211

P A RT II I

INTELLECTUAL PROPERTY
212 Commercial and Intellectual Property Law and Practice
 Introduction to Intellectual Property 213

CHAP TE R 17

Introduction to
Intellectual Property

17.1 What is intelle ctual property? 213

17.2 Types of intellectual property 214
17.3 Public registration and administration 217
17.4 The UK’s withdrawal from the EU 217
17.5 Summary of intellectual property rights 218
17.6 Introduction to internation al property rights treaties 219

LEAR NING OUTCOMES

After reading this chapter you will be able to:

• explain what intellectual property is
• identif y the main types of intellectual property
• understand the role of public registration in the administration of intellectual
property rights.

17.1 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 w ithout 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 theor y, 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 ver y 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 aw ay 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 ow ners, possibly in many different places.
Only a limited treatment of these extensive areas of law is possible in this work and the
matters are approached as follows.
The question of protection of business reputation is dealt w ith in Chapters 18 and 19, which
deal with passing off and trade mark s. 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
214 Commercial and Intellectual Property Law and Practice

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.
The second area of protection is that given to 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 dealt with in Chapters
20 and 21, on copyright and database right protection.
A third area of protection, similar to protection of creativity, is that given to 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 ver y fine distinctions, if freedom of design and manufacture is to be
generally available to anyone who w ishes to make use of it. Chapter 22 deals with this area.
The general idea, here, is to prevent unauthorised commercial exploitation of the designs,
rather than simple copying for non-commercial purposes.
The fourth area of protection is that which allows persons of an inventive nature (in terms of
being able to do or make things) to be able to take advantage of a limited time period in which
they are able to exploit the commercial possibilities of their invention, in a monopolistic way,
by the use of registered patents. Even during this limited time period, the underlying inventive
thinking must be available to the public at large, so as to enter the collective body of human
know ledge, in exchange for the monopoly right of exploitation. This area is dealt with in
Chapter 23.
These areas of law, along with other concepts such as the protection of confidential
information and ‘know-how’ protection (dealt with in Chapter 24), 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
grow th 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
consisted primarily of IP assets.

17.2 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.

17.2.1 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-k nown 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.
 Introduction to Intellectual Property 215

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 w as 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 w as 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 as explained
at 17.2.2.

17.2.2 Passing off

This is a common law tort which enables a business to defend itself from someone who is
tr ying to tak e 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 (see 17.2.4). 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.
Other common law jurisdictions, such as New Zealand and Australia, also have a law of
passing off, w hereas civil law jurisdictions tend to approach the issue by way of a statutor y 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, mistak e 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.

17.2.3 Copyright
Copyright is a right to prevent copying of creative expression, such as writing, art, music,
architecture, film and even computer software.
It is an unregistered system, and for an infrignement 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
216 Commercial and Intellectual Property Law and Practice

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 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.

17.2.4 Designs
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 work s) cannot. Registration gives statutor y 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.

17.2.5 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, k nown as a patent specification.
The philosophy is that inventors, and those w ho 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. W hile 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 mak e 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 ver y 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
 Introduction to Intellectual Property 217

licence will be accompanied by a know-how licence, to give the licensee the best chance of
using the patent efficiently.

17.2.6 Conf idential 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.
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 know n as the
‘Uniform Trade Secrets Act’.

17.2.7 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

17.3 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’)
(w ww.ipo.gov.uk), which covers the formerly more separated functions of registration of
trade mark s, designs and patents and various other matters connected with different types of
IP within the UK. Additionally, IP issues w hich 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; see 19.13 and 20.10.

17.4 THE UK’S WITHDRAWAL FROM THE EU

Brexit has necessitated a review of the relationship between EU IP rights and UK IP rights. The
main UK legislative provisions which were introduced essentially have the aim of maintaining
the status quo, so for example providing for those with EU rights to be allowed to exercise
equivalent UK rights in the UK (as the EU right itself will no longer apply). W here appropriate
in the chapters that follow, these provisions will be explained.
218 Commercial and Intellectual Property Law and Practice

UK lawyers will still need to know about EU intellectual property systems, as clients are often
multinational or at least operate within the EU. For this reason, the following chapters will,
where relevant, make reference to EU systems.

