New Product Launches in Europe

Sally Shorthose & Vicki Salmon, Eversheds LLP 22 September 2005 A presentation of ACC’s International Legal Affairs Committee

IP Protection and Pitfalls • Branding in Europe • European Design Rights • Patents

Branding • • • • • •

Trade mark choice Language Clearance searching Registration Infringement Defences Parallel Imports

Trade Marks Registrability – Question of Distinctiveness • Baby-Dry case (2001): Watershed in registrability • ECJ held that although two words descriptive of nappies there was a “syntactically unusual juxtaposition • Test – is the word combination a normal way of referring to goods or services? • Or is it “exclusively descriptive”

Trade Marks Doublemint Case (2003) • ECJ moving back from more liberal approach • Application refused by OHIM because combination of these two ordinary English words was descriptive: the words did not add anything imaginative to the sign • CFI overturned OHIM’s decision - “Doublemint” was ambiguous and suggestive • Further appeal to ECJ • Advocate – General test: “How immediately is the message conveyed? If the mark quickly conveys the characteristic of the goods/services then it will not be registerable”

Trade Marks Post Kantor (February 2004) • (= Post Office) – for paper, advertising, stamps, telecoms and education • Benelux TM office refused registration – “exclusively descriptive” • ECJ followed “Baby-Dry” tests but more stringent • Baby-Dry has probably not resulted in a sea-change

Trade Marks Unconventional Marks • Sound Marks – Nov 2003 ECJ ruled that sound marks are capable of registration if: – clear – precise – self-contained – easily accessible – intelligible – durable – objective

Trade Marks Unconventional Marks (cont.) • Shield Mark B.V. v Joost Kist trading as Menex 2003 • Different representations of sound mark were considered: – First nine notes of Beethoven’s Fur Elise – “a cock crow” • Held – a written representation “would not do” – onomatopoeia was rejected because of different pronunciations in different member states

Trade Marks Colour Marks • Single colour: • Libertel applied in 1996 for shade of orange registration for various types of equipment and services • May 2003 ECJ ruled – A colour per se is capable of distinguishing goods and services – Graphic representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective – A sample insufficient as may deteriorate – verbal description OK (e.g. Pantone) – as a matter of public interest, should the colour remain available – Distinctiveness through use will usually be a pre-requisite for registration – Need to demonstrate no other traders use the colour

Trade Marks Colour Marks (cont.) • Colour combinations: • 1995 – Heidelberger Bauchemie GmbH • Applied for combinations of blue and yellow (very wide application) • German Patent Office rejected because of lack of distinctiveness

Trade Marks Colour Marks (cont.) • Referral to ECJ - determined three conditions (in addition to normal criteria): 1. The colours must comprise a sign 2. It must be capable of graphic representation 3. Colours must be capable of distinguishing goods/services • Threshold for registration of colour marks is high!

Trade Marks Arsenal and Defences to Infringement • 2002 case regarding sale of merchandise bearing Arsenal logo • Appeared to constitute infringement under s10(1) of Trade Marks Act 1994 • Laddie J held no infringement because used as badge of allegiance or loyalty • Reference to ECJ who made finding of fact which Laddie J assumed supported his case • New defence therefore – not used in a “trade mark sense”

Trade Marks The Own Name Defence • See Trade Marks Act 1994 s(1)(2)(a) – use of own name or registered office does not constitute infringement. NB: “provided that use is in accordance with honest practices in industrial or commercial matters” • Reed Executive plc & Another v Reed Business Information (March 2004) • Held that:– Proviso presents dishonest use of misleading names – 2 points to consider:– Intention to cause confusion – Matter of fact as to effect of use

Trade Marks The Own Name Defence (cont.) • See also Gerolsteiner Brunnei v Putsh-Spring 2004 – guidelines for “honest use” • IH Newman v Richard T Adlem (2005) • Elizabeth Florence Emanuel v Continental Shelf 128 Ltd (2004) • The famous name versus the unknown

Trade Marks Parallel Imports • The principle of exhaustion of rights • Consent – Peak Holdings v Axolin-Elinor [2004] • Repackaging – Boehringer v Swingward [2004]

Designs • New rights and harmonisation • Practical issues

Designs Registered Designs Directive (98/71/EC) • • • •

Aims to harmonise the substantive requirements for registered design protection in EC Member States (including EEA) Registered Design Regulations 2001 now before Parliament Criteria for and effect of registration – changes in requirements – new, broader rights and actions which do not constitute infringement – remedies – transitional arrangements

Designs

New Right – Registered Community Design Right (RCD) Advantages A. Same standard as UCD for existence: - novelty and individual character - and for proof of infringement – same overall impression on informed user But… – to infringe UCD use must result from copying So… – protection of RCD is more effective

Designs New Right – Registered Community Design Right (RCD) (cont.) B. One year “grace period” before design disclosure so novelty will not be destroyed during that period (in order to determine success and necessity of registration) C. Registration protects design from mis-use D. Registration is available for fabrics E. Longer protection period 5-25 years as opposed to 3 years from date design first made available to the public F. Administratively more straightforward G. Fee structure allows several designs to be combined into a single application H. Benefit of “deferred publication” I. Registration does not remove UCD

Designs New Right – Registered Community Design Right (RCD) (cont.) Disadvantages • If RCD revoked in on EU country, protection across Community will be lost (cf UCD) • Validity is untested at registration • Lose right to apply 2 months after release to public

Designs Practicalities • • • • •

Records Ownership Date created When put on the market Copying (where unregistered)

Patents National vs European Patents • • • • •

National patents European patents Lack of community patent Enforcement Clearance searching

Patents Software and Business Methods • Death of the EU software directive • And so ……

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