Intellectual property

This module guide was prepared for the University of London by:

u Jonathan Griffiths, BA (Oxon), MA, Professor of Intellectual Property Law, Queen

Mary University of London

u Luke McDonagh, BCL (NUI Galway), LLM (LSE), PhD (QMUL), Assistant Professor, LSE

u Helen Norman, LLB (Hons), LLM.

This is one of a series of module guides published by the University. We regret that
owing to pressure of work the authors are unable to enter into any correspondence
relating to, or arising from, the guide.

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Intellectual property page i

Contents
Module descriptor . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . v

1 Introduction: the challenge of intellectual property . . . . . . . . . . . 1

Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2
1.1 The challenge of intellectual property . . . . . . . . . . . . . . . . . . . . . 3
1.2 Core text . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
1.3 Learning outcomes, activities and self-assessment questions . . . . . . . . . 5
1.4 Advice on the examination . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

2 Types of intellectual property . . . . . . . . . . . . . . . . . . . . . . . 7

Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
2.1 Overview of intellectual property rights . . . . . . . . . . . . . . . . . . . . 9
2.2 The principal characteristics of intellectual property rights . . . . . . . . . 12
2.3 The theoretical justifications for intellectual property rights . . . . . . . . . 14
2.4 The absence of protection for unfair competition . . . . . . . . . . . . . . 16
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

3 Sources of intellectual property . . . . . . . . . . . . . . . . . . . . . 21

Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22
3.1 International conventions . . . . . . . . . . . . . . . . . . . . . . . . . . 23
3.2 United Kingdom legislation . . . . . . . . . . . . . . . . . . . . . . . . . 27
3.3 European Union legislation . . . . . . . . . . . . . . . . . . . . . . . . . 28
3.4 Case law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34

4 Remedies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36
4.1 General matters . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 37
4.2 Pre-trial remedies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38
4.3 Post-trial remedies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41
4.4 Involvement of public bodies . . . . . . . . . . . . . . . . . . . . . . . . 45
4.5 Public policy restrictions on the rights of the intellectual property owner . . 45
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48

5 Breach of confidence . . . . . . . . . . . . . . . . . . . . . . . . . . . 49
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50
5.1 Types of information: personal, commercial and state . . . . . . . . . . . . 51
5.2 The role of breach of confidence in intellectual property law . . . . . . . . 56
5.3 The historical development of breach of confidence and the basis for its
protection . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 57
5.4 Conditions for protection . . . . . . . . . . . . . . . . . . . . . . . . . . 58
5.5 Defences . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 63
5.6 Remedies: particular problems . . . . . . . . . . . . . . . . . . . . . . . 64
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 68
page ii University of London

6 Introduction to copyright . . . . . . . . . . . . . . . . . . . . . . . . 69
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 70
6.1 The history of copyright protection in the UK . . . . . . . . . . . . . . . . 71
6.2 Copyright compared with other intellectual property rights . . . . . . . . . 72
6.3 The justification for copyright protection . . . . . . . . . . . . . . . . . . 74
6.4 The nature of copyright and the idea/expression divide . . . . . . . . . . . 74
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 77

7 Subsistence of copyright . . . . . . . . . . . . . . . . . . . . . . . . . 79
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 80
7.1 Categories of copyright work . . . . . . . . . . . . . . . . . . . . . . . . 81
7.2 The requirement of originality . . . . . . . . . . . . . . . . . . . . . . . . 88
7.3 The requirement of permanent form . . . . . . . . . . . . . . . . . . . . 93
7.4 Qualification for protection . . . . . . . . . . . . . . . . . . . . . . . . . 94
7.5 Authorship and ownership . . . . . . . . . . . . . . . . . . . . . . . . . . 95
7.6 Duration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99

8 Copyright infringement and defences; infringement

of moral rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 101
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 102
8.1 The nature of copyright infringement . . . . . . . . . . . . . . . . . . . 103
8.2 Primary infringement . . . . . . . . . . . . . . . . . . . . . . . . . . . . 107
8.3 Secondary infringement . . . . . . . . . . . . . . . . . . . . . . . . . . 112
8.4 Defences to copyright infringement . . . . . . . . . . . . . . . . . . . . 114
8.5 Infringement of moral rights . . . . . . . . . . . . . . . . . . . . . . . . 120
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 124

9 Designs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 125
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 126
9.1 Overview of the various means of protecting designs . . . . . . . . . . . . 127
9.2 The registration system . . . . . . . . . . . . . . . . . . . . . . . . . . 128
9.3 Copyright protection for designs . . . . . . . . . . . . . . . . . . . . . . 131
9.4 Statutory provisions curtailing copyright . . . . . . . . . . . . . . . . . . 132
9.5 Unregistered design right . . . . . . . . . . . . . . . . . . . . . . . . . 135
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 145

10 Introduction to trade marks . . . . . . . . . . . . . . . . . . . . . . . .

147
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 148
10.1 The history of trade marks and trade mark law . . . . . . . . . . . . . . . 149
10.2 The nature of trade marks . . . . . . . . . . . . . . . . . . . . . . . . . 151
10.3 The functions of trade marks . . . . . . . . . . . . . . . . . . . . . . . . 153
10.4 The continuing significance of EU trade marks law . . . . . . . . . . . . . 157
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 159

11 Passing off . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 161

Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 162
11.1 The nature of passing off . . . . . . . . . . . . . . . . . . . . . . . . . . 163
11.2 The elements of passing off . . . . . . . . . . . . . . . . . . . . . . . . . 163
Intellectual property page iii

11.3 Defences to passing off . . . . . . . . . . . . . . . . . . . . . . . . . . . 168

11.4 Illustrations of the tort . . . . . . . . . . . . . . . . . . . . . . . . . . . 169
11.5 The foreign claimant and well-known marks . . . . . . . . . . . . . . . . 172
11.6 The future of passing off . . . . . . . . . . . . . . . . . . . . . . . . . . 174
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 177

12 Registration of trade marks . . . . . . . . . . . . . . . . . . . . . . 179

Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 180
12.1 Background: registry procedure . . . . . . . . . . . . . . . . . . . . . . 181
12.2 The meaning of ‘mark’ . . . . . . . . . . . . . . . . . . . . . . . . . . . 182
12.3 Absolute grounds for refusal . . . . . . . . . . . . . . . . . . . . . . . . 185
12.4 Relative grounds for refusal . . . . . . . . . . . . . . . . . . . . . . . . 198
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 210

13 Trade mark infringement and defence . . . . . . . . . . . . . . . . . 211

Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 212
13.1 Overview of trade mark infringement . . . . . . . . . . . . . . . . . . . 213
13.2 Categories of infringing acts . . . . . . . . . . . . . . . . . . . . . . . . 213
13.3 The scope of trade mark protection . . . . . . . . . . . . . . . . . . . . 215
13.4 General defences to infringement . . . . . . . . . . . . . . . . . . . . . 219
13.5 Comparative advertising . . . . . . . . . . . . . . . . . . . . . . . . . . 222
13.6 Exhaustion of rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . 224
13.7 Revocation and invalidity . . . . . . . . . . . . . . . . . . . . . . . . . . 230
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 236

14 Character, personality and image merchandising; licensing of

trade marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 237
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 238
14.1 Definition of character merchandising . . . . . . . . . . . . . . . . . . . 239
14.2 Possible means of obtaining protection . . . . . . . . . . . . . . . . . . 239
14.3 Licensing of trade marks . . . . . . . . . . . . . . . . . . . . . . . . . . 245
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 249

15 Introduction to patents . . . . . . . . . . . . . . . . . . . . . . . . 251

Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 252
15.1 The history of patent law . . . . . . . . . . . . . . . . . . . . . . . . . . 253
15.2 Justifications for patent protection . . . . . . . . . . . . . . . . . . . . . 254
15.3 Understanding the Patents Act 1977 . . . . . . . . . . . . . . . . . . . . 254
15.4 Outline of UKIPO procedure . . . . . . . . . . . . . . . . . . . . . . . . 255
15.5 Key issues in patent cases . . . . . . . . . . . . . . . . . . . . . . . . . 258
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 263

16 Patentability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 265
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 266
16.1 The meaning of ‘an invention’ . . . . . . . . . . . . . . . . . . . . . . . 267
16.2 Excluded subject matter . . . . . . . . . . . . . . . . . . . . . . . . . . 267
16.3 Novelty . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 275
16.4 Inventive step . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 279
16.5 Capable of industrial application . . . . . . . . . . . . . . . . . . . . . . 282
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 286
page iv University of London

17 Ownership of patents and employee inventions . . . . . . . . . . . . 287

Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 288
17.1 Who is an inventor? . . . . . . . . . . . . . . . . . . . . . . . . . . . . 289
17.2 Ownership of employee inventions . . . . . . . . . . . . . . . . . . . . . 290
17.3 Compensation for employee inventions . . . . . . . . . . . . . . . . . . 292
17.4 Dealings in patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 294
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 296

18 Patent infringement and defences . . . . . . . . . . . . . . . . . . . 297

Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 298
18.1 Overview of patent infringement . . . . . . . . . . . . . . . . . . . . . . 299
18.2 Categories of infringing acts . . . . . . . . . . . . . . . . . . . . . . . . 299
18.3 Defences to infringement . . . . . . . . . . . . . . . . . . . . . . . . . 302
18.4 Revocation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 304
18.5 Interpretation of patent claims . . . . . . . . . . . . . . . . . . . . . . . 305
Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 315

Feedback to activities . . . . . . . . . . . . . . . . . . . . . . . . . . . 317

About feedback . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 318
Chapter 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 319
Chapter 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 321
Chapter 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 322
Chapter 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 324
Chapter 6 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 325
Chapter 7 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 326
Chapter 8 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 328
Chapter 9 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 329
Chapter 10 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 330
Chapter 11 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 330
Chapter 12 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 331
Chapter 13 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 333
Chapter 14 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 335
Chapter 15 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 336
Chapter 16 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 337
Chapter 17 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 338
Chapter 18 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 339
Intellectual property page v

Module descriptor
GENERAL INFORMATION

Module title
Intellectual property

Module code
LA3026

Module level
6

Enquiries
The Undergraduate Laws Programme courses are run in collaboration with the
University of London. Enquiries may be made via the Student Advice Centre at:
https://sid.london.ac.uk

Credit
30

Courses on which this module is offered

LLB, EMFSS

Module prerequisite
None

Notional study time

300 hours

MODULE PURPOSE AND OVERVIEW

Intellectual property law is offered as an optional module to students on the Standard
Entry and Graduate Entry LLB programmes. It is also available as an individual module.
Credits acquired on an individual module will not count towards the requirements
of the LLB. Intellectual property law seeks to balance the establishment of rewards
for inventors and creators and the needs of society to gain access to scientific,
technological or cultural benefits. It encompasses copyright, patent and trade
mark law and some other related areas (including the legal protection offered to
confidential information and designs).

MODULE AIM
The module aims to facilitate students’ understanding of Intellectual property law,
familiarising them with the complexities of the law relating to intellectual property.
The module develops students’ ability to identify, explore and analyse key aspects of
Intellectual property law and to apply the law to case scenarios. The module seeks to
stimulate critical thought on the expansion of legal protection afforded to objects and
the ethical issues that arise.

LEARNING OUTCOMES: KNOWLEDGE

Students are expected to have knowledge and understanding of the main concepts
and principles of Intellectual property law. In particular, they should be able to:

1. Demonstrate knowledge of the United Kingdom statutory framework, together

with the relevant case law, governing the acquisition, exploitation and
infringement of registered trade marks, patents, copyright and unregistered
designs;
page vi University of London
2. Explain the common law principles governing passing off and breach of
confidence;

3. Assess the way in which EU law has limited the use of intellectual property rights to
prevent parallel imports;

4. Understand the way in which international conventions and EU secondary

legislation have influenced the content of the UK legislative framework;

5. Appreciate the commercial context in which intellectual property rights are

created and the way in which litigation affecting intellectual property rights is
conducted;

6. Understand some of the theoretical debates surrounding intellectual property

rights, including their justification, their economic effect and monopolistic
tendencies and the ethical considerations that arise.

LEARNING OUTCOMES: SKILLS

Students completing this module should be able to:

7. Apply their knowledge of Intellectual property law to complex legal problems;

8. Locate, extract and analyse information from multiple sources, including the
acknowledgment and referencing of sources;

9. Distinguish key issues, formulate them with clarity and write fluently, using legal
intellectual property terminology correctly;

10. Develop a capacity for critical evaluation of argument and evidence as well as the
ability to recognise potential alternative conclusions for particular situations and
provide supporting reasons for them;

11. Make personal and reasoned judgements based on an informed understanding of

standard arguments in certain areas of law.

BENCHMARK FOR LEARNING OUTCOMES

Quality Assurance Agency (QAA) Benchmark Statement for Law 2023.

MODULE SYLLABUS
(a) Categories of intellectual property rights. The subject matter of intellectual property.
The justification for each type of right. Absolute and relative monopolies. Absence
of common law protection against unfair competition.

(b) Sources of intellectual property law. International conventions. EU Directives. Statute.

EU and UK case law. Decisions of the EPO and UK Intellectual Property Office.
Decisions of EUIPO and the UK Trade Marks Registry.

(c) Remedies. For the enforcement of intellectual property rights.

(d) Confidential information. The theoretical basis of the action for breach of
confidence. The requirements for liability. The position of employees. Ex-
employees and involuntary recipients. Defences and remedies.

(e) Copyright. Copyright, Designs and Patents Act 1988. The definition of copyright and
the idea/expression dichotomy. Nature and types of protected works. Originality.
Creation and ownership of works. Qualification for protection under the Act.
Duration of rights. Infringement. Defences to infringement. The author’s moral
rights.

(f) Industrial designs. Historical context. The exclusion of certain artistic works from
copyright protection. Creation and content of the unregistered design right.
Relationship with Registered Designs Act 1949.

(g) Common law protection for trade marks. The tort of passing off. Requirements for
liability. Forms of passing off. Character, personality and image merchandising. The
position of the foreign claimant.
Intellectual property page vii
(h) Registered trade marks. The Trade Marks Act 1994 and the First Trade Marks Directive
1989. Definition, nature and functions of a trade mark. Obtaining registration.
Absolute and relative grounds for refusal of registration. Revocation and invalidity.
Licensing of trade marks. Infringement and defences, including comparative
advertising and exhaustion of rights.

(i) Patents. Impact of the European Patent Convention on the interpretation of the
Patents Act 1977. Applying for a patent. The role of the specification and claims. The
skilled addressee. Types of patent (process and product patents). Requirements
of patentability, including novelty, inventive step and industrial application.
Exceptions to and exclusions from patentability. Ownership of patents and
employee inventions. Revocation. Infringement, including categories of infringing
act, defences and claim interpretation.

LEARNING AND TEACHING

Module guide
Module guides are students’ primary learning resource. The module guide covers
the topics in the syllabus and provides students with the grounding to complete the
module successfully. The Module Descriptor sets out the learning outcomes that must
be achieved to develop the relevant skills. Activities in the module guide are designed
to enable students to test their understanding. The module guide is supplemented
each year with the pre-exam update, made available on the VLE.

The Laws virtual learning environment (VLE)

The Laws VLE provides one centralised location where the following resources are
provided:

u a module page with news and updates;

u a complete version of the module guides;

u pre-exam updates;

u past examination papers and reports;

u discussion forums where students can debate and interact with other students;

u quizzes – multiple-choice questions with feedback are available for some modules.

The Online Library

The Online Library provides access to:

u the professional legal databases Lexis+ and Westlaw;

u cases and up-to-date statutes;

u key academic law journals;

u law reports;

u links to important websites.

Core texts
Students should refer to the following core texts and specific reading references are
provided in each chapter of the module guide:

¢ Bently, L., B. Sherman, D. Gangjee and P. Johnson Intellectual property law.

(Oxford: Oxford University Press, 2022) sixth edition [ISBN 9780198869917].

¢ Bainbridge, D. Intellectual property. (Harlow: Pearson, 2018) 10th edition

[ISBN 9781292002644] (available in VLeBooks via the Online Library).

¢ Llewelyn, D. and T. Aplin Cornish, Llewelyn & Alpin intellectual property: patents,
copyright, trademarks and allied rights. (London: Sweet & Maxwell, 2023) 10th
edition [ISBN 9780414111448].
page viii University of London
¢ Karapapa, S. and L. McDonagh Intellectual property law. (Oxford: Oxford
University Press, 2019) [ISBN 9780198747697].

ASSESSMENT
Learning is supported through tasks in the module guide online activities. The
formative assessment will prepare students to reach the module learning outcomes
tested in the summative assessment.

Summative assessment is through a timed unseen examination. Students are required

to answer three questions out of six from a choice of essay and problem questions.
Please be aware that the format and mode of assessment may need to change in light
of events beyond our control. In the event of any change, students will be informed of
any new assessment arrangements via the VLE.

Permitted materials
During the assessment for this module, you are permitted to access the following:

¢ Blackstone’s statutes on intellectual property (Oxford University Press).

1 Introduction: the challenge of intellectual property

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

1.1 The challenge of intellectual property . . . . . . . . . . . . . . . . . . . 3

1.2 Core text . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

1.3 Learning outcomes, activities and self-assessment questions . . . . . . . 5

1.4 Advice on the examination . . . . . . . . . . . . . . . . . . . . . . . . 6

page 2 University of London

Introduction
The purpose of this module guide is to help you study the law of intellectual
property. As you work through this guide, you will gain an understanding of the law of
intellectual property sufficient to do well in the final examination. This is not, however,
a matter of memorising lots of information with the aim of being able simply to
restate it. Each chapter will introduce and take you through a systematic programme
of study. It will not give you ‘the right answer’ to be repeated, parrot fashion, in
the examination. Only by following the instructions about reading and answering
questions will you achieve the necessary level of understanding such that you will be
able to analyse and apply the law in a lawyer-like and reasoned fashion.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u appreciate why intellectual property is such a challenging yet interesting subject
u identify the necessary sources of reading for studying this subject
u begin to develop a learning strategy that will enable you to pass the
examination.
Intellectual Property 1 Introduction: the challenge of intellectual property page 3

1.1 The challenge of intellectual property

Intellectual property was a relative latecomer to the law curriculum. It is perceived as
being very topical. Nevertheless, many students find it a relatively challenging subject.
Why should that be?

First, the subject itself was, for many years, regarded as being a very specialised,
practitioners’ area and not necessarily appropriate for academic study. The first
student textbooks only appeared in the 1980s. Despite the fact that the subject is now
well-established in the undergraduate curriculum, it remains heavily influenced by
practitioners and the commercial demands of their clients.

Second, the principal areas of intellectual property law, namely patents, designs,
copyright, trade marks and breach of confidence, have surprisingly little in common
with each other when examined in detail. Although they all operate to protect various
forms of human creativity, the scope of each is quite different. Some are statute based,
some are derived from case law. Each has its own discrete set of legal rules for the
creation, ownership and infringement of the right in question.

Further, each area presents its own intellectual challenge to the student. In the
case of copyright, although the basic principles are relatively straightforward,
under UK law, the rules themselves are very detailed. As a simple example, the UK
Copyright, Designs and Patents Act 1988, as amended, has over 50 separate defences
to copyright infringement, each with very precise criteria. Attention to detail is
therefore paramount. By contrast, in relation to designs, the law itself is complicated,
with potentially five diverse means for a designer to obtain legal protection for their
creative efforts. Each of these has its own criteria for obtaining protection, ownership,
duration and infringement. The challenge for the student is to identify which is the
appropriate method of protection, depending on the facts of the case.

Trade marks act as a means of communication between the manufacturer of goods and
the ultimate consumer. Whether a particular brand name is capable of registration or
whether, once registered, it has been infringed, are issues heavily dependent on the
court’s view of how words and other symbols conveying messages are perceived and
understood by English consumers. Those for whom English is a second language may
find the fine nuances of meaning given by such signs hard to grasp. Finally, in the case of
patents, the legal principles are again quite straightforward. What many students find
difficult are the cases themselves. Many law students do not have scientific backgrounds
and therefore believe that they will not understand the technology being discussed by
the judges when deciding issues of patent validity and infringement. ‘Technofear’ gets in
the way. The solution is to concentrate on the legal principles. It is not necessary to have
a PhD in biotechnology to be able to understand the law of patents.

A further challenge presents itself. Some of the areas covered by intellectual property,
for example, the tort of passing off and the action for breach of confidence, are almost
entirely ‘home grown’ – that is, they are products of English common law. As case law
subjects, they require students to digest a large number of judicial decisions. The
remaining areas of intellectual property have been heavily influenced over the last
three decades by conventions, both international and regional, and by secondary
legislation of the European Union (EU). For that reason, students need to adjust both
to different legislative styles and to disparate judicial methods of interpretation. This
is because key cases which explain recent legislation may have been decided either
by UK courts or by the EU courts, namely the Court of Justice (CJEU) and the General
Court (formerly called the Court of First Instance). Even post-Brexit, decisions of EU
courts have continued significance in the UK (see Section 3.3). Decisions relating to
the granting of intellectual property rights may likewise have emanated from the
United Kingdom Intellectual Property Office (UKIPO) (formerly called the Patent Office),
the European Patent Office (EPO) or the European Union Intellectual Property Office
(EUIPO).
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Last, the pace of change in this subject area is rapid. For that reason, the standard
advice given to law students – to ensure that they buy the latest edition of a textbook
– is even more important. Do remember to check the publication date of the textbook
you have purchased. There will have been significant legislative amendments and
cases after its publication date. In Chapter 3, we will indicate some useful online legal
databases and websites that should help you to stay up to date.

As with all module guides for the LLB degree, this guide is not intended to be a
substitute for reading cases, articles and textbooks. The Core text, Essential reading
and exercises in each chapter should be taken seriously. Only by working through
the chapters one at a time will you acquire understanding of the subject. Usually, the
final examination will contain at least as many problem questions as essay questions.
The only way you will be able to apply the law to new factual situations is to meet the
requirements of the exercises which are set for you in this module guide.

1.2 Core text

Each chapter identifies the topic to be considered and begins with a brief introduction
and a statement of Learning outcomes. In some instances, you will be instructed to
revisit one or more of the previous chapters in this module guide. This means that
you should spend some time going over that chapter, and your notes and answers to
questions, to reacquaint yourself with that topic. It is important that you do this, as
previous chapters may well form the ‘building blocks’ for key issues to be dealt with later.

Each chapter is then generally subdivided into separate sections so as to break up the
information into manageable amounts. Each section will begin with ‘Core text’. This
will include pages from the recommended textbooks (see below). It will also typically
list cases and relevant statutory provisions. ‘Essential reading’ is used to identify those
materials which you must read. With regard to textbooks, the relevant passages from
four textbooks are listed, and you should read the relevant passages from at least one.
It is strongly advised that you buy one of these textbooks. If, however, you have good
access to a library which contains one or more of them, and you are able to get hold
of these texts regularly, then this may not be necessary. You should be aware that the
different authors have different views and will present the material in different ways.
Further, some authors concentrate on particular areas of intellectual property law
when compared to the others, so none of the texts gives comprehensive coverage,
and all will deal with various issues that are not on the syllabus. Some writing styles
will be more accessible to you than others. None of them is best suited to all students,
so, if you can, examine some of the chapters in each of these books before deciding
which, if any, to buy.

Occasionally, chapters may indicate ‘Further reading’. These materials will broaden
your knowledge of the chapter topic, but should not be attempted until you have
tackled the Core text and Essential reading and feel that you have a solid grasp of the
subject.

The recommended textbooks are:

¢ Bently, L., B. Sherman, D. Gangjee and P. Johnson Intellectual property law.

(Oxford: Oxford University Press, 2022) sixth edition [ISBN 9780198869917]
(hereafter ‘Bently et al.’).

¢ Bainbridge, D. Intellectual property. (Harlow: Pearson, 2018) 10th edition

[ISBN 9781292002644] (hereafter ‘Bainbridge’). This is available in VLeBooks via
the Online Library.

¢ Llewelyn, D. and T. Aplin Cornish, Llewelyn & Alpin intellectual property: patents,
copyright, trade marks and allied rights. (London: Sweet & Maxwell, 2023) 10th
edition [ISBN 9780414111448] (hereafter ‘Cornish’).

¢ Karapapa, S. and L. McDonagh Intellectual property law. (Oxford: Oxford

University Press, 2019) [ISBN 9780198747697] (hereafter ‘Karapapa and
McDonagh’).
Intellectual Property 1 Introduction: the challenge of intellectual property page 5
You are not required to read all these books but you should obtain and study at
least one. You will also find an up-to-date statute book extremely useful. These are
generally updated every year. The statute book for this subject is:

¢ Blackstone’s statutes on intellectual property (Oxford University Press).

1.3 Learning outcomes, activities and self-assessment questions

A number of ‘Learning outcomes’ are listed at the beginning of each chapter. The list
is meant to help you find your way through the materials, to provide a ‘route-map’.
However, you should remember that understanding any particular area of law is not
simply about how much factual information you can acquire. It is essential that you
learn to apply that knowledge, both in the context of problem questions involving
hypothetical situations, and essay questions dealing with theoretical issues. You are
therefore expected to reflect on what you know, to evaluate the logic or otherwise
of the legal rules which you have learned and to write critically about them. This is
why many of the learning outcomes are stated in the form of ‘knowing how’ to do
something or being ‘able to explain’ how the law in a particular area works.

To help you to achieve these learning outcomes, you will come across activities, self-
assessment questions and sample examination questions throughout this guide. It is
important that you tackle these conscientiously. Doing so will help you to remember
and understand the content of the course. It will also give you practice in writing
legal English and formulating arguments which will help you when it comes to the
examination.

Activities (which usually have some form of feedback at the end of this guide) require
you to perform a task in relation to the material you have just studied. This might
involve you summarising the arguments put forward in a case or journal article
(sometimes you might be asked to put forward a counter-argument) or reading two
apparently contradictory cases and attempting to reconcile them. You can undertake
all of these activities working alone, but – if possible – it is always useful to tackle
questions with a group of fellow students, so as to promote discussion and debate.

Self-assessment questions require no feedback. They are designed for you to confirm
to yourself that you have identified and understood the issues which have been
discussed in the text.

Sample examination questions are included at the end of most chapters. Some
chapters, being essentially an introduction to a new area of the course, may
contain information which is not directly examinable and so will not contain such
questions. Nevertheless, do not feel tempted to skip such chapters, as they lay the
foundations for what is to follow. Where chapters do contain examination questions,
it is advisable that you attempt to answer each question under mock examination
conditions, without consulting your notes or the text. Taking this approach will help
you to develop your ability to think critically and construct an argument in limited
time. It will also encourage you to identify those areas where your understanding
is insufficient to enable you to demonstrate your knowledge of the subject under
examination conditions.

The structure of each chapter

All the chapters follow a similar format. In general, each chapter will begin with a list
of contents followed by an introduction and relevant reading. This will be followed by
a list of Learning outcomes. The main text will be broken into the various sub-topics,
each sub-topic being prefaced by Core text. Further, each sub-topic will normally
contain activities with feedback and self-assessment questions. Each chapter will
normally conclude with one or more sample examination questions with feedback.
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1.4 Advice on the examination

At the end of the course you are required to sit an examination. This takes the form of
a timed unseen paper. You will be required to answer three questions from a total of
six. The choice is unrestricted in that there are no compulsory questions. The paper
will be made up of a mixture of essay questions, problem questions and questions
which may combine elements of both. You should note that not every topic can or
will be examined in any one year and you should not regard a particular topic as being
‘guaranteed’ to appear on the paper.

You are allowed to take a statute book into the examination. It is vital, therefore, that
you know your way around the statutes: it is a complete waste of time taking a statute
book into the examination if you have not looked at it before. Also, remember that
marks are not awarded for merely copying out the wording of a piece of legislation.
You should aim therefore to use your statute book as a reminder. Each of the principal
statutes (the Patents Act; the Trade Marks Act; the Copyright, Designs and Patents
Act) can be used as a framework for your answer, particularly for problem questions.
You should try to ensure that you know where the key provisions are in each statute
relating to:

u criteria for protection

u infringement

u defences

u remedies.
2 Types of intellectual property

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

2.1 Overview of intellectual property rights . . . . . . . . . . . . . . . . . . 9

2.2 The principal characteristics of intellectual property rights . . . . . . . . 12

2.3 The theoretical justifications for intellectual property rights . . . . . . . 14

2.4 The absence of protection for unfair competition . . . . . . . . . . . . 16

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

page 8 University of London

Introduction
The purpose of this chapter is to set out the various categories of intellectual property
rights which are recognised by UK law. You should not worry at this stage about the
specific rules for the existence and infringement of such rights, as these issues will be
dealt with in more detail in later chapters. Rather, you should concentrate on trying to
understand the purpose of each type of right and the subject matter which it protects.
It is important that you are able, at an early stage of your studies, to distinguish clearly
between the various types of right, as each is quite different. Each right has its own
unique rules for creation, infringement and ownership, although it is possible for one
set of facts to give rise to several rights. Knowing which right is relevant is crucial to
enable you to select the appropriate statutory provisions and supporting case law
when answering questions.

In addition, this chapter will introduce you to some of the recurring themes in
intellectual property. We shall examine the main characteristics of intellectual
property rights, in particular the fact that they give rise to monopolies. If (as economic
theory assumes) monopolies are bad, why then are intellectual property rights
allowed – indeed, encouraged? Further, how is the balance to be struck between the
interests of society in having free competition and the interests of the creator in being
rewarded for their efforts? You should pay particular attention to the subject matter of
each type of intellectual property right and their general characteristics.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u list the principal types of intellectual property rights and describe in general
terms the key features of each of them
u set out the principal characteristics of all intellectual property rights
u explain the reasons which are put forward to justify the existence of intellectual
property rights
u explain what is meant by the term ‘unfair competition’ and why UK courts have
traditionally refused to recognise this as a separate form of harm
u define: patent, copyright, design, trade mark and confidential information.
Intellectual property 2 Types of intellectual property page 9

2.1 Overview of intellectual property rights

Core text
¢ Bainbridge, Chapter 1 ‘Introduction’ pp.3–10.

Patents
A patent is concerned with applied technology, that is with how things work, not
with abstract ideas. The subject matter of a patent, called an invention, can be either
a product (a tangible item) or a process (a method of making something or a means
of using something). The criteria for patentability are that the invention must be new,
contain an ‘inventive step’, be capable of industrial application and must not fall within
the statutory list of excluded subject matter. To determine whether an invention is new
and has an inventive step, it is compared with all information which is available to the
public at the date the application is made. This information is called ‘the prior art’. A
patent is granted by the United Kingdom Intellectual Property Office (throughout this
guide, ‘UKIPO’) for a maximum period of 20 years (calculated from the date on which
the application was made) and confers on its owner (called the patentee) an exclusive
right to make, offer, dispose of, keep or use the product, or to use or offer the process
which is the subject matter of the patent. If another person infringes a patent, the fact
that they created the same invention independently is not a defence. Under UK law, the
relevant legislation is the Patents Act 1977, as amended.

Copyright
Copyright is the right to stop the copying and distribution of certain categories
of ‘work’. Examples of items which are potential copyright works are books, plays,
music, paintings, films, sound recordings and broadcasts. Do not assume, however,
that copyright law in the UK protects only those works which are the result of great
creativity. The threshold for protection is very low, so that everyday items (such as lists
of TV programmes) are protected. To qualify for protection, the work must be original,
be recorded in a permanent form and the author must be a qualifying person. Unlike
other statute-based forms of intellectual property, copyright protection does not
depend on registration but arises automatically once the work is created. Copyright
protection lasts for a long time, generally speaking, for the lifetime of the author plus 70
years. The copyright owner has the exclusive right to stop anyone else from reproducing
the work (that is, copying it), issuing copies of the work (including renting out copies),
performing the work in public, communicating the work to the public (whether by
broadcast or the internet) or adapting the work. They also have the right to stop anyone
else from dealing in infringing copies of the work by way of trade. However, to succeed in
a copyright infringement action, the owner has to prove that the defendant copied the
work. Independent creation is therefore always a defence to copyright infringement.
Under UK law, the relevant legislation is the Copyright, Designs and Patents Act 1988
(throughout this guide, ‘CDPA’).

Designs
The law of designs is concerned with the appearance of products, that is, with how
things look. In design law, what is protected is not the underlying article (which may be
an everyday item such as a teapot), but the design features which have been applied
to it. Under UK law, a designer may have up to three means of legal protection for their
design, depending on the facts: registered design protection, unregistered design right
or copyright (two further means of protection are available under EU law).

In the case of registered designs, the criteria for protection are that the design must
be new and have ‘individual character’, which means that it must produce on the
informed user (that is, a potential customer but not necessarily a consumer of the
product) an overall impression which is different from that of previous designs.
A registered design is granted by the Designs Registry (part of UKIPO) and lasts for a
maximum of 25 years, calculated from the application date, subject to the payment
of five-yearly renewal fees. It confers on its owner the exclusive right to prevent
page 10 University of London

anyone else from using the design on any product: from making, offering, putting on
the market, importing, exporting, using or stocking a product in which the design
is incorporated or to which it is applied. As with patent protection, independent
creation is not a defence to a claim for registered design infringement. The relevant
legislation is the Registered Designs Act 1949, as amended.

For some industries, especially those in which the design of products changes
rapidly, the formality and delays inherent in a registration system are felt to be
inappropriate. The alternative means of protection is the unregistered design right.
This is a copyright-type right to protect the shape or configuration of the whole or
part of an article. The right arises automatically, without the need for registration,
once the design has been created. The criteria for protection are that the design
must be original (in the copyright sense), not commonplace and recorded in a design
document. The duration of protection, however, is much shorter than copyright,
with a maximum period of protection of 15 years from creation, reduced further to
10 years from first marketing if articles bearing the design are sold anywhere in the
world within five years of the design having been created. The design right owner has
the exclusive right to stop anyone else from reproducing the design (that is, copying
it) by making articles to it for commercial purposes, and the right to stop anyone else
dealing in infringing copies of the design by way of trade. To succeed in a design right
infringement action, the owner has to prove that the defendant copied the work, so
that independent creation is a defence to design right infringement, just as it is to
copyright infringement. The relevant legislation is Part III of the CDPA.

Lastly, a designer may still, in certain limited circumstances, be able to claim copyright
protection for the appearance of an article. This is where the article is an artistic work
in its own right, for example, a work of artistic craftsmanship, such as hand-carved
furniture or a sculpture. The criteria for protection and the scope of protection are the
same as for copyright above. The only difference is that if the artistic work has been
the subject of mass-production (that is, more than 50 copies of it have been made
industrially), then the duration of copyright protection is curtailed to 25 years.

Trade marks
A trade mark is a sign or symbol used in the course of trade to indicate the origin of
goods or services. It is an integral part of the consumer society, enabling customers to
distinguish one product from another and to choose between competing brands,
returning to those which have given satisfaction and avoiding those which have not.
There are two legal routes to protecting a trade mark: by registration or by means of
an action in tort for passing off.

In the case of registered trade marks, the criteria for protection are that the sign
must be capable of graphic representation and capable of distinguishing the goods
or services of one undertaking from those of another. It must not fall within the list of
absolute grounds for refusal (that is, objections which relate to the inherent nature of
the mark itself), nor must it fall within any of the relative grounds for refusal (that is,
it must not conflict with any prior rights). Once registered (registration being granted
by the Trade Marks Registry, again part of UKIPO), it is capable of lasting indefinitely.
This is subject only to the payment of renewal fees every 10 years. Registration does
not mean that the mark is safe from counter-attack: where the proprietor has failed to
look after the mark, they may have made it vulnerable to an action for revocation by a
third party. Registration gives the proprietor the exclusive right to prevent others from
using the same or similar sign in the course of trade in relation to the same or similar
goods (or, in some instances, dissimilar goods) for which the mark is registered. The
relevant legislation is the Trade Marks Act 1994.

Passing off
However, it is not compulsory for a trader to obtain registration for any brand name
they may wish to use in the course of trade. Alternative protection for unregistered
trade marks (sometimes called ‘common law’ trade marks) is available through the
tort of passing off. Passing off is entirely judge-made law. It is generally accepted that
Intellectual property 2 Types of intellectual property page 11

the ingredients of passing off are as stated by Lord Oliver in Reckitt & Colman v Borden (JIF
LEMON) [1990] 1 WLR 491 (HL). To be successful, the claimant must prove that:

u their name, trade mark, logo or other visual symbol has, through use, acquired a
reputation which has generated business goodwill

u the defendant, by using this symbol, has made a misrepresentation in the course of
trade to customers that their goods or services are in some way ‘connected with’
the claimant

u the claimant has suffered or will suffer damage to their business goodwill as a
result.

The onus is on the claimant to prove each element of the definition. If any one of these
ingredients is missing, the passing off action will fail. This may help to explain why
registering a trade mark is preferable to relying on the lottery of the passing off action.

Confidential information
The action for breach of confidence is the means of protecting trade secrets. The
action for breach of confidence can also be used to protect personal and state
information. It is the one area of intellectual property law which can provide protection
for ideas themselves. The action for breach of confidence does not depend on statute,
but on case law. The accepted requirements for the action (established by Megarry J in
Coco v Clark [1969] RPC 41) are that the successful claimant must prove that:

u there existed confidential information

u the defendant owed the claimant a duty of confidence (which may be inferred
from the circumstances, such as the parties being in a joint venture)

u breach of that duty by the misuse or wrongful disclosure of that information by the
defendant.

If, however, the information or idea is known to the public (‘in the public domain’)
then it is incapable of protection.

Activity 2.1
Complete this table to compare the various kinds of intellectual property right.

Method of Is ‘independent
What is registration Duration of creation’ a
Right covered? (if any) protection defence?

Patent

Copyright

Design (registered)

Design (unregistered)

Design (artistic work)

Trade mark

Confidential
information

No feedback provided.
page 12 University of London

Self-assessment questions
Give a description of each of the following:
1. A patent.

2. Copyright.

3. A design.

4. A trade mark.

5. Confidential information.

Activity 2.2
Household Appliances Ltd is a leading manufacturer of consumer goods. The
company is about to launch a new kettle. The kettle is to be called the HOTTA and
has an unusual shape. The kettle is more efficient in heating water and is safer
for consumers to use, because when boiled it remains cool to touch. The reason
for these two advantages is that instead of having a single wall, the kettle has a
double wall, the gap between the two layers of metal being filled with a special gas.
Because of the special properties of the gas, safety legislation obliges the company
to supply a detailed instruction leaflet when selling the kettle. The gas is obtainable
only from certain specialist suppliers and the company is concerned in case its
competitors learn who these suppliers are. Identify which categories of intellectual
property protection should be considered by the company.

Summary
The principal categories of intellectual property rights are patents, copyright,
designs, trade marks and confidential information. Each protects different aspects
of information. Patents protect inventions, copyright protects works, designs are
concerned with the appearance of products and trade marks with brand names
and other signs used in the course of trade. Confidential information protects trade
secrets. Protection for patents, designs and trade marks is normally obtained by means
of registration, while copyright arises automatically on the act of creation. Most forms
of protection are statute-based, but common law protection for trade marks and the
protection of confidential information is the result of case law.

2.2 The principal characteristics of intellectual property rights

Core text
¢ Cornish, Chapter 1 ‘Starting points’ paras 1–040 to 1–047.

2.2.1 Property rights

Intellectual property rights are, naturally, proprietary in nature. They can be bought
and sold, mortgaged and licensed just like any other type of property. A valuation
can be put on them for contractual or accounting purposes. Nevertheless, it is very
important to be able to distinguish between the property rights which exist in a
tangible item and the intangible intellectual property rights which may be embodied
in that item. For example, if A writes a letter to B, the piece of paper received by B
will belong to B as it was intended as a gift by the sender. However, the copyright in
the words contained in the letter will belong to the creator, A. Further, A may use a
pen to write the letter. The pen will be A’s personal property, but there may well be a
patent for the pen belonging to C Ltd, or perhaps, if the pen is of an unusual shape, C
Ltd might own a design right in respect of the pen. The fact that there are intellectual
property rights over the pen does not prevent the use or ownership of the tangible
item by A, just as A’s ownership of copyright in the letter does not affect B’s ownership
of the piece of paper on which the letter is written. However, were B to attempt to do
something falling within the scope of A’s copyright (such as to copy the letter or to
include it in his autobiography which is about to be published in a newspaper) then
A’s copyright may well (depending on the circumstances) be infringed.
Intellectual property 2 Types of intellectual property page 13

2.2.2 Territorial nature

Intellectual property rights are territorial in nature, that is, they arise as a result of
national legislation which authorises an official ‘grant’ of the right by a national
intellectual property office. In the case of copyright, which does not depend on
registration, the ‘grant’ of the right by UK law is automatic, providing the conditions in
the CDPA are fulfilled. For actions in passing off or breach of confidence, the ‘grant’ of
the right is as a result of a judicial decision in favour of the claimant.

This territorial nature means that an intellectual property right is only effective in
the territory of the state granting that right. As an example, a patent granted by
UKIPO only has effect for the territory of the UK. It does not give the patentee any
rights outside the UK and it can only be infringed by conduct which occurs within the
territory of the UK.

There are various consequences of this proposition. First, where protection is

required for a patent or trade mark or registered design in more than one country, it
is necessary to obtain separate registration for that right in each country. It should be
noted that various international conventions exist which assist an applicant to make
multiple simultaneous applications in several countries (you do not need to know the
detail of these conventions, just be aware that they exist).

The content of a particular intellectual property right may vary from country to For this reason, it is very
country. Despite the existence of various international conventions which have important that any materials
attempted to standardise intellectual property laws, differences do exist between the you read beyond the
laws of the Contracting States. These differences may relate to the detailed rules of a recommended reading in
particular intellectual property right, or to the legal systems within which the right is this module guide relate to
enforced, or to the social and cultural values which that legal system seeks to uphold. UK law and not the law of
another legal system.
One final consequence of the territorial nature of intellectual property rights will be
mentioned briefly at this stage, although it will be dealt with in much more detail in
Chapter 13. The various statutory provisions set out what conduct infringes intellectual
property rights (for example, the Trade Marks Act 1994 s.10(4)(c)) entitles the proprietor
to prohibit the importation of goods (there are similar provisions for patents, designs
and copyright). Given that this is the case, what if trade marked goods have been sold by
the trade mark owner themselves in another country? Does the UK registration entitle
the trade mark owner to sue the importer for infringement, so as to keep legitimate
(rather than pirated) goods out of the country? This would enable the trade mark owner
to protect their UK distributors from price competition, as the importer may well have
acquired the branded goods more cheaply elsewhere. The answer is, it depends. Even
post-Brexit, if the trade mark owner first sold the goods in a Contracting State of the
European Economic Area (EEA) (which consists of the 27 EU Member States plus Iceland,
Norway and Liechtenstein), the trade mark owner’s rights are regarded as exhausted
or spent. No objection can be made to further dealing in these parallel imports (as
they are called) in the UK unless the importer does something to undermine the value
of the trade mark. However, if the goods were first sold by the UK trade mark owner
outside the EEA territory (for example, in the USA), the principle of exhaustion of rights
does not apply, and national trade mark rights enable the owner to sue for trade mark
infringement (see Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019).
National trade mark rights can therefore be used to prevent parallel imports of goods
first marketed outside the EEA.

2.2.3 Monopolistic nature

You may have noticed that the descriptions of the various categories of intellectual
property rights given in 2.1 above used the phrase ‘exclusive right’. This phrase
embodies two important concepts. First, that intellectual property rights are negative
in nature, because the owner is given the right to exclude others. To go back to the
example in 2.2.1 above, A’s copyright in the letter written to B does not give A any
positive rights of ownership over the physical medium of the piece of paper. Rather, it
gives A the right to prevent B (or anyone else) from infringing any one of the particular
rights conferred on the copyright owner by statute, for example, the right to stop the
page 14 University of London

letter being copied or communicated to the public. Second, the phrase ‘exclusive
right’ means that the owner of the intellectual property right is the only person who
can exploit the right. So, for example, in the case of a patent, the patentee is the only
person who can make the patented product, offer it for sale, dispose of it, keep it or
use it by way of trade. In the case of a registered trade mark, the owner is the only
person who can apply the mark to goods, sell goods bearing the mark, import or
export the goods, or advertise goods bearing the mark. In other words, an intellectual
property right gives rise to a legal monopoly.

Whether monopolies are good or bad is the subject of much debate among
economists. It is beyond the scope of this module guide. Nevertheless, at common law,
since the case of Darcy v Allin (Case of Monopolies) (1602) 11 Co Rep 84b, all monopolies
are viewed as contrary to public policy. This was confirmed by Parliament in the Statute
of Monopolies 1623, to which patents are declared to be an exception by s.6.

Present-day intellectual property legislation contains many built-in safeguards to

ensure that a balance is struck between the rights of the intellectual property owner
and free competition. Some of these safeguards require the owner to pay renewal fees
regularly (in the case of patents, registered designs and trade marks). Others require
the owner to make effective use of the intellectual property right: hence failure to
exploit a patent may result in compulsory licensing and failure to use a trade mark for
more than five years means that the registration may be revoked at the instigation of
any third party. In the case of copyright and designs, the competition authorities may
intervene where the owner has abused the right. With the exception of trade marks,
all intellectual property rights are of finite duration. Finally, in the case of all registered
intellectual property rights, statute provides for the right to be declared invalid in
certain instances, so unlike real property and tangible personal property, intellectual
property rights are always vulnerable to challenge by third parties.

Summary
The three principal characteristics of intellectual property rights are that they create
intangible rights of property, that they are territorial in nature and that they confer
exclusivity. The intangible rights accorded to the intellectual property owner must be
kept separate from the ownership of the physical medium in which those rights are
embodied. Territoriality means that intellectual property rights are confined in their
effect to the state which has ‘granted’ that right. Exclusivity means that the owner of
the right can prevent others from certain types of conduct and that they are the only
person who can do this for the duration of the right concerned.

2.3 The theoretical justifications for intellectual property rights

Core text
¢ Bently et al., Chapter 1 ‘Introduction’ Section 2 ‘Justifications for intellectual
property’.

Essential reading
¢ Jacob, Sir R. ‘The Stephen Stewart Memorial Lecture: industrial property –
industry’s enemy’ (1997) IPQ 3 (available in Westlaw via the Online Library).

¢ Libling, D.F. ‘The concept of property: property in intangibles’ (1978) 94 LQR 103
(available on the VLE).

¢ Spence, M. ‘Passing off and the misappropriation of valuable intangibles’ (1996)

112 LQR 472 (available in Westlaw via the Online Library).

Intellectual property rights involve protecting the product of the intellect. Ultimately,
therefore, they protect information. Assuming that property rights over real and
personal property can themselves be justified (and certain philosophies deny this), is
Intellectual property 2 Types of intellectual property page 15

it correct to treat information in the same way? Should information be the subject of
private rights or should it be regarded as public property – what John Locke referred
to as ‘the commons’? Further, if private property rights are allowed to exist over
information, what safeguards should be created to ensure the protection of the public
interest in such information, so that enough of ‘the commons’ is left for others to enjoy?

Many reasons have been advanced in academic literature as to why there should
be private rights of ownership in intellectual property. Such reasons are not often
articulated in UK case law (although for an exception, see Dranez Anstalt v Hayek
[2003] FSR 561 at para 25). Reasons which are advanced include: that one should not
steal what belongs to another (which assumes that ideas are property); that a person
should be entitled to own the product of the intellect just as much as they might own
a piece of furniture they have carved from a tree (this argument is derived from the
writings of John Locke); or that it is in society’s interests either to reward those who
are inventive, or else to provide incentives to creativity, as in the long term this will
improve everyone’s standard of living (these arguments owe much to the writings of
Jeremy Bentham and are called ‘utilitarianism’).

If intellectual property rights are accepted as valid, however, one would expect
that the protection which they confer on their owners should perhaps reflect
the justifications for such rights. Regrettably, the law does not always distinguish
between ‘good’ and ‘bad’ intellectual property rights. There is no difference in the
protection accorded to a patent for a new life-saving drug and one for a very minor
modification to the internal combustion engine. The composer of a great choral work
receives no better protection than does the person who writes a jingle for a television
advertisement.

Finally, if intellectual property rights are accepted as beneficial to society, because

they confer monopoly power, there remains the question of how to strike the balance
between the interests of the owner and the interests of society. Should the task of
striking this balance fall to the discretion of the judges, should it be built in to the
legislation creating the intellectual property rights, or should it be left to those with
authority to administer competition law? Either way, as Sir Robin Jacob has argued
very forcefully, intellectual property rights continue to expand and strengthen, with
little attention being paid to protecting the interests of others.

Activities 2.3 and 2.4

2.3 Read the article by Sir Robin Jacob (listed above). What are his concerns about
trends in intellectual property? What examples does he give of intellectual
property ‘getting out of hand’?

No feedback provided.

2.4 What arguments have been advanced to justify the recognition of intellectual
property rights? Which of these do you find most convincing? Is it possible to
defend the existence of all intellectual property rights by the use of a single
argument or does each type of right require a different justification?

Further reading
¢ Ricketson, S. ‘“Reaping without sowing”: sowing: unfair competition and
intellectual property rights in Anglo Australian law’ (1984) 7 UNSWLJ 1.

Summary
Intellectual property rights are justified by a number of different philosophical and
economic arguments. These arguments are not often considered by the courts when
deciding intellectual property litigation, nor by legislators when creating new rights.
The value of intellectual property rights to society is often a matter of assertion and
almost impossible to prove scientifically.
page 16 University of London

2.4 The absence of protection for unfair competition

Core text
¢ Cornish, Chapter 1 ‘Introduction’ paras 1–012 to 1–022.

Essential reading
¢ Cases: Victoria Park Racing v Taylor (1937) 58 CLR 479 (Aust HC); Moorgate Tobacco
v Philip Morris [1985] RPC 219, especially pp.235–40; Erven Warnink BV v Townend &
Sons [1979] AC 731; Cadbury-Schweppes v Pub Squash Co [1981] RPC 429 (read only
Lord Scarman at pp.486–97); Irvine v Talksport [2002] 2 All ER 414 (Patents Court);
Arsenal Football Club v Matthew Reed [2003] 2 CMLR 25 (CA); L’Oréal SA v Bellure NV
[2008] RPC 9 (CA); C-487/07 L’Oréal SA v Bellure NV, 18 June 2009 (CJEU); L’Oreal SA
v Bellure NV [2010] EWCA Civ 535.

The Paris Convention for the Protection of Industrial Property 1883 (explained further
in Chapter 3) contains in Article 10bis an obligation for its Contracting States to provide
effective redress against unfair competition. ‘Unfair competition’ is defined as being
‘any act of competition contrary to honest practices in industrial or commercial
matters’. To put this another way, it is conduct which, although not amounting to
infringement of a specific intellectual property right, involves taking advantage
of or benefiting from the effort, skill and investment of another enterprise in such
a way as to affect that enterprise’s ability to compete. It may be conveniently, if
emotively, described as ‘free riding’ or ‘reaping without sowing’. Article 10bis gives a
non-exhaustive list of examples, including creating confusion with the activities of
a competitor, making false allegations in the course of trade such as to discredit a
competitor and misleading the public as to the nature of goods. More recently, in the
context of defences to trade mark infringement, the CJEU has rephrased the concept
of unfair competition as involving ‘the duty to act fairly in relation to the legitimate
interests of the trade mark proprietor’ (C-100/02 Gerolsteiner Brunnen GmbH v Putsch
GmbH [2004] ECR I-691). Many other European states, for example, France and Germany,
have a specific law against unfair competition.

As mentioned in 2.2.3 above, UK courts have traditionally adopted a robust view of

competition, such that any form of business conduct is regarded as fair provided that
it does not amount to criminal conduct (Crofter Hand Woven Harris Tweed v Veitch
[1942] AC 435). Consequently, UK law (and indeed the law of several other common
law jurisdictions) has no general concept of unfair competition. Instead, intellectual
property is divided into the discrete rights listed above. Where a claimant seeks
protection for something falling outside such categories, the action is likely to fail
unless an existing right can be ‘stretched’ to fit. The judiciary is reluctant to expand the
boundaries of the existing rights.

This approach may be compared with that of the US Supreme Court in the case of
International News Service v Associated Press (1918) 248 US 215 (discussed in the Libling
article in 2.3 above), where the majority of the court held that taking news stories of
the First World War collected by the claimants and telegraphing them to the West
Coast of the USA in order to publish the news there first, before the claimants’ own
newspapers could do so, amounted to an act of unfair competition. You should note,
however, that there are two very powerful dissenting judgments in the case, and the
case has since been much criticised.

In the UK, copyright, trade mark law and passing off are the categories of intellectual
property most likely to be utilised in an attempt to provide protection against unfair
competition. It is possible to identify cases where the judges seem more willing
to expand the boundaries of protection. Such cases include Erven Warnink BV v
Townend & Sons [1979] AC 731 and Irvine v Talksport [2002] 2 All ER 414. Equally, there are
cases where the judges are of the view that existing forms of redress should not be
expanded to encompass unfair competition. Such an instance is the decision of the
Privy Council in Cadbury-Schweppes v Pub Squash Co [1981] RPC 429.
Intellectual property 2 Types of intellectual property page 17

There has been a division of judicial opinion as to how the law ought to develop. At
national level, Aldous LJ suggested that passing off ought to be regarded as unfair
competition in BT plc v One in a Million [1999] FSR 1 at p.18 and Arsenal Football Club v
Matthew Reed [2003] RPC 696 at [70]. However, Jacob J in Hodgkinson & Corby v Wards
Mobility Service [1995] FSR 169 stated that there is no tort of taking a competitor’s
customers. As between national courts and the CJEU, there was a similar division of
opinion. In L’Oréal SA v Bellure NV [2008] RPC 196 at [141] Jacob LJ declared that free
competition was ‘the mainspring of the economy’. By contrast, when this case was
considered by the CJEU (C-487/07 L’Oréal SA v Bellure NV, 18 June 2009), that Court
stated there could be liability for taking unfair advantage of another’s trade mark.
When the case returned to the Court of Appeal, Jacob LJ expressed his reluctance to
agree with the CJEU.

For a good demonstration of the fact that the tort of passing off protects against
misrepresentation, rather than misappropriation (as a form of unfair competition),
see Original Beauty Technology Co Ltd v G4K Fashion Limited [2021] EWHC 294 (Ch) [501],
where David Stone (sitting as a Deputy Judge of the High Court) stated that:

It does seem to me that the Defendants have been able to ride on the coat-tails of
the Claimants’ successful business model, and rather than investing in their own
development, or spent [sic] money and time trialling different models, styles, locations,
packaging etc, they have obtained an advantage by copying a successful competitor.
But, as Jacob LJ has set out so clearly in L’Oréal v Bellure, passing off is not a tort of unfair
competition. Passing off requires a misrepresentation, and there is insufficient evidence
before me to find that consumers do or will consider House of CB and Oh Polly to be sister
brands. That was the Claimants’ case, and it has not been made out.

Activities 2.5–2.8
2.5 Read the judgments in Victoria Park Racing v Taylor and Moorgate Tobacco v Philip
Morris. Do you agree with the conclusions of the judges? What do the cases tell
you about the attitude of the common law towards fair and unfair competition?

2.6 Read the opinions of Lord Diplock in Erven Warnink BV v Townend & Sons and Lord
Scarman in Cadbury-Schweppes v Pub Squash Co. Is it possible to reconcile their
views on how intellectual property law should respond to changing business
practices?

2.7 Would UK law benefit from the introduction of protection against unfair
competition? Would the doctrine of misappropriation be a better means of
protecting the interests of traders? Or is the law of passing off, as applied in
Irvine v Talksport, sufficiently flexible to prevent unfair trading?

2.8 Read the two judgments of the Court of Appeal and that of the CJEU in L’Oréal SA
v Bellure NV and then write a concise summary of the differences between their
respective views on ‘free riding’ (not more than 300 words).

No feedback provided for 2.5 and 2.8.

Further reading
¢ International News Service v Associated Press (1918) 248 US 215.

¢ Carty, H. ‘The common law and the quest for the IP effect’ [2007] IPQ 237.
page 18 University of London

Sample examination questions

The topics covered in this chapter can often be the subject of general essay
questions in the examination. At this stage of your studies, you are unlikely to
feel confident in tackling such questions. We recommend that you return to this
chapter and attempt the questions set out below once you have worked your way
through the module guide.
Question 1 ‘The continued expansion of intellectual property rights in the age of
the information economy is to be deplored.’
Discuss.
Question 2 ‘There is no need to introduce a separate law of unfair competition. The
actions for breach of confidence and passing off are more than adequate.’
Discuss.
Intellectual property 2 Types of intellectual property page 19

Advice on answering the questions

Question 1 This essay question invites you to take sides, and to debate whether
intellectual property rights should continue to expand in the information age. There
are several key words and phrases, such as ‘expansion’, ‘information economy’ and
‘deplored’, which contain value judgments: these should be challenged. The good
answer would therefore consider whether expansion is a bad thing, whether it is
inevitable and how intellectual property should adapt to deal with the impact of
digital technology. If information can be distributed so easily, should it ‘belong’ to
anyone or everyone? If images can be sent around the world so easily via the internet,
should celebrities be given any control over the use of photographs, whether via
privacy or a personality right? The sub-text of the question is therefore the various
justifications for intellectual property and whether they work in the 21st century. There
are a number of areas which can be chosen to illustrate these arguments (beware
that assertion and opinion are not enough, they should be justified). Should copyright
owners be given additional rights?

Was the EU right to create the Database Directive? Should computer programs and
computer-implemented inventions be patentable or would this stifle competition?
Should the protection conferred on trade mark owners be broadened? Most textbooks
contain references to articles that can be cited in support of these points.

Question 2 A good answer would begin with a definition of unfair competition,

as set out in Article 10bis of the Paris Convention (behaviour which is ‘contrary to
honest practices in industrial and commercial matters’) and would mention the three
non-exhaustive examples given in the Article of what amounts to unfair competition.
It would go on to consider how UK law does not recognise an action for unfair
competition and to give reasons as to why this might be. It could be argued (for
example) that intellectual property is divided into discrete rights, which judges are
generally reluctant to expand (see dicta in Victoria Park Racing v Taylor and Moorgate
Tobacco v Philip Morris) or that since the Statute of Monopolies 1623, any monopoly is
contrary to common law and so intellectual property rights are a narrow exception
to that principle. A contrast could be made with the position in the USA, where the
Supreme Court accepted that there could be an action to protect a business against
the misappropriation of its investment by a rival in International News Service v
Associated Press. Cases should be identified where UK judges seem willing to expand
the boundaries of existing IP rights (for example, Lord Diplock in Erven Warnink BV v
Townend & Sons or Laddie J in Irvine v Talksport), even though there are other cases
where judges have determined that strict rules should be maintained, so that just
because the defendant’s conduct amounts to unfair trading (‘free riding’) does not
entitle the claimant to a remedy (see Lord Scarman in Cadbury-Schweppes v Pub Squash
Co). Equally, there are examples of situations in which UK courts appear to have been
at odds with the CJEU over the issue of ‘taking unfair advantage’ of another trader’s
investment (see L’Oréal SA v Bellure NV discussed above). Having established this
as a starting point, the good answer would have referred to some of the extensive
literature which has argued for and against the introduction of an action for unfair
competition or, at the very least, for better protection against the misappropriation of
investment. The good answer would have concluded by a selective use of cases from
passing off or breach of confidence in support of an argument for or against having a
tort of unfair competition.
page 20 University of London

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the principles

outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.
Tick a box for each topic. Ready to Need to Need to
move on revise first study again

I can list the principal types of intellectual property

rights and describe in general terms the key features
of each of them.   

I can set out the principal characteristics of all

intellectual property rights.   

I can explain the reasons which are put forward to

justify the existence of intellectual property rights.   

I can explain what is meant by the term ‘unfair

competition’ and why UK courts have traditionally
refused to recognise this as a separate form of harm.   

I can define the following: patent, copyright, design,

trade mark and confidential information.   

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

2.1 Overview of intellectual property rights  

2.2 The principal characteristics of intellectual  

property rights

2.3 The theoretical justifications for intellectual  

property rights

2.4 The absence of protection for unfair competition  

3 Sources of intellectual property

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

3.1 International conventions . . . . . . . . . . . . . . . . . . . . . . . . 23

3.2 United Kingdom legislation . . . . . . . . . . . . . . . . . . . . . . . . 27

3.3 European Union legislation . . . . . . . . . . . . . . . . . . . . . . . . 28

3.4 Case law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34

page 22 University of London

Introduction
The purpose of this chapter is to set out the various sources of intellectual property law
in the UK. It will show that the influences on UK domestic law are many and diverse, and
that lawyers working in this field need to be receptive to ideas and principles from other
jurisdictions and cultures. The topic is not examinable as such, but it will help you to
appreciate what has helped to mould the law into its current shape.

Do not worry too much at this stage of your studies about the finer detail of the
material in this chapter. You may want to review this material periodically as you
complete your work on each different type of intellectual property right. For the
moment, you should concentrate on understanding the key point that UK intellectual
property law has not developed in isolation, but rather has evolved in response to a
number of external forces, both legislative and judicial.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u identify the principal international and regional conventions which have
affected UK legislation relating to intellectual property, and describe the key
features of each
u explain the effect of EU secondary legislation and its impact on UK intellectual
property law
u identify the various tribunals which contribute to UK case law on intellectual
property and explain how their jurisdiction arises
u list the principal sources of UK intellectual property law.
Intellectual property 3 Sources of intellectual property page 23

3.1 International conventions

Core text
¢ Bently et al. ‘Introduction’ Section 3 ‘International influences’.

¢ Cornish, Chapter 1 ‘Starting points’ paras 1–030 to 1–036.

Essential reading
¢ May, C. ‘Why IPRs are a global political issue’ [2003] EIPR 1 (available in Westlaw
via the Online Library).

¢ Arup, C. ‘TRIPs: across the global field of intellectual property’ [2004] EIPR 7
(available in Westlaw via the Online Library).

United Kingdom intellectual property law owes much to international conventions,

since these have often been the catalyst for the creation and/or revision of domestic
legislation. Most, but not all, conventions are issued and administered by the World
Intellectual Property Organization (WIPO), a UN agency based in Geneva. WIPO’s chief
objectives are to encourage and assist developing and less developed countries to
establish effective protection for intellectual property rights, and to work towards an
international consensus on the standardisation of national laws.

Besides this educational role, WIPO administers a number of conventions dealing with
intellectual property. WIPO itself divides these conventions into three main types,
namely protection treaties, global protection systems and classification treaties.

3.1.1 WIPO protection treaties

Protection treaties specify the types of right which are to be recognised, the criteria
for their protection and the minimum standards to be applied to each type of
right. Contracting States are obliged to adhere to these criteria and standards in
their domestic legislation. The prime example of a protection treaty is the Paris
Convention for the Protection of Industrial Property 1883 (as revised at Stockholm
in 1967). (You will find the principal provisions of this in your statute book.) The Paris
Convention deals with those intellectual property rights which can be obtained by
means of registration (that is, patents, trade marks and designs). It also requires
Contracting States to provide protection against unfair competition. Membership of
this Convention obliges a Contracting State to establish its own patent office and, once
established, for that office to issue certain publications (for example, a patents journal
or a trade marks journal). There are, however, two particular substantive rights
created by the Convention, namely priority claiming and national treatment, which
you will come across in your studies.

Priority claiming (Article 4) enables an applicant for a patent, trade mark or design,
once they have filed an application in one of the Contracting States, to backdate
all subsequent national filings made within a specified period to the date of that
first national filing, provided the later filings relate to the same subject matter.
In Chapter 2 it was explained briefly that the validity of a patent is determined by
the state of the prior art at the filing date. The specified periods are 12 months for
patents and six months for trade marks and designs. The ability to backdate a patent
application by up to 12 months is of great practical importance in ‘the race to the
patent office door’. We shall return to the issue of ‘claiming Convention priority’ later
on in Chapter 15, when we look at the procedure for obtaining a UK patent, and in
Chapter 16, when we consider patentability in more detail.

National treatment (Article 2) is the cornerstone of the Paris Convention and of many
other international intellectual property conventions. It means that any state which
becomes a signatory to the Convention is required to provide the same protection
under domestic law to foreign nationals as it does to its own nationals. So, for
example, the fact that the UK is a Contracting State to the Paris Convention means
that it must offer nationals from other Contracting States (for example, Australia or
Japan) the same treatment under UK law as it gives to UK nationals. However, because
page 24 University of London

intellectual property laws differ from state to state, national treatment does not mean
that (in our example) UK law must offer Australian nationals the same protection as
they receive under Australian law. Australian law might provide better (or worse)
protection than UK law but that can have (almost) no bearing on the duty of the
UK under Article 2 of the Convention not to discriminate against those from other
Contracting States.

Besides the Paris Convention, dealing with registrable rights, WIPO also administers
a number of conventions which deal with rights that are not registrable, namely
copyright and related rights (these latter related rights are sometimes referred to
as ‘neighbouring rights’). The chief of these conventions is the Berne Convention
for the Protection of Literary and Artistic Works 1886 (as revised at Paris in 1971).
The Berne Convention deals with literary, dramatic, musical and artistic works, and
films. It sets out the criteria for the existence of each one of these rights and the
extent of protection conferred on the owner. We shall look at the impact of the Berne
Convention on UK copyright law in more detail in Chapters 7 and 8, but two key
features deserve brief mention at this point. First, the Berne Convention, just like the
Paris Convention, contains the principle of national treatment in Article 5 and, second,
in the same Article, also declares that copyright protection is not dependent on
registration. The consequence is that copyright protection arises automatically once a
work comes into existence.

The remaining categories of copyright and related rights are dealt with by another WIPO
Convention, the Rome Convention for the Protection of Performers, Record Makers
and Broadcasting Organisations 1961 (the so-called ‘Neighbouring Rights Convention’).
This sets out the obligations of Contracting States with regard to the protection of sound
recordings (called phonograms in the Convention), broadcasts and performances. Like
the Berne Convention, it specifies the criteria for the existence of each of these rights and
the scope of protection accorded to the owner. Similarly, it also contains the principle
of national treatment and declares that protection is not dependent on registration. It
does, however, provide for the formality of a copyright notice to be affixed to each copy
of the work in the case of sound recordings (the symbol).

Lastly, in relation to copyright and neighbouring rights, you should note that WIPO,
in 1996, concluded two further treaties, the WIPO Copyright Treaty and the WIPO
Performers and Phonograms Treaty. The objective of these two conventions is to spell
out more clearly the rights of the copyright owner in the digital era, especially with
regard to the exploitation of copyright works on the internet. They build, respectively,
on the Berne Convention and the Neighbouring Rights Convention. The Beijing Treaty on
Audiovisual Performances, which extended the framework of international protection
to audiovisual performances, was signed in 2012. The Marrakesh Treaty for the Visually
Impaired was signed in 2013. The agreement differs from other Treaty instruments in
that it is concerned to ensure a minimal level of protection for certain users of copyright
works, rather than to secure the interests of rightholders.

An alternative route, which was designed to assist citizens of developing countries

to obtain copyright protection in developed countries, is the Universal Copyright
Convention (the UCC). This was initially agreed in Geneva in 1952 and revised at Paris
in 1971. It is unusual in that it is not administered by WIPO but by the United Nations
Educational, Scientific and Cultural Organization (UNESCO). The scope of the UCC is the
same as that of the Berne Convention, in that it deals with literary, dramatic, musical
and artistic works, and films. Just like the Berne Convention, it contains the principle
of national treatment, but in contrast it does require the use of a copyright notice on
a work as a precondition to protection (the © symbol). The intention of its creators
was that when former colonies obtained their independence, membership of the
UCC would ensure national treatment for their citizens in the countries which had
previously governed those territories. It has now very largely been superseded as the
vast majority of states are now signatories to the Berne Convention.

Each of these conventions can be found in your statute book. Their effect on UK
copyright law (and in particular the way in which the requirement of national
treatment is implemented) will be examined in more detail in Chapter 7.
Intellectual property 3 Sources of intellectual property page 25

Activity 3.1
Read Articles 1, 2, 3, 4A, 5quinquies, 6, 6bis and 10bis of the Paris Convention,
Articles 1, 2 and 3 of the Berne Convention, and Articles 1, 2, 3, 7, 10 and 13 of the
Neighbouring Rights Convention set out in your statute book. List the categories
of intellectual property rights which each one covers. List the principal obligations
which each one imposes on its Contracting States.

Name of Convention Type of rights covered Obligation of Contracting State

No feedback provided. You may prefer to draw up this table on a larger sheet of paper.

3.1.2 WIPO global protection systems

Returning to WIPO, global protection systems exist because of the territorial nature
of intellectual property rights (see Chapter 2) and the consequent need to assist
businesses who want to obtain registration for their rights in more than one country.
Essentially these systems provide procedural shortcuts to enable an applicant to
make multiple filings in respect of patents or trade marks. The two principal global
protection systems operated by WIPO are the Patent Co-operation Treaty 1970 (which
provides for the multiple filing of patent applications) and the Madrid Agreement
for the International Registration of Marks 1891 (revised at Stockholm in 1967)
as amended by the Protocol to the Madrid Agreement 1989 (which provides a
mechanism for filing multiple applications for trade marks). These are beyond the
scope of the syllabus and you simply need to be aware that such mechanisms exist.

3.1.3 WIPO classification treaties

Lastly, classification treaties exist primarily to standardise the internal workings of
national patent offices, and trade marks and design registries. For example, there is a
standard classification for goods and services for trade mark applications and a standard
classification for the subject matter of patents. The only classification treaty you are
likely to come across in your reading is the Nice Agreement for the International
Classification of Goods and Services 1957. The Agreement is incorporated into UK law
and its application is explained in Chapter 12.

Further information about WIPO and its activities is available from www.wipo.int

3.1.4 The World Trade Organization

A rival force to WIPO would appear to be the World Trade Organization (WTO),
established in 1994 at the conclusion of the renegotiation of the General Agreement
on Tariffs and Trade (GATT). One of the conventions concluded in 1994 under the
auspices of the WTO is the Agreement on the Trade Related Aspects of Intellectual
Property (TRIPS). The WTO Agreement itself was concerned to enhance the principle
of free trade between states, such that membership of the organisation guarantees
businesses established in one Contracting State that they will have access to the
markets of other Contracting States. The price for such access (and some would say
that the price has been too great) is the obligation placed on each Contracting State
to sign up to the TRIPS Agreement. The TRIPS Agreement adds to all the previously
mentioned conventions, by containing provisions on all major categories of intellectual
property rights. It expressly incorporates the fundamental principles of the Paris and
Berne Conventions, and requires Contracting States to accede to the latest versions of
these (and other) treaties. Like them, it adopts the principle of national treatment.

However, the most significant feature of the TRIPS Agreement is that where a state is
in breach of its requirements, another dissatisfied state may initiate the WTO dispute
settlement procedure. If a complaint is upheld, then (once all the lengthy procedures
have been exhausted) the complainant state may impose trade sanctions on the
page 26 University of London

defaulting state (including import quotas and duties). This enforcement mechanism
means that the TRIPS Agreement is a much more powerful force for change than the
WIPO family of intellectual property treaties.

The TRIPS Agreement is not without its critics. It has been argued that it imposes
US and European values on developing countries. As a result, it is said, international
corporations are able to exploit many of the natural plant and animal resources of
such countries through patent protection and in return can charge high prices for
medicines regardless of the host nation’s healthcare needs. Conversely, intellectual
property laws tend to emphasise modern forms of creativity (inventions, digital
technology and brand names) at the expense of traditional knowledge and art forms.

Further information about the WTO and its activities is available from www.wto.org

Activity 3.2
Read the articles by May and Arup listed at the beginning of this section. What
are the main differences between WIPO and the WTO? Which is likely to be more
effective as a means of changing domestic intellectual property law? Does the TRIPS
Agreement take account of the social and cultural values of developing countries?

3.1.5 The Council of Europe

The last group of intellectual property conventions are those promulgated by the
Council of Europe. This, it should be remembered, is not an EU institution, but the
organisation which oversees the European Convention on Human Rights. Since its
foundation, the Council of Europe has concerned itself with a wide range of scientific
and cultural issues and has issued two conventions dealing with patents. These are the
Strasbourg Convention on the Unification of Certain Points of Substantive Law on
Patents for Invention 1963 and the European Patent Convention (EPC). The latter was
originally agreed in 1973 but was revised in 2000, with the new version (usually referred
to as EPC 2000) coming into effect in December 2007. Membership of these two
conventions is open to any state which belongs to the Council of Europe. Consequently,
the membership of the EPC is far broader than that of the EU. The EPC is not a legal
instrument of the EU, and so is not subject to the jurisdiction of the Court of Justice. You
may occasionally come across references to the Strasbourg Convention in your reading:
the main thing you need to remember about it is that it forms the foundation for the
EPC by setting out some of the fundamental principles of patent law. You will come
across frequent references to the EPC in your study of the law of patents. Its principal
provisions are set out in your statute book and you must familiarise yourself with them.

The EPC establishes the European Patent Office (EPO) in Munich. In contrast to the
Patent Co-operation Treaty mentioned above (which simply enables an applicant
to make multiple filings worldwide in respect of a patent application, such filings
ultimately being processed by national patent offices), the EPC is a regional intellectual
property system which creates a system of centralised grants. One application to the
EPO will, if successful, result in the granting of national patents in all of the Contracting
States of the EPC (at present there are 36 and more are likely to join soon) unless the
applicant indicates otherwise. A European patent in effect bypasses a national patent
office. A European patent has the same effect in a Contracting State as a national patent
granted by that state’s own patent office. So, in the UK, there are in force national
patents granted by the United Kingdom Intellectual Property Office (UKIPO) as well as
European Patents (UK) granted by the EPO in Munich. Each type of patent has exactly
the same effect and, once granted, confers exactly the same type of rights.

The EPO has its own internal judicial organs, called Boards of Appeal and Enlarged
Boards of Appeal, whose decisions are of persuasive value for UK courts when dealing
with those patent cases which raise points of interpretation concerning the Patents
Act 1977 (see further 3.2).

When considering the effect of all of the above international conventions, you should
remember the basic principle of UK constitutional law, which is that no convention
is part of domestic law unless and until it is enacted by Parliament. Once enacted, UK
Intellectual property 3 Sources of intellectual property page 27

courts will refer to the implementing legislation rather than the convention itself in
determining the rights of the individual, as international agreements are not capable of
direct effect. Although this used to be the attitude of UK courts to the EPC (see Lenzing
AG’s European Patent [1997] RPC 245), more recently UK courts hearing intellectual
property disputes refer directly to the original source in the interests of clarity: see
Aerotel Ltd v Telco Holdings Ltd/Macrossan’s Application [2007] RPC 117 where the Court of
Appeal looked to the wording of the EPC rather than s.1(2) of the Patents Act 1977 (see
further Chapter 16).

Further information about the EPO, the EPC and the decisions of its judicial bodies is
available from www.epo.org

Activity 3.3
Explain the key features of the EPC. How does it differ from other international
conventions dealing with intellectual property rights?

3.2 United Kingdom legislation

Core text
¢ Bently et al., ‘Introduction’ Section 4.3.5 ‘Interpretation’.

¢ Cornish, Chapter 1 ‘Starting points’ para 1–025.

