Art and tmd art and 2 tmd



Yüklə 445 b.
tarix03.05.2018
ölçüsü445 b.
#41073



Art. 1 and 2 TMD

  • Art. 1 and 2 TMD

  • Kinds of trade marks: word marks, figurative marks, combined marks, three dimensional marks, fragnances (C 273/00 Sieckmann), sound marks (C-283/01 Shield Mark ”Für Elise”)









Guarantee function, cf. C-517/99 BRAVO (beeing a guarantee for commercial origin towards the end user)

  • Guarantee function, cf. C-517/99 BRAVO (beeing a guarantee for commercial origin towards the end user)

  • Distinguising function, cf. C-206/01 ARSENAL (making it possible for end users to distinguish between goods origination from various sources)

  • Protection of goodwill, cf. C-206/01 ARSENAL (protecting the proprietor against others seeking to take advantage of the goodwill connected to the trade mark, or to damage the reputation or distinctiveness of the trade mark)



Registered and unregistered trade marks

  • Registered and unregistered trade marks

  • Administrative and judicial functions

  • National, regional and international systems

  • Classification system

  • Scope of protection (Art. 4, 5 and 6 TMD)

  • Duration

  • Requirement of use (Art. 10 and 11 TMD)

  • Territoriality

  • Exhaustion of rights (Art. 7 TMD)



Trade Mark Directive (2008/95) TMD

  • Trade Mark Directive (2008/95) TMD

    • partial approximation
    • registered trade marks
    • unification, cf. C-355/96 Silhouette (exceptions: Art. 5(2) og (5) TMD)
  • Trade Mark Regulation (207/2009) CTMR

    • supplementing national systems
    • unitary character
    • mirroring the substantive provisions of the directive
    • Authority: OHIM (www.oami.eu.int)




graphical representation, Art. 2 TMD

  • graphical representation, Art. 2 TMD

  • distinctive character, Art. 3(1)(b) TMD

  • descriptive signs, Art. 3(1)(c)

  • customary designations, Art. 3(1)(d) TMD

  • functional shapes etc., Art. 3(1)(e)

  • misleading signs, Art. 3(1)(g) TMD



identity with a protected sign, Art. 4(1)(a) TMD

  • identity with a protected sign, Art. 4(1)(a) TMD

  • similarity with a protected sign, Art. 4(1)(b) TMD

  • capable of being associated with a well known trade mark, Art. 4(3)

  • similarity with a foreign trade mark, Art. 4(4)(g)

  • trade marks containing personal and company names, titles, copyright works etc., Art. 4(4)(c) TMD



The trade mark taken as a whole, cf. C-329/02 P “SAT.2”

  • The trade mark taken as a whole, cf. C-329/02 P “SAT.2”

  • In relation to the goods in question, cf. C-363/99 POSTKANTOOR

  • The perspective of an ordinary end user

  • Aquired distinctiveness, cf. C-286/04 P (Corona bottle); C-24/05 (August Storck, Werther’s caramel)

  • The relevant point in time





Important decisions:

  • Important decisions:

    • C 383/99 (BABY-DRY)
    • C-104/00 P (COMPANYLINE)
    • C-191/01 (DOUBLEMINT)
    • C-363/99 (POSTKANTOOR)
    • C-37/03 (BioID)


2. avd. kj. 7475 Louis Vuitton

  • 2. avd. kj. 7475 Louis Vuitton

  • 2. avd. kj. 7425 7-Eleven

  • T-139/08 The Smiley Co.



Colours, cf. T-316/00 (green and grey) 25.9.02; T 173/00 (orange) 9.10.02; C-104/01 Libertel

  • Colours, cf. T-316/00 (green and grey) 25.9.02; T 173/00 (orange) 9.10.02; C-104/01 Libertel

  • Slogans, cf. C-64/02 P (Das Prinzip der Bequemlichkeit); C 398/08 P (Vorsprung durch Technik)

  • Geographical indications, cf. C-108/97 and C 109/97 (CHIEMSEE)



Same requirement, cf. C 299/99 (Philips)

  • Same requirement, cf. C 299/99 (Philips)

  • More difficult to proove, ”significant departure from the norm”, cf. C-136/02 P (MagLite), C-286/04 P (Corona bottle)

