Intellectual property in Europe

Frdric Mascr Avocat la Cour www.mha.fr

1

Introduction
Intellectual property : a broad notion
The term intellectual property refers broadly to the creations of human mind, The intellectual property rights therefore protect the interests of creators by giving them property rights over their creations, Property allows the owner to e clude everyone from using property he owns, Therefore the limits of this property must be drawn with precision.

www.mha.fr

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 different locations anywhere in the world,

www.mha.fr

Introduction
Intellectual property rights : what for?
%enerally, 2 main reasons are outlined when it comes to #ustify the e istence of intellectual property rights &
To give statutory expression to the moral and economic rights 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.

www.mha.fr

Introduction
Intellectual property rights : what for?
%enerally, 2 main reasons are outlined when it comes to #ustify the e istence of intellectual property rights &
To promote creativity, dissemination and application of the results of this creativity, 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 commerciali,ed 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.
www.mha.fr
*

Introduction
Intellectual property : the first te ts :
!aris Convention for the !rotection of Industrial !roperty in "##$ :
The countries to which this /onvention applies constitute 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 of unfair competition, This Treaty is administered by the World Intellectual Property Organization ')IP0(.
www.mha.fr
.

Introduction
Intellectual property : the first te ts :
%erne Convention for the !rotection of &iterary and Artistic 'or(s in "##) :
The countries to which this /onvention applies constitute a Union for the protection of the rights of authors in their literary and artistic wor"s, The e pression literary and artistic or!s shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its e pression, This Treaty is administered by the World Intellectual Property Organization ')IP0(.
www.mha.fr
1

Introduction
The 3uropean 4nion is also a member of international *reaties &
5uring the 'orld *rade +rganisation ,'*+- .ruguay /ound multilateral negotiations '162.7166$(, the 3uropean 4nion signed an agreement on *rade /elated Aspects of Intellectual !roperty /ights '*/I!0(. Those T8IP9 have been ta"en in the frame of the Marra(ech 1eclaration of "223 'at the end of the 4ruguay 8ound in 166$( and the Final Act embodies the results of the 4ruguay 8ound. "hey are part of the legislation of the #ember States

www.mha.fr

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 difference it e ists between artistic wor" 'copyright( and economic related innovations 'industrial property(.
www.mha.fr
6

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,

www.mha.fr

1;

5efinition of copyright
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( &
3 ample & 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 e ercised 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.

www.mha.fr

11

5efinition of copyright
Copyright : protecting the artist
The author:s rights & >e is the only holder of those rights. ?obody can e ercise these right, which is the big difference with the copyright.
3 ample & 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 e ercised by other persons than the author but the author:s right can:t; It personally belongs to the author;

www.mha.fr

12

5efinition of copyright
/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. and approved 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 e pression of the ob<ect of protection are =+* protected.
www.mha.fr
1!

5efinition of copyright
/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 harmoni,ation of certain aspects of copyright and related rights in the information 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*;(,

www.mha.fr

1$

5efinition of copyright
/opyright & a large scope with many issues
<any mechanisms issues arise from copyright,
The issue of enforcement of intellectual property rights '5irective 2;;$@$2@3/ of 26 +pril 2;;$ on the enforcement of intellectual property rights(, The issue of the resale rights '5irective 2;;1@2$@3/ of 21 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!@62@33/ of 26 0ctober 166! harmoni,ing the term of protection of copyright and certain related rights(.
www.mha.fr
1*

5efinition of copyright
/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 and lending 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(.

www.mha.fr

1.

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 recogni,able on the mar"et. Therefore, the protection is directed against unauthori,ed use & signs li"ely to mislead the consumer and@or partners. It refers to industry and commerce, agricultural and e tractive industries, and to all manufactured or natural products 'Paris $onvention for the protection of Industrial Property, art% &%'(.
www.mha.fr
11

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.

www.mha.fr

12

/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" on the 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 soft are

+b<ective : harmoni,e <ember 9tatesA legislation regarding the protection of computer programs
www.mha.fr
16

/opyrights 7 9oftware
!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 e pression of the computer program is irrelevant & Protection in accordance with the 5irective shall apply to the e pression in any form of a computer program.

www.mha.fr

2;

/opyrights 7 9oftware
!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 the nature 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*s o n intellectual creation. No other criteria shall be applied to determine its eligibility for protection.

www.mha.fr

21

/opyrights 7 9oftware
!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 e istence of tools permitting special protection. 8eminder & the 34 directives are not directly applying, and therefore 34 citi,ens 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.

www.mha.fr

22

/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 e traction and7or reAutili4ation of the whole or of a substantial part@ evaluated ?ualitatively and7or ?uantitatively@ of the contents of that database .

www.mha.fr

2!

/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 e traction@reutili,ation of the contain of database is protected under 94I %3?38I9 8I%>T. www.mha.fr

2$

Industrial property rights

8uropean 1omain names
'hat is a domain name?
?ame that identifies a )eb site, locates an organi,ation 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 organi,ation or entity 'in this e ample, FcommercialF( and is called the topAlevel 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 )eb 9ite 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.

www.mha.fr

2*

Industrial property rights

8uropean 1omain names
Competent Authority : 'hat is ICA==?
The I/+?? is now in charge of the allocation of IP addresses and of the management do the 5?9, +ll those new T=5s are managed by various entities ,registrars-, private for the most part, <ore than a hundred of those registrars have been authori,ed by the I/+??, Those registrars share the same central registration system for domain names 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

www.mha.fr

2.

