ExCo Helsinki
Adopted Resolution
24 September 2013
Resolution
Plain Packaging
AIPPI
Noting that:
1)
In several jurisdictions, legislation regarding a requirement for tobacco products
to have plain packaging is being considered, while in Australia such has in fact
been adopted. Furthermore, there has been public debate concerning similar
packaging restrictions for other legal consumer products, such as foods
considered to be unhealthy and alcohol.
2)
In previous questions, AIPPI has studied issues relating to restrictions of the
rights of the patentee for reasons of public interest and relating to the influence of
advertising restrictions on trademarks.
3)
These studies led to the adoption of
a) the principle by the Congress in Washington in 1956 (Q3) that (i) measures
(other than the granting of compulsory licenses) restricting the rights of a patent
holder can only be adopted when the compelling requirements of public interest
are not satisfied by the granting of a compulsory license and (ii) such measures
shall only be adopted provided that the patentee receives equitable
compensation;
b) the recommendation of a Resolution of the Executive Committee of Oslo in
1957 (Q3) and, in the following year (1958), a Resolution of the Congress of
Stockholm (Q3) expressing the wish for a new Article 5quater Paris Convention
with the purport that restricting measures more rigorous than the granting of a
license shall only be imposed if it is shown that the granting of a license is not
sufficient, and if an equitable compensation is paid to the patentee, while the
patentee must have the possibility of an appeal to the courts;
c) the Resolution of the Executive Committee of Sorrento in 2000 (Q151), which
in its consideration states that concerns of social policy may justify certain
advertising restrictions, which may however not be disproportionate or
unreasonable, and concludes that (i) restrictions on advertising for certain
products or services should not constitute an obstacle to the acquisition of
trademark rights for those products or services, nor should they constitute an
independent ground for cancellation and (ii) a ban on advertising may constitute
a justified reason for non-use of a trademark under Article 5C Paris Convention.
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4)
Furthermore, on December 17, 2010, AIPPI submitted its views on the possible
revision of the European Union´s Tobacco Products Directive 2001/37/EC,
concluding that the policy option of future legislation requiring plain packaging of
tobacco products be abandoned as its implementation would raise fundamental
issues under trademark law, facilitate counterfeit trade and be inconsistent with a
number of international treaty obligations. AIPPI also noted that its concerns
about plain packaging extend beyond the proposed regulations for tobacco
products and that plain packaging could lead to a greater restriction on trademark
use for many other products as well.
5)
The present Resolution concerns the restriction of the use of trademarks on
certain products or packaging thereof, in particular when this amounts to a
requirement of plain packaging.
Considering that:
1)
The term “plain packaging” (sometimes referred to as "standardised packaging")
refers in general to:
-
-
a prescribed shape, size and colour of packaging;
a prohibition of all branding and promotional elements (such as
trademarks, logos and product claims and other visual design elements)
other than the brand name; and
a prescribed display of the brand name, including as to typeface, font
size, colour and position.
2)
Article 15(4) TRIPS and Article 7 Paris Convention provide that the nature of
goods or services to which a trademark is to be applied shall in no case form an
obstacle to registration of the trademark.
3)
Article 17 TRIPS states that limited exceptions to the rights conferred by a
trademark (Article 16 TRIPS) may be imposed, provided that such exceptions
take the legitimate interests of the trademark owner and of third parties into
account; however, the public interest is not explicitly mentioned.
4)
Article 20 TRIPS provides that the use of a trademark in the course of trade shall
not be unjustifiably encumbered by special requirements, such as use in a
manner detrimental to its capability to distinguish the goods or services of one
undertaking from those of other undertakings.
5)
In the context of patent law, the public interest plays a role insofar as Article 31
TRIPS provides for the possibility of government use and compulsory licences in
the case of national emergency or other circumstances of extreme urgency or in
cases of public non-commercial use. However, a condition is that the right holder
shall be paid adequate remuneration (Article 31 (h) TRIPS).
6)
The continuous and extensive use of a trademark can have an effect on its scope
of protection (see e.g. Article 16 (2) and (3) TRIPS with express reference to
Article 6bis Paris Convention), and can contribute to the notoriety, reputation
and/or the goodwill/value of the mark. In consequence, a restriction in the nature
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of plain packaging amounts to a serious impairment of the trademark rights and
can cause considerable damage to the trademark right holder.
7)
There is a public interest in promoting measures aimed at the protection or
improvement of public health. At the same time, other interests may exist, such
as an interest in limiting trade in counterfeit goods.
Resolves that:
1)
The use of a trademark by a trademark right holder on products or packaging
thereof should in principle not be restricted in the sense contemplated by plain
packaging.
2)
Exceptionally such use may be restricted for public interest reasons, if:
(i) it is documented that such public interest reason exists and the restriction at
issue will likely have the intended effect; and
(ii) the restriction is neither disproportionate, nor unreasonable (and there are
thus no reasonable alternatives); and
(iii) the public interest reason outweighs other interests (such as, without
limitation, the interest of consumers to distinguish products, the interest in limiting
trade in counterfeit goods, the interest in legal certainty and the interest of
trademark right holders to protect their investment in trademarks registered or
acquired in good faith and lawfully).
3)
A restriction in the sense contemplated by plain packaging should not constitute
an obstacle to an application to register or registration of a trademark, for those
products, nor should it constitute a ground for cancellation.
4)
Non-use or limited use of a trademark by reason of plain packaging should not
provide a basis for cancellation of a registered trademark under Article 5C Paris
Convention.
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ExCo Helsinki
Adopted resolution
10 September 2013
Resolution
Question Q233
Grace period for patents
AIPPI
Noting that:
1) AIPPI has studied grace periods for patents on three prior occasions: Q75, Prior disclosure
and prior use of the invention by the inventor (Buenos Aires Congress of 1980, Moscow ExCo
of 1982); and as part of Q170, Substantive Patent Law Treaty (Lucerne ExCo of 2003).
2) Q75, Prior disclosure and prior use of the invention by the inventor, was considered at the
Buenos Aires Congress of 1980. A resolution was reached that declared in favour of the
principle of a grace period, but referred the question back to the Executive Committee for
further consideration of the implementation details:
1) [AIPPI]
a) is concerned that an inventor may publicly disclose his invention before filing a patent
application, thereby depriving himself of the ability to obtain valid patent protection;
b) recognizes that Article 11 of the Paris Convention provides very limited protection for a
disclosure made by an inventor at certain international exhibitions;
c) considers that it is in the public interest that the inventor should be given greater protection
from the consequence of a prior disclosure by himself, and
d) therefore considers it desirable that where a public disclosure of an invention originates
from an inventor, such public disclosure shall not be taken into consideration in assessing the
patentability of the invention, if the first patent application is filed by the inventor or his
successor within a certain period beginning from the disclosure, and declares in favour of the
principle of introducing such a period of grace under terms and conditions to be determined.
2) refers the question back to the Executive Committee for further consideration.
3) Q75 was again considered at the Moscow ExCo of 1982, which resulted in a resolution
favouring a 6 month grace period for all disclosures originating or derived from the inventor,
without a declaration requirement:
[AIPPI] declares in favour of the principle of introducing such a period of grace under the
following terms and conditions:
i. A disclosure originating or derived from the inventor shall not by itself
establish a right of priority but rather shall not be considered as part of
the state of the art as against the inventor or his successor in title if it
occurs within the grace period.
ii. Such disclosure shall include all acts of disclosure to the public by
means of a written or oral description, by use, or in any other way, not
withstanding where such disclosure takes place.
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2) The grace period shall be six months preceding the filing date of the patent
application, or, if a Union priority is claimed, the date of the first filing according to Art.
4 of the Paris Convention.
3) The burden of proof shall be on the applicant or patentee to prove that such
disclosure originated with the inventor or was derived from the inventor.
4) The inventor or his successor in title shall benefit from the grace period without being
required to deposit a declaration of such disclosure.
5) The grace period shall apply to patents of invention, inventor’s certificates and utility
models.
4) The question of grace period was taken up again at the Lucerne ExCo of 2003, as part of the
study of the Substantive Patent Law Treaty (Q170). The ExCo reached a resolution in favour
of a 12 months grace period, including a permissive provision regarding declarations:
[AIPPI] adopts the following Resolution:
the term for the grace period shall be 12 months before the filing date or, if a priority is
claimed, the priority date, i.e. the patent application shall be filed no later than 12 months after
the public disclosure coming directly or indirectly from the inventor;
a declaration by the applicant confirming that he is entitled to benefit from such grace period
may be required.
5) The passage of time and changes in relevant national laws make this topic ripe for reconsideration at this time, in particular:
a) the passage of the AIA in the United States, representing an important move by the US
towards global patent harmonization in many respects, including substantial changes to
the grace period;
b) the revisions to the grace period law in Japan;
c) the perceived change of view of national groups on this issue;
d) the work of the “Tegernsee Group”, attended by heads of offices and representatives from
Denmark, France, Germany, Japan, the UK, the USA and the EPO, which identified grace
period as one of four topics being key to harmonization.
