News

AMAZON MARKETPLACE AND TRADE MARK INFRINGEMENT: RECENT RULING OF THE COURT OF JUSTICE OF THE EUROPEAN UNION

14/04/2020

By its decision of 2 April 2020, the Court of Justice of the European Union ruled in the case of Coty Germany GmbH (“Coty”) against certain companies of the Amazon group (C-567/18), holding that the mere storage by Amazon, within its online marketplace (“Amazon-Marketplace”), of products infringing trademark rights does not in itself render Amazon liable for the infringement of those rights.

 

The fact
The decision is based on a reference for a preliminary ruling from the German Federal Court of Justice in a trademark law case brought by the distributor Coty against certain companies in the Amazon group. Coty, licensee of the European Union trademark „Davidoff“ protected for „perfumery, essential oils, cosmetics“, complained that two companies of the Amazon group had infringed their right to prohibit third parties from using that sign.
Coty had in fact carried out a test purchase of some bottles of the „Davidoff“ brand perfume offered for sale by a third party seller (therefore not directly by Amazon) on the Amazon Market Place. This seller was a member of the „Amazon Logistics“ program, under which products sold by third parties are stored and shipped by Amazon on their behalf.

The first two proceedings
Coty, claiming that his rights to the „Davidoff“ trademark were not exhausted because the products in question had been placed on the European Union market without his consent, sent a warning to the seller.
Subsequently, Coty invited Amazon to put back all the bottles of perfume bearing the trademark in question and stored on behalf of the seller. Amazon sent the requested perfume bottles to Coty. However, it appeared that among these bottles were some from a different vendor’s stock, which Amazon was unable to identify. Taking the view that Amazon’s conduct violated its rights to the trademark operated, Coty asked the German judge (Landgeright) to prohibit Amazon from stocking – or having stocked or dispatched – in Germany perfumes bearing the trademark in question, marketed in the European Union without Coty’s consent.
The Landgericht rejected the action proposed by Coty. Coty was also unsuccessful in second instance, considering that the court of appeal held that the two companies in the Amazon group had neither stored nor dispatched the products in question and that they had merely stored those products on behalf of the seller and other third-party sellers. Claiming that Amazon’s conduct violated its trademark rights, Coty asked the German Judge (Landgeright) to prohibit Amazon from stocking or shipping – or having stocked or shipped – to Germany perfumes bearing the trademark in question, marketed in the European Union without Coty’s consent. The Landgericht rejected the action proposed by Coty. Coty was also unsuccessful in second instance, taking the view of the appellate court that the two companies in the Amazon group had neither stored nor dispatched the products in question and that they had merely stored those products on behalf of the seller and other third-party sellers.

The reference for a preliminary ruling
Coty brought an appeal for cassation before the referring court. The latter, the Bundesgerichtshof (Federal Court of Justice, Germany), considered it necessary to ask the Court of Justice to interpret Article 9(2)(b) of Regulation (EC) No 207/2009 on the European Union trademark, as amended by Regulation (EU) 2015/2424 and Article 9(3)(b) of Regulation (EU) 2017/1001. That reference for a preliminary ruling was necessary in order to understand whether those provisions must be interpreted as meaning that a person who stores on behalf of a third party goods infringing a trademark right, and who is not aware of the infringement of the trademark right, stores those goods with a view to their offer or placing on the market in accordance with those provisions, even where it is only the third party who offers those goods or places them on the market.

