Archive | 2012, October | (5) posts

Excitement in the IP world: Will Danish courts make counterfeit goods more illegal?

I recently wrote about a pending court case regarding an imported counterfeit Rolex watch. The importer, a private person, was well aware that the watch was counterfeit and the import was for private use. Customs ceased the watch and the Maritime- and Commercial Court (High Court) took the novel stand that the watch was barred from release as it would have infringed the rights of Rolex, had it been manufactured in Denmark.

In Danish IP legislation an infringement only exists in the commercial sphere. It is permissible for private people to own counterfeits and even personally import these. Whether a private person may import for personal use via shipment is still not quite settled in law. Therefore, the court’s expanded interpretation of the Customs Regulation is indeed noteworthy. Is the court really taking us to a new and exciting level?

Happily for legal practitioners the decision was appealed to the Supreme Court. Danish courts are traditionally (too?) reluctant in asking the European Court of Justice (ECJ) preliminary questions on the interpretation of EU-legislation. In this matter the Supreme Court has recently decided to ask the ECJ. We can therefore expect an answer from the ECJ at the end of 2013.

If the ECJ confirms the Maritime- and Commercial Court’s interpretation this will mean a significant strengthening of brand owners’ rights and a parting from long-established legal interpretation on this field. It may even mean a need to revise Danish national legislation.

I will also take the opportunity to crudely bang my own drum and refer to my blog post about fake goods in transit. Although not identical this was about related questions. In the two ECJ cases referred (Philips and Nokia) the ECJ answered questions on whether or not fake goods in transit could be ceased and destroyed. A part of these cases was the lack of detailed labeling or uncertainty as to the final destination of the goods. In this Danish matter regarding Rolex there is no question about the final destination of the fake watch. Therefore, we must expect the ECJ to rule on the question on whether or not commercially produced fake goods can be ceased and destroyed when (legally?) imported for strict private use.

Thorbjørn Swanstrøm, Attorney at Law

Cooperative Patent Classification – Time to prepare for the launch

Almost a year ago I wrote on the Awapatent IP Blog about the efforts of the EPO and USPTO to harmonize their patent classification systems to form the Cooperative Patent Classification (in short CPC). The work is progressing, and it has now become time for an update.

The CPC is now taking shape, and it has become possible for users to familiarize themselves with the new classification scheme as the results this far have been made available by the EPO and the USPTO in what they have named a “CPC launch package”. The launch package includes the complete CPC scheme, the presently finalised CPC definitions and an ECLA-to-CPC-to-IPC concordance table. The launch package is available here.

The EPO and the USPTO explain that the CPC scheme for classifying patent documents according to the technological field of the invention is based on the latest version of the International Patent Classification (IPC) system. The CPC scheme will have sections A through H similar to the IPC as well as an additional brand new section Y including new technological developments and cross-sectional technologies.

There will be CPC definitions available for every CPC subclass and each definition will contain a description of the technical subject-matter covered in the subclass. The CPC definitions will be continuously maintained. Also, a CPC-to-IPC concordance table has been published to help users find the relevant part of the IPC on which the CPC is based.

The CPC is scheduled to be launched on 1 January 2013, and the Awapatent IP Blog will continue to monitor the development with interest to keep our readers updated.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Copenhagen Design Protection Conference 2012

Recently, the International Trademark Association INTA held the first design conference.

The number of attendees was 215 and more than 30 countries were represented in order to discuss issues such as the interplay between designs, copyrights and trademarks; highlights of European case law and enforcement of designs and many more interesting issues.

The conference was opened by the Danish Minister of Economic Affairs and the Interior, Magrethe Vestager. She spoke about why innovation was important to and absolutely necessary for the development of our world. She also recognized that development was necessary if we shall be able to compete and encouraged all of us to challenge and renew development. 

Many more speakers gave their view on design protection from different perspectives. One speaker illustrated how the legislation even within the EC is differing and how enforcement options are different. The requirements for protection and the scope of protection if possible may vary. Also copyrights are not at all harmonized within the EC. Those differences between national legislation make it difficult to navigate but may also be used strategically by the owners.

