3The Community Trade Mark (CTM) and Community Design The European Union currently has 450 million inhabitants
4What is the Office for Harmonization in the Internal Market? (OHIM)EU Agency: DecentralisedLegal personalityFinancial autonomyTasks: Community Trade Mark(in operation since 1 April 1996)Community Design(in operation since 1 April 2003)SPAINAlicante
6There are currently around 650 people working at OHIM Staff are recruited from all 25 Member States of the European UnionNationals of new member states are being recruitedspecific qualificationsAll staff are proficient in at least 2 languages of the European Union
26The Legal FrameworkCouncil 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
27What 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.
28Which 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.
29Words and numbersCTM “Mozart”Figurative elementsOthers
30Which kind of signs may not be registered as CTM? Absolute grounds for refusal (Art 7 CTMR)Relative grounds for refusal (Art 8 CTMR)
31Advantages of the Community Trade Mark (CTM) : 1º Unitary nature and protection of exclusive rightsThe 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 managementa single application;a single language of procedure;a single administrative centre;a single file to be managed.
32Advantages of the Community Trade Mark (CTM) : 3º Reduced costsFiling 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 marksIf 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.
33Advantages of the Community Trade Mark (CTM) : 5º Right of priorityThe 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 meetA 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.
34Advantages of the Community Trade Mark (CTM) : 7º Broadened legal protection which is accessible to allInfringement 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 markThe 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 …
35Advantages of the Community Trade Mark (CTM) : 9º Community trade marks as prior rights in all the countries of the European UnionCommunity trade marks constitute prior rights in relation to all subsequent trade marks and other conflicting rights in all Member States.10º The prospect of enlargementThe 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.
36Does 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.
37Capacity 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
38Where and how to file a CTM application Through National OfficesDirectly at OHIMPersonallyFaxMailE-filing
39The Community Trade Mark Procedure FilingFormalities examination12 monthsAbsolute grounds examinationSearch and translationPublication30 monthsOpposition (inter partes proceeding)Third parties observationsRegistrationPartial and total refusal
40PUBLICATION NOTICE OF OPPOSITION ADMISSIBILITY EXAMINATION START OF WRITTEN PROCEDURE (observations from parties, proof of use, etc.)NOTIFICATION TO APPLICANTCOOLING OFF PERIODEXAMINATION AND DECISION ON OPPOSITION, COSTS AND APPLICATION FOR A CTMAPPEAL
41Rights conferred by a Community Trade Mark Exclusive use of the trade mark;Prevention of reproduction or imitation of a trade mark;Transfer the 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
43Legal Implications of enlargement Art 142 (a) CTMR: 3 RulesAutomatic extensionGrandfathering of CTMsRespect of acquired rights in new Member States
44Legal Implications of enlargement: Practical Issues Automatic extensionThe main legal consequence for holders of CTMs filedbefore the date of accession (irrespective of whetherthey have also already been registered or not) is thattheir protection will be automatically extended to theterritories of the new Member States.
45Legal Implications of enlargement: Practical Issues Grandfathering of CTMsFor examination on absolute grounds and cancellationactions on such grounds, only the situation existingprior to enlargement will be taken into accountAbsolute grounds for refusal/invalidity which become applicablemerely because of accession will not be taken into account(irrespective of when the examination or the cancellation actionactually takes place).
46Legal Implications of enlargement: Practical Issues Grandfathering of CTMsEqually, a CTM filed before enlargement will not be subject to anopposition proceeding (except as explained hereafter) or subjectto an invalidity proceeding if it is in conflict with an earlier nationalright registered, applied for or acquired in a newMember Stateprior to the date of accession.
47Legal Implications of enlargement: Practical Issues Respect of acquired rights in new Member StatesTo safeguard the rights of owners of national rights in the newMember States, it was decided that they can prohibit the use ofthe extended CTMs in the territory covered by the right.The extended CTM would be valid and enforceable in the entireEU, including the new Member State, but not against an earlierconflicting national right.The extended CTM would thus not only not be enforceableagainst an earlier national right, but the holder of such a right canprohibit the use of the extended CTM in his territory.
