intellectual property in europe – frederic mascre - 12.12.2011

8/13/2019 Intellectual property in Europe – Frederic Mascre - 12.12.2011

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Intellectual property in Europe

Frédéric Mascré

Avocat à la Cour



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Introduction

Intellectual property : a broad notion– The term “intellectual property” refers broadly to the

creations of human mind,

–The “intellectual property rights” therefore protectthe interests of creators by giving them property

rights over their creations,

– Property allows the owner to eclude everyone from

using property he owns,– Therefore the limits of this property must be drawn

with precision.



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Introduction

Intellectual property : a broad notion :– The notion is covering all rights resulting from

intellectual activity in the industrial, scientific, literary

or artistic fields,

– It relates to items of information or "nowledge, which

can be incorporated in tangible ob#ects at the same

time in an unlimited number of copies at differentlocations anywhere in the world,



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Introduction

Intellectual property rights : what for?– %enerally, 2 main reasons are outlined when it comes

to #ustify the eistence of intellectual property rights &•

To give statutory expression to the moral and economicrights of creators in their creations and to the rights of the

public in accessing those creation 'for instance, the

anthem of a country will fall in the public domain after a

certain number of years and the public will be able to use it(,

– This allows the legislators to draw the limits of intellectual

property,

– )ithout these limits, it would be to comple to assert where the

intellectual property begins and when it ends.



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Introduction

Intellectual property rights : what for?– %enerally, 2 main reasons are outlined when it comes to

#ustify the eistence of intellectual property rights &•

To promote creativity, dissemination and application of theresults of this creativit y, as well as to encourage fair trade,

which would contribute to economic and social development &

– +llowing creators to benefit from intellectual property rights

is protecting their creations from being commercialied by

others,

– therefore, there is a strong incentive for those creators to be

more and more inventive,

– -eing more inventive, the creations increase, which is

beneficial for everybody.



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Introduction

Intellectual property : the first tets :– !aris Convention for the !rotection of Industrial

!roperty in "##$ :

•The countries to which this /onvention appliesconstitute a Union for the protection of industrial

property,

• Scope & patents, utility models, industrial designs,

trademar"s, service mar"s, trade names, indications of

source or appellations of origins and the repression ofunfair competition,

This Treaty is administered by the World Intellectual

Property Organization ')IP0(.



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Introduction

Intellectual property : the first tets :– %erne Convention for the !rotection of &iterary

and Artistic 'or(s in "##) :

•The countries to which this /onvention appliesconstitute a Union for the protection of the rights of

authors in their literary and artistic wor"s,

• The epression “literary and artistic or!s” shall

include every production in the literary, scientific and

artistic domain, whatever may be the mode or form ofits epression,

This Treaty is administered by the World Intellectual

Property Organization ')IP0(.



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Introduction

The 3uropean 4nion is also a member of

international *reaties & 5uring the 'orld *rade +rganisation ,'*+- .ruguay

/ound multilateral negotiations '167166$(, the

3uropean 4nion signed an agreement on *rade /elated

Aspects of Intellectual !roperty /ights '*/I!0(.

Those T8IP9 have been ta"en in the frame of the

Marra(ech 1eclaration of "223 'at the end of the 4ruguay

8ound in 166$( and the Final Act embodies the results ofthe 4ruguay 8ound.

"hey are part of the legislation of the #ember States



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Introduction

Intellectual property : a dualistic notion :– Intellectual property rights intends to protect creation

through copyrights and industrial property rights,

– Therefore, the domain of property rights is mainly

divided into two branches &• $opyrights 'in most 3uropean languages other than

3nglish, this is "nown as “author:s rights”(,

• Industrial property rights.

– Those two groups are divided following the differenceit eists between artistic wor" 'copyright( and

economic related innovations 'industrial property(.



