Transcript LIKE, TRADE, MAN Your host: mel le plat du jour

Outline
Preliminary remarks
 Introduction to intellectual property (IP)
 Then a discussion of treaties relevant to IP
at global level
 Notes on special IP regimes developing in
Europe

Preliminary



First thing is …
IPRs in a global perspective is not just the
WTO, so other legal instruments will be
relevant
But first …
Domande
What is intellectual property?
 Why does it exist?

What
about distinctive signs?
Categories of IP

1. Industrial property

2. Copyright and related rights

Starting with industrial property, what is it?
1. Industrial property

Patents (non-obvious, inventiveness, usefulness)
Products
Like a new medicine, new chemical, etc…
Processes
Like new way to make glass smooth
What if I discover a new mathematical
idea?
Industrial property

Industrial designs
A design can be two-dimensional or threedimensional
It’s a shape, configuration or pattern or
color, or combination of patterns and colors,
that has both utility and aesthetic value
Example: the design of a Volkwagen car
Or a Les Paul guitar
Industrial property
A trademark can be protected if it is distinctive
So a generic mark may not qualify
Es. Not good to open a shop called ‘Music
Store Music’ if shop really sells music products
But if it is a café or a tanning salon, that would
be distinctive
Another example: Apple
 Normally also a requirement that the trademark
actually be used (lose protection for non-use)

Industrial property

Trade secrets
Must be secret!
And
reasonable efforts
Generally
must be useful in some way
Often technical in nature
Advantage: if it stays secret – perpetual
protection!
Famous example?
2. Copyright

Copyright: protection for the expression of
an idea or fact

t
But not for the idea or for the fact!
 How much novelty, creativity?
 Are formalities required?



t
Examples: ?
IPRs at global level
The relevant treaties
(Not exhaustive)
IPRs at global level: 5 treaties
(1) TRIPS: Trade-Related Aspects of Intellectual Property
 (2) Paris (1883/1979), (3) Berne
(1886/1979)
 (4) Madrid Agreement (1891/1979)
and Protocol (1989)
Trademark registration
 (5) WIPO Copyright Treaty, “WCT”
(1996)

How are these treaties relevant to
the main forms of IP?
1. Patents
2. Trademarks
3. Copyright
1. Patents (Paris / TRIPS)
Paris Convention on Industrial Property
 N.T. (Ad es. if pharma protected for nationals ...)
 Right of priority (date of first filing, good

for 1 year – will be recognized in other
signatory States )
 What Paris did not have: minimum rules on
degree of patent protection
Or minimum rules on what must be protected

TRIPS: patents must be available for inventions
(and processes) in all technical fields if:
(i)
New (‘prior art’) and
(ii) Capable of industrial application
But: may be excluded for health reasons (Art 30)
 Duration: min. 20 years from date of filing
 Enforcement: sufficiently deterrent, effective
remedies
 Tradeoff: Patentee must disclose details of the
invention so that (post-expiry) others can exploit it
 Also: TRIPS adds MFN (Art 4 – generally applicable)
Patents: compulsory licenses
In the past, some countries compelled
patentees to grant licenses for reasons of
public interest
 Art. 31 TRIPS seeks to:
protect patent holders from expropriation;
and
limit the situations in which compulsory
licensing is possible

Patents: compulsory licenses
Generally, the license must be:
Non-exclusive and non-assignable (to
preserve holder’s rights as much as possible)
Terminable if circumstances change
Compensated by adequate remuneration
(e.g., an adequate royalty)
 Ad es., Comp. Licensing allowed in cases of:
anticompetitive conduct and blocking
patents

Compulsory licensing


Conclusion on compulsory licensing
What kind of political economy is
being reflected here?
2. Trademarks and other types of
(non-patent) industrial property,
including, e.g., utility models, industrial
designs and mask works (chip
designs)
(Paris / Madrid / TRIPS)
Trademarks: Paris Convention
National treatment
 Right of priority (for TMs, grace up to 6 mesi)
 And unfair competition:
Parties must provide sanctions for acts that
could confuse or mislead consumers
(‘consumer confusion’), or that could
discredit the products of a competitor
(‘tarnishment’)
Ad es.: ‘Uncle Mel’s WINDOWS Software’



