Professional Development

Institute and Faculty of Actuaries

A practical guide to intellectual property
Workbook

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1. WHAT IS INTELLECTUAL PROPERTY?

The basic concept of intellectual property (IP) is that of protecting the products, results and
rewards of the exercise of human intellectual and commercial endeavour. The property rights
in these matters are a form of intangible property, comprising the legal right to stop others using
the owner’s property without permission and, in some cases, to give a monopoly right to exploit
that property commercially.
A problem with protecting things that originate in a person’s mind is that much of the subject
matter comprised in IP gets dangerously close to claiming, as private property, some things
which, at least in theory, should belong to humanity in common. Matters such as use of words
of the language, shapes and forms, colours, ideas, ways of thinking and doing things, methods
of manufacture, even geographical locations can form the subject matter of such rights. It
follows from this that the legal framework for identifying the existence and scope of a private
IP right must be very precise and technically ascertainable, if private rights are not to interfere
in the free and normal conduct of a civilised society. This has become an ever- increasing
problem as we have moved away from an object-based world towards a much more
information-based existence, where by making a few electronic connections, a person may use
and engage the IP of many different owners, possibly in many different places.
Intellectual property is capable of protecting:
 Business reputation through passing off and trade marks. Business exists to make
profits, and the surest way to make a profit is to become known and identified as a
reliable and reputable supplier of whatever a market requires. It is this protection of the
identity of the mark of an organisation with its own particular reputation and output,
particularly through the eyes of customers that is the binding connection between trade
mark law and passing off.
 Creative expression and the right of a creative person to develop property rights in the
tangible results of creative talents, so as to be able to stop other persons from making
free use of that property without the permission of the creator, by way of copying or
otherwise, whether for gain or not. This is achieved through copyright and database
right protection.
 Designs for shapes (both internal and external shapes) and appearances of objects,
which are intended to be created to that design, typically by way of manufacture. This
is a vital area for protection and one calling for some very fine distinctions, if freedom
of design and manufacture is to be generally available to anyone who wishes to make
use of it. The general idea, here, is to prevent unauthorised commercial exploitation of
the designs, rather than simple copying for non-commercial purposes.
 The commercial possibilities of an invention, in a monopolistic way, by the use of
registered patents.
These areas of law, along with other concepts such as the protection of confidential
information and ‘know-how’ protection, provide the framework within which
individuals, businesses and the general public are able to benefit from a principled,
reasonably predictable and equitable sharing of human intellectual output. This
framework gives protection to those who create and think; it allows the public to
benefit and develop from steps taken by innovators and designers; it encourages and
stimulates business growth and entrepreneurial spirit; lastly, it prevents an unseemly
and ultimately destructive free-for-all in the unlimited and unscrupulous use and
misuse of other people’s property.
A consequence of the ownership of IP is that it can come to represent much, if not all, of the
real asset value of many businesses. Like most other property it can be dealt in, sold, bought,
licensed or charged by way of security. Modern giants, such as the Microsoft organisation,
could not have come into existence so quickly, on such a titanic, financial scale, unless they
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consisted primarily of IP assets.

