Leading privacy lawyer Dr TJ McIntyre joins FP Logue

We are delighted to announce that Dr TJ McIntyre has joined the firm as a consultant.

TJ is a solicitor and a lecturer in law at University College Dublin specialising in information technology and privacy issues.

Recognised as one of Ireland’s leading experts in his field, TJ has advised a range of public and private sector organisations and is the current Chairman of Digital Rights Ireland, an advocacy group best known for successfully having the Data Retention Directive struck down by the European Court of Justice.

This appointment bolsters our information law practice and underscores our commitment to serving our clients as they adapt to the General Data Protection Regulation coming into effect from May 2018.

Our picture shows (l to r): Niall Rooney, partner, TJ McIntyre, consultant and Fred Logue, senior partner

Pic by Pearl Phelan

 

ACHILL trade mark declared partially invalid

Registering a name as a trade mark gives the owner exclusive rights to prevent others using the same name (or a confusingly similar name) in a commercial way for particular goods and services.

The question often arises whether place names can be registered as trade marks for goods or services. In general, geographical names are not registrable as trade marks if the place is currently associated with the goods or services in the mind of the consumer, or it is reasonable to assume the place will be associated with these goods or services. The test is whether the name is descriptive of objective characteristics of the goods or services, such as place of production of the goods, subject matter of the goods, or place where the services are rendered.

The Cancellation Division of the European Union Intellectual Property Office (EUIPO) recently considered these principles and declared a trade mark for an Irish place name invalid for meat and lamb products, restaurants, food service, holidays and holiday accommodation.

The case relates to Achill Island off the coast of County Mayo, Ireland, the largest island in the country and a popular tourist destination.

Uaineoil Sléibhe Acla Teoranta, an Irish company of Achill Island, Co. Mayo is the owner of EU Trade Mark No. 013435573 ‘ACHILL’ which was registered on 31 March 2015 for “Meat and meat products; lamb meat and lamb meat products; lamb meals and constituents of meals predominantly of lamb” (Class 29), “Equestrian holidays, holidays and holiday accommodation, holiday information; restaurant services; catering services” (Class 43) and “Healthcare services; health resort services; convalescent homes services; saunas, beauty salon services, sanatorium, hairdressing services; massage services; nursing services; baths for hygiene purposes and turkish baths; flower arranging; manicure services; physiotherapy” (Class 44).

On 24 August 2015 CaorAcla Limited filed an application at the EUIPO to cancel this trade mark registration on grounds of invalidity. The main ground relied on was that ‘ACHILL’ is a known geographical term which is descriptive as it indicates the geographical origin of the goods and services covered by the trade mark registration.

Both sides filed detailed evidence in the case, and the EUIPO issued its decision on 18 April 2017.

Observing that the relevant consumer is the Irish average consumer and that the term ‘ACHILL’ refers to Achill Island in County Mayo, Ireland, the EUIPO found as follows.

Regarding the class 29 goods being meat, lamb meat, lamb meat products, the EUIPO observed from the evidence that “Ireland as a country is rife with sheep”. It is known for its sheep and sheep farming. There are sheep all over Ireland, and “sheep farming has taken place on Achill Island for a long time”. When lamb meat is sold to the consumer, the breed is seldom or never mentioned. On the other hand, geographical provenance is often mentioned when choice foods are offered for sale. Geographical provenance of foods has become important for consumers, for instance, consumers know that feed, such as grass and herbs in a specific place eaten by sheep and livestock, affects the taste of meat. Consumers may choose a meat from a certain place because they like that flavour and other qualities of the meat and increasingly geographical provenance is mentioned in sales and marketing. Taking into consideration that the Irish average consumer is aware sheep farming takes place all over Ireland, they would rightly assume it also takes place on Achill Island. Therefore, when viewing the mark ‘ACHILL’ in relation to the class 29 goods, the consumer will immediately understand that the goods are lamb meat from lambs reared on Achill Island, and would understand it as a term indicating the geographical origin of the goods. Therefore, ‘ACHILL’ is descriptive for the class 29 goods.

