Trademarks, Designs and Copyright
Legal Aspects of Technology Management - NIT Northern Institute of Technology Management, Hamburg · part of my Technology Management MBA · study notes for revision.
The session that follows the introduction to the IP system spends its evening on the three rights a product manager actually touches on a launch day. The timetable says it plainly: an hour on designs, an hour on trade mark law with group work in it, and a final hour that puts copyright and licensing agreements together. Patents get their own treatment elsewhere; this is the part of IP that covers what a product looks like, what it is called, and the written, drawn, filmed and coded material that surrounds it.
The reason the three are taught in one block is that they overlap on a single object without ever doing the same job. Take one physical product. Its shape and surface can be a design. The name and logo on the box can be a trade mark. The manual, the promotional film, the packaging artwork and the embedded software are works under copyright. Three rights, three different questions, three different offices and three completely different lifespans, all attached to one thing on a shelf.
The last block then asks the commercial question that follows from all of it. Once you hold a right, you can keep it, sell it, or let somebody else use it. Letting somebody else use it is a licence, and the whole art of licensing is deciding how much of the right you are handing over: for how long, for which territory, for which uses, and whether the other side may pass it on again.
1 · The three rights side by side
Section titled “1 · The three rights side by side”The introduction slide gives each right a one-line job description, and those lines are worth memorising because they are the fastest way to sort a real problem into the right box.
The comparison slide from the second IP session adds the numbers, and the contrast between them is the single most useful table in the whole block.
| Right | How long it lasts, in the deck’s own comparison |
|---|---|
| Design | 5 years plus prolongation, and it can last for a maximum of 25 years |
| Trade mark | 10 years plus prolongation, and it is everlasting if the fee payment is done |
| Copyright | 70 years after the death of the author or authors, plus 25 years if a work in the public domain is reused |
The second session also makes a point about how protection is obtained that applies across all three: the routes differ from right to right, and they can be registered or not registered, acquired by use or by application and examination, and national or international. Because the routes differ, the deck’s conclusion is that a company needs an IP strategy rather than a habit.
2 · Designs: the appearance of a product
Section titled “2 · Designs: the appearance of a product”The deck opens the design hour with a definitions article, headed Article 3, Definitions. The slide itself does not name the instrument, but the legal-basis slide for designs points at Regulation (EC) No 6/2002 on Community designs and its implementing regulation, alongside the WIPO and EUIPO pages for industrial and Community designs. Three terms are defined, and each one carries a trap.
- The appearance of the whole or a part of a product
- Resulting from the features of, in particular, the lines, contours, colours, shape, texture and materials of the product itself
- Or from its ornamentation
- Note the words in particular: the list is illustrative, not closed
- Any industrial or handicraft item
- Including parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces
- But excluding computer programs
- A product composed of multiple components
- Which can be replaced, permitting disassembly and re-assembly of the product
- This is why a spare part can have its own design
- Design law is about how a thing looks, down to a single part of it
- It reaches packaging, typefaces and graphic symbols, so it is far wider than product shape alone
- Software is deliberately outside the definition of a product
The exclusion of computer programs from the definition of a product is worth pausing on, because it draws a line that the copyright section picks up again. A program is not a product for design purposes, so you do not protect code through design law. You protect it as a work under copyright.
What has to be true for a design to be protectable. The summary slide in the second session states the requirement in three words: an industrial design must be new or original and nonfunctional. It refers to the ornamental or aesthetic aspects of an article and can consist of three-dimensional features, such as the shape or surface of an article, or two-dimensional features, such as patterns, lines or colour. The consequence is spelled out: because an industrial design is primarily of an aesthetic nature, any technical features of the article to which it is applied are not protected. That last sentence is the whole boundary between design law and patent law in one line.
How long it lasts, and one filing trick. The comparison slide gives the design term as 5 years plus prolongation, up to a maximum of 25 years. And the closing links slide mentions a practical device that matters for anyone launching at a trade fair: exhibition protection, a six-month grace period after disclosure, which is usable only for trade marks, designs and utility models. In other words, showing a new look at a fair does not automatically destroy your chance to file, provided you move inside that window and are in one of those three categories.
