European Business Law, the fourth volume in our series, shows how the European authorities simultaneously abolish all restrictions on access to and exercise of economic activities and support the growth of domestic markets, through the harmonization the internal legislation or the enactment of genuinely unified regulations.

European Business Law

In order to be effective, the free movement of goods and services implies unification of the material rules of intellectual property at the European level. Thus, a uniform system of protection of intellectual property rights which encompasses industrial properties and copyrights and related rights has been progressively set up in order to remedy the disparities between national laws. The European  …

Context

In order to be effective, the free movement of goods and services implies unification of the material rules of intellectual property at the European level. Thus, a uniform system of protection of intellectual property rights which encompasses industrial properties and copyrights and related rights has been progressively set up in order to remedy the disparities between national laws. The European Union has therefore established the “Community trade mark” or the “Community designs”, or proposed the creation of a “Community patent”. Initially based on Article 95 EC, the action of the Union now relies on Article 118(1) TFEU, a specific legal basis , which empowers the European Parliament and the Council with the mission to establish measures for the creation of European intellectual property rights to provide uniform protection of intellectual property rights throughout the Union and for the setting up of centralized European-wide authorization, coordination and supervision arrangements. 

The trade mark may now be protected by an European  and/or national right: undertakings are free to choose either or both.European trade mark law has recently been revised following the adoption of Directive No 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trade marks  which recasts Directive No 2008-95 of 22 October 2008 , and of Regulation No 2015/2424 of 16 December 2015  which amends Regulation No 207/2009 of 26 February 2009 on the Community trade mark. Lastly, Regulation No 2017/1001 of 17 June 2017  has replaced Regulation No 207/2009 as amended. 

The reform is pursuing a dual aim: modernizing the trade mark system in the Union and adapting it to the internet era by making it more effective, efficient and consistent as a whole; national trade mark laws and practices should be further harmonized and brought into line with the EU trade mark system to the extent appropriate in order to create as far as possible equal conditions for the registration and protection of trade marks throughout the Union. In effect, under amended Regulation No 207/2009, an EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and are represented on the Register of European Union trade marks in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor . The registration may take place at the Office for Harmonization in the Internal Market (OHIM), at the central industrial property office of a Member State or at the Benelux Office for Intellectual property. The Union trade mark has a unitary character since it produces the same effects in all the countries of the Union. Its proprietor has an exclusive right which allows him to oppose any use by third parties of the protected sign without his authorization for an identical sign for identical goods or services, for a misleading sign or for an identical or similar sign for different goods or services. Under penalty of revocation, the proprietor must make genuine use of it within five years following registration. Revocation is also incurred where the trade mark has become the common name for a good or service or where it is liable to mislead the public as to the nature, quality or geographic origin of the good or service . The proprietor may obtain the conversion of his Community trade mark into a national trade mark . He may also choose international registration in a single application at the Office of his Member State.

Directive No 2015/2436 of 16 December 2015  which approximates the laws of the Member States on national trade marks, only covers rights acquired on the trade mark by registration and not through use . Its objective is to make the fact of obtaining and continuing to hold a registered trade mark subject to the same conditions in all Member States. It imposes duties on Member States with respect to the nature of the protected sign, its terms and conditions of registration or the conditions of revocation or invalidity which are greatly identical to those laid down for the Community trade mark.

Designs were first covered by a directive harmonizing the national laws - Directive No 98/71 of 13 October 1998 - before Regulation No 6/2002 of 12 December 2001  established a unitary right and set up a unified system for obtaining a Community design and uniform protection throughout the entire territory of the EU. It created a single registration procedure for design before the OHIM . The two systems - national and European - coexist. Thus, at least for their identical provisions, the interpretation of the regulation by the European court is a useful guideline to interpreting the directive which has, as yet, not been the subject of any request for a preliminary ruling. Since the accession of the European Community to the Geneva Act of the Hague Agreement of 22 July 1999 concerning the international registration of industrial designs , any national who has a domicile, a habitual residence or a real and effective industrial or commercial establishment in the territory of the Union may further file an international application designating the Union, since the international registration of the design has, in this case, the same effects than a Community design. 

