IPL 1617 LPC International Intellectual Property Law (IP) - (DISTINCTION LEVEL): University of Law London Moorgate (Latest 2020, Already graded A )

INTERNATIONAL INTELLECTUAL PROPERTY LAW Contents Overview 2 Copyright and Data Protection 7 Database Right 16 Trade Marks 19 Passing Off 26 Design Rights 29 Patents 34 Breach of Confidence 39 Competition 41 Test and Feedback Exercises 46 Test and Feedback Workshop 1 46 Test and Feedback Workshop 2 50 Test and Feedback Workshop 3 55 Test and Feedback Workshop 4 65 Test and Feedback Workshop 5 72 Test and Feedback Workshop 6 77 Test and Feedback Workshop 7 81 Test and Feedback Workshop 8 85   Overview Basic concept of intellectual property is to protect the products, results and rewards of the exercise of human intellectual and commercial endeavour. Legal right to stop others using the owner’s property without permission, and to give a monopoly right to exploit that property commercially. Have to be careful about what things you can protect as ideas etc in some respect belong to humanity in common. Different forms of protection: • Protection of business reputation – business exists to make profits and the surest way is to become known and identified as a reliable and reputable supplier of goods. Have to protect the identity of the mark of an organisation. TRADE MARKS AND PASSING OFF • Creative expression – tangible results of creative talents, and stopping others from making free use of those results. COPYRIGHT AND DATABASE PROTECTION • Designs for shapes and appearances of objects that are intended to be created to that design, typically by way of manufacture. DESIGN RIGHTS AND UDR • Inventive – allows someone who has invented something to exploit the commercial possibilities of their invention for a limited time. They aim to: 1. Protect those who create and think, 2. Allows public to benefit and develop from inventive creative steps 3. Encourages and stimulates business growth and entrepreneurial spirit, 4. Prevents free for all of other’s property Types of IP 1. Trademarks – brand name or other mark of trade origin Highly commercial right Protected by registration Gives the owner stat rights under Trade Marks Act 1994 Registration can be renewed indefinitely, provided the TM does not run foul of restrictions under the act Most countries have a similar system If a trademark is not registered it can only be protected by passing off, except in US where statute expressly provides protection for unreg TMs 2. Passing off – common law tort enabling a business to defend itself from someone who is trying to take unfair advantage of the trading reputation of that business Less important than TM law, and has less certain outcomes, also diminished by the increased scope of DR Can often complement TMs as the scope can reach further 3. Copyright – right to prevent copying of creative expression, such as writing, art, music, architecture, film and even computer software Unregistered system, and for an infringement to occur there must have been ‘copying’ It is the principle IP right in computer programmes and therefore very important today The right is not register able and comes into force when the work is first created All major jurisdictions are signatories to the Berne Convention which protects copyrighted works internationally 4. Database rights - 5. Designs –designs that relate to the appearance of an object can be registered, but ones that relate solely to its technical function (how it works) cannot. Registration gives protection for up to 25 years 6. Also statutory unregistered design right protecting features of shape or configuration which are intended to be made available commercially. This protection can extend for between 10 and 15 years In the US, design right is restricted to the non-functional appearance of the goods 7. Patents – commercial IP right Registered right, administered by the Patents Office, protecting inventions Patent gives the holder a monopoly of 20 years over the technology revealed in the patent Description of the invention is made public in return for a grant by the Crown of a period of protection, then after the 20 year period it is public property Idea is that inventors get to exploit it for this time as it makes it worth their while investing time and money into creation, and helps public Virtually all countries have a very similar system US Patent Act gives a negative right, that excludes others from practising the invention Protection internationally is given by Patent Cooperation Treaty Patent licence will often be accompanied by a know-how licence, to give licensee the best chance of using the patent most efficiently 8. Confidential information – law of confidence no IP right as such Case law governs this US has case law and adoption in each state of a version of Model Law known as Uniform Trade Secrets Act   Registration and administration Much IP is protected by registration in public registers. • UK - this is the work of what is now entitled the Intellectual Property Office. • EU - the Office for the Harmonisation of the Internal Market (OHIM) • International – Word Intellectual Property Organisation Many attempts to harmonise internationally because vital for future growth etc: Treaty Description Agreement on Trade Related Aspects of IPRs (TRIPS) 1994 and World Trade Organisation - Entered into force in 95 - Significant as the first international agreement to : • establish minimum standards of protection for several forms of IP, • mandate civil, criminal and border enforcement provisions, • be subject to binding and enforceable dispute settlement - built on the primary agreements of Paris convention and Berne convention - Every member of WTO is subject to TRIPS - Sets down min standards for availability of 7 forms of IP, with permissible limitations and exceptions to balance with public policy - ‘the floor not the ceiling’ Singapore Treaty of the Law of Trade Marks 2009 - Replaced old Trade mark treaty which tried to harmonise TM procedures - Quicker, less costly application procedures - Introduced harmonised protection period – initially 10 years, can be renewed indefinitely - Streamlined renewal procedures and recording of changes Nice Agreement 1957 International classification of goods and services: - Class 1-34 = goods - Class 35-45 = services Vienna Agreement 1973 classification of logos/device marks Madrid System for International Registration of TMs 1989 (Madrid Protocol) - In force 95 - 85 contracting parties - Filing treaty and not substantive harmonisation overseen by WIPO - Allows applicant to file single application for international TM, and provides centralised system for any subsequent change - Application has same effect as national application in each of designated countries - If cancelled for any reason in first 5 years, applicant may turn it into series of national applications retaining the priority - Application in one country is used as the basis of the app for all other countries - EC is a member in itself so CTM can be used as the basis Hague System for the International Deposit of Industrial Designs - 59 contracting parties - Single application system with WIPOs international bureau, centralised system for any subsequent changes - Locarno classification System Agreement 1968 provides standardised classification system for designs Patent Law Treaty 200 - In force 2005 - Harmonised certain patent application procedures: • Simplified application requirements to obtain a filing date • Limits steps that contracting parties may impose on an applicant - Did not harmonise substantive patent law (ie what is patentable) - IPC agreement (Strasbourg agreement) 1971: standardised categories for patents Patent Cooperation Treaty 1970 - No such thing as a worldwide patent - Paris convention allows an applicant 1 year priority period to file an application in the other 170 states - PCT simplified the application filing to assist inventors: • File an ‘international application’ • Applicant has 30 months before committing to expenses of translation, national filing fees and prosecution in every country in which they want protection, so they can evaluate strength of marketing • Bundle of national patents In the US, the basis for IP protection is art 1 s8 US Cons, which allows congress to ‘promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.’   