Intellectual Property Law in the Information Society

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Damon Cole
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1 Intellectual Property Law in the Information Society Copyright and Related Rights Jarle Roar Sæbø

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4 Adwords Various kinds of use? HP buying HP as an adword to generate traffic to HP s sites Competitor buying HP as an adword to generate traffic to competitor s site Retailers buying HP as an adword to sell HP products Retailers buying HP as an adword to (also) sell competitor s products Competitor buying HP as an adword to slander Third parties buying HP as an adword to sell counterfeits Dissatisfied customer buying HP as an adword to slander Hypothetically dissatisfied customer buying HP as an adword to slander 4

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6 Introduction Purpose and characteristics of trademark law International Law Paris Convention (WIPO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (WTO) The Madrid Agreement and Protocol (WIPO) Nice Classification System (WIPO) European Trademark Law Trademark Directive (TMD) Directive 2008/95/EC of 22 October 1998 Community Trademark Regulation (CTMR) Council Regulation No 207/2009 of 26 February 2009 The further presentation: Procedural and substantive law 6

7 Trademarks - Definition Trademark Directive article 2: A trade mark 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. Represented Graphically Scent: Sieckmann (ECJ 283/00): clear, precise, self-contained, easily accessible, intelligible, durable and objective Colour: Libertel (ECJ C-104/01): Requirement can be fulfilled by ways of commonly recognized identification code 7

8 CTMR Grounds for Refusal CTMR article 7 (a) signs which cannot constitute a trade mark Refers to CTMR article 2 8

9 CTMR Grounds for Refusal CTMR article 7 (b) Trade marks which are devoid of any distinctive character Distinctiveness acquired by use (CTMD 7(3) and TDM 3(3)) What it means Europolis (ECJH C-108/05) Lindt and Sprüngli (ECJ C98/11 P) 9

10 CTMR Grounds for Refusal CTMR article 7 (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services The interest of competition. 10

11 CTMR Grounds for Refusal CTMR article 7 (f) trade marks which are contrary to public policy or to accepted principles of morality Screw you (Case R 496/2005-G) General Court on PAKI (T-526/09) In UK Hallelujah was rejected as mark for women s clothes in

12 CTMR Grounds for Refusal CTMR article 7 (g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service Consumer interests Not widely used as basis for rejection, because Elizabeth Emanuel (ECJ C-259/04) 12

13 The rights granted, TMD Article 5 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: (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; the likelihood of confusion includes the likelihood of association between the sign and the trade mark. 13

14 The rights granted, TMD Article 5 Likelihood of confusion is a very practical question Concept of average user Additional requirement for breach: detrimental effect on the functions of the trademark Marketing function Function of indicating origin More on this in subsequent lecture 14

15 The rights granted, TMD Article 5 2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark The Kodak Rule 15

16 CTMR Main Principles Trademark is effective throughout member states of EU One stop shop for trademark applications Office for Harmonization in the Internal Market (OHIM) Most application filed directly to OHIM, also possible via WIPO (Madrid Agreement) and national offices All or nothing: Absolute grounds for refusal in one country will bar entire mark ELLOS (General Court Case T219/00) 16

17 Interface with national trademarks Equality of Rights: Mutually exclusive Double Protection: Not exclusive if the proprietor is the same person Conversion and seniority: An application denied due to unitary principle can be conversed into one or several national applications, while maintaining priority from the original application (CTMD article 112) 17

CTMR Administrative and Judicial Control Decisions by OHIM can be

appealed to General Court Decisions by General Court can be

Appeal Appeal Appeal Appeal Court European Court of Justice

points of law) Counterclaims of invalidity are dealt with

18 CTMR Administrative and Judicial Control Decisions by OHIM can be appealed to the Appeal Board Decisions by Appeal Board can be appealed to General Court Decisions by General Court can be appealed to ECJ, but only on points of law OHIM Board of General Appeal Appeal Appeal Appeal Court European Court of Justice Infringement actions are dealt with by national courts (Only on points of law) Counterclaims of invalidity are dealt with designated national courts Such courts may refer questions to ECJ according to TFEU Article

19 The Madrid Agreement and Protocol Systems for alleviating the pains in obtaining trademarks in several jurisdictions Madrid Agreement: First file in home state, then apply directly to WIPO Madrid Protocol: First file in home state, then apply to WIPO via national office In common: Result is a bouquet of national trademark, not one unified mark 19

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European Design and Trademark Law. Formation

European Design and Trademark Law Formation Ulf Maunsbach Associate Professor, LLD. Faculty of Law University of Lund ulf.maunsbach@jur.lu.se http://works.bepress.com/ulf_maunsbach European (full)harmonisation