Presentation on European Soft IP Rights to Syracuse University School of Law

Introduction to the complete
Soft IP registration cycle
Legal Aspects of Trademark and Design
protection in the European Union
by
Niall Tierney
Barrister-at-Law (Ireland)
Solicitor (England & Wales)
European Trademark and Design Attorney

Ways of protecting Soft IPRs in the
European Union
Rely on un-registered (Common law) rights;
Register my name and/or logo as a Trade Mark;
Rely on Copyright to stop others copying my logo;
Register my logo as a design;
Register my product shapes and packaging as designs;
Copyright Niall Tierney 2012. All Rights Reserved.

Common law – Passing off
• In Great Britain and Ireland, the holders of both registered and un-registered
Trade Marks can seek protection under Common law.
• An action in Passing off can be relied on if:
• A misrepresentation has been made in course of trade by another person to customers or
prospective customers of the aggrieved party.
• The misrepresentation is calculated to deceive others into thinking that the offending sign
is that of the aggrieved party or is licensed/authorised by the aggrieved party.
• The misrepresentation is such that it has damaged, or is likely to damage, the
goodwill/reputation that the aggrieved party enjoys under his name.

Trade Mark/Trademarks
• A Trade Mark is a sign that distinguishes your goods and/or services from
those of your competitors.
• A Trade Mark can encompass anything from the brand name you use on
your product, to logos, the shape of goods and the get up of packaging.
The list of what may constitute a Trade Mark is not exhaustive.
• In some cases, it is possible to register smells, shapes and sounds as Trade
Marks.
• A Trade Mark must be capable of being represented graphically.

Registering a Trade Mark in the UK
• In the UK, a Trade Mark registration is granted by the UK Intellectual
Property Office.
• Trade Mark protection in the UK can also be achieved by applying to
register a pan European (CTM) Trade Mark.
• A Trade Mark can be refused registration on the following grounds;
– Absolute Grounds;
– Relative Grounds;
• An unchallenged Trade Mark application will be registered within
about four to six months from filing

Types of Trade Marks
Shape Trade Mark Single Colour Trade Mark

Absolute Grounds of Refusal of a
Trade Mark
• Trade Mark is not capable of distinguishing your goods and/or services from those of
your competitors;
• Is not capable of being represented graphically;
• It does not have distinctive character;
• It describes the goods and/or services for which registration is sought;
• It consists exclusively of the shape of the goods for which registration is sought;
• It consists exclusively of a shape which is functional;
• It consists exclusively of a shape which gives substantial value to the goods for which
registration is sought;
• It is contrary to accepted principles of morality or law;
• It deceives as to the nature, quality, or geographical origin of the goods and/or
services for which registration is sought;

Relative Grounds of Refusal
 An application to register a Trade Mark can be challenged by the holder of an
earlier identical or similar Trade Mark that covers identical and/or similar
goods and/or services.
 A Trade Mark will also be refused if the holder of an earlier reputable or
distinctive Trade Mark can show that use of the later Trade Mark, would,
without due cause either:
 take unfair advantage of, or
 be detrimental to the distinctive character or reputation of the earlier trade
mark.
 A Trade Mark can also be refused if it clashes with an earlier unregistered right
in the following circumstances:
• There is goodwill/reputation under the earlier right in the United Kingdom;
• The Trade Mark being applied for will deceive consumers into believing that the
goods/services for which registration is sought originate from or are endorsed
authorised by the earlier right holder, and
• Use and registration of the filed Trade Mark will damage or is likely to damage the
business goodwill under the earlier right.

The Community Trade Mark

European (CTM) Trade Mark
– The Community Trade Mark is a single Trade Mark registration that is
effective and enforceable throughout the 27 Member States of the
European Union. This means it is not necessary to seek registration of your
Trade Mark in each EU Member State.
– A CTM is an ‘all or nothing’ right. A CTM cannot be effective in some EU
Member States and not others.
– It may be possible to convert a CTM into applications in EU Member States.
These converted applications will retain the same date of application as
the CTM.
– A CTM lasts for an initial period of 10 years, but can be renewed
indefinitely for further 10 year periods.

How to obtain a CTM
• An application can be filed directly with OHIM or it can be filed
through a national office of one of the 27 Member States of the
European Union.
• The holder of an International Trade Mark registration can designate
the CTM rather than separately designating each EU Member State.
• A CTM application can be based on the priority of an earlier TM
application filed in a Paris Convention six months previously.
• A CTM can also claim the seniority of an earlier EU Member State
Trade Mark registration, provided:
• The owner is the same.
• The Trade Mark is the same
• The goods and/or services are identical to those for which protection is
sought.

