Intellectual Property in Luxembourg E-Book

Thierry Bovier

• Herausgeber: Éditions Larcier
• Kategorie: Fachliteratur
• Serie: Vademecum
• Sprache: Englisch

Seitenzahl: 323

Veröffentlichungsjahr: 2019

Beschreibung

Every company creates intellectual property but without always realising it. In today’s knowledge-based economy, intellectual property is a strategic and essential asset that ensures the development and durability of a company. It is important to protect this asset by creating registered intellectual property rights.

Intellectual Property in Luxembourg sets out the legal aspects and tax advantages, together with practical action points on how to implement an intellectual property strategy within a company. The book explains the tax and other advantages of Luxembourg, a place where innovation and entrepreneurship are valued and encouraged.

Readers can use this as a practical guide to fully optimise the management of their IP rights.

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No person shall, except with the prior written permission of the publisher, reproduce (including photocopying) partially or totally the present work, store it in a database or in a retrival system, communicate or transmit to the public in any form and by any means whatsoever.

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ISBN 978-2-87998-432-2

ISSN 2227-9660

Foreword

The Grand Duchy of Luxembourg is at the vanguard of the protection and the development of intellectual property and seeks to foster a business environment that enhances innovation and creativity.

The protection of artists’ and inventors’ rights has a long history in Luxembourg. Successive governments have been proactive in putting in place a safe IP environment by implementing EU directives and all relevant international treaties and conventions. Furthermore, the new tax regime stipulated in Article 50 bis of the income tax code and adopted by the law of December 21st, 2007 aims more specifically at stimulating R&D activities and the creation of IP which are essential assets in the 21st century economy.

Fostering economic growth through innovation is an integral part of Europe 2020, the European Commission’s economic growth strategy. Luxembourg is committed to increasing investment in research and development within the private sector. Important public means will be put at the disposal of R&D projects. Our goal is to raise public spending in R&D from 1,6% of GDP today to 2,6% of GDP in 2020.

Besides, in order to strengthen the innovation chain, Luxembourg has implemented the law of June 5th, 2009 concerning the promotion of research, development and innovation which offers a package of government incentives.

Building a modern knowledge-based economy founded on research, development and innovation that guarantees the effective protection for all creative brilliance is what we are committed to. I would like to thank the authors of this practical guide on intellectual property in Luxembourg for their valuable and comprehensive contribution to this endeavour. This book is a very useful tool for understanding the issues and the opportunities in respect to intellectual property.

Etienne Schneider

Minister of Economics and Foreign Trade

Throughout history, humans have endeavoured to improve the environment in which they live. A striving for technological progress or simply artistic or commercial creativity have always been an intrinsic part of human nature. However, a freemarket economy does mean that any activity is viewed from a perspective of profit and loss. This has led to the introduction of mechanisms to enable innovators or entrepreneurs to benefit from the fruits of their intellectual labours while ensuring a certain level of return on their investment.

However, investments in intangible assets have only really taken off since this economic model came into being following the third industrial revolution. In this new global economy, falling production costs combined with improved communications have led to a redeployment of human and financial resources towards creating added value.

Intangible assets, which generate considerable wealth, now make up a substantial proportion of the market value of most multinational companies and are a major factor on the path to success which all small and medium enterprises are now following. Aware of the challenges held by the future, Europe’s leaders decided at the European Council in Lisbon that the European Union would in future become the byword for a competitive and dynamic knowledge-based economy by primarily focusing on innovation as the driving force behind global change and development. This orientation has been maintained for the new framework “HORIZON 2020”.

Over recent years, and specifically in response to this initiative, the Grand Duchy of Luxembourg has focused considerable attention on creating a fertile environment for development and managing intellectual property rights on its territory.

This publication will provide readers with business activities in Luxembourg or wishing to set up in business there with a better grasp of intellectual property rights in the Grand Duchy of Luxembourg and an understanding of the benefits of being located there.

Identifying, valuing and protecting these rights is something which must be done before making any decision investment. Protecting these rights nationally and internationally is vital to ensuring that the efforts made by entrepreneurs actually bear fruit, enabling them to move into new markets.

Since these assets naturally have a true value which is much greater than the research costs involved in their creation, a proper valuation of revenues and expenses should enable businesses to improve their capacity to borrow money and attract new investors while maximising their return on investment by licensing or assigning the rights generated thereby.

