JIPLP

Announcing new JIPLP Special Issue on Fashion and IP!

Back in 2018, the Journal of Intellectual Property Law & Practice (JIPLP) was among the very first academic journals to dedicate a special issue entirely to the interplay between fashion and intellectual property (IP) law.

The relevant call for articles attracted dozens of submissions and the issue was a great success.

Since then, a lot has happened at the crossroads of IP and fashion: courses have multiplied and so have conferences, fashion law research has become more common and imaginative, and several professionals nowadays refer to themselves as fashion lawyers.

Now, JIPLP wants to investigate what’s new in the world of fashion and IP, by launching a new call for articles and special issue on fashion law, which will be released in late 2024 / early 2025!

If you are thinking of and/or researching a new issue, topic, line of case law, policy and legislative developments relevant to the fashion sector and wish to write on it, we want to hear from you!

Interested authors are invited to submit articles in the range of 4,000-7,000 words on a topic of their choice within this theme for consideration for publication in JIPLP.

Relevant articles must be submitted through the online portal, be in accordance with JIPLP house style, be previously unpublished, and carry the indication that they are for consideration for the special fashion law issue. Further to a desk review, all potentially suitable submissions will undergo peer review.

The deadline for submissions is Monday, 30 September 2024. No late submissions will be considered for this special issue.

For authors interested in discussing informally the topic of a possible contribution, please email the Editor of this special issue, Prof Dr Eleonora Rosati, and/or JIPLP Managing Editor, Ms Sarah Harris.

The Editor is also considering the possible organization of an online conference/meeting with the authors of the special issue after the special issue has been published.

JIPLP special issue to celebrate the first anniversary of the UPC

The Journal of Intellectual Property Law & Practice (JIPLP) is delighted to announce a special issue to celebrate the first anniversary of the Unified Patent Court (UPC). The special issue, which will be published later this year, will be jointly edited by (in alphabetical order) Stefano Barazza (JIPLP editor), Penny Gilbert (Powell Gilbert), Tilman Müller-Stoy (Bardehle Pagenberg), and Christopher Stothers (Freshfields Bruckhaus Deringer).

Interested authors are invited to submit articles that focus on the lessons learnt during the first year of operation of the UPC. We are particularly interested in articles analysing substantive or procedural matters in light of the emerging case law of the UPC (e.g. transparency and public access to documents, provisional measures, service of documents, claim construction, bifurcation, language of proceedings, expert evidence, internal coherence/consistency, etc.). We also encourage contributions that, on the basis of the UPC experience so far, focus on broader aspects, such as litigation strategy, the role of the UPC in the global patent system, the relationship between the UPC and other courts/jurisdictions, preliminary evaluations of its effectiveness and overall functioning, or suggestions for improvements to the UPC system. While empirical and statistical studies are welcome, please note that these must be accompanied by a substantive legal analysis.

Articles should have a length comprised between 3,000 and 8,000 words (footnotes included) and comply with JIPLP author guidelines. Please note that JIPLP uses OSCOLA as its citation style.

The deadline for submissions, which can be only made through the JIPLP submission site, falls on the first UPC anniversary, 1 June 2024. No late submissions can be considered for this special issue.

JIPLP is a peer-reviewed scholarly journal, so all the articles received will undergo a review process. In this sense, submission of an article will not automatically entail its acceptance for publication.

For any questions and/or to inquire about the suitability of a certain topic/angle, please contact JIPLP’s Managing Editor, Sarah Harris, by email.

We look forward to receiving your contributions!

Announcing the JIPLP Special Issue on IP and the Green Economy: Call for Articles

The Journal of Intellectual Property Law & Practice (JIPLP) is delighted to announce that, in the first half of 2023, it will publish a special issue entirely devoted to the relationship between intellectual property (IP) and the Green Economy, in particular the Circular Economy.

This special issue will be jointly edited by (in alphabetical order) Stefano Barazza, Irene Calboli, Sarah Harris, Annette Kur, and Eleonora Rosati.

We invite interested authors to submit articles addressing Green Economy issues from an IP perspective. Potential topics include – but are not limited to! – the following:

Sustainability and IP;
Right to repair;
Greenwashing and IP;
Green trade marks;
Craft and industrial GIs;
Exhaustion / first sale doctrine as applied to the Green / Circular Economy (e.g., upcycling);
Green patents.

Articles should have a length comprised between 2,000 and 5,000 words (footnotes included) and comply with JIPLP author guidelines.

The deadline for submissions, which can be only made through the JIPLP submission site, is 23 January 2023. No late submissions can be considered for this special issue.

