Joint JIPLP-GRUR event - A Distinctive Mess? Current Trade Mark Law and Practice in the EU and UK

Since January 2013, the Journal of Intellectual Property Law & Practice (JIPLP) has partnered with the German Association for the Protection of Intellectual Property (GRUR) to exchange content between JIPLP and GRUR Int., as well as organising events aimed at IP enthusiasts - wherever based!

On Friday, 24 November 2017, join JIPLP and GRUR for an exciting half-day event devoted specifically to the latest trade mark developments and trends in the EU and UK.

The conference will be held at the beautiful London offices of Allen&Overy. It will consist of two panel sessions composed of leading IP practitioners and academics who regularly contribute to JIPLP and GRUR Int, and feature a keynote address by Sir Richard Arnold.

Here's the programme:

14:00-14:30 - Registration

14:30-14:40 - Welcome remarks

14:40-15:40 - EU trade mark law (Moderator: Eleonora Rosati (University of Southampton and JIPLP Co-Editor); Discussants: Yann Basire (Université de Haute Alsace and CEIPI - Université de Strasbourg), Karin Sandberg (Harmsen Utescher and GRUR Board Member), Marius Schneider (Attorney-at-law at the Brussels and Mauritius bar and JIPLP Co-Editor), David Stone (Allen&Overy and JIPLP Board Member), Gert Würtenberger (WK-IP and GRUR President))

15:40-16:00 - Coffee/tea break

16:00-17:00 - Keynote address: Sir Richard Arnold

17:00-18:00 - Trade marks in the UK (Moderator: Stefano Barazza (University of South Wales and JIPLP Co-Editor); Discussants: Anna Carboni (Redd Solicitors and JIPLP Board Member), Birgit Clark (Baker & McKenzie and JIPLP Board Member), Gill Grassie (Brodies and JIPLP Board Member), Darren Meale (Simmons&Simmons and JIPLP Board Member)

18:00-19:30 - Conference ends; drinks and nibbles

Attendance is free, but registration is required. If you are interested in attending, hurry up and register here.

The Authors' Take - Proposed Press Publishers’ Right: A Workable Solution?

Proposed press publishers’ right: a workable solution?

University of Helsinki, Faculty of Law

Quality journalism is more important than ever. By the same token, few would oppose legal and economic conditions amenable to producing press content of high journalistic standards. Achieving those conditions is also what the European Commission’s proposal on Copyright in a Digital Single Market seeks by proposing the creation of a related press publishers’ right.
The proposal raises various issues. Many of these issues have been elegantly addressed by other scholars (e.g. C Geiger, O Bulayenko and G Frosio, [2017] EIPR 202) and are currently under discussion by the EU legislator. In this blogpost, we highlight some issues concerning the proposed related right that our article [which will be published as Advance Access here in a few weeks' time, and will be included in one of the next issues of JIPLP] discusses more extensively. Most of these issues stem from the proposal’s definition of protected subject-matter and exclusive rights in such a way that almost any reuse of news content might appear infringing. To illustrate: reproducing and making available to the public even minimal excerpts that would not qualify as original or as the result of significant investment would be infringing under the proposal.
Arguably, the right as proposed could help press publishers protect and license news content in which they have invested. At the same time, however, over-extensive protection may unnecessarily threaten the various legitimate interests served by other activities in which news content is discussed or reused. Not all these activities threaten the incentives of press publishers. Moreover, it is unclear if the related right would remedy imbalances in bargaining with online services.
Concerns about rigid, broad protection could be alleviated by better taking into account the diverse circumstances in which the proposed rights would apply. Protection could require originality, while infringements could be limited to situations where reuse of content is most problematic for press publishers’ incentives and not justified by other legitimate interests. It is also worth considering whether EU legislation allowing press publishers to rely on copyright in press publications, as proposed in the Parliament, could resolve the issues identified by the Commission satisfactorily and with fewer problems.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP).]

