European and international advances ip law

Session 2 - Trademarks

The IP landscape is very articulated and complex because we have several IP rights. The main ones are aesthetic creation (the right is the copyright), trade names and signs (trademark), design (design rights) and industrial inventions (patent). They are different from one another. For example, the trademark is used to indicate the origins of a product and service. Designs specify how the product looks like, meaning that it does not confirm the same right as a trademark. Copyright deals with everything that pertains to the artistic world and it protects much more since it is a flexible and unregistered IP right. Patents are focused on inventions and tend to deal with the technological and scientific environment. Then we have minor IP rights such as geographical indication, database right (which is acquiring importance because of the discourse of data), trade secrets, and plant variety. It is a very diverse ecosystem. It is not protected what falls outside and is in the public domain.

What is a trademark?

A trademark is a registered intellectual property over a sign capable of distinguishing your goods or services from other manufacturers, producers, sellers and other undertakings, represented in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection. If you go to register something, you have to bring to the office the sign and the elements that you want to register. You have to consider that if you register your trademark just in Italy, you get the protection only in that country. If you register the trademark at the EU level you get the trademark valid in many states.

Regulations such as GDPR, it is a law adopted and it is applied to all member states, the national judges can apply it directly. Directives are a set of provisions adopted by the European legislator, but the national judges cannot apply them directly.

In the trademark sector, the law is quite harmonized meaning that in all member states you will find the same rules. In the case of copyright, it is not that harmonized, because there is a huge set of directives. The main function of the trademark is to guarantee the identity of the origin of the marked product to the consumer or the user. The reason behind it is to protect the investment that the producer is making; on the side of the consumer, it is a way to guarantee the quality of the product, the consumer knows the quality of the good that is getting. It started with the idea of protecting origin and then it is a much broader concept. It is also a way to protect communication, investment, and advertising.

We have a sign and we have it on goods and services. For one product, it is possible to register more than one trademark, as Toblerone that registered the shape and name. If a trademark is registered in Italy, but not in France, there it can be used for the same purpose and services.

Requirements

In any case, in front of all trademark offices, there is a procedure that can be followed that works in a way that competitors can oppose the registration. There is a period of time that you can challenge and oppose the registration of the trademark. Maybe, the opposition is not successful, and the trademark is on the market and if there is some sort of conflict, you can challenge the validity of the trademark in front of a judge.

The trademark is not valid if it does not meet one of the four requirements.

• Distinctiveness in relation to goods and services - You register something for a category of products. In the case of thermos, it is that you become so successful that the trademark becomes the product, and you have to work to avoid that happening because it would lose distinctiveness. If it loses distinctiveness, it is generic and becomes a word of the dictionary. Distinctiveness can be lost: think about the Bic case that before was a brand and now it simply refers to the pen. Distinctiveness can be acquired: the secondary meaning (for both generic and descriptive marks): is the TM SCARPA for trekking shoes distinctive? Proving secondary meaning:
  • Direct evidence:
    • Direct consumer testimony
    • Consumer survey
  • Circumstantial evidence:
    • Exclusivity, length, and manner of use
    • Amount and manner of advertising
    • Amount of sales and number of customers
    • Established place in the market
    • Proof of intentional copying
• Novelty - A new trademark is new if it does not generate confusion in the market. Identical signs for identical products clearly generate confusion. In the case we have identical or similar signs on identical or similar products, confusion can be generated and clearly it does not meet the novelty requirement. In the case of confusion, the registration is not accepted, or the person that had already the similar sign on the market can oppose the registration, or the trademark office grants the trademark and the person that had already the similar one in the market can bring action. If the identical and similar sign is on different products, there is no likelihood of confusion. In the latter scenario, there is no problem. Assessing the likelihood of confusion:
  • Similarity of trademark: TMs have to be considered as a whole
    • The consumer to take into account is average
    • 3 criteria:
      • Conceptual similarity
      • Visual similarity
      • Phonetical similarity
  • Similarity of goods:
    • Nature of goods, channel of distribution
    • Usual origin of goods and usual point of sale
• Not misleading - There should be actual deceit or sufficiently serious risk that the consumer will be deceived. However, no rules to assess deceptiveness but case-by-case analysis based on:
  • As to goods/services: Nature of goods/services; Quality or other characteristics of goods/services; Nature of TM used
  • As to TMs used: Nature of TM: Fanciful & Arbitrary TMs are usually not deceptive; Suggestive TMs may be deceptive; Descriptive TMs tend to be deceptive
• Not contrary to moral and public policy - There are some words that should not be used, symbols, flags.
  • Public Policy (“ordre public”): Registration of Jardex for meat extract was rejected since Jardax already registered for disinfectant
  • Morality:
    • Swearwords
    • Racist or blasphemous words and images
    • Words offending members of different religions: Hallelujah for women’s clothes was rejected
    • Law (depending on the national legislation) tends to encompass: Flags; Prohibitions Armorial bearings; Official hallmarks; Emblems of states

Duration

In Europe, the duration is 10 years, but it is renewable forever. If they do not renew it, it will enter the public domain. It is a perpetual IP right.

