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

 

Two recent judgements from the Court of Justice of the European Union in the cases T-174/16 and T-175/16 constitute a salutary reminder of the most important notions in the matter of design protection.

On 18th of May 2007 the German company Wessel-Werk filed a Community Design for nozzles for vacuum cleaners. In 2013 an invalidity proceedings was initiated against this Community Design by the company Wolf invoking as grounds of such invalidity a lack of novelty and of individual character notably due to the existence of a prior Registered Community Design N° 493945-0002 for nozzles for vacuum cleaners.

The EUIPO’s Invalidity Division rejected this invalidity proceedings in 2014, but the Board of Appeal of EUIPO admitted the appeal filed by Wolf and canceled the contested Design. Wessel-Werk then introduced an appeal before the Court of Justice of the European Union which was rejected and the invalidation of the design confirmed.

The surprising thing about the judgment from the Court is that it concentrates its analysis exclusively on the individual character of the design at stake – or rather on its lack of individual character – stating that, as the Design does not possess individual character it would no longer be necessary to examine whether the design is considered as new or not. At this point we notice an inversion in the order of analysis the Court usually follows: Ordinarily the Court starts analyzing a design’s novelty or lack of it, and only once this question is answered, it proceeds as a second step to examine the individual character or lack of it, but not the other way round.

Apart from this somehow innovative change in the order of analysis of the different grounds the remaining definitions evoked are rather classical, such as the notion of the “informed user”, referring to a fictitious person, which lies somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge, and the sectorial expert, who is an expert with detailed technical expertise. According to the Court in the present case the “informed user” is not the industrial operator (“the industry placed in the following step of the production chain”), as pretended by the claimant, but the user who will effectively use the vacuum cleaner, and in particular its nozzle, according to its function as domestic cleaning device. The Court considers that the informed (end) user’s attention will be drawn not to the different elements constituting the nozzle, such as the captor, but to the nozzle as part of the vacuum cleaner as a whole.

In the further development of the judgement the Court refers to the notion of “déjà vu” considering that the Board of Appeal was right to come to the conclusion of a lack of a different overall impression between the conflicting designs, and thus correctly stated an absence of individual character of the contested design.

According to the Court the informed user of a nozzle for vacuum cleaners will pay less attention to the captor or to its color, but will rather concentrate on the global impression of the nozzle in its entirety. For this reason a difference in the color employed is too small an alteration to justify the individual character of the contested design.

Another problematical point is the fact that the Board of Appeal often takes into account different representations of the design that is to say other than those examined by the EUIPO’s Invalidity Division. The Court simply remarks in this context that both of these representations are integrally part of the object of litigation brought to the Board of Appeal, highlighting that these representations do not present any noticeable differences that could have had an incidence on the existence or absence of individual character of the contested design.

As we can appreciate, the quoted decisions have the merit of further clarifying several of the key notions in design right.

Juliane Fromm

Links: T-174/16 and T-175/16

About 150 participants had registered for the 3rd edition of Office Freylinger’s seminar on Intellectual Property (La Propriété Intellectuelle, en pratique).

Check out the video report on our partner’s website: paperjam business club.

Since may 2008, the London Protocol –an optional agreement that reduces the translation requirements for European patents– has led to substantially reductions in translations costs for patent proprietors.

Up to now, Belgium has not adhered to this protocol and has required a French, German or Dutch translation of the full specification to be filed when the patent was granted in English.

 As of January 1, 2017 Belgian patent law changes: a European Patent granted in English, French or German will be in force in Belgium without any translation requirement.

The new law will be applicable to European Patents granted on or after January 1, 2017.

The Belgian Office (OPRI) will thus no longer accept translations filed for the validation of European patents granted in English in respect of which the mention of grant, maintenance in amended form or limitation is published in the European Patent Bulletin on or after 1 January 2017.

Early publication of a translation of the claims of a pending European Patent application will remain available for parties wanting to establish provisional protection.

The expenses for obtaining patent protection in Belgium via the European route will thus be reduced to the costs of annual maintenance fees, which will please patent proprietors.

This being said, it still remains advisable to provide an address for service.

Today at the EU’s Competitiveness Council meeting in Brussels, the UK announced that it is proceeding with preparations to ratify the Unified Patent Court Agreement.
This puts an end to the uncertainty period that started with the Brexit vote back in June this year.