There are four principal statutes governing intellectual property law in the UK, and
all were enacted or have been modified to take account of international or regional
conventions, or EU legislation. Taking them in chronological order, they are:

u the Registered Designs Act 1949

u the Patents Act 1977

u the Copyright, Designs and Patents Act 1988 (CDPA)

u the Trade Marks Act 1994.

The influences on these four items of legislation will be dealt with in turn.

u The Registered Designs Act 1949 was almost entirely rewritten in 2001 so that the
UK could comply with the EU Designs Directive (see below).

u The Patents Act 1977 was primarily enacted to fulfil the UK’s obligations under
the EPC (explained above) while the 2004 amendment Act takes account of the
revisions made to the same Convention in 2000.

u The CDPA was initially a domestic measure (although it did enable the UK to
ratify the 1971 version of the Berne Convention, explained above). However, it has
since been amended on numerous occasions in order to implement various EU
Directives dealing with copyright and related rights. These Directives are explained
below.

u Finally, the Trade Marks Act 1994 was passed so that the UK could implement
the EU Trade Marks Directive and the EU Trade Mark Regulation. These are also
explained below. It has also been amended subsequently.

It must be appreciated that because of these outside influences, UKIPO and UK

courts (hereafter, ‘UK tribunals’) may be constrained in their interpretation of
domestic legislation. The Patents Act 1977 s.130 declares that key provisions in the
Act (specifically those dealing with patentability, infringement and revocation) are
intended to have the same effect as the corresponding provisions in the EPC. This
imposes an obligation on UK tribunals to take note of the case law of the EPO with
regard to the interpretation of the criteria for patentability: see Merrell Dow v Norton
[1996] RPC 76 at 82 (HL) and Kirin Amgen Inc v Hoechst Marion Roussel Ltd [2005] 1 All ER
667 at para 101, in each case per Lord Hoffmann.
page 28 University of London

Summary
Four principal items of domestic legislation govern the law of intellectual property
in the UK. They are the Registered Designs Act, the Patents Act, the CDPA and the
Trade Marks Act. Each one has been enacted and/or amended to comply with the UK’s
obligations under international conventions or EU law.

3.3 European Union legislation

Core text
¢ Bently et al., Chapter 1 ‘Introduction’ Section 4 ‘Regional influences’ up to and
including Section 4.3.4 ‘Implementation’.

¢ Cornish, Chapter 1 ‘Starting points’ paras 1–026 to 1–029.

Between 1973 and the end of 2020, the UK was a member of the European Union (EU)
(and its predecessor institutions). Even though the UK is no longer a member of the EU
(see Section 3.3.3), its membership of the Union has left, and will continue to leave, a
very important mark on its intellectual property law.

At a fairly early point in the development of the European Economic Community (as
it was originally called), it was realised that intellectual property rights were one
of the main non-tariff barriers to trade and therefore an obstacle to the creation
of what is now known as the internal market. The internal market means that all
Member States of the EU are regarded as forming a single territory without internal
boundaries. The existence of national intellectual property rights formed an obstacle
to attaining the internal market primarily because of their territorial nature (this
concept was explained in Chapter 2). Another factor leading to the fragmentation
of the internal market was that differences existed between the national laws of
the Member States with regard to the criteria for protection, duration and scope of
the various intellectual property rights. The EU Commission adopted a two-pronged
strategy designed to overcome these problems, namely the enactment of a series of
harmonisation directives, addressed to Member States, requiring them to standardise
their national laws; and the creation of pan-European rights by means of directly
applicable regulations.

Over the 30 years or so prior to the end of 2020, these developments have had an
enormous impact on the law of the United Kingdom. The majority of these changes
will not be undone by the ‘Brexit’ process (see Section 3.3.3).

3.3.1 Harmonisation directives

Harmonisation directives in the field of intellectual property have had a significant
impact on UK law in relation to trade marks, designs and copyright but have had only a
limited effect in relation to patents. The extent to which these Directives will continue
to have an impact in the UK post-Brexit is a subject that is covered in Section 3.3.3.

In relation to trade marks, the First Trade Marks Directive (Council Directive 89/104/
EEC of 21 December 1988 on the approximation of the laws of Member States relating
to trade marks [1989] OJ L 40/1, codified as Directive 2008/95/EC of the European
Parliament and of the Council of 22 October 2008 [2008] OJ L 299/25) was declared a
partial harmonisation measure, dealing only with those aspects of trade mark law
which directly affect the functioning of the internal market. It therefore dealt with:

u what signs can be trade marks

u the absolute and relative grounds on which a trade mark application may be refused

u the scope of protection afforded by registration to the proprietor of the mark to

prevent infringing conduct by others

u the defences to infringement

u provisions dealing with the licensing of marks and the loss of registration.
Intellectual property 3 Sources of intellectual property page 29

All of these key provisions were reflected in the wording of the Trade Marks Act 1994.
Other aspects of trade mark law, such as procedure and ownership, were left to the
domestic laws of Member States.

A new Trade Marks Directive was passed in December 2015 (Directive (EU) 2015/2436 of
the European Parliament and of the Council of 16 December 2015 to approximate the
laws of the Member States relating to trade marks). Under the Trade Marks Regulations
2018, the UK implemented this Directive, which made a number of important changes
to trade mark law in the UK. These are noted in the appropriate places in this guide.

Just as in the case of trade marks, in relation to designs, the Designs Directive (Council
Directive 98/71/EC of 13 October 1998 on the legal protection of designs [1998] OJ L
289/28) has had a major impact on the content of UK law. Again, the Directive was
declared to be a partial harmonisation measure only, leaving it to Member States to
decide on procedure and remedies. The Directive therefore dealt with those aspects
of the law of registered designs which most affected the functioning of the internal
market, namely the conditions for acquiring protection (including the definition of a
design and the key criteria of novelty and individual character), the exclusions from
protection and the scope of the infringement action. The Directive further provided
that Member States were free to provide other legal methods of protecting designs
(such as copyright and unregistered design right). Chapter 9 of this module guide
explains how the UK offers protection for designs by these two particular routes,
with information about the registered designs system being treated as background
information only.

It is in relation to copyright that the EU adopted the largest number of directives. Their
chief impact has been in relation to specific aspects of copyright, such as duration or
new categories of rights, and they include:

u The Computer Programs Directive (Council Directive 91/250/EEC of 14 May 1991 on

the legal protection of computer programs [1991] OJ L 122/42, codified as Directive
2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the
legal protection of computer programs [2009] OJ L 111/16), which provided that
computer programs are to be accorded copyright protection ‘as literary works’.

u The Copyright Term Directive (Council Directive 93/98/EC of 29 October 1993 on

harmonising the term of copyright protection [1993] OJ L 290/9, now codified
as Directive 2006/116/EC of the European Parliament and of the Council of 12
December 2006 [2006] OJ L 372/12) and the Copyright Term Extensive Directive
(Directive 2011/77/EU of the European Parliament and of the Council of 27
September [2011] OJ 265/1) which standardised the duration of protection for the
various categories of copyright work throughout the EU.

u The Database Directive (Directive 96/9/EC of 11 March 1996 on the legal protection
of databases [1996] OJ L 77/20) created a two-tier system of protection for
collections of works, data and other materials.

u The Information Society Directive (Directive 2001/29/EC of the European

Parliament and of the Council of 22 May 2001 on the harmonisation of certain
aspects of copyright and related rights in the information society [2001] OJ L
167/10). Inter alia, it harmonised a number of the exclusive rights of authors
and holders of rights in other subject matter and provided an exhaustive list of
permissible exceptions and limitations.

The problem with counterfeiting (which of course is not confined to copyright, but
applies equally to trade marks) was dealt with by the Enforcement Directive (Directive
2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the
enforcement of intellectual property rights [2004] OJ L 157/45). This required Member
States to harmonise the civil remedies available to the intellectual property owner. All
these Directives were implemented into UK law and, after Brexit, remain a part of UK
law until departed from specifically by the UK legislature or courts (see Section 3.3.3).
page 30 University of London

Patents
EU activity in the area of patents was limited because the European Patent Convention
(EPC) already provides a degree of harmonisation and because the EU’s attempts to
introduce an EU-wide protection system failed to bear fruit.

There has only been one EU directive that has had a direct impact on patent law, the
Biotechnological Patents Directive (Directive 98/44/EC of the European Parliament
and of the Council of 6 July 1998 on the legal protection of biotechnological inventions
[1998] OJ L 213/13). This measure was passed in response to the practice of the USA Patent
Office of granting patents in relation to genetically engineered plants and animals, and
because the Member States’ national patent offices had adopted varying attitudes to
such patents. It declares that, provided the normal criteria for patentability are met,
inventions consisting of biological material shall in principle be patentable. There are a
number of exceptions, concerned primarily with ethical objections to such inventions,
and the Directive also spells out the rights of the owner of such an invention against
infringers.

3.3.2 Pan-European rights

In addition to the system of Directives harmonising national law, the EU also created
Community-wide systems of registered rights in three areas. Under these systems, the
granted rights are valid for the whole of the EU.

The three systems are:

u The Council Regulation on Plant Variety Rights (Council Regulation (EC) 2100/94
of 27 July 1994 on Community Plant Variety Rights [1994] OJ L 227/1) (‘the EU Plant
Variety Right’). Plant variety rights are not on your syllabus.

u The Community Trade Mark Regulation (Regulation EU No 2015/2424 of the

European Parliament and of the Council amending the Community Trade Mark
Regulation) (‘the Community Trade Mark’). This new Trade Mark Regulation came
into force on 23 March 2016 and, among other things, renamed the Registry for EU
Trade Marks and Designs the European Union Intellectual Property Office (EUIPO).

u The Council Regulation on the Community Design (Council Regulation EC 6/2002

of 12 December 2001 on Community Designs [2002] OJ L 3/1) (‘the Community
Design’).

The one you are most likely to come across in your reading (because its provisions are
a mirror image of the First Trade Marks Directive above) is the European Union Trade
Mark Regulation. One result of the creation of parallel means of obtaining protection
for trade marks (that is, registration at either national or Community level) is that
the case law on the Directive is entirely interchangeable with the case law under the
EU Trade Mark Regulation. You will therefore come across cases decided by the CJEU
providing interpretation of key provisions in the Directive (as a result of a preliminary
reference by a national court under Article 267 TFEU (formerly Article 234 EC)) and
cases decided on appeal from the EUIPO under the Regulation which will give identical
explanations of the two measures.

3.3.3 Brexit
The United Kingdom left the European Union on 31 January 2020. For a transitional
period from that date until 31 December 2020, the UK continued to be bound by
EU rules (including EU rules in the area of intellectual property). From 01 January
2021, under the European Union (Withdrawal) Act 2018 (EUWA 2018), the European
Communities Act 1972 was repealed (s.1 EUWA 2018). However, at the same time,
in order to preserve continuity and legal certainty, EUWA 2018 provides that any
domestic legislation deriving from EU law (including, for example, statutory
instruments implementing European Directives) is to be absorbed into domestic
law (as ‘retained EU Law’) (s.2 EUWA 2018). The same is true of other rules binding as
a matter of EU law at the point that the transition period came to an end (ss.3 and 4
EUWA 2018). Thus, for example, a binding rule of EU intellectual property law that had
Intellectual property 3 Sources of intellectual property page 31

not been specifically implemented by the UK legislature also continues to have force.
Similarly, pre-Brexit judgments of the Court of Justice are absorbed as authoritative
sources of law having equivalent status as precedent to a judgment of the Supreme
Court (until departed from by certain higher courts or adjusted through legislation
(s.6(3) and (7) EUWA 2018)). The Supreme Court, the Court of Appeal and the Scottish
High Court of Judiciary have the power to depart from ‘retained EU case law’ in
appropriate cases (see s.6(4) of the European Union (Withdrawal) Act 2018; European
Union (Withdrawal) Act 2018 (Relevant Court) (Retained EU Case Law) 2020. However,
the Court of Appeal has confirmed that the power to depart from pre-Brexit case law
of the CJEU should be exercised with great caution (see s.6(5) of the European Union
(Withdrawal) Act 2018; Tunein Inc v Warner Music UK Ltd [2021] EWCA Civ 441, paras
73–89, 184, 196–202).

Following the end of the Brexit transition period, new EU legislation and new
judgments of the Court of Justice no longer have binding effect in the UK (s.6(1)
(a) EUWA 2018). However, UK courts are permitted to have regard to post-Brexit
judgments of the Court on matters lying within the scope of retained EU law (s.6(2)
EUWA 2018). For an example of a case in which the Court of Appeal had regard to
relevant CJEU jurisprudence, see Tunein Inc v Warner Music UK Ltd [2021] EWCA Civ
441, paras 90 and 91. In that case, the Court of Justice found a post-transitional
period judgment of the Grand Chamber of the EU Court of Justice on the concept of
‘communication to the public’ in copyright law to be highly persuasive because it built
on the Court’s extensive pre-Brexit jurisprudence on an issue and because it related to
a point of direct relevance to the issue before the court (see Section 8.2.4).

As you can see, under the system established under EUWA 2018, large parts of
copyright and trade mark law that formed a part of European Union law before the
end of 2020 will be fully absorbed into UK law in their current form. This process could
not, however, be accomplished appropriately without further adjustment. In some
instances, legislation implementing directives contains a number of references to EU
(and EEA) institutions. These have had to be amended (again, under powers derived
from EUWA 2018). A number of such changes have been made in the area of intellectual
property law (for example, by adjusting existing cross-border mechanisms and
arrangements and by removing inappropriate references to the EU and EEA) and will be
referenced where relevant in the text (for example, in the area of copyright law).

One potential issue arose in relation to the concept of ‘exhaustion’ of IP rights. This
is a cross-cutting principle. Once goods bearing or embodying a protected work,
invention, mark or design are first distributed with the rightholder’s consent in the
EEA, the rightholder loses the right to control subsequent transactions involving
those goods (save in certain exceptional circumstances). For detailed discussion of
the application of this principle in the case of registered trade marks, see Section
13.6. Clearly, on the face of it, it would appear to have been necessary to alter this rule
when the UK left the EU. However, to preserve existing business arrangements, the
UK government decided to maintain a rule of EEA exhaustion in the UK (rather than
replacing the rule with one of, say, domestic international exhaustion) in the wake of
the UK’s departure pending further discussion of more settled future arrangements
(see the Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019). This
means that, even after leaving the EU, goods first marketed with a rightholder’s
consent in the EEA are able to circulate freely in the UK. This position has not been
reciprocated. As a consequence, rights in goods first marketed in the UK are not
regarded as having been exhausted within the EU.

More dramatic adjustments have been necessary in the case of pan-European

registration systems (such as those currently in place for trade marks and designs).
Prior to the end of the Brexit transition period, the UK government demonstrated its
intention to continue to protect the rights of holders of European Union trade marks
and Community designs (see the Designs and International Trade Marks (Amendment
etc.) (EU Exit) Regulations 2019 SI 2019/638). All holders of existing registered EU
trade marks and registered Community designs (which cover the whole of the EU
and include the UK) have automatically been granted an equivalent UK right at no
page 32 University of London

additional cost. For example, EUTMs registered at the end of the Brexit transition
period were automatically converted into marks registered on the UK Trade Marks
Registry (called a ‘comparable trade mark (EU)’). See the Trade Marks (Amendment
etc.) (EU Exit) Regulations 2019). Holders of unregistered Community designs in force
at the end of the transition period will be given an equivalent form of unregistered
protection through new legislation.

Brexit will not affect the system operating under the EPC, which is not an EU
agreement (see Section 15.3).

Summary
European Union legislation dealing with intellectual property was enacted with the
goal of achieving an internal market. The areas most affected have been trade marks,
copyright and designs, but in relation to patents there has been minimal impact. EU
legislation either required Member States to harmonise their national laws, or else
created pan-European rights in relation to plant varieties, trade marks and designs.
Following the end of the Brexit transition period in December 2020, rights granted under
pan-European systems no longer cover the UK. However, rules deriving from EU law that
applied at the end of the Brexit transition period generally continue to apply (and will
continue to apply until repealed or adjusted by domestic law-making institutions).

3.4 Case law

When reading intellectual property cases (which of course provide the interpretation
of the statutory materials you will be studying), it is important that you understand
two key points: which tribunal dealt with the matter and in which context.

Dealing with the latter point first, intellectual property case law can arise initially
in the context of an application to register a patent, trade mark or design. Here, the
tribunal will be concerned only with whether the application complies with the
relevant statutory criteria. Second, case law can arise in the context of an action
to restrain the infringement of any intellectual property right. It is important to
remember that in the UK, the tribunal hearing the infringement action can also deal
with any counterclaim that a registered right is invalid, and so will be concerned both
with the criteria to be met by the successful claimant when suing for infringement and
the criteria for registrability.

Hence, in the UK, decisions concerned with applications in respect of registrable

intellectual property rights will be handed down by UKIPO (note that when dealing
with applications to register trade marks or designs, these decisions will be issued by
the Trade Marks Registry or the Designs Registry respectively). Infringement actions are
dealt with either by the Patents Court (a specialist court within the Chancery Division) or
the Intellectual Property Enterprise Court (IPEC, formerly the Patents County Court) (see
further Chapter 4 below).

As will have become apparent from the material discussed above, intellectual
property rights effective in the UK can be granted by bodies other than UKIPO. In
respect of patents, you will therefore come across decisions of the judicial organs of
the EPO, and in respect of trade marks and registered designs, you will also be required
to read cases decided by the EUIPO (formerly the Office for Harmonization in the
Internal Market (Trade Marks and Designs) (OHIM)), the body responsible for granting
EU trade marks and EU registered designs.

Lastly, there is now a large body of important case law handed down in intellectual
property cases by the CJEU before the end of the Brexit transition period. This case law
had two origins.

u First, where a national court in any Member State of the EU is required to apply a
provision originating in one of the EU harmonisation directives (see above), the
definitive interpretation of that directive may only be given by the CJEU under the
Intellectual property 3 Sources of intellectual property page 33
preliminary ruling mechanism set out in Article 267 TFEU. Over the last decade a
considerable body of case law has developed, particularly in relation to the Trade
Marks Directive.

u Second, where the EUIPO has made a decision relating to the registrability or
otherwise of a Community trade mark or design application, appeal from the
EUIPO lies initially to the General Court of the European Union (previously called
the Court of First Instance of the European Community (CFI)), with a further appeal
(on a point of law only) to the CJEU. The CJEU thus acts in two capacities: as the final
appellate body for the registration of pan-European rights, and as the only judicial
body which can interpret harmonisation directives.

As has been noted above, post-Brexit judgments of the CJEU will have limited impact in
the UK legal systems. However, pre-Brexit judgments on retained EU law will continue
to have binding status. It is, accordingly, useful for you to be aware of the context in
which those cases arose.

Sample examination question

The topics covered in this chapter, though vital for an understanding of intellectual
property, are not examinable as such.
page 34 University of London

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.

Tick a box for each topic. Ready to Need to Need to

move on revise first study again

I can identify the principal international and regional

conventions which have affected UK legislation
relating to intellectual property, and describe the   
key features of each.

I can explain the effect of EU secondary legislation

and its impact on UK intellectual property law.   

I can identify the various tribunals which contribute

to UK case law on intellectual property and explain
  
how their jurisdiction arises.

I can list the principal sources of UK intellectual

property law.   

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

3.1 International conventions  

3.2 United Kingdom legislation  

3.3 European Union legislation  

3.4 Case law  

4 Remedies

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36

4.1 General matters . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 37

4.2 Pre-trial remedies . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38

4.3 Post-trial remedies . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41

4.4 Involvement of public bodies . . . . . . . . . . . . . . . . . . . . . . . 45

4.5 Public policy restrictions on the rights of the intellectual property

owner . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 45

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48

page 36 University of London

Introduction
This is a wide-ranging chapter which touches on all categories of intellectual property
rights. You will discover that most remedies apply to all forms of intellectual property.
It may seem a little odd to deal with the issue of remedies so early on in this module
guide. However, understanding what relief an intellectual property owner may obtain
when suing for infringement will give you an overview of the subject, an appreciation
of the importance of litigation for its development (remember, it is case law-oriented)
as well as providing an insight into a recurring theme, already raised in Chapter 2. This
theme is the need to balance the interests of the intellectual property owner with the
needs of free competition.

This chapter will concentrate on two issues, namely the remedies which can
be obtained between the start of the action and the date of the trial, and those
remedies available to the successful claimant after trial. It is on these that you should
concentrate.

Learning outcomes
By the end of this chapter and of the relevant reading, you should be able to:
u explain what interim remedies may be available to an intellectual property
owner before an infringement action comes to trial
u explain what final remedies may be available to an intellectual property owner
when the claim for infringement succeeds
u describe how the intellectual property owner can request the assistance of
public bodies in pursuing those who make and sell counterfeit goods
u describe the limitations which are imposed on the intellectual property owner’s
right to litigate
u define: injunction, search order, damages, account of profits, threats action.

Preliminary reading
¢ Chapter 2 of this module guide.
Intellectual property 4 Remedies page 37

4.1 General matters

Core text
¢ Cornish, Chapter 2 ‘The enforcement of rights’ paras 2–001 to 2–011.

¢ Bently et al., Chapter 48 ‘Litigation’ Section 1 ‘Introduction’, Section 2 ‘Who can

bring proceedings?’, Section 3 ‘Who can be sued?’

¢ Karapapa and McDonagh, Chapter 22 ‘Civil and criminal remedies’ Section 22.1.

By statute, all actions for the infringement of intellectual property rights are allocated
to the Patents Court, which is part of the Chancery Division or the Intellectual Property
Enterprise Court (IPEC), which has jurisdiction over all forms of intellectual property
dispute. There is an upper limit on the amount of damages that can be awarded in the
IPEC.

For those intellectual property rights which are statute based (that is, copyright,
designs, patents and trade marks), the remedies are generally prescribed by the
relevant statute. These statutes are largely declaratory of prior case law (Coflexip SA
v Stolt Comex Seaway MS Ltd [2001] 1 All ER 952). There are minor differences between
the various statutory regimes, which are not always logical. They simply reflect the
piecemeal development of intellectual property case law and legislation. Remedies
for passing off and breach of confidence are the result of case law alone and reflect the
historical influence of the Court of Chancery over the development of these causes of
action.

The Civil Procedure Rules (CPR) were introduced in 1999. So far as is practicable, in
giving effect to the overall objective of dealing with cases justly, courts must seek to
save expense, act speedily as well as fairly and in a manner which is proportionate.

The UK’s regime of remedies in intellectual property proceedings fell within the
scope of the so-called Enforcement Directive (Directive 2004/48/EC of the European
Parliament and of the Council of 29 April 2004 on the enforcement of intellectual
property rights) which was implemented by the Intellectual Property (Enforcement,
etc.) Regulations 2006 (SI 2006/1028). Accordingly, as these sets of rules constitute
retained EU Law (see Section 3.3.3), the provisions of the CDPA must currently still
be interpreted compatibly with this Directive. While, in most instances, the ongoing
impact of this pre-Brexit Directive will have a limited impact, certain provisions may
require UK courts to take a different approach from that which they have applied in
the past (see, for example, Article 13 on ‘moral prejudice’ as relevant to an award of
damages). Note also the general principles applicable to enforcement (Article 3).

Activity 4.1
Read the following statutory provisions and answer the questions below.
u Trade Marks Act 1994, ss.14, 15, 16, 19.
u CDPA, ss.96, 97, 99, 100 and 114 (for copyright).
u CDPA, s.103 (for moral rights).
u CDPA, ss.229, 230, 231 and 233 (for design right).
u Patents Act 1977, ss.61 and 62.
u Registered Designs Act 1949, s.24.

a. What similarities can you detect between the various statutes?

b. What differences can you detect?

No feedback provided.
page 38 University of London

4.2 Pre-trial remedies

Core text
¢ Cornish, Chapter 2 ‘The enforcement of rights’ paras 2–030 to 2–034; 2–045 to
2–059.

¢ Bently et al., Chapter 49 ‘Civil and criminal remedies’ Section 1 ‘Interim injunctions’
and Chapter 48 ‘Litigation’ Section 4 ‘Obtaining and preserving evidence’.

¢ Karapapa and McDonagh, Chapter 22 ‘Civil and criminal remedies’ Section 22.2.

Essential reading
¢ Cases: American Cyanamid v Ethicon [1975] AC 396 (read Lord Diplock’s speech
only); Series 5 Software v Clarke [1996] FSR 273; Universal Thermosensors v Hibben
[1992] 3 All ER 257.

If an intellectual property owner wishes to sue someone for infringement, a successful

action may be of little value to the claimant if, in the meantime, the defendant is
allowed to continue trading, thereby increasing their share of the market or doing
other harm to the claimant’s business. Equally, issuing a claim form may have the
effect of encouraging a defendant to destroy evidence of their infringing conduct, or
to remove assets out of the UK so that no funds exist out of which to pay damages.
Finally, an intellectual property owner may decide to sue a retailer who is selling
infringing copies, but ideally would like to know who has been making these copies.
All these difficulties can be overcome by the award of various interim orders.

4.2.1 Interim injunctions

Interim injunctions (formerly called interlocutory injunctions) are governed by the
Senior Courts Act 1981 s.37 together with CPR Part 25. An interim injunction is a court
order directing that certain acts do or do not take place or should continue, pending
the final determination of the parties’ rights by the court. The objective is to preserve
the status quo in order to prevent irremediable harm. Under the CPR, the court has
discretion to grant an injunction where it appears just and convenient to do so,
subject to such conditions as the court thinks just. Speed is of the essence in seeking
interim relief. Claimants must offer a cross-undertaking in damages, that is, pay money
into court as security in case they lose at the main hearing.

The principles which govern the grant of interim injunctions were stated by Lord
Diplock in American Cyanamid v Ethicon [1975] AC 396. At the time, Lord Diplock was
simply endeavouring to restate the fundamental principle that the award of an interim
injunction is essentially discretionary. This was because, he said, the Court of Appeal
in Cyanamid had treated the matter as if it were a ‘rule of law’ by demanding that the
claimant establish a prima facie case. More recently the matter has been revisited
by Laddie J in Series 5 Software v Clarke [1996] FSR 273. He declared that the most
important factor to be taken into account by the court in the exercise of its discretion
was the strength of each party’s case. The combined effect of Series 5 and the CPR
means that where a claimant’s damages at trial would be based on a reasonable
licence fee (which will be the normal remedy in cases of copyright infringement), an
interim injunction is unlikely to be awarded. However, the Court of Appeal in Douglas
v Hello! Ltd (No 2) [2005] 4 All ER 128 observed that where the harm to the claimant
cannot easily be compensated (for example, where there has been an invasion of
privacy, discussed in Chapter 5) then interim relief ought to be granted.

One of the issues mentioned in Lord Diplock’s judgment in American Cyanamid, the
balance of convenience, needs further elaboration. It will require the court to consider
the following factors.

u The relative size of the parties. They may be equal in size, for example, both being
Intellectual property 4 Remedies page 39
large multinationals and hence both able to pay damages if the other succeeded
at trial and both able to survive competition in the marketplace, as in Polaroid
v Eastman Kodak [1977] FSR 25. However, the claimant may be small and the
defendant a large enterprise with ‘muscle’, as in Corruplast v Harrison [1978] RPC 761
or the defendant may be relatively new to the market while the claimant is well
established and well able to withstand competition, as in Catnic v Stressline [1976]
FSR 157.

u There may be public interest grounds for refusing relief (for example, whether an
interim injunction would prevent a new life-saving drug from reaching the market,
as in Roussel-Uclaf v GD Searle [1977] FSR 125).

u Any delay by the claimant.

u Whether the parties are in direct competition.

u How close their products are in terms of characteristics and quality.

u Whether granting or not granting an injunction might put one of them out of
business.

u The risk to either party’s investment (see, for example, Catnic v Stressline [1976] FSR
157), including the risk of redundancies among their employees.

Impact of the Human Rights Act 1998

In relation to an action for breach of confidence or copyright infringement, the Human
Rights Act 1998 needs to be remembered. Section 12(3) states that no relief which
might affect the exercise of the right to freedom of expression is to be granted so as to
restrain publication before trial, unless the court is satisfied that the applicant is likely
to establish that publication should not be allowed. The effect of this provision on the
American Cyanamid conditions was considered by the House of Lords in Cream Holdings
Ltd v Banerjee [2004] 3 WLR 918.

4.2.2 Search orders

These are governed by the Civil Procedure Act 1997 s.7, together with CPR Part 25.
Such an order, which is obtained without notice, is one addressed to the defendant,
requiring them to admit the claimant and the claimant’s solicitor to the defendant’s
premises, in order to copy and/or remove evidence which might otherwise be
destroyed. The order originated in Lord Denning’s judgment in Anton Piller KG v
Manufacturing Processes Ltd [1976] Ch 55, where he laid down the primary criteria.

u The claimant must have an extremely strong prima facie case.

u There must be a serious risk of damage to the claimant’s interests.

u There must be compelling evidence that the defendant will dispose of or destroy
documents if given warning (for example, on receipt of the claim form).

u The risk to the defendant’s business must not be excessive.

The purpose of the order is to fulfil a legitimate purpose, such as protecting the
claimant’s copyright or other intellectual property right (see Columbia Pictures v
Robinson [1986] FSR 367) but the court is required to bear in mind Article 8 of the
ECHR (Chappell v UK [1989] FSR 617). Subsequently, concern about the abuse of the
order led Nicholls VC to state clear guidelines for its grant (in Universal Thermosensors
v Hibben [1992] 3 All ER 257). These have now been incorporated in the CPR. Because
the application for the order is heard in the defendant’s absence, the onus is on the
claimant to put all material facts before the court. Failure to do so may lead to the
order being discharged or the evidence obtained not being admissible (Naf Naf v
Dickens [1993] FSR 424). As with interim injunctions, the claimant must give a cross-
undertaking in damages. The order must not have the effect of putting the defendant
out of business. Once all the evidence has been copied, it must be returned to the
defendant.
page 40 University of London

4.2.3 Freezing orders

These also are governed by the Senior Courts Act 1981 s.37 and CPR Part 25. A freezing
order (again, obtained without notice – that is, without the defendant being notified
or being present in court) is designed to prevent the defendant from moving assets
out of the jurisdiction or otherwise dissipating them or concealing them so as to
deprive the claimant of any monetary compensation in the event of success at trial.
It may relate to assets within the jurisdiction or worldwide. The order originated in
Mareva Compania Naviera SA v International Bulk Carriers SA [1980] 1 All ER 213. The case
established the following requirements.

u The cause of action must be justiciable within England and Wales.

u There must be a good arguable case on the merits.

u The defendant must have assets within the jurisdiction.

u There must be a real risk of removal or disposal.

The safeguards for such a draconian order are that the defendant must be left with
enough money to live on and to carry on their day-to-day business. Nevertheless, the
order can affect third parties, such as banks.

4.2.4 Discovery
The last interim order to consider is that of discovery. In Norwich Pharmacal v
Commissioners of Customs & Excise [1974] AC 133 the House of Lords confirmed that an
order could be made against the Commissioners of Customs and Excise to reveal the
names of a company importing pharmaceutical products which infringed the claimant’s
patent. More recently, in Ashworth Security Hospital v MGN [2003] FSR 311, a similar order
was granted against a newspaper journalist, requiring him to disclose the name of the
person who had supplied the journalist with the medical records of a convicted criminal
being held in a secure hospital. The information had been disclosed to the journalist in
breach of confidence. The House of Lords stressed, however, that the order was issued
because of a pressing social need and that a court issuing such an order should bear in
mind the Human Rights Act 1998, in particular s.10(2) (the freedom of the press).

As with other interim relief, the onus is on the claimant to establish that there has
been infringement of an intellectual property right. The court will limit the use of the
information obtained under the order, so that it can only be used to support further
intellectual property litigation.

The order for discovery of names (as a prelude to further litigation) should not be
confused with an order for discovery of documents. The latter is one of a range of
directions which may be made by the court as part of the case management process
under the CPR.

4.2.5 Blocking injunctions

Under Article 11 of the Enforcement Directive, Member States are required, in
appropriate circumstances, to provide right holders with injunctions against
‘intermediaries’ whose services are used by third parties to infringe an intellectual
property right (even when such intermediaries do not themselves infringe an
intellectual property right). In the specific case of copyright, a similar requirement is
established under Article 8 of the Information Society Directive (implemented by s.97A
of the CDPA). In any event, it has been held that a UK court would itself have inherent
jurisdiction to make such an order (Cartier International AG v BT plc [2018] UKSC 28).
These provisions have been held to allow the making of ‘blocking’ orders against ISPs
(see Twentieth Century Fox v BT plc [2011] EWHC 1981; [2011] EWHC 2714 (Arnold J); and
Dramatico Entertainment Ltd v BSB Ltd [2012] EWHC 268; [2012] EWHC 1152 (Arnold J)).
However, such orders must not be disproportionate and must respect a ‘fair balance’
between the competing rights at issue. See the following examples: EMI Records v BSB
[2013] ECDR 8 and FAPL v BSB [2013] ECDR 14; Twentieth Century Fox Film Corp v Sky UK Ltd
[2015] EWHC 1082 (Ch). Where this ‘fair balance’ is respected, the making of such orders
Intellectual property 4 Remedies page 41
has been endorsed by the Court of Justice; see (C-314/12) UPC Telekabel Wien GmbH v
Constantin Film Verleih GmbH (27 March 2014). Such injunctions can even extend to
‘dynamic’ blocking orders, which require ISPs to block sites streaming Premier League
football matches from different servers; see FAPL v BT [2017] EWHC 480 (Ch). In a recent
judgment concerning orders granted to trade mark owners, the Supreme Court held
that the costs of complying with the order do not have to be borne by the ISP (Cartier
International AG v BT plc [2018] UKSC 28).

Self-assessment questions
1. What principles govern the award of interim (formerly interlocutory) injunctions?

2. What are the factors to be considered when assessing the balance of convenience?

3. What are the criteria governing the award of a search order?

4. When will a freezing order be awarded and on what criteria?

Activities 4.2–4.4
4.2 Read Lord Diplock in American Cyanamid v Ethicon and Laddie J in Series 5
Software v Clarke. Can the two judgments be reconciled?

4.3 A former Master of the Rolls once described the search order as ‘one of the
law’s two nuclear weapons’ (the other, incidentally, was the freezing order).
Comment on the accuracy of this statement.

4.4 Write a short summary of Section 4.2 above (no more than 100 words).

No feedback provided to 4.4.

4.3 Post-trial remedies

Core text
¢ Cornish, Chapter 2 ‘The enforcement of rights’ paras 2–035 to 2–044.

¢ Bently et al., Chapter 49 ‘Civil and criminal remedies’ Section 3 ‘Final injunction’,
Section 4 ‘Delivery up’, Section 5 ‘Damages’, Section 6 ‘Account of profits’.

¢ Karapapa and McDonagh, Chapter 22 ‘Civil and criminal remedies‘ Section 22.3.

Essential reading
¢ Cases: General Tire v Firestone [1976] RPC 197, [1975] 1 WLR 819 and [1975] 2 All
ER 173; Gerber v Lectra [1997] RPC 443 at 452–461 only; Gillette UK Ltd v Edenwest
Ltd [1994] RPC 279; Potton v Yorkclose [1990] FSR 11; Redrow Homes Ltd v Bett
Brothers plc [1998] 2 WLR 198; Nottinghamshire Healthcare NHS Trust v News Group
Newspapers [2002] RPC 49; Henderson v All Around the World Recordings [2014]
EWHC 3087 (IPEC).

The successful claimant in an intellectual property infringement action has a range of

remedies available.

4.3.1 Final injunctions

Each of the principal statutes provides for the award of a final injunction: see, for
example, the Trade Marks Act 1994 s.14; CDPA s.96; Patents Act 1977 s.61. The form of the
injunction is governed by the wording of the relevant statutory provision: Coflexip SA v
Stolt Comex Seaway MS Ltd [2001] 1 All ER 952 per Aldous LJ at para 60.

Nevertheless, even a final injunction is discretionary in nature and will not be awarded
where it is unlikely that the defendant will repeat any acts of infringement. It will be
discharged if the intellectual property right in question is declared invalid in other,
parallel proceedings against a different defendant: Coflexip SA v Stolt Offshore MS Ltd
[2004] FSR 34. Normally, the injunction is limited in time to the balance of the term of
protection for the intellectual property right in question. However, where the defendant
has obtained an unfair competitive advantage from the infringing conduct, so that
page 42 University of London
on the expiry of the claimant’s right the defendant could immediately recommence
manufacture of a rival product, the duration of the injunction may be extended beyond
the expiry date of the right. The defendant will be restrained from competing with the
claimant for the length of time it would normally take the defendant, starting afresh
and without the knowledge already gained by their infringing conduct, to analyse the
claimant’s product and set up a manufacturing facility (see Dyson Appliances Ltd v Hoover
Ltd (No 2) [2001] RPC 544 for an example of this so-called ‘springboard’ relief).

For a good illustration of the fact that a final injunction remains a discretionary remedy, see
Edwards Lifesciences LLC v Boston Scientific Scimed Inc [2017] EWHC 755 (Pat). In that case, the
use of a particular heart valve in medical procedures was held to infringe a valid patent.
However, if a final injunction on the use of the valve had been granted immediately, there
would have been a risk to the health of a small class of patients for whom the valve at
issue was the only one available for use. In such circumstances, it was held that the public
interest might not be served by the grant of an immediate final injunction.

That conclusion can be contrasted with the recent decision of Birss J in the Chancery
Division in Evalve Inc v Edwards Lifesciences Ltd [2020] EWHC 513 (Pat). Evalve was a claim
for patent infringement relating to a medical product. At the conclusion of proceedings,
in which infringement was found, the defendant argued that an injunction should
not be awarded because there was a body of doctors in the UK who had a reasonable
preference for the defendant’s product rather than the claimant’s and the grant of an
injunction would therefore contravene the public interest. Nevertheless, Birss J granted
a final injunction. Reviewing the law on the grant of injunctions and the public interest,
he reiterated that it was generally in the public interest for intellectual property rights to
be protected by injunction. In the medical context, a public interest sufficient to justify
the refusal of an injunction would, as in Edwards Lifesciences LLC, exist where, on objective
evidence, there was a need to protect the lives of patients for whom the defendant’s
product was the only suitable treatment. That was not the case in this instance.

4.3.2 Monetary remedies

A successful claimant in an intellectual property infringement action will normally
want to be compensated for the trespass to their right. Two forms of monetary remedy
are available: common law damages and the equitable action for an account of profits.

Damages for the infringement of intellectual property rights are tortious in nature.
Their objective is to restore the claimant to the position they would have been in had
the defendant not infringed. Where the claimant is in the business of manufacturing
goods, so that they are in competition with the defendant, then the measure of
damages will be lost profits. In all other cases the measure of damages will be a
reasonable licence fee. The principles governing the award of damages for intellectual
property rights are set out in the case of General Tire v Firestone [1976] RPC 197 in the
speech of Lord Wilberforce.

If damages are meant to compensate the claimant for the trespass to the intangible
property right, can a patentee recover damages in respect of non-patented items
which are normally sold as part of a patented product or process? The original view
was expressed in Polaroid v Eastman Kodak [1977] RPC 379, where Buckley LJ held that
such ‘parasitic’ damages were not available because the monetary compensation must
reflect the scope of the monopoly granted to the patentee. Consequently, the patentee
could only claim for patented items and not any ancillary equipment. However, a more
liberal attitude was shown in Gerber v Lectra [1997] RPC 443 where Jacob J held that the
loss of sales of ancillary items which were invariably sold with the patented equipment
were recoverable as being a direct result of the infringing conduct.

In the case of copyright infringement and unregistered design right infringement

(CDPA ss.97(2) and 229(3)) but not any other form of intellectual property right, the
court may award additional damages to reflect the flagrancy of the infringement.
Section 97(2) has now been considered in some detail in Nottinghamshire Healthcare
NHS Trust v News Group Newspapers [2002] RPC 962 by Pumfrey J. The judgment is useful,
as it considers the general principles applicable to damages for the infringement of all
Intellectual property 4 Remedies page 43
intellectual property rights. In relation to the award of additional damages, Pumfrey
J points out that the exact nature of the remedy had been left undecided by the
House of Lords in Redrow Homes Ltd v Bett Brothers plc [1998] 2 WLR 198. It had been
suggested that the award under s.97(2) was sui generis, but, he argued, a consensus
was emerging. This was to the effect that such damages were similar to aggravated
damages because of the policy restrictions on the award of exemplary damages and
because of the possibility of bringing criminal proceedings against the infringer under
the CDPA s.107. An example of additional damages being awarded can be found in
Phonographic Performance Ltd v Reader [2005] FSR 891, where a disc jockey had failed to
obtain a licence for the public performance of sound recordings for at least two years
despite previous undertakings. The defendant was well aware of the need for a licence,
had previously obtained one only under the threat of legal proceedings and had no
excuse for his failure to seek the appropriate licence. It was a case of deliberate and
flagrant infringement.

The established approach to additional damages under the Act has to be revisited in
light of the Intellectual Property (Enforcement, etc.) Regulations. In particular, it has
been suggested that the requirement of ‘flagrancy’ may no longer be relevant and
that a claim for damages in which a claimant knowingly, or with reasonable grounds
to know, engages in infringing activity must be determined in accordance with the
factors explicitly indicated in those Regulations (see Henderson v All Around the World
Recordings [2014] EWHC 3087 (IPEC)).

Regulations would not appear to require courts to adjust the traditional rule that
requires a claimant to elect between ‘damages’, perhaps coupled with ‘additional
damages’ and an ‘account of profits’. (See Henderson v All Around the World Recordings
[2014] EWHC 3087 (IPEC) [72]–[78], [85]–[95], considering Redrow Homes Ltd v Bett Bros
plc [1998] 1 All ER 385, 393 (HL).) An account of profits is a discretionary equitable
remedy. If appropriate, the court will apportion a part of the total profit as that
attributable to the infringement. A copyright holder has no basis on which to claim a
proprietary interest in money derived from an infringement (see Twentieth Century Fox
Film Corporation v Harris [2013] EWHC 159 (Ch)).

A successful claimant is now entitled to rely on either a claim for additional damages
under s.97(2) or a claim for the defendant’s unfair profits under the Intellectual
Property (Enforcement, etc.) Regulations, whichever is the greater (Absolute Lofts
South West London Ltd v Home Improvements Ltd [2015] EWHC 2608 [42]). For a case
considering whether an award of an account of profits was appropriate for copyright
infringement, see Bodo Sperlein Ltd v Sabichi Ltd [2015] EWHC 1242 (IPEC).

Innocent infringement
The various statutes regarding the award of damages for intellectual property
infringement contain provisions dealing with the effect of innocence on the claimant’s
ability to obtain such relief. The defendant’s innocence (which is objectively defined)
must be as to the existence of the right (objectively defined). Such a provision is found
in relation to the award of damages for copyright, design right, registered design and
patent infringement, respectively, by virtue of CDPA ss.97(1) and 233(1), Registered
Designs Act 1949, as amended, s.24B and Patents Act 1977 s.62(1). There is no such
provision in the Trade Marks Act 1994. As to why innocence does not affect the award
of damages for trade mark infringement, see Gillette UK Ltd v Edenwest Ltd [1994] RPC
279. Here, Blackburne J pointed out that as the basis of the trade mark infringement
action, historically speaking, was the effect of the defendant’s misrepresentation on
the claimant’s customer, there could be no defence of innocence: if the consumer was
misled, it did not matter whether the misrepresentation was innocent.

Account of profits
Equity provides an alternative to damages in the order for an account of profits. The
aim here is to transfer to the claimant the profits which the defendant has made from
their infringing conduct, rather than to compensate the claimant for lost revenue from
the intellectual property right. For a good example of why a claimant would go for an
page 44 University of London
account rather than damages (despite the complexity of the remedy and the fact that
it condones acts of past infringement) see Potton v Yorkclose [1990] FSR 11. An account
of profits can also be the appropriate remedy where there has been either breach of
a fiduciary duty or breach of a civil servant’s duty to the Crown, as illustrated by AG v
Blake [2001] AC 268.

Like the award of damages, a plea of innocent infringement by a defendant may

have the effect of denying a claimant this remedy. As to the effect of innocence
on the award of an account of profits, see Patents Act 1977 s.62(1) (as regards
patent infringement), the Registered Designs Act 1949 s.24B (as regards registered
design right infringement) and Gillette v Edenwest (above) (as regards trade mark
infringement). Innocence (which again has to be determined objectively) does not,
however, affect the award of an account for copyright and unregistered design right
infringement (see the CDPA ss.97(1) and 233(1)).

A claimant cannot have both damages and an account but must elect between them.
However, they do not have to do so until after the conclusion of the trial: see Island
Records v Tring [1995] FSR 560. Where a claimant elects for an account, they may not
also claim additional damages under the CDPA s.97(2): Redrow Homes Ltd v Bett Brothers
plc [1998] 2 WLR 198.

The equitable remedy of an account of profits is only available against profits actually
made by a defendant. The remedy is not therefore available against an accessory to
an infringement who has not made a profit him- or herself. However, an account may
be available against the fruits of an employment contract, where they derive from an
infringement (Lifestyle Equities CV v Ahmed [2021] EWCA Civ 675).

4.3.3 Other post-trial relief

Various ancillary remedies are prescribed by legislation to assist the intellectual
property owner in the fight against counterfeiting. These include an order for the
erasure of an infringing sign under the Trade Marks Act 1994 s.15 and an order for the
delivery and destruction of infringing copies of copyright works, designs and trade
marks (see, respectively, ss.99 and 114 of the CDPA; ss.230 and 231 of the same; and ss.16
and 19 of the Trade Marks Act 1994). The wording of these various provisions means that
a court order can be made against an innocent retailer who happens to have infringing
copies in its possession, and not just the counterfeiter who has made the products in
question: Lagenes Ltd v It’s At (UK) Ltd [1991] FSR 492. Lastly, a copyright owner has, as a
result of the CDPA s.100, the ‘self-help’ remedy whereby infringing copies can be seized.
Note the stringent conditions that are imposed on this remedy, which in effect is only
available against street traders rather than those with a permanent place of business.

Activity 4.5
Why would a claimant elect for an account of profits rather than damages?

Summary
The successful claimant has a choice of remedies for intellectual property
infringement. They may seek the award of a final injunction (at least where the
defendant is likely to continue infringement) and monetary compensation in the
form of damages or an account of profits (which are mutually exclusive). Damages
may be calculated on the basis of lost profits where claimant and defendant are in
competition with each other, otherwise the basis of calculation is a reasonable licence
fee. Statutes provide for a number of supplementary remedies.
Intellectual property 4 Remedies page 45

4.4 Involvement of public bodies

Core text
¢ Cornish, Chapter 2 ‘The enforcement of rights’ paras 2–018 to 2–025.

¢ Bently et al., Chapter 49 ‘Civil and criminal remedies’ Section 7 ‘Publicity orders’,
Section 8 ‘Time limits’, Section 9 ‘Criminal remedies’.

¢ Karapapa and McDonagh, Chapter 22 ‘Enforcement of intellectual property

rights’ Section 2.4.

Because of the widespread problem of counterfeiting, UK law provides for the

intellectual property owner to invoke the assistance of the state in protecting what
is essentially a right of private property. Counterfeiting has been estimated to cause a
loss of between 10 and 15 per cent to world trade. It has arisen as a result of modern
technology, whereby items which have required a considerable amount of initial
investment of labour and capital to manufacture are easily copied, thereby depriving
the creator of the expected return. In particular, films and sound recordings, computer
software, fashion garments, shoes and perfumes are frequently the subject of
counterfeiting.

The assistance provided by the state is twofold. First, to commit copyright and trade
mark infringement by way of trade gives rise to criminal liability: see CDPA s.107,
Registered Designs Act 1949 s.35ZA and the Trade Marks Act 1994 ss.92 and 93. There
is no such liability in relation to patents, registered designs, the unregistered design
right nor the theft of trade secrets. Prosecution, however, is not confined to those
who are counterfeiters, but may be brought against the intellectual property owner’s
competitors: Thames & Hudson v Design & Copyright Artists Society [1995] FSR 153. The
inconsistencies which formerly existed between copyright law and trade mark law
as regards criminal penalties have been removed by the Copyright, etc. and Trade
Marks (Offences and Enforcement) Act 2002. The penalties have been increased by the
Digital Economy Act 2010. Note that criminal sanctions for the intentional copying of a
registered design were introduced under the Intellectual Property Act 2014 ss.13–14.

A copyright or trade mark owner who believes that counterfeit goods are about to
be imported into the UK can notify HM Revenue & Customs, which has the power to
prevent such importation at the point of entry: see CDPA ss.111 to 112 and the Trade
Marks Act 1994 ss.89–91.

4.5 Public policy restrictions on the rights of the intellectual

property owner

Core text
¢ Cornish, Chapter 2 ‘The enforcement of rights’ paras 2–093 to 2–096.

¢ Bently et al., Chapter 48 ‘Litigation’ Section 5 ‘Presumptions’, Section 6

‘Unjustified threats to sue’.

¢ Karapapa and McDonagh, Chapter 22 ‘Civil and criminal remedies’ Section 22.5.

From the above, it can be seen that civil litigation is the normal means by which
owners of intellectual property protect their rights. However, because of the
monopolistic nature of intellectual property rights (refer again to Chapter 2), it
would be very easy for a large, multinational corporation to stifle competition from
smaller undertakings by threatening to sue them. UK intellectual property litigation
is estimated to be one of the most expensive in the world. A small firm, therefore,
receiving a ‘letter before action’ may be deterred by the expense from contesting the
action and so give in to a larger, more powerful competitor.
page 46 University of London
For this reason, some UK statutes contain provisions which restrict the right of the
intellectual property owner to threaten another with litigation. There are no restrictions
in relation to copyright infringement, nor in relation to passing off or breach of
confidence. However, the proprietor of a patent, trade mark, unregistered design right
and registered design has to be careful when contacting a suspected infringer in case
they render themselves liable to a threats action (see s.70 Patents Act 1977 as amended;
s.21 Trade Marks Act 1994; s.253 CDPA; s.26 Registered Designs Act 1949).

The whole point of a threats action is that the person affected by the threat (who then
sues for the making of the unjustified threat) becomes the claimant and the intellectual
property owner becomes the defendant. The claimant in a threats action may take the
opportunity to challenge the validity of the intellectual property right itself. If they are
successful, then the intellectual property owner may end up with nothing!

The effect of the abovementioned statutory provisions is that an intellectual

property owner (and anyone acting on their behalf, such as their solicitor) cannot
make unjustified threats to sue for infringement of their rights. If unjustified threats
are made, then any ‘person aggrieved’ (who need not be the direct recipient of the
threat, merely someone affected by it) can themselves bring proceedings in which
they can obtain a declaration, an injunction and damages. The onus is placed on the
intellectual property owner to show that the acts in respect of which proceedings
were threatened constituted infringement and that the right in question was valid.
The only exception is that the intellectual property owner remains able to threaten to
sue for acts of manufacture or importation (see Patents Act 1977 s.70(4); Trade Marks
Act 1994 s.21(3); CDPA s.253(3); Registered Designs Act 1949 s.26(2A)). The provisions are
therefore aimed primarily at protecting those involved further along the supply chain,
such as retailers. The intellectual property owner can still threaten to sue someone
who is making or importing infringing products. It should be noted that all of the
abovementioned provisions contain an exception, whereby it does not constitute an
actionable threat merely to notify a third party that a particular intellectual property
right exists.

The message is, therefore, that before warning potential defendants of litigation, the
claimant needs to be sure that (a) there has been an act of infringement, and (b) the right
which has been infringed is valid. You should note that the wording of the sections does
not restrict the intellectual property owner’s rights with regard to whom they threaten
to sue, but with regard to what they threaten to sue for. In other words, you can write to
someone alleging that they have infringed your patent by manufacture or importation,
but not that they have infringed by sale: Cavity Trays Ltd v RMC Panel Products [1996] RPC
361. Further, where an intellectual property owner with rights in another country writes
to a UK business intimating that they will take action, then such correspondence is
actionable if the threat is received in the UK: Prince plc v Prince Sports Group Inc [1998] FSR
21. Lastly, the court will consider the wording of the communication from the intellectual
property owner (it may be written or oral) to see whether, viewed through the eyes of a
third party, it constitutes a threat: see L’Oreal (UK) Ltd v Johnson & Johnson [2000] FSR 686.
Aggressive language does not necessarily have to have been used.

Amendments to the legislative regime covering unjustified threats to sue have been
made under the Intellectual Property (Unjustified Threats) Act 2017. This legislation
does not introduce a comprehensive code. Rather, it introduces amendments that
are designed to align the various statutory regimes relating to trade marks, designs
and patents. For example, the legislation provides a common definition of ‘threat of
infringement proceedings’, which is inserted into the statutory regime for each relevant
right. Thus, in the case of trade marks, s.26 of the Trade Mark Act 1994 is amended to read:
A communication contains a ‘threat of infringement proceedings’ if a reasonable person in
the position of a recipient would understand from the communication that—

(a) a registered trade mark exists, and

(b) a person intends to bring proceedings (whether in a court in the United Kingdom or
elsewhere) against another person for infringement of the registered trade mark by—

(i) an act done in the United Kingdom, or

(ii) an act which, if done, would be done in the United Kingdom.

Intellectual property 4 Remedies page 47
The 2017 Act also adjusts the exceptions to liability for making unjustified threats
(including, for example, by defining a series of ‘permitted communications’, which will
not give rise to liability (see, for example, s.70B PA 1977)). It also provides new protection
for professional advisers (see, for example, s.70D PA 1977, as amended).

One further restraint on the intellectual property owner’s ability to enforce their
rights should be noted at this point, although you do not need to worry about the
detail. In certain instances competition law may be relevant. The Competition and
Markets Authority (formerly the Competition Commission) may in some cases impose
a compulsory licence (see Patents Act 1977 s.51; CDPA ss.144 and 239). The provisions
in the various statutes dealing with instances where competition law constrains the
rights of the intellectual property owner are complex: you do not need to worry about
the detail, just be aware that they exist.

Activity 4.6
Why should the intellectual property owner’s freedom to litigate be curbed by the
threats action?

Summary
Because of the potential power that an intellectual property owner could wield,
statute curtails their ability to communicate with a third party alleging that they have
committed infringement. A person aggrieved by the threat of litigation (who does not
have to be the recipient of the communication, merely someone affected by it) can
bring an action for the making of unjustified threats. The protection is intended for
those further down the supply chain (e.g. retailers) rather than primary infringers such
as manufacturers or importers of pirated goods.

Sample examination question

The topics covered in this chapter are not separately examinable as such: your
syllabus states that they are to be described in outline only. You should therefore
treat this chapter as complementary to those dealing with copyright, design right,
trade mark and patent infringement. When you complete your studies of these
topics (see Chapters 8, 9, 13 and 18) you should return to this chapter to remind
yourself of the remedies which the successful claimant may obtain.
page 48 University of London

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the principles

outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.

Tick a box for each topic. Ready to Need to Need to

move on revise first study again

I can explain what interim remedies may be

available to an intellectual property owner before an
infringement action comes to trial.   

I can explain what final remedies may be available

to an intellectual property owner when the claim for
infringement succeeds.   

I can describe how the intellectual property owner

can request the assistance of public bodies in
pursuing those who make and sell counterfeit goods.   

I can describe the limitations which are imposed on

the intellectual property owner’s right to litigate.   

I can define the following: injunction, search order,

damages, account of profits, threats action.   

If you ticked ‘need to revise first’, which sections of the chapter are you going
to revise?
Must Revision
revise done

4.1 General matters  

4.2 Pre-trial remedies  

4.3 Post-trial remedies  

4.4 Involvement of public bodies  

4.5 Public policy restrictions on the rights of the  

intellectual property owner
5 Breach of confidence

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50

5.1 Types of information: personal, commercial and state . . . . . . . . . . 51

5.2 The role of breach of confidence in intellectual property law . . . . . . . 56

5.3 The historical development of breach of confidence and the basis

for its protection . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 57

5.4 Conditions for protection . . . . . . . . . . . . . . . . . . . . . . . . . 58

5.5 Defences . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 63

5.6 Remedies: particular problems . . . . . . . . . . . . . . . . . . . . . . 64

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . 68

page 50 University of London

Introduction
The purpose of this chapter is to explain how the action for breach of confidence fits
within intellectual property law. It will set out the circumstances in which the action
for breach of confidence will arise, and the defences and remedies which may be
available. It will also highlight some of the details that have still to be resolved by the
courts and indicate key areas of recent judicial activity.

Breach of confidence is judge-made law but the Trade Secrets Directive (Directive
(EU) 2016/943 of 8 June 2016 on the protection of undisclosed know-how and business
information (trade secrets) against their unlawful acquisition, use and disclosure) was
adopted in June 2016. It was implemented in the UK by means of the Trade Secrets
(Enforcement, etc.) Regulations 2018, which came into force on 9 June 2018. In general,
the UK government considered that the action for breach of confidence already
provides the level of protection for trade secrets required under the Directive. Indeed,
in most instances, the action for breach of confidence will go beyond what was
required under the Directive. Nevertheless, the 2018 Regulations were introduced to
provide detailed ancillary rules and clarification. In particular, they set out provisions
relating to a range of measures, procedures and remedies required under the Directive
which are intended to be available in addition, or as an alternative, to those available
in the cause of action for breach of confidence. These include both interim and final
measures. In Shenzhen Senior Technology Material Co Ltd v Celgard LLC [2020] EWCA Civ
1293, the Court of Appeal considered a case with complex issues of conflict of laws.
Questions arose as to the relationship between protection available under the Trade
Secrets Directive and the pre-existing law on breach of confidence in the UK. Arnold LJ,
who gave the leading Judgment, noted that, where UK law provided more favourable
protection for a trade secret holder than the Directive, that higher level of protection
continued to be available following implementation.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u explain, within the context of intellectual property, the significance of the action
for breach of confidence in protecting ideas and information
u explain, with relevant authority, the criteria for the action of breach of
confidence, the defences which could be raised and the remedies available to
the successful claimant
u discuss those areas of the law which are unclear or contradictory
u understand how the action for breach of confidence has been used in
combination with the Human Rights Act 1998 to protect individuals from media
intrusion.
Intellectual property 5 Breach of confidence page 51

5.1 Types of information: personal, commercial and state

Core text
¢ Bainbridge, Chapter 10 ‘The law of breach of confidence’ pp.345–46.

¢ Bently et al., Part V ‘Confidential information’.

¢ Cornish, Chapter 8 ‘Confidential information’ paras 8–001 to 8–005.

¢ Karapapa and McDonagh, Chapter 19 ‘Breach of confidence: Trade secrets and

private information’ Section 19.1.

Essential reading
¢ Cases: Seager v Copydex (No 1) [1967] RPC 349, [1967] 1 WLR 923; Fraser v Thames
Television [1983] 2 All ER 101.

The action for breach of confidence provides the only legal mechanism in UK law to
protect ideas and information as such. Other categories of intellectual property rights
require ideas and information to be embodied in a tangible form, such as inventions
(patents), works (copyright) or the appearance of products (designs). Although there
can be no property rights in information (Boardman v Phipps [1967] 2 AC 46, HL), where
information, which is not in the public domain, has been disclosed in circumstances
that impose an obligation on the recipient, then its use or further disclosure may be
restrained.

Information protected by the action for breach of confidence may be commercial,

personal or governmental.

u Commercial information may relate to an idea for a new television series, a new
product (which might or might not be capable of patent protection), steps to be
taken in a manufacturing process or a list of valued customers.

u By contrast, personal information will involve facts about an individual which they
regard as sensitive and, therefore, private.

u Government information concerns state secrets and other material about the
internal workings of the state and its agencies, which the government would
rather not be made public.

You will find that the leading cases to which you will be referred are drawn from each
of these three areas. The principles which they establish are applicable across the
whole area of breach of confidence. Nevertheless, you should focus your reading on
the way in which breach of confidence operates in the commercial world to protect
trade secrets.

Activity 5.1
Read the following cases.
u Seager v Copydex (No 1) [1967] RPC 349.
u Fraser v Thames Television [1983] 2 All ER 101.
What was the information that was protected? Why were the defendants liable?
No feedback provided.

5.1.1 The relationship between breach of confidence and human rights

Core text
¢ Bainbridge, Chapter 10 ‘The law of breach of confidence’ pp.345–46.

¢ Bently et al., Chapter 47 ‘Misuse of private information’.

¢ Cornish, Chapter 9 ‘Personal privacy’ paras 9–001 to 9–023.

¢ Karapapa and McDonagh, Chapter 19 ‘Breach of confidence: trade secrets and

private information’ Section 19.5.
page 52 University of London

Essential reading
¢ Cases: Naomi Campbell v Mirror Group Newspapers Ltd [2004] 2 AC 457 (HL)
(especially the judgment of Lord Hope); Von Hannover v Germany (2004) 40 EHHR
1; Douglas v Hello! Ltd [2001] 2 WLR 992 (CA) (especially the judgment of Sedley LJ)
(this concerns the application for interim relief); Douglas v Hello! Ltd (No 2) [2005]
4 All ER 128 (CA) (this concerns the substantive issues); Douglas v Hello! Ltd [2007]
2 WLR 920 (HL) (do not try to read the whole case, only those parts relating
to whether the defendant was liable to OK! magazine as well as Mr Douglas);
Murray v Express Newspapers [2009] Ch 481 (CA); PJS v News Group Newspapers
[2016] UKSC 26.

One particular area of recent judicial activity has been in relation to privacy. In
several decisions dealing with personal information, the courts have held that, when
combined with the Human Rights Act 1998, the action for breach of confidence is the
means to create a right of privacy, although in this context the proper name for the
action is not ‘breach of confidence’ but ‘misuse of personal information’ (see Lord
Nicholls in Naomi Campbell v Mirror Group Newspapers Ltd [2004] 2 AC 457). In each
case, the court has been required to balance Article 8 of the European Convention
on Human Rights (ECHR) (respect for private and family life) with Article 10 (freedom
of expression). The gradual separation of the action for interference with private
information and ‘traditional’ breach of confidence has been underlined by the
judgment of the Court of Appeal in Google Inc v Vidal-Hall [2015] EWCA Civ 311, in which
the form was held to be a tortious, rather than an equitable, cause of action.

5.1.2 A right of privacy

Prior to the implementation of the Human Rights Act 1998, UK courts had declared on
more than one occasion that there was no right of privacy in UK law. Even though this
state of affairs was regrettable, it was not for the courts to depart from well-established
principle. The clearest statement of regret is to be found in Kaye v Robertson [1991] FSR
62 where the court was unable to give redress under the law of privacy to the claimant,
a well-known actor. He had been the victim of a fictitious report published in the
defendant’s newspaper while he was lying unconscious in hospital recovering from a
serious car accident (the court did, however, find that the defendant had committed
malicious falsehood and awarded damages to the claimant on that basis).

Since Kaye v Robertson, there has been a marked change of judicial attitude. The
turning point was the interim (interlocutory) decision of the Court of Appeal in Douglas
v Hello! Ltd [2001] 2 WLR 992. (Hello! is a popular pictorial magazine which publishes
articles about the lives (and loves) of relatively famous people (TV performers, film
stars, royalty and aristocrats).) While refusing to grant the claimants an injunction
to restrain publication of their wedding photographs in the defendant’s magazine
(because damages would be an adequate remedy), a majority of the judges were of
the view that the extensive use by the claimants of confidentiality undertakings from
guests and staff at the wedding was enough, when coupled with the Human Rights
Act, to create a right of privacy. You should note in particular the comments of Sedley
LJ as to the significance of the 1998 Act and its relationship with the action for breach
of confidence. Similarly, in Venables & Thompson v News Group Newspapers Ltd [2001]
1 All ER 908, Butler-Sloss P granted a permanent injunction against all news media in
the UK preventing them from disclosing the whereabouts and new identities of the
claimants − two boys who had been convicted of murder − who, having served their
prison sentences, wished to preserve their anonymity in case of revenge attacks. The
key factor in this case, however, was the very real risk to the boys’ safety should their
location become public knowledge.

Two other leading cases (both of which you must read) are Naomi Campbell v Mirror
Group Newspapers Ltd [2004] 2 AC 457 and Von Hannover v Germany (2004) 40 EHHR 1.
In the former, the House of Lords held that the claimant’s privacy had been invaded
by detailed accounts appearing in the defendant’s newspaper of her attendance at
a drug rehabilitation clinic in London. Although the newspaper was entitled to ‘set
the record straight’ after the claimant had denied her drug addiction, it had gone
Intellectual property 5 Breach of confidence page 53
too far in disclosing the details of her attendance at the clinic and pictures of her
leaving a counselling session. You should note the views of the House of Lords that the
publication of photographs is a particularly destructive form of invasion of privacy. In
the latter, the European Court of Human Rights (ECtHR) drew a distinction between
facts contributing to a debate about politicians in the exercise of their duties and
the reporting of details about the private life of an individual who does not exercise
official functions. In the former case, the press had a vital role to play as the ‘watchdog’
of democracy, but this did not apply where photographs and articles had the sole
purpose of satisfying the public’s curiosity. In this context, freedom of expression was
to be interpreted more narrowly.

In a sequel to its earlier ruling, the ECtHR has revisited the issue of when an individual
may be considered to be carrying out public duties.

In Von Hannover v Germany (No 2), ECtHR, 7 February 2012, following the 2004 decision
which had upheld their right to privacy under Article 8 ECHR, Princess Caroline of Monaco
and her husband pursued several actions in the German courts to restrain publication
of photographs of them. One particular photograph was of the couple on a skiing
holiday while the Princess’s father was seriously ill, in respect of which the German
Federal Court of Justice had refused to grant an injunction. This refusal was upheld by
the Constitutional Court. The matter was referred to the Grand Chamber of the ECtHR
which ruled that the Federal Court’s approach in assessing the information value of the
photograph in question in the light of the article it accompanied could not be criticised.
It was accepted that in the context of the accompanying articles, the photographs in
dispute contributed, to some degree at least, to a ‘debate of general interest’ (para
118). The ECtHR took the view that it had not been unreasonable of the Federal Court to
characterise the illness of the reigning sovereign as an ‘event in contemporary society’.
It was said to be noteworthy that the Federal Court had upheld an injunction which
prevented the publication of two other photographs on the basis that they were being
published solely for entertainment purposes. The ECtHR reiterated the proposition that
‘not only does the press have the task of imparting information and ideas on all matters
of public interest, the public also has a right to receive them’ (para 118). The ECtHR took
the view that irrespective of the extent to which the first applicant played an official role
on behalf of Monaco, the applicants who were ‘undeniably very well known’ could not
be said to be ‘ordinary private individuals’. They had to be regarded as ‘public figures’
(para 120). It was noted that no evidence had been advanced before the Federal Court
to support the applicants’ assertion that the photographs in question had been taken
in a climate of harassment. The Federal Court had concluded that there was nothing
to indicate that the photographs had been taken surreptitiously (para 122). The ECtHR
held that it had not been necessary to conduct a more thorough examination of the
circumstances in which the photographs in question had been taken, as the applicants
had not advanced any ‘relevant argument’. It was also noted that, as the Federal Court
had pointed out, the photographs were taken of the applicants in the middle of a street
in St Moritz and were not so offensive in themselves so as to justify their prohibition
(para 123). In conclusion, the national courts had: carefully balanced Article 10 rights with
the applicants’ Article 8 rights; attached fundamental importance to the question of
whether the photographs had contributed to a debate of general interest; examined the
circumstances in which the photographs had been taken; and explicitly taken account of
the ECtHR’s case law.

The test to be applied

Rather than the standard test for breach of confidence (explained in Section 5.4
below), it is now clear that there is a different test for ‘misuse of personal information’.
It is whether the claimant had a reasonable expectation of privacy, assessed
objectively (Naomi Campbell v MGN per Lord Nicholls at para 21 and Lord Hope at 99;
Murray v Express Newspapers [2009] Ch 481 at para 35). If there is such an expectation,
the court then has to balance Article 8 ECHR (respect for private and family life)
with Article 10 (freedom of expression). Factors to be taken into account in deciding
whether there is an expectation of privacy were helpfully set out by the Court of
Appeal in Murray v Express Newspapers.
page 54 University of London
A very useful summary of the principles to be applied when dealing with an action
for the misuse of personal information is set out by Briggs J in Rocknroll v News Group
Newspapers [2013] EWHC 24 (Ch) at [5]. One interesting feature of this cause of action is
that a claimant may still succeed even though the information at issue is known by a
significant number of people. In this respect, the approach appears to go beyond that
of ‘relative secrecy’ applied in breach of confidence more generally. Thus, for example,
in PJS v News Group Newspapers [2016] UKSC 26, the Supreme Court held that, even
though the information at issue had been very widely publicised, dissemination could
be prevented because it would cause further harassment and distress. The approach
based upon ‘reasonable expectation of privacy’ was endorsed by the Supreme Court
(by a majority) in Re JR38 [2015] UKSC 42.

In Bull v Desporte [2019] EWHC 1837, a lottery winner brought a claim for misuse of
private information against a person with whom he had had a sexual relationship and
who had published details of their private life in a book. Julian Knowles J reviewed
the legal principles established in this area of law [75]–[89]. He noted that, where
a publication concerns details of an individual’s private sex life, there is little or no
public interest in publication. Furthermore, he noted that the truth or falsity of
information at issue is irrelevant to the question of whether information is private
(the first condition to be established) but that it may be relevant to the public interest
balancing exercise. On an application of these principles, he found in favour of the
claimant and awarded £12,500 damages, of which £2,500 were aggravated damages.
In deciding on an appropriate sum in damages, he applied the principles set out by
Mann J in Gulati v Mirror Group Newspaper [2016] FSR 12.

A further example of the approach to be applied when considering claims for the
tort of misuse of personal information is provided by ZXC v Bloomberg [2020] 3 WLR
838. A UK legal enforcement body sent a request to an official body of a foreign state
requesting information concerning the claimant in connection with the potential
commission of a criminal offence. The defendant media organisation obtained a copy
of the letter of request and published details of the criminal investigation referring to
the claimant. The defendant was not charged with the commission of an offence. The
claimant brought proceedings against the media organisation for misuse of personal
information. At first instance, the judge upheld the claim, awarding damages and
an injunction. The defendant appealed unsuccessfully. In the Court of Appeal, it was
held that a person who was under criminal investigation, but had not been charged,
might have a reasonable expectation of privacy in relation to the police investigation.
Whether an expectation of privacy arose in a particular instance depended on the
specific facts of a case. In this case, the fact that the request sent by the UK legal
enforcement body arose in the context of evidently provisional suspicions (rather
than, for example, factual allegations of criminal conduct) militated in favour of
the existence of a claim under Article 8. In balancing the Article 8 interests with the
defendant’s right to freedom of expression under Article 10, the Court noted the
strong public interest in the maintenance of confidentiality of the letter of request
between public bodies in different states.

The claim in HRH Duchess of Sussex v Associated Newspapers Ltd [2021] EWCA Civ 1810
was brought by the Duchess of Sussex (Meghan Markle) over the Mail on Sunday’s
publication of long extracts from a letter that she had written to her father (Thomas
Markle) shortly before her wedding to the Duke of Sussex. In the letter, the claimant
had remonstrated with her father about his contacts with tabloid newspapers.
Unhappy with the publication of extensive extracts from her private correspondence,
she brought proceedings against the newspaper group responsible for the Mail on
Sunday in both misuse of personal information and infringement of copyright. In the
High Court, Warby J awarded summary judgment to the claimant in both causes of
action. In misuse of personal information, he applied the two-stage test endorsed
in Campbell v MGN Ltd [2004] 2 AC 457 and Re S [2005] 1 AC 593. At the first stage,
employing the Murray factors (see Murray v Express Newspapers plc [2008] EWCA
Civ 446), he held that the claimant had had a reasonable expectation of privacy in
the letter. The detailed contents of the letter were not in the public domain, they
concerned private matters and disclosure of the letter was likely to cause distress to
Intellectual property 5 Breach of confidence page 55
her. The fact that the claimant had disclosed private information in other contexts did
not materially weaken the privacy claim in relation to the specific private information
contained in the letter. At the second step of the enquiry, the Court had to consider
whether, in all the circumstances of the case, the claimant’s privacy rights had to yield
to the rights of freedom of expression enjoyed by the publisher of the newspaper and
its audience. This step required the Court to balance the competing rights, with an
‘intense focus’ on the specific circumstances and particular facts of the case. Warby
J noted that publications that aimed solely to satisfy the curiosity of readers did not
contribute to debate in the general interest and suggested that the strongest aspect
of the defendant’s argument at this stage relied on the alleged need to publish
extracts from the letter in order to correct a misleading impression about the letter’s
contents arising as a consequence of the publication of a separate article in the USA.
However, even from this perspective, the publication of such a large proportion of
the letter by the Mail on Sunday represented a clearly disproportionate interference
with the claimant’s right to a private life. The defendant appealed to the Court of
Appeal, claiming that the Judge had approached the task of balancing the competing
claims of claimant and defendant incorrectly and, on the facts of the case, had not
given sufficient weight to the right of freedom of expression. However, the Court of
Appeal considered that the award of summary judgment by Warby J had been entirely
appropriate. His approach to the claim of misuse of personal information had been
entirely in line with that approved in Campbell, Re S and Murray (and with two more
recent cases, ZXC v Bloomberg LP [2020] EWCA Civ 611 and Sicri v Associated Newspapers
Ltd [2020] EWHC 3541 (QBD)).

Where there is a pre-existing contractual relationship

In some of the cases, the confider and confidant of personal information have been
in a contractual relationship, thus making it easier to show that there is a reasonable
expectation of privacy. Apart from Douglas v Hello! Ltd where the claimants made
extensive use of confidentiality undertakings from their wedding guests, you should
note the Court of Appeal cases of McKennitt v Ash [2007] 3 WLR 194 (where the
defendant was the claimant’s personal assistant) and HRH Prince of Wales v Associated
Newspapers Ltd [2007] 3 WLR 222 (where the claimant’s private diary was stolen by a
member of his staff). Nevertheless, it is not vital that there should be a contractual
relationship, as evidenced by the decisions in Campbell v MGN and Mosley v News
Group Newspapers [2008] EWHC 1777. The existence of contractual arrangements led
the House of Lords in Douglas v Hello! Ltd to suggest that the case was not actually
about misuse of personal information, but a straightforward commercial breach of
confidence, thereby enabling their Lordships to conclude that the magazine with
whom Mr and Mrs Douglas had made an exclusive deal to publish their wedding
photographs had a claim against the defendant for publishing rival photographs.

Courting publicity
It has sometimes been said that those who court publicity may find that their right
of privacy is diminished (see A v B (a Company) [2002] 3 WLR 542 per Lord Woolf at
para 11(xii) where the court refused to restrain the disclosure in the newspapers
of the extramarital affairs of a famous footballer). In Theakston v MGN [2002] EWHC
137, Ouseley J likewise refused to restrain the publication of a story concerning the
visit to a brothel by a television personality. These two cases should be treated with
caution in view of the later decision of the ECtHR in Von Hannover v Germany and
in particular because they appear to confuse whether it is in the public interest to
disclose information with whether something is of public interest (the public interest
defence is considered in Section 5.5 below). Later cases like McKennitt v Ash, HRH Prince
of Wales v Associated Newspapers and Mosley v News Group Newspapers have all applied
the test in Von Hannover v Germany restricting the public interest defence to those
cases where the claimant holds elected office. They have therefore upheld the right
to privacy rather than freedom of expression. Nevertheless, the press is entitled to set
the record straight where a public figure has made untrue pronouncements about
their private life (Woodward v Hutchins [1977] 1 WLR 760 per Bridge LJ, Naomi Campbell
v MGN, above, and Browne v Associated Newspapers [2007] 3 WLR 289). However, the
page 56 University of London
fact that an individual has achieved prominence on the public stage does not mean
that their private life can be laid bare by the media: ‘it should [not] necessarily be in
the public interest that an individual who has been adopted as a role model...should
be demonstrated to have feet of clay’ (Naomi Campbell v Mirror Group Newspapers Ltd
[2003] 1 All ER 224 at para 41 (CA)).

