RED DE PROPIEDAD INTELLECTUAL E INDUSTRIAL EN LATINOAMÉRICA PILA-Network is a project co-funded by the European Union in the framework of the ALFA programme MODULE 2 IP BASICS Trade Marks and Designs

TRADE MARKS PILA M2 Meeting, October 20092

Sources of trade mark protection  National level  national regulations on trademarks (following Community Directive)  law combating unfair competition  case law (passing-off)  European Union  Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark )replaces Council Regulation No 40/94 of 20 December 1993 on Community trademark  International level  Paris Convention  TRIPS Agreement  Madrid System for the International Registration of Marks 3

Definition of trade mark  any sign, provided that it is capable of distinguishing the owner's goods or services from the goods or services of others  eligibility for trade mark protection:  distinctive power  susceptible of being graphically represented 4

Function of a trade mark  identification of source of goods and services  quality function  advertising and promotional tool  carrier of renown  key element of a company business strategy 5

Signs capable for trade mark registration  word marks including letters, numbers or combination of letters, numbers and words  figurative marks, whether or not including words 6 Registered CTM

Signs capable for trade mark registration  combinations of colours  three-dimensional marks  hologram 7 CTM CTM CTM

Types of trade marks  service marks that identifies and distinguishes the source of a service not a product  well-know trademarks, that are considered to be well- know on the market and as result benefit from stronger protection  collective marks, which are marks used to distinguish goods or services produced or provided by members of a cooperative or an association  quality mark, which distinguish goods or services that comply with number of standards and have been certified by certifying authority 8

Exclusion from trade mark protection  trade marks with no distinctive nature  marks made up exclusively of signs that have become usual or common to designate the products or services they refer to  marks made up exclusively of signs used in trade to designate a sort, the quality, the quantity, the destination, the value, the geographic origin or the time of production of the product or the provision of the service, or any other feature of the product or service  trade mark meeting relative grounds for refusal 9

Examples of non-registrable trade marks  olfactory trade mark 10 CTM application no registration refused CTM application registration refused  trademarks abbreviated armorial bearings, flags, emblems  trademarks contrary to morality

Ways of obtaining trade mark protection  formal right to a trade mark granted via registration  national  regional  international  use of a trade mark in the course of trade  protection of well-know trade marks  protection against unfair competition  passing-off  protection against detrimental exploitation of the trademark renown  protection against deception of customers, analogy to the product, trademark or trademark advertisement of another 11

Procedures of trade mark registration  national registration  made through filing application for a trademark registration to the national patent office  examination of the trademark registration requirement  payment of trade mark registration fees  right to the granted trademark covers territory only the country, where trade mark was registered  right to the granted trade mark covers goods and services for which the trade mark was registered 12

Procedures of trade mark registration  regional registration (European Union)  made through filing single application for a trademark registration to the EU Office for Harmonization in the Internal Market (OHIM) under the Council Regulation on a Community trademark.Office for Harmonization in the Internal Market  application for a Community trademark filed either directly in OHIM, or at the central industrial property office of a Member State (in the Benelux countries - at the Benelux Office for Intellectual Property)Benelux Office for Intellectual Property  examination of the trademark registration requirement  payment of Community trade mark fees  Community-wide protection of trademark 13

Procedures of trade mark registration  „international” registration  made through filing single application for a trademark registration to the International Bureau of World Intellectual Property Organization (WIPO) under the Madrid System for the International Registration of Marks  international procedure to obtain multi-national trademark protection and international registration by the way of a centralized registration system 14

The scope of right to a trade mark  exclusive right to use a trade mark for registered goods or services throughout the territory for trade mark was registered  right to prevent non-authorized third parties from using an identical or similar mark for products or services, which are:  identical or similar to the ones under the registered mark  creating likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trademark 15

The scope of right to a renown trade mark  exclusive right to use a trade mark for any goods and services on the the territory for trade mark was registered  right to prevent non-authorized third parties  taking unfair advantage to the user from the renown of trade mark  use that is detrimental to the distinctive character or the repute of the trademark  use that dilute the famous trade mark through:  blurring of famous trade mark  tarnishment of famous trade mark 16

Imitations of renown trade mark 17

DESIGNS 18

Sources of design protection  National level  national regulations on designs (following the Council Drective)  law combating unfair competition  case law (passing-off)  European Union  Council Regulation (EC) No6/2002 of 12 December 2001 on Community Design  International level  Paris Convention  TRIPS Agreement

What is a design? the product appearance which is visible Examples: 2 D3 D 20 textile ornamentation RCD furniture RCD salad bowls RCD ornamentation for paper napkins RCD

What is excluded from design protection? features which are primarily (solely) functional Example: table legs as such, i.e. the functional part of a table which is attached to the table top, so that it stands stably

Design right protects only product appearance CRD CRD CRD CRD Design law protection may be given to a table leg appearance:

Requirements for protection of designs the prerequisites of design protection are varying in different countries a new or original independently created industrial design –a minimum requirement provided in Art. 25 of TRIPS

Requirements for design protection according to EU law NOVELTY A design is new if no identical design was made available to the public before the priority date. Designs are deemed to be identical if their features differ only in immaterial details.

Lack of novelty under EU design law An advertising printed material containing a price list for different types of nail files manufactured by another company, dated with “valid from ” NAIL FILES CRD No Filing and registration date:

Requirements for design protection according to EU law INDIVIDUAL CHARACTER A design has an individual character if the overall impression it makes on an informed user differs considerably from the overall impression made by designs available earlier. In assessing individual character, the designer's degree of freedom will be taken into consideration.

Lack of individual character under EU design law ballpoint pen RCD No Date of filing 10/11/06 prior designs identified as the Tornado model, the Polish design No Date of disclosure: 19/07/05 Decision of OHIM Invalidity Division of 03/12/2007

Other forms of design protection by IPR 3D trade mark/design Example: Coca Cola bottle CTM CTM CRD

System of Protection Registration One year grace period

Unregistered Communnity Design Term of protection: 3 yrs from the date the design was made available to the public within Community Right to prevent others from using it only if the contested use results from copying

Other forms of design protection by IPR Copyright/Design Copyright protection granted to a work of industrial design (District Court of Florence, 10 July 2007) source: F. Mattina Journal of Intellectual Property Law & Practice.2008; 3: Designer Raffaele Iannello „Woodoo Knife Block”

RED DE PROPIEDAD INTELLECTUAL E INDUSTRIAL EN LATINOAMÉRICA PILA-Network is a project co-funded by the European Union in the framework of the ALFA programme Thank you for your attention 32