And IPR Protection: What Should I Know?

Technology meets the market: And IPR protection: what should I know?

Vienna, Austria

July 5th 2016

Raffaele Buompane

www.ebn.eu Goals

This module is designed to: 1. Introduce IP rights comprising Designs, Trademarks, Geographical Indications & Protected Designation of Origins, and Domain names including: • What they are • Why you need them • How to get them 2. Discuss the importance of having an IP strategy 3. Show how IP can be used to protect innovation

www.ebn.eu Content

• Introduction • Relevance of IP • IP Types • Overview of IP Types • Patents • Utility Models • Designs (exercises and case study) • Trademarks (exercises and case studies) • PDO & GI (case study) • Supplementary Protection Certificates • Domain names • Use of IP in Business and IP Strategy (exercise) • Case Study • Summary

www.ebn.eu Let’s start!

www.ebn.eu Introduction to Intellectual Property

• Intellectual property (IP or IPR) refers to the rights one has to intangible assets, e.g. creations of the mind, such as:

• Ideas • Thoughts • Creations • Writings • Drawings

www.ebn.eu Why is IP important?

You Others

Create IP that Identify strong makes you partners through IP attractive for Opportunity competitive investment or to get intelligence partners IP

Establish IP that Ensure that you have Strategy protects your freedom to operate Risk products/ services/ before launch to name from being prevent infringement, imitated unfair use

www.ebn.eu Why is IP important?

• IP enables creativity to be protected, and clearly establishes who owns what • IP can be licensed or sold • It can be a key negotiating tool - a "deal-maker“ • IP will attract investment • IP appears as an asset on the company accounts, even if other parts of the business get into trouble • IP is a source of information and knowledge • IP presents both opportunities and risks which are to be exploited or avoided – strategy is key!

www.ebn.eu Myth - IP is just for large companies

• Most SME’s have IP that they are unaware of… • Customer lists, designs, logos, brand names, etc.

• SME’s need to know about: • Their own IP (to leverage it / protect it) • Others’ IP (to avoid infringement)

• Some industries thrive off IP, where IP can help SME’s to position themselves for investments / buyout, e.g. Biotechnology, Communications

www.ebn.eu Where does IP come from?

Intellectual Assets + •Inventions •Works of art Ideas / Creativity: •Writings, etc. Thoughts problem solving in an unusual way

Note: not all intellectual assets can be protected with IP

www.ebn.eu Industrial Property: nomenclature

Inventions Patents, UMs Brands, logos Reg. TMs Designs Reg. Designs

These are registered rights The inventor, creator or designer has no rights until they make a registration Others can check if rights exist, and who owns them, by looking at the register

www.ebn.eu Industrial Property: nomenclature

These rights are unregistered - Inventions Patents, UMs they exist from the moment the Brands, logos Reg. TMs Reg. Designs Designs works are created. Ownership is harder to clarify without a

Musical, dramatic, Copyright register literary & artistic works Databases Database right The registered & unregistered Reputation / Goodwill Unreg. TMs rights together are called Designs Unreg. Designs intellectual property

www.ebn.eu Intellectual Assets

Inventions Patents, UMs Brands, logos Reg. TMs Designs Reg. Designs

Musical, dramatic, Copyright literary & artistic works Databases Database right Reputation / Goodwill Unreg. TMs Designs Unreg. Designs

The formal registered & unregistered rights, when Know-how Restrictive combined with this third group of "soft IP", are known Trade secrets covenants collectively as intellectual assets Confidential Confidentiality information agreements

www.ebn.eu One product – many IP rights

• Reg. Designs for phone shape • Reg. Trade Mark - “Samsung" & some tones • Copyright - software, ringtones & images • Patents - for technology to produce and operate. Some pooled or cross-licensed, exclusive • Trade secrets - some technical know-how kept "in-house" and not published

www.ebn.eu Combining IP into a single product another example

• Reg. Designs for jar shape • Reg. TMs - "Nestlé" & "Nescafé" • Copyright - label artwork & text • Patents - for processes to roast, grind, decaffeinate & dry coffee (hundreds!) • Trade secrets - some technical know-how kept "in-house" and published

www.ebn.eu Content

www.ebn.eu Overview of patent rights

A patent rights can be viewed as an agreement between the inventor and inventor and society

Patents protect technical inventions which solve technical problems problems • chemicals, products, equipment and apparatus

Patent #: EP1180338B1 • processes and methods Title: Chair Assignee: KOKUYO CO., LTD.

www.ebn.eu IP rights: what is a patent?

