Intellectual Property Update: Review 2016

02 March 2017

The trend of IP enforcement continues with almost all sectors experiencing some activity. Combined with this, we explore some other interesting developments.

Key topics in 2016 included: 

Business owners providing free Wi-Fi may be required to implement password protection

New European trade mark regulation

Irish Court of Appeal confirms court-ordered graduated response system for ISPs

Business owners providing free Wi-Fi may be required to implement password protection

Sony Music, as holder of the rights in a particular musical work, issued proceedings for copyright infringement against a retailer who provided use of a Wi-Fi connection free of charge to the public. The musical work was unlawfully offered for downloading via that Internet connection.

The Court of Justice of the European Union ("CJEU") was of the view that “a measure consisting in password-protecting an internet connection may dissuade the users of that connection from infringing copyright or related rights, provided that those users are required to reveal their identity in order to obtain the required password.” The rationale behind this requirement would be to prevent users from acting anonymously. The court was of the view that omitting to place any need on service providers to secure their internet connections would be to deprive the fundamental rights to intellectual property of any protection. However, the CJEU emphasised that the imposition of this requirement would be a matter for the national court to ascertain.

This decision does, however, provide welcome confirmation that service providers can rely on the safe harbour provisions set out in the E-Commerce Directive, irrespective of whether they charge customers for use of their internet connection.

New European trade mark regulation

The widely anticipated Trade Mark Regulation, which overhauls the existing Community Trade Mark regime, took effect from 23 March 2016 (with a few exceptions). This new regime is streamlined and, in general, makes it easier and cheaper to obtain protection at an EU level for trade marks.

Under the amending regulation a number of changes took effect including:

  • terminology changes;
  • codification of position that class heading specifications are deemed to only cover those goods or services covered by the clear meaning of a class heading,
  • an amended fee structure;
  • a requirement to request renewals prior to the date of expiry;
  • isposal of the requirement that a mark must be capable of graphical representation;
  • functional signs (such as colours or sounds) will now be subject to the same prohibitions as are applied to shape marks; and
  • the provision of greater protection against counterfeits.

Irish Court of Appeal confirms court-ordered graduated response system for ISPs

The decision of the Irish Court of Appeal to dismiss an appeal against a court ordered graduated response, or three strikes system, provides clarification on what steps the courts may require Internet service providers (“ISPs”) to adopt in order to assist rightsholders in tackling online copyright infringement.

The Court of Appeal judgment confirms that national courts have jurisdiction to grant injunctions against innocent intermediaries such as ISPs. As Hogan J indicated in the judgment, it then becomes a question of degree as to how elaborate such orders can be. The relevant system requires that an ISP is required to send two warning letters to subscribers engaged in illegal file sharing and upon a third notification the rightsholder can apply to the court for a disclosure order of the identity of such infringers and then take further action. This is the first court-ordered GRS in the EU (and further afield) and may provide the basis for future applications by rightsholders for similar relief in Ireland and other EU jurisdictions.

What’s on the horizon for 2017?

It is anticipated that 2017 will be another busy year in the intellectual property sphere.

It is envisaged that there will be a number of developments in relation to the Unified Patent Court paving the way for the Agreement on a Unified Patent Court to come into force in the not too distant future. The UK has recently expressed, despite its impending exit from the EU, its intention to proceed to ratify the Agreement.

Under the new Portability Regulation proposal consumers of online subscription services, such as Netflix and Sky TV, will be able to log into their own personal accounts while travelling in the EU and continue to view content as if they were at home. It is hoped that consumers will begin to benefit from this proposal in 2017 once the EU Parliament has completed its approval of the proposal.

At a national level, we also await the enactment of the new Copyright Bill announced last year. This Bill is expected to cover a range of issues such as improved disability and educational use of works, more defences related to fair dealing and parody and potentially easier access to courts for lower value copyright claims.

For more information, please contact a member of our Intellectual Property team.

The content of this article is provided for information purposes only and does not constitute legal or other advice. 

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