Overview of the Industrial Property protection in the EU The Community Trade Mark (CTM) System

Overview of the Industrial Property protection in the EU

• The Community Trade Mark (CTM) System• The Community Design (CD) System

Mark Kennedy

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

G e n e r al A ffair s a n d E x te rn a l R ela tio nsD e p a rtm e nt

In fo r m a tio n T e c hn o lo gie s a nd F ac ilitiesM a n a ge m e n t D e p ar tm e nt

A d m in istr a tion o f T ra d e M ar ks a ndD e sig ns D e p ar tm e nt

Q u a lity M a n ag e m e nt D e p ar tm e nt

H u m an R e sou r c e s D e p a rtm e nt D e sig ns D e p ar tm e nt

F in a nc e D e p a r tm e nt T r a d e M a r ks D e p ar tm e nt

P R E S ID E N T

Budget CommitteeAdministrative Board FinancialController

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 recruitedspecific 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  

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 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.

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 883355 “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 ?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)

RegistrationPartial 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

0

10,000

20,000

30,000

40,000

50,000

60,000

70,000

1996 1997 1998 1999 2000 2001 2002 2003 2004

1999 2000 2001 2002 2003 2004

41,242 57,324 48,856 45,104 57,637 59,349

BREAKDOWN BY APPLICATIONS PER YEAR - Total 411.778

3. The Community Design System

• Council Regulation (EC) nº 6/2002 of 12 December 2001 on Community Designs

(OJEC N° L3 of 5-1-02, 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 17-12-02, 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 17-12-02, 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 ...

lineslines colourscolours texturetexture

contourscontours materialsmaterialsornamentationornamentation

shapeshape

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 protectionExclusion 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 Community Design : a two tier protection system

• The Unregistered Community Design

(UCD)

• The Registered Community Design

(RCD)

Beginning ofprotection for UCDs

Beginning ofprotection 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 ofprotection for RCDs

Beginning ofprotection 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

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

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

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

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 characterUnitary 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

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 UCDWeaknesses 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 RCDAdvantages of the RCD

The Registered Community Design

and OHIM

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 ?Where to file ?

With the national offices

Directly to OHIM

Mail RoomMail Dispatch

Examination

Registration

Publication Deferment

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

ExaminationExamination

(Art 45)

__________________________________________________________Procedure should be fast and user-friendlyProcedure should be fast and user-friendly

No examination on :No examination on :

verification of protection requirements

relative grounds

whether spare part or not

whether the applicant is entitled

ExaminationExamination

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 ApplicationsMultiple Applications

(Art 37)

A multiple application (class 06)A multiple application (class 06)

Not a multiple applicationNot 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 publicationDeferred publication

(Art 50)

Publication of a deferred designPublication of a deferred design

Country of origin

21,2%

11,8%

9,1% 8,7%7,0%

5,3% 5,3% 5,1% 5,1%3,0%

0,0%

5,0%

10,0%

15,0%

20,0%

25,0%

DE GB NL ES US FR IT DK SE JP

FiguresFigures

• class 09 : Packaging

• class 12 : Transport or hoisting

• class 06 : Furnishing

• class 07 : Household goods

• class 14 : Recording and

communication equipment

IndustriesIndustries

Type of application

Single55,21%

Multiple44,79%

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

FiguresFigures

Some examples of designs already registered by OHIM

since 1 April 2003

Source: OHIM’s CD Bulletin

000000013-0001

Casio Computer Company

Filed, registered and published on 01/04/2003

First RCD published

000000021-0001

DaimlerChrysler AG

Filed, registered and published on 01/04/2003

Design 393-1, registered for

KOIPE CORPORACIÓN, S.L.

Design 1128-7, registered forSILHOUETTE International Schmied AG

First RCDs publishedFirst RCDs published

Design 989-4, registered for Intel Corporation

Design 1029-1, registered for

AUTOBAR PACKAGING SPAIN, S.A.

Barbera del Valles

Reason for Fee Fee Additional fee

(designs 2-10 each)

Additional fee (designs

11+ each) Registration €230 €115 €50 Publication €120 €60 €30 Deferred Publication €40 €20 €10 Invalidity Application €350 Appeal €800

Table of Fees

Application with immediate publication

(1 CD)

Application with deferment publication

(1 CD)

•

•

350 €350 €

270 €270 €

Examples:

www.oami.eu.int