The process of registering a CTM
• An application for a CTM is examined centrally by the Trade
Marks and Designs Registration Office of the European Union
(OHIM), Alicante, Spain.
• The Examination Division of OHIM examines the application to
ensure that the Trade Mark for which registration is being
sought does not fall into one of the exclusive ‘Absolute Grounds
of Refusal’.
• If a CTM successfully passes the ‘Absolute Grounds of Refusal, it
is published for a non-extendible period of three months to
allow third parties to oppose.
• If a third party wishes to oppose, their opposition must be based
on one or more of the ‘Relative Grounds of Refusal’.

Madrid Agreement/Protocol
International registration of
Trademarks & Service marks

Overview of Madrid
• Centralised system to facilitate the international registration of Trademarks
and Service marks.
• Governed by two treaties:
– Madrid Agreement, 1891
– Madrid Protocol, 1989
• Any country (Contracting Party) that is a member of Paris Convention may
become a party to either the Agreement or Protocol or both
• Madrid Agreement and Protocol are administered by World Intellectual
Property Office (W.I.P.0) in Geneva, Switzerland.
• United States of America is a member of the Madrid Protocol.
• The European Union is a member of just the Madrid Protocol.

Who can use the Madrid system?
• An application for an International Registration (IR) can only be
filed if registration has been granted or is being sought for the
same Trademark in the country where the Applicant has the
required connection.
• An application for an IR may only be filed by a natural or legal
person which is:
– domiciled;
– is a national;
– or has a real and effective industrial or commercial establishment
in a country which is party to the Agreement or Protocol.
Copyright Niall Tierney. All Rights Reserved.

How does the Madrid system work?
• An applicant for an IR must file application through its Office of
Origin (the Trademarks office where the applicant has the
required connection).
• The IR application should designate those other countries of the
Madrid Agreement or Protocol where protection of the Trade
Mark is desired.
• It is possible to backdate the IR to the date of the base
application if done so within six months of the filing of the base
application.
• It is not possible for an application filed under the Protocol to
designate those countries that are only members of the
Agreement.

How does the Madrid system work?
• It is not possible to designate the country where
Applicant’s Office of Origin is based.
• An application for an IR can be filed in any of the
following three official languages:
• English
• French
• Spanish
• Office of Origin certifies that the mark for which
registration is sought is the same as the basic application
or registration.

Refusal of Protection
• The office of a designated country must examine request for
designation of an IR within the following time limits:
• 12 months if application is governed by Madrid Agreement
• 18 months if application is governed by Madrid Protocol
• An application to designate an IR must be examined in the same way
as an application filed directly before the office of the designated
country.
• If an application for designation is provisionally refused, it is necessary
to appoint a local attorney to deal with the Provisional Refusal.
• If office of a designated country finds no reason to provisionally refuse,
it may issue a Statement of Grant.

3rd
party opposition to a Designation
• Under the Protocol, the office of a designated country may notify
the IR applicant that the 18 month period can be extended
where Provisional Refusal is based on a third party opposition.
• Designating office can only extend 18 month period in the above
circumstances where:
– It has informed WIPO of the possibility that oppositions may be
filed after the 18 month period
– Notification of Refusal within a month of the end of the opposition
period and no later than seven months from which opposition
period began

Rule of Dependency
• An International Registration depends on its basic registration
or application for a period of five years from its date of
registration.
• If the basic registration ceases to have effect during the five year
period, the International registration will no longer have effect.
• If the basic application upon which the International
Registration is based is rejected or refused during the five year
period, the IR will fail.
• An IR becomes independent of a basic registration or application
after five years. Thereafter third parties have to separately
challenge each designation.

Replacement of national registration
by International Trade Mark
• An IR replaces a national TM registration for the same Trade
Mark in respect of the same goods in the same designated
country.
• Therefore owner of a national TM can let it lapse if it has an IR.
• If the national registration lapses due to non renewal, the owner
can still assert rights under the IR.
• Replacement of a national registration by an IR takes place
automatically, although holder can ask national office to record
interest on Trade Marks Register.

Changes in an International
Registration
• A change in name and/or address of holder can be recorded centrally with
WIPO. It is not necessary to record separately in each designated country.
• A change in the ownership of an International Trade Mark registration can be
recorded centrally.
• The following may also recorded centrally with WIPO:
– A restriction in the goods or services description in respect of some or all of designated
countries
– A cancellation of the IR in some or all of designated countries in respect of some or all of
goods and/or services.
– A licence granted in some or all of designated countries in respect of some or all of goods
and/or services.

Advantages of Madrid System
• Businesses wishing to seek international protection of their
Trademarks only have to file one application in one language.
• If IP offices in designated countries wish to refuse, they must do
so in 12 months (Agreement) or 18 months (Protocol) otherwise
protection is automatically granted.
• Changes to IR can be recorded centrally through WIPO rather
than in each designated country.
• There is only one renewal date and only one registration to
renew. Not necessary to separately renew in each designated
country.

