Presentation on European Soft IP Rights to Syracuse University School of Law

Introduction to the complete Soft IP registration cycle

Legal Aspects of Trademark and Design protection in the European Union

by

Niall TierneyBarrister-at-Law (Ireland)

Solicitor (England & Wales)European Trademark and Design Attorney

Ways of protecting Soft IPRs in the European Union

Rely on un-registered (Common law) rights;

Register my name and/or logo as a Trade Mark;

Rely on Copyright to stop others copying my logo;

Register my logo as a design;

Register my product shapes and packaging as designs;

Copyright Niall Tierney 2012. All Rights Reserved.

Common law – Passing off

• In Great Britain and Ireland, the holders of both registered and un-registered Trade Marks can seek protection under Common law.

• An action in Passing off can be relied on if:

• A misrepresentation has been made in course of trade by another person to customers or

prospective customers of the aggrieved party.

• The misrepresentation is calculated to deceive others into thinking that the offending sign is that of the aggrieved party or is licensed/authorised by the aggrieved party.

• The misrepresentation is such that it has damaged, or is likely to damage, the goodwill/reputation that the aggrieved party enjoys under his name.


Trade Mark/Trademarks

• A Trade Mark is a sign that distinguishes your goods and/or services from those of your competitors.

• A Trade Mark can encompass anything from the brand name you use on

your product, to logos, the shape of goods and the get up of packaging. The list of what may constitute a Trade Mark is not exhaustive.

• In some cases, it is possible to register smells, shapes and sounds as Trade Marks.

• A Trade Mark must be capable of being represented graphically.


Registering a Trade Mark in the UK• In the UK, a Trade Mark registration is granted by the UK Intellectual

Property Office.

• Trade Mark protection in the UK can also be achieved by applying to register a pan European (CTM) Trade Mark.

• A Trade Mark can be refused registration on the following grounds;

– Absolute Grounds;– Relative Grounds;

• An unchallenged Trade Mark application will be registered within about four to six months from filing


Types of Trade Marks

Shape Trade Mark Single Colour Trade Mark


Absolute Grounds of Refusal of a Trade Mark

• Trade Mark is not capable of distinguishing your goods and/or services from those of your competitors;

• Is not capable of being represented graphically;

• It does not have distinctive character;

• It describes the goods and/or services for which registration is sought;

• It consists exclusively of the shape of the goods for which registration is sought;

• It consists exclusively of a shape which is functional;

• It consists exclusively of a shape which gives substantial value to the goods for which registration is sought;

• It is contrary to accepted principles of morality or law;

• It deceives as to the nature, quality, or geographical origin of the goods and/or services for which registration is sought;


Relative Grounds of Refusal An application to register a Trade Mark can be challenged by the holder of an

earlier identical or similar Trade Mark that covers identical and/or similar goods and/or services.

A Trade Mark will also be refused if the holder of an earlier reputable or distinctive Trade Mark can show that use of the later Trade Mark, would, without due cause either:

take unfair advantage of, or be detrimental to the distinctive character or reputation of the earlier trade

mark.

A Trade Mark can also be refused if it clashes with an earlier unregistered right in the following circumstances:

• There is goodwill/reputation under the earlier right in the United Kingdom;• The Trade Mark being applied for will deceive consumers into believing that the

goods/services for which registration is sought originate from or are endorsed authorised by the earlier right holder, and

• Use and registration of the filed Trade Mark will damage or is likely to damage the business goodwill under the earlier right.


The Community Trade Mark


European (CTM) Trade Mark– The Community Trade Mark is a single Trade Mark registration that is

effective and enforceable throughout the 27 Member States of the European Union. This means it is not necessary to seek registration of your Trade Mark in each EU Member State.

– A CTM is an ‘all or nothing’ right. A CTM cannot be effective in some EU

Member States and not others.

– It may be possible to convert a CTM into applications in EU Member States. These converted applications will retain the same date of application as the CTM.

– A CTM lasts for an initial period of 10 years, but can be renewed

indefinitely for further 10 year periods.


How to obtain a CTM• An application can be filed directly with OHIM or it can be filed through

a national office of one of the 27 Member States of the European Union.

• The holder of an International Trade Mark registration can designate the CTM rather than separately designating each EU Member State.

• A CTM application can be based on the priority of an earlier TM application filed in a Paris Convention six months previously.

• A CTM can also claim the seniority of an earlier EU Member State Trade Mark registration, provided:

• The owner is the same.• The Trade Mark is the same• The goods and/or services are identical to those for which protection is

sought.


