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Suppose you have an inventor or applicant who asks you to file a patent application in the U.S. However, the applicant has limited financial resources for filing the patent application. Should you claim small entity status or micro entity status for the applicant at the time of filing the patent application? The answer depends on whether the applicant qualifies for small entity status and, in particular, micro-entity status every time a fee is paid.
First, applicants must determine whether they qualify for small entity status. In the United States, small entity status may be established if an applicant meets certain conditions. If the applicant does not meet certain conditions, it must pay fees charged by the United States Patent and Trademark Office (USPTO) based on a large or undiscounted entity. However, if the applicant meets certain conditions, small entity status may be established that allows an applicant to receive a 60% reduction on most fees charged by the USPTO. If the applicant qualifies for small entity status, micro entity status may be available if they have limited income and have filed only a few patent applications. Micro entity status allows an applicant to an 80% reduction on most fees charged by the USPTO. To benefit from USPTO fee reduction, an applicant must establish either “small entity status” under 37 C.F.R. § 1.27 and, for further fee reduction, “micro entity status” under 37 C.F.R. § 1.29. (more…)
Canadian brand owners should prepare now for fee increases coming into force in 2024. Overall, fees are set to increase by 20 to 35%. In particular, the government fee for filing a Canadian trademark application is increasing to $460 for the first class and $140 for each additional class (the current fees are $350 and $105, respectively). The renewal fee is increasing to $555 for the first class and $175 for each additional class (up from $420 and $130, respectively). The fees to record assignments and other transfers of title are increasing to $125 per application/registration (up from the current rate of $100).
Canadian trademark fees have not been raised substantially in 20 years, and the fee increase is to go in part to hire and train new examiners. The Canadian Intellectual Property Office reports that over 100 new examiners have already been hired and it is hoped that these measures will over time accelerate the examination process. Presently it can take up to over three years for an application to be examined in Canada.
Where yearly budgets allow, brand owners interested in filing new Canadian trademark applications, particularly those covering multiple classes, should aim to file those before the end of the year. They should also seek to renew trademark registrations that are due for renewal in the first half of 2024 and consider recording any title changes that have not yet been sought, particularly where large portfolios are concerned (note that there is no government fee to record a change of name or address, and a fee is payable only to record an assignment or other title transfer).
In my next post, I will discuss changes to the Quebec Charter of the French Language that will take effect in June 2025. Those changes will in part require that brand owners display a French version of any unregistered English trademark – and an application for that French mark will no longer be sufficient. This is all the more reason for brand owners to review their portfolios and file applications now for marks for which registration will be required in the near future.
This case(1) concerned a collective management organisation’s (CMO’s) application for the temporary determination of related and neighbouring rights and copyrights. This was for equitable remuneration for public reproduction of intellectual works by catering businesses (ie, coffee shops). The judgment also dealt with the presumption of management and protection representative authority for CMOs.
As addressed in this case, if an application for determination concerns a use that has already been carried out, it would be a final determination, which has to be made by a competent regular court (excluding the procedure of injunctive measures). If the use has already occurred (and ceased), there would be no justifying reason for conducting two trials, namely one for the provisional and another for the final determination (i.e., the award of the equitable remuneration). If the use has clearly taken place and ceased before the exercise of the application, article 49 of Law 2121/1993 is applicable, dealing with reasonable and uniform remuneration in the context of regular proceedings or trials.
The claimant was established and operated legally, according to the provisions of Law 2121/1993, as the only representative CMO for the protection of neighbouring rights of Greek musicians, singers and producers of audio carrier materials. The claimant was, by law, entitled and obliged to administer and collect the right to equitable and uniform remuneration according to article 49(1) of Law 2121/1993 in the Greek territory. This entailed negotiating and collecting judicially and extrajudicially the reasonable and uniform remuneration as stipulated in article 49 (public performance of material carriers of music). The claimant also had the presumption of legalisation for all national and foreign beneficiaries and for all their works.
The claimant had duly published a fee schedule for businesses who may have wished to use the musical works (such as cafes, restaurants, coffee shops, refreshment rooms, fast-food restaurants, coffee-patisseries, internet cafes, etc). The defendants’ business fell within this list of businesses.
According to the claimant, in the context of their business activity, the defendants had used on a daily basis, throughout the operating hours of their businesses, physical sound speakers. The claimant alleged that these speakers had been legally procured and were used by the defendants to play recorded performances by Greek and foreign performers for the entertainment of their customers. The claimant argued that this use would have been a main factor in attracting, maintaining and increasing the defendants’ clientele, thereby increasing their revenue.
The claimant proved that, although she had invited the defendants to pay determined amounts based on her legally published fee schedule, the latter did not respond to the negotiation efforts.
Based on these incidents, the claimant requested:
a temporary determination of the amount of the equitable and uniform remuneration to which she was entitled for the years 2011 to 2021.
that the first and third parties of the defendants be compelled to provide lists of the titles of the musical repertoire they had used during the above years, in order for the applicant to proceed with the distribution of the fees to the beneficiaries; and
that the first and third parties of the defendants be compelled to temporarily pay her the half of the aforementioned amounts for the years 2011 to 2021 with legal interest dating from the service of the application.
