1. Comparison and overlap between trademark and design rights and the protection by unfair competition rules Presentation for IBA Conference, European Forum Dr. Jürgen Brandstätter Auckland, October 28th, 2004

2. Reference texts trademarks and designs First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the member states relating to trademarks (Trademark directive - TMD) Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (Design directive - DD) 2 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

3. I. WHAT KIND OF CREATION IS PROTECTABLE AS TRADEMARK OR DESIGN? THE PHYSICAL REQUIREMENTS 3 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

4. Trademarks: Article 2 TMD - Signs of which a trade mark may consist A trade mark may consist of any sign 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. 4 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

5. Capability of graphical representation Article 2 TMD mentions (not exhaustively!): words letters numerals designs shape of goods packaging 5 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

6. Colours? Even if they are abstract? The ECJ says basically yes (For the conditions of protections see ECJ C-104/01 Libertel) Sounds? Yes, if graphic representation is possible (See for the necessary requirements of graphical representation of music OHIM 4th BoA R 781/1999 Roar of a Lion) Smells? Still not, as no unambiguous graphic representation is possible for the moment but this may change in the future (See ECJ C-273/00) 6 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

7. Design: Article 1(a) DD Design means appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials and/or materials of the product itself and/or its ornamentation. 7 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

8. appearance of a product corporal relation to the product, solid state of aggregation NO design protection for Music, Sounds and Smells 8 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

9. II. NON-PHYSICAL REQUIREMENTS FOR PROTECTION 9 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

10. Trademark: beside formal and physical requirements, absolute grounds for refusal have to be examined ex officio a priori 10 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

11. lack of distinctiveness (Art. 2 second subset, Art. 3(1)(b) TMD) descriptiveness (Art. 3 (1)(c) TMD) sign consist exclusively of the shape which results from the nature of the goods or which is necessary to obtain a technical result or which gives substantial value to the good (Art 3 (1)(e) TMD) contrary to public policy or to morality (Art. 3 (1)(f) TMD) nature as to deceive the public (Art. 3 (1)(g) TMD) containing public emblems without authorization (Art. 3 (1)(h) TMD) 11 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

12. Design: ex officio and a priori examination only for formal requirements physical design requirements Contrariety to public policy and morality 12 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

13. Reasons for invalidity (a posteriori!) lack of individual character novelty -> design registration is quicker! 13 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

14. III. DISTINCTIVE AND INDIVIDUAL CHARACTER 14 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

15. Individual Character 15 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

16. Distinctive Character 16 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

17. Distinctive Character enables the consumer to distinguish the goods or services of one undertaking from those of other undertakings indication of origin 17 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

18. Individual Character design contains visible and original, non-functional elements indication of origin not necessary 18 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

19. Overlap of protection? all designs that may be registered trademarks may also be registered as a design but not vice-versa -> overlap of between trademark and design protection regarding appearances of products with distinctive character 19 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

20. IV. SCOPE OF TRADEMARK AND DESIGN PROTECTION 20 Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004

21. Trademark: Article 5 TMD Rights conferred by a trade mark 1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004 21

22. (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark. ….. Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004 22

23. 3. The following, inter alia, may be prohibited under paragraphs l and 2: (a) affixing the sign to the goods or to the packaging thereof; (b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; (c) importing or exporting the goods under the sign; (d) using the sign on business papers and in advertising. Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004 23

24. Design: Article 9 DD Scope of protection 1. The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression (…) Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004 24

25. Article 12 DD Rights conferred by the design right 1. The registration of a design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. (….) Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004 25

26. Both rights are…. exclusive right pre-requisites for exclusion by the elder right provided by Article 5 TMD and Article 9 and 12 DD are very similar: Design: do not produce a different overall impression to the informed user Trademark likelihood of confusion by the public -> big differences? Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004 26

27. The differences that makes the trademark really stronger than the design: Trademark: basically temporary unlimited protection Design: maximum protection period of 25 years Trademark: scope of protection may grow according to use on the market (dynamic right) Design: Scope of protection does not depend on use (static right) Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004 27

28. V. PROTECTION BY UNFAIR COMPETITION RULES Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004 28

29. Austrian Act against Unfair Competition Gesetz gegen den unlauteren Wettbewerb – UWG Art. 9 UWG protection of distinctive business signs Art. 1 UWG blanket clause: forbids any commercial activity infringing morality Presentation for IBA Conference Dr. Jürgen Brandstätter Auckland, October 28th, 2004 29

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