Intellectual Property Rights Crash Course

Copyright

Conventions and treaties seek to harmonize protection at a basic level. They operate to harmonize national laws or, in the case of the registered rights, to provide for recognition of the priority of national applications and procedures for applying in many jurisdictions.

• Berne Convention (which deals with authorial works)

• Rome Convention (which deals with sound recordings and performers’ rights).

• TRIPS- requires signatory states to observe the provisions of the Berne Convention and to provide protection in relation to performers, producers of phonograms, and broadcasters.

EU law

• satellite broadcasting—Directive 93/83/EC;

• databases—Directive 96/9/EC;

• conditional access (deals with protection of encrypted signals, eg satellite TV)— Directive 98/84/EC;

• The Information Society Directive (deals mainly with infringing acts and defences, but may have more far-reaching implications)—Directive 2001/29/EC;

• rental and lending—Directive 2006/115/EC (makes renting out copies of works an infringing act, which it previously was not);

• duration of copyright—Directive 2006/116/EC;

• protection of computer programs—Directive 2009/24/EC.

Works qualify for protection with reference to the nationality of the author or the place of publication—most countries of the world are qualifying countries.

Copyright is infringed by copying, broadcasting, the whole or a substantial part of a work (primary infringement) or dealing in infringing copies of a work (secondary infringement).

1. Authorial works—must be original

• literary, dramatic, and musical works must be recorded in material form

• there is no need for artistic works to be recorded

• can be infringed by re-creating their content in a different work

1. Entrepreneurial works or neighbouring rights—need not be original, but must not be copies of other such works

• sound recordings, films, broadcasts, and the typographical arrangement of published editions

• Can only be infringed by reprographic copying

1. Authorial works—must be original

• literary, dramatic, and musical works must be recorded in material form

• there is no need for artistic works to be recorded

• can be infringed by re-creating their content in a different work

In Infopaq 🡪 all aspects of authorial copyright are now subject to an autonomous EU law interpretation—including aspects not explicitly addressed by any Directive, such as the nature of copyright works, the global test for originality, and the question of how much of a work must be taken (if the whole work is not copied) for there to be infringement.

What can be protected under copyright (scope and subject-matter)

Originality

is often, but not always, the issue that determines whether copyright exists in a creation, so many of the cases mentioned are summarized in the section ‘Originality’.

Infopaq🡪 anything, regardless of whether it fits into a particular category of work, must be protected if it amounts to the author’s ‘own intellectual creation’.

this appears in the Software Directive (2009/24/EC) and the Database Directive (96/9/EC).

The EU ‘intellectual creation’ test Infopaq was a case about infringement of copyright by taking (inter alia) headlines from literary works. The ECJ interpreted the Information Society Directive (which states that copyright is infringed by taking ‘part’ of a work) by equating the question ‘how much is part?’ to the presence of originality in that part. It held that something amounted to ‘part’ of a work if it represented the author’s own intellectual creation. The court referred to the selection and organization of the words in a newspaper headline as being aspects where intellectual creation could be demonstrated, so a newspaper headline might be original and entitled to copyright protection as a work on its own. Subsequent ECJ cases have confirmed that the test for originality is a matter of EU law and the same test applies to all types of authorial work

copyright protects only ‘the expression of the intellectual creation of the author’.

only a small amount of input is required to get over the threshold of originality, and that the questions of originality and infringement by taking part are linked.

No clear indication of the type of mental activity that ‘intellectual creation’ involves…

The creator of a work is the person who provides the originality.

1. Entrepreneurial works or neighbouring rights—need not be original, but must not be copies of other such works

• sound recordings, films, broadcasts, and the typographical arrangement of published editions

• Can only be infringed by reprographic copying

Example - films are not authorial works—originality is not required and film copyright can only be infringed by reprographic copying. (?? Not sure if only in UK)

Berne requirement 🡪 works of cinematography must be protected as authorial works could be achieved by extending the scope of dramatic copyright to include the artistic input of a cinematographer in a film.

Copyright may protect the content of a film (script, dialogue, dance, stunts/fights). The rights of any performers involved will need to be taken into consideration. In addition, artistic works may have been created for the film in the form of sets, costume designs, etc. Often music is specially performed and recorded (sound recording copyright) or specially composed or arranged (musical copyright). All these copyrights and related rights will be infringed when the film is shown in a cinema, so the producer must obtain all the necessary rights.

Broadcasts

The definition of a broadcast 🡪 Information Society Directive. 🡪all forms of electronic transmission (conventional radio, cable and satellite broadcast, as well as ‘webcasts’) made to the public, including encrypted transmissions where decryption devices are available to the public. Only real-time transmissions and transmissions made at a time of the broadcaster’s choosing are broadcasts as defined. Transmissions at a time chosen by the receiver are not broadcasts, so no broadcast is made when material is uploaded to a website from which it can be streamed or downloaded on demand by the user. Broadcasts will often involve underlying copyright in the content, for which permission will need to be obtained (broadcasting is an infringing act). But a live broadcast of ordinary life (no music or dance, etc) will involve no underlying copyright. If it is also recorded at the time of filming, film copyright will arise.

Published editions

published edition of the whole or any part of one or more literary, dramatic, or musical works. Typography is the arrangement of text on a page, choice of typeface and size, and so on. It will thus protect publishers from reprographic copying of their products even when there is no copyright in the underlying content.

Rights of the copyright owner and infringement

Information Society Directive, which requires EU states to give authors of original works and owners of neighbouring rights

• the ‘reproduction right’ (copying),

• the ‘communication right’ (broadcasting and making available on the internet), and

• the ‘distribution right’ (authorial works only covering first and subsequent sales of copies).

Two types of infringing act: primary and secondary.

Primary infringing acts involve the initiation of infringing activity, whereas secondary infringing acts typically involve activity in relation to infringing copies of works or which assists infringement. The Directive requires that these rights apply to works or parts of works.

Infopaq and subsequent ECJ cases, discussed earlier in relation to originality, the ‘substantial part’ must now be interpreted to mean the same thing as ‘part’ in the Information Society Directive, as that has been interpreted by the ECJ.

Infringing acts

Primary infringing acts

The primary infringing acts are as follows.

Copying

The copy can be in any material form (which includes digital form). This includes transient copies. Thus, whenever you browse to a web page, you make copies of the text and images.

In NLA v Meltwater the ECJ confirmed that the ‘transient copies’ defence applied to ordinary acts of browsing to lawful material—dealt with under ‘Defences to copyright infringement’.) For entrepreneurial works, only reprographic copying infringes copyright. In Norowzian v Arks (No 1), it was held that a film that had been made so as to reproduce aspects of the shooting and editing of the claimant’s film was not copied.

In the case of authorial works, copying requires a causal link between the content of the claimant’s work and the content of the defendant’s work. Independent creation that results in the same features being present is not copying—a common situation where this arises is when both the original creator and alleged copyist draw on the same starting materials or operate within the same constraints. The chain of causation can be indirect for an example of this.

In the case of literary works, a computer program may be copied by writing a program that reproduces the functionality of the original, even though the copyist had no access to the original source code

Issuing to the public

This covers the first sale to the public in the European Economic Area (EEA) of a copy of a work—whether or not that copy was made with the consent of the copyright owner.

EU policy on the free movement of goods and the exhaustion of rights—see ‘The free movement of goods under EU law’.

As issuing is a primary infringing act, there is no requirement for knowledge, unlike with the secondary infringing act of importing.

Performing or showing the work in public

This covers both live performance and playing a recording or broadcast of a work to a public audience—but not doing so in private. The Information Society Directive is not concerned with live performances, but ECJ case-law has held that playing a recording to an audience is within the scope of the communication right and so the concept of the public from that right applies.

Communicating the work to the public

If material is placed on the internet so that it is publicly accessible by downloading or streaming at a time chosen by the recipient, there is infringement by ‘making available’.

If the time is fixed by the person making it available, there is infringement by ‘broadcasting’ under s 20(2)(a). A series of ECJ cases have established that communicating means transmission to an audience ‘who are not present at the place where the transmission originates’, so includes:

• making material available for download or streaming on the internet (file-sharers will often infringe in this way, and websites that provide assistance to them by hosting or linking to torrent files may also infringe as joint tortfeasors);

• showing live television broadcasts to an audience

• real-time broadcasting or webcasting;

• (controversially) hyperlinks.

Svensson v Retriever Sverige AB (C-466/12)

HELD: Providing a hyperlink to material infringed copyright in the material linked to if that material was not lawfully available on the world-wide web as there was communication (the controversial part) and it was to a ‘new public’ (see below). The public means ‘a new public’, that is a public not originally envisaged by the rights owner in relation to the source material that is communicated (Rafael Hotels). This has been held to include customers in a pub to whom broadcasts were shown, but not patients in a dental practice listening to CDs, and to include any communication by a technologically different means than that originally envisaged, such as when free-to-air broadcasts are streamed in real time over the internet.

Making an adaptation of the work

This is defined as changes between literary and dramatic forms, converting literary works to picture books, changes of musical key, and changing the language or format of programs and databases. Many ways of changing a work will not be adaptations as defined (eg an abridgment of a book for reading on radio) but will amount to copying in the ordinary sense.

Rental or lending of the work

Rental refers to hiring out copies; lending refers to the sort of thing public libraries do.

Secondary infringing acts

Secondary infringing acts require activity in relation to an infringing copy of a work.

They include dealing in copies of the work by selling, possessing in the course of trade, offering or exposing for sale, importing, and activities in relation to infringement, such as knowingly making premises or apparatus available.

The key distinction between primary and secondary infringing acts is that there is a mental element to all the secondary infringing acts: the infringer must know or have reason to believe they were committing the act in relation to an infringing article or performance.

Infringement by taking part

The substantial part and entrepreneurial works

Here the issue will arise in relation to exact copying of a small part of a work. Section 17(4) states that copying a single frame of a film or broadcast is sufficient for film copyright to be infringed. Case-law has held that to infringe published edition copyright at least a whole page must be copied. There are no express rules about how much of a sound recording can be taken, but in the UK music industry, ‘sampling fees’ are paid where only a few seconds of a sound recording are used.

Infringement by taking part and authorial copyright

As copying can be indirect, infringement of an authorial work can arise from exact copying of a section of a work or from incorporation of features of one work into another. The key ECJ cases have already been discussed in relation to originality. If the part taken is the author’s intellectual creation, there will be infringement.

In SAS the ECJ held that copyright protects the expression of ideas, not the ideas themselves and that this concept applied to copyright generally, not just programs.

