TRADEMARK AND DESIGN LAW BASICS

Intellectual property law landscape

- IP rights:
1. Aesthetic creations: covered by copyright
o = traditionally relates to artistic creations (books, music, paintings, films…)
o Copyright started protecting more subject matters over time, with a more
functional than artistic nature (software, data bases…) > technological
copyright (overlap with patents)
2. Trade names, marks and signs: trademarks
o = signal the origin of products to customers
3. Industrial inventions: patents
o = protect technical inventions in all fields of technology
o Technological process > protecting inventions (but they can also cover other
areas than science, e.g., fabrics…)
o Once expired, the patent holder might try to get a copyright/3D trademark
4. Design: design rights
o = specify how products look
5. Other types of IP rights and IP-related rights
o Geographical indications: a name or sign used on products which correspond
to a specific geographical location or origin
o A sui generis database right recognizes the investment that is made in
compiling a database (no need for a creative aspect)
o Trade secrets protect confidential business information (not generally known
to the public)
o Plant variety rights: allow you to commercially use a new variety of a plant
- What does not fall within intellectual property? The notion of public domain
o Aspects of protected inventions, marks, and creations that IP law does not
protect (fair-use exceptions and limitations), e.g. teaching purposes
o Non-protectable materials (ideas, facts, certain signs/words)
o Inventions, marks, and creations for which IP law has expired (out-of-IP
works)

The trademark – introduction

- What is a TM?
o A registered IP right over a sign (or other elements), capable of distinguishing
your goods/services from other manufacturers, producers, sellers, i.e. other
undertakings, and represented in a manner which enables the competent
authorities and the public to determine the clear and precise subject matter
of the protection
 European Union Intellectual property Office (Alicante, Spain) > one
registration per 27 member states
- Sources of TM protection
o EUTM: European Trademark Regulation – (EU) 2017/1001 regarding the
unitary title of an EU trademark
 o National TM systems: directive approximating the laws of the Member States
relating to TMs – (EU) 2015/2436 – national TMs exist in parallel to the EU TM
system
o Other national laws in other non-EU countries
o TM registration treaty
- Functions of TM
o Guaranteeing the identity of the origin of the marked product to the
consumer or end user by enabling him, w/o any possibility or confusion, to
distinguish the product or service from others having another origin
o Guaranteeing the quality of the goods or services in question and those of
communication, investment, or advertising
 Fostering competition > consumers can choose what they want >
making the market more efficient (companies competing on lower
prices, extra research, better products etc…)
 Quality, communication, investment, and advertising
- What can be registered as a TM
o A TM is a sign capable of distinguishing goods or services produced or
provided by one enterprise from those of other enterprises > the owner of
the sign is the only to apply it on their products/services
 Principle of specialty: a TM covers its owner’s category of products >
e.g. I could sell pasta with the Bocconi logo because their TM covers
educational services only
o Conventional (word, figurative, 3D, composite…) vs non-conventional TMs
(color, sound, smell…)
- Duration of protection
o 10 years but renewable forever!
- Well known TM
o Principle of specialty does not apply to famous/well-known TMs
o Assessment of well-known TMs depends on:
 Degree of knowledge or recognition of the mark in the relevant sector
of the public
 Duration, extent and geographical area of any use of the mark
 Duration, extent and geographical area of any promotion of the mark
 Record of successful enforcement of rights in the mark
 Value associated with the mark