By contrast, patents have not been neither the subject-matter of any single European law nor of provisions for the approximation of the national laws of the Member States . As only the terms and conditions for filing patents having been unified at European level, filing may now take place in three different ways: national - consisting in filing an application with each of the national patent office, European - consisting in filing only one application with the European Patent Office (EPO) and international - referred to as PCT  which requires an application with the national office of a Member State of the World Intellectual Property Organization (WIPO). The PCT system provides for a simplified filing procedure which refers to the competence of the national or regional offices for the delivery of patents. The EPO is the only regional office for Europe. The European patent, which does not constitute a single right but a bundle of national patents, falls within a legal system which is totally distinct from that of the European Union. It was set up by the Munich Convention on the delivery of European patents (the European Patent Convention - EPC) of 5 October 1973  to which 31 European States have now acceded, including Germany, the United Kingdom, Italy, Spain, France, the Netherlands and Switzerland. Its success comes from the economic, administrative and efficiency gains that a centralized system of delivery of patents brings in relation to the traditional filing procedure in each of the national offices . The creation of an “EU patent” which has been planned for many years  is expected by reason of the limited scope of the European patent which only harmonizes the filing conditions. After its delivery, the European patent produces effects which vary depending on the law of each State having acceded to the Munich Convention . On 4 December 2009, a proposed regulation on the European Union patent was submitted to the “Competitiveness” Council .

Artistic and literary works have been subject to a wide horizontal harmonization of national laws regarding copyright and related rights with the “Information Society” Directive  and the “Protection Term” Directive . However, harmonization still remains partial and not yet completed. They are also governed by earlier specific directives devoted to rental right and lending right  or to the protection of certain types of object (databases , computer programs , works of art , topographies of semi-conductor products ) or operating methods (satellite broadcasting or cable retransmission ), including some which have been subject to recent codification. 

For enforcing intellectual property rights and calculating damages which the infringer must pay, Directive No 2004/48 of 29 April 2004  has harmonized national procedures. Giving rise to much criticism for its lack of severity and its rather non-binding character for the Member States, its scope is limited as it only addresses civil and administrative sanctions and not criminal sanctions for infringement. On this issue, a minimum European harmonization is at the planning stage. A proposed Directive of 12 July 2005 on criminal measures aimed at ensuring the enforcement of intellectual property rights was approved by the European Parliament at first reading on 25 April 2007 . If adopted, all intentional infringements of an intellectual property right on a commercial scale would constitute a criminal offence, and the most serious offences would incur a maximum term of at least four years' imprisonment and a fine to a maximum of EUR 300,000 while the penalty of non-intentional conduct would be left to the discretion of Member States. In order to protect the proprietors of intellectual property rights against counterfeit  and pirated  goods, the European authorities have also adopted a regulation allowing counterfeit goods to be detained by the customs authorities, thus preventing them from circulating within the European territory . The national customs authorities act at the request of the right-holders or on their own motion, a soon as goods are suspected of being counterfeit . Within ten working days - three days for perishable goods - of the notification of detention, the right-holders must take interim measures or initiate the appropriate court proceedings on the merits, under penalty of end of the detention or release of the goods . However, the directive does not apply to goods manufactured or released for free circulation within the Union . In a communication of 11 September 2009, the Commission introduced its new strategy which relies on a strengthening of administrative cooperation between Member States, a better exchange of information and good practices. For that purpose, it has launched a European observatory intended to gather, control and disseminate information and data relating to intellectual property rights . The Commission also published a report on 22 December 2010 on the application of Directive No 2004/48 which highlights the need to address the challenges posed by the digital environment in order to combat the spread of counterfeiting and piracy on the internet, for public consultation.  

Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, OJ L 78 of 24 March 2009, 1-42, which replaces Council Regulation (EC) No 40/94 of 20 December 1993, OJ L 11 of 14 January 1994, 1-36. On European trade mark, see French Intellectual Property Code, Article L. 717-1 et seq.