Legal framework
Law 2121/1993
Law 2121/1993 protects the basic categories of beneficiaries of neighbouring rights. It does this by recognising performers’ and producers’ exclusive and absolute right, in some cases, (and in other cases a simple relative right to ask for an equitable remuneration) to allow or prohibit certain uses of their contributions.
Where the law establishes a right to fair or equitable remuneration, the beneficiary has only the relative right to demand this fair remuneration from users. When a legally recorded material sound medium or image is used for broadcasting or for presentation to the public, article 49(1) of Law 2121/1993 establishes a right to equitable remuneration in favour of:
the performers or performing artists whose interpretation or performance was recorded on the material medium; and
the producers of the material medium.
Law 4481/2017
Article 6 of Law 4481/2017 states:
1. The collective management organizations have indicatively the following responsibilities, as well as any other competence that is consistent with the nature and purpose of a collective management organization provided that they are included in the operating license of the Minister of Culture and Sports and provided for in their statute:
a) manage the property right, the powers deriving from it, categories of powers or types of works or objects of protection for the territories chosen by the beneficiaries,
b) draw up contracts with the users for the conditions of exploitation of the works as well as for the due, percentage or even equitable remuneration,
c) ensure the beneficiaries a percentage remuneration as defined in par. 1 of article 32 of Law 2121/1993,
d) collect the remuneration provided for in this law and in Law 2121/1993 and distribute the collected amounts among the beneficiaries,
. . .
k) proceed in accordance with the fourth paragraph of paragraph 1 of article 7 to each administration or judicial or extrajudicial action for the legal protection of the rights of the beneficiaries and, in particular, to submit requests for injunctive measures, bring lawsuits, exercise legal remedies, file lawsuits and penal complaints, appear as civil plaintiffs, request the prohibition of acts that violate the right to the powers assigned to them and request the confiscation of illegal copies or the judicial custody of the goods in accordance with article 64 of Law 2121/1993,
l) receive from the users any information necessary for the application of the fees, the calculation of the fee and the collection and distribution of royalty revenue, using the relevant recognized industry standards.
Further, article 7 of Law 4481/2017 sets out the following presumptions:
1. Collective management organizations and collective protection organizations are presumed to have the authority to manage or protect rights in all works or protected objects or all beneficiaries, for which or for which they declare in writing that the relevant powers have been transferred to them or rights of reasonable remuneration or that are covered by the power of attorney or through any other contractual agreement.
As long as a collective management organization that operates with the permission of the Minister of Culture and Sports, exercises rights or claims within the framework of Law 2121/1993, which are subject to mandatory collective management, it is presumed to represent all the beneficiaries, nationals and foreigners without exception, and all without exception their works. If, in the case of the previous paragraph, there are more collective management organizations for a specific category of beneficiaries, the presumption applies, as long as the rights are exercised jointly by all the competent collective management organizations, in accordance with the more specific provisions of Law 2121/1993. Collective management organizations and collective protection organizations may act, judicially or extrajudicially, in their own name, if their competence is based on a transfer of the relevant power, or on a power of attorney, or on any other contractual agreement. They are also entitled to exercise all rights transferred to them by the beneficiary or covered by the power of attorney or any other contractual agreement.
2. For the judicial pursuit of the protection of the works and the beneficiaries represented by the collective management organization or by a collective protection organization, a sample report of the works that were exploited without the required license or without the payment of a reasonable fee is sufficient and it is not necessary to proceed to a full enumeration of these works.
3. The presumptions are applied by the organizations in such a way that the rights of the beneficiaries, as provided for in the law, are not affected, and in particular their possibility to allocate or not to different collective management organizations all or part of the management of certain powers or of some of their works or objects of protection.
Thus, article 7 establishes a rebuttable presumption, which, in principle, functions as evidence and aims to facilitate:
CMOs’ proof of:
their IP or related rights; and
their authority to draw up relevant contracts and collect relevant fees; and
the judicial protection of the beneficiaries of these rights.
A rebuttable presumption therefore significantly strengthens a CMO’s position vis-à-vis the users of the protected works.
Foreign entities
Under article 72(3) of Law 2121/1993, CMOs may also manage related rights of foreign entities and enter into reciprocity agreements with the corresponding foreign CMOs. With these contracts, the foreign CMOs provide power-of-attorney or transfer to the domestic CMOs their rights for the purpose of their management in Greece.
Further, article 22 of Law 4481/2017, stipulates that:
1. The collective management organizations and the users conduct negotiations for the granting of licenses for the use of the rights in good faith and in this context they exchange all necessary information in order for the users to have the freedom to use the works of their repertoire, they demand from them a percentage fee according to the specified in article 32 of Law 2121/1993
. . .
6. In the event of non-payment of a fee for obtaining a license or a dispute as to the amount of the fee claimed by the collective management organization, the user must, before any use, make an advance payment to the collective management organization administration the requested fee amount or that which the Single-Member Court of First Instance will have temporarily set and awarded, upon request of either the user or the collective management organization during the injunction procedure, as usually paid in similar cases or as reasonable, if there are no similar cases . After a lawsuit brought by the collective management organization, or the user, the competent Single-Member Court of First Instance, which adjudicates during the KPolD property disputes procedure, definitively determines the fee and its amount and awards it.
