IP Law Flashcards
Please define what “exhaustion” means in European intellectual property law. (10 points)
doctrine about patent rights
The exhaustion of intellectual property rights constitutes one of the limits of intellectual property (IP) rights.
tension between IP and personal property rights
tension between IPR and free movement
- TFEU quantitative restrictions on imports and all measures having equivalent effect
The use and circulation of a product which has been put on the market by the patentee or a third party acting with the consent of the patentee (e.g. a licensee) cannot be prohibited by the patentee anymore.
This concept of exhaustion is applicable to the entire territory of the EU and EEA, i.e. the common European market.
- freedom of purchaser to deal with personal property as he sees fit
- >
- only for the term of the products natural life and
- for purposes it was intended
doctrine of exhaustion does not displace patentee’s right to prevent third parties from remaking a product they have purchased
making vs. repairing (allowed)
making and selling vs reselling to third parties
UPC Agreement: prohibits a patentee from invoking her right to prevent a third party from selling a patented product within the EU after the product has been placed with her consent on the market within EU territory
-> unless legitimate grounds for patentee to oppose further commercialisation of the product
Please introduce what are the functions of trademark protection. (10 points)
trade mark industry vital component of the whole structure of advertising and marketing that is a key feature of the commercial scene
logos, catchphrases and images all fall within the ambit of the trade mark and form valuable part of goodwill of the business with which they are associated
if trademark registered accordingly it confers on the proprietor of the mark exclusive rights in the mark and the right to bring actions for infringement of the mark
-> mark becomes an item of personal property
effect of registration is to confer these exclusive rights for a period of 10 years (renewable)
mark is an item of property -> proprietors of trade marks want to trade with them
clear provisions exists permitting unrestricted dealing with the trade marks
Regulation permits assignment and licencing of tm
Trademarks play an important role
1st function: indication of trade origin
trademarks allow consumers to distinguish goods/services of a company …
… from those of another company
Thus, they encourage brand owners to produce high-quality goods under a certain sign
This also protects consumers from being misled into buying the wrong product
2nd function: “psychological” message/brand image
Especially in markets where goods are not so differentiated (e.g. clothing) …
… consumers make purchase choices relying also (and mainly) on the “brand image” of the mark
Eg fashion:
… here the brand image is often more important than the product itself
… and consumers often buy them instinctively without paying attention to the product itself
EU law protects both functions of trademarks
investment function”: trademark is also a strategic business tool and can be used to build up a reputation (Google France case)
“advertising function”: trademark can also be used for advertising purposes (Google France case)
L’Oréal v Bellure (2009): also “guaranteeing the quality of the goods or services in question and those of communication, investment or advertising”
I. Please summarize what measures, procedures and remedies the IP rightholders might rely
on under the Enforcement Directive (2004/48/EC) of the European Union. (5 points)
Enforcement of IPRs
EU Directive 2004/48: “Enforcement Directive”
First Directive aiming at harmonising all IPRs
Form of horizontal harmonisation
Earlier directives on IP: vertical harmonisation
EU Commission proposal on criminal sanctions for IPRs infringement
Subjects entitled to ask for remedies Art. 4 Dir: subjects entitled are (a) the IPR holders (b) the persons authorised by the said holders (e.g. licensees) (c) collective rights management bodies (d) professional defence bodies
Evidence of violation
It is often difficult to gather evidence of IPRs violation
Art. 6.1 Dir: courts may order that an evidence (in control of the opposing party) be presented in court by defendant
Art. 6.2 Dir: in case of infringement committed on a commercial scale, courts may order the defendant to communicate banking/financial/commercial docs under his control
Bank accounts records/invoices/delivery notes/warehouse receipts
Art. 6.2 Dir helps IPRs owners in proving damages
Recital 14 Dir: acts carried out on a commercial scale = acts for direct/indirect commercial advantage
Subject to protection of confidential information
Gathering evidence is not enough
It is also important to preserve evidence
Art. 7 Dir: court may order provisional measures to preserve evidence in respect of the alleged infringement
Application of the injured party
Subject to protection of confidential information
Eg: “description” of the infringing goods
It is carried out by a court bailiff
It is often necessary when it is not possible to buy a sample of the infringing product
… and in case of infringement of process patents (and the violation is not detectable by examining the final product)
Very similar to Anton Piller orders in UK
Another measure for preserving evidence is the seizure of infringing goods
Obtaining information on (i) involvement of third parties and (ii) origin of infringing goods
Art. 8 Dir: info on origin of goods and distribution networks used by defendant
Eg: name/address of producers, distributors, suppliers, wholesalers, retailers, etc.
Eg: information on quantities produced, delivered, received or ordered and on price of goods/services
Subjects required to give information are persons:
(i) found in possession of infringing goods
(ii) found to be using the infringing services on a commercial scale
(iii) indicated by the above persons as being involved in the production and distribution of the goods or the provision of the services
Provision useful to detect distribution channels/original producers infringing goods
… enabling right holders to take action also in different jurisdictions
Provisional measures: to stop infringing activities (Art. 9)
a) Interlocutory injunctions and b) seizures
Interlocutory injunctions prevent any imminent infringement of IPR …
… or forbid the continuation
Orders to do (mandatory) or refrain from doing an act (prohibitory)
These injunctions do not establish a right, just maintain status quo (pre-infringement situation)
Rapid and cheap way of procuring temporary redress
Seizures aims at seizing/delivering up goods suspected of infringing IPR
Purposes:
preventing the entry into channel of commerce of infringing goods
therefore avoiding further circulation of infringing products
Carried out by a court bailiff
Right holders can participate to seizure operations
Art. 9.3 Dir: to obtain injunctions/seizure, right owners must show evidence:
(i) they are right holders
(ii) their IPRs are being infringed (or infringement is imminent)
descriptions/seizures may be ordered inaudita altera parte (without the other party having been heard) …
… where delay is likely to cause irreparable harm to IPR holder (Art. 9.4 Dir)
so-called ex parte orders
After execution of the measure, the parties effected must be given notice …
… and a review (including a right to be heard) should take place …
… to give the respondent a chance to challenge the lawfulness of the injunction/seizure
Provisional/precautionary measures are not “perpetual”
They must be followed by a proceedings on the merits
Art. 9.5 Dir: if applicant does not institute such proceedings (within a specified time), the measures are revoked
What if a provisional measure is revoked (eg after proceedings on the merit)?