Industrial property rights

8uropean 1omain names
/egistration rules : international domain names
The registration is made online via the registrars authori,ed 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 commerciali,e 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.

www.mha.fr

21

Industrial property rights

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 C 8./id D '3uropean 8egistry for Internet 5omains(,
The launching of I.euJ has ta"en place the 1 5ecember 2;;*. 0n 1 +pril 2;;., the I.euJ was available to the public, The 348id register is bound by a contract with the 3uopean /ommission and the I/+??.

www.mha.fr

22

Industrial property rights

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 can ob#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 2 to 1. wee"s and the e pert 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 the beneficiary, 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.

www.mha.fr

26

Industrial property rights

8uropean 1omain names
1ispute resolution : *he .niform 1omain =ame 1ispute !olicy : .1/! ,te ts adopted by the ICA== on 53 +ctober "222- :
Principles and application rules, and a compulsory administrative procedure& Hor the authori,ed registrars & in order to get the authori,ation of the I/+??, they must be bound to this procedure, Hor the domain name holder & the registration contract is referring e pressly to this procedure. Parties are free to refer to a /ourt or to an arbitrator, The 5ispute 8esolution 9ervice Providers authori,ed 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(.

www.mha.fr

!;

Industrial property rights

8uropean 1omain names
1ispute resolution : *he .niform 1omain =ame 1ispute !olicy : .1/! ,te ts adopted by the ICA== on 53 +ctober "222- :
<andatory administrative proceeding in the event that a complainant asserts that & The domain name is identical or confusingly similar to a trademar" or service mar" in which the complainant has rights 'for instance, a registered trademar"(, The holder has no rights or legitimate interests in respect of the domain name, The domain name has been registered and is being used in bad faith.

www.mha.fr

!1

Industrial property rights I/+?? procedure outline &

I/+??
%uiding principles in 4niform 5omain ?ame 5ispute Policy 8ules

C4ech Arbitration Court Asian 1omain =ame 1ispute /esolution Center =ational Arbitration Forum 'I!+ Arbitration And Mediation Center

/egistrars for *opAlevel 1omain name C;comD C;netD C;orgD

)ithin the /ontracts & the %uiding principles

1ispute /esolution 0ervice !roviders

/egistration Contract

www.mha.fr

!2

Industrial property rights

*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 21 Kune 1626 'last amendment & ?ovember 12, 2;;1(, Council 1ecision of 5B +ctober 566$ approving the accession of the 8uropean Community to the !rotocol relating to the Madrid +greement concerning the international registration of mar"s, adopted at <adrid on 21 Kune 1626, 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 21 Kune 1626.

www.mha.fr
!!

Industrial property rights

*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 e ist between those systems & the protection through the /ommunity Trade <ar" is fle ible and effective.

www.mha.fr

!$

Industrial property rights

*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 /ommunity Trade <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 public law, may be the proprietor of a /ommunity trade mar".

www.mha.fr

!*

Industrial property rights

*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 e clusively of signs or indications which may serve, to designate the "ind, Luality, etc. trade mar"s which consist e clusively of signs or indications which have become customary in the current language@ signs which consist e clusively 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, www.mha.fr
!.

Industrial property rights

*rade Mar(s including Community *rade Mar(
/egulation nE 56B75662 of 5) February 5662
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( and the identity or similarity of the goods or services covered by the trade mar"s there e ists 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".

www.mha.fr

!1

Industrial property rights

*rade Mar(s including Community *rade Mar(
/egulation nE 56B75662 of 5) February 5662
/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 e tent 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".

www.mha.fr

!2

Industrial property rights

*rade Mar(s including Community *rade Mar(
/egulation nE 56B75662 of 5) February 5662
/ights conferred by Community *rade Mar( :
e clusive 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 e ists 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".

www.mha.fr

!6

Industrial property rights

*rade Mar(s including Community *rade Mar(
/egulation nE 56B75662 of 5) February 5662
/ights conferred by Community *rade Mar( : <ay be prohibited & affi ing 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 e porting 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.

www.mha.fr

$;

Industrial property rights

*rade Mar(s including Community *rade Mar(
/egulation nE 56B75662 of 5) February 5662
/egistration procedure : 3 amination 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-

www.mha.fr

$1

Industrial property rights

!atents
'hat is a patent? a patent is protected under intellectual property law and is aimed to protect the inventor:s e clusive 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 e clusive 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 protection available should be a minimum of t enty years. In many countries, certain domains are excluded from patents, such as business methods, "now7how, and computer program.

www.mha.fr

$2

Industrial property rights

*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 Frant of 8uropean !atents ,*he Munich Convention- of * 0ctober 161! <ultilateral international Treaty instituting the 3uropean Patent 0rgani,ation 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 two systems, neither of which is based on a /ommunity legal instrument& the national patent systems and the 3uropean patent system. www.mha.fr

$!

Industrial property rights

*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 161! to which all 8. Member 0tates 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, !2 countries are members of the 3uropean Patent 0rgani,ation.
www.mha.fr
$$

Conclusion

Than you.

www.mha.fr

$*