Nathalie Dreyfus

Compliance of Zambian law with the Paris Convention, the TRIPS Agreement and the Harare Protocol.

On June 6, 2016, a new design law was introduced to Zambian intellectual property law , thus repealing the Registered Design Law of 1958.

The major contribution of this law resides in the possibility to enjoy protection afforded by design law once the said design has been registered. Under the Law of 1958 , the registration of a design only gives the registered proprietor the copyright (Article 14 of Registered Designs Law of 1958).

The notable features of the law of 2016 are as follows:

Amendments to the criteria for protection

The law now provides for the principle of “absolute novelty”, thereby modifying the criterion of novelty.

In addition to the traditional criterion of novelty, the 2016 law introduces the requirement of the design’s individual character into Zambian law.

The individual nature of a design will be recognised where “the overall impression it produces on an informed user differs from the overall impression produced on an informed user by any earlier design differs from the overall impression produced on such a user by any earlier design, which has been made available to the public before the release date of such a design” (Article 18 of the Industrial Designs Act of 2016).

Introduction of an opposition period

It is now possible for a third party, including the State, to oppose the registration of a design within a period of two months from the date an application is published (Article 43).

Duration of protection

The duration of the protection of a design has been modified. It is no longer possible to renew the registration of a design for more than two consecutive periods of 5 years, but only for one, thus bringing the total duration of the protection of a design to 10 years rather than the initial period of 15 years.

Licences

Licencing contracts must be registered with the Registrar. The Registrar can refuse the registration of a licence if it imposes unjustified restrictions on the licensee. Furthermore, the licence contract shall not have effect against third parties until it is registered and a certificate of registration is issued in respect thereof (Article 78).

Creation of designs by employees

A whole section devoted to designs by employees has been introduced by the new law.

In principle, the designs created by employees during the course of their employment contract belong to the employer. However, where the design acquires an economic value much greater than that the parties could reasonably have foreseen at the time of concluding the contract, the employee shall be entitled to an equitable remuneration to be agreed upon by the parties or in default, to be determined by the court (Article 45).

Guatemala’s accession to the “multi-class” trademark application system 

In addition to being the most populous country, Guatemala is also the the largest economic power in Central America.

Since the conclusion of an Association agreement between Guatemala and the European Union in 2013 , intellectual property law has become a major point of discussion for the country.

Indeed, the agreement has led to a number of reforms, particularly in relation to intellectual property law. New types of trademarks such as holograms, olfactory and sound marks have emerged in Guatemala. In addition, the creation of an online newsletter published on the website of the Registry for Intellectual Property now allows individuals to view the trademarks which are registered in Guatemala online.

The year 2016 therefore marks a further step in the development of Guatemala’s intellectual property law.

On March 31^st, the Government of the Republic of Guatemala issued Decree No. 20-2016 concerning the country’s accession to the Trademark Law Treaty (TLT) signed in Geneva on October 27, 1994.

The Trademark Law Treaty is expected to enter into force on December 12, 2016.

The accession of Guatemala to the TLT results in the harmonization and simplification of the procedures for the registration and renewal of trademarks in Guatemala (except for holograms, sound, olfactory and collective trademarks).

Simplifying trademark registration applications 

It will be simpler in the future for a foreign trademark holder to register a trademark in Guatemala given that the same power  can now be applied to one or more applications or to one or more trademark registrations.

The adoption of “multi-class” trademark applications 

Another important development is the introduction of “multi-class” trademark applications in the intellectual property law of Guatemala. 

According to Article 6 of the TLT, a single trademark registration may designate goods and services belonging to several classes.

This system has many advantages, including a simplified management of trademark applications and the reduction of examination time for trademark applications. It also facilitates the monitoring of trademark renewal procédures.

Dreyfus & associés can assist you with your applications for Guatemala trademark registration by selecting the best strategy for promoting and protecting your rights.

As content sharing on the Internet has become common practice for individuals as well as professionals (Facebook, Twitter, Pinterest, LinkedIn), the Court of Justice of the European Union gradually develops relevant jurisprudence on the matter of hypertext links.

