These are the slides of a presentation to solicitors, barristers and others at 4-5 Gray;s Inn Square on 26 June 2013. It defines intellectual property ("IP") as the legal protection of intellectual assets ("IA") which are the brands, designs, technology or creative works that give a business a competitive advantage over its rivals. The study discusses how the law protects each of those assets: brands by designs, passing off, geographical indications and registered designs, for example,. and technology by patents, the law of confidence, unregistered design right, plant breeders rights and copyright. However, IP rights create monopolies and restraints of trade that are as harmful as any other. The law that creates these rights also regulates their subsistence and exercise. Thus, IP law strikes a balance between two conflicting interests: that of incentivizing creativity and innovation against promoting competition and freedom of trade. The tension between those two public interests has always existed and its appreciation is fundamental to understanding IP law. One instance where it appeared was in the Uruguay Round of negotiations of trade liberalization between 1986 and 1994 which led to the WTO agreement and TRIPS. Since 1994 IP protection has been one of the conditions of access to the markets of the leading industrial countries. TRIPS refers to four core treaties - Paris, Berne, Rome and Washington. These are the general protection treaties. Others, such as the PCT, Madrid and Hague, facilitate multiple patent, trade mark and registered design applications. There are classification agreements like Nice and Locarno and regional agreements like the European Patent Convention. The presentation considered the harmonization of European copyright, registered design and trade mark law and the Community trade mark and Community design regulations. It identified the core British statutes: the Patents Act 1977, Copyright, Designs and Patents Act 1988, the Trade Marks Act 1994 and the Registered Designs Act 1949. It discussed also some of the more important secondary legislation such as the Patents, Trade Marks and Registered Designs Rules. Finally, it identified some of the sources of law in print and on the internet listing the materials that can be downloaded from the IPO, EPO, OHIM, WIPO and other sites.

1. Introduction to Intellectual Property
Jane Lambert
Thursday, 26 June 2013
16:00 – 18:00

2. Contents
• What is Intellectual Property?
• Why do we have it?
• The WTO Agreement and TRIPS
• The Treaties
• European Patent Convention
• EU Directives and Regulations
• Statutes and Case Law
• Sources of IP Law

3. What is Intellectual Property?
Intellectual property (“IP”) is the collective
term for the bundle of laws that protect
investment in intellectual assets (“IA”).

4. What are Intellectual Assets?
IA are the brands, designs, technology or the
works of art and literature which give one
business a competitive advantage over all
others.

5. What are Brands?
For the purpose of this discussion, a brand
means the sign that identifies a supplier or his
goods or services in the market place.

6. What are Designs?
In everyday language “design” can mean the
appearance of an article as in “designer
handbag” or in a technical arrangement as in
an “engine design”.

7. What are Designs?
The former are called “decorative” or
“ornamental designs” and the latter
“functional designs”. The law protects both in
the UK and most other countries.

8. What is Technology?
Essentially new products and processes.
English law is not very good at protecting new
services or such as new methods of business
or software.

9. Works of Art and Literature
Essentially these fall into two categories:
• Permanent works like
books, CDs, film, music or drawings;
• Performances of actors, dancers, musicians
or singers

10. How does the Law protect Brands?
• Registered Trade Marks
• Passing off
• Geographical Indications
• Registered Designs

11. How does the Law protect
Designs?
• Functional designs by unregistered design
right
• Decorative designs by registered
designs, registered Community
designs, unregistered Community designs and
artistic copyright

12. How does the Law protect
Technology?
• Patents
• Trade Secrets
• Unregistered design rights
• Plant breeders’ rights for new plant varieties
• Literary copyright for computer programs and
databases

13. How does the Law protect Works
of Art and Literature?
• Copyright protects original
artistic, dramatic, literary and musical
works, broadcasts, films, sound recordings and
typographical arrangements of published
editions.
• Artists, dancers, musicians and other
performers (and those with exclusive
contracts to film or tape them) have the right
to object to unauthorized filming or taping
known as “rights in performances”.

14. Competition and Freedom of
Trade
Monopolies and other exclusive rights
conferred by IP laws restrict competition and
freedom of trade just like any other monopoly
or restraint of trade.

15. Competition and Freedom of
Trade
To mitigate the effect of such restrictions the
statutes and common law subject the
subsistence and exercise of IP rights to
conditions.

16. Function of IP Law
To strike a balance between conflicting public
interests:
• Incentivizing creativity and innovation; while
• Safeguarding competition and freedom to
trade.

17. Tension between conflicting public
interests
Illustrated by:
• Statute of Monopolies 1623 which
established patents; and
• Statute of Anne 1710 which established
copyright.

18. Statute of Monopolies 1623
Essentially a competition statute as it
abolished monopolies but allowed an
exception for inventions to incentivize
innovation.

19. Statute of Anne 1710
Licensing system required to incentivize
writers and publishers in a completely
unregulated market.

20. Tension between conflicting public
interests
The tension between those conflicting public
imperatives resurfaces at international
conferences, in national legislatures and the
courts and its appreciation is fundamental to
understanding IP.

21. The WTO and TRIPs
An instance where this tension arose was in
the Uruguay round of negotiations to
liberalize world trade in goods and services
between 1986 and 1994.

22. The WTO and TRIPs
The Agreement establishing the World Trade
Organization (“WTO”) in 1994 annexed an
Agreement on Trade Related Aspects of
Intellectual Property Rights (“TRIPS”).

