Intellectual Property

6
INTELLECTUAL PROPERTY
A. General 6.01 (6) Moral Rights 6.70

(1) Range of the Subject 6.01 (7) Ownership 6.73
(2) Intellectual Property and Monopoly 6.05 (8) Copyright, Digital Format and
(3) Legal Sources 6.07 the Internet 6.78
(4) European Union Policies 6.08 (9) Rights in Performances 6.82
(5) International Oversight 6.10 (10) Public Lending 6.83
(6) Actions Against Unconnected (11) Artists’ Resale Right (Droit de Suite) 6.84
Infringers 6.12 E. Industrial Designs 6.85
(7) Parallel Importation of Connected (1) General 6.85
Goods 6.15 (2) Registered Designs 6.87
B. Patents for Inventions 6.17 (3) Artistic Copyright 6.90
(1) Basis of the Law 6.17 (4) Unregistered Design Right: Community
(2) The Granting of Patents 6.19 and UK 6.92
(3) Validity of Patents 6.28 (5) The Rights in Comparison 6.95
(4) Infringement 6.33 F. Trade Marks and Names 6.97
(5) Right to a Patent 6.38 (1) General 6.97
(6) Licences 6.41 (2) Common Law Liability: Passing Off 6.99
(7) Compulsory Licences 6.42 (3) Common Law Liability: Injurious
(8) Crown Use 6.43 Falsehood 6.106
C. Confidential Information 6.44 G. Registered Trade Marks 6.108
(1) General 6.44 (1) Application Procedures 6.108
(2) Protectable Subject Matter 6.46 (2) Delimitation of Scope and
(3) The Obligation of Confidence 6.47 Classification 6.110
(4) Improper Use 6.50 (3) Registered Marks as Property 6.111
D. Copyright 6.51 (4) What can be a ‘Trade Mark’? 6.114
(1) General 6.51 (5) ‘Absolute’ Grounds of Objection 6.115
(2) Types of Work Protected 6.55 (6) ‘Relative’ Grounds of Objection 6.118
(3) Connecting Factor: Qualification 6.61 (7) Removal of Marks from the Register 6.121
(4) Duration 6.62 (8) Infringement of a Registered Mark 6.125
(5) Infringement 6.64
A. General
(1) Range of the Subject
(a) The generic term
‘Intellectual property’ is today used as a broad term, grouping together two distinct types of 6.01
right. The first type involves forms of legal protection over certain ideas or their expression—
patents for inventions, industrial design rights, copyright, database rights, plant variety rights
and breach of confidence. The second group is concerned with the protection of distinguish-
ing signs used in marketing and distribution—trade marks, trade names, get-up and the like.
This usage of the term has followed from its international adoption (the United Nations
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English Private Law. Third Edition. Andrew Burrows.
© Oxford University Press 2013. Published 2013 by Oxford University Press.
Chapter 6: Intellectual Property
organ in the field is the World Intellectual Property Organization (WIPO)) and it now has a
place in our statute law.1
(b) Intangible property

6.02 The subject matter of intellectual property rights (IPRs) is non-tangible and could be exploited by
as many competitors as wish, but for the intervention of the law. The characteristic which brings
these rights together is that the rightholder can prevent any other unauthorized person from using
the protected subject matter. IPRs are essentially negative in character—no one needs a patent to
exploit his own invention or a copyright to publish his own book. They are enforced primarily
by civil action for an injunction and damages brought by the rightholder; hence their place in
this volume.2 In large measure they share a territorial character: thus a British patent controls the
activities of other users of the invention in the United Kingdom and its adjuncts (oil rigs, ships,
aircraft, etc); it is the French patent which has the equivalent effect in France. Where rights need
to be granted by an organ of the state, application ordinarily must be made in or for each country
where protection is sought (though international mechanisms exist to facilitate that process).
(c) Forms distinguished

6.03 Beyond these common foundations, however, each of the schemes of protection has devel-
oped its own concepts in order to fit the particular subject matter. That is why each right calls
for separate description. As we shall see, some IPRs are effective against those who reach the
same conception independently, where others depend upon proof of copying. Some come
into existence only upon official grant, while others are informal in nature. Some endure for
specified periods, others are in essence indeterminate.
6.04 In a commercial situation, more than one form of intellectual property may have a bearing. In
practice, therefore, specialists have to be conversant with the whole field. The germ for a new
product may begin with a technical concept—say, a new heating system for an electric kettle.
It may be so novel as to rank as inventive and therefore to lead to a patent. As well as this, its
effectiveness may depend upon certain ingenuities in the process of production, which can be
protected because the know-how has been kept as confidential information; this entitlement will,
however, only be of value if the ideas cannot be discovered from the marketed product by reverse
engineering. Housing the new system may require a special design for the shape of the kettle and
other design features may be added which make it appeal to consumers for its appearance. These
may qualify for protection by way of registered design, unregistered design right and possibly even
by copyright. Certainly the design plans will bear a copyright which will stop them being copied
as plans. When it comes to marketing, the choice of trade marks and packaging may be more
important than any aspect of the product itself. If the product proves a long-lasting success, this
last form of right could continue after the time limits on any other form have expired.
(2) Intellectual Property and Monopoly

(a) Market power
6.05 Almost all intellectual property confers an exclusive right to stop others behaving in specified
ways and in that limited sense it confers a legal monopoly. But it does not thereby create a
1
See n 18. Previously the term signified the protection given to literary and artistic works—a more limited
and coherent usage, to be distinguished from ‘industrial property’–patents, trade marks, registered designs,
etc. For a critical review of the objects and achievements of IP law, see WR Cornish, Intellectual Property—
Omnipresent, Distracting, Irrelevant? (2004) (Clarendon Lectures, Oxford University, 2002).
2
Copyright and trade mark infringement also constitutes a nominate crime in many instances. It is there-
fore possible to call upon the police and also upon administrative agencies, such as trading standards authori-
ties and the customs service, in the battle against piracy and counterfeiting.
380
A. General
monopoly in the economic sense that the owner will have the power to restrict supply and
raise prices to the most profitable level. In the great bulk of cases, the market will contain
sufficiently close substitutes outside the range of the right for the rightowner to continue to
face the effects of competition. It is only in exceptionally lucky cases (pathbreaking inven-
tions, ‘must-have’ copyright works), that competition will be displaced. For the most part,
other factors need also to be present before such market power can be exerted. This can occur
where all the relevant intellectual property is drawn together—as in a pool of patents for a
given technology or the activities of a copyright collecting society.3 With these, competition
law authorities are necessarily watchful.
(b) Unfair competition

The various forms of intellectual property give protection against particular types of business 6.06
competition which are in some sense unfair. Beyond their range, imitation of ideas, informa-
tion and marketing devices is permitted as a necessary element in the make-up of a liberal
economy. Moreover, in contrast with the position in many other countries, no general tort of
unfair competition, or unlawful trading has developed in this jurisdiction in supplementation
of the specific forms of intellectual property right, either through case law or statute. Both
passing off and breach of confidence can be viewed as examples of unfair competition, but the
British choose to treat them as discrete wrongs, thereby keeping competition more open.
(3) Legal Sources

Not all forms of intellectual property are governed by statute. The basic law of patents, reg- 6.07
istered and unregistered designs and copyright are all entirely statutory. On the other hand
the law of confidential information is judge-made. The law of trade marks and names is a
hybrid: in part the protection is a matter of common law, since the torts of passing off and
injurious falsehood shield commercial reputation which has been built up by actual trade.
But equally trade marks for both goods and services may be protected through registration
under the Trade Marks Act 1994. Where a statute governs, it will be applicable to the whole
United Kingdom.4 In theory, case law gains its authority within the particular judicial system
where it arises. In practice, there is a strong tendency to consider all judicial precedents in this
subject to be applicable throughout the United Kingdom.
(4) European Union Policies

Because of the relationship between intellectual property and markets it is appropriate to 6.08
unify the rights within a political federation, and equally within a unified economic organi-
zation such as the European Union. Intellectual property then exists to the same extent
across the territory, and can be enforced for the whole area by a single process. In conse-
quence, intellectual property is the field of private law which has moved most rapidly towards
‘Europeanization’.
That movement is nonetheless an extremely complex and cautious one, which has only recently 6.09
made true progress. For those IPRs which turn upon official grant, the initial plan has in each
case been to create a unified Community right as an alternative to the rights available independ-
ently in each member state. At the same time, it is necessary to harmonize the national laws at
most points, in order to ensure that the alternatives operate to the same extent and in broadly
3
EC and UK competition laws retain an ultimate power to intervene to prevent an abuse of dominant
position: RadioTelefis Eirann v EC Commission [1995] ECR I-743 (Cases 241 and 242/91P) (the Magill
case—copyright in programme listings for TV channels).
4
Ancillary aspects, such as proprietary rights and remedies, vary somewhat, particularly in Scotland.
381
the same way. So far this has been achieved for registered trade marks,5 registered designs,6 and
plant variety rights. The plan for the Community patent has long been ready, and is only, at the
beginning of 2013, being given legal form through EU and national law.7 Copyright, as a right
which arises informally, is being drawn together at the national level by harmonization direc-
tives addressing particular aspects of the right, one by one, though the Court of Justice appears
to be effecting broader harmonization through the preliminary reference procedure.8
(5) International Oversight

6.10 While the real basis of IPRs remains within the national, or sometimes the regional, fold, inter-
national linkages are becoming more and more important. Since 1883, the Paris Convention
on Industrial Property (covering patents, designs, trade marks, and unfair competition) has
provided certain mutual bonds between countries around the world.9 Other important
aspects of international collaboration have been worked out in further conventions, such as
the Patent Co-operation Treaty of 1970.10 Since 1886, the Berne Convention on Literary
and Artistic Works has provided equivalent protection for the rights of authors, and latterly
other conventions have supplemented this—in respect of the rights of performers, sound
recording producers and broadcasters.11 Built upon the principle of national treatment, these
conventions secure, first and foremost, that intellectual property rights in one country are
not restricted to persons or acts connected with that country alone but are equally applicable
when the connection is to another contracting state.
6.11 These earlier international arrangements also moved in varying degrees towards specifying
the substantive and procedural content of national laws. The process has been carried much
further in the TRIPs Agreement,12 which forms part of the conspectus of the World Trade
Organization established in 1994. The detailed requirements of the TRIPs reflect the stand-
ards already observed in a long-established industrial country such as the United Kingdom,
but for many developing countries, they are a considerable (and overbearing) novelty. For the
least developed the changes represent such a major shift that time for compliance has been
allowed for them to introduce new legislation and administrations.13
(6) Actions Against Unconnected Infringers

6.12 The prime motivation in giving intellectual property protection is to exclude competition
from unconnected third parties—whether they are pirates and counterfeiters who deliber-
ately knock off imitations, or are more respectable traders who claim that their products are
different and fall outside the right, or consider that they have an entitlement or licence to
do as they wish. If the rights are to be of practical value against the general run of pirates,
the law has to provide efficient remedies. Since it is largely left to rightowners to secure their
own entitlements by civil action, the courts in England have done a good deal to increase the
strength of their armoury, particularly in pre-trial process.
5
See 6.108.
6
See 6.87.
7
See 6.27.
8
See 6.56, 6.64.
9
See eg 6.21.
10
See 6.20.
11
See 6.53.
12
Agreement on Trade-Related Aspects of Intellectual Property Rights, including Trade in Counterfeit
Goods.
13
Five years for developing countries; initially, ten for the least developed countries, though in 2005 that
deadline was extended until 2013.
382
A. General
Interim injunctions have long been the most frequent resort of rightowners, comparatively 6.13
few cases being fought to an actual trial for final injunction, damages, account of profits or
delivery up of infringing articles. Interim injunctions are available, provided that there is a
serious case to be tried, largely upon a balance of convenience, taking account of the effect of
granting the injunction upon the defendant and, on the other hand, of failure to grant upon
the claimant.14 However, in varying degrees related to the complexity of the issues, courts do
also bring into account their first assessment of the actual cause.15
In addition, where it is difficult to find the real source of piracy, an order may be obtained 6.14
even against an innocent party in the distribution chain requiring revelation of a transshipper’s
name.16 Where there is a strong likelihood that evidence of infringement will be destroyed or
hidden, the courts allow the surprise tactic of a search order for inspection (formerly called an
Anton Piller order).17 This is granted in a closed hearing sought by the claimant alone and is
executed by his solicitor, with supervision by another solicitor to prevent oppressive conduct.
The order is likely to contain an interim injunction and also to order revelation of sources and
intended recipients.18 It may well require a freezing injunction affecting the defendant’s assets
(formerly called a Mareva injunction) in order to satisfy orders in the cause.19
(7) Parallel Importation of Connected Goods

(a) The practice
A second motivation for granting intellectual property may be to allow the rightowner to 6.15
control its own products, or those of its licensees, after they have been released on the market.
Where the right has this added character, it can be used in particular to prevent the activities
of the parallel importer. If, as may happen for various reasons, the price of the same products
varies between countries, a parallel importer will purchase them in the cheap country and
transport them to the expensive country, for competitive sale which will prejudice the right-
owner’s market position there. Can the rightowner use his intellectual property in that second
market to prevent the importation of goods which came from his ‘stable’ but are no longer
connected with him? The matter is highly controversial. The case for adding such a power to
the right is arguably stronger where the right exists to promote creation and invention (copy-
right and patents) than where it merely supports an indication of origin (trade marks).
(b) EU policies
Within the EU, the basic policy of free movement of goods dictates that intellectual property 6.16
may not, absent special circumstances, be used in this way to prevent a parallel importer
from moving ‘legitimate’ goods between one member state and another.20 From outside the
14 American Cyanamid v Ethicon [1975] AC 396, HL (an elaborate patent action). See generally
22.35–22.37.
15
Series 5 Software v Clarke [1996] 1 All ER 853.
16
Norwich Pharmacal v Commissioners of Customs and Excise [1974] AC 133, HL. See generally The Rugby
Football Union v Consolidated Information Services Limited [2012] UKSC 55.
17
Now governed by the Civil Procedure Rules 1998, Part 25. See generally 22.28–22.29.
18
For the conditional removal of the privilege against incrimination in relation to these demands: Senior
Courts Act 1981, s 72 (the first statute to refer to ‘intellectual property’). See generally Phillips v News Group
Newspapers Ltd [2012] UKSC 28, [2012] 3 WLR 312 (interpreting scope of s 72).
19
Civil Procedure Rules 1998, Part 25. See 22.20–22.27. For discussion of remedies, see ch 21, esp
21.74ff (compensation), 21.224–21.229 (delivery up), and 21.153–21.154 (profits).
20
Treaty on the Functioning of the EU (TFEU), Arts 34–36, which also affects the rules of competition, Arts
101, 102. The test of what is a parallel import in this context is, have the goods been placed on one Member
State market by or with the consent of the rightowner in the country of import? See Centrafarm v Sterling Drug
and Centrafarm v Winthrop [1974] ECR 1147, 1183, and the ensuing case law. The rule applies only to the par-
ticular goods, not to all goods of the same type: Sebago v GB-Unic [1999] ETMR 681. And where the parallel
383
European Economic Area (EEA), a ‘Fortress Europe’ has, for the moment, been sealed off in
part by giving intellectual property the opposite effect.21
B. Patents for Inventions

