World IP Day at M-SParc: "IP, What is is, Why you should know about it, Advice and Assitsance
IP, What It Is, Why You Should Know
About It, Advice and Assistance
4-5 Gray’s Inn Square, London, WC1R 5AH
020 7404 5252
1. What is Intellectual Property?
Intellectual property ("IP") is the legal protection of intellectual assets. It is the collective
name for the bundle of rights that prevent unauthorized exploitation of intellectual assets.
● patents for new inventions;
● registered trade marks for distinctive signs;
● registered designs for the appearance of new products;
● copyrights for works of art and literature such as broadcasts, choreography, films,
music, novels, plays, recordings or software;
● rights in performances for actors, dancers, musicians and singers performances;
● unregistered design rights for the shape or configuration of articles or parts of
● the action for passing off to restrain the use of confusingly similar signs or get-up;
● the duty of confidence to restrain the use or disclosure of secret information that has
been imparted in confidence.
2. What are Intellectual Assets?
Intellectual assets are creations of the mind that give one business a competitive edge over
Examples include new inventions (that is to say, new products or processes for making
things), new designs (the look or feel of a new product), brands (the messages that
businesses send to their market), works of art or literature such as broadcasts,
choreography, films, musical scores, novels, paintings, plays or poetry or maybe the
performance of a play, ballet or musical score by an actor, dancer or musician.
Those assets are the subjects of intellectual property protection and the laws that protect
them from unauthorized exploitation, such as patents, copyrights, trade marks. registered
designs and unregistered design rights are known collectively as intellectual property.
Copyright protects the work of artists, broadcasters, composers, dramatists, filmmakers,
publishers, recording studios other creative persons from unlicensed plagiarism and other
exploitation. It connotes two sets of rights known respectively as “economic rights” and
“moral rights“. The former consist of the exclusive right to copy, publish, play, broadcast,
rent, lend, perform, show, play, communicate to the public or adapt a work. The latter include
the rights to be acknowledged as a work’s author and to object to the derogatory treatment
of a work.
The first copyright legislation in England was the Statute of Anne of 1710 which was enacted
in response to challenges posed by the printing press. The law has evolved to take account
of new technologies such as photography and engraving in the 19th century, films,
broadcasting, sound recording, computing and reprography in the 20th and the internet and
digitization in the 21st.
Works in which Copyright can subsist
The works in which copyright can subsist include original literary, dramatic, musical or artistic
works, sound recordings, films, broadcasts and typographical arrangements of published
The scope of some of these categories is very large. “literary works” for instance includes
computer programs, databases and other compilations and possibly even netlists for printed
circuit board design as well as poems and novels. “Films“ includes video recordings and
animations as well as cinema.
For many years, product designs were protected by artistic copyright. The duration of the
protection and breadth of the remedies prompted Parliament to except manufacturing
articles from design documents from the rights reserved to copyright owners and to create a
new intellectual property right known as unregistered design right in its place.
Countries that belong to the World Trade Organization (“WTO”) are obliged to give effect to
the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”). Members
must give effect to various international agreements, including the Berne Convention, and
provide specific protection for various types of work such as computer programs and films,
under their national laws. Berne prescribes the works to be protected, the conditions for
protection, the rights to be granted, the terms of protection, exceptions and remedies. Art 20
of that convention permits special agreements between parties within the framework of that
convention. One such agreement is the WIPO Copyright Treaty, which confers protection on
computer programs and databases, establishes new distribution, rental and communications
rights together with certain exceptions to those rights and requires members to protect
technological and rights management measures against circumvention.
The European Council and Parliament have adopted a number of directives to harmonize
national copyright laws. They cover computer software and databases, rental and lending
right, satellite and cable broadcasting, term of protection, digital works and artists’ resale
rights. Nearly all of these provisions have been implemented into English law.
Implementation in the UK
The principal statute is the Copyright Designs and Patents Act 1988 as amended. This Act,
which came into force on 1 August 1989, repealed and replaced the Copyright Act 1956. It
made a number of far-reaching changes including:
● substituting unregistered design right for artistic copyright as the main means of
protecting product designs;
● a new set of rights based on copyright to protected actors, dancers, musicians,
singers and other performing artistes from unauthorized recording of their
● a whole new set of moral rights, and
● abolition of conversion damages.
The 1988 Act has been amended many times since 1989, largely to give effect to the
above-mentioned international agreements and EU directives.
Relationship with other Intellectual Property Rights
The Copyright Designs and Patents Act 1988 is itself the source of the three new intellectual
property rights mentioned above, namely moral rights, rights in performances and
unregistered design rights. Harmonizing directives have created in turn a new database
right, a new publication right and a new artists' resale right.
Claims for infringement of copyright can be brought in the Chancery Division including the
Intellectual Property Enterprise Court or the County Court at hearing centres that are
attached to a Chancery District Registry.
4. Design Registration
The Registered Designs Act 1949 (as amended) provides for registration of new designs
having individual character with the Intellectual Property Office ("the IPO"). Registration
confers upon the registered proprietor the exclusive right to the design and any design which
does not produce on an informed user a different impression for up to 25 years.
Sources of Law
The basic statute is the Registered Designs Act 1949 as amended by the Copyright, Designs
and Patents Act 1988, Registered Designs Regulations 2001, the Registered Designs
Regulations 2003 and the Intellectual Property Act 2014. This statute has to be read with the
Designs Directive (Directive 98/71/EC of the European Parliament and of the Council of 13
October 1998 on the legal protection of designs) and construed so as to give effect to that
legislation. S.36 of the 1949 Act enables the Secretary of State to make rules for various
purposes set out in that section. The basic rules for design registration are The Registered
Designs Rules 2006.
