Marta Duque Lizarralde

Unit V: European Intellectual Property Law

1. Basic Principles
1.1. Rationale for protection

Intellectual Property (IP) has been described as the world´s sixth largest asset class, and
a critical source of innovation financing. There are different theories that justify its
existence:

 Deontological: IP protection is justified by the need to protect the fruits of

human labour.
 Utilitarian: IP protection is justified as an incentive for the progress of science
and culture. Without protection, inventors and creators would make initial
investments but competitors would be able to operate without incurring these
costs.

Their exclusive nature renders IP rights in contradiction with some of the fundamental
objectives of Art. 101 and 102 TFEU:

 On the one hand, IP rights, by their very nature, harm competition.

 On the other hand, IP must be allowed to be restricted so that they do not lose
their value. Therefore, a balance must be struck between the benefits of IP and
the maintenance of competition.

1.2. IP rights dimension

1.2.1. Domestic

IP rights are territorial in nature, i.e., they are conferred under national laws, their
effects are limited to the territory of the state that confers them, and they are enforceable
by a court with jurisdiction over the laws of that state.

1.2.2. International

At the international level, States have developed various strategies to address the
problems created by the domestic territoriality of IP. The first step taken in the 19th
century was the signing of Bilateral Agreements concerning the mutual recognition of
domestic IP law. However, this was insufficient, so in the 1880s two major conventions
were adopted to establish general rules of legal protection within a wider community:

 The Paris Convention for the Protection of Industrial Property, 1883;

<https://wipolex.wipo.int/en/text/287556>
 The Berne Convention for the Protection of Literary and Artistic Property, 1886.
<https://wipolex.wipo.int/en/text/283693>

They are still the foundational instruments of IP worldwide, and are the basis of
European IP laws. The two most important principles are:

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 National treatment: each State is obliged to grant the nationals of another State
the same treatment that it grants to its own nationals under its national law.
 Minimum standards of IP protection: guarantees a basis for the recognition and
protection of IP rights that is not ensured by the national treatment requirement
itself.

They have been supplemented by additional conventions:

 WIPO:
o Madrid Agreement 1891;<https://wipolex.wipo.int/en/text/283529>
o Rome Convention 196;1<https://wipolex.wipo.int/en/text/289795>
o Trademarks Law Treaty 1994; <https://wipolex.wipo.int/en/text/294357
o Copyright Treaty 1996; <https://wipolex.wipo.int/en/text/295166>
o Performance and Phonograms Treaty 1996;
<https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?
uri=CELEX:22000A0411(02)>
o Patent Law Treaty 2000. <https://wipolex.wipo.int/en/text/288773>

 WTO and UN Conventions:

o TRIPS 1994: it includes the “most favoured national” principle (Arts. 3
and 4), according to which a state that grants benefits to nationals of
another state must immediately and unconditionally extend the same
benefits to nationals of all other member states, even if the treatment is
more favourable than that which the granting state grants to its own
nationals; <https://www.wto.org/english/docs_e/legal_e/27-trips.pdf>
o United Nations Educational, Scientific and Cultural Organization
Copyright Convention 1952;
<http://www.tauvisual.com/copyrightlaws/convenzione_internazionale_c
opyright_ginevra1952.pdf>
o International Treaty on Plant Genetic Resources for Food and
Agriculture 2001; <https://www.fao.org/3/i0510e/i0510e.pdf>
o Convention on Biological Diversity 1992.
<https://www.cbd.int/doc/legal/cbd-en.pdf>

1.2.3. European

The territoriality of national IP rights created a problem for the objectives of the
European Communities, as they included the right to restrict the free movement of IP
protected goods and services between Member States.

An important notion is that of the doctrine of exhaustion. This doctrine confirms that the
free movement rules prevent the use of national IP rights to prohibit or restrict the
movement from ECC Member State A to B of any product that has been put into
circulation with the consent of the IP right holder, regardless of whether the product is
protected by IP under the laws of the Member State. The only situations in which the
doctrine would not apply would be where the articles in question were first placed on
the market outside the Community or without the consent of the IP right holder.

2. Patents

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The European Patent Convention (EPC)

<https://documents.epo.org/projects/babylon/eponet.nsf/0/53A0FE62C259803BC1
2586A90058BCAD/$File/EPC_17th_edition_2020_en.pdf>

2.1. Notion of Patents

Patents are contracts between the State and the inventor or other patent applicants. The
inventor discloses and makes his invention available to the public in exchange for the
public´s agreement not to perform it for a limited period of time without his
authorisation. After that period, the public can freely use the invention.

2.2. Requirements

According to the European Patent Convention (EPC), European patents shall be granted
for any inventions, in all fields of technology, provided that they are new, involve an
inventive step and are susceptible of industrial application.

 Novelty: An invention is new as long as it is not anticipated by the state of the

art.
The test applied by patent offices to determine the novelty of an invention is
whether the prior art discloses the invention sufficiently to enable a skilled
person to perform it. The state of the art comprises everything that has been
made available to the public anywhere in the world, by any means, before the
date of the patent application filing; as well as all that is contained in any patent
application published on or after that date, but filed before it. If the applicant
filed a patent application claiming the same invention in a State member of the
Paris Convention 12 months or less before the European filing date, according to
the principle of priority the foreign filing date should be taken into account for
assessing the novelty. In the novelty evaluation, prior art references may not be
combined, but rather the anticipation depends on the existence of a single source
that makes the claimed invention as a whole available to the public.
However, a disclosure of the invention shall not be taken into consideration if it
occurred no earlier than six months preceding the filing of the European patent
application and if it was due to, or in consequence of:
o an evident abuse in relation to the applicant or his legal predecessor; or
o the fact that the applicant or his legal predecessor has displayed the
invention at an official, or officially recognised, international exhibition
falling within the terms of the Convention on international exhibitions
signed at Paris on 22 November 1928 and last revised on 30 November
1972.

