Highlights 2020 and upcoming events in 2021

What happened in 2020, and what is to expect in 2021?

Every day in December, Simont Braun shared legal highlights of 2020 and upcoming events for 2021 in its End-of-Year Countdown.

Here is a recap of each highlight by area of practice:

1. Corporate law
2. Intellectual property
3. Digital finance & Financial services
3. Civil law and Dispute resolution
4. Real Estate & Public law.

 

Corporate law

 

Golden year of remote corporate meetings and e-signatures

Since 1 January 2020, the new Companies and Associations Code allows remote shareholders and board meetings in writing or via electronic means of communication under certain conditions. With Covid-19, the Belgian government further facilitated the process and temporarily removed the legal obligation for such remote meetings to be authorised by the articles of association.

An ambitious draft bill of 27 October 2020 now notably proposes to incorporate this measure into the Companies and Associations Code.  Let’s see how it progresses in 2021…

The growing use of electronic signature in business relations also plays a major role in organising these remote corporate meetings. For more information, see our previous news here authored by Sandrine Hirsch, Axel Maeterlinck and Maxime Born.

Simpler rules for companies’ internal regulations

Since 1 January 2020, the new Code of Companies and Associations applies to companies and associations created before 1 May 2019. The new Code modernises and simplifies Belgian corporate law.

Recently, the Constitutional Court further softened the rules regarding internal regulations (“règlement d’ordre intérieur” / “intern reglement”), stating that they may even contain provisions affecting the rights of shareholders or members, the powers of the corporate bodies and the organisation and procedures of the general meeting. In such cases, these internal regulations must be approved by a resolution meeting the attendance and majority requirements for an amendment of the articles of association.

The impact of the Shareholder Rights Directive II (SRD II) on listed companies

The SRD II has now effect in Belgium.

The law of 28 April 2020 amends the Companies and Associations Code, for example, concerning the regulation of intra-group conflicts, which is likely to apply much more frequently following the extension of its scope of application to “related parties” as defined in IAS 24.

This law also modifies the Transparency Law, allowing listed companies to request information from the relevant intermediary regarding the identity of their shareholders and their shares whatever the importance of their holdings.

The Belgian law is available here. Let’s see how it goes in practice…

UBO Register: new obligations

Since 11 October 2020, all entities reporting to the UBO Register must file any document proving that the information on their ultimate beneficial owners is “adequate, accurate and up-to-date”. These documents can be, for example, the share register, articles of association, notarial deeds, etc. Their access is restricted to the competent authorities.

We remind you that all modifications must be recorded in the UBO-register within a one-month period and that the information recorded must be confirmed annually.

For more information, see our previous news here authored by Sandrine Hirsch and Nikita Tissot.

 

Intellectual property

 

The protection of geographical indications under international trade agreements

Since 26 February 2020, the Geneva Act of the Lisbon Agreement on Appellations of Origin is binding the EU Member States.

We are eager to learn the next step: which PDO-PGI will be placed on the multilateral register and deserve protection in all countries of the Lisbon Union?

We guess all 3732 current records on the EU’s e-Ambrosia GI register will not have the privilege, but only a few reputed geographical product names. Let’s wait and see!

New regulatory framework for patent attorneys

On 1 December 2020, the first part of the reform came into force. It includes the rules governing access to the profession of patent attorney and the creation of a Belgian Institute for Patent Attorneys, which will notably represent the patent attorneys active in Belgium, enforce ethical rules and organise continuous training.

For a pragmatic overview of the new law by Emmanuel Cornu and Charlotte Behets Wydemans, click here.

Don’t forget to stay tuned for the second part of the reform coming in 2021.

Design protection under review by the EU Commission

Are you a designer or a company owning IP rights? Be aware that the EU Commission thinks about reforming national and EU design laws.

The 6 key lines of attack are:

  • raising awareness on the benefits of design protection,
  • increasing harmonisation of the protection across the EU,
  • simplifying the design registration process,
  • ensuring consistency with trademark and copyright laws,
  • taking better account of the increasing digitalisation and
  • introducing rules on spare parts, crucial in the automotive sector.

The full examination and its highlights are available here. We will keep you posted!

What does 2021 hold for the Vertical Block Exemption Regulation (VBER)?

The VBER is currently under review by the EU Commission. Will it be prolonged, revised, replaced? How will the future rules impact current and upcoming business models?