See Case C-9/93 IHT Internationale Heiztechnik v Ideal-Standard [1994] ECR I-2789, LawLex200500005054JBJ, pt 56, specifying that EU law relating to trade marks does not replace the laws of the Member States on trade marks and the Community trade mark is merely superimposed on the nationals rights since undertakings are in no way obliged to take out Community trade marks.

Directive No 98/71/EC of 13 October 1998 on the legal protection of designs, OJ L 289 of 28 October 1998, 28-35.

Regulation No 6/2002 of 12 December 2001, on Community designs, OJ L 3 of 5 January 2002, 1-24. 

Office for Harmonization in the Internal Market.

Council Decision No 2006/954/EC of 18 December 2006 approving the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs, OJ L 386 of 29 December 2006; Council Regulation (EC) No 1891/2006 of 18 December 2006 amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs, OJ L 386 of 29 December 2006.

Except in certain specific fields: Directive No 98/44/EC of 6 July 1998 on the legal protection of biotechnological inventions, OJ L 213 of 30 July 1998, 13-21; Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products, OJ L 182 of 2 July 1992, 1-5; Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products, OJ L 198 of 8 August 1996, cons. 30-35.

Patent Cooperation Treaty of 19 June 1970 acceded by 123 States to-date, excluding Malta in Europe.

European Patent Convention (EPC) of 5 October 1973, set up by the Munich Convention of 5 October 1973 and entered into force on 7 October 1977; superseded by the EPC of 29 November 2000, OJ of the EPO 2001, special edition No 4, entered into force on 13 December 2007; See also Communication from the Commission EC of 3 April 2007, "Enhancing the patent system in Europe".

Within the European patent organization, the EPO is the executive body of the Convention whose function is particularly to deliver these patents. The official languages are German, English and French. The Convention goes along implementing regulations and a set of particularly detailed guidelines for formalities examination (Part A), for search (Part B), for substantive examination (Part C), for opposition procedure (Part D) and on general procedural matters (Part E).

See Green Paper of 24 June 1997 on the Community patent and the European Patent System, COM(97) 314 final, not published in the OJ; Communication from the European Commission of 5 February 1999: Promoting innovation through patents - The follow-up to the Green Paper on the Community patent and the patent system in Europe, COM(1999) 42 final, not published in the OJ; Proposal of 1 August 2000 for a Council regulation on the Community patent, COM(2000) 412 final, OJ C 337 E of 28 November 2000, 278-290; Proposal of 23 December 2003 for a council Decision conferring jurisdiction on the Court of Justice in disputes relating to the Community patent, COM(2003) 827 final, not published in the OJ; Proposal of 2 December 2003 for a Council Decision establishing the Community Patent Court and concerning appeals before the Court of First Instance, COM(2003) 828 final, not published in the OJ; Communication from the Commission EC of 3 April 2007, "Enhancing the patent system in Europe", COM(2007) 165 final, not published in the OJ.

EPC, Article 64(1): "A European patent shall (…) confer on its proprietor from the date on which the mention of its grant is published in the European Patent Bulletin, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State".

EU Council of 27 November 2009, No 16114-09.

Directive No 2001/29/EC of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society, OJ L 167-10 of 22 June 2001, recitals 10-19.

Directive No 2006/116/EC of 12 December 2006 on the term of protection of copyright and certain related rights (codified version), OJ L 372 of 27 December 2006, 12-18; which repeals and replaces Directive No 93/98/EEC of 29 October 1993 on the harmonization of the term of protection of copyright and certain related rights, OJ L 290 of 24 November 1993, recital 9.

Directive No 2006/115/EC of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property (codified version), OJ L 376 of 27 December 2006, 28-35; Directive No 92/100/EEC of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property, OJ L 346 of 27 November 1992, 61.

Directive No 96/9/EC of 11 March 1996 on the legal protection of databases, OJ L 77 of 27 March 1996, 20.

Directive No 2009/24/EC of 23 April 2009 OJ L 111 of 5 May 2009, 16-22, which repeals and replaces without changing the law Directive No 91/250/EEC of 14 May 1991 on the legal protection of computer programs, OJ L 122 of 17 May 1991, 42.

