Other Industrial Property Module 1 B Trade marks - Designs - Domain names - Geographical indications ip 4 inno 1
Content • • • Intro - relevance of IP Trade marks Designs Domain names Geographical indications (GI) ip 4 inno 2
What has IP got to do with me? • It is a source of information and knowledge • It helps you to optimise your business • It is a way of making money ip 4 inno 3
What about trade marks and designs? • Establishment of strong trade marks and marketing are means of making a high product value • Consumers think of trade marks and designs as more than the mere product • A trade mark is for instance: – a business identifier – a guarantee of quality – the goodwill of the company ip 4 inno } Marketing tool 4
Why protect your IP rights in general • To have an exclusive right • Registration creates certainty • Registered rights are generally stronger than unregistered rights ip 4 inno 5
Why protect your trade marks and designs • Gain effective protection against: – copying – imitation – misapropriation – forgery – use of its reputation ip 4 inno 6
Conclusion • It is essential for businesses to have a clear defined strategy covering all industrial and intellectual property rights within the company ip 4 inno 7
Content • • • Intro - relevance of IP Trade marks Designs Domain names Geographical indications (GI) ip 4 inno 8
Trade marks • Identify the goods and services of one company from those of another • Can be represented graphically • Distinguish the trade origin of certain goods and services • Help consumers to identify and choose between goods and services based on their reputation and quality ® ip 4 inno 9
"A brand is a collection of perceptions in the mind of the consumer. " 10
Different type of trade marks (1) • A Word Adidas • A logo • A word associated with a logo ip 4 inno 11
Different type of trade marks (2) • A numeral/ a letter • A shape • A slogan ip 4 inno "i'm lovin' it" 12
Different types of trade marks (3) • Other and "new" kinds of trade marks: – – – – collective mark certification mark sound mark colours or combinations (colour mark) feel movement mark graphic reproduction • Related area mark: Geographical Indication (GI) • Well-known trade mark - special treatment ip 4 inno 13
Requirements for obtaining exclusive rights • • Graphic representation Distinctive (unique) Not descriptive Not similar or identical ip 4 inno 14
Descriptive - exercise • Half Price for clothes • Jaguar for cars • Tetley for tea bags • Handy for chainsaws ip 4 inno 15
Descriptive - exercise • Half Price for clothes X • Jaguar for cars • Tetley for tea bags • Handy for chainsaws X ip 4 inno 16
Similar/identical (1) • If two goods or services are similar or identical: – the names or trade marks of these two goods or services can neither be similar nor identical • When two goods or services are different: – a similar or identical brand name can be used • Well-known marks have a broader scope of protection ip 4 inno 17
Similar/Identical (2) Meaning the way the mark is: • • Written Looks Sounds (phonetic) Conceptual similarity ip 4 inno 18
Similar/identical - examples • Written Cool / Kool • Looks • Sounding Basket / Buskit For You / 4 U • Conceptual Star / Stern ip 4 inno 19
Exercise - are these trade marks similar ? • Riverland / Timberland • • Zymlin / Xymelin ip 4 inno 20
Exercise - are these trade marks similar ? 1. Eurica / Erika 2. ip 4 inno 21
Exercise - are these trade marks similar ? • Riverland / Timberland NO • YES • Zymlin / Xymelin YES ip 4 inno 22
Exercise - are these trade marks similar ? 1. Eurica / Erika NO 2. NO ip 4 inno 23
Case Study IPRAXA VS PRADAXA • Both trademarks are registered for pharmaceutical products (class 5) • Non of the trademarks have any specific meaning, both trademarks are fantasy words • The natural division of the marks are respectively I – PRAX – A and PRA – DAX – A • The marks only have one syllable in common, which is the last syllable ”A” • Irrespective of the fact that the marks have the same order of the letters P-R-A and X-A, the marks are not visually or phonetically similar • They are not confusingly similar 24
Case Study ROGIER VS ROCHER • Both trademarks are registered for confectionery and chocolate (class 30) • The marks have the first syllable in common ”RO”. The syllables ”GIER” and ”CHER” will in Denmark be pronounced the same way (they are phonetically similar) • ROCHER is the French word for rock, mountain, cake or pastry, but since the average Danish consumer would not know the meaning of the word ROCHER, the conceptual meaning was therefore not ascribed any major importance in the judgment of the likelihood of confusion • The marks are judged confusingly similar 25
Strong VS weak • Strong trade marks give wider protection • Strong trade marks ensure strong identity to your good or service • Get the help of a professional => don't be afraid of investing money in the conception phase of your trade mark ip 4 inno 26
Exercise – strong VS weak PRINCE SAMSUNG ip 4 inno DERMATECH BP 27
Exercise – strong VS weak 1 SAMSUNG 3 PRINCE 5 BP 2 4 DERMATECH 6 ip 4 inno 28
Classification system - how it works, what to do • Like a library system • 45 classes • Protection covers only the goods and services included in the registration • Make a relevant list of goods and services • Think 5 years ahead ip 4 inno 29