2. TYPES OF INTELLECTUAL PROPERTY

Intellectual property rights are now primarily statutory, supported by considerable case law.
Some common law rights still exist, however, mainly passing off and breach of confidence. The
main IP rights are as follows.
Trade marks
A trade mark is a brand name or other mark of trade origin, for example Coca-Cola for soft
drinks, BMW for cars and motorcycles, or Levi’s for jeans. It is a highly commercial right. Trade
marks are best protected by registration (and all well-known trade marks are registered). This
gives the owner of the trade mark statutory rights, under the Trade Marks Act 1994 (TMA 1994),
to defend its trade mark against infringers who are using the same mark or a similar one.
The registration of a trade mark can be renewed indefinitely, provided the trade mark does not
run foul of some restrictions under the TMA 1994. The oldest trade mark in the UK is the Bass
red triangle for beer. It was registered in the 1870s and is still valid today
In order to register a trade mark you must have a sign that is capable of being represented
graphically and it must be distinctive. A mark which is merely descriptive will be refused
registration – so for example you couldn’t trade mark the name cornflakes. Even more exotic signs
such as ‘Tastee-Freez’ have been refused registration as too descriptive. However words which
are individually descriptive have been registered as distinctive when put together, so for example
the name ‘BabyDry’ has been registered for nappies
Marks which indicate the geographic origin of goods are also usually refused registration. A mark
which is identical to an existing mark or similar and likely to confuse the public, will also likely be
refused registration.
In 1905, a pine tree logo, still in use by Fisons plc for chemicals, became the first registered
trade mark in Australia. In Hong Kong, the first registered trade mark was Nestle’s ‘Eagle’
Brand, granted in 1874 for condensed milk. The first registered trade mark in Japan was a
design of a seated figure, registered for pills and wound dressings, issued around 1884. The
first US registration was granted in 1870 for an eagle logo used for paints by Averill Paints (this
is no longer in use). The oldest registered mark still in use in the US is ‘Samson’, with the
design of a man and a lion, registered on 27 May 1884 for use on cords, line and rope.
Contenders for the oldest continuously used trade mark in the world are ‘Lowenbrau’, which
claims use since 1383, and ‘Stella Artois’, which claims use since 1366.
Most countries, including the US, have a similar trade mark registration system. Each of the 50
States of the US, however, has its own statewide trade mark registration system, which is
independent of the US national system. Trade marks registered in one (or more) States have
priority over subsequently registered national (federal) rights.
If a trade mark is not registered then it can only be protected by the law of passing off; except
that in the US, statute expressly provides protection for unregistered trade marks.
Passing off
This is a common law tort (a tort is a civil wrong which when breached gives rise to a right to
compensation) which enables a business to defend itself from someone who is trying to take
unfair advantage of the trading reputation of that business, for example by using its name or
selling goods in packaging that looks similar. Passing off is less important than trade mark law,
and also less certain as regards the outcome. It has also been diminished by the increased
scope of registered designs. Nevertheless, there are many situations in which the scope of
passing off can reach further than trade mark protection, so the two rights can complement
each other as they are not mutually exclusive, often being pleaded in the same proceedings.
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To establish a claim in passing off a person must first show goodwill or in other words business
reputation attached to goods or services. The reputation must be attached to the goods.
Reuptation can come in many forms attached to goods. For example:
 In a logo or packaging, e.g. Reckitt and Coleman managed to obtain an injunction to
stop a competitor that sold lemon juice in a plastic lemon similar to Reckitt and
Coleman’s Jif lemon
 Name. Neutrogena restrained use of the name ‘Neutralia’ by a competitor
 Get up of a product or its colour
Once goodwill is established a claimant must show misrepresentation that leads to potential
confusion of customers. For example, Asda made the Puffin chocolate bar which looked
remarkably similar to United Biscuit’s Penguin Bar. The court held that Asda was passing off
United Biscuit’s Penguin bar as customers would be likely to be confused by the two. Once a
claimant has established misrepresentation it then must show damage caused by the
misrepresentation. This could be damage to reputation because of an inferior product or
financial loss caused by lost sales.
Other common law jurisdictions, such as New Zealand and Australia, also have a law of
passing off, whereas civil law jurisdictions tend to approach the issue by way of a statutory law
of unfair competition. This often achieves similar aims. There is an international obligation to
ensure effective protection against unfair competition in the Paris Convention (signed by 171
States worldwide).
US trade mark law contains a special provision which provides protection for both registered
and unregistered (called common law) trade marks if the use by the second entrant into the
market is likely to cause confusion, mistake or deception as to source, origin and/or affiliation
with the prior user of the mark. The same law also makes false or misleading designations
relative to the goods actionable. All of this falls within the concept that the consumer should be
free to select goods based upon the reputation of the original, bona fide purveyor of those
goods, not the activities of the unlicensed copier. However, purely functional aspects of the
goods are not protected.
Copyright