  • Functional features, cf. C 48/09 P, Lego

  • Aquired distinctiveness, jf. C-24/05 (Storck, caramel)















«long-standing and intensive use», C 109/97 (CHIEMSEE)

  • «long-standing and intensive use», C 109/97 (CHIEMSEE)

  • «at least a significant proportion ... of the relevant class of persons», C 109/97 (CHIEMSEE); C-108/05 (EUROPOLIS)

  • Rt. 2005 s. 1601 GULE SIDER (YELLOW PAGES)



«entitled to prevent all third parties», Art. 5 TMD

  • «entitled to prevent all third parties», Art. 5 TMD

  • «in the course of trade»

  • Use as a sign, jf. C-2/00 Hölterhoff; C-24/05 P (Storck, caramel); C-236/08–C-238/08

  • Accessories and spare parts, Art. 6(1)(b) og (d) TMD; C-228/03 (Gillette)

  • Taking advantage of the trade mark, jf. C-206/01 ARSENAL

  • Use of own name and address, Art. 6(1)(d) TMD; C-245/02 BUDWEISER



Free movement of goods, Art. 28 and 30 EC; Art. 11 and 13 EEA

  • Free movement of goods, Art. 28 and 30 EC; Art. 11 and 13 EEA

  • Art. 7 TMD

  • EEA-regional principle of exhaustion, C-355/96 Silhouette, cf. E-2/97 Maglite and E-9/07/E-10/07 L’Oréal

  • Consent, C-59/08 Copad

  • Parallell imports and marketing, C-337/95 Dior; C-63/97 BMW; C-558/08 Portakabin; Rt. 2004 s. 1474 (volvoimport.no)



Identical signs for identical goods, Art. 5(1)(a) TMD

  • Identical signs for identical goods, Art. 5(1)(a) TMD

  • Similar signs for similar goods, Art. 5(1)(b) TMD

    • direct likelihood of confusion,
    • indirect likelyhood of confusion, C-251/95 Sabel v. Puma; C-39/97 Canon; C-21/08 Sunplus v. Sun
    • the ”product rule”, C-39/97 Canon; C-342/97 Lloyd
  • Protection for well known trade marks, Art. 5(2)

    • well known, C-375/97 CHEVY
    • taking unfair advantage, C-252/07 Intel (INTELMARK)
    • detriment to distinctive character or repute


C-206/04 P ZIRH/SIR

  • C-206/04 P ZIRH/SIR

  • C-361/04 P PICARO/PICASSO

  • 2. avd. 7179 (STOLNAYA/STOLICHNAYA)

  • R-109/99 (SUNSET/SUNRISE)



2. avd. 7258 RADIO 1 / KANAL 1

  • 2. avd. 7258 RADIO 1 / KANAL 1

  • 2. avd. 7364 Drop of oil



What is a domain name?

  • What is a domain name?

  • Different parts of a domain name (www.jus.uio.no)

    • top-level domain (.no) – national and generic TLDs
    • second-level domain (.uio)
    • third-level domain (.jus)
  • Post domain path (/studier/program/ictlaw-master/)

  • First to file – two business may legitimately wish to register the same domain name, Prince plc v. Prince Sports Group Inc. [1998] FSR 21 (www.prince.com)

  • ICANN and national registries

  • Dispute resolution policies



www.primebroker.com (R 77/1999-2; computers in class 9; online services in class 42)

  • www.primebroker.com (R 77/1999-2; computers in class 9; online services in class 42)

  • ADVERTISING.COM (R 1035/2008-4; advertising etc. class 35; communication services etc. in class 38)



Use in the course of trade

  • Use in the course of trade

    • gripe sites and fan sites
  • Use as a trade mark

    • Is the use of a word as second and third level domain trade mark use?
    • Is the use of a word in the post domain path trade mark use?
    • search engine advertising (Google AdWords), C-236–238/08 Google
    • Google Suggest
  • Where is the domain name being used? The problem of co-existing trade marks

    • Euromarket v. Peters [2001] FSR 20 (Ch.)
    • Sony v. Pacific Game Technology [2006] EWHC 2509


Content of web site – relevance?

  • Content of web site – relevance?