The decision of the Court of Justice of the European Union
The Court of Justice of the European Union has firstly referred to the legislation applicable to the EU trademark, pointing out that it confers, inter alia, on its proprietor the exclusive right to prohibit any third party, without his consent, from using in the course of trade, in relation to goods or services, any sign, where the sign is identical to the EU trademark and is used in relation to goods and services which are identical to the goods or services for which the EU trademark is registered. In particular, the Luxembourg courts have pointed out that the different ‚uses‘ which the proprietor of the trademark is entitled to prohibit include – under the abovementioned legislation – the offering of goods, their placing on the market or their storage for those purposes.
In the present case, the Court of Justice of the European Union held that the storage operation carried out by Amazon did not fall within the concept of „use“ mentioned above. According to the Court of Justice of the European Union, therefore, in order for the storage by an economic operator of goods bearing signs identical or similar to trademarks to qualify as „use“ of such signs, it is necessary for the person carrying out the storage to pursue personally the purpose of offering the goods or placing them on the market. Otherwise, mere storage by such an operator cannot be regarded as use of the trademark. In that case, the operator merely creates the technical conditions necessary for the use of that sign.
In the light of that interpretation of the rules referred to above, the Court of Justice of the European Union, having found that in the present case Amazon had limited itself to merely storing the goods covered by the trademark applied for, without offering them for sale or putting them on the market itself, held that it had not made use of the trademark liable to be prohibited by the proprietor.

Valentina Cerrigone


ARTIFICIAL INTELLIGENCE, EUROPEAN UNION IN BALANCE BETWEEN COMMON APPROACH AND NATIONALISM

08/04/2020

By publishing the White Paper [1] in February, the European Union opened a public consultation (due to expire on May 19, 2020) about the Artificial Intelligence in order to assess the possibility of adopting a common regulatory approach to overcome nationalism and partial visions of the issue. According to the Commission, the development of common legislation on Artificial Intelligence would enable businesses and citizens of the Union to face more consciously the most current social challenges such as the fight against climate change, challenges related to sustainability and demographic change, the protection of democracies and the fight against crime. However, will these issues still be perceived in the same manner to be topical following the advent of the health emergency resulting from the spread of the COVID-19 virus?

 

Artificial Intelligence: definition and status of the EU legislation
As part of the definition of a common strategy for the digital single market, the European Union began to take a more active interest in Artificial Intelligence (AI) in 2017, when the European Council recognized the issue as urgent and rapidly evolving, inviting the European Commission to lay the foundations for a common legislation. According to the Council, it was necessary to approach AI in a uniform manner throughout the Union „while ensuring a high level of data protection, digital rights and ethical standards [2]“.
Hence, the Commission responded to the Council’s invitation and on April 25, 2018 [3] published a Communication to the other European institutions concerned in which it made public the IA strategy that would lead to an exponential increase in the Union’s resources allocated to the development of IA projects (almost 2.5 billion euro between 2018 and 2020, in addition to private investment and an economic support plan for the decade 2020-2030), also with a view to making IA-based technologies as accessible as possible to citizens and businesses. This initiative is clearly aimed at competing with other powers on the globe (USA, China, Japan and Canada) in the technology race to exploit the opportunities offered by the „home“ development of AI.
In short, the European industry “cannot miss the train”, borrowing the Commission’s words. This was reiterated by the Commission itself in its subsequent Communication of December 7, 2018 in which it set out its coordinated plan on IA [4].
Setting this apart, the Commission’s Communication of April 25, 2018 contains a (although imprecise) definition of AI, which was absent until then in the legislative texts of the Union. Scholars and technicians have provided partially different definitions over the years, but no agreement was reached on one specific definition [5]. In the Communication, the Commission defined IA as „systems that show intelligent behaviour by analysing their environment and taking actions, with a certain degree of autonomy, to achieve specific objectives [6]“. This definition was then further elaborated by the so-called Independent High Level Expert Group on Artificial Intelligence [7] which, in its report „Ethical Guidelines for Reliable AI“, specified the notion of artificial intelligence as follows: „Software systems (and possibly hardware) designed by humans that, given a complex objective, act in the physical or digital dimension by perceiving their environment through data acquisition, interpreting the structured or unstructured data collected, reasoning on knowledge or processing the information derived from this data and deciding the best actions to be taken to achieve the given objective“. To this definition it was added that „AI systems can use symbolic rules or learn a numerical model, and can also adapt their behavior by analyzing the effects that their previous actions have had on the environment“.