Identifying relevant IP rights – audit style exam question Consider: • Can what the client produces be protected: o Innovative production processes o Innovative item o Design drawings o Brand name/logos • What IP rights may be available, always consider even if they primary way seems obvious • What benefits do the rights give? • Does the client need to make an application to obtain protection? • What right is obtained? • Who owns the right? • How long does it last? Structure: For each IPR: In considering subsistence, only do steps 1-4, if infringement follows, do steps 5 and 6. 1. Identify the right 2. Subsistence – does it subsist? Requirements? Registration? 3. Rights obtained, including duration 4. Ownership 5. Infringement – defences/exceptions 6. Remedies   Copyright and Data Protection • Copyright, Designs and Patents Act 1988 • Copyright is an unregistered system in most jurisdictions, protecting the results and expressions of creative ability • It arises as soon as the work is created • This is good, because it provides protection earlier than a lot of other rights • On the other hand it is harder to enforce than a registered system Right Copyright Subsistence Exists in one of 8 types of works S1(1) CDPA (a) original literary, dramatic, musical or artistic works - CLASSIC (b) sound recordings, films, broadcasts or cable programmes - ENTREPENEURIAL Important to distinguish which one it is because they have different rules Literary, dramatic, musical and artistic – classic works Requirements 3(1) literary dramatic and musical Literary work – any work which is written spoken or sung and includes a) a table or compilation other than a database b) a computer programme c) prep material for computer programme d) a database dramatic work – includes a work of dance or mime musical work - consisting of music, exclusive of any words or action intended to be sung, spoken or performed with the music (2) must be recorded in whatever form, writing or otherwise 4 artistic works (1) (a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality (b) a work of architecture being a building or a model for a building (c) a work of artistic craftsmanship (2) building – any fixed structure, or part of fixed structure Graphic work – a) any painting, drawing, diagram, map, chart or plan, b) any engraving, etching, lithograph, woodcut or similar photograph – recording of light on any medium which is an image, or that in image may be produced from and is not a film sculpture – includes a cast or model made for the purposes of a sculpture Originality - Under s1(1)(a) work must be original and not copied from anything else - Originality of expression or form, rather than idea or content - Fisher v Brooks organ solo in ‘whiter shade of pale’ has copyright although based on original theme dating back 3 centuries Minimum Effort - Cannot be trivial, there must be a certain minimum amount of effort gone into the material - The minimum effort required is generally low - Joint author has to do more than just contribute ideas and has to participate actively in the creation Ray v Classic FM plc Literary works • generally the level off effort required is very low for eg there is copyright in an ordinary business letter • university of London press v university tutorial press¬– ‘copyright in work expressed in print or writing, irrespective of the quality or style’ • must be substantial enough to constitute work, consequently, an advertising jingle or title will not usually be protected by copyright • reluctant to copyright single words (TM instead) Exxon • compilations need to have some degree of special selection or arrangement of the contents Artistic • fall into 2 categories • s4(1)(a) – those which are protected irrespective of artistic quality standard of effort required is low (although straight line or circle would not be protected) • s4(1)(b)and(c) – those which require degree of artistic craftsmanship architecture will depend on the originality etc (c) – 3D item which is not a sculpture, but which results from skills eg handmade furniture etc – significant amount of artistic merit is needed to get copyright (because they protected by designs Not mass produced – Hensher v Restawhile Upholstery Sound recordings, films, broadcasts – entrepreneurial No general requirement of originality and minimum effort S5A – sound recordings - (1)(a) recordings of sounds from which the sounds may be reproduced - (1)(b) recording of the whole or part of a literary, dramatic or musical work - (2) does not subsist in a copy S5B – films - (1) a recording on any medium from which a moving image may by any means be reproduced - (2) sound track shall be treated as part of the film - (4) does not subsist in a copy S6 – broadcasts - Generic definition to include terrestrial and non-terrestrial S8 – typographical arrangement - A published edition of the whole or any part of one or more literary, dramatic or musical works Rights obtained, duration LDMA s12 The duration is the life of the author 70 years, running from the end of the year of the death of the author For employer or assignee, the span is the death of the author plus 70 years For work of an unknown author, period is 50 years from creation or first publication, whichever is latter For computer generated work, the span is 50 years Entrepreneurial - S13A – sound recording – 70 years from the end of the calendar year in which the recording is made or released, if later - S13B – film – 70 years from the end of the calendar year in which the last of the following dies: principle director, author of screenplay, author of dialogue, composer of music specially made for film - S14 – broadcast – 50 years from end of calendar year in which first broadcast was made - S15 – typographical – 25 years from the end of the calendar year in which the edition was first published Ownership - author is the person who created the work – s9 - Initial copyright is owned by the author or co-authors – s11(1) - If done in the course of employment, then the employer is the owner of the work – s11(2) this is matter of fact - If commissioned works, the first owner will be the author, and the commissioning agreement should assign ownership. If there is no such agreement, a licence will usually be implied or the commissioner would not be able to use what he has paid for, Blair - S85 – where photograph or film has been commissioned for private purposes, commissioner may prevent publication • S9(2) CDPA (aa) sound recording – producer (ab) film – producer and principle director (b) broadcast – person making/transmitting(if has responsibility) (d) typographical - publisher Infringement Primary infringement – strict liability ss16-21 Secondary infringement – have to show that they knew or had reason to believe Infringement is actionable by the owner – s96(1) or exclusive licensee s101 If you had opportunity to copy, and work is so similar, then there is an inference of copying Copyright owner has following rights: o S16(1) - exclusive right to copy it (s17) - (b) issue copies of the work to the public (s18) - (ba) to rent or lend to the public (s18A) - (c) perform, show or play the work in public (s19) - (d) to communicate work to public (s20) - (e) to make an adaptation or do any of the above in relation to an adaptation S16(2) copyright infringed by anyone who does any of this without permission of owner S16(3) - (a) in relation to the work as a whole or any substantial part of it - This is a qualitative test, so even if you copied one line of a poem if it was significant it would infringe - Designers Guild v Russell Williams – 2 stage test, first look at similarities and differences and then consider whether what was copied represented a substantive part - Newspaper Licencing v Marks and Spencer plc not simply by reference to quantity and proportion - Baigent v Random House Group Ltd argued that the Da Vinci Code copied central theme from another book. Found that it was not detailed copyright expression, and purported copyright material was factual statements and hypothesis - (b) either directly or indirectly o S17 infringement of copyright by copying - (2) copying in relation to LDMA means reproducing it in any material form and includes storing it by electronic means - (3) copying an artistic work can include turning a 2D into a 3D work and vice versa - (4) copying in relation to a film or broadcast includes taking a picture - (5) typographical arrangement includes making a facsimile copy of arrangement - (6) using a computer game is making a transient copy so if no licence to do so then will be infringing copyright o S21 infringement by making adaptation or act done in relation to adaptation - (1) making adaptation is restricted by copyright in LDM, made when recorded in writing or otherwise - (3) (a) in relation to literary work means:  (i) translation  (ii) dramatic into non-dramatic and vice versa  (iii) making solely into pictures - Computer programme, means arrangement or translation - Database, means arrangement or altered version or translation - Musical work, means arrangement or transcription All about dealing with or facilitating the manufacture of infringing copies - S22 – importing an infringing copy - S23 – possessing or dealing with an infringing copy (possess sell or exhibit in the course of a business - S24 – providing means for making an infringing copy - S25 – permitting use of premises for infringing performance - S26 – provision of apparatus for infringing performance Owner is usually concerned with the primary infringer, but it may be worth informing those further down the line because after this point they cannot deny having the requisite knowledge for being a secondary infringer Nouveau fabrics v Voyage Decoration2004 Defences Sometimes use of copyright work is allowed without the permission of the owner. Under Hyde Park Residence v Yelland and others: 1. Does act fall within particular statutory purpose? 2. Copying not gone further than necessary to comprise fair dealing • Fair dealing for the purposes of research or private study s29 Applies for LDMA and allows taking of copies for non-commercial studying or researching • Fair dealing for purpose of criticism and review s30(1) Cannot quote too much, and has to be for the purpose of commenting on the work rather than repeating the information • Fair dealing for the purpose of reporting current events s30(2) All works other than photographs allowed to be used. If in newspaper or magazine then acknowledgment must be given, again also depends on how much used and purpose • Artistic works on public display s62 Photos etc of works of artistic craftsmanship that are permanently sited in places open to the public In the US fair dealing is a general defence not limited to specific circumstances Remedies 1. Under s96(2) – DAMAGES Tortious compensatory measure, put C in position he would have been had the infringement not occurred Often based on what a willing licensor would have paid a licensee S97(1) damages are not available for innocent infringer S97(2) discretionary additional damages where court thinks it is necessary, depending on - The flagrancy of the infringement - Any benefit accruing to the D because of infringement - Cantor Fitzgerald International v Tradion serious questionable behaviour of D beyond just copying 2. S96(2) – INJUNCTIONS 3. S96(2) – ACCOUNT FOR PROFITS Alternative to damages that can be used against innocent infringer A successful claimant is entitled to Tring disclosure, enabling him to choose between account for profits and damages 4. S99 – DELIVERY UP If D retains infringing copies, deliver them to C 5. S114 – DESTRUCTION 6. S100 – SEIZURE Cannot do this to someone at a permanent place of business, must be a street trader or market stall. This can be done by copyright owner, but under (2) they must inform the police of time and place of intended seizure 7. S11 – NON-IMPORTATION Prevents importation of any further infringing copies Copyright and the internet - Common misconception that copyright does not apply - Most internet use falls under s20 CDPA ‘communication to the public’ as 20(2) refers to electronic transmissions - Only real issue is of jurisdiction - Newspaper licensing agency and ors v meltwater holdings supplied news alerts which included headlines and extracts from the newspaper. It was held that when customers looked at it they made transient copies so there was infringement - HOWEVER, supreme court held that transient copies made when browsing, without downloading or printing would not be an infringement Copyright internationally - EU – most legislation is consistent across the board because of Directives - International treaties Berne convention for the protection of literary and artistic works 1886 - Currently 164 signatories - Almost all members of WTO - Signatories must recognise copyright of authors in other states - Provide strong minimum standards for copyright law - Allow copyright to arise automatically Universal Copyright Convention 1952 - Partly made as a result of US disagreement with Berne - International protection for everyone, even who wouldn’t sign berne - Less important now because US now also part of Berne - Art 17, where UCC clashes with Berne, Berne prevails TRIPS 1994 - Entered into force in 95 - Significant as the first international agreement to : • establish minimum standards of protection for several forms of IP, • mandate civil, criminal and border enforcement provisions, • be subject to binding and enforceable dispute settlement - built on the primary agreements of Paris convention and Berne convention - Every member of WTO is subject to TRIPS - Sets down min standards for availability of 7 forms of IP, with permissible limitations and exceptions to balance with public policy ‘the floor not the ceiling’ Rome convention - Created in response to new technology - Extended copyright protection from authors top creators and owners eg DVDs Recent developments Digital economy act 2010 - Brought in provisions intended to combat the online infringement of copyrighted material - Aims to make it easier to track down infringers, and ultimately to deny them the use of the internet - Procedure begins with a harmed copyright owner gathering IP addresses of alleged infringers, and then contacts the relevant ISP - ISP has obligation to contact the alleged infringer to notify him that it has been contacted by the copyright owner - If the number of notifications received by the individual exceeds a number set by the internet regulator Ofcom, the copyright owner can gain a court order to discover the alleged infringer’s identity from the ISP - Result being that copyright owner has all the information he needs to commence legal action - Controversial, not least because of the difficult situation which it places ISPs The Hargreaves Review - May 2011, an independent report ‘Digital Opportunity: A review of intellectual property and growth’ - Report led the government into making a series of proposals - Orphaned works – works where it is unclear who is the copyright owner. Allow the works to be used through a centralised database. Right holders would be able to check if their work was on the register and apply for its removal - Extended collective licensing – simplify rights of the clearing system - Codes of conduct for collecting societies updated - Extending the exceptions (including parodies, widening exception for non-commercial research and allowing limited private copying, for eg) - Give IPO chance to make copyright notices   Application Telephone directory - S(1)(1)(a) original literary works - S3(1)(d) a database - S3A a collection of independent works, (a) arranged in a systematic or methodical way, and (b) be individually accessible - (2) must be original in terms of reason for selection/arrangement constitutes authors own intellectual creation - This is the higher test than normal for copyright under literary works - Will it meet this threshold? - Probably not so can simply have the protection of a database right - Copyright rights in database regs 1997 - Lower threshold, under reg 13 right exists when there is substantial investment (financial or human resources) in obtaining, verifying or presenting the contents of a database - Reg 14 owner is the maker Doodle - S1(1)(a) original artistic work - S4(1)(a) graphical work irrespective of artistic quality - Although there is the de niminis test for minimum effort - Owner is the drawer under s11(1) Title of top gear - S1(1)(a) literary original work - S3 recorded as it is written down - Must be original – it is because it is not copied - Work – must be more than minimal effort - Exxon case single words did not attract copyright protection – words must provide instruction information or pleasure in order to be counted as work - therefore this would fail copyright but would probably be able to be registered as TM - recently, C of A have said that newspaper headlines could satisfy de niminis Customer list - s3A arranged in a systematic way - need to check the levels of effort in the organisation of your work - s3A(2) needs to be original – own intellectual creation (higher threshold) - if doesn’t apply, turn to database protection Idea for new TV sitcom - cannot copyright an idea - not recorded s3 - not work - Green v Broadcasting Crop of NZ – cannot copyright an idea not written down, must be ‘expression of an idea in material form’ - NB see law of confidence instead for protection Fraser v Thames television they had recorded idea for TV series and successfully sued Film: Casino Royale - Film = film copyright s5(a) and (b) - Screenplay = dramatic work s1(1)(a) and 3(1) - Soundtrack = literary work if there are lyrics s1(1)(a) and musical works s5A - Sculptures and props = artistic works s1(1)(a) – if broadcast on TV then s5B - S3(2) has to be recorded LMD only Book: Girl with the dragon tattoo - Looking at translation not original - S1(1)(a) literary work - S3(2) recorded - Original? In an original expression or form   Database Right S3A CDPA 1998: (1) in this part, database means a collection of independent works, data or other materials which – (a) are arranged in a systematic or methodical way, and (b) are individually accessible by electronic or other means (2) for the purposes of this part a literary work consisting of a database is original if, and only if, by reason of the selection or arrangement of the contents of the database the database constitutes the author’s own intellectual creation - Arises automatically - Runs 15 years from the end of year of completion, or publication whichever is later, reg 17 - A ‘substantial new investment’ will top up the right so the 15 year period will start again reg 17(3) - Under reg 13, the database right exists where there is ‘substantial investment in obtaining, verifying or presenting the contents of the datatbase’ therefore arrangements have the protection of the database right if there is substantial investment (including any investment , whether of financial, human or technical resources) - The maker of the database protected by the database right is the person who takes the initiative in obtaining, verifying or presenting the contents of the database and who assumes the risk of investing in that obtaining reg 14 - The maker is the first owner reg 15 Infringement - Infringement is the extraction or re-utilisation of all or a substantial part of a database without the consent of the owner reg 16 - ‘extraction’ means the permanent or temporary transfer of the contents of a database to another medium by any means, or in any form - ‘re-utilisation’ means making those contents available to the public by any means - ‘substantial’ is in terms of quality, or quantity, or both - ‘substantial part’ can relate to repeated extraction of insubstantial parts reg 16(2), in the hope that it may prevent repeated low level infringement Exceptions - Database rights are not infringed (regs 19 and 20): (a) by fair dealing with a substantial part of a database made available to the public if: (i) such dealing is for illustration in teaching or research, and (ii) sufficient acknowledgement is given (b) generally, by copying or use with the authority of the keeper of a database available for public inspection as a statutory record   Trade Marks A trade mark is simply a badge or indication of the trade origin of goods or services from a particular supplier. Trade Marks Act 1994 – which implements council Directive 89/104/EEC so as to harmonise to a large degree the national laws on trade marks between MS. As part of this purpose, the TMA deals with implementation of the Community Trade Mark scheme and other international matters affecting trade marks. There has also been harmonisation at international level from Singapore Treaty and TRIPS. Main functions of a registered trade mark are: o To indicate the trade origin of goods or services with a particular supplier – definition at s1(1) TMA ‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.’ o As a likely indication of the quality of product associated with that supplier o As a measure of the ongoing and changing value of the particular brand image of products, or of the image of the supplier as a whole, o As a useful and commercially exploitable piece of property in itself Advantages of registering include: o Easier to sue for infringement of a trade mark than passing off for eg. With a reg tm there is an initial presumption of validity so there is no need for the C to prove reputation o You can register a trade mark before you start using it. In the US the application is based on an ‘intent to use’ and the registration itself is not actually finalised until the use occurs. o There is a public record for trade marks, which records both applications and registered trade marks. o Danger that somebody else will register – if you rely on building up your rights through use then there is the danger that somebody else will register it before you have built up goodwill or reputation. However, if there is non-use for 5 years then a TM can be struck off so it shouldn’t just be registered defensively. Anybody can apply to have a TM registered in the UK, whether they own the TM or not, provided that they are using the TM for goods or services, or intend to do so. It does not matter where the applicant comes from. Right Trade Mark – Trade Mark Act 1994 Subsistence Registerable Trade marks have to be registered in relation to named goods or services, in that a class or classes of goods and services must be chosen. TMs are registered in one or more of 45 classes, the main purpose of which is to facilitate searching. s1(1) TMA ‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.’ 1. Can TM meet the statutory definition? S1(1) 1. Graphic representation Absolutely crucial requirement, if the limits of protection are to be ascertainable and clear. Trade Mark Rules’ requirement that the sign be capable of being clearly reproduced in an 8cm by 8cm square in the Trade Mark Journal, which is the official means by which applications to register TMs are first shown to the world (to allow objections and show how will look on register if done). Unless the sign can be drawn, written in words, numbers or other symbols or described in very clear words, it is unregistrable. 