The Chinese Court of Guangzhou Yuexiu District has recently sentenced four Chinese companies to pay a fine of around 570.000 EUR for unfair competition and for having infringed LEGO’s copyrights. The four defendants liable for counterfeiting LEGO’s building sets and minifigures under the LEPIN sign are ordered to immediately stop producing and marketing said infringing products.

Niels B. Christiansen, the LEGO Group’s Chief Executive Office, is pleased to welcome this Court’s decision, which should considerably reduce the temptation to unlawfully copy LEGO’s products and which might play a great part in improving the fair business environment of China.

Press release: https://www.lego.com/en-us/aboutus/news-room/2018/november/lepin-case/

Nathalie Cailteux

The Luxembourg Intellectual Property Office has recently announced a change of practice concerning the language requirements for PCT national phases in Luxembourg.
English is now also accepted for the proceedings in the national phase, similar to a direct national application.

The new situation can thus be summarized as follows.

• If the international patent application was not published by the International Bureau in the English, French or German language, a full translation of the international patent application into French or German is required.
• However, if the publication of the international patent application is in English, a translation of the claims only into French or German is required (the description need not be translated).

As a reminder, the time limit for entering the national phase is twenty months from the filing/priority date under PCT Article 22 or thirty months from the filing/priority date under PCT Article 39(1).

The European patent accademy held a conference on the above subject in Luxembourg on 8 October  2018. The morning panels adressed issues of applicable law in outer space.

The main international instrument is the outer space treaty of 1967.

According to article II of the Treaty, outer space is not subject to national appropriation by any means.

However, the State that launches a space object retains jurisdiction and control over that object. The State is also liable for damages caused by their space object.

Numerous examples were given about inventions born from space technologies.

To the surprise of the audience, ESA representatives indicated that no invention has ever been reported to have been made in outer space.

It appears that facilities such as the ISS are to be seen as a test lab. Inventions are made on the ground, by analysing the data obtained in outer space.

Also to note is that patent applications in the space field have doubled between 2007 and 2017. The big players are located in the US, France, Germany and Italy.
On big topic at the moment concerns the removal of debris.

Luxembourg Space Law

Pr. Mahulena Hofmann (SES Chair in Space, SatCom and Media Law, University of Luxembourg) talked about Luxembourg’s space law.

In August 2017 Luxembourg was the first European state to adopt a space exploration law.

Philippe Ocvirk

There is no likelihood of confusion with your earlier national non-registered sign when you’re economically linked to the owner of the posterior trademark.

The General Court annuled in its decision of 25 September 2018 the Board of Appeal’s decision, that confirmed the invalidity of the EUTM no. 3324902 , considering that there does not exist a likelihood of confusion between the earlier French company name Gugler France and the opposed EUTM , in the light of Art. 8 (4) EUTMR.

This decision puts an end to a longlasting trademark conflict that started back in 2010 with the cancellation action filed by the French company Gugler France against the registration of the EUTM, invoking its rights on the company name under French law according to Art. 8 (4) EUTMR. The case has already been handled before the General Court in 2013/2014 (case T-674/13) and at that time, the General Court held in January 2016 that the Board of Appeal infringed its obligation to state reasons and the case was referred back to the office.

Only in January 2017, the Board of Appeal decided the case and dismissed the appeal, by confirming the existence of a likelihood of confusion between the earlier national company name and the challenged EUTM .

In its pleadings before the General Court, the trademark owner particularly referred to the complex situation existing between the parties and indicated that there could not have been any likelihood of confusion for the consumers, considering the close business relationship existing between them.

Indeed, the parties of the proceedings before the EUIPO were in intensive business relationship for almost than 10 years before the breakdown of the same for economic reasons in 2009.

In its current decision, the General Court confirmed the importance of the function of origin of a trademark, i.e. the possiblity for the consumers to identify the origin of the goods and services offered under a trademark. A likelihood of confusion exists, if the consumer might believe by error that there exists an economic linc between the owner of the trademark and the goods and services provided under the earlier sign. In case of a cancellation action, the relevant point in time to be taken into consideration for the existence of a likelihood of confusion is the filing date of the challenged trademark. In the present case, the business relationship existing between the parties before the EUIPO did not make the consumers believe by error that the companies using the GUGLER sign in France, i.e. the French company Gugler France and the owner of the challenged EUTM , as they were in fact economically linked, the French company being the distributor of the trademark owner’s goods in France.