Baigent & Leigh v Random House [2007]

FACTS: Dan Brown’s novel The Da Vinci Code incorporated a view of history that had been put forward in an earlier non-fiction work.

HELD: distinction between ideas and their expression: the historical theory (idea) may have been taken, but the way it had been expressed had not, so there was no infringement.

Idea/expression a useful distinction where only general aspects of a work are taken.

It is known as the ‘idea–expression dichotomy’.

The US Copyright Act of 1976 refers explicitly to ideas (not protected) and their expression (protected). T

hese concepts are now part of EU law

The Information Society Directive deals with defences to all works apart from computer programs and databases.

The EU states could not agree on defences, so, with the exception of one, all the defences listed in the Directive are optional—states may implement all, some, or no defences from the list, but no other defences.

Underlying the Directive and the Act is Art 9 of the Berne Convention, which permits defences only in certain special cases, provided the reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author—the so-called ‘Berne three-step test’.

The main generally applicable defences are:

• a defence covering temporary copies;

• a defence for private and non-commercial copying;

• the defences of ‘fair dealing’ for the purposes of: – private study or non-commercial research; – criticism, review, quotation, or reporting current events; – caricature, parody, or pastiche; (The defences of quotation and of caricature, parody, or pastiche)

• a non-statutory public interest defence that also follows ‘fair dealing’ principles;

• incidental inclusion. There are also defences (some applying only to certain types of work) for copying by libraries and archives, in relation to public administration and education, and to enable reproduction to help visually impaired people.

These defences are too extensive and detailed to describe here.

Defence for data carriers

The single defence required by the Directive is a defence covering temporary copies made in a communication network which are transient or incidental to a technical purpose.

This defence was relevant to the Meltwater case.

FACTS: The defendants crawled the web and scraped content from pages, re-presenting it to users in a searchable press ‘cuttings’ service.

HELD by the Court of Appeal: The defence did not apply to the various acts of copying and making available involved in creating the service.

HELD by the ECJ: The transient copies defence applies to copies made during browsing, both the onscreen copies and any locally cached copies generated by the web browser software.

This defence does not apply to computer programs or databases.

The private use defence

This defence only applies to acts of copying by people who are already in possession of a lawful copy of a work. It would not cover putting the results on YouTube as the defence does not cover communicating to the public.

The ‘fair dealing’ defences and the public interest defence

There are two stages to consider in relation to these defences: did the circumstances bring the activity within the scope of the defence, and was the use made of the work ‘fair dealing’?

The courts have been lenient in their interpretation of the purposes for which copying occurs, but have tended to be stricter when considering whether the dealing was fair.

Private study or non-commercial research

Private study or non-commercial research does not include research undertaken for a commercial purpose such as technological research, or academic research as part of the activities of a university.

Criticism or review

The criticism or review must be of the copyright work or another work, and the defence only applies if there is a sufficient acknowledgement of the authorship of the work and where the work has been made available to the public.

The transient copies defence applies to copies made during browsing, both the onscreen copies and any locally cached copies generated by the web browser software.

Quotation (s 30(1ZA)) (1ZA)

Copyright in a work is not infringed, provided that;

1. the work has been made available to the public,

2. the use of the quotation is fair dealing with the work,

3. the extent of the quotation is no more than is required by the specific purpose for which it is used, and

4. the quotation is accompanied by a sufficient acknowledgement (unless this would be impossible for reasons of practicality or otherwise).

It is clear from this that there must be an underlying purpose for the quotation ..

The defence can apply to all forms of work, not just text, so artistic works and films may be ‘quoted’. Caricature, parody, or pastiche

The public interest defence

Lion Laboratories v Evans

FACTS: A whistle-blower published internal documents from the manufacturer of breathalyzers, which showed that the results could be unreliable. He was sued for copyright infringement (and breach of confidence)

HELD: There was a defence as the reproduction of the material was in the public interest (specifically the public interest in a fair criminal justice system).

‘Fair dealing’

‘Dealing’ means anything done in relation to a work that would otherwise amount to infringement. ‘Fairness’ means that the amount used (how much is copied) and the way it is used (how widely it is published) must be no more than is fairly required in order to achieve the purpose of research, reporting, quotation, etc under which a defence is claimed.

So, for example, a critical review needs to quote text; exact words are needed to report events.

Where the public interest defence is asserted, the courts have applied fair dealing principles in relation to achieving the public interest purpose.

They also refer to the ECHR and the human rights doctrine of proportionality.

Incidental inclusion

This defence applies to all categories of work, but only where they are included incidentally in an artistic work, sound recording, film, or broadcast.

FACTS: The defendants published football cards displaying players and made sure that each player displayed their team logo on their shirt. Permission was obtained in relation to copyright in the photographs.

HELD: The fact that the depiction of the logo was an important part of the choice of photograph indicated that the inclusion was not incidental, so copyright in the logos was infringed.

‘Innocent infringement’ defence to damages

only If the infringer can show that they were unaware that copyright existed in the work, they can still be subject to an injunction, but not damages—s 97(1). Note that this applies even to primary infringers—secondary infringers will, in this situation, also no doubt lack the necessary mental element.

Exploitation of copyright

Normally an author will not license or assign all the rights that copyright gives them; rather, they will carve up the rights so that they can be more effectively exploited. For example, the film rights to a novel are best exploited by a film producer, the book publishing rights by a book publisher, and so on. Unlike the registered rights, which can only be assigned as a whole, it is possible to assign any defined part of the rights of a copyright owner.

It is also common for rights to be licensed, on terms that can vary from a short-term, non-exclusive licence to an exclusive licence for the full term of copyright.

This system of collective licensing is used whenever music is played on the radio or in a public place such as a shop, or when a band plays covers in a pub. As a result of agreements between national collecting societies, a global repertoire is available.

Infringement of authorial copyright and originality of short literary works

Infopaq International A/S v Danske Dagblades Forening (C-5/08) [2009] ECR I-6569)

D used scanners and software to collect headlines and extracts from hard-copy news and feature articles published by I and others. The full text was deleted once the headlines and extracts had been selected. Subscribers to D’s service could search the extracts for keywords of interest to them. Some of the headlines were written separately from the articles by a sub-editor.

Held: Some of the separately written headlines could amount to literary works in their own right as they involved intellectual creativity in capturing the essence of the article. Where headlines were not separately written, some of them would amount to a part of the whole work as required for infringement under the Information Society Directive. The test for this was whether they involved the author’s intellectual creation, which also applied to the extracts. In both cases, extracts as short as 11 words could be protectable if the test was met. D infringed by copying and making available the headlines and extracts and the ‘transient copies’ defence did not apply to any stage of the process, including the temporary use of the full text scans.

General de Autores y Editores de España (SGAE) v Rafael Hoteles SL (C-306/05

RH sent television broadcasts to guests by a network connecting the rooms, and were accused of infringement by ‘communicating to the public’

Held: This amounted to communication as the recipients were not present at the place the transmission originated (which was the place of broadcast). It was ‘to the public’ as the hotel guests were not envisaged as recipients of the original broadcasts by the rights owners when they gave permission to the broadcaster.

Database rights

Databases are types of literary work for which Database Directive (96/9/EC) set special rules.

In addition, the Database Directive provides for a separate right in databases: database right (known as the sui generis right), which is implemented by the Copyright and Rights in Databases Regulations 1997. Database right is named sui generis because it is a right that bears no similarity to any previously existing IP right.

● Databases must be original in the sense of being the author’s own intellectual creation.

● Databases: – copyright protects the ‘selection and arrangement’ of the database if it is original; – database right protects against substantial amounts of data being extracted from the database, provided substantial investment went into gathering the data.

Protection of databases

Definition of a database Databases are defined in the Database Directive in s 3A/Art 1 as: 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.

requirements for systematic arrangement and individual accessibility, but suitably organized and accessible paper-based databases will, as will electronic databases. While music could be regarded as data about notes, and a digital image as data about pixel values, they are not databases as defined. The data are not independent—they are linked by the requirement collectively to represent a particular musical work or image.

Remember that something that does not meet the definition of a database may be protected by ordinary literary, dramatic, musical, or artistic copyright—perhaps as a ‘table or compilation’.

The two ways a database may be protected

Anything falling within the definition may be protected:

• as a copyright work if it satisfies the test of originality and qualifies for protection: s 3(1)(d) provides that a database as defined is a type of literary work.

• under the sui generis right provided it satisfies the ‘substantial investment’ test and qualifies for protection A database may be protected under either one or both: they protect different things.

Originality and existence of database copyright

entitled to copyright protection if: by reason of the selection or arrangement of the contents of the database, the database represents the author’s own intellectual creation.

The Directive also states that copyright protection in databases: shall not extend to their contents and shall be without prejudice to any rights subsisting in those contents themselves.

The UK High Court had held that the compilation of football league timetables involved intellectual creation, thus they are copyright databases following the EU test. (It had in earlier cases held that they satisfied the skill and labour test.)

However, in Football Dataco Ltd and others v Yahoo! [2012] the ECJ held that creating a football league fixture list amounted to the creation of the data in the database, as distinct from its selection or arrangement, and therefore any intellectual creation involved did not count.

The football leagues have not always succeeded before the UK courts:

Football Dataco Ltd and others v Sportradar GmbH

FACTS: Dataco collected data at football matches such as passes, tackles, etc in a database.

HELD: This activity may have involved skill, eg in sorting out who scored in a goalmouth scramble, but it did not involve any intellectual creation in its selection or arrangement on the part of the data gatherers. The match data collected were the content of the database, so not protected by database copyright in any event.

Infringement of database copyright

To infringe copyright in a database, what is taken must involve a substantial part of the intellectual creation involved in the selection or arrangement of the database (the originality).

Thus, by taking the match data Sportradar did not take any of this, even if some intellectual creation had gone into the selection or arrangement.

Defences to database copyright infringement

Section 50D provides that anyone with the right to use a database can do anything necessary to access and use the contents of the database, and this cannot be overridden by a contractual term.

The sui generis database right

This is created by the Copyright and Rights in Databases Regulations 1977, which implement the Directive.

Nature and infringement of the right

The same definition of a database as for copyright is used, so something in which the data are not independent cannot enjoy the right. Provided the definition is met, a database enjoys protection if (Art 7(1))

there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents... of that database.

The Directive protects against the extraction or re-utilisation of the whole or of a substantial part, evaluated qualitatively and/or quantitatively of the contents of... that database and states (Art 7(5)) that

The repeated and systematic extraction and/or re-utilisation of insubstantial parts of the contents of the database implying acts with conflict with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker of the database shall not be permitted.