3 · Imitation without a registered design
Section titled “3 · Imitation without a registered design”Between the design block and the trade mark block the deck inserts a short section on unfair competition and unfair imitations, and it earns its place: it shows that a distinctive appearance can be defended even where the conversation is not about a registered right. The examples given are all about a look that the market has learned to recognise.
The Rolex entry is the instructive one because of how it is written. It is not one feature but a list of features taken together - bezel, glass, crown, bracelet - and it is the combination that makes the appearance recognisable. That is exactly the way you should describe your own product’s look when you brief a lawyer, whether you end up filing a design or arguing about an imitation.
4 · Trade marks: the sign that says where it came from
Section titled “4 · Trade marks: the sign that says where it came from”The trade mark hour starts from a one-sentence definition and then immediately complicates it in a useful way. Trade marks are signs used in trade to identify products. Expanded: a trade mark is the company’s symbol which, from the perspective of customers, distinguishes the company’s products or services from those of competitors. The customer’s perspective is the operative part. A sign is a trade mark because of what it does in a buyer’s head, not because of how much the company likes it.
Three sharp points follow, and each one catches people out.
Can you have a trade mark without registering it? In principle yes, but the deck makes clear how hard it is. For protection without registration, most countries require a long use and trade mark acceptance with a reputation of more than 75%, or in some readings 95%, of the public, which is what notorious awareness means. And it gives the counter-example that kills most hopeful arguments: a reputation of 25% to 30% in the industry and the target group is usually not sufficient for non-registered protection. Being well known to your own customers is not the test; being known to the public at large is.
What can be a trade mark. The deck shows the kinds of registrable marks as a picture and points at the EUIPO examples page, so the enumerated list on that slide is not something I can reproduce faithfully. The summary slide from the second session does give the substance: a trade mark is a distinctive sign that identifies goods or services produced or provided by an individual or a company, its protection blocks unfair competitors and counterfeiters from using similar signs, and it can consist of words or a combination of them, letters and numerals, or of drawings, symbols or three-dimensional signs. The deck also uses the phrase form protection for the three-dimensional case.
The law it sits on. Four instruments are named for trade marks, plus two more from the second session.
| Instrument | What the deck says it does |
|---|---|
| WIPO Trademark Law Treaty (TLT) | Standardises and streamlines national and regional trade mark registration procedures, that is harmonisation |
| Regulation (EU) 2017/1001 of 14 June 2017 on the European Union trade mark | Codification of trade mark law within the EU |
| Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 | Rules for the filing of EU trade mark applications at EUIPO |
| Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 | The procedural rules for registration of EU trade mark applications by EUIPO |
| Paris Convention for the Protection of Industrial Property, 20 March 1883 | Named again as a legal basis for trade marks |
| Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks | The agreement behind the classification used in every application |
Why any of this is worth money. The deck spends a slide on the economic power of a brand, showing a ranking of the most valuable brands by brand value in 2020 in billions of US dollars, and then adds examples that make the point about names more vividly than any ranking. Two people founded a site in early 2004 to promote their band; in July 2004 News Corp bought it for 580 million dollars, after which it ran at 12 billion visits a month and 60 million registered users. And the domain sales it lists from 2005 and 2006 are a straight price list for a name: sex.com at 12,000,000 dollars, cafe.com at 500,000, circus.com at 350,000 and suspects.com at 11,000.
5 · Absolute grounds for refusal
Section titled “5 · Absolute grounds for refusal”The benefit of registering is stated first: proof of priority. The condition for getting there is equally blunt: no absolute or relative grounds for refusal. Absolute grounds are the ones the office itself applies, looking only at your sign and the goods you claim, without any third party being involved.
- No distinctive character
- It is descriptive of the goods and services for which it is to be registered
- It consists only of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics of the goods and services
- Misleading or immoral signs
- All national coats of arms, national flags and similar national emblems
- Official test or rifle marks
- And a separate requirement running through the whole application: no bad faith
The middle bullet is the one that most product names die on. If your candidate name is nothing but a statement of what the product is, where it comes from or how good it is, it is not identifying your goods, it is describing any goods of that kind, and no office will let one company monopolise it.
