Events 2022

UK Design Law at the Crossroads

23 November 2022

About the event

Once perceived as the 'Cinderella' of IP rights, design protection has come of age, now catching policy makers’ attention as an essential component of an innovative economy. While the outcome of the European Commission’s ongoing review of EU design protection, commenced back in 2014, is still awaited, the UK Government has been more nimble having already published its Response to the first stage of the UKIPO Design Rights Consultation which was launched earlier in the year.

The informal Call for Views in January was triggered by the UK’s departure from the EU. The government flags Brexit as an opportunity to create an up-to-date and flexible legal framework for the protection of designs that will better encourage creativity and innovation, and afford the UK with a ‘competitive edge’. Few would disagree that the current legal framework that protect designs is in need of review. Aside from any protection that trade mark law might offer, no less than three kinds of unregistered design protection operate alongside the current scheme for registration of designs. Additionally, there is continued uncertainty as to the full  implications of certain pre-Brexit copyright jurisprudence of the Court of Justice of the EU covering product shapes. Will UK courts take Cofemel, Levola and Brompton Bicycle to mean that practically any product form - bar the most technical - is now eligible for full copyright protection? In which case, should the UK legislator take steps to ensure that overlapping copyright and design protection remains the exception for works ‘applied art’, rather than the rule?

Find out more about the event here, watch the video on our YouTube channel.

The UPC: How to use it, not use it and some problems

17 November 2022

About the event

The Unitary Patent (UP) and Unified Patent Court (UPC) will become a reality in April 2023. It will have a profound and lasting impact on the European patent landscape. Described by EPO President, António Campinos, as ‘the most important change in the European patent system since the EPO took up its operations in 1977’, it will inevitably bring about a significant change to the patent strategies of businesses and patent advisors alike.

Join us at this UCL Institute of Brand and Innovation Law (IBIL) event, hosted by Taylor Wessing, and engage with our panel of experts. Leading practitioners will identify and discuss the key practical and strategic issues concerning the UPC, and you will also have the opportunity to raise you own questions and concerns. For instance, the new system will affect all existing European patents. These will automatically fall under the UPC’s jurisdiction unless formal steps are taken to ‘opt out’. But when should patentees opt out, how is this done, and what if you change your mind? Equally, when does it make sense to convert traditional EP rights into a UP? Business will also need to be aware of the possibility of being sued for patent infringement in the UPC, rather than in a national court. Practitioners will have to learn how to use the UPC’s Case Management System – the demonstration of how to use it will be invaluable.

The event culminates with the Judges’ Panel during which our distinguished line up of patent judges provide their own opinions on the strengths and weaknesses of the new system. The problem of conflict of interest of part-time judges will form a significant part of the discussion.

Find out more about the event here, which includes access to recordings of the sessions.

Naughty Trade Marks and Greedy Owners

28 April 2022

About the event

The Paris Convention of 1883 permits signatory states to refuse to register trade marks that are ‘contrary to morality or public order’ and numerous countries have such a provision in their national trade mark laws. But recently, the US Supreme Court has held that this ground, long relied upon by the USPTO to refuse registration of offensive, disparaging, immoral or scandalous trade marks violates the constitutional right to free speech. In the EU, the CJEU has also acknowledged that refusing to register trade marks on morality grounds interferes with freedom of expression, but has not gone as far as the US court. Rather, it has directed that this ground should only be raised if ‘a reasonable person with average thresholds of sensitivity and tolerance, taking into account the context in which the mark may be encountered…’ would perceive the mark to be ‘contrary to accepted principles of morality.’ Thus, it seems that the EU provision will now seldom be invoked, and then will need to be based on evidence, rather than a merely abstract assessment.

So if a trade mark owner’s right of freedom of expression is likely to trump the concerns of others at the registration stage, when an owner comes to enforce that right, is a defence invoking the defendant’s own right to freedom of speech likely to succeed? In the recent overhauling of the EU trade mark regime, the legislature rejected the proposal of a standalone ‘free speech’ defence, but the recitals do include a new instruction that trade mark law ‘should be applied in a way that ensures full respect for fundamental rights and freedoms.’ Might this change tip the balance in the defendant’s favour in respect of uses that further free expression and fair competition?

Additionally, in the courts in the UK and EU are now directing their attention for the requirement that a trade mark owner must act in ‘good faith’ when registering marks. Trade mark applications filed in ‘bad faith’ are invalid. But where is the line to be drawn between prudent business practice and bad faith activities? How broad can a valid specification of goods be? When is re-filing a mark ‘normal commercial practice’ and when is it illegitimate ‘evergreening’? 

Our distinguished panel sought to shed light on the extent to which ethical values do – and should – shape the nature and scope of trade mark protection.

Chair: Professor Anthony Julius, UCL Chair of Law and the Arts and Deputy Chairman of Mishcon de Reya

Speakers:

• Professor Jonathan Griffiths, Queen Mary University of London
• Professor Lisa Ramsey, University of San Diego School of Law
• Darren Meale, Partner Simmons & Simmons and Deputy Judge

Find out more about the event here, watch the video on our YouTube channel.

Can the IP System Serve Small Businesses Better?

