Weekly Design Update – Aug 2021 (1 of 3)

Procedural misrepresentation

Procedural misrepresentation refers to the bypassing of requirements regarding who can be a legal practitioner or professional representative before the EUIPO. These are laid down in Article 120 of the EU trade mark regulation and Article 78 of the Community design regulation.

To prevent abuse, the EUIPO requires professionals who are interested in representing others to provide evidence of having a real and effective business or employment in the European Economic Area (EEA).

The Office performs a series of checks, in particular:

• when an existing representative requests a second or subsequent ID number;
• on a case-by-case basis where there is reasonable doubt regarding possible misrepresentations (for example when multiple IDs are requested for the same professional representative or where the address is a virtual one);
• when a third party questions the veracity of the representative’s place of business or employment.

If the representative fails to submit appropriate evidence or sufficient information, the EUIPO will delete them from the list of professional representatives or the database of legal practitioners.

Third party requests to invalidate an ID or to remove a professional representative from the list (on the grounds, for example, that the representative does not have a real place of business or employment in the EEA) must be substantiated and, in all cases, the party concerned will be given the opportunity to be heard before the EUIPO.

Unauthorised leasing of User Area credentials

Some representatives have been leasing their unique User Area credentials to independent third parties, allowing them to interact online with the EUIPO.

These third parties do not operate under the direct control, responsibility or supervision of the authorised representative, as defined in Decision EX‑20‑9, Article 3(1). They merely act under their identity. By disclosing their User Area credentials, the representatives grant access to all the files and information stored in their User Area to these third parties. This means they may obtain unauthorised access to confidential files and information relating to other represented persons, resulting in a breach of data protection rules.

In response to this, the Office has updated the Conditions of use of the User Area annex to the Decision of the Executive Director on communication by electronic means.

The main changes to the annex reflect the actions the EUIPO will take in the event of a potential prohibited disclosure. These can be found under paragraph 4 ‘Proper use of the user account’ which:

• determines that the responsibility for the proper use of the account and maintenance of confidentiality falls on the account holder;
• defines the ‘prohibited disclosure’ of credentials (the sharing or disclosure by account holders of credentials, passwords or administrative email accounts with any third party, that is, any entity or individual outside its organisation);
• identifies the steps the EUIPO will take after being made aware (based on evidence) of a potential case of prohibited disclosure (the Office will investigate the relevant facts and invite the account holder to comment);
• outlines the consequences and sanctions when prohibited disclosure is deemed to have taken place, which may include:
  • the temporary or permanent suspension of the User Area account;
  • asking the account holder to submit authorisations for the parties represented;
  • informing the competent national authorities; and/or
  • informing the competent data protection supervisory authorities.

A disclaimer has also been added to the annex stating that the EUIPO is not liable for any data breaches caused by the account holder’s prohibited disclosure of its User Area credentials.”

The 1 million digitised files milestone was achieved on 7 July 2021 at the Finnish Patent and Registration Office (PRH). The total number of digitised pages stands now at approximately 18 million.

The ECP5 Capture and Store Historical Files is a European Cooperation Project that aims to digitise paper dossiers across EU intellectual property (IP) offices to enable easy and rapid access to documentation and data related to trade marks and designs.

In the last 5 years, 11 national IP offices have participated in the digitisation project, including the Finnish Patent and Registration Office. Other offices like the Industrial Property Office of the Slovak Republic (SKIPO) have just recently joined.

This achievement is a result of the work of the implementation teams in Bulgaria, Estonia, Greece, Spain, Cyprus, Latvia, Lithuania, Malta, Slovenia, Slovakia and Finland, as well as the EUIPO.

A bit of history

The first group of IP offices started digitisation in 2017. At that time the European Union Intellectual Property Network (EUIPN) had limited experience with big data analytics and machine learning. Today these barriers no longer exist and the Network is making the most of these new technologies to input and manage big volumes of high-quality data.

But the ECP5 project does not stand on its own. Its results, geographical coverage and data have been instrumental for other European Cooperation Projects such as IMAS, Decision Desktop, and the Case Law Repository, as well as for established search tools like TMview and DesignView.

More information and news on our cooperation work”

The Act on the Fees in the Field of Intellectual Property was published in the “Official Gazette” No. 66/2021on June 16, 2021, and it came into effect on June 24, 2021.

The Act was adopted to abolish administrative fees in the field of intellectual property rights in national proceedings by repealing the Act on Administrative Fees in the Field of Intellectual Property Rights (“Official Gazette”, No. 64/2000, 160/2004, 62/2008, 30/2009, 49/2011), which provided for the obligation to pay administrative fees. The purpose of abolishing administrative fees is to harmonise with the obligations from international agreements as well as to implement the Action Plan for the reduction of non-tax and fiscal levies, which was adopted by the Government of the Republic of Croatia at its 229th session held on May 7, 2020. Consequently, administrative fees in proceedings before the Office shall no longer be charged as of June 24, 2021.