(1) Basis of the Law
(a) Nature and objectives
6.17 The patent system offers an incentive to conduct research and investigations which will first
of all produce breakthroughs in technical understanding and will then sustain the process
of development needed to convert ideas into marketable products or processes. The right-
ness of rewarding the individual for his inventiveness is one motivating factor, but notions
of economic advantage are more important. Patents are not given to all who invent against
those who copy from them. They are given to the first to seek protection and they are good
even against those who independently discover the same idea. This occurs regularly, since new
techniques are there to be worked out by whoever is clever or determined enough to do so. As
a corollary of this preference for the first to act, the patentee is required to disclose his inven-
tion in his patent specification sufficiently clearly that others can apply it. Thus the whole
industry is saved from re-inventing, competitors are put further down the road towards their
own improvements, and they are able, once the patent expires, to adopt the invention itself,
should it still be in use. Patents therefore go to core features of most production industries
and in a few exceptional instances they confer monopoly privileges of immense value.
(b) Development
6.18 The foundations of British patent law stretch back at least to the Statute of Monopolies of 1624.
The rights have always turned upon a grant of privilege by the Crown or latterly the state. The
governing statute is now the Patents Act 1977 (PA 1977), which was designed to give effect to
the European Patent Convention 1973 (EPC), the Patents Co-operation Treaty of 1970 (PCT)
and (provisionally) the Community Patent Convention (1975–89) (CPC). The Patents Act 1977
took effect on 1 June 1978, the date on which the EPC and PCT also came into operation.
(2) The Granting of Patents

(a) British and European granting systems
6.19 Since the beginning of the twentieth century, the United Kingdom has had a system of
examining applications for patents before they are granted. Under the modern approach in
Europe, that form of control has been considerably strengthened. The process for applying
for a patent is accordingly a sophisticated one and most applicants employ a patent agent
to draft their patent specification and to negotiate with the relevant patent office or offices.
From the outset it will be necessary to consider in which countries around the world it is
desirable to achieve patent protection for an invention. Important new technologies are likely
to need protection in both developed and developing economies.
6.20 So far as the granting process is concerned, British and European alternatives exist. As has long
been the case, an application may be made to the British Patent Office. But instead, the appli-
cant may now use the European Patent Office (EPO; headquarters in Munich), which offers the
opportunity to proceed by a single application all the way to the grant of patents across Europe. If
importer has repackaged the goods, the rightowner may in certain circumstances be able to enjoin distribution:
see Boehringer Ingelheim KG v Swingward Ltd [2008] EWCA Civ 83, [2008] 2 CMLR 22.
21
See 6.130.
384
the application is successful, the applicant receives a bundle of national patents for each of those
participating countries which he has designated.22 Almost always the patents will be in common
form. Although accused of being cumbersome and slow, the EPO answers international industry’s
needs and is becoming increasingly popular. Entry into either the EPO or the national route to
patents in Europe is assisted by the PCT—a truly international linkage. The PCT permits the ini-
tial stages—filing, search and for some countries, preliminary examination—to be undertaken by
a single procedure, before files are passed on to local patent offices for completion and grant.23
(b) From application to grant
(i) First to file
By and large the procedures of the European and British offices are similar.24 Both are ‘first 6.21
to file’ systems, giving the prior right between rival inventors to the first to make an appli-
cation, not the first to invent.25 Much therefore turns on the priority date attached to the
application, which will be that on which the application is made unless the applicant can take
advantage of an earlier application (within the preceding twelve months) which was made in
another country belonging to the Paris Industrial Property Convention 1883–1979.26
(ii) Search
The first main step in the application procedure is the search for relevant ‘prior art’. This is con- 6.22
ducted by or on behalf of the patent office concerned and involves a survey of earlier patent speci-
fications and technical literature in order to see if it contains a description of the same invention
or one that is very similar. Normal practice is then to publish the patent application—in particu-
lar the proposed specification which describes the invention and defines the scope of protection
together with the research report eighteen months after the priority date. The applicant then has
six months in which to request an examination by the office in the light of the research report.
(iii) Examination
The examination relates to all the requirements for the validity of a patent and to certain 6.23
additional matters (concerning in particular the name of the inventor, unity of the inven-
tion and the formulation of the claims). During the examination, it is possible to modify the
proposed specification in light of the objections or for other reasons, subject to the condition
that the original disclosure of the invention is not thereby being added to in any essential
feature. A major object of the examination is to guarantee that the invention is sufficiently
disclosed by its description in the specification of the patent and that the claims, which define
the scope of the monopoly, are justified by that disclosure.
(iv) Grant
Once the examination is successfully completed, the patent will be granted. Its duration (sub- 6.24
ject to the payment of progressive renewal fees) will be for a maximum of 20 years, measured
from the date of application and not from that of the grant.27 No action for infringement can
22 For the long delay in instituting a Unitary European Patent, which is coming to fruition under a system
of EU regulations and an Agreement between most EU member states, see 6.27.

23 Organized by WIPO, the PCT makes use of a few leading patent offices as International Search
Authorities and International Examining Authorities.

24 For details, see the EPC, Parts III–VII and implementing regulations; PA 1977, ss 7–29 and corre-
sponding rules.
25 Even the United States has given up its ‘first-to-invent’ system: see the America Invents Act 2012 (which
despite its title does not apply only to American inventions).

26 See Paris Convention, Art 4; EPC, Arts 87–89; PA 1977, s 5. Priority can equally be claimed from an
earlier British application made within the previous 12 months.

27 So-called supplementary protection certificates (SPCs) can effectively give post-patent-expiry protec-
tion for certain (mostly pharmaceutical) products that have been delayed entry to the market because of the
regulatory process of securing authorisation necessary for sale. See generally Regulation (EC) 469/2009.
385
be instituted before the patent is granted. However, under certain conditions, damages can be
awarded for the period starting at the publication of the application.
(v) Opposition and invalidity proceedings
6.25 Even though an industry will know in detail the content of an application from the time of its
early publication, a third party cannot formally intervene (with the right of audience) to object
to the application. At most a competitor may draw the attention of the patent office to a pub-
lication or other evidence of prior publication or use of the invention or one very similar. After
grant, third parties may attack the validity of the patent in a formal opposition procedure.
6.26 Where the European route has been followed, an opposition after grant can be launched
within 9 months. It may attack the patentability of the invention, the sufficiency of the
disclosure in the specification or the permissibility of an amendment to it. Throughout its
life the validity of a British patent, whether granted by the EPO or the British office, can be
attacked either in the British Patent Office, using a largely written procedure, or more elabo-
rately before a patents court. In England this is the Patents Court of the Chancery Division
in the High Court (which is to include a sub-division taking over the functions of the Patents
County Court). The question of validity may be raised upon a separate claim or else by way
of counterclaim or defence in an infringement action brought by the patentee.28
(c) A Unitary European Patent

6.27 It has long been intended that a Community patent covering the whole EU would result
from an application to the EPO. For nearly 40 years the project has resisted implementation;
but by the end of 2012, all but two EU states (Italy and Spain) reached an agreement with the
European Council and the Parliament that the latter would enact two EU Regulations: the
first governing the new EU Unitary Patent,29 and the second limiting the languages of EU
states into which (for a period) the whole patent specification must be translated at grant.30
Failure to reach agreement on the languages issue had been one of the previous stumbling
blocks and it remains a major difficulty for Italy and Spain. A third element, much more
controversial, consists of an Agreement between the participating member states to establish
a Unified Patent Court (UPC) at levels of first instance and appeal with exclusive jurisdiction
over Unitary Patents.31 This UPC Agreement has been signed by most of the States; but it will
not become operational until it is ratified by 13 member states (including France, Germany
and the United Kingdom). This is likely to take time, not least because detailed schemes
of EPO charges, renewal fees and UPC fees remain to be agreed; likewise detailed rules for
court procedure in the UPC are still being drafted. It is claimed that a unitary patent cover-
ing most of the EU territory will be simpler and cheaper to obtain and to enforce and thus
be a particular benefit for European businesses of all sizes. Decisions upholding the validity
and enforceability of Unitary Patents will allow remedies in most cases to be granted across
the cooperating states in a single process, rather than by member states separately.32 Many
details remain to be settled. It is unclear to what extent questions of unitary patent law can
be referred to the CJEU and, if so, on what basis. The text of Regulation 1257/2012, articles
5 and 7, strives, by some cunning labelling, to prevent the UPC from referring questions to
the CJEU on the law relating to patent infringement (and perhaps also to patent validity).
28EPC, Arts 99–105; PA 1977, ss 72–74.

29Regulation (EU) 1257/2012.
30 Regulation (EU) 1260/2012. Eventually translation will be required only as needed upon the com-
mencement of litigation.
31 For its content see EU Council Paper 16351/2012.
32 One transitional element will allow, for at least the first seven years, an application to the EPO for a
patent designating a participating member state to continue to be dealt with under the present scheme, under
which national patents are granted for each of the states designated: reg (EU) 1257/2012, art 83.
386
The constitutionality of the two regulations has already been challenged by Spain before the
CJEU itself. At the time of writing the Court of Justice has rebuffed a procedural challenge to
the initiative. But other attacks on the legislative scheme are pending before the Court, and some
signatories of the UPC Agreement are having second thoughts as ratification approaches.
(3) Validity of Patents

(a) Patentable fields
Patents are accorded in order to protect ‘inventions’ that are capable of industrial application 6.28
(including in agriculture).33 A certain number of fields are expressly excluded from what
is patentable, such as creations which are purely intellectual or aesthetic, among which are
included methods of performing mental acts, doing business and programming a computer,
each of them ‘as such’.34 Methods of treating the human or animal body and animal and
plant varieties fall outside the scope of the system. But wholly new substances and substances
for which a new medical use has been discovered are patentable—indeed patents are more
valuable to the pharmaceutical industry than any other.35 An EU Directive on Protection of
Biotechnological Inventions was finally accepted in 1998 and now has effect in most member
states including the UK.36 A primary purpose is to specify those objections to patents relating
to human and animal genetic identification and alteration that arise on ethical grounds.37
(b) Prior art: novelty

To be patentable an invention must be both novel and involve an inventive step, when com- 6.29
pared with the ‘state of the art’. Under the PA 1977 this state of the art, which is assessed at
the priority date of the patent, includes any matter made available to the public ‘by a written
or oral description, by use or any other means’.38 If an inventor has revealed his idea merely
to a single person who is free to use it as he wishes, it will enter into the state of the art.39
Such a revelation, whether it comes from a description or from an observable use, may take
place anywhere in the world; the old British system, which took account only of prior art
available in the United Kingdom, is now superseded. Accordingly, an inventor who has no
interest in obtaining a patent but would not want anyone else to do so, can simply publish
it somewhere.
The test of novelty is essentially a factual investigation to decide whether the very invention 6.30
claimed in the patent has previously been made available to the public.40 In the case where
an inventor has discovered specific properties of substances or things which previously were
33 The patent specification must disclose a practical use for the invention that is at least plausible, even if it
has not yet been tested: Human Genome Sciences v Eli Lilly [2011] UKSC 51, [2012] RPC 6.
34 The obscure exclusion of computer programming is currently given limited scope in British courts:
Aerotel Ltd v Telco Holdings Ltd, Macrossan’s Application [2006] EWCA 1371, [2007] RPC 117, at [7]–[49].
The EPO has gone so far as to hold that the ‘as such’ exclusion does not apply wherever the claimed invention
has a technical effect, eg on the functioning of a computer; but still the invention must be shown to be novel
and non-obvious. For this and further exceptions, see PA 1977, s 1(2)–(4).
35
See PA 1977, s 4A, Sch A2, para 3.
36
Directive 98/44, introduced into the PA 1977 as Sch A2. Its terms have equally been adopted into the
EPC.
37
Article 6; and for related issues, see also Arts 3, 5. Controversially, the ECJ has ruled that any patent
claim which uses or derives from the production of stem cells by destruction of fertilized human ova is so
morally objectionable that it cannot be the subject of a valid patent in the EU: Brüstle v Greenpeace (C-34/10),
[2012] 1 CMLR 41 .
38
PA 1977, s 2, derived from EPC, Art 54. The contents of earlier applications are also brought into
account if subsequently published—but only for the assessment of novelty, not inventive step: s 2(3).
39
Télémechanique/Power supply unit [1993] OJ EPO 646.
40
eg, Beecham Group’s (Amoxycillin) Application [1980] RPC 261, CA.
387
known only in general, a selection patent may be available; in it the particular advantages
which have been made known determine the right that may be claimed.41
(c) Prior art: inventive step

6.31 By contrast, the test for ‘inventive step’ requires an evaluation which is often difficult to
make: given what is already known at the priority date, would the claimed invention have
seemed obvious to a skilled worker in the relevant industry who did not possess any capacity
to invent? If so the patent to that extent is invalid.42 This judgment depends very much on
the particular circumstances. In many cases, opinions will differ about what is obvious. The
testing of inventive step is a major contributing factor to the slowness and expense of obtain-
ing and defending a patent. A court may ask: was it obvious to try the alleged invention?
But they will do so only where there is a reasonable expectation of success, indicated eg by
plausible information that was available at the priority date of the patent.43 From the other
direction they may question why others did not earlier make the alleged inventive step. But
they do so only when there is evidence of a long-felt want for a solution, which is accompa-
nied by a demonstration that the invention made a product a commercial success.44
(d) Adequate disclosure, acceptable claims