Copyright is a right to prevent copying of creative expression, such as writing, art, music,
architecture, film and even computer software. It is important to note that copyright protects the
expression of an idea and not the idea itself. Classic copyright protects literary, artistic,
dramatic and musical works. Copyright also protects sound recordings, film, broadcasts and
published editions.
It is an unregistered system, and for an infringement to occur it has to involve ‘copying’.
Copyright does not stop you writing an exciting book about wizards just because JK Rowling
has produced many such books. However, it does stop you copying the works and detailed
plots of JK Rowling.
Copyright extends to pictorial and photographic creation, industrial plans, sculpture, recorded
music and films. These media are ‘artistic’ but also highly commercial, if you think about the
money involved in a major film, such as the James Bond films. It is the principal IP right in
computer programs and therefore of great importance today. Nevertheless, the right is not
registrable and comes into existence when the work is first created.
The author of a work owns the copyright in it unless it was created in the course of employment.
In which case the employer owns it.
The common law concept to prohibit copying has been eliminated in the US – copyright
protection is based solely on the Copyright Act of 1976.
All major jurisdictions worldwide have a law of copyright, and are signatories to the Berne
Convention which protects copyrighted works internationally.
Designs
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Designs that relate to the appearance of an object can be registered, but ones that relate solely
to its technical function (ie to how it works) cannot. Registration gives statutory protection for
up to 25 years.
There is also statutory unregistered design right protecting features of shape or configuration
of articles which are intended to be made available commercially. This protection can extend
for between 10 and 15 years, according to circumstances.
Most countries, however, including the US, have statutes specifically relating to
designs. In the US, the statute is part of the Patent Act. In the US, ‘design’ patent
protection is limited to the non-functional appearance of the goods. There is no
protection for the functional aspect of the goods, or their appearance or packaging.
Patents
Patents are a commercial IP right. A patent is protection for an invention. The invention could
be a better mousetrap, or a wonder drug to treat cancer, or anything in between. A patent is a
registered right, administered by the Patents Office.
A patent gives the holder the right to a monopoly for 20 years over the technology revealed in
the patent. ‘Revealed’ is an important concept. The description of the invention is made public
in return for the grant by the Crown of the period of protection. Thus, after the 20-year period
expires, the invention is then public property. Anybody can use it because the technology is
revealed in the patent document, known as a patent specification.
The philosophy is that inventors, and those who employ or sponsor them, should have this 20-
year period in which to exploit their monopoly. Were it otherwise, it would never be worth the
financial risk of the huge research and testing regimes needed for many modern inventions or
patented ideas undertaken by, say, drug manufacturers.
Virtually all countries have a similar Patent Act and permit protection of similar scope and
duration. A distinction must be made, however, with the US Patent Act. While the UK Act
provides the 20-year affirmative ‘monopoly’, in the US the Patent Act is a negative right,
specifically, the right to exclude others from practising the invention.
You can protect your invention in many international jurisdictions by making an application
under the Patent Cooperation Treaty. This involves making an initial single application through
the World Intellectual Property Organization (WIPO) or the European Patent Office (EPO).
Unfortunately, in the case of worldwide protection, the application then progresses as an
application in each jurisdiction.
Another possible means of exploiting a patent is by commercial exploitation of any confidential
information concerning the most efficient way to make the patented invention or process work.
The registered patent specification will show the world the inventive concept itself and how it
broadly works, but that is very different from showing the best and most cost- effective way to
make it work. Such additional information is termed ‘know-how’ and is, itself, highly valuable
and exploitable material, as long as it remains confidential. Typically, it is not independently
protected as a patent but is often ancillary to the patent, so that a patent licence will be
accompanied by a know-how licence, to give the licensee the best chance of using the patent
efficiently.
Confidential information
The law of confidence is not an IP right in a pure sense, but is often classified with the
mainstream rights as it is sometimes associated with them. For example, maintaining
confidentiality before submitting a patent application is vital to avoid destruction of the
invention’s novelty.
Case law rather than statute governs the law of confidence and, as you would expect, the vast
majority of cases relate to circumstances where express obligations of confidence are lacking
and implied duties of confidentiality have to be considered. It is, however, important to
remember that express obligations can (and often should) be imposed (eg, on key employees
or independent contractors). Where confidentiality cannot be protected by contractual means,
eg once it gets to third parties, the courts may use trust principles to restrict its use.
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Most jurisdictions protect confidential information based upon case law. The US has a dual
system of case law and adoption in each State of a version of a Model Law known as the
‘Uniform Trade Secrets Act’.

