CE Marking: What Can Legal Metrology Learn From Intellectual Property?

CE Marking: What Can Legal Metrology Learn from Intellectual Property? Christian Bock Swiss Federal Office of Metrology METAS

“ CE marking is not protected today with the same rigour as would an object of intellectual property” The role and significance of the CE marking European Commission. Draft Certif Doc 2005-11 13-5-2009

13-5-2009 Private Public Intellectual Property Legal Metrology

Intellectual Property in a Nutshell 13-5-2009 Copyright Industrial Property Designs Inventions Marks Unfair Competition Literary, scientific and artistic works 70y after † 5 * 5y 20 * 1y + 5y n * 10y

1. Intention of the European Commission to register the CE marking as a trade mark: Why Intellectual Property and CE Marking / Legal Metrology? 13-5-2009 “ The legal protection of the CE marking which is granted by its registration as a Community collective mark allows public authorities to ensure proper enforcement and to legally pursue violations.” Consideration 23 of the Proposal for a Decision of the European Parliament and of the Council on a common framework for the marketing of products; COM(2007) 53 final [This consideration will not be found in the final Regulations (EC) No 764&765/2008 or Decision No 768/2008/EC]

2. Other conformity signs are trade marks Why Intellectual Property and CE Marking / Legal Metrology? 13-5-2009 Copy from a VDE test certificate and trade mark license

2. Other conformity signs are trade marks and will coexist with the CE marking Why Intellectual Property and CE Marking / Legal Metrology? 13-5-2009 Article 16(3) COM(2007) 53 final ( draft ) The CE marking shall be the only marking which attests conformity of the product with the applicable requirements. Member States shall refrain from introducing into their national regulations or shall withdraw any reference to a conformity marking other than the CE marking in connection with conformity to the provisions contained in the legislation on CE marking. Article 30(5) Regulation (EC) No 765/2008 The affixing to a product of markings, signs or inscriptions which are likely to mislead third parties regarding the meaning or form of the CE marking shall be prohibited. Any other marking may be affixed to the product provided that the visibility, legibility and meaning of the CE marking is not thereby impaired .

3. Overlap in misuse cases Why Intellectual Property and CE Marking / Legal Metrology? 13-5-2009 bad guys ― stupid guys bad and ugly guys good guys bad guys incorrect CE marking correct CE marking original product counterfeited or pirated product

4. CE marking and intellectual property face the same challenges Why Intellectual Property and CE Marking / Legal Metrology? 13-5-2009 Conflicting marks Incorrect design Inadequate legibility, visibility and indelibility Non-affixing of the CE marking Mistaken timing of the affixing of the CE marking Deceptive marking Use of other marks liable to cause confusion with CE marking Conformité Européenne China Export

5. With the new set of rules (“ goods package ”; Regulations (EC) No 764&765/2008 and Decision No 768/2008/EC) the European law maker has taken measures to strengthen the new approach and gave member states the obligation to fight actively against false CE marking. Why Intellectual Property and CE Marking / Legal Metrology? 13-5-2009

1. The CE marking might not be a trade / collective mark but it is a valuable brand 2. The consequences of a CE collective mark Measures of intellectual property against counterfeiting and piracy Technical measures to ensure authenticity What Can Legal Metrology Learn from Intellectual Property? 13-5-2009 ( )

CE marking is mandatory for goods under the New Approach Directives Passport for free circulation of goods within the EEA+CH. Declaration by the manufacturer that the product conforms to all applicable harmonised provisions. CE marking is the same for self-declaration by the manufacturer (module A; SDoC) and third-party involvement (modules B-H). In some cases ( e.g. , metrology) additional signs are possible: The New Approach is a one-size-fits-all approach which is unwilling to give protection to other markings than CE. What’s in a Name? The Content of the “CE Brand” 13-5-2009

The responsibility for correct CE marking lies with the manufacturer. But in many cases there is a whole systems of economic partners guaranteeing the proper functioning : importers enforcement authorities customs notified bodies Not to forget those persons who have an interest in a well functioning system: competitors consumers / end users Recent studies have shown that the meaning of CE marking is not always understood by consumers and end users What’s in a Name? The Content of the “CE Brand” 13-5-2009

The CE marking might not be a trade / collective mark but it is a valuable brand The one-size-fits-all approach should be examined either in a horizontal ( i.e. , between different New Approach directives) or vertical way ( i.e. , between different modules plus additional metrology procedures). There must be an ‘ owner ’ of the CE brand. The legitimate interest of all stakeholders of the CE brand must be guaranteed. What’s in a Name? The Content of the “CE Brand” 13-5-2009 Learnings

“ Since all products covered by New Approach directives bear CE marking, this marking is not intended to serve commercial purposes. Neither is the CE marking a mark of origin , as it does not indicate that the product was manufactured in the Community ” Guide to the implementation of directives based on the New Approach and the Global Approach (“Blue Book”, 2000), p. 44, sec. 7.1 “ The legal status of the CE marking is established by the directives and is not a commercial quality mark ” Enhancing the Implementation of the New Approach Directives, COM(2003) 240 final What If? 13-5-2009 Until 2003/04 the protection of the CE marking as a trade mark was a no-go:

