Deal or no-deal? Implications for Trademarks and Design rights following a no-deal Brexit

By Ruth Hoy, Leigh Martin, John Wilks and Sam Mitchell 26 September 2018

TRADEMARKS AND DESIGNS

BACKGROUND

This week, the UK Government released multiple technical notes detailing the intellectual property implications of a no-deal Brexit for exhaustion of rights, patents, trademarks and designs, and copyright. A few months ago, the idea of a no-deal Brexit was only entertained as a highly unlikely, ‘worst-case scenario’. This series of notes provides an update on the government’s plan in light of a hard Brexit.

EU Trademarks and Community Designs

The UK government has confirmed that in the event of a hard Brexit:

  1. existing registered EU trademarks or registered Community designs held will continue to be valid in the remaining EU member states;
  2. protection of existing registered EU trademarks or registered Community designs in the UK will be through a new, equivalent UK right which will be granted with “minimal administrative burden” (there is no specific guidance as to what this means, and no confirmation that it will not require payment of a fee).  The new UK mark created will then be treated as if it had been applied for and registered under UK law;
  3. rights holders will be notified that a new UK right has been granted. There will be an ‘opt out’ for any business, organisation or individual that does not want to receive a new comparable UK registered trade mark or design;
  4. applicants with a pending application for an EU trademark or a registered Community design that has not achieved registration by the date that the UK leaves the EU will be able to refile in the UK for the new UK equivalent right retaining the EU application date for priority purposes, PROVIDED that the application is made within nine months from the date of exit.  The re-filing will incur a standard trade mark filing fee;
  5. applicants with pending applications for an EU trademark or a registered Community design will not be notified so will need to consider themselves whether to take advantage of the opportunity to re-file in the UK in that nine month window;
  6. new applications will be eligible to be filed in the UK for UK trademarks and registered designs as they are now, and at the cost specified in the UK fee structure; and
  7. UK applicants, like EU and third country applicants, will continue to be able to apply for protection in the EU through an EU trade mark or registered Community design as they do currently.

Unregistered Community Designs – the Supplementary Unregistered design right

For Community unregistered designs which exist at exit date:  The UK government will create an equivalent of the EU Community Design right, so that existing unregistered Community design rights will continue to apply in the UK for the remaining period of protection of the right.  This will be provided with no action required by the right holder. The UK government also comments that existing unregistered Community designs will also continue to be valid in the remaining EU member states.

 

For new designs disclosed after exit date:  Such designs first disclosed in the UK will be able to benefit from the existing UK unregistered design regime.  Designs disclosed in the UK will also be able to benefit from a new “supplementary unregistered design right” to be introduced by the government, which will mirror the characteristics of the unregistered Community design right.

 

For further information please contact Ruth Hoy (Partner), Leigh Martin (Partner) and John Wilks (Partner).

Permanent link to this article: https://blogs.dlapiper.com/mediaandsport/2018/09/deal-or-no-deal-implications-of-a-no-deal-brexit-for-uk-ip-laws-trademarks-and-designs/

Deal or no-deal? How a no-deal Brexit could impact Exhaustion Rights.

By Ruth Hoy and Sam Mitchell 26 September 2018

BACKGROUND

This week, the UK Government released multiple technical notes detailing the intellectual property implications of a no-deal Brexit for exhaustion of rights, patents, trademarks and designs, and copyright. A few months ago, the idea of a no-deal Brexit was only entertained as a highly unlikely, ‘worst-case scenario’. This series of notes provides an update on the government’s plan in light of a hard Brexit.

EXHAUSTION RIGHTS

In the event of ‘no deal’ the note confirms that the UK will continue to recognise the EEA regional exhaustion regime from exit day. Accordingly, there will be no immediate change to the rules affecting imports of IP-protected goods into the UK.

However, while there may be no change for imports into the UK, there may be restrictions on the export of parallel goods from the UK to the EEA. UK to EEA exporters will need to check with EU rights holders to see if permission is needed.