S.17 (1) of the 1949 Act requires the Comptroller-General of Patents, Designs and Trade
Marks (“the registrar“) to maintain a register of designs recording the names and addresses
of proprietors of registered designs (“registered proprietors”), notices of assignments and
transmissions of registered designs and such other matters as may be prescribed from time
to time or as the registrar may think fit.
Definition of Design
S.1 (2) defines “design” for the purposes of the Act as 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. A “product” is defined by s.1 (3) as
any industrial or handicraft item other than a computer program. It includes, in particular,
packaging, get-up, graphic symbols, typographic typefaces and parts intended to be
assembled into a “complex product”. Special provisions apply to such products.
S.1B (2) provides that for the purposes of sub-section (1), a design is new if no identical
design or no design whose features differ only in immaterial details has been made available
to the public before the relevant date.
The “relevant date” means the date on which an application for the registration of the design
was made or is treated as having been made.
“Making available to the public” includes publication (whether following registration or
otherwise), exhibition, use in trade or some other disclosure (other than one that has to be
disregarded) (s.1B (5) (a)). I
t should be noted that s.1A (2) provides for a design to be refused registration on the ground
that it is not new or does not have individual character when compared with a design which
was been made available to the public on or after the relevant date if it is protected as from
an earlier date by virtue of registration under the Act or an application for such registration.
S.1B (3) provides that 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, s.1B (4) requires the degree of
freedom of the author in creating the design to be taken into consideration.
Title to the Design
Unless a design is created by an employee in the course of his or her employment, the
person who creates the design (“the author”) is treated as its original proprietor (s.2 (1)). If
the design was created by an employee in the course of his or her employment the employer
is the proprietor. In the case of a computer-generated design, the author is the person who
made the arrangements for the creation of the design.
Right conferred by Registration
S.7 (1) provides that registration of a design gives the registered proprietor the exclusive
right to use the design and any design which does not produce on the informed user a
different overall impression.
“Use” in this context includes making, offering, putting on the market, importing, exporting or
using of a product in which the design is incorporated or to which it is applied, or stocking
such a product for those purposes (s.7 (2)).
S.7 (3) provides that in determining whether a design produces a different overall impression
on an informed user, the degree of freedom of the author in creating his design shall be
taken into consideration. It will be noted that the same criterion is to be taken into account
when determining whether a design has individual character upon an application for
Assignments and Licences
S.20 (4) of the Registered Designs Act 1949 provides that the person or persons registered
as proprietor of a registered design has or have power to assign, grant licences under, or
otherwise deal with the design, and to give effectual receipts for any consideration for any
such assignment, licence or dealing. Such power if, of course, subject to the rights of any
other person noted on the register and, while no trusts are noted on the register, any equities
in respect of the registered design may be enforced in the same manner as they would in
respect of any other personal property.
S.7A provides that the right in a registered design is infringed by a person who, without the
consent of the registered proprietor, does anything which by virtue of s.7 is the exclusive
right of the registered proprietor.
S.7A (2) provides that the Right in a Registered Design is not infringed by:
● anything done privately and for purposes which are not commercial;
● anything done for experimental purposes;
● reproduction for teaching purposes or making citations provided that:
○ reproduction is compatible with fair trade practice and does not unduly
prejudice the normal exploitation of the design; and
○ mention is made of the source.
● using equipment on ships or aircraft which are registered in another country but are
temporarily in the United Kingdom;
● importing spare parts or accessories into the United Kingdom for the purpose of
repairing such ships or aircraft; or
● carrying out of repairs on such ships or aircraft.
Exhaustion of Rights
S.7A (4) provides that the right in a registered design is not infringed by an act which relates
to a product in which any design protected by the registration is incorporated or to which it is
applied if that product has been put on the market in the European Economic Area by the
registered proprietor or with his consent.
Claims for infringement of the right in a registered design must be brought in the Patents
Court or the Intellectual Property Enterprise Court.
S.26 provides that any person who is aggrieved by circulars, advertisements or other threats
of proceedings for infringement of the right in a registered design may bring an action
(known as a “threats action“) against anyone making such threat claiming a declaration that
the threats are unjustifiable, an injunction against continuance of those threats and any
damages that may be sustained.
S.8 of the 1949 Act provides for a 5-year initial registration term renewable for successive
periods to up to a total of 25 years.
Compulsory Licensing and Licences of Right
Compulsory licensing has been abolished by the 2001 Regulations. However, the registrar’s
retains the right to cancel or vary conditions in a patent licence that in his or her opinion
operate, or could well be expected to operate, against the public interest. The right of a
defendant to undertake to take a licence of right that formerly existed under s.11B has also
The only party who can now request cancellation of a registration is the registered proprietor
provided he does so in the prescribed manner. A cancellation of registration under s. 11 of
this Act takes effect from the date of the registrar’s decision or from such other date as he or
she may direct (s.11ZE (1)).
Declarations of Invalidity
The same regulation inserts new ss.11ZA, 11ZB, 11ZC, 11ZD, 11ZE (2) and 11ZF which
establish a new procedure by which a registration may be declared invalid in place of the
former cancellation procedure. These provisions set out certain grounds upon which an
application can be declared invalid some of which are restricted to persons having a
specified interest. S.11ZF provides a right of appeal from the registrar’s decision.