The Unified Patent Court will be competent for classic European patents and have exclusive jurisdiction for the new European patent with unitary effect (Unitary Patent).
The Unitary Patent is an EU wide patent that can be requested at the grant stage of the conventional European patent. The Unitary Patent Court will permit EU-wide enforcement of European patents, making them more valuable.

Ratification by 13 countries is required for the new system to start, including France, Germany and the United-Kingdom. Today, 11 countries have ratified (AT, BE, BG, DK, FI, FR, LU, MT, NL, PT, SE), and 4 are ready to ratify – including the UK. Germany is reportedly ready for ratification.

With this good news, entry into force of the Unitary Patent system may again be expected in 2017.

Philippe Ocvirk

Office Freylinger organise le 1er février 2017, à l’Abbaye de Neumünster, la 3e édition de la journée thématique :

La propriété intellectuelle, en pratique.

Une journée composée de six ateliers différents consacrés à la propriété intellectuelle, qui traiteront de la détection et l’appropriation des droits de PI tels que les brevets, marques et modèles, des logiciels, de la gestion et valorisation (évaluation/licensing) de la PI, ainsi que des aspects de fiscalité.

On y abordera également l’actualité de la PI avec des évolutions majeures : paquet marques, directive « secret des affaires » et le brevet unitaire européen.

Programme détaillé et inscription sur le site de notre partenaire Paperjam Business Club.

 

Avec la participation de :

Applicants should pay attention not to file trademarks containing or imitating elements of flags or state emblems.

Proof of it is the success achieved in the case concerning the cancellation request filed by the European Union in 2009 against the semi-figurative German trademark

N° 30 2008 032 360 filed for various customs and transport services in classes 36 and 39.

According to the provisions of Art 6ter of the Paris Convention, flags and emblems of member states as well as names and emblems of international intergovernmental organizations (IGOs) are protected against unauthorized registration and use as trademarks.

However the German Patent Office rejected the EU’s cancellation request in April 2010 considering that the semi-figurative trademark EUROKURIER did not evoke any association with the EU institutions, neither in the comparison between the signs nor in the comparison with the protected commercial services.

Thanks to solid arguments filed by Office Freylinger S.A., this first instance decision has now been rejected by the German Federal Patent Court (BPatG) pointing out that the design of twelve five-pointed stars on a dark background is sufficient to constitute an imitation of the official emblem in its heraldic meaning and that the additional elements could not avoid a risk of confusion with the activities of the EU institutions. Moreover the German Federal Patent Court has confirmed that the commercial customs clearance and transportation services run by EUROKURIER could also be allocated to the European Union institutions.

Consequently the German trademark application N°30 2008 032 360 was ordered to be cancelled.

Case Reference : 26W (pat) 73/10 of 28 July 2016

Nathalie CAILTEUX

On 14 April 2016, the European Parliament adopted the draft on the new Directive on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure .

The directive introduces an EU-wide definition of “trade secret”, meaning information which is secret, has commercial value because it is secret, and has been subject to reasonable steps to keep it secret.

The text offers means of action and remedies against ‘unlawful acquisition, use and disclosure of confidential commercial information’, such  as injunctions and correctives measures, damages and provisional and precautionary measures.

The Directive also contains provisions on the preservation of confidentiality of trade secrets in the course of legal proceedings.

According to the press release, ‘MEPs ensured that freedom of expression and information will be protected and that the rules will not restrict the work of journalists.’

After adoption of the text by the Council, the Member States will have two years to implement the provisions of the Directive into national law.

Philippe Ocvirk

After long discussions and analyses, the reform of the European Trademark Law, the so-called “Trademark Package”, was adopted on 15 December 2015 by the European Parliament and will come into effect on 23 March 2016 for the Community Trademarks.

This reform contains two texts, the objective of which is the enhanced harmonization of the trademark law in the European Union.

• The new Regulation No 2015/2424 amends Council Regulation (EC) No 2007/29 of
  26 February 2009 and Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trademark.
• The new directive No 2015/2436 replaces directive No 2008/95/CE: it aims to a harmonized functioning of the trademark systems and the unitary character of the trademark law both at national and Union level. The new directive was published on 23 December 2015 and came into effect on 13 January 2016. Unlike the Regulation, it does not have a direct effect and will have to be implemented by the member states within 3 years. However, it should be noted that a period of 7 years is allowed for the implementation of important dispositions about the new administrative procedures for opposition, revocation and invalidity.