White Paper on IA, pillars to promote common regulation
It is clear that the adoption of a common regulation desired by the Council in 2017 on AI has been abruptly accelerated by the publication of the White Paper on AI by the Commission on last February 19th. The public consultation launched by the Commission will expire on May 19, 2020, date in which proposals and comments on how to further boost AI research and development, improve the development of AI knowledge by European small and medium-sized enterprises and provide the essential elements for a legislative framework on AI can be received by the Commission itself. In the Commission’s view, AI systems can help the Union to address current social challenges such as the fight against climate change, challenges related to sustainability and demographic change, the protection of democracies and the fight against crime. All this without neglecting respect for fundamental human rights, such as human dignity and the protection of individuals‘ privacy.
The Commission therefore intends to approach the AI issue through common legislation based on the development of the European economy by exploiting the large amount of data available through “trustworthy” AI systems that can guarantee fundamental human rights. The economic system of “excellence” that the Commission intends to develop is based on rationalization of research, on the promotion of collaboration between Member States (as well as between the public and private sectors), increasing investment in the development and dissemination of AI.
In order to make IA systems “reliable”, the Commission has confirmed the Group of Experts’ view that any development of “reliable” IA cannot be without ensuring the following seven key pillars:
(i) human contribution and supervision; (ii) technical soundness and security; (iii) privacy and data governance; (iv) transparency; (v) diversity, non-discrimination and fairness; (vi) social and environmental well-being; (vii) accountability.
This is obviously to prevent the development of AI-based systems from having distorting effects. Indeed, the Commission is well aware that AI systems, through the automation of activities that were previously the exclusive competence of humans, may threaten the privacy of citizens, infringe their right of expression, the principle of non-discrimination and the self-realization of individuals (just to mention some of the risks).
However, the fact that AI systems are able to process an immense amount of data through automated algorithmic processes (predetermined by humans) can be a valuable help to counter the spread of the COVID-19 virus in the current health emergency situation, leading individual Member States to „run alone“ on the issue of the medical emergency.

