Legal & Government Affairs Update Issue 1 - 2017 | FAST

Legal & Government Affairs Update Issue 1 - 2017

Issue 1, 2017

Consultations

IP Enforcement

The UK Intellectual Property Office (IPO) remains open to engagement on the challenges of enforcing software copyright. This is particularly in relation to the internet including digital information online and what can be done to protect digital files when they are posted on the internet. 

FAST is an active stakeholder with the IPO in support of intellectual property rights in software and also effective enforcement through access to justice. Considering the presence of distributed networks which are now commonplace, frequent outreach on such topics remains welcome to keep law and practice fit for purpose.  Please contact me directly at Julian.hobbins@fast.org if you would like to make representations.  

Legislative Updates

ePrivacy Regulation Draft

On the 10 January 2017 (following on from a leaked version of the draft) the European Commission released the first draft of the new Regulation on Privacy and Electronic Communications (2017/0003) (ePrivacy Regulation).

Some of the most significant changes are as follows:

  1. The ePrivacy Regulation will replace the current ePrivacy Directive. The fact that this will be implemented in the form of a 'regulation' is significant because it will mean that Member States do not need to take any implementing measures to bring the ePrivacy Regulation into national law. This is particularly pertinent given the potential implications for data protection legislation in the UK as a result of Brexit. With the UK Government and the Information Commissioner's Office already confirming the implementation of the General Data Protection Regulation 2016/679 (GDPR), there is very little reason to suggest that the ePrivacy Regulation will not be implemented in full in the UK.  
     
  2. The ePrivacy Regulation will most likely have extra territorial scope (again similar to the GDPR). Article 3(1)(a) confirms that the ePrivacy Regulation will apply to 'the provision of electronic communication services to end-users in the union irrespective of whether a payment to the end-user is required'. This provision may provide Member States with more 'teeth' when dealing with companies such as Facebook and WhatsApp especially, in the context of the current dispute between Member States and WhatsApp, in relation to an end-users' consent for the processing of their personal data. 
     
  3. The ePrivacy Regulation contains a clear modernisation of the more traditional meaning of 'telecommunications' to incorporate broader internet based forms of communication such as those services provided by Skype, WhatsApp and even iMessage. For example Article 4(3)(e) expands the definition of 'electronic mail' to mean 'any electronic message containing information such as text, voice, video, sound or image sent over an electronic communications network which can be stored in the network or in related computer facilities or in the terminal equipment of its recipient'. As outlined in our October edition, this is very much in keeping with the widening of the definitions in the new telecommunications rules. 
     
  4. The ePrivacy Regulation brings the requirements for "consent" in line with the provisions of the GDPR. One of the most visible changes may be to how users provide their "consent" in respect of cookies. Some website designers have previously criticised the need for 'pop-ups' relating to the placing of cookies on an individual's device on the basis it affects the user experience and/or the ease of use of the website, however this could become a thing of the past. Article 9(2) of the ePrivacy Regulation states that 'where technically possible and feasible… consent may be expressed by using the appropriate technical settings of a software application enabling access to the internet'. Affirmative action by an end-user signifying their consent could in future be given by amending an internet browsers default settings. This could work if the default settings of internet browsers prevent cookies but have an option which could be selected by the end-user such as 'accept third party tracking cookies' to provide their consent.
     
  5. Article 9(3) of the ePrivacy Regulation allows the end-user to withdraw their consent to the processing of electronic communications data at any time, which again is aligned to the GDPR. However, Article 9(3) goes one step further and also states that not only shall individuals be advised of their right to withdraw their consent, they should also 'be reminded of this possibility at periodic intervals of 6 months, as long as the processing continues'. This additional requirement will be particularly onerous and raises questions as to how this will work in practice. It is likely that this requirement will receive a considerable amount of opposition.
     
  6. One of the key changes is, as to be expected, the fines for non-compliance with the ePrivacy Regulation will be aligned to the GDPR which means that non-compliance  can result in fines up to 20 million Euros or up to 4% of total worldwide annual turnover (of the proceeding financial year) whichever is higher. 

There is little surprise that the draft regulation is very much in line with the GDPR. In fact, the proposed date for the ePrivacy Regulation to come into force is the 28 May 2018, the very same day as the GDPR. There is a strong argument that if a company is compliant with the GDPR then they are more likely than not complaint with the ePrivacy Regulation. 

Case Law Updates

Genuine Use of a Trade Mark

The ECJ has provided a preliminary ruling in the case of Lӓnsfӧrsӓkringer AB v Matek A/S (C-654/15). The Swedish Supreme Court sought confirmation as to whether a proprietor's exclusive right was affected; by not making a genuine use of the EU trademark for goods or services covered by the registration, during a period within five years from registration.

Lӓnsfӧrsӓkringer a Swedish insurance group who also operate as a bank are the proprietor of an EU figurative trade mark registered on 4 January 2008, under classes 36 and 37. Classes 36 and 37 of the Nice Agreement cover real estate, building construction, repair and maintenance. Matek are a company primarily concerned with the manufacturing and assembly of wooden houses. Matek began using a similar mark in 2007 and secured registration in 2009, under class 19. Lӓnsfӧrsӓkringer considered that Matek by using the logo had infringed their exclusive right between 2008 and 2011 and brought proceedings.

Lӓnsfӧrsӓkringer were successful at first instance but the decision was overruled by the Swedish Court of Appeal on the basis that an assessment of the goods and services at issue had to be carried out not on the basis of the formal registration of the mark but on the activity actually carried out by the proprietor. 

The ECJ was very clear in its decision that Articles 15(1) and 51(1)(a) of Regulation No 207/2009 must be interpreted as meaning that, during the period of 5 years following registration of an EU trade mark, the proprietor  may prevent a third party from using an identical or similar in respect of all goods or services the mark has been registered for without having to demonstrate genuine use of that mark in respect of those goods or services.

While the case highlights an interesting point of EU law the question has to be asked how did the case ever get this far. The correct application of EU law seems so obvious based on the regulation that it is difficult to see scope for any reasonable doubt or reasonable grounds for referral to the ECJ. I am expecting there to be some tetchy arguments on costs in this matter!