6 · Relative grounds, opposition and the collision check
Section titled “6 · Relative grounds, opposition and the collision check”Relative grounds are about somebody else’s earlier right, and the procedural twist here is the thing to remember for an exam and for real life alike.
Notice the shape of the last box. The deletion is not necessarily total. It bites on those goods and services which conflict, which is why the list you file matters so much, and why section 7 is not paperwork.
How a collision is judged. The deck gives three factors for the check of conflict.
How to reduce the risk before you file. Two searches, in this order and both before the application goes in: an identity search and a similarity search. The term you want to register is searched for identical registered marks in the public registers of the German Patent and Trade Mark Office (DPMA), the European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organisation (WIPO). The deck lists the databases it uses: TMview at tmdn.org, WIPO’s Global Brand Database, the DPMA register, and EUIPO eSearch.
7 · Goods, services and the Nice Classification
Section titled “7 · Goods, services and the Nice Classification”This is the slide that quietly decides how strong your registration ends up being. A trade mark is never registered in the abstract; it is registered for a list of goods and services, and that list is what you own.
The tool for getting the list right is the Nice Classification of Goods and Services. The deck says assistance in drafting the list is provided by the official explanations on the Nice Classification, that individual goods and services can also be searched in the official databases, and it names the Nice classification database at tmclass.tmdn.org. The Nice Agreement itself appears in the second session’s list of legal bases for trade marks.
8 · The concept of a trade mark: what to settle before filing
Section titled “8 · The concept of a trade mark: what to settle before filing”Before any of the legal machinery starts, the deck runs a preliminary consideration checklist. It is half legal and half commercial, which is the honest picture of how a brand decision is really made.
| The question the deck asks | What it is really testing |
|---|---|
| Own trade mark, or a permitted imitation? | Whether you are creating something or riding on something |
| Is registration worthwhile at all? | Cost against the value of the exclusivity |
| Is the mark original, or does it describe the product or service? | Original distinctiveness, which is the absolute-grounds question asked early |
| Are there similar signs of competitors on the market? | Distinctiveness of the mark from other marks, which is the relative-grounds question asked early |
| What is the investment in creating the brand? | How much value would be stranded if the mark had to be dropped |
| What is the planned marketing budget? | The same question from the spending side |
| What percentage of the target group can be reached? | How far the mark can realistically build reputation |
| What is the projected turnover of the brand? | And the deck’s own emphatic note here: documentation |
That last instruction, to document, is not an afterthought. Reputation and use are things you may one day have to prove, and you can only prove what you recorded at the time.
How strong the protection ends up being. The deck plots a two-by-two of distinctive character against reputation, with reputation running up to notorious awareness, and reads four levels off the grid: weak protection, two medium protection boxes, and strong protection. The grid is a picture in the deck, so I will not claim to know exactly which corner is which, but the shape of the idea is unmistakable: strength comes from the two things together. A mark that is inherently distinctive and widely known sits at the top; a mark that is neither is barely worth enforcing.
The application checklist. The conclusion slide compresses the whole hour into a sequence: decide the type of trade mark; run the identity search, the similarity search and searches against domains and company names; then registration in Germany, the EU or internationally; and after that the ongoing work, deadline monitoring and renewal, trade mark monitoring, and use.
9 · Group work: a prior rights agreement for two dog-food brands
Section titled “9 · Group work: a prior rights agreement for two dog-food brands”The trade mark hour ends with a group task, and it is the most realistic exercise in the block because the answer is a negotiation, not a court case.
The set-up: you represent Natural Living GmbH, holder of the figurative trade mark Wildborn Wetland Duck. Another company, healthfood 24 GmbH, holds the figurative trade mark Wolfsblut Wild Duck and is claiming priority against your mark. Both brands sell dog food to consumers via online shops. The group is told to download both trade mark registrations and two sample drafts of prior rights agreements, and then to draft a prior rights agreement on the basis of those samples, one with which an amicable agreement can be reached between the disputed marks so that they can lead a peaceful coexistence on the market, and to explain the draft to the class.