2. Capable of distinguishing Many signs and words are so commonplace in everyday use as to be incapable of having the distinctive quality in isolation. What needs to be distinctive is the mark as a whole, rather than particular features within it. It is therefore normal to find quite imaginative combinations of commonplace words or symbols. Eg word ‘finish’ with red powerball is highly distinctive 2. Absolute grounds for refusal S3 S3(1) The following shall not be registered: a) signs which do not satisfy the grounds in s1 b) trade marks that are devoid of distinctive character c) TMs which consist exclusively of signs or indications which may serve to designate the kind, quality, value, purpose etc of goods or services d) TMs that consist exclusively of signs or indications which have become customary in the current language of the trade Distinctiveness is the idea that lies behind all of these. A made up name will be eg Kodak. These bars to registration can be by-passed by the proviso that distinctiveness can be acquired by extensive use of the trademark. Main problems tend to be associated with: Use of names as TMs - Any person entitled to use own personal or business name without it comprising of an infringement, s11(2) TMA – but it causes a problem under 3(1)(b) so you have to try and make it catchy still Aspects of the goods or services themselves - Can cause a problem under 3(1)(c). this is vital protection against monopoly of descriptive signs or indications. Eg ‘orange juice, friction management systems’ it would stop someone else from using those words. - Many imaginiative ones come from confectionary eg mars galaxy, they do not directly suggest the goods, they are indirect suggestions of qualities of the goods but are not descriptive. - You can use 2 normal words together in an unusual way eg ‘baby dry’ Proctor & Gamble Co v OHIM [2002] Consider whether the mark is objectively descriptive or elusive in hinting at the characteristics or quality of the goods and services. Geographical origins of the good or services - Causes a problem under s3(1)(c) - The case of Chiemesee stated that geographical names should be kept free for other business to use if they so wish - Cannot be rejected on this basis alone where the TM does not exclusively consist of signs of geographical origin. - A fanciful mark could succeed eg Sahara for ice cream - Collective marks can be registered under s49 and Sch 1 of TMA, to show that the goods are provided by a member of a particular trade association eg melton Mowbray pork pies have mark authentic melton mowbray HOWEVER this cannot stop others using geographical location in course of honest business practice. - Protected Designations of Origin – similar idea but EU level of protection 3. Absolute grounds for refusal, shape marks S3(2) - To exclude a shape mark from registration, that mark must consist ‘exclusively’ of the proscribed shape - What needs to be shown is distinctiveness - Idea is that a shape which is barred from reg by s3(2) achieves lesser (25 year max) design protection The shape which results from the goods themselves  Shape determined by technical function is not registerable Philips Electronics v Remington Consumer Products [1999]  Nestle SA v Unilever shape of viennetta arguably comes from the nature of the product, and further there was no evidence that public saw it as badge of origin The shape of goods which is necessary to achieve a technical result  Philips Electronics NC v Remington Consumer Prods the 3 razor config was what gave the product its technical superiority and had to be like that so was not registrable The shape which gives substantial value to goods  It may be that a shape makes the good more valuable, but this should not be protected by TM to give indefinite monopoly 4. Absolute grounds for refusal, public policy objections S3  S3(3)(a) – contrary to public policy or morality This is based on a right-thinking but open minded member of the public – ghazilians trade mark application 2002  S3(3)(b) likely to deceive  Where a mark is registered for use only in certain colours, use of a similar mark in different colours may not necessarily be deceptive  S3(6) bad faith applications Evidence of use to overcome absolute grounds Lack of distinctiveness can often be overcome by publicly recognised use, if the applicant can prove they have built up a reputation, say, a descriptive mark by using it. Eg coca cola bottles They send a statutory declaration to the TM registry giving evidence of advertising spend, turnover in goods and length of use. (also needs to be associated to trade origin) an informal minimum number of years use is 5. - Very few colours are registered, but now Heinz colour has been. Needs to be a combination of colours, not just a single shade. - Also in use of slogans. Nestle SA v Mars UK nestle wanted to TM ‘have a break’ independently of ‘have a kitkat’ but the court considered that on its own it was a common phrase with no distinctive quality Generally, the more curious and less related to the goods and services the more registerable it will be. Relative grounds for refusal Rules basically the same as under s10 for infringement Relative grounds means a conflict with an existing registered trade mark, belonging to someone else, which is identical or similar to the one being applied for. S5: 1) a trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected 2) identical trade mark for similar goods and services Similar trade mark for identical goods and services And is likely to cause confusion with the public 3) identical trade mark shall not be registered if the earlier TM has reputation and the later trade mark would take unfair advantage, or be detrimental to it 4) will be likely to be the subject of a passing off action How do you find out if this is going to happen? You do a trade mark search (online or through an agency). First check in similar categories. Be mindful of case law due to s5(4) How is identical assessed? - court takes the position of the reasonable, well-informed and alert customer, seeing the mark and having all the imperfections of recall of earlier marks that you would expect - tactile, visual and aural perceptions important and so will probs only be identical if some things have been reproduced - if you reproduce something and then add to it, this is identical because you have copied it in its entirety Decon Laboratories Ltd v Fred Baker Scientific Ltd [2001] - stylised differently can be identical - good to find this as under s5(1) nothing more needs to be proven to prevent registration Identical goods or services - cannot just be in the same class, must be considerable identity in terms of what they are, as well as what the customer is expecting Similarity of marks - well established approach shown by ECJ in Sabel BV v Puma AG, Rudolf Dassler Sport[1998] court should take an overall impression of the visual aural and conceptual similarities, looking in particular at distinct and dominant features - concentrates on similarities rather than distinctions - needs to create confusion as to the trade source Similarity of goods and services - there must be demonstrable confusion and wrong association of the trade source - everything turns on what the likely users of goods or services might expect to find on offer under a particular TM, and where or when those goods might be expected to be offered - the closer the two are, the more likely is it to find similarity - the greater the reputation and goodwill of the prior mark, the most the question asks about confusion rather than similarity of goods - British Sugar v Robertsons british sugar has treat sauce and roberstons wanted to bring out treat spread. Different category so was not similar goods, the court said relevant factors were:  Comparison of use and users  Way in which the goods are sold  