IP applications reached new highs in 2021, according to WIPO’s World Intellectual Property Indicators (WIPI) report published yesterday (21 November).

Trade marks ...

The report found that most countries saw an increase in trade mark filings during the year. The total trade mark class count worldwide was 18.1 million, up 5.5% on 2020. This comprised 13.9 million trade mark applications.

Trade mark filing activity grew in 18 of the top 20 offices. The UK led the growth, with an increase of 61.8%, while China’s IP office had the highest total volume of filing activity with a class count of 9.5 million.

In total, offices in Asia accounted for 69.7% of all trade mark filing activity, up from 44.7% in 2011. Europe’s share has declined from 31.6% in 2011 to 15.7% in 2021.

There were an estimated 73.7 million active trade mark registrations at 149 IP offices in 2021, an increase of 14.3% on 2020. Of these, 37.2 million (just over 50%) are in China.

 ... designs ...

Industrial design filing rose by 9.2% to 1.5 million designs in 2021 (with 1.2 million design applications).

China’s IP office received applications covering 805,710 designs during the year, or 53.2% of the world total.

The UK received 2.3 times more designs in applications in 2021 compared to 2020, due to Brexit. India also saw a significant increase of 67.6%, as did Mexico (38.4%) and Türkiye (38.3%).

As with trade marks, there is a trend toward Asia and away from Europe: offices located in Asia accounted for 69.3% of all designs in applications filed worldwide in 2021, up from 64.1% in 2011 while Europe’s share fell from 28.9% in 2011 to 23.3% in 2021.

... and more

The report also includes data on patents, plant varieties and geographical indications. You can read more about it and download the full data on WIPO’s website here.

In a statement, WIPO Director general Daren Tang said: “IP filing strength during the pandemic showed that people across the world continued to innovate and create despite the economic and social disruptions caused by the pandemic.” But he added: “This resilience should not be taken for granted. Another economic downturn is looming and geopolitical tensions have increased.”

On 15 November 2022, the EUIPO and the Hellenic Industrial Property Organization (OBI - the Greek IPO) organized an interesting and quite lively seminar to present the work of the EUIPO's Boards of Appeal. The seminar covered not only musings on the case law of the Boards of Appeal, but also presentations of the work on the consistency of its decisions and its ADR functions.

Following opening statements by the OBI's Director General, Mr. Panayotis Kanellopoulos, the President of the Boards of Appeal, Mr. João Negrão, walked attendees through the workings of the Boards of Appeal and its future plans.

Sven Stürmann, Chairperson of the 2nd Board of Appeal, provided an informative update on the BoAs' case law and Janka Budovičová, Project Manager, Boards of Appeal,  presented the efforts undertaken to ensure, to the extent possible this blogger would add, consistency in the decisions of the BoA. Finally, Natalia Kapetanaki, of Boards of Appeal Operations, presented the ADR functions of the BoAs.

This blogger understands that the EUIPO's Boards of Appeal are intent of following a more extrovert route and finds that the exchange of thoughts between the EUIPO's institutions and organs with its users, particularly the IP professionals, can only be a good thing.

WIPO launched a new interface for the Global Brand Database, its database of trade marks, on 15 November.

WIPO States: “The new interface offers the same search and filtering features as the previous interface but the display of information has been completely revised in order to provide a better user experience. The new interface also includes new interactive graphs to obtain statistical information.”

The old interface is expected to be discontinued in three months. It will not be updated during this three-month period.

The Database includes international, national and regional trade marks, INNs, appellations of origin under the Lisbon Agreement and emblems protected under Article 6ter.

WIPO will hold webinars explaining the main differences between the old and new interfaces during the week of 21 November. The webinars, which will be held on different dates and times, will be in English and last for about 20 minutes with a Q&A session.

More information is on WIPO’s website here.

Ms Haiyu Li and Tingxi Huo summarise CNIPA’s latest actions against trade mark hoarding; rules on supervising trade mark agents; and a court decision regarding letters of consent.