 Inventive step: once the invention is found to be novel, the following step is to
identify whether it, in view of the state of the art, is not obvious to a person
having ordinary skill in the art (PHOSITA). The relation among multiple
sources of prior art may be considered when assessing inventive step. In this
evaluation, the EPO follows a "problem-solution" approach, consisting of three
main steps:
o The determination of the closest prior art, which should be directed to a
similar purpose or effect as the claimed invention, or at least belong to the
same or closely related technical field;

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o The establishment of the "objective technical problem" to be solved;

o The consideration of whether or not the claimed invention, starting from the
closest prior art and the objective technical problem, would have been
obvious to the PHOSITA.

The invention is obvious if it does not go beyond the normal progress of

technology, but follows clearly or logically from the prior art.

The PHOSITA is a practitioner skilled in the relevant field of technology,

possessing average knowledge and ability and aware of what was common
general knowledge in the field at the relevant date.

 Industrial application: an invention shall be considered as susceptible of

industrial application if it can be made or used in any kind of industry, including
agriculture. This concept has been interpreted broadly by the EPO, so the
requirement is satisfied by the disclosure of any concrete benefit in the form of a
practical application and profitable use for the invention, in contrast to a purely
theoretical or speculative one.

The following in particular shall not be regarded as inventions:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts, playing games or doing
business, and programs for computers;

(d) presentations of information.

Nevertheless, the patentability of the subject-matter or activities referred to there are

excluded only to the extent to which a European patent application or European patent
relates to such subject-matter or activities at such. This means that there is a positive
requirement for a technical subject matter, i.e., for deciding whether a subject matter is
patentable, the question is not whether the invention falls within these categories, but
instead whether it has a technical character. For having a technical character, the subject
matter must include at least one technical feature.

In addition, European patents shall not be granted in respect of:

 Inventions the commercial exploitation of which would be contrary to "ordre

public" or morality;
 plant or animal varieties or essentially biological processes for the production of
plants or animals;
 methods for treatment of the human or animal body by surgery or therapy and
diagnostic methods practised on the human or animal body.

2.3. Rights

The scope of the patent protection is determined by the patent claims.

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Art. 64 of the European Patent Convention states that “a European patent shall confer
on its proprietor from the date on which the mention of its grant is published in the
European Patent Bulletin, in each Contracting State in respect of which it is granted,
the same rights as would be conferred by a national patent granted in that State ”, and
that “any infringement of a European patent shall be dealt with by national law”. It also
makes clear that if the subject-matter of the European patent is a process, the protection
conferred by the patent shall extend to the products directly obtained by such process.

Patents confers the right to prevent others from doing certain acts in relation to the
protected invention, cited below, but they do not confer positive rights such as to
commercialize the invention. For this, regulatory approvals are often required.

The patent holder has the right to:

 Prevent the direct use of the invention, i.e., the right to prevent any third party
not having the proprietor's consent from the following:
o making, offering, placing on the market or using a product which is the
subject matter of the patent, or importing or storing the product for those
purposes;
o using a process which is the subject matter of the patent or, where the
third party knows, or should have known, that the use of the process is
prohibited without the consent of the patent proprietor, offering the
process for use within the territory of the Member State in which that
patent has effect;
o offering, placing on the market, using, or importing or storing for those
purposes a product obtained directly by a process which is the subject
matter of the patent.

 Prevent the indirect use of the invention, i.e., the right to prevent any third party
not having the proprietor's consent from supplying or offering to supply, within
the territory of the Member States in which that patent has effect, any person
other than a party entitled to exploit the patented invention. This means, relating
to an essential element of that invention, for putting it into effect therein, when
the third party knows, or should have known, that those means are suitable and
intended for putting that invention into effect.

There are certain acts that fall outside the scope of the patent monopoly, such as:

 Acts done privately and for non-commercial purposes;

 Acts done for experimental purposes relating to the subject matter of the
patented invention;
 The use of biological material for the purpose of breeding, or discovering and
developing other plant varieties;
 The acts allowed pursuant to Article 13(6) of Directive 2001/82/EC1 or Article
10(6) of Directive 2001/83/EC2 in respect of any patent covering the product
within the meaning of either of those Directives;
 The extemporaneous preparation by a pharmacy, for individual cases, of a
medicine in accordance with a medical prescription or acts concerning the
medicine so prepared;

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 The use of the patented invention on board vessels of countries of the

International Union for the Protection of Industrial Property (Paris Union) or
members of the World Trade Organisation, other than those Contracting
Member States in which that patent has effect, in the body of such vessel, in the
machinery, tackle, gear and other accessories, when such vessels temporarily or
accidentally enter the waters of a Contracting Member State in which that patent
has effect, provided that the invention is used there exclusively for the needs of
the vessel;

2.4. Dimension

Registration can be obtained at three different levels:

 National: registration takes place at national IP offices and protection is obtained

only in the territory where the patent is registered.
 Regional: a European patent can be obtained for all the EPC contracting states
(38) by filing a single application, under a single set of fees with the European
Patent Office (EPO) in one of its three official languages (English, French or
German) or in other EPC receiving office. This application allows to obtain a
bundle of national patents. Therefore, the grant should be validated in each
designated State.
 International: under the PCT system that allows users to obtain patent protection
in more than 150 territories by filing a single application in one language and
paying a single set of fees with WIPO or other PCT receiving office. This
application allows also to obtain a bundle of national patents. Therefore, patents
should be granted by the national or regional patent offices.
 Proposal: the Unitary Patent. The application can be filed into one of three
languages: English, German, or French with the EPO, and if granted, the patent
would have legal effect throughout the EU.