The knowledge set out in this publication will finally be of interest to anyone wanting to find out about the tax landscape for intellectual property rights in the Grand Duchy and discover just how attractive this country is in this respect.

The authors

Chapter 1Quick audit of existing intellectual property

1. ”Checklist”

2. ”Checklist”analysis

We thought it would be useful to start this publication by underlining the influence and existence of intellectual property in various organisations, be they public or private. All organisations own intellectual property, but only a fraction of them protect it, and still fewer make active use of it.

The aim of the “checklist” provided here is to raise awareness of the impact of intellectual capital within organisations, so that it can be not only used and mobilised for developing projects but also protected.

1. ”Checklist”

The aim here is to draw up a preliminary inventory of all an organisation’s intellectual assets. For each category we have listed not only the main intangible assets, but also the various factors relevant to managing them.

This table is designed to establish whether the organisation in question has any rights and/or is at risk with regard to intellectual property, and may be used as a basis for monitoring the actions undertaken by the organisation.

INTELLECTUAL ASSETS

YES (Type, Reference or Number)

NO

DON’T KNOW

Structural assets

Patents

Trademarks

Registered designs

Copyright

Domain names

Trade secrets

Licenses/franchisesa

Softwareb

Databasesc

Manuals, procedures

External publications (newsletters, journals etc.)

Human assets

Technical or commercial expertise

Know-how

New products or services (launch < 12 months)

a. Which belong to the organisation itself or which it has granted to third parties

b. Developed for the organisation

c. Developed for the organisation

The second part of the “checklist” relates to raising awareness about the possible risks which the organisation is or could be exposed to and/or be faced with.

POSSIBLE RISKS

YES (Type, Reference or Number)

NO

DON’T KNOW

Structural assets

Do you use a third-party trademark?

Are your trademarks registered?

Did you perform a patent search before launching your new project or product?

Have you already been involved in a dispute relating to trademarks, patents, registered designs, or copyright?

Do you hold a copy of the software development agreements you signed?

Do these agreements include clauses relating to intellectual property?

Are your domain names registered in your name?

Human assets

Is your know-how essential to your operations?

Is this know-how documented or formalised?

Has your organisation made any new industrial developments?

Have any new products been launched?

Do you organise the transfer of skills between employees?

Is your organisation’s name well known in your field, in Luxembourg or elsewhere?

2. ”Checklist”analysis

Intellectual property rights can be used to protect some of the assets mentioned in the table. The purpose of these rights is to confer a legal existence on elements which are not visible, but which have economic value, a means of attracting and retaining clients but also of distinguishing an organisation and its products or services from its competitors.

This table is just an initial attempt to summarise an organisation’s entire creative output. It is not essential for every organisation to protect all/each of their intellectual property rights, but every organisation owns at least one protectable right, in that every organisation has a name, and therefore a brand.

The first part of the checklist serves as a basis for identifying existing rights.

It needs to be combined with the second part to establish the existence (or otherwise) of risks.

We have repeated the questions below, outlining the various possible analyses.

POSSIBLE RISKS

Structural assets

Do you use a third-party trademark?

If you don’t have a licence or franchise (listed the 1st table), there is a risk that the third party could take action against this infringement

Are your trademarks registered?

If trademarks are not registered, a third party could protect them in their own name (and subsequently prevent use by any user, including you)

Did you perform a patent search before launching your new project or product?

If you don’t carry out a search, you will not know whether patents exist which may obstruct production and/or marketing of the product.

Have you already been involved in a dispute relating to trademarks, patents, registered designs, or copyright?

In general, companies or organisations which have already experienced litigation are more mindful of asset protection.

Do you hold a copy of the software development agreements?

These agreements are often the basis of software rights and disputes; it is sometimes vital to be able to put your finger on them and so limit risks.

Do these agreements include clauses relating to intellectual property?

In the field of software, omitting such clauses means the law is simply applied, frequently resulting in the client having no rights, even if he paid for the software to be developed.

Are your new products protected?

If not protected before launch, it will not be possible to obtain rights over your product.

However, products that have been on the market for less than 12 months may still be protected by a EU registered design and possibly a patent in the USA since the US has a 12 month grace period for patents

Are your domain names registered in your name?

Domain names are often registered by third parties, employees or a subcontractor. Checking this out avoids the risk of hijacking and damage to an organisation’s image.

