IP overlaps Flashcards
(22 cards)
The London Taxi Corp v Frazer-Nash
The Court of Appeal held that the shape of a London taxi is not a valid registered trademark.
Geburstagzug
Was the train copyrightable? The German Supreme Court argued that the current design legislation could no longer be considered a minor form of copyright.
Cofemel v G-Star
- Concept of work = autonomous concept of EU law
- Cumulation of design and © law possible, but „can be
envisaged only in certain situations“ - Aesthetic effect is not a sufficient condition of ©
protection
Dior v Evora
A chain of chemist’s, Evora, had obtained Dior product from parallel importers which it advertised in promotional leaflets depicting Dior’s bottles and packaging. Dior objected on the grounds that the type of advertising was inconsistent with the prestigious image.
In order to succeed, a trade mark proprietor has to show that the use of his trade mark by the reseller seriously damaged the reputation of the mark.
Trademarks
- Registered (in some states also unregistered)
- Absolute grounds of refusal
- Unlimited term
Copyright
- Unregistered
- Work = intellectual creation reflecting author’s personality and free and creative choices
- Term = author’s life + 70 years
Design: threshold of copyright protection
• Different models throughout the world:
- Full cumulation (France)
- Partial cumulation (former German law: higher threshold of © protection for
works of applied art, former UK law: shorter term of protection)
- Separation (US, former Italian law)
IP overlaps can be problematic because…
• Cumulation could undermine … - temporal limits (© - TM, © - design) - registration requirements (UC – TM, UC – Design) - exceptions (Dior v Evora, patents – ©) • And could lead to conflicting results (Hard Rock case)
IP overlaps do not pose a problem when and if…
- The conditions of protection and the scope are properly limited in light of the function of the right and
- the rights are adequately balanced in themselves, particularly with regard to the relationship between conditions and scope.
When the protectable subject-matter is extended broadly while the exceptions remain distinct, there is the risk of
“asymmetric convergence” - The IP owner can choose between two or more regimes and “cherry-pick”
Conditions of TM infringement (Arts 10 EUTMR and TMD)
- Existence of a TM
- Use in the course of trade
- Use in relation to goods or services
Collision of TM and sign (Art 10 (2)) due to
- Double identity + interference with protected TM functions
- Likelihood of confusion
- Taking unfair advantage of / causing damage to reputation or distinctiveness of mark
with a reputation
Design infringement
- scope: design which does not produce on
the informed user a different overall
impression
‐ Acts: making, offering, marketing, etc.
Copyright infringement
reproduction, distribution,
communication to the public
US Supreme Court, Star Athletica, LLC v Varsity Brand: threshold of copyright
protection
..an artistic feature of the design of a useful article is eligible for copyright protection if the
feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful
article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own
or in some other medium if imagined separately from the useful article
From different thresholds (“two-tier theory”) to single threshold:
BGH GRUR 1995, 581 – Silberdistel [Silver Thistle], GRUR 2014, 175 – Geburtstagszug [Birthday Train]
Concept of work in EU copyright law
- intellectual creation reflecting author‘s personality and
free and creative choices (CJEU, C-145/10 – Painer) - Art 17 Design Directive: extent and conditions of ©
protection left to Member States
AG Sánchez-Bordona, C-833/18 – Brompton Bicycle v Chedech - Shapes exclusively dictated by technical function excluded from © law
• Criteria to be taken into account:
- Earlier patent protection
- Effectiveness of shape in reaching technical result
- Intention to achieve that result
• Fact that other alternatives exist is not as such relevant
• But existence of important non-functional elements may be
Software protection by patents
• Registered right
• Exclusion of programs for computers, but only
“as such“ (Art 52 EPC)
• Rights usually owned by employer
• Scope determined by claims, covers the
invention, extends to equivalents
• Practically no disclosure of the code, but only
description of functionality
• No specific exceptions, but private acts and
acts for research purposes exempted
Software protection by copyright
Unregistered right
• Computer programs can be protected when they are
„the author‘s own creation“, no qualitative criteria
• Creator may be right owner, but employer can
exercise all economic rights
• Protection extends to algorithm and code, but only
protecty the expression, not the idea
• Specific exceptions in Art 5, 6 Computer Programs
Directive
Tripp Trapp case
Signs that consist exclusively of the shape which results from the nature of the goods themselves shall not be registered as trademarks. Further Art. 3 (1)(e) determines that such signs shall not be registered which consist exclusively of the shape that gives substantial value to the goods.
Differences in software protection right can be used strategically by businesses
- Copyright mainly used to prevent piracy
- Patent used to protect functionality
- Risk: furry, uncertain claims
