DIGITAL SERVICES ACT (DSA) AND THE OUT-OF-COURT DISPUTE RESOLUTION

Author: Dr. Giovanna Del Bene

 

The Digital Services Act is the new European Regulation on Digital Services (EU Regulation 2022/2065), which innovates the previous liability regime for information society service providers, consisting of the E-commerce Directive (2000/31/CE), now more than two decades old.

 

The DSA entered into force on November 16, 2022 in Italy and will be directly applicable throughout the European Union as of February 17, 2024. In order to overcome any discrepancies in national transposition of the E-commerce Directive, the form of a regulation rather than a directive was chosen, as it allows for direct applicability.

 

The Digital Services Act establishes the principle that what is illegal offline must also be illegal online and has as its primary goal the fight against misinformation and the protection of users. While digital services have made trade easier, critical issues related to the risk of consumer deception, for example, about the purchase of counterfeit goods and the unauthorized use of trademarks or copyrighted material have increased.

 

A first new feature of the Regulation is the creation of new national bodies responsible for overseeing the application of the DSA itself. This figure is called the Digital Services Coordinator, and will be responsible, in each Member State, for supervising the application of the DSA with respect to platforms that have their main establishment in the respective Member State. With Decree-Law 123/2023, published in Official Gazette No. 216 of September 15, 2023, AGCOM (the Italian Competition Authority) was officially designated as the Digital Services Coordinator for Italy.

On the basis of principles of proportionality, appropriateness and respect for the adversarial process, in accordance with the procedures established by its own regulations, AGCOM may impose administrative pecuniary sanctions of up to a maximum of 6% of the annual worldwide turnover in the financial year preceding the notice of initiation of the proceedings on the provider of an intermediary service falling within its sphere of competence, including in its capacity as Digital Services Coordinator, in accordance with the national and European law applicable to the case of offence. In the event of providing inaccurate, incomplete or misleading information, failure to respond to or rectify inaccurate, incomplete or misleading information, and failure to comply with the obligation to submit to an inspection, AGCOM may impose an administrative fine of up to 1% of the worldwide turnover achieved in the previous fiscal year by the provider of an intermediary service or the person concerned. The maximum daily amount of the periodic penalty payment that AGCOM may apply is 5% of the average daily worldwide turnover of the provider of an intermediary service concerned achieved in the previous financial year, calculated from the date specified in the decision in question.

In applying the sanction, AGCOM will take into account, in particular, the seriousness of the act and its consequences, as well as the duration and possible repetition of the violations.

The Digital Services Act includes a number of rather articulated provisions, divided into three main groups and having the following purposes:

– establish the exclusions from liability of intermediary service providers in the case of illegal online content;

– defining the obligations on intermediary service providers;

– finally, rules for implementing the regulation and related penalties.

 

Specifically, a conspicuous number of obligations pertain to online platforms, meaning the legislature understood social networks or those platforms that allow consumers to conclude distance contracts with commercial operators and thus all those e-commerce platforms.

 

With reference to online platforms, the DSA in Article 16 provides the obligation to set up reporting and action mechanisms, which allow any person or entity to notify the presence in the service of specific information that such person or entity believes constitutes illegal content. The provider is obligated not only to give feedback to the reporter but also to inform the reporter about the action taken, in a timely, diligent, nonarbitrary and objective manner. These new reporting procedures enable the provider to make the necessary verifications immediately and proceed promptly to remove the infringing content.

According to Article 17 of the DSA, service providers shall provide all affected service recipients with clear and specific reasons for restrictions imposed on the grounds that the information provided by the service recipient constitutes infringing content or is inconsistent with its general terms and conditions. On the contrary, in case it does not intend to act, the service provider has no obligation to give reasons.

 

According to Article 20 of the DSA, there is an internal system for handling complaints against the decision made by the online platform provider upon receipt of a report or against decisions made by the online platform provider on the grounds that the information provided by recipients constitutes illegal content or is incompatible with the general conditions. Decisions on complaints cannot be made solely by automated means, so supervision by appropriately qualified personnel must be ensured. An appeal and out-of-court dispute resolution is provided against the provider’s decision.

 

According to Article 21 of the DSA, platform providers shall ensure that information regarding the possibility for service recipients to have access to out-of-court dispute resolution is easily accessible on their online interface, clear and user-friendly.

