FOR IP PROFESSIONALS

IP protection in the European Union

You can register a trade mark, a design or a plant variety with a single right that has effect across the European Union (EU).

The EU has a sophisticated IP system which can be complex and expensive, given the number of different national and EU-wide rights available. Filing fees can be significantly more expensive than those in Australia.

Patent applications can be filed with the centralised European Patent Office (EPO), resulting in a bundle of national patents. IP rights can also be registered on a national basis across the EU in individual countries of interest to an exporter, such as Germany or France. Accordingly, a large number of rights can be obtained and enforced on a national or EU-wide basis.

The Office for Harmonization of the Internal Market (OHIM) is responsible for registering trade marks and designs in the EU.

You should formulate a specific IP strategy for the EU, decide whether to seek registration in all European markets with an EU-wide right and/or file individual applications in key markets within the EU.

Trade marks

Businesses can apply for either a national trade mark, for example covering Germany only or a Community Trade Mark (CTM) through the Office for Harmonization of the Internal Market (OHIM). The CTM covers all EU member states and may only be registered, assigned or cancelled in respect of the whole of the EU. Likewise, a national trade mark can only be registered, assigned, cancelled or enforced in the country in which it was granted.
Member states designate which of their courts have jurisdiction over CTMs. CTM courts have exclusive jurisdiction over infringement, declarations of non-infringement and invalidity of CTMs.
Unregistered trade marks can be protected in some EU member states on a national basis.
Many member states of the EU provide for the protection of non-traditional marks such as three-dimensional shapes, sounds and smells.

Patents

Businesses can apply for a national patent and/or a European patent designating particular contracting member states. European patents are granted by the EPO. A European patent application does not result in a single patent; after being granted the application becomes a bundle of national patents.
A national patent can only be enforced in the country it was granted in, and a European patent can only been forced in the European countries for which the patent has been designated.
Political discussions are currently under way to proceed with a unitary EU Community patent, and to create a central European court that would have jurisdiction over enforcement claims brought under both European and EU Community patents.
Certain types of subject matter are not patentable in the EU.

Designs

Businesses can apply for national design rights through national IP registries and/or community design rights through OHIM. The process is relatively quick, with no requirement for a substantive examination.
Unregistered designs are also granted automatic protection in the EU for three years from the date the design is first made available to the public.

Copyright

Like Australia, copyright protection in the EU is automatically conferred on the author. There is no registration process.
Generally copyright and unregistered designs need to be enforced on a national rather than EU basis.

Plant vareties

Protection of plant variety rights is available in the EU and is administered by the Community Plant Variety Office.
Customs authorities provide cross-border measures allowing for the detention of infringing goods.

Professional advice

If you are considering exporting to the EU, it is recommended that you contact an IP professional experienced in EU IP law and trade to advise on local IP, customs and other laws regulating imports and trade in the EU. Australian IP professionals can facilitate such contact.

This information has been developed in conjunction with Griffith Hack Lawyers and Bristows (UK).