• A patent is the right to exploit an invention - NO! • The right to exclude others from making, using, selling or importing an invention. It confers no enabling right

Electric kettle Kettle with ceramic heating MoSi2 element Molybdenum disilicide

www.ebn.eu Patents are a prohibitive right

A patent forbids others to commercially produce, sell, work, use, import and possess the invention

But…

…A patent does not extend to: – acts performed for non-commercial purposes – acts performed for experimental purposes – acts concerning products which are commercially worked by, or with the consent of, the patentee – Individual production of a medicinal product at a pharmacy

www.ebn.eu Patentability (1 of 2)

What can be patented? • A product itself • The apparatus for producing the product • The process or method for producing the product • The use of the product

www.ebn.eu Patentability (2 of 2)

What cannot be patented? • Computer programs** • Inventions which are contrary to moral standards and public order (e.g. • Mathematical methods instruments of torture) • Business methods* • The human body and any non-separate • Medical and surgical treatments part/s thereof* • Discoveries • Presentations of information • New species of plant or animal • Scientific theories • Aesthetic creations

*Note: This subject matter may be patentable in jurisdictions other than Europe **Note: Covered on next slide

www.ebn.eu Patents for computer implemented inventions

• Software (source or object code) is protected by © • Inventions dependent upon software may be patented • Novel and inventive features must reside in the technical aspects of the invention, e.g.: • external effects (controlling a robot arm) • internal effects (data compression for better speed) • A new storyline or scenario for a computer game, implemented through entirely conventional hardware and software, would not be patentable. http://www.epo.org/topics/issues/computer-implemented-inventions/software.html https://e-learning.epo.org/  Public modules  European Patent System  CII

www.ebn.eu Use of Patents in business

Patent rights allow a business to: • Generate a price premium on products • Add revenue streams through licensing or sale of IP rights • Add to marketing credibility • Attract or retain investors / partners • Gain time to further develop technology • Prevent others from using your inventions without permission • Potentially prevent competitors from entering your market space

www.ebn.eu Patent requirements

A patentable invention must be:

1. Novel/New (not already been disclosed to the public) public)

2. Contain an inventive step

3. Useful (e.g. capable of industrial application)

www.ebn.eu What is a Patent Priority Right

A priority right refers to the point in time in which a patent…

• is looked at for the purposes of prior art

• is viewed for purposes of establishing the patent applications initial filing date

www.ebn.eu Importance of Patent Priority Rights

Priority right implications: • all rights tied to that application start from the date the priority the priority rights were established.

• you must file additional applications in other countries within 1 year from establishment of the priority right.

*this 1 year priority applies to countries that are party to the Paris Convention for the Protection of Industrial Property.

www.ebn.eu Patent Priority Rights: Exercise

• Companies X, Y, and Z all produce products involving elements a, b & c. Each of them have applied for patents rights for their respective products. The question is, if the patents are granted, what prohibitive rights may affect each company? • Scenario 1: Assume Company X applied for IP rights before Company Y • Scenario 2: Assume Company Y applied for IP rights before Company X

+ c

a + b a + b b + c

Company X Company Y Company Z

www.ebn.eu How to apply for a Patent

Patent applications can be filed in various jurisdictions including:

• Nationally (single country)

• Internationally (multiple non-related countries e.g. US & JP)

• Regional patent system (Multiple countries in a geographic region e.g. Europe, region e.g. Europe, Middle East)

The patent application process is complex an attorney or patent agent can help you through the process

www.ebn.eu Sections of a Patent

Front page of a patent

• Patent number • Classification Code • Potential countries • Filing date • Priority date • Owner • Inventors • Title • Abstract Description, claims, & drawings (if any) are on the following pages of the patent The patent application process simplified (1 of 2)

Application

Examination for classified material Application Formal refused examination Storage

Search and Application examination Decision approved

Publication A Publication B

Further Opposition Expiration examination after max. 20 years The patent application process simplified (2 of 2)

Optional Step: Filings Patent due for PCT/EP/More Refusal Countries Priority Year - file additional applications Appeal 2 months Refusal

0 6 12 18 Months from filing Opposition 9 months Further procedures Search and 1st examination Patent Adm. Re-examination

File Publication Application

www.ebn.eu Participants in the Patent Application Process

Step 1 & Step 4 can be done also by inventor him/herself

Step 1: Composition of application

Step 2: File application Step 4a: Reconstruction of application Inventor Attorney Patent Office

Step 4: 1. Decision Step 3: 1. Examination

Step 6: Final Decision Step 5: Further examination

Step. 7: Publication & storage

www.ebn.eu Content

www.ebn.eu Utility Model – not quite a patent

The Utility Model: • Is an exclusive right • Grants protection for 5 to 10 years • Covers products not methods/processes/liquids • Protects minor inventions • Can be converted to a patent application

A product … The assembling of … Model #: DE202008015732U1 Invention: Fitting for fixing lightweight plate to e.g. wall Assignee: Hettich Beinze GMBH & CO Application Year: 2008

can be cannot be protected protected

www.ebn.eu Requirements to get a Utility Model

• Requirements for a Utility Model are similar to a patent: • It must be new/novel • It must involve an inventive step (in some countries this standard may be lower or not necessary, e.g. Turkey, Thailand) • It solve a technical problem

• In contrast to a patent, in some countries the novelty requirement to obtain a utility model is "relative" (e.g. Germany, Spain)

www.ebn.eu Utility Model protection

Utility Model protection: • Allows the right holder to prevent others from commercially using the protected invention • May also be sold or licensed • Granted within a few months • May be granted without examination (e.g. in Germany) • Fees for application and maintenance are cheaper than patents

www.ebn.eu Possible consequences – "relative" novelty requirement

Assume that a certain canvas chair is used at a hotel pool in Croatia. The chair is not described in public prints, especially not in Germany or Spain.

