Customs seizures | EORI number

Since 15 September 2020, the EORI number has become mandatory to obtain customs measures: the seizure request forms have been modified to impose the mention of the EORI number.

What is the EORI number?

The “EORI” number (“Economic Operator Registration and Identification”) is unique to each economic operator (or representative of economic operators) for the entire European Union (“EU”) and is issued by a customs authority of a Member State. It is used to identify economic operators and other parties involved in all their dealings with customs authorities (in particular for the import and export of goods). It is intended to simplify the administrative tasks of economic operators.

Secure access

This identification number will allow secure access to the European Union Customs Trader Portal. It allows economic operators and their representatives to electronically submit application forms requesting customs action with respect to goods suspected of infringing an intellectual property right, as well as application forms for an extension of the period during which a customs action is to be taken.

And in practice?

Each economic operator established in the customs territory of the EU must obtain its EORI number from the customs authorities of the Member State in which it is established. Economic operators not established in the customs territory of the EU must also be in possession of an EORI number to import or export goods. Such operators will have to apply for this purpose to the customs authority of the place where they intend to carry out their first customs activities, and the authority will grant them an EORI number. This procedure will also have to be followed by UK companies for which the UK EORI number will no longer be valid for customs activities in the EU after the end of the Brexit transition period (currently scheduled to end on 31 December 2020).

The procedure in Belgium

The companies or persons established in Belgium must, before submitting an application, verify whether or not they have already been assigned an EORI number. To do so, they must consult the EORI database (here) and enter their enterprise number preceded by “BE”. A message will then indicate whether their EORI number already exists. If this is not the case, an application form must be sent to the FPS Finance (Customs and Excise), which is available here.

Therefore, we recommend that all right holders make sure, as of today, that they are in possession of a valid EORI number (EORI online database available here), even if they do not usually carry out an activity involving contact with the customs authorities. In fact, in addition to the import and export, this number makes it possible to act quickly and have goods infringing intellectual property rights blocked by customs.

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For any question or assistance, please contact the authors:

Charlotte Behets Wydemans
cbw@simontbraun.eu
+32 (0)2 533 17 76

Fernand de Visscher
fdv@simontbraun.eu
+32 (0)2 533 17 18

The European Commission issued its new Digital Finance Package

FLASH NEWS | Yesterday, the European Commission issued its new Digital Finance Package presenting a new digital finance strategy and new legislative proposals.

The key takeaways are:
1. Legislative proposals on crypto-assets including a regulated status for previously unregulated crypto-assets;
2. An EU regulatory framework on digital resilience;
3. A renewed strategy for retail payments to foster cross-border payment solutions (instant payments) and a proposal for “Open Finance” framework.

For more information, do not hesitate to contact our Digital Finance team: digitalfinance@simontbraun.eu

Jurisdiction, territoriality and data protection: the Belgian Google case

Summary  |  This article deals with the private international law aspects in the Belgian Google case. With its decision of 14 July 2020, the Belgian Data Protection Authority confirms it is competent to hear a complaint filed against Google’s Belgian subsidiary, Google Belgium SA, even though the latter does not determine the purposes and means for the processing – which is determined solely by Google LLC, the mother company located in California. The reasoning of the Authority is three-ponged. First, it establishes that European data protection rules apply to the processing activity in question by applying the case law of the European Court of Justice. This results in the Authority having jurisdiction over the alleged infringement, conditional on the fact that the “one-stop-mechanism” would not be applicable. Then, the Authority establishes that the “one-stop-mechanism” does not apply and that there is thus no lead supervisory authority as the company responsible for the processing activity in question (i.e. Google LLC) is not established in the European Union. Lastly, it establishes that the complainant could bring a complaint only against Google Belgium SA because of the inextricable link between Google Belgium SA and its mother company Google LLC, the ambiguity created by Google themselves and the need for effective recourse for European data subjects. An appeal against the decision is currently pending before the Brussels Court of Appeal, section Market Court. A decision definitely worth keeping an eye out for.

Old, but not forgotten. On 14 July 2020, the Belgian Data Protection Authority (Autorité de protection des données / Gegevensbeschermingsautoriteit, hereinafter “BDPA” or the “Authority”) published a decision in a case involving Google following a failure to erase personal data as requested by a data subject (you can read the decision here). Google was found to breach multiple provisions of the General Data Protection Regulation (hereinafter “GDPR”). After an extensive review of the facts and interests at stake, the BDPA imposed a fine of 600k. Not surprisingly, the decision of the BDPA received widespread media attention. The fine imposed on Google is the highest fine to date.

The decision comprises an interesting aspect of private international law. Transnational companies pose multiple problems for national authorities. One of them is the complexity to determine where the processing takes place. The division of tasks within those companies is not always clear. Those questions were precisely what the Authority had to address in the case at hand. Before establishing a breach and being able to impose a fine, the BDPA first had to address whether it had jurisdiction as to such a breach under the GDPR. This is not new. The debate takes place in the bigger context of European countries struggling to ensure proper application of their national rules against transnational companies. It provides us with the opportunity to review the rules of jurisdiction and their functioning in the context of data protection.

The analysis of the BDPA is without a doubt of keen interest to many data protection lawyers, data protection officers, academics and companies, not only in Belgium but across the world.

After a short description of the case at hand (I), we will remind the applicable rules of jurisdiction and applicable law and its evolution in the context of data protection (II). Finally, we will describe how the BDPA applied them in its decision (III)

Facts

The facts leading to the case are quite simple and resemble a common scenario. When looking for information about the complainant on Google – by using his name and surname -, the search results referenced websites revealing personal information about the complainant that he wished others would not see when “googling” his name. The search results were deemed harmful to his honour and reputation.

