Lithuania has now ratified the UPC Agreement (UPCA) (on 24th August 2017) making it the 14th state to do so (see the UPCA ratification index here).
Under the terms of the UPCA, the Agreement can only come into effect once at least 13 contracting states have ratified, but these must include France, Germany and the UK (if all other ratifications are in place prior to Brexit) or Italy (if post-Brexit). France and Italy have already ratified, as have Austria, Belgium, Bulgaria, Denmark, Estonia, Luxembourg, Malta, the Netherlands, Portugal, Sweden and Finland. Once all the required ratifications are in place the UPC can commence on the first day of the fourth month after the last required ratification.
What is causing the delay? Continue reading
In an article published in the latest edition of CITMA Review, Joel Smith and Emily Bottle comment on the Court of Appeal’s recent judgment in Flynn Pharma Ltd v DrugsRus Ltd  EWCA Civ 226.
This case examined how a balance can be struck between a trade mark owner’s ability to enforce its rights and the fundamental principle of free movement of goods, applying the law in detail to an unusual pharmaceutical fact pattern. Lord Justice Floyd’s detailed analysis of the scope of Article 36 TFEU is a very useful summary of the case law in this area. He confirms that trade mark owners can enforce their marks against imported goods that they did not place on the market and over which they have no control, even where the imported goods are identical goods produced by the same manufacturer.
For the full article, see here.
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Estonia ratified the UPC Agreement (UPCA) on 1 August 2017, making it the thirteenth contracting member state to do so (see the European Council’s ratification index here). Under the terms of the UPCA, the Agreement can only come into effect once at least 13 contracting states have ratified, but these must include France, Germany and the UK (if all other ratifications are in place prior to Brexit) or Italy (if post-Brexit). France and Italy have already ratified, as have Austria, Belgium, Bulgaria, Denmark, Luxembourg, Malta, the Netherlands, Portugal, Sweden and Finland. Once all the required ratifications are in place the UPC can commence on the first day of the fourth month after the last required ratification.
The use of the name “Champagner Sorbet” by the German supermarket chain Aldi for a sorbet dessert containing actual Champagne (12% by volume) was challenged by the Comite Interprofessionel du Vin de Champagne (trade association for Champagne houses) as unapproved (infringing) use of the Protected Designation of Origin (PDO), “Champagne”.
From 1 July 2017, the EPO will no longer grant patents for plants and animals exclusively obtained by means of an “essentially biological process”. This follows a European Commission Notice dated 8 November 2016 (please click here for the full text of the Commission Notice) clarifying that the EU legislator had intended to exclude such plants and animals (either in whole or in part) from patentability when adopting the EU Directive on biotechnological inventions (Directive 98/44/EC) (the “Directive“).
Brand reputation is intimately connected with the manner and context in which products are purchased, so the Opinion of the Advocate General of the CJEU in the Coty (C‑230/16) reference (issued on 26 July 2017) will be welcomed by luxury brand owners seeking to maintain the highest standards for their brands.
The Supreme Court has redefined the UK approach to determining patent infringement. In doing so, it has made the approach more permissive, seeking to align the UK approach with that taken in other European countries. Continue reading
Herbert Smith Freehills has been named IP Team of the Year at The Lawyer Awards 2017, for its work defending one of the largest-ever patent cases to be heard in the UK High Court.
Earlier this month, Herbert Smith Freehills was also awarded Transatlantic IP Team of the Year at the American Lawyer Awards 2017, for the team's successful work on Gilead (and was also named Litigation Team of the Year for work on the disputes surrounding the collapse of the Nortel Networks group).
The Unified Patent Court (Immunities and Privileges) Order 2017 was laid before Parliament on 26 June 2017 – see the explanatory memorandum here. This Order implements the Protocol on Privileges and Immunities of the UPC (the Protocol) and confers legal status in the UK on the United Patent Court and privileges and immunities on the Court, its judges and staff under the International Organisations Act 1968 (which allows the grant of certain immunities and privileges to the international organisation and its officers and employees). This Order needs to be passed before the UK can ratify the Protocol as well as the UPC Agreement itself. However, both Houses of Parliament will be required to debate the measure before approving it and it will also need the approval of the Privy Council.
As we have reported on our Intellectual Property Notes blog and on our UPC Hub here, the timetable for the UPC appears to be slipping, due not only to delays by the UK, in part due to the recent general election, but also the recent challenge to German ratification mounted in the German Constitutional Court. The UPC Preparatory Committee have withdrawn their 1 December 2017 start date and are as yet unable to confirm any further dates.
Rachel MontagnonProfessional Support Consultant, LondonEmail
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Following on from its recent decision in Filmspeler, the CJEU has handed down its judgment in Stichting Brein v Ziggo, C-610/15 (The Pirate Bay), concluding that operators of the online sharing platforms are making a 'communication to the public' within the meaning of the InfoSoc Directive, and hence an actionable infringement.