Introduction (Click to read the Sway version)
On April 26th, 2018, Interlegal joins many others to celebrate the World Intellectual Property Day 2018. IP rights were never as important and relevant as they are today. Intangible assets, such as intellectual property rights, represent, for many corporations around the world, their main assets – just think about the GAFA Group.
This year, settling on the topic of the hour, the World Intellectual Property Organization (WIPO) announced that women were in the limelight as part of the #WORLDIPDAY. A healthy society is defined by its individuals feeling free to express themselves, to write, to work, to create, to invent, to innovate. Furthermore, allowing women to make their mark, women from all over the world, through their outstanding contributions to development, innovation and creativity, resulted in a leap towards incredible advancements in the field of intellectual property. Despite the new awareness to gender disparity, a recent WIPO study shows that women are still less likely than men to benefit
from the IP rights’ system. In fact, “less than a third of all international patent applications filed in 2015 included women as inventors.” Although, there is hope for change, as the number of international patent applications with a woman as the inventor has been growing since 1995, from 17.1% to 29.1% in 2015.
As the author of the Grand Challenges Canada’s article (“Innovation, Gender Equality and Sustained Results”) pointed out, “Equality is not just the right thing to do. It’s smart economics. How can an economy achieve full potential if it ignores, sidelines, or fails to invest in half its population?”. With this in mind, we wanted to contribute to this Day with an amalgamation of a few thoughts and comments regarding past, present and futur IP rights issues, reviewed equally by men and women. We hope you find it as informative as you find it riveting.
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A 61 Billion Dollar Cheese?
Trademarks
Intellectual Property can be considered as the set of rules, regulated by laws, that regulates prerogatives and benefits in favor of the authors and their successors, for the creation of artistic, scientific, industrial and commercial works.
Within said creations we could find products protected by “appellations of origin”, a distinction which serves to denote the origin of certain products. What value then, can the protection granted by these have? It can often be thought of as a mere abstraction or intangible concept, represented solely by the prestige that the product itself grants the identifier; and not the other way around, as the value an appellation itself can generate. Recent negotiations of the free trade agreement between the European Union and México however, have forced the sharpest legal minds to ponder this very question.
At the start of negotiations, diplomatic efforts to renew the agreement, which in 2016 alone generated over 61.8 billion dollars, were stalled due to Intellectual Property disputes between Spain and México. The most emblematic of these concerning Spain’s Manchego cheese and Mexico’s Manchego “type” cheese.
Queso Manchego, made for hundreds of years in La Mancha, is a product that has the distinction of an appellation of origin, as categorized by the corresponding Regulatory Council in Spain. Such a distinction aims to protect certain agricultural and food products by identifying a predetermined geographic area from which they originate, while at the same time guaranteeing high standards of quality. Because Queso Manchego is a pressed cheese made from the milk of ewes unique to La Mancha Spain, its exclusive production resides in this region. Meanwhile in Mexico, Manchego “type” cheese has long been made from cow’s milk as settlers from Spain brought the taste of home into the Americas, with Mexican Law considering appellations of origin as; “the name of a geographical region…that serves to distinguish a product which originates there, and for which its quality or characteristics are due exclusively to the geographic area…”. The conflict may seem, to
have a simple solution then, since the distinction “type” was added in an attempt to differentiate Mexican products from their Spanish Counterparts.
Economic factors however, complicated diplomacy, as 60% of Manchego cheese in Spain is exported, representing an important source of revenue for La Mancha. At the same time, in Mexico, Manchego “type” cheese represents 15% of the total cheese market, forcing both parties to strongly weigh the appellation’s value against other revenue generated through the agreement. Eventually, as a result of talks between the Mexican State and European Union, Mexico’s Intellectual Property Law was changed to include the prohibition of any illegal use of appellations of origin, even when accompanied by the words “genre, type, style, imitation, or any other similar terms that mislead consumers and are implicit of unfair practices”.
With a new set of rules to operate under, hopes remain that tensions between all parties ease in the field of Intellectual Property, as the laws evolve to protect the interests of creators on an international stage.
Contribution from Mexico (www.rtydc.com) :
Fernando A. Treviño Nuñez, ftrevino@rtydc.com
Important Changes To IP Landscape In Cambodia.
Patents & Trademarks
The latest months have witnessed important changes to Cambodia intellectual property framework.
