The document provides an overview of a seminar on recent developments in intellectual property law and trade secrets. It discusses the key topics covered in the seminar, including an introduction to different areas of IP law, a trademark infringement case study, an IP law quiz, and an analysis of the new EU Trade Secrets Directive and how it compares to US law. The seminar was presented by multiple lawyers from Heffels Spiegeler Attorneys-at-Law and aimed to help clients understand intellectual property rights and how to protect their trade secrets and confidential business information.

1. The Latest Developments regarding IP
and Trade Secrets - Law and Practice
Contributors:
Brigitte Spiegeler
Boyd Ronald Postema
Ondine Sinsheimer
Lingxi Zhong
Marianna Stepanian
Shu-Chien Chen

2. Agenda
• Welcome remarks and Introduction
• Introduction to intellectual property law
ü Trademark law, Patent law, copyright law &
design law
ü ZHEJIANG ZHENGTE CO versus BLOKKER B.V.
and Leen Bakker B.V. Nederland
üIP Quiz
• EU Trade Secrets Directive: A Comparative
View
10/22/13 Starten als handelsagent KvK Den Haag

3. Heffels Spiegeler Attorneys-at-law
Our focus
• Netherlands, France, Germany, China, Taiwan
Our areas of practice
• Intellectual property law
• International trade law
• Corporate law
Our people
• Qualifications from Netherlands, France,
Germany, China, Taiwan, New York

4. What can we do for clients?
• Legal advice
• Trademark & design protection
• Negotiations
• Drafting agreements
• Litigation, arbitration & mediation

6. Wat is Intellectual Property?
• Collective name for right on an intellectual creation such as music,
trademarks, design, inventions, games, software, texts and photographs
etc.
• Best known IP-Law:
– Copyright
– Patent Law
– Design rights
– Trademark Law

7. Intellectual Property
Copyright
• Portrait rights
• Other rights related to copyright:
• Chips- en topography rights
• Database rights
• Neighbouring rights
Industrial property
• Design rights
• Trademark Law
• Patent Law
• Breeder’s right

8. A creation can be protected simultaneously by
several rights
• Trademark: Speedo
• Patent: “Sharkskin”
• Design (dessin)

9. 1. Copyright
• Governed by Auteurswet/ Copyright law
• Automatically arises at creation – no registration criteria or
copyright notice needed
• Exclusive right of the creator of the work to publish and reproduce
this
• Period: until 70 years after the death of the creator
• Copyright holder: author, publisher, employer, heir
Artikel 1 Auteurswet regelt:
Het auteursrecht is het uitsluitend recht van den maker van een werk van
letterkunde, wetenschap of kunst, of van diens rechtverkrijgenden, om dit
openbaar te maken en te verveelvoudigen, behoudens de beperkingen, bij de
wet gesteld.

10. Copyright- Limitation of the law
• Creation = ‚Work‘ in the law (art. 10 Auteurswet)
• Condition for protection: Originality:
– Own original character
– Personal mark of the creator
– Sensory obversable
(Endstra/Nieuw
Amsterdam,
HR 30.05.2008,
NJ 2008, 556)
(+) Photos, drawings, computersoftware, texts, audio- en video material etc.
(-) thoughts, reproductions, business messages, laws, facts etc.

11. What is a patent?
• Patents give you a temporary exclusive right on an invention
• With a patent you can protect yourself against free-riding by others, who would
benefit from the success of your invention
• Statutory provisions:
– Rijksoctrooiwet 1995 (ROW)
– Europees Octrooiverdrag (EOV)
• Conditions for a patent issue of a technical invention (art. 2 ROW, art. 52 EOV):
• novelty,
• inventiviness en
• Industrial applicability
Valid for maximum 20 years from the moment of submission.
2. Patents

12. 3. Trademark Law
What is a trademark?
A mark that differentiates your products or services from your
competitors (art. 2.1 Benelux-verdrag inzake de intellectuele
eigendom, BVIE)
Word mark: CHANEL Shape trademark:
Logo: Colour mark:
Combination word mark Sound mark:
and logo:

13. What isn’t a trademark ?
Examining on absolute grounds:
• The absence of a distinctive character
• Not descriptive
• Not misleading
• Not contrary to public order and common morals

14. Trademark registration
You can choose yourself in which countries you want the trademark to be
protected.
Trademark registration in the Benelux:
• Statutory provision: Benelux Verdrag inzake de Intellectuele
Eigendom (BVIE)
• Registration at the Benelux Office for Intellectual Property (BOIP),
the Hague
• Registration is valid for 10 years (extendable), Art. 2.9 BVIE
• Costs: trademark registration in three classes = € 240

15. Procedure at the BOIP

16. Trademark registration outside the Benelux
Europe:
• One single protection in all 28 member states of the European
Union
• European Union Intellectual Property Offce (EUIPO)
International:
• International registration based on a previous starting
registration
• Trademark protection in countries which are member of the
Madrid Protocol (more than 90 countries)
• World Intellectual Property Organisation (WIPO), Geneva
(www.wipo.org)

17. 4. Design rights
What is a design?
The appearance of a product or a part thereof.
• Drawing: two-dimensional product (e.g. a patern or design on
wallpaper, textile etc.)
• Design: three-dimensional product (e.g. design of (mobile)
telephones, furniture, toys etc.)
• Conditions for protection:
– New(about 12 months)
– Individual character
• Difference patent and design:
• Patent protects an invention of a technical product or process
• Design only applies to the appearance of a product and can’t
protect the function of a product
• Design is less expensive

18. Design rights- the statutory provisions
• Design right in Benelux:
• Benelux Convention on Intellectual Property (BVIE)
• Design right Europe:
• Regulation on Community Design
• Design harmonisation Directive

19. Design – registration possibilities
• Benelux design: Benelux Office for Intellectual Property (BOIP), the
Hague
• Registered Community design: European Union Intellectual
Property Office, EUIPO
• Non-registered Community design: no registration
• International model: World Intellectual Property Organization,
WIPO (Geneva)
Costs BOIP: single online depot for 5 years: € 108 (plus € 10 per attached
image)
Duration procedure BOIP: definitive registration takes about 4 months

20. Design – registration periods
• Benelux design:
– 5 years
• Extension:
• Period may be extended for four consecutive times for a
maximum of 25 years
• Registered Community design: identical periods as the Benelux
design
• International: registration period of 5 years, after extendable every
five years, until the maximum of the country concerned.
• Non-Registered Community design: 3 years protection from the
first day when it’s publicly available in the EU

21. The Partytent infringement Case
Zhejiang Zhengte co. v. Blokker B.V. and Leen Bakker B.V. Nederland

22. Court of The Hague
02-11-2016

23. Procedure & facts
• Zhengte, a Chinese producer of high quality
garden products
– Sells party tent “Zhengte model” in Europe
• Blokker and Leen Bakker, Dutch retail
company
– Sells party tent “Le Sud party tent” in Benelux
vs.
• Infringement by Blokker and Leen Bakker?
• Preliminary injunction, urgent interest

24. Arguments by the Court
• Legitimate and valid design by Zhengte, but why?
– A new design
– Individual character
• Infringement by Blokker and Leen Bakker
– No different overall impression
§ Party tents have the same elements

25. Conclusion of the Court
• The “Le Sud Party tent” does not produce a
different overall impression
• The injunction sought by Zhengte to retrieve all
“Le Sud Party tents” has been granted.
• The injunction allocated to all countries of the
European Union. Strong right!

