The MARQUES Cyberspace Team has published the latest update to its paper on ISP liability. Gabriele Engels introduces it.

Advocate General’s Opinion

In light of the recent opinion published by the Advocate General of the CJEU in connection with a reference for a preliminary ruling from the German Federal Supreme Court (16 July 2020, joined cases C‑682/18 and C‑683/18) concerning the primary liability of platforms such as Uploaded and YouTube, the Cyberspace Team has taken the opportunity to revise and update its paper “Overview on the jurisdiction on liability of Internet Service Providers (ISPs)”.

The considerations brought forward by Advocate General Saugmandsgaard Øe have again highlighted how relevant and important the discussion surrounding provider liability remains, especially with regard to the much debated Directive on Copyright in the Digital Single Market (Directive 2019/790/EC).

In the view of the Advocate General, pursuant to the current legal situation, the illegal uploading of protected content by platform users does not result in the direct primary liability of the platform operators, as they merely act as intermediaries. Only the uploading users themselves are primarily liable.

This will, however, change with the implementation of the new Directive, which EU Member States must implement by June 2021. According to its requirements, platform operators will be obliged to obtain the permission of rights holders for the online publication of works uploaded by their users (e.g. through licensing agreements). Failure to do so can result in the primary liability of host providers.

A final decision by the CJEU is still pending and can be expected in a few months’ time.

Latest decisions

This updated version of the paper for the first time includes a comprehensive review of the French case law on provider liability, as well as a detailed and updated examination of the newest rulings of the CJEU and national courts (in Germany, the Netherlands, England, Denmark and Sweden).

We would like to take this opportunity to invite any interested MARQUES members to contact the Team with details of other countries to include.

To view the newest version of the "Overview on the jurisdiction on liability of Internet Service Providers (ISP)", please click here (MARQUES login required).

Gabriele Engels is counsel at DLA Piper in Cologne and Co-Vice-Chair of the Cyberspace Team

As part of its programme of education on the Madrid System, WIPO is hosting three webinars with national IP offices in the next few months.

These are:

• Understanding Examination and Refusal Procedures in the IP Office of Australia (Monday 28 September, 9 AM BST)
• Examination and refusal procedures in the IP Office of the Russian Federation (Tuesday 13 October, 1 pm BST)
• Understanding Examination and Refusal Procedures in the USPTO (Tuesday 24 November, 3 pm GMT)

Over the next few months, WIPO is also hosting webinars in various languages on topics including: guides to international applications, learning from common mistakes, the Madrid Application Assistant and other online services.

A list of upcoming Madrid System webinars is available on the WIPO website here.

Thanks to the MARQUES International Trade Mark Law and Practice Team for sharing this information.

There are six events taking part online this week as MARQUES Month draws to a close.

Today sees a workshop on sustainability hosted by the Intellectual Asset Management Team. This will look at the impact of sustainability issues on brand value, sales and consumer confidence – and how brands can support sustainability initiatives while avoiding accusations of greenwashing. The workshop starts at 13.30 BST/14.30 CEST.

On Thursday we have the Corporate Breakfast Meeting (08.00 BST/09.00 CEST, by invitation only to corporate members). This is followed by the presentation of the Lewis Gaze Memorial Scholarship at 13.30 BST/14.30 CEST, which is open to everyone, and the Network Reception at 16.00 BST/17.00 CEST.

The Lewis Gaze Memorial Scholarship is presented annually to a student in the city hosting the Annual Conference, to recognise an outstanding paper on trade mark law. This year's winner, from Stockholm University, will receive their certificate during the presentation.

MARQUES Month concludes on Friday with the MARQUES Annual General Meeting (09.00 BST/10.00 CEST) and the final panel session which is on Brands and Online Games (13.30 BST/14.30 CEST). This session will look at all aspects of online gaming, spanning various IP rights, including issues raised by online dissemination, new technologies, the resurgence of old brands and lessons for other sectors.

In addition to these MARQUES Month events, the annual Team Leaders Meeting and Team Meetings are taking place this week. These would have been held at the Annual Conference in Stockholm, which had to be cancelled. All those involved have received invitations. 

You can find out more about all the MARQUES Month activities, including how to join the sessions for which you have registered, on the dedicated page on the MARQUES website.