Rectification of the Register by the Court
S.20 as amended enables the court to order the registrar to rectify the register. The grounds
upon which rectification may be ordered are the same as for a declaration of invalidity. Just
as certain specified persons can rely on some of those grounds in an application to the
registrar. S.20 (1A) and (1B) restrict applications for rectification on specified grounds to
specified applicants. S.20 (6) permits the court to make a declaration of partial invalidity.
S.12 and Schedule 1 provide for Crown use of registered designs.
Proceedings before the Registrar
The registrar is required to notify any person likely to be affected adversely by the exercise
of her discretion and giving him or her an opportunity to be heard (s.29).
It is an offence under s.35ZA intentionally to copy a registered design so as to make a
product exactly to that design, or with features that differ only in immaterial details from that
design knowing or having reason to believe the design is registered without the consent of
5. Passing off
Art 10bis (1) of the Paris Convention for the Protection of Industrial Property requires
contracting parties to assure effective protection against unfair competition. “Unfair
competition” is defined by art 10bis (2) as “any act of competition contrary to honest
practices in industrial or commercial matters.” In particular, “all acts of such a nature as to
create confusion by any means whatever with the establishment, the goods, or the industrial
or commercial activities, of a competitor” are prohibited by art 10bis (3) (i) of the Convention.
The Action for Passing Off
There is no statutory prohibition of unfair competition as such in the UK but there is a
common law action of passing off. This was summarized pithily by Lord Oliver in Reckitt and
Colman Products Ltd v Borden Inc. and Others  1 WLR 491,  1 All ER 873,
 UKHL 12,  RPC 341 as “no man may pass his goods off as those of another”.
The Classic Trinity
Lord Oliver continued that the tort of passing off may be expressed in terms of the elements
that a claimant (then called a “plaintiff”) has to prove. There are three such elements known
as “the classic trinity”:
● The claimant’s goods or services must have acquired goodwill or reputation in the
market by reference to a name, logo, get-up or some other distinguishing feature.
● There is a misrepresentation by the defendant (whether or not intentional) in that he
adopts a trade name, logo or other inidcia that is the same or similar to the claimant’s
that leads or is likely to lead the public to believe that goods or services offered by
the defendant are goods or services of the claimant.
● The claimant loses sales or suffers other damage such as the erosion of his or her
In practice, damage presumed if the first two probanda can be established.
Reverse Passing Off
These rules have been developed to cover the case of a trader claiming his or her
competitor’s work as his or her own. In Bristol Conservatories Ltd v Conservatories Custom
Built Ltd  RPC 455, for example, salesmen for the defendant company allegedly
showed prospective customers pictures of the claimant’s conservatories as if they were
samples of the defendant’s products and workmanship. The Court of Appeal held that those
facts would, if proved, be capable of amounting to passing off. The thrust of the
representation was that if the customers purchased from the salesmen, they would be
getting the conservatory which had been designed and made by the people who had earned
the goodwill in the products shown in the photographs.
Extended Action of Passing Off
These basic principles have been refined over the years to protect appellations of origin,
such as Swiss chocolate in Chocosuisse Union des Fabricants Suisses de Chocolat v
Cadbury Ltd.  EWCA Civ 856  EWCA Civ 856, or champagne as in J Bollinger v
Costa Brava Wine Co. Ltd.  Ch 262. Geographical origins can also be protected by
collective and certification marks in trade marks law and EU legislation protecting
designations of origin.
In England and Wales claims for passing off are brought in the Chancery Division of the High
Court of Justice (including the Intellectual Property Enterprise Court) or the County Court.
The vast majority of such claims are disposed of upon an application for an interim
injunction. The reason for that is that the losing party either has to change its packaging or
quit the market. Either way, it usually has much less interest in the brand by the time the
action comes on for trial.
A patent is a monopoly of a new invention. It the invention is a product, a patent confers on
the person to whom it is granted (known as "the patentee") the right to stop others from
making, disposing of, offering to dispose of, using or importing the product or keeping the
product whether for disposal or otherwise. If the invention is a process, a patent confers the
right to stop others from using the process. It also includes the right to prevent them from
offering the process for use in the knowledge (or where it is obvious) that the invention's use
without the patentee's consent would infringe the patent. Finally, a patent for a process
includes the right to stop others from disposing of, offering to dispose of, using or importing
any product obtained directly from t the use of the patented process or keeping such product
whether for disposal or otherwise.
Patents are territorial. They are granted for defined territories. In most cases, those
territories are countries but there are some countries, such as the member states of the Gulf
Cooperation Council, that grant patents for their combined territories and others, such as
China, where there are patents for certain regions (like the Special Administrative Region of
Hong Kong) and other patents for the rest of the country. There is, as yet, no such thing as a
"world patent" though the term is used for simultaneous applications to many of the world's
intellectual property office from a single filing under an agreement known as the Patent
Cooperation Treaty. Nor is there such a thing as a "European Union patent" though patents
granted by the European Patent Office are called "European patents" to distinguish them
from patents granted by national intellectual property offices that are sometimes referred to
as "national patents."
