ARE IP COURTS IN EUROPE REALLY UNIFIED? Ian Hiscock (Novartis) Rob Jacob (Stephenson Harwood LLP)

Transcription

1 ARE IP COURTS IN EUROPE REALLY UNIFIED? Ian Hiscock (Novartis) Rob Jacob (Stephenson Harwood LLP)

2 Rt Hon Professor Sir Robin Jacob Cambridge educated One of the UK s most influential IP judges of all time Admitted to the IP hall of fame in 2003 Sir Hugh Laddie chair of IP at UCL Rob Jacob (Stephenson Harwood) French GCSE Done a bit of IP 25m swimming badge

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4 THE APPLICANT S CASE THE IP COURTS IN EUROPE ARE UNIFIED

5 EU Harmonisation History and Objectives All roads lead to Rome > The Treaty of Rome The Union shall establish an internal market (Art 2). Bulmer v Bollinger [1974] Ch. 401 When we come to matters with a European element, the Treaty is like an incoming tide, it flows into the estuaries and up the rivers. It cannot be held back, Parliament has decreed that the Treaty is henceforward to be part of our law. It is equal in force to any statute (Lord Denning at 418) Today 80% of national law originates from Europe

6 Trade Mark Harmonisation Arsenal FC v Reed - C-206/01 Trade Mark rights constitute an essential element in the system of undistorted competition which the treaty is intended to establish and maintain. In such a system undertakings must be able to attract and retain customers by the quality of their goods or services, which is made possible only by distinctive signs allowing them to be identified

7 Trade Mark Harmonisation: The Community Trade Mark A single trade mark right with effect throughout the EU Decisions regarding the validity and infringement of community trade marks must have effect and cover the entire area of the Community (Recital 16 CTMR) A single set of laws and rules applicable throughout the EU Community Trade Mark Regulation Article 9 sets out the rights conferred by a trade mark Articles 12 (defences) and 13 (exhaustion) sets out limitations New CTM Reform

8 Trade Mark Harmonisation: The European Union Trade Mark The Community Trade Mark Courts Office for Harmonisation of the Internal Market Registration Cancellation A Community trade mark court located in each Member State Infringement / Declaration of non-infringement Cancellation (basis of counterclaim only) Court of Justice of the European Union Interpretative court Avoidance of Inconsistent Decisions In the interests of the harmonious administration of justice it is necessary to minimise the possibility of concurrent proceedings and to ensure that irreconcilable judgments will not be given in two Member States (Recital 15 Brussels Regulation)

9 Trade Mark Harmonisation: National Trade Marks National trade marks with effect in a single Member State only National laws should not have an affect on the internal market Trade Mark Directive Article 5 sets out the rights conferred by a trade mark Articles 6 (defences) and 7 (exhaustion) sets out limitations Silhouette International Schmied GmbH & Co. KG v Hartlauer [C-355/96]: Articles 5 to 7 of the Directive must be construed as embodying complete harmonisation of the rules relating to the rights conferred by a trade mark EFTA Countries (Norway, Iceland and Liechtenstein) Will also follow the Trade Mark Directive

10 Community Design and Copyright Harmonisation Designs Community Design Regulation Registered Community Design Unregistered Community Design Design Directive National designs Copyright Berne Convention TRIPS Term Directive Software Directive Database Directive

11 Patent Harmonisation:

12 Patent Harmonisation: Post-War Patent Unification International Patent Institute Search and Examination The Hague The Council of Europe Planning starts for a European Patent Office June 1947 Sept 1949

13 Patent Harmonisation: Objectives of the Council of Europe Three propositions: 1. A unitary patent coexisting with national patents 2. A system for granting bundles of national patents, supported by a central European patent authority 3. A convention requiring the voluntary unification of substantial aspects of national patent law

14 Patent Harmonisation: Post-War Patent Unification The Treaty of Rome New European Economic Community 25 March 1957

15 Patent Harmonisation: Patent Unification in the 1960s EEC working group Draft European Patent Convention Council of Europe Expert Group Draft Community Convention Early 1962 November 1963

16 Patent Harmonisation: Patent Unification in the 1970s Community Patent Convention (CPC) Signed in Luxembourg Patent Cooperation Treaty (PCT) Signed in Washington European Patent Convention (EPC) Signed in Munich June 1970 October 1973 December 1975

