IP@OC | March 2019

Written on 12 Mar 2019

 

Welcome to the latest edition of IP@OC, Osborne Clarke's international IP newsletter.

In this edition, we look at the changes taking place in IP across the EU including:

  • the strengthening of rights for news publishers and increased liability for commercial content-sharing platforms (such as YouTube) as part of the Digital Single Market initiative;
  • the implementation of the EU Trade Secrets Directive, with our updated guide to how the Directive has been implemented across eight Member States; and
  • recent and upcoming CJEU decisions on trade mark de-branding and whether breaching a software licence can constitute copyright infringement.

We also consider the implication of a no-deal Brexit on the protection of IP rights.

Finally, we'll take a look at some national cases which may have ramifications across Europe: the UK Supreme Court's decision on "skinny labelling" of pharmaceuticals and the Milan Court of Appeal decision on whether "concept stores" such as the Apple Store deserve IP protection.

We hope you enjoy these articles. If you would like to discuss any of the issues raised, please contact any of the experts listed below or your usual Osborne Clarke contact.

The Copyright in the Digital Single Market Directive | Text agreed in trialogue discussions

The long and tortuous passage of the Copyright in the Digital Single Market Directive may finally be coming to an end with an agreement reached between the European Commission, Parliament and Council.

The Directive includes two provisions that have proven particularly controversial: the new press publication right (article 11); and increased obligations on content sharing platforms if they are to avoid liability for copyright infringing content on their platforms (article 13).

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TOP SECRET! | Updated guide to implementation of the Trade Secrets Directive

In June 2018, as the deadline passed for Member States to implement the Trade Secrets Directive, we looked at the state of play across several major EU Member States. As we found, many of those Member States had failed to bring in national implementing laws.

Nine months on, we revisit the position in our updated guide. There has been significant progress in the intervening time, but there remain some significant points of difference between national regimes, which businesses should be aware of.

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Why the CJEU may rock the boat of software audits

Is non-compliance with a software licence a copyright infringement (a tort) or a breach of contract?

This question is intensely debated by the software industry, as some if its main actors tend to audit their licensees and sue them for copyright infringement. That may, though, change, as the CJEU is being asked to decide the question definitively.

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De-branding and rebranding | The implications for the circular economy

The current drive against single-use plastics is just one part of the EU's Circular Economy package, which is aimed at "closing the loop" of product lifecycles. The re-manufacturing and refurbishing industries have an important part to play in the circular economy, but may find themselves caught by a CJEU decision on rebranding of goods.

The decision significantly strengthens the rights of trade mark owners where goods were being simply de-branded and rebranded without (other) modification, but the implications of the decision may be far wider.

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UK confirms how protection for EU registered rights will be maintained in the UK in a ‘no deal’ Brexit

The UK government has published another piece of draft legislation that aims to ensure protection for EU registered rights will be maintained in the event of a ‘no-deal’ Brexit.

The latest draft statutory instrument deals with EU designations of International trade mark registrations and also registered designs – both Community Registered Designs and EU designations of International designs.

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Italy | Does a concept store deserve IP protection?

Concept stores are a major trend in retail. Some are based around innovative uses of tech, from cashless Amazon Go stores in London to a VR-enabled Audi store in Hong Kong and a MAC Cosmetics store in Shanghai featuring 'virtual mirrors' and 3d-printed eye shadow palettes. But for all concept stores, one of the most important aspects will be the store's design.

An Italian Court of Appeal decision is an example of how a store design may be protectable under copyright law, as a work of architecture.

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UK | Supreme Court gives “skinny label” products (tentative) go ahead – good news for generic pharmaceutical companies and the NHS?

The decision in Warner Lambert v Actavis is good news for generic pharmaceutical companies who will feel emboldened to continue marketing "skinny label" products (i.e. for the treatment of non-patented indications, even where the same drug is under patent for a different indication).

If the case is followed in the future (particularly in respect of EPC 2000 claims), it is likely to make generic drugs more accessible for non-patented indications of patented substances, and, in turn, lead to cost-savings for the National Health Service.

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