These monopolies are granted as a reward for teaching everyone in the world (or at least
everyone in the world with the relevant skills and knowledge known as "persons skilled in the
art") how to make or use a new invention. In order to get a patent, the owner of the invention
must disclose the invention in a manner which is clear enough and complete enough for the
invention to be performed by a person skilled in the art. If he or she fails to do that the patent
can be revoked (that is to say, taken away from the patentee).
The document in which an invention is disclosed is known as a specification. The
specification should contain
● a description of the invention,
● one or more claims, and
● any drawing referred to in the description or any if the claims.
The claims are very important for they define the matter for which the patentee or applicant
for a patent seeks protection. The United Kingdom's Patents Act 1977 provides:
"an invention for a patent for which an application has been made or for which a patent has
been granted shall, unless the context otherwise requires, be taken to be that specified in a
claim of the specification of the application or patent, as the case may be, as interpreted by
the description and any drawings contained in that specification, and the extent of the
protection conferred by a patent or application for a patent shall be determined accordingly."
Every claim must, therefore, be clear and concise, supported by the description and relate to
one invention or to a group of inventions which are so linked as to form a single inventive
A patent is granted only if an invention is new, inventive, useful and falls outside a number of
statutory exceptions. A patent is "new" if it falls outside the sum of human knowledge at the
time of the application known as "the state of the art". The British Patents Act mentioned
above defines "the state of the art" as follows:
"The state of the art in the case of an invention shall be taken to comprise all matter
(whether a product, a process, information about either, or anything else) which has
at any time before the priority date of that invention been made available to the public
(whether in the United Kingdom or elsewhere) by written or oral description, by use or
in any other way."
The "matter" to which the statutory definition refers does not have to be in English and it
does not have to have been made available in the United Kingdom. All that is required is for
the public to have had access to the material. A treatise in a language that is not widely
spoken which is deposited in a public library in a remote city will be enough. Indeed, so too
could the amusements of a 12 year-old boy on a beach off Hayling Island so long as he is in
clear view of the public.
The body that considers on behalf of a government or group of governments whether the
requirements for a patent have been met is known in some countries as the "patent office"
and in others as the "intellectual property office". In the UK, the Intellectual Property Office in
Newport examines applications for patents for the UK alone (the "national patents" referred
to above), However, the British government is also party to an international agreement
known as the European Patent Convention ("EPC") which established the European Patent
Office ("EPO") that I also mentioned above. The EPO considers applications for patents on
behalf of the governments of all the countries that belong to the EPC and can grant
European patents on those governments' behalf. A European patent may designate any one
or more of the contracting countries as a country in which the patent applies. In each of
those designated countries, a European patent is treated for almost all practical purposes as
though it were a patent granted by its national intellectual property office.
A patent is infringed by doing any of the acts mentioned in the first paragraph in respect of
any of the claims which are also discussed above. If a patent is found or admitted to have
been infringed, the patentee can claim either damages (compensation for the infringement)
or an account of profits (assessment of any moneys or other benefits that the infringer may
have gained from his or her infringement and their surrender to the patentee) plus an
injunction (order of the court) to refrain from further infringements. Actions for injunctions and
other relief for the infringement of a patent as well as actions and counterclaims for the
revocation of a patent can be brought in the High Court of Justice in England and Wales.
Actions that can be tried in no more than two days where the amount sought from the
infringer is £500,000 or less can be brought in the Intellectual Property Enterprise Court
("IPEC") which is a court within the High Court with judges specializing in intellectual
property work known as "enterprise judges". All other actions are brought in the Patents
Court, another specialist court, also with specialist judges known as "assigned judges".
The patent law of the United Kingdom is largely codified by the Patents Act 1977 which I
mentioned above. The Patents Act 1977 was enacted to enable the UK to give effect to the
European Patent Convention and the Patent Cooperation Treaty that I have also mentioned
above. It has been amended many times since its enactment. The IPO has published an
unofficial consolidation of the statute as amended on its website at The Patents Act 1977 (as
amended). It is also necessary to consult the European Patent Convention from time to time.
8. Rights in Performance
Part II of the Copyright Designs and Patents Act 1988 (“CDPA”) confers certain exclusive
rights on two groups. It grants to performers rights known as “performers’ rights”. It also
grants to those such as recording and film companies who have exclusive rights to record
the performances of such artistes rights known as “recording rights”. In addition, Part II
creates offences of dealing with illicit recordings and certain other acts.
Amendment of Part II
The Act has been amended substantially since it was passed. A useful but unofficial
consolidation of the CDPA and related legislation has been prepared by the IPO. These
amendments give effect to art. 14 (1) and (2) of the Agreement on Trade-Related Aspects of
Intellectual Property Rights (“TRIPS“), the Rome Convention (International Convention for
the Protection of Performers, Producers of Phonograms and Broadcasting Organizations)
and the WIPO Performances and Phonograms Treaty as well as a number of EU directives,
Performers now have property and non-property rights. Property rights include reproduction
right, distribution right, rental right, lending right and a new making available right. A
performer is entitled to equitable remuneration from the owner of the copyright in a sound
recording of his performance whenever it is played or communicated to the public.
Performers’ non-property rights are the rights to withhold consent for recording, broadcasting
or transmission of a performance.
Recording rights include the right to withhold consent for recording a performance by a
performer with whom there is an exclusive contract, using recordings made without consent,
importing, possessing or dealing in such recordings.
