1 / 44

New market opportunities through trade mark and design protection

Look-East Net, Udine December 13th, 2003. New market opportunities through trade mark and design protection Sabina Rusconi, External Relations. Industrial property in the real world A day in the press…. Trade mark. Design. Patent. Price of product: 131.62 €. Price of product: 0.45 €.

danyl
Download Presentation

New market opportunities through trade mark and design protection

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. Look-East Net, Udine December 13th, 2003 New market opportunities through trade mark and design protection Sabina Rusconi, External Relations

  2. Industrial property in the real worldA day in the press… Trade mark Design Patent

  3. Price of product: 131.62 € Price of product: 0.45 € Value of GE trade mark: 39 034 560 000 € Value of COCA COLA trade mark: 76 810 000 000 € Value of IBM trade mark: 56 763 500 000 € Price of product: 499 € Value of MICROSOFT trade mark: 68 487 980 000 € Price of product:1381.73 € The value of the product and the value of the trade mark

  4. Trade marks are bought and sold - Groupe Danone Trade marks for biscuits Trade marks for water Trade marks for dairy products

  5. Trade Marks serve to identify products on the market DANONE yoghurt Trade marks help us to differentiate one product from another identical or similar one NESTLÉ - DANONE Trade marks allow companies to inform consumers of the advantages of their products: advertising Trade marks are of considerable economic value Need for protection What are trade marks good for ?

  6. If someone breaks into your home ... … you defend yourself, attacking ... … with a weapon. If someone infringes your trade mark ... … with a weapon. … you defend yourself, attacking... How do I protect my trade mark or design ?

  7. At the Trade Mark Office of a specific country • The trade mark will be protected in that country only • At the OHIM • The trade mark will be protected throughout the European Union • At the World Intellectual Property Office (WIPO) • The trade mark will be protected in a number of countries • or a combination of these systems Trade marks may be registered ...

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

  9. The International Option : • Dependent on basic application • of protection dictated by goods/services of basic application • the Owner must be entitled according to Madrid Protocol • No professional representative required to file but could be needed during examination process in each designated country

  10. The International Option (Madrid Protocol): • Rights in up to 58 countries possibility of subsequent designations in the Madrid Protocol + USA and Cyprus in November • IR (all countries in the EU) in 1 class in 3 classes home registration app. $ 600 $ 600 Basic fee IR $ 671 $ 671 13 countries UE $2347 +$3000 + Total app. $3618 $4271

  11. The International Option : The International system is very often used : • when the applicant is interested in countries that are not members of the EU • more cost efficient when the applicant is only interested in a few countries within the EU + Switzerland and expansion to other EU countries is highly unlikely

  12. The 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)

  13. 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

  14. 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

  15. What is the Community Trade Mark/Design? 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 - CTM) € 1100 for 3 classes (registration fee - CTM) € 350 (registration + publication fee - RCD) Office for Harmonization in the Internal Market

  16. Word trade marks: names, surnames, letters, numbers, mottoes and slogans; Signs of which a CommunityTrade Mark may consist • Figurative trade marks: drawings, logos, symbols, pictures, including combinations of word and figurative elements; • Three dimensional trade marks: the shape of the product, and packaging; • Colour trade marks: trade mark consisting exclusively of one or more colours • Other trade marks: e.g. Sounds, in particular musical phrases;

  17. Conclusion : Effective management combination of the systems depending on the places of business and perspectives for expansion Soon combination of advantages of all systems with the link between CTM and Madrid Protocol

  18. International route:from OR to Alicante Incoming International Registrations designating the EC Outgoing International Applications based on a CTM OR OHIM as office of a designated party OHIM as office of origin International Bureau

  19. Statistics on the Community Trade Mark

  20. CTM ACTIVITY - first 8 Years Total: 344.758 applications (31.10.03)

  21. CTM ACTIVITY Country of originTOP 5 (30.9.2003) 25% 17% 13% 7% 7% USA GERMANY UK ITALY SPAIN 81 671 54 737 43 020 24 515 22 711

  22. BREAKDOWN BY COUNTRY OF ORIGIN TOTAL: 323,440 (30.09.03)

  23. BREAKDOWN OF APPLICATIONS BY CLASS Class n° 9: including scientific, photographic, teaching apparatus and instruments, recording discs, data processing equipment and computers, Class n° 42:including scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services, Class n° 16:including paper, cardboard and goods made from these materials, not included in other classes, printed matter, stationery etc. Class n° 35: including advertising, business management; business administration, office functions Class n° 41:Education; providing of training; entertainment; sporting and cultural activities .

  24. Top 10 CTM Applicants (31.08.03)

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

  26. How to get national protection for Designs THE PROTECTIONOFA NATIONAL DESIGN NATIONAL DESIGN REGISTERED IN FRANCE Office for Harmonization in the Internal Market IMPORT WITHOUT THE CONSENT OF THE PROPRIETOR IS LEGAL PRODUCING WITHOUT CONSENT OF THE PROPRIETOR IS LEGAL 36

  27. Through the Hague System (managed by WIPO), which allows for one application for a combination of national rights Only available to countries in the Paris Convention & persons from countries in the Hague System Belgium France Germany Greece Italy Luxembourg Netherlands Spain How to get international protection for Designs

  28. How to get Community protection for Designs CD: ADVANTAGESOF UNITARYCHARACTER REGISTERED COMMUNITY DESIGN Office for Harmonization in the Internal Market IMPORT WITHOUT THE CONSENT OF THE PROPRIETOR IS ILLEGAL (Council Regulation N° 3295/94) PRODUCING WITHOUT CONSENT OF THE PROPRIETOR IS ILLEGAL X 38

  29. TIMING UCD 6/3/2002 • Automatic creation of the right from the 1st disclosure in the Community. It lasts for 3 years. • Right to prevent only if use results in copying RCD 1/4/2003 • Creation of the right by registration at OHIM • Five years, renewable 4 times • Exclusive right to use & prevent

  30. What is a Design? (Art 3 (a)) “Design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the ... lines colours shape texture contours materials ornamentation 40

  31. 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

  32. 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 • The degree of freedom of the designer in developing the design will be taken into consideration

  33. No visible parts Technical Functions Interconnections Designs which are against public policy or morality Excluded from Protection

  34. RCD ACTIVITY - Community Designs Total 8,529 * data as per 31/10/2003

  35. TM = distinctive sign to identify products and services:enables consumer to distinguish products Difference betweena trade mark and a design Design = appearance of a product, new and with individual character: adds esthetical value to products and increments their commercial value An applicant may protect the same item both as a TM and as a design

  36. Examples of creations filed before OHIM for registration as Community trade marks

  37. Application number: 000951871 Filing date: 05/10/1998 Type of Mark:3 D Acquired distinctiveness:Yes Legal status of mark: Registration published CTM or RCD?

  38. Application number: 000165811 Filing date: 01/04/1996 Type of Mark:3 D Acquired distinctiveness: No Legal status of mark: Registration published CTM or RCD?

  39. Other examples of trade marks registered by OHIM

  40. Items not registered as trade marks by OHIM

  41. Items not registered as trade marks by OHIM

  42. Advantage of accumulative protectionCD Reg. 0000000630-0001CTM Reg. 000202382

  43. Trade marks >< DesignsProtection against similar signs despite different overall impression (trade mark)Indefinite protection (trade mark)No use requirement (design)Protection not limited to classes mentioned in registration certificate (design) Chose right that suits you most consideringprotection requirements (distinctiveness/novelty/individual character)

  44. http://oami.eu.int QUESTIONS? Sabina.Rusconi@oami.eu.int External Relations

More Related