European Union Intellectual Property Law

Overview of EU Intellectual Property Law

European Union intellectual property law operates as a distinctive supranational framework that coexists with and harmonises the national IP laws of the 27 member states. Article 118 of the Treaty on the Functioning of the European Union (TFEU) confers on the European Parliament and the Council the power to establish measures for the creation of EU-wide intellectual property rights and for the harmonisation of national IP laws. The acquis communautaire in IP encompasses two categories: fully harmonised EU-wide unitary rights (the EU trade mark, the Community design, and the proposed Unitary Patent) and directives that approximate national laws in copyright, databases, enforcement, and trade secrets. The Court of Justice of the European Union (CJEU) plays a central role in ensuring uniform interpretation of harmonised IP law across member states.

EU Trade Mark

Regulation 2017/1001 on the EU Trade Mark

The EU trade mark (EUTM), governed by Regulation (EU) 2017/1001, is a unitary right having equal effect throughout the territory of the European Union. Registration is obtained through application to the European Union Intellectual Property Office (EUIPO), headquartered in Alicante, Spain. The EUTM coexists with national trade marks registered with member state offices.

Absolute and Relative Grounds for Refusal

Absolute grounds for refusal under Article 7 of Regulation 2017/1001 include marks devoid of distinctive character, descriptive marks, customary marks, marks consisting exclusively of shapes necessitated by the nature of the goods, and marks contrary to public policy or accepted principles of morality. Relative grounds under Article 8 include conflicts with earlier EUTMs, earlier national marks, and well-known marks under Article 6bis of the Paris Convention. The opposition procedure under Articles 46-47 permits holders of earlier rights to oppose registration within three months of publication.

Genuine Use Requirement

Under Article 18, an EUTM must be put to genuine use within five years of registration. Non-use for a continuous period of five years after registration renders the mark vulnerable to revocation under Article 58. Genuine use means actual use in the course of trade in the EU consistent with the essential function of indicating origin.

Term and Infringement

The term of EUTM registration is 10 years from the filing date, renewable indefinitely. Infringement under Article 9 includes use of an identical or similar sign in relation to identical or similar goods or services where there exists a likelihood of confusion, and use of a sign in relation to dissimilar goods or services where the mark has a reputation and the use takes unfair advantage of or is detrimental to the distinctive character or repute of the mark. Pan-European injunctions may issue covering the entire territory of the EU.

Community Design

Regulation 6/2002 on Community Designs

The Community design regime under Council Regulation (EC) 6/2002 provides two forms of protection: the registered Community design (RCD) and the unregistered Community design (UCD). The RCD is obtained through registration with the EUIPO and confers a monopoly of up to 25 years. The UCD arises automatically upon disclosure and confers a right against copying for three years.

Requirements: Novelty and Individual Character

A Community design must satisfy two requirements: novelty and individual character. Novelty under Article 5 means no identical design has been made available to the public before the relevant date. Individual character under Article 6 requires that the overall impression produced on the informed user differs from the overall impression produced by any earlier design. The degree of freedom of the designer is taken into account.

Term

The RCD is initially registered for five years from the filing date and may be renewed for successive five-year periods up to a total of 25 years. The UCD is protected for three years from the date on which the design was first made available to the public within the EU.

Copyright Harmonisation

The Acquis Directives

EU copyright law is harmonised through a series of directives that member states must transpose into national law. Unlike the unitary trade mark and design regimes, EU copyright directives harmonise specific aspects of national copyright laws without creating a single EU copyright title.

InfoSoc Directive 2001/29

Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society (InfoSoc Directive) harmonises the rights of reproduction, communication to the public, and distribution. Article 2 mandates the exclusive right of reproduction for authors, performers, phonogram producers, film producers, and broadcasting organisations. Article 3 requires member states to provide authors with the exclusive right to authorise or prohibit communication to the public of their works, including making available on demand. Article 4 harmonises the distribution right subject to EU-wide exhaustion. Article 5 provides an exhaustive list of exceptions and limitations, including the mandatory exception for transient and incidental copies (Article 5(1)) and optional exceptions for reproduction for private use, reproduction by libraries and educational establishments, and use for quotation, criticism, and review.

