INTELLECTUAL PROPERTY LAW

By Helen Norman

Contents
Introduction: the challenge of intellectual property……..
The Challenge of Intellectual Property . . . . . . . . . . . . . .
Essential Reading...............................
Learning outcomes, activities and self-assessment questions . . . . . . . . .
Advice on the examination..........................
Types of Intellectual Property.......................
Overview of Intellectual Property Rights. . . . . . . . . . . . . . . . . .
The principal characteristics of intellectual property rights . . . . . . . . . .
The theoretical justifications for intellectual property rights . . . . . . . .
The absence of protection for unfair competition . . . . . . . . . . . . . . .
Reflect and review. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Sources of Intellectual Property.....................
International Conventions..........................
Case Law...................................
Reflect and Review……………………….
Remedies...............................
General matters................................
Pre-trial remedies...............................
Post-Trial remedies..............................
Involvement of Public Bodies.........................
Public policy restrictions on the rights of the intellectual Property owner . . . . . . . . .
Reflect and Review. . . . . . . . . . . . . . . . . . . . . . . . .
Breach of confidence..........................
Types of information: personal, commercial and state . . . . . . . . .
The role of breach of confidence in intellectual property law . . . . . . . . .
The historical development of breach of confidence and the basis for its protection...........
Conditions for protection ...........
Defences.................................
Remedies: particular problems.......................
Reflect and review . . . . . . . . . . . . . . . . . . . .

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Introduction to copyright........................
The history of copyright protection in the United Kingdom . . . . . . . .
Copyright compared with other intellectual property rights . . . . . . . . .
The justification for copyright protection . . . . . . . . . . . . . . . . .
The nature of copyright and the idea/expression divide . . . . . . . . . . .
Subsistence of copyright........................
Categories of copyright work.........................
The requirement of originality.........................
The requirement of permanent form.....................
Qualification for protection..........................
Authorship and ownership..........................
Duration...................................
Copyright infringement and defences; infringement of moral rights. . . . . . . .
The Nature of Copyright Infringement . . . . . . . . . . . . . . . . .
Primary Infringement............................
Secondary Infringement...........................
Defences to copyright Infringement . . . . . . . . . . . . . . . . . . . .
Infringement of moral rights........................
Reflect and review. . . . . . . . . . . . . . . . . . . . . . . . . .
Designs.................................
Overview of the various means of protecting designs . . . . . . . . . . . .
The registration system...........................
Copyright protection for Designs......................
Statutory provisions curtailing copyright . . . . . . . . . . . . . . . .
Unregistered design right.........................
Introduction to trademarks. . . . . . . . . . . . . . . . . . . .
The history of Trademarks and Trademark Law . . . . . . . . . . . . . . .
The nature of Trademarks . . . . . . . . . . . . . . . . . . . . . . . . . .
The Functions of Trademarks........................
International Programmers………………….
Passing off . . . . . . . . . . . . . . . . . . . . . . . . . . .
The Nature of Passing off..........................
The Elements of passing off . . . . . . . . . . . . . . . . . . .
Defences to passing off . . . . . . . . . . . . . . . . . . . . .

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Illustrations of the tort...........................
The foreign claimant and well-known marks . . . . . . . . .
The future of passing off . . . . . . . . . . . . . . . . . . . . . . . .
Registration of Trade Marks . . . . . . . . . . . . . . . . . . . .
The Meaning of ‘mark’ . . . . . . . . . . . . . . . . . . . . . . . . . . .
Absolute Grounds for Refusal........................
Relative Grounds for Refusal . . . . . . . . . . . . . . . . . . . . . . . .
Reflect and Review. . . . . . . . . . . . . . . . . . . . . . . . . . .
Trade Mark infringement and Defences . . . . . . . . . . . . . . .
Overview of Trade Mark Infringement . . . . . . . . . . . . . . . . . .
Categories of Infringing Acts . . . . . . . . . . . . . . . . . . . . . . .
The Scope of Trademark Protection . . . . . . . . . . . . . . . .
General defences to infringement . . . . . . . . . . . . . . . . . . .
Comparative advertising..........................
Exhaustion of Rights . . . . . . . . . . . . . . . . . . . . . . . . . . .
Revocation and Invalidity . . . . . . . . . . . . . . . . . . . . . . . .
Character, personality and image merchandising; licensing of Trade Marks . . . . . . . . . .
Definition of character merchandising . . . . . . . . . . . . . .
Possible means of obtaining protection . . . . . . . . . . . . . . . .
Licensing of Trademarks. . . . . . . . . . . . . . . . . . . . . . . . .
Introduction to Patents . . . . . . . . . . . . . . . . . . . . . . . .
The History of Patent Law.........................
Justifications for Patent Protection . . . . . . . . . . . . . . . .
Key issues in Patent Cases . . . . . . . . . . . . . . . . . . . . . .
Patentability. . . . . . . . . . . . . . . . . . . . . . .
The Meaning of ‘an invention’ . . . . . . . . . . . . . . . . . . . . . .
Excluded Subject Matter. . . . . . . . . . . . . . . . . . . . . .
Novelty . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Inventive step . . . . . . . . . . . . . . . . . . . . . . . . . . .
Capable of Industrial Application......................
Ownership of patents and employee inventions . . . . . . . . . . . .
Who is an Inventor? . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Ownership of employee Inventions . . . . . . . . . . . . . . . . . . .
Compensation for Employee Inventions . . . . . . . . . . . . . . . . .

