Trademarks, Art and ‘Subject Matter’

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The use of artists’ names, fictional characters’ names or titles of art works is a common practice in the trademark world. Tarzan, Van Gogh and Star Wars are inhabitants of trademark registers across different jurisdictions. The reasons for this are fairly obvious. Such names are recognizable and impregnated with reputation; they convey positive notions and have an aura of exclusivity to them. Aside from that, applicants who request these marks are often owners of different direct rights (i.e. copyright) or have other vested interest in them. One could say they are the “rare Pokemons” in the trademark universe. Their owners are inclined to use them across a wide range of goods and services. Therefore, one can find trademark registrations as “Batman” for lip balm (EUTM 000038125) or “Rembrandt” for toothbrushes (EUTM 000194613). This approach is easily applicable as, from a trademark law point of view, such marks are by their nature distinctive and non-descriptive. However for certain types of goods and services this does not necessarily apply. These are the goods and services which have ‘subject matter’.

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Revised Patent Examination Guidelines in China welcome more patents on business models

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Last October, the State Intellectual Property Office of China (SIPO) released draft revisions to its Guidelines for Patent Examination for public consultation (see my earlier post). This month, SIPO published the final text of the revised Guidelines, which will enter into force on 1 April 2017. In comparison to the draft, the final version remains substantially unchanged. This may be a sign of support from the stakeholders. In fact, the proposed revisions received a quite good press immediately after their release, even when it comes to the part of revisions regarding patents on business models, which have been and probably are still one of the most controversial aspects of the IP system in many other countries such as the U.S.

As the SIPO explicitly stated, the planned revisions are aimed to strengthen the IP protection for innovation in emerging fields such as Internet, e-commerce, big data and to improve the IP protection system for business models. This emphasis reflects the state of innovation in China, where indigenous businesses have been so far quite successful in developing innovative services and products in these emerging fields. While it can be debated whether an expansion of patent protection into the arena of business models would indeed do more good than harm to the innovation, the objective of the Chinese policymakers is clear: to promote business model innovation through more IP protection.

While it remains to be seen in long term whether the above policy objective can be achieved, it is for individual inventors and businesses more interesting what immediate changes in practice will come out of the planned revisions. So, let’s first take a look at the revision itself. Continue reading “Revised Patent Examination Guidelines in China welcome more patents on business models”

IP issues in the telecom industry – An interview with Matteo Sabattini

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The telecommunication industry has experienced a rapid and constant growth over the years. Now the 5G technology and the “Internet of Things” are behind the corner, but a number of legal and regulatory issues are being discussed.  We talk about this and much more with Matteo Sabattini, expert in IP-related matters (for his complete bio, scroll down).

Good morning Dr. Sabattini. What’s the weather like today in Washington DC?

Earlier today, it was snowing. Light flurries. Quite unexpected considering that yesterday we had temperatures close to 20 degrees Celsius and spring weather conditions!

Today you are a patent and technology policy expert. What led you into this field? As a student, did you expect to work in this field?

In college, I was passionate about technology and engineering. I had initially envisioned myself as a researcher, an academic or an R&D engineer. And, in fact, that is what I did after I graduated and what pushed me to get a Ph.D. in Electrical Engineering. I got into IP with an internship at a consulting firm in Boston. While I was growing frustrated with the pace and the often-challenging industrial applicability of academic research, I enjoyed the diversity that working on patents gave me. I was learning quickly and eagerly about a new field, where I could still use my technical skills in a much more applied fashion. Through the years, as I was learning more about IP, I gradually moved from pure technical support to business and commercial aspects of the business. Continue reading “IP issues in the telecom industry – An interview with Matteo Sabattini”

Restriction of competition by object after Cartes Bancaires: further developments

How to assess whether an agreement between competitors has an anticompetitive object? In general, an agreement is known to be anticompetitive by object (or “per se”) when competitors agree on prices and quantities. However, when an agreement contains pro and anti-competitive features, a balance should be struck and the analysis is more complicated.

This assessment has an enormous impact on the burden of proof lying on competition authorities in antitrust investigations. Indeed, when competition authorities conclude that an agreement is restrictive by object, they do not have to prove the existence of an anticompetitive effect.

For decades, the antitrust community tried to  to make a clear distinction between those agreements, which are restrictive by object and the ones whose effects have to be analysed in more depth. Finally, in the last years courts around Europe have handed down a number of judgments on this issue, trying to limit the frequent recourse by competition authorities to the “object shortcut”.