  • Marketing of parallell imports

    • C-558/08 Portakabin
    • Hewlett-Packard v. Haralds Printershop RG 2003 s. 997
    • Rt. 2004 s. 1474 (volvoimport.no)
    • Porsche (D2004-0481)
    • Charles Chips Enterprises (D2005-0836)
    • Oki Data (D2001-0903)
  • Fair use

    • Danish Supreme Court – nyhedsavisen.dk (U 2009 p. 1592)


Identical sign for identical goods or services

  • Identical sign for identical goods or services

    • C-236–238/08 Google
  • Similar sign for similar goods or services

    • C 278/08 BergSpechte
  • Well known trade marks

    • C-236–238/08 Google
    • Global Projects Management Ltd v. Citigroup Inc [2006] FSR 39
  • Fair use

    • C-558/08 Portakabin


Use of signs on web pages

  • Use of signs on web pages

  • Metatags

    • Reed Executive v. Reed Business Information [2004] ETMR 56
    • Louise Lego v. Lego Holding, Danish Supreme Court, U 2008 372 H
  • Pathways

    • Tesco Stores Ltd v. Elogicom Ltd [2007] FSR 4
  • Auctions and portals

    • C-236–238/08 Google
    • Internet Auction II [2007] E.T.M.R. 70 (BGH)


Purpose and effect

  • Purpose and effect

  • Only gTLDs

  • Only second level domains

  • Autonomous body of law

  • Applicable disputes, Art. 4a

  • Bad faith, Art. 4b



Cybersquatting (domain name hijacking)

  • Cybersquatting (domain name hijacking)

    • One in a Million [1999] FSR 1
    • Sheraton v. KerryWeb Enterprise, D2007-1150
  • Legitimate use

    • Wachovia Corp v. Alton Flanders, D2003-0596
    • Nintendo v. Garrett N. Holland, D2000-1483
  • Resources

    • http://www.wipo.int/amc/en/domains/search/overview/index.html
    • http://www.internetlibrary.com/topics/domain_name.cfm


Invention, Art. 52 EPC

  • Invention, Art. 52 EPC

  • Susceptible of industrial application, Art. 52 and 57 EPC

  • Right to the invention, Art. 60 EPC

  • Novelty, Art. 54 EPC

  • Inventive step, Art. 56 EPC

  • Resources: www.epo.org



Discoveries etc.

  • Discoveries etc.

  • Business methods, programs for computers, presentation of information etc.

  • Medical methods

  • Plant or animal varieties

  • Inventions contrary to ”ordre public”

    • Biotech directive Art. 6(2)(d)


Patent Cooperation Treaty (PCT) 1970

  • Patent Cooperation Treaty (PCT) 1970

    • examination of novelty
    • examination of patentability optional
    • national phase
  • European Patent Convention (EPC) 1973

    • European patents granted by EPO
    • same effect as national patents
    • no centralised court system (yet)


Agreement relating to Community patents (CPC) 1989

  • Agreement relating to Community patents (CPC) 1989

  • Proposed EC regulation March 8, 2004

    • building on the EPC
    • unitary character
    • centralised court
  • Commission Recommendation March 20, 2009

  • Biotech directive (98/44/EF)

  • Softpat directive proposal February 20, 2002



Novelty and inventive step compared

  • Novelty and inventive step compared

  • Availability to the public, Art. 54 EPC

  • Global novelty requirment

  • Priority, Art. 87 EPC



Non-obviousness, Art. 56 EPC

  • Non-obviousness, Art. 56 EPC

  • Principles

    • objective asessment
    • combination inventions
    • «Could» vs. «Would», «pointers», etc., cf. jf. EPO Guidelines C, IV, 9.4
    • «Reasonable expectation of success», cf. T 296/93 BIOGEN/Hepatitis B [1995] EPOR 1 («would be encouraged to try the solution with a reasonable expectation of success»)
  • «Problem and Solution Approach»



Guidelines C, IV, 9.5: «In the problem and solution approach there are three main stages:

  • Guidelines C, IV, 9.5: «In the problem and solution approach there are three main stages:

    • determining the closest prior art,
    • establishing the technical problem to be solved, and
    • considering whether or not the claimed invention, starting from the closest prior art and the technical problem, would have been obvious to the skilled person.
  • The closest prior art is that combination of features derivable from one single reference that provides the best basis for considering the question of obviousness.»



