Sunday, 12 June 2022

Extension of NZ Copyright Term

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Jane Lambert

New Zealand is a country of just over 5.1 million people on the other side of the world.  It was, however,  the third-largest music streaming market for UK artists in 2020 according to the Department for International Trade (see DIT News Story UK music execs hail benefits of UK-New Zealand trade deal  16 April 2022). It adds: "the enhanced protections secured in this forward-looking trade agreement will strengthen this creative cultural relationship." 

The enhanced protection to which the news story refers is art 17.48 (1) of the UK-New Zealand Free Trade Agreement which provides:

"Each Party shall provide that the rights of an author of a work within the meaning of Article 2 of the Berne Convention shall run for the life of the author and for 70 years after the author’s death."

As s.12 of the Copyright, Designs and Patents Act 1988 already complies with art 2 of Berne, art 17.48 (1) of the FTA requires the amendment of s.22 of the New Zealand Copyright Act 1994 to extend the duration of copyright protection in New Zealand for another 20 years.

The DIT considers this extension of sufficient importance to place it on the front page of its website.  It quotes Geoff Taylor, Chief Executive BPI, BRIT Awards and Mercury Prize as follows:

"We are grateful to the Government for their dedication to promoting our world-leading IP standards and hope that this will continue to be a priority in further negotiations taking place around the world.”  

The news story is not just about the extension of the duration of copyright in New Zealand.  It also features a business that makes guitars. 

Readers who want to know more about the IP provisions of the free trade agreement may refer to my article The New Zealand Free Trade Agreement: IP Provisions of 24 Oct 2021 in which I discussed the IP provisions of what was then the proposed agreement.  In the agreed treaty the IP provisions are to be found in section 17.  I have indexed my articles on New Zealand here.

 Anyone requiring further information about copyright protection outside the UK should call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.

Tuesday, 10 May 2022

Art 67 of the Withdrawal Agreement and Art 132 of the EUTMR - Crafts Group LLC v M/S Indeutsch International

Author Sadarama Licence CC BY-SA 4.0 Source Wikimedia Commons



















Intellectual Property Enterprise Court (Mr Ian Karet) Crafts Group LLC v M/S Indeutsch International and another [2021] EWHC 3505 (IPEC) (23 Dec 2021)

This was an application by the defendants, M/S Indeutsch International and M/S KnitPro International ("KnitPro"), for the following relief:
  • an order to set aside service in India of proceedings brought by the claimant, Crafts Group LLC ("Crafts") for groundless threats under s.21 of the Trade Marks Act 1994, 
  • a declaration that the court has no jurisdiction over the KnitPro; or 
  • alternatively, for a stay of proceedings pending determination of the validity of one of the trade marks in dispute by the European Union Intellectual Property Office ("EUIPO").
The threats of which the Crafts complained were two takedown notices that had been sent by the defendants' solicitors.to Amazon.  They concerned two of Crafts knitting needles.   The claimant alleged that Amazon would not relist its knitting needles unless the notices were withdrawn or there was an intervention by the court.  Permission to serve the proceedings outside the jurisdiction had been granted by HH Judge Hacon.   The invalidity proceedings in the EUIPO had been. started by the claimant's predecessor, Crafts American Group.  

KnitPro complained that service of the threats action had been defective because the application notice and evidence in support of the application for permission to serve process overseas had not been served on them.  Secondly, KnotPro said that Crafts had failed to make full and frank disclosure at the hearing of its application which was made without notice and in KnitPro's absence.  Alternatively, KnitPro argued that the invalidity proceedings should be allowed to take their course.

The application came on before Mr Ian Karet sitting as a deputy judge of the High Court on 23 Nov 2021. The learned deputy delivered judgment on 23 Dec 2021 (see Crafts Group LLC v M/S Indeutsch International and another  [2021] EWHC 3505 (IPEC) (23 Dec 2021).

Mr Karet considered first the application to set arise service of the threats action proceedings.  He directed himself that CPR 6.36 enables the court to permit service out of the jurisdiction if any of the grounds set out in para 3.1 of PD 6B applies. CPR 6.37 requires an application to set out the relevant ground(s) for service out of the jurisdiction. The court will give permission only if it is satisfied that England and Wales is the proper place in which to bring the claim.. CPR 6.38 provides for service of any document other than a claim form.   Applications for permission to serve process outside the jurisdiction are made under CPR Part 23.  CPR23.10 entitles a person who was not served with a copy of the application notice for a without notice order to apply to have the order set aside or varied.

The deputy judge declined to set aside service for failure to serve the application notice and supporting evidence,  He referred to CPR 3.10 which provides:
"Where there has been an error of procedure such as a failure to comply with a rule or practice direction—
(a) the error does not invalidate any step taken in the proceedings unless the court so orders; and
(b) the court may make an order to remedy the error." 
He also considered the Court of Appeal's judgment in  Denton v TH White Ltd [2014] EWCA Civ 906 and the commentary on that case in the White Book at paras 3.9.3, 3.9.4 and 3.9.7, In his view, KnitPro had not been significantly disadvantaged by the belated provision of the application notice and evidence given to the court on the application for service out. The making of the service out order was not conditional upon the service of those documents. Failure to serve those documents does not render the service ineffective. The error could be remedied by an order under CPR 3.10.   He reached the same conclusion by considering Denton by analogy even though that case was not directly applicable.

