Practical Information about Community Trade Marks and Community Designs

Imogen Fowler, Alicante

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

Community Trade Marks (CTMs)

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 - Introduction

Scope:

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• Examples:

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

Community Designs (CDs)

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

Containers

CDs – Introduction

Product shapes

CDs – Introduction

Logos (class 99)

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

First cancellation action before OHIM

Spanish design vs. Registered CD

CDs – Cancellation actions

Anaesthetic swab case

Spanish design vs. Registered CD

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

Any questions?

Imogen FowlerSolicitorLovellsBilbao 1, 5° piso03001 AlicanteSpainTel. +34 96 514 41 05imogen.fowler@lovells.com