6.32 The patent specification must conform to two main requirements. First, it must contain an
apt disclosure of the invention which will suffice for a skilled workman to perform the inven-
tion within the claims of the specification. In consequence the claims must not be in broader
terms than can be justified by the description.45 This highly important principle is the chief
means by which the monopoly granted is reasonably related to the significance of the inven-
tion over the prior art. Secondly, it is not permissible to introduce amendments to either the
description of the invention or the claims if they unfairly amplify the initial description or
broaden the monopoly. Thus it is crucial to give all the necessary details at the outset. With
important inventions, where continuing research is revealing more as it goes along, the best
strategy may be to file a succession of applications, each covering the significant additions to
knowledge. But what is relevant is knowledge about how to make something function. It is
not possible to patent something simply because more information has been obtained about
how it works as it is already known to do.46
(4) Infringement
(a) Scope of monopoly
6.33 For there to be an infringement of a patent, the defendant must be doing something con-
nected with a product, apparatus or process which has every essential characteristic called
for in a claim of the specification.47 The claims accordingly define the scope of the granted
monopoly and the meaning of the terms used in them is often the subject of acute contro-
versy. Patents which cover major new advances in a technology give real opportunities to
41
Dr Reddy’s Laboratories v Eli Lilly [2010] RPC 9, CA; and as to the scope of claims, see AgrEvo/Triazoles
(T939/92) [1996] OJ EPO 309; Conor Medsystems v Angiotech [2008] RPC 28, HL.
42
English courts have not hesitated to apply this requirement robustly to defeat very broad patents cover-
ing laborious but essentially straightforward advances in biotechnology: Genentech v Wellcome Foundation
[1989] RPC 147, CA.
43
Conor Medsystems Inc v Angiotech [2008] RPC 28. HL.
44
Mölnlycke v Procter & Gamble [1994] RPC 49, at 113,CA.
45
EPC, Arts 83, 84, 100; PA 1977, ss 14, 72; Biogen v Medeva [1997] RPC 1, HL; Generics (UK) Ltd v
Lundbeck [2009] RPC 13, HL.
46
Merrell Dow v Norton [1996] RPC 76, HL.
47
EPC, Art 69; PA 1977, s 125.
388
make monopoly profits. Serious competitors will therefore devote considerable energy to
discovering alternatives which fall just outside the scope of the patent. The claims fall to be
interpreted by reference to the descriptive body of the specification and any accompanying
drawings or diagrams. The claims are treated as addressed to skilled workers in the relevant
industry, rather than to research scientists or to lawyers.
(b) The protocol to EPC, Article 69

The British approach to claims, which treats them as ‘fence posts’ rather than ‘guidelines’, 6.34
leaves little scope for a finding of infringement where one element in a claim has been omit-
ted, and British courts are equally wary of treating the defendant’s alternative to a claimed
element as an equivalent within the scope of the patent.48 A protocol to Article 69, EPC, seeks
to ensure that those member states which formerly had a laxer approach to infringement now
adhere to this stricter conception. Its justification is the need to provide industry with clear
demarcations between what it can and cannot do; it appears at its harshest when the claims
have introduced some limitation which later appears to be unnecessary, thus making it easy for
competitors to sidestep the patent. Some variations of approach accordingly remain between
European countries, despite a growing acknowledgement of the primacy of the claims.49
(c) Acts amounting to infringement

The commercial and industrial activities which constitute infringement in British law are 6.35
drawn from the CPC, Articles 25–28, though with some variations in language.50 It is
infringement to make a patented product or to use a patented process, to dispose of a pat-
ented product or a product obtained directly from a patented process, to offer to dispose of
such a product, to use it, import it or to keep it for disposal. The acts in question must have
been carried out in the United Kingdom. Under the PA 1977, it is also infringement to offer
a person a process or to provide him (or offer to provide him) with means relating to an essen-
tial element of the invention for putting that invention into effect, knowing that the means
are suited to that end and are intended for it. If however the means are a staple commercial
product, this form of indirect infringement will occur only if their supply induces the persons
supplied to complete the act of infringement.
(d) Exceptions
There are exceptions relating to uses which are private and non-commercial and to uses which 6.36
are experimental in the sense of further developing the patented invention,51 as well as other
more specific exceptions. A person who has used an invention before the priority date of the
patent can continue to do so despite the grant.52 This however is a personal right which can-
not be transferred to another.
Traditionally, British patent law recognized no doctrine of ‘exhaustion of rights’. However, as 6.37
already noted, the principle of free movement of goods applies within the EEA so as in effect
to secure an exhaustion of the patent across national boundaries within the territory.53 So far
as the movement of goods to other parts of the world is concerned, the patent may be used to
48
See especially, Catnic v Hill & Smith [1982] RPC 183, HL; Improver v Remington [1990] FSR 181.
49
Kirin-Amgen v Hoechst ; [2005] RPC 169, HL.
50
PA 1977, s 60.
51
Much of the controversy over this exception concerns whether a generic pharmaceutical enterprise can
conduct research on a drug while it remains patented with a view to securing the authority to market it once
the patent expires.
52
PA 1977, s 64.
53
See 6.16.
389
stop exporting or importing, but only where sufficient notice is given that this is a condition
of each and every transfer of ownership of the products.54
(5) Right to a Patent

(a) Initial entitlement
6.38 The right to apply for a patent is conferred on the inventor (the person who makes the inven-
tion), or, in the case where the invention is made in the course of employment, upon the
employer. In either case, the right is treated as property and is therefore freely transferable
as well as being open to license.55 Where there are several inventors, they have joint rights.
Co-ownership of the patent can result either from joint invention or assignment of interests.
Each joint owner is entitled to make or use the invention and perform all other acts within
the scope of the patent. But he has no right to assign or mortgage the interest or grant; nor
may he license a third party to work within the patent without the consent of the others.56
(b) Employees’ inventions

6.39 The invention of an employee belongs to his employer when he is required to use his ability and
ingenuity to solve technical problems and also when he occupies a managerial position at such a
level as to owe a duty of fidelity to hold inventions for the employer. Otherwise they belong ini-
tially to the employee, even if they relate to the employer’s business.57 This rule applies only to an
employee and not to a person furnishing services from outside as an independent contractor.
6.40 The PA 1977 institutes a special regime giving an employed inventor the right to compensa-
tion in certain circumstances.58 No other intellectual property right is treated in this way. If
the patent produces an outstanding benefit for the employer, a British employee can claim
compensation in two cases: (a) where the invention belongs initially to the employer, and
(b) where the invention belongs initially to the employee but it has been transferred to the
employer for an inadequate consideration. The amount of compensation and its form (for
instance, lump sum or royalty) can be settled in proceedings before the British Patent Office
or the High Court. In assessing the amount, all circumstances of the invention, including the
costs of its development and subsequent exploitation, must be brought into account. These
provisions may not be displaced by an individual contract to the contrary, made in advance of
the invention, but they may be altered by the terms of a collective bargain which apply to the
employee in question. Since the issue may well not arise until years after the invention, a wise
employer keeps careful records of research and its subsequent development for long periods.
(6) Licences
6.41 In general, English law has treated the licensing of patents and other intellectual property as
a matter of free contracting. A patent licence (unlike an assignment) requires no particular
form; it may be oral or arise from conduct. Many licences, however, are more than a simple
permission to act within the scope of the patent. They are intended to regulate the relations
between a technology provider and a recipient over a considerable period. Often they cover
know-how as well as a patent or patent package. In practice they will be recorded in complex
documents, dealing among other things with the rights granted, duration, termination and
the payments to be made by the licensee. In all likelihood, there will be provisions relating
54
Betts v Willmott (1871) LR 6 Ch 239.
55
PA 1977, s 30. For registration of interests, see ss 32, 33.
56
PA 1977, s 36.
57
PA 1977, s 39.
58
PA 1977, ss 40–43.
390
C. Confidential Information
to the making of improvements by one or other side, to an exclusive licensee’s obligation to

work the patent effectively and a non-exclusive licensee’s right to equal treatment. The main
constraints on licences which transfer technology arise from the rules of competition under
the Treaty on the Functioning of the European Union (TFEU)59 and the equivalent rules
which are now applied within Britain by the Competition Act 1998.
(7) Compulsory Licences

Since the end of the nineteenth century, the British patent system has attenuated the exclu- 6.42
sive right of the patentee in circumstances where there is deemed to be an abuse of the
monopoly. Once three years have elapsed from grant of the patent, the Comptroller-General
of Patents has power to grant compulsory licences for the following reasons: the patent is not
worked to the fullest extent reasonably practicable in the UK or the EU; the UK demand for
a patented product is not being met on reasonable terms or is being met to substantial extent
by importation from outside the EU; the UK working is being hindered or prevented by
importation from outside the EU; or refusal of licences is preventing an export market from
being supplied with UK products or is prejudicing the establishment or development of UK
industry.60 The Comptroller is given considerable discretion in establishing the terms of such
licences. In practice very few applications are actually made and pressed to a final result. The
provisions are retained in the law as an encouragement towards reasonable exploitation of
patents on the basis of voluntary licensing.
(8) Crown Use

A particular form of obligatory licence benefits the Crown. Like individual citizens, the govern- 6.43
ment is in principle subject to patent rights. However acts performed for the services of the
Crown may be undertaken without the prior licence of a patentee, subject only to an obligation
to pay reasonable compensation for doing so.61 The acts must be performed for the services
of the Crown. Acts of manufacture and use are covered, but not in general trading activities.
To this in turn there are exceptions for supplying arms to foreign governments and supplying
medicines in the National Health Service. It is for the court to settle the rate of compensation.
C. Confidential Information
(1) General
Where one person gives another information or causes him to acquire information on 6.44
terms that it will be held in confidence, the breach of that understanding, either in the
form of disclosure or use of the information, is actionable. This form of relief against
breach of confidence developed in equity, principally for two reasons: Chancery was the
court with power to grant an injunction, the remedy most frequently sought; and the basis
of action stemmed from the equitable ideal of good conscience. Liability derives from the
moral notion that a person who is given information in secret ought to respect the confi-
dence thus imposed. Today, accordingly, the right is most often characterized as an equita-
ble obligation of good faith distinct from other legal or equitable categories of obligation
or property.62 While it may arise as a result of a contract (and in many cases contract alone
59
See in particular the block exemption contained in the Commission Regulation on Technology Transfer:
772/2004.
60
PA 1977, ss 48–50.
61
PA 1977, ss 55–59.
62
See esp Lord Denning MR, eg in Fraser v Evans [1969] 1 QB 349, 361, CA.
391
is the starting point), equally obligations of confidence can arise in circumstances which
are not contractual.63 Likewise, there is a tendency to treat certain types of confidential
information as proprietary in certain respects.64 Nevertheless the courts hesitate to treat
it as such for all purposes. Since the privacy of individuals is now protected under the
Human Rights Act 1998, the breach of confidence action has been developed by the courts
to give it recognition as part of English law. This rapid expansion of liability appears to be
generating a new form of tort.65
6.45 To be actionable, (1) the subject matter of the confidence must be capable of protection, (2)
there must be an undertaking to respect confidence or an equivalent expectation and (3) that
obligation must be broken by improper disclosure or use.66
(2) Protectable Subject Matter

6.46 The range of subject matter is broad: it may concern technical, commercial, governmental
or personal information, unless it is completely trivial.67 If it is technical in character, it
is not necessary to show that it is novel or inventive in the sense of patent law; neither
does it have to be expressed in a particular form as would be necessary in copyright law.
Useful tricks in industrial production and mere ‘ideas’ for a television series can both be
confidential subject matter.68 Information which is generally available to the public cannot
be protected, but if it is only known to a restricted circle, then it can be.69 If the infor-
mation has been given to a defendant in confidence, but it is then made public through
disclosure by someone else, it may well cease to be capable of protection.70 That is also the
case, where a product has been put on the market and a purchaser works out its secrets by
reverse engineering. However, in circumstances where not all the confidential information
can be discovered, the recipient may still be restrained from using it as a springboard to
make a head start.71 Protection may also be refused if there is an overriding public inter-
est in revelation of the information in the manner which the defendant is proposing. This
could arise where the information concerns an illegal, improper or dangerous activity, or
one which prejudices the proper administration of justice.72 Employees may accordingly
be left free to act as whistle-blowers.73
63
Saltman v Campbell (1948) 65 RPC 203, CA.
64
Thus technical know-how is frequently licensed and sometimes transferred, either alongside relevant
patents or by itself.
65 The Human Rights Act 1998 gives support to the right to private life of the European Convention on
Human Rights, Art 8, which has however to be balanced against the right of free expression in Art 10. See
esp Peck v UK [2003] EMLR 15, ECHR; Von Hannover v Germany [2004] 40 EHRR 1, ECHR Campbell
v MGN Ltd [2004] UKHL 22, [2004] 2 AC 457; McKennitt v Ash [2007] EMLR 113, CA; Associated
Newspapers Ltd v Prince of Wales [2006] EWCA Civ 1776; Douglas v Hello! (No 3) (appeal conjoined in OBG
v Allen) [2008] 1 AC 1, HL. See generally 17.344–17.348.
66
Coco v Clark [1969] RPC 41, 47, per Megarry J.
67
Private information about newsworthy people is protectable, unless unendurably salacious: Stephens v
Avery [1988] FSR 510 (relief granted against revealing a lesbian affair).
68
Yates Circuit Foil v Electrofoils [1976] FSR 345; Fraser v Thames Television [1984] QB 44
69
Dunford and Elliott v Johnson & Firth Brown [1978] FSR 143, CA.
70
Mustad v Allcock and Dosen [1963] RPC 41n, HL; and see AG v Guardian Newspapers (No 2) (‘Spycatcher’)
[1990] 1 AC 109, 285–286; where personal privacy is at stake, the right of action may continue even after
substantial, but not complete revelation.
71
Terrapin v Builders Supply [1967] RPC 375, 392, per Roxburgh J.
72
Lion Laboratories v Evans [1985] QB 526, CA (newspaper may reveal that police device for measuring
intoxication functions inaccurately; not sufficient just to tell the Home Office).
73
For their protection in labour law, see the Public Interest Disclosure Act 1998.
392
C. Confidential Information
(3) The Obligation of Confidence

(a) General
If a reasonable person would suppose that information was being supplied under conditions 6.47
of confidence, an obligation so to treat it will arise.74 This is equally true where one person
requests another to find out information, as where a person is employed or commissioned to
do research. There may be an explicit or implied contract to preserve secrecy, but this does
not necessarily have to be shown.75
(b) Former employees

Where the recipient or discoverer of the information is a former employee,76 special consid- 6.48
erations operate, which reflect a policy of leaving employees reasonable freedom to move jobs
or set up their own businesses:
(1) in the case of discrete technical information, such as a chemical formula, which an hon-
est person would recognize as belonging solely to the employer, a general obligation in
equity exists to preserve the confidence;
(2) where there is incidental information which has been generated by or for the employer, it
can be protected provided that there is a contractual stipulation not to divulge it to others
or to use it after leaving the employment. That stipulation must not be in unreasonable
restraint of trade, particularly in respect of its geographical coverage or duration;
(3) general skill and knowledge which is acquired as a matter of course in the type of employ-
ment cannot be protected.77
(c) Indirect recipients and ‘intruders’

The action for breach of confidence exists not only against the first recipient of the informa- 6.49
tion, but also against third parties to whom it is subsequently transmitted, whether or not
they know of the obligation attached to it. This is apparently true even where the indirect
recipient acts in good faith and provides valuable consideration.78 The obligation to conserve
secret information exists even when it is procured not as the result of a relationship but
because of clandestine surveillance or some equivalent intrusion.79 Where personal privacy is
at stake, this form of behaviour, particularly by the media, has become actionable.80
(4) Improper Use