Human assets

Is your know-how essential to your operations?

If the know-how is essential and has been identified, this means there is an awareness of its importance; if not, then the first step is to become aware of the existence of this know-how.

Is this know-how documented or formalised?

If so, the company will more readily be able not only to determine what is important to its projects, but also to continue its operations if key people disappear or change employer

Has your organisation made any new industrial developments?

If so and no preliminary searches have been carried out, no patents have been registered or no applications have been filed, protection needs to be considered (if this is still possible).

Have any new products been launched?

If so, there should be some trademarks, patents and/or registered designs listed in the 1st part of the table. If not, the company is at risk, and may find itself deprived of protection and of the assets.

Do you organise the transfer of skills between employees?

If not, the answer to the question about documentation of know-how will allow you to determine the level of risk run by the company.

Is your organisation’s name well known in your field, in Luxembourg or elsewhere?

If so, and if the organisation has not registered a trademark (or applied for one to be registered), it is potentially at risk.

Chapter 2Tools for protection – The practical benefits of Luxembourg

1. Industrial Property

2. Other intellectual property rights

3. Other tools

Luxembourg’s legislation provides a full range of tools for protecting intellectual property, covering not only copyright protection and other associated rights but also protection of intellectual property, from technical innovations to the appearance of products and distinctive signs.

This wide range of protection provides entrepreneurs and companies with the necessary tools for their protection and for developing their market(s), both in Luxembourg and in other countries. It also allows quick and effective protection.

1. Industrial Property

1.1 Patents

The gold standard for protecting technological innovations, the patent protects many of the products we use and consume every day. A patent not only ensures a strategic competitive edge but is also part of a company’s intangible assets, which can be enhanced in value and transferred.

Innovation is crucial to the viability and success of modern economies.

Globalisation has expanded the economic space within which businesses operate. Hand in hand with the opening up of new markets comes an intensification of competition, with companies finding themselves operating in a complex, difficult, constantly changing environment. The risks of imitation and counterfeiting are on the increase.

The patent is a very useful legal tool, which allows businesses to consolidate and generate value from their innovative efforts.

At an economic level, companies possessing know-how and marketing branded products and patented products or processes are in a more competitive position when it comes to gaining or maintaining market share.

1.1.1 Definition of the right

Patents and their effects

A patent is an intellectual property right which confers on its holder the exclusive right to exploit the protected invention for a maximum period of 20 years over a specified territory. The invention then comes into the public domain and may be used freely.

The holder of the patent thus has an exclusive right, enforceable against all parties, which allows him to benefit from his invention in various ways (direct exploitation, assignment of the patent, awarding of licensing agreements).

This exclusive right also allows the holder to prevent third parties (competitors) from manufacturing, selling, using or importing a patented product or system, or alternatively from using a patented process. The holder of the patent can pursue infringers before the courts. A patent is thus an effective deterrent, its very existence often being sufficient to prevent legal proceedings.

To benefit from the protection conferred by the patent, the patent proprietor has to describe his invention in detail. This description is published so that everyone can learn from it. The invention is disclosed to the public in exchange for patent protection.

A patent is simply a contract between the applicant filing the patent application and the government. This contract, the patent, requires the applicant to provide the government with a detailed description of the invention and to authorise the government to publish it (after 18 months). In return, the government confers on the applicant an exploitation monopoly, this monopoly being limited in time (maximum of 20 years) and space (the territory of the country granting the patent), provided that the invention is susceptible of industrial application, is novel and not obvious to a person skilled in the art.

What can be protected?

A patent allows protection of technological inventions relating to products and processes. Inventions may originate in any technological field.

To be patentable, an invention must, at least in Europe, belong to a specific technological field and satisfy three criteria stipulated by law. The invention must be:

◾ novel;

◾ involve an inventive step; and

◾ be susceptible of industrial application.

The invention must also not relate to a field excluded from patentability.

In Europe, a certain number of products or processes are not considered to be inventions and are consequently excluded from patentability as such. In Europe it is consequently impossible to patent in particular:

a) discoveries, scientific theories and mathematical methods;

b) aesthetic creations;

c) schemes, rules and methods for performing mental acts, playing games or doing business, as well as computer programs;

d) presentations of information.

It should be noted that these elements are not patentable only insofar as the European Patent Application or the European Patent relates to one of these elements, considered as such.