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5efinition of copyright

Copyright : protecting the artist– It relates to artistic creations 'novels, music, arts

etc.(,

–/opyright &• The right to copy the creation of the author ,

• To copy the literary or artistic wor" is the main act

which may be made only by the author or with

his authori4ation,



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Copyright : protecting the artist– The author:s rights &

• It protects the author itself & in most laws, the author

has certain specific rights in his creation, even when

this creation has been sold or lent 'moral rights( &– 3ample & the right to prevent a distorted reproduction

– 1irective 566"75278C of 55 May 566" on the harmoni4ation of certain

aspects of copyright and related rights in the information society :

9*he moral rights of rightholders should be eercised according to the

legislation of the <ember 9tates and the provisions of the -erne/onvention for the Protection of =iterary and +rtistic )or"s, of the )IP0

/opyright Treaty and of the )IP0 Performances and Phonograms Treaty.

9uch moral rights remain outside the scope of this 5irective”.



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Copyright : protecting the artist– The author:s rights &

• >e is the only holder of those rights. ?obody can

eercise these right, which is the big differencewith the copyright.– 3ample & a publisher who has obtained a license to

ma"e copies of a novel by the author can copy it but he

cannot claim author:s rights

*he copyright can be eercised by other personsthan the author but the authors right cant; It

personally belongs to the author;



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/opyright & the ideas and principles are not

protected &– +rticle 2 of the /opyright Protection )IP0 7 /opyright

Treaty adopted in %eneva on 5ecember 2;, 166 andapproved by the 34 & $opyright protection extends

to expressions and not to ideas, procedures,

methods of operation or mathematical concepts

as such.• This is a commonplace in the ma#ority of national

legislations & the ideas and principles underlying the

epression of the ob<ect of protection are =+*

protected.



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/opyright & a large scope with many issues– <any mechanisms are protected under copyright,

• copyright and related rights in the information society

'5irective 2;;1@26@3/ of 22 <ay 2;;1 the harmoniation of

certain aspects of copyright and related rights in theinformation society(,

• protection of databases '5irective 6@6@3/ of 11 <arch

166 on the legal protection of databases(,

• !rotection of computer programs '5irective 2;;6@2$@3/ of

2! +pril 2;;6 on the legal protection of computer programs,

e 5irective 61@2*;(,



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/opyright & a large scope with many issues– <any mechanisms issues arise from copyright,

• The issue of enforcement of intellectual property rights

'5irective 2;;$@$@3/ of 26 +pril 2;;$ on the enforcement of

intellectual property rights(,

• The issue of the resale rights '5irective 2;;1@$@3/ of 2

9eptember 2;;1 on the resale right for the benefit of the

author of an original wor" of art(,

• The issue of the term of protection '5irective 2;;@11@3/

of 12 5ecember 2;; on the term of protection of copyright

and certain related rights which had codified the /ouncil

5irective 6!@6@33/ of 26 0ctober 166! harmoniing the

term of protection of copyright and certain related rights(.



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/opyright & a large scope with many issues– <any mechanisms are protected under copyright,

• The issue of the /ental and &ending right '5irective

2;;@11*@3/ of 12 5ecember 2;; on rental right andlending right and on certain rights related to copyright in the

field of intellectual property which had codified the /ouncil

5irective 62@1;;@33/ of 16 ?ovember 1662 on rental right

and lending right and on certain rights related to copyright in

the field of intellectual property(.



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5efinition of industrial property rights

Industrial property rights &– The ob<ect of industrial property is to protect the signs

transmitting information to consumers and partners

as regards products and services offered on the mar"et&

the companies need to be visible and clearly

recogniable on the mar"et. Therefore, the protection is

directed against unauthoried use & signs li"ely to

mislead the consumer and@or partners.

– It refers to industry and commerce, agricultural andetractive industries, and to all manufactured or natural

products 'Paris $onvention for the protection of

Industrial Property, art% &%'(.



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5efinition of industrial property rights

Industrial property rights– This is a very broad notion, ta"ing a large range of

forms.• Patents to protect inventions,

• Industrial designs,

• Trademar"s and service mar"s, /ommercial names and designations,

• 5omain names,

• %eographical indications,

• Protection against unfair competition, etc.



