Introduction to Trade Mark and Patent Law

Are Stenvik

What is a trade mark? • Art. 1 and 2 TMD ◦ capable of being represented graphically ◦ capable of distinguishing

• Kinds of trade marks: word marks, figurative marks, combined marks, three dimensional marks, fragnances (C-273/00 Sieckmann), sound marks (C-283/01 Shield Mark ”Für Elise”)

Three dimensional marks

Function and purpose of trade marks • Overview, C-236–238/08 Google (76–77) • Guarantee of commercial origin, C-236–238/08 Google (82–90) • Guarantee of quality, see Art. 8(2) TMD, also C-206/01 ARSENAL (protecting the proprietor against activities that are likely to damage the reputation or distinctiveness of the trade mark) • Communication function ◦ Distinguising function, cf. C-206/01 ARSENAL (making it possible for end users to distinguish between goods origination from various sources)

• Advertising function, cf. C-236–238/08 Google (91–98) • Investment function ◦ Protection of goodwill, C-206/01 ARSENAL (protecting the proprietor against others seeking to take unfair advantage of the goodwill connected to the trade mark)

Some fundamentals of trade mark law • Registered and unregistered trade marks • Administrative and judicial functions • National, regional and international systems • Classification system (Nice Convention 1957) • Scope of protection (Art. 4, 5 and 6 TMD)

• Duration • Requirement of use (Art. 10 and 11 TMD) • Territoriality

• Exhaustion of rights (Art. 7 TMD)

EU/EEA trade mark instruments • Trade Mark Directive (2008/95) TMD

◦ partial approximation ◦ registered trade marks ◦ unification, cf. C-355/96 Silhouette (exceptions: Art. 5(2) og (5) TMD) • Trade Mark Regulation (207/2009) CTMR

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supplementing national systems unitary character mirroring the substantive provisions of the directive Authority: OHIM (www.oami.eu.int)

EU administrative and judicial system

ECJ CFI

OHIM BoA Examiners

Opp. div.

Cancell. div.

Madrid System • Madrid Agreement 1891 (56 Member States) ◦ Filings must be based on national registrations ◦ International registrations taking effect in selected Member States ◦ Member States may deny effect within their territories • Madrid Protocol 1989 (84 Contracting Parties) ◦ Open for accession by international organizations ◦ Filings may be based on national applications • Authority: WIPO

Absolute requirements for registration • Graphical representation, Art. 2 TMD • Distinctive character, Art. 3(1)(b) TMD

• Descriptive signs, Art. 3(1)(c) • Customary designations, Art. 3(1)(d) TMD • Functional shapes etc., Art. 3(1)(e) • Misleading signs, Art. 3(1)(g) TMD

Distinctive character • The trade mark taken as a whole, cf. C329/02 P “SAT.2” • In relation to the goods in question, cf. C363/99 POSTKANTOOR

• The perspective of an average consumer • Aquired distinctiveness, cf. C-286/04 P (Corona bottle); C-24/05 (August Storck, Werther’s caramel) • The relevant point in time

Three dimensional marks • Same requirement, cf. C-299/99 (Philips) • More difficult to proove, ”significant departure from the norm”, cf. C-136/02 P (MagLite), C-286/04 P (Corona bottle) • Functional features, cf. C-48/09 P, Lego

• Aquired distinctiveness, jf. C-24/05 (Storck, caramel)

C-299/99 (Philips)

Unconventional Trade Marks • Colours, cf. T-316/00 (green and grey) 25.9.02; T-173/00 (orange) 9.10.02; C-104/01 Libertel • Slogans, cf. C-64/02 P (Das Prinzip der Bequemlichkeit); C-398/08 P (Vorsprung durch Technik) • Geographical indications, cf. C-108/97 and C-109/97 (CHIEMSEE)