As a consequence, the consumer, even if they believe that the companies were economically linked, would not be conducted in error as to the origin of the goods at stake, considering that the goods originate from the EUTM owner and were distributed by the French company Gugler France.

The Court confirmed that the consumer must not be aware of the economic link between the two companies, because the likelihood of confusion is to be asessed objectively.

The economic link between the owner of the prior national sign and the owner of the challenged trademark on the date on which the application for registration of the EUTM was filed, consequently precluded the finding of a likelihood of confusion.

The General Court has thus -finally- closed the windows of this complex and longlasting trademark conflict and cleared up the situation, annuling the appeal decision and consequently allowing the challenged EUTM “GUGLER” to remain registered.

Marie-Christine Simon

L’IPIL reconduit son cycle “Les Afterworks de la Propriété Intellectuelle” et propose trois dates:

• 11 Octobre à 18h: Valoriser la créativité dans l’artisanat !
• 16 Octobre à 18h: Entrepreneurs : Maîtrisez la propriété intellectuelle à l’ère du digital !
• 24 Octobre à 18h: La propriété intellectuelle en pratique dans les projets hightech (avec la participation de Pierre Kihn de l’Office Freylinger).

Informations et inscriptions, cliquez ici.

After seven years, the infamous intellectual property battle between Apple and Samsung has come to an end. After the many costly and highly symbolic procedures, the parties have decided to settle the matter amicably.
As was widely discussed by international press, the disputes revolved around a multitude of patents, but also designs.

But what is the difference between patents and designs?
Indeed, those two can be confusing, and can sometimes even appear to overlap.
A patent protects the technical functionality of an invention, so long as it is new, involves an inventive step and is susceptible of industrial application. A granted patent provides the exclusive right to its owner, to prevent others from exploiting the invention.
A patent does not protect the appearance of the invention, but only the technical functionality, such as, for example, the way Apple’s interface bounces when scrolled (US Patent US7844915B2 or US7469381B2).
A design right, in contrast, offers an exclusive right to its owner on the appearance itself of the product, such as the shape of the Apple iPhones (US Design USD593087S1). A design must be novel and original to be valid.
Since it is often the design that creates the recognition value of a product, the power of a valid design right should not be underestimated, as was demonstrated by the Apple v. Samsung case.

In order to protect the entirety of a technical invention meant for commercialization, it is therefore recommend to think about a possible patentability of the product, as well as its eligibility for design protection.

From 1st June 2018 on, it will be possible to request the cancellation of a Benelux trademark before the Benelux Office for Intellectual Property (BOIP) within a smooth and cost effective way.

The new Benelux trademark law foresees the cancellation of Benelux trademarks for absolute and relative grounds. This means that administrative proceedings are open to interested parties, and that court actions are not required anymore.

• prior trademark rights (trademark application or registration, such as well-known trademark rights) may be invoked against a Benelux trademark registration.
• the cancellation of a Benelux trademark registration may also by requested on absolute grounds or  for non-use of the trademark in the Benelux territory.

It will however not be possible to invoke non-registered trademark rights, such as domain names or company names before the BOIP.

The cancellation proceeding will be similar to the opposition proceeding and thus foresees the possibility of the parties to amicably settle the conflict (with reimbursement of taxes in several cases) and the joint requests for suspension of the proceedings.

The loosing part will have to reimburse the fix amount of 1400,- EUR to the other party.

The official fees for filing a cancellation action are of 1400,- EUR.

Please do not hesitate to contact us, should you require additional information or a specific quote on this new procedure.

FEDIL organizes a conference on the new BEPS-compliant IP tax regime in Luxembourg, which will take place on Monday, 7 May 2018 at 14h30 in the Chamber of Commerce Conference Center (room C2) 7, rue Alcide de Gasperi in Luxembourg/Kirchberg.

