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EU Intellectual Property Law: Exercises in Harmonization

Abstract and Keywords

Intellectual property rights are crucial for encouraging creativity and innovation. They contribute significantly to employment and GDP within the EU. The IP system is of both economic and social importance. Intellectual property has global significance also. EU IP systems and rights must therefore work well not only within the EU and its Member States, but also within the complex international context. The EU IP system must also be regarded with confidence by stakeholders. Protection of IP rights is important, but so is access to intellectual property. From a very high-level view, harmonizing EU schemes has worked well on the whole. Nevertheless, reform and improvement remain a continuing priority, and the environment is challenging and rapidly changing. The Unitary Patent seems about to come into effect, though its success remains to be demonstrated.

Keywords: Community Trade Mark, copyright, database, EU intellectual property, EU harmonization, Information Society Directive, orphan works, Registered Community Design, Unitary Patent, Unregistered Community Design

I. Introduction

Intellectual property is a powerful and increasingly global commodity. Its intangible nature allows it to move readily, but legal obstacles can hamper its passage across borders. Harmonization of IP laws is an obvious priority for the EU, given the fundamental importance of the free movement of goods and competition. Intellectual property laws can act to prevent or inhibit the free movement of goods. A balance needs to be struck between the legitimate interests of IP right holders, and the operation of fundamental principles of free movement of goods and free competition.1 This general problem was tackled initially in the case law of the ECJ—with considerable success.2 But legislative harmonization (if it can be achieved) offers a far better solution for these highly technical matters.

(p. 692) Beyond the need for harmonization, though, the EU regards an efficient system of intellectual property rights as crucial for encouraging creativity and innovation, which in turn will lead to competitive advantage, higher employment, and economic success. The contribution of IP to employment and GDP within the EU is demonstrably significant. However, there is increasing public debate about intellectual property matters, which may well be challenging to existing systems and assumptions. As a result, the EU has shown itself keen to demonstrate the worth of IP with empirical evidence. It has also made considerable efforts to review and appraise the existing systems, to engage in dialogue and consultation with stakeholders, and to raise awareness of IP among Europe’s citizens. All this acknowledges that the IP system has considerable social importance, and not simply economic importance.

Yet, harmonizing EU IP law is extremely challenging. There is an external landscape. EU IP has to function within the context of important international treaties (notably the Paris, Berne, and Madrid Conventions, and the TRIPS agreement). The EU therefore has to interact with the World Intellectual Property Organization (WIPO), and with the World Trade Organization (WTO)—both of which, naturally, have different agendas and perspectives. The EU’s economic success has to be seen and judged in a global context, so EU IP systems have to allow successful competition with other powerful economies. At the other end of the economic spectrum, the interests of developing countries are a matter of significant public concern. Within the EU, there may be fundamental and entrenched differences in national legal systems. Powerful national interests may prove frustratingly immovable. All these considerations and tensions are visible in the range of approaches to the harmonization of IP within the EU. There are successful unitary rights, such as the Community Trade Mark and the Community Design Right—and there may yet be a Unitary Patent. In other areas, the focus has been on removing obstacles to the single market, and on doing what is practical and possible rather than perfect. This chapter offers a succinct, high-level survey of efforts and progress so far. It aims to touch on the most important features of each area, and also the most important controversies. Given the multiple significances of IP for the EU, it is certain that there will be more to come.

(p. 693) II. Trade Marks

1. Context and Introduction

The need for legally-protected trade marks was tied to the expansion of trade beyond local markets. Growth in international and global trading has only emphasized these needs. WIPO administers the Madrid System, which facilitates the acquisition of national marks, though does not offer an ‘international mark’ as such. The EU has been responsible for two significant developments. The first was the 1988 Trade Mark Directive (TMD), which harmonized substantive national trade mark law significantly.3 It harmonizes the conditions for obtaining and holding a registered trade mark, but leaves Member States free to determine procedural provisions concerning registration, revocation and invalidity of trade marks. The substantive provisions regulating conflicts between confusingly similar marks and signs are also harmonized. The second important step was the establishment of a Community trade mark (CTM), by means of a regulation.4 The CTM offers uniform protection throughout the European Union, via a single registration procedure with the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM). The CTM Regulation uses very similar provisions to the Trade Mark Directive to control the conditions under which a CTM may be obtained and held. OHIM opened in 1996, and has now registered approaching one million CTMs.

CTM applications can be filed either directly at OHIM or at any national trade mark office, in any of the 22 languages of the Union. The application may be refused by OHIM only on the basis of the ‘absolute’ grounds (which regulate the characteristics of registrable trade marks). OHIM (unlike some national systems) does not refuse applications on relative grounds—those relating to prior rights. The onus lies on third parties to raise relative grounds for refusal in opposition (or cancellation) proceedings. The initial registration period is ten years from the filing date, with the possibility of renewal for further periods of ten years (potentially indefinitely). A CTM may be revoked or declared invalid, either in proceedings in a Community trade mark court,5 or by application to the Cancellation Division of the OHIM. Because of its unitary character, when a CTM is registered, transferred (p. 694) or allowed to lapse, the effect of such action is Union-wide. The CTM coexists with national trade marks, which remain useful for many undertakings.6

2. Registrable Mark

A trade mark may consist of ‘any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or their packaging, provided that such signs are capable of distinguishing goods or services of one undertaking from those of other undertakings’.7 This inclusive approach is more flexible than that seen in many previous national laws. For word and figurative marks, the requirement of graphic representation is easily met. But it has defeated attempts to register smells and tastes.8 For sounds, sonograms are now accepted in electronic CTM applications as a graphical representation, if accompanied by an MP3 sound file. Other evidentiary challenges persist. Trade mark lawyers are accustomed to weighing up the impact of word and figurative marks for purposes of registrability and infringement. In contrast, notions of how colour, shape or movement marks should be assessed (to determine their distinctiveness, for example) are much less well developed and defined.

3. Absolute Grounds for Refusal

The absolute grounds for refusal to register a trade mark are set out in Article 3 of the TMD, and Article 7 of the CTMR. These cover inherent objections to a sign’s distinctiveness, and various public interest objections, including bad faith. Signs which do not comply may not be registered, or, if registered are liable to be declared invalid.

(a) Marks which are not Distinctive

A trade mark’s distinctiveness is assessed by reference to the goods or services listed in the application and to the perception of the relevant public. There is also an element of public interest, aimed at ensuring that other traders offering the same type of (p. 695) goods or services will not be unduly restricted.9 The level of distinctiveness required is not challenging: the mark must be ‘devoid’ of distinctive character to be unregistrable. But it must enable the relevant public to identify the origin of the goods or services protected by it, and to distinguish them from those of other undertakings. The ECJ has acknowledged that it might be more difficult to establish the distinctive character of certain categories of trade marks (shapes, common surnames, slogans, for example), but the approach is the same for all categories of marks.10

Descriptive trade marks may not be registered.11 The test set out by the ECJ in the BABY-DRY case was criticized for setting a very low threshold for the registration of descriptive marks, raising concerns that ordinary language might be monopolized by a few traders.12 It is now clear that this exclusion also has a public interest aim—to ensure that descriptive signs may be freely used by all, unless they have become distinctive through use. Geographical names fall to be considered under this provision. National trade mark laws have often been hostile to the registration of place names, to prevent a single trader from monopolizing them. However, it is now possible to register a geographic name, if it is not descriptive.13

Trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade are not registrable.14 The ECJ has emphasized that this question cannot be considered in the abstract or separately from the goods or services applied for.15