More concretely, the case concerned a Belgian citizen, heading a big company at the time of the dispute, who had previously been in charge of several public positions and was a member of a Belgian political party, which a series of google search results referred to. In addition to that, some search results referred to articles that described how a complaint for harassment had been directed against him, which had been dismissed. Those websites were all referenced on Google.

The complainant sent Google a request to dereference a number of websites. He used the online form made available by the Google search engine created specifically for people to exercise their “right to be forgotten”, which is directly managed by Google LLC, the parent company located in California.

After examining the request, Google refused for various reasons, such as pages that were inaccessible, or which did not meet Google’s criteria for removal, but also on the ground of the public’s right to information, with considerations for the fact that the complainant is a public figure.

Following Google’s refusal, the complainant filed a complaint against Google’s Belgian subsidiary, Google Belgium SA, with the BDPA, aimed at obtaining the effective dereferencing of the websites at stake.

Preliminary central points of discussion during the proceedings were whether or not the complaint should have been directed against Google Belgium SA, Google LLC or Google Ireland Ltd and whether or not the BDPA had jurisdiction with regard to those parties.

Rules of jurisdiction and applicable law

Although the question of jurisdiction of Member States’ courts and authorities is not new and many issues had already been raised and solved under the regime of Directive 95/46/EC (see more in detail below), it is the first time the question of the BDPA’s jurisdiction is dealt with in Belgium.

Under the directive it was not mandatory for the Member States to grant corrective powers to their data protection authorities, such decision being left at their own appreciation. In Belgium, no such powers had been recognised to the Authority under the Privacy Act of 8 June 1992. Its role at the time was mainly advisory. One exception was the ability of the President of the Authority to file a suit with civil courts in Belgium.

Such power had been used to launch a case against Facebook Belgium BVBA, Facebook Ireland Ltd and Facebook Inc.[1]. At the time, the Brussels Court of Appeal had dismissed it on grounds of lack of jurisdiction of the Belgian courts. Facing the absence of clear rules of jurisdiction, the Brussels Court of Appeal had applied the general regime of private international law to consider that:

The action of the Authority was of a public nature, which excluded the application of both the Brussels Ibis Regulation[2] and of the Belgian Code of Private International Law;

Such exclusion still allowed the Court to have jurisdiction as to the complaints directed towards Facebook Belgium BVBA when it comes to its own behaviour since it was a purely internal situation. This, however, could only lead to sentencing actions which the Belgian company was directly and personally responsible for;

Also, the Court found no ground of jurisdiction as to the case filed against Facebook Ireland Ltd and Facebook Inc. and, therefore, declared itself incompetent.

This approach, combined with the lack of power of the Authority to impose administrative fines, actually led to a lack of effective recourse in Belgium against breaches committed by transnational companies.

The GDPR brought forward an improvement in this regard:

First, it gave corrective powers to all national data protection authorities of the different Members States, effectively offering an additional recourse to data subjects;

It drew clear rules of jurisdiction and applicable law, building upon earlier case law of the European Court of Justice (hereinafter “CJEU”) under Directive 95/46/EC; and

It created a general competence for “lead supervisory authority” when it comes to cross-border processing carried out by data controllers or processors whose main establishment is located in their territory.

Under the GDPR, the European privacy rules are applicable to “processing of personal data in the context of the activities of an establishment of a controller or a processor in the European Union, regardless of whether the processing takes place in the European Union or not” (art. 3.1 GDPR). They are also applicable to “processing of personal data of data subjects who are in the Union by a controller or processor not established in the Union, where the processing activities are related to: (a) the offering of goods or services, irrespective of whether a payment of the data subject is required, to such data subjects in the European Union; or (b) the monitoring of their behaviour as far as their behaviour takes place within the European Union” (art. 3.2 GDPR).

Article 55 GDPR provides that “each supervisory authority shall be competent for the performance of the tasks assigned to and the exercise of the powers conferred on it in accordance with this Regulation on the territory of its own Member State”. Recital 122 of the GDPR clarifies that this should cover in particular “processing affecting data subjects on its territory or processing carried out by a controller or processor not established in the Union when targeting data subjects residing on its territory”.

These provisions result from previous case law of the CJEU under Directive 95/46/EC. The first and most well-known case rendered was the Google Spain judgment (CJEU, 13 May 2020, C-131/12, Google Spain et Google Inc. v. Agencia Española de Protección de Datos (AEPD) et Mario Costeja González). In this decision, the Court considered that the promotion of the processing activities of Google Inc by its Spanish subsidiary (offering advertising space to make the search engine profitable) was sufficient for considering the latter as an establishment in the sense of Directive 95/46/EC. Consequently, in this case, Spanish law was applicable to the processing undertaken by Google.

Later, in its Weltimmo judgement, the CJEU stated that any national law on the protection of personal data applies where the data controller exercises, “through stable arrangements in the territory of that Member State, a real and effective activity — even a minimal one — in the context of which that processing is carried out” (CJEU, 1 October 2015, C-230/14, Weltimmo s. r. o. v. Nemzeti Adatvédelmi és Információszabadság Hatóság). Where their national law is applicable, data protection authorities may exercise effective powers of intervention (e.g. impose penalties) on the data controller or processor within the territory of their own Member State.

The combined effect of those cases strengthened the power of data protection authorities to enforce European data protection law on transnational companies, provided that the transnational companies exercised part of their activity through an establishment in that territory. This would apply even if the local entity’s activities merely consists in advertising the services of its parent company (the data controller). It is, therefore, not required that the said establishment actively participates in the processing of personal data, as later confirmed in the Wirtschaftsakademie judgment (CJEU, 5 June 2018, C-2010/16, Unabhängiges Landeszentrum für Datenschutz Schleswig-Holstein v. Wirtschaftsakademie Schleswig-Holstein GmbH).

It is the application of those rules that the BDPA had to consider for the first time in the present decision.