7. In the event of a dispute between the user and the collective management organization as to the amount of the reasonable remuneration of article 49 of Law 2121/1992 and the terms of its payment, the Single-Member Court of First Instance, which is competent by application of the interim measures procedure, determines these provisionally at the request of the user or the collective management organization, and provisionally awards up to half of the reasonable fee it determined. For the final determination of the amount of the reasonable fee and the terms of its payment, the last paragraph of paragraph 6 shall be applied.
Court opinion on legal framework
The Court held that Greek law aims to regulate cases that cannot wait for the inherent slowness of a regular trial. Such cases include:
cases being held “before any use” (as expressly defined in article 22(6) of Law 4481/2017); and
cases being held during any use (which require an immediate determination of the fee to be paid, in order to draw up a contract between the parties and achieve the payment of the fee).
The Court held that Greek law aims to regulate these cases by providing for the possibility of a temporary determination of the reasonable remuneration (in the context of the injunction proceedings). Thus the law refers to determining the amount of the fee and the terms of its payment (ie, one lump sum or instalments, the date of payment, etc), as well as its temporary award.
Therefore, it follows that a CMO’s application to a single-member court of first instance for the temporary determination of reasonable remuneration during injunction proceedings must be made after:
negotiations with the users have taken place; and
the parties have failed to reach an agreement;
The application should be made before or during any use, in order to avoid:
arbitrariness and abusive discrimination by CMOs at the expense of users; and
users being forced to accept unfair prices.
This would be achieved by providing the possibility of negotiating the amount of the fee due, based on the users’ specific characteristics (eg, size or type of business, type of music performed, duration of use, etc). It would also allow users to decide not to use the works.
Therefore, the Court considered that, for an application to determine equitable remuneration, if it concerns use that has already been taken place, this would be a final determination. This determination must be made by the competent regular court (excluding the procedure of the injunctive measures). In the case of the past use, which has already ceased, there is no justifying reason to hold two trials (ie, for the temporary determination and for the final determination of equitable remuneration).
Court judgment
The Court held that, while the claimant’s application had been competently submitted under the special procedure of injunctive measures, it should be rejected as legally unfounded.
As highlighted in the main paragraph of the decision, the law does not provide for temporarily determining equitable and uniform remuneration according to article 49 of Law 2121/1993 through the procedure of injunctive measures. In this case, the fee related to use which had been carried out and ceased before the exercise of the application. The claimant had requested a temporary determination of her reasonable and uniform remuneration for the period between 1 January 2011 to 31 December 2021. Assuming that all the claims in her application were true, the claimant had therefore requested temporary determination of equitable and uniform remuneration for uses that had already been carried out and ceased. However, for these uses, only a final determination of the applicant’s equitable and uniform remuneration by the competent court with the special procedure of property disputes was permissible – not a temporary determination with injunctive measures. This was due to there being no justifiable reason for retrospectively holding two courts, one for the temporary determination and one for the final determination. The holding of two courts with essentially the same object would constitute excessive welfare for the applicant, which is not justified either by law or by practice.
Thus, the Court held that the application in question should be rejected as unfounded in law.
This decision follows decision No. 6024/22 of the Athens Court in which the defendants had raised a similar objection: that the practice of CMOs to make an application (related to past uses) with the procedure of injunctive relief is illegal and incompatible with fundamental principles of Greek Civil Procedure Law. In some instances, CMOs have achieved a temporary adjudication of equitable remuneration for past (and not future as the law provides) uses of background music under the special injunction proceedings (provided by article 22(7) of Law 4481/2017). This is despite Greek Civil Procedure Law prohibiting temporary adjudication of any claim in the context of injunctive proceedings with only few exceptions specifically provided by law. Equitable remuneration under article 49 of Law 2121/93 is not among these exceptions.
It is clear that Greek Courts have started to realise the legal gap in this behaviour of CMOs, which aims to circumvent the slow and lengthy ordinary proceedings of Greek civil procedure and use the provision of article 22(7) of Law 4481/2017 (which is intended for future uses) in order to obtain temporary payment of equitable remuneration for past uses. As the judgment in this case rightly states, equitable remuneration for past uses can be claimed only under ordinary and not injunctive proceedings for temporary determination.
For further information on this topic please contact Kriton Metaxopoulos at A & K Metaxopoulos & Partners Law Firm by telephone (+30 210 725 7614) or email (k.metaxopoulos@metaxopouloslaw.gr). The A & K Metaxopoulos & Partners Law Firm website can be accessed at www.metaxopouloslaw.gr.
Endnotes
(1) First-instance single-member court of Athens (457/2023).
This article was originally edited by, and first published on, www.lexology.com . Please click here to view the original publication.
The end of the calendar year is also, for legal purposes, the end of the corporate and accounting year, under Colombian Law.
The beginning of a new corporate year, on January 1, triggers, for corporate entities and branches of foreign companies, the need to carry out several duties, both in the form of legal obligations or in the form of managing maintenance duties, to guarantee that all matters are in line with the applicable regulations, and reflect the good status of the legal status of the entity.
Among these activities it is possible to count: the renewal of the registration of the entity with the competent chamber of commerce; accounting obligations regarding the financial statements for the preceding year, registration with the merchants registry, of all websites devoted to commercial activities; management report to be approved by the Shareholders annual meeting; registration of databases with the competent agency, among others.