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/opyrights 7 9oftware

!rotection of computer programs in the 8;. :– The software is a “computer program” following the

3/ terminology,

–/ouncil 1irective 2"75>6788C of "3th May "22" onthe legal protection of computer programs,

– 1irective 566275378C of 5$rd April 5662 on the legal

protection of computer programs, "hose are the European statutes concerning the

protection of softare

– +b<ective : harmonie <ember 9tatesA legislation

regarding the protection of computer programs



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!rotection of computer programs in the 8;. :– 5efinition of “software” and ob#ect of protection &

• “computer program” is used by 3uropean legislation &

• 1efinition in the 5irective 2;;6@2$@3/ & “programs in any form, including

those which are incorporated into hardware. This term also includes preparatory design or! leading to the development of a computer

program BCD”

• +rt. 1;.1 of the T8IP9 states that & “specifically applied to the software, it

means that “$omputer programs, hether in source or ob(ect code,

shall be protected as literary or!s under the )erne $onvention” &

T8IP9, art 1;.1• Art; ";5 of the 56627537C8 1irective & the form of the epression of the

computer program is irrelevant & “Protection in accordance with the

5irective shall apply to the epression in any form of a computer program”.



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!rotection of computer programs in the 8;. :– 0b#ect of protection &

– !reparatory design material & all documents 'understood

broadly(, all “ preparatory design or! leading to the

development of a computer program, provided that thenature of the preparatory or! is such that a computer

program can result from it at a later stage”

– /onditions of the protection &– Art; ";$ of the 1irective & “ A computer program shall be

protected if it is original in the sense that it is the author*son intellectual creation. No other criteria shall be applied to

determine its eligibility for protection”.



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!rotection of computer programs in the 8;. :– The <ember 9tates have to, at least &

– Protect computer programs by copyright,

– Protect computer programs as literary wor"s within the meaning of

the -erne /onvention & that is under all forms,– Protect the preparatory design material that are aimed at designing

the software itself,

– /omply with the 5irective,

– %uarantee the eistence of tools permitting special protection.

8eminder & the 34 directives are not directly applying, and therefore 34citiens cannot directly invo"e them in front of their national courts & they must

be transposed by a national law,

Therefore, interpretation is, for a large part, made by national courts.



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/opyrights 7 5atabases

!rotection of databases in the 8;. :– 1irective 2)7278C of "" March "22) on the legal

protection of databases• 1efinition & AdatabaseE shall mean a collection of independent wor"s,

data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means 'art.1 of the

5irective(,

• Protection under a +sui generis+ right for database producers, to

protect their investment of time, money and effort,

– 0b#ect of protection & <ember 9tates shall provide for a right for the

ma(er of a database which shows that there has been ualitatively and7or

uantitatively a substantial investment in either the obtaining@

verification or presentation of the contents to prevent etraction and7or

reutili4ation of the whole or of a substantial part@ evaluated

ualitatively and7or uantitatively@ of the contents of that database .



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/opyrights 7 5atabases

!rotection of databases in the 8;. :– 1irective 2)7278C of "" March

• !rotection under copyright law applicable to the structure

and arrangement of the contents of databases 'ForiginalF

databases(,

• Conclusion :

– The database +9 94/> is protected under /0PG8I%>T,

– The content +9 94/> can also be protected under

/0PG8I%>T 'images, photos, literary wor"s etc. )hich is

comprised in the system(,– The ma"ers: interest, as regards the etraction@reutiliation of

the contain of database is protected under 94I %3?38I9

8I%>T.



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Industrial property rights

8uropean 1omain names– 'hat is a domain name?

• ?ame that identifies a )eb site, locates an organiation or other entity on the

Internet &

– The first part “www.” is a particular host server,

– The second part of the name is called the second level domain name,

– The last part of the domain name 'F.com“, “.org”, etc.( reflects the purpose

of the organiation or entity 'in this eample, FcommercialF( and is called

the toplevel domain ,*&1- name.

• It represents an Internet Protocol 'IP( resource, such as a personal computer

used to access the Internet, a server computer hosting a )eb 9ite, or the )eb9ite itself or any other service communicated via the Internet &

– 5omain names are formed by the rules and procedures of the 5omain

?ame 9ystem '5?9(. the 5?9 serves as the “phone boo"” for the

Internet by translating human7friendly computer hostnames into IP ad.



