Transcript No Slide Title
Overview of the Industrial Property protection in the EU
• The Community Trade Mark (CTM) System • The Community Design (CD) System
Etienne Sanz de Acedo General Affairs & External Relations Department
1. Overview
The Community Trade Mark (CTM) and Community Design The European Union currently has 450 million inhabitants
What is the Office for Harmonization in the Internal Market?
(OHIM) EU Agency: Decentralised Legal personality Financial autonomy SPAIN Tasks: Community Trade Mark
(in operation since 1 April 1996)
Community Design
(in operation since 1 April 2003)
Alicante
Administrative Board Budget Committee Financial Controller PRESIDENT General Affairs and External Relations Department Information Technologies and Facilities Management Department Administration of Trade Marks and Designs Department Human Resources Department Quality Management Department Designs Department Finance Department Trade Marks Department
There are currently around 650 people working at OHIM Staff are recruited from all 25 Member States of the European Union Nationals of new member states are being recruited specific qualifications All staff are proficient in at least 2 languages of the European Union
2. The Community Trade Mark (CTM) System
The Legal Framework
Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) Amendments to the Community Trade Mark Regulation
What is a Community Trade Mark (CTM)?
A CTM is a sign for identifying and distinguishing goods or services valid across the European Community, registered with the OHIM in accordance with the conditions specified in the
CTMR
.
Which kind of signs may be registered as CTM?
A CTM 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 (Art. 4 CTMR) Namely word marks including letters, numbers or combination of letters, numbers and words; figurative marks, three-dimensional marks; sound marks.
Words and numbers
•CTM 883355 “ Mozart ”
Figurative elements Others
Which kind of signs may not be registered as CTM?
Absolute grounds for refusal (Art 7 CTMR) Relative grounds for refusal (Art 8 CTMR)
Advantages of the Community Trade Mark (CTM) : 1º Unitary nature and protection of exclusive rights
The Community trade mark is unitary in nature , i.e. it is valid everywhere in the European Community, and gives proprietors exclusive rights enabling them to prohibit any third parties from using the sign in their commercial or industrial activities.
2º Simplified formalities and management
-a single application; -a single language of procedure; -a single administrative centre; -a single file to be managed.
Advantages of the Community Trade Mark (CTM) : 3º Reduced costs
Filing a Community trade mark application is not expensive: EURO 975 for three classes of goods and services. The registration fee of EURO 1100 only needs to be paid once no obstacles remain to the trade mark being granted.
4º Option of claiming the seniority of national trade marks
If applicants or proprietors of a Community trade mark already hold a prior identical national trade mark for identical goods and services they may claim the seniority of that mark. This allows them to preserve their prior rights even if they surrender their national trade mark or do not renew it.
Advantages of the Community Trade Mark (CTM) : 5º Right of priority
The filing date accorded to a Community trade mark is recognised as constituting a date of priority for both national and international trade marks.
This applies equally where applicants decide to convert their application or registered Community trade mark into national applications.
6º Obligation of use which is easy to meet
A Community trade mark may be maintained in all the countries of the European Union by using it effectively and genuinely in a single Member State.
Advantages of the Community Trade Mark (CTM) : 7º Broadened legal protection which is accessible to all
Infringement proceedings may be brought before the Community trade mark courts, which are national courts designated by the Member States to have jurisdiction in respect of Community trade marks. Decisions have effect throughout the EU.
8º An extended range of options for exercising rights under the trade mark
The option to transfer and assign Community trade marks is essential for the management of companies. A Community trade mark may be transferred, licensed, right in rem …
Advantages of the Community Trade Mark (CTM) : 9º Community trade marks as prior rights in all the countries of the European Union
Community trade marks constitute prior rights in relation to all subsequent trade marks and other conflicting rights in all Member States.
10º The prospect of enlargement
The enlargement of the European Union by 10 new Member States (1 May 2004) resulted in a European Union of 25 Member States. The Community trade mark therefore is not only a gateway to the existing single market but also to a market in the process of expansion.
Does the CTM prevail over national trade marks?
The CTM system leaves the national trade mark systems of Member States & the Benelux Trade Mark system unaffected. However, earlier national trade marks constitute earlier rights against a CTM, and vice versa.
Where and how to file ?
With the national offices Directly to OHIM
Capacity and entitlement to register a Community Trade Mark (CTM)
•Any person or business entity may apply for a CTM. (new Art. 5) • But for non European applicants, an European representative must be appointed (Art. 88 CTMR) • The appointed representative can be a OHIM professional representative or legal practitioner
The Community Trade Mark Procedure
Filing Formalities examination Absolute grounds examination Search and translation 12 months Publication Opposition (inter partes proceeding) Third parties observations 30 months Registration
Partial and total refusal
PUBLICATION
NOTICE OF OPPOSITION NOTIFICATION TO APPLICANT APPEAL ADMISSIBILITY EXAMINATION
COOLING OFF PERIOD
EXAMINATION AND DECISION ON OPPOSITION, COSTS AND APPLICATION FOR A CTM START OF WRITTEN PROCEDURE (observations from parties, proof of use, etc.)
