What you need to know about Intellectual Property:
With our Global IP Updates, we continue our newsletter's legacy by providing you with insights into the latest developments in the world of IP.
Our IP teams around the globe are highly dedicated to collecting, summarising and contextualising the constant flow of new information on patents, trademarks, copyright, know-how and other areas related to IP protection for you. We also keep you up to date with the latest court decisions, legislation and the impact of technological innovations like blockchain, artificial intelligence or Internet of Things.
Interested? Then don't hesitate to join the conversation and reach out to our team!
The German Federal Ministry of Digital Affairs and Transport has presented a draft Digital Services Act ("DDG-E") to supplement the EU Digital Service Act ("DSA") and to create a supervisory structure with a corresponding sanctions regime.
With generative AI tools such as ChatGPT creating headlines, we look at how UK copyright law is developing to keep up with the rapid advancement of this new technology.
Mainland China has ambitions to become a major artificial intelligence ("AI") innovation centre in the world by 2030, and had announced a programme for the development of AI technology in 2017. Against this backdrop, the PRC Government and courts address issues around the intellectual property protection of AI in recent judgements and proposed amendments to its laws.
This is the first of our two-part series of articles on AI and the accompanying PRC legal landscape. The second article discusses technology export.
For the purposes of the article, references to Mainland China or PRC do not include Hong Kong, Macau or Taiwan.
In this second of our two-part series of articles on artificial intelligence ("AI") and the accompanying PRC legal landscape, we discuss recent developments in the PRC government's regulation over transfer of AI technologies outside of Mainland China.
For the purposes of the article, references to Mainland China or PRC do not include Hong Kong, Macau or Taiwan.
This article focuses on the main risks that NFTs represent from a copyright perspective, covering recent case law established by the Spanish courts on copyright infringement by the creation and making available of NFTs.
This new decision confirms (once again) the upward trend in the fines imposed by the Spanish authority. Since 2020, the 1 million barrier has been broken at least 11 times.
The Italian Data Protection Authority has turned its attention to the privacy implications of the practice of making users choose between paying to access online content or agreeing to online tracking for profiling purposes.
The Court of Rome released an injunction against the NFT platform for using Juventus' trademarks without permission. However, the peculiarities of the NFTs make the effective enforcement of the injunction uncertain.
The Spanish Data Protection Agency sanctioned UPS with a fine of 70,000 euros for the infringement of articles 5.1 f) and 32 GDPR, for having delivered a package of a Media Market customer to his neighbour.
The provision of goods and services in the metaverse has presented a new question for many brand owners: do we need to broaden our trade mark protection to cover goods and services in virtual worlds?
We will look at recent cases in the UK, Singapore and China which offer insights into how NFTs are considered in the legal context, and practical issues buyers may face when investing in NFTs.
The Italian government adopted the National Cybersecurity Strategy for 2022/2026 and its implementation plan, drafted and developed by the Italian Cybersecurity Agency (the "Cybersecurity Agency").
The Italian public administration is allowed to rely solely on cloud services provided in compliance with certain standards by duly qualified operators.
The EPO's Legal Board of Appeal announced its decision to reject patent applications in which an AI system was designated as inventor. The EPO confirmed that only a natural person can be attributed inventor status.
The supply chain of semiconductor is suffering an unprecedent global shortage emergency; tech companies and government are trying to remedy the multiple causes of the crisis and design a more resilient and less vulnerable chain.
With generative AI tools such as ChatGPT creating headlines, we look at how UK copyright law is developing to keep up with the rapid advancement of this new technology.
For several years now blockchain technology, in particular its major use case: blockchain-based crypto assets (like Bitcoin), is on the rise. Due to its decentralized nature, blockchain offers a verifiable, tamper-proof register to record any information stored in it by its users.
As we are all well aware, data and the many use cases for unlocking its hidden potential are becoming increasingly important for virtually all industries and sectors. Common buzzwords like "Oil of the 21st Century" or "Industry 4.0" refer to a global trend focusing on the exploitation and, in many cases, monetisation1 of data.
The DSL is the first nationwide law on data security enacted from the perspective of national security protection in China. Before the promulgation of the DSL, the framework for data protection in China was laid down by the Cybersecurity Law
("CSL") which imposes cybersecurity requirements on network operators. The data protection framework will be supplemented by the Personal Information Protection Law ("PIPL") with a focus on personal information protection, which will come into force on 1 November 2021
Like many other sectors, the automotive industry is not immune to technological challenges from the digital world. Such challenges prompted the European Data Protection Board ("EDPB") to adopt guidelines on connected cars. Their aim is to
facilitate compliance with the GDPR and the e-Privacy Directive by the various stakeholders involved in the processing of personal data within the connected car ecosystem.
The Italian Data Protection Authority has turned its attention to the privacy implications of the practice of making users choose between paying to access online content or agreeing to online tracking for profiling purposes.
The Patent Implementing Regulations and Examination Guidelines, which have been eagerly anticipated following the amendment of the PRC Patent Law in October 2020, will come into effect on 20 January 2024. The regulations and guidelines clarify and set out procedural requirements for various aspects of the 2020 Patent Law. This is the first article in a two-part series where we explore state compensation for unreasonably delayed patent examination, extension of patent term for pharmaceutical drugs, and employer remuneration to employee inventors and developers to share in the economic benefits of patent exploitation. We also discuss the partial design patent option and international registration of design patents via the Hague registration system. These factors will have an important impact on patent protection and exploitation strategies.
This article provides a brief summary of the opinion rendered by the Advocate General Mr. Maciej Szpunar on 21 September 2023 in one of the pending referrals to the Court of Justice of the European Union affecting the patents arena (Case C-473/22, Mylan AB vs Gilead). Intellectual property rights holders may welcome this opinion, according to which the liability of an applicant for a provisional measure for damages caused to the defendant by said measure when the provisional measure is later revoked, or it is found that there was no infringement, should not be automatic.
After years of planning and a lot of uncertainty, the UPC has finally opened its gates. The new court presents itself as an attractive venue for patent litigation – even more so with recent developments around the start in the beginning of June. With the number of cases being manageable and allowing for quick decisions as well as English finally being accepted as a language of proceedings in all chambers, the UPC is off to a good start.
On 27 April 2023, the European Commission published four proposed SPC regulations, applicable to medicinal products and plant protection products, creating a unitary SPC and establishing a centralised examination procedure.
The Unified Patent Court (UPC) started operating on the 1st of June. Besides the maintenance, defence and enforcement of unitary patents, there are also far-reaching consequences for contract law constellations.
In July 2023, an amendment to the Polish Code of Civil Procedure will come into force, which in its premises implies structural changes in granting interim protection in intellectual property cases.
The first decisions by Dusseldorf and Munich’s district courts since amendments to the German Patent Act reveal that the jurisprudence is so far unaltered and continues to uphold a strong level of patent protection.
Almost one year on, the Court of Justice of the European Union's (CJEU) Phoenix Contact/Harting judgment on patent validity in preliminary injunction proceedings, which found that the German rigor in granting interim injunctions for not validated patents should be reconsidered, is still causing ripples. As the first post-Phoenix decisions on interim injunctions are reported, it is becoming apparent that regional courts in Düsseldorf and Munich are taking quite distinct approaches – which may lead to issues further down the line.
In the context of the COVID-19 pandemic, the right balance between the grant of absolute rights (through patents) in contrast to free use of the patented subject in accordance with public interests and health has become increasingly important. Against this background, this article shall shed light on the recent Decision WT/MIN(22)/W/15/Rev.2. 17 June 2022 (22-4709) of the World Trade Organization ("WTO") on a temporary suspension of patent protection in exceptional cases ("Decision").