26. QUIZ
Violation of intellectuel Property?
What do you think?

27. Art work inspired by
the picture here above

29. Gucci vs. Guess
Guess Gucci

30. PUMA vs. Sabèl

32. Protecting your know-how and business
information
Trade Secret Directive
2016/943
Compared to the
American DTSA

33. Directive in short
• Date:will be implemented in all Member States before May 2018
May 2016
May 2018
EU Council Today - TIME TO ACT
All Member States
adopts the
need to be compliant
directive
• European Directive on the protection of undisclosed know-how and
business information against their unlawful acquisition, use and
disclosure
• Aim: harmonize trade secret definition and protection around the EU
– Avoid a fragmentation of the single market and the weakening of the deterrent effet of the
rules

34. DTSA in short
• Signed by President Obama on May 11th
2016, took effect immediately
• Provides federal private right of action for
trade secret protection

35. Similar Aims and Scopes
• Desire to unify, or federalize, trade secret
protection
• Strengthen the deterrent effect of the relevant
rules
• 3 main criteria:
– Secret/commercial value in being secret/steps
taken to keep it secret

36. What is a trade secret ?
(Dir. article 2)
• it is not generally known among or readily
accessible to persons within the circles that
normally deal with the kind of information in
question;
• it has commercial value because it is secret;
• it has been subject to reasonable steps under
the circumstances, by the person lawfully in
control of the information, to keep it secret.

37. Why you should be interested
• Directive takes into account companies’ real
needs and listened to the businesses
• Harmonized Trade Secret rules means
• Less business risk in EU countries
• Stronger protection of your trade secrets
• Easier cross-border business within the EU
• Easier to share trade secrets and to seek remedy in
case of misappropriation

38. Lawful conducts
DTSA Directive
• Reverse engineering
• Independent derivation
• Any lawful means of acquisiton
• Reverse engineering
• Independent derivation
• Any honest commercial practices
• Exercise of the right of workers or
workers’ representatives to
information and consultation provided
that such disclosure was necessary for
that exercise
• Exercise of the right to freedom of
expression and information as set out
in the Charter of EU Fundamental
Rights

39. When can you act?
• Against the unlawful acquirer of a trade secret
– “Unauthorized access”
– “Any other conduct contrary to honest commercial
practices”
• Against a person who knew or ought, under the
circumstances, to have known that the trade secret
had been obtained directly or indirectly from
another person who was using or disclosing the
trade secret unlawfully

40. Standing
• DTSA: Trade Secret’s owner
• Directive: owner or any person who lawfully
controls the trade secret
• Broader standing for the directive

41. Remedies
• Injunctions
• Damages
– Lost profits / Account of profits
– Or lump sum for a reasonable royalty for the trade secret
use
• Controversy with the ex parte seizure of the DTSA
• Directive allows for seizure, but silent as to whether can be ex parte
• DTSA allows for increased damages for malicious activities and
potential criminal liability – not the Directive
– No enhanced penalty for malicious activity, and no criminal penalties

42. Particularities
• Confidentiality can be kept during a legal proceeding
– Not default, needs court approval in the EU
• Protection of whistleblowers, who can publish trade
secrets to serve public interest
– Much broader in Directive than in DTSA, which protects
only whistleblowing to the government, or in a court filing
– DTSA requires employers to let employee know if this
possibility and protection, which is not the case of the
Directive

43. Employee mobility and non-compete
agreements
• Both regimes are protective of employees rights,
– Directive less explicit but the subject cannot be ignored
• DTSA:
– Injunctions against former employee must be based on
evidence of threatened misappropriation and not simply on the
fact that the person may know certain information
– Non compete agreements cannot conflict with applicable state
laws

44. Actions and practical tips
• Identify your trade secrets and where they
are created
• Assess your EU wide approach
• Review your IT systems

45. Actions and practical tips (ct’d)
• Ensure precautionary measures are in place to
minimize liability when hiring employees from
competitors
• Identify your internal protective mechanism,
including:
– Training procedures
– Employment contracts - mobility and non compete
agreements
– Use of NDAs

46. Actions and practical tips (ct’d)
• Monitor best practice in terms of
demonstrative steps (compliance)
• Monitor policies implemented on a national
level and take appropriate action to adjust.
• Work with Confidentiality Agreements when
dealing with third parties.

47. Any questions ?
Thank you for your attention!

48. Heffels Spiegeler Advocaten /Attorneys-at-Law
Tel : +31(0)70 - 21 70 200 E-mail: mail@heffels-spiegeler.com