Further reading
¢ Aplin, T. ‘The development of the action for breach of confidence in the post-HRA
era’ [2007] IPQ 19.

¢ Carty, H. ‘The common law and the quest for the IP effect’ [2007] IPQ 237.

¢ Mulheron, R. ‘A potential framework for privacy? A reply to Hello!’ (2006)

69 MLR 679.

¢ Phillipson, G. ‘Transforming breach of confidence? Towards a common law right

of privacy under the Human Rights Act’ (2003) 66 MLR 726.

¢ Sims, A. ‘“A shift in the centre of gravity”: the dangers of protecting privacy
through breach of confidence’ [2005] IPQ 27.

Activity 5.2
Read the Naomi Campbell decision and the substantive CA decision (of 2005) in
Douglas v Hello! Ltd. Assess the significance of these cases in creating an action for
the misuse of personal information.

Summary
The action for breach of confidence has, when combined with the Human Rights
Act 1998, conferred protection against media intrusion where the claimant has a
reasonable expectation of privacy, unless it is in the public interest for the information
to be disclosed. Such an action is to be referred to as ‘misuse of personal information’
rather than ‘breach of confidence’.

5.2 The role of breach of confidence in intellectual property law

Core text
¢ Bainbridge, Chapter 10 ‘The law of breach of confidence’ pp.345–46.

¢ Bently et al., Part V ‘Confidential information’.

¢ Cornish, Chapter 8 ‘Confidential information’ paras 8–002 to 8–005.

¢ Karapapa and McDonagh, Chapter 19 ‘Breach of confidence: trade secrets and

private information’ Section 19.2.

In relation to commercial information, breach of confidence has several practical

applications.

u It is an alternative to patent protection. An inventor may decide not to bother

with obtaining patent protection for their invention, but instead to rely on secrecy
(which after all is free!). As a reminder, in Seager v Copydex (No 1) (see above) the
inventor had not obtained patent protection for a new type of carpet grip but was
able nevertheless to argue that the defendants had misappropriated his ideas.
However, relying on secrecy to protect an invention has limited use. It will not
work where it is possible for a third party to ‘reverse engineer’ the invention (that
is, having acquired a legitimate copy of the product, to analyse it to find out how it
works before making their own version of the product).

u It can protect ideas which are not yet sufficiently permanent to fall within the
scope of copyright: see Fraser v Thames Television (above).
Intellectual property 5 Breach of confidence page 57
u It can offer parallel protection to copyright, so that there can be liability for
publication even though there has not been an infringement of copyright: see
Creation Records v News Group Newspapers [1997] EMLR 444 and Shelley Films v Rex
Features [1994] EMLR 134.

u It can be used to protect the disclosure of potential patents or designs where it is

necessary to have the item evaluated prior to filing the application – see s.2(4) of
the Patents Act 1977 (explained in Chapter 16) and s.1(6) of the Registered Designs
Act 1949 as amended.

u It is the way (by means of licensing) of protecting non-patentable but commercially

valuable information (‘know-how’) relating to the procedures, etc. to be used in the
manufacture of goods. (Note that there are also competition law implications in the
licensing of technology but these are outside the scope of your syllabus.)

5.3 The historical development of breach of confidence and the

basis for its protection

Core text
¢ Bainbridge, Chapter 10 ‘The law of breach of confidence’ p.346.

¢ Bently et al., Part V ‘Confidential information’.

¢ Cornish, Chapter 8 ‘Confidential information’ paras 8–006 to 8–008.

¢ Karapapa and McDonagh, Chapter 19 ‘Breach of confidence: trade secrets and

private information’ Section 19.3.

It is generally accepted that the first case to be decided was that of Prince Albert v
Strange (1849) 1 H & Tw 1, where private drawings by Prince Albert had been sent to
a printer to be copied professionally. The defendant had made unauthorised copies
which he had intended to put on public display. An injunction was granted to restrain
him. A more typical trade secret case was Morison v Moat (1851) 9 Hare 241, where the
son of one of two business partners was restrained by the other partner, after the
partnership had been dissolved, from making use of a secret recipe for a medicine.

The basis for these early decisions was not made entirely clear; the arguments
deployed included contract, property rights and conscience. Because many breach
of confidence claims arise when the parties have previously been in a contractual
relationship, there are numerous decisions where the courts strove to find some sort of
implied contract to justify their decision. However, modern case law has moved away
from implied contract and/or property rights towards the action being based on the
equitable concept of ‘good faith’. The first clear statement that the action was based
on the general notion of conscience was in Saltman Engineering v Campbell Engineering
(1948) 65 RPC 203. Subsequent reiterations include those by Lord Denning in Fraser v
Evans [1969] 1 QB 349 at 361 (‘It is based not so much on property or on contract as on a
duty to be of good faith’) and Lord Keith in AG v Guardian Newspapers (No 2) [1990] 1 AC
109 (hereafter ‘Spycatcher’) (‘The obligation may be imposed by an express or implied
term in a contract but it may also exist independently of any contract on the basis of an
independent equitable principle of confidence’). The UK Supreme Court has recently
reiterated that the basis of liability is whether the recipient’s conscience is affected
(Vestergaard Frandsen A/S v Bestnet Europe Ltd [2013] UKSC 31 at [23]).

Summary
The action for breach of confidence is based on the equitable notion of good faith. The
courts took some time to recognise this, because in many of the key cases the parties
were in a contractual relationship. The existence of a contract is not a prerequisite for
the duty of confidentiality to arise.
page 58 University of London

5.4 Conditions for protection

Core text
¢ Bainbridge, Chapter 10 ‘The law of breach of confidence’ pp.349–52.

¢ Bently et al., Part V ‘Confidential information’.

¢ Cornish, Chapter 8 ‘Confidential information’ para 8–009.

¢ Karapapa and McDonagh, Chapter 19 ‘Breach of confidence: trade secrets and

private information’ Section 19.4.

Essential reading
¢ Cases: Coco v Clark [1969] RPC 41; AG v Guardian Newspapers (No 2) [1990] 1 AC 109
(‘Spycatcher’).

The leading case on breach of confidence (and therefore one which you must know)
is Coco v Clark [1969] RPC 41. Here (at p.47) Megarry J set out the necessary ingredients
for a successful claim. First, the information must be of a confidential nature; second,
it must have been communicated in circumstances ‘importing an obligation of
confidence’; and third, subsequently there has been unauthorised use or disclosure of
that information. These criteria have been repeated in numerous decisions since, and it
is vital that you can recite them. We shall now explore these three ingredients in turn.

Activity 5.3
Write a concise summary of:
a. the basis of the action for breach of confidence

b. the conditions for protection.

No feedback provided.

5.4.1 Confidential information

Core text
¢ Bainbridge, Chapter 10 ‘The law of breach of confidence’ pp.352–64.

¢ Bently et al., Chapter 44 ‘Is the information capable of being protected?’.

¢ Cornish, Chapter 8 ‘Confidential information’ paras 8–010 to 8–019.

¢ Karapapa and McDonagh, Chapter 19 ‘Breach of confidence: trade secrets and

private information’ Section 19.4.

Essential reading
¢ Case: AG v Guardian Newspapers (No 2) [1990] 1 AC 109 (‘Spycatcher’), especially
the judgment of Lord Goff.

The categories of information which may be protected by the action for breach of
confidence are very wide. The form which the information takes is irrelevant: it may be
in writing, in drawings, in photographs or oral. It need not be permanent. But according
to Lord Goff in the ‘Spycatcher’ case, it must not be useless, trivial, vague or immoral.
Information which is immoral must involve a breach of the criminal law and not merely
conduct which some people find distasteful: Mosley v News Group Newspapers [2008]
EWHC 1777. Further, the information must be capable of being identified and certain. This
last point is illustrated by De Maudsley v Palumbo [1996] FSR 447 where it was held that
vague preliminary ideas for the ‘Ministry of Sound’ nightclub were not protectable. This
case should be contrasted with Fraser v Thames Television above. For a further example
of information which was not protectable because it was vague, see Bailey & Williams
v Graham & Levi Roots Reggae Reggae Foods Ltd [2012] EWCA (Civ) 1469 (the method of
manufacture was vague in the extreme). However, whatever the information may be,
the one key requirement is that it must not already be in the public domain: it must be
secret information (‘Spycatcher’ at p.282 per Lord Goff).
Intellectual property 5 Breach of confidence page 59

Lord Goff’s view of a breach of confidence:

Form is irrelevant:
need not be
Must not be ‘useless,
permanent
trivial, vague or
Must be capable of being
immoral’
identified and certain
Must be secret
(relatively)

The key issue for the court, therefore, is to decide what is public information. For
an example of information which was not protectable because it was in the public
domain, see BBC v HarperCollins [2010] EWHC 2424 (Ch).

A further point to note is that the action for breach of confidence is based on the
concept of relative not absolute secrecy (unlike, as we shall see in Chapter 16,
the case with patents) (Vestergaard Frandsen A/S v BestNet Europe Ltd [2010] FSR 29).
Consequently, disclosure to a limited circle may not destroy confidentiality (for
example, in BBC v HarperCollins Publishers [2010] EWHC 2424 (Ch)). Also, where the
information is a mixture of public and private, protection is still available if the
defendant uses the information as a ‘springboard’ to gain a commercial advantage
over competitors. Morgan J held that information about the identity of the actor who
played ‘The Stig’ (a character on the BBC’s Top Gear television programme) was so
widespread that it could be regarded as generally accessible. Accordingly, he was not
prepared to grant an injunction prohibiting the disclosure of that information.

5.4.2 An obligation of confidence

Core text
¢ Bainbridge, Chapter 10 ‘The law of breach of confidence’ pp.364–79.

¢ Bently et al., Chapter 45 ‘Obligation of confidence’.

¢ Cornish, Chapter 8 ‘Confidential information’ paras 8–020 to 8–036.

¢ Karapapa and McDonagh, Chapter 19 ‘Breach of confidence: trade secrets and

private information’ Section 19.4.2.

Essential reading
¢ Cases: Faccenda v Fowler [1986] 1 All ER 617; AG v Guardian Newspapers No 2 [1990]
1 AC 109 (‘Spycatcher’), especially the judgment of Lord Goff.

The duty of secrecy can arise in a number of ways. Commonly, it may arise from a
contract between the parties (there may be an express or implied term imposing the
duty of secrecy). However, as stated above, it is not necessary to show that there was
a contractual relationship, although evidentially this may help the claimant’s case
considerably. Instead, the court can infer that there is a duty of confidence either from
the parties’ relationship (such as a relationship of employment, that of professional
adviser/client or a commercial joint venture) or simply from the circumstances of the
disclosure, objectively assessed. The relationship, however, must be of the type which
imposes an equitable duty of good faith.

Courts adopt the approach of Megarry J in Coco v Clark.

It seems to me that if the circumstances are such that any reasonable man standing in
the shoes of the recipient of the information would have realised that upon reasonable
grounds the information was being given to him in confidence, then this should suffice to
impose upon him the equitable obligation of confidence.

This objective test was by implication approved in the ‘Spycatcher’ case by Lords Goff
and Keith, and was expressly approved by the House of Lords in Naomi Campbell v MGN
(see above).

An example of an application of the objective test for the existence of the duty of
secrecy is Stephens v Avery [1988] Ch 449. Here one friend disclosed to another that
they were in a lesbian relationship. It was held that the friend should have realised
page 60 University of London
from the circumstances of the disclosure that the information was confidential and
not to be disclosed, least of all to a tabloid newspaper.

When dealing with the obligation of confidence, there are three distinct groups of
recipients where greater discussion is required.

Employees
An employee owes the employer a duty of fidelity, that is, to further the interests of
the employer’s business. This duty varies depending on the seniority and skill of the
employee, and not all employees will necessarily receive the same treatment (you
should make a note to compare this with the position of employee inventors and
entitlement to patents when the matter is considered in Chapter 17). Very senior
employees will be treated as fiduciaries. The duty of good faith can encompass the
duty not to compete with or injure the employer’s business (Hivac Ltd v Park Royal
Scientific Instruments Ltd [1964] 1 All ER 350) as well as the obligation to maintain
secrecy (Printers and Finishers Ltd v Holloway [1965] 1 WLR 1).

Ex-employees
Whether a former employee owes an obligation of secrecy to the employer depends
again on the status, knowledge and skills of the employee. Further, there are three
distinct categories of information, namely trade secrets, commercially sensitive
information and the employee’s general skill and knowledge (Faccenda v Fowler
[1986] 1 All ER 617). The first category is automatically protected during and after the
contract of employment. The second is automatically protected during the contract
of employment because of the employee’s general duty of fidelity, but will require an
express clause to protect it after termination of employment (which raises questions
about clauses in restraint of trade – these are dealt with in more detail in most
contract law textbooks). The last category of information is not protectable, so that
the employee is free to make use of their skills in subsequent employment. The first
and second categories are not necessarily easy to separate in practice.

In Shenzhen Senior Technology Material Co Ltd v Celgard LLC [2020] EWCA Civ 1293, an
appeal against the grant of an interim injunction for breach of confidence against an
ex-employee’s current employer, Arnold LJ (giving the leading judgment) reiterated
the centrality of the Coco elements in providing a framework for the cause of
action of breach of confidence. He also emphasised the necessity for the claimant
to particularise the information on which a claim is based. However, he also held
that a claimant may have some leeway in doing so where it is hampered in its task
of properly identifying the disputed information by the obstructiveness or lack of
cooperation of the defendant. He also noted the continued relevance of Faccenda v
Fowler and Lancashire Fires Ltd v SA Lyons & Co Ltd [1996] FSR 629 as establishing the legal
position on the continuing obligation of confidence owed by an ex-employee.

Third-party recipients
The starting point here is fairly obvious: unless protection is available against a third-
party recipient, protection would be worthless (per Lord Griffiths in ‘Spycatcher’).

However, it is in this area that the cases were most contradictory in the past. Under the
influence of the Human Rights Act, however, any controversy relating to the position
of such recipients has now very largely been resolved. In ‘Spycatcher’, the obligation
imposed upon a third party was generalised in the following terms:

It is a general rule of law that a third party who comes into possession of confidential
information which he knows to be such, may come under a duty not to pass it on to
anyone else. (Attorney-General v Guardian Newspapers (No 2) [1990] AC 109 per Lord Keith)

This explanation of the obligation arguably places greater emphasis on the nature
of the information (as confidential) than upon knowledge (actual or constructive) of
the disclosure of information in breach of an obligation. This shift in emphasis is also
apparent from the following example provided, obiter:
Intellectual property 5 Breach of confidence page 61

…I have expressed the circumstances in which the duty arises in broad terms, not merely
to embrace those cases where a third party receives information from a person who is
under a duty of confidence in respect of it, knowing that it has been disclosed by that
person to him in breach of his duty of confidence, but also to include certain situations
– beloved of law teachers – where an obviously confidential document is wafted by an
electric fan out of a window into a crowded street, or where an obviously confidential
document, such as a private diary, is dropped in a public place, and is then picked up by a
passer-by. (A-G v Guardian Newspapers Ltd (No 2) [1990] AC 109 per Lord Goff)

In such examples, it is the nature of the information that is significant. There is no

pre-existing obligation of confidence. This change of emphasis, when confirmed,
effectively extended the scope of the action for breach of confidence to encompass
those, such as eavesdroppers or industrial spies, who simply acquire information
illicitly without prior breach of obligation. Laws J accepted this extension in this
frequently cited passage:

…If someone with a telephoto lens were to take from a distance and with no authority
a picture of another engaged in some private act, his subsequent disclosure of the
photograph would, in my judgment, as surely amount to a breach of confidence as if
he had found or stolen a letter or diary in which the act was recounted and proceeded
to publish it. In such a case, the law would protect what might reasonably be called a
right of privacy, although the name accorded to the cause of action would be breach of
confidence. (Hellewell v Chief Constable of Derbyshire [1995] 1 WLR 804)

The potential application of the obligation to such ‘strangers’ was confirmed in

Douglas v Hello! Ltd [2008] 1 AC 1.

This development in relation to the second Coco requirement has been vital in
allowing a modified form of the action for breach of confidence to function as a
mechanism for protecting private information under the Human Rights Act 1998:

This cause of action has now firmly shaken off the limiting constraint of the need for an
initial confidential relationship. In doing so it has changed its nature. In this country this
development was recognised clearly in the judgment of Lord Goff of Chieveley in Attorney
General v Guardian Newspapers Ltd (No 2) [1990] 1 AC 109, 281. Now the law imposes a ‘duty
of confidence’ whenever a person receives information he knows or ought to know is
fairly and reasonably to be regarded as confidential. Even this formulation is awkward. The
continuing use of the phrase ‘duty of confidence’ and the description of the information
as ‘confidential’ is not altogether comfortable. Information about an individual’s private
life would not, in ordinary usage, be called ‘confidential’. The more natural description
today is that such information is private. The essence of the tort is better encapsulated
now as misuse of private information. (Campbell per Lord Nicholls, para 14)

A case such as the hypothetical one described by Laws J in the extract from Hellewell
quoted above would today be decided in accordance with the principles applicable
to cases relating to private information (the principles deriving from Campbell). For
discussion of such privacy cases, see Bently et al. pp.1184–92.

In Tchenguiz v Imerman [2010] EWCA Civ 908, the Court of Appeal even extended the
obligation to a defendant who had intentionally taken steps to acquire information
without authorisation. Acquisition of the information was, in its own right, regarded as
breaching the obligation:

In our view, it would be a breach of confidence for a defendant, without the authority of
the claimant, to examine or to make, retain, or supply copies to a third party, of a document
whose contents are, and were (or ought to have been) appreciated by the defendant to be,
confidential to the claimant. (Tchenguiz v Imerman per Lord Neuberger [69])

As has been noted above, the law of breach of confidence has often been described as
originating in equity. Nevertheless, under the pressure of the developments described
above, the obligation to maintain confidence has increasingly been formulated in
objective terms:
page 62 University of London

…[An] equitable obligation of confidence will arise not only where confidential
information is disclosed in breach of an obligation of confidence (which may itself be
contractual or equitable) and the recipient knows, or has notice that that is the case, but
also where confidential information is acquired or received without having been in breach
of confidence and the acquirer or recipient knows, or has notice, that the information
is confidential. Either way, whether a person has notice is to be objectively assessed by
reference to a reasonable person standing in the position of the recipient. (Primary Group
(UK) Ltd v The Royal Bank of Scotland [2014] EWHC 1082 (Ch) [223] per Arnold J)

In The Racing Partnership Limited v Sports Information Services Ltd [2020] EWCA Civ
1300, the Court of Appeal heard an appeal in a complex case concerning the making
available of data relating to horse racing and involving claims in a number of causes of
action. In relation to breach of confidence, by a majority, the Court of Appeal upheld
an appeal against liability by the defendant, who had received information from a
third party, which itself held certain important information about horse races because
it had access to racecourses owned by the claimant. The majority of the Court held
that the defendant was not bound by an obligation of confidence because the third
party providing the defendant with the information was a reputable commercial
operator and gave warranties that the information provided was not subject to
obligations of confidentiality to the defendant. It was held that, in such circumstances,
commercial realities and efficiency dictated that the defendant should not be held
to be on notice that the information was supplied in breach of confidence and
should not be held liable for acting on the strength of those assurances. A reasonable
commercial party in the position of the defendant could not have been expected to
do more.

Standing
Only a person to whom the obligation of confidence was owed has standing to sue for
breach of confidence. The range of persons to whom such an obligation can be owed
was an important question at issue in Douglas v Hello! Ltd [2008] 1 AC 1. Ultimately,
following quite different assessments in the High Court and the Court of Appeal, it was
held in the House of Lords that the obligation to maintain the confidentiality of the
images of the wedding at issue in that case was owed not only to the marrying couple
but also to OK! magazine, which had an exclusive contract with Douglas and Zeta-Jones
to publish photographs of the wedding. In the words of Lord Hoffmann, the obligation
was owed to OK! because ‘everyone knew that the obligation of confidence was
imposed for the benefit of OK! as well as the Douglases’ [114].

Activity 5.4
Read Faccenda v Fowler listed above. How does UK law classify information obtained
by an employee during the course of their employment? How is such information
treated once the employment contract has been terminated?

5.4.3 Wrongful use or disclosure

Core text
u Bainbridge, Chapter 10 ‘The law of breach of confidence’ pp.379 and 380.
u Bently et al., Chapter 46 ‘Breach and defences’.
u Cornish, Chapter 8 ‘Confidential information’ paras 8–037 to 8–039.
u Karapapa and McDonagh, Chapter 19 ‘Breach of confidence: trade secrets and
private information’ Section 19.4.3.
The final element which must be proved in order to succeed in the action for breach
of confidence is that the defendant has gone beyond the purpose of the original
disclosure. This may entail using the information for another purpose or, more usually,
passing on the information to somebody else. Even here, there are some unresolved
issues in the cases. For example, does there have to be some sort of detriment or
harm suffered by the claimant (a useful comparison could be made here with the
tort of defamation) or is the wrongful use per se enough? The matter was left open
Intellectual property 5 Breach of confidence page 63
by the House of Lords in ‘Spycatcher’. In the case of commercial information, the
loss of potential sales as a result of the defendant’s use of the information to make
their own competing product will mean that detriment is not an issue. In the case of
personal information, the mere fact that there has been disclosure suffices (McKennitt
v Ash [2006] EWCA Civ 1714). By contrast, in Douglas v Hello! Ltd [2003] 3 All ER 996 at
para 199, it was suggested that there must be some more tangible detriment to the
claimants. These difficulties can be resolved by arguing that the question of detriment
is something which goes to the issue of the remedy to be awarded rather than the
existence of liability, so that minimal harm will result in the award of nominal rather
than substantial damages. This is illustrated by the Douglas decision, where Lindsay J
awarded only a small amount of compensation to the two celebrities but a substantial
sum went to the magazine which had exclusive rights to their wedding photographs, a
point subsequently confirmed by the House of Lords.

In Warren v DSG Retail Ltd [2021] EWHC 2168 (QB) Saini J held that the obligation arising
in the equitable action for breach of confidence imposed only negative obligations
not to disclose information. It did not impose positive obligations to take care that
information did not fall into the hands of a third party.

5.5 Defences

Core text
¢ Bainbridge, Chapter 10 ‘The law of breach of confidence’ pp.360–64.

¢ Bently et al., Chapter 46 ‘Breach and defences’ Section 4 ‘Defences’, Section 5

‘Private information’.

¢ Cornish, Chapter 8 ‘Confidential information’ paras 8–015 to 8–018.

¢ Karapapa and McDonagh, Chapter 19 ‘Breach of confidence: trade secrets and

private information’ Section 19.6.

Essential reading
¢ Cases: Lion Laboratories v Evans [1984] 2 All ER 417; Hyde Park Residence Ltd v
Yelland [2000] 3 WLR 215; Ashdown v Telegraph Group [2001] 4 All ER 666; Brevan
Howard Asset Management LLP v Reuters Ltd [2017] EWCA Civ 950.

5.5.1 Disclosure in the public interest

Apart from pleading consent by the claimant or else arguing that the information
is already in the public domain, the principal defence to an action for breach of
confidence is that disclosure is ‘in the public interest’. In the past, disclosure in
the public interest was sometimes treated as going to the issue of whether the
information is protectable. The better view is that public interest is a defence to
be raised in order to justify what would otherwise be the wrongful use of secret
information which has been imparted in confidence. This is because disclosure
in the public interest is also a defence to copyright infringement (see Chapter 8).
There have been several Court of Appeal decisions (notably Hyde Park v Yelland and
Ashdown v Telegraph Group, listed above) involving both breach of confidence and
copyright infringement, where disclosure in the public interest was pleaded as the
defence common to both causes of action, and dealt with as such by the court. Since
the coming into force of the Human Rights Act, courts deciding on the potential
application of the public interest defence have sought to balance the interests of
the rightholder and the defendant within a framework deriving from the European
Convention on Human Rights. The rightholder’s interests will be protected under
Article 8 (the right to a private life) or under Article 1, Protocol 1 (the right to peaceful
enjoyment of possessions) and those of the defendant will be protected under Article
10 (the right of freedom of expression).

Disclosure in the public interest (which is not the same as saying that something, for
example, gossip, is ‘of public interest’) means that the defendant is seeking to justify
page 64 University of London
what has been done by reference to the interests of society as a whole. Disclosure
is necessary in order for the rule of law to be upheld. ‘There is no confidence in the
disclosure of an iniquity’ and ‘no man can be made the confidant of a crime or fraud’
are dicta often cited as the reason for the defence (see Gartside v Outram (1856) 26
LJ Ch 113 and Initial Services Ltd v Putterill [1968] 1 QB 396, CA). However, even though
disclosure to public authorities may be justified (for example, where there has been a
breach of the law by the claimant) that may not entitle the defendant to tell the world
at large (Francome v Mirror Group Newspapers [1984] 2 All ER 408).

The public interest defence, as originally set out in Initial Services Ltd v Putterill, was
concerned with a situation where there had been criminal conduct on the part of the
claimant, or at least some other serious breach of the law (in Initial the employer’s
breach of competition law justified the employee’s conduct in revealing what had
gone on). Since that decision, the defence has been raised in many cases, not always
successfully. In Lion Laboratories v Evans [1984] 2 All ER 417, publication of the fact
that a device for testing motorists for drink-driving was unreliable was justified
because otherwise there might be wrongful convictions. In Hellewell v Chief Constable
of Derbyshire [1995] 1 WLR 804 the police’s use of prominently displayed posters
identifying a criminal suspect was held to fall within the scope of the defence.

In Brevan Howard Asset Management LLP v Reuters Ltd [2017] EWCA Civ 950, the Court
of Appeal considered the circumstances in which the public interest defence would
apply in a claim for breach of confidence. The claimant was a hedge-fund manager and
the defendant was a news agency which planned to publish information originating
from the claimant. The claimant brought proceedings for breach of confidence and
the judge at first instance awarded an injunction restraining the defendant from
disclosing the contested information. The Court of Appeal upheld Hacon J’s decision,
approving his approach to the public interest defence, which had relied on the Court
of Appeal’s earlier judgment in Associated Newspapers Ltd v HRH Prince of Wales [2006]
EWCA Civ 1776. In HRH Prince of Wales, the Court of Appeal had considered the test for
the application of the public interest defence in a claim for breach of confidence (a
pure claim for interference with privacy). It had held that, in considering this issue,
the question was not simply whether or not the information was a matter of public
interest, but whether, in the circumstances, it was in the public interest to breach the
duty of confidence. In Brevan Howard Asset Management the importance of maintaining
confidentiality in such financial information had been a significant factor for the
judge to take into account in assessing the proportionality of any order to restrain the
disclosure of the information at issue.

In the context of government information, the public interest defence operates in

a slightly different way. In A-G v Jonathan Cape Ltd [1976] QB 752, the court refused to
restrain the publication of the internal workings of the British cabinet in a politician’s
diaries as there was no public interest justification for keeping it secret. Today, when a
Crown servant pleads the public interest defence, the Crown must meet the additional
burden imposed by the ‘Spycatcher’ case, namely that the Crown must show not only
that the information was confidential but also that it was in the public interest that it
should not be published.

Activity 5.5
Consider whether the courts in recent decisions on breach of confidence have
maintained the clear distinction between ‘in the public interest’ and ‘of public
interest’.

5.6 Remedies: particular problems

Core text
¢ Bainbridge, Chapter 10 ‘The law of breach of confidence’ pp.380–84.

¢ Bently et al., Chapter 49 ‘Civil and criminal remedies’.

¢ Cornish, Chapter 8 ‘Confidential information’ paras 8–040 to 8–062.

Intellectual property 5 Breach of confidence page 65
¢ Karapapa and McDonagh, Chapter 19 ‘Breach of confidence: trade secrets and
private information’ Section 19.7.

Essential reading
¢ Chapter 4 of this module guide on final injunctions and damages.

¢ Cases: Seager v Copydex (No 2) [1969] RPC 250; Vestergaard Frandsen A/S v BestNet
Europe Ltd [2010] FSR 2.

5.6.1 Injunctions
If a claimant is successful in an action for breach of confidence, they will normally want
to restrain the defendant from making further use of the secret information. However,
in cases in the past, courts sometimes granted injunctions against a defendant who
had breached an obligation of confidence but where the information was in the public
domain at the point that the injunction was awarded (see, for example, Speed Seal v
Paddington [1986] 1 All ER 91). However, more recently, in Vestergaard Frandsen A/S v
BestNet Europe Ltd [2010] FSR 29, Arnold J reviewed earlier authorities and concluded
that Speedseal v Paddington was wrongly decided. Once information is available to the
public, an injunction will not be granted.

5.6.2 Compensation
The case law on compensation for breach of confidence is likewise contradictory.
Where the claimant seeks an award of damages, it is necessary to distinguish between
those cases where the confidential obligation arises as a result of a contract and those
cases where it does not. Where the breach of confidence is also a breach of contract,
damages are calculated under the normal contract rules, although in exceptional
cases, it is possible to award an account of profits. This last point is illustrated by AG v
Blake [2001] AC 268, where a former security services employee who had defected had
published his memoirs. His duties were held to be analogous to a fiduciary obligation,
for which an account would have been the normal remedy.

Where the parties were not in a contractual relationship, the question is whether
damages are awarded under the Senior Courts Act 1981 s.50 (i.e. in lieu of or in addition
to equitable relief) or whether they are awarded independently on a quasi-tortious
basis. If the latter is the case, a further question is how are they to be calculated?
One answer is to be found in the case of Seager v Copydex (No 2) [1969] RPC 250. Here
the Court of Appeal decided that the measure of damages was to be as in the tort
of conversion, so that the claimant was to be awarded the retail selling price of
each infringing item produced by the defendants. This suggests that damages were
awarded independently of the power in s.50. By contrast, in Dowson & Mason v Potter
[1986] 2 All ER 418 the court awarded a reasonable licence fee, that is, the sum which
the claimant would have charged for permission to use the information commercially,
a calculation identical to that used in copyright infringement actions.

5.6.3 Proprietary relief

One final question is whether a constructive trust could also be available if the
defendant has ‘used’ the information to make a personal gain. Although this idea was
accepted in the Canadian case of LAC Minerals v International Corona Ltd (1989) 61 DLR
(4th) 14, the Supreme Court of Canada in Cadbury Schweppes Inc v FBI Foods Ltd [2000]
FSR 491 has subsequently declared that a proprietary remedy is not appropriate.
Instead, the court should calculate damages on the basis of lost profits during the
notional period of one year it would have taken the defendant to ‘reverse engineer’
the claimant’s secret recipe for a drink. Similarly, the House of Lords in AG v Blake [2001]
AC 268 ruled that a constructive trust should not be imposed on the defendant’s gains.
There was no proprietary interest to protect. However, as noted above, their Lordships
did suggest that an account of profits should be available instead where the defendant
had been in a fiduciary or quasi-fiduciary position. This reasoning could therefore
apply not just to Crown servants (as in Blake) but also to high-ranking employees, such
as company directors.
page 66 University of London

Activity 5.6
List the remedies that can be obtained for breach of confidence. Do the courts
always act logically when granting an injunction to restrain the defendant? What
pecuniary remedies are available and what is the basis for their calculation?

Sample examination question

Alex is a leading politician and is well-known for her public commitment to
‘traditional family values’. She is a spokeswoman for a prominent anti-drink group.
She is often in the media and is frequently seen on TV expressing her opinion on the
topic of the day.
One Friday, Alex was at dinner at an exclusive London restaurant when she had
rather too much to drink. She insulted and then assaulted one of the waiters and
was ejected from the restaurant. On her way back from the restaurant that evening,
Alex left her handbag in the taxi. It contained, among other things, her locked diary.
The handbag was eventually returned, but the diary was missing.
Christian, a reporter from the Sunday Grime newspaper, had previously gained
access to Alex’s London apartment and had placed a hidden tape recorder there,
as he had heard rumours of her excessive drinking habits and wanted to show
that Alex’s public image did not match her private lifestyle. He also hired a
photographer to follow her around and take pictures of her.
Alex has found out that a story is due to be published in next week’s Sunday Grime.
It will be entitled ‘Alex’s Fall From Grace’ and will include:
a. an interview with Brenda, one of the other diners at the restaurant on the night of
Alex’s drunken outburst − the interview describes the events and what Alex said

b. extracts from Alex’s missing diary in which she describes intimate liaisons that
she has had with other politicians

c. a transcript of one of Christian’s tapes in which Alex can be heard in

conversation with a leading industrialist in which she agrees to accept money
for asking certain questions in Parliament

d. photographs which show Alex coming out of the front door of a notorious
London nightclub which has a reputation for encouraging drunken behaviour.

Advise Alex on whether she can prevent publication of any of the above
information.
Intellectual property 5 Breach of confidence page 67

Advice on answering the question

When looking at this question, you should be aware that it involves breach of
copyright as well as breach of confidence. You should therefore consider returning to
the question once you have completed Chapters 6, 7 and 8.

A good answer would do the following.

u Begin by identifying the issues, namely breach of confidence and copyright.

u With regard to breach of confidence, set out clearly the traditional breach of
confidence test in Coco v Clark and the different test for misuse of personal
information established by the House of Lords in Campbell v MGN.

u Identify what information might be regarded as confidential so that Alex had a

reasonable expectation of privacy. Here there was the conduct in the restaurant
(which would have included what Alex said to the waiter), the words written in
her diary, the spoken words recorded and the photographs. Are photographs, even
if taken in a public place, the subject of special treatment? (See the comments
of Baroness Hale in Campbell v MGN and those of the Court of Appeal in Douglas v
Hello! Ltd and Murray v Express Newspapers.)

u Consider whether there was a reasonable expectation of privacy (which engages

Article 8 ECHR) in which case it was necessary to balance the demands of Article 8
with those of Article 10 (freedom of expression). This needs to be done in respect
of each of the items of information identified above. So, for example, in relation to
the incident in the restaurant, was this a public or private place? Would Alex have
expected that other diners (like Brenda) would keep secret what they saw?

u Consider the public interest defence. What matters is not whether the information
is ‘of interest’ to the public (as gossip) but whether the political position held by
the person seeking to impose confidentiality warrants that their private conduct
is open to scrutiny (see the comments of the ECtHR in Von Hannover v Germany)
or whether the person seeking to publish the information is seeking to ‘set the
record straight’ where there has been wrongdoing or hypocrisy (see HRH Prince of
Wales v Associated Newspapers). Again, this needs to be considered in relation to
each item of information. In particular, how would the defence apply in the case
of a stolen diary (see Ashdown v Telegraph Group), the surreptitious tape recording
and the photographs of Alex leaving the nightclub (compare this last point with
the facts of Campbell v MGN)? Was the fact that Alex was a prominent politician
significant under Von Hannover? Did it matter that Christian was trying to reveal her
hypocrisy? Had Christian gone too far in the methods used to do so?
page 68 University of London

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.

Tick a box for each topic. Ready to Need to Need to

move on revise first study again

I can explain, within the context of intellectual

property, the significance of the action for breach of
confidence in protecting ideas and information.   

I can explain, with relevant authority, the criteria

for the action of breach of confidence, the defences
which could be raised and the remedies available to   
the successful claimant.
I can discuss those areas of the law which are unclear
or contradictory.   

I understand how the action for breach of

confidence has been used in combination with the
Human Rights Act 1998 to protect individuals from   
media intrusion.

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

5.1 Types of information: personal, commercial and state  

5.2 The role of breach of confidence in intellectual property law  

5.3 The historical development of breach of confidence and  

the basis for its protection

5.4 Conditions for protection  

5.5 Defences  

5.6 Remedies: particular problems  

6 Introduction to copyright

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 70

6.1 The history of copyright protection in the UK . . . . . . . . . . . . . . . 71

6.2 Copyright compared with other intellectual property rights . . . . . . . 72

6.3 The justification for copyright protection . . . . . . . . . . . . . . . . . 74

6.4 The nature of copyright and the idea/expression divide . . . . . . . . . 74

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . 77

page 70 University of London

Introduction
The purpose of this chapter is to set the scene for the more detailed study of copyright
law which follows in Chapters 7 and 8. It will explain the origins of the copyright
system, as well as the background to the current legislation, and indicate how UK
copyright law has been influenced by international conventions and EU directives.

As mentioned in Chapter 2, copyright is different from other categories of intellectual

property rights in that it does not depend on registration. We shall make further
comparisons between copyright and other intellectual property rights. You may feel
that it is a little early to undertake an activity of this kind, but from the work you have
done in Chapter 2 you should have already acquired a ‘feel’ for the differences which
exist between the various rights, and you can always revisit this chapter when you
having finished working through the module guide. The chapter will also examine
the justifications which have been offered for the existence of copyright protection,
another matter which should be familiar to you from your work on Chapter 2.

Last, but by no means least, we shall look at the nature of copyright protection.
Copyright exists to protect works. The fundamental principle of copyright law is that
what it protects is not ideas, but the form in which they are expressed. We shall look
at some cases which explore this fundamental principle. It is this that you should
concentrate on as it underpins much of the discussion in Chapters 7 and 8.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u understand how copyright law has often developed in response to technological
change
u describe the external influences which have shaped UK copyright law
u compare the key features of copyright law with those of other intellectual
property rights
u evaluate the principal justifications for the existence of copyright protection
u discuss the difference between an idea and its expression.

Preliminary reading
¢ Chapters 2 and 3 of this module guide.
Intellectual property 6 Introduction to copyright page 71

6.1 The history of copyright protection in the UK

Core text
¢ Bainbridge, Chapter 2 ‘Background and basic principles’ pp.33−36.

¢ Bently et al., Chapter 2 ‘Introduction to copyright’ Section 1 ‘Introduction’,

Section 2 ‘“Copyright” and droit d’auteur’, Section 3 ‘Author’s rights and
neighbouring rights’, Section 4 ‘History’, Section 6 ‘International influences’,
Section 7 ‘European influences’, Section 8 ‘The future’.

¢ Cornish, Chapter 10 ‘Range and aims of copyright’ paras 10–001 to 10–041.

¢ Karapapa and McDonagh, Chapter 1 ‘Introduction to copyright’ Section 1.2.

Most of the recommended textbooks contain an account of the development

of copyright law in the UK. You should ensure that you read at least one of these
accounts: the one by Cornish is the most detailed.

6.1.1 The impact of the printing press

In summary, the foundations of copyright law can be traced back to the advent of the
printing press in the 15th century. Under the Tudor monarchs, printing was perceived
as a means of disseminating seditious material. Consequently, every book had to
be licensed by the Stationers’ Company. The right of the Company (a craft guild) to
control printing survived the restoration of the monarchy in 1660, but increasing
losses suffered by publishers through the piracy of books created pressures for reform.
As a result, the first Copyright Act 1709 (the Statute of Anne) was passed, conferring
on publishers the ‘sole right and liberty of printing books’ for a maximum period of 14
years. If the author was still alive at the end of this term, then the right was ‘returned’
to them for a further 14 years.

An early concern was the relationship between the author’s ‘common law copyright’
(which was perpetual) and statutory copyright. It was held in Donaldson v Beckett
(1774) 4 Burr 2408 that once a work was published, statutory copyright extinguished
common law copyright. However, common law copyright continued to exist in
unpublished works and was only abolished by the Copyright Act 1911. Under current
legislation, both published and unpublished works receive the same treatment.

Another issue which confronted the courts soon after the enactment of the 1709
Act (and which still arises today) was the constant need to interpret legislation to
encompass new forms of creativity. In Bach v Longman (1777) 2 Cowp 623 the word
‘books’ in the Statute of Anne was interpreted so as to include sheet music. A similar
debate (now of historical interest only) occurred in the 1980s as to whether computer
software should be accorded copyright protection by treating it as a ‘literary work’.

After the Statute of Anne, further legislation was passed on a piecemeal basis,
extending either the categories of work protected, the period of protection or the
type of restricted act. You need not worry too much about the detail of the 19th
century reforms given in Cornish, just be aware of the fact that copyright law was
essentially reactive to technological change and to the constant demands for longer
and better protection for authors, artists and composers.

6.1.2 Twentieth-century developments

Twentieth-century legislation was characterised by the UK’s obligation to adhere to a
number of international conventions, in particular the Berne Convention 1886. If you
are unsure about the scope of the Berne Convention, please refer to your notes for
Chapter 3. Adherence to the Berne Convention was a catalyst for the Copyright Act
1911 which was (as Cornish explains) the first British legislation to bring the various
copyrights within a single text. The 1911 Act was reviewed by the Gregory Committee
of 1951, whose report lead to the Copyright Act 1956. This legislation again had to take
account of technological change, in particular the advent of films and television. The
1956 Act was amended on several occasions, in particular in relation to the law of
designs and in relation to computer software.
page 72 University of London
By the 1980s, there was a need to protect new forms of creativity, while at the same
time offering the copyright owner more effective redress, as technology such as
photocopying machines and video recorders made copying easy. The result was the
Copyright Designs and Patents Act 1988 (CDPA). Although it introduced sweeping
changes, you should note the wording of s.172 regarding the interpretation of the Act
in relation to the preceding law. Read s.172 of the CDPA now. (You should ensure that
your statute book contains the most recent version of the CDPA.)

Since its enactment, the CDPA has been amended extensively to take account of
a number of EU directives. Some of these were outlined in Chapter 3. One revision
(contained in the Copyright and Related Rights Regulations 2003) implemented
Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on
the harmonisation of aspects of copyright and related rights in the information society
(the Information Society Directive, [2001] OJ L 167/10). This Directive in turn was agreed
by the EU in order to give effect to the WIPO Copyright Treaty 1996 and the WIPO
Performances and Phonograms Treaty 1996 (again, these were discussed in Chapter 3).
Another addition has been the inclusion of moral rights for performers. Performers’
protection is not on your syllabus.

For discussion of the impact of Brexit on intellectual property law, including copyright
law, see Section 3.3. Note, in particular, that the rules deriving from EU Directives in
the area of copyright law that were binding in the UK at the point at which the Brexit
implementation period came to an end continue to bind courts in the UK post-Brexit
(because they are ‘retained EU law’, see Section 3.3.3).

Activities 6.1 and 6.2

6.1 Read the account of the development of UK copyright law in Cornish. Write a
concise summary of the various phases of this development.

No feedback provided.

6.2 ‘The history of copyright reveals that the law has developed in response to
changes in technology. Such a pragmatic approach may have worked well a
century ago, but the pace of change today is such that there is a real risk that the
law will never catch up.’

Discuss.

6.2 Copyright compared with other intellectual property rights

Essential reading
¢ Chapter 2 of this module guide.

Copyright exists to prevent various forms of use of protected work, the categories
of which are to be found in s.1 of the CDPA. As already explained in Chapter 2,
copyright differs from other forms of intellectual property in that there is no system
of registration and protection arises as soon as a work is created. The fundamental
criterion for copyright protection is that the work must be ‘original’. It should not
be assumed that this involves any great degree of innovation. UK copyright law (in
contrast to the law of many other countries) has historically treated copyright as an
economic right rather than as an aspect of the author’s personality. As a result, a wide
range of everyday items attracts United Kingdom copyright protection, although such
items may not be treated as copyright works in other jurisdictions. We shall examine
what does and does not count as a copyright work for the purposes of UK law in
Chapter 7.

Further, and again in contrast to patents and registered designs, independent creation
is always a defence to copyright infringement. Copyright is therefore not an absolute
monopoly. It exists to prevent copying, and the onus is on the claimant to establish
that the defendant copied the claimant’s work. By contrast, under UK law, copyright
infringement can be committed in the home, unlike trade mark, patent and design
infringement which must be committed in the course of trade. The scope of copyright
Intellectual property 6 Introduction to copyright page 73
infringement is potentially very wide as there can be liability for indirect copying, for
subconscious copying and for authorising others to commit infringement. However,
there is no liability for the use of a copyright article. A purchaser of a legitimate copy
of a work can do whatever they like with it as long as a ‘restricted act’ (that is, an act of
infringement, usually, but not confined to, copying) is not committed.

There is, however, one area where the distinction between use and copying has
become blurred, namely, computer software. The use of software entails, of necessity,
making a copy of it, even a temporary one while it is being run on a computer.
The purchaser of a legitimate copy of software will have an implied licence to use
it, whereas someone who acquires a pirated copy will be committing an act of
infringement each time they use it.

One thing which copyright has in common with the law of trade marks is that
commercial infringement may give rise to criminal liability. The provisions of s.107 of the
CDPA are not limited to acts of deliberate counterfeiting, but apply to anyone who makes
copies of another’s work by way of trade: Thames & Hudson v Design & Artists Copyright
Society [1995] FSR 153. Because of the significance to the world economy of the activities
of counterfeiters, UK law confers extensive powers on public bodies to deal with
counterfeit goods. Thus, local authority trading standards departments and HM Revenue
& Customs both play a major part in enforcing anti-counterfeiting laws.

Unlike patents, trade marks and designs, which are unitary in nature, copyright gives
rise to a ‘bundle’ of rights, each one of which can be dealt with separately. Consider the
following example.

J.K. Rowling, as author of the ‘Harry Potter’ books, has the right to control the
reproduction of the books ‘in any material form’ (s.17 of the CDPA) as well as the right
to control the first issuing of each copy of each book (s.18), the public performance of
the books (s.19), their communication to the public whether by broadcast or online
(s.20) and their adaptation, the latter word including turning the books into plays,
their translation and converting them into a series of pictures (s.21). She therefore
has (to name but a few) hardback rights, paperback rights, serialisation rights, talking
book rights, dramatisation rights, film rights, radio and television broadcast rights
and the right to control the translation of the books into any language. These rights
exist automatically in any country which belongs either to the Berne Convention or to
the WTO Agreement (over 150 countries worldwide). Each one of these rights can be
assigned or licensed to third parties, either collectively or individually.

The fragmentary nature of copyright, coupled with the lack of registration, automatic
worldwide protection (because of the Berne and WTO Conventions) and lengthy
duration can make it very difficult in practice to establish who owns which right in
which country. However, for the purposes of the examination, you can assume that
you are dealing only with the rights which an author has under UK law.

As regards the duration of copyright, the basic rule throughout the EU is that copyright
lasts for the lifetime of the author plus 70 years (in the case of works requiring
‘originality’ to be protected – see Chapter 7). This is considerably longer than the term
of protection accorded to patents and designs, though as we shall see, trade marks
are potentially capable of indefinite existence. When copyright protection expires,
the work passes into the ‘public domain’. However, as you will learn in a subsequent
chapter, amendments to an existing copyright work may themselves be protected
by copyright. As a consequence, the revision of a popular work (such as the image of
Mickey Mouse or the emblem of a famous football team, both of which are artistic
works under s.4 of the CDPA) may lead to a new term of copyright protection, even
after the original term has come to an end.

The current, relatively straightforward rules on duration apply only to works created
after the effective date of the CDPA (1 August 1989). With regard to works created
before this date, copyright will continue to subsist in an ‘existing’ work after the
CDPA’s commencement only if it subsisted therein before commencement. This
means that in practice it will be necessary to refer to the old law (that is, the 1956
Act, the 1911 Act) to see whether the work qualified for protection when it was made,
page 74 University of London
whether the author of the work qualified for protection and what was the original
term of protection for the work. This is because of the general principle that whether
a work attracts UK copyright depends on the law in force when the work was made.
You do not have to worry about the detailed rules for works created before the
operative date of the CDPA. This would entail detailed research into the transitional
provisions of the CDPA and its predecessors. When answering examination questions,
you may therefore assume that the relevant events occurred after 1 August 1989.

In addition to copyright, the CDPA deals with two other related rights, namely, moral
rights and rights in performances. Rights in performances do not form part of your
syllabus and may be ignored. Moral rights will be considered in Chapter 8.

Activity 6.3
Give a concise summary of the principal features of copyright as a category of
intellectual property right.

6.3 The justification for copyright protection

Core text
¢ Bently et al., Chapter 2 ‘Introduction to copyright’ Section 5 ‘Justifications’.

¢ Cornish, Chapter 10 ‘Range and aims of copyright‘ paras 10–042 to 10–055.

¢ Karapapa and McDonagh, Chapter 1 ‘Introduction to copyright’ Section 1.3.

Essential reading
¢ Chapter 2 of this module guide.

¢ Laddie, H. ‘Copyright: over strength, over regulated, over rated’ [1996] EIPR 253
(available in Westlaw via the Online Library).

As discussed in Chapter 2, various justifications can be advanced for the existence of

copyright protection. These include the natural law theory (of particular relevance in
civil law countries, which view copyright as an extension of the creator’s personality),
utilitarianism and the reward theory. If you are unsure of these arguments, then you
should revisit your notes for Chapter 2. You should also remember that attitudes to
copyright reflect the cultural values of a particular society.

Each of the justifications can be tested against the detail of copyright law, and in
many instances may be open to question. For example, if copyright law is meant to
reward creativity, why should it last 70 years after the death of the author? If copyright
law is supposed to benefit society by providing an incentive to create, why does UK
copyright law stress the economic value of copyright and accord protection to such
mundane items as examination papers, football pools coupons and professional
directories? Further, if the boundaries of copyright are being constantly expanded,
where is the evidence that such expansion is justified?

Activity 6.4
Read the article by Laddie listed in the Essential reading. Then summarise the
following points.
u The justifications which he puts forward for the existence of copyright law.
u His concerns about the expansion of copyright.

6.4 The nature of copyright and the idea/expression divide

Core text
¢ Bainbridge, Chapter 3 ‘Subsistence of copyright’ pp.52–53.

¢ Bently et al., Chapter 8 ‘Infringement’ Section 2.4.2 ‘Non-protection of ideas’,

Section 2.4.3 ‘European copyright law and non-literal copying’.
Intellectual property 6 Introduction to copyright page 75
¢ Cornish, Chapter 12 ‘Infringement of copyright and moral rights’ paras 12–006
and 12–007.

¢ Karapapa and McDonagh, Chapter 1 ‘Introduction to copyright’ Section 1.5.

Essential reading
¢ Spence, M. and T. Endicott ‘Vagueness in the scope of copyright’ (2005) 121 LQR
657 (available in Westlaw via the Online Library).

¢ Cases: Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416, in
particular the judgment of Lord Hoffmann; Norowzian v Arks Ltd [1998] FSR 394
and [2000] FSR 363; Green v Broadcasting Corp of New Zealand [1989] 2 All ER 1056;
Elanco v Mandops [1980] RPC 213; Baigent & Lee v Random House Group Ltd [2007]
FSR 24.

It has long been a principle of copyright law that there is no protection of ideas
per se unless they are embodied in permanent form: Donoghue v Allied Newspapers
[1938] Ch 106 at 109. Copyright exists to protect works not ideas. The idea/expression
dichotomy is found in international conventions (note the use of the word ‘expression’
in Article 2 of the Berne Convention and consider also Article 9.2 of the TRIPS
Agreement). Under the Software Directive, protection is explicitly excluded for the
‘ideas’ and functionality underlying a program (see Software Directive, Article 1(2);
C-406/10 SAS Institute Ltd v World Programming Ltd [2012] 3 CMLR 4).

An example of the difference between an idea and a work can be found in Green v
Broadcasting Corp of New Zealand [1989] 2 All ER 1056, where the claimant tried to stop
the defendant copying the format for the television programme ‘Opportunity Knocks’.
The Privy Council accepted the defendant’s argument that all they had taken was the
idea. There was no ‘work’, such as a dramatic work, to be copied, and they had not
copied any particular broadcast, as they had created their own television programmes.
Another example is the decision in Norowzian v Arks Ltd (No 2) [1999] FSR 79, [2000] FSR
363 (CA). The claimant, a film director, had developed a film editing technique called
‘jump cutting’, the effect of which was to make the performer appear to make a series
of jerky movements. The defendant employed the same technique when making a
television advertisement for a well-known drink. The claimant tried to argue that they
had copied his film: this argument failed, as the defendants had not made a copy.
Instead, they had created a new film, using new actors, cameramen, etc. In the second
instalment of the litigation, the claimant argued that the defendant had copied the
original screenplay (a dramatic work) embodied in the film. The Court of Appeal,
though clearly sympathetic to the claimant, dismissed the action, primarily because
the defendant had not taken a substantial part in the work’s expression. (Why do you
think that the Court of Appeal was ‘clearly sympathetic to the claimant’?) Analysed
closely, the decision is really concerned with the taking of an idea (how to edit film to
produce apparently impossible movements by the actor) rather than the taking of a
work falling within the statutory list in s.1 of the CDPA. You should remember the very
precise facts of this case when we return to consider copying as an act of copyright
infringement in Chapter 8.

Equally, it is possible to find examples in the cases of where the courts appear to be
conferring protection on ideas themselves. The facts of Elanco v Mandops [1980] RPC 213
are a good example. Here, on the expiry of the claimant’s patent for a weedkiller, the
defendant was able to commence manufacture of the product. The defendant copied
the claimant’s safety leaflet which had to accompany the product. Having accepted
that it had infringed copyright by so doing, the defendant rewrote the leaflet,
although it contained the same information. The Court of Appeal held that there was
still copyright infringement.

A good example of the difference between taking the ideas in another’s work and
taking the expression can be found in Baigent & Lee v Random House Group Ltd [2007] FSR
579. The claimants alleged that the copyright in their book The Holy Blood and the Holy
Grail had been infringed by the defendant having published The Da Vinci Code. It was
held that even if the defendant’s book had taken the general themes alleged to exist
in the claimants’ work, these were too general or of too low a level of abstraction to
page 76 University of London
be capable of copyright protection. The Court of Appeal subsequently confirmed this.
Lloyd LJ remarked that although there is a crucial distinction between an idea and its
expression, no clear principle ‘is or could be laid down… to tell whether what is sought
to be protected is on the ideas side of the dividing line, or on the expression side’.

In C-406/10 SAS Institute Ltd v World Programming Ltd [2012] 3 CMLR 4, the CJEU
confirmed that the copying of the functionality of another computer program was
not an infringing reproduction of that program. On the return of that case to the
courts of England and Wales, the Court of Appeal confirmed that the exclusion of
functionality also applied to works other than software (even though there was no
explicit provision to this effect in the Information Society Directive). See SAS Institute
Ltd v World Programming Ltd [2013] EWCA Civ 1482 [76].

In C-833/18 SI and Brompton Bicycles v Chedech/Get2Get, the Court of Justice drew an

explicit link between the idea/expression dichotomy and the concept of ‘originality’
(see Section 7.2) in holding that there is no originality:

where the realisation of a subject matter has been dictated by technical considerations,
rules or other constraints which have left no room for creative freedom or room so limited
that the idea and its expression become indissociable [31].

Sample examination question

‘The imprecision of any line between idea and expression causes our leading
authors to castigate the whole notion. Why then does the distinction survive
disparagement?’ (Cornish)
Discuss.

Advice on answering the question

A good answer will:

u explain the nature of copyright (protection against copying for works which are
original)

u deal briefly with the justifications for copyright

u consider how the law must strike a balance between the interests of the copyright
owner and the interests of society

u consider how the idea/expression dichotomy is an aspect of this, so that ideas may
be freely copied but the investment of the creator in the expression is protected

u give examples of how it may be difficult in practice to draw a clear line between
idea and expression

u consider in some detail the leading case of Baigent & Lee v Random House and
evaluate in particular the comments of Lloyd LJ and Mummery LJ about the
difficulty of separating ideas from their expression

u come to a conclusion.
Intellectual property 6 Introduction to copyright page 77

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.

Tick a box for each topic. Ready to Need to Need to

move on revise first study again

I understand how copyright law has often developed

in response to technological change.   

I can describe the external influences which have

shaped United Kingdom copyright law.   

I can compare the key features of copyright law with

those of other intellectual property rights.   

I can evaluate the principal justifications for the

existence of copyright protection.   

I can discuss the difference between an idea and its

expression.   

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

6.1 The history of copyright protection in the UK  

6.2 Copyright compared with other intellectual  

property rights

6.3 The justification for copyright protection  

6.4 The nature of copyright and the idea/expression divide  

page 78 University of London

Notes
7 Subsistence of copyright

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 80

7.1 Categories of copyright work . . . . . . . . . . . . . . . . . . . . . . . 81

7.2 The requirement of originality . . . . . . . . . . . . . . . . . . . . . . 88

7.3 The requirement of permanent form . . . . . . . . . . . . . . . . . . . 93

7.4 Qualification for protection . . . . . . . . . . . . . . . . . . . . . . . . 94

7.5 Authorship and ownership . . . . . . . . . . . . . . . . . . . . . . . . 95

7.6 Duration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99

page 80 University of London

Introduction
The purpose of this chapter is to set out what qualifies as a copyright work for the
purposes of UK law. The categories which receive protection are listed in s.1 of the
Copyright, Designs and Patents Act 1988 (CDPA) but, as will become apparent, the
statute gives little guidance as to the precise meaning of those categories. It will
therefore be necessary to resort to case law for a fuller explanation.

Once the types of work have been identified, the chapter will proceed to examine
the conditions which must be satisfied in order for copyright protection to arise.
In essence, these are that the work must be original, that it must be recorded in
permanent form and that the author of the work must be a qualifying person. It is
important that you learn to appreciate the difference between the author of the work
and the person who owns the copyright in it. These two may not be the same person,
and different consequences attach to each status.

Last, but in outline only, the chapter will deal with the rules on duration. As explained
in Chapter 6, the rules on duration of copyright can be complex in practice. However,
you should assume for the purposes of the examination that all the relevant works
have been created since the coming into force of the CDPA.

You will discover that the principles of copyright law are straightforward. However,
the UK copyright system is beset by a mass of detail, such that it is easy to lose sight
of the basic rules. You should therefore concentrate on understanding the types of
work which attract copyright protection and the rules which must be satisfied for
protection to arise.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u summarise the principal categories of copyright works
u explain the criterion of originality in copyright law and the need for permanent
form
u explain the rules which determine when a work qualifies for protection in UK law
u explain and apply the concepts of authorship and ownership
u list all the matters which have to be established in order for UK copyright to
subsist.
Intellectual property 7 Subsistence of copyright page 81

7.1 Categories of copyright work

Core text
¢ Bainbridge, Chapter 3 ‘Subsistence of copyright’.

¢ Bently et al., Chapter 3 ‘Subject matter’.

¢ Cornish, Chapter 11 ‘Subsistence of copyright’ paras 11–001 to 11–031.

¢ Karapapa and McDonagh, Chapter 2 ‘Subsistence of copyright’ Sections 2.2–2.6.

Essential reading
¢ Copyright, Designs and Patents Act 1988, ss.1–8.

¢ Cases: University of London Press v University Tutorial Press [1916] 2 Ch 601;

Ladbroke v William Hill [1964] 1 WLR 273 (HL); Sawkins v Hyperion Records [2005]
1 WLR 3281; Antiquesportfolio.com Ltd v Rodney Fitch & Co Ltd [2001] FSR 23;
Lucasfilm Ltd v Ainsworth [2009] FSR 103 Mann J, [2009] EWCA (Civ) 1328 (CA);
[2011] 3 WLR 487 (Sup Ct) [28]–[48]; (C-310/17) Levola Hengelo BV v Smilde Foods BV.

Further reading
¢ Lupton, K. ‘Photographs and the concept of originality in copyright law’ [1988]
EIPR 257 (available in Westlaw via the Online Library).

¢ Garnett, K. and A. Abbott ‘Who is the “author” of a photograph’ [1998] EIPR 204
(available in Westlaw via the Online Library).

¢ Rosati, E. ‘Closed subject-matter systems are no longer compatible with EU

copyright’ [2014] GRUR Int 1112.

Section 1(1) of the CDPA (as amended by the Copyright and Related Rights Regulations
2003) declares that ‘Copyright is a property right which subsists in accordance with this
Part in the following descriptions of work’ and then proceeds to list the categories of
copyright work that are recognised under UK law. Read the section now.

We shall look at each category of copyright work individually in the following sections.

Under the CDPA, it is necessary for a work to fit one of the listed categories in s.1
CDPA if it is to be protected under UK copyright law. However, at the end of the Brexit
implementation period (see Section 3.3.3), it remained uncertain whether such a
‘closed-list’ system was compatible with EU law. It has been suggested that, under EU
copyright law, any work which constitutes its ‘author’s own creative expression’ merits
protection. Further doubt was cast on the compatibility of such a ‘closed-list’ system
with EU copyright law by the recent Judgments of the Court of Justice (see C-393/09
BSA v Ministry of Culture of the Czech Republic, 22 December 2010; and C-355/12 Nintendo
v PC Box). For an acknowledgement of these doubts, see the judgment of Arnold J in
SAS Institute Inc v World Programming Ltd [2013] EWHC 69 (Ch) [27]–[29]. For further
discussion, see Bently et al., Chapter 3, Section 1.

The judgment of the Court of Justice in C-310/17 Levola Hengelo v Smilde Foods BV, a
reference from the Dutch courts, provides interesting further food for thought on
this ‘open list’ versus ‘closed list’ debate. The case arose from a dispute between the
manufacturer of a soft cheese and a competitor, which produced a similar product.
The cheese manufacturer brought proceedings, arguing that the taste of its cheese
was protected by copyright and that the competitor had infringed this intellectual
property interest in producing its own soft cheese. The national court was uncertain
whether the taste of a cheese could be protected under European copyright law and
referred the issue to the Court of Justice. This reference gave the Court its first real
opportunity to reflect fully on the nature of the ‘work’ protected by copyright.

The Court stated that two conditions must be satisfied for a work to be protected
under the Information Society Directive, the most important directive in European
copyright law. First, it must be ‘original’ (or, in the words of the Directive, it must be
its author’s ‘own intellectual creation’). Second, and most relevant in this context,
page 82 University of London
it must be an expression of that intellectual creation. According to the Court, this
latter requirement meant that ‘the subject matter protected by copyright must be
expressed in a manner which is identifiable with sufficient precision and objectivity,
even though that expression is not necessarily in permanent form’ [40]. It held that
the taste of a food product will necessarily fail this test because taste sensations are
variable and subjective, depending upon factors particular to the person tasting the
product, such as age, food preferences and consumption habits, as well as on the
environment or context in which the food is consumed [42].

This conclusion is not surprising, and presumably means also that perfumes cannot be
protected by copyright in the EU (this has previously been an issue in some European
jurisdictions). Any alternative outcome would have been startling indeed.

Prior to the judgment, there was some speculation that the Court would provide
a substantive definition of the concept of ‘work’ in EU copyright law – and that the
‘closed list’ system operating under the CDPA would not be compatible with that
definition. Indeed, in his opinion in Levola, Advocate General Wathelet equated
the concept of ‘work’ in EU copyright law with that of ‘literary and artistic’ work in
international copyright law (the Berne Convention) [AGO48-54]. The Court itself did
not provide a comprehensive definition of the outer limits of the concept of ‘work’.
However, it did point out that the notion of ‘work’ was an ‘autonomous concept’ of
EU law and, in this context, strong doubts must persist as to the compatibility of the
UK’s (relatively unusual) ‘closed-list’ system with EU copyright law at the point that the
implementation period came to an end.

These doubts were acknowledged (before the end of the transition period) by Judge
Hacon in Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC)
[55]–[64]. However, he did not have to resolve the issue as he concluded that the
clothing design satisfied both the definition of ‘work of artistic craftsmanship’ under
the 1988 Act and the definition of ‘work’ under the EU acquis.

7.1.1 Literary works

The definition of a literary work is in s.3 of the CDPA. Read the whole of s.3 carefully now.

We shall look at subsections (2) and (3) in due course. The following comments can be
made about s.3(1) of the CDPA.

u Literary, dramatic and musical works are treated as three distinct categories
because of the phrase ‘other than’ which appears in the definition of literary work.

u A literary work can be written, spoken or sung (‘writing’ is defined by s.178 as

including any form of notation or code, whether by hand or otherwise and
regardless of the method by which, or medium in or on which, it is recorded, and
‘written’ is to be construed accordingly). How copyright can be accorded to the
spoken word will be dealt with under the requirement of originality, below.

u Various items are said to be included within the term ‘literary work’ (tables or
compilations, computer programs and their preparatory materials, and databases).

The CDPA does not provide any further guidance as to what is a literary work. Such
guidance is to be found in case law. The leading decision is that in University of London
Press v University Tutorial Press [1916] 2 Ch 601. Peterson J explained that the word
‘literary’ indicated something which was written or printed on paper, and that the style
or quality did not have to be high. As a result, very mundane items are protected by
copyright, such as football pools coupons (Ladbroke v William Hill [1964] 1 WLR 273), lists
of television programmes (Independent Television Publications v Time Out [1984] FSR 64),
examination papers (University of London Press case) and telegraphic code (Anderson &
Co v Lieber Code Co [1917] 2 KB 469). The textbooks all contain further examples.

Even though a literary work is defined very broadly, there is a threshold below which
the ‘work’ will not generally attract protection. Consequently, it has been held that
there is no copyright in the title of a song (Francis Day v Twentieth Century Fox [1940]
AC 112), nor in an invented word trade mark (Exxon Corporation v Exxon Insurance
Intellectual property 7 Subsistence of copyright page 83
Consultants [1981] 3 All ER 241), nor in everyday factual information, such as that given
in the front of a diary (Cramp v Smythson [1944] AC 329).

The Court of Appeal has held that headlines and extracts from articles on newspaper
websites are capable of satisfying the definition of ‘literary work’ (see Newspaper Licensing
Agency v Meltwater Holding BV [2011] EWCA Civ 890).

Activities 7.1 and 7.2

7.1 Read the judgment of Peterson J in University of London Press v University Tutorial
Press. Then write a concise summary of what he says about the meaning of the
phrase ‘literary work’.

7.2 Read the decision of the Court of Appeal in Exxon Corporation v Exxon Insurance
Consultants. What does the case tell you about the threshold for copyright
protection?

No feedback provided to either activity.

7.1.2 Dramatic work

Section 3(1) of the CDPA declares that a dramatic work includes a work of dance or mime.
Reference to case law tells us that a dramatic work requires some sort of presentation
or delivery (Fuller v Blackpool Winter Gardens [1895] 2 QB 429) and that it is a work of
action capable of being performed before an audience (Norowzian v Arks Ltd [1999] FSR
79 (Rattee J); [2000] FSR 363 (CA)). Presumably the performance must be by a human
being, as a video game has been held not to be a dramatic work: Nova Productions Ltd v
Mazooma Games Ltd [2007] RPC 589. In Green v Broadcasting Corp of New Zealand [1989]
RPC 700 the format for a TV game show was held not to be a dramatic work, the court
assuming that it was not sufficiently detailed. The application of Green on this issue was
considered in Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd [2017] EWHC
2600 (Ch). In Banner, Snowden J held that a ‘format’ for a television programme might be
protected if it had certain characteristics. As a minimum,

(i) it would have a number of clearly identified features which distinguish the programme
in question from others of a similar type; and (ii) those distinguishing features would have
to be connected with each other in a coherent framework which could be repeatedly
applied so as to enable the programme to be reproduced in recognisable form. ([44])

It was suggested that the claim in Green did not have these characteristics and was
unsuccessful as a result.

7.1.3 Musical work

Unhelpfully, s.3(1) defines a musical work as ‘a work consisting of music, exclusive of
any words or action intended to be sung, spoken, or performed with the music’. This
does at least make clear that under UK law (though not necessarily the laws of other
countries) there are separate copyrights in the words and music of a song (which of
course may be owned by different people). The CDPA definition can be contrasted with
that found in the Copyright Act 1911, which defined a musical work as ‘any combination
of melody and harmony reduced to writing’.

Again, for musical works, the threshold for protection is very low. A four-chord
sequence used as the ‘ident’ for a television channel was held to be a copyright work
in Lawson v Dundas 12 June 1985, unreported. In Bamgboye v Reed [2004] EMLR 61,
the addition of a drum accompaniment to a piece of music was sufficient to confer
protection on the claimant. By contrast, in Coffey v Warner/Chappell Music Ltd [2005] FSR
747 the singer’s vocal expression, pitch contour and syncopation were held not capable
of being regarded as a copyright work because they were not sufficiently separable
from the remainder of the work to constitute a musical work in their own right. Equally,
because of s.3(2) and (3) (discussed below), music does not have to be formally written
down at the outset in order to qualify as a work: Hadley v Kemp [1999] EMLR 589.

There is a detailed discussion of musical copyright by Mummery LJ in Sawkins v

Hyperion Records [2005] 1 WLR 3281.
page 84 University of London

Activity 7.3
Read the judgment of Mummery LJ in Sawkins v Hyperion Records and then
compare it with those parts of the judgment of Park J in Hadley v Kemp dealing with
copyright. Write a concise summary of the differences between the two as to the
role of a performer in creating a musical work.
No feedback provided.

7.1.4 Artistic work

What amounts to an artistic work under UK law is set out in s.4 of the CDPA. Read the
whole section carefully now. The following observations can be made.

u The section covers both two-dimensional and three-dimensional items.

u Those items mentioned in paragraph (a) are stated to be irrespective of artistic

quality.

u Some of the key words in s.4 are defined further in the section, others are not.

u ‘Graphic work’ is widely defined. However, the commercial importance of drawings,

etc. as copyright works is considerably reduced because of s.51 of the CDPA, which
restricts the copyright owner’s ability to sue for infringement where another makes
articles based on the drawing. This is considered further in Chapter 9 on designs.

Case law helps us to understand what some of the words and phrases used in s.4
mean. A painting could be defined as a ‘representation or depiction by colours on
a surface’, yet the make-up of the pop star ‘Adam Ant’ was considered not to be a
painting in Merchandising Corporation of America v Harpbond [1983] FSR 32 because it
was not permanent.

In Lucasfilm Ltd v Ainsworth [2011] UKSC 39, the Supreme Court provided important
guidance on the meaning of ‘sculpture’ in this context. Confirming the judgment of
Mann J in the Chancery Division, it held that the intended purpose for which the object
was made should, among a number of other issues, be taken into account. You should
read the relevant sections of the judgment (see the Essential reading).

The word ‘drawing’ has received a wide interpretation. ‘Drawings’ include a logo for
a mobile phone network (Hutchinson Personal Communications v Hook Advertising
[1995] FSR 365), architect’s plans (Jones v London Borough of Tower Hamlets [2001] RPC
407), a cartoon character (King Features Syndicate Inc v O & M Kleeman Ltd [1941] AC 417),
drawings for machine parts (British Northrop v Texteam Blackburn [1974] RPC 57) and
fashion sketches (Bernstein v Sidney Murray [1981] RPC 303).

In Moon v Thornber [2012] EWPCC 37, the court considered that the design for a tartan
fabric (created by combining numbers of different threads for different colours which
were recorded on a ‘ticket’) amounted to both a literary work and artistic work.

The treatment of photographs as copyright works has presented the courts with some
difficulty. Technology has moved on since Graves’ Case (1869) LR 4 QB 715 where it was
assumed that the amount of effort needed to take a photograph justified copyright
protection. What you should remember is that being the author of a photograph does
not entitle someone to stop others taking their own photograph of the same scene.
Even if a photograph is copied directly (as happened in Bauman v Fussell (1953) [1978]
RPC 485, a case which is frequently misunderstood) it has to be shown that there was
substantial taking in accordance with the requirements of copyright infringement.
Antiquesportfolio.com Ltd v Rodney Fitch & Co Ltd [2001] FSR 345 contains a useful
summary of the law on photographic copyright.

Photographic copyright has been considered in C-145/10 Eva-Marie Painer v Standard

Verlags GmbH, 1 December 2011, where the CJEU applied its ruling in Infopaq. The
approach required under Painer has been considered by the Patents County Court
in Temple Island Collections Ltd v New English Teas Ltd, HHJ Birss QC, [2012] EWPCC
1, 12 January 2012. T, who make souvenirs of London, claimed to be the owner of
copyright in a photograph of a London bus crossing Westminster Bridge against the
background of the Houses of Parliament. The defendant tea company wished to use
Intellectual property 7 Subsistence of copyright page 85
a similar image on its tea caddies. T claimed that the defendant’s picture infringed
its copyright. The defendant argued that T could not use copyright law to give them
a monopoly in a black and white image of the Houses of Parliament with a red bus in
it and that ‘the key consideration was the assessment of the relevant skill and labour
which went into the expression of the copyright work and whether that skill and
labour has been reproduced in the alleged infringement’. HHJ Birss applied the CJEU’s
ruling in Infopaq that copyright may subsist in a photograph if it is the author’s own
‘intellectual creation’. He then considered the scope of photographic copyright by
reference to three aspects which could be considered ‘original’: the specialities of
angle of shot, light and shade, exposure and effects achieved with filters, developing
techniques and so on; the creation of the scene to be photographed; and that of
being in the right place at the right time. He went on to find (at [51]) that there was
originality in T’s photograph. It was the result of intellectual creation both in terms
of the photographer’s choices relating to the basic photograph itself, and the precise
motif, angle of shot, light and shade, illumination, and exposure and also in terms of
his work after the photograph was taken to manipulate the image to satisfy his own
visual aesthetic sense. The fact that it was a picture combining some iconic symbols of
London did not mean the work was not an original work in which copyright subsists.
Particular elements worthy of attention in the picture were its composition (not
just Big Ben but a substantial frontage of the Houses of Parliament and the arches of
Westminster Bridge with the bus on the central left side near a lamppost, framed by a
building behind it and with people on the bridge) and the visual contrasts (between
the bright red bus and the monochrome background, and the other between the
blank white sky and the rest of the photograph). With regard to infringement, applying
Designers Guild, the defendant had not been able to explain how it was that its picture
looked like T’s. The similarities between the two pictures were sufficient to amount to
taking a substantial part.

Activity 7.4
Read the decision in Antiquesportfolio.com Ltd v Rodney Fitch & Co Ltd and the
articles by Lupton, and Garnett and Abbott listed above. Then write a concise
summary of the issues surrounding photographic copyright. How do you think
these issues are affected by the Judgments of the CJEU outlined above?
No feedback provided.
It should not be assumed that the words ‘engraving’ and ‘etching’ refer only to
methods of producing pictures. In Wham-O Manufacturing Co v Lincoln [1985] RPC
127 it was held that the decorative grooves cut into the surface of a frisbee fell into
this category of artistic work, as did the pattern cut into rubber car mats in Hi-Tech
Autoparts Ltd v Towergate Two Ltd [2002] FSR 254.

Likewise, when you see the word ‘buildings’ in s.4 of the CDPA, you should not assume
that the word only refers to grand public buildings like cathedrals or art galleries. The
word includes everyday buildings like shops or houses (Meikle v Maufe [1941] 3 All ER
144; Hay v Sloan (1957) 12 DLR 2d 397).