Appropriate compensation to the accused party for any injury caused by those measures
Remedies at the end of a proceedings on the merit
“Corrective measures” (Art. 10 Dir):
(i) recall from the channels of commerce of infringing products
(ii) definitive removal from the channels of commerce
(i) destruction
The aim is to “correct” the infringement and eliminate infringing products
Art. 11 Directive
Final injunction:
one of the most important measures obtainable by IPR holders …
… as it prevents the continuation of the infringing activity
Non compliance with injunction orders is subject to penalties …
… with a view to ensuring compliance
Penalties aim at strenghtening the injunction order
Damages are awarded with the decision on the merits of the case
Money damages are the most important
Art. 13.1 Dir: just infringers who knowingly engaged in infringing activities may be ordered by courts to pay damages
Damages can be invoked in case of wilful and/or negligent acts
No punitive damages
Compensation based on objective criteria
Overriding principle: an injured party must be restored to the position it would have been in before its IPR was infringed
When quantifying damages, all factors must be taken into account:
(i) Negative economic consequence which the injured party has suffered
(ii) Any unfair profits made by the infringer
(iii) Reasonable royalty rate
(iv) Moral prejudice caused to IPR holder by the infringement
Negative economic consequence which the injured party has suffered
(a) Damnus emergens: actual loss suffered by the injured party
(b) Lucrum cessans: lost profits suffered by right holder
(ii) Any unfair profits made by the infringer
It is possible that IPR owners has not recorded lost profits
Nonetheless, they are entitled to damages compensation
Art. 13.1: any unfair profits made by the infringer must be taken into consideration
(iii) Reasonable royalty rate
Royalties which would have been due if the infringer had requested authorization to use IPR
Such method may be a successful approach …
… if the right holder shows in court to have granted licences in the past
(iv) Moral prejudice caused to IPR holder by the infringement
Art. 13.1 Dir: also moral damage should be compensated
Such damages are usually requested by companies renowed for quality/reliability of goods/services
Publication of judicial decisions
Art. 15 Dir: courts may order – at the request of applicant and expenses of infringer – appropriate measures for dissemination of information concerning the decision …
… including displaying the decision and publishing it (in full or in part) on newspapers or specialized magazines
It aims at giving a message to trade and avoiding market distortions
22 December 2010 Report from the Commission on the Application of the Enforcement Directive:
it concluded that the Directive has had a substantial and positive effect on protecting IPRs under civil law in Europe
Bad news: the sheer scale of infringement is a terrifying prospect to tackle
… not least because of the unprecedented increase in infringement opportunities offered by the Internet, a challenge which the Directive was not designed to address
Please shortly analyze, whether the doctrine of exhaustion is applicable to the situation, where the user has a permission to print and sell the copies of an art work on paper posters; however, the user reproduces and distributes copies of the said work on canvas (that is identical with the original medium of the work).
CJEU: a replacement of the medium …. results in the creation of of a new object incorporating the image of the protected work, whereas the poster itself ceases to exist.
Such an alteration of the copy of the protected work is actually sufficient to constitute a new reproduction of the work, within the meaning of article 2 of directive 2001/29 which is covered by the exclusive right of the author and requires his authorisation.
in these circumstances right holder should have given consent to canvas incorporating the work -> then first sale or transfer of ownership of that new object itself exhausted the distribution right
-> important to exclude products operation in the context of services, including cloud computing and other online services.
Introduce the general and special rules on jurisdiction in copyright cases under EU law. Please refer to the case law of the CJEU as well!
Topics harmonized:
Subject matter (works and non-authorial expressive subject
matters);
Rightholders (authors and related rightholders);
Exclusive economic rights (fragmented harmonization);
Limitations and exceptions (fragmented implementation);
Enforcement and remedies (covered entirely).
Topics NOT harmonized (legislative competence for
Member States; but partially limited by CJEU case-law):
Moral rights;
Certain economic rights (having no inherent cross-border
nature, f.e. public performance; adaptation);
Copyright licencing and exploitation of the works.
Ip rights are territorial by nature, in cross-border disputes the venue of the proceedings is, besides applicable law , of special importance
Brussels regulation governs international jurisdiction of the eu ms if the defendant is domiciled within the eu
If defendant outside eu , then national rules on jurisdiction
Persons domiciled in a ms shall, whatever their nationality, be sued in the courts of that ms
- general jurisdiction - defendants play at home
Ex: austrian may be sued in austrian courts even if the copyright infringement occurs in france
Persons domiciled in a ms may only be sued in the courts of another ms by virtue of the rules set out in brussels regulation
- national rules providing for “exorbitant jurisdiction” are not applicable
Special jurisdiction under brussels regulation:
contracts
tort, delict or quasi-delict
jurisdiction over joint defendants
the Shevill doctrine:
the Shevill doctrine restricts an action filed in courts competent on the basis of article 5 of the brussels regulation ( tort, delict or quasi delict) to the damage suffered solely in the state of the court seized
jurisdiction over joint defendants:
a person domiciled in the ms may also be sued
where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided that the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings
Enforcement: judgments in civil and commercial matters rendered by a court in one ms are enforceable across eu
-has to be validated and declared first
Explain how the European Patent Convention (EPC) operates.