Considering that:
1) A grace period of some kind is provided in most countries but national and regional laws differ
significantly with respect to the scope and duration of such grace period.
2) The term “grace period” refers to a length of time before the filing date of a patent application
during which certain disclosures of the invention, by the inventor or third parties may not be
considered to be prior art to the application. These types of disclosures are hereafter equally
referred to as “non-prejudicial” disclosures.
3) The differences in the national and regional laws on grace period create difficulties and
inefficiencies. Less knowledgeable applicants may either deprive themselves of the ability to
obtain valid patent protection in all desired countries or omit to take advantage of existing
grace periods in some territories.
4) Harmonization of the laws on grace period is considered to be more important in and of itself
than any of the particular details of scope and term of the grace period.
5) It is appropriate to reiterate some of AIPPI previous resolutions, in particular that:
a) it is desirable to establish a grace period for patents;
b) a grace period shall not establish a right of priority but rather shall enable to exclude from
the state of the art as against the inventor or his successor in title, disclosures which
occurred within the grace period;
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6) This question explores issues which had not been examined by the previous AIPPI
resolutions, in particular the policy behind the existing laws, the needs of various
stakeholders, the acts of third parties that could be covered by the grace period.
7) Harmonization on the grace period may be considered mainly along three possible directions:
a) a “limited type” grace period, covering disclosures by the inventor or his successor in title
only during specific exhibitions and covering disclosures from third parties against the will
of the inventor or his successor in title; such grace period is similar to that of several
existing laws known to have the most limited grace period;
b) a “safety-net type” grace period, covering any disclosures by the inventor or his successor
and disclosures from third parties deriving the invention from the inventor or his successor
in title; this is considered as a safety-net because it enables to treat said disclosures as
non-prejudicial, without excluding the risks for the applicant of third party disclosures; as a
result such “safety-net type” grace period still encourages the applicant to file an
application as early as possible;
c) a “priority type” grace period, covering any disclosures by the inventor or his successor
and disclosures from third parties deriving the invention from the inventor or his successor
in title; as well as disclosures from third party not deriving from the inventor if they come
after a first disclosure by the inventor; this type of grace period is viewed as creating a
right of priority to the inventor who is protected from third party disclosures made after his
own disclosure, thus possibly creating an incentive to early disclosures by the inventor,
rather than an incentive to early filing.
8) An internationally harmonized law on grace period should establish a fair balance between
the interests of patent applicants and the public.
9) In establishing this fair balance, it is necessary to consider changes in the research and
development environment which justify reconsidering the balance currently set by the existing
national and regional provisions, in particular:
a) the increase of collaborative research;
b) the increasing need of early disclosure of inventions by all class of stakeholders;
c) the practical difficulties in avoiding any effective disclosure.
10) In order to focus the question on the “grace period for patents” itself, this study did not
consider the related issue of prior user rights. AIPPI could valuably extend the work on the
related issue of prior user rights, under the recommended internationally harmonized grace
period.
Resolves that:
1) Internationally, a grace period should be established in order to exclude from the prior art
against the inventor or his successor in title, any disclosure to the public by means of a
written or oral description, by use, or in any other way, made:
a) by the inventor or his successor in title, irrespective of whether such disclosure is
intentional or not;
b) by a third party who derived the content of the disclosure from the inventor or his
successor in title, irrespective of whether such disclosure results from an abuse in relation
to or was made against the will of the inventor or his successor in title.
2) The grace period shall not exclude from the prior art:
a) disclosures from a third party which are not derived from the inventor or his successor in
title, even if said disclosures occur after a non-prejudicial disclosure;
b) disclosures resulting from the proper publication by an Intellectual Property Office of an
application for or the grant of an intellectual property right filed by the applicant or his
successor in title.
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3) The duration of the grace period shall be twelve months preceding the filing date of the patent
application or if priority is claimed, the earliest relevant priority date.
4) The applicant or his successor in title shall benefit from the grace period without being
required to deposit a declaration of such disclosure.
5) The grace period shall have no effect on the date of publication of the patent application.
6) When a disclosure is cited the burden shall be on the party claiming benefit of the grace
period to prove that the disclosure shall be excluded from the prior art.
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ExCo Helsinki
Adopted resolution
10 September 2013
Resolution
Question Q234
Relevant public for determining the degree of recognition of
famous marks, well-known marks and marks with reputation
AIPPI
Noting that:
1) In previous questions, AIPPI has studied issues relating to the extended protection
of certain marks, such marks being characterized in different terminology, such as
“well-known marks” protected without registration under the 1883 Paris
Convention (as amended) ("PC"); “marks with a reputation” protected under
European Union trademark law; and “famous marks” protected against dilution in
unrelated product fields under US law.
2) These studies led to the adoption of
a) The resolution of the Congress of London in 1960 (Q29) calling for a further
study on the protection of marks that are well-known within the meaning of
Article 6bis PC, as regards protection against use to distinguish any product
whatsoever;
b) The resolution of the Congress of Berlin in 1963 (Q29) that marks enjoying
high reputation should be protected against use or registration by third parties,
even in respect of different goods or services and even if they are not used in
the country where protection is sought, when such registration or use is liable
to be harmful to the proprietor of the mark;
c) The Resolution of the Executive Committee of Barcelona in 1990 (Q100)
regarding the protection of unregistered but well-known trademarks (Art. 6bis
PC) and protection of highly renowned trademarks, whereby it was resolved
that
(i)
the protection of well-known marks (Art. 6bis PC) should conform to
certain minimum standards, including
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- The concept of a well-known mark: a mark which is known to a large
part of those involved in the production or trade or use of the goods
concerned, and is clearly associated with such goods as coming from a
particular source.
- The mark should be well-known in the aforementioned sense in the
jurisdiction where protection is sought. However, in deciding whether a
mark is well-known, it is right to take into consideration the fact that the
mark is well-known internationally.
- No condition of use in the jurisdiction where protection is sought should
be required.
- These provisions should apply to service marks mutatis mutandis.
(ii)
marks having a reputation should be protected against detriment to the
distinctive character or reputation of the mark and
(iii)
marks having a high reputation (“marques de haute renommée” in
French; ”berühmte Marke” in German) should be protected against use
or registration without the need to prove any detriment to the distinctive
character or reputation of the mark; such marks are those which are
known to a large part of the public in general and which are of such a
nature and repute that there does not appear to be any justification for
the use or registration of the mark by others. Since such marks are
known to a large part of the public they are also necessarily well known
in the sense of Article 6bis PC.
a) The Resolution of the Congress of Paris in 2010 (Q214) (“Protection against
the dilution of a trademark”)
(i)
considering inter alia that trademark dilution is a departure from the
traditional trademark law principle of specialty (under which marks are
protected only with respect to the particular or similar goods or services
for which they are used and/or registered);
(ii)
calling for recognition of dilution by blurring (impairment or reduction of
the distinctiveness of the mark) and by tarnishment (harm to a mark’s
reputation); and
(iii)
stating in pertinent part that certain trademarks should be eligible for
protection against dilution irrespective of the identity, similarity or
dissimilarity of goods and services, subject to the following conditions:
- Such trademarks being defined as having recognition or fame among a
significant part of the relevant public. In determining such recognition or
fame, all relevant factors will be taken into account, e.g. the intensity,
geographical extent and duration of the use of the trademark, the
amount of sales under the trademark, the size of the investment made
by the undertaking in advertising and/or promoting the trademark and
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the market share held by the trademark, while distinctiveness will also
be a requirement to be determined according to normal principles of
trademark law; and
- The relevant public in determining the recognition or fame of a mark
being dependent on the goods and services in question, i.e. the public
concerned by the products or services covered by the trademark, which
can be a limited product market (“niche”).
3) However, in the working committee Q214 in Paris, it became clear that the issue of
the relevant public required further study and should be made the subject of a
separate question, leading to this question Q234.
Considering that:
1) The varying terminology and legal history of this subject are very complex,
differing widely from country to country, and making harmonization very difficult.
However, there is broad agreement on the basic policy that certain marks should
be given extended protection beyond the general regime of deception-based
protection and the specialty rule applicable to trademarks registered or used in the
country where protection is sought. This extended protection can be in the form of
protection, inter alia, against unauthorized use or registration of identical or similar
trademarks in countries where the trademark is not used or registered, and/or
unauthorized use or registration of such trademarks in unrelated product or service
fields (“dilution”);
2) The marks considered to be eligible for extended protection are given names and
characterizations in different countries and treaties including, but not limited to,
“famous marks”, “well-known marks” and “marks with reputation,” and there is
great diversity in the conditions for eligibility, the scope of such extended
protection, and the relevant public in which to determine whether the mark
qualifies for an extended protection;
3) Article 6bis PC provides, in pertinent part,
“ (1) The countries of the Union undertake, ex officio if their legislation so
permits, or at the request of an interested party, to refuse or to cancel the
registration, and to prohibit the use, of a trademark which constitutes a
reproduction, an imitation, or a translation, liable to create confusion, of a mark
considered by the competent authority of the country of registration or use to
be well known in that country as being already the mark of a person entitled to
the benefits of this Convention and used for identical or similar goods. These
provisions shall also apply when the essential part of the mark constitutes a
reproduction of any such well-known mark or an imitation liable to create
confusion therewith.”