Turning to the alleged failure to give full and frank disclosure, Mr Karet listed the alleged deficiencies as follows:
"i) The evidence did not fairly present to the court the fact that there was no correspondence between the parties in relation to alleged unjustified threats from July 2015, when the first takedown notice was submitted to Amazon UK, to November 2020.
ii) Crafts did not show the court that there had been a second takedown request submitted to Amazon in November 2015, as to which Crafts did and said nothing.
iii) On the basis of these facts, there would at least be open to KnitPro an argument that Crafts had impliedly consented to, or acquiesced to, its takedown requests. The court was not told that.
iv) Crafts appeared to tell the court in general terms the subject-matter of without prejudice discussions between the parties. But the information Crafts gave was wrong. KnitPro's position was that there was no such discussion about any alleged threats action at all.
v) Crafts' evidence in support wrongly suggested that the threats of infringement proceedings were ongoing. Crafts incorrectly elided present threats with ongoing damage from earlier threats.
vi) Crafts did not inform the court that the absence of infringement proceedings in the UK could not simply be taken to indicate that the Caspian and Sunstruck needles did not in fact infringe the Chevron and Symfonie Marks, as Crafts asserted.
vii) Crafts' account of the EU invalidity proceedings was incomplete and imprecise."

 The learned deputy declined to set aside service on the ground of material non-disclosure.  In his view, the correct test for full and frank disclosure on an application for service outside the jurisdiction is that set out by Mr Justice Toulson between paras [23] and [31] of his judgment in MRG (Japan) Limited v Engelhard Metals Japan Limited [2003] EWHC 3418 (Comm), [2004] 1 LLR 731, [2004] 1 Lloyd's Rep 731:

"[23] The starting point is that an applicant for an order on a without notice application must make full and frank disclosure of all material facts, that is, facts known to the applicant which might reasonably be taken into account by the judge in deciding whether to grant the application: R v Kensington Income Tax Commissioners ex parte Princess Edmund De Polignac [1917] 1 KB 486, 514 (Scrutton LJ); Siporex Trade SA v Comdel Commodities Limited [1986] 2 Lloyd's Rep 428, 437 (Bingham J); Brink's Mat Limited v Elcombe [1988] 1 WLR 1350, 1356 (Ralph Gibson LJ).
[24]. It is for the court to determine what is material according to its own judgment and not the assessment of the applicant: Brink's Mat Limited v Elcombe. This means that if the court considers there to have been material non-disclosure, it is not an answer that the applicant in good faith took a different view, although that may affect the court's exercise of its discretion in deciding what to do in the light of the non-disclosure. It does not mean that an applicant is under a duty to disclose facts which could not reasonably have a bearing on the decision which the judge has to make.
[25- Materiality therefore depends in every case on the nature of the application and the matters relevant to be known by the judge when hearing it. I was referred to a number of statements on the duty of disclosure in the context of applications for freezing injunctions. In such cases the court is being asked to make an order of an exceptional kind, prohibiting or restricting a defendant's use of its own assets before any adjudication has been made against it. Because of its draconian nature, it is a jurisdiction which requires great caution and a wide range of factors may have a bearing on the court's decision.
[26]. An application for permission to serve out of the jurisdiction is of a very different nature. The general principles about disclosure on without notice applications still apply, but the context is different. The focus of the inquiry is on whether the court should assume jurisdiction over a dispute. The court needs to be satisfied that there is a dispute properly to be heard (i.e. that there is a serious issue to be tried); that there is a good arguable case that the court has jurisdiction to hear it; and that England is clearly the appropriate forum. Beyond that, the court is not concerned with the merits of the case.
[27]. Authority supports this approach. In BP Exploration Co (Libya) Limited v Hunt [1976] 3 AER 879 (which concerned an application for leave to serve out of the jurisdiction) Kerr J said at 893:
'In my view, a failure to refer to arguments on the merits which the defendant may seek to raise in answer to the plaintiff's claim at the trial should not generally be characterised as a failure to make a full and fair disclosure, unless they are of such weight that their omission may mislead the court in exercising its jurisdiction under the rule and its discretion whether or not to grant leave.'

[29] If MRG was aware of matters which might reasonably have caused the judge to have any doubt whether he should grant permission to serve out of the jurisdiction, those would have been relevant matters and therefore ought to have been disclosed. This must be so in principle, and it is implicit in the authorities to which I have referred.
[30] However, Mr Gruder submitted that the duty of disclosure was wider. He submitted that if an applicant knew matters which would not on any reasonable view make any difference to whether there was a serious issue to be tried, or to any of the other questions which the judge had to consider, but which were relevant to the ultimate merits of the action, they must be disclosed. To the question "why?", Mr Gruder's answer was that: i) it is for the court and not for the applicant to decide what is material and ii) anything which is relevant to the merits of the claim is potentially relevant to the matters which the judge has to consider. I do not accept that submission. The first proposition is correct, but Mr Gruder seeks to apply it in such a way as to enlarge the test of materiality. It is for the court to determine what is material, but the test of materiality is that to which I have referred: whether the matter might reasonably be taken into account by the judge in deciding whether to grant the application. The second proposition goes too far. There may be many points which would be relevant to the ultimate merits of an action, but which could not on any reasonable view affect the judge in deciding the "merits threshold" question (or the ultimate question whether to grant the application).
[31]. Mr Gruder submitted that if the applicant is not required to disclose all matters which go to the merits of the action, but only those matters which go to the questions whether there is a serious issue to be tried, whether the court has jurisdiction to hear it and whether England is clearly the appropriate forum, the result will be to reduce the judge's role on such an application to a "rubber stamping" exercise. I would not agree with that description, although I do agree that the issues which the judge is required to consider are limited. This is because the judge is at this stage concerned with the question whether the court should assume jurisdiction, rather than with the question who is likely to win."

Mr Karet explained at para [41] of his judgment:

"While the evidence in support of service in this case may have mis-described matters, this was by mistake. The complaints KnitPro raise about the evidence do not go to the question of whether this court has jurisdiction over the alleged threats. Instead, they are matters that may be raised in defence to the threats claim. KnitPro are in effect adopting the unsuccessful approach which Toulson J dismissed in MRG of concentrating upon matters that may be relevant to the ultimate merits of the action rather than whether there was a serious issue to be tried. Accordingly I do not think there has been material non-disclosure in this context."

