ABSTRACT
First published in 1997. Routledge is an imprint of Taylor & Francis, an informa company.
TABLE OF CONTENTS
chapter 1|1 pages
INTRODUCTION TO INTELLECTUAL PROPERTY
A BRIEF DESCRIPTION OF THE SUBJECT Intellectual property is one of those areas of law that doesn’t really exist. It could have been the creation of the marketing department in a big city law firm, except that the expression has been in use since the mid-1970s, when
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Definition of intellectual property
First of all, s 72(5) of the Supreme Court Act 1981 (as amended by Copyright, Designs and Patents Act 1988, which, as you will learn, amended a lot of things) tells us:
chapter |5 pages
Proprietary rights
The rights given by intellectual property statutes are a type of property. They are personal property, choses in action (with the exception of patents), and therefore intangible. They may be among the most valuable assets owned by many businesses, and where an individual such as an author, composer, artist, inventor, designer or computer programmer owns intellectual property they
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COMMON FEATURES OF INTELLECTUAL PROPERTY RIGHTS
Territoriality Intellectual property rights, being creatures of statute, are confined to the territory where they are created. But they have importance that transcends national boundaries, and the constraints imposed by the application of
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(b) Assignments (c) Assignments in equity
Common law generally did not permit assignments of choses in action, but equity did. So an equitable chose in action could be assigned and the assignee could sue on it: in the case of a legal chose in action only the assignor could sue, but equity would oblige him to lend his name to the action. The Supreme Court of Judicature Act 1873 provided generally for the assignment of choses
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Future choses in action cannot be assigned, even in equity. A contract to assign them when they come into existence is however valid, and a purported assignment of future chose will be given effect as such a contract provided that consideration is given. Incidental rights of action may be transferred with property rights: Trendtex Trading Corp v Credit Suisse [1982] AC 679, [1981] 3 All ER 520, HL. A genuine commercial interest in taking an assignment will suffice. The essence of a trademark is that it is some distinctive thing which points out that the goods are the goods of AB (per Kay J in Richards v Butler [1892] 2 Ch 116, [1982] 61 LJCh 387, [1982] 66 LT 487). (d) Implied covenants
The Law of Property Act 1925 implied certain covenants into conveyances. However, it is widely accepted that it did not apply to intellectual property transactions. Although the definition of property in the legislation is wide (and to understand the situation fully you have to look at several of the so- called Birkenhead Acts of 1925), the LPA 1925 was a consolidating statute and
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A disposition with full title guarantee implies a covenant that the person making the disposition is disposing of the property free from all charges and encumbrances (whether monetary or not), and from all other rights exerciseable by third parties, other than any charges, encumbrances or rights which that person does not and could not be reasonably expected to know about. This extends the liabilities imposed and the rights conferred by or under an enactment unless they do not constitute defects in title because at the time of disposition they are only potential liabilities and rights in relation to the property or that they are imposed or conferred in relation to the property generally. A disposition made with limited title guarantee carries with it by covenant that the person making the disposition has not since the last disposition value: (1) charged or encumbered the property by means of any charge or encumbrance which subsists at the time when the disposition is made, or granted third party rights in relation to the property which so subsists; or (2) suffered the property to be so charged or encumbered or subject to any such rights; and (3) that he is not aware that anyone else has done so since the last disposition value. No liability under the implied covenants (other than the covenant to do all that he reasonably can to transfer the title purportedly transferred) will arise in respect of any matter to which the disposition is expressly made subject. The person making the disposition will not be liable under any of those covenants for anything which at the time of disposition was within the actual knowledge of the person for whom the disposition was made, or is a necessary consequence of facts within that person’s knowledge. Independence
Intellectual property rights of different types generally exist quite independently of each other. A patent will not exclude the possibility that an article incorporating the invention should not also be protected under the Registered Designs Act 1949, and that the sign under which the product is sold should not be registered as a trademark. Indeed, the shape of the product
chapter 2|11 pages
INTELLECTUAL PROPERTY AND THE EUROPEAN COMMUNITY
The Treaty of Rome set up the European Economic Community and created (on paper at least) a common market among the then six members. Nearly 40 years on, the Common Market (or single market, or internal market) remains
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EXHAUSTION
The doctrine of exhaustion is central to the EC’s approach to intellectual property rights. It was first laid down in the Deutsche Grammophon v Metro case. The same principle applies even where no protection is available in the Member State where the first marketed. In Merck v Stephar [1981] ECR 2063, [1981] 3 CMLR 463 the plaintiff marketed a pharmaceutical product which it
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COPYRIGHT
The application of the exhaustion doctrine to copyright was first addressed in the Deutsche Grammophon case which has already been discussed. It was refined in Musik-Vertrieb Membran v GEMA [1981] ECR 147, [1981] 2 CMLR 44.
