Midterm Industrial Law Flashcards
Requirements for registration of a trademark
- Original
- True
- New
- Conformity with the law, public policy and morality
- Not infringing of exclusive rights of third parties.
Difference between strong and weak trademark
Strong Trademark: Trademarks in which the originality of the graphics or name is such as to give it a high degree of distinctiveness (Apple; Mercedes …).
Weak trademark: trademarks whose meaning is very close to the nature of the product or service and therefore the name does not attribute great distinctiveness, tending to be confused with the category of goods offered = descriptive trademark (The “Dentifrex” trademark for toothpastes; Scarpe&Scarpe in the beginning)
The principle of secondary meaning in trademarks
- The principle of secondary meaning in trademarks governs those trademarks without distinctive character which acquire such character through use and renown
- Acquisition of a secondary meaning in trademarks, which occurs when a word (or an image, or a shape, or other type of mark), originally devoid of distinctive character, acquires over time a second meaning in the eyes of consumers and is thus able to identify the origin of the goods from a particular undertaking
- An example are the trade marks Divani&Divani or Poltrone&Sofà which, having lost their descriptive function thanks to the advertising battage and acquired notoriety, have become capable of identifying the product as coming from well-defined undertakings and, therefore, of distinguishing those products from those of other undertakings
- Proof of the acquisition of secondary meaning in trademarks may be given in various ways, including e.g. demoscopic surveys or testimony of qualified operators in the relevant circles.
What are geographical indications
Geographical indication: protecting products that originates there and whose quality, reputation or characteristics are exclusively or essentially due to the geographical environment of origin, including natural, human and traditional factors
- function: geographical indications are meant to protect typical local products, on the one hand, and consumers, on the other, whom might be misled by advertisements
- the indications can therefore not be used at will, especially if their use would be likely to mislead the public or where it would unduly exploit the reputation of the protected name
- quality labels/marks: are product certifications awarded to foodstuffs that guarantee to the consumer the original origin of the product and/or that the production process takes place in a way that is linked to a typical local area
Main differences between Protected Designation of Origin (PDO) and Protected Geographical Indication (PGI); also making a few examples for both.
Protected designation of origin (PDO): Product names registered as PDO are those that have the strongest links to the place in which they are made.
- Products: food, agricultural products and wines.
- Specifications: Every part of the production, processing and preparation process must take place in the specific region. For wines, this means that the grapes have to come exclusively from the geographical area where the wine is made.
- Example: Kalamata olive oil PDO is entirely produced in the region of Kalamata in Greece, using olive varieties from that area; Parmigiano Reggiano; Gorgonzola; Prosciutto di Parma; Champagne
- Label: mandatory for food and agricultural products, optional for wine.
Protected geographical indication (PGI): PGI emphasises the relationship between the specific geographic region and the name of the product, where a particular quality, reputation or other characteristic is essentially attributable to its geographical origin.
- Products: food, agricultural products and wines
- Specifications: For most products, at least one of the stages of production, processing or preparation takes place in the region. In the case of wine, this means that at least 85% of the grapes used have to come exclusively from the geographical area where the wine is actually made
- Example: Westfälischer Knochenschinken PGI ham is produced in Westphalia using age-old techniques, but the meat used does not exclusively come from animals born and reared in that specific region of Germany; Scotch Whisky; Westfälischer Pumpernickel; Olio di Puglia
- Label: mandatory for food, agricultural products, optional for wines
What are the requirements for the granting of a patent
1) there must be an “invention” / “inventive step”, belonging to any field of technology
2) the invention must be “susceptible of industrial application”
3) the invention must be “new” and
4) the commercial exploitation of the invention is not contrary to the “ordre public” (public order) or morality
Novelty:
- an invention is considered to be new if it does not form part of the state of the art
- state of the art = everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application that has not yet been disclosed
- example: patenting a substance or composition of substances already included in the state of the art is possible, provided that it is in the function of a new use only then is it a real invention
Inventive step:
- an invention is considered to have an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art
- Novelty and inventive step are different criteria. The question – “is there an inventive step?” – only arises if the invention is novel.