Requirements of a TM
1. Distinctiveness in relation to goods and services
- A trademark is a registered sign in relation to particular goods or services
o Strong TMs have no meaning or relationship with the product (e.g. Apple for
IT products)
o Weak but valid TMs > have a lower capability to distinguish (e.g. Nespresso
coffee)
- Distinctiveness can be acquired for a secondary meaning (for both generic and
descriptive marks)
o Connected to the sensibility of the market)
- Proving secondary meaning:
 o Direct evidence
 Direct consumer testimony
 Consumer survey
o Circumstantial evidence
 Exclusivity, length and manner of use
 Amount and manner of advertising
 Amount of sales and number of customers
 Established place in the market
- Distinctiveness can also be lost: the generic TMs
o Usage is so common that the word is perceived as the name of the product
itself, and not as a means to distinguish the product (e.g. BIC pens) > to avoid
this, always implement and enforce your rights against those who want to
define the product with your TM
o The life and the perception of a TM can always change
2. Novelty: in order to be registered, a TM must be new
- Cannot be already used/registered in the market for the same goods/services (nor be
confusingly similar)
- Identical signs > identical products/services
- Identical or similar signs
o Different product/service > no likelihood of confusion (principle of specialty)
o Identical or similar product/service > likelihood of confusion (no need for real
confusion)
- Assessing the likelihood of confusion
o Similarity of trademark:
 TMs have to be considered as a whole
 The «consumer» to take into account is «average» (put yourself in the
customer’s perspective)
 3 criteria:
 1) Conceptual similarity
 2) Visual similarity
 3) Phonetical similarity
o Similarity of goods:
 Nature of goods, channel of distribution,
 Usual origin of goods and usual point of sale
3. Not misleading
- Cannot mislead the customer regarding the origins of the product/service (e.g.
naming a limoncello Capri if it’s made in London)
- There should be actual deceit or sufficiently serious risk that the consumer will be
deceived > however, no rules to assess deceptiveness but a case by case analysis
based on:
o AS TO GOODS/SERVICES
 Nature of goods/services
 Quality or other characteristics of goods/services
 Nature of TM used
o AS TO TMs USED
 Nature of TM
 Fanciful & Arbitrary TMs are usually not deceptive
  Descriptive TMs tend to be deceptive
4. Not contrary to moral and public policy
- Public Policy (ordre public):
o Registration of Jardex for meat extract was rejected since (Jardax already
registered for disinfectants)
- Morality
o Swearwords
o Racist or blasphemous words and images
o Words offending members of different religions
 Hallelujah for women’s clothes was rejected
- Law (depending on the national legislation)
o Prohibitions tend to encompass:
 Flags
 Armorial bearings
 Official hallmarks
 Emblems of states

Design rights – an introduction

- What is a design right?
o A registered intellectual property right
o Limited protection – first for 5 years (renewable, but only 5 times, so
maximum 25 years)
o Protecting the appearance of products (fashion, furniture, jewellery sectors…)
- A registered design
o National intellectual property office – UIBM (L'Ufficio italiano brevetti e
marchi); INPI (Institut national de la propriété industrielle) and others...
o European Union Intellectual Property Office – Alicante (Spain) – one
registration for 27 Member States
- What can be registered as a design?
o The appearance of the whole or a part of a product resulting from the
features of, in particular, the lines, contours, colours, shape, texture and/or
materials of the product itself and/or its ornamentation
o => very broad definition
- Requirements
1. Novelty
 Objective criteria – has the design been shown before?
 Is there another design that is identical to yours (or has very few
immaterial differences) which has been made available to the public?
2. Individual character
 Subjective criteria – compare to earlier designs
 What is the overall impression that your design produces on the
informed user?
 Is that impression different to earlier designs existing in the field?
 What is the designer’s degree of freedom in developing the design?
o Point of view: the informed user (not the average consumer):
 Is particularly observant – notices differences between designs
 Has high degree of attention
  Has high degree of knowledge in the field
 Can make direct comparison
- Design freedom
o Limited design freedom: small differences likely to create a different overall
impression
 Some designs require certain features – e.g. shoes – one has to be
able to walk in these, so there would ideally be a surface to step on,
so the design freedom here is limited
o Wide design freedom: small differences unlikely to create a different overall
impression
- Grace period – how to save money?
o You have 12 months from the moment you show your work anywhere in the
world to save it and apply for design registration
o If you (the designer) disclose and then apply for registration within 12
months, the novelty won’t be destroyed
- What is an unregistered design?
o Unregistered intellectual property right
o Lasts for 3 years from the moment you first make your design publicly
available
o Entire territory of the European Union
o Requirements? The same as the registered design right
 Novelty
 Individual character
o To enforce must prove that the infringer has copied your design