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COMMON ORIGIN OF TRADEMARKS
Where two trademarks arise from a single source, problems can be caused for free movement of branded goods. EMI Records v CBS UK [1976] ECR 811, [1976] 2 CMLR 235 concerned the COLUMBIA trademark, used for records. The same mark was used by both parties, for historical reasons. Not only was Article 30 invoked, so too were the competition rules.
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The court answered:
The cases show clearly that differences in national intellectual property laws are hard to reconcile with the existence of a common market. Indeed, as long ago as 1959 the Commission urged the Council to set up working parties to look at patents, trademarks and designs. At that stage, however, it was the creation of Community-wide intellectual property rights that was on the
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The Community Patent Convention will make it possible to obtain a European Patent under the EPC procedure which is valid throughout the European Community. However, not all Member States have been able to ratify the convention to date, so it will be delayed or may come into operation with less than all the 15 Member States. The EPC had 17 members at 1 January 1996: 14 EC Member States (not Finland), Switzerland, Liechtenstein, and Monaco. In addition Slovenia, Lithuania, Latvia, Romania and Albania have arrangements enabling national patents based on EP applications to be readily obtained. Ownership
The ownership of a patent is dealt with in s 7 of the Act, which provides: The priority date of an invention which is the subject of a patent application, and of any matter contained in the application, is a concept of crucial importance. This date is the date on which the application is filed, or an earlier date (within the previous 12 months) on which an application was filed in the UK or abroad which disclosed matter which supports the later application
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The applicant, after considering the results of the search, may file amendments to the description and claims. However, these are not acted on immediately; rather the patent goes forward to publication in exactly the form in which it was filed. The only addition will be any new claims filed since then but prior to the completion of preparation of the application for publication. At this stage copies of the application are available to anybody who wishes to inspect or purchase them. The Patent Office file is also open to public inspection. Whatever subsequently happens to the application, the learning it embodies now becomes part of the state of the art. Up to this point, it would have been possible to withdraw the application and maintain the novelty of the invention (provided of course that no other disclosure was made). Likewise, the invention remains novel for the purposes of foreign applications up the time it is published. If a patentee files, say, an Australia application, more than 12 months later (so outside the priority period) but before publication of the Australian application he can file a new application in (say) the UK. It will not have the priority of the Australian application: but it can be used as the basis for new priority applications elsewhere, including the European Patent Office. The application as published will also include an abstract, a summary of the invention covering the main technical features. This too has to be supplied by the applicant. Like the claims and search fee the abstract has to be filed within 12 months of the application date if it is not filed at the same time as the rest of the application. Substantive examination and grant (s 18)
The final stage before a patent can be granted is known as the substantive examination. At this stage, the applicant has to pay a further fee (called the examination fee) and if this is not done within six months after publication the application will die. A Patent Office examiner will examine the specification (ie the description
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PATENTABILITY
Section 1 of the Patents Act 1977, sets out the basic requirements for patentability:
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Computer programs
Computer programs were not patentable under the 1949 Act because they were not a ‘manner of manufacture’ (the predecessor of the industrial application requirement of the 1977 Act) but they could form part of a machine or industrial process. They must now be considered patentable where they have a novel technical effect. The leading US case of Diamond v
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Prior user
A prior user of a patented invention may have a defence to an infringement action under s 64, which provides (as amended by Schedule 5, para 17 of the CDPA 1988):
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protection is sought. The application must be made within six months of the date on which marketing approval for the product in question is granted anywhere within the EEC. Furthermore a supplementary protection certificate can be granted only in respect of the ‘basic’ patent covering the product in question. The EPC Member States agreed in December 1991 to an amendment to the convention to permit members to extend European patents in cases of national emergency or to compensate for marketing delays due to an ‘administrative authorisation’ procedure required by law before a product can be marketed. On 27 November 1995 the Council of Ministers adopted a common position on a proposed regulation that would result in the issue by national patent offices of analogous supplementary protection certificates for plant protection products such as insecticides, fungicides and herbicides that are also subject to regulatory approval before they can be marketed. The maximum possible additional protection will be for five years. Before enactment, however, the proposal still has to receive a second reading from the European Parliament and then be reviewed one further time by the Council of Ministers. EMPLOYEE INVENTIONS
The old Patents Act of 1949 was silent on the question of employees’ inventions. Consideration of the ownership of such inventions was therefore a matter of looking at the employee’s contract and considering the doctrine of restraint of trade. Section 39 of the Patents Act 1977 consists of a self-contained code for
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Permitted use of copyright material
Not all uses of copyright material are prohibited. Copyright is the exclusive right to do or to authorise someone else to do certain acts: so if the owner of the copyright gives permission – licenses the activity – there will be no question of infringement. The difficulty may lie in determining what use has been licensed.
