Trademark protection Overview by Associate professor Bengt Domeij

What is intellectual property? Not physical objects, but technical functions, characteristic features of a product or shapes and individual expressions. These can be integrated in a product and can make the product valuable, but they are not any individual product or service. The essence of an IPR is the possibility to exclude others. What transfers of ownership occur when someone sends a letter? What IPRs are included in a book?

The universe of IPRs Copyrights/database rights (unregistered, personal or artistic expression) Patents (technical product or process) Trademarks (any sign capable of being represented graphically) Design rights (appearance of a product or two- dimensional pattern) Plant variety rights Supplementary protection certificates for pharmaceuticals and plant protection agents Geographical indications Integrated chip protection (Trade secrets/confidential information)

History of IPRs Copyrights – authors and bookprinters Trademarks – Guilds Patents – Privilegies awarded by Crown Design rights – 20th century Continously increased importance of IPR, globalization and easier manufacturing.

Consequences of IPRs Monopoly profits Shift from price competition to competition by technical/design/image/artistic development Controversies: least developed countries, file-sharing on the Internet.

IPR institutions  National patent offices (grant of national rights)  National courts (validity and infringement of national and EU-IPRs)  Office of Harmonization in the Internal Market (OHIM) (grant of EU trade marks and designs)  Community and national Plant Variety Office (grant of community/national plant v. rights)  The European Patent Office (grant of EPO- patents, that bundle of national patents)

Paris Convention for the Protection of Industrial Property, 1883 “National treatment” - intellectual property systems of any contracting state are accessible to the nationals of other states party to the Convention. “Priority rights” - an applicant from one contracting State shall be able to use its first filing date (in one of the contracting State) as the effective filing date in another contracting State, provided that he files another application within 6 (for industrial designs and trademarks) or 12 months (for patents and utility models).industrial designstrademarksutility models

Copyright ”Literary or aristic work” including: Texts Computer programs Music and drama Film, photos, paintings Architecture and applied art Need for personal creation

Copyright Software directive: “It has to be made clear that only the expression of a computer program is protected and that ideas and principles which underlie any element of a program, including those which underlie its interfaces, are not protected by copyright under this Directive”

Personal creation ”Certain degree of independence and originality” Swedish Supreme Court T218-02

Flag of northern Sweden

Design-registrations

Trademarks Words, symbols or shape of products Only for a category of products Only for use in trade Protection against buyer confusing the commercial origin Also goodwill-protection Purpose – The market for lemons, Akerlof

Registration Nationally or at OHIM In one or more of 45 product and service classes. Chose what the trademark will be used for, invalid after 5 years in classes for which it is not used.

Swedish trade mark registrations for Coca-cola TMApplication no Reg. noClasses COCA-COLA1900/ COCA-COLA1900/ , 29, 30, 32, CHERRY COCA-COLA…… COCA-COLA IS THE MUSIC …… ALWAYS COCA-COLA…… EAT FOOTBALL SLEEP FOOTBALL DRINK COCA-COLA COCA-COLA LIFE TASTES GOOD COCA-COLA FRIDGE MATE COCA-COLA LIGHT FRIDGE Coca-Cola Disfruta Aquí y ahora Etc, etc

Key criteria Descriptiveness – same products, first registration Graphic representation

Non-descriptive GenericPen DescriptiveYellow SuggestivCoppertone (tanning oil) ArbitraryH&M Non-existantExxon Suggestive TM are normally possible to register, (BABY-DRY).

Colour PMS Whos?

Infringement - confusingly similar Average buyer Similar products Similar trademarks Combination of the two

Use of goodwill even though openness about the fake

Goodwill protection

”Absolut” Good-will irrespective of confusion, for the most well-known trade marks, qacross all categories ”Absolut nöje” Saturday nights at TV3 was not allowed.

Mention of trademark, if in legitimate purpose for spare parts, trade, etc.

Philips-målet Article 3 (1)(e) of the Directive cannot be overcome by establishing that there are other shapes which allow the same technical result to be obtained. Signs consisting exclusively of the shape of a product necessary to obtain a technical result is preclude from registration, because trade mark monopoly on such marks would illegitimately restrict competitors trading in identical or similar goods which incorporated such a function.

Degeneration – Jeep Hoover, etc. EC Court of Justice has tried the Swedish treade mark ”Bostongurka”. It rul,ed that it was descriptive for the commercial origin, because managers of stores recognized who the manufacturer were. Not just a kind of product.

Use obligation Invalid if not used for the last five years Licensable – minimum royalty, royalty based on sales Infringement by importation Parallell importation from other EU countries allowed Loss of goodwill – Dior-case