17.5 SUMMARY OF INTELLECTUAL PROPERTY RIGHTS

17.5.1 Trade marks
What is protected?
What benefit is there?
How is it obtained?
How long does it last?
a brand name and/or a logo for goods or services
(also, in limited circumstances, shapes)
exclusive right to the use of the trade mark w ith
statutory protection
registration
indefinitely

17.5.2 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

17.5.3 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)

17.5.4 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

17.5.5 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 years from registration (maximum)
 Introduction to Intellectual Property 219

17.5.6 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)

17.5.7 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

17.5.8 Conf idential 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

17.6 INTRODUCTION TO INTERNATIONAL PROPERTY RIGHTS TREATIES

Strong protection for intellectual property rights (IPR) worldwide is vital to the future
economic grow th 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 (W TO) 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 w as 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 US
government encourages other countries to join and implement them.
220 Commercial and Intellectual Property Law and Practice

17.6.1 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 w ith interests in other areas, such as public
health and economic development.
Because TRIPS is over 25 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.

17.6.2 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 mark s – the distinctive identifiers of businesses that offer a ser vice, as
opposed to goods – ‘equal’ status w ith trade marks. Previously, many countries treated trade
marks and service mark s differently. The TLT required member nations to register ser vice
marks and treat them as they would trade marks.
The S LT 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 S LT 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 S LT, it is no longer necessary in
 Introduction to Intellectual Property 221

most instances to go through these procedures. This feature enables trade mark owners to
complete and file trade mark documents more quick ly, at less cost.
An additional advantage of the S LT is the harmonisation of the initial and renewal terms of
trade mark registration among signatory countries. The SLT provides for an initial 10-year
term, w ith 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.

17.6.3 Patent Law Treaty

The Patent Law Treaty (PLT), adopted by W IPO 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 countr y 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 ow ners 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.

17.6.4 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, D C, in 1970 and entered into force
in 1978. The Treaty was amended in 1979, 1984, 2001, and 2004. There are 156 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 W IPO-administered treaty, nationals or residents of a contracting State file a
single patent application, called an ‘international’ application, w ith their national patent
office or with W IPO as a receiving office. This automatically lodges the application for patent
protection in all contracting parties to the PCT.
222 Commercial and Intellectual Property Law and Practice

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 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 w hen 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.

17.6.5 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 D ecember 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. There are 128 countries which are
party 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 ow nership 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 w ith a single payment, in order to record the assignment of
a trade mark with all the member countries. Registration renew al 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.
 Introduction to Intellectual Property 223

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 countr y. This series of applications keeps the priority
date of the original international registration in each country. The holder also preser ves the
rights acquired in each member country, even if international registration fails.

17.6.6 The Hague System for the international deposit of industrial designs
The Hague System is an international registration system that enables owners to obtain
protection for their industrial designs with a minimum of formality and expense. A single
international application filed with W IPO’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 S ystem currently has 77 contracting parties.

17.6.7 Conclusion
In the information age, w ith technology advancing at an accelerating rate, simply
implementing TRIPS is not enough to establish a robust intellectual property system. While it
was the first comprehensive IPR agreement of its time, TRIPS is over 25 years old and reflects
a ‘snapshot’ in time. Technological advances in information technology, biotechnology and
other fields require the updating of national and international laws that protect IP.
Fortunately, WIPO has led the way in developing new international norms to meet these
challenges.
WIPO has also led the w ay in simplifying and streamlining the procedures for seeking,
obtaining and maintaining rights in multiple countries. Through its ‘G lobal Protection
Services’ and its harmonisation treaties, it saves creators and national IP offices a great deal of
time and effort. WIPO also makes available its excellent technical assistance for establishing
and improving IPR systems worldwide. Countries should look to both the WTO and to WIPO
when crafting their IPR systems.

SUMMARY
Intellectual property consis ts of a collection of leg al rights. Whilst there are typical
characteristics which are common to m ost of the rights, there are signif icant differences.
This chapter will have helped you to appreciate what the main rights are and g enerally how
they work . This will give you a sound basic understanding, which you may develop as you
read the following chapters dealing with each rig ht in detail.
224 Commercial and Intellectual Property Law and Practice