23. The WTO and TRIPs
TRIPS requires WTO member states to protect
the IA of its own citizens and residents and
those of other member states

24. The WTO and TRIPs
Since 1994 providing minimum IP protection
has been a condition of favourable access to
the markets of the world’s leading industrial
countries.

25. The Treaties
TRIPS refers to four core treaties:
• Paris Convention 1883: patents, trade marks
and industrial designs;
• Berne Convention1886: copyrights;
• Rome Convention 1961: rights in
performances; and
• Washington Convention 1989:
semiconductor topographies.

26. The Treaties
Treaties can be divided into four groups:
• Protection Treaties: Paris, Berne, Rome etc.;
• Prosecution Facilitation: PCT, Madrid
Protocol and Hague;
• Classification: Nice and Locarno; and
• Regional: European Patent Convention
(“EPC”).

27. European Patent Convention
• Establishes a European Patent office in
Munich;
• Grants European patents for new inventions
on behalf of national governments which rank
alongside national patents; and
• Harmonizes the substantive laws of the
contracting states.

28. EU Directives and Regulations
• From earliest days of the European project
national IP rights were a barrier to trade
between member states.
• ECJ (now CJEU) developed doctrines that
limited the exercise of those rights insofar as
they restricted free movement of goods.
• Solution was to harmonize national member
states’ IP laws and create Community IP rights.

29. EU Directives and Regulations
• Extensive harmonization of
copyright, registered design and trade mark
law by a series of directives.
• Community trade marks and design
registration.
• Less success with patents owing to disputes
over language and enforcement.
• But agreement has been reached on a
unitary patent.

30. Statutes
• Registered Designs Act 1949
• Patents Act 1977
• Copyright, Designs and Patents Act 1988
• Trade Marks Act 1994
The IPO has compiled useful unofficial
consolidations of those statutes which can be
downloaded from its website.

31. Rules
• Patents Rules 2007
• Trade Marks 2008
• Registered Designs Rules 2006

32. Law of Confidence
“In my judgment, three elements are normally required
if, apart from contract, a case of breach of confidence is to
succeed. First, the information itself, in the words of Lord
Greene, MR in the Saltman case on page 215, must ‘have the
necessary quality of confidence about it.’ Secondly, the
information must have been imparted in circumstances
importing an obligation of confidence. Thirdly, there must be
an unauthorized use of that information to the detriment of
the party communicating it.”
Megarry J in Coco v A N Clarke (Engineers) Ltd [1967] RPC 41, 47

33. Passing off
Lord Oliver set out the three basic
requirements of an action for passing off in
Reckitt and Colman Products Ltd v Borden Inc
and Others RPC 341, 405.

34. Passing off
“Goodwill or reputation attached to the goods
or services which he supplies in the mind of
the purchasing public by association with an
identifying ‘get-up’”.

35. Passing off
“Misrepresentation by the defendant to the
public (whether or not intentional) leading or
likely to lead the public to believe that goods
or services offered by him are the goods or
services of the plaintiff.”

36. Passing off
“Damage by reason of the erroneous belief
engendered by the defendant's
misrepresentation that the source of the
defendant's goods or services is the same as
the source of those offered by the plaintiff.”

37. IP Litigation
All IP cases are allocated to the Chancery
Division, the Patents County Court or a County
Court attached to a Chancery District Registry
(Birmingham, Bristol, Caernarfon, Cardiff, Leed
s, Liverpool, Manchester, Mold, Newcastle, Pr
eston)

38. IP Litigation
Patents, registered designs and registered
Community designs, semiconductor
topography and plant varieties cases are
assigned to a special court within the
Chancery Division known as the “Patents
Court” or to the Patents County Court.

39. IP Litigation
Patents County Court has a small claims track
for IP cases other than patents, registered and
registered Community designs, semiconductor
topography and plant breeders rights.

40. IP Litigation
Practice is to be found in:
• CPR Part 63 and PD Part 63
• Chancery Guide
• Patents Court Guide
• Patents County Court Guide
• Small Claims Guide

41. Where to find your law
Printed materials:
• Reports of Patent Cases (“RPC”)
• Fleet Street Reports (“FSR”)
• European Intellectual Property Review
(“EIPR”)

42. Where to find your law
Online:
•BAILII: (CJEU, General Court, Supreme
Court, Court of Appeal, Chancery
Division, Patents Court and Patents County
Court)
• IPO: Decisions of hearing officers and
appointed persons, unofficial consolidations
of core statutes, statutory instruments and
rules, tribunal practice notes and Manual of
Patent Practice)

43. Where to find your law
Online:
• EPO: EPC, Official Journal and decisions of
boards of appeal
•OHIM: Community trade mark and design
regulations, trade mark and design directives
and decisions of boards of appeal
• WIPO: Treaties and conventions

44. Where to find your law
Text Books
• Terrell on Patents
• Kerly on Trade Marks
• Morcom and others: “Modern Law of Trade
Marks”
• Laddie, Prescott and Vitoria: “Modern Law
of Copyright and Designs”

45. Where to find your law
Text Books
• Copinger and Skone James on Copyright
• Wadlow: “The Law of Passing off”

46. Any Questions
Jane Lambert
4-5 Gray’s Inn Square
Gray’s Inn
London
WC1R 5AH
jlambert@4-5.co.uk
http://www.4-5.co.uk