Let’s see what 2021 has in store for us!

For more information, see the European Commission’s press release here.

 

Digital finance and financial services

 

The impact of Brexit on the Belgian payments scene

The 2016 UK Brexit referendum results will finally kick in on 1 January 2021, but a lot has already happened.

Several UK e-money and payments institutions, mainly focusing on money remittance, FX and B2B services, have chosen Belgium as their post-Brexit EU hub. Around 20% of all Belgian payment institutions have now a Brexit background, adding a lot of maturity to the sector.

2021 will be a stress test and reveal how smooth the migration will be for payment service users.

A European legal framework for crypto-assets in 2021?

In September 2020, as part of its digital finance strategy, the European Commission proposed a draft regulation on markets in crypto-assets (MiCA) to regulate crypto-assets and related services not yet captured by existing EU regulations.

By bringing a legal framework for crypto-assets, MiCA intends to facilitate digital innovation while ensuring consumer protection and financial stability.

If adopted, this regulation will be a major development for FinTechs in 2021. We will keep you posted!

An EU single AML/CFT supervision body for financial institutions and an EU AML Regulation in 2021?

In November 2020, the EU finance ministers agreed to set up a single EU supervision body to prevent money laundering and terrorist financing. It would have direct supervisory competences regarding some categories of obliged entities (among which, credit institutions, payment institutions, e-money institutions and virtual asset service providers), and the power to take over supervision from national supervisors under exceptional circumstances.

They further agreed to support and invite the EU Commission to present a legislative proposal for an anti-money laundering and counter-terrorist financing regulation with a view to an even application of the provisions throughout the EU.

The Commission is expected to present legal proposals in this respect in early 2021. For more information, click here.

Outsourcing and cloud services under the financial supervisors’ radar in 2021?

On 1 January 2021, the EIOPA’s Guidelines on outsourcing to cloud service providers will come into force. Existing cloud arrangements will have to be put in line with these new requirements by 31 December 2022.

These guidelines show the supervisors’ increasing focus on (cloud) outsourcing arrangements. With the development of technology, many if not all financial actors outsource IT and other related services to external providers, thereby spreading the risk of the financial sector to non-related actors (e.g. ICT).

The EU and national supervisors have noticed this trend, and we can expect an increasing and direct control of key ICT providers by the financial supervisors in the near future.

 

Civil law and dispute resolution

 

Judicial reorganisation procedure (“PRJ/WCO”): two upcoming laws

The first draft bill facilitates access to the PRJ/WCO.

The second one applies to PRJ/WCO by transfer under judicial authority and requires the assignee to motivate its choice not to take over certain employees of the transferred enterprise on technical, economic & organisational grounds independent of the transfer itself.

Read here the key takeaways of these two draft bills by Fanny Laune and Maxime Born.

Stay tuned to learn more about these upcoming novelties in insolvency law!

Alternative dispute resolution (‘ADR’) is the new black in Brussels

On 3 September 2020, the Brussels French-speaking court for enterprises created a special section dedicated to conciliation, a well-known ADR mode.

A hearing before this section aims to help the parties reach a settlement with the support of a conciliator judge trained to ADR.

This measure is a big step to foster ADR in Brussels.

The roaring twenties’ complete makeover of the 1804 Belgian Civil Code

On 1 November 2020, the brand new Civil Code and the book on evidence came into force. On 1 September 2021, it will be the turn of the book on property law.

Recently, the new Belgian government also confirmed its commitment to proceed, in 2021, with the reform of the Law of obligations prepared by an expert commission including Rafaël Jafferali and Sander Van Loock.

This reform strikes a new balance between strengthening party autonomy and expanding the courts’ role where necessary.

New rules on evidence: same old same old?

On 1 November 2020, the new book VIII on evidence of the new Civil Code entered into force. Although the new rules do not seem to deviate from the old ones radically, new principles might prove to be game-changers and will at least modify the way litigators deal with evidence.

For the 10 key takeaways of the new book VIII, see our previous news here authored by Béatrice Thieffry and Charles-Edouard Lambert.

The most iconic change is probably that the judge may now shift the burden of proof in exceptional circumstances and with a special motivation.

 

Real estate and public law

 

Upcoming (r)evolution of Belgian property law?

Manuela von Kuegelgen explains 10 key practical takeaways of the upcoming reform here.