Like copyright, performers ‘and recording rights arise automatically. They come into being
upon what is known as a “qualifying performance”. Such a performance may be a
performance given by a “qualifying individual”, that is to say, a UK or EU citizen or citizen of
some other designated country, or one that takes place in the UK, EU or other designated
Actions for infringement of performers’ property rights are brought in the Chancery Division,
the Intellectual Property Enterprise Court or any County Court hearing centre where there is
also a Chancery District Registry. The remedies are substantially the same as for
infringement of copyright. Actions for infringement of recording rights or for performers’
non-property rights are actionable as breaches of statutory duty. It is also an offence under
s.198 of the CDPA to make, import, possess, offer or expose for sale or distribute a
recording in the knowledge that it is illicit.
The Performances (Moral Rights, etc.) Regulations 2006 came into force on 1 Feb 2006.
Reg 6 of these regulations introduces new sections. 205C to 205N into Part II of the
Copyright Designs and Patents Act 1988 providing a right to be identified as a performer on
condition of assertion and a right to object to derogatory treatment, both of which are
enforceable by civil action
Rights in performances have become increasingly complex and confusing since 1989.
Performers’ rights are now greatly extended by 1996 and 2003 regulations. Anyone dealing
with sound and visual recordings (which can include digital recordings transmitted
electronically) has to take account of performers’ property rights as well as copyrights. In
anticipation of enforcement of such rights by collecting societies, a new Schedule 2A has
been inserted into the CDPA providing for the regulation of licensing schemes and reference
of disputes to the Copyright Tribunal.
9. Trade Marks
A trade mark is a sign capable of distinguishing the goods or services of one supplier from
the goods or services of others. It may consist of personal names, or designs, letters,
numerals, colours, the shape of goods or of the packaging of goods, or sounds.
Function of Trade Marks
Trade marks benefit both consumers and suppliers. Trade marks benefit consumers by
giving an assurance of origin, which in many cases is tantamount to an assurance of quality.
They benefit suppliers by providing a focus for advertising and distribution.
There are two ways of protecting a trade make:
● by registering it with a national or transnational intellectual property office; and/or
● by the action for passing off or similar cause of action.
Registration of Trade Marks for the EU and UK
Signs may be registered for:
● the whole European Union (including the UK for so long as the UK remains a
member state) with the European Union Intellectual Property Office ("EUIPO")
pursuant to Council Regulation (EC) 2017/1001 of 14 June 2017 on the European
Union Trade Mark ("the EU trade mark regulation") as EU trade marks ("EUTM") or
● the UK alone with the Intellectual Property Office (“the IPO”) for under the Trade
Marks Act 1994 as registered trade marks.
In either case, signs are registered for specified goods or services that fall within a number
of internationally agreed classes.
Registration of Trade Marks elsewhere
An application to register a sign as a trade mark for other countries or territories may be
made directly to the intellectual property office of the country concerned or to the World
Intellectual Property Organization ("WIPO") for countries that are party to the Madrid
Effects of Registration
Registration of a sign as a trade mark confers upon the person who has registered the mark
("the registered proprietor") the right to prevent others from using the same or similar sign in
respect of the same or similar goods or services or from using the same or similar sign in
such a way as to take unfair advantage of the reputation of the mark or be detrimental to its
distinctive character or repute.
In England and Wales, claims for infringement of a registered trade mark may be brought in
the High Court or the County Court.
Claims for infringement of an EUTM have to be brought in an EU Trade Mark Court. Both the
High Court and the County Court have been designated as EU Trade Mark Courts.
10. Trade Secrets
A person who receives valuable or sensitive secret information in confidence (“confidential
information”) owes a duty known as “a duty of confidence” neither to disclose nor make use
of that information for any purpose other than that for which the disclosure was made.
Should the receiver of such information (“the confidante”) threaten to do so, the person who
imparted it to him or her ("the confider") is entitled to an injunction to restrain such
unauthorized use or disclosure.
The following are a few examples:
● Trade Secrets: formulae, recipes, production methods, source codes, test results and
other information obtained by research or other work;
● Business Secrets: budgets, customer lists, marketing plans and other information the
release of which would be advantageous to a competitor and injurious to the
● Personal Information: diaries, photographs, private information about public figures
the disclosure of which could be profoundly embarrassing; and
● Professional Information: information supplied to a solicitor, accountant or other
professional adviser in the course of his or her professional duties.
Since 9 June 2018 trade secrets have been protected in the United Kingdom not only by the
law of confidence but also by Directive (EU) 2016/943 of 8 June 2016 on the protection of
undisclosed know-how and business information (trade secrets) against their unlawful
acquisition, use and disclosure (OJ 15.6.2016 L 157/1) ("the Trade Secrets Directive") as
implemented by The Trade Secrets (Enforcement, etc.) Regulations 2018 ("the
For the purpose of the Regulations, a "trade secret" is defined by reg. 2 as "information
(a) is secret in the sense that it is not, as a body or in the precise configuration and
assembly of its components, generally known among, or readily accessible to, persons
within the circles that normally deal with the kind of information in question,
(b) has commercial value because it is secret, and
(c) has been subject to reasonable steps under the circumstances, by the person lawfully in
control of the information, to keep it secret."
In relation to the law of confidence, trade secrets include unpublished technical information
such as formulae, recipes, source code and test results the use or disclosure of which would
benefit a competitor or harm the person who created or gathered the information. So long as
they remain secret, or at least not generally known, trade secrets are protected by the law of
Relying on trade secrecy is thus the opposite of patenting. Businesses with products that
cannot easily be reverse engineered such as Chartreuse and Coca Cola can prevent
competitors from marketing identical products indefinitely simply by keeping their recipes or
manufacturing processes secret. However, information ceases to be protected by the law of
confidence once it becomes known otherwise than through a breach of confidence. A patent
or some other form of intellectual property protection is required where a design or
manufacturing process is likely to be developed independently by a competitor or where it
can be deduced by dismantling the product that is marketed to the public.