This article sets out the reasons for previous German case law on preliminary injunctions in patent disputes having been ruled incompatible with Art. 9 (1) Directive 2004/48/EC (the "Directive" or "IPRED") by the Court of Justice of the European Union ("CJEU") and provides details of the resulting practical implications.
The trend may seem paradoxical: in the midst of an unprecedented crisis such as that caused by the pandemic (and now the war), data show that patent applications in Italy are increasing.
Patent validity and infringement were at issue in this recent Judgement handed down by the Provincial Court of Barcelona, which, in a twist to what was held by the Specialised Patent Division in the First Instance Judgement, brings to a close the second instance of proceedings concerning a food processor dispute between Vorwerk and Lidl.
A preliminary draft Act amending the laws governing Spanish patents, trademarks, and industrial designs - Law 24/2015 of 24 July on Patents, Law 17/2001 of 7 December on Trademarks, and Law 20/2003 of 7 July on the Protection of Industrial Designs ("Preliminary Draft Amendment") - was published on
20 October 2021.
This year's reform of the German Patent Act ("PatG") has brought about several important changes. This article addresses the practical implications deriving from the now codified exclusion to injunctive relief.
Establishing a new unitary court with exclusive jurisdiction over European patents with unitary effect and eventually all European Patents represents an important aspect of the EU's efforts to reform the European patent system. But even though politically the UPC and patent reform have always enjoyed great support, the legal prerequisites of the ratification process have caused some unexpected difficulties.
On 2 October 2020, India and South Africa submitted to the Council for TRIPS the first
proposal suggesting a waiver for all WTO members on the implementation of certain
provisions of the TRIPS Agreement in relation to the prevention, containment or
treatment of Covid-19. On 25 May 2021, a revised proposal was submitted with the
Council by 62 co-sponsors (out of 159 WTO member states), including India, South
Africa and Indonesia. The submission of the proposal, as subsequently amended
(the "Proposal"), resulted in a lively debate among the WTO members.
In the last IP update, we focused on the IP Strategy for 2021-2023 pursued by the
Italian government in the context of the Piano Nazionale di Ripresa e Resilienza
("PNRR"). The IP Strategy 2021-2023 is indeed part of the 1st Mission laid down by
the PNRR, whose purpose is to "innovate the country and to bring about deep
structural changes along the lines of a new digital paradigm".
Fortunately for a lot of people, COVID-19 did not succeed in cancelling the MWC 2021, which was held from 28 June to 1 July 2021 and once again made Barcelona the worldwide epicentre of the mobile connectivity sector.
With the food industry producing more and more alternative food products – like vegan cheese or vegetarian burgers (?) – the question arises if and how these products can be protected by intellectual property law. In particular, protection for the recipe and manufacturing processes for these products is crucial for a sustainable competitive position. In this context, protection may potentially be provided under the German Patent Act ("PatG") and the German Trade Secrets Act ("GeschGehG").
Two recent judgments of the Court of Justice of the European Union ("CJEU") handed down in January, cases C‑361/22 and C-334/22, have provided more guidance on the scope of the trademark referential use exception established in Article 14(1)(c) of Directive 2015/2436.
This article provides a summary of the judgment of the Spanish Supreme Court dated 19 July 2023, where the Court analysed the validity of a three-dimensional trademark and sets out the criteria to be followed in interpreting Article 5(1)(e) Spanish Trademark Act, which corresponds to Article 7(1)(e)(ii) of EU Trademark Regulation 2017/2001.
In its judgment of 13 September 2023, the Spanish Supreme Court ended a legal battle begun in 2014 which included the request for a preliminary ruling before the Court of Justice of the European Union.
In this series of two articles, we discuss Mainland China's approach to the problem of bad faith trademark filings; the first article discussed the approach under the current Trade Mark Law, the practical issues and inadequacies of the current approach, and how brand owners may otherwise obtain civil relief in the form of injunctions and damages from the PRC courts, and this second article discusses how the China National Intellectual Property Administration (CNIPA) proposes to resolve some of the issues through proposed amendments to the Trademark Law.