European Patent Convention (EPC) is a regional patent treaty aiming at avoiding the duplicated work of several national patent offices
Signed at Munich in 1973 and entered into force in 1977
EPC is not a EU Treaty
It allows an applicant to file an application at European Patent Office (EPO) and obtain a basket of national patents
Now it is a very popular route to obtain patents
Centralised procedure of applications
Once granted, “bundle” of national patents
Establishment of EPO, in Munich
It provides opposition proceedings
EPC has the effect of harmonising substantive patent laws of States
However, certain aspects are not harmonised by EPC
EPO has five divisions: - Receiving Section - Search Division - Examining Division - Opposition Division - Legal Division Two-tier appellate structure - Technical and Legals Board of Appeal - Enlarged Board of Appeal EPO finances itself from applicants’ fees
Substantive requirements of patentability:
(i) Novelty (not belonging to the state of the art)
(ii) Inventive step (not obvious to a person skilled in the art)
(iii) industrial application (can be used in any kind of industry)
Inventive step (not obvious to a person skilled in the art) Amazon case (T- 1244/07) Board of Appeal agreed with the EPO’s original decision that Amazon’s patent application lacked an inventive step
Unpatentable inventions (Art. 52.2 EPC):
(a) discoveries, scientific theories and mathematical methods
(b) aesthetic creations
(c) schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers, and
(d) presentations of information
excluded only “as such”. They are patentable if have a technical feature
Computer-related inventions (software patents)
They may have technical character, if they cause a technical effect when run on a computer
In this case, these computer-related inventions are patentable
Microsoft/Clipboard formats (T-424/03): EPO confirmed patentability
IBM/Computer Programs (T-1173/97): EPO denied patentability
EPO opinion G 3/08 (EBA): legitimate development of case law, not conflicting decisions
Patentability of software: very hot issue at EU level
2002: proposal for a Directive harmonizing patentability of software
Supporters of Directive: Microsoft, HP, EPO
Opponents of Directive: free software associations, open source programmers, small business groups
Proposal rejected on July 2005
Art. 53-c EPC:
(i) methods for treatment of the human and animal body by surgery or therapy; and
(ii) diagnostic methods practiced on the human or animal body
shall not be regarded as inventions which are susceptible of industrial application
Rationale: medical treatment of humans or veterinary treatment of animals should not be hampered by patents
EBA: aim of Art. 53-c) EPC is to free from restraint non-commercial and non industrial medical and veterinary activities
Rationale: policy decision to prevent restrictions on the use of new or improved surgical, diagnostic or therapy methods
Public interest: such methods should be available to all surgeons, doctors, etc.
US case Samuel L. Pallin v Jack A. Singer M.D. and The Hitchcock Clinic (1996)
How to reconcile the above with patentability of drugs?
Difference between surgeons and drug companies:
Surgeons are professionals who are expected to transfer their knowledge to others and do not expect economic recompense
Drug companies operate in a competitive industry and need patents to justify investments in R&D
Art. 53-a) EPC excludes from patentability inventions contrary to ordre public or morality
Aim: to exclude from protection inventions likely to induce riot or public disorder, or to lead to criminal or other offensive behaviour
Eg: “letter bomb”
This exception has been invoked in a few cases
The applicant Entitlement to patent Languages in the EPO English, French German Priority
Contents of the patent application
(i) indication that a European patent is sought
(ii) designation of one contracting State EPC
(iii) information identifying the applicant
Application must also contain:
(i) description of invention
(ii) claims and abstract
(iii) designation of inventor
(iv) if the applicant is not the inventor, designation of the origin of the applicant’s right to patent
Description of invention:
(i) specify technical field
(ii) indicate background art
(iii) briefly describe figures in the drawings
(iv) describe in detail one way of carrying out the invention
(v) indicate way in which invention is capable of exploitation in industry
Claims: define the protection sought
Extent of protection sought in the application
Protection conferred by the patent
Very important during the application process and litigation
Three requirements for claims:
(i) define the matter for which protection is sought
(ii) be clear and concise
(iii) be supported by the description
The EPO provides for a series of fees to be paid: (i) filing fee (ii) search fee (iii) fee per Designated State (iv) fee per claim over ten claims (v) examination fee (vi) fee for granting/printing Failure to pay within the time limits: withdrawal of application
Filing of patent application
Preliminary examination of application (by EPO Receiving Section)
Search under EPC (by EPO Search Division)
Search report and opinion (European Extended Search Report – EESR)
Publication of application
Examination of application (by EPO Examining Division)
Grant of patent … … provided tha applicant has: (i) approved the text in which the Examining Division is intended to grant the patent (ii) paid the fee for grant/printing and complied with other requirements
Opposition proceedings
Possibility of opposing European patents within 9 months from grant
Grounds for opposition:
(i) subject matter not patentable
(ii) patent does not disclose invention in a manner sufficiently clear and complete
(iii) subject matter extends beyond the content of application
Notice of opposition EPO checks formalities Substantive examination of opposition Possible exits: (i) patent maintained (ii) patent revoked (iii) patent mainatained in amended form Claims cannot be broadened
Appeals Three appellate bodies: (i) Technical Board of Appeal (ii) Legal Board of Appeal (iii) Enlarged Board of Appeal Filing of an appeal suspends effect of appealed decision Who can appeal?
