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Intellectual property

 

Intellectual property

Content:


Introduction


Registered and unregistered IP


Ownership of IP


International aspects


Intellectual Property Office


Patents


Trade marks


EU protection of food names


Designs


Copyright


Artist's Resale Right


Public Lending Right


Performance rights


Passing off


Legal deposit Libraries


Business and company names


Internet domain names


Confidential information and knowhow

Remedies for infringement of IP rights


Introduction - what is intellectual property?

Intellectual property (“IP”) is a generic term meaning broadly any original intellectual work or invention which is capable of being sold or transferred like other forms of property. IP includes copyright, trade marks, patents, designs and other forms of IP which have legal protection such as plant varieties.

IP may also include business names and reputation, internet domain names, and confidential information and knowhow.

Registered and unregistered IP

IP may be classified into two main types:


* IP which requires official registration for its validity including patents, trade marks and registered designs; internet domain names could also be included.


* IP which arises on creation and does not depend on registration including copyright, unregistered designs, unregistered business names and trade marks and business reputation and business secrets and confidential information including knowhow.

Ownership of IP

Generally the first owner of an IP right is the author or creator of the work or invention, or if the author or creator is employed, his employer. The person who commissions a work or invention from an independent contractor will not necessarily become the first owner (except in the case of designs).

Employees: The first owner of IP rights created by an employee in the course of his employment is generally the employer. It may be advisable to strengthen the employer’s rights by including specific IP and confidentiality clauses in the contract of employment.

Independent contractors: If you commission an independent contractor to create an IP work, he will normally be the first owner as the creator (except in the case of designs). If the contract to commission the work is not specific, you may only obtain a limited licence to use IP for the specific purpose for which it was created. Specific wording should be included in the contract if you require full ownership or an unlimited royalty-free licence of the IP work.
In the case of a domain name, it will normally be better to ensure that the name is registered in the name of your business rather than in the name of the agent.

International aspects of IP

This section describes IP rights in the context of UK law. However in a global economy, IP rights would be difficult or impossible to administer if the rights were different in every jurisdiction. Over the last 100 years or so, IP law has been harmonised to an extent by international treaties and to a high degree within the EU.

See further: World Intellectual Property Organization

Intellectual Property Office

The Intellectual Property Office (IPO) is the official UK body for the granting of patents and the registering of designs and trade marks. Its website provides valuable information about all forms of intellectual property, and the way in which businesses can manage and exploit their intellectual property in the UK and overseas.

The IPO is also responsible for developing and implementing intellectual property policy in the UK.

IP overview and self-assessment: The Intellectual Property Office website provides a good overview of the subject. You may wish to use the “IP Healthcheck” which presents an online questionnaire and a free report on IP issues which may affect your business.

What’s New items on this topic [go to the What's New page or archive for the full item]:

19/10/2013: IPO to publish report on IP challenges faced by SMEs
www.ipo.gov.uk/ipresearch-bankingip-sum.pdf
The IPO is to publish a report, ‘Banking on IP?, which examines the issue of access to finance for intellectual property (IP) faced by small and medium-sized businesses (SMEs). The full report, to be published shortly, recommends ways to help businesses, particularly SMEs, seek investment from banks to protect and invest in their IP. It also recommends ways to give banks the right information and support to value IP correctly.

Patents

The IPO defines a patent as follows: “a patent protects new inventions and covers how things work, what they do, how they do it, what they are made of and how they are made. It gives the owner the right to prevent others from making, using, importing or selling the invention without permission”.

The application process is lengthy, complex and expensive. Specialist advice (from a patent attorney) is usually essential.

Patent protection lasts up to 20 years. Principal legislation: Patents Acts 1977 and 2004.

It is essential to keep an invention secret until a patent application has been published, otherwise it will lose the aspect of novelty which is a pre-requisite for grant of a pantent. See Confidence and Knowhow

Read more on patents

Trade marks

The IPO defines a trade mark as: “a sign which can distinguish your goods and services from those of your competitors. It can be for example words, logos or a combination of both.” A trade mark is a badge of origin, used so that customers can recognise the product of a particular trader. To be registrable a trade mark must be:

* distinctive for the goods or services for which it is to be registered;
* not deceptive or contrary to law or morality; and
* not similar or identical to any earlier marks for the same or similar goods or services.