When a hyperlink to copyright-protected content is made available online by the owner of the copyright (or with his/her authorization), it does not constitute an act of “public communication” as it does not address a “new public”.

What if the online content has been published without the authorization of the rights holder?

The Advocate General of the ECJ delivered his Opinion on this issue to the ECJ in the GS Media case C-160/15. The dispute is between Sanoma, editor of Playboy magazine, and GS Media, operator of the website GeenStijl.

GS Media published a hyperlink on the GeenStijl website directing viewers to an Australian site where Sanoma’s photos were published without its consent. Despite demands from Sanoma, GS Media refused to remove the hyperlink in question. When the Australian website removed the photos upon Sanoma’s request, GS Media published a new hyperlink to another website on which the same photos could be seen, published again without the consent of Sanoma. That site also complied with Sanoma’s request to remove the photos. Users of the GeenStijl forum posted new links to other websites where the photos could be viewed. Sanoma then sued GS media for copyright infringement.

The case escalated all the way to the Hoge Raad der Nederlanden, the Supreme Court of the Netherlands, which considered that it could not infer from the current ECJ case law that there was “communication to the public” when content is made freely available online without the authorization of the copyright owner. The European Court of Justice has therefore been asked to give a preliminary ruling.

Isn’t there a risk of “communication to the public” when placing a hyperlink to protected content without the authorization of the copyright owner?

The Advocate general of the ECJ, Melchior Wathelet, published his Opinion on April 7, 2016. The Opinion of the Advocate General is not binding on the Court of Justice but intends to propose a legal solution to the Court. According to the Advocate General, once the protected content is freely accessible on the Internet, hyperlinks placed on a website cannot be classified as an act of communication within the meaning of the Directive 2001 on the harmonization of certain aspects of copyright and related rights in the information society. Whilst the photos were possible to find, this was not necessarily easy. The photos were “freely accessible” on third-party sites. Initial “communication to the public” had already taken place and as a result, the hyperlinks only allow users a faster and more direct access to the content. The hypertext link thus only facilitates the discovery of websites where those photos are already published.

The actual act of “public communication” is made by the person who effected the initial communication. The hypertext link only leads to a website where the photos are already published without the authorization of the copyright holder. Consequently, hyperlinks cannot be classified as “acts of communication”. The intervention of the owner of the site who inserts the link is not indispensable for the photos in question to be made available to Internet users. In this case, GS Media’s intervention was merely to reiterate the content already online and is not indispensable to the provision of these photos being made available on the Internet. Moreover, the Advocate General considers that GS Media’s intentions and the fact that it knew or should have known that the initial communication of the photos had not been authorized by Sanoma are not relevant. Thus, the posting of a hyperlink to a website which published photos without authorization does not in itself constitute a copyright infringement.

An approach in line with the European case law

The approach of the Advocate General is in line with the ECJ case-law that gradually develops its decisions on the legal status of hyperlinks. In the Svensson case, judgement of February 2014, the CJEU had ruled on the legal status of a hypertext link. The Court considers that a website can place a hyperlink to protected content freely accessible on another website, without the authorization of the copyright holder. The creation of an Internet link which redirects a user to a protected content authorized by the copyright holder does not constitute “communication to the public” since there is no “new public”. Indeed, the work has already been communicated to the public beforehand. The hyperlink only “directs” towards this work.

In an Order of the Court of October 2014 in the BestWater case, the CJEU adopted the same legal reasoning concerning the hyperlinks by using the framing method. The CJEU held therefore that there was no “communication to the public” if the content concerned is neither directed at a new public nor communicated by using specific technical means different from that used for initial communication.

Please read our article “European Union: the legality of a YouTube video integrated into a third party site (Framing)”.

A surprising French amendment to ban hyperlinks

In France, an amendment to the bill for a digital Republic was filed by two MPs who would like to see a large number of hypertext links to disappear. The amendment is not in line however with the Svensson case which established the principle that clickable links to copyrighted works do not need authorization from the owner. As for the amendment, it intends to ensure that all hyperlinks are subject to authorization prior to publishing protected content.