Unified Patent Court Agreement

<https://www.unified-patent-court.org/sites/default/files/upc-agreement.pdf>

2.5. Duration

Patent protection is 20 years from the date of filing of the patent application. However,
the patent may lapse earlier if the annual fees are not paid.

Further recommended readings:

 WIPO, Patents <https://www.wipo.int/patents/en/>

 EPO, How to apply for a European patent
<https://www.epo.org/applying/basics.html>
 WIPO, Protecting your Inventions Abroad: Frequently Asked Questions
About the Patent Cooperation Treaty (PCT)
<https://www.wipo.int/export/sites/www/pct/en/basic_facts/faqs_about_the_
pct.pdf>

2.7. Utility models

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Utility models are also referred to as “short-term patents”, “utility innovations” or

“innovation patents”. There is no EU legislation related to the protection of utility
models, so they are regulated at the national level. Nevertheless, the inventive step
requirement is laxer than in patents.

In order to be protectable, they generally need to meet the novelty and inventive step
requirement.

The rightsholder has the exclusive right to prevent others from making, using, offering
for sale, selling or importing a product or a process based on the protected invention,
without the owner’s prior permission.

The term of protection is usually between 7 and 10 years, depending on the country,
without the possibility of extension or renewal.

Further recommended readings:

 European Commission, Utility Models

<https://ec.europa.eu/growth/industry/strategy/intellectual-property/patent-
protection-eu/utility-models_en>
 WIPO, Utility Models
<https://www.wipo.int/patents/en/topics/utility_models.html>

4. Trade Secrets
DIRECTIVE (EU) 2016/943 OF THE EUROPEAN PARLIAMENT AND OF THE
COUNCIL of 8 June 2016 on the protection of undisclosed know-how and business
information (trade secrets) against their unlawful acquisition, use and disclosure
<https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:32016L0943>

3.1. Notion of Trade Secret (TS).

A trade secret can be protected for an unlimited period of time as far as the conditions
for the information to be considered as a trade secret are fulfilled.

‘Trade secret’ means information which meets all of the following requirements:

(a) it is secret in the sense that it is not, as a body or in the precise configuration and
assembly of its components, generally known among or readily accessible to persons
within the circles that normally deal with the kind of information in question;

(b) it has commercial value because it is secret;

(c) it has been subject to reasonable steps under the circumstances, by the person
lawfully in control of the information, to keep it secret;

The Directive has a very wide scope and covers both technical (such as designs and
drawings of software, algorithms, information concerning the manufacturing process,
formulas…) and commercial information (list of suppliers and clients, financial
information, business strategy, distribution channels…).

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Proactive and continuous secrecy measures are needed in order to preserve the
confidential character of the information. Different steps must be defined for the intra-
corporate implementation:

 The potential secret information must be identified, evaluated and categorized;

 Define clear responsibilities for protecting TS within the company;
 Precise protective measures must be adopted, including:
o Physical;
o Organizational;
o Contractual.

Whether the steps taken are reasonable ultimately depends on the individual TS.

3.2. Lawful and unlawful acquisition

The following are infringing conducts:

 Unlawful acquisition:
o Without consent from the TS holder;
o By dishonest means;
o Knowing that the person passing the TS is doing so unlawfully.

 Unlawful disclosure:
o Acquisition was unlawful;
o Knowing that the person that passed the TS is doing so unlawfully;
o In breach of contract or law.

 Unlawful use:
o Acquisition was unlawful;
o In breach of contract or law;
o Knowing that the person that passed the TS did so unlawfully;
o Trading tainted goods.

The following conducts are lawful:

 Acquisition, use or disclosure when required or allowed by law;

 Independent creation;
 Reverse engineering;
 Acquisition by any other honest means.

3.3. Remedies

The remedies provided by the directive include:

 Cessation or prohibition of use or disclosure;

 Prohibition of production, offering, placing on the market, or use of infringing
goods;
 Adoption of appropriate corrective measures, such as recall or destruction of
infringing goods;
 Seizure of infringing goods.

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Further recommended readings:

 European Commission, ´Trade Secrets`

<https://europa.eu/youreurope/business/running-business/intellectual-
property/trade-secrets/index_en.htm>
 European IPR Helpdesk, ´Fact Sheet Trade secrets: An efficient tool for
competitiveness´ (2017)
<https://www.ipoi.gov.ie/en/commercialise-your-ip/tools-for-business/trade-
secrets.pdf>
 WIPO, ´Trade Secrets´ <https://www.wipo.int/tradesecrets/en/>
 Thomas Hoeren, ´The EU Directive on the Protection of Trade Secrets and
its Relation to Current Provisions in Germany´ (2018)
<https://www.jipitec.eu/issues/jipitec-9-2-2018/4725/JIPITEC_9_2_2018_13
8_Hoeren >

5. Industrial Designs
COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community
designs <https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?
uri=CELEX:32002R0006&from=EN>

DIRECTIVE 98/71/EC OF THE EUROPEAN PARLIAMENT AND OF THE

COUNCIL of 13 October 1998 on the legal protection of designs <https://eur-
lex.europa.eu/resource.html?uri=cellar:399f8f58-0b0e-4252-a0a8-
8c8600f55c5e.0008.02/DOC_1&format=PDF>

3.1. Notion of Industrial design

‘Design’ means 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.

A design is an element of appearance in products. No aesthetic quality is required, so

arbitrary and non-appealing features are also covered. However, only features which are
shown visibly are protected, the look and feel of the product.

Designs can be protected by different means:

 Registration;
 Non-registration: only available for community designs;
 Copyright;
 Unfair competition.

3.2. Requirements

 Novelty: a design is new if no identical design has been made available to the
public:
o In the case of an unregistered Community design, before the date on
which the design for which protection is claimed has first been made
available to the public.

