• intellectual property
• brexit
• united kingdom
• guido noto la diega

By Guido Noto La Diega*

This is a repost of a poster presented by the author at The Society of Legal Scholars Conference 2016, Oxford, 6-9 September 2016. Initial publication available here: https://www.linkedin.com/pulse/iprexit-intellectual-property-after-eu-referendum-guido?trk=prof-post

Is it true that we do not know anything about what will happen to intellectual property after the EU referendum, as the UK Government seems to think? I quite disagree. I believe we must tell consumers and businesses that there is something that we can already foresee.

ABSTRACT

The [British] Government is deciding how and when to trigger Article 50 of the Treaty on the Functioning of the European Union. In the meantime, some “remainers” are pointing out the allegedly tragic consequences of Brexit, whereas a more cautious approach would be wise. There is much uncertainty on the future of intellectual property (IP) in the UK after the referendum and one could foresee that there will be more cons than pros. However, some opportunities may as well arise. This poster aims to assess the impact of Brexit on IP by distinguishing between areas that do not need significant intervention, areas where no real intervention will be allowed and areas where there is need for an update. In the near future, the Government and the Parliament will be likely focused on the negotiations with the European Union and there is the risk that IP issues will be overlooked. Therefore, it will be up to the judiciary to modernise intellectual property and ensure that the UK does not depart radically from the IP systems of the Member States. Thus, by ensuring a substantial, albeit not full, harmonisation of the relevant rules, fragmented IP regimes will not constitute trade barriers and the UK will retain its appeal as a thriving marketplace for investors. In order to do so, some “IP regimes shopping” will be useful, although this will mean a partial departure from the EU rules. A takeaway is that since English judges will not be entitled to preliminary references to the Court of Justice, they will become eventually European judges.

TAKEAWAYS

1) Brexit will lead to a prominent role of the judiciary in ensuring that the UK will retain its position at the forefront of the protection of innovation

2) Some IP areas need to be updated (especially geo-blocking), but some others do not (trade marks)

3) The UK should leverage Brexit to do some “IP regimes shopping”

4) If the UK remains in the EEA, i) the UK judges will become more…European, because they will have to apply EU law without the power to refer to the CJEU for a preliminary ruling, ii) Trade-related IP policies + Annex XVII will remain European

* Guido Noto La Diega, PhD, is a Lecturer in Law at the Northumbria University and President of 'Ital-IoT' Center of Multidisciplinary Research on the Internet of Things.

The present republication is made courtesy of the author.

Please cite as : G. NOTO LA DIEGA, IPRexit. Intellectual property after the EU referendum, Poster presented at the Society of Legal Scholars Conference 2016, Oxford, 6-9 September 2016.

• Editorial

A person who never made a mistake never tried anything new

-Albert Einstein

Nowadays, IP law, as an emerging legal field, is considered to be highly significant in a world economy built upon innovation and knowledge. Greek Intellectual Property law, influenced by the advancements at European and international level, is being developing, shaping and transforming very quickly. Within this context, the need for up-to-date information and reporting, opinions and comments on Greek intellectual Property law from specialized competent jurists is essential.

The present website has been created in order to address this need. In IPrights.gr important news and updates concerning Greek IP Law will be highlighted; also abstracts and comments on selected recent Greek IP case law will be published. Moreover, a blog which presents opinions and articles in the field of IP Law, as well as innovation law and new technologies, is hosted. An effort is also being made in order to make available an informed collection of Greek legislation on IP Law translated in English.

IPrights.gr targets jurists who are interested in receiving up-to-date information, reading commentaries and opinions on IP field issues or even contributing with articles, comments or opinions for IP law issues. In addition, this website intends to acquaint rightholders and users of IP rights with relevant information by providing them easy access.

Having Greece as a starting point, we aim to create a modern and dynamic digital hub for information and insight in the field of Intellectual Property Law. It is our pleasure to welcome you at IPrights.gr! You can contact IPrights.gr team by sending an email at: This email address is being protected from spambots. You need JavaScript enabled to view it. or through our Facebook page at: https://www.facebook.com/IPrightsGR.