The government will thereafter be conducting research and consultation to see if any longer term changes to the regime will be required.

For further information please contact Ruth Hoy (Partner).

Permanent link to this article: https://blogs.dlapiper.com/mediaandsport/2018/09/deal-or-no-deal-implications-of-a-no-deal-brexit-for-uk-ip-laws-exhaustion-rights/

Deal or no-deal? Implications for Copyright laws in the event of a no-deal Brexit

By Ruth Hoy, John Wilks and Sam Mitchell 26 September 2018

BACKGROUND

This week, the UK Government released multiple technical notes detailing the intellectual property implications of a no-deal Brexit for exhaustion of rights, patents, trademarks and designs, and copyright. A few months ago, the idea of a no-deal Brexit was only entertained as a highly unlikely, ‘worst-case scenario’. This series of notes provides an update on the government’s plan in light of a hard Brexit.

COPYRIGHT

The content of the copyright note will be déjà vu for those who read the EU Commission’s “Notice to Stakeholders: Withdrawal of the United Kingdom and EU rules in the field of Copyright.”  It explains the consequences of a hard Brexit on certain EU instruments:

  1. Sui generis database rights. There will be no obligation for EEA states to provide database rights to UK nationals, and the owners of UK database rights may find that their rights are unenforceable in the EEA.
  2. Portability of online content. The Portability Regulation will cease to apply to UK nationals when they travel to the EU. Meaning UK consumers may see restrictions to their online content services when they temporarily visit the EU.
  3. Copyright clearance in satellite broadcasting. UK based broadcasters that currently rely on the country-of-origin copyright clearance rule may need to obtain copyright clearance for each member state into which they broadcast.
  4. Orphan works copyright exception. UK-based Cultural Heritage Institutions that make works available online in the EEA under the exception may be infringing copyright.
  5. Collective Management of Copyright. UK collective management organisations will not be able to mandate EEA Collective Management Organisations to provide multi-territorial licensing of the online rights in their musical works.
  6. The Marrakesh Treaty. The UK intends to ratify the Marrakesh Treaty following Brexit, but ratification will not have taken place before 29 March 2019. Therefore, between exit and ratification, businesses, organisations or individuals transferring accessible format copies between the EU and the UK may not be able to rely on EU Regulation.

 

For further information please contact Ruth Hoy (Partner) and John Wilks (Partner).

Permanent link to this article: https://blogs.dlapiper.com/mediaandsport/2018/09/deal-or-no-deal-implications-of-a-no-deal-brexit-for-uk-ip-laws-copyright/

Prize Promotions – Winner announcement requirement will not be enforced by ASA pending outcome of its GDPR consultation

By Claire Sng and Ella Castle

The UK’s Advertising Standards Authority (ASA) has announced it will not enforce the CAP Code rule requiring promoters to publish or make available the name and county of major prize winners, pending the completion of work arising out of its GDPR Consultation (expected to be completed in the autumn). The Consultation, which closed in June 2018, is aimed at ensuring the CAP Code meets the standards set out in the General Data Protection Regulation (GDPR), which came into force on 25 May 2018.

Background

Rule 8.28.5 of the CAP Code, as currently drafted, requires promoters to publish the names, counties and (if applicable) winning entries of major prize winners or to provide these details upon request (except where prohibited by law). The rationale for this Rule is to facilitate transparency such that entrants feel the promotion has been run equitably and they have been dealt with fairly as required by Rule 8.2. It also requires promoters to obtain entrants’ consent to this publicity at the point of entry. In practice, the rule means that agreement to publication of this personal information will be a condition of entry into the promotion.

Until the entry into force of the GDPR, the ASA took the view that obtaining consent as an entry requirement was compatible with UK data protection law (Data Protection Act 1998). However, the GDPR now requires a higher standard of consent. For example, consent must be freely given by a clear and affirmative act, by a written or oral statement and it must be possible to withdraw this consent. Consent to publication of personal information may not be regarded as freely given (and therefore effective under GDPR) where there is a contractual requirement to provide such consent in order to enter a promotion.