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o In the case of a registered Community design, before the date of filing of

the application for registration of the design for which protection is
claimed, or, if priority is claimed, the date of priority.

On the relevant date, the test that should be applied is whether the same design,
or one with similar characteristics, is already available to the public through
publication, whether following registration or otherwise, through exhibition, use
in trade, or any other form of disclosure. Any design that is already available to
the public in this way will no longer be new and cannot be registered because it
is part of the prior art. The novelty of the design examined should be compared
with earlier individualized and defined designs, and not with a combination of
designs that had already been available to the public.

 Individual character: A design shall be 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:
o In the case of an unregistered Community design, before the date on
which the design for which protection is claimed has first been made
available to the public.
o In the case of a registered Community design, before the date of filing
the application for registration or, if a priority is claimed, the date of
priority.

The question to be asked is whether the overall impression that the design
produces on the informed user differs from the overall impression that a prior
design produced on that person. The concept of informed user lies between the
average consumer, who need not have any specific knowledge, and the sectoral
expert, who is an expert with detailed technical expertise.

 The design that is applied to a component part of a complex product must

remain visible during the normal use of the complex product and must also be
novel and have an individual character.

There are some grounds for refusing the registration of industrial designs:

 Technical function: a design shall not subsist in features of appearance of a

product which are solely dictated by its technical function.
 The “must-fix” exception: a design right shall not subsist in features of
appearance of a product which must necessarily be reproduced in their exact
form and dimensions in order to permit the product in which the design is
incorporated or to which it is applied to be mechanically connected to or placed
in, around or against another product so that either product may perform its
function.
 Designs that are contrary to public policy and accepted principles of morality.

3.3. Rights

 Registered Designs: the exclusive right to use their design and to prevent third
parties from using it commercially without prior consent. The aforementioned

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use shall cover, in particular, the making, offering, putting on the market,
importing, exporting or using of a product in which the design is incorporated or
to which it is applied, or stocking such a product for those purposes. However,
there are some exceptions and the rights conferred shall not be exercised in
respect of:
o Acts done privately and for non-commercial purposes;
o Acts done for experimental purposes;
o Acts of reproduction for the purposes of making citations or of teaching,
provided that such acts are compatible with fair trade practice and do not
unduly prejudice the normal exploitation of the design, and that mention
is made of the source.
o The equipment on ships and aircraft registered in another country when
these temporarily enter the territory of the Member State concerned;
o The importation in the Member State concerned of spare parts and
accessories for the purpose of repairing such craft;
o The execution of repairs on such craft.

 Unregistered Designs: only protects against deliberate copying, meaning that the
design owner can only prevent third parties from making a commercial use of
their design if it has been copied and not if such third parties have created a
similar or identical design independently.

3.4. Dimension

Registration can be obtained at three different levels:

 National: registration takes place at national IP offices and protection is obtained

only in the territory where the design is registered.
 Regional: protection at EU level can be obtained by registration of the design at
the EUIPO. Unregistered community designs can also be protected
automatically, without fees.
 International: WIPO’s international design registration system (known as the
Hague System) allows users to obtain a bundle of national designs by filing a
single application in one language and paying a single set of fees.

3.5. Duration

 Registered Designs: 5 years from the date of the filing of the application, which
can be renewed for periods of five years, up to a total term of 25 years.
 Unregistered Designs: 3 years and cannot be renewed.

Further recommended readings:

 WIPO, ´Hague, the international design system´

<https://www.wipo.int/hague/en/>
 European Commission, ´Industrial design protection´
<https://ec.europa.eu/growth/industry/policy/intellectual-property/
industrial-design/protection_en>
 EUIPO, ´Designs´ <https://euipo.europa.eu/ohimportal/en/designs>

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6. Trademarks
Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14
June 2017 on the European Union trade mark <https://eur-lex.europa.eu/legal-
content/EN/TXT/?uri=CELEX:32017R1001>

Directive (EU) 2015/2436 of the European Parliament and of the Council of 16

December 2015 to approximate the laws of the Member States relating to trade
marks <https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?
uri=CELEX:32015L2436&from=EN>

4.1. Notion of Trademark

An EU trade mark may consist of any signs, in particular words, including personal
names, or designs, letters, numerals, colours, the shape of goods or of the packaging of
goods, or sounds, provided that such signs are capable of:

(a) distinguishing the goods or services of one undertaking from those of other
undertakings; and

(b) being represented on the Register of European Union trade marks (‘the Register’), in
a manner which enables the competent authorities and the public to determine the clear
and precise subject matter of the protection afforded to its proprietor.

Trademarks have different functions:

 Indicate commercial origin: distinguish the products or services of one company

from those of other companies;
 Guarantee product quality and indication of goodwill;
 Advertisement. They are very powerful tools in advertisement, and in this sense,
it is important to notice that the trademark owner could be found liable for
misleading advertising if does a bad use.

There are several types of trademarks, this list being not exhaustive:

 Word marks;
 Figurative and combined marks;
 Position marks;
 Pattern marks;
 Colour marks;
 Sound marks;
 Motion marks;
 Multimedia marks;
 Olfactory marks.

4.2. Requirements

There are three requirements for having a trademark:

 There needs to be a sign: it must have a specific format;

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 The sign must be distinctive: ability to identify the products to which a mark is
affixed and to differentiate them from similar competing products, according to
the experience of the relevant public;
 What is being registered must be clear to the competent authority and the public,
formed by the consumers and the competitor of the right holder.

