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By Sabina Rusconi General Affairs and External Relations Department PowerPoint Presentation
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By Sabina Rusconi General Affairs and External Relations Department

By Sabina Rusconi General Affairs and External Relations Department

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By Sabina Rusconi General Affairs and External Relations Department

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  1. Trademark & Design Protection in the New Single Market Look-East Net. Udine December 12th, 2003 By Sabina Rusconi General Affairs and External Relations Department

  2. What is the Office for Harmonization in the Internal Market? (OHIM)

  3. Introduction to the legal framework Treaty of Rome 1957 Treaty of Maastricht 1992 01/01/1993 completion of the internal market To prepare the internal market Directives on harmonisation Regulations In the field of Trade Marks Directive 88/104 on Trade Marks Implemented by all Member States Regulation 40/94 In the field of Designs Directive 98/71 Implemented by all member states Regulation 6/2002 Legal Background Office for Harmonization in the Internal Market

  4. What is the The Office for Harmonization in the Internal Market? • Based in Alicante, Spain, since April 1st 1996 • An official agency of the European Union • 650 staff of 15 Member States • Budget of €167 million for the year 2003 • Confers rights which have: • - unitary character • - autonomy from national or international registrations Office for Harmonization in the Internal Market

  5. What is the Office for Harmonization in the Internal Market? (OHIM) EU body • Decentralised • Legal personality • Financial autonomy Tasks • Community trade mark (in operation since 1 April 1996) • Community design (in operation since 1 April 2003)

  6. What is the The Office for Harmonization in the Internal Market? • OHIM has an administrative procedure to appeal decisions internally through the Boards of Appeal • Decisions of the Boards of Appeal can be challenged before the Court of First Instance (CFI) and the Court of Justice (ECJ) of the European Union • Infringement proceedings are the competence of National TM and Designs Courts in Member States • 5 working languages; EN, ES, DE, IT, FR Office for Harmonization in the Internal Market

  7. What is the The Office for Harmonization in the Internal Market? President (Wubbo de Boer) Vice President Vice President (A. Von Mühlendahl) (A. Casado) Office for Harmonization in the Internal Market Administration of Trademarks and Designs Designs Finance General Affairs and External Relations Human Resources Information Technologies and Facilities Management Quality Management Trademarks Appeals

  8. The OHIM - Staff 1994 - 2003

  9. The OHIM - Budget

  10. What are the Trademark & Design Protection Options in the European Union? • National Registrations • International Registrations • Community Registrations • or a combination of these systems

  11. National Registrations • Administrative management of application and post registration not facilitated: • Various titles (13 sytems but discrepancies still exist, 13 national or regional offices, 11 languages, various representatives may be needed

  12. International Registrations • Under the auspices of WIPO, The Madrid Agreement and Madrid Protocol offer Trademark protection in several countries, under one single application system, conferring individual national rights in one procedure. • WIPO also administers the protection of designs in various countries under one application system, through THE HAGUE System and the Geneva Act.

  13. Flexibility of the CTM system: link between Madrid Protocol and CTM Two options: • CTM will be a basis for International Designations • EC could be designated in International Application Foreseen for Autumn 2004 once necessary regulations (implementing and fee) are amended.

  14. What are the Trademark & Design Protection Options in the European Union? The Community Trade Mark & The Registered Community Design

  15. The Community Trade Mark (CTM) SYSTEM Regulation 40/94 - 20/12/1993 Establishes a Community Trade Mark valid through the European Union Creates an Office to manage it: the OHIM in Alicante Implementing Regulation 1994 Fees Regulation 1994 What is the Community Trade Mark? Office for Harmonization in the Internal Market

  16. What is the Community Trade Mark? Unitary and exclusive protection: uniform law applies to trade marks Simplified formalities and management: a single application a single language of filing a single administrative centre a single file to be managed Reduced costs: €975 for 3 classes (application fee) €1.100 for 3 classes (registration fee) Office for Harmonization in the Internal Market