Term of patent protection, Art. 63 EPC

  • Term of patent protection, Art. 63 EPC

  • Same effect as national patents, Art. 64 EPC

  • Right to exclude

  • Exploitation in the course of trade and industry

  • Territoriality

  • Exhaustion of rights

  • Product patents: absolute protection

  • Process patents: protection for the process and for products directly obtained, Art. 64 EPC



Extent of protection shall be determined by the claims, Art. 69 EPC

  • Extent of protection shall be determined by the claims, Art. 69 EPC

  • Patent claims; independent and dependent claims, Art. 84 EPC

  • Description, Art. 83 EPC

  • Interpretation of claims

  • Doctrine of equivalents, Protocol to Art. 69 EPC



1. A pipe clamp, comprising an annular strap (12) with at least one opening which can be closed by a clamping screw (10), … characterised in that the head (24) of the clamping screw (10) can be passed axially, relative to its central longitudinal axis, through the hole (36) in the flange (20) and is retained by a washer (38) which is inserted between the head (24) and the flange (20) before tightening takes place and which is formed with a slot (40) open at one end.

  • 1. A pipe clamp, comprising an annular strap (12) with at least one opening which can be closed by a clamping screw (10), … characterised in that the head (24) of the clamping screw (10) can be passed axially, relative to its central longitudinal axis, through the hole (36) in the flange (20) and is retained by a washer (38) which is inserted between the head (24) and the flange (20) before tightening takes place and which is formed with a slot (40) open at one end.





A pipe clamp,

  • A pipe clamp,

  • the head (24) of the clamping screw (10) can be passed … through the hole (36) in the flange (20)

  • is retained by a washer (38)

  • which is inserted between the head (24) and the flange (20)

  • and which is formed with a slot (40) open at one end.





«programs for computers» excluded, cf. Art. 52(2)(c)

  • «programs for computers» excluded, cf. Art. 52(2)(c)

  • Exclusion limited to programs «as such», Art. 52(3)

  • Clearly patentable subject matter: Products and processes incorporating software

  • Clearly unpatentable: Programming language (literary work)

  • Problematic: software as such, software on a storage medium, a computer incorporating or executing software, a method consisting of executing software



Traditionally: «Technical contribution approach», cf. T 208/84 VICOM/Computer-related invention.

  • Traditionally: «Technical contribution approach», cf. T 208/84 VICOM/Computer-related invention.

  • Current interpretation: «Whole contents approach», cf. T 935/97 IBM/Computer programs and T 931/95 PBS/ Controlling pension benefits system

  • EPO Guidelines C,IV,2.3.6, cf. C,II,4.15 and C,IV,11.7.2





«The exclusion from patentability of programs for computers as such … may be construed to mean that such programs are considered to be mere abstract creations, lacking in technical character. … This means that programs for computers must be considered as patentable inventions when they have a technical character.»

  • «The exclusion from patentability of programs for computers as such … may be construed to mean that such programs are considered to be mere abstract creations, lacking in technical character. … This means that programs for computers must be considered as patentable inventions when they have a technical character.»



«physical modifications ... driving from the execution of the instructions given by programs ... cannot per se constitute the technical character required … It is thus necessary to look elsewhere for technical character in the above sense: it could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. Where the said further effects have a technical character or where they cause the software to solve a technical problem, an invention which brings about such an effect may be considered an invention …»

  • «physical modifications ... driving from the execution of the instructions given by programs ... cannot per se constitute the technical character required … It is thus necessary to look elsewhere for technical character in the above sense: it could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. Where the said further effects have a technical character or where they cause the software to solve a technical problem, an invention which brings about such an effect may be considered an invention …»



«it does not make any difference whether a computer program is claimed by itself or as a record on a carrier»

  • «it does not make any difference whether a computer program is claimed by itself or as a record on a carrier»



«a method using technical means is an invention within the meaning of Article 52(1) EPC. A computer system including a memory (clipboard) is a technical means ... a computer-implemented method is distinguished from that of a computer progrem»

  • «a method using technical means is an invention within the meaning of Article 52(1) EPC. A computer system including a memory (clipboard) is a technical means ... a computer-implemented method is distinguished from that of a computer progrem»

  • «The subject-matter of claim 5 has technical character since it relates to a computer-readable medium, i.e. a technical product involving a carrier ...»



