Comparison and overlap between trademark and design rights and the protection by unfair competition...

Comparison and overlap between trademark and design rights and the

protection by unfair competition rules

Presentation for IBA Conference, European Forum

Dr. Jürgen Brandstätter

Auckland, October 28th, 2004

Reference texts trademarks and designs

• First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the member states relating to trademarks (Trademark directive - “TMD”)

• Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (Design directive - “DD”)

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Presentation for IBA ConferenceDr. Jürgen BrandstätterAuckland, October 28th, 2004

I.

WHAT KIND OF CREATION IS PROTECTABLE AS TRADEMARK OR

DESIGN? THE “PHYSICAL REQUIREMENTS”

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Trademarks:

Article 2 TMD - Signs of which a trade mark may consistA trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

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Capability of graphical representation

Article 2 TMD mentions (not exhaustively!):• words• letters• numerals• designs• shape of goods• packaging 5


• Colours? Even if they are abstract? The ECJ says basically yes (For the conditions of protections see ECJ C-104/01 “Libertel”)

• Sounds? Yes, if graphic representation is possible (See for the necessary requirements of graphical representation of music OHIM 4th BoA R 781/1999 “Roar of a Lion”)

• Smells? Still not, as no unambiguous graphic representation is possible for the moment but this may change in the future (See ECJ C-273/00)

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Design:

Article 1(a) DD

“Design” means appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials and/or materials of the product itself and/or its ornamentation.

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• appearance of a product

• corporal relation to the product, solid state of aggregation

• NO design protection for Music, Sounds and Smells

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II.

“NON-PHYSICAL“ REQUIREMENTS FOR PROTECTION

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Trademark:

beside formal and “physical” requirements,

absolute grounds for refusal have to be examined

• ex officio• a priori

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• lack of distinctiveness (Art. 2 second subset, Art. 3(1)(b) TMD)

• descriptiveness (Art. 3 (1)(c) TMD)• sign consist exclusively of the shape which results

from the nature of the goods or which is necessary to obtain a technical result or which gives substantial value to the good (Art 3 (1)(e) TMD)

• contrary to public policy or to morality (Art. 3 (1)(f) TMD)

• nature as to deceive the public (Art. 3 (1)(g) TMD)• containing public emblems without authorization

(Art. 3 (1)(h) TMD)11


Design:

ex officio and a priori examination only for

• formal requirements• physical design requirements• Contrariety to public policy and morality

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Reasons for invalidity (a posteriori!)

lack of

• individual character• novelty

-> design registration is quicker!

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III.

DISTINCTIVE AND INDIVIDUAL CHARACTER

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Individual Character15


Distinctive Character16


Distinctive Character

• enables the consumer to distinguish the goods or services of one undertaking from those of other undertakings

• indication of origin

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Individual Character

• design contains visible and original, non-functional elements

• indication of origin not necessary

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Overlap of protection?

• all designs that may be registered trademarks may also be registered as a design but not vice-versa

-> overlap of between trademark and design protection regarding appearances of products with distinctive character

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IV. SCOPE OF TRADEMARK AND

DESIGN PROTECTION

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Trademark:

Article 5 TMDRights conferred by a trade mark

1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:


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(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.

…..


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3. The following, inter alia, may be prohibited under paragraphs l and 2:

(a) affixing the sign to the goods or to the packaging thereof;

(b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;

(c) importing or exporting the goods under the sign; (d) using the sign on business papers and in advertising.


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Design:

Article 9 DD Scope of protection

1. The scope of the protection conferred by a design right shall include any design which does not

produce on the informed user a different overall impression (…)


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Article 12 DD

Rights conferred by the design right

1. The registration of a design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. (….)


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Both rights are….

• exclusive right• pre-requisites for exclusion by the elder right provided

by Article 5 TMD and Article 9 and 12 DD are very similar:

• Design: “do not produce a different overall impression” to the “informed user”

• Trademark “likelihood of confusion” by the “public”-> big differences?


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The differences that makes the trademark really stronger than the design:

• Trademark: basically temporary unlimited protection • Design: maximum protection period of 25 years • Trademark: scope of protection may grow according to

use on the market (dynamic right)• Design: Scope of protection does not depend on use

(static right)


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V.

PROTECTION BY UNFAIR COMPETITION RULES


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Austrian Act against Unfair Competition

Gesetz gegen den unlauteren Wettbewerb – UWG

• Art. 9 UWG protection of distinctive business signs

• Art. 1 UWG “blanket clause”: forbids any commercial activity infringing morality


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Thank you for your attention!

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Comparison and overlap between trademark and design rights and the protection by unfair competition...

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