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Dealings in Patents . . . . . . . . . . . . . . . . . . . . . . . . . .
Patent Infringement and Defences . . . . . . . . . . . . . . . . .
Overview of Patent Infringement . . . . . . . . . . . . . . . . . . . .
Categories of Infringing Acts . . . . . . . . . . . . . . . . . . . . . . .
Defences to Infringement . . . . . . . . . . . . . . . . . . . . . . .
Revocation.................................
Interpretation of Patent Claims . . . . . . . . . . . . . . . . . . . .
Feedback to activities. . . . . . . . . . . . . . . . . . . . . . . . .
International Programmes

Introduction: the challenge of intellectual property

Intellectual property is a relative newcomer to the law curriculum. It is perceived as being very ‘trendy’
and topical. Nevertheless, many students find it a challenging subject. Why should that be?

First, the subject itself was, for many years, regarded as being a very specialized practitioners’ area and
not necessarily appropriate for academic study. The first student textbooks only appeared in the 1980s,
and there were (and still are) few academic journals in the United Kingdom devoted to the subject.
Despite the fact that the subject is now well-established in the undergraduate curriculum, it remains
heavily influenced by practitioners and the commercial demands of their clients. It is very litigation
oriented.

Second, the principal areas of intellectual property law, namely patents, designs, copyright, trademarks
and breach of confidence have surprisingly little in common with each other when examined in detail.
Although they all operate to protect various forms of human creativity, the scope of each is quite
different. Some are statute-based; some are derived from case-law. Each has its own discrete set of legal
rules for the creation, ownership and infringement of the right in question.

Further, each area presents its own intellectual challenge to the student. In the case of copyright, although
the basic principles are relatively straightforward, under United Kingdom law the rules themselves are
very detailed. As a simple example, while copyright law in the United States of America (USA) has a
general, flexible defence of ‘fair use’ to copyright infringement, under the United Kingdom’s Copyright,
Designs and Patents Act 1988, as amended, there are over 50 separate defences to copyright infringement,
each with very precise criteria. Attention to detail is therefore paramount. By contrast, in relation to

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designs, the law itself is complicated, with potentially five diverse means for a designer to obtain legal
protection for their creative efforts. Each of these has its own criteria for obtaining protection, ownership,
duration and infringement. The challenge for the student is to identify which is the appropriate method of
protection, depending on the facts of the case.

Trade marks act as a means of communication between the manufacturer of goods and the ultimate
consumer. Whether a particular brand name is capable of registration or whether, once registered, it has
been infringed, are issues heavily dependent on the court’s view of how words and other symbols
conveying messages are perceived and understood by English consumers. Those for whom English is a
second language may find the fine nuances of meaning given by such signs hard to grasp.

Finally, in the case of patents, the legal principles are again quite straightforward. What many students
find difficult are the cases themselves. Many law students do not have scientific backgrounds and
therefore believe that they will not understand the technology being discussed by the judges when
deciding issues of patent validity and infringement. ‘Techno fear’ gets in the way. The solution is to
concentrate on the legal principles. It is not necessary to have a PhD in biotechnology to be able to
understand the law of patents.

Further, some of the areas covered by intellectual property, for example the tort of passing off and the
action for breach of confidence, are almost entirely ‘home grown’ – that is they are products of English
common law. As case-law subjects, they require students to digest a large number of judicial decisions,
many of which appear to be contradictory. The remaining areas of intellectual property have been heavily
influenced over the last three decades by outside forces, in the shape of conventions, both international
and regional, and secondary legislation of the European Union (EU).

Last, the pace of change over the last decade has been frenetic. Apart from significant changes to
intellectual property legislation, there has been a huge amount of case law, both domestic and European.
Keeping up to date is essential. Indeed, textbooks may well become out of date almost before they are
published.

