NATALIE PASINATO

11 JUNE 2016

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Trade Mark and Design Protection in Europe

The traditional route, i.e. applying for a trade mark and/or a design in each country

Using the Madrid system (trade marks) or the Hague system (designs) to obtain

trade marks and/or designs in the territory of the Member States

Applying for a European Union trade mark and/or a Registered Community Design

for the whole territory of the European Union

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National Protection for Trade Marks and Designs

File individual

applications

at each of the

National

Industrial

Property Offices

of the EU

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International Protection for Trade Marks and Designs

A single fee is

paid to WIPO

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• An individual fee is payable

to some National Offices

• No single unitary right is

granted - ‘bundle’ of rights’

• Each Trade Mark or Design

is subject to the national

laws of each country

Protection for Trade Marks and Designs in the European Union

• Unitary character

• One Office for all

• One fee for all

• Use is not compulsory

in all Member states

• Fast-track options

available

• E-filing and e-payment

available

• Online search engines

to perform pre-checks

• Status of applications

available online

• Applications can be

filed in any of the 24

languages

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Fees for trade marks

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https://euipo.europa.eu/ohimportal/en/fees-payable-direct-to-euipo

Fees for Designs

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https://euipo.europa.eu/ohimportal/en/rcd-fees-directly-

payable-to-euipo

Language regime at EUIPO

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EUIPO working

languages:

German

English

Spanish

French

Italian

Bulgarian

Czech

Danish

German

Estonian

Greek

English

Spanish

French

(Gaelic)

Croatian

Italian

Lithuanian

Latvian

Hungarian

Maltese

Dutch

Polish

Portuguese

Rumanian

Slovak

Slovenian

Finnish

Swedish

Official languages of the European Union

The European Union Trade Mark

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EUTM registration procedure

A EUTM is a sign capable of being represented graphically, particularly

– words (including personal names)

– designs

– letters

– numerals

– the shape of goods

– their packaging

provided that such signs are capable of distinguishing the goods or services from

one undertaking from those of other undertakings

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EUTM: basic rules (examination)

At EUIPO only an examination on absolute grounds takes place

An applicant can opt for e-filing and use the TMClass database

http://tmclass.tmdn.org/ec2/ (also implemented in India and available on the CGPDTM

website) to indicate the goods and/or services it wishes to cover with the application – with

no other claims (e.g. priority) and immediate payment (e.g. by credit card) the application

is treated as a fast-track, i.e. the examination period is shortened by half of the time and

published earlier.

Signs can be: words (personal names, invented, slogans, misspellings, letters or

numerals, geographical names, etc.), figurative (combinations of words and graphics or

colours, patterns, designs or combinations), colours (single or in combination), 3D (shapes

itself or containing verbal, figurative elements, colours), sounds, olfactory (smell), taste or

holograms (TM search: http://euipo.europa.eu/eSearch/;

https://www.tmdn.org/tmview/welcome)

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EUTM: some examples (words)

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Refused:

• Naturals (Cl. 3)

• Enrich (Cl. 3)

• Therapy (Cl. 10)

• Prima (Cl. 18, 24, 25)

• Options (Cl. 36)

Accepted

• Basic (Cl. 11)

• Maxima (Cl. 10)

• Leicht (Cl. 20)

• Rapid (Cl. 7, 42)

• Renown (Cl. 18, 25, 26)

EUTM: some examples (personal names)

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Accepted

• Ingrid Bergman

• Lady Diana

• Diego Maradona

• Mozart

• Johnny Hallyday

• Jennifer Lopez

Refused

• CLINTON

• BORIS YELTSIN

• FIDEL CASTRO

EUTM: some examples (geographical names)

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As a matter of principle, names of countries are excluded from registration. Other geographical

indications are excluded only when the place has a reputation for the goods or services.

Cl. 9, 16, 38, 41, 42

Cl. 34

Sudan Cl. 2

Cl. 30 Refused

EUTM: some examples (letters & numerals)

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Single letters and single numerals are considered devoid of any distinctive character. Also those

which are only slightly stylised are devoid of any distinctive character, unless they have a colour

claim.