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8uropean 1omain names– Competent Authority : 'hat is ICA==?

• The I/+?? is now in charge of the allocation of IP addresses and of themanagement do the 5?9,

• +ll those new T=5s are managed by various entities registrars-, privatefor the most part,

• <ore than a hundred of those registrars have been authoried by theI/+??,

• Those registrars share the same central registration system for domainnames called the “9hared 8egistration system”, which is managed by?9I.

–

/egistration rules : international domain names• The registration must comply with ! principles &– The applicant must freely choose the domain name,– The chosen name must not already be registered in the same one,– The name is allocated following the rule “first came, first served”



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8uropean 1omain names– /egistration rules : international domain names

• The registration is made online via the registrars authoried by the I/+??,• The applicant must only certify that, to its "nowledge, the name chosen

does not infringe the rights of third parties,• The price of a T=5 registration may vary from 12 euros to !* euros

depending on the services offered in addition to the registration,• ?ational %overnments are competent for national domain names. Those

names are locally administered, and following national legislations,• Hor economic reasons, the management of some national T=5s has been

transferred to private companies that commercialie the domain names,• The IP addresses have been attributed to ! regional organisms &

– The 8IP37?// for 3urope,

– The +P?I/ for +sia and Pacific,– The +8I? for +merica and rest of the world.–



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8uropean 1omain names– /egulation ,8C- =o B$$75665 of 55 April 5665 on

the implementation of the ;eu *op &evel 1omain• *he ob<ective of this /egulation is to implement the.eu country code

Top =evel 5omain 'T=5( within the /ommunity,

– The 8egulation sets out the conditions for such implementation,– It includes the designation of a 8egistry,– It establishes the general policy framewor" within which the

8egistry will function.

• Competent authority :

– The /egistry 8./id D '3uropean 8egistry for Internet 5omains(,– The launching of .euJ has ta"en place the 5ecember 2;;*. 0n

+pril 2;;, the .euJ was available to the public,– The 348id register is bound by a contract with the 3uopean

/ommission and the I/+??.



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8uropean 1omain names– /egulation ,8C- =o B$$75665 of 55 April 5665 on the

implementation of the ;eu *op &evel 1omain• 1ispute resolution : In order to allow the dispute resolutions to be faster,

348id has elaborated the A1/ '+lternative 5ispute 8esolution(»

*han(s to this A1/ procedure@ an unsatisfied registrant canob#ect to the attribution by 348id or one of its validation agents,» *he A1/ procedure : advantageous in terms of cost and celerity, it

lasts from to 1 wee"s and the epert appointed by the +rbitral/ourt must ma"e his decision within !; days. There is no appeal.-ut the parties may contest the decision before their national.

– The claimant must prove that &»

the domain name is identical or similar to the one he is thebeneficiary,» that the holder has no right or legitimate interest upon the domain

name and,» that the holder has registered the name or that he uses it in bad

faith.



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8uropean 1omain names– 1ispute resolution : *he .niform 1omain =ame 1ispute

!olicy : .1/! ,tets adopted by the ICA== on 53 +ctober"222- :

– Principles and application rules, and a compulsory administrative procedure&

» Hor the authoried registrars & in order to get the authoriation of theI/+??, they must be bound to this procedure,

» Hor the domain name holder & the registration contract is referringepressly to this procedure.

– Parties are free to refer to a /ourt or to an arbitrator,– The 5ispute 8esolution 9ervice Providers authoried by the I/+?? are

» )IP0 +rbitration and <ediation /enter,» ?ational +rbitration Horum,» +sian 5omain ?ame 5ispute 8esolution /enter,» /ech +rbitration /ourt 'from Kanuary 2;;6(.



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8uropean 1omain names– 1ispute resolution : *he .niform 1omain =ame 1ispute

!olicy : .1/! ,tets adopted by the ICA== on 53 +ctober"222- :

– <andatory administrative proceeding in the event that a complainantasserts that &

» The domain name is identical or confusingly similar to a trademar" orservice mar" in which the complainant has rights 'for instance, aregistered trademar"(,

» The holder has no rights or legitimate interests in respect of thedomain name,

» The domain name has been registered and is being used in bad faith.