«The Board also considers the claimed method steps to contribute to the technical character ... These steps solve a technical problem by technical means ... independently of any cognitive content ... in order to enhance the internal operation of a computer system»

  • «The Board also considers the claimed method steps to contribute to the technical character ... These steps solve a technical problem by technical means ... independently of any cognitive content ... in order to enhance the internal operation of a computer system»

  • «a clipboard format adding the aforementioned formatting metamorphosis .. does not derive in an obvious manner from the pre-existing operating system»



The questions:

  • The questions:

  • Claim form (claim language)

  • Products and processes. (a) Software and hardware. (b) Further technical effect.

  • Technical (physical) effect.

  • The concept of technicality – computer programming



The answers:

  • The answers:

  • Inadmissible

  • Inadmissible

  • Inadmissible

  • Inadmissible



Affirms:

  • Affirms:

  • Whole contents approach

  • Any physical element will do

  • Requirement of further technical effect

  • Programs as such may be claimed

  • Technical contribution is required for inventive step



Art. 2(a): ««computer-implemented invention» means any invention the performance of which involves the use of a computer ... and having one or more prima facie novel features»

  • Art. 2(a): ««computer-implemented invention» means any invention the performance of which involves the use of a computer ... and having one or more prima facie novel features»

  • Art. 3: «a computer-implemented invention is considered to belong to a field of technology»

  • Art. 4(2): «it is a condition of involving an inventive step that a computer-implemented invention must make a technical contribution»

  • Art. 5: «may be claimed as aproduct ... or as a process»



T 931/95 PBS PARTNERSHIP: «All the features of this claim are steps of processing and producing information having purely administrative, actuarial and/or financial character. Processing and producing such information are typical steps of business and economic methods ... The feature of using technical means for a purely non-technical purpose ... does not necessarily confer technical character to ... the method»

  • T 931/95 PBS PARTNERSHIP: «All the features of this claim are steps of processing and producing information having purely administrative, actuarial and/or financial character. Processing and producing such information are typical steps of business and economic methods ... The feature of using technical means for a purely non-technical purpose ... does not necessarily confer technical character to ... the method»



«transmitting information ... even if performing the transmission might involve the use of technical means, does not go beyond a business activity as such»

  • «transmitting information ... even if performing the transmission might involve the use of technical means, does not go beyond a business activity as such»

  • «what has to be evaluated here is the extent to which the method ... is a method for doing business as such ... not whether the method is devoid of utlity»



«the just-in-time sequence itself ... is nowadays a typical management ”tool” used in running a business. In the opposed patent however it has a practical application to mail processing, which is itself, in essence, a particular kind of mechanical handling ... the fact that a measure may have been derived from or inspired by an insight originating in an activity which is per se excluded from protection ... does not imply that a claim including ... such a measure in its specific practical application in the solution of a technical problem is a claim to the excluded activity as such.»

  • «the just-in-time sequence itself ... is nowadays a typical management ”tool” used in running a business. In the opposed patent however it has a practical application to mail processing, which is itself, in essence, a particular kind of mechanical handling ... the fact that a measure may have been derived from or inspired by an insight originating in an activity which is per se excluded from protection ... does not imply that a claim including ... such a measure in its specific practical application in the solution of a technical problem is a claim to the excluded activity as such.»



Gathering and evaluating data as part of a business research method do not convey technical character to the business research method if such steps do not contribute to the technical solution of a technical problem

  • Gathering and evaluating data as part of a business research method do not convey technical character to the business research method if such steps do not contribute to the technical solution of a technical problem



T 258/03 HITACHI/Auction system

  • T 258/03 HITACHI/Auction system

  • EP 1235177 Open Market Inc.

  • EP 1367828 Acacia Media Technologies Corp.

  • EP 1160686 Godado Com Ltd.










Yüklə 445 b.

Dostları ilə paylaş:




Verilənlər bazası müəlliflik hüququ ilə müdafiə olunur ©genderi.org 2022
rəhbərliyinə müraciət

    Ana səhifə