An obligation of confidence may be violated either by disclosure or by use of the information. 6.50
A defendant may even be responsible where he has copied subconsciously, having forgotten
that he received the information from the claimant.81 In some circumstances a defendant
74
Coco v Clark [1969] RPC 41.
75
Saltman v Campbell (1948) 65 RPC 203, CA (provider of information can sue ultimate recipient, even
though no privity between them).
76
While the employment continues, the employee will owe a duty of fidelity. If this is not spelled out
expressly, it will arise by implication; but then its scope will be related to the nature of the employment and
the degree of responsibility assumed by the employee.
77
Cross J in Printers & Finishers v Holloway (No 2) [1965] RPC 269; re-established in Lancashire Fires v
Lyons [1996] FSR 629, CA; cf Faccenda Chicken v Fowler [1987] Ch 117, CA.
78
Stephenson Jordan v McDonald & Evans (1951) 68 RPC 190; PSM International v Whitehouse [1992]
FSR 489, CA.
79
A view apparently favoured in Francome v Mirror Group [1984] 1 WLR 892, CA.
80
See n 65.
81
Seager v Copydex (No 1) [1967] RPC 349, CA.
393
is only responsible where he has acted to the detriment of the claimant, but it is uncertain
whether this is a distinct condition for responsibility.82
D. Copyright
(1) General
(a) Nature and objectives
6.51 Copyright confers the right to prevent others without authority from reproducing or per-
forming in substantial measure the whole or part of a protected work. It is a right therefore
against copying, not against independent creation, and it concerns the way in which ideas
are expressed in a work, rather than the idea or concept which lies behind that expression.
Copyright arises not only in the creative activities of writers, composers, artists and film
directors, but also by virtue of the investment in ‘copyright products’. Accordingly it provides
legal shelter against unjustified misappropriation in a considerable number of industries and
its impact upon them varies in numerous ways.
(b) Development
6.52 Copyright in a modern sense first emerged with the famous Statute of Anne 1710. Before that
the London booksellers belonging to the Stationers Company enjoyed rights against piratical
interlopers which were aligned to a censorship by the state and church. From 1710, a copy-
right for authors of books and their assigns existed for a limited term of years and this was
gradually extended to engravers, sculptors, other visual artists, playwrights and composers.83
In 1911 the various copyrights were brought together in a single statute. Today the British
law is found in the Copyright, Designs and Patents Act 1988.
6.53 The United Kingdom has been a founder member of the Berne Convention on Literary and
Artistic Works (originally 1886), the Universal Copyright Convention (1952), the Rome
Convention on Performers’, Phonogram Producers’ and Broadcasters’ Rights (1961), the TRIPs
Agreement (1994) which contains copyright obligations,84 and the WIPO Copyright and
Performers and Phonograms Treaties of 1996, both concerned with digital communication. By
virtue of the Berne Convention, in 1911 the United Kingdom abandoned any requirement of
registration as a condition for acquiring copyright; it also adopted the life of the author and a
term of years thereafter (now 70 years) as the duration of rights given in literary, dramatic, musi-
cal and artistic works. These steps did much to bring British law closer to the authors’ rights and
neighbouring rights systems of continental Europe, a process which has been strengthened step
by step through a recent series of EC directives on harmonization of the national law.85
82
Coco v Clark [1969] RPC 41; special public interest considerations arise where the information con-
cerns governmental secrets: AG v Guardian Newspapers (No 2) [1990] AC 109.
83
The London booksellers claimed that at common law their right was perpetual and that the statute sim-
ply gave them enhanced remedies for its limited term—a view which Lord Mansfield and some other judges
supported, but others again opposed with equal eloquence. In Donaldson v Beckett (1774) 4 Burr 2408, the
House of Lords resolved this most intense of all arguments about intellectual property in favour of the limited
term prescribed by Parliament.
84
See n 12.
85
These include Directives on the Legal Protection of the Topographies of Semiconductor Products
(87/54); Legal Protection of Computer Programs (91/250, now codified in 09/24); Rental Right, Lending
Right and Related Rights (92/100, now codified in 06/115); Copyright and Related Rights applicable to
Satellite Broadcasting and Cable Retransmission (93/83); Term of Copyright and Related Rights (93/98,
now codified in 06/116 and amended by 11/77); Legal Protection of Databases (96/9); Certain Aspects of
E-Commerce (00/31); Copyright and Related Rights in the Information Society (01/29); and Resale Rights
to Works of Art (01/84).
394
D. Copyright
The arrival of digital technology and, above all, the Internet has set a very difficult agenda 6.54
for the future of copyright law. An introduction to this development is given at the end of
this Part.86
(2) Types of Work Protected

The 1988 Act confers copyright on works which almost always have (or are deemed to have) 6.55
authors.87 Among these two main types may be distinguished.
(a) The copyright conferred on authors in a traditional sense

The creators of literary, dramatic, musical and artistic works have long been grouped together 6.56
as ‘authors’ in copyright law. Their rights now last for the author’s life and 70 years.88 Their
creations are protected if they are ‘original’, which under UK law has long meant little more
than not being copied.89 This limited understanding of originality reflects a traditional British
focus on the ‘labour, skill and judgment’ that leads to the creation of a work, which can come
very largely from an assessment of the commercial value of a particular presentation, such as
a compilation.90 The traditional UK standard of originality has, however, been modified in
relation to the copyright in databases, in response to an EU campaign to impose a require-
ment of an ‘author’s own intellectual creation’ as the test.91 This is a (slightly) higher standard
than the traditional British notion of originality.92 Although the CDPA 1988 adopts the
alternative EU formulation for databases only, EU law extends its application to, at least,
computer programs and photographs.93
For the most part therefore copyright arises in any of these works which crosses a minimal 6.57
threshold of content, without there being any test of aesthetic quality. Thus literary works
encompass not only novels, poems and scholarly tomes, but also such mundane things as
trade catalogues and sporting programmes, and more recently computer programs. Derivative
works, such as the writing of a film script from a novel, and ancillary works, such as translation
and the preparation of a critical edition, may likewise attract their own copyright.94 Equivalent
approaches are adopted for dramatic and musical works: thus orchestrations and arrangements
of compositions attract their own copyright. The writing of a computer program now gives rise
to a literary work, though its purpose—the instruction of a machine—is a novel objective.95
The category of artistic works is elaborately defined to include not only (1) graphic works 6.58
of various kinds and three-dimensional art works, such as sculptures, but also (2) works of
architecture and (3) works of artistic craftsmanship. Works in the first of these categories are
protected irrespective of artistic quality, but this element must be present in relation to the
86
See 6.78.
87
Copyright, Designs and Patents Act 1988 (hereafter CDPA 1988), ss 1, 9.
88
CDPA 1988, ss 3, 4; for duration, see 6.62.
89
University of London Press v University Tutorial Press [1916] 2 Ch 601.
90
Ladbroke v William Hill [1964] 1 WLR 273, HL (form containing a selection of a set of football pool
competitions).
91
CDPA 1988, s 3A.
92
Football Dataco Ltd v Britten Pools [2010] EWHC 841 (Ch), [2010] RPC 17; Football Dataco Ltd v
Yahoo! Ltd (C-604/10) [2012] 2 CMLR 24
93
Software Directive, Art 1(3); Term Directive, Art 6 (photographs). It is unclear whether Court of Justice
judgments on the question of infringement might have indirectly extended the EU ‘author’s own intellectual
creation’ test to all copyright works, although the UK courts presently are resisting that conclusion: Newspaper
Licensing Agency v Meltwater [2011] EWCA Civ 890, [2012] RPC 1.
94
Sawkins v Hyperion Records Ltd [2005] EWCA Civ 565, [2005] 1 WLR 3281.
95
CDPA 1988, s 3(1). The work has to be recorded in some permanent form, but it does not matter by
whom: s 3(3).
395
last two. Indeed a substantial test of quality is applied before artefacts can be treated as being
of artistic craftsmanship.96
(b) The copyright conferred directly on investors

6.59 Certain investors engaged in cultural productions are also given their own copyrights and for
these purposes are deemed to be ‘authors’. Typically these copyrights run for a fixed period
ranging from 25 to 70 years from first exploitation of them with the authority of the right
owner.97 The CDPA 1988 confers such rights on producers of sound recordings, organizers
of broadcasts (a term that includes cablecasts), and publishers in respect of the format of new
editions.98 Such rights are referred to as ‘related rights’ or ‘neighbouring rights’ to copyright.
6.60 Thanks to EU intervention, the rights now given in a film are a hybrid between creative
copyright and investment copyright. The copyright in a new film is initially shared between
the principal director and the financial producer (though the former is likely to assign his
interest to the latter).99
(3) Connecting Factor: Qualification

6.61 United Kingdom copyright is conferred (1) where the author qualifies as British and (2)
where first publication occurs in the United Kingdom. Due primarily to membership of the
Berne Union, British copyright is equally open to authors with a personal status in another
Union state or where first publication occurs in such a state.100 In determining whether a
work has been published, copies of the whole work must be made available to the public in
sufficient quantity to satisfy reasonable demand. No account, however, is taken of unauthor-
ized publications.101
(4) Duration
6.62 By a controversial directive of the EC, most copyright periods were revised so as to bring
them up to the highest level prevailing in Europe. As already mentioned, for the works of
true authors the British period was extended on 1 January 1996 to end 70 years after the
author’s death. The duration of some of the related rights was increased to the 50-year term
already mentioned.102 The directive required that these extensions be applied to existing
works, including even those which would come back into copyright after a prior expiry.103
6.63 Where a work is of joint authorship, because it is made to a common design, the life of the
longest living author is taken as the measure.104 However, in British law works in different
96
Hensher v Restawile Upholstery [1976] AC 64, HL.
97
Broadcasts receive 50 years’ protection, but the term for sound recordings was extended to 70 years in
2011: Directive 11/77, Art 1(2); CDPA 1988, ss 13A, 14. The term for publishers’ format right is 25 years:
s 15.
98
CDPA 1988, ss 5–8. See, eg, Newspaper Licensing Agency v Marks & Spencer [2001] UKHL 38, [2003]
1 AC 551. A separate right (outside copyright) is given for 25 years to the first publisher of a work which
has remained unpublished throughout its copyright: see Copyright and Related Rights Regulations 1996,
SI 1996/2967, rr 16, 17. For performers’ rights, see 6.82.
99
CDPA 1988, s 9(2). Copyright and Related Rights Regulation 1996, SI 1996/2967, reg 36. For meas-
urement of duration in films, see CDPA, s 13B.
100
See CDPA 1988, ss 154–157 and Orders in Council thereunder.
101
CDPA 1988, s 175(1).
102
See 6.59.
103
Such as Kipling’s: died 1936; original expiry of copyright: 1986; revival: 1996–2006, subject to excep-
tion for those who had already made prior arrangements to exploit in that period: Duration of Copyright and
Rights in Performances Regulations 1995, SI 1995/3297, regs 17–25.
104
CDPA 1988, s 10.
396
D. Copyright
categories (eg, the music and the words of a song) are treated as separate works and do
not involve joint authorship.105 There are special rules for works published anonymously
or under a pseudonym and more generally, where one or more of the authors is not known.
Crown copyright in works produced by its officers or servants lasts for 50 years from publica-
tion or 125 years from creation, whichever is the shorter.106
(5) Infringement
(a) Substantial taking
For copyright to be infringed there must be ‘copying’, ie without the authority of the copyright 6.64
owner a substantial part of the work has to be taken for reproduction or performance.107 The
general precept must be recalled: it is the expression making up the work, and not the under-
lying idea, which is protected.108 In deciding what is substantial taking, the character of the
work will be brought into account. Thus the structure and development of a play may be more
important than the detailed dialogue; that of a computer program more significant than the
line-by-line programming instructions. If the copyright in question concerns selections from,
additions to, or comments upon the work of others, it is those elements which must have been
taken.109 The degree of effort, intellectual and commercial, which the creator has put into his
production will be significant, as will be the manner in which the defendant has taken advan-
tage of the claimant’s work. In light of recent Court of Justice judgments, it is arguable that a
reproduction is substantial only if what is taken represents the author’s intellectual creation.110
(b) Copying
There will be the separate question whether the defendant copied from the claimant, rather than 6.65
vice versa, or from a third source or created independently. Once evident similarities are dem-
onstrated, the burden of providing an innocent explanation may pass to the defendant.111
(c) Primary and secondary infringement

For primary infringements, ie making copies, issuing copies to the public, renting and lend- 6.66
ing copies, performing in public, communication to the public,112 and making adaptations,
105 Redwood Music Ltd v B Feldman & Co Ltd [1981] RPC 337. Gilbert’s and Sullivan’s copyrights expired
50 years after their respective deaths. Many other copyright systems do not follow this approach, with com-
plications for transnational agreements. As a result, Directive 11/77 now ensures greater clarity within the EU
by providing that, notwithstanding the UK rule on joint authorship, the duration of protection for a musical
composition with words shall last until 70 years after the death of the last of the lyricist and composer to
survive. This follows a model previously adopted for films.
106 CDPA 1988, s 163. There are also special arrangements for certain Parliamentary copyrights and those
of international organizations: ss 164–168.