23 February 2022

About the event:

According to a recent publication from the UK Intellectual Property Office, UK businesses are among the most innovative in the world, with small and medium-sized enterprises (SME’s) accounting for over 99% of all UK businesses, and around 50% of all private sector employment and turnover. Unsurprisingly, therefore, SMEs are often heralded as ‘the lifeblood of our economy’ and ‘the engine room for economic growth’. However, the recent UK Innovation Strategy notes that while ‘the UK’s system of institutions is well established, businesses are not always aware of what support is available or most suitable for them. To ensure that businesses can innovate, embrace global opportunities and respond to emerging challenges in a coherent way, businesses need an easily navigated, agile and responsive innovation system that delivers the right support at the right time.’

Intellectual property (IP) is the result of creative and innovative activity. Securing appropriate IP protection and then policing these rights can be vital to ensure that an SME is able to realise its full commercial potential in a competitive market. On the other hand, IP may also be used against SMEs who may, especially in their early stages, be ill-equipped to understand the system and unable to afford the cost of defending their position. There is no shortage of organisations on hand to offer SMEs (often free) support, including advice on how to identify, protect and enforce these rights. But is the help on offer well-matched to what small businesses actually want and need, and are the institutions granting and enforcing such rights properly attuned to the needs of SMEs and individuals?

Chair: Stephen Jones, IPAN Vice Chair, IP Pro Bono Chair and CIPA Past President

Speakers:

• The Rt Hon Sir Colin Birss, Lord Justice of Appeal and Deputy Head of Civil Justice
• Neil Sharpley, Federation of Small Businesses
• Isabelle Doran, CEO, Association of Photographers

Panel

• HH Judge Charlotte Hart, Small Claims Track, Intellectual Property Enterprise Court
• Michael Silverleaf QC, barrister
• Lee Davies, CEO, Chartered Institute of Patent Attorneys
• Mandy Haberman, IPAN Board Member and entrepreneur
• Miles Rees, Head of Enforcement Outreach & Stakeholder Engagement, UK Intellectual Property Office

Find out more about the event here, watch the video on our YouTube channel, or read The Rt. Hon. Sir Colin Birss' keynote speech here.

Clash of Jurisdictions – the EU-US Data Transfer Saga

18 January 2022

Speaker:

Max Schrems (NOYB – European Center for Digital Rights)

About the event:

Europe is known as the originator of the world’s toughest data-protection laws, and few have done more than Max Schrems to give those laws real teeth. At this event, Max, an Austrian activist, writer and lawyer, speaks about his successful actions holding Facebook to account for its privacy violations, including the unlawful transfer of personal data,which have made him synonymous with privacy and the modern challenges of data transfer. His tenacity has led to the destruction of two EU/US data transfer agreements. 

While studying in the USA, Max Schrems chose privacy law as the subject of a research paper and requested copies of all the data Facebook held on him. So shocked was he to be presented with 1200 pages of data, he complained to the Irish Data Protection Commissioner (where Facebook has its European Headquarters) in 2011. Facebook was audited under European law and had to delete some files and disable its facial recognition software.

In 2013, following the Snowden revelations about Facebook’s alleged involvement with the USA’s PRISM mass surveillance programme, Schrems filed a further complaint with the Irish Data Protection Commissioner against Facebook. This was based upon EU data protection law which prohibits data transfers to non-EU countries unless a company can guarantee "adequate protection" - the case was adjourned pending a referral to the Court of Justice of the EU (CJEU). In Case C-362/14 ('Schrems I') of 2015, the CJEU held the EU-US Safe Harbour agreement invalid, stating that individual data protection authorities could suspend data transfers to third countries if they violated EU rights. In December 2015, Schrems resubmitted his original complaint to the Irish Data Protection Commissioner (with equivalent complaints to the data authorities in Germany and Belgium).

In consequence, Facebook switched its transfer mechanism from Safe Harbour to standard contractual clauses. In October 2017, this led to a fresh referral to the CJEU implicating both standard contractual clauses and the EU-US Privacy Shield Framework. Schrems argued that these agreements also incorporated exceptions for cases of illegal mass surveillance. Shortly after its coming into effect in May 2018, Schrems filed suit under the newly promulgated General Data Protection Regulations (GDPR) in Ireland against Google and Facebook for coercing their users into accepting their data collection policies. Three complaints totalled over €3.9 billion were filed. In January 2019, Schrems filed further GDPR complaints against Amazon, Apple Music, DAZN, Filmmit, Netflix, SoundCloud, Spotify, and YouTube.

In Case C-311/18 ('Schrems II'), the CJEU invalidated the Privacy Shield in July 2020, ruling that it “does not provide adequate protection” and placed additional requirements for companies using standard contractual clauses to third countries outside the EU. In September 2020, the Irish DPC sent Facebook an order that they cease the transfer of data from EU citizens to the USA, indicating that a fine of 4% of turnover would apply for failure to comply. Facebook resisted this move, using both the court of public opinion and arguments based upon national security, the latter being taken up more recently by trans-Atlantic security services. Facebook appealed in May 2021, finding fault with the Irish regulatory process - but to avail.

In parallel to all this activity, in 2014 Max Schrems invited other Facebook users to join him in the Viennese courts for what has been labelled as the largest class action privacy suit likely to ever be brought in Europe. Initially, the case was dismissed on jurisdictional grounds, but this was overturned on appeal, and the matter is now with the Austrian Supreme Court. In addition, Max founded NYOB (standing for None of Your Business) in 2017. NOYB is a non-profit foundation which aims to provide citizens with targeted and strategic litigation in order to strengthen their right to privacy.

Find out more about the event here, watch the video on our YouTube channel or download the event slides 

Watch: UK Design Law at the Crossroads

Watch: Can IP Serve Small Businesses Better?

Watch: Clash of the Jurisdictions