Consultation

CAP initiated its Consultation on the collection and use of data for marketing in May 2018. The purpose was to ensure the rules are aligned with the standards introduced by the GDPR. The Consultation particularly relates to CAP Code Section 10 (database practice i.e. use of data for direct marketing) and Appendix 3 (Online behavioural advertising). As with Rule 8.28.5, CAP announced it would not administer (ie would not enforce) these parts of the CAP Code from 25 May 2018 until the introduction of its new rules following the Consultation.

What does this mean for promoters?

The Consultation closed on 19 June 2018 and the work to implement the changes needed is expected to be completed during Autumn 2018. During this time, notwithstanding Rule 8.28.5, promoters do not need to announce details of prize winners or make them available on request because this rule is not being enforced. (Instead, the ASA has said that if they receive complaints during this time, they will notify promoters and check that they are aware of the need to comply with the GDPR.)

When drafting terms and conditions for entry into a prize promotion, promoters can now omit winner announcement details and the requirement for entrants to agree to such publicity. As an alternative, promoters may prefer to seek winners’ consent to any publicity (which may extend beyond the use of just name and county) only after they have won. This approach is likely to be a more appropriate approach from a data protection point of view.

It appears likely that, following the Consultation, CAP will permanently remove the requirement for winner announcements, as it is difficult to see how this could be retained in a way that complies with GDPR. Clarity on this issue should be provided in the autumn.

This is just one example of the various new challenges now posed to organisers of prize promotions as a result of GDPR coming into force, meaning that care must be taken and GDPR considered in relation to each use of personal data, particularly where that use goes beyond what is strictly required to administer the promotion (eg for publicity, direct marketing purposes).

For further information, please contact John Wilks (Partner, London), Claire Sng (Senior Associate, London) or Ella Castle (Associate, London).

Permanent link to this article: https://blogs.dlapiper.com/mediaandsport/2018/09/prize-promotions-winner-announcement-requirement-will-not-be-enforced-by-asa-pending-outcome-of-its-gdpr-consultation/

Getting The Deal Through – Gaming: Gambling regulation in Germany

Dr. Michael Stulz-Herrnstadt and Christoph Engelmann published the chapter on gambling regulation in Germany in the first edition of Gaming in the Getting The Deal Through series.

This chapter provides an overview of the laws and regulations that apply to gaming companies in Germany. Topics include: licensed and unlicensed gambling, licensing requirements for land-based and remote gambling, advertising restrictions and current developments affecting gaming operators.

You may download the complete chapter here.

Permanent link to this article: https://blogs.dlapiper.com/mediaandsport/2018/08/getting-the-deal-through-gaming-gambling-regulation-in-germany/

Domain names and WHOIS information in a post-GDPR world (gTLDs update)

By Claire Sng and John Wilks

 

With the General Data Protection Regulation (GDPR) having taken effect across the EU on 25 May 2018, this has meant a big change to the availability of WHOIS data (ie data recording – among other things – the persons who own domain names). See an earlier DLA Piper article published last month on this topic here.

 

Temporary arrangements are now in place so that the WHOIS system is still (in a much restricted form) available. This is as a result of the Temporary Specification for gTLD Registration Data (“Temporary Specification”) which came into effect on 25 May 2018 and applies to operators of gTLD registries and ICANN-accredited Registrars such as the likes of GoDaddy. However, as can be seen from the information below, the critical information for those bringing domain name disputes, namely registrant contact information, is no longer publicly available and as things stand currently there is no uniform way of obtaining access to it.

 

In addition, last week:

 

  1. WIPO published a Q&A to help clarify the impact of the GDPR on the Uniform Domain Name Resolution Policy (UDRP- the dispute resolution policy for gTLD domain names such as .com domain names) (see here).
  2. ICANN has published a model for access to full WHOIS data (see here), with requests for input on the proposal.

