Misleading brand name ‘Glen Buchenbach’ infringes the registered geographical indication ‘Scotch Whisky’

In a decision that extends the law of geographical indications into the territory of the UK tort of passing off, the District Court of Hamburg (the ‘Court’) has prohibited the use of ‘Glen’ in the name of a whisky that did not originate from Scotland on the basis of the geographical indication protection associated with ‘Scotch Whisky’ . Continue reading

Political agreement reached on controversial EU Digital Copyright Directive: A fair and balanced result?

Following a turbulent course of lengthy negotiations and delays, political agreement was finally reached by the European Commission, European Parliament and the Council of the EU on the revised proposal of the EU Copyright Directive (the “Directive“) earlier this month. The final consolidated text was made available on 20 February 2019.

The Commission first adopted its proposal for the Directive back in September 2016, as part of its Digital Single Market Strategy. The Directive forms part of a broader initiative to “adapt copyright rules” to ensure they are “fit for a digital era“. The modernisation is long overdue, given the changes which have occurred in the use of material on the internet since its inception, including the explosion of social media.

The Directive is intended to develop a fair and sustainable marketplace for creators, the creative industries and the press; to this end, in the Commission’s press release, Vice-President for the Digital Single Market, Andrus Ansip, referred to the Directive as a “fair and balanced result that is fit for a digital Europe“. The European Parliament’s press release also refers to the Directive re-dressing the balance; ensuring “tech giants” share revenue with “artists and journalists” and also incentivising internet platforms to enter into fair licensing arrangements with rights holders.

The legislation has, however, been the subject of considerable lobbying and public pressure by copyright holders, technology companies and consumer digital rights advocates, which is unsurprising, given the vast array of stakeholder interests at play. In particular it has implications for online platforms and media companies. We set out below further detail around the more contentious provisions, Articles 13 and 11, and discuss the next steps for the legislation.

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Herbert Smith Freehills’ global Trade Marks Practice lauded a ‘formidable force’ in WTR 1000 rankings

Herbert Smith Freehills has been lauded a ‘class act’, after it was ranked highly in the 2019 edition of World Trademark Review (WTR) 1000.

Now in its ninth year, the WTR 1000 highlights firms and individuals that are deemed outstanding in this area of practice.

Herbert Smith Freehills has been showcased in the research directory as being ‘a formidable force within the trademark sphere’ and a ‘prestigious commercial outfit’, after it was highlighted for having particularly strong trademark experience globally in WTR 1000. The firm’s practices in the UK, Australia, France and Italy were all highly ranked in the directory.

The publication singles out the firm for being “packed to the rafters with world-class talent that consistently exceeds the expectations of clients”.

WTR cites the “hands-on leadership”  of Joel Smith, UK Head of IP as crucial to the side’s recent growth and success and goes on to highlight Joel as “a brilliant strategic thinker” flagging his work for major brands alongside much-praised Paris Partner Alexandra Neri on cross-border trade mark disputes.

Global Head of IP Mark Shillito is lauded as an “exquisite complex problem solver and litigator” and Laura Orlando has also been showcased, after she helped set up our growing Milan office in late 2017. She is flagged for her, “super pragmatic and business oriented” approach, which makes her one of the “best IP lawyers in Italy”.

Celia Davies, who heads Herbert Smith Freehills’ Trademarks prosecution group in Australia, is “a true leader in the trademark market”. Melbourne Partner Shaun McVicar has also been held up as possessing a “commercial and strategic outlook on litigation” which means that brands are in “good hands when he is on a case.” Partner Sue Gilchrist is also singled out as being a “top-flight litigator” and Kristin Stammer as an “eminent adviser with terrific technical trademark knowledge”.

In its write-up of the firm’s trade mark practice, WTR comments, “Herbert Smith Freehills isn’t about being the biggest in trademarks; it focuses, instead, on quality and adding strategic value for blue-chip international rights holders – and routinely surpasses expectations in both regards.”

