Intellectual property

Nestle’s ongoing campaign to secure trademark protection over the shape of their famous four-fingered KitKat bar suffered a major blow last July after their loss at the EU Court of Justice to American confectionary giant Mondelez International in the ultimate clash of the confectionary titans. But does Nestle’s loss really signal the end of the unconventional EU trademark? Many people will by now have heard of Nestle's loss at the EU's highest court, marking the end of a long and arduous battle to secure EU-wide trademark protection over the four-trapezoidal-fingered shape of their famous KitKat bar. It's not often that trademark cases make the headlines across mainstream media, making this all very exciting for IP lawyers. But the whole thing did seem, at points, rather more like a race to get that "No Break for KitKat" pun-title out asap than an accurate assessment of the legal implications of the Court of Justice's ("COJ") most recent decision. Were matters different, the case might not now seem quite as significant a landmark in EU jurisprudence as one may have been led to assume. So, was the outcome of the KitKat case more of an Eglise Saint-Roch than the full-blown Notre Dame? First, a bit of backstory to set the scene. The parties in this dispute require little introduction. Between them, Mondelez International and Société des Produits Nestlé SA encapsulate some of the largest brands in the global confectionary sector; from KitKat, Smarties and Quality Street (Nestle) to Toblerone, Milka and Cadbury (Mondelez), which makes this case a very big deal for chocolate fans. It all started with a trademark application, as EU trademark disputes tend to do. That application was filed by Nestle in 2002 in the market for "Sweets; bakery products, pastries, biscuits; cakes [and] waffles", and here's the trademark it contained:   The European Union Intellectual Property Office ("EUIPO") raised a not uncommon objection to filings for shape marks, requiring proof of acquired distinctiveness, which Nestle happily provided. A veritable tower of documentary evidence spanning over close to 70 years of trade within the European market poured through the fax machines at the EUIPO until the office finally decided that they had seen enough. Third party observations followed immediately. They were all shot down. The EUIPO registers the KitKat shape in July 2006. Eleven months later, Cadbury Schweppes PLC files an application to have Nestle's mark cancelled. Four years later, the Cancellation Division accepts. Nestle appeal to the Second Board of Appeal. They get the decision. Cancellation overturned. Now in 2010 Mondelez International acquired Cadbury Schweppes PLC, along with its interest in the case. Chocolate buffs may be familiar with another four-fingered chocolate wafer confection known as the "LEO" bar, sold under the Milka brand (acquired by Mondelez in 1990). Needless to say, the American confectionary giant had good reason to take this case to the next level, which it did, appealing to the CJEU General Court in 2013 – successfully.Decision overturned. So, Nestle and the EUIPO appeal to the COJ, where the proverbial buck stops. Sixteen years and hundreds of thousands of euros in legal fees later, the case now appears to have settled on a single issue which may well signal the end of the line for Nestle. [1] The issue might be summed up in the following two excerpts from last month's COJ decision: 1. A mark [could] be registered under Article 7(3) of Regulation No [207/2009] [2] only if evidence [was] provided that it has acquired, through the use which has been made of it, distinctive character in the part of the [European Union] in which it did not, ab initio, have such character for the purposes of Article 7(1)(b). 2. The part of the European Union which, in accordance with Article 7(2) of Regulation No 207/2009, is sufficient for registration of a trade mark to be refused may be comprised of a single Member State. So, what does that all mean exactly? Well, let's break it down. In excerpt (1) the court spells out, in slightly more obfuscating language, the rule in A. 7(2) of the EUTM Regulation, [3] which essentially states that a trademark may be refused registration even if it is non-distinctive in only "part of the European Union". Now, this may sound a bit strange to some readers who are perhaps unfamiliar with the EU trademark system, or for that matter the way things work in the EU in general. A useful starting point for all discussions concerning EU trademark law is that the EU is a political union comprised of 28 different countries (the word different being crucial here). Cultural differences translate into differences in the way trademarks are perceived. The term "Sir", for instance, would most likely be deemed a perfectly arbitrary term in the context of the market for cheeses in the UK, Germany, France and probably every other EU member state … except Croatia. In Croatian "sir" means "cheese" and would therefore almost certainly be considered too generic to be extended trademark protection in Croatia. To cater to this reality, A. 7(2) of the EUTM Regulation provides that any absolute ground of refusal may be invoked against the registration of a trademark "notwithstanding that the grounds of non-registrability obtain in only part of the Union." This is the only way EU member states would get on board with a unitary trademark effective throughout the EU. So, nothing exceptional about excerpt (1). In excerpt (2), things get a little more interesting. Here, the court says that if one were to file an application for the mark "Sir" in the cheese trade, and if an objection were to be raised on the basis of non-distinctiveness in the territory of Croatia (and only in the territory of Croatia), that application would not be accepted, unless of course it could be proven the mark had acquired distinctiveness in the Croatian cheese trade. Now, if you think this might pose a fairly formidable obstacle to registration for your average SME in the