The protection of a well-known mark under that provision does not require that the
mark be registered in the country where such protection is sought. Use of the
mark in such country should also not be required. Such extended protection under
Art. 6 bis PC was meant to be mandatory, but still limited by the specialty principle.
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4) TRIPS Article 16, in 1995, refers to Article 6bis PC in three respects:
a) its paragraph 2 declares said Art. 6bis applicable, mutatis mutandis, to
services;
b) the same paragraph states: “In determining whether a trademark is well-known,
Members shall take account of the knowledge of the trademark in the relevant
sector of the public, including knowledge in the Member concerned which has
been obtained as a result of the promotion of the trademark.”;
c) its paragraph 3 provides that said Art. 6bis “shall apply, mutatis mutandis, to
goods or services which are not similar to those in respect of which a
trademark is registered, provided that use of that trademark in relation to those
goods or services would indicate a connection between those goods and
services and the owner of the registered trademark and provided that the
interests of the owner of the registered trademark are likely to be damaged by
such use.” The mandatory minimal protection under Art 6bis PC of well-known
trademarks is thereby extended against dilution.
5) NAFTA Article 1708(6), 1992, also incorporates Article 6bis and provides: “No
party may require that the reputation of the trademark extend beyond the sector of
the public that normally deals with the relevant goods or services”.
6) The Joint Recommendation Concerning Provisions on the Protection of WellKnown Marks, adopted by the Assembly of the Paris Union for the Protection of
Industrial Property and the General Assembly of the World Intellectual Property
Organization in 1999 provides:
a) In Article 2(2)(a) that when considering the degree of knowledge or recognition
of the mark in the relevant sector of the public in determining whether the mark
is a well-known mark, at least three categories will be regarded as “relevant
sectors of the public”:
(i)
actual and/or potential consumers of the type of goods and/or services
to which the mark applies;
(ii)
persons involved in channels of distribution of the type of goods and/or
services to which the mark applies;
(iii)
business circles dealing with the type of goods and/or services to which
the mark applies.
It also provides in Art. 2(3)(a)(iii) that a Member State shall not require, as a
condition for determining whether a mark is a well-known mark, that the mark
is well-known by the public at large in the Member State.
The Joint Recommendation further provides in Art. 2(2)(b) that “where a mark
is determined to be well known in at least one relevant section of the public in
a Member State, the mark shall be considered by the Member State to be a
well-known mark.”
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b) The Recommendation calls for protection of well-known marks irrespective of
the goods and/or services at stake. In this respect, it distinguishes three types
of uses conflicting with the well-known mark. For two of them, the Member
States may require the well-known mark be well known by the public at large :
Art. 4(1)(b)and(c). This applies when the use of the mark is likely to impair or
dilute in an unfair manner the distinctive character of the well-known mark or
would take unfair advantage of that distinctive character. On the other hand,
such limitations by a Member State are not allowed when the use of the mark
would indicate a connection between the goods (or services) for which the
conflicting mark is used and the owner of the well-known mark, and such use
would be likely to damage the interests of the said owner.
The Recommendation suggests a link between the extent and/or type of
extended protection sought, on the one hand, and the definition of the sector of
the public in which the knowledge/recognition of the mark is relevant to the
qualification as well-known mark, on the other hand.
The comparative law overview resulting from the reports of the National
Groups indicates that such a link seems to exist in many national statutes and
cases.
c) However, the Recommendation allows a mark to be considered a well-known
mark even if none of the specific listed factors applies, including the degree of
knowledge or recognition of the mark in the relevant sector of the public, and
the decision may be based on other factors applicable in the particular case:
Art. 2(1) (c) , 4th sentence and 2(2)(d).
7) “Well-known marks” is therefore a legal term of art originating in Article 6bis of the
Paris Convention. But it is also a term often used in traditional trademark cases in
its “dictionary sense” simply to mean a mark with an existing marketplace impact
and recognition resulting from significant use and promotion. Even in traditional
trademark cases, which do not involve the question of extended protection, the
marketplace impact and recognition of a mark are considered as relevant factor.
8) “Marks with a reputation” (or “reputed marks”) is a legal term of art in European
Union trademark law, and is used in certain other countries as well, although
sometimes with different meanings or consequences under different national legal
regimes. Most (but not all) of the EU countries follow the relevant public definition
in the leading CJEU case of General Motors/YPLON. In that case, a court action
for an injunction, General Motors asserted its registered CHEVY trademark for
vehicles to stop the unauthorized use of CHEVY for detergents and cleaning
products. General Motors based its claim on the dilution provisions of European
trademark law. The CJEU held that the relevant public consists of those who are
concerned with the earlier trademark, which in turn depends on the particular type
of goods or services sold under the earlier trademark. The relevant sector of the
public must be considered and determined on a case-by-case basis.
9) “Famous marks” is a legal term of art in the U.S. Trademark Act, meaning a
category of marks eligible for protection against dilution, and is recognized in the
laws of certain other countries as well, although sometimes with different
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meanings or consequences under different national legal regimes. The relevant
public for “famous marks” depends on the legal consequences that follow from that
classification. In the United States, the term “fame” is used in at least two different
contexts. First, the “fame” of the plaintiff’s mark, in its dictionary sense, is one of
the standard list of non-exclusive factors to be considered in determining
infringement. But “famous” is also a defined statutory term of art, which must be
established in order for a mark to be eligible for dilution protection. This is the
pertinent definition here, and the relevant public for such extended protection is
defined by statute: “a mark is famous if it is widely recognized by the general
consuming public of the United States as a designation of source of the goods or
services of the mark’s owner.” In amending the US dilution statute, the US
Congress specifically rejected the proposal that a mark should be considered
famous if it is widely recognized only within the limited segment of the public
involved with the mark (“niche market”).
10) It appears from the above that defining the relevant public for determining whether
a mark is eligible for extended protection as a “famous mark,” or a “well-known
mark” or a “mark with a reputation” should not aim at a single harmonized regime
and should include consideration of the intended type of extended protection
against non-confusion infringement in each national case and could lead to
different conclusions depending on the national legal regime.
11) Therefore this resolution will focus primarily on the definition of the relevant public
in the case of well-known marks under Art. 6bis PC and Art. 16 TRIPS, which are
now ratified by most countries, and certain limited points concerning the other
legal terms of art, “famous marks” and “marks with a reputation,” which tend to be
more regional concepts even though they are within the scope of Q234.
Resolves that:
1) The relevant public for assessing whether or not the mark deserves the pertinent
protection must always be determined on a case-by-case basis, in light of the
goods and services to which the mark applies.
2) In the determination of the relevant public, all relevant circumstances regarding
their contact with, exposure to, or interaction with the mark or goods or services to
which the mark applies should be taken into consideration, such as:
a) age, gender, profession, geography, culture, special interests, education,
sophistication/skills, special needs and income of the purchaser or user, and
the intended market; and
b) the way the goods or services are advertised, marketed and sold, including but
not limited to ecommerce, the Internet, and other aspects of global advertising,
marketing and sales.
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A) Well-known marks under Art. 6bis of the Paris Convention and Art. 16(2)
and (3) TRIPS
3) The Joint Recommendation Concerning Provisions on the Protection of WellKnown Marks, adopted by the Assembly of the Paris Union for the Protection of
Industrial Property and the General Assembly of the World Intellectual Property
Organization (doc. WIPO n° 833) should be adhered to in its general approach to
the determination of whether a mark is a well-known mark in a given country (part
I) and the scope of protection (part II) to be accorded against conflicting marks
(art.4).
4) The relevant public for determining whether a mark is a “well-known mark” should
be that segment of the general public involved with the goods or services to which
the mark applies rather than the general public. At least the three following factors
should be considered, one or more of which could apply in a particular case, in
determining the relevant segment of the public, though these are not to the
exclusion of other possibly applicable factors:
a) actual and/or potential purchasers and/or users of the type of goods or services
to which the mark applies;
b) persons involved in channels of distribution of the type of goods or services to
which the mark applies; and
c) business circles dealing with the type of goods or services to which the mark
applies.
5) If the goods or services to which the mark applies are purchased, recognized, or
used by the general public, then the relevant public should be the general public.
6) In establishing that a mark is a well-known mark in the segment of the general
public that is involved with the goods or services to which the mark applies,
evidence that the mark is well-known to the general public should be taken into
consideration.
7) There should not be a quantified threshold for the number of people constituting
the relevant public.
8) This resolution is without prejudice to any more extensive protection that may be
enacted in any country for well-known marks as defined in Art. 6bis PC and Art.
16(2) and (3) TRIPS.
B) Regimes of non-confusion protection
9) Terminology should be recognized as a challenging but important variable in
dealing with famous marks, well-known marks, and marks with a reputation,
variations that incorporate the terms “notoriety,” “recognition,” and others, as well
as variations of these terms in different languages. These terms are often used
interchangeably, loosely or with varying meanings, but they have different places
in the structure of trademark law.