To this end, the Regulations provide for the figure of out-of-court dispute resolution bodies that are certified by the digital services coordinator and guarantee consumers an alternative dispute resolution mode.

The certified ADR body does not have the power to impose a dispute resolution binding on the parties. In addition, according to Article 21, this is without prejudice to the right of the recipient of the service in question to initiate proceedings at any stage to challenge such decisions by online platform providers before a court of law in accordance with applicable law.

 

Out-of-court dispute resolution bodies shall make their decisions available to the parties within a reasonable period of time and no later than 90 calendar days from the receipt of the complaint. In the case of highly complex disputes, the certified ADR body may on its own initiative extend the period of 90 calendar days by an additional period not exceeding 90 days, so as to result in a maximum total duration of 180 days.

 

The Regulations also introduced the figure of the so-called “reliable reporter.” Reports received from these individuals are stipulated to be given priority and to be processed and decided without delay. On the basis of Article 22 of the DSA, the aforementioned qualification is granted, at the request of any entity, by the Coordinator in which the applicant is established, if the following conditions are met:

 

– is demonstrated to have special skills and expertise in the detection, identification and notification of illegal content;

– independence from any online platform provider;

– ability to carry out the activity in a diligent, accurate and objective manner.

 

Reputable reporters shall submit to the Digital Services Coordinator, at least once a year, a report on the reports submitted.

 

According to Article 23 of the DSA, online platform providers, after issuing an advance notice, shall suspend for a reasonable period of time the provision of their services to service recipients who frequently provide manifestly illegal content. In addition, they shall suspend for a reasonable period of time the processing of reports and complaints submitted for reporting and action and the complaint processing systems referred to in Articles 16 and 20 by persons, entities or complainants who frequently submit manifestly unfounded reports or complaints.

 

In deciding on a suspension, providers shall assess the situation on a case-by-case basis and in a timely, diligent and objective manner, taking into account all relevant facts and circumstances that result from the information available to the online platform provider.

 

In this regard, online platform providers shall set out in their general terms and conditions, in a clear and detailed manner, their policy in relation to the aforementioned abuses and provide examples of the facts and circumstances they take into account when assessing whether certain conduct constitutes abuse and in determining the duration of suspension.

 

Pursuant to Article 24 of the DSA, online platform providers must provide, in addition to all the information regarding reports on content moderation activities prescribed by Article 15 of the DSA for all providers, the number of disputes submitted to dispute resolution bodies, the results of those disputes, the average time for their resolution, and the number of suspensions applied under Article 23 of the DSA.

 

Although the purpose of the regulation is to contribute to the proper functioning of the internal market for intermediary services and online platforms by establishing harmonized rules for a safer digital environment, both in terms of protecting the fundamental rights of users and creating a level playing field among businesses, promoting their innovation, growth and competitiveness, the Digital Services Act is not without criticism. With reference, in particular, to the reporting and action provisions described above, some commentators note, among other things, how: there is a lack of a clear definition of “wrongful/illegal”; what kind of qualification the personnel supervising the decisions should have; what exactly is meant by “reasonable rights” applied by the out-of-court resolution body. Then there is the fear, by some authors, that the out-of-court procedure pushes people away from the process, promotes legal uncertainty and the fragmentary nature of decisions, issued moreover by individuals whose professional qualifications are unclear.

 

© THINX Srl  – novembre 2023

At a glance: the novelties of the Italian Intellectual Property Code in the opposition procedures and the nullity proceedings.

Author: D.ssa Giovanna Del Bene

 

The Italian IP Code has been amended by Law No. 102 of July 24, 2023, which entered into force on August 23, 2023.

Regarding the opposition procedures and the nullity proceedings, the following changes were introduced.

  1. Opposition procedures

According to Article 15 of the Amendment Law, the opposition procedure can now be started by the Ministry of Agriculture (MASAF) as Authority for geographical indications and indication of origins that do not have a recognized consortium.

The Article 25 replaces paragraph 1 of Article 178 of the Italian IP Code, by establishing two hypotheses in which the two-months term for the Italian PTO to communicate the initiation of the opposition proceedings does not apply: if the opposition is suspended under Article 180 comma 1 from lett. b) to e-ter) IP Code; if the applicant has filed a limitation request and it is necessary to obtain the opinion of the opposing party for the continuation of the procedure as per Article 178 IP Code.

