EU%20Commercial%20Law%202011%20III.%20A.%20Protecting%20IPR%20(patents,%20trademarks%20and%20designs)%20in%20the%20EU

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EU Commercial Law 2011III. A. Protecting IPR
(patents, trademarks and designs) in the EU

• Professor Jens Schovsbo

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Overview

1. Introduction to IPR and the EU
2. Trade Marks
3. Designs
4. Patents
5. Summing Up

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What are IPRs (for the present purposes)?

• Exclusive rights to
• Trademarks
• Any signs capable of distinguishing the goods or
  services of one undertaking from those of other
  undertakings
• Designs
• The appearance of the whole or a part of a
  product
• Patents
• Any inventions, in all fields of technology,
  which are new, involve an inventive step and are
  susceptible of industrial application

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Why do we have IPR?

• Information is a special commodity (public
  good) which is
• non-rivalrous and
• non-excludable
• These qualities make it risky for companies to
  invest in the production of information (because
  of free riders)
• IPRs incentivize companies by creating property
  rights in information. This leads to innovation
• Trade marks also benefit society by furthering
  undistorted competition and reducing consumers
  search costs

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Communication from the Commission to the European
Parliament, the Council and the European Economic
and Social Committee - An Industrial Property
Rights Strategy for Europe (2008)

• A clear regime for intellectual property rights
  is an essential condition for the single market
  and in making the "fifth freedom", the free
  movement of knowledge, a reality.

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Protecting IPR in the EU
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Territoriality and sovereignty

• Sovereignty is the exclusive right to exercise,
  within a specific territory, the functions of a
  nation-state and to be answerable to no higher
  authority
• By joining the EU the Members have chosen to
  limit (bundle) their sovereignty
  (supranationality)
• But IPR still follow national frontiers and the
  principle of territoriality still applies
• IPR are issued and exercised according to
  national law
• Respect for national rights
• May potentially prevent intra EU imports and
  exports

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Can IPR form barriers to trade?

• Arts. 34 and 36 Quantitative restrictions on
  trade
• Dassonville Directly or indirectly, potentially
  or actually
• Casis de Dijon Legitimate restrictions
• the protection of industrial and commercial
  property
• Harmonization
• Negative harmonization Identifying cases where
  IPR form barriers to trade and eliminating
  national legislation
• Positive harmonization Streamlining legitimate
  barriers to trade by reregulation

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IPR Directives and Regulations

• Trademarks
• Regulation 40/94 on the Community trade mark
  (CTM)
• Directive 2008/95/EF to approximate the laws of
  the Member States relating to trade marks (first
  Directive in 1989)
• Designs
• Regulation 6/2002 on Community designs (CD)
• Directive 98/71/EC on the legal protection of
  designs
• Patents
• (European Patent Convention (EPC))
• Directive on the legal protection of
  biotechnological inventions
• (Proposal for a Regulation)

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Trade marks Basic features of the EU Trade mark
System (CTM)

• Directive AND Regulation
• National trade mark systems exist in ALL the
  Union countries
• CTM has Unitary Character
• Valid in the European Union as a whole.
  Impossible to limit protection to some Member
  States
• CTMs are enforced by national CTM-courts
• Protection is based on the TM-Regulation

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What signs may constitute a CTM?

• TMR Article 4
• A trade mark may consist of any signs capable of
  being represented graphically, particularly
  words, including personal names, designs,
  letters, numerals, the shape of goods or of their
  packaging, provided that such signs are capable
  of distinguishing the goods or services of one
  undertaking from those of other undertakings.
• Article 7
• 1. The following shall not be registered
• (e) signs which consist exclusively of
• (i) the shape which results from the nature of
  the goods themselves or
• (ii) the shape of goods which is necessary to
  obtain a technical result or
• (iii) the shape which gives substantial value to
  the goods

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Capable of distinguishing

• The distinctive character of a trade mark means
  that the mark in question makes it possible to
  identify the product for which the mark is being
  used as originating from a particular
  undertaking, and thus to distinguish that product
  from those of other undertakings.
• That distinctive character must be assessed,
  first, by reference to the products or services
  in respect of which registration has been applied
  for and, second, by reference to the perception
  of the relevant public.
• In order to assess whether or not a trade mark
  has any distinctive character, the overall
  impression given by it must be considered.
• The competent authority may not carry out an
  examination in the abstract but must of necessity
  undertake its examination by reference to the
  actual situation.

