Enforcement of intellectual property rights across online platforms

Considering how to enforce your IP rights online and make maximum use of the take-down procedures? Read Victoria Horsey, Joanna Silver and Sabesh Asokan’s practical tips in their practice notes, recently updated and published in Practical Law:
Enforcement of intellectual property rights across online platforms: injunctions A checklist on the circumstances in which a rightsholder may be able to obtain an injunction against online intermediaries, in particular ISPs, in relation to online intellectual property right infringement, and the practical points that need to be considered.
Protecting brands by enforcement against intermediaries A guide to the options available to brand owners when seeking to enforce their rights against intermediaries, such as ISPs, including website-blocking injunctions, take-down notices and domain-name seizures.

Victoria Horsey

Victoria Horsey
Senior Associate, London
+44 20 7466 2701

Joanna Silver

Joanna Silver
Senior Associate, London
+44 20 7466 2315

Sabesh Asokan

Sabesh Asokan
Trainee, London
+44 20 7466 3231

The Trade and Cooperation Agreement and its impact on IP, Pharma and Medical Devices

The final Brexit agreement, the Trade and Cooperation Agreement (the “TCA”) was agreed between the UK and the EU on 24 December 2020. Within this agreement are provisions that set out the standards expected to be recognised (mutually) between the EU and the UK in relation to intellectual property (including SPCs and trade secrets). There are some provisions concerning pharmaceutical regulation and product standards, but overall there is a lack of mutual recognition, with the consequence that, for both pharmaceuticals and medical devices, there are now effectively two separate regimes for the EU and the UK.

Intellectual Property

The provisions on IP match or exceed those for IP set out in the various treaties to which the UK and EU have acceded (such as WIPO, WTO and TRIPS agreements).  These IP standards are to be maintained as a minimum. The cited objectives and scope in relation to intellectual property (see Title V) indicate the aims behind these provisions which are to:

(a) facilitate the production, provision and commercialisation of innovative and creative products and services between [the UK and the EU] by reducing distortions and impediments to such trade, thereby contributing to a more sustainable and inclusive economy; and

(b) ensure an adequate and effective level of protection and enforcement of intellectual property rights.

The provisions are intended to “complement and further specify the rights and obligations of each [of the UK and the EU] under the TRIPS Agreement and other international treaties in the field of intellectual property to which they are parties” and do not “preclude either [the UK or the EU] from introducing more extensive protection and enforcement of intellectual property rights than required under [this section of the TCA] provided that such protection and enforcement does not contravene [those provisions]”. However, there are aspects of current UK and EU IP law, such as the dilution provisions in trade mark law, to which the agreement does not refer, instead referring to the Paris Convention provisions on the protection of well known marks. Whether this will be a point of future divergence remains to be seen.

Both the UK and the EU also have the ability to develop their own exhaustion regimes. The provisions on geographical indications (“GIs”) indicate that a mutual future scheme has not be agreed although a review clause on GIs has, which provides that the UK and EU may (if both parties agree it is in their interests) use reasonable endeavours to agree rules for the protection and domestic enforcement of their GIs.

The UK Government’s Summary document that accompanies the TCA (see here) states that the agreement “includes mechanisms for cooperation and exchange of information on IP issues of mutual interest” and “retains regulatory flexibility for each [of the UK and the EU], enabling the UK to develop an IP system in line with [its] domestic priorities“, thus enabling the UK to diverge where it so requires.

We have already commented on the changes to the UK IP regime in the firm’s guide to Brexit here (see the IP section).

The Regulation of Medical Devices and Medicinal Products

Medical devices: The TCA has a chapter (4) (under Trade – Title I) on eliminating unnecessary technical barriers to trade which deals with conformity of standards. However, this only provides for an approach under which each party can agree that its standards bodies (including those relating to medical devices) will conform with international standards and will work together to influence those and to “foster bilateral cooperation with the standardising bodies of the other Party“.