This amendment considers circumstances that could lead to the termination of the opposition procedure: reaching an agreement between the parties and the voluntary limitation of the trademark application. Therefore, it allows the opening of proceedings to be postponed, even beyond the deadline of two months from the presentation of the opposition.

  1. Nullity proceedings

Firstly, the Amendment Law at Article 26 introduces a new ground for nullity proceedings. It has modified Article 184-bis of the Italian IP Code and now it is possible to request the invalidity of a trademark characterized by words, figures, or signs that could jeopardize the image or reputation of Italy.

In addition, the insertion of the new comma 8-bis establishes the prohibition of the fragmentation of applications for invalidity or revocation. Therefore, filing multiple nullity proceedings based on different trademarks against the same trademark is precluded.

Moreover, the Article 27 has modified Article 184-quarter of the Italian IP Code.

The first novelty regards comma 1, which defines as “request” and no longer as “application”, the act by which the revocation or declaration of invalidity of a trademark is sought. The amendment has no substantial nature.

According to comma 2, after the preliminary examination by the Italian PTO of the admissibility of the request for revocation or invalidity, it is established that the Office will notify the parties the nullity request, informing them of the possibility to reach an agreement within two months from the date of the communication, which may be extended, at the joint request of the parties, up to a maximum period of one year. If no agreement is reached, the trademark owner facing nullity proceedings has 60 days to submit its brief. This is the first major innovation introduced, as previously, that notice should merely contain the information of the beginning of the adversarial phase of the revocation or invalidity proceedings and the invitation to the owner of the trademark to file observations within a specified period. Now the steps of the nullity proceedings are identical to that applicable to the opposition procedure, including the introduction of a cooling-off period to grant to the parties the possibility to reach a settlement of the matter, thus saving costs and time for both the parties and the Office.

Moreover, the provision that “any document submitted by the applicant” should be attached to the communication is deleted, since it is now provided that only a copy of the application is attached to the communication.

Finally, the third novelty concerns the novella in comma 3, which considers the hypothesis of not reaching an agreement pursuant to comma 1. Now the beginning of the litigation phase of the procedure is determined by the lack of agreement. Furthermore, as above mentioned, in the absence of agreement, it is established that the owner of the contested trademark has the right to submit the observations within 60 days of receipt of the communication. Previously, the Italian PTO was discretionally empowered, “during the revocation or nullity proceedings” to set a time limit at any time for the parties to produce further documents or to submit observations. The new forecast therefore guarantees a broader balance in the contradictory.

No changes were made to the remaining commas from 4 to 7 of Article 184-quarter IP Code.

Finally, Article 28 of the Amendment Law provides that the revocation or invalidity of a trademark may also be terminated if the contested trademark application is abandoned.

© THINX Srl  – novembre 2023

 

Antonio Di Bernardo and Silvia Mati are “Recommended IP – Patent Agents & Attorneys” by Who’s Who Legal 2023

We are proud to share that Antonio Di Bernardo, THINX founder, and Silvia Mati, European Patent Attorney, are both “Recommended IP – Patent Agents & Attorneys” by Who’s Who Legal which every year identifies the foremost legal practitioners and consulting experts in business law.

About Mr. Di Bernardo, WWL says: “Antonio Di Bernardo impresses market sources with his top-notch advice on complex patent transactions in the telecommunications sector””.

About Mrs. Mati, WWL says: “Silvia Mati earns high praise from peers and clients alike for her unique ability  to easily understand complex concepts and ability to lead her clients to their targets

Congrats!

Antonio Di Bernardo – Thinx S.r.l. – Experts – Lexology

Silvia Mati – Thinx S.r.l. – Experts – Lexology

 

 

Barbie, the doll and the IP influencer

Author: Dr. Giovanna Del Bene

“You can be anything” has been Barbie’s motto since 2016, repeated several times even in the Greta Gerwig film that is smashing the box office these weeks and has exploded Barbie-mania worldwide.

The success of this iconic doll (and the current film) is not accidental or simply due to a well-successful marketing operation but has been diligently built over the years by Mattel through a careful strategy of both communication (Barbie was the first toy to have a market strategy based on mass communication through television advertising) and protection and exploitation of its Intellectual Property rights (trademarks, patents, designs, know-how, copyright).

