41. Trade mark defences

This chapter is about the various defences that are available to a person who has been accused of infringing a trade mark under the Trade Marks Act 1994. A prominent limitation on the scope of protection, which operates defensively, is whether the defendant has made a legally relevant use of the mark. Besides this, the defendant is excused if the mark has been used (i) as the defendant’s own name or address, (ii) for descriptive purposes, or (iii) to indicate the intended purpose of a product or service. These threeuses are subject to a proviso testing for whether the use has been in accordance with honest practices in industrial and commercial matters. Additional defences facilitate comparative advertising and permit parallel importation via the exhaustion of the trade mark owner’s rights upon first sale.

37. Absolute grounds for refusal

This chapter examines the ‘absolute’ grounds for refusing to register a trade mark as set out in section 3 of the Trade Marks Act 1994, Article 3 of the Trade Marks Directive, and Article 7 of the European Union Trade Mark Regulation (EUTMR). It first looks at the reasons for denying an application for trade mark registration before analysing the absolute grounds for refusal, which can be grouped into three general categories: whether the sign falls within the statutory definition of a trade mark found in sections 1(1) and 3(1)(a) and (2) of the Trade Marks Act 1994; whether trade marks are non-distinctive, descriptive, and generic; and whether trade marks are contrary to public policy or morality, likely to deceive the public, prohibited by law, or if the application was made in bad faith. Provisions for specially protected emblems are also considered.

36. Subject matter

This chapter discusses three requirements that a sign must satisfy to be validly registered or, if it is already registered, to ensure that it is not subsequently declared invalid: there is a sign; the sign can be represented graphically, or otherwise represented adequately; and the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. The chapter also considers specific policy-based limits on the registration of shapes, in the form of three ‘functionality’ exclusions.

28. Ownership, exploitation, and infringement: UK registered designs, registered community designs, and unregistered community designs

This chapter focuses on who is entitled to apply for a design registration as well as the rules relating to ownership and exploitation with respect to registered designs in the UK and the registered and unregistered Community designs. It also discusses infringement and exceptions in the three harmonized systems. It begins by considering the question of who is initially entitled to a design, citing entitlement under the UK Registered Designs Act 1949 and EU provisions. It then turns to assignment and licensing, the optimal period of protection for a design, and the British and EU approach to infringement. Finally, the chapter examines exceptions and defences that are available when dealing with design protection.

17. Patentable subject matter

This chapter deals with patentable subject matter and the ways in which it is regulated under the Patents Act 1977 and the 2000 European Patents Convention (EPC). More specifically, it discusses five criteria that an invention must satisfy to be patentable, including the requirement that it must be capable of ‘industrial application’, and that patents are not granted for immoral inventions. The chapter also considers two different approaches that are used when deciding whether an invention falls within the scope of section 1(2)/Article 52(2): the ‘technical effect’ approach in the UK and the ‘any hardware’ approach applied by the European Patent Office. Finally, it examines how the law deals with a number of specific types of invention and looks at possible reforms, particularly in relation to computer programs and computer-related inventions.

16. Procedure for grant of a patent

This chapter explains the processes involved in granting patents as well as the factors that applicants must take into account when deciding whether to patent an invention in the UK. The role of patent agents and the choice of route to take to secure grant of the patent are considered. The chapter then documents the procedures in the application for a patent, paying particular attention to some of the key features of the UK and European Patent Office patent application processes together with the Patent Cooperation Treaty. It also describes situations in which applicants and patentees are able to amend their applications and the restrictions under which such amendments operate. Finally, it looks at a number of proposals to reform the patent procedure.

13. Rights associated with copyright

This chapter deals with regimes that are related to, but fall outside of, the remit of copyright law: performers’ rights; database right; public lending right; rights relating to technological protection measures and rights management information; the so-called droit de suite (artist’s resale royalty right); and proposals for a new press publishers right.

8. Infringement

This chapter considers the question of what amounts to copyright infringement, first by discussing ‘primary’ infringement and ‘secondary’ infringement. It then explains the three criteria used to determine whether copyright in a work has been infringed: whether the defendant carried out one of the activities that falls within the copyright owner’s rights; whether there is a causal link between the work used (that is, reproduced, issued, rented, performed, communicated, or adapted) by the defendant and the copyright work; and whether the restricted act has been committed in relation to the work or a substantial part thereof. It also looks at the European approach to finding infringement in relation to authorial works and compares it with the British approach before concluding with a description of non-literal copying of such works.

1. Introduction

This introduction provides an overview of topics covered in this book which relate to all areas of intellectual property law, including the justifications that have been put forward for granting intellectual property rights. It also considers the key international and regional developments that have influenced intellectual property law in the UK, such as the creation of the World Intellectual Property Organisation (WIPO), the Trade-Related Aspects of Intellectual Property Rights (TRIPS) negotiations, and European Union law. The chapter also discusses the ways in which the European Union is involved in intellectual property law, such as its involvement in negotiating and signing treaties. Finally, it looks at the European Economic Area and non-EU regional initiatives on intellectual property, as well as the implications of Brexit.

48. Litigation

This chapter introduces some of the more important aspects of intellectual property litigation. It begins by considering who can bring proceedings and who can be sued with respect to infringement before discussing how evidence is obtained and preserved, with particular reference to disclosure orders and search orders. In addition, the chapter looks at presumptions that alter the normal burden of proof; unjustified threats of infringement; special courts and tribunals that deal with the technical nature of intellectual property litigation; parallel proceedings and the problems that they raise; the use of experts in litigation; and jurisdictional issues and conflicts of law. Finally, it examines alternative dispute resolution as an approach to resolving disputes concerning intellectual property.