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I/+?? procedure outline &

I/+??

%uiding principles in

4niform 5omain ?ame

5ispute Policy

/egistrars

for *oplevel 1omain name

;comD ;netD ;orgD

1ispute /esolution

0ervice !roviders

8ules C4ech Arbitration

Court

Asian 1omain

=ame 1ispute

/esolution Center

=ational Arbitration

Forum

'I!+ Arbitration

And Mediation

Center

/egistration

Contract

)ithin the /ontracts & the %uiding principles



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*rade Mar(s including Community *rade Mar(– *he 8uropean .nion is part of the Madrid !rotocol

• !rotocol relating to the Madrid Agreement concerning the International

registration of mar(s, adopted at <adrid on 2 Kune 166 'last

amendment & ?ovember 12, 2;;(,

• Council 1ecision of 5B +ctober 566$ approving the accession of the8uropean Community to the !rotocol relating to the Madrid

+greement concerning the international registration of mar"s, adopted at

<adrid on 2 Kune 166,

• Council /egulation =o "2257566$ of 5B +ctober 566$ amending

/egulation ,8C- no; 36723 on the Community trade mar( to give effect

to the accession of the 8uropean Community to the !rotocol relating

to the Madrid Agreement concerning the international registration of

mar"s adopted at <adrid on 2 Kune 166.

•



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*rade Mar(s including Community *rade Mar(– Council /egulation ,8C- =o 36723 of 56 1ecember

"22$ on the Community trade mar(@• The /ommunity registration system for Trade mar"s is operational

since 1st +pril 166,

• This system is autonomous & it has its own rules and is see"ing for

specific ob#ectives. The application of these rules and ob#ectives is

independent from any national or international rules,

• the system is not completely disconnected from national and

international trade mar"s protection systems though,• + lot of lin"s eist between those systems & the protection through the

/ommunity Trade <ar" is fleible and effective.



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*rade Mar(s including Community *rade Mar(– The Council /egulation nE 36723 has been repealed and codified by

& /ouncil /egulation nE 56B75662 of 5) February 5662 on the

Community trade mar(,•

5 conditions must be fulfilled to get the protection of rights under /ommunityTrade <ar" &

– 9igns capable of being represented graphically,

– 9uch signs must be capable of distinguishing the goods or services of one

underta"ing from those of other underta"ings.

• !ersons who can be proprietors of Community trade mar(s :

– Any natural or legal person, including authorities established under publiclaw, may be the proprietor of a /ommunity trade mar".



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*rade Mar(s including Community *rade Mar(– /egulation nE 56B75662 of 5) February 5662

• Absolute grounds for refusal

– trade mar"s which are devoid of any distinctive character,

–trade mar"s which consist eclusively of signs or indications whichmay serve, to designate the "ind, Luality, etc.

– trade mar"s which consist eclusively of signs or indications which

have become customary in the current language@

– signs which consist eclusively of&

» the shape which results from the nature of the goods

themselves,

» the shape of goods which is necessary to obtain a technical

result,

» the shape which gives substantial value to the goods,



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• Absolute grounds for refusal– contrary to public policy or to accepted principles of morality,

– 1eceitful for the public,

– *hose not authori4ed by the competent authorities,

Other grounds, more specific, exist for refusal (cf. Directive).

• /elative grounds for refusal :– identical with the earlier trade mar( and the goods or services for which

registration is applied for are identical with the goods or services

– if because of its identity with@ or similarity to@ the earlier trade mar( andthe identity or similarity of the goods or services covered by the trade

mar"s there eists a li"elihood of confusion on the part of the publicM the

li"elihood of confusion includes the li"elihood of association with the earlier

trade mar".



