PROPERTY RIGHTS OVER FRAGRANCES, SMELLS AND PERFUMES

Transcription

1 PROPERTY RIGHTS OVER FRAGRANCES, SMELLS AND PERFUMES Protecting your Aroma Creation against Competitive Imitation Trade Marks / Patents / Copyright Sergio BALAÑÁ-VICENTE ATTORNEY AT LAW sbalana@balanavicente.com 1

2 Intellectual Property in the Personal Care Products Industry Design { Registered Community Design (RCD) Unregistered Community Design (UCD) Trade Mark (Word Trade Mark) Trade Mark (3D Trade Mark) Copyright? Trade Mark (Figurative Trade Mark) Patent (chemical formulae) Utility Model (simple devices) 2

3 - AN OVERVIEW SUBJECT-MATTER PROTECTED Trade Mark Copyright Design Patent Utility Model A sign used to identify commercial origin A work of the mind (literary, musical, artistic, scientific) The appearance of the whole (or a part) of a product An invention (all kinds) An invention (simple devices) Trade Secrets Confidential Information that has commercial value 3

4 - AN OVERVIEW SCOPE OF PROTECTION Trade Mark Copyright Design Patent Utility Model The owner of a TM is only entitled to prevent others from using an identical (or similar) sign as an indicator of commercial origin in connection with goods and / or services that are identical (or similar) to those for which the TM has been registered. The copyright owner is entitled to prevent others from using the copyrighted work, except from certain exceptions and limitations (private copying, fair use, fair dealing, etc.) The design owner can prevent others from using any design which does not produce on the informed user a different overall impression. The patent owner has the right to decide who may -or may not, use the patented invention, so that the invention cannot be commercially made, used, distributed, imported or sold by others without the patent owner s consent. Idem. 4

5 - AN OVERVIEW DURATION OF THE PROTECTION Trade Mark Copyright Design Patent Utility Model { Unlimited, provided (i) renewal fees are paid and (ii) the trade mark is used in the course of commerce 70 years post mortem auctoris Registered Design : up to a maximum of 25 years Unregistered Design : 3 years 20 years from the application 10 years (depending on jurisdiction) Trade Secrets As long as the information is kept secret 5

6 TRADE MARKS 1. What is a Trade Mark? - Council Regulation (EC) No 207/2009 A Trade Mark is: a) A Sign b) Susceptible of graphical representation c) Susceptible of indicating commercial origin (distinctive character) 6

7 TRADE MARKS 2. A Trade Mark is a Sign Words Designs Letters Numerals Shape of goods Shape of their packaging Colours per se Sounds Moving images Smells / Fragrances Tastes / Flavors Touches Susceptible of being registered as a trade mark provided they meet the requirements of { Graphical Representation Distinctive Character 7

8 TRADE MARKS 2. A Trade Mark is a Sign Conventional Trade Marks Word Trade Mark (word or combination of words) 8

9 TRADE MARKS 2. A Trade Mark is a Sign Conventional Trade Marks Word Trade Mark (word or combination of words) Figurative Trade Mark (words / designs / letters / numerals) 9

10 TRADE MARKS 2. A Trade Mark is a Sign Conventional Trade Marks Word Trade Mark (word or combination of words) Figurative Trade Mark (words / designs / letters / numerals) Non-Conventional Trade Marks 3D Trade Mark (shape of goods / shape of their packaging) 10

11 3D TRADE MARKS 11

12 TRADE MARKS 2. A Trade Mark is a Sign Conventional Trade Marks Word Trade Mark (word or combination of words) Figurative Trade Mark (words / designs / letters / numerals) Non-Conventional Trade Marks 3D Trade Mark (shape of goods / shape of their packaging) Colour Trade Mark (colour per se) 12

13 COLOUR PER SE TRADE MARKS 13

14 TRADE MARKS 2. A Trade Mark is a Sign Conventional Trade Marks Word Trade Mark (word or combination of words) Figurative Trade Mark (words / designs / letters / numerals) Non-Conventional Trade Marks 3D Trade Mark (shape of goods / shape of their packaging) Colour Trade Mark (colour per se) Sound Trade Mark (sounds) 14

15 SOUND TRADE MARKS (Graphical Representation) (Graphical Representation) 15

16 TRADE MARKS 2. A Trade Mark is a Sign Conventional Trade Marks Word Trade Mark (word or combination of words) Figurative Trade Mark (words / designs / letters / numerals) Non-Conventional Trade Marks 3D Trade Mark (shape of goods / shape of their packaging) Colour Trade Mark (colour per se) Sound Trade Mark (sounds) Olfactory Trade Marks ( smells?) Taste Trade Marks ( tastes / flavors?) Touch / Tactile Trade Marks ( touches?) 16