Even though the focus of these activities involves, among others, accounting, financial, and the legal standing of the entity, there are also a number of tasks that involve the status of IP matters and rights held by the company. These activities must be carried out, since they are legal obligations, or because the noncompliance thereof may result in legal consequences or liability for the entity and the management, as per the following non-comprehensive checklist:
Particularly, the report must address (i) whether the company has all licenses, or other title, that enables the entity to use or access the software necessary for the development of the corporate purpose; (ii) whether the company is in due compliance with copyright regulations regarding public communication of copyrightable works, such as music, audiovisual works, or rights of actors, producers or other right-owners; (iii) compliance of contractual obligations such as licenses, coexistence agreements, and other agreements involving the use of IP.
In the event that a board member is not satisfied with the findings, an express disclaimer must be made to that effect, in the board minutes and in the report that will be reviewed by the shareholders meeting.
Failure to comply with the obligation to report the status of compliance with IP matters in the management report may encompass the imposition of fines by the Superintendency of Companies, who has the authority to request evidence of compliance.
The exclusive right to use a trademark in commerce, and to commence legal actions against third parties for the unauthorized use of a trademark, arises solely from registration. Trademark registrations are effective for a ten (10) year term, which is renewable for successive periods. Renewal must be applied for within the six (6) months before expiration, or within a six (6) month grace period, following expiration. Applying for renewal during the grace period encompasses payment of an additional fee.
If a trademark lapses, a new registration must be applied for, with no applicable priority.
In view of the above, for a new year, it is advisable to review the expiration dates of all registered trademarks, prepare a renewal calendar, and include the renewal expenses in the annual budget.
Also, if the features of the trademark have changed, if new graphic elements have been added or modified, or if a re-branding proceeding has occurred, among other situations, it is advisable to apply for new registrations to cover the newly adopted features of the brand.
In addition, the trademark owner must update before the Trademark Office any amendment in its corporate name, registered address, or domicile, since the trademark registry is a public registry that must reflect the actual information of right-owners.
Official fees for trademark proceedings are increased as of January 1, each year. Therefore, it is advisable to apply for renewals (when possible), new registrations or record information updates before the end of the preceding year.
If the company owns a patent, to keep the exclusivity right arising therefrom, an annual payment for maintenance of the patent right (“annuity”) must be paid to the Patent Office in due term.
The amount of the annuity is set forth by the Patent Office on a yearly basis.
Annuities must be paid, for the following year, on the last day of the month when the patent was applied for, or within a six (6) month grace period, following expiration. Applying for renewal during the grace period encompasses payment of an additional fee.
If an annuity is not paid in due term, the patent expires, and the invention enters the public domain, thus, it may be used or exploited by any interested party.
We hope that this information is useful, and look forward to assisting your company in Colombia in connection with the compliance of duties to maintain the rights arising over IP assets.
Fiction writing has a curious claim on truth.
We learn this at the youngest age, listening to fairy tales when the child in us “intuitively comprehends that, although these stories are unreal, they are not untrue …” Bettelheim, The Uses Of Enchantment: The Meaning and Importance of Fairy Tales (at 73).
We hear this in Melville’s revealing, in the opening of chapter 12 of Moby Dick, the location of the island of “Rokovoko,” a place that “is not down in any map; true places never are.” (more…)
Australia’s trade mark legislation provides trade mark owners with the ability to register (in certain circumstances) their well-known brands as ‘defensive trade marks’ in respect of particular goods and/or services, even if the owner of the mark has no intention of using the mark in respect of those goods and/or services.
This unique feature of Australian trade mark law is not available in many other jurisdictions around the world.
Generally, a person may apply to register a trade mark in respect of goods and/or services in Australia provided that (among other things) that person claims to be the owner of the trade mark and:
the person is using or intends to use the trade mark in relation to the goods and/or services;
the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services; or
the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.[1]
Further, owners of registered trade marks may be at risk of another trader lodging a cancellation application against their trade mark for non-use, and having their trade mark removed from the register (in full or in part), if the trade mark has remained registered for a continuous period of three years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
used the trade mark in Australia; or
used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.[2]
A non-use application may also be made (and the trade mark will be removed from the register) if on the day on which the application for the registration of the trade mark was filed, the owner of the trade mark had no intention to use the trade mark and the owner has not used the mark in good faith in Australia.[3]
However, a defensive trade mark registration:
can prevent the registration of similar trade marks in classes that the owner of the defensive trade mark does not trade in; and
is not subject to removal for non-use.
Because defensive trade marks offer such strong protection, they are not easy to obtain in our jurisdiction. The circumstances under which an application for a defensive trade mark may be made are as follows:
the trade mark must, at the time the application for a defensive registration is filed, already be registered in the name of the applicant and well known in Australia; and
the trade mark must have been used to such an extent, in relation to all or any of the goods or services in respect of which it is registered, that its use on the goods or services sought by the defensive registration would be likely to be taken by consumers as indicating a connection between those goods or services and the owner of the registered trade mark.
It is important to note that provided that the above criteria is met, defensive trade marks can be registered even if the applicant does not have any intention to use the mark in respect of the goods or services specified in their application.
Some examples of brands that are protected by a defensive trade mark registration in Australia are Chanel, Levi’s and Coca-Cola.