Trade marks are registered for particular classes of goods or services. There are 34 classes of goods and 11 classes of services.

Trade mark searches: the IPO website provides various types of trade mark searches.

Principal legislation: Trade Marks Act 1994; Community Trade Mark Regulation (Council Regulation 40/94 of 20 December 1993).

Read more on trade marks

European protection of food names


Introduction EU legislation provides for a system of registration of food names which denote foods made in a traditional way or made in a particular region. There are three designations of food names: * protected designation of origin; * protected geographic indication;

* certificate of specific character.


These protections are not in the nature of intellectual property but are a form of guarantee of origin or quality which is (to an extent) protected by EU and national law. Read more

Designs


Registered designs: the IPO defines a registered design as: “a legal right which protects the overall visual appearance of a product in the geographical area you register it. The visual features that form the design include such things as the lines, contours, colours, shape, texture, materials and the ornamentation of the product which, when applied to the product, give it a unique appearance.”

Unregistered designs: all original designs attract unregistered design right protection. The right is not a monopoly right; as in the case of copyright, it is a right to prevent copying. To qualify for design right, the design must be in the shape or configuration of a whole or part of an article. Two-dimensional designs, such as textile or wallpaper designs, will not qualify, although these qualify for copyright protection as artistic works and it is possible to apply for a registered design in respect of them.
The design must not be commonplace: well-known, ordinary or routine designs will not acquire design right.

Community Design Right: this is an unregistered design right for designs that were new and had individual character when made available to the public. The Community design right provides protection throughout the EU for three years. As in the case of the UK unregistered design right, it is not a monopoly right but is a right to prevent copying.

Principal legislation: Registered Designs Act 1949; Community Design Right Regulation (Council Regulation 6/2002 of 12 December 2001).

What's New ]see What's New page or archive for full item]:

15/11/2013: Utopia Tableware wins beer glass design claims
http://www.bailii.org/ew/cases/EWHC/IPEC/2013/3483.html
Utopia Tableware Limited v BBP Marketing Limited and another
[2013] EWHC 3483 (IPEC) Hearing Date: 12 November 2013
The claimant company, Utopia Tableware, designed and manufactured beer glasses, including the “Aspen” glass. The defendant companies also designed beer glasses, one of which was the “Aspire” glass. Both glasses were tall, waisted beer glasses. In December 2012, Utopia Tableware started legal proceedings against the defendants alleging that the Aspire glass breached: (i) unregistered design rights relating to the Aspen glass (the unregistered design rights); and (ii) a United Kingdom registered design (the registered design rights).

03/06/2013: Fruit punnet designer loses registered design claim but wins unregistered design
Sealed Air Ltd v Sharp Interpack Ltd and another [2013] EWPCC 23
http://www.bailii.org/ew/cases/EWPCC/2013/23.html
The claimant Sealed Air Ltd owned EU and UK registered design rights in punnets for soft fruit, and also claimed UK unregistered design rights in the punnets...

10/12/2012: Pack selection is not a protected “design”
Clinisupplies Ltd v Park and others [2012] EWHC 3453 (Ch)
CliniSupplies is a medical devices company which manufactures and markets products for the primary and secondary healthcare sectors. It claims to be a leading supplier of urology products and wound and skin management products. One of its products is a combined urinary catheter removal and insertion procedure pack for use in clinics or the community which it markets under the brand name Vesica.

Copyright


Copyright protects original literary, artistic, dramatic and musical works against unauthorised copying of the work for the period of the life of the author plus 70 years. Computer software is included in the category of literary work.

Copyright also protects other types of work such as sound recordings, films, broadcasts, cable programmes and published editions. The duration of these other copyrights varies depending upon the right concerned.

Copyright arises automatically and there is no registration process. In order to show that copyright in a work is asserted, it is desirable (and essential under certain international conventions) to include the copyright symbol © together with the name of the copyright owner and the year of creation.

Copyright broadly protrects the expression of a concept rather than the concept itself. In order to protect an idea or concept, it is necessary to use the law of confidence and/or a contract (see Confidence and Knowhow).

Principal legislation: Copyright, Designs and Patents Act 1988.

Artist's Resale Right and Public Lending Right

Artist's Resale Right Public Lending Right are stand-alone rights which are related to copyright but have separate statutory bases.

