2.4 - European harmonisation

Single European market. The realization of a single European market also necessarily requires the harmonization of national IP-rights. Exclusive national IP-rights are, by their nature, an obstacle to the functioning of an borderless internal market, as they can raise national barriers to the trading of products or services. Therefore, the European Union has issued directives for the harmonisation of almost all IP-rights.

Autonomous and uniform interpretation EU law.  The primacy of European law also requires that – as the Court of Justice held in Ansul v Ajax (IPPT20030311) (under 26) – the terms of a provision of European Union law, which make no express reference to the laws of the Member States, for the purpose of determining its meaning and scope must normally be given an autonomous and uniform interpretation throughout the Union. This follows from the requirements of a uniform application of European law and the principle of equality. This European interpretation must take into account (i) the context of the provision and (ii) the purpose of the legislation in question.

European interpretation. This means, for instance, that the interpretation of the concept of “consent” in the Trade mark Directive, which is the decisive factor in the extinction of the exclusive right of the trade mark proprietor under the exhaustion doctrine, is reserved only for European Union law. The interpretation of the concept of “consent” can therefore not be determined by the national law of a Member State that applies to the contractual relationship in which that consent may have been given. In its Davidoff-judgement of 2001 (IPPT20011120), the Court of Justice argued (under 42) that if the concept of consent were a matter for the national laws of the Member States, the consequence for trade mark proprietors could be that protection would vary according to the legal system concerned and that would mean that the objective of ‘the same protection under the legal systems of all the Member States’ – set out in the preamble to directive and described as ‘fundamental’ – would not be attained. (see also under 2.8).

Exclusive EU competencies. The increasing harmonization of IP-rights throughout the European Union also brings with it that in many cases the European Union is exclusively authorized to negotiate international IP treaties and that the Member States are no longer authorized to act individually. That is, for instance, what the Court ruled in its judgement of 4 September 2014 (IPPT20140904) in proceedings between the European Commission and the Council of the European Union on the authority to negotiate for a Convention of the Council of Europe on the protection of neighbouring rights of broadcasting organisations. The Court of Justice held that the content of the negotiations falls within an area covered to a large extent by common EU rules and that those negotiations may affect common EU rules or alter their scope. That judgement was based on article 3(2) TFEU, which provides that the Union has “exclusive competence for the conclusion of an international agreement […] is necessary to enable the Union to exercise its internal competence, or in so far as its conclusion may affect common rules or alter their scope.” In the Daiichi-case of 2013 (IPPT20130718) the exclusive competence of the Union was based on article 3(1) TFEU, which determines that the Union has exclusive competence in the area of the “common commercial policy”, and the fact that with entry into force of the Lisbon Treaty article 207(1) TFEU   provides that “the common commercial policy” encompasses “the commercial aspects of intellectual property”. Consequently, the interpretation of, for instance, the TRIPS-Agreement is the exclusive jurisdiction of the Court of Justice., as the Court found and held in Daiichi. See also CJEU, 24 February 2017, Advice Treaty of Marrakesh (IPPT20170214), CJEU, 25 October 2017, European Commission v Council of European Union (IPPT20171025) and CJEU, 19 October 2023, GSTT (IPPT20231019).

2.4.1. Semiconductor Directive

Semiconductor Directive (1986). This first European directive in the field or intellectual property was in response to the Semiconductor Chip Protection Act that was adopted in 1984 in the United States, which act introduced  a “sui generis” protection for topographies of semiconductors. That United States act also provided that foreign parties are only entitled to protection in the US if their national legislation also grants adequate protection to US nationals. To prevent a situation in which Member States would each introduce their own IP-protection for semiconductors and thus create a varied range of national rights within the internal market, the European Commission took care of the subject. It was therefore primarily for commercial policy reasons that underpin this directive. In addition, the increasing importance of this new technological field also played a role, as can be read in the recital: “[w]hereas semiconductor products are playing an increasingly important role in a broad range of industries and semiconductor technology can accordingly be considered as being of fundamental importance for the Community's industrial development.”

2.4.2. Trade mark Directive

Trade mark Directive (2015). The Trade mark Directive of 2015, adopted on 16 December 2015 (2015/2436), is the latest consolidated and revised version of the Trade mark Directive that dates back to 1989 (89/104/EEC), and which was also revised in 2008 (2008/95/EC). The directive’s purpose is to facilitate the functioning of the internal market, given that national differences in trade mark protection (i) will impede the free movement of goods and the freedom to provide services in the Union and (ii) may distort competition in the common market.

Role Court of Justice of the European Union. In combination with the Community Trade Mark Regulation (40/94) of 1993 – which was replaced by the Community Trade mark Regulation (207/2009) on 13 April 2009, which in turn was renamed European Union Trade mark Regulation 2017 (2017/1001)  (EUTMR) by Amending Regulation on 23 March 2016 which regulation entered into force on 1 October 2017 – the subsequent versions of the Trade mark Directive have ensured that, as from the nineties, the Court of Justice has become the leading European court for trade mark law within the European Union.

2.4.3. Directives on copyright and neighbouring rights

Multiple directives. Contrary to situation for trade mark rights and design rights, there is not one all-encompassing directive for copyrights and neighbouring rights. This is due to the fact that the European harmonization of copyright has known a somewhat fragmented approach. As a result, the overall impression has been that the harmonization of copyrights was less far-reaching that that of trade mark and design law. However, the first Infopaq-judgement of the Court of Justice in 2009 (IPPT20090716) made it clear that copyright’s “work” concept  is harmonized and that, instead of national courts, the Court of Justice has the final say in what the requirements for copyrightability are. Consequently, the influence of the European Court of Justice in IP law within the European Union became much broader than previously thought.

Software Directive (1991). The present Software Directive of 2009 is the updated version of the Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs. That directive made an end to the diverse treatment of computer programs under the various national copyright traditions within the European Community. Article 1 proclaims that “Member States shall protect computer programs, by copyright, as literary works within the meaning of the Berne Convention.”

Rental Directive (1992). The Rental Rights Directive of 2006 replaced the earlier directive 92/100/EEG of the Council of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property. The directive harmonizes in particular rental rights and lending rights of copyrighted works and fixations protected by neighbouring or related rights.

Term of Protection Directive (1993). Today’s directive from 2006 (2006/116/EC) replaces Council Directive (93/98/EEC) of 29 October 1993 harmonising the term of protection of copyright and certain related rights. The main achievement of that directive was to change the principal rule for the minimum term of protection for copyright of “the life of the author and fifty years after his death” – as prescribed by article 7(1) of the Berne Convention – to the life of the author plus 70 years (article 1).

Satellite and Cable Directive (1993). This directive from 1993 harmonizes certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission.

Resale Right Directive (2001). This directive from 2001 introduced a mandatory resale right (droit de suite) for the benefit of the author of an “original work of art”. Article 1 of the directive defines the authors right “as an inalienable right, which cannot be waived, even in advance, to receive a royalty based on the sale price obtained for any resale of the work, subsequent to the first transfer of the work by the author.”

Copyright Directive (Infosoc Directive) (2001). The full name of this directive is Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society. Contrary to the other copyright directives that primarily concern subtopics of copyright, this directive aims to provide unity on a number of main subjects of copyright law. For instance, articles 2 through 5 concern the exclusive exploitation rights of copyright.

Distinguishment exploitation rights. The directive distinguishes between reproduction rights (article 2), communication to the public, including – simply put – making available ‘on demand’ (article 3), distribution rights (article 4) and exceptions and limitations to these exclusive exploitation rights (article 5).

In addition, the directive learns that Member States Member have to – simply put – provide adequate legal protection (i) against the circumvention of effective technological measures that safeguard against infringement  (article 6) and (ii) against any person knowingly removing or changing any electronic rights-management information (article 7).

Work of authorship and Infopaq-judgement. In its Infopaq-judgment of 2009 (IPPT20090716) The Court used the reference for a preliminary ruling under the Copyright Directive to define what constitutes a work of authorship, although the prejudicial questions themselves did not directly address that issue. However, the Court unsurprisingly did not find that questions about what a ‘reproduction in part’ of a work may encompass are hard to answer without knowing what a ‘work’ is. The Court held that, since the directive makes no express reference to the law of the Member States, for the purpose of determining the meaning and scope of, for instance, the concept of a ‘work’, the uniform application of European law and the principle of equality require that it must be given an autonomous and uniform interpretation throughout the Union. Referring to the general scheme of the Berne Convention (under 34) as well as to the Software Directive, the Term of Protection Directive and the Database Directive (under 35), the Court found (under 37) that copyright only applies “in relation to a subject-matter which is original in the sense that it is its author’s own intellectual creation”

2.4.4. Database Directive

Database Directive (1996). Directive 96/9/EC covers the protection of databases, which are defined in article 1 as: “a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means.”

Copyright protection of databases. The directive harmonizes the protection of databases by copyright by providing in article 3(1) that “databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation shall be protected as such by copyright”  and that “no other criteria shall be applied to determine their eligibility for that protection.” Article 3(2) clarifies that this copyright protection does not extend to the data (as such).

Sui generis database protection. In addition, article 7 of the directive introduces a “sui generis database right” for the producer of a database. This protection is to be given “the maker of a database which shows that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents.” It gives this maker the right “to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.”

2.4.5. Biotech Directive

Biotechnological Inventions Directive 1998. This directive harmonises patent law of the Member States. Article 3(1) determines that inventions that meet the regular requirements for patentability – novelty, inventive step and being susceptible of industrial application – “shall be patentable even if they concern a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used.” Article 3(2) learns that “biological material which is isolated from its natural environment or produced by means of a technical process may be the subject of an invention even if it previously occurred in nature.”

2.4.6. Design Right Directive

Designs Directive (1998). Like the Trade mark Directive this directive provides for a far reaching harmonisation of national design rights to eliminate “obstacles to the free movement of goods” and to introduce a “system ensuring that competition in the internal market is not distorted.” In combination with the Community Designs Regulation (6/2002) the Designs Directive has made design law a matter of European law instead of national law.

2.4.7. Enforcement Directive

Enforcement Directive 2004. This directive harmonises the manner in which IP-rights can be enforced within the European Union and provide for processual novelties for certain national jurisdictions, such as ex parte interlocutory injunctions (article 9(4)), measures for preserving evidence, which may include detailed descriptions, taking samples or the physical seizure of the infringing goods (article 7) and the right for a successful party in litigation to have its “reasonable and proportionate legal costs and other expenses” paid by its opponent (article 14). 

2.4.8. Trade secrets Directive

Trade secrets Directive 2016. This directive harmonises the protection of trade secrets within the European Union by implementing the protection for such rights prescribed by article 39 TRIPs. It is assumed that trade secrets are not intellectual property rights in terms of the Enforcement Directive.