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What are (un)conventional trademarks?
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Obtaining CTM with OHIM

• Community Trade Marks (CTM)
• Registration with OHIM (TMR Art. 6)
• Unitary character
• Covers ALL 27 Member Stats (as a principle CTMs
  can only be registered if the mark could have
  been registered in any Member State as a national
  TM).
• Basic fee EUR 900 (e-filing)

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OHIM

• OHIM is the official trade marks and designs
  registration office of the European Union
• An independent, self-financing, non-profit-making
  European agency
• Based in Alicante in Spain
• Employs around 660 people and has an annual
  income in the region of 200m
• In 2010 it received approx. 100.000 CTM
  applications

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The registration procedure before OHIM (the
Alicante Model)
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Grounds for refusals of an application

• Absolute grounds for refusal (TMR Article 7)
• Including signs which are devoid of any
  distinctive character and purely functional signs
  etc. (Art. 7(e))
• Leads to automatic refusal by OHIM (article 38)
• Relative grounds for refusal (TMR Article 8)
• Including earlier CTM or national marks which are
  identical/confusingly similar to the mark for
  which protection is applied for
• Dealt with after grant by opposition by the
  holder of the earlier mark

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Trade mark exclusivity (CTR Article 9)

• Article 9
• Rights conferred by a Community trade mark
• 1. A Community trade mark shall confer on the
  proprietor exclusive rights therein. The
  proprietor shall be entitled to prevent all third
  parties not having his consent from using in the
  course of trade
• (b) any sign where, because of its identity with,
  or similarity to, the Community trade mark and
  the identity or similarity of the goods or
  services covered by the Community trade mark and
  the sign, there exists a likelihood of confusion
  on the part of the public the likelihood of
  confusion includes the likelihood of association
  between the sign and the trade mark

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Art. 9/ctd.

• 2. The following, inter alia, may be prohibited
  under paragraph 1
• (a) affixing the sign to the goods or to the
  packaging thereof
• (b) offering the goods, putting them on the
  market or stocking them for these purposes under
  that sign, or offering or supplying services
  thereunder
• (c) importing or exporting the goods under that
  sign
• (d) using the sign on business papers and in
  advertising.

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Designs Basic features of the EU Design System
(CD)

• Directive AND Regulation
• Unitary character
• Valid in the European Union as a whole.
  Impossible to limit protection to some Member
  States.
• The design approach
• Registered CDs AND unregistered CDs
• Neutral design definition Functional designs
  (the appearance of a product )
• Exclusions and limitations

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Design and product

• Article 3
• (a) "design" means the appearance of the whole or
  a part of a product resulting from the features
  of, in particular, the lines, contours, colours,
  shape, texture and/or materials of the product
  itself and/or its ornamentation
• (b) "product" means any industrial or handicraft
  item, including inter alia parts intended to be
  assembled into a complex product, packaging,
  get-up, graphic symbols and typographic
  typefaces, but excluding computer programs
• (c) "complex product" means a product which is
  composed of multiple components which can be
  replaced permitting disassembly and re-assembly
  of the product.

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Designs
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Requirements for Design Protection

• DR Article 4 A design shall be protected by a
  community design to the extent that it is new and
  has individual character.
• Commencement and term
• Article 11 Unregistered Community design
• Three years as from the date on which the design
  was first made available to the public within the
  Community.
• Article 12 Registered Community design
• Upon registration by OHIM, a design shall be
  protected ... up to a total term of 25 years from
  the date of filing.

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Design Rights Granted

• Article 19
• A registered Community design shall confer on its
  holder the exclusive right to use it and to
  prevent any third party not having his consent
  from using it.
• 2. An unregistered Community design shall,
  however, confer on its holder the right to
  prevent the acts referred to in paragraph 1 only
  if the contested use results from copying the
  protected design.