JIPLP is a peer-reviewed scholarly journal so all articles that are received will undergo a review process. In this sense, submission of an article will not automatically entail its acceptance for publication.

For any questions and/or to inquire about the suitability of a certain topic/angle, please contact JIPLP Managing Editor, Sarah Harris, by email.

We look forward to receiving your contributions!

The Authors' Take - Hosting public domain into a minefield: the resistance to art. 14 of the DSM Directive and to the related rules that transpose it into national law

Hosting public domain into a minefield: the resistance to art. 14 of the DSM Directive and to the related rules that transpose it into national law

by Cristiana Sappa

Art. 14 of the DSM Directive plays a role for both economic and non-economic exploitations of works of visual art’s reproductions. The rule helps provide access to information on cultural heritage and therefore facilitates the educational mission of bodies managing cultural heritage. Besides this, this provision also introduces some additional freedom for exploiting some visual art-related material and elaborating derivative works. These initiatives can be taken by both market operators and public sector bodies managing cultural heritage. Basically, art. 14 confirms the policy initiatives according to which what is in the public domain shall remain into the public domain.

However, art. 14 is only a prima facie manifesto for public domain, and it merely refers to works of visual art. Its aim is under threat from different perspectives, i.e. copyright and neighbouring rights, let alone unfair practices, contractual provisions and national rules on cultural heritage alone.

First, this threat depends on the low requirements needed to enjoy copyright protection. The threshold of originality is so low that many reproductions of works of visual art can easily access copyright protection, including 3D reproductions that are currently more and more used, also for elaborating a growing number of derivative works, such as augmented or virtual reality experiences.

Secondly, several neighbouring rights can interfere with art. 14 and limit its impact on public domain. The reference goes not only to the (obvious) protection on non-creative photographs, but also to critical editions, editions principes, that some countries introduced. It also points out to the sui generis protection of databases, even though the latter is somehow limited by the Directive on Open Data.

Overall, to accomplish art. 14’s political goal as initially thought, courts shall interpret it in a consistent fashion with modern approaches favouring wide circulation and re-use of cultural heritage’s information.

[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 full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Uncovering Trade Secrets in China: An Empirical Study of Civil Litigation 2010–2020

Uncovering Trade Secrets in China: An Empirical Study of Civil Litigation 2010–2020

by Jyh-An Lee, Jingwen Liu, and Haifeng Huang

Trading partners of and foreign investors in China have claimed that trade-secret protection in the country is far from adequate. This intuition is rooted in China’s lack of a stand-alone trade-secret act, deficiencies in China’s civil enforcement mechanisms, the unsatisfactory win rate for plaintiffs and damages awarded, and the excessive burden-of-proof requirements imposed on trade-secret owners. Although these issues have been controversial for more than two decades, relevant debates have often lacked even the barest empirical support.

Against this backdrop, and as a byproduct of the US-China trade disputes in 2018 and 2019, China amended the Anti-Unfair Competition Law (AUCL), being the primary legislation that reflects trade secrets, in 2019 to further strengthen its trade-secret protection. The 2019 Amendment of the AUCL had, among others, substantially reformed the damages and evidence rules so as to lift the damages cap and partially reverse the burden of proof in cases concerning trade secret misappropriation. While these reforms have come under the spotlight, their actual impact has yet to be elucidated.

In this article, we investigate all published civil-litigation cases pertaining to trade-secret misappropriation in China from 2010 through 2020. Our empirical findings, which cover various aspects of trade-secret law enforcement in the country, paint a realistic picture of (1) the number and the spatio-temporal distribution of trade secret litigation, (2) the win rates of trade-secret holders and their available remedies, (3) the percentage of cases involving departing employees, and (4) foreign parties’ participation in the private enforcement of trade secrets. By presenting the empirical data with contextual analyses, this article provides a rigorous reflection of the features and patterns of private trade-secret enforcement in China during the studied period.

The national transpositions of the DSM Directive: JIPLP Special DSM Issue and live webinar

In late 2021, we launched a call for articles for a special issue entirely devoted to the national transpositions of the DSM Directive 2019/790.

We are now delighted to inform our readers that the ‘DSM Special Issue’ is just about to be released and that, on 8 June 2022, we will be hosting a webinar during which the Authors of accepted articles will present and discuss the various national approaches to the implementation of some of the Directive’s most important provisions.

Join us for an afternoon of DSM-focused discussions!

