INTELLECTUAL

PROPERTY RIGHTS
RELEVANT FOR THE
TOY INDUSTRY
Written for Toy Industries of Europe (TIE) by:
De Gier | Stam & Attorneys
Lucasbolwerk 6
3512 EG Utrecht
+31 30 230 30 10
evertvangelderen@degierstam.nl
www.degierstam.nl May 2012
CONTENTS
INTRODUCTION 2
THE NAME OF THE PRODUCT: TRADEMARK RIGHTS 4
What can be protected by trademark rights? 4
What are the requirements for a trademark? 5
How are trademarks acquired? 5
What is the duration of trademark protection? 7
Who is the right holder of a trademark? 7
What can you do with a trademark? 7
Costs for registration 8
Overview of trademark rights 9
THE SHAPE OF THE PRODUCT AND TEXT: COPYRIGHT 10
What can be protected by copyrights? 10
What are the requirements for copyright? 11
How are copyrights acquired? 11
What is the duration of copyright protection? 12
Who is the right holder of the copyrights? 12
What can you do with copyrights? 13
Overview of copyright protection 14
THE SHAPE OF THE PRODUCT PART TWO: DESIGN RIGHTS 15
What can be protected by design rights? 15
What are the requirements for design rights? 16
How are design rights acquired? 16
What is the duration of protection of a design right? 17
Who is the right holder of a design right? 18
What can you do with design rights? 18
Costs for registration 19
Overview of design rights 20
THE TECHNICAL FUNCTION OF THE PRODUCT: PATENT RIGHTS 21
What can be protected by a patent? 21
What are the requirements for patent rights? 21
How are patent rights acquired? 22
What is the duration of patent protection? 22
Who is the right holder of a patent? 23
What can you do with patent rights? 23
Costs for protection 24
Overview of patent protection 25
UNFAIR COMPETITION 26
Unfair competition and passing off 26
BORDER MEASURES 27
What are border measures? 27
How does the system of border measures work? 27
Costs for the application 28
CONCLUSION 29
USEFUL LINKS 31
4 Intellectual property rights relevant for the toy industry
INTRODUCTION
Intellectual property rights (often called IP
rights) are very important to the toy industry.
For an innovative industry in which
approximately 60% of toys on the market
each year are newly developed products, IP
rights are of utmost importance as they
enable companies to protect their inventions
and to continue investing in innovation, and
to act against companies that use their
creative designs without permission.
Counterfeit toys can pose safety problems as
they do not necessarily comply with the
relevant safety standards. Reputable
companies take these responsibilities very
seriously and are aware that putting
substandard products on the market could
damage their reputation. Companies protect
their name in order to build a reputation. IP
rights are often a companys biggest assets.
IP rights promote fair competition as
companies can legally be forced to play by
the rules. They can be used to prevent free-
riding on the efforts of other company.
As many toys only have a short market life,
enforceable and harmonised legislation and
quick and cheap measures are needed in
order to ensure that toy companies continue
to invest in innovative products. In this regard,
TIE is engaged in several discussions at the
European level and supports the work of the
European Union (EU) on strengthening the
legal framework of IP rights.
This brochure provides an overview of
the IP rights relevant for toy companies. For
each right the most important aspects are
explained. How are these rights obtained? Do
they exist automatically or do they have to be
registered? And what are the requirements
for protection? What are the costs, and how
long does the protection last? And, also very
importantly: who owns the IP rights?
First of all, trademark rights are discussed.
Trademark rights protect for example the
name or the logo of a toy product. Copyright
and design rights are also explained. These
rights can ensure that the design of the toy is
protected, and that copies of that design can
be taken off the market. Further, the most
important aspects of patent rights will be
discussed. These rights protect inventions,
such as certain technical aspects of a toy.
 Introduction 5

Apart from these IP rights, there are other
means that toy manufacturers can use by
way of protection. For instance, some
national laws prohibit pirated/copied products
based on unfair competition.
There are also European rules that provide
means to stop infringers. For instance,
European law enables local customs to stop
infringing toys at the European borders, also
on the specific request of an IP right owner.
Since such means are both effective and
cost-efficient, these border measures shall
be explained in this brochure as well.

THEO THE TRAIN

In order to make the law a bit less abstract, an example will be used to describe the area
of law discussed. Please meet Theo the Train.

Theo the Train is a brightly coloured electric model train. Theo the Train is a highly
innovative train. Not only because it does not look like any other model train (or real train
for that matter) that was designed in the past, but also because it makes use of some
clever technologies that make it run very smoothly on its railway.

Theo the Train is the pride of a toy company called Trainmania. It wishes to protect
Theo as best as possible. Every aspect of the train must be covered, in order to prevent
competitors from making counterfeit trains, under similar names. Can Trainmania protect
its train? What rights can it use?

This brochure aims to answer these questions.

6 Intellectual property rights relevant for the toy industry

THE NAME OF
THE PRODUCT:
TRADEMARK RIGHTS
 The name of the product: Trademark rights 7

Trainmania designed Theo the Train and it is now ready to be put on the market. Before
Trainmania does that, it would like to protect Theo the Train as much as possible. First of
all, it will take a look at the name Theo the Train and the logo that was designed. Trainmania
would like to prevent another company from selling similar or identical products with the
same or a similar name, such as Theo the Train or Theo the Plane.

Trademark rights can help to do this. However, trademarks are about much more than just
protecting a name. They are also about building a brand and keeping it strong, in order to
generate revenue for years to come.

In order to find out if trademark rights can be of any help, this right will be further explained.