 

Set out below is a short summary of questions and answers to help explain these latest developments. Read the rest of this entry »

Permanent link to this article: https://blogs.dlapiper.com/mediaandsport/2018/06/domain-names-and-whois-information-in-a-post-gdpr-world-gtlds-update/

UK: Supreme Court decision on costs in relation to blocking injunctions

By Ruth Hoy and Lesley-Ann Ainsworth

The Supreme Court has recently handed down its judgment in Cartier International AG and others v BT and another, allowing an appeal made by ISPs in relation to costs.

Background:

The judgment relates to the Court of Appeal decision we previously reported here where the Court dismissed the appeal brought by the main UK internet access ISPs against an order obtained by Cartier. The order forced the ISPs to block access to certain websites used to sell counterfeit goods. The Court of Appeal decision upheld that of the High Court and confirmed the broadened application of website blocking orders, which had previously only been based on copyright infringement, under S97A of the UK’s Copyright, Designs and Patents Act 1988 (“CDPA”). The Court of Appeal in its decision concluded that the costs of enforcing the orders should be borne by the ISPs rather than the rights holders.

Who should bear the costs of implementing the blocking orders?

The ISPs appealed to the UK Supreme Court on the question of costs and won. Implementation costs of blocking orders vary according to a number of factors and five broad heads of costs were discussed:

    (i) costs of acquiring and upgrading the hardware and software required to block target sites;

    (ii) costs of managing the blocking system, includes customer services and network management;

    (iii) marginal costs of the initial implementation of the order, which involves processing the application and configuring the ISP’s blocking systems;

    (iv) updating costs which include costs of updating the block, over the lifetime of the orders, in response to notifications from the rights-holders; and

    (v) costs and liabilities that may be incurred if blocking malfunctions through no fault of the ISP, for example in respect of malicious attacks provoked by the blocking or over-blocking.

The ISPs accepted that certain costs of implementation, namely under heads (i) and (ii), would be incurred in any event and therefore they did not complain about having to bear those costs. However, they disputed that they should also bear the costs under heads (iii), (iv) and (v).

The question at issue was therefore whether the rights-holders should have been required to indemnify the ISPs for implementation costs under heads (iii), (iv) and (v) above.

Judgment

The judgment firstly considered Domestic law and occasions whereby innocent parties are asked to assist a claimant but would be entitled to its costs of that assistance, notably seen in jurisprudence relating to Norwich Pharmacal orders. The Court then considered the three relevant EU directives: the Parliament and Council Directives 2000/31/EC (“the E-Commerce Directive”), 2001/29/EC (“the Information Society Directive”) and 2004/48/EC (“the Enforcement Directive”). The conclusion drawn was that the Directives do not address the incidence of compliance costs in the relevant circumstances, and therefore it must be a matter of National law.

In turning to English law principles, the judgment considered and subsequently placed great weight on the legal innocence of the intermediary, remarking that ISPs would not incur liability for trade-mark infringement under English law, serving as a “mere conduit”. Lord Sumption concluded that without legal responsibility for the infringement, there would be no legal basis to require such innocent party to ‘remedy the injustice’ and therefore in these circumstances, bear the burden of costs of enforcing the blocking orders.

It follows that the decision given by Lord Sumption was in favour of the ISPs and that the rights-holders should indemnify the ISPs in respect of their costs of implementing the blocking orders.
Read the rest of this entry »

Permanent link to this article: https://blogs.dlapiper.com/mediaandsport/2018/06/uk-supreme-court-decision-on-costs-in-relation-to-blocking-injunctions/

Amendments to the Audiovisual Media Services Directive agreed.

Background

The European Parliament, Council and Commission recently announced that they have reached preliminary political agreement on the principal revisions to the Audiovisual Media Services Directive (“AVMSD“). The negotiations will officially end in June this year when the remaining technical details of the proposal will be finalised.