The owners of well-known marks trading in Australia should consider whether they are eligible to register a defensive trade mark in order to access broad protection for their valuable brands.
[1] Trade Marks Act 1995 (Cth), s 27(1)
[2] Ibid, s 92(4)(b)
[3] Ibid, s 92(4)(a)
For this edition, we decided to make a compilation of answers to questions that we frequently receive from clients who intend to protect their trademarks in Colombia.
Yes. Colombia has a registration-based trademark protection system. Therefore, exclusive rights to use and to commence legal actions for infringement against third parties arise solely from registration before the competent agency. No rights arise from the mere use of the trademark in the Colombian market.
For these reasons, in order to protect a trademark a local registration is required.
No. The Andean Community, which is formed by Colombia, Perú, Ecuador, and Bolivia, has a common industrial property regime, which governs substantial and procedural aspects of industrial property protection in the member countries. However, said regulation is incorporated into the legal regimes of each country and is applied and interpreted on a territorial basis, by the competent agency and the judges of each member country.
Therefore, registration of a trademark must be obtained in each country, and the registrations issued by each trademark office are independent.
The following are some advantages arising from owning a registration in any of the member countries of the Andean Community:
An Andean Opposition may be filed by the owner of a trademark registration in one member country against an application for the same trademark in a different member country. In this case, the registration in any of the Andean Community member countries provides valid grounds for opposing an application in other Andean countries. It is required that the owner of the opposing trademark applies for registration in the country where the opposition is made, with the purpose of showing interest in the relevant market.
If a trademark registration in a member country is the object of a cancellation action for lack of use, the owner may defend the registration by evidencing sufficient, continuous, and public use of the trademark in any of the countries of the Andean Community.
In order to file an opposition or cancellation action based on the status of a well-known trademark, it is possible to submit evidence of the required level of recognition of the trademark in any of the Andean Community member countries.
The applicant of a trademark in any country that is a member of the Paris Convention, may claim priority to register a trademark in Colombia, if the application is filed within the six (6) months following the initial application and provided that the certified copy of the initial application is filed within the nine (9) subsequent months. In this case, the filing date of the Colombian application will be the same date as the initial application.
Also, if the trademark was applied for in a country that is a member of the Madrid System (the “base application”), the applicant may obtain an international registration before the WIPO, under the provisions of the Madrid Protocol, and request the extension of the protection to other countries that are in the system, such as Colombia.
In that case, the WIPO will submit the request for protection to the Colombian Trademark Office as a “Madrid application”, and the filing date for Colombia will be the same filing date as the base application.
We hope that this information provides a useful overview of some basic aspects to bear in mind when expanding your business into the Colombian market, and filing for registration of your trademark portfolio.
The Department for Promotion of Industry and Internal Trade under the Ministry of Commerce and Industry has recently published a set of draft amendments (“Draft Rules”) to the Indian Patent Rules, 2003. The amendments are currently open for comments from the public. The draft amendment rules can be accessed at – https://ipindia.gov.in/writereaddata/Portal/Images/pdf/248296.pdf.
Some of the major changes proposed by the Draft Rules are as follows:
The Draft Rules recommend the relaxation of the existing continuing onus on the Applicant (for a Patent) to provide details of the corresponding applications (in other jurisdictions) within six months of filing such a patent application. The Draft Rules propose that the details of all corresponding applications can be furnished by the Applicant only after two months from the date of issuance of the First Examination Report (FER). Further, the Draft Rules also put the responsibility on the Controller to consider, on its own, the information relating to the prosecution of corresponding applications (in other jurisdictions) based on publicly available information.
The Draft Rules propose the inclusion of a provision that clarifies that a divisional application can be filed in respect of an invention disclosed in a provisional specification.
The Draft Rules propose the reduction of the timeline to file a Request for Examination from the existing time frame of 48 months to 31 months from the earliest priority date. The Draft Rules have clarified that this proposed revision of the timeline will only apply to applications filed after the notification of the amended Rules.
The Draft Rules provide that for an Applicant to avail the grace period (under Section 31 of the Patents Act), he/she should file an application on Form 31, and has prescribed an official fee of INR 84000 (approx. USD 1000) for each such application.
The Draft Rules have proposed the following set of changes to the procedure for pre-grant oppositions:
The Controller, at the outset, has to decide on the maintainability of a pre-grant opposition and only if it is found to be meritorious, the Controller would notify the Applicant (of the opposition). Essentially, the Draft Rules propose to confer the power to dismiss a pre-grant opposition (if found to be frivolous) by the Controller in the first instance itself.
The Draft Rules also proposed the reduction of the timeline to file a reply to the pre-grant opposition (by the applicant) from 3 months to 2 months (from the date of notice).
The Draft Rules proposed that the Controller should be ordinarily obligated to issue a decision within 3 months in a pre-grant opposition.
The Draft Rules also recommend that the hearing procedure (currently applicable to post-grant oppositions) should apply to pre-grant oppositions.
The Draft Rules also propose that if a pre-grant opposition is found to be maintainable, the Controller has to follow the expedited examination procedure.
The Draft Rules proposes for revision of the official fee for filing pre-grant oppositions, which will be the patent filing cost (incurred by the Applicant).
