Other Types of IP

Question 1

What are the types of registered intellectual property rights in the UK/EU?

What do they protect? (3)

Answer 1

1) Patents - new products, processes, new uses of known products.
2) Trademarks (R) - protect origin of manufacture.
3) Registered Designs - protect the overall visual appearance of a product or part of a product.

Question 2

What are the types of unregistered IP rights in the UK/EU?

What do they protect? (3)

Answer 2

1) Copyright (C) - protects literary, dramatic, musical, artistic - aesthetic works, and derivative works.
2) Unregistered Design Rights - stops anyone from copying the shape or configuration of a product, 3D shape only.
3) Confidential Information/ Trade Secrets

Question 3

What can be protected by Copyright? (3)

Answer 3

Section 1 CDPA 1988: Copyright and Copyright works.

1) original literary, dramatic, musical or artistic works;
2) sound recordings, films or broadcasts; and
3) the typographical arrangement of published editions.

Question 4

What are the ‘requirements’ of copyright? (3)

Answer 4

1) Originality - s1(1)(a) CDPA
Copyright does not protect the idea but the independent expression of the idea.
It must be the ‘authors own intellectual creation’ - standard is not high. See Infopaq v Danske.

2) Must be in a tangible fixed form - s3(2)&(3) CDPA. Expression is protected as long as fixed by any means whatsoever or by anyone.
3) Must fall into category of recognised/protected works.

Once these requirements are met, copyrights vest automatically and no registration is required (although it is possible/advisable in places such as China for example)

Question 5

What is the relevance of Infopaq v Danske C-5/08 to copyright?

Answer 5

The ECJ held that printing is not transient in nature and consent was needed for Infopaq to use the publication.

In response to the first question, an 11-word extract of a protected work is a reproduction in part within the meaning of Article 2 of Directive 2001/29/EC, if the words reproduced are the expression of the intellectual creation of the author. The ECJ stated that it was for the national courts of EU countries to decide when such a reproduction is the author’s expression of intellectual creation.

Question 6

What is the duration of copyright for literary, musical, artistic and dramatic works?

Answer 6

The lifetime of the author plus 70 years.

Question 7

What is the duration of copyright for film? (more complicated)

Answer 7

70 years after the death of the last of:
Director;
Composer of the score;
Author of the screenplay and scriptwriter.

Question 8

Copyright lasts 70 years for films from the death of the last of who? (3)

Answer 8

70 years after the death of the last of:
Director;
Composer of the score;
Author of the screenplay and scriptwriter.

Question 9

What is the duration of copyright protection for sound recordings, TV and Radio broadcasts and computer generated works?

Answer 9

70 years from first broadcast

Question 10

What is the duration of protection of ‘publishers rights’?

Answer 10

This covers typographical layouts etc.

It lasts 25 years.

Question 11

What is the purpose of a Trade Mark?

Answer 11

A trade mark identifies the origin of goods or services so that consumers will not be confused into buying the wrong traders goods.

Trade mark law has been harmonised throughout the EU.

Key legislation:
UK Trade Marks Act 1994.

Question 12

How does Section 1 of the Trade Marks Act 1994 define a Trade Mark?

Answer 12

(1)… a ‘trade mark’ means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

Question 13

What are the requirements of a Trade Mark to be registered? (3)

Answer 13

1) TM must be a ‘sign’: capable of graphical representation, capable of distinguishing goods and services.
2) Must not fall within absolute grounds of refusal.
3) Must not fall within relative grounds of refusal.

Question 14

How often must a Trade Mark be renewed?

Answer 14

Every 10 years.
Lasts indefinitely if renewals paid and genuinely used (and hasnt become a generic term - that is it is still capable of distinguishing a particular specific goods or service).

Question 15

When could a Trade Mark be revoked? (2)

Answer 15

If not genuinely used in the UK for 5 years.

If it becomes generic.

Question 16

What are Absolute grounds of refusal for a Trade Mark? (9)

Answer 16

1) Not a sign
2) Not distinctive
3) Descriptive of goods/services
4) Customary signs/indications

Note: A TM may still be capable of registration despite the above four if it has acquired distinctive character through usage.

Double Note: A TM can also become less distinctive if it becomes customary.