Athens, March 2015

                Dr Theodoros Chiou

Attorney at law- IP Law expert

Founder and editor of IPrights.gr

• trademarks
• acronym

by Marianna Katrakazi

Acronym is an abbreviation formed by the initial letters or components of a phrase or a word. Can such an abbreviation be registered as a trademark? Without further consideration, the answer would be negative, since an acronym has no specific meaning and consequently does not have the inherent capacity to designate goods or services. Nevertheless, many acronyms are used as global international market brands. For example, in the fashion market there are many worldwide known brands such as DKNY (Donna Karan New York), YSL (Yves Saint Laurent), and LV (Louis Vuitton) among others, whereas in the automobile industry there are some well-known acronym-trademarks like BMW (BayerischeMotorenWerke) and VW (Volkswagen).

In fact, many legal systems provide the registration of acronyms as trademarks. In Greece, the Article 121 of Law no. 4072/2012 states, inter alia, that “[…] words, names, legal names, designs, illustrations, aliases, letters […] may constitute a trademark”. That is to say that the acronym which is composed by a series of letters falls within the scope of the said Article. Similar protection exists under the French Law [1] and the American Law [2]. This protection is helpful for many companies, which often prefer to develop a protectable brand in the company name’s acronym composed by generic terms.

The conditions for registering an acronym as trademark are as follows:

At first, the acronym should be able to designate the goods/services covered by the trademark. Secondly, the distinctive character of the acronym must remain independent from the words which compose it. Even if the underlying words can be or have already been registered as a trademark, this protection is not automatically extended to the acronym. A separate application for the registration of the acronym is required. Besides, the Court of Justice of the E.U. held that a word mark is devoid of distinctive character when it consists of the juxtaposition of a descriptive word combination and the relevant public perceives that sequence as being an abbreviation of that word combination [3].

On the contrary, it has been accepted by American courts that an acronym can be filed as trademark even though the underlying words are devoid of any distinctive character [4]. Consequently, whether an acronym can be registered as a trademark must be assessed independently of the words which compose it. The only way for a company to extend trademark rights to the acronym of its registered mark, even if the company did not use it, is to resort to the “public use doctrine”[5]. Namely, trademark rights on acronyms or abbreviated versions of a trademark might rise thanks to the extensive use of those abbreviations by the public. For example the trademark “Coke” for “Coca Cola” was born this way.

Upon registration, other issues regarding trademark protection such as counterfeits or unfair competition practices may arise. It is very difficult to interpret the risk of confusion on acronyms, so the in concreto assessment is necessary. Can such risk be excluded by adding one more letter or any other element? The similarity of goods/services is very important in order to examine the risk of confusion between two acronyms: French courts have stated that a risk of confusion exists between the company brand “IPME” and the sign “PME” which is frequently used for small and medium enterprises (petites et moyennesentreprises). On the contrary, such risk does not exist between the trademarks “FSF” and “FASF”, because the aim of those undertakings is different and there is no competitive relationship between them [6].

The use of acronyms as trademarks is of strategic importance for one company, due to their strong consumer appeal. However, the choice of an acronym as trademark is not easy and many factors must be taken into consideration. On the one hand, the combination of letters must be the best in terms of marketing, and on the other hand it must have a strong distinctive character in order to ensure efficient protection of the trademark.

[1] French IntellectualProperty Code, article L711-1 : «tous les signes susceptibles de représentation graphique, tels que les mots, les chiffres, les assemblages de lettres, peuvent constituer une marque».

[2] http://www.inta.org/INTABulletin/Pages/ProtectingAcronymsUnderUSTrademarkLaw.aspx

[3] CJEU, case C-90/11.

[4] Welding Services Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007).

[5] Public use doctrine, 4th Circuit in the George & Co. v. Imagination Entertainment Ltd. et al., 2009.

[6] http://www.usinenouvelle.com/article/peut-on-proteger-un-sigle-ou-une-abreviation.N39612

Photo credits: http://www.sporcle.com/

• biotechnology
• ECJ
• human embryo
• patent

This case of the ECJ (C-364/13, issued on 18 December 2014) deals with the interpretation of the notion of “human embryos” of Article 6(2) (c), Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions [1].

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