    For good measure, the deputy judge added at [42]:

    "If there had been material non-disclosure then I would also have dismissed the application on the basis that the judge would have given permission had the full facts been before him."

    The last issue before Mr Karet was whether to stay the threats action pending the invalidity application in the EUPO.  The defendants argued that art 67 of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community continued to apply art 132 of the European Union Trade Mark Regulation which provided:

    "An EU trade mark court hearing an action referred to in Article 124 other than an action for a declaration of non-infringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the EU trade mark is already in issue before another EU trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office."

    The Chancellor had held in Easygroup Limited v Beauty Perfectionists Limited [2021] EWHC 3385 (Ch), [2022] Bus LR 146, [2022] WLR(D) 7 that art 67 of the withdrawal agreement has direct effect as part of domestic law without the need for any further legislative enactment.  Mr Karet also referred to the judgment of the Court of Appeal in Starbucks (HK) Ltd v. British Sky Broadcasting Group plc [2012] EWCA Civ 1201 that there is a strong presumption in favour of a stay.   The Court added that "special grounds" within the meaning of art 132 are hard to make out and that a general argument about getting to the end of proceedings is unlikely to be sufficient.

    Mr Karet declined to order a stay pending the outcome of the validity proceedings in the EUIPO.   Art 124 listed a number of causes of actions that were reserved for EU trade mark courts but threats actions were not one of them.  

    Anyone wishing to discuss this article can call me on 020 7404 5252 during office hours or send me a message through my contact form.

    Friday, 25 February 2022

    Unified Patent Court Prepares to Open

    Author Jean-Noel Lafargue Licence CC BY-SA 2.5 Source Wikimedia Commons

     










    Jane Lambert

    The Administrative Committee of the Unified Patent Court is one of three committees that have been established by art 11 of the Agreement on a Unified Patents Court to ensure the effective implementation and operation of that Agreement.  It held its first meeting on 22 Feb 2022 following Austria's deposit of its instrument of ratification (see The UPC is now on the Final Stretch but the UK won't be part of it 27 Jan 2022).

    In an Announcement on the Unified Patent Court Administrative Committee’s inaugural meeting published by the Court on 23 Feb 2022, the meeting was described as "historic" as it marked the birth of the court as an international organization. The meeting took place in the building that has been earmarked for the Court of Appeal and Registry in Luxembourg.   The Committee adopted rules of procedure, rules on the European Patent Litigation Certificate and other qualifications, Service, Staff and Financial Regulations. It elected Alexander Ramsay who had previous;y chaired the Preparatory Committee as its chair. Ir also chose the members of the Advisory Committee who will interview applicants for judicial appointments from the end of March.

    The contracting parties also gave details of the local and regional divisions that they plan to set up. Germany plans to set up four at Dusseldorf, Hamburg, Mannheim and Munich, France one at Paris, Italy one in Milan and Sweden a regional one for itself and its Baltic neighbours in Stockholm.

    Anyone wishing to discuss this article can call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form at other times.

    Sunday, 6 February 2022

    The Alleged Benefits of Brexit

    Author Les Chatfield Licence CC BY-SA 2.0 Source Wikimedia Commons
     














    On 31 Jan 2022, the Cabinet Office published a document entitled  The Benefits of Brexit: How the UK is taking advantage of leaving the EU.   It consists of 105 pages including the front cover and back page.  There is a "Foreword by the Prime Minister", an "Introduction", sections headed "Our Achievements so far", "The Best Regulated Economy in the World" and "A World of Future Opportunities", and a "Conclusion."

    When governments enter a treaty each of them accepts restrictions. When the treaty comes to an end so do the restrictions.  Whether or not a release from restrictions confers a benefit will depend on how it is to be used.  Even if it does confer a benefit it will come at a cost because the benefits that had been conferred by the treaty will also be lost.  The ending of the treaty will be a net benefit only if the benefits resulting from the release outweighs those costs.

    Anyone expecting the above document to quantify the benefits of leaving the EU and weighing them against the costs will be disappointed because it is a polemic and not an analysis.  Its authors are not identified but the "Introduction" states that "many of the benefits" and future work set out in that document build on the work and ideas of Sir Iain Duncan Smith MP, Theresa Villiers MP and George Freeman MP and their Taskforce on Innovation, Growth and Regulatory Reform.  It adds that there have been contributions from numerous business groups and representative organisations who have met the Prime Minister and other Ministers.  

    This section headed "Our Achievements So Far" consists of 14 pages divided into the following subsections:
    • Taking Back Control (page 5 to 7);
    • Our Money and Levelling Up (pages 8 and 9);
    • Backing our Business (page 10 to 12);
    • Support for People and Families (pages 13 and 14);
    • Protecting our Environment (page 15);
    • Enhancing Animal Welfare Standards (page 16);  and
    • Global Britain (page 17 to 19).
    The alleged achievements of "Taking Back Control" include "ending free movement", "making it tougher for EU criminals to enter the UK", reintroducing blue passports and "reviewing the EU ban on imperial markings and sales".  The authors explain that that is because "imperial units like pounds and ounces are widely valued in the UK and are a core part of many people’s British identity." "Our Money and Levelling Up" includes stopping contributions to the EU, spending more money on the NHS, subsidizing British businesses, changing the rules on public procurement to make it easier for British businesses to win public sector contracts and setting up free ports.   "Support for People and Families" includes raising the limit for contactless payments to £100, removing the requirement for vehicle owners to insure against accidents on private land, replacing the Erasmus scheme with the Turing scheme and relaxing the rules on cannabis for medical use.   The rest of the section is in a similar vein. 