Patents
A patent is concerned with applied technology, that is with how things work, not with abstract ideas. The
subject matter of a patent, called an invention, can be either a product (a tangible item) or a process (a
method of making something or a means of using something). The criteria for patentability are that the

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invention must be new, contain an ‘inventive step’, be capable of industrial application and must not fall
within the statutory list of excluded subject matter. To determine whether an invention is new and has an
inventive step, it is compared with all information which is available to the public at the date the
application is made. This information is called ‘the prior art’.

Copyright
Copyright is the right to stop the copying and distribution of certain categories of ‘work’. Examples of
items which are potential copyright works are books, plays, music, paintings, films, sound recordings and
broadcasts. To qualify for protection, the work must be original (meaning ‘not copied’), be recorded in a
permanent form and the author must be a qualifying person. Unlike other statute-based forms of
intellectual property, copyright protection does not depend on registration but arises automatically once
the work is created. Copyright protection lasts for a long time, generally speaking for the lifetime of the
author plus 70 years. The copyright owner has the exclusive right to stop anyone else from reproducing
the work (that is, copying it), issuing copies of the work (including renting out copies), performing the
work in public, communicating the work to the public (whether by broadcast or the internet) or adapting
the work. They also have the right to stop anyone else from dealing in infringing copies of the work by
way of trade. However, to succeed in a copyright infringement action, the owner has to prove that the
defendant copied the work. Independent creation is therefore always a defence to copyright infringement.

Designs
The law of designs is concerned with the appearance of products, that is, with how things look. In design
law, what is protected is not the underlying article (which may be an everyday item such as a tea-pot), but
the design features which have been applied to it. Under United Kingdom law, a designer may have up to
three means of legal protection for their design, depending on the facts: registered design protection,
unregistered design right or copyright (two further means of protection are available under EU law).

In the case of registered designs, the criteria for protection are that the design must be new and have
‘individual character’, which means that it must produce on the informed user (that is, a potential
customer but not necessarily a consumer of the product) an overall impression which is different from
that of previous designs.

For some industries, especially those in which the design of products changes rapidly, the formality and
delays inherent in a registration system are felt to be inappropriate. The alternative means of protection is
the unregistered design right. This is a copyright-type right to protect the shape or configuration of the

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whole or part of an article. The right arises automatically, without the need for registration, once the
design has been created. The criteria for protection are that the design must be original (in the copyright
sense), not commonplace and recorded in a design document. The duration of protection, however, is
much shorter than copyright. The design right owner has the exclusive right to stop anyone else from
reproducing the design (that is, copying it) by making articles to it for commercial purposes, and the right
to stop anyone else dealing in infringing copies of the design by way of trade. To succeed in a design
right infringement action, the owner has to prove that the defendant copied the work, so that independent
creation is a defence to design right infringement, just as it is to copyright infringement.

Lastly, a designer may still, in certain limited circumstances, be able to claim copyright protection for the
appearance of an article. This is where the article is an artistic work in its own right, for example, a work
of artistic craftsmanship, such as hand-carved furniture or a sculpture. The criteria for protection and the
scope of protection are the same as for copyright above. The only difference is that if the artistic work has
been the subject of mass-production (that is, more than 50 copies of it have been made industrially).

Trade marks

A trade mark is a sign or symbol used in the course of trade to indicate the origin of goods or services. It
is an integral part of the consumer society, enabling customers to distinguish one product from another
and to choose between competing brands, returning to those which have given satisfaction and avoiding
those which have not. There are two legal routes to protecting a trade mark: by registration or by means
of an action in tort for passing off.

In the case of registered trade marks, the criteria for protection are that the sign must be capable of
graphic representation and capable of distinguishing the goods or services of one undertaking from those
of another. It must not fall within the list of absolute grounds for refusal (that is, objections which relate
to the inherent nature of the mark itself), nor must it fall within any of the relative grounds for refusal
(that is, it must not conflict with any prior rights). Once registered it is capable of lasting indefinitely.
Registration gives the proprietor the exclusive right to prevent others from using the same or similar sign
in the course of trade in relation to the same or similar goods (or, in some instances, dissimilar goods) for
which the mark is registered.