The most problematic phrase in s.4 is ‘works of artistic craftsmanship’. This involves
two interrelated concepts, both of which must be satisfied: an element of artistry and
an element of craftsmanship. The leading decision is Hensher Ltd v Restawile Upholstery
(Lancs) Ltd [1976] AC 64, but in many ways this is an unsatisfactory case, for a number of
reasons.

u Counsel for the defendant conceded that the work in question was one of
craftsmanship (it had been made by hand by the claimant’s employees) so the
meaning of ‘craftsmanship’ is not discussed.

u Although there appears to be some sort of consensus that ‘artistic’ means ‘eye
appeal’ (i.e. does the article look nice), each of the Law Lords suggests a different
test for deciding this.

u Strictly speaking, all the comments are obiter as it was held that no copyright
subsisted in the claimant’s design for furniture as the prototype sofa and chairs had
been destroyed once manufacture commenced.
page 86 University of London
Subsequent cases have provided some clarification. In Merlet v Mothercare plc [1986]
RPC 115 it was held at first instance (and endorsed by the Court of Appeal) that the
issue of ‘eye appeal’ is to be determined by the intention of the author (i.e. did the
creator of the work intend it to look nice). In Vermaat v Boncrest Ltd [2001] FSR 43, it
was held (reversing older, doubtful authority) that it was not necessary for one person
to supply both the artistry and craftsmanship: it could be provided by a team. In the
instant case, even though there was the requisite element of manual skill, the articles
in question (bedspreads) lacked eye appeal. The importance of being able to claim
that what has been created is a work of artistic craftsmanship will be considered
further in Chapter 9 on designs.

For a useful discussion on what amounts to a ‘sculpture’ and a ‘work of artistic

craftsmanship’, together with a review of the earlier case law, the judgment of Mann
J in Lucasfilm Ltd v Ainsworth [2009] FSR 103 (subsequently confirmed by the Court of
Appeal, [2009] EWCA (Civ) 1328) should be studied carefully.

In Response Clothing Ltd v The Edinburgh Woollen Mill Ltd, Judge Hacon also held:

1 that it is possible for an author to make a work of artistic craftsmanship with a

machine;

2 that aesthetic appeal can be of a nature which causes a work to appeal to potential
customers; and

3 that a work is not precluded from being a work of artistic craftsmanship simply
because multiple copies are subsequently made and marketed (see [64]).

He adopted a definition of works of artistic craftsmanship borrowed from the

judgment of Tipping J in the New Zealand High Court (Bonz Group (Pty) Ltd v Cooke
[1994] 3 NZLR 216), in which (considering Hensher and other relevant authorities), he
had concluded that:

[F]or a work to be regarded as one of artistic craftsmanship it must be possible fairly to

say that the author was both a craftsman and an artist. A craftsman is a person who makes
something in a skilful way and takes justified pride in their workmanship. An artist is a
person with creative ability who produces something which has aesthetic appeal.

Activity 7.5
Read that part of the judgment of Mann J in Lucasfilm Ltd v Ainsworth where he
considers what amounts to a ‘work of artistic craftsmanship’ and a ‘sculpture’.
What are the key characteristics of each type of work?
No feedback provided.

7.1.5 Films
CDPA s.5B defines a film as a recording on any medium from which a moving image
may be produced by any means. The key elements of this are the words ‘recording’,
‘any medium’ and ‘moving image’. The section also provides for dual protection for
film soundtracks: they are to be treated as part of the film, and also treated as a sound
recording. Remember that within a film, there will be other copyright works, such as
the story, the dialogue, the music, costume design and so on.

7.1.6 Sound recordings

CDPA s.5A defines a sound recording as a recording of sounds, from which sounds may
be reproduced or a recording of the whole or part of a literary, dramatic or musical
work, from which sounds reproducing the work or part may be produced, regardless
of the medium on which the recording is made or the method by which the sounds
are reproduced or produced. The key words are ‘sounds’ (it does not have to be a
recording of music), ‘from which sounds may be reproduced’ and ‘regardless of the
medium’. Again, a sound recording may well contain other copyright works, such as
words, music, the arrangement of the music and so on.
Intellectual property 7 Subsistence of copyright page 87

7.1.7 Broadcasts
A broadcast is defined by s.6 as:

an electronic transmission of visual images, sounds or other information which is (a)

transmitted for simultaneous reception by members of the public and is capable of being
lawfully received by them, or (b) is transmitted at a time determined solely by the person
making the transmission for presentation to members of the public, but not any internet
transmission unless it is (a) a transmission taking place simultaneously on the internet
and by other means, (b) a concurrent transmission of a live event, or (c) a transmission of
recorded moving images or sounds forming part of a programme service offered by the
person responsible for making the transmission, being a service in which programmes are
transmitted at scheduled times determined by that person.

This revised definition reverses the decision in Shetland Times v Jonathan Wills [1997]
FSR 604 which was to the effect that a website was a broadcast.

7.1.8 Published editions

CDPA s.8 provides protection for the published editions of literary, dramatic or musical
works which do not reproduce the typographical arrangement of a previous edition.
This protection relates to the way in which a publisher chooses to set out text on the
printed page. In respect of any of the textbooks you are using, the publisher will have
protection under s.8 for their investment in the ‘typographical arrangement’. This
will be separate from the copyright in the underlying work, indeed the underlying
work could be one in which copyright never existed or in which the copyright has
expired (so that a publisher could have copyright in the layout of a new edition of
Shakespeare’s plays).

The word ‘edition’ in s.8 was given a narrow meaning by the House of Lords in
Newspaper Licensing Agency Ltd v Marks & Spencer plc [2003] AC 551. In the case of
a newspaper, it is the whole edition, not individual sections or articles. Copyright
under s.8 is conferred only on publishers in respect of the layout of printed editions
of books, periodicals, plays and music. A typeface (as opposed to the layout of the
printed page) is protected as an artistic work.

Activity 7.6
Go over your notes on the categories of copyright work. Then, in respect of each
one, provide the statutory definition (if one exists in the CDPA) together with any
key cases which explain the nature of the work.

Category of work Definition

Literary

Dramatic

Musical

Artistic

Films

Sound recordings

Broadcasts

Printed editions

No feedback provided.
page 88 University of London

7.2 The requirement of originality

Core text
¢ Bainbridge, Chapter 3 ‘Subsistence of copyright’ pp.43–52.

¢ Bently et al., Chapter 4 ‘Criteria for protection’.

¢ Cornish, Chapter 11 ‘Subsistence of copyright’ paras 11–006 to 11–010, 11–013 to

11–015.

¢ Karapapa and McDonagh, Chapter 2 ‘Subsistence of copyright’ Section 2.7.

Essential reading
¢ Cases: Sawkins v Hyperion Records [2005] 1 WLR 3281; C-203/02 British Horseracing
Board v William Hill Organisation Ltd [2004] ECR I-10415; C-5/08 Infopaq
International A/S v Danske Dagblades Forening [2009] ECDR 16; C-145/10 Eva-Maria
Painer v Standard Verlags GmbH, CJEU, 1 December 2011; C-469/17 Funke Medien
NRW GmbH v FRG EU:C:2019:623.

Further reading
¢ Brennan, D.J. and A. Christie ‘Spoken words and copyright subsistence in Anglo-
American law’ [2000] IPQ 309.

¢ Phillips, J. ‘Copyright in spoken words – some potential problems’ [1989] EIPR 231.

Section 1 of the CDPA declares that copyright subsists in original literary, dramatic,
musical and artistic works. Originality is therefore a condition for their protection.

With regard to other categories of copyright work (films, sound recordings, broadcasts
and typographical arrangements) the relevant sections which define these works all
declare that copyright does not subsist in a film, etc. which is, or to the extent that it is,
a copy taken from a previous film, etc. (see s.5(B)(4), s.5(A)(2), s.6(6) and s.8(2)).

The requirement of originality raises a number of challenges.

‘European’ originality
Note that under certain directives, the threshold for protection (‘originality’) is
formulated in different terms from those historically applied in the UK (the ‘author’s
own intellectual creation’). In C-5/08 Infopaq International A/S v Danske Dagblades
Forening [2009] ECDR 16, the Court of Justice held that this standard applied to all
‘works’ for the purposes of copyright protection, and not only to those forms of work to
which the standard was explicitly applied in European legislation. As a result, in recent
decisions UK courts have tended to elide the ‘labour and skill’ and ‘creativity’ tests.

In the case of databases, the CDPA makes explicit reference to a ‘European’ standard of
‘originality’, deriving from Directive 96/9 on the legal protection of databases, Article 3(1):

…[D]atabases, which, by reason of the selection or arrangement of their contents,

constitute the author’s own intellectual creation shall be protected as such by copyright.
No other criteria shall be applied to determine their eligibility for that protection.

As transposed into the CDPA:

[A] literary work consisting of a database is original if, and only if, by reason of the selection
or arrangement of the contents of the database the database constitutes the author’s own
intellectual creation. (s.3A(2)).

In C-604/10 Football Dataco Ltd v Yahoo! UK Ltd [2012] 2 CMLR 24, the Court of Justice held
that this meant that copyright could subsist in the structure, rather than the contents,
of a database. It also held that the Directive precluded Member States from granting
copyright protection to databases under conditions that varied from the Directive’s
‘creativity’ standard (except within the terms of the transitional protection provided
under Article 14(2). Databases which do not satisfy the higher European originality
standard may qualify for sui generis database right under the Copyright and Rights in
Databases Regulation 1997.
Intellectual property 7 Subsistence of copyright page 89
Although not explicitly transposed into the CDPA, the ‘creativity’ test also applies to
software as a result of Directive 91/250 on the legal protection of computer programs,
Article 1(3) (which is ‘retained EU law’, see Section 3.3.3):

A computer program shall be protected if it is original in the sense that it is the author’s
own intellectual creation. No other criteria shall be applied to determine its eligibility for
protection.

Compare the position of photographs. See Directive 93/98 harmonising the term of
protection of copyright and certain related rights, Article 6:

Photographs which are original in the sense that they are the author’s own intellectual
creation shall be protected in accordance with Article 1. No other criteria shall be applied
to determine their eligibility for protection. Member States may provide for the protection
of other photographs.

In any event, in a very important decision, the Court of Justice held that the ‘creativity’
threshold applies to all ‘works’ (i.e. all works requiring ‘originality’ for protection
under the CDPA) covered by the Information Society Directive – see C-5/08 Infopaq
International A/S v Danske Dagblades Forening [2009] ECDR 16. It arrived at this
decision through an interpretation of the term ‘work’ in the Information Society
Directive. It held that the term was to be construed in a manner that (i) promoted EU
harmonisation and (ii) aligned European copyright law with the Berne Convention
as far as possible. The ‘creativity’ standard already applied to some forms of work
covered by the acquis and, according to the Court, the term ‘work’ (when used in the
Convention) carried an inherent precondition of ‘creativity’.

In subsequent cases, the Court has provided guidance on the meaning of ‘creativity’
in this context. In C-393/09 BSA v Ministry of Culture of the Czech Republic, 22 December
2010, the Court of Justice held that, where the expression of the components of a
graphical user interface (GUI) were dictated by technical function, there was no
possibility of intellectual creation (and therefore no copyright) because the methods
of implementing a technical idea were so limited and idea and expression were
inevitably indissociable (see also C-604/10 Football Dataco Ltd v Yahoo! UK Ltd [2012] 2
CMLR 24 [39]). In C-403/08 and 429/08 Football Association Premier League v QC Leisure
[2012] 1 CMLR 29, the Court held that sporting events would not generally be protected
by copyright:

[S]porting events cannot be regarded as intellectual creations classifiable as works within

the meaning of the Copyright Directive. That applies in particular to football matches,
which are subject to rules of the game, leaving no room for creative freedom for the
purposes of copyright. [98]

In C-145/10 Painer v Standard Verlags GmbH [2012] ECDR 6, the Court held that a relatively
straightforward portrait photograph could satisfy the condition of ‘creativity’:

90 As regards a portrait photograph, the photographer can make free and creative choices
in several ways and at various points in its production.

91 In the preparation phase, the photographer can choose the background, the subject’s
pose and the lighting. When taking a portrait photograph, he can choose the framing,
the angle of view and the atmosphere created. Finally, when selecting the snapshot, the
photographer may choose from a variety of developing techniques the one he wishes to
adopt or, where appropriate, use computer software.

92 By making those various choices, the author of a portrait photograph can stamp the
work created with his ‘personal touch.’

In C-604/10 Football Dataco Ltd v Yahoo! UK Ltd [2012] 2 CMLR 24, it was held that the
addition of ‘important significance’ to data was irrelevant to the assessment of the
eligibility of the database for protection under Directive 96/9. Any creativity in the
generation of data was also held to be irrelevant to the question of whether or not a
particular database work was original/creative.

The Court of Justice provided further interesting guidance on the test of originality
(‘author’s own intellectual creativity’), as initially traced in C-145/10 Painer. In C‑469/17
page 90 University of London
Funke Medien NRW GmbH v FRG EU:C:2019:623, it suggested that a simple list of troop
deployments was unlikely to demonstrate the requisite level of creativity and was
therefore unlikely to be protected by copyright:

If military status reports, such as those at issue in the main proceedings, constitute purely
informative documents, the content of which is essentially determined by the information
which they contain, so that such information and the expression of those reports become
indissociable and that those reports are thus entirely characterised by their technical
function, precluding all originality, it should be considered...that, in drafting those reports,
it was impossible for the author to express his or her creativity in an original manner and
to achieve a result which is that author’s own intellectual creation…[24]

As a consequence, purely informative documents will not be protected by copyright.

This position contrasts with that which applied prior to the assimiliation of the
‘author’s own intellectual creation’ test into UK law following C-5/08 Infopaq.

In the same area, in C-683/17 Cofemel v G-Star Raw CV, the Court of Justice confirmed
that commercially marketed designs can be protected by copyright law, as long as
they satisfy the conditions for protection as a ‘work’ established in C-310/17 Levola
Hengelo BV (i.e. that: (i) they are original (‘creative’); and (ii) they constitute expressions
of that originality/creativity. These are the only criteria to be applied).

Accordingly, in answering the questions raised by the national court, the Court held that:

[T]he circumstance that designs such as the clothing designs at issue in the main
proceedings generate, over and above their practical purpose, a specific and aesthetically
significant visual effect is not such as to justify those designs being classified as ‘works’
within the meaning of Directive 2001/29.

It will be interesting to see whether this pronouncement can be reconciled with the
approach adopted hitherto to ‘works of artistic craftsmanship’ in UK copyright law
(see Section 7.1.4).

It has widely been assumed that the ‘European’ standard of ‘creativity’ (‘author’s own
intellectual creation’) is higher than the traditional ‘originality’ standard applied
under UK law. This assumption is supported by the judgment of the CJEU concerning
copyright in databases in Football Dataco Ltd v Yahoo! UK Ltd.

In C-833/18 SI and Brompton Bicycles v Chedech/Get2Get, the Court of Justice emphasised

that there is no originality:

where the realisation of a subject matter has been dictated by technical considerations,
rules or other constraints which have left no room for creative freedom or room so
limited that the idea and its expression become indissociable [31].

There is here a clear link between the requirement of originality and the notion that
‘there is no copyright in an idea’ (see Section 6.4).

7.2.1 Revising the work

Where a work is updated or revised, the issue is whether the author employed enough
creativity for the revision to attract fresh copyright (which would have the effect of
prolonging the term of protection). Three cases provide useful illustrations. In Interlego
v Tyco [1989] AC 217 it was held that changes made to the working drawings for LEGO
bricks were so minimal that no fresh copyright was obtained. By contrast, in Cala
Homes v Alfred McAlpine Homes East Ltd [1995] FSR 818, revisions to an architect’s plans
for suburban houses were enough for the claimant to be able to claim copyright in the
revisions, so that they could sue the defendant for infringement. In Sawkins v Hyperion
Records [2005] 1 WLR 3281 the claimant, a renowned musical scholar, had created
orchestrations of French classical music. His efforts in researching compositions which
had never had the benefit of copyright protection conferred on him copyright in his
arrangements (even though he did not write any new notes) which the defendant
had infringed by making and issuing records. However, consider whether, following
Infopaq, this case would be decided in the same way.
Intellectual property 7 Subsistence of copyright page 91

7.2.2 Adapting someone else’s work

Where what might be termed ‘secondary activity’ is carried out, such as translating,
arranging or adapting someone else’s work, the person who carries out such activity
may simultaneously acquire copyright with regard to what they have created, yet at
the same time infringe the source work because they have taken substantially from
it: ZYX Music v King [1995] 3 All ER 1, [1997] 2 All ER 129. The fact that they are an infringer
does not prevent the claimant from enforcing their own copyright against a third party.
Substantial taking in the context of copyright infringement is considered in Chapter 8.

7.2.3 Compilations and databases

A compilation of other works is of itself a copyright work: Ravenscroft v Herbert
[1980] RPC 193. However, where the works which have been collected are themselves
copyright, the compilation will infringe unless permission has been obtained. Whether
a compilation is original in the copyright sense depends on the amount of effort
expended on its assembly. A random collection of poems will not attract copyright,
but an anthology which shows taste and judgment in the selection of the individual
poems will (Macmillan & Co Ltd v R & J Cooper (1923) 93 LJPC 113; Macmillan & Co Ltd v
Suresh Chunder Deb (1890) ILR 17 Calc 951).

The protection of compilations extends to assembling a directory, such as a list of

qualified solicitors. See also Judge Hacon’s conclusions in Response Clothing Ltd v The
Edinburgh Woollen Mill Ltd discussed in Section 7.1.4.

The threshold for protection under UK law was sometimes low, depending in some
cases simply on the ‘sweat of the brow’ in collecting the information: Waterlow v Reed
[1992] FSR 409; Waterlow v Rose [1995] FSR 207. However, Council Directive 96/9 on the
legal protection of databases [1996] OJ L 77/20 (the Database Directive), as implemented
by the Copyright and Rights in Databases Regulations 1997, created a two-tier system of
protection for databases, dependent on whether intellectual activity was involved in
their creation.

If intellectual creativity has been exercised in the selection and arrangement of the
elements of a database, it will be entitled to copyright protection. If a substantial
investment has been made in the making of the database, regardless of creativity, the
database will be entitled to a sui generis form of intellectual property protection called
‘database right’. In the UK, this form of protection is established under the Copyright and
Rights in Databases Regulations 1997. Both forms of protection may subsist in the same
database.

Hence today a collection of information may amount to: (a) a compilation protected
by the law of copyright; (b) a database (as defined in Article 1 of the Directive) in which
copyright exists (by virtue of Article 3 of the Directive) because of intellectual creation;
(c) a database (as defined in Article 1 of the Directive) in which the sui generis database
right exists (by virtue of Article 7 of the Directive) (because of substantial investment).

Article 7 of the Directive (the sui generis right) was accorded a very narrow
interpretation by the CJEU in C-203/02 British Horseracing Board v William Hill
Organisation Ltd [2004] ECR I-10415. In particular the CJEU adopted a narrow view as
to what constitutes ‘investment’ in ‘obtaining and verifying’ data (‘resources used to
seek out existing independent materials’ and ‘resources used to monitor the accuracy
of the materials collected when the database was created’). It also adopted a narrow
view of what is a ‘substantial part evaluated qualitatively and quantitatively’ (the
test for infringement in the Directive). This means respectively ‘the volume of data
extracted assessed in relation to the total volume of the contents’ and ‘the scale of
the investment in the obtaining, verification, or presentation of the contents of the
subject of the act of extraction etc., regardless of whether that subject represents a
quantitatively substantial part of the general contents of the protected database’.
There is no infringement unless a substantial part is taken. By contrast the Court
took a broader view of what is ‘extraction’ and ‘utilisation’ (‘any unauthorised act of
appropriation’ even if the database maker has made the contents accessible to the
public). The views expressed in the British Horseracing Board case have been reiterated
page 92 University of London
by the CJEU in C-304/07 Directmedia GmbH v Albert-Ludwigs-Universität Freiburg [2008]
ECR I-7565 and C-545/07 Apis-Hristovich EOOD v Lakorda AD [2009] 3 CMLR 82.

In C-604/10 Football Dataco Ltd v Yahoo! UK Ltd, Stan James (Abingdon) Ltd, CJEU, 1 March
2012, Football Dataco (FD) drew up and made public the fixture lists for the English
and Scottish football leagues. The various defendants made use of the lists and were
sued for infringement of copyright and database rights by FD. In the light of the CJEU’s
previous ruling in the British Horseracing Board case, the Court of Appeal had held that
the fixture lists were not subject to the sui generis database right under Article 7 of the
Database Directive. The Court of Appeal sought a ruling from the CJEU as to whether
the lists might be protected by copyright instead under Article 3 of the same Directive.
The CJEU ruled that Article 3(1) must be interpreted as meaning that a ‘database’ within
the meaning of Article 1(2) of that Directive is protected by the copyright laid down by
that Directive provided that the selection or arrangement of the data which it contains
amounts to an original expression of the creative freedom of its author, which is
a matter for the national court to determine. Consequently, the intellectual effort
and skill in creating the data are not relevant. It is also irrelevant whether or not the
selection or arrangement of the data includes the addition of important significance
to that data. The significant labour and skill required to set up the database cannot
justify protection if they do not express any originality in the selection or arrangement
of the data which the database contains.

Activity 7.7
Read the CJEU’s ruling in the British Horseracing Board case. What impact does
the ruling have on affording intellectual property protection on collections of
information?

7.2.4 Reporter’s copyright

When the definition of ‘literary work’ was considered (in 7.1.1 above) it was noted that
such a work may be ‘written, spoken or sung’. How can there be copyright in the spoken
word? The answer lies in the remaining provisions of s.3 of the CDPA. Carefully read the
whole of s.3 of the CDPA again now.

Consider the scenario of a politician or celebrity making a speech or giving an

interview, which is then recorded by a reporter. Because of the wording of s.3, there
may be both copyright in the spoken word (once recorded, whether in writing or
otherwise, for example, by a tape recorder) and copyright in the report of the speech
if the latter has enough originality. In Walter v Lane [1900] AC 539, it was held that
the reporter who had taken shorthand notes of a series of political speeches had
copyright in the report of the speech. At the time of that decision, there was no
explicit requirement of originality in UK legislation (it was introduced by the 1911 Act).
However, the thinking in Walter v Lane has been confirmed subsequently in Express
Newspapers v News (UK) [1990] 3 All ER 376. The interviewee had copyright in the
words (which were recorded by the journalist in accordance with s.3(2) and (3)) and
the journalist, having expended skill, labour and judgement in editing the report of
the speech had separate copyright in the report. The principle established in Walter
v Lane has also been confirmed by the Court of Appeal in Sawkins v Hyperion Records,
discussed above. However, consider what the outcome might be if the journalist
simply acts as an ‘amanuensis’ (a scribe) and adds nothing of their own creativity when
reporting the interview. Consider also whether the grant of copyright to a reporter
in circumstances such as those in Walter v Lane would now be compatible with the
‘European’ approach to originality described above. It certainly seems doubtful that
the position of the Court of Appeal in Sawkins v Hyperion can be reconciled with the
requirement of ‘creativity’ outlined above.

Activity 7.8
Read the article by Jeremy Philips on copyright in the spoken word and then review
your notes on Walter v Lane and Express Newspapers v News (UK). Then consider
whether, in the light of the current wording of s.3 of the CDPA, the criticisms of
Intellectual property 7 Subsistence of copyright page 93
Walter v Lane are justified. What difference does the judgment of the Court of
Justice in Infopaq make to this situation?
No feedback provided.

7.3 The requirement of permanent form

Core text
¢ Bainbridge, Chapter 3 ‘Subsistence of copyright’ pp.54–55.

¢ Bently et al., Chapter 4 ‘Criteria for protection’.

¢ Cornish, Chapter 11 ‘Subsistence of copyright’ paras 11–032 to 11–034.

¢ Karapapa and McDonagh, Chapter 2 ‘Subsistence of copyright’ Sections 2.8.1

and 2.8.2.

7.3.1 No formalities
The Berne Convention 1886 obliges Contracting States not to impose any formalities
as a precondition of copyright protection. There can be no system of registration.
Protection arises automatically once the work is complete, by which is meant that
there is something which can be copied (a rather obvious point, as copyright exists
to prevent copying). By contrast, the Universal Copyright Convention 1952 and the
Rome Convention on the Protection of Performers, Producers of Phonograms and
Broadcasting Organisations 1961 require the affixation of a copyright notice to the
work (the author’s name, the date of publication and either © or respectively).

7.3.2 The work must be recorded

As regards literary, dramatic and musical works, s.3(2) of the CDPA provides that
copyright shall not subsist unless and until the work is recorded in writing or
otherwise (the definition of ‘written’ can be found in s.178, the general definition
section for Part I of the CDPA). Is the phrase ‘or otherwise’ limited to forms of recording
which are eiusdem generis as ‘writing’ or does the phrase encompass all forms of
fixation? We have already considered the wording of s.3(3) which provides that the
recording can be done by someone else, either with or without the permission of the
author. If you are unclear on this point, reread your notes on Walter v Lane and Express
Newspapers v News (UK). Consider also the outcome of Hadley v Kemp [1999] EMLR 589
as regards the ‘fixation’ of musical works which have not previously been written
down: it was held that the defendant had completed the writing of the songs ‘in his
head’ and that they were put into permanent form when the group made the first
‘demo’ tape of the song in the recording studio. This points to any form of recording
(whether or not on paper) as being sufficient.

With regard to other categories of copyright work, the definitions of ‘film’ and ‘sound
recording’ in s.5 of the CDPA both utilise the word ‘recording’, implying a degree
of permanence. Similarly, in respect of printed editions, as s.8 declares that these
must be published in order to be protected, this too implies that there must be a
permanent record of the work. The one exception would seem to be broadcasts.
There is no mention in s.6 of the CDPA of any requirement of permanent form. It is
possible to have a live broadcast (for example, a news bulletin) but, despite the lack
of permanent form, it will still be protected as a copyright work. Most broadcasts in
fact are pre-recorded. Like films and sound recordings, they will usually contain other
copyright works.

Activity 7.9
Discuss whether B or his successors can claim copyright in the appropriate work in
the following circumstances.
a. B, a famous author, dictates his latest novel onto an MP3 recorder for his
secretary to transcribe at a later date. Before the word-processing is completed,
B dies.
page 94 University of London
b. C delivers a political address during an election campaign. B, a reporter at the
meeting, takes shorthand notes which he later transcribes. Would it make any
difference if C delivered his speech ex tempore (off the top of his head) or from
prepared notes?

c. B, a famous mime artist, creates a new sketch. One of his performances is filmed
(with his consent) but the sketch is never written down.

d. B improvises a tune in front of his friend D; D memorises the tune, goes

home, writes it down, adds words to it and then has it published as his own
composition.

e. B composes a pop song, but being unable to write music, makes a ‘demo’ tape of
it. Later he goes into a recording studio where E, the recording engineer, hears
him rehearsing the song. E goes away and writes down the music and has it
published as his own composition.

7.4 Qualification for protection

Core text
¢ Bainbridge, Chapter 3 ‘Subsistence of copyright’ pp.74–76.

¢ Bently et al., Chapter 4 ‘Criteria for protection’ Section 5 ‘Is the work “qualified”?’

¢ Cornish, Chapter 11 ‘Subsistence of copyright’ paras 11–035 to 11–041.

¢ Karapapa and McDonagh, Chapter 2 ‘Subsistence of copyright’ Section 2.8.3.

Essential reading
¢ CDPA, ss.153–160.

The Berne Convention 1886, the Universal Copyright Convention 1952 and the
Rome Convention on the Protection of Performers, Producers of Phonograms and
Broadcasting Organisations 1961 all contain the principle of national treatment. As
explained in Chapter 2, this means that Contracting States must accord the same
protection to nationals of other Contracting States as they accord to their own
nationals. If you are unsure about the principle of national treatment, revisit your
notes on Chapter 2.

The UK gives effect to its obligations under these Conventions and the WTO’s TRIPs
Agreement in ss.153–160 CDPA. The effect of these sections can be summarised thus:
an author may claim UK copyright if it can be shown that the author or the work are in
some way connected to the UK or a country to which the CDPA extends (dependent
colonies or territories) or a country to which the CDPA applies (that is, Contracting
States of the relevant conventions – hereafter ‘convention countries’). These
conventions are incorporated into UK law by virtue of s.159 of the CDPA.

Where UK copyright is being claimed on the basis of the author being connected to
the UK, it must be ascertained first whether the work was unpublished or published.
In the former situation, it must be determined whether they were a qualifying person
when the work was made. In the latter situation, the question is whether they were
a qualifying person at the time of first publication (CDPA ss.154 and 159). Whether
someone is a ‘qualifying person’ depends on whether the author was a citizen of or
was domiciled in or was resident in the UK or a country to which the CDPA extends or
a country to which the CDPA applies at the relevant date.

Where UK copyright is being claimed on the basis of the work being connected to the
UK, the issue is simply whether it was first published in a Convention country (CDPA
ss.155 and 159). ‘Publication’ is defined in CDPA s.175, which is derived from the ruling
in Francis Day & Hunter v Feldman & Co [1914] 2 Ch 728. Read s.175 now. Note too what
does not constitute publication. You should also read the rules on ‘simultaneous
publication’ in s.155(3).
Intellectual property 7 Subsistence of copyright page 95
The above rules apply to literary, dramatic, musical and artistic works and films (that is,
those works covered by the Berne Convention). As regards sound recordings, the same
rules apply as for other forms of copyright work, but the relevant Convention is the
Rome Convention not Berne. In relation to broadcasts, under s.156 there is only one
‘connecting factor’, namely, the place of broadcast. As regards printed editions, the
requirement is that the publisher must be a qualifying person or else first publication
must have been in a Convention country.

Activity 7.10
A, a citizen of Ruritania, writes a mathematics textbook in 2001. Ruritania does not
adhere to the Berne Convention. Discuss whether he can claim copyright protection
under UK law in the following circumstances.
a. The book is never published.

b. The book is only published in Ruritania.

c. The book is first published in Ruritania, but is subsequently published in the

Falkland Islands.

d. The book is only published in Ruritania, which subsequently adheres to the

Berne Convention.

7.5 Authorship and ownership

Core text
¢ Bainbridge, Chapter 4 ‘Authorship and ownership’ pp.91–108.

¢ Bently et al., Chapter 5 ‘Authorship and first ownership’.

¢ Cornish, Chapter 12 ‘Infringement of copyright and moral rights’ paras 12–001;

12–002; 13–001 to 13–010; and 13–019 to 13–021.

¢ Karapapa and McDonagh, Chapter 3 ‘Authorship and first ownership’ Sections 3.1
and 3.2.

Essential reading
¢ Cases: Stephenson, Jordan & Harrison v MacDonald & Evans (1952) 69 RPC 10;
Beloff v Pressdram Ltd [1973] RPC 765; R Griggs Group Ltd v Evans [2005] FSR 31
(CA); Beckingham v Hodgens [2003] EMLR 18; Brighton & Dubbeljoint Co Ltd v Jones
[2005] FSR 16.

As explained in Chapter 2, when considering the ownership of copyright, it is essential

to distinguish the ownership of the physical medium containing the work from the
ownership of copyright itself. The recipient of a letter will own the piece of paper, but
the writer of the letter will own the copyright in it (Re Dickens [1935] Ch 267).

The CDPA contains a series of provisions dealing with ownership of copyright. These basic
rules are just the starting point for determining who is the owner. In contrast to many civil
law countries, under UK law, copyright is freely alienable. Many industries, particularly
those involved with entertainment (such as films, television and music recording) and
the media (books and newspapers) rely greatly on the use of standard form contracts to
assign and license one or more of the rights comprised in copyright works. The CDPA is
therefore subject to the overriding effect of freedom of contract.

CDPA s.11(1) provides that the author (that is, the creator) of the work is first owner.
Who is the author of the different categories of work is found in s.9. Read s.9 now.
Observe how in relation to ‘entrepreneurial’ works (such as films, sound recordings,
broadcasts, typographical arrangements and computer-generated works) there are
separate rules as to authorship. The only exceptions to the basic rule in s.11(1) are in
s.11(2) (employees) and s.11(3) (Crown and Parliamentary copyright, and copyright
belonging to various international organisations). As regards the meaning of the
phrase ‘in the course of employment’, you should read the leading cases of Stephenson,
page 96 University of London
Jordan & Harrison v MacDonald & Evans (1952) 69 RPC 10 and Beloff v Pressdram Ltd [1973]
RPC 765. Consider also the comment of Mummery J in Noah v Shuba [1991] FSR 14 that
a useful test of whether a work is created ‘in the course of employment’ is to ask
whether the employee could have been ordered to produce the work.

Commissioned works
One commonly misunderstood point concerns works which are commissioned. By
‘commission’ it is meant that A asks B to write a book or a play or a piece of music or
create an artistic work and agrees unconditionally to pay for the work in any event
(Gabrin v Universal Music Operations Ltd [2004] ECDR 18). Where a work is commissioned,
initial ownership does not belong to the commissioner in the absence of a written
contract complying with s.91 of the CDPA (which deals with the formal assignment
of future copyrights) although the commission may give rise to a claim for equitable
ownership: R Griggs Group Ltd v Evans [2005] FSR 706 (CA). In the case of a commission,
which is silent as to entitlement to the commissioned work, the court will imply such
terms as are appropriate to give business efficacy to the contract (Griggs v Evans).
This may result in the commissioner being given an exclusive licence to exploit the
commissioned work or may result in the commissioner being declared the owner in
equity. Much depends on the facts of the case.

Joint authorship
The CDPA s.10 deals with works of joint authorship. Read s.10 now. The definition
of joint authorship requires that it must not be possible to identify the separate
contributions of the authors. Consequently, if A and B have written a song, and A has
created the words and B has composed the music, this is not a work of joint authorship:
there are in fact separate copyrights. Equally, if C and D have written a book, but
each has taken responsibility for particular chapters, again this is not a work of joint
authorship, as their respective contributions can be identified. It is important to know
whether a work is a work of joint authorship or not as specific rules apply to such
works in certain circumstances. For example, the term of protection is calculated in a
different way from that applied to works of sole authorship and all joint authors need
to consent to an act that would otherwise constitute infringement of a work of joint
authorship.

There is a significant body of case law on joint authorship. This has clarified the scope
of s.10 by holding that each alleged co-author ‘must share responsibility for the
form of expression’ and make ‘a significant and original contribution to the creation
of the work’. Hence in Fylde Microsystems v Key Radio Systems Ltd [1998] FSR 449, the
claim for joint ownership failed, as correcting ‘bugs’ in software did not meet these
criteria. Likewise, in Ray v Classic FM plc [1998] FSR 622, there was no joint authorship
of a database of classical music. The claimant was solely responsible for the creation
of the work. In relation to music copyright, the cases of Hadley v Kemp [1999] EMLR
589 and Lawson v Dundas 12 June 1985 both involved unsuccessful attempts to claim
royalties. In each case, the compositions were complete before the alleged co-author’s
involvement in the creative process.

In Brighton & Dubbeljoint Co Ltd v Jones [2005] FSR 288 Park J held that there was no joint
ownership because the changes made by B to the script for a play were of the sort
made by a director, rather than an author.

This complex body of jurisprudence has been clarified by the Court of Appeal in
Martin v Kogan [2019] EWCA Civ 1465, where it was held that there are four conditions
that must be satisfied if a claim to joint authorship is to be made out. These are:
(a) collaboration; (b) authorship; (c) contribution; and (d) non-distinctness of
contribution. Floyd LJ, giving the Judgment of the Court, noted that, under (c), a
putative joint author’s contribution must be an ‘authorial’ one. On the facts of Martin
v Kogan, one of the parties had the ‘final say’ on the form of the work at issue. Floyd LJ
clarified the significance of this fact, stating that:
Intellectual property 7 Subsistence of copyright page 97

We think that the fact that one contributor has the final say does not prevent the
existence of joint authorship. That is not to say that it is irrelevant...[I]t may mean that
one author is doing more of the work than the other, and so affect the share of the
copyright to which each author is entitled. Likewise, it may have an evidential bearing
on whether there is a true collaboration. We see no reason, however, to say that where a
team collaborates on the production of a work, the fact that the team leader can exercise
ultimate control means that there can be no joint authorship. [51]

In paragraph [53] of the Judgment, an updated list of the principles applicable to a

claim for joint authorship are systematically set out. In Kogan v Martin (No 2) [2021]
EWHC 24 (Ch) Meade J applied the approach handed down by the Court of Appeal to
the facts of the case, holding that the contribution of an initial idea for a screenplay
and suggestions as to plot, character and dialogue were authorial in nature.

Co-proprietors generally hold as joint tenants (Lauri v Renad [1892] 3 Ch 402). Joint
authorship is presumed to lead to ownership in equal shares. However, increasingly,
where a court is able to quantify appropriate shares, it will do so (see, for example,
Fisher v Brooker and Onward Music Ltd [2007] FSR 255; Brown v Mcasso Music Productions
Ltd [2006] EMLR 3; Kogan v Martin [2019] EWCA Civ 1645. In Kogan v Martin (No 2) [2021]
EWHC 24 (Ch), Meade J assessed the entitlement of the party who had suggested the
initial idea for a screenplay and made plot, character and dialogue suggestions at
20 per cent.

Where there is joint authorship of a work, the rights of the joint authors are set out in
s.173(2) of the CDPA.

Sometimes (because of the lack of registration in copyright), it may be difficult

to determine who is entitled to a work. Section 104 of the CDPA contains various
presumptions as to the existence and ownership of copyright. The effect of the section
is in relation to the burden of proof: the onus is on the defendant to disprove the
claimant’s title.

Activity 7.11
What is the relationship between ownership and authorship of copyright?

7.6 Duration

Core text
¢ Bainbridge, Chapter 3 ‘Subsistence of copyright’ pp.76–88.

¢ Bently et al., Chapter 7 ‘Duration of copyright’.

¢ Cornish, Chapter 11 ‘Subsistence of copyright’ paras 11–042 to 11–055.

¢ Karapapa and McDonagh, Chapter 3 ‘Authorship and first ownership’ Section 3.3.

The EU Copyright Term Directive (aimed at standardising the period of copyright

protection throughout the Member States) had a major impact on the CDPA. As regards
literary, dramatic, musical and artistic works, the period of copyright protection is the
author’s lifetime plus 70 years from the end of the calendar year in which they died (s.12
of the CDPA). Exceptions exist for works of unknown authorship (which are protected for
70 years from creation or 70 years from being made available to the public, provided that
being made available happened within 70 years of creation) and computer-generated
works (which are protected for 50 years from creation). Where a song is the result of
collaboration between the composer and the lyricist, the term of 70 years is calculated
from the death of the survivor of these two creators (CDPA, s.10A, as inserted by
Copyright and Duration of Rights in Performances Regulations 2013 (SI 2013/1782)).

Film copyright lasts for 70 years from the death of the survivor of the principal director,
the author of the screenplay, the author of the dialogue or the composer of music
specially created for and used in the film (s.13B).
page 98 University of London
In the case of sound recordings, s.13A CDPA provides that copyright expires at the end
of 50 years from the end of the calendar year in which the recording was made, or if
during that period it is published, 70 years from publication, or if during that period
the recording is not published but is made available to the public by being played in
public or communicated to the public, 70 years from being made available.

Under s.14, broadcast copyright lasts 50 years from broadcast. Copyright in repeats
expires at the same time as copyright in the original broadcast. Under s.15 (which
was not affected by the Copyright Term Directive), the copyright in a printed edition
expires 25 years from first publication.

As explained in Chapter 6, the rules on the duration of copyright in works created

before 1 August 1989 are complex. They are of concern to practitioners, but for the
purposes of the examination you should assume that all the relevant events occurred
after the operative date of the CDPA.

Sample examination question

What tests do the courts employ in order to determine the originality of literary,
dramatic, musical and artistic works?

Advice on answering the question

A good answer will:

u explain how originality is a requirement for copyright protection by virtue of the

wording of s.1(1) of the CDPA

u accurately summarise the explanation in the University of London case that

originality is concerned with source not inventiveness

u explain that ‘original’ now means ‘resulting from an author’s own intellectual
creativity’ and explain how this text has been interpreted and applied

u critically explore some of the difficulties caused by this minimalist approach,

especially with regard to revisions, adaptation, compilations and ‘reporter’s
copyright’.
Intellectual property 7 Subsistence of copyright page 99

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.

Tick a box for each topic. Ready to Need to Need to

move on revise first study again

I can summarise the principal categories of

copyright works.   

I can explain the criterion of originality in copyright

law and the need for permanent form.   

I can explain the rules which determine when a work

qualifies for protection in UK law.   

I can explain and apply the concepts of authorship

and ownership.   

I can list all the matters which have to be established

in order for UK copyright to subsist.   

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

7.1 Categories of copyright work  

7.2 The requirement of originality  

7.3 The requirement of permanent form  

7.4 Qualification for protection  

7.5 Authorship and ownership  

7.6 Duration  
page 100 University of London

Notes
8 Copyright infringement and defences; infringement
of moral rights

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 102

8.1 The nature of copyright infringement . . . . . . . . . . . . . . . . . . 103

8.2 Primary infringement . . . . . . . . . . . . . . . . . . . . . . . . . . 107

8.3 Secondary infringement . . . . . . . . . . . . . . . . . . . . . . . . 112

8.4 Defences to copyright infringement . . . . . . . . . . . . . . . . . . 114

8.5 Infringement of moral rights . . . . . . . . . . . . . . . . . . . . . . 120

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . 124

page 102 University of London

Introduction
This chapter will set out the rights of the copyright owner to prevent others from
committing what are called ‘restricted acts’, that is, conduct which amounts
to copyright infringement. Copyright infringement is subdivided into primary
infringement (liability for committing one of the five restricted acts) and secondary
infringement. This latter category imposes liability on retailers and others who deal
commercially in infringing copies. As an introduction to primary and secondary
infringement, we shall first examine the nature of copyright infringement.

The chapter will also deal with defences to copyright infringement. These are to
be found primarily (and in great detail) in the Copyright, Designs and Patents Act
1988 (CDPA). We shall concentrate on those which are of general application. Other
defences which exist independently of legislation will also be considered. Last, we
shall look at how the moral rights of an author may be infringed when copies of a work
are dealt with commercially.

As with the material covered in Chapter 7, copyright infringement is a topic where the
basic principles are straightforward but where it is easy to get lost in the mass of detail
found in the CDPA. You should therefore concentrate on understanding the nature of
copyright infringement and the five restricted acts of primary infringement.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u understand the nature of copyright infringement
u explain and apply the statutory provisions relating to primary and secondary
infringement of copyright
u explain and apply the principal statutory and non-statutory defences to an
action for copyright infringement
u understand how infringement of moral rights dovetails with infringement of
copyright
u list the various ways in which a copyright work may be infringed.
Intellectual property 8 Copyright infringement and defences; infringement of moral rights page 103

8.1 The nature of copyright infringement

Core text
¢ Bainbridge, Chapter 6 ‘Rights, infringements and remedies’ pp.154–74 .

¢ Bently et al., Chapter 8 ‘Infringement’; Chapter 6 ‘Nature of the rights’ Section 1

‘Introduction’, Section 8 ‘Authorization’, Section 9 ‘Liability of internet service
providers’.

¢ Cornish, Chapter 12 ‘Infringement of copyright and moral rights’ paras 12–003 to

12−020.

¢ Karapapa and McDonagh, Chapter 4 ‘Infringement of copyright’ Sections 4.1, 4.4

and 4.5.

Essential reading
¢ Spence, M. and T. Endicott ‘Vagueness in the scope of copyright’ (2005) 121 LQR
657 (available in Westlaw via the Online Library).

¢ Cases: Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273; Hawkes
& Son v Paramount Film Services [1934] Ch 593; ZYX Music v King [1995] 3 All ER 1;
Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416; Baigent &
Lee v Random House Group Ltd [2007] FSR 24; Temple Island Collections Ltd v New
English Teas Ltd [2012] EWPCC 1; C-476/17 Pelham GmbH v Hütter.

¢ CDPA, ss.2 and 16.

The basic principles of copyright infringement are set out in ss.2 and 16 of the CDPA.
Please read these two sections carefully now. Observe how s.16(1) lists the restricted
acts. Each one of these is a category of primary infringement and each receives
separate, more detailed treatment in the five subsequent sections of the CDPA.
Remember when you read s.16(1)(d) that it was amended by the Copyright and Related
Rights Regulations 2003 (which implemented the EU Information Society Directive)
so as to enable the copyright owner to control not just the broadcast of the work but
its communication to the public, thereby stating explicitly that dissemination of a
work on the internet is a restricted act. Note further how subsections (2) and (3) of s.16
provide further information about the nature of copyright infringement. The principal
acts of secondary infringement are found in ss.22 to 27. We shall deal with these later.

The essence of copyright infringement is that it involves using a work (as defined in
s.1 of the CDPA) belonging to another in a range of specified ways. Copyright law does
not impose any restriction on the use of an article which contains a copyright work.
A purchaser of a book may read it, use it to prop up a table leg, tear it up or burn it, in
fact do anything with it, as long as a restricted act is not committed.

Copyright infringement, as a statutory tort, is an interference with property rights.

Liability for any of the restricted acts is strict. In relation to primary infringement, the
claimant does not need to prove that the defendant knew that an act of infringement
was being committed. However, where the defendant can show innocence (defined
objectively), s.97 of the CDPA provides that damages may not be awarded against them.

In contrast to other forms of intellectual property rights, copyright infringement does

not have to be committed in the course of trade, nor need the defendant have profited
from the infringing conduct. Private and domestic use is not a general defence.

However, copyright infringement does require the defendant to have taken something
of the claimant’s work. The claimant must therefore show a causal link between the
source work and the alleged infringement. The link may be a direct one or it can
be indirect (see the wording of s.16(3) of the CDPA). There may therefore be some
other explanation as to why the defendant’s work resembles the claimant’s, such as
coincidence, or that the claimant copied the defendant’s work, or that both works
were derived from a common source, which may or may not be in itself a copyright
work (see, as examples of this last-mentioned point, Roberton v Lewis (1960) [1976] RPC
169 and Warwick Films v Eisinger [1969] 1 Ch 508). The fundamental principle is that
page 104 University of London
independent creation is always an effective rejoinder to an allegation of copyright
infringement: Kleeneze Ltd v DRG Ltd [1984] FSR 399. This is another feature which
distinguishes copyright from other forms of intellectual property right and which
therefore points to copyright being a limited rather than absolute monopoly.

A point which was made in Chapter 7 is that someone who takes the whole or part of
an existing copyright work and then adds something of their own to it will be both an
infringer and the author of the copyright in the additional material. If you are unclear
on this point, then you should reread ZYX Music v King [1995] 3 All ER 1 now. For an
illustration of the way in which independent creation will serve as a defence to a claim
for copyright infringement, see Michael Mitchell v BBC [2011] EWPCC 42. The case also
demonstrates how a claimant may have difficulty in proving subconscious copying.

Summary
Copyright as a statutory tort imposes strict liability for the acts of primary
infringement listed in s.16(1) of the CDPA. Each of these involves the defendant taking
the claimant’s work. Such taking does not have to be for profit, so that copyright
infringement can be committed in the home. Copyright does not impose any
restrictions on the use of a copyright article. Independent creation is always a defence
to copyright infringement.

8.1.1 The requirement of derivation

In Francis Day & Hunter v Bron [1963] Ch 587, Diplock LJ stated that a claimant must show
‘derivation’ in order to succeed in copyright proceedings.

Derivation is another way of saying that the defendant must have taken the claimant’s
work, either directly or indirectly. Examples of derivation include Solar Thomson
v Barton [1977] RPC 537 (where the defendant’s agent gave instructions to make
replacement parts for conveyor belts which infringed the claimant’s copyright in
engineering drawings for that equipment) and LB (Plastics) v Swish Products [1979] RPC
551 (where the defendant copied the interior of the claimant’s self-assembly furniture,
thereby infringing the drawings for the furniture). (Note that on their facts both of
these cases today would involve design right rather than copyright; however, the
principle which they illustrate is still valid.) Examples of what is not derivation include
Purefoy Engineering v Sykes Boxall (1955) 72 RPC 89 (each party had prepared their own
catalogue showing their respective ranges of machine tools, thus the defendant’s
catalogue, though similar, was not a copy of the claimant’s) and Warwick Films v
Eisinger [1969] 1 Ch 508 (the defendant’s film about the trials of Oscar Wilde was based
not on the claimant’s book but on the actual court transcript). For an example of the
way in which the court carries out the task of comparing the claimant’s work with
the defendant’s work to see if there are indications of copying, see Hodgson v Isaac &
Notting Hill Movies [2011] EWPCC 37.

8.1.2 The requirement of substantial taking

Look again at s.16(3) of the CDPA and note how it states that the defendant may take
the whole of the claimant’s work or a substantial part of it. ‘Substantial’ involves a
qualitiative, rather than a quantitive, test. Examples of substantial taking are Hawkes
& Son v Paramount Film Services [1934] Ch 593 (a 30 second extract of the famous
‘Colonel Bogey’ march being included in a news film) and Spelling Goldberg v BPC
Publications Ltd [1981] RPC 280 (one frame from a television programme being used to
make a ‘Starsky & Hutch’ poster).

When you read the cases on substantial taking you should reflect on how far they can
be reconciled with the idea/expression dichotomy discussed in Chapter 6. Has the
defendant taken the underlying idea or the work itself? An example of a case where
it was held that the idea − but not its expression − was taken is Norowzian v Arks Ltd
[1999] FSR 79 (Rattee J) and [2000] FSR 363 (CA).

The decision in Baigent & Lee v Random House Group Ltd [2007] FSR 579 provides another
useful illustration of the requirement that the defendant must take the expression of
Intellectual property 8 Copyright infringement and defences; infringement of moral rights page 105
the work, not its underlying idea, in order to be liable for copyright infringement. The
following test is suggested by Mummery LJ.

u What are the similarities between the alleged infringement and the original
copyright work?

u What access, direct or indirect, did the author of the alleged infringing work have
to the source work?

u Did the author of the alleged infringement make some use of material derived by
him, directly or indirectly, from the original work?

u If the defendant contends that no such use is made, what is his explanation for the
existence of similarities between the two works?

u If use was made of the source work, did this amount to a ‘substantial part’ of it?

u What factors support the conclusion that what has been taken is a ‘substantial
part’ of the original?

A key point, however, is that copyright is essentially concerned with derivation rather
than with overall similarity (which is a test more appropriate to passing off): Designers
Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416 (HL) at paras 39 to 41 per Lord
Millett.

In C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECDR 16, the
CJEU considered the conditions under which a work was to be regarded as having
been ‘reproduced in part’. The principles which it established in that case have had an
impact upon the concept of the ‘substantial part’ under the CDPA:

…[T]he reproduction of an extract of a protected work which, like those at issue in the
main proceedings, comprises 11 consecutive words thereof, is such as to constitute
reproduction in part within the meaning of Article.2 of Directive 2001/29, if that extract
contains an element of the work which, as such, expresses the author’s own intellectual
creation… (Infopaq [51])

This approach to the assessment of infringement has much in common with that
previously applied in the UK. Indeed, in a number of cases, courts have approached
the issue in a manner that suggests that little has changed as a consequence of the
adoption of the approach established in Infopaq (see, for example, Hodgson v Isaac
[2010] EWPCC 37 [25], [74]–[83] and Temple Island Collections Ltd v New English Teas Ltd
[2012] EWPCC 1 [31]).

It can, however, be suggested that the apparent absence of a ‘substantiality’

condition under the Infopaq test may lead courts to find infringement in cases in
which they would previously have found that a ‘substantial part’ of a work had not
been taken. Furthermore, under the traditional approach adopted in the UK, it has
first been necessary to establish the parameters of the ‘work’ at issue. However, this
approach may well have to be modified in the wake of Infopaq under which the test
for infringement appears to be concerned with the reproduction of ‘elements’ of the
author’s creativity rather than the material boundaries of the work.

In an important recent case concerning sampling, the CJEU considered the application
of the reproduction ‘in part’ concept in the case of sound recordings (‘phonograms’
in the Directives). In his Opinion in C-476/17 Pelham GmbH v Hütter, Advocate General
Szpunar examined this issue in detail and concluded that, as there was no creativity
threshold in the case of such subject matter (related rights), the Infopaq approach
could not apply and therefore, in the absence of any other appropriate threshold,
the reproduction of even de minimis extracts falls within the control of the exclusive
rightholder (see EU:C:2018:1002). However, the CJEU did not go this far, finding
that the reproduction of parts of a sound recording that were unrecognisable
in the defendant’s work would not constitute an infringement of the exclusive
rights granted to the producers of phonograms (sound recordings) (see [26]–[39]).
Necessarily, therefore, the reproduction of parts that are recognisable will constitute
an infringement of the rights of the rightholder in the phonogram (initially, at least,
the producer of that phonogram). This analysis will have to be accommodated by UK
courts within the statutory ‘substantial part’ framework.
page 106 University of London

8.1.3 Liability for infringement by others

Copyright infringement, as a statutory tort, attracts the normal rules on vicarious
liability, so that an employer will be held responsible for acts of infringement
committed by employees: PRS v Mitchell & Booker [1924] 1 KB 762. However, there is
another form of liability for the conduct of others unique to copyright law. This is
because of the presence of the word ‘authorise’ in s.16(2) of the CDPA. In Moorhouse
v University of New South Wales [1976] RPC 151, the University was held to have
authorised infringement by providing the materials to be copied as well as the
necessary equipment to do so. It was held that ‘authorise’ meant not only to ‘sanction,
countenance and approve’ but also to commit ‘acts of such indifference from which
authorisation may be inferred’.

The combination of facts in the Moorhouse case was important. It involved the
supply of copyright material (in a library) and the provision of the means of
copying (a photocopying machine). Slightly different facts may mean that there
is no authorisation. In CBS v Ames [1981] 2 All ER 812, the hiring of sound recordings
(copyright material) by a record shop together with the sale of blank tapes was not
enough, as the defendant did not provide recording equipment. In Amstrad v BPI
[1986] FSR 159, the supply of a double-headed cassette deck was not enough (absent
the provision of copyright materials) to ‘authorise’ purchasers to use it to make illegal
copies, although the court added that this might amount to ‘inciting’ the commission
of a crime under what is now CDPA s.107. However, this potential criminal liability did
not entitle the record companies to obtain an injunction restraining the sale of the
equipment: CBS v Amstrad [1988] AC 1013.

In a number of more recent cases, UK courts have held that ‘intermediaries’

which assist users to infringe copyright online can be liable for ‘authorising’ those
infringements where their activities go beyond mere facilitation. See Twentieth Century
Fox Film Corp v Newzbin [2010] FSR 21 [85]–[102] (grant of authority to be inferred
from the circumstances – relationship between defendant and its clients, degree
of control enjoyed by the defendant, attempts made by defendant to promote or
prevent infringement, etc.). The Newzbin approach has been followed in Dramatico
Entertainment Ltd v BSB Ltd [2012] EWHC 268 (Ch) (‘Pirate Bay’); EMI Records Ltd v
British Sky Broadcasting Ltd [2013] EWHC 379 (Ch) and Paramount Home Entertainment
International Ltd v British Sky Broadcasting Ltd [2013] EWHC 3479 (Ch).

There can be liability under s.16 for authorisation committed outside the UK as long as
the restricted act itself was done within the jurisdiction (ABKCO Music v Music Collection
International [1995] RPC 657).

Note also that courts are increasingly willing to hold that a defendant is jointly liable
with another copyright infringer (under the general tortious doctrine of joint liability)
in circumstances that overlap with those which may give rise to authorisation liability.
See, for example, the cases following Newzbin and listed above where the intermediary
was generally held to be liable for: (i) authorising an infringement and (ii) joint
tortfeasance. The principles applicable in cases involving potential joint liability in
tort have been set out by the Supreme Court in Fish & Fish Ltd v Sea Shepherd UK [2015]
UKSC 10.

Activities 8.1 and 8.2

8.1 Go over your notes on the above material. Then write a concise summary of:

u derivation

u substantial taking

u authorisation.

No feedback provided.

8.2 Read the speech of Lord Millett in Designers Guild Ltd v Russell Williams (Textiles)
Ltd. Then summarise his statement of principle about the way the court should
approach the issues of objective similarity and derivation.
Intellectual property 8 Copyright infringement and defences; infringement of moral rights page 107

8.2 Primary infringement

Core text
¢ Bainbridge, Chapter 6 ‘Rights, infringement and remedies’ pp.154–82.

¢ Bently et al., Chapter 6 ‘Nature of the rights’.

¢ Cornish, Chapter 12 ‘Infringement of copyright and moral rights’ paras 12–021

to 12–035.

¢ Karapapa and McDonagh, Chapter 4 ‘Infringement of copyright’ Sections 4.2

and 4.3.

Essential reading
¢ Cases: C-456/06 Peek & Cloppenburg KG v Cassina SpA [2009] ECDR 9; PRS v
Harlequin Record Shops [1979] 2 All ER 828; C-306/05 SGAE v Rafael Hoteles SA [2007]
ECDR 2; C-466/12 Svensson v Retriever Sverige AB EU:C:2014:76; C-160/15 GS Media BV
v Sanoma Media Netherlands BV EU:C: 2016:644.

¢ CDPA, ss.17–21.

Further reading
¢ Phillips, J. and L. Bently ‘Copyright issues: the mysteries of Section 18’ [1999]
EIPR 133.

The five acts of primary infringement are set out in ss.17–21 of the CDPA. We shall
examine each in turn.

8.2.1 Copying
Section 17 of the CDPA contains the relevant provisions relating to ‘copying the work’.
Read the section carefully now and note the definitions of copying given for each
category of copyright work. Copying may involve an exact reproduction or taking only
part of the work or creating a work which appears to be similar. The simpler the source
work, the greater degree of copying required for there to be infringement: see Kenrick
v Lawrence (1890) 25 QBD 99 (the drawing of a hand pointing to a polling station was so
simple that only a total copy would infringe) and Guild v Eskandar Ltd [2003] FSR 23, CA
(designs for ‘very simple’ knitwear not infringed by the defendant’s similar designs).

When you study the material on s.17, you should remember the work you did earlier
on the dividing line between copying the idea and copying the expression. Then
consider whether the decision in Elanco v Mandops [1980] RPC 213 can be reconciled
with Geographia v Penguin [1985] FSR 208 (no infringement where what was taken was
the colouring of maps in an atlas) and Johnstone Safety Co v Peter Cook International plc
[1990] FSR 161 (where the octagonal base of a traffic cone was held to be an idea not its
expression).

Remember too that, for liability under s.17, the defendant does not have to have seen
the original work, as copying can be indirect. So in Bernstein v Sydney Murray [1981] RPC
303, the defendant infringed the copyright in a fashion sketch by copying a garment
based on the sketch, and in Plix Products v Winstone [1986] FSR 608 (NZCA) there was
infringement when the defendant orally gave instructions to a third party to make a
tray for carrying kiwi fruit, in the process describing the claimant’s tray which was in
front of him when he made the telephone call. Another illustration is Gabrin v Universal
Music Operations Ltd [2004] ECDR 18, where basing a CD cover on a 20-year-old poster
infringed the copyright in the photograph from which the poster had been derived.
The same point can be found in cases already discussed in relation to the meaning of
derivation (see Solar Thomson v Barton and LB (Plastics) v Swish Products above). Lastly,
it is not necessary for the defendant to realise that there was copying, as the court can
find that copying was subconscious because the claimant’s work had been seen or
heard by the defendant. This is a particular feature of cases involving music copyright,
where the defendant will find it hard to deny that they heard a particular popular song
on the radio or television (see EMI Music Publishing v Papathanasiou [1993] EMLR 306).
page 108 University of London
In the USA, where the most high-profile music copyright infringement cases tend to be
litigated, court decisions over the past decade illustrate the uncertainty of where the
property boundaries lie. In particular, the 2015 US case of Williams v Gaye 895 F.3d 1106,
1140–41 (9th Cir. 2018), involving a dispute over the hit pop song ‘Blurred lines’, held that
infringement can occur even where the melody and rhythm of the two works were
different. Mere emulation of a song’s ‘vibe’ could still lead to an infringement finding.
This ruling opened a pathway for a wide range of speculative infringement claims to be
brought under US law, leading to concerns over a chilling effect on creative practices.

One such case is Sheeran v Chokri [2022] EWHC 827 (Ch). In Sheeran, the High Court took
a contextual approach to the idea of copying in music. Rather than focusing on a literal,
text-influenced evaluation, Zacaroli J emphasised that, even where the musical phrases
in both works are very similar (as was the case, on the facts), this does not prove copying,
where the phrase itself is generic and found in several different popular songs. Thus,
despite melodic similarity between the disputed parts of the two songs, the High Court
refused to find infringement. The Court of Appeal refused leave to appeal.

The view of Zacaroli J chimes with the history of musical composition and practice and
marks a clear distinction from the problematic position of the US courts in Williams v
Gaye. The approach of Zacaroli J appears particularly salient in an era of economic and
cultural disruption, when artificial intelligence tools have been developed to search and
compare tens of thousands of songs online, potentially enabling spurious litigation.

As noted above, the 2015 US case of Williams v Gaye 895 F.3d 1106, 1140–41 (9th Cir. 2018)
a.k.a. the dispute over the hit pop song ‘Blurred lines’, created a US legal precedent
that infringement can occur even where the melody and rhythm of the two works are
different. Mere emulation of a song’s ‘vibe’ could still lead to an infringement finding.

This was followed by litigation against Ed Sheeran in the UK and USA. In the above
cited English High Court case of Sheeran v Chokri [2022] EWHC 827 (Ch) the High Court
of England and Wales took a contextual approach to the idea of copying in music and,
despite melodic similarity between the disputed parts of the two songs, the English High
Court refused to find infringement.

In April 2023, the US case against Sheeran came to court. It was heard at the US District
Court for the Southern District of New York. In Griffin et al. v Sheeran et al. 17 Civ. 5221 (LLS)
(SDNY Apr. 5, 2023). The estate of Ed Townsend, who co-wrote the Marvin Gaye hit ‘Let’s
get it on’, claimed that Sheeran and co-writer Amy Wadge copied elements of the 1973
song in their 2014 hit ‘Thinking out loud’. The jury heard testimony from Sheeran himself,
who performed his songs in court, demonstrating how different songs can share the
same four chords. The jury found in his favour – there was no copyright infringement.
This brings the US and UK law closer together.

In 2023 the Intellectual Property Enterprise Court in London heard an important case:
Fay Evans v John Lewis [2023] EWHC 766 (IPEC). Evans, a noted author of children’s books,
claimed that the John Lewis advert character ‘Excitable Edgar’ had been copied from her
character ‘Fred the fire sneezing dragon’ (self-published in 2017). There were similarities
between the advert and the book: a dragon living in a human world, accidentally
emitting fire, melting objects, and warming food and human hearts. However, John
Lewis produced evidence to show they had created the Edgar character in 2016, prior
to the publication of Evans’ book. The court emphasised that ‘there can be no copyright
infringement without copying’ and here the timeline did not indicate copying. Moreover,
even if the timeline had been different, the judge was unconvinced that the idea of
fire-breathing dragons, whose fire can be put to useful purposes, is not original – it even
appears in the Bible.

8.2.2 Issuing copies to the public

Section 18 gives the copyright owner the right to control the issuing of copies of the
work (the so-called ‘distribution right’). The section has been amended twice to take
account of EU directives. The following comments can be made:

u Section 18 changes the nature of the restricted act. Under the Copyright Act 1956
there was liability for ‘publishing the work’ (a one-off occurrence – a work was
Intellectual property 8 Copyright infringement and defences; infringement of moral rights page 109
either published or it was not, as explained in Infabrics v Jaytex Ltd [1981] 1 All ER
1057). Now the copyright owner can control the first issuing of each and every
copy of the work: Nelson v Rye & Cocteau Records [1996] 2 All ER 186 at 208.

u As amended, the section incorporates the doctrine of intra-EU exhaustion of rights,

so that the copyright owner cannot object to the issuing of copies which have
previously been put in circulation within the EEA, but can object to the issuing
of copies which have previously been put in circulation outside the EEA. For an
example of the application of this principle in the context of the ‘distribution’
(‘issuing to the public’ in the language of the directives) of computer software, see
C-128/11 Usedsoft GmbH v Oracle International Inc [2012] ECDR 19 (see Chapter 13 for
further details on intra-EU exhaustion of rights). However, the separate rental right
found in s.18A of the CDPA is a deliberate exception to the doctrine of exhaustion:
C-61/97 Egmont Films v Laserdisken [1998] ECR I-5171 (ECJ). For an initial period at
least, the distribution of a copy of a work (with the rightholder’s consent) within
the EEA will continue to exhaust the distribution right in that copy of the work
post-Brexit.

u It is still a matter of conjecture as to the exact meaning of ‘issue to the public’.

Consider as an example the normal chain of distribution of a book (from publisher
to wholesaler to retailer to the purchasing public). Is issuing concerned with
the disposition of the copies (i.e. once copies of a book have been supplied to a
wholesaler the right is exhausted) or is issuing concerned with the destination
of the copies (i.e. the right is only exhausted once copies are purchased by the
public)? The matter is discussed in the Phillips and Bently article listed above, and
further guidance by analogy may be found in C-16/03 Peak Holding AB v Axolin-Elinor
AB [2004] ECR I-11313, a case concerned with exhaustion of trade mark rights. The
CJEU ruled that where goods have been put on display in a shop without being
purchased by the public then they had not been ‘put on the market’ for the
purposes of Article 7 of the Trade Marks Directive. This suggests that s.18 of the
CDPA is concerned with the destination of the goods, so that goods have not been
issued to the public until the copies have been bought from a retailer.

In C-456/06 Peek & Cloppenburg KG v Cassina SpA [2009] ECDR 9, the Court of Justice
explained that a distribution (the equivalent concept to ‘issuing to the public’ under
the CDPA) took place when ownership of the copy in question was transferred.
However, in C-5/11 Donner, the CJEU held that liability for distribution arose at a variety
of points in the transactional chain [26]–[30]. Indeed, in Dimensione Direct Sales Srl v
Knoll International SpA [2015] ECDR 12, this point was reiterated. The CJEU held that
an offer for sale or advertisement of an infringing work was capable of constituting
a ‘distribution to the public’ under Article 4(1), ISD. This interpretation means that
activities that might in the past have led to accessory or secondary liability have the
potential to fall within s.18.

In C-419/13 Article & Allposters International BV v Stichting Pictoright, 22 January 2015, the
Court of Justice held that the principle of exhaustion will not apply where a reproduction
of a protected work is remarketed in an altered medium after having been marketed
initially with the copyright holder’s consent in the EEA.

8.2.3 Performing in public

The copyright owner’s right to control the public performance of any work other than an
artistic work or typeface is set out in s.19 of the CDPA. Read the section now and observe
how it defines performance, but not ‘in public’. The current law of what amounts to a
public performance is summarised in PRS v Harlequin Record Shops [1979] 2 All ER 828.
You should read this decision now. It confirmed a line of earlier cases which treated
women’s institutes, private clubs, factories and shops as all being ‘in public’, the key
factor being the relationship between the visitor to such premises and the copyright
owner. In consequence, ‘in public’ means anything outside the domestic sphere.

The performance right in copyright works (particularly musical works and sound
recordings) is usually assigned or licensed by the copyright owner to a copyright
collecting society (sometimes called a copyright management society) who will issue
page 110 University of London
licences to those who control premises, permitting the public performance of the work
on those premises. A prime example in the UK is the Performing Right Society (PRS) (it
has sister organisations in many other countries). In the case of copyright music which
is performed in public (whether live or via a recording), the PRS grants either a blanket
licence to the controller of premises (there are over 40 different tariffs for such licences
depending on the nature of the premises, ranging from aircraft to hairdressers to concert
halls to discos) or a licence which requires a detailed record to be kept of all music which
has been performed (as is the case for radio and television broadcasts – even a brief
extract of copyright music used in an advertisement requires a royalty to be paid). The
licensing system is enforced by a team of inspectors who visit premises to check that a
licence has been obtained. The resulting royalties are divided between the members of
the society (in the case of the PRS, the members are primarily composers).

The right to control public performances falls outside the EU copyright acquis,
because it has not yet been harmonised (see C-283/10 Circul Globus Bucuresti v Uniunea
Compozitorilor si Muzicologilor din România, 24 November 2011 (CJEU)). However, note
that some activities covered by s.19 will fall within the concept of ‘communication to
the public’ under EU copyright law.

8.2.4 Communication to the public

Section 20 was amended by the Copyright and Related Rights Regulations 2003 so
as to enable the copyright owner to control the broadcasting of any work (except
a typographical arrangement) and its dissemination via the internet. While s.18 is
concerned with tangible copies of a work, s.20 applies only to intangible copies.
Section 20 has been held to be available to a copyright owner who wishes to object to
peer-to-peer file-sharing activities: Polydor v Brown [2005] EWHC 3191 (Ch).

The CJEU considered this form of liability on several occasions, including in C-306/05
Sociedad General de Autores y Editores España v Rafael Hoteles SA [2006] ECR I-11519 and
C-403/08 and C-429/08 Football Association Premier League v QC Leisure [2011] ECR I-9083.
In the latter case, the Court confirmed that ‘communication to the public’ requires the
work to be transmitted to a new public (i.e. one not contemplated by the copyright
owner at the time of the initial transmission). It also made plain that the communication
right is separate from the reproduction right, so that the defendant had infringed the
communication right by screening football matches in her pub using a satellite decoder
purchased in another EU State without the copyright owner’s permission, but the
reproduction right had not been infringed because the copies of the broadcast stored in
the decoder’s cache were within the temporary copies defence, explained below.

In C-466/12 Svensson v Retriever Sverige AB, the Court of Justice considered the potential
liability of a defendant which had provided a link to a work that had been made freely
available elsewhere on the internet by the copyright owner. In such circumstances,
the Court concluded that the provision of the link did not infringe the right protected
under Article 3 of the Information Society Directive (and therefore s.20 of the CDPA)
because the link did not communicate the work to a ‘new public’ (because the
copyright owner had already communicated the work to the public at large by making
it freely available over the internet).

In its subsequent judgment in C-160/14 GS Media BV v Sanoma Media Netherlands BV EU:C:

2016:644, the Court determined a related (but significantly different) point.

The case concerned a claim for copyright infringement relating to certain photographs.
The photographs had been uploaded without permission on to an Australian website.
The defendant in the national proceedings was a website which had provided its users
with a link to the unauthorised copies of the photographs on the Australian site. It was
argued that, in providing a link to the photographs without permission, the defendant
had infringed the right to control the ‘communication to the public’ of the work.
However, in the light of the Court of Justice’s case law on Article 3, the Supreme Court of
the Netherlands was uncertain whether such a claim could be justified and, accordingly,
referred the issue to the Court of Justice for a preliminary ruling.

The Court explicitly acknowledged that the ability to communicate via the internet
Intellectual property 8 Copyright infringement and defences; infringement of moral rights page 111
is an important aspect of the right of freedom of expression and information.
Accordingly, it recognised that:

…[I]t may be difficult…for individuals who wish to post such links, to ascertain whether
the website to which those links are expected to lead, provides access to works which are
protected and, if necessary, whether the copyright holders of those works have consented
to their posting on the internet. [46]

As a consequence, where a person posts a link to a work in the course of a non-

profit-seeking activity, the Court considered that it was necessary to take account of
the fact that they do not know, and cannot reasonably know, whether the work has
been published with the consent of the copyright holder. Without such knowledge,
liability did not arise. By contrast, if a person knew, or ought to have known, that a link
provided access to a work illegally placed on the internet, they were to be regarded as
having communicated that work to the public.

However, where the posting of a link was carried out in the course of profit-making
activities, the situation was to be analysed differently. In such a case, the person
posting a link to a work could be expected to carry out checks to establish whether the
work had been lawfully published or not. On the basis of this expectation, a rebuttable
presumption arose that the act of posting a hyperlink to a work illegally placed on
the internet would constitute a ‘communication to the public’ under Article 3(1) of
Directive 2001/29.

In C-527/15 Stichting Brein v Wullems (‘Filmspeler’), the CJEU considered the boundaries of
the concept of ‘communication to the public’ once again. In Stichting Brein, the Court
built on this jurisprudence in holding that the distribution of a media player with
preloaded links to websites that carried infringing materials was itself a communication
to the public for the purpose of the Information Society Directive (Article 3). This finding
extends the scope of the right of communication of the public because in GS Media the
link under consideration was a link to a specific infringing work. However, in Stichting
Brein, the links were to websites which habitually carried unspecified infringing works.

In C-161/17 Land Nordrhein-Westfalen v Renckhoff, the Court of Justice held that the
concept of communication to the public under Article 3(1) of the Information Society
covered the reposting on a school’s website of a photograph that had been previously
published without restriction and with the consent of the copyright holder on another
website. This judgment confirms that the GS Media approach outlined above applies
only to linking and not to reposting.

In C-753/18 STIM v Fleetmanager Sweden AB, a reference from the Swedish courts, the
CJEU considered whether vehicle hire companies communicated works to the public
through the short-term hire of vehicles equipped with radios/CD players. The Court
held that, in order to constitute a communication to the public, a user’s intervention
must necessarily communicate the content of a work. In this instance, that condition
was not satisfied. The hire companies just provided customers with vehicles equipped
with radios. In such circumstances, the hire companies provided physical facilities for
enabling a communication to the public, which does not constitute a communication
to the public (see recital 27, Information Society Directive).

A number of UK cases provide illustrations of the liability which can be incurred under
s.20 CDPA by communicating a copyright work to the public. These include:

u Twentieth Century Fox Film Corp v Newzbin [2010] EWHC 608 (Ch) in which N’s
website contained a searching and indexing facility which enabled its members to
download films

u MGN Ltd v Grisbrook [2010] EWCA Civ 1399 in which, by making copies of back-issues
of newspapers available to the public on its website, a newspaper publisher had
infringed the copyright of a photographer whose images had been reproduced, as
exploitation by electronic means was different from that originally contemplated
by the parties

u Dramatico Entertainment Ltd v BSB Ltd [2012] RPC 665, in which a number of internet
service providers were directed by the court to deny access to a file-sharing website.
page 112 University of London
u Wheat v Google LLC [2020] EWHC 27 (Ch), in which the Court applied Svensson in
holding that Google’s ‘hotlinks’ to the claimant’s images did not constitute an
actionable communication to the public because the claimant’s works had not
been communicated to a ‘new public’. ‘Hotlinks’ result in the display of an image on
a linker’s website (without the link to the original website being obvious to a user).

u Wheat v Google LLC should be contrasted with Warner Music UK Ltd v Tunein Inc
[2019] EWHC 2923 (Ch). In his complex judgment in Warner Music, Birss J considered
an issue that was not clearly covered by either Svensson or GS Media. Among
other things, he considered the situation of a link to a work where its display was
permitted on the original website located outside the UK (as a result of a statutory
permission) but in relation to which that permission applied only to that other
jurisdiction. According to Birss J, in such a situation, the ‘new public’ approach
deriving from Svensson applied (because the original posting was permitted) and
it was necessary to consider the scope of the copyright owner’s deemed consent
to the original posting. In this instance, the copyright owner was held to have
implicitly consented to access by normal search engines but not to access by a
commercial service like the defendant’s (which aggregated links to radio stations
across the globe and integrated them within its own website). In Warner Music UK
Ltd v Tunein Inc [2021] EWCA Civ 441 the Court of Appeal upheld Birss J’s judgment.
Agreeing that links directed to sites on which works were posted without need for
a right-holder’s permission in another jurisdiction (because that other jurisdiction
operated statutory licensing systems for the playing of those copyright works)
made works available to the public in the UK, when they were targeted at users
in the UK. Any apparent tension between this case and Wheat v Google LLC may be
explained by the different forms of consent deemed to have been given to the
original consensual postings of the works by the claimant copyright owners.