Some of the other speakers illustrated the balance between aesthetic designs and functional designs. The line has proved difficult to draw and especially the line for when a design is functional or not may be difficult to draw. Both Courts in the US and in Europe have taken several decisions  on this specific question and still the border is tricky. Such knowledge is important when deciding which strategies to use in order to protect designs.

The technology itself reveals new possibilities and may also challenge the way of thinking IP in general and especially designs. 3D printing allows you to print your own or somebody else’s designs or a design customized to you by yourself anywhere. The technology raises several questions, especially when a design is created by “networking” or “co-designing” which may be a new trend among designers. Who owns the design and how about individual character? And what about novelty? Is a design still new if created in this sort of public way?

Also owners of designs gave their perspective on designs and told us how, why and when they use registered designs strategically and in combination with the other rights. An interesting point of view was a multinational company which had experienced that design rights were faster and cheaper to enforce than both trademark rights and patents and thus used such successful enforcement as a strategic weapon against competitors.

As a unifying principle in the whole conference, the design conflict between Apple and Samsung was illustrated from different perspectives. The conflict proves that design rights and IP in general is important and may be used as an extremely efficient weapon against competitors.  

The impression of the conference is convincing: There is no doubt – design and the right design is becoming more and more important as a trigging buy factor. Thus enormous resources are used in order to create the right designs and to keep competitors from copying the design. Also the conference confirmed my point of view, namely that one should not decide ahead which rights are relevant without considering the other IP rights and, if relevant, combining them to strengthen the owners position.

Henriette Vængesgaard Rasch, European Trademark Attorney

IP Law – How hard can it be?

My trainee colleagues and I are now in the final stage of our first 5-week theory period. So many new impressions, new colleagues and new information have opened up for us, revealing an exciting new world of IP law.

When I first applied for the Trainee program, I had very little knowledge of the many facets of IP law and of how many different competencies I would need. Not only do you need to have technical ingenuity, but also an eye for the small details and the bigger picture, quick thinking and excellent people skills.

Even though we have been here only for a short while, all of these sides have already been put to the test, and to answer my own question: Yes, IP law is hard!

It involves a whole new way of thinking where the questions, unlike in many of my university courses, do not have any clear answers. Where each word have to be given careful consideration and every choice have longtime consequences. But it is also a great mystery that only my skills and I can solve. Together we embark on this great new adventure, in which I already feel a bit like a detective. Whether it is finding the perfect word for a specific sentence (who knew that consists of and comprises could mean so different things?), defining the essential feature of a new invention or discovering the specific detail that will make my office action response irrefutable.

I am positive that IP law and all of us trainees have a great future ahead of us. And dear IP law, you did not have me at hello, but you had me at Michael Jacksons Method and means for creating anti-gravity illusions patent.

Bianca Bothmann, Associate

Chinese focus on IP

Recently representatives of Awapatent participated in the China Intellectual Property Focus 2012 conference in Shanghai. Our participation is a part of our effort to make Awapatent’s name known in China, but we also believe that it is important to contribute to the growing IP awareness in China. Accordingly, Mikael Bergstrand from our Malmö office gave a speech on how to draft a patent application, which will be successful outside China, and we were also among the conference sponsors. Other speakers focused on how to put patents and trademarks to practical use, so that they are not “just documents hanging on the wall for decoration” as one speaker put it, and shared their IP litigation experiences. It may safely be concluded that there is a great interest in expanding the protection of Chinese innovation to other countries and in becoming better at making innovations profitable by licensing and selling IP rigths. 

Sign above the entrance to Beijing's Silk Market

The increased focus on IP in China is reflected in many ways. During this trip, which started in Beijing, the most surprising example was the banner shown on the photo. It was hanging at the entrance to the Silk Market, which is notoriously known as one of the places, where you may come across surprisingly cheap “Rolex” watches or maybe even an iPhone6. Though some vendors had apparently entered via another entrance and not seen the banner, it is clear that the IP situation in China is improving rapidly, not least due to a push from Chinese companies beginning to realize the importance of being able to protect their own innovations.

Future trips to China will most certainly reveal many other thought-provoking displays of IP awareness and we will make sure to share them with you!

Vibeke Warberg Rohde, European Patent Attorney