There is an important qualification to these rules on distinctiveness. The three absolute grounds of refusal just discussed may be overcome if the mark has become distinctive for the relevant goods or services in consequence of the use which has been made of it.16 Because the CTM is of a unitary character, it must possess distinctive character throughout the Union, not just a substantial part of it.17

(b) The Shape Exclusions

Shape marks can provide potentially indefinite protection for design elements of products. There is a risk that the registration of such marks would impede traders with a legitimate need to use similar shapes. So specific exclusions apply to signs (p. 696) which consist exclusively 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 goods. These exclusions cannot be overcome by showing that the shapes have acquired a distinctive character through use.18

The first of these exclusions seeks to exclude basic shapes needed for use by all traders, such as the shape of a football for a football. The second exclusion requires a decision as to whether the shape of goods is necessary to obtain a technical result. The purpose of the exclusion is to preclude the registration of shapes whose essential characteristics perform a technical function, limiting competitors from supplying a product incorporating such a function. If the essential functional characteristics of the shape of a product are attributable solely to the technical result, it may not be registered, even if that technical result can be achieved by other shapes.19 For the third exclusion, of a shape which gives substantial value to goods, the policy concern is that design protection—currently of quite limited duration in EU law20—should not be extended indefinitely by means of trade mark law.21

(c) Other Absolute Grounds

The remaining absolute grounds cover public policy and morality, deceptive marks, and certain special emblems.22 Trade marks which are contrary to public policy or to accepted principles of morality may not be registered. The concern is with marks which are contrary to the basic norms of society, not with bad taste. Trade marks which will deceive the relevant public, for instance as to the nature, quality or geographical origin of the goods or service, may not be registered. Member States may provide that a trade mark shall not be registered if the application is made in bad faith by the applicant. However, under the CTMR this is a ground of invalidity and not a ground of refusal.

4. Relative Grounds for Refusal

Marks which conflict with earlier marks or signs may not be registered.23 In part this is to protect the earlier trade mark owner, but it also safeguards the guarantee (p. 697) of origin to the consumer. The relative grounds for refusal mirror the provisions concerned with infringement. Earlier rights present a significant risk for applicants. There are over 3 million national marks registered in EU Member States, and the identification of unregistered marks is extremely difficult.

There are three relative grounds for refusal:

(a) Identical mark on identical goods

A mark may not be registered if it is identical to an earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected.24 In these cases of ‘double identity’ it is assumed that confusion will result. The concept of identity of marks is therefore construed narrowly, though from the point of view of an average consumer.25

(b) Identical/Similar Mark on Identical/Similar Goods

A mark will not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.26

When assessing the similarity of marks, their visual, aural or conceptual similarity is considered. What is relevant is the perception of marks in the mind of the average consumer of the goods or services in question. In assessing the similarity of the goods or services concerned, all relevant factors should be taken into account. ‘Likelihood of confusion’ is the risk that the public might believe that the goods or services in question come from the same undertaking, or from economically-linked undertakings.27

(c) Marks with a Reputation

A mark may not be registered as a CTM when an earlier trade mark has a reputation, and use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.28 Detriment to the distinctive character of a mark is known as (p. 698) ‘dilution’ or ‘blurring’. Detriment to the reputation of a mark is known as ‘tarnishment’. This provision can be relied on whether the goods are identical, similar, or dissimilar.29 The existence of a link between the marks is an essential condition—the relevant public must make a connection between them. In the absence of such a link, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.30 However, the earlier mark holder must do more than establish that the relevant public links the two marks—this is mere non-origin association, and insufficient to establish unfair advantage or detriment.

The ECJ stated in L’Oréal that unfair advantage occurs where a third party uses a similar sign, seeking ‘to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image’.31 Applying this ruling in the UK Court of Appeal, Jacob LJ objected that the ECJ’s approach meant that all free riding was unfair, ‘a conclusion high in moral content … rather than in economic content’.32

When arguing that there is detriment to the distinctive character of a mark, its proprietor is not required to demonstrate actual and present harm, though it must be proved that there is serious risk that this will occur in the future. Controversially, the ECJ has stated that such proof requires evidence of a change in the economic behaviour of the average consumer of the relevant goods or services.33 This seems potentially a high hurdle, but the ECJ has insisted that the concept lays down an objective condition.34

If a trade mark proprietor shows that its earlier mark has a reputation, and the use of the later mark will take unfair advantage of, or be detrimental to, that earlier mark, then the burden is on the other party to show ‘due cause’ for their use.

5. Rights Conferred

The trade mark proprietor has exclusive rights in the mark, and can prevent use in the course of trade of: an identical sign on identical goods; an identical/similar sign on identical/similar goods where there is a likelihood of confusion; and, for marks (p. 699) with a reputation, use of an identical/similar sign which takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.35 It will be seen that the rights conferred mirror the relative grounds for refusal. The concepts used to determine whether a mark has been infringed are identical. The legislative requirement that use is ‘in the course of trade’ has caused considerable difficulty. The ECJ’s case law has at times seemed inconsistent. The mainstream view is that unless the public perceives a link which would undermine one of the trade mark’s functions, in particular the guarantee of origin, the use will not infringe.36

The sale of keywords for use as index terms by search engines led to a controversial question in the field of trade mark infringement. Could a trade mark’s proprietor object to the sale and use of the trade mark—as a search engine keyword—to a third party, without the trade mark proprietor’s consent? For example, Marks & Spencer purchased various forms of ‘INTERFLORA’ as keywords, so that internet consumers entering ‘INTERFLORA’ as a search term would receive advertisements not for Interflora’s flower delivery service, but for its rival Marks & Spencer’s. The ECJ has held that if the keyword is identical to the trade mark, and is being used for identical goods/services, then the advertiser will be liable for infringement if consumers cannot determine without difficulty whether the advertiser is economically linked to the trade mark owner. It may also be possible that such behaviour infringes by taking unfair advantage of a mark with a reputation. Nevertheless, the use of trade marks as keywords cannot be prevented beyond these circumstances, and in many cases may be regarded as fair competition.37

6. Assessment

The EU’s Trade Mark system has to be counted as a success. It is popular and generally functions well. The Commission has recently adopted proposals for some revision of the legislation, but these are initiatives aimed at upgrading and streamlining the process (at both EU and national levels), rather than a major overhaul of fundamentals.38

(p. 700) III. Copyright

Copyright protects a wide range of creative works, including literary, artistic, dramatic and musical works, sound recordings, films, broadcasts and computer programs. Its subject matter has expanded very considerably since the earliest forms of legislative protection, whose roots lay in monopolies of printed books. Copyright arises without formality once a work has been recorded in a material form. Culturally and socially, copyright works have wide influence. The impact of technology in this area has been momentous. All of these features present challenges to any harmonization project. One of the most difficult issues facing legislators in the current environment is to find an appropriate balance between protecting copyright works, and facilitating access to them. For the EU, addressing these matters in the context of the Single Market is even more testing.

1. EU Harmonization—History and Summary

The Commission first considered these issues in its 1988 Green Paper, Copyright and the Challenge of Technology.39 There was an urgent need for copyright protection in areas of new technology: satellite and cable television, various computer technologies, and databases. Lack of harmonization of national rights in these areas was hampering the internal market. The Commission’s priorities were to address Community problems. A considerable amount of legislation followed, adopting a largely sectoral approach. Directives address the protection of computer programs, rental and lending rights, cable and satellite broadcasting, copyright term, databases, the royalty on resale of an artist’s work, copyright in the ‘information society’, and (most recently) ‘orphan works’.