8.2.5 Adaptation
As provided for by s.21, the copyright owner can control how a literary, dramatic or
musical work (but no other type) is adapted. Read s.21 carefully now. Note from s.21(3)
what amounts to adaptation. Consider also the effect of s.21(2) with regard to the
defendant’s subsequent conduct in relation to the adapted work.

Summary
The primary acts of copyright infringement found in the CDPA are copying (s.17),
issuing copies to the public (s.18), performing the work in public (s.19), communicating
the work to the public (s.20) and adapting the work (s.21). Copying the work means
reproducing it in any material form. Issuing copies is the act of putting copies of the
work into circulation for the first time, though it remains to be resolved at what stage
in the chain of distribution this occurs. The public performance right is an area of law
where the interests of the copyright owner are looked after by copyright management
societies such as the Performing Right Society. Communication to the public comprises
both broadcasting the work and electronic transmission by the internet. Adaptation
includes translating, converting and arranging the work. Further liability is imposed for
subsequently copying, issuing, performing and communicating the adaptation.

8.3 Secondary infringement

Core text
¢ Bainbridge, Chapter 6 ‘Rights, infringement and remedies’ pp.185–88.

¢ Bently et al., Chapter 8 ‘Infringement’ Section 3 ‘Secondary infringement’.

¢ Cornish, Chapter 12 ‘Infringement of copyright and moral rights’ paras 12–021 to

12−035.

¢ Karapapa and McDonagh, Chapter 4 ‘Infringement of copyright’ Section 4.6.

Intellectual property 8 Copyright infringement and defences; infringement of moral rights page 113

Essential reading
¢ Cases: LA Gear Inc v Hi Tec Sports plc [1992] FSR 121.

¢ CDPA, ss.22–27.

The principal forms of secondary infringement are set out in ss.22 and 23 of the
CDPA. Read these two sections carefully now. They are aimed at those who deal
commercially with infringing copies of copyright works. Liability is not confined to
retailers. In Pensher Security Door Co Ltd v Sunderland City Council [2000] RPC 249 (CA),
a local authority which had installed security doors in a block of flats was found liable
under s.23(a) as the doors infringed the claimant’s design.

The wording of ss.22 and 23 require proof of two additional elements besides the
commission of conduct listed in the two provisions. First, the claimant must show that
the defendant had knowledge. This stems from wording appearing in both sections
‘which he knows or has reason to believe’. It imposes an objective test, so that the
defendant is judged by the standards of those in that particular trade: LA Gear Inc v
Hi-Tec Sports plc [1992] FSR 121. The copyright owner can always give notice by writing to
the defendant, in which case the court will assume that the defendant has knowledge
within three weeks from the date of the letter: Monsoon Ltd v India Imports of Rhode
Island [1993] FSR 486.

The other requirement in ss.22 and 23 is that the defendant must be dealing in
infringing copies. The definition of ‘infringing copy’ is to be found in s.27. This is not an
easy section to understand. It is derived in part from its predecessor in the Copyright
Act 1956 and arguably is in conflict with s.18 (which, as noted above, is derived from EU
directives and creates intra-EU exhaustion of rights). It is best to break down s.27 into a
series of discrete steps.

u Section 27(2) provides that an article is an infringing copy if its making constituted
an infringement. This is straightforward and contemplates that the making of
the copy was done without the consent of the copyright owner. The provision
therefore applies to all counterfeit products wherever made.

u Section 27(3) provides that an article is also an infringing copy if it has been or
is proposed to be imported into the UK and its making in the UK would have
constituted an infringement of the copyright or a breach of an exclusive licence.
The subsection only applies where goods have been imported into the UK. Under
the first of its alternatives, it requires the court to assume that the goods were
made in the UK rather than in their actual place of manufacture. According to
Browne Wilkinson J in CBS Ltd v Charmdale [1980] 2 All ER 807 (decided under the
Copyright Act 1956), the court should assume that the making in the UK was by the
actual manufacturer of the goods. Where (as in CBS) the goods were made by the
copyright owner in another country, this gives rise to international exhaustion of
rights. Under the second alternative, where the copyright owner has appointed
an exclusive licensee, then even if the goods are parallel imports, the act of
importation converts them into infringing copies for the purposes of ss.22 and 23.

u Section 27(5) declares that nothing shall be construed as applying to an article

which may lawfully be imported into the UK by virtue of any enforceable EU right
under s.2(1) of the European Communities Act 1972. This is an enactment of the
doctrine of exhaustion of rights created by the CJEU under Articles 34 and 36 of the
Treaty on the Functioning of the European Union (TFEU) (formerly Articles 28 and 30
EC) (exhaustion of rights is dealt with in more detail in Chapter 13).

Summary
The acts of secondary infringement are set out in ss.22 to 27 of the CDPA. The principal
forms of liability in ss.22 and 23 are targeted at, but not confined to, retailers. Secondary
infringement requires the defendant to have knowledge and to be dealing in infringing
copies. As a result of the wording of s.27, counterfeit goods will always be treated as
infringing copies (s.27(2)). Parallel imports from within the EEA cannot be infringing
copies (s.27(5)). Parallel imports from outside the EEA may or may not be infringing
copies depending on whether the copyright owner has appointed an exclusive licensee.
page 114 University of London

8.4 Defences to copyright infringement

Core text
¢ Bainbridge, Chapter 7 ‘Defences to copyright infringement’ pp.211–30, 239–40.

¢ Bently et al., Chapter 9 ‘Defences’.

¢ Cornish, Chapter 12 ‘Infringement of copyright and moral rights’ paras 12–036 to

12−063.

¢ Karapapa and McDonagh, Chapter 5 ‘Defences’.

Essential reading
¢ Cases: Pro Sieben Media AG v Carlton UK Television Ltd [1999] 1 WLR 605; IPC
Media Ltd v News Group Newspapers Ltd [2005] FSR 35; Fraser-Woodward Ltd v
British Broadcasting Corporation & Brighter Pictures Ltd [2005] FSR 762; Football
Association Premier League v Panini (UK) Ltd [2003] FSR 698; Beloff v Pressdram
[1973] RPC 765; Lion Laboratories v Evans [1984] 2 All ER 417; Hyde Park Residence
Ltd v Yelland [2000] 3 WLR 215; Ashdown v Telegraph Group Ltd [2001] 4 All
ER 666; HRH Prince of Wales v Associated Newspapers Ltd [2007] 3 WLR 222;
C-201/13 Deckmyn v Vandersteen EU:C:2014:2132; C-476/17 Pelham GmbH v Hütter
EU:C:2019:624.

Further reading
¢ Griffiths, J. ‘Copyright law after Ashdown – time to deal fairly with the public’
[2002] IPQ 240.

¢ Burrell, R. ‘Reining in copyright law: is fair use the answer?’ [2001] IPQ 361.

Those who are sued for copyright infringement can adopt a number of tactics.

u They can deny that what has been taken is a copyright work. This might involve
arguing that what has been taken is an idea rather than expression (Baigent & Lee
v Random House) or that what has been taken is not protected because it does not
meet one or more of the requirements for copyright protection (see Chapter 7).

u They can allege that the claimant is not the copyright owner and so not entitled to
bring the action (see as an example Beloff v Pressdram Ltd [1973] RPC 765 where the
employer not the employee should have sued for infringement).

u They can deny that the basic elements of copyright infringement have been
established. In other words, they can argue that there has been no taking of the
claimant’s work (for example, because of independent creation) or that what has
been taken is not substantial.

u They can deny that any act of primary or secondary infringement has been
committed.

u They can argue that they had a licence (that is, the copyright owner’s consent) to
do one or more of the restricted acts.

u They can plead one or more of the numerous statutory defences in the CDPA.

u They can plead one or more of the non-statutory defences.

We shall concentrate on these last two tactics, but when dealing with copyright
infringement questions in the examination you should always consider whether the
facts give rise to one or more of the other arguments.

Statutory defences found in Part I Chapter III of the CDPA are numerous (there are well
over 50) and detailed. You are not expected to be familiar with all of them, as many
apply to very specific circumstances. We shall consider only a limited number of these
provisions.

In 2014, major reform of the UK’s regime of limitations and exceptions took place.
A number of existing defences under the CDPA were extended (see, for example,
in relation to research, education, libraries and the use of works by people with
Intellectual property 8 Copyright infringement and defences; infringement of moral rights page 115
disabilities). Some new defences were also introduced. The most noteworthy new
defences covered uses for the purposes of making certain personal copies for private
use and fair dealing for: (i) quotation; (ii) caricature, parody and pastiche; and (iii) text
and data mining for the purpose of non-commercial research.

8.4.1 The fair dealing defences

In contrast to US copyright law (which has a general, flexible defence of ‘fair use’) UK
defences relating to fair dealing with a copyright work are precise and detailed. They
are set out in ss.29, 30 and 30A. Read these sections carefully now. Note the following
about these sections.

u They all depend on the specific factual context in which the infringing behaviour
was committed.

u Some apply to all categories of work, while some apply only to certain categories.

u Some contain the requirement that the use of a work is accompanied by a

‘sufficient acknowledgment’ of that work and its author.

The fair dealing defences found in these sections are as follows.

Non-commercial research
Section 29(1) was amended by the Copyright and Related Rights Regulations 2003.
It is confined to literary, dramatic, musical or artistic works and requires a sufficient
acknowledgement, unless this is not practical. ‘Commercial research’ is not defined.

Private study
Section 29(1C) was inserted as a replacement for the previous version of this defence
by the Copyright and Related Rights Regulations 2003. Again, it only applies to literary,
dramatic, musical or artistic works. Section 29(3) stipulates that copying must be
done by the researcher or student themselves and does not extend to the making of
more than one copy. ‘Private study’ is further explained by the 2003 Regulations as not
including any study which is directly or indirectly for a commercial purpose.

Criticism or review
Section 30(1) was amended by the Copyright and Related Rights Regulations 2003. It
covers all types of copyright work, but requires the use of a sufficient acknowledgement
and that the work has been made available to the public. ‘Made available’ for the
purposes of fair dealing is defined in s.30(1A). Read the definition in s.30(1A) now.

Reporting current events

Under s.30(2), fair dealing with any work (other than a photograph) is permitted
for the purposes of reporting current events provided that it is accompanied by a
sufficient acknowledgement, but no acknowledgement is required in connection
with the reporting of current events by means of a sound recording, film or broadcast
where this would be impossible for reasons of practicality or otherwise.

In England & Wales Cricket Board & Sky v Tixdaq and Fanatix Ltd [2016] EWHC 575, Arnold
J made an interesting distinction between ‘reporting current events’ and presenting
images to an audience for consumption for their own intrinsic value. The latter form of
activity was not covered by s.30(2), according to the judge. He did, however, confirm
that, in different circumstances, ‘citizen’s journalism’ might potentially be covered by
the defence.

Quotation
Under s.30(1ZA), copyright in a work is not infringed by the use of a quotation from
the work (whether for criticism or review or otherwise) provided that four conditions
are satisfied. First, the work must have previously been made available to the public.
Second, the quotation must constitute ‘fair dealing’. Third, the extent of the quotation
is no more than is required by the specific purpose for which it is used and, finally, the
quotation must be accompanied with a sufficient acknowledgement.
page 116 University of London
In C-476/17 Pelham GmbH v Hütter EU:C:2019:624 and C-516/17 Spiegel Online GmbH v
Volker Beck EU:C:2019:625, the CJEU considered a number of questions concerning
the scope of the quotation exception under Article 5(3)(d). The Court’s answers to
these questions will guide UK courts in their interpretation of the defence set out in
s.30(1ZA). In Pelham the Court stated that:

As regards the usual meaning of the word ‘quotation’ in everyday language, it should
be noted that the essential characteristics of a quotation are the use, by a user other
than the copyright holder, of a work or, more generally, of an extract from a work for
the purposes of illustrating an assertion, of defending an opinion or of allowing an
intellectual comparison between that work and the assertions of that user, since the user
of a protected work wishing to rely on the quotation exception must therefore have the
intention of entering into ‘dialogue’ with that work…

On that basis, it was held that the concept of quotation could not extend to a situation
in which it is not possible to identify the work concerned by the quotation in question
(because there could be no ‘dialogue’ in those circumstances). In Spiegel Online,
it held that the concept of quotation could, so long as all the requirements of the
provision are satisfied, cover a reference by means of a hyperlink to a file that can be
downloaded independently ([75]–[84]). It also held that the notion of ‘lawfully made
available to the public’ under the provision should be interpreted as referring to
situations in which the work, in its specific form, had previously been made available
to the public with the rightholder’s authorisation or in accordance with a non-
contractual licence or statutory authorisation ([85]–[95]).

Caricature, parody or pastiche

Prior to 2014, there had been considerable uncertainty whether the parody of a
copyright work would: (i) escape a finding of infringement of copyright; and/ or (ii)
be covered by one of the existing fair dealing exceptions. Doubts were set to rest
with the introduction of a defence covering parody in that year. This brief provision
implemented an option available under the Information Society Directive and
provides that fair dealing with a work for the purposes of caricature, parody or
pastiche will not infringe copyright in the work. In C-201/13 Deckmyn v Vandersteen,
the Court of Justice defined the scope of the exception for the purpose of ‘caricature,
parody or pastiche’ in Article 5(3)(k) of the Information Society Directive. Its view on
this issue will have a significant bearing on the interpretation of the UK’s defence
of ‘fair dealing for the purpose of caricature, parody or pastiche’ under s.30A CDPA.
The Court held that two conditions must be satisfied for a defendant’s use of a work
to come within an exception for ‘parody’. First, the parody had to evoke the original
work while being noticeably different from it and, second, the defendant’s use had to
constitute an expression of humour or mockery. The Court also held that a national
court interpreting the ‘parody’ exception must ensure a ‘fair balance’ between the
property rights of the copyright holder and the parodist’s freedom of expression.

Some scholars advocate the reform of UK defences, towards a fair use standard.
However, it is noteworthy that even where reforms to defences have occurred –
such as the introduction of the parody and pastiche exception in 2015 legislation
– these defences tend to be interpreted narrowly. In fact, the inherent weakness
of the parody/pastiche defence to copyright infringement is illustrated by Shazam
Productions Ltd v Only Fools The Dining Experience Ltd [2022] EWHC 1379 (IPEC). Here,
copyright infringement was held to have occurred where characters from the popular
sitcom Only Fools and Horses were copied and used in a performative context – and,
critically, an attempt to raise the fair dealing parody defence was rejected. The court
found that the use of the ‘Del Boy’ character at catering events was not a genuine
parody, taking into account the EU case of C-201/13 Deckmyn v Vandersteen. The court
also rejected the idea that the use of the character could be considered as a pastiche.

Application of the fair dealing defences

The onus is on the defendant to establish two things: that the circumstances of the
defence are established and that the dealing was fair.
Intellectual property 8 Copyright infringement and defences; infringement of moral rights page 117
Whether the relevant circumstances (that is, review, reporting current events, etc.)
covered by ss.28–31 have been met is an objective test, to be determined by the court
not the parties: Pro Sieben Media AG v Carlton UK Television Ltd [1999] 1 WLR 605. The
terms ‘criticism’, ‘news’ and ‘current events’ should be given a wide meaning: Pro
Sieben and Hyde Park Residence Ltd v Yelland [2000] 3 WLR 215. In relation to ‘current
events’ you should note the debate in the last-mentioned case as to the period during
which an event might remain current. In HRH Prince of Wales v Associated Newspapers
Ltd [2007] 3 WLR 222 it was held that the publication of the claimant’s private diaries
written some 10 years previously was not covered by the ‘current events’ defence.

However, ‘criticism and review’ does not cover use of the claimant’s copyright
material for the purposes of making a comparative advertisement so as to boost the
defendant’s own sales: IPC Media Ltd v News Group Newspapers Ltd [2005] FSR 752. You
should note that ‘criticism and review’ cover both criticism of the claimant’s work
and of ‘another work’. It extends to underlying ideas and values such as the role of
the media in promoting celebrity status: Fraser-Woodward Ltd v British Broadcasting
Corporation & Brighter Pictures Ltd [2005] FSR 762. This last-mentioned case deals also
with the defence of incidental inclusion and should be studied carefully.

However, it is not enough for the defendant to show that their conduct falls within the
circumstances of the four sections. They must also show that their use of the copyright
work was fair. What is ‘fair’ is a question of fact in each case. Matters to be taken into
account include the amount of the original work that is taken, the purpose of the
use, the necessity of such use, whether the original work has already been published
and the motives of the copier: Pro Sieben Media AG v Carlton UK Television Ltd [1999] 1
WLR 605. Pro Sieben confirmed earlier cases decided under the Copyright Act 1956
concerned with fair dealing, in particular Hubbard v Vosper [1972] 2 QB 84 (which held
that even though a small amount is taken by the defendant, this is not conclusive as
to fairness), Sillitoe v McGraw Hill [1983] FSR 545 (the purpose of the taking must be
considered) and Associated Newspapers v News Group Newspapers [1986] RPC 515 (the
defendant’s motives must be taken into account).

In HRH Duchess of Sussex v Associated Newspapers Ltd [2021] EWCA Civ 1810 the Court of
Appeal recognised the degree of originality of a protected work as a relevant factor
to be taken into account in deciding whether a particular dealing with a work is ‘fair’
under s.30(2) CDPA 1988. This seems sensible, as it recognises that the strength of a
copyright claim may vary significantly from case to case (from a security video, for
example, at one end of the spectrum, to a symphony or major novel, at the other).
However, the degree of originality had not previously been identified as a relevant
factor in determining fairness in the case law on fair dealing (for example, by the Court
of Appeal in Ashdown).

Activities 8.3 and 8.4

8.3 Go over the material on the general defence of fair dealing. Then complete the
following chart by listing the categories of work which are covered by each
defence and the conditions which the defendant must satisfy as part of that
defence (for example, whether due acknowledgement is required).

Defence Categories of work covered Conditions to be satisfied

Making temporary copies

Non-commercial research

Private study

Criticism or review

Reporting current events

Incidental inclusion

Quotation

Parody

No feedback provided.
page 118 University of London
8.4 Read the Court of Appeal decision in Pro Sieben Media AG v Carlton UK Television
Ltd, then write a concise summary of the principles given in the case about the
application of the fair dealing defences.

8.4.2 Other statutory defences

Some other statutory defences of general application should be noted.

Making temporary copies

Section 28A was inserted by the Copyright and Related Rights Regulations 2003. It
does not apply to computer programs, databases or broadcasts. The temporary copy
must be an ‘integral and essential part’ of a technological process concerned with the
internet, such as caching, and must have no independent economic significance. The
Supreme Court has considered the defence under s.28A in Public Relations Consultants
Association Ltd v Newspaper Licensing Agency Ltd [2013] RPC 469. Applying the CJEU’s
ruling in Infopaq, the Supreme Court held that the storage of material in a temporary
internet cache falls within the defence. The decision has subsequently been endorsed
by the Court of Justice.

Incidental inclusion
Section 31(1) provides that copyright in any work is not infringed by its incidental
inclusion in an artistic work, sound recording, film or broadcast. Note that the section
limits those works in which the source work may be included. The meaning of
‘incidental inclusion’ was considered in Football Association Premier League v Panini (UK)
Ltd [2003] FSR 698 (subsequently confirmed by the Court of Appeal). The outcome of
the case can be contrasted with that in Trebor Bassett Ltd v The Football Association [1997]
FSR 211, where similar facts were unsuccessfully alleged to have given rise to trade mark
infringement (see the requirement of ‘use in relation to goods’ in Chapter 13).

Use of notes of spoken words

This defence is to be found in s.58. Read the section now. You should consider how
s.58 is linked to s.3 of the CDPA, and the latter’s treatment of spoken word copyright.

Activity 8.5
Return to your notes from Chapter 7 on Walter v Lane [1900] AC 539 and Express
Newspapers v News (UK) [1990] 3 All ER 376. Then consider how s.58 would protect a
journalist who records an interview with a celebrity.
No feedback provided.

Time shift
There is the defence found in s.70 for someone making an audio or video recording of
a broadcast. Originally introduced in 1988, the defence was amended by the Copyright
and Related Rights Regulations 2003. Read the amended s.70 now. Note how the
recording must be made on domestic premises (this is one instance of private and
domestic use providing a defence to copyright infringement) and must be for the
purpose of enabling the broadcast to be viewed or listened to at a more convenient
time. Note also how the defence can be lost under s.70(2). For an unsuccessful attempt
to rely on the original s.70 in a commercial context, see Sony Music Entertainment (UK)
Ltd v Easyinternetcafe Ltd [2003] FSR 882.

Public interest
The defence of ‘in the public interest’ to a claim for copyright infringement is
preserved in effect by the wording of s.171(3) (Ashdown v Telegraph Group Ltd [2001]
4 All ER 666). We discussed the defence in Chapter 5 (‘Breach of confidence’). If you
are unsure about the application of the defence, you should reread your notes from
Chapter 5 now. The effect of the defence is to justify the defendant’s actions in the
light of information which ought to be made known in the interests of society. An
example of the successful use of the defence is Lion Laboratories v Evans [1984] 2 All ER
Intellectual property 8 Copyright infringement and defences; infringement of moral rights page 119
417 (discussed in Chapter 5) and a contrasting decision is that in Hyde Park Residence
Ltd v Yelland [2000] 3 WLR 215. For an interesting combination of fair dealing, public
interest and the Human Rights Act 1998, you should read Ashdown v Telegraph Group Ltd
[2001] 4 All ER 666, discussed in the article by Griffiths listed above. The current trend
in case law is that copyright tends to prevail over the public interest in disclosure:
HRH Prince of Wales v Associated Newspapers Ltd. Indeed, the pre-Brexit case law of the
Court of Justice suggests that the UK was not entitled to retain a defence that is not
to be found in Article 5 of the Information Society Directive, or other provision of EU
copyright law (see, for example, C-476/17 Pelham GmbH v Hütter).

8.4.3 Non-statutory defences

You will come across a number of defences to copyright infringement which are based
on case law rather than the wording of the CDPA.

Acquiescence
The equitable defence of acquiescence may be pleaded where the claimant has made
a misrepresentation to the defendant, on which the defendant relies, to the effect that
copyright will not be enforced: Film Investors Overseas Services SA v Home Video Channel
Ltd, The Times, 2 December 1996. The element of misrepresentation is vital, so that mere
delay in commencing proceedings does not suffice to trigger the defence: Farmer
Build Ltd v Carier Bulk Handling Materials Ltd [1999] RPC 461 (CA). There is a further useful
discussion by the House of Lords on the effect of acquiescence on a claim to be entitled
to royalties as a joint author in Fisher v Brooker [2009] 1 WLR 1764. The importance of
misrepresentation is stressed, thereby making acquiescence very like estoppel.

Equitable defences
As an aspect of the equitable ‘clean hands’ doctrine, the court may refuse to protect
the claimant against the defendant’s infringing conduct. It is necessary to distinguish
between where the claimant’s conduct is not deserving of protection from where the
copyright work itself is disentitled to protection. It is the nature of the work which
matters, not the claimant’s conduct: AG v Guardian Newspapers (No 2) [1990] 1 AC 109;
ZYX Music v King [1995] 3 All ER 1, [1997] 2 All ER 129. The court will not enforce copyright
if the work is immoral, scandalous, contrary to family life, contrary to public health or
safety or the administration of justice or where it incites others to commit such harm:
Hyde Park Residence Ltd v Yelland [2000] 3 WLR 215.

Implied licence
In certain circumstances, a court will be willing to hold that the use of a work by a
defendant has been implicitly licensed (i.e. without any express agreement as to use).
Such an implied licence might arise, for example, where a work is provided openly
to a third party for a particular purpose even though no explicit licence agreement
concerning the use of the work has been entered into (see, for example, Robin Ray v
Classic FM [1998] FSR 622).

Exhaustion of rights
The doctrine of exhaustion of rights in respect of articles which comprise copyright
works (such as books, DVDs, CDs and computer software) states that the copyright
owner cannot object to the importation of copies which have previously been
put in circulation within the EEA, but can object to the issuing of copies which
have previously been put in circulation outside the EEA: Microsoft Corporation v
Computer Future Distribution Ltd [1998] ETMR 597 (see Chapter 13 for further details
on intra-EU exhaustion of rights). The separate rental right found in s.18A of the
CDPA is a deliberate exception to the doctrine of exhaustion: C-61/97 Egmont Films
v Laserdisken [1998] ECR I-5171 (CJEU). In C-479/04 Laserdisken ApS v Kulturministeriet
[2006] ECR I-8086, the CJEU confirmed that the wording of the Information Society
Directive prevents EU Member States from having any doctrine of international
exhaustion of rights with regard to the distribution of copyright works first put into
page 120 University of London
circulation outside the EEA. The distribution of a copy of a work within the EEA with
the rightholder’s consent continues to exhaust the distribution right in that particular
copy of the work post-Brexit.

8.5 Infringement of moral rights

Core text
¢ Bainbridge, Chapter 5 ‘Author’s rights’ pp.127–53.

¢ Bently et al., Chapter 10 ‘Moral rights’.

¢ Cornish, Chapter 12 ‘Infringement of copyright and moral rights’ paras 12–068 to

12–094.

¢ Karapapa and McDonagh, Chapter 6 ‘Moral rights’.

Essential reading
¢ Cases: Clark v Associated Newspapers [1998] 1 All ER 959.

¢ Stamatoudi, I. ‘Moral rights of authors in England: the missing emphasis on the

role of creators’ [1997] IPQ 478 (available in Westlaw via the Online Library).

¢ Ginsberg, J. ‘Moral rights in the common law system’ [1990] Ent LR 121 (available
in Westlaw via the Online Library).

The CDPA, in Part I, Chapter IV, formally introduced the moral rights of the author
into UK copyright law in fulfilment of obligations imposed by Article 6bis of the Berne
Convention. Two of the moral rights (the right of paternity and right of integrity)
derive from the Berne Convention and arise in respect of those categories of copyright
work covered by that Convention (that is, literary, dramatic, musical and artistic works
and films). The other two rights are not the result of the Berne Convention. One (the
right to object to a false attribution of authorship) was present in the Copyright Act
1956. The other (the right of privacy in photographs and films) was inserted belatedly
into the CDPA during its passage through Parliament as a result of changes to the
ownership of photographic copyright.

When going through the material which follows on moral rights, particularly those
which flow from the Berne Convention, you should consider critically whether the
adoption of moral rights can be considered consistent with the UK’s entrepreneurial
view of copyright. Further, when looking at the relevant provisions of the CDPA,
you should reflect on whether those provisions are effective in implementing the
objectives of the Berne Convention into UK law.

Infringement of any of the moral rights is actionable as a breach of statutory duty:

s.103 of the CDPA. Such infringement is actionable by the author of the work, not
any subsequent owner to whom the copyright might have been assigned: Confetti
Records v Warner Music UK Ltd [2003] EMLR 790. You should therefore keep in mind the
distinction between authorship and ownership, discussed in Chapter 7.

8.5.1 The right of paternity

The author of a literary, dramatic, musical or artistic work or film has the right to
be identified as its author (s.77). Read the section now. Note when the right arises
(s.77(2)–(6)) and what ‘identification’ means (s.77(7)–(8)). In order for the right to arise,
it must be asserted. This is provided for by s.78. You should read this section now.
Note when and how the right is to be asserted, and the effect of assertion on third
parties. Section 79 provides for when the right does not arise. This may be because of
the nature of the work (s.79(2)) or if the work is created in the course of employment if
the employer consents to the relevant infringing act (s.79(3)). Lastly, note how the fair
dealing defences apply to infringement of the right of paternity (s.79(4)–(6)).
Intellectual property 8 Copyright infringement and defences; infringement of moral rights page 121

8.5.2 The right of integrity

The author of a literary, dramatic, musical or artistic work or film has the right to object
to its derogatory treatment (s.80). Read the section now. This moral right does not
have to be asserted, but you should note the narrow definitions of both ‘treatment’
and ‘derogatory’ in s.80(2). The owner can only object to the distortion, modification
or mutilation of the work if such treatment is prejudicial to the honour or reputation
of the author: Confetti Records v Warner Music UK Ltd.

The right is infringed in the circumstances listed in s.80(3)–(4) and s.83. As with the
right of paternity, there are numerous exceptions and qualifications to the right, found
respectively in ss.81 and 82. Read these two sections now.

There is little UK case law so far on moral rights. The courts have adopted an objective
approach to the question of what is derogatory (rather like the test for what is
defamatory) so that the author’s feelings are not taken into account: Tidy v Trustees of the
Natural History Museum [1996] EIPR D-81 and Pasterfield v Denham [1999] FSR 168.

8.5.3 Other moral rights

Under s.84, a person can object to the false attribution of authorship of a literary,
dramatic, musical or artistic work or the false attribution of being the director of a
film. An example of s.84 in operation is Clark v Associated Newspapers [1998] 1 All ER 959,
where the claimant successfully alleged that a satirical newspaper column entitled
‘Alan Clark’s Secret Election Diary’ would be assumed by readers to be his work. The
defendant’s indication that the column had been written by another was in a typeface
too small to be noticed by the average reader.

As mentioned above, s.85 was added to the CDPA in the latter stages of its progress
through Parliament. It creates a right of privacy in photographs and films which have
been commissioned for private and domestic purposes.

8.5.4 General provisions

The duration of moral rights is catered for by s.86. With the exception of the right found
in s.84, the duration of moral rights is coterminous with the duration of copyright. The
right to object to false attribution lasts for the lifetime of the person wrongly attributed
as author and for 20 years after their death. Moral rights remain personal to the author
and cannot be assigned, but they pass on death or bankruptcy in accordance with the
usual rules (ss.94 and 95). The author may however consent to conduct which would
otherwise infringe and may also waive their rights (s.87).

Activity 8.6
Go over the above material on moral rights, then write a concise summary of the
provisions in the CDPA dealing with the following matters in respect of the right of
paternity and the right of integrity:
u the statutory definition of the right
u the conditions, if any, to be satisfied before the right arises
u the circumstances in which the right can be infringed
u the circumstances in which the right does not apply or will be deemed not to
have been infringed.
No feedback provided.

Sample examination questions

Question 1 ‘English law does not provide adequate protection for moral rights, in
particular in relation to authors who do not own the copyright in works that they
have created.’
Discuss.
page 122 University of London
Question 2 In the summer of 2018, Shelley, a famous poet, wrote a poem to English
football entitled ‘We will win’, timed to coincide with the World Cup. He recited
this poem at a formal dinner held for the England players, the team organisers
and other special guests. David, one of the England players, responded with an
impromptu speech thanking Shelley for his support. Unbeknown to Shelley or
David, a reporter from The Daily Grime newspaper was present at the dinner. The
reporter recorded the evening’s events. The exact wording of David’s speech and
Shelley’s poem were reported in The Daily Grime newspaper the next morning.
The following week, England played Guatemala in the World Cup and lost 4–0.
Magnus, a columnist in The Daily Grime, wrote a humorous poem entitled ‘We will
lose’. Each verse reproduced a verse of Shelley’s poem, except that the word ‘lose’
was always substituted for the word ‘win’. The verses were interspersed with a
chorus which reproduced one line from David’s impromptu speech.
Louise read the ‘We will lose’ version of the poem in The Daily Grime newspaper.
Later the same day, she started to write the words to a new song. The song was
called ‘The losers’ and it contained passages which were remarkably similar to the
poem in The Daily Grime. When asked by her best friend, Susie, how she wrote the
lyrics, Louise answered ‘the words just came to me’. Susie then added the music to
Louise’s words.
Susie is a member of the pop group, the Cheaters. The Cheaters recorded and
released ‘The losers’ earlier this year. The song was distributed by Swerve Records
and became a commercial success.
Advise Shelley and David.

Advice on answering the questions

Question 1 A good answer will:

u explain how moral rights were introduced into the CDPA in order to meet the UK’s
obligations under the latest version of the Berne Convention

u set out the rights found in Chapter IV Part I of the CDPA and explain how they can
be infringed

u concentrate on the rights of paternity and integrity, commenting critically on the

definition of each of these rights

u consider critically the conditions attached to the right of paternity, especially the
need to assert the right on assignment of the copyright in the work, and consider
whether in the light of potential inequality of bargaining power between publisher
and author such a requirement is appropriate

u consider also in relation to the right of paternity whether the requirement of

assertion is consistent with the civil law view of copyright as an aspect of the
natural law rights of the author

u consider critically the exclusions and exceptions imposed on these two rights by
the terms of the CDPA

u consider critically whether the limited case law available so far on the right of
integrity protects the interests of the author

u conclude by discussing whether the UK copyright system, which treats copyright as

an economic right, can readily adjust to civil law concepts of copyright as an aspect
of the author’s personality.

It is expected that a good answer will make use of the arguments raised by the
authors of various articles referred to in this module guide and in the recommended
textbooks.

Question 2 A good answer will:

a. Begin by considering what copyrights exist, and whether the conditions for
copyright protection are met.
Intellectual property 8 Copyright infringement and defences; infringement of moral rights page 123
u Both Shelley and David are potentially the authors of literary works under s.3 of
the CDPA.

u Are these original? Is David’s speech sufficient to attract copyright protection?

u Have they been recorded? Shelley’s poem presumably is already written

down (the question says ‘he wrote’ and ‘he recited’), but David’s speech is
‘impromptu’. Have David’s words been recorded in accordance with s.3(2) of
the CDPA? Consider the effect of the reporter’s recording in the light of Walter
v Lane and Express Newspapers v News (UK).

u Are the authors ‘qualifying persons’?

u Who would be the owner of each of the two works?

b. Consider next the various acts of infringement which may have been committed.
Take the facts chronologically.

u The reporter at the dinner. He copies (s.17) Shelley’s poem by means of

the recording but only ‘fixes’ David’s speech – can he simultaneously fix
and infringe? (See the Phillips article discussed in relation to spoken word
copyright in Chapter 7.)

u Magnus copies Shelley’s poem (consider the parody cases, especially those
where only minor changes were made to the source work) and David’s speech.
Is there substantial taking? Would taking one line of a speech suffice? Has
Magnus exercised enough skill, labour and judgment for him (or his employers)
to acquire copyright in what he has written (consider ZYX Music v King)?

u The Daily Grime will have issued copies of the works to the public.

u Louise has indirectly copied Shelley’s and David’s works by copying Magnus’s
work (assuming the last-mentioned could claim copyright); subconscious
copying suffices. It is important to understand the chain of copying here (from
Shelley to Magnus to Louise): Solar Thompson v Barton is a useful illustration of
how indirect copying can occur.

u Susie has added her own musical copyright and so does not infringe anything.

u The Cheaters and Swerve Records have copied by means of a sound recording
(s.17) of a work (the words of the song) which is an indirect copy of the poem
and the speech; copies of the sound recording have been issued to the public
(s.18); there may also be public performance (s.19).

c. Consider lastly whether there are any defences available to any of the defendants.
The most appropriate would be:

u for the newspaper, use of the recording of spoken words (s.58 – but consider
whether the conditions are met)

u for the newspaper, reporting current events. Consider in detail whether

Magnus and The Daily Grime could meet the exacting standards set out by the
Court of Appeal in Pro Sieben.
page 124 University of London

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.

Tick a box for each topic. Ready to Need to Need to

move on revise first study again

I understand the nature of copyright infringement.

  
I can explain and apply the statutory provisions
relating to primary and secondary infringement of
  
copyright.

I can explain and apply the principal statutory and

non-statutory defences to an action for copyright
  
infringement.

I understand how infringement of moral rights

dovetails with infringement of copyright.   

I can list the various ways in which a copyright work

may be infringed.   

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

8.1 The nature of copyright infringement  

8.2 Primary infringement  

8.3 Secondary infringement  

8.4 Defences to copyright infringement  

8.5 Infringement of moral rights  

9 Designs

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 126

9.1 Overview of the various means of protecting designs . . . . . . . . . . 127

9.2 The registration system . . . . . . . . . . . . . . . . . . . . . . . . . 128

9.3 Copyright protection for designs . . . . . . . . . . . . . . . . . . . . 131

9.4 Statutory provisions curtailing copyright . . . . . . . . . . . . . . . . 132

9.5 Unregistered design right . . . . . . . . . . . . . . . . . . . . . . . . 135

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . 145

page 126 University of London

Introduction
Design law exists to protect the appearance of articles rather than the articles
themselves: it is concerned with how things look. The underlying idea behind the
law of designs is that it involves two distinct elements: an article or product and some
added ingredient – a design feature which enhances the appearance of the article. It is
this design feature which receives legal protection, not the product (unless, of course,
the product qualifies in its own right for patent protection). Further, the law makes
an unquestioning value judgment that articles which have a visual impact on the end
user are more deserving of protection than functional items, by conferring, in the case
of the former, a longer period of protection and by providing much narrower defences
to an infringement action. In contrast to patents or copyright, there is little academic
literature exploring the justifications for the design system and it is generally assumed
that the theories as to why we have copyright (see Chapter 6) or patents (see Chapter
15) are equally applicable to designs.

The law on designs has been described as ‘multi-layered, complex, and lacking in logic’
(Bently et al.). A designer has a number of legal methods with which to protect their
creative endeavours.

While you should be aware of the existence of these cumulative systems, your syllabus
requires you to concentrate on just two, namely copyright and UK unregistered design
right. You should therefore treat the materials relating to registered design law and
supplementary unregistered design right as background information only.

This chapter will therefore provide an overview of the choices available to a designer
and will explain the registration system in outline but will then concentrate on the
way in which copyright and unregistered design rights interact to provide protection
for the appearance of articles.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u summarise the legal means available to protect designs
u explain when a design can be protected under the law of copyright
u explain the circumstances when copyright protection for designs is excluded
u explain and apply the criteria for the protection of unregistered design right
under UK law
u list the key elements in the definition of an unregistered design right.
Intellectual property 9 Designs page 127

9.1 Overview of the various means of protecting designs

Core text
¢ Bainbridge, Chapter 16 ‘What is a design?’ pp.573–87.

¢ Bently et al., Chapter 25 ‘How design protection arises in the United Kingdom
and the European Union’.

¢ Cornish, Chapter 15 ‘Industrial designs’ paras 15–001 to 15–009.

¢ Karapapa and McDonagh, Chapter 20 ‘Designs’ Section 20.1.

Over the years, UK government policy has fluctuated between insisting that the
designer can only obtain protection by registration and permitting the designer to
choose between registration in accordance with the Registered Designs Act 1949 as
amended (RDA) and copyright (or at least a copyright-type right). Immediately prior
to the introduction of the Copyright, Designs and Patents Act 1988 (CDPA), designers
could choose to register the appearance of their design at the Designs Registry (part of
the United Kingdom Intellectual Property Office (UKIPO)) or, where the design started
out as a drawing, they could rely on the copyright in that drawing to protect any direct
or indirect three-dimensional copy of that drawing. As a result of the decision of the
House of Lords in British Leyland v Armstrong Patents [1986] AC 577, which criticised the
claimant’s reliance on copyright to prevent a third party making spare parts for its
cars, provisions were introduced in the CDPA which considerably curtailed the ability
of a designer to obtain protection through the law of copyright.

In its place there is a copyright-type right, the unregistered design right, though there
is some residual copyright protection available in the case of articles which amount
to artistic works in their own right. The UK unregistered design right is quite unique,
having criteria which are quite different from those applicable in the UK registered
designs system and the supplementary unregistered design right (see Section 9.1.2).

9.1.1 Revision of the Registered Designs Act

Registered designs have more in common with patents (until 1949 patents and designs
were dealt with in the same Act). The RDA was extensively revised, with effect from 9
December 2001, to take account of the EU Designs Directive (Directive 98/71/EC of the
European Parliament and of the Council of 13 October 1998 on the legal protection of
designs [1998] OJ L 289/28). The criteria for registered design protection are now quite
different to those obtaining prior to this date.

9.1.2 European Union regulation

At the same time as directing Member States to amend their national design laws, the
EU also, by means of the Regulation on the Community Design (Council Regulation (EC)
No 6/2002 of 12 December 2001 on Community designs, [2002] OJ L3/1, which came into
force on 5 March 2002), introduced a pan-European system for protecting designs by
means of registration with the European Union Intellectual Property Office (EUIPO) in
Alicante, Spain. The criteria for national and EU protection of registered designs, found
respectively in the Directive and Regulation, are identical. The EU registered design
right provides protection in all EU Member States by means of a single registration.
The same Regulation also provides for informal protection (i.e. not dependent on
registration) by means of an EU unregistered design right. Until the end of 2020, this
system covered the UK. However, from the end of the Brexit transition period, all
registered and unregistered Community design rights were (insofar as they applied to
the UK) converted into UK national rights. All holders of existing registered Community
designs (which covered the whole of the EU, including the UK) have automatically
been granted an equivalent UK right at no additional cost. Holders of unregistered
Community designs, which were in force at the end of the transition period, were
granted an equivalent form of continuing unregistered protection through new
legislation. Furthermore, at the end of the transition period, the UK introduced a
new, purely domestic right (supplementary unregistered design right) equivalent
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to the short-term unregistered design right available under the Community Designs
Regulation (three-year duration).

9.1.3 Complexity of the legal protection of designs

A designer therefore can choose between having:

u a UK registered design (which can last for a maximum of 25 years)

u a UK unregistered design, having a theoretical maximum period of protection of

15 years (which in reality is five years) but with its own unique rules

u a supplementary unregistered design right (for a maximum period of three years

from the date of publication of the design and having the same basic criteria as for
registered designs)

u in limited circumstances, UK copyright.

Relying on a registered design is advantageous in that it is a true monopoly right. A

claimant does not have to show copying of the design when suing for infringement,
but does run the risk of a counterclaim that the design is invalid. By contrast, relying
on unregistered design right or copyright means, on the one hand, that protection is
instantaneous and free but, on the other, the claimant has to prove copying of their
design.

Activity 9.1
You have an English friend who is a designer. She wants legal protection for a
design she developed while working in the UK. Explain her choices, outlining
the maximum duration of each type of protection. What are the advantages and
disadvantages of each type?
No feedback provided.

9.2 The registration system

Core text
¢ Bainbridge, Chapter 17 ‘Community design and the UK registered design’
pp.615–39.

¢ Bently et al., Chapter 25 ‘How design protection arises in the United Kingdom
and the European Union’ Section 3 ‘Applying to register in the United Kingdom’,
Section 4 ‘Applying to register at the European Union Intellectual Property
Office’, Section 5 ‘Community unregistered design right’; Chapter 26 ‘Subject
matter: the requirement that there be a design’.

¢ Cornish, Chapter 15 ‘Industrial designs’ paras 15–010 to 15–031.

¢ Karapapa and McDonagh, Chapter 20 ‘Designs’ Section 20.2.

9.2.1 Registration procedure

United Kingdom registration procedure continues (as before) to consist of filing,
examination by the Designs Registry for compliance with formalities and grant. In
parallel with the EU designs system, there is no longer any examination with regard to
whether the application meets the substantive requirements for registration, it being
left to a third party to challenge the validity of the design in subsequent proceedings.
The application form must show clearly what design is to be protected (photographs
and/or drawings showing the article from various angles are the normal means) and
to indicate the products in which the design will be incorporated or to which it will
be applied. The maximum period for the completion of the registration process is
12 months. Once the registration is granted, it will last for an initial period of five years,
with four further five-year renewal periods possible (maximum of 25 years).
Intellectual property 9 Designs page 129

9.2.2 Definition of ‘design’

Under the RDA s.1(2):

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

u ‘Product’ (s.1(3)) means ‘any industrial or handicraft item other than a computer
program; and in particular includes packaging, ‘get up’ (see further Section 11.4.1),
graphic symbols, typographic type-faces and parts intended to be assembled into a
complex product’.

u ‘Complex product’ (also s.1(3)) means ‘a product which is composed of at least two
replaceable component parts permitting disassembly and reassembly’. You should
note that in contrast to the old law, it is now possible to obtain protection for part
of a product and for its internal features.

9.2.3 Criteria for protection

The amended RDA has two positive criteria which a design must satisfy in order to be
registrable, namely novelty and individual character. The requirement of novelty was
in the old law, but now has a different meaning, the new definition being very similar
to that found in the law of patents (see Chapter 16).

u Novelty now means that a design is new if no identical design or no design

whose features differ only in immaterial details has been made available to the
public before the relevant date. ‘Making available’ bears the patent meaning of
published (whether following registration or otherwise), exhibited, used in trade
or otherwise disclosed anywhere in the world, unless these events could not
reasonably have become known in the normal course of business to the circles
specialised in the sector concerned, or unless the disclosure was in breach of
confidence or unless the disclosure was by the designer within the 12 months
‘grace’ period calculated from the filing/priority date (s.1B(5)). The fact that a
design will not be treated as having been made available to the public where it was
disclosed in breach of confidence, emphasises the practical importance of designs
being kept secret prior to the design application being filed. If it is necessary for
the designer to reveal the design to another before the filing date (for example,
for evaluation or testing), then a suitable confidentiality undertaking should be
obtained. (You should reread your notes on Chapter 5 if you are unsure about
breach of confidence.)

u Individual character means that the overall impression which the design produces
on the informed user differs from the overall impression produced on such
a user by any design which has been made available to the public before the
relevant date (s.1B(3)); in other words, designs are compared through the eyes of a
prospective purchaser to see what impact they have on such a person’s perception.
In deciding whether the design has individual character, the degree of freedom of
the author in creating the design shall be taken into consideration (s.1B(4)). In the
case of component parts of a complex product, these must be visible in normal
use. Hidden parts cannot be considered when determining the extent of novelty
and individual character of the visible parts.

9.2.4 Exclusions from protection

In summary, the exclusions from protection are:

u features dictated by technical function (which is similar to the exclusion for

functional features under the old law) and ‘must fit’ features (although this
exclusion is declared not to prevent the protection of modular systems)

u designs contrary to public policy or morality

u designs for specially protected emblems (a similar list appears in s.4 of the Trade
Marks Act 1994)

u designs which conflict with earlier EU or UK registered designs.

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9.2.5 Ownership and the rights of the owner of a registered design

The rules on ownership are a mirror image of those which apply to the unregistered
design right (explained in detail below). Section 2 of the RDA declares that the design
belongs to the designer, except where it was made in the course of employment, in
which case it is owned by the designer’s employer. Until a recent amendment, the
design belonged to the ‘commissioner’ of a commissioned design. However, the
Intellectual Property Act 2014 removed any reference to the commissioner in the case
of registered designs (s.6).

Identification of the owner of the right is important, because only the owner can sue
for infringement. Section 7(1) RDA declares that registration gives the exclusive right
to use the design and any design which does not produce on the informed user a
different overall impression, with ‘use’ comprising making, offering, putting on the
market, importing, exporting or using a product in which the design is incorporated or
to which it is applied, or stocking such a product for those purposes. This provision is
almost identical to the infringement provisions found in s.60(1) of the Patents Act 1977
(see Chapter 18). You should note that the scope of protection accorded to the owner
under s.7 of the RDA is not limited to the articles for which the design was registered, but
extend to any article to which the design is applied by the infringer (so, for example, a
design for a saucepan lid would infringe if a similar design is applied to a hat).

Defences to infringement (set out in s.7A of the RDA) include consent, private
and domestic use, experimental use, reproduction for educational purposes, use
of equipment on aircraft and ships temporarily within the UK, the importation of
spare parts for the repair of such aircraft and ships, the carrying out of such repairs,
exhaustion of rights and the use of components to repair a complex product. Again,
these defences are very similar to those found in s.60 of the Patents Act 1977 (see
Chapter 18).

9.2.6 Invalidity
The provisions that dictate when a registered design may be declared invalid are set
out in s.11ZA of the RDA. These are, first, that the design in question does not satisfy the
definition of design in s.1(2), that it is not new nor does it have an individual character,
that it is dictated by technical function, that it consists of a specially protected emblem
or that it is contrary to public policy. An application to have the design declared invalid
on any of these grounds may be brought by any person. Other grounds of invalidity are
that the registered proprietor is not entitled to the design, or that the design is similar
to an earlier registered design, or that it infringes on an earlier registered trade mark or
that it infringes an earlier copyright. In the case of these further grounds of invalidity, the
application may only be brought by the owner of the relevant earlier right.

Self-assessment questions
1. What is the meaning of ‘design’ under the RDA?

2. What two features must a design have in order to be registrable?

3. What are the defences to infringement set out in s.7A of the RDA?

Summary
Registration as a means of protection of the appearance of a product creates a true
monopoly and so, in one sense, is the best method of protection. The owner does
not have to prove copying in order to succeed in an infringement action. There is,
however, the time and expense of registration. The RDA, amended to take account
of the EU Designs Directive, contains new provisions containing the definition of
‘design’, the requirements for registration, the grounds of invalidity, ownership and
infringement.
Intellectual property 9 Designs page 131

9.3 Copyright protection for designs

Core text
¢ Bainbridge, Chapter 16 ‘What is a design?’ pp.581–83.

¢ Bently et al., Chapter 29 ‘Copyright protection for designs’.

¢ Cornish, Chapter 15 ‘Industrial designs’ paras 15–032 to 15–037.

¢ Karapapa and McDonagh, Chapter 20 ‘Designs’ Section 20.3.

Essential reading
¢ Chapter 7 of this module guide (on artistic works) and Chapter 8 (on the
meaning of ‘copying’ as a restricted act).

¢ Cases: Wham-O Manufacturing Co v Lincoln [1985] RPC 127; Hensher v Restawile

Upholstery [1976] AC 64; Vermaat & Powell v Boncrest Ltd [2001] FSR 43; Hi Tech
Autoparts v Towergate Two Ltd (Nos 1 and 2) [2002] FSR 15 and 16; Lucasfilm Ltd v
Ainsworth [2009] FSR 2 (Mann J), [2009] EWCA Civ 1328 (CA); C-683/17 Cofemel v
G-Star Raw CV (CJEU).

The CDPA s.4 provides for copyright to subsist in artistic works. The section lists three
principal categories of artistic works. What concerns us are those appearing in s.4(1)(a)
(‘a graphic work, photograph, sculpture or collage, irrespective of artistic quality’) and
s.4(1)(c) (‘a work of artistic craftsmanship’).

With regard to s.4(1)(a), you should recollect from Chapter 7 that the threshold for
protection is very low and that ‘graphic work’ is defined very broadly in s.4(2). An
illustration of this low threshold is the decision in British Northrop v Texteam Blackburn
[1974] RPC 57, where Megarry J held that drawings for machine parts were ‘plainly’
copyright artistic works. Indeed, it has been said that ‘anything which goes beyond
a single line on a piece of paper is a drawing’. You should note further that s.4(1)
(a) includes three-dimensional items such as sculptures, and that ‘graphic work’
includes etchings and engravings. The potential of s.4(1)(a) to protect everyday articles
is illustrated by the decision of the New Zealand court (on similarly worded New
Zealand legislation) in Wham-O Manufacturing Co v Lincoln [1985] RPC 127, and by the UK
decisions in Hi Tech Autoparts v Towergate Two Ltd (Nos 1 and 2) [2002] FSR 254 and 270.
Although now, of course, protection would only be available where the work has been
produced as a result of an author’s ‘own intellectual creation’.

With regard to s.4(1)(c), you should recollect from Chapter 7 that the phrase ‘work
of artistic craftsmanship’ involves a composite concept, so that the work in question
must both be ‘artistic’ and be made by hand by a skilled person. If you have not already
done so, you should read the decisions in Hensher v Restawile and Vermaat & Powell v
Boncrest Ltd listed above. You should also read the first instance judgment in Lucasfilm
Ltd v Ainsworth [2009] FSR 103 (Mann J), as it contains an excellent explanation of
‘sculpture’ and ‘work of artistic craftsmanship’: an understanding of these two
concepts is crucial to the law of designs. The Supreme Court has confirmed the
approach of Mann J at first instance in Lucasfilm Ltd v Ainsworth [2011] UKSC 39.

In C-683/17 Cofemel v G-Star Raw CV, the Court of Justice held that commercially
produced designs could be protected by copyright as long as they satisfied the
definition of ‘work’ applicable in copyright law, and that no further qualification
related to aesthetic effect could be applied by a national court. This throws the
UK’s prior approach to ‘works of artistic craftsmanship’ (see Section 7.1.4) into some
doubt. If the current judicial interpretation of the concept of ‘works of artistic
craftsmanship’ can be viewed as one in which conditions over and above those
inherent in the concept of a work are applied (intention of the creator perhaps, for
example) then there was potential incompatibility with EU law at the point that the
Brexit implementation period came to an end and, therefore, potential continuing
incompatibility with a principle of retained EU Law (see Section 3.3.3).
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In 2022, the IPEC decided a striking out action in the case of WaterRower (UK) Ltd v Liking
Ltd (T/A Topiom) [2022] EWHC 2084 (IPEC). This concerned whether a design for a water
rowing machine could have copyright as: (i) a work of artistic craftsmanship under
the CDPA and the rulings in Hensher [1976] AC 64 and Lucasfilm [2011] UKSC 39; or (ii) as
a work of originality under EU-derived law under C-683/17 Cofemel v G-Star Raw CV and
C-833/18 SI and Brompton Bicycles v Chedech/Get2Get. On the first point, the judge found
that the claimant’s case that the WaterRower is a work of artistic craftsmanship was
not ‘bound to fail’. However, the judge did not conclude that the WaterRower is a work
of artistic craftsmanship – this was left as a matter for the Enterprise Judge who hears
the full trial. The judge stated:

the Claimant has a real prospect of proving that the WaterRower has a real artistic or
aesthetic quality, beyond simply being appealing to the eye, and that the WaterRower
embodies a sufficient degree of both craftsmanship and artistry, with the combination of
these two things leading to the end result.

On the second issue, concerning the ‘EU-derived work of originality’ standard, the
judge stated that the WaterRower met the requirements of being an ‘original object’
under Cofemel and was an ‘expression of the designer’s (Duke) own intellectual
creation’ according to EU law. Thus, there was a real prospect of success and the claim
should not be struck out. In particular, the judge noted that the extent of the technical
constraints on Duke were not such that the idea and expression of the WaterRower
were indissociable. Duke’s creative use and choice of wood could be described as a
creative expression.

The importance of copyright in protecting the appearance of articles is revealed by the

wording of s.17(3) of the CDPA which provides that a two-dimensional artistic work is
‘reproduced in any material form’ by being converted into a three-dimensional form
and vice versa. Hence in LB (Plastics) v Swish Products [1979] RPC 551 (a decision relating
to the identically worded provision in the Copyright Act 1956), the House of Lords
held that the claimant’s two-dimensional drawings for furniture were infringed by the
defendant’s own version of the product.

Copyright has the advantage of giving the designer instant protection but to succeed,
the claimant must show copying, that is, prove derivation and substantial taking
under the test in Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416
discussed in Chapter 8. If you are unclear about the Designers Guild test for copyright
infringement, then you should reread the speech of Lord Millett.

Activity 9.2
Read ss.4(1) and 4(2) of the CDPA carefully, together with the cases listed above
in your Essential reading. Then consider what type of artistic work each of the
following might be.
u A hand-carved piece of furniture.
u A porcelain figurine shaped like a dolphin and made into the base of a table
lamp.
u A doormat made of rubber which has special grooves cut on the underside to
stop it slipping.

9.4 Statutory provisions curtailing copyright

Core text
¢ Bainbridge, Chapter 16 ‘What is a design?’ pp.581–83.

¢ Bently et al., Chapter 29 ‘Copyright protection for designs’ Section 3 ‘Limitations

on the use of copyright’, Section 4 ‘Section 52 and its demise’.

¢ Cornish, Chapter 15 ‘Industrial designs’ paras 15–032 to 15–037.

¢ Karapapa and McDonagh, Chapter 20 ‘Designs’ Section 20.3.2.

Intellectual property 9 Designs page 133

Essential reading
¢ Cases: British Leyland v Armstrong Patents [1986] AC 577; Mackie Designs Inc v
Behringer Specialised Studio Equipment (UK) Ltd [1999] RPC 717; Lucasfilm Ltd v
Ainsworth [2009] FSR 103 (Mann J), [2009] EWCA (Civ) 1328 (CA); Flashing Badge Co
Ltd v Groves [2007] ECDR 308.

Over the years the ability of a designer of a very simple article to rely on the instant
yet long-lasting protection of copyright has attracted criticism, particularly where the
article was derived from a copyright drawing. Because the current restrictions in ss.51
and 52 of the CDPA on the use of copyright to protect designs are the direct result of
case law decided under the Copyright Act 1956, as amended, a brief account of the old
law will help you to gain insight into provisions which are not easy to understand at
first glance.

9.4.1 Historical background to the present restrictions on the use of

copyright to protect designs
The Copyright Act 1956 contained two provisions which attempted to curtail a
designer’s ability to rely on copyright. First, there was the so-called ‘non-expert
defence’ in s.9(8) which provided that where, for example, the defendant had made a
three-dimensional copy of a two-dimensional drawing, there was to be no copyright
infringement if the defendant’s reproduction would not appear, to persons who were
not experts in relation to objects of that description, to be a reproduction of the
artistic work. This provision was not repeated in the CDPA, so nothing further need be
said about it.

Second, in the original version of s.10 of the 1956 Act, there was a deliberate exclusion
from copyright protection of any design which was or could have been registered
under the RDA. This latter provision was interpreted by the Court of Appeal to mean
that designs which were not capable of registration (for example, because they
were for functional rather than aesthetic articles) were not within the exclusion and
therefore got the full benefit of ‘ordinary’ copyright: Dorling v Honnor Marine [1964]
RPC 160, an outcome described as ‘bizarre’ by the Whitford Committee. Section 10 was
amended by the Design Copyright Act 1968 so as to confer copyright protection on
registrable designs but only for a period of 15 years from the date of first marketing.
The designer was therefore given a choice either to claim registered protection or rely
on a shortened term of copyright protection. The amended s.10 was interpreted by
both the Court of Appeal and the House of Lords to have the same scope as the original
s.10, that is, that non-registrable designs based on simple engineering drawings
fell outside the scope of the provision and so still got the full benefit of ‘ordinary’
copyright: see British Leyland v Armstrong Patents [1984] 3 CMLR 102 at 133, 140, [1986]
AC 577. However, in the same case, the House of Lords created the defence of ‘non-
derogation from grant’: where an article which was derived from a copyright drawing
needed repair, the copyright owner could not rely on their copyright in the drawing
to prevent a third party making spare parts. This defence was required in the interests
of public policy to prevent the abusive exploitation of copyright in everyday items.
The invention of such a defence (almost out of thin air, albeit prompted by policy
concerns) created uncertainty and was subsequently criticised.

9.4.2 The restrictions in the CDPA on the use of copyright to protect

designs
Two sections of the CDPA (as originally enacted) which have curtailed the rights of the
copyright owner. One of these has been repealed: CDPA, s.52.

Section 51(1), which remains in force, provides that it is not an infringement of any
copyright in a design document or model recording a design for anything other than
an artistic work to make an article to the design. Under s.51(3) ‘design’ means the
design of any aspect of the shape or configuration (whether internal or external) of
the whole or part of an article, other than surface decoration; and ‘design document’
means any record of a design, whether in the form of a drawing, a written description,
page 134 University of London
a photograph, data stored in a computer or otherwise (these definitions are repeated
in Part III of the CDPA dealing with the unregistered design right). You should note
the breadth of the definition of ‘design document’: any copyright (whether literary
or artistic) which may subsist in the design document will be caught by s.51(1) (per
Pumfrey J in Mackie Designs Inc v Behringer Specialised Studio Equipment (UK) Ltd [1999]
RPC 717 at 720).

Three important observations must be made about the wording of s.51(1).

u First, you should note carefully that the section does not say that copyright
does not subsist in a design document for an article: rather, it declares that the
copyright existing in a design document is not infringed where an article is made
to that design. A designer will therefore have copyright in the design document
(and that copyright will be infringed if a third party merely copies the document
in two-dimensional form), but the designer is unable to sue for copyright
infringement if a third party copies the design document directly or indirectly
in order to make articles. In such a situation, the designer is forced to rely on
the protection offered by the unregistered design right in Part III of the CDPA,
explained in detail below.

u Next, the key word in s.51(1) is the word ‘for’. When applying s.51(1) in the context
of a problem question about design right, you should always ask the question ‘is
this a design document for an article?’ If the design document is not for an article
(e.g. if an artist creates a painting of a bowl of fruit, the painting will not be a design
document for the bowl itself), the section does not apply and any copying in any
format will amount to copyright infringement.

u Last, it must be determined whether the article to be made from the design
document is an artistic work in its own right. If it is (for example, if it is a sculpture
or a work of artistic craftsmanship), then again s.51(1) has no application and the
full force of copyright law (with one exception, explained next) is available to
the designer. If, however, the article is not an artistic work in its own right, then
the designer cannot sue a third party for making articles derived from the design
document but must rely on the unregistered design right. An illustration of this
comes from Jo Y Jo Ltd v Matalan Retail Ltd [2000] ECDR 178 where the claimant’s
clothing design was copied and it was held that s.51(1) prevented them from
suing the defendants for copyright infringement. A more problematic case is BBC
Worldwide Ltd v Pally Screen Printing Ltd [1998] FSR 665 where the defendant had
printed pictures of the ‘Teletubbies’ on T-shirts. Although it was an application for
interim relief (and so the arguments were not made in full) it may be questioned
whether Laddie J was correct to accept the s.51 defence, as the designs were used
as two-dimensional decoration, not to make a three-dimensional article. A case
which neatly illustrates the issue of whether something is or is not an artistic work
in its own right is Flashing Badge Co Ltd v Groves [2007] ECDR 308: here there was a
design for a badge (which of itself was not an artistic work) and a design for the
artwork to be applied to the surface of the badge. The former fell within s.51(1), the
latter did not.

The categories of artistic work which are most likely to be in issue when the s.51
defence is raised are ‘sculptures’ and ‘works of artistic craftsmanship’: for this reason
it is vital that you have read and understood what was said in Lucasfilm Ltd v Ainsworth
about these two concepts.

The other restriction on the use of copyright in relation to designs was, in the past,
found in s.52 of the CDPA. This provided that, where an artistic work had been applied
industrially (that is, the work has been exploited by the mass-manufacture of copies),
after the end of 25 years from first marketing, the work could be copied without
infringing copyright in the work. The effect of this was to cut short the duration of
copyright protection to 25 years (so as to correspond to registered design protection).
However, s.52 has now been repealed. As a result, artistic works which have been
industrially applied now benefit from the same term of copyright as all other forms of
copyright work.
Intellectual property 9 Designs page 135

Activity 9.3
Study the wording of s.51(1) of the CDPA carefully and then decide whether the
creator of the relevant design document can rely on copyright to prevent the
making of three-dimensional articles based on the design document in the
following situations.
u A drawing of a dust collecting bag for a vacuum cleaner.
u A sketch for a wedding dress to be worn by a member of the Royal Family, the
dress being made by hand by the designer’s employees; after the wedding, the
dress is to go on display in the designer’s own gallery.
u A chair which has been copied from a painting of a bedroom scene by a famous
artist.

9.5 Unregistered design right

Core text
u Bainbridge, Chapter 18 ‘The UK unregistered design right’ pp.643–79.
u Bently et al., Chapter 30 ‘UK unregistered design right’.
u Cornish, Chapter 15 ‘Industrial designs’ paras 15–038 to 15–052.
u Karapapa and McDonagh, Chapter 20 ‘Designs’ Section 20.4.

Essential reading
u Cases: Farmer Build Ltd v Carier Bulk Handling Materials Ltd [1999] RPC 461; Ocular
Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289 at 421–430 only; Mark Wilkinson
Furniture Ltd v Woodcraft Designs (Radcliffe) Ltd [1998] FSR 63; A Fulton Company
Ltd v Totes Isotoner (UK) Ltd [2004] RPC 301; Sales v Stromberg [2006] FSR 89;
Rolawn Ltd v Turfmech Machinery Ltd [2008] RPC 663; Landor & Hawa International
Ltd v Azure Designs Ltd [2007] FSR 181; Dyson Ltd v Qualtex [2006] RPC 769; Neptune
(Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172.
As indicated above, the CDPA, having curtailed the use of copyright in relation to
designs for articles, provides the designer with a copyright-type right, of much shorter
duration. The underlying policy is that ‘some protection should be available to give
the manufacturer who has spent money on the design the opportunity to benefit from
his investment, thus providing an incentive to further investment’ (White Paper on
Intellectual Property and Innovation 1986 (Cmnd 9712) para 3.21).

The provisions in Part III of the CDPA are complex. The key to understanding them is
the definition of the unregistered design right found in s.213 of the CDPA. You should
work through the material on s.213 very carefully, making sure you understand each
component.

Once you have mastered the definition of design right, we shall move on to consider how
design right arises under UK law, who is the owner of the right and what the owner can
do to stop others infringing. As you study this later material, you should continually make
comparisons with the law of copyright as set out in Chapters 7 and 8.

9.5.1 The definition of design right

Section 213 of the CDPA should be regarded as providing a composite definition of
design right. Having declared (in subsection (1)) that ‘design right is a property right
which subsists...in an original design’, it then proceeds (in subsection (2)) to define
‘design’ as ‘the design of the shape or configuration (internal or external) of the
whole or part of an article’. You should note the width of this definition, so that, for
example, in the case of a teapot the design could relate to the whole pot, the lid, the
spout, the handle, the internal shape of the lid, etc. (Ocular Sciences Ltd v Aspect Vision
Care Ltd [1997] RPC 289 at 422). Also, there is no need for the design to have artistic
merit or eye appeal, it may not be visible during normal use of the article and it may
(possibly) be invisible to the naked eye. The design may be quite basic, for example,
page 136 University of London
a simple geometric shape: Sales v Stromberg [2006] FSR 89. However, as design right
is concerned with the protection of the design, not the article itself, the design
could well be applied to other articles (see Electronic Techniques (Anglia) Ltd v Critchley
Components Ltd [1997] FSR 401 at 418 where the example is given of a handle for a
spoon which could equally be applied to a fork).

‘Shape’ appears to suggest outward appearance or external form, whereas

‘configuration’ means ‘the relative arrangement of the various parts of an article to
each other’ (Mackie Designs Inc v Behringer Specialised Studio Equipment (UK) Ltd [1999]
RPC 717). The last key word in s.213(2) is ‘article’. This suggests something which is
three-dimensional, but even a ‘flat’ or two-dimensional thing can be an article (see
Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2005] RPC 88 where it was suggested
that a doily could be an article). (A ‘Doily’ is a small ornamental paper or cloth sheet
formerly used when serving cakes, etc. for dessert. Once it was a common household
item, but is rather rare today. A doily is a two-dimensional object.) Examples of articles
in which design right has been recognised include Parker v Tidball [1997] FSR 680
(mobile phone cases); Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289 (contact
lenses); Mark Wilkinson Furniture v Woodcraft Designs (Radcliffe) Ltd [1998] FSR 63 (a
kitchen unit is an article but the whole fitted kitchen is not).

Prior to recent amendment, the definition of ‘design’ in s.213(2) encompassed ‘any

aspect of the shape or configuration (internal or external) of the whole or part of an
article…’. However, under the Intellectual Property Act 2014, the phrase ‘any aspect of’
has been deleted from s.213 CDPA (s.1). The rationale for repealing this element of the
definition is explained in Paragraph 10 of the Explanatory Notes to the 2014 Act:

Subsection (1) limits the protection for trivial features of designs, by making sure that
protection does not extend to ‘any aspect’ of the shape or configuration of the whole or
part of an article. It is expected that this will reduce the tendency to overstate the breadth
of unregistered design right and the uncertainty this creates, particularly in relation to
actions before courts.

The consequences of repeal were considered by HHJ Hacon in DKH Retail Ltd v H Young
(Operations) Ltd [2015] FSR 21 (IPEC). It has been suggested that the distinction between
‘parts’ of an article (which can be protected) and ‘aspects’ of an article or of part of an
article (which cannot be protected post-Intellectual Property Act 2014) is that ‘parts’
must have a concrete quality and ‘aspects’ are claims to ‘disembodied’ designs. In
Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 Carr J stated that:

This raises the subtle question of the difference between ‘parts’ and ‘aspects’ of a
design. In my view, aspects of a design include disembodied features which are merely
recognisable or discernible, whereas parts of a design are concrete parts, which can be
identified as such. Returning to the example of Laddie J in Ocular Sciences, aspects of the
design of a teapot could include the combination of the end portion of the spout and the
top portion of the lid, which are disembodied from each other and from the spout and lid.
They are not parts of the design. [44]

An interesting question has also arisen as to whether or not the changes made in the
2014 Act were intended to be retrospective. In Neptune (Europe) Ltd it was held that the
amendment was not retrospective. Causes of action based on the broader definition
of ‘design’ which had accrued prior to the coming into force of the 2014 Act were not
extinguished. However, claims of infringement based on activities taking place after
that date were to be assessed under the revised law, even where a design had been
created prior to the coming into force of the Act (see Neptune (Europe) Ltd [29]–[42]).

In Shnuggle v Munchkin [2019] EWHC 3149, Judge Melissa Clark considered a claim
relating to infringement of, inter alia, unregistered design rights under s.213 CDPA:
in a baby bath. The judge held that the claimant had failed to demonstrate that the
defendant had infringed the unregistered design right, construed as follows:

The question for infringement is whether Munchkin has copied Shnuggle Design (1) so as
to produce articles exactly or substantially to the design. This requires copying the whole
design exactly or substantially, and is quite different to the copyright test of infringement,
which considers whether the whole or a substantial part of a copyright work has been
copied. [165]
Intellectual property 9 Designs page 137
The judge also considered the consequences of the Intellectual Property Act 2014’s
excision of the phrase ‘any aspect of’ from the definition of ‘design’ under s.213
(see Section 9.5.1 for previous discussion of this issue). On this point, in light of
jurisprudence since the entering into force of that change, she held that:

…I consider that a part of an article for section 213(2) is an actual, but not abstract part
which can be identified as such and which is not a trivial feature. Whether or not it is a
trivial feature is a matter of fact which will need to be assessed in the context of the article
as a whole. [92]

To return to s.213(1), you will note that it contains the word ‘original’. This is explained in
s.213(4) as meaning (for Part III of the CDPA only) ‘[not] commonplace in the design field
in question at the time of its creation’. The definitive interpretation of ‘original’ was
given by the Court of Appeal in Farmer Build Ltd v Carier Bulk Handling Materials Ltd [1999]
RPC 461 at 482 where Mummery LJ explained that the word bears the normal copyright
meaning of ‘not copied’. He added that s.213(4) entails a two-stage enquiry, namely
first, whether the design is original in the copyright sense, and then whether, even if
not copied, the design is ‘commonplace’. It is for the claimant to prove originality, but it
is for the defendant to show that the design is commonplace in the UK. Because of the
restricted nature of design right, ‘commonplace’ should be interpreted narrowly rather
than broadly so as not to deprive the designer of protection.

As to the meaning of ‘not commonplace’, Laddie J in Ocular Sciences Ltd v Aspect

Vision Care Ltd suggested that a design would be commonplace if it was ‘trite, trivial,
common-or-garden, hackneyed, or of the type which would excite no peculiar
attention in those in the relevant art’.

In order to determine whether a design is commonplace, the test to be applied is as

explained in the Farmer Build case at pp.482–83. This is an important test and one which
you must learn. The court should identify the design field in question (which should not
be drawn too narrowly) and then compare the claimant’s design with similar articles in
the same design field made by other unconnected persons, taking into account (with
the help of expert evidence) similarities and differences, but making the comparison
objectively. The defendant’s design is not to be considered until it is determined whether
the claimant’s design passes the test. The test was applied in Scholes Windows Ltd v
Magnet Ltd [2002] FSR 122, where the Court of Appeal decided that the relevant design
field for replacement Victorian windows was Victorian windows as a whole (hence the
design was commonplace when compared with what had gone before) and in A Fulton
Company Ltd v Grant Barnett & Company Ltd [2001] RPC 257, where the court accepted that
the claimant’s design for a handle and case for a folding umbrella was not commonplace
when compared with existing products on the market.

‘Commonplace’ does not have a temporal limitation, in that old designs can be taken
into account (Dyson Ltd v Qualtex [2006] RPC 769). You should note further that design
right can exist in a combination of features which are individually commonplace
but collectively are not (see Ultraframe UK Ltd v Clayton [2003] RPC 435 at 457 which
concerned the design for a frame for a conservatory roof). The question of whether
a design is commonplace is to be determined by reference to the design field in all
qualifying countries, not just the UK (as was the case prior to amendment of the
relevant provisions under the Intellectual Property Act 2014 (s.1)).

Negative criteria excluding design right

Having considered the positive elements which go to make up the definition of design
right, we must now turn to the negative criteria, namely those features of shape which
are excluded from protection. When dealing with the exclusions, the technique to be
deployed by the court is to subtract from the design those features which fall within
the exclusions, then apply the ‘not commonplace’ test to what is left in order to
identify the relevant design (Ultraframe UK Ltd v Clayton).

Under s.213(3), design right does not subsist in four aspects of a design. The first
exclusion relates to a method or principle of construction (s.213(3)(a)). According to
Landor & Hawa International Ltd v Azure Designs Ltd [2007] FSR 181 the phrase should
page 138 University of London
be given a narrow construction and will only apply where it can be shown that the
purpose in question cannot be achieved in any other way. ‘Method of construction’
includes the designer’s choice of materials (see Christopher Tasker’s Design Right
References [2001] RPC 39 which concerned a design for sliding aluminium wardrobe
doors, the choice of materials for the various components being denied protection)
and the location of a fuel tank on a lawnmower: Rolawn Ltd v Turfmech Machinery Ltd
[2008] RPC 663. In Bailey v Haynes [2007] FSR 199 the exclusion was applied to deny
protection to the mesh of a bait bag used in carp fishing. In the Farmers Build case, a
rubber liner used in part of the slurry separator was caught by this exclusion. ‘Method
of construction’ also covers how the article is put together. As an example, consider
the facts of Parker v Tidball [1997] FSR 680 where it was held that stitching on the inside
of a mobile phone case fell within this exclusion, although the court did not consider
what the position might be if the stitching were decorative rather than structural. It
has been suggested that the exclusion of ‘methods or principles of construction’ will
be relevant less frequently following the coming into force of the 2014 Act because
designs expressed at a high level of generality are, in any event, much more likely to
be held to fall outside the definition of ‘design’ as redrafted. However, the exclusion of
methods or principles of construction under s.213(3)(a) is not completely redundant:

…I do not believe that this approach to the law renders s.213(3)(a) otiose. There will be rare
cases in which there is only one way to achieve a method and principle of construction
and that is by using the specific design of the article in relation to which design right is
claimed. Bailey (t/a Elite Angling Products) v Haynes (t/a RAGS) [2007] FSR 10 was an example.
It concerned design right in a design of micromesh which was made into bags to be filled
with fish bait, used by anglers. The claimants claimed design right in the specific design
of their mesh, nothing more. HHJ Fysh QC SC held that the design right claimed would
nonetheless inevitably cover a method or principle of construction. (Action Storage Sys Ltd
v G-Force Europe.com Ltd [2017] FSR 18 per Hacon HJJ)
The next two exclusions have the same underlying policy, which is concerned to
ensure that manufacturers of spare parts can compete with the design right owner
by making articles that are compatible with the original. The exclusion does not apply
to other forms of copyright such as software or databases (Mars UK Ltd v Teknowledge
Ltd [2000] FSR 138). The ‘must fit’ and ‘must match’ exclusions are not, however, as
broad as the ‘spare parts’ defence in British Leyland v Armstrong (above) as it was
not Parliament’s intention to deprive the designer of all protection in relation to
spare parts, but only certain aspects of them: Ultraframe UK Ltd v Clayton and Dyson
Ltd v Qualtex [2006] RPC 769. When examining these two exclusions, pay particular
attention to the very precise wording of s.213: ‘must fit’ and ‘must match’ are simply
convenient shorthand phrases which do not fully reproduce the key elements of the
exclusions (Dyson Ltd v Qualtex).