Relative requirements for registration • Identity with a protected sign, Art. 4(1)(a) TMD • Similarity with a protected sign, Art. 4(1)(b) TMD • Capable of being associated with a well known trade mark, Art. 4(3) • Similarity with a foreign trade mark, Art. 4(4)(g) • Trade marks containing personal and company names, titles, copyright works etc., Art. 4(4)(c) TMD

Rights conferred by a trade mark • «entitled to prevent all third parties», Art. 5 TMD • «in the course of trade», C-324/09 L’Oréal v. eBay (55)

• Use as a sign, C-2/00 Hölterhoff; C-24/05 P (Storck, caramel); C-236–238/08 Google • Accessories and spare parts, Art. 6(1)(b) and (d) TMD; C-228/03 (Gillette) • Use of own name and address, Art. 6(1)(d) TMD; C245/02 BUDWEISER

Scope of protection • Identical signs for identical goods, Art. 5(1)(a) TMD • Similar signs for similar goods, Art. 5(1)(b) TMD ◦ direct likelihood of confusion, ◦ indirect likelyhood of confusion, C-251/95 Sabel v. Puma; C39/97 Canon; C-21/08 Sunplus v. Sun ◦ the ”product rule”, C-39/97 Canon; C-342/97 Lloyd

• Protection for well known trade marks, Art. 5(2) ◦ well known, C-375/97 CHEVY ◦ taking unfair advantage, C-252/07 Intel (INTELMARK) ◦ detriment to distinctive character or repute

Likelihood of confusion • C-206/04 P ZIRH/SIR • C-361/04 P PICARO/PICASSO

Domain names as trade marks • www.primebroker.com (R 77/1999-2; computers in class 9; online services in class 42) • ADVERTISING.COM (R 1035/2008-4; advertising etc. class 35; communication services etc. in class 38)

Trade Marks and Internet Use • Use in the course of trade ◦ gripe sites and fan sites

• Use as a trade mark ◦ Search engine advertising, C-236–238/08 Google ◦ Auction portals an online marketplaces, C-324/09 L’Oréal v. eBay

• Where is the trade mark being used? The problem of co-existing trade marks ◦ Targeted at consumers in the territory, C-324/09 L’Oréal v. eBay (62) ◦ Euromarket v. Peters [2001] FSR 20 (Ch.) ◦ Sony v. Pacific Game Technology [2006] EWHC 2509

Patentability requirements

• Invention, Art. 52 EPC • Susceptible of industrial application, Art. 52 and 57 EPC

• Right to the invention, Art. 60 EPC • Novelty, Art. 54 EPC • Inventive step, Art. 56 EPC • Resources: www.epo.org

Exceptions, Art. 52(2)–(4) and 53 EPC • Discoveries etc. • Business methods, programs for computers, presentation of information etc. • Medical methods • Plant or animal varieties • Inventions contrary to ”ordre public” ◦ Biotech directive Art. 6(2)(d)

International patent law • Patent Cooperation Treaty (PCT) 1970 ◦ examination of novelty ◦ examination of patentability optional ◦ national phase

• European Patent Convention (EPC) 1973 ◦ European patents granted by EPO ◦ same effect as national patents ◦ no centralised court system (yet)

International patent law (contd.) • Agreement relating to Community patents (CPC) 1989 • Proposed EC regulation November 27, 2009 ◦ building on the EPC ◦ unitary character

• Enhanced cooperation (except Italy and Spain) • Draft Agreement creating a European Patent Judiciary, March 23, 2009 • Opinion 1/09 of ECJ, delivered March 8, 2011 • Biotech directive (98/44/EF)

• Softpat directive proposal February 20, 2002

Prior art and the novelty requirement • Novelty and inventive step compared • Availability to the public, Art. 54 EPC

• Global novelty requirment • Priority, Art. 87 EPC

Inventive step • Non-obviousness, Art. 56 EPC • Principles ◦ objective asessment ◦ combination inventions ◦ «Could» vs. «Would», «pointers», etc., cf. jf. EPO Guidelines C, IV, 9.4 ◦ «Reasonable expectation of success», cf. T 296/93 BIOGEN/Hepatitis B [1995] EPOR 1 («would be encouraged to try the solution with a reasonable expectation of success»)