7
For the sake of clarity, the term “well-known marks” should be used as a legal
term of art by legislators and courts only for marks as referred to in Art. 6bis PC
and Art. 16 (2) and (3) TRIPS without prejudice to conferring upon such marks a
broader protection than provided by these provisions.
10) Countries should remain free to enact statutes and decide cases involving
extended protection to marks they deem appropriate, utilizing terminology of their
choice. Examples include protection against non-confusion infringement of “marks
with a reputation” in the European Union and other countries, and “famous marks”
in the United States and other countries. Countries should also remain free to
define the relevant public in such cases, for example the segment of the general
public involved with goods or services under the mark in the case of “marks with a
reputation,” and the general public in the case of the US dilution statute.
8
ExCo Helsinki
Adopted resolution
10 September 2013
Resolution
Question Q235
Term of copyright protection
AIPPI
Noting that:
1) This resolution addresses the general issue of the term of copyright protection,
particularly the need for a harmonised maximum term and whether different types
of copyrighted work should enjoy the same term of copyright protection.
2) This resolution does not relate to moral rights, related rights and/or traditional
knowledge.
3) AIPPI has previously studied questions where the term of copyright has been
addressed to some extent.
4) In the resolution on Question Q73 “Legal and Economic Significance of Industrial
Design Protection” (1985) it was stated that the protection of copyright law should
be given to these works for a reduced period, which could be fixed at 25 years.
5) In the resolution on Question 57A ”Protection of Computer-Software and
Integrated Circuits” (1985) it was noted that the Berne Convention (BC) sets the
term to the lifetime of the author plus 50 years after his death and AIPPI was of
the opinion that such a duration was not appropriate in the field of computer
software, and that it might be necessary to provide a shorter duration in line with
the reduced term of protection for photographs and works of applied art.
6) In the national reports and discussions preceding the resolution on Question
231"The interplay between design and copyright protection for industrial products"
(2012) almost all groups were of the opinion that the term of copyright protection
for industrial products, insofar as these are protected by copyright, should be the
same as the term of protection for other copyrighted works.
1
Considering that:
1) Almost all the national Groups report that their respective countries have ratified
the BC as amended, TRIPS 1994 and the WIPO Copyright Treaty (WCT), which
means that there is a substantial level of harmonisation in respect of the minimum
term of copyright.
2) Over the years the term of copyright has, with few notable exceptions, been
constantly extended in almost all countries.
3) There is no consensus among the national Groups in respect of what an
adequate term for copyright should be and whether such term could or should
differ between different types of work.
4) However, there is a substantial support among the national Groups in favor of a
maximum term for copyright. Among the concerns raised were a continued
extension of the term of copyright, competition between countries/regions in
respect of offering best protection for copyright holders and distortion of the
international market for copyrighted works.
Resolves that:
1) A maximum term of copyright should be introduced in relevant international
treaties governing this aspect of national copyright laws.
2) The maximum term of copyright should not exceed 70 years pma of the last
deceased author when the term is calculated on the basis of the life of the natural
person.
3) Different types of copyrighted work should in principle enjoy the same term of
copyright protection.
4) The term of copyright for industrial products and other applied art, insofar as
these are protected by copyright, should not differ from the term normally applied
to other copyrighted works.
2
ExCo Helsinki
Adopted resolution
10 September 2013
Resolution
Question Q236
Relief in proceedings other than injunctions or damages
AIPPI
Noting that:
1) AIPPI has studied issues related to injunctions (Q219, Q215, Q214, Q204/204P,
Q134, Q86 and Q80),
2) AIPPI has also studied issues related to damages (Q203, Q186, Q71),
3) AIPPI has not previously studied, as a dedicated question, forms of relief
available in cases of infringement of IPRs other than injunctions and damages
(additional relief). Additional relief may, in particular, include declaratory relief,
delivery up / surrender of goods, destruction, rectification, alteration of infringing
goods, corrective advertising, publication of judgments, orders to provide
information, and monetary relief (other than damages),
4) This resolution concerns additional relief available in inter partes proceedings of
a court or applicable administrative body (collectively, courts) following a finding
on the merits of the case.
Considering that:
1) The TRIPS Agreement provides in Part III Section 2 for certain forms of additional
relief, in particular evidence (Article 43), disposal or destruction (Article 46) and
information (Article 47),
2) There is broad support for the proposition that various forms of additional relief
should be available, that already being the case in most jurisdictions, and
harmonizing the availability of additional relief furthers the creation of effective
and appropriate means for enforcement of IPRs,
3) Additional relief should be used to achieve a fair and just result, having regard to
the circumstances of the jurisdiction and the case,
1
4) It creates legal certainty and reinforces an effective system for IPR enforcement
for all parties to understand the basis on which, in practice, additional relief has
been awarded or refused,
Resolves that:
1) It should be the right and responsibility of the IPR holder to request the relief it
believes to be appropriate to the circumstances of the case,
2) Courts should have the power to award additional relief for infringement,
3) In relation to monetary relief (other than damages), courts should have the power
to award accounts of profits, reasonable royalties and/or reparation, in each case
in jurisdictions in which the concept of damages does not already include them
4) Courts should also have the power to award legal costs,
5) All forms of additional relief should be available in principle for all forms of
infringement against all infringers, but the decision on whether and what is
awarded or refused should be made on a case-by-case basis,
6) Where the grant of additional relief is contested, courts should give reasons for
awarding or refusing additional relief, such reasons being sufficient to understand
the rationale,
7) The reasons for awarding or refusing additional relief should in general be made
available to the public (anonymised or not, in accordance with national practice),
8) Additional relief should be awarded or refused so as to achieve a fair and just
result, having regard to the circumstances of the jurisdiction and the case,
9) Additional relief should be appropriate to the circumstances, reasonable,
practicable, and proportionate,
10) Taken as a whole, damages, injunctions and additional relief should be effective
to prevent and/or dissuade further infringement,
11) Courts may, in appropriate circumstances, take the interests of third parties into
account, and may hear those third parties, when determining whether to award
additional relief,
12) The award in a particular jurisdiction of an order requiring corrective advertising
and/or publication of a judgment should have regard to whether and how, in that
jurisdiction, judgments are made available to the public,
13) In relation to an order for corrective advertising, in general it is preferable that:
a) courts’ procedures require that the party requesting the order also proposes
wording, placement and costs, and effects its publication,
b) the party against whom the order is made pays the costs of publication.
2
Summary of Resolutions adopted by Executive Committee in Helsinki 2013
Q233 Grace period for patents
AIPPI has passed resolutions relating to grace periods for patents in connection with two
prior working questions: Q75, Prior disclosure and prior use of the invention by the
inventor (Buenos Aires Congress of 1980 and Moscow Executive Committee of 1982);
and Q170, Substantive Patent Law Treaty (Lucerne Executive Committee of 2003).
However, recent changes to relevant national laws and renewed interest in
harmonization in this area have made the topic ripe for reconsideration by AIPPI at this
time.
AIPPI’s Executive Committee adopted a resolution in support of an internationally
harmonized grace period for patents having a duration of twelve months preceding the
filing date of the patent application or, if priority is claimed, the earliest relevant priority
date. The grace period would exclude from the prior art against the inventor or his
successor in title any disclosure to the public by means of a written or oral description,
by use, or in any other way, made: a) by the inventor or his successor in title,
irrespective of whether such disclosure is intentional or not; or b) by a third party who
derived the content of the disclosure from the inventor or his successor in title,
irrespective of whether such disclosure results from an abuse in relation to or was made
against the will of the inventor or his successor in title. The resolution clarifies that the
grace period shall not exclude from the prior art: a) disclosures from a third party which
are not derived from the inventor or his successor in title, even if said disclosures occur
after a non-prejudicial disclosure; and b) disclosures resulting from the proper
publication by an Intellectual Property Office of an application for or the grant of an
intellectual property right filed by the applicant or his successor in title. AIPPI resolved
that the applicant or his successor in title shall benefit from the grace period without
being required to deposit a declaration.
Q234 Relevant public for determining the degree of recognition of famous marks,
well-known marks and marks with reputation
Following an interesting discussion AIPPI’s Executive Committee adopted by a vast
majority of 99% a resolution on the relevant public for determining the degree of
recognition of famous marks, well-known marks and marks with reputation.
In short AIPPI resolved that the relevant public must always be determined on a caseby-case basis in light of the goods and services to which the mark applies. In the
determination all relevant circumstances should be taken into consideration.
Furthermore, AIPPI resolved that the term “well-known marks” should be used as a legal
term of art only for marks as referred to in Article 6bis Paris Convention and Article 16
(2) and (3) TRIPS.
1
AIPPI affirmed WIPO’s “Joint Recommendation Concerning Provisions on the Protection
of Well-Known Marks” in its general approach to the determination of whether a mark is
well-known in a given country (part I) and the scope of protection (part II) to be accorded
against conflicting marks (Article 4).
