Activity 2.1.3 Workshops and
Trainings on
“Enforcement of Industrial Property
Rights”
30 – 31 October 2014
Activity 2.1.3
AGENDA
 I. BASICS ON THE VARIOUS INDUSTRIAL PROPERTY RIGHTS.
1. TRADEMARKS
2. DESIGNS
3. GEOGRAPHICAL INDICATIONS
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What is a trade mark ?
 a business identifier
 a guarantee of quality
 the goodwill of the company
 a very valuable asset of the company
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Module 1B
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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
®
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Module 1B
Requirements for obtaining the
register of the trade mark







Graphic representation
Not similar or identical to prior signs
Distinctive character
Not descriptive
Not deceptive
Not exclusively geographical
Not with official symbols
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Non registrable signs
 BEST MEDICAL
Cl. 03: Soaps
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Trademarks in the world
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Types of trade marks (1)
 Word Mark
Adidas
 Figurative Mark
 Fig.Mark containing
word elements
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Types of trade marks (2)
 A numeral/ a letter
 A 3D Mark
 A slogan
“LÓREAL, BECAUSE I´M WORTH IT"
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Types of trade marks (3)
 A colour Mark
 A Sound Mark
 Others
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Different types of trade marks (3)
 Others :
 collective mark
 certification mark
 Related area mark: Geographical Indication (GI)
 Well-known trade mark - special treatment
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Nice Classification
 Registration in one or more classes of the Nice
Classification, depending on the goods or services to
be protected.
 1-45 Classes
 Ex. Cl. 25: Clothes and shoes….
Cl.03: Lotion, shampoo, detergent…
Cl. 38: Telecommunication services
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Registration of a TM:
Entitles to an exclusive right
(monopoly)
Creates certainty
Prevents being sued
Provides more advantages than a
unregistered right.
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THE EXCLUSIVE RIGHT OF A TM
Provides effective protection against:
 copying
 imitation
 misapropriation
 forgery
 use of its reputation
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OBLIGATION OF THE TM RIGHT
HOLDER
 Use the TM in the commerce (possible not
to use it in the first 5 years after
registration).
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Life of trade marks
Duration:
 10 years but can be endlessly renovated by paying a
renewal fee.
Extinction:
 After 10 years without renewal.
 Because of non use during the last 5 years
 Declaration of invalidity.
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Types of Trade mark by
Geographical scope of
Protection
 National TM:
 National Trade Mark Offices: provide with national
protection
 Community TM: :
 OHIM: provides protection in 28 member states
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Types of Trade mark by
Geographical scope of
Protection
 International TM:
Madrid System (Agreement and Protocol). Provides with
protection in the desired member states
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Community Trade Mark (CTM)
 Covers the entire European Community – 28 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
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Module 1B
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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
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Advantages
- 1 application
- 1 language
- 1 currency
Protection in different
countries
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¿Similar?
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Similar/identical (1)
 Well-known marks have a broader scope of protection.
PUMA, ZARA, COCA-COLA
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Similar/Identical
Comparison criteria:
 Phonetic similarity (sounds)
 Written similarity
 Visual similarity (look)
 Conceptual similarity
 Goods and services comparison
 Broader scope of protection for well-known TM
Jurisprudence criteria:
 Global vision of the trademarks
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 Special distinctive character
of an element
Similar/identical - examples
 Written
Cool / Kool
 Looks
 Sounding
Basket / Buskit
For You / 4 U
 Conceptual
Star / Stern
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Exercise - are these trade marks similar
?
 Riverland / Timberland

 Zymlin / Xymelin
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Exercise - are these trade marks similar
?
 Riverland / Timberland
NO

YES
 Zymlin / Xymelin
YES
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Module 1B
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Exercise - are these trade marks similar
?
1. Eurica / Erika
2.
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Exercise - are these trade marks similar
?
NO
1. Eurica / Erika
NO
2.
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Case Study
IPRAXA vs PRADAXA
Both in class 05: medicines
 They are not confusingly similar
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Case Study
ROGIER vs ROCHER
Both in cl.30 (chocolates)
The marks are judged confusingly similar
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Activity 2.1.3
AGENDA
 I. BASICS ON THE VARIOUS INDUSTRIAL PROPERTY RIGHTS.
1. TRADEMARKS
2. DESIGNS
3. GEOGRAPHICAL INDICATIONS
32
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
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Module 1B
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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
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Module 1B
Requirements for obtaining
exclusive rights
Novelty
Individual character (give an
appearance of originality
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Three options for protection
 National system:
 National Office: provide with national protection
 EU system:
 OHIM: provide with protection in 28 member states
 International system:
 The Hague agreement: provide with protection in the
member states
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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
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The Registered Community
Design (2)
 Term of protection:
 5 years renewable => 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
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The Registered Community
Design (2)
 Packaging
 Set of Products
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The Registered Community
Design (2)
 Part of a product
 Logo
 Drawing
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The Registered Community
Design (2)
 Icons
 Typefaces
 Web designs
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The Registered Community
Design (2)
 Get ups
 Ornamentations
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Activity 2.1.3.
I.BASICS ON THE VARIOUS INDUSTRIAL PROPERTY RIGHTS
 2. DESIGNS
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Basis for eventual Ukranian
Designs
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Ejemplo de Diseño Tridimensional
Biscuits
Brand: Cuétara
Chocoflakes
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Module 1B
Design registered in the EU
000000021-0001
DaimlerChrysler AG
Filed, registered and published on 01/04/2003
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Activity 2.1.3
AGENDA
 I. BASICS ON THE VARIOUS INDUSTRIAL PROPERTY RIGHTS.
1. TRADEMARKS
2. DESIGNS
3. GEOGRAPHICAL INDICATIONS
47
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
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Module 1B
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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
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Module 1B
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Legal regime to protect GIs
Protected Designation of Origin
(PDO)
Protected Geographical
Indication (PGI)
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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
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Examples
PDOs
PDIs
Feta Cheese
Lammefjordsgulerod
Parma ham
Lübecker Marzipan
Jersey Royal Potatoes
Cidre de Bretagne ou Cidre
Breton
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PDIs
PDOs
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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
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www.ip4inno.eu. Module 5A: 01
ENFORCEMENT OF IP RIGHTS
IP Rights at a Glance
Rules about
formality
What is Protected?
IP RIGHT
Issued by
An exclusive right to an
Innovation (invention)
International treaties
on formalities,
EU-regulation and
national legislation
National IP office or EPO issues.
It then requires validation
according to national procedure
to become national patent.
An exclusive right to a small
Innovation (invention).
National Legislation
National IP office
An exclusive right to a
business identifier such
as a word or a logo
International treaties,
EU-regulation
and national legislation
National IP office or OHIM
An exclusive right to a
specific design of a
product
International treaties,
EU-regulation and
national legislation
National IP office or OHIM
An exclusive right to a creative,
intellectual, or
artistic forms or "works".
International treaties,
EU-regulation and
national legislation
Does not require registration in
many countries – but can be
registered in UK and in USA.
Geographical
indications
(designation of
origin)
An exclusive right to present on a
good a specific geographical
origin as sign of quality
International treaties,
EU-regulation and
national legislation
Appropriate national office
Trade secrets
-
-
-
Patent
Utility
Model
Trademark
Design
Copyright
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Thank you for your attention
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Activity 2.1.3 Workshops and Trainings