The analysis of the BDPA

As explained above, in the case at hand, the BDPA had to determine whether or not it had jurisdiction with regard to the refusal of Google to dereference the websites at stake.

First, the BDPA examined whether or not the GDPR was to be applied. Territoriality is an important principle of the GDPR. The territorial competence stems from the principle in international public law where a State only has competence to enforce the law on its own territory. On that point, when interpreting article 3 GDPR, the BDPA observed a legal gap. The law does not address the situation where a data controller having an establishment in the European Union does not process personal data as part of the activities of that establishment. Applying the case law of the CJEU, the BDPA concluded that the GDPR was applicable because (i) the complainant resided in the European Union, and that (ii) otherwise, if the GDPR did not apply, no adequate, nor full protection could be offered to data subjects.

The next step consisted in determining whether the “one-stop shop” mechanism of article 56 GDPR applied. In other words, whether the BDPA lacked competence because another data protection authority enjoyed a prevailing jurisdiction as a lead supervisory authority. Google argued that this was the case, since the company had chosen its main establishment in Ireland through Google Ireland Ltd. Going through a detailed analysis of the division of tasks between the various companies (Google Inc LLC, Google Ireland Ltd, Google Belgium SA) the BDPA concluded that Google Ireland was not responsible for the processing at stake, i.e. (de)referencing results on the Google search engine. The responsibility for the functioning of the Google search engine and its three phases, namely exploration, indexation and selection of results, falls solely with Google LLC. Google Ireland only processes data for modifying the search results based on the search history of users. It thus concerned a different processing activity than the one in dispute, for which Google Ireland Ltd could not be seen as the main establishment in the sense of article 4.16 GDPR. This line of reasoning has been confirmed by the Council of State in a parallel case against Google in France by a decision of 19 June 2020. The Council of State held that the “one-stop shop” mechanism was not applicable. It confirmed that the French data protection authority (“CNIL”) was competent to impose a €50 million sanction on Google LLC (you can read the decision here).

Finally, the BDPA had to consider whether or not it was competent to hear the complaint filed specifically against Google Belgium SA and not against Google Inc or Google Ireland Ltd. For this part, the BDPA relied on the Google/CNIL judgement of the CJEU (CJEU 24 September 2019, C-507/17, Google LLC v. Commission Nationale de l’Informatique et des Libertés (CNIL)) to allow the complaint by virtue of the inextricable link between Google LLC and Google Belgium SA, and the requirement of adequate and complete protection of data subjects. It was not disputed that Google Belgium SA constituted a “stable establishment” in Belgium. It was also established that the processing was indeed carried out in the context of the activities of the Belgian establishment. The BDPA highlights the international reach and the ambiguity created by Google itself which made it difficult to clearly differentiate the responsibilities of the different entities within the Google group. Therefore, even though Google Belgium SA does not determine the purposes and means for the processing – which is determined solely by Google LLC – the inextricable link and the need for effective recourses that had been highlighted in the Wirtschaftsakademie judgement justified that the complainant directed his complaint to Google Belgium SA alone.  In the BDPA’s view, it is of little importance whether the processing of the data is actually performed outside the European Union by Google LLC employees.

Particular in the reasoning of the BDPA, is that “as its activities are inextricably linked to those of Google LLC, the Belgian subsidiary – given the role it plays and itself describes – can be treated in the same way as a data controller for processing conducted within the context of the operation of Google’s search engine and responses to delisting requests in Belgium”. In these circumstances, Google Belgium SA is responsible for ensuring the compliance of the GDPR in Belgium.

Other aspects of the decision

The decision also deals with other interesting aspects such as the balance of interests between the “right to information” and the “right to be forgotten”, the territorial reach of the dereferencing request (cf. Google/CNIL judgement) and the criteria for determining the height of the fine.

The decision was published on the website of the BDPA because of “the importance of transparency in decision-making process and the decisions of the Litigation Chamber, and in light of the scope of this decision, which concerns a very large number of data subjects – i.e. all Belgian residents, and by extension all residents of the EEA – who might be listed by Google’s search engine in search queries using their first and last names as keywords”.  In the case at hand, the BDPA has decided not to redact Google’s identifying information. This is exceptional. The BDPA is of the opinion “that these redactions are necessary to the pursuit of plaintiff’s objective, which is to be delisted by Google”. The argumentation of Google Belgium SA that the publication of the decision would be counterproductive and would stigmatise Google was rejected. In the reasoning of the BDPA “it is relevant to give this decision sufficient publicity to raise awareness among internet users of their rights under the GDPR”.

Conclusion

The decision, the first one by the BDPA addressing its international jurisdiction since the GDPR entered into force, gives much food for thought. The BDPA confirms it is competent to hear a complaint filed against Google’s Belgian subsidiary, Google Belgium SA, even though the latter does not determine the purposes and means for the processing – which is determined solely by Google LLC, the mother company located in California -.

In its reasoning, the BDPA considers all the existing case law and incorporates it in the recent legal development of data protection law. The BDPA comes up with a practical solution combining a strict legal formalism and the needed considerations for the right to an effective recourse recognised by the GDPR. For David Stevens, the president of the BDPA, this case is of great importance:

This decision is not only important for our Belgian citizens, it also demonstrates our ambition to better protect online privacy together with our fellow European regulators. Concrete actions against such global players are therefore required. In this way, we want to actively contribute to a true data protection culture on a European level as well.” (you can read the article here)

The decision of the BDPA has the potential to significantly impact the way in which global organisations should be thinking about their data protection strategy in Europe.

It remains to be seen if this line of reasoning will be confirmed by the Brussels Court of Appeal, section Market Court. In appeal, it is highly likely that a prejudicial question will be asked to the CJEU regarding the interpretation of the GDPR. In the parallel case in France, Google requested the Council of State – but was denied – that the following question would be asked:

Can a controller established in a country outside the European Union with several establishments in the European Union and a designated European registered office in the territory of a Member State have a “main establishment” within the meaning of Article 4(16) of the GDPR in that Member State in the event that decisions on the purposes and means of processing are taken in that third country?”