107
CDPA 1988, s 16(3).
108
Imprecise the distinction may be, but it is important enough to have found its way into the TRIPs
Agreement (n 12), Art 9(2).
109
Designers Guild v Russell Williams [2000] 1 WLR 2416, HL.
110
Infopaq International A/S v Danske Dagblades Forening (C-5/08) [2010] FSR 20. It is unclear whether
and to what extent Infopaq has caused a revision of the UK test for infringement: see SAS Institute Inc v World
Programming Ltd [2010] EWHC 1829 (Ch), [2011] RPC 1; Newspaper Licensing Agency v Meltwater [2011]
EWCA Civ 890, [2012] RPC 1.
111
Francis Day v Bron [1963] Ch 587, CA. A claimant is greatly helped if the same slips or quirks are
apparent in the defendant’s production.
112
A response to growth of the Internet: see paras 6.78–6.81. To amount to a ‘communication to the pub-
lic’, the work must be communicated to a ‘new public’, meaning a public which was not taken into account by
the authors of the protected work when they authorized their communication to the original public. This has
been held to encompass hotel room guests watching broadcasts on televisions in their bedrooms, and customers
watching football matches on big screens in pubs: Football Association v QC Leisure (C-403/08) [2012] FSR 1.
397
liability arises whether or not the defendant appreciates that infringement is occurring.113
Secondary infringement occurs in certain forms of commercial activity—importing and trad-
ing in copies and organizing public performances. These are wrongful only where the defend-
ant knows that the copies are illicit or the performance unlicensed or has no reasonable
grounds for believing that the conduct is legitimate.114 Primary infringement may occur not
only by the commission of one of the proscribed acts, but also from authorizing their com-
mission. This is an extended notion of vicarious liability. Proceedings for infringement by
authorizing may thus arise for hiring a band at a dance hall which does not hold the appropri-
ate licence to perform copyright music; or placing a photocopy machine in a library without
instructing users not to infringe, through specifying the limits of their freedom to copy.115
(d) Parallel importing

6.67 Both the primary liability for issuing copies to the public and the secondary liability for
importing illicit copies have an effect on the practice of parallel importation. The law is now
so formulated that these rights may not be used to stop the movement of copyright works
from one EEA state to another; but unauthorized importation of copies from outside the
EEA will constitute these types of infringement.116
(e) Exceptions
(i) Fair dealing exceptions
6.68 British copyright law has no general doctrine of ‘fair use’ qualifying the operation of copy-
right,117 although publication and other use may, under narrow conditions, be justified as
being in the public interest.118 The CDPA 1988 contains a long list of more or less specific
circumstances which amount to complete exceptions to the right or which in some cases per-
mit use but require the payment of compensation.119 These include three important excep-
tions for ‘fair dealing’ for the following purposes:
(1) making single copies of works for non-commercial research or private study;120
(2) use of works other than photographs for reporting current events;121
(3) use of works for purposes of criticism or review.122
In each case what is ‘fair’ falls to be judged in all the particular circumstances, including the
extent to which the taking will interfere with the usual commercial prospects of the copyright
owner. The values which these exceptions embody are important and they are accordingly
113
CDPA 1988, ss 16–21.
114
CDPA 1988, ss 22–27.
115 CDPA 1988, s 16(2). A person authorizes who sanctions, countenances or approves: Falcon v Famous
Players [1926] 2 KB 474, 491, CA, per Bankes LJ.

116 CDPA 1988, ss 18, 27.
117
Unlike the position in US copyright law.
118
Hyde Park Properties v Yelland [2000] RPC 604, CA; Ashdown v Telegraph Group [2001] EWCA Civ
1142, [2002] Ch 149. There is also a limit to the range of subject matter in which copyright can exist, so as
to exclude what is scandalous and immoral; but it would rarely apply today.
119
To some extent these have been restricted by the constraints on exceptions and limitations contained in
the EU Directive on Copyright in the Information Society (2001/29), Art 5, which explicitly limits the range
of exceptions permissible under national law and also subjects any exception and limitation to the notorious
‘three-step test’, which requires that it cover only certain special cases, not conflict with normal exploitation
of the work, and not unreasonably prejudice legitimate interests of rightholders. That test has not been spelled
out in the UK legislation.
120
CDPA 1988, s 29, which applies only to copyright in literary works other than databases, dramatic, musical
or artistic works and typographical format. In the case of a computer program, special principles apply to decompi-
lation back into a higher level language, which must be in order to secure interoperability of programs: s 50B.
121
CDPA 1988, s 30(2), (3). In some instances, there has to be sufficient acknowledgement of source.
122
CDPA 1988, s 30(1). There must be sufficient acknowledgement.
398
D. Copyright
to be liberally interpreted.123 Unlike other copyright systems, there is no general exception

for private copying in general. Many such systems have provided some recompense for this
exception which takes the form of a levy on copying equipment or the recording means (tape,
CD, etc) used in it, but UK governments have not followed suit.
(ii) Further exceptions
Among the (long list of ) other exceptions may be noted: 6.69
(1) Exceptions designed to encourage collective licensing schemes, for instance, for the
recording of broadcasts and cablecasts in educational establishments, the copying of
scientific abstracts, reprographic copying by educational establishments, renting sound
recordings, films and computer programs;124
(2) Exceptions concerning artistic works: representing them when they are situated in a
public place; reproducing them in sale catalogues and advertisements; reconstructing
buildings, etc;125
(3) Exceptions concerning broadcasts and cablecasts: recabling to areas of poor transmis-
sion; free public showings for certain types of work; recording in order to view at a more
convenient time;126
(4) Exceptions relating to public administration, including use for parliamentary and judi-
cial proceedings, Royal Commissions and statutory inquiries, the making available of
public records and other official information.127
(6) Moral Rights

(a) Nature in British law
The idea that authors should have ‘moral’ or ‘personality’ rights distinct from economic rights 6.70
in their work is the distinctive feature of civilian systems of authors’ rights.128 In conse-
quence, the right to claim authorship and the right to protect the integrity of a work are
acknowledged in the Berne Convention, Article 6bis. In Britain and other common law
countries these moral rights have been recognized to a limited degree through the general
law, notably in tort (passing off, injurious falsehood and defamation) and through contract,
expressed and implied. In the CDPA 1988, moral rights were for the first time put on a
statutory basis.129 They have however been treated with a certain coolness, which is reflected
in the conditions and exceptions to them. Most fundamentally, they are open to waiver—by
agreement or conduct—which may take place to any extent and at any time, in particular,
in advance.130 They are accordingly in the nature of presumptive rules, rather than exigent
guarantees. In this they differ—fundamentally, but not unreasonably—from many foreign
laws on authors’ rights.
(b) Right to identification
The right to be identified as author of a literary, dramatic, musical or artistic work, or as a 6.71
film director131—important to those struggling to get their name established—comes into
123
Pro Sieben Media v Carlton UK [1999] FSR 610, CA.
124
CDPA 1988, ss 35, 36, 60, 66, 74.
125
CDPA 1988, ss 62–65.
126
CDPA 1988, ss 70–73.
127
CDPA 1988, ss 45–50.
128
There is no agreement among them about the scope and supervailing character of these rights. French
law regards them as perpetual, German law as lasting for the term of the economic rights.
129
CDPA 1988, Part I, Ch IV; moral rights also extend to the rights of performers: Performances (Moral
Rights, etc.) Regulations 2006.
130
CDPA 1988 s 87.
131
CDPA 1988, ss 77–79. The right lasts as long as the copyright.
399
effect only if it has been asserted. This will typically be done as part of an assignment of the
copyright. There are in any case exceptions: for computer programs, Crown copyright, works
made in the course of employment, press publication, the performing of musical works (thus
exempting disc jockeys), fair reporting of current events on electronic media, some incidental
intrusions and industrial design.
(c) Right of integrity

6.72 The right of the same categories of people to object to derogatory treatment of works permits
them to object to addition, deletion, alteration or adaptation when it ‘amounts to distor-
tion or mutilation of the work or is otherwise prejudicial to the honour or reputation of the
author or director’.132 It is not a right which more generally allows the author to object to
placement of a work on a particular site or removal from it, to criticism of it or himself, or to
its destruction; nor may he require its withdrawal when he has second thoughts. Related but
distinct is a moral right to object to false attribution of work which is not the author’s.133
(7) Ownership
6.73 Since copyright resides in the work as expressed, the author of a traditional copyright work
is the person who creates it in this sense. On the other hand, the ‘author’ of one of the entre-
preneurial copyrights is the investor who causes the work to be brought into existence.134
Copyright vests from the moment of production in the author. To this there is one excep-
tion. Where a literary, dramatic, musical or other artistic work is created in the course of
employment, then, unless there is a contract to the contrary, it is owned from the outset by
the employer.135 Being a property right, copyright can be dealt with as an owner chooses.
If a work is assigned before its creation, as often occurs when works are commissioned, the
assignee becomes the owner upon production: at law if the assignment is a signed writing; in
equity, if the circumstances demand it.136
(b) Co-ownership
6.74 Co-ownership of copyright can arise because there are joint authors or because interests have
been assigned. In contrast with patents, one joint owner of copyright is not entitled to exploit
the work without the permission of the others.137 Equally a licensee needs permission from all
the owners. This is one evident reason why, in a complex work such as a film or multi-media
package, it becomes vital that all the relevant copyrights are assigned into the hands of the
exploiter. Today this will include the rights of performers as well as of authors.138
132
CDPA 1988, ss 80–83. This right also lasts for the copyright term.
133
CDPA 1988, s 84, deriving from earlier British legislation; it lasts for 20 years from the author’s death.
There is also a so-called moral right of privacy of the commissioner of a photograph or film for private and
domestic purposes to object to its subsequent publication, as where a person in it becomes newsworthy:
s 85.
134
CDPA 1988, s 9; 6.59.
135
CDPA 1988, s 11. An implication to the contrary may arise out of standard practice (as with academic
employment) or from the evident purpose of the transaction.
136
CDPA 1988, s 91; Griggs Group v Evans [2005] EWCA Civ 11, [2005] FSR 706.
137
Cescinsky v Routledge [1916] 2 KB 325.
138
When requiring the introduction of a rental right for all relevant copyrights, the EC Directive on
Rental Right, Lending Rights and Related Rights (92/100/EEC [1992] OJ L346/61), Arts 2(5), 2(6), 4 (now
replaced by Directive 2006/115/EC) provided for a presumption of assignment by creators and performers
to the producer, but at the same time guaranteed them a right to equitable remuneration: see CDPA 1988,
ss 93A–C, 191F–H.
400
D. Copyright
(c) Copyright contracts

Copyright owners exploit their rights through a wide variety of contractual arrangements. 6.75
Where these are individually negotiated, the parties are largely free to bargain as they see fit.
If they have agreed in clear terms to assign or license all aspects of copyright, including rights
which may evolve with future technology (eg electronic publishing contracts), they will be
held to their bargain.139 However, the terms of management and agency contracts between
young pop composers and their publishers and other agents have been treated as void for
being in unreasonable restraint of trade, or voidable in equity for undue influence.140
(d) Collecting societies

For many individual copyright owners, the only realistic prospect of a commercial return lies in 6.76
joining a collecting society. The pioneering organization in Britain was the Performing Rights
Society, formed to collect royalties on performances of composers’ and librettists’ copyright
music. Record companies, using Phonographic Performance Ltd, follow a similar formula in
respect of the sound recording right, and literary authors and their publishers likewise in col-
lecting for photocopying through the Copyright Licensing Agency. Through their links with
equivalent societies in other countries, these collecting societies can acquire control over virtually
all the available material of interest to users such as broadcasters, dance bands and teachers.
The societies are accordingly vested with monopoly power in the economic sense and while 6.77
their necessity is generally acknowledged not all their practices have proved acceptable to
competition law authorities. Thus restrictions on membership, rules concerning distribution,
and other structural issues may fall to be reviewed by the Competition Directorate of the
European Commission, or in Britain, by the Competition Commission. So far as concerns
the terms which collecting societies offer to users, a separate system of control is in operation.
The Copyright Tribunal has power to review the terms offered by a collecting society as part of
a general scheme or in a particular case.141 The root criterion is that the terms must be reason-
able in the circumstances. The CDPA 1988 contains elaborate lists of factors to be taken into
account in certain cases. Resort to the Copyright Tribunal is today a regular occurrence.
(8) Copyright, Digital Format and the Internet

The coming of digital technology led to computer programs being treated as literary works 6.78
for copyright purposes.142 The expansion of the Internet over recent years to encompass a
host of uses, notably on the World Wide Web, provides a medium in which copyright mate-
rial can be transmitted for viewing, downloading and transferring on to others. Interactive
exchanges are commonplace and text and images can be endlessly modified—all with remark-
able speed and accuracy. Authors and their entrepreneurs are therefore in danger that there
will be widespread taking of copyright material without payment or acknowledgement. This
conduct may also be greatly assisted by those who run search engines and the like. Hence
the litigation in the United States and elsewhere against Napster, Grokster and KaZaA for
their peer-to-peer (P2P) systems and against websites which provide programs for evading
protective codes on DVD.
In 1996, WIPO fostered the signing of two treaties which were designed to adjust national 6.79
laws on authors’ copyright and related rights laws concerning performers, sound recorders
139
Campbell Connelly v Noble [1963] 1 WLR 252.
140
Schroeder Music v Macaulay [1974] 1 WLR 1308, HL; Clifford Davis Management v WEA Records [1975]
1 WLR 61, CA; O’Sullivan v Management Agency and Music [1985] QB 428 and succeeding decisions.
141
CDPA 1988, Part I, Chs VII, VIII. These statutory provisions are elaborate.
142
6.57.
401
and audio-visual producers, particularly in relation to digitization.143 In their wake the EU

enacted its Directive on Copyright and Related Rights in the Information Society (01/29), a
measure leading to adaptations and extensions of copyright protection in the UK.144 A right
of communication to the public was added to the acts constituting infringement, covering
not only wireless and wired broadcasting but also Internet and other electronic transmissions
sought by individual members of the public.145
6.80 Where digital material is placed on the Web or provided in hard copy such as a CD or DVD,
electronic measures may be built in by the provider which aim to prevent the making or retrans-
mission of multiple copies.146 The threat to such technical barriers is that others will devise ways
of circumventing them. Under the directive, national laws must give the providers rights to
attack those who make these means of circumvention available and powers to do so have been
expanded to meet the requirements of the directive.147 If these powers prevent a user from taking
advantage of an exception to copyright in certain limited circumstances it is possible to pursue a
complaint to the responsible government department that may lead to new legislative protection
of this ‘access right’. Critics assert that this solution to a much debated issue is inadequate.
6.81 A measure of protection is accorded to Internet Service Providers (ISPs) by the Electronic
Commerce (EC Directive) Regulations 2002, which provide for ‘safe harbour’ limitations
on the remedies available against ISPs that host, cache, or act as mere conduits for, infring-
ing content, provided the ISPs satisfy certain conditions.148 Section 28A of the CDPA
1988 also immunises transient or incidental copying purely in the course of an Internet
transmission from one third party to another, though the scope of this provision remains
the subject of active litigation.149 So far as concerns ISPs that host websites, encouraged by
the safe harbours and facilitated by the contracts between ISPs and their content providers,
practices have evolved under which the ISPs take down material once they are notified that
it contains copyright infringements. By the same token, even though not infringing them-
selves, ISPs can be required to implement measures (such as blocking access to infringing
sites) designed to assist copyright owners in reducing widespread infringement.150 The
nature of these types of measures is evolving in part with an eye to technological possibili-
ties, in part by reference to general principles of EU law such as ‘proportionality’, and in
part by balancing competing fundamental principles found in the European Charter of
Fundamental Rights.151
(9) Rights in Performances

6.82 Following an EC directive, performers are provided with certain property rights in their per-
formances of dramatic, musical or literary material, and also of variety acts and other similar
143 6.53.
144 Principally by the Copyright and Related Rights Regulations, 2003/2498 which introduced amend-
ments into the CDPA 1988.
145 CDPA 1988, s 20.
146 The Digital Rights Management systems (DRMs) are themselves subject to protection against copying:
CDPA 1988, s 296ZG.