For medical devices, it had been hoped that there would be at least mutual recognition of conformity assessment under which each of the EU and the UK would recognise the other’s certification bodies. However, as things stand, although Great Britain will continue to accept CE marked medical devices until 30 June 2023 those devices certified by the UK and marked as UKCA (standing for UK Conformity Assessed, as discussed in more detail in our post here), will not mutually recognised by the EU.

Medicinal Products: For medicinal products there is a dedicated annex in the TCA, Annex TBT-2 – Medicinal Products (the “Medicinal Products Annex”), which applies to all medicinal products listed in its Annex C, namely:

  • marketed medicinal products for human or veterinary use, including marketed biological and immunological products for human and veterinary use,
  • advanced therapy medicinal products,
  • active pharmaceutical ingredients for human or veterinary use,
  • investigational medicinal products,

with this list being subject to amended by the UK-EU Partnership Council (the main governing body for the agreement and supplementing agreements).

The aim of the Medicinal Product Annex is to “facilitate availability of medicines, promote public health and protect high levels of consumer and environmental protection in respect of medicinal products”.  To help achieve this aim, the Annex provides for:

  • the mutual recognition of Good Manufacturing Practice (“GMP”) inspections and certificates, meaning that manufacturing facilities do not need to undergo separate UK and EU inspections;
  • the individual inspection, on notice, by the EU or UK of each other’s facilities); and
  • for the suspension of the mutual recognition arrangements.

Further, the TCA also states that the EU and the UK should work together to implement agreed international guidelines and that any changes to either the UK or the EU’s regulation regime should be on 60 days’ notice and be subject to discussion by a Working Group on Medicinal Products, which will be established to enable mutual consultation. This Working Group on Medicinal Products will be under supervision of the Trade Specialised Committee on Technical Barriers to Trade, and will monitor and review implementation and ensure the proper functioning of the Medicinal Products Annex. It is noteworthy that the Medicinal Products Annex is specifically excluded from the TCA’s disputes mechanism, however, through its role in facilitating discussions and functioning as an appropriate forum for issues relating to Medicinal Products, it is hoped that it will be a sufficient mechanism to deal with any concerns.

When considering the confidentiality of information supporting applications for marketing authorisations (“MAs”), regulatory protection of pharmaceutical products, and Supplementary Protection Certificates (“SPC”) it is noteworthy that this is not included in the Medicinal Products Annex, but is included in the IP section (Title V) of the TCA.

  • In relation to regulatory data protection generally, the TCA requires that both the UK and the EU ensure that commercially confidential information submitted to obtain an MA is protected against disclosure to third parties, unless there is an overriding public interest or steps are taken to ensure the data is protected from unfair commercial use.
  • For the regulatory protections of data and market exclusivity, the TCA provides that, subject to any international agreement to which both the EU and the UK are party, and without prejudice to any additional periods of protection which either party may wish to provide for in its domestic law, these regulatory protections will be “for a limited period of time to be determined by domestic law”. This allows each of the UK and the EU to determine the length of such regulatory exclusivities under their own regulatory regimes.
  • For SPCs, the TCA records the agreement of both the UK and the EU to provide for further patent protection to compensate for the impact of regulatory administrative procedures but, again, the length of time is not stipulated.

The effect of these provisions is that they provide some comfort that these valuable forms of protection for medicinal products will be maintained by both the UK and the EU.

For detailed commentary on the new regulatory position for Pharma in the UK, and the impact on IP rights generally, see our series of posts on the HSF Intellectual Property Notes blog here.

Other provisions relevant to the pharmaceutical and medical device industry

The TCA also has provisions relating to the UK’s continued participation in EU programmes and on UK / EU cooperation on “serious cross-border threat[s] to health that are relevant for the pharmaceutical industry.

  • Subject to the UK making financial contributions, Part 5 of the TCA includes agreement on the UK’s continued participation in EU programmes, including the EU’s research and innovation funding programme, Horizon Europe.
  • UK / EU cooperation on serious cross-border threat[s] to health is covered by the TCA including agreement between the UK and the EU on emergency relief in relation to importation requirements, tax and road transport exemptions, and agreement to cooperate in relation to international health security systems.