17 OLFACTORY TRADE MARKS 17

18 TRADE MARKS 2. A Trade Mark must be capable of being graphically represented The rationale behind graphical representation. Why is it so important? All Trade Mark applications need to be published in an Official Journal so that third parties know (and eventually oppose) the extent of the right that is applied for Official Journals are edited in paper form. Accordingly, representation must be graphical. 18

19 OLFACTORY TRADE MARKS 2. A Trade Mark must be capable of being graphically represented does The European a description Court of in Justice written words (ECJ) suffice has held: to graphically represent an odour? The mark smell represents of of recently vanilla cut the grass smell of an amber, woody aroma with Virginia tobacco undertones and a mace topnote A description in written words of an odour, although it is graphic, it is not sufficiently clear, precise and objective ECJ in Case C-273/00 ( Sieckmann )

20 OLFACTORY TRADE MARKS 2. A Trade Mark must be capable of being graphically represented does the chemical formula of the substance giving off the odour suffice to graphically The European Court of Justice (ECJ) has held: represent it? Only few people would recognize in a formula the odour in question. A formula is not sufficiently intelligible. Besides, a chemical formula does not represent the odour of a substance, but the substance as such. A chemical formula is not sufficiently clear and precise ECJ in Case C-273/00 ( Sieckmann )

21 OLFACTORY TRADE MARKS 2. A Trade Mark must be capable of being graphically represented does a deposit of an odour sample in the Trade Mark Registry suffice to graphically The European Court of Justice (ECJ) has held: represent it? A deposit of an odour sample does not constitute a graphic representation. Moreover, an odour sample is not sufficiently stable or durable ECJ in Case C-273/00 ( Sieckmann )

22 OLFACTORY TRADE MARKS 3. The graphical representation requirement is out of date Revision of the European Trade Mark System ( ) - Proposal for a Regulation amending Council Regulation (EC) 207/2009 on the Community Trade Mark - Proposal for a Directive to approximate the laws of the Member States relating to trade marks 22

23 PATENTS An The odour product as giving such is off not that eligible odour' for may patent be protection patented, provided it meets the following requirements: i. Novelty An invention must be new in order to qualify for patent protection ii. Non-obviousness An invention must involve an inventive step in order to qualify for patent protection iii. Industrial application An invention must be made (or used) in some kind of industry in order to qualify for patent protection 23

24 PATENTS 3. The odour' must be new and involve an inventive step Odours excluded from patentability: Aesthetic olfactory creations (i.e. perfumes) Existing natural olfactory products or substances They lack inventiveness They lack novelty Odours that eventually could be patent protected: New odours bringing about a given technical effect, such as : Inhibiting the growth of micro-organisms in the liquid body secretions 24

25 PATENTS Odours that eventually could be patent protected: New odours bringing about a given technical effect, such as : Inhibiting the growth of micro-organisms in the liquid body secretions assisting the development of an olfactory note evoking the smell of laurel bay being synthetic substitutes for natural olfactory substances 25

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27 COPYRIGHT Copyright Subject Matter - Work of Authorship Copyright subsists in original works of authorship What does work of authorship mean? Berne Literary Convention works (i.e. for a novel, the Protection a poem, of the Literary lyrics of and a song, Artistic etc.) Works (1886): Musical works (i.e. a song) Every Dramatic production works (i.e. in a the performance literary, musical, on the stage, scientific on and TV or artistic in a movie) domain, irrespective of the Artistic form works of its (i.e. expression a painting, a sculpture, a photograph or any other product of the fine arts) Films Other 27

28 COPYRIGHT Copyright Subject Matter - Originality Copyright subsists in original works of authorship What does originality mean? Originality Novelty Originality Labour, Skill or Effort ( sweat of the brow doctrine) Originality means that the work originates from the author - The work has not been plagiarized - The work is the author s own intellectual creation - The work is creative - The work bears the stamp of the author s personality - The work is unique (if it isn t, then it is not original because it is not sufficiently creative) 28

29 COPYRIGHT is the smell of a Perfume (or any other smell) eligible for Copyright Protection? The debate has been raised in Continental Europe The Netherlands YES. The Dutch Supreme Court has held that a perfume is a work of the mind susceptible of copyright protection, provided that sufficient proof is submitted on its originality. Lancôme Parfums v. Kecofa BV (2006) Perfume: Trésor de Lancôme France YES / NO. While a number of lower Courts say YES, the French Supreme Court says NO. Bsiri-Barbir v. Société Haarman & Reimer (2006) Perfume: Dune de Dior 29

30 is the smell of a Perfume (or any other smell) eligible for Copyright Protection? The debate is not over Other jurisdictions (USA, UK) COPYRIGHT 30

31 Thank you very much for your attention! Sergio BALAÑÁ-VICENTE - Attorney sbalana@balanavicente.com 31