Utility models may be granted for the same canvas chair in Germany and Spain.

www.ebn.eu Application Process for a Utility Model

The filing process is similar to a patent application:

• Utility model application is filed at the national patent office • Can be filed using a PCT application • Have up to 12 months from filing nationally to file in other jurisdictions • Can file in multiple jurisdictions using PCT or at individual patent offices

www.ebn.eu Where are Utility Models Available

Countries and regions providing utility model protection are:

Albania Bolivia France * Georgia Kuwait Russian Federation Slovakia Angola Argentina Bulgaria Germany Greece Kyrgyzstan Spain ARIPO Armenia Chile Guatemala Laos Taiwan Aruba Australia China Honduras Malaysia Tajikistan Austria AzerbaijanColombia Costa Rica Hungary Mexico Trinidad & Tobago Turkey Belarus Czech Republic Indonesia Ireland OAPI Ukraine Belize Denmark Ecuador Italy Peru Uruguay Brazil Estonia Japan Philippines Uzbekistan Ethiopia Kazakhstan Poland Finland Portugal Republic of Korea Republic of Moldova

Source: http://www.wipo.int/sme/en/ip_business/utility_models/where.htm

www.ebn.eu Using the utility model in business

Use the utility model in business as a strategic weapon:

• Protect minor inventions excluded from patent protection • Protect inventions where a shorter protection period is required (e.g. not bet the company inventions) • Reduce wait times - get protection more quickly than if patenting • Turn the Utility model application into a patent application if stronger protection is stronger protection is needed • Especially useful for industries where technology/fashion trend obsolescence is <20 years

www.ebn.eu Front Page of a Utility Model

It looks like a patent. The U in the publication number marks the utility model

U as - utility - utilité - utilidad - utilità

www.ebn.eu Content

www.ebn.eu What are Designs

"The outward appearance of a product or part of it which results from lines, contours, colour, shape, texture, materials and/or its ornamentation" (OHIM)

• Refers to the ornamental or aesthetic aspects of a product

• Design makes a product attractive and appealing to customers and may even be its unique selling point

www.ebn.eu What can be protected with a Design

Registered design protects:

• Shapes or configurations (3-D) and/or patterns or ornamentations (2-D)

• Lines, contours, colours, shape or texture => the "appearance“

Does not protect: • the product itself • the technical function of the product • the capacity of a sign to be distinctive

www.ebn.eu Requirements for obtaining exclusive rights on design

• Novelty

• Individual character (give an appearance of originality)

www.ebn.eu Registered Designs Example - Suitcase

000463500-0001 Samsonite IP Holdings Filed and registered on 16 January 2006 Published on 4 April 2006

www.ebn.eu Registered Designs Example - Football

000468657-0001 Barilla G. e R. Fratelli Filed, registered 16 January 2006 Published on 7 March 2006

www.ebn.eu Registered vs. Unregistered Designs

Registered Unregistered

• Exclusive rights for the look and • May receive limited protection through appearance of your product unregistered design right or copyright

• May stop copying irrespective of whether • Doesn’t grant the ability to stop others if they came up with the design from producing similar articles generated independently through independent creation

• Can sell or license

www.ebn.eu Design Filing Options

1. National system: • National Office: provide with national protection 2. Registered Community Designs: • OHIM: provide with protection in 27 member states 3. International system: • The Hague agreement: provide with protection in the agreement

www.ebn.eu 1. National System

• Applicant can apply at each national country office in which protection is desired

• Easy to do if filing in one or two countries Can become expensive if filing in multiple countries due to: • Filing fees • Duplication of efforts / Inefficiency • Filing in multiple languages • Multiple legal rules, agents and administrative burdens • Different pricing, different deadlines

• If filing in multiple countries, the applicant may want to consider filing for a community trademark or use the international application

www.ebn.eu 2. Registered Community Designs Deposit

• Single application for a unitary design protection covering the 27 Member States of the European Union

• Deposit in the

www.ebn.eu 2. Registered Community Designs

• Single application for a unitary design protection covering the 27 Member States of the European Union

• Term of 5 years renewable in 5 year blocks up to 25 years

• Procedure fast, user-friendly and cost effective: -one application in any of the official EU languages -one set of fees in one currency -one set of procedures in one office -on-line application possible

• The more designs that you register, the cheaper it is – if you do it in a multiple

www.ebn.eu 3. International Filing

• File at national office or to the international bureau of WIPO • Filing can be done electronically or via paper • Advantages - International Filing • One application • One language • One set of fees in one currency (Swiss Francs) • Same effect as if the design had been registered directly with each national office, unless protection is refused by the national office of that country

www.ebn.eu Design registered in the EU

000000013-0001 Casio Computer Company Filed, registered and published on 01/04/2003

www.ebn.eu Design registered in the EU

000000021-0001 DaimlerChrysler AG Filed, registered and published on 01/04/2003

www.ebn.eu Case Study – Denmark (1 of 3)