Inventions originating from one of the following categories are also excluded from patentability in Europe:

◾ inventions which, if commercially exploited, would be contrary to public order or morality;

◾ plant varieties or animal breeds as well as essentially biological processes for the production of plants or animals (it should be noted that microbiological processes and the products obtained by these processes are not excluded);

◾ surgical or therapeutic methods for the treatment of humans or animals and diagnostic methods applied to humans or animals.

Microbiological processes and the products obtained by these processes as well as products, substances and compositions for carrying out one of the surgical or therapeutic methods for the treatment of humans or animals or the diagnostic methods applied to humans or animals, for example medicinal products or surgical instruments, are nonetheless in principle patentable in Europe provided that the other conditions of patentability are met.

It should, however, be noted that other countries, in particular the United States of America, apply fewer restrictions with regard to what can be patented.

What needs to be done to file a patent application?

To file a patent application, a specification needs to be drawn up which comprises a description setting out the prior art, the technical problem solved by the invention, and the invention itself, one or more claims, an abstract and if applicable one or more figures.

Drafting patents is a special skill and requires real expertise. It is consequently essential to use the services of a patent attorney.

Who does the patent belong to?1

A patent application can be filed by any natural person or legal entity. The applicant is deemed to be authorised to exercise the patent rights and will, after grant, be the holder of the patent. If the applicant is not the inventor, then the applicant must be able to prove how the rights to the invention were acquired from the inventor.

The inventor is the natural person, i.e. the man or woman, who developed the invention. The successor in title, namely the patent applicant, is the natural person or legal entity (a company, for example) who has acquired the rights to the invention from the inventor.

In Luxembourg the owner of the patent is the person who first filed the patent application. This is not necessarily the inventor.

An employer is deemed in law to be the proprietor of any inventions made by his employees when carrying out their appointed tasks. The same is true when the invention is made by an employee whether during the performance of his duties, or in the field of the company’s operations, or through the knowledge or use of techniques or resources specific to the company or data provided by the company. If the employer makes an exceptional profit based on the patent, the inventor does however have a right to additional remuneration.

It should however be noted that this system only applies to employees in the strictest sense: trainees, for example, retain ownership of their inventions unless contractually specified otherwise.

It should be noted that a patent application can also be filed jointly by several applicants, who will then be co-owners of the patent. In this case, it is recommended that a set of rules be established specifying the rights and duties of the co-owners.

1.1.2 Protection strategy

A patent is effective in the country in or for which it is granted. Certain international treaties allow holders to extend their rights to other countries during a period of 12 months following first filing of a patent.

Filing of a first patent application, conferring a priority date

In principle this first patent application may be filed in any country. It is nonetheless important to know that certain countries require – for national security reasons – that inventions made by their citizens or in their country be filed first of all in their own country.

Advantages of filing in Luxembourg are that it can be done in German, French or English and that a European Search Report and a Written Opinion on the patentability of the invention can be obtained within a few months.

Of course, a patent application filed in a particular country can normally only lead to a patent covering the territory of that particular country. In other words, a patent is valid only in the country for which it was granted.

Territorial extension of protection2

During the year following the filing of the first patent application (priority year), the applicant must decide in which additional countries he wishes to obtain protection for his invention.

Before making this decision, the applicant will obtain the European Search Report and a Written Opinion and analyses it, preferably together with a patent attorney, who will be able to draw conclusions and/or derive proposals from it. The purpose of such a Report is in particular to check whether the invention claimed in the patent application is capable of meeting the main criteria for patentability, namely novelty and inventive step.

To extend protection to additional countries, the applicant must, during the priority year, file parallel patent applications for each of the countries where such protection is desired.

The approach typically taken by companies is however to make a first national filing, and then to extend protection by filing an international patent application under the PCT (Patent Cooperation Treaty) system. In this way, an applicant who makes his first filing in Luxembourg can file an international patent application, or PCT patent application, and thereby cover 152 countries with a single patent application (March 2017).

This is made possible by the Patent Cooperation Treaty or “PCT”, a multilateral treaty which was concluded in Washington in 1970 and entered into force in 1978. It is administered by the International Bureau of the World Intellectual Property Organization (WIPO), based in Geneva (Switzerland).

The PCT makes it easier to obtain protection for inventions, whether it is applied for in all contracting states or in one or more of them (see countries on the map below).