(p. 701) (a) Computer Programs Directive

The Computer Programs Directive was the first to be adopted, in 1991.40 Given the current ubiquity of computer software, it is hard to believe that at this time only five of the then twelve Member States had provisions expressly protecting computer programs. The Directive requires Member States to protect computer programs, by copyright, as literary works within the meaning of the Berne Convention.41 A computer program must be protected ‘if it is original in the sense that it is the author’s own intellectual creation’.42 Ideas and principles underlying a computer program are not protected.43 The owner of copyright in a computer program has a number of exclusive rights.44 The exceptions to these exclusive rights were a matter of considerable controversy during negotiations, particularly that allowing decompilation where ‘indispensable’ to achieve interoperability.45

(b) The Rental and Lending Rights Directive

The Rental and Lending Right Directive was implemented on 1 July 1994.46 These rights are now widely accepted, but some Member States did not protect them at all. The Directive gives an exclusive right to control rental and lending to authors (in respect of their works), performers (in respect of fixations of their performances), phonogram producers (in respect of their phonograms) and film producers (in respect of their films).47 The rights may be transferred, assigned or licensed. However, there is an ‘unwaivable right to equitable remuneration’ when films or phonograms are rented, to protect creators’ interests.48 For the same reason, the principal director of a cinematographic or audiovisual work must be regarded as one of its authors.49

(c) The Satellite and Cable Directive

The Satellite and Cable Directive aims to promote cross-border transmissions of audio-visual programs, particularly satellite broadcasting and cable (p. 702) retransmission.50 Certain minimum standards are guaranteed for right holders. Authors must be given a ‘broadcasting right’, that is, an exclusive right for the author to authorize communication to the public by satellite of copyright works.51 The related rights of performers, phonogram producers and broadcasting organizations are protected in accordance with the Rental Directive (at the minimum), and copyright protection remains unaffected. The Directive also sets out a system of compulsory collective management of cable retransmission rights. The Directive has not proved as effective as hoped in achieving EU-wide broadcasting. Many television channels are now encrypted and accessible by subscription only. It is common for producers to sell their programs to broadcasting organizations on condition that their transmissions are encrypted so they cannot be received beyond national borders. These contractual licensing practices have allowed broadcasters and right holders to continue segmenting markets on national lines. The dynamic nature of the audiovisual market, again in the context of rapidly emerging technology, means that this remains a live issue for EU policy.

(d) The Term Directive

The Term Directive was put in place following EMI v Patricia, a case which exemplified the problems caused by an unharmonized regime.52 For the basic copyright term, most Member States had adopted the Berne Convention’s minimum term of fifty years from the author’s death; but Germany had a 70-year post mortem term, Spain and others 60 years. For related rights, there was a much wider degree of variation. The appropriate term for copyright has long been a matter of debate. The policy adopted was to harmonize upwards, to a basic term of the author’s life plus 70 years.53

As enacted, the term of protection for related rights was essentially fifty years. However, the Term Directive was amended in 2011, to extend the term of protection for rights in sound recordings to 70 years. And where a musical composition with lyrics is co-written, the Directive extends copyright to life plus 70 years for both the author of the lyrics and the composer of the music, regardless of whether they are recognized as co-authors.54 The stated aim is to protect session musicians, and is part of the Commission’s wider goal of gradually aligning authors’ and performers’ protection. This is a controversial measure, however, which is criticized both as lacking justification in principle, and as unlikely to achieve its aims in practice.55

(p. 703) Previously unpublished works, published for the first time after copyright protection has expired, are covered by a new right (often called the ‘publication right’), which is ‘equivalent to the economic rights of the author’. It lasts for 25 years.56

(e) Database Directive

The very issue of whether databases form suitable subject matter for copyright protection is somewhat contentious, because they may be the product simply of financial investment (so-called ‘sweat-of-the-brow’ databases), rather than the original authorial works which form copyright’s core subject matter. However, digital technology permits ready access to an immense range and quantity of information, in a form very convenient to the user, and there is an argument for some form of protection. There is nevertheless resistance to bringing all databases within the extensive protection of copyright.

The Database Directive therefore adopts a dual strategy. Firstly, it attempts to harmonize the conditions of copyright protection for databases. This is the highest level of protection, only extended to ‘databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation’. For those databases which fail to reach the threshold of originality required for copyright, the Directive creates a fifteen year sui generis right. This is granted to the maker of a database which shows ‘substantial investment’ of various forms.57 There have been several key rulings from the ECJ offering guidance on central concepts.58 There remains dispute as to whether the sui generis right is satisfactorily defined, though further legislative changes are not currently a priority for the Commission.

(f) Resale Right Directive

The artist’s resale royalty, also known as the droit de suite, gives an artist a right to a share in the proceeds of any subsequent sale of an original work of art. Its main justification is the belief that artists should be entitled to participate in the increasing value of their works as their reputation increases. However, others argue that the resale right acts simply to lower the initial sale price, and that its effect is not to support emerging artists but to reward established ones. Several Member States (including the UK) fought the proposal, fearing that major art sales would be driven out of the European auction houses into the United States and Switzerland. A Directive was eventually adopted in 2001, and was notable for its extensive transitional arrangements.59

(p. 704) The Directive establishes an EU resale right—an inalienable right to receive a royalty based on the sale price obtained for any resale of the work. Its term is tied to the full copyright term. Payable by the seller, it applies only to resales involving ‘art market professionals’, not sales between private individuals. Royalty rates are set in bands, which taper off as the sale price increases, and the total royalty is capped at €12500.60 Disagreement regarding the effects of the resale right persists.61

(g) Information Society Directive

The 2001 Information Society Directive aimed to provide a more harmonized framework for copyright and related rights—one which reflected recent technological developments.62 It also transposed into Union law the obligations arising from the 1996 WIPO Internet treaties.63 The Directive harmonizes three basic exclusive rights: the reproduction right, the right of communication to the public, and the distribution right. It attempts some harmonization of the exceptions to copyright. In addition, it introduces obligations concerning anti-copying measures and rights management information.

  1. 1) Exclusive rights. The reproduction right is defined as ‘the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part’.64 There was concern that acts such as caching and browsing should not be hampered, and an exception addresses this (discussed below).

A new right of communication to the public covers the transmission and distribution of copyright works in a non-physical form. This includes broadcast and cable distribution, and also on-line, on-demand distribution. For performances, phonograms and broadcasts, the right is the ‘making available to the public’. There is a growing body of ECJ case law which sets out criteria for determining whether an act of communication to the public has occurred. It covers live streaming of broadcasts.65 The right has been held to be infringed by peer-to-peer (P2P) sites, including The Pirate Bay. In addition, in several Member States, orders have been obtained against retail internet service providers, requiring them to block access by their customers to particular P2P sites.66 A question which is still unresolved is (p. 705) whether hyperlinking as a general matter is covered by the right. There are concerns that a restrictive approach to hyperlinking could impact the operation of the internet severely. A reference to the ECJ is pending.67

The distribution right relates to distribution of the original work, or tangible copies of it. Prior to the Directive there were significant differences between Member States as to the form of the distribution right, exceptions to it, and the point of its exhaustion. Under the Directive, authors must be granted ‘the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise’. The normal rule of Union-wide exhaustion is applied.68

  1. 2) Exceptions. The Information Society Directive harmonizes the scheme of copyright exceptions, but there are limitations to its achievements. There is one mandatory exception from the reproduction right, to cover temporary copying such as caching and browsing.69 There is also an exhaustive list of 20 optional exceptions.70 Member States may enact these or not, which weakens the harmonizing effect.