What else is there?

There are various other IP rights. For example:

The IP right What does it protect against?

Database right Copying of information
Semiconductor topography Copying of computer ‘chips’
Plant varieties Anyone else selling the registered new variety of
plant
Moral rights Inappropriate treatment of an artist’s work
Performers rights Copying of live performances

3. PUBLIC REGISTRATION AND ADMINISTRATION

It can be seen that much IP is protected by the use of registration of rights in public registers.
This is the work of what is now entitled the Intellectual Property Office (‘the IPO’)
(www.ipo.gov.uk), which covers the formerly more separated functions of registration of trade
marks, designs and patents and various other matters connected with different types of IP
within the UK. Additionally, IP issues which have an EU component are likely to come into
contact with the Office for the Harmonisation of the Internal Market (‘OHIM’), based in Alicante,
Spain. There is an almost seamless joint between the registration process and the way in which
courts, both national and EU, deal with IP actions and proceedings, in that harmonisation and
approximation of national IP legal frameworks, within the EU, has gone much further than in
many other areas of business and property law. This has followed upon a long-established
international tradition of according reciprocal rights to some IP, in the interests of fostering
world trade and development.

4. THE UK’S WITHDRAWAL FROM THE EU

At the time of writing, the UK is negotiating its withdrawal from the EU. It is predicted that
leaving the EU system will take at least two years to achieve. During this time the existing
relationship between UK and EU intellectual property rights will remain in place, and so the
following chapters cover not only UK rights, but their also their links with EU IP systems. As
part of the UK’s withdrawal, legal changes will need to be made to sever these links. For
example, it is unlikely that a UK patent would be included in the European Patent Convention
(EPC) bundle of national patents, nor that the Unitary Patent would cover the UK.

5. SUMMARY OF INTELLECTUAL PROPERTY RIGHTS

Trade marks

What is protected? a brand name and/or a logo for goods or services

What benefit is there?
How is it obtained?
How long does it last?
(also, in limited circumstances, shapes)
exclusive right to the use of the trade mark with
statutory protection
registration
indefinitely
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Passing off

What is protected? goodwill (eg, a logo or a name or associated ‘get

up’)
What benefit is there? gives protection against unfair imitation
How is it obtained? arises automatically (no registration)
How long does it last? indefinitely

Copyright

What is protected? ‘artistic output’; creative expression

What benefit is there? preventing copying
How is it obtained? arises automatically (no registration)
How long does it last? 70 years from death (usually)

Database right

What is protected? collections of information

What benefit is there? protects against unauthorised copying
How is it obtained? arises automatically (no registration)
How long does it last? 15 years from creation or revision of the
database
Registered design right

What is protected? new designs for products

What benefit is there? monopoly right to use and benefit from the design
commercially
How is it obtained? registration
How long does it last? 25 ears from registration (maximum)

Unregistered design right

What is protected? three-dimensional shapes of articles

What benefit is there? prevents commercial copying of articles
How is it obtained? arises automatically (no registration)
How long does it last? 10 years in most cases (maximum of 15)
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Patents

What is protected? new invention or process

What benefit is there? monopoly right to apply the technology
How is it obtained? registration
How long does it last? 20 years from application

Confidential information

What is protected? secret information

What benefit is there? protects against unauthorised disclosure
How is it obtained? arises automatically (no registration)
How long does it last? indefinitely

6. ORIGINS OF INTELLECTUAL PROPERTY LAW IN THE US

Article 1, Section 8 of the US Constitution allows Congress ‘to promote the progress of
science and useful arts, by securing for limited times to authors and inventors the exclusive
right to their respective writings and discoveries’.
The constitutional rationale was that, if authors were guaranteed the fruits of their labours,
they would be encouraged to write more. In today’s world, it is publishers, not authors that
hold copyright. And the dominant view of lawmakers is that the ‘limited time’ that copyright
should be in effect is quite long.
In the US, for example, studies in the past decade have estimated that over 50 per cent of
US exports now depend on some form of intellectual property protection, compared to less
then 10 per cent 50 years ago.