In British Horseracing Board Ltd v William Hill Organisation Ltd [2005], the ECJ held that:

• the ‘substantial part’ requirement referred to the investment in the database (ie where part has been taken, the investment in that part must be substantial for the taking to infringe);

• investment referred to ‘resources used’ and, thus, can include human labour and the use of expensive capital assets, as well as the paying out of money;

• only investment related to the obtaining, verification, or presentation of the contents counted (to the existence of the right and to its infringement).

• The ECJ held that the lists of runners and riders for the races supervised by the BHB were created by it—and therefore the data were not obtained by it. It further held that any investment in the verification or presentation did not count as it was so connected with the creation of the data as to be inseparable from it.

• BHB thus failed in its attempt to enforce database right against betting companies that used its race data in their businesses.

A crucial matter in deciding whether database right exists is thus the question of whether the data is obtained or created.

The Court also held (obiter) that:

• extraction means taking data from the database and keeping copies of it;

• to infringe under the ‘systematic and repeated’ ground, the insubstantial parts had to be kept so that, over time, a copy of a substantial part of the contents of the database came into existence.

Defences to database right infringement and the ‘lawful user’

Often databases become available to users as a result of a contract or licence—or in return for being granted access to a database via a network.

The licensees in these cases are ‘lawful users’

Some databases are available just by browsing the internet, in which case everyone is a lawful user.

Lawful users of a database that has been made available to the public may not be prevented from extracting or re-utilizing insubstantial parts of it (Art 8/reg 19

As with copyright, the availability of a database via the internet does not imply freedom to do what you like with the data. Extracting or re-utilizing more than insubstantial parts will infringe.

The Directive also permits further defences in Art 9, which may extend to the use of substantial parts of a database and fair dealing.

The first owner of database right is the person who made the investment in the gathering, etc of the data (see ‘Nature and infringement of the right’ earlier).

The right lasts for 15 years following the date of completion of the database, but if it is made available to the public within that time, 15 years from the date of making available (in both cases, the periods start on 1 January following the relevant date). (article???)

Football Dataco Ltd and others v Yahoo! (C-604/10) [2012]

• The claimants claimed copyright in fixture lists for English and Scottish league football. The defendants needed to copy them to offer gambling products (‘football pools’) to their customers. The arrangement of a season’s matches was not done automatically; it took into account the complex interaction of a number of factors, which required skill and labour.

• Database copyright did not protect the contents of a database (in this case, the dates and teams of the games). For copyright to exist, therefore, there needed to be intellectual creation in the selection or arrangement of the data over and above what was involved in the process of fixing the match teams, dates, and times.

Moral rights

• rights for authors, which implement the provisions of the Berne Convention, Art 6 bis (‘the Berne rights’):

• to be identified as author of a copyright literary, dramatic or musical work or director of a film, provided it has first been asserted;

• not to have their copyright work subjected to derogatory treatment—that is, an alteration to the work that has an effect on the author’s honour or reputation.

The Berne rights protect the relationship between authors and their works other than rights to exploit them commercially (those are protected by copyright and known as the author’s ‘economic rights’). Thus, they cannot be assigned, even after the author has assigned or licensed their economic rights against the owner or licensee. The rights last as long as copyright does and pass to the author’s beneficiaries after the author’s death.

Different countries have implemented the Berne rights in different ways. The UK has implemented them in a way that favours the rights of the owner over those of the author, and this has been criticized.

Design rights

Civil law countries have implemented the rights in a way that gives authors much more power over their works.

This difference reflects the different theoretical basis of copyright protection in different countries. In civil law countries, where the authors’ rights approach holds sway, moral rights have existed for as long as copyright.

The skill and labour and ‘sweat of the brow’ approach in common law countries is less compatible with the idea of moral rights.

Article 6 bis of Berne says: (1) Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.

(The TRIPs Agreement, Art 9 requires compliance with the Berne Convention generally, but Art 6 bis is expressly excluded from this.)

You should consult your statute book for a full list of the copyright defences where the right to be attributed is also affected.

Pasterfield v Denham [1999] FSR 168

A design consultancy had prepared artwork for a brochure and assigned copyright to the client. The client later produced an updated version, altering the text surrounding the graphics and altering the graphics slightly, though the changes would only be noticeable on a close examination. The claim failed.

Held: The provisions of Art 6 bis of the Berne Convention. only alterations to the work itself can be treatments; additions, etc around the work (such as the text changes) are not treatments. For a treatment to be derogatory it must prejudice the honour or reputation of the author. Tidy was approved in relation to the test for prejudice to honour and reputation; it was the author’s reputation as an artist that mattered.

Design Rights

Designs law is a collection of legal rights that can protect the design and appearance of products.

Copyright in designs works just like copyrights.

• A copyright claim must be established.

• The defence may exist

Establishing a copyright claim

One manufacturer’s products being allegedly copied by another.

Let us say the products in question are plastic buckets.

Copyright does not exist in mass-produced plastic buckets:

• they are not original (they are copies of the moulds from which they are made)

• and they are not artistic works (they do not fit into any of the categories

Thus, a design drawing for a plastic bucket is an artistic work (a graphic work) but the thing it is a ‘design for’ is not (it is not possible to argue that a plastic bucket is a sculpture). Plastic bucket manufacturers cannot, therefore, rely on copyright in their design drawings to stop their products’ shapes being copied. An example of a type of product that would be protectable by copyright is a garden gnome or similar item: in ordinary language we would describe the end product as a ‘sculpture’ and the law.

Yet a potential copyright claim may be made out by identifying the original design document or model recording the design and proving a ‘chain of copying’.

British Leyland Motor Corp Ltd v Armstrong Patents Co Ltd [1986] AC 577 (HL)

FACTS: The defendants copied BL car exhaust pipes, which were made from original design drawings, as replacement spare parts.

HELD: This was copying the drawings (so there would be infringement if a substantial part was taken).

This case provided urgency to the reform of designs law!!! And now they have changed ??

Design and manufacturing processes and the chain of copying

Most modern designers carry out their work on computers using design software such as Autocad®.

This will produce documents that will be categorized as graphic works under s 4 and be protected ‘irrespective of artistic quality’.

That thing will be where any originality lies, so copyright will have to be asserted in it.

It is not certain such things will amount to artistic works (sculptures, works of artistic craftsmanship, or engravings).

If they do not, there can be no copyright claim even if the end-product is copied.

Always check in what form the original designer expressed their design and how it may be copied when considering a problem in this area. Make sure you consider copyright law fully (originality, taking of part, etc.)

Products on the borderline between art and design cause problems, as with copyright.

copyright can only be enforced for 25 years from the date on which articles first made to the design are marketed.

works that are created in three dimensions can be relevant here—that is, sculptures, works of artistic craftsmanship, and engravings. (Buildings are not articles, so architecture is outside the scope of the defence.)

The Court of Appeal in Lucasfilm [2009] had held that the intention of the creator of the ‘design document’ is what matters when considering what it is a ‘design for’

• Industrial design? Art 2(7) BC / Art 17 Design Dir. (98/71/EC)

Products on the borderline between art and design cause problems, as with copyright. The fact that the article is drawn first rather than made will mean that copyright exists in the drawings, but the status of the mass-produced product as art (or not) is still relevant when considering if the design is ‘for an artistic work’.

Design right Design right is an anti-copying right that protects the shapes of articles. To avoid confusion, it is now often referred to as ‘UK unregistered design right’.

The reference to ‘any part of an article’ means that design right protects ‘features of shape or configuration’ rather than the article itself.

Press, Tim. Intellectual Property Law Concentrate: Law Revision and Study Guide (Page 132). OUP Oxford. Kindle Edition.

Of course, asserting design right in a single feature will not work, as the feature will fail the originality test—see ‘Originality’. Design right comes into existence as soon as a design document recording the design is created or an article is made. Thus, unlike the position with copyright, it does not matter how a design was created—any form of recording the design will suffice.

If a combination of features passes the originality test, the design as a whole will only be commonplace if that combination is commonplace.

Similar to copyright, if the designer is an EU national or resident, or if articles were first marketed in the EU, the design qualifies. Different from copyright, the list of non-EU countries that count as qualifying countries is very small. No international convention covers design right and most other countries have no equivalent legislation. You should assume that unless there is a relevant connection to the EU, design right does not apply to a design.

Primary infringement

For primary infringement, design right is infringed by making, by a process of copying, articles ‘exactly or substantially to the design’. It is also infringed by making a ‘design document’, but only if that is done for the purposes of manufacture of such articles. In L Woolley Jewellers Ltd v A & A Jewellery Ltd [2002], the Court of Appeal held that the ‘substantial part’ test should not be applied to designs: copyright law on substantial taking flows from originality, and the originality requirement is modified in the case of design right: the statutory wording is different.

Secondary infringement

For secondary infringement, a person infringes by importing or possessing for commercial purposes, selling or letting for hire, or offering or exposing for sale or hire an article which they knew or had reason to believe is an infringing article (s 227). An ‘infringing article’ is defined in s 228 in similar terms as for copyright infringement—see Chapter 2 on secondary infringement.

Defences to primary and secondary infringement

The usual remedies are available—damages or an account of profits, injunctions, and delivery up or disposal of infringing articles.

There are defences of lack of knowledge similar to those that apply in relation to performers’ rights

• Primary infringers have a defence that they did not know, and had no reason to believe, that design right existed.

• There is an ‘innocent acquisition’ defence to an injunction for secondary infringers: where they lacked the knowledge required for secondary infringement when they acquired the articles, the only remedy against them is damages on a reasonable royalty basis.

Registered designs

provide a monopoly right that lasts 25 years for features of appearance of a product that are:

• • new;

• • give a different overall impression to the informed user;

• • are not excluded—there is a ‘dictated by technical function’ exclusion, the ‘must fit’ exclusion, and a morality exclusion.

In 2001, the Registered Designs Act 1949 (RDA) was amended to implement Directive 98/71/ EC on designs.

EU designs law talks of the ‘appearance of products’. The concept of an ‘article’ and the concepts of ‘shape and configuration’ used in copyright and design right are not relevant to registered designs. Revision tip Ignore all pre-2001 cases in relation to registered designs. Old concepts such as ‘eye appeal’ and ‘an article’ are not relevant to the new law.

The legal structure of designs law in Europe

This structure is the same as that which applies in the case of trade marks. It is explained by means of Figure 1.1 in Chapter 1. Because the substantive provisions of Council Regulation (EC) No 6/2002 on Community Designs and the Directive are identical, the law is only described once; it applies equally to EU registered designs and national registered designs.

