Introduction to Intellectual Property: Trademarks and Designs PDF

Introduction to Intellectual Property: Trademarks and Designs September 25th, 2024 Índice ▪ Introduction Intellectual Property rights ▪ Trademarks Importance of trademarks Definition...

Introduction to Intellectual Property: Trademarks and Designs September 25th, 2024 Índice ▪ Introduction Intellectual Property rights ▪ Trademarks Importance of trademarks Definition Basic principles Grounds for refusal EU trademark courts ▪ Industrial Designs Importance of Industrial Designs Definition Requirements for protection Unregistered Community Design Practice: Industrial Design or trademarks? 2  INTRODUCTION Intellectual Property Copyright Other IP Trademarks Designs Inventions Plant Varieties Rights Patents Utility model 3  TRADEMARKS 4 TRADEMARKS Importance of trademarks Trademarks started to play an important role with industrialization, and they have since then become a key factor in the modern world of international trade and market-oriented economies. Infinite protection upon renewals (10 years). TRADEMARKS Definition REGULATION (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (“EUTMR”): ▪ Article 4. Signs of which an EU trade mark may consist: “An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other undertakings; and (b)being represented on the Register of European Union trade marks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. 7 TRADEMARKS Definition: Functions IDENTIFIES the goods or services and its GUARANTEES its origin unchanged quality ADVERTISES the Creates an IMAGE for goods or services the goods or services TRADEMARKS Definition: Functions Figurative Three dimensional Audible (sound marks) Words REAL MADRID Nacional Football League AUDI AG TWENTIETH CENTURY FOX FILM Colored TRADEMARKS Definition: Principles Principle of registration: An EU trademark shall be obtained by registration (art. 6 EUTMR); the mere use of it does not generate any rights (unlike the US). Principle of speciality: The protection of an EU trademark is limited to the designated goods and services. Principle of territoriality: Rights are confined to the territory in which the trademark was applied for and registered. 10 TRADEMARKS Definition: Principles ▪ PRINCIPLE OF REGISTRATION A trademark can be protected on the basis of either use or registration: Use may protect a sign in certain countries (such as the United States). But generally, exclusive rights in a trademark arise as a result of valid registration at the national, regional or international trademark office in question. TRADEMARKS Definition: Principles ▪PRINCIPLE OF SPECIALITY Trademarks scope of protection is referred only to those products/services that covers the trademark registration as well as the similar one. Therefore, the rightful titleholder shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign identical with, or similar to, the EU trademark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered (art. 9 EUTMR). TRADEMARKS Definition: Principles The Nice Classification (International Nomenclator), contains an internationally agreed classification for goods and services: TRADEMARKS Definition: Principles ▪ PRINCIPLE OF TERRITORIALITY Protection limited to the territory in which the trademark is duly registered: Spanish trademarks ▪ Spanish Trademark and Patent Office (STPO) ▪ Law 17/2001 on Trademarks ▪ Grants protection in Spain European Union trademarks ▪ European Union Intellectual Property Office (EUIPO) ▪ Regulation 2017/1001 on the European Union trademark ▪ Unitary nature: through one registration the owner of the trademark secures protection in the 27 EU Member States  TRADEMARKS Grounds for refusal Can I register any sign or denomination as a trademark? NO!!!! ▪ ABSOLUT grounds for refusal: are mainly concerned with the nature of the trademark itself (refer to the incapability of trademarks to be distinctive, graphically represented,…) and lead to the absolute invalidity of the trademark. ▪ RELATIVE grounds for refusal: deal with conflicts of an applied-for trademark with earlier trademarks and earlier rights and lead to the relative invalidity of the trademark. TRADEMARKS Absolut grounds for refusal (art. 7 EUTMR) The following signs shall not be registered... Non-distinctive Descriptive Customary Shape which results from the nature of the goods or which is necessary to obtain a technical result Contrary to public policy or to accepted principles of morality Deceptive In conflict with flags and other symbols... TRADEMARKS Absolut grounds for refusal (art. 7 EUTMR) 1. Non-distinctive trademarks It does not allow to identify the company that is behind the product and/or service, it does not allow to distinguish them from those of other companies. ▪ Very simple signs: Colors, single letters, simple figurative elements,… ▪ That do not allow to identify the business origin of the products and services ▪ That are descriptive TRADEMARKS Absolut grounds for refusal (art. 7 EUTMR) Distinctiveness has to be assessed by reference