Barbie was born in 1959 in America from an idea of Ruth Hadler, wife of the co-founder of Mattel, who, observing her daughter Barbara (hence the doll’s name) playing with dolls by attributing adult roles to them, sensed that little girls needed an alternative to mother-child play with baby dolls with baby-like features.

Ruth Handler in modeling Barbie’s appearance was inspired by a German doll, Bild Lilli (a comic book character), seen in a store during a trip to Switzerland and apparently initially given to men as a gadget because of tobacco shop purchases. Only later did Bild Lilli become famous due to its success with children.

It seems that Mattel purchased the rights to the German doll and Ruth Handler created the first doll having adult features and designed specifically for little girls.

 

The first Barbie (full name Barbara Millicent Roberts born in Willows, Wisconsin) is exhibited on March 9, 1959, at the annual American Toy Fair in New York City.

The first prototype was patented in 1961, which was followed by several industrial models and patents covering the most diverse aspects of both the doll (e.g., movement of joints, to the face, hair) and the objects of the so-called Barbie’s world (clothing, environments, accessories, furniture, and so on).

There turn out to be nearly 300 registered trademarks worldwide for “Barbie” in the toy class alone.

In addition to the word version of the trademark “Barbie,” the various figurative versions of the signature that have followed over time have also been protected.

 

 

 

At least 23 trademarks are registered in the European Union alone to protect the name Barbie in both word and figurative versions. The doll’s packaging is also subject to protection through European design.

 

 

 

 

 

EU Design 000327184-0002 packaging

Regarding pink that has always been associated with Barbie, Mattel could not obtain any registered trademark for the color alone. It is, in fact, a color widely used for toys (particularly dolls), clothing, games, etc., and generally associated with the female world. However, the constant use of the shade of pink used on doll packaging and various accessories causes consumer perception to immediately associate the color pink with the world of Barbie (Pantone coined the color Pink Barbie Pantone 219C).

The word Barbie is also the subject of numerous domain name registrations by Mattel.

In addition, Mattel has over time entered into numerous licensing and merchandising agreements, as well as several brand collaborations, as a strategy to exploit and expand the intellectual property of the Barbie brand. Below are just a few examples of the latest collaborations related to the release of the film: Moon, Kitsch, Opi, NYX, Teezer, GAP, Zara, Superga, Impala Skate, and so on.

Barbie has moved from television to film and as a modern influencer has also conquered social media. She is present with her own App and communicates with her young followers through her own YouTube channel and a personal podcast series “With Barbie you can be anything you want,” through which she encourages imagination and to experiment through play.

To conclude, “Humans only have one ending. Ideas live forever” (from the movie Barbie). Especially if they are well protected through trademarks, patents, designs.

 

© THINX Srl – August 2023

 

 

Antonio Di Bernardo and Giancarlo Belloni have been ranked as top patent attorneys in “IAM Patent 1000 2023”

We are proud to share that Antonio Di Bernardo, THINX founder, and Giancarlo Belloni, European Patent Attorney, have both been ranked by the prestigious IAM as top patent attorneys in its “IAM Patent 1000 2023” which every year identifies the world’s leading patent professionals.

About Mr. Di Bernardo, IAM says: “Fast, accurate and cost-effective” are the hallmarks of Antonio Di Bernardo offering as he “leverages extensive technical experience to help academic inventors in the assessment of the invention”.

About Mr. Belloni, IAM says: “Giancarlo Belloni has a profound understanding of clients’ goals and takes time to effectively translate complex matters into more simple terms”. He utilizes his expertise to provide extremely precise and detailed drafts and secure patents.

Congrats!

Antonio Di Bernardo – IAM (iam-media.com)

Giancarlo Belloni – Patent 1000 – IAM (iam-media.com)

 

“Green Claims Directive” and “Greenwashing” in Food & Beverage sector

Author: Giovanna Del Bene

 

Labels represent a fundamental marketing asset also in the Beverage sector, as they play an important role in the relationship between the producer and the consumers. In fact, in addition to carrying out an informative function for the consumer, the label also helps to communicate the very value of the product and can, therefore, make a difference in the moment of purchase, orienting the choice on a product compared to another. Generally, “label” in the Food & Beverage sector shows all the information (trademarks, images, symbols, indications and so on) on the packaging or on the bottles.