Applying for a registered design

Before both the UK IPO and OHIM, the applicant must submit a form with a representation of the design, typically either a drawing or a photograph, and the fee. Unlike patents, where all the requirements for patentability are examined, registered designs are not examined for novelty or individual character. Designs are examined to establish that:

• the application is for a ‘design’—see ‘The definition of a design—scope and exclusions’;

• the design is not contrary to public policy or to accepted principles of morality;

• formal requirements are complied with. Apart from this, it is up to opponents to challenge the validity of designs either of their own volition or in response to allegations of infringement. Applicants must assess whether the likelihood of a particular design registration being sustainable and of any use justifies the expense of obtaining and maintaining a registration.

UK applications are also examined to ensure that they do not include features dictated by technical function or must fit exclusion!!

The definition of a design

—scope and exclusions Design means:

• features of the appearance of a product (with special rules concerning parts of products);

• not including features dictated by technical function; and

• not including features falling within the ‘must match’ exclusion.

Features of appearance of a product

‘design’ means

the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.

Registered designs can thus protect not only the shape of a product, but its surface decoration, or a combination of shape and surface decoration. They can also apply to designs that consist only of surface decoration—for example logos and symbols—provided they are applied to products (eg on packaging or labelling).

‘Product’ is defined as ‘any industrial or handicraft item’. Illustrations in the content of books and magazines, art posters, etc are presumably not ‘features of appearance of a product’. Logos, etc, which might adorn the cover of a book or magazine, would be.

The dividing line between content and product is not yet clear.

Not solely dictated by technical function

A right in a registered design shall not subsist in features of appearance of a product which are solely dictated by the product’s technical function.

The words ‘solely dictated by... technical function’ have been interpreted to accord with the purpose of the exclusion, which is to prevent designs law creating monopolies over technology (which, if not patentable, should be free to use).

Must-fit exclusion

See design directive

‘A right in a registered design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function. ‘

This is a more verbose version of the ‘must fit’ exclusion from design right protection and a similar approach will be taken by the UK courts pending an authoritative interpretation by OHIM or the ECJ. See ‘The “must fit” exclusion’ in relation to design right.

The ‘must fit’ exclusion Section 213(3) states that design right does not subsist in: (b) features of shape or configuration of an article which— (i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or...

The intention of this was quite specific: to prevent monopolies arising over replacement spare parts, as in BL v Armstrong (see ‘Establishing a copyright claim’). In Dyson, it was held that parts did not need to contact each other physically for the exclusion to apply. But the exclusion did not apply simply because articles needed to be placed in proximity to one another, even if there was not complete design freedom for the parts (because in use they must not get in each other’s way).

Designs can be registered for parts of products as well as whole products,

but subject to strict limitations.

‘complex product’: a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product;...

and the definition of

‘product’ includes ‘a component part of a complex product’.

Section 1B(8) goes on to say that a design for such a component part will only be considered

new and of individual character if the component remains visible in normal use of the whole product and to the extent that those visible parts are new and have individual character.

‘Normal use’ is defined as excluding maintenance or repair. Presumably, the non-visible features will be ignored when considering infringement of any design, so the effect of this is that when considering registrability or infringement of a design for a component part, only the visible parts are relevant. There is an exception to these limitations in s 1C(3): designs may be registered for components serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system. This would apply, for example, to items of furniture that can be connected to form larger units, but which may also be used alone.

Novelty

The key words of the statute are in RDA, s 1B(2):

a design is new if no identical design has been made available to the public before the relevant date.

a design has been made available to the public if it has been published, exhibited, used in trade or before that date. As with patents, novelty is judged on a worldwide basis.

For example, novelty case

Celaya Emparanza y Galdos (C-488/10) [2012] ECDR 17

HELD: Where two design applications cover competing designs, the second application will not have novelty and individual character if the first design is held to be valid.

In addition, the range of prior disclosures that do not count as prior art is much greater than is the case with patents.

They are set out in s 1B(6) and cover:

• designs disclosed in breach of a duty of confidence; and designs disclosed ‘as a result of an abuse in relation to the designer of any successor in title of his’ within 12 months prior to the application date;

• designs that could not reasonably have become known ‘in the normal course of business to persons carrying on business in the European Economic Area and specialising in the sector concerned’;

• grace period - disclosures made by the designer within 12 months prior to the application date, or disclosures in that time consequential upon such disclosures.

While the first bullet point mirrors a similar protection for inventors in the case of patents, the second two points have no analogous protection in the case of patents and are of great practical importance.

The second point effectively rules out of consideration the type of one-off disclosure which, if discovered, can invalidate a patent. D

The third point implements what is known as a ‘grace period’, during which the designer can publish without invalidating a later application. It means that designers can perform product and market testing without having to impose conditions of confidence, and have 12 months to decide if the product is worth applying for a registered design.

Individual character

This requirement can be equated with the need for an inventive step in the case of patents: novelty is not enough, there must be meaningful distance from the prior art.

a design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date.

In determining the extent to which a design has individual character, the degree of freedom of the author in creating the design shall be taken into consideration.

In Grupo Promer Mon Graphic SA v OHIM [2012], the ECJ held that the ‘informed user’ was a customer for the products who was ‘interested in the products concerned, [and] showed a relatively high degree of attention when using them’. Their knowledge lay somewhere between the average customer and a technical expert. The ECJ has also had to deal with competing design applications:

The ‘degree of freedom’ point combines with the idea of the informed user to mean that small differences can be important.

Expert evidence might help in deciding design freedom, but not when deciding overall impression, which the court could judge ‘with its own eyes’.

Samsung Electronics (UK) v Apple Inc [2012], [2013] FSR 9

FACTS: Two designs of tablet computer were necessarily similar because of the nature of the product. HELD: S’s product gave a different overall impression because the accumulation of details gave a different impression from A’s clean, minimal design.

Duration

(Regulation 6/2002, Art 14). Designs may be renewed in periods of five years, up to a maximum duration of 25 years from the date of application for registration.

There are no limitations in terms of nationality, residence, etc on who can apply, as required by the equal treatment provisions of the Paris Convention, Art 2.

Designs must be clearly different

Directive and Regulation use the phrase ‘clearly different’ in their recitals when talking about individual character, suggesting that a greater distance is required for the purposes of registration. The legal test that is used for individual character can be used when comparing the alleged infringement and the registered design for the purposes of infringement.

You can refer to the cases on validity and on infringement in relation to the ‘individual character’ test.

The precise factual questions are different;

—for validity the design to be registered is compared to earlier designs,

• for infringement the allegedly infringing design is compared to the design as registered.

****Be precise in what you are comparing with what when considering overall impression, and explain that the same test applies for infringement and validity of designs. As with patent questions, formulate the question for the ‘informed user’ precisely.****

There is an ‘exhaustion of rights’ provision

This is, thus, a monopoly right as the question of infringement is objective and does not require any intention or copying on the part of the infringer.

Defences

There are defences for:

• things done privately and for purposes that are not commercial;

• things done for experimental purposes;

• acts of reproduction for teaching purposes or for the purposes of making citations. Mention must be made of the source of the design, and the act must be compatible with fair trade practice and must not unduly prejudice the normal exploitation of the design.

Litigation, challenges to validity, and threats

In relation to EU registered designs, the Regulation allows Member States to designate some of their courts as ‘Community Design Courts’ of first instance, and courts of appeal from them.

An EU registered design can also be challenged by applying to OHIM. In all cases, the grounds for challenge are those described earlier for a design to be registered, including that the design includes matter that is excluded by the technical function or ‘must fit’ exclusions (s 11ZA). In addition, designs can be challenged: • by the owner of a copyright where the design is an unauthorized use of the work; • by the owner of a ‘distinctive sign’ that has rights to prevent the use of the design (eg by rights in passing-off or a registered trade mark); • by someone claiming to be the proprietor of the design as against the registered proprietor. The first two points are important: prior intellectual property rights that conflict with the registered designs can be used to oppose the registration. Applicants must ensure that they obtain copyright, or sufficient rights under copyright, in the design before they apply.

Remedies

The usual remedies are available, including damages, injunctions, and delivery-up of infringing articles (RDA, ss 24A–24D, Community Design Regulations 2005, regs 1A–1D).

The Community unregistered right

The Community unregistered right is created by the Regulation. The right arises automatically and the conditions necessary for it to arise are the same as for a registered design to be valid, with the following differences:

• novelty and individual character are judged as at the first date on which the design is made available to the public (defined in Art 11(2));

• the right is an anti-copying right, not a monopoly right;

• the right lasts three years from the date the design is first made available to the public within the EU. This right will not provide sufficient protection for many designs, but it will provide protection while a registered design is being applied for and may be sufficient in the case of shortlived products.

Parallel rights

rights can exist in parallel. They can be both protected in copyright and design right!! In general, if the conditions for a registered design or the Community unregistered right are met just by the shape of a design.

Design rights: which doctrinal concepts apply?

Registered designs

Grupo Promer Mon Graphic SA v OHIM [2012] FSR 5 (ECJ)

The designs were ‘pogs’ or ‘rappers’, simple discs used to play a game. The designs included the shape of the edge of the disc and rings formed on the disc. The discs were used as promotional gifts with other products and played with by children.

Held: The ‘informed user’ was a customer for the products who ‘knew the various designs which existed in the sector concerned, possessed a certain degree of knowledge with regard to the features which those designs normally included and, being interested in the products concerned, showed a relatively high degree of attention when using them’. Their knowledge lay somewhere between the average customer and a technical expert. In this case, the informed user would include both children and marketing executives concerned with promotional gifts.

Patents

Patents are granted for new technological developments (‘inventions’). They are not granted for developments in the creative or non-technological arts (so a new and inventive play or book is not patentable).

Areas on the borderline between art and technology, such as computer programming and business methods, are the subject of difficulty and controversy.

For a patent to be granted in Europe for an invention, the invention must be:

• ● in an area of technology and not fall within an excluded category;

• ● new, in the sense of not having been previously made available to the public anywhere in the world;

• ● contain an inventive step—that is, it must not have been obvious to a skilled person working in the same field of technology;

• ● explained in the published patent so that it can be put into practice by others;

• ● described in a claim(s) in the published patent, which set the technological scope of the monopoly;

• ● not be contrary to public order or morality. Patents last for 20 years from application, but may be revoked at any time on the ground that the invention does not meet the requirements for patentability. Manufacturing or dealing in products, or carrying out processes, as described in the patent’s claims infringes the patent.

Unlike copyright, where both economic and individual rights arguments are important, the main theoretical reasons for the grant of patents are economic: if inventors were not granted patents, they would attempt to keep their technology to themselves.

Unlike copyright, patents protect ideas—the combination of technological ideas contained in the claims. The term and scope of the rights granted are the same for all patents.

