Overview of the Industrial Property protection in the EU
• The Community Trade Mark (CTM) System• The Community Design (CD) System
Mark Kennedy
General Affairs & External Relations Department
1. Overview
The Community Trade Mark (CTM) and Community
Design
The European Union currently has 450 million inhabitants
EU Agency: Decentralised
Legal personality
Financial autonomy
Tasks: Community Trade Mark (in operation since 1 April 1996)
Community Design (in operation since 1 April 2003)
What is the Office for Harmonization in the Internal Market?(OHIM)
What is the Office for Harmonization in the Internal Market?(OHIM)
SPAIN
Alicante
G e n e r al A ffair s a n d E x te rn a l R ela tio nsD e p a rtm e nt
In fo r m a tio n T e c hn o lo gie s a nd F ac ilitiesM a n a ge m e n t D e p ar tm e nt
A d m in istr a tion o f T ra d e M ar ks a ndD e sig ns D e p ar tm e nt
Q u a lity M a n ag e m e nt D e p ar tm e nt
H u m an R e sou r c e s D e p a rtm e nt D e sig ns D e p ar tm e nt
F in a nc e D e p a r tm e nt T r a d e M a r ks D e p ar tm e nt
P R E S ID E N T
Budget CommitteeAdministrative Board FinancialController
There are currently around 650 people working at OHIM
Staff are recruited from all 25 Member States of the European Union
Nationals of new member states are being recruitedspecific qualifications
All staff are proficient in at least 2 languages of the European Union
2. The Community Trade Mark (CTM) System
The Legal Framework Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark
Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark
Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs)
Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs)
Amendments to the Community Trade Mark Regulation
What is a Community Trade Mark (CTM)?
A CTM is a sign for identifying and distinguishing goods or services valid across the European Community, registered with the OHIM in accordance with the conditions specified in the CTMR.
Which kind of signs may be registered as CTM?
A CTM may consist of any signs 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 (Art. 4 CTMR)
Namely word marks including letters, numbers or combination of letters, numbers and words; figurative marks, three-dimensional marks; sound marks.
Words and numbers
Figurative elements
Others
•CTM 883355 “Mozart”
Which kind of signs may not be registered as CTM?
Absolute grounds for refusal (Art 7 CTMR)
Relative grounds for refusal (Art 8 CTMR)
Advantages of the Community Trade Mark (CTM) :
1º Unitary nature and protection of exclusive rights
The Community trade mark is unitary in nature , i.e. it is valid everywhere in the European Community, and gives proprietors exclusive rights enabling them to prohibit any third parties from using the sign in their commercial or industrial activities.
2º Simplified formalities and management
-a single application;
-a single language of procedure;
-a single administrative centre;
-a single file to be managed.
Advantages of the Community Trade Mark (CTM) :
3º Reduced costs
Filing a Community trade mark application is not expensive: EURO 975 for three classes of goods and services. The registration fee of EURO 1100 only needs to be paid once no obstacles remain to the trade mark being granted.
4º Option of claiming the seniority of national trade marks
If applicants or proprietors of a Community trade mark already hold a prior identical national trade mark for identical goods and services they may claim the seniority of that mark. This allows them to preserve their prior rights even if they surrender their national trade mark or do not renew it.
Advantages of the Community Trade Mark (CTM) :
5º Right of priority
The filing date accorded to a Community trade mark is recognised as constituting a date of priority for both national and international trade marks.This applies equally where applicants decide to convert their application or registered Community trade mark into national applications.
6º Obligation of use which is easy to meet
A Community trade mark may be maintained in all the countries of the European Union by using it effectively and genuinely in a single Member State.
Advantages of the Community Trade Mark (CTM) :
7º Broadened legal protection which is accessible to all
Infringement proceedings may be brought before the Community trade mark courts, which are national courts designated by the Member States to have jurisdiction in respect of Community trade marks. Decisions have effect throughout the EU.
8º An extended range of options for exercising rights under the trade mark
The option to transfer and assign Community trade marks is essential for the management of companies. A Community trade mark may be transferred, licensed, right in rem …
Advantages of the Community Trade Mark (CTM) :
9º Community trade marks as prior rights in all the countries of the European Union
Community trade marks constitute prior rights in relation to all subsequent trade marks and other conflicting rights in all Member States.
10º The prospect of enlargement
The enlargement of the European Union by 10 new Member States (1 May 2004) resulted in a European Union of 25 Member States. The Community trade mark therefore is not only a gateway to the existing single market but also to a market in the process of expansion.
Does the CTM prevail over national trade marks?
The CTM system leaves the national trade mark systems of Member States & the Benelux Trade Mark system unaffected.
However, earlier national trade marks constitute earlier rights against a CTM, and vice versa.
