Complementary protection of intangible assets

The strategy, we discussed in our previous articles on intellectual property in Europe, highlights the fact that the current EU legislation on the protection of intellectual property is complemented at national level by national rules where very often the protection of intellectual property overlaps with other areas of law. In particular, the strategy identifies the following areas.

Trade secrets and "look-alike" products

·        Trade secrets. The strategy notes that trade secrets are valuable intangible assets, but that the legal regimes in member states and level of protection granted vary considerably. This means that, depending on their location, some companies are better equipped than others to face the challenge of an information based economy.

·        Parasitic copies/look-alikes. Another area which the strategy says is of interest is the protection against so-called "parasitic copies" or "look-alikes". Parasitic copies are designed to resemble existing products of well-established brands while maintaining certain differences that prevent them from qualifying as counterfeits. They may confuse consumers who either do not pay much attention while shopping or who do not know the brand well enough to recognise the differences. Again, this phenomenon is dealt with differently in different member states. For example, while some member states have specific provisions under unfair competition law to address this, others leave civil law or tort to cover it, while in the UK there is on law no unfair competition and the tort of passing off has to be relied on.

Enhanced fight against counterfeiting and piracy

Products and services based on intellectual property can be difficult and expensive to create but cheap to replicate and reproduce. Organised and large-scale infringement of intellectual property rights has become a global phenomenon and is causing worldwide concern. The EU has begun to address this challenge through:

·        Civil law measures allowing rights-holders to enforce their intellectual property rights, specifically the IPR Enforcement Directive, which harmonises member states' laws on enforcement procedures, remedies and penalties relating to intellectual property infringement.

·        The Customs Regulation (1383/2003) which allows for the detention of goods suspected of infringing intellectual property rights at the EU's external borders.

·        Launching, in 2009, a European Observatory on Counterfeiting and Piracy (Observatory). The Observatory's main objectives are to collect and report data on the economic and societal implications of counterfeiting and piracy and to create a platform for representatives from national authorities and stakeholders to exchange ideas and expertise on best practices.

The strategy says that the success of these first measures shows that the EU is on the right path, but that there is a need to expand the current work. In particular:

·        The need to strengthen the existing legislative framework for enforcement and to supplement this by voluntary arrangements between stakeholders was confirmed by the Commission's report on the IPR Enforcement Directive published in December 2010.

·        The review of the EU Customs Regulation, which included a public consultation in 2010, concluded that the legislation should be revised to extend the scope for customs control, as well as to clarify some procedures to safeguard the interests of legitimate traders.

The specific steps identified and to be taken in the strategy to enhance the fight against counterfeiting and piracy are summarised below.

• Increase public awareness
• Review of the IPR Enforcement Directive
• Voluntary measures developed with stakeholders
• Considering the international dimension of intellectual property
• Multilateral initiatives, including co-ordination with international organisations
• Bilateral negotiation and co-operation on IPR protection with third countries
• Enhanced intellectual property protection and enforcement at the EU border

All articles are for general purposes and guidance only and do not constitute legal or professional advice.

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