first to the goods or services in respect of which registration is sought and second, to the relevant public’s perception of that sign. ▪ Distinctive for sports clothing and footwear ▪ Not distinctive for selling mango fruits in a grocery store ▪ Distinctive for bathroom fittings ▪ Not distinctive for a stone supplier TRADEMARKS Absolut grounds for refusal (art. 7 EUTMR) 2. Descriptive trademarks Has a meaning which is immediately perceived by the relevant public as providing information about the goods and services applied for. ▪ The sign provides information about, among other things, the quantity, quality, characteristics, purpose, kind and/or size of the goods or services. ▪ In any of the official languages of the European Union ▪ This does not apply to those terms that are only suggestive or allusive as regards certain characteristics of the goods and/or services Registration is prohibited so nobody can monopolize descriptive terms. TRADEMARKS Absolut grounds for refusal (art. 7 EUTMR) ‘BIOMILD’ for yoghurt being mild and organic (judgment of 12/02/2004, C-265/00, Biomild, EU:C:2004:87); ‘UNIVERSALTELEFONBUCH’ for a universal telephone directory (judgments of 14/06/2001, T-357/99 and T-358/99, EU:T:2001:162); ‘BABYPATAUGEOIRE’ for Classes 20 and 42 related to chairs and design of chairs for babies. The sign is composed of an English and a French term that will be immediately understood by the French and English- speaking part of the public; ’ TRUSTEDLINK’ for goods and services in the IT-sector aimed at securing a safe (trusted) link (judgment of 26/10/2000, T-345/99, Trustedlink, EU:T:2000:246); ‘SLIM BELLY’ for fitness training apparatus, sport activities, medical and beauty care services (judgment of 30/04/2013, T-61/12, Slim belly, EU:T:2013:226). TRADEMARKS Absolut grounds for refusal (art. 7 EUTMR) 3. Customary signs Signs that consist exclusively of words or indications that have become customary in the current language in trade sectors covering the goods or services for which the mark is applied for. TRADEMARKS Absolut grounds for refusal (art. 7 EUTMR) 4. Shape which results from the nature of the goods, or which is necessary to obtain a technical result ‘Natural’ products that have no substitute Shape of goods that is necessary to obtain a technical result: fit with another article, give the most strength , use the least material, facilitate convenient storage or transportation. 5. Contrary to public policy or to accepted principles of morality “BIN LADIN”: the mark applied for will be understood by the general public as the name of the leader of the notorious terrorist organisation Al Qaeda (R 176/2004-2). “CURVE 300”: “Curve” is an offrensive and vulgar word in Romanian, it means “whores” (R 288/2012-2). 6. Deceptive “LACTOFREE ”: the nature of the sign would immediately lead the relevant consumer to believe that the product in question, i.e. “lactose” does not contain any lactose. (R 892/2009-1). “CAFFÈ VELOCE” for tea, cocoa, artificial coffee: the consumer would falsely believe that the tea, cocoa and artificial coffee offered contained coffee. 7. In conflict with flags and other symbols TRADEMARKS Absolut grounds for refusal (art. 7 EUTMR) Vulgarization …and sometimes it can be lost HOW WOULD YOU CALL THIS? 23 TRADEMARKS EPIC BRANDING FAILS http://3.bp.blogspot.com/-90yfI0j7XUA/UGDjdLR_N9I/AAAAAAAAAuM/2RRBz3MajUo/s1600/Pro 69209_10200355512669430_1177428228_n 24 TRADEMARKS Relative grounds for refusal (art. 8 EUTMR) Upon opposition by the proprietor of an earlier trademark, the trademark applied for shall not be registered if is identical or similar to... A) EARLIER TRADEMARKS When because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlie r trade mark.  TRADEMARKS Relative grounds for refusal (art. 8 EUTMR) Conditions of application: 1. Earlier registered mark with reputation in the relevant territory; 2. Identity or similarity between the contested EUTM application and the earlier mark; 3. Use of the sign applied for must be capable of taking an unfair advantage of, or being detrimental to, the distinctiveness or the repute of the earlier mark; 4. Such use must be without due cause. These conditions The opponent aremust submit evidence enabling the Office to reach a positive finding that (i) cumulative the earlier mark has acquired a reputation in the relevant territory, (ii) the public will make a connection between those marks (establish a link between them) and (iii) that exists a risk of injury. TRADEMARKS Relative grounds for refusal (art. 8 EUTMR) ▪ ASSESSMENT OF A LINK BETWEEN THE SIGNS TRADEMARKS Relative grounds for refusal (art. 8 EUTMR) ▪ ASSESSMENT OF RISK OF INJURY  INDUSTRIAL DESIGNS 29 INDUSTRIAL DESIGNS Importance Why protect our designs? design = difference = competitiveness “We made the buttons on the screen look so good you'll want to lick them” STEVE JOBS sobre el Mac OS X INDUSTRIAL DESIGNS Definition COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs (“RCD”): ▪ Article 3 RCD: “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. ▪ 5 years protection upon renewals up to a total term of 25 years.  