The Draft Rules propose an increase of the official fee for filing post-grant oppositions, which will be equal to the aggregate patent filing cost (incurred by the Applicant).
The Draft Rules have recommended the introduction of a provision to condone the delay in filing the working statement. Further, it is also proposed that the patentee and licensees should only be required to subject whether or not the patent is working, and that no additional information regarding the value of working must be submitted.
Broadcasting of background music – Equitable remuneration – Mere provision of physical facilities – Sound equipment on board trains and aircraft – Presumption of communication to the public as a result of possession of technical means – Implications on Greek case law and practice in relation to use of in-store/background music in business premises.
The above decisions dealt with requests for a preliminary ruling related to the interpretation of Article 3 of Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society.
The requests have been made in two sets of proceedings between, first, in Case C‑775/21, Blue Air Aviation SA (‘Blue Air’) and UCMR – ADA, a collective management organization handling music copyrights, concerning Blue Air’s obligation to pay royalties to the UCMR – ADA for the broadcasting of background musical works on board passenger aircraft and second, in Case C‑826/21, Uniunea Producătorilor de Fonograme din România (UPFR) and Societatea Naţională de Transport Feroviar de Călători (SNTFC) ‘CFR Călători’ SA (‘the CFR’), concerning the obligation to pay royalties for the provision on board trains of physical facilities capable of being used to carry out communication to the public of musical works.
A. Case C‑775/21
The UCMR–ADA is a collective management organisation that handles music copyright.
On 2 March 2018, that body brought an action before the Regional Court of Bucharest against the air transport company Blue Air, seeking payment of remuneration for the communication to the public of musical works on board aircraft operated by Blue Air, for which Blue Air had not obtained a licence.
Before that court, Blue Air submitted that it operates 28 aircraft and that, although it has the software necessary for the broadcasting of musical works in 22 of those 28 aircraft, it communicated to the public, after obtaining the required licence, only one musical work as background music, in only 14 of those aircraft.
Following those clarifications, the UCMR – ADA expanded its requests for payment, taking the view that the existence of sound systems in approximately 22 aircraft justified the conclusion that protected works had been communicated to the public in all of the aircraft of Blue Air’s fleet.
By judgment of 8 April 2019, the UCMR – ADA’s action was upheld.
Blue Air appealed against that decision to the Court of Appeal (Bucharest) which is the referring court, claiming that it had not communicated background music on board the aircraft it operates for which no licence had been obtained, and that the mere existence of physical facilities did not amount to a communication to the public of musical works. It also added that, by broadcasting background music, it was not pursuing any profit motive. Lastly, it stated that the existence of sound systems in aircraft is dictated by safety reasons, in order to enable communication between members of the air crew and communication between that crew and the passengers.
The Court of Appeal decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
(1) Must Article 3(1) of Directive 2001/29/EC … be interpreted as meaning that the broadcasting inside a commercial aircraft occupied by passengers of a musical work or a fragment of a musical work on takeoff, on landing, or at any time during a flight via the aircraft’s public address system constitute a communication to the public within the meaning of that provision, particularly (but not exclusively) in the light of the criterion relating to the profit-making objective of the communication?
If the answer to the first question is in the affirmative:
(2) Does the existence on board the aircraft of an address system required by air traffic safety legislation constitute a sufficient basis for making a rebuttable presumption as to the communication to the public of musical works on board that aircraft?
If the answer to that question is in the negative:
(3) Does the presence on board the aircraft of an address system required by air traffic safety legislation and of software that enables the communication of phonograms (containing protected musical works) via that system constitute a sufficient basis for making a rebuttable presumption as to the communication to the public of musical works on board that aircraft?’
B. Case C‑826/21
The UPFR is a collective management organisation handling the related rights of phonogram producers.
On 2 December 2013, that body brought an action against the CFR, a rail transport company, seeking payment of remuneration for the communication to the public of musical works on board passenger carriages operated by the CFR. It maintained, in that context, that the applicable railway legislation required some of the trains operated by the CFR to be equipped with sound systems and argued that the presence of such systems amounted to communication to the public of works within the meaning of Article 3(1) of Directive 2001/29.
That action was dismissed by the Regional Court of Bucharest, which held that while the mere installation of a sound system that makes public access to sound recordings technically possible constitutes a communication to the public of musical works, it had not been proved that the trains in service had been equipped with such a system.
The UPFR brought an appeal against that decision before the Court of Appeal (Bucharest) which is the referring court.
The Court of Appeal (Bucharest) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
(1) Does a rail carrier that uses train carriages in which sound systems intended for the communication of information to passengers are installed thereby make a communication to the public within the meaning of Article 3 of Directive 2001/29/EC …?
(2) Does Article 3 of Directive 2001/29/EC … preclude national legislation that establishes a rebuttable presumption of communication to the public on the basis of the existence of sound systems, where those sound systems are required by other provisions of law governing the carrier’s activity?’
The provisions according to the ECJ decisions in question that were applicable to this case are the following:
Article 8 of the WCT provides that ‘authors of literary and artistic works shall enjoy the exclusive right of authorising any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.’
The Agreed Statement concerning Article 8 of the WCT which is worded as follows: ‘It is understood that the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Treaty or the Berne Con…
According to the ECJ decision in question:
The right of communication to the public should be understood in a broad sense covering all communication to the public not present at the place where the communication originates. This right should cover any such transmission or retransmission of a work to the public by wire or wireless means, including broadcasting. This right should not cover any other acts.” But
…
“The mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Directive.”