WHAT CAN BE The difference between a word mark and a

PROTECTED BY
TRADEMARK RIGHTS?
When a consumer walks into a toy shop, he
will be presented with a multitude of different
names and logos. These names and logos
make it possible for him to distinguish the
product from another, but also to see which
company has produced these products.
Maybe he has had positive experiences with
products of that company in the past or
heard of that company from friends.
In other words: a company can think of a
name or a logo that distinguishes its toys
from those of other companies. Such a name
can represent certain goodwill.
Names are the most common signs that are
protected as trademarks. The electrical train
in our example is called Theo the Train. If only
the name is registered, without any figurative
symbol or without logo, the mark is called a
word mark.
A logo can also be protected by registering it
as a trademark. This is called a device mark
or figurative mark. For instance if the name
Theo the Train is depicted in a special font of
several bright colours or a drawing of a train
is used in the logo, this is a device mark.
device mark is that a word mark protects the
name Theo the Train against signs with a
similar wording. The device mark protects
against a similar impression of a logo.
Under certain circumstances, shapes (such
as packaging or product shapes), colours or
sounds can be protected as well as a
trademark, but this does not happen very
often.
If a companys name is also printed on (the
package of) the toy (and is thus also used to
distinguish its products from products of
other companies), this name can also be
registered as a trademark. This is not
necessarily the same name as the name of
the toy. Theo the Train is put on the market by
Trainmania. Trainmania advertises for the toy
with both its own name and Theo the Train.
Both Theo the Train and Trainmania can be
registered as trademarks.
If the company uses its name in the course of
its business, it could have trade name rights
as well. This is a different area of IP. Laws with
respect to trade names vary from country to
country, but normally one can prevent other
companies from using that particular name
as a trading name if there is a risk that the
consumer will be confused.
8 Intellectual property rights relevant for the toy industry
WHAT ARE THE
REQUIREMENTS FOR
A TRADEMARK?
Before Trainmania decides to register the
name Theo the Train as a word mark and
the designed logo as a device mark, it is
important to know which criteria it should
take into consideration.
1 Distinctive character
Most importantly, the sign must be able to
distinguish the product from products of
other companies. In other words, it must
have distinctive character. If the train is
merely called Electrical Train or the logo only
consists of the picture of a train, it is likely that
the average consumer will not perceive this
sign as a clue that the train was sold by
company X instead of company Y. Therefore,
it is difficult to protect descriptive signs as a
trademark.
In the example of Theo the Train, the part the
Train is descriptive. Nevertheless, the
element Theo must be regarded as a
personalising item which does not describe
(any features of) model trains. Therefore, the
sign as a whole can be registered.
2 Further requirements
Further requirements for trademarks are that
they are not contrary to public order or
accepted principles of morality (such as
swear words), are not misleading (for
instance when you use the term organic for
the toy but it was not produced organically)
and they may not consist of national or
regional flags, coats of arms or official
emblems.
HOW ARE TRADEMARKS
ACQUIRED?
In Europe, trademark rights normally only
exist after registration of the sign. Please
note that the mere use of the sign does not
create any trademark rights in most European
countries. The registration is filed at national,
European or international trademark offices.
In some European countries, such as the UK,
Germany, France, Denmark and Sweden,
exclusive rights to trademarks can also be
acquired without registration, through usage
of the sign. In that event, a sign must be
incorporated or have secondary meaning.
This means that the sign is known to a
significant part of the public as a symbol for
the goods or services.
In order to register a trademark, Trainmania
needs to file a request at a trademark office
and ask for registration of the trademark
Theo the Train. But which office should one
go to? This depends on the area in which you
or your distributors intend to sell your product
or in which it is likely that infringing products
will be offered.
Trademarks are registered for different areas
(countries).
If a toy is only sold in one country, one could
apply for a national trademark. This is
done at the local trademark office. Belgium,
the Netherlands and Luxembourg do not
have their own trademark rights. There is a
Benelux trademark. This trademark is valid
in all three countries at the same time.
It is also possible to register a trademark
that is valid in all EU Member States. This is
called a Community Trademark or CTM.
One applies for a CTM at the Office for
Harmonization in the Internal Market
(OHIM). In that event, the sign is valid in all
27 countries of the EU.

If protection in several national countries is
needed, the trademark can be registered by
using the international registration
procedure, which is offered by the World
Intellectual Property Center (WIPO). In this
procedure, a selection of countries can be
made for trademark protection.
A company incurs the least costs if it only
chooses to register the trademark in one or
two countries. However, this can pose a risk.
If for instance the trademark is registered for
the UK, other parties can, in principle, freely
use the sign in Sweden. Also, if one applied
for a CTM, third parties could use the sign in
the United States or in Australia.
As retail channels are becoming increasingly
complex with e-commerce meaning that a
consumer can purchase a product online
from a different country, a company should
carefully consider in which countries it will
register its trademarks.
After receiving a request for registration,
trademark offices will only check whether the
trademark meets all the criteria and whether
all formalities have been fulfilled. It will for
instance check whether the fee has been
paid and whether the sign has distinctive
character. This means that the trademark is
capable of fulfilling an actual distinctive
function: it enables the public to distinguish
the goods from another toy companys
product. The mark must be able to
individualise the trademarked goods or
services.
Trademark offices will not check whether the
sign might infringe on the trademark rights of
third parties.
For this reason, the right holders of older
trademarks can oppose the registration of the
sign during a certain period of time (usually
three months). In some countries, such as
Spain and Bulgaria, companies can even
The name of the product: Trademark rights 9
oppose the registration of a sign if they have
not registered the sign as a trademark
themselves, but have been using it in order to
distinguish goods or services. Once a sign is
registered as a trademark, right holders also
can take steps to annul the trademark.
WHAT IS THE DURATION
OF TRADEMARK
PROTECTION?
Since Trainmania plans to make Theo the
Train a long-lasting product, it is important to
consider the duration of the protection.
Trademark rights can in principle provide an
everlasting protection, as long as two
requirements are fulfilled. First of all, every 10
years registration fees must be paid to
renew the mark. In most countries, the
trademark office will send a reminder when
this time has come. The trademark office in
Bulgaria does not. Secondly, the trademark
must continue to meet all of the requirements.
For example, the trademark must be used
and not become a generic name. If a
trademark is not used normally for five
consecutive years, a third party can request
the cancellation of that trademark.
Also, if a trademark becomes generic, it can
be declared invalid. There are some
companies with trademarks that have the
ability to become generic.
Examples of trademarks that have become
generic in the UK are ESCALATOR for moving
staircases and LINOLEUM for floor coverings.
In Bulgaria, the trademark VERO is often
used to refer to dishwashing detergents in
general, and ELKA is commonly used to refer
to electronic calculators. In Germany, the
trademark TEMPO has become generic for
handkerchiefs and EDDING for pens.
Swedish examples of degenerated words are
NYLON, GRAMMOFON, DYNAMIT and
10 Intellectual property rights relevant for the toy industry
JEEP. In Spain, the trademarks CELLO (for
sellotape), Mery (for mops), POLO (ice
lollipops), TRMIX (electric mixers) and
Bamba (sneakers) are now well-known words
for types of products. In the Netherlands,
judges have ruled that VLAMMETJES (for
spicy egg roles) and KINDERCOLA (coke for
children) have become generic words. French
examples are BIC (for pens) and FRIGIDAIRE
(for refrigerators). These names are now often
used to refer to a certain type of product
instead of referring to the product of that
company.
WHO IS THE RIGHT
HOLDER OF A
TRADEMARK?
The person or company that registers the
trademark and whose name is displayed in
the register is the owner of the rights. Once
the trademark Theo the Train is registered,
the registration will show the owner of the
trademark: Trainmania.
Please note that special attention is needed
when a company has franchisors or
distributors. In principle, they can register
trademarks as well. A distributor could
register Theo the Train if Trainmania did not
do so. Once the distributor has registered the
trademark, the distributor will be the owner.
As long as there is a commercial relationship,
this will not be a problem. It might be a
problem when the relationship with Trainmania
ends.
It is therefore advisable to make an agreement
with distributors about who can register
trademarks and under which conditions, for
example that the trademark has to be
transferred if the collaboration ends.
WHAT CAN YOU DO
WITH A TRADEMARK?
With the trademark Theo the Train,
Trainmania can object against third parties
selling trains or similar products under that
name or a name that looks, sounds and/or
is conceptually similar, if certain tests are
satisfied.
If Theo the Train becomes a well-known
trademark, there are some additional
advantages. Well-known trademarks can
also act against third parties that use the
same or a similar sign for different products or
services. Free-riding, such as taking unfair
advantage of the popularity of the well-known
trademark, is also not allowed.
Please note that even if one has registered a
trademark, there is no absolute right granted
to use this name for all products, only the
classes of products or services it is registered
for. The same name can be used by a third
party for different products or services, as
long as there is no risk of confusion or no
unfair advantage is taken of a well-known
similar mark. For example, in the Netherlands
the name Jumbo is used by a producer of
puzzles and board games as well as by a
chain of supermarkets. There are 45 different
classes for products and services. Class 28 is
particularly important as it covers toys and
games.
In the event of an infringement, one can
demand that the infringing party stops using
the infringing sign. Further to that, a judge
can oblige the infringer to recall the products
with the infringing sign. The infringer may
have to hold the right holder liable and pay
either the lost profits of the right holder or
the profits that were made by the infringer
because of the infringement.
 The name of the product: Trademark rights 11