The objective is to provide an update on the key tax and legal aspects of the new IP regime covering:

• Legal qualification of the IPs;
• Key changes introduced by OECD BEPS Action 5 and their impact on existing IP structures;
• Separation between qualifying and non-qualifying assets and related income under the new regime;
• Practical aspects regarding the tracking and documentation of eligible expenditures for the nexus ratio;
• Key transfer pricing and substance considerations; and
• Sharing perspective of the application of the Luxembourg IP regime to the Luxembourg industry and innovative start-ups.

The conference aims to provide a comprehensive view to members with the help of Luxembourg Tax and IP experts, namely Deloitte Luxembourg and the Office Freylinger.

The conference is open to FEDIL members, who may register with FEDIL.

Office Freylinger and Deloitte Luxembourg will hold a conference on the new BEPS-compliant IP tax regime in Luxembourg, which will take place on Friday, 27 April 2018 from 09:30 to 11:30 at Confiserie Namur in Luxembourg.

The objective is to provide an update on the key tax and legal aspects of the new IP regime covering:
. Legal qualification of the qualifying IPs;
. Key changes introduced by OECD BEPS Action 5 and their impact on existing IP structures;
. Separation between qualifying and non-qualifying assets and related income under the new regime;
. Practical aspects regarding the tracking and documentation of eligible expenditures for the nexus ratio; and
. Key transfer pricing and substance considerations.

Agenda

09:30 – 10:00  Registration & welcome coffee
10:00 – 10:30  Legal aspects by Office Freylinger
10:30 – 11:00  Tax aspects by Deloitte Luxembourg
11:00 – 11:30  Podium discussion incl. Q&A

The presentation will be in English.

Registration is mandatory for this event due to the limited number of seats.
Please contact us by email (office@freylinger.com), should you be interested.

Mind & Market brings together creative project owners, disruptive startups, key entrepreneurs, innovative companies, and potential investors. By matching the potential of innovative solutions with the needs of the market, the initiative acts as a catalyst for the realization of the project owners’ ideas and as a facilitator for startups’ growth.

Office Freylinger organise le 6 octobre 2017 un atelier – petit déjeuner sur le thème :

la protection du logiciel

Les logiciels nécessitent aujourd’hui une protection multiple, afin de s’assurer que les différents aspects en sont protégés, mais également que le propriétaire du logiciel puisse intervenir efficacement contre les tiers qui copieraient ou s’inspireraient de ce programme informatique, de son ergonomie ou d’autres éléments caractéristiques.

Au cours d’un atelier – petit déjeuner, venez découvrir comment les droits de propriété intellectuelle – droit d’auteur, marques, brevets, dessins et modèles – peuvent être combinés pour une protection optimale.

Date : vendredi 6 octobre 2017
Horaires : 8h30 – 10h30
Lieu : Luxembourg

Renseignements et inscription (places limitées) :  events@freylinger.com.

Attendu depuis plus de quarante ans, le brevet unitaire n’entrera finalement pas en vigueur en décembre 2017.

C’est ce qu’annonçait le Comité Préparatoire dans une news le 7 juin dernier, constatant que le processus de ratification avait pris du retard.

Deux autres points noirs sont à signaler :

1. En dépit du Brexit, le gouvernement anglais avait annoncé son intention de ratifier l’Accord sur la Juridiction Unifiée du Brevet (JUB). Mais le résultat des élections en Grande-Bretagne ne parait pas favorable à un agenda législatif qui permettrait de mettre rapidement ce sujet à l’ordre du jour.

2. En Allemagne, la Cour Constitutionnelle a demandé au Président allemand de ne pas promulguer les textes relatifs à la JUB, déjà approuvés par le parlement, en raison du dépôt d’un recours constitutionnel (voir article Frankfurter Allgemeine Zeitung).

Pour mémoire, l’entrée en vigueur du “paquet brevet unitaire”, c’est-à-dire des règlements relatifs au brevet européen à effet unitaire et l’Accord sur la JUB, requiert une ratification de l’Accord JUB par 13 pays membres, dont la France, l’Allemagne et le Royaume-Uni.

A ce jour, la France et 11 autres pays ont ratifié. Il ne manque donc plus que l’Allemagne et le Royaume-Uni…

Philippe Ocvirk