Directive No 2001/84/EC of 27 September 2001 on the resale right for the benefit of the author of an original work of art, OJ L 272 of 13 October 2001, 32-36.

Directive No 87/54/EEC of 16 December 1986 on the legal protection of topographies of semiconductor products, OJ L 24 of 27 January 1987, 36-40.

Directive No 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission, OJ L 248 of 6 October 1993, 15.

Directive No 2004/48/EC of the European Parliament and the Council of 29 April 2004 on the enforcement of intellectual property rights, OJ, L. 157 of 30 April 2004.

OJ L 299-25 of 8 November 2008. Directive No 2008/95 codified as established law Directive 89/104 of 21 December 1988  (OJ L 40 of 11 February 1989, 1). 

Amended proposal of 26 April 2006 (COM(2006)168 final_2005-0127(COD).

Counterfeit goods are defined as "(i) goods, including packaging, bearing without authorization a trademark identical to the trademark validly registered in respect of the same type of goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes the trademark-holder's rights under Community law (…) or the law of the Member State in which the application for action by the customs authorities is made; (ii) any trademark symbol (including a logo, label, sticker, brochure, instructions for use or guarantee document bearing such a symbol), even if presented separately, on the same conditions as the goods referred to in point (i); (iii) packaging materials bearing the trademarks of counterfeit goods, presented separately, on the same conditions as the goods referred to in point (i);" (Regulation (EC) No 1383/2003, Article 2(1)(a).

Pirated goods are defined as "goods which are or contain copies made without the consent of the holder of a copyright or related right or design right, regardless of whether it is registered in national law, or of a person authorized by the right-holder in the country of production in cases where the making of those copies would constitute an infringement of that right under Council Regulation (…) on Community designs or the law of the Member State in which the application for customs action is made" (Regulation (EC) No 1383/2003, Article 2(1)(b)).

Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights, OJ, L 196 of 2 August 2003, 7, which replaces Regulation (EC) No 3295/94 of 22 December 1994, OJ, L 341 of 30 December 1994. See Regulation (EC) No 1383/2003 Article 2(1)(a) and (b) to find, respectively, the definition of "counterfeit goods" and of " pirated goods".

Regulation (EC) No 1383/2003, Article 13.

After  the publication of a synthesis of this public consultation in July 2013, two new communications were adopted, one entitled "Towards a renewed consensus on the enforcement of Intellectual Property Rights: An EU Action Plan" [(COM 2009) 467 final], based on preventive measures and enforcement policy tools seeking to deprive commercial scale infringers of the revenue flows and make it more difficult to place illicit goods on the market, and the other, "Trade, growth and intellectual property - Strategy for the protection and enforcement of intellectual property rights in third countries"[IDM (2014) 389].

OJEU L 341 of 24 December 2015, 21. The amended regulation together with the new directive No 2015/2436 consitute the new "trade mark package". 

Cf. Art. 3, Directive No 2015/2436 and Art. 4, Regulation No 207/2009 amended. The two texts remove the graphic representation  criterion  from the definition of the EU trade mark. In effect, previously, only signs capable of being represented graphically could be registered as a Community trade mark, provided that such signs were capable of distinguishing the goods or services of one undertaking from those of another (see Article 2, Directive No 2008-95). Under French law see Article L. 711-1 et seq Intellectual Property Code.

Cf. Article 139 et seq. of Regulation No 2017/1001.

Directive No 2008/95/EC, Article 1: "This Directive shall apply to every trade mark in respect of goods or services which is the subject of registration or of an application in a Member State for registration as an individual trade mark, a collective mark or a guarantee or certification mark, or which is the subject of a registration or an application for registration in the Benelux Office for Intellectual Property or of an international registration having effect in a Member State"; See, also, Case C-23/01 Robelco [2002] ECR I-10913, LawLex200900001303JBJ, which considers that the reinforced protection of a trade mark's distinctiveness or reputation against certain uses of a sign other than for the purposes of distinguishing goods or services, within the meaning of Article 5(5) of Directive No 2008/95, is not covered by EU harmonization.

European Business Law

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