The PCT does not eliminate the need for examination of the international application during the national phase at national or regional offices, but it does make this examination easier in several important ways thanks to the procedures applied to all international applications during the international phase of processing.

These procedures include a formalities check, an international search, an optional supplementary international search and an international preliminary examination, likewise optional, which are carried out during the international phase and, together with the ensuing automatic postponement of the national procedure, give the applicant more time and better tools for assessing whether or not to pursue his application and in which countries.

“The international phase” and “the national phase” of the PCT procedure

The PCT procedure has two main phases. It starts with the filing of an international application and ends (in the event of a favourable outcome for the applicant) in the grant of a number of national or regional patents, hence the expressions “international phase” and “national phases”.

The international phase is made up of five steps. The first three are automatic for all international applications and the last two are optional.

1. an international application is filed by the applicant and this application is handled by the “receiving office”;

2. the International Search Report and written opinion are drawn up by an “authorised International Searching Authority”; and

3. the international application and International Search Report are published by WIPO’s International Bureau;

4. a supplementary International Search Report may be drawn up by one or more authorised International Searching Authorities (other than the one which carried out the main international search), resulting in a supplementary International Search Report;

5. the international preliminary examination is conducted by an authorised International Preliminary Examination Authority (under Chapter II of the PCT), resulting in the International Preliminary Examination Report (Chapter II of the PCT). The international preliminary report on patentability (Chapter II of the PCT) assesses whether the invention satisfies the general patentability criteria.

At the end of the international phase, other steps have to be carried out before and in each of the national (or regional) offices from which the applicant is requesting grant of a patent on the basis of his international application. The applicant has in particular to pay these offices the prescribed national (or regional) fees, submit all the required translations and, if applicable, appoint a representative.

These steps have to be carried out before the application can enter the national phase. If they are not carried out within the prescribed deadline, the international application will cease to have any effect in any state where the deadline was not observed.

National (or regional) offices then examine the patent application, granting or refusing the national (or regional) patent on the basis of the respective national legislation. These procedures before the national (or regional) offices constitute what is generally known as “the national phase” of the PCT procedure.

Usefulness of the PCT for applicants

Filing an international application makes it possible to reserve an option on a patent in more than one hundred fifty countries3 for 30 months from the first filing, giving the applicant ample time to assess the patentability of the invention together with its commercial potential. At the end of the 30 months, the applicant chooses those countries among the designated states in which he actually wants to obtain a patent (Europe, USA, China, Japan etc.).

Using the PCT therefore allows the applicant to postpone making a decision about obtaining a patent in the countries which are of interest to him for 30 months. Instead of having to decide by the end of the priority year, the applicant can wait for two and a half years before making this decision. Moreover, this decision can be taken on the basis of the International Search Report and the written opinion (and if applicable the International Preliminary Examination Report). These documents provide the applicant with a detailed opinion on the patentability of the invention and on the scope of protection he can expect.

In addition, for those thirty months, the applicant can carry out market studies and implement the invention.

The applicant can thus take the decision to invest in protecting his invention on the one hand from a position of knowledge of the scope of protection conferred by his patent and on the other hand with greater knowledge of the market and the prospects for his invention.

This investment in protecting the invention is consequently deferred, as it can be made thirty (30) months after first filing of the patent instead of having to make it twelve (12) months after first filing.

Examination and grant procedure

Grant of a patent during the national phase may be dependent on a patentability examination. This is the case for example for the grant procedure for a PCT patent at the European level, in Germany, the United Kingdom or indeed in the USA.

Other states simply require that a prior art search be carried out. This is the case in particular in Luxembourg, Belgium, France and the Netherlands.

Finally, there are states which require neither a patentability examination nor a prior art search.

We shall now explain in detail the grant procedure for a patent on the basis of a European Patent granted by the EPO or European Patent Office (www.epo.org).

In Europe, the European Patent route allows protection to be obtained in 38 countries, through a centralised filing and examination procedure organised by the EPO. The contracting states are (1st October 2010): Albania, Austria, Belgium, Bulgaria, Cyprus, Croatia, Czech Republic, Denmark, Estonia, Finland, former Yugoslav Republic of Macedonia, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and United Kingdom.

At the request of the applicant, a European Patent may be extended to Bosnia and Herzegovina and Montenegro and validated in Cambodia, the Republic of Moldavia, Morocco and Tunisia (1st March 2018).