Hyperlinks: central to the functioning of the Internet

As the Advocate General emphasized in his Opinion, interpreting this matter in the wrong way would entail far-reaching consequences in terms of the responsibilities of Internet stakeholders. It is important to strike a balance between disseminating information and enforcing copyright law. Any other interpretation of the notion of “communication to the public” would infringe one of the principal objectives of the Directive, namely the development of a European information society.

Furthermore, the Advocate-General notes that the above, would considerably impede the functioning of the Internet. Users visit sites and create hyperlinks to access such content. Internet users lack the knowledge and the means to verify whether the initial communication to the public of a protected work freely available on the Internet was done with or without the consent of the copyright holder. If Internet users risk liability for copyright infringement every time they place a hyperlink to content which is freely accessible on another website, they would be much more hesitant to post these links.

Until then, don’t be concerned, the trend is pushing towards the unrestricted use of hyperlinks!

A new law will be passed soon in the Cayman Islands making it mandatory to file a trademark registration application with the Cayman Islands Intellectual Property Office (CIIPO).

A significant change in the trademark law of the Cayman Islands

Previously, under The Patents and Trade Marks Law 2011, it was possible to gain trade mark protection in the Cayman Islands by way of an application for a UK or Community trade mark registration. With only a registration number, extension of that trademark protection could be requested in the Cayman Islands. The CIIPO would then conduct only a minimal examination of the trademark.

Furthermore, since the Cayman Islands is not a signatory of the Paris Convention, priority could not be claimed and trademark protection would be effective as of the registration date. The International Classification system was used and multi-class applications were allowed to the extent that these classes were requested for the registration of a UK or European Community trademark.   Previsouly, the law also required the payment of maintenance fees payable to the Government of the Cayman Islands in January of each year. These fees could be paid up until March 31^st of that year. Failure to pay annual fees would result in the suspension of protection of the trademark until payment was received. Beyond twelve months, the Registrar may cancel the record of the trademark.

What changes does the new law bring about?

As of now, the CIIPO will only accept national registration applications made directly to the Registrar.

In addition, the examination process will not be minimal, as applications will be examined on both absolute and relative grounds. There will also be a provision for opposition to the registration of the trademark.

The requirement to pay annual maintenance fees in order to maintain a valid trademark registration has however been retained.

Recommendations for registering your trademark

With the new law, which should enter into force during 2017, the timeframe to obtain a trademark registration will be extended.

We encourage you to register your trademarks directly with the Cayman Islands Registrar so as to prepare for the coming into force of the new law and for the potential issues that could arise. It is better to take prompt action in order to anticipate delays and the difficulties that the national Registrar will encounter in order to adapt to the new law.

Dreyfus & associés will certainly inform you of the developments in trademark law in the Cayman Islands. We remain available should you require any additional information.

The blockchain from a technical point of view

The blockchain refers to data storage and transmission technology which is transparent and secure and operates without a central governing body nor any intermediary. It is an unalterable database that contains the history of all exchanges between its users, since its inception. Each transaction is encrypted and becomes a ‘block’ which is then validated automatically by the network.   It operates with a digital currency; the bitcoin is the most common form. This currency allows for the creation a dematerialised settling of transactions.

A new type of organisation

The blockchain is thus based on a fundamental principle: the removal of an intermediary between two people involved in a transaction. There is therefore no need for trust among people interacting since the entire process is automated. While since its inception in 2007, the blockchain has been limited to financial transactions, it continues to grow and is now more widespread. It is therefore important to instill trust and confidence back in to interactions that involve more than one human individual.

What we are witnessing is the emergence of a new type of organisation. The central body that coordinates the interactions between individuals and recovers the generated value has disappeared. In these new systems, individuals themselves work together directly, without the intermediary. The operation system is indeed much more collaborative.

With this kind of decentralised collaborative application, the question now is whether to remove not only the intermediary but also the administrator, the “trusted third party” who certifies the validity of authentic deeds (for example, a notary).