We look forward to seeing more development on this matter.

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Eric De Gryse and Christopher Dumont

You may always contact us should you have any questions.
eric.degryse@simontbraun.eu – +32 2 533 17 52
christopher.dumont@simontbraun.eu – +32 2 533 17 58

With the contribution of Viktor Francq, summer intern 2020 at Simont Braun

 

[1] Brussel, 8 mei 2018, R.D.C.-T.B.H., 2020, nr. 1, p. 75.

[2] Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, Pb.L. 20 December 2012, issue 351, 1.

Have you thought of mediation to solve your disputes?

As part of our objective to offer tailored and efficient solutions to our clients, we are happy to announce that Fanny Laune has become a registered mediator in civil and commercial matters.

Mediation offers many advantages, in particular, the confidentiality of the process, and the possibility to create tailor-made and pragmatic solutions close to every party’s needs.

Simont Braun gathers lawyers having longstanding experience in mediation (as mediator or counsel), notably in civil and commercial matters, real estate, construction, intellectual property and corporate law.

Did you know?

Thomas Braun is a member and former president of the Belgian Chamber of Conciliation, Arbitration and Mediation in Real Estate matters (CCAI).

Emmanuel Cornu acted in the first mediation proceedings organised by the Board of Appeal of the EUIPO (European Union Intellectual Property Office).

Any question?

Do not hesitate to contact Thomas Braun, Emmanuel Cornu or Fanny Laune.

Visit our mediation page.

The electronic signature: which validity?

With the COVID-19 crisis and the rise of teleworking, certain practices have evolved as the use of electronic signatures, which may soon become the rule rather than the exception. In practice, it is not always clear which documents can be signed electronically, which type of electronic signature should be used and what is its legal value. This news addresses the legal and practical aspects of the e-signature.

Legal provisions applicable

Article 1322, subpara. 2, of the Civil Code, provides that “a signature may be required for the application of this article for a set of electronic data that can be attributed to a specific person and that establishes the maintenance of the integrity of the content of the act”.

Regulation (EU) No 910/2014 on electronic identification and trust services for electronic transactions in the internal market (eIDAS Regulation) provides that:
1. An electronic signature shall not be denied legal effect and admissibility as evidence in legal proceedings solely on the grounds that it is in an electronic form or that it does not meet the requirements for qualified electronic signatures.
2. A qualified electronic signature shall have the equivalent legal effect of a handwritten signature.
3. A qualified electronic signature based on a qualified certificate issued in one Member State shall be recognised as a qualified electronic signature in all other Member States.” (art. 25 of the eIDAS Regulation).

Different types of electronic signatures

There are three types of electronic signatures, classified according to their level of security.

The basic electronic signature

This signature consists of “data in electronic form which is attached to or logically associated with other data in electronic form and which is used by the signatory to sign” (art. 3.10 of the eIDAS Regulation). In practice, it can be a scan of a signature integrated into an electronic document, a ticked box on a website, a signature on a delivery man’s terminal, etc.

The signatory will have to establish, if the validity of his/her signature is disputed, that (i) it is attributable to him/her and (ii) the integrity of the content of the signed document is guaranteed (art. 1322, subpara. 2 Civil Code). This second condition, which is controversial, is doomed to disappear with the new Book 8 of the Civil Code, which will come into force on 1 November 2020.

The advanced electronic signature

An advanced electronic signature meets the following requirements:
(a) it is uniquely linked to the signatory;
(b) it is capable of identifying the signatory;
(c) it is created using electronic signature creation data that the signatory can, with a high level of confidence, use under his sole control; and
(d) it is linked to the data signed therewith in such a way that any subsequent change in the data is detectable.” (article 3.12 and article 26 of the eIDAS Regulation).

How – by means of which technological solution – the four requirements are complied with, is irrelevant for the legislator. As a result, service providers such as DocuSign, GlobalSign, Yousign, etc. have developed various processes to verify the signatory’s identity and the integrity of the signature to offer advanced electronic signatures.

Even if advanced electronic signatures are not assimilated to handwritten signatures by article 25.2 of the eIDAS Regulation, they rely on more elaborate verification processes which in principle meet the requirements of article 1322, subpara. 2 of the Civil Code. Therefore, they will be used for documents with high financial and legal stakes, and each time the law so requires.

The qualified electronic signature

A qualified electronic signature is an advanced electronic signature that (i) is created by a qualified electronic signature creation device (see requirements of Annex II of the eIDAS Regulation) and (ii) is based on a qualified electronic signature certificate that links the signature to the signatory’s identity (see requirements of Annex I of the eIDAS Regulation) (article 3.11 of the eIDAS Regulation).

A qualified signature is assimilated to a handwritten signature (art. 25.2 of the eIDAS Regulation) and has the same legal value. A qualified signature recognised as such in an EU Member State shall be recognised with the same legal value in all EU Member States.

In Belgium, a signature created with an identity card will be considered as a qualified electronic signature (to find out how to sign a document using your electronic identity card, see here). An EU Trusted List also gathers all trust service providers able to provide qualified signatures in Belgium (see the list here).

Itsme and GlobalSign have been accredited as such qualified trust service providers.

Requirement of multiple originals

Article 1325 of the Civil Code, which does not apply to B2B contracts, states that: “private deeds containing synallagmatic agreements are valid only to the extent that they have been made in as many originals as there are parties with a distinct interest”. Given the obvious difficulty of satisfying this condition with digital contracts, article XII.15 of the Code of Economic Law provides that “any legal or regulatory requirement of form relating to the contractual process shall be deemed to be satisfied in respect of a contract by electronic means where the functional qualities of that requirement are preserved”.