…
Article 3 of Directive 2001/29, entitled ‘Right of communication to the public of works and right of making available to the public other subject matter’, provides:
1. Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public their works in such a way that members of the public may access them from a place and at a time individually chosen by them.
2. Member States shall provide for the exclusive right to authorise or prohibit the making available to the public, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them:
(a) for performers, of fixations of their performances;
(b) for phonogram producers, of their phonograms;
(c) for the producers of the first fixations of films, of the original and copies of their films;
(d) for broadcasting organisations, of fixations of their broadcasts, whether these broadcasts are transmitted by wire or over the air, including by cable or satellite.
3. The rights referred to in paragraphs 1 and 2 shall not be exhausted by any act of communication to the public or making available to the public as set out in this Article.’
Article 8 of Directive 2006/115/EC, provides in paragraph 2:
Member States shall provide a right in order to ensure that a single equitable remuneration is paid by the user, if a phonogram published for commercial purposes, or a reproduction of such phonogram, is used for broadcasting by wireless means or for any communication to the public, and to ensure that this remuneration is shared between the relevant performers and phonogram producers. Member States may, in the absence of agreement between the performers and phonogram producers, lay down the conditions as to the sharing of this remuneration between them.
Collective management organisations may monitor, through duly authorised representatives, the use of musical works as background music; those representatives shall have free access to any place where music is used as background music. Representatives of collective management organisations may use portable audio and/or video recording equipment in the premises where the musical works are used, and the recordings thus made shall constitute full proof of the use of the musical works as background music.’
“Communication to the public of phonograms published for commercial purposes or reproductions thereof” shall mean the communication of such phonograms or reproductions in public places (whether closed or open), regardless of the manner in which the communication is made, by the use of mechanical, electro-acoustic or digital means (amplification systems, sound or audiovisual recording devices, radio receivers or televisions, IT equipment, and so on).
…
According to the ECJ,
It is clear that the broadcasting in a means of passenger transport of a musical work as background music by the operator of that means of transport constitutes an act of communication for the purposes of Article 3(1) of Directive 2001/29 since, in so doing, that operator intervenes, in full knowledge of the consequences of its conduct, to give its customers access to a protected work, in particular where, in the absence of that intervention, those customers would not, in principle, be able to enjoy the broadcast work.
As the referring court points out, it is not disputed, in the present case, that the work at issue in the main proceedings had actually been broadcast in half of the aircraft operated by Blue Air, during flights operated by that airline, with the result that the public in question consists in all the groups of passengers who, simultaneously or successively, took those flights, and such a number of persons concerned cannot be regarded as too small, or even as an insignificant number, within the meaning of the case-law referred to in paragraph 54 above.
The ECJ held that the fact, mentioned by the referring court, that the profit-making nature of such a communication is highly debatable at any other time of the flight, is not decisive. A profit-making nature of that kind is not a prerequisite for finding that there is a communication to the public within the meaning of Article 3(1) of Directive 2001/29, since the Court has held that that nature is not necessarily an essential condition which determines the existence of a communication to the public, as is apparent from the case-law referred to in paragraph 50 above.
The court said that the answer to the first question in Case C‑775/21 is that Article 3(1) of Directive 2001/29 must be interpreted as meaning that the broadcasting, in a means of passenger transport, of a musical work as background music constitutes a communication to the public within the meaning of that provision.
The second and third questions in Case C‑775/21 and the first question in Case C‑826/21
The ECJ decided it was appropriate to reformulate the questions referred for a preliminary ruling as follows (1).
“Whether Article 3(1) of Directive 2001/29 and Article 8(2) of Directive 2006/115 must be interpreted as meaning that the installation, on board a means of transport, of sound equipment and, where appropriate, of software enabling the broadcasting of background music, constitutes a communication to the public within the meaning of those provisions.”
The ECJ held that it is apparent from recital 27 of Directive 2001/29 – which reproduces, in essence, the Agreed Statement concerning Article 8 of the WCT, as the Court observed in the judgment of 22 June 2021, YouTube and Cyando (C‑682/18 and C‑683/18, EU:C:2021:503, paragraph 79) – that ‘the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Directive’.
In the light of those considerations, the ECJ held that the fact of having, on board a means of transport, sound equipment and, where appropriate, software enabling the broadcasting of background music does not constitute an act of communication for the purposes of Article 3(1) of Directive 2001/29 and Article 8(2) of Directive 2006/115, since it is a mere provision of physical facilities for enabling or making a communication.
The ECJ noted that it had already ruled that the operators of a public house, a hotel, or a spa establishment perform an act of communication when they deliberately transmit protected works to their customers, by intentionally distributing a signal by means of television or radio sets which they have installed in their establishment. Similarly, the operator of a rehabilitation centre that intentionally transmits protected works to its patients by means of television sets installed in several places in that establishment carries out an act of communication.
However, the ECJ decided the mere installation of sound equipment as a means of transport cannot be comparable to acts by which service providers intentionally transmit protected works to their customers by distributing a signal by means of receivers that they have installed in their establishment, allowing access to such works.