Refused

TDdi (Cl. 12)

XS (Cl. 25)

HD (Cl. 1, 7, 9)

850 (Cl. 12)

Accepted

BK (Cl. 28)

DS (Cl. 9, 40)

A3 (Cl. 12, 37)

750 (Cl. 12)

EUTM: some examples (misspellings)

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Refused

Xtra (Cl. 3)

Xpert (Cl. 9, 16, 42)

Easi-cash (Cl. 36)

Klear trace (Cl. 10, medical

electrodes)

Accepted

Indx (Cl. 9 software)

Sandwicheese (Cl. 29)

Cdestroyer (Cl. 8, 9, 16)

Bollgard (Cl. 1, 31, insect tolerant

genes)

EUTM: some examples (slogans)

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Refused

World’s best way to pay (Cl. 36)

The advantage of information (Cl. 9, 16, 42)

Real people, real solutions (Cl. 35, 37, 42 call

centre)

The best view in surgery right before your eyes

(Cl. 9)

Accepted

More than powder (Cl. 3)

In touch, in flight (Cl. 38, air to ground

cellular communication)

Unlock the potential (Cl. 9, 16, 42,

advisory services in computer area)

EUTM: some examples (colours)

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Refused:

Accepted:

EUTM 14576904

cl. 30

EUTM 14562946

cl. 29

EUTM 14343834

cl. 30

EUTM 14328918

cl. 29, 40, 44

Some examples: EUTM INDIA

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Owner: Amira Pure

Foods Private Ltd

EUTM 007232853

Cl. 30

Owner: Himani FAST

RELIEF

EUTM 003920766

Cl. 3,5,44

VALGLYPA Owner: Cadila

Healthcare Limited

EUTM 011865102

Cl. 5

DIVYA Owner: Patanjali Yogpeeth (Trust)

EUTM 007298491

Cl.3,4,5,9,16,24,25,27,28,30,36,3

9,41,42,43,44

Some examples: RCD INDIA

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Owner: Dinkar Chellaram

RDC 003017334-0002

Cl. 06.06

Owner: Dinkar Chellaram

RDC 002999359-0001

Cl. 32.00

Owner: Kangaro

Industries Limited

RDC 002968107-0002

Cl. 08.03

Owner: Luke Irwin,

Vikram Kapoor

RDC 002920298-

0025

Cl. 06.11, 32.00

EUTM: basic rules (after publication of application)

Once the application is examined it proceeds to:

• Publication

• Start of 3-month opposition period

• If no opposition – trade mark is registered

• If opposition – inter-partes procedure starts

A EUTM can also be attacked after it is registered by means of a cancellation

procedure, either revocation or invalidity of a EUTM.

The Office receives some 16,000 oppositions per year (around 14.4%) and some 1,900

cancellations per year (around 1.7%) of yearly applications (around 120.000).

Fast-track EUTM applications reached an average of 22% of all applications

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The Registered Community Design

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RCD registration procedure

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Design: the appearance of the whole or a part of a product resulting from the

features of, in particular, the ...

RCD registration procedure

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Product:

any industrial or handicraft item, including inter alia:

– Parts assembled into a complex product

– Packaging

– Get-up

– Graphic symbols

– Typographic typefaces

Excluded: “Computer programmes”

RCD: some examples

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RCD: some examples

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Complex Products:

product composed of multiple components which can be replaced permitting

disassembly and re-assembly of the product.

Parts intended for assembly into a complex product

RCD: some examples

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Packaging and Get-up

RCD: some examples

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Get-ups

32-00

RCD: some examples

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Foodstuff (class 1)

RCD: some examples

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Logos

32-00

RCD: some examples

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Graphical user interfaces

Extracts from websites

Screen displays

Icons

RCD: some examples

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Transformable products

RCD: some examples

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Set of articles

Articles having aesthetic and functional complementarity

(common features, being on sale or intended to be used together)

Multiple design applications

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More than one design is allowed in an application, provided the products are in the

same Locarno class.

The indication ‘Ornamentation’ or ‘Product (Ornamentation for)’ in class 32-00 of the

Locarno Classification, in respect of some designs, is neutral and thus ignored for the

purpose of examining whether the indication of products in respect of the remaining

designs meets the ‘unity of class’ requirement.

The same reasoning applies to the following indications of products in class 32-00 of the

Locarno Classification namely, “Graphic symbols”, “Logos” and “Surface patterns”.