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TVCatchup II – Retransmission by cable not “exempted” in the InfoSoc Directive

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Last November, I reported on the GS Media case (C-160/15), which certainly gave rise to some debate. It appears that the CJEU is quite actively handing down judgments in the area of copyright. This is perhaps not too surprising, since the member states still have quite different national legislations and the harmonization from the EU is by no means exhaustive. Additionally, and more importantly, especially national copyright laws lag behind the rapid technical development, which is why many questions of interpretation may arise in national courts.

Only a few days ago, on 1 March, the CJEU handed down its judgment (C-275/15) in the case TVCatchup II. The national law in the UK included a provision, which roughly provided that copyright is not infringed in the case of immediate retransmission by cable. The relevant question from the UK court was “whether Article 9 of Directive 2001/29, and specifically the concept of ‘access to cable of broadcasting services’, must be interpreted as covering and permitting national legislation which provides that copyright is not infringed in the case of the immediate retransmission by cable, including, where relevant, via the internet, in the area of initial broadcast, of works broadcast on television channels subject to public service obligations.”

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The scope of patent with an extended term became clearer with three concrete standards provided by the IP High Court in Japan

A patent term may be extended if there is a period during which a patented invention is unable to be worked until a marketing authorization has been granted (For further information, see here). However, there was, until recently, no case law in Japan on the interpretation of the scope of patent with an extended term, and high uncertainty as to patent infringement by generic drugs was a big issue in the pharmaceutical industry. On 20th January, 2017, the IP High Court’s judgment (grand panel) was handed down, answering this issue by establishing three concrete standards. This judgment attracts great attention of generic companies and will boost their marketing of generic drugs because these standards contributed to clear away the uncertainty of patent infringement.

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On sausages and Facebook/WhatsApp – Germany reforms its antitrust act (part 2 of 2)

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Guest post by Rupprecht Podszun, professor of Civil Law, German and European Competition Law at the University of Düsseldorf *

The German legislator currently amends the competition code so as to update it for the digital economy. This is a pioneering step. After having examined part of the proposed amendments yesterday (see here), this post will describe the new rules for the digital economy.

New rules for the digital economy

The implementation of the directive and the closing of the sausage gap coincided with a heated debate in German media on the power of internet companies, these Voldemorts from the Silicon Valley. Vice-Chancellor Sigmar Gabriel and the head of the influential German media house Axel Springer, Mathias Döpfner, led the campaign against Google & Co. And so, Gabriel’s ministry came up with new rules for the digital economy. Continue reading “On sausages and Facebook/WhatsApp – Germany reforms its antitrust act (part 2 of 2)”

On sausages and Facebook/WhatsApp – Germany reforms its antitrust act (part 1 of 2)

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©Bundeskartellamt


Guest post by Rupprecht Podszun, 
professor of Civil Law, German and European Competition Law at the University of Düsseldorf *

The German legislator currently amends the antitrust act so as to update it for the digital economy. This is a pioneering step. This post will deal with some of the proposed amendments, while the next post (see here) will describe the new rules for the digital economy.

All EU Member States are working on a change of their competition law statutes, and actually should have completed that work by December 27, 2016. They need to implement the EU directive on antitrust damages claims (2014/104/EU) which aims at facilitating damage claims for victims of cartels and other anti-competitive practices that violate Art. 101 and 102 TFEU. At present, a mere handful of Member States has communicated success in amending their laws (see here). Continue reading “On sausages and Facebook/WhatsApp – Germany reforms its antitrust act (part 1 of 2)”

The lords of law – Veit Stoll (MSD)

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TrustinIP inaugurates a series of interviews to lawyers that stand apart for their excellent skills. We will ask these “lords of law” to  express their view on legal issues and personal opinions, hoping to give our readers some enjoyable minutes. We start with Veit Stoll, Director Legal Affairs & Compliance for MSD Germany, Austria and Switzerland.

Good morning Mr. Stoll. What’s the weather like today in Munich?

Pretty fair. Partly sunny and some degrees Celsius above zero.

Today you are a renowned lawyer. What led you into studying law? As a school student, did you wish to become a lawyer?

Yes. Always wanted to be independent and have a broad education as basis for a variety of career choices. Continue reading “The lords of law – Veit Stoll (MSD)”

Recent developments on the admissibility of patent term extension in Japan

Drugs are not allowed to be marketed without a marketing authorization. Taking into account the investment on R&D for a new drug and the necessity to recoup such investment, the patent term may be extended by a period not exceeding 5 years if there is a period during which the patented invention cannot be worked. Later in this post, I will discuss the judgment of the Japanese Supreme Court in 2015, which caused the guidelines on patent term extension to be significantly amended.

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