Center for Advanced Study & Research on Innovation Policy


CASRIP Newsletter - Winter 1995, Volume 2, Issue 1


For the past few months, I have been enjoying the Bavarian way of life in good old Munich. In addition to toiling over the enigmatic grammatical rules der deutschen Sprache (no, there is no 'of' missing), much of my time has been spent at the Max Planck Institute for Foreign and International Patent, Copyright and Competition Law providing research assistance to CASRIP. Of course, this has also been a great opportunity to indulge my own interests in comparing international intellectual property laws.

CASRIP asked me to provide a synopsis of some of the "hot issues" in European intellectual property law. Though a few paragraphs barely reveal even the issues involved, the following is intended to provide a brief overview of interesting topics within the European legal community.

Community Trademark System

Since the special session of the European Council in Brussels adopted a joint resolution in October 1993 designating Alicante, Spain as the location for the Office for Harmonization in the Internal Market, one of the office's functions will be to operate as the future Community Trade Marks Office, a key focus within the European Community has been the successful implementation of a Community Trade Mark (CTM) system. Already, the President and two Vice Presidents of the Office have been appointed. Furthermore, in accordance with the 1988 EC Directive, almost all Member States have revised their national trade mark laws. Such harmonization helps avoid difficulties in trade.

Inevitably, however, superimposing a CTM system on national trade mark laws and practices leads to conflicts. Recent 1994 cases decided by the European Court of Justice (ECJ) forebode some of the issues the CTM system and national courts will face. For example, the Ideal Standard case deals with the interrelation between the free movement of goods and the exercise of trade mark rights in the context of parallel imports. In Ideal Standard, the ECJ held that national trademark laws allowing imports to be banned in cases where confusion with domestic goods is likely are permitted under Art. 36.

Other cases, such as the Clinique case, concern conflicts between free movement and national marketing rules. Here, one holding by the ECJ stated that national marketing regulations are subject to Community rules on free movement even where such regulations are applied indiscriminately to both domestic goods and imports.

Thus, cases such as these show that the new CTM system will have a direct influence on the practice within Member States. To what extent remains to be seen.

European Patent Office (EPO)

In 1994, the EPO published its 1993 annual report. Of the total number of applications received by the EPO, the United States provided the most applications with 29.3%. Germany and Japan followed with 19.3% and 18.1% respectively. On these applications, Germany was designated in 97.3% of the applications, the United Kingdom in 93.0%, France in 91.2% and Italy in 73.3%. In 1993, 36,667 patents were granted. German applicants received the most patents with 24.2%, followed by Japanese applicants with 21.9% and U.S. applicants with 21.69%.

European patent applications and patents are now extendable to Slovenia and Lithuania. European PCT applications may also be extended to these countries as long as both the EPO and the desired country or countries were designated in the international application. These applications will have basically the same effect in these countries as national patent applications and nationally granted patents.

Maria Trinidad Arriola

In the wake of the harmonization of European industrial property law, the Max-Planck-Institute (MPI) drafted a proposal for the creation of a European utility model. The draft's prime objective was to accord small and medium-sized enterprises a quick and cheap instrument to protect their inventions throughout the European Union. In November 1993 this detailed draft was discussed by representatives from each Member State at a symposium. The participants wholeheartedly welcomed the draft. Moreover, they were pleased to learn that the European Commission planned on producing a Green Paper on this topic in the following year.

In June 1994 the AIPPI took this current interest in utility models in Europe along with the recent adoption of utility model laws in various countries as an opportunity to reexamine this issue. In particular, it focused on three questions: the subject matter of protection, the requirement of absolute or relative novelty and the requirement for a condition additional to that of novelty. Due to grave discrepancies in existing national utility model laws and the absence of such laws in other states, participants could not agree on the requirements for a utility model law. Thus, a resolution was not adopted.

The following month, the Charted Institute of Patent Agents (CIPA) organized a symposium on, as they called it, "second tier protection". This initiative was seen as a response to the previous symposium organized by the MPI. It was of great interest to industrial property circles outside the United Kingdom, especially since the United Kingdom is the only Member State in the European Union which does not have a utility model system. As expected, many participants representing British industry opposed the introduction of a European utility model. However, representatives of CIPA and the British Patent Office saw a need for the introduction of a utility model to benefit small and medium-sized firms. These two views were expressed in the final Communique.

In light of the disparate views on this topic in Europe as well as the recent change in the European Commission's leadership, the fate of a European utility model law remains uncertain. Further discussions are necessary. Ultimately, one hopes such deliberations will lead to a fruitful conclusion. Definitely an issue to watch for!

Michael Kern

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