The skilled person

Questions of fact relevant to patent law often require an understanding of the technology involved by a ‘skilled person’ i.e:

• is involved in the field of technology of the invention;

• may be a team of people if more than one field is involved;

• is aware of all material that is in the public domain in that field and ‘common general knowledge’ relating to the field; but

• has no inventive capacity—so will not, for example, combine ideas from two different published sources unless they cross-refer.

In practice, the courts rely on expert opinion evidence to establish what the skilled person would know and be capable of. Looking for extra marks? As a lawyer, your opinion on technological matters will be unreliable. Try to frame your answers in terms of a question—making use of any detailed facts you have been given and involving the skilled person—that requires an answer—even if you do go on to offer an opinion about it yourself. This chapter explains the precise questions that are relevant to each legal area.

The European Patent Convention

Thirty-eight European states are currently signatories to the EPC, including all the EU states. The Convention:

• sets out a system of substantive patent law (law about the granting and infringement of patents);

•sets up the European Patent Office (EPO), which is located in Munich, Germany, and which grants patents in accordance with that law;

• requires states to give effect to the patents so granted as if they were national patents. The key features of the system are as follows:

• States may still grant patents through their national patent offices. Inventors can choose whether to obtain protection in a particular state by making an application to the patent office for that state or via an application to the EPO.

• When the EPO grants a patent, it takes effect as a bundle of national patents in those states that the applicant designated when they applied. An inventor cannot apply for a national patent and a European patent designating that state for the same invention.

• After the EPO grants a patent there is a nine-month period during which anyone may oppose the grant of the patent by applying to the EPO. If this opposition is successful, all the national patents in the bundle originally granted are revoked.

• Aside from such opposition, the EPO loses all jurisdiction over a patent once it is granted. The patents in the bundle take effect in all respects as if they are national patents and so enforcement litigation, assignments and licences, and revocation proceedings take effect according to local procedures, though the provision of the Convention must apply, through national implementing laws, to issues of validity and infringement. The system is an imperfect compromise that arises from the reluctance of the states

*****NOTE:weaknesses

when viewed from an EU perspective as it does not fully reflect a free internal market in goods. A product may be held to infringe the local part of a European patent in one state, but the same product may be held not to infringe in another. One part of a European patent may be held invalid by a state, while a different state may find that its part of the patent is valid. The cost and expense of obtaining and enforcing a patent throughout the EU is greater than it would be for a single state. This has led to calls and action for reform****

Although national courts are not bound by the case-law of the TBAs and EBA, in practice they try to follow it. They also take notice of decisions from the courts and patent offices of other Member States with the aim of legal harmony. There is no single binding court of appeal on issues of interpretation of the Convention. The interpretation of the Convention can, and does in some areas, diverge between states. This is another criticism of the system.

*****NOTE: The patent system in Europe is different from the systems for the two other registered rights—trade marks and designs—which are harmonized by EU law and where the European granting office is an EU institution. Make sure you can separate the two systems*****

International Conventions

The Paris Convention deals with the priority period and equal treatment of nationals in applying for patents. The Patent Cooperation Treaty provides a mechanism for applying for patents with a single international application. The only worldwide treaty that provides for international harmonization (beyond Europe) of substantive patent law is the TRIPs Agreement. This requires states to grant patents where the basic elements of patentability, as set out in ‘Key facts’, are met. It requires patents to be granted ‘in all areas of technology’ and does not permit any exclusions (except on morality grounds).

Structure of a patent

Throughout the world, patents (the public documents that formally describe the right) contain the same basic elements:

• a section containing details of the patent—when it was filed, any priority claims, the inventor, the applicant, and so on;

• a description of the invention, which teaches the skilled person how to put the invention into effect (how to make a product or implement a process);

• optional drawings or tables, which can contribute to the description; and

• one or more claims that set out the precise technological scope of the monopoly granted by the patent.

Fees are payable at various stages in the process, and upon grant and subsequently to renew the patent. The inventor, if they apply for a search promptly, should be able to withdraw their application before the deadline for it to be published if the search report is unfavourable. There may be useful trade secrets in the application, so there is no point in allowing it to be published if a patent is unlikely to result.

EPO application for international patents procedure

The international search report is forwarded to the national patent offices of the designated countries, which rely on the international search when carrying out their own examination according to their own procedures and patent laws. Where a high level of international coverage is required, this procedure saves cost as the national patent offices charge lower fees for the final stage of the procedure.

Patentable subject matter

Article 52 of the EPC states:

(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

(d) presentations of information.

There must be ‘an invention’

courts and the EPO have refused a patent on the ground that it is not an invention.

‘Capable of industrial application’

This requirement overlaps with the exclusion of discoveries (discussed next). Industrial application means that the claimed invention can be carried out in any industry; that is, you can make a product that you can sell or hire, or carry out a service in return for money. (

The excluded categories

The EPO has developed a general principle that patents should only be granted for technical things. Yet not anymore, (Art 52 are examples of nontechnical things.)

Until it changed its approach in the case

PBS Partnership/controlling pension benefits system [2002] (‘Pensions’),

the EPO developed the doctrine of the ‘contribution to the art’ in interpreting Art 52: inventions were excluded if the contribution to the art did not lie in a technical area. This required looking beyond how the claim was drafted and finding out what the invention actually made available that was not available before.

Koch & Sterzel/X-ray apparatus (T26/86) [1988] EPOR 72

FACTS: A new x-ray machine only differed from prior machines in the software that it ran, but it resulted in a better functioning x-ray machine.

HELD: The new machine made a technical contribution to the art, so it was not excluded.

In Pensions, the EPO changed doctrine decisively to what has become known as the ‘any hardware’ approach.

The TBA reinterpreted Art 52 and held that, as long as the claim was drafted to cover an item of hardware or a process using it, then the invention was not excluded.

However, the EPO went on to confirm that when assessing whether there was novelty and an inventive step, only technical inventiveness counted, so if the development was confined to the field of computer programming, there would be no inventive step. The effect is that the investigation into technical content takes place at a different stage of the examination process (when considering novelty and obviousness, not when considering patentable subject matter).

In UK, they do not agree with ‘any hardware approach’

Aerotel v Telco Holdings Ltd [2006] EWCA Civ 1371, [2007] RPC 7

The correct approach requires:

• properly construing the claim;

• identifying the actual contribution;

• asking whether it falls solely within the excluded subject matter; and

• checking whether the actual or alleged contribution is in fact technical in nature.

The UK courts do not ignore developments in excluded areas when considering novelty and obviousness and now EU courts follow the pensions approach too!!

Looking for extra marks ?You should apply the correct test (UK or EPO) in this area or consider both if the forum is unclear. But note that the actual outcome of any particular case will probably be the same. The difference between the approaches lies in when, and precisely how, during the patent examination process prior art is considered and technical content is looked for—inventions that lack technical content will be refused whatever test is used. The ‘any hardware’ approach does not mean ‘anything is patentable’!

In Symbian Ltd v Comptroller General of Patents [2008], the Court of Appeal applied the ‘contribution approach’ and held that an invention in the field of computer technology contained a technical contribution when the invention resulted in a ‘new type of computer’— even if the invention was essentially implemented solely in software.

The general morality exclusion

Article 53(a) of the EPC state that patents shall not be granted for inventions that ‘are contrary to public order or morality’.

Novelty

Basic principles

To be new, an invention must not form ‘part of the state of the art’ (PA 1977, s 4 and EPC, Art 54). The art is defined as anything made available to the public before the priority date of the patent.

Events that make information public

A published document, the availability for sale of a product, a demonstration of a machine or process—anything which imparts information becomes part of the state of the art. Separate communications can only be combined (known as ‘mosaicing’) if they refer to each other. Clearly the publication of a patent application or academic article makes information public. The law on this is strict; what matters is that people could access the information.

Novelty of products, processes, and uses A new product is, by definition, novel. But a patent can be obtained for a new process, and that process may consist of a new way of using or making a known product.

pharmaceutical use is discovered for an already known chemical composition, a claim to the composition ‘when used’ in the newly discovered treatment will be new.

Applications forming part of the state of the art

when they are filed PA 1977, s 2(3) provides that where a first patent application (A) is published (anywhere in the world) on or after the priority date of a second application (B), but the priority date of application A is before the priority date of application B, material in application A forms part of the state of the art for application

This interpretation is necessary to avoid ‘double patenting’, where two applications filed at or around the same time are both granted and their claims overlap—an undesirable result.

Inventive step/non-obviousness

To be non-obvious, an invention must differ from the prior art in more than minor details. Obviousness is judged from the point of view of the skilled person: would the invention have been obvious to them at the priority date?

The EPO has developed the ‘problem-and-solution approach’ or PAS:

• identifying the closest or most relevant piece of prior art;

• determining the technical problem that the claimed invention addresses and successfully solves; and examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.

The central question is ‘Was the invention obvious to the skilled person?’.

Infringement of patents

For a patent to be infringed, it is necessary that: • a product or process falls within the scope of a claim of a patent;

• a person commits an infringing act within the jurisdiction in relation to that product or process. The manufacture of the product or the carrying-on of the process does not necessarily have to take place within the jurisdiction—see ‘Infringing acts’.

Scope of claims and claim interpretation

Claim interpretation under the EPC

Patent claims define the invention by describing a number of features of a product or process. To infringe a claim, a product or process must contain every element. Something containing five out of six elements will not infringe—it may be that things containing those five elements were well known at the time of the invention and it is the addition of the sixth that was new.

Approaches to claim interpretation lie between two extremes: strict reliance on the claim wording; and the interpretation of the scope of the monopoly on the basis of the specification as a whole, with the claim wording being a guide.

EPC, Art 69 deals with infringement, and its protocol says that the correct approach lies somewhere in between the two: the claims are important but should be interpreted in a way that takes into account the patent as a whole.

The EPO does not deal with infringement issues, so there are no decisions from it that help to interpret Art 69.

Accordingly, approaches to claim interpretation remained diverse within Europe, with each country to an extent continuing with its pre-EPC doctrine.

There were two approaches, exemplified by the UK and Germany:

• The UK approach started from the basis of the wording of the claims and then sought to interpret that (known as ‘purposive construction’).

• The German approach considered the patent as a whole when considering its scope, which would include things that were technically equivalent to the invention set out in the patent (the ‘doctrine of equivalents’).

When the EPC 2000 was drafted, the protocol to Art 69 was amended by adding the following article:

Article 2 Equivalents -- For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.

This requires the consideration of technical equivalents at the level of the elements in a claim: to infringe, something must contain all the elements of the claim, but technically equivalent features may be considered as providing those elements.