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Patenting in EU(rope)

• Basically two ways of acquiring patent rights in
  the EU
• National patents
• Not harmonized by positive EU harmonization
  (except for the directive on Biotec.-inventions)
  but by the EPC (on central issues e.g. regarding
  the patentability criteria and the invalidity
  reasons)
• European (EPC) patents
• The European Patent Convention (EPC)
• Central issue (by the EPO) and national effect in
  the countries selected (designated) by the
  applicant.
• 3. For matters of completeness An international
  application via the Patent Cooperation Treaty
  designating either the EPC or individual EPC
  countries
• The result in all situations is a (number of)
  national patent(s), i.e. patents which have to be
  enforced in the individual countries and which
  may be revoked for individual countries.

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The EPC

• The European Patent Convention (EPC) signed in
  Munich in 1973
• A revised version of the EPC entered into force
  on 13 December 2007 (EPC 2000). The provisions
  of the revised Convention apply unless the
  transitional provisions provide for the
  applicability of the EPC 1973

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EPC Member States (38)
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2. Basic Features of the EPC The European Patent
Organization (and EPO)

• The European Patent Organisation is an
  intergovernmental organisation that was set up on
  7 October 1977 on the basis of the European
  Patent Convention (EPC) signed in Munich in 1973.
  
• It has two bodies
• a) the European Patent Office (EPO), located in
  Munich with a branch in The Hague and sub-offices
  in Berlin and Vienna, and
• b) the Administrative Council
• Applications

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Applying for a European Patent

• The European grant procedure takes about three to
  five years from the date the application is filed
• There are two main stages
• Formalities examination and search report
  preparation
• Substantive examination
• Once the patent has been granted, there may be a
  further procedure
• Opposition proceedings

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EPC and the EU

• The EPC is NOT a part of the EU legal order
• The EPC is not piece of EU-legislation (but a
  Treaty)
• The EPO is not an EU-institution
• As a consequence
• No competence of the EU-institutions relating to
  EPC or European patents
• Notably not the EU Courts (ECJ and CFI)
• No political control via the EU-institutions
• Com. Working Document, April 2009 The activities
  of the Community include the establishment of an
  internal market A patent to which uniform
  protection is given and which produces uniform
  effects throughout the Community should feature
  amongst the legal instruments which undertakings
  have at their disposal.

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European patents and national patents

• Article 2 European patent
• (1) Patents granted under this Convention shall
  be called European patents.
• (2) The European patent shall, in each of the
  Contracting States for which it is granted, have
  the effect of and be subject to the same
  conditions as a national patent granted by that
  State, unless this Convention provides otherwise.
• Article 3 Territorial effect
• The grant of a European patent may be requested
  for one or more of the Contracting States.

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EPC and the national patent systems

• The EPC only centralizes the issuing of patents.
• Enforcement and validity are left to national
  courts.
• As a consequence (from www.epo.org)
• Legal action is always cost intensive.
• First instance litigation in three countries can
  cost over 700,000.
• No unified legal practice and patent laws.
• Cases are processed at different speeds.
• Damages and fees can differ significantly.
• Competence of judges can be problematic when it
  comes to patent rights.

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Current Patent Reforms

• Towards a Unified and Integrated European Patent
  Litigation System?
• Centralized court system (national/regional 1.
  Instances and central Court of Appeal) to deal
  with both infringement and validity of European
  patents and Community patents.
• Towards a Community Patent?
• 1975 Luxembourg Convention on the Community
  patent (failed)
• Proposal for a Council Regulation on the
  Community Patent (2000/2009)
• Parallel to national and European patents
• Reducing Costs
• The London Agreement (May 2008)
• The EPC contracting states undertake to waive,
  entirely or largely, the requirement for
  translations of European patents.

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Overall conclusions

• Companies wanting to do business in the EU need
  to take account of both national and EU rules
• CTM and CD offer easy ways of having pan EU
  protection
• The patent system lacks behind
• The lack of a central IPR court is a major problem

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