AIPPI further resolved that the relevant public for determining whether a mark is wellknown should be the segment of the general public involved with the goods or services
to which the mark applies rather than the general public. But AIPPI also acknowledged
that in certain cases, if the goods or services to which the mark applies are purchased,
recognized, or used by the general public, then the relevant public should be the general
public at large.
Q235 Term of copyright protection
AIPPI has not previously studied term of copyright protection as a stand-alone question.
The term of protection of copyright is governed by international treaties, which have set
minimum standards of protection, such as the Berne Convention amended in 1979,
TRIPS 1994 and the WIPO Copyright Treaty 1996. The maximum term, however, has
not been set by such treaties. The term has been adjusted in an upward direction in
many countries, some of which were brought about by Free Trade Agreements (FTA).
AIPPI resolved that a maximum term of copyright should be introduced in relevant
international treaties and that the maximum term of copyright should not exceed 70
years pma of the last deceased author when the term is calculated on the basis of the
life of the natural person. AIPPI also resolved that different types of copyrighted work
should in principle enjoy the same term of copyright protection and that the term of
copyright for industrial products should not differ from the term normally applied to other
copyrighted works.
Q236 Relief in proceedings other than injunctions or damages
AIPPI has previously passed resolutions relating to injunctions and damages but has not
considered, as a dedicated question, other forms of relief available where intellectual
property rights are infringed. Such additional relief may include declaratory relief,
delivery up/surrender or destruction of goods, rectification, alteration of infringing goods,
corrective advertising, publication of judgement, orders to provide information and
monetary relief other than damages.
By a majority of 98%, AIPPI's Executive Committee adopted a resolution concerning
additional relief available in inter partes proceedings of a court or like administrative
body following the findings on the merits of the case. In summary, AIPPI resolved that
courts should have the power to award additional relief that is appropriate to the
circumstances, reasonable, practical and proportionate. In combination with damages
and injunctions, additional relief should be effective to prevent and/or dissuade further
infringement. In appropriate circumstances, courts may take into account the interests
of, and hear third, parties when determining whether to award additional relief
AIPPI also resolved that, in contested cases, courts should give reasons for rewarding
or refusing additional relief and such reasons should in general be publicly available.
The manner in which judgements are made available should have a bearing on orders
requiring corrective advertising.
AIPPI also resolved the court should have the power to award legal costs.
2
Q212 Plain Packaging
In several jurisdictions, legislation regarding a requirement for tobacco products to have
”plain packaging” (sometimes referred to as "standardised packaging") is being
considered, while in Australia such has in fact been adopted. In a previous question,
AIPPI has studied issues relating to the influence of advertising restrictions on
trademarks. Furthermore, on December 17, 2010, the Bureau of AIPPI submitted its
views on the possible revision of the European Union´s Tobacco Products Directive
2001/37/EC. However, AIPPI has not previously passed a resolution regarding plain
packaging.
AIPPI’s Executive Committee now resolved that the use of a trademark by a trademark
right holder on products or packaging thereof should in principle not be restricted in the
sense contemplated by plain packaging. Exceptionally such use may be restricted for
public interest reasons, but only if (i) it is documented that such public interest reason
exists and the restriction at issue will likely have the intended effect; and (ii) the
restriction is neither disproportionate, nor unreasonable (and there are thus no
reasonable alternatives); and (iii) the public interest reason outweighs other interests
(such as, without limitation, the interest of consumers to distinguish products, the
interest in limiting trade in counterfeit goods, the interest in legal certainty and the
interest of trademark right holders to protect their investment in trademarks registered or
acquired in good faith and lawfully).
AIPPI further resolved that a restriction in the sense contemplated by plain packaging
should not constitute an obstacle to an application to register or registration of a
trademark, for those products, nor should it constitute a ground for cancellation. Equally,
non-use or limited use of a trademark by reason of plain packaging should not provide a
basis for cancellation of a registered trademark under Article 5C Paris Convention.
Q162 Rules of Procedure
In June 2013 the Preparatory Committee published a draft of the Rules of Procedure of
the Unified Patent Court (UPC) and invited stakeholders and interested parties to submit
written comments until 1 October 2013. In July 2013, the Bureau decided to participate
in this important project and to this end set up a task force and invited all National and
Regional Groups to submit comments. In August, the task force prepared consolidated
comments which were again open to comments by the contributors and other interested
parties. In Helsinki, an introductory session was held followed by a drafting session
where the consolidated comments were discussed. A number of controversial issues
emerged where no consensus could be found. These points were voted upon by AIPPI’s
Executive Committee. Some of these issues included the following:
According to Article 33(3) of the Agreement on the UPC the local or regional divison has
the discretion to refer the counterclaim for revocation to the central division and suspend
or proceed with the action for infringement (”bifurcation”). AIPPI resolved that where the
panel of the local division decides to bifurcate, it should have to give an opinion on the
reasons for bifurcating. Moreover, in deciding on the bifurcation, the panel of the local
division should consider whether in a particular case scope of protection and validity
must be jointly considered. AIPPI further resolved that where the local division decides
to stay the action for infringement following bifurcation the local division must give
reasons why it sees a high likelihood that the relevant claims of the patent will be held
invalid. AIPPI also expressed some concern at the possibility of an “injunction gap” in
3
bifurcated actions and suggested that the central division be required to accelerate
bifurcated revocation claims.
AIPPI noted that a one day oral hearing may not suffice depending on whether both
infringement and validity is in issue; the number of patents in suit; the number of parties
(especially defendants); and the complexity of the technology. AIPPI also welcomed the
intention to bring UPC actions to trial within one year and resolved that stays should
always be discretionary and ordered only exceptionally. Finally, AIPPI resolved that the
system need not include an elaborate system of protective letters.
4
10 September 2013
Agreement on a European Patent Court
Consultation on Rules of Procedure
Comments and Recommendations of AIPPI on
Preliminary set of provisions for the Rules of Procedure (“Rules”) of the Unified
Patent Court – 15th draft of 31 May 2013
Rule 2 - Supplementary protection certificate
It is unclear whether Article 83(3) of the UPC Agreement also covers the applicant for an
SPC. With regard to patents the Agreement refers to “proprietor or applicant”, but with regard
to SPC only to “holder”. Since it is important to have the ability to opt out of an SPC
application in order to obtain legal certainty, this issue should be resolved in Rule 2 by
adding:
3. A holder of an SPC as meant in article 83(3) of the UPC Agreement shall be understood
as to mean both a proprietor of a granted SPC and an applicant for such SPC.
It is also unclear whether if a proprietor opts out its European patent this will automatically
include the subsequent SPC of that patent. This will be important for two reasons. First, it
avoids a second fee being payable, and also means that where patents are at an early stage
of their life, and no application for an SPC has been made before the expiry of the
transitional period, the SPC does not become subject to the UPC when the predecessor
patent has been opted out. This may be clarified by the following:
4. Applications to opt out European patents shall automatically extend to SPCs of such
patents upon the expiry of the European patent.
The same regime as for patents should equally apply to SPCs. In SPC litigation, the
discussion concerns the validity of the SPC and of the patent as well as the scope of the
latter. It would not be acceptable that the SPC be subject to the UPC but not the basic patent
because in such case the UPC could not decide on the validity of the patent.
This could be solved by adding in Rule 2 language along the following lines:
“5. Applications to opt out SPC and applications to withdraw the opt-out of the SPC shall
automatically extend to the European patent, upon expiry of the European patent.
Applications to opt out or opt-in the SPC shall not enable to submit the SPC to a different
regime than the patent.”
1
Rule 5 – Opt out
(1) Paragraph 1 of Rule 5 should be completed as follows: "the Application shall be deemed
to be made in respect of each of the contracting member states, absent language to the
opposite …"
The Rules should also make clear that the Proprietor may act through its representatives:
“The Application may be lodged by a representative appointed by the proprietor pursuant to
Articles 48(1) or (2) of the Agreement or Article 134(1) of the European Patent Convention”.
Paragraph 1 of Rule 5 allows the opt-out to be made for only some national designations:
“The Application shall be made in respect of each of the contracting member states in which
the European patent is owned by the proprietor or proprietors in question“.
This Rule should be deleted as the opt-out should be possible only for all the designated
countries. The last sentence of Paragraph 2(b) of Rule 5-2-b) would consequently have to be
deleted as well.
(2) Consequential to the above amendment it should be added at the end of paragraph 2(a):
“where the Application is lodged by a representative, the postal and electronic address of the
representative”.
(5) Paragraph 5 of Rule 5 should be completed as follows: "In the event that an action has
been commenced before the Court in respect of a patent …"
(6) AIPPI opposes the charging of an opt-out fee as well as a fee to withdraw an opt-out.
Applicants and patent owners could not foresee any additional fees when filing and
prosecuting their applications, and by the grant of the EPO they had obtained the right to
enforce their patents before the national courts. The retroactive effect of such a fee therefore
constitutes a violation of their property rights, and there is no basis for such fees in Article
83(3) and Article 70(1) only provides for fees for parties to proceedings before the Court).