APPEARANCE of a product or a part of it: features resulting from its lines, colors, shape, etc. EU Registered Design Requirements: Novelty. Individual character. Maximum protection: 25 years. But it may differ in other countries… *Under the Hague System, at least 15 years of protection 32 are guaranteed (e.g. US, CN 15 years, link here). INDUSTRIAL DESIGNS Definition A product A complex product INDUSTRIAL DESIGNS Definition Packaging Product parts INDUSTRIAL DESIGNS Definition Typographical character Icons INDUSTRIAL DESIGNS Definition Settings/Window displays Patterns INDUSTRIAL DESIGNS Definition Maps Websites INDUSTRIAL DESIGNS Requirements for protection A design shall be considered new if no Novelty identical design has been made available to the public. Designs shall be deemed to be identical if their features differ only in immaterial details. A design shall be considered to have Individual individual character if the overall Character impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public. 38  INDUSTRIAL DESIGNS Requirements for protection Available to the public A design shall be deemed to have been made available to the public if it has been published following registration or exhibited, used in trade or otherwise disclosed before the date of filing or priority (registered Community design) or the date on which the design for which protection is claimed has first been made available to the public (unregistered Community design); − Except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community and if it has been disclosed to a third person under explicit or implicit conditions of confidentiality. 39 INDUSTRIAL DESIGNS Requirements for protection Available to the public − A disclosure shall not be taken into consideration if a design for which protection is claimed under a registered Community design has been made available to the public: (a) by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title; and (b) during the 12-month period preceding the date of filing of the application or, if a priority is claimed, the date of priority. 40  INDUSTRIAL DESIGNS Is a copy of the applicant’s webpage sufficent to prove the disclouser in a cancellation proceeding? 41  INDUSTRIAL DESIGNS “Available to the Public “ = DISCLOSURE ( Art. 7 CDR) -Website Peter Reisenthel vs. ALI S.r.l. Third Board of Appeal of 12 September 2017 vs “it should be noted that the copy of the applicant's website, although containing the product concerned, is undated. Furthermore, this evidence is not corroborated by further documents that enable it to be placed in time, not even, for example, by the Wayback Machine or any other online archiving service. It follows from this that the 42 copy of the web page are not in themselves sufficient to prove the disclosure”  INDUSTRIAL DESIGNS Is a screenshot taken from the website with an Internet Archive sufficient to prove the disclosure in a cancellation ? “In the present case, the applicant claimed that the contested design was disclosed on the internet and demonstrated this by submitting a screenshot taken from www.walmart.com. Although this printout may have been produced after the application date of the Community design at issue, it comes from the Internet Archive (https://archive.org) and it is clear from the archiving date that the lounger (the product related to the prior design) illustrated therein was available on the website at least as of 07/10/2014. The Invalidity Division considers that date of disclosure is 07/10/2014, which precedes the RCD filing date.” 43  INDUSTRIAL DESIGNS Is the publication of the design on a website of an IP office sufficient to be considered disclosure? Does it make any difference whether the IP office is European or, for example, Chinese or Korean? IP OFFICES (INVALIDITY No ICD 10 139) “The applicant submitted the certificate of the design registration at the Intellectual Property Office of the People’s Republic of China. The presumption provided for in Article 7(1) CDR applies irrespective of where the events constituting disclosure took place within the UE in order for a design to be deemed to have been made available to the public (13/02/2014,C-479/12, Gartenmöbel, EU:C:2014:75, § 33; 21/05/2015, T-22/13 & T-23/13, UMBRELLAS,EU:T:2015:310, § 27). The IP registers are publicly available and, due to technical advancement and the globalisation of markets, there is no severe obstacle to the relevant circles’ becoming acquainted with the invoked design registration.” 