Therefore, the formality of “multiple originals” is met when a document is digitally signed by all the parties, for which any modification of the content of the act requires the joint action of each of them.
Since it is not a matter of public order, the parties can also contractually exclude the application of article 1325 of the Civil Code.

In practice

Acts under private signature

Private agreements can be validly concluded by means of an electronic signature.

All types of signature are valid, provided that the conditions of article 1322, subpara. 2 of the Civil Code are met for unqualified signatures. In practice, disputes as to the probative value of an unqualified electronic signature are rare. The type of signature will, therefore, certainly depend on the importance of the document to sign.

Notarial deeds

Article 1317 of the Civil Code states that notarial deeds can be received in dematerialised form, in which case a qualified electronic signature will be admitted.

In practice, the electronic signature of these deeds implies the establishment of a database of notarial deeds (NABAN), which has not yet been implemented.

Corporate documents

Documents drawn up for the management of legal entities (such as minutes) may be signed electronically by ordinary, advanced or qualified signatures.

The Companies and Associations Code expressly provides for the use of the ordinary or qualified electronic signatures for remote and proxy voting (art. 7:143 and 7:146).

The choice of the type of signature will depend on the importance and the nature of the decision taken by the corporate body.

Conclusion

According to the principle of non-discrimination in article 25.1 of the eIDAS Regulation, an electronic signature cannot be disregarded solely on the ground that it is an electronic signature. The author of a qualified signature will be assimilated to the author of a handwritten signature, whereas the author of an ordinary or advanced signature will have to convince the judge of the meeting of the conditions of article 1322, subparagraph 2 of the Civil Code.

In practice, all documents can be signed electronically but the type of e-signature must be adapted to the issues involved.

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For any question on this subject, please contact Sandrine Hirsch or Axel Maeterlinck
sandrine.hirsch@simontbraun.eu | +32 (0)2 533 17 64
axel.maeterlinck@simontbraun.eu | +32 (0)2 533 17 64

COVID-19 – IP Offices take measures to face the pandemic – Update 7 July

Update 7 July 2020  |  The COVID-19 pandemic has been progressing worldwide. In an effort to control its expansion, public authorities have taken restrictive measures that impact both people and companies on their territory. In this context, IP Offices have adopted decisions to secure their users’ rights and the safety of their staff. Here are the key takeaways from these recent decisions.

I.   COVID-19 MEASURES TAKEN BY INTERNATIONAL AND REGIONAL IP OFFICES

This section focuses on the main International and Regional IP Offices in Europe, namely the World Intellectual Property Office (WIPO), the European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO) and the Benelux Office for Intellectual Property (BOIP).

Measures taken by the WIPO

1. All time limits under the Madrid System that concern the IP Office of a Contracting Party that is closed due to the COVID-19 pandemic are automatically extended to the first subsequent day on which that Office reopens.

2. Holders and applicants who have failed to meet a time limit may request the WIPO to continue processing the international application, subsequent designation, payment or request concerned, by presenting the official form MM20 within two months from the expiry of the time limit, without any reason or evidence needed (the form is available here).

3. The International Bureau of the WIPO has provided an interpretation of the COVID-19 pandemic as an excuse for delays in meeting PCT time limits which relate either to the submission of documents or to the payment of fees. However, this interpretation does not apply to international patent applications.

4. The International Bureau of the WIPO has announced that users of the Madrid System (trade marks) and the Hague System (industrial designs) will be excused from failure to meet a time limit due to the COVID-19 pandemic, provided they make a request for relief within six months from the expiry of the time limit concerned. This measure applies to time limits for the transmission of a communication, the submission of information to correct an irregularity and the payment of fees. However, this measure does not apply to the payment of the second part of the individual designation fee through the International Bureau.

5. The processing of applications and other IP and related systems has not been affected by the pandemic. However, the International Bureau of the WIPO will only receive and transmit documents via email until further notice. Therefore, applicants, holders and their representatives are strongly encouraged to provide an email address and use electronic communication services.

6. All events and meetings organized or co-organised by WIPO until the end of May will be postponed and, should that not be possible, cancelled.

Measures taken by the EPO

1. All time limits expiring on or after 15 March 2020 in proceedings under the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT) were extended until 2 June 2020.

2. All oral proceedings scheduled until 14 September 2020 before the EPO Examining and Opposition Divisions are postponed until further notice unless they have been confirmed to take place by videoconferencing.

3. The EPO Boards of Appeal have resumed the holding of oral proceedings to a limited extent from Monday 18 May 2020. Concerned parties will be contacted accordingly. They will be requested to confirm as soon as possible their ability to attend in person and the absence of travel restrictions.

4. All EPO organised live events until 14 September 2020 have been postponed until further notice. Participants will be contacted on an individual basis and, where possible, be informed of the news dates. The EPO will otherwise continue its other activities without interruption.

5. Professional representatives and users are encouraged to make use of the EPO online services.

Measures taken by the EUIPO

1. All time limits expiring between 9 March 2020 and 17 May 2020 inclusive were automatically and with immediate effect extended until 18 May 2020. This applied to time limits set by the EUIPO and those imposed to the EUIPO by the EU framework on trademarks and designs. This did not apply to time limits before other authorities, such as the time limit to bring an action before the General Court against decisions of the EUIPO Boards of Appeal.