There are some trademarks that are unregistrable because of:

 Absolute grounds: the sign itself does not comply with certain requirements that
the law requires in order to be registered as a trademark. The sign must be
assessed on its own, without comparing it with other signs previously registered
as trademark. Some absolute grounds for refusal are:
o Devoid of any distinctive character;
o Descriptive character as to the quality, quantity, intended purpose, value
and geographical origin.
o Deceptive character as to the nature, quality or geographical origin of the
goods or service;
o Signs which consist exclusively of the shape, or another characteristic,
which results from the nature of the goods themselves; which is
necessary to obtain a technical result; and which gives substantial value
to the goods;
o 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;
o Contrary to public policy or to moral;
o Other grounds: include badges, emblems or escutcheons; consist of, or
reproduce in their essential elements, an earlier plant variety
denomination registered in accordance with Union legislation or national
law, or international agreements…

 Relative grounds: In order for a sign to be registered and protected as a

trademark, it is necessary that it does not prejudice earlier rights already
acquired over the same sign, which are:
o Earlier trademarks or other distinctive signs: a trademark cannot be
registered if it is identical to an earlier trademark and is used on identical
goods or services; or if both the mark and the goods or services are
similar, since there is risk of confusion. The comparison between signs
can be:
 Phonetic;
 Graphical;
 Conceptual;
o Other exclusive rights, for instance, a right to a name; a right of personal
portrayal; a copyright; or an industrial property right.

4.3. Rights

The rightsholder can prevent all third parties not having his consent from:

 Using the same mark for the same goods or services;

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 Using the same or similar mark to same or similar goods or services if there
exists a likelihood of confusion on the part of the public.
 Using the same or similar mark irrespective of the similarity of the goods or
services, where the trademark has a reputation and its use without due cause
takes unfair advantage of, or is detrimental to, the distinctive character or the
repute of the trademark.
 Bringing goods, in the course of trade, into the Member State/Union without
being released for free circulation there, where such goods, including packaging,
come from third countries and bear without authorisation a trade mark which is
identical with the trade mark registered in respect of such goods, or which
cannot be distinguished in its essential aspects from that trade mark.
 Carrying out certain preparatory acts in relation to the use of packaging or other
means.

4.4. Dimension

Registration can be obtained at three different levels:

 National: registration takes place at national IP offices and protection is obtained

only in the territory where the design is registered.
 Regional: Trademark protection at EU level can be obtained by registration of an
EU trademark (EUTM) at the European Union Intellectual Property Office
(EUIPO).
 International: WIPO’s international trademark registration system (known as the
Madrid System) allows users to obtain a bundle of national trademarks by filing
a single application in one language and paying a single set of fees.

4.5. Duration:

10 years from the date of filing of the application and can be renewed indefinitely for
periods of 10 years. The protection lapses if the renewal fees are not paid.

However, there are some grounds for revocation:

 Within a continuous period of five years, the trademark has not been put to
genuine use, and there are no proper reasons for non-use;
 If, in consequence of acts or inactivity of the proprietor, the trademark has
become the common name in the trade for a product or service in respect of
which it is registered;
 The trademark has been used in a misleading manner.

4.6. Domain names and cybersquatting

According to the World Intellectual Property Organization (WIPO), “domain names are
the human-friendly forms of Internet addresses, and are commonly used to find web
sites”. They also serve the for identifying a company or a trademark on the Internet.

The registration of domain names is governed by the first-come, first-served rule, i.e.,
anyone can buy a domain name if it has not been registered first by someone else. Once
the domain names are registered, they have worldwide effect.

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Trademarks can be infringed by a practice called “cybersquatting”, where an

unauthorised third party registers a trademark as a domain name and then resells it at a
higher price than the original registration fee.

There is a preventing system for avoiding cybersquatting, the Trademark Clearinghouse

(TMCH).

Trademarks owners can also have also access to different means to solve the disputes:

 Court proceedings;
 Established by the Internet Corporation for Assigned Names and Numbers
(ICANN), a non-profit association that supervises the domain name registration
system and provides guidelines and rules:
o Uniform Domain-Name Dispute-Resolution Policy;
o Uniform Rapid Suspension System;
o Trademark Post-Delegation Dispute Resolution Procedure.

Further recommended readings:

 Making a Mark: An Introduction to Trademarks for Small and Medium-

Sized Enterprises
<https://www.wipo.int/edocs/pubdocs/en/wipo_pub_900_1.pdf>
 EUIPO, Application and Registration Procedure
<https://euipo.europa.eu/ohimportal/en/application-procedure>
 WIPO, How to file your international application: Overview
<https://www.wipo.int/madrid/en/how_to/file/>
 European IPR Helpdesk: Domain names and cybersquatting
<https://www.ipoi.gov.ie/en/commercialise-your-ip/tools-for-business/
domain-name-and-cybersquatting.pdf>

7. Copyright and Related Rights.

COUNCIL DIRECTIVE 93/83/EEC of 27 September 1993 on the coordination of
certain rules concerning copyright and rights related to copyright applicable to
satellite broadcasting and cable retransmission (Satellite and Cable Directive)
<https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?
uri=CELEX:31993L0083&from=EN>

DIRECTIVE 96191EC OF THE EUROPEAN PARLIAMENT AND OF THE

COUNCIL of 11 March 1996 on the legal protection of databases (Database
Directive) <https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?
uri=CELEX:31996L0009&from=EN>

DIRECTIVE 2001/29/EC OF THE EUROPEAN PARLIAMENT AND OF THE

COUNCIL of 22 May 2001 on the harmonisation of certain aspects of copyright
and related rights in the information society (InfoSoc Direvtice) <https://eur-
lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32001L0029&from=EN>

DIRECTIVE 2006/116/EC OF THE EUROPEAN PARLIAMENT AND OF THE

COUNCIL of 12 December 2006 on the term of protection of copyright and certain
related rights (Term Directive)

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 Marta Duque Lizarralde

<https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?
uri=CELEX:32006L0116&from=EN>

DIRECTIVE 2006/115/EC OF THE EUROPEAN PARLIAMENT AND OF THE

COUNCIL of 12 December 2006 on rental right and lending right and on certain
rights related to copyright in the field of intellectual property (Rental and Lending
Rights Directive) <https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?
uri=CELEX:32006L0115&from=EN>

