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World IP Day at M-SParc: "IP, What is is, Why you should know about it, Advice and Assitsance


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This is the handout to accompany my presentation at M-SParc (the Menai Science Park) to celebrate World IP Day on 26 April 2019.

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World IP Day at M-SParc: "IP, What is is, Why you should know about it, Advice and Assitsance

  1. 1. IP, What It Is, Why You Should Know About It, Advice and Assistance Jane Lambert 4-5 Gray’s Inn Square, London, WC1R 5AH 020 7404 5252
  2. 2. 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. Examples include: ● 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 articles; ● the action for passing off to restrain the use of confusingly similar signs or get-up; and ● the duty of confidence to restrain the use or disclosure of secret information that has been imparted in confidence. Source: ​ ​ 2. What are Intellectual Assets? Intellectual assets are creations of the mind that give one business a competitive edge over others. 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. Source: ​ 1
  3. 3. 3. Copyright 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. History 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 editions. 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. International Obligations 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 2
  4. 4. 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. European Harmonization 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 performances; ● 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. Enforcement 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. Source: ​ 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 3
  5. 5. 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. The Register 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. Novelty 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. 4
  6. 6. Individual Character 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 registration. 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. Infringement 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. Permitted Acts S.7A (2) provides that the Right in a Registered Design is not infringed by: 5
  7. 7. ● 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. Enforcement Claims for infringement of the right in a registered design must be brought in the Patents Court or the Intellectual Property Enterprise Court. Groundless Threats 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. Term 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 been abolished. Cancellation 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)). 6
  8. 8. 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. Crown Use 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). Criminal Provisions 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 the proprietor. Source: ​ 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 7
  9. 9. Colman Products Ltd v Borden Inc. and Others​ [1990] 1 WLR 491, [1990] 1 All ER 873, [1990] UKHL 12, [1990] 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 goodwill. 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​ [1989] 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.​ ​[1999] EWCA Civ 856 [1999] EWCA Civ 856, or champagne as in ​J Bollinger v Costa Brava Wine Co. Ltd.​ [1960] Ch 262. Geographical origins can also be protected by collective and certification marks in trade marks law and EU legislation protecting designations of origin. Enforcement 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. Source: ​   8
  10. 10. 6. Patents 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." 9
  11. 11. 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 concept. 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". 10
  12. 12. 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. Source: ​ 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’ Rights 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 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. Subsistence 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 11
  13. 13. some other designated country, or one that takes place in the UK, EU or other designated country. Enforcement 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. Moral Rights 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 Risk Factors 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. Source: ​ 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. Legal Protection There are two ways of protecting a trade make: ● by registering it with a national or transnational intellectual property office; and/or 12
  14. 14. ● 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 Protocol 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. Enforcement 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. Source: ​ 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. 13
  15. 15. Confidential Information 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 claimant; ● 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. Trade Secrets 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 Regulations"). For the purpose of the Regulations, a "trade secret" is defined by reg. 2 as "information which - (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 confidence. 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 14
  16. 16. 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 employer. Limits 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. Term 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 confidence continues. 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. Applicable Law 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. [1969] RPC 41. 15
  17. 17. Enforcement Proceedings 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. Source: ​ 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. History 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. Legislation 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, 16
  18. 18. (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. " "Design" 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. "Original" 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 [1998] 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. Subsistence 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. Title 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). Term 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). 17
  19. 19. Exclusive Right 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). Infringement 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. Enforcement 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 Righ​t 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). Semiconductor Topographies 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. Source: ​ ​ 18
  20. 20. 12. Enforcement 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​ [1998] 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 ​[2019] 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. 19
  21. 21. 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. Source: ​ 20
  22. 22. Appendix 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 your goals" (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. 1 ​ 2 ​ 3 ​ 4 ​ 21
  23. 23. 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 . Source: ​ 5 ​ 22