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DESIGNS
THE BACKGROUND The protection of designs takes (and has taken) several legal forms: certain designs are registrable, in this country and in most countries of the world, though according to rules that vary considerably between countries, and are also protected by copyright or similar means. In many countries unfair
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them are so important. The desire for a free market in such parts informs the whole of UK design law. That preoccupation has now been translated into the EC arena. In 1991 the Commission published a Green Paper on the legal protection of industrial designs, proposing a harmonising directive to bring the laws of the Member States into line with each other, and a regulation to set up a Community design system. If this sounds familiar, it should, because that is precisely what has happened in the trademarks field. The intervention of the EC resulted in the arguments that had raged in the UK being transferred to Brussels, where the Commission was lobbied to change its proposals before going public with them (the Green Paper had been merely a working document of the services of the Commission, the civil servants, rather than a proposal of the Commissioners themselves). It then moved on to the European Parliament, which debated the proposed directive in October 1995. At the time of writing, the Commission has adopted an amended proposal (OJ [1996] C142/7) but it is stuck in the Council where unanimity is proving impossible to obtain. The EC proposals, though they will be some time in coming into operation, are of considerable interest: they are discussed in this chapter alongside the provisions of our domestic law which in many areas they will eventually replace or modify. COPYRIGHT AND INDUSTRIAL DESIGNS
Until 1988, protection for industrial designs was given by the Copyright Act 1956. In British Leyland Motor Corporation v Armstrong Patents Ltd [1986] AC 477 the House of Lords removed this protection, and Lord Griffiths’ judgment sets out the history of this peculiar result of the 1956 Act as well as describing the (allegedly) undesirable effects of it. Lords Bridge and Templeman gave
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Note that the definition of a design in the 1949 Act is limited to designs, or more properly to features of them, that have eye-appeal. There is no such requirement in the provisions on unregistered design right – deliberately so, since the government was trying to devise a type of protection that would accommodate functional and aesthetic designs. But there is no ‘eye-appeal’ requirement in the proposed directive either, so functional and aesthetic designs will enjoy protection. Just as in the copyright field there is a distinction between idea and expression, so too in the design field function and form have to be distinguished. In neither area is it easy to draw these distinctions: there are schools of thought in the design world (for instance, the Bauhaus) that maintain that the beauty of a design can lie in the way the article performs its function. Certainly, modern design looks on more than mere ornamentation: this the directive seeks to recognise by not excluding the functional from its scope. REGISTERED DESIGNS: REQUIREMENTS FOR PROTECTION
Novelty To qualify for protection under the Registered Designs Act, a design must be new at the date on which the application for registration is filed (s 1(2)). To be considered new it must not have been previously registered or made available
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It is possible to disclose the design without losing its novelty and therefore making it unregistrable. This is extremely useful for designers who are not sure whether articles made to their design will sell; it allows them to test the market before incurring the cost of applying for registration. This exception, however, is very limited: it applies only to display at an exhibition certified by the Department of Trade and Industry, and even then an application for registration must be filed not more than six months after the opening of the exhibition. Functional design features ‘Must match’
Where the shape or a feature of an article is dictated by the function which the article has to perform the design of that feature will be specifically excluded from registration. Design right is the appropriate way of protecting such items. Works of sculpture (unless they are going to be used for mass production),
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Ownership
Section 2 of the Act sets out the rules relating to ownership of registered designs:
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UNREGISTERED DESIGN RIGHT
CDPA (Part 3) introduced a new regime for the protection of designs. It replaced the indirect protection given to functional designs by the Copyright Act 1956. Section 51 imposes severe restrictions on the copyright protection of industrial designs. Designs will be protected not by copyright but by the new
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article. The design, when applied to an article, need not even be visible to the naked eye. Design right does not subsist in certain situations. Some of these designs are also excluded from the definition of ‘design’ in the 1949 Act, as amended, so they cannot be registered. The definition of design excludes the underlying principles or ideas behind the design. If they are to be protected at all, they are properly matters for the patent system.
