Intellectual property revision
Outcome Page
Trade marks 2
Passing off 6
Copyright 9
Database right 13
Patents 15
Confidentiality 18
Exploiting IP rights 20
Marketing agreements 24
Registered design right 27
Unregistered design right 29
Page 1 of 30
,Trade marks1
Definition
- A badge of origin – a way of distinguishing between your goods/services and those of your
competitors
- Needs to be distinguishable
o IPO guidance states that 5 years of goodwill can overcome this problem
o Goodwill can be shown through advertising, sales records, social media recognition,
surveys, etc
What is the mark/the goods?
- The Trade Mark Regulations 2018 (which came into force 14 January 2019) removed the
need to represent the mark graphically [s 1], which allows TM applications in digital formats
o The mark must be represented “in a manner which enables the registrar to
determine the clear and precise subject matter of the protection afforded to the
proprietor” – the key is certainty
o The Madrid Protocol still requires the mark to be capable of graphic representation
- Key issues
o Shapes – a distinctive shape can be registered, such as a Mini Cooper or a Coca-Cola
bottle, but non-distinctive shapes cannot be registered
o Colours – these can be trademarked, but it is difficult to establish and you would
usually need to evidence considerable goodwill
o Sounds – can be described through musical notation
Registered?
- Must be capable of being represented in the register 2 in a manner which enables the
registrar and other competent authorities and the public to determine the clear and precise
subject matter of the protection afforded to the proprietor, and of distinguishing goods and
services3 of one undertaking from those of other undertakings [TMA s 1(1)]
o What needs to be distinctive is the mark itself as a whole, rather than the particular
elements within it
- Refusal of registration
o TMA s 3 absolute grounds4
Do not satisfy the requirement of s 1(1) above
Devoid of distinctive character (be careful when a word is said aloud!)
Consist exclusively of signs/indications which may serve to designate the
kind, quality, quantity, intended purpose, value, geographical origin, 5 the
time of production/rendering, or other characteristics 6
Consider how inventive it is (e.g., Twiglets as opposed to Snax, or a
combination of words)
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235
2
238
3
239
4
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Page 2 of 30
, The shape of the goods themselves should be design rights, not
trademarks7
Customary in the established practices of the trade
Contrary to public policy or morality [s 3(3)(a)] 8
Bad faith applications [s 3(6)]9
Likely to deceive [s 3(3)(b)]10
Evidence of use to overcome absolute grounds 11
Minimum of 5 years’ use
Consider colours (e.g., Heinz tin colour)
o TMA s 5 relative grounds12
Identical with an earlier trade mark, and registered for goods or services
that are similar [s 5(2)(a)]
Similar with an earlier trade mark and registered for goods or services that
are identical or similar [s 5(2)(b)]
Trademark is identical and similar and earlier trade mark has a reputation [s
5(3)]
- Revocation of registration13
o Within a period of five years it has not been put to genuine use in relation to the
goods or services for which it is registered and there are no proper reasons for non-
use [TMA s 46(1)(a)]
o It has become the common name in the trade for a product or service for which it is
registered [TMA s 46(c)]
o Has become misleading [s 46(1)(d)]
What rights does ownership give?
- To use the trademark in the UK, and prevent others using it – a monopoly right
- To bring actions against infringers [s 9(1)]
Who owns?
- The party who registers
Duration?
- 10 years, with the option to renew the mark for subsequent 10-year period, without limit in
time
- Provided the mark does not lose its ability to distinguish the goods/services in question, and
is kept in (at least limited) use, it can remain in registration
Is it infringed?
Trademark identical Trademark similar
Identical goods Cannot register X or Y
Similar goods X or Y X or Y
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243
8
245
9
245
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245
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246
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Page 3 of 30
Outcome Page
Trade marks 2
Passing off 6
Copyright 9
Database right 13
Patents 15
Confidentiality 18
Exploiting IP rights 20
Marketing agreements 24
Registered design right 27
Unregistered design right 29
Page 1 of 30
,Trade marks1
Definition
- A badge of origin – a way of distinguishing between your goods/services and those of your
competitors
- Needs to be distinguishable
o IPO guidance states that 5 years of goodwill can overcome this problem
o Goodwill can be shown through advertising, sales records, social media recognition,
surveys, etc
What is the mark/the goods?
- The Trade Mark Regulations 2018 (which came into force 14 January 2019) removed the
need to represent the mark graphically [s 1], which allows TM applications in digital formats
o The mark must be represented “in a manner which enables the registrar to
determine the clear and precise subject matter of the protection afforded to the
proprietor” – the key is certainty
o The Madrid Protocol still requires the mark to be capable of graphic representation
- Key issues
o Shapes – a distinctive shape can be registered, such as a Mini Cooper or a Coca-Cola
bottle, but non-distinctive shapes cannot be registered
o Colours – these can be trademarked, but it is difficult to establish and you would
usually need to evidence considerable goodwill
o Sounds – can be described through musical notation
Registered?
- Must be capable of being represented in the register 2 in a manner which enables the
registrar and other competent authorities and the public to determine the clear and precise
subject matter of the protection afforded to the proprietor, and of distinguishing goods and
services3 of one undertaking from those of other undertakings [TMA s 1(1)]
o What needs to be distinctive is the mark itself as a whole, rather than the particular
elements within it
- Refusal of registration
o TMA s 3 absolute grounds4
Do not satisfy the requirement of s 1(1) above
Devoid of distinctive character (be careful when a word is said aloud!)
Consist exclusively of signs/indications which may serve to designate the
kind, quality, quantity, intended purpose, value, geographical origin, 5 the
time of production/rendering, or other characteristics 6
Consider how inventive it is (e.g., Twiglets as opposed to Snax, or a
combination of words)
1
235
2
238
3
239
4
239
5
242
6
240
Page 2 of 30
, The shape of the goods themselves should be design rights, not
trademarks7
Customary in the established practices of the trade
Contrary to public policy or morality [s 3(3)(a)] 8
Bad faith applications [s 3(6)]9
Likely to deceive [s 3(3)(b)]10
Evidence of use to overcome absolute grounds 11
Minimum of 5 years’ use
Consider colours (e.g., Heinz tin colour)
o TMA s 5 relative grounds12
Identical with an earlier trade mark, and registered for goods or services
that are similar [s 5(2)(a)]
Similar with an earlier trade mark and registered for goods or services that
are identical or similar [s 5(2)(b)]
Trademark is identical and similar and earlier trade mark has a reputation [s
5(3)]
- Revocation of registration13
o Within a period of five years it has not been put to genuine use in relation to the
goods or services for which it is registered and there are no proper reasons for non-
use [TMA s 46(1)(a)]
o It has become the common name in the trade for a product or service for which it is
registered [TMA s 46(c)]
o Has become misleading [s 46(1)(d)]
What rights does ownership give?
- To use the trademark in the UK, and prevent others using it – a monopoly right
- To bring actions against infringers [s 9(1)]
Who owns?
- The party who registers
Duration?
- 10 years, with the option to renew the mark for subsequent 10-year period, without limit in
time
- Provided the mark does not lose its ability to distinguish the goods/services in question, and
is kept in (at least limited) use, it can remain in registration
Is it infringed?
Trademark identical Trademark similar
Identical goods Cannot register X or Y
Similar goods X or Y X or Y
7
243
8
245
9
245
10
245
11
246
12
247
13
252
Page 3 of 30
