Practical Information about Community Trade Marks and Community Designs Imogen Fowler, Alicante

Practical Information about Community Trade Marks and Community Designs 1.Community Trade Marks –Introduction –Statistics –Registering difficult marks 2.Community Designs –Introduction –Statistics –Registration procedure –Cancellation actions

Community Trade Marks (CTMs)

CTMs - Introduction Advantages of the CTM: One registration for 25 countries in Europe Automatic extension to new EU member states from 1 May 2004 One application procedure with OHIM - lower costs (€2,075 total OHIM fees for 3 classes, = €83 per country) Only one representative necessary Use requirement fulfilled by use in 1 or 2 countries European wide injunction available Since 1 October 2004, link to Madrid system

CTMs - Introduction Scope:

CTMs - Statistics OHIM has received 396,643 CTM applications since 1996 Today, 225,932 registered CTMs Countries with most CTM filings: USA (24%), Germany, UK Taiwan 18 th, Hong Kong 22 nd, China not in top 30

CTMs - Statistics Likelihood of obtaining registration Out of 58,405 concluded oppositions 76% were settled and only 24% of oppositions came to a decision  Conclusion: High chances of registering CTMs

CTMs – Registering difficult marks Allusive or descriptive marks Examples: “DOUBLEMINT”, “BE CURLY” “WHITENING MULTI-ACTION”, “BIOMILD” OHIM practice has changed Not enough to show that a mark is not used in trade Meaning of the mark must be more than the mere sum of its parts Advice: check meaning of a term before filing, maybe add a logo

CTMs – Registering difficult marks Slogans Examples: “LOOKS LIKE GRASS…FEELS LIKE GRASS…PLAYS LIKE GRASS”, “REAL PEOPLE, REAL SOLUTIONS” Very difficult to register with OHIM, unless slogan contains house mark or is particularly fanciful Advice: slogans should contain house mark, be very fanciful or not be filed (rely on passing off or unfair competition law)

CTMs – Registering difficult marks Three dimensional marks Examples:

CTMs – Registering difficult marks Three-dimensional marks Almost impossible to register product shapes or package shape marks with OHIM since ECJ judgments in Mag and the Washtablet cases Only if mark is exceptionally fanciful or acquired distinctiveness can be proven, registration may be obtained Advice: Shift protection of product and package shapes to Community Design

Community Designs (CDs)

CDs – Introduction Introduction of the CD with Council Regulation EC 6/2002 of 12 December 2001 A design is the “appearance” of a product or a part of it Two types of CD: registered and unregistered CD Unitary right with effect throughout the European Union – now 25 countries

CDs – Introduction Unregistered CD Protection applies automatically to all qualifying designs disclosed to the public in the EU after 6 March 2002 Protection lasts for three years No formalities required Disadvantage: hard to prove, must prove copying in infringement action

CDs – Introduction Registered CD Protection available for qualifying designs by application to OHIM in Alicante One application = lower costs (OHIM fees €350 per design) First filing dates accorded 01 April 2003 Protection initially granted for five years Four renewals are possible giving protection for up to 25 years

CDs – Introduction What can be protected with a CD? The appearance of a product or part of it –packaging –get-up –graphic symbols –typographical typefaces

CDs – Introduction Containers

CDs – Introduction Product shapes

CDs – Introduction Logos (class 99)

CDs – Introduction What cannot be protected with a CD? Computer programs Non-visible component parts of a complex product Designs dictated by their technical function Designs of interconnections (must-fit), except for modular systems Designs contrary to public policy or morality

CDs – Statistics OHIM has received 18,778 CD applications since 1 April a total of 72,015 separate design applications Countries with most CD filings: Germany (25%), Italy, USA Hong Kong 14 th, Taiwan 15 th, China not in top 30

CDs – Statistics Likelihood of obtaining registration Out of 72,015 CD applications, more than 90% are registered as CDs  Conclusion: Very high chances of registering CDs

CDs – Registration procedure Steps: Filing of CD application OHIM checks formalities (views, infringement of public morality) Registration of design Publication of registration

CDs – Registration procedure CD Applications Three types of applications available: –Applications for one design –Multiple applications (so long as same class) –Applications with deferred publication (up to 30 months)

CDs – Registration procedure CD Applications Up to seven views of each design –Can be drawings or photographs, colour or black and white –Reference views:

CDs – Registration procedure Conditions for protection: 1.Novelty 2.Individual Character  OHIM does not examine these conditions at the application stage, but only in cancellation proceedings

CDs – Cancellation actions Grounds for cancellation: Design does not meet requirements of novelty or individual character Owner is not the real owner Conflict with an earlier registered design Design infringes trade mark or copyright Unauthorised use of emblems and flags

CDs – Cancellation actions Cancellation actions before OHIM: Only relate to registered CDs (unregistered CD actions must be before the Courts) Only 12 to date Jurisprudence still developing Appeals possible to CFI and ECJ

CDs – Cancellation actions First cancellation action before OHIM Spanish design vs. Registered CD

CDs – Cancellation actions Anaesthetic swab case Spanish design vs. Registered CD

CDs – Cancellation actions OHIM found: Degree of designer freedom limited Swabs require a stem and a head Not identical designs CD NOT in conflict with earlier design  Conclusion: Case law developing well

Any questions? Imogen Fowler Solicitor Lovells Bilbao 1, 5° piso Alicante Spain Tel