The overriding task is to provide a fair measure of protection to the patentee, while providing certainty for others reading the patent and trying not to infringe it, in accordance with Art 69 and its protocol.

Defences to patent infringement

A patent is only infringed if the infringing activity is done without the consent of the proprietor. So sub-contractors acting on the precise instructions of the patent owner have that permission. Consent can also be implied, for example when a machine that carries out an infringing process is sold by the proprietor of the process patent.

Exploitation, dealings, and remedies A patent application is an item of property that can be assigned and licensed, as can a patent once granted. Patents can also be mortgaged. Before a patent is applied for, rights in a prospective invention can be dealt with as trade secrets.

PBS Partnership/ controlling pension benefits system (T931/95) [2002] EPOR 52 The patent applied for contained various claims relating to a method of computing pensions benefits using a computer, and apparatus for implementing it.

The method could be implemented by programming a computer using known techniques and the application did not teach any specific programming technique. The claims were not excluded as they involved a piece of hardware (a computer), which is of a technical nature, or the use of it. They did not, therefore, cover excluded matter as such. Any novelty and inventive step in the claims was limited to the fields of pensions calculation and computer programming. These areas did not involve any technical input, so inventiveness in them did not count towards inventive step. The claims were refused for lack of inventive step.

Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066, [2009] RPC 1

The invention concerned a particular way of organizing the structure of ‘library’ programs. These are files containing computer code that can be used by unrelated programs running on the same computer. The performance and usefulness of the computer depends on this structure—the Symbian structure was claimed to avoid the need to reinstall dependent applications when the library was updated.

The ‘contribution approach’ set out in Aerotel was applied. In this case, the contribution to the art was a computer system that functioned in a particular way. It was not simply a program, as the effectiveness of the method depended on the technical characteristics of the computer on which the programs ran (eg the way memory is addressed by the processor). Note: the result would almost certainly have been the same if the ‘any hardware’ approach was applied, as the inventive step would not be confined to the nontechnical arts of programming, but would involve considerations of computer technology.

Passing-off and Goodwill

The law of passing-off derives from the common law action for deceit; that is, the civil action for fraudulent misrepresentation. But passing-off now differs significantly from the law of deceit in that no intention to cause loss is required, and the misrepresentation can be completely innocent.

Passing-off is a common law cause of action, which protects traders against misrepresentations made by their competitors that confuse customers as to the source of goods and services. The typical passing-off scenario is where a first trader, by the use of a brand name, logo, slogan, or packaging, deceives customers into thinking that their products or services are associated with a second trader. If the second trader can prove that, and also prove loss, then they have a cause of action in passing-off. It must be proved that customer confusion has occurred, and this can be difficult.

● Registered trade marks provide traders with the opportunity to gain protection for their brand names and other brand identifiers, such as logos, packaging details, and slogans, by registering them as trade marks.

● While there are strict requirements for what can be registered as a trade mark, if a trader is able to register a mark, they will achieve better protection than from passing-off, as any use by another trader of the mark on the goods for which it is registered will infringe the trade mark and can be stopped.

● For this reason, traders should register trade marks wherever they can, rather than relying on passing-off to protect their brand identity.

to implement Directive 89/104/EEC, known as the Trade Marks Directive. Registered trade marks can be obtained from OHIM pursuant to Regulation 207/2009 (‘the Trade Marks Regulation’). This is the same legal structure as for designs:

Also, as with the other rights, a balance must be struck. If existing businesses were able to exclude others from too large an area of operation (in terms both of products and brand identifiers), that would constitute a barrier to entry into the market for competitors. The quality of information for consumers would be restricted, as it would become difficult to find out about new products.

The basic elements of the tort

The modern statement of the law is set out in the House of Lords case of Reckitt & Colman v Borden [1990]. This case set out the basic elements of the cause of action: • the claimant has a protectable goodwill; • the defendant makes a misrepresentation that is likely to deceive; • that misrepresentation causes damage to the claimant’s goodwill.

most passing-off cases, the misrepresentation is that the defendant’s products are either made by the claimant, or that they are in some way associated with the claimant, for example by licensing or quality control

What is goodwill?

Many types of activity other than traditional businesses can acquire goodwill—including charitable organizations and campaigning/political organizations: trading activities are not needed.

Where is the goodwill located? Passing-off is a tort that protects intangible property (goodwill). The English and Welsh courts will not accept passing-off claims concerning goodwill located outside the jurisdiction. Defining how connected to the jurisdiction activities need to be for goodwill to be located here is problematic. The basic rule is that there must be ‘customers in the jurisdiction’. This means in practice that:

Article 6 bis of the Paris Convention and TMA, s 56 have curtailed the opportunities for this—see ‘Blocking powers of holders of other rights’. The misrepresentation Ways of making a misrepresentation The most common type of alleged passing-off is the use of a word or symbol on the packaging of a product, or in promotional or advertising material for a product or service. For a claimant to show that this amounts to a false representation they must show that the word or symbol they use is associated in the minds of the public with the claimant, or with their products or services. Banal or descriptive words, phrases, or symbols are considered closely by the courts.

Misrepresentations can be implied; what matters is the perception by customers: Associated Newspapers v Insert Media [1991] 1 WLR 571 (CA) FACTS: Advertising ‘flyers’ were inserted in newspapers for delivery by a marketing company without the consent of the newspaper publisher. HELD: This amounted to a misrepresentation that the publisher had chosen those flyers as being suitable for passing on to its readers. A representation about what? In the typical scenario, the representation concerns the source of the products or services, but misrepresentations can also involve: • association with the claimant by means of licensing or endorsement, quality, or editorial control, as in Associated Newspapers (this can include character merchandizing and celebrity endorsement activities);

• the source of the defendant’s products (so-called ‘reverse passing-off’—see later in the chapter);

• the quality of ‘genuine’ products.

Was the misrepresentation effective (did it confuse people)?

A trader may use another’s sign, or even state a direct connection with another trader, but yet not be passing-off because the misrepresentation does not actually fool anyone. All the circumstances in which the defendant markets and sells its products, or delivers its services, must be taken into account in deciding whether people are actually misled. The scope of the claimant’s reputation and the similarity of the signs used by the parties are often the major factors.

Loss must be caused (damage to goodwill)

The most obvious type of loss that will be caused if an effective misrepresentation is proved will be lost sales for the claimant, as some potential customers will buy goods or services from the defendant by mistake. This is unlikely where the defendant’s products do not compete directly with the claimant’s. But other types of loss are recognized—the claimant does not have to actually quantify any loss provided there is some damage to goodwill.

Lego v Lemelstrich [1983] FSR 155

FACTS: D made garden hose fittings under the same name as the well-known Danish toy company. HELD: There was confusion despite the different product categories.

Defence

If a defendant can show that they have a goodwill that is associated in the minds of their customers with a sign or name, then they will not be passing-off by using that name, even if the claimant can make out all the elements of the cause of action by reason of its goodwill.

Registered trade marks

The nature of trade marks and trade mark applications For most purposes, the law relating to national trade marks and EU marks does not differ.

The powers of a trade mark

Like other registered rights, trade marks have two distinct powers:

• the power to block registrations of later marks (defensive);

• the power to prevent use by others of the mark (offensive). In many respects, similar rules apply to both the defensive and offensive powers.

Key concept—the consumer for the type of goods or services in question

Just as patents have the skilled person and registered designs have the informed user, in trade marks law the important person is the consumer. Questions such as the distinctiveness of a mark, or whether two marks are so similar as to cause confusion, are assessed with reference to the consumer. Trade mark applications A trade mark registration contains (in addition to administrative details such as the name of the proprietor and so on) two vital pieces of information:

• the mark itself;

• a description of the goods covered by the registration. The absolute rights given by the registration only cover that mark when used in relation to those goods (though rights extend outside this core if certain facts are demonstrated). A trade mark applicant must either use or intend to use the mark in relation to the goods. It is not possible to dream up a good brand name, register it, and thereby acquire rights. If you do not trade or intend to, you cannot have trade mark rights.

The law on registrability is framed in terms of various grounds of objection that can be raised to trade mark applications. These are summarized in Figure 9.1 and discussed under the following headings. Applications are examined against the absolute grounds of objection but not the relative ones—it is up to holders of prior rights to object to applications, or challenge registered marks, on those grounds.

The basic definition of a trade mark

—’a sign capable of graphical representation’ Section 1 (Art 1) gives the basic definition of a trade mark as follows: (1) In this Act a ‘trade mark’ means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

Word marks and other marks

The concept of a ‘word mark’ is important in trade mark law and practice. A registration can cover a word or phrase (a word mark) or a word or phrase when written in a particular way (which would be a device mark). A word mark for ‘Oxford University Press’ would be infringed by, and could block the registration of, any use of that phrase, however the writing was styled. In contrast, a device mark incorporating those words would not necessarily be infringed by a different device containing them.

Looking for extra marks? When considering the possibilities for registering trade marks in relation to a particular proposed venture, always consider the possibility of registering word marks for any words or slogans used and, separately, for any devices or logos incorporating them, packaging design and shape, and so on. Often a device mark can be registered when a word mark cannot.

✓ Absolute grounds of objection

Absolute grounds of objection take into consideration all the circumstances of the application, but do not include a consideration of the prior rights of any individual. Section 3(1)(a) (Art 3(1)(a)) states that applications can be objected to if they are for ‘signs which do not satisfy the requirements of section 1(1)’—that is the requirements for a sign, capable of distinguishing and capable of graphical representation.

Philips v Remington [2003] RPC 2 (ECJ) HELD: It is not necessary to consider the meaning of ‘capable of distinguishing’ as in practice the issue of the actual distinctive character of a mark will be considered under s 3(1)(b)/Art 3(1)(b) (marks lacking distinctive character: see ‘Devoid of distinctive character’).

Not capable of graphical representation

This is the main factor that causes problems under this section. The application form for a trade mark contains a 10cm x 10cm box within which the representation of the mark must be put. Where the mark applied for is a word mark (see ‘Word marks and other marks’) the word is simply typed in capitals in the box. For device marks, a copy of the device is put there. For shape marks, a relief drawing or photograph of the article is used. In the case of shape marks, some applicants register a series of marks each with a different view of the product. Colours, sounds, smells, and tastes clearly present particular problems when it comes to completing the form. The leading case in relation to graphical representation is Ralf Sieckmann v Deutsches Patent- und Markenamt [2003]. Here the ECJ held that a trade mark: may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

Colour and combination of colour mark

s Here we are talking about marks where the applicant is seeking to assert exclusive rights over the use of a colour or colour combination, however it may be used. The following considerations do not apply to device marks that make use of colour, or marks consisting of a shape in a particular colour. Libertel Groep BV v Benelux-Merkenbureau (C-104/01) [2004] FSR 4 FACTS: An application for the colour orange by the telecommunications company. HELD: A recognized colour-matching system such as Pantone® may be used to define colours, but in some cases a combination of a sample of the colour and a verbal description could be sufficient. Single-colour marks are rare because of the difficulty of establishing distinctiveness in a single colour—see ‘The distinctiveness-based objections’.