Artist's Resale Righ

The Artist's Resale Right (ARR) entitles qualifying authors of original works of art (including paintings, engravings, sculpture and ceramics) to a royalty each time one of their works is resold through an auction house or art market professional.

Duration of right: the right lasts for the copyright period of the life of the creator and 70 years after the creator's death. Since January 2012 ARR has applied to qualifying works by artists who have been dead for less than 70 years.

Price trigger for right: the right only applies when the sale price reaches or exceeds the sterling equivalent of €1,000 and is calculated on a sliding scale (see table below). The maximum royalty payable on any single sale is €12,500.

Public Lending Right

The Public Lending Right Act 1979 provides that, in accordance with the public lending right scheme (the PLR Scheme), there is conferred on authors a right, known as 'public lending right', to receive from time to time out of a central fund3 payment in respect of loans of their books4 to the public by local library authorities in the United Kingdom. The 1979 Act came into force on 1 March 1980.

The classes, descriptions and categories of books in respect of which public lending right subsists, and the scales of payments to be made from the central fund in respect of it, are determined by or in accordance with the scheme.

Duration of right: subject to any provision made by the PLR Scheme, the duration of public lending right in respect of a book is from the date of the book's first publication (or, if later, the beginning of the year in which application is made for it to be registered) until 70 years have elapsed since the end of the year in which the author died.

To qualify for payment, applicants must apply to register their books.


Read more detail in the detailed Copyright page.

Performance rights

Under Part II of the Copyright Designs and Patents Act 1988, rights analogous to copyright are conferred on conferred on performers and persons having recording rights. These rights are given to a:

* performer by requiring his consent to the exploitation of his performances (CDPA ss.181 to 184), and

* a person having recording rights in relation to a performance, in relation to recordings made without his consent or that of the performer (CPDA ss.185 to 188),

Moral rights: a performer also has the so-called ‘moral rights’ being the:

* right to be identified (CPDA s.205C); and the

* section 205F (right to object to derogatory treatment of performance (CPDA s.205F).).

Performance rights are independent of any copyright in, or moral rights relating to, any work performed or any film or sound recording of, or broadcast including, the performance (CPDA s.180(4)).

Performance

For this purpose, a performance means a live performance given by one or more individuals; and ‘performance’ means (CPDA s.180(2)):

* a dramatic performance (which includes dance and mime);

* a musical performance;

* a reading or recitation of a literary work; or

* a performance of a variety act or any similar presentation

Performances must be ‘qualifying’ (CPDA s.181) i.e. given by a qualifying individual (as defined in CPDA s.206) or takes place in a qualifying country (CPDA s.206).

Legal Deposit Libraries


Under the legal deposit system, a copy of every UK print publication must by law be deposited in the British Library by its publishers, and five other legal deposit libraries may request a print publication to be deposited with them. The Legal Deposit Libraries Act 2003 (‘the 2003 Act’) reaffirmed the legal deposit system for printed publications and authorised the Government to propose secondary legislation to allow for the legal deposit system to be extended to non-print works.

Legal deposit for web and other non-print works: the Legal Deposit Libraries (Non-Print Works) Regulations 2013 came into force on 6 April 2013. Many publications are now only released in a non-print format (either off or on line) . These Regulations are designed to ensure that the nation's non-print published output (and thereby its intellectual record and published heritage) is preserved as an archive for research purposes and the use of future generations.

Passing off

The English courts have developed the law of ‘passing off’ to protect a trader’s goodwill in his goods or services from being imitated by another trader in such a way as to deceive the latter’s customers into believing the goods or services are those of the former.

Comment: the difficulty with the action for passing off is often one of the cost and uncertainty of litigation. More certain legal protection may be obtained by registration of a trade mark.
See also: company and business names, and domain names.

The most recent authoritative statement of the elements of the action for passing off was set out by the House of Lords as follows:

(1) that the claimant's goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indicium;

(2) that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and

(3) that the claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation.

Read more on passing off

Business and company names


The names of registered companies and unincorporated businesses are in one sense core intellectual property. We deal with this subject on the Business and company names section.

Internet domain names


Internet domain names strictly are not IP rights as they do not depend on the general law, but on the practical working of the internet and the system of 'top-level domains'. However a domain name is in general transferable and it may acquire a significant value.