Last week’s sessions

Last week’s MARQUES Month activities comprised a panel on music and new technology and a workshop on technical functionality.

The panel consisted of Anders Ekström of Music in Brands, Oscar Höglund of Epidemic Sound and Wendela Hårdemark of MAQS. It was moderated by Sara Söderling of Setterwalls Advokatbyrå Malmö AB.

As Anders said: “Music is one of the most powerful things we have for connecting brands and consumers.” Music is important in establishing an emotional connection, and research suggests people are 96% more likely to remember a brand with music. But, as Oscar pointed out, there are also risks of misinterpretation, tastes change over time and the same music may mean different things to different people.

The panel also discussed the challenges of registering sound trade marks, copyright issues and the issues raised by new tools such as voice searching, which could change the way people interact with brands.

The Brompton Bicycle case was one of those discussed in the workshop on technical functionality

The workshop on technical functionality was led by members of the Designs Team and Copyright Team. They discussed the law and cases on functionality regarding trade marks (including the Philips, Lego, Rubik's Cube and Gombock cases), designs (notably the recent DOCERAM judgment) and copyright (where the decisions in Cofemel and Brompton Bicycle have provided some guidance).

Then, in two breakout sessions, participants discussed case studies presented by members of the Teams. These involved an inflatable helmet, a dental implant, an inhaler and a playground climbing frame. The workshop concluded with quiz questions (and answers) on the protection of various products in different jurisdictions.

All previous MARQUES Month sessions are available for registrants to view in the online Plenary Room.

How can brand owners avoid being out-smarted by tech-savvy counterfeiters? That was the topic of the third panel session of MARQUES Month, which took place last Tuesday.

During the webinar on “Technology in tracking counterfeiters” speakers discussed the technological tools available to brand owners, and how these can be deployed. They also shared tips on how to prioritise threats and work with law enforcement.

Michael Sweeney of Incopro started by noting that the ICC estimates that counterfeiting and piracy will be worth $4.2 trillion by 2022 and that brand owner can often feel overwhelmed, outnumbered and that they have a thankless task.

But he said that by following the “Discover-Prioritise-Act” formula, brand owners can take a proactive approach that focuses on the biggest threats. He provided a case study of a toy company that had increased sales by 130% in nine months by tackling its counterfeiting problem.

Emma-Jane Tritton of Richemont provided more detail on how technology can help identify “clusters” of the biggest threats, which can then be assessed based on factors such as location, pricing and website status. She shared a case study from China where investigation followed by legal action had led to a couple who were selling counterfeits on Taobao and WeChat both being fined and imprisoned.

While the role of data analysis is vital, said Emma-Jane, “you still need the human analysis to make sense of trends” and to build cooperation beyond notice and take-down letters.

In her presentation, Anja Franke of Grunecker summarised recent developments to fight counterfeits in Europe including European Commission initiatives, case law on blocking injunctions, the Blockathon and Europol and Interpol initiatives (In Our Sites and Pangea respectively).

Summing up, moderator Claire Lehr of EIP said that brand owners should not feel “outsmarted” given the technology now available to help with enforcement.

Brand owners and the Madrid System

In the second webinar held last week, speakers discussed practical issues concerning the Madrid System, and took questions from the audience (“WIPO: Corporate Counsel and the Madrid Protocol”).

Debbie Roenning of WIPO said that the shift to remote working “has worked surprisingly well” and provided updates on demand for filings, which she described as “erratic”.

David Grunbaum of BabyBjorn and Vadim Niuniaev of Gazprom shared insights from brand owners that use the Madrid System, including on the impact of COVID-19 on their business, trade mark filing strategies and strategies for the Madrid System.

Marcus Ateva of MarLaw added the perspective of a lawyer in private practice and the session was moderated by Jessica Le Gros of Baker McKenzie.

Both these webinars, as well as all the previous events in MARQUES Month, are available for registrants to view again in the auditorium. Read a summary of the first week’s webinars in this Class 46 blog post.

Coming up this week

There are two more MARQUES Month sessions this week. “Music and new technology” takes place at 13.30 BST/14.30 CEST today (Tuesday) and on Friday there is a workshop on technical functionality, also at 13.30 BST/14.30 CEST.