Term Directive 2006/116

Directive 2006/116/EC harmonises the term of copyright protection to life of the author plus 70 years, with the term calculated from 1 January of the year following the event triggering the term. The directive also harmonises the terms for films (70 years from the death of the last of the principal director, the screenplay author, the dialogue author, and the composer of music), performances (50 years, extended to 70 years by Directive 2011/77), and phonograms (70 years).

Orphan Works Directive 2012/28

Directive 2012/28/EU facilitates the digitisation and making available of orphan works (works whose right holders cannot be identified or located) held by publicly accessible libraries, educational establishments, museums, and archives.

Collective Rights Management Directive 2014/26

Directive 2014/26/EU on collective management of copyright and multi-territorial licensing establishes governance and transparency requirements for collective management organisations (CMOs) and facilitates multi-territorial licensing of online music rights.

Directive on Copyright in the Digital Single Market 2019/790

The DSM Directive (Directive (EU) 2019/790), adopted on 17 April 2019 and transposed by member states by 7 June 2021, represents the most significant reform of EU copyright law since the InfoSoc Directive. Key provisions include:

Press Publisher Right (Article 15): Grants press publishers an ancillary copyright for the online use of press publications by information society service providers. The right covers reproduction and making available of press publications for a term of two years from publication. Individual authors whose works are included in press publications are entitled to an appropriate share of the revenues.

Platform Liability (Article 17): Imposes direct liability on online content-sharing service providers (OCSSPs) for user-uploaded content that infringes copyright. OCSSPs must make best efforts to obtain an authorisation from right holders, ensure the unavailability of specific works identified by right holders through notice-and-stay-down procedures, and expeditiously remove infringing content upon notice. The provision establishes specific safeguards for user-generated content, including limitations for quotation, criticism, review, and parody, and a complaint and redress mechanism.

Text and Data Mining (Articles 3 and 4): Article 3 establishes a mandatory exception for text and data mining (TDM) by research organisations and cultural heritage institutions for scientific research. Article 4 provides a broader TDM exception subject to the right holder not having expressly reserved the right to use in an appropriate manner, such as machine-readable metadata.

Database Directive 96/9

Directive 96/9/EC on the legal protection of databases establishes two forms of protection: copyright protection for databases that by reason of the selection or arrangement of their contents constitute the author’s own intellectual creation, and the sui generis database right protecting substantial investment in obtaining, verifying, or presenting database contents. The sui generis right entitles the maker to prevent extraction and reutilisation of the whole or substantial part of the database contents. The term is 15 years from completion or publication, renewable upon substantial new investment.

Enforcement Directive 2004/48

Directive 2004/48/EC on the enforcement of intellectual property rights harmonises civil remedies across the EU, including provisional and precautionary measures, the right of information, injunctions, corrective measures (recall and destruction), damages, and legal costs. The directive requires member states to provide proportionate, effective, and dissuasive remedies.

Trade Secrets Directive 2016/943

Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against unlawful acquisition, use, and disclosure harmonises the definition of trade secrets, the measures for preserving confidentiality, and the civil remedies for misappropriation.

The Unitary Patent and Unified Patent Court

The Unitary Patent system, established under Regulations (EU) 1257/2012 and 1260/2012, creates a European patent with unitary effect throughout participating member states. The Agreement on a Unified Patent Court (UPC) establishes a specialised international court with exclusive jurisdiction over Unitary Patents and, during a transitional period, opt-out European patents. The UPC comprises a Court of First Instance with central, local, and regional divisions, a Court of Appeal in Luxembourg, and a Registry. The system began operations on 1 June 2023.