Dreyfus

Still at the project stage, the Unified Patent Court must ultimately be exclusively competent in matters of European patent and unitary European patent. On that principle, an agreement has been reached between all the Member States of the European Union with the exception of Spain and Poland, but the consistency of the project still has to be improved. That is why the States work on that project which has been approved since more than 40 years. They are currently working on the 15th amendment.

This amendment is particularly at the heart of the debate as it would encourage patent trolls, these companies whose main or sole activity is to sue other companies whether there has been patent infringement or not in order to obtain significant damages. For instance, in 2006, the company RIM which manufactures Blackberry telephones has paid $ 612.5 million to the company NTP in order to terminate a dispute filed with the US Courts.

Two provisions of the actual version of the agreement establishing the Unified Patent Court are problematic in that regard.

First, article 42 gives to the Unified Patent Court a discretionary power particularly important pertaining to the degree of patent infringement, which the Patentee needs to prove in order to obtain provisional measures. Thus, the different divisions of the Unified Patent Court could apply these criteria with more or less negligence. Therefore, it would be easy for all patent owners, including the patent trolls, to obtain such provisional measures even if these measures are not objectively justified.

Then, article 33 establishes a mechanism for the separation of actions. Thus, if disputes relating to patent infringement are filed with the local divisions of the Unified Patent Court, the counterclaims for revocation of the patent may be handled by the local division or referred back to the central division of the Unified Patent Court at the Court’s discretion. In the latter case, the actions become independent and the local Judge will not have to stay proceedings. It will then be possible to obtain convictions on infringement of invalidated patents!

The giants of innovation such as Google or Apple call for a radical change in the agreement which “enables to concentrate on innovation rather than on litigation”.

It will be interesting to see whether the next review of the agreement will include measures to combat patent trolls because the European institutions have never envisaged a system that encourages abusive procedures in patent matters.

The 31st session of the WIPO Standing Committee on Trademarks, Industrial designs and Geographical Indications was held in Geneva between March, 17 and 21 2014. WIPO reviewed the Draft Recommendation proposal on the protection of country names, prepared by Jamaica delegate in December 2013.

This proposal has been ongoing pending since 2009, however to date the attempts to broaden the scope of article 6ter of the Paris Convention [for the Protection of Industrial Property] have proven unsuccessful. This article outlines the prohibitions regarding the use as a trademark of State emblems, official signs and hallmarks of intergovernmental organisations. The Standing Committee has noted that “the protection that currently exists internationally for country names is inconsistent internationally. Therefore there is need for internationally consistent protection for country names.”

Trademark protection may be useful for a country in international trade and in export markets for specific goods and services. This should protect States from misleading trademarks using the name of their country.

If the country name is used as a trademark, the government will become the brand owner and will be responsible for all that it entails (acquisition, maintenance and enforcement of rights). In practice, this also means that the government must have competent lawyers to manage the brand both domestically and abroad.

The US has submitted various questions to the Committee, including with respect to States that may decline to manage their trademark. South Africa also expressed its reservations with regards to the draft recommendation.

The Twitter account @JamesDean is at the heart of a legal battle which has just begun. Launched in 2009 by an anonymous fan, it gathers the biography, quotations and photos of the actor who deceased more than 60 years ago.

The licensing agency CMG Worldwide requested Twitter to take down the account in issue. To support its request, CMG argued that the account user is infringing the mark James Dean and that it violates its “right of publicity”. The licensing company obtained a categorical refusal from the social network. Indeed, Twitter considered that the simple use of a pseudonym does not constitute an infringement of trademark rights because messages sent by some 8,000 followers did not have any commercial character.

Consequently, the company GMG Worldwide went before the courts and has sued the social network for trademark infringement. The request relies on the ground that by allowing a user to infringe the mark JAMES DEAN, Twitter is itself a counterfeiter.

However, it shall be an uphill battle for CMG. The protection granted to trademarks does not extend to all use of names. Furthermore, the general conditions of use are clear. Twitter does not prevent the creation of an account under a fake name be it the name of a celebrity. The only limits to this freedom are infringement to public order and to intellectual property rights.

On 13 March 2014, a new law (Nr 2014-315) came into force to strengthen the fight against counterfeiting. This law aims at providing tougher penalties for counterfeiters and clarifies certain provisions of the French Intellectual Property Code (Code de la Propriété Intellectuelle).

What are the main changes introduced by this law?

• The right of information procedure has been simplified. A request for information may now be raised before any judgment on the merits for counterfeiting, including before the Judge in charge of interim proceedings (juge des référés). The list of documents and information that may be requested has been removed. Hence judges are now free to determine the scope of their investigatory measures.

• When allocating damages, the court must separately take into consideration:

– “negative economic  consequences (…) including profits and losses incurred”;

– “non-pecuniary loss”; and

– “profits earned by the infringer, including savings on intellectual, material and advertising investments”.

The legislation sought tougher and more accurate penalties by demanding a clear distinction between the different levels of harm. Applicants must now show the harm suffered and may no longer seek compensation without justification.

• The statute of limitation to initiate counterfeiting proceedings has been extended to five years for all Intellectual Property actions. Previously, copyright infringement actions were subject to a 5 year limitation and patents and trademarks actions to a 3 year limitation. This extension ensures better protection and takes into consideration the interests of right owners.

• Custom officers have been granted additional rights; they can now deal with counterfeiting of designations and geographical indications as well as goods in transit.

• Infringement seizure proceedings have been harmonized for all intellectual property rights. The court may order any legally admissible investigatory measure, even without an infringement seizure. Further, a new Article (art L332-2 Intellectual Property Code (Code de la Propriété Intellectuelle, CPI)) has created an offence in case of non-compliance with the deadline to initiate proceedings after the performance of a seizure in copyright infringement.

The law adopted on 11 March 2014 awards new privileges to right owners in the fight against counterfeiting. One must now hope for a strict and efficient implementation of the new provisions of the French Intellectual Property Code (Code de la Propriété Intellectuelle).

On February 6th, the Court of Justice of the European Union (CJEU) ruled on the application of the Customs Regulation to seizure of counterfeiting products bought online.

To allow seizure, the Regulation requires that these goods ought to be distributed to the public and in the course of trade. In this case, a Danish court has referred a preliminary ruling to CJEU. The application of the aforementioned Regulation to products bought online by an individual was at stake. And the Danish court underlined that this scenario resembled importation for personal purposes rather than trade.

In a terse decision, the Court of Justice deliberated that “the holder of an intellectual property right over goods sold to a person residing in the territory of a Member State through an online website in a non-member country enjoys the protection afforded to that holder by that regulation at the time where goods entered the territory of that Member State”. The Court therefore considered the criteria set up by the Regulation to be redundant.

The Court further concluded that “it is not necessary […] for the goods at issue to have been subject, prior to the sale, of an offer for sale or advertising targeting consumers of that State”. In accordance with its established jurisprudence, Philips case (Case C-446/09 Philips and Nokia, December 1st, 2011), the CJEU casted aside the criteria of focalization on the activities of the website.

Overall, this ruling leads to a necessarily larger application of the Regulation, which should apply to all goods entering the European territory.

By voiding the criteria of the Customs Regulation, the Court of Justice would be ultra vires. Regarding preliminary rulings, its role is limited to the interpretation of the European legislations. However, the position of the Court is understandable since the protection granted to holders of intellectual property rights is essential. In a globalized economy, the protection of innovations by European companies must be a priority.