Overview of the Industrial Property protection in the EU The Community Trade Mark (CTM) System

1. Overview of the Industrial Property protection in the EU • The Community Trade Mark (CTM) System • The Community Design (CD) System Etienne Sanz de Acedo General Affairs & External Relations Department

2. 1. Overview

3. The Community Trade Mark (CTM) and Community Design The European Union currently has 450 million inhabitants

4. What is the Office for Harmonization in the Internal Market? (OHIM) EU Agency: Decentralised Legal personality Financial autonomy Tasks: Community Trade Mark (in operation since 1 April 1996) Community Design (in operation since 1 April 2003) SPAIN Alicante

5. Financial Controller Administrative Board Budget Committee

6. There are currently around 650 people working at OHIM Staff are recruited from all 25 Member States of the European Union Nationals of new member states are being recruited specific qualifications All staff are proficient in at least 2 languages of the European Union

7. 2. The Community Trade Mark (CTM) System

8. The Legal Framework Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs)Amendments to the Community Trade Mark Regulation

9. What is a Community Trade Mark (CTM)? A CTM is a sign for identifying and distinguishing goods or services valid across the European Community, registered with the OHIM in accordance with the conditions specified in the CTMR.

10. Which kind of signs may be registered as CTM? A CTM may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings (Art. 4 CTMR) Namely word marks including letters, numbers or combination of letters, numbers and words; figurative marks, three-dimensional marks; sound marks.

11. Words and numbers • CTM 883355 “Mozart” Figurative elements Others

12. Which kind of signs may not be registered as CTM? Absolute grounds for refusal (Art 7 CTMR) Relative grounds for refusal (Art 8 CTMR)

13. Advantages of the Community Trade Mark (CTM) : • 1º Unitary nature and protection of exclusive rights • The Community trade mark is unitary in nature , i.e. it is valid everywhere in the European Community, and gives proprietors exclusive rights enabling them to prohibit any third parties from using the sign in their commercial or industrial activities. • 2º Simplified formalities and management • a single application; • a single language of procedure; • a single administrative centre; • a single file to be managed.

14. Advantages of the Community Trade Mark (CTM) : 3º Reduced costs Filing a Community trade mark application is not expensive: EURO 975 for three classes of goods and services. The registration fee of EURO 1100 only needs to be paid once no obstacles remain to the trade mark being granted. 4º Option of claiming the seniority of national trade marks If applicants or proprietors of a Community trade mark already hold a prior identical national trade mark for identical goods and services they may claim the seniority of that mark. This allows them to preserve their prior rights even if they surrender their national trade mark or do not renew it.

15. Advantages of the Community Trade Mark (CTM) : 5º Right of priority The filing date accorded to a Community trade mark is recognised as constituting a date of priority for both national and international trade marks.This applies equally where applicants decide to convert their application or registered Community trade mark into national applications. 6º Obligation of use which is easy to meet A Community trade mark may be maintained in all the countries of the European Union by using it effectively and genuinely in a single Member State.

16. Advantages of the Community Trade Mark (CTM) : 7º Broadened legal protection which is accessible to all Infringement proceedings may be brought before the Community trade mark courts, which are national courts designated by the Member States to have jurisdiction in respect of Community trade marks. Decisions have effect throughout the EU. 8º An extended range of options for exercising rights under the trade mark The option to transfer and assign Community trade marks is essential for the management of companies. A Community trade mark may be transferred, licensed, right in rem …

17. Advantages of the Community Trade Mark (CTM) : 9º Community trade marks as prior rights in all the countries of the European Union Community trade marks constitute prior rights in relation to all subsequent trade marks and other conflicting rights in all Member States. 10º The prospect of enlargement The enlargement of the European Union by 10 new Member States (1 May 2004) resulted in a European Union of 25 Member States. The Community trade mark therefore is not only a gateway to the existing single market but also to a market in the process of expansion.

18. Does the CTM prevail over national trade marks? The CTM system leaves the national trade mark systems of Member States & the Benelux Trade Mark system unaffected. However, earlier national trade marks constitute earlier rights against a CTM, and vice versa.

19. @ Where and how to file ? With the national offices Directly to OHIM

20. Capacity and entitlement to register a Community Trade Mark (CTM) • Any person or business entity may apply for a CTM. (new Art. 5) • But for non European applicants, an European representative must be appointed (Art. 88 CTMR) • The appointed representative can be a OHIM professional representative or legal practitioner

21. The Community Trade Mark Procedure Filing Formalities examination 12 months Absolute grounds examination Search and translation Publication 30 months Opposition (inter partes proceeding) Third parties observations Registration Partial and total refusal

22. PUBLICATION NOTICE OF OPPOSITION ADMISSIBILITY EXAMINATION START OF WRITTEN PROCEDURE (observations from parties, proof of use, etc.) NOTIFICATION TO APPLICANT COOLING OFF PERIOD EXAMINATION AND DECISION ON OPPOSITION, COSTS AND APPLICATION FOR A CTM APPEAL

23. Exclusive use of the trade mark; Prevention of reproduction or imitation of a trade mark; Transferthe trade mark; Grant licenses for some of all of the goods or services in part or for the whole of the community; Oppose/Request the invalidity of the registration of similar community or national trade marks which could cause confusion to the consumer. In the whole territory of the European Union Rights conferred by a Community Trade Mark