Where and how to file ?Where and how to file ?
With the national offices
Directly to OHIM
Capacity and entitlement to register a Community Trade Mark (CTM)
•Any person or business entity may apply for a CTM. (new Art. 5)
• But for non European applicants, an European representative must be appointed (Art. 88 CTMR)
• The appointed representative can be a OHIM professional representative or legal practitioner
The Community Trade Mark Procedure
Filing
Formalities examination
Search and translation
Publication
Absolute grounds examination
Opposition (inter partes proceeding)
RegistrationPartial and total refusal
12 months
Third parties observations
30 months
PUBLICATION
NOTICE OF OPPOSITION
ADMISSIBILITY EXAMINATION
APPEAL
NOTIFICATION TO APPLICANT
COOLING OFF PERIOD
START OF WRITTEN PROCEDURE
(observations from parties, proof of use,
etc.)
EXAMINATION AND DECISION ON OPPOSITION, COSTS AND APPLICATION
FOR A CTM
Rights conferred by a Community Trade Mark
- Exclusive use of the trade mark;- Prevention of reproduction or imitation of a trade
mark;- Transfer the trade mark; - Grant licenses for some of all of the goods or
services in part or for the whole of the community;- Oppose/Request the invalidity of the registration of
similar community or national trade marks which could cause confusion to the consumer.
In the whole territory of the European Union
0
10,000
20,000
30,000
40,000
50,000
60,000
70,000
1996 1997 1998 1999 2000 2001 2002 2003 2004
1999 2000 2001 2002 2003 2004
41,242 57,324 48,856 45,104 57,637 59,349
BREAKDOWN BY APPLICATIONS PER YEAR - Total 411.778
3. The Community Design System
• Council Regulation (EC) nº 6/2002 of 12 December 2001 on Community Designs
(OJEC N° L3 of 5-1-02, p 1)
• Commission Regulation (EC) nº2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs
The legal framework
(OJEC N° L341 of 17-12-02, p 28)
• Commission Regulation (EC) nº 2246/2002 of 16 December 2002 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) in respect of the registration of Community designs
(OJEC N° L341 of 17-12-02, p 54)
Entry into Force
• 6 March 2002
• Administrative Board of O.H.I.M. decided on 18 November 2002:
first Filing date 01/04/2003, applications received as from 01/01/2003
“design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the ...
lineslines colourscolours texturetexture
contourscontours materialsmaterialsornamentationornamentation
shapeshape
What is a design?
What is a Product ?
“Product”: any industrial or handicraft item,
including inter alia
– Parts intended to be assembled into a complex
product
– Packaging
– Get-up
– Graphic symbols
– Typographic typefaces
Excluded: computer programs
• If no identical design has been made
available to the public– before the UCD has first been made available
to the public– before the filing or priority date of the RCD
• Designs are deemed to be identical if their
features differ only in immaterial details
Protection Requirements: Novelty (Art. 5)
• If the overall impression produced on the informed user differs from the overall impression of designs made available to the public earlier
• The degree of freedom of the designer in developing the design will be taken into consideration
Protection Requirements: Individual character (Art.
6)
Exclusion of protectionExclusion of protection
• Non visible parts in normal use• Features of appearance of a product
which are solely dictated by the technical function of the design
• Interconnections
(Art 4 (2))
(Art 8 (1))
(Art 8 (2))
The Community Design : a two tier protection system
The Community Design : a two tier protection system
• The Unregistered Community Design
(UCD)
• The Registered Community Design
(RCD)
Beginning ofprotection for UCDs
Beginning ofprotection for UCDs
• The UCD has been a reality since the
6th of March 2002
• All new creations disclosed for the
first time in the EU since this date are
protected by that right throughout the
European Union
Beginning ofprotection for RCDs
Beginning ofprotection for RCDs
• The RCD has been a reality since the 1st of
April 2003
• Administrative Board of O.H.I.M. decided on
18 November 2002: first Filing date
01/04/2003, applications received as from
01/01/2003
Registered or Unregistered Community Design
Registered or Unregistered Community Design
• Unitary character
(equal effect throughout the Community)
• Definitions
(design, product, complex product)
• Protection requirements
(novelty, individual character)
Common elements
Registered or Unregistered Community Design
Registered or Unregistered Community Design
• Exclusion of protection
(non visible parts, technical functions,
interconnections, against public policy
or morality)
Common elements
Registered or Unregistered Community Design
Registered or Unregistered Community Design
• Birth of right– RCD application for registration– UCD making available to the public within
the Community
• Term of protection
– RCD 5 years renewable 4 times
– UCD 3 years from disclosure
Differences