Design right does not subsist in those parts of the design of an article which are used to fit or connect an article to another so that either article may perform its intended function. This exception is particularly intended to withdraw protection from spare parts which must fit in to existing equipment. Notice that it is not the design for the spare part itself which is excluded
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‘Must match’ Requirements for protection (a) Fixation
The ‘must match’ exception excludes from protection features which are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part. It is intended to apply where there is a need for articles which are part of a single object to match the appearance of the rest of that object as a whole – it
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Design right will not subsist in designs which were fixed in a material form before the commencement of Part 3 of the Act. They will remain protected by copyright under the 1956 Act subject to the transitional provisions set out in paragraphs 19 and 20 of schedule 1 to the Act, which provide: (a) Protection is limited to a maximum of 10 years from commencement (1 August 1989), unless under the old copyright law it expires earlier. (b) Licences of right are available for the whole of this period. (c) The spare parts exception expounded by the House of Lords in BL v Armstrong (1986) applies. (b) Originality
The Act does not elaborate much on the requirement of originality, though it is a concept well understood in copyright law. The basic test of originality is that the design must be independent in the sense that it is not a copy, although it need not necessarily be novel. [1988] RPC 343 the Privy Council held that a design was
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Content (a) Commercial reproduction (b) Independent creation
The Act sets out a number of restricted acts to do which without the authorisation of the design right owner is a primary infringement. Authorising another person to do the act without the consent of the design right owner is also an infringement of design right.
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(c) Indirect reproduction (d) ‘Infringing Article’
Reproduction may be direct or indirect. Indirect reproduction may involve many stages; it does not matter whether the intervening acts are themselves infringements. For example, it is not an infringement of design right to make a copy of a design document except where this is for the purpose of making an article to the design. However, making a further copy from a non-infringing
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for unmarketed designs s 216(1)(a) provides for an overall period of 15 years from the end of the calendar year in which the design is first recorded.
Licences are made available in two situations. First, s 237 provides that licences of unregistered design rights will be available in the last five years of the term of design right:
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TRADEMARKS
THE PURPOSE AND FUNCTION OF TRADEMARKS A trademark serves to distinguish the goods or services of one supplier form those supplied by others. It is a badge of origin, or a sign which indicates who made the goods or provided the services. Trademark law prevents one trader appropriating the reputation of another: it is therefore concerned with
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WHY GRANT MONOPOLIES OVER SIGNS?
Trademarks may be registered or unregistered. The owner of an unregistered trademark cannot sue for infringement (s 2) but it is protected by the action for passing off which is described below. Registration brings significant benefits: a registered trademark is protected under the Trademarks Act 1994 and the proprietor can sue someone who infringes the rights given by registration for
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Representations Money or money’s worth Collective marks and certification marks Collective marks
For unusual kinds of marks, the applicant will have to decide how to represent them graphically. Ultimately, the purpose will be to convince the Registrar and the courts that the mark and its representation comply with the requirements of s 1. The requirement that they can be represented graphically may pose
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The purpose of a certification mark is to indicate that the goods or services on which it is used comply with certain objective standards which the proprietor has set. These may relate to: origin; material; mode of manufacture; or quality; The terms governing the use of the mark must be set out in regulations, which must be approved prior to registration of the mark. Responsibility for this lies with the Trade Marks Registry. In debates on the legislation, the government gave the example of an association of cheese makers, which may allow its members to put a certification mark on their goods to indicate that they were produced by traditional methods. The wool industry uses the well-known ‘Woolmark’, registered in the name of the International Wool Secretariat, to identify its products. And there is no reason why a manufacturer, for example, of vaccines used in fish farming, may not register a certification mark which indicates that certain fish have been treated with its products. Like collective marks, certification marks may be used with other trademarks. The producer of goods or supplier of a service may indicate the origin of the goods or service as well as their compliance with the relevant standards. Paragraph 2 of schedule 2 modifies the notion of what a trademark may comprise for the purposes of these provisions. It must serve to distinguish goods or services which are certified from goods or services that are not. CONDITIONS FOR REGISTRATION
Trademarks may be refused registration on grounds relating to the nature of the mark itself – ‘absolute grounds’ – or on grounds relating to prior existing rights belonging to others – ‘relative grounds’. Absolute grounds The absolute grounds on which registration can be refused are set out in s 3. It