The Internet Corporation for Assigned Names and Numbers (ICANN) supervises the global domain name registration system. Guides to the internet protocol and domain name system may be found at: http://www.icann.org/en/about/learning/beginners-guides

Domain names are organised in a hierarchy and consist of one or more parts or “labels” which are strung together and delimited by dots, such as legaleze.co.uk. The right-most label conveys the top-level domain (“TLD”), such as .com or .uk. Each TLD has rules and a registry operator or Network Information Center (“NIC”) which is responsible for administering the domain.

ICAAN maintains a list of TLDs giving the contact details for the NIC of each domain. The list is at : http://www.iana.org/domains/root/db

Normally domain names are allocated on a first come first served basis. However, the rules of a TLD will normally provide a dispute resolution procedure whereby a person with prior established rights over a business name or trademark may challenge a domain name registration (typically on the ground that it was "abusive").

Choosing a domain name: A particular business name may not be available in the.com,.uk or other TLD of choice. A WHOIS search in the registry for the TLD required will reveal registered domain names and cotact details for the agent or registrant.
In some TLDs, a second level domain (“SLD”) is required to distinguish the type of person or entity who is the registrant. In the case of .uk, the most common SLDs in the .uk domain are .co.uk and .org.uk.

Read more: Internet domain names

Confidential information and knowhow

A concept or knowhow may be protected by a contract e,g, a confidentiality or non-disclosure agreement (NDA).For example, an inventor who has designed a new device, or an author or artist who has created a method of manufacture or a TV programme should require any recipient of the information to sign an NDA prior to disclosing it.

In the absence of an NDA or other contract, English law will to an extent protect information which a provider has given in confidence expressly or by implication. This protection was developed by the English courts as part of the "equity"  jurisdiction which focuses on a person's conscience as distinct from the common law jurisdiction protecting strict legal rights and remedies. In view of the uncertainties of relying upon the law of confidence, it will generally be preferable to protect information by means of a contract.

Protection by contract or the law of confidence has limitations. If a third party acquires the information by lawful means, or the information enters the public domain otherwise than by breach of contract or confidence by the recipient, the contract or confidentiality may no longer protect the information.

Read more on confidential information

Remedies for infringement of IP rights

If his IP rights are infringed, the owner will normally be entitled to recover damages according to the general common law principles applicable to any tort.

However, the measure of damages for breach of IP rights is a specialist area and the methodology applied in previous cases must be consulted.One method commonly used is to compensate the owner by imposing an obligation on the infringer to pay a notional 'royalty' on the sales of any infringing articles he has made.

The English common law rules have been complicated by EU legislation in the form of the Directive 2004/48/EC on the enforcement of intellectual property rights as implemented in the UK by the Intellectual Property (Enforcement) Regulations 2006. This legislation appliesto remedieds for enforcment of IP rights but it is not clear how this fits in to the existing English law.

Where there are disputed facts or complicated issues to be determined in order to arrive at the amount of damages, the owner may request the court to hold an 'inquiry as to damages'. Two recent examples of such an enquiry and the principles applied may be found in:

Experience Hendrix LLC and Another v Times Newspapers Limited [2010] EWHC 1986 (Ch)

SDL Hair Limited v Next Row Limited and others [2014] EWHC 2084 (IPEC)

Alfrank Designs Limited  v Exclusive (UK) Limited and Homestyle Operations Limited (Trading As Harveys) [2015] EWHC 1372 (IPEC)

Other remedies include:

* Injunction, i.e. a mandatory order not to commit the infringement in the future; this remedy is based in Equity rather than common law and is therefore discretionary;

* Account of profits: this too is an equitable remedy; it allows the owner of the infringed IP rights to elect to be compensated by the profits made by the infringer out of sales of the infringing articles; this may in some but not all cases produce a greater compensation than damages; however one difficulty about this remedy is that the owner must elect to require this alternative remedy before judgment is entered. The decision can have serious consequences for the claimant and may be a difficult one to reach. If the infringer has not made any profits but the claimant has suffered loss, the preference will be clear. However, the choice in other cases may not be clear.


[Page updated: 04/04/2016]

 

More information>

Patents

Trade marks
Copyright

Passing off
Domain names
Confidential information and knowhow