Design and Copyright Working Group
Hague arrives to the UK
Patricia Collis, Senior Trade Mark Attorney at Bird and Bird LLP
Important Brexit fallout for EU Customs enforcement – the Commission states its position
The EU Customs enforcement regime
Having secured the appropriate intellectual property right protection in the EU, often the front line in the battle against counterfeit and copycat products flooding into the EU, often from China, is Customs enforcement. EC Regulation 608/2013 (the “Customs Regulation”) allows an IP right holder to apply to Customs authorities throughout the EU asking that they search for and detain goods entering (or indeed leaving) the EU which are suspected of infringing the rights holder’s designs, trade marks, copyright or patents. In the event that a detention is made, the party responsible for the detained goods will very often consent to their destruction (or such consent will be assumed), meaning that the issue is resolved quickly and inexpensively. Only if the party objects to destruction will court proceedings be needed to determine infringement. Because of this, Customs enforcement offers the rights holder a cost effective means of stopping large quantities of infringing goods from ever getting on to the market in the EU in the first place.
The application for action under the Customs Regulation, or AFA, can be of two types: (i) a national AFA, effective only in the member state in which it is made and used where the AFA is based on national rights (i.e. national/EP patents, national trade marks and designs); or (ii) a Union AFA which can designate action be taken in any or all EU member states and used where the AFA is based on unitary EU-wide rights (i.e. Community designs or EU trade marks). When filing a Union AFA seeking action in more than one EU member state, the rights holder has a choice of which country’s Customs authority it wishes to apply through. A UK company seeking Customs action throughout the EU would typically choose to file the Union AFA through UK Customs (HM Revenue and Customs) simply as a matter of convenience, even though it could equally be filed through Customs in any other EU member state instead.
The impact of Brexit of ongoing EU Customs enforcement
Given the importance of Customs enforcement to rights holders in the UK and the rest of the EU, the impact of Brexit on this area has received surprisingly little attention. One explanation for this is that until there is agreement as to what will happen with the underlying EU IP rights following Brexit, considering the enforcement mechanisms for these rights may be seen as putting the cart before the horse.
There is however now an update from the Commission on EU Customs enforcement following the UK's withdrawal from the UK (whether that is in March 2019 if not transitional period can be agreed or at the end of any transitional period), in the form of a Notice to Stakeholders dated 4 June 2018 - https://ec.europa.eu/taxation_customs/sites/taxation/files/notice-to-stakeholdersI-brexit-ip-enforcement-final_en.pdf. The key points are:
- As of the date of the UK’s withdrawal from the EU, Union AFAs can no longer be submitted to UK Customs. This of course was to be expected - having left the EU, the UK would no longer be part of the EU Customs regime set out up by the Customs Regulation.
- Following the UK's withdrawal, a Union AFA which is submitted to Customs in one of the EU27 member states will remain valid in the EU27, even if it also designates the UK. Likewise, a Union AFA already granted by Customs in one the EU27 before the date of withdrawal will remain valid in the EU 27, even if it also designates the UK.
- However, more controversially, a Union AFA issued by UK Customs before the UK's withdrawal will no longer be valid in the EU27. This means that if the Union AFA has been issued through UK Customs (which will be the case for almost all those filed by UK rights holders and also many filed by rights holders from English-speaking non-EU countries), then if that rights holder wishes to continue to have Customs enforcement in the EU27 after the UK’s withdrawal, it will need to file a new Union AFA with Customs in one of the EU27. The Commission's rationale for this appears to be that after withdrawal, a Union AFA issued by UK Customs is no longer an AFA issued by an EU member state, hence it ceases to be invalid. This rationale overlooks the fact that at the time of issuing such an Union AFA, the UK was an EU member state. It would appear to be a more attractive solution to rights holders on both sides simply to allow a Union AFA, whether issued through the UK or any other member state to continue to be valid in the EU27 after the UK's withdrawal, even it ceases to have effect in the UK itself (not least because the Union AFA would be based on EU rights which would themselves ceased to have effect in the UK). This would prevent the need to re-file in the EU27 following the UK's withdrawal.
The impact of Brexit of ongoing UK Customs enforcement
What of continued Customs enforcement in the UK after withdrawal? That is outside the scope of the Commission’s Notice. However, as mentioned above, any Union AFA designating the UK would (subject to any arrangement to the contrary) become ineffective in the UK following withdrawal because the EU Customs Regulation (and the EU rights on which such a Union AFA must necessarily be based) would cease to have effect in the UK.
One possibility for addressing this issue would be for the UK government to treat Union AFAs in force at the withdrawal date akin to that proposed for EUTMs and registered Community designs, which are expected to automatically give rise to an equivalent ‘sister’ UK mark or design, alongside the existing EUTM/RCD. There seems no obvious reason why a similar scheme could not be implemented for Union AFAs: upon withdrawal, they automatically give rise to an equivalent national UK AFA (national UK legislation would need to provide the basis for this) based on the equivalent sister mark/design to the EUTM/RCD in the Union AFA. It remains to be seen what the UK will do in this regard.
For now, it would appear that if Customs enforcement is sought in the EU27 after the UK’s withdrawal, which may be as early as March 2019, it will be necessary to file the Union AFA through a non-UK Customs authority. For Union AFAs already issued through UK Customs, whilst they remain effective for now, they will need to be re-filed in the EU27 at least by the time of the UK's withdrawal. Rather than waiting for the withdrawal date, some rights holders may prefer to just get on with it, withdraw their existing UK-issued Union AFA now and re-file it somewhere in the EU27.