  2. 3) Protection of technological measures and rights management information. The WIPO Copyright Treaty requires Contracting Parties to provide adequate legal protection against the circumvention of technological measures used by authors to prevent unauthorized acts. This is a controversial matter, as the use of technological measures brings with it a danger that it will be made difficult or impossible to enjoy lawful exceptions to copyright. The Directive does guarantee the required legal protection, but there are counterbalancing provisions to ensure that right-holders do in fact allow users to take advantage of certain permitted exceptions.71 The Directive also offers legal protection against the alteration of rights management information.72

2. Current and Future Reforms

The Commission continues its efforts to harmonize aspects of copyright law and related rights. Understandably, its focus remains on the internal market. Although acknowledging that a high level of copyright protection is crucial for intellectual creation, the Commission also considers that wider dissemination of knowledge contributes to more inclusive and cohesive societies. The Commission has also (p. 706) recognized the breadth of copyright’s significance within the EU—it affects not only the internal market and cultural policies but also crosses information society, competition and consumer interests. This thinking underlies many of the Commission’s recent legislative plans, and its current policy. The Commission is determined to review and modernize EU copyright rules, to make them ‘fit for the digital age’, and is currently engaged in public consultation on various matters.

(a) EU-Wide Licensing for Online Rights

The Commission has been frustrated for some time by the fragmentation of online markets in the EU. Collecting societies, traditionally, have been nationally organized. The Commission has pressed for measures to promote EU-wide licensing of copyright. A proposal for a Directive which would allow online providers to obtain licences to stream music across national borders is currently under consideration.

(b) Orphan Works

The Commission’s aspiration is a European Digital Single Market for creative content. Its ‘Europeana’ portal offers a multi-lingual online collection of millions of digitized items from European museums, libraries, archives and multi-media collections. One obstacle to such initiatives are so-called ‘orphan works’—works still in copyright, but whose copyright holders cannot be located to negotiate permissions. The Commission, recognizing the need for common rules on digitization, has adopted a Directive on orphan works. The Directive applies to certain organizations fulfilling ‘public-interest missions’, allowing them to use orphan works for purposes such as preservation, and cultural or educational access.73 Although offering a common framework requiring Member States to legislate for orphan works, there remains considerable uncertainty respecting the boundaries and definitions in the scheme.

(c) Copyright Levies

The Commission has also engaged in a consultation process regarding copyright levies, imposed by many Member States on recording hardware and/or blank recording media. Levies offer a form of indirect remuneration for right holders, justified on the basis that it is not practical to license individual acts of private copying. First introduced in the analogue environment, they are somewhat crude instruments. Copyright levies are now increasingly applied to digital equipment and media as a form of compensation for right holders whose works are subject to private copying—an approach permitted by the Information Society Directive.74 (p. 707) However, national systems vary considerably in their approaches. There are very strong views on all sides, and progress towards harmonization has been slow.75

(d) A European Copyright Code?

The Commission’s May 2011 Communication raised the possibility of the creation of a European Copyright Code.76 One vision of this would be a comprehensive codification of the present body of EU copyright Directives. Another would be an optional unitary copyright title. This is an ambitious plan, and the political will to achieve it ebbs and flows. Nevertheless, further harmonization of EU copyright—whether by one of these routes, via further ad hoc Directives, or by judicial activism—seems both inevitable and desirable.77

IV. Designs

‘Design’ is a term which refers to the appearance and composition of an article, and to any preliminary drawings or models used. Designs affect our lives in many ways, covering a wide range from the functional to the aesthetic. Intellectual property law has to decide how to respond. If a design can be seen as an artistic work, copyright protection may be appropriate. But even where this is not the case, design features of industrial products may be distinctive and valuable, and affect consumers’ purchasing decisions. They therefore merit protection. This range within the design field has led to different forms of protection, and the picture is complex. Some national systems have used a patent-type approach, requiring registration and perhaps examination. Others have adopted a copyright-type approach, requiring neither formalities nor fees.

(p. 708) 1. Towards EU Harmonization

The variety within national laws meant that the road to EU harmonization was a troubled one. The issue of design protection for spare parts was particularly controversial, and could not be resolved. A stand-still clause was all that could be agreed. But a Designs Directive was adopted in July 1998, harmonizing conditions for registration, the extent and term of protection, and conditions for refusal and invalidity.78 Sanctions, remedies and enforcement remain matters for national law. Member States are free to provide for additional protection via other intellectual property regimes, such as unregistered design rights, copyright, trade marks, patents and utility models, and unfair competition. A Regulation followed in December 2001, establishing a Community-wide system of design protection, including both registered and unregistered rights.79 Designs must be new and have an individual character.

Under the Registered Community Design (RCD) system, holders of eligible designs can register them with OHIM. There is no substantive examination procedure. Registration confers exclusive rights to use the design within the EU for up to 25 years. RCDs are protected against both deliberate copying and the independent development of a similar design. In contrast, the Unregistered Community Design (UCD) offers short-term protection for three years from the date of disclosure of designs to the public within the EU. Protection is against deliberate copying only. The two forms of protection fulfil different roles. Registration offers the certainty of a formal filing date, which will establish priority over later designs. The RCD gives rights against even designs which were independently created, and lasts significantly longer than a UCD. But if a product will have only a short life in the market (fashions, for example), the UCD may be sufficient. Nevertheless, the system of registration is cheap and straightforward, and has proved increasingly popular: 92,000 applications for registration were received in 2012.

Additionally, the EU has now acceded to the Hague Agreement concerning the international registration of industrial designs. A single application at WIPO results in protection of a design not only throughout the EU, but also in other countries which are members of the Geneva Act of the Hague Agreement.

2. Registered Community Design

(a) Application Procedure

Applications for RCDs may be filed either at OHIM, or through national offices. They must include a representation of the design, and an indication of the products (p. 709) in relation to which the design is intended to be used. The representation of the design may contain up to seven different ‘views’ of it. A brief description may be included.

OHIM examines whether the application complies with the formal requirements for filing, and whether the requirements concerning any claim to priority are satisfied. There is no substantive examination regarding compliance with the requirements for protection (subject matter, novelty, individual character, etc). The view taken is that these are better explored in inter partes proceedings, which are unlikely to arise unless there is a serious dispute. If the formal requirements are satisfied and the fees are paid, the design will be registered.

(b) The Definition of ‘Design’

Although the registered and unregistered regimes differ in important ways, Community Designs must all meet the same basic requirements for protection. ‘Design’ is defined as ‘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’. The focus is thus on appearance, rather than the idea behind the design, or the design concept. The definition seeks to include the wide spectrum of design activity. ‘Product’ is also defined broadly as ‘any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs’. A ‘complex product’ is one ‘which is composed of multiple components which can be replaced permitting disassembly and reassembly of the product’.80 Designs for these are subject to special requirements, intended to address inter alia the controversial problem of spare parts for cars, and to limit their design protection.81

Three important exclusions from this inclusive definition apply to designs dictated by their technical function,82 designs of interconnections,83 and designs contrary to public policy or morality.84

(c) Grounds of Invalidity

As has been explained, Community designs must demonstrate novelty and individual character, but these matters are assessed only if the right is challenged.85 Features (p. 710) dictated solely by technical function, or which allow for mechanical connection to another product, are ignored when considering both novelty and individual character (because neither is covered by design right).