Future developments

Although tariff free and quota-free trade has been agreed, there is little mutual recognition of regulatory provisions. This may not be the end of negotiations, with automatic reviews every 5 years written into the TCA and termination possible on 12 months’ notice.  See the HSF Brexit blog for further information, and our initial comments here.

Key contacts and authors

Jonathan Turnbull

Jonathan Turnbull
Partner, London
+44 20 7466 2174

Rachel Montagnon

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

George McCubbin

George McCubbin
Senior Associate, London
+44 20 7466 2764

Priyanka Madan

Priyanka Madan
Associate - London
+44 20 7466 2986

Geographical Indications – strengthening protection in the UK, the EU and China

Geographical indications have been receiving increasing levels of attention recently:

  • The UK has announced a new system for GIs which will come into effect at the end of the Brexit transition period (see our post here);
  • the EU has recently concluded an agreement on the mutual recognition of GIs with China (see more on this below);
  • and on 25th November 2020, the European Commission issued a Communication, Making the most of the EU’s innovative potential – An intellectual property action plan to support the EU’s recovery and resilience (see our blog post here), which includes plans to improve the EU’s Geographical Indications (GIs) system by strengthening and streamlining the food and drink product GI system, and also to consider the establishment of an EU-wide non-agricultural product GI system.

The EU IPO has also just launched a new database of GIs GiView on 25 November 2020 – see more information here.

GIs bring benefits to local economies and cultures and reinforce consumer confidence

Describing GIs as “part of Europe’s cultural heritage” and endorsing their contribution “to the social, environmental and economic sustainability of the rural economy” the Communication reaffirms the importance of GIs to the EU economy:  “In 2017, Agrifood and drink products, whose names are protected by the EU as GIs, represented a sales value of EUR 74.76 billion  within the EU, 7% of total sales in the European food and drink sector. Furthermore, GIs represent 15.5% of total EU agri-food exports, with a higher sales premium for protected product names.”

As the Commission’s Communication points out, GIs are often an important part of a local identity, and can be used to support and thereby retain unique skills as well as attracting tourism and of course contributing to job creation.  GI’s provide consumers with indications of authenticity and give producers better visibility with consumers which, the Communication says “can help them stay competitive and work together in niche markets, and give a boost to less developed regions“.

Read our special report  Trust on a plate: consumer confidence and food safety (the latest edition in our Future of Consumer series) which looks at consumer trust in food products, examining geographical indications systems worldwide, as well as labelling and food crime issues, with contributions from from our extensive global consumer sector network including Italy, Australia, China, Indonesia and the UK.

“Untapped potential” for food and drink GIs in the EU

However, the EU believes that there is still untapped potential and that making protection and enforcement more precise and better identifying the roles of Member States and the Commission in the registration process could improve things.  Building on the results of the EU Food Quality Schemes evaluation  (which has been conducting a consultation and which was due to give its final pronouncements before the end of 2020), the Commission will look at ways to strengthen, modernise, streamline and better enforce GIs for agricultural products, food, wines and spirits.

GIs for non-agricultural products in the EU

GIs for non-agricultural products are also being assessed.  Some Member States have GI protections in place for such goods, such as handicrafts for example, but at EU level there is no uniform mechanism currently for their protection.

The Communication refers to a recent study, Economic aspects of geographical indication protection at EU level for non-agricultural products in the EU (published February 2020), which, the Commission says, shows that a harmonised system for non-agricultural products would be beneficial for the EU economy in this way.  It also refers to another study, the European Parliament’s Geographical indications for non-agricultural products. Cost of non-Europe report, from 2019, which assesses the longer term impact of introducing EU-wide GI protection for non-agricultural products as generating an increase in intra-EU trade of “about 4.9-6.6 % of current intra-EU exports (EUR 37.6- 50 billion). Predictions show that, with a uniform system, regional employment could rise by 0.12-0.14% and that 284 000-338 000 new jobs could be created in the EU as a whole“.