If you are registered for these events, you can join them live (and engage in the Q&A) or watch the recordings from the day after broadcast via the MARQUES Month lobby.

The UKIPO has launched a simple questionnaire to help assess how busy it will be when the UK leaves the EU trade mark and design systems at the end of 2020.

The deadline for responding to the questionnaire is 30 November. Responses are anonymous.

The survey comprises three questions with multiple choice answers. The first covers how many clients will wish to secure specific UK trade mark protection when it leaves the EU system. The second addresses when clients are likely to start double filing, or if they have already done so. The third concerns filings during the nine-month pendency window.

The questionnaire is available here.

The UKIPO welcomes all input, so please do consider responding if this is relevant to you.

Readers may be interested in a webinar being hosted by WIPO on 11 September at from 3pm until 4.30pm CEST. The topic is: E-commerce and intellectual property for indigenous peoples and local community entrepreneurs.

The introduction states:

With the exceptional circumstances brought about by the COVID-19 pandemic, Indigenous Peoples and Local Community (IPLC) entrepreneurs, who usually sell traditional knowledge-based goods and services in physical stores, markets and festivals, are increasingly turning to electronic commerce (e-commerce) and social media to maintain and expand their businesses. IPLC entrepreneurs now face additional challenges related to protecting works, ideas and images and distinguishing their goods and services in a digital environment.

This webinar will identify the main intellectual property (IP) challenges that IPLC entrepreneurs face in the context of e-commerce and social media, and provide information about the IP tools and options available to overcome these challenges. A panel of e-commerce experts and IPLC entrepreneurs will share their experiences and answer questions on how to protect traditional knowledge-based goods and services in a digital environment.

The speakers are:

• Mr. Juan Hoyos, Adviser, Sustainable and Inclusive Value Chains, Division of Enterprises and Institutions, International Trade Centre, Geneva
• Ms. Lucille Anak Awen Jon, Jewelry Designer, Bidayuh Community, Malaysia
• Ms. Solveig Ballo, Manager, Sàmi Business Garden, Norway
• Mr. Gabriele Gagliani, Lecturer, Bocconi University, Milan, and Adjunct Professor, Case Western Reserve University, United States of America
• Ms. Rebecka Forsgren, WIPO Indigenous Fellow, Traditional Knowledge Division, Global Issues Sector, WIPO (moderator)

You can register for the webinar on the dedicated page on WIPO’s website.

This topic is one that the MARQUES IP Emerging Issues Team focuses on. Find out more about their work here (MARQUES log-in required to download articles).

The UK Intellectual Property Office has published a call for views on the implications artificial intelligence (AI) might have for IP policy and the impact IP might have on AI in the near to medium term.

The call for views sets out how the IP framework relates to AI at present and poses important policy questions. It has five sections covering: patents, copyright and related rights, designs, trade marks and trade secrets. A sixth section provides a summary of the questions asked across the IP rights.

The UK government defines AI as “technologies with the ability to perform tasks that would otherwise require human intelligence, such as visual perception, speech recognition, and language translation”.

The call for views does not cover the use of AI tools to combat IP infringement or the role of AI in the Office’s digital transformation programme.

Example questions

For example, there are six questions on trade marks. These address the potential impact of AI on purchasing and liability:

1. If AI technology becomes a primary purchaser of products, what impact could this have on trade mark law?
2. Are there, or could there be, any difficulties with applying the existing legal concepts in trade mark law to AI technology?
3. Does AI affect the concept of the “average consumer” in measuring likelihood of confusion?
4. What is the impact of AI on the drafting of section 10 of the TMA? Can AI “use in the course of business” a sign which may be confusingly similar or identical to a trade mark?
5. Can the actions of AI infringe a trade mark?
6. If AI can cause trade mark infringement, does this change who could be liable? Should it be the owner, the operator, the programmer, the trainer, the provider of training data, or some other party?

More information

Find out more about the UK IPO call for views, and how to respond, on the dedicated website. The deadline is 30 November 2020.

WIPO is also leading a Conversation on IP and AI, with meetings and publications. The next session of the WIPO Conversation is due to take place in November this year.