A design is considered new if no identical design has been made available to the public on the relevant date. For a UCD, this is the date on which the design has first been made available to the public. For a RCD, this is the date of filing of the application for registration of the design (or the priority date, if claimed). Designs are considered identical if their features differ only in immaterial details.86 A design is considered to have ‘individual character’ if ‘the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public’.87 The ‘informed user’ is considered to be more informed than the average consumer (and so more alert to possible differences), but less informed than an expert or design specialist. The test as to individual character has not proved straightforward to apply, but a body of case law is developing. Several cases have reached the General Court,88 and one case has reached the ECJ.89

The Directive provides for five further grounds for invalidity. Two—lack of entitlement and conflict with a prior design—are mandatory. The remainder are optional. Both the Directive and the Regulation state that a design must be refused registration, or, if the design has been registered, be declared invalid if the applicant for, or the holder of, the design right is not entitled to it under the law of the Member State concerned.90 The Directive provides that a design must be refused registration (or declared invalid) if it conflicts with a relevant prior design.91 The Regulation treats the conflicts provision as a ground only of invalidity.92

Member States may refuse registration of (or, treat as invalid) a design which conflicts with an earlier distinctive sign. The same provision appears in the Regulation.93 This would commonly cover earlier trade mark rights, other regimes such as passing off, possibly Protected Designations of Origin, Protected Geographical Indications, and even some personality rights. Member States may refuse registration of (or, treat as invalid) a design which conflicts with an earlier copyright work. Again, (p. 711) the same provision appears in the Regulation.94 Finally, Member States may refuse registration of (or, treat as invalid) a design which conflicts with protected badges or emblems. Again, there is a parallel provision in the Regulation.95

3. The Design Proprietor’s Rights

(a) Ownership

The right to a Community design vests in principle ‘in the designer or his successor in title’.96 However, a Community design developed by an employee in the execution of his duties normally vests in the employer.97 Since the CDR is a unitary right, it can only be transferred in its entirety, for the whole Community territory.98

(b) Term

The Designs Directive harmonized the term of protection for national design rights at a maximum of twenty-five years, granted in five-year periods from the date of filing.99 The term of protection of the CDR was set at the same maximum twenty-five year term, again granted in five-year periods.100 The Unregistered Community Design is protected for a much shorter period: three years from the date on which the design was first made available to the public within the Community.

(c) Scope of Rights

Registered Community designs and registered national designs enjoy full monopoly rights, giving the right holder the exclusive right to use the design and to prevent any third party using it without consent.101 Unregistered Community Designs (and registered designs which have not been published) are granted only a limited monopoly. The right holder is protected only if a third party’s use results from copying the protected design.102

Under both regimes, the scope of the protection conferred is defined to include ‘any design which does not produce on the informed user a different overall impression’. The degree of freedom of the designer in developing the design is considered.103 Where designers have a high degree of freedom, two similar designs (p. 712) are more likely to produce the same overall impression on the informed user.104 For registered designs, the representations in the register are used as a basis for comparison.

(d) Exceptions and Defences

There are number of exceptions to the rights conferred. These include acts done privately and for non-commercial purposes, acts done for experimental purposes, and reproductions for citations or teaching.105 Under certain circumstances a third party who is in good faith using a design may be entitled to continue doing so.106 Community-wide exhaustion of rights is specified in both the Directive and the Regulation.107

Of particular note are the provisions affecting design protection for spare parts. When the Directive was being passed, there was fierce opposition from the automotive industry to any change which would weaken the design protection they enjoyed in a number of Member States, and agreement could not be reached. There is a ‘stand-still’ clause in the Directive, so that Member States may only change their laws on the subject if their purpose is to liberalize the spare parts market.108 The Regulation excludes must-match spare parts from Community design protection.109 This was intended to be a temporary situation, pending investigation and proposals from the Commission. The Commission concluded that only by excluding design protection in the aftermarket for spare parts could an internal market be achieved. It therefore proposed that the Directive be amended to exclude design protection for ‘must match’ spare parts. However, disagreement remained, and there has been no change.

V. Patents

1. History and Context

A discussion of current EU patent law in a strict sense would be exceedingly brief. Decades of efforts towards a Community Patent foundered repeatedly, often over (p. 713) translations and jurisdictional arrangements, with national interests prevailing over the needs of the users of the patent system.110 Given the economic significance of patents, this was very unsatisfactory. In part the failure was due to the prior success of other initiatives, notably the Patent Cooperation Treaty, and the European Patent Convention (EPC). The EPC does achieve significant harmonization of national laws, but only up to the point of grant. Issues of validity and infringement post-grant are currently matters for national law and national courts. One more EU initiative is now being attempted. If successful, it will put in place a European patent with unitary effect (a ‘Unitary Patent’) throughout much of the EU, and also a Unified Patent Court system. This is potentially a great achievement, not least because it would allow pan-European enforcement in a single set of proceedings. However, significant doubts remain as to the outcome of these efforts.

2. The Unitary Patent

In December 2012, the ‘patent package’ was approved. This has three elements. One Regulation aims to create a patent with unitary effect throughout participating EU Member States.111 A second Regulation addresses the necessary translation arrangements.112 The final element is an international Agreement to establish a Unified Patent Court (UPC).113 Applications will be examined by the European Patent Office (EPO) in Munich, under the rules and procedures laid down by the EPC. If granted, the result will be a European patent with unitary effect, which will provide automatic protection in 25 of the EU’s 27 Member States (not Spain and Italy) by means of a single application.114 The scope of the protection of a unitary patent is to be uniform in all participating Member States (unlike that of European patents granted under the EPC, the extent of whose protection is defined by the national law of each Contracting State). Unitary patents can only be limited, transferred or revoked in respect of all participating Member States. To enter into effect, the UPC Agreement must be ratified by 13 Contracting States, and these must include the United Kingdom, France, and Germany.

(p. 714) The translation arrangements are intended to facilitate access to unitary patents. Only one translation will be required on grant. However, in the event of a dispute, the patentee will have to provide a full translation into an official language of the participating Member State where the alleged infringement took place, or the Member State in which the alleged infringer is domiciled. Additionally, the intention is to promote the dissemination of patent information and technical knowledge by making machine translations of patent applications and specifications into all official languages of the Union available as soon as possible.

The UPC Agreement provides for the establishment of a Unified Patent Court. It is made up of a Court of First Instance, and a Court of Appeal. The Court of First Instance’s central division is in Paris, with specialized divisions in London and in Munich. Local and Regional Divisions of the Court of First Instance may be set up in Contracting Member States. There will normally be a panel of three judges, which must be chaired by a legally qualified judge (technically qualified judges will also be used). All appeals (which may be on matters of fact or law) will be heard in the Court of Appeal in Luxembourg. The Court will have exclusive jurisdiction over various matters, including infringement actions, declarations of non-infringement, actions for provisional and protective measures and injunctions, actions for revocation, counterclaims for revocation, and actions against decisions of the EPO.115 It will have the power (inter alia) to revoke a patent, to award damages, and order the payment of costs. Decisions and orders of the Court are enforceable in any Contracting Member State. Existing European Patents, and pending European Patent applications, will fall within the jurisdiction of the new Court system—unless they are ‘opted-out’ under a transitional arrangement. Eventually, the UPC will have exclusive jurisdiction for all patents granted by the EPO which are brought into force in UPC Member States.116

The success of the Unitary Patent is far from certain. There are a number of uncertainties which will affect the outcome. One of these is costs, which have yet to be determined. The promised cost savings will not necessarily follow for all patentees. Pre-grant costs are unlikely to change much. At grant, applicants will be able to choose whether to bring their patent into force as a Unitary Patent or as separate national patents. A common strategy is to bring patents into force in only the UK, France, Germany.117 For these patentees, translation costs will not change either. By contrast, patentees who usually validate their patents in countries where a translation of the entire granted patent is required may enjoy significant savings on these costs. (p. 715) Renewal fees may be perhaps six to eight times the cost of current renewal fees. For those applicants validating only in the UK, France, and Germany, the new scheme would thus be more expensive. However, those whose practice is to validate in most European Patent states will certainly find it cheaper. The levels at which costs are set will have a major impact on patentees’ practice.