• Registered design A

• Design B

www.ebn.eu Case Study – Denmark (2 of 3)

Similarities:

• Both designs consist of a round saucer, with an hole in the middle

Dissimilarities:

• The two holes in the designs are not the same size

• The curves of the saucers are dissimilar

www.ebn.eu Case Study– Denmark (2 of 3)

The Decision:

• The Danish Patent and Trademark Office did not find the two designs to be similar and granted the registration

• However the holder of design A brought the decision before the Danish Board of Appeal. They found the two designs to be similar, due to the hole in the middle and the curves of the two saucers

• Because the designs did not differentiate substantially from each other, the registration of design B was cancelled

www.ebn.eu Case Study: Procter & Gamble v. Reckitt Benckiser (1 of 3)

Registered design A - Procter & Design B – Gamble Reckitt Benckiser

www.ebn.eu Case Study: Procter & Gamble v. Reckitt Benckiser (2 of 3)

Similarities: Both designs consist of a cylindrical sprayer with a nozzle and trigger

Dissimilarities: The design of the aesthetic top portion has a different look between the two canisters

Conflict: P&G’s design was first to be protected and commercialised, then they sued Reckitt Benckiser when their version was made public

How do you think the court will decide?

www.ebn.eu Case Study: Procter & Gamble v. Reckitt Benckiser (3 of 3)

The Decision:

• UK lower court found Reckitt infringed P&G’s design

• Reckitt appealed. Appeals court overturned the decision and found no infringement stating:

The “impression that would be given to the informed [user of the Reckitt product] was different from that of the registered design. The similarities between the two designs were at too general a level for one fairly to say that they would produce on the informed user the same overall impression. On the contrary that user would get a different overall impression”

www.ebn.eu Content

www.ebn.eu What is a Trademark

A trade mark is a sign, or a combination of signs, which distinguishes the goods or services of one enterprise from those of from those of another.

May be registered ® or unregistered TM

Helps consumers to recognise and decide on goods and services based on their reputation and quality

Term: up to 10 years, renewable for 10 years for life of trademark

www.ebn.eu Trademark examples: innumerable!

What trademark examples can you think of?

www.ebn.eu Why Trademarks Are Important

• Trademarks strengthen brand recognition • Trademarks prevent others from: • copying • imitating • misapropriating • forging • misrepresenting • or otherwise free-riding on brand loyalty or perception of a product or company • Trademarks generate revenue (by licensing)

www.ebn.eu Trademarks and Brand Recognition

Brand Recognition: "A brand is a collection of perceptions in the mind of the consumer"

www.ebn.eu Types of Trademarks (1 of 3)

A word A Word A logo associated with a logo Adidas

Nescafé

www.ebn.eu Types of Trademarks (2 of 3)

A numeral or A shape A slogan letter “Made from the best stuff on earth"

www.ebn.eu Types of Trademarks (3 of 3)

Other and "new" kinds Well-known trademark Related area mark of trademarks - special treatment Colours or combinations (colour mark)

Certification mark Geographical Indication (GI)

Collective mark Protected Designation of Sound mark Origin Movement mark (PDO)

www.ebn.eu Trademark Classifications

• Trademarks must indicate the class of goods or services they are used for – this is called the trademark classification system

• This system allows for the same name to be used for different, unrelated goods

For example: the brand Apple can be used for by two different companies one of which sells computers and the other provides trucking services

www.ebn.eu Trademark Requirements

• Graphic representation • Distinctive (unique) • Not descriptive • Not similar or identical

www.ebn.eu Trademark Distinctiveness Scale (1 of 2)

The more distinctive the mark, the higher the likelihood of it being granted as a trademark

Not Highly Distinctive Distinctive

Fanciful/ Generic Descriptive Suggestive Arbitrary Not Granted Granted

www.ebn.eu Trademark Distinctiveness Scale (2 of 2)

Examples

•PLAYBOY for a •AMAZON and YAHOO! •PERSONAL •COMPUTERLAND men's magazine For Internet sites COMPUTER for a for a computer store •7-11 for a store that •GREY GOOSE for vodka personal computer •VISION CENTER for was open from 7 •STARBUCKS for coffee •MILK for milk an optics store. a.m. to 11 p.m. Not Highly Distinctive Distinctive

Fanciful/ Generic Descriptive Suggestive Arbitrary

www.ebn.eu Trademark Distinctiveness: Exercise

Is it likely that these names will be given trademark status? • Sure-shot for a rifle

• Moose for clothing line

• Banana Trucking

• “The Biter” for chainsaw

www.ebn.eu Trademark Distinctiveness: Exercise Results

Is it likely that these names will be given trademark status?

• Sure-shot for a rifle X • Moose for clothing line  • Banana Trucking 

• “The Biter” for chainsaw X

www.ebn.eu Trademark Distinctiveness: Let’s try again!