COSTS FOR As mentioned previously, Class 28 is

REGISTRATION particularly important for the toy industry.

Normally, prices vary between about 200 for
national trademark registrations and 1,500
for a European trademark.
The costs depend on a number of things.
First of all, the area for which protection is
sought can influence the costs. A national
trademark is in general cheaper than a
Community trademark. However, for about
1,500 a Community trademark covers 27
countries and is therefore much cheaper than
27 national registrations.
Besides that, it is important to decide for
what products and/or services the trademark
is registered. A trademark registration does
not automatically cover all types of products
or services. In trademark law, products and
services are divided into several categories,
such as toys, stationary, etc. These categories
are called classes.
The number of classes for which the
trademark is registered influences the costs.
The standard price for the trademark
registration includes the registration for three
classes. One has to pay for adding additional
classes to the trademark registration.
However, registering an extra class is cheaper
than registering a completely new trademark.
To give an indication, the costs for registering
an extra class for a CTM are about 150.
Most trademark offices allow trademark
applications to be filed electronically. This is
generally cheaper than a paper application.
It is possible to apply for a trademark
yourself, but there are also companies that
are specialised in trademark registrations
(trademark agents). They can help with the
research for already registered rights, drafting
a registration and fulfilling all formalities.

OVERVIEW OF TRADEMARK RIGHTS

The name or the logo of the toy, the name or the logo of the company
What does
(if they are used to distinguish the products of that company from those
it protect?
of other companies).
Through registration. In some European countries, such as the UK,
How is it
Germany, France, Denmark and Sweden, unregistered rights may be
acquired?
acquired through use.
Capable of distinguishing goods/services from that of another
What are the (distinctive character), non-descriptive, not contrary to public order or
requirements? accepted principles of public moral, not misleading, not consisting of
national flags, coats of arms or national emblems.
Who owns
The person/company appointed in the registration.
the rights?
How long
Everlasting, providing all fees are paid, the trademark is actually
do the rights
used and does not become a generic name.
last?
What does Normally between 200 (national trademark) and 1,500
it cost? (European trademark) no professional fees are included.
Prevent third parties from using the same sign for toys or a similar confusing
What can you
sign for similar products. Well-known trademarks can also prevent the use of
do with it?
a similar sign for other products under certain conditions.
12 Intellectual property rights relevant for the toy industry

THE SHAPE OF THE

PRODUCT AND TEXT:
COPYRIGHT
 The shape of the product and text: copyright 13

Now Trainmania has only protected the name and the logo of Theo the Train. Hard work is
put into inventing an intriguing story of Theo the Train and giving the toy an appealing ap-
pearance, in order for consumers to purchase it. Also, a manual is drafted and packaging
is designed. In order to prevent others from coming up with an identical or similar toy de-
sign or copying the manual or the packaging, the company needs to take a look at copy-
right protection.

WHAT CAN BE In the UK, however, such works will only be

PROTECTED BY
COPYRIGHT?
Copyright protects works of literature,
science or art. Fortunately, almost every
creation can be seen as art, as long as it fulfils
the requirements that are described below. It
is not necessary to create a new Van Gogh or
to sculpt a Rodin. Toys, packaging, logos and
texts can be subject to copyright protection.
However, whereas the invented story of Theo
the Train is likely to be protected, a manual
with only technical instructions on how to use
the toy may not.
When taking Theo the Train as an example, in
most countries all graphical elements of the
train (such as the overall shape, a colourful
pattern that is used, drawings, a photo or
certain special fonts), can fall under the
scope of copyright. Some toys can make
sounds, such as musical boxes. If the
company composed a new song especially
for that toy, the tune and the text of that
song can be copyright protected. The
graphical representation of characters can
also be protected under copyright law, such
as Spongebob Squarepants, Beavis and
Butthead and the X-Men.
protected by copyright if they are considered
original artistic works. In the UK, very few 3D
articles qualify as sufficiently artistic to be
protectable by copyright. By contrast, almost
any two dimensional drawings will qualify. For
the time being, therefore, toy manufacturers
cannot rely on UK copyright to protect the toy
themselves, but must instead look to design
rights. The train is therefore more likely to be
protected by design rights, which will be
explained in the next chapter.
Ideas are not protectable by copyright. Only
the graphical representation of that idea is.
For instance, everyone can use the basic idea
of a brightly coloured electric model train with
a boys name. However, the execution of a
certain idea can be protected by copyright.
For instance, the particular combination of
shapes and colours of Theo the Train is
protectable in most European countries, but
not in the UK.
Concepts also occasionally balance on the
edge of protection, for instance the concept
of a board game. The more a certain concept
is planned in detail, the more likely it is that
the scale will tip towards protection. The
mere idea of making a board game is not
protected. However, the execution of that
idea, such as the number of spaces on the
14 Intellectual property rights relevant for the toy industry
board, the shape of the spaces or the pawns,
the theme that is used and the particular rules
of the game (such as the rules for having to
skip turns) can all add up to copyright
protection.
In Denmark, such concepts would typically
be protected by the Danish Act on Good
Marketing Practice, instead of copyright.
WHAT ARE THE
REQUIREMENTS FOR
COPYRIGHT?
1 O
 riginal intellectual
creation
For copyright protection, it is important that
Theo the Train is not merely copied from
some other toy, but that it concerns an
original intellectual creation. The creator
must have created something that was not
there before. Also, things that are so obvious
that anyone could have made them, such as
a single square or a rectangle cannot be
claimed under copyright law either.
In order to prove that the toy was not merely
copied from some other toy but that it was
created in a whole process of trial and error, it
is advisable to save and date all draft sketches
and versions of a toy.
2 S
 hape not necessary to
obtain technical effect
Further to that, if a shape is necessary to
obtain a certain technical effect, such as the
fact that wheels are put under Theo the Train,
it is excluded from copyright protection.
3 Not mere trend or style
A certain trend or style cannot be protected
either. If a company for instance makes trains
in bright colours, because that is the new
trend, it cannot prevent a company from
making different-looking trains that are
coloured brightly as well.
HOW ARE COPYRIGHTS
ACQUIRED?
The copyrights on Theo the Train are acquired
by simply creating Theo. In Europe, it is not
necessary to register copyrights. Copyrights
exist automatically from the moment that
the creator gave shape to the work.
In most European countries, it is not even
possible to register copyrights. Some
countries do offer a registration system, such
as Spain. In that event, registration is
voluntary. It only provides additional security
to the authors.
It is also not necessary to place the copyright
symbol on your work in order to obtain
protection either. It can be a signal however
to third parties that it is not allowed to use the
work without permission. Further to that, it
can indicate that a work already existed on a
certain date. Why this can be of relevance,
will be explained below.
In most European countries, copyright can
also be acquired by transfer from another
party. Please note that with respect to the
transfer of copyrights, national rules often
prescribe certain formalities. For instance,
some national laws require that a contract is
drafted and is signed by both parties. In this
contract, it must be described in detail what
copyrights, to what (aspects of) toys, are
transferred.