Ewan Grist, Partner at Bird & Bird LLP
New UK webmarking provisions for registered designs
Since 1st October 2014, patent holders have been able to better protect their patents through webmarks, a system whereby patent holders use a web address to mark their patented products instead of patent numbers. This system benefits patent holders as it removes the difficulties associated with having to include the patent number on every new product, which could be onerous or costly process.
From the 1st October 2017, the same webmarking process will be optional for UK registered design holders under s.33 of the Digital Economy Act 2017, which amended s.24B of the Registered Designs Act 1949 (exemption of innocent infringer from liability) to "the number of the design or a relevant internet link" (s.33 Digital Economy Act 2017). The amendment enables the owner of a product to mark their registered design with a freely accessible internet webpage which clearly states the registered design number relating to that product. This should effectively reduce burdens and costs as, should the product be updated, the owner would simply need to update their webpage, reducing the burdens of marking all products with design numbers. It should also provide better protection for registered designs as it will be harder for infringers to show that they were unaware of the UK registered design right.
Webmarking for UK registered designs will be available in the UK from the 1st October 2017. It is important to note that this amendment co-exists with the existing legislation meaning that registered deign holders will still have the option of marking their products with their design numbers.
CITMA First Vice-President
The Design and Copyright Working Group would like to thank Will Warne for contributing this article on an important recent copyright case.
Copyright protection in the taste of cheese?
On 29th May 2017, two questions were referred to the CJEU by the Dutch courts seeking guidance on whether the taste of food may be protectable by copyright and, if so, how infringement could be assessed.
The story behind this reference, case C-310/17 Levola Hengelo, began in 2007 when a local grocery in the Netherlands started to sell, on a small-scale, a cheese spread under the name "Heks'nkaas" ("Witches' Cheese" in English). This local product became very popular and in 2011 a company called Levola Hengelo bought the secret recipe with the aim of rolling out the cheese across the rest of the Netherlands. The agreement between the grocery and Levola Hengelo stated that all copyright in the recipe, method of preparation and taste would be transferred to Levola Hengelo.
The popularity of the cheese led to other similar products being launched and, in 2012, Levola Hengelo announced that it would seek to enforce its copyright in the taste of Heks'nkaas. Levola Hengelo subsequently launched proceedings for copyright infringement against a number of its competitors. Although two of these actions (against European Food Company B.V. and Smilde Foods B.V.) have recently resulted in judgments against Levola Hengelo, finding that it had failed to demonstrate that copyright subsists in the taste of Heks'nkaas, the Dutch courts have now referred two questions to the CJEU relating to subsistence and infringement of copyright in taste.
These two questions can be summarized as follows:
1) (a) Does Union law preclude copyright protection of the taste of a food product, as an author's own intellectual creation? In particular:
(b) Is copyright protection precluded by the fact that all the examples of 'literary and artistic works' in Article 2(1) of the Berne Convention only relate to creations which can be perceived by sight and/or by hearing?
(c) Does the (possible) instability of a food product and/or the subjective nature of taste preclude it being eligible for copyright protection?
(d) Does the system of exclusive rights and restrictions (Articles 2 to 5 of the InfoSoc Directive), preclude the copyright protection of the taste of a food product?
2) If taste can be granted copyright protection:
(a) What are the requirements for copyright protection of the taste of a food product?
(b) Is the copyright protection of a taste based solely on the taste as such or (also) on the recipe of the food product?
(c) What evidence should a party who alleges infringement of a copyright-protected taste, put forward? Is it sufficient to present the food product to the court so that, by trying it, the court can form its own opinion as to whether the taste of the food product meets the requirements for copyright protection? Or should the applicant (also) provide a description of the creative choices involved in the taste composition and/or the recipe on the basis of which the taste can be considered to be the author’s own intellectual creation?
(d) In infringement proceedings, how should the court determine whether the taste of the defendant's food product infringes any copyright in the taste of the applicant's food product? Is the decisive factor whether the overall impressions of the two tastes are the same?
Although most practitioners will be sceptical about the prospect of copyright protection in a taste, it would at least seem possible that the CJEU may find that taste can be subject to copyright protection. Any such protection would seem to have to by way of the taste being considered to be an artistic work. However, as taste is not a traditional physical art form, the 'work' (if there is one) would appear to need to be a work of artistic craftsmanship. Although UK case law has indicated that works of artistic craftsmanship require an aesthetic element, there is certainly an argument to be made that there is an artistic element in the creation of food products and certainly many chefs, if asked, would consider themselves to be artists.
The result of question 1(b) is potentially easier to predict, as the answer would be expected to rise or fall on the outcome of question 1(a). Question 1(c) throws up some more interesting points: while the possible instability of food products should not in itself be a concern (as a perishable recording medium will not be a bar to copyright protection), the subjective nature of taste may be more problematic. While this question on the subjective nature of taste is a little unclear, it appears to relate to the fact that the sensation of taste is a subjective experience that is hard to describe, meaning it may be difficult to define the scope of a work which is a taste. Although the assessment of the scope of any artistic work will always be subjective, it is far easier to describe how something looks or sounds than how something tastes. This difficulty in defining the scope of protection would generally be expected to preclude protection. In relation to question 1(d), it is not clear, on the face of it, how any of Articles 2-5 of the InfoSoc Directive of themselves could preclude copyright protection in the taste of food.
Question 2 throws up some interesting queries for the CJEU to grapple with. In particular, it appears to ask in question 2(b) whether any copyright of a food product stems from the taste itself or as a consequence of making the cheese to a copyright protected recipe. This raises interesting parallels with the protection of products s made to design drawings.
Whatever the outcome, it is clear that there will be significant interest in the CJEU's decision.
Associate, Bird & Bird LLP