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Intellectual Property - Ulaw LPC - Elective Notes
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INTELLECTUAL PROPERTY RIGHTS OVERVIEWIP QUESTION CHECKLIST
CHECKLIST STRUCTURE OVERVIEW 🡲 not all will be rel in every Q
1. AUDIT
a) What might be protected?
b) Which IP rights are relevant? 🡲 identify ALL
2. SUBSISTENCE
a) Requirements satisfied? Registered if necessary?
b) What rights does ownership give?
c) Who owns it?
d) For how long?
3. INFRINGEMENT
a) Infringed?
b) Defences or exceptions?
c) Remedies
4. FINALLY
a) Do any other IP rights apply?
b) Next steps for client
TABLE OF IP RIGHTS
RIGHT WHAT IS PROTECTED BENEFIT HOW OBTAINED DURATION OF
RIGHT
Trademark A brand name and / Exclusive right to Registration Indefinitely
or a logo for goods or the use of the
services trademark with
(also, in limited circs, statutory protection
shapes)
Passing off Goodwill Gives protection Arises Indefinitely
(eg, logo or name or against unfair automatically
associated ‘get up’) imitation (no registration)
Copyright ‘Artistic output’; Preventing copying Arises 70 years from
creative expression automatically death (usually)
(no registration)
Database right Collections of Protects against Arises 15 years from
information unauthorised automatically (no creation or
copying registration) revision of the
database
Registered design New designs for Monopoly right to Registration 25 years from
right products use and benefit registration
from the design (maximum)
commercially
Unregistered Three-dimensional Prevents Arises 10 years in
design right shapes of articles commercial copying automatically (no most cases
of articles registration) (maximum of
15)
Patents New invention or Monopoly right to Registration 20 years from
process apply the application
technology
Confidential Secret information Protects against Arises Indefinitely
,information unauthorised automatically (no
disclosure registration)
, WORKSHOP 2: TRADEMARKS
ANSWER STRUCTURE
1. What is the mark/goods?
2. Is it registered? (s3 or s5) 🡲 What rights does ownership give?
3. Who owns the right?
4. What is the duration of the right?
5. Is it infirmed?
6. Defence/exceptions?
7. Remedies?
8. Do any other IP rights apply? 🡲 in particular passing off)
What is protected? Brand names / logos / marks on goods and services
What benefit is there? Exclusive right to use the mark
How is it obtained? Registration
How long does it last? Initial 10 years with option to renew for subsequent 10 year periods
ESTABLISHING A TM
(a) Indicate the trade origin of the goods/services with a particular supplier – see def in S1(1) TMA
FUNCTIONS OF A (b) Indicate the quality of product associated with the supplier
TM (c) Measure of the ongoing & changing value of particular brand image of particular products or
image of the supplier as a whole
(d) As a useful + commercially exploitable price of the property itself
• DURATION
ADVANTAGES
● Initial 10 years with option to renew for another 10 years indefinitely – i.e provided
OF TM
PROTECTION mark does not lose its ability to be distinguished 🡪 can remain registered
• EXCLUSIVE RIGHT
● S9(1) - proprietor of registered TM has exclusive rights in the TM which are infringed
by use of the TM in the UK without his consent
● Infringements in SS10 + 11
• OTHER REASONS to register:
● Easier to sue for infringements of a TM
● You can register a TM before using it
● Public record for TMs
● Danger that someone else will register
REQs FOR 1. Basic requirements of s1(1) TMA 1994 satisfied
REGISTERABILIT 2. NO absolute grounds of refusal (s3) 🡲 broadly policy reasons why TM should not be reg’d
Y 3. NO relative grounds of refusal (s5) 🡲 mark should NOT be reg’s where it would infringe the rights
of someone with a prior mark
If a mark is NOT Often client will still want to use it anyway albeit in the risk that they will not be able to enforce it as a
registerable registered trademark and will have to rely on the law of passing off in the event of infringement
1. CAN A MARK MEET THE STATUTORY DEF OF TM? -
• A sign represented in a way that enables the registrar and public to determine the clear and precise
subject matter of the protection (previously represented graphically) AND capable of distinguishing
DEFINITION goods or services of one undertaking from those of other undertakings
• i.e - words, phrase, symbol, sound, colour etc OR a combination of these that identifies +
distinguishes the source of origin of good/service of one business from those of others
, CLEAR & PRECISE / GRAPHIC REPRESENTATION
• Must be reproduced in an 8cm by 8cm square in TMJournal
● Must be capable of being:
- drawn,
- written in words/numbers/symbols, OR
- described in very clear words
• Sound = problematic can BUT can be reg’d by using wavelength, musical notation and/or duration
• Olfactory marks = almost impossible because descriptions/chemical notation ≠ smell (L’oreal v
Bellure)
CAPABLE OF DISTINGUISHING – bar relatively LOW
• Sign/mark AS A WHOLE needs to be distinctive
• Therefore word on its own does NOT need to be distinguishable 🡲 can be used in combination – e.g.
symbols, words + colours in combination
• TEST for distinctiveness 🡲 Average Consumer Test
ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION – S3
SIGNS THAT (a) Signs that do not satisfy def in S1(1)
WILL NOT BE (b) Marks devoid of distinct character
REGISTERED (c) Marks consisting exclusively descriptive – will not be registered if it mainly described the:
UNDER S3(1) - Kind
- Quality
- Quantity
- Intended purpose
- Value
- Geographical location
- Time of production
- Other characteristics of the goods/service
(d) Marks consisting exclusively of signs/indications that have become customary in the current
language/bona fide and established practice of that trade
NOTE! proviso for (b), (c) and (d) 🡲 that the mark will be registered if it has acquired distinctiveness
though use before date of application for registration
• Applications will NOT succeed if mark in q is:
a) Contrary to public policy or morality (S3(3)(a))
PUBLIC └ Ghazilian’s TM App - TM for clothing word ‘tiny penis’ BUT ‘FCUK’ not struck off at TM
INTEREST
OBJECTIONS b) Likely to deceive as to nature, quality or geographical origin of goods (S3(3)(b))
(S3(3)) & └ e.g. ‘Orlwoola’ for clothes deceptive if not made entirely from wool; ‘instant dip’ for
BAD FAITH APP cleaning materials refused on basis that some materials ≠ dips
(S3(6))
c) Made in bad faith (S3(3)(6)
└ e.g. Jules Rimet Cup v FA - C acted in BF for seeking registration of World Cup Willie
logo + words as TM 🡲 C must have known that valuable residual goodwill left in such a
familiar mark
MAIN PROBLEM AREAS under S3(1):
Use of NAME as TM • ECJ approach 🡲 individual assessment need to be made on the facts of each app taking into
account scope of use of the mark, as to the area of use, range of product + likely customer
group allowing for certain level of reasonably informed + aware customer (Koninklijke)
Marks are entirely
descriptive of • TM must NOT EXCLUSIVELY consist of such indications
goods/services
themselves under
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