In many European countries some of the
moral rights of the author (such as the right to
have the authors name mentioned in the
work) are not transferrable.
In Germany, it is not possible to transfer
copyrights to a third party. It is possible
however to grant a license to a third party
with respect to the exploitation rights of the
work.
In Bulgaria, copyrights can only be assigned
to a party other than the author if parties sign
a contract before the creation of the work. In
that event, the copyright over the work to be
created will originate directly for the assignor
instead of the author. However, once the
work has been created the copyrights may
only be licensed.
WHAT IS THE DURATION
OF COPYRIGHT
PROTECTION?
The copyrights on Theo the Train last for
70 years after the death of its creator.
If several people worked on the creation of a
work, the term starts at 1 January after the
date of death of the person that lives longest.
However, in the UK, if mass articles of the
train are made, the duration of copyright will
be 25 years from the year in which the article
is first marketed (that is, if the train qualifies as
a protectable artistic work as explained at the
beginning of this chapter).
The shape of the product and text: copyright 15
WHO IS THE RIGHT
HOLDER OF THE
COPYRIGHTS?
The general rule in copyright is as follows: the
person who created the work owns the
copyrights to the work.
This is in principle also the case if a company
hires an external designer to create a work,
even if the designer was paid for his work. This
could be different if the instructions that were
given to the designer were so extremely
detailed that the designer only had to execute
them and did not have to make any creative
choices himself. It is advisable to always make
arrangements about the copyrights of works
made by external (for hire) people. This is
especially so in Bulgaria, where the author
shall own the copyright if nothing has been
arranged previous to the creation of the work.
If the work was created by someone
who works as an employee for a company,
then the company normally automatically
owns the copyrights to the work that was
created (by law). The question that needs
to be answered is whether the work is part
of the regular activities of the employee, or
of a special assignment of the employer. If
someone is a night porter and models and
paints a train while watching video monitors,
this does not fall under the scope of his
work. In that event the night porter, and not
the company who hired him, owns the
copyrights. When an employee is hired to
design toys and drawings, the company is
the owner of the copyrights of the product.
Please note that in Bulgaria, the
abovementioned rule is only correct for
computer programs and databases. In all
other cases, the owner of the copyright is
the employee. The company may use the
work however for its purposes and within the
scope of its normal activities without need of
consent or additional remuneration of the
employee.
16 Intellectual property rights relevant for the toy industry

It is therefore advisable for companies to describe in detail what the scope of work of their
employees is, for example in a labour contract, and include a contractual arrangement
about the copyrights. Also, if it concerns a special task for the employee that is not part of
his normal job, the employer can confirm in writing that he has asked the employee to do
this, for instance by sending him an email.

WHAT CAN YOU DO WITH
COPYRIGHTS?
If someone brings a product on the market
that looks like Theo the Train, he can, in
principle, be stopped from exploiting that
product, particularly if the product is a copy of
Theo the Train.
An important question is whether it is possible
that the other party would have created the
work if he had no prior knowledge of the
original work.
First of all, most countries have authorities
that can put an official date stamp on a
document, such as tax authorities.
Also, one can ask a civil notary to declare
that he saw the work, or a whole bundle of
works, on a certain date.
Further to that, there are online services
that you can upload your work to and that
provide a document of proof. These services
are sometimes offered by national
intellectual property bureaus.

Unfortunately, copyright does not give any
protection if a third party creates a work that
looks like the original work, but was created
independently, that is, without any previous
knowledge of the first work.
In order to prove that someone copied
your work, it is important that one can prove
that the original work already existed before
the product of the third party was brought to
the market. As said before, there is no
copyright register in Europe. There are
however several other methods to prove that
a toy already existed on a certain date.
In case of an infringement, one can demand
that the infringing party stops exploiting the
infringing work. Further to that, a judge can
oblige the infringer to recall the product.
Besides that, the infringer probably needs to
hold the right holder responsible and needs
to pay either the lost profits of the right
holder or the profits that were made by the
infringer because of the infringement.
 The shape of the product and text: copyright 17

OVERVIEW OF COPYRIGHT PROTECTION

What does The design of the toy (other than in the UK) and other creative works,
it protect? such as texts, colours, shapes and drawings.

How is it Copyrights are automatically created. It is not necessary to use the

acquired? copyright notice .

The work is creative: it is not copied from another work. Extremely simple
What are the
forms and texts are excluded. So are shapes that are necessary to obtain
requirements?
a technical result and styles.

In most countries the creator, unless the work was created as a part of
Who owns his job. In that case, the employer is the copyright owner. In some
the rights? countries (such as Bulgaria), the employee in principle owns the
copyrights.

How long
70 years after the death of the (longest living) creator (or in the UK only 25
do the rights
years after the date the article was first marketed if industrially exploited).
last?

What does
In principle, no costs are involved.
it cost?

What can you Act against third parties that exploit works with the same overall
do with it? impression.
18 Intellectual property rights relevant for the toy industry

THE SHAPE OF THE

PRODUCT PART TWO:
DESIGN RIGHTS
 The shape of the product part two: design rights 19

We have taken a look at copyright protection as way to protect the shape of Theo the Train,
the manual and the packaging. There is another way to protect the design of Theo the
Train: design rights. With design rights, the two dimensional and three dimensional shape
of a product can be protected. Even the design of the manual or the packaging can be
protected by design rights. However, unlike copyright protection, only the outside
appearance is protected and not the text or content.

Designs can be stolen or copied by third parties. In order to prevent this as much as
possible, the rights to protect these designs will be explained in this chapter.

WHAT CAN BE WHAT ARE THE

PROTECTED BY DESIGN REQUIREMENTS FOR
RIGHTS? DESIGN RIGHTS?