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provision limits the grounds on which registration of a trademark which is validly protected in another country party to the convention may be refused. A sign which is not within the definition of trademark in s 1 will be excluded from registration. A trademark is not registrable if it is devoid of any distinctive character. This involves more than considering (as the 1938 Act required) whether the mark is inherently capable of distinguishing the goods or services of the proprietor. Fewer marks will be refused registration on this ground than formerly. Surnames in particular will be more easily registered. A trademark is not registrable if it consists exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of goods or rendering of services, or other characteristics of the goods or services – that is, it is descriptive. The courts have considered descriptiveness many times. See for example TORQ-SET [1959] RPC 344, WELDMESH [1966] RPC 220, ROTOLOK [1968] RPC 227, WHISQUEUR (1948) 66 RPC 105. Trademarks which consist exclusively of signs or indications that have become customary in current language or in the bona fide and established practices of the trade – generic trademarks – will also be excluded from registration. Acquired distinctiveness Prohibited Matter Public policy
A trademark which would otherwise be refused registration on the grounds that it lacks distinctiveness or is descriptive may nevertheless be registered if it has acquired a distinctive character in use. This must have happened before the date of the application for registration: use after the application date is of no assistance, as it is the mark’s distinctiveness at the time of the application
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(b) marks of such a nature that they would deceive the public. The Act provides examples of what the public may be deceived about: the nature, quality or geographical origin of the goods or service (ORLWOOLA (1909) 26 RPC 693 and 850, WEE McGLEN [1980] RPC 115). Marks prohibited by law Protected emblems Bad faith Relative grounds
Tobacco, one day? Marks which consist of specially protected emblems specified or referred to in s 4 are excluded from registration by s 3(5). This covers the royal arms and certain flags, and other matter. Olympic symbols are protected by their own
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The confusion test Likelihood of association
The confusion test includes the impression that the two marks, though graphically indistinguishable, may produce in the mind of a customer. If the customer is likely to believe that the goods bearing the mark the subject of the application have a connection with the proprietor of the earlier mark, the later application will be refused.
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The reputation of an earlier UK mark or international trademark (UK) which is to be taken into account under this provision must be in the UK. If the mark in question is a Community trademark the reputation can be anywhere in the Community. Section 5(3) abuts rather than overlaps s5(2). The two provisions must be seen as mutually exclusive, which may assist interpretation. Well-known marks
Article 6 bis of the Paris Convention:
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else’s copyright, or by rights in a design. This implements Article 4(4)(c) of the directive. It has been used in the case of the Direct Line application referred to above, in connection with a dispute over ownership of the copyright in the jingle. The putative owner of the copyright is reportedly opposing the application. Consent
The consent of the owner of the earlier right in question (including an earlier trademark) will enable the later application to proceed. Such consent will often even overcome the Registrar’s view that there is a likelihood of confusion: it will be taken as an indication from someone in the marketplace that there is no such risk.
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(3) Does the proprietor of the earlier right oppose registration of the later mark? (4) If so, the Registrar may refuse. If not, he has no discretion to do so.
Section 7 provides a mechanism under which the burden of raising objections on relative grounds falls in certain circumstances on the owner of the earlier mark rather than on the Registrar. If the applicant is able to satisfy the Registrar that there has been honest concurrent use, the Registrar will not be able to sustain an objection: the application will be registered and it will be for
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If there is an opposition from the owner of the earlier mark, the Registrar will have to decide whether the grounds for refusal have been established. If the marks are identical, and so are the goods or services for which registration is sought, the application must be refused: the fact that there has been honest concurrent use will not overcome an objection under s5(1). If, however, either the mark of the goods or services are merely similar (within s5(2)), a likelihood of confusion on the part of the public will have to be shown for the opposition to succeed. Concurrent use of the two marks will probably make it difficult for such a likelihood to be shown. Similarly, if the opposition is based on the fact that the later mark would unfairly take advantage of the reputation of the earlier one (s 5(3)), it may be material that the two have co-existed in the past. Vested rights Doing Away with Searching
The question of the rights of the owner of an earlier trademark to register it is still only half the story. Section 7 of the 1938 Act also provided a saving for vested rights, not repeated in the 1994 Act. This meant that the proprietor of a registered trademark could not interfere with or restrain the use by any person of a similar or identical
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There is no question of having to show that confusion is caused by this use: because of the identity of the marks and of the goods or services, confusion is considered inevitable and need not be demonstrated. Similar marks, similar goods and services Dilution
Section 10(2) describes two situations where due to similarities between either the marks or the goods or services unauthorised use of a mark may infringe. The first is where an identical mark is used on goods or services similar to those for which the mark is registered: the second is where a similar mark is used on similar goods or services.