The Commission’s Communication concludes that, as part of the overall reform of the GI system, the Commission will consider the feasibility of creating an efficient and transparent EU GI protection system for non-agricultural products. This would also enable the EU to fully benefit from the opportunities offered by the international system of appellations of origin and GIs and, the Commission comments, would give it a better platform from which to promote the recognition of GIs worldwide.

China – Landmark agreement with the EU on GIs and New protection regulation for foreign GIs in China in sight

China is a market of 1.4 billion consumers and has become the third largest destination for EU agri–food products, reaching 14.5 billion euros in 2019.

On 14 September 2020, China and the European Union signed what the EU press release termed as a “landmark” agreement to protect specific European GIs in China and Chinese GIs in the European Union “against usurpation and imitation”.

This is the first bilateral agreement in relation to Geographical Indications that China ever entered. China and the EU have agreed to give admission and protection to 550 GIs (275 each), including:

  • EU GIs: Cava, Champagne, Feta, Irish whiskey, Münchener Bier, Ouzo, Polska Wódka, Porto, Prosciutto di Parma and Queso Manchego; and
  • China GIs: Pixian Dou Ban (Pixian Bean Paste), Anji Bai Cha (Anji White Tea), Panjin Da Mi (Panjin rice) and Anqiu Da Jiang (Anqiu Ginger).

200 GIs, 100 for each of China and the EU, will be admitted and protected immediately after the agreement comes into force, which is expected to be early 2021, while the remaining 350 GIs (175 each), will be included in the system within 4 years from the agreement’s entry into force. These GIs will have to follow the same approval procedure as the initial 100 (ie assessment and publication for comments).

In China, only the state designated GI protection institutions, industry associations or enterprises can apply for GI protection for products. Once a GI is approved, all the market players in the region whose products reach the standards will be protected.

China has its own GI system, providing protection in three ways:

  • The geographical indications of agricultural products are approved and registered by the Ministry of Agriculture.
  • The National Intellectual Property Administration is responsible for the approval and registration of geographical indications as collective trademarks and certification trademarks.
  • The State Administration of Market Regulation assesses and approves the geographical indication products.

Protected GI products in China include:

  • planted or farmed products from a particular region, and
  • all raw materials from a region or part of the raw materials from other region, and produced or processed in the region  in accordance with special processes.

China and the EU began cooperation on GI protection in 2006. In 2012, there were 10 GI names on both sides that were mutually protected. China is now in the process of enacting its new Geographical Indication Protection Regulation. The draft of the regulation was published for discussion in September of 2020. The new draft allows a foreign applicant, who has obtained the protection of geographical indications in his country or region, to apply to the State Intellectual Property Administration for GI protection.

In 2019, the EU signed the Japan-EU Economic Partnership Agreement which also contained provisions for the protection of GIs (see our post here) and the earlier trade deal with Canada (CETA) also included GI protections – see here.

 

Key contacts and authors

Rachel Montagnon

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

Joel Smith

Joel Smith
Partner, IP, London
+44 20 7466 2331

Cathy Liu

Cathy Liu
Partner, HSF Kewei, China
+86 21 2322 2158

Pietro Pouche

Pietro Pouche
Of Counsel, IP, Milan
+39 02 3602 1394

Cici Wang

Cici Wang
Associate, HSF Kewei, China
+86 139 1817 9179

Sara Balice

Sara Balice
Senior associate, IP, Milan
+39 02 3602 1403

Giulia Maienza

Giulia Maienza
Associate, IP, Milan
+39 02 3602 1396

Julie Chiu

Julie Chiu
Senior Associate (Australia), London
+44 20 7466 2658

 

The European Commission considers the future of health in Europe with new Pharmaceutical Strategy and Action Plan on IP

The European Commission has this week published a wide-ranging and ambitious Pharmaceutical Strategy for Europe, and an Action Plan on Intellectual Property.

Pharmaceutical Strategy for Europe

The new pharmaceutical strategy for Europe is a key pillar of the European Health Union, which President von der Leyen called for in her 2020 State of the Union speech. It covers the full lifecycle of a medicine including R&D, clinical trials, marketing authorisation, manufacturing, pricing and reimbursement, access and IP protection.