7. INTRODUCTION TO INTERNATIONAL PROPERTY RIGHTS TREATIES

Strong protection for intellectual property rights (IPR) worldwide is vital to the future economic
growth and development of all countries. As they create common rules and regulations,
international IPR treaties are essential to achieving the robust intellectual property protection
that spurs global economic expansion and the growth of new technologies.
The international community, however, did not have a single source for intellectual property
obligations until the 1994 Uruguay Round of the General Agreement on Tariffs and Trade
created the World Trade Organization (WTO) and the Agreement on Trade Related Aspects
of Intellectual Property Rights (TRIPS).
The significance of TRIPS is three-fold:

(a) it was the first single, truly international agreement to establish

minimum standards of protection for several forms of intellectual
property;
(b) it was the first international intellectual property agreement to mandate
detailed civil, criminal, and border enforcement provisions; and
(c) it was the first international intellectual property agreement subject to
binding, enforceable dispute settlement.
In effect, TRIPS laid the groundwork for a strong and modern IPR infrastructure for the world
community.
As a strong adherent of TRIPS and all other international IPR treaties, discussed below, the
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US government encourages other countries to join and implement them.
TRIPS
TRIPS came into force in 1995. It incorporates and builds upon the latest versions of the
primary IP agreements administered by the World Intellectual Property Organization (WIPO),
the Paris Convention for the Protection of Industrial Property, and the Berne Convention for
the Protection of Literary and Artistic Works, agreements that go back to the 1880s.
TRIPS is unique among these IPR accords because membership of the WTO is a ‘package
deal’, meaning that WTO members are not free to pick and choose among agreements. They
are subject to all the WTO’s multilateral agreements, including TRIPS.
TRIPS applies basic international trade principles to member States regarding IP, including
national treatment and most-favoured-nation treatment. TRIPS establishes minimum
standards for the availability, scope, and use of seven forms of IP: copyrights, trade marks,
geographical indications, industrial designs, patents, layout designs for integrated circuits,
and undisclosed information (trade secrets). It spells out permissible limitations and
exceptions in order to balance the interests of IP with interests in other areas, such as public
health and economic development.
Because TRIPS is 20 years old, however, it does not address several new developments,
such as the Internet and digital copyright issues, advanced biotechnology, and international
harmonisation, the process of creating uniform global standards of laws or practice. It sets
the floor for minimum IPR protection, not the ceiling. Since the conclusion of TRIPS, the WIPO
has addressed digital copyright issues in the so-called Internet Treaties, namely the WIPO
Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT).
What follows are summaries of other WIPO treaties that complement TRIPS, particularly in
addressing new technological developments.
The Singapore Treaty on the Law of Trademarks
The Singapore Treaty on the Law of Trademarks (SLT), which came into force in March 2009,
was enacted to revamp and replace the Trademark Law Treaty (TLT) of 1994.
The TLT was enacted to simplify procedures in the application and registration process, and to
harmonise trade mark procedures in different countries. The TLT harmonised procedures of
national trade mark offices by establishing the maximum requirements a contracting party can
impose.
The TLT gave service marks – the distinctive identifiers of businesses that offer a service, as
opposed to goods – ‘equal’ status with trade marks. Previously, many countries treated trade
marks and service marks differently. The TLT required member nations to register service
marks and treat them as they would trade marks.
The SLT carries on this work by incorporating provisions necessary due to the growth of
electronic communications.
From the trade mark owner’s perspective, the SLT saves time and money in the preparation
and filing of documents for the application. It streamlines the process for post-registration
renewals, recording assignments, changes of name and address, and powers of attorney.
Member countries to the SLT are required to permit the use of multi-class applications, enabling
trade mark owners to file a single application covering multiple classes of goods and services.
Another significant feature of the SLT that benefits trade mark owners is its prohibition of
requirements by national offices for authentication or certification of documents as well as
signatures on trade mark applications and correspondence. Many countries had required that
any signatures submitted in support of registration of a mark be notarised or otherwise legalised
in accordance with the laws of that nation. Under the SLT, it is no longer necessary in most
instances to go through these procedures. This feature enables trade mark owners to complete
and file trade mark documents more quickly, at less cost.
An additional advantage of the SLT is the harmonisation of the initial and renewal terms of trade
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mark registration among signatory countries. The SLT provides for an initial 10-year term, with
10-year renewals. Other key features of the SLT include an intent-to-use application system
(with proof of use prior to registration); streamlined renewal procedures; minimisation of the
elements to obtain an application filing date; and simplified procedures for recording changes in
name and ownership of trade mark applications and registrations.
Overall, the SLT is intended to facilitate international trade. It is of particular importance to