The process of registering a CTM• An application for a CTM is examined centrally by the Trade

Marks and Designs Registration Office of the European Union (OHIM), Alicante, Spain.

• The Examination Division of OHIM examines the application to ensure that the Trade Mark for which registration is being sought does not fall into one of the exclusive ‘Absolute Grounds of Refusal’.

• If a CTM successfully passes the ‘Absolute Grounds of Refusal, it is published for a non-extendible period of three months to allow third parties to oppose.

• If a third party wishes to oppose, their opposition must be based on one or more of the ‘Relative Grounds of Refusal’.


Madrid Agreement/Protocol

International registration of Trademarks & Service marks


Overview of Madrid• Centralised system to facilitate the international registration of Trademarks

and Service marks.

• Governed by two treaties:

– Madrid Agreement, 1891– Madrid Protocol, 1989

• Any country (Contracting Party) that is a member of Paris Convention may become a party to either the Agreement or Protocol or both

• Madrid Agreement and Protocol are administered by World Intellectual Property Office (W.I.P.0) in Geneva, Switzerland.

• United States of America is a member of the Madrid Protocol.

• The European Union is a member of just the Madrid Protocol.


http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

Who can use the Madrid system?• An application for an International Registration (IR) can only be

filed if registration has been granted or is being sought for the same Trademark in the country where the Applicant has the required connection.

• An application for an IR may only be filed by a natural or legal person which is:

– domiciled;– is a national;– or has a real and effective industrial or commercial establishment

in a country which is party to the Agreement or Protocol.

Copyright Niall Tierney. All Rights Reserved.

How does the Madrid system work?• An applicant for an IR must file application through its Office of

Origin (the Trademarks office where the applicant has the required connection).

• The IR application should designate those other countries of the Madrid Agreement or Protocol where protection of the Trade Mark is desired.

• It is possible to backdate the IR to the date of the base application if done so within six months of the filing of the base application.

• It is not possible for an application filed under the Protocol to designate those countries that are only members of the Agreement.


How does the Madrid system work?

• It is not possible to designate the country where Applicant’s Office of Origin is based.

• An application for an IR can be filed in any of the following three official languages:

• English• French • Spanish

• Office of Origin certifies that the mark for which registration is sought is the same as the basic application or registration.


Refusal of Protection• The office of a designated country must examine request for

designation of an IR within the following time limits:

• 12 months if application is governed by Madrid Agreement• 18 months if application is governed by Madrid Protocol

• An application to designate an IR must be examined in the same way as an application filed directly before the office of the designated country.

• If an application for designation is provisionally refused, it is necessary to appoint a local attorney to deal with the Provisional Refusal.

• If office of a designated country finds no reason to provisionally refuse, it may issue a Statement of Grant.


3rd party opposition to a Designation• Under the Protocol, the office of a designated country may notify

the IR applicant that the 18 month period can be extended where Provisional Refusal is based on a third party opposition.

• Designating office can only extend 18 month period in the above circumstances where:

– It has informed WIPO of the possibility that oppositions may be filed after the 18 month period

– Notification of Refusal within a month of the end of the opposition period and no later than seven months from which opposition period began


Rule of Dependency• An International Registration depends on its basic registration

or application for a period of five years from its date of registration.

• If the basic registration ceases to have effect during the five year period, the International registration will no longer have effect.

• If the basic application upon which the International Registration is based is rejected or refused during the five year period, the IR will fail.

• An IR becomes independent of a basic registration or application after five years. Thereafter third parties have to separately challenge each designation.


Replacement of national registration by International Trade Mark

• An IR replaces a national TM registration for the same Trade Mark in respect of the same goods in the same designated country.

• Therefore owner of a national TM can let it lapse if it has an IR.

• If the national registration lapses due to non renewal, the owner can still assert rights under the IR.

• Replacement of a national registration by an IR takes place automatically, although holder can ask national office to record interest on Trade Marks Register.


Changes in an International Registration

• A change in name and/or address of holder can be recorded centrally with WIPO. It is not necessary to record separately in each designated country.

• A change in the ownership of an International Trade Mark registration can be recorded centrally.

• The following may also recorded centrally with WIPO:

– A restriction in the goods or services description in respect of some or all of designated countries

– A cancellation of the IR in some or all of designated countries in respect of some or all of goods and/or services.

– A licence granted in some or all of designated countries in respect of some or all of goods and/or services.


Advantages of Madrid System

• Businesses wishing to seek international protection of their Trademarks only have to file one application in one language.

• If IP offices in designated countries wish to refuse, they must do so in 12 months (Agreement) or 18 months (Protocol) otherwise protection is automatically granted.