2. As of 18 May 2020, extensions have come to an end. Nevertheless, parties are reminded that they may request :

  • a six months extension of a time limit set by the EUIPO before that time limit expires and if exceptional circumstances justify it. Exceptional circumstances include (1) difficulties arising from measures taken by public authorities against the pandemic and (2) sickness of the party or its representative. The EUIPO may subject the extension to the agreement of the other party. Additional extensions may also be granted upon request.
  • a six months suspension of the proceedings before the EUIPO if exceptional circumstances justify it. In that case, exceptional circumstances also include the financial difficulties preventing the party from obtaining or securing continued professional representation before the EUIPO that are cause by the pandemic. In trademark proceedings, the suspension may be extended upon joint request for a total maximum of two years. In design invalidity proceedings, the suspension will be granted for periods of six months regardless of the period requested by the parties.
  • the continuation of proceedings within two months of the expiry of the unobserved time limit, even without giving any justification, provided that the omitted act is carried out in the meantime and a fee of 400 euros is paid. However, this option is not available in design proceedings and does not apply to certain time limits, including the time limit to file an appeal against a decision of the Boards of Appeal before the General Court.
  • the reinstatement of rights when a time limit to perform a procedural act was missed, despite taking all due care required by the circumstances. A request must be submitted within two months of the removal of the cause of non-compliance and no later than one year after the expiry of the missed time limit. Evidence must be provided that all due care was taken, that the omitted act was carried out in the meantime and that a 200 euros fee was paid. However, it is not applicable to certain time limits, including the time limit to file an appeal against a decision of the Boards of Appeal before the General Court.

Procedural time limits for lodging appeals at the General Court remained unchanged. Parties are however reminded that, in the event of unforeseeable circumstances or force majeure, they may request an extension to the General Court on the basis of Article 45 of the Protocol on the Statute of the Court of Justice. By contrast, in ongoing proceedings, the CJEU has specified that time limits are automatically extended by one month until further notice. However, this does not apply to time limits for instituting proceedings before the CJEU.

3. With the ending of the extension period, the EUIPO Executive Director confirmed that the last of the 21 000 delayed EU trade marks were published in the Bulletin. In addition, the EUIPO has gradually sent approximately 1.000 letters that were delayed due to the pandemic.

4. From 8 June 2020 on, all communications to the EUIPO can be carried out online. A “Reply” button is now available for all e-communications where a reply is permitted. A “Fax Alternative” option has been added as an additional fall-back solution.

5. All meetings and events taking place in March have been postponed until further notice. The participants having incurred expenses will be fully reimbursed by the EUIPO.

6. The EUIPO has guaranteed that it is “business as usual” for all its activities, thanks to its digital tools and its teams working from home. It has put in place a dedicated monitoring committee to follow the situation and take further measures where necessary. In the first phase of the return plan, 70 volunteers have returned to work on the EUIPO premises, while the rest of the staff continues to telework.

 

Measures taken by the BOIP

1. From 16 March 2020 to 25 May 2020 (“BAU date”), the BOIP has not withdrawn any requests or procedures for not meeting a given deadline.

An additional period of one month calculated from the BAU date has been given for all requests and procedures whose deadlines (1) have expired between 16 March 2020 and the BAU date, or (2) were less than one month from the BAU date, hence until 25 June 2020.

The BOIP has specified that:

  • All time limits that were set to expire between 16 March 2020 and 24 June 2020 have expired on 25 June 2020, including time limits for payments and time limits to file an opposition against a trademark application ;
  • All time limits that were set to expire on or after 25 June 2020 have remained unchanged ;
  • All time limits set from 25 May 2020 onwards will remain unchanged, even if they were set to expire before 25 June 2020.

It is important to note that this extension does not cover time limits to bring an action before the Benelux Court of Justice.

2. Until further notice, the register may not reflect the accurate status of certain trademarks. This is because the IT system of the BOIP applies the provisions of the Benelux Convention on Intellectual Property automatically.

3. The telephone accessibility of the BOIP was restored on 15 May 2020. Its staff will nevertheless continue to work from home as much as possible.

4. During the month of June 2020, it was possible to file i-DEPOTs free of charge. This system allows the applicant to have legal, date-stamped proof of an idea within minutes of the filing.

 

II.     COVID-19 MEASURES TAKEN BY NATIONAL IP OFFICES

This section focuses on the measures adopted by several national IP Offices, namely the US IP Office (USPTO), the German IP Office (DPMA), the UK IP Office (UKIPO), the French IP Office (INPI), the Italian IP Office (UIBM) and the Belgian IP Office (OPRI).

Measures taken by the USPTO

1. Time limits expiring between 27 March 2020 and 31 July 2020 concerning the petition for restoring priority or benefit rights in relation to patent applications and the payment of the associated petition fees to the USPTO are extended until 1 August 2020, provided that the filing or payment is accompanied by a statement that the delay was due to the COVID-19 outbreak. Until further notice, patentees may file initial patent term extension applications may be filed through the USPTO patent electronic filing system.

2. For small and micro entities only, the USPTO has also extended time limits expiring between 27 March 2020 and 29 September 2020 concerning the payment of certain fees (including basic filing fees, search fees, examination fees, late filing surcharge, basic national fee, issue fee and maintenance fee) until 30 September 2020.

3. In other cases, the USPTO will grant relief to those who need it on a case-by-case basis. Applicants should file a “petition to revive” in the forms prescribed if (1) they were unable to submit a timely response or fee in response to an Office communication, (2) they missed the 36-months statutory deadline for filing a Statement of Use resulting in an abandoned application or (3) they missed a statutory deadline resulting in a cancelled/expired registration. With regard to proceedings before the Trademark Trial and Appeal Board, if the COVID-19 outbreak has prevented or interfered with a filing, parties can make a request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time, as appropriate.

4. Oral hearings at the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB), interviews of patent examiner and trademark examining attorneys and meetings will be solely conducted by phone or videoconference until further notice. Although the USPTO offices will remain closed to the public until further notice, its activities will nevertheless continue without interruption.

5. Under the new COVID-19 Prioritized Examination Pilot Program :

  • Small or micro entities may file a request for prioritized examination, without payment of the typical fees, in relation to patent applications covering a product or process that is subject to U.S. Food and Drug Administration approval for use in the prevention and/or treatment of COVID-19. Up to 500 qualifying patent applications will be accepted for prioritized examination and exempted from the usual fees.
  • Applicants may file petitions to advance the examination of trademark applications covering medical products and services linked to the prevention and/or treatment of COVID-19. Such petitions may be filed free of charge.