147 CDPA, ss 296–299.
148 See regs 17–19. The regulations give effect to the E-Commerce Directive (2000/31/EC).
149 CDPA 1988, s 28A, implementing Art 5 of the Information Society Directive. See generally Infopaq
International A/S v Danske Dagblades Forening (C-5/08) [2010] FSR 20.

150 CDPA 1988, s 97A.
151 See Twentieth Century Fox Film Corp v British Telecommunications plc [2011] EWHC 1981 (Ch), [2011]
RPC 28; Productores de Musica de Espana (Promusicae) v Telefonica de Espana SAU (C-275/06) [2008] 2
CMLR 17; Scarlet Extended SA v Societe Belge des Auteurs, Compositeurs et Editeurs SCRL (SABAM) (C-70/10)
[2012] ECDR 4.
402
E. Industrial Designs
presentations.152 To this the CDPA 1988 adds certain non-property rights belonging to the
performer alone, which are outside the scope of the directive.153 The CDPA 1988 also gives
an investor with an exclusive contract to exploit the performance a separate, quasi-proprietary
right.154 The rights last for 50 years from the performance, or, if a recording is released within
that time, then for 50 years from release.155 The rights bear a family resemblance to the copy-
right in sound recordings and the like. The law has become unduly complex. It developed
particularly to deal with the illicit recording of concerts (‘bootlegging’) where those involved
might have no copyright on which to rely.156 The law has been amplified in the hope of
enhancing the bargaining position and revenues for performers.157
(10) Public Lending

Under the Public Lending Right Act 1979, the United Kingdom has a special regime for the 6.83
lending of books by public libraries. The government finances and supports the Public Lending
Rights Scheme and distributions are made to British authors and certain others on the basis of a
sample of borrowing from selected public libraries. Public borrowing of records is treated in the
same way as their rental: the owners of copyright in the works and in the sound recordings are
entitled, subject to certain special conditions, to royalties and for these collecting societies exist.
(11) Artists’ Resale Right (Droit de Suite)

The commercial value of a work of visual art frequently attaches to the original, rather than 6.84
being realised through reproductions. Accordingly, to implement Directive 2001/84, the UK
introduced a personal right for artists and their inheritors to a share in the proceeds of resale
of the original, where the sale is conducted by an art market professional.158 The right lasts
for the duration of the copyright in the work. Civil proceedings lie to recover payments due,
primarily from sellers of the original or their agents. The amount in the UK is set by a sliding
scale between 4 per cent of sales up to 50,000 Euros and 0.25 per cent on sales over 500,000
Euros, up to a maximum of 12,500 Euros.
(1) General
Industrial designs concern the appearance of mass-produced articles. Design may add notice- 6.85
ably to the attractiveness of one competitor’s product, especially when much the same tech-
nology is being deployed by various rivals; indeed, with many luxuries today, design elements
blend in with other elements of the branding. While it is natural to think of design as a sepa-
rate element added in an appeal to the eye, the feature carrying the design may also assume
its form as part of its function—a specially-shaped handle or socket-connector or whatever.
Design protection accordingly strays also into the sphere of the technical. This particularly
affects the market in replacement parts for cars and other consumer durables.
152 Rental, Lending and Related Rights Directive, n 85; CDPA 1988, Part II, ss 180–184, 191A–M.
These rights do not extend to the general run of sports, despite the pleas of some promoters.
153 CDPA 1988, ss 180–184, 192A–B.
154 CDPA 1988, ss 185–188.
155 CDPA 1988, s 191. Directive 11/77 extended the protection of phonographic fixations of perform-
ances to 70 years.
156 Because they extemporize or use other people’s music.
157 For the moral rights of performers, see n 129. The process was continued by Directive 11/77, which
among other things gave performers the right to reclaim their rights if a record producer does not market the
sound recording embodying their performance.
158 See Artists’ Resale Right Regulations, SI 2006/346.
403
6.86 It is this consequence, above all others, which makes it difficult to secure an industrial design
law which is politically acceptable to the different interests in industry. Over the last 30 years,
Britain has had a particularly turbulent experience of the problems as it has lurched from
restricted to over-indulgent protection of designs. Currently, in the Copyright, Designs and
Patents Act 1988, it has found some sort of third way, which nonetheless curbs considerably
the impact of design rights on spare part supplies.159 Now the EU has taken over part of
the field, in the course of creating its own unitary Community Registered Design (which is
largely at one with a directive harmonizing registered design systems in the Member States)
and counterpart Unregistered Community Design. The European legislation barely stand-
ardizes unregistered rights that may exist in national law, whether by way of copyright or
unregistered design right. The result in UK law is a curious amalgam, which requires descrip-
tion of (i) registered design laws, broadly similar at the Community and the UK level, (ii)
artistic copyright as it may effect the design of industrial products, and (iii) unregistered
design rights, which are quite different at the Community and UK level.
(2) Registered Designs

(a) Scope of the right
6.87 In much of Europe, a system of registration for industrial designs has long been in existence.
In Britain, it has grown from the 1830s, acquiring over time some family resemblance to the
patent system. A registered design, now granted under the Registered Designs Act (RDA)
1949, as substantially amended, first by the CDPA 1988 and then, implementing the EU
Directive 1998/71, by the Registered Designs Regulations 2001/3949. In 2003, Community
Registered Designs, granted by the Office for the Harmonisation of the Internal Market
(OHIM, Alicante), became available as a unitary right throughout the EU.160 These alterna-
tive systems each grant an exclusive right in the design of a product, which operates even
against independent designers who arrive at much the same result. The design has accord-
ingly to be novel and of individual character, when compared with prior art.161 Before grant,
the validity of the design applied for will be the subject of a formal (but no substantive)
examination by the office to which application is made. If the application succeeds, the right
granted will be renewable for a total of 25 years (5 terms of 5 years).162
(b) Protectable designs

6.88 Community and British registered designs (RDs) consist of ‘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’.163 A design cannot be regis-
tered for a feature dictated solely by function,164 or for a design element that ‘must fit’ onto
159 A decision of the House of Lords provided a prominent signpost for this choice of direction: British
Leyland v Armstrong [1986] AC 577. Politically acute, it was nonetheless doctrinally obscure: cf Canon KK v
Green Cartridge [1997] AC 728, PC.
160 Regulation on Community Designs, 6/2002 (references to equivalent provisions in this Reg. and RDA
1949 will be only to the latter).

161 RDA 1949, s 1B. Although the design regime formally adopts a standard of absolute novelty, under a
so-called ‘safeguard clause’ the comparison is not with designs made available to the public world wide, but
only with those that could reasonably be known in business (in the sector of the prior art) in the EEA, design-
ers themselves having a 12-month grace period. A priority right of six months arises under the Paris Industrial
Property Convention (see 6.10) Art 4.
162
Measured from the date of application: RDA 1949, s 8.
163 RDA 1949, s 1(1). The element of appearance must be material, as being taken into account by purchasers.
164 RDA 1949, s 1C. Whether under the European law this exclusion is confined to shapes which alone
will allow the function to be carried out, something which occurs very rarely has yet to be settled by an
authoritative decision. There is also an exception for methods or principles of construction.
404
something else.165 Internal component parts of a complex product (such as a car) that are not
visible in normal use are also unprotected.166 Although the design of a visible part of a com-
plex product can be the subject of protection, the RD is not infringed when used to restore
the appearance of the complex product.167
(c) Infringement
A registered design prevents those without licence from making, importing and trading in 6.89
articles bearing the design or one that does not produce on the informed user a different over-
all impression.168 Striking features in the design will naturally be given most significance. But
this is an impressionistic test. Thus, the design for a ‘cool’-looking tablet computer was not
infringed by an ‘uncool’-looking rival.169 And the design of a leading vacuum cleaner that
was ‘smooth, curving and elegant’ was not infringed by a rival that was ‘rugged, angular and
industrial (even somewhat brutal)’.170
(3) Artistic Copyright

During the years 1968–88, it was accepted that a drawing—as a work which, however tech- 6.90
nical its character, attracts copyright—is infringed by reproduction in three dimensions; and
that this can occur by direct or indirect copying. The shapes of a vast range of industrial
products and their parts were thus protected against copying, in many cases for very long
periods and without any formal registration. The result was extremely inconvenient to many
in industry, and the scope of artistic copyright in the industrial sphere was severely curtailed
in 1988, by the substitution of an (unregistered) design right, which is of more limited
scope.171
Under the 1988 Act, artistic copyright can apply to industrial production only where it is for 6.91
the surface decoration of an article or where the design is for a thing which itself attracts cop-
yright in its own right, most evidently as a ‘work of artistic craftsmanship’.172 Even in these
cases, at least until the implementation of the Enterprise and Regulatory Reform Act 2013,
the right is limited to a term of 25 years from the first appearance of products legitimately
bearing the design.173 If, however, the design is for features of shape or configuration of an
article which itself does not attract copyright, any copyright in the design does not extend to
its use in industrial production.174
(4) Unregistered Design Right: Community and UK

(a) Community Unregistered Design Right (UDR)
The two varieties of UDR—under Community Law and UK law—are different in pur- 6.92
pose and effect. Community UDR acts as a preliminary supplement to the Community
165 RDA 1949, s 1C(2).

166 RDA 1949, s 1B(8)
167 RDA 1949, s 7A(5).
168 RDA 1949, ss 7, 7A. Certain contributory acts are also covered and there are various exceptions. For
a description of the legal fiction that is the informed user, see Procter & Gamble v Reckitt Benckiser [2007]
EWCA Civ 936, [2008] FSR 8; PepsiCo Inc v Grupo Promer Mon-Graphic SA (C-281/10 P) [2012] FSR 5.
169 Samsung Electronics v Apple Inc [2012] EWHC 1882 (Pat).
170 Dyson v Vax [2010] EWHC 1923 (Pat), [2010] ECDR 18.
171 See 6.93.
172
For this constricted category of high-art object, see 6.58. As to surface decoration, see Lambretta
Clothing v Teddy Smith [2005] RPC 6, CA.
173 CDPA 1988, ss 51, 52. See Enterprise and Regulatory Reform Act 2013, s 74 (repealing CDPA 1988,
s 52).
174 The copyright in technical drawings continues to cover their reproduction as drawings.
405
Registered Design and in general it has the same legal scope.175 It can be claimed for the first
three years after the design has been made available to the public in the EU by the designer
or other person entitled to it. It can be claimed only against a person who copies the design
without permission. The purpose of the right is to provide protection for design products
before the registered right can be obtained.
(b) UK Unregistered Design (UDR): Relation to copyright

6.93 The CDPA 1988, Part III creates a design right against copying the shape or configuration
of an industrial product, where that product is not itself an artistic work.176 This is intended
in particular as a substitute for the previous artistic copyright in technical designs, but one
which is much more limited in scope. It lasts only for a period which in most cases will be
ten years from the first marketing anywhere of products legitimately bearing the design.177
Being a right only against copying, it is subject to a test of ‘originality’, rather than ‘novelty’;
even so it must not be commonplace in the relevant design field.178
(c) Technical design and spare parts

6.94 Because (unregistered) design right is intended in particular to cover purely technical design,
there is no need to show that it has any eye appeal. However, again by way of inhibition on
claims to right over designs for spare parts, there is no infringement to the extent either that
it ‘must match’ the design for something else (door panel for car) or that its physical embodi-
ment ‘must fit’ into another thing for functional reasons (light bulb into socket).179
(5) The Rights in Comparison

6.95 The three categories of rights in industrial designs produce an unduly elaborate system of
protection. All at least are property rights and can be dealt with as such. The right inures
initially to the designer, or (in all three cases) to an employer when the design is made in
the course of employment. A curious complication arises from the fact that commissions to
independent designers have the same effect so far as UK RD and UDR are concerned; but
this does not apply to copyright, nor to Community titles (registered or unregistered).180
(b) Qualification
6.96 A different variation arises in respect of the qualification to hold the right. While both reg-
istered designs (by virtue of the Paris Convention) and artistic copyright (by virtue of the
Berne Convention) are open to the nationals of the great majority of states around the world,
the UK UDR has been established on a sui generis basis, specifically so that its benefits can be
restricted to those connected with the few countries which offer reciprocal informal protec-
tion. The motivation for this development was the insistence of the United States upon strict
reciprocity for the sui generis protection of the design of semi-conductor chip circuitry, a form
175
Regulation 6/2002, Art 11.
176
Where the rights are both available, copyright is preferred: CDPA 1988 s 236.
177
CDPA 1988, s 216. During the last five years, it is open to compulsory licences of right; and this may
happen even in the first five years, after an adverse reference to the Competition Commission: ss 238, 239.
178
CDPA 1988, s 213(1). See Ocular Sciences v Aspect Vision Care [1997] RPC 289; Dyson v Qualtex (UK)
Ltd [2006] EWCA Civ 166, [2006] RPC 769. For what constitutes infringement, see, eg, Wooley Jewellers v
A&A Jewellery (No 2) [2002] EWCA Civ 1119, [2004] FSR 932.
179
CDPA 1988, s 213(3). By special extension this right applies to the design of computer chips: Design
Right (Semiconductor Topography) Regulations 2006.
180
See Fundación española para la innovación de la Artesanía (FEIA) v Cul de Sac Espacio Creativo SL (Case
C-32/08) [2010] RPC 13.
406
F. Trade Marks and Names
of protection which has now, in the UK, been incorporated into (unregistered) design right,
albeit with some special features.181
F. Trade Marks and Names

(1) General
(a) Rights from trade use
In this separate sphere of intellectual property, the law does not protect ideas or information 6.97
for their intrinsic value but for their value as a basic commercial tool. The primary object in
protecting trade marks, trade names, get up, packaging, slogans, logos, etc is to ensure that
they are not imitated by others so as to lead to confusion of customers. That is because they
are treated as signs which in a general sense indicate the origin of the product or services. The
starting point of English law was to protect their actual use in trade. To this end the common
law developed actions against passing off and injurious falsehood. Additionally, from 1875,
a registration system for the protection of trade marks was established, initially in respect of
goods and latterly also for services.
(b) Rights through registration

Trade mark registration has been regarded as a supplementary form of protection, to be 6.98
conferred only after careful examination. Nonetheless the system is today in many senses
dominant. A Community trade mark system has been created alongside the national regis-
ters of member states.182 Both are governed in the main by the same basic principles. They
grant rights which can be asserted more simply and cheaply than by proving trade use. They
may in many cases provide legal protection before any trading has begun. They are available
where previously in Britain it was necessary to rely on the common law action against pass-
ing off. Nevertheless the latter, being firmly based upon an actual reputation in trade, con-
tinues to provide an important substratum of protection. Accordingly we turn to it first.
(2) Common Law Liability: Passing Off