- The “person skilled in the art” is presumed to be a skilled practitioner in the relevant field of technology who is possessed of average knowledge and ability (average skilled person)
Industrial application:
- industry is understood in its broad sense as including any physical activity of “technical character”
- Methods of testing generally are regarded as inventions susceptible of industrial application and therefore patentable if the test is applicable to the improvement or control of a product, apparatus or process which is itself susceptible of industrial application the use of test animals for testing industrial products would be patentable. (it should not be a theoretical concept in agriculture)
Lawfulness:
- Any invention the commercial exploitation of which would be contrary to the “ordre public” or morality is specifically excluded from patentability the purpose of this is to deny protection to inventions likely to induce riot or public disorder, or to lead to criminal or other generally offensive behaviour
- example: cloning procedures, exploitation of embryos, genetic selection techniques or procedures that are otherwise contrary to human dignity or the interest in the preservation of the environment prohibited by law or regulation
- Special attention must be paid to applications in which the invention has both an offensive and a non-offensive use, e.g. a process for breaking open locked safes, where use by a burglar is offensive, while the use by a locksmith in an emergency is non-offensive
The rights belonging to the patent holder
Patent rights do protect their holder against exploitation in the form:
- of products or processes identical to those claimed in the initial application
- of modifications made to certain elements of the invention, when it is perfectly clear to a person skilled in the art that the modifications do not alter the substantive content of the claims (doctrine of equivalents), e.g. replacement of a screw by a weld
- improvement invention: sometimes the modification of an existing invention may represent an improvement that is itself patentable, e.g. the replacement of a weld made up of two components by using a single component thanks to the use of a new material the improvement may then be the subject of a dependent patent/claim that can be implemented only with the consent of the prior patent holder)
- part of the patent is the right to exclusively produce, trade (import, export), and use the invention industrially in Italy
- in case of a patent protecting a process, the protection is extended to the implementation of the process
- the exhaustion of rights conferred by a patent: the doctrine of patent exhaustion holds that once a patent owner has sold a patented product for the first time, they no longer have control over it: the buyer can use, sell, license, or destroy it as they wish the product can freely circulate within the European Union for example
- patent rights do not extend to acts done privately for non-commercial purposes and acts done for experimental purposes this means that in these cases there can be no patent infringement
- alongside the patrimonial prerogatives, inventors further hold moral rights with regard to their invention: they have the right to be recognised as the author of the invention + to be mentioned in the patent application (moral rights cannot be transferred / sold)
The patentability of software
- generally, a software is not considered to be an invention and consequently not patentable
- BUT: the interaction of software with hardware is patentable (patents can be used to protect technical solutions in the form of products, processes and computer programs)
when it allows the control / operating of a machine built specifically for this interaction (e.g., automation software for an assembly line)
when it enables the operation of a microprocessor designed to interact with multiple programmes (e.g., software that speeds up processor operations) - a software can therefore be patented if it is presented as a ‘method’, or as a ‘technical means implementing a method’ we speak of ‘computer implemented inventions’, and not of software patents
- Software can not be patentable unless there is not a combination with the hardware. If the software gives solutions and therefore the hardware is working better -> this one can be patentable
What does copyright protect?
- Copyright: describes the rights of the author of an intellectual work
- copyright is a property right which protects original works such as novels, plays, music, paintings, sculptures, movies, film scripts and computer programs
- copyright grants authors a number of exclusive rights:
(a) economic rights, which allow them to control the exploitation of their work, and
(b) moral rights, which include the right to prevent the mutilation or false attribution of their work - there is a clear distinction between the intangible right in the work and the property right regarding the physical embodiment of the work the owner of a painting, for example, is not automatically entitled to make and sell a copy of it
- copyright tries to balance different objectives: to protect the interests of the creator to provide access to their works for the benefit of the public / to stimulate and reward the creation of works and the investment in artistic creations
- the purpose of copyright is to protect intellectual activities of a creative nature (new and original works) through the recognition of a series of both moral and patrimonial rights protection of commitment, work and the investment of time
- What does copyright protect? Copyright protects any (creative) production of the human mind, including literary, dramatic, musical, artistic, architectural, and cinematographic works, whatever their mode or form of expression
- also protected: computer programs and databases (which, by reason of the choice or arrangement of the material, constitute an intellectual creation of the author)
- What cannot be protected: Copyright does not protect mere ideas or facts, procedures, processes, systems, methods of operation, concepts, principles or discoveries it protects the way ideas are expressed
Economic rights related to copyright
- publishing contract: author grants the publisher, in exchange for a consideration, the right to print the work in a certain number of copies and to sell them
- economic rights can be transferred by either assignment or licence:
assignment is a way of transferring economic rights to a person, who then becomes the new owner of the copyright those who acquire economic rights are called right-holders
licensing means that the author remains the owner of their economic rights but allows the licensee to carry out certain acts in relation to his work for a limited time - economic rights have a time limit: they last for the author’s lifetime and for up to 70 years after their death after this period has lapsed, the work falls into the public domain and can be used freely, e.g. Mickey Mouse in the US
- economic rights can be exercised separately or jointly, and may relate to the work in its entirety or to some of its parts
- ## But what are the economic exploitation rights? The Berne Convention, e.g., grants rights of translation, reproduction, public performance, broadcasting and cable retransmission, and adaptation, including cinematographic adaptation.
- the right of communication to the public, public display rights
it covers public performances (public recitation, public representation of a dramatic work, public projection of a movie etc.), broadcasting, cable retransmissions and, more recently, the act of making a work available on the internet
the public display right is the right to show or exhibit a copy of a protected work publicly
the rights refer to a form of presentation that can be directly (live) enjoyed by the public, including concerts, plays, performances and plays via radio, television etc. - right of publication
= the exclusive right of the author to share their work, for the first time, with the public - right of reproduction
relates to the act of making a copy of the work, or a substantial part of it, on the same or a different platform, e.g., the reproduction of a book on an electronic platform
= the multiplication of the work, direct or indirect, temporary or permanent, in whole or in part, in any form or manner, by any reproduction process
right to transcribe = the exclusive right of the author to transform works expressed in oral form into a written form, or to reproduce them by means of printing, lithography, engraving, photography, phonography, cinematography and other means of reproduction - adaptation right, derivative work right
= the exclusive right of the author to modify or transform their work: any modification or transformation that, while leaving the original meaning/content unaltered, changes the works structure or form, must be authorised by the author of the work
classic example: transposition of a novel or work into theatre or movie scripts - rental and lending rights
= the author’s exclusive right to grant others the right to use their work, for a limited period of time, to derive from it direct or indirect economic or commercial benefits (rental)
lending = institutions which are open to the public can loan originals, copies etc. of protected works, for a limited period of time, for non-economic/commercial purposes - resale right
is a right granted to the author of an artistic work to receive a portion of the resale price of the work - right of distribution
= the right to place a work on the market or to put it in circulation, or in any case making it available to the public, by any means and for any reason also includes the exclusive right to introduce into the territory of the Member States of the European Union (for distribution purposes) reproductions made in third countries