‘Must fit’ (‘features...which enable the article to be connected to, or placed in, around
or against another article so that either article may perform its function’) is concerned
with the ‘interface’ between two articles or ‘things’. Several cases have concluded that
parts of the human body can be an ‘article’ for this purpose, so in Ocular Sciences Ltd
v Aspect Vision Care Ltd it was held that the internal curvature of a contact lens could
not be protected as it had to fit against the wearer’s eyeball; and in Parker v Tidball,
part of the shape of the case for the mobile phone had to fit in the user’s hand. It has
been suggested, however, that for the exclusion to apply, there must be a precise fit:
Amoena (UK) Ltd v Trulife Ltd, 25 May 1995, unreported.

What is not clear is whether this exclusion is concerned with how the component
parts of a composite article fit externally to another article (as suggested by Baby
Dan AS v Brevi SRL [1999] FSR 377) or whether it is concerned with how the article’s
components themselves fit together (as held in Electronic Techniques (Anglia) Ltd v
Critchley Components Ltd [1997] FSR 401), but the better view is that it is the Critchley
approach which is to be preferred. The key point to remember is that the exclusion is
concerned with the interface between a consumable or spare part and the rest of the
article: Ultraframe UK Ltd v Clayton and Dyson Ltd v Qualtex.

The ‘must match’ exclusion (‘features... which are dependent upon the appearance
of another article of which the article is intended by the designer to form an integral
Intellectual property 9 Designs page 139
part’) has only relatively recently been examined judicially in the context of Part III
of the CDPA in Dyson Ltd v Qualtex. Here Mann J (confirmed by the Court of Appeal)
pointed out that an identically worded exclusion was to be found under the old RDA,
and that had been considered in detail in Ford Motor Company Ltd’s Design Applications
[1995] RPC 167. In the Ford case it was held that the body panels, doors, bonnet, grille,
boot, bumper, instrument panel, spoiler and windscreen were all dependent on the
appearance of the car as a composite article and so were caught by the exclusion: the
parts were all integral to the appearance of the car. The steering wheel, wing mirrors,
wheels, wheel covers and seats were not so, and were therefore capable of protection.

Dyson v Qualtex adopts the thinking in Ford. The key word in s.213(3)(b)(ii) is the word
‘dependent’. The question to be asked in each case is whether the overall appearance
of the article (for example, a car) would be radically different if the replacement part
(e.g. a door) were not the shape it is (Dyson Ltd v Qualtex at para 64).

The last exclusion (to be found in s.213(3)(c)) is that of ‘surface decoration’. At first
glance, it may be asked how decoration could be an aspect of ‘shape or configuration’,
but as was made clear in Mark Wilkinson Furniture v Woodcraft Designs (Radcliffe)
Ltd [1998] FSR 63 ‘surface decoration’ can be two-dimensional (e.g. a painting or a
drawing) or three-dimensional (e.g. grooves or beading). In the case of the latter, it
is a question of degree when the decoration, such as carving, becomes the shape of
the item and hence protectable. Surface decoration is normally protected in its own
right as an artistic work under s.4 of the CDPA, but in some cases may not. The choice
of colours for a garment was held not to be an aspect of the shape or configuration
of the garment in Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2005] RPC 88 and,
being surface decoration, was excluded from protection by s.213(3). Further, there
was nothing in s.4 of the CDPA which could afford the designer any protection in
the instant case. The court added that ‘surface decoration’ applied both where the
surface was covered by a thin layer and where the decoration ran right through the
article (such as the fabric of a garment). It was pointed out in Dyson v Qualtex that the
Lambretta case had very unusual facts, being concerned with an attempt to protect
the colour scheme of a garment. A good illustration of how surface decoration is
protected as an artistic work under s.4 CDPA is Flashing Badge v Groves.

In Freddy SpA v Hugz Clothing Ltd [2020] EWHC 3032 the potential subsistence of
design right in ‘body-enhancing’ jeans was considered. Among other arguments, the
defendant claimed that the design of the jeans was excluded by the so-called ‘must-
match’ exclusion from design right. It argued that the design of the jeans was excluded
because they were dependent on the appearance of another article, being the human
form wearing the jeans. Stone J left open the question of whether or not the human
body could be an ‘article’ but held that the exclusion did not apply in this instance in
any event because the jeans were not intended to ‘form an integral part’ of the human
body (rather, they were intended to be worn).

Activity 9.4
Go over your notes on s.213 of the CDPA carefully, then complete the following
chart by supplying the meaning of each of the key words or phrases in the section,
together with the relevant case law authority (where applicable) on that point:

Key word or phrase Meaning Relevant case(s)

‘Any aspect’
‘Shape or configuration’
‘Article’
‘Original’
‘Not commonplace’
‘Method or principle of construction’
‘Must fit’
‘Must match’
‘Surface decoration’
No feedback provided.
page 140 University of London

9.5.2 Subsistence of design right

When examining the rules in Part III of the CDPA about when and how design right
comes into existence, you should remember to compare them with the rules on
copyright which you studied in Chapter 7.

First, and just like copyright, the design right must be recorded in material form:
s.213(6) declares that design right does not subsist unless and until it has been
recorded in a design document or an article has been made to the design. You should
note here that it is not necessary for the design to be in documentary form: it can be
recorded in an article.

Next, the design has to qualify for design right protection (s.213(5)). It is here that the
first major difference from copyright law is apparent, both with regard to what counts
as qualification and the relevant countries with which the author may be connected.

The starting point is s.218, which declares that where a design is not created in the
course of employment, then the designer must be a qualifying person (the designer
being the person who creates the design – s.214). If, however, the design was created in
the course of employment, then the employer must be a qualifying person (s.219).

Finally, as a last resort, if neither the designer nor employer are qualifying persons,
then the design can qualify for protection if the first marketing of articles occurred in a
qualifying country. You should note the very precise order in which s.218 et seq must be
applied. Further, the definition of a ‘qualifying person’ is extremely narrow. The person
concerned must be a citizen of or habitual resident in the UK or an EEA Contracting
State or a state listed in the relevant Order in Council, or must be a company
incorporated in or having substantial business activity in the UK or an EEA Contracting
State or a state listed in the relevant Order in Council. Because design right is not
governed by an international convention, there are only a few countries listed in the
relevant Orders in Council (they are almost all former UK colonies and the determining
factor is whether they provide reciprocal protection for UK nationals). The net result
is that non-European companies are denied protection: Mackie Designs Inc v Behringer
Specialised Studio Equipment (UK) Ltd.

The rules on ownership of design right (found in ss.214 and 215) are a mirror-image of
the rules on qualification for protection. The designer is the first owner unless there
is: (1) a contract of employment, in which case the employer will be first owner; or
(2) the person who first marketed the design in the EEA is first owner. Under s.2 of the
Intellectual Property Act 2014, the rules on ownership of UK unregistered designs
have been aligned with the rules applying under the EU designs regulation. For
commissioned designs, the designer (not the commissioner) will now be the owner in
all cases (amendments made to CDPA s.215). Prior to amendment, the commissioner
was the owner of a commissioned design.

With regard to the duration of design right, the rules are to be found in s.216. This
declares that design right expires 15 years from the end of the year of first recordal in a
design document or year of first manufacture, whichever is first; or if marketing occurs
anywhere in the world within five years of that, 10 years from first marketing. Because
almost all articles will be made with a view to sale, this means that in effect, the real
duration of design right under s.216 is 10 years from first marketing. However, s.216 is
further qualified by s.237, which provides that any person (i.e. a potential infringer)
is entitled to demand a licence to do anything which would otherwise infringe the
design right in the last five years of the design right term. Because of the availability of
these licences of right, the overall value of UK unregistered design right is limited to
the first five years of its life.

The right of the owner of the design right to enter into property transactions is treated
in exactly the same way as copyright, hence it can be assigned and licensed, and there
can be an assignment of a future design right (see ss.222–225 of the CDPA).

Activity 9.5
With regard to the subsistence of design right, draw up a list indicating where
design right has rules which are the same as copyright and where those rules differ.
Intellectual property 9 Designs page 141

9.5.3 Infringement of design right

When compared with copyright, the exclusive rights conferred on the design right
owner are much narrower. Unlike the list of restricted acts in s.16 of the CDPA (see
Chapter 8), there is only one act of primary infringement for design right to be found
in s.226. This states that the owner has the exclusive right to reproduce the design for
commercial purposes by making articles to that design or making a design document
for the purpose of enabling such articles to be made. Like copyright, reproduction
involves copying, exactly or substantially, directly or indirectly, and like copyright,
independent creation is a defence: Ocular Sciences Ltd v Aspect Vision Care Ltd. There is
also the ability to sue for secondary infringement under s.227, which sets out the usual
commercial dealings in infringing copies and which, like the parallel provisions in Part
I of the CDPA, stipulate that the defendant must know or have reason to believe that
the article in question was an infringing copy. Remedies are set out in s.229 and are
broadly the same as for copyright infringement. There is, however, no provision for
seizure of infringing copies and no criminal penalties. An innocent primary infringer
cannot be made to pay damages, but in the case of innocent secondary infringement,
damages are limited to the amount of a reasonable royalty (s.233). Where there is an
infringement action in the last five years of the right, the infringer can undertake to
take a licence of right (ss.237–239).

The last major difference between design right and copyright is the test for primary
infringement. Because of the wording of s.226 (‘reproduction... means copying the
design so as to produce articles exactly or substantially to that design’) the test for
infringement requires that the alleged infringing article or articles be compared with
the document or article embodying the design. Thereafter the court must decide
whether copying took place and, if so, whether the alleged infringing article is made
exactly to the design or substantially to that design. Whether or not the alleged
infringing article is made substantially to the claimant’s design must be an objective
test to be decided through the eyes of the person to whom the design is directed (per
Aldous J in C & H Engineering v F Klucznik [1992] FSR 421 at 428).

In Original Beauty Technology Co Ltd v G4K Fashion Limited [2021] EWHC 294, David Stone
(sitting as a Deputy Judge of the High Court) followed C and H Engineering v F Klucznik
& Sons Ltd [1992] FSR 421 and Neptune (Europe) Ltd v Devol Kitchens Ltd [2018] FSR 3 in
emphasising that the test for infringement of design right is different from the test
for infringement of copyright. By contrast with copyright, it is not necessarily an
infringement of a UK-unregistered design to reproduce ‘a substantial part’ of a design.
As a consequence, it is necessary to consider the differences as well as the similarities
between a claimant’s design and the defendant’s article in assessing infringement of
design right.

In Action Storage Systems Ltd v G-Force Europe.com Ltd [2017] FSR 18 HHJ Hacon
considered the appropriate approach to excluded elements in the assessment of
infringement, concluding that:

On balance, it seems to me that the legislature intended the comparison to be made

between those features in the claimant’s design in which design right subsists and which
are therefore relevant to the second step assessment, and only those. Features to which
s.213(3) applies should be disregarded when considering infringement under s.226…
Once features are excluded from consideration under s.213(3) there may arise a question
whether what remains is still a design of the article or the part of an article as claimed in
the pleading. ([77]–[78])

This situation was to be contrasted with the treatment of ‘commonplace’ aspects of an

article otherwise protected by design right:
page 142 University of London

By contrast, s.213(4) applies to designs as a whole, whether of an entire article or of part of

an article. It is not concerned with features of a design. If the claimant’s design as a whole
is not commonplace, it is not deprived of design right protection under s.213(4). This is
true irrespective of whether some or even all the features of the design are individually
commonplace. Therefore, infringement should be determined by reference to the whole
design including any commonplace features. This appears to have been the approach
taken by Aldous J in C&H Engineering v F Klucznik & Sons Ltd (No.1) [1992] FSR 421, at pp.428–
429. Likewise, the assessment carried out in the second step will take into account not just
original features (in the copyright sense) but also any features that have been found, or
admitted, to lack originality. ([79])

For illustrations of the way in which independent creation operates as a defence to

design right infringement, see Albert Packaging Ltd v Nampak Cartons [2011] EWPCC 15
and Pro-Tec Covers Ltd v Specialised Covers Ltd [2011] EWPCC 23.

The Intellectual Property Act 2014 introduces new defences of private acts,
experiments and teaching; and use on ships and aircraft temporarily within the
jurisdiction, thus bringing unregistered designs into line with registered designs and
patents.

Summary
Provided the criteria in s.213 of the CDPA are met and none of the exclusions from
protection apply, whether design right arises depends on issues similar to those
encountered in the law of copyright. The design must be recorded, and it must
qualify for protection. There are significant differences, however, between the law
of copyright and the law of designs as to qualification and entitlement. Section
226, setting out what amounts to primary infringement of design right, should be
compared with the parallel provisions on copyright infringement.

Activity 9.6
With regard to infringement of design right, draw up a list showing how design
right differs from copyright.

Sample examination question

Annie, an Australian citizen living in New York, is a famous potter. Many of her
creations have been exhibited at the London Museum of Modern Art. Early in 2010,
Annie created a design for a teapot. Being rather fond of the English countryside,
she decided that the teapot should have a ‘rural’ theme. The handle of the lid
of the pot was shaped like a flower bud, the spout of the pot was shaped like a
bird’s head and the outside of the pot was decorated with an embossed pattern of
leaves. The inside of the pot was engraved with a series of parallel grooves around
its circumference. When asked why she had done this, Annie replied that she had
seen a similar feature in teapots in a museum in China and had been told that the
grooves enabled the tea to stay hotter for longer.
Annie’s teapot was displayed at the London Museum of Modern Art during the
summer of 2010 and proved to be a popular exhibit. Annie was subsequently
approached by Josiah plc, a UK pottery manufacture, which wanted to manufacture
and sell copies of her teapot. After negotiations, Annie agreed. Copies of her pot
accordingly went on sale in various UK department stores in October 2010.
Annie is increasingly concerned about a number of products being sold by the Okea
Furniture Store Ltd. The items of concern are:
a. a cooking pot with grooves cut on the inside; the lid of the pot has a handle
shaped like a flower bud

b. a watering can with a spout shaped like a bird’s head

c. a coffee mug decorated with a pattern of leaves.

Advise Annie of her rights against Okea under the Copyright, Designs and Patents
Act 1988.
Intellectual property 9 Designs page 143

Advice on answering the question

When tackling a problem on designs, the pivotal question is whether copyright is
excluded by s.51 of the CDPA or not. It is therefore a good idea to discuss at the outset
whether the design is for an article other than an artistic work. Be prepared to answer
in the alternative, because it may not always be clear whether the article in question
could be protected as an artistic work.

If the answer to this preliminary question is ‘no’ (so that the article is an artistic work)
you need to discuss what sort of artistic work it is under s.4 and then proceed to
consider all the other aspects of whether copyright subsists (originality, permanent
form, the author (qualifying person), ownership and duration). You can then move
on to consider what infringing acts have been committed and by whom, dividing
your answer between primary infringement (s.16 and in particular ss.17 and 18) and
secondary infringement (ss.22 and 23). Are there any defences? What remedies might
be claimed?

If the answer to this preliminary question is ‘yes’ (i.e. the article is not an artistic work)
you need to work through the statutory provisions and supporting case law on design
right. Go through the composite definition in s.213 of the CDPA. Is the design original
and ‘not commonplace’ (Farmer Build)? Is it recorded? Who is the designer (and are
they a qualifying person)? Who is the owner? Duration? Then consider what infringing
acts have taken place: primary (s.226 – narrower than copyright) or secondary (s.227)?
What defences? What remedies?

A good answer would have dealt with the question in the following manner.

First, as s.51 CDPA is a pivotal section, there should have been a discussion as to
whether the teapot designed in 2010 was an artistic work or not. If it was an artistic
work in its own right, then s.51 would not apply. Could it have been a work of artistic
craftsmanship in the light of cases like Hensher and Boncrest, especially as it was
exhibited in a museum (the fact that subsequent copies were mass produced would
have no effect on whether the first teapot was a work of artistic craftsmanship)? If so,
was it original, recorded in permanent form and was Annie a qualifying person under
Part I CDPA (i.e. a citizen of or domiciled or resident in a Convention country)? Both
Australia and the USA are members of the Berne Convention, so there would be no
problem here, and Annie, as the creator of the artistic work, would be first owner and
therefore able to sue for infringement. If the requirements for subsistence of copyright
were satisfied, then what restricted acts had Okea committed under s.16 CDPA
(copying and issuing copies seem the most likely), assuming that there was objective
similarity and derivation?

If, however, the original teapot was not a work of artistic craftsmanship, then
the design for the teapot would have been caught by the defence to copyright
infringement in s.51 and Annie would instead have to rely on unregistered design
right under s.213 CDPA. The various elements of s.213 required elaboration. Was the
design concerned with ‘any aspect of the shape or configuration’, whether ‘internal
or external’, of the ‘whole or part of’ an article? Was the design original and ‘not
commonplace’ under the test in Farmer Build? Were the four aspects of the design
mentioned in the question caught by any of the exclusions (the handle, the internal
grooves, the spout and the leaf pattern)? If they were, they would not attract
protection. The internal grooves might be regarded as a ‘method of construction’ but
the fact that Annie got her inspiration from a museum in China did not make such
grooves ‘commonplace in the design field in question’ as the design field is limited
to the UK (Dyson v Qualtex). The embossed pattern of leaves would probably be
surface decoration, but in contrast to the decision in Lambretta, this particular surface
decoration would probably attract copyright protection as an engraving. The handle
of the lid (note, the question does not say anything about the lid itself, so the must
fit exclusion is not relevant) and the spout would probably be protected. However,
Annie, as designer, was not a qualifying person, but qualification for and ownership
of the design right would result from Josiah being the first marketer of the design
(CDPA ss.220 and 215). Josiah, as owner, would have to sue Okea for infringement under
s.226. The fact that the design features were applied to other articles is irrelevant
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(see Electronic Techniques (Anglia) Ltd v Critchley Components Ltd). The test for design
right infringement is as explained by Aldous J in C & H Engineering v F Klucznik, that is,
whether or not the alleged infringing article is made substantially to the claimant’s
design is an objective test decided through the eyes of the person to whom the design
is directed. In other words, would the consumer think that Okea’s articles looked like
Annie’s teapot?
Intellectual property 9 Designs page 145

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.
Tick a box for each topic. Ready to Need to Need to
move on revise first study again

I can summarise the legal means available to protect

designs.   

I can explain when a design can be protected under

the law of copyright.   

I can explain the circumstances when copyright

protection for designs is excluded.   

I can explain and apply the criteria for the protection

of unregistered design right under UK law.   

I can list the key elements in the definition of an

unregistered design right.   

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

9.1 Overview of the various means of protecting designs  

9.2 The registration system  

9.3 Copyright protection for designs  

9.4 Statutory provisions curtailing copyright  

9.5 Unregistered design right  

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Notes
10 Introduction to trade marks

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 148

10.1 The history of trade marks and trade mark law . . . . . . . . . . . . . 149

10.2 The nature of trade marks . . . . . . . . . . . . . . . . . . . . . . . . 151

10.3 The functions of trade marks . . . . . . . . . . . . . . . . . . . . . . 153

10.4 The continuing significance of EU trade marks law . . . . . . . . . . . 157

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . 159

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Introduction
The purpose of this chapter is to provide an introduction to Chapters 11–14. It will
provide a brief historical account of the factors which have affected the development
of UK trade mark law. It next gives an overview of the nature of the trade mark right,
comparing and contrasting trade marks with other types of intellectual property
(you may find it helpful to refer back to your notes from Chapter 2 at this stage). The
functions which trade marks fulfil is a key aspect of modern trade mark law and we
shall consider whether legislation and case law reflects the expectations of trade mark
owners and consumers.

Present-day UK trade mark law is the result of a process of ‘Europeanisation’. This

chapter will explain how EU legislation has dictated the content of the Trade Marks Act
1994 and, more importantly, how the case law of the CJEU has extended and refined
the nature of the trade mark right. It will also explain the impact of Brexit on this
process of ‘Europeanisation’.

The contents of this chapter are not examinable as such. However, they form the
foundation to the material which follows. In particular, the discussion of the legally
recognised functions of trade marks is crucial for your understanding of passing off,
the registrability of trade marks and the scope of protection to be accorded to them in
the infringement action. You should concentrate on this aspect.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u explain the historical factors which have influenced present-day UK trade mark
law
u compare and contrast the nature of the trade mark right with other forms of
intellectual property protection
u discuss the various commercial functions performed by trade marks and
whether these are recognised in legislation and case law
u explain the way in which EU law influences the law of trade marks in the UK
u list the functions which trade marks perform.
Intellectual property 10 Introduction to trade marks page 149

10.1 The history of trade marks and trade mark law

Core text
¢ Bainbridge, Chapter 19 ‘Trade marks – introduction and background’ pp.643–79.

¢ Bently et al., Chapter 31 ‘Introduction to passing off and trade marks’ Section 1
History’.

¢ Cornish, Chapter 16 ‘Competitor and consumer’ paras 16–004 to 16–022.

¢ Karapapa and McDonagh, Chapter 9 ‘Trade marks’ Sections 9.2 and 9.3.

10.1.1 The historical origin of trade marks

Trade marks have been around for many thousands of years. The earliest example is
the practice of branding cattle to indicate ownership (hence one modern synonym for
a trade mark, ‘brand name’). There is extensive archaeological evidence of the use of
trade marks on pottery in ancient China. Remains from the Greek and Roman empires
also show extensive use of marks.

In medieval Europe, trade marks were used in two ways.

First, they were used as proprietary marks, that is, as a means of indicating ownership.
Placing one’s mark (often the initials of one’s name) on goods would enable a trader to
recover property upon proof of ownership of their mark (remember that at this time,
the transport of goods was a hazardous business, with the frequent risk of piracy or
shipwreck). This practice was recognised by legislation in many European trading cities
and states. The relevant legislation in England was enforced as late as Hamilton v Davis
(1771) 5 Burr 2732 by Lord Mansfield.

The second way in which a trade mark could be used in medieval Europe was as a
production mark. This was a consumer protection measure. At the time, craftsmen
(swordsmiths, goldsmiths, breadmakers, ropemakers, etc.) were required to be
members of the appropriate craft guild. The guild was responsible for overseeing
the quality of goods produced by their members. This quality control was enforced
by national, local and guild regulations that required goods to be marked with the
maker’s sign, so that faulty workmanship could be traced. These laws were enforced by
criminal penalties. No trader had goodwill in their business (even though goods were
usually bought direct from their maker), instead the guild had a collective goodwill.

The key historical factor which led to the development of modern trade mark law was
the advent of the Industrial Revolution. This resulted in goods being mass-produced
in factories, and then being transported long distances before being sold to the
consumer by retailers rather than the original maker. The era of the consumer society
had begun.

10.1.2 The development of trade mark law

In the UK, the legal protection of trade marks is (historically speaking) relatively recent.
The case law foundations were laid before 1875. After this date, the developments are
primarily statutory.

Books (and indeed even modern cases – see Aldous LJ in Marks & Spencer plc v One in a
Million Ltd [1998] 4 All ER 476) often declare that the first trade mark case was Southern
v How (1618) Popham 143. The case is in fact about agency and its only link with the law
of trade marks is an irrelevant aside by the judge. Instead, trade mark cases only begin
to appear in the law reports in the 18th and 19th centuries. It is convenient to divide
them into common law and chancery cases.

Common law cases

The earliest common law cases are reported in the 19th century. The action for trade
mark infringement (which was derived from the action of deceit) emphasised the
need for proof of fraudulent intent on the part of the defendant, irrespective of
page 150 University of London
any actual deception as to the origin of the goods on the part of the consumer and
irrespective of whether the defendant’s goods were inferior (see, as examples, Sykes
v Sykes (1824) 3 B & C 543, Blofeld v Payne (1833) 4 B & Ad 409 and Crawshay v Thompson
(1842) 4 Man & G 358).

Chancery cases
By contrast, early cases decided by the Court of Chancery (where the claimant
sought an injunction to restrain infringement rather than the payment of money to
compensate for lost sales) show a reluctance to protect trade marks. In both Blanchard
v Hill (1742) 2 Atk 484 and Cruttwell v Lye (1810) 17 Ves 335, relief was refused because
otherwise an unfair monopoly would be created. This is a theme which often occurs
throughout the law of trade marks. We shall examine it again in the next section, and it
is something you will encounter in your reading of trade mark cases.

Ultimately, however, the Court of Chancery did recognise that there should be
protection for the ‘get up’ of a business (see Knott v Morgan (1836) 2 Keen 213 where
the defendant was restrained from copying the colour scheme and lettering used
on the claimant’s omnibuses). Significantly, within two years of this last case, the
Court of Chancery declared that trade marks were a form of property (Millington v Fox
(1838) 3 My & Cr 338), so that liability for infringement did not depend on evidence of
confusion. As trespass to a property right, liability was strict and did not depend on
intention or harm.

Cases decided after Millington v Fox are contradictory. Some followed the common
law by requiring the likelihood of deception to be proved before granting injunctive
relief (see, for example, Perry v Trufitt (1842) 6 Beav 66, Croft v Day (1843) 7 Beav 84 and
Burgess v Burgess (1853) 3 De G, M & G 896). Others treated trade marks as property,
so that deception was irrelevant (see Hall v Barrows (1863) 4 De G, J & S 150, Edelsten v
Edelsten (1863) 1 De G, J & S 185 and Leather Cloth Co v American Leather Cloth Co (1863) 4
De G, J & S 137).

After 1875, the history of trade mark law is concerned with legislative reform. The
first legislation to note is in fact not concerned with trade marks. The Judicature Acts
1873–1875 reformed the legal system, combining the courts of common law with the
Court of Chancery in a single Supreme Court of Judicature. Trade marks cases (and
indeed other forms of intellectual property dispute) were assigned to the Chancery
Division. As a general principle, the rules of equity were to prevail over the rules of
common law. Interestingly, in the case of trade marks, this seems not to have occurred.
The law of passing off (discussed in the next chapter), the present-day descendant of
the case law mentioned above, is firmly rooted in the common law requirement that
the defendant’s use of the claimant’s mark must cause customer deception (although
deception now has a much broader meaning than before, so to that extent it does
reflect the influence of the Court of Chancery).

The first Trade Marks Act

In the same year as the reform of the legal system, the Trade Marks Registration
Act was passed. As its name suggests, the 1875 Act introduced the first system of
registration for trade marks. Thereafter, there was a succession of Trade Marks
Acts. The ones you are most likely to come across in your reading are those of 1905
and of 1938, each of which effected major reforms. The Trade Marks Act 1938 was
reviewed by the Mathys Committee in 1975 (Cmnd 5601). The report recommended
a major overhaul of trade mark law, but only one change was made as a result of the
report, namely the introduction of protection for service marks by the Trade Marks
(Amendment) Act 1984.

White Paper on Reform of Trade Marks Law

In September 1990, the government published the White Paper on Reform of Trade
Marks Law (Cm 1203). It identified a number of reasons why UK trade mark law was by
then in urgent need of reform. These included that:
Intellectual property 10 Introduction to trade marks page 151
u the existing legislation was out of date and unwieldy

u the UK had to implement the EU Trade Marks Directive

u the United Kingdom Trade Marks Registry needed to establish a system of

cooperation with the Office for Harmonization in the Internal Market (Trade Marks
and Designs) (OHIM) because of the Community Trade Mark Regulation (now
referred to as the EU Trade Mark as a result of the Lisbon Treaty)

u the UK was obliged to ratify the latest version of the Paris Convention

u the UK wished to ratify the Madrid Protocol 1989 (this is part of the system
facilitating the international registration of marks; it is not part of your syllabus).

These, then, are the reasons underlying the Trade Marks Act 1994.

Summary
The history of trade marks can be divided into factual and legal developments. Factual
developments reflect the nature of society and in particular the way in which trade
is conducted. This last point can be illustrated by comparing the use of trade marks
in medieval society with the use of trade marks after the advent of the Industrial
Revolution. Legal developments in the UK can in turn be subdivided into the initial
recognition of trade marks by judges, using the existing causes of action (such as the
action for deceit) as the means of protecting business interests, and legislative reform
in order to meet modern trading needs.

10.2 The nature of trade marks

Core text
¢ Bainbridge, Chapter 19 ‘Trade marks – Introduction and background’ pp.687–93.

¢ Bently et al., Chapter 31 ‘Introduction to passing off and trade marks’ Section 3
‘Justification for the legal protection of trade marks’.

¢ Cornish, Chapter 16 ‘Competitor and consumer’ paras 16–022 to 16–031.

¢ Karapapa and McDonagh, Chapter 9 ‘Trade marks’ Section 9.4.

Essential reading
¢ Chapter 2 of this module guide (overview of intellectual property rights).

10.2.1 Trade marks as personal property

In common with other statutory intellectual property rights, a trade mark is an
exclusive right. It confers on its owner the right to prevent someone else from making
use of the trade mark.

The Trade Marks Act 1994 s.2 declares that registered trade marks are personal
property, in the same way that all other forms of intellectual property are classified
as intangible rights. Certainly, a trade mark has some (but not all) of the attributes
of a right of property. It can be sold and licensed, and can be security for a debt. It is
possible to put a value on a trade mark for the purposes of a company balance sheet
(the COCA COLA trade mark has been estimated to be worth $60 billion). However, a
trade mark can be removed from the Register (and hence the property right vanishes)
for a number of reasons. Not only can it be declared invalid for non-compliance
with the requirements of the Act (in the same way that patents and registered
designs can be declared to be invalid), but a trade mark can be revoked because of
mismanagement by its owner. The grounds of revocation are considered in more
detail in Chapter 13, but for the present all you need to know is that they comprise
non-use, generic use and deceptive use. No other form of property right can be lost
due to the conduct of its owner (English property law does not have any concept
of loss of ownership through abandonment or misuse, as opposed to third party
intervention such as compulsory purchase).
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10.2.2 Trade marks compared to designs and patents

In some instances there may be overlap between trade marks and other intellectual
property rights, particularly designs or copyright. So, for example, a design for a three-
dimensional article may also be capable of registration as a trade mark (subject to
certain exclusions found in s.3(2) of the Trade Marks Act 1994 for trade marks consisting
of shapes). There may be both copyright and trade mark rights in a pictorial mark
(R Griggs Group Ltd v Evans [2005] FSR 706) and there may be copyright and trade mark
rights in a piece of music, as a tune can be a trade mark (C-283/01 Shield Mark BV v Joost
Kist [2003] ECR I-14313). Conversely, just because a large amount of money has been
expended in the creation of an invented word trade mark does not mean it is capable
of protection as a literary work under the law of copyright: Exxon Corporation v Exxon
Insurance Consultants International [1981] 3 All ER 241.

There are other significant copyright differences between trade marks on the one
hand and designs and patents on the other.

u Patents, copyrights and designs protect inventiveness or some other form of

intellectual creativity. By contrast, it does not require any ingenuity to think up
a trade mark. Even a colour can be a trade mark. Accordingly, trade marks do not
fit in with the other categories of intellectual property with regard to the subject
matter of the right.

u Unlike patents and registered designs, a trade mark is (with one minor
qualification) not an absolute right. Registration enables the proprietor to
prevent the use of the identical or similar sign, in relation to identical, similar or
dissimilar goods or services. Even though protection is absolute in the case of an
identical mark used on identical goods or services (subject to the availability of
any statutory defences), other categories of infringement require the proprietor
to prove either a likelihood of confusion on the part of the public or that the
defendant’s conduct caused harm to the reputation of the mark. However, for each
form of infringement, it is not enough simply to use the trade mark in the course
of trade. Infringing use has to be in relation to the relevant goods or services and
must affect the interests of the trade mark owner (C-206/01 Arsenal Football Club v
Matthew Reed [2002] ECR I-10273).

u The legal protection accorded to patents, copyrights and designs is said to be

justified by the need to reward creativity or to improve the quality of life or
(under natural law theories) to protect the product of the intellect as an aspect
of the creator’s personality. Trade marks are justified on the grounds they reduce
consumer search costs and thereby promote competition and consumer choice.

u However, despite this lack of creativity and different justification, trade marks are
potentially the longest lasting intellectual property right. Subject to the periodic
payment of renewal fees (every 10 years under UK law), a trade mark can last
indefinitely. Indeed, Trade Mark No 1, registered in 1875 (the Bass ‘Red Triangle’ for
beer) is still on the United Kingdom Register.

However, although trade marks do promote consumer choice, at the same time they
create barriers to entry. If a trader in a very competitive sector of the economy (for
example, soft drinks) wants to introduce a new product, the advertising expenditure
to bring that product to the attention of consumers familiar with COCA COLA, PEPSI
COLA and FANTA would run into millions of pounds sterling. Powerful brands may be
a disincentive to competitors. There is thus a love-hate relationship between trade
marks and competition.

One point which you should consider critically when you study the law of trade marks
is this: UK judges sometimes assert that trade marks create an unfair monopoly (as
examples, note the remarks of the House of Lords in Re COCA COLA Trade Marks [1986]
RPC 421 and of Jacob J in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281).
Are these assertions correct? A trade mark does not create a monopoly in the sense
used by economists (which would mean that the brand owner is the only source of a
particular product). Just because there is a trade mark registration for COCA COLA does
Intellectual property 10 Introduction to trade marks page 153
not mean that its owner is the only company which can make a cola-flavoured soft
drink. Other traders can make and sell such products, as long as they adopt a different
brand name. Likewise, the COCA COLA registration does not take the word ‘cola’ out of
the English language: a botanist can write a learned article about the properties of the
cola plant without infringing the trade mark. Is it trade marks’ (potentially) perpetual
duration coupled with a low level of creativity which causes judges to react in this way?

Activity 10.1
Go over the materials above (and if need be refer to the notes you made for Chapter
2, Overview). Then write a concise summary of the nature of trade marks. Your
answer should include:
u how trade marks are similar to other forms of intellectual property
u how they differ from other forms of intellectual property
u whether they are correctly described as ‘property’
u whether they give rise to a monopoly.
No feedback provided.

Further reading
¢ Schechter, F.I. ‘The rational basis for trade mark protection’ (1927) 40 Harv LR 813.

¢ Economides, N. ‘The economics of trade marks’ (1988) 78 TMR 523.

¢ Landes, W. and R. Posner ‘The economics of trademark law’ (1988) 78 TMR 267.

10.3 The functions of trade marks

Core text
¢ Bently et al., Chapter 31 ‘Introduction to passing off and trade marks’ Section 3
‘Justification for the legal protection of trade marks’.

¢ Cornish, Chapter 16 ‘Competitor and consumer’ paras 16–022 to 16–031.

¢ Karapapa and McDonagh, Chapter 9 ‘Trade marks’ Section 9.5.

Essential reading
¢ ELVIS PRESLEY Trade Marks [1999] RPC 567; C-206/01 Arsenal Football Club v Matthew
Reed [2002] ECR I-10273 (CJEU) and [2003] RPC 696 (CA).

Further reading
¢ Schechter, F.I. ‘The rational basis for trade mark protection’ (1927) 40 Harv LR 813.

The functions which trade marks fulfil are an important theoretical aspect of
intellectual property law. Whether a sign functions as a trade mark (and indeed
how it functions) is relevant to passing off and to the registrability, infringement
and revocation of trade marks. The issue of trade mark function can be raised by the
examiners in both essay and problem questions. You should therefore ensure that you
have mastered this part of this chapter before you proceed to Chapters 11, 12, 13 and
14. When studying these subsequent chapters, you will often be referred back to the
material which follows on trade mark function.

As long ago as 1927, Schechter (in the article listed in the Further reading) argued that
the commercial task of a trade mark is ‘to create and retain custom’. The question
we must consider is whether this has been recognised in case law and legislation.
Until the passing of the Trade Marks Act 1994, the view of UK judges was that the only
function which a trade mark could fulfil was to indicate the commercial origin of
goods or services to the consumer. However, under the influence of EU law, this is no
longer the case.

It is possible to identify four possible functions which trade marks fulfil.

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10.3.1 Origin function

The traditional view of a trade mark is that it tells the consumer about the commercial
origins of the goods they are about to buy. A potential difficulty with the origin
function was disposed of at an early stage of trade mark law. It does not matter
that the consumer does not know the exact trade origin of the goods as long as the
consumer recognises the consistency of the (anonymous) source of supply (Powell v
Birmingham Vinegar Brewery Co Ltd (1896) 13 RPC 235; McDowell’s Application (1926) 43
RPC 313).

The Arsenal decision

A narrow application of the origin function could seriously curtail the scope of the
infringement action. The conclusion of Laddie J in Arsenal Football Club v Matthew
Reed [2001] RPC 922 illustrates this. He held that the football club could not sue a
counterfeiter for trade mark infringement because when a football fan bought a scarf
or T-shirt from the defendant, they would not believe that the club had made or even
approved the merchandise: instead they simply bought the goods ‘as a badge of
allegiance’.

When the case was referred to the CJEU (C-206/01 Arsenal Football Club v Matthew
Reed [2002] ECR I-10273), a much broader approach to the role of the trade mark
was adopted. The Court declared that ‘the essential function of a trade mark was to
guarantee the identity of origin of the marked goods or services to the consumer
or end user by enabling him, without any possibility of confusion, to distinguish
the goods or services from others which have another origin’. The trade mark must
offer a guarantee that all the goods or services bearing it have been manufactured
or supplied under the control of a single undertaking responsible for their quality.
Consequently, the proprietor had to be protected against competitors wishing to take
unfair advantage of the status and reputation of the trade mark. The exclusive right
found in the statutory provisions on infringement was conferred in order to enable
the trade mark proprietor to protect their specific interests as proprietor. In other
words, the scope of protection reflects the functions of the trade mark, which in turn
reflect the interests of the owner. This thinking was endorsed by the Court of Appeal
([2003] RPC 696) when the case returned to the UK. ‘Origin function’, accordingly,
has a broader meaning under the 1994 Act than it did under previous legislation,
taking into account the interests of the consumer in the quality of the goods and the
interests of the proprietor in protecting the investment in the trade mark against
misappropriation.

We shall see in Chapter 11 how the tort of passing off has traditionally protected the
origin function of trade marks. Further, although there are instances in passing off
where a broader approach to common law trade marks is taken, there are, equally,
examples where the courts have adopted a more restrictive attitude, stressing that
if there is no customer confusion, there can be no passing off (Harrods v Harrodian
School [1996] RPC 697). This points the way to common law trade marks having a
narrower function than registered trade marks. This has implications for the practice
of character merchandising (see Chapter 14).

10.3.2 Product differentiation function

Another way of expressing what trade marks do can be found in s.1(1) of the 1994
Act. The trade mark enables consumers to choose between competing products,
that is, they can ‘distinguish the goods of one undertaking from those of others’. It
may be questioned whether the product differentiation function is merely a modern
restatement of the origin function. Alternatively, in the light of the comments of
the CJEU in Arsenal v Reed, does s.1 (based on Article 2 of the Directive) go beyond
indicating the commercial source by assisting consumer choice, particularly with
reference to the quality of the goods? Whether a trade mark facilitates consumer
choice is a test deployed by the CJEU when dealing with the absolute grounds for
refusal of registration, which we shall meet in Chapter 12.
Intellectual property 10 Introduction to trade marks page 155

10.3.3 Guarantee function

When it is said that trade marks fulfil a guarantee function, there is a fine distinction
which must be understood. ‘Guarantee’ is not used in the sense found in sales of goods
law, but rather indicates that the trade mark operates to reassure the consumer about
the consistent quality of the goods.

Guarantee function and passing off

Surprisingly, the guarantee function has been recognised by the House of Lords in the
extended form of the tort of passing off (see Chapter 11). In Spalding v Gamage (1915) 32
RPC 273, it was held that the claimant’s business had been harmed by the defendant’s
having sold defective versions of the claimant’s footballs as ‘A1’ quality. In a case
involving supermarket ‘own brand lookalikes’ (United Biscuits (UK) Ltd v Asda Stores Ltd
[1997] RPC 513) Robert Walker J held that the adoption by the defendant supermarket
of the ‘get up’ of chocolate biscuits which imitated that of the claimant’s famous
PENGUIN biscuits would lead shoppers to think that the biscuits, although cheaper,
had been made for Asda by the claimants. They would expect the same quality (see
further Section 11.2.2).

Guarantee function and parallel imports

The guarantee function has also been recognised by the CJEU when dealing with cases
on the parallel importation of trade-marked goods. It was a key factor in C-10/89 SA
CNL-Sucal NV v Hag GF AG [1990] ECR I-3711 (‘Hag II’). Here there were two versions of
the famous CAFFEE HAG decaffeinated coffee on the market, one made by the original
trade mark owner in Germany, the other by a company which had acquired the trade
mark registration in Belgium after the Second World War. The CJEU accepted that
customers would be misled by the different quality and taste of the rival products,
such that the original owner of the brand could sue the Belgium owner for trade mark
infringement. The fact that historically the two trade mark registrations in Belgium
and Germany had been owned by the same enterprise was irrelevant.

Likewise, in C-143/00 Boehringer Ingelheim v Swingward Ltd and Dowelhurst [2002]

ECR I-3759 the CJEU took into account the perception of consumers when buying
branded pharmaceuticals which had been the subject of parallel imports. It said that
consumers rely on the trade mark as a means of ensuring that (legitimate) goods have
not been interfered with by those who import them from another Member State.
The Court added to this in C-228/03 The Gillette Company & Gillette Group Finland Oy v
LA-Laboratories Oy [2005] ECR I-2337: an undertaking must be in a position to keep its
customers by virtue of the quality of its products and services which is only possible if
there are distinctive marks that enable customers to identify them.

Arsenal again
We can also see how the role of the trade mark in guaranteeing quality is referred to
in the ruling in the Arsenal case above. The guarantee of quality is said, by the CJEU, to
be an aspect of the trade mark in enabling consumers to choose between competing
brands. The recognition of the guarantee function raises the question of whether, just
as in medieval times, modern trade marks have an important role to play in consumer
protection.

10.3.4 Advertising function

The protection of the advertising function is at the heart of Schechter’s argument.
He posits that if a trade mark is a vehicle for creating goodwill, its ‘selling power’
should be protected against ‘free riding’ by those who wish to take advantage of its
reputation. Again, there are echoes of this in Arsenal.

Advertising function and dilution

It can be argued that, in addition to the ruling in Arsenal, Schechter’s theory is now
part of UK law in another respect. In implementing the Trade Marks Directive, the UK
enacted ss.5(3) and 10(3) of the 1994 Act. These two subsections confer protection on
trade marks which have a reputation, enabling their owners to oppose the registration
page 156 University of London
of or object to the use of identical or similar marks which seek to take unfair advantage
of or cause detriment to the repute of the earlier mark. This form of protection
introduces the doctrine of dilution into UK law. Dilution (as a form of harm to a trade
mark) is a well-established concept in US and Benelux trade mark law. Under ss.5(3)
and 10(3), it is envisaged that a mark that has a reputation can be harmed in three
ways. First, the mark can be ‘watered down’ by use on non-competing goods so that
over a period of time it loses its distinctive quality (‘dilution’). To paraphrase Schechter,
if the use of ROLLS ROYCE on lipsticks, hamburgers or steam shovels is not prevented,
then the ROLLS ROYCE brand for cars will be weakened. The second form of harm is
that a mark with a reputation can be tarnished if it is used on non-competing goods
which have an unsavoury or unwholesome connotation. The best known example
of tarnishing as a form of dilution is the leading Benelux Court of Justice decision of
CLAERYN/KLAREIN (1976) 7 IIC 420, where the owner of CLAERYN Dutch gin was able to
prevent Colgate using KLAREIN for a toilet cleaning liquid. Both marks had an identical
pronunciation in the Dutch language and consumers would not wish to be reminded
of a toilet cleaning agent while drinking a glass of high quality gin. Last, a competitor
may ‘free ride’ on a mark with a reputation by using an identical or similar mark as a
means of gaining quick access to the market.

No confusion needed
United Kingdom courts were initially unreceptive to the nature of the protection
found in ss.5(3) and 10(3). In Baywatch Production Co Inc v The Home Video Channel
[1997] FSR 2, it was held that proof of likelihood of confusion was required. The correct
view is that established by the CJEU in C-251/95 Sabel BV v Puma AG [1997] ECR I-6191
and C-487/07 L’Oréal SA v Bellure NV, 18 June 2009. Confusion is not required, as these
two provisions pursue a different objective, namely that of protecting marks with a
reputation. Since then, the CJEU has broadened the scope of protection accorded to
marks with a reputation by holding that the two provisions are not confined to the use
of the identical or similar mark on dissimilar goods, but apply equally to the use of a
competing mark on similar goods (C-292/00 Davidoff & Cie SA and Zino Davidoff v Gofkid
Ltd [2003] ECR I-389 and C-408/01 Adidas-Salomon AG & Adidas Benelux BV v Fitnessworld
Trading Ltd [2003] ECR I-12537).

In according protection to marks with a reputation, the Trade Marks Directive and the
Trade Marks Act 1994 have gone far beyond preventing consumer confusion. Instead,
the trade mark is treated as a valuable asset, in which its owner has made a major
investment. The trade mark is therefore to be protected against those who wish to
misappropriate its selling power.

The CJEU appears to have recognised another function of trade marks in C-323/09
Interflora Inc v Marks & Spencer plc, CJEU, 22 September 2011. In that case, it suggested
that a trade mark may also be used to acquire or preserve a reputation capable of
attracting consumers and retaining their loyalty. Although this ‘investment function’
may overlap with the advertising function, it is nevertheless distinct and is adversely
affected where a competitor uses an identical sign for identical goods or services so as
to substantially interfere with the proprietor’s use of the mark to acquire or preserve a
reputation capable of attracting customers and retaining their loyalty.

For an interesting example of a case in which the functions of the registered mark
played a significant role in the determination of infringement proceedings, see
Cosmetic Warriors Ltd & Lush Ltd v Amazon.co.uk Ltd [2014] EWHC 181 (Ch).

Activity 10.2
Go over the material on the functions which trade marks perform in the modern
consumer economy. Then answer the following questions.
a. What is meant by the origin function? Does it matter that the consumer does
not know the precise name of the undertaking which makes their favourite
brand of instant coffee? Are there any problems caused by treating the origin
function as the only function which trade marks can fulfil?
Intellectual property 10 Introduction to trade marks page 157
b. How does s.1 of the Trade Marks Act 1994 (Article 2 of the Directive) define the
function of a trade mark? Is this the same as the origin function?

c. What is meant when it is said that a trade mark acts ‘as a guarantee’? Use case
law to illustrate your answer.

d. What is meant by the advertising function of trade marks? Which provisions

of the Trade Marks Act 1994 reflect this function? What is the purpose of these
provisions?

No feedback provided.

10.4 The continuing significance of EU trade marks law

Core text
¢ Bainbridge, Chapter 19 ‘Trade marks – Introduction and background’ pp.693–96.

¢ Bently et al., Chapter 31 ‘Introduction to passing off and trade marks’ Section 4
‘International and regional dimensions’.

¢ Cornish, Chapter 16 ‘Competitor and consumer’ paras 16–016 to 16–018.

¢ Karapapa and McDonagh, Chapter 9 ‘Trade marks’ Section 9.6.

As part of the task of achieving the internal market (where the boundaries between
the Member States are ignored and the EU is treated as a single territory), the EU
Commission adopted a ‘twin track’ approach to the law of trade marks. On the one
hand, the domestic laws of Member States needed to be standardised and, on the
other, there should be an EU system of registration.

In consequence, the EU enacted the First Trade Marks Directive of 21 December

1988 (Directive 89/104/EEC, OJ [1989] L 40/1) on the Approximation of National Trade
Marks Laws (to give it its full title) (codified as Directive 2008/95/EC of the European
Parliament and of the Council of 22 October 2008 [2008] OJ L 299/25) and Council
Regulation (EC) 40/94 of 20 December 1994, OJ [1994] L 11/1, on the Community
Trade Mark (codified as Council Regulation (EC) No 207/2009 of 26 February 2009 on
the Community trade mark [2009] OJ L 78/1). The wording of the provisions of the
Regulation and the Directive on registrability, infringement and revocation in these
two measures is virtually identical. Case law interpreting these provisions is therefore
interchangeable.

The EU Trade Mark Regulation was replaced by a new Trade Marks Regulation
(Regulation EU No 2017/1001 of the European Parliament and of the Council on the
European Union Trade Mark). Applications to register an EU trade mark are made
to the European Union Intellectual Property Office (EUIPO, formerly the Office for
Harmonization in the Internal Market (OHIM)). Marks registered at the Office are
called European Union Trade Marks. Since the end of the Brexit transition period, EUTM
registrations do not cover the UK.

A new Trade Marks Directive was also passed in December 2015 (Directive (EU)
2015/2436 of the European Parliament and of the Council of 16 December 2015
to approximate the laws of the Member States relating to trade marks). It was
implemented in the UK by means of the Trade Mark Regulations 2018. These
regulations made a number of significant changes to UK trade mark law. These
changes are explained at relevant points in the text. Under the arrangements
applicable from the end of the Brexit transition period (i.e. from the end of 2020), the
2018 Regulations, the Directive and pre-Brexit Judgments of the CJEU have continuing
binding force in the UK (unless and until they are repealed or adjusted by domestic
decision-makers). See Section 3.3.3 for further discussion of the impact of the UK’s
withdrawal from the EU.
page 158 University of London

10.4.1 Impact of the Directive on the Trade Marks Act 1994

The First Trade Marks Directive had a major influence on the content of the Trade Marks
Act 1994. In comparison with the Trade Marks Act 1938, the 1994 Act liberalised the
test for registrability of marks and broadened the scope of the infringement action. At
the same time, it made it easier for third parties to challenge the validity of registered
marks.

Case law of the CJEU concerning the implementation of EU directives into national law
stressed that directives must be used as an aid to the interpretation of any national
legislation covering the same area, whether such legislation was made before or after
the Directive was passed. Further, any national court unsure as to the interpretation
of national law based on a Directive has the discretion to refer the case to the Court of
Justice for a preliminary ruling under Article 267 of the Treaty on the Functioning of the
European Union (TFEU) (formerly Article 234 EC), and a court of last resort must refer
such a matter.

When asked to interpret a Directive, the CJEU, in keeping with the civil law tradition,
adopts the teleological style of interpretation, that is, it will consider the legislation
in the light of its objectives, making use of working papers and discussions which
preceded its enactment. Accordingly, when you study the preliminary rulings of the
CJEU, you will find that it often makes reference to the objectives of the Directive.
These can be found in the Directive’s Recitals (a series of clauses which form the
Preamble to the Directive, each beginning with the word ‘whereas’). These are set out
in your statute book.

10.4.2 The European Union’s Trade Mark Regulation

The Community Trade Mark Regulation led to the establishment of the EU Intellectual
Property Office (EUIPO). It is located in Alicante, Spain, and deals with applications to
register trade marks which are effective throughout the whole of the EU (the same
body now has responsibility for the registration of Community designs). EU registered
trade marks exist in parallel to national registrations.

Appeals from decisions of the EUIPO relating to registrability of trade marks (whether
on absolute or relative grounds) or on invalidity go to the General Court (formerly
known as the Court of First Instance). Further appeals on points of law may be made
to the CJEU itself. As a consequence, the judicial interpretation of the Trade Marks Act
1994 by UK courts and the United Kingdom Intellectual Property Office (UKIPO) has
had to take account of the rulings of the CJEU in interpreting the Directive, and of the
EUIPO, the General Court and the CJEU in applying the Regulation. As stated above,
these two strands of case law are interchangeable

From the end of the Brexit transition period, an EUTM granted by the EUIPO will no
longer cover the UK. However, EUTMs registered at the end of the Brexit transition
period (at the end of 2020) were automatically converted into marks registered on
the UK Trade Marks Registry (called a ‘comparable trade mark (EU)’). See the Trade
Marks (Amendment etc.) (EU Exit) Regulations 2019. However, pre-Brexit Judgments
of the CJEU on the Trade Mark Regulation will continue to bind UK courts where they
interpret aspects of trade mark law that align with the requirements of the Directive.

Sample examination question

The topics covered in this chapter, though vital for an understanding of trade mark
law, are not examinable as such.
Intellectual property 10 Introduction to trade marks page 159

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.

Tick a box for each topic. Ready to Need to Need to

move on revise first study again

I can explain the historical factors which have

influenced present-day UK trade mark law.   

I can compare and contrast the nature of the trade

mark right with other forms of intellectual property
  
protection.

I can discuss the various commercial functions

performed by trade marks and whether these are
  
recognised in legislation and case law.

I can explain the way in which EU law influences the

law of trade marks in the UK.   

I can list the functions which trade marks perform.   

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

10.1 The history of trade marks and trade mark law  

10.2 The nature of trade marks  

10.3 The functions of trade marks  

10.4 The continuing significance of EU trade marks law  

page 160 University of London

Notes
11 Passing off

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 162

11.1 The nature of passing off . . . . . . . . . . . . . . . . . . . . . . . . 163

11.2 The elements of passing off . . . . . . . . . . . . . . . . . . . . . . . 163

11.3 Defences to passing off . . . . . . . . . . . . . . . . . . . . . . . . . 168

11.4 Illustrations of the tort . . . . . . . . . . . . . . . . . . . . . . . . . 169

11.5 The foreign claimant and well-known marks . . . . . . . . . . . . . . 172

11.6 The future of passing off . . . . . . . . . . . . . . . . . . . . . . . . . 174

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . 177

page 162 University of London

Introduction
This chapter will endeavour to explain the tort of passing off, which is the common law
means of protecting trade marks. It is dealt with at this stage of your studies to help
you appreciate the importance of registering trade marks. Your knowledge of passing
off will also help you to understand the material on the acquisition and infringement
of registered marks in the chapters which follow.

There is no obligation to register a trade mark. Indeed, in some instances, the identifier
of a brand may not be capable of registration. Passing off therefore gives a trader an
opportunity to acquire protection through use of a brand name, logo or trading name,
or indeed any symbol that has been used in the course of trade to indicate the origin
of goods in such a way that it has achieved public recognition.

The law of passing off is entirely judge-made but the basic ingredients of passing off
are now well established. The onus is on the claimant to establish each one of the
interdependent elements of the tort (explained below).

Learning outcomes
By the end of this chapter and of the relevant reading, you should be able to:
u explain, using relevant authority, the factors which must be proved by a claimant
in order to succeed in an action for passing off
u describe the various ways in which passing off may be used to protect trade
marks and other symbols used in the course of trade
u discuss the ways in which passing off might develop in the future
u list the key elements in the definition of passing off.
Intellectual property 11 Passing off page 163

11.1 The nature of passing off

Core text
¢ Bainbridge, Chapter 23 ‘Passing off’ pp.858–62.

¢ Bently et al., Chapter 32 ‘Passing off’ Section 1 ‘Introduction’.

¢ Cornish, Chapter 17 ‘Common law liability’ paras 17–001 to 17–006.

¢ Karapapa and McDonagh, Chapter 8 ‘Passing off’ Sections 8.1 and 8.2.

Essential reading
¢ Chapter 2 of this module guide (on the justifications for intellectual property
and on the lack of protection for unfair competition).

¢ Cases: Erven Warnink BV v Townend & Sons [1979] AC 731; Cadbury-Schweppes v Pub
Squash Co [1981] RPC 429 (read only Lord Scarman at pp.486–97); Arsenal Football
Club v Matthew Reed [2003] RPC 696.

Passing off has been described as a ‘protean’ tort (i.e. one that keeps changing its
shape) and it is difficult to construct a single rational theory of passing off. The case
law is full of inconsistencies and is difficult to reconcile. One particular debate (which
we will return to at the end of this chapter) is about the proper role of passing off.
Should it be confined to ‘origin confusion’, so that there is no liability if customers are
not misled by the defendant? Or should it develop into a means of protecting a trader
against those who wish to misappropriate their business investment?

You will find that, in practice, the passing off action is used in two ways. First, it is the
only means available to protect unregistered trade marks and other symbols used in
the course of trade. Second, it is usually pleaded in the alternative to a claim for trade
mark infringement and is particularly useful if the registered mark is at risk from a
counterclaim for revocation or invalidity (see further Chapter 13; and as an illustration
of the need to use passing off as a ‘back up’ to a claim for infringement of a registered
trade mark, see United Biscuits (UK) Ltd v Asda Stores Ltd [1997] RPC 513). As a cause
of action, however, passing off is much more onerous than a claim for trade mark
infringement because the claimant has to satisfy each and every element of the tort.
Success or failure will be dependent on the availability of suitable evidence to support
the claimant’s case.

Activity 11.1
Go over the notes you made about the speeches of Lord Diplock in Warnink v
Townend and Lord Scarman in Pub Squash when you studied Chapter 2. Then
read the judgment of Aldous LJ in Arsenal v Reed. Do you think that Aldous LJ was
agreeing with Lord Diplock when he said that we should think of passing off as
offering protection against unfair competition?

11.2 The elements of passing off

Core text
¢ Bainbridge, Chapter 23 ‘Passing off’ pp.862–64.

¢ Bently et al., Chapter 32 ‘Passing off’ Section 1 ‘Introduction’.

¢ Cornish, Chapter 17 ‘Common law liability’ paras 17–005 and 17–006.

¢ Karapapa and McDonagh, Chapter 8 ‘Passing off’ Section 8.3.

Essential reading
¢ Cases: Erven Warnink BV v Townend & Sons [1979] AC 731; Reckitt & Colman Products
Ltd v Borden Inc [1990] 1 All ER 873.

It is generally accepted that there are two leading definitions (or rather, descriptions)
of passing off. The one which is most usually referred to in the cases is that given by
page 164 University of London
Lord Oliver in Reckitt & Colman Products Ltd v Borden Inc [1990] 1 All ER 873 (the JIF LEMON
case). Lord Oliver stated that: first, a trader must establish that they have a goodwill
or reputation attached to the goods or services which they supply; second, the trader
must demonstrate that the defendant has made a misrepresentation (whether
intentional or not) that has led or is likely to lead the public to believe that the goods
or services offered by the defendant are the goods or services of the claimant; and,
last, the trader must demonstrate that they have suffered or are likely to suffer damage
by reason of the erroneous belief caused by the defendant’s misrepresentation. This
definition is often called the ‘classic trinity’ of passing off. You should note that the
three elements are interdependent. We shall use this definition as the basis of our
examination of passing off; each element is considered separately below.

However, you will come across another so-called ‘definition’ of passing off, that given
by Lord Diplock in Erven Warnink BV v Townend & Sons [1979] AC 731. His five-point list is
that the claimant must establish that there has been:

u a misrepresentation

u made by a trader in the course of trade

u to the defendant’s prospective customers or ultimate consumers

u which is calculated to injure the business of another

u and which causes actual damage to the claimant’s goodwill or is likely to do so.

Lord Diplock’s statement is concerned only with what conduct by a defendant will
amount to passing off, and appears not to consider what a claimant has to prove as
regards the existence of goodwill in the brand name and the likely damage to the
claimant’s business. These issues are considered by the other leading speech in Erven
Warnink, that of Lord Russell. As the other members of the House of Lords agreed with
both speeches, it is arguable that, put together, they form a composite (if lengthy)
definition of the tort. You should also note Lord Diplock’s rather unhelpful warning,
which is to the effect that just because all the elements listed by him are satisfied,
does not mean that there has been passing off (which rather begs the question
whether this is indeed a comprehensive description of the tort).

Activity 11.2
Read the speeches of Lord Oliver in JIF LEMON and Lord Diplock in Erven Warnink.
Then write a concise summary setting out their respective definitions of passing off.
No feedback provided.

11.2.1 Reputation (goodwill)

Core text
¢ Bainbridge, Chapter 23 ‘Passing off’ pp.864–79.

¢ Bently et al., Chapter 32 ‘Passing off’.

¢ Cornish, Chapter 17 ‘Common law liability’ paras 17–007 to 17–021.

¢ Karapapa and McDonagh, Chapter 8 ‘Passing off’ Section 8.3.2.

Essential reading
¢ Case: Chocosuisse Union des Fabricants Suisses de Chocolat v Cadbury Ltd [1999]
RPC 826.

It is up to the claimant to establish that there is goodwill or reputation in the trade

symbol in question; in other words, that the brand name or sign has become factually
distinctive of their business (referred to sometimes as acquiring ‘secondary meaning’).
It does not matter that the brand name cannot be registered as a trade mark (e.g.
because it is descriptive of the goods, as in Reddaway v Banham [1896] AC 199 – ‘camel
hair belting’) as long as there is proof of public recognition. However, the brand name
Intellectual property 11 Passing off page 165
must have been used to indicate commercial origin, so that it is not sufficient if the
name has been used to designate a particular model or type of product (see Burberrys
v Cording (1909) 26 RPC 693 where the name in question − ‘Slip On’ − referred to the
type of raincoat sold by the claimants).

It should not be assumed that lengthy use of the brand name has to be proved in
every case, provided the other, interdependent elements of passing off are clearly
established. In Stannard v Reay [1967] RPC 589, three weeks’ use of the name ‘Mr
Chippy’ for a mobile fish and chip van sufficed. Despite such a short period of use, the
claimant was able to stop a rival operating his van under the same name, although
the case was no doubt assisted by the fact that the claimant had been operating in a
clearly defined geographical area (the Isle of Wight, off the south coast of England) and
had suffered a clear drop in sales (i.e. damage) as soon as the defendant began trading
because his customers bought their fish and chips from a different source.

Simultaneous or shared reputation

Normally, the reputation or goodwill must be exclusive to the claimant. However, it
may be possible for two undertakings to acquire a reputation simultaneously, so that
neither can stop the other from using the name in question (see Anheuser-Busch Inc
v Budejovicky Budvar NP [2000] RPC 906, CA, where BUDWEISER was the trade mark of
two rival companies, one American and one Czech). It may also be possible (though
unusual) for two undertakings to acquire their reputation from a common source (see
Sir Robert McAlpine Ltd v Alfred McAlpine plc [2004] RPC 711 where the two companies
were originally part of the same family business which had been divided along
geographical lines). In cases such as McAlpine, each undertaking has to ensure that it
does not cause customers to mistake one firm for the other. In other words, one co-
owner must not erode the exclusivity of the other’s name.

It is also possible to have shared reputation or goodwill in a product possessing special

qualities, in which case any one of the undertakings which shares this reputation
can sue a third party for passing off. The cases on shared reputation generally involve
drinks or foodstuffs which come from a particular geographical region (so that it is
the locality which imparts the special quality to the product) or which result from a
special recipe. The cases so far decided involve: Champagne (Bollinger v Costa Brava
Wine Co [1961] RPC 116 and Bulmer v Bollinger [1978] RPC 79); sherry (Vine Products v
MacKenzie [1969] RPC 1); Scotch whisky (Walker v Ost [1970] RPC 489); advocaat (Erven
Warnink v Townend & Sons Ltd [1979] AC 731); and Swiss chocolate (Chocosuisse Union
des Fabricants Suisses de Chocolat v Cadbury Ltd [1999] RPC 826). (Champagne originates
in a region of Northern France; sherry from Southern Spain; and advocaat is an egg-
flavoured drink traditionally made in the Netherlands.)

In Diageo North America Inc v Intercontinental Brands (ICB) Ltd [2010] EWHC 17 (Ch), Arnold
J held that this category of passing off was not limited to products perceived as being of
a superior quality: to hold otherwise would deny protection to the claimant’s goodwill.
Here, selling an alcoholic drink under the name VODKAT without clear labelling to
indicate that it was not vodka misled the public, particularly as the ‘get up’ of the
claimant’s leading brand of vodka (SMIRNOFF) had been copied. Arnold J’s judgment
was upheld by the Court of Appeal in Diageo North America Inc v Intercontinental Brands
[2010] EWCA Civ 920. See also Fage UK Ltd v Chobani UK Ltd [2014] EWCA Civ 5.

While the cases outlined in this section all relate to food or drink products, a court
has recently decided that there is no reason of principle why a shared reputation may
not arise in relation to the provision of services. In Military Mutual Ltd v Police Mutual
Assurance Society Ltd [2018] EWHC 1575, it was argued that goodwill could arise in the
name of a type of service (in this instance, the service provided by ‘mutual’ companies).
In the Intellectual Property Enterprise Court, Hacon HHJ held that there was no reason
why the concept of extended passing off should not encompass goodwill established
in certain types of services. However, in this instance, the claimant was unable to satisfy
the court that the public recognised the meaning of ‘mutual’ as the name for a distinct
class of services in the terms suggested by the claimant.
page 166 University of London

Reputation must be attached to a business

Reputation is not something, however, which exists in isolation. It cannot subsist
by itself, but must be attached to a business. Reputation therefore depends on the
claimant being a trader (rather than a private individual) and having a business
interest to protect. Further, the claimant’s goodwill or reputation will be limited,
both in time and geographically. Goodwill may survive after a business ceases to
trade, but only for a limited period. How long goodwill can survive after the claimant
ceases to trade is a question of fact in each case (Ad-Lib Club v Granville [1971] FSR 1). If
the claimant has no intention of reopening the business, then that will point to the
conclusion that goodwill has entirely disappeared (contrast the decision of the Privy
Council in Star Industrial Co v Yap Kwee Kor [1976] FSR 217 with the earlier decision in the
Ad-Lib Club case on this point). Nevertheless, it is possible for goodwill to continue for a
considerable period of time (40 years) even though there has been limited use of the
claimant’s mark. In Jules Rimet Cup Ltd v The Football Association Ltd [2008] FSR 254 the
court held that enough goodwill in the cartoon character ‘World Cup Willie’ survived
from its use as a mascot for the 1966 World Cup for the FA to be able to sue for passing
off in 2005.

The geographical limitations on goodwill are considered in 11.5 below: ‘The foreign
claimant and well-known marks’.

Activity 11.3
Read the Court of Appeal decision in Chocosuisse Union des Fabricants Suisses de
Chocolat v Cadbury Ltd. What does the court say about shared reputation? Are there
any difficulties raised by the facts of the case?

11.2.2 Misrepresentation

Core text
¢ Bainbridge, Chapter 23 ‘Passing off’ pp.838–46.

¢ Bently et al., Chapter 33 ‘Misrepresentation’.

¢ Cornish, Chapter 17 ‘Common law liability’ paras 17–022 to 17–028.

¢ Karapapa and McDonagh, Chapter 8 ‘Passing off’ Section 8.3.3.

Essential reading
¢ Cases: Spalding v Gamage (1915) 32 RPC 273 [1914–15] All ER Rep 147 (available in
Lexis+ via the Online Library); United Biscuits (UK) Ltd v Asda Stores Ltd [1997] RPC
513; Harrods v Harrodian School [1996] RPC 697.

Further reading
¢ Carty, H. ‘Dilution and passing off: cause for concern’ (1996) 112 LQR 632.

The defendant’s misrepresentation can be committed in a variety of ways: it can be

express or implied, by words or conduct, or it can be fraudulent or innocent (see Lord
Parker in Spalding v Gamage (1915) 32 RPC 273 at 284). What matters, though, is the
effect of the misrepresentation on the minds of the claimant’s customers. It must
lead them to make an association with the claimant or make them think that this
was ‘something for which the [claimant] was responsible’ (see the remarks of Goff
and Buckley LJJ in Bulmer v Bollinger). So, for example, in Associated Newspapers v Insert
Media [1991] FSR 380, the Court of Appeal held that passing off had been made out
where the defendant inserted advertising leaflets inside magazines published by the
claimants, as the public would think that the claimants had approved the material.
In United Biscuits (UK) Ltd v Asda Stores Ltd, it was held that where the defendants sold
PUFFIN chocolate biscuits which looked like the famous PENGUIN biscuits made by the
claimants, customers would think that the supermarket had had the biscuits made
for them by the claimants. (A puffin is a small sea-bird which lives on rocky coasts and
islands around the UK. The well-known publisher Penguin Books also developed a
‘junior’ brand called Puffin which catered for younger readers.)
Intellectual property 11 Passing off page 167
Lord Diplock’s ‘definition’ in Erven Warnink states that the misrepresentation must
be calculated to deceive. ‘Calculated’ simply means that the misrepresentation must
be likely to cause confusion (that is, in the normal civil law sense of ‘on the balance
of probabilities’). However, there are two particular problems with likelihood of
confusion.

u First, what does the claimant have to establish in order to satisfy the court that
there is a likelihood of confusion? United Kingdom courts are highly sceptical
about the value of survey evidence (see Dalgety Spiller Foods v Food Brokers [1994]
FSR 505) and much prefer customers who are prepared to give evidence in person
that they have been misled by the defendant (see Neutrogena v Golden Ltd t/a
Laboratoires Garnier [1996] RPC 473 where the claimant’s solicitor emailed her staff
to see how many had been confused by the defendant’s television advert).

u Second, it should be asked how intelligent is the deceived consumer? It is

sometimes said (inaccurately) that the test is that of the ‘moron in a hurry’.
Reference to the case where the phrase is found (Morning Star Co-operative
Society Ltd v Express Newspapers Ltd [1979] FSR 113) reveals that what the court said
about the conduct of the defendants in naming their new newspaper The Daily
Star was that ‘even the moron in a hurry’ would not confuse the name with that
of the claimant’s newspaper. In any case, in the law of registered trade marks,
the notional consumer is deemed to be reasonably well informed, reasonably
observant and circumspect (see the comments of the CJEU in C-342/97 Lloyd
Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ECR I-3819 discussed in
Chapter 12 below) and there is no reason to doubt that a similar standard should be
applied in passing off.

However, one of the major limitations on the potential development of passing off
concerns the effect of the misrepresentation on the mind of the consumer. If the
consumer is not confused about the source of the defendant’s product, there can be
no liability for passing off. This point is illustrated by two key cases, namely Hodgkinson
& Corby v Wards Mobility Service [1995] FSR 169 and Harrods v Harrodian School [1996]
RPC 697. In Hodgkinson & Corby, the claimants alleged that by reproducing the shape
of their cushions (used by healthcare professionals when nursing the chronically
ill), the defendants had committed passing off. It was held that upon seeing the
cushion, the relevant consumer would not have been confused into thinking that the
cushions were made by the claimants. In the Harrods case, the defendants had set
up a preparatory school on the site of a sports club previously owned by the famous
department store. The Court of Appeal (by a majority) held that although customers
might ‘call to mind’ the name of the claimant when confronted by the name of the
school, they would not be misled into thinking that the Harrods store had endorsed or
approved the school.

In Bostick Ltd v Sellotape GB Ltd [1994] RPC 556 it was held that ‘post-sale confusion’
would not be sufficient to establish the ‘misrepresentation’ element of the tort of
passing off. However, it seems likely that this decision is now incompatible with more
recent passing off case law (see, notably, Och-Ziff Management Europe Ltd v Och Capital
LLP [2010] EWHC 2599 (Ch)). In Freddy SpA v Hugz Clothing Ltd [2021] ECDR 8 Stone J
suggested (without full argument) that post-sale misrepresentations might give rise
to a claim in passing off.

11.2.3 Damage

Core text
¢ Bainbridge, Chapter 23 ‘Passing off’ pp.843−47.

¢ Bently et al., Chapter 34 ‘Damage’.

¢ Cornish, Chapter 17 ‘Common law liability’ paras 17–029 to 17–035.

¢ Karapapa and McDonagh, Chapter 8 ‘Passing off’ Section 8.3.4.

page 168 University of London

Essential reading
¢ Case: Taittinger v Allbev [1993] 2 CMLR 741.

Further reading
¢ Carty, H. ‘Heads of damage in passing off’ [1996] EIPR 487.

In the third element of the ‘classic trinity’, the claimant must establish that there has
been or will be damage. This is damage to the goodwill of the claimant’s business
(‘goodwill’ being defined as ‘the attractive force which brings in custom’ and ‘that
which distinguishes an old business from a new’ per Lord McNaghten in CIR v Muller
& Co’s Margarine Ltd [1901] AC 217). Such damage must be more than minimal, but
need not be actual: a threat of damage will suffice provided all the other elements of
passing off are established.

The usual form of damage alleged by the claimant will be loss of sales, because
customers have been diverted by the defendant’s misrepresentation (see, as an
example, Stannard v Reay, above). However, other forms of damage have been
recognised, not all of which accord with the role of passing off in preventing origin
confusion. Thus, in Rolls Royce Motors v Dodd [1981] FSR 519, it was recognised that the
claimants had suffered damage to the image of their product (luxury cars) by the
defendant’s having affixed the Rolls Royce badge to his home-built racing car powered
by an aeroplane engine (Megarry J overlooked the point that the defendant was not
actually trading in cars). In Taittinger v Allbev [1993] 2 CMLR 741, the Court of Appeal
recognised that the harm lay in the dilution of the name champagne were it to be
used in relation to a fruit-flavoured drink, even though there was little evidence of
consumer confusion (refer again to Chapter 10 if you are unsure about the nature of
dilution as a form of harm to a trade mark). Other forms of damage include those in
Lego System AB v Lego M Lemelstrich [1983] FSR 155 (loss of licensing opportunity), Irvine
v Talksport [2002] 2 All ER 414 (loss of merchandising potential) (we considered Irvine
in Chapter 2) and Sir Robert McAlpine Ltd v Alfred McAlpine plc [2004] RPC 711 (‘elbowing
out’ the rightful owner of the business name).

Activity 11.4
Read the decision in Taittinger v Allbev listed in your Essential reading. Can the
views of the Court of Appeal be reconciled with the orthodox view of damage as an
ingredient in passing off?

11.3 Defences to passing off

Core text
¢ Bainbridge, Chapter 23 ‘Passing off’ pp.886–88, 903–04.

¢ Bently et al., Chapter 33 ‘Misrepresentation’ Section 4 ‘Is the misrepresentation

deceptive?’

¢ Cornish, Chapter 17 ‘Common law liability’ paras 17–029 to 17–035.

¢ Karapapa and McDonagh, Chapter 8 ‘Passing off’ Section 8.4.

When faced with an action for passing off, the main defence will normally be that the
claimant has failed to establish the elements of the tort, that is, that one or more of the
‘classic trinity’ is missing. Thus the claimant may have failed to establish reputation
(as in Cadbury v Ulmer [1988] FSR 385 where the claimants did not convince the court
that the shape of their chocolate bar had acquired secondary meaning, i.e. factual
distinctiveness). Alternatively, the claimant may not have established consumer
confusion (see the Harrods case discussed above). Lastly, the claimant may have failed
to show damage to goodwill. As mentioned above, failure to establish one or more of
the elements of passing off may simply be a matter of lack of convincing evidence.