• Half Price for clothes

• Jaguar for cars

• Tetley for tea bags

• Handy for portable phone

www.ebn.eu Trademark Distinctiveness: Exercise Results -second try

• Half Price for clothes X

• Jaguar for cars  • Tetley for tea bags 

• Handy for portable phone X

www.ebn.eu Similar/Identical Trademarks (1 of 2)

If two Their Goods/Services trademarks… are… must not be Similar or similar nor Identical identical can be Different similar or identical

Note: well-known marks have a broader scope of protection

www.ebn.eu Similar/Identical Trademarks (2 of 2)

• Written Cool / Kool

• Looks

• Sounding Basket/Buskit For You/ 4 U • Conceptual Star / Stern

www.ebn.eu Similar/Identical Trademarks - Exercise

Are these trademarks similar?

1. Lamictal / Lamisil

2. Note: Toyota Geely 3. Microsoft / MikeRoweSoft

www.ebn.eu Similar/Identical Trademarks - Exercise

Are these trademarks similar?

1. Lamictal / Lamisil NO

2. NO

Note: Toyota Geely 3. Microsoft / MikeRoweSoft YES

www.ebn.eu Similar/Identical Trademarks - Exercise

Are these trademarks similar?

Note: Unilever Swiat Zdrowia Drugs 5.

www.ebn.eu Similar/Identical Trademarks - Exercise

Are these trademarks similar?

4. NO

Note: Unilever Swiat Zdrowia

5. ?

Not to risk, new logo

www.ebn.eu Similar/Identical Trademarks - Case Study

ROGIER VS ROCHER

• Both trademarks are registered for confectionery and chocolate (class 30)

• The marks have the first syllable in common ”RO”. The syllables ”GIER” and ”CHER” pronounced the same way (they are phonetically similar)

• ROCHER is the French word for rock, mountain, cake or pastry, but since the would not know the meaning of the word ROCHER, the conceptual meaning was major importance in the judgment of the likelihood of confusion

• The marks are judged confusingly similar

www.ebn.eu An example of plagiarism: Starbucks logo

www.ebn.eu Businesses should strive for a strong trademark

Strong marks are those that are highly distinctive (e.g. Fanciful/Arbitrary)

• Strong Trademarks give wider protection • Strong Trademarks ensure strong identity to your good or service

Weak marks are those that are less distinctive (e.g. Descriptive to Suggestive)

Not Highly Distinctive Distinctive

Generic Descriptive Suggestive Fanciful/Arbitrary Trademark Weak Strength Strong

www.ebn.eu Strong/Weak Trademarks Exercise

Number the trademarks from strongest to weakest

www.ebn.eu Strong/Weak Trademarks Exercise

Number the trademarks from strongest to weakest

5 4 6

2 1 3

www.ebn.eu Classification system how it works, what to do

• Like a library system

• 45 classes

• Protection covers only the goods and services included in the registration

• Make a relevant list of goods and services

• Think 5 years ahead

first 5 years no requirement of use - you can register later the same brand for other goods/services within 5 years – that’s strategy!

www.ebn.eu How to register a Trademark

1. National system: • National trademark Office: provide with national protection 2. EU system: • OHIM: provide with protection in 27 Member States 3. International system: (need to register first via national office or in the OHIM) • Madrid Protocol: provide with protection in the member signed up to the Protocol

www.ebn.eu Consider which filing option is best

Some questions to consider before deciding:

1. Where is your market today? • One or two countries in the EU? Many countries in the EU? The entire EU? The EU plus?

2. Where will your market be in 5 or 10 years from now? • Will you need to extend the geographical scope of protection? 3. What is the cost of the different options and how long time does it take to register?

www.ebn.eu 1. The National Stage

• Applicant can apply at each national country office in which protection is desired

• Easy to do if filing in one or two countries

• Becomes very expensive if filing in multiple countries due to: • Filing fees • Inefficient / Duplication of efforts • Filing in multiple languages • Multiple legal rules, agents and administrative burdens • Different pricing, different deadlines

If filing in multiple countries, the applicant may want to consider filing for a community trademark or using the international application

www.ebn.eu 2. European Union System Community Trade Mark (CTM)

• The Community Trade Mark (CTM) was created in order to offer simple, fast and cost effective trade mark protection for companies operating in the internal market of the European Union.

• Centralised system that gives unitary protection in all of the 27 Member States of the Member States of the European Union.

• The CTM exists in parallel with the national trade mark protection in the EU, but has the advantages of having:

-one application in any of the official EU languages -one set of fees in one currency (Euro) -one set of procedures in one office -on-line application possible

www.ebn.eu Community Trademark Deposit

• Single application for a unitary design protection covering the 27 Member States of the European Union.

