Looking back, 2018 was an interesting IP year.
With the explosion of the internet and the development of consumer habits, online counterfeiting remained a significant issue. Furthermore, mobile technology and ease of access to online content means that the opportunity for online infringement is becoming more and more a problem. This is a particular issue across social media platforms, with claims for design, trademark and/or copyright infringement and breach of data becoming a daily occurrence. As a result, disputes are on the rise. On the other hand, more and more cases are settled or resolved thanks to mediation.
In the regulatory field 2018 has seen an important change for trademarks at Benelux level:
- BOIP – As from June 1, 2018 the Benelux Convention on Intellectual Property (BCIP) has enlarged the competences of the Benelux Office for Intellectual Property ( BOIP). From then on, it is possible to invalidate or revoke Benelux trademark registrations through an administrative procedure. This means that interested parties no longer have to pass by the national courts and start – often time consuming – legal proceedings. Oppositions against Benelux trademark applications may also be based on the so called “sub c ground”, which means that under certain conditions, well-known trademarks may oppose a later similar trademark covering similar or non-similar goods and services.
What will bring 2019 in the Trademark World?
BOIP – The June 2018 amendments are still fresh, 2019 announces further amendments of the BCIP due to the implementation of the Trademark Package. The usual single fee for up to three classes will be replaced by a system of an additional fee for each additional class as from the second one. The introduction of certification marks, the elimination of the “graphical representation” requirement at the moment of filing the trademark, the expansion of the BOIP’s competences by adding “bad faith” as an invalidation ground …are other important changes.
Brexit – For owners of EU trademark and Community design applications or registrations, the ceasing of the UK’s EU membership will have important consequences. What will happen with their rights on the UK territory after March 29, 2019? In the very likely scenario of a no deal Brexit, EU trademarks and Community designs will automatically have a new equivalent right granted that will be treated as if it had been applied for and registered under UK law. For a nine month period (until December 29, 2019) the UK government will recognize these rights based on the corresponding EU registrations. However, within this nine month period, right holders will have to apply in the UK for the same protections in order to maintain protection, retaining the date of the EU application.
Canada – The long-expected entry into force of the Modified Canada Trademarks Act has been announced to be on June 17, 2019. Some of the most important changes include the implementation of the Nice Classification, the adhesion to the Madrid Protocol – meaning that Canada can be designated in an international registration – and the removal of use as a requirement for registration.
What to expect in the Patent World for 2019?
Brexit – Contrary to the EU trademarks administration EUIPO, the European Patent Office shares no direct linked with the EU. Brexit should therefore not affect the procedures leading to the grant of a European patent.
However, the Unitary Patent System, which was supposed to come into force into 2018, is linked to the EU member states. Indeed, the system would only be available in the EU countries having ratified the agreement. The attached Unified Court dealing with all litigations linked to unitary patents would follow the decisions of the CJEU. One of these courts is planned to siege in London.
The Unitary patent jurisdiction was never closer to becoming reality, when a constitutional complaint was filed against it in Germany in March 2017, further postponing any entry into force. Initially expected to be dealt with in September 2018, this complaint is still pending. The chance of having a positive issue before Brexit date is becoming thinner and thinner…
Then what? Could UK still join? Would UK then be ready to follow CJEU decisions? If UK is allowed to join, what about the other EPO members that are not EU member states? A recent judgment of the CJEU (10 Dec 2018) confirms the fact that a country, which is not a EU member state, can refer questions to the CJEU and be bound by the ruling. The judgment goes further in affirming that the CJEU cannot refuse to answer such questions if they have been put in accordance with the laws that govern the referring court. An open door for the Unitary Patent Court? The saga continues…
EPO – New Rules of the Board of Appeal will be adopted in 2019 to ensure an entry into force on 01.01.2020. The main idea is that the Appeal should not be a continuation of the first instance procedure. As a consequence, new facts and amendments will only be admitted at the discretion of the Board. This will have to be taken into account by the professional representatives in the first instance procedures. Keeping ammunitions for an appeal may not anymore be a wise idea.
Belgium – Belgium patent representatives have been working hard this last couple of years to create an Institute aiming to protect and frame the profession of Belgium Patent Attorney. Organisational details should follow shortly.
Kirkpatrick – We are hiring! Interested in a career as patent engineer/ patent attorney? Please contact us!