As with previous editions, to arrive at the 2019 rankings, WTR undertook an exhaustive qualitative research project to identify the firms and individuals that are deemed outstanding in this critical area of practice. The publication says that when identifying the leading firms, factors such as depth of expertise, market presence and the level of work on which they are typically instructed were all taken into account, alongside positive peer and client feedback.

To view the full write-up, please visit: https://www.worldtrademarkreview.com/directories/wtr1000


The Japan-EU Economic Partnership Agreement, the largest free-trade agreement between Japan and the EU (aka Japan-EU Free Trade Agreement or JEFTA) entered into force on 1 February.

JEFTA eliminates most custom duties and trade barriers between Japan and the EU and sets out rules enhancing mutual intellectual property protection and recognition.

JEFTA will not apply to the UK if there is a no-deal Brexit, as the UK is not an independent party to the agreement, only as part of the EU.

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Herbert Smith Freehills’ Brexit Legal Guide updated – comparison of IP and pharma provisions in the draft Withdrawal Agreement versus the No Deal provisions promised by the UK Government

See the updated IP section of the revised Herbert Smith Freehills Brexit Legal Guide which reviews the IP and pharma elements of the draft Withdrawal Agreement endorsed by the EU Council on 25 November 2018 and the no deal provisions as set out by the UK Government in its technical notices and draft SIs issued towards the end of last year.


  • IP rights which are designated as applying across the EU (EU trade marks, Community plant variety rights, Community registered designs and Community unregistered designs) and those, qualification for which involves activity within the EU (such as sui generis database rights), are all at risk of termination in relation to the territory of the UK once the definition ‘EU’ no longer includes the UK.
  • However, the Withdrawal Agreement endorsed by the EU Council on 25 November 2018 (the Draft WA) provides for replacement IP rights to be provided by the UK and for coordination of information between the MHRA and EMA in relation to marketing authorisations.
  • If there is no deal, the UK Government’s own no deal technical notices state that registered rights will be replaced with equivalent rights in the UK and draft statutory instruments have been published confirming this.
  • Should the UK leave the EU with no deal, ie not agree the Draft WA or any other arrangements, the SIs will provide amendments to UK IP law to take account of this, just as they would at the end of the transition period if there were no further agreement in the interim.
  • The Draft WA does not make provision for patents or the UPC, nor for pharmaceutical regulatory issues. These latter were covered in some detail however in a series of no deal technical notices issued by the Government in August 2018 on what the implications of a no deal Brexit would be.

No deal

No deal arrangements for IP rights effectively mirror the provisions set out in the Draft WA in any case, as they provide for replacement of registered rights and the recognition of unregistered rights that are existing in the UK at the date the UK leaves the EU. The main exception is for Geographical Indications. These will no longer be recognised in the UK if originating from the EU. The UK would set up its own geographical indication protection system. In either a no deal or Draft WA situation, UK originating Geographical Indications would not apply in the EU post-Brexit. Similarly the provision made in the Draft WA for the exchange of information between the EMA and the MHRA would not be agreed and would need to be negotiated separately.

The UK Government has said that, in relation to exhaustion, if there is no deal “the UK looks forward to exploring arrangements on IP cooperation that will provide mutual benefits to UK and EU rights holders and we are ready to discuss issues the EU wishes to raise in the negotiations on our future relationship, including exhaustion of IP rights”; whereas the Draft WA provides that IP rights that were exhausted both in the EU and in the UK before the end of the transition period under the conditions provided for by EU law shall remain exhausted both in the EU and in the UK post-transition. If there was no deal, this would mean that whilst exhaustion within the EU (as it is then constituted) will continue, the UK courts would be able to exercise local or international exhaustion as they see fit. Historically the UK has taken an international exhaustion approach pre-EU membership.