In this respect, the rules specifically relating to labelling are often confused with those laid down for the protection of the trademark. The label is to be considered as the “identity card of the product” and contains information on the characteristics of the same and the indications (mandatory and optional) required by law to be able to put in a market that specific product (for example, the name of the beverage, the type, the raw material, any alcohol content, the country of origin, the expiry date, the storage conditions, the producer’s data and so on).

Instead, we can say that the brand represents the “business card” of the company. The trademark is the distinguishing mark which has the main purpose of distinguishing the products and services of a company from those of other companies, indicating the entrepreneurial origin. However, the brand not only has a purely distinctive function but also performs an important advertising and communication function, guaranteeing quality and attracting the consumer. In general, the registration of the trademark is not required by law but only through it is possible to obtain exclusive protection on the name of the product and/or the commercial name of the company or on the graphic elements of the label or packaging. It is advisable to proceed with the registration of the trademark, when planning promotional or advertising investment activities and, in any case, before placing on the market (domestic or abroad) your product and before presenting the product to third parties (customers, agents, distributors, etc. etc.). All this to avoid that third parties can register the trademark in their own name on bad faith, thus illegally exploiting the goodwill linked to it and blocking the entry into that market to the legitimate owner.

Among the various indications on the label, entrepreneurs often include self-declarations regarding the impacts, aspects or environmental performance of the product or operator, such as the words “bio”, “eco”, “sustainable” or “made from recycled plastic bottles” or “ocean friendly” or “climate friendly” or “delivery with CO2 compensation”.

These are the “Green Claims” that many companies arbitrarily decide to include in the label, to try to accommodate the new sensitivity of consumers towards the environment and the needs of sustainability. The association of the brand or product with environmental issues is an increasingly common commercial practice. However, it is important to distinguish between “Green Marketing” and “Greenwashing” and know the legal implications of the latter.

Green Marketing is a marketing approach that focuses on the promotion of products and services with low environmental impact, with the aim of meeting the needs of consumers oriented towards ecological purchasing. In total transparency and complete consumer protection, it aims to communicate the eco-sustainability that is the basis of certain products and services, through the promotion of ecological business practices and the obtaining of environmental certifications.

On the basis of a study conducted by EUIPO in recent years (see Green EU trademarks: update 2022 – data for the period 1996-2021) the number of “green marks” has also increased. In 2021, the EU countries that registered the most “green marks” in the European Union were Germany, Spain, France, Italy, the Netherlands and Poland. The main product groups covered by these green EUTMs are «Energy conservation» and «Energy production» (over 48%), «Pollution control» (18%) and «Transportation» (11%). According to EUIPO, a European Union Trademark is considered “green” if its list of products/services contains at least one term “green” and refers to a sign that intends to communicate that it is an environmentally friendly good, service or business practice.

However, there is a high risk that these marks will be rejected by EUIPO because they often lack any distinctive character or consist exclusively of indications and signs describing the characteristics of the involved goods and services or because they are considered misleading to consumers.

The use of Green claims can be an effective marketing strategy for companies looking to attract consumers oriented towards sustainable purchasing, but it is important that these claims are true and correct. Current regulations require that product information is provided accurately and clearly and that ecological claims are verifiable, not to fall into the phenomenon of so much harmful Greenwashing. In fact, the improper or misleading use of green claims by a company, especially if in association with its brands, can damage the reputation of the company itself, making the brands deceiving and ending up having a negative impact on consumer confidence.

Greenwashing is a deceptive marketing practice, which is reflected in the brand reputation, through which some companies try to communicate in a misleading way an image of environmental sustainability, without having an effective positive impact on the environment. The term “Greenwashing” is manifested through the use of eco-labels, statements and symbols that can even deceive the consumer about the real environmental characteristics of a product or service, with the intention of driving the purchases, failing to provide useful tools to the consumer to verify whether the ecological claims are true or whether the declared environmental benefits are objectively verifiable.