Filing notice of appeal with EPO Written procedure New evidence are admissible Boards of Appeal may reject/allow the appeal Appeal fees may be reimbursed
Discuss the relationship between copyright and fundamental rights in European law.
two fundamental rights instruments - european communities basic values: ECHR & CFR
CFR: rights of authors, rights of individuals and the public in general to respect for private and family life, home and communications, freedom of expression, education etc..
european law of copyright and related rights to ensure a fair balance between competing rights and interests
at the legislative level this can be said to explain the scope of rights conferred to authors and related right holders, the large amount of exceptions and limitations to those rights, and additional rules aiming at facilitating their commercial exploitation in pursuit of general social and economic objectives such as disseminating knowledge and creating a favourable environment for creativity and investment
also CJEUs interpretation of exceptions and limitations to copyright and related rights -> balancing competing rights and interests
-> courts view that all fundamental rights and interests engaged must be considered before deciding
Under European law the purpose of copyright and related rights exceptions and limitations is not merely to protect third party interests and rights, such as freedom of expression, but also to provide a site for ensuring sufficient protection for the rights and interests of owners themselves, including rights and interests other than IP protection
Discuss the general conditions of patentability under the European Patent Convention (10
p. / Mylly)
EPC: European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application
Article 53 EPC excludes three categories of subject matter from protection regardless of whether they satisfy the requirements of article 52(1):
- inventions the commercial exploitation of which would be contrary to ordre public or morality
- plants and animal varieties, end essentially biological processes for the proceduction of plants and animals
- methods of surgical, therapeutic, and diagnostic treatment
whether a subject matter is patentable under european law:
a) falls within one of the Article 53 exclusions from patentability
b) is it an invention within the meaning of Article 52(1)
c) is it new, inventive, and susceptible of industrial application within meaning of Article 52 (1)
Exceptions and exclusions Governed by: Two articles: Article 52(2) and (3) and Article 53 EPC An ever-increasing body of case law
Invention: technical character?
Non-inventions under Article 52(2) and (3)
Art. 52(2): The following, in particular, shall not be regarded as
inventions:
discoveries, scientific theories, mathematical methods
aesthetic creations
schemes, rules and methods for performing mental acts
playing games or doing business
programs for computers
presentations of information
Excluded only to the extent to which a European patent
application relates to such subject-matter or activities as
such.
Exclusion does not automatically apply just because matter
mentioned in Art.52(2) EPC is detected.
As such: in order not to be excluded from patentability, the
invention has to comprise a technical character (in contrast to
aesthetic creations, for example).
Claims with technical subject-matter and abstract or nontechnical
subject-matter are not excluded from patentability
under Art. 52(2).
Article 53 - Exceptions
European patents shall not be granted in respect of:
a) Inventions the commercial exploitation of which would be contrary to
“ordre public” or morality; such exploitation shall not be deemed to be
so contrary merely because it is prohibited by law or regulation in some
or all of the Contracting States;
b) Plant or animal varieties or essentially biological processes for the
production of plants or animals; this provision shall not apply to
microbiological processes or the products thereof;
c) Methods for treatment of the human or animal body by surgery or
therapy and diagnostic methods practiced on the human or animal
body; this provision shall not apply to products, in particular substances
or compositions, for use in any of these methods.
New
“An invention shall be considered to be new if it does not form part of the
state of the art.”
What is the "state of the art"? Everything made available to the public by means of ... written description oral description by use or in any other way
… before the
filing date of
the application
Inventive step
“An invention shall be considered as involving an inventive step if,
having regard to the state of the art, it is not obvious to a person
skilled in the art.”
What is the “state of the art”?
Everything made available to the public by means of …
written description
oral description
by use
or in any other way
… before the
filing date of
the application
The person skilled in the art
is a skilled practitioner in the relevant field
is possessed of average knowledge and ability
is aware of what is common general knowledge in a particular
technical field at the relevant date
has access to everything in the state of the art
has a normal capacity for routine work, but no inventive skills
is involved in constant development in his field
is expected to look for suggestions in neighbouring and general
technical fields or even remote technical fields
may in some fields be a team rather than an individual person
If the problem prompts the skilled person to seek its solution
in another technical field, the specialist in that other field is the
person qualified to solve the problem
EPO uses Problem/solution approach to inventive step:
a) determining the closest prior art
b) establishing the objective technical problem to be solved and
c) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person
Susceptible of industrial application
EPC article 57: if it can be made or used in any kind of industry, including agriculture.
Discuss the exhaustion of trademark rights under EU law. What does the exhaustion mean
and under what conditions exhaustion takes place? (10 p. / Mylly)
Goods that bear a trade mark go beyond the control of the proprietor of the mark once they are put on the market - his rights in them are exhausted once the goods are in circulation and he cannot object to any use of them.
Particular relevance in European context - principle of the single market has obliged EU law to assert that the circulation of goods in any one member state equates to their circulation in all such states, unless any of the standard objections to free movement principles apply
parallel imports - company makes goods bearing a mark in 2 countries, company would prevent goods from cheaper country being imported cheaply to other country -> exhaustion and single market combine to make this impossible
Exhaustion in trade mark directive article 7: removes right to bring an infringement action in relation to goods put on the market anywhere in the european economic area EEA by the proprietor with her consent
“thetrademarkrightshallnotentitletheproprietortoprohibititsuseinrelationtogoods
whichhavebeenputonthemarketinaContractingParty*underthattrademarkbythe
proprietororwithhisconsent”.
Thisarticlemeansthatwhentrademarkedproductsareimportedintoacountryofthe
EuropeanEconomicAreawiththetrademarkowner’sconsent,thetrademarkowner
cannotopposethere‐importationoftheseproductsintoanothercountrypartytothe
AgreementontheEuropeanEconomicAgreement.