cheese trade, it pales in comparison to the challenge that Mr. Cheesemaker would face if he tried to register, say, a particularly interesting shape of one of his cheese products. And the reason for this is simply that the average consumer is not presumed to interpret shapes, colours, sounds and other unconventional marks as designations of trade origin in any part of the EU, meaning, in turn, that acquired distinctiveness must be proven in every partof the EU. This, in a nutshell, is the gargantuan obstacle which ultimately defeated Nestle. Now, to be absolutely clear; this is not new. In fact, in the two excerpts above from the KitKat case, the COJ is citing a well-known General Court decision (Storck v OHIM [4] ) involving the shape of a twisted sweet wrapper. That same case was referenced in a previous decision concerning a trademark application filed by another well-known name in the chocolate trade - Chocoladefabriken Lindt & Sprüngli – for their famous (alas, not quite famous enough) gold-wrapped, red-ribboned chocolate Easter bunny. [5] The marks forming the subject of these two cases were denied registration for broadly – albeit in not quite so many words – the same reason as the one given in last month's decision over the KitKat bar.The only real difference in KitKat is that a little more (arguably much-needed) fuss was made by the COJ over precisely what constitutes a "part" of the European Union. The issue has indeed been clarified but, at least in the view of the present author, it is hardly unambiguous. Paragraph 80 and 81 of the decision are quite illustrative in this regard: "[R]egions or parts of the European Union in which the acquisition of distinctive character must be shown are not predetermined, but must be established, whenever an application for registration is filed, for the goods and services covered by the trade mark in question. … this does not mean that the absence of evidence in relation to Luxembourg alone would be sufficient to exclude the acquisition of distinctive character, when evidence has been provided for the other Member States. If, for the goods or services covered by the trade mark in question, Luxembourg is part of the same market as Belgium, France or Germany, and sufficient evidence has been provided for one such country which is part of the same market as Luxembourg, it would not be necessary to provide specific evidence for Luxembourg. That, in my opinion, is the meaning to be given to Article 7(2) and (3) of Regulation No 207/2009 and to paragraphs 60 to 63 of the judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM (C‑98/11 P, EU:C:2012:307). Some would argue that the level of socio-economic insight required in order to make accurate assessments of the sort being described here is a bit too much to ask of EU court judges, let alone the examiners over at the EUIPO. In any case, readers will not be faulted for thinking that EU judges have set an unreasonably high bar here. After all, if Nestle couldn't get the job done with a chocolate treat as ubiquitous as the KitKat bar, what hope is there for other prospective trademark applicants? Is Kitkat a debilitating blow to the future of the unconventional EU trademark? Well, not as much as one might think. Unconventional trademarks are called "unconventional" for a reason.A. 4 of the EU Trademark regulation outlines the basic function of a trademark – to distinguish the goods or services of one undertaking from those of other undertakings. Unconventional trademarks are simply not very good at this. That, coupled with the strict parameters which are part and parcel of the unitary character of the EU trademark, makes the outcome of this case interesting, but not entirely surprising. Unconventional EU trademark registrations have always been an anomaly. According to the EUIPO website, there are 11 million trademarks on their register. [6] Yet a search on their database reveals only 4,700 registrations for 3D shapes, less than 300 colour marks and only 200 sound marks. And those are the most popular "unconventional" categories. Granted, some of these marks encapsulate some of the most well-known brands in the world. But, in a context such as this, to say that the decision in Kitkat will have a significant impact on the EU trademark landscape is slightly disingenuous. Add to that the fact that the clarity which the decision purports to provide does not appear to have filled in much room for interpretation and, at least from a purely legal point of view, there doesn't seem to be a great deal left to fuss over. But that, of course, is not to say that trademark lawyers oughtn't to enjoy the spotlight for as long as they can. [1]  Case has been returned to the Board of Appeals for a final decision on the basis of the COJ judgment. [2]  This provision has not changed since Council Regulation (EC) No. 40/94 [3] The COJ Decision in Mondelez v Nestle was given on the basis of Regulation EU 207/2009 on the Community Trademark (since repealed by Regulation EU 1001/2017), although the provision referenced in the judgment (including numbering) remains the same under the EUTM Regulation. [4]  (C‑25/05 P, EU:C:2006:422) [5] Chocoladefabriken Lindt & Sprüngli v OHIM (C‑98/11 P, EU:C:2012:307) [6]  https://euipo.europa.eu/ohimportal/en/search-availability

