EU Intellectual Property Law and Policy (Elgar European Law)

EU Intellectual Property Law and Policy

ELGAR EUROPEAN LAW

Series editor: John Usher, formerly Professor of European Law and Head,

School of Law, University of Exeter, UK

European integration is the driving force behind constant evolution and

change in the laws of the member states and the institutions of the European

Union. This important series will offer short, state-of-the-art overviews of

many specific areas of EU law, from competition law to consumer law and

from environmental law to labour law. Whilst most books will take a thematic,

vertical approach, others will offer a more horizontal approach and consider

the overarching themes of EU law.

Distilled from rigorous substantive analysis, and written by some of the

best names in the field, as well as the new generation of scholars, these books

are designed both to guide the reader through the changing legislation itself,

and to provide a firm theoretical foundation for advanced study. They will be

an invaluable source of reference for scholars and postgraduate students in the

fields of EU law and European integration, as well as lawyers from the

respective individual fields and policymakers within the EU.

Titles in the series include:

EU Consumer Law and Policy

Stephen Weatherill

EU Private International Law

Harmonization of Laws

Peter Stone

EU Public Procurement Law

Christopher H. Bovis

EU Criminal Law and Justice

Maria Fletcher and Robin Lööf with Bill Gilmore

Judicial Review in EU Law

Alexander H. Türk

EU Intellectual Property Law and Policy

Catherine Seville

EU Intellectual

Property Law and

Policy

Catherine Seville

Vice-Principal and Director of Studies in Law, Newnham

College and University Lecturer at the Faculty of Law,

University of Cambridge, UK

ELGAR EUROPEAN LAW

Edward Elgar

Cheltenham, UK • Northampton, MA, USA

© Catherine Seville 2009

All rights reserved. No part of this publication may be reproduced, stored in a

retrieval system or transmitted in any form or by any means, electronic, mechanical

or photocopying, recording, or otherwise without the prior permission of the

publisher.

Published by

Edward Elgar Publishing Limited

The Lypiatts

15 Lansdown Road

Cheltenham

Glos GL50 2JA

UK

Edward Elgar Publishing, Inc.

William Pratt House

9 Dewey Court

Northampton

Massachusetts 01060

USA

A catalogue record for this book

is available from the British Library

Library of Congress Control Number: 2008943825

ISBN 978 1 84720 123 2

Typeset by Cambrian Typesetters, Camberley, Surrey

Printed and bound in Great Britain by MPG Books Ltd, Bodmin, Cornwall

The Author and Publisher are grateful to the late John Usher

for his support for this book and the Elgar European Law series.