    "The Best Regulated Economy in the World" section is 13 pages long divided as follows:
    • "Our regulatory system is recognised globally. We want to raise the bar even higher as we embrace our new found freedoms outside of the EU and position ourselves as a global hub for innovation and a science and technology superpower" (page 20);
    • Making the most of our regulatory freedoms (page 21);
    • Our principles for regulation (pages 22 and 23);
    • A sovereign approach (pages 24 and 25); 
    • Leading from the front (page 26);
    • Proportionality (page 27);
    • Recognizing what works (page 28);
    • Setting high standards at home and globally (page 29);
    • Retained EU law (page 30);
    • Accelerating and prioritizing refim (page 31); and 
    • Amending retained EU law (pages 32 and 33),
    Except for the passages on repealing or amending retained EU law for which it appears that primary legislation will be required there is very little detail on how UK regulation will improve on or even diverge from the EU's.

    The most sunstantial section is headed "A World of Opportunities".  That runs from page 34 to 100 and cosnsists of the following subsections:
    • A world of opportunities (pages 34 and 35);
    • Science Data & Technology (pages 36 and 37);
    • Quantum Technologies (pages 38 and 39);
    • Digital Economy (pages 40 and 41);
    • Digital Technology in Trade (pages 42 and 43);
    • Online Safety (page 44);
    • Cyner Security & Product Safety (page 45);
    • Life Sciences (pages 46 and 47);
    • Business & Industry (pages 48 and 49);
    • Professional Business Services (pages 50 and 51);
    • Legal Services (pages 52 and 53);
    • Automotive (pages 54 and 55);
    • Aerospece (pages 56 and 57);
    • Retail and Consumer Goods (pages 58 and 59);
    • Hospitality (pages 60 and 61);
    • Food & Drink (pages 62 and 63);
    • Culture (page 64);
    • Infrastructure & Levelling Up (pages 65 and 66);
    • Aviation (pages 67 and 68);
    • Space (pages 60 and 70);
    • Rail (pages 71 and 72);
    • Roads (pages 73 and 74);
    • Maritime (page 75);
    • Nuclear (pages 76 and 77);
    • Housing & Construction (page 78);
    • Local Government (page 79);
    • Education (pages 80 and 81);
    • Health (pages 82 and 83);
    • Climate, the Environment & Agriculture (pages 84 and 85);
    • The Environment (pages 86 and 87);
    • Farming (pages 88 and 89);
    • Fisheries & Marine Management (pages 90 and 91);
    • Animal Welfare (pages 92 and 93);
    • Glonal Britain (pages 94 and 95);
    • Migration (pages 96 and 97);
    • International Trade (page 98); and
    • International Relations and Diplomacy (pages 99 and 100). 
    Part of this programme would not have been possible without brexit. Changes to data protection law that may not be compatible with the General Data Protection Regulation. Subsidies and investments in various sectors of the economy might have been prohibited as state aid. Member states would not have been able to negotiate free trade agreements with third countries. There is not much else that would have been incompatible with EU membership.  Where there are changes such as the exclusion of English and Welsh lawyers from the Court of Justice, General Court and the Unified Patent Courts and the withdrawal of the UK from the Brussels and Lugano Conventions are hard to spin as benefits. Possible accession to the Singapore Convention on Mediation and the recognition of English legal qualifications in Australia and New Zealand will not begin to make up for the loss of the right to practise in the EU.

    The "Conclusion" is made up exclusively of platitudes.   Anyone wishing to discuss this article or the issues arising in it may call me on 020 7404 5252 during office hours or send me a message through my contact form

    Thursday, 27 January 2022

    The UPC is now on the Final Stretch but the UK won't be Part of it


     









    Jane Lambert

    Art 1 of the Protocol to the Agreement on a Unified Patent Court on provisional application provides that the following articles of the Unified Patent Court Agreement shall enter into provisional application upon the entry into force of that Protocol:  arts 1-2, 4-5, 6 (1), 7, 10-19, 35 (1, 3 and 4), 36-41 and 71 (3) of the Agreement and arts 1-7 (1), 7 (5), 9-18, 20 (1), 22-28, 30, 32 and 33 of the Court's Statute. The Protocol came into force on 19 Jan 2022 pursuant to art 3 (1) of the Protocol following the deposit by the Austrian government of its instrument of ratification of the Protocol.

    The news is likely to be welcomed by businesses around the world - including some in the United Kingdom - that hold European patents designating Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. That is because the Agreement is expected to reduce the cost of patent litigation in those countries.  It will be a significant factor when determining where to carry on research and development and the UK may lose investment as a result.

    Anyone wishing to discuss this article may call me on 020 7404 5252 during normal business hours or send me a message through my contact form.

    Monday, 3 January 2022

    Intellectual Property Articles of the Australia-UK Free Trade Agreement: General Provisions

    Wallaby


     














    Jane Lambert

    On 20 Dec 2021, I introduced the UK's free trade agreement with Australia.  I reported that it consists of 32 chapters and that one of those chapters (namely Chapter 15) is on intellectual property.  Chapter 15 consists of 96 articles divided into 11 sections.  I indicated that I would consider the various sections of that chapter in due course.

    Today I consider Section A of the chapter which is headed "General Provisions".  It consists of the following articles:

    • Art 15.1 Definitions
    • Art 15.2 Objectives
    • Art 15.3 Principles
    • Art 15.4 Understandings
    • Art 15.5 Nature and Scope of Obligations
    • Art 15.6 Understandings Regarding Certain Public Health Measures
    • Art 15.7 National Agreements
    • Art 15.8 National Treatment
    • Art 15.9 Transparency
    • Art 15.10 Application of Chapter to Existing Subject Matter and Prior Acts
    • Art 15.11 Exhaustion of Intellectual Property Rights, and
    • Art 15.12 Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions.
    The only definition that I need to consider at this stage is the meaning of "intellectual property." For the purpose of this agreement, the term refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part II of the TRIPS Agreement. That is to say, copyright and related rights, trade marks, geographical indications, industrial designs, patents, semiconductor topography designs and undisclosed information.