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Passing off

However, it is not compulsory for a trader to obtain registration for any brand name they may wish to use
in the course of trade. Alternative protection for unregistered trade marks (sometimes called ‘common
law’ trade marks) is available through the tort of passing off. Passing off is entirely judge-made law. At
times the cases appear to be contradictory. The inconsistencies may in part be explained by the fact that
passing off is highly dependent on the circumstances of each case and on the quality of evidence put
forward by the claimant. It is generally accepted that the ingredients of passing off are as stated by Lord
Oliver in Reckitt & Colman v Borden (JIF LEMON) [1990] 1 WLR 491 (HL). To be successful, the
claimant must prove that:

! his name, trade mark, logo or other visual symbol has, through use, acquired a reputation which has
generated business goodwill

! the defendant, by using this symbol, has made a misrepresentation in the course of trade to customers
that his goods or services are in some way ‘connected with’ the claimant

! the claimant has suffered or will suffer damage to his business goodwill as a result. The onus is on the
claimant to prove each element of the definition. If any one of these ingredients is missing, the passing off
action will fail. This may help to explain why registering a trade mark is preferable to relying on the
lottery of the passing off action.

Confidential Information

The action for breach of confidence is the means of protecting trade secrets. The action for breach of
confidence can also be used to protect personal and state information. It is the one area of intellectual
property law which can provide protection for ideas themselves. The action for breach of confidence does
not depend on statute, but on case-law. The accepted requirements for the action (established by Megarry
J in Coco v Clark [1969] RPC 41) are that the successful claimant must prove that:

! there existed confidential information

! the defendant owed the claimant a duty of confidence (which may be inferred from the circumstances,
such as the parties being in a joint venture)

! breach of that duty by the misuse or wrongful disclosure of that information by the defendant.

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If, however, the information or idea is known to the public (‘in the public domain’) then it is incapable of
protection.

Activity
Household Appliances Ltd is a leading manufacturer of consumer goods. The company is about to launch
a new kettle. The kettle is to be called the HOTTA and has an unusual shape. The kettle is more efficient
in heating water and is safer for consumers to use, because when boiled it remains cool to touch. The
reason for these two advantages is that instead of having a single wall, the kettle has a double wall, the
gap between the two layers of metal being filled with a special gas. Because of the special properties of
the gas, safety legislation obliges the company to supply a detailed instruction leaflet when selling the
kettle. The gas is obtainable only from certain specialist suppliers and the company is concerned in case
its competitors learn who these suppliers are. Identify which categories of intellectual property protection
should be considered by the company.

Summary

The principal categories of intellectual property rights are patents, copyright, designs, trade marks and
confidential information. Each protects different aspects of information. Patents protect inventions,
copyright protects works, designs are concerned with the appearance of products and trade marks with
brand names and other signs used in the course of trade. Confidential information protects trade secrets.
Protection for patents, designs and trade marks is normally obtained by means of registration, while
copyright arises automatically on the act of creation. Common law protection for trade marks and the
protection of confidential information is the result of case-law.

Property Rights

Intellectual property rights are, naturally, proprietary in nature. They can be bought and sold, mortgaged
and licensed just like any other type of property. A valuation can be put on them for contractual or
accounting purposes.

Nevertheless, it is very important to be able to distinguish between the property rights which exist in a
tangible item and the intangible intellectual property rights which may be embodied in that item. For
example, if A writes a letter to B, the piece of paper received by B will belong to B as it was intended as a
gift by the sender. However, the copyright in the words contained in the letter will belong to the creator,
A. Further, A may use a pen to write the letter. The pen will be A’s personal property, but there may well

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be a patent for the pen belonging to C Ltd, or perhaps, if the pen is of an unusual shape, C Ltd might own
a design right in respect of the pen. The fact that there are intellectual property rights over the pen does
not prevent the use or ownership of the tangible item by A, just as A’s ownership of copyright in the letter
does not affect B’s ownership of the piece of paper on which the letter is written. However, were B to
attempt to do something falling within the scope of A’s copyright (such as to copy the letter or to include
it in his autobiography which is about to be published in a newspaper) then A’s copyright may well
(depending on the circumstances) be infringed.

Territorial Nature of Intellectual Property Rights

Intellectual property rights are territorial in nature, that is, they arise as a result of national
legislation which authorises an official ‘grant’ of the right by a national intellectual property
office. In the case of copyright, which does not depend on registration, the ‘grant’ of the right by
United Kingdom law is automatic, providing the conditions in the CDPA are fulfilled. For
actions in passing off or breach of confidence, the ‘grant’ of the right is as a result of a judicial
decision in favour of the claimant.

This territorial nature means that an intellectual property right is only effective in the territory of
the state granting that right. As an example, a patent granted by UKIPO only has effect for the
territory of the United Kingdom. It does not give the patentee any rights outside the United
Kingdom and can only be infringed by conduct which occurs within the territory of the United
Kingdom.

There are various consequences of this proposition. First, where protection is required for a
patent or trade mark or registered design in more than one country, it is necessary to obtain
separate registration for that right in each country. It should be noted that various international
conventions exist which assist an applicant to make multiple simultaneous applications in several
countries.