The AVMSD defines the audiovisual media services regulatory framework within the EU and the proposals aim to address societal shifts in this sector including the increase of Europeans, especially younger generations, watching video content online or on-demand.

Minimum 30% quota for subscription video on-demand services

A key objective of the directive has been the promotion of European works and this is reflected in the new proposal. This rule imposes an obligation on subscription video on-demand service providers to ensure that at least 30% of works on their platform will be European. This 30% quota is likely to apply to all relevant service providers who offer their services within EU member states, including the likes of Netflix.

The minimum 30% quota corresponds to the European Council recommendation seen last year and calls from certain member states, including Greece, Spain and France, who proposed that the level be raised from the 20% quota initially proposed by the EU Commission. The proposal aligns with the EU aim to protect European content from the raft of Hollywood and US shows available.

Proposed changes

Along with the promotion of European works and the introduction of the 30% quota other key amendments include:

• Reinforcing the independence of audiovisual regulators;
• Revised “Country of Origin” principle;
• Strengthened protection of minors against harmful content (TV or VOD);
• Extension of certain European audiovisual rules to video-sharing platforms;
• Increasing flexibility in television advertising rules; and
• Alignment of rules prohibiting hate speech.

We will as ever keep you up to date with developments in this area.

Permanent link to this article: https://blogs.dlapiper.com/mediaandsport/2018/05/amendments-to-the-audiovisual-media-services-directive-agreed/

IAAF publishes new Eligibility Regulations for Female Classification

The IAAF has published new “Eligibility Regulations for Female Classification” (the “Regulations“), which can be found here. The Regulations set out a number of criteria that athletes with “differences of sex development” must meet in order to be eligible to compete in the female category of track events between 400m and a mile (the “Restricted Events“) in an international competition (or to set a world record in such an event). The Regulations define “differences of sex development” (“DSD“) as “a congenital condition that causes atypical development of their chromosomal, gonadal, and/or anatomic sex”.

 

The Background

The Regulations replace the previous Regulations Governing Eligibility of Females with Hyperandrogenism to Compete in Women’s Competition, which were challenged before the Court of Arbitration for Sport (“CAS“) by Indian 100m sprinter Dutee Chand in 2015 after she was prevented from attending the Glasgow 2014 Commonwealth Games on the basis of her increased testosterone levels. The CAS panel determined that the IAAF had not provided sufficient scientific evidence about the relationship between enhanced testosterone levels and improved athletic performance in hyperandrogenic athletes. In the absence of such evidence, the Panel was unable to conclude that such athletes enjoyed such a significant performance advantage that it was necessary to exclude them from competing in the female category, and ordered that the Hyperandrodgenism Regulations be suspended for two years, during which the IAAF could collate and submit further evidence in support. The CAS panel’s decision is available here.

The IAAF submitted further material to CAS on 27 September 2017, which included expert reports, legal submissions and a draft of the new Regulations. CAS held that the material submitted was sufficient to comply with the panel’s directive, but made no ruling on the sufficiency of the further evidence at that time. As the new Regulations replace the Hyperadrogenism Regulations, this terminates the CAS proceedings, and so no opinion on the sufficiency of the evidence will be forthcoming from CAS. However, the IAAF maintains that their latest evidence shows a performance advantage in female athletes with DSD over the Restricted Events. See the CAS media release here.

 

The Conditions

Under the new Regulations, which come into force on 1 November 2018, Relevant Athletes (i.e. those who, as a result of their DSD, produce significantly higher levels of testosterone than the average female) must:

(i) be recognised at law (for example under their birth certificate or passport) as female or intersex (or equivalent);

(ii) reduce their testosterone levels to below the specified level for a continuous period of six months before they can compete (e.g. through hormonal contraceptives); and

(iii) maintain their testosterone levels below such level for so long as they wish to remain eligible to compete (whether in or out of competition).