6. The filing of plant patent applications and follow-on documents is temporarily permitted via the USPTO patent electronic filing systems until further notice. Filers are reminded that only registered users may benefit from that option.

7. The USPTO will accept copies of handwritten signatures (instead of originals) for correspondence relating to “registration to practice before the USPTO in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings” and payments by credit card “where the payment is not being made via the USPTO electronic filing systems”.

8. The USPTO launched the COVID-19 Response Resource Center in order to provide improved access to its initiatives, programs and IP-related information concerning the COVID-19 outbreak. To access this Center, click here.

Measures taken by the DPMA

The DPMA has confirmed its ability to perform its activities, but its services should come with delays. During the COVID-19 crisis, the following measures will be applicable:

1. All time limits prescribed by the DPMA with regard to all pending IP procedures were extended until 4 May 2020. However, this extension did not apply to time limits provided by German law, as the DPMA competence does not extend to those time limits, nor to time limits in connection with applications or requests concerning the international registration of trademarks. Any person who has failed to meet a time limit imposed by law due to the current situation may request to benefit from the option of re-establishment of rights. The unit in charge will check these requests on an individual basis.

2. Hearings and oral proceedings were cancelled ex officio until 30 June 2020. From 1 July 2020 on, the DPMA has started to gradually grant access to invited individuals. If the number of infections does not rise uncontrollably, hearings and orals proceedings will take place at the DPMA from that date. To this day, the DPMA has not issued any further guidance in that regard.

3. The DPMA can no longer guarantee the immediate transfer of international design applications to the WIPO. Applicants are advised to file such applications directly to the WIPO.

Measures taken by the UKIPO

1. The UKIPO has declared that from 24 March 2020 and until 29 July 2020, all days are considered “interrupted days”. All time limits that expire on an interrupted day are automatically extended to the next day. As a result, the first “normal day of operation” will be 30 July 2020, when all time limits that benefited from an extension will expire. This extension applies to all time limits set out by the UKIPO or by UK statutory rules.

2. From 30 July 2020 to 31 March 2021, the UKIPO has announced temporary fee changes to support businesses. In particular, fees for extension, reinstatement or restoration will be zero.

3. No physical hearings will be booked or take place until further notice. These hearings will be operated via telephone, videoconference or other virtual methods.

4. The time limit for responding to examination reports has been automatically extended to four months for all UK trademark applications. However, that time limit remains two months for UK design applications, although extensions may be requested by applicants.

5. With its staff currently working from home, the UKIPO is now able to process paper forms, faxes and paper correspondence in a limited capacity.

That being said, the UKIPO is currently unable to issue letters in relation to renewals. This may result in some users experiencing shorter timeframes from receipt of their letters to the expiry of the renewal period. Users are therefore encouraged to proactively manage their renewals rather than relying on these letters.

The address paperformcontingency@ipo.gov.uk can be used instead of faxing, posting or delivering documents by hand at the UKIPO. Forms should be sent in separate e-mails, accompanied with a fee-sheet if a fee is due. New applications should be made using the UKIPO online system, as delays should be expected for any other form of filing. Electronic signatures on forms and other documents will be accepted..

Measures taken by the INPI

1. The INPI buildings will remain closed to the public until further notice. In the meantime, its staff remains available by phone and e-mail. Its online services remain fully functional, whereas official copies of documents may only be provided by the INPI in a pdf format signed electronically. Finally, its trainings will remain suspended, with the exception of online webinars.

2. After the first measures taken by the INPI on 16 March 2020, the French Government has adopted an ordinance n°2020-306 on 25 March 2020 (as consolidated on 15 May 2020) that extends all time limits expiring between 12 March 2020 and 23 June 2020 to:

  • 23 July 2020 if the initial time limit was one month; or
  • 23 August 2020 if the initial time limit was two months or more.

The INPI has communicated that this extension applies to all time limits prescribed by the French Code of Intellectual Property, including time limits applicable to trademark opposition proceedings and to the renewal of IP rights. However, this extension does not apply to time limits prescribed by International and European legal texts such as priority deadlines for an international extension, time limits applicable to the payment for the filing of a patent and time limits for the filing of a supplementary protection certificate.

In proceedings where a suspension was requested or comes to an end, a letter will be addressed to the parties with the date on which the procedure is to be resumed. As a rule, the following will apply :

  • If a suspension is requested or renewed between 12 March 2020 and 23 July 2020 inclusive, it will be calculated from 24 June 2020 inclusive in its entirety.
  • If a suspension requested jointly by the parties ends between 12 March 2020 and 23 July 2020 inclusive, the number of days of suspension remaining on 12 March 2020 will be calculated from 24 June 2020 inclusive.

The INPI has also clarified the impact of the extension period on opposition proceedings:

  • The time limits to file an opposition that were due to expire before 12 March 2020 have not been extended.
  • The time limits to provide reasons for an opposition filed before 12 March 2020 have been extended until 23 July 2020.
  • The time limits to file an opposition that were due to expire between 12 March 2020 and 23 July 2020 have been extended until 23 August 2020.
  • The time limits to provide reasons for an opposition filed between 12 March 2020 and 23 July 2020 have been extended until 23 September 2020.

3. All notifications sent by the INPI Trade mark and Design Department to its users will be accompanied by an e-mail copy until further notice. This measure applies to certain notifications relating to opposition proceedings, namely (1) the opposition notification, (2) the notification setting a time limit for providing proof of use of the earlier trademark, (3) the draft decision notification and (4) the decision notification. Parties are reminded that notifications are also available on the INPI online portal and that they should check the e-mail address communicated to the INPI to avoid e-mail delivery failures.