On 22 March 2023, the European Commission published a proposal for a directive, known informally as the “Green Claims Directive”, to provide common guidelines to all member states for proper environmental communication. The aim of the directive is to put a brake on self-declarations, to provide consumers with clearer, more reliable and more verifiable information, so as to ensure that the products and services chosen are genuinely environmentally friendly. In addition, the Commission wishes to enhance and enhance the competitiveness of companies seriously committed to environmental sustainability.

The proposal will now be submitted for the approval of the European Parliament and the Council and if it is approved, Companies that use self-declarations or trademarks for green marketing purposes should ensure that the claimed environmental properties of their products and services are independently verified and validated by scientific evidence. Furthermore, it will no longer be allowed to indicate the overall environmental impact score of a product and comparisons with other products or companies will require equivalent information and data. The proposal also covers the regulation of “environmental labels”. According to the Commission, there are currently at least 230 different marks with a clear risk of confusion for consumers. Therefore, “only labels developed at EU level will be allowed, unless sufficient evidence is presented and the label is approved by the EU. The only indications excluded from the proposal are those already covered by existing or future EU regulations, such as the EU Ecolabel or the organic food logo”.

With regard to possible sanctions in the event of a breach of the rules, the Directive provides that it will be up to the Member States, through a control system, to introduce effective, proportionate and dissuasive fines for offenders, with amounts defined according to the nature and gravity of the infringement.

Finally, it is important that companies that use green marketing provide clear, verifiable, and certified information on the environmental properties of their products. Moreover, before applying to register or use green trademarks, they should pay attention to the possible risks of refusal by the competent Trademark Offices because of lack of distinctiveness or descriptiveness or else considered misleading for consumers.

 

© THINX Srl  – May 2023

Protecting Food and Beverage Processing Technologies

Author: Eng. Antonio Di Bernardo

Food industry is one of the most active and innovative, not only because new foods are coming on our tables, but also because automation is a must for any companies processing food and beverage (F&B)

Despite traditional foods are produced following centenary-old recipes, mass production requires automated machines which must be up to the hilt in terms of speed, performance and low energy consumption. There’s no alternative to stay on the market.

At Interpack, in Dusseldorf, more than 150 exhibitors will show their brand-new technologies for processing F&B. Each of them has spent time and resources in R&D to properly design machine and plants that respond to the needs of F&B companies.

Sometime the innovation brought by a company can be so trivial as genial (the Egg of Columbus), sometimes the innovation is not trivial, but it can be so evident and easy to be implemented by competitors. As a result, a company that has spent much time in finding a solution to a technical problem, to provide improvements and respond to the market needs, can see its solution copied soon after the exposition.

How can these innovative companies secure themselves and their investments? The answer is simple: by registering patents.

Patents are very effective solutions to keep technologies safe because they allow to protect a general technical idea that can be deployed in different ways. The more the invention is disruptive, the more will be the scope of protection of the patent which is not limited to the exact wording of the claims (defining the protection conferred by the patent) but is extended to all equivalent solutions.

Patents allow protecting both machines and methods, this means that companies can get protection over both the physical device and the processes implemented by the machines. This is very important because by protecting the processes, the patent owner can get a somehow broader protection, e.g. over particular actions or steps independently from the technical elements used to make them.

Patentable methods are also the software algorithms that are used to control machine operations, e.g. software that process acquisition data to decide on F&B  quality in order to change control parameters of the machine. Software is more and more pervasive and important in F&B processing, and the huge amount of data available has made artificial Intelligence (AI) a reality adopted to control performance of food processing machines.

AI allows taking decisions that are often too difficult to be taken by human minds and is therefore used to solve optimization problems involving several parameters. In this field of technology, AI is typically used for dosing ingredients, saving energy, or controlling parameters to optimize F&B processing. Also, if AI is often based on well-known classes of algorithms (e.g. Support Vector Machines, Neural Networks or Genetic Algorithms) the particular application, feature selection or training adopted, can make the solution patentable.

This article was first written for and published by “Food Processing” magazine of Editrice Zeus.

The invention of the windshield wiper is female!

Author: D.ssa Giovanna Del Bene

As is well known, the windshield wiper is a cleaning device for the windshield of land, sea and air vehicles in case of rain, snow or dust etc. etc. to keep it clean, ensuring visibility. It is present on all vehicles (sometimes even at the rear of the vehicle: rear window wiper) and often by legal requirement.