The Authors' Take - Coty Germany v Parfümerie Akzente

AG WAHL interprets competition provisions in relation to selective distribution agreements for luxury cosmetics

University of Southampton, School of Law

In his Opinion of 26th July 2017 in Coty Germany GmbH v Parfümerie Akzente GmbH, C230/16, Advocate General (AG) Wahl provided his interpretation of Article 101 TFEU and Regulation (EU) No 330/2010 (the Regulation). The request for a preliminary ruling came from the German Higher Regional Court (Oberlandesgericht Frankfurt am Main), and was made in the context of a dispute between cosmetics giant Coty Germany and one of its distributors, Akzente.
The question is whether Coty’s new selective distribution agreement, which prohibited the discernible use of third party websites, is precluded by EU antitrust provisions. Azkente wanted to use Amazon.de to market the goods, thereby gaining access to Amazon’s enormous active user base as well as lower marketing costs and the option to have orders fulfilled by Amazon itself.
Article 101(1) of the Treaty on the Functioning of the European Union (TFEU) prohibits agreements which distort competition, either by object or effect. Under the Regulation, vertical agreements are presumed to be exempted from Article 101(1)  TFEU via Article 101(3) TFEU, provided that neither the supplier’s nor buyer’s market share exceeds 30%.
Does the agreement distort competition?
According to the AG, the agreement falls outside Article 101(1) TFEU. This is because, when factors other than price are taken into account, Coty’s requirement does not cause appreciable anti-competitive effects.  In reaching this conclusion the AG adopted the view – extant in both competition and trade mark decisions – that a luxury product loses its value to the consumer if it becomes commonplace. The preservation of this ‘aura’ is therefore capable of offsetting anti-competitive effects. This qualitative assessment, or ‘appreciability’ test, is a source of uncertainty for parties when drafting agreements. The Opinion, if followed by the Court, should be welcomed by the Luxury Cosmetics industry, worth €203b in 2016. Its effect is to create a presumption that an agreement aiming to preserve prestige is not caught out, provided it is non-discriminatory and proportionate.
Clarifying Pierre Fabre
However, if the ‘object’ of an agreement is deemed to be anti-competitive, Article 101(1) applies and no qualitative analysis occurs. This, the AG explained, was what led the court in Pierre Fabre Dermo-Cosmétique , C-439/09, EU:C:2011:649 (Pierre Fabre), to declare ‘the aim of maintaining a prestigious image is not a legitimate aim for restricting competition’.  In that case an absolute ban on internet sales was classified as restriction by object. A full and much needed delineation of the ‘object’ category will have to wait for a future reference but a comparison between Pierre Fabre and the instant case indicates that proportionality is a key factor whether a ‘sufficient degree of harm’ has occurred.
The AG went on to confirm that, even if Article 101(1) did apply, the agreement would qualify for the Block Exemption under the Regulation. An agreement cannot benefit from the exemption if it is deemed to be a ‘hardcore restriction’. This is along the same lines as a restriction by object under Article 101(1), but more user-friendly because it sets out prohibited restrictions. The AG concluded that a restriction on discernible third party platforms constitutes neither a territorial limitation nor a restriction of passive sales.
So, a probable reprieve for luxury cosmetics suppliers, but the rapid evolution of the e-commerce sector means the proportionality assessment could soon favour distributors. Nor is the debate settled about law’s role in protecting prestige, although the interdependent evolution of trade mark law means the concept is fairly entrenched. 

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP).]

Editorial - IP in China: Moving closer to the common law system for the sake of uniformity

In our latest Editorial, Danny Friedmann reflects upon the latest trends in Chinese IP law, as well as the advantages of having harmonized IP regimes.