Contents

Preface xii

Table of cases xiv

Table of legislation xxxiii

Table of treaties, conventions and other international instruments xlv

1 Introduction 1

2 Copyright and related rights 7

2.1 Introduction 7

2.2 International conventions 8

2.2.1 Early bilateral agreements 8

2.2.2 The Berne Convention 9

2.2.3 The Universal Copyright Convention 13

2.2.4 The Rome Convention 14

2.2.5 TRIPS 17

2.2.6 The WIPO Internet Treaties 19

2.3 The influence of the European Union 23

2.3.1 An early survey: the Commission’s 1988 Green

Paper 24

2.3.2 The Computer Programs Directive 27

2.3.3 The Rental Directive 29

2.3.4 The Satellite and Cable Directive 34

2.3.5 The Term Directive 38

2.3.6 The Database Directive 41

2.3.7 The E-Commerce Directive 47

2.3.8 The Information Society Directive 49

2.3.9 The Resale Right Directive 57

2.3.10 Future Reforms 61

3 Patents and related rights 69

3.1 Introduction 69

3.2 The global patent environment 74

3.2.1 The Paris Convention 74

3.2.2 The Patent Cooperation Treaty 75

3.2.3 TRIPS 77

vii

3.2.4 The Convention on Biological Diversity (CBD) 85

3.2.5 The Patent Law Treaty 88

3.3 The European patent environment 91

3.3.1 The European Patent Convention 91

3.3.1.1 History 91

3.3.1.2 EPC 2000 – major changes 92

3.3.1.3 EPC 2000: overview and procedure 94

3.3.1.4 Opposition proceedings 100

3.3.1.5 Substantive harmonisation – limits and

definitional challenges 101

3.3.1.6 Article 69 – interpretation of claims 102

3.3.1.7 European patent – substantive

requirements 104

(1) Novelty – Article 54 105

(2) Inventive step – Article 56 111

(3) Industrial application – Article 57 117

(4) Excluded subject matter –

Article 52(2)–Article 53 118

(i) The boundary between discoveries

and inventions 120

(ii) Computer-related inventions 122

(iii) Biological subject matter –

Article 53(b) 127

(iv) Methods for treatment of the

human or animal body –

Article 53(c) 132

(v) Morality – Article 53(a) 133

(5) Sufficiency of disclosure 141

3.3.2 Other legislative initiatives in European patent law –

the London Agreement and the EPLA 142

3.3.2.1 The London Agreement 143

3.3.2.2 The European Patent Litigation Agreement

(EPLA) 144

3.3.3 Community initiatives in the field of patent law 148

3.3.3.1 The Community patent: context and

history 148

3.3.3.2 Supplementary protection certificates 158

3.3.3.3 The Biotechnology Directive: the legal

protection of biotechnological inventions 159

3.3.3.4 Utility models 169

3.4 Plant variety rights 170

3.4.1 History of protection 170

viii EU intellectual property law and policy

3.4.2 The UPOV Convention 172

3.4.3 The Community plant variety right 174

4 Designs 180

4.1 Introduction – the concept of design 180

4.2 First steps towards EC harmonisation 181

4.3 Registered Community Design 184

4.4 The Community definition of ‘design’ 189

4.5 Grounds of invalidity 192

4.5.1 Novelty 193

4.5.2 Individual character 195

4.5.3 Complex products – special requirements 196

4.5.4 Relative grounds of invalidity 197

4.6 The design proprietor’s rights 200

4.6.1 Initial entitlement 200

4.6.2 Assignment and licences 201

4.6.3 Duration 202

4.6.4 Rights conferred by the design right 203

4.6.5 Exceptions and defences 205

5 Trade marks and related rights 210

5.1 Introduction 210

5.2 Treaties administered by WIPO 213

5.2.1 The Paris Convention 213

5.2.2 The Madrid Agreement 214

5.2.3 The Madrid Protocol 216

5.2.4 The Trademark Law Treaty 218

5.2.5 The Singapore Treaty on the Law of Trademarks 219

5.3 TRIPS 219

5.4 Community trade mark legislation 220

5.4.1 Overview 220

5.4.2 Applying for a Community trade mark 222

5.4.3 Criteria for registration 224

(a) What is a registrable mark? 225

(b) The absolute grounds for refusal 233

(i) Signs which do not conform to the

requirements of a trade mark 233

(ii) ‘Devoid of any distinctive character’ 233

(iii) Descriptive marks 239

(iv) Customary and generic marks 242

(v) Acquired distinctiveness 243

(vi) The shape exclusions 245

Contents ix

(vii) The remaining absolute grounds for

refusal 249

(i) Public policy and morality 249

(ii) Deceptive marks 251

(iii) Special emblems and marks

prohibited by law 252

(iv) Bad faith 253

(c) Relative grounds for refusal 253

1 Earlier trade marks 254

(i) Identical trade mark and identical

goods 254

(ii) Confusingly similar marks and goods 255

(iii) Marks with a reputation 263

2 Earlier rights (non-trade mark) 268

5.4.4 Cancellation of a mark 269

5.4.5 Infringement 274

5.4.6 Defences 279

5.4.7 Other EU harmonisation initiatives relevant to

trade marks 283

(a) Misleading advertising 283

(b) Unfair Commercial Practices Directive 286

(c) Domain names 287

5.4.8 Community trade marks as objects of property 288

5.5 Geographical indications of origin 290

5.5.1 Introduction 290

5.5.2 International treaties 290

5.5.3 TRIPS 292

5.5.4 The EU regime 294

5.5.5 Traditional specialities guaranteed 305

6 Intellectual property and free movement of goods 310

6.1 Introduction 310

6.1.1 Overview of the problem – three typical cases 310

6.1.2 Intellectual property rights – different rights

have different purposes 317

6.2 Intellectual property in the Community – the free

movement of goods 319

6.2.1 The treaty: the basic legal framework 319

6.2.2 Early case law: the distinction between existence

and exercise of rights 320

6.2.3 Specific subject matter: definitions 322

x EU intellectual property law and policy

6.2.4 What is ‘consent’ for the purposes of exhaustion

of rights? 327

6.3 Repackaging: balancing the principle of free movement

against the trade mark owner’s rights 337

6.3.1 Pharmaceuticals 337

6.3.2 Repackaging principles – application to other

products? 350

6.4 Use of another’s trade mark in advertising 351

6.5 Goods in transit are not ‘on the market’ 356

6.6 Exhaustion: national, Community-wide or international? 359

6.7 Competition law and intellectual property 373

6.7.1 Article 81 374

Assignments 375

Licensing agreements 376

Copyright licensing – individual and collective 378

Unilateral action and Article 81(1) 382

Dual pricing 383

Block exemptions – the Technology Transfer

Regulation 386

6.7.2 Article 82 391

7 Enforcement of intellectual property rights 404

7.1 TRIPS 404

7.2 European Community measures 407

7.2.1 The Enforcement Directive 408

7.2.2 The Draft Criminal Enforcement Directive 412

7.2.3 Counterfeiting: future measures 416

7.2.4 Jurisdiction – the Brussels Regulation 417

Index 419

Contents xi

Preface

My aim in writing this book is to offer a compact and accessible account of

EU intellectual property law and policy. It covers the substantive provisions

and procedures which apply throughout the EU, making extensive reference to

the case law – the sheer volume of which is utterly daunting for students

attempting to explore the area on their own. The book is intended to be

manageable in terms of length and ease of understanding. Basic material is

rehearsed as appropriate, although it is not intended as an introductory book

for those entirely unfamiliar with the subjects of intellectual property or EU

law. I hope the book will be used as a work of reference, as well as for wider

study, so sections stand on their own, with cross-references offered where

these will be helpful. Intellectual property is not isolated from other aspects of