The legal issues surrounding the blockchain

Henceforth, new legal challenges have begun to crop up, in particular the issue of liability. Indeed, if all actions are performed independently and anonymously, who will be liable for opening an illicit network? Even if the creator of the blockchain is identified (which seems difficult in view of the principle of anonymity which is omnipresent in such technology), the operations cannot be stopped since they are carried out independently of the blockchain.

Clearly, it is unreasonable to apply traditional legal rules to this new and expanding digital environment. It is therefore essential to establish a new legal framework that can support, in particular, the development of the blockchain. The expression “code is law” illustrates the need for a new techno-legal revolution for the digital world, independent of the physical one.

As to the regulation issue, one may wonder what position the government will adopt vis-à-vis the blockchain. While the blockchain can afford to evade the rules in force as well as State  control, it can also lose its potential if the States seek to have too much influence on it.

The legal status of the blockchain

Discussions have already been held at the National Assembly in France. On May 13, 2016 an elected representative of Eure-Et-Loir département, filed an amendment  to the recognition of the blockchain in payment systems and conferring upon it the same legal status as a deed. Although the amendment was rejected and the Minister of justice  stated that the blockchain would not replace a notarial deed, this proposition proves that the blockchain and its legal status undoubtedly stirred debate within the government.

Another interesting debate is the legal recognition of smart contracts that are based in the blockchain. These standalone software automatically predefine certain conditions without the need for any human intervention. The advantage of this is that the conditions cannot be modified while the contract is running, thus preventing abuse or contractual fraud. Therefore, the cost of verification, enforcement and arbitration are reduced. This in turn, relates back to the idea of avoiding intervention from a “trusted third party”.

Smarts contracts are software, rather than contracts, and like the blockchain itself, do not possess any legal status. They are not binding on third parties (or at least not yet).

These technical applications of contracts could be applied to many areas: tax (collection and automatic deduction of value-added tax), insurance (traveller compensation system in case of flight delays on the Ethereum  platform), real estate (registration of title deeds), health (management of patients’ information), transport (decentralised carpool service) or even online voting (secure system preventing fraud).

In any case, we are still at the beginning of what is likely to become a revolution in the coming decades. All current decisions will influence the future of the blockchain, that of our society and its organisation. Implementation of a legal framework for the blockchain is key and it is the government’s role to provide legislation on the subject.

You will find below an update of the ongoing and upcoming launches of new gTLDs.

Sunrises starting soon
.art       07/12/2016   07/02/2017

Sunrises ending soon
.baby   02/11/2016 – 02/12/2016
.cam    06/10/2016 – 05/12/2016
.goog   11/10/2016 – 10/12/2016
.クラウド 01/11/2016 – 31/01/2017
.ストア 01/11/2016 – 31/01/2017
.セール 01/11/2016 – 31/01/2017
.ファッション 01/11/2016 – 31/01/2017
.家電 01/11/2016 – 31/01/2017
.書籍 01/11/2016 – 31/01/2017
.食品  01/11/2016 – 31/01/2017
General availability
.moi     29/11/2016
.cam    07/12/2016
.goog   13/12/2016
.storage 10/01/2017
.クラウド 15/02/2017
.ストア 15/02/2017
.セール 15/02/2017
.ファッション 15/02/2017
.家電 15/02/2017
.書籍   15/02/2017

Motivated by the desire to facilitate access to intellectual property and modernize its mechanisms, the Director of the French National Trademark Institute  (INPI) issued a decision on April 15^th, 2016 (Decision n°2016-69 of 15 April 2016 ) on the trademark registration opposition procedure.

According to the decision, from now on, anyone wishing to file an opposition must do so via an E-service, therefore fully accepting the Institute’s terms of use regarding the electroning filing of an opposition against a trademark registration as well as the use of E-Procedures. It is no longer possible to file such an opposition by any other means than the E-service.

In short, since May 1^st, 2016, the French National Trademark Institute has made the online filing of an opposition  to a trademark registration on the INPI website mandatory.

Futhermore, all subsequent exchanges and the submission of observations must be done exclusively via the online service of the Institute.