IP in China: Moving closer to the common law system for the sake of uniformity




To improve transparency, a uniform application of law, and thus legal predictability towards a commercial rule of law, on 12 April 2017 the Supreme People’s Court (SPC) promulgated an opinion that courts in the People’s Republic of China (China) have to take similar cases into account before making a decision.1 Article 6 of the SPC’s Opinion states:
“All levels of people’s courts shall give full consideration to the professional judges’ conferences and adjudication committee’s roles in summarizing trial experience unifying judgment standards; and on the foundation of improving working mechanisms such as consulting similar cases and judgment guidance; a mechanism is to be established requiring the search of similar cases and relevant cases, to ensure a uniform judgment standard for similar cases, and the uniform application of law.”2
The SPC’s opinion means that, while a precedential system will not be de jure binding, it will often be persuasive. China’s untenured judges already frequently make decisions according to the expectations of higher courts because they do not want to obstruct their careers. This opinion, however, also forces courts to take similar cases from courts of the horizontal level into account. The case law system will supplement the judicial interpretations of the SPC that must also guide and unify law.
China has realized that IP law is complex and requires judges to be well-versed in this particular area. Therefore it established specialized IP courts in Beijing, Shanghai and Guangzhou in 2014, and specialized IP tribunals in Nanjing, Suzhou, Chengdu and Wuhan in 2017. The latter, cross-regional tribunals, have jurisdiction for civil, administrative and criminal (“three-in-one”) IP cases, and are attached to the intermediary people’s courts of those respective cities. To further a uniform adjudication of IP law, the SPC has recommended to the National People’s Congress the establishment of an IP Appellate Court.
Besides setting up a specific IP adjudication infrastructure, China has prepared thoroughly for the implementation of a mechanism to apply IP law in a more unified manner. For a long time, case law in China was highly opaque, since it remained either unpublished or unmotivated. In 2010, the SPC established a system in which certain court cases, so-called Guiding Cases, were selected and reissued.3 The idea is that courts will cite the Guiding Cases.4 However, so far they have hardly been cited.5
In 2017, in its 16th batch, the SPC selected ten new IP cases as Guiding Cases.6 Around World IP Day 2017, there was an explosion of reissued case law by the Beijing IP Court, Shanghai IP Court, Beijing High People’s Court and many lower courts throughout China’s provinces. All came up with their own typical, model, innovative or Top 10 IP cases.7 To make sense of this profusion of case law, the Beijing IP Court, which has become the centre for IP case law in China,8 provided a hierarchy of persuasiveness in precedence: 1. SPC Guiding Cases; 2. SPC annual cases; 3. other SPC cases; 4. High People’s Court model cases; 5. High People’s Court reference cases; 6. Other prior cases from High People’s Courts; 7. Intermediate People’s Court precedent; 8. Basic People’s Court precedent; 9. Foreign case precedent. Chinese courts can work their way down from the most persuasive to lower levels of persuasive authority.9
After the explosion of case law, these Guiding, typical, model, innovative or Top 10 cases are helping to prune China’s IP case law and distinguish relevant from non-relevant case law.
China’s civil law system, enriched by this hybrid precedential process, especially in combination with data analytics, could potentially improve both the courts’ quality of IP decisions and economy of justice.

Footnotes

1
SPC’s Opinions on Putting a Judicial Responsibility System in Place and Improving Mechanisms for Trial Oversight and Management, 12 April 2017, China Court News, 12 April 2017, available in Chinese: http://www.chinacourt.org/law/detail/2017/04/id/149382.shtml.
2
Ibid.
3
SPC promulgated the Provisions of the Supreme People’s Court on Case Guidance Work, 26 November 2010. The China Guiding Cases Project, Stanford Law School, led by Mei Gechlik, is making such Guiding Cases accessible into Chinese and English and provides a platform for scholarly interpretations, see here: https://cgc.law.stanford.edu/guiding-cases/.
4
Detailed Implementing Rules on the “Provisions of the SPC Concerning Work on Case Guidance”, passed by the Adjudication Committee of the SPC on 27 April 2015, issued on and effective as of 13 May 2015, Stanford law School China Guiding Cases Project, English Guiding Cases Rules, 12 June 2015 Edition, available at: http://cgc.law.stanford.edu/guiding-cases-rules/20150513-english.
5
In a period of five years, Guiding Cases were only cited 239 times out of upwards of 10 million cases per year, according to research by Peking University. Jeremy Daum, The Curious Case of China’s Guiding Cases System, China Law Translate, 21 February 2017, available at: http://www.chinalawtranslate.com/the-curious-case-of-chinas-guiding-cases-system/?lang=en#_edn2.
6
On 9 March 2017, the SPC issued the 16th batch of new Guiding cases which are ten cases pertaining to IP: Numbers 79-86 are civil cases and number 87 is a criminal case. A summary of these cases can be found here in Chinese: ‘SPC, notification of 16th batch of Guiding Cases involving intellectual property rights, China Court News, 9 March 2017, available in Chinese at: http://www.chinacourt.org/article/detail/2017/03/id/2575036.shtml.
7
For example: SPC issued 10 Typical IP Cases, 24 April 2017; Beijing IP Court issued 18 (sic) Typical Cases on bad-faith registrations of trademarks, April 2017; Beijing High People’s Court issued Top 10 Typical and Top 10 Innovative IP Cases Court, 20 April 2017; Shanghai Pudong New Area District Court issued Top 10 IP Cases, 13 April 2017.
8
It was announced at a conference on 22 September 2015, that the Beijing IP Court will be the centre for IP case law.
9
According to Daum, the Beijing IP Court issued the Guiding Work Implementation Methods (Draft) which was not yet publicly available. Article 7 (from most to least persuasive): Jeremy Daum, ‘Unprecedented: Beijing IP Court’s use of ‘guiding cases’, China Law Translate, 31 August 2017, available at: http://www.chinalawtranslate.com/beijing-ip-court-making-new-precedent-on-guiding-cases/.