EU law and policy; it is regarded as a crucial contributor to economic growth

and competitiveness, especially in fields of technology. Aspects of the free

movement of goods and services, competition law, customs measures, and

anti-counterfeiting efforts are all engaged. This work takes a broad view of

these interactions, and their impact on law and policy.

It is also essential to set EU intellectual property law in the wider inter￾national context necessary for understanding it, and its application to intellec￾tual property law within the EU member states. The exploitation of intellectual

property is increasingly global, bringing corresponding pressures for global

harmonisation. Often the harmonisation of intellectual property law at the EU

level is only partial, so the broader framework is extremely important. This is

particularly true of patent law, where the success of the European Patent

Convention and other international initiatives has left Community patent law

with only a minimal role – thus far. Similarly, the interaction of Community

law and national laws may also be very significant. In discussions of this, the

book focuses on the harmonised environment. Matters of general application

to all member states are discussed, but individual substantive national laws are

not. The book is intended to elucidate the framework within which the national

intellectual property laws of member states operate. It is thus not tied to any

particular national law, although reference is made to national cases where this

helps to develop points of interest relevant to the situation within the EU.

Finally, the book also seeks to highlight policy issues and arguments of

relevance to the EU, both within the Union, and in its relations with the rest of

the world. There is a huge volume of policy material, which may be tricky for

xii

the non-specialist to locate and digest; detailed references are given to these

sources. There has necessarily been a process of selection, with the focus on

offering understanding of the major issues, rather than an exhaustive account

of every detail. But the aim has been always to offer guidance and further read￾ing for those wishing to undertake research on particular matters.

Catherine Seville

Newnham College

June 2008

Preface xiii

EUROPEAN COURT OF

JUSTICE

Adam Opel AG v Autec AG Case C￾48/05 [2007] ETMR 35 278,

279

Adidas AG v Marca Mode CV Case

C-102/07 10 Apr 2008 262,

263, 265

Adidas Salomon AG v Fitnessworld

Trading Ltd Case C-408/01

[2003] ECR I-12537 264

Alcon Inc v OHIM Case C-192/03 P

[2004] ECR I-8993 243

Alcon Inc v OHIM Biofarma SA

Case C-412/05 [2007] ETMR 68

273

Alecansan SL v OHIM Case C￾196/06 P 260

Alfredo Nieto Nuño v Leonci

Monlleó Franquet Case C-328/06

[2008] ETMR 12 264

Anheuser-Busch Case C-245/02

[2004] ECR I-10989 220

Ansul BV v Ajax Brandbeveiliging

BV Case C-40/01 [2003] ECR I￾2439 271, 272

Arsenal Football Club plc v Reed

Case C-206/01 [2002] ECR 10,

273 276, 277, 278, 279

August Storck v OHIM Case C￾24/05 P [2006] ECR I-5677

238, 245

Bassett v SACEM Case 402/85

[1987] ECR 1747 336, 379

Bayer see Bundesverband der

Arzneimittel- Importeure eV v

Bayer AG

Bayerische Motorenwerke (BMW)

AG v Deenik Case C-63/97

[1999] ECR I-905 277, 278,

280, 281, 354, 355

Belgium v Spain Case C-388/95

[2000] ECR I-3123 326

Benetton Group SpA v G-Star

International BV Case C-371/06

[2008] ETMR 104 249

BioID AG v OHIM Case C-37/03

[2005] ECR I-7975 234

Björnekulla Fruktindustrier AB v

Procordia Food AB Case C￾371/02 [2004] ECR I-5791 273

Boehringer Ingelheim KG v

Swingward Ltd (Boehringer I)

Case C-143/00 [2002] ECR I￾3759 343, 344, 345, 346

Boehringer Ingelheim KG v

Swingward Ltd (Boehringer II)

Case C-348/04 [2007] ETMR 71

347–50

Bovemij Verzekeringen NV v

Benelux-Merkenbureau Case C￾108/05 [2007] ETMR 29 245

Bristol-Myers Squibb v Paranova

A/S et al Joined Cases C-427,

429 & 436/93 [1996] ECR I-3457

339, 343, 399

British Horseracing Board (BHB)

Ltd v William Hill Organisation

Ltd Case C-203/02 [2004] ECR I￾10415 45, 46

xiv

Cases