In this series of two articles, we discuss Mainland China's approach to the problem of bad faith trademark filings; this first article discusses the approach under the current Trade Mark Law, the practical issues and inadequacies of the current approach, and how brand owners may otherwise obtain civil relief in the form of injunctions and damages from the PRC courts, and the second article will discuss how the China National Intellectual Property Administration (CNIPA) proposes to resolve some of the issues through proposed amendments to the Trademark Law.
Hermès has emerged victorious against NFT creator Mason Rothschild, in one of the first cases globally to address IP violations by creators of NFTs with artistic expression as a defence.
In its recent Judgment dated 16 February 2023 (Case C-472/21, Monz vs Büchel) the CJEU sets a broad interpretation of the meaning of "normal use" of complex products (i.e., products composed of multiple components, such as bicycles or motorbikes) for protecting the design applied to their components.
The direct administrative competence of the Spanish Patent and Trademark Office to process proceedings relating to the invalidity and revocation of registered trademarks and trade names is set to enter into force on 14 January 2023.
The provision of goods and services in the metaverse has presented a new question for many brand owners: do we need to broaden our trade mark protection to cover goods and services in virtual worlds?
Open any social media app today and you will likely come across an influencer showcasing a trendy new outfit from a well-known designer or a tasty meal cooked with the ingredients provided by the latest health food brand. But how do you categorise this content? Are they advertisements? Should the influencer, their agency, or the brand owner be obliged to comply with certain legal requirements? Let's look at the Italian regulators' approach.
Munich Regional Court recently ruled on how companies can use their corporate personality rights to protect themselves against being (falsely) named as a company in customer reference lists.
A preliminary draft Act amending the laws governing Spanish patents, trademarks, and industrial designs - Law 24/2015 of 24 July on Patents, Law 17/2001 of 7 December on Trademarks, and Law 20/2003 of 7 July on the Protection of Industrial Designs ("Preliminary Draft Amendment") - was published on
20 October 2021.
In a Judgment dated 20 April 2021, the Supreme Court found that using a trademark as a keyword might qualify as infringement, awarding damages of over half a million euros pursuant to the Spanish-unique 1% rule.
In a case that included a referral to the CJEU, the influential Barcelona Court of Appeal has found that the sign "Champanillo" constitutes an evocation of the PDO Champagne, thus infringing EU law on geographical indications
Following the decision by the European Union Intellectual Property Office ("EUIPO") to refuse the registration of a sound sign as a trade mark of the European Union, the GCEU (Fifth Chamber, Extended Composition) has had the opportunity to rule for the first time on the registration of a sound mark filed in audio format.
Infringement claims, like all property claims, are subject to the statute of limitations, and the same goes for all IP rights. As in most European countries, claims in the Polish legal system become time-barred three years from the date on which the party entitled to the industrial property right in question learned of the infringement and of the party which infringed that right, with this applying separately for each individual infringement.
In the last IP update, we focused on the IP Strategy for 2021-2023 pursued by the
Italian government in the context of the Piano Nazionale di Ripresa e Resilienza
("PNRR"). The IP Strategy 2021-2023 is indeed part of the 1st Mission laid down by
the PNRR, whose purpose is to "innovate the country and to bring about deep
structural changes along the lines of a new digital paradigm".
Fortunately for a lot of people, COVID-19 did not succeed in cancelling the MWC 2021, which was held from 28 June to 1 July 2021 and once again made Barcelona the worldwide epicentre of the mobile connectivity sector.
Spanish courts rule for the first time that, in certain circumstances, the authors' prior authorisation is not required to create and publicly display NFTs of their copyrighted works.