Liability for passing off is based upon three elements:183 6.99
(1) the claimant must have a reputation with the public, established through evidence of
actual trade or advertising;
(2) the defendant must make misrepresentation to the public which is related to this reputa-
tion of the claimant; and
(3) the claimant must in consequence suffer damage or be about to do so.
(a) The claimant’s reputation

The claimant’s reputation may for instance be founded on a housemark (‘British Airways’, 6.100
‘Sainsburys’, the Rolls-Royce grille) or on a product mark (‘Mini’, ‘Fiesta’). Where a mark or
name has about it some other natural association—as in the case of a geographical name or a
descriptive word, or a personal name—the claimant must show a secondary meaning, ie that
181
See Design Right (Semiconductor Topographies) Regulation 1989, SI 1989/1100; introduced in
implementation of EC Directive 87/54 (n 85).
182
See 6.108.
183
For this classical trinity, see Lord Oliver, Reckitt & Colman v Borden [1990] RPC 341, HL (‘Jif ’ lemon);
other formulations, often referred to, are by Lord Diplock and Lord Fraser, Erven Warnink v Townend [1980]
RPC 31, 93, 105–106, HL (‘Advocaat’).
407
the public has nevertheless come to associate the mark or name with its goods or services.184
An enterprise can lose a reputation if it permits an originally distinctive mark to be regularly
used as a description of a type of goods (as with ‘Formica’).185
6.101 It is possible for a group of separate traders to enjoy a concurrent reputation in a word or sign
and for any one of them to sue to protect it.186 It is the reputation which gives rise to busi-
ness goodwill in England that is at stake. Historically, some measure of actual business must
have been conducted within the jurisdiction,187 although the Internet and global trade may
increasingly force courts to recognize local goodwill with little physical presence in Britain
(eg, if the foreign entity has UK customers who book reservations abroad from the UK).188
That business reputation must moreover continue: a claimant who has given up business and
has no intention of returning to it may not sue in passing off.189 The reputation attaches to
that business and can only be transferred with the business as a whole, not as a separate item
of property.
(b) The defendant’s misrepresentation

6.102 The claimant must show that the defendant is causing at least a likelihood of confusion
among a significant portion of the relevant public. This may be done by imitating a mark,
commercial name or get up, or by supplying goods or services in response to an order which
uses the mark. The defendant must be responsible for at least some ultimate confusion,
as when it places deceptively labelled products in the hands of a knowing distributor; the
action may then lie if that distributor intends to export the deceptive products to another
country.190
6.103 Passing off retains the flexible character of a common law right. The sudden popularity of the
Internet has established the domain name as a novel form of desirable commercial symbol.
This has induced a new form of unacceptable pre-emption– ‘cyber-squatting’: an interloper
obtains a domain name consisting principally of the name of an internationally famous com-
pany or brand, not with a view to trading with it but in order to demand a substantial sum
for its transfer. The practice has nonetheless been deemed fraudulent and because the practice
would lead to passing off it could be enjoined.191
(c) Likelihood of damage

6.104 When the goods or services offered by both claimant and defendant are the same or are very
similar, the claimant will almost always suffer damage from the passing off. If, however, the
goods or services are not the same, the claimant must show some reason why injury is likely
to follow. This can be because the confusion will expose the claimant to useless litigation or
to a lowering of reputation in general.192
184
Reddaway v Banham [1896] AC 199, HL (‘Camel Hair Belting’).
185
Havana Cigar v Oddenino [1924] 1 Ch 179, CA (‘Corona’ cigar: limited injunction where some still
used the mark in a trade mark sense).
186
Erven Warnink v Townend [1980] RPC 31, HL (‘Advocaat’); Taittinger v Allbev [1993] FSR 641, CA
(elderflower champagne); and even Chocosuisse v Cadbury [1999] RPC 826, CA (‘Swiss chocolate’).
187
Anheuser-Busch v Budejovicky Budvar [1984] FSR 413, CA (‘Budweiser’).
188
Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ 110, [2010] RPC 16.
189
Star Industrial v Yap [1976] FSR 256, JC (‘Ace’ toothbrush).
190
Johnston v Orr-Ewing (1882) 7 App Cas 219, HL.
191 British Telecom v One in a Million [1999] FSR 1, CA. Alternatively, it may be removed or transferred
by the relevant Internet registration body (Nominet, for names in the UK country code domain) after dispute
resolution proceedings established by contract and governed by a substantive policy addressing such domain
name/trade mark conflicts.
192 eg, Annabel’s v Schock [1972] RPC 74 (name of nightclub taken for escort agency); cf Stringfellow v
McCain Foods [1984] RPC 501, CA (name of nightclub permitted on oven chips).
408
G. Registered Trade Marks
A celebrity can protect his name or image when it is misappropriated to endorse or market 6.105
another’s product or service.193 However, it is difficult to maintain a passing off claim where
the misappropriation is of fictitious characters from films and television series whose names
or images are being used on lines of goods that have not been the subject of merchandising
by the original producer.194 An action is more likely to succeed where there is a copyright
interest deserving protection (as where there are drawings of cartoon characters).195
(3) Common Law Liability: Injurious Falsehood

(a) Nature of the tort
Injurious falsehood is a tort distinct from both passing off and defamation. It renders action- 6.106
able false statements, written or oral, which are made with malice and which cause actual
damage to the claimant or are likely to cause him damage, in the case where the publication
is in writing and is calculated to cause pecuniary damage in respect of any office, profession,
calling, trade or business carried on by the claimant at the time.196 The requirement of mal-
ice continues to restrict the scope of this tort. This requires proof either that the defendant
deliberately lied or else acted for some ‘by or sinister purpose’.197
(b) Comparative advertising198

In relation to marks for goods and services, injurious falsehood has a potential application 6.107
in the field of comparative advertising.199 An advertisement in which the advertiser makes
untrue statements about a rival’s products in order to promote his own will be actionable at
common law. But the misstatement has to relate clearly to the other product and it has to
involve a real disparagement that a reasonable man would take to be a serious claim.200 It
must, in other words, fall outside the day-to-day exaggerations which are endemic in adver-
tising and which the public mostly recognize as such. In addition, malice will have to be
shown, together with a likelihood of damage.

(1) Application Procedures
The registration of trade marks was the first aspect of intellectual property to be given a thor- 6.108
oughgoing European form. Alongside the national system operating through the Trade Marks
Registry of the UK Intellectual Property Office,201 there is an EU system for procuring a
Community Trade Mark (CTM) through OHIM in Alicante.202 A Community mark has a
unitary effect throughout the EU and can therefore be enforced for the whole area in a single set
of proceedings in so-called ‘Community Trade Mark courts’ (which are in fact national courts
193
Irvine v Talksport [2002] FSR 943.
194
Wombles v Womble Skips [1977] RPC 99. Elsewhere in the Commonwealth courts have tended to take
a more protective view of personality and character merchandising.
195
Mirage Studios v Counter-Feat Clothing [1991] FSR 145.
196
Defamation Act 1952, s 3.
197
Serville v Constance [1954] 1 All ER 662, 665, per Harman J.
198
As to trade marks, see 6.128.
199 See also 6.128.
200 White v Mellin [1895] AC 154, HL; De Beers Abrasive v International General Electric [1975] FSR
323.
201 Set up by the Trade Marks Act 1875.
202 Established by Council Regulation 40/94 on the Community Trade Mark (now replaced by Council
Regulation 207/2009 on the Community trade mark); operative from 1996.
409
in each member state designated to serve in this role). Thanks to a harmonization directive,203
national (registered) trade mark law has been made to conform with the substantive principles
of this European system. Although denominated a ‘partial’ harmonization, in effect it has been
almost complete. For Britain, conformance was achieved by the Trade Marks Act 1994.
6.109 In large measure the procedures for applying to register a mark through the OHIM and the
British Registry are also equivalent.204 The OHIM does not of its own initiative conduct
a search in order to see whether there are ‘relative’ objections, ie those arising from earlier
conflicting rights. It relies on objection by third party opponents to perform this function.
In 2007 the UK registry adopted the same approach. The Court of Justice of the EU has a
remarkably heavy case-load in trade mark matters. It hears cases on appeal (via its General
Court) from registration decisions about CTMs at OHIM, as well as on preliminary refer-
ence from national courts across the entire breadth of trade mark law. Standardized EU
legislation is one thing; but given the different traditions in trade mark registration across the
countries of the EU, uniformity of interpretation is another. Because the EU-level legislation
is almost identical in substance to the harmonized national laws, both bodies of case law
inform the meaning of British law.
(2) Delimitation of Scope and Classification

6.110 Trade marks are limited in their scope by the requirement that they be registered for specified
goods or services. Infringement of the right is then judged against this listing;205 and registra-
tions which cover more than the rightholder’s own trade use may be cut back so as to allow
another person to use the same or a similar mark in the unused areas.206 Goods and services
are grouped according to an internationally agreed system of classification, and applications
to register have to be made within one of the 45 classes. But this classification is essentially
an aid to searching the register. It has no direct effect on the scope of the right ultimately
granted.
(3) Registered Marks as Property

6.111 Registered marks are personal property in English law. This means that they are in principle
capable of assignment and licensing. A legal foundation is thus provided, not just for the sale
of marks as part of a business, but also for other common business practices, where marks are
dealt with as part of a technology licence, a distribution agreement, the franchising of market
outlets, or the merchandising of personalities, characters and symbols.
6.112 There is also a desire to deal in registrations simply as and for themselves for various business
and fiscal reasons: an owner may, for instance, lose interest in a particular mark and dispose of
it to an independent buyer. But registration exists primarily to ensure that signs and symbols
do distinguish the goods or services of one business from that of others. In earlier legisla-
tion it was therefore thought necessary to have the Registry oversee transfers and licences of
marks, so as to ensure that they did not create any potential for confusion in the market.
203
First Directive (EEC) 89/104 on the Approximation of Member States’ Trade Mark Laws [1988] (now
codified by Directive 2008/95/EC).
204
Accordingly reference will be made principally to the UK system established by the Trade Marks Act
1994 (hereafter TMA 1994). A system created originally by the Madrid Arrangement for the International
Registration of Marks in 1891 allows both British and Community applications to be linked to applications
in other countries. Britain eventually was able to join the system because of reforms effected by the Madrid
Protocol of 1989; the EU separately acceded to the Protocol in 2004, creating a direct linkage between the
CTM and the Madrid system.
205
See 6.125.
206
See 6.122.
410
Over time this has come to seem unnecessarily cautious, given that most of those who deal 6.113
in marks will want them to remain positive symbols of the source of products or services.
Accordingly, the present law no longer requires any formalities beyond a written instrument
signed by the grantor and entry in the register. Ultimately, if a mark were to be used by its
proprietor or a licensee in a way which led to the public being deceived, the registration
itself might be rendered invalid. This could arise, for instance, if a well-established mark was
allowed to be used by two independent businesses at the same time. Mark-owning enterprises
which operate within complex business structures must not, by design or neglect, allow their
marks to become ‘muddied’ in their meaning to the public.
(4) What can be a ‘Trade Mark’?

In the new legislation, ‘trade mark’ is broadly defined to cover ‘any sign capable of being 6.114
represented graphically207 which is capable of distinguishing goods or services of one under-
taking from those of other undertakings’. This includes ‘words (including personal names),
designs, letters, numerals or the shape of goods or their packaging’, though this list is not
exhaustive.208 This definition represented a liberalization of British law. Now, only the most
unacceptable concepts will be ruled out as not being ‘capable’ of ever being a mark. The set-
tled description of a thing, such as ‘soap’, can never be registrable for soap and probably not
for a television series,209 nor can a particular smell be registered for a perfume. Courts have
used the requirement of a ‘sign’ to ensure that trade mark law is not abused to obtain an unfair
competitive advantage, declining eg to grant a registration in the ‘concept’ of a transparent
collecting bin forming part of the external surface of a vacuum cleaner.210
(5) ‘Absolute’ Grounds of Objection

Other less categorical objections will be dealt with under the general run of so-called ‘absolute’ 6.115
objections to registration, where the word, symbol or get-up has some quality which renders it
apparently ‘non-distinctive’.211 It may for instance describe a quality of the product or service
(‘titanium-coated’, ‘handmade’, ‘a treat’); it may have a geographical connotation or be recognized
as a name (‘Granada’, ‘Elvis’);212 it may be customarily in use or have some other ‘non-distinctive’
quality about it—for instance, where it is one or more letters, numerals or colours.213
There will also be an ‘absolute’ objection where other traders in the same field could legiti- 6.116
mately want to use the mark—as for instance with surnames, or with terms without which
those traders could not reasonably sell competing products.214 These objections overlap, but
are cumulative: either a lack of distinctiveness or the need for a term to be available to others
207 Smells are very difficult to represent graphically either by simple or technical description: Sieckmann v
Deutsches Markenamt [2002] ECR I-11737. Sound marks can be somewhat easier to register: Shield Mark v
Kist (C-283/01) [2004] ECR I-14313.
208
TMA 1994, s 1.
209
Likewise the established name for a mumps vaccine: ‘Jeryl Lynn’ Trade Mark [1999] FSR 491.
210
Dyson v Registrar of Trade Marks (C-321/03) [2007] ECR I-687.
211
TMA 1994, s 3(1). In some instances, it is possible to side-step the objection by disclaiming rights in
the unacceptable part of the mark: s 13(1). ‘Absolute’ objections may also be raised where the mark is contrary
to public policy or morality, is liable to deceive, would be contrary to law or is a state, official or royal emblem
or the like: ss 3(3)–(5), 4. An application must be in good faith, a ground which may be used against those
who seek to pre-empt the famous marks of foreign businesses: s 3(6).
212
In the former case the question of distinctiveness is whether the public would later take the name to
indicate geographical origin, rather than business source: Windsurfing Chiemsee v Huber [1999] ECR I-2779,
ECJ.
213
For colours see Libertel v BMB [2003] ECR I-3793.
214
Nichols plc v Registrar of Trade Marks [2005] 1 WLR 1418, ECJ.
411
will defeat the application. However, unless the sign is considered quite incapable of ever being
a trade mark, the initial objection may be overcome by producing sufficient evidence that the
applicant has used the sign as a mark, so that it has become a distinctive indicator of source.
The more serious the inherent objection, the stronger the countervailing evidence has to be.215
In the past, sufficient cases have been made to secure the registration of, for instance, ‘BP’ for
petrol, ‘999’ for cigarettes and ‘Smith’ for clocks. At OHIM, this type of objection can easily
become complicated: words and symbols vary in their linguistic and cultural impact from one
country to another, and the position across the EU has to be brought into account.216
6.117 The registration of shape marks, both for goods and their packaging, introduced in the 1994
legislation, could lead to one competitor getting control over an actual form of the product
itself, to the exclusion of others. Accordingly, these ‘get-up’ marks have not only to satisfy the
general tests for distinctiveness but are also excluded if the shape results from the nature of the
goods, or has a technical function, or adds substantial value. In consequence, the well-known
triangular head of the ‘Philishave’ electric razor was refused registration: a trade mark could not
be allowed to give a monopoly over so basic a feature of product design.217 These objections
cannot be overcome by evidence that the sign has become a distinctive indicator of source.218
(6) ‘Relative’ Grounds of Objection