The CJEU has added a new chapter to a long saga of jurisprudence concerning one of the most well-known trademarks in IP circles worldwide. The decision marks a new victory for world-famous designer Christian Louboutin in his ongoing international struggle for trademark protection over his “red sole” mark in the market for high-heeled shoes. Some readers may be familiar with the 2011 case filed by Mr. Louboutin against fashion giants Yves Saint Laurent over the former's US trademark registration for his famous red sole.Here is one of the more well-known representations of the mark, as filed with trademark authorities the world over: The New York District Court, adopted a view to which fashion lovers might be more inclined – namely that: "The law should not countenance restraints that would interfere with creativity and stifle competition by one designer, while granting another a monopoly invested with the right to exclude use of an ornamental or functional medium necessary for freest and most productive artistic expression by all engaged in the same enterprise." [1] This dictum encapsulates the doctrine of aesthetic functionality.For better or worse, however, the US 2nd Circuit Court of Appeals took a slightly more protectionist approach, stating that the red-coloured outsole had indeed acquired "secondary meaning", drawing the line at mere contrast. Hence, the 2nd Circuit determined that trademark protection over the red outsole of Louboutin's shoes could only be relied on where the red outsole did not match the rest of the product. Those who find this scope of protection outrageous have fresh cause for concern. In a preliminary ruling earlier this week on the Dutch case of Louboutin v. Van Haren Schoenen, [2] the CJEU ruled that: "Article 3(1)(e)(iii) of Directive 2008/95/EC … must be interpreted as meaning that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, does not consist exclusively of a 'shape', within the meaning of that provision." [3] To understand why this pronouncement is so important, a full reading of the mentioned A. 3(1)(e)(iii) (now found under A. 4 of the new trademarks directive) is in order: 3(1) The following shall not be registered or, if registered, shall be liable to be declared invalid: (e) signs which consist exclusively of: (iii) the shape which gives substantial value to the goods. The four steps of the legal formula are therefore clear.There must be 1) a sign which 2) consists exclusively of 3) a shape which 4) gives substantial value.All four steps are essential to a finding of inherent irregistrability. Hence, by determining that the mark filed by Mr. Louboutin in the Netherlands does not "consist exclusively of a 'shape', within the meaning of that provision", the CJEU has determined that even though colour-shape combinations might give substantial value to a given product, they necessarily fail the second criterion of A. 3(1)(e)(iii), and hence can never be refused on this ground, in effect shooting down the most formidable argument invoked against Louboutin's red sole. The preliminary reference was made by the Dutch courts on the basis of the same trademark illustrated above.The CJEU's decision binds the courts of every EU member state in their interpretation of national law framed on the directive. A modicum of worry as to what one might expect next would be justified.Hard as it is to imagine that Ferrari S.P.A., for instance, could successfully procure a trademark for the colour red in conjunction with a particular type of automobile design, suddenly it is not as unimaginable as it might have seemed last week. That said, the requirement for proof of acquired distinctiveness remains a formidable obstacle to the registration of any trademark which is not a distinctive word or logo under the settled body of EU jurisprudence.There is still plenty of discretion left to national courts and trademark offices in restricting the proliferation of shape-colour combination marks.If it is indeed the case that a particular colour is aesthetically functional in the context of the trade, it would seem perfectly logical to exclude that colour from trademark protection on grounds that the colour cannot function effectively as a designation of trade origin.Unless the use of a variety of different colours affords little business advantage in the market for a particular product (in which case aesthetic functionality is a non-issue), or unless a particularly mad head of design were to limit himself to the use of only one or two colours with regard to a specific product shape, it is hard to see any court invoking the CJEU's decision in Louboutin to protect colour marks covering whole-product shapes. There is, of course, another big question left in the wake of the CJEU's decision in Louboutin:Is the decision applicable in the context of the new law? Unlike A. 3 of the old Directive 2008/95/EC, the new functionality rule under Directive 2015/2436 A. 4 precludes from registration: "signs which consist exclusively of the shape, or another characteristic, which gives substantial value to the goods" The words "or another characteristic" (which are absent from the old law) might easily be deemed to encapsulate colours, which arguably reduces the CJEU's decision to one of merely retrospective significance. A further CJEU ruling will be required before this question is finally put to rest. [1] Christian Louboutin v Yves Saint Laurent 778 F. Supp. 2d at 449.  [2] ECLI:EU:C:2018:423 [3] Ibid para. 28

The UK government has published an updated Draft Withdrawal Agreement, highlighting consensus on the future of existing EU IP rights in the UK. As many are no doubt aware, an updated draft of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community was published last month. The 19 March draft highlights all the points of consensus between the EU and the UK – the continuation of EU-wide IP rights currently effective in Britain being among them. It is now virtually official that all EU trademarks and industrial designs registered before the end of the Brexit transition period will continue to be protected qua UK registrations. This is good news for intellectual property owners who may, until last month, have had lingering concerns about the future of their EU-registered rights in the UK. Naturally, after Brexit is realised, anyone contemplating a UK market entry will no longer be able to rely on an EU registration for the protection of their brands or product designs. Separate registrations must be procured in the UK, which would mean additional costs in administrative and attorney fees. The deadline, for anyone interested in securing their rights in the UK through an EU registration before the end of the transition period, is (tentatively) set for the last day of the year 2020.