54Commission Regulation (EC) nº2245/2002 The legal frameworkCouncil Regulation (EC) nº 6/2002 of 12 December 2001 on Community Designs(OJEC N° L3 of , p 1)Commission Regulation (EC) nº2245/2002of 21 October 2002 implementing CouncilRegulation (EC) No 6/2002 on Communitydesigns(OJEC N° L341 of , p 28)
55Commission 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 , p 54)
56Entry into Force6 March 2002Administrative Board of O.H.I.M. decided on 18 November 2002: first Filing date 01/04/2003, applications received as from 01/01/2003
57lines colours shape texture contours materials What is a design?“design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the ...linescoloursshapetexturecontoursmaterialsornamentation
58Excluded: computer programs What is a Product ?“Product”: any industrial or handicraft item, including inter aliaParts intended to be assembled into a complex productPackagingGet-upGraphic symbolsTypographic typefacesExcluded: computer programs
59Protection Requirements: Novelty (Art. 5) If no identical design has been made available to the publicbefore the UCD has first been made available to the publicbefore the filing or priority date of the RCDDesigns are deemed to be identical if their features differ only in immaterial details
60Protection 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 earlierThe degree of freedom of the designer in developing the design will be taken into consideration
61Exclusion of protection Non visible parts in normal useFeatures of appearance of a product which are solely dictated by the technical function of the designInterconnections(Art 4 (2))(Art 8 (1))(Art 8 (2))
62The Community Design : a two tier protection system The Unregistered Community Design (UCD)The Registered Community Design (RCD)
63Beginning of protection for UCDs The UCD has been a reality since the 6th of March 2002All new creations disclosed for the first time in the EU since this date are protected by that right throughout the European Union
64Beginning of protection for RCDs The RCD has been a reality since the 1st of April 2003Administrative Board of O.H.I.M. decided on 18 November 2002: first Filing date 01/04/2003, applications received as from 01/01/2003
65Registered or Unregistered Community Design Common elementsUnitary character(equal effect throughout the Community)Definitions(design, product, complex product)Protection requirements(novelty, individual character)
66Registered or Unregistered Community Design Common elementsExclusion of protection(non visible parts, technical functions, interconnections, against public policy or morality)
67Registered or Unregistered Community Design DifferencesBirth of rightRCD application for registrationUCD making available to the public within the CommunityTerm of protectionRCD 5 years renewable 4 timesUCD 3 years from disclosureMax. 25 years
68Registered or Unregistered Community Design DifferencesRights 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 designUCD - right to prevent only if use results from copying
69Unitary character CD has equal effect throughout the EU (Art 1 (3))CD has equal effect throughout the EURegistration, transfer, surrender, invalidity, prohibited use always for the entire EU
70Unitary character & enlargement of the EU New Article 110a CDRAutomatic 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 useIf first disclosure outside EU, no UCD
71Weaknesses of the UCDIf first disclosure in non EU country, UCD not available because no grace periodUncertainty as to disclosure and therefore existence of rightProblems of proof (date, extent, first disclosure, etc)Right only against “copies”Limited term of 3 years
72Advantages of the RCDA strong right with a unitary character in the entire EUEasy, fast and cheap filing and registration procedure (one language, one application, one fee system; multiple applications, deferred publication)Community exhaustionGrace period (12 months)Long term of protection (up to 25 years)
74How to obtain a registration of your design at the OHIM
75Who can fileAny natural or legal person without any restrictions as to nationality or state of incorporationWho has the rightRight vests in the designer or his successor in titleJoint ownershipDesigns developed by employees
76Where to fileNational OfficesOHIMPersonallyMailFaxE-filing
773 MONTHS Community Design Workflow Mail Room Mail Dispatch Examination RegistrationPublicationDeferment
78Examination Mainly formalities elements provided in application (Art 45)Mainly formalitieselements provided in applicationprioritiesprofessional representativeGrounds for non-acceptancenot a design applicationagainst public policy and morality
79X _____________________________ Examination No examination on : verification of protection requirementsrelative groundswhether spare part or notwhether the applicant is entitledXProcedure should be fast and user-friendly_____________________________
80Multiple Applications (Art 37)Multiple designs allowed in one application, provided products are in the same class (except ornamentation)FeaturesNo upper limit for number of designsSaves costs for applicantIn case of multiple classes, invitation to divideEach design included will have its own independent life (deferred or not, invalidity, surrender, renewal, etc …)
83Deferred publication To be requested when application is filed (Art 50)To be requested when application is filedMaximum 30 months as from filing or priority dateDeferment may be interrupted at any time by the applicantMay file a specimen if it is a two dimensional designExcept for very limited information, the designs remain secret until holder decides to publish