(a) Identity and similarity
6.118 In general, the earlier applicant in time—the senior—has the better right to register a mark.
Seniority can be established either by actual trade use which is enough to give a right to pre-
vent passing off, or else by prior registration.219 In the latter case, difficulties arise over what is
to count as giving priority. If the marks are the same and are to be for the same goods or serv-
ices, there is an automatic objection. But if either the marks or the goods or services are merely
similar, there is an objection only if the public is likely to be confused, judging the issue in the
light of all the circumstances of the particular trade: types of display and advertising practices,
visual and oral usage, and so on.220 A mark which has a substantial reputation on the market is
likely to lead to confusion with a wider range of similar marks than if it has no reputation.221
6.119 Confusion may occur directly, where the two marks are likely to be mistaken for one another;
and also more inferentially, where the public can tell them apart but would think that they
belonged to one business: as where the senior has a series of marks starting ‘Porta-’ and the junior
wants one starting ‘Porto-’.222 It is not enough to show that the one suggests the other through
some loose form of association, if there is not likely to be confusion about trade source.223
(b) Dilution
6.120 A relative objection may arise if the marks are identical or similar, and there is likely to be
dilution. As first introduced in 1994, this ground only applied as regards goods or services
that were not similar. But the scope of its application was broadened by the Court of Justice
215
See Windsurfing Chiemsee v Huber, n 212.
216
Ford Motor Co v OHIM (T-91/99) [2000] ETMR 554, CFI.
217
Philips v Remington [2002] I-ECR 5475, ECJ; TMA 1994, s 3(2).
218
Benetton Group SpA v G-Star Int’l BV (C-371/06) [2008] ETMR 5.
219
The Paris Convention, Art 4, gives an international priority of six months.
220
Attention is paid to the impression overall; and to the most striking features and the ‘idea’ of the mark.
Again for the CTM, the comparison is complicated by different linguistic and cultural expectations.
221
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer [1998] ECR I-5507; and see generally Lloyd
Schuhfabrik Meyer v Klijsen [1999] ECR I-3819, ECJ (‘Lloyds’/‘Loints’ for shoes).
222
Portakabin v Powerblast [1990] RPC 471.
223
Sabel v Puma [1997] ECR I-6191, ECJ (rejecting a broader Benelux notion of ‘association’).
412
(in complete disregard of clear text) to cases where the goods and services are similar, ren-
dering the provision far less exceptional.224 The senior claimant has to show that it has a
‘reputation’ in the mark—recognition by a substantial portion of the purchasing public in
a considerable part of the country225—and that use by the junior would be without due
cause, either (i) taking unfair advantage of the reputation, or (ii) causing detriment to that
reputation (so-called ‘tarnishment’), or (iii) causing detriment to the distinctiveness of the
mark (so-called ‘blurring’). The inclusion of this third category of objection in the European
framework results from pressure from the Benelux countries and elsewhere. Demonstrating
that the public are confused about trade source will improve chances of success, but is not a
necessary element; instead, the use must be such that the first mark is ‘called to mind’.226
(7) Removal of Marks from the Register

(a) Invalidity
Once a mark has been registered, it remains in effect, provided that the renewal fee is paid at 6.121
ten-yearly intervals. If it should not have been registered initially, because either an absolute
or relative objection existed, then it may still be invalid and liable to be expunged. However,
if there was an absolute objection to the distinctiveness of the mark, this may in the interim
have been cured by sufficient evidence of use. If there was a relative objection from a person
with senior entitlement, this will cease to have effect where that person has acquiesced with-
out objection to the junior use in the country for five continuous years.227
(b) Revocation
(i) Non-use
A registration may fall prey to attack because of changes which have occurred since it was 6.122
made.228 With some frequency, registrations are revoked because the mark has not been used
for an uninterrupted period of five years. This may be for all the goods or services specified
or only for some, depending on what has (not) happened. The use has to be a genuine effort
at trading and not some colourable attempt to keep a mark stock-piled for future use; or in
order to preclude a competitor from having it; or as a substitute for a mark that is too descrip-
tive to be registrable (as in the ghost-mark ‘Nerit’ for ‘Merit’).229
(ii) Mark becoming generic
A mark will be revocable if it can be shown to have become the common description of goods 6.123
or services of a general type. Marks which approach this condition are peculiarly valuable—
think of aspirin, shredded wheat, thermos, sellotape, formica—and those who have built
them up under trade mark registrations need to work hard at promoting a different generic
word and at objecting to generic usage, particularly in dictionary definitions. The test under
the present law is, ‘has the mark become a common name for a product or service in the
relevant trade, and not merely among consumers?’230
224
Davidoff v Gofkid (C-292/00) [2003] ECR I-389; Adidas-Salomon v Fitnessworld (C-408/01) [2004]
FSR 21.
225
For a Community Trade Mark, a considerable part of the EU (which can be a single country): Pago
International v Tirolmilch (C-301/07) [2009] ECR I-9429
226
Intel Corp v CPM (C-252/07) [2008] ECR I-8823. ‘Calling to mind’, often referred to as establishing
a ‘link’, is necessary, but not sufficient to make out a dilution claim. One of the three diluting acts must also
be shown.
227
TMA 1994, s 48.
228
TMA 1994, s 46.
229
Imperial Group v Philip Morris [1982] FSR 72, CA; La Mer Technology v Laboratoires Goemar [2004]
ETMR 47, ECJ.
230
Björnekula v Procordia [2004] ETMR 69, ECJ.
413
(iii) Mark becoming deceptive

6.124 A mark can also be revoked because it has become liable to mislead the public, particularly
as to the nature, quality or geographical origin of the goods or services in question, but only
where this follows from the use made of the mark by the proprietor or a person with his
consent.231
(8) Infringement of a Registered Mark

(a) The types of case
6.125 Upon registration, the proprietor comes to occupy a senior position vis-à-vis competitors
who wish to use an identical or similar mark. Accordingly, the equivalent tests apply in this
obverse sense to those for the relative grounds of objection to an application: (1) if the marks
and the goods or services are both identical, there is infringement; (2) if the marks or goods/
services (or both) are only similar, then it must be shown that the relevant public is likely
to be confused; and (3) additionally, there can be infringement of a mark with a reputation
where a similar sign is used in ways that are likely to cause dilution.
6.126 Once more difficulties arise in distinguishing between identity and similarity, similarity and
dissimilarity, confusion and non-confusing ‘association’. In approaching these issues the
European Court of Justice has not accepted the trade mark right as a radically revised form of
protection for any value which can be associated with the investment in the mark. Indeed, it
has insisted that the proprietor of the mark cannot oppose the use of a sign if that use is not
liable to cause detriment to any of the functions of that mark.232 Thus it has refused to hold
that there is infringement when a non-authorized car dealer states that he deals and repairs
a particular make, or a perfume distributor advertises parallel imports of legitimate products
but only in an ordinary, rather than a dressed-up outlet.233 However, it has also declared that
the protectable functions of the mark include not only the ‘essential function’ (to guarantee
to consumers the origin of the goods or services), but also ‘other functions, in particular that
of guaranteeing the quality of the goods or services in question and those of communication,
investment or advertising’.234 Under this rubric, the Court has assimilated an unfair advan-
tage claim with a version of misappropriation theory best known as ‘reaping where one has
not sown’.235 This expansion has not been well-received by the British courts because it has
allowed trade mark law to restrict what some see as robust competitive activity, such as pur-
veyors of smell-alike perfumes using the names of the protected brand accurately to indicate
olfactory equivalence. More fundamentally, the British courts (joined by the Commission
and others) are wary of drawing the boundaries of acceptable competition by reference to
functions (other than source identification) that are not found in the legislation and are vague
and ill-defined.236 The Court has resisted invitations to make a full-scale retreat on the use of
so-called ‘functional analysis’, but the backlash has forced it to develop alternative vehicles for
the vindication of competitive values (such as the due cause limit on dilution actions).237
231
This could occur if the proprietor granted licences or assignments to unrelated businesses, without
retaining any power to control quality, as in Bowden Wire v Bowden Brake [1914] 31 RPC 385, HL.
232
Google France v Louis Vuitton Malletier (C-236-238/08), [2010] RPC 19.
233
BMW v Deenik [1999] ECR I-905, ECJ; Parfums Christian Dior v Evora [1997] ECR I-6013, ECJ:
only use of the mark in a way which would obviously prejudice the associations with it could amount to
infringement.
234
L’Oréal SA v Bellure NV (C-487/07) [2010] RPC 1.
235
L’Oréal SA v Bellure NV (C-487/07) [2010] RPC 1, at para 49.
236
L’Oréal SA v Bellure NV [2010] EWCA Civ 535, [2010] RPC 23.
237
Specsavers International Healthcare Ltd v Asda Stores Ltd (No. 2) [2012] EWCA Civ 24, [2012] FSR 19;
Interflora, Inc. v Marks & Spencer (C-323/09) [2012] FSR 3.
414
(b) In trade and in relation to goods or services

Whichever of the wide-ranging categories applies, an action infringes only if it is done in trade 6.127
and in relation to the goods or services. Accordingly, although the Football Association held
a registration of the England team logo for cards, a sweetmaker did not infringe by including
photocards of the players which showed the logo on their shirts.238 Moreover, a competitor is
allowed to make honest use of his own name or address, and of descriptions of the quantity,
quality and other characteristics of his goods or services; and he can indicate an intended
purpose—for instance, where he says that his film is suitable for a ‘Kodak’ camera.239
(c) Comparative advertising

The broad definition of infringement could be held to prevent all comparative advertising 6.128
which makes reference to another’s goods or services by their trade mark. The TMA 1994
introduced an exception for this, under which English courts allowed comparative advertise-
ments unless there is some material dishonesty which goes beyond the general run of puffing
at a rival’s expense. Thus, it is acceptable to set out the relative advantages of one credit card
against others, each of them named, even if other comparisons are omitted.240 It would not
be permissible to make a succession of detailed statements about the functioning of rival
computers which are demonstrably false.241 The provision in the TMA 1994 has in large part
been overtaken by a more general EU directive that allows comparative advertising subject to
a number of conditions that are essentially congruent with prior British case law.242 Although
violation of those conditions will not of itself give rise to trade mark infringement under
British law, complying with them will provide immunity from such a claim.243
(d) Parallel importing

The use of trade mark rights to prevent parallel importation from another country is difficult 6.129
to justify, since the primary purpose of protection is to maintain the mark as an indication
of origin and with parallel imports there is no deception about source. Within the EU,
trade mark rights may not be used in this way unless special circumstances arise.244 This
principle, initially derived from primary EU law, has been confirmed and extended by the
Harmonisation Directive.245
The European Court of Justice has held that it is not open to member states to adopt a prin- 6.130
ciple of ‘exhaustion’ of the trade mark right, when goods connected with the mark-owner
are imported from outside the EEA into some part of it.246 If the connected goods are sold
abroad without any notice that they are not to be exported into the EEA, this does not imply
that they may then be taken there for commercial purposes247 Trade mark law thus lowers a
portcullis against the activities of parallel importers from outside ‘Castle Europe’.
238
Trebor Bassett v Football Association [1997] FSR 211.
239
TMA 1994, s 11(2).
240
eg, Barclays Bank v RBS Advanta [1996] RPC 307.
241
cf Compaq v Dell [1992] FSR 93.
242
Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006
Concerning Misleading and Comparative Advertising.
243
O2 Holdings Ltd v Hutchison 3G (C-533/06) [2008] RPC 33. As noted earlier, the Court read these
conditions strictly as regards sell-alike perfumes.
244
See 6.16. The exceptions so far identified in the case law, concern cases where the goods have been
repackaged and relabelled with a different national trade mark: Bristol-Myers Squibb v Paranova Case C-427/93
[1996] ECR I-3457.
245
Article 7; Council Regulation 207/2009, Art 13.
246
Silhouette v Hartlauer [1998] ECR I-4799.
247
Zino Davidoff v A & G Imports [2002] RPC 403, ECJ.
415

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6

A. General 6.01 (6) Moral Rights 6.70

(b) Intangible property

(c) Forms distinguished

(2) Intellectual Property and Monopoly

(b) Unfair competition

(3) Legal Sources

(4) European Union Policies

(5) International Oversight

(6) Actions Against Unconnected Infringers

(7) Parallel Importation of Connected Goods

B. Patents for Inventions

(2) The Granting of Patents

of EU regulations and an Agreement between most EU member states, see 6.27.

Authorities and International Examining Authorities.

despite its title does not apply only to American inventions).

earlier British application made within the previous 12 months.

(c) A Unitary European Patent

28EPC, Arts 99–105; PA 1977, ss 72–74.

(3) Validity of Patents

(b) Prior art: novelty

(c) Prior art: inventive step

(d) Adequate disclosure, acceptable claims

(b) The protocol to EPC, Article 69

(c) Acts amounting to infringement

(5) Right to a Patent

(b) Employees’ inventions

to the making of improvements by one or other side, to an exclusive licensee’s obligation to

(7) Compulsory Licences

(8) Crown Use

(2) Protectable Subject Matter

(3) The Obligation of Confidence

(b) Former employees

(c) Indirect recipients and ‘intruders’

(4) Improper Use

(2) Types of Work Protected

(a) The copyright conferred on authors in a traditional sense

(b) The copyright conferred directly on investors

(3) Connecting Factor: Qualification

(c) Primary and secondary infringement

of international organizations: ss 164–168.

(d) Parallel importing

Players [1926] 2 KB 474, 491, CA, per Bankes LJ.

to be liberally interpreted.123 Unlike other copyright systems, there is no general exception

(6) Moral Rights

(c) Right of integrity

(c) Copyright contracts

(d) Collecting societies

(8) Copyright, Digital Format and the Internet

and audio-visual producers, particularly in relation to digitization.143 In their wake the EU

(9) Rights in Performances

CDPA 1988, s 296ZG.

International A/S v Danske Dagblades Forening (C-5/08) [2010] FSR 20.

(10) Public Lending

(11) Artists’ Resale Right (Droit de Suite)

(2) Registered Designs

(b) Protectable designs

1949 will be only to the latter).

(3) Artistic Copyright

(4) Unregistered Design Right: Community and UK

165 RDA 1949, s 1C(2).

(b) UK Unregistered Design (UDR): Relation to copyright

(c) Technical design and spare parts

(5) The Rights in Comparison