Earbin and Moula: Tips on European intellectual property for lawyers in Indiana and abroad

In December 2020, I returned to Indianapolis after living in Germany for nearly six years. During my time in Germany, I had the opportunity to study intellectual property law in the European Union for my Ph.D. I also had the pleasure of meeting phenomenal international attorneys who taught me the ins and outs of intellectual property in the EU.

Esther Earbin

Because an article about European intellectual property rights can go on for pages, I invited one of my favorite European lawyers, Sofia Moula, to help me form a list of the most important things to know about IP in the EU. Moula is a Greek, EU-qualified lawyer (and one of my former students) working with the European Intellectual Property Office.

Here, we provide a few tips for understanding IP in the EU, specifically under the purview of the EUIPO, inspired by conversations Moula and her colleagues tend to have with American lawyers. This article seeks to offer an introduction to European IP law that might provide some insight for an international client, relate to IP law in the U.S. or jump-start a deeper interest.

In general, the EU works to harmonize and enhance laws relating to IPRs in the EU and ensure that a level playing field exists at the global level. The EU views intellectual property as an important tool for supporting its resilience and economic recovery in times of crisis.

1. Intellectual property is viewed in the context of EU competition law.
Despite sharing important goals, IPRs and EU competition policies are not purely complementary. IPRs create a monopoly, originally seen as harmful to competition in the EU. Whereas the granting of IPRs seeks to reward innovation with an exclusive right to use a creation, EU competition law emphasizes the dissemination of innovation by ensuring distribution and access. Today, however, EU competition policy treats the economic effects of IPRs more realistically.

2. Intellectual property rights can frustrate the ‘freedom’ associated with goods.
The EU has an internal market consisting of 27 member states. There are four “freedoms” that the European Single Market seeks to guarantee: the free movement of goods, capital, services and people. Intellectual property rights can frustrate the free movement of goods. According to EU law, the protection of industrial and commercial property is a derogation from the free movement of goods.

Sofia Moula (Photo from LinkedIn)

3. In European IP law, everything is related to an article (a statute).
“Even the articles refer to articles that refer back to an article,” said Moula. The primary sources for EU law are the Treaty on the EU and the Treaty on the Functioning of the EU, which form the constitutional basis for the EU. Most EU member states have a civil law system that prioritizes statutes. There is no EU common law or precedent like in the United States. However, caselaw is considered a supplementary source of law and consists of judgments from the EU’s Court of Justice, the highest court, which interprets IP legislation.

4. The headquarters of the EU Intellectual Property Office is not located in Brussels.
While many EU operations are in Brussels, if you plan to get protection for your trademark, design or copyright on an EU level, be ready to apply in Spain. The EUIPO is in Alicante, Spain. If you want to file for a patent, the European Patent Office has its headquarters in Munich.

5. Trademarks get more protection at the EU level than at the national level.
An EU trademark better protects a business than a national mark. For example, a small Greek company might apply for national protection, but that trademark protection is only recognized in Greece. However, if the company plans to expand into the European market, it needs recognition at the EU level. In that case, the business would need to submit a trademark application to the EUIPO. The EUIPO application procedure is easier than you might imagine. The EUIPO trademark examiners evaluate the application, and if approved (and not opposed by a third party) the business has an EU trademark.

6. The EUIPO can also take action based on current events.
The EUIPO, as an institution, can also adjust its operations based on current events. As a recent example, the EUIPO reviews applications for non-overnmental organizations or movements that oppose geopolitical conflict. According to its website, the EUIPO publicly condemned Russia’s military action in Ukraine and “halted all cooperation” with Russian intellectual property and patent institutions. The agency also provided a one-month extension for applicants residing or registered in Ukraine.

7. IP policy provides support for small and medium-sized enterprises (SMEs).
EU SMEs can receive tailored, free-of-charge, first-line IP support to develop their strategy. As part of the EUIPO “IP Scan” training session, intellectual property experts look at the company’s business model, products and/or service, and growth plan to assist with formulating an IP strategy from a business perspective. The goal is to empower small businesses to manage and valorize their intellectual assets more efficiently.

8. You can learn more about European IP law from your home in Indiana or in Alicante.
If someone is interested in enhancing their knowledge on IP topics in the EU, the EUIPO “Academy Learning Portal” offers various free courses translated in five of the official languages of the EUIPO (English, French, German, Spanish and Italian). If interested in applying as a EUIPO trainee, a traineeship is available every year. Held in the Alicante office, the EUIPO selects a limited number of non-European citizens for the program.

9. European IP moves toward new horizons in the law.
As business practices change in the EU, IP law must keep up. According to EUIPO Executive Director Christian Archambeau, “EUIPO must develop into an IP excellence hub providing high quality public services that will assist European businesses to become more competitive in an ever more global and digital environment.” The goal is clear: The EU must offer the best possible IP environment for users. Following a digital evolution, the EUIPO has developed a full set of online tools to help creators at every stage of their IP journeys by carrying out innovative projects such as the blockchain IP Register project, the Implementation of Artificial Intelligence program, the data governance and literacy program and more.

10. Data protection is becoming more important to European IP.
IP lawyers in the U.S. should know that the General Data Protection Regulation, the EU’s data protection law, is extremely important for IP filings. Some GDPR obligations are particularly interesting for IP practitioners because they can conflict with IPRs, such as the right of access and the right to portability. The GDPR applies to any business that processes the personal data of EU citizens, residents or businesses that provide goods and services to EU citizens. For example, the database sui generis right (comparable but distinct from copyright) protects the content of a database, which can include personal and sensitive data. Therefore, every IP lawyer should be aware of the GDPR if interested in working with any business, consumer or institution in the EU.•

Esther Earbin is an associate at Dinsmore & Shohl LLP in Indianapolis. Sofia Moula is an IT and data protection lawyer at the European Union Intellectual Property Office. Opinions expressed are those of the authors.

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