IP futures: seven to watch in 2015

At our inaugural intellectual property seminar of 2015 last week, we looked back at key cases and developments in the world of UK and EU IP over the last 12 months. But inevitably, as innovation – in technology, in design, in marketing – has become the foundation stone of businesses across all sectors of the economy, pressure for changes in the laws and institutions which govern the IP which protects those innovations has also become inevitable. 

So what can we expect, looking forward through the rest of this year?

1. [On the basis that not all the list below is legislative.] In 2013, the European Commission began the process of harmonising the protection of trade secrets and other business information, publishing a draft Directive on the subject. This is the area of intellectual property which currently has the least consistent treatment under the laws of different Member States, making the protection of technical and commercial information across borders extremely difficult in practice. The draft, which looks to be based on the English approach to confidential information (albeit naturally with some European flourishes) has been the subject of substantial comment from various industries. It has been reviewed by a number of Parliamentary committees and is due to have its first reading in the full European Parliament in April this year.

2. The new Trade Marks Directive and revised Trade Marks Regulation have been making their way through the European Parliament and Council for some time, and seems to have got somewhat bogged down in the details of OHIM fee-shifting, technical minutiae, and the weight of other more politically charged material also being scrutinised by the MEPs. Having been intended to be completed before the last European elections, it failed to get past the post and nearly a year later we are still waiting for the final text to be agreed. When it does, there will be a two year lag before most of the changes come into effect to allow Member States to update their national laws. Key changes include tighter laws to combat counterfeit goods and a loosing of the restrictions to the kinds of signs which can be registered as trade marks. Brand owners will need to start to thinking about what changes they need to make to their protection and enforcement strategies. On a quasi-legislative note, the final Rules of Procedure for the Unified Patent Court are expected to be released this spring, bringing the opening of the Court’s doors a step closer to reality. The European Commission has admitted that 2015 is still too ambitious, but a target date in 2016 remains feasible if the increasingly frenetic activity around appointment and training of judges, fitting out of premises and procurement of IT systems remains on track. The day the Court begins operating, it will have jurisdiction across 25 Member States in respect of European Patents whose owners have not opted them out of the system. That makes 2015 the year to conduct a thorough audit of your, and your competitors’, patent portfolios, to assess which ones may be suitable either for assertion on an international level or, alternatively, potentially vulnerable to a revocation attack.

3. Starbucks v British Sky Broadcasting, a passing off case based on spill-over goodwill, makes its way to the Supreme Court. The claimants (which have no connection to the coffee company) operate a Now TV television platform in Hong Kong but make content available online that can be accessed from the UK. Sky found itself defending a claim when it launched a Now TV in the UK. This will be the first time the Supreme Court considers passing off in the internet age and the ruling could have significant implications for all business that trade or provide content online. 

4. Meanwhile, the Court of Justice of the EU is due to render its decision as to the circumstances in which the holder of a patent over a technology which is declared essential to a technical standard can, or cannot, obtain an injunction. The Advocate General’s Opinion was sympathetic to the technology user; will the Court follow suit?

5. The copyright industries, which have seen considerable investigation and intervention from the European Commission over recent years, face the prospect of this year’s further review of the laws at EU level which was announced in the autumn. Revision of the 2001 Copyright in the Information Society Directive, which so failed to harmonise copyright, is planned. Judging from the spate of copyright decisions from the CJEU over the last 18 months, there will be plenty of scope for argument.

6. The UK courts will continue to look at the use of third party trade marks as keywords. The Court of Appeal will consider Amazon’s use of LUSH as a keyword in its own internal search engine and the re-trial of Interflora’s claim against Marks & Spencer takes place, having been remitted back to the High Court by the Court of Appeal. The courts’ decisions are likely to have a significant impact on the risk profile of many popular keyword strategies.

7. And finally, for the first time this century, the UK Supreme Court will be hearing an appeal over a matter of design law. In the controversial case over ride-on suitcases, the question of the extent to which the surface decoration of a product can be taken into account in deciding infringement of a registered design, will be key for designers and makers of physical devices of all kinds.