The aims of the strategy are to promote accessibility and affordability of medicines, and to ensure the European pharmaceutical sector remains innovative and world-leading. The coronavirus pandemic has brought the health sector into sharp focus this year, and a goal of the strategy is to help to establish a crisis-resilient EU pharmaceutical system.

The strategy sets out four main objectives:

  • Ensure access to affordable medicines and address unmet medical needs (e.g. in the area of cancer)
  • Support innovation, competitiveness and sustainability of the EU’s pharma industry and the development of high quality, safe, effective and greener medicines
  • Enhance crisis response mechanisms and address security of supply
  • Ensure a strong EU voice in the world by promoting a high level of quality, efficacy and safety standards

In term of next steps:

  • The strategy will be discussed at political level at the EPSCO (Employment and Social Affairs Council) meeting of 2 December 2020.
  • Implementation will start immediately after adoption and will include legislative and non-legislative actions.
  • The actions will be rolled out gradually starting with the first proposals in the coming months, including the revision of the legislation on rare diseases (Orphans and Paediatric Regulations).
  • An EU Health Emergency Response Authority is proposed for 2021.
  • Depending on the evaluation process, the strategy plans a proposal for revision of the basic pharmaceutical acts (i.e. Directive 2001/83/EC relating to medicinal products for human use; and Regulation 726/2004 laying down EC procedures for the authorisation and supervision of medicinal products) in late 2022.

The strategy is mostly focussed on IP and regulatory issues, but notes that the proposed policies will be accompanied by enforcement of the EU competition rules. In particular, it refers to the 2019 Report on competition enforcement in the pharmaceutical sector.

Action Plan on Intellectual Property

The new Intellectual Property Action Plan aims to build on the EU’s strengths in the IP sector by “upgrading the EU’s framework, where needed, and putting in place well-calibrated IP policies to help companies capitalise on their inventions and creations, whilst at the same time ensuring that inventions and creations are serving economy and society at large“. It identifies 5 current challenges and 5 key focus areas, with specific proposals for action to:

  • upgrade the system for IP protection,
  • incentivise the use and deployment of IP, notably by SMEs,
  • facilitate access to and sharing of intangible assets while guaranteeing a fair return on investment,
  • ensure better IP enforcement, and
  • improve fair play at global level.

Within these 5 key focus areas, some highlights of what the action plan discusses are:

  • supporting the launch and rapid roll out of the unitary patent system in 2021. It also floats the possibility of introducing “a unified SPC grant mechanism and/or create a unitary SPC title
  • new licensing tools and a system to coordinate compulsory licensing (20212022)
  • revising the EU legislation on design protection (Q4 2021)
  • a new approach to the way geographical indications (GIs) are protected, and the possibility of an EU protection system for non-agricultural GIs (Q4 2021)
  • evaluating the plant variety legislation (Q4 2022)

The wider picture

Both the strategy and action plan are in synergy with the new Industrial Strategy for Europe and the priorities outlined in the European Green DealEurope’s Beating Cancer Plan, and the European Digital Strategy.

 

Emily Bottle

Emily Bottle
Senior Associate, London/Milan
+44 207 466 2525/+39 02 3602 1402

Dafni Katrana

Dafni Katrana
Senior Associate, Brussels
+32 2 518 1846

Martina Maffei

Martina Maffei
Senior Associate, Milan
+39 0236021388

Geographical Indications – a new scheme for the UK from 1 January 2021

In the same way that trade marks already registered as EU trade marks before the end of transition will be replaced in the UK by equivalent rights post transition, geographical indications (GIs) (by this we refer to protected designations of origin, geographical indications and traditional specialities guaranteed) registered under the EU scheme prior to the end of transition will continue to apply across the remaining EU states post-transition and will also be replaced in the UK by rights under the new UK GI scheme.

However, those GIs registered under the EU scheme from 1 January 2021 will not apply in the UK (this includes all GIs, once registered, where applications were still pending at 1 January 2021).  After 1 January 2021, applications for protection made under the EU scheme for Great Britain (GB) localised GIs, i.e. applications made by producers from England, Scotland and Wales, will be treated as “third country” applications by the EU scheme.