Sounds

Shield Mark BV v Kist (C-283/01) [2004] RPC 17 (ECJ) FACTS: A mark consisting of the sound of a cock crow was described by a verbal description and an onomatopoeic reference (‘Kukelekuuuuu’, as is used in Belgium). HELD: This did not meet the Sieckmann test.

A tune written in musical notation was acceptable, but a sequence of notes without any indication of their duration, or reference to the name of the tune, was not.

Smells and flavours—known as ‘olfactory marks’

In its early days OHIM allowed an application for ‘the smell of new-mown grass’ in respect of ‘tennis balls’. Since that case, OHIM has changed its practice and this was endorsed by the ECJ in Sieckmann. There is no way adequately to represent a smell or taste, so they cannot be registered (the tennis balls registration has been allowed to lapse). Look at LANCOMME CASE !!!! YES THEY CAN

Looking for extra marks? This situation may change, and there is international variation regarding ‘non-traditional’ trade marks such as holograms or those involving movement:

The distinctiveness-based objections

Section 3 (Art 1) is as follows:

(1) The following shall not be registered— ... (b) trade marks which are devoid of any distinctive character, (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

Marks falling within (c) and (d) are assumed not to be distinctive (because of their descriptive nature), but they can nevertheless be registered if distinctiveness is proved.

Marks that do not fall within (c) or (d) will only be objected to under (b) if there is a reason to doubt their distinctive character.

In practice, this means that invented words and logos are unlikely to be objected to, but that unusual marks such as shapes and sounds often are, and distinctiveness has to be demonstrated.

Devoid of distinctive character (s 3(1)(b))

Distinctive character is judged through the eyes of the consumer.

Shape-of-product marks are often objected to on this ground.

The ECJ has held in a number of cases that the shape of a product, even if it is unique to a particular brand, is not distinctive:

Mag Instrument Inc v OHIM (C-136/02 P) [2005] ETMR 46

HELD: The shape of LED torches made by a market leader was not distinctive of the products of that manufacturer because customers would not think of it as a brand identifier.

Descriptive marks (s 3(1)(c)) The ECJ has developed the ‘free to use’ doctrine here. Where a mark might legitimately be used by a trader in the goods or services in question to describe them, then they should be free to do so, meaning that this objection should be raised in relation to applications for that mark.

Koninklijke KPN Nederland NV v Benelux-Merkenbureau (C-363/99)[2004]

FACTS: The mark applied for was ‘Postkantor’; the Dutch for ‘post office’ is ‘post kantor’.

HELD: Where a mark consisted entirely of descriptive words, it was descriptive regardless of whether the words were put together in an unusual way. It was not relevant that the mark as a whole was not the most usual way such products might be described if they could be described that way.

Customary marks (s 3(1)(d))

It is difficult to distinguish customary from descriptive marks

Distinctiveness acquired by use (s 3(1) proviso)

Windsurfing Chiemsee [1999] illustrates how the ‘free to use’ doctrine relates to distinctiveness acquired by use.

The ECJ firmly rejected arguments that the ‘free to use’ doctrine should prevail over acquired distinctiveness—if distinctiveness can be shown, then the mark is no longer free to use.

Thus, where a mark is applied for on the basis of intended rather than actual use, if a distinctiveness objection is raised, then the application must fail and the applicant must wait until distinctiveness has developed through use, and then apply again.

The shape objections

(s 3(2)/Art 3.1(e)) Shape objections are set out in s 3(2): (2) A sign shall not be registered as a trade mark if it consists exclusively of— (a) the shape which results from the nature of the goods themselves, (b) the shape of goods which is necessary to obtain a technical result, or (c) the shape which gives substantial value to the goods.

The ‘nature of the goods’ exclusion would, for example, prevent a mark in the shape of a tennis racket being registered for tennis rackets.

The ‘technical function’ objection is different from the concept of ‘dictated solely by function’ seen with registered designs: be careful not to get the two mixed up. This is explained in the Lego Juris case.

Lego Juris A/S v OHIM (C-48/09 P) [2010]

FACTS: The Danish toy manufacturer applied for registration of the shape of its toy bricks, which included features for interconnecting them.

HELD: For a shape to fall within this ground of objection:

• all the essential elements of the mark must fulfil a technical function (the presence of nonessential non-technical elements did not matter);

• it did not matter that the technical function could be achieved by a different shape;

• the essential elements of a mark are its most important elements—and this must be decided on a case-by-case basis (the Court was unwilling to prescribe detailed rules for this).

• The Lego bricks fell within the ground, and the shape objections could not be overcome by acquired distinctiveness. Lego confirmed and developed the doctrine from Philips (discussed in ‘Absolute grounds of objection’). The Court was mindful that trade mark rights may last forever, and that as a matter of policy they should not be used to extend patent protection. The ‘substantial value’ ground is less often raised. Shapes with a strong aesthetic element are likely to be excluded on this ground.

Many of the ‘shape’ cases also involve distinctiveness issues. Make sure you separate the issues— whenever considering the registrability of an unusual mark, such as the shape of goods, consider distinctiveness. Most unusual mark applications fail on this ground.

Other objections

By s 3(3), marks cannot be registered if they are deceptive or contrary to public policy or accepted principles of morality.

Deceptiveness covers descriptive marks where the description is inaccurate. For example, the word ‘APPLE’ cannot be registered for pears or other fruit. It would, of course, face a descriptive objection if restricted to apples, but is registered for computer equipment (as computers have nothing to do with fruit). OHIM have refused some marks on the morality ground, including ‘JESUS’ for clothing

Relative grounds of objection

Blocking powers of prior registered marks The Directive, Act, and Regulation all define the blocking power of a trade mark and the rights it gives its owner to prevent use of the mark in essentially identical terms. These powers can be represented as spheres of widening power.

For the purposes of blocking, an earlier mark includes an earlier national trade mark registration or Community trade mark.

Absolute power (same mark, same goods) It would be inconsistent with the core concepts of a trade mark if one mark could be registered by two different proprietors for the same goods. So s 5(1) says not allowed. Two marks are considered ‘identical’ if the differences are so insignificant that they will go unnoticed by the average consumer

Further blocking power where there is confusion (mark and/or goods not the same)

In addition, the Directive states in Art 4(1): (b) if there exists a likelihood of confusion on the part of the public, the likelihood of confusion includes the likelihood of association with the earlier trade mark.

set out in the (now 11th) recital to the Directive, which are

‘in particular... the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified’.

The factors to be taken into account include:

• the visual, aural, or conceptual similarity of the marks bearing in mind, in particular, their distinctive and dominant components;

• the distinctiveness of the earlier mark

• the more distinctive the earlier mark, the more the likelihood of confusion;

• the earlier mark can be distinctive per se or because of the reputation it enjoys with the public; but

• the mere fact that the public might associate the marks with each other as a result of their analogous semantic content is not in itself a ground for concluding that there is a likelihood of confusion.

Extra blocking powers of marks with a reputation

Article 4(4) of the Directive states that:

4. Any Member State may, in addition, provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:

a) the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Section 5(3) in fact involves two blocking powers, one involving unfair advantage and one detriment—and the case-law deals with these separately. However, all pose the questions of what ‘reputation’ and ‘similar’ mean.

The nature of unfair advantage and detriment has been extensively dealt with in recent cases. Unfair advantage without due cause In L’Oreal SA v Bellure NV [2009], the ECJ held that any use that took advantage and was without due cause was unfair, and further held that use of a similar mark on packaging in a ‘look-alike’ product did not have a due cause. The Court of Appeal was not happy with this judgment when the case returned to it, but could do little about it. As for advantage, in L’Oreal the High Court had found as a fact that Bellure could sell products in the ‘look-alike’ packaging at a higher profit margin than plainly packaged products, which was a clear advantage. Detriment to the distinctive character or repute without due cause L’Oreal does not place many barriers in the way of enforcing a trade mark under the unfair advantage heading. The ECJ has not been so lenient when considering detriment.

detriment means that the ‘economic behaviour’ of consumers of the owner’s products is affected—that means that they must be prepared to pay less for products, or buy fewer of them. It will be difficult to prove a risk of this in many cases where the use of the mark by the other party is not clearly going to undermine the brand, though it may be considered a bit cheeky.

Rights of trade mark owners and defences

The Directive, Regulation, and Act talk in terms of the rights conferred by a trade mark.

Under Art 5(1) and (2) (s 10(1)–(3)), the trade mark proprietor is given powers to stop third parties from using the mark or a similar one that are phrased in identical language to the three blocking powers described above.

The doctrine and relevant cases (some of which are in fact infringement cases) were described earlier, but the questions will be asked in different contexts, as to which some legal issues arise.

Section 10 talks of the potential infringer using a ‘sign’, to distinguish it from the ‘mark’ that is registered. It also (for all three powers) requires that the sign is used in the course of trade in relation to goods or services.

The ECJ uses the doctrine of the ‘functions of a trade mark’ to both define and limit the scope of trade mark infringement.

Has there been an infringement?

Celine Sarl v Celine SA (C-17/06) [2007] ETMR 80 (ECJ)

FACTS: The mark/sign were identical, but D’s use was in its company name and on a shop front selling clothes, whereas C’s mark was registered for clothes.

HELD: There are four conditions for same mark/same goods infringement:

1. that use must be in the course of trade;

2. it must be without the consent of the proprietor of the mark;

3. it must be in respect of goods or services which are identical to those for which the mark is registered; and

4. it must affect or be liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods or services.

Same mark/same goods situations— (s 10(1)/Art 5(1)(a))

Not all uses of the same mark in connection with the same goods will infringe a trade mark.

• unless the use established a link between the sign and the goods, and the essential function will only be affected if ‘consumers are liable to interpret it as designating the origin of the goods…’.

Use to describe genuine products for sale has been held not to infri

What of actually fixing the mark to the goods?

Arsenal Football Club Plc v Reed (C-206/01) [2003] RPC 9

FACTS: Mr Reed sold scarves and other clothing bearing badges of the club that were registered as trade marks in respect of clothing.