“EU Directive 2016/943 on the protection of undisclosed know-how and business information” is coming soon to a legislature near you. If you didn’t know (or care) until now, here are a few reasons why you should. What disappears when you speak its name? A riddle as old as time itself. But, as anyone charged with the keeping of secrets knows; once silence is broken, a great many more things might go the same way. Among those things, there's your intellectual property.This may seem a little counterintuitive. Common sense dictates a good idea must be disclosed to the public one way or another if it is to evolve into a good venture.Indeed, it is generally the case that intellectual property must be declared or expressed publicly before it can even become vested with the law's protection. Reality, however, is rather more complicated, as reality tends to be. Take patents as an example: The Malta Patents and Designs Act provides that an invention shall only be patentable if it is, among other things, "new". [1] Article 5(1) defines "novelty" as anything which does not form part of the prior art. And what is the "prior art"? "The prior art means everything which was available to the public in writing or in other graphic form by an oral description, by use or in any other way anywhere in the world…"[2] Yeesh, that is one wide definition … Aye, and there's the rub. Now you see why the legal consequences of being overly-enthusiastic about a fantastic idea can be just as fantastically dire. The greater the idea, the greater the temptation and the greater the consequences … which brings us to the subject of trade secrets – that shamelessly shunned catchall of the intellectual property world. EU Directive 2016/943 [3]  on the protection of undisclosed know-how and business information is due for transposition into Maltese law in June. When transposed, this law will lay out a consolidated regime for the protection of just about any monetizable idea an aspiring entrepreneur can come up with, subject to one condition. Just one. You guessed it. Mum's the word. This may seem pretty clean, pretty convenient – pretty straightforward. There are however a few immediate problems. One very big and very ugly problem in particular. You see, a Maltese statute tailored to the standards of EU Directive 2016/943 would impose a general duty of confidence upon anyone privy to a secret with commercial value. And we do mean anyone: Employees, relatives ... journalists. Has the penny dropped yet? Like Midas' touch, a law that turns all ideas to gold may not be all it's cracked up to be. Predictably, the advent of a European trade secret regime has added fuel to the fire of the eternal free speech debate. Reporters Without Boarders wasted no time in expressing their sentiments over the newly proposed Directive. Now, before anyone who has never heard about the directive until just now gets ahead of themselves, the concept is actually not all that radical. Most countries afford some form of protection to trade secrets. Malta is no exception. The common law of confidence has been around for a very long time, as has the law of fiduciary obligations. It is on the foundation of this latter regime that the protection of trade secrets under our own law presently sits. At first blush, current practice, which generally relies on the scope of the current law coupled with the application of so-called "Non-Disclosure Agreements" is arguably as broad in scope as the new EU regime that is soon to replace it – to the extent that this modus operandum may be relied on to silence any would-be confidant on pain of a civil suit. In fact, these obligations may arise where anyone, without being entitled to do so, appropriates or makes use of confidential business information. [4] This would at least seem to cover an extremely wide range of activities, including the sort of activities typically undertaken by journalists. To date, however, Maltese law of fiduciary obligations has never been relied on to silence the press or to castigate people who the press typically rely on for the latest scoop – pretty significant considering the regime precedes the Protection of the Whistleblower Act by almost a decade. The question as to whether the new EU regime is liable to change this largely depends on future jurisprudence of the EU courts and the European Court of Human Rights. However, there are a few immediately apparent novelties – not least of which the introduction of the very concept of a trade secret as a quasi-property right. "Why does it matter whether a property right in trade secrets is created if the general effect of the law is pretty much the same?" ... you may wonder. Well, actually, it matters quite a bit. For one, property rights are also fundamental rights under the European Charter, and a corporation's fundamental right to privacy is – shall we say – slightly less entrenched than its right to property. "Does that include intellectual property rights?" you say. "Yes," we say. And in case there was any doubt about that, here's Article 17(2) of the Charter of Fundamental Rights of the EU (CFREU): "Intellectual property shall be protected." Got that? Shall be protected. Shall be... Ok, so it's not much to go by. But it's there ... whatever it means. Laconic laws aside, this does beg a question which might seem nomenclatural: Can trade secrets be properly be defined as "intellectual property"? Under present Maltese law they are not. That much is certain. Nowhere in the existing