Speakers

Bernardo Calabrese, author of Scientific TDM exception and communication to the public: did Italians do it better … or at least not worse?
Ana Lazarova, author of Bulgaria falls into all the traps set by Article 5 of the CDSM Directive
Zyad Loutfi, author of Press publishers’ right in France: a tale of Odyssean gods
Caterina Sganga and Magali Contardi, authors of The new Italian press publishers’ right: creative, fairness-oriented… and invalid?
Michalina Kowala, author of The Polish transposition of the press publishers’ right: waiting for the miracle?
Samuli Melart, author of The Finnish transposition of Article 17 of Directive 2019/790: progress or regress?
Simona Lavagnini, author of The Italian implementation of Article 17 of Directive 2019/790: complaints, appeals and the new powers of AGCOM
Miquel Peguera, author of Spanish transposition of Arts. 15 and 17 of the DSM Directive: overview of selected issues
Ludovico Bossi and Jacopo Ciani Sciolla, authors of The transposition of the transparency obligation pursuant to Article 19 Directive (EU) 790/2019: an Italian perspective
Jelizaveta Juřičková, author of Something old, something new: Czech transposition of disputes under the DSM Directive

Chair

Eleonora Rosati, Editor of the DSM Special Issue

For further information and to register, just click here.

Announcing the JIPLP Special Issue on the national transpositions of the DSM Directive: Call for Articles!

The Journal of Intellectual Property Law & Practice (JIPLP) is delighted to announce a Call for Articles for its forthcoming special issue on the national transpositions of the DSM Directive 2019/790, which will be published in 2022.

Interested authors are invited to submit articles in the range of 3,500-6,000 words on a topic of their choice within this theme for consideration for publication in JIPLP. The issue will focus on the national approaches to the interpretation and transpositions of the Directive's provisions. Both actual transposition measures and draft provisions can be the topic of articles. No articles focusing exclusively on the text of the Directive may be considered for this issue.

Relevant articles must be submitted through the online portal, be in accordance with JIPLP house style, and carry the indication that they are for consideration for the special issue on the DSM Directive's national transpositions.

The deadline for submissions is Friday, 18 March 2022. No late submissions will be considered for this special issue.

For authors interested in discussing informally the topic of a possible contribution, please email the Editor of this special issue, Eleonora Rosati, and/or Managing Editor Sarah Harris.

The special issue will be available in complimentary open access for a limited period of time after publication. The Editor is also considering the possible organization of an online conference/meeting with the authors of the special issue after the special issue has been published.

The Authors' Take - Are copyright-permitted uses “exceptions”, “limitations” or “user rights”? The special case of Article 17 CDSM Directive

Are copyright-permitted uses “exceptions”, “limitations” or “user rights”? The special case of Article 17 CDSM Directive

by Tito Rendas

In law, terminology matters a great deal. In the specific case of copyright, it matters because the words we use to refer to permitted uses of protected works – uses like private copying, quotation or parody – may have important practical consequences. With this forthcoming article, I hope to clarify the legal nature of permitted uses in copyright law. For that purpose, I shall tackle two sources of terminological disagreement.

The first relates to the nature of the rules that lay down permitted uses, specifically whether they should be considered “exceptions” or “limitations”. According to conventional wisdom, this terminological choice may affect the way we interpret these provisions: it is said that “exceptions” must be interpreted in a strict manner, whereas “limitations” tolerate broad readings. After concluding that the rules setting forth permitted uses are better described as “exceptions”, I make clear that this qualification should not be taken as carrying a preference for their narrow interpretation or as admitting their hierarchically inferior status in relation to exclusive rights. Despite being exceptions, nothing prevents these rules from being construed extensively.

I then move on to examining the nature of the entitlements conferred by copyright exceptions. I submit that, in general, these entitlements are not rights properly-so-called, since they are not paired with a correlative duty. Instead, we should refer to them as “privileges” or “freedoms”.

In some cases, however, the prerogatives enjoyed by users may be appropriately qualified as “rights”. I argue that the safeguards contained in Article 17 CDSM Directive create one such case. Whereas Article 17(7) puts online content-sharing service providers under a duty not to prevent uses that are covered by exceptions, Article 17(9) gives the beneficiaries of exceptions access to truly offensive means of reaction, instead of mere means of defense. Read together, these safeguards confer actual rights upon users.

The Authors' Take - Fighting the tech giants – news edition: Competition law’s (un)suitability to safeguard the press publishers’ right and the quest for a regulatory approach

Fighting the tech giants – news edition: Competition law’s (un)suitability to safeguard the press publishers’ right and the quest for a regulatory approach

by Tone Knapstad

As part of the ongoing debate on value-sharing for creators and users of online content, press publishers were granted a neighbouring right under EU copyright. This entailed an opportunity to obtain remuneration through licences for the use of online journalistic content by online aggregation services.