Regarding the class 43 services, the term ‘ACHILL’ is descriptive as an indication of destination, location and subject matter for holidays, holiday accommodation and holiday information services. It is also descriptive for restaurant and catering services, which go hand-in-hand with accommodation services. Furthermore, food is an important part of holiday experience and tourists will often connect foods with a certain place. However, equestrian holidays are very specific and cater to a limited number of individuals. There was no evidence that Achill Island is known for horse riding holidays and ‘ACHILL’ is not descriptive for these services.

Regarding the class 44 services, there was no evidence that Achill Island is known for such healthcare, health resort or personal care services, or that the consumer might view the term ‘ACHILL’ as an indication of geographical origin for such services. Therefore, ‘ACHILL’ is not descriptive for these services.

The EUIPO went on to find that ‘ACHILL’ is also devoid of distinctive character for the same goods and services for which the mark has been found to be descriptive.

The EUIPO noted that in these proceedings the trade mark owner did not claim nor did it provide any evidence of acquired distinctiveness of the mark ‘ACHILL’.

The EUIPO upheld the application for cancellation in part and declared the trade mark ‘ACHILL’ invalid for “Meat and meat products; lamb meat and lamb meat products; lamb meals and constituents of meals predominantly of lamb” (Class 29) and “Holidays and holiday accommodation, holiday information; restaurant services; catering services” (Class 43). The trade mark will remain registered only for “Equestrian holidays” (Class 43) and “Healthcare services; health resort services; convalescent homes services; saunas, beauty salon services, sanatorium, hairdressing services; massage services; nursing services; baths for hygiene purposes and turkish baths; flower arranging; manicure services; physiotherapy” (Class 44).

The decision is open to appeal to the EUIPO’s Board of Appeal until 19 June 2017, otherwise it becomes final after that date.

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Read the EUIPO decision in full here.

Law and the Engineering Mindset

While a postgraduate qualification in science or engineering is almost obligatory for intellectual property and technology lawyers in advanced economies such as the UK, USA and Germany the same is not the case in Ireland where the vast majority of practising lawyers follow the same path from basic law degree to practice. But research from the USA and the UK shows that poor mathematical skills in lawyers is a real problem.

As one of the few Irish technology lawyers with an engineering background I am often asked what difference technical experience makes to my practice as a lawyer.

Look at the intellectual property and technology departments of the biggest firms in Ireland and you will find non-technical lawyers with qualifications that are identical to their colleagues in areas such as real estate, finance, M&A and family law.

I have thought long and hard about what advantage technically qualified lawyers have and have come to the conclusion that it goes way beyond numeracy and familiarity with technology.

Lawyers with technical training and experience bring an engineering mindset to the practice of law and that is what sets us apart.

Lawyers with technical training and experience bring an engineering mindset to the practice of law and that is what sets us apart.

So what is an engineering mindset?

Well as a practising lawyer who has a PhD in physics, three patents and ten years’ experience working for some of the worlds largest technology companies I think I can finally answer that question.

Engineers have a native curiosity – it’s what drives us to make things better. Engineers are always looking for elegant solutions to hard problems that improve people’s lives – it’s in our DNA.

Research from the USA and the UK shows that poor mathematical skills in lawyers is a real problem.

Engineering depends on collaboration to get the job done. Engineers often have a strong vision but the best ones also have the ability to listen to and take on board other points of view.

Engineering brains are wired to spot patterns in complex data. Because of that we perceive patterns differently breaking things down into their components and putting them back together again to make something new and better.

Lawyers are traditionally conservative and tend to follow the status quo, on the other hand, knowing something has never been done before motivates engineers to innovate. A technical qualification engenders a healthy disrespect for the status quo.

Finally engineers are experts at communicating complex ideas often using data and visualisation to make the point. You won’t see an engineer writing a ten page document when a diagram will do the job.