Next, the content of a particular intellectual property right may vary from country to country.
Despite the existence of various international conventions which have attempted to standardise
intellectual property laws, differences do exist between the laws of the Contracting States. These
differences may relate to the detailed rules of a particular intellectual property right, or to the

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legal systems within which the right is enforced, or to the social and cultural values which that
legal system seeks to uphold.

One final consequence of the territorial nature of intellectual property rights will be mentioned
briefly at this stage, although it will be dealt with in much more detail in Chapter 13.

Monopolistic Nature

You may have noticed that the descriptions of the various categories of intellectual property rights given
above used the phrase ‘exclusive right’. This phrase embodies two important concepts. First, that
intellectual property rights are negative in nature, because the owner is given the right to exclude others.
To go back to the example above, A’s copyright in the letter written to B does not give A any positive
rights of ownership over the physical medium of the piece of paper. Rather, it gives A the right to prevent
B (or anyone else) from infringing any one of the particular rights conferred on the copyright owner by
statute, for example, the right to stop the letter being copied or communicated to the public. Second, the
phrase ‘exclusive right’ means that the owner of the intellectual property right is the only person who can
exploit the right. So, for example, in the case of a patent, the patentee is the only person who can make
the patented product, offer it for sale, dispose of it, keep it or use it by way of trade. In the case of a
registered trade mark, the owner is the only person who can apply the mark to goods, sell goods bearing
the mark, import or export the goods, or advertise goods bearing the mark. In other words, an intellectual
property right gives rise to a legal monopoly.

Present day intellectual property legislation contains many built-in safeguards to ensure that a balance is
struck between the rights of the intellectual property owner and free competition. Some of these
safeguards require the owner to pay renewal fees regularly (in the case of patents, registered designs and
trade marks).

Summary

The three principal characteristics of intellectual property rights are that they create intangible rights of
property, that they are territorial in nature and that they confer exclusivity. The intangible rights accorded
to the intellectual property owner must be kept separate from the ownership of the physical medium in
which those rights are embodied. Territoriality means that intellectual property rights are confined in their
effect to the state which has ‘granted’ that right. Exclusivity means that the owner of the right can prevent
others from certain types of conduct and that they are the only person who can do this for the duration of
the right concerned.

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Conventions

Since these have often been the catalyst for the creation and/or revision of domestic legislation. Most, but
not all, conventions are issued and administered by the WorldIntellectual Property Organisation (WIPO),
a UN agency based in Geneva. WIPO’s chief objectives are to encourage and assist developing and less
developed countries to establish effective protection for intellectual property rights, and to work towards
an international consensus on the standardisation of national laws.

Besides this educational role, WIPO administers a number of conventions dealing with intellectual
property. WIPO itself divides these conventions into three main types, namely protection treaties, global
protection systems and classification treaties.

WIPO protection treaties

Protection treaties specify the types of right which are to be recognised, the criteria for their protection
and the minimum standards to be applied to each type of right. Contracting States are obliged to adhere to
these criteria and standards in their domestic legislation. The prime example of a protection treaty is the
Paris Convention for the Protection of Industrial Property 1883 (as revised at Stockholm 1967) The Paris
Convention deals with those intellectual property rights which can be obtained by means of registration
(that is, patents, trade marks and designs). It also requires Contracting States to provide protection against
unfair competition. Membership of this Convention obliges a Contracting State to establish its own patent
office and, once established, for that office to issue certain publications (for example, a patents journal or
a trade marks journal). There are, however, two particular substantive rights created by the Convention,
namely priority claiming and national treatment, which you will come across in your studies.

Priority claiming (Article 4) enables an applicant for a patent, trade mark or design, once they have filed
an application in one of the Contracting States, to backdate all subsequent national filings made within a
specified period to the date of that first national filing, provided the later filings relate to the same subject
matter. The specified periods are 12 months for patents, and six months for trade marks and designs. The
ability to backdate a patent application by up to 12 months is of great practical importance in ‘the race to
the patent office door’.

National treatment (Article 2) is the cornerstone of the Paris Convention and of many other international
intellectual property conventions. It means that any state which becomes a signatory to the Convention is
required to provide the same protection under domestic law to foreign nationals as it does to its own
nationals. So, for example, the fact that the United Kingdom is a Contracting State to the Paris
Convention means that it must offer nationals from other Contracting States (for example, Australia or

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Japan) the same treatment under United Kingdom law as it gives to United Kingdom nationals. However,
because intellectual property laws differ from state to state, national treatment does not mean that (in our
example), United Kingdom law must offer Australian nationals the same protection as they receive

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