DIRECTIVE 2009/24/EC OF THE EUROPEAN PARLIAMENT AND OF THE

COUNCIL of 23 April 2009 on the legal protection of computer programs
(Software Directive) <https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?
uri=CELEX:32009L0024&from=EN>

DIRECTIVE (EU) 2019/790 OF THE EUROPEAN PARLIAMENT AND OF THE

COUNCIL of 17 April 2019 on copyright and related rights in the Digital Single
Market and amending Directives 96/9/EC and 2001/29/EC (DSM Directive)
<https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?
uri=CELEX:32019L0790&from=EN>

6.1. Notion of Copyright

Copyright protects authorial works, i.e., intangible expressions of a person meriting the
title of “author”. The authors have certain rights, cited below, over their literary,
scientific and artistic works. This list, that is not exhaustive, contains works that are
covered by copyright:

 Literary works such as novels, poems, plays, newspaper articles;

 Films, musical compositions, and choreographies;
 Artistic works such as paintings, drawings, photographs, and sculptures;
 Architecture;
 Advertisements, maps, and technical drawings;
 Computer programs;
 Databases.

6.2. Requirements

A subject matter must satisfy two cumulative conditions to be classified as a ‘work´:

 It must be original, in the sense that it is the author’s own intellectual creation,
which "is manifested by the author's free and creative choices”. This requires
the existence of a field of choice, which means the requirement of originality is
not met when the result is dictated by technical considerations, rules, or other
subject-matter constraints which leave no room for creative freedom.

 Only something which is the expression of the author’s own intellectual creation
may be classified as a ‘work’. This means that the subject matter protected by
copyright must be expressed in a manner which makes it identifiable with
sufficient precision and objectivity, even though that expression is not
necessarily in permanent form. Copyright protection may be granted to

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expressions, but not to ideas, procedures, methods of operation or mathematical

concepts as such.

No formalities are required to obtain copyright protection, which subsists in and is

enforceable automatically upon the creation of the original work. However, some
Member States require the material fixation of the work. Registration is not constitutive,
but it is advisable because it establishes a prima facie appearance of ownership in the
case of copyright infringement.

6.3. Rights

 Economic rights: the exclusive right to authorise or prohibit:

o Reproduction: direct or indirect, temporary or permanent, by any means
and in any form, in whole or in part. However, temporary acts of
reproduction, which are transient or incidental and an integral and
essential part of a technological process and whose sole purpose is to
enable: (a) a transmission in a network between third parties by an
intermediary, or (b) a lawful use of a work or other subject-matter to be
made, and which have no independent economic significance, shall be
exempted.
o Communication to the public: by wire or wireless means;
o Making available to the public: in such a way that members of the public
may access them from a place and at a time individually chosen by them.
o Distribution: in respect of the original of their works or of copies thereof,
by sale or otherwise.
o Rental: in respect of the original of their works or of copies thereof
(exclusion of computer programs, buildings and works of applied art).
o Lending: in respect of the original of their works or of copies thereof
(exclusion of computer programs, buildings and works of applied art). In
case of public lending, Member States can establish the exclusive right,
or rather a remuneration right.

The exceptions and limitations to copyright are governed by national law.

Nevertheless, they have been widely harmonised by EU Copyright
Directives:

o Art. 5 Infosoc Directive: contains an exhaustive list of the exceptions

that EU Member States may adopt, such as:
 Private copying;
 Illustration in teaching or scientific research;
 Report a current topic or in connection with the reporting or a
current event;
 Criticism or review;
 Caricature, parody or pastiche;
 Etc.
o There are some specific exceptions in other directives, some of them
mandatory and some non-mandatory, such as in Art. 6 Database
Directive; Arts. 5 and 6 Software Directive; Arts. 6 and 10 Rental and
Lending Rights Directive, and Art. 6 Orphan Works Directive.

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 Marta Duque Lizarralde

o In the new Directive on Copyright in the Digital Single Market Directive

there are more exceptions for text and data mining; use of works and
other subject matter in digital and cross-border teaching activities; and
preservation of cultural heritage.

If the work protected is a computer program, the copyright holder has the
exclusive right to authorise or prohibit:

o Reproduction: in so far as loading, displaying, running, transmission or

storage of the computer program necessitate such reproduction, such acts
shall be subject to authorisation;
o The translation, adaptation, arrangement and any other alteration of a
computer program and the reproduction of the results thereof;
o Any form of distribution to the public, including the rental, of the
original computer program or of copies thereof. They also have an
exclusive or remuneration right, at discretion of the Member States, for
the public lending of their works.

There are some exceptions:

o In the absence of specific contractual provisions, the first two rights shall
not require authorisation by the rightsholder where they are necessary for
the use of the computer program by the lawful acquirer in accordance
with its intended purpose, including for error correction.
o The making of a back-up copy by a person having a right to use the
computer program may not be prevented by contract in so far as it is
necessary for that use.
o The person having a right to use a copy of a computer program shall be
entitled to observe, study or test the functioning of the program in order
to determine the ideas and principles which underlie any element of the
program if he does so while performing any of the acts of loading,
displaying, running, transmitting or storing the program which he is
entitled to do.
o Decompilation: where reproduction of the code and translation of its
form are indispensable to obtain the information necessary to achieve the
interoperability of an independently created computer program with
other programs, under some conditions.

 Moral rights: The Berne Convention requires member countries to grant to

authors:
o The right to claim authorship of the work (paternity);
o The right to object to any distortion, mutilation or other modification of,
or other derogatory action in relation to, the work which would be
prejudicial to the author’s honour or reputation (integrity right).

They are not harmonised at EU level, so their scope of protection may vary from
one country to another.