So when you work with a lawyer who has an engineering mindset you get a numerate problem solver and communicator motivated to craft elegant solutions even for problems that have never been solved before.

If you want to work with lawyers who have this unique engineering mindset please subscribe to my newsletter, Ghost of Electricity, or get in touch with us at www.fplogue.com

Ireland set to extend copyright in industrial works

The Department of Jobs Enterprise and Innovation published the results of its consultation on the proposed harmonization of the term of copyright protection for artistic works exploited by an industrial process.

For most copyrights the protection lasts for a term of the life of the author plus a further 70 years after death. With artistic works that are exploited industrially – for example furniture, lighting etc – the position was unclear since the 2001 design directive appeared to leave it up to the Member States to set the term for works exploited by an industrial process. In the UK and Ireland the copyright in these works was set at 25 years, the same as under the design directive.

However the European Court in the 2011 flos judgment which concerned designer lighting clarified that the term of copyright was harmonized in the EU irrespective of any changes that might have been thought to have been made under European design laws.

The biggest effect of the proposed changes appears be to the business of retailers of replica furniture or furniture inspired by classic designs. These retailers will see the opportunity to manufacture and sell lower cost replicas of classic furniture from periods up until the early 1990’s shut off for the best part of another century.

When the UK changed its law recently it seems that some replica businesses decided to move to Ireland since at that time Ireland had not moved to bring its laws into line with the flos decision.  However that loophole will now be closed off.

With this consultation complete the Irish administration now intends to introduce a 12 month transition period to allow manufacturers to reorient their businesses and run down stocks. After this, classic industrial designs will benefit from a longer term of intellectual property protection.

Revenue streamlines SME R&D tax credits

The Revenue has issued a new practice note indicating that it will not challenge R&D tax credit claims from SMEs valued under the science test where the claim relates to projects supported by IDA or Enterprise Ireland grants and the value is less than €50,000.

The practice note indicates that the this will reduce Revenue’s need to engage experts to perform such verification it also gives claimants certainty if a claim is audited removing the need for independent verification that the claim meets the definition of R&D as defined by the OECD.

The practice note is available here or below:

29-02-07

Photo credit: https://www.flickr.com/photos/snorrtttfrenzy/4315844941

European Data Protection Supervisor calls for coherent approach to regulation in the age of big data

Today, Giovanni Buttarelli, the European Data Protection Supervisor, called for a re-engineering of regulation in the European Union in the age of big data and in light of the Charter of Fundamental Rights. If the actions suggested by the new EDPS opinion on  coherent enforcement of fundamental rights in the age of big data come to fruition we are going to see significant focus on the harms of big data including barriers to privacy-enhancing innovation and the hidden costs of excessive personal data disclosure.

Mr Buttarelli observed that while processing personal data is indispensable to web based services and the Digital Single Market many services have become dependent on covert tracking of individuals. Dominant companies may be able to foreclose the market to new entrants competing on factors which could benefit the rights and interests of individuals or to impose exploitative terms. Imbalances between service providers may also increase the price – in terms of personal data – disclosure far beyond what may be expected in a competitive market.

Pointing to threats posed to several fundamental rights by standards and behaviour that have become the norm in cyberspace, Mr Buttarelli called for dialogue and collaboration between consumer, competition and other regulators, updated rules on merger control to protect privacy and the even the creation of a space on the web where users could interact with a guarantee that they would not be tracked.

This is a bold and ambitious call from Europe’s top data protection supervisor but it echoes similar sentiments which were recently expressed by Competition Commissioner Margrethe Vestager and her acknowledgement that personal data is often the price we pay for web services and that market power can itself derive from control of large unique data sets.

Photo credit: @topgold

Nike’s trade mark JUMPMAN refused in Ireland

In a trade mark opposition decision of the Irish Patents Office, Nike’s application to register JUMPMAN (for clothing, footwear, headgear) has been refused due to a likelihood of confusion with prior EU trade marks for JUMP of Intermar, a Turkish footwear firm.