• Changes to IR can be recorded centrally through WIPO rather than in each designated country.

• There is only one renewal date and only one registration to renew. Not necessary to separately renew in each designated country.


Disadvantage of Madrid System• It is necessary to appoint local Trademark counsel to handle and

deal with Provisional Refusals that may be raised by IP office in designated country.

• An International Registration is vulnerable during its first five years if the registration or application upon which it is based lapses, is abandoned or successfully attacked.

• The scope of an International registration cannot be wider than the application or registration upon which it is based.

• It is not possible to base an IR on a CTM if the holder of the CTM is not an EU national, is not domiciled in the EU or does not have a real or substantial presence in the EU.


Enforcing a Trade Mark registration• A Trade Mark registration gives its holder the exclusive right to use the Trade

Mark in relation to the goods and/or services for which it is registered in the territory where the Trade Mark is registered.

• A Trade Mark registration allows its holder to prevent the unauthorised use of:-

– An identical sign in relation to identical goods.

– An identical sign in relation to similar goods/services where use would give rise to a likelihood of confusion (including a likelihood of association).

– A similar sign in relation to identical and/or similar goods/services where use would give rise to a likelihood of confusion (including a likelihood of association).

– An identical and/or similar sign in relation to similar and/or dissimilar goods/services where use would, without due cause, take unfair advantage of, or be detrimental to, the distinctive character or reputation of the Trade Mark.


The Registered Community Design


What is a design ?

• A design constitutes the appearance of the whole or part of a product which results from features such as lines, shape, contours, texture.

• A design can also include the materials of the product itself and/or its ornamentation.

• Product - Any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, including packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs.

• A complex product is a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product


Requirement for a valid design

For a design to be valid in Europe, it must:

1. Be new, i.e. no identical design has been made available to the public:

a. in the case of an un-registered design, before the date of claimed protection;

b. in the case of a registered design, before the date of application for registration.

2. Have individual character, i.e. if the overall impression it produces on an informed user is different to designs that are already known:

a. in the case of an un-registered design, before the date of claimed protection;

b. in the case of a registered design, before the date of application for registration.


Types of Designs

Motorcycle helmet Product packaging


Design Right – United Kingdom

Design Right is unique to the United Kingdom.

Design Right is a form of un-registered protection.

Design Right gives automatic protection for the internal or external shape or configuration of an original design.

Design Right does NOT provide protection for two dimensional designs such as patterns.

Design Right lasts from either:

• 15 years from the date of creation of the design, or• 10 years from the date the design was first marketed.


European (RCD) Design

An RCD is a unitary design registration that is effective and enforceable throughout the 27 Member States of the European Union.

The RCD Register is run and maintained by OHIM (aka the Trade Marks and

Designs Registration Office of the European Union). An application to register an RCD is not examined to assess whether it meets

the legal criteria for registration. However, to avoid third party challenges, an RCD must be valid.

To be valid, an RCD must be novel and have individual character. An RCD can be registered for up to 25 years provided a renewal fee is paid

every 5 years.


European (RCD) Design – contd/...

• An RCD gives its holder the exclusive right to use the design throughout the 27 Member States of the European Union and to prevent its unauthorised use by third parties whether by deliberate copying or by independent creation of a similar design.

• It is possible to file multiple designs in one application.

• It is also possible to keep the RCD confidential for a period of up to 36

months from the date of filing.


Enforcing my design• The holder of a Registered Design has exclusive rights to use it throughout the

relevant territory and to prevent third parties from both deliberately copying and independent development of a design with the same overall impression.

• Protection of a Registered Design extends to all products, e.g. if your

registration is registered in respect of toys, you can prevent the use of a design of the same overall impression on biscuits.

• The rights in a European Registered Design (RCD) can be enforced in any of

the designated Design Courts throughout the European Union.

• The holder of an un-registered Design can only prevent the deliberate copying

of the protected design and protection only lasts for three years from when the design was first made available.


Combination of systems• If the correct conditions are met, it is possible to use a CTM as the basis of a

Madrid (IR) registration – means you would only have two TM registrations for the same Trade Mark in most countries throughout the world

• The holder of a Madrid IR can have this registration protected in the European Union by simply designating the CTM rather than each individual EU Member State – be aware of potential pitfalls.

• Possible to protect a logo in the European Union using both the RCD and CTM and CTM systems – care must be taken to file RCD first in order not to destroy novelty.


Thank you

ANY QUESTIONS?


Date post:	18-Oct-2014
Category:	Education
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Presentation on European Soft IP Rights to Syracuse University School of Law

Education