Brexit “no deal” technical notices published on Patents, Trade marks, Designs, Copyright, GIs, and Exhaustion of rights

The latest tranche of “no deal” technical notices was released yesterday afternoon by the UK Government. Amongst them are several notices that highlight the Brexit issues faced by intellectual property right owners and, in some cases, confirm the Government’s approach to resolving them. The Government also released this news story today which comments on the guidance given in the technical notices and comments on the Government’s longer term aims for IP protection.

Key announcements, in the context of no deal, are:

  • Provision of a new right to replace unregistered Community design rights, to be known as “the supplementary unregistered design right“.
  • Existing EUTMs and Community registered designs will be replaced with new, equivalent rights in the UK at the end of the implementation/transition period, “with minimal administrative burden“.
  • The SPC, compulsory licensing, pharmaceutical product testing exception and patenting of biotechnological inventions regimes will remain unchanged at least initially.
  • If the UPC comes into force the UK will replace unitary patent rights with equivalent rights if the UK needs to withdraw from the new system, although the UK “will explore whether it is possible to remain within it“. The Government’s news story states that “The UK intends to stay in the Unified Patent Court and unitary patent system after we leave the EU.”
  • UK originating sui generis database rights will no longer be enforceable in the EEA; “UK owners may want to consider relying on other forms of protection (e.g. restrictive licensing agreements or copyright where applicable) for their databases
  • The UK will set up its own GI schemewhich will be WTO TRIPS compliant“. The new rights “will broadly mirror the EU regime and be no more burdensome to producers“.  Since the UK would no longer be required to recognise EU GI status, EU producers would be able to apply for UK GI status. Those wishing to protect UK GIs in the EU will need to submit applications on a third country basis.
  • The UK will continue to accept the exhaustion of IP rights in products put on the market in the EEA by, or with the consent of, the rights holder. However, the EU will likely not consider that goods placed on the UK market are exhausted in the EEA, and thus permission may need to be sought from the rights holder to transfer goods to the EEA that have legitimately been put on the market in the UK. The Government news story says that “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”.

Links to the notices:

  1. Patents
  2. Trade marks and designs
  3. Copyright
  4. Geographical Indications
  5. Exhaustion of IP rights

More detail on each of these is provided below. For those with an interest in Life Sciences please also see our blog post on the notices related to that sector that were released last month.

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EU Digital Copyright Directive – European Parliament adopts amended text

In the second reading of the Digital Copyright Directive by the European Parliament on 12 September 2018, the controversial Articles 11 and 13 were adopted but with amendments.

These articles provide for:

  • a specific right of digital reproduction for the press in relation to their publications under Article 11, which includes the right to prevent others from reproducing their material (amendments shown here in italics):  “Member States shall provide publishers of press publications with the rights provided for in Article 2 and Article 3(2) of Directive 2001/29/EC so that they may obtain fair and proportionate remuneration for the digital use of their press publications by information society service providers“.  These rights would not be retrospective and would expire 5 years from publication (calculated from the first day of January of the year following the date of publication).  Personal, non-commercial use is not to be caught by this provision and mere hyperlinking is to be allowed). However,”Member States shall ensure that authors receive an appropriate share of the additional revenues press publishers receive for the use of a press publication by information society service providers“.
  • protection of the interests of rights-holders in protected material which is communicated to the public via online content sharing services under Article 13: The providers of these services store and give access to large amounts of works and other subject-matter uploaded by their users and the amended text requires them to ensure its integrity and security and agree licence terms for such use or to prevent works being made available if requested by the rights-holders. Complaints procedures must also be provided for, including “human review”.

However, since the adopted text is not the same at the European Parliament’s first reading, the text now needs to go through the informal trialogue negotiations procedure. This involves discussions of the text between the European Parliament, Council and Commission in order to establish an agreed text, which may take some time The negotiation of these provisions will be followed with great interest by the major online platforms, content industry and publishers.

The adopted text can be viewed here.


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


On 25 July 2018, Advocate General Wathelet issued his opinion in an interesting case pending before the Court of Justice of the EU (CJEU) (C-310/17) concerning copyright over the taste of a food product.

The AG took the view that EU law precludes the taste of food from being protected by copyright, essentially because:

  • the notion of “literary and artistic works” in the Berne Convention includes only subject-matter that can be perceived through sight or hearing, therefore implicitly excluding those perceivable through other senses like taste, smell or touch; and
  • artistic works should be identified in a precise and objective manner in order to allow third parties to understand their scope of protection. This is not the case for the taste of food products.

Business impact

This case is particularly interesting as it is the first time that the CJEU will rule on the copyright of the taste of a food product and, more generally, on the notion of copyright work which is not defined under Directive 2001/29/EC (“InfoSoc Directive”).

Food scientists in major food businesses may be disappointed not to obtain a new layer of protection for creating new tastes.

The opinion of the AG confirms the difficulty of ensuring copyright protection for the taste of a food product, as well as for perfumes, as observed in the field of trade marks.  Even though the new EU Trade Mark Regulation does not require a sign (any longer) to be capable of being graphically represented in order to be registered as a trade mark, in practice it is not yet possible to register a taste or a smell as a trade mark as the subject-matter of protection cannot be determined with clarity and precision with generally available technology.