However, the right’s lack of efficiency became visible when press publishers in France, the first country to implement the right, attempted to enforce remuneration for Google’s use of snippets. Google demanded zero-remuneration licences or would abstain from using snippets from news webpages, which has proven to lead to decline in webpage traffic. Accordingly, the press publishers were still not seeing the promised remuneration. Since the strong market position of Google appeared to enable the ultimatum, the publishers claimed the behaviour infringed competition law, constituting an abuse of dominance.

This article argues that EU competition law cannot be relied on to ensure remuneration under the press publishers’ right. This argument is, firstly, based on an analysis concluding that practices similar to that of Google – forcing zero remuneration licences - do not constitute an abuse of dominance under Article 102 of the Treaty of the Functioning of the European Union. Secondly, the argument is founded on the conclusion that competition law, de lege ferenda, should not be applied for such purposes, as the goal of competition law does not warrant securing remuneration. Moreover, it is suggested that the fairness standard, which some argue is becoming a benchmark in EU competition law, is not a steering principle in itself, but rather that fairness is the result of correct competition law enforcement.

Lastly, the article maps the alternative regulatory approaches initiated in the EU (Digital Markets Act), Australia (Mandatory Bargaining Code) and the US. This is done to assess whether these solve the problem of press publisher remuneration and to explore the implications of regulation for competition law.

The Authors' Take - The purpose of copyright

The purpose of copyright

by Simone Schroff

Digital technology has redefined how copyright works are created, distributed and consumed, changing the expectations of creators, commercial intermediaries and users alike. In this environment, clarity about what copyright aims to achieve is crucial to strike a viable bargain between the different groups.

The purpose of copyright has come under intense and sustained scrutiny over the last two decades. Copyright law is traditionally seen as a tool to protect the author, reward creators and investors and ensure societal benefit. While the debates about the right balance are wide-ranging and sometimes highly contentious, any consensus has proven elusive. Stakeholder dissatisfaction and claims of policy failure are increasingly common.

This article argues that the stagnating debates show that the traditional copyright theories do not provide sufficient guidance. Instead, reforms need to be reassessed based on what policy makers actually try to achieve. Using conventional discourse analysis on empirical EU policy evidence, the cross- institutional minimum consensus on what copyright aims to achieve is explored.

The results show how EU copyright policy differs from the theoretical and member state level debates. In particular, all aspects of EU copyright are shaped by the Single European Market: technological change brings economic benefits and copyright is a tool to harness them. As a result, copyright is considered a property right and all interference with it needs be kept to a minimum while competition law provides the safety net. The findings also show that while the narrative of harm to creators mobilises public opinion, reform proposals are more likely to succeed if they treat technological innovation as an economic opportunity rather than a threat.

The Authors' Take - For a clarification of the concept of similarity - Critical review of European case-law regarding infringement of a mark with reputation

For a clarification of the concept of similarity - Critical review of European case-law regarding infringement of a mark with reputation

by Louis Louembé, Pierre Massot, and Mythili Thaya

What is similarity between signs? If no one asks us, we know what it is. If we wish to explain, to him who asks when elements of resemblances are sufficient for a sign to be considered similar to a trade mark with reputation, we find it far more difficult! This is the paradox of trade mark lawyers put in the words of Saint Augustine (surely for a more philosophical question). Although more practical, the question of the similarity of signs is of the utmost importance to defend efficiently trade marks with reputation against free-riding.

Indeed, when a trade mark is well-known, it is sufficient for the sign in dispute to repeat a characteristic element of the trade mark with reputation, however minor it may seem, to trigger a mental association with it, as demonstrated in the famous "Master" case (judgment of 11 December 2014, Coca-Cola, T-480/12). It is therefore important to have a method of assessing similarity between signs sufficiently thorough to take into account apparently minor elements but which can be sufficient to create a likelihood of association because of all relevant factors (such as of the reputation of the trade mark, the identity of the products and services offered, etc.).

Our article aims at demonstrating that European case-law is not satisfying in this regard. Indeed, the CJUE has initially modelled the method of assessing similarity in the case of infringement of a trade mark with reputation on the method designed to search for a likelihood of confusion. As a consequence, it excludes any consideration of reputation at the stage of assessing similarity and encourages consideration of the overall impression produced by the signs. Although the CJEU has attempted to make certain adjustments, the method of assessing similarity in relation to trade marks with reputation remains unsatisfactory and a source of uncertainty in the case law. It is also inconsistent with the case law on protected designations of origin, even though the logic governing these two systems is similar. We conclude that the method of assessing similarity in the case of infringement of a trade mark with reputation should be reviewed and defined with regard to its own purpose, i.e. identifying elements of resemblances sufficient to create a mental link between signs, and not a likelihood of confusion.