24. BREAKDOWN BY APPLICATIONS PER YEAR - Total 411.778

25. BREAKDOWN PER COUNTRY OF ORIGIN - TOTAL 31.12.2003: 352.382 BREAKDOWN PER COUNTRY OF ORIGIN - TOTAL 31.12.2003: 352.382

26. 1st May 2004Enlargement

27. Art 142 (a) CTMR: 3 Rules Automatic extension Grandfathering of CTMs Respect of acquired rights in new Member States Legal Implications of enlargement

28. Automatic extension The main legal consequence for holders of CTMs filed before the date of accession (irrespective of whether they have also already been registered or not) is that their protection will be automatically extended to the territories of the new Member States. Legal Implications of enlargement: Practical Issues

29. Grandfathering of CTMs For examination on absolute grounds and cancellation actions on such grounds, only the situation existing prior to enlargement will be taken into account Absolute grounds for refusal/invalidity which become applicable merely because of accession will not be taken into account (irrespective of when the examination or the cancellation action actually takes place). Legal Implications of enlargement: Practical Issues

30. Grandfathering of CTMs Equally, a CTM filed before enlargement will not be subject to an opposition proceeding (except as explained hereafter) or subject to an invalidity proceeding if it is in conflict with an earlier national right registered, applied for or acquired in a newMember State prior to the date of accession. Legal Implications of enlargement: Practical Issues

31. Respect of acquired rights in new Member States To safeguard the rights of owners of national rights in the new Member States, it was decided that they can prohibit the use of the extended CTMs in the territory covered by the right. The extended CTM would be valid and enforceable in the entire EU, including the new Member State, but not against an earlier conflicting national right. The extended CTM would thus not only not be enforceable against an earlier national right, but the holder of such a right can prohibit the use of the extended CTM in his territory. Legal Implications of enlargement: Practical Issues

32. 3. The Community Design System

33. The legal framework • Council Regulation (EC) nº 6/2002 of 12 December 2001 on Community Designs (OJEC N° L3 of 5-1-02, p 1) • Commission Regulation (EC) nº2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs (OJEC N° L341 of 17-12-02, p 28)

34. Commission Regulation (EC) nº 2246/2002 of 16 December 2002 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) in respect of the registration of Community designs (OJEC N° L341 of 17-12-02, p 54)

35. Entry into Force • 6 March 2002 • Administrative Board of O.H.I.M. decided on 18 November 2002:first Filing date 01/04/2003, applications received as from 01/01/2003

36. “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the ... What is a design? lines colours shape texture contours materials ornamentation

37. What is a Product ? “Product”: any industrial or handicraft item, including inter alia • Parts intended to be assembled into a complex product • Packaging • Get-up • Graphic symbols • Typographic typefaces Excluded: computer programs

38. Protection Requirements: Novelty (Art. 5) • If no identical design has been made available to the public • before the UCD has first been made available to the public • before the filing or priority date of the RCD • Designs are deemed to be identical if their features differ only in immaterial details

39. Protection Requirements: Individual character (Art. 6) • If the overall impression produced on the informed user differs from the overall impression of designs made available to the public earlier • The degree of freedom of the designer in developing the design will be taken into consideration

40. Exclusion of protection • Non visible parts in normal use • Features of appearance of a product which are solely dictated by the technical function of the design • Interconnections (Art 4 (2)) (Art 8 (1)) (Art 8 (2))

41. The Community Design : a two tier protection system • The Unregistered Community Design (UCD) • The Registered Community Design (RCD)

42. Beginning ofprotection for UCDs • The UCD has been a reality since the 6th of March 2002 • All new creations disclosed for the first time in the EU since this date are protected by that right throughout the European Union

43. Beginning ofprotection for RCDs • The RCD has been a reality since the 1st of April 2003 • Administrative Board of O.H.I.M. decided on 18 November 2002:first Filing date 01/04/2003, applications received as from 01/01/2003

44. Registered or Unregistered Community Design Common elements • Unitary character (equal effect throughout the Community) • Definitions (design, product, complex product) • Protection requirements (novelty, individual character)

45. Registered or Unregistered Community Design Common elements • Exclusion of protection (non visible parts, technical functions, interconnections, against public policy or morality)

46. Registered or Unregistered Community Design Differences • Birth of right • RCD application for registration • UCD  making available to the public within the Community • Term of protection • RCD  5 years renewable 4 times • UCD  3 years from disclosure Max. 25 years

47. Registered or Unregistered Community Design Differences Rights conferred: (Art 19) • RCD - exclusive right to use and prevent: making, offering, putting on the market, importing, exporting, using or stocking for such purposes, products incorporating the design • UCD - right to prevent only if use results from copying

48. Unitary character (Art 1 (3)) • CD has equal effect throughout the EU • Registration, transfer, surrender, invalidity, prohibited use always for the entire EU

49. Unitary character & enlargement of the EU • New Article 110a CDR • Automatic extension of RCD’s and UCD’s (as from 1/5/2004) • Grand’fathering of earlier CD’s (invalidity and examination on new grounds) • Holder of earlier national rights in new Member States can prohibit use • If first disclosure outside EU, no UCD

50. Weaknesses of the UCD • If first disclosure in non EU country, UCD not available because no grace period • Uncertainty as to disclosure and therefore existence of right • Problems of proof (date, extent, first disclosure, etc) • Right only against “copies” • Limited term of 3 years