Extent to which competitive - Held that spread not similar Rights obtained, inc duration Period of protection given by registration can be indefinite. Period of registration is an initial 10 years, with the option to renew for subsequent 10 year periods, without limit in time. Provided the mark does not lose its ability to distinguish the particular goods or services in question it can remain in registration. Revocation: - S46(1)(a) – United Biscuits 4 trade marks revoked for non-use. If the TM has not been used for a 5 year period. - Generic If becomes generic by an action or non-action of proprietor, it has become a common mark in the trade for the prod or service for which it is registered, then it no longer under s1 distinguishes the goods Biro, Sellotape etc have become generic How to avoid? Use as adjective and not noun, distinguish the typeface from other, use ® - Has become misleading because of way has been used or allowed to be used under s46(1)(d) Ownership Scope is equivalent to an exclusive right to use the trade mark in trade for most commercial purposes permitted by the particular registration. S9(1) states ‘the proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the TM in the UK without his consent.’ Infringing acts are set out exhaustively at s10 and s11 Infringement – defences, exceptions Must be a use in the course of trade (not just someone painting a Mercedes badge on his wall out of enthusiasm) Must be used as a mark of trade source Methods of infringement s10(1)(2)and(3):  Identical sign for identical goods or services – need to consider the sign in the whole  Identical/similar goods or similar/identical goods, and likelihood of confusion  Use of identical/similar/dissimilar if the use is detrimental or takes unfair advantage TM and the internet - TM are territorial rights, therefore infringing use needs to be in UK - Pre-emptive registration of a domain name may not necessarily be used in the course of trade but court found it so likely to cause an infringement that an injunction was granted British Telecom v One in a Million Ds intentions are important factor DEFENCES Honest and fair use  S10(6) any honest and fair use of a TM for purposes of identifying goods or services as being those of the reg prop is to be allowed  Essential for comparative advertising  ‘Fairness’ is a question of degree, and unfair use is likely to be an infringement Emaco ltd v Dyson Applicances Ltd  Provided Directive 2006/111 is complied with, usually ok: o Is not misleading o Compares goods meeting same need o Objective in comparison o Does not denigrate the TM o Doesn’t take unfair advantage or cause detriment o Does not create confusion Invalidity  S47(1) TMA, the TM was invalidly registered in contravention of s3 – A&E television networks LLC v Discovery Communications Europe ‘history channel’ descriptive and non-distinctive Own name defence  Long established that any person is entitled to use his own personal or business name and address, fairly and honestly Indications of the nature of the goods/services  Independent business may use a TM to indicate that it supplied the proprietors goods BMW AG v Deenik Exhaustion of rights  Goods which are put elsewhere on the market in the EEA can be sold under that mark in the UK Acquiescence  A proprietor who acquiesces for a period of 5 years or more loses right to object Remedies  S14(2) damages, injunctions, accounts or otherwise such as a property action  S15 order to erase or remove offending sign, or destroy relevant goods or materials  S16 delivery up of infringing goods  S19 orders concerning disposal of such matter delivered up  S21 relief including damages, declaration and injunction against threats  Criminal law santions ss92 to 98, including forfeiture INTERNATIONAL Community trade mark - single trade mark effective throughout the EU - application can be defeated by any identical/similar marks anywhere in EU - OHIM does not carry out extensive searches, proprietors are responsible for objecting - If unsuccessful, applicant may apply for bundle of national TMs Madrid System for International Registration of TMs 1989 (Madrid Protocol) - In force 95 - 85 contracting parties - Filing treaty and not substantive harmonisation overseen by WIPO - Allows applicant to file single application for international TM, and provides centralised system for any subsequent change - Application has same effect as national application in each of designated countries - If cancelled for any reason in first 5 years, applicant may turn it into series of national applications retaining the priority - Application in one country is used as the basis of the app for all other countries - EC is a member in itself so CTM can be used as the basis Singapore Treaty of the Law of Trade Marks 2009 - Replaced old Trade mark treaty which tried to harmonise TM procedures - Quicker, less costly application procedures - Introduced harmonised protection period – initially 10 years, can be renewed indefinitely - Streamlined renewal procedures and recording of changes Agreement on Trade Related Aspects of IPRs (TRIPS) 1994 and World Trade Organisation - Entered into force in 95 - Significant as the first international agreement to : • establish minimum standards of protection for several forms of IP, • mandate civil, criminal and border enforcement provisions, • be subject to binding and enforceable dispute settlement - built on the primary agreements of Paris convention and Berne convention - Every member of WTO is subject to TRIPS - Sets down min standards for availability of 7 forms of IP, with permissible limitations and exceptions to balance with public policy - ‘the floor not the ceiling’ Paris Convention for the Protection of Industrial Property 1883 - 171 contracting states - Provides 6 month priority period in respect of TM application in another contracting state - Does not regulate filing and admin - Where mark is duly registered in country of origin, must, on request, be accepted in all other contracting states Council Directive to approximate the laws of the member - Large degree of harmonisation between MS - TMA 1994 implemented this directive   Passing Off These common law rights are typically used by owners of goodwill who have not taken steps to register trademarks, as they are unregistered systems that typically can be used by anyone who produces goods which are well known to potential customers, and who can show that a rival confuses potential customers into buying the wrong product. Can act in a much more flexible way than TMs, to the extent that IP lawyers often use them both in parallel in an action to maximise a client’s chances. • Often concerns the packaging or appearance of goods. Making use of another’s reputation. Reddaway and Frank Reddaway & Co Ltd v Banham and George Banham & Co Ltd [1896] ‘nobody has any right to represent his goods as the goods of somebody else.’ If you make a buyer think you are another party, then that person has a right to claim for compensation for losses suffered by the deception. • Has to be in relation to commerical activity – Kean v McGiven [1982] – action concerning the name of a political party did not succeed. Usually, something must be happening that is capable of causing people to spend money. • In a classic case the D adopts some mark, sign or other distinguishing feature of C which customers associate with C. he uses this or something confusingly similar to it for his own good/services, with the result that the customers are fooled into thinking it is the Cs prod. Right Passing off Subsistence Consorzio del Prosciutto di Parma v Marks & Spencer Plc [1991] H of L judgment in Reckitt & Colman is quoted to show three elements: 1. Goodwill - Business reputation, that must be among customers, or prospective customers. Reputation must also be in relation to some distinguishing feature, ie not only that they associate the plastic lemon with the claimant, but that they understand the plastic lemon as a sign that the lemon juice actually is from the claimant. - C will generally demonstrate this by showing sales figures and expenditure on advertising, witness evidence and survey evidence - Distinguishing features could be: o Logos, shape or styling of packaging, get up, colour o Name - However this list is not exhaustive as it is common law based. - Must also be within a reasonable amount of time. In Riddle v United Service Organisation Ltd [2004] Riddle snr had an orchestra that used to tour. Riddle jnr couldn’t stop someone else doing so with similar name as it was 40 years previously, and was held there was no goodwill remaining after that long. Obvs depends on how big they were etc, all on facts. - This can also be a problem for new businesses or ventures, where the goodwill is yet to be established. 