From 1 January 2021, the UK will set up its own GI scheme which will be managed by the Department for Environment, Food and Rural Affairs (DEFRA). The scheme will be open to producers from the UK and from other countries worldwide. New GIs can be registered under the scheme from 1 January.

The UK scheme will cover the geographical names of food, drink and agricultural products (including beer, cider and perry), spirit drinks, wine and aromatised wine. These are the same categories protected under the EU scheme, as under the Withdrawal Agreement, the relevant EU regulations will be incorporated as UK law (unless the UK and the EU come to a different agreement as a result of free trade negotiations). The UK scheme will use the designations of Protected Designation of Origin (PDO), Protected Geographical Indication (PGI) and Traditional Speciality Guaranteed (TSG), which again mirrors the designations available under the EU scheme.

The UK government has issued guidance (Protecting food and drink names from 1 January 2021 (28 September 2020)) on the new scheme, which also provides additional clarification on the interrelationship between this scheme and the EU scheme. From 1 January 2021, the EU scheme will no longer apply to the UK as it does to members of the EU – see the comments made by the European Commission in its Notice to stakeholders – Withdrawal of the United Kingdom and EU rules in the field of geographical indications (6 July 2020).

Current EU scheme: UK GIs registered under the European scheme before the end of the transition period should continue to receive protection in the EU, but applications that are pending with the EU at the end of the transition period will no longer cover the UK.

Under the current (and continuing) EU scheme, to register a product name as a geographical indication, EU producers have to address their application to national authorities for scrutiny. The Member State concerned thereafter forwards the application to the European Commission, who examines the request following the procedures laid down in the above listed EU legislation.

For non-EU product names to be registered as geographic indications in the EU, producers send their applications either directly, or via their national authorities, to the European Commission. From 1 January 2021, Great Britain producers (but not Northern Ireland producers – see below) will be treated as a “third country” under the EU scheme, and will first need to secure protection for new GIs under the UK scheme before applying under the EU scheme. The criteria applied to determine registration of an application from a GB producer are otherwise the same as those which apply to products originating from the EU as outlined in the relevant EU regulations. Once registered, a GB GI under the EU scheme will benefit from the same level of protection as EU GIs.

Protection in Great Britain under the new UK scheme: From 1 January 2021, producers will need to apply for a new GI in Great Britain under the UK scheme.

According to the Withdrawal Agreement (and unless an alternate agreed position is reached regarding GIs), the EU regulations that govern the EU scheme will be directly retained in UK law (save for any amendments made by a statutory instrument to deal with deficiencies). Therefore, the criteria for obtaining protection under the UK scheme should in theory be the same as that required under the EU scheme, though in practice it is possible that the criteria could be applied differently.

Under Article 54 of the Withdrawal Agreement, where a GI ceases to be protected under the EU scheme after 1 January 2021, the UK is not obliged to continue to provide protection for the GI either.

According to the UK government guidance, DEFRA will publish further guidance relating to the application process.

On 22 October 2020, the UK government published a draft statutory instrument, Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (Draft), which amends deficiencies to the retained EU regulations which govern the scheme for geographical indications.

Protection in Northern Ireland (NI): For new applications for protection in Northern Ireland and the EU from 1 January 2021, an application will need to be made under the EU scheme. Northern Ireland producers will need to make a separate application under the UK scheme for protection in Great Britain. Unlike EU producers, Northern Ireland producers will not need to be protected first under the EU scheme before applying for protection under the UK scheme.

In addition, registered GIs in relation to products that can be produced anywhere on the island of Ireland (including Irish Whiskey, Irish Cream and Irish Poteen) will continue to be protected and protectable under both the EU and the new UK schemes.

New UK regime logos: There are logos for each of the three UK designations that can be downloaded and used from 1 January 2021. For food and agricultural GI products produced and for sale in Great Britain and registered from 1 January 2021, the relevant UK logo must appear on the packaging and marketing material from the date of registration. As for food and agricultural GI products produced and for sale in Great Britain and registered under the EU system before 1 January 2021, producers will have until 1 January 2024 to amend the packaging and marketing materials to display the relevant UK logos.