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left with the extended scope of registration under the new Act and the law of passing off. ‘Use’ Importing and exporting
Section 10(4) tells us what the Act means when it refers to use of a trademark, amounting to infringements if done without authority. The list in the subsection is not exhaustive. It includes: affixing a mark to goods or their packaging; offering or exposing goods for sale, putting them on the market or
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Liability of printers, etc Non-visual use Permitted use Comparative advertising
Anyone applying a registered trademark to labelling or packaging materials, business papers or advertisements for goods or services may be treated as a party to any use of the material which infringes the rights of the proprietor. There is a requirement here that at the time of applying the mark the printer, etc, knew or had reason to believe that the application of the mark was not
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the use of their mark despite the fact that the mark was used only on shops in London and Coventry. The mark was recognised over a much wider area. The section in the Act does not give effect to the word ‘territory’. The government believed that the addition of the last eleven words of Article 6(2) was unnecessary. They qualify the expression ‘laws of the Member State’, not ‘particular locality’. In other words, it was a provision relevant to countries which provided for registration of a trademark at a local or municipal level but not for the UK. Exhaustion
Section 12 provides that the rights of the owner of a registered trademark are exhausted once goods bearing the mark have been put on the market in the European Community by the owner of the mark or with their consent. Article 7 of the directive requires this, reflecting the jurisprudence of the Court of Justice under Article 36 of the Treaty of Rome:
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Date of filing Classification Priority
The date of filing of an application is important because it gives the applicant precedence over later applications. It is the date on which all the documents containing everything required by the Act have been presented to the Registrar. If they are filed on different dates, the key date will be the one on which the last was filed.
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reasonably be expected to search in the UK register, and the international register: when it comes into existence, the Community register should also be included automatically. But he could not be expected to try to search for earlier unregistered rights. The Registrar is obliged to tell the applicant if any requirement has not, in his view, been met. The applicant may contest this view, and may also amend the application to overcome the objections. The Registrar must specify a time limit for this to be done. If the applicant neither satisfies the Registrar that the requirements have been met, nor amends the application to meet them, the Registrar has to refuse the application. The same consequence will follow if the applicant does not respond within the time set by the Registrar. On the other hand, if it appears to the Registrar that an application complies with all the requirements for registration, it will be accepted. This has the important consequence of removing the discretion given to the Registrar under the 1938 Act. Publication Opposition
Once an application is accepted, the Act provides that it must be published. At that point registration may be opposed by other parties, and written observations can be made. Opposition was provided for in the 1938 Act, but there was no provision for written observations to be made.
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Under the old law, a period of a month was given for oppositions, but extensions were liberally granted. The new three-month period will not be extended at all. Written observations Withdrawal, restriction and amendment Withdrawal Restriction Amendment
Any person may also file written observations on whether a mark should or should not be registered. There is no such provision in the 1938 Act (although in practice such observations may be submitted informally), but there is a parallel in s 21 of the Patents Act 1977, and the Community Trademarks Regulation (Article 41) also contains such a provision.
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now if the applicant’s name or address appears as one non-distinctive element in a more complex mark, so that altering that element does not affect the overall identity of the mark. If any of the goods or services specified in a published application, or the representation of a published mark, is altered as a result of an amendment, the amended application may have to be re-published. Objections could then be made by anyone claiming to be affected by the amended application. Registration Divisional applications
Once any oppositions have been overcome, or the time for filing oppositions has expired, s 40 provides that the mark will be registered. It replaces s 19 of the old Act. Once the conditions are met, the mark must be registered. The Registrar has no discretion in the matter, unless it appears to him that an application
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Section 22(2) of the old Act provided for applications to be split, but did not deal with recombining them. So a mark could be divided if a business were split up, but could not be reunited if the business came back together or the part-mark was transferred to the owner of the other part. In fact, the rules made under the 1938 Act appeared to prohibit recombining marks: the Madrid Protocol embraces the notion, however, so the new Act applies the principle to all types of mark. Merger Series Term Duration
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Renewal Removal Publication Revocation Revocation
The procedure for renewing a registration, and the duties of the Registrar, are set out in s 43. This section also provides for the removal of a registration which has not been renewed, and for restoration. It is in effect identical to the old law. Renewal of a registration is subject, inevitably, to payment of the renewal
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Non-use Generic marks
Registration is vulnerable to cancellation if the mark is out of use for five years (s 46(1)(a) and (b)). It makes no difference if there has been use on goods of the same description or on associated goods or services: this provision from the 1938 Act has been dropped, to comply with Articles 10 and 12 of the directive. Non-use may arise if the mark has not been put to genuine use within five
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the part of the proprietor, and that it is use by the trade, not the public, which matters. Misleading marks ‘Use’ Applications for revocation
Misleading marks will also be liable to revocation. If the mark is liable to mislead the public especially as to the nature, quality or geographical origin of the goods or services for which it is registered, and that situation has arisen through the use of the mark by the proprietor or with its consent, there are good policy reasons for refusing to allow it to remain registered.