    The objectives of the agreement are set out in art 15.2:
    "The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations."

    Each party is required by art 15.5 (3) to give effect to Chapter 15 but is free to determine the appropriate method of implementing it within its own legal system and practice.

    Under art 15.5 (1), the parties affirm their existing rights and obligations with respect to each other under the TRIPS Agreement. They also confirm at art 15.7 that they have ratified or acceded to the following agreements:

    (a) TRIPS Agreement;
    (b) Paris Convention;
    (c) Berne Convention;
    (d) Rome Convention;
    (e) WCT;
    (f) WPPT;
    (g) Marrakesh Treaty;
    (h) Madrid Protocol;
    (i) Nice Agreement;
    (j) Singapore Treaty;
    (k) Budapest Treaty;
    (l) UPOV 1991;
    (m) PCT; and
    (n) PLT.

    Each of those agreements is identified in art 15.1.

    In art 15.4, the parties recognize the need to:
    "(a) promote innovation and creativity;
    (b) facilitate the diffusion of information, knowledge, technology, culture, and the arts; and
    (c) foster competition and open and efficient markets,
    through their respective intellectual property systems, while respecting the principles of transparency and due process, and taking into account the interests of relevant stakeholders, including right holders, service providers, users, and the general public."

    The Parties acknowledge the importance of adequate, effective and balanced protection and enforcement of intellectual property rights in art 15.5 (2) but are conscious of the need to prevent measures to enforce intellectual property rights from becoming in themselves barriers to legitimate trade. Accordingly, art 15.3 (2) provides:

    "Appropriate measures, provided that they are consistent with the provisions of this Chapter, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology."
    Another important qualification to the protection and enforcement of intellectual property rights concerns public health. Art 15.3 (1) permits each party in formulating or amending its laws and regulations, to adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development. Each party affirms the Declaration on TRIPS and Public Health at art 15.6 (1) with the following understandings:
    "(a) the Parties affirm the right to fully use the flexibilities as duly recognised in the Declaration on TRIPS and Public Health;
    (b) the Parties agree that this Chapter does not and should not prevent a Party from taking measures to protect public health; and
    (c) the Parties affirm that this Chapter can and should be interpreted and implemented in a manner supportive of each Party’s right to protect public health and, in particular, to promote access to medicines for all."
    It is specifically agreed in art 15.6 (2) that Chapter 15 does not and should not prevent the effective utilisation of Article 31bis of the TRIPS Agreement, and the Annex and Appendix to the Annex to the TRIPS Agreement. Moreover, by art 15.6 (3) the parties recognize the importance of contributing to the international efforts to implement art 31bis of the TRIPS Agreement, and the Annex and Appendix to the Annex to the TRIPS Agreement.

    In respect of all categories of intellectual property covered in Chapter 15, art 15.8 (1) requires each party to accord to nationals of the other party treatment no less favourable than it accords to its own nationals with regard to the protection of intellectual property rights subject to the exceptions already provided for in, respectively, the Paris Convention, the Berne Convention, the Rome Convention, the WPPT, and the TIPRIC (the Treaty on Intellectual Property in Respect of Integrated Circuits, adopted at Washington on 26 May 1989). Art 15.1 (2) provides that "nationals" for this purpose means "a person of a Party that would meet the criteria for eligibility for protection provided for in the agreements listed in Article 15.7 (International Agreements) or the TRIPS Agreement". In respect of performers, producers of phonograms and broadcasting organisations, the above obligation applies only in respect of rights provided under the free trade agreement. However, art 15.8 (3) provides that art 15.8 (1) does not apply to procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights. A party may also derogate from art 15.8 (1) in relation to its judicial and administrative procedures, including requiring a national of the other party to designate an address for service of process in its territory, or to appoint an agent in its territory, provided that this derogation is:
    (a) necessary to secure compliance with laws or regulations that are not inconsistent with this Chapter; and
    (b) not applied in a manner that would constitute a disguised restriction on trade.

    Art 15.9 requires each party to endeavour to publish online:
    (1)   its laws, regulations, procedures, and administrative rulings of general application concerning the protection and enforcement of intellectual property rights;
    (2)   subject to its law information that it makes public concerning applications for trade marks, geographical indications, registered designs, patents, and plant variety rights; and
    (3) subject to its laws online information that it makes public concerning registered or granted trade marks, geographical indications, designs, patents, and plant variety rights, sufficient to enable the public to become acquainted with those registered or granted rights.
    Both the Intellectual Property Office and IP Australia seem to satisfy this requirement already.

    Art 15.10 (1) provides that unless otherwise provided, Chapter 15 gives rise to obligations in respect of all subject matter existing at the date of entry into force of the free trade agreement and that is protected on that date in the territory of a party where protection is claimed, or that meets or comes subsequently to meet the criteria for protection under that chapter. A party shall not be required to restore protection to subject matter that on the date of entry into force of the agreement has fallen into the public domain in its territory. Chapter 15 does not give rise to any obligation in respect of acts that occurred before the date of entry into force of the free trade agreement.

    Section A ends with two miscellaneous provisions. First, art 15.11 states that nothing in that agreement prevents a party from determining whether or under what conditions the exhaustion of intellectual property rights applies under its legal system. Secondly, Australia and the UK affirm their commitment to work together through discussion and by the exchange of information at the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore under art 15.12.