CNIPA’s latest actions against trade mark hoarding

The China National IP Administration (CNIPA) recently requires many companies that file a large number of trade mark applications to explain and/or prove the actual usage or the bona fide intention to use.

This is because the marks are suspected to be filed without intention to use according to Article 4 of the Chinese Trade Mark Law, which provides that malicious applications without intention to use shall be rejected.

According to the Chinese Trade Mark Examination Guidelines, effective as from 1 January 2022, Article 4 limits such acts as malicious applications without intention to use and trade mark hoarding.

The Guidelines interpret Article 4 as not applying to scenarios where an applicant applies for marks that are identical or similar to its registered marks for defensive purposes, or where an applicant predicts its future business and files a proper number of applications in advance.

To cope with the new situation, we suggest that bona fide applicants immediately consider these three types of action:

1. For marks already in use, applicants should collect and submit supporting evidence such as documents proving the mark designing process, mark usage on office supplies and promotional materials, sales documents, etc.
2. For intent-to-use marks, applicants need to prove the rationality of the applications. In other words, applicants must show a realistic business plan for using the marks and the number of applications must be appropriate and/or reasonable.
3. Regarding defensive marks, evidence proving the necessity and rationality of the applications may help. If the applicants had suffered much from piracy, they should stress that the applications were filed to more cost-efficiently prevent the long-bothering piracy.

If some applications cannot be classified into the three types, it is advisable to voluntarily withdraw them so that the remaining applications can be accepted.

Supervision and administration of trade mark agents

On 1 November 2022, CNIPA released the Rules on Supervising and Administrating Trade Mark Agents, effective as from 1 December 2022. These include five chapters and 43 rules, including regulations about the recordal of trade mark agents, code of conduct, supervision and punishment.

The Rules particularly provide that the trade mark agencies shall be recorded every three years. Because of the low threshold of trade mark agents, about 70,000 trade mark firms have been established in China and many are in irregular business. The recordal procedure is quite likely to eliminate the irregular ones and reduce the total.

The Rules have listed the illegal conducts, including the acts of assisting the filing, transfer, and abuse of bad faith marks. A firm or practitioner with illegal conducts will be punished and recorded in the official credit system, and accordingly, the firm or practitioner’s qualification to practise before the CNIPA might be suspended or terminated.

Hopefully, the Rules will large clean the trade mark services market and help to lift the professionalism of the Chinese trade mark agents.

Exceptional case: Beijing courts accept letters of consent

Recently the CNIPA, the Beijing IP Court and the Beijing High People’s Court (i.e., the first instance and final instance administrative courts) have rarely accepted letters of consent to coexistence of similar or identical marks on similar or the same goods or services.

Applied-for mark	Cited mark
BOND

However, on 30 August 2022, the Beijing High People’s Court upheld the Beijing IP Court’s ruling in the final administrative lawsuit No. (2022) JingXingZhong1318 that because the applied-for mark BOND, International registration number 1485169, and the cited mark BONDTECH & DESIGN, number 36852077, both designated for 3D printers, etc. in subclass 0753 and plastic processing machines, etc. in subclass 0726 of international class 7, as shown right, are different to some extent.

Because the owner of the cited mark has provided a letter of consent to the co-existence, the two marks shall be determined as not confusingly similar and not constitute similar marks on similar or identical goods.

As many letters of consent failed to convince the CNIPA or the courts, this case is exceptional. Although this is but one case and does not represent an official change of attitudes to letters of consent, it may be cited as a new precedent in other cases.

By Ms Haiyu Li and Tingxi Huo of Chofn IP. Tingxi Huo is a member of the MARQUES China Team

Nick Wood, member of the MARQUES Council and the Cyberspace Team, provides an update on the latest plans regarding WHOIS data.

ICANN 75 took place last month as a hybrid meeting, with participants online and in-person in Kuala Lumpur. In preparation for the meeting, ICANN staff circulated their proposed Whois Disclosure System (WDS) Design Paper.

Access to domain name registration data has been an issue for brand owners since the EU GDPR came into force in 2018. There has been a desire for a centralised system which would provide a simpler and more predictable way for brand owners to request registration data.

