IP housekeeping – a canter through EU reforms coming your way during 2016

This article was published in ILN Insider on 7 January 2016.

Here’s a quick “heads up” of what I see as the key reforms of IP laws in the pipeline at the European Union (EU) level that are likely to affect EU regional registrations of IP, as well as the national laws of each and every EU Member State.  You will no doubt be reading more about these topics during 2016.

Patents

The new EU Unitary Patent (UP) is on the starting blocks: most of the key documents, including secondary rules and regulations for the UP and the associated arrangements for the Unitary Patent Court (UPC), are now agreed[1]. But ratification of the UPC agreement is still awaited from the 13 Member States required, including the UK and Germany (both of whose ratification is mandatory) for it, and so the UP, to come into force.  This is expected to occur during 2016 and the hope is that the UP will be up and running by the beginning of 2017.  Once that happens, innovators will be able to apply for one patent to cover the whole EU (without the need for converting to individual national registrations).

Copyright

The EU Commission’s drive towards a Digital Single Market is likely to gather momentum in the next 12 months.

In December, it announced a proposed reform to copyright law which would make it illegal for rights owners to prevent subscribers to a digital content service (such as pay TV or premium sports channels) in one Member State from fully accessing and using the service if they travel in other Member States[2]. The Commission hopes that the new regulation will be passed in 2016 for implementation in 2017.

Proposals to be unveiled during 2016 are likely to include:

• Clearer exceptions to copyright infringement for data mining, education and photos of artwork in public places.
• Remuneration for content providers, particularly focussing on use of content by news aggregators.
• Combatting piracy and reviewing the effectiveness of the IP Enforcement Directive of 2004.

Confidential information/trade secrets

Provisional agreement between the EU institutions has been reached on the text of the new Trade Secrets Directive (TSD) which will establish minimum thresholds for protection for trade secrets and confidential information across all Member States[3]. The TSD sets out a standardised definition of what is a trade secret, provides for unauthorised acquisition or use of trade secrets to be unlawful and stipulates standard remedies that must be available in all Member States.

Once the TSD is implemented, which is expected to be during 2016, the Member States will have two years to bring their national laws into compliance with its terms. For many Member States, this will result in significant amendments to existing law, but for others (such as the UK) the TSD does not significantly alter the scope of protection available, but is likely to give rise to litigation as settled law is challenged and adapted to reflect the new rules.

Trade marks

The EU has provisionally agreed amended the rules that apply to the Community Trade Mark, now renamed the “European Union Trade Mark” (EUTM) and also amended the directive that set out standardised rules for national trade mark registrations throughout the EU[4]. The key changes are:

• The requirement that a trade mark must be capable of being represented graphically has been removed; instead, it must be able to be represented in a manner which enables users to determine what is protected.
• Registrations which tried to cover all the goods or services in a class by using the classification headings will no longer cover anything more than the literal meaning of the headings. Owners of current EUTMs will have six months to apply to convert their specifications to apply to specific goods within the relevant class.
• The test for infringement will require that the infringing use is likely to affect the function of a trade mark to guarantee the origin of the goods or services concerned.
• Use of a trade mark as a trading or company name will infringe a registration.
• The defence of honest use of a person’s own name will be confined to natural persons and will no longer be available to companies.
• It will be permissible to refer to a trade mark in order to identify alternative products and for the purpose of parody without infringing if such use is honest.
• A revised official fee structure for EUTMs.

The new rules are expected to be concluded during 2016. The changes to the EUTM will take effect three months after adoption, but Member States will have three years to incorporate the changes into the rules for their national trade mark systems.

Eddie Powell, Partner, Fladgate LLP (epowell@fladgate.com)

[1]     EPO press release: “Unitary Patent ready to go” 15 December 2015

[2]     European Commission press release: “Making EU copyright rules fit for the digital age” 9 December 2015

[3]     EU Council Press release: “Luxembourg presidency seals deal with Parliament” 22 December 2015

[4]     European Parliament press release “Trade mark reform package approved by the European Parliament” 15 December 2015