Owners of new inventions rely on trade secrecy law if they have to reveal aspects of their
invention to such persons as consultants, contractors and prospective licensees and
investors before they apply for patent protection. Businesses also rely on trade secrecy law
in rapidly advancing technologies or changing markets where the advantage of a patent
monopoly is more than offset by cost of applying for and maintaining the grant.
Circumstances in which an Obligation of Confidence arises
The confidante must receive the information in confidence. That means that he or she must
be asked to treat the information as confidential or it must be obvious to him or her that the
information is given in confidence. The best way to do that is to ask the confidante to sign a
confidentiality agreement. That is not in itself enough. Precautions must be taken (and seen
to be taken) to keep the information secret such as logging documents and disclosures,
keeping materials under lock and key and extracting confidentiality agreements. Merely
inserting a confidentiality clause into a contract of employment may not always be enough.
Duty of Fidelity
A duty of confidence is often confused with an employee’s duty of fidelity. The two duties are
related because confidential information is often disclosed in the workplace but they are
distinct. An employee must serve his or her employer faithfully for so long as he remains on
the payroll. That means that he or she may not disclose any information about his work that
might benefit a competitor. That does not mean that the information is confidential and the
employee is usually free to use skills and knowledge that he or she gained with another
Information remains confidential only so long as it is secret. If the person to whom the duty is
owed publishes the information or otherwise puts it into the public domain by marketing a
product made from a secret process that can easily be reverse engineered it ceases to be
confidential. There are a number of other circumstances in which the obligation of
confidence will end. For example, disclosure may be ordered or permitted by a court where it
is adjudged to be in the public interest.
It is sometimes possible to keep a trade secret such as a recipe or a production process out
of the public domain indefinitely. So long as the information remains secret the obligation of
Relations with Other Rights
New products and production processes may be patentable. Copyright or unregistered
design right may subsist in new designs. Copyright certainly subsists in the code of a
computer program. The structure of a database may be protected by copyright and its
contents by database right. Access to, the integrity and use of personal data is protected by
the Data Protection Act 1998. There is also an overlap with the developing law of privacy.
The law of confidence is to be found in the cases. A common starting point is Megarry J’s
judgment in Coco v A N Clark (Engineers) Ltd.  RPC 41.
An action for breach of confidence relating to trade secrets must be brought in the Chancery
Division of the High Court including the Intellectual Property Enterprise Court or a County
Court hearing centre attached to a Chancery District Registry. Other breach of confidence
cases can be brought in the Queen’s Bench Division or other county courts. The same is
true of Northern Ireland. In Scotland, these cases are brought in the Outer House of the
Court of Session.
11. Unregistered Design Rights
Unregistered design right (usually abbreviated to “design right”) protects shape or
configuration (whether internal or external) of the whole or part of an article. It does not
subsist in methods or principles of construction or in surface decoration. It comes into being
automatically without registration or other formality upon recording the design of an article or
part of an article in a design document or making an article to such design. Novelty is not a
requirement for subsistence of this right. It is enough that the design is original.
This intellectual property right came into existence on 1 Aug 1989. Previously the design of
functional articles could be protected by artistic copyright for the full term of that copyright so
long as the design was created in a drawing. Since the amendment of the Registered
Designs Act, 1949 on 9 Dec 2001 this right has occasionally been referred to as national
unregistered design right to distinguish it from unregistered Community designs which came
into existence on 6 March 2002. Sections 1 to 4 of the Intellectual Property Act 2014 made
a number of changes to design right law.
This right was created by Part III of the Copyright Designs and Patents Act 1988 (“CDPA”).
Part III consists of 51 sections divided into 5 chapters:
● Chapter I (s.213 - s.225): Design Rights in Original Designs;
● Chapter 2 (s.226 - s.235): Rights of Design Right Owners and Remedies;
● Chapter 3 (s.236 - s.245): Exceptions to Rights of Design Right Holders;
● Chapter 4 (s.246 - s.252): Jurisdiction of the Comptroller and the Court; and
● Chapter 5 (s.252 - s.264): Miscellaneous and General.
Meaning of Design Right
S.213 (1) provides that design right is a property right which subsists in accordance with Part
III of the CDPA in an original design.
S.213 (3) provides that design right does not subsist in:
"(a) A method or principle of construction,
(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
(ii) Are dependent upon the appearance of another article of which the article is
intended by the designer to form an integral part, or
(c) Surface decoration. "
S.213 (2) defines a design as “the design of ...... the shape or configuration (whether internal
or external) of the whole or part of an article.” The dots represent the words "any aspect of"
which were deleted by s.1 (1) of the Intellectual Property Act 2014.
The adjective original is not defined by the Act though s.213 (4) provides that a design is not
“original” for the purposes of Part III if it is commonplace in the design field in question at the
time of its creation. In Farmer Build Ltd. v Carier Bulk Materials Handling Ltd. and others
 EWCA Civ 1900 Lord Justice Mummery explained that originality for the purpose of
design right meant that the design for which protection was claimed had to originate from the
designer but must also differ in some respects from other contemporaneous designs.