• Deposit in the

www.ebn.eu 2. European Union System Fees

• Filing 900 euro / e-filing 750 euro (for 3 classes) 150 euro for each class exceeding 3

• Registration 850 euro (3 classes) 150 euro for each class exceeding 3

• Renewal fee 1500 euro / e-renewal 1350 euro 400 euro for each class exceeding 3

www.ebn.eu 3. International System

• An international application can only be filed if the mark has already been applied for at a national trademark office (referred to as the office of origin) or as a CTM

• The applicant must have a connection with the contracting party

• An international application must be presented to the international bureau (WIPO) through the office of origin

• Advantage when compared to national filings: it allows for one application to be used to protect trademarks in several countries • Simpler • More efficient • More cost effective

www.ebn.eu 3. International System the Application

4. Appointment of Representative 11. 5. Basic Designed Registration States 6. Priority

7. The Mark

12. Signature

www.ebn.eu Picasso/Picaro Case Study

• Background • The Picasso family had licensed their name to Citroen for use in Peugeot Citroen for Xsara Picasso car • In 1998 DaimlerChrysler's used the term “Picaro” for a new car line • Picasso sued DaimlerChrysler claiming that Picasso and Picaro are similar and confusing • Dispute • Both trademarks are registered for vehicles and vehicle parts and omnibuses (class 12) • Both are similar sounding

How do you think the court will decide?

www.ebn.eu Picasso/Picaro Case Study

Court Decision:

• The court found that the name “Picasso” was well established in the minds of consumers as a painter but not for vehicles

• Despite the phonetic and visual similarities between the two brand names, there was no risk of confusion

• Therefore, the court decided that the names are not confusingly similar

www.ebn.eu Designs and Trademarks (1 of 2)

How do you think designs and trademarks interact in business?

• Can they exist in the same product?

• Is there a reason for staggering the timing of their filing?

www.ebn.eu Designs and Trademarks (2 of 2)

• Designs and Trademarks can co-exist on the same product

• Provides for multiple grounds of protection – stronger protection/more grounds for suing in case of infringement

Example: this mobile phone was protected by a registered design by Nokia design by Nokia (and in 2004 they sued France's Sagem over the Handset Design). It may be eligible for trademark protection as well

www.ebn.eu Content

www.ebn.eu Protected Designation of Origins (PDO) and Geographical Indications (GI)

Used to indicate the origin of goods

• Protected Designation of Origin (PDO): entire product must be must be traditionally and entirely manufactured (prepared, processed and produced) within the specific region and thus acquire unique properties.

• Geographical Indication (GI): entire product must be traditionally and traditionally and at least partially manufactured (prepared, processed or produced) within the specific region and thus acquire unique properties

www.ebn.eu Examples of PDOs and GIs

PDOs GIs

Soppressata Darjeeling tea

Parmigiano Lübeck Marzipan Reggiano

www.ebn.eu What PDOs and GIs Protect

• PDOs and GIs are used to • Signal origin and quality to a consumer • Convey strictly controlled production stages • Differentiate products and attract purchases

• Goods that do not fit the PDO or GI requirements are not allowed to designate their goods as being sourced from that region region

e.g. sparkling wine from Italy or California cannot be called Champagne

www.ebn.eu Content

www.ebn.eu What are Supplementary Protection Certificates

A supplementary protection certificate (SPC) is:

• An extension of a patent under a specific, different, set of right for up to 5 years

• Available for medicinal products

• Introduced to compensate for the long time needed to obtain regulatory approval of these products

www.ebn.eu What Supplementary Protection Certificates Protect

SPCs extend rights for products that are coming off patent provided they are either: Plant Varieties • Varieties of all botanical genera and species, including, inter genera or species or Medicinal and Plant Products • the “active ingredient”, or combination of active ingredients, of product”; or • the “active substance”, or combination of active substances, of protection product”

www.ebn.eu How to get Supplementary Protection Certificates

• All countries in the EU must provide supplementary protection certificates

• No unified cross-recognition exists between countries

• Applications must be filed individually at each national protection is sought

www.ebn.eu Content

www.ebn.eu What is a Domain name

• A Domain name is a tool that helps users navigate around the internet. • It converts an internet protocol address (e.g. 192.0.34.65) into something more simple (i.e. a domain name) and user friendly For example: www.epo.org, www.wipo.int, www.ohim.eu

Why do you need a Domain name

• Registering a domain name prevents others from taking that domain name (usually associated with your company name or product name) and using it to redirect internet users to their site

www.ebn.eu How to Register Domain Names

• Domain names can be obtained through a registrar (e.g. godaddy.com, eNom.com, tucowsinc.com)

• To register a domain name, that name has to be available • You can search available domain names through the registrar

• Can register for up to ten years at a time, renewable

www.ebn.eu How are Domain names used in business

• Registration of a domain name does not confer to its owner any trade mark rights • Make sure that you consider registering domain names for the name of your company as well as the names of your trademarked products

Companies routinely register domain names not only for the company name but also for product brands, e.g. Unilever owns: unilever.com, becel.com, lipton.com, etc.

www.ebn.eu Comparison of Domain Names and Trademarks

Trademarks Domain Names

• Human-friendly form of internet • Can include trademarks (brand names, slogans) that address are text based • First come, first served • Domain names can be trademarked • World wide • Protection of the identifier of a good or service • Not relevant • Priority application date • In principle no examination • Territorial scope • Division into classes of goods and services • Examination and opposition

www.ebn.eu Content

www.ebn.eu IP in Business

Businesses use IP to…

• Find partnerships/joint ventures • License out rights to gain revenue streams • Establish a competitive advantage in the marketplace • Prevent knockoffs or imitators • Invent-in-front of competitors

Question you have to ask yourself: What role does IP currently play in my business? How could I use it in the future?

www.ebn.eu What is Your IP Environment?