Medical AI systems – COVID – 19 case
It is no surprise that, in the medical field, the most advanced diagnostic systems are able to process by themselves and in real time a myriad of data from the Internet, public administrations and other networked health facilities on their own. This has been happening for a long time in this area, so much so that it is common to talk about the Internet of Medical Things [8]. Obviously there are many ethical problems underlying the use of AI in the medical field both as reliability of the data processed (acquiring patient data from the Internet or other databases if not sufficiently validated could lead to incorrect diagnoses) and as objectives pursued (AI could pursue unethical objectives such as driving towards medical practices that meet administrative objectives but not the real quality of care) [9].
The White Paper sets the whole health care sector as an example for a high-risk area that should be taken into account in any future regulation.
In the situation now described, the health emergency resulting from the COVID – 19 infection, which – with a shocking effect – brought to light two crucial issues: the first concerns the new balance between the medical field and fundamental rights in the emergency health context, while the second concerns the real possibility of continuing, and how, with collaboration between Member States in the European context.
In clear contrast to the indications of principle set out in the White Paper, in fact, in the current health emergency to combat COVID-19 there is a progressive complication of the ways of balancing the pillars of ethics and the protection of fundamental human rights with the objectives of protecting the right to health, precisely in that high-risk field identified in the White Paper. This could mean, on the one hand, that the path of regulation based on ethical principles indicated by the Commission will be subject to harsh criticism for failing to take account of what was already happening in the medical field in relation to AI. In particular, the Commission makes no mention of the necessary balance between fundamental human rights (such as privacy) and the necessary applicability of AI systems, which necessarily have to sacrifice citizens‘ privacy in order to protect public health. On the other hand, we are already seeing clear positions taken by individual Member States in favor of the applicability of AI in the medical field, with the consequent sacrifice of fundamental human rights as set out in the White Paper, such as privacy.
To confirm this, see the discussion underway in Italy where, among other mandatory measures to be taken, the possibility of using a smartphone application capable of tracking citizens‘ movements to stop the COVID-19 epidemic is being considered. Obviously, the privacy’s breach connected to the use of the aforementioned application is clear. Even more clear is the use of AI capable of processing the data received by providing a diagnosis in a short time to contain and fight the pandemic without citizens being able (perhaps) to oppose the tracking of their personal and medical data. In addition to the tracking via smartphone application, the Ministry of Technological Innovation and Digitization, the Ministry of Economic Development and the Ministry of University and Research have published an invitation to research centers and innovative companies to provide a contribution in the field of devices for prevention, diagnostics and monitoring to contain and combat the spread of the COVID-19 virus (including the possible use of a monitoring smartphone application) [10]. On this point, the approach of Antonello Soro, President of the Guarantor for the protection of personal data, appears wavering. On the one hand, in the first days of the emergency, he was in favor of using the app in question if such a system of data collection and processing, even if invasive, is in any case aimed at the general interest of health protection [11]. On the other hand, recently, the Guarantor has expressed an opinion that would appear to be different, arguing that the use of apps of this type can only take place on a voluntary basis. Now, it would seem appropriate to approach the issue from a holistic perspective, asking whether or not the health emergency justifies the compression of fundamental rights. If this is the case (and it seems that Italian constitutionalists have expressed themselves in this sense), the compression of the right to privacy is no different from that of the right to freedom of movement, of association, and of work that citizens have already been suffering for several weeks, for the – at least allegedly – superior good of public health. It is obvious that the compression can only be justified to the extent that the health emergency actually exists, and that the two opposing demands must be constantly balanced, also from an evolutionary point of view. When the threat is greatest, more invasive measures can be justified; when the threat is least, these measures can become illegitimate. It is equally obvious that it will be necessary to ensure adequate control of the choices that in these days are made by governments, regional governors, other administrative authorities, with little or no involvement of Parliament and in the paralysis of the judicial system. Both these aspects must be rapidly restored, on pain of upsetting the fundamental characteristics of our society. It will be interesting to see what decisions will be taken by Italy and the other EU Member States. In fact, it is to be expected that the latter will undertake their own paths to implement AI systems in the medical field to counter the spread of COVID-19.
And here comes to light the second issue mentioned above, namely the disruptive effect that the COVID – 19 emergency is having on all the structures and principles of the European Union. Member States soon suspended some of these principles, first of all that of free movement of people and goods, blocking borders, deliveries of goods considered essential, and sometimes seizing such goods in transit to supply their own facilities. Also in the field of IA and apps for health control it is foreseeable that each Member State will move autonomously, with good peace of mind of the initiatives undertaken by the Community bodies, and highlighting how the whole system must now be rethought.
A fundamental question therefore remains to be asked: will the fundamental pillars – also in terms of AI – developed by the European Union stand up to the challenge of the health emergency that has upset Europe?