Another question is how effective the UPC will be. In theory there will be a single set of rules, implementing one substantive patent law, applying standard procedures, including measures for relief. This should be cheaper and more consistent than the current position, under which patents are litigated nationally. But in practice things may not be quite so simple. The Court system will be complex, with its various divisions, and it is likely that local differences will be detectable. Since the Courts’ decisions may have serious consequences (pan-EU revocations and injunctions, for example), any inconsistencies will lead to forum shopping. One focus for concern is that Local and Regional Divisions will have the discretion to deal with counterclaims for revocation themselves or to refer such claims to the Central Division. This could result in the bifurcation of the hearings on infringement and validity. A pan-EU injunction could be granted at an infringement hearing by a Local or Regional Division, effective until the patent’s validity is considered by the Central Division. Some argue that this will encourage patent trolls—though others refute this.118 Furthermore, inconsistent infringement and validity decisions would have to be resolved by the Court of Appeal, incurring further costs.

It was initially suggested that the Unified Patent system could come into force in January 2014 but this proved unrealistic; a good deal still needs to happen. The UPC Agreement has not yet been ratified. The detailed Rules of Procedure have yet to be finalized. Suitably qualified judges must be appointed. Practical matters such as the Court’s IT system and the individual Courts’ facilities are not yet in place. An outstanding legal challenge from Spain may yet overturn the whole system.119 It seems unlikely that the system will come into force before 2016. Existing European patent holders may be tempted to behave defensively, opting out all their patents until the system is better established and the uncertainties have resolved. The success or failure of the Unitary Patent will eventually turn on its ability to resolve outstanding issues in a way which makes the system more attractive for patentees than the existing alternatives. Whether it can do so remains to be seen.

(p. 716) VI. Conclusion

As has been seen, many successes should be acknowledged in the EU legal framework for intellectual property, which reflects significant change achieved in a testing environment. Nevertheless, there is no room for complacency. Technology will continue to surprise, markets will carry on developing, economic and social goals remain challenging, and public engagement with policy matters only increases. Further harmonization of enforcement rules remains particularly contentious, as are matters of management and licensing. The Commission’s repeatedly expressed aim is to strike the right balance between promoting creation and innovation, in part by ensuring reward and investment for creators and, on the other hand, promoting the widest possible access to goods and services protected by IPRs.120 In the prevailing environment, this is easier said than done. Long transitional periods and further controversy are inevitable.


Robert Burrell and Michael Handler, ‘Making Sense of Trade Mark Law’ (2003) 4 IPQ 388Find this resource:

    Trevor Cook and Estelle Derclaye, ‘An EU Copyright Code: What and How, if Ever?’ (2011) 3 IPQ 259Find this resource:

      Benjamin Farrand, ‘Too Much is Never Enough? The 2011 Copyright in Sound Recording Extension Directive’ [2012] EIPR 297Find this resource:

        Janne Glaesel and Louise Stuhr, ‘The 3D Shape Dilemma: Refusal to Register the Three-Dimensional Shape of a Loudspeaker’ (2012) 7 Journal of Intellectual Property Law & Practice 763Find this resource:

          Andrew Griffiths, ‘Modernising Trade Mark Law and Promoting Economic Efficiency: an Evaluation of the Baby Dry Judgment’ (2003) 1 IPQ 1Find this resource:

            Avgi Kaisi, ‘Finally a Single European Right for the EU? An Analysis of the Substantive Provisions of the European Patent with Unitary Effect’ (2014) 36 European Intellectual Property Review 170Find this resource:

              Nobuko Kawashima, ‘The Droit de Suite Controversy Revisited: Context, Effects and the Price of Art’ (2006) 3 IPQ 223Find this resource:

                Seán Mc Guinness, ‘Observations on Free Riding after L’Oréal v Bellure’, (2012) 7 JIPL&P 890Find this resource:

                  Justine Pila, ‘The European Patent: An Old and Vexing Problem’ (2013) 62 ICLQ 917Find this resource:

                    Eleonora Rosati, ‘Towards an EU-Wide Copyright? (Judicial) Pride and (Legislative) Prejudice’. (2013) 1 IPQ 47Find this resource:

                      Catherine Seville, EU Intellectual Property Law and Policy (2009)Find this resource:

                        Uma Suthersanen, ‘The European Court of Justice in Philips v Remington: Trade Marks and Market Freedom’ (2003) 3 IPQ 257Find this resource:


                          (1) IP right holders must be able to use their rights to prevent the circulation of counterfeit goods, for example. But they must be prevented from using those rights to erect barriers to trade and insulate national markets within the Community without legitimate reason (such as impairment of the goods).

                          (2) In both the spheres of free movement of goods and free competition, the ECJ distinguished between the existence of the IP right (whose protection is assured) and its exercise (which might in appropriate circumstances be restricted): Case 24/67 Parke Davis & Co. v Probel [1968] ECR 55; Joined Cases 56/64 and 58/64 Etablissements Consten and Grundig-Verkaufs v Commission [1966] ECR 299. This led to a considerable body of case law defining the specific subject matter of the various IP rights, addressing the nature of the consent required by a right holder if a right was to be exhausted, and setting out the boundaries of legitimate activity by parallel traders (such as repackaging of genuine goods). For further detail see Catherine Seville, EU Intellectual Property Law and Policy, (2009) Ch 6.

                          (3) Dir 89/104 to approximate the laws of the Member States relating to trade marks [1989] OJ L40/1. Now replaced with Dir 2008/95/EC to approximate the laws of the Member States relating to trade marks (Codified version) [2008] OJ L299/25.

                          (4) Council Reg (EC) No. 40/94 on the Community Trade Mark [1993] OJ L11/1.

                          (5) Member States are required to designate a limited number of national courts and tribunals of first and second instance as ‘Community trade mark courts’, to perform the functions assigned to them by the CTMR: CTMR Art 95.

                          (6) In terms of fees for the relevant territory, it will be much cheaper to apply for a CTM than for many national marks. However, because the CTM is a unitary right, if it is successfully challenged (either by opposition to registration or in an invalidity action) it will be invalid for all Member States. Some businesses with very valuable marks may choose to maintain national marks to guard against this eventuality, and such a strategy will also permit forum shopping if there is an infringement. At the other end of the spectrum, a business which is firm in its intention to use a mark only in one Member State may well still find a national mark preferable.

                          (7) TMD Art 2; CTMR Art 4.

                          (8) See Robert Burrell and Michael Handler, ‘Making Sense of Trade Mark Law’ (2003) 4 IPQ 388.

                          (9) Case C-329/02 P SAT.1 SatellitenFernsehen v OHIM [2004] ECR I-8317, para 26.

                          (10) Joined Cases C-53/01-C-55/01 Linde AG, Winward Industries, Rado Uhren AG [2003] ECR I-3161, paras 48–9.

                          (11) TMD Art 3(1)(c); CTMR Art 7(1)(c).

                          (12) Case C-383/99 P Procter & Gamble Company v OHIM [2001] ECR I-6251. Andrew Griffiths, ‘Modernising Trade Mark Law and Promoting Economic Efficiency: An Evaluation of the Baby Dry Judgment’ (2003) 1 IPQ 1.