Everything in sections 5 to 7 feeds into that draft. Both marks are figurative, both share the word duck, and both sit in the same industry and channel, which is exactly the closeness to one industry factor. Since the offices do not police relative grounds themselves, the older right holder’s only lever is opposition, and the alternative to opposition is an agreement in which each side accepts limits on how it will use its mark so that the two can live side by side.
10 · Copyright: automatic, personal, and long
Section titled “10 · Copyright: automatic, personal, and long”Copyright is handled through the other half of the group work, and the six questions the deck sets are a complete revision list on their own. Group 1 is sent to WIPO’s copyright pages and told to skim Directive 2009/24/EC on computer programs, the Berne Convention and the WIPO Copyright Treaty, and then to answer these in front of the class.
What is protected. The summary slide describes copyright as granting authors, artists and other creators protection for literary and artistic creations, generally referred to as works, and gives a list that is expressly open-ended: novels, poems, plays, newspapers, advertisements, computer programs, databases, films, musical compositions, choreography, paintings, photographs, sculptures, architecture, maps and drawings. The introduction slide’s shorter version is artistic creations such as books, music, paintings, sculptures and films.
When it arises. The deck does not answer its own group-work question on a slide, but it does cite the Berne Convention, and the Convention answers it directly: the enjoyment and the exercise of these rights shall not be subject to any formality. No application, no registration, no fee. That is the fundamental difference from every other right in this chapter, and it is why the deck’s list of everyday infringements is so long.
Software. Three separate threads in the materials converge on the same conclusion. Computer programs and databases appear in the list of works. The WIPO Copyright Treaty is described as a special agreement under the Berne Convention protecting works and authors’ rights in the digital environment, for example computer programs and databases. And the copyright group is sent to read a directive dedicated to computer programs. Set that against the two exclusions elsewhere in the block: programs for data processing systems are on the list of things you do not get a patent for, and computer programs are excluded from the definition of a product in design law. Software is protected, and the route is copyright.
The rights of the author. The materials give the economic side mostly through contract language rather than a statute list, in the buy-out example in section 11: the rights to reproduce, distribute, publicly present or reproduce a work, to make it available to the public for repeated retrieval, and to edit and transform it. On the personal side, the Berne Convention that the deck cites provides for moral rights: independently of the author’s economic rights, and even after those rights have been transferred, the author keeps the right to claim authorship of the work and to object to any distortion, mutilation or other modification, or other derogatory action, which would be prejudicial to his honour or reputation. That survives the sale of the economic rights, which is precisely why buy-out clauses are drafted so carefully.
How long. The deck’s comparison gives 70 years after the death of the author or authors, with 25 years added where a work in the public domain is reused. The Berne Convention that the deck cites sets the international floor lower, at the life of the author and fifty years after his death, which is a minimum that national law can and does exceed.
Who counts as an author. The Naruto story is the deck’s illustration, and it is funny until you notice the principle inside it. A wildlife photographer on a trip to Indonesia in 2011 lured a macaque with food and got the animal to press the shutter itself. The resulting selfie went round the world. An animal rights organisation sued the photographer on the macaque’s behalf, and after seven years a US appeals court in San Francisco ruled that monkeys cannot claim copyright in their own image, and neither can anyone else on their behalf. The photographer’s comment was that the decision was bad for animal copyrights but improved legal certainty for photographers’ work. Authorship is a human category.
Where copyright is broken without anyone noticing. The second session lists everyday acts that people assume are harmless.
- Email forwarding to colleagues
- Email forwarding to a business partner
- Publication on the intranet
- Submission to an authority
- Saving in a project database
- Turning print into digital
- Overstepping the limited rights of use that come with a subscription
11 · Licensing agreements: letting somebody else use the right
Section titled “11 · Licensing agreements: letting somebody else use the right”The final block starts from a comparison that makes the whole subject obvious. With a material good, say a car, your options are sale, rental or scrapping. With an intangible asset, say a patent, they are sale, licensing or abandonment of the property right. Licensing is the rental case, and it exists because an intangible can be used by several people at once without being worn out.