This article provides a brief summary of the judgment of the Spanish Supreme Court dated 16 May 2023, where the Court ultimately analysed whether a short text that constitutes an independent unit, which has been published together with other autonomous texts, falls within the scope of the quotation exception.
The long-awaited amendments to the Hong Kong copyright legislation will come into operation on 1 May 2023. The amendments introduce important changes to facilitate the digital economy and combat prevalent online piracy in the digital environment.
The implementation of the 2019 Arrangement will enable a broader range of Mainland court judgments to be enforced in Hong Kong (and vice versa) by way of a simple registration procedure. This will facilitate enforcement of decisions in IP contractual disputes and monetary damages awarded in IP infringement disputes.
In July, the Spanish Government made public a draft of the Royal Decree which establishes (i) the list of equipment, devices and material media that are subject to payment of the fair compensation for private copying, (ii) the amount to be paid for each equipment, device or material medium and (iii) the distribution criteria for the fair compensation under the different reproduction modalities.
Things aren't so "cushty" for parody dining experience company as the fictional character "Del Boy" from Only Fools and Horses is considered a literary work, and therefore protected by copyright, in a significant UK judgment.
While the importance of new technologies and the variety of new forms of trading in works is growing, becoming relevant to an increasing number of business models, an important question from the point of view of Polish intellectual property law boils down to the regime governing the fields of exploitation and the requirements they impact when trading in works.
In this decision, the Regional Court of Frankfurt am Main dealt with the question of whether and how functional objects can be continuously monopolised by copyright after the expiry of patent protection.
The Judgment of the CJEU of 3 June 2021 deepens its analysis and provides relevant guidance on the use by search engines and hyperlinks of the content of databases and also represents a significant shift from the previous case law of the CJEU.
It is usually said in artistic circles that in order for a pupil to be brilliant, he has to have an excellent teacher, in all respects. This would have been the case, for example, with Leonardo Da Vinci and his teacher, Andrea Verrocchio.
In a landmark decision, the Cassation ends a long-lasting dispute on abuse of dominant position in pharma sector. It is a very relevant decision for the interplay between IP and competition as well as for the criteria to count damages.
Building on previous German case law, Bremen Higher Regional Court has recently taken a stand on so-called "greenwashing" by confirming the strict requirements already in place for advertising a product as "sustainable" or "resource-friendly". According to the court, these requirements apply even if the advertising is aimed at professionals.
The EU Commission (EC) has published a proposal to tackle "greenwashing" and better inform consumers about the sustainability of their purchases by amending two key pieces of consumer legislation: the Unfair Commercial Practices Directive and the Consumer Rights Directive.
Open any social media app today and you will likely come across an influencer showcasing a trendy new outfit from a well-known designer or a tasty meal cooked with the ingredients provided by the latest health food brand. But how do you categorise this content? Are they advertisements? Should the influencer, their agency, or the brand owner be obliged to comply with certain legal requirements? Let's look at the Italian regulators' approach.
Munich Regional Court recently ruled on how companies can use their corporate personality rights to protect themselves against being (falsely) named as a company in customer reference lists.
Proceedings before the regulatory authority, consumer and NGO actions (and class actions), and corporate disputes: three (potentially concurrent) routes to tackle "greenwashing" advertising claims in Italy.
In its decision no. 541 of 22 October 2020, the Italian Communications Regulatory Authority (Autorità per le Garanzie nelle Comunicazioni "Agcom") imposed a fine of EUR 100,000 on Google in relation to the activity of the Google Ads service, for having allowed, against payment, the dissemination of links to gambling sites in violation of the Italian ban on the advertising of games with cash prizes.
A preliminary draft Act amending the laws governing Spanish patents, trademarks, and industrial designs - Law 24/2015 of 24 July on Patents, Law 17/2001 of 7 December on Trademarks, and Law 20/2003 of 7 July on the Protection of Industrial Designs ("Preliminary Draft Amendment") - was published on
20 October 2021.
Clifford Chance