Unregistered design right comes into being automatically as soon as an original design is
recorded in a design document or an article is made to such design. A further condition is
that the design must qualify for design right protection by reference to the designer or the
person who employed the designer or the person by whom and country in which articles
made to the design were first marketed (s.213 (5) CDPA). Except for semiconductor
topographies, qualifying countries for the purposes of the Act are the UK and other EU
member states or other countries or territories to which design right protection is extended
by order in Council (s.217). The only industrial countries to which design right protection has
been extended are New Zealand and Hong Kong.
Unless he or she was employed to create the design, the designer (that is to say the person
who created the design (s.214 (1)) is the first owner of the design right. Where a design is
created in the course of the designer’s employment, the employer is the first owner of the
right (s.215 CDPA).
National unregistered design right subsists for 15 years from the end of the calendar year in
which a design was first recorded in a design document or an article made to the design. If
articles made to such a design were made available for sale or hire within the first 5 years of
that term, the right subsists for 10 years from the end of the calendar year in which that first
occurred (s.216 CDPA). In the last 5 years of the term, it is open to anyone including an
infringer, to apply for a licence of right to do anything that would otherwise infringe the
design right (see below).
The owner of a national unregistered design right has the exclusive right to reproduce the
design for commercial purposes by making articles to the design or making a design
document for the purpose of enabling such articles to be made (s.226 (1) CDPA).
As with copyright, a distinction is drawn between primary and secondary infringement.
Primary infringement is doing or authorizing an act that is restricted to the design right owner
without that owner’s licence. Secondary infringement is importing or possessing for
commercial purposes or selling, letting, offering or exposing for sale or hire in the course of a
business, an infringing article in the knowledge or with reason to believe that the article was
an infringing article.
Proceedings for design right infringement may be brought in the High Court or the County
Court. Claims for £500,000 or less that can be determined within 2 days or less may be
brought in the Intellectual Property Enterprise Court ("IPEC") and allocated to the multitrack.
Claims for less than £10,000 can be brought in IPEC's small claims track. All other claims in
the High Court proceed in the Intellectual Property List of the Chancery Division either in the
Royal Courts of Justice or the Birmingham, Bristol, Cardiff, Caernarfon, Leeds, Liverpool.
Manchester, Mold or Preston District Registries. Claims in the County County Court should
proceed in a hearing centre where there is also a Chancery District Registry.
Licence of Right
Any person (including an infringer) may apply under s.237 (1) of the CDPA for a licence to
do in the last 5 years of the design right term anything which would otherwise infringe the
design right. If the parties cannot agree terms for such licence, they may be settled by the
Comptroller-General of Patents Designs and Trade Marks. Where a party undertakes and is
entitled to take a licence of right, no injunction or order for delivery up may be granted
against him and the maximum pecuniary relief by way of damages or upon an account of
profits that may be recovered is twice the amount of a royalty payable upon a licence of right
from the date of the first infringement (s.239 (1) CDPA).
HM government is party to the Treaty on Intellectual Property in respect of Integrated
Circuits (“the Washington Treaty“) of 26 May 1989 and the Agreement on Trade-Related
Aspects of Intellectual Property Rights (“TRIPS”). To give effect to those obligations under
those agreements semiconductor topographies are protected by design right under The
Design Right (Semiconductor Topographies) Regulations 1989. These regulations modify
the Act in relation to qualification, duration, infringement and licences of right.
States grant patents to inventors to encourage them to share their inventions with the public
after they have had a reasonable opportunity to recoup their investment in R & D and, with
any luck, a little bit extra. Similarly, copyrights are granted to encourage publishers to
disseminate works of art or literature. Trade marks are a bit different as they indicate the
source of goods and services in which consumers, as well as suppliers, have an interest. It
is perhaps for that reason that WTO members are required by an annexe to the agreement
setting up that organization to treat counterfeiting (trade mark infringement on an industrial
state) as an offence.
Because intellectual property rights are intended primarily to benefit rights holders it is they
who have primary responsibility for enforcement. In Wales and England (as in most
countries) that means bringing proceedings in the civil courts. Remedies include injunctions
(orders by a judge not to do something or, occasionally, to do something on pain of fine or
imprisonment for disobedience), damages (compensation for past wrongdoing) or an
account of profits (disgorging ill-gotten gains), surrender of all infringing articles and costs (a
contribution to the successful party's legal fees).
As parties to disputes in Wales and England decide the issues to be determined and the
evidence to be considered, civil litigation there is much more expensive than on the
continent where the judge chooses the issues to be considered and the evidence he or she
wants to hear. According to TaylorWessing's patent map, a patent infringement action in
London can cost anything from £200,000 to £1 million compared to €200,000 to €800,000 in
France, €100,000 to €200,000 in Germany, €75.000 to €200,000 in the Netherlands and
€2,530 to €375,000 in Switzerland.
Claims for patent, registered or registered Community design, semiconductor topography or
plant breeders' rights infringement have to be brought in the Patents Court or the Intellectual
Property Enterprise Court ("IPEC"). Both courts are based in the Rolls Building off Fetter
Lane in London but paragraph 4 of the Patents Court Guide and paragraph 1.5 of the IPEC
Guide state that the judges off both courts are ready and willing to sit outside London in
order to save time and costs. That has only happened once in the case of each court. In
Hadley Industries Plc v. Metal Sections Limited, Metsec (UK) Limited  EWHC Patents
284 (13 Nov 1998) Mr Justice Neuberger (as he then was) sat in Birmingham as a judge of
the Patents Court. In APT Training & Consultancy Ltd and another v Birmingham & Solihull
Mental Health NHS Trust  EWHC 19 (IPEC) (9 Jan 2019) Judge Melissa Clarke sat in
Birmingham as a judge of IPEC.