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• /elative grounds for refusal :– 4pon opposition by the proprietor of a non7registered trade mar" or of

another sign used in the course of trade of more than mere local

significance, the trade mar" applied for shall not be registered where and

to the etent that, pursuant to the /ommunity legislation or the law of the

<ember 9tate governing that sign &

» 'a( rights to that sign were acLuired prior to the date of application for

registration of the /ommunity trade mar", or the date of the priority

claimed for the application for registration of the /ommunity trade

mar"M

» 'b( that sign confers on its proprietor the right to prohibit the use of a

subseLuent trade mar".



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• /ights conferred by Community *rade Mar( :– eclusive rights therein & the proprietor shall be entitled to prevent all third

parties not having his consent from using in the course of trade &» any sign which is identical with the /ommunity trade mar" in relation to

goods or services which are identical with those for which the

/ommunity trade mar" is registered M

» In case it eists a li"elihood of confusion on the part of the public

'association between the sign and the trade mar" for instance(,

» 9imilarities with a trademar" that has a reputation in the Community

and where use of that sign without due cause ta"es unfair advantage of,

or is detrimental to, the distinctive character or the repute of the

/ommunity trade mar".



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• /ights conferred by Community *rade Mar( : <ay be prohibited &

» affiing the sign to the goods or to the pac"aging thereof M

» offering the goods, putting them on the mar"et or stoc"ing them for these

purposes under that sign, or offering or supplying services thereunder M» importing or eporting the goods under that sign M

» using the sign on business papers and in advertising.

• /ights conferred by Community *rade Mar( prevail against third parties from the

date of publication of registration of the trade mar".

• Application for Community trade mar( : shall be filed, at the choice of the applicant

– 'a( at the 0ffice,

– 'b( at the central industrial property office of a <ember 9tate or at the -enelu

0ffice for Intellectual Property.



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• /egistration procedure : 3amination of applications &

– conditions of filing 'if the conditions laid down in the 8egulation are fulfilled, if

fees have been paid etc.(,

– /ommunity search report by the 0ffice citing those earlier /ommunity trade

mar"s or /ommunity trade mar" applications discovered,

– Then there is a publication of the application,

– Then third parties may ma"e observations,

– )ithin a period of three months following the publication of a /ommunity trade

mar" application, notice of opposition to registration of the trade mar" may be

given on the grounds that it may not be registered,

"he procedure is precisely detailed ithin the .irective cf% .irective-



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!atents– 'hat is a patent? a patent is protected under intellectual property law

and is aimed to protect the inventor:s eclusive rights over its invention for

a limited period once the invention is publicly disclosed,

• the patent must define the invention, and this invention must fulfil the

patentibility conditions & novelty, non obviousness C etc.• The eclusive right granted to a patentee in most countries is the right to

prevent others from ma"ing, using, selling, or distributing the patented

invention without permission.

• 4nder the */I!0, patents should be available in )T0 member states for

any inventions, in all fields of technology , and the term of protectionavailable should be a minimum of tenty years.

– In many countries, certain domains are excluded from patents, such

as business methods, "now7how, and computer program.



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*he 8. patent should not be confused with the 8uropean!atent

• The 3uropean patents are granted under the 8uropean !atent

Convention,

• The 8uropean !atent Convention N Convention on the rant of

8uropean !atents ,*he Munich Convention- of * 0ctober 16!– <ultilateral international Treaty instituting the 3uropean Patent

0rganiation and providing an autonomous legal system through

which 8uropean patents are granted,

– For the moment@ there is no Community ,8.- patent :

•

In the 3uropean 4nion '34(, patent protection is currently provided by twosystems, neither of which is based on a /ommunity legal instrument&

– the national patent systems and

– the 3uropean patent system.



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*he 8. patent should not be confused with the 8uropean

!atent– The national patent of <ember 9tates has undergone de facto

harmonization because they signed several international

conventions, including the /onvention on the %rant of 3uropean

Patents 'the <unich /onvention( in 16! to which all 8. Member0tates have acceded

*he Munich Convention :• It lays down a single procedure for the granting of 8uropean

patents,

• It has established the 8uropean !atent +ffice to grant patents

which then become national patents sub<ect to national rules,

• +t present, ! countries are members of the 3uropean Patent

0rganiation.



Conclusion

Than you.

intellectual property in europe – frederic mascre - 12.12.2011

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