The proposed WDS is intended to be a proof-of-concept approach, to help provide data on the demand for the more complex and costly System for Standardised Access/Disclosure (SSAD), which was the output of the cross-community policy work of the last couple of years.

Key features

Some of the key features of the proposed WDS are:

• The WDS would connect requestors seeking non-public gTLD domain name registration data, such as brand owners and law enforcement officers, with relevant, participating registrars.
• The use of the system will not be compulsory, and where a registrar is not participating the system will not accept the request.
• In the initial iteration it is not envisaged that registries will be included in this system since the party with the direct registrant relationship is the registrar.
• It will utilise an existing portal that registrars have access to. Registrars who have agreed to participate in the WDS will be notified when a request for domain registration data has been submitted and should log in to the portal to view the request.
• Any additional verification of the identity of the requestor or the legal basis for the request that the registrar considers necessary must happen outside of the system.
• There is no guarantee that the registration data will be disclosed; it will be for the individual registrar to apply the appropriate balancing test. If there is disclosure, this would take place directly between the registrar and requestor, outside the system. Once they have reviewed and actioned the request, however, the participating registrar will be expected to indicate within the system whether disclosure was refused, partially refused or approved, and the reason for any refusal.
• There will be no fee charged to requestors for use of the system, at least initially.
• System development will take approximately a year, including a three-month ramp-up.
• The initial proposal is for this system to be maintained for two years, but with a review of usage and effectiveness after a year.

Concerns with the WDS

A number of concerns with the WDS design have been expressed, including that the system will not gather reliable data if use is not compulsory and/or all requests are not captured, regardless of whether the registrar is participating.

Improvements that have been proposed include that an email should be sent to the registrar with the content of the request, particularly if the registrar is non-participatory; that all requests should be captured in the system; and that an API should be developed to allow registrars to interface more seamlessly.

Since ICANN 75, the GNSO’s small team working on this issue has had further discussions with ICANN staff, who have indicated that some of these additional requirements could be accommodated immediately and some could be future developments, but that some will not be possible.

In particular, ICANN has raised data protection concerns about storing requests in the system for registrars who are not participating, and so is unlikely to agree to do this.

During the ICANN 75 discussions ICANN staff were pressing the GNSO for a quick decision on whether to support the development of the WDS, arguing that they have a window during which they could build this without significantly impacting other projects. At present, however, it seems the GNSO is not yet ready to give that go-ahead. 

IP community divided

Among the IP community, there have been strong divisions of opinion on whether to support the development of the WDS.

Some see little value in a system which does not deliver any certainty of actually receiving the registration data. There are also concerns that there will never be further work done on developing a fuller system, or on further policy work to try to give certainty of disclosure.

Others are more optimistic, viewing this as an initial step: if the system can deliver data about the nature of the demand, responsiveness and responses of registrars this could be valuable in informing further work.

For the WDS to capture that data, however, brand owners, law enforcement and registrars will all have to commit to use it. The jury is still out.

Nick Wood is Executive Chairman of Com Laude and a member of the MARQUES Cyberspace Team.

WIPO and IP Australia are hosting a webinar on “Applying for trade marks internationally” this Thursday 10 November at 1:00 pm AEDT.

This is the second webinar in a series on exporting and IP and is designed to help businesses understand IP protection overseas.

According to the hosts: “This session will do a deeper dive into the international IP landscape, the options for filing (direct and Madrid) and provide information to help attendees make informed decisions about what might be best for their business.”

The webinar will be in English and is scheduled to last 1.5 hours. There is no fee to join and it will be recorded.

Find out more and register here (via IP Australia).

Gabriele Engels, Co-Vice-Chair of the MARQUES Cyberspace Team, provides an update on the EU Digital Services Act.

With the Committee of Permanent Representatives’ (COREPER) formal approval in September 2022, the Digital Services Act (DSA) (COM/2020/825 final) took another giant step to becoming law. The DSA seeks to supplement the regulations of the E-Commerce Directive (Directive 2000/31/EC), which at over 20 years of age is no longer equipped to tackle the challenges of the contemporary digital landscape.