individuals and small businesses looking for markets in other countries.
Patent Law Treaty
The Patent Law Treaty (PLT), adopted by WIPO in June of 2000, entered into force on 28 April
2005. The PLT is the product of several years of multilateral negotiations on harmonising global
patent systems. The PLT harmonises certain patent application procedures in order to reduce
or eliminate formalities and the potential for loss of rights. The PLT does not harmonise
substantive patent law, that is, the laws of each country that set forth the conditions that must
be met in order to receive a patent for an invention in that country. WIPO is, however, holding
discussions regarding harmonisation of substantive patent law.
The PLT makes it easier for patent applicants and patent owners to obtain and maintain patents
throughout the world by simplifying and, to a large degree, merging national and international
formal requirements associated with patent applications and patents.
The PLT:
(a) simplifies and minimises patent application requirements to obtain a filing
date;
(b) imposes a limit on the formal requirements that contracting parties may
impose;
(c) eases representation requirements for formal matters;
(d) provides a basis for the electronic filing of applications;
(e) provides relief with respect to time limits that may be imposed by the Office
of a Contracting Party, and reinstatement of rights where an applicant or
owner has failed to comply with a time limit and that failure has the direct
consequence of causing a loss of rights; and
(f) provides for correction or addition of priority claims and restoration of
priority rights.
Patent Cooperation Treaty System
The roots of the Patent Cooperation Treaty (PCT) go back to 1966, when the Executive
Committee of the Paris Convention for the Protection of Intellectual Property called for a study
of how to reduce, for applicants and patent offices, the duplication of effort involved in filing and
obtaining patent applications for the same invention in different countries. The resulting WIPO
treaty, the PCT, was signed in Washington, DC, in 1970 and entered into force in 1978. The
Treaty was amended in 1979, 1984, 2001, and 2004. As of August 2015, there were 148
contracting parties to the PCT.
By simplifying patent application filing, the PCT assists innovators in obtaining patent protection
throughout the world. It also encourages small businesses and individuals to seek patent
protection abroad.
Under this WIPO-administered treaty, nationals or residents of a contracting State file a single
patent application, called an ‘international’ application, with their national patent office or with
WIPO as a receiving office. This automatically lodges the application for patent protection in all
contracting parties to the PCT.
The Treaty provides a longer period of time, 30 months, before applicants must commit
themselves to undertake the expenses of translation, national filing fees, and prosecution in
every country in which they want protection. By providing applicants with more time and
information to evaluate the strength of their potential patent and to determine marketing plans,
the 30-month period allows applicants to be more selective as to the countries in which they
will file. This is a major improvement over the 12-month priority period provided under the Paris
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Convention for patent applicants.
Under the PCT, WIPO publishes the ‘international application’, together with a non-binding
indication as to the potential patentability of the invention. This non-binding indication is a
preliminary search and/or examination by an ‘International Authority’, one of 11 patent offices
designated by WIPO that currently meet the Treaty’s minimum staffing and documentation
requirements. The non-binding indication helps applicants decide whether to proceed with their
patent applications in national or regional offices. Patent offices also benefit from these non-
binding indications of patentability when deciding whether to grant national or regional patents
based upon PCT applications. Foreign search reports identify relevant documents that help
patent offices to conserve resources in the examination process and to improve the quality of
examination.
Madrid System for the international registration of marks
The Protocol Relating to the Madrid Agreement Concerning the International Registration of
Marks – the Madrid Protocol – was adopted in Spain’s capital on 27 June 1989, and entered
into force on 1 December 1995. The Protocol is one of two treaties comprising the Madrid
System for international registration of trade marks. The first Treaty, the 1891 Madrid
Agreement, provides for the registration of trade marks in several countries through the filing
of one international trade mark registration with WIPO in Geneva.
The Madrid Protocol, developed because some countries had problems with the operation of
the Madrid Agreement, is seen as an improvement to the system for international registration
of trade marks. As a result, more and more trade mark owners are using the Madrid Protocol
every year to protect their trade marks in foreign countries. As of August 2014, there were 92
contracting parties to the Madrid Protocol.
The Madrid Protocol is a filing treaty and not a substantive harmonisation treaty. It provides a
cost-effective and efficient way for trade mark holders – individuals and businesses – to ensure
protection for their marks in multiple countries through the filing of one application with a single
office, in one language, with one set of fees, in one currency. Moreover, no local agent is
needed to file the application. Applications may be filed in English, French, or Spanish. An
application for international registration has the same effect as a national application for
registration of the mark in each of the countries designated by the applicant. Once the trade
mark office in a designated country grants protection, the mark is protected just as if that office
had registered it.