The Hearing Officer found that visually, verbally and conceptually JUMPMAN and JUMP share an overall high level of similarity. The ‘MAN’ element is an insufficient difference. In fact, the Hearing Officer found that, for the goods at issue, ‘MAN’ would be seen as indicating that goods bearing the mark were directed specifically towards male consumers.

Part of Nike’s defence was alleging the EU trade marks relied on by Intermar in the opposition proceedings have not been put to genuine use. The Hearing Officer observed that, from the opponent’s evidence, it had made no use of JUMP in Ireland, and the full extent of use in the EU was one customer in Bulgaria. While it is a ground for cancellation of an EU trade mark if it has not been put to genuine use in the EU within a continuous period of 5 years, this is not part of Irish national opposition procedure. A cancellation application can only be taken before EUIPO. (Nike appears not to have exercised this option). Accordingly, the Hearing Officer said his hands were tied. He had to reach a decision on the basis that the opponent has earlier trade marks for JUMP, regardless of whether they have been put to genuine use or not.

This is a well known procedural gap in the Irish trade mark opposition framework. It is anticipated that this will be reviewed when the Irish Trade Marks Act and Rules are next up for revision by the authorities.

In contrast, the UK opposition procedure allows for defence based on proof of use. In fact, in the corresponding proceedings in the UK based on the same trade marks, Nike was successful in this defence. The UKIPO found that use of the opponent’s EU trade marks was insufficient to constitute genuine use in the EU, meaning that the trade marks could not be relied upon as the basis for opposition. The UK opposition was therefore dismissed, without going on to consider the question of similarity, and the trade mark JUMPMAN is now registered in the UK.

Communication to the Aarhus Convention Compliance Committee accepted

The Aarhus Convention Compliance Committee today accepted a communication filed by FP Logue Solicitors on behalf of its client, Right to Know. The communication alleges non-compliance by Ireland with the Aarhus Convention arising from delays in reviewing refusals by Irish public authorities to grant access to environmental information. The Aarhus Convention grants the public rights to access environmental information, participate in decisions affecting the environment and to access judicial and administrative remedies. Requests for access to environmental information must be granted within one month of request and where a member of the public considers that his request has been incorrectly handled he or she has a right to an expeditious and timely review by the Commissioner for Environmental information and the courts.

In our client’s view serious delays and inappropriate procedures constitute clear non-compliance with the Aarhus Convention.

The Aarhus Convention Compliance Committee is a body which sits in the United Nations in Geneva and is empowered to accept communications from members of the public concerning compliance by parties with the provisions of the Aarhus Convention. The communication will now be reviewed for admissibility by the Compliance Committee at its 54th meeting to be held in Geneva between 27 and 30 September and if it is found to be admissible the Committee will invite comments from the Ireland and others and will investigate the allegations of non-compliance.

Right to Know is an Irish NGO who’s objective is to improve, promote and advocate for greater access to information including environmental information. The objective of the communication is to reduce delays in reviewing decisions of public authorities so that final decisions are made in a timely way so that the public can be assured that requests are answered as quickly as possible.

The ACCC operates transparently and all documents are available online at http://www.unece.org/environmental-policy/conventions/public-participation/aarhus-convention/tfwg/envppcc/envppcccom/acccc2016141-ireland.html 

Ireland consults on copyright term for industrial works

Under normal circumstances copyright protection lasts for the life of the author plus 70 years, this term of protection is harmonized in Europe by the Term Directive (2006/116/EC).

In some member states there are or were legacy rules for copyright in registered designs and for artistic works exploited by an industrial process. In Ireland such works have a shorter 25 year span of protection which starts on the date of application for an industrial design or the date of first marketing of the artistic work.