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Partial revocation Effect of revocation Grounds for invalidity Absolute grounds Relative grounds
Revocation may be partial, relating to some only of the goods or services for which the mark is registered. Then, the mark remains registered for the goods or services for which its registration remains valid. The rights of the person registered as the proprietor of a mark are considered
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Relationship with national laws Disadvantages INTERNATIONAL TRADEMARKS
The directive ensures that national trademarks will exist alongside Community trademarks on similar terms. What infringes a Community trademark is a matter for national law, subject to the jurisdiction of the European Court of Justice over the designated Community trademark courts. The Madrid Agreement and Protocol The Madrid Agreement, which established a system for international registration of trademarks, was originally concluded in 1891. It is a special arrangement under the Paris Convention.
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The agreement covers a large number of countries: but in addition to the UK, the Scandinavian countries, the whole of North and South America, Australasia and Japan are missing from the union it creates. Those which are parties to the agreement are largely ‘deposit’ countries, where the authority which registers trademarks does not take responsibility for raising objections (or raises only limited ones) leaving the validity of the registration to be established by litigation. THE PROTOCOL
The protocol to the Madrid Agreement concerning the International Registration of Marks, adopted in Madrid on 27 June 1989, radically alters the prospects of UK trademark owners registering their marks abroad. It is a parallel treaty to the agreement which aims to overcome the problems that the UK and others have with the present system. It comes into force on 1 April
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Another important change is that an international application may be based on an application for a national registration in the country of origin. The agreement requires that the mark be registered first. This is important to UK trademark owners, as registration here takes longer than note the deposit countries. The International Bureau International trademarks (UK) Application via the Patent Office
The International Bureau of the World Intellectual Property Organisation plays an important rôle in the international trademark system, maintaining the international register under the agreement, a duty which it will also discharge under the protocol. WIPO is a United Nations agency, based in Geneva.
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The Patent Office must certify that the particulars appearing on it match those on the national registration or application: the goods or services for which protection is sought must be specified, and cannot include goods or services not within the specification of the UK application. The countries of the Madrid system where protection is required must also be stated. The Patent Office has the task of forwarding the verified application to the International Bureau in Geneva, for which service it will make a charge intended to cover its costs. Central attack Application for an international mark (UK)
Under the pre-protocol Madrid system, central attack was a major disincentive to international applications, and to UK membership. It meant that a successful challenge to the national registration which lay at the root of a proprietor’s international registrations would bring down the whole edifice, not just the basic national registration.
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Any order made under the provisions of the act relating to the Madrid Protocol are to be subject to the negative resolution procedure. DEALINGS IN TRADEMARKS
A registered trademark is the personal property of its proprietor (incorporeal movable property in Scotland) [s 22] and may therefore be freely transferred to another person, or licensed. The owner of a trademark may be a natural person or a legal person such
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Licensing Registered users Licensing under the 1994 Act
Before 1938, there was no statutory recognition of the licensing of trademarks. It was not clear whether it was possible at all to license someone else to use a trademark without compromising the distinguishing function of the mark and risking it being invalidated.
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of the new proprietor, even though the new proprietor may not have expressly consented to the use. Where the licence so provides, the licensee may grant sublicences. Exclusive licences Rights of licensee
Exclusive licensees enjoy extended rights under the Act. Section 29 starts by defining an exclusive licence: a licence conferring on the licensee, to the exclusion of all other persons the right to use the trademark. Similar definitions for other types of intellectual property are found in s 130(1) of the Patents Act 1977 and s 92(1) of the Copyright, Designs
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Registration of transactions
The Act provides that certain registrable transactions must be entered on the register of trademarks. Section 25 of the old Act provided for registration of assignments and transmissions of trademarks: s 25 of the new Act is broader. It also replaces (though in a very different form) s 28 of the 1938 Act, which dealt with registered user agreements.