2. Misrep, leading to confusion - There must be a mis-representation made by the D in the course of trade. In the Jif lemon case, the misrep was the use of the lemon. - Usually a deliberate attempt by a D to ‘ride off the back’ of the Cs success United Biscuits (UK) Ltd v Asda Stores [1997] ‘Penguin and puffin case’ asda produced a puffin biscuit that was packaged similarly to the penguin biscuit and also ran an advertising campaign that had the slogan ‘pick up a puffin.’ Easy to establish passing off - However, can also be innocent and actionable, the D doesn’t have to be aware of the Cs products (although this was severely affect award of damages) - Misrep MUST lead to confusion of customers or potential customers, and generally it must be confusion as to the trade source. Customers are fooled into thinking prods come from the C, or are associated with the C - The confusion must be at the point of sale, or before it. Bostick v Sellotape [1994] makers of blu-tac failed to get an injunction in passing off against a rival manufacturer of a similar looking product, as the similarity could only be realised when the packaging was removed, and so there was no chances of confusion by the customer at the point of sale - Not enough to just be confusion between the two products, customer must believe that Ds product are associated with the C - There needs to be an overlap between the alleged infringer and proprietor in that there is a ‘common field of activity’ in the following respects: • Type of good or services • Geographical area • Time: overlap must be pretty much contemporaneous - Otherwise would be no reason for the confusion - Difficult to evidence, normally done by witness evidence or survey evidence. Burden on the C is heavy and is often difficult to discharge. Often what is conclusive is placing of the products before the judge - If people merely recognise a copy as being a cheaper copy of a branded product then it may not work. Arsenal football club plc v reed [2001] someone selling memorabilia and had a clear disclaimer - For there to be confusion, it must confuse more than a ‘moron in a hurry’ morning star v express newspapers [1979] 3. Damage - The C must show damage, or likelihood of damage - Often, because of the likelihood of damage, C will be seeking an interim injunction - In an ordinary case where C and D are trading in the same line of business, once goodwill and misrep have been established the court is usually willing to infer damage - Two main types of damage are:  Loss of profits – people buying the infringing products instead of the Cs  Loss of reputation – usually because infringing product is of inferior quality - If the infringer is in a different field of activity, it may be difficult to show damage eg stringfellow and another v mccain foodsand another [1984] the nightclub was unable to stop oven chips being sold under the same name – NOT COMMON FIELD OF ACTIVITY - Claimants have been able to establish damage for not being able to move into new markets, for eg the maker of marigolds was able to stop an someone attempting to make toilet tissue of the same name (LRC International Ltd and another v Lilla Edets Sales Co Lts 1973) Rights obtained, inc duration Arises automatically, and lasts indefinitely Ownership Owner of the goodwill Infringement – defences, exceptions Developed through case law in a random and somewhat overlapping manner: 1. Careful and honest use of a Ds own name, mark or get-up 2. D or Cs use otherwise than in trade 3. C has no goodwill or goodwill is owned by somebody else 4. C acquiescence, encouragement or consent to use 5. No provable damage or loss to C Remedies  Injunction  Damages (nominal if innocent passing off) OR  An account of profits  An order to cover up marks or repackage  An order for delivery up or destruction of offending items  Declarations as to rights International Aspects Other common law countries such as Aus and NZ have developed through case law and so slightly differently on some points Civil law countries (most of EU) tend to have law of unfair competition, which sometimes overlaps US has stat claim of ‘palming off’ – s43(a) of the Trade Mark Act provides against false or misleading adverts etc for registered or unregistered TMs. Remedies are the same as above Personality rights PAGE 215 – many jurisdictions have these including the US. They allow someone to commercially exploit their own personality, and prevent others from doing so Paris Convention for the Protection of Industrial Property of 1883 –  171 countries are bound to assure nationals of all those countries to protection against unfair competition  Any act of competition contrary to honest practices in industrial or commercial matters constitutes act of unfair competition:  False allegations designed to discredit a competitor  Acts creating confusion with the establishment, activities or goods of a creditor   Design Rights REGISTERED DESIGN RIGHT Right Registered Design Act 1949 Subsistence Is the design registerable? Registered design is about: S1(2) ‘the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, shape, texture and/or materials of the product itself and/or its ornamentation’ Product is: S1(3) ‘any industrial or handicraft item other than a computer programme, and in particular includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product’ • Must be new and have individual character S1B 1) A design shall be protected by a right in a registered design to the extent that the design is new and has individual character 2) A design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date 3) A design has individual character if the overall impression it produces on the informed user differs from the overall impression formed on such a user by any design which has been made available to the public before the relevant date Novelty - The time at which the novelty test should be met is when the application to register is first filed - S1B(6)(a) says public is purchasing public and business community and so can be EEA - Is the design new at that date or does an identical one exist in the prior art in the sector concerned? Individual character - Also determined at date of first filing - Question of evidence as to overall impression made upon ‘informed user’ which is a person familiar with the designs used in the sector in question - J Choo v Towerstone a case about handbags, informed user was not lady in street or a handbag designer - has creator of new design taken advantage of freedom of design that is available to him to make his design different? - Can be amalgamation of things that make a different overall impression in the name of household articles ltd - Little room for any expert evidence and court will not usually require it o RDA now provides a grace period of 12 months during which a designer may disclose his design to others without affecting its novelty, or the assessment of its individual character in an application for registration at the end of the 12 month period