The Rule should also clarify that the proprietor does not have to withdraw the opt out in
respect of all its patents as the rule may presently be read (especially if the proprietor has
filed one opt-out application in respect of numerous patents for administrative ease).
Therefore the Rule should refer to “one or more” (not “the”) patent(s) or application(s) as the
subject of the opt-out.
(9) AIPPI welcomes that filing applications to opt out will already be possible before the
agreement comes into force.
AIPPI supports the Drafting Committee´s Note to Rule 5.
Rule 7 - Language of written pleadings and written evidence
AIPPI recalls that proceedings before the UPC shall be affordable also for SMEs. The rule of
Rule 7 (1) that documents, including written evidence, shall be lodged in the language of the
proceedings should be restricted to situations where either the judges of the division or one
of the parties depend on such translations. Reimbursement of cost should be proportionate
2
in the sense that a division should dispense with translation requirements under Article 51.1
of the UPC Agreement whenever possible and that only translations which have become
relevant for the decision or which have been ordered by the Court must be reimbursed.
The same should apply to the Appeal Procedure and Rule 232. In this context Rule 232 (1)
seems to be too harsh for a situation where the adverse party and the judges agree on the
use of the language of first instance.
Rules 9 and 300 - Time periods
Calculation
Article 73(2) provides that certain orders may be appealed “within 15 calendar days” and
specifies that this period shall be calculated from “the notification” of the order.
The Rules of Procedure provide a number of time periods in “days” (e.g. Rules 16.2, 27.2,
39.1 and 323.2), “calendar days” (Rules 331.1) or “working days” (Rule 321.3 and 5). Rule
300 specifies in (e) that “day shall mean a calendar day unless expressed as a working day”.
Rule 300 further provides in (f) and (g) general directions for the calculation of calendar days
and working days, respectively.
Some Rules specify from when a time period shall be calculated, as e.g. Rules 19.1 and 23
”of service of the Statement of claim”, Rule 19.5 ”of service of notification” and Rules 221.1
and 371.4 ”of service of the decision or order”. In general, however, the Rules (e.g. Rules
16.3, 27.2 and 4, 32.3 and 39.1) do not specify from when a time period shall be calculated.
There is also no general direction in this respect except the general provisions in Rules 271
and 276 with regard to service of Statements of claim and orders and decisions, respectively.
Time periods are in practice crucial elements for the parties and clarity and consistency in
this respect have a high practical value. There is no apparent reason why not all time periods
shorter than a month should be stated in “days”, meaning “calendar days” according to Rule
300(e), which would avoid the risk of confusion. Anyhow, it must be specified in a clear and
consistent way from when time periods shall be calculated, preferably in a general provision.
Extensions
Rule 9.3 provides that the Court may, subject to paragraph 4, on a reasoned request by a
party:
(a) extend, even retrospectively, a time period referred to in these Rules or
imposed by the Court;
Nevertheless, Rules 23, 39.1, 56, 65 and 321.3 and 5 provide that the time period stated
there “may be extended by the judge-rapporteur on a reasoned request”, which may be
justified as a reminder in situations where the possibility of an extension is particularly
relevant. It is, however, unfortunate that confusion is caused by other time periods which
could be interpreted e contrario to mean that they are not extendable. In order to avoid such
misunderstandings, said Rules should be amended to refer explicitly to Rule 9.3(a).
Rule 9.2 – Powers of the Court
It should be further determined, how the court should interpret the term “in due time”. Given
the short timelines in Rules 23, 29 and 32 it seems advisable to further define under which
circumstances a party must fear severe consequences. The following sentences might be
added:
“A step, fact, evidence or argument is not filed in due time, if it delays the procedure, in
particular, requesting a further oral hearing or a further submission of the other side to
3
comment on such a new measure, unless the filing party was not able to execute the step,
present the fact, evidence or argument before.”
Rule 14.2 - Language regime
Rule 14.2 provides that the statement of claim in proceedings before a local or a regional
division which has designated two or more languages shall be drawn up in the language in
which the defendant normally conducts its business. This rule is in contradiction to the
language regime which applies when the plaintiff elects the local court of the place of
infringement under Article 33(1)(a) UPC. This rule creates another uncertainty even if the
plaintiff chooses the division of the seat or domicile of the defendant, since it often will be
difficult for the plaintiff finding out in which language “the defendant normally conducts its
business”. Many internationally active companies today choose English as the company’s
working language, even if they have their seat or establishment in a country other than the
UK. Uncertainty about which language to choose when filing suit would be a severe deterrent
for plaintiffs to use the UPC. This language rule is also not foreseen in the UPC Agreement
and should therefore be deleted.
Rule 20 – Decision or order on a Preliminary objection
The reference in (1) to rule 19.4 should be to 19.5
Rule 25.3 - Action by licensee
If an exclusive licensee starts an infringement action and the defendant brings a
counterclaim for invalidity, such counterclaim is served on the patent owner. Rule 25.3 now
provides that the patent owner thereby becomes a party to the proceedings, regardless of
whether he appears in court. This rule does not sufficiently protect the position of defaulting
defendants as protected under the Brussels Regulation and must therefore be modified. The
rule should prescribe that before a patentee becomes a party, there must be an application
to join the patentee which must be served upon the patentee.
Rule 31 – Value-based fee for the dispute including the Counterclaim for revocation
A counterclaim for revocation is a defensive action and the value basis for Court fees should
in principle be the value from the point of view of the defendant and as a part of the
infringement dispute. Thus, the fact that the patent may have importance beyond the dispute
with the defendant and that the importance of the validity issue may be very different from
the point of view of the patentee should not influence the value on which the fee is based, i.e.
the value of the actual dispute. Otherwise, fair access to justice for an SME that the patentee
has elected to direct the action against may be seriously hampered by the fact that a fee
based on the value of the patent outside the dispute may be prohibitively large. On the
contrary, the value limited to the validity issue in the actual dispute will normally at least not
exceed the value of the infringement issue.
Rule 37 (4) – Application of Article 33(3) of the Agreement
Rule 37 (4) deals with the case where the local division decides to send the counterclaim for
invalidity to the central division and stays proceedings. The rule does not mention whether
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the local division must give reasons - or not - why it sees „a high likelihood that the relevant
claims of the patent (or patents) will be held to be invalid”.
AIPPI is of the opinion that the local division should at least give a short reasoning to that
effect which will of course not be binding on the central division.
Rule 37 - Application of Article 33(3) of the Agreement
AIPPI suggests some amendments that would prevent Patent Assertion Entities from
misusing bifurcated proceedings to obtain exorbitant settlements based on low quality
patents that often are subsequently found invalid. The proposed text would allow the Local or
Regional Division to stay infringements proceedings if there is a reasonable likelihood that
the patent in question will be declared invalid by the Central Division.
Rule 37 would then read as follows (additions to the wording of Rule 37 bold, deletions in
brackets):
4.
Where the panel decides to proceed in accordance with Article 33(3)(b) of the
Agreement, “[…] the panel may stay the infringement proceedings pending a final
decision in the revocation procedure and shall stay the infringement proceedings where
there is a reasonable likelihood that the relevant claims of the patent (or patents) will
be held to be invalid on any ground by the final decision in the revocation procedure. In
this context, reasonable likelihood means that the legal challenge against the
validity of the patent must be more likely than not to succeed; a predominant
likelihood that the patent will be revoked is not required.”
In the seventh draft Rules of Procedure dated 27 January 2012, the corresponding Rule
directed the panel “to aim at ensuring consistent practice across all regional and local
divisions with respect to the application of [Article 33(3)] of the Agreement”. This Rule was
consistent with the Agreement and ensured uniform application under the Agreement.
However, this provision has later been deleted.
Where the panel of the local division decides to proceed in accordance with Article 33(3)(b)
of the Agreement, the panel should have to give an opinion on the reasons for separating the
action for infringement and the counterclaim for revocation (“bifurcation”).
In deciding on the bifurcation, the panel of the local division should consider whether in a
particular case scope of protection and validity must be jointly considered.
Rules 38 – Written procedure when the central division deals with a Counterclaim for
revocation under Article 33(3) (b) of the Agreement, 39 – Language of the proceedings
before the central division and 40 – Accelerated proceedings before the central
division (Rules 101 and 113) – “Timings”
Defendants are concerned at the possibility of an “injunction gap” in bifurcated actions. We
note the deletion of Rule 40(b) of the 14th draft. This required the central division to
accelerate bifurcated revocation claims. This rule should be reinstated to reduce the
possibility of an “injunction gap”. We further suggest that Rule 38(d) is modified by additional
words at the end of the rule: “...which shall be as nearly at the same time as the oral hearing
of the infringement action as is practically possible (ideally no longer than three months)”.
5
We are concerned that Rule 113 includes a presumption of a one day oral hearing. There is
no need to fetter judicial flexibility, and clearly the length of an oral hearing may depend on
numerous factors including whether only infringement is in issue, or both infringement and
validity; the number of patents in suit; the number of parties (especially defendants); and the
complexity of the technology.