“Get-up” is excluded from the above rule.

RCD: some examples

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Porcelain (household), Teapots 07-01

Porcelain (Ornamentation for-) 32-00

RCD: some examples

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Chair 06-01 surface pattern 32-00

Storage furniture 06-04 ornamentation 32-00

RCD: some examples

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All in class 6 of Locarno Classification

RCD: some examples

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RCD: some examples

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RCD: some examples

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RCD: basic rules (examination)

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Requirements for Protection

(Art. 4, 5, 6, 8, 9 CDR)

Novelty

Individual character

No protection for:

component parts of a complex product

which are not visible during normal

use

designs which are solely dictated by

the technical function of the product

designs of interconnections

designs contrary to public policy and

accepted principles of morality

EUIPO Examination

Grounds for Non-Registrability (Art. 47 CDR)

• Not corresponding to the definition of “design”

• Against public policy and accepted principles

of morality

Formalities

2nd language of application, product indication /

classification, priorities, fees, professional

representative

Representation of the design

No examination on:

- articles 4 to 8 CDR (novelty, individual

character, visible in normal use, dictated by

technical function, designs of interconnections)

- relative grounds

- whether the applicant is entitled

Non-registrability

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• Not corresponding to the definition of “design”

• Against public policy and accepted principles of morality

Following Art. 47 CDR and Art. 11 CDIR the applicant is invited to withdraw the application,

submit observations or submit an amended representation of the design(s), provided that

the identity of the design(s) is retained.

Not a design

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• Natural products

• Words without any figurative element

• Ideas, methods, processes

• Functions (patents)

• Smells and fragrances

• Music and sounds

…do not constitute the appearance of a product and therefore do not comply

with the definition of a design.

RCD: not a design - natural products

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RCD: not a design - logos

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RCD: not a design - ideas

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RCD: not a design - functions

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RCD: public policy and morality

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• Racist images or messages, Nazi

symbols and obscene or immoral

images are not acceptable

• Flags and religious symbols are

acceptable provided they are used in a

proper and decent way

• Registering images of famous people

without permission is not against public

policy.

RCD: public policy and morality

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RCD: public policy and morality

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Madrid Protocol

The Madrid System for the International Registration of Marks is governed by the Madrid

Agreement. The objective of this Protocol, concluded in 1891, is to make possible the

protection of a mark in a large number of countries by obtaining an international registration

that has effect in each of the designated Contracting Parties.

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Treaty, acts and other texts in force

• Protocol relating to the Madrid Agreement Concerning the International Registration

of Marks.

• Common Regulations under the Madrid Agreement Concerning the International

Registration of Marks and the Protocol Relating to that Agreement.

• Administrative Instructions for the Application of the Madrid Agreement Concerning

the International Registration of Marks and the Protocol Relating Thereto.

50 Madrid Protocol Members

African Intellectual Property Organization (OAPI), Albania, Algeria, Antigua and Barbuda,

Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and

Herzegovina, Botswana, Bulgaria, Cambodia, China, Colombia, Croatia, Cuba, Cyprus,

Czech Republic, Democratic People’s Republic of Korea, Denmark, Egypt, Estonia,

European Union, Finland, France, Gambia, Georgia, Germany, Ghana, Greece, Hungary,

Iceland, India, Iran, Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Lao

People’s Democratic Republic, Latvia Lesotho, Liberia, Liechtenstein.

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Who is entitled to file an application for International Registration under the Madrid Protocol

A party can file it that party

a) Is a national of,

b) Has a real and effective industrial or commercial establishment in or

c) Has a domicile in one of the contracting parties to the Protocol.

An international Registration application is filed at the Bureau through the office of origin of

the basic national application or registration. It cannot be filed directly at the Bureau.

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• It is possible to base an International Registration upon a EUTM application, registration, or

to designate the EU under an International Registration.

• If a holder designates the EU under an International Registration he must also specify a

second language in relation to that EU designation, which has to be one of the official

languages of the EUIPO: English, French, German, Italian and Spanish.

• This corresponds to the “language of opposition”, which must be specified when filing an

EUTM application and which can be used by an opponent in opposition proceedings against

an EU designation, which has to be one of the abovementioned official languages of the

Office.

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Relation between the Madrid Protocol and the European

Union Intellectual Property Office.

