EU-CHINA INTERNATIONAL SEMINAR ON TRADEMARK LAW. João Miranda de Sousa Head of IP

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1 EU-CHINA INTERNATIONAL SEMINAR ON TRADEMARK LAW Head of IP Beijing, October 2010

2 EU-CHINA INTERNATIONAL SEMINAR ON TRADEMARK LAW ACQUISITION OF TRADEMARK RIGHTS 1. Whether trademark rights are acquired through registration or use? 2. How to protect the prior-used trademarks in a system of acquisition-through-registration? 3. In a system of acquisition-through-registration, are trademark applications examined under all-grounds or only limited to absolute grounds? 4. How to handle the relationship of registered trademarks and prior rights? 2

3 Whether the trademark rights are acquired through registration or use? 27 Countries 22 Languages 500 million people approx. 1 Single Market (complete integration of economies) 2 Sets of legal systems (EU + national) 2Coexistingsystems for protecting trademarks (EU + national) The European Union Austria Belgium Bulgaria Czech Republic Cyprus Denmark Estonia Finland France Germany Greece Hungary Ireland Italy Latvia Lithuania Luxembourg Malta Poland Portugal Romania Slovak Republic Slovenia Spain Sweden The Netherlands United Kingdom

4 Whether the trademark rights are acquired through registration or use? Set of individual EU member states trademark legislations and registration offices Various registration offices operating at a national scale Each protection title subject to the different national laws Individual registration fees payable to each National Office Language issues Professional representation issues

5 Whether the trademark rights are acquired through registration or use? A Community trade mark ( CTM ) is a trade mark valid throughout the 27 countries of the EU and it can ONLY be obtained by registration at the Office for Harmonization in the Internal Market ( OHIM ) in accordance with the provisions of the CTM Regulations. Art. 6 CTMR: A Community trade mark shall be obtained by registration.

6 Whether the trademark rights are acquired through registration or use? The CTM system does not replace the national trademark registration systems of the 27 Member States; the CTM system and the national systems continue to operate in parallel. In all the trade mark registration systems of UE, the acquisition of trade mark rights is mainly done through registration. However, the trademark legislations of some UE Member States establish some exceptions to this principle. In some circumstances and with certain limits, trade mark rights may be acquired through use. Examples: Austria, Germany, Italy, etc.

7 Whether the trademark rights are acquired through registration or use? Examples: Austria: Acquisition through use which has led to a recognition by the relevant public that the sign is a mark of the claimant ("Verkehrsgeltung"). Right to prohibit use of subsequent (registered) trade mark provided that unregistered mark, at the date of application for subsequent TM, was known to the relevant public as designation for the goods or services of the claimant ( als Kennzeichen gegolten hat ) and provided that the subsequent TM had not been used prior to application for the same period as an unregistered mark. Germany: Acquisition through use which has led to a recognition by the relevant public that the sign is a mark of the claimant ("Verkehrsgeltung"). Right to prohibit the use of a subsequent trade mark in the whole territory of Germany, if the recognition exists in the whole of Germany. Not, if recognition is established only for a particular locality. Scope of protection: The same as for registered German trade marks, i.e. against the acts corresponding to the acts referred to in Article 9 (1) (a), (b) and (c) CTMR.

8 How to protect the prior-used trademarks in the system of acquisition-through-registration? In the CTM system prior used trademark rights may, in certain circumstances, be invoked in order to prevent the registration of subsequent CTM (by means of opposition) or to cancel a subsequently registered CTM (by means of a cancellation procedure). Article 8 CTMR states in paragraphs (2.c)) and (4) in which circumstances prior used trademarks prevail against subsequent CTM s

9 How to protect the prior-used trademarks in the system of acquisition-through-registration? Article 8.2 (c) CTMR: Trade marks which, on the date of application for registration of the Community trade mark, ( ), are well known in a Member State, in the sense in which the words well known are used in Article 6bis of the Paris Convention.

10 How to protect the prior-used trademarks in the system of acquisition-through-registration? Article 8(4) CTMR: Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign: (a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark; (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

11 How to protect the prior-used trademarks in the system of acquisition-through-registration? Art. 8(4) CTMR requirements : (1) non-registered trade mark or other sign used in the course of trade of more than mere local significance, (2) exclusive rights acquired under applicable law, including the right to prohibit the use of a subsequent trade mark

12 How to protect the prior-used trademarks in the system of acquisition-through-registration? Art 8(4) CTMR requirements: 1. the earlier right non-registered trade mark or an equivalent sign 2. the sign must be used in the course of trade 3. the use must be of more than mere local significance 4. the right must be acquired prior to the filing date of the contested CTM application 5. the proprietor of the sign must have the right underthetermsofthenationallaw governing this right to prohibit the use of the contested mark

13 How to protect the prior-used trademarks in the system of acquisition-through-registration? Types of rights covered by Article 8(4) CTMR Non-registered trade marks and Other signs used in the course of trade business identifiers

14 How to protect the prior-used trademarks in the system of acquisition-through-registration? Non-registered trade marks Protected in many Member States, but rules and conditions under the relevant national law vary (from simple use to a certain degree of recognition ) The scope of protection is also not uniform

15 How to protect the prior-used trademarks in the system of acquisition-through-registration? Other signs used in the course of trade: Corporate name/company name. The official designation of an undertaking (usually registered in the national commercial register) Trade names. Not necessarily identical with corporate name or commercial name in commercial register. Trade names are protected as exclusive right in all Member States Pursuant to Art 8 of the Paris Convention trade names enjoy protection without any filing or registration Name of establishment or store names, geographic indications, work titles (of printed publications, movies, musical works, theatre plays, etc)

16 How to protect the prior-used trademarks in the system of acquisition-through-registration? Use in the course of trade If proof of actual use is not provided the substantiation opposition is rejected it is a matter of It s a requirement of Community law so the sign must have been used, irrespective of national laws requirements The use must be genuine

17 How to protect the prior-used trademarks in the system of acquisition-through-registration? Use in the course of trade The use must in addition fulfill the conditions under national law if such requirements do exist Example: under Austrian Law exclusive rights on unregistered trade marks are only acquired if the trade mark has acquired a certain degree of recognition by the relevant public.

