European Design and Trademark Law. Formation

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1 European Design and Trademark Law Formation Ulf Maunsbach Associate Professor, LLD. Faculty of Law University of Lund

2 European (full)harmonisation The Trademark Directive; First Council Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks -> Directive 2008/95/EC -> 2015/2436/EU of 16 December Harmonisation on a national level The Trademark Regulation; Council Regulation 40/94 on the Community Trade Mark > Regulation 207/2009 on the Community trade mark, amended by regulation 2015/2424 Harmonisation within EU one Union, one Right

3 Directive 2015/2436/EU Substantive trademark law focus (almost) All articles are relevant

4 Regulation 207/2009 TITLE I - GENERAL PROVISIONS TITLE II - THE LAW RELATING TO TRADE MARKS TITLE III - APPLICATION FOR COMMUNITY TRADE MARKS TITLE IV - REGISTRATION PROCEDURE TITLE V - DURATION, RENEWAL, ALTERATION AND DIVISION OF COMMUNITY TRADE MARKS TITLE VI - SURRENDER, REVOCATION AND INVALIDITY TITLE VII APPEALS TITLE VIII - COMMUNITY COLLECTIVE MARKS TITLE IX PROCEDURE TITLE X - JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING TO COMMUNITY TRADE MARKS TITLE XI - EFFECTS ON THE LAWS OF THE MEMBER STATES TITLE XII - THE OFFICE TITLE XIII - INTERNATIONAL REGISTRATION OF MARKS TITLE XIV - FINAL PROVISIONS

5 Regulation 207/2009 TITLE I - GENERAL PROVISIONS TITLE II - THE LAW RELATING TO TRADE MARKS TITLE III - APPLICATION FOR COMMUNITY TRADE MARKS TITLE IV - REGISTRATION PROCEDURE TITLE V - DURATION, RENEWAL, ALTERATION AND DIVISION OF COMMUNITY TRADE MARKS TITLE VI - SURRENDER, REVOCATION AND INVALIDITY TITLE VII APPEALS TITLE VIII - COMMUNITY COLLECTIVE MARKS TITLE IX PROCEDURE TITLE X - JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING TO COMMUNITY TRADE MARKS TITLE XI - EFFECTS ON THE LAWS OF THE MEMBER STATES TITLE XII - THE OFFICE TITLE XIII - INTERNATIONAL REGISTRATION OF MARKS TITLE XIV - FINAL PROVISIONS

6 Regulation 207/2009 TITLE I GENERAL PROVISIONS, art 1-3 TITLE II THE LAW RELATING TO TRADE MARKS, 4-24 TITLE V DURATION, RENEWAL, ALTERATION AND DIVISION OF COMMUNITY TRADE MARKS, TITLE VI SURRENDER, REVOCATION AND INVALIDITY, 50-57

7 A trademarks lifespan Formation Scope (D: art 3) (R: art 4) Grounds for refusal = Exceptions (D: art 4, 5) (R: art 7, 8) Exercise Infringements (D: art 10) (R: art 9) Limitations (D: art 14, 15) (R: 12, 13 & 22) Termination Revocation (D: art 16, 19 & 20) (R: art 15, 51)

8 Formation Registration Scope of protection Grounds for refusal

9 Registration National registration PRV, The Swedish Patent and Registration Office Registration of Community Trademark EUIPO International Filings PRV/WIPO Calculation fees

10 Formation Registration Scope of protection Grounds for refusal

11 Scope of Protection - What is a Sign? CTMR art 4 TMD art 3 A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other undertakings; and (b) (b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

12 Scope of Protection - What is a Sign? Old version CTMR art 4; TMD art 2 Signs of which a trade mark/community 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.

13 Any sign Particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging

14 C-421/13 (Apple)

15 Representability Capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. Non-traditional marks: Olfactory mark Acoustic marks Colors and other non-traditional marks

16 Acoustic marks - C-283/01 - Shield Mark In the case of a sound sign, those requirements are not satisfied when the sign is represented graphically by means of a description using the written language, such as an indication that the sign consists of the notes going to make up a musical work, or the indication that it is the cry of an animal, or by means of a simple onomatopoeia, without more, or by means of a sequence of musical notes, without more. On the other hand, those requirements are satisfied where the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals.

17 Acoustic marks One Swedish example HEMGLASS. PBR No. 95:491

18 Colors Libertel; C 104/01 A colour per se, not spatially delimited, may, in respect of certain goods and services, have a distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of Directive 89/104/EEC, provided that, inter alia, it may be represented graphically in a way that is clear, precise, selfcontained, easily accessible, intelligible, durable and objective. The latter condition cannot be satisfied merely by reproducing on paper the colour in question, but may be satisfied by designating that colour using an internationally recognised identification code.

19 Colors KWS Kleinwanzlebener T-173/00 British Petroleum CTM nr 1991

20 Olfactory mark Ralf Sieckmann v Deutsches Patent- und Markenamt. Case C-273/00 Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

21 Capable of distinguishing Capable of distinguishing the goods or services of one undertaking from those of other undertakings By nature Or by use Goods and Services, Nice Classification WIPO C-207/10 (IP-translator) Art TMD needs to be read together (lack of distinguishing character = grounds for refusal)

22 Questions? Ulf Maunsbach Associate Professor, LLD. Faculty of Law University of Lund

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