Three options for protection • National system: – National Trade Mark Office: provide with national protection • EU system: – OHIM: provide with protection in 27 member states • International system: – Madrid Protocol: provide with protection in the member states ip 4 inno 30
The Community Trade Mark • Covers the entire European Community – 27 member states • Apply at the OHIM office in Alicante (e-filing accepted) or via a National Trade Mark Office • Fees and other information can be viewed at the OHIM website: www. oami. europa. eu ip 4 inno 31
The CTM specificities • Graphic representation • Distinctive • Not descriptive: all or nothing principle – if descriptive in one language = refused • Not similar or identical – community search for each applications – but national search optional ip 4 inno 32
International protection (1) • The Madrid system for the international registration of marks established in 1891 functions under the Madrid Agreement (1891) and the Madrid Protocol (1989) • The two treaties are parallel and independent and states may adhere to either of them or to both • It is administered by the International Bureau of WIPO located in Geneva, Switzerland ip 4 inno 33
International protection (2) • Open to any State which is party to the Paris Convention • Open to intergovernmental organizations which maintains its own office for the registration of marks ip 4 inno 35
Application process • Basic application/registration: an international application can only be filed if the mark has already been applied for at a national Trade Mark Office (referred to as the Office of origin) • The person or legal entity must have a connection with the Contracting Party in order to use the trade mark as a basic application/registration • An international application must be presented to the International Bureau (WIPO) through the Office of origin ip 4 inno 36
INTERNATIONAL APPLICATION 37
Advantage • A simplifying mechanism: – the Madrid system offers trade marks owners the possibility to have their trade marks protected in several countries by filing only one application directly with his own national or regional trade mark office ip 4 inno 38
Final remarks • WIPO publishes a guide to the international registration of marks under the Madrid Agreement and the Madrid Protocol on its website: www. wipo. int ip 4 inno 39
Content • • • Intro - relevance of IP Trade marks Designs Domain names Geographical indications (GI) ip 4 inno 40
What is a design? • "The outward appearance of a product or part of it which results from lines, contours, colour, shape, texture, materials and/or its ornamentation" (OHIM) • Refers to the ornamental or aesthetic aspects of a product • Design makes a product attractive and appealing to customers and may even be its unique selling point ip 4 inno 41
What can be protected? Registered design protects: • Shapes or configurations (3 -D) and/or patterns or ornamentations (2 -D) • Lines, contours, colours, shape or texture => the "appearance" • Does not protect: – the product itself – the technical function of the product – the capacity of a sign to be distinctive 42
Requirements for obtaining exclusive rights • Novelty • Individual character (give an appearance of originality ip 4 inno 43
Three options for protection • National system: – National Office: provide with national protection • EU system: – OHIM: provide with protection in 27 member states • International system: – The Hague agreement: provide with protection in the member states ip 4 inno 44
The Registered Community Design (1) • Single application for a unitary protection throughout the EU • Procedure fast and user-friendly • You can market your product a full year before you apply for protection, without destroying novelty • Publication may be delayed for up to 30 months • Birth of rights => application filing date ip 4 inno 45
The Registered Community Design (2) • Term of protection: – 5 years renewable 4 times => max. 25 years • Who can fill an application? – any natural or legal person without any restrictions as to nationality or state of incorporation • Where, how? – OHIM (Alicante), electronically or by post, fax, hand delivery • Filling condition: – information identifying the applicant, representation of the design suitable for reproduction, indication of the products in or to which the design will apply ip 4 inno 46
Design registered in the EU 000000013 -0001 Casio Computer Company Filed, registered and published on 01/04/2003 ip 4 inno 47
Design registered in the EU 000000021 -0001 Daimler. Chrysler AG Filed, registered and published on 01/04/2003 48
Case Study (1) • Registerd design A • Design B ip 4 inno 49
Case Study (2) Similarities: • Both designs consist of a round saucer, with an hole in the middle Dissimilarities: • The two holes in the designs are not the same size • The curves of the saucers are dissimilar ip 4 inno 50
Case Study (3) • The Danish Patent and Trademark Office did not find the two designs to be similar and granted the registration • However the holder of design A brought the decision before the Danish Board of Appeal. They found the two designs to be similar, due to the hole in the middle and the curves of the two saucers • Because the designs did not differentiate substantially from each other, the registration of design B was cancelled 51