Footnotes:
[1] Full text available at https://ec.europa.eu/info/sites/info/files/commission-white-paper-artificial-intelligence-feb2020_en.pdf.
[2] Council document EUCO 14/17 CO EUR 17 CONCL 5 of 19 October 2017, full text available at https://www.consilium.europa.eu/media/21608/19-euco-final-conclusions-it.pdf
[3] COM (2018) 237 of 25 April 2018, Communication from the European Commission „Artificial intelligence for Europe“ full text available at https://ec.europa.eu/transparency/regdoc/rep/1/2018/EN/COM-2018-237-F1-EN-MAIN-PART-1.PDF.
[4] COM (2018) 795 final December 7, 2018, Communication for Coordinated Plan on Artificial Intelligence available at the link https://ec.europa.eu/knowledge4policy/publication/coordinated-plan-artificial-intelligence-com2018-795-final_en.
[5] For further details see LAVAGNINI, Intelligenza artificiale e proprietà intellettuale: proteggibilità delle opere e titolarità dei diritti in Il diritto d’autore 2018, fasc. 3, 360 ss
[6] The Commission also specified that AI-based systems can „only consist of software that acts in the virtual world (e.g. voice assistants, image analysis software, search engines, voice and facial recognition systems), or incorporate AI into hardware devices (e.g. advanced robots, self-driven cars, drones or Internet of things applications)“.
[7] The High Level Expert Group on Artificial Intelligence is independent and was set up by the Commission in June 2018 and made its opinion public in April 2019, available at https://ec.europa.eu/digital-single-market/en/news/ethics-guidelines-trustworthy-ai.
[8] On this point see https://www.europeanpharmaceuticalreview.com/article/47692/imot-healthcare/.
[9] For an examination of the advantages and risks see Musacchio, Guaita, Ozzello, Pellegrini, Ponzani, Zilich, A. De Micheli, Intelligenza Artificiale e Big Data in ambito medico: prospettive, opportunità, criticità, AMD Journal, ISSN 2036-363X (print) vol. 21-3.
[10] The project called “Innova per l’Italia” is published on the website of the Ministry for Technological Innovation and Digitization at https://innovazione.gov.it/innova-per-l-Italia-la-tecnologia-e-l-innovazione-in-campo-contro-l-emergenza-covid-19/.
[11] On this point see www.garanteprivacy.it/web/guest/home/docweb/-/docweb-display/docweb/9298389.

Alessandro Bura, Tankred Thiem


COVID-19: THE ADOPTION OF EMERGENCY MEASURES BY INDUSTRIAL AND INTELLECTUAL PROPERTY OFFICES

06/04/2020

As a consequence of the pandemic outbreak of COVID-19 infection, most Intellectual and Industrial Property Offices adopted emergency measures to ensure the continual provision of their services and also to safeguard the citizens of the many countries affected by restrictive measures and the interruption of regular work activities.

 

UIBM
The Decree-Law no. 18 of March 17, 2020 extended the scope and duration of the suspension already ordered by the Director Decree of March 11, 2020, providing for the suspension of all the deadlines relating to administrative proceedings before the Italian Patent and Trademark Office for the period between February 23 and April 15, 2020. The deadlines will revive from April 16, 2020 for their remaining time.
The mandatory deadlines pursuant to art. 176, par. 1, of the Italian Code of Industrial Property concerning opposition proceedings are also subject to suspension, while the deadlines relating to proceedings before the Board of Appeal – by reason of their judicial nature – remain unaffected by the suspension.

EUIPO
With Decision of the Executive Director EUIPO no. EX 20/3 of March 16, 2020, the deadlines between March 9 and April 30, 2020 are automatically extended to May 1st, 2020. In view of the holiday of the first of May, all deadlines have been actually postponed to May 4, 2020.
Subject of the extension, the time-limits relating to any proceedings pending before the EUIPO – including proceedings before the Boards of Appeal – and, among others, the time-limits relating to the payment of official fees, priority claims, deferment of publication of designs, conversion of applications.
However, the deadline for filing an appeal before the EU General Court against a decision of the Boards of Appeal will not be deferred, as the postponement measures are not extendable to proceedings under the jurisdiction of other different authorities.

EPO
With a note of March 15, 2020 published in the Official Journal of the EPO of March 2020, the deadlines set from March 15, 2020 onwards are automatically extended to April 17, 2020.
The extension is also applied to international patent applications (PCT) and to deadlines for the payment of official fees, including patent renewal fees.
The Office has also decided to postpone until further notice all the oral proceedings scheduled until April 17, 2020 before the Examining division and the Opposition division, unless it has been ordered to conduct them by videoconference.
Oral proceedings scheduled until 30 April 2020 before the Boards of Appeal are also postponed until further notice.
With regard to deadlines expired before 15 March 2020, in the event of failure to comply with a deadline by subjects located in virus-affected areas, any document received after the expiry of the deadline shall be deemed timely submitted after demonstrating the impossibility of complying with the deadline due to exceptional events that occurred during any of the ten days prior to the day of expiry of the deadline, given that the document was sent no later than the fifth day after the end of the disruption.

