practical information about community trade marks and community designs imogen fowler, alicante
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Practical Information about Community Trade Marks and Community Designs
1. Community Trade Marks– Introduction– Statistics– Registering difficult marks
2. Community Designs– Introduction– Statistics– Registration procedure– Cancellation actions
CTMs - Introduction
Advantages of the CTM:• One registration for 25 countries in Europe• Automatic extension to new EU member states from 1
May 2004• One application procedure with OHIM - lower costs
(€2,075 total OHIM fees for 3 classes, = €83 per country)
• Only one representative necessary • Use requirement fulfilled by use in 1 or 2 countries• European wide injunction available• Since 1 October 2004, link to Madrid system
CTMs - Statistics
• OHIM has received 396,643 CTM applications since 1996
• Today, 225,932 registered CTMs
• Countries with most CTM filings: USA (24%), Germany, UK
• Taiwan 18th, Hong Kong 22nd, China not in top 30
CTMs - Statistics
Likelihood of obtaining registration
• Out of 58,405 concluded oppositions 76% were settled and only 24% of oppositions came to a decision
Conclusion: High chances of registering CTMs
CTMs – Registering difficult marks
Allusive or descriptive marks• Examples: “DOUBLEMINT”, “BE CURLY”
“WHITENING MULTI-ACTION”, “BIOMILD”• OHIM practice has changed• Not enough to show that a mark is not used in
trade• Meaning of the mark must be more than the
mere sum of its parts• Advice: check meaning of a term before filing,
maybe add a logo
CTMs – Registering difficult marks
Slogans• Examples: “LOOKS LIKE GRASS…FEELS LIKE
GRASS…PLAYS LIKE GRASS”, “REAL PEOPLE, REAL SOLUTIONS”
• Very difficult to register with OHIM, unless slogan contains house mark or is particularly fanciful
• Advice: slogans should contain house mark, be very fanciful or not be filed (rely on passing off or unfair competition law)
CTMs – Registering difficult marks
Three-dimensional marks• Almost impossible to register product shapes or
package shape marks with OHIM since ECJ judgments in Mag and the Washtablet cases
• Only if mark is exceptionally fanciful or acquired distinctiveness can be proven, registration may be obtained
• Advice: Shift protection of product and package shapes to Community Design
CDs – Introduction
• Introduction of the CD with Council Regulation EC 6/2002 of 12 December 2001
• A design is the “appearance” of a product or a part of it
• Two types of CD: registered and unregistered CD
• Unitary right with effect throughout the European Union – now 25 countries
CDs – Introduction
Unregistered CD• Protection applies automatically to all qualifying
designs disclosed to the public in the EU after 6 March 2002
• Protection lasts for three years• No formalities required• Disadvantage: hard to prove, must prove
copying in infringement action
CDs – Introduction
Registered CD• Protection available for qualifying designs by
application to OHIM in Alicante• One application = lower costs (OHIM fees €350
per design)• First filing dates accorded 01 April 2003• Protection initially granted for five years• Four renewals are possible giving protection for
up to 25 years
CDs – Introduction
What can be protected with a CD?
• The appearance of a product or part of it– packaging – get-up – graphic symbols – typographical typefaces
CDs – Introduction
What cannot be protected with a CD?• Computer programs• Non-visible component parts of a complex
product• Designs dictated by their technical function• Designs of interconnections (must-fit), except
for modular systems• Designs contrary to public policy or morality
CDs – Statistics
• OHIM has received 18,778 CD applications since 1 April 2003 - a total of 72,015 separate design applications
• Countries with most CD filings: Germany (25%), Italy, USA
• Hong Kong 14th, Taiwan 15th, China not in top 30
CDs – Statistics
Likelihood of obtaining registration
• Out of 72,015 CD applications, more than 90% are registered as CDs
Conclusion: Very high chances of registering CDs
CDs – Registration procedure
Steps:
• Filing of CD application
• OHIM checks formalities (views, infringement of public morality)
• Registration of design
• Publication of registration
CDs – Registration procedure
CD Applications
• Three types of applications available:
– Applications for one design
– Multiple applications (so long as same class)
– Applications with deferred publication (up to 30 months)
CDs – Registration procedure
CD Applications
• Up to seven views of each design
– Can be drawings or photographs, colour or black and white
– Reference views:
CDs – Registration procedure
Conditions for protection:
1. Novelty
2. Individual Character
OHIM does not examine these conditions at the application stage, but only in cancellation proceedings
CDs – Cancellation actions
Grounds for cancellation:
• Design does not meet requirements of novelty or individual character
• Owner is not the real owner
• Conflict with an earlier registered design
• Design infringes trade mark or copyright
• Unauthorised use of emblems and flags
CDs – Cancellation actions
Cancellation actions before OHIM:
• Only relate to registered CDs (unregistered CD actions must be before the Courts)
• Only 12 to date
• Jurisprudence still developing
• Appeals possible to CFI and ECJ
CDs – Cancellation actions
OHIM found:
• Degree of designer freedom limited
• Swabs require a stem and a head
• Not identical designs
• CD NOT in conflict with earlier design
Conclusion: Case law developing well
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