Max. 25 years
Registered or Unregistered Community Design
Registered or Unregistered Community Design
• RCD - exclusive right to use and prevent: making, offering, putting on the market, importing, exporting, using or stocking for such purposes, products incorporating the design
• UCD - right to prevent only if use results from copying
Rights conferred:
Differences
(Art 19)
Unitary characterUnitary character
• CD has equal effect throughout the EU
• Registration, transfer, surrender, invalidity,
prohibited use always for the entire EU
(Art 1 (3))
Unitary character & enlargement of the EU
Unitary character & enlargement of the EU
• New Article 110a CDR
• Automatic extension of RCD’s and UCD’s (as from 1/5/2004)
• Grand’fathering of earlier CD’s (invalidity and examination on new grounds)
• Holder of earlier national rights in new Member States can prohibit use
• If first disclosure outside EU, no UCD
• If first disclosure in non EU country, UCD not available because no grace period
• Uncertainty as to disclosure and therefore existence of right
• Problems of proof (date, extent, first disclosure, etc)
• Right only against “copies”
• Limited term of 3 years
Weaknesses of the UCDWeaknesses of the UCD
• A strong right with a unitary character in the entire EU
• Easy, fast and cheap filing and registration procedure (one language, one application, one fee system; multiple applications, deferred publication)
• Community exhaustion
• Grace period (12 months)
• Long term of protection (up to 25 years)
Advantages of the RCDAdvantages of the RCD
The Registered Community Design
and OHIM
The Registered Community Design
and OHIM
How to obtain a registration of your design at the OHIM
Any natural or legal person without any restrictions as to nationality or state of incorporation
• Right vests in the designer or his successor in title• Joint ownership• Designs developed by employees
Who can file
Who has the right
Where to file ?Where to file ?
With the national offices
Directly to OHIM
Mail RoomMail Dispatch
Examination
Registration
Publication Deferment
Community Design Workflow
Mainly formalities • elements provided in application• priorities• professional representative
Grounds for non-acceptance
• not a design application• against public policy and morality
ExaminationExamination
(Art 45)
__________________________________________________________Procedure should be fast and user-friendlyProcedure should be fast and user-friendly
No examination on :No examination on :
verification of protection requirements
relative grounds
whether spare part or not
whether the applicant is entitled
ExaminationExamination
Multiple designs allowed in one application, provided products are in the same class (except ornamentation)
Features– No upper limit for number of designs
– Saves costs for applicant
– In case of multiple classes, invitation to divide
– Each design included will have its own independent life (deferred or not, invalidity, surrender, renewal,
etc …)
Multiple ApplicationsMultiple Applications
(Art 37)
A multiple application (class 06)A multiple application (class 06)
Not a multiple applicationNot a multiple application
• To be requested when application is filed
• Maximum 30 months as from filing or priority date
• Deferment may be interrupted at any time by the applicant
• May file a specimen if it is a two dimensional design
• Except for very limited information, the designs remain secret until holder decides to publish
Deferred publicationDeferred publication
(Art 50)
Publication of a deferred designPublication of a deferred design
Country of origin
21,2%
11,8%
9,1% 8,7%7,0%
5,3% 5,3% 5,1% 5,1%3,0%
0,0%
5,0%
10,0%
15,0%
20,0%
25,0%
DE GB NL ES US FR IT DK SE JP
FiguresFigures
• class 09 : Packaging
• class 12 : Transport or hoisting
• class 06 : Furnishing
• class 07 : Household goods
• class 14 : Recording and
communication equipment
IndustriesIndustries
Type of application
Single55,21%
Multiple44,79%
average number of designs in a multiple application = 6,15
FiguresFigures
Some examples of designs already registered by OHIM
since 1 April 2003
Source: OHIM’s CD Bulletin
000000013-0001
Casio Computer Company
Filed, registered and published on 01/04/2003
First RCD published
000000021-0001
DaimlerChrysler AG
Filed, registered and published on 01/04/2003
Design 393-1, registered for
KOIPE CORPORACIÓN, S.L.
Design 1128-7, registered forSILHOUETTE International Schmied AG
First RCDs publishedFirst RCDs published
Design 989-4, registered for Intel Corporation
Design 1029-1, registered for
AUTOBAR PACKAGING SPAIN, S.A.
Barbera del Valles
Reason for Fee Fee Additional fee
(designs 2-10 each)
Additional fee (designs
11+ each) Registration €230 €115 €50 Publication €120 €60 €30 Deferred Publication €40 €20 €10 Invalidity Application €350 Appeal €800
Table of Fees
Application with immediate publication
(1 CD)
Application with deferment publication
(1 CD)
•
•
350 €350 €
270 €270 €
Examples:
www.oami.eu.int