WIPO
The World Intellectual Property Organization ensures the regular provision of its services, without any deferment of the time limits prescribed by the Patent Cooperation Treaty (PCT), the Madrid System for the International Registration of Trademarks and the Hague System for the International Registration of Industrial Designs.
Due to the suspension of postal services in several contracting countries, the International Bureau has temporarily suspended the dispatch and receipt of communications by postal mail. Until further notice, the Office may only submit and receive communications by e-mail.
In the event that the unavailability of postal services or electronic means of communication leads to the failure to comply with a prescribed time limit, providing adequate evidence supporting such unavailability, the document sent shall be deemed timely submitted if it is received within five days after regaining access to the mail or to the electronic means of communication. However, the Office must receive the document within six months of the expiry of the time limit in question.

References
WIPO communication of March 20, 2020;
Decree-Law of March 17, 2020, no. 18, on the “Measures to reinforce the National Health Service and provide economic support for families, workers and businesses related to the COVID-19 epidemiological emergency”;
Decision of the Executive Director EUIPO no. EX 20/3 of March 16, 2020, concerning the extension of time limits;
EPO note of March 15, 2020 published in the Official Journal of the EPO of March 2020, concerning the disruptions due to the COVID-19 outbreak.

Alessia Asaro


PROCESSING OF PERSONAL DATA IN THE CONTEXT OF COMBATTING COVID-19: THE STATEMENTS ADOPTED BY THE EUROPEAN DATA PROTECTION BOARD AND THE EUROPEAN DATA PROTECTION SUPERVISOR ON 16th AND 20th MARCH 2020.

23/03/2020

On 16th March 2020, the European Data Protection Board underlined that the data controller and processor must ensure the protection of the personal data even in these exceptional times. Nevertheless, the protection of personal data is a controversial issue due to the increasing demand from public authorities and private entities for tighter surveillance measures.

 

Governments, public and private organizations throughout Europe are taking measures to contain and mitigate the effects of COVID-19. This can involve the processing of different types of personal data. There is no doubt that an effective epidemic management is also based on the collection and analysis of health data (and not only). However, such measures may raise privacy concerns both under the European Data Protection Regulation (hereinafter: GDPR) and under national legislation. Furthermore, these measures are part of a wider context of strong limitation of fundamental rights of the individual, ranging from the freedom of movement, to social rights, to the right of pursuing its own economic activity and thus be able to support oneself and one’s family. Said limitations have not given rise to many critical voices. On the contrary, it has been argued that these measures are compatible with our Constitution, since the right to health would prevail over all other rights that are temporarily compressed, with the only exception of the rights of regarding the respect for the dignity of human beings and the prohibition of unfair discriminatory measures. Also the right to privacy should therefore be considered within a balance of interests: it has to be asked whether it is preferable to have a general stop of all activities, with citizens confined to their homes, or rather a contagion control system that allows movement wherever possible, also using the most advanced technology, and using privacy regulations as a tool to ensure that the control mechanisms are adequate, proportional and strictly limited to the minimum necessary. To do this, it is also necessary to restore the efficiency of the judicial system, which is the only safeguard against abuse, as soon as possible. Clearly, in circumstances in which the courts are paralyzed, no kind of limitations, whatever they may be (including privacy limitation) can give citizens confidence regarding the respect of their rights.