In connection with the initiated proceedings, i.e. those where the obligation to pay the fee or the costs was incurred and/or due by June 24, 2021 (the date of entry into force of this Act), and the obligations have not been settled, they will be charged according to the regulation in force at the time of the obligation, i.e. according to the Act on Administrative Fees in the Field of Intellectual Property Rights („Official Gazette“, No. 64/2000, 160/2004, 62/2008, 30/2009, 49/2011), pursuant to Article 11 of the Act on the Fees.

Please note that, although there are provisions in the substantive regulations governing the field of intellectual property (regulations in the field of patents, trademarks, industrial design, geographical indications and designations of origin of products and services, topography of semiconductor products) which provide for the obligation to pay administrative fees, they are repealed by the new regulations, and they will also be amended in the subsequent amendments to the substantive regulations.

The new Act regulates the basic issues related to the obligation to pay the costs of proceedings for the protection of intellectual property rights and fees for professional services provided by the Office, which, as before, are regulated in more detail by a regulation (now the Regulation on Fees for Special Costs and the Costs for the Provision of Information Services of the State Intellectual property Office („Official Gazette“, No. 109/11, 96/13 and 89/20). The Government of the Republic of Croatia is authorised to adopt the new regulation, as before. The Regulation on Fees for Special Expenses and Costs for the Provision of Information Services of the State Intellectual Property Office shall remain in force until the entry into force of the new regulation („Official Gazette“, No. 109/11, 96/13 and 89/20).

The amount of reimbursement of costs was revised in accordance with the circumstances existing in July 2020 with the adoption of the Regulation amending the Regulation on Fees for Special Costs and the Costs for the Provision of Information Services („Official Gazette“, No. 89/2020) and is not planned to be changed by the new regulation.

Fees/charges prescribed by international organisations, which are paid in international procedures for the grant of industrial property, do not change.”

Publication in DR of the new rate table for the year 2021.

The new Table of Industrial Property Rates was published in the Diário da República, 2nd series, on June 8, and updates the rates for the various types of Industrial Property for the year 2021.

This table comes into force today, July 1st, and can be consulted here .”

1. The Ministry of Law (MinLaw) has tabled the Copyright Bill for First Reading in Parliament today.

2. The Copyright Bill (“the Bill”) seeks to repeal and replace the current Copyright Act. It will strengthen the copyright regime in Singapore, by updating the Copyright Act to stay abreast of changes in how content is created, distributed, and used. It will also make the law more accessible by simplifying the language.

Key Features of the Bill

3. The key features of the Bill are:

a. It will introduce new rights and remedies for creators, to ensure copyright continues to reward the creation of works and incentivise creativity. For example:

• A new right to be identified will require users to ensure that when materials are used in public, including when they are distributed on online, the creator or performer is acknowledged. This will help individual creators and performers build their reputation.
• Creators of photographs, portraits, engravings, sound recordings and films, whether commissioned or otherwise, will by default be the first owner of copyright unless otherwise prescribed by contract. This changes the current position, where the commissioning party owns the copyright by default. Creators will be better positioned to negotiate with the commissioning parties, and can further showcase and commercialise their works for other purposes.

b. It will create new exceptions to copyright owners’ rights, known as “permitted uses” to ensure copyright works are reasonably available for the benefit of society and to support innovation. For example:

• Copyright works, if lawfully accessed (e.g. without circumventing paywalls), can be used for computational data analysis, such as sentiment analysis, text and data mining, or training machine learning, without having to seek the permission of each copyright owner. This will support research and innovation efforts.
• Teachers and students may use freely available internet materials in their educational activities, including for home-based learning, as long as they acknowledge the source. However, if they are made aware that the source is infringing, they must stop using it. This new exception is timely, since the use of online materials for educational purposes has increased substantially.

A summary of the key changes can be found in the Annex.

4. The Bill will restructure and reword the legislation in plain English, to enhance its clarity and accessibility. The Bill adopts a more intuitive, thematic structure and provides illustrations to show how provisions should be applied in particular situations. This will allow creators, users, and intermediaries to better understand how the law works to both protect and provide access to works.

5. MinLaw and the Intellectual Property Office of Singapore (IPOS) would like to thank all respondents who provided feedback during the several rounds of public consultations culminating in a draft version of the Bill being issued for final consultation in February this year. Responses from the February consultation were taken into consideration in finalising the Bill. MinLaw’s full response to the February consultation can be accessed at www.go.gov.sg/copyright-consult-response.

6. If passed, we expect to be able to operationalise most of the provisions in the Bill in November 2021.”

The European Union Intellectual Property Office (EUIPO) and the Community Plant Variety Office (CPVO) signed a new Service Level Agreement (SLA) which entered into force on 21 July 2021.