However, perhaps not everyone knows that the inventor of the windshield wiper swing arm is believed to be a woman: Mary Anderson. The idea was patented in the United States on November 10, 1903 under No. 743,801.

The story about the origin of the idea is controversial. Some narrate that she was a great traveler but did not know how to drive, so she often shifted cabs, and when it rained, the taxi driver was forced to stop to clean the windshield while the meter continued to rise. Others relate that the idea came about because of a visit to New York in the winter of 1903. Anderson observed a streetcar driver keeping both windows open to clean the windshield of snow, so she thought of designing a hand tool to keep the windshield clean. The tool consisted of a lever inside the car that moved a rubber stick on the outside of the windshield.

After obtaining the patent, Anderson tried to sell it, but without commercial success: some claim this was because the invention was made by a woman; others report that the innovation was received negatively because it was thought that the movement of the device could distract motorists. The patent lapsed in 1920.

Likewise, the first automatic windshield wipers were invented by a woman, Charlotte Bridgwood, who filed a patent for her invention in 1917. Unfortunately, Bridgwood’s invention was also met with distrust by the market.

Probably, the timing was wrong. At the time, in fact, automobiles were not so widespread, and it was not until 1922 that Cadillac began selling cars having windshield wipers as standard equipment. According to a cliché, women would always be late; instead, Mary Anderson and Charlotte Bridgwood were “too far ahead” for the time.

“In 2023, WIPO (World Intellectual Property Organization) has decided to celebrate talented women around the world. Responding to this call, THINX will publish stories of women who have left their mark on intellectual property and their role as carriers of innovation and creativity.”

© THINX Srl – April 2023

 

 

New Nice classification: trademarks related to virtual goods in the metaverse and NFT finally protected

Author: D.ssa Giovanna Del Bene

On 1 January 2023, the 12th edition of the Nice Classification came into force.

This is an internationally recognized system, established following the Nice Conference in 1957, revised in Stockholm in 1967 and Geneva in 1977, and amended in 1979, which is used for the classification of goods and services for trademark applications. Currently, the Nice Classification consists of 45 classes (34 classes of goods and 11 classes of services). Each class contains a list of terms that define the scope of protection of the goods or services to be protected through trademark registration.

Every year, the Committee of Experts on the Nice Classification updates the classification according to market and user needs.

In this respect, the 12th edition was particularly eagerly awaited by professionals and trademark owners, as it introduces important novelties concerning the way trademarks are protected in the metaverse regarding virtual goods and the use of NFTs, which until now were not expressly provided for in the Nice Classification.

NFTs (acronym for Non-Fungible Token) are certificates registered on blockchain, which represent the deed of ownership and the attestation of authenticity and uniqueness of a digital asset (they are therefore not interchangeable).

The term METAVERSO originated in Neal Stephenson’s 1992 science fiction novel Snow Crash as a combination of the terms ‘meta’ (from Aristotle’s ‘Metaphysics’) and ‘universe’. Recent years have seen a strong development of the metaverse due to the advancement of virtual reality technology and many companies, such as Microsoft and Facebook, are investing in this parallel market. The metaverse is a virtual reality projected onto the web and shared simultaneously by several people. These are shared three-dimensional spaces (so they are not owned by companies) where users move freely (with their own identity or using avatars), performing social and commercial activities. Access to the metaverse is through registration on a computer platform that can be accessed simply through a computer and an Internet connection. The use of visors or augmented reality devices is recommended to enhance the experience. Purchases can be either real or virtual (via crypto assets).

This new digital reality has proved to be an opportunity for major brands and companies in general, so much so that there has been an increasing number of trademark applications containing terms related to the metaverse, virtual goods and non-fungible tokens (NFT). This has made it necessary for Trademark Offices to provide guidance to users on the classification of these new types of terms.

In recent months the EUIPO (European Union Intellectual Property Office) and the USPTO (United States Patent and Trademark Office) have provided some guidance for the classification of these terms pending the entry into force of the new edition of the Nice Classification.

According to the EUIPO’s approach:

– Virtual products fall under Class 9 because they are treated as digital content or images. However, lacking clarity and precision per se, the term virtual goods needs to be further specified by clarifying the content to which these virtual goods refer (e.g. downloadable virtual goods, or virtual clothing).