Effective measures to reduce the spread of covid-19 vs fundamental rights
The balance between effective measures against Covid-19 and the respect of fundamental rights – including the right to privacy – is of key importance, also considering that an important role to reduce the spread of the virus will be played by technology. Indeed, some countries are managing the current pandemic through massive use of apps and software with more or less invasive privacy implications. For example, the app that informs of the presence of infected people within 100 meters of the user’s location; or rather, the app that tracks the movements of infected people in order to reconstruct their entire network of contacts and illustrate their movements. Nowadays, in the name of the emergency and fight against the virus, control proposals have been made, which are exceptional compared to our traditional system of shared values and legal principles. These proposals for the massive digital tracking of citizens are based on the idea that increased surveillance can lead to a more effective fight against the virus. In this context, the European legislation on the protection of personal data has been criticized as considered to be an obstacle to the adoption of measures that could reduce the spread of the virus.
In this regard, on 16th March 2020, the European Data Protection Board (hereinafter: EDPB) published a statement in which, besides specifying that the GDPR rules do not hinder measures taken in the fight against the coronavirus pandemic, it reiterates the importance of protecting personal data even in an emergency context. In this regard, Andrea Jelinek, Chair of the EDPB, stressed that “Data protection rules (such as GDPR) do not hinder measures taken in the fight against the coronavirus pandemic. However, I would like to underline that, even in these exceptional times, the data controller must ensure the protection of the personal data of the data subjects. Therefore, a number of considerations should be taken into account to guarantee the lawful processing of personal data.”
(the full statement is available here:
https://edpb.europa.eu/news/news/2020/statement-edpb-chair-processing-personal-data-context-covid-19-outbreak). The same content was highlighted in the statement of 19th March in which the EDPB specified the requirements of a lawful processing of personal data in the current emergency context (https://edpb.europa.eu/sites/edpb/files/files/file1/edpb_statement_2020_processingpersonaldataandcovid-19_en.pdf).

Processing of personal data in the European legislative framework
The EDPB statement recalls the provisions of the GDPR which indicate the specific cases in which the processing of personal data is allowed. In particular:
– Article 6 of the GDPR, which allows the processing of personal data without the consent of the data controller when it is necessary in order to protect the vital interest of the data subject or of another natural person, or when it is necessary for the performance of a task carried out in the public interest or in the exercise of official authority vested in the controller;
– Article 9 of the GDPR, which allows the processing of particular categories of personal data, such as health information, without the consent of the data subject, for reasons of public interest in the area of public health, such as protecting against serious cross-border threats to health.
On the other hand, with regard to the processing of telecom data, such as location data, Directive 2002/58/EC (the so-called ePrivacy Directive) is mentioned, which allows the use of an individual’s location data only if made anonymous or with the consent of the data subject. The EDPB stressed that under Article 15 of that directive, Member States may adopt legislative provisions restricting the rights and obligations contained in the directive if such restriction constitutes a necessary, appropriate and proportionate measure to safeguard national security and public safety.

Conclusions
The effective protection of personal data in the context of the measures taken by Member States to fight against COVID-19 appears to be confused and fragmented: some countries have adopted a more permissive approach to controls (i.e. Denmark, Ireland, Poland, Spain), others more restrictive (i.e. France, Luxembourg, the Netherlands, Belgium).
The EDPB’s recent statement recalls European privacy legislation in a context where citizens cannot effectively exercise their rights due to the lockdown of entire countries. The very rule quoted by the EDPB to protect telecommunication data (i.e. Article 15 ePrivacy Directive) specifies that in the exceptional cases described above, the Member State is obliged to put in place adequate safeguards, such as guaranteeing individuals the right and access to judicial remedy. But is access to justice really guaranteed in this emergency context? Or rather Article 15 of the ePrivacy Directive will be applied without the necessary safeguards?
A more decisive statement from the EDPB would have been necessary, reminding the Member States of the importance of not ignoring the application of the essential principles of privacy, even in an emergency context like the present one. In this regard, the recent statement by the Italian data protection Supervisor (hereinafter: IDPS) of last 2nd March is noteworthy. The IDPS affirmed that autonomous initiatives concerning the collection of health data of users and workers that have not been provided by the law or ordered by the competent bodies are not allowed (the full statement of the Italian data protection Supervisor is available here: https://www.garanteprivacy.it/home/docweb/-/docweb-display/docweb/9282117).
A clear declaration supporting fundamental rights has not been adopted either by the European Data Protection Supervisor (hereinafter: EDPS). In its statement of last 20th March, the EDPS indicated COVID-19 as the game changer of the current context. Indeed, the EDPS has announced a new strategy for the next five years that will include a review of the current EDPS strategy: „We will all be confronted with this game changer in one way or another. And we will all ask ourselves whether we are ready to sacrifice our fundamental rights in order to feel better and to be more secure“(https://edps.europa.eu/press-publications/press-news/blog/moment-you-realise-world-has-changed-re-thinking-edps-strategy_en).

