EU IP protection and enforcement: Commission proposes improvements
As part of its Digital Single Market strategy, the European Commission has published a series of papers setting out its commitment to protection of intellectual property rights in an effort to encourage innovation and creativity. The Commission's proposals cover three main areas:
- Stepping up the fight against counterfeiting and piracy, by tackling the 'big fish' through a 'follow the money' approach. The Commission proposes doing more by way of Memoranda of Understanding between rights holders and relevant intermediaries, such as those already in place with internet platforms and under discussion with the transport and payment industries; and the creation of a new IP markets watch-list which will identify online and physical markets that engage in or facilitate substantial infringements.
- Providing greater legal certainty over enforcement of IP rights by giving national courts guidance on how they should interpret key provisions in the IP Enforcement Directive. However, many see this as a missed opportunity to overhaul the enforcement regime which has been in force for over 10 years and has been applied inconsistently between Member States.
- Creating a fair and balanced system for licensing and enforcing Standard Essential Patents.
Navigating the new groundless threats regime
The Intellectual Property (Unjustified Threats) Act 2017 came into force on 1 October 2017. Whilst the revisions are 'evolutionary,' rather than 'revolutionary', it is now much easier for trade mark and design rights holders to correspond with infringers without being at risk of a claim for groundless threats of proceedings. In particular, the new regime:
- introduces a new statutory two-part test for a groundless threat, based on the threat being about acts done or to be done in the UK
- aligns the threats regime across the relevant IP rights, for example, allowing trade mark and design owners to challenge primary actors about their primary and secondary acts of infringement (in respect of the same goods)
- provides guidance as to permitted 'safe harbour' communications with secondary infringers (e.g. retailers)
- introduces a defence where the right holder has taken 'reasonable steps' to discover the identity of the primary infringer
Digital Economy Act 2017: Key IP Provisions
The Digital Economy Act 2017 contains a number of important provisions relating to IP. In particular, the Act:
- Increases the maximum sentence for the copyright offence of communicating copyright works to the public to ten years, a controversial measure (albeit the Government has suggested that the maximum penalty will only be applied in the most serious of circumstances).
- Repeals section 73 of the Copyright, Designs and Patents Act 1988 which had provided a defence where copyright works are immediately retransmitted by cable in the jurisdiction that they are first broadcast in.
- Provides for web-marking for UK registered designs (but not EU designs) – a product can now be marked or stamped with a relevant internet link (instead of the design number) as a way of countering any defence that an infringement was 'innocent'.
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The reform agenda in 2018
Developments to watch out for in 2018 include:
- Further progress in the controversial copyright proposals forming part of the EU Digital Single Market project, including the proposed related right for press publishers, and increased obligations on platforms such as YouTube to prevent infringements of IP rights.
- The Portability Regulation will apply from 1 April 2018 and will allow subscribers to access online content when temporarily in another state e.g. when on holiday.
- The Trade Secrets Directive must be implemented by Member States, including the UK, by 9 June 2018. It is not yet clear what approach the UK Government will take to implementation – it is possible that it will decide that the UK law is already largely compliant with the Directive and it will not be necessary to implement specific legislation, with any issues that arise being dealt with by judicial interpretation. Otherwise, any legislation will need to jostle for priority.
- The Trade Marks Directive meanwhile must be implemented by Member States by 14 January 2019, which will bring national laws in line with the reforms already implemented in relation to EU trade marks.
- Finally, the UK Government has indicated that it intends to ratify by 31 March 2018 the Hague Agreement on Industrial Designs (in its own right, as the UK is already a member through EU membership) with the new registration service being available from Spring 2018. By joining the Hague system, UK businesses will continue to have access to the international system of design registration after Brexit.