The Authors' Take - Comment on Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (2d Cir. March 26, 2021)

Comment on Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (2d Cir. March 26, 2021)

U.S. Second Circuit Court of Appeals tames “transformative” fair use; rejects “celebrity-plagiarist privilege”; clarifies protectable expression in photographs

by Jane C. Ginsburg

In Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (March 26, 2021), the Second Circuit reversed the SDNY’s grant of summary judgment that Andy Warhol’s silk screen adaptation of a photographic portrait of entertainer Prince was a fair use. The Second Circuit’s decision retreats both from its prior caselaw’s generous characterization of artistic reuse as “transformative,” and from the outcome-determinacy of a finding of “transformativeness.” The court also provided an important explanation of copyrightable authorship in photographs.

Lynn Goldsmith's photograph (L);
Andy Warhol's Prince (R)

Like other recent decisions, this judgment may signal a taming of “transformative use.” Prior caselaw, particularly in the district courts, seemed to accept almost any alleged new meaning or purpose, or added expression, as “transformative,” and then, having racked the first fair use factor into the defendant’s column, lined up the other three to conform to the first. Appellate courts now may be curbing this enthusiasm, both by adopting a more critical assessment of alleged transformations, and by reviving the independent importance of the fourth factor, market harm. In emphasizing the impact of the defendant’s use on the plaintiff’s ability to license derivative works, the Second Circuit may have begun to redress Cariou’s derogatory treatment of the art world proletariat. The court recognized that depriving photographers of licensing markets, including markets for using their works as “raw material” for other artists to stylize, disserves the overall goal of copyright to promote creativity by enabling artists to make a living.

Furthermore, the court’s exposition of protectable expression in photographs should reassure photographers, particularly photojournalists, whose art consists largely of knowing how and when to seize the moment. Against the contention that such images merely convey a reality the photographer did not create, the court’s emphasis on “the image produced in the interval between the shutter opening and closing,” (at *37) recognizes that “the readiness is all.” (Shakespeare, Hamlet V.2).

The Authors' Take - Preclusion Due To Tolerance: Conditions For Applying The Acquiescence Rule In Trade Mark Law

Preclusion Due To Tolerance: Conditions For Applying The Acquiescence Rule In Trade Mark Law

by Michal Bohaczewski

The article analyses a rule of the EU trade mark law referred to by the legislature as ‘acquiescence’. The provisions on acquiescence provide for a period of preclusion for filing an invalidation or infringement action against a later registered trade mark which has been used on the market, provided that the proprietor of the earlier right tolerated that use for 5 successive years.

The study first examines the prerequisites for the commencement of the period of preclusion resulting from the jurisprudence of the Court of Justice of the EU. In particular, the author refers to the requirement of knowledge by the proprietor of the earlier trade mark of the use of the later mark which, in some cases, in the absence of evidence of direct knowledge, may be deduced from the circumstances of the case.

The article further analyses the conditions which need to be fulfilled for the period of preclusion to expire. The author raises the issue of the form in which the proprietor of the earlier right should oppose the use of the later trade mark in order to exclude his acquiescence. This matter of major practical importance is currently subject to a question referred to the Court of Justice for a preliminary ruling (C-466/20).

The study also examines the relationship between the preclusion due to acquiescence and the ‘peaceful coexistence’ of the trade marks as a factor to be taken into account in the assessment of the likelihood of confusion between the signs, since prima facie the scopes of application of both rules may seem to overlap. The author concludes however that in reality there is little room for an overlapping between them.

The Authors' Take - Trademarking “COVID” and “Coronavirus” in the United States: An Empirical Review

Trademarking “COVID” and “Coronavirus” in the United States:

An Empirical Review

by Irene Calboli

Since its global debut in early 2020, the COVID-19 pandemic has led to a tsunami of trademark applications including the terms “COVID,” “Coronavirus,” and other medical and pandemic-management related terms. In this Article, I examine the applications that have been filed with the United States Patent and Trademark Office until the end of 2020. In particular, I present a comprehensive set of data regarding the products for which the applications have been filed, the type of filing entities, the legal basis for filing, and the date of filing throughout the relevant period. Based on these data, the COVID-19 pandemic led not only to a large number of filings for medical and pandemic-related products, but also for unrelated and promotional products. Individuals and small businesses were the largest groups of filers, and over two thirds of the applications were based on intent-to-use rather than use in commerce. The number of filings closely mirrored the development of the pandemic during the various months of 2020. In addition, when compared with previous filings for signs including terms related to past sensational events, including pandemics, the numbers of “COVID-19 related” applications were much higher than any previous filings. This confirms the catalyst effect of the COVID-19 pandemic also on the trademark application system, even though a large number of these applications may ultimately not be registered as several signs may be found to be generic or descriptive—in particular for medical and pandemic-related products—or deemed not to function as trademarks—for example if they are used as ornamentations on promotional products. The signs may also be found to be deceptive if they imply a specific cure or solution, when this may not be accurate. Still, the data presented highlight several interesting aspects of the phenomenon of “filing sensationalism,” even though it remains difficult to understand what triggered this large number of filings precisely with respect to the COVID-19 pandemic--a time that we all hope to put behind in the nearest future.