Relevant Athletes who do not meet the above conditions (or who fail or refuse to submit to testing in relation to them) remain eligible to compete: (i) in the female category (a) in international competitions in events other than the restricted events; or (b) in the restricted events outside of international competitions; (ii) in male or intersex classifications for all events including the restricted events.

Permanent link to this article: https://blogs.dlapiper.com/mediaandsport/2018/04/iaaf-publishes-new-eligibility-regulations-for-female-classification/

Bundesliga clubs confirmed 50+1 rule – but liberalisation plans for Investors are not off the table

For decades investors have been interested in German football. However, on 22 March 2018 the German Football League (“DFL”) voted in favour of generally retaining the 50+1 Rule. This rule, which is unique throughout Europe, was established in 1998 and in short means that investors cannot take over clubs as the clubs shall hold a majority of their own voting rights. German clubs are generally controlled by associations made-up of fee paying members, rather than investors. The 50+1 Rule ensures that the association members – and, by extension, the fans – retain overall control and investors cannot potentially push through measures prioritising profit or personal interests over the wishes of the association. The majority of the 36 clubs in Bundesliga and 2. Bundesliga have now generally voted to retain this principle, however plans for liberalisation are not off the table.

At the DFL meeting, 18 of 34 attending clubs somewhat surprising voted in favour to declare its support for a “process to improve legal certainty and further reflection on changing framework conditions while generally retaining the 50+1 Rule“. There were also nine abstentions and four clubs voted against the request of the second-league club. Three other clubs present and entitled to vote did not participate in the vote at all. On the one hand, this result shows that the maintenance and concrete design of the 50+1 Rule is not only the subject of highly controversial discussions in the fan scene and the public, but also that the clubs themselves have different views on opening up to investors. The Rule has long been much more than a sober paragraph, it is an emotional and sometimes overused symbol in the debate about the future of the football business and the question “who owns football?”. On the other hand, the clubs are well aware that the controversial regulation has preserved the identity and independence of German football to date, but that it is nevertheless ultimately based on a fragile (European) legal construct. In addition, many clubs have recognised that German football cannot permanently close itself off from investors if they want to keep pace with the current financial and sporting developments in Europe. The current resolution therefore also reflects this initial situation. Although the majority of clubs are in favour of continuing to apply the rule, it has also been made clear that the medium and long-term structure is open and will be discussed intensively in the future. In this respect, the decision can certainly be regarded as a progress. A permanent perpetuation of the current status has therefore not taken place.

The now solidified position of the clubs initially results in a strengthening of the 50+1 Rule but it also creates a remarkable loophole. It is still to be considered how the DFL will deal with the concrete application and procedures of the 50+1 Rule in the future. Plans for liberalisation therefore are not off the table. Quite the contrary, it seems to be clear that material changes will be discussed but 50+1 in some way will remain the framework. This is particularly relevant because there are powerful voices within the DFL warning against the legal weakness of the rule and potential threatening court procedures in the future. Even after the 22nd March ruling, there is no legal certainty. If a club decides to take legal action, 50+1 would suddenly be in the balance again.

For current and potential investors in German football it is crucial to follow DFL´s next steps and the process of reform. Furthermore, there are already broad opportunities to invest in German football under the current legal framework and stakeholders that have already invested will be in pole position when the new 50+1 Rules allow broader involvement in clubs’ decisions and futures. However, the current development and discussions have shown that any changes in 50+1 and a broader investment of private investors in German football needs to be considered alongside fans and club members’ sensitivities, as they have unmistakably made clear their continued significant influence. There will be no fruitful partnership without having fans and club members on board. Therefore, not only economic interests have to be considered but also political and social acceptance in German football society. For successful investments in German football a broad market knowledge is crucial.

Permanent link to this article: https://blogs.dlapiper.com/mediaandsport/2018/03/bundesliga-clubs-confirmed-501-rule-but-liberalisation-plans-for-investors-are-not-off-the-table/

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