As is the case under the EU scheme, displaying the UK logos will be optional in relation to wine and spirit GIs.

For food and agricultural GI products of EU origin and of Northern Ireland origin (i.e. that are not produced in Great Britain), the use of the UK logos will be optional from 1 January 2021. In accordance with the draft statutory instrument as at the time of writing, EU and Northern Ireland producers that have food and agricultural GI products registered under the EU scheme, even if is also registered under the UK scheme, can continue to use the EU logos on their products for sale in Great Britain from 1 January 2021 and beyond 1 January 2024.

Continued use of EU logos: Food and agricultural GI products of EU origin must, under existing EU regulations, display the relevant EU logos. The same will continue to apply to food and agricultural GI products of Northern Ireland origin that are registered under the EU scheme.

As noted above, for food and agricultural GI products produced and for sale in Great Britain that were protected under the EU scheme before the end of the transition period, the EU logo may continue to be used until 1 January 2024, after which these producers will need to add the UK logos to the relevant packaging and marketing materials. Great Britain GI products that are protected in the EU can continue to use the EU logo on products sold in GB (but it will no longer be mandatory under the EU regulations) in addition to the mandatory UK logo.

International protection: In February 2020, the Geneva Act of the Lisbon Agreement came into force. This treaty establishes the Lisbon System, an international registry for GIs through which registration can be obtained via a single application to WIPO. The EU acceded to the Geneva Act in November 2019, which enabled the Geneva Act to come into force.

The Geneva Act currently applies to the UK during the transition period. However, the UK will not be obliged in its own scheme to continue to protect geographical indications registered through the Lisbon System after the transition period ends (unless the UK ratifies the Geneva Act independently after the transition period). It seems unlikely that the UK will independently ratify the Geneva Act, as this issue is not addressed in the UK government guidance on geographical indications. Further, under Art 54(2) of the Withdrawal Agreement, where protection in the EU is derived from international agreements to which the EU is a party, the same level of protection does not need to be provided in the UK.

The UK government guidance on GIs does state that reciprocal international protection of UK GIs will continue after 1 January 2021, if protection is granted under an EU free trade agreement where the UK has signed a continuity agreement. The UK government guidance lists the Andean Community (being a free trade area comprising Bolivia, Colombia, Ecuador and Peru), Chile and Switzerland as examples, and recent developments in the UK government negotiations mean that a level of protection will also continue in Japan and Korea.  Reciprocal international protection of UK GIs will also continue where protection is granted under other EU third country sectoral agreements (agreements that are not free trade agreements) where the UK has signed a continuity agreement.

It remains to be seen in the upcoming months whether the UK government’s international negotiations mean that reciprocal international protection of UK GIs will have the same jurisdictional coverage as the UK previously had in the EU. If continuity agreements to EU free trade agreements cannot be agreed before 1 January 2021, then the UK is likely to miss out on a level of reciprocity of protection for UK GIs going forward, unless and until alternate agreements can be made.

Authors

Joel Smith

Joel Smith
Partner, IP, London
+44 20 7466 2331

Julie Chiu

Julie Chiu
Senior Associate (Australia), London
+44 20 7466 2658

Rachel Montagnon

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

 

COVID-19: Pressure points: UK Government disables domain names and social media accounts involved in selling fake or unauthorised COVID-19 products

On Saturday (4 April 2020) the UK Government issued a press release on how the medicines and medical devices regulator, the Medicines and Healthcare Products Regulatory Agency (MHRA), is investigating the increasing number of bogus medical products being sold through unauthorised websites claiming to treat or prevent COVID-19 cases of fake or unlicensed COVID-19 medical products.

These concerns were reflected in our blog post of 2 April, COVID Counterfeits, which identified many of the problems facing business supply chains caused by the opportunities that unscrupulous parties see arising from the pandemic, and suggested ways to deal with them using intellectual property rights and advertising regulations inter alia.

