Legal

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This Blog is written by Bhagyashree Dutta from Amity University, Mumbai. Edited by Prakriti Dadsena.

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ABSTRACT

“Venice was the first to have continuously and constantly applied certain rules to patents of invention instead of granting an occasional isolated monopoly. Among these rules were these: the protection always was extended to an inventor, provided that his invention was recognized as useful; that the patent term was limited; that the right was transferrable inter vivos and mortis causa; and that it was subject to a compulsory license in favor of the state, that a patent was forfeited by failure to use it within certain term and that it failed in cases of prior knowledge within the territory of the Republic.” – Mandich[1]

The relationship between intellectual property laws and the European Union is profoundly entwined with the history of intellectual property rights. While intellectual property rights might seem to be a modern-day concept, it can actually be traced back to the 600 BCE, in Greece (which is now a part of the European Union). The next major source is pinned back to 1400s, when an Italian inventor was granted the world’s first patent with legal protection, again a part of the European Union.

The EU’s role in the arena of IPR has been significant and still remains.

INTRODUCTION

Over the centuries, the world has evolved exceptionally in all aspects. We have learnt, grown and outgrown umpteen aspects of living. If we start to dig into how we evolved, what led to such progress and what makes us progress even today, we may find a variety of answers to them, but if we notice closely one thing that remains mutual among all those answers is: innovation.

Innovation has led us to the comfortable world we live in, life is very different from what it used to be even ten years down the lane and it will be different in the future.

Unique ideas, thoughts, creativity, vision all these lead to innovation and are a by-product of the intellect. The human mind is the main source of innovation and it is ideas and their implementation which connects both of them. In a nutshell, such ideas executed into innovation later are what we now know as intellectual properties. Without which existence would be mere survival and not living, which makes it even more important to protect intellectual properties along with their creator’s rights.

Intellectual property ‘rights’ (IPR) are the rights for the creation of one’s mind. Intellectual property ‘laws’ are legal and institutional devices which seek to protect such creations: inventions, discoveries, works of art, literature, designs also known as ‘intangible asset’. They, therefore, encourage creation and innovation by providing protection as an incentive to create more. The elastic nature of intellectual property, over the years, has widened its scope beyond patents, copyrights, trademarks and industrial designs to geographical indicators, trade secrets, etc.

RELATIONSHIP BETWEEN IPR AND THE EUROPEAN UNION (EU)

The relationship between intellectual property laws and the European Union (EU) is as old as the concept of intellectual property right itself. The first evidences of IPR regulations are majorly traced back to parts of Europe, it is known to have the roots of laws and regulations relating to IPR. Venice was considered the cradle for intellectual property systems. From guilds, to the European Commission to the WIPO, not just EU but the world has come a long way into the progress of IPR and laws regulating them.

EU businesses are world leaders in sectors of clothing, luxury goods, accessories and medicines. Intellectual property secures a crucial position in EU’s economy. As of September 2019, the European industries dependent on IPR, also known as IPR-intensive industries accounted for approximately 45% of EU’s total GDP, generate 38.9% employment and are worth €6.6 trillion annually to economy of EU.[2] And it is due to the business IPR provides the EU with, it is essential for them to protect IPRs and retain the success of EU’s single market, for as long as possible and efficiently. Protection of such creativity and innovation acts as an incentive, aids in generating more employment and improving competitiveness, which are the key elements required in the global economy, especially for EU whose economy is largely based on this. Absence of effective IPR enforcements will discourage creativity and innovation, hampering not just EU but the world economy as a whole.

STATUTORY PROVISIONS

EU is neither a federal government, nor an intergovernmental organization, it is a supranational institution born out of the treaties signed by its 27 Member States. The regulations governing these member states as a whole are the EU regulations. The EU laws directly apply to its member states, and in case of a conflict between the national laws and the EU laws, the EU laws have often superseded. In addition to treaties and laws, EU also adopts specific regulations and directives, regulations are directly binding on the Member States and no special procedure or provision is required in order to transfer those into the national laws, whereas directives provide with some room for alteration.

The relevant IPR laws in the European Union are divided into three parts, i.e., the national laws, the international laws and the EU laws themselves.

The international laws are chiefly international treaties, which EU has ratified. The World Intellectual Property Organization (WIPO), a UN agency, deals with the same. All the international treaties were signed in Europe and are said to be essentially based on EU’s customary laws. The first international convention on the protection of IPR was signed in Paris in March, 1883, and is called the Paris Convention for the Protection of Industrial Property. The initial member states of this convention were: Belgium, Brazil, France, Guatemala, Italy, the Netherlands, Portugal, El Salvador, Serbia, Spain and Switzerland. All the members are among the 27 member states of the EU. This depicts the longstanding relationship between IPR laws and not just the EU regulations, but EU as a whole. The national laws in EU dealing with the protection and regulation of IPR are all in line with the international treaties, just with a few modifications to match the circumstances of each member states.