All in all 44 countries can be covered by a European Patent.

The number of contracting states has increased from 7 in 1977 to 38, with 2 extension states and 4 validation states on 1st March 2018.

The time it takes for a European Patent to be granted is around four to six years from filing of the patent application.

The procedure before the European Patent Office can take place in the German, English or French languages.

The grant procedure is quite complex and we will simplify it by just outlining the two main steps:

◾ formalities examination and drawing up of the search report: during this phase, the European Patent Office checks that the application complies with all the formal requirements, and draws up a search report mentioning all the documents of relevance to the application. This report is sent to the applicant together with an opinion as to whether the application and the invention to which it relates appear to meet the patentability requirements;

◾ substantive examination, during which the European Patent Office seeks to establish, at the request of the applicant, whether the invention satisfies the requirements of the European Patent Convention and may consequently lead to a European Patent being granted. If not, the application will be rejected, or it may also be voluntarily withdrawn by the applicant.

During these procedures, the European Patent Office will be in contact with the applicant (or with his representative), who will have the option, within certain limits, of bringing his patent application into line with European Patent Office requirements.

The patent, once granted, may give rise to subsequent procedures before the European Patent Office, namely:

◾ anopposition procedure, which may arise if an opposition is filed in the nine months following publication of the mention of grant of the European Patent. Oppositions may be filed for example on the following grounds: the invention is not patentable within the terms of the European Patent Convention, the invention is not disclosed in a manner sufficiently clear and complete for it be carried out by a person skilled in the art, or the subject matter of the European Patent extends beyond the content of the application as filed;

◾ the subsequent procedure may also consist of a limitation and revocation procedure, requested by the holder of the patent.

The appeals procedure represents a specific additional procedure. Appeals may be lodged against decisions made by the Receiving Section, the Examining Divisions, the Opposition Divisions and the Legal Division. Decisions relating to the appeals are taken by the independent Boards of Appeal. In some cases it is possible to file a petition for review of a decision by the Enlarged Board of Appeal.

Once a European Patent has been granted, it has to be validated by the patent offices of the designated contracting states. Some countries require a translation into their national language of either the claims or the entire patent.

Once a European Patent has been granted and validated, it is then equivalent to a national patent filed with the relevant national patent office during the priority year.

After grant of a European Patent, annual renewal fees must be paid to and any changes relating to the holder (changes of name, address etc.) registered with the relevant national patent offices.

All aspects relating to infringement are handled solely by national courts.

1.1.3 SPCs and paediatric extensions

Supplementary protection certificates (SPCs) are an intellectual property right that serves as an extension to a patent right in the EU and apply exclusively to specific pharmaceutical and plant protection products that have been authorised by regulatory authorities. 4

Supplementary protection certificates aim to offset the loss of patent protection for pharmaceutical and plant protection products that occurs due to the compulsory lengthy testing and clinical trials these products require prior to obtaining regulatory marketing approval.

An SPC can extend a patent right in any EU member state for a maximum of five years.

The following regulations created SPCs at EU level for patented pharmaceutical and plant protection products. These regulations make it possible to rectify disparities in national systems in EU countries.

◾ Council regulation (EEC) No 1768/92 concerning the creation of a supplementary protection certificate for medicinal products (codified as Regulation (EC) no 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products)

◾ Regulation (EC) No 1610/96 of the European Parliament and of the Council concerning the creation of a supplementary protection certificate for plant protection products

A six-month additional extension is available in accordance with Regulation (EC) No 1901/2006 if the SPC relates to a medicinal product for children for which data has been submitted according to a Paediatric Investigation Plan (PIP). PIPs are required to support the authorisation of medicines for children. They ensure that enough data is collected on the effects of the medicine on children. The extension compensates for the additional clinical trials and testing that PIPs require.

1.2 Trademarks

A trademark is a link between a sign, on the one hand, and goods and/or services, on the other, which is intended to allow a consumer or user to repeat his or her purchase. It is therefore a tool for achieving brand loyalty.

From a more legal standpoint, the purpose of a trademark is to protect a distinctive sign. Trademarks are therefore intellectual property rights which protect names, logos, holograms and any other signs used in commerce and which allow a company’s goods and services to be distinguished from those of its competitors. This means that it is important to choose a trademark with care, because this initial choice will not only affect the entire life of the trademark but also the rights from which the owner will benefit. Once chosen, it must then be properly protected.

