Intellectual Property, Information Technology, E-commerce

The law of Europe relating to intellectual property (patents, copyright, trademarks, designs, trade dress) and information technology and e-commerce is substantially similar.

EU Legislation. The legislation at the EU level consists of various Regulations and Directives: Directive 96/9/EEC (database protection); Directive 91/250/EEC (protection of computer programs and software); Directive 98/44/EC (biotechnological inventions); Directive 89/104/EEC (trademark law harmonisation) and Directive 40/94/EEC (community trademark); Directive 2001/29/EC (digital copyright); Directive 93/98/EEC (harmonising copyright term protection); Regulation 6/2002 (designs); Directive 95/46/EEC (personal data protection); Directive 2002/58/EC (protection of personal data in electronic transmission); Directive 1999/93/EC (electronic signatures in e-commerce); Directive 2000/46/EC (supervision of electronic money institutions); Directive 2002/65/EC (distance selling of financial services); Directive 97/7/EC (consumer products sold at a distance); Directive 85/577/EEC (consumer contracts made away from business premises); Directive 2002/38/EC (value added tax and e-commerce); Directive 2000/3 I/EC (framework for electronic Single Market); Regulation 733/2002 (.eu top level domain names); Regulations 1334/2000 and 149/2003 (dual-use technology exports and the Wassenaar Arrangement). Please also see the Chart on pages 90-97.

Patents. An "EU patent", valid throughout the EU, does not yet exist, although one has been proposed (July 2000) and is soon very likely to exist in fact. Meanwhile, the patent applicant may choose between (i) a national patent or (ii) multiple-EU-country patents. In the latter case, a single application to the European Patent Office in Munich is sufficient and can also provide IP coverage in Switzerland and a few other countries (Cyprus, Liechtenstein) which are not in the EU.

Each European country has its own patent statute but the terms are all substantially the same, for instance, the 1970 Austrian Patent Law, the 1984 Belgian Patent Act, the 1995 Portuguese Decree-Law No. 16/96 (Industrial Property Code) and the 1977 UK Patents Act and 1988 Copyright, Design & Patent Act, the Latvian Patent Law (April 20, 1995), the 1962 Polish Patent Act (as amended (Dz. U. of 1993, No. 26 item 118) and the 1993 Bulgarian Patent Act (all in substantial conformity with the European Patent Convention).

No EU member country allows patents for "business methods" but usually the application can be drafted to include some such indirect protection, while meeting the local requirements. In order to patented, software must show a "technical effect" (a term which is not fully clarified in legislation or in case law). Plant varieties have their own form of protection (Regulation 2100/94). Species of animals cannot be protected by patents but transgenic animals can be. Methods of medical treatment may not be patented, but claims may be directed to a product when used to treat particular conditions. Please see Chapter on "Bioscience".

The European Patent Office (EPO) grants a bundle of national patents, rather than a single, European-wide patent. These national patents have to be validated in each country when granted and this may mean translating the patent terms into several languages. There is still a significant cost saving over patenting separately in each country.

Most European countries have their own version of the "doctrine of equivalents", designed to give a fair measure of protection to the patentee while giving reasonable certainty to the public. Because there is no file wrapper estoppel, the Festo situation does not arise, as it may in the USA. There is also no grace period, so companies must be very careful not to lose patent rights in Europe through prior disclosure.

The New EU Accession Countries have been busy adapting their local legislation to European standards in all these fields, with Lithuania being a good example, having already enacted the following new legislation, in preparation for admission to the EU: Law on Trademarks (entered into force on 1 January 2001); Law on Layout-design (Topographies) of Semiconductor Integrated Circuits (entered into force on 1 December 1998): Act on Computer Programs (entered into force on 28 February 1996); the Industrial Design Law (entered into force on 1 September 1995); the Copyright Law (part of the Lithuanian Civil Code, entered into force on 17 May 1994); and the Patent Law (entered into force on 1 February 1994).

Copyright. The rules relating to the duration of copyright protection are standard throughout the EU (70 years after the death of the author). Doctrines such as "work for hire" apply fairly uniformly but it should be noted that, in the absence of a written agreement, the copyright in a commissioned work will not automatically be the sole property of the party who ordered and paid for it. Representative examples of national copyright legislation are the German Copyright Law ("Urhebergesetz"), certain provisions of the French Code of Intellectual Property, the Czech Law No. 35 of March 25, 1965, on Literary, Scientific and Artistic Works (Copyright Law) (as last amended by Law No. 86 of March 14, 1996) and the Hungarian Law No. LXXVI of 1999 on Copyright (as amended by Law No. LXXVII of 2001 in respect of databases and Law No. XLVIII of 2001 on the protection of designs). Very similar legislation exists in Belgium (Database Protection Act of 31 August 1998, the Computer Program Act and the Copyright Act, both of 30 June 1994).