If the CJEU were to follow the opinion of the AG in its Judgment, many producers of food products and perfumes will remain disappointed that their creative efforts are not recognised by legal protection through copyright. Continue reading

UKSC judgment in Cartier – who pays for website blocking orders?

In a blow for rights-holders, the UK Supreme Court (UKSC) has today decided that ISPs should not bear the implementation costs for website blocking orders in Cartier International AG and others v British Telecommunications Plc and another [2018] UKSC 28.   Whilst the UKSC has endorsed the availability of blocking orders for rights-holders, it has reversed the costs position, finding that rights-holders should indemnify the ISPs for the reasonable costs of implementing the orders.

This is a very important case in relation to the ability of brand owners and others to obtain blocking injunctions against intermediaries, such as ISPs to prevent third party website operators offering infringing or counterfeit branded products. The UKSC decided the pivotal question of who should bear the cost of implementing blocking orders, in terms of deploying monitoring, filtering and web blocking technology – the ISP or the brand owner?

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Targeting Online Risk

In our latest publication in our Future of Consumer series on issues facing the Consumer sector, we look at some of the online risks threatening businesses today.

We examine the options available to tackle IP infringements online, such as the sale of counterfeit goods, with a focus on the most powerful weapon for rights holders – blocking junctions from the courts. We also provide some practical tips to help tackle and combat online infringements.

Joel Smith
Joel Smith
Head of IP - UK
+44 20 7466 2331
Sarah Burke
Sarah Burke
Senior Associate, London
+44 20 7466 2476

Innovation Disruption and Technology – the legal and commercial issues for your business

Drawing on our practitioners’ experience and understanding of the intellectual property and technology issues facing our clients in the fast changing world in which we all now do business, we made innovation and disruptive technology the key themes at our 2018 IP Update Conference.

Described by one attendee as “The perfect mixture of commercial and legal content”, the event was held in our London offices in February 2018. We were joined by over 140 clients from the Technology, Banking, Consumer, Energy, Manufacturing, Media, Pharmaceutical & Healthcare, and Telecommunications sectors.

Click here for a briefing summarising the legal and commercial issues raised by the Herbert Smith Freehills presenters and our keynote speaker Kevin Mathers, Country Director at Google UK.

Our keynote speaker, Kevin Mathers, set the scene by discussing the current technological landscape for innovation and how Google looks at the future. Taking examples of how artificial intelligence, augmented reality and virtual reality are already being used by Google and looking at the major trends which will dictate our digital future. Kevin’s presentation was a great success, with attendees describing it as “really insightful and inspirational”; “engaging and interesting” and “stimulating and thought-provoking”.

The conference continued with sessions on

  • tackling the impact of AI on your business,
  • on-line risk,
  • open innovation,
  • interoperability and product standards, and
  • targeted advertising and the GDPR.

There was also a panel session at the end of the conference to discuss the issues facing businesses in relation to disruptive technology with contributions from partners and of counsel across the IP and IT practice areas and from several of our European offices.

Clients were impressed by the range of issues presented by the speakers and the practical approaches offered.


Joel Smith
Joel Smith
Head of IP - UK
+44 20 7466 2331
Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, London
+44 20 7466 2217


UK High Court rules on copyright and joint authorship: “useful jargon”, “helpful criticism” and “minor plot suggestions” are not enough

Summary and key findings

The UK High Court, in Martin v Kogan, ruled, on 22 November 2017, that the defendant’s contribution to the screenplay for the film Florence Foster Jenkins, starring Hugh Grant and Meryl Streep in the role of Florence Foster Jenkins, a famous American socialite known for her poor opera singing, was insufficient to amount to joint authorship.

While the parties had worked on early drafts together, HHJ Hacon found that there had been no collaboration between them in respect of the final version of the screenplay and Ms Kogan’s textual and non-textual contributions had been insufficient.

Business impact

  • Film production companies should make due diligence enquiries as to authorship of commissioned screenplays, and ask about any key contributors and the extent of their contributions. Contractual warranties as to authorship may not shield them from a future copyright infringement action by uncredited authors.
  • Authors who have not actively co-operated in the creation of the final draft of a work will find it difficult to establish collaboration, a key requirement for establishing joint authorship.
  • An author who is the “ultimate arbiter” and has always had the final say in the final content of a work might have good grounds to defend a claim for joint authorship, but this status is not determinative.
  • Individuals who consider themselves co-authors should conduct themselves as such throughout their interactions with other author(s). From an early stage, they should make their contentions known and should seek to have their names published on copies of the work or, if that is not practically possible, object to their names not featuring on the final work. There is indeed a presumption of authorship in favour of the person whose name is on the copyright work.
  • Parties involved in litigation should beware of placing too much emphasis on witness recollection of meetings and conversations unsupported by evidence. The Judge in this case found such evidence unreliable and placed little, if any, reliance on witnesses’ recollection. He preferred to base findings on documentary evidence.