The Madrid Protocol also simplifies the subsequent management of the mark, since a simple,
single procedural step serves to record subsequent changes in ownership or in the name or
address of the holder with WIPO’s International Bureau.
Before the Protocol was enacted, burdensome administrative requirements for the normal
transfer of business assets often made it difficult for trade mark owners to carry out valid
assignments of their marks internationally. The Protocol allows the holder of an international
registration to file a single request with a single payment, in order to record the assignment
of a trade mark with all the member countries. Registration renewal also involves a simple,
single procedural step. International registration lasts 10 years, with 10-year renewal periods.
Trade mark owners may designate additional countries if they decide to seek protection in
more member countries, or if new countries accede to the Protocol.
If the basic application – or registration upon which the international registration is based – is
cancelled for any reason in the first five years, the Madrid Protocol gives the holder of the
international registration the opportunity to turn the international registration into a series of
national applications in each designated country. This series of applications keeps the priority
date of the original international registration in each country. The holder also preserves the
rights acquired in each member country, even if international registration fails.
The Hague System for the international deposit of industrial designs
The Hague System is an international registration system that enables owners to obtain
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protection for their industrial designs with a minimum of formality and expense. A single
international application filed with WIPO’s International Bureau replaces a whole series of
applications previously required in a number of States and/or intergovernmental
organisations party to the Hague System. The subsequent management of the international
registration is considerably easier under this system. For example, one single step is all that
is needed to record a change in the name or address of the holder, or a change in ownership
for some or for all of the designated contracting parties.
The Hague System currently has 66 contracting parties.

QUESTIONS

1. How long can a trade mark last for?

2. What are the requirements for a valid trade mark?
3. What needs to be proven to successfully bring a passing off claim?
4. Can you copyright an idea?
5. At work you write an article for a publication to be put out by IFoA. Who does the
copyright belong to?
6. How long a monopoly protection does a patent give?
7. What needs to be shown in order to obtain a patent?
8. What IP rights protect computer programmes?
9. Which IP rights need to be registered in order to be effective?
10. What does a database right protect?
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ANSWERS

1. Indefinitely. As long as a trade mark is registered and used (there is it a use it or lose
it approach to trade marks) it is capable of lasting forever.
2. It must be capable of being represented graphically and must be distinctive and not
the same as an existing mark.
3. Goodwill, misrepresentation leading to confusion and damage caused by the
misrepresentation.
4. No. Copyright protects the expression of an idea not the idea itself.
5. If the work was done in the course of your employment your employer owns copyright
it.
6. 20 years
7. To obtain a patent it must be shown that it is a truly inventive step and is state of the
art. Extensive searches are conducted by the patent office to see whether there is
any similar product or process in existence. A patented product or process must be
capable of industrial application.
8. Copyright
9. Patents, trade marks and registered design rights
10. The copying of information in a database for example a directory/
Professional Development

ifoa_IP – 4/2/2019 © The University of Law Limited 2019

Professional Development

ifoa_IP – 4/2/2019 © The University of Law Limited 2019