17 European Patent Convention (EPC) Signed in Munich Patent Harmonisation: Patent Unification in the 1970s Community Patent Convention (CPC) Signed in Luxembourg European Patent Convention (EPC) Enters into force October 1973 December th October 1977

18 Patent Harmonisation: Patent Unification in the 1980s Community Patent Convention (CPC) Signed in Luxembourg (again) December 1989

19 Patent Harmonisation: Patent Unification in the 2000s Community Patent Regulation (CPR) European Patent Litigation Agreement (EPLA) Unified Patent Litigation System (UPLS) died: May 2004 died: February 2007 died: March 2011

20 Patent Harmonisation: Patent Unification in the 2010s Regulation 1257/2012 on creation of a unitary patent protection Regulation 1260/2012 with regard to translation arrangements Agreement on a unitary patent court 17 th December th February 2013

21 Patent Harmonisation: Patent Unification in the 2010s Agreement on a unitary patent court Unitary Patent and Unified Patent Court 19 th February 2013 Q or more ratifications including FR, DE + UK Q1 2017

22 Patent Harmonisation: Objectives of the Council of Europe Three propositions: 1. A unitary patent coexisting with national patents 2. A system for granting bundles of national patents, supported by a central European patent authority 3. A convention requiring the voluntary unification of substantial aspects of national patent law

23 Patent Harmonisation: The Unified Patent Court (UPC)

24 Patent Harmonisation: The Unified Patent Court (UPC) Fees Fixed fee for all actions plus value-based fee for infringement actions valued above 500,000 Infringement action: 11,000 plus value-based fees up to 325,000 (for an action valued above 50,000,000). Revocation action: 20,000. No value-based fee. Counterclaims for revocation: same fee as the infringement action, up to a limit of 20,000. Appeal fees: same as the fees payable at first instance. Small and micro entities entitled to a 40% reduction on all Court fees.

25 Patent Harmonisation: One Patent One Patent Court 25 Countries

26 THE OPPONENT S CASE THE IP COURTS IN EUROPE ARE NOT UNIFIED

27 Are the Trade Marks Courts Really Unified? 1. Direct Conflicts Trade mark registration defence in UK Silhouette confirmed in Case C-561/11 (Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza) UK section 11(1) TMA A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered Colour per se in Portugal CJEU Libertel, para 42: A colour per se is capable of constituting a trade mark within the meaning of Art. 2 of the Directive Portugal: Art 223, 1, e): The following do not meet the requirements of the preceding article (composition of trade marks). colours, except when they are combined together or with graphics, wording or other elements in a particular and distinctive manner

28 Are the Trade Marks Courts Really Unified? 2. Interpretation Mühlens GmbH v Zirh International T-355/02 (CFI): Visual and conceptual differences outweigh Phonetic similarities: No likelihood of confusion 315 O 168/03 (Germany): Dismissed CFI decision stating Phonetic similarity should not be disregarded: Likelihood of confusion C- 206/04 P (CJEU): AG Opinion stressed importance of cooperation between the Court of Justice and the national courts

29 Are the Trade Marks Courts Really Unified? 3. No precedent system OHIM not bound by national decisions: examiners are not required, as a general rule, to give specific reasons for not following a national decision or a series of national decisions, OHIM Board of Appeal in True Value (R 85/1999-1, Dec. 15, 1999) the Office is not bound by decisions on a national level since it has to set its own European standard for judging the similarity of goods, OHIM Opposition Division in Knoll AG v. Pharma Mar S.A. (2236/2001, Sept. 13, 2001) the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. CFI in Wim De Waele (T-15/05, May 31, 2006)

30 Are the Trade Marks Courts Really Unified? 3. No precedent system Nestle v Cadbury OHIM: R-513/ The mark has acquired distinctiveness as a result of the use made of it UK: [2016] EWHC 50 (Ch) The claim of acquired distinctiveness fails