body of Maltese intellectual property laws is the term "trade secret" even mentioned, much less defined. What about the new EU regime? Well, references to intellectual property rights are strewn across the preamble to the directive (even though the law is quite careful in distinguishing trade secrets from the "traditional" IP fields). On the other hand, the format followed by the directive parallels every other statute regulating the traditional IP fields; beginning with a definition of the subject of protection, followed by a definition of the rights vesting in the subject, the conditions which must be fulfilled for acquiring those rights, the exceptions to said rights and, finally, the full table d'hôte of damages in the event of a breach – negative economic consequences, lost profits, unfair profits made by the infringer AND … dun dun duuun… moral prejudice. So, if what the EU has created is not "intellectual property" within the ordinary (or perhaps not so ordinary) meaning of the term – if not the meaning of CFREU A. 17(2) - then at least we can say that they have created something that is quite similar in all the legal details that matter. Now, the multi-billion Euro question: What does all this mean for business owners – Maltese business owners specifically? The short answer is that it is too early to tell. And we do mean way too early. It should come as no surprise to anyone familiar with EU statutes that the actual law under the Directive is preceded by the customary preamble, carefully formulated to explain exactly what the law is trying to say by what it is not actually saying. Nevertheless (or consequently, depending how you look at it) the Directive leaves more room for creativity than a Maltese or European judge can shake a stick at. This is well-represented in the Directive's tenor on the subject of the free press, incidentally. The convolution toward which over-lobbied EU statutes are naturally pre-disposed is equally well-represented in the definitional criterion in Article 1(a), which provides that information can only be defined as a "trade secret" if: "it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question." You'd think the words of "it is secret" were pretty self-explanatory… There are other problems of course and these problems ought to give rise to many a colourful and doubtlessly controversial court judgment in the years to come. There are a couple of rather general predictions one can make with reasonable certainty: The status of confidential business information under the new EU regime will definitely be augmented to the point where the usefulness of the ubiquitous "Non-Disclosure Agreement" will be diminished significantly. How significantly is a matter for debate, which means that dispensing with the use of NDAs entirely is probably a bad idea – for now at least. Then there's the consequences of infringement under A.14(2). Remember those magic words "moral prejudice". That gives the Civil Court free rein in awarding damages to trade secret holders, limited only by the degree of egregiousness which a creative lawyer can attribute to a violation. Of course, none of this really matters until Parliament transposes the directive. So far, they have not. The deadline (for anyone interested in spurring things along) is 9 June. The opinions expressed in this article are the author's own and do not reflect the views of Mamo TCV or any person associated with the firm. [1] Patents and Designs Act, Laws of Malta Chapter 417, A. 4(1)  [2] Ibid. A. 5(2)  [3] OJ L 157, 15.6.2016, p. 1–18  [4] Civil Code, Laws of Malta Chapter 16, A. 1124A(3)(a)

Putlocker. BitTorrent. PirateBay. Napster. Mediafire. Ring any bells? We'll bet they do. Putlocker. BitTorrent. PirateBay. Napster. Mediafire. Ring any bells? We'll bet they do. Generally, most people have a pretty acute gut sense about when something is a little too good to be legal. It's just that, generally, most people ignore it – nip the burgeoning weed of guilt in the bud – and get on with their lives as though nothing is wrong. So, is your gut on to something? You may or may not be "most people", but you may yet be surprised to discover precisely what the law of copyright has to say about what you do online. For instance, you would probably think nothing of watching a YouTube video, even though YouTube hosts far more infringing content than just about every other video streaming website put together, in spite of their highly efficient "Copyright Strike System". Do you know how much infringing content The Pirate Bay hosts? Ardent techies will know the answer is exactly zero. The Pirate Bay is just an index of user-posted links to torrent files. The actual file-sharing process which torrents facilitate takes place on the many well-known client platforms linked to the BitTorrent protocol, and even then the copyright protected material that ultimately winds up on your hard drive is not hosted by BitTorrent. That data came straight from other PCs, tablets and smart phones – ordinary devices belonging to ordinary internet users just like you. That's why the Dutch Supreme Court was at a loss over whether or not to ban the site in the much-publicised case of Stichting Brein v Ziggo and XS4ALL, finally passing that hot potato over to the CJEU in 2015. This past June the CJEU ruled that the posting of links to torrent files online constitutes an act of "communication to the public" and hence a violation of A. 3(1) of the EU Copyright Directive (a.k.a. "INFOSOC"). Since