6.4. Dimension

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 Marta Duque Lizarralde

Copyright is territorial and national in scope. However, a number of international

treaties and conventions allow authors to enjoy protection in several countries of the
world. Moreover, it is highly harmonised in the EU.

6.5. Duration

Copyright last for the life of the author and for 70 years after his death; or where there is
more than one author, for 70 years after the death of the last surviving author, calculated
in both cases from the first day of January of the following year.

There are some exceptions:

 Anonymous and Pseudonymous works: 70 years after the work has been made
lawfully available to the public, unless the author´s identity is obvious or
revealed, in which case the general copyright term applies.
 Films: 70 years after the death of the last to survive of the principal director, the
author of the screenplay, the author of the dialogue, and the composer of any
music specifically created for use in the film.
 Musical compositions: 70 years from death of last to survive of authors of the
lyrics and the music.

6.6. Related rights

Related rights protect recordings or communication of expressive content produced or

brought into existence by persons that are not the authors. Different related rights exist:

 Right of phonogram producers: they have the exclusive rights of reproduction,

make available to the public, distribution, rental, and an exclusive or
remuneration right, at discretion of the Member States, for the public lending, of
their phonograms. Furthermore, they have a right of a single equitable
remuneration paid by the user, if a phonogram published for commercial
purposes, or a reproduction of such phonogram, is used for broadcasting by
wireless means or for any communication to the public. The term of protection
is of 50 years after the fixation is made. However, if the phonogram has been
lawfully published within this period, the said rights shall expire 50 years from
the date of the first lawful publication. If no lawful publication has taken place
within the period mentioned in the first sentence, and if the phonogram has been
lawfully communicated to the public within this period, the said rights shall
expire 50 years from the date of the first lawful communication to the public.

 Right of films producers: they have the exclusive right of reproduction, to make
available to the public, distribution, rental, and an exclusive or remuneration
right, at discretion of the Member States, for the public lending of the first
fixations of films, in respect of the original and copies of their films. The term of
protection is of 50 years after the fixation is made. However, if the film is
lawfully published or lawfully communicated to the public during this period,
the rights shall expire 50 years from the date of the first such publication or the
first such communication to the public, whichever is the earlier.

 Right of performers: they have the exclusive right of reproduction, to make

available to the public, distribution, rental, and an exclusive or remuneration

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right, at discretion of the Member States, for the public lending, of fixations of
their performances. In addition, they have the exclusive right to authorise or
prohibit the broadcasting by wireless means and the communication to the
public of their performances, except where the performance is itself already a
broadcast performance or is made from a fixation. They also have a right of a
single equitable remuneration paid by the user, if a phonogram published for
commercial purposes, or a reproduction of such phonogram, is used for
broadcasting by wireless means or for any communication to the public. The
term of protection is of 50 years after the date of the performance. However, if a
fixation of the performance is lawfully published or lawfully communicated to
the public within this period, the rights shall expire 50 years from the date of the
first such publication or the first such communication to the public, whichever is
the earlier.

 Right of broadcasting organisations: they have the exclusive right to authorise or

prohibit the fixation of their broadcasts, whether these broadcasts are transmitted
by wire or over the air, including by cable or satellite; the rebroadcasting of their
broadcasts by wireless means, as well as the communication to the public of
their broadcasts, if such communication is made in places accessible to the
public against payment of an entrance fee; the reproduction of fixations of their
broadcasts, whether those broadcasts are transmitted by wire or over the air,
including by cable or satellite, and the right to make available to the public, in
respect of fixations of their broadcasts; The term of protection is of 50 years
after the first transmission of a broadcast.

 Right of publishers of previously unpublished works first published or

communicated to the public after their copyright has expired: Any person who,
after the expiry of copyright protection, for the first time lawfully publishes or
lawfully communicates to the public a previously unpublished work, shall
benefit from a protection equivalent to the economic rights of the author. The
term of protection of such rights shall be 25 years from the time when the work
was first lawfully published or lawfully communicated to the public.

 Right of non-original photographs: Member States protect them;

 Right of critical and scientific publications of public domain: Member States

may protect them for a maximum term of 30 years from the time when the
publication was first lawfully published.

 Sui generis database right: for a database to be protected by this right, there must
be substantial investment, quantitative or qualitative, either in obtaining,
verifying or presenting the content of the database. Conversely, investment in
the creation of data does not lead to protection. The maker of a database has the
right to prevent extraction and/or re-utilization of the whole or of a substantial
part, evaluated qualitatively and/or quantitatively, of the contents of that
database. There are exceptions allowing the extraction for private purposes of
the contents of a non-electronic database; for the purposes of illustration for
teaching or scientific research, and for purposes of public security or an
administrative or judicial procedure. The period of protection is of 15 years,

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 Marta Duque Lizarralde

running from the end of the year in which the database is completed. If the
database is made available to the public before the end of that period, the right
expires 15 years from the end of the year in which the database was first made
available. A substantial change to the contents of the database which would
result in the database being considered to be a substantial new investment, shall
qualify the database resulting from that investment for its own term of protection
(new 15 years period).

 Right of the publishers of press-publications: they have the rights of

reproduction and making available to the public for the online use of their press
publications, first published before 6 June 2019, by information society service
providers. These rights shall not apply to private or non-commercial uses of
press publications by individual users; to acts of hyperlinking; and in respect of
the use of individual words or very short extracts of a press publication. The
period of protection is of 2 years after the press publication is published,
calculated from 1 January of the year following the date on which that press
publication is published.

Further recommended readings:

Jane C. Ginsburg, Overview of Copyright Law

<https://scholarship.law.columbia.edu/cgi/viewcontent.cgi?
article=2991&context=faculty_scholarship

6.7. Open Source

Open source is a software collaborative innovation and development model whereby

software can be freely accessed, used, modified, and distributed while respecting the
terms of the open source license.