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the agreement under which the grantor (most likely) agreed to register the transaction, it is hard to see on what basis they might argue. The grantee, the party most likely to be prejudiced by the failure to register, could have registered it herself. Of course, if it can be shown that notwithstanding the failure to register the person acquiring the rights knew of the earlier transaction, it will be effective. Licensees are given rights of action by the new Act: but if the licence is not registered, s 25(2)(b) provides that the licensee can neither sue nor call on the licensor to sue. Nor will any loss sustained by the unregistered licensee be taken into account in assessing the damages payable where the proprietor has brought infringement proceedings. This provision will encourage (without making mandatory) the registration of licences: in this it resembles the 1938 Act. Where a transfer of ownership has not been registered, the Act provides that the right to damages or an account of profits will be limited. An application to register the transaction must have been made within six months after the date of the transaction, otherwise the new proprietor will not be entitled to compensation for anything happening between becoming the proprietor and registering the fact. A court may override this rule if it is satisfied that it was not practicable for the particulars of the transmission or assignment to be registered in that time. It must however have been registered as soon as practicable thereafter. This provision closely resembles s 68 of the Patents Act 1977. Trusts
The Registrar may refuse to enter details of a notice of trust on the register. Nor is the Registrar affected by any notice of trust. However, equities relating to a trademark may be enforced, in the same way as equities relating to other personal property. This provision (s 26) re-enacts s 64 of the 1938 Act.
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Property in applications
Applications for registration of trademarks are treated as property in much the same way as registered trademarks. Section 27 is designed to ensure that this happens, and is a new provision. Under the 1938 Act, there was no provision for a pending application to be assigned by itself at all. Only if it were accompanied by a mark registered for
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CONFIDENTIAL INFORMATION
Confidential information may not, strictly speaking, be a type of intellectual property. It derives its protection in law from a number of different sources: contract, tort, equity. However, the law on confidentiality can protect the same material as some intellectual property rights, especially patents, so it has to be
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So, as far as outgoing employees are concerned, the obligation extends only to trade secrets. This approach was endorsed in Lansing Linde Ltd v Kerr [1991] 1 WLR 251. The Court of Appeal (Staughton LJ) held that this approach was correct, endorsing the judgment in Faccenda but not the limits placed by the Court of Appeal on Goulding J’s second definition of the subject-matter of the restriction.
Restrictive covenants in employment contracts can include an explicit prohibition on using confidential information, which might not be covered by the fiduciary duty. A covenant could prevent an employee from joining a specified competitor for a period of say a year or restrain the employee from competing in a specified
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PASSING OFF
GENERAL FORMULATION The action for passing off is a common law action, and the principles are set out in the decisions of judges. It received its classic formulation from Lord Diplock in Erven Warnink BV v John Townend and Sons (Hull) Ltd [1979] AC 731 in which the Dutch maker of advocaat – a drink made from lawyers,
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MISREPRESENTATION BY TRADER IN COURSE OF TRADE
The first element of the passing off action is misrepresentation in the course of trade. In the seminal case of Reddaway v Banham [1896] AC 199 – known as the it more bluntly: ‘Nobody has any right to represent his goods as the goods of somebody else’.
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be fatal to Harrods’ claim for passing off. The Elderflower Champagne case also calls into question the need for confusion to be present for a passing off action to succeed. PLAINTIFF HAS SUFFICIENT GOODWILL IN ‘GET-UP’
The basis of all passing off actions is the protection of goodwill. In Star [1975] FSR 256 the appellant, a Hong Kong company, made toothbrushes which it sold in Singapore under the mark ‘Ace Brand’ with accompanying device. This mark was not registered in Singapore. In October 1965, the Singapore government imposed an import duty which
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Geographical names may acquire secondary meanings. In Whitstable Oyster Fishery Co v Hayling Fisheries Limited (1901) 18 RPC 434, the defendant was permitted to describe oysters which reached maturity at Whitstable as Whitstable Oysters; Wotherspoon v Currie [1872] LR 4, where the plaintiff had made his Glenfield Starch at Glenfield but moved his factory, he could still prevent the defendant calling his starch which he made in Glenfield by same name. DAMAGE
The plaintiff must have suffered or be likely to suffer damage or injury to his business or goodwill: inconvenience or annoyance is not enough. Once evidence is established of deception or likely deception, injury to reputation or goodwill is readily presumed: in the Elderflower Champagne case, [1992] FSR 641, at first instance the court held that the