The Government’s press release refers to “self-testing kits, ‘miracle cures’, ‘antiviral misting sprays’, and unlicensed medicines” as being amongst the products being promoted, and states very clearly:

At this time, there are currently no medicines licensed specifically for the treatment or prevention of COVID-19 and there are no CE marked self-testing kits approved for home use“.

According to the press release, the MHRA has disabled 9 domain names and social media accounts selling fake or unauthorised COVID-19 products.

Lynda Scammell, MHRA Enforcement Official, is quoted as saying: “There is no medicine licensed specifically to treat or prevent COVID-19, therefore any claiming to do so are not authorised and have not undergone regulatory approvals required for sale on the UK market. We cannot guarantee the safety or quality of the product and this poses a risk to your health.”

Key Contacts and Authors

Joel Smith

Joel Smith
Partner, Head of Intellectual Property, London
+20 7466 2331

Jonathan Turnbull

Jonathan Turnbull
Partner, Intellectual Property & Pharma, London
+44 20 7466 2174

Rachel Montagnon

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

 

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

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

Draft Withdrawal Agreement Approved by UK Cabinet – IP and Marketing Authorisation Provisions Summarised

As was widely reported yesterday evening, the Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (the Draft Withdrawal Agreement (14 November 2018)), detailing the arrangements for the UK to leave the EU has now been agreed by the UK Cabinet. The draft is as agreed between the UK and the EU’s negotiators. As stated in HSF’s Brexit Withdrawal Agreement webinar invitation here, a special European Council, anticipated to be held on 25 November 2018, will be asked to approve the Draft Withdrawal Agreement and the full text of the political declaration. The deal will also have to pass through the European Parliament. However, the main challenge to a deal being ratified is the requirement for approval by the UK Parliament. The first vote by the UK Parliament is expected within two weeks of the European Council.

We set out below a summary of the Draft Withdrawal Agreement’s provisions on intellectual property. The situation is not much changed from the previous draft issued in March 2018 although the provision for geographical indications has now been agreed: EU-wide rights will be replaced or recognised in the UK and provision has been made for pending applications, including for supplementary protection certificates (SPCs). The sharing of information for assessment of marketing authorisations between the MHRA and the EMA and vice versa is also provided for.

The Draft Withdrawal Agreement provides for an implementation/transition period from the date the UK leaves the EU (29 March 2019) to end of 31 December 2020. If the Draft Withdrawal Agreement is agreed, this transition period will mean that effectively the UK will continue to be treated as part of the EU from a legislative point of view. As the Commission’s press release puts it,”During this period, the entire Union acquis will continue to apply to and in the UK as if it were a Member State”. IP registrations and enforcement will carry on as normal during this period. Until the end of the transition period you will still be able to acquire/register and maintain EU-wide IP rights that will have effect in the UK. See the detail in our summary section below.  However, “as of the withdrawal date (i.e. including during the transition period), the UK, having left the EU, will no longer be part of EU decision-making. It will no longer be represented in the EU institutions, agencies and bodies, and persons appointed, nominated, or representing the UK, and persons elected in the UK, will no longer take part in the EU institutions, agencies, and bodies“.

The accompanying political agreement document “Outline of the political declaration setting out the framework for the future relationship between the European Union and the United Kingdom” (currently a summary version, with a fuller version to follow) looks to the future relationship between the UK and the EU post-transition. There is mention of IP in the section on Economic Partnership, but all that is said is: “Protection and enforcement of intellectual property rights beyond multilateral treaties to stimulate innovation, creativity and economic activity”.  Under ‘Basis for cooperation’, the political agreement states that “Terms for the United Kingdom’s participation in Union programmes, subject to the conditions set out in the corresponding Union instruments, such as in science and innovation, culture and education, development, defence capabilities, civil protection and space”. There is also mention of “Cooperation in matters of health security”.  For more on the impact of no deal on the pharma industry see our post on the UK Government’s “no deal technical notices” published on 23 August 2018.

Summary of the Draft Withdrawal Agreement’s provision for IP and marketing authorisations:

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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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