Read more in the Herbert Smith Freehills Brexit Legal Guide – Intellectual Property and Brexit (including pharmaceutical sector provisions)


Rachel Montagnon
Rachel Montagnon
Professional Support Consultant
+44 20 7466 2217

Changes to the UK trade mark regime: Trade Marks Regulations 2018 – coming into force on 14 January 2019

The new EU Trade Mark Directive (2015/2436), designed, in part, to make trade mark law across the EU fit for the digital age, will be implemented into UK law on 14 January 2019 via the Trade Marks Regulations 2018 (the Regulations). It makes significant and important changes to the UK trade mark regime.

Key changes are:

  • Graphical representation is no longer a pre-requisite for registration of a trade mark so sound and motion or hologram trade marks may now be registered (amendments are made to the technical function exception to apply to new forms of trade mark representation too).
  • Seizure of goods passing through the UK will now be easier with the burden of proof on the shipper not the trade mark owner.
  • Licensing and assignment of trade marks: There are several changes to the Trade Marks Act 1994 (TMA) implemented via the Regulations which affect the rights and remedies of licensors and licensees of registered trade marks in the UK, including changes to rights to bring proceedings. There is also provision for a contractual obligation to transfer a business to be taken to include an obligation to transfer any registered trade mark or application of that business, except where there is agreement to the contrary or it is clear in all of the circumstances that this presumption should not apply. For further details see the section on Licensing and Assignment below.
  • Trade marks shown (incorrectly) as generic terms in dictionaries: The regulations provide for court action to be brought where dictionaries refuse to amend reference to a registered trade mark as a generic term (where this is incorrect). A new section 99A TMA.
  • Infringement claims may be brought without the need for an invalidity claim also: An action for infringement of a registered trade mark by another registered trade mark may be brought without the need for an invalidity application (as was previously the case).
  • Changes to infringement defences:
    • The “own name defence” will now only apply to personal names (not company or trading names);
    • Non-use will now also be a specific defence;
    • If a similar earlier mark had expired before you registered yours and is then renewed or restored, you have a defence to infringement allegations for a fixed period.
  • Anti-counterfeiting measures: Greater scope for civil actions of enforcement against those preparing tags and security or authenticity features or devices, as well as labels and packaging to which trade marks are attached in an unauthorised fashion, prior to making counterfeit products (rather than recourse to criminal offences).
  • Opposition – proof of use – changes to the start of the 5 year period of use.
  • There are also provisions on collective trade mark ownership and rights to bring actions, and on division of trade mark registrations.

The old Trade Mark Directive 2008/95/EC is repealed with effect from 15 January 2019.

The main changes to UK trade mark law and practice are set out in more detail below:

Licensing and Assignment

Rights of Licensor: Under the revised TMA, a licensor may bring proceedings against a licensee who breaches certain provisions of its licence. These new rights of the licensor are in addition to the rights the licensor may have to bring proceedings against a licensee for breach of the licence under contract law.

The relevant provisions must relate to:

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Preparations for the UPC continue despite an “unpredictable environment”

The UPC Preparatory Committee has issued a “Status of the Unified Patent Court Project” statement and review of 2018, confirming that there are now 16 states which have ratified the UPC, and that German ratification is still awaited (dependent on the outcome of the complaint pending before the Constitutional Court in Germany) before the project can move into provisional application phase. This latter phase is allows the courts to be prepared and judges to be appointed.


Despite the current, somewhat unpredictable environment, the technical and operational preparations are continuing allowing for the project to move at pace in the event of a positive outcome from the German Constitutional Court“.

The press release says nothing more than was already known, but it does confirm that the status of the project is constantly being reviewed, stating that the Chairman of the UPC Preparatory Committee “continues to meet with the Executive Group and the operational team on a monthly basis” and noting that those that have applied for judicial positions in the Unified Patent Court are being contacted separately.


Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, London
+44 20 7466 2217

Advocate General proposes literal interpretation of Article 3(d) SPC Regulation in Abraxis (C-443/17)

The Advocate General of the CJEU proposed a narrow interpretation of Article    3(d) in the Opinion given yesterday in Abraxis Bioscience LLC v Comptroller General of Patents 13 December 2018, one that would marginalise the effect of the CJEU’s decision in Neurim (C-130/11). If followed by the CJEU, this position would be met with disappointment by the pharmaceutical industry, which continues to make significant investments in researching and developing formulations that improve efficacy and new uses of known products.