It is important to understand:

IP Strategy

• How should we use IP? • What types of IP fit with our culture? IP Research • Do we have a plan for enforcing our IP? • Is there IP in our industry? • Do our competitors use IP and how?

www.ebn.eu IP Research (1 of 2)

• IP information is an invaluable source of research information; much of what appears in IP related literature does not appear in academic and technical journals • Data is publicly available (e.g. http://ep.espacenet.com/)

• Most of what is published in patents is not protected, and is therefore free to use

• IP information is also a source of commercial information, leading to customers, suppliers and new partners, as well as warning about developments by rivals and changes in the market

• Exploiting IP information is quite separate from owning, licensing and enforcing IP

www.ebn.eu The esp@cenet database has over 65 million documents!

http://www.epo.org/patents/patent-information/free/espacenet.html

www.ebn.eu Design and trademark searching is easy via OHIM!

http://oami.europa.eu/RCDOnline/RequestManager

www.ebn.eu IP Research (2 of 2)

• IP research can help you understand how IP is used in your industry • Note: You can have market competitors and IP competitors. For instance, one of your competitors may have no IP but a company in a different industry could be filing for patents in your space

• Therefore IP research should take multiple angles… • Search around your known competitors (are they IP savvy?) • Search in your industry (find new IP competitors) • Search around your own IP (find potential partners or infringers)

www.ebn.eu IP Research Serves Multiple Functions

You Others

Understand Find where others are Opportunity going, Find opportunities available prior art

Know what Prevent or others have Risk mitigate risks protected

www.ebn.eu Advanced IP Research

IP research can also be used for more advanced competitive intelligence, such as:

• Finding and/or researching potential partners or complementary brands brands • Reverse engineering competitors’ IP strategy from their IP activities • Monitoring the activity of key competitors (Predict competitor moves, e.g. companies moves, e.g. companies typically secure a brand name, domain name, etc. before a product is launched) • Developing a new product or service • Preparing to enter a new market or geography • Researching potential employees (an innovative technical person may have patents or other IP)

www.ebn.eu How an IP Strategy looks like...

www.ebn.eu What is an IP Strategy

An IP strategy…

• Starts with the business goals and business issues • Decides how you plan to use IP to support your business goals • Reflects your own IP position and also the ones of your competitors • Identifies IP gaps and strengths for you and your competitors • Drives how you extract/seek potential IP, how you will evaluate it and what type of protection you will seek once you get it • Determines how you will monitor and enforce your IP • Is supported by internal IP processes

www.ebn.eu Why a strong IP Strategy is important

• Allows businesses to use IP in a systematic and uniform fashion

• Helps to prioritise resources, including time & money

• Can lower risk

• IP can be leveraged – to find partners, get better terms in a deal, out license for revenue, etc.

www.ebn.eu What makes a strong IP Strategy

• Aligning it with your business strategy • Using multiple forms of IP • Keeping it current (periodic updates and revisiting it under circumstances) • Executing it! It is a plan to be carried out, not a report to file away • Ensure that owners and deadlines are assigned • Communicating the strategy throughout the company • “This is why we have a trademark and here is how to use it” • Getting advice where/when it is needed

www.ebn.eu Strategy Point: When is IP needed? (1 of 2)

Do you need IP? • Are there innovations or company assets that need protecting? • Are they worth spending time and money protecting? For example: - Customer lists – Yes; - The name of your key product – Yes; - A new invention that will likely not generate any revenue or is only peripherally related to our business– No/Maybe

www.ebn.eu Strategy Point: When is IP needed? (2 of 2)

• What is the best form of IP protection for you?

• Will you enforce the IP that you own? o If it’s core to your business then – yes! o If not – then reconsider protection

www.ebn.eu Strategy point: Motivations / Assumptions

• What is the purpose behind obtaining IP? Is it to protect a core product? Send a signal to the marketplace about your research strength? Initiate a new brand launch? E.g. how does obtaining IP fit into your business objectives?

• Once answered why you want IP then you can answer what IP type(s) will be to achieve your goals.