In 2011 in a case concerning copyright in the classic Italian Arco floor lamp, the CJEU said that it was impermissible under EU law to provide for a term of copyright less than the life of the author plus 70 years. Ireland now wishes to bring its copyright term for industrial designs into line with EU law and is proposing a transition period after which such copyrights will benefit from the longer span of protection.

This seems like good news for creators but bad news for imitators.

The consultation was launched yesterday and according to the Department of Jobs Enterprise and innovation:

This consultation is aimed at gathering stakeholder views with regard to the potential impacts on sectors of the Irish economy of extending the period of copyright to that period of life of the creator plus 70 years. The Government is seeking views as to which sectors would be affected and how. Views are also sought with regard to the length of the transitional time period. This would include the time required to change the behaviour on the part of those whose actions would infringe the copyright of others with the amendment of the Copyright and Related Rights Bill. This transitional period is also to give manufacturers of replicas time to dispose of or sell off their stock. We are also seeking views on the impact on rightsowners, the owners of artistic works and the industry generally.

The Department is interested in hearing from interested parties and in particular in relation to:

  1. Will the proposed amendment potentially impact in a positive or a negative manner on businesses?
  2. Would a short transition period before the amendment comes into force be the most appropriate and efficient?

For more information and a short discussion paper the consultation page. Interest parties have until Thursday 22 September 2016 to make there views known.

The long and winding data protection road …. destination Luxembourg?

Why did the Irish Data Protection Commissioner go to the Irish High Court to refer questions of European Union law to the Court of Justice in Luxembourg rather than referring them herself?

Writing in the latest edition of Data Protection Ireland, barrister Gary Fitzgerald, director of the Irish Centre for European Law, has rowed in with an analysis of the law (see here). According to Fitzgerald there is nothing to stop the commissioner from bypassing the Irish courts and heading straight to Luxembourg with questions on the validity of European Union data protection law.

Many people asked why the commissioner needed to issue proceedings in the High Court to access the highest EU court following an unprecedented Irish court judgment. As readers will recall the Irish court joined the US government and others to proceedings initiated by the Data Protection Commissioner for the purpose of referring questions concerning the legality of personal data transfers outside the European Union.

Respected Irish Times journalist Karlin Lillington expressed bafflement at a decision that would needlessly add years to the procedure and cost millions in legal fees.

Complainant Max Schrems, is now faced with a multi-million euro litigation which includes three weeks in the High Court before fundamental issues of EU data protection law can finally be put to bed, he’s not happy.

https://twitter.com/maxschrems/status/758708704908759043

According to Fitzgerald

The CJEU in Schrems I put an obligation on each supervisory authority to vindicate the rights of EU data subjects. This can only be done by referring a question to the CJEU. The issue is whether the CJEU would reject a reference from the DPC on the grounds that it was not  a court or tribunal. The definition is flexible allowing CJEU to respond to the needs of justice in each case.

Schrems II sees a conflict between global trade, national security and the fight against crime on the one hand and fundamental rights of almost all EU data subjects on the other. It is one of the most important cases that the CJEU will ever hear.  Yet by not referring a question herself, the DPC has delayed a reference to the CJEU by almost a year, if not longer.

Clearly, it is this article’s view that the DPC does have the necessary characteristics to be classified as a court or tribunal. In addition, the need for a quick resolution of this dispute means that the CJEU would likely have accepted a reference, notwithstanding any doubts that it had about the judicial nature of the DPC.

The issue raised here is only going to get more significant. Given that there will certainly be a challenge to the new Privacy Shield, and that challenge could likely come from Ireland, the DPC and any party to the complaint will have a decision to make. The DPC will have to consider  making a reference, and if she fails to do so, the complainant, or data controller, will have to consider challenging this refusal. The best course of action would be for the DPC to refer a question and have the CJEU determine acceptance. Overall, it seems likely that the CJEU would, given the nature of Section 10 and the importance of the reference, accept it.

So it seems that as this case unfolds questions will not just be asked of the CJEU!

Photo credit: https://www.flickr.com/photos/22325431@N05/