    I shall address Section B on Cooperation which runs from art 15.13 to art 15.19 inclusive shortly.   In the meantime, anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during normal business hours or send me a message through my contact form. 

    Monday, 20 December 2021

    The Free Trade Agreement with Australia

    Discovery House, Head Office of IP Australia
    Author Bidgee Licence CC BY-SA 3.0 Source Wikimedia Commons

     









    Jane Lambert

    On 16 Dec 2021, the Secretary of State for International Trade signed the Australia-UK Free Trade Agreement (see the Department for International Trade's press release of 16 Dec 2021). The Agreement had been agreed in principle by the Prime Ministers of the two countries as I noted in The Proposed Australia-UK Free Trade Agreement on 17 June 2021. The full text of the Agreement can be found on the Australian Department of Foreign Affairs and Trade website.

    The Agreement consists of a Preamble, 32 chapters of substantive provisions some of which have their own annexes, four annexes and several side letters. The chapters cover:

    Chapter 15 consists of 96 articles on intellectual property starting with "Definitions" in art 15.1 and finishing with "Environmental Considerations in Destruction and Disposal of Infringing Goods" in art 15.96.  The Chapter is divided into the following sections:
    • A.  General Provisions: includes definitions, objectives, principles, understandings in respect of the objectives etc.;
    • B. Cooperation: committee on IP rights, patent cooperation and work-sharing etc.;
    • C. Trade Marks and domain names;
    • D: Geographical indications;
    • E: Patents and data;
    • F: Undisclosed data;
    • G: Registered industrial designs;
    • H: Copyright and related rights;
    • I:  Trade secrets; and
    • J:  Enforcement.
    I shall consider the various provisions of Chapter 15 and how they might affect IP practice in the UK in due course.

    Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form at other times.

    Sunday, 14 November 2021

    IP in India

    Photograph of India taken from a US Satellite

     



















    The Department for International Trade has recently carried out a consultation on the top priorities for businesses and members of the public for a future trade deal with India and where they think the biggest gains from such a deal may lie. Any trade deal with India is likely to contain provisions on intellectual property and the topic was suggested as an option in several of the consultation document's multiple-choice questions.

    According to An information note for the consultation relating to a Free Trade Agreement between the United Kingdom and India, "intellectual property" is the UK's second-largest export to India amounting to £833 million.  The note does not explain how that figure is computed or of what it consists. It is, therefore, assumed to be royalties and other payments for licences, assignments and other intellectual property transactions.

    For those thinking of investing in, or exporting to, India, the Intellectual Property Office has published a short booklet entitled  Intellectual property rights in India.  It lists the intellectual assets that are protected in India, the treaties and conventions to which India is party and the need to register patents, trade marks and designs with the Indian Intellectual Property Office.  Even though India has acceded to the Berne Convention, the booklet recommends the registration of copyright works with the Indian Copyright Office.  There is a section on IP enforcement that discusses civil litigation, criminal proceedings and other methods of dispute resolution.

    A particularly helpful paragraph in the booklet suggests the following self-help considerations:
    • "Think about the design of your product, and how easy it would be for somebody to reproduce it without seeing your original designs; 
    • When you hire staff, have effective IP-related clauses in employment contracts. Also make sure you educate your employees on IP rights and protection; 
    • Have sound physical protection and destruction methods for documents, drawings, tooling, samples, machinery etc.; 
    • Make sure there are no ‘leakages’ of packaging that might be used by counterfeiters to pass off fake product; 
    • Check production over-runs to make sure that genuine product is not being sold under a different name." 
    The booklet lists a number of typical problems faced by British businesses in India and suggests the following precautions:
    • "take advice from Indian IP rights experts at an early stage on how to protect your IP – prevention is better than cure; 
    • consult publications and websites on Indian IP rights and protection in general; 
    • carry out risk assessment and due diligence checks on any organisations and individuals you deal with; 
    • take professional advice from other experts – for example lawyers, local diplomatic posts, Chambers of Commerce and the UK India Business Council; 
    • talk to other businesses already doing similar business in India; 
    • consult agents, distributors and suppliers on how best to safeguard your rights; 
    • check with trade mark or patent attorneys to see whether there have been previous registrations of your own marks, or other IP, in India; 
    • stick to familiar business methods – don’t be tempted to do things differently because you’re trading in a different country."
    The booklet offers some useful guidance on getting professional help in India.  

    Since the publication of that booklet, the British government has appointed Ms Pragya Chaturvedi as our IP attaché in India.  Her job includes advising British businesses on IP issues in India, working with various government entities to raise IP awareness and engaging and assisting consular officials in different regions of Indian.  Ms Chaturvedi can be contacted at the British High Commission at Shantipath, Chanakyapuri, New Delhi 110021 on +91 (11) 2419 2100 or by email at Pragya.Chaturvedi@fco.gov.uk.

    The European Commission operates an India IP SME Helpdesk which describes itself as a
    "A first-line IP assistance service for European/COSME SMEs that operate or intend to access the Indian market and look to improve their global competitiveness."

    It keeps a directory of 214 IP Institutions resources, publishes a regular newsletter on Indian IP law and holds frequent and regular in-person and online conferences and seminars and promotes many more that are held by other organizations.  The infographic 10 Tips to survive in India is particularly helpful: 

    1. "Identify your IP assets
    2. Plan in advance when it comes to IP!
    3. Adapt your IP strategy to the Indian market
    4. Carry out preliminary searches
    5. Protect your IP Rights
    6. Maintain your IP Right
    7. Monitor the market for infringements
    8. Be ready to enforce your IP Rights
    9. Work with Indian Customs
    10. Last but not least… Seek advice from IP Experts,"

    The WIPO's India page links to the Copyright Office and the Indian Intellectual Property Office, the treaties to which India is party, India's primary and secondary IP legislation, statistics and a collection of other resources called IP in Action.