Indeed,TheEuropeanCourtofJusticeruledthat”Article7(1)ofthe..Directive…must
beinterpretedasmeaningthat:
therightsconferredbythetrademarkareexhaustedonlyiftheproductshavebeenputon
themarketwiththetrademarkowner’sconsentinthecommunitv(intheEEAsincethe
AgreementintheEEAenteredintoforce)andthatprovisiondoesnotleaveitopento
MemberStatestoprovideintheirdomesticlawforexhaustionoftherightsconferredby
thetrademarkinrespectofproductsputonthemarketinnonmembercountries;
“fortheretobeconsentwithinthemeaningofArticle7(1)ofsaidDirective,suchconsent
mustrelatetoeachindividualitemoftheproductsinrespectofwhichexhaustionis
pleaded”.
thisprecedentisapplicableforEuropeanUnionMemberStatesinfavorofany
trademarkownerswhethertheyarenationalsoftheEuropeanUnioncountriesornot,
andwhethertheproductsoriginatefromthesecountriesornot.
Discuss how fundamental rights have affected European intellectual property law.
EU Charter of fundamental rights
Article 17 - Right to property
Even prior to the coming into force of the Lisbon Treaty, the relevance of fundamental rights to intellectual property law had been acknowledged by the institutions of the EU.
Fundamental rights have, for example, been advanced as justification for legislative activity on a number of occasions.
In the Information Society Directive, it was claimed that ‘The proposed harmonisation will help to implement the four freedoms of the internal market and relates to compliance with the fundamental principles of law and especially of property, including intellectual property, and freedom of expression and the public interest.’
In patent law, the recitals to the Directive on the legal protection of biotechnological inventions make a similar claim: ‘Whereas pursuant to…the Treaty on European Union, the Union is to respect fundamental rights, as guaranteed by the European convention for the Protection of Human Rights and Fundamental Freedoms signed in Rome on 4 November 1950 and as they result from the constitutional traditions common to the Member States, as general principles of Community law.
The Enforcement Directive is also presented as serving goals grounded in respect for fundamental rights: ‘This Directive respects the fundamental rights and observes the principles recognised in particular by the Charter of Fundamental Rights of the European Union. In particular, this Directive seeks to ensure full respect for intellectual property, in accordance with Article 17(2) of that Charter.
On occasion, such assertions of compatibility with fundamental rights norms have also been tested before the EU courts in the context of intellectual property law. Notably, for example, it was argued in The Netherlands v European Parliament and EU Council14 that the fundamental right to human dignity was infringed by the Directive on biotechnological inventions.
As demonstrated by these two cases, frontal challenges to the compatibility of intellectual property legislation with the norms of fundamental rights law have not been successful in the Court of Justice. Nevertheless, the Court has confirmed that EU legislation must be interpreted in a manner that secures effective protection for fundamental rights
Particular attention has been devoted to a number of specific
issues. These include the impact of the rights to health, medicine and life on patent law,2
the
potential conflict between freedom of expression and the laws of copyright and trade marks3
and the privacy implications of intellectual property remedies and sanctions.4
These issues,
amongst others, have been explored in a range of national and international legal contexts.
However, the role of fundamental rights within European Union (EU) intellectual property
law has not yet been fully explored.5
It is, nevertheless, likely to become a subject of
increasing significance. Following the coming into force of the Lisbon Treaty, EU bodies
have clear obligations to take fundamental rights into consideration in all their activities.
Under Art 6(1) of the Treaty of European Union (TEU), rights granted under the Charter of
Fundamental Rights of the EU (“the EU Charter”)7
have the same legal value as those
established under the foundational treaties. Furthermore, under Art 6(3) TEU:
‘Fundamental rights, as guaranteed by the European Convention for the Protection of
Human Rights and Fundamental Freedoms and as they result from the constitutional
traditions common to the Member States, shall constitute general principles of the
union’s law.’8
In such circumstances, a fundamental rights dimension applies to all areas of law within the
EU’s competence, which clearly includes most areas of intellectual property law. The
obligation to comply with fundamental norms applies not only to the EU legislature, the
Court of Justice of the European Union and other EU b
A role of intellectual property rights
Public good problem: information is non-excludable
Without protection those who have made efforts for producing the good cannot prevent others from using the information
Information is also inexhaustible and nonrivalrous:
use by one person does not prevent others from using the same information cf. real property; use by one does not exhaust the property
By IP protection information is made excludable
IP is a negative right: it creates a right to prevent others from using the same information without permission
IP does not necessarily mean that one is entitled to use the protectable subject matter on markets (e.g. patent for medicine) / not a positive right
Main justifications for copyright and patent
There are four main justifications for copyright and patent, namely
(1) natural law;
(2) just reward for author or inventor;
(3) incentive for creation and invention; and
(4) public interest.
Justifications: Natural Law
The natural law justification is deontological, as it assumes that intellectual property protection is right in itself and that not granting protection would be wrong.
According to Locke, every man has a property right in his own person and, consequently, the work of his hands belongs to him, too
Under the personality theory, intellectual property is justified because the protected idea or subject matter manifests its creator’s self
Justifications: Reward and incentive
society needs to reward those who have created or invented something, because they have done something useful for the whole society (geniuses; sole inventors)
incentive to create: it is assumed that without government-provided incentives no one would have the motivation to engage in inventive activities
Reward and incentive justifications are mostly economic by their nature
Justifications: Public interest
defined as social requirements or public interest. This stems from the utilitarian argument. The public interest is often assimilated with the incentive to disclose or the dissemination principle. Works should be widely utilized within society
The natural-law theories concentrate on the individual creator and the protection of his or her interests
the public-interest rationale considers the wider interests of society (utilitarian theory). What is useful for the whole society?