• «Problem and Solution Approach»

«Problem and Solution Approach» •

Guidelines C, IV, 9.5: «In the problem and solution approach there are three main stages:

1. determining the closest prior art, 2. establishing the technical problem to be solved, and 3. considering whether or not the claimed invention, starting from the closest prior art and the technical problem, would have been obvious to the skilled person. The closest prior art is that combination of features derivable from one single reference that provides the best basis for considering the question of obviousness.»

Rights conferred by a European patent • Term of patent protection, Art. 63 EPC

• Same effect as national patents, Art. 64 EPC • Right to exclude • Exploitation in the course of trade and industry

• Territoriality • Exhaustion of rights • Product patents: absolute protection

• Process patents: protection for the process and for products directly obtained, Art. 64 EPC

Scope of protection

• Extent of protection shall be determined by the claims, Art. 69 EPC • Patent claims; independent and dependent claims, Art. 84 EPC • Description, Art. 83 EPC • Interpretation of claims • Doctrine of equivalents, Protocol to Art. 69 EPC

Example: Spannschraube • 1. A pipe clamp, comprising an annular strap (12) with at least one opening which can be closed by a clamping screw (10), … characterised in that the head (24) of the clamping screw (10) can be passed axially, relative to its central longitudinal axis, through the hole (36) in the flange (20) and is retained by a washer (38) which is inserted between the head (24) and the flange (20) before tightening takes place and which is formed with a slot (40) open at one end.

Spannschraube – state of the art

Spannschraube – alleged infringement • A pipe clamp, • the head (24) of the clamping screw (10) can be passed … through the hole (36) in the flange (20)

• is retained by a washer (38) • which is inserted between the head (24) and the flange (20) • and which is formed with a slot (40) open at one end.

Spannschraube – results

Patentability of software • «programs for computers» excluded, cf. Art. 52(2)(c) • Exclusion limited to programs «as such», Art. 52(3) • Clearly patentable subject matter: Products and processes incorporating software • Clearly unpatentable: Programming language (literary work) • Problematic: software as such, software on a storage medium, a computer incorporating or executing software, a method consisting of executing software

Interpretation of Art. 53(3) • Traditionally: «Technical contribution approach», cf. T 208/84 VICOM/Computer-related invention. • Current interpretation: «Whole contents approach», cf. T 935/97 IBM/Computer programs and T 931/95 PBS/ Controlling pension benefits system • EPO Guidelines C,IV,2.3.6, cf. C,II,4.15 and C,IV,11.7.2

T 935/97 IBM/Computer program

T 935/97 IBM/Computer program • «The exclusion from patentability of programs for computers as such … may be construed to mean that such programs are considered to be mere abstract creations, lacking in technical character. … This means that programs for computers must be considered as patentable inventions when they have a technical character.»

T 935/97 IBM/Computer program • «physical modifications ... driving from the execution of the instructions given by programs ... cannot per se constitute the technical character required … It is thus necessary to look elsewhere for technical character in the above sense: it could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. Where the said further effects have a technical character or where they cause the software to solve a technical problem, an invention which brings about such an effect may be considered an invention …»

G 3/08 Computer programs

The questions: 1. Claim form (claim language) 2. Products and processes. (a) Software and hardware. (b) Further technical effect. 3. Technical (physical) effect. 4. The concept of technicality – computer programming

G 3/08 Computer programs (cont.) The answers:

1. Inadmissible 2. Inadmissible 3. Inadmissible 4. Inadmissible

G 3/08 Computer programs (cont.) Reasons:

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Affirms whole contents approach

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Any physical element will do

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Requirement of further technical effect

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Programs as such may be claimed

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Technical contribution is required for inventive step