The EU Directive on Copyright Protection for Databases (Directive 96/9) has been implemented in many countries and offers protection, independently of national copyright law, to those who create databases.

Trademarks. Trademarks may be registered ones or unregistered ones. For registered trademarks, comprehensive EU legislation is in force (Directive 89/104, the Community Trademark Directive) and legislation exists in each EU member country (for example, the Austrian Trademark Law of 1977, the German 1994 Law on Protection of Trademarks ("Markengesetz"), the Irish 1996 Trademarks Act, the 1960 Swedish Trade marks Act (as amended) and the 1962 Belgian Act on Trademarks). Pan-EU coverage can be obtained by applying to the OH1M in Alicante, in Spain. Trademark attorneys in any European country may apply, on behalf of their clients. Unregistered trademarks are protected by the law of "passing off' in the UK and by equivalent provisions, such as unfair competition laws, in other European countries.

The ECJ has long ruled that the specific subject matter of a trademark is "the guarantee that the owner... has the exclusive right to use that trademark, for the purpose of putting products... into circulation for the first time and is therefore intended to protect him against competitors... selling

products illegally bearing that mark" and "to guarantee the identity of the origin of the trademarked product". Centrafarm and de Peijper v. Winthrop (Case 16/74, decided 31 October 1974) [1974] ECJ 1183; Hoffman-La- Roche v. Centrafarm (Case 102/77, decided 23 May 1978) [1978] ECR 1139.

The ECJ language about "the first time" results in situations where, having once permitted entry of its trademarked goods into any part of the EU, the owner may have exhausted its rights to prevent others from doing so at some later time. Silhouette International Schmied v. Hartlauer

Handelsgesellschaft (Case C-355/96, decided 16 July 1998) [1998]ECR 1-4799.

CE Mark. Certain products manufactured in accordance with EU standardisation procedures are permitted to carry this special mark (Directive 93/68/EEC). Please see Chart at page 11 and definition in the Chapter on "European Legal Terms". While this is not a trademark or IP right, as such, it does confirm the compliance of the product with certain standards and hence operates in a similar way to a trademark.

Somewhat similar in concept and function are EU legislative enactments which protect the geographic designation of certain specified products (such as Regulations 2081/92 and 2037/93, regarding the local origin of food having a distinct connection with the places in question).

Designs. Directive 98/7I/EC (on "European Community Design") came into force on 20 November 1998 and Regulation 6/2002 (the "Design Regulation") has been in force since 5 March 2002, and allows for the registration of EU-wide designs with OHIM). These Regulations afford protection at the EU legislation level. They are supplemented by national legislation for the protection of registered designs. Unregistered design rights now exist in most European countries, providing protection against copying for three years after publication.

Treaties. All EU member countries adhere to the Bern Copyright Convention and almost all are signatories to the Universal Copyright Convention (but some do not adhere to the 1971 Paris amendment to the Convention). All EU member countries are members of WIPO and have agreed to the majority of conventions arising from WIPO. All EU member countries, apart from Ireland, have joined the 1989 Madrid Protocol and all, aside from the UK, Ireland and the Scandinavian member countries, have joined the 1891 Madrid Agreement. All EU member countries are signatories to the Patent Co-operation Treaty and most of them actively support the TRIPs Agreement.

Data Protection (Privacy). Data protection and privacy have particular importance in Europe, mainly thanks to various EU Directives (please see Chart on pages 90-97), particularly Directive 95/46/EEC. This has been carried over into national legislation in EU member countries, in the New EU Accession Countries and in Norway and Switzerland.

In many European jurisdictions, those handling personal data have to register with a state body (such as the "Information Commissioner" in the UK, the "Commission Nationale de l'lnformatique et des Libertes" in France, the "Registratiekamer" in the Netherlands, the "Datatilsynet" in Norway). The obligation to register (or "notify" as it is known in some countries, with the principles of both systems being roughly the same) exists in most European countries. Bulgaria, Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Monaco, Poland, Romania, Slovakia, Slovenia and Switzerland all have registration requirements.

To take an example in the UK the process is known as "notification". The obligation is imposed by the Data Protection Act 1998 in the UK which follows the basic format of the EU Directive.

Section 17 of the Act says: "(1) Subject to the following provisions of this section, personal data must not be processed unless an entry in respect of the data controller is included in the register maintained by the Commissioner under section 19 (or is treated by notification regulations made by virtue of section 19(3) as being so included)."

i The penalties are then set out in Section 21 which states that:

"(1) If section 17(1) is contravened, the data controller is guilty of an offence".

