Reforms to the Community Trade Mark framework

On 23 March 2016, a new EU Trade Mark Regulation came into force. The Regulation reforms the Community Trade Mark regime. For example, there are some terminology changes. The Office for Harmonization in the Internal Market (OHIM) will be re-established as the ‘EU Intellectual Property Office’ and Community Trade Marks (CTMs) will now be known as ‘EU Trade Marks’.

One impact of the reforms concerns the scope of the goods/services covered by existing CTMs. Where a CTM uses a class heading from the Nice Classification, that CTM will now be deemed to cover only those goods/services that fall within a ‘literal interpretation’ of the class heading. Prior to the new Regulation, use of a class heading would mean that the CTM would be deemed to cover all of the goods/services in the alphabetical list of goods/services relevant to the class covered. The impact could be that the protection afforded by some CTMs will be limited or potentially even ineffective as the CTM may no longer cover the goods/services that it did previously.

As part of the EU trade mark reforms, owners of CTMs applied for before 22 June 2012 (or International Registrations designated or subsequently designated to the EU before 22 June 2012), with a class heading are being given an opportunity to rectify their registrations. They will be able to add specific goods/services from the alphabetical lists corresponding to the classes within which the CTM is registered to reflect the goods/services actually provided under the trade mark. This will define the scope of the mark and ensure that the CTM continues to provide effective trade mark protection. There is no fee for doing this but there is a time-limited window of between 23 March and 24 September 2016.

New framework for transatlantic data flows agreed

After two years of negotiation, the European Commission and the US Government have agreed upon a new transatlantic data flow framework to replace the ‘Safe Harbor’ program, the legal basis for which was invalidated by the European Court of Justice  in October 2015. This is known as the EU-US Privacy Shield. The United States and the European Union have released a package of EU-US Privacy Shield materials which flesh out the agreed framework and set out the Privacy Shield Principles.  In order to rely on the Privacy Shield to effect transfers of personal data from the EU, an organisation “must self- certify its adherence to the [Privacy Shield] Principles to the US Commerce Department or its designee”.

Before organisations can rely on the Privacy Shield, a number of steps remain to be implemented, including submission of the package to the Article 29 Working Party (comprising national data protection authorities) for an opinion (which is likely by the end of March) and discussion with Member States and the European Data Protection Supervisor. These stakeholders may have concerns about the substance and enforceability of the package. Ultimately, the European Commission will need to formally adopt an adequacy decision before it takes effect. Even then, the Privacy Shield may be challenged before the European Court of Justice, as Safe Harbor was last year. It is difficult, therefore, to predict when the approval process will be complete, and organisations can rely on the Privacy Shield. Until such time, consent, model contract clauses and binding corporate rules remain the only viable options for effecting data flows to the US.

New compliance requirement under the Modern Slavery Act 2015

A new piece of compliance legislation for commercial organisations, the Modern Slavery Act 2015, is now in force. Section 54 of the Act requires commercial organisations carrying on business in the UK and with a global turnover of £36 million or above to prepare a ‘slavery and human trafficking statement’ each financial year setting out the steps it has taken in that year to ensure that slavery or human trafficking has not taken place in its supply chains or in any part of its own business. The requirement to provide this statement applies to organisations with a financial year ending on or after 31 March 2016. The statement must be signed by a director and approved by the Board before being published in a prominent position on the organisation’s website or otherwise supplied to anyone who requests a copy. Failure to provide a statement is likely to result in damage to the organisation’s reputation. In addition, the Secretary of State is empowered to seek an injunction against a non-compliant organisation ordering it to produce the statement. Failure to comply with an injunction is contempt of court for which the sanction is an unlimited fine.

The objective of the Act is to ensure transparency around the activities of large organisations and to create a level playing field between those organisations adopting ethical business practices and those that are not. The Home Office has produced guidance for organisations on their obligations under s54 of the Act.