Rule 43 – Action to be directed against the patent proprietor
Typing error: “defendant” in Rule 44.3 should be “claimant
Rule 46 – Language of the Statement for revocation
Typing error: None of the references to Rule 14 exists
Rule 60 – Declarations of non-infringement
The references to licensees in sub-rule 1 should be deleted as they imply that a licensee can
give an acknowledgement of non-infringement on behalf of a patentee.
Rules 70.3 – Revocation actions and subsequent infringement actions in a local or
regional ,division (Article 33(5) of the Agreement (118 and 295) – “Stays”
We note the intention to bring UPC actions to trial within one year (see preamble to Rules).
Stays are therefore contrary to this basic principle and should be ordered only exceptionally.
Further, mandatory stays should be avoided: a stay should always be discretionary unless
explicitly required by the UPC agreement (e.g. Article 33(6)).
We think that there should be no mandatory stays at all pending EPO decisions, and no
discretionary stays other than when a rapid decision is expected. This is, of course, due to
the long duration of many EPO proceedings.
Rule 295(a) should make a specific reference to the expectation of a rapid decision of the
EPO. We believe that with this general provision in place, there is no need for any other rules
to say anything about stays pending EPO proceedings. Hence, reference to EPO decisions
should be deleted from Rule 118.3(b). If this is not done, then there may be a mandatory
stay under Rule 118.3(b) pending the EPO decision, even though the EPO decision may not
be expected for many years. This would be unacceptable and contrary to Article 33(10).
Also in relation to Rule 118.3(b), we do not agree that actions “shall” be stayed where there
is only a reasonable likelihood of claims being held invalid. We would prefer the previous
wording. However, a better option still would be to delete Rule 118.3(b) – the Court could still
make use of its general power to stay under Rule 295. We would point out that Rule 118
relates to the oral proceedings, and we believe that a decision to stay the proceedings at that
stage should only be exceptional. A version of Rule 118.3(b) might be included in Rule 37
(minus the reference to the EPO) to guide decisions to stay infringement cases at that stage.
In relation to Rule 70.3, we see no reason why a stay should be mandatory when a
revocation action is followed by a claim for infringement started in a different division. We
note that Article 33(5) does not require this in contrast to Article 33(6), and hence making any
stay mandatory is contrary to the clear intentions of those drafting the UPC Agreement. A
mandatory stay is therefore arguable ultra vires, and is certainly not needed. Further, new
Rule 70.4 is only a partial answer to this issue. If Rule 70.3 is maintained, then
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notwithstanding Rule 70.4, the “judicious” timing of commencement of an infringement action
may cause postponement of a trial of a revocation action without any flexibility. It is important
to allow potential defendants to “clear the way” efficiently, and hence this rule is contrary to
that objective.
Rule 101 – Role of the judge-rapporteur (Case management)
See comments under Rules 38-40.
Rule 113 – Duration of the oral hearing
See comments under Rules 38-40.
Rule 118 – Decision on the merits
AIPPI is of the opinion that the wording in paragraph 2 needs improvement. It is not clear
whether the three conditions „acted unintentionally […]“, „if execution […] disproportionate
harm“ and „damages and/or compensation […] reasonably satisfactory” should be
understood cumulatively or alternatively. Currently, we assume that the inserted "and"
between the second and the third condition, is meant as an AND conjunction for all three
conditions.
AIPPI believes that this is not sufficient. An adjudicating court should have more freedom in
its judgment and hence have the possibility not to grant injunctive relief
(i) if execution of the orders and measures in question would cause such party
(defendant) disproportionate harm (condition 2); or
(ii) if damages and/or compensation to the injured party appear to be reasonably
satisfactory to the Court (condition 3).
The replacement of the „and“ by an „or“ would lead to a symmetric and fair consideration of
the interests of both the defendant as well as the plaintiff. It would also give the court the
possibility to make its decision based on the specific circumstances of each case.
Regarding Condition 1, we suggest to also connect it with an “or”, alternatively it could be
deleted as it seems disproportionate to have this condition standing alone.
In consequence of the suggested amendment to Rule 37.4, Rule 118.3 should also be
amended as follows:
3. If a revocation action is pending before the central division, the local or
regional division: (b) may stay the infringement proceedings pending a
decision in the revocation procedure or a decision of the European Patent
Office and shall suspend the infringement proceedings if it is of the view
that there is a reasonable likelihood that the relevant claims of the patent
(or patents) will be held to be invalid on any ground by the final decision
in the revocation procedure or of the European Patent Office”.
It is proposed that wording along the lines of “The Court, where possible, will rule on all the
grounds of revocation pleaded” be added to avoid cases having to come back from the Court
of Appeal if the one ground of revocation that has been ruled on has been overturned.
See comments under Rule 70.3.
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Rules 150-155 Cost Orders
Article 69 (1) provides that reasonable and proportionate legal costs and other expenses
incurred by the successful party shall, as a general rule, be borne by the unsuccessful party
up to a ceiling set in accordance with the Rules of Procedure. Thus, up to said ceiling, in
addition to costs for legal representation all of the party’s reasonable and proportionate
expenses are recoverable.
According to Rule 150.1, a cost order may be the subject of separate proceedings following a
decision on the merits and, if applicable, a decision for the determination of damages.
However, according to Rule 151, a successful party wishing to seek a cost order shall within
one month of service of the decision lodge an Application for a cost order. Thus, the Rules of
Procedure make separate proceedings for a cost order obligatory.
However, the assessment of costs and distribution between the parties is best conducted by
the court in immediate connection with the trial, when the case is tried on the merits, and
may often conveniently be decided without being postponed to later separate proceedings. It
is also an advantage that both parties submit their substantiated claims for legal costs and
other expenses at the trial, which will contribute to a fair assessment of the reasonable and
proportionate costs, irrespective of whether they are dealt with in the main case or in
separate proceedings. Separate proceedings for a cost order should therefore be avoided
when possible rather than be obligatory.
Rule 172 (2) – Duty to produce evidence
AIPPI recommends to amend this rule – for clarification purposes – that a party or its
representative must not contest a fact from which the party knows it is true. So the following
sentence should be added:
“The parties are to make their declarations as to the facts and circumstances fully and
completely and are obligated to tell the truth.”
Rule 194 Examination of the Application for preserving Evidence
It should be specified that the Court may apply Rule 194 (1) (c) and (d), namely summon the
claimant to an oral hearing which defines the duty of disclosure of the applicant, only if the
claimant asked that the measures to preserve evidence be ordered ex parte. The Court must
not be able to order measures to preserve evidence ex parte if the claimant did not ask so.
Rule - 206.4 Ex parte provisional measures
AIPPI approves Rule 206.4 which defines the duty of disclosure of the applicant more
precisely in ex parte proceedings. It provides that the applicant shall be under a duty to
disclose any material fact known to it which might influence the Court in deciding whether to
make an order without hearing the defendant. This also includes pending proceedings and/or
unsuccessful attempt in the past to obtain provisional measures in respect of the patent or
patents.
See also Rule 172
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Rule 207 (2) – Protective letter
We believe that the system need not include an elaborate system of protective letters and
this rule should be deleted.
Rule 209 Examination of the Application for provisional measure
Ex parte relief should only be granted in the most exceptional cases. The rules should make
it clear that unless the circumstances of the case are that there is a risk that upon notice of
an application for a preliminary injunction the defendant may, for example, take steps to hide
or destroy evidence of infringement, even where the matter is very urgent, some form of
notice should be given by the applicant party to the other side by electronic means or by
telephone, or in default of that by the Court so that representations can be given (if
necessary by telephone).
It should be specified that the Court may apply Rule 194 (1) (c), namely summon the
claimant to an oral hearing without the presence of the defendant, only if the applicant asked
that the preliminary injunction be ordered ex parte. The Court must not be able to order
preliminary injunction ex parte, if the applicant did not ask it to do so.
Rule 211.2 - Decision on the Application for provisional measures
While the general possibility of preliminary measures is welcomed, Rule 212 (b) providing for
a seizure or delivery up of goods suspected of infringing to prevent their entry into or
movement within the channels of commerce, raises concerns.
AIPPI believes that provisional measures are by definition of a preliminary nature and cannot
take into account all evidence. A defendant who is under the obligation to institute a recall
(“delivery up of goods suspected of infringing”) for goods which are no longer in his
possession would suffer an enormous loss of prestige and money if afterwards the
infringement would be denied. Therefore a recall goes too far and is disproportionate under
the circumstances. An injunction to prevent future sales should be regarded as sufficient and
past sales should be dealt with by damage claims in main proceedings.
AIPPI also believes that there should be a specific requirement for urgency and that there
should be no undue delay in applying for interim relief. Also, the panel “should” rather than
“may” take the interests of the parties into account. (Note: the provision in r.209.2 appears to
relate only to the exercise of the discretion under r.209.1.) The following amendments are
suggested to rule 211 as follows:
“1.
The Court may in particular order the following provisional measures:
(a) injunctions against a defendant,
[…]
2.
In taking its decision the Court shall be satisfied with a high degree of
certainty that the applicant is entitled to commence proceedings pursuant
to Article 47, that the patent in question is not obviously invalid and that his
right is being infringed, or that such infringement is imminent.