Rights conferred by a Community Trade
-
Mark
Exclusive
use of the trade mark; -
Prevention
of reproduction or imitation of a trade mark;
Transfer
the trade mark;
Grant licenses
for some of all of the goods or services in part or for the whole of the community;
Oppose/Request the invalidity of
the registration of similar community or national trade marks which could cause confusion to the consumer.
In the whole territory of the European Union
1999 41,242 BREAKDOWN BY APPLICATIONS PER YEAR - Total 411.778
2000 57,324 2001 48,856 2002 45,104 2003 57,637
2004 59,349
70,000 60,000 50,000 40,000 30,000 20,000 10,000 0 1996 1997 1998 1999 2000 2001 2002 2003 2004
US 85,518 DE 58,053 GB 44,821 29.03% 19.70% 15.21% IT 26,259 8.91% ES 25,129 8.53% FR 22,454 5.94% JP 10,080 3.42% NL 9,752 3.31% CH 7,595 2.58% SE 7,378 2.50% DK 5,541 1.88% BE 5,212 1.77% Other 44,590 10.90% NL CH SE JP DK BE Other FR ES IT GB US DE
1
st
May 2004 Enlargement
Legal Implications of enlargement
•
Art 142 (a) CTMR: 3 Rules
• • •
Automatic extension Grandfathering of CTMs Respect of acquired rights in new Member States
Legal Implications of enlargement: Practical Issues
Automatic extension
The main legal consequence for holders of CTMs filed before the date of accession (irrespective of whether they have also already been registered or not) is that their protection will be automatically extended to the territories of the new Member States.
Legal Implications of enlargement: Practical Issues
Grandfathering of CTMs
For examination on absolute grounds and cancellation actions on such grounds, only the situation existing prior to enlargement will be taken into account Absolute grounds for refusal/invalidity which become applicable merely because of accession will not be taken into account (irrespective of when the examination or the cancellation action actually takes place).
Legal Implications of enlargement: Practical Issues
Grandfathering of CTMs
Equally, a CTM filed before enlargement will not be subject to an opposition proceeding (except as explained hereafter) or subject to an invalidity proceeding if it is in conflict with an earlier national right registered, applied for or acquired in a newMember State prior to the date of accession.
Legal Implications of enlargement: Practical Issues
Respect of acquired rights in new Member States
To safeguard the rights of owners of national rights in the new Member States, it was decided that they can prohibit the use of the extended CTMs in the territory covered by the right. The extended CTM would be valid and enforceable in the entire EU, including the new Member State, but not against an earlier conflicting national right. The extended CTM would thus not only not be enforceable against an earlier national right, but the holder of such a right can prohibit the use of the extended CTM in his territory.
3. The Community Design System
The legal framework
•
Council Regulation (EC) nº 6/2002 of 12 December 2001 on Community Designs (OJEC N ° L3 of 5-1-02, p 1)
•
Commission Regulation (EC) nº2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs (OJEC N ° L341 of 17-12-02, p 28)
•
Commission Regulation (EC) nº 2246/2002 of 16 December 2002 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) in respect of the registration of Community designs (OJEC N ° L341 of 17-12-02, p 54)
Entry into Force
•
6 March 2002
•
Administrative Board of O.H.I.M. decided on 18 November 2002: first Filing date 01/04/2003, applications received as from 01/01/2003
What is a design?
“design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the ...
lines colours shape texture contours materials
ornamentation
What is a Product ?