The DSA aims to ensure a safer online environment, predominantly by introducing new obligations for intermediaries to expeditiously remove harmful and illegal content, goods and services. The range of targeted content is extensive, with everything from hate speech over incitement to terrorism to copyright infringements falling within the scope of the regulation. The range of targeted parties is just as broad, with all online intermediaries targeting EU consumers falling into the scope of the regulation.

The importance placed on these new rules by the EU is evidenced by the consequences imposed on non-compliance. Intermediaries face fines of up to 6% of the companies’ global annual revenue, thereby exceeding even the maximum amount imposed by the GDPR.

Liability and obligations for all service providers

Contrary to what may have been expected, the Regulation refrains from establishing its own, brand-new liability regime, instead adopting the regimes of the e-Commerce Directive (Directive 2000/31/EC) largely unaltered. Liability for third-party content is only incurred by internet service providers where they have become aware of its illegality yet not removed it from their service.

The DSA uses this regime as a basis to establish procedures for reporting and removing illegal content and in this regard also trying to establish CJEU case law. This includes the obligation for all service providers to establish easily accessible and user-friendly notice-and-takedown procedures. Where the user notice includes certain details required by the Act, it can lead to a provider having positive knowledge of illegal content. It can thereby trigger the provider’s duty to remove such content as soon as possible.

Users whose content is blocked or removed following such a notice must be given an adequate explanation for this decision. The online intermediary must also notify both the accuser and the accused of possible avenues of redress. This possibility must take the form of an internal complaint system where the hosting service provider is an online platform.

This interplay of mandatory notice-and-takedown procedures and internal complaint systems will inevitably lead to platforms no longer being able to rely on unspecified terms of use violations to remove allegedly infringing content. Takedown notices will likely have to be more specific regarding the legal grounds for the decision. This might make takedowns both more costly and time intensive, especially for complex cases of IP rights infringements.

Additional obligations for online platforms

Internal complaint systems are not the only special obligation placed on online platforms. For instance, with the exception of micro and small enterprises, online platforms must adjust their notice-and-takedown procedures to accommodate mechanisms to cooperate with frequent and dependable “trusted flaggers”. Content flagged by these individuals must be dealt with quicker and with priority. Where users have been repeatedly found to spread illicit content, their profiles are to be suspended for a reasonable period.

Another focal point of the DSA is transparency and protection regarding online advertising. Targeted advertisements based on sensitive personal data, such as ethnicity, political views, sexual orientation, or being aimed at children are completely prohibited. Additionally, online platforms must disclose how content is recommended to users (e.g. ranking mechanisms).

Because of the incomparable role which “very large online platforms” and “very large online search engines” play online, these service providers must comply with additional obligations to temper the dangers they pose regarding the dissemination of illegal content. These duties include mandatory risk assessments, the appointment of a compliance officer and setting up a repository of the advertisements displayed on their service within the last year. A platform is considered “very large” when it has more than 45 million monthly active users within the EU.

Outlook

The only thing left to do is for the EU Member States’ ministers to endorse the final text in the Council. Subsequently, the DSA will enter into force 20 days after its publication. As a Regulation, most of its rules would become directly applicable 15 months later. Depending on the speed with which the Council casts its vote, the DSA could become applicable as early as the first quarter of 2024.

As horizontal framework it will complement sector-specific legislation such as the Directive on Copyright in the Digital Single Market and the Audiovisual Media Services Directive (AVMSD).

Further reading

The MARQUES Cyberspace Team has published an update to its paper "Overview on the jurisdiction on liability of Internet Service Providers (ISP)", including a comprehensive review of the French, Dutch, German, English, Danish and Swedish case law on provider liability and examination of the relevant CJEU rulings.

The Cyberspace Team will follow the discussion around the DSA and major issues arising from the Regulation. The Team would also like to take this opportunity to invite any interested MARQUES members to contact the Team in case they would like to contribute.

The MARQUES Copyright Team has gathered a Copyright Tracker where MARQUES members can review the latest implementation status of the Digital Single Market Copyright Directive in each Member State.