On 1 September 2021, Book III of the new civil Code on property law will come into force. The new rules are more transparent, flexible and modern, but many questions remain, and discussions will be intense for a while…

Don’t wait until the last minute to adapt your contracts. How? Where to start? Read our highlight here or contact our team for assistance.

The strengthening of public cooperation

When can public authorities cooperate without going through a public procurement procedure?

Laura Grauer highlights the conditions for such cooperation here, based on the CJEU’s recent decision clarifying the requirements that such cooperation must fulfil to remain outside the scope of public procurement rules.

Compulsory insurance in the construction sector: perfectly imperfect

One year ago, it became mandatory for service providers others than architects to cover for their civil liability and professional indemnity.

Nevertheless, in 2020, it is still not clear what needs to be insured by whom.

Thomas Braun and Alexia Faes clarify the existing rules here.

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Thank you for following our End-of-Year Countdown! Our lawyers are happy to assist you should you need any guidance.

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New regulatory framework for patent attorneys

Version française disponible ici – Nederlandse versie beschikbaar hier.

On 1 December 2020, the first part of the law of 8 July 2018 reforming the profession of patent attorney and creating a Belgian Institute for Patent Attorneys, entered into force.

This law is an addition to the existing regulations on the profession of patent attorney. The second part of the law will come into force in 2021.

Two royal decrees were adopted on 30 September 2020 to implement this law. The first one is a royal decree on patent representation. The second one is a royal decree establishing the disciplinary regulations applicable to patent attorneys.

Access to the profession of patent attorney

 Any person who establishes in Belgium to practise the profession of patent attorney must first be registered in the register of recognised patent attorneys. Natural persons wishing to appear in this register must satisfy various conditions, in particular:

  • be a natural person;
  • be a national of an EU Member State;
  • be domiciled in an EU Member State;
  • satisfy the conditions relating to training and professional qualification.

These requirements came into force on 1 December 2020.

The law also determines the conditions under which a person who is a national of a Member State, who is legally established in a Member State to practise the profession of patent attorney, and who comes to Belgium for the first time to practise as a patent attorney on a temporary or occasional basis, or who is practising as a patent attorney in Belgium for the first time without coming to Belgium, may act as a professional representative before the Belgian Office for Intellectual Property (“OPRI”) in the same way as a recognised patent attorney.

The date of entry into force of these provisions has yet to be determined by royal decree. Currently, these persons are authorised to practise in Belgium pursuant to the principle of the freedom to provide services: any attorney and patent attorney who is a national of an EU Member State can practise this profession in an EU Member State, as well as any attorney authorised to practise this profession in Belgium pursuant to a law or an international convention, may act in the same capacity as a recognised patent attorney before the OPRI.

The register of recognised patent attorneys is regulated by the royal decree on patent representation. It is freely available for consultation. It is maintained by the OPRI within the FPS Economy (Belgian Federal Public Service for Economy). For each registered person, this register contains certain data. The registered person must notify the OPRI of any modification of their data within fifteen days, as well as any modification of their situation with regard to the conditions of registration in the register. This part of the reform entered into force on 1 December 2020.

Creation of the Institute for Patent Attorneys

The law creates an Institute for Patent Attorneys.

This Institute has legal personality, is self-financed and has its headquarters in the Brussels-Capital Region. Its purpose is the study, protection and development of the professional, socio-economic, moral and scientific interests of patent attorneys.

The Institute for Patent Attorneys is composed of three bodies:

1. The General Assembly, composed of all the members of the Institute, including a president and a vice-president who are elected for a period of six years.

2. The Council, composed of four members, elected by the General Assembly from among its members for a period of six years. The Board is notably in charge of the management of the Institute for Patent Attorneys.

3. The Disciplinary Commission, composed of three members and three substitute members elected by the General Assembly from among its members for a period of six years. The Disciplinary Commission ensures that the disciplinary regulations and rules of conduct are applied by the members of the Institute.

A government commissioner and a deputy who assists him/her are appointed by royal decree on the proposal of the Minister in order to control the acts of the General Assembly and the Council of the Institute for Patent Attorneys.

The mission of the Institute for Patent Attorneys consists of:

1. Establishing a list of its members;

2. Coordinating the continuous training of its members;

3. Ensuring compliance with the disciplinary rules and the rules of conduct;

4. Expressing, on its own initiative, or at the request of public authorities or public or private institutions, opinions on matters within its competence; and

5. Sharing information with the Patent Agent Accreditation Commission existing within the OPRI concerning the status of the affiliation of the members of the Institute.