As mentioned already, with design rights 1 Novelty and own character

(sometimes also called model rights) the
exterior appearance is protected. The
exterior appearance can be the result of the
lines, contours, colours, shape, texture,
materials or the ornamentation that were
used. Also, in most European countries,
drawings, graphical symbols and
typefaces that are used on a toy or its
packaging can be protected. In the UK,
unregistered designs do not protect surface
decoration. The difference between registered
and unregistered designs will be explained in
more detail later.
In most countries only the visible parts of a
toy will be protected. In other countries, such
as the UK, the parts that are not visible can
be protected by design rights as well.
Copyright and design rights protect the
shape of Theo the Train. For that reason,
Theo the Train can be protected by copyright
and design rights at the same time. There are
however some important differences between
the two areas of law, mainly with respect to
the requirements for protection and the
duration of the protection.
First of all, the appearance of Theo the Train
should be new and it should have its own
characteristics. That means that no identical
(or highly similar) toy should have been made
public earlier.
This is a small difference with copyright. If a
work of copyright is created that looks like
another work but was created independently
(for instance when one could not have known
that the previous work existed), both works can
be protected. With respect to model rights, only
the first design is entitled to protection. If the
manufacturer of Theo the Train, Trainmania,
designs at a later moment an (almost) identical
toy, this toy cannot be protected.
2  hape not necessary to
S
obtain technical effect
Shapes that are necessary to obtain a certain
technical function, such as the fact that
Trainmania put wheels under Theo the Train,
cannot be protected by model rights, nor are
designs that are contrary to accepted
principles of morality.
20 Intellectual property rights relevant for the toy industry
HOW ARE DESIGN
RIGHTS ACQUIRED?
There are both registered and unregistered
designs. The differences between the two
will be explained in this paragraph.
In principle, designs are automatically
protected in all 27 EU Member States from
the moment of creation. These designs are
so-called unregistered design rights or
unregistered Community designs. According
to the laws of most EU Member States, it is
not possible to acquire national unregistered
design rights.
Registered (European or national) design
rights are also available. An application has
to be filed with a national or the European
design office to acquire these rights. This is
explained below.
Registration has some important benefits,
such as:

The duration of protection is longer for
registered designs than for unregistered
designs

The scope of protection of registered
designs is broader (unregistered design
rights only prevent parties from exploiting
products that were copied from the
unregistered design)
The burden of proof in case of infringement
is higher for unregistered designs
This will be explained in more detail below.
For toy products that are only sold for a short
period of time and products with an
extensive product range, unregistered design
rights can be very useful. By making use of
unregistered design rights, they do not have
to make costs for the registration of each
design.
The possibility to register the design when it is
already on the market is limited. The
application for registration has to be sent to
the trademark office within twelve months
after the toy was first shown to the public,
for instance being sold in stores, or shown in
advertisements, on a website or at a toy fair.
Otherwise, the design will not be deemed to
be new anymore.
Back to Theo: the producer of Theo the Train
starts selling the train in his store on 1
February. Since Theo the Train is deemed to
be new, the train is automatically protected as
an unregistered design. After having sold the
train for a couple of months, the producer
can decide to register the design, for instance
because it is successful. In that case, the
application form should be received by the
national or European design office before 31
January of the next year. If he waits any longer
than that, the train will not be deemed new
anymore and third parties could invoke the
cancellation of the design.
Just as with trademarks, one can register a
national design, by filing an application with
the national design office. In the case of
Belgium, the Netherlands and Luxembourg,
one can only apply for a Benelux model.
It is also possible to apply for a Community
design, which is directly enforceable in all
Member States of the European Union. In
order to do so, one can contact the Office for
Harmonization in the Internal Market (OHIM).
It is not only possible to register Community
trademarks at the OHIM, but also Community
designs.
If protection is needed in several European
countries, it is also possible to register a
design for several countries, by filing only one
application. Companies can do so by using
the international procedure of the World
Intellectual Property Organisation (WIPO).
 The shape of the product part two: design rights 21

If there are no design registrations for a certain area outside of Europe, the right holder will
probably not be able to prevent the use by third parties of the design in that area. It is
therefore advisable to register the design in all countries where the company wishes to
market the toy. Within Europe, the design is automatically protected because of the
unregistered design rights. However, if a company plans to sell the toy for more than three
years, then it is wise to register the design for EU countries as well. As explained later, after
three years the unregistered Community design expires.

WHAT IS THE DURATION The person who created the toy is in

OF PROTECTION OF A
DESIGN RIGHT?
An unregistered design can only be
protected for three years after the moment
that the toy was first shown to the public
(for instance because the toy was sold
through a web shop or advertised in a
magazine). A UK unregistered design can be
protected for 15 years from the year the
design was recorded, or 10 years from the
year the article was first sold.
If a design is registered, it is valid for a
maximum of 25 years. In most European
countries, the right holder can choose every
five years whether he wishes to renew the
registration and pay the corresponding fee, or
whether he wishes to let the registration
lapse. Under Bulgarian law, the initial term of
protection is 10 years. The right holder is
entitled to renew the registration for three
consecutive five-year periods.
WHO IS THE RIGHT
HOLDER OF A DESIGN
RIGHT?
Once the design of Theo the Train is
registered, the registration will show the
owner of the design. The person or company
that registers the design and whose name is
displayed in the register is the owner of the
rights.
principle entitled to register the design. This
could be different however when it concerns
a toy that was created by an employee in the
course of his job. This is comparable to
copyright law. If the employee is paid to
create toys or received a special assignment
from the employer to do so, the employer will
be entitled to the design rights in most
European countries.
Rules with respect to external designers or
freelancers vary. When it concerns a
community model, the person who actually
creates the toy will hold the rights to the
design, even if he is paid handsomely for this.
According to some national laws, such as in
Benelux, the company who ordered the
creation of the toy will be the right holder if it
concerns a model that is used on an industrial
scale. Toys that are meant to be sold in shops
will almost always be seen as such models,
so that the company who hired the designer
will own the model rights. If that is the case,
the copyrights of that toy will also transfer
from the designer to that company.
In Spain, both the employee and the
external designer will in principle acquire the
right to register the design, unless otherwise
stated in a relevant agreement.
22 Intellectual property rights relevant for the toy industry
In Bulgaria, the employee and the external
designer are in principle entitled to apply for
registration of the design, unless agreed
otherwise between parties. When an
employer or an assignor fails to apply for
registration of the design right within 3 months
from receipt of notice from the employee or
Because of all these different rules, it is advisable to draft a contract with employees (for
instance a labour contract) and external designers or freelancers, in which it is explicitly
stated who is entitled to the design rights.
WHAT CAN YOU DO WITH
DESIGN RIGHTS?
If someone copies the design of Theo the
Train, it is important to know whether the
design is registered or not. A registered
design right gives a broader scope of
protection than an unregistered design right.
While unregistered rights are often difficult to
prove, the registered design right is the proof
itself.
In the event of an unregistered design, the
right holder can act against the copying of
that design by third parties.
When it concerns a registered design, the
right holder cannot only prevent third parties
from deliberate copying of the design, but
also from the independent development of
a similar design. In that event, he can take
action against a third party if that party
exploits a design that looks similar to the
registered design, even though the third party
was not aware of the registered design.
designer, the design right goes back to the
creator (again, unless otherwise agreed
between parties). Parties may also agree to a
mutual design right, i.e. the design right will
belong both to the creator and the employer/
assignor.
In the event of an infringement, the infringing
party can be stopped from exploiting the
infringing design. Further to that, a judge can
give the infringer a duty to recall the products.
Besides that, the infringer needs to hold the
right holder responsible and needs to pay
either the lost profits of the right holder or
the profits that were made by the infringer
because of the infringement.
COSTS FOR
REGISTRATION
The costs for national design registrations
start at about 125. The minimum costs for
a Community design are 350.
There are specialised offices that can take
care of the formalities of the registration, just
as with trademarks. In that event, additional
fees occur.
 The shape of the product part two: design rights 23