                          (13) Case C-108/97 Windsurfing Chiemsee Produktions- und Vertriebs v Boots- und Segelzubehor Walter Huber [1999] ECR I-2779.

                          (14) TMD Art 3(1)(d); CTMR Art 7(1)(d).

                          (15) Case C-517/99 Merz & Krell v Deutsches Patent- und Markenamt [2001] ECR I-6959.

                          (16) TMD Art 3(3); CTMR Art 7(3).

                          (17) Case C-108/05 Bovemij Verzekeringen v Benelux-Merkenbureau [2007] ETMR 29.

                          (18) TMD Art 3(1)(e); CTMR Art 7(1)(e).

                          (19) Case C-299/99 Koninklijke Philips Electronics v Remington Consumer Products [2002] ECR I-5475. See Uma Suthersanen, ‘The European Court of Justice in Philips v Remington: Trade Marks and Market Freedom’ (2003) 3 IPQ 257.

                          (20) See below Section IV 3 (b).

                          (21) Case T-508/08 Bang & Olufsen v OHIM (6 October 2011). For discussion, see Janne Glaesel and Louise Stuhr, ‘The 3D Shape Dilemma: Refusal to Register the Three-Dimensional Shape of a Loudspeaker’ (2012) 7 Journal of Intellectual Property Law & Practice 763.

                          (22) TMD Art 3(1) & (2); CMTR Art 7(1) & 51(1).

                          (23) Both the UKIPO and the OHIM will search to determine whether the mark applied for conflicts with an earlier registered mark or CTM registration. However, the results of these official searches do not operate as an automatic bar to registration. The onus is on the owner of the earlier mark to oppose the application. This explains the commercial value of ‘watching services’, which alert a trade mark owner to all similar trade mark applications which have been accepted for registration.

                          (24) TMD Art 4(1)(a); CTMR Art 8(1)(a).

                          (25) Case C-291/00 LTJ Diffusion v Sadas Vertbaudet [2003] ECR 2799.

                          (26) TMD Art 4(1)(b); CTMR Art 8(1)(b).

                          (27) Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer [1998] ECR I-5507.

                          (28) CTMR Art 8(1)(b). TMD Art 4(1)(b) permits Member States to provide for this ground of refusal in national trade mark laws, and many (including the UK) have done so.

                          (29) CTMR Art 8(5). Case C-292/00 Davidoff v Gofkid [2003] ECR I-389.

                          (30) Case C-252/07 Intel Corporation v CPM [2008] ECR I-8823.

                          (31) Case C-487/07 L’Oréal v Bellure [2009] ECR I-5185.

                          (32) L’Oréal v Bellure [2010] EWCA Civ 535 [48]. See also Seán Mc Guinness, ‘Observations on Free Riding after L’Oréal v Bellure’, (2012) 7 JIPL&P 890.

                          (33) Intel (n 22) para 77.

                          (34) Case C-383/12 P Environmental Manufacturing v OHIM, judgment of 14 November 2013 and passim.

                          (35) CTMR Art 9; TMD Arts 4 & 5.

                          (36) Case C-48/05 Adam Opel v Autec [2007] ECR I-1017.

                          (37) Case C-323/09 Interflora v Marks & Spencer & Flowers Direct Online, judgment of 22 September 2011. In Google France the ECJ held that an ISP which stores, as a keyword, a sign identical to a trade mark and organizes the display of advertisements on the basis of that keyword does not ‘use’ that sign within the meaning of Art 5(1) & (2) TMD (or Art 9(1) CTMR): joined cases C-236/08 C-237/08 and C-238/08 Google France SARL and Google Inc. v Louis Vuitton Malletier SA (C-236/08), Google France SARL v Viaticum SA and Luteciel SARL (C-237/08) and Google France SARL v Centre national de recherche en relations humaines (CNRRH) SARL and others (C-238/08), judgment of 23 March 2010, para 56.

                          (38) The new legislative proposals have been drafted in the light of the Study of the Overall Functioning of the European Trade Mark System, undertaken for the Commission by the Max Planck Institute following a competitive tender process: The careful study included analysis of extensive user surveys and consultations of user associations. It recommended that the harmonization process should continue, bringing the provisions of the TMD further into line with the CTMR, thus eliminating where possible the remaining inconsistencies between Community and national regimes. The study found a reasonable degree of satisfaction with the consistency of the decisions of trade mark offices, but noted substantial room for improvement, with the objective of converting both OHIM and the national offices into centres of excellence rather than merely centres for good or satisfactory performance. The aim is to adopt the proposals by the spring of 2014.

                          (39) Copyright and Challenge of Technology—Copyright Issues Requiring Immediate Action COM/88/172.

                          (40) Dir 91/250 [1991] OJ L122/42 (‘CP Dir’). Now codified as Dir 2009/24 [2009] OJ L111/16.

                          (41) CP Dir Art 1(1).

                          (42) CP Dir Art 1(3). At the time this required 12 Member States to lower their threshold for granting protection, and the remaining three to raise it.

                          (43) CP Dir Art 1(2). See Case C-406/10 SAS Institute v World Programming, judgment of 2 May 2012.

                          (44) CP Dir Art 4. Community-wide exhaustion of the distribution right (but with the clear exception of the rental right) is explicitly provided for. See Case C-128/11 UsedSoft v Oracle (3 July 2012).

                          (45) CP Dir Arts 5 & 6. There are significant competition law aspects to this issue. See eg Case T-201/04 Microsoft v Commission [2007] ECR II-360.

                          (46) The original version, Dir 92/100, has now been replaced with a codified version: Dir 2006/115 on rental right and lending right and on certain rights related to copyright in the field of intellectual property (codified version) [2006] OJ L376/28.

                          (47) Rental Dir Art 3(1).

                          (48) Rental Dir Art 5. Case C-245/00 SENA v NOS [2003] ECR 1251.

                          (49) Rental Dir Art 2(2). See Case C-277/10 Luksan v van der Let (9 February 2012).

                          (50) Dir 93/83 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission Satellite Dir) [1993] OJ L248/15.

                          (51) Satellite Dir Art 2.

                          (52) Case C-341/87 EMI Electrola v Patricia [1989] ECR 79.

                          (53) Dir 93/98, now replaced by Dir 2006/116 on the term of protection of copyright and certain related rights (codified version) [2006] OJ L372/12.

                          (54) Dir 2011/77/EU amending Dir 2006/116/EC on the term of protection of copyright and certain related rights [2011] OJ L265/1.

                          (55) Benjamin Farrand, ‘Too Much is Never Enough? The 2011 Copyright in Sound Recording Extension Directive’ [2012] EIPR 297.

                          (56) Term Dir Art 4.

                          (57) Dir 96/9 on the Legal Protection of Databases [1996] OJ L77/20.

                          (58) Case C-338/02 Fixtures Marketing v Svenska [2004] ECR I-10497; Case C-444/02 Fixtures Marketing v Organismos Prognostikon Agonon Podosfairou [2004] ECR I-10549; Case C-46/02 Fixtures Marketing v Oy Veikkaus ECR I-10365; C-203/02 British Horseracing Board v William Hill Organization [2004] ECR 10,415.

                          (59) Dir 2001/84 on the resale right for the benefit of the author of an original work of art [2001] OJ L272/32.

                          (60) Resale Right Dir Art 4(1).

                          (61) See Nobuko Kawashima, ‘The Droit de Suite Controversy Revisited: Context, Effects and the Price of Art’ (2006) 3 IPQ 223.