What a licence is. The deck’s definition: a licence agreement is a contract by which the owner of an industrial property right transfers the partial right of use or exploitation of that right to a third party against payment of licence fees. The rights it names as licensable are worth listing, because the scope is wider than most people assume: patent, utility model, design patent, character, semiconductor property right and trade mark.
Licence against outright transfer. This is the distinction to get right.
- A simple licence agreement gives the licensee only a simple right of use
- The licensor retains the right to exploit the property right itself
- And retains the right to grant further simple rights of use to other licensees
- This is the non-exclusive case in the sample clause below
- The deck describes an exclusive licence agreement as the complete transfer of ownership, with the original right holder regularly excluded from his own exploitation or use
- The transfer of exclusive rights is called a buy-out or an asset deal
- Licences can form part of an Asset Purchase and Sale Agreement, transferring the complete rights of use and exploitation
The scope levers. The deck states the principle in one sentence: licences can be transferred with restrictions in terms of space, time and content. It then shows a sample clause that turns each of those into words, and it is worth reading as a checklist rather than as prose. The licensor grants the licensee a limited, non-exclusive, personal, non-transferable, non-sublicensable licence to access and use the Software, in Germany, during the Service Period.
What a buy-out looks like when it is drafted wide. The deck’s own example is a training or image film made by a trainee, and it shows how far a purchaser will reach when it wants everything. The employer is entitled to use the film unchanged or after processing or redesign, for the production of further advertising, for comprehensive and repeated evaluation or use in all media and social networks, and in all forms of execution, digital or analogue. Spelled out, that includes the comprehensive right to reproduce, distribute, publicly present or reproduce the film or parts of it, in the original or edited, and to make it available to the public for repeated retrieval; and the right to edit it at will, to transfer it into other visual, acoustic, linguistic or other forms of presentation or other types of works, and to exploit it in digital or printed advertising, print advertising such as newspapers, magazines and catalogues, a so-called book on the film under the ancillary printing right, self-advertising and third-party advertising, songs, films, documentaries, feature films, stage plays and radio contributions.
Read that against the moral rights point in section 10 and you see why it is drafted at that length. The economic rights can be handed over in one paragraph; the right of the author to be named and to object to derogatory treatment does not travel with them.
Licensing as the outcome of a dispute. The second session’s real-world examples close the loop. After a patent holder demanded that eight competitors stop selling a product in Germany, the answers came back in three different shapes: one competitor claimed to have good prior art with which to attack the patent, one agreed to stop selling, and others opened conversations about a customer relationship or about cross licensing. A licence is not only something you plan; it is very often how an infringement conversation ends.
Worked example
Section titled “Worked example”A company launches a portable espresso maker. One product, and every right in this chapter attaches to a different part of it.
| The part of the launch | Which right | Why, and what it actually covers |
|---|---|---|
| The distinctive tapered housing, the ribbed grip texture and the colour scheme | Design | This is the appearance of the whole or a part of a product resulting from lines, contours, colours, shape and texture. It has to be new or original and nonfunctional, so the pump mechanism inside is outside it. Term 5 years plus prolongation, up to 25 years |
| The printed carton, the get-up and the custom typeface on it | Design as well | The definition of product expressly includes packaging, get-up, graphic symbols and typographic typefaces |
| The brand name and the logo used on the machine and the shop | Trade mark | A sign that, from the customer’s perspective, distinguishes these goods from competitors’. Registration first, since in most countries the right is granted only by registration. Term 10 years, renewable indefinitely while the fees are paid |
| The list of goods and services filed with the mark | Trade mark scope | Claim only what is actually offered under the mark, using the official explanations on the Nice Classification and the class database. Going broad raises the collision risk, and a successful opposition deletes the mark only for the conflicting goods and services |
| The name shown as a company name and as a domain | Related but distinct | The company name is protected by trade mark law but is only a sign, not a trade mark, and the territorial principle applies to online offers too - so the pre-filing search covers domains and company names as well as registers |
| The manual, the website copy, the launch film and the packaging artwork | Copyright, automatically | Works arise without any formality. No filing, no fee. Term 70 years after the author’s death in the deck’s comparison |
| The firmware in the machine and the companion app | Copyright, again | Computer programs are listed as works and are the subject of the directive the group work cites. They are not patentable subject matter as programs for data processing systems, and they are excluded from the definition of a product in design law |
| A regional partner is to sell under the brand | Licence | See the clause set below |
The pre-filing work, in the order the deck gives it. Run an identity search and a similarity search in the DPMA, EUIPO and WIPO registers plus domains and company names. Test the candidate name against the absolute grounds: is it distinctive, or does it merely describe the kind, quality, intended purpose, value, geographical origin or other characteristics of a coffee machine? A name that is simply a statement about strong coffee fails there. Then test it against the relative grounds using the three collision factors - distinctive character, reputation, and closeness to one industry - remembering that the office will not do this for you and that an earlier owner has to file an opposition.