Justifications: Cultural differences
All justifications are present in many IP systems, but emphasis is on different justifications
Civil law countries tend to emphasize more natural law rationale (e.g. moral rights in copyright systems: France)
Common law countries more utilitarian
U.S. constitution empowers the United States Congress To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries
Differences are nowadays often downplayed
INCENTIVE AND REWARD in patent system
By intellectual property protection the information good is made excludable.
Without protection there are no incentives for producing information goods.
By giving incentives technological advances take place, which in turn promotes the welfare of consumers.
Without incentives one may assume that innovations decrease for the detriment of consumers.
Protection is nevertheless justified only to the extent incentives and satisfactory reward for innovation is necessary.
If innovation is not depending on this kind of reward, then there is no need for intellectual property protection in the first place
PUBLIC INTEREST / DISSEMINATION in patent system
One way how dissemination of technology takes place is through disclosure of inventions
disclosure helps others to redirect their research activities and by this it is prevented that double-resources are used in the same research
This promotes the efficient use of resources
Others can develop the invention further or go to other areas
After expiration of patent protection, patent information becomes a part of public domain
HOW JUSTIFICATIONS ARE PART OF TRIPS
TRIPS art. 7 objectives of IP
To promote technological innovation and
to promote dissemination of technology
to mutual advances of produces and users of technology
In a manner conductive to social and economic welfare
Article 7 makes it clear that intellectual property protection is not an end itself
Article 7 provides a balancing principle for the agreement
Developing countries are generally the users of technology developed in industrialized countries
Article 7 can be utilized in encouragement for technology transfer in interpretation of the Agreement (articles 66 and 67)
TRIPS Art 8: Members may adopt measures to promote the public interest in sectors of vital importance to their socio-economic and technological development
… provided that the measures are consistent with the provisions of this Agreement
Articles 7 and 8 were drafted by developing countries
Key concepts of IP: Territoriality of rights
IP right limited to the territory of the sovereign state granting it
Legal effects of rights restricted to territory of conferring state
Enforcement of rights by courts of conferring state
Protect conferring state/citizens interest at expense of foreigners
No IP is protected by one uniform right applying world-wide
Independent rights
IP rights within a country are independent of any such rights existing in other countries
National treatment (NT)
A rule of non-discrimination
Legal definition of national treatment in TRIPS Agreement:
Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection (3) of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the Treaty on Intellectual Property in Respect of Integrated Circuits.
Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with
No requirement as to domicile or establishment in the country where protection is claimed, may be imposed upon nationals of countries of the Union for the enjoyment of any industrial property rights
Art 3
Nationals of countries outside the Union who are domiciled or who have real and effective industrial or commercial establishments in the territory of one of the countries of the Union shall be treated in the same manner as nationals of the countries of the Union
Exception:
“The laws of the Member States relating to judicial and administrative procedure and to jurisdiction, designation of an address for service or the appointment of an agent – are reserved”
Procedural requirements imposing special conditions on foreigners for purposes of judicial and administrative procedure may validly be invoked against foreigners
Foreigners to designate an address for services or to appoint a local agent
Advantages:
No Reciprocity requirement
Applies not only to codified law, but to practice of courts
Applies to practice of national Patent Offices
Application of national law does not prevent other nationals from invoking more beneficial rights from Convention
Weakness:
If applicable municipal law is in itself insufficient
Treaty permit MS the right to determine what is patentable
Countries with res communis ideology
Creates a disparate level of protection among countries
No Reciprocity requirement
Does not ensure substantive equivalence
Most favoured nation treatment (MFN)
TRIPS
With regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members
treating other people equally Under the WTO agreements, countries cannot normally discriminate between their trading partners. Grant someone a special favour (such as a lower customs duty rate for one of their products) and you have to do the same for all other WTO members.
Some exceptions are allowed. For example, countries can set up a free trade agreement that applies only to goods traded within the group — discriminating against goods from outside. Or they can give developing countries special access to their markets. Or a country can raise barriers against products that are considered to be traded unfairly from specific countries.
The three-step test
TRIPS and BC
Art 9(2) BC
It shall be a matter for legislation in the countries of the Union to permit the reproduction of copyrighted works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author
Certain special cases
What?
Does not conflict with a normal exploitation of the work
How?
Does not unreasonably prejudice the legitimate interests of the author
How?
Berne Convention only applies to
Right of reproduction of authors
TRIPS Agreement (Art 13) Confined to limitations and exceptions to exclusive rights
Interpretation:
Cumulative
Three-step test under Berne Convention never officially interpreted
Under TRIPS
Officially interpreted once by Dispute Settlement Body
WT/DS160/R (United States – Section 110(5) of the US Copyright Act)
As amended by the Fairness in Music Licensing Act of 1998
Permits, under certain conditions, the playing of radio and television music in public places (bars, shops, restaurants, etc.) without the payment of a royalty fee
Infopaq
Can the copying and reproduction of just 11 words of a news article be copyright infringement?
ECJ answer…Yes!
International IP: Parallel importation
Parallel importation refers to a situation where a third party, without the authorisation of the patent holder, imports a foreign manufactured product put on the market abroad by the patent holder, his licensee or in another legitimate manner in competition with imports or locally manufactured products by the patent holder or his licensee
Parallel imports are genuine products, not counterfeits
TRIPS is quiet on parallel imports
Neither the Paris Convention or Berne Convention explicitly prohibit parallel importation.