– The term NFT is to be considered ‘new’ and for the Office, the term non-fungible tokens per se is not acceptable. NFTs are treated as unique digital certificates registered in a blockchain, which authenticate digital elements while remaining distinct from them, and it will be necessary to indicate the type of digital element that NFTs authenticate.

– Services related to virtual products and NFTs will be classified in line with established classification principles for services.

The USPTO has provided the following guidance in relation to the identification of virtual goods and services in the relevant classes:

Class 9: downloadable virtual goods, i.e. computer programs containing footwear, clothing, sports equipment, art, toys and accessories for use online in online virtual worlds.

Class 35: retail shop services of virtual goods, namely footwear, clothing, sports equipment, art, toys and accessories for use online in online virtual worlds; online retail shop services of virtual goods, namely footwear, clothing, sports equipment, art, toys and accessories for use online in online virtual worlds

Class 41: Entertainment services, i.e. virtual footwear that cannot be downloaded online, clothing, sports equipment, art, toys and accessories for use in virtual worlds created for entertainment purposes.

Below are some of the new features introduced with the 12th edition of the Nice Classification:

Class 9 incorporates the term “downloadable digital files authenticated by non-fungible tokens (NFTs)”, as well as “downloadable computer software for handling crypto assets’ transactions using blockchain technology” and “downloadable cryptographic keys for receiving and spending crypto assets” and also “virtual reality viewers” and “virtual keyboard projection devices”.

Class 36 includes ‘transactions involving cryptocurrencies’;

Class 41 includes ‘provision of online virtual tours’;

Class 42 covers “mining of crypto assets” and the “provision of virtual computer systems via the cloud”.

In light of the above, it is always advisable to consider extending the protection of one’s trademarks to virtual and NFT-related goods and/or services and to the presence in the metaverse, so as to be able to take advantage of the opportunities offered by this new market with greater serenity, avoiding fraudulent activities by third parties.

© THINX Srl  – January 2023

 

 

 

Unified Patent Court and the Patent Mediation and Arbitration Centre

Author: Giovanna Del Bene

After years of debate and negotiating, the new European Unitary Patent and the Unified Patent Court (UPC – with a local division in Milan) will be implemented in the first half of 2023. This event will have a relevant impact non only on future European patents, but also on already existing European patent rights.

Amongst the most important changes, the Unified Patent Court Agreement (UPCA) established a patent Mediation and Arbitration Centre. According to Article 35, the Centre shall have its seats in Ljubljana and Lisbon. It shall provide facilities for mediation and arbitration of patent disputes falling within the scope of the Agreement. However, a patent may not be revoked or limited in mediation or arbitration proceedings.

Moreover, the Centre shall establish Mediation and Arbitration Rules and it shall draw up a list of mediators and arbitrators to assist the parties in the settlement of their dispute.

There are several advantages for companies that choose arbitration or mediation over an ordinary judgment. In particular, these ADR procedures are characterized by confidentiality, by greater speed and cost-effectiveness, since the parties have control over the timing and the manner in which the procedure is conducted.

What’s new with the UPC

The UPCA provides for the UPC to have jurisdiction on already granted and validated European patents, as well as on pending European patent applications. In other words, the UPC will handle the litigations related to European patent rights and the rulings delivered by the UPC will have effect in all the 17 countries adhering to the UPCA.

From one side, this advantageously allows to enforce or invalidate a patent through a single action affecting a plurality of countries through a procedure which is meant to be fast and reliable; a first instance’s ruling is expected to be delivered within one year from the litigation start.

From the other side, a centralized procedure implies the risk to invalidate, with a single ruling, all validations of a European patent (among the adhering countries). Furthermore, the centralized procedure will have higher costs than corresponding national legal actions. In addition, while in Italy invalidity and infringement of a patent are discussed within the same lawsuit, in some cases the UPC might follow a split path, where invalidity and infringement have to be discussed in front of two different court divisions.

Given the current dynamic economic context and the new rules introduced by the UPCA, arbitration and mediation are to be considered as the most efficient way of resolving conflicts, as they are able to offer effective, professional and timely decisions.

At THINX our consultants are experienced in negotiation, arbitration and mediation techniques and we can provide our assistance during the above procedures.

 

© THINX Srl  – December 2022