Disadvantage of Madrid System
• It is necessary to appoint local Trademark counsel to handle and
deal with Provisional Refusals that may be raised by IP office in
designated country.
• An International Registration is vulnerable during its first five
years if the registration or application upon which it is based
lapses, is abandoned or successfully attacked.
• The scope of an International registration cannot be wider than
the application or registration upon which it is based.
• It is not possible to base an IR on a CTM if the holder of the CTM
is not an EU national, is not domiciled in the EU or does not have
a real or substantial presence in the EU.

Enforcing a Trade Mark registration
• A Trade Mark registration gives its holder the exclusive right to use the Trade
Mark in relation to the goods and/or services for which it is registered in the
territory where the Trade Mark is registered.
• A Trade Mark registration allows its holder to prevent the unauthorised use
of:-
– An identical sign in relation to identical goods.
– An identical sign in relation to similar goods/services where use would
give rise to a likelihood of confusion (including a likelihood of
association).
– A similar sign in relation to identical and/or similar goods/services where
use would give rise to a likelihood of confusion (including a likelihood of
association).
– An identical and/or similar sign in relation to similar and/or dissimilar
goods/services where use would, without due cause, take unfair
advantage of, or be detrimental to, the distinctive character or reputation
of the Trade Mark.

The Registered Community Design

What is a design ?
• A design constitutes the appearance of the whole or part of a product
which results from features such as lines, shape, contours, texture.
• A design can also include the materials of the product itself and/or its
ornamentation.
• Product - Any industrial or handicraft item, including inter alia parts
intended to be assembled into a complex product, including packaging, get-
up, graphic symbols and typographic typefaces, but excluding computer
programs.
• A complex product is a product which is composed of multiple
components which can be replaced permitting disassembly and re-
assembly of the product

Requirement for a valid design
For a design to be valid in Europe, it must:
1. Be new, i.e. no identical design has been made available to the public:
a. in the case of an un-registered design, before the date of claimed protection;
b. in the case of a registered design, before the date of application for registration.
2. Have individual character, i.e. if the overall impression it produces on an
informed user is different to designs that are already known:
a. in the case of an un-registered design, before the date of claimed protection;
b. in the case of a registered design, before the date of application for registration.

Types of Designs
Motorcycle helmet Product packaging

Design Right – United Kingdom
 Design Right is unique to the United Kingdom.
 Design Right is a form of un-registered protection.
 Design Right gives automatic protection for the internal or external shape or
configuration of an original design.
 Design Right does NOT provide protection for two dimensional designs such as
patterns.
 Design Right lasts from either:
• 15 years from the date of creation of the design, or
• 10 years from the date the design was first marketed.

European (RCD) Design
 An RCD is a unitary design registration that is effective and enforceable
throughout the 27 Member States of the European Union.
 The RCD Register is run and maintained by OHIM (aka the Trade Marks and
Designs Registration Office of the European Union).
 An application to register an RCD is not examined to assess whether it meets
the legal criteria for registration. However, to avoid third party challenges, an
RCD must be valid.
 To be valid, an RCD must be novel and have individual character.
 An RCD can be registered for up to 25 years provided a renewal fee is paid
every 5 years.

European (RCD) Design – contd/...
• An RCD gives its holder the exclusive right to use the design throughout
the 27 Member States of the European Union and to prevent its
unauthorised use by third parties whether by deliberate copying or by
independent creation of a similar design.
• It is possible to file multiple designs in one application.
• It is also possible to keep the RCD confidential for a period of up to 36
months from the date of filing.

Enforcing my design
• The holder of a Registered Design has exclusive rights to use it throughout the
relevant territory and to prevent third parties from both deliberately copying
and independent development of a design with the same overall impression.
• Protection of a Registered Design extends to all products, e.g. if your
registration is registered in respect of toys, you can prevent the use of a design
of the same overall impression on biscuits.
• The rights in a European Registered Design (RCD) can be enforced in any of the
designated Design Courts throughout the European Union.
• The holder of an un-registered Design can only prevent the deliberate copying
of the protected design and protection only lasts for three years from when the
design was first made available.

Combination of systems
• If the correct conditions are met, it is possible to use a CTM as the basis of a
Madrid (IR) registration – means you would only have two TM registrations
for the same Trade Mark in most countries throughout the world
• The holder of a Madrid IR can have this registration protected in the European
Union by simply designating the CTM rather than each individual EU Member
State – be aware of potential pitfalls.
• Possible to protect a logo in the European Union using both the RCD and CTM
and CTM systems – care must be taken to file RCD first in order not to destroy
novelty.

Thank you
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Presentation on European Soft IP Rights to Syracuse University School of Law

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