One clause set for the partner licence. Built only from the levers the deck names.
| Clause | What it says | Which lever |
|---|---|---|
| Grant | A limited, non-exclusive, personal, non-transferable, non-sublicensable licence to use the mark on the espresso maker | Simple licence, so the owner keeps its own use and can appoint further partners |
| Territory | Valid in one named country only | Space |
| Duration | For a defined service period, not open-ended | Time |
| Field of use | Use of the mark on this product and its marketing material, and nothing else | Content |
| Sublicensing | Expressly excluded, and the licence cannot be transferred to a third party | Who may hold the right |
| Payment | Against payment of licence fees, since a licence agreement is by definition the transfer of a partial right of use against payment | The consideration |
If instead the company wanted the partner to take the brand over entirely, that is no longer a licence in the deck’s sense. That is the exclusive route: a buy-out or asset deal, potentially inside an Asset Purchase and Sale Agreement, transferring the complete rights of use and exploitation, with the original holder regularly excluded from using its own mark afterwards.
Apply it to your project
Section titled “Apply it to your project”-
Split your product into its three surfaces before you talk to anyone. Write down separately: what it looks like, what it is called, and every piece of written, drawn, filmed or coded material around it. Those three columns are design, trade mark and copyright, and mixing them is what makes IP conversations go in circles.
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Sort the appearance from the function. A design covers the ornamental and aesthetic side and expressly does not protect the technical features of the article. If the shape exists purely because of how the mechanism works, design law is the wrong tool.
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Check the clock on the appearance. If the look has already been shown publicly, remember the six-month exhibition protection grace period after disclosure, which is available for trade marks, designs and utility models. Find out where you are in that window before you plan a filing date.
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Test the candidate name against the absolute grounds yourself, early. Is it distinctive, or is it descriptive of the goods, or does it consist only of indications of kind, quality, quantity, intended purpose, value, geographical origin or time of production? Kill weak candidates at this stage, when it costs nothing.
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Run an identity search and then a similarity search in the DPMA, EUIPO and WIPO registers, and extend the search to domains and company names. Use TMview, the WIPO brand database, the DPMA register and EUIPO eSearch.
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Judge any hit you find on the three collision factors - distinctive character, reputation, and closeness to one industry - and remember that the offices will not raise relative grounds for you. If somebody has an earlier right, either they oppose or nothing happens.
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Build the list of goods and services deliberately. Use the official explanations on the Nice Classification and the class database, claim only what you will actually offer under the mark, and resist the urge to go broad, because breadth buys collision risk and a successful opposition deletes the mark for exactly the conflicting goods.
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Do the commercial preliminary check in the same week. Is registration worthwhile, what is the investment in creating the brand, what is the marketing budget, what share of the target group can you reach, what turnover do you project - and document all of it, because reputation and use are things you may later have to prove.
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Decide the filing footprint: Germany, the EU, or international. The territorial principle applies even to purely online offers, so a web shop does not give you a worldwide right.