OVERVIEW OF DESIGN RIGHTS

Designs, i.e. the external appearance of toys, such as lines, contours,
What does
colours and shapes. In the UK, surface decoration is only protected if
it protect?
design is registered.

How is it
Either automatically or by registration.
acquired?

The model must be new, must have its own character, the shape should
What are the
not be necessary to obtain a technical effect and it should not be contrary
requirements?
to accepted principles of public morality.

The creator, unless the design was created as a part of his job. With
Who owns respect to freelance designers, rules vary nationally. In for instance
the rights? Bulgaria and Spain, the employee and external parties in principle own the
design rights.

How long Unregistered designs are protected for three years in case of a Community
do the rights unregistered design. UK unregistered designs are protected for 15 years
last? from the date the design was recorded or 10 years from the date the article
was first marketed. Registered designs are protected for a maximum of 25.

What does Depends on the area of registration.

it cost? Around 100 - 350 no professional fees are included.

What can you With a registered design, one can act against parties that exploit a similar
do with it? design. Unregistered design rights give the right to act against third parties
that copied the original design.
24 Intellectual property rights relevant for the toy industry

THE TECHNICAL
FUNCTION OF
THE PRODUCT:
PATENT RIGHTS
 The technical function of the product: patent rights 25

As mentioned previously, Theo the Train is a highly inventive train, made with advanced
technology. Trainmania would like to ensure that its company is the only company that
uses that technology. In all of the IP rights that were previously discussed, it was stated
that signs or shapes that are necessary to obtain a technical result, cannot be protected.
The field of inventions and technology is governed by patent law. The basic rules of patent
law are described in this chapter.

WHAT CAN BE WHAT ARE THE

PROTECTED BY A REQUIREMENTS FOR
PATENT? PATENT RIGHTS?

Patent law only protects inventions. The 1 Novelty

aesthetic aspect of toys is not protectable by
this area of law.
For instance, the producer of Theo the Train
has invented a system that conducts
electricity from the railway to the train more
efficiently than the methods that were
previously known, or that makes it easier to
connect the different units of the train to each
other. These are examples of protectable
inventions.
Please note that some countries also have
so-called utility models, such as Spain and
Germany. These protect minor inventions
(usually technical improvements on existing
devices) that have less stringent requirements
than normal patents. Utility models are not
explained in this brochure.
First of all, the invention must be new. If the
same invention was already used or published
elsewhere in the world, an invention is not
deemed new anymore, even if the invention
was published in a language that the inventor
does not understand.
However, the public must have had the
opportunity to find out about the invention. If
a previous invention was only displayed at the
house of the inventor or in a section of a
public building, this does not stand in the way
of protection of the later invention.
2 Inventiveness
Further to that, the invention must be
inventive. Findings that are very obvious or
that logically combine things that were
already known through previous inventions
are not considered to be inventive.

For instance, conducting electricity to the

train through the rails is not inventive. If,
however, a new, smart system is invented
that makes it easier or more efficient to
26 Intellectual property rights relevant for the toy industry
conduct electricity, or that has benefits over
the old system (for instance because it is
better adapted for contact with water), this
could be patented.
If this new method is very similar to the old
method and it is only one very obvious step
removed from that system, the invention is
not deemed to be inventive.
3 Industrial application
Finally, the invention must be capable
of industrial application. This means that
the invention can be used in one or
more industries. This excludes inventions that
are purely aesthetic or inventions that are
impossible (such as a perpetuum mobile).
Toys will in principle pass this threshold.
HOW ARE PATENT
RIGHTS ACQUIRED?
For protection of the advanced technology
used for Theo the Train, Trainmania needs a
registration. Inventions have to be registered
for protection.
If a company only plans to sell a toy in one
country, it can apply for a national patent.
This patent gives protection in the country for
which it is registered for. Such an application
is registered at the national patent office.
To acquire patent rights in more than one
European country, the European registration
procedure can be used. Using this procedure,
one can acquire the national patents of all EU
countries by filing only one application. This
procedure is handled by the European Patent
Office (EPO).
For those who wish to register a patent for
specific foreign countries, the World Intellec-
tual Property Organization (WIPO) offers an
international procedure. This procedure is
comparable to the European procedure.
If protection is sought in more than one
country, regardless if the European or the
international procedure is used, translations
in the languages that are used by those
countries must be provided.
At the moment, it is only possible to apply for
a European registration, in order to obtain
several national patents. However, the first
unitary European patents are expected to be
granted in 2014. The unitary patent will be
valid in the 25 participating EU Member
States. It will prevent businesses from having
to register at every national patent office and
from entering into litigation in every country in
the event of a dispute.
WHAT IS THE
DURATION OF PATENT
PROTECTION?
A patent is valid for a maximum of 20 years
after registration.
WHO IS THE RIGHT
HOLDER OF A PATENT?
After registration of the patent for Theo the
Train the registration will show who the owner
of the patent is.
The inventor of Theo is in principle the
person who is entitled to register the patent.
Sometimes an invention is made by an
employee. In order to determine whether the
employer or the employee is entitled to that
patent, it is important to know what parties
agreed upon in the labour contract. If it is
agreed that any invention of the employee
shall belong to the employer, then the
employer shall hold the rights to the invention.
Also, if the job description of the employee
states that he was hired to conduct technical
research or if this falls within the scope of his