the 2000 Malta Copyright Act transposes INFOSOC A. 3(1), that means The Pirate Bay is illegal here too, and on the basis of the CJEU ruling in Stichting Brein v Ziggo, there's an argument to be made that Maltese ISPs should have banned the site by now. But they haven't. And by the end of this article the reason for that will no doubt be made clear. All this may sound like a load of technical mumbo jumbo, but these details matter quite a lot in the law of copyright. What about you? Have you done anything illegal? Well, let's crunch numbers for a moment and find out. According to a 2009 study, peer-to-peer networks at the time accounted for 43% to 70% of all Internet traffic. In Malta the numbers are probably higher than that, and it is also safe to assume they've since increased.So, statistically speaking, "most people" probably have a BitTorrent client application on at least one device with internet access … and they've used it. If a torrent platform were running on your PC right now, other users operating a similar platform could seed the files on your computer through an open torrent file at any time, which would technically mean that infringing content were being made available all over the net through your PC. The right to make content available to the public is an exclusive right under INFOSOC and the 2000 Malta Copyright Act which makes that … copyright infringement. Contrary to popular opinion, an infringement does not begin and end with a click of the "download" button. In fact – and this may come as a shock to some – prima facie there is nothing strictly illegal under Maltese law about downloading the latest episode of your favourite show. A. 9 of the 2000 Copyright Act, following a discretion afforded to Maltese lawmakers under INFOSOC, provides for a "private copy" exception for "reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial, on condition that the rightholders receive fair compensation…". You may be wondering: How precisely is this compensation to be paid? How much should we pay? Both great questions – which is, of course, to say that there are several quasi-arbitrary and often contradictory answers. Blank media levies were one attempted mechanism. This is a special tax levied on blank storage media like CDs, DVDs and floppy disks (remember those?). Hardly a gold mine for rightholders in the music and film industries. Incidentally, these taxes aren't applied in Malta. At any rate, until this provision is substantiated, one possible interpretation is that otherwise "illegal" downloads are permissible, provided they are for mere "private use". As far as copies made from illegal sources, the CJEU has had its say, and its position is unambiguous: "national legislation which makes no distinction between private copies made from lawful sources and those made from counterfeited or pirated sources cannot be tolerated … It is apparent from the foregoing considerations that Article 5(2)(b) of Directive 2001/29 must be interpreted as not covering the case of private copies made from an unlawful source." (ACI Adam BV and Others v Stichting de Thuiskopie). Translation: No private copy exemption for Pirate Bay users. As for video streaming; it was for a long time supposed that simply viewing available content was perfectly legal, since mere viewing did not technically violate the right of reproduction as per INFOSOC A. 5 (1). That was until the Stichting BREIN struck again in the case of Filmspeler. Now you can be assured that the use of so-called "media boxes" is illegal. The streaming of unauthorised content through sites like Putlocker are an analogy away from the same fate. As a side-note – if you're thinking about inviting a few friends over for a movie night, then the use probably ceases to be private … but that of course is assuming you have a lot of friends … and a particularly large living room (no one's really sure what "private" means). Also that's possibly a violation of the exclusive right of performance to the public. So that's twoinfringements …Unless you're streaming, in which case it's only one … possibly … again, depending on the size of your living room (we're not really sure what "public" means either). Confused yet? Well, we don't blame you. As you may have guessed, copyright in the digital world is something European IP lawyers don't really like to talk about any more – at least not with clients. There are two very good reasons for this. The first, by now, should be obvious. It is a veritable minefield. The law is rife with lacunae. Several important terms lack clarity and precision, and many have likened the CJEU's attempts to plug the holes to a game of whack-a-mole. The second is rather more poignant – and that is that, for the most part, it tends not to matter very much. Copyright has become the doormat of the legal world. People tap-dance all over it every day without a second thought. If you're willing to excuse human sensibilities about right and wrong, then information technology is largely to blame. On the one hand the internet has created a logistical nightmare even for copyright owners at the pinnacle of the creative industries. On the other; the law, like the industry, has struggled to keep up with new obstacles posed every day by the digital revolution. It is a hell of a problem – and unfortunately every attempt to negotiate the problem has yet to result in any significant progress. That said, as time goes by, the picture which seems to be emerging is that the gut does not lie.