In conversation with ... Prof. Dr. Annette Kur

The editors of the Journal of Intellectual Property Law & Practice (JIPLP) were very honoured when Prof. Dr. Annette Kur accepted their invitation to join the journal’s editorial board a couple of years ago. I too was delighted when Annette agreed to talk to me recently for the second in a new series of conversations with leading figures in the IP community…

The effects of chance or coincidence – perhaps serendipity? – were a recurrent theme of our conversation, a retrospective survey of Annette’s distinguished career. With characteristic modesty, Annette described how she first developed an interest in the Nordic countries, leading the Nordic Department at the Max Planck Institute for Innovation and Competition in Munich. Annette first arrived at the Institute, drawn initially by the favourable conditions in which to write her PhD, not with a background in IP, but from a competition and consumer protection perspective. This desire to protect consumers and the socially weaker has persisted ever since. It was Annette’s (rudimentary to begin with) knowledge of the Swedish language that was instrumental in establishing her at the Institute – the first defining moment of her illustrious career. Annette proceeded to master (passively) not only Swedish, but also Norwegian and Danish, and spent significant amounts of time translating, which was a key task in the country departments at the Institute. The Nordic community became and remains precious to Annette’s heart.

Annette referred to the Institute as a microcosm of the wider IP community, which also holds a special place for her. It is unique. A small community in the early days, the Institute became a hub for IP internationally and is still a family. Annette described the appeal of IP intellectually: copyright and its affinity with the arts, and patents, though very different, still connected with ideas. Annette loves the playfulness and flexibility of the IP system. Its rules may be rigid, but at their core is a genuine dynamism as nothing is cast in stone. As Annette put it, “everything moves”. It struck me that Annette, as a true comparativist, enjoys the intellectual stimulation provided by contrasts; she compared the German system, with its rigidity and hierarchy, with the Nordic academic landscape and its non-hierarchical style of communication. Within the Max Planck Institute, as people come together from so many different countries, it is impossible to impose a strict hierarchy or a strict dogma. According to Annette, this accentuated the openness and playfulness at the Institute, especially in the Nordic Department.

Known as a guiding light in design law, having been instrumental in the creation of the system of Community designs, Annette shared with me how further serendipity influenced the next phase of her career. Having previously focused on unfair competition and trade mark law from the consumer’s point of view, Annette was invited by the then director at the Institute to participate in a new interesting research project. This was subsequently adopted by the Commission as a blueprint and European design law was established. With typical self-deprecation, Annette attributes her then being viewed as a “design person” to several more amazing coincidences, and even confusion between the Hague Conference on Private International Law and Hague – the International Design System!

As Annette said, “Coincidences play a role in influencing one’s life and one’s academic output”.

In a final strange coincidence, I was lucky enough to take delivery of the recent festschrift published in honour of Annette by Cambridge University Press. This arrived by chance about an hour before we had arranged to speak and provided me with the opportunity to read more about Annette’s history and to note some of the distinguished names whose chapters have been included in the book, a further sign of the high esteem in which Annette is held. Prof. Eleonora Rosati will shortly be reviewing the book, and readers can look forward to reading her review in a forthcoming issue of JIPLP.

The Authors' Take - Governing the fashion industry (through) Intellectual Property assets: systematic assessment of individual trade marks embedding sustainable claims

Governing the fashion industry (through) Intellectual Property assets: systematic assessment of individual trade marks embedding sustainable claims

by Sara Cavagnero

As public interest in sustainable fashion rapidly surges, trade marks are playing a prominent role in promoting eco-friendly products and engendering consumer trust. PRADA registered the trade mark “Re-Nylon” to signal its collection based on the regenerated-nylon yarn ECONYL, while the fast-fashion giant H&M relied on the trade mark “CONSCIOUS” to identify products made with recycled or organic materials.

These IP assets allow companies to transfer information on the so-called credence attributes, which empower consumers to select products reflecting not only their instrumental preferences but also their values. However, a missing piece of the puzzle relates to the correlation with sustainability commitments, given that the information provided is not neutral but framed by the brand and, thus, potentially contested.

