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

1. Overview

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

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) What is the Office for Harmonization in the Internal Market? (OHIM) What is the Office for Harmonization in the Internal Market? (OHIM) SPAIN Alicante

Budget CommitteeAdministrative Board Financial Controller

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

2. The Community Trade Mark (CTM) System

The Legal Framework Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark 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 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 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

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. CTMR

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.

Words and numbers Figurative elements Others CTM “Mozart”

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

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.

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.

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.

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 …

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.

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.

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

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

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

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

Rights 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

BREAKDOWN BY APPLICATIONS PER YEAR - Total

BREAKDOWN PER COUNTRY OF ORIGIN - TOTAL : BREAKDOWN PER COUNTRY OF ORIGIN - TOTAL :

1 st May 2004 Enlargement

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

Legal Implications of enlargement: Practical Issues 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 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 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 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.

3. The Community Design System

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

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 , p 54)

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

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

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

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 Protection Requirements: Novelty (Art. 5)

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 Protection Requirements: Individual character (Art. 6)

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) )

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

Beginning of protection 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

Beginning of protection 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

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

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

Registered or Unregistered Community Design 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 Differences Max. 25 years

Registered or Unregistered Community Design 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 Rights conferred: Differences (Art 19)

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

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

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 Weaknesses of the UCD

A strong right with a unitary character in the entire EU Easy, fast and cheap filing and registration procedure (one language, one application, one fee system; multiple applications, deferred publication) Community exhaustion Grace period (12 months) Long term of protection (up to 25 years) Advantages of the RCD

The Registered Community Design and OHIM

How to obtain a registration of your design at the OHIM

Any natural or legal person without any restrictions as to nationality or state of incorporation Right vests in the designer or his successor in title Joint ownership Designs developed by employees Who can file Who has the right

Where to file ? With the national offices Directly to OHIM

Mail Room Mail Dispatch Examination Registration PublicationDeferment Community Design Workflow

Mainly formalities elements provided in application priorities professional representative Grounds for non-acceptance not a design application against public policy and morality Examination (Art 45)

_____________________________ Procedure should be fast and user-friendly No examination on : verification of protection requirements relative grounds whether spare part or not whether the applicant is entitled Examination

Multiple designs allowed in one application, provided products are in the same class (except ornamentation) Features –No upper limit for number of designs –Saves costs for applicant –In case of multiple classes, invitation to divide –Each design included will have its own independent life (deferred or not, invalidity, surrender, renewal, etc …) Multiple Applications (Art 37)

A multiple application (class 06)

Not a multiple application

To be requested when application is filed Maximum 30 months as from filing or priority date Deferment may be interrupted at any time by the applicant May file a specimen if it is a two dimensional design Except for very limited information, the designs remain secret until holder decides to publish Deferred publication (Art 50)

Publication of a deferred design

Country of origin Figures

Classification Figures Classes

class 09 : Packaging class 12 : Transport or hoisting class 06 : Furnishing class 07 : Household goods class 14 : Recording and communication equipment Industries

average number of designs in a multiple application = 6,15 Figures

Some examples of designs already registered by OHIM since 1 April 2003 Source: OHIM’s CD Bulletin

Casio Computer Company Filed, registered and published on 01/04/2003 First RCD published

DaimlerChrysler AG Filed, registered and published on 01/04/2003

Design 393-1, registered for KOIPE CORPORACIÓN, S.L. Design , registered for SILHOUETTE International Schmied AG First RCDs published

Design 989-4, registered for Intel Corporation Design , registered for AUTOBAR PACKAGING SPAIN, S.A. Barbera del Valles

Table of Fees

Application with immediate publication (1 CD) Application with deferment publication (1 CD) 350 € 270 € Examples: