When Trademarks Overlap With Other IP Rights: conference report 8

The final session before a very, very late lunch saw something of a novelty act: an interview by INTA stalwart Ronald van Tuijl (JT International) with Christoph Ernst (Ministerialdirigent, German Federal Ministry of Justice, left) and Mihaly Ficsor (Vice-President for Legal Affairs, Hungarian IP Office).  Billed under the heading "Trademarks and Patents", this session went somewhat wider -- without adding anything on the interface between trade marks and patents.

Mihaly opened by giving a lengthy overview of the IP scene in Europe. "As you've probably guessed", added Christoph, "trade marks are very different from patents". He then addressed the major changes ahead for European patent system users, whether they are applying for patents or litigating them.

The discussion then shifted to the protection of product shapes post-patents, considering the decisions of the Court of Justice of the European Union in Case C-299/99 Philips v Remington and the LEGO decision (Case C-48/09 P) where the court said at [46]

When the shape of a product merely incorporates the technical solution developed by the manufacturer of that product and patented by it, protection of that shape as a trade mark once the patent has expired would considerably and permanently reduce the opportunity for other undertakings to use that technical solution. In the system of intellectual property rights developed in the European Union, technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators. As OHIM pointed out in its argument summarised in paragraph 37 above, that consideration underlies not only Directive 89/104 and Regulation No 40/94, with regard to trade mark law, but also Regulation No 6/2002, in relation to designs.

Accordingly, trade mark rights are not intended to provide monopoly protection for the technical aspect of an invention for which another registered right has been granted and expired, Christoph explained.

While trade marks and patents normally do not overlap with one another, the panellists agreed that they could certainly complement one another, as happens in the pharmaceutical sector. Corporate strategy will determine which rights will drive its business. Both are crucial in their place. Thus, as David Ogilvie observed, the production of  new pharma product may involve many people and a large amount of work over a period years; creation of the branding, however, and the personality of the product so branded, is given only a short window of creative opportunity.

Ronald's next question related to the main differences between pan-European Community trade marks and the not-quite-pan-European patents: Christoph outlined the scope and structure of each. Yes, he patent is the result of compromise, he said, but it will result in essentially a single patent and a single court structure for almost of all of Europe. Both patent and trade mark will have unitary effect.  Community trade marks still offer the option of national protection as an alternative, but patents will not.

Finally, Ronald asked Mihaly about the impact on national intellectual property offices of the switch from the current patent scheme to unitary patent filings.  National trade mark applications remain buoyant, responded Mihaly, but the patent landscape will be very different.  National patent applications are currently filed as springboards for European or global applications after receiving a local search report. Following the introduction of the new system, initial filings for European patents and renewal fee income will be lost, though there will be additional sources of revenue in terms of monies remitted from renewals of unitary patents.