Open source software (OSS) and free software are different concepts. The free software
movement uses the term “free” for referring to the software that respects the “user’s
essential freedoms”: “to run it, to study and change it, and to redistribute copies with
or without changes”. Open source focuses on the practical consequences enabled by
these licenses rather than on campaign for principles.

There is not an official definition of the term "open source”, but most of the community
supports the definition proposed by the Open Source Initiative (OSI), according to
which each licence must comply with the 10 criteria: Free Redistribution, Source Code,
Derive Works, Integrity of the Author’s Source Code, No Discrimination Against
Persons or Groups, No Discrimination Against Fields of Endeavor, Distribution of
Licence, Licence Must Not Be Specific to a Product, Licence Must Not Restrict Other
Software, Licence Must Be Technology-Neutral. <https://opensource.org/osd>

Open source licences are conditional copyright licences, i.e., they grant all copyrights
while imposing the compliance with certain conditions for their exercise. Some open
source licences contain patent grants and defensive termination clauses.

There are two types of OSS licenses:

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 Marta Duque Lizarralde

 Restrictive or copyleft: they require that the licensed software and any
modifications must be redistributed under the same license terms. Examples:
Strong (any program that contains the copyleft code must only contain this type
of code): GNU Affero General Public License
<https://www.gnu.org/licenses/agpl-3.0.en.html>; General Public Licence (GPL)
<https://www.gnu.org/licenses/gpl-3.0.en.html>; Weak (they allow dynamic
linking and sometimes also any kind of integration as long as the copyleft code
remains in its own file): GNU Lesser General Public License
<https://www.gnu.org/licenses/lgpl-3.0.en.html>; Mozilla Public License
<https://www.mozilla.org/en-US/MPL/2.0/> .

 Permissive: they do not impose restrictive conditions on the redistribution of the

software, allowing the software to be sublicensed under different license terms
and incorporated into proprietary applications.
Examples: BSD <https://opensource.org/licenses/BSD-3-Clause>, MIT
<https://mit-license.org/>, and Apache 2.0
<https://www.apache.org/licenses/LICENSE-2.0.html>.
For a list of permissive licenses, see <https://blueoakcouncil.org/list>

An OSS application, while appearing to be a single program, is an integration of

multiple components. Each component may be covered by a different licence, which in
turn can be either proprietary or open source. Each of these licences has its own set of
rules, and if they conflict with each other, a compatibility problem arises:

 When all upstream licences are permissive there are no compatibility problems,
as they impose no restrictions on what code is added to the program or how it
can be distributed. Modifications may be distributed under permissive, copyleft
or proprietary terms.

 The code covered by a permissive licence can be added to copyleft projects. In

this case, the conditions stipulated in the copyleft licence must be followed when
redistributing the merged program and its further modifications. Yet, there are a
few incompatibilities, for example, between Apache 2.0 and the version 2 of the
GPL, or between the primary version of BSD and the GPL family. Conversely,
code released under copyleft licences cannot be added to some permissive open
source projects. For example, Apache 2.0 code can be included in GPLv3
projects, but the opposite is not allowed.

 The most problematic scenario arises when two copyleft licences are used
together, because each of them prohibits the imposition of additional restrictions
on the program, but at the same time they include different terms that imply
additional restrictions with respect to the others. Consequently, copyleft licences
are incompatible unless a special compatibility clause is included, allowing the
component to retain its original licence, while permitting the combined program
into which it is integrated to be distributed under different downstream terms.
Codes released only under weak copyleft terms might coexist, because although
they prevent the component from becoming proprietary, they allow it to be part
of a larger proprietary program. In this scenario, each component is subjected to
its own licence.

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Traditionally, the enforcement of open source licences has been conducted under the so-
called "community enforcement". The process starts with a warning letter or a report
notifying the non-compliance with the terms of the licence. In most cases, this initial
contact is reportedly sufficient for overcoming the problem. The open source project
steward (either an institution or the main sponsor) initiates judicial procedures only in
case of continue disobedience following notification. Although voluntary compliance
remains predominant, commercial litigation around open source has been also present
since a few years now. Consequently, IPR holders may also enforce their rights by
claiming IPR infringement and/or contractual breach, depending on the jurisdiction.

Further recommended readings:

 Richard Stallman, Why Open Source misses the point of Free Software
<https://www.gnu.org/philosophy/open-source-misses-the-point.en.html>
 Lawrence Rosen, Open Source Licensing Software Freedom and
Intellectual Property Law (Prentice Hall, 2004)
<https://rosenlaw.com/open-source-licensing-software-freedom-and-
intellectual-property-law/>
 Heather Meeker, Open Source for Business: A Practical Guide to Open
Source Software Licensing´ (Last Mile Publishing, 2020).
 Eben Moglen, Enforcing the GNU GPL
<https://www.gnu.org/philosophy/enforcing-gpl.html>

Further recommended readings on the topic of IP

 Justine Pila and Paul Torremans, European Intellectual Property Law

(OUP Oxford, 2019).
 The European IPR Helpdesk, Your Guide to IP in Europe
<https://www.ipoi.gov.ie/en/commercialise-your-ip/taking-ip-global/eu-ipr-
guide-europe.pdf>
 WIPO Intellectual Property Handbook: Policy, Law and Use, Chapter 2
Fields of Intellectual Property Protection
<https://is.muni.cz/el/1422/jaro2016/MVV69K/um/ch2.pdf>
 4iP Council website <https://www.4ipcouncil.com/>
 European IPR Helpdesk, Commercialising intellectual property, Licence
agreements
<https://op.europa.eu/en/publication-detail/-/publication/e510929d-f015-
11eb-a71c-01aa75ed71a1/language-en/format-PDF/source-227478787>

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