IP@OC update | July 2017

Written on 6 Jul 2017

Welcome to the latest edition of Osborne Clarke’s international IP update, IP@OC.

In this edition, we focus on the practical steps that rights holders can take when you think that your rights may have been infringed online:

  • Our Spanish team of Mario Gras, Rafael Garcia Del Poyo and Samuel Martinez review the various types of rights that can be infringed online, and how this is dealt with under Spanish law.
  • Dr Johannes Graf Ballestrem in Germany looks at the options that rights holders may have to pursue alternative targets, such as intermediaries or network service providers.
  • Kevin Elber and Chia-Ling Koh consider how a recent law introduced in Singapore on website takedowns is working and what challenges still remain.
  • In Italy, Margherita Gnech and Marialaura Boni look at a fast-track process that has been introduced by the communications regulator, under which the rights holders can apply for infringing content to be removed, with the regulator able to block website or fine those who do not comply.
  • Finally, Douglas Peden in the UK offers some practical and tactical tips for securing the results you are after, where possible without having to exhaust the full legal mechanisms through the courts.

Meanwhile, Claire Bouchenard reports on a recent French decision which was based on the principle that the more famous the brand, the more distinctive it is for the purpose of trademark infringement. We are pleased to report that our French IP team has been recognised by French legal directory, Décideurs in its latest rankings. We have been placed in the top tier for Information Technology, have also moved up the rankings in Data Protection and been ranked for the first time in the Patent Litigation category.

Osborne Clarke’s Italian IP team has also been in the press recently, successfully representing Sony Music in an on-going IP dispute regarding an injunction to block the sale of Roger Water’s new album Is This The Life We Really Want? based on the contention the artwork infringes on the copyright of Italian artist Emilo Isgrò.

Finally, Lorna Brazell provides an update on the Unified Patent Court, the ratification of which faces further delays in the UK, and in Germany, where it is subject to a challenge as to its constitutionality. This is all quite apart from the small issue of Brexit, and what this will mean for the UPC.

We hope you enjoy these articles. If you would like to discuss any of the issues raised, please do contact one of the experts listed below.

What action can an IP owner take when it finds its work being infringed online in Spain?

Under Spanish law, there is a wide range of potential remedies in case of an illegitimate or unlawful use of an IP asset, such as drawings, designs, distinctive signs, logos, look & feel, software, or patentable hardware.

IP assets may be simultaneously subject to various legal regimes that can be used to protect complementary aspects of them, and Spanish law provides a number of legal protections and remedies in relation to these various aspects.

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Responses to online infringement of Intellectual Property Rights in Germany

The problem of online infringement has already given rise to extensive jurisprudence in Germany. Often, it is impossible to hold the direct seller responsible when an IP owner finds products infringing its rights online. Therefore, it can be necessary to take action against an intermediary such as a provider of an online shop or an internet auction platform (such as eBay), a host provider or even an access provider. However, the remedies and legal tests vary depending on the potential target, so consideration needs to be given as to where action is most likely to be effective.

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Copyright: site-blocking in Singapore

In 2014, Singapore amended its Copyright Act to enable the courts to make an order, requiring a network service provider whose services have been or are being used to access an online location to commit or facilitate infringement of copyright, to block access to a “flagrantly infringing online location”. The new powers, which are aimed at combating online privacy by giving rights holders a more effective tool to disable access to pirate websites, are proving effective.

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Protecting copyright in Italy: AGCOM procedure proving successful

Starting from March 2014 an Intellectual Property rights owner, finding its work/product being infringed online in Italy, may start a proceeding before the Italian Communications Authority in order to protect its rights. The aim is to thwart the diffusion of digital works in violation of authors’ exclusive rights and to protect all those who run a website as well as providers.

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Cutting through it all: practical steps when you find online infringements of your IP

When you discover that your IP is being infringed online, there are numerous pieces of legislation and lines of caselaw which can come into play. The risk is that you can end up going round in circles. For in house teams who need to react quickly to these infringements, cutting through the complications is important.

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Puma’s strong reputation broadens its exclusive rights

In a recent decision, the French Court of Cassation relied on the principle that the more famous a trade mark is, the more distinctive it must be considered, to uphold Puma’s challenge to a trade mark application. The justification is that the distinctiveness of a famous trade mark reinforces its protection as it increases the likelihood of confusion with other trademarks.

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Puma’s strong reputation broadens its exclusive rights

In a recent decision, the French Court of Cassation relied on the principle that the more famous a trade mark is, the more distinctive it must be considered, to uphold Puma’s challenge to a trade mark application. The justification is that the distinctiveness of a famous trade mark reinforces its protection as it increases the likelihood of confusion with other trademarks.

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Once more unto the UPC, dear friends?

Henry V’s “band of brothers” ultimately succeeded against enormous odds in capturing Harfleur. But the chances of the UPC becoming a reality in the face of continuous set-backs remain uncertain despite the phenomenal persistence its promoters have displayed over more than a decade of challenges.

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