THE PIONEERING EU TRADEMARK AND DESIGN PRACTICE Seminar on Intellectual Property Rights Budapest September 6, 2005 Jean-Jo Evrard NautaDutilh (Brussels)

1.KEY CHARACTERISTICS OF TRADEMARK AND DESIGN LAW IN THE EU Trademark and design are the only areas of law that are truly European. 1.1.Harmonisation of national laws on substantive points, including enforcement; 1.2.Creation of a Community trademark and design; 1.3.Centralisation litigation relating to CTM.

1.1.Harmonisation of national laws  First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trademarks  Directive 98/71/EC of 13 October 1998 on the legal protection of designs

Harmonisation on substantive points : - Signs of which a trademark/design may consist - Conditions of validity of a trademark/design - Scope of the trademark/design protection.

All Member States have transposed the directives into national law. If the wording of a national law differs from that of the directive, the national court is obliged to interpret its domestic law in light of the wording and purpose of the directive (consistent case law of the European Court of Justice).

If the scope of a particular provision is unclear, the national court may submit a request for a preliminary ruling to the European Court of Justice. If the national court is a supreme court, it is bound to request for a preliminary ruling. In other words, the ECJ is the “European supreme court”.

Future harmonisation Directive 2004/48/EC of 29 April 2004 "on the enforcement of intellectual property rights" This directive should be transposed by the Member States on April 30, 2006, at the latest.

Regulation Council Regulation n° 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights (O.J., 2.8/2003)

1.KEY CHARACTERISTICS OF TRADEMARK AND DESIGN LAW IN THE EU Trademark and design are the only areas of law that are truly European. 1.1.Harmonisation of national laws on substantive points, including enforcement; 1.2.Creation of a Community trademark and design; 1.3.Centralisation litigation relating to CTM.

1.2.Creation of a Community trademark/design  Council Regulation n° 40/94 on Community trademark  Council regulation n° 6/2002 on Community designs

The OHIM, based in Alicante, is in charge of : - the registration of the Community trademarks/designs, - the opposition procedures (only applicable to trademarks), - actions to revoke or to declare invalid Community trademarks.

The fundamental provisions of the Community trademark and design regulation are the same as those targeted by the harmonisation directives. Thus, there is an identity between the national laws and the Community system with regard to : - signs of which a trademark/design may consist, - conditions of validity of a trademark/design, - and their scope of protection.

1.KEY CHARACTERISTICS OF TRADEMARK AND DESIGN LAW IN THE EU Trademark and design are the only areas of law that are truly European. 1.1.Harmonisation of national laws on substantive points, including enforcement; 1.2.Creation of a Community trademark and design; 1.3.Centralisation litigation relating to CTM.

1.3.Centralisation of litigation relating to CTM At the Community level : The OHIM has jurisdiction in the following areas : - assessment of the absolute grounds of invalidity during the registration procedure, - assessment of the relative grounds of invalidity (only for trademarks), - actions to declare invalid or revoke a Community trademark.

(only for trademarks) Examiner Opposition Division Invalidity Division Boards of Appeal (Alicante) CFI (Luxemburg) ECJ (Luxemburg)

At the national level : Obligation, for the Member States, to designate a limited number of national courts with jurisdiction over Community trademark/design litigation: - Community trademark/design courts, and a - Community trademark/design court of appeal. Generally, one court per country.

The CTM courts have exclusive jurisdiction for all infringement actions based on a CTM or a CTD. In some cases, injunctions granted by a CTM court have effect in the whole EU. They can also submit a request for a preliminary ruling to the ECJ.

CTM National laws Courts of first instance Court of Appeal National CTMcourts OHMI Supreme Courts CFI ECJ

2.EFFECTS ON THE PRACTICE OF LAW - Necessity to know both Community and national case law

The practitioner must be familiar with: - The case law of the ECJ which is actually the only “Supreme Court” as far as trademarks/designs are concerned and which gives a ruling on two counts :  Answer to a preliminary question asked by a national Court,  Supreme Court in the framework of litigation before the OHIM - The case law of the OHIM and the CFI.

- The case law of the other Member States. This case law has the same weight as national case law since national laws have been harmonised.

How to be informed of the recent developments of EU trademark law : 4 websites are recommended :  ECJ and CFI  OHIM  ECTA (European Community Trademark Association)  Jeremy Phillips.