The EU is active in multilateral and bilateral negotiations protecting IPR not just in EU, but all over the world. Intellectual Property Rights are also recognized under Article 17(2) of the EU Charter of Fundamental Rights.

IPR AND EU LAWS

1. Copyright:

It is a protection granted to individuals or businesses wanting to protect their artistic and creative innovations, such as music, art, painting, books, movies, etc. It grants the creator certain exclusive rights in relation to his/her creation.

International law:

All the 27 Member States, i.e., the whole of EU is party to the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention, 1886). This gives all persons (natural or legal) in EU an automatic copyright protection, so if they have copyright protection in any other country but under the Berne Convention (i.e., the other country is also a party to the Berne Convention), that person/business will have automatic and equal protection in the EU.

European Union Law:

• Many copyright norms exist in the EU, majorly in the form of Directives. These Directives are the laws of the Union, adopted by the EU Member States (EU-27).

• The Directives are in line with the international convention.

• They are largely harmonized in the EU among its member states, although there exist some differences in these laws from country to country. Harmonization of laws, as much as possible has been a constant goal for EU.

• These directives are implemented by the Member States, and includes harmonization of – the legal protection, the term of protection, the adaption of the rights and the enforcement.

Key Copyright Directives:

(a) Copyright Term Directive – It is a directive on the term of protection of copyright and certain related rights. It is a consolidated version of the EU Directive on harmonizing the term of copyright protection. It offers 50-70 years of protection throughout the EU, depending on the creation.

(b) The EU Information Society Copyright Directive – This directive mainly focuses on copyright exceptions unlike ‘Copyright Term Directive’ which focuses on the term of protection (providing with a right). The directive was enacted in order to implement the WIPO Copyright Treaty and harmonize aspects of copyright law within the EU, mainly the copyright exceptions. It also provides with punishments and penalties for copyright infringement.

(c) Directive of Copyright in the Digital Single Market – This is the latest directive, adopted in 2019. It is a step towards EU’s Digital Single Market Project, and extends the existing copyright laws to the same. The objective of the directive is to ensure that the rights and obligations of the intellectual property right holders (copyright holders to be precise), in relation to copyright protection are guaranteed even on the internet platforms, such as Facebook, Instagram, YouTube and Google News.

2. Trademark:

Trademark is a “word, phrase, symbol, or design, or a combination thereof, that
identifies and distinguishes the source of the goods of one party from those of others.”[3]

It serves as a brand identifier, for instance, company name, logo, tag line can be trademarked. They are usually in the form of words, phrases and pictures, however, not limited to it.

International law:

All the EU Member States are party to the Madrid Union. The Madrid Union is a union of States who are a signatory of the Madrid Agreement concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement (known as the Madrid Protocol). It is a treaty between member countries that allows for an efficient procedure to file international registration of trademarks.

It enables applicants to file a single application for their trademark, and the protection so gained is effective throughout the Member States and the contracting parties (states) of the Madrid Convention. The Paris Convention also deals with trademarks and EU Member States are parties to the same.

European Union Law:

One may register their trademark either under the national law of a Member State (where they are seeking such right) or under the EU law. Registering under the EU law will provide them with ownership, rights and protection throughout the European Union, in the form of EU Community Trademark (CTM).

The European Union Trademark Regulation (EUTMR) is the governing law for the same across the entire EU. The Office for Harmonization in the Internal Market (OHIM) regulates the CTM.

This system is a component of the Harmonization of IPR laws in EU, it creates a unified trademark registration system in EU, whereby a single application provides protection in every EU Member State.

However, if any individual or business wishes to apply only in a single country in the EU, they have the option of applying there in accordance to the National Law of that country. Further information about the same is easily accessible through the OHIM.

3. Patents:

“A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem.”[4]

To get a patent, technical information about the invention must be disclosed to the public in a patent application.

The Patent Law in EU is very diverse and extensive, it is the least harmonized law among all the IPR laws in the EU. There are multiple directives and regulations regulating patent in the EU. The European Union Member States follow the “first to file” approach, wherein whoever files the patent first gets priority, as opposed to who invented it first.

Legislation:

There does not an EU-wide patent legislation, unlike the other IP laws. The patent protection is only territorial (national/regional) in nature. This entails that patent in EU can only be obtained State-wise, in each Member State where such protection is desired and are enforceable only in the respective State where the patent is granted. A patent can however be filed through multiple ways.