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This is a further case which reinforces the importance and strength to rights holders of the right to communicate a copyright work to the public provided by Article 3 of the Copyright Directive (2001/29). The CJEU held that a cloud based remote recording service amounted to a communication to the public and could not fall under the private copy exemption, which was to be interpreted strictly, and therefore the rights holders’ consent was required. (Case – 265/16 VCAST v RTI SpA.).

Business impact

  • This decision is good news for rights holders, as they will be able to take action against service providers who do more than simply provide copying services to users who are in turn relying upon a private copying exemption.
  • The CJEU decision reiterates Reha Training (C-117/15) that the communication to the public is a key right which enables rights holders to exert control over their copyright works if a service provider provides a new and different technical means of transmission to a new public for which there is no consent.
  • The case gives guidance to those providing recording services via the internet and cloud storage, and to rights holders, as to where the boundaries are to be drawn, and confirms the CJEU approach that the exceptions to copyright which can be provided by the Member States will be interpreted narrowly.
  • Whilst the UK has no private copying exception enacted, the case provides a useful reminder of the CJEU’s strict approach to interpretation of exceptions to copyright.
  • The VCAST decision continues the CJEU’s line of cases where interpretation of communication to the public has been interpreted broadly. In April we gave an update on the CJEU guidance on communication to the public following the Filmspeler decision (C-527/15) which was then applied in The Pirate Bay (C-610/16) (reported here). Similarly in the VCAST decision, the CJEU was clear that the provision of the service via the internet and cloud storage where initial broadcast was on territorial TV was sufficient to infringe, if the rights holder had not consented.

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The High Court of England and Wales decided on 19 October 2017 that a particular television format document did not qualify for copyright protection as a dramatic work as its contents were unclear and lacking in specifics. Copyright protection has been notoriously difficult to obtain in respect of TV formats and the case contains useful guidance on the way television formats should be recorded or expressed in order to stand a chance of being protected by copyright as dramatic works. The High Court also considered that the TV format document was too vague and insufficiently developed to be protected as confidential information (Banner Universal Motion Pictures Limited v Endemol Shine Group Limited & others).

Business Impact

  • The decision acts as a warning for TV format developers that generalised commonplace game concepts, even if they are supported by specific examples, will likely fall short of the requirements for copyright protection as dramatic works.
  • Television producers who acquire the rights to TV formats should ensure that TV format documentation is sufficiently detailed and is kept up-to-date as the resulting shows develop. It shows the importance of a format bible.
  • To qualify for copyright protection as a dramatic work, contents of TV formats should be clear, specific and contain elements forming a coherent recognisable framework capable of being reproduced into a distinctive show.
  • In order to increase chances of their formats being protected by copyright, developers/producers should think of including the following in their documentation:
    • where the action is to take place;
    • who the contestants should be and the selection process;
    • the length of the programme;
    • when the show should be aired;
    • the source of the prizes (if any); and
    • catchphrases, identified as such (it is not sufficient to simply list words or expressions).
  • One of the major difficulties in establishing the infringement of copyright in formats for game shows is showing that what has been copied is the expression of ideas, rather than pure ideas themselves.
  • While the High Court acknowledged the possibility for television formats (even if not fully developed) to be protected by the law of confidential information, information which is too vague, insufficiently developed and of a very general nature is unlikely to qualify for protection under the common law of confidential information.
  • Claimants who have been unsuccessful in proceedings in one country should beware of starting similar proceedings against identical defendants elsewhere, as they may be estopped from doing so and such proceedings may amount to an abuse of process.


Joel Smith
Joel Smith
Head of IP - UK
+44 20 7466 2331
Alexandra Morgan
Alexandra Morgan
Senior Associate, London
+44 20 7466 2808

New Unjustified Threats Regime in force from 1 October 2017

Threatening proceedings for intellectual property right infringement can sometimes backfire. In relation to patents, trade marks and designs, there is a right for any person aggrieved by the threat to bring an action against the threatener. The “aggrieved” person may not necessarily be the person directly threatened with proceedings, it could be anyone whose commercial interests are damaged by the threat – such as a manufacturer whose suppliers or distributors are threatened. Not only does the threats action expose the IP rights-holder to the risk of damages, it also turns the potential claimant into a defendant. This in turn creates a tension with the requirements of the Civil Procedure Rules to communicate a litigant’s case early before issuing proceedings, with rights holders more likely to sue first than to threaten first.

The new Intellectual Property (Unjustified Threats) Act 2017, which comes into force on 1 October, attempts to encourage more pre-action communication by detailing what an actionable threat is, whilst providing for “permitted communications” or communications for “permitted purposes” which cannot amount to an actionable threat. It harmonises the position across patent, trade mark and design rights (including providing for unitary patents and European patents under the proposed Unified Patent Court jurisdiction) and allows pursuit of information on primary infringers from secondary parties where reasonable efforts have been made to find the primary infringer already.

To watch a video on the new unjustified threats regime click here.

Summary and Business Impact

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