5) Shapes that: result from the nature of the good itself (umbrella), are functional (where it is necessary to achieve tech result) or give substantial value to goods (porcelain container for gin in the shape of a traditional dutch house).

6) Against public policy
7) Deceptive
8) Use prohibited by EU/UK law
9) Bad faith application

Question 17

What are the relative grounds for refusal of a trade mark? (4)

Answer 17

1) Identical to pre-existing mark with identical goods/services.
2) Similar to pre-existing mark with similar goods/services where there is a likelihood of confusion.
3) Similar to marks that have acquired reputation.
4) When a new mark may take unfair advantage from a pre-existing mark/brand or cause unfair detriment to brand reputation.

Question 18

What are the four types of design rights?

Answer 18

1) Registered UK Designs
2) Registered Community Designs
3) Unregistered UK Designs
4) Unregistered Community Designs

Question 19

How do registered design rights and unregistered design rights differ in terms of level of protection?

Answer 19

The level of protection is stronger for registered rights.

Registration gives monopoly whereas unregistered gives right to prevent copying.

A person who comes up with the design independently is okay to continue to do so if the right is unregistered and the onus is on the unregistered right holder to PROVE the other party copied them. With a registered right there is no need to prove copying, only that the designs are the same.

Question 20

How do registered design rights and unregistered design rights differ in terms of length of protection? (3)

Answer 20

1) Up to 25 years for registered
2) 3 years for EU unregistered
3) up to 15 years for UK unregistered

Question 21

How long do unregistered EU and UK design rights last?

Answer 21

3 years for EU, up to 15 for UK

Question 22

How does Section 1 RDA 1944 define a ‘Design’?

Answer 22

‘Design’ means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.

Question 23

What are the requirements for a Design to be Registered? (4)

Answer 23

1) Must be a ‘Design’
2) Must be new
3) Must have individual character
4) Must not fall within excluded category

Question 24

How long do registered UK designs last and how often must they be renewed?

Answer 24

25 years max from filing, must be renewed every 5 years.

Question 25

When is a Design classed as new? (3)

Answer 25

A design is new if:
1) No identical design or no design whose features differ only in immaterial detail has been made available to the public;

2) The overall impression it produces on the ‘informed user’ differs from the overall impression produced on such a user by any design which has been made available to the public.
3) Design freedom must be taken into account: if there is little room for manoeuvre small differences in design will be more important eg a teapot must have a lid.

If a feature is not necessary, differences must be more significant.

Question 26

What is excluded from being registered? (3)

Answer 26

1) Features dictated solely by technical function;
2) Mechanical fittings;
3) Contrary to public policy or morality

Question 27

What piece of legislation covers Confidential Information/Trade Secrets?

Answer 27

TRIPS agreement
Article 39(2)

Question 28

Article 39(2) of the TRIPS agreement protects secret information so long as such information…. (3)

Answer 28

So long as such information:
1) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within circles that normally deal with the kind of information in question;

2) has commercial value because it is secret; and
3) has been subject to reasonable steps under the circumstances, by the persons lawfully in control of the information, to keep it secret.

Question 29

Is there statutory protection for trade secrets or confidential information in the UK?

Answer 29

There is no statutory protection for trade secrets or confidential information.

The law is entirely judge-made law.

The legal action to protect secrets is called: The action for breach of confidence.

Question 30

In the UK (via Section 2(4)-(6)) and EPC states (via Art 55 EPC) there is a ___-month period immediately proceeding the date of filing of an invention in which specific types of disclosure will not anticipate a patent application.

The disclosures are:
1.
2.
3.

Answer 30

6 month grace period.

Information obtainined unlawfully.

Information disclosed through a breach of confidence.

Disclosure at a recognised international exhibition (registered by the International Exhibitions Bureau)

Question 31

The UK approach to breach of confidence is known as the ‘Four Step Test’.

What are they?

Answer 31

1. Information itself must have the necessary quality of confidence.
   >not trivial or common place
   >not in public domain
   >not too vague
2. Information must have been imparted in circumstances importing an obligation of confidence.
3. Unauthorised and detrimental use of the information.
4. Trade secrets must be identified with precision in any action to enforce (added by case law, CMI Centers for Medical Innovation v Phytopharm)