International Law:

The Patent Cooperation Treaty (PCT): The PCT, which is signed by all EU Member States, permits an inventor to prepare and file a single international application that has the same effect as a national application filed in each PCT Member State named in the international application.  Although the PCT simplifies application filing procedures, it is crucial to remember that patent protection in each of the designated countries must still be obtained through national procedures and in accordance with national law. The Paris Convention also deals with patents and EU Member States are parties to the same.

European Patents:

European Patent Convention institutes the European Patent Office (EPO) and provides an autonomous system for granting of European Patents. All the EU Member States are parties to this convention. It establishes a centralized patent examination and granting process, the same is administered by the EPO. Patents granted under this Convention are known as European Patents. The individual/business may file a single application with the EPO in Munich or its branches, or at a national patent office of any of the Contracting States. This does not provide the applicant with an EU-wide patent, but only in the states designated by the applicant in the application. Provided the applicant has taken necessary steps to validate the patent in each of the designated states. This usually comprises making any necessary translations of the application’s contents into the specified state’s official language(s) and paying any applicable costs. Each recognized patent is only enforceable in the Member State where it was issued.

European National Patents:

An applicant may straightaway choose to file the patent application individually in the Member State he/she wishes to obtain the patent right in, instead of applying through the abovementioned methods.

Most nations have their own laws regulating patent. However, the provisions are more or less the same. A person or organization can apply for patents in other countries within one year of filing a patent in any country that is a member of the Paris Convention, and claim the filing date of the first application as the effective filing date for those applications, according to the Paris Convention for the Protection of Industrial Property. This is significant because when a corporation claims priority to an earlier application, the earlier application’s filing date is used as the filing date for all subsequent priority applications.

Example: Intellectual Property Code, 1992 of France.

4. Trade Secrets:

According to WIPO, “Trade secrets are intellectual property (IP) rights on confidential information which may be sold or licensed.”

In general, to qualify as a trade secret, the information must be:

• commercially valuable because it is secret,
• be known only to a limited group of persons, and
• be subject to reasonable steps taken by the rightful holder of the information to keep it secret, including the use of confidentiality agreements for business partners and employees.

Such information can be technical, commercial, or financial information that is not public information. Unauthorized acquisition, use, or disclosure of such secret information by others in a manner that is inconsistent with honest commercial practices is considered an unfair practice and a violation of trade secret protection.

International Law:

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is a relevant international agreement on aspects of trade and intellectual property, between the member nations of the World Trade Organization (WTO).

Article 39 makes the contracting states responsible for the protection of undisclosed information. Through application of the laws on unfair competition or practices, it permits sanction against procurement, usage or disclosure of trade secret.

European Union Law:

EU Directive 2016/943 of the European Parliament and of the Council of the 8th of June 2016 also known as the EU Trade Secret Directive, 2016 regulates trade secrets. The directive protects undisclosed business information such as trade secrets and prohibits their unlawful procurement, use and disclosure. The Directive establishes baseline criteria for trade secret protection across the EU, and it has been adopted by practically all member countries. Trade secrets now have the same legal status as other intellectual property rights as a result of the Directive.

Some Member States have complied with and transformed this directive into their National Law. The trade secrets are regulated by the National Act of each state, and in absence of the same the Directive of 2016 is applicable.

Example: Spain adopted the Directive by implementing the Trade Secret Act, 2019. The Trade Secret Act entails what are considered legitimate and illegitimate acts and comprises both substantive and procedural laws. The law also governs co-ownership of trade secrets and specifies the terms under which they can be licensed and sold.

Community Designs:

Industrial Designs are known as Community Designs in Europe. Community Design is a type of industrial property which is protected under IPR. According to Article 3 of the Design Regulation, a community design is defined as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation”.

Community designs, in essence, preserve the ornamental or aesthetic features of items, i.e., the product’s outer look. In general, businesses must demonstrate that their product is unique, novel and original in order to acquire design protection under international, EU, and state law. Design rights cover innovative and unique visual characteristics of a product or its packaging, and a product’s design can be protected by a registered trademark, design protection, and/or a patent all at the same time.

Each type of intellectual property rights serves a distinct purpose and is not mutually exclusive.

International law:

The EU is a signatory of the Hague Agreement Concerning the International Registration of Industrial Designs, which means it has consented to the Geneva Act of the Hague Agreement. WIPO’s Hague System and the Office for Harmonization in the Internal Market’s (OHIM) community design system are linked by the Geneva Act of the Hague Agreement (located in Alicante, Spain).