Well-known trademarks

Assessment of well-known TMs depends on the degree of knowledge or recognition of the mark in the relevant sector of the public; duration, extent, and geographical area of any use of the mark; duration, extent, and geographical area of any promotion of the mark; registration of the mark; record of successful enforcement of rights in the mark; value associated with the mark. Principle of Speciality does not apply! You become so famous that no one could use it even for products that are not related to the one that is registered. The legal division branch in the company monitors the market to look for infringement, and they are extremely aggressive.

Design law

It is a registered intellectual property right and it is 5 years renewable. We protect the appearance of a product, and the idea is similar to a trademark. You register anything that deals with the appearance of a product. The sector to which design law applies is a crowded sector. When we talk about fashion, even small variations in pants grant you a design. The reason is that otherwise it would not be possible to have such a competitive market as the one we have in the fashion sector. The requirements are novelty and individual character.

The point of view taken is the informed user:

• Not a designer
• Not a technical expert
• Not an average consumer
• Is particularly observant and notices differences between designs
• Has a high degree of attention
• Has a high degree of knowledge in the field
• Can make direct comparisons

There is limited freedom --> some designs require certain features (you need to put three holes in the shirt, otherwise it is not a shirt). There are variations, so there is still creativity but you have some 'functional' constraints.

Grace period – How to save novelty? You have 12 months from the moment you show your work anywhere in the world to save it and apply for design registration. If you (the designer) disclose and then apply for registration within 12 months, the novelty won’t be destroyed.

Unregistered design right

Unregistered intellectual property right. It lasts for 3 years from the moment you first make your design publicly available. Entire territory of the European Union. Requirements: The same as the registered design right novel and individual character. To enforce must prove that the infringer has copied your design.

Session 3 & 4 - Copyright

Being in the public domain means that you get easily access to the work without asking permission or paying for it. How can it identify the boundaries of a property for something that is not tangible? It is kind of obvious to identify the possession of a tangible object, for IP right is harder since we are dealing with intangible things. Copyright is so much linked to the culture and creative sector (CCS) that is key to understand it because it is the element around which it pivots the business model around this sector. Before having all the so-called digital transformations, it was something easy to design business models based on copyright and this model has been disrupted more than a lot by digital technologies. Copyrights is not a solid block of something, but it means that you have a lot of rights through this right.

It is something automatic, you do not have to go to an office to be designated as an author, you are an author in the moment in which you express your work of art in civil law or you fix it in the work of art in common law countries. Copyright is a form of IP and a “bunch of rights” granted to the author of a creative work, for a limited period of time, to make copies, distribute, license and otherwise exploit a creative work. It is an automated right which applies when a creative work is expressed (or fixed through being written down or recorded).

Copyright exceptions refer to instances, defined by law, where the use of a copyrighted work is in the public interest and the obligation to inform and pay the rightsholder for the use of the work is waived. Exceptions vary from country to country; these are some examples: reproductions for private use; reproduction made by libraries, educational establishments, museums or archives, which are non-commercial; illustration for teaching or scientific research; use for the benefit of people with a disability; reporting current events; quotations for purposes such as criticism or review; use of works such as architecture or sculpture located permanently in public places (i.e. freedom of panorama); parody.

Why do we have copyright protection? It is somehow in almost every country, but we have it for different reasons. We do have different rationales considering the legal system we are referring to:

• Common law (there are mostly based case law) --> it is a way to increase progress and culture.
• Civil law (do base the law on written codes) --> the idea is to protect the author because his work is the expression of his personality

Sources of law

Each country grants and recognizes copyright protection in its own territory by virtue of national legislation. This is known as the territoriality principle of copyright. The rights are enforced on a country-by-country basis.