The EUIPO and the CPVO operate in the field of intellectual property (IP) rights with similar operational and budgetary structures which are based on fees charged for services provided to industry. The EUIPO manages the registration of trade marks and designs while the CPVO is in charge of the protection of plant variety rights. Both organisations are part of a network of 48 decentralised EU agencies working to implement EU policies in fields as diverse as space, medicine, education, fundamental rights and IP.

The scope of the new SLA is wide and covers a series of key activities in different operational and administrative areas, such as the organisation of webinars on IP matters, the sharing of information in the context of the eSearch Case Law database, as well as cooperation on data protection, internal audits, development and deployment of IT services, training, and HR selection procedures.

This new SLA shows that the EUIPO and the CPVO are ready to continue cooperating and sharing services to strengthen their strategic partnership and generate effective economies of scale while respecting one another’s autonomy.

The EUIPO and the CPVO have cooperated and shared services in the past in line with the recommendations of the Common Approach promoted by the European Commission which has increased their efficiency and accountability. Earlier this year, an SLA was signed for EUIPO support to the CPVO Board of Appeal.

Closer partnership between EU agencies improve efficiency, reduces administrative burden and creates higher quality services for companies, Member States and EU citizens in general.

More information on the work of the EU Agencies”

Due to technical maintenance our online services will be unavailable Monday August 2 from 18.00 to 22.00 hrs:

• Register a trademark
• Renew a trademark registration
• Trademarks register
• File an opposition
• Register a design
• Renew a design registration
• Designs register
• i-DEPOT

We apologize for any inconvenience.”

The CIPC is currently managing a File Transition Project during which +/- 7.2 million Company, Close Corporation, Patents, Trade Marks, Copyrights, Cooperatives and Designs etc. files will be moved to a new bulk storage facility, over a period of 4 months, as from Monday the 26th July 2021. Due to handover of files between current service provider and new service provider, files requested by CIPC on daily/weekly basis will be retrieved but will take a bit longer to be submitted to CIPC.

Please note that all unattended/unresolved disclosure requests will remain open on the disclosure workflow until the files have been received by CIPC, requests completed and documents dispatched to customers.

Customers must please not re-submit a request previously submitted as this will result in billing duplication.

Customers who have previously enquired about the status of their disclosure requests, are urged to be patient. Their requests will be attended to as soon as the files have been received by CIPC.

Customers who have not previously enquired about the status of their disclosure requests, can utilise the “enquiries portal”, http://www.cipc.co.za/index.php/enquiries/, from the CIPC website, for security and control purposes.

Enquiries via email or telephone will unfortunately not be attended to.

CIPC apologises for any inconvenience.”

The UK’s Permanent Representative to the WTO in Geneva, Simon Manley, spoke on a variety of agenda items at the WTO General Council 28-29 July 2021.

Agenda Item 2: Implementation of the Bali, Nairobi and Buenos Aires Outcomes

Proposals for a new UK Developing Countries Trading Scheme will replace GSP and we have invited colleagues’ views on the scheme. This is due to come into effect next year. It will be more sustainable, pro-growth and simpler. We are looking to be best of class. Live consultations are underway until 12th September and we welcome members’ feedback.

Agenda Item 4: TRIPS Council Matters

I welcome the factual, objective and accurate report by the TRIPS Council Chair. We all recognised the scale of the challenge as the pandemic continued to rage in so much of the world and paid tribute to the eloquent testimony to its human effects by South Africa and others. We all agreed that our objective should be – to use the phraseology the G7 at Carbis Bay – to vaccinate the world. The question was how.

Sitting on the UK’s Vaccine Taskforce board last year, we faced many challenges in developing and deploying vaccines, including potential bottlenecks and the resilience of our supply chains. IP was not the problem, nor is it. In fact, it was the IP regime that has enabled the extraordinary scientific advances of the last year, including the development of an unexpected number of safe and effective vaccines.

Scaling up the production and delivery of vaccines has been at the heart of our G7 Presidency, including the commitment to share a billion doses within the next year and our national financial contribution to COVAX of £548m (three quarters of billion dollars) as well as our forthcoming sharing of doses through COVAX.

We would continue to encourage voluntary licensing and technology transfer, support COVAX and look to identify solutions to production bottlenecks and weaknesses in the supply chain. And in that respect we very much welcomed efforts to bolster public/private and international collaboration in this area, such as the WTO-WHO Symposium last week, and also the new World Bank/COVAX financing mechanism.