Right of Priority
Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed
First application has priority over applications filed by others during the said period of time for the same industrial property
The publication or exploitation of the invention
Putting on sale of copies of the design
Use of the trademark
Ample time to organize with due care steps necessary for securing protection in each Member State
Single date, application number
Which will act as an identifying number for all related patent publications stemming from the initial filing
Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority
E.g., PCT
Well Known TMs
Art. 6 bis
Countries are to refuse or cancel the registration and to prohibit the use of a trademark that is liable to create confusion with another trademark already well known in that member country even though it is not registered in that country
The protection results not from its registration, which prevents the registration or use of a conflicting trademark, but from the mere fact of its reputation
Inter se Agreements
Art 19
It is understood that the countries of the Union reserve the right to make separately between themselves special agreements for the protection of industrial property, in so far as these agreements do not contravene the provisions of this Convention
What if provisions of the latter treaty contravene provisions of PC?
What if they contravene the provisions of another treaty to which both parties are also members?
Every treaty in force is binding upon the parties to it and must be performed by them in good faith
Subject to Article 103 of the Charter of the United Nations, the rights and obligations of States parties to successive treaties relating to the same subject-matter shall be determined in accordance with the following paragraphs:
When a treaty specifies that it is subject to, or that it is not to be considered as incompatible with, an earlier or later treaty, the provisions of that other treaty prevail
When all the parties to the earlier treaty are parties also to the later treaty but the earlier treaty is not terminated or suspended in operation under article 59, the earlier treaty applies only to the extent that its provisions are compatible with those of the later treaty
When the parties to the later treaty do not include all the parties to the earlier one:
As between States parties to both treaties the same rule applies as in paragraph 3
As between a State party to both treaties and a State party to only one of the treaties, the treaty to which both States are parties governs their mutual rights and obligations
Disputes
Art. 28
First, settle by negotiation
Recourse to the International Court of Justice (ICJ)
Each country may, at the time it signs this Act (PC) or deposits its instrument of ratification or accession, declare that it does not consider itself bound by the provisions above
Automatic Protection (BC)
Independence
Limited Exceptions
Country of Origin
Art 5(2)
The enjoyment and the exercise of these rights shall not be subject to any formality
Mandatory use of a © symbol or required registration of copyrighted works
Advisable to follow country specific formalities e.g, US
Registration only required for copyright owners of American works who want to sue for copyright infringement
Special formality justified by the rule of evidence
No formal prerequisite for the exercise of rights
Independence
The enjoyment and exercise of copyright shall be independent of the existence of protection in the country of origin of the work
Limited Exceptions
Apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed
Choice of law rule
Lex loci protectionis
Country of Origin
Protection in the country of origin is governed by domestic law. However, when the author is not a national of the country of origin of the work for which he is protected under this Convention, he shall enjoy in that country the same rights as national authors
The country of origin shall be considered to be:
a) In the case of works first published in a country of the Union, that country; in the case of works published simultaneously in several countries of the Union which grant different terms of protection, the country whose legislation grants the shortest term of protection
b) In the case of works published simultaneously in a country outside the Union and in a country of the Union, the latter country
(c) In the case of unpublished works or of works first published in a country outside the Union, without simultaneous publication in a country of the Union, the country of the Union of which the author is a national
Harmonization by the CJEU of the originality criterion
the CJEU has started to harmonize the originality criterion for all works through a creative interpretation of the Information Society Directive
This was first expressed in the Infopaq case
It is explicitly expressed that without harmonization, the differences in national laws would lead to a fragmentation of the internal market and to an inconsistency of the legal system
Infopaq (C-5/08)
computer programs, databases or photographs are protected by copyright only if they are original in the sense that they are their author’s own intellectual creation.
In establishing harmonized framework for copyright, Directive 2001/29 is based on the same principle
Copyright to a subject-matter which is original in the sense that it is its author’s own intellectual creation (paragraphs 35-37
various parts of a work enjoy protection, provided that they contain elements which are the expression of the intellectual creation of the author of the work.
objective is to introduce a high level of protection…for authors to enable them to receive an appropriate reward for the use of their works
choice, sequence and combination of words… author may express his creativity in an original manner and achieve a result which is an intellectual creation
Extract of eleven words may qualify for protection?
Remarks from the case law:
the CJEU is harmonizing through its interpretations of elements of copyright that have not been harmonized through directive implementation.
These changes stem from the aim of coherence in the legal system at EU level (an copyright system generally)
Heavy criticism towards CJEU activism
From U.K. perspective: Rosati claims that originality now refers to civil law (continental European) countries definition: personality requirement
It has been argued that if the aim of the Information Society Directive had been to harmonize the originality criterion for all classes of works, it would have been impossible to enact the Directive in the first place
Yet change of originality have connections to the justifications and legal culture; therefore difficult to change, national courts will follow their traditional reasoning trajectories?
Importance of the idea-expression dichotomy alongside with originality
If technological restrictions limit the availability of choices, then no room for originality
Computer program interfaces are left without protection under idea-expression dichotomy see SAS case.
Signs of which a trademark may consist
Art. 2 Dir. and Art. 4 Reg.: two requirements for a sign being capable to be considered a trademark
a) the sign must be capable of being represented graphically
b) the sign must be capable of distinguishing the goods or services of one trader from those of another
Signs of which a trademark may consist (graphic representation)
a) Signs capable of graphic representation
Words and numbers are surely capable of graphic representation
What about smells, colours and sounds?
They are abstractly registrable …
… yet EU judges (OHMI, General Court and CJEU) are very restrictive in granting registration
Sieckmann 2002 (CJEU)
Sieckman requirements:
Graphical representation must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”
CJEU denied registrability:
few people would recognize in a chemical formula the smell in question
Case R 156/1998-2 “the smell of freshly cut grass” was registered
OHMI allowed registration:
“The smell of freshly cut grass is a distinct smell which everyone immediately recognizes from experience. The description complies with the requirement for graphical representation”
What about colours?
