Reform under the bridge


The 36th European Communities Trade Mark Association Annual Conference focused on reform of EU trademark and copyright law. Mark Dugdale was there

Carolin Kind was confirmed as the new secretary general of the European Communities Trade Mark Association (ECTA) at the annual conference in Budapest in June.

Kind replaces Max Oker-Blom. She is a partner at Greyhills Rechtsanwälte in Germany, where she has worked since 2006. A member of ECTA since 2002, Kind became chair of the harmonisation committee in 2012.

Oker-Blom, who is also an adjunct professor at the Hanken School of Economics in Helsinki, Finland, has completed his third and final two-year term as secretary general.

He will remain on the advisory committee for the association, as well as have the right to participate in council meetings, although without a voting right.

Kind said: “I’m very proud to have the opportunity to serve ECTA as the new secretary general and look forward to working with the management committee and all the other people involved with ECTA. My sincere thanks to go to Max Oker-Blom for the excellent job he did on ECTA’s behalf.”

An overriding topic at the annual conference was the cross-border portability regulation, which attendees heard is on the cusp of becoming law in the EU.

Vita Jukne, policy officer in the copyright unit of the directorate general for communications networks, content and technology at the European Commission, reported that the cross-border portability regulation is all but ready to be published in the Official Journal of the EU.

The cross-border portability regulation, which would allow EU citizens who pay for online services in their home country to access those services temporarily in other member states, will become law nine months after publication in the Official Journal of the EU, meaning the European Commission’s target of Q1 2018 for implementation could be met. The question of whether the concepts of ‘temporary stay’ and ‘residence’ would be clarified beyond the European Council’s practical scenarios for using content abroad, such as leisure, travel, business trips or learning mobility, was addressed by Jukne, who said they were clearly defined in the finalised regulation.

According to the latest available copy of the regulation’s text, the concepts are defined as: “‘Member state of residence’ means the member state … where the subscriber has his or her actual and stable residence [and] ‘temporarily present in a member state’ means being present in a member state other than the member state of residence for a limited period of time.”

Dr Sebastian Schwemer of the University of Copenhagen’s Centre for Information and Innovation Law said of the cross-border portability regulation: “It’s a fairly interesting model that’s been chosen. It’s a simple, easy mechanism.”

Negotiations over the other Digital Single Market reforms, which were put forward in September 2016, are intensifying as EU lawmakers try to overcome cultural differences, according to Jukne.

The press publisher’s right that would allow publishers to charge search engines such as Google News for the use of snippets of their stories is getting a lot of attention in debates.

Meanwhile, Article 13 of the proposed copyright directive, which would require platforms to take down user content at the behest of rights owners with commonly available technological means, contains “proportional and appropriate measures”, according to Jukne.

On the EU trademark legislative reform package, attendees heard how efforts at the Court of Justice for the EU (CJEU) to untangle the codification of 2012’s IP Translator judgement are far from over.

Two cases currently with or recently ruled upon at the CJEU, Cactus (C‑501/15 P) and Brandconcern (C‑577/14 P), appear to have interpreted the IP Translator judgement differently than was intended, sparking some uncertainty for trademark owners.

Following the IP Translator case and its codification in the EU trademark legislative reform package, applicants must file in specific goods and services, indicating with sufficient clarity and precision what they aim to protect.

The new Article 28(8) of the EU Trademark Regulation allowed a period of six months for trademark owners to add new products/services to their EU trademarks filed before 22 June 2012.

Cactus and Brandconcern, however, have indicated that IP Translator does not apply to trademarks that had been registered before the date of the judgement.

According to Sarka Petivlasova, senior associate at Hogan Lovells, the CJEU’s February ruling in Brandconcern indicated that IP Translator has no retroactive effect, meaning that trademarks registered before 21 June 2012 cannot be amended. The CJEU also seemed to suggest that EU trademarks can protect goods and services outside of the literal meaning of the included class headings.

Cactus, while still under consideration, has received a preliminary opinion from the advocate general, who went one step further and said EU trademarks could potentially cover all goods and services that fall within the class concerned.

As the advocate general noted in Cactus: “Consequently, Brandconcern does not constitute an authority validating [the EU Intellectual Property Office’s] approach … in relation to the assumption that a trademark registered before the cut-off date of 21 June 2012 can at most afford protection to the goods or services mentioned in the relevant alphabetical list.”

“By the same token, Brandconcern should not be read as precluding, from the outset, that protection afforded by trademarks registered before the judgement in IP Translator was given could extend beyond the goods and services referred to in the alphabetical list of a given class.”

Petivlasova added: “It remains to be seen whether the advocate general’s opinion in Cactus will be followed.”

As work continues on implementing the EU trademark legislative reform package, the EU Intellectual Property Office (EUIPO) is expecting trademark applications to surpass 2016’s tally by almost 5 percent.

José Izquierdo, deputy director of international cooperation at the EUIPO, reported that design applications reached 29,000, trademarks 35,000 and oppositions 4,500 in the first three months of 2017.

Based on these figures, the EUIPO is expecting 141,000 EU trademarks to be filed this year, representing projected growth of 4.6 percent over 2016.

In 2016, the EUIPO received more than 135,000 EU trademark applications, which is a 25 percent increase over 2012.

Izquierdo conceded that the EUIPO’s current projection is lower than expected. He said: “All growth has been lower than expected, but there is still growth.”

A representative of the World IP Organization (WIPO) followed up with an update on how WIPO is working to overcome users’ problems with the Madrid trademark system.

The most reported irregularity of 2016 concerned the classification of goods and services, specifically the acceptable format for listing them.

WIPO has developed classification guidelines that it hopes Madrid member states will adopt and endorse, to end disparities in procedures for listing goods and services in an international trademark application.

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