Executive Summary
The last year of the 2010s has been prolific in terms of important new pieces of legislation and case law within the European Union, and in France and Germany in particular. Indeed, the European Parliament and the EU Council adopted in April 17, 2019, a controversial directive (Directive 2019/790 on copyright and related rights in the Digital Single Market) imposing on online content-sharing service providers—such as YouTube—a new liability system, based on popularity, time and turnover criteria. This directive was created to encourage these service providers to make greater efforts in fighting copyright counterfeiting on their platforms. In France, the PACTE law, which went into force on May 22, 2019, introduced new material changes—namely the strengthening of the French patent office granting procedure (extension of examination scope) and the introduction of patent opposition proceedings before the French patent office. These two legislations greatly influenced EU and French IP law across the year.
2019 EU case law also saw material clarifications and some daring rulings, including a December decision from the Court of Justice of the European Union (CJEU) setting important limitations on the scope of protection for Protected Geographical Indications (PGI), as well as a decision of the Munich Higher Regional Court confirming the validity of and the possibility to get anti-suit injunctions in patent litigation, at least in Germany, if not in all continental Europe countries. Both decisions are discussed in detail in this report.
Other decisions that marked 2019 include:
CJEU, May 2, 2019, Queso Manchego, C-614/17 (PGIs – A PGI may be evoked through the use of figurative signs);
CJEU, September 5, 2019, Heritage Audio, C-172/18 (Trademarks – Possible infringement action before the courts located in countries where consumers/merchants are targeted by advertisements or offers for sale);
CJEU, July 29, 2019, Pelham GmbH, C-476/17 (Copyright – Right for the phonogram’s producer to prohibit sound samples of its phonogram, unless unrecognizable to the ear);
CJEU, September 12, 2019, G-Star Raw, C683/17 (Copyright – Originality, sole criteria for copyright protection of designs, rejection of aesthetic character).
European Issues
- EU Directive on Copyright in the Digital Single Market: New Liability for Online Content-Sharing Service Providers
- New French PACTE Law – How Is It Affecting French IP Law?
- The Munich ‘Anti-Anti-Suit’ Injunction
- German Balsamico
2020 Outlook
Brexit has dominated European headlines over the past year and will be a development to look out for in 2020. The United Kingdom left the European Union on January 31, 2020, and entered a transition period, which will last through the end of 2020. There is a lot of uncertainty connected with Brexit for all IP owners as the details of the relationship between the United Kingdom and the European Union still need to be negotiated. Starting with the end of this transition period, it will no longer be possible to obtain IP protection in the United Kingdom through an EU Trademark or a Registered Community Design, and it is uncertain whether Britain will participate in the UPC system. We offer in greater detail an analysis of the impact of Brexit on IP rights here.
Talking of the UPC: The German Federal Constitutional Court (Bundesverfassungsgericht) may deliver its long-awaited decision in 2020. While the United Kingdom’s participation depends on Brexit negotiations and questions of European law, Germany will likely ratify the UPC agreement, if the Court has no objection.
Another important court decision will be the trademark case of Sky vs. Skykick, where the Court of Justice of the European Union is expected to deliver its decision in next six months. It concerns the question of whether a trademark registration may be invalidated on the grounds that terms within the specification are not defined with sufficient clarity or precision. The EU Advocate General has already stated his opinion that while a lack of clarity and precision in the specification of the goods and services is, on its own, not a ground for invalidity of a trademark, the use of a term such as “computer software” is too broad, and therefore contrary to the public interest. Filing strategies might therefore be impacted by this outcome.
And, finally, there are two important judgments concerning questions on FRAND expected in the Unwired Planet vs. Huawei cases of the UK Supreme Court and the German Federal Court of Justice (Bundesgerichtshof). The UK Supreme Court will decide on questions of jurisdiction in FRAND cases while the Bundesgerichtshof has its first opportunity to further clarify questions concerning FRAND and the antitrust defence against the assertion of SEPs after its famous Orange Book Standard decision (BGH KZR 39/06) and the later CJEU decision in Huawei vs. ZTE (C-170/13).
