entry, to see what’s gone on you have to log in to the EUIPO website. You can then download the EUIPO’s letter confirming recordal of the Article 28 declaration, which only shows what the entire specification looks like now. If you want to see what has actually been declared, you will have to download the TM owner’s own declaration.

Three months to go – so plenty more time – but don’t forget! 

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