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Patent and Pharma Update – December 2018

Key recent developments in the United Kingdom and Europe relating to patents and the pharmaceutical sector

This issue reports on several ground-breaking decisions from the UK courts on second medical use patents and skinny labels, infringement by equivalents and the possibility of global FRAND licences for standard essential patents (SEPs).  We also look at some significant decisions from the CJEU on SPCs and reimbursements in relation to medicinal products and a few developments at the European Patent Office. Finally, we provide our usual round-up of the latest UPC developments (this time from Italy) and Brexit-related developments relevant to the pharma sector. Continue reading

Italy moves the unitary patent a step closer

The Italian Government approved a draft Bill on 21 November 2018 aimed at adapting the Italian IP Code to the Unitary Patent Regulation (EU 1257/2012) and the Unified Patent Court (UPC) Agreement. The next step before the Bill is passed will be for the Italian Parliament to give its favourable opinion.

The draft Bill will essentially amend the Industrial Property Code in Italy to incorporate unitary patent protection and the jurisdiction of the UPC.

What’s new?

  • Safety net

Under the current system a European patent acquires effect in Italy once an Italian translation of the patent has been filed with the Italian Patent Office within three months of the publication of the patent grant. Once the UPC is in place, holders of European patents will be entitled to apply for their European patents to have unitary effect in all 26 Member States that have participated in the enhanced cooperation to create the unitary patent, within one month of the patent grant being published on the European Patent Bulletin.

There is a degree of uncertainty as to whether the process for applying for unitary effect will take longer than the 3 months, in which case the patentee will have lost out on the chance to validate their patent in Italy.

The draft Bill has therefore introduced a safety net mechanism whereby if an application for unitary effect is rejected or withdrawn, the 3 month term for the validation in Italy will take effect from the date when they receive the rejection or of the withdrawal. This will allow patentees to validate a patent in Italy even if their unitary application is not granted.

  • Experimental use exception

Another important amendment concerns the experimental use exemption. Under the draft Bill, the rights conferred by a patent shall not extend to acts carried out for experimental purposes relating to the subject matter of the patented invention or to the use of biological material for the purpose of breeding, or discovering and developing other plant varieties.

The previous wording of the Italian Industrial Property Code did not include a specification regarding the type of experimental use. In essence, this limitation of the experimental purposes to “the subject matter of the patented invention” could lead to a more restrictive interpretation of the scope of permitted “experimental use” (e.g. limited to experiment “on the patented invention” and not “with the patented invention” in line with Italian case law).

  • Infringement exemption for vessels/aircraft/vehicles

The draft Bill would introduce an exemption for the use of patented inventions on board vessels or in the construction or operation of aircraft or land vehicles or other means of transport of countries of the International Union for the Protection of Industrial Property (Paris Union) or members of the World Trade Organisation, when such vessels or vehicles temporarily or accidentally enter the Italian territory.

  • Transition period

The draft Bill guarantees the application of Italian law to proceedings concerning European patents until the UPC Agreement comes into force and for the duration of its transition period.

The final touches

The remainder of the draft Bill is aimed at removing any inconsistencies with existing provisions governing patents in force in Italy and their application to unitary patents where necessary. If significant changes are not required to it, the draft Bill could be approved in the near future.

The draft Bill rounds off Italy’s preparations for the unitary patent and UPC system, which had been put into motion with the amendment of the Italian Industrial Property Code to incorporate provisions on indirect infringement as required by the UPC Agreement.



Sebastian Moore
Sebastian Moore
+44 20 7466 2801
Sara Balice
Sara Balice
Senior Associate
+39 0200681363
Martina Maffei
Martina Maffei
+39 0200681353