National

Copyright protection is territorial since rights are normally acquired and enforced on a country-by-country basis, and exceptions and limitations (e.g., use of works such as architecture or sculpture located permanently in public places, aka freedom of panorama) to copyright protection vary from one country to another. As far back as the 1800s, the territoriality principle was recognized that this was inadequate in relation to copyright. At that time, it was becoming easier for a copyright work to be copied in a foreign country but there was nothing what the copyright owner could do about it as their copyright was recognized only in their home country and had no validity in any foreign state. There were calls for an international system of copyright to be developed.

International

Countries that used to have stronger relations started developing bilateral agreements, country A states that it will grant protection for the artists of country B as long as the other country does the same. This is based on the principal of material reciprocity because it is really an exchange between two identified countries. So many countries started to do so but it was really a mess, so it was improved through multilateral agreements. The idea is that you have an agreement that works for all the countries that are part of this agreement. The agreement for copyright protection is the Berne Convention signed in 1886 and last revised in 1971. It is based on the principle of formal reciprocity. The fact that you still have a national right means that if you are an author and your copyright is violated in another country you have to go to the judges in that country. At the heart of the system (behind the Berne Convention) is the principle of national treatment (or principle of formal reciprocity). This means that a copyright owner will be treated as if (s)he is a national of the territory in which the infringement is taking place and can claim the protection of copyright laws there. Yet, copyright owners wanting to use this international system still must be prepared to sue in a foreign jurisdiction with the added difficulties and costs that may be involved.

Regional

This problem is true even for countries even in Europe. It is pretty bad for the proper circulation of the copyrighted good because there are still some boundaries. We do not have a European law on copyright, it is an obstacle for the functioning of the common market. In the EU, copyright rules were merely based on the minimum level of protection that the BECAUSE requires. These rules were pretty different among the Member States and these differences hampered the circulation of copyrighted goods. Therefore, the EU started to adopt Directives for the harmonization of national legislations to ensure the functioning of the internal market. What we have in 2001, we have something that started to harmonize the copyright legislation with the INFOSOC Directive. (It was enacted to adapt copyright legislation to technological developments, especially to the emergence of the digital environment). This legislative instrument has remained the most ambitious EU harmonization effort in the copyright field for a very long time. Another important directive was the DMS Directive in 2019. The Directive seeks to further harmonize EU copyright law with a particular focus on “digital and cross-border uses of protected content”. The deadline to implement the Directive passed on 7 June 2021. Most Member States have missed the deadline. On 26th July 2021, the EU Commission requested Member States which have not implemented the Directive in full to provide information on the transposition process within 2 months. The letters of formal notice sent to the MS open the infringement procedure.

Regulation --> it is a piece of law that comes from Europe and it is the same for all member states.

Directive --> it tells you what is the goal for the legislation, so you have to implement the directive with national law.

Protected works

Even computer programs and databases are protected by copyright but you have to be original enough to be protected. The BECAUSE is for the protection of the rights of authors in their ‘literary and artistic works’: Literary works (e.g., books, newspapers, periodicals); Lectures, addresses, sermons; Dramatic or dramatic-musical works; Musical works (with or without words); Cinematographic works; Choreographic works; Works of drawing, painting, architecture, sculpture, engraving and lithography; Photographic works; Plans, sketches, and 3D works relative to architecture, geography, topography, or other sciences; Applied art (e.g., decoration, interior design); Derivative works, translations, and others. The TRIPS Agreement (the Agreement on Trade-Related Aspects of Intellectual Property Rights – TRIPS), the agreement between all the member countries of the World Trade Organization (WTO) covering IP matters, adds computer programs and databases. We have some non-traditional categories, it is not a closed list. There are new expressions of creativity: culinary presentations (food itself cannot be protected by copyright, their presentations can. If you take the smartphone and you take a photo, you might have a problem. It is something with a very creative choice), tattoos (there are tattoos that are sophisticated and articulated that can be protected), street art.

Criteria for protection

There are 2 criteria, but in some countries, we have 3. Everywhere because of the Berne Convention, you have to get an expression of an idea and this expression has to be original. In some countries, you might have the fixation (which is the third one not common to all).

• Protectable expression --> copyright protects expressions of ideas. Copyright protection shall extend to expressions and not to ideas, procedures, methods, or mathematical concepts as such. There can be the same idea with many different expressions so all the people that have expressed this idea in different ways.
• Originality --> being original does not refer to the artistic judgment of that. It is protectable every original work, or resulting from creative endeavor, irrespective of its literary or artistic merit. The ideas in the work do not need to be original, but the form of exp