    The Indian IP Office website holds comprehensive information on Indian patents, trade marks, design and geographical indications.  It publishes updated statutes and secondary legislation, a Manual of Patent Office Practice and Procedure a Manual of Design Practice and Procedure and a Draft manual of Trademarks Practice and Procedure and other guidance.

    Anyone wishing to discuss this article or any of its contents can call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

    Sunday, 24 October 2021

    The New Zealand Free Trade Agreement: IP Provisions

    Image Credit NASA/JPL-Caltech Public Domain Wikimedia Commons

     














    Jane Lambert

    According to the Department for International Trade, the Prime Ministers of New Zealand and the United Kingdom agreed in principle the terms of a  free trade agreement on 20 Oct 2021 (see UK agrees historic trade deal with New Zealand  DfIT press release 20 Oct 2021).  Copies of those terms have been posted to the British and New Zealand government websites).

    Overview

    The agreement in principle contains a short instruction and the following 32 sections:

    1. National treatment and market access for goods
    2. Rules of origin
    3. Customs procedures and trade facilitation
    4. Sanitary and phytosanitary measures (SPS)
    5. Animal welfare
    6. Technical barriers to trade (TBT)
    7. Trade remedies
    8. Cross-border trade in services
    9. Domestic regulation
    10. Financial services
    11. Telecommunications
    12. Temporary entry of business persons
    13. Investment
    14. Digital trade
    15. Government procurement
    16. Intellectual property
    17. Competition
    18. Consumer protection
    19. State-owned enterprises and designated monopolies (SOEs)
    20. Good regulatory practice (GRP) and regulatory cooperation
    21. Labour
    22. Environment
    23. Small and medium-sized enterprises (SMEs)
    24. Trade and gender equality
    25. Indigenous trade
    26. Trade and development
    27. Anti-corruption
    28. Transparency
    29. Initial provisions and general definitions, final provisions
    30. General exceptions and general provisions
    31. Dispute settlement
    32. Additional outcomes.
    The introduction makes clear that the agreement in principle does not create any legally binding obligations.  Work on a legal text which will be binding if it is accepted by the two governments is said to be substantially completed.  In accordance with the Change of Focus announced on 23 Sept 2021, this article will focus on the intellectual property provisions of the agreement in principle.

    Intellectual Property

    Section 16 of the agreement in principle promises provisions on copyright and related rights, design protection, trade marks, geographical indications (GIs), trade secrets, enforcement, patents and test data but nothing that will affect the price of medicines for New Zealand or the National Health Service. 

    Copyright  

    In respect of copyright, the New Zealand government has agreed to extend the term of copyright for authors of literary, dramatic, musical, or artistic works by 20 years within 15 years of entry into force of the agreement.  At present, s.22 (1) of the New Zealand Copyright Act 1994 provides a term of the life of the author plus 50 years.  The term of copyright for computer-generated works and works of unknown authors will be increased from 50 years to 70.  There are likely to be similar extensions to copyright in sound recordings and films under s.23 (1) and communication works under s.24 (1).

    The British and New Zealand governments have agreed to adopt (in the case of New Zealand) or maintain (in the case of the UK) artists' resale rights schemes on a reciprocal basis. For those who are not familiar with artists' resale rights or droit de suite, I covered the introduction of the British scheme in Copyright: Resale Right Directive to be implemented in New Year on 17 Dec 2005 NIPC Law, Copyright: Resale Rights Directive Implementation on 21 Dec 2021 NIPC Law and Copyright: Happy New Year for Artists on 1 Jan 2006 in NIPC Law.  Further information on the right can be found in this guidance from the Intellectual Property Office. New Zealand will introduce a resale rights scheme within 2 years of the entry into force of the agreement.  

    Rights in Performances

    The New Zealand government will extend the duration of rights in relation to performances mentioned in s.193 of the New Zealand Copyright Act 1994 from 50 years from the end of the calendar year in which a performance takes place to 70 years within 15 years of the coming into force of the agreement.

    Both governments have agreed to adopt or maintain a public performance right for performers to cover communication to the public of phonograms,

    Registered Designs

    The free trade agreement will require the New Zealand government to make all reasonable efforts to join the Hague Agreement on Industrial Designs. This agreement facilitates the registration of industrial designs in much the same way as the Patent Cooperation Treaty facilitates applications for patents and the Madrid Protocol facilitates the registration of trade marks.  The United Kingdom has been a member since 13 June 2018.

    GI

    The governments have agreed to review the free trade agreement to ensure that the geographical indications of British agricultural produce and foodstuffs are adequately protected in New Zealand and those of New Zealand agricultural produce and foodstuffs in the UK in the following circumstances.  The first of those is if New Zealand introduces a bespoke scheme for agricultural products or foodstuffs, or substantively amends its domestic registration system.  At present, New Zealand wines and spirits may be registered under the Geographical Indications (Wine and Spirits) Registration Act 2006. The other circumstance is if no changes are made to New Zealand's GI laws within 2 years of the entry into force of the free trade agreement.

    Traditional Knowledge

    The two governments will work together on the WIPO Intergovernmental Committee on traditional knowledge.  The free trade agreement will contain provisions on genetic resources, traditional knowledge and traditional cultural expression,  For example, the agreement will provide for consideration of traditional knowledge associated with genetic resources in patent examinations.   This will take account of the contribution of the Maori community to New Zealand (see Maori IP on the IP Office of New Zealand's website).