                          (62) Dir 2001/29 on Copyright and related rights in the Information Society (InfoSoc Dir) [2001] OJ L167/10.

                          (63) WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty.

                          (64) InfoSoc Dir Art 2(1).

                          (65) Case C-607/11 ITV Broadcasting v TVCatchup (7 March 2013).

                          (66) In the UK, see eg Dramatico Entertainment v British Sky Broadcasting [2012] EWHC 1152 (Ch); EMI v BSkyB [2013] EWHC 379 (Ch).

                          (67) Case C-466/12 Svensson.

                          (68) InfoSoc Dir Art 4. The rule has its origins in case law: Case 78/70 Deutsche Grammophon Gesellschaft GmbH v Metro SB Grossmarkte GmbH & Co KG [1971] ECR 487.

                          (69) InfoSoc Dir Art 5(1). Applied in C-5/08 Infopaq International v Danske Dagblades Forening [2009] ECR I-6569.

                          (70) InfoSoc Dir Art 5.2, 5.3. All exceptions are subject to the Berne three-step test.

                          (71) InfoSoc Dir Art 6.

                          (72) InfoSoc Dir Art 7.

                          (73) Dir 2012/28/EU on certain permitted uses of orphan works [2012] OJ L299/5, Art 6(2).

                          (74) Art 5(2). See Case C-467/08 Padawan v SGAE (21 October 2010).

                          (75) Martin Kretschmer, Private Copying and Fair Compensation: An Empirical Study of Copyright Levies in Europe; Asunción Esteve Pardo and Agnès Lucas-Schloetter, ‘Compensation for private copying in Europe: recent developments in France, Germany and Spain’ (2013) 35 European Intellectual Property Review 463.

                          (76) A single market for intellectual property rights COM(2011) 287 3.3.1.

                          (77) Trevor Cook and Estelle Derclaye, ‘An EU Copyright Code: what and how, if ever?’ (2011) 3 IPQ 259; Eleonora Rosati, ‘Towards an EU-Wide Copyright? (Judicial) Pride and (Legislative) Prejudice’. (2013) 1 IPQ 47.

                          (78) Directive 98/71 on the legal protection of designs (Designs Dir) [1998] OJ L289/28.

                          (79) Regulation 6/2002 on Community designs (CDR). The substantive provisions of the Regulation and Directive are aligned.

                          (80) Designs Dir Art 1; CDR Art 3.

                          (81) Designs Dir Art 3(3) & Art 14; CDR Art 4(2) & Art 110.

                          (82) Designs Dir Art 7(1); CDR Art 8(1): to prevent technological innovation being hampered by design protection.

                          (83) Designs Dir Art 7(2); CDR Art 8(2): to allow interoperability of products of different makes, and to prevent a manufacturer from monopolizing secondary markets for accessories or consumables.

                          (84) Designs Dir Art 8; CDR Art 9.

                          (85) CDR Art 24. An RCD may be declared invalid in proceedings before OHIM, or a declaration of invalidity may result from infringement proceedings before a Community design court. Community design courts have sole jurisdiction to determine the invalidity of UCDs. Although the intention of the Regulation was to facilitate enforcement and to avoid forum shopping, the dispute between Apple and Samsung concerning the design of their tablet computers indicates the difficulties of achieving these goals if the financial stakes are sufficiently high. See Samsung Electronics (UK) v Apple Inc [2012] EWCA Civ 729, and [2012] EWCA Civ 1339.

                          (86) Designs Dir Art 4; CDR Art 5. For rules on priority see CDR Arts 41-44.

                          (87) Designs Dir Art 5; CDR Art 6. The relevant dates are the same as those when assessing novelty.

                          (88) On the application of the test to complex products (here, internal combustion engines), see T-10/08 and T-11/08 Kwang Yang Motor Co v OHIM (9 September 2011).

                          (89) C-281/10 PepsiCo v Grupo Promer Mon Graphic (20 October 2011).

                          (90) Designs Dir Art 11(1)(c). CDR Art 25(1)(c). This ground may be invoked solely by the person in fact entitled to it.

                          (91) Designs Dir Art 11(1)(d).

                          (92) CDR Art 25(1)(d).

                          (93) Designs Dir Art 11(2)(a). CDR Art 25(1)(e).

                          (94) Designs Dir Art. 11(2)(b). CDR Art 25(1)(f). For a recent example see Cases T-566/11 and T-567/11 Viejo Valle v OHIM (23 October 2013).

                          (95) Designs Dir Art 11(2)(c); CDR Art 25(1)(g).

                          (96) CDR Art 14(1). Joint ownership is provided for.

                          (97) CDR Art 14(3).

                          (98) CDR Art 27(1).

                          (99) Designs Dir Art 10.

                          (100) CDR Art 12.

                          (101) This includes all third parties, even those who have a later registered design: Case C-488/10 Celaya Emparanza y Galdos Internacional v Proyectos Integrales de Balizamientos (16 February 2012).

                          (102) CDR Art 19(2), (3).

                          (103) Designs Dir Art 9; CDR Art 10.

                          (104) Case T-10/08 Kwang Yang Motor Co v OHIM [2011] ECR II-265*; Case T-11/08 Kwang Yang Motor Co v OHIM [2011] ECR II-266*.

                          (105) Designs Dir Art 13(1); CDR Art 20(1).

                          (106) CDR Art 22 (also Recital 23).

                          (107) Designs Dir Art 15; CDR Art 21.

                          (108) Designs Dir Art 14.

                          (109) CDR Art 110. See also CDR Recital 13. On the interpretation of this provision see Bayerische Motoren Werke Aktiengesellschaft v Round and Metal Ltd [2012] EWHC 2099 (Pat).

                          (110) Justine Pila, ‘The European Patent: an Old and Vexing Problem’ (2013) 62 ICLQ 917.

                          (111) Regulation No 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection [2012] OJ L361/1.

                          (112) Council regulation No 1260/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements. [2012] OJ L361/89.

                          (113) The agreement on a Unified Patent Court was signed on 19 February 2013, and published as the Council of the European Union Notice no. 2013/C 175/01.

                          (114) Spain and Italy’s action challenging the Council’s decision to proceed under the enhanced cooperation procedure was dismissed by the ECJ: Joined Cases C-274/11 and C-295/11 Spain & Italy v Council (16 April 2013).

                          (115) UPC Agreement Art 32(1).

                          (116) Like any national court, the UPC will be required to cooperate with the ECJ to ensure the correct application and uniform interpretation of Union law, in particular by submitting requests for preliminary rulings in accordance with Article 267 TFEU. Decisions of the ECJ will be binding on it: Agreement on a Unified Patent Court [2013] OJ C175/1 Art 21.

                          (117) In deciding where to validate patents, patentees commonly consider size of market, cost of validations and cost of renewals. These three countries together represent about 50 per cent of EU GDP.

                          (118) A patent troll is a person or company which buys up patents with the sole intention of enforcing them to collect licensing fees rather than using them to produce goods or provide services. For discussion in this context, see Avgi Kaisi, ‘Finally a Single European Right for the EU? An Analysis of the Substantive Provisions of the European Patent with Unitary Effect’ (2014) 36 European Intellectual Property Review 170 at 179. The Commission denies that the UPC will increase the activity of patent trolls in Europe: see Commission Barnier’s answer (8 January 2014) to a Parliamentary question E-012200-13 (24 October 2013).

                          (119) Case C-146/13, Kingdom of Spain v European Parliament and Council of the European Union (pending).

                          (120) See eg the Commission Communication A Single Market for Intellectual Property Rights (2011).