After these steps have been taken, the owner of the trademark will be able to take action against the use and/or registration of an identical or similar sign for identical and/or similar goods: registration of a trademark confers the right to prevent and thus to block both marketing and import or export of infringing goods or services.

1.2.1 How to choose a trademark

Two sometimes contradictory demands define the choice of a trademark. On the one hand it is essential for the trademark to be effective from a commercial or marketing standpoint. As a result, companies and businessmen frequently choose generic or descriptive terms, that is to say words which are widely used in the business sector in question or generally. However, on the other hand, these words are prohibited under trademark law, since these terms need to be left free for competitors and all other users of the language:

For example, the word BEST for any product/operation

or the words WRITING IMPLEMENT for a pen.

In addition, for marketing purposes known names or short trademarks are obviously preferable, but these are very probably words already registered and protected by other companies, which will have had the same idea.

For example, there are several dozen trademarks using the word ODYSSEY for software, or the letters ABC for some product/activity or another.

Trademarks have therefore to be found that are suitable from both a marketing standpoint and a legal standpoint.

Distinctive trademarks

A trademark has to be distinctive, that is to say it has to be capable of distinguishing the goods and/or services traded by one company from those of its competitors. However, no clear definition exists of what distinctive means in the context of trademarks; the various legal texts define it only by excluding certain signs from trademark protection.

As mentioned above, it is impossible to obtain protection for a generic term. This means that general terms, such as BEAUTIFUL, SUPER and other superlatives, cannot be registered.

Likewise, “descriptive” words, which describe either directly or indirectly the goods and/or services to which the trademark relates, or suggest the (presupposed) qualities or origins of these goods and/or services cannot be protected. Thus, the expressions ESPRESSO COFFEE for coffee or ALL LEATHER for leather goods do not constitute suitable trademarks.

This is why case law has prohibited the registration of slogans as trademarks, unless they include distinctive elements. Likewise, trademarks consisting of combinations of unprotectable elements are not normally protectable either.

Other elements are prohibited too, such as use of an emblem or a national flag, or the protection of a trademark contrary to accepted principles of morality.

These various prohibitions are interpreted differently by the various national or regional offices which register trademarks. The Benelux Office (as there has been no Luxembourg Office since 1971) applies relatively stringent conditions with regard to the distinctiveness of a trademark; at European Union (EU) level (Luxembourg may also be covered by an EU trademark), the criteria have in the past been assessed more generously. However, the assessment criteria are being harmonized; the European Union Intellectual Property Office is engaged in discussion and convergence programs with the various EU national Intellectual Property Offices in order to align the various practices at EU level.

However, even if a non-distinctive (or only slightly distinctive) trademark were registered, the protection it provided would always be limited since the owner could probably not prevent use and/or registration of another similar or identical non-distinctive or only slightly distinctive term. Consequently, a decision in favour of registration could be considered a pyrrhic victory: the trademark would be liable to commercial attack by third parties, which registration of the trademark could only check with great difficulty.

In a nutshell, it is therefore preferable to choose an invented term or a term not in any way associated with the goods or services to be traded under this term. This will avoid the problems associated with refused applications and with complex enforcement of the obtained rights (if any).

Trademarks not already held by third parties

If the trademark chosen is intrinsically valid, it still has to be available, that is to say there must not be any prior identical or similar trademarks which have already been registered or filed in the countries of interest to the applicant.

There are three registers of trademarks covering Benelux, and therefore Luxembourg: Benelux trademarks, EU trademarks, and international registrations (if the trademarks in question designate Benelux or the European Union). Searches of these three registers must be carried out to identify any prior third-party rights.

If there are any prior trademarks, their owners could oppose registration of the new trademark applied for, and, more problematically, take action to stop this new trademark being used.

Consequently, searches must be performed for identical trademarks before the prospective trademark is filed. These searches will uncover prior trademarks using exactly the same word as the search criterion. It is relatively easy to perform a search for identical trademarks on the Benelux Office website, but this search does require knowledge of the trademark classification system. However, by inputting keywords in French, German or English, certain websites5 will suggest a classification. You will then be able to carry out a direct search within the three registers in question. It is however advisable to obtain help from a Trademark Attorney, being able to advise you about the classification, but also conduct a search also including variants of the searched brand names, but also on phonetically identical trademarks.