A recent court judgment of the CJEU on the use of the term “Champagne” might have broader implications for protected geographical indications in other agricultural sectors. Whilst champagne corks were popping all over the world this past New Year's, winemakers in the Northeast of France had little cause for celebration in the wake of the CJEU's decision over Aldi Süd's "CHAMPAGNER SORBET" dessert. Champagne has become somewhat of a posterchild for so-called Protected Designations of Origin (PDOs) – one of three regimes available under EU law whereby food producers across Europe so jealously guard their various namesakes.PDOs are sui generis intellectual property rights available to specific agricultural products originating in particular geographical regions. They can have serious implications for unsuspecting food traders all over the EU, including Malta, and you'd be hard-pressed to find an organisation of enforcers more active than the Comité Interprofessionnel du Vin de Champagne (CIPV) The pivotal issue in the case brought by the ever-vigilant CIPV against the German discount supermarket titan concerned the use of champagne as an ingredient in another product – a delightful champagne-based sorbet advertised as "CHAMPAGNER SORBET". The four questions put to the court may be summed up as follows: whether the protection granted by EU law excludes the use of a PDO for commercial purposes in relation to goods consisting only partly of a PDO-protected product.Put simply (if slightly crudely); if a product that is not champagne contains champagne, can you say "champagne"? The CJEU's answer appears to be "yes", at least with regard to products that are 12% "pure", and which do not occupy the same market, and where the protected term is used in a manner which merely communicates certain features of the product with which it is applied. The parameters are rather constrained by the facts. It is unlikely that future judgments in the lower courts will be citing Comité Interprofessionnel du Vin de Champagne v Aldi Süd to allow food producers to market cheeses containing 1% Dutch milk as "Holland Milk Gouda" or "Holland Milk Edam". Then again Dutch cheesemakers might not be blamed for losing some sleep over the decision.The case, filed on the basis of the extended protection afforded to products in the wine sector under Regulations (EU)1308/2013 and (EC)1234/2007, might well apply to the protection granted under other, more general, EU statutes, including the all-embracing Regulations (EU)1151/2012 and (EC)510/2006 Sadly, Aldi's much-disputed frozen dessert is no longer for sale. It is left to be seen whether similar disputes concerning similar uses of similarly protected terms will produce similar results in different agricultural sectors. Disclaimer This document does not purport to give legal, financial or tax advice. Should you require further information or legal assistance, please do not hesitate to contact Dr. Jonathan Tonna.

An “IP”, or “internet protocol” is a unique series of numbers allocated to each and every device connected to a network, including and most notable the internet. Similar to your physical  home address to which postal articles are addressed and delivered, internet traffic is delivered to your computer’s address i.e. your IP address. Whilst there is no question that your home address represents “personally identifiable information” i.e. information capable of identifying you as an individual, is it also fair to say that your online IP address could also be considered as being “personally identifiable information”, making it fall within the remit of data protection law? In order to properly assess this possibility one must first look at the 2 major types of IPs, namely “static IP” and “dynamic IP”. A static IP is one that doesn’t change, and is permanently assigned to you by your Internet Service Provider (ISP)[1]. On the other hand, dynamic IP addresses are those IPs which are dynamically assigned to your device by your ISP each time it connects to the internet. This means that your device may not be allocated the same IP address which it had previously when it was last connected[2]. The constant renewing of IP addresses present in dynamic IPs enhances the safety afforded by them. Yet, despite this sense of security, can you as an online user be personally traced and/or identified through your IP address? In a 2016 judgment by the CJEU in the names of Patrick Breyer v. Bundesrepublik Deutschland[3], the Court confirmed just this: when accompanied by certain additional information which can be acquired through third parties (ISPs), dynamic IP addresses are considered to constitute personal data as they can lead to the identification of a website user. This case revolved around a German Pirate Party citizen, Breyer, who brought an action before the German courts seeking to bar websites from registering and storing his IP[4]. The case was eventually referred to the CJEU, which had to focus on answering 2 major questions, namely whether; “A dynamic IP address registered by an online media services provider is personal data within the meaning of Article 2 (a) of the EU Data Protection Directive, where only a 3rd party (ISP) has the additional information necessary to identify the website user; and The ‘legitimate interest’ under Article 7(f) of the Data Protection Directive (DPD) ran contract to the German Telemedia Act – the latter stated that personal data must be deleted at the end of the consultation period, unless the data is required for billing