    Other Provisions

    There are references to wine labelling, medicines and medical devices that may require amendment of existing British and New Zealand IP laws in the technical barriers to trade section.   Similarly in the sections on telecommunications, digital trade, competition and SME.   I will explore those issues more fully when a draft text of the agreement is published.   One possible lacuna in the treaty will be the exclusion of a procedure for resolving disputes between investors and host governments.

    Further Information

    Anyone wishing to discuss this article may call me on +44 (0)20 7404n 5252 during UK office hours or send me a message at any time through my contact form.

    Thursday, 23 September 2021

    Change of Focus

    Winkel triple projection SW.jpg
    Author Daniel R Strebe 15 Aug 2011 Copyright waived  Source Wikimedia Commons

    Jane Lambert

    During the 2016 referendum campaign, I wrote that the United Kingdom's withdrawal from the European Union would profoundly affect the laws that protect investment in branding, design, technology and creativity (see Were we to go - what would Brexit mean for IP 26 Feb 2016 NIPC Law). I noted that the nature and extent of that change would "depend on the sort of relationship with the rest of the EU that we could negotiate in the two years allowed by art 50 (2) of the Treaty on European Union." After a plurality of voters had voted for withdrawal, I followed those negotiations in this blog in order in order to make an educated guess as to how this country's IP law would develop.

    Although there may still be further negotiations between the UK and the European Commission over the Northern Ireland Protocol for the reasons I discussed in British Proposals for Renegotiating the Northern Ireland Protocol on 29 July 2021, they are unlikely to result in major changes to this country's IP laws.  The legal framework following Brexit is set out in my article How Brexit has changed IP Law of 17 Jan 2021 and presentation of 26 Jan 2021 (slides and notes).

    While bilateral treaties such as the Comprehensive Economic Partnership Agreement with Japan and the proposed Australia-UK Free Trade Agreement contain provisions on intellectual property, it is unlikely that any of them will require amending legislation. What might are the intellectual property provisions of the Trans Pacific Partnership which are incorporated by reference into the Comprehensive and Progressive Agreement for the Trans-Pacific Partnership and Chapter 20 of the Agreement between the United States of America, the United Mexican States, and Canada, the successor to the North American Free Trade Agreement.   I shall therefore focus in future on those developments rather than bad-tempered exchanges arising from the withdrawal and trade and cooperation agreements. 

    HMG has embarked on a great experiment of decoupling from neighbours and allies with shared interests in the world's richest trading bloc and forming new relationships with fast growing economies on the other side of the world.  It is by no means certain that that experiment will succeed and my change of focus should not be seen as an endorsement of the experiment. But it is more relevant to the startups and other SME and their professional advisors that form the bulk of my clientele and require practical advice on IP prosecution, licensing and enforcement in the UK and any new markets that may open up as a result of the government's activities.

    To reflect the change of focus I shall change the name of this publication from "NIPC Brexit" to "NIPC Internatiomal" and replace the monthly "Brexit Briefings" with targeted updates.   Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during normal business hours or send me a message through my contact form.

    Wednesday, 1 September 2021

    Brexit Briefing - August 2021

    British forces on their way to Kabul to assist with the evacuation
    Author Ministry of Defence Licence OGL v 3  Source Wikimedia Commons

     









    Jane Lambert

    August was the month the government might have expected some positives from brexit.  An aircraft carrier strike group steamed through the South China Sea for the first time since 1968 when Denis Healey withdrew British forces from their bases east of Suez.  Business Secretary Kwasi Kwarteng published plans for the UK to become a science and technology superpower in 9 years time (see UK Innovation Strategy 12 Aug 2021 NIPC Inventors Club). Culture Secretary Oliver Dowden promised "a world-leading data regime" by "forging new global partnerships and designing our own common sense data laws" (see Dowden's Data Protection Plans 27 Aug 2021 NIPC Data Protection).

    None of those announcements was noticed because attention has focused on the rapid collapse of a régime in defence of which 454 British service personnel lost their lives.  What will be remembered long after the fleet has returned to its base will be the emergency parliamentary debate on Afghanistan and, in particular, the words of the former Prime Minister:  "Where is global Britain on the streets of Kabul?" MPs and peers had harsh words for the United States and its government in that debate.  The US government gave as good as it got by inferring that the UK authorities were partly to blame for the casualties of the terrorist attack by insisting on keeping the Abbey Gate open.

    There have been tensions and spats between the US and UK in the past as Philip Stephens noted in his article, Kabul retreat leaves the UK on a bridge to nowhere (26 Aug 2021 Financial Times).  These have been forgotten and forgiven as the UK stayed close to the only giant in Liliput.  But the decision of the last two presidents to withdraw from Afghanistan come what may has made that giant appear old and feeble, especially in contrast to the vigorous, youthful giant that is emerging in Asia.  The Chinese government's newspaper, Global Times, was not slow to question the strength of the US  commitment to Taiwan in the light of the evacuation from Kabul.  Aspiring to be Greece to America's Rome may have made sense during the pax Americana.   With the legions in retreat, it is much less easy to justify.

    Although there are no immediate signs of it happening, August may be the month in which the British public begins to rediscover the advantages of collaborating with its neighbours.  When the Prime Minister argued in Parliament that the UK had no choice but to accept the American withdrawal, at least one MP asked why the government did not explore the possibility of working with other NATO allies to ensure an orderly withdrawal of nationals if not the continuation of the mission.  It is already clear that several of the UK's neighbours have overtaken the UK and other English speaking countries in vaccinating their citizens,  Also, none of them is suffering the distribution difficulties caused by the shortage of  HGV drivers with the ending of free movement of labour.   No amount of free trade agreements with countries on the other side of the world will solve those problems but closer cooperation with the EU might.

    Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.

    Extension of NZ Copyright Term

      Jane Lambert New Zealand is a country of just over 5.1 million people on the other side of the world.  It was, however,  the third-largest...