“Product”: any industrial or handicraft item, including inter alia
–
Parts intended to be assembled into a complex product
–
Packaging
–
Get-up
–
Graphic symbols
–
Typographic typefaces Excluded: computer programs
Protection Requirements: Novelty (Art. 5)
• •
If no identical design has been made available to the public
–
before the UCD has first been made available to the public
–
before the filing or priority date of the RCD Designs are deemed to be identical if their features differ only in immaterial details
Protection Requirements: Individual character (Art. 6)
•
If the overall impression produced on the informed user differs from the overall impression of designs made available to the public earlier
•
The degree of freedom of the designer in developing the design will be taken into consideration
Exclusion of protection
• • •
Non visible parts in normal use (Art 4 (2) ) Features of appearance of a product which are solely dictated by the technical function of the design (Art 8 (1) ) Interconnections (Art 8 (2) )
The Community Design : a two tier protection system
•
The Unregistered Community Design (UCD)
•
The Registered Community Design (RCD)
Beginning of protection for UCDs
•
The UCD has been a reality since the 6th of March 2002
•
All new creations disclosed for the first time in the EU since this date are protected by that right throughout the European Union
Beginning of protection for RCDs
•
The RCD has been a reality since the 1st of April 2003
•
Administrative Board of O.H.I.M. decided on 18 November 2002: first Filing date 01/04/2003, applications received as from 01/01/2003
Registered or Unregistered Community Design
Common elements
•
Unitary character (equal effect throughout the Community)
•
Definitions (design, product, complex product)
•
Protection requirements (novelty, individual character)
Registered or Unregistered Community Design
Common elements
•
Exclusion of protection (non visible parts, technical functions, interconnections, against public policy or morality)
Registered or Unregistered Community Design
Differences
• •
Birth of right
– –
RCD
application for registration UCD
making available to the public within the Community Term of protection
–
RCD
5 years renewable 4 times
–
UCD
3 years from disclosure Max. 25 years
Registered or Unregistered Community Design
Differences Rights conferred:
•
(Art 19) RCD - exclusive right to use and prevent: making, offering, putting on the market, importing, exporting, using or stocking for such purposes, products incorporating the design
•
UCD - right to prevent only if use results from copying
Unitary character
(Art 1 (3) )
•
CD has equal effect throughout the EU
•
Registration, transfer, surrender, invalidity, prohibited use always for the entire EU
• • •
Unitary character & enlargement of the EU
New Article 110a CDR Automatic extension of RCD’s and UCD’s (as from 1/5/2004) Grand’fathering of earlier CD’s (invalidity and examination on new grounds)
•
Holder of earlier national rights in new Member States can prohibit use
•
If first disclosure outside EU, no UCD
Weaknesses of the UCD
• • • • •
If first disclosure in non EU country, UCD not available because no grace period Uncertainty as to disclosure and therefore existence of right Problems of proof (date, extent, first disclosure, etc) Right only against “copies” Limited term of 3 years
Advantages of the RCD
• • • • •
A strong right with a unitary character in the entire EU Easy, fast and cheap filing and registration procedure (one language, one application, one fee system; multiple applications, deferred publication) Community exhaustion Grace period (12 months) Long term of protection (up to 25 years)
The Registered Community Design and OHIM
How to obtain a registration of your design at the OHIM
Who can file Any natural or legal person without any restrictions as to nationality or state of incorporation Who has the right
• • •
Right vests in the designer or his successor in title Joint ownership Designs developed by employees
With the national offices Directly to OHIM Where to file ?
Community Design Workflow Mail Room Mail Dispatch Examination Registration Publication Deferment
Examination
(Art 45) Mainly formalities
• • •
elements provided in application priorities professional representative Grounds for non-acceptance
• •
not a design application against public policy and morality
Examination No examination on :
verification of protection requirements relative grounds whether spare part or not whether the applicant is entitled
Multiple Applications
(Art 37) Multiple designs allowed in one application, provided products are in the same class (except ornamentation) Features
–
No upper limit for number of designs
–
Saves costs for applicant
–
In case of multiple classes, invitation to divide
–
Each design included will have its own independent life (deferred or not, invalidity, surrender, renewal, etc …)
A multiple application (class 06)
Not a multiple application
Deferred publication
(Art 50)
• • • • •
To be requested when application is filed Maximum 30 months as from filing or priority date Deferment may be interrupted at any time by the applicant May file a specimen if it is a two dimensional design Except for very limited information, the designs remain secret until holder decides to publish
Publication of a deferred design
Figures
Country of origin 25,0% 21,2% 20,0% 15,0% 10,0% 5,0% 11,8% 9,1% 8,7% 7,0% 5,3% 5,3% 5,1% 5,1% 3,0% 0,0% DE GB NL ES US FR IT DK SE JP
Figures
12,00% Classification 10,00% 9,7% 8,00% 8,7% 7,7% 6,8% 6,8% 5,7% 6,00% 4,4% 4,3% 4,1% 4,1% 3,7% 4,00% 2,00% 0,00% C-9 C-12 C-6 C-7 C-14 C-21 C-2 C-23 C-8 C-11 C-19 Classes
Industries
•
class 09 : Packaging
•
class 12 : Transport or hoisting
•
class 06 : Furnishing
•
class 07 : Household goods
•
class 14 : Recording and communication equipment
Figures
Type of application Multiple 44,79% Single 55,21% average number of designs in a multiple application = 6,15
Some examples of designs already registered by OHIM since 1 April 2003 Source: OHIM’s CD Bulletin
First RCD published 000000013-0001 Casio Computer Company Filed, registered and published on 01/04/2003
000000021-0001 DaimlerChrysler AG Filed, registered and published on 01/04/2003
First RCDs published
Design 393-1, registered for KOIPE CORPORACIÓN, S.L. Design 1128-7, registered for SILHOUETTE International Schmied AG
Design 1029-1, registered for AUTOBAR PACKAGING SPAIN, S.A.
Barbera del Valles Design 989-4, registered for Intel Corporation
Table of Fees Reason for Fee
Registration Publication Deferred Publication Invalidity Application Appeal
Fee
€230 €120 €40 €350 €800
Additional fee (designs 2-10 each)
€115 €60 €20
Additional fee (designs 11+ each)
€50 €30 €10
Examples:
•
Application with immediate publication (1 CD) 350 €
•
Application with deferment publication (1 CD) 270 €