INTELLECTUAL PROPERTY RIGHTS

AN OVERVIEW

• TRADEMARKS

• DESIGNS

• COPYRIGHT

• UTILITY PATENT

• UTILITY MODEL

• IP & ENFORCEMENT - HOW SWAROVSKI HANDLES

CONTENT

• The trade mark – commonly also known as “brand” - is a key element of company policy: enhancing its value means holding on to or acquiring market shares.

• A company's goods and services, as well as its image, must be visible on the market. The trade mark is an indispensable instrument for communicating with the public.

• The trademark enriches and enhances the consumer's relationship with the goods and services by associating distinctive values with them.

• Therefore, the trade mark does not just identify the origin of goods: it establishes a relationship with the consumer based on trust by staking the company's reputation and offering a guarantee of consistent quality.

• A trade mark is a capital good. It can be commercially exploited by licensing, franchising, merchandising and sponsorship. As a marketing tool it may even constitute the company's main asset.

TRADEMARKSPRINCIPLES

•Source: OHIM

• The trademark fulfils the three essential functions of a trade mark:

• it identifies the origin of goods and services – distinguishing from goods and services of another company,

• guarantees consistent quality through evidence of the company's commitment vis-à-vis the consumer,

• and is a form of communication, a basis for publicity and advertising.

• A trade mark may be used as a manufacturer's mark, a mark for goods of a trading company, or service mark.

• The trademark right is a territorial right: there is no “worldwide” trademark:• EU: Community trademark• International Trademark: a bundle of national trademarks with one registration• National trademarks

TRADEMARKSPRINCIPLES

•Source: OHIM

• A Community trade mark must meet two conditions: a trade mark is a sign which can be represented in graphic form, and it must make it possible to distinguish goods and services from those of another company.

• Signs which may be registered as a trade mark may therefore include:

• words, invented or belonging to a known language (in the latter case they must not be used in that language as generic terms for the goods and services to which the trade mark applies); e.g. XILION, RED BULL

• names and first names; e.g. YVES SAINT LAURENT, SWAROVSKI• signatures; • letters, numbers; e.g. 4711• acronyms, combinations of letters, numbers and signs, logos; • slogans; e.g. CREATE YOUR STYLE• designs, figures and pictographs; e.g. RED BULL device, • portraits of people; • collections of words or graphic elements and complex signs associating verbal and graphic signs,

e.g. labels; • three-dimensional trade marks such as shapes of goods or their packaging; e.g. COCA COLA bottle• colours or combinations of colours; e.g. MANZ-red• sound marks, in particular musical phrases.

TRADEMARKSPRINCIPLES

•Source: OHIM

• A trade mark can be registered or not registered. But only the registered trademark confers specific rights to its holder.It gives its proprietor protection against the reproduction or imitation of his trade mark throughout the territory. It is also transferable and may be licensed (exclusive and non-exclusive).

• The trade mark gives its proprietor the right to prohibit third parties from using identical or similar signs to those covered by the trade mark without his consent throughout the territory. Similarity is judged by reference to the likelihood of confusing the public, including the likelihood of association between the sign and the trade mark.

• The existence of a reputation in the territory enhances the protection given to a trade mark. The prohibition from using identical or similar signs is extended to goods or services which are not similar to those for which the trade mark is registered if such use takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. -> FAMOUS TRADEMARKS

• The trade mark may be transferred in respect of all or part of the goods or services for which it has been registered. The transfer does not necessarily involve a transfer of the company. However, such a transfer must not result in the public being misled, in particular with regard to the type, quality or geographic origin of the goods and services.

TRADEMARKSPRINCIPLES

•Source: OHIM

DESIGNSPRINCIPLES

To be eligible for protection, designs must be new and must have an individual character. In other words it must be apparent to the public that they are different from products which existed previously.

Source: OHIM

DESIGNSPRINCIPLES

Application must be ensured BEFORE first publication! A grace period is granted only for the Community Design (1 year) and the US design! In case that the design registration shall be extended to other territories, grace period must not be taken: in this case, the design must be ABSOLUTELY NEW (on a worldwide basis).