Agenda Item 5 & 6: Work Programme on Electronic Commerce – Report by the Chair and Work Programme on Electronic Commerce and Moratorium on Imposing Customs Duties on Electronic Transmissions

Digitalisation is one of the great features of the modern age. It has been hastened by the pandemic. Digitalisation is a good thing for developing and developed countries alike. Many examples have been cited of countries who have been helped to integrate into the global economy and pull themselves out of poverty through digitalisation. We are a very strong supporter of the work programme on e-commerce and recognise the importance of inclusive digital trade. We welcome recent structured discussions held by the GC chair and support constructive, open and inclusive discussions. Let me echo the comments of Australia and EU. It would be inconceivable to do anything other than extend or render permanent the Moratorium. To do otherwise would be bizarre.

Agenda Item 7 & 8: Preparations for the Twelfth Session of the Ministerial Conference and Contributions to the Multilateral Process on the WTO Response to the Pandemic

This is an area where Ministers will want a substantive outcome, as we will still be in the midst of the pandemic when they meet at MC12. Let me pay tribute to Ambassador Walker for the consultations and hard work. Let me also pay tribute to the DG for collaboration with other international organisations and business. We need more of this collaboration in the months ahead. We are a cosponsor of TAHI and therefore encourage others to join up to it. We also welcome the EU and Chinese Taipei’s proposals. As others have said, we need a holistic approach that focuses on practical solutions. That is what is so strong about the trade and health declaration proposal that delivers concrete actions to facilitate trade during the pandemic and beyond, allowing members to react with flexibility and agility to pressures. It is important that as we move forward, we reach an outcome for this Ministerial Conference, but also a programme of work that allows us to develop these proposals in the years ahead to ensure this organisation is prepared for future pandemics.

Agenda Item 13: G90 Declaration on Special and Differential Treatment – Communication from South Africa on behalf of the G90 (WT/GC/234)

My thanks to South Africa and G90 for their paper. We all agree that Special and Differential Treatment remains an important tool for supporting WTO members with genuine need – in particular for supporting Least Developed Countries in their integration into the multilateral trading system and enjoy benefits of this system. This should obviously continue. But, we all recognise that the current mechanism for awarding and claiming SDT requires reform. A more targeted approach based on specific and identified needs is required to ensure those Members with real need are supported during current and future negotiations. A granularity to which the EU just referred. Both at, and in the run-up to MC12, the United Kingdom would like to see concrete progress towards such a more balanced and targeted approach to SDT, and we look forward to engaging with further Members to seek common ground in the weeks ahead.

Agenda Item 14: Paper Titled “The Legal Status of ‘Joint Statement Initiatives’ and their Negotiated Outcomes” – Request from India and South Africa (WT/GC/W/819)

Thank you very much Mr Chairman. What strikes me is the importance of the Joint Initiatives to the credibility of the WTO. If we were to lose the JIs then we would be all the poorer. We support the comments made by the European Union and recall our statements in previous meetings. The UK is a strong supporter of the Joint Initiatives, which have brought much needed energy and dynamism to the WTO. These plurilateral negotiations are enabling a significant proportion of the membership to make much needed progress on key areas, where new rules are urgently needed to demonstrate the Organization’s credibility in the 21st century global economy, in a way that is open and inclusive.

Agenda Item 15: Proposed General Council Decision on Procedures to Enhance Transparency and Strengthen Notification Requirements Under WTO Agreements

As others have said, transparency lies right at the heart of this organisation and I would like to salute the United States for the leadership role they have made on this initiative and really welcome the new co-sponsors who have joined up to it. As our Canadian and US colleagues have said, we have made a real effort to try and listen to the comments of others before bringing this initiative to the General Council, in particular as was said, to consider the capacity constraints that some LDCs fair. So I really would appeal to others across this organisation to join this initiative and we really look forward to taking it forward and put into practice. I think it can really aid us, as so many delegations have expressed in the last day or so. Increased transparency, as a means of increasing the trust, which we need to build within this organisation and I hope that this initiative can be a really constructive proposal to that end.

Agenda Item 16: Joint Communication on Systemic Issues

Thank you to the co-sponsors for bringing forward this joint communication. We are not a co-sponsor but there is much in this communication that we very much commend. We support efforts like this to affirm the rules based multi-lateral trading system and indeed the need for a reform of this organisation in order to support that. We particularly agree with the centrality of this organisation in the multilateral trading system as well as the importance of an open, predictable and transparent system to secure the sort of inclusive, sustainable, greener recovery that I think we all want to see after this pandemic. I also want to mention in this context, in the response to this pandemic, we have just announced today the delivery of the first 9 million promised 100 million doses to developing countries, those 9 million of AstraZeneca vaccines being delivered in the course of this week and next for a number of developing countries, most of them through the COVAX mechanism. As well as the existing negotiations and systemic discussions on reform, we would like to see further reform of the WTO rulebook to mitigate, amongst other things, the impact of market distorting practices in the global trading system, including the use of industrial subsidies. So, we look forward to working with Members across this organisation to progress this reform agenda, both up to, and beyond MC12. Thank you very much indeed.”