Transcript Trademark in Designright Inforcement in the European Union

Practical Information about Community
Trade Marks and Community Designs
Imogen Fowler, Alicante
Practical Information about Community
Trade Marks and Community Designs
1. Community Trade Marks
– Introduction
– Statistics
– Registering difficult marks
2. Community Designs
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Introduction
Statistics
Registration procedure
Cancellation actions
Community Trade Marks (CTMs)
CTMs - Introduction
Advantages of the CTM:
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One registration for 25 countries in Europe
Automatic extension to new EU member states from 1
May 2004
One application procedure with OHIM - lower costs
(€2,075 total OHIM fees for 3 classes, = €83 per
country)
Only one representative necessary
Use requirement fulfilled by use in 1 or 2 countries
European wide injunction available
Since 1 October 2004, link to Madrid system
CTMs - Introduction
Scope:
CTMs - Statistics
• OHIM has received 396,643 CTM
applications since 1996
• Today, 225,932 registered CTMs
• Countries with most CTM filings: USA
(24%), Germany, UK
• Taiwan 18th, Hong Kong 22nd, China not
in top 30
CTMs - Statistics
Likelihood of obtaining registration
• Out of 58,405 concluded oppositions 76%
were settled and only 24% of oppositions
came to a decision
 Conclusion: High chances of registering
CTMs
CTMs – Registering difficult marks
Allusive or descriptive marks
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Examples: “DOUBLEMINT”, “BE CURLY”
“WHITENING MULTI-ACTION”, “BIOMILD”
OHIM practice has changed
Not enough to show that a mark is not used in
trade
Meaning of the mark must be more than the
mere sum of its parts
Advice: check meaning of a term before filing,
maybe add a logo
CTMs – Registering difficult marks
Slogans
• Examples: “LOOKS LIKE GRASS…FEELS LIKE
GRASS…PLAYS LIKE GRASS”, “REAL
PEOPLE, REAL SOLUTIONS”
• Very difficult to register with OHIM, unless
slogan contains house mark or is particularly
fanciful
• Advice: slogans should contain house mark, be
very fanciful or not be filed (rely on passing off or
unfair competition law)
CTMs – Registering difficult marks
Three dimensional marks
• Examples:
CTMs – Registering difficult marks
Three-dimensional marks
• Almost impossible to register product shapes or
package shape marks with OHIM since ECJ
judgments in Mag and the Washtablet cases
• Only if mark is exceptionally fanciful or acquired
distinctiveness can be proven, registration may
be obtained
• Advice: Shift protection of product and package
shapes to Community Design
Community Designs (CDs)
CDs – Introduction
• Introduction of the CD with Council Regulation
EC 6/2002 of 12 December 2001
• A design is the “appearance” of a product or a
part of it
• Two types of CD: registered and unregistered
CD
• Unitary right with effect throughout the
European Union – now 25 countries
CDs – Introduction
Unregistered CD
• Protection applies automatically to all qualifying
designs disclosed to the public in the EU after 6
March 2002
• Protection lasts for three years
• No formalities required
• Disadvantage: hard to prove, must prove
copying in infringement action
CDs – Introduction
Registered CD
• Protection available for qualifying designs by
application to OHIM in Alicante
• One application = lower costs (OHIM fees €350
per design)
• First filing dates accorded 01 April 2003
• Protection initially granted for five years
• Four renewals are possible giving protection for
up to 25 years
CDs – Introduction
What can be protected with a CD?
• The appearance of a product or part of it
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packaging
get-up
graphic symbols
typographical typefaces
CDs – Introduction
Containers
CDs – Introduction
Product shapes
CDs – Introduction
Logos (class 99)
CDs – Introduction
What cannot be protected with a CD?
• Computer programs
• Non-visible component parts of a complex
product
• Designs dictated by their technical function
• Designs of interconnections (must-fit), except
for modular systems
• Designs contrary to public policy or morality
CDs – Statistics
• OHIM has received 18,778 CD
applications since 1 April 2003 - a total of
72,015 separate design applications
• Countries with most CD filings: Germany
(25%), Italy, USA
• Hong Kong 14th, Taiwan 15th, China not in
top 30
CDs – Statistics
Likelihood of obtaining registration
• Out of 72,015 CD applications, more than
90% are registered as CDs
 Conclusion: Very high chances of
registering CDs
CDs – Registration procedure
Steps:
• Filing of CD application
• OHIM checks formalities (views,
infringement of public morality)
• Registration of design
• Publication of registration
CDs – Registration procedure
CD Applications
• Three types of applications available:
– Applications for one design
– Multiple applications (so long as same
class)
– Applications with deferred publication
(up to 30 months)
CDs – Registration procedure
CD Applications
• Up to seven views of each design
– Can be drawings or photographs,
colour or black and white
– Reference views:
CDs – Registration procedure
Conditions for protection:
1. Novelty
2. Individual Character
 OHIM does not examine these conditions
at the application stage, but only in
cancellation proceedings
CDs – Cancellation actions
Grounds for cancellation:
• Design does not meet requirements of
novelty or individual character
• Owner is not the real owner
• Conflict with an earlier registered design
• Design infringes trade mark or copyright
• Unauthorised use of emblems and flags
CDs – Cancellation actions
Cancellation actions before OHIM:
• Only relate to registered CDs
(unregistered CD actions must be before
the Courts)
• Only 12 to date
• Jurisprudence still developing
• Appeals possible to CFI and ECJ
CDs – Cancellation actions
First cancellation action before OHIM
Spanish design
vs.
Registered CD
CDs – Cancellation actions
Anaesthetic swab case
Spanish design
vs.
Registered CD
CDs – Cancellation actions
OHIM found:
• Degree of designer freedom limited
• Swabs require a stem and a head
• Not identical designs
• CD NOT in conflict with earlier design
Conclusion: Case law developing well
Any questions?
Imogen Fowler
Solicitor
Lovells
Bilbao 1, 5° piso
03001 Alicante
Spain
Tel. +34 96 514 41 05
[email protected]