Both the Patents Court and IPEC are specialist courts within the Chancery Division of the
High Court of Justice with judges who have either practised at the IP bar or otherwise
acquired expertise in IP. IPEC is for claims of £500,000 or less that can be tried in no more
than 2 days. The costs that can be recovered in IPEC from an unsuccessful party are
capped at £50.000.
Claims for infringement of all other IP rights can be brought either in London or a town or city
with a Chancery District Registry. Wales has Chancery District Registries in Cardiff,
Caernarfon and Mold though the courts in Caernarfon and Mold do not have jurisdiction to
hear trade mark disputes. Unlike the Patents Court, IPEC hears cases other than patent,
registered and registered Community design, semiconductor topography and plant varieties
disputes so long as the claim is for £500,000 or less and the case can be tried in 2 days or
less. Again, there is a £50,000 limit on the costs that can be recovered from an unsuccessful
party. Theoretically, both the High Court and the County Court sitting in Cardiff, Caernarfon
and Mold have jurisdiction to hear IP cases other than those that are reserved to the Patents
Court or IPEC. In practice, County Court judges outside London tend to transfer smaller
and simpler IP cases to IPEC and the larger and more difficult ones to the High Court.
IPEC has a small claims track to hear claims for infringement of all IP rights except patents,
registered or registered Community designs, semiconductor topographies or plant varieties
that can be tried in one day where the damages or other monetary remedy is £10,000 or
less. The procedure is simpler than in other courts and the costs that can be recovered from
an unsuccessful party are limited to just a few hundred pounds.
As for alternatives to litigation, the Intellectual Property Office ("IPO") in Newport has
jurisdiction under s.61 (3) of the Patents Act 1977 to hear patent infringement claims where
no injunction is sought, though that jurisdiction is hardly ever invoked. IPO tribunals
regularly hear claims for
● revocation, amendment and declarations of non-infringement of patents,
● oppositions to trade mark applications and applications for revocation and
declarations of invalidity of granted trade marks and
● the cancellation of registered designs.
The IPO offers a mediation service for all IP disputes. Its examiners will offer non-binding
opinions on whether patents are valid, whether they have been infringed and other matters.
The Internet Corporation for Assigned Names and Numbers and several national domain
name authorities such as Nominet offer an inexpensive procedure for resolving disputes
between trade mark owners and the holders of domain names as I mentioned in Welsh Top
Level Domain Names 12 April 2019. I gave an example of the resolution of such a dispute in
Welsh IP Cases: D2016-0485 ALDI GmbH & Co. KG v. Mahfuz Ali 13 April 2019.
As IP litigation is expensive startups and other small and medium enterprises are advised to
consider insurance against the cost of bringing and defending IP claims. I have written
extensively on IP insurance most of which is summarized in IP Insurance; CIPA's Paper 1
May 2016 NIPC Inventors Club.
Why every business plan should take account of intellectual property
In Basic Facts About Trademarks: What Every Small Business Should Know Now, Not Later,
one of the best video introductions to trade mark law I know in any country, the presenter1
Mark Trademan (yes that really does appear to be his surname) of the US Patent and
Trademark Office Trademark Information Unit asked an audience of entrepreneurs and small
business owners how many of them had a business plan. A forest of hands shot up. "How
many of you with business plans have a trade mark component?" asked Mr Trademan.
Silence. "OK, I was afraid of that."
The response would have been no different had Mr Trademan given his presentation here
even though our own Intellectual Property Office warn in Before you apply for a patent on2
the British government website that "it’s pointless patenting an invention unless you have a
proper plan for making money from it and can defend it against copying."
Everybody knows that a business plan is
"the vital component for any business, providing potential lenders and investors with
a roadmap of how your business will operate and how you will go about achieving
(see What is a business plan? on the British Library's Business and IP Centre website) .3
So why should IP be integrated into your business plan? The World Intellectual Property
Organization which is the United Nations specialist agency for intellectual property provides
the answer in Practical IP Issues in Developing a Business Plan. Every business no matter4
how small nor how simple owns some kind of intellectual asset that is vital to its trade. It may
simply be the name or reputation of its owner in the case of a retailer or a tried and trusted
recipe for making sponge cake in the case of a tea shop or sandwich bar but if it attracts
customers to the business it is an asset which needs protecting, managing and exploiting.
Conversely, a business may need to use the assets of somebody else's assets. A photo on
the internet perhaps for the company website or maybe some software for the computer. It
needs to plan how it is to acquire the right to use or even buy that asset and how much it is
prepared to spend. All of these matters are at least as important to the start-up as the lease
to an office or the purchase of a delivery van.
So why don't more businesses take account of these matters when planning their business.
Probably because nobody has told them to do so. Not every accountant or solicitor is IP
savvy and certainly not every business adviser.
So what to do? I'll be giving some talks on the topic on-line and in the regions. I shall also
be publishing information about it here and in my regional blogs. In the meantime you could
read the WIPO publication and the Fact Sheet Intellectual Property and Business Plans from
the European IPR Help Desk.5