Transcript Folie 1

CUMULATION OF IP RIGHTS PERTAINING TO 3D ITEMS
– AN “ILLEGITIMATE OFFSPRING“ OF IPR?
Annette Kur, MPI Munich
© A. Kur
INTRODUCTION:
THE PROBLEM
• In most (European) countries, the appearance of 3D
objects, whether functional or aesthetic, can be
protected by design, copyright, trademark and/or unfair
competition law
• Protection can be simultaneous or subsequent
• In case of conflict with competing products, the
rightholder will be able to rely on the “strongest“ of the
accumulated rights (for instance, the right with the
longest duration, after other rights have lapsed)
• The situation may pose problems
– for undistorted competition
– under general systematic aspects
© A. Kur
INTRODUCTION:
THE ANSWER ?
• Cumulation of rights does not pose a problem per se.
Neither competition nor the general structure of IPR are
negatively affected as long as
– the requirements for protection under the different
legal regimes are formulated and applied so as to
fully justify the protection granted, and
– each one of the rights applied is adequately
balanced in itself, in particular as regards the
relationship be between the general scope of
protection and the limitations
• It follows e contrario that cumulation can operate as a
“magnifying glass“, enhancing the visibility of
imbalances which otherwise might remain undetected
© A. Kur
CASE STUDY I:
SUBSEQUENT APPLICATION OF DIFFERENT PROTECTION
REGIMES
(UCD/TRADEMARK/UNFAIR COMPETITION)
• The European Court of Justice (ECJ) has taken a
rather critical stand towards trademark protection of 3D
items
• In consequence of that jurisprudence, such signs must,
as a matter of principle, aquire distinctiveness through
use (“secondary meaning“) before they are registered
• During the early phase of marketing, such items may
however rely on UCD (Unregistered Community
Design) protection, if they are new and have individual
character
• UCD protection lapses after 3 years, but during that
time, sufficient distinctiveness may have been
acquired, so that the item can readily be registered as a
mark
© A. Kur
CASE STUDY I:
SUBSEQUENT APPLICATION OF DIFFERENT PROTECTION
REGIMES
(UCD/TRADEMARK/UNFAIR COMPETITION
• To cumulate UCD and trademark protection in the
manner indicated above might contradict the ECJ‘s
cautious approach towards initial protection of 3D items
under trademark law
• It would be problematic indeed if the requirements for
both UCD protection and trademark registration on the
basis of acquired distinctiveness were set too low, so
that practically any 3D item except for the most banal
product design would benefit from consecutive
protection
• Reservations are even stronger when
– after the lapse of UCD protection and
– absent trademark protection
protection is granted on the basis of unfair competition
statutes
© A. Kur
CASE STUDY I:
SUBSEQUENT APPLICATION OF DIFFERENT PROTECTION
REGIMES
(UCD/TRADEMARK/UNFAIR COMPETITION
• Practical example: German Fed. Supreme Court,
•
15.9.2005 – Jeans
Protection against imitation of the “distinguishing
elements“ of the garment was granted on the basis of
unfair competition, after UCD protection had lapsed.
© A. Kur
CASE STUDY I:
SUBSEQUENT APPLICATION OF DIFFERENT PROTECTION
REGIMES
(UCD/TRADEMARK/UNFAIR COMPETITION
• In the “Jeans“ case, the Federal Supreme Court
refused to refer the issue to the ECJ for a preliminary
ruling
• Argument: European design legislation does not bar
subsequent unfair competition protection founded on
aspects which differ from the grounds on which design
protection was based
• Irrespective of that, Art. 28 EC („free movement of
goods“) might come into play if imports were hindered
from other EU member states
• The crucial question in that situation would be whether
to prohibition of imports is necessary for protection
against dishonest practices (unlikely e.g. if competitor
emphasizes the divergent commercial origin by
attaching a different label).
© A. Kur
CASE STUDY II:
SIMULTANEOUS PROTECTION FOR SPARE PARTS
UNDER DESIGN/TRADEMARK/COPYRIGHT LAW
• European design legislation does not incorporate a
harmonized rule on protection for spare parts
• Several member states have introduced a „repairs
clause“ allowing reproduction of protected parts
for repair purposes
• A Commission proposal for a repairs clause is
pending
• In anticipation of such developments, car
manufacturers try to secure trademark protection
for individual spare parts
• In some countries (in particular: France) spare
parts are even protected by copyright
• Problem: Is it possible to circumvent the repairs
clause by relying on cumulative trademark or
copyright protection?
© A. Kur
CASE STUDY II:
SIMULTANEOUS PROTECTION FOR SPARE PARTS
UNDER DESIGN/TRADEMARK/COPYRIGHT LAW
• By contrast to designs (which are not examined as
to their substance in nearly all European
countries), the distinctive character of spare parts
will be examined ex officio before they are
registered as marks
• As a matter of principle, only few parts will pass
that test
• For those (few) parts which are found to be eligible
for trademark protection, the crucial questions in a
conflict situation will be whether
– the part is used “as a mark“ by the alleged
infringer
– The use is admissible on the basis of Art. 6. lit. b
TMD (= use in order to indicate the purpose of a
product)
© A. Kur
CASE STUDY II:
SIMULTANEOUS PROTECTION FOR SPARE PARTS
UNDER DESIGN/TRADEMARK/COPYRIGHT LAW
•
•
•
•
In case of copyright protection being granted to spare
parts, the situation would be more difficult
The issue would come to the fore if a repairs clause were
to be introduced in all member states on the basis of the
Commission proposal, but some countries like e.g.
France would still prohibit the commercialising of parts
in their own territory on the basis of copyright
As a matter of principle, the right to prohibit any form of
reproduction is part of the specific subject matter of
copyright, which overrides the rule on free movement of
goods, Art. 28, 30 EC
However, the ECJ has demonstrated in the Dior/Evora
judgment (C-337/95) that copyright protection may have
to be curtailed where it hinders the commercialising of
products which are legal as such, and where a specific,
additional justification for cumulative copyright
protection is lacking
© A. Kur
CONCLUDING REMARKS
• The examples have shown that although
cumulation does not present a danger per se,
legislatures and courts must remain wary about
such situations
• In particular, the respective thresholds for
protection should not be lowered so that they
become indistinguishable from one another (e.g. in
the sense that no more is required under design,
trademark and copyright law than that the item for
which protection is sought is not “banal“)
• In addition, some general corrective principle may
be needed in order to counterbalance overprotective effects of cumulation
• In the European context, that role is played inter
alia by the principle of free movement of goods.
© A. Kur