regular work, the employer will in principle
own the rights. This could, for instance, be
the case for someone working in the R&D
department. If the inventor used means that
were provided by the employer and/or skills
acquired from his work for the employer,
some national laws also arrange for the
patent rights to fall to the employer.
If it is not the job of the employee to invent
things, no means of the employer or special
skills were used and it has not been agreed
upon otherwise, then the employee will be
Therefore, in case of employees and external inventors, it is important to explicitly state in
the contract who has the rights to the invention.
According to Bulgarian law, when an
employer or assignor fails to apply for
registration in a three-month term from the
receipt of notice from the employee or
freelancer for the creation of the invention, the
rights to the invention go back to the creator,
unless otherwise agreed. The parties under
employment or assignment may also agree
on a mutual patent right, i.e. the patent right
will belong to both the inventor and the
employer/assignor.
WHAT CAN YOU DO WITH
PATENT RIGHTS?
A patent for the invention used for Theo the
Train gives Trainmania the exclusive right to
use the invention. If others exploit products
in which this patented invention is used
without its consent, they infringe the patent
right. As stated before, patent rights protect
inventions and not the design of a product.
For that reason, it could very well be that two
toys look very different from each other, but
one product still infringes a patent because it
makes use of the same (patented) invention.
In case of such an infringement, the right
holder can demand that the infringer stops
The technical function of the product: patent rights 27
entitled to the rights instead of the employer,
even when the invention was made during
work hours.
If external inventors who do not have a
labour contract with the producer of the toys
were contracted, then in most European
countries the patent rights will belong to
these external inventors. This is for instance
different in Bulgaria and Spain: if the invention
was made as a result of a special assignment,
then the assignor will own the patent rights.
providing the infringing products. Further
to that, he can claim damages from the
infringer, or the profits that were made by the
infringer as a result of the infringement.
Finally, the right holder can demand that a
recall is conducted or that the infringing
products are destroyed.
COSTS FOR
PROTECTION
The registration of patents is much more
expensive than for trademarks or designs.
Experience has shown that patents that were
drafted by bureaus specialised in patent
applications are more successful in legal
proceedings than applications drafted by the
inventor or company themselves. These
specialised offices charge additional fees for
their services. The price for drafting and filing
a national patent is about 7,500.
The international procedure is a bit more
expensive than the European procedures,
but these prices are comparable. If one
wishes to acquire protection for a few
countries, prices are about 15,000.
28 Intellectual property rights relevant for the toy industry

OVERVIEW OF PATENT PROTECTION

What does
Inventions, e.g. discoveries that make certain things easier or more efficient.
it protect?

How is it
By registration.
acquired?

What are the The invention must be new, inventive and must be capable of
requirements? industrial application.

In most countries the inventor, unless the invention was made by an em-
ployee who was hired to do technical research or in whose labour contract
Who owns it is stated that the invention belongs to the employer. In that event, the
the rights? employer is entitled to the patent. In some countries, e.g. Bulgaria and
Spain, inventions made by an external designer as a result of a special as-
signment will belong to the assignor.

How long
do the rights For 20 years.
last?

National applications cost around 7,000, including drafting the application

What does by a patent attorney. Applications for a few countries using either the Euro-
it cost? pean or the International procedure cost around 15,000 no professional
fees are included.

Prevent third parties from using the patented invention in their products.
What can you The exploitation of these products can be stopped and the right holder can
do with it? demand damages or the profit that was made by the infringer. Further, a
recall can be conducted and the infringing products can be destroyed.

UNFAIR
COMPETITION
Even if Theo the Train was not (or no longer)
protected in a certain area in Europe, this
does not always mean that third parties are
allowed to make identical toys. The rules with
respect to unfair competition are becoming
more and more important and can prohibit
such behaviour.
UNFAIR COMPETITION
AND PASSING OFF
It is not always possible to invoke IP rights
against the sale of (similar) toys by third
parties. Trainmania could for example have
chosen not to register the rights for Theo the
Train in all European countries or the period of
protection could have expired. Further to
that, sometimes actions of third parties do
not fall within the exact scope of protection of
IP rights, but can still be damaging to the right
holder.
In those cases, unfair competition laws can
nevertheless give toy producers the possibility
to act against those parties. In the UK, unfair
competition is known as passing off.
Unfair competition is governed by national
laws and thus may vary from country to
country. Still, it is possible to determine
some common ground in the national case
law regarding unfair competition.
The technical function of the product: unfair competition 29
First of all, it can be unlawful to cause
consumers to think that the third party is
actually the producer of the genuine toys,
when he is not. If for instance a third party
registers a domain name that is almost
identical to that of the producer of Theo the
Train and states that he has been producing
Theo the Train for a long time, this could be
unlawful. As there is no business-to-business
protection in this area, it is very important that
consumers are empowered to take action
against the manufacturer of the infringing toy.
However, this is not easy.
Further to that, it is not generally permitted to
allow consumers into thinking that there is an
economic connection between the third
party and a toy manufacturer, such as a
distribution or a franchise relationship, if there
is in fact no such connection. If the third party
thus takes advantage of the goodwill of the
toy producer or if the toy producer has
suffered or is likely to suffer damage because
of the misrepresentation, chances are the toy
producer can act against the third party and
claim damages.
National law can also prevent the production
of (almost) one-on-one copies of a certain
design, if the third party could have chosen a
different design. This is often called parasitic
copying, slavish copying or knock-off.
30 Intellectual property rights relevant for the toy industry
Some legislation requires additional
circumstances, for instance that the original
product differentiates itself from other
comparable products on the market because
of its appearance so that consumers
recognise the product. Sometimes a risk of
confusion that it actually concerns the
original product is also required or further
proofs of bad faith.
Finally, some countries have additional
systems for (toy) products that do not fall
within the scope of IP rights, but may be
considered to be creative works. In Italy, it is
for instance possible to register the regulation
of a game as a creative work, for example the
regulation of a board game, with the Italian
Society of Authors and Publishers (SIAE),
whenever artistic elements may be detected
in the work. This registration may have the
purpose of granting licenses to third parties
who wish to make use of the work, collect
royalties and distribute these royalties among
the right holders.