44  INDUSTRIAL DESIGNS And a publication on Youtube? Can we consider those publications as known to the circles specialized in the sector concerned within the meaning of Art. 7(1) CDR? Min LIU vs DSN Marketing Ltd (Third Board of Appeal of 7 October 2014 in Case R 1864/2013-3) “A design that forms the subject of a video review uploaded on YouTube with all its features being shown and reviewed must be considered as having been made available to the public within the meaning of Article 7(1) CDR. It is a well-known fact that YouTube is a freely accessible website for video-sharing. According to the evidence submitted by the invalidity applicant, the review videos are searchable by the respective product indication. Despite the fact that the reviews are uploaded by individuals this suggests that companies actively encourage video reviews by placing their products at consumers’ disposal. There is no reason to assume that such reviews will not become known to the circles specialized in the sector concerned within the meaning of Article 45 7(1) CDR.” 46 INDUSTRIAL DESIGNS Requirements for protection -“Informed User” H&M v EUIPO – Yves Saint Laurent, Cases T-525/13 and T-526/13 (General Court, 10 September 2015). “ The informed user of that design as an informed woman, who was interested, as a possible user, in handbags” ABERCOMBIE & FITCH EUROPE - AFH stores UK Limited - AFH Fulfilment NL BV - ABERCOMBIE & FITCH FRANCE - AFH GERMANY GMBH (Applicant) vs.DKH Retail Limited (Owner) (INVALIDITY DIVISION of 25/08/2015) “The informed user is familiar with sports garments, namely sports jackets. The informed user in the field of sports jackets is aware of the number of products provided by the industry specialised in sports garments; therefore, they are particularly circumspect and sensitive to various minor improvements that may enhance the functionality of the jacket and also contribute to the appearance of it.” INDUSTRIAL DESIGNS Requirements for protection -“Informed User” CROCS, Inc. (Applicant) vs. Hung Lam Ng (Owner) (INVALIDITY DIVISION of 18/05/2015 ) RCD Prior Design “the informed user is aware of the shoe designs available on the market before the contested RCD’s filing date. Both the prior and the contested designs have the characteristics of clog- style shoes. The informed user is familiar with the basic features of the products concerned, namely that clogstyle shoes usually have an open heel and an upper in the instep.” INDUSTRIAL DESIGNS Requirements for protection -“Informed User” PUIG FRANCE, Société par Actions Simplifiée vs Jakub Zieliński trading as MIND CONSULTING (DECISION of the Third Board of Appeal of 17 January 2017) RCD Prior 3D EUTM “The informed user of perfume bottles is neither the manufacturer nor a seller of fire extinguishers, but the person who uses such bottles. Without being a designer or a technical expert, the informed user knows the various designs for perfume bottles as a result of the product range available on the market, possesses a certain degree of knowledge with regard to the features which perfume bottles normally include, and, as a result of his interest, shows a relatively high degree of attention when using them.” INDUSTRIAL DESIGNS Unregistered Community Designs ▪ In most countries, industrial designs must be registered in order to be protected under industrial design law. ▪ Nevertheless, European Union countries do enjoy the protection of unregistered community designs. Instrument introduced by Council Regulation (EC) No 6/2002 of 12 December 2001, on Community designs (Community Design Regulation) specifically for sectors such as fashion industry. “The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design. Some of those sectors produce large numbers of designs for products frequently having a short market life where protection without the burden of registration formalities is an advantage and the duration of protection is of lesser significance (Recitals 14 and 16 of the Community Design Regulation) ✓ No formalities required ✓ No costs involved ✓ Shorter period of protection ✓ Allow applicants to test market new designs before deciding which or whether to register INDUSTRIAL DESIGNS Unregistered Community Designs Requirements ▪ Novelty ▪ Individual Character Protection for a maximum period of three years from the date on which the design was first made available to the public within the territory of the European Union. Disclosing a design and being able to prove it –author and date- are key to unregistered design protection. Industrial Design Practice So… how have these items been protected? 52 Industrial Design Practice Industrial Design Practice https://euipo.europa.eu/copla/image/M674DBIVNK56FON27UQIXB6ZFFNAUHFPPV73VYSZFWAFVEERYSCCE4PWJDWJSTKUZ5Y3L5VPBGGJW Industrial Design Practice Industrial Design Practice Industrial Design Practice Industrial Design Practice Industrial Design Practice TM https://euipo.europa.eu/copla/image/M674DBIVNK56FON27UQIXB6ZFFNAUHFPPV73VYSZFWAFVEERYSCCE4PWJDWJSTKUZ5Y3L5VPBGGJW Industrial Design Practice TM Industrial Design Practice TM EUDR TM TM Industrial Design Practice TM TM EUDR Industrial Design Practice Important lesson: being able to identify items eligible for protection and chose the best way for protecting it.  garrigues.com Síguenos J&A Garrigues, S.L.P. Reg. Merc. Madrid: Tomo 17.456, Folio 186, Sección 8ª, Hoja M -190538. NIF: B81709081. Hermosilla, 3 – 28001 Madrid, España. + 34 91 514 52 00. [email protected]