European Patent applications can be validated in Cambodia
On January 23rd, 2017, the President of the European Patent Office and the Cambodian Minister of Industry and Handcraft signed an agreement on the validation of European patents (Validation Agreement). The Validation Agreement entered into force on March 1rst, 2018. From that date it is possible to validate European patent applications and patents in Cambodia, where, after validation, they confer essentially the same protection as patents granted by the EPO for the now 38-member states of the European Patent Organization.
It is important to draw the attention of applicants to the fact that under the Law on Patents in force in Cambodia, pharmaceutical products are excluded from patent protection. Cambodia currently benefits from the World Trade Organization waiver allowing Least Developed Countries (LDCs) to avoid granting and enforcing IP rights on pharmaceutical products until 2033. This waiver would also
apply to European patents providing protection for pharmaceutical products, for which validation is sought in Cambodia.
Applicants can however benefit under Article 70.8 TRIPS of a so-called “mailbox system”. According to this “mailbox system”, Cambodian legislation authorizes the filing of patent applications for pharmaceutical products, despite the fact that they are excluded from patent protection. These national applications will not be examined as to their patentability until the end of the transitional period. Following that period, protection may be granted for the remainder of the patent term, computed from the filing date of the application.
Validation in Cambodia is deemed requested for any European or international application filed on or after March 1rst, 2018. It is not available for applications filed prior to that date, or for any European patents resulting from such applications.
Further information about validating European patent applications and patents in Cambodia will be published in the EPO’s Official Journal in due course and then incorporated into its brochure on “National law relating to the EPC.”
Cambodia first to join the Geneva Act of WIPO’s Lisbon Agreement
On March 9th, 2018, Cambodia has deposited its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (« Geneva Act »).
The Lisbon Agreement of October 31rst, 1958 (revised at Stockholm on July 14th, 1967 and amended on September 28th, 1979) provides for the protection and international registration of appellations of origin, that is, the « geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographic environment including natural and human factors, and which has given the good its reputation ».
The Geneva Act, adopted in May 20th, 2015, allows, in addition to appellations of origin, the protection and international registration through a single application with WIPO of geographical indications, that is, an « indication consisting of or containing the name of a geographical area, or another indication known as referring to such area, which identifies a good as originating in that geographical area, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin ».
With the Geneva Act, producers of quality products linked to origin are able to protect the specific designation of their products more easily.
The Geneva Act will enter into force three months after five eligible parties have deposited their instruments of ratification or accession.
European Union could be next to join the Geneva Act. Indeed, on December 21rst, 2017, the European Commission published a « roadmap » outlining its intention to prepare legal acts needed for UE accession to the Geneva Act.
Contribution from Thailand (www.orbis-alliance.com) :
Franck Fougere, fougere@ananda-ip.com
Shhh! It’s a secret!
Trade secrets
Trade secrets include any valuable business information that derives its value from the secrecy. Trade secrets can be very valuable to you whether you have developed new technology, designed original products, created the perfect recipe, or have a gold mine of customer data.
A trade secret is valuable information kept secret by your business. If the competition were to get their hands on this confidential information, it would be damageable to your business. Generally, trade secrets are used to:
1. Ensure an invention or design is not disclosed to the public before applying for a patent or an industrial design;
2. Protect an invention through means other than patent protection; and
3. Protect valuable business information that is not formally protected through other intellectual property rights.
How are trade secrets protected – WIPO (World Intellectual Property Organization)
Contrary to patents, trade secrets are protected without registration, that is, trade secrets are protected without any procedural formalities. Consequently, a trade secret can be protected for an unlimited period of time. For these reasons, the protection of trade secrets may appear to be particularly attractive for SMEs. There are, however, some conditions for the information to be considered a trade secret. Compliance with such conditions may turn out to be more difficult and
costly than it would appear at first glance. While these conditions vary from country to country, some general standards exist which are referred to in Art. 39 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). The information must :
1. Be secret (i.e. it is not generally known among, or readily accessible to, circles that normally deal with the kind of information in question);
2. Have commercial value because it is a secret; and
3. Have been subject to reasonable steps by the rightful holder of the information to keep it secret (e.g., through confidentiality agreements).