31 Are the Trade Marks Courts Really Unified? 4. Optional provisions and carve-outs Unregistered Trade Marks not covered Passing Off (United Kingdom) (similar to Art 9(1)(b) goodwill Misrepresentation Damage Unfair Competition (similar to Art 9(1)(c)) Reputation Misrepresentation or Unfair Advantage or Detriment Optional Provisions in Trade Mark Directive Trade marks with a reputation Effect of earlier unregistered rights on registrability Bad Faith

32 Are the Trade Marks Courts Really Unified? 5. No procedural harmonisation The result should be the same but the road you take can be very different Member States should also remain free to fix the provisions of procedure concerning the registration, the revocation and the invalidity of trade marks acquired by registration (Recital 6 of TMD) The ways in which likelihood of confusion may be established, and in particular the onus of proof, should be a matter for national procedural rules which should not be prejudiced by this Directive (Recital 11 of TMD). Unless otherwise provided in this Regulation, a Community trade mark court shall apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located (Article 101(3) CTMR).

33 Are the Trade Marks Courts Really Unified? 5. No procedural harmonisation Procedural Differences Specialist judges Timing Cost Evidence Surveys Witnesses Bifurcation PI Urgency

34 Are the Trade Marks Courts Really Unified? 5. No procedural harmonisation Forum Shopping (Claimant) Brussels Regulation National vs Community rights Parties PI Injunctive relief Forum Shopping (Defendant) Torpedoes Validity challenges Declaration of non-infringements Parties

35 Will the Unified Patent Court really be Unified? 1. To be or not be... in the UPC Article 83(3) UPC Agreement: The right holder shall have the possibility to opt out from the exclusive competence of the Court. No opt out for a European patent with unitary effect Can be requested at any time during the 7-year transitional period (unless an action has already been brought before the UPC) Can be withdrawn at any time (unless an action has already been brought before a national court)

36 Will the Unified Patent Court really be Unified? 2. The national courts are not fully harmonized Study of Patent Litigation Rejection of all invalidity arguments: UK 35% of all cases NL 38% DE 42% FR 56% Finding on infringement: NL 31% infr. / 68% non-infr. UK 45% infr. / 43% non-infr. DE 52% infr. / 44% non-infr. From: Stuart J.H. Graham & Nicolas Van Zeebroeck 17 Stan. Tech. L. Rev. 655 (2014)

37 Will the UPC really be Unified? 3. The shifting boundaries of Unitary Patent & UPC scope Hypothetical: First 13 Ratifications

38 Will the UPC really be Unified? 3. The shifting boundaries of Unitary Patent & UPC scope Hypothetical: Further Ratifications will result in Unitary Patents and UPC decisions covering anything from 13 up to 25 countries

39 Will the UPC really be Unified? 3. The shifting boundaries of Unitary Patent & UPC scope Hypothetical:...and at its maximum, all 28 EU Member States

40 Will the Unified Patent Court really be Unified? 4. Differences in national & European laws Potential areas of conflict include: Exemptions to patent infringement Contributory infringement Joint tortfeasors Differences in claim construction

41 Will the Unified Patent Court really be Unified? 5. Supplementary Protection Certificates Potential areas of conflict include: Application of the Neurim decision for use SPCs Application of the Seattle decision for term calculation Can a unitary patent serve as a basic patent? SPC with unitary effect based on a unitary patent

42 Will the UPC really be Unified? 6. The rise of national patent applications Hypothetical: Possible use of national patent applications which would never be subject to the competence of the UPC

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44 Are IP courts in Europe really unified?

45 FUTURE ASPIRATIONS

46 FUTURE ASPIRATIONS TRADE MARKS More CJEU referrals on points of unknown law Quicker CJEU guidance Courts to give more weight to other national and Community court decisions Agreed harmonised time targets from commencement to decision Specialist judges in specialist national courts Specific courts for specific matters/issues? Harmonisation of unregistered rights Procedural harmonisation

47 FUTURE ASPIRATIONS

48 FUTURE ASPIRATIONS PATENTS Short Term: Build confidence in the UPC system Shape case law in the UPC Engage with the Commission on the IPR Enforcement Directive review Actively contribute to the review of the SPC Regulation Long Term: Clear and consistent case law from the UPC Court of Appeal Greater legal certainty and predictability Will patents still be the exclusivity-driver for pharmaceutical industry?

49 Any Questions?