No doubt that the upgrade brought by the new Regulation and Directive of the “Trademark Package” will have consequences in the trademark owners’ everyday life. The present summary does not comment each new measure of the Trademark Package but only the most important and noticeable changes.

A new name: “European Union trademarks”

It has been a long time since the “European Community” became the “European Union”. In order to align with this new name, the “Community Trademark” now becomes the “European Union Trademark” or “EU trademark”.

In the same way, the OHIM changes its name and becomes the EUIPO, i.e. European Union Intellectual Property Office.

Removing the graphical representation requirement

This is probably one of the most important improvements brought by the Trademark Package. In the past, the graphical representation requirement made it almost impossible to register sound trademarks, olfactory or gustative trademarks. From now on this provision of the Amending Regulation should make it easier to protect such trademarks.

The disappearance of this basic criterion means that it will be necessary to establish new technical standards and acceptable criteria in order to enable trademark owners to file their trademark applications and to allow the comparison of signs and determine a potential risk of confusion.

This amendment provides new protection opportunities to European trademark owners and is to be welcome as an evolution in line with technical developments.

Codification of case law IP TRANSLATOR

A trademark is a protected sign for specific products and services. These products and services are integrated in 45 classes sorted according to the international Nice classification. All classes include generic definitions (class headings) and numerous detailed products or services.

With the IP Translator decision the Court of Justice of the European Union requested a clear and precise description of the products and services to be protected by the trademark registration.

In the past, if you used the class heading, the protection covered all the products or services included in this class. The protection of such trademarks will from now on be limited to the list of goods and/ or services as indicated in the filing request.

The owners of the trademarks filed before 22 June 2012 now have the possibility to comply with the new requirements established by the decision IP TRANSLATOR until 24 September 2016, i.e. they can file a declaration requesting the amendment of the specification of their trademark registrations in order to meet the new criteria.

Consequently, if the concerned trademark owners do not clearly describe their products and services within this deadline, the scope of protection of their trademark will be limited to the literal sense of the definitions in the class headings.

Deciding not to modify the description of the products and services will thus limit the economic and legal value of trademarks and could even prevent trademarks owners from claiming their trademark rights against potential frauds or counterfeiters. We therefore recommend analyzing in detail the existing trademark registrations in order to avoid such inconveniences.

The end of the system « three classes for the price of one »

Until now the official filing fees for a community trademark amounted to 900 EUR for an application in one to three classes. As soon as the new Regulation comes into force the official filing fee for a EU trademark application filed electronically in one class will amount to 850 EUR, plus 50 EUR for the 2nd class and 150 EUR for each additional class. This corresponds to an increase of 150 EUR for a trademark application in three classes, whereas many European trademark owners need more than 3 classes for an adequate protection.

Contrary to what the official communications indicated, this is actually a tax increase.

The aim of this measure is to encourage the applicants to file their trademark applications only for the classes that are absolutely necessary and to slim down the European trademark registries. It might be interesting to verify whether the national Offices will also adopt on a voluntary basis this new facultative system.

Implementation of administrative procedures concerning cancellation or revocation

Currently the cancellation or revocation procedures of national trademarks are solely dealt with on a judicial basis, which often means high costs and long-lasting procedures.

The new Directive aims to simplify these proceedings by enabling the trademark owners or their representatives to initiate cancellation or revocation actions before the competent national trademark offices.

It is very likely that the amount of cancellation and revocation actions will increase exponentially if the new Directive is correctly implemented into the various national legislations.

Various changes

Furthermore, the “Trademark Package” will bring several other changes, some of which are listed hereafter:

• The possibility to register guarantee or certification trademarks
• An improvement in combatting fraud, especially by deleting the condition that fraudulent or counterfeited goods have to be sold in the territory of the European Union, but also by prohibiting to affix a sign identical with, or similar to a registered trademark, on all kinds of packaging, labels, tags, security or authenticity features or devices or any other means to which the mark may be affixed.
• The traditional terms for wine, traditional specialties guaranteed and the designation of plant varieties, protected on a national level, will also constitute obstacles against the registration of European Union trademark applications.

* * *

The “Trademark Package” maintains the coexistence of the two systems of trademark protection at national and European level but should lead to a harmonization of the procedures in both systems.

The ” Trademark Package ” is indeed a mix of small and major changes, that brings an evolution of the rules rather than a revolution of the European trademark law.