The trade secret is a type of intellectual property that benefits from a broader lawful protection than other types of intellectual property. Therefore, for example, industrial designs or copyrights have often been protected under the trade secrets’ provisions because it offered lesser prerequisites to benefit from the law’s protection. In a global economy where goods are easily procurable, the protection of one’s intellectual property through the trade secret may be more judicious than going obtaining its protection through classical means.
Contribution from Canada (www.yulex.ca):
Caroline Tremblay, ctremblay@yulex.ca
A Creative Way to Share Creations
Copyrights
Using material we get from the Internet is easy, because it is so easily accessible. Especially images: we seem to be able to find them everywhere. How simple is it to just type a subject into Google and get hundreds and thousands of results. Furthermore, images we find in online articles and publications must necessarily be accessible to the public. Someone has used it for a purpose similar to mine, so I should conceivably be able to simply copy-paste it into my work.
Wrong!
We call that Copyright Infringement: the use of a work protected by copyright without the permission of the copyright holder, therefore infringing exclusive rights granted by law to the latter, or a person designated by him, such as the right to reproduce, modify, distribute or display the protected work. Websites allowing user content often deal with copyright infringement. People are not always aware of the limitations to the use of material found online. Whereas, websites such as
YouTube or Facebook reserve the right to remove content that has been published without the authorization of the copyright holder. For example, a YouTube video may mention “Video taken down: Copyright strike” to notify the user of a copyright issue.
Simply giving credit for using someone else’s work is not enough. You need a proper copyright license for the material you intend to use beyond personal projects. Technically, as soon as you intend to show it to others, your work needs to possess the legal requirements in compliance with copyright law. All of this seems, at first glance, rather fastidious. This is why we are seeing the introduction of initiatives to encourage open-source. Open-source in itself is usually software for which the code is made available to the public for its reproduction or modification. However, we are now seeing the same logic apply to other types of works, such as images.
Initiatives like Creative Commons can easily by identified as an open-sourced equivalent. Creative Commons licenses have the advantage to enable the free distribution of copyrighted work:
“ Creative Commons is a global nonprofit organization that enables sharing and reuse of creativity and knowledge through the provision of free legal tools. ”
Creative Commons facilitates the use of online images. Images benefiting from such licenses can be repurposed with various attributes.
Here is an image provided with a Creative Commons’ license:
It illustrates the advantages of using a Creative Commons license. This image comes from an infographic created by Foter, a blog that encourages that credit to the original work be properly attributed. We may use the infographic and parts of it, therefore adapting it to our article, because it is a work licensed under Creative Commons’ ShareAlike Attribution.
Here is another one:
Authors contracting Creative Commons licenses must select their license conditions, as listed above. It therefore indicates to members of the public how the work may be used thereafter. Creative Commons offers very user-friendly licenses that facilitate the perpetuity of the work benefiting from copyright protection. The terms of the licenses are generous and standardized; it makes it easy to deal with copyright and it offers peace of mind. Many websites have built-in options for users to license their work with Creative Commons – for example, Flickr and SoundCloud. Flickr even has a section devoted to Creative Commons where you can find content that has been classified according to the type of license. This goes to show that it has become rather uncomplicated to properly safeguard copyright when using images found online.
Apart from its licenses, Creative Commons offers means to release material into the public domain. The CC0 Waiver is a legal tool waiving as many rights to the material as possible in all legality. Another website featuring stock images – Unsplash, had initially used the CC0 Waiver to distribute its free stock photography. However, since some legal issues were encountered when images were copied onto other websites and removed from Unplash, their licenses are a little more restrictive.
All in all, you cannot be too careful, and each time you use an image, or other material found online, seemingly subject to copyright, you should consider retracing the source from which it originates and make sure you possess the proper copyright license to use said material as intended.
Contribution from Canada (www.yulex.ca):
Caroline Tremblay, ctremblay@yulex.ca, and
Frédéric Letendre, fletendre@yulex.ca
Impact of Draft Withdrawal Agreement (Brexit) on Intellectual Property Rights. The story so far…
BREXIT
Publication of the latest draft of the Withdrawal Agreement on the exit of the UK from the European Union starts to give us a feel for those topics on which the UK and EU negotiators have made progress in respect of intellectual property rights. Whilst these parts of the Withdrawal Agreement are still caveated as being subject to technical legal revisions it is clearly the intention that these are key concepts on which agreement has been reached in broad terms.