s1B(5)(6) Exceptions – design features that cannot be protected 1) Technical function – s1C For features dictated solely by the products technical function eg. Serated edge on dressmakers crimping shears However, if there is some freedom of design, it will be registerable 2) Interface features – s1C(2) Any features of the design of a product that are compelled to be of a certain shape in order to be able to fit into, around, or up against some other product so that either or both of the products can perform their proper function Principle that if it had to be that design then no design flair has been shown, so why should it be registrable S1C(3) states that this does not apply for features that allow for assembly or connection of mutually interchangeable products within a modular system Designs that can now be protected - Pre December 2001, it was not possible to have a design registration for a spare part R v registered designs appeal tribunal. It is now possible to have such a registration, provided the part is visible during the normal use of the whole product - Eg design of a new aerial for a car would be registrable because it would be visible, but a new design for an oil filter for a car would not, as it would be hidden in normal use. S1B: (8) component part of a complex product shall only be considered to be new and have individual character if a) If the component part , once incorporated, remains visible during normal use b) To the extent that those features of the component part are in themselves new and have individual character (9) normal use means by the end user, and does not include any maintenance, service or repair Whilst this can be used to stop another manufacturer making the same aerial, it cannot stop someone supplying a spare part ‘so as to restore its original appearance’ s7A(5) Scope of the right Proprietor has exclusive right to use the design. This in effect includes use of the design on any product Duration The max duration is 25 years – s8 This is achieved by initial registration of 5 years, renewable in 5 year periods Ownership First ownership of the design rests with the author, ie the actual designer s2(1) Subject to: 1) if the design is created in the course of someones employment, the ownership of the design rests with the employer s2(1B) 2) if the design is created as a result of commission, then the ownership rests with the commissioner, not the designer s2(1A) Infringement – knowledge or intention is not required - Rowlawn ltd v Turfmech machinery ltd the D followed much of the broad design of the C, but that was not what was protected. In the finer detail of the machinery, the Ds machine differed, and had been developed without copying - ‘Using’ the design is defined in s7(2) including ‘making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied’ - Infringement is doing any of these without the props consent s7A - There are exceptions under s7A(2): a) An act which is done privately and is not for commercial purposes b) An act which is done for experimental purposes c) An act of reproduction for teaching purposes - There are qualifications to these in s7A(3) a) Act of reproduction is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the design b) Mention is made of the source Remedies - Damages are not awarded against an infringer who has no knowledge that the design was registered s24B - Remedies include: - Damages - An injunction - Account of profits - An order for delivery up/destruction of offending materials - S26 provides for groundless threats of infringement, which include damages, an injunction and a declaration   UNREGISTERED DESIGN RIGHT Right Design = S213(2) of CDPA 1988 ‘any aspect of the shape or configuration (whether internal or external) of the whole or part of an article’ No right subsists unless the design is recorded in a document, or an article has been made to the design s213(6) Originality S213(1) – the design must be original. This has two aspects: a) That it should be original, in the copyright sense of not itself being a copy b) That it should not be ‘commonplace in the design field in question’ s213(4) Not commonplace - For UDR to work the design must be distinguishable from all other goods of that type in the marketplace - Farmers Build ltd v Carrier Bulk Materials Handling ltd putting a number of different commonplace features together in a new way does not stop it being commonplace - Ocular sciences commonplace if ‘trite, common-or-garden, or hackneyed’ - Dyson v Qualtex first look at whether whole of article is an original, and secondly, unless there was a special point about a particular aspect, taking the view that each and every aspect of the design was original Exclusions S213(3) sets out:  Methods or principles of construction s213(3)(a) On the basis that this is patent law not design law  Must fit s213(3)(b)(i) Aspects of a design that ‘must fit’ with other articles in order that either article may perform its function. It is only the interface that is excluded, again attention focuses on whether designer has any design freedom around them Ocular sciences – contact lenses Parker v Tidbull – mobile phone holder  Must match s213(3)(b)(ii) If the appearance of those features is dependent on that of a larger article of which it is intended to form an integral part Dyson v Qualtex¬ – it is for spare parts manufacturer to show that there is a real need for the part to be copy some feature or shape of the configuration  S213(3)(c) surface decoration Really from definition, as UDR only protects shape of a product Helmet integrated systems – scalloping on helmet had resulted in some advantages of strength, but had only been designed for appearance and so was surface decoration Ownership - if the design is created in someones employment, the ownership of the design is the employers s215 - if commission, it belongs to commissioner Duration 15 years from the end of the calendar year in which the design was first created OR 10 years from being made available for sale or hire s216 (shorter of) Infringement Owner of UDR has exclusive right to reproduce the design for commercial purposes by making articles to that design, or by reproducing his design document for purpose of making articles to that design s226(1) Primary infringement is for commercial purposes, directly or indirectly making articles to the design, or making a design document for that purpose, without consent s226(3) Secondary infringement includes importation, possessing for commercial purposes, selling and hiring, but is relevant only if the person had knowledge or reason to believe that the items were infringing items s227 S51 excludes from copyright protection the use of any design document where an article has been made from that design S236 states that no UDR can arise where there is copyright (in say, a sculpture) This is to prevent overlap Remedies - damages, injunctions, account for profits s229(1) order for delivery up s230, and order for disposal s231 - in the last 5 years of the term of an unregistered design, anyone can apply for a licence to use the design s237 - if terms cannot be agreed by the parties, then terms are settled by the Designs Registry Community unregistered design right - reg 6/2002 introduced a CUD right - lasts for 3 years - interim form of protection to protect registerable designs before registration is applied for   Patents Right Patents Act 1977 Subsistence An invention will be patentable if it meets 4 conditions. It must: 1) Be new (s1(1)(a)) 2) Constitute an inventive step (s1(b)) 3) Be capable of industrial application (s1(1)(c)) 4) Not be within any of the exclusions in s1(2) New - Novelty is judged by reference to the ‘state of the art’ at the priority date - S2(1) it is new if it does not form the state of the art - S2(2) state of the art is all matter which has been made available to the public before the priority date - S2(3) thi