HELD: Placing an identical sign on identical goods was use in relation to those goods and affected the essential function. The High Court had found that customers did not think Mr Reed’s produce was official.

The ECJ did not think this was relevant and noted that post-sale misunderstanding might occur. Arsenal had failed in an action for passing-off as there was no confusion at the point of sale— this illustrates the increased protection a trade mark registration gives.

Arsenal had failed in an action for passing-off as there was no confusion at the point of sale— this illustrates the increased protection a trade mark registration gives.

• In L’Oreal the defendant used comparison charts to match its ‘smell-alike’ products to the claimants, by brand name.

• In deciding the case, the ECJ gave a strong indication that as the use by the defendant went beyond the ‘purely descriptive’ the advertising function had been affected, although the essential function had not.

• The Court of Appeal reluctantly applied this test and found infringement under s 10(1) while criticizing the vagueness and difficulty associated with the non-essential functions.

• It questioned why such subtlety was needed given the defence afforded by s 11(2)/Art 6(1)

• The law in this area has developed via cases involving internet marketing and selling operations:

Google France Sarl and another v Louis Vuitton Malletier SA (C-236/08) [2010] RPC 19 FACTS:

Google’s practice of selling ‘Adwords’ involves a link to the Adword buyer’s advertisement appearing prominently and separately when the Adword is searched for. Traders sometimes purchase rivals’ registered word marks as Adwords. HELD: Google itself was not infringing the essential function of the trade mark by selling Adwords as its use did not lead to misdirection. But the buyers would infringe if their linked advertisement did not enable a normally informed and reasonably attentive internet user to determine whether there was an economic link between the proprietor of the mark and the advertiser.

The other powers of a trade mark

Although the doctrine of the functions of a trade mark will apply in these cases, the requirements for confusion, unfair advantage, or detriment define infringement—the ECJ noted this in Google France.

Infringing acts TMA, s 11(4) states that:

(4) For the purposes of this section a person uses a sign if, in particular, he— (a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;

(c) imports or exports goods under the sign; or

(d) uses the sign on business papers or in advertising. This must be understood to be subject to the requirement for there to be use in relation to goods and interference with the functions of a trade mark as set out above.

Of more practical significance is s 11(5), which states:

(5) A person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, shall be treated as aparty to any use of the material which infringes the registered trade mark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

In Google and other internet infringement cases the ECJ held that whether Google and others were liable for trade mark infringement as joint tortfeasors was a matter for the law of the Member States, as the law of joint liability has not been harmonized by the EU.

Section 11(5) is potentially useful, though note the mental element, and that the printing must relate to infringement of the UK mark.

Limitations on the rights of trade mark owners (defences) Section 11(2) (Art 6(1)) is as follows:

(2) A registered trade mark is not infringed by— (a) the use by a person of his own name or address, (b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or (c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts), provided the use is in accordance with honest practices in industrial or commercial matters. Indications of kind, etc covers a wide range of activities in which legitimate use of another’s mark is clearly warranted (eg ‘runs on Windows 8’).

In Celine (see ‘Rights of trade mark owners and defences’) honest practices involved a ‘duty to act fairly in relation to the legitimate interests of the trade mark proprietor’. It was for the national court to decide, but the extent of the link indicated was relevant. A more difficult area is comparative advertising, where one trader refers to another’s mark in order to sell his goods, by making a comparison.

Section 11(2) provides an easy answer to many problems where use of a trade mark appears incidental or descriptive. But, in such cases, there may be no need to rely on it because there has been no infringing use at all (see ‘Infringing acts’). Always consider ‘use in relation to’ and the functions of a trade mark alongside the applicability of any defence. The issues overlap (which was what the Court of Appeal complained of in L’Oreal).

NOTE***** The best approach is to ignore it and consider all cases in this area under s 11(2)/Art 6(1), which is the approach taken by the UK courts.*****

NOTE**** Trade marks can be assigned and licensed, but bearing in mind the point made earlier, any licence must include terms making sure that the mark is used properly.****

Statutory right for well-known marks

Under Art 6 bis of the Paris Convention, implemented by TMA, s 56, proprietors of marks that are well known in one jurisdiction have rights to block the registration of that mark, or obtain injunctive relief against the use of it, in other jurisdictions. This applies even where there is no trading presence or trade mark registration in the overseas jurisdiction. The right extends to ‘imitations’ of the mark, but there must be confusion.

Remedies

The usual remedies are available. Because of the effect on the claimant’s goodwill, applications for interim injunctions are common in trade mark and passing-off cases. While loss is an element of passing-off, a claimant does not have to be able to quantify any loss (see ‘Loss must be caused (damage to goodwill)’). For trade mark infringement no loss need be proved. Where damages are sought, they will be quantified on the basis of either lost sales or a reasonable royalty basis, as with other rights. In trade mark cases, orders for the delivery-up and destruction of goods bearing the mark are available.

The free movement of goods

See Chapter 1.

There is a particular rule of EU law that can be relevant here. Where the quality of the goods has been changed, or where the value of an underlying IP right will be affected, the IP right can be enforced by way of exception to the rules on free movement.

This is important for brand owners. Repackaging of some products means the original trade mark cannot be used on them. Luxury brand owners can restrict sales of their product to those through their official stockists, even though their products become available on the ‘grey market’.

Copad SA v Christian Dior Couture SA and others (C-59/08) [2009] ETMR 40

HELD: To avoid the free movement of goods defence, the brand owner will have to show that their brand value is based on an aura of exclusivity that will be damaged by the products being available through unofficial channels (such as the internet) at low prices.

CASES

L’Oreal SA v Bellure NV (C-487/07) [2010] RPC 1

B sold ‘smell-alike’ perfumes in similar packaging to that of the claimant’s highvalue products. B provided a comparison chart indicating which of the claimant’s products its products smelt like. B’s customers knew that the products were not the claimant’s.

HELD: B’s use of similar packaging was not infringement under Art 5(1)(b) because there was no confusion. It was infringement under Art 5(2) because customers made an association and B obtained an advantage (it could sell the goods at a premium). B’s use was without due cause and the advantage was therefore unfair. The comparison lists infringed under Art 5(1)(a) as they were ‘used in relation to’ the perfume, and the limitation in Art 6 did not apply.

TRADE SECRETS AND CONFIDENTIAL INFORMATION

The law of trade secrets is purely judge-made law. The basic elements of the cause of action are:

• the claimant is in possession of information that is important and not in the public domain, or that is private;

• they impart that information to someone else in conditions that place that person under a duty of confidence in relation to it, or someone obtains that information in circumstances where they should realize that it is confidential;

• the recipient of the information misuses it or threatens to misuse it, misuse being to publish the information or make use of it. The law has developed into separate strands with their own particular rules:

• the basic law relating to trade secrets;

• special provisions relating to the conduct of employees and ex-employees;

• a separate branch of the law dealing with private and personal information.

The trade secrets branch of the law

The elements of the cause of action are set out in the case of Coco v Clark [1968].

For there to be an action for breach of confidence there must be:

• information of a confidential nature;

• (that was) communicated in circumstances importing an obligation of confidence; and

• an unauthorized use of the information by the person to whom it was communicated. T

Information of a confidential nature

The cases tend to involve information in the following categories:

• technical information (industrial processes, recipes, and so on that are not made public by carrying on the business);

• business information—about new business ventures, projects, or products (secret until the new product, etc has been launched);

• detailed information about the day-to-day operations of an existing business, for example detailed costings, recent unpublished sales figures, market research data, and so on;

• state secrets.

Example:

The body of information must be defined

Ocular Sciences Ltd and another v Aspect Vision Care Ltd and others [1997] RPC 289

FACTS: The claimants struggled to identify what aspects of a large amount of technical information (which included much public domain material) was confidential.

HELD: This did not amount to a sufficient description of the information sought to be protected.

The information must be secret/not in the public domain

The concept of the ‘public domain’ in the law of trade secrets is a relative one.

Franchi v Franchi [1967] RPC 149

FACTS: The information was contained in a patent published in Belgium.

HELD: It was in the public domain because the people interested in the information (patent agents) knew to search in overseas patents.

AVAILABLE TO THE PUBLIC IS NOT THE SAME AS THE ONE IN PATENTS AND DESIGN LAW !!

The information must be of the right type

Since Coco, a number of cases have held that not all information is protectable, even if it is secret: information that is vague, trivial, or unoriginal is unprotectable. In the context of information concerning ideas for new business projects, the rule has emerged that the idea must be sufficiently worked-up and detailed to be implemented.

The House of Lords in Douglas and others v Hello! Ltd and others (No 3) [2007] chose a different indicator for whether information was protectable: commercial value.

In Douglas, the information sought to be protected was the events at a private celebrity wedding. It was held that unofficial photographs of the wedding contained confidential information even after official photographs and reports of it had been published (so much information about it was in the public domain). The basis for this was that:

• each separate photograph will contain slightly different information from other photographs of the same event (so unpublished ones contain fresh information);

• that information was protectable as it had commercial value—evidenced by the fact that the defendant magazine was willing to pay for it and devote full-page spreads to it in successive editions.

person under a duty of confidence

Each case will depend on its particular facts, but an overarching principle has emerged: A person is under a duty of confidence to another in respect of particular information if an honest person would regard themselves as bound by a duty if placed in that situation.

Other factors that may be relevant are:

• the nature of the information in which confidence is asserted (a recipient of trivial information is less likely to think any duty of confidence will arise);

• the precise circumstances in which the information is communicated or obtained (contrast a chance social encounter with a pre-arranged business meeting);

• any communications made at the time (eg a statement that the information was confidential). Common types of relationship are dealt with in the following sections.

Duties of employees while employed

The basic duty all employees owe to their employer is a duty of ‘faithful service’: to do their best while at work and not to do anything that would damage the employer’s interest

MANY OTHER CATEGORIES OF DUTY EXIST!!!

3RD PARTIES ETC

Duties of employees once they leave employment

Once the employment relationship is at an end, the contractual duties of the employer cease, but:

• any contractual terms expressed to last after the employment ceases may be enforceable—see ‘The use of restrictive clauses and “garden leave” clauses’;

• the basic law of confidence still applies, so the employee will still owe a duty to keep secrets secret; but

• that duty is restricted by public policy considerations.

Press, Tim. Intellectual Property Law Concentrate: Law Revision and Study Guide (Page 87). OUP Oxford. Kindle Edition.

Press, Tim. Intellectual Property Law Concentrate: Law Revision and Study Guide (Page 85). OUP Oxford. Kindle Edition.

Press, Tim. Intellectual Property Law Concentrate: Law Revision and Study Guide (Page 81). OUP Oxford. Kindle Edition.