More worryingly for individuals this is backed up by Section 61 of the Act which says:

"(1) Where an offence under this Act has been committed by a body

corporate and is proved to have been committed with the consent or

connivance of or to be attributable to any neglect on the part of any

director, manager, secretary or similar officer of the body corporate or any

person who was purporting to act in any such capacity, he as well as the

body corporate shall be guilty of that offence and be liable to be proceeded

against and punished accordingly." |

Substantially the same rules exist, for example, in Norway and Switzerland: Norway, the 2000 "Personal Data Act", being Act No. 31 of 14 April 2000 ("Lov om behandling av personopplysninger (personopplysningsloven)", which also has a chapter on video surveillance ("Fjernsynsovervaking); and Switzerland, the 1992 "Federal Law on Data Protection" ("Bundesgesetz iiber den Datenschutz" (DSG), "Loi federale sur la protection des donnees" (LPD), "Legge federale sulla protezione dei dati" (LPD)).

Personal data may not generally be transferred outside the EU/European

Economic Area unless the recipient country offers "an adequate level" of

data protection rights for the individuals whose data is being exported. As

of May 2003, only Canada, Hungary and Switzerland are on the list of

approved countries. |

The situation in Poland is fairly typical of the data protection regulatory framework in most New EU Accession Countries. The basic law is the Data Protection Act of 1997 (amended February 2000 and June 2001) ("Ustawa o ochronie danych osobowych") (in force since 30 April 1998). It sets up a system of registration and a state body with which to register (the "Inspector General of Personal Data Protection") and establishes rules for processing personal data, describes the rights of the person to whom the data relates and lays down principles and duties regarding the storage and dissemination of protected information, plus penalties for non-compliance. The legislation is linked to other relevant Polish legislation, such as the Banking Act (1997), the Act on Public Statistics (1995), the Tax Law (1997) and the Insurance Act (1990).

In the Slovak Republic, a substantially similar regime operates pursuant to the 1998 "Act on Personal Data Protection" (Coll. Act No. 52/1998), in the Czech Republic pursuant to Act No. 101/2000 Coll. on "Protection of Personal Data"), in Hungary pursuant to Act LXIII of 1992 on the "Protection of Personal Data" (as amended in July 1999) and in Estonia by the 1996 "Personal Data Protection Act" ("isikuandmete kaitse seadus" and the 1997 "Databases Act" ("andmekogude seadus"), with the national data protection supervisory authority being the "Data Protection Inspectorate" ("Andmekaitse Inspektsioon").

Other E-Commerce Issues. The key EU legislation in the e-commerce area is Directive 2000/31/EC (8 June 2000). It addresses a wide array of issues in the information age, including liabilities of intermediary service providers (Article 12), caching (Article 13), hosting (Article 14), codes of conduct (Article 16) and various provisions regarding Internet service providers (Articles 4-8) and the regulation of e-commerce contracting (Article 9).

Digital signature legislation is well underway in Europe. The UK legislation, in particular, has been responsive to industry needs for substantial freedom in the flow of e-commerce. Germany adopted a "model law", based upon Directive 1999/93/EC (the 1997 "Gesetz zur digitalen Signatur", "SigG", "Act on Digital Signatures") which was replaced (as from 22 May 2001) by the "Gesetz iiber Rahmenbedingungen fiir elektronische Signaturen und zur Anderung weiterer Vorschriften -Signaturgesetz - SignG" (Act on Basic Conditions regarding Electronic Signatures and Amendment of Further Provisions) and the German experience with these (although still quite limited) is being closely watched by other European countries.

In Belgium there is a group of laws dealing with these issues, namely, the

E-Commerce Act of 11 March 2003, the Electronic Payment Act of 17 July

2002, the Digital Signature Acts of 20 October 2000 and 9 July 2001 and

an Act of 28 November 2000 designed to prevent cyber-criminality. .

The concept of cyber-jurisdiction in Europe is business-oriented and is based upon traditional analogies for contract formation, with the principal focus being predictability and, hence, jurisdiction is generally founded upon the physical presence of the contracting business parties or is based upon their specific choice of law (or is determined by an analysis of where the contract was "formed"). There are specific rules for those selling over the Internet or advertising via the Internet or e-mail (please see "distance selling" Directives mentioned above).

Interesting Europe-facts: + The New EU Accession Countries and their local units of currency:

Bulgarian lev Cyprus pound Czech coruna Estonian kroon Hungarian forint Latvian lats Lithuanian litas Maltese lira Polish zloty Romanian leu Slovak koruna Slovenian tolar

+ Castilian is the official Spanish language of Spain but the Spanish Constitution recognises the right of the Autonomous Communities (regions within Spain) to use their own languages. The officially recognised regional languages are: Euskera (Pais Vasco and Navarra), Gallego (Galicia), Catalan (Cataluna and Islas Baleares) and Valenciano (Valencia).

+ As of February 2003, 415,798 domain names with the special ,dk designation, for Denmark, had been registered, one of the highest "top-level-domain-name-to-population" ratios in the world.


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