Simona Lavagnini, Camilla Macrì


ROGER FEDERER TAKES “HIS” RF LOGO BACK

17/03/2020

A few days ago the news that the worldwide famous trademark „RF“, acronym of the initials of the world tennis star Roger Federer, has been sold by Nike, original owner of the trademark and its rights of exploitation, to Tenro AG, a company directly controlled by the Swiss champion that manages the portfolio of IP assets attributable to him.

 


The background.
The sign in question, which as seen reproduces in stylized characters the initials of the Swiss tennis player, was created in 2008 by the sportswear giant Nike, to which Federer has been linked by a sponsorship contract that dates back to 1994. The logo has therefore been registered as a trademark in the most diverse countries of the world, including Italy (trademark no. 302008901644561), the European Union (trademark no. 6819395) and the United States (trademark no. 3745413). But by whom? Although the trademark was used (and in fact usable) only in connection with the sport activity carried out by Federer, the subject requesting the trademarks – and the consequent owner of the registrations – was not Federer but its sponsor, Nike. The „RF“ brand has in a very short timeframe acquired planetary success (rectius, reputation) becoming one of the most recognizable and distinctive signs in the world of tennis and sports in general and reaching a market value of 27 million dollars according to the American magazine Forbes.
The Federer-Nike-RF triangulation continued with success until, in Summer 2018, the divorce between the American sport apparel giant and the Swiss athlete was announced following the termination of the Nike-Federer sponsorship contract and the transfer of the latter towards the Japanese company Uniqlo, with which Federer signed a new partnership that will bring him the beauty of $300 million over the next ten years.
The change of sponsorship made it immediately arise the following concern in tennis fans and IP legal experts: what will happen to the RF logo? On the one hand, in fact, the rights of exploitation of the trademarks concerning the sign remained the exclusive property of Nike, the only subject that could legitimately decide the times and means of use of the trademarks: consequently, any possible use by Federer of the logo or of another sign similar to it would have determined an infringement of Nike’s trademarks. On the other hand, the logo was (and indeed is) closely linked to the person of Roger Federer and his sports performances, in fact reducing (if not totally eliminating) Nike’s interest in using the trademark after the termination of the relationship with the athlete. A possible use of the trademarks in the absence of Federer’s consent, or in any case dissociated from his sports figure, would also have raised serious profiles of deceptiveness of the trademark itself, with the risk of seeing the famous trademark declared invalid under (with regard to EU) Art. 58/2 EU Reg. 2017/1001. In addition to the above, Federer himself never hid to jealously observe that „this is something very important to me, and to my fans in particular. They are my initials. They are mine“.

The assignment.
The result of such an impasse was the cease of any use of the brand for almost two years (except for footwear worn by Federer in tournaments, for which a separate sponsorship contract continued to be in force). Until when, in February 2020, the involved parties managed to find a shared out-of-court solution – the economic details of which have not yet been revealed – which led to the assignment of the renown brand from Nike to the already mentioned company controlled by Federer (note, no longer to the current technical sponsor Uniqlo): the transfer already results in the databases of some trademark offices, such as the U.S. and Chinese ones (see https://www.tmdn.org/tmview/welcome.html?lang=it#) and within a few days it will probably be formalized with regard to the other relevant territories, too. Only time will tell how the new owner Roger Federer will decide to use his trademarks. In the meantime, fans can get back to quivering.

Giorgio Rapaccini