All patent attorneys in the register of recognised patent attorneys, as well as all patent attorneys who practise the profession of patent attorney in Belgium on a temporary or occasional basis, will automatically be affiliated to the Institute for Patent Attorneys.

This part of the reform also came into force on 1 December 2020.

Aspects related to the registration of patent attorneys

The law enacts the aspects related to the registration of patent attorneys.

Patent attorneys who are members of the Institute for Patent Attorneys must comply with the Institute’s disciplinary rules, rules of conduct, continuous training obligations and internal policies. This obligation comes into force on 1 December 2020.

The members of the Institute must also be covered by an insurance policy for any liability that may arise within the exercise of their profession as a patent attorney. The terms and conditions of this insurance are laid down in the royal decree on patent representation. The date of entry into force of this obligation has yet to be determined.

The professional title of  “mandataire en brevets” – “octrooigemachtigde” – “Patentanwalt” will become a legally protected title on a date that has yet to be determined by a future implementing decree. However, members of the Institute who only temporarily or occasionally work in Belgium will do so under the professional title (or the academic title) of their Member State of origin.

Professional secrecy and right to speak before Belgian courts and tribunals

Professional secrecy will be applicable to patent attorneys in the context of their intervention in judicial or administrative proceedings from a date yet to be determined. No one may disclose or be compelled to disclose communications exchanged between the patent attorney, acting in such capacity, and their client unless the latter has expressly waived this right.

Patent attorneys are recognised as having a right to speak before courts. At the request of the party or their attorney, they may provide written or oral explanations of factual matters, technical considerations or questions relating to the application of patent law. The date of entry into force of this right has yet to be determined.

Disciplinary rules

A set of Disciplinary Rules has been established by a royal decree of 30 September 2020, which came into force on 1 December 2020.

Since 1 December, members of the Institute are subject to certain ethical obligations such as the obligation to exercise their profession with dignity and integrity, an obligation of discretion (independently of professional secrecy), the obligation to notify the principal of a refusal of mandate and the obligation to refuse the mandate in the event of a conflict of interest, and the prohibition to limit their professional civil liability to an amount inferior to the amount of their basic insurance cover.

Any breach will be examined by the Disciplinary Commission, which is seized by a complaint from any interested party. It can also be seized ex officio, or on the reporting of facts by the Chairman of the Council of the Institute or by the Minister in charge of the Economy. The disciplinary procedure is detailed in the royal decree.

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For any question or request for assistance, please contact the authors:

Emmanuel Cornu
emmanuel.cornu@simontbraun.eu

Charlotte Behets Wydemans
charlotte.behetswydemans@simontbraun.eu

+32 (0)2 543 70 80

Trademarks & Designs | Fake application or renewal invoices!

Trademark applicants and owners often receive documents asking for payments related to a trademark or design application or renewal. Cautiousness is highly recommended in this respect!

For example, a new misleading invoice is in circulation, which takes the form of a fake European Union Intellectual Property Office (EUIPO) renewal invoice. The misleading invoice has recently been reported to the EUIPO. This fake invoice uses the EUIPO’s logo, name, acronym and address, and purports to be a EUTM renewal invoice issued by the EUIPO. It is mailed from Geneva, Switzerland, and includes a demand for a “registration and entry fee” to be transferred to a Polish bank account with a PL IBAN prefix.

Trademark applicants and owners should be aware of these practices.

The EUIPO has published a list of the firms or registers that users have complained of as having sent misleading invoices. The list is available here.

As can be seen from the list, the same applies to designs applications and renewals.

The list is not exhaustive.

For any question of guidance, please do not hesitate to contact:
Emmanuel Cornu: emmanuel.cornu@simontbraun.eu
Julie Kever: julie.kever@simontbraun.eu

The CJEU Testarossa judgement | Clarification of the contours of genuine use & the burden of proof

A trademark which has not been put to Genuine use by its owner or an authorised third party within five years after its registration is liable to revocation unless there are proper reasons for its non-use.

On 22 October 2020, the Court of Justice of the European Union (“CJEU”) clarified the contours of the notion Genuine use of a trademark, and in particular when the trademark is used only for some of the goods protected by such trademark. The CJEU also clarified the question of the burden of proof of Genuine use in revocation proceedings. A long-expected and welcome decision (available here) for all practitioners and trademark owners.

