Transcript Comparison and overlap between trademark and design rights

Comparison and overlap between
trademark and design rights and the
protection by unfair competition rules
Presentation for IBA Conference,
European Forum
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
Reference texts trademarks and designs
• First Council Directive 89/104/EEC of 21 December
1988 to approximate the laws of the member states
relating to trademarks (Trademark directive - “TMD”)
• Directive 98/71/EC of the European Parliament and of
the Council of 13 October 1998 on the legal
protection of designs (Design directive - “DD”)
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
I.
WHAT KIND OF CREATION IS
PROTECTABLE AS TRADEMARK OR
DESIGN? THE “PHYSICAL
REQUIREMENTS”
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
Trademarks:
Article 2 TMD - Signs of which a trade mark may
consist
A trade mark may consist of any sign 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.
Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
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Capability of graphical representation
Article 2 TMD mentions (not exhaustively!):
• words
• letters
• numerals
• designs
• shape of goods
• packaging
Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
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• Colours? Even if they are abstract? The ECJ says
basically yes (For the conditions of protections see
ECJ C-104/01 “Libertel”)
• Sounds? Yes, if graphic representation is possible
(See for the necessary requirements of graphical
representation of music OHIM 4th BoA R 781/1999
“Roar of a Lion”)
• Smells? Still not, as no unambiguous graphic
representation is possible for the moment but this may
change in the future (See ECJ C-273/00)
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
Design:
Article 1(a) DD
“Design” means 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 and/or materials of the product itself
and/or its ornamentation.
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
• appearance of a product
• corporal relation to the product, solid state of
aggregation
• NO design protection for Music, Sounds and Smells
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
II.
“NON-PHYSICAL“ REQUIREMENTS FOR
PROTECTION
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
Trademark:
beside formal and “physical” requirements,
absolute grounds for refusal have to be examined
• ex officio
• a priori
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
• lack of distinctiveness (Art. 2 second subset, Art.
3(1)(b) TMD)
• descriptiveness (Art. 3 (1)(c) TMD)
• sign consist exclusively of the shape which results
from the nature of the goods or which is necessary
to obtain a technical result or which gives
substantial value to the good (Art 3 (1)(e) TMD)
• contrary to public policy or to morality (Art. 3 (1)(f)
TMD)
• nature as to deceive the public (Art. 3 (1)(g) TMD)
• containing public emblems without authorization
(Art. 3 (1)(h) TMD)
Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
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Design:
ex officio and a priori examination only for
• formal requirements
• physical design requirements
• Contrariety to public policy and morality
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
Reasons for invalidity (a posteriori!)
lack of
• individual character
• novelty
-> design registration is quicker!
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
III.
DISTINCTIVE AND INDIVIDUAL
CHARACTER
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
Individual Character
Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
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Distinctive Character
Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
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Distinctive Character
• enables the consumer to distinguish the goods or
services of one undertaking from those of other
undertakings
• indication of origin
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
Individual Character
• design contains visible and original, non-functional
elements
• indication of origin not necessary
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
Overlap of protection?
• all designs that may be registered trademarks may
also be registered as a design but not vice-versa
-> overlap of between trademark and design protection
regarding appearances of products with distinctive
character
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
IV.
SCOPE OF TRADEMARK AND
DESIGN PROTECTION
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
Trademark:
Article 5 TMD
Rights conferred by a trade mark
1. The registered 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:
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
(a) any sign which is identical with the trade mark in
relation to goods or services which are identical
with those for which the trade mark is registered;
(b) any sign where, because of its identity with, or
similarity to, the trade mark and the identity or
similarity of the goods or services covered by the
trade mark and the sign, there exists a likelihood of
confusion on the part of the public, which includes
the likelihood of association between the sign and
the trade mark.
…..
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
3. The following, inter alia, may be prohibited under
paragraphs l and 2:
(a) affixing the sign to the goods or to the packaging
thereof;
(b) offering the goods, or 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 the sign;
(d) using the sign on business papers and in advertising.
Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
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Design:
Article 9 DD
Scope of protection
1. The scope of the protection conferred by a design
right shall include any design which does not
produce on the informed user a different overall
impression (…)
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
Article 12 DD
Rights conferred by the design right
1. The registration of a 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. The
aforementioned use shall cover, in particular, the
making, offering, putting on the market, importing,
exporting or using of a product in which the design is
incorporated or to which it is applied, or stocking
such a product for those purposes. (….)
Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
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Both rights are….
• exclusive right
• pre-requisites for exclusion by the elder right provided
by Article 5 TMD and Article 9 and 12 DD are very
similar:
• Design: “do not produce a different overall
impression” to the “informed user”
• Trademark “likelihood of confusion” by the “public”
-> big differences?
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
The differences that makes the trademark really
stronger than the design:
• Trademark: basically temporary unlimited protection
• Design: maximum protection period of 25 years
• Trademark: scope of protection may grow according to
use on the market (dynamic right)
• Design: Scope of protection does not depend on use
(static right)
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
V.
PROTECTION BY UNFAIR COMPETITION
RULES
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
Austrian Act against Unfair Competition
Gesetz gegen den unlauteren Wettbewerb – UWG
• Art. 9 UWG protection of distinctive business signs
• Art. 1 UWG “blanket clause”: forbids any commercial
activity infringing morality
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Presentation for IBA Conference
Dr. Jürgen Brandstätter
Auckland, October 28th, 2004
Thank you for your attention!
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