BORDER
MEASURES
As we all know, toys are often imported into
Europe from abroad. A copy of Theo the Train
could be made outside Europe and then be
transported to Europe. Legislation also
makes it possible for Trainmania to stop the
copy of Theo the Train at the EUs borders
when it is imported.
WHAT ARE BORDER
MEASURES?
In 1994, the anti-piracy regulation first came
into force. This regulation has successfully
allowed EU customs authorities to stop
infringing products when they cross the
border. For example, in 2000, over 6,000
cases of infringing products were registered.
In 2010, almost 80,000 shipments were
stopped because they contained infringing
products. This amounts to more than 103
million infringing products.
According to the latest figures (2010), 7% of
the infringing products consisted of toys and
games (including electronic games consoles).
In total about 7.5 million infringing toys
were discovered. The retail value of the
original goods would have been more than
30 million Euros. These figures indicate that
the border measures are of growing
importance for the toy industry.
The name of the product: border measures 31
The majority of infringing products originate in
China. 85% of all infringing articles were
shipped from this country. Other countries
that were high on the list of countries of origin
are India, Hong Kong, Moldova and Turkey.
HOW DOES THE SYSTEM
OF BORDER MEASURES
WORK?
Customs authorities can check for infringing
products on their own initiative and contact
the right holder when they suspect that a
batch contains possible infringing products.
However, it is also possible for right holders to
ask customs authorities to watch out for
products that infringe on their rights. The right
holders of all of the IP rights that are described
in this brochure (i.e. trademarks, design
rights, copyrights and patents) can apply for
such border measures.
If Trainmania wants to ask customs to watch
out for copies of Theo the Train it needs to fill
in a form. This must include the contact
details of Trainmania and explain the rights to
which Theo the Train is entitled. It is possible
to add further information with respect to the
rights, such as photos of Theo the Train and
explanations about how genuine Theo the
Trains can be distinguished from the infringing
ones.
32 Intellectual property rights relevant for the toy industry
It is also possible to indicate what companies
are likely to infringe Trainmanias rights, for
example because they have infringed on its
rights in the past.
If Trainmania only holds national rights, it
needs to lodge the form for custom
surveillance with the designated department
of the national customs authorities.
Alternatively, if a Community trademark or a
Community design right is registered, a
Community application can be lodged. In that
event, the authorities of all Member States will
look out for infringing products.
In the event the customs authorities find
products that they assume to be a copy of
Theo the Train, Trainmania will be contacted.
The right holder normally has ten working
days to respond. This term can be extended
by another ten working days (three working
days when it concerns perishable goods,
with no option for extension). If it is of the
opinion that the products do not infringe on
its rights, or if Trainmania does not respond at
all, the products are further transported to the
addressee.
It is highly recommended to lodge applications for actions and to engage with customs
officers. It is known that customs officers will have a higher degree of motivation protecting
those brands which are cooperative compared to those that only rely on ex-officio procedures.
However, if Trainmania is of the opinion that
the products are infringing, the holder of the
goods is contacted. If the holder of the goods
does not respond, or if he admits that the
products are not original, the products are
destroyed. This happens in about 75% of all
cases.
If the holder of the goods believes that the
products are not infringing, a court case can
be initiated. Also, an out-of-court settlement
can be reached between the right holder and
the holder of the goods.
A clear difference has to be made for goods
in transit. Goods are considered in transit
if they do not enter the European Union or if it
is not possible to prove that they are meant to
be sold on the European market. If that is the
case, these goods cannot be stopped at the
border, even if they would infringe on (local) IP
rights.
COSTS FOR THE
APPLICATION
No administrative costs are charged by the
customs authorities for an application.
Customs authorities can sometimes request
a bank guarantee for costs that have to be
made or because of administrative rules.
 Conclusion 33

CONCLUSION
It is a great challenge for the toy industry to
protect its creative works and inventions from
being copied by third parties. The production
and exploitation of counterfeit toys is a global
problem. The figures provided by the EU
customs authorities show that infringement
takes place on a very large scale. This not
only poses serious risks for the health of
children, but is also detrimental to the growth
and innovation in the toy sector.
IP rights can help companies working in the
toy industry to protect their investments and
goodwill as much as possible by taking action
against such infringement. In this brochure,
the most important IP rights that can help in
doing so are explained. In the comparison
table below, an overview is given of all these
IP rights, as well as the features they cover:

IP right Trademarks Copyrights Designs Patents

Protected The name or the The design of Designs, i.e. the Inventions, e.g.
features logo of the toy, the toy (other external appear- discoveries that
the name or the than in the UK) ance of toys, make certain
logo of the com- and other crea- such as lines, things easier or
pany (if they are tive works, such contours, col- more efficient.
used to distin- as texts, col- ours and
guish the prod- ours, shapes shapes. In the
ucts of that and drawings. UK, surface
company from decoration is
those of other only protected if
companies). the design is
registered.
34 Intellectual property rights relevant for the toy industry
Before bringing a toy on the market or
showing it to the public, it is wise to consider
on how one can protect the toy as much as
possible. A company should ask the following
questions:
Have agreements been made with all the
parties that were involved in the creation of
the toy, such as employees or freelance
designers? Is it clear who owns all IP rights
with respect to the toy?
Are there rights that need to be registered,
such as patent rights, design rights and
trademark rights?
And if so, where do I need to register these
rights? Locally or globally?

Is there a certain date before which the
application form for registration needs to be
received by the designated office?
How can I prove that the toy was already
designed on a certain date? Did I save
drawings, sketches and test models?
Do I need to make agreements with third
parties that produce the toy, for instance if
they are situated outside Europe, to prevent
them from copying it?
Has everything been covered with respect
to distributors or franchisors regarding the
use of IP rights? Is it clear what actions such
parties will take action against infringers that
are active on their market?
TIE remains very active in the area of IP
protection. TIE works with important
stakeholders to fight against counterfeiting
and has been successful in campaigning for a
high level of IP protection. The EUs legal
framework and its enforcement must be
improved to fight against counterfeits and
other ways of contravening IP rights. The fight
against counterfeiting and piracy needs to
become a political priority in the EU. TIE will
continue to build upon the current momentum
that is gathering around this issue to create
harmonised EU legislation to outlaw these
unfair practices.
 Useful links 35

USEFUL
LINKS
European Anti-Counterfeiting Network International Trademark Association (INTA):
- REACT: www.inta.org/Advocacy/Pages/
www.react.org/ Anticounterfeiting.aspx

European Commission - How can right National IP offices:

holders protect themselves from
counterfeiting and piracy?
http://ec.europa.eu/taxation_customs/
customs/customs_controls/counterfeit_
piracy/right_holders/index_en.htm
European Commission initiatives for
fighting counterfeit and other IPR
infringements:
http://ec.europa.eu/taxation_customs/
customs/customs_controls/counterfeit_
piracy/commission_initiatives/index_
en.htm
http://www.innovaccess.eu
Office of Harmonization for the Internal
Market (OHIM): http://oami.europa.eu
Organisation for Economic Co-operation
and Development (OECD) - The Economic
Impact of Counterfeiting and Piracy:
www.oecd.org/
dataoecd/13/12/38707619.pdf
Toy Industries of Europe (TIE):
www.tietoy.org

European Commission - Report on World Customs Organization (WCO):

EU customs enforcement of intellectual www.wcoomd.org
property rights:
h
 ttp://ec.europa.eu/taxation_customs/ World Intellectual Property Organization
resources/documents/customs/customs_ (WIPO):
controls/counterfeit_piracy/ www.wipo.int
statistics/2012_ipr_statistics_en.pdf

De Gier | Stam & Attorneys 2012

This brochure does not constitute legal advice and is provided for general information purposes only,
without giving any warranty of any kind, either express or implied. De Gier | Stam & Attorneys and TIE shall
not be liable for any editorial, typographical or other errors or omissions within the information in this
brochure. In case of any questions, please contact our offices.
Toy Industries of Europe (TIE) is the trade association for the European toy industry, which
comprises over 25% of the total world toy market. Members of TIE include companies as
well as national associations from Bulgaria, France, Germany, Italy, the Netherlands, Spain,
Sweden, the UK and the Nordic region.

TIE commissioned De Gier | Stam & Attorneys to draft this brochure about intellectual property
rights relevant for the toy industry.

Toy Industries of Europe (TIE)

Boulevard de Waterloo 36
1000 Brussels
Tel: + 32 (0)2 213 41 90
Fax:+ 32 (0)2 213 41 99
info@tietoy.org
www.tietoy.org