• Be realistic in valuing your IP although IP is a large part of a company’s valuation, sometimes companies feel it’s worth more than it actually is. Figure out how much your IP is contributing to your bottom line in an objective fashion (and if necessary obtain an outside opinion)

www.ebn.eu Strategy point: Commercialisation through Licensing

• IP can be licensed in someone else might have invented the solution you need, saving you the effort

• IP can be licensed out use this to build partnerships. Licensees might have access to bigger markets (especially if your invention is a component in a larger product) • What sort of license? • Exclusive (not even the patent owner may use) • Sole (the patent owner may also still use) • Non-exclusive (multiple licensees) • Compulsory (license of right)

www.ebn.eu Strategy point: Enforcement

• Litigation is very expensive – find alternatives • Be absolutely sure of the strength of your case – although as we’ve seen previously some cases are too close to call • Mediation and arbitration are confidential processes, and can lead to customised solutions • Sell licenses, even at reduced prices; offer complementary complementary know-how

www.ebn.eu An example of executing on an IP Strategy

• Having IP can help to create opportunities, for example the pharma industry commonly out licenses IP to reach additional markets

• Amphocil® is an antifungal product owned by Three Rivers Pharmaceutical LLC (Pennsylvania, USA). In 2007 SpecialtyPatents European Pharma Ltd (SEP),Utility London, Models UK, announcedGI that it has obtained distribution rights to Amphocil® for Germany, France and Italy. At the same time other distributers hold rights to distribute the drug in Sweden, Austria and Portugal.

• In this case the license allowed for the drug to be manufactured, distributed and marketed with using the same formulation, labeling, brand name, bottle design, etc.

www.ebn.eu How to develop an IP Strategy: Outline

1. Review your current business goals 2. Review your current IP portfolio 3. Determine which, if any, types of IP protection will help reach current business goals 4. Review competitor IP and their IP strategies 5. Determine where there is a gap in your IP protection that you need to fill or gap in your competitors’ IP that you can exploit 6. Extract and capture IP that already exists within your company 7. Review potential IP to see if it meets your business needs • If so, consider appropriate type of IP and filing for protection • If not, consider creating IP that does or acquiring external IP 8. Implement internal processes that allow for steps 1 – 7 to be repeated as needed

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www.ebn.eu Case Study: Walkydog v. K-9 Bike Jogger

• Bice (Italy) markets its “Walkydog” • Camon acquires Bice and terminates product (dog leash attachment device for Intelli-Pet’s distribution rights use with a bicycle) over the Internet via • Intelli-Pet starts selling a similar device walkydog.com (registered 11Sep02) branded “K-9 Bike Jogger” using the domain name walkydogusa.com

• Camon applies for registration of the trademark Walkydog at the USPTO, which is granted in Oct09 • Camon accuses Intelli-Pet of • Intelli-Pet becomes Bice’s US distributor infringement of the Walkydog trademark, for Walkydog and registers but Intelli-Pet continues to use the walkydogusa.com on 27Oct03 domain name walkydogusa.com

2002 2003 2004 2005 2006 2007 2008 2009 2010

www.ebn.eu Case Study: Walkydog v. K-9 Bike Jogger

The Suit • Camon sued Intelli-Pet alleging: • The domain names are identical or similar • Intelli-Pet has no rights or legitimate respect of the domain name • Intelli-Pet is using the domain name in How do you think the court will rule?

www.ebn.eu Case Study: Walkydog v. K-9 Bike Jogger

Decision • The court found that: • The domain names were similar; • Intelli-Pet had no rights or legitimate in the domain name; however • Bad faith requires both bad faith and bad faith use • Because Intelli-Pet did not register name in bad faith, Intelli-Pet won

www.ebn.eu Content

www.ebn.eu Summary

• IP helps your business to create opportunities and mitigate risks • Different forms of IP protection cover different intellectual intellectual assets, allowing comprehensive IP coverage • An IP strategy should support your business goals and be executable

www.ebn.eu Next suggested Steps...

Suggestions for bringing this information back to your organization and implementing what you’ve learned…

1. Raise IP awareness in all business functions through training and developing 2. Determine where you need/want advice from an attorney 3. Make sure you capture and document potential IP within your company so protect it 4. Encourage creativity and invention – consider a recognition or rewards program for creators of valuable IP 5. Develop a basic IP strategy to support your business objectives 6. Identify opportunities to leverage your IP (e.g. in deals, product labeling) 7. Monitor and enforce any IP that you do have

www.ebn.eu Resources

• www.epo.org (European Patent Office) • EPO SME Case studies http://www.epo.org/focus/innovation-and-economy/sme-case-studies.html • http://oami.europa.eu/ (OHIM) • http://www.wipo.int/portal/index.html.en (WIPO) • WIPO SME Portal http://www.wipo.int/sme/en/index.jsp • http://arbiter.wipo.int/domains/index.html (WIPO Domain Name Dispute Resolution Service) • http://www.ipr-helpdesk.org/index.html (IPR Helpdesk) • http://ec.europa.eu/agriculture/foodqual/quali1_en.htm (European Commission - Agriculture and Food) • http://oami.europa.eu/ows/rw/pages/ohim/multimedia/SME/smesinaction.en.do - (OHIM SME specific)

www.ebn.eu The Disclaimer

This training material concerns intellectual property and business strategies only in general terms.

This training material should not be relied upon when taking specific business or legal decisions. Rather, professional advice should be obtained which suits the circumstances in question.

www.ebn.eu Thanks for your attention now comments, suggestions, remarks…