One defence that was sometimes said to exist in the past is that of ‘no common field
of activity’, i.e. that the claimant and defendant are not in the same line of business.
Intellectual property 11 Passing off page 169
However, this requirement is not mentioned in either of the judicial ‘definitions’ of
passing off given above and it no longer exits (as a defence). Rather, the relevance of the
‘no common field of business’ principle is to be found in Annabel’s (Berkeley Square) v
Schock [1972] RPC 838, where the court pointed out that it will be harder for the claimant
to establish a likelihood of confusion if the parties are not in direct competition (see also
the remarks of the Court of Appeal in Harrods v Harrodian School [1996] RPC 697).

Activity 11.5
Write a concise summary of the elements which go to make up Lord Oliver’s ‘classic
trinity’, illustrating your answer with appropriate authority. Indicate where there
are difficulties or uncertainty in the case law.
No feedback provided.

11.4 Illustrations of the tort

Core text
¢ Bainbridge, Chapter 23 ‘Passing off’ pp.873–79.

¢ Bently et al., Chapter 33 ‘Misrepresentation’ Section 3 ‘What type of suggestive

conduct is actionable?’

¢ Cornish, Chapter 17 ‘Common law liability’ paras 17–036 to 17–047.

¢ Karapapa and McDonagh, Chapter 8 ‘Passing off’ Section 8.5.

The following is merely a list of examples of how the tort may be committed. It is
intended to help you to organise into some sort of coherent groupings some of the
many cases on passing off which you will encounter in your textbooks. These groups
are illustrations of the range of misrepresentations which could be made by the
defendant. The list has no legal significance and is simply here for your convenience.

One point you will have come across in your reading is the distinction between
‘classical’ and ‘extended’ passing off. ‘Classical’ passing off arises in cases where there is
confusion as to the undertaking from which goods or services derive and accordingly
loss of customers, whereas ‘extended’ passing off involves those cases where there is
a misrepresentation as to the quality of the product or else the damage suffered goes
beyond confusion as the specific commercial origin of goods and services.

11.4.1 ‘Classical’ passing off

The following may be considered as examples of ‘classical’ passing off.

Use of the claimant’s name

The first group of cases have as a common denominator where the defendant makes
use of the claimant’s name. This can be an individual’s personal name, including
someone’s nickname (Biba Group Ltd v Biba Boutique [1980] RPC 413) or a company
name (Harrods Ltd v R Harrod Ltd (1924) 41 RPC 74). Where the claimant and defendant
both have the same family name, then a heavy burden is placed on the defendant
to ensure that there is no confusion: Boswell-Wilkie Circus v Brian Boswell Circus [1986]
FSR 479. An illustration of this harsh rule can be seen in I N Newman Ltd v Adlem [2005]
EWCA Civ 741. Here, the defendant had sold his business as a funeral director to the
claimant’s predecessor in business, but then set up a new business using his own
name, which he also registered as a trade mark. Overturning the first instance decision,
a majority of the Court of Appeal held that the goodwill of the original business
had been transferred to the claimant. Accordingly, by trading in his own name the
defendant had failed to do enough to ensure that customers would not be misled.

You should note that the ‘own name’ defence in passing off is much stricter than
the equivalent defence in trade mark infringement (see Chapter 13), such that there
appears to be no decided case where the defence has succeeded: Reed Executive plc v
Reed Business Information Ltd [2004] RPC 767.
page 170 University of London
Passing off also covers the use by the defendant of the claimant’s trading name (see
Brestian v Try [1958] RPC 161 where the protected name was ‘Charles of London’ for
a hairdressing business). However, where the trading name is descriptive, it will
be relatively easy for the defendant to escape liability by making minor changes
to the name in order to differentiate its own business: Office Cleaning Services Ltd v
Westminster Window & General Cleaners Ltd (1946) 63 RPC 39. Lastly, this group of cases
appears to have been extended by the decision in Law Society v Griffiths [1995] RPC
16, where protection was accorded to the use of a specially chosen accident helpline
telephone number. (Note that the misrepresentation in this case arose due to the
defendant’s silence in not correcting customers’ assumptions that they had contacted
the claimant.)

Use of the claimant’s trade mark

The next group of cases falling within ‘classical’ passing off has, as the unifying factor,
the use of the claimant’s trade mark. As noted already, it does not matter if the trade
mark is descriptive of the product as long as it has acquired a ‘secondary meaning’,
that is, it has become factually distinctive of the claimant’s products: Reddaway v
Banham [1896] AC 199. Likewise, protection may be accorded to geographical names,
as in Powell v Birmingham Vinegar Brewery Co (1896) 13 RPC 235, HL, where the protected
trade mark was ‘Yorkshire relish’ or as in Montgomery v Thompson [1891] AC 217 (‘Stone
ale’), as long as there is evidence that the name has achieved factual distinctiveness.
The potential breadth of passing off should be noted here, in that the claimant of a
very strong trade mark can obtain protection against use on dissimilar goods (this
should be compared with the provisions to be found in ss.5(3) and 10(3) of the Trade
Marks Act 1994, discussed in Chapters 12 and 13 respectively). Examples of this type of
protection against dilution include Eastman Photographic Materials Co v John Griffiths
Cycle Co (1898) 15 RPC 105 (where the use of KODAK, already well-known for cameras,
was enjoined in respect of bicycles) and Lego System AB v Lego M Lemelstrich [1983] FSR
155 (where the owner of LEGO for toys was able to prevent its use on plastic irrigation
equipment).

‘Get up’ of the claimant’s goods

The last major group of cases involves the use by the defendant of the ‘get up’ of the
claimant’s goods. The term ‘get up’ should be understood to include the shape of
packaging and of containers, the use of colour schemes and the layout of and typeface
used on labels, items which all help consumers to identify the commercial origin
of goods in addition to any brand name. Collectively, these matters are sometimes
referred to as ‘trade dress’. Examples of such ‘trade dress’ include:

u William Edge & Sons v Niccolls [1911] AC 693 (the packaging of ‘dolly blue’ whitening
for laundry which was sold in little muslin bags with a stick attached, so that it had
the appearance of a doll)

u Combe International v Scholl (UK) Ltd [1980] RPC 1 (the packaging of ‘odour-eater’
insoles)

u United Biscuits (UK) Ltd v Asda Stores Ltd [1997] RPC 513 (chocolate biscuit wrappers)

u John Haig v Forth Blending (1953) 70 RPC 259 (the shape of the dimple whisky bottle)

u Reckitt & Colman v Borden Inc [1990] 1 All ER 873 (the appearance of a plastic lemon
for lemon juice)

u Numatic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (Ch) (the defendant had
committed passing off by selling vacuum cleaners which imitated the ‘get up’ of
the claimant’s popular ‘Henry’ vacuum cleaner).

As we shall see in Chapter 12, consumers do not always perceive colours and shapes as
trade marks, so a greater amount of factual distinctiveness will have to be proved by the
claimant in order to succeed. As an example, in relation to colour schemes, the ‘garish’
colours of purple and green pharmaceutical capsules were protected in Hoffmann-La
Roche v DDSA [1972] RPC 1 but the ‘very ordinary’ pale blue colour of tablets in Roche
Intellectual property 11 Passing off page 171
Products v Berk Pharmaceuticals [1973] RPC 473 was not. This lack of ‘secondary meaning’
was, of course, fatal to the claim for passing off in Cadbury-Schweppes v Pub Squash Co.

In Glaxo Wellcome UK Ltd v Sandoz Ltd [2019] EWHC 2545 (Ch), a pharmaceutical company
brought a claim based on the purple colour of one of its products (an inhaler) and of
its packaging. The company argued that it had goodwill in the get up of its product
and that the defendant, who had marketed an inhaler of similar colour, was liable for
passing off. The defendant argued that, in using the contested colour, it was simply
applying an industry convention under which a particular combination of drugs
was delivered by means of an inhaler of the adopted colour. Arnold LJ reiterated the
difficulty of succeeding in passing off on the basis of unconventional indicia, such as
the shape or colour of a product [164]–[167]. In order for such a claim to be made out, a
claimant must demonstrate that these aspects of its product have come to be viewed
as a mark of trade origin. Customers do not generally tend to recognise indicia such
as product shape or colour as distinctive of trade origin. In this case, the evidence did
not support that conclusion. Furthermore, the absence of evidence of actual confusion
indicated that no misrepresentation had taken place.

The importance of this category of ‘classical’ passing off lies in the fact that it is the one
means available to protect brand owners against competition by supermarket ‘own-
brand lookalikes’: see United Biscuits (UK) Ltd v Asda Stores Ltd (the ‘get up’ of PENGUIN
biscuits confusingly imitated by the defendant’s packaging of their PUFFIN biscuits).

Activity 11.6
Go over the material on ‘classical’ passing off, then write a concise summary of the
types of misrepresentation which the defendant may commit, giving examples
from decided cases. Are there any decisions which ought to be re-evaluated in the
light of recent developments?
No feedback provided.

11.4.2 Other forms of passing off

The following may be considered as examples of ‘extended’ passing off.

False suggestion of superior quality

The first group of cases in this category all involve the defendant making a false
suggestion of superior quality. The defendant is selling genuine goods made by the
claimant, but misrepresents their quality. The harm suffered by the claimant is loss of
custom, not because of origin confusion (the goods come from a legitimate source)
but because customers will cease to buy the claimant’s goods, thinking that they
have declined in quality. The prime example is Spalding v Gamage (1915) 32 RPC 273
(already discussed in Chapter 10 in connection with the guarantee function of trade
marks) where the defendant advertised the claimant’s goods as being first class when
in fact they were defective and had been disposed of as scrap. Other examples in this
category include Wilts United Dairies v Thomas Robinson [1958] RPC 94 (where the tins of
condensed milk were past their ‘sell by’ date) and Sodastream Ltd v Thorn Cascade Ltd
[1982] RPC 457 (supplying gas canisters for the claimant’s fizzy drinks machines which
were not new but had been refilled).

Misrepresenting geographical origin or composition

The next group of cases all concern a misrepresentation as to the geographical origin
or composition of goods. You have encountered these in the discussion of ‘shared
reputation’ above. Therefore by now you should appreciate that sparkling wine cannot
be called ‘champagne’ unless it has been made in the Champagne district of France
(Bollinger v Costa Brava Wine Co [1961] RPC 116 and Bulmer v Bollinger [1978] RPC 79),
that a drink can only be called sherry if it comes from Jerez in Spain (Vine Products
v MacKenzie [1969] RPC 1) and that advocaat has to be made to a traditional Dutch
recipe (Warnink v Townend [1979] AC 731). You should also note that there is an overlap
between this category of passing off and certification trade marks (see s.50 of the
Trade Marks Act 1994) and with Council Regulation (EC) 510/2006 of 20 March 2006
page 172 University of London
[2006] OJ L 93/12 on the protection of geographical indications and designations of
origin for agricultural products and foodstuffs. This last-mentioned provision enables
producers of regional products to register the name of the place where the product
originates with the EU Commission in Brussels.

Attempts to prevent misrepresentations relating to advertising campaigns

Next, it is possible that passing off could be used to protect against the
misrepresentations relating to advertising campaigns. It should be remembered that
what is being taken is not copyright material contained in the advertisement, but
rather the themes and ideas which underlie it. Despite the negative reactions of the
Privy Council in Cadbury-Schweppes v Pub Squash Co [1981] RPC 429, other cases have
tentatively accepted that passing off could be available, at least where there is clear
evidence that the defendant has deliberately set out to take advantage of the success
of the claimant’s campaign in order to sell its own product: see RHM Foods v Bovril Ltd
[1983] RPC 275 and Elida Gibbs v Colgate-Palmolive [1983] FSR 95. However, you should
note that in the Pub Squash case, the presence of such evidence did not convince the
court to protect the claimant against misappropriation.

Comparative advertising
Another group of cases concerns comparative advertising (what comprises a
comparative advertisement was explained in Chapter 3). It is accepted that normally
comparative advertising will not amount to passing off, because the defendant is
comparing two independent products and therefore not creating origin confusion
(see Bulmer v Bollinger [1978] RPC 79). However, where the comparison is not explicit
(‘here is product A which is cheaper than product B’) but instead makes reference to
the claimant’s product in such a way as to imply some sort of trade connection, then
this may amount to passing off: see McDonald’s Hamburgers v Burgerking [1986] FSR 45
and Kimberley Clark v Fort Sterling [1997] FSR 877.

Reverse passing off

‘Reverse’ or inverse passing off, as its name suggests, involves an opposite type of
misrepresentation to that usually encountered. In ‘classical’ passing off, the defendant
will mislead customers by stating that their goods are those of the claimant. In
‘reverse’ passing off, the defendant misleads by, for example, showing customers
a catalogue of the claimant’s products while intimating that they have been made
by the defendant, which is what happened in Bristol Conservatories v Conservatories
Custom Built [1989] RPC 455.

There is one other category of ‘extended’ passing off, involving character, personality
and image merchandising. As this requires a discussion of copyright, passing off and
the law of registered trade marks, as well as the more recent cases on invasion of
privacy, which is the subject of a separate chapter (see Chapter 14).

Activity 11.7
Go over the material on ‘extended’ passing off, then write a concise summary of
the types of misrepresentation which the defendant may commit, giving examples
from decided cases. In each case, indicate the harm which was suffered by the
claimant’s business. Can this type of harm be reconciled with the traditional role of
passing off in preventing origin confusion?
No feedback provided.

11.5 The foreign claimant and well-known marks

Core text
¢ Bainbridge, Chapter 23 ‘Passing off’ pp.877–79.

¢ Bently et al., Chapter 32 ‘Passing off’ Section 2 ‘Requirement of goodwill’

subsection 2.2.iii ‘Foreign traders’.
Intellectual property 11 Passing off page 173
¢ Cornish, Chapter 17 ‘Common law liability’ paras 17–016 and 17–017.

¢ Karapapa and McDonagh, Chapter 8 ‘Passing off’ Section 8.6.

Essential reading
¢ Cases: Anheuser-Busch Inc v Budejovicky Budvar NP [1984] FSR 413; Peter
Waterman v CBS (THE HIT FACTORY) [1993] EMLR 27; Starbucks (HK) Ltd v British Sky
Broadcasting Group plc [2015] UKSC 31.

You should recollect from your study of this chapter so far that one of the essential
elements from Lord Oliver’s ‘classic trinity’ is that the claimant must have a reputation
or goodwill. This goodwill is limited to the territory of England and Wales or possibly
only a part of that territory. But what if the claimant is an overseas undertaking? What
must they establish in order to be able to bring a passing off action?

Consider the spectrum of business activity which might occur. The overseas enterprise
might have a factory or other business premises (in which case there will be UK
goodwill capable of protection). Another possibility is that there may simply be an
office where orders for goods or bookings for services can be made: this was the case
in Sheraton Corporation v Sheraton Motels [1964] RPC 202 where the claimant succeeded
(though some argue that the decision was generous to the claimant). Further along
the spectrum, there may be customers of the claimant within the jurisdiction (who
might have purchased the claimant’s goods or services when out of the UK, perhaps
on holiday) but otherwise no business presence. The last possibility is that the
claimant is simply known to the public in the UK as a result of ‘spill over’ advertising in
films, television or magazines (as was the case in Maxim’s v Dye [1978] 2 All ER 55 where,
nevertheless, a remedy was granted − Graham J, with a degree of foresight, adopting
a ‘global’ approach to the issue of goodwill). The Court of Appeal in Anheuser-Busch Inc
v Budejovicky Budvar NP [1984] FSR 413 declared that the minimum which will suffice
to enable an overseas undertaking to sue for passing off is that there must at least
be customers in the UK who can be misled by the defendant’s misrepresentations.
Further, those customers must be members of the UK public, not visiting foreign
nationals such as the American armed forces. In this case, the claim for passing off
failed because at the time (you should note the date of the case − 1984) the claimant’s
trade mark BUDWEISER for beer was not known to the general public, having been
supplied only to US forces personnel stationed temporarily in the UK.

The case law in this area was reviewed and considered by the Supreme Court in
Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2015] UKSC 31, which confirmed
the rule that a claimant with a reputation only (and no customers) in the jurisdiction
cannot bring proceedings for passing off. See also Plentyoffish Media Inc v Plenty More
LLP [2011] EWHC 2568 (Ch).

The above cases can be contrasted with the approach in other common law
jurisdictions. In Australia, for example, it has been held that reputation alone is
sufficient to enable a foreign litigant to sue for passing off: Conagra Inc v McCain Foods
(Aust) Pty Ltd (1992) 106 ALR 465.

Also, it should be noted that s.56 of the Trade Marks Act 1994 provides that the
proprietor of a well-known mark is entitled to restrain by injunction the use in the UK
of a trade mark which is identical or similar to their mark, in relation to identical or
similar goods or services, where the use of the same is likely to cause confusion. The
purpose of s.56 (which implements the UK’s obligations under Article 6bis of the Paris
Convention) is to enable overseas trade mark owners, who have neither registration
nor use of their mark in the UK, to prevent others misappropriating it on evidence that
their mark is well-known. Individuals or organisations domiciled in the UK cannot rely
on this provision, again because of the wording of the Paris Convention: Jules Rimet Cup
Ltd v The Football Association Ltd [2008] FSR 254.

An example of s.56 in operation is LE MANS Trade Mark Application, 8 November

2004 (available from the UK Intellectual Property Office (UKIPO) website). In
the case, Richard Arnold QC, sitting as the Appointed Person, refers to the Joint
Recommendation Concerning Provisions on the Protection of Well-Known Marks
page 174 University of London
adopted by WIPO in September 1999, particularly Article 2 thereof which lists the
factors to be taken into account by any national authority in determining whether a
mark is well-known. You may find it helpful to read paras 55–62 of the LE MANS case in
order to gain an understanding of what is a well-known mark.

Activity 11.8
Read Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2015] UKSC 31. What
does the judgment of the Supreme Court say about the nature of the goodwill
that an overseas undertaking must prove before it can bring a passing off action
before UK courts? Is the position endorsed by the Supreme Court appropriate in the
21st century?

11.6 The future of passing off

Core text
¢ Bainbridge, Chapter 23 ‘Passing off’ pp.910–11.

¢ Bently et al., Chapter 34 ‘Damage’ Section 3 ‘Unfair competition’.

¢ Cornish, Chapter 17 ‘Common law liability’ paras 17–036 to 17–047.

¢ Karapapa and McDonagh, Chapter 8 ‘Passing off’ Section 8.7.

Essential reading
¢ Case: L’Oréal SA v Bellure NV [2008] RPC 196.

Further reading
¢ Spence, M. ‘Passing off and the misappropriation of valuable intangibles’ (1996)
112 LQR 472.

¢ Carty, H. ‘The common law and quest for the IP effect’ [2007] IPQ 237.

¢ Carty, H. ‘Passing off: frameworks of liability debated’ [2012] IPQ 106.

From the above discussion of passing off, you should begin to appreciate that the case
law tends to go through phases. It is possible to find many instances where the judges
appear to be more liberal in their treatment of passing off (see, for example, Vine
Products v MacKenzie [1969] RPC 1, Erven Warnink BV v Townend & Sons [1979] AC 731 and
Taittinger v Allbev [1993] 2 CMLR 741). Equally, however, there are times when judges are
far more conservative (see Cadbury-Schweppes v Pub Squash Co [1981] RPC 429, Harrods v
Harrodian School [1996] RPC 697 and Hodgkinson & Corby v Wards Mobility Service [1995]
FSR 169 for three contrasting decisions). In so far as it is possible to predict future
developments, you will find it helpful to reflect on how passing off might change in the
future. Such change might take place in one of two ways, either through contraction
or expansion.

11.6.1 Contraction of passing off

Since 1994, the law of registered trade marks has changed dramatically. In particular,
the criteria for what can be a registered mark have been relaxed appreciably (see the
discussion of s.3 of the 1994 Act in Chapter 12) and the scope of protection accorded to
such a mark has expanded far beyond that found under old UK law (see the explanation
of s.10 of the 1994 Act in Chapter 13). If (as is the case) it is possible to register shapes,
packaging and colours as trade marks, that area of passing off dealing with ‘trade
dress’ (see Section 11.4.1) ought to decline in importance. Equally, if the trade mark
infringement action is no longer confined to the goods of the registration (as was
the case under the old law), but protects against use on similar goods and dissimilar
goods, then cases like the Lego case are of historical interest only. Further, as the law
of registered trade marks now provides protection against dilution, then those cases
which have confined passing off to instances of origin confusion beg the question of
whether passing off adds anything to the law of registered trade marks. Lastly, the
views of the CJEU and CA in Arsenal v Reed appear to indicate that trade mark law has
Intellectual property 11 Passing off page 175
moved very sharply towards protecting the interests of the trade mark owner rather
than those of the consumer. What role can be left for passing off? Try also to read
the articles by Spence and Carty listed above and come to your own conclusion as to
whether passing off should evolve into a tort of unfair competition. This will enable you
to answer the second sample examination question below.

11.6.2 Expansion of passing off

The alternative argument about the future of passing off is based on the premise
that the UK ought to have a law of unfair competition, and that in the absence of
legislation, passing off is the proper vehicle to provide such protection. The arguments
(and supporting literature) are clearly listed in Bently et al. and you are strongly
recommended to read this section carefully.

Activity 11.9
Read again the key pages in Bently et al. and the articles listed above. Then prepare
your own summary of the arguments for and against the development of passing
off into a tort of unfair competition.
No feedback provided.

Sample examination questions

Question 1 Lustre Ltd is a UK manufacturer of skin-care products. It seeks your
advice about its plans to launch two new products in the UK.
u Lustre Ltd intends to launch a new range of facial washes and soaps in the UK
called FRENCH SOAP. The company has chosen this name as market research
shows that a substantial section of the UK public consider French soap to be a
luxury item. The French soap-making industry, led by the largest French company
in the industry, Grand SA, wants Lustre Ltd to rename its FRENCH SOAP range.
Grand SA acknowledges, however, that much of the soap sold in France is actually
produced by French companies based in Switzerland and that, in practice, there
is little difference between French soap and soap from other countries.
u Lustre Ltd is about to launch a budget range of shampoo in the UK, called GRAND
HAIR. The French company Grand SA has written to Lustre Ltd to protest about
this planned launch. Grand SA produces its own luxury hair products (GRAND
HAIR LUXE) which are very popular with English people visiting France, and Grand
SA had intended to begin selling these luxury products in the UK next year.
u Assuming that there are no registered trade marks in respect of FRENCH SOAP
or GRAND HAIR, advise Lustre Ltd as to whether Grand SA can stop it from using
FRENCH SOAP and GRAND HAIR.
Question 2 ‘The fact that there is no general concept of unfair competition in the
UK is indefensible.’
Discuss.
page 176 University of London

Advice on answering the questions

Question 1 As there are no registered marks, Lustre Ltd may become the defendant to
passing off actions brought by Grand SA. A good answer should do the following.

u List the elements of the action as given by Lord Oliver in Reckitt & Colman Products
Ltd v Borden Inc.

u In respect of FRENCH SOAP, consider the requirement of shared reputation as

discussed in the various drinks cases. Does FRENCH SOAP meet these criteria?
Consider further the Chocosuisse case and the difficulties encountered by the Court
of Appeal in determining who were the relevant producers.

u In respect of FRENCH SOAP, are the other elements of passing off established?
Does it matter that there will not be confusion, bearing in mind that this type of
misrepresentation falls within ‘extended’ passing off?

u In respect of GRAND HAIR, where Grand SA will be suing on its own behalf, can
Grand SA meet the requirements for a foreign claimant? Are the other elements of
passing off established?

Question 2 A good answer should:

u explain the traditional approach under UK law which has denied the existence
of protection against unfair competition (as explained in the Australian cases
of Victoria Park Racing v Taylor and Moorgate Tobacco v Philip Morris discussed in
Chapter 2)

u consider whether passing off could be developed to encompass unfair

competition, but add that this would depend on judicial willingness to expand
the tort; comparison could be made between the views of Lord Diplock in Erven
Warnink BV v Townend & Sons and Lord Scarman in Cadbury-Schweppes v Pub Squash
Co about how the common law should respond to unfair trading practices

u rehearse some of the arguments for and against the need for a law of unfair
competition, making reference to the extensive literature cited in Bently et al.
Intellectual property 11 Passing off page 177

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.
Tick a box for each topic. Ready to Need to Need to
move on revise first study again

I can explain, using relevant authority, the factors

which must be proved by a claimant in order to
  
succeed in an action for passing off.

I can describe the various ways in which passing

off may be used to protect trade marks and other
  
symbols used in the course of trade.

I can discuss the ways in which passing off might

develop in the future.   

I can list the key elements in the definition of passing

off.   

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?

Must Revision
revise done
11.1 The nature of passing off  

11.2 The elements of passing off  

11.3 Defences to passing off  

11.4 Illustrations of the tort  

11.5 The foreign claimant and well-known marks  

11.6 The future of passing off  

page 178 University of London

Notes
12 Registration of trade marks

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 180

12.1 Background: registry procedure . . . . . . . . . . . . . . . . . . . . . 181

12.2 The meaning of ‘mark’ . . . . . . . . . . . . . . . . . . . . . . . . . 182

12.3 Absolute grounds for refusal . . . . . . . . . . . . . . . . . . . . . . 185

12.4 Relative grounds for refusal . . . . . . . . . . . . . . . . . . . . . . . 198

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . 210

page 180 University of London
Introduction
The aim of this chapter is to explain the steps which must be taken and the criteria
which must be met when applying to register a trade mark. We shall set the scene by
briefly discussing the procedure of the United Kingdom Trade Marks Registry before
examining three fundamental issues, namely the definition of what can be a trade
mark, the absolute grounds of refusal and the relative grounds of refusal.

This is an area of your course when you must appreciate the European dimension of
intellectual property. The registrability of trade marks is one of several areas where
the Trade Marks Directive has radically changed UK domestic law. Further, as explained
in Chapter 10, there has been a huge volume of case law from the Court of Justice
(CJEU). This case law has arisen either on appeal from the Community trade mark
office (OHIM) (now the European Union Intellectual Property Office (EUIPO)) or as a
result of a request for a preliminary ruling on the meaning of the Directive made by
one of the national courts of the Member States under Article 267 of the Treaty on
the Functioning of the European Union (TFEU) (formerly Article 234 EC). As previously
explained, because the key provisions in the Directive and the Community Trade Mark
Regulation are identically worded, these two lines of case law are interchangeable.

From the end of 2020, Judgments of the CJEU are no longer binding in the UK. However,
the Court’s Judgments that were handed down before the end of the Brexit transition
period on 31 December 2020 retain binding effect as retained EU case law unless
explicitly departed from by the UK legislature or certain higher courts, including the
Supreme Court and the Court of Appeal (see Section 3.3.3 for an explanation of the
impact of Brexit on the role played by EU legislation and case law in the UK’s system of
intellectual property, in general, and trade mark law, in particular).

The other matter you must remember as you work your way through this chapter is
the commercial functions performed by trade marks. These were discussed in Chapter
10 and if need be you should return to your notes to remind yourself of the key points.
Trade marks act as communicators between the manufacturer of a product and the
ultimate consumer. You therefore need to place yourself (if you can) in the position
of the relevant English consumer of the product, and to decide what message the
trade mark conveys to such a person. This is the test to be adopted when determining
all the issues of registrability, and you must familiarise yourself with it at the earliest
opportunity.

Learning outcomes
By the end of this chapter and of the relevant reading, you should be able to:
u summarise in outline the procedural steps which are taken when obtaining
registration of a trade mark
u explain the key elements which go to make up the statutory definition of a
trade mark
u explain how the absolute grounds for the refusal of registration of a trade mark
have been interpreted by the CJEU, including the policy underlying these grounds
(where such policy has been explained by the Court)
u explain how the relative grounds for refusal of registration of a trade mark
interrelate and how they are to be applied, using the case law of the CJEU to
support your explanation
u list the points which must be satisfied before a trade mark can be entered on the
United Kingdom Trade Marks Register.
Intellectual property 12 Registration of trade marks page 181
12.1 Background: registry procedure

Core text
¢ Bainbridge, Chapter 20 ‘The UK trade marks – registrability, surrender,
revocation, and invalidity, property rights and registration’ pp.766–72.

¢ Bently et al., Chapter 35 ‘Trade mark registration’.

¢ Cornish, Chapter 18 ‘Registered trade marks’ paras 18–001 to 18–009.

¢ Karapapa and McDonagh, Chapter 10 ‘Registration of a “sign”’ Sections 10.1 and

10.2.

The steps which are to be taken when an applicant seeks registration of a trade
mark in the UK are relatively straightforward. As a result of the Trade Marks (Relative
Grounds) Order 2007 (SI 2007/1976), Registry procedure was significantly amended
with effect from 1 October 2007. The Trade Marks Act 1994 (TMA) s.7 (dealing with
honest concurrent use) was repealed and s.8 brought into force.

You are not expected to become expert in the intricacies of Registry procedure.
Instead, the procedure is explained here (and indeed in most of the recommended
texts in diagrammatic form) so that you can appreciate the context in which the
legal issues arise. Registry procedure is not examinable as such. Instead, examination
questions may well ask you to consider whether particular marks are capable of
registration, or whether an application is barred by one or more prior rights.

In outline, Registry procedure is as follows. Once an application has been filed

using the official application form (Form TM3, which can be downloaded from the
United Kingdom Intellectual Property Office (UKIPO) website) and the appropriate
fees paid, then the application will be examined by an Examiner in the Trade Marks
Registry. A search for prior rights recorded on the United Kingdom Register will
also be conducted. The purpose of the examination is to ensure that all the formal
requirements in the TMA and the associated Trade Mark Rules have been met. The
Examiner may also raise one of two substantive objections, namely that the ‘mark’
(whatever it is) does not satisfy the definition of ‘trade mark’ in s.1 TMA and/or that the
application is barred by one or more of the absolute grounds for refusal found in s.3.
However, if there are no objections, or if the applicant overcomes these objections
either by correspondence or as the result of a hearing, then the mark is advertised in
a weekly publication issued online by the Trade Marks Registry, namely the Trade Marks
Journal. Third parties then have a maximum period of three months (which cannot be
extended) within which to file a notice of opposition. In the UK system, an opposition
can be based on the same grounds as any objection raised by the Trade Mark Examiner,
that is, what has been applied for is not a trade mark or is barred by absolute and/or
relative grounds, although an objection on relative grounds can only be brought by
the owner of the earlier right. If no opposition is filed or if any opposition is overcome,
then the mark will be registered for an initial period of 10 years (calculated from the
filing date). It can be renewed every 10 years thereafter.

The CJEU has ruled that the applicant’s statement of goods and services for which
the mark is to be registered must be set out with sufficient clarity and precision to
enable the scope of protection to be appreciated (C-307/10 Chartered Institute of Patent
Attorneys v Registrar of Trade Marks, CJEU, 19 June 2012).

Activity 12.1
Read the account of the trade mark application procedure in either Bently et
al., Cornish or Norman, then write a concise summary of the key stages in the
application procedure. Your answer should include an indication of:
u which substantive arguments might be raised against the application
u by whom these arguments could be raised
u at which stages of the process they could be raised
u whether there are any time limits to any stages of the process.
No feedback provided.
page 182 University of London
12.2 The meaning of ‘mark’

Core text
¢ Bainbridge, Chapter 20 ‘The UK trade marks – registrability, surrender,
revocation, and invalidity, property rights and registration’ pp.701–12.

¢ Bently et al., Chapter 36 ‘Subject matter’.

¢ Cornish, Chapter 18 ‘Registered trade marks’ paras 18–016 to 18–021.

¢ Karapapa and McDonagh, Chapter 10 ‘Registration of a “sign”’ Section 10.4.

Essential reading
¢ Trade Marks Directive, Article 2; TMA s.1.

¢ Cases: C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2002] ECR I-11737;
C-283/01 Shield Mark BV v Joost Kist [2003] ECR I-14313; C-104/01 Libertel Groep
BV v Benelux-Merkenbureau [2003] ECR I-3793; C-299/99 Philips Electronics BV v
Remington Consumer Products [2002] ECR I-5475; C-321/03 Dyson Ltd v Registrar of
Trade Marks [2007] RPC 619.

Our discussion of what comprises a trade mark begins with an analysis of the relevant
statutory provision, namely s.1 of the TMA. This is based on Article 2 of the Trade Marks
Directive (though the wording is not identical). You should read the wording of both
provisions carefully now.

Both provisions contain an identical but non-exhaustive list of things which can be
a trade mark. Shapes are expressly included (although, as we shall see below, s.3(2)
imposes policy limitations which may apply to shapes, as well as other characteristics
of goods). The express inclusion of shapes as potential trade marks overturns a House of
Lords’ decision under the pre-1994 law, Re COCA COLA Trade Marks [1986] RPC 421, which
was to the effect that a bottle could not be a trade mark ‘because it would create an
unfair monopoly’. You should immediately recognise the illogicality of that conclusion
as shapes of containers are protected under the law of passing off (see Chapter 11).

The CJEU has offered further guidance as to the scope of Article 2. It has confirmed that
the list in Article 2 is not intended to be exhaustive (C-283/01 Shield Mark BV v Joost Kist
[2003] ECR I-14313 per AG Colomer at paragraph 22). Further, Article 2 sets out minimum
requirements for something to be a trade mark (C-404/02 Nichols plc v Registrar of
Trade Marks [2004] ECR I-8499 per AG Colomer at paragraph 32). Last, the policy of
Article 2 is to define the types of sign of which a trade mark may consist irrespective
of the goods or services for which protection is sought (C-363/99 Koninklijke KPN
Nederland NV v Benelux-Merkenbureau (POSTKANTOOR) [2004] ECR I-1619). In other
words, the test under Article 2 is to be carried out in the abstract, without reference to
the statement of goods or services included in the Trade Mark Application Form.

There are three elements which go to make up the ‘definition’ of ‘trade mark’: sign,
requirement to represent the mark clearly and precisely and capacity to distinguish.

12.2.1 ‘Sign’
United Kingdom courts have declared that a ‘sign’ is ‘anything which conveys
information’ (Philips Electronics NV v Remington Consumer Products [1998] RPC 283 at
298 per Jacob J), so that a word is ‘plainly included within the meaning of sign’ (British
Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 305 per Jacob J). The CJEU has
gone further by stating that human beings perceive and recognise messages (i.e.
communicate) with the help of senses other than sight. Any message capable of
perception by the senses can be a trade mark, provided it is potentially capable
of distinguishing (C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2002]
ECR I-11737 per AG Colomer at paragraphs 20–21). Such messages need not be visual
(C-283/01 Shield Mark BV v Joost Kist [2003] ECR I-14313 per AG Colomer at paragraph
30) and so could appeal to the sense of hearing, smell, taste or touch. However, these
sensory signs (as they are called) give rise to other difficulties.
Intellectual property 12 Registration of trade marks page 183
This liberal approach should be contrasted with that found under former UK law. Here,
judges had assumed that a product could not be a trade mark of itself (Re James’s
Trade Mark (1886) 33 Ch D 392) and that the trade mark had to be able to be described
separately from the goods (Interlego AG’s Trade Mark Applications [1998] RPC 69 at 108–
10). However, it was accepted that a trade mark could cover the whole surface of the
goods (Smith, Kline & French Laboratories Ltd v Sterling Winthrop Group Ltd [1976] RPC 511,
HL). A further difficulty encountered under former UK law was that a trade mark had
to be visible at point of sale, so that the stripes in toothpaste could not act as a trade
mark as the consumer would not see the mark until the goods were used (Unilever’s
Application [1980] FSR 286). However, this thinking has probably been overturned by
the ruling in C-206/01 Arsenal Football Club v Matthew Reed [2002] ECR I-10273 (discussed
in Chapter 10), which is to the effect that one must take into account the perceptions
of subsequent users of the product as well as those of the initial purchaser in
determining the scope of the trade mark right.

The broad interpretation of the word sign by the CJEU did not, however, help the
applicant in C-321/03 Dyson Ltd v Registrar of Trade Marks [2007] RPC 619 where the
Court ruled that a transparent bin for collecting dust for a vacuum cleaner was a
concept not a sign.

See also the judgment of the Court of Appeal in Société des Produits Nestlé SA v Cadbury
UK Ltd [2013] EWCA Civ 1174 in which it decided that Cadbury’s registration of the colour
purple should not have been granted. In its application, the applicant had stated that
the colour was to be the ‘predominant’ colour applied to the packaging of the goods,
wording which lacked the necessary precision required of a trade mark application. In
JW Spear & Sons Ltd v Zynga Inc [2013] EWCA Civ 1175, the judgment of Arnold J, in which
he held that a trade mark registration for the tiles used in the game of ‘Scrabble’ was
invalid, was upheld. The mark covered an infinite number of permutations of size and
position of letters and numbers on a tile and the size of the tile was not specified.
The mark did not meet the Sieckmann criteria of being clear, precise, intelligible and
objective.

In C-421/13 Apple Inc v Deutsches Patent und Markenamt [2014] ETMR 48, the Court
of Justice held that the representation of the design and layout of a retail store
could constitute a trade mark provided that the representation was capable
of distinguishing the goods or services of one undertaking from those of other
undertakings.

12.2.2 Requirement to represent the mark clearly and precisely

Under s.1()(a) of the Trade Marks Act 1994, as amended by the Trade Marks Regulations
2018, a trade mark must be capable of being represented in the Register in a manner
that allows the Registrar and the public to determine the clear and precise subject
matter of the protection afforded to the proprietor. This requirement replaces a
requirement for a trade mark to be ‘graphically represented’.

Prior to this amendment, a number of cases considered the requirements of ‘graphic

representation’. The most important of these was C-273/00 Sieckmann v Deutsches
Patent- und Markenamt [2002] ECR I-11737 paragraphs 45–55. In that case, the Court of
Justice considered the reason underlying the graphic representation requirement and
the criteria that must be met. The principles emerging from Sieckmann have clearly
had an impact on the redrafted requirement, which is now found in s.1(1)(a), with its
concerns with clarity and precision. However, certain sorts of sign, which would have
been difficult to register under the so-called ‘Sieckmann criteria’ (e.g. sound marks or
even, perhaps, hologram marks), will be registrable under the new conditions.

Activity 12.2
Read the ruling in Sieckmann carefully. Then summarise:
a. the reasons why Article 2 of the Directive (s.1 TMA) had a requirement of graphic
representation

b. the extent to which the ‘Sieckmann criteria’ have been varied by the recent
change to the definition of a trade mark under the Trade Marks Regulations 2018.
page 184 University of London
When you have completed Activity 12.2, return to the ruling in Sieckmann and
consider its facts. The applicant had attempted to register the smell of cinnamon.
The CJEU declared that in principle a smell could be a trade mark. Then, however,
the Court gave a negative reply to the referring court about whether a chemical
formula, a written description or a sample of the smell could meet the criteria it had
just established. Do you think that a smell mark could be registered under the new
approach to the definition of a ‘trade mark’?

The Court also applied the Sieckmann criteria in C-104/01 Libertel Groep BV v Benelux-
Merkenbureau [2003] ECR I-3793, which concerned an application to register a colour
as a trade mark. The Court declared that the applicant should use the Pantone scheme
or any other similar internationally recognised identification system for colours if a
mark was to be registered. (Pantone is a widely used scheme of colour shades that are
represented by code numbers indicating which colour components go to make up
that shade.) There seems no reason to suppose that the recent change in the wording
of the legislation will alter this (given the continuing requirements of ‘clarity’ and
‘precision’).

In C-124/18P Red Bull GmbH v EUIPO, the Court of Justice heard an appeal from a
judgment of the General Court. The case concerned an attempt to register trade
marks relating to the company that manufactured and sold the Red Bull ‘energy
drink’. In two applications, the company sought a mark for a combination of the two
colours. This graphic representation was accompanied by two descriptions, the first
indicating that the ratio of each of the two colours was ‘approximately 50%–50%’ and
the second that the two colours were juxtaposed to each other and would be applied
in equal proportion. Considering C-49/02 Heidelberger Bauchemie, the Court reiterated
that marks were only to be registered if the application contained a representation
that allowed the subject matter and scope of the subject matter to be clearly and
precisely defined. It upheld the Judgment of the General Court, which had held that
marks consisting of a combination of colours (as here) must systematically specify the
spatial arrangement of the colours in question. In this instance, this condition was not
satisfied. The representation of the marks at issue was insufficiently precise without
such a specification of spatial arrangement.

12.2.3 ‘Capable of distinguishing’

In C-299/99 Philips Electronics BV v Remington Consumer Products [2002] ECR I-5475 (at
paragraphs 39 and 47–50) the Court explained that if a trade mark has distinctive
character (either inherently or as a result of use) then it must be capable of
distinguishing. ‘Capable of distinguishing’ in Article 2 simply means that the sign must
be able to differentiate the goods of one undertaking from another and so fulfil its
essential function of guaranteeing the origin of the product. Could the sign enable the
public (i.e. consumers) to decide that the goods bearing the mark come from just one
business which is responsible for the quality of the goods? The Court added that all
types of trade mark should receive the same assessment under Article 2. In the case
of ‘non-standard’ marks such as shapes, there is no requirement that the shape has to
have any additional embellishment before it can be a trade mark.

Other cases decided by the CJEU or its General Court (previously called the Court of First
Instance) have emphasised that the issue in Article 2 (s.1 TMA) is whether the sign has the
potential to act as a trade mark (see in particular C-283/01 Shield Mark BV v Joost Kist [2003]
ECR I-14313 per Colomer AG at paragraph 20; and Case T-316/00 Viking Umwelttechnik GmbH
v OHIM [2002] ECR II-3715, at paras 23–24). Put simply, what ‘capable of distinguishing’
means is that the category of sign (e.g. a shape, musical tune, colours) must have the
potential to function as a trade mark, to enable consumers to choose between different
brands, regardless of the goods or services to which it is to be applied. Whether the sign
actually does so is a matter to be determined under the absolute grounds for refusal.
It should therefore be clear that Article 2 of the Directive (s.1 TMA) provides a very low
threshold. Almost anything could be a trade mark. This is the meaning of ‘capable of
distinguishing’ which you must remember.
Intellectual property 12 Registration of trade marks page 185
Activity 12.3
Go over your notes on the meaning of ‘trade mark’ in s.1 TMA (Article 2 of the
Directive). Then complete the following chart by providing a definition of the
elements found in s.1, together with the relevant case law where this definition
may be found.

Element Definition Authority

‘Sign’
‘Capable of representing clearly and precisely’
‘Capable of distinguishing’

No feedback provided. You may need to draw the chart in a large enough format to
give yourself sufficient space to fill it in.

12.3 Absolute grounds for refusal

Core text
¢ Bainbridge, Chapter 20 ‘The UK trade marks – registrability, surrender,
revocation, and invalidity, property rights and registration’ pp.712–35.

¢ Bently et al., Chapter 37 ‘Absolute grounds for refusal’.

¢ Cornish, Chapter 18 ‘Registered trade marks’ paras 18–023 to 18–051.

¢ Karapapa and McDonagh, Chapter 11 ‘Absolute grounds for refusal of registration’.

Essential reading
¢ Trade Marks Directive, Article 3; TMA s.3.

¢ Cases: C-383/99 P Procter & Gamble Company v OHIM (BABY DRY) [2001] ECR I-6251;
C-191/01 P OHIM v Wm Wrigley Junior Co (DOUBLEMINT) [2003] ECR I-12447; C-299/99
Philips Electronics BV v Remington Consumer Products [1999] RPC 809 (CA) and
[2002] ECR I-5475 (CJEU); C-53/01, 54/01 & 55/01 Linde AG, Winward Industries Inc
& Rado Uhren AG v Deutsches Patent- und Markenamt [2003] ECR I-3161; C-108/97
and 109/97 Windsurfing Chiemsee Produktions und Vertriebs GmbH v Boots und
Segelzubehor Walter Huber [1999] ECR I-2779; Bongrain’s Application [2005] RPC
306; Société de Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358.

¢ Strowel, B. ‘Benelux: a guide to the validity of three-dimensional trade marks in

Europe’ [1995] EIPR 154 (available in Westlaw via the Online Library).

12.3.1 Overview of absolute grounds

Absolute grounds are concerned with the internal characteristics of the trade mark (i.e.
with some innate quality that means it cannot be registered). Section 3 TMA contains
a list of negative objections that the Registry (or an opponent) must establish. A sign is
presumed registrable unless the Registry can show that it fails under one or more of the
absolute grounds (s.3). Section 3 contains an exhaustive list of objections: the Registry
does not have any residual discretion, as it did under the Trade Marks Act 1938.

Before examining the absolute grounds in detail, it will be useful to get an overall
view of the structure of s.3. You should therefore read s.3 and its counterpart in
the Directive, Article 3 carefully now. Note how there is one general subsection
(s.3(1)) that applies to all types of trade marks, no matter what they are, and which is
qualified by a proviso (see further below). The proviso only qualifies s.3(1), not the
remaining subsections. The other provisions apply to specific cases only. Hence:

u s.3(2) deals with signs that consist of the shape, or other characteristics, of goods

u s.3(3)(a) and (b) deal respectively with marks that are contrary to public policy or
are deceptive
page 186 University of London
u s.3(4) and (5) deal respectively with marks that are contrary to any provision of UK
or EU law or which consist of or contain any specially protected emblems, such as
coats of arms, state flags or the Olympic symbol

u s.3(6) deals with applications made in bad faith.

Each of the absolute grounds is separate: just because an applicant succeeds in

convincing the Registrar that one of the grounds does not apply, does not mean that
another might not prove to be an insuperable obstacle.

There is one other general comment to make before we look at the absolute grounds
in detail. The CJEU has, over the last decade, established that the assessment of both
the absolute and relative grounds is to be made through the eyes of the average
consumer. Who this person is will vary, depending on the nature of the goods or
services to which the mark is to be affixed. If the goods are sold in a supermarket then
the relevant consumer will be the average shopper, but if the goods are specialist
goods then the consumer will be someone in that particular line of business. Guidance
as to the characteristics of the average consumer can be found in C-342/97 Lloyd
Schuhfabrik Meyer & Co KG v Klijsen Handel BV [1999] ECR I-3819 at paragraph 26. We
shall look at the decision in Lloyd later, in relation to the relative grounds for refusal.
For the moment, you should remember that the average consumer is deemed to be
reasonably well informed, reasonably observant and circumspect.

12.3.2 Absolute grounds: general provisions

When considering s.3(1), the structure and language of this provision should be noted.
Read s.3(1) again now. Note that it has four separate paragraphs. However, paragraph
(a) should be considered as separate from the other paragraphs, for two reasons. First,
it uses the word ‘sign’ whereas the others use the phrase ‘trade mark’. Second, the
proviso as to acquired distinctiveness can overcome an objection under paragraphs
(b), (c) and (d) but not paragraph (a).

As to paragraphs (b), (c) and (d), each of the grounds for refusal listed in Article 3(1) of
the Directive is independent although there is overlap between them; and each must
be interpreted in the light of the public interest underlying them (C-265/00 Campina
Melkunie BV v Benelux-Merkenbureau (BIOMILD) [2004] ECR I-1699). Each of these three
paragraphs has a different underlying policy (C-329/02 P SAT.1 SatellitenFernsehen GmbH
v OHIM (SAT.2) [2004] ECR I-8317). Each of these three paragraphs requires the trade
mark to be considered concretely, that is, in relation to the goods and services to
which the mark will be applied, judged through the eyes of the average consumer
of those goods (C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau
(POSTKANTOOR) [2004] ECR I-1619).

Now we can take the four paragraphs in turn.

Signs not satisfying s.1

First, s.3(1)(a) declares that signs not satisfying s.1 shall not be registered. If we refer
back to s.1, this reminds us again of the ingredients of a registrable trade mark, namely
‘sign’, ‘capable of clear and precise representation’ and ‘capable of distinguishing’. A
more challenging issue is to determine the relationship between s.1 and s.3. According
to Philips Electronics NV v Remington Consumer Products [1998] RPC 283 at 289 per Jacob J,
the relationship between s.1 and s.3 is the difference between the potential of the sign to
distinguish, considered in the abstract, and whether it actually does so, either inherently
or factually. This approach has been endorsed by the CFI and CJEU. In particular, AG Jacobs
in C-383/99 P Procter & Gamble Company v OHIM (BABY DRY) [2001] ECR I-6251, at paragraphs
63–70, declared that the equivalent provision to s.3(1)(a) in the Community Trade Mark
Regulation was tautologous, merely repeating the definition of ‘trade mark’ in the
equivalent of s.1. The CJEU itself in C-299/99 Philips Electronics BV v Remington Consumer
Products [2002] ECR I-5475 stated that where a mark is distinctive as a result of the use
made of it, then there is not a separate objection that it is incapable of distinguishing.
The reason why the Court made this statement is because of the question referred to
it by the UK Court of Appeal. The latter appeared reluctant to abandon the discretion
Intellectual property 12 Registration of trade marks page 187
it possessed under the 1938 Act to reject a trade mark application even if it did not fall
within any of the express objections in the legislation and was minded to use s.3(1)(a) as a
means of retaining that discretion.

Since Philips v Remington, the Court of Appeal itself has recognised that s.3(1)(a) is
not a further ground of objection to a trade mark application if the ‘sign’ satisfies the
very low threshold of s.1: West (t/a Eastenders) v Fuller Smith & Turner plc [2003] FSR
816. This latter case cast serious doubt on a previous decision of the same court, Bach
Flower Remedies Ltd v Healing Herbs [2000] RPC 513. In consequence, Bach Flowers is
best avoided, even though some textbooks devote considerable time to discussing it.
Further EUIPO, as a matter of practice, does not raise objections under the equivalent
of s.3(1)(a). The provision is therefore best ignored.

Marks devoid of any distinctive character

Next, s.3(1)(b) prohibits the registration of trade marks which are devoid of any
distinctive character. According to British Sugar plc v James Robertson & Sons Ltd [1996]
RPC 281 at 306, the phrase ‘requires consideration of the mark on its own, assuming
no use. Is it the sort of word (or other sign) which cannot do the job of distinguishing
without first educating the public that it is a trade mark?’ The question to be asked is
whether the mark is inherently distinctive. Put simply, does the sign say to the consumer
(without more) ‘I am a trade mark’? The General Court put this another way (in T-305/02
Nestlé Waters France v OHIM [2003] ECR II-5207), namely whether the mark is ‘incapable
of performing the essential function of a trade mark, that is, identifying the origin of
the goods or services so as to enable the consumer who acquired them to repeat the
experience if it proved to be positive or to avoid it if it proved to be negative’.

The test to be applied under s.3(1)(b), according to the CJEU in C-299/99 Philips
Electronics BV v Remington Consumer Products [2002] ECR I-5475 paragraphs 59 and 63,
is that the mark is to be considered in relation to the goods or services through the
eyes of the relevant public to see if it enables members of the public to distinguish
the product in question from those having a different trade origin. Does the relevant
section of the public perceive the sign as a trade mark, taking into account that the
average consumer is reasonably attentive and makes an overall assessment of the
mark? The test is therefore a concrete one (i.e. in relation to the goods/services of
the application), taking into account all the relevant factual circumstances. Further,
the test draws no distinction between different categories of trade mark (C-53/01,
54/01 & 55/01 Linde AG, Winward Industries Inc & Rado Uhren AG v Deutsches Patent- und
Markenamt [2003] ECR I-3161), although in the case of ‘non-standard’ marks (such as
shapes, colours and sensory marks) the consumer is less used to viewing such signs as
trade marks. As an example, see the decision in T-316/00 Viking Umwelttechnik GmbH v
OHIM [2002] ECR II-3715, where it was held that a grey-green colour scheme on garden
tools would be viewed by customers as relating to the finish of the product rather
than indicating origin.

The policy behind s.3(1)(b) was articulated by the CJEU in C-104/01 Libertel Groep BV
v Benelux-Merkenbureau [2003] ECR I-3793, a case concerned with an application to
register the colour orange for telephony services. The Court stated that the public
interest was aimed at the need not to restrict unduly the availability of colours for
other traders who offer goods or services of the same type as those in respect of
which registration is sought. The Court has since modified its thinking, declaring in
C-404/02 Nichols plc v Registrar of Trade Marks [2004] ECR I-8499, at paragraphs 29–32,
that paragraph (b) does not have the policy of requiring certain signs to be left free
for other traders (contrast the policy underlying s.3(1)(c) discussed below). Rather,
the public interest underlying paragraph (b) cannot be separated from the essential
function of a trade mark: C-329/02 P SAT.1 SatellitenFernsehen GmbH v OHIM (SAT.2) [2004]
ECR I-8317, paragraphs 26, 40–41. In other words, the policy underlying paragraph (b) is
concerned with whether the sign in question acts as a trade mark for those goods or
services. In the SAT.2 decision, the Court added that paragraph (b) does not require:

linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade
mark. It suffices that the trade mark should enable the relevant public to identify the
origin of the goods or services protected thereby and to distinguish them from those of
other undertakings.
page 188 University of London
Examples of how the above test has been applied include:

u common English surnames (C-404/02 Nichols plc v Registrar of Trade Marks [2004]
ECR I-8499)

u chocolate bars shaped like cigars (T-324/01 and T-110/02 Axion SA & Christian Belce v
OHIM [2003] ECR II-1897)

u colours (C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-3793)

u composite marks consisting of words and numerals (C-329/02 P SAT.1

SatellitenFernsehen GmbH v OHIM (SAT.2) [2004] ECR I-8317)

u composite marks consisting of the colours and shapes of detergent tablets

(C-468/01 P to C-472/01 P and C-473 and 474/01 P Procter & Gamble Co v OHIM [2004]
ECR I-5141)

u surface decoration of glass panels (T-36/01 Glaverbel v OHIM [2002] ECR II-3887).

Where the mark is composite (e.g. words and numerals combined or colour and shape
combined), the tribunal must make an overall assessment of the mark, because that is
what the consumer would do. Even though component parts taken individually may
lack distinctive character, this does not mean that the combination cannot present a
distinctive character: C-329/02 P SAT.1 SatellitenFernsehen GmbH v OHIM (SAT.2) [2004]
ECR I-8317.

In Société des Produits Nestlé SA v Cadbury UK Ltd [2022] EWHC 1671 (Ch), Meade J ruled in
part in favour of Cadbury. This marks a possible turning point. Cadbury had previously
been defeated by challenges taken by Nestlé to Cadbury’s efforts to obtain a trade
mark for the colour purple (identified by a pantone number). The most significant of
these was the Court of Appeal decision in Société des Produits Nestlé SA v Cadbury UK Ltd
[2013] EWCA Civ 1174.

The three applications were as follows:

i. Application No. 3019362 (‘the 362 mark’) – the colour purple (Pantone 2685C),
as shown on the form of application, applied to the whole visible surface of the
packaging of the goods.

ii. Application No. 3019361 (‘the 361 mark’) – the colour purple (Pantone 2685C), as
shown on the form of application, applied to the packaging of goods.

iii. Application No. 3025822 (‘the 822 mark’) – the colour purple (Pantone 2685C), as
shown on the form of application.

Here, the judge allowed the registration of two applications for the colour: 362 and
822. The 362 mark was held to be sufficiently descriptive so as to provide a badge of
origin of the goods. The 822 mark was held to constitute a sign despite no description
of the mark in relation to its use. On this, the judge noted that the CJEU C-104/01 Libertel
Groep BV v Benelux-Merkenbureau (2003) judgment allows a single colour to be a sign,
without the context of use, where that colour is sufficiently distinctive of trade origin.
The third application (361) was refused. Meade J was not satisfied that the removal of
‘predominant’ from the mark description was sufficient to render the colour a sign
that could indicate trade origin. The description was too vague and unlimited. The key
distinction between 361 and 822 was that, in light of the broad protection 361 sought,
the description ‘as applied to the packaging of the goods’ was insufficiently precise.
Whereas, the 362 mark ‘applied to the whole visible surface of the packaging’, which
did provide enough certainty so as to constitute a sign.

One particular group of cases which troubled UK courts concerned slogans. Advertising
slogans (sometimes called ‘strap lines’) are used extensively in conjunction with
the principal trade mark. Such slogans are usually perceived by consumers as an
invitation to try the product or service and, as they do not indicate origin, were held
not registrable under the 1938 Act (HAVE A BREAK Trade Mark [1993] RPC 217) unless the
slogan had been used on its own so that it is the only brand name on the product (I
CAN’T BELIEVE IT’S YOGURT Trade Mark [1992] RPC 533). By contrast, the CJEU has applied
the concrete test to slogan marks. It has said that there is no need for a slogan to
Intellectual property 12 Registration of trade marks page 189
be particularly creative, but that normally the consumer would not regard a strap
line as indicating origin (C-64/02 P OHIM v Erpo Möbelwerk GmbH (‘The Principle of
Comfort’) [2004] ECR I-10031). It would therefore be up to the applicant to show factual
distinctiveness under the proviso. Further, in C-353/03 Société des Produits Nestlé SA
v Mars UK Ltd [2005] ECR I-6135, and in contrast to the views of the Court of Appeal,
the CJEU ruled that it did not matter that the slogan had been used in conjunction
with another trade mark, because even a secondary mark could, in appropriate
circumstances, acquire factual distinctiveness in its own right. An example of a
successful application to register a slogan (‘Vorsprung durch Technik’) as a European
Union Trade Mark can be found in C-398/08 Audi AG v OHIM [2010] FSR 589.

One practical point is that an applicant can seek protection for multiple classes of
goods or services in a single application. Where the trade mark application relates
to several classes of goods and services, the Registry is required to consider s.3(1)(b)
in relation to each item on the list: C-363/99 Koninklijke KPN Nederland NV v Benelux-
Merkenbureau (POSTKANTOOR) [2004] ECR I-1619. Consequently, the mark may be
inherently distinctive of some goods or services but not of others. As an example,
see T-173/00 KWS Saat v OHIM [2002] ECR II-3843 (the colour orange was inherently
distinctive of consultancy services but not so for seeds nor agricultural equipment).

In the case of some types of mark (for example, the shape of goods or their packaging,
or the physical layout of commercial premises), the Court of Justice has held that a
mark will be devoid of distinctive character unless it departs significantly from the
norms generally applied in the sector concerned. However, in C-456/19 Aktiebolaget
Östgötatrafiken v Patent-och Registreringsverket (which concerned a pattern of colours
as applied to the exterior surfaces of buses), the Court held that this condition did
not apply generally and that the assessment of distinctiveness in the application at
issue (which concerned signs applied to specific goods used to deliver a service) did
not entail an assessment of norms and/or customs in the sector concerned. Rather,
the general approach under which the distinctiveness of the sign, taken from the
perspective of the relevant public, should be applied.

Marks consisting exclusively of descriptive signs

Next, s.3(1)(c) prohibits the registration of trade marks consisting exclusively of
descriptive signs. You should note the breadth of the section as it refers to ‘descriptive
signs’ (and so would apply to colours and shapes) as well as to ‘other characteristics of
the goods or services’. So, in C-498/01 P OHIM v Zapf Creation AG (NEW BORN BABY) [2004]
ECR I-11349 the term ‘new born baby’ described the characteristics of dolls.

In relation to s.3(1)(c), the CJEU has stated that there is a much more stringent underlying
public policy. Descriptive signs relating to the characteristics of goods or services in
respect of which registration is sought may be used by all. Descriptive signs must
therefore be left free for other traders to use, regardless of whether they might want to
use them today or at some unspecified time in the future. The policy was first established
in C-108/97 and 109/97 Windsurfing Chiemsee Produktions und Vertriebs GmbH v Boots und
Segelzubehor Walter Huber [1999] ECR I-2779, and has since been confirmed in C-191/01 P
OHIM v Wm Wrigley Junior Co (DOUBLEMINT) [2003] ECR I-12447, at paragraphs 29–32.

Despite this stricter policy, s.3(1)(c) is applied in the same manner as s.3(1)(b). The
tribunal will use the concrete test which considers the mark in relation to the goods
or services through the eyes of the reasonable consumer, and asks what information
does the mark convey to the consumer about the nature of the goods (C-383/99 P
Procter & Gamble Company v OHIM (BABY DRY) [2001] ECR I-6251 at paragraphs 39–44).
Where the mark consists of a number of elements, it is to be considered as a whole.
Hence, in BABY DRY the CJEU considered that the mark (a combination of two known
words) was ‘syntactically unusual’ because the normal way in English of referring to
the characteristics of babies’ nappies would have been to refer to a ‘dry baby’. The case
should now be treated with caution and confined to its facts in view of the DOUBLEMINT
ruling above, where the CJEU made plain (at para 32) that an application will be refused
under s.3(1)(c) if at least one of the possible meanings of the mark designates a
characteristic of the goods or services concerned. Further, where there is a new word (a
‘neologism’) which consists of a combination of known words, themselves descriptive,
page 190 University of London
the new word must itself be looked at overall to see if it describes the goods: C-265/00
Campina Melkunie BV v Benelux-Merkenbureau (BIOMILD) [2004] ECR I-1699. The neologism
will be refused registration unless the mark as a whole creates, both aurally and visually,
an impression far removed from that produced by a simple combination: C-363/99
Koninklijke KPN Nederland NV v Benelux-Merkenbureau (POSTKANTOOR) [2004] ECR I-1619.

The viewpoint of the English consumer

Remember when applying CJEU case law to a UK trade mark application that the mark
has to be considered from the viewpoint of the average English-speaking consumer. It
must be considered overall, both aurally and visually. Thus in FROOT LOOPS Trade Mark
[1998] RPC 240, the mark was not registrable because aurally it was directly descriptive of
the characteristics of the goods, breakfast cereals, because it sounded like ‘fruit loops’.
(The word FROOT in FROOT LOOPS was spelled unusually, but the sound of the words is
almost exactly the same as the properly spelled FRUIT LOOPS.) Conversely, ‘UltraPlus’
was registrable because it was a ‘syntactically unusual’ combination of words. Even
though taken individually the component parts were descriptive, the overall mark was
not the normal way that consumers would refer to microwave ovenware: T-360/00 Dart
Industries Inc v OHIM [2002] ECR II-3867.

The application of the ‘average consumer’ test in relation to foreign descriptive

words is illustrated by C-421/04 Matratzen Concord AG v Hukla Germany SA [2006] ECR
I-2303. Here a Spanish court had sought guidance from the CJEU as to whether a word
which was descriptive of the goods (mattresses) in German was registrable in Spain.
The evidence was that most Spanish people did not know the meaning of the word
‘matratzen’ (‘mattress’ in German) and so would not view it as descriptive of the
goods. The CJEU ruled that where a word which is descriptive of the characteristics
of the goods in the language of Member State B (Germany) is sought to be registered
in Member State A (Spain), it should not be refused registration unless consumers in
Member State A are capable of identifying the meaning of the (foreign) word. In other
words, the Court adopted the mantle of the average Spanish consumer to decide what
information was conveyed about the product by the mark.

Geographical names
Section 3(1)(c) also comprises geographical names. The meaning of ‘geographical name’
was explained by the CJEU in C-108/97 and 109/97 Windsurfing Chiemsee Produktions und
Vertriebs GmbH v Boots und Segelzubehor Walter Huber [1999] ECR I-2779 at paragraphs
31–35. The phrase means that the name is currently associated in the minds of consumers
with a place where the goods originate, either now or in the future. However, a ‘fanciful’
geographical name (such as ‘North Pole’ for bananas) can be registered because
consumers are unlikely to believe that those goods originate from that location. In
T-379/03 Peek & Cloppenburg KG v OHIM [2005] ECR II-4633 it was held that although there
was a town called ‘Cloppenburg’, German consumers did not associate the name with
the production of goods and/or services. It was therefore not a ‘geographical name’.

Marks consisting exclusively of customary signs

Last, s.3(1)(d) prohibits the registration of trade marks consisting exclusively of
customary signs. The wording of the provision is quite precise. It is not concerned
with whether the word, etc. itself is common in everyday language, but whether it is
common in the trade. Hence, in Wm Wrigley Jr Co’s Application (LIGHT GREEN) [1999] ETMR
214, an application to register the colour light green for confectionery, was refused as
the mark was already used extensively by other traders in that line of business.

The policy of paragraph (d) is the same as that of paragraph (c), that is, protecting
the interests of other traders: C-517/99 Merz & Krell GmbH & Co v Deutsches Patent- und
Markenamt (BRAVO) [2001] ECR I-6959. Likewise, the test to be applied is the same, namely
the concrete test. The sign has to be assessed in relation to the goods or services of the
application through the eyes of the relevant public: C-371/02 Björnekulla Fruktindustrier
AB v Procordia Food AB [2004] ECR I-5791 (a case on the parallel provision in s.46(1)(c)). As
was explained in STASH Trade Mark, 3 September 2004, Appointed Person, there must be
Intellectual property 12 Registration of trade marks page 191
clear evidence that by the application date the mark is used by third parties to such an
extent that it has become customary (that is, ‘usual’) in the trade for the relevant goods
or services. In STASH itself, evidence of two uses of the mark by third parties before the
application date did not amount to customary use. Much will depend on the nature
of the market. The amount of use required will be far less where the products are
specialised than where they are bought by members of the public.

The proviso to s.3(1)

Paragraphs (b), (c) and (d) are qualified by the proviso to s.3(1) which states that a
mark will not be refused registration under any of those provisions if it has acquired
distinctiveness through use before the application date. This is a major exception to
these three objections (C-108/97 and 109/97 Windsurfing Chiemsee Produktions und
Vertriebs GmbH v Boots und Segelzubehor Walter Huber [1999] ECR I-2779). Its effect is
best explained as the difference between nature and nurture (AD2000 Trade Mark
[1997] RPC 168). A mark which is not inherently distinctive may nevertheless be
registered if it has become factually distinctive through use.

The factors to be considered in deciding whether a trade mark is factually distinctive

(that is, that the mark tells the consumer that the goods originate from a particular
undertaking) were listed by the CJEU in the Windsurfing Chiemsee case at paragraphs
45–51. Such use must be within the UK (which raises some interesting questions when
the mark is used on a website which is not targeted at UK customers, see 800-FLOWERS
Trade Mark [2002] FSR 191, CA). In view of the decision in C-206/01 Arsenal Football Club
v Matthew Reed [2002] ECR I-10273, such use may include promotional use. However,
the key issue is whether a significant proportion of the relevant public consider that
the sign has come to identify the product as originating from a particular undertaking.
That the Windsurfing test is quite demanding is illustrated by T-16/02 Audi AG v OHIM
[2003] ECR II-5167: here it was not enough for the applicant merely to file evidence
showing how many cars had been sold or exported under the name TDI as that did not
establish that consumers viewed it as a trade mark. The evidence of use to establish
factual distinctiveness will vary depending on the nature of the trade mark, so that
‘non-standard’ marks will require greater evidence of use. This may pose particular
difficulties where the mark has been used as part of the ‘get up’ of the goods, for
example, a slogan which has been used alongside the principal trade mark for the
product: C-353/03 Société des Produits Nestlé SA v Mars UK Ltd [2005] ECR I-6135, although
the fact that the slogan has been used as a ‘secondary’ mark is not of itself a bar to
registration. (Look up the case and make a note of what the slogan was.)

In C-215/14 Société de Produits Nestlé SA v Cadbury UK Ltd, the Court of Justice considered
the acquisition of distinctive character (for the purpose of the proviso in TMA s.3(1)). It
held that, where the use of the mark applied for has been as part of another registered
trade mark or in conjunction with such a mark, the trade mark applicant must prove
that the relevant class of persons perceive the goods or services designated exclusively
by the mark applied for (as opposed to any other mark which might also be present) as
originating from a particular company.

When the case was considered again in the light of this guidance, in Société de Produits
Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358, the Court of Appeal provided more
detailed guidance on the approach to acquired distinctiveness. In so doing, it upheld
the Hearing Officer’s refusal to grant registration to the mark at issue.

Drawing on the CJEU’s jurisprudence, the Court of Appeal held that an inherently non-
distinctive mark will only acquire distinctive character where a significant proportion
of the relevant class of consumers come to perceive goods designated by the mark
as originating from a particular undertaking. The mark did not have to be used on its
own. Use of the mark could be in conjunction with other marks and signs (as in this
instance, where the four-fingered shape of the chocolate bar at issue was not apparent
until the bar’s wrapper was removed). It was not sufficient for an applicant to show
that a significant proportion of the relevant public recognises the mark and associates
it with the applicant’s goods or services. However, at the other end of the spectrum,
it was unnecessary for an applicant to show that the public has actually come to
page 192 University of London
rely on the mark as an indication of origin. Nevertheless, such reliance would clearly
indicate that the mark had come to serve to designate goods or services as originating
from a particular commercial source. The Court of Appeal held that, in the case of the
application to register the shape of the four-fingered bar, the Hearing Officer had not
misdirected himself in finding that the shape had not acquired distinctiveness. The
evidence suggested only that the public had come to associate the mark with the
product at issue, rather than to perceive the shape of the bar as indicating goods from
a single trade undertaking.

This issue was considered again in the Chancery Division of the High Court in
Jaguar Land Rover Ltd v Ineos Holdings Ltd [2020] EWHC 2130 (Ch), which concerned
an application to register the shape of the Land Rover Defender vehicle as a trade
mark. The applicant presented survey evidence that indicated that 20–40 per cent
of respondents to a survey were confident that pictures shown to them depicted a
Land Rover Defender car. However, this was not the case for the remainder. In such
circumstances, Her Honour Judge Melissa Clarke held that the survey demonstrated a
significant, but not overwhelming, degree of recognition of the shape of vehicles for
the purpose of establishing acquired distinctiveness. Acquired distinctiveness was not
made out because, while the survey showed some degree of recognition of the shape
and a level of association with Jaguar Land Rover, it did not demonstrate that the
shape was recognised as a trade mark (that is, as designating the goods of Jaguar Land
Rover rather than the goods of other manufacturers).

Summary
Section 3(1) of the TMA (based on Article 3 of the Trade Marks Directive) contains four
paragraphs listing those absolute grounds for the refusal of registration which are of
general application. Section 3(1)(a) will only apply when a sign does not satisfy the
definition of a ‘trade mark’ established in s.1 and, as such, is rather tautologous. The
remaining three paragraphs contain independent but overlapping objections to the
registration of a trade mark: it is enough to bar the application if any one of these applies.
The paragraphs comprise, respectively:

u marks devoid of distinctive character

u descriptive and geographical marks

u marks which are common in the trade.

Each one has a different underlying policy justification. The test to be applied in each
case is a concrete test, that is, the tribunal will make an overall assessment of the mark
in relation to the goods and/or services of the application through the eyes of the
relevant consumer (under UK law, the average English-speaking consumer). All types
of trade mark are to receive the same treatment under s.3(1). Each of these objections
can be overcome by appropriate evidence of acquired factual distinctiveness. Such
evidence must show that the public has come to regard the sign as indicating origin.

Activities 12.4 and 12.5

12.4 Go over your notes on the case law explaining s.3(1). For each of paragraphs
(b), (c) and (d), provide a statement of the underlying policy of the paragraph
together with the relevant case(s) which are authority for that policy.

12.5 Read the decision of the CJEU in Windsurfing Chiemsee, particularly paragraphs
45−51. Then draw up a list of factors which are to be considered by a tribunal
when deciding whether a trade mark has become factually distinctive.

12.3.3 Absolute grounds: specific provisions

The remaining subsections of s.3 are, as indicated above, specific in their application.
What you must remember is that even if an applicant can convince the Registrar that
these provisions do not apply, then it will still be necessary to consider whether the
trade mark is caught by the general provision in s.3(1).
Intellectual property 12 Registration of trade marks page 193
Signs consistently of shapes, or other characteristics, of goods
Section 3(2), in paragraphs (a) to (c), prohibits the registration of signs consisting
exclusively of shapes, or of other characteristics of goods, resulting from the nature
of the goods themselves, shapes necessary to achieve a technical result and shapes
which give value to the goods. Prior to the extension of this exclusion to ‘other
characteristics’ of goods under the 2015 Directive (as implemented by the Trade Marks
Regulations 2018), it covered ‘shape marks’ only.

It is generally agreed that s.3(2), as originally drafted, is derived from the Benelux
Uniform Trade Mark Act 1971. Strowel, in the article listed in the Essential reading,
gives useful examples of decisions under that legislation illustrating the three types
of prohibited shapes. He also argues that as s.3(2) is a derogation from the very broad
definition of ‘trade mark’ in s.1 (which includes shapes as a category of registrable sign)
it should be interpreted narrowly.

The policy behind s.3(2) is the same as that behind s.3(1)(c), namely ensuring that
certain shapes, and other characteristics of goods, are left free for other traders to use
(C-299/99 Philips Electronics NV v Remington Consumer Products Ltd [2002] ECR I-5475).
In Philips, the Court gave a relatively broad interpretation of s.3(2)(b), rejecting the
argument that it was irrelevant that the same technical result could be achieved by
other shapes. The word ‘necessary’ in s.3(2)(b) was interpreted to mean ‘attributable’.

The CJEU has restated its thinking in C-48/09 Philips v Remington in Lego Juris A/S v OHIM,
CJEU, 14 September 2010. In particular, attention should be paid to the following
paragraphs of the ruling, namely 45–49 (explaining the policy of the Directive),
50–55 (restating its thinking in Philips) and 68–77 where the Court stresses that when
considering shape marks, their essential characteristics must be determined, an
issue where, in contrast to the rest of trade mark law, the perception of the average
consumer is not decisive.

In relation to shapes, and other characteristics of goods, which add substantial value
to the goods, see the ruling of the General Court in T-508/08 Bang & Olufsen v OHIM,
6 October 2011. The Court stated that s.3(2)(c), as originally drafted, pursued the
same policy as s.3(2)(b), namely leaving shapes free for other traders, that consumer
perception of the shape was not conclusive (see the Lego case above) and that as the
sculpture-like shape of loudspeakers was a key selling point here, the shape could not
be registered as a trade mark. In C-205/13 Hauck GmbH & Co v Stokke A/S, the Court of
Justice held that the exclusion relating to s.3(2)(a) did not only apply to the ‘natural’
shape of goods but also to signs that consist exclusively of the shape of a product with
one or more essential characteristics which are inherent in the generic function or
functions of that product and which consumers may be looking for in the products of
competitors. In that case, the Court also provided further guidance on the application
of s.3(2)(c), holding that this exclusion may apply to a sign which consists exclusively
of the shape of a product with several characteristics, each of which may give that
product substantial value. The target public’s perception of the shape of that product
is only one of the assessment criteria which may be used to determine whether that
ground for refusal is applicable. Other assessment criteria may also be taken into
account, including the nature of the category of goods concerned, the artistic value
of the shape in question, its dissimilarity from other shapes in common use on the
market concerned, a substantial price difference in relation to similar products and
the development of a promotion strategy which focuses on accentuating the aesthetic
characteristics of the product in question.

In C-163/16 Christian Louboutin SAS v Van Haren Schoenen BV, the Grand Chamber of the
CJEU held that the exclusion of registration in the case of marks consisting exclusively
of a shape that gives substantial value to the goods did not apply to the red sole of
a Christian Louboutin shoe. This was the case because a sign consisting of a colour
applied to the sole of a high-heeled shoe does not consist exclusively of a ‘shape’,
within the meaning of the relevant provision.

The CJEU has stated that, when dealing with shape marks, s.3(2) should be applied
before s.3(1), which is an independent ground of objection (C-53/01, 54/01 and 55/01
page 194 University of London
Linde AG, Winward Industries Inc & Rado Uhren AG [2003] ECR-I 3161). Section 3(2) is a
preliminary obstacle to registration and one that cannot be overcome by evidence of
acquired distinctiveness (see also C-371/06 Benetton Group SpA v G-Star International
[2007] ECR I-7709).