3.
In taking its decision on the Application for provisional measures, the
Court shall weigh up the interests of the parties and in particular take into
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account the potential harm for either of the parties resulting from the
granting or the refusal of the injunction as well as the public interest.”
Rule 220 (2) – Appealable decisions
It has been suggested by some delegations that Rule 220 (2) should clarify the uncertainty
which allegedly exists according to the RoP drafting group of experts due to the language of
Article 73(2)(b)(ii) of the Agreement (meaning of “court”).
AIPPI is of the opinion that the language of Article 73(2)(b)(ii) of the Agreement (meaning of
“court”) is sufficiently defined by Art 6(1) as comprising the Court of First Instance and the
Court of Appeal is clear, so either may grant leave for an appeal against procedural
decisions or orders according to Rule 220 (2). Therefore a clarification in Rule 220 (2) as
proposed by some stakeholders seems unnecessary, but the view of AIPPI on this point
should become part of the record.
On the other hand, AIPPI believes that the rule may further spell out a presumption that the
filing of an appeal in this specific case without leave of the first instance is presumed as a
request for the grant of appeal by the Court of Appeal in order to resolve uncertainties,
already because of the short deadline of 15 calendar days of Rule 221.
Rule 221 – Application for leave to appeal
While the deadline for filing an appeal against procedural measures may be justified, there
should be an additional period of 15 days for submitting reasons why the appeal should be
heard. Since most proceedings before the UPC will be international multilingual proceedings,
attorneys should have enough time to properly inform and advise their client and parties
should have enough time to instruct their attorneys. Art. 73 (3) of the Agreement does not
require that the formal appeal should already contain a reasoning.
The procedure under Rule 221.1 should be made applicable to procedural decisions or
orders in general (by way of referencing Rule 220(2) - instead of Rule 157 - in Rule 221(1)).
Further, a decision by the division to refuse leave should be motivated, giving the party and
the Court of Appeal a basis for considering the need for a review on appeal.
Rule 225(b) Contents of the Statement of appeal
At the end of (b) add:
“and any other party to proceedings before the Court of First Instance” to provide such party
with sufficient notice to lodge a Statement of Response under Rule 235.1.
A new paragraph should also be added as Rule 230(d) for the same reason:
“Inform the respondent and any other party to proceedings before the Court of First Instance”
Rule 232 – Translation of file
See Rule 7 above.
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Rule 266 – Preliminary references to the CJEU
Rule 266.5 – Delete “Unless otherwise decided by the Court”. Proceedings must be stayed
upon making reference to the CJEU to be consistent with Union law.
Rule 271 - Service of the Statement of claim
Rule 271.2(c) introduces a new obligation for representatives before the EPO. An action for
revocation of a patent or for a declaration of non-infringement may be served electronically or
physically on the representative who filed the application for unitary effect. The language of
Rule 271.2 c) could lead to the conclusion that it will be the representative who appears on
the patent specification at the time of grant of the unitary patent. This would create a duty of
care for representatives for years and perhaps decades, although the relations with the client
might no longer exist. Since the representative cannot refuse service and must inform his
(former) client of the action with all consequences if such an information gets lost because of
a new address of the patentee or for other reasons, such eternal liability is not acceptable.
AIPPI therefore suggests that the representative must have the right to have his withdrawal
from his representation recorded by the EPO in order to prevent a default decision for which
he would bear the consequences, including the liability for a further service for execution
purposes of such a decision under Rule 276.2. It is therefore recommended to add to this
provision
“Except where on the date of service the representative had informed the EPO that he no
longer represents the patentee or applicant before the EPO”.
Rule 271.4(c) - Reference to Rule 41 should presumably be to Rule 45 and reference to
Rule 60 should presumably be to Rule 66. In addition, reference to “European patent with
unitary effect” should be to “Patent”.
Rules 287 and 288 - Legal privilege
AIPPI welcomes the new Rules 287 and 288 which extend the attorney-client privilege and
legal privilege to in-house lawyers and patent attorneys.
For clarification, it is recommended to add the following sentence: “These rules shall apply to
advice no matter where it was given and regardless of the jurisdiction or the qualification of
the lawyer or patent attorney.”
Rule 295– Stay of proceedings
See comments under Rule 70.3.
There is a typing error in par (j): The text must read "Lugano" instead of "Lugarno".
Rule 301 – Automatic extension of periods
Due to the different public holidays in the EU of which some are moving from year to year
AIPPI suggests publishing a list of public holidays in the different member countries of the
UPC on the website of the UPC and refer to this list in Rule 301 in a footnote (“For a
complete list of holidays for the different years see…”)
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CHAPTER 6 – PARTIES TO PROCEEDINGS
In order for there to be efficiency of proceedings in terms of court time and resources and in
relation to the costs incurred by the parties, proceedings should be heard together wherever
possible if they relate to the same patent(s). This should perhaps be stated at the beginning
of this chapter before going into the mechanisms for splitting proceedings (for example Rule
302.1 could theoretically be used to split proceedings started by a patentee and his licensee
into separate proceedings).
Rule 310 – Death or demise of a party
AIPPI suggests the following amendment after par. 1:
“If a party had already died on the filing date of the action, the Court shall dismiss the
proceedings as inadmissible”
Such an action should not be subject to the correction of an obvious error, since it is the duty
of a party and/or its representative to file the action in the name and on behalf of an existing
party.
Rule 312 (3) – Transfer of the patent or patent application during proceedings
It should be clarified that the result of a procedure before the court shall be binding upon a
new proprietor of a patent (assignee), if the proceedings have led to a final decision before
the transfer of the patent (the new proprietor cannot have a „second shot”). Par. 3 could be
amended as follows:
“A court decision against the same infringer prior to the assignment of the patent in issue is
binding upon the new proprietor.”
New Rule 318 Amicus Curiae
Stake holders have started discussing a new Rule 318 providing for the introduction of a new
rule on Amicus Briefs. AIPPI would be in favour of such a rule in cases involving legal
questions of general importance. It should however be taken care that this possibility cannot
be misused with the result that the UPC will be burdened with lengthy papers during all
proceedings. Parties authorized to submit Amicus Briefs can objectively be restricted to
competent associations of academic standing and generally acknowledged practical patent
experience.
Rule 334 (h) – Case management powers
AIPPI is of the opinion that Rule 334 (h)
(h) dismiss a pleading summarily if it has no prospect of succeeding,
should be deleted. It cannot be foreseen whether all judges in all member states will have
already sufficient experience in particular at the start to recognize whether “a pleading has no
prospect of succeeding”. Such a case is in practice so rare taking into account that
experienced attorneys and in addition patent attorneys will prepare the cases that an
immediate dismissal without sufficient attention to the case is a great risk.
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As a measure of the case management it is, moreover, not clear whether such a decision on
the merits is appealable at all. According to Rule 220.2 it is disputed whether the Court of
Appeal has the competence to allow the appeal on such a measure. In any case, rejecting a
pleading on the merits does not seem to be a case management measure.
Rule 340 – Connection — Joinder
Dispute management in general
In many cases there are numerous concurrent actions between the same or related
(subsidiary etc) parties. It is possible to envisage, for example, multiple infringement claims
being brought by one patentee against a number of related defendants in different divisions
of the UPC in respect of different patents so as to inundate the defendant party and force it to
fight cases in many different locations. Under the present rules, individual panels (usually
the Judge Rapporteur) will have the sole power to manage cases, and Rule 340 only gives a
power to have actions heard together, as opposed to manage them in a coordinated manner,
which may include scheduling the cases in a particular way. (Similar considerations may
apply when a party launches a series of revocation actions against a party in the central
division).
AIPPI suggests, therefore, that the powers given to presiding judges, the President of the
Court of First Instance and the Court of Appeal under rule 340 should extend to all aspects of
case management if the circumstances require this.
Reference to disjoined has been deleted. Sometimes, in proceedings it may be critical to
obtain that cases are disjoined and it should appear clearly in the Rules of procedure.
Rule 370 - Court fees
The level of the fees is of fundamental importance both for the financing of the Court and for
access to justice i.e. for SMEs. Some stakeholders request in view of the fact that the level of
the fees according to Article 36(3) of the Agreement shall be reviewed periodically by the
Administrative Committee, the amount of fees should not be stated in the Rules of
Procedure.
AIPPI is however of the opinion to leave them in the Rules, so that amendments would also
be subject to a consultation procedure.
Rules 376 and 377 - Legal aid
Some stakeholders have discussed whether the group of beneficiaries of legal aid should be
enlarged to nonprofit entities and midsize companies and criticize the wording of "reasonable
prospect of success" as imprecise.
AIPPI warns against such amendments since one should prevent making UPC litigation
attractive for non-practicing entities. One should also not reduce the threshold, i.e. if chances
of success would not play a role. It should not be overlooked that if the opposite side prevails
it will be reimbursed only to cover the costs awarded by the court which means that the party
will have to finance additional attorneys’ fees without reimbursement. Frivolous litigation
would therefore harm in particular small and midsize companies as defendants.
* * *
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