The Unregistered Community Design • No application • Same requirements for protection: – novelty and individual character • Term of protection: – 3 years from the period the design was first made available • Only protects against copying ip 4 inno 52
Advantages of the RDC • A single legal system applies to Community designs, providing strong and uniform protection throughout the European Union • Simplified formalities • It confers on its holder the exclusive right to use it and prevent any third party not having his consent from using it ip 4 inno 53
Content • • • Intro - relevance of IP Trade marks Designs Domain names Geographical indications (GI) ip 4 inno 54
What is a domain name? • Domain name system: convert an internet protocol address (e. g. 192. 0. 34. 65) into something more simple (i. e. a domain name) • Domain name: human-friendly forms of internet addresses => www. epo. org, www. wipo. int, www. ohim. eu ip 4 inno 55
Domain name and trade mark • A registration of a domain name does not confer to its owner any trade mark rights • A domain name may be registered as a trade mark • A trade mark may be registered as a domain name • Incorporating a registered trade mark owned by a competitor or another company into your domain name or meta-tag may be an infringement ip 4 inno 56
Domain name VS trade mark Human-friendly form of internet address Protection of the identifier of a good or service First come, first served Priority application date World wide Territorial scope Not relevant Division into classes of goods and services In principle no examination Examination and opposition ip 4 inno 57
How to register a domain name? • Through a registrar • Check what domain names are available • Make sure to renew your domain name on time ip 4 inno 58
Uniform Domain Name Dispute Resolution Policy (UDRP) • A procedure allowing trade marks owners to resolve clear cases of abusive domain names registration (cybersquatting) without going to court • Applicable to top level domain names (TLD): –. COM, . NET, . ORG • Administrative procedure => no need to go to court • Remedies: – transfer or cancellation, no monetary damages • Mandatory part of registration terms and conditions ip 4 inno 59
Case study (1) • La Caixa D’Estalvis (complainant) VS Fastrack Concepts (respondent) – Domain Name Decision – D 2006 -1642 – LA CAIXA • Respondent registered the domain name lacaixaonlineb. com • Respondent is not the owner of any trademark registration protecting the denomination "la caixa" or "caixa on line services" • Respondent is not commonly known by the domain name at issue ip 4 inno 60
Case study (2) • • “la caixa” is a term in Catalan language (Respondent is residing in the USA) LA CAIXA is a well-known trade mark in Spain Respondent in all likelihood knew of the existence of Complainant’s trademarks and of their relevance in the European market. The Panel orders that the domain name <lacaixaonlineb. com> be transferred to the Complainant ip 4 inno 61
Content • • • Intro - relevance of IP Trade marks Designs Domain names Geographical indications (GI) ip 4 inno 62
Geographical names ≠ geographical indication • Geographical names can be used in the market with the following meanings: – indicates the origin, the "made in" – indicates the origin + the quality => geographical indication ex: Porto ip 4 inno 63
GIs are an important asset • Consumers are constantly faced with the problem of choosing • Differentiation is a key element in any commercial strategy • GIs may become an excellent tool to differentiate products and attract purchases ip 4 inno 64
Legal regime to protect GIs • Protected Designation of Origin (PDO) • Protected Geographical Indication (PGI) ip 4 inno 65
PDO and PGI - main difference • The distinction depends on how closely the product is linked to the specific geographical area – PDO: processing and preparation must take place in the defined geographical area – PGI: at least one of the stages of production, processing or preparation must occur in the specific geographical area ip 4 inno 66
Examples PDOs PDIs Feta Cheese Lammefjordsgulerod Parma ham Lübecker Marzipan Jersey Royal Potatoes Cidre de Bretagne ou Cidre Breton ip 4 inno 67
The registration procedure • Who can apply? – producer groups • Where to address? – local authorities in member states • What is the procedure? – – ip 4 inno application is sent to the Commission publication third parties may object registration 68
Effects • The use and fruition belongs to all producers/traders in the defined area whose products comply with the conditions of production laid down in the specifications • They may prohibit any other person from using or advertise under the registered name, in such a way as to take unjustified advantage of its reputation ip 4 inno 69
Useful links • http: //oami. europa. eu/ (OHIM) • http: //www. wipo. int/portal/index. html. en (WIPO) • http: //arbiter. wipo. int/domains/index. html (WIPO Domain Name Dispute Resolution Service) • http: //www. ipr-helpdesk. org/index. html (IPR Helpdesk) • http: //ec. europa. eu/agriculture/foodqual/quali 1_en. htm (European Commission - Agriculture and Food) ip 4 inno 70
THANK YOU FOR YOUR ATTENTION! ip 4 inno 71
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