purposes”[5] The CJEU address both points positively and ruled that with respect to the online media provider, user data such as a dynamic IP is considered to be personal data only when the operator has the illegal means which allows it to identify the user concerned, with additional information about that user, which is held by the ISP. In conclusion, the CJEU stated that, “if a business collects and processes these IP addresses, but has no legal means of linking those IPs to the identities of the relevant users, then IPs aren’t considered as personal data”[6]. On the other hand, if businesses have enough information to bridge the gap between an IP address and an individual’s identity, then that IP address is considered to fall under the category of personally identifiable information[7]. Put in more simple terms, in certain cases, your dynamic IP address can constitute personal data, which is protected by data protection law and, if breached, will be subject to the same sanctions which are made available to other standard breaches of storage and protection of personal data. This judgment serves as a firm warning to online media services providers in Europe that extra attention must be given to the merging of a user’s IP address and any ancillary information made available by the ISP. For internet users, on the other hand, it has confirmed the existence of a degree of protection and safety which should not be underestimated, particularly as Europe gears up to implementing the provisions of the General Data Protection Regulation in mid-2018. For further information on how GVZH Advocates can assist you with your Data Protection and Privacy requirements, kindly contact us here. [1] See the full article at http://whatismyipaddress.com/dynamic-static [2] See the full article at https://www.iplocation.net/static-vs-dynamic-ip-address [3] Read the full judgment at http://curia.europa.eu/juris/document/document.jsf?docid=184668&doclang=EN [4] Read the full article at https://arstechnica.co.uk/tech-policy/2016/10/eu-dynamic-static-ip-personal-data/ [5] See the full article at https://www.huntonprivacyblog.com/2016/10/19/cjeu-rules-dynamic-ip-addresses-personal-data/ [6] See the full article at https://www.whitecase.com/publications/alert/court-confirms-ip-addresses-are-personal-data-some-cases [7] See the full article at https://www.whitecase.com/publications/alert/court-confirms-ip-addresses-are-personal-data-some-cases Authors: Dr. Nicole Cannataci and Dr. Andrew J. Zammit

Following a leak in early December, the European Commission has officially published the finalised proposed new legislation which aims to strengthen privacy in electronic communications. The Regulation on Privacy and Electronic Communications (“Proposal”) aims to repeal the ePrivacy Directive. These rules will be updating existing laws and bringing them in line with the new General Data Protection Regulation (“GDPR”), forming part of the Digital Single Market Strategy. The Commission also put forward another proposal for a new set of rules which will ensure that personal data processed by EU institutions and bodies is regulated in the same way as under the GDPR in Member States. The Commissioner for Justice, Consumers and Gender Equality, Věra Jourová, said: “The European data protection legislation adopted last year sets high standards for the benefit of both EU citizens and companies. Today we are also setting out our strategy to facilitate international data exchanges in the global digital economy and promote high data protection standards worldwide.” The salient features of the Proposal are the following: Whereas the ePrivacy Directive is only applicable to telecoms operators, the new rules will also apply to other providers of electronic communications services which have become increasingly important in recent years, e.g. Facebook Messenger, WhatsApp, Skype, Gmail, iMessage and Viber. Since the Directive will be replaced with a Regulation, the upshot is that a single body of laws will become applicable across the board. This will help smooth the compliance process for businesses whilst also ensuring that EU citizens will enjoy the same rights in all Member States. Both content and metadata (i.e. recipient, time, location or duration of the communication) will need to be anonymised or deleted if there is no consent given by the user. If consent is given for the data to be used, telecoms operators will be able to use this data to provide additional services. Requirement for cookie consent will be streamlined. Users will have more control of their settings, and there will be no need to require consent for cookies that are not privacy intrusive. Unsolicited electronic communication (spam) will be banned if sent without user consent. Enforcement of these rules will be under the responsibility of the national Data Protection Authorities. As in the GDPR, failure to comply may lead to fines of up to €20,000,000, or 4% of a company’s annual GDP. The European Consumer Organization (BEUC), pointed out two key elements that are found within the GDPR, but are lacking in the Proposal: privacy by design rules and a possibility for consumers to institute a group action. Although privacy by design was included in the leaked draft, it is now no longer part of the proposed legislation. It remains to be seen whether the Proposal will be amended to include a right for group action, as in the GDPR. The Commission aims to have these rules adopted on the 25th May 2018, the very day on which the GDPR will be coming into force.