In the light of all the foregoing considerations, the Court ruled that Article 3(1) of Directive 2001/29 and Article 8(2) of Directive 2006/115 must be interpreted as meaning that the installation, on board a means of transport, of sound equipment, and, where appropriate, of software enabling the broadcasting of background music, does not constitute a communication to the public within the meaning of those provisions.
The second question in Case C‑826/21 was
In essence, whether Article 8(2) of Directive 2006/115 must be interpreted as precluding national legislation, as interpreted by the national courts, which establishes a rebuttable presumption that musical works are communicated to the public because of the presence of sound systems in means of transport.
The Court held that acceptance of the proposition that a Member State may give wider protection to copyright holders by laying down that the concept of ‘communication to the public’ also includes activities other than those referred to in Article 3(1) of Directive 2001/29 would have the effect of creating legislative differences and thus, for third parties, legal uncertainty (judgment of 13 February 2014, Svensson and Others, C‑466/12, EU:C:2014:76, paragraph 34), or it follows that Article 3(1) of Directive 2001/29 must be interpreted as precluding a Member State from giving wider protection to copyright holders by laying down that the concept of communication to the public includes a wider range of activities than those referred to in that provision (judgment of 13 February 2014, Svensson and Others, C‑466/12, EU:C:2014:76, paragraph 41).
Such an interpretation is, in the light of the ECJ case-law, applicable by analogy to the concept of ‘communication to the public’ within the meaning of Directive 2006/115.
In the present case, it is apparent from the answer to the first question in Case C‑826/21 that Article 8(2) of Directive 2006/115 must be interpreted as meaning that the installation, on board a means of transport, of sound equipment and, where appropriate, of software enabling the broadcasting of background music for the benefit of travellers independently of their will, does not constitute a ‘communication to the public’ within the meaning of that provision.
That provision therefore precludes national legislation which establishes a rebuttable presumption that there is a communication to the public because of the presence of such sound systems. Such legislation may have the consequence of requiring payment of remuneration for the mere installation of those sound systems, even in the absence of any act of communication to the public, contrary to the aforementioned provision.
In the light of the foregoing considerations, the answer to the question referred is that Article 8(2) of Directive 2006/115 must be interpreted as precluding national legislation, as interpreted by the national courts, which establishes a rebuttable presumption that musical works are communicated to the public because of the presence of sounds systems in means of transport.
In summary the ECJ ruled that:
Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the broadcasting, in a means of passenger transport, of a musical work as background music constitutes a communication to the public within the meaning of that provision.
Article 3(1) of Directive 2001/29 and Article 8(2) of Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property must be interpreted as meaning that the installation, on board a means of transport, of sound equipment, and, where appropriate, of software enabling the broadcasting of background music, does not constitute a communication to the public within the meaning of those provisions.
Article 8(2) of Directive 2006/115 must be interpreted as precluding national legislation, as interpreted by the national courts, which establishes a rebuttable presumption that musical works are communicated to the public because of the presence of sound systems in means of transport.
Implication of the decision in relation to Greek law had jurisprudence
This extremely important decision of the ECJ is very likely to have an effect on the practice of Greek Courts in relation to the presumption arising out of the possession of TV or Radio sets.
In fact, Greek law does not provide such a presumption of “communication to the public” merely because of the possession of TV or Radio set. But the Greek Copyright Office (OPI) in a circular issued in 2017 clearly but obviously erroneously states that the possession of TV or Radio sets creates a presumption of use/communication to the public of works protected by the relevant CMOs.
This apparently erroneous, from a legal point of view, interpretation of the law has been accepted in various occasions by Greek Courts (more recent decision 495/2023. First Instance Court of Volos) who held that the “mere possession of a TV set creates a presumption of communication to the public of copyrighted works enjoying protection under the umbrella of local CMOs.
The reason why this “presumption” is obviously wrong is that the law itself does not introduce such a presumption, although it does so in other instances (for example presumption of representation of art. 7 of Law 4481/2017). The practical result of the Court adopting such a presumption which may seem as a reasonable assumption but does not constitute a presumption under the law is that the burden of proof is unjustifiably and illegally reversed.
Instead of the applicant CMOs having to prove the use of protected works by the users in the form of communication to the public the introduction and application of a “logical” but not legal presumption reserves the burden of proof and imposes to the defendant/alleged user the obligation to prove a negative fact, namely that despite the possession of a TV/Radio set he did not use protected musical works a reversal which, in our view, clearly violates basic principles of Greek civil procedural rules.
It is therefore extremely important that the ECJ considers such a presumption is being incompatible with EU law and it is expected that Greek Courts and the Greek Copyright Office will align itselves with this decision and comply with its contents and will as a result abstain from considering the mere possession of a TV/Radio set as a presumption of act of communication to the public of works “protected” by local CMOs.
An excerpt of this article was first published on www.lexology.com.
In this case before the Multi-member Court of First Instance of Thessaloniki, the plaintiff requested judicial protection of his recipes (i.e., dishes and seasonings) as works of IP. (1) He made this request on grounds including trademark law and unfair competition law. However, the Court rejected the action as:
not legal, insofar as it concerned the protection of recipes as works of intellectual property; and
unfounded, because recipes are assimilated to ideas and not to works enjoying copyright protection under Greek (and EU) law.