TRADEMARKS: Madrid Agreement on International
Registration of Trademarks (1891) and Protocol (1989)
MAIRT: if protected in TM holder’s country,
application can be filed with the International
Bureau at WIPO (Geneva)
Applicant indicates countries in which he would
like protection
Bureau notifies national offices of the
designated States
If a State does not deny registration within one
year, the mark is deemed to be registered in
that State
Trademarks: TRIPS
Members must provide that:




If a mark is similar to the protected mark, there
is an infringement if the right holder shows a
likelihood of customer confusion (like Paris)
If identical marks are used on identical goods,
likelihood of confusion must be presumed
Protection for at least 7 years, and must be
renewable indefinitely (provided mark remains
distinctive)
3. Copyright
(Berne, TRIPS, WIPO Copyright
Treaty)

Berne Convention. Different from Paris:
Imposes significant requirements on Members
to protect right holders
 Automatic protection (no formalities)
 Members must establish moral rights:
Right to object to any distortion of a work
that would be prejudicial to honor or
reputation
Without prejudice to constitutional law
Mary Potter versus Hairy Rotter


BERNE: Right to oppose:
unauthorized reproduction, performance, or
broadcast
Unauthorized adaptation or translation
 Term of protection: life plus at least 50
years (70 in EU, US)
 Certain exceptions apply
Ex.: unauthorized uses permitted for
teaching or socially significant purposes
(‘fair use’)
As opposed to commercial exploitation

Copyright

TRIPS: incorporates Berne, but does not require
moral rights
 So
WTO DSM cannot be used
Adds protection for computer programs
 Prohibits Members from granting protection to
ideas
Only expression of ideas can be copyrighted
Es. a map


WIPO Copyright Treaty (WCT), 1996
Relates to digital works: computer programs
and databases
 Members “provide adequate protection and
effective remedies against circumvention
of technological protective measures”
 Cioè: anti-hacking laws required. This
helps right holders to maintain effective
digital rights management techniques
(encryption)

Main types: patents, trademark and copyright
 TRIPS also covers (inter alia):

New
varieties of plants, industrial designs, circuit
designs
Trade secrets & other secret technical know-how
Geographical indications (champagne, Parma
ham, etc.)
TRIPS does not require adoption of a GI
regime
But must prevent use or registration of TMs if
misleading as to place of origin
Brief report on Europe
3 notes

1. In principle, IP is a shared competence
Means that MS free to legislate on IP to the
extent that the EU has not legislated
 On the other hand, if the EU occupies the field,
MS lose their competence, unless the EU
legislation provides otherwise



So far, EU has not pre-empted national IP
laws – they still apply
But the EU has introduced a unified regime in
the field of …
2. EU Trademark
Council Reg. 207/2009: the EU Trademark
 ‘Unitary title’ = valid everywhere in the EU
 ‘One stop shop’
Single application
Single language to process application
Single office (Off. for Harm. in the Internal Mkt, Alicante)
Renewable every 10 years (ad infinitum)
 Requirements …

Reg. 207/2009: 900 euros
 ‘Use it or lose it’. Genuine use in the EU within 5
years. Unjustified non-use > revocation

Advantage in litigation:
Infringement proceedings may be brought
before any ‘EU TM Court’
National courts designated by the MS
Court decisions are recognized and enforced
throughout the EU. No need for parallel
litigation
 So: a truly transnational IP law

3. Patents in Europe

1. European Patent Convention (38 countries)
Centralizes

patent examination (Munich)
2. Unified Patent (EU 2013): a unified
protection for 25 MS (not Sp., Italy, Croatia)
 Only 3 languages (D, FR, ENG) to cut costs
 Single ‘Unified patent court’ (Ct. of First
Instance; Ct. of Appeal) for infringement
actions and challenges
 Seats
for the CFI in all MS // C.A. in Lux