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Do nothing at all for the copyright material, and everything for the paperwork around it. The works exist from the moment they are created, with no formality. What you must handle by contract is who is allowed to do what with them, especially for material made by trainees, freelancers or agencies, where the deck’s own answer is an explicit buy-out clause.
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When you license, write the four limits down separately. Space, time, content, and whether the licence is personal, transferable or sublicensable. Then decide consciously whether it is simple, leaving you free to use and to license again, or exclusive, which in the deck’s terms means you are effectively handing the asset over.
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Diarise the renewals and start monitoring. The checklist ends with deadline monitoring and renewal, trade mark monitoring, and use. A registered mark that nobody watches is a mark somebody else is quietly getting close to.
Key terms
Section titled “Key terms”| Term | What it means in plain words |
|---|---|
| Design | The appearance of the whole or part of a product, coming from its lines, contours, colours, shape, texture or materials, or from its ornamentation |
| Product, in design law | Any industrial or handicraft item, including parts of a complex product, packaging, get-up, graphic symbols and typefaces, but not computer programs |
| Complex product | A product made of several components that can be replaced, so it can be taken apart and put back together |
| New or original and nonfunctional | The deck’s requirement for an industrial design: it must be aesthetic, and the technical features of the article are not protected |
| Exhibition protection | A six-month grace period after disclosure, available for trade marks, designs and utility models |
| Trade mark | A sign used in trade that, from the customer’s perspective, distinguishes one company’s goods or services from those of competitors |
| Territorial principle | A right exists country by country, and that applies to online offers such as domains too |
| Notorious awareness | The very high level of public recognition, described as more than 75% or 95%, that unregistered protection usually demands; 25% to 30% within the industry is not enough |
| Absolute grounds for refusal | Objections the office raises against the sign itself: no distinctive character, descriptiveness, purely indications of characteristics, misleading or immoral signs, state emblems, official test or rifle marks, and bad faith |
| Relative grounds for refusal | Objections based on an earlier right, where the sign is identical with or liable to be confused with an earlier registered or notorious mark |
| Opposition proceedings | The procedure through which the earlier right holder objects, because offices do not examine relative grounds on their own initiative |
| Nice Classification | The international classification of goods and services used to build the list a trade mark is registered for |
| List of goods and services | The scope of the registration; claim only what you sell, because breadth raises collision risk and deletion bites on the conflicting entries |
| Check of conflict | The collision assessment, using distinctive character, reputation and closeness to one industry |
| Identity and similarity search | The two pre-filing searches of the DPMA, EUIPO and WIPO registers |
| Work | The unit copyright protects: novels, advertisements, computer programs, databases, films, photographs, architecture, drawings and much more |
| No formality | The Berne rule the deck relies on: copyright is enjoyed and exercised without any registration or other formality |
| Moral rights | The author’s personal rights, kept even after the economic rights are transferred: to claim authorship and to object to distortion or derogatory treatment harming honour or reputation |
| Simple licence | A licence giving only a simple right of use, with the licensor keeping its own exploitation and the freedom to grant further licences |
| Exclusive licence, buy-out, asset deal | The transfer of the complete rights of use and exploitation, after which the original holder is regularly excluded from using the right itself |
Test yourself
Section titled “Test yourself”- What exactly does a design protect, what does it expressly not protect, and how long can it last? Name the three terms the definitions article defines.
- Give the two families of absolute grounds for refusal with the specific grounds in each, and say why a purely descriptive name fails.
- Relative grounds exist, but the office does not apply them. Explain what actually happens instead, and what the consequence is for the younger mark if the objection succeeds.
- Why does the list of goods and services matter so much, what tool helps you build it, and what is the trade-off in going broad?
- When does copyright arise, how long does it run in the deck’s comparison, what does the Berne Convention set as the international minimum, and what does an author keep even after transferring the economic rights?
- Distinguish a simple licence from an exclusive one, and name the three kinds of restriction under which a licence can be granted, with the sample clause’s wording for each.
Revision summary
Section titled “Revision summary”Next: Communication & Negotiation → - getting the deal you just learned to draft.