The risks are clearly outlined in the report released in January 2021 by the European Commission, which revealed that 42% of green claims made by garments, cosmetics, and household companies on their websites are “exaggerated, false or deceptive”, and in 59% of cases not supported by any evidence.

The systematic assessment of 12.335 trade marks including 22 sustainability-related vocabularies filed in the United States, the European Union, and at the international level from 2000 to 2020, revealed that sustainability-related trade marks represent a modest portion of the overall number of registrations in classes 23, 24, and 25, but the growth figures are rising, in line with the general filing trends.

The untouched primacy of the term “green” suggests that corporate strategies are mainly based on green marketing principles, signalling, since the late 1980s, the positive correlation between eco-friendly shade or wording in visual branding and consumers’ judgment about companies’ actions.

Furthermore, by confirming that sustainable trade marks are largely decoupled from sustainable corporate practices, the research results validate the idea of expanding the existing taxonomy of greenwashing sins, by identifying a new form of disingenuous communications, conveyed via individual trade marks.

Still, this proposal is not flawless. Indeed, the IP regulatory framework is ill-adapted to monitor sustainability claims conveyed through individual trade marks and the misleading advertising regulation does not appear to be unfolding its full potential.

Potentially, instead, a more regulated approach, inspired by the food sector, may help to curb disingenuous corporate practices conveyed via trade marks.

The Authors' Take - A critical review of intellectual property rights in the Kenyan tea sector

A critical review of intellectual property rights in the Kenyan tea sector

by Isaac Rutenberg

Agriculture remains the most important economic sector in much of Sub-Saharan Africa, providing over 50% of overall employment, so the acquisition and use of intellectual property rights (IPRs) in the sector can have wide-reaching effects. In Kenya, tea (primarily in the form of bulk, dried leaves) is the largest export product by value, and is a major source of income for hundreds of thousands of smallholder farmers. In addition to the economic benefit, tea (unlike coffee) is widely consumed in Kenya, and has significant cultural importance.

With relatively active patent, trade mark, and copyright offices, a functional plant variety protection (PVP) regime, and membership in the Africa Regional Intellectual Property Organization (ARIPO), Kenya is home to numerous tea-related IPRs held by both foreign and local entities in government and the private sector. The Kenyan tea sector is therefore targeted in this paper as a case study for exploring various aspects of the sectoral use of IPRs.

Throughout the 20th century, foreign (i.e., non-Kenyan) entities were responsible for a majority of the activity in tea-related IPRs protecting innovation (i.e., patents and PVPs). This appears to be shifting in recent years toward more ownership and participation by local entities. Furthermore, the focus of innovation is more diverse for local applicants. Whereas foreign entities largely seek to protect tea plants and methods of processing tea plants, IPR applications from local entities cover a wider spectrum of the value chain for tea and tea-related products.

In contrast, trade marks have always been predominantly used by local entities. Tea-related trade marks include some that use the names of geographic locations. Kenya does not have a Geographic Indication (GI) system, but both economic and agricultural factors point to a situation that might be ideal for GIs.

A surprising finding is the almost complete lack of any tea-related IPRs held by non-Kenyan, Africa-based entities. Although seven of the top 20 global tea producing nations are in Africa (including all five of the countries in the East African Community), this study found just a few trade marks held by entities in Egypt, Mauritius, and Uganda. Africa-based entities do not hold any tea-related patents, PVP certificates, or national plant variety registrations in Kenya. Such findings may be important for the ongoing negotiations for the African Continental Free Trade Agreement.

The Authors' Take - Final decision from a UK Community Design Court clarifies how to interpret a registered design

Final decision from a UK Community Design Court clarifies how to interpret a registered design

by Darren Smyth

The decision in Rothy's Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC) (16 December 2020) relates to a design for ballerina shoes, which an informal, women's slip-on shoe, with a relatively thin, flexible sole and a wide, low heel. This decision is the last judgment handed down by a UK court acting as a Community Design Court. David Stone, sitting as a Deputy High Court Judge in the Intellectual Property Enterprise Court, was faced with the task of construing what was protected as the Registered Community Design.

The key feature of the shoe which the Claimant developed was that the upper was made of knitted yarn made from recycled plastic. However, the Defendant denied that the cross-hatching in the images of the designs indicated a knitted meshwork fabric.

In determining what constitutes the claimed design, the judge rejected the submission of the Claimant that he should take into account a shoe made to the design. This would clearly risk introducing features extraneous to those claimed in the registration. As the judge pointed out, whilst superficially attractive, this argument is circular – to determine if the proffered shoe is indeed a shoe made to the design, one first needs to assess what the registration means.