The Hague Agreement

The Hague Agreement is an international treaty administrated by WIPO that serves the

purpose of facilitating the filing of design applications at international level. It was

adopted in 1925 and entered into force in June 1928.

It was later revised by 3 Acts:

– the 1934 Act (The London Act) in force 1939

– the 1960 Act (The Hague Act) in force 1987 – the 1999 Act (The Geneva Act) in force 2004

Components of the Hague Agreement

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65 Hague Union Members

• Geneva Act (1999): African IP Organization (AIPO), Albania, Armenia, Azerbaijan, Bosnia and

Herzegovina, Botswana, Brunei Darussalam, Bulgaria, Croatia, Denmark, Egypt, Estonia,

European Union, Finland, France, Georgia, Germany, Ghana, Hungary, Iceland, Japan,

Kyrgyzstan, Latvia, Liechtenstein, Lithuania, Monaco, Moldova, Mongolia, Montenegro, Namibia,

Norway, Oman, Poland, Korea, Romania, Rwanda, Sao Tome and Principe, Serbia, Singapore,

Slovenia, Spain, Switzerland, Syria, Tajikistan, F.Y.R. of Macedonia, Tunisia, Turkey,

Turkmenistan, Ukraine, United States of America (50)

• Hague Act (1960): Belgium, Belize, Benin, Côte d’Ivoire, D.P.R. of Korea, Gabon, Greece, Italy,

Luxembourg, Mali, Morocco, Netherlands, Niger, Senegal, Suriname (15)

EU Accession: 01/01/2008 61

Special Features

• Protection of designs cannot be obtained in countries which are not members of the Hague

Agreement.

Notable exceptions: China, Russia, Brazil, India, most Latin American Countries, Canada.

• Only members of the same Act can be designated. Self-designation is possible.

• No prior national application or registration necessary.

A design can be protected for the first time at the international level through the Hague

Agreement system (contrary to Madrid Protocol system for trade marks).

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• Direct filings to WIPO by the applicant or his representative. The application can also be filed electronically.

• The application can be filed in any of the 3 languages: EN, FR, ES

• Fees payable to WIPO (in Swiss francs). An international application is subject to 3 types of fees:

basic fee publication fee individual fee for each designated Contracting Party Fee calculator available in http://www.wipo.int/hague/en/fees • Multiple applications: max 100 designs of the same Locarno Class

• Deferment of publication may be requested for a period that cannot exceed 30 months

(under 1999 Act) from the date of filing or the date of priority.

Special Features

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WIPO examines formal requirements such as those relating to the quality of the

representations of the design(s) and the payment of the required fees. The applicant is

informed of any deficiencies and is given a time limit of 3 months to correct them. If he fails

the application is considered abandoned.

Where the application complies with the formal requirements the design is recorded to the

International Register and published in the Bulletin (unless deferment of publication has

been requested).

Substantive examination falls within the exclusive competence of the Office of each

designated Contracting Party (6 to 12 months for refusal).

Scope of protection, duration and renewal according to the domestic legislation of

Contracting Parties.

Invalidity only at the Contracting Party level.

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• EUIPO: examination on grounds for non-registrability:

- no compliance with design definition

- against public policy and morality

6 months to communicate to WIPO the outcome of examination

• EUIPO charges 62€ per design

• No republishing in the Registered Community Designs Bulletin, only providing a link to the

Hague Express Bulletin

• 47% of International applications contain EU designation

EUIPO procedure

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Additional information about the Hague System

http://www.wipo.int/hague/en/

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http://www.wipo.int/haguebulletin/?locale=en

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Statistics (04/05/2016)

EUIPO

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EUTM applications EUTM applications published

EUTM registered Renewal

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Statistics (29/02/2016)

INDIA

EUTMs Received EUTMs Registered

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Statistics (29/02/2016)

INDIA

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Statistics (29/02/2016)

INDIA

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• EUIPO website:

https://euipo.europa.eu/ohimportal/en/

• Statistics:

statistical travel pack EUIPO

• Search sources:

https://euipo.europa.eu/eSearch/

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Expert name: Ernesto Rubio and

Patricia Lopez

Experts´ titles: Advisor and Madrid

Expert

Office for Harmonization in the

Internal Market (OHIM)

Thank You

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