Relevant facts

Ferrari had registered the “Testarossa” trademark as both an international and a national (German) trademark in 1987 and 1990 respectively. The registrations notably cover vehicles, motor cars and parts thereof. Ferrari sold a luxury sports car model under the “Testarossa” trademarks between 1984 and 1991 and sold the follow-up models until 1996. During the period relevant to the assessment of Genuine use of the “Testarossa” trademarks, these were used only to identify replacement and accessory parts of luxury sports cars previously sold under those trademarks.
In the first instance proceedings, the Regional Court of Düsseldorf (Germany) cancelled the trademarks on the grounds of revocation, as it considered that Ferrari had not made Genuine use thereof. Ferrari launched an appeal before the Higher Regional Court of Düsseldorf which referred several questions to the CJEU for a preliminary ruling on the interpretation of Article 12(1) of Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trademarks (this directive is no longer in force; it was repealed and replaced by Directive (EU) 2015/2436 (see Article 16).


Highlights of the ruling

1. To use the trademark for some of the goods can suffice

To use the trademark for some of the goods covered by the registration may be sufficient to maintain the trademark protection for all the goods covered, unless the former are perceived by the consumer as an independent subcategory of the latter.

If independent sub-categories within a broad category of goods can be identified, Genuine use must be established for each sub-category. The purpose and intended use of the goods or services at hand is the essential criterion to determine the existence of an independent subcategory of goods. As an example, in a recent decision (T-49/20 of 15 October 2020), the General Court of the European Union considered “plastic safety boxes and closures thereof” as an independent sub-category of the broad category “goods of plastic” protected by a trademark.

The fact, for goods or services, to belong to a “particular market segment” such as, in the case at hand, “sports cars” or “luxury cars”, within the broader category of “cars”, is not relevant to establish if they constitute an independent subcategory.

Hence, Genuine use of the trademark for luxury sports cars and replacement parts or accessories of those cars may be considered as Genuine use of the trademark for “vehicles” and “replacement parts” per se (in its broad sense).

2. Use of the trademark for related services and for second-hand goods is relevant

The use of the trademark for services (maintenance, repair) in relation to those goods is relevant to assess the existence of Genuine use.

When the trademark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods for which it was registered, there is Genuine use, even if this use relates to second-hand goods. The principle of exhaustion of trademark rights does not alter this consideration.

3. The trademark owner has the burden of proof in revocation proceedings before national courts.

The trademark owner has to prove Genuine use of its trademark.

The owner of the trademark at issue is best placed to give evidence that its mark has been put to Genuine use. National rules stating otherwise shall be set aside as they could harm the fundamental EU law objective of “the same protection under the legal systems of all the Member States”. In so doing, the Court unifies the principle of the burden of proof on an EU level.

Lessons for the Benelux trademark owners

The Court’s lessons are valuable for Benelux trademark owners, particularly with regard to the burden of proof.

Revocation proceedings against a Benelux trademark can be brought either before the Benelux Office for Intellectual Property, through administrative proceedings, or before the national courts, through judicial proceedings.

Before the Office, it is up to the owner of the trademark threatened by revocation to prove that his trademark has been put to Genuine use. Therefore, the burden of proof falls directly on the defendant.

Before the national courts and, in particular, before the Belgian courts, the burden of proof falls on the claimant (the same applies in Germany): the party invoking the revocation of a trademark for non-use has to prove such non-use. However, as providing evidence of a negative fact is particularly difficult, the judge often reverses the burden of proof and transfers it to the trademark proprietor or, at least, obliges the defendant to loyally participate in the administration of evidence.

After the “Testarossa judgment”, there will no longer be any question of applying the principles of civil procedure before the national courts, but only the teaching of the CJEU. The owner of the trademark threatened with revocation will have to provide all evidence of Genuine use. Therefore, in its daily business management, the trademark owner should pay particular attention to preserve all relevant documents and archives in case such a claim would arise.

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For any question or assistance, please contact the authors:

Julie Kever
julie.kever@simontbraun.eu
+32 (0)2 533 17 08

Emmanuel Cornu
emmanuel.cornu@simontbraun.eu
+32 (0)2 533 17 22

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

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.

***

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.

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.