The judge also rejected the submission of the Claimant that he should consider the description of the claimed design in the US design patent application from which priority was claimed. It cannot be correct to import subject matter from a priority application in this manner, in particular when the effect would be to circumvent Article 36(6) of the Community Design Regulation which stipulates that the description of a RCD does not affect the scope of protection.

This leaves only the images of the registered design to define what is claimed in the registration. The judge scrutinised closeups of the images on the EU IPO website, and concluded that the patterning shown on the upper depicts a knitted fabric. This led to the conclusion that the RCD possessed individual character, as neither of the pleaded prior designs had knitted uppers (both were suede).

The differences between the Defendant’s shoe and what the judge construed as being protected by the RCD (such as a tab at the back of the shoe and a decorative button) were held to be minor, so the Defendant’s shoe was held to infringe the RCD.

The Authors' Take - The Commission’s vision for Europe’s Digital Future: Proposals for the Data Governance Act, the Digital Markets Act and the Digital Services Act – A critical primer

The Commission’s vision for Europe’s Digital Future: Proposals for the Data Governance Act, the Digital Markets Act and the Digital Services Act – A critical primer

by Matthias Leistner

In November and December 2020, the EU Commission has presented a triad of proposals concerning data governance, the regulation of gatekeepers in digital markets and the regulation of digital services (namely including an ambitious, yet considerate, reform of provider liability in Europe as well as the introduction of certain duties of diligence in particular for very large platforms). Specifically, this Digital Services Package respectively comprises a proposed Data Governance Act (DGA), Digital Markets Act (DMA) and Digital Services Act (DSA). Altogether, these bills represent the hitherto most ambitious and broad regulatory project in the field of data and digital services regulation worldwide.

While the (rather heterogeneous) DGA as well as the DSA will also have to be critically discussed in detail (and partly are in the paper), immediate attention has to be paid to the fundamentals of the DMA Proposal, namely, the necessary discussion of its legal basis, objective and context. To put it in a nutshell, the Proposal represents a hybrid approach to specific regulation of gatekeeper platforms, which comprises prominent elements of competition law as well as certain elements of unfair practices regulation and some other objectives (such as the efficient enforcement of certain rights relating to protection of personal data). Taken together, most of this makes perfect sense as a European Magna Carta for businesses’ and customers’ competitive freedoms vis-à-vis core platform intermediary and infrastructural services. Practically, in its current form, the proposal would effectively apply to the GAFAM-companies and a handful of further gatekeeper platforms.

However, notwithstanding the substantive competition law elements within this regulatory approach, the Proposal is only based on Art. 114 TFEU as an instrument of internal market harmonization. Against this background, presently, the main fundamental weakness of the Proposal concerns the integration in the context of or at least a more specific co-ordination with European and national competition law. This has practical consequences since sufficiently consistent and specific provisions on coordinating public enforcement of the Commission on the one hand and of the Member States’ authorities (in particular on the additional basis of competition law) on the other are lacking in the Proposal. In fact, this latter more practical aspect is partly linked to the former more fundamental aspect, since contextual integration in the realm of competition law (and consequently the use of Art. 103 TFEU as an additional basis for the Proposal) would allow to make use of the European Competition Network under Regulation 1/2003 for the public enforcement of the DMA Proposal’s provisions in order to efficiently coordinate EU and national enforcement, based on both, the DMA Proposal and EU or national competition law. Apart from that, a European legal framework for private remedies and enforcement in regard to the obligations laid down in the Proposal seems of paramount importance, since otherwise there is a considerable danger of disharmonization and inefficiency in regard to diverse or lacking private remedies according to the different Member States’ respective national contract, tort and unfair competition laws.

Make no mistake: The Magna Carta in many ways was a document of the weakness of King John of England in enforcement of his power against the rebel barons. Issues of public and private enforcement will also be the crucial tie-breakers for making the DMA Proposal a future success in practice – thus they should be addressed comprehensively from the start.

Free content in honour of the INTA 2020 Annual Meeting

In honour of the INTA 2020 Annual Meeting, OUP has made available some specially-selected free content. This features several JIPLP articles, along with chapters from key OUP books, including Copyright and the Court of Justice of the European Union by Eleonora Rosati and Enforcement of Intellectual Property Rights in Africa by Marius Schneider and Vanessa Ferguson. The featured content will be free to read until 7 December 2020, so do take a look! See here for more information!

About this weblog

The principal contents of this weblog are drawn from the Current Intelligence features which are published monthly in JIPLP.

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