4. All notifications that were not answered in time between 12 March 2020 and 23 June 2020 will remain on hold until the end of the extension period. To ensure the efficiency of the decision-making process, parties are advised to inform the INPI if they do not want to answer to a notification, or if they do not intend to benefit from a time limit extension.

Measures taken by the UIBM

The Italian Decree-Law No. 23 of 8 April 2020 provides for the following measures:

1. All time limits relating to administrative proceedings at UIBM pending on 23 February 2020 or commenced after that date are suspended until 15 May 2020. This does not apply to time limits applicable to appeals before the Board of Appeal, nor to time limits applicable to international patent and trademark applications (first filings and renewals).

2. All IP rights expiring between 31 January 2020 and 31 July 2020 remain valid until the 90th day following the end of the state of emergency. The UIBM will promptly inform users about that date. After that date, it is the responsibility of the interested party to take action in order to obtain their maintenance or renewal.

The UIBM has also taken its own internal measures to face the pandemic:

1. The UIBM offices have been closed from 12 March 2020 and until further notice, but its staff remains active. The processing of paper documents forwarded by post will only be possible upon the reopening of the UIBM offices. Applicants and holders are advised to use the electronic filing system.

2. The release of authenticated copies has been temporarily suspended. Applicants and holders may only receive simple copies by email. All requests in that regard must be addressed to the following address: mirella.smecca@mise.gov.it.

3. The filing of international patent applications may still be made through the ePCT platform on which the UIBM is fully operational. The filing of international trademark applications should be made via a dedicated certified legal e-mail address: dglcuibm.div08@pec.mise.gov.it. In addition, applications in paper format have to be sent to the UIBM as soon as possible.

Measures taken by the OPRI (Belgium)

1. After announcing that it was prepared to accept, as far as possible and on a case by case basis, individual requests for extension of time limits, the OPRI has stated that it does not currently have a legal basis to grant time limits extensions before the Office in the event of a crisis.

2. Since 1 July 2020, the OPRI has resumed its normal functioning with regards to notifications. Previously, the OPRI had decided to stop sending legal notifications to its users, that would have the effect of setting a new binding time limit sanctioned by a loss of rights in the event of non-compliance. On 25 May 2020, the OPRI had resumed sending such notifications to its users, accompanied by an e-mail copy as a courtesy measure. Since 1 July 2020, the OPRI has stopped practising this courtesy measure, and therefore resumed its normal functioning in that regard.

3. The search service “EPOQUE” provided by the OPRI Information Section has remained suspended until 25 May 2020. Since then, searches may only be conducted through that service in limited amounts as a first step.

4. With its staff working from home, the OPRI has urged users to give preference, where possible, to electronic channels of communications. Applicants and holders are advised to use the OPRI online filing tool (eOLF) or its fax number (+32 2 277 52 62). The use of emails is recommended as well, except for the filing of formal acts.

CONCLUSION

In the last months, IP Offices around the globe have taken measures to secure their users’ rights in the midst of the COVID-19 outbreak. Although most Offices have announced the extension of procedural time limits, these announcements call for caution: depending on the case, those extensions may be limited to some instances of the Office concerned, or to some provisions of the legal texts applicable. Therefore, we advise IP professionals and companies to take extreme care in the way they handle IP assets in these troubled times.

***

For any question, please contact the authors:

Emmanuel Cornu: emmanuel.cornu@simontbraun.eu
Romain Meys: romain.meys@simontbraun.eu

 

The information presented in this site is not legal advice or opinion. You should seek advice from a legal counsel of your choice before acting upon any of the information in this site.

Fanny Laune featured in Trends-Tendances regarding judicial restructuring procedure

Fanny Laune is featured in the Trends-Tendances article “Faut-il assouplir la réorganisation judiciaire?” by Gilles Quoistiaux.

This is the opportunity to share views on a draft bill aiming to simplify this rescue procedure for companies which will likely boom in the coming months…

The article is available here.

Should you have any question on this subject, bankruptcy or insolvency in general, do not hesitate to contact Fanny: fla@simontbraun.eu

 

 

Simont Braun recognised again for its patent expertise by iAM 1000

Our IP team has again been highly recognised in Silver Band for its expertise in patents by iAM Patent. The department is ranked in Silver with the following mention:

“Complex global patent litigation is meat and drink to the lawyers at Simont Braun, who conjure up ingenious solutions to contentious challenges in the life sciences, medical device, electronics sectors. Fernand de Visscher recently played a hand in a high-profile matter for weapons manufacturer FN Herstal, ensuring that his client could keep its key product on the international market. He also teamed up with colleague Eric De Gryse to represent OGI Systems, a diamond and gemstone manufacturer, in parallel infringement proceedings which are also ongoing in Israel and India. They both possess significant trial strength and an intuitive feel for the intricacies of each brief, giving every angle the attention it deserves to cover all bases and construct bulletproof arguments.”

Fernand de Visscher and Eric De Gryse are also individually ranked in Silver for their experience and capabilities.

Thank you to our clients and peers for your trust!

Suspension of the notice periods during Corona temporary unemployment

The law of 15 June 2020 that aimed at suspending the notice periods during the days of temporary unemployment due to force majeure as a result of the COVID-19 crisis came into force today.

The law applies to all dismissals with a notice period to be served that have begun since 1 March 2020.

The law did not provide for retroactive effect, which means that it is only from the date of publication of the law, i.e. 22 June 2020, that the notice period will be suspended for all days of temporary Corona unemployment.

Therefore, the periods of temporary unemployment put in place until the date of publication of the Act will not affect the notice periods that have started to run since 1 March 2020.

As a result, these periods of suspension should be taken into account when determining the effective duration of the notice period insofar as they extend it by an appropriate amount, as is the case, in particular, for days of holiday or sickness.