Libertel case 2003 (CJEU)
CJEU reiterated the Sieckman requirements …
and refused registration
CJEU said however that a description of the colour together with a sample is registrable provided conditions are met
internationally recognised colour classification system (eg Pantone) is important (as also held in Heidelberger Bauchemie, 2004)
Colour trademarks have been granted (yet, strict approach for just 1 colour, as held in Libertel)
Eg: lilac colour for Milka chocolate products was granted
Signs of which a trademark may consist (capable of distinguishing)
b) the 2nd requirement for a sign being capable to be considered as a trademark:
sign must be capable of distinguish goods/services
CJEU often said that this incorporates the essential function of trademarks
Absolute grounds of refusal (trademark)
Art. 3 Dir. and Art. 7 Reg.
Sec. 3 Trade Marks Act 1994
They regard inherent registrability of the sign
Public policy plays an important part
i) signs which do not comply with the definition of trademark
ii) objection on lack of distinctiveness
iii) shape marks
iv) sign contrary to public policy or to accepted principles of morality
v) inherently deceptive marks
vi) heraldic symbols, flags and other signs
vii) registration in bad faith
b) Prohibited the registration of signs “devoid of any distinctive character
Eg: “shoes” for shoes is not distinctive and not registrable
What about shape of products?
If shapes are distinctive, they are registrable
c) Shape which results from the nature of the goods themselves
Shape of goods which is necessary to obtain a technical result
Shape which gives substantial value to the goods
These shapes are not registrable as trademarks
d) Trademarks contrary to public policy or accepted principles of morality
It is the intrinsic qualities of the mark that is relevant and not whether its use would be unlawful (Sportwetten, 2005)
“Clitoris allsorts”, “Bin Ladin”, “Mafia”, “Castro”, “Fuck of the year”, “Rassismus”, “Opium”, “Iparretarak Records”, “Bollox and Balle”, “Dick and fanny”
English cases “Tiny Penis” (2002), “Jesus” (2006)
German case: “F*cken” (2011
e) Inherently deceptive marks:
marks which are of such nature as to deceive the public, eg as to nature, quality or geographical origin of goods
eg: mark indicating an item is made of wool when it is in fact made of polyester
f) Heraldic symbols
g) Registration in bad faith:
- lack of intention to use the mark
- attempting to register a mark, knowing that another person/company is entitled
- ex distributor
Relative grounds of refusal (trademark)
Art. 4 Dir. - Art. 8 Reg.
grounds for refusing registration (or invalidating registered trademarks) …
if their use conflicts with earlier rights
Generally the owner of the earlier right must oppose the application
It is rare that a TM Office will by itself oppose the application on relative grounds
a) Trademark identical for identical goods/services
b) Trademark similar for similar goods/services and likelihood of confusion
c) Trademark similar or identical with a well-known trademark, and (i) unfair advantage and (ii) detrimental for distinctive character / reputation
d) Use of trademark infringes unregistered trademark rights/other IPRs
a) identical trademarks/goods
No need to prove confusion amongst consumers re origin of goods
There is a presumption of confusion
If I start selling shoes bearing a sign identical to a previous one
consumers no doubt will be confused
Owner of the earlier trademark must not prove confusion (it’s presumed)
b) similarity goods/confusion
Prohibited the registration of a trademark if …
because of its identity or similarity to the earlier trademark …
and because of the identity or similarity of the goods concerned …
there exists likelihood of confusion on the part of the public as regards trade origin of goods
Therefore, three sub-conditions for this provision to apply:
- similarity of trademarks
- similarity of goods or services
- risk of confusion
Risk of confusion
confusion as trade origin of goods
Risk of confusion includes risk of association:
- when the public makes a connection between the trademark owner and the infringer
- eg consumers believe that the two companies are (economically or contractually) linked (through a licence agreement)
Puma v Sabel clarified that risk of association is still a risk of confusion
Factors relevant to determining confusion:
(i) eyes of the average consumer
(ii) visual/aural/conceptual similarities
(iii) greater likelihood of confusion when the earlier trademark is highly distinctive (ex: apple)
(iv) confusion as to trade of origin
c) well-known trademarks
A trademark shall not be registered (or, if registered, shall be declared invalid), if it is identical or similar to a well-know earlier trademark
Requirements: use of later trademark
(i) takes unfair advantage of the earlier trademark, without due cause; or
(ii) is detrimental to the distinctive character or reputation of the earlier trademark
When is a trademark well known?
General Motors v Yplon (1999) ECJ:
the degree of knowledge is reached …
… when the trademark is known by a significant part of the public concerned by the products
It is not necessary that the sign is famous to all consumers …
… but only to the sector of the public concerned by that particular product
For having a famous trademark infringed:
likelihood of confusion is not required
just the existence of a “link” is required
Adidas v Fitnessworld (2003) ECJ
What is really meant by a “link”?
Is it sufficient that the later trademark merely calls to mind the earlier mark?
Any kind of mental association is sufficient?
Intel v CPM (2008) ECJ:
the link between the two signs must have an effect on the economic behaviour of consumers
Unfair advantage
d) earlier rights
Art. 4.4(b)(c) Dir: Member States can prohibit registration of marks, if the sign conflicts with: an earlier non registered mark a right to a name a right of personal portrayal an earlier copyright an earlier design right an other earlier IPR (eg domain name)
Infringement:
Provisions on infringement (Art. 5 Dir, Art. 9 Reg) mirror provisions on registrability
… if I cannot obtain a registration because my trademark is identical with your earlier sign
… at the same time, if I use such trademark, I infringe your trademark rights
There is symmetry between registrability requirements and grounds of infringement
Must the allegedly infringing sign be used as a trademark?
Art. 5.1 Dir requires to prove that the sign used by the defendant is used “in relation to goods or services”