Also designs are territorial rights: there is no “worldwide” design protection:

•EU: Community registered design

•EU: Community unregistered design

•International design registration

•National design registrations

•Source: OHIM

• Only in the EU protection is also extended to a “non-registered” design. Unregistered designs must meet the same criteria as registered ones - they must be new and have an individual character - in order to enjoy protection.

• This protection will be applicable from the date of disclosure of designs to the public within the European Union. That disclosure may occur through designs going on sale or through prior marketing or publicity. The relevant designs will be protected for three years.

• The main difference in the level of protection afforded will be that a Registered Community Design will be protected against both deliberate copying and the independent development of a similar design. An unregistered Community design will be protected only against deliberate copying.

• Source: OHIM

DESIGNSPRINCIPLES

Holders of registered designs will have exclusive rights to use the design concerned and to prevent any third party from using it anywhere within the relevant territory. They will be protected against both deliberate copying and the independent development of a similar design

COPYRIGHTPRINCIPLES

Copyright exists in any original pictorial, graphic & literary creations. These include a sketch for a new piece of jewelry, an original design of crystals or beads on a brooch, a company’s logo, or even the text and photo in anadvertisement.

1.1.1.1.

Copyright exists from the moment the sketch is created or the first physical sample of a jewelry item is made, and published. No copyright registration or copyright “notice” (such as 2002 Swarovski”) is necessary.

2.2.2.2.

In most countries a minimum creativity of the work is not necessary, but necessary is an individuality of the work based on the personal creativity of the creator.

COPYRIGHTPRINCIPLES

A copyright owner enjoys the exclusive right to . . . Reproduce or copy the copyrighted items

(independent from the modality and quantity of reproduction)

Distribute copies of the copyrighted items

Adapt or Make Changesto the copyrighted material(example: changing an earring or handbag design)

Display the copyrighted items publicly(including on the Internet)

COPYRIGHTPRINCIPLES

The test for a copyright violation (“infringement”) is

“substantial similarity.” There can be a copyright

infringement if your jewelry item, photos, bowl etc., look

“substantially similar” to someone’s copyrighted material.

They need not be identical.

Remember,

• Any original, distinctive work is copyright-protected (e.g. drawing, photo, article, figurine, brooch, etc.).

• No copyright notice © or registration is necessary for copyright protection.

UTILITY PATENTS AND MODELSPRINCIPLES

• You can receive an utility patent or utility model only for technical inventions.

• For both it is necessary that the invention is NEW and non-obvious to people already skilled in the trade from inventions that are already public. Therefore, application must be made before any publication by showing in communication materials, to customers or selling.

• Therefore, not all inventions earn protection by a utility patent or utility model.

• Also patents are territorial rights.

• An invention is new when it is not already part of the state of art -> that is each earlier publication.

• An invention is the solution of a problem. An idea is unsufficient. It‘s never possible to protect an idea, the idea needs a shape, a solution. An invention can be patented if the invention is a solution to a certain problem in the field of technology.

• Differentiate between:utility patent (= technical patent)utility model (= protection for small technical inventions)design patent (= protection of the shape)

UTILITY PATENTS AND MODELSPRINCIPLES

• A utility patent requires that a new invention reaches a certain level of inventiveness. Therefor, the utility patent provides much stronger protection. Also, not many countries provide protection for utility models.

• Utility models are called „small patents“ because the necessary inventive step does not need to reach the standard required by a utility patent. It provides protection for technical developments, steps.

• Contrary to most of utility patent laws some countries provide a „grace period“ for utility models. This means that an application can be made even though there was already a publication of the invention. The application must be made within 6 months after this first publication.

• BUT: Use of such a grace period can be dangerous since novelty is destroyed in countries which do not provide it. Also, since most utility patent laws require absolute novelty, the inventor cannot switch to a patent application anymore.