18 How to protect the prior-used trademarks in the system of acquisition-through-registration? Use in the course of trade of more than local significance Individual assessment in view of the particularities of each case. In general: Big city, regional district/province alone is not more than mere local significance. Not only geographical criteria, also economic dimension of the use important.

19 How to protect the prior-used trademarks in the system of acquisition-through-registration? Protection is only granted to a prior used sign if governing that sign: pursuant to the law rights to the sign were acquired prior to the filing date of the CTM that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark * The law governing the sign may be National Law or EU Law

20 How to protect the prior-used trademarks in the system of acquisition-through-registration? Addressing to OHIM web you can find all the kinds of national marks and other rights which qualify as relative grounds for refusal in opposition and invalidation proceedings before the Office or a CTM Court. For example:

21 In the system of acquisition-through-registration, are trademark applications examined under all-around ground or only limited to absolute grounds? No ex officio examination / refusal of CTM applications conflicting earlier rights on the basis of Ex officio refusal is confined to formal and absolute grounds. Conflicts between an earlier right and a subsequent CTM are to be resolved by either an opposition mechanism (before CTM registration) or by a cancellation procedure (after CTM registration). The earlier right s proprietor needs to challenge on its own motion the CTM application or the CTM registration. Rationale: Impossibility of carrying out complete search on all earlier rights Ex officio examination of conflicting earlier rights could lead to unjustified rejection of CTM application (unused earlier marks could stop new CTMs) The parties and the market decide whether conflicting marks can coexist Speed and efficiency in handling CTM registration proceedings

22 COUNTRY ALL-AROUND EXAMINATION (Conflicts with Earlier rights checked ex officio) Austria Benelux Bulgaria Cyprus Czech Republic Denmark Estonia Finland France Germany Greece Hungary Ireland Italy Látvia Lithuania Malta Poland Portugal Romania Slovak Republic Slovenia Spain Sweden United Kingdom No No No Yes Yes No Yes Yes No No Yes Yes Yes No No (only well-known TMs) No Yes Yes Yes Yes Yes No No Yes No In the system of acquisitionthrough-registration, are trademark applications examined under all-around ground or only limited to absolute grounds?

23 How to handle the relationship of registered trademarks and prior rights? Prior rights can be successfully invoked against a subsequent CTM by means of an opposition or cancellation procedure Oppositions against the registration of new CTMs may (only) be filed: By the proprietors of an earlier trade mark, (earlier CTMs; national trade marks registered in a Member State of the EU; well known trade marks in the sense of 6bis of the PC; non registered trade marks if the relevant national law confers on their proprietor the right to prohibit the use of a subsequent trade mark) By the proprietor of an equivalent earlier right (signs used in the course of trade if recognized by the relevant legislation)

24 How to handle the relationship of registered trademarks and prior rights? Basis for an opposition circumscribed to earlier trade mark (or equivalent) rights Infringement of other prior rights (patents, designs, copyrights) can not form the basis of an opposition. Those issues can only be dealt with after registration by means of an invalidity action brought before OHIM (or as a counterclaim before the CTM courts).

25 How to handle the relationship of registered trademarks and prior rights? Official searches conducted in order to bring earlier conflicting trade marks to the attention of the CTM applicant and in some cases to the attention of the earlier right holder To assist CTM applicants and owners of certain earlier rights, a search and notification mechanism has been established: OHIM provides reports related to new CTM applications possibly conflicting with earlier CTMs and, if the applicant so requests, with earlier national trade marks in those EU member states whose trade marks offices opted to make these search facilities available to OHIM (many MS opted not to i.e. F, DE, IT, BEN, UK). When an earlier CTM is cited in the report, the OHIM notifies the CTM applicant and the earlier CTM proprietor. National trade marks cited will only be notified to the CTM applicant. Search reports are generated by automated systems and do not influence the outcome of any eventual opposition proceedings.

26 How to handle the relationship of registered trademarks and prior rights? No counterclaims admitted against the earlier trade mark No counterclaims against the earlier right upon which the opposition is based are admitted. The possible outcomes of the opposition proceedings may be: Friendly settlement Withdrawal of opposition Withdrawal of CTM application Partial refusal of application Refusal of application or opposition rejection

27 How to handle the relationship of registered trademarks and prior rights? About 15% of the published CTM applications face an opposition (OHIM currently has to deal with some 16,000 new oppositions a year). Too much? In the UK the opposition rate is about 5% 30% of the oppositions against CTMs are closed by the examiners decision, and 70% are settled otherwise. In the UK only 20% of oppositions are settled by decision Success rate of oppositions against CTMs: about 50% of the oppositions filed leads to a withdrawal, or a refusal, or a rejection, which means that approximately 7% of the CTM applications are in one way or another affected by an opposition