Having confirmed that the transition period after Brexit is intended to take effect on 29 March 2019 and will last until 31 December 2020, we also have a specific period during which owners of IP rights can start to adjust their strategy for managing their portfolio of IP rights.
The draft Withdrawal Agreement confirms that there will be an automatic transfer of certain EU IP rights into an equivalent level of protection as a UK right. So, anyone holding a European Union trade mark registration (EUTM), a Registered Community Design (RCD) or a Community plant variety right (CPVR) at the date of the end of the transition period will automatically become the owner of the equivalent registered IP right in the UK from that date.
These new UK IP rights will then take their filing, priority and renewal dates from the original EU registered right and their remaining period of protection will likewise align with that EU right. The UK equivalent trade mark rights will also be protected from arguments of revocation due to a lack of use in the UK before the end of the transition date. So, even if the use of an EUTM has only been in the EU up until that point the UK IP right cannot be challenged or revoked for this lack of use. It is to be presumed, however, that this protection from non-use will not be indefinite and probably we will see something in secondary legislation to confirm whether non-use in the UK could lead to challenge from 1 January 2021 onwards.
Another aspect of non-use which hasn’t yet been covered in the draft Withdrawal Agreement is the issue of non-use in the other direction from the above protection. So if an EUTM has up until now been maintained on the basis of use solely within the UK, after the split of the rights this is potentially going to give EUTM holders something to watch out for in further negotiations.
If there are any pending applications for any of these EU IP rights of an EUTM, an RCD or a CPVR, at 31 December 2020, then these pending applications don’t get automatically transferred across to a UK application. The pending application will, however, give the holder the right to apply for a UK equivalent right and claim the earlier priority date. Those UK applications can be made, and claim priority from the date of their originating EU right, for a period of 9 months from 31 December 2020 in the case of EUTMs and RCDs or within 6 months of 31 December 2020 for CPVRs.
Still to be agreed is whether this process of automatic transition of such registered EU IP rights through to coverage in the UK will be free of charge and without any additional administrative process being required. So this is a significant aspect to watch out for in the further negotiations.
Similar to the above registered rights, it has been agreed to automatically equate an unregistered community design held before the end of the transition period to an equivalent UK unregistered design right will give protection for the remaining period of that 3-year right if it falls beyond the transition period.
Still to be agreed is whether this process of automatic transition of such registered EU IP rights through to coverage in the UK will be free of charge and without any additional administrative process being required. So this is a significant aspect to watch out for in the further negotiations.
Another area covered in part in the draft Withdrawal Agreement is that of the principle of exhaustion of rights. This is the principle which attempts to balance the potentially opposing rights afforded by intellectual property protection and competition laws. Where intellectual property rights enable an owner to prevent unauthorised infringing sales of items protected by such rights in a market, competition laws are designed to encourage an open market in which IP cannot be used to create a monopoly.
To date, the doctrine or principle of exhaustion means that once there has been an authorised or legitimate sale of a product, it is regarded as having been placed on a market and IP cannot be used to prevent its further distribution – its rights have been exhausted. The draft Withdrawal Agreement confirms that rights that have been exhausted both in the EU and in the UK before 31 December 2020 will remain exhausted both in the EU and in the UK. There is, however, then a gap which hasn’t been dealt with as to what happens about rights being exhausted after 31 December 2020. So there is a decision to be taken in the UK as to how it applies the exhaustion principle after that date.
In summary, there seems to have been plenty of progress in confirming the position on quite a few of the registered intellectual property rights which will help in more detailed planning for many rights holders. As with any such negotiation there are still some interesting gaps for further detail to follow.
Contribution from the UK (https://www.shulmans.co.uk/):
Emma Roe: eroe@shulmans.co.uk,
Jim Wright: jwright@shulmans.co.uk
Who’s The Instigator Of The #worldipday?
According to their Website, the ” World Intellectual Property Organisation (WIPO) is the global forum for intellectual property services, policy, information and cooperation. We are a self-funding agency of the United Nations, with 191 member states.
(Their) mission is to lead the development of a balanced and effective international intellectual property (IP) system that enables innovation and creativity for the benefit of all. (Their) mandate, governing bodies and procedures are set out in the WIPO Convention, which established WIPO in 1967.”
You want to know more? Have a look at this WIPO short presentation:
1 – What is WIPO: https://www.youtube.com/watch?v=pYZxqJCno44&t=9s
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