  17. What is the Community Trade Mark? 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 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 The advantage of this is that it applies equally where applicants decide to convert their application or registered Community trade mark into national applications. There is therefore no risk involved in deciding immediately to opt for a Community trade mark Office for Harmonization in the Internal Market

  18. What is the Community Trade Mark? 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 seriously in a single Member State Broadened legal protection which is accessible to all: Infringement proceedings may be brought before the Community trade mark courts Decisions are applicable throughout the Union The prospect of enlargement: The future enlargement of the European Union will result in a Union of 25 Member States by May 2004. This will increase still further the territorial scope of Community trade marks Office for Harmonization in the Internal Market

  19. The Community Trademark & The Registered Community Design • Accessible to all: • Any person or business entity may apply for a CTM or RCD • for non European applicants, an European representative must be appointed • the appointed representative can be a OHIM professional representative or legal practitioner

  20. Statistics on the Community Trade Mark

  21. The OHIM - Breakdown of CTM applications per year

  22. The OHIM - Breakdown of CTM applications by Country of Origin

  23. The Community Design Office for Harmonization in the Internal Market

  24. “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the ... What is a design? (Art 3 (a)) lines colours shape texture contours materials ornamentation The Community Design

  25. The Community Design : a two tier protection system • The Unregistered Community Design (UCD) automatic creation as from first disclosure in the Community • The Registered Community Design (RCD) creation by registration at OHIM

  26. Unregistered Community Designs The UCD has been in existence since the 6th of March 2002 All new creations disclosed for the first time since this date are protected by that right throughout the European Union

  27. Registered or Unregistered Community Design Differences (1) • 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 Max. 25 years

  28. Registered or Unregistered Community Design Differences (2) Rights conferred: (Art 19) • 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

  29. Unitary character (Art 1 (3)) • A Community Design has equal effect throughout the EU • Registration, transfer, surrender, invalidity, prohibited use is always for the entire EU

  30. The protectionofa national design NATIONAL DESIGN REGISTERED IN FRANCE IMPORT WITHOUT THE CONSENT OF THE PROPRIETOR IS LEGAL PRODUCING WITHOUT CONSENT OF THE PROPRIETOR IS LEGAL

  31. REGISTERED COMMUNITY DESIGN Advantagesofunitarycharacter IMPORT WITHOUT THE CONSENT OF THE PROPRIETOR IS ILLEGAL (Council Regulation N° 3295/94) PRODUCING WITHOUT CONSENT OF THE PROPRIETOR IS ILLEGAL X

  32. Protection requirements Novelty (Art 5) • 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

  33. Protection requirements Individual character (Art 6) • If the overall impression produced on the informed user differs from the overall impression of designs made available to the public earlier it is said to have individual character

  34. Exclusion of protection • Parts not visible 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))

  35. Weaknesses of UCD • If first disclosure in non EU country, UCD not available • 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

  36. The advantages of the Registered Community Design • A stronger right with a unitary character in the entire EU • Easy, fast and affordable filing and registration procedure (one language, one application, one fee system; multiple applications, deferred publication) • Grace period (12 months) • Long term of protection (up to 25 years)

  37. Table of Fees

  38. First RCDs published Design 1029-1, registered for AUTOBAR PACKAGING SPAIN, S.A. Barbera del Valles Design 989-4, registered for Intel Corporation

  39. Current trends • First applicants- • Countries of filing • Top industries • Type of application

  40. Origin of applicants: Top 30

  41. Locarno classes: Top 20

  42. First applicants (3) average number of designs in a multiple application = 6,15

  43. End 2003 Estimate 10.000 applications (= 40.000 designs)

  44. Registration certificate

  45. Registration certificate

  46. Registration certificate

  47. www.oami.eu.int Office for Harmonization in the Internal Market

  48. Perspectives on Enlargement (Impact on CTM/RCD owners and national right holders)

  49. Results of EU Accession Negotiations Content CTM + RCD System: Legal implications of enlargement (“What happens to my CTM?” “Can I enforce my national rights”?)

  50. CANDIDATE COUNTRIES Enlargements 1995 1973 Enlargement Task Force 2004 1958 1986 1981