European Union Law:

The 27 Member States of the EU have adopted the Directive 98/71 on the legal protection of designs and Regulation 6/2002 on Community Designs also known as the Community Design Regulation. This enables the individuals to receive an EU-wide design protection.

National Law:

The Directive is applicable throughout the EU. However, it is the discretion of the Member State if they wish to formulate a special regulation. An individual may choose to register their design with a Member State in order to acquire national design protection in addition to community design protection.

6. Geographical Indications (GI):

The World Intellectual Property Organization (WIPO) defines a geographical indication (GI) as “a sign used on goods that have a specific geographical origin and possess qualities, a reputation, or characteristics that are essentially attributable to that origin.”

A sign must identify a product as originating from a specific location in order to operate as a GI. Furthermore, the product’s traits, characteristics, or reputation should be primarily owing to its origin. There must be an obvious link between the product and its original site of production because the attributes are dependent on the geographical location of production.

International law:

There are a number of treaties that deal with geographical indications and EU is a party to all of them. These treaties are administered by the WIPO and the TRIPS Agreement of the World Trade Organization (WTO).

• The Paris Convention for the Protection of Industrial Property

• Madrid Agreement for the Repression of False or Deceptive Indications of Sources on Goods

• Lisbon Agreement for the Protection of Appellations of Origin and their International Registration

• Madrid Agreement Concerning the International Registration of Marks

• Protocol Relating to Madrid Agreement Concerning the International Registration of Marks (which also provides for the international registration of certification marks)

• TRIPs Agreement (Article 22-Article 24)

European Law:

The EU introduced a procedure for businesses to obtain unitary GI protection throughout the 27 Member States in 1992.

Wines, spirits, and mineral waters all have their own GI protection in the EU. If the EU has not yet adopted laws for a particular GI, it may be registered as a certification or collective mark under national law and/or as a Community Trademark.

The EU has 4 quality scheme regulations governing GI as of now – the Agricultural Products and Foodstuff Regulation, the Wines Regulation, the Spirits Drink Regulation and the Aromatic Wines Regulation.

Enforcement:

The EU adopted the Action Strategy for the Enforcement of Intellectual Property Rights, in June 2006. The policy establishes customs and border controls cooperation, cooperative actions in third countries, international enforcement coordination, and public-private enforcement partnerships.

The European Commission (EC) and other such EU bodies cooperate with the Member States in order to ensure that IPRs are protected effectively and efficiently throughout the EU. The EC is responsible for – harmonizing IP laws throughout the EU; examining whether national authorities have correctly implemented EU IPR legislation; monitoring and combating IPR infringements in the single market; and identifying and resolving flaws in the EU regulatory system.

Apart from the EC, EU Intellectual Property Right Office (EUIPO) also plays a vital role. In addition to its general functions, it also hosts the European Observatory on Infringement of IPR which happens to be a crucial event in the field of IPR.

The Member States are equally significant in enforcement of IPR effectively. The European Union’s Enforcement of IPR Directive is an effective tool in governing IPR.

CONCLUSION

The EU’s IPR difficulties and complications are a reflection of its size, rapid expansion, and different Member State economies. As the EU harmonizes intellectual property rights and implements competent and consistent enforcement mechanisms across all Member States, it gives the market clarity and multinational enterprises the tools they need to secure their intellectual property. The EU market may be both dynamic and profitable as long as enterprises take efforts to protect their intellectual property.

Trademarks, patents, geographical indications, protection of plant varieties and farmers’ rights, trade secrets, semi-conductor designs, and industrial designs are all covered under Indian IP laws. But certain rights, such as unregistered designs and utility models, that are currently available in the EU are not available India, which have proved to be of great importance world-wide.

There are certain drawbacks within the Indian IPR legislation, particularly in the area of patent law, where restrictive patentability criteria paired with difficulties enforcing issued rights can generate complications. Furthermore, the exceedingly broad criteria used to give compulsory licenses for patent revocations make effective patent protection difficult in India. This is especially true in the pharmaceutical and chemical industries, but it also applies to other industries where local innovation is encouraged.

India, is one of the most populated countries, a place where a huge number of startups are taking birth, where art and handicraft is inculcated in its culture, it needs to have a robust IPR legislation and enforcement in order to rise further in the same field.

REFERENCES

[1] G. Mandich, Venetian Patents (1450-1500), (2002) Journal of the Patent Office Society

[2] Joint study by European Intellectual Property Office (EUIPO) & European Patent Office (EPO)

[3] EU Community Trademark Regulation

[4] World Intellectual Property Organization (WIPO)