1. 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

2. TRADE MARKS PILA M2 Meeting, 2 6-27 October 20092

3. 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

4. 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

5. 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

6. 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 008484065

7. Signs capable for trade mark registration  combinations of colours  three-dimensional marks  hologram 7 CTM 008289738 CTM 002117034 CTM 008592081

8. 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

9. 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

10. Examples of non-registrable trade marks  olfactory trade mark 10 CTM application no 000521914 - registration refused CTM application 001122118 registration refused  trademarks abbreviated armorial bearings, flags, emblems  trademarks contrary to morality

11. 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

12. 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

13. 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

14. 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

15. 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

16. 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

17. Imitations of renown trade mark 17

18. DESIGNS 18

19. 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

20. What is a design? the product appearance which is visible Examples: 2 D3 D 20 textile ornamentation RCD 000212378-0012 furniture RCD 001109847-0005 salad bowls RCD 001143713-0021 ornamentation for paper napkins RCD 000932553-0014

21. 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

22. Design right protects only product appearance CRD 000295548-0001 CRD 000386990-0001 CRD 000418637-0001 CRD 000780713-0001 Design law protection may be given to a table leg appearance:

23. 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

24. 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.

25. 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 15.10.2001” NAIL FILES CRD No. 000609078-0002 Filing and registration date: 09.10.06

26. 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.

27. Lack of individual character under EU design law ballpoint pen RCD No. 000616107-0012 Date of filing 10/11/06 prior designs identified as the Tornado model, the Polish design No. 6751 Date of disclosure: 19/07/05 Decision of OHIM Invalidity Division of 03/12/2007

28. Other forms of design protection by IPR 3D trade mark/design Example: Coca Cola bottle CTM 002754067 CTM 004554994 CRD 000389101-0001

29. System of Protection Registration One year grace period

30. 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

31. 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: 159-161 Designer Raffaele Iannello „Woodoo Knife Block”

32. 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 www.pila-network.org 32