In C-273/19 Gömböc, a reference from the Hungarian courts, the Court of Justice
answered a number of questions concerning the appropriate approach to s.3(2)(b) and
s.3(2)(c). Referring to existing jurisprudence (notably C-299/99 Koninklijke Philips
Electronics NV v Remington Consumer Products Ltd), it explained that the provision on
which s.(2)(b) is based applies where the ‘essential characteristics’ of a shape (in this
instance) perform a technical function. In applying this provision, a competent
authority (generally the Trade Mark Registry) has to proceed in two steps. First, it is
necessary to establish the identity of the ‘essential characteristics’ of the sign and,
second, it is necessary to establish whether those essential features perform a
technical function. At the first step, a competent authority should begin with the
applicant’s representation of the sign but the authority may also refer to other useful
information that helps it to determine the ‘essential characteristics’ of the sign at
issue. The perception of the public may be a relevant criterion of assessment at that
point. However, the second step in the enquiry must be based on objective and
reliable information and the perception of the public, as a subjective condition, is
irrelevant at this point. In relation to s.3(2)(c), again, the perception of the relevant
public may be taken into account in order to identify an essential characteristic of the
sign at issue. This ground for refusal may be applied if it is apparent from objective and
reliable evidence that consumers’ decision to purchase the product in question is to a
large extent determined by this characteristic.

These authorities will have continuing relevance for the interpretation of the
amended exclusion. However, it will be necessary to extend the reasoning to ‘other
characteristics’ of goods, as well as to shapes. It is interesting to consider the types of
application which may now be covered by this extended provision. In its guidance on
the new provisions (Implementation of the EU Trade Mark Directive 2015, January 2019),
the Intellectual Property Office provides a potential example:

For example, a repetitive high pitched sound would be considered to be an intrinsic part
of a fire alarm. An application for a mark which therefore consists of such a sound, applied
for in relation to fire alarms, is likely to be subject to an objection under these provisions.

Could the provision also apply to the red sole of a high-heeled shoe (see C-163/16
Christian Louboutin SAS v Van Haren Schoenen BV discussed above)?

In C-21/18 Textilis v Svenskt Tenn AB, a Swedish court referred questions concerning the
interpretation of the equivalent provision to s.3(2)(c) in the Trade Mark Regulation.
The case concerned a challenge to the registration of a well-known fabric design
as a figurative trade mark. The proprietor of the mark brought proceedings for
infringement of the trade mark against a third party. The third party counterclaimed
that the mark was invalidly registered, relying inter alia on the argument that the
mark fell within the scope of s.3(2)(c), as revised. However, the Court held that such
an argument could not succeed because the revised provision did not apply to marks
registered before the amendment came into force. The principles of non-retroactivity
and legal certainty supported this conclusion. The Judgment has interesting
consequences. Certain marks will now be maintained on the register when they could
not be registered ab initio.

Even if the shape does not fall within any of the specific prohibitions in s.3(2), it still needs
to be considered under s.3(1) to see if it is distinctive, descriptive or common to the trade.
The most usual objection under s.3(1) to shape marks is that they are devoid of distinctive
character. In C-238/06P Develey Holding GmbH v OHIM [2007] ECR I-9375 protection was
denied to the rather ordinary appearance of a squeezable sauce bottle. Very unusual
shapes may, exceptionally, be inherently distinctive, examples including T-128/01
DaimlerChrysler Corporation v OHIM [2003] ECR II-701 (a car radiator grill) and T-460/05
Bang & Olufsen A/S v OHIM [2007] ECR II-4207 (the shape of a loudspeaker). Overcoming
the objection under s.3(1) by proof of acquired distinctiveness will not be easy. Sufficient
evidence of use (complying with the Windsurfing Chiemsee criteria) must be produced to
Intellectual property 12 Registration of trade marks page 195
show that consumers recognise the shape as indicating origin. Consumers do not usually
see shapes as trade marks: Bongrain’s Application [2005] RPC 306.

Activity 12.6
Read the article by Strowel explaining the origin of s.3(2) of the TMA (Article 3(1)(e)
Trade Marks Directive). Then:
a. give an example of each one of the three categories of shape listed in the
provision

b. consider whether the approach of the CJEU in Philips v Remington accords with
Strowel’s arguments.

Marks contrary to public policy or which are deceptive

Section 3(3)(a) (derived from Article 6 quinquies of the Paris Convention 1883)
prohibits the registration of trade marks which are contrary to public policy or
morality. (Quinquies is Latin for ‘fifth’ as used in French language texts. ‘first’ to ‘tenth’
are semel, bis, ter, quater, quinquies, sexies, septies, octies, novies, decies, etc.) There are
similar prohibitions against granting protection to offensive subject matter in patent
and design law. The issue is not whether a section of the public considers the trade
mark distasteful, but whether it would cause outrage as being likely to significantly
undermine current religious, family or social values: Re Ghazilian’s Trade Mark
Application [2001] RPC 654. The outrage or censure must occur among an identifiable
section of the public. A higher degree of outrage among a small section of the
community may well suffice. Each case must be decided on its own facts. Examples
of refusal on public policy grounds include ‘standupifyouhatemanu.com’, Trade Marks
Registry, 20 November 2002 (incitement to football violence) and JESUS Trade Mark
Application [2005] RPC 611 (likely to cause offence to a significant section of the public).
By contrast, in Woodman v French Connection UK Ltd, Registry, 20 December 2005, an
attempt to have the mark FCUK declared invalid as being contrary to s.3(3)(a) failed.
Although there had been complaints to the Advertising Standards Authority that the
mark was too close to a particular expletive, there was no evidence to suggest that
FCUK-branded goods had themselves caused outrage. Any offence that had been
caused had not been as a result of the use of the mark itself, but rather by the context
in which an individual trader had chosen to use the letters in promotional material.

In C-240/18P Constantin Film Produktion GmbH v EUIPO, the CJEU considered the scope
of this provision in so far as it applies to ‘accepted principles of morality’. The Court
emphasised the contextual (rather than abstract) nature of the enquiry under this
provision. The case arose as a consequence of the EU Intellectual Property Office’s
refusal to register the title of a film comedy with vulgar connotations as a trade mark
for goods and services in a large number of different classes. That refusal was upheld
by the General Court. The applicant’s appeal against the Judgment of the General
Court was upheld. The Court held that, for the provision at issue to apply, the mark
must not simply be regarded as in bad taste. Rather, the sign must be perceived by
the relevant public as contrary to the fundamental moral values and standards of
society. The examination of this issue must be based on the perception of a reasonable
person with an average threshold of sensitivity and tolerance, taking into account the
context in which the mark may be encountered. In particular, this assessment has to
take account of the use of the mark in the concrete, current social context. Contextual
evidence capable of shedding light on the way in which the relevant public perceives
a mark is important. Furthermore, the applicant’s right to freedom of expression was
implicated by a competent authority’s decision whether or not to register a mark on
the basis of accepted principles of morality.

In this instance, the comedy film had been a commercial success and its title had
not caused particular controversy. Furthermore, a highly reputable cultural body
had employed the film in its work with young people. This evidence was relevant in
demonstrating that the relevant public did not view the title as morally unacceptable.
This evidence had not been taken sufficiently into account by the competent authority
in considering the application for registration of the sign.
page 196 University of London
Within the same provision, s.3(3)(b) prohibits the registration of trade marks which
are deceptive to the public, for example as to the nature of the goods. The particular
problem here is that the choice of a known word as a trade mark creates a trap for
the applicant. As explained in ORLWOOLA Trade Mark (1909) 26 RPC 683, 850, if the
goods possess the characteristics described by the known word (here the goods were
textiles) then the mark is unregistrable as being totally descriptive, but if the goods
do not possess those characteristics, then the mark is deceptive. The assessment of
deceptiveness under s.3(3)(b) is effected through the eyes of the reasonably well-
informed, observant yet circumspect consumer who is used to ‘hype’ (Kraft Jacobs
Suchard Ltd’s Application (KENCO THE REAL COFFEE EXPERTS) [2001] ETMR 585).

The CJEU has explained the meaning of ‘deceptive’ in C-259/04 Emanuel v Continental
Shelf 128 Ltd [2006] ECR I-3089. E was a famous fashion designer whose reputation
increased dramatically when she designed the Princess of Wales’ wedding dress in
1981. A trade mark consisting of her name and a logo had been registered in 1994. As
a result of financial difficulties, she had assigned her business to a company in 1996,
becoming an employee of the business. Thereafter, there were successive transfers
of the business which ultimately was owned by the defendant. In the meantime, the
applicant had resigned from the business. The defendant’s predecessor had applied
to register further marks consisting of the applicant’s name. She opposed these
applications under s.3(3)(b) and sought revocation of the earlier mark under s.46(1)
(d) on the ground that it had become deceptive as to the origin of the goods. The CJEU
ruled that the word ‘deceive’ in Article 3 referred to the intrinsic characteristics of
the trade mark. The sign must objectively deceive the public by virtue of its qualities.
Where a mark was a person’s name and had been assigned as part of the business, it did
not deceive the public even if it created the mistaken impression that that person took
part in the creation of the goods for which the mark was used.

Marks contrary to law and specially protected emblems

Section 3(4) and (5) may conveniently be taken together. The two subsections,
respectively, prohibit the registration of trade marks which are contrary to UK or
EU law and trade marks consisting of or containing specially protected emblems.
The former includes trade marks which breach UK legislation such as the Trade
Descriptions Act 1968, Plant Varieties Act 1997 and Hallmarking Act 1973, or EU
secondary legislation such as that which protects geographical indications (e.g. the
name ‘Champagne’). An example under domestic law is the London Olympic Games
and Paralympic Games Act 2006. The latter cross-refers to detailed provisions in
s.4, dealing with such matters as the Royal Coats of Arms, words indicating royal
patronage, national flags and the flags and emblems of international organisations.

Marks obtained in bad faith

Finally, s.3(6) prohibits the registration of a trade mark to the extent that the
application was made in bad faith. ‘Bad faith’ has been considered by the Court of
Appeal in Harrison v Teton Valley Trading Co [2004] 1 WLR 2577 (CHINA WHITE). Here
it was said that the objection is only available in limited circumstances, where the
applicant’s conduct amounts to dishonesty or where the applicant’s conduct falls
short of the standards of acceptable commercial behaviour observed by reasonable
and experienced people in the area in question. The test involves a mixture of the
subjective and objective: there must be a realisation by the applicant that what they
were doing would be regarded by honest people as having been done in bad faith.

An example of bad faith would be applying for a mark knowing that it is another’s
(MICKEY DEES (NIGHTCLUB) Trade Mark [1998] RPC 359). However, there is no bad faith
where there is a degree of uncertainty as to entitlement: Gromax Plasticulture Ltd v
Don & Low Nonwovens Ltd [1999] RPC 367. It is not necessary to show that the applicant
thought that what they were doing was dishonest: AJIT WEEKLY Trade Mark [2006] RPC
633, Appointed Person.

‘Bad faith’ has been considered by the CJEU in C-529/07 Chocoladefabriken Lindt & Sprungli
AG v Franz Hauswirth GmbH, CJEU, 11 June 2009. Although the Advocate General, Eleanor
Intellectual property 12 Registration of trade marks page 197
Sharpston, had provided a comprehensive review of the meaning of the phrase, the
Court’s ruling provides little clear guidance. Instead, the Court simply lists the factors to
be taken into account and leaves the matter to be determined by the national court.

In C-371/18 Sky plc v SkyKick UK Ltd, which was decided before the end of the Brexit
transition period, the Court of Justice considered a reference from the Chancery
Division of the High Court in England and Wales in proceedings for infringement of
registered trade marks. The referred questions asked, among other things, whether
registered marks might be found invalid, on the ground of bad faith, where the
applicant had had no intention of using the mark (at all, or across the full range of
goods and services specified). The Court of Justice held that registration without an
intention to use a mark might constitute bad faith for the purposes of the Regulation
and the Directive (and therefore for the purposes of the Trade Marks Act 1994).
However, this would only be the case:

...if the applicant for registration of that mark had the intention either of undermining,
in a manner inconsistent with honest practices, the interests of third parties, or of
obtaining, without even targeting a specific third party, an exclusive right for purposes
other than those falling within the functions of a trade mark. When the absence of the
intention to use the trade mark in accordance with the essential functions of a trade mark
concerns only certain goods or services referred to in the application for registration, that
application constitutes bad faith only in so far as it relates to those goods or services. [81]

Applying this guidance in Sky plc v SkyKick UK Ltd [2020] EWHC 990 (Ch), Arnold LJ found
that a number of the trade marks registered by the claimant (Sky plc) were invalid on
the ground of bad faith and that a number of registered marks were partially invalid
(as interpreted by the Court of Justice). The claimant could not have intended to use
the marks that it had registered across the broad range of goods and services for which
registration had been sought and obtained. The claimant’s registration strategy had
been intended to function purely as a weapon against third parties and therefore
had intentionally pursued a commercial purpose other than those falling within the
functions of a trade mark.

However, in Sky Ltd v SkyKick UK Ltd [2021] EWCA Civ 1121 the Court of Appeal held that
Arnold LJ erred in his approach to bad faith. It noted that a finding of bad faith is akin
to a finding of dishonesty and that it was therefore important to distinguish between
an application to register a mark that the applicant had no intention of using and an
application to register a mark for a wider category of goods of services than they actually
used or intended to use. It was consistent with good faith for an applicant to claim a
wider category of goods than they had actually used or intended to use.

The application of the ‘bad faith’ ground for refusal of registration has also been at issue
in two other cases. In (T-663/19) Hasbro v EUIPO the General Court held that the activity of
repeatedly re-registering trade marks in order to avoid a claim for revocation for non-use,
was contrary to the objectives of trade mark law and was therefore in bad faith. In Swatch
AG v Apple Inc [2021] EWHC 719 (Ch), applying SkyKick, Mr Iain Purvis QC, sitting as a Deputy
Judge of the High Court, held that an applicant who registered a mark because it might
be useful at some point in the future, even where he or she had not decided precisely
how to use the mark, would not be engaging in an inherently dishonest business practice
and therefore an objection on the ground of bad faith would not automatically arise.
Equally, it was not an inherently dishonest business practice to register a sign that
brought another trader to the mind of some consumers in an amusing, but inoffensive,
way.

We still await the UK Supreme Court decision in SkyKick. Meanwhile, in the relevant
case of Lidl v Tesco [2023] EWHC 873 (Ch), Tesco successfully invalidated four of Lidl’s
registrations for the wordless version of its house mark (a yellow and blue pattern) for
bad faith. In terms of burden of proof, the court held that the claimant can demonstrate
objective circumstances that create a rebuttable presumption of lack of good faith. Here,
Tesco were able to establish that the the burden of proving no bad faith should pass to
Lidl. Lidl was not able to explain the rationale for all but one of its filings and so the court
had no option but to find bad faith. In particular, Lidl’s filings seemed ‘defensive’ with no
page 198 University of London
real intention to use in the course of trade. Only one Lidl application (the fifth) was not
filed in bad faith since Lidl had a genuine intention to use the wordless mark. The case
shows the court will take seriously any ‘red flags’ for bad faith such as repeat overlapping
filings and overly broad specifications.

Summary
The remaining absolute grounds in ss.3(2) to 3(6) of the TMA cover, in order, public
policy restrictions on the registration of shape marks; trade marks which are contrary
to public policy or which are deceptive; trade marks the registration of which is
prohibited by UK or EU Law; trade marks which contain specially protected emblems;
and trade marks applied for in bad faith. None of these specific objections can be
overcome by evidence of acquired distinctiveness.

12.4 Relative grounds for refusal

Core text
¢ Bainbridge, Chapter 20 ‘The UK trade marks – registrability, surrender,
revocation, and invalidity, property rights and registration’ pp.735–53.

¢ Bently et al., Chapter 38 ‘Relative grounds for refusal’.

¢ Cornish, Chapter 18 ‘Registered trade marks’ paras 18–052 to 18–067.

¢ Karapapa and McDonagh, Chapter 12 ‘Relative grounds for refusal of

registration’.

Essential reading
¢ Trade Marks Directive, Article 4; TMA s.5.

¢ Cases: C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799; C-251/95
Sabel BV v Puma AG [1997] ECR I-6191; C-39/97 Canon KK v Metro-Goldwyn-Mayer
Inc [1998] ECR I-5507; C-342/97 Lloyd Schuhfabrik Meyer & Co KG v Klijsen Handel
BV [1999] ECR I-3819; C-375/97 General Motors v Yplon [1999] ECR I-5421; C-252/07
Intel Corporation Inc v CPM United Kingdom Ltd, CJEU, 27 November 2008; C-487/07
L’Oréal SA v Bellure NV, CJEU, 18 June 2009; L’Oréal SA v Bellure NV [2010] EWCA Civ
535.

Further reading
¢ Bornkamm, J. ‘Harmonising trade mark law in Europe: the Stephen Stewart
Memorial Lecture’ [1999] IPQ 283.

¢ Gangjee, D. and R. Burrell ‘Because you’re worth it: L’Oréal and the prohibition
on free riding’ (2010) 73(2) MLR 282.

12.4.1 Overview of relative grounds

Relative grounds are concerned with the external characteristics of the trade mark.
The mark is to be compared with prior rights (earlier registered and unregistered trade
marks, designs and copyright). If there is a conflict, then the trade mark application
will be refused, unless the owner of the earlier right consents, such consent being
conclusive (s.5(5)). The provisions on relative grounds are (in the main) a mirror image
of the provisions on infringement so the case law is interchangeable. When we consider
infringement (in Chapter 13) you will be asked to return to this chapter for many of the
important points. Yet again, there is much CJEU case law on relative grounds that needs
to be taken into account. As with absolute grounds, the key issues are judged through
the eyes of the reasonable, well-informed and circumspect consumer.

To repeat a point made at the start of this chapter, the effect of the Trade Marks
(Relative Grounds) Order 2007 (SI 2007/1976) is that relative grounds are no longer the
subject of examination by the Trade Marks Registry. Instead, the Registry will conduct
a search of earlier registered rights and will notify the applicant of the results, but will
Intellectual property 12 Registration of trade marks page 199
do no more than this. When the application is published, the Registry will inform the
owners of any UK registered marks identified in the examination report. It is entirely
up to the owner of the earlier right to oppose the application: if they do not do so, the
mark will proceed to registration, although the owner of the earlier right has a period
of five years to commence proceedings for invalidity (see further Chapter 13).

12.4.2 What are prior rights?

The list of prior rights (set out in Article 4 of the Trade Marks Directive) is to be found
principally in s.6 of the TMA, but also in s.5(4). To summarise a fairly lengthy list, prior
rights comprise:

u earlier registered marks having effect in the UK as a result of being either national,
EU (‘comparable trade marks (EU)’, i.e. EU trade marks registered prior to the
end of the Brexit transition period and converted into UK marks on that date) or
international registrations

u pending applications for national or international registrations, provided they

mature to registration

u well-known trade marks entitled to protection under the Paris Convention

u recently lapsed registrations

u earlier used but unregistered marks (provided these are capable of protection
under passing off)

u earlier copyrights, or registered or unregistered designs.

12.4.3 Prior trade mark registrations

The relative grounds for refusal of registration based on prior trade mark registrations are
to be found in s.5(1) to (3) TMA. Read these three subsections now. These provisions have
been called by Bornkamm ‘the triad of protection’. Each provision has specific criteria,
and they must be applied in sequence: Reed Executive plc v Reed Business Information Ltd
[2004] RPC 767 (CA). In other words, one considers whether the application is barred
under s.5(1); if not, then one considers s.5(2); and lastly one considers s.5(3).

Identity
Under s.5(1), an earlier registration of the identical mark for identical goods or
services will bar the application. This can be considered ‘double identity’. Protection
is absolute and no likelihood of confusion need be proved, as it is assumed that there
will be consumer confusion where there is total identity of marks and goods: C-2/00
Hölterhoff v Ulrich Freiesleben [2002] ECR I-4187. ‘Identical goods’ means the goods for
which the senior mark is actually registered, so that if the goods are not identical, the
case falls under s.5(2) (British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281).
The statement of goods and services on the application form in respect of the junior
mark must be compared with the entry on the register for the senior mark. ‘Identical
sign’ requires a comparison of the junior mark with the entry of the senior mark on
the register: Philips Electronics NV v Remington Consumer Products [1998] RPC 283 at 312.
If the registered mark consists of a word, the typeface or style of lettering is irrelevant,
because what is registered is the word itself: Bravado Merchandising v Mainstream
Publishing [1996] FSR 205.

The test for what is an identical sign has been explained by the CJEU in C-291/00 LTJ
Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799 at paragraphs 50 to 54. Because of
the absolute protection afforded by s.5(1) (and indeed its counterpart in infringement,
s.10(1)), ‘identity’ must be strictly interpreted and requires that the two marks be
the same in all respects. For a junior mark to be identical to a senior mark, it must
reproduce, without any modification, all the elements of the latter. However, the
Court added that the comparison (which must be an overall comparison) is to be
made through the eyes of the well-informed, reasonably observant and circumspect
consumer who will rarely have the opportunity to compare the two marks side by
side. Consequently, insignificant differences may go unnoticed.
page 200 University of London
The CJEU did not elaborate on what it meant by ‘insignificant differences’. On the facts
of the case itself, the addition of a dot was thought to be insignificant. But what if the
junior mark is DIGITS when the senior mark is DIGIT, or PELIKAN when the senior mark is
PELICAN? Would the average consumer notice the difference? Further guidance will be
required from the Court on this point.

Remember, identity of marks is subjected to an overall assessment by the consumer.

If the senior mark is contained within the junior sign but surrounded by ‘non-trade
mark matter’, the surrounding non-trade mark matter can be ignored, because the
consumer would not consider this to contain a ‘trade mark message’ (Reed Executive
plc v Reed Business Information Ltd [2004] RPC 767). However, if the surrounding matter
does have a ‘trade mark message’, then at best the two marks are similar.

Similarity coupled with confusion

If the signs are not identical (for example, as in the Reed case where the registered
mark REED was not identical to REED ELSEVIER), one moves on to s.5(2) which involves
different criteria.

Section 5(2) prohibits the registration of a junior application if it consists of the same
or similar mark and is to be registered in respect of the same or similar goods or
services, provided there exists a likelihood of confusion on the part of the public,
‘which includes a likelihood of association’. The permutations encapsulated in s.5(2)
are set out below (you do not need to worry about memorising this list; it is merely
here to help you appreciate the width of the section).

The scope of s.5(2)

Where the earlier mark is protected in respect of goods, it will block a later application
for:

u an identical mark for similar goods

u an identical mark for similar services

u a similar mark for identical goods

u a similar mark for similar services

u a similar mark for similar goods.

Where the earlier mark is protected in respect of services, it will block a later
application for:

u an identical mark for similar services

u an identical mark for similar goods

u a similar mark for identical services

u a similar mark for similar goods

u a similar mark for similar services.

The meaning of confusion

The key requirement of s.5(2) is that there must be a likelihood of confusion ‘which
includes a likelihood of association’. Case law has identified that there may be three
types of confusion on the part of a consumer.

u Direct confusion (where the consumer confuses one product with another).

u Indirect confusion (where the consumer thinks that the goods come from
economically linked undertakings or that the trade mark owner has expanded
their product line).

u Mere association (where the consumer ‘calls the trade mark to mind’ but without
being confused).
Intellectual property 12 Registration of trade marks page 201
The inclusion of ‘likelihood of association’ in the Trade Marks Directive, and hence in
the TMA, is said to be as a result of the wording of the Uniform Benelux Trade Marks Act
1971 and cases decided thereunder, such as MONOPOLY v ANTI-MONOPOLY [1978] BIE 39
and 43, where it was held that adopting the name ‘Anti-Monopoly’ for a board game
would not confuse customers but would make them think of ‘Monopoly’ and would
therefore injure (by dilution) the reputation of the senior mark.

The approach of the CJEU to ‘likelihood of confusion’ was first stated in C-251/95 Sabel
BV v Puma AG [1997] ECR I-6191. Up to a point it endorses the Wagamama thinking,
but in many respects goes far beyond it. The Court declared, from an analysis of the
wording of Article 4, Trade Marks Directive, that association was not an alternative to
confusion but ‘serves to define its scope’ (paragraph 18). It later confirmed that simply
‘calling the trade mark to mind’ does not suffice for the purposes of establishing a
likelihood of confusion under ss.5(2) and 10(2) (C-425/98 Marca Mode CV v Adidas AG
and Adidas Benelux BV [2000] ECR I-4861) so that only direct and indirect confusion will
suffice.

It should not be assumed that association is totally irrelevant. The CJEU’s phrase
in Sabel v Puma (‘serves to define its scope’) suggests that the mental processes
undergone by the confused consumer when seeing a mark similar to the registered
mark are important. Association is involved in the assessment of confusion because
of the wording of Recital 11 to the Trade Marks Directive in its 2008 version (explained
next). It is also relevant to the concept of indirect confusion, and to the CJEU’s ‘global
appreciation’ test used to determine the likelihood of confusion (explained below).
Where the use of a protected mark gives rise to a risk that an average consumer could
believe that the business of the mark’s proprietor is connected with the business
of the undertaking using the mark, ‘likelihood of confusion’ would be established
(‘indirect confusion’ in the terminology applied in the module guide). In BMW v
Technosport London Ltd [2017] EWCA Civ 779, such indirect confusion was held to have
arisen in practice. The defendants were in the business of repairing and maintaining
cars, predominantly cars manufactured and distributed by the claimant, BMW. The
defendant used the ‘BMW’ word mark in the course of its business. The Court of
Appeal held that the particular use of that mark in this instance went beyond simple
descriptive use and created a risk that the average consumer would think that the two
businesses were linked.

In Liverpool Gin Distillery Ltd v Sazerac Brands, LLC [2021] EWCA Civ 1207 the Court of
Appeal held that the judge at first instance had been correct to hold that there was
a likelihood of indirect confusion (association) between registered marks using the
sign EAGLE RARE (for whiskey and bourbon whiskey) and AMERICAN EAGLE, used by the
defendant for bourbon whiskey. The judge had paid appropriate regard to the fact that
consumers of bourbon would be aware that producers in this market often release
products with names that allude to other brands within their portfolio. The Court of
Appeal held that the court at first instance had not erred in finding that there were
some consumers who would be led to believe that EAGLE RARE was a special version
of AMERICAN EAGLE. This assumption of ‘brand extension’ fell within the concept of
‘indirect confusion’ (and was therefore covered by ss.5(1) and 10(2).

The claim that a rival’s mark was indirectly confusing was successfully made by Match.
com in Match Group v Muzmatch [2023] EWCA Civ 454. The Court of Appeal, approving
an earlier lower court finding, concluded that Muzmatch would indeed be considered
confusing by the average consumer, i.e. it would be seen as a sub-brand of Match.
com, specifically targeting Muslim users. Muzmatch raised the defence of ‘honest
concurrent use’ but this failed to convince the court.

Further, ‘association’ is important in the dilution provision in s.5(3). When considering the
role of association, you need to remember that all the issues are judged through the eyes
of the average consumer, who is deemed to be reasonably well-informed and reasonably
observant and circumspect, although they rarely have the chance to make a direct
comparison between the different marks but must place their trust in the imperfect
picture of them. The average consumer’s level of attention is likely to vary according to
the category of goods or services in question: think about the different attention spans of
someone buying goods in a supermarket and someone buying a new car.
page 202 University of London
The application of s.5(2)
When applying s.5(2), the starting point is Recital 11 of the consolidated version of
the Trade Marks Directive. It provides that the appreciation of confusion depends
on numerous elements, in other words, it is a question of fact in every case. Recital
11 refers to four things to be taken into account (there may be others) namely, the
recognition of the trade mark on the market, the association which can be made
with the used or registered sign, the degree of similarity between the trade mark and
the sign, and between the goods or services identified. Note how two of these are
concerned with the consumer’s perception (‘the recognition of the trade mark on the
market’ and ‘the association which can be made with the used or registered sign’). The
following is a suggested way of organising the issues when applying s.5(2).

Similarity of marks

As a pre-condition to the application of s.5(2), there must be at least some similarity

between the senior and junior mark: Case 106/03 P Vedial SA v OHIM [2004] ECR I-9573. If
there is no such similarity, then the senior mark has no protection.

First, it should be asked whether the junior mark is identical or similar to the senior
mark. Identity involves the application of the test in LTJ explained above. Similarity
depends on an aural, visual and conceptual comparison based on the overall
impression given by the marks, bearing in mind their distinctive components (C-251/95
Sabel BV v Puma AG [1997] ECR I-6191 at paragraph 23). In other words, how do the two
marks sound, how do they look and what is their underlying idea? The Court in Sabel
added that ‘the perception of marks in the mind of the average consumer of the
type of goods or services in question plays a decisive role in the global appreciation
of the likelihood of confusion. The average consumer normally perceives a mark as a
whole and does not proceed to analyse its various details.’ The Court’s advice on how
to determine similarity of marks was heavily influenced by cases decided under the
Benelux Uniform Trade Mark Law 1971 (see in particular Union v Union Soleure, 20 May
1983, Case A 82/5 [1984] BIE 137).

Two cases illustrate the application of the test in Sabel. In T-112/06 Inter-Ikea Systems BV v
OHIM (IKEA/IDEA), 16 January 2008 (General Court) it was said that the average consumer
here would be very attentive as furniture (the goods in question) would only be bought
after a period of reflection. When comparing the marks visually, the Court noted that the
junior mark had a very dominant figurative element, while the senior mark consisted
of just a single word. There was only a low degree of aural similarity because even
though the sequence of vowel sounds were the same, the consonants ‘d’ and ‘k’ were
spoken very differently, using different parts of the mouth. Last, there was no conceptual
similarity, since the word ‘idea’ was a word generally understood by the European public
while ‘ikea’ was a neologism with no obvious meaning and therefore no associations. In
C-120/04 Medion AG v Thomson Multimedia Sales [2005] ECR I-8551 the CJEU offered advice
on how LIFE (the senior mark) should be compared with THOMSON LIFE when both marks
were used on electronic goods. It said that overall assessment of the two marks would
make the notional consumer think that the owner of LIFE had expanded its business,
leading to indirect confusion. It did not matter that LIFE was not the dominant part of
THOMSON LIFE. To require that the senior mark formed the dominant part of the junior
mark would in effect deny protection to the senior mark.

Distinctive components
In C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ECR I-3819 at
paragraphs 22–23 the Court explained what it meant by ‘the distinctive components’
of a mark. The national court, it said, must make an overall assessment of the greater
or lesser capacity of the mark to identify the goods or services for which it has been
registered, taking particular account of the mark’s inherent characteristics, whether
or not it contains a descriptive element, the market share held by the mark, how
intensive, geographically widespread and long-standing the use of the mark has been,
the amount invested by the undertaking in promoting the mark, the proportion of
the relevant section of the public which, because of the mark, identifies the goods or
services as originating from a particular undertaking, and statements from chambers
Intellectual property 12 Registration of trade marks page 203
of commerce and industry or other trade and professional associations (in case this list
sounds familiar, reread the list of factors to be taken into account when determining
factual distinctiveness under the Court’s ruling in Windsurfing Chiemsee).

An example of similar marks

As an example of how marks may be held similar, consider the decision in Neutrogena
v Golden Ltd t/a Laboratoires Garnier [1996] RPC 473 where Jacob J held that NEUTRALIA
was similar to NEUTROGENA (both marks being for skin-care products): the prefix
‘neutra’ conveyed the idea to the average shopper that the goods were kind to the
skin; the average shopper would tend to ignore the second part of each word, and
would certainly not make a detailed comparison between the two names.

Similarity of goods
Next, once it is shown that the marks are similar (or at least not dissimilar), it must be
decided whether the goods are similar. The test to be applied here is that in C-39/97
Canon KK v Metro-Goldwyn-Mayer Inc [1998] ECR I-5507. At paragraph 23, the CJEU stated
that all relevant factors must be taken into account, including the nature of the goods,
the end users, the method of use and whether the goods are in competition with each
other or are complementary. We may add that the fact that the goods of both marks
appear in the same class within the Nice Classification of Goods and Services 1957
is of no assistance, as the classification is there for administrative purposes; in any
case, many of the classes are very wide, comprising diverse products. The Canon test
depends entirely on the facts of each case.

The test in Canon should be contrasted with the approach adopted in British Sugar plc
v James Robertson & Sons Ltd [1996] RPC 281, where Jacob J updated the test in Jellinek’s
Application (1946) 63 RPC 59. Though the tests are similar, the one in British Sugar is
narrower as it asks whether the goods are in competition with each other (i.e. one could
be substituted for the other), which is not the same as asking whether the goods are
complementary. ‘Complementary goods’ (e.g. pasta and pasta sauce) are an example of
indirect confusion.

The ‘global appreciation’ test

Having compared the two marks and their respective goods and services, the last
step in determining likelihood of confusion is to apply the ‘global appreciation’ test
laid down by the CJEU in Sabel and Canon. As the Court stated in the former ruling,
‘likelihood of confusion’ requires the application of interdependent factors. If the
two marks are conceptually similar, and the senior mark has a particularly distinctive
character, either per se or because of the reputation it enjoys with the public, then
there may be a greater likelihood of confusion. However, if (as in Sabel itself) the
senior mark has hardly been used, and is one of many on the register with the same
underlying idea (e.g. a wild cat), then the chances of confusion are far lower. The
interdependence of factors point was emphasised in Canon, where the Court said
that a lesser degree of similarity between the goods and services could be offset by a
greater degree of similarity between the marks and vice versa. In that case, although
the goods were not particularly similar (photographic equipment versus video
cassettes), because the senior mark was inherently strong, had been extensively used
and promoted, and because the two marks were very close (CANON versus CANNON)
there was a likelihood of confusion. As the Court put it in C-342/97 Lloyd Schuhfabrik
Meyer & Co GmbH v Klijsen Handel BV [1999] ECR I-3819 the strength of the senior mark
may have the effect of making dissimilar goods similar, or the closeness of the goods
may make the sign more similar to the senior mark.

The ‘global appreciation’ test must be contrasted with that applied by UK courts in the
early days of the TMA. In British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281,
it was held that ‘likelihood of confusion’ was only to be considered after it had been
established (as separate and discrete steps) that the goods and the marks were similar.
It assumed only notional and fair use of the application and the registered mark. This
‘sterile’ test (there was no interdependence of factors) was based on the decision in
Smith Hayden & Co Ltd’s Application (1946) 63 RPC 71 under the 1938 Act and took no
page 204 University of London
account of the distinctive character (whether inherent or acquired) of the senior mark.
Since Sabel and Canon, there has been a gradual acceptance of the CJEU’s more flexible
approach: an example of the use of these cases by the United Kingdom Trade Marks
Registry can be found in BALMORAL Trade Mark [1999] RPC 297. In Reed Executive plc v
Reed Business Information Ltd [2004] RPC 767 the Court of Appeal accepted that in the
case of a used trade mark, the circumstances surrounding such use must be taken into
account when determining confusion.

In Specsavers International Healthcare Ltd v Asda Stores Ltd [2014] EWCA Civ 24 at [51]–
[52], Kitchin LJ provided a very helpful summary of the principles to be applied in
assessing ‘likelihood of confusion’ in registered trade mark law. See also now Maier v
ASOS plc [2015] EWCA Civ 220.

Dilution
The last limb of the ‘triad of protection’ is to be found in s.5(3) (as amended by the Trade
Marks (Proof of Use) Regulations 2004 (SI 2004/946)). This amendment was as a result of
the interpretation accorded to the optional Article 4(4)(a) and Article 5(2) of the Directive
(both of which require the senior mark to be registered for dissimilar goods and services)
by the CJEU’s rulings in C-292/00 Davidoff & Cie SA and Zino Davidoff v Gofkid Ltd [2003] ECR
I-389 and C-408/01 Adidas-Saloman AG and Adidas Benelux BV v Fitnessworld Trading Ltd
[2003] ECR I-12537. These were to the effect that there would be a gap in the scheme of
protection if the owner of a mark with a reputation could object to the registration of a
junior mark if the goods were dissimilar but could not object if they were similar where
there was no likelihood of confusion.

Read s.5(3) again now. You will see that an earlier registration of the identical or
similar mark will bar the application where the earlier mark has acquired a reputation
and the use of the later mark without due cause would take unfair advantage of or be
detrimental to the distinctive character or repute of the earlier mark. This introduces
the doctrine of dilution into the law of registered trade marks in the UK (although
similar protection had already been accorded in passing off, as discussed in Chapter
11). From our discussion of trade mark function in Chapter 10, you should remember
that dilution of a trade mark can mean the ‘blurring’ of the product identification
of the mark by its use on dissimilar goods or services, the ‘tarnishing’ of its image by
its use on an unwholesome product or taking unfair advantage of the success of the
earlier mark to promote the goods or services of the junior mark.

The criteria in s.5(3) are totally different from those found in s.5(2) (Sabel v Puma),
as each provision pursues a different objective. Section 5(3) contains a number of
elements that must be satisfied if the relative ground for refusal is to apply.

First, the junior mark must be identical or similar to the senior mark. When comparing
the senior and junior marks under s.5(3), the CJEU has said in C-252/07 Intel Corporation
Inc v CPM United Kingdom Ltd, CJEU, 27 November 2008 and C-487/07 L’Oréal SA v Bellure
NV, CJEU, 18 June 2009 that the similarity must be such that the relevant section of the
public makes a connection between the sign and the mark, that is to say, establishes
a link between them without confusing them. However, the existence of such a link
on its own is not sufficient: there must be injury to the mark. Whether there is a link
(i.e. whether the consumer ‘calls to mind’ the senior mark) is to be assessed globally,
taking into account the degree of similarity between the conflicting marks, the nature
of the goods or services for which the conflicting marks were registered, including the
degree of closeness or dissimilarity between those goods or services and the relevant
section of the public, the strength of the earlier mark’s reputation, the degree of the
earlier mark’s distinctive character, whether inherent or acquired through use, and the
existence of the likelihood of confusion on the part of the public.

Next, it will be necessary to prove the reputation of the earlier mark. ‘Reputation’
was explained by the CJEU in C-375/97 General Motors Corporation v Yplon SA [1999]
Intellectual property 12 Registration of trade marks page 205
ECR I-5421 as meaning that the mark must be ‘known’ by a significant number of
the relevant public (i.e. the consumers of the product concerned), although it is
not necessary to show that a given percentage recognise the mark. ‘Known’ is a less
onerous requirement than the mark being ‘famous’ or even ‘well-known’. The CJEU in
General Motors listed the factors to be taken into account by the national court when
determining whether a mark has a reputation. These are: the market share held by the
trade mark; the intensity, geographical extent and duration of its use; and the size of
the investment made by the undertaking in promoting it. (Again, you should compare
this list with the lists in Windsurfing Chiemsee and Lloyd.)

Lastly, the use by the junior mark must be without due cause and must take unfair
advantage of or be detrimental to the distinctive character or repute of the senior
mark. ‘Due cause’ may apply in a range of circumstances. See, for example, (C0323/09)
Interflora Inc v Marks & Spencer [2011] I ECR 8625, where a use in the course of ‘fair
competition’ was held to be use with ‘due cause’ and C-65/12 Leidesplein Beheer BV v
Red Bull GmbH [2014] ETMR 24, where it was held that a ‘good faith’ protection of the
commercial interests of the defendant might also satisfy the definition of ‘due cause’.

In C-252/07 Intel Corporation Inc v CPM United Kingdom Ltd at [27] and in C-487/07 L’Oréal
SA v Bellure NV at [38], the CJEU identified three types of harm which can be caused to
the senior mark. Any one of these suffices, but in each case the question of harm must
be assessed globally. The types of harm are:

u detriment to the distinctive character of the mark (‘whittling away’ or ‘blurring’):

the mark’s ability to identify the goods or services for which it is registered is
weakened due to the ‘dispersion of identity’

u detriment to the repute of the mark (‘tarnishment’ or ‘degradation’): the goods or

services for which the identical or similar sign is used are perceived by the public in
such a way that the trade mark’s power of attraction is reduced, particularly where
the third party’s goods or services possess a characteristic or quality which is liable
to have a negative impact on the image of the mark

u taking unfair advantage (‘parasitism’ or ‘free riding’): the third party seeks by their
use of the senior mark to ride on its coat-tails in order to benefit from the power of
attraction, the reputation and prestige of the mark and to exploit, without paying
any financial compensation, the marketing effort expended by the proprietor in
order to create and maintain the mark’s image.

In C-252/07 Intel Corp v CPM UK Ltd, the Court of Justice provided important guidance on
the concept of ‘detriment to distinctive character’ (dilution), stating that:

…[P]roof that the use of the later mark is or would be detrimental to the distinctive
character of the earlier mark requires evidence of a change in the economic behaviour of
the average consumer of the goods or services for which the earlier mark was registered
consequent on the use of the later mark, or a serious likelihood that such a change will
occur in the future.

An example of change of economic behaviour is provided by Quorn Hunt v Marlow

Foods Ltd [2005] ETMR 105, where it was held that Quorn for vegetarian meat substitute
would be tarnished by being associated with a hunting organisation. On seeing the
defendant’s mark, consumers would change their economic behaviour (i.e. they would
be put off buying the opponent’s goods). Further detail on the requirement to prove
change of economic behaviour or serious likelihood of such change was provided
in PlanetArt LLC v Photobox Ltd [2020] EWHC 713 (Ch) where it was held that indirect
evidence of such harm might arise where a rightholder would be obliged to make its
mark more different from that of a newcomer in order to maintain the same level of
recognition in the specific combination of features of the registered trade mark.

In C-487/07 L’Oréal SA v Bellure NV, the Court of Justice provided important guidance on
the concept of unfair advantage:
page 206 University of London

…[W]here a third party attempts, through the use of a sign similar to a mark with a
reputation, to ride on the coat-tails of that mark in order to benefit from its power of
attraction, its reputation and its prestige, and to exploit, without paying any financial
compensation and without being required to make efforts of his own in that regard, the
marketing effort expended by the proprietor of that mark in order to create and maintain
the image of that mark, the advantage resulting from such use must be considered to be
an advantage that has been unfairly taken of the distinctive character or the repute of
that mark.

While it is necessary to demonstrate a change in economic behaviour or a serious

risk that such change would take place in future in order to demonstrate detriment
to distinctive character or repute, in Sazerac Brands LLC v Liverpool Gin Distillery [2020]
EWHC 2424 (Ch), Fancourt J held that:

It is less clear that taking unfair advantage of the repute or distinctive character of a trade
mark similarly requires evidence of a change in the economic behaviour of a consumer
of the goods or services in question. The proof of taking unfair advantage is after all an
alternative to proof of detriment to the repute or distinctive character of the mark, and an
advantage may accrue to a defendant without any detriment to the claimant. [45]

For an example of the application of the concept of ‘unfair advantage’ (under ss.5(3)
and 10(3) TMA 1994), see BMW AG v Technosport London Ltd [2016] EWHC 797 (IPEC) [34]–
[38] and Argos Ltd v Argos Systems Inc [2018] EWCA Civ 2211; Red Bull GmbH v Big Horn Ltd
[2020] EWHC 124 (Ch).

Activity 12.7
Go over your notes on ss.5(1), 5(2) and 5(3). Then complete the chart below by
inserting the relevant judicial definitions of the key phrases and providing the
names of the relevant authorities for each definition.

Element Definition Authority

identity of marks

similarity of marks

similarity of goods

global appreciation

reputation

No feedback provided.

12.4.4 Conflict with an earlier unregistered mark

In s.5(4)(a), the UK implemented one of the optional provisions of the Directive by
enabling the owner of a prior used but unregistered mark to oppose a later trade mark
application. Oppositions under this subsection rarely succeed, because the opponent
must convince the Registry that they would be likely to succeed in a passing off action:
WILD CHILD Trade Mark [1998] RPC 455. An example of an unsuccessful opposition is
OXFORD BLUE Trade Mark, Registry, 23 March 2004, where the University of Oxford failed
in its attempt to prevent the registration of OXFORD BLUE for cheese. Although the term
OXFORD BLUE was known to the public as a sporting award, there was no evidence that
the University had traded under that name, and hence there was no goodwill to protect.

12.4.5 Conflict with an earlier copyright or design

Under s.5(4)(b), the owner of an earlier copyright or design can oppose a trade
mark application. There may be a conflict between the trade mark and an earlier
two-dimensional artistic work (see KARO STEP Trade Mark [1977] RPC 59) or between
a shape trade mark and an earlier three-dimensional artistic work or registered or
unregistered design (OSCAR Trade Mark [1979] RPC 173). As music can be a trade mark
(Shield Mark BV v Joost Kist [2003] ECR I-14313), there could now be a conflict between
the owner of the copyright in the tune and a trade mark applicant.
Intellectual property 12 Registration of trade marks page 207
Summary
Relative grounds for refusal of registration (which may be raised either by the Registrar or
by an opponent) concern the relationship between the mark applied for and prior rights.
Such prior rights are primarily earlier registered marks, but can include unregistered
marks and earlier copyrights and designs. With regard to earlier registered rights,
ss.5(1) to (3) provide what has been called the ‘triad of protection’. Each subsection
contains its own specific criteria and the provisions must be applied in sequence. The
CJEU has provided extensive guidance as to the meaning of key words and phrases
in Article 4 of the Trade Marks Directive (the parent provision), in particular ‘identical
mark’, ‘similar mark’, ‘similar goods’, ‘likelihood of confusion’, ‘likelihood of association’
and ‘reputation’. The Court’s case law confers broad protection on marks which have
inherent or acquired distinctiveness or which have acquired a reputation among a
significant section of consumers. The role of the average consumer in determining the
issues of identity, similarity and confusion is crucial.

Sample examination questions

Question 1 Consider whether EACH of the following could be registered under the
provisions of the Trade Marks Act 1994.
a. The sound of bird song for breakfast cereal.

b. The colour red for fire extinguishers.

c. Soap in the shape of a heart.

d. KILLER for clothing.

Question 2 ‘Likelihood of association has no role to play in determining the scope

of the trade mark owner’s monopoly.’
Explain and comment critically on this statement.
Question 3 Consider the following in the context of ss.5 and 6 of the Trade Marks Act
1994.
a. An application to register PHARMATIN for analgesic preparations when
PHARMATON is already used and registered in respect of vitamin capsules.

b. An application to register DAILY for dried milk when DAISY is already used and
registered in respect of margarine.
page 208 University of London
Advice on answering the questions
Question 1 A good answer should tackle each part of the question systematically, as
follows.

a. Sound marks. These should first be considered under Article 2 s.1. Are they a ‘sign’
(Sieckmann) (they appeal to the senses) and are they capable of distinguishing (in
principle a sound could be a trade mark)? Before the recent amendment of the law,
the requirement of graphic representation under Sieckmann, as applied to sound
marks by the Shield Mark decision, would have presented a problem. However, now
sounds are explicitly identified as an example of a potentially registrable type of mark
under TMA 1994, s.1. As long as the sound can be represented clearly and precisely (an
audio file?), the requirement to satisfy this condition is unlikely to present a problem.
However, would the mark be met by any Article 3/s.3 objections? Would it be devoid
of distinctive character, is it inherently distinctive – do consumers perceive sounds as
trade marks (possibly not) – or would it be descriptive? What has the CJEU said about
the meaning of those phrases? Could these objections be overcome by evidence
of factual distinctiveness? What does Windsurfing Chiemsee say about this? What
would need to be proved? How much evidence would be needed?

b. Colour marks. Again the discussion should begin with Article 2 s.1 and the issues of
‘sign’, ‘clear and precise representation’ and ‘capable of distinguishing’. In relation
to representation, the CJEU ruling in Libertel should be discussed: has the particular
shade of red been indicated by use of the Pantone system or similar? Under s.3,
would this mark be devoid of distinctive character: do consumers see colours as
trade marks? (Here, would red simply indicate danger?) Would it be descriptive,
for example, of a particular type of fire extinguisher? Might it not be common to
the trade? Again, what sort of evidence of use would be needed to overcome these
objections? Even if they could be overcome, what about an objection that the mark
is deceptive or is contrary to public policy?

c. Shape marks. These are mentioned in Article 2 s.1 as being potential trade
marks (though care should be taken with the representation – Swizzels Matlow).
Applying s.3(2) first (Linde), is this a shape resulting from the nature of the goods
or could soap be any shape? Is it a shape necessarily attributable to a technical
result (Philips)? Is it a shape which adds substantial value to the goods? In the last
instance the question to be asked is not whether the branded goods cost more
but whether consumers buy the product for its shape alone or for some other
reason (presumably, here, to wash) (you should refer to the arguments in the
Strowel article). Even if the shape escapes refusal under s.3(2), it is still necessary to
see if there are objections under s.3(1). Paragraphs (b), (c) and (d) (together with
relevant CJEU case law as summarised by the Court of Appeal in Bongrain) should be
discussed in detail. Do consumers normally see shapes as trade marks? What sort
of evidence of factual distinctiveness would be needed under the proviso?

d. Word marks. KILLER: as a word mark there should be no problem with Article 2
s.1. Applying the concrete test of s.3(1), would the average consumer perceive this
as a trade mark or think that it describes the goods or is common in the trade?
Unlikely. The difficulty here is s.3(3)(a) and objections on the grounds of public
policy, as discussed in Ghazilian. The Appointed Person’s views in Ghazilian should
be explored. If there is an objection under s.3(3)(a), acquired distinctiveness would
not help.

From the above, you can see that the systematic approach involves a discussion
of s.1 (where appropriate – i.e. ‘non-standard’ trade marks), followed by a detailed
examination of s.3(1)(b), (c) and (d), followed by a discussion of what would be
necessary to satisfy the proviso on acquired distinctiveness, with an appropriate
selection of other grounds of objection in s.3. In the case of shape marks, s.3(2) is to be
considered before s.3(1).

Question 2 A good answer will:

u explain the context in which the phrase ‘likelihood of association’ occurs (Articles
4(1) and 5(1) of the Directive, ss.5(2) and 10(2) TMA) and its origin in Benelux law
Intellectual property 12 Registration of trade marks page 209
u explain its relationship with ‘likelihood of confusion’ and the types of confusion
which can occur

u discuss Sabel v Puma and the conclusions reached in there

u consider the role of ‘association’ in the application of s.5(2), namely the effect of
Recital 10, the concept of indirect confusion and the global appreciation test in
Sabel and Canon

u consider the role of ‘association’ in the application of s.5(3)

u link the above material to the functions performed by trade marks and by the
discussion thereof in Arsenal v Reed (see Chapter 10).

Question 3 A good answer will apply ss.5(1), 5(2) and 5(3) systematically to the two parts
of the question, making effective use of the CJEU’s guidelines on the interpretation of key
words and phrases in those provisions. Are the marks identical and for identical goods
or services (what does identical mean under LTJ)? If s.5(1) does not apply, consider s.5(2):
are the marks similar (applying the threefold test in Sabel for similar marks), are the
goods similar (applying the test in Canon) and is there a likelihood of confusion? What
does confusion mean? How is it to be determined? Consider the ‘global appreciation’
test and the interdependence of factors (although it is not possible to determine the
extent of use of the senior mark in each case here). Lastly, consider the criteria under
s.5(3). Is there an identical or similar mark? Does the senior mark have a reputation
(as defined in General Motors)? Is there an absence of due cause? And is there unfair
advantage or detriment to the distinctive character or repute of the senior mark? The
conclusion reached on likelihood of confusion or on dilution does not matter as long as
you demonstrate a systematic approach to the question and an effective use of the CJEU’s
case law.
page 210 University of London
Reflect and review
Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.
Tick a box for each topic. Ready to Need to Need to
move on revise first study again

I can summarise in outline the procedural steps

which are taken when obtaining registration of a
  
trade mark.

I can explain the key elements which go to make up

the statutory definition of a trade mark.   

I can explain how the absolute grounds for the

refusal of registration of a trade mark have been
interpreted by the CJEU, including the policy
underlying these grounds (where such policy has   
been explained by the Court).

I can explain how the relative grounds for refusal of

registration of a trade mark interrelate and how they
are to be applied, using the case law of the CJEU to   
support my explanation.

I can list the points which must be satisfied before a

trade mark can be entered on the United Kingdom   
Trade Marks Register.

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

12.1 Background: registry procedure  

12.2 The meaning of ‘mark’  

12.3 Absolute grounds for refusal  

12.4 Relative grounds for refusal  

13 Trade mark infringement and defences

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 212

13.1 Overview of trade mark infringement . . . . . . . . . . . . . . . . . . 213

13.2 Categories of infringing acts . . . . . . . . . . . . . . . . . . . . . . . 213

13.3 The scope of trade mark protection . . . . . . . . . . . . . . . . . . . 215

13.4 General defences to infringement . . . . . . . . . . . . . . . . . . . . 219

13.5 Comparative advertising . . . . . . . . . . . . . . . . . . . . . . . . 222

13.6 Exhaustion of rights . . . . . . . . . . . . . . . . . . . . . . . . . . . 224

13.7 Revocation and invalidity . . . . . . . . . . . . . . . . . . . . . . . . 230

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . 236

page 212 University of London

Introduction
The purpose of this chapter is to set out the rights of a trade mark owner (once the
mark has been registered) to prevent others from making use of any sign which is the
same as or similar to the registered mark in the course of trade.

In examining the scope of protection accorded to a registered mark, you will need
to refer back to the discussion of trade mark function in Chapter 10. This is because
recent case law has reinforced the link between the scope of protection and the
commercial functions which trade marks perform. Further, as explained in Chapter 12,
there is considerable overlap between the relative grounds for refusal (which enable
the registered proprietor to stop another later mark being entered on the register)
and the provisions on infringement (which enable the registered proprietor to stop
another later mark being used). You will therefore be required to reread the material
in Chapter 12 dealing with relative grounds or, at the very least, to confirm your
understanding of it. Another comparison you will need to make is between the rights
conferred under statute on the owner of a registered trade mark to stop infringers and
the protection conferred at common law on the owner of an unregistered mark to
prevent passing off. You should therefore regard this chapter as bringing together all
the issues dealt with in the previous three chapters.

This chapter begins with an overview of the issues which a court will usually have to
deal with in a trade mark infringement action. It is important that you acquire a clear
understanding of these issues at the earliest opportunity. Appreciating the arguments
which can be raised and by whom they are raised will help you to develop an ordered
approach to answering trade mark infringement problems in the examination.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u summarise the issues which are likely to be raised in an infringement action
u list the various types of infringing conduct
u apply in sequence those sections of the TMA which set out the scope of
protection afforded to a registered trade mark
u explain the various arguments which a defendant may raise in a trade mark
infringement action, including the general and specific defences found in
legislation, and any counterclaim for revocation or invalidity.
Intellectual property 13 Trade mark infringement and defences page 213

13.1 Overview of trade mark infringement

The issues which a trade mark infringement action raises can be conveniently divided
into points which the claimant has to prove in order to succeed and those which a
defendant will wish to raise by way of response.

A claimant who brings a trade mark infringement action will have to show two things:
that an act of infringement has been committed (by analogy with the criminal law,
think of this as the actus reus of infringement) and that such conduct falls within the
scope of protection afforded to the registered mark. (In patent law, these issues are
sometimes called ‘infringement in law’ and ‘infringement in fact’ – see Chapter 18.)
Once these two points have been established, the court will normally find in favour of
the claimant unless one or more of the counter-arguments raised by the defendant
succeeds.

The defendant to a trade mark infringement action has several possible

counter-arguments.

u First, that there was no infringing conduct and/or that this did not fall within the
scope of protection given to the registered mark; in other words, the claimant has
failed to establish the key ingredients of the infringement action.

u Next, even if all the ingredients of the infringement action have been proved, that
one of more of the statutory defences apply to exonerate the defendant from
liability. Such defences include use of one’s own name and address, descriptive
use, prior use, acquiescence, comparative advertising and exhaustion of rights.
Whether one or more of these defences is available will depend primarily on the
facts of the individual case. Further, each of these statutory defences has precise
conditions which the defendant must meet in order to succeed.

u Last, that the trade mark should be removed from the Register, either under
the revocation provisions (all of which are concerned with post-registration
mismanagement of the trade mark by its proprietor) or under the invalidity
provisions (which are to the effect that the mark was entered on the Register in
error, being in breach of either the absolute or relative grounds). As we shall see,
the effects of revocation and a declaration of invalidity are different. From the
defendant’s point of view, the more effective argument is that the mark should be
declared invalid.

Because of the risk of a successful counterclaim for revocation or invalidity, it is

standard practice for a trade mark owner to plead passing off as an alternative cause of
action. Even if the mark is removed from the Register, its use will confer some degree
of protection at common law. When answering a trade mark infringement problem,
you may also be required to consider whether the claimant could, in the alternative,
succeed in passing off. If need be, you should remind yourself of the ingredients of
passing off, as set out in Chapter 11.

We shall now examine the issues in trade mark infringement in turn.

13.2 Categories of infringing acts

Core text
¢ Bainbridge, Chapter 21 ‘The UK trade marks – rights, infringement, limitations
and defences, remedies and criminal offences’ pp.740–44, 758.

¢ Bently et al., Chapter 40 ‘Infringement’.

¢ Cornish, Chapter 18 ‘Registered trade marks’ paras 18–082 to 18–085, 18–107 to

18–109.

¢ Karapapa and McDonagh, Chapter 13 ‘Infringement and loss of registration of

trade marks’ Sections 13.1 to 13.3.
page 214 University of London

Essential reading
¢ Trade Marks Directive, Article 5(3); TMA, ss.10(4) and (5) and 103(2).

¢ Cases: Trebor Bassett Ltd v The Football Association [1997] FSR 211; C-206/01 Arsenal
Football Club v Matthew Reed [2002] ECR I-10273.

Liability for primary infringement

Under s.10(4) (which is based on Article 5(3) of the Directive), the following forms of
conduct infringe a registered trade mark:

u affixing the sign to goods or packaging

u offering or exposing goods for sale, putting them on the market, stocking them for
those purposes under the sign, offering to supply services under the sign

u importing or exporting goods under the sign

u using the sign as a trade or a company name or as part of a trade or company name

u using the sign on business papers or advertising

u using the sign in comparative advertising in a manner that is contrary to the

Business Protection from Misleading Marketing Regulations 2008.

This list is not exhaustive because Article 5(3) of the Directive contains the phrase ‘in
particular’.

Liability under s.10(4) therefore depends on goods being ‘put on the market’ (C-281/05
Montex Holdings Ltd v Diesel [2006] ECR I-10881). Under the Act, as amended by the 2018
Regulations, the proprietor of a trade mark is entitled even to prevent goods from being
brought into a Member State without being released for free circulation, unless the
holder of the goods can demonstrate that the proprietor of the registered trade mark
is not entitled to prohibit the placing of the goods on the market in the country of final
destination (Trade Marks Act 1994, s.10A).

In 2022, the High Court adjudicated a trade mark infringement claim brought by
the Swatch group of watch makers against Samsung – Montres Breguet SA v Samsung
Electronics Co Ltd and Samsung Electronics (UK) Ltd [2022] EWHC 1127 (Ch). The claim
concerned digital watch faces/watch face apps that could be downloaded to Samsung’s
smartwatches from the App store. Swatch argued that 23 of their registered trade marks
had been infringed by up to 30 watch face apps. Samsung admitted that those apps
had been popular – they had been downloaded 160,000 times in the UK and the EU.
Swatch claimed that Samsung should be liable as a primary tortfeasor, even though
the apps were made by third-party developers. Although these apps were developed
by third-party app developers, the court heard that Samsung was involved in, and
effectively controlled, the whole app process. Under the test for infringement under
Article 9(2) of the European Union Trade Mark Regulation, the court held that Swatch had
demonstrated trade mark infringement in the digital watch face or the app name (and
in some cases both the face and the app name). The court found Samsung liable as a
primary tortfeasor.

Liability for contributory infringement

Besides the list in s.10(4), there is a further form of infringing conduct found in
s.10(5). This is an entirely domestic provision, and it imposes liability for contributory
(or secondary) infringement on those who supply labelling, packaging, business
papers or advertising material to the primary infringer. When alleging contributory
infringement, the claimant must show that the defendant ‘knew or had reason to
believe’ that the application of the trade mark to the packaging, etc. was not duly
authorised (knowledge is not required for the acts of primary infringement in s.10(4)).
The wording of s.10(5) (like similar wording in the CDPA in relation to secondary
infringement of copyright) imposes an objective test, that is, the defendant is judged
by the standard of the reasonable person in that line of business (LA Gear v Hi-Tech
Sports Ltd [1992] FSR 121, confirmed in Vermaat & Powell v Boncrest (No 2) [2002]
FSR 331).
Intellectual property 13 Trade mark infringement and defences page 215

Non-graphic use
Under s.103(2) the infringing conduct can be oral. This would cover use of a trade mark
in a radio advertisement.

Use within the UK

The TMA requires that the infringing conduct be committed within the territory of the
UK. Where the defendant places the infringing sign in an advertisement on a website
based in another jurisdiction, it must be shown that the advertisement is ‘targeted’ at
customers in the UK. There have been a number of recent cases in which courts have
considered whether customers in the UK have been ‘targeted’ and therefore whether
liability arises in this jurisdiction. The principles have been established by the Court of
Appeal in Merck KGaA v Merck Sharp and Dohme Corp [2017] EWCA Civ 1834 in which it was
stated that the issue of targeting is to be considered objectively from the perspective
of average consumers in the UK and that all the circumstances of the use were to be
taken into account. These principles have been applied in Argos Ltd v Argos Systems Inc
[2018] EWCA Civ 2211 and Easygroup Ltd v Easy Fly Express Ltd [2018] EWHC 3155 (Ch).

Activity 13.1
In relation to identifying whether there has been conduct which infringes a
registered trade mark, answer the following questions:
a. What are the primary and secondary acts of infringement of a registered trade
mark?

b. When does knowledge have to be proved for trade mark infringement and how
is this assessed?

c. What other requirements must be satisfied before trade mark infringement ‘in
law’ is established?

No feedback provided.

13.3 The scope of trade mark protection

Core text
¢ Bainbridge, Chapter 21 ‘The UK trade marks – rights, infringement, limitations
and defences, remedies and criminal offences’ pp.780–90.

¢ Bently et al., Chapter 38 ‘Relative grounds for refusal’.

¢ Cornish, Chapter 18 ‘Registered trade marks’ paras 18–086 to 18–109.

¢ Karapapa and McDonagh, Chapter 13 ‘Infringement and loss of registration of

trade marks’ Section 13.4.

Essential reading
¢ Trade Marks Directive, Article 5; TMA ss.9 and 10.

¢ Cases: Reed Executive plc v Reed Business Information Ltd [2004] RPC 767; C-206/01
Arsenal Football Club v Matthew Reed [2002] ECR I-10273; C-17/06 Céline Sarl v
Céline SA [2007] ECR I-7041; C-487/07 L’Oréal SA v Bellure NV [2009] ECR-I 5185;
C-323/09 Interflora v Marks & Spencer [2011] ECR I-8625.

¢ Gangjee, D. and R. Burrell ‘Because you’re worth it: L’Oréal and the prohibition
on free riding’ (2010) 73 MLR 282.

When considering whether the defendant’s alleged infringement falls within the
scope of the claimant’s registration, the starting point is the relevant statutory
provisions. Read ss.9 and 10 of the TMA now. The following observations can be made.

u Under the TMA, the trade mark owner may be entitled to prevent the use of the
identical or similar sign upon identical, similar or dissimilar goods.
page 216 University of London
u The enquiry to determine whether a sign used by a defendant infringes a registered
mark is structured in accordance with the same principles as the enquiry to
establish whether the relative grounds for refusal apply (see above). Section 10 of
the TMA accordingly employs the same concepts and tests as s.5 discussed above
in connection with ‘relative grounds of refusal’ (e.g. ‘identical marks’, ‘likelihood of
confusion’ and ‘unfair advantage’). The case law that we considered in connection
with relative grounds (e.g. Sabel and L’Oréal v Bellure), is equally applicable in
establishing whether a mark has been infringed).

u In addition, the wording of s.9(1) raises the question of whether there is a

requirement of ‘trade mark use’.

13.3.1 Trade mark use

As indicated above, the wording of s.9(1) raises the question of whether there is a
requirement of ‘trade mark use’. The problem is made worse by the fact that s.10,
like Article 5 of the Directive, uses the word ‘sign’ in contrast to s.9(1) which uses the
phrase ‘trade mark’. Under s.4 of the Trade Marks Act 1938 it was held that ‘trade mark
use’ (that is, use to indicate origin) was essential, so that if the defendant’s use of the
claimant’s mark was not to indicate origin, there could be no infringement: Mars v
Cadbury [1987] RPC 387 (‘treat-sized WISPA bars’ did not infringe TREETS for chocolate
because it was descriptive use).

Under the Directive, the CJEU made it clear that (in contrast to the comments in British
Sugar plc v James Robertson & Sons Ltd [1996] RPC 281) the use of a sign in commerce alone
does not suffice. There must be some use which affects the essential function of the trade
mark, that is the trade mark owner is entitled to object to anyone who acts in a way that
impairs a mark’s ability to serve as a guarantee of origin or seeks to take unfair advantage
of the status and repute of the trade mark, for example: C-206/01 Arsenal Football Club v
Matthew Reed [2002] ECR I-10273; Interflora v Marks & Spencer [2011] ECR I-8625. There is
therefore a requirement of trade mark use, but the phrase has a much wider meaning
than it did before. The decision protects the wider function of a trade mark as a vehicle
for ‘creating and retaining custom’ (see Chapter 10). The CJEU made extensive reference
to its earlier jurisprudence about the essential function of the trade mark and its role as
guarantor, both of commercial origin and the quality of the goods. The Court stressed
the importance of trade marks in achieving competition within the internal market. The
exclusive rights conferred by legislation are to enable the proprietor’s specific interests
to be protected. These interests would be undermined if a third party’s use of the sign
was liable to affect the functions of the trade mark, in particular its essential function of
guaranteeing to consumers the origin of the goods.

The definitive requirements for liability have now been set out in C-17/06 Céline SARL
v Céline SA [2007] ECR I-7041. Four conditions must be satisfied before the trade mark
right is infringed.

u Use must be in the course of trade.

u It must be without the consent of the proprietor of the mark.

u It must be in respect of goods or services.

u It must affect or be liable to affect the functions of the trade mark, in particular
its essential function of guaranteeing to consumers the origin of the goods or
services.

The absence of consent is self-explanatory but the remaining three elements require
further discussion.

Use in the course of trade

A definition of this was given by the General Court in T-195/00 Travelex Global and
Financial Services Ltd v Commission [2003] ECR II-1677 where it was held (relying on
Arsenal Football Club v Matthew Reed) that the Commission had not, when it adopted
the official euro symbol, used a sign which infringed the claimant’s trade mark in
the course of trade. This was because the adoption of the symbol was not ‘use in the
Intellectual property 13 Trade mark infringement and defences page 217
course of a commercial activity whereby goods and services are manufactured and
supplied in a particular market’. For another example of what does not suffice as ‘use
in the course of trade’, see Electrocoin Automatics Ltd v Coinworld Ltd [2005] FSR 79 (the
appearance of the letters ‘O’, ‘X’ and ‘O’ in the display of a gaming machine supplied
by the defendants did not infringe the claimant’s mark OXO as this was not use in the
course of trade). In RxWorks v Hunter it was suggested that ‘use in the course of trade’
involved use ‘in the course of a commercial activity with a view to gain and not as a
private matter’.

Use ‘in respect of’ goods and services

An example of what is not ‘in relation to’ can be found in Trebor Bassett Ltd v The Football
Association [1997] FSR 211. Here, a sweet manufacturer supplied ‘collectable’ cards
depicting members of the England football team in its packs of sweets. The defendant’s
trade mark (the famous ‘three lions’ badge) could just be made out in some of the
pictures. Rattee J held that such incidental use was not use in relation to the sweets:
the trade mark ‘just appeared’. Another example of use which was not ‘in relation
to’ the goods is C-2/00 Hölterhoff v Ulrich Freiesleben [2002] ECR I-4187, where the
claimant’s mark had been used by a customer when ordering the goods but not by the
retailer who had supplied them. By contrast, in Beautimatic International Ltd v Mitchell
International Pharmaceuticals Ltd [2000] FSR 267, it was held that use on invoices was ‘in
relation to’ the goods supplied. You may find it useful to reconsider the remarks of the
CJEU in C-206/01 Arsenal Football Club v Matthew Reed [2002] ECR I-10273. It was said in
that case that the national court should consider why the defendant made use of the
trade mark; in other words, it should ask whether the claimant’s trade mark was used
in order to help sell the defendant’s goods. This perhaps helps us to understand what
is meant by ‘in relation to’ (and at the same time points to misappropriation theory
rather than origin function as the basis of trade mark protection).

Consumer perception
Whether the fourth condition in Céline is met (i.e. that the defendant’s use affects the
functions of the trade mark) is assessed through the eyes of the consumer (you should
refer back to Chapter 12 for a discussion of the role of the average consumer in trade
mark law). In C-48/05 Adam Opel AG v Autec [2007] ECR I-1017 the question which the
CJEU had to determine was whether the claimant’s mark was infringed when it was
used by the defendant on toy cars. The Court’s response was to say that it all depended
on what the consumer thought: did they see the mark as indicating that the toys had
been made by the claimant or did they think that the trade mark was simply part of
the authentic appearance of the goods? If the consumer attached great importance
to the fidelity of the model car to the original, this would not undermine the function
of the trade mark. This is in contrast to the outcome in Arsenal, where the end user’s
perception was that the football club had guaranteed the origin of the merchandise.

One problem which has emerged recently has been the use of ‘adwords’ in internet
search engines such as Google. Such use involves a trader purchasing a search engine
keyword identical or similar to the claimant’s mark so that when the user of a website
types in the mark, a sponsored link is displayed which has nothing to do with the
claimant’s business. In C-236/08 to C/238/09 Google France v Louis Vuitton, it was held
that Google’s sale of its AdWords tool did not amount to use of third party trade
marks in the course of trade; it merely created the technical conditions necessary
for advertisers to use the marks. The position was different for advertisers. Where an
advertiser sponsored a keyword which was identical to a registered trade mark and
the advertisement resulting from the entry of the keyword as a search term appeared
immediately afterwards and in close proximity to the point where the search term
was entered, the display of the advertisement was liable to create the impression
that there was a material link between the advertiser’s goods or services and the
trade mark owner. This would amount to trade mark infringement since the ability of
the trade mark to distinguish the goods or services of one undertaking from those of
another would be undermined. However, it was for the national court to decide on the
facts of each individual case whether a trade mark’s distinguishing function had been
(or was likely to be) affected.
page 218 University of London
In C-558/08 Portakabin Ltd v Primakabin BV, the Court of Justice was asked to advise
on the liability of a company which had purchased ‘adwords’ from Google similar to
the claimant’s mark. The judgment repays careful study as the Court examines the
issue of trade mark use and the defences of descriptive use and exhaustion of rights
(the goods sold by the defendant were second hand). It repeats its earlier thinking
in cases such as Céline, namely whether there is ‘trade mark use’ depends entirely
on the perception of the average consumer and whether that person thinks that
there is an economic link between the advertiser and the trade mark proprietor. In
C-324/09 L’Oréal SA v eBay, CJEU, 12 July 2011, the Court ruled that the trade mark owner
is entitled to prevent an online marketplace operator (such as eBay) from advertising
goods by means of a sign selected in an internet referencing service where the
advertising does not enable the reasonably well-informed and observant internet
user to ascertain (or ascertain only with difficulty) whether the goods originate from
the trade mark owner or from a third party, but the operator of the marketplace does
not ‘use’ a sign which appears in offers for sale on its site. In C-323/09 Interflora Inc
v Marks & Spencer plc, CJEU, 22 September 2011, the Court ruled that the trade mark
owner is entitled to prevent a competitor from advertising goods by means of a sign
selected in an internet referencing service (such as the Google Adwords service) by
the competitor without the proprietor’s consent where that use is likely to have an
adverse effect on one of the functions of the trade mark. Such use is likely to affect
the origin function and/or the investment function but not the advertising function.
There is therefore likely to be infringement under both ss.10(1) and 10(3) TMA. For a
further interesting example of the application of the rules on trade mark infringement
in the context of online advertising, see Cosmetic Warriors Ltd & Lush Ltd v Amazon.
co.uk Ltd [2014] EWHC 181 (Ch). In Victoria Plum Ltd v Victorian Plumbing Ltd [2016] EWHC
2911 (Ch), Carr J considered a claim of infringement based on the defendant’s bid on
the claimant’s registered trade marks. It was held that the defendant’s advert did not
enable normally informed and reasonable internet users, or enabled them only with
difficulty, to ascertain whether the goods and/or services advertised originated from
the trade mark’s proprietor (or from a business that was economically linked to the
trade mark proprietor).

The context of use for trade mark infringement arose in Iconix v Dream Pairs [2023]
EWHC 706 (Ch). The case makes clear that the ‘local context’ of trade mark use is taken
into account regarding assessing the likelihood of confusion in infringement cases. In
Iconix, the company Dream Pairs sold football boots and trainers featuring a logo with
some similarity to the famous Umbro logo (a trade mark owned by Iconix). However, in
the context of the use on the Amazon marketplace, the High Court decided there was
no likelihood of confusion, due to a combination of the low level of similarity between
the logos and the particular context of the use on Amazon, where there was no use
of the name Umbro or any other connecting link. The subsequent lower court (IPEC)
decision in Prysmian Cables v M/S Apple [2023] EWHC 2176 (IPEC) followed this principle,
also finding no infringement in the context. The cases illustrate that a defendant
accused of infringement based on likelihood of confusion can avoid infringement via
the way and context in which it uses the mark.

Activity 13.2
u Read the rulings of the CJEU in Arsenal v Reed and Céline. Then write a concise
summary of what each says in respect of the issue of trade mark use.
No feedback provided.

13.3.2 The scope of protection

When applying the ‘triad of protection’ in s.10, you should remember the
recommended technique advocated in Chapter 12 in relation to s.5: the provisions
should be applied systematically in sequence (Reed Executive plc v Reed Business
Information Ltd [2004] RPC 7670). If you are unsure of the way in which the ‘triad of
protection’ fits together, go over your notes on the relative grounds for refusal from
Chapter 12 now.
Intellectual property 13 Trade mark infringement and defences page 219
Under s.10(1) to (3), the permutations are the same as under s.5(1) to (3). The only
difference between the two sets of provisions is that s.10 uses the word ‘sign’ whereas
s.5 uses the phrase ‘trade mark’. Please read ss.10(1), 10(2) and 10(3) now.

Identity
Under s.10(1), use in the course of trade of the identical sign in relation to the identical
goods or services will infringe the registered mark. For discussion of the relevant
terminology, see 12.4.3 above.

Similarity coupled with confusion

Under s.10(2), use in the course of trade of the same or similar sign in relation to the
same or similar goods or services will infringe the registered mark, provided that there
is a likelihood of confusion which includes a likelihood of association. For discussion of
the relevant terminology, see 12.4.3 above.

Dilution
Under s.10(3), use in trade of the identical or similar sign in relation to any goods or
services (remember, they need no longer be dissimilar) will infringe the registered
mark, provided the registered trade mark has acquired a reputation and the use of
the later mark without due cause would take unfair advantage of or be detrimental to
the distinctive character or repute of the earlier mark. For discussion of the relevant
terminology, see 12.4.3 above.

Activity 13.