What If? 13-5-2009 A collective mark is a trade mark registered by an association or a legal person governed by public law. Unlike an ordinary trade mark a collective mark does not entitle the proprietor to prohibit a third party from using it, provided the use is in accordance with honest practices in industrial or commercial matters (articles 64 ss. Council Regulation (EC) No 40/94). “ The Commission has already initiated the procedure to register CE marking as a Community collective trade mark. National market surveillance authorities will have an additional means to take legal action against manufacturers providing non-compliant products and misusing CE marking. In addition, economic operators/competitors will be entitled to bring proceedings for infringement and to claim for compensation.” Answer (9.1.2008) to the Parliamentary Question No P-5938/07 China Export mark feeding off the reputation of the European Conformité européenne mark

What If? 13-5-2009 Registration of similar CE marks is no longer possible (cf. Blue Book, p. 46, sec. 7.4). The CE sign could be registered outside the EU as a trade mark. I.e. , anyone infringing the New Approach directives (directives providing for the CE marking) outside the EU could be sued. The owner of the ‘CE collective mark’ (The European Commission ?) may allow a person who has the authority to use the mark to sue against infringers. Thus, an infringing competitor can be sued . The owner of the ‘CE collective mark’ is entitled to claim compensation on behalf of persons who have authority to use the mark where they have sustained damage in consequence of unauthorized use of the mark. The Good News

What If? 13-5-2009 There may be older CE marks inside and outside the EU. Is the legal owner also the real owner? An intellectual property right must be protected against: Other intellectual property rights Misuses and abuses There is a risk of dilution if a collective mark is not defended The Not-So-Good News

What If? 13-5-2009 The registration as a collective mark will strengthen the position of the stakeholders of the CE marking system . The protection through intellectual property rights is a relative easy and straightforward way to acquire protection of the CE marking abroad. In my opinion, the European Commission has not yet clearly defined who the owner of the CE marking is. If this role is given to the Member States the risk of failure through trade mark protection is relatively high. Learnings

The IP Toolbox against Counterfeiting and Piracy 13-5-2009 Civil measures Criminal sanctions [Customs cooperation] Relations with third countries Administrative cooperation between stakeholders

The IP Toolbox against Counterfeiting and Piracy 13-5-2009 The rightholder can ask for destruction, recall or permanent removal from the market . Financial compensation, injunctions and damages. Protection of legitimate interests of defendants and potentially innocent offenders. Civil Measures Under actual CE marking legislation the competitor may have only rights from unfair competition or as a buyer (product liability and contractual damages).

The IP Toolbox against Counterfeiting and Piracy 13-5-2009 The EU is proposing to treat all infringements of intellectual property on a commercial scale as a crime . Criminal Sanctions “ The Member States shall lay down rules on penalties for economic operators, which may include criminal sanctions for serious infringements, applicable to infringements of the provisions of this Regulation [setting out the requirements for accreditation and market surveillance relating to the marketing of Products] and shall take all measures necessary to ensure that they are implemented. The penalties provided for shall be effective, proportionate and dissuasive and may be increased if the relevant economic operator has previously committed a similar infringement of the provisions of this Regulation”. Article 41 Regulation (EC) No 765/2008

The IP Toolbox against Counterfeiting and Piracy 13-5-2009 Customs Cooperation

The IP Toolbox against Counterfeiting and Piracy 13-5-2009 International cooperation on horizontal and vertical level. Enforcement practices (fostering a climate of active and effective enforcement procedures). Legal framework / appropriate tools. Ongoing negotiations for an Anti-Counterfeiting Trade Agreement. Relation with Third Countries Plurilateral cooperation in market surveillance and especially conformity is weak. The WTO-TBT agreement contains only some basic rules.

The IP Toolbox against Counterfeiting and Piracy 13-5-2009 Data collection and exchange. Sharing of best-practices between administrations and industry. Public-private cooperation. Inter-industry deals (track-and-trace, authentication). Administrative Cooperation between Stakeholders Technical measures against counterfeiting and piracy should not be used for intellectual property protection alone but also for legal metrology .

CE Marking: What Can Legal Metrology Learn from Intellectual Property? 13-5-2009 The simple registration of the CE sign as a collective mark will be a failure as long as there is no responsible brand owner. The rights of stakeholders (competitors, consumers, end users) should be strengthened either through existing procedures ( e.g. , in intellectual property) or the New approach legislation. A protection ‘at home’ or ‘at the border’ is not enough. Conformity signs and procedures must be protected worldwide. The recent legislative package (Regulations (EC) No 764&765/2008 and Decision No 768/2008/EC) – from an IP enforcement point of view – a good step. But differences between both procedures should be minimized .

CE Marking: What Can Legal Metrology Learn from Intellectual Property? 13-5-2009 If legal metrology is really interested in consumers and end users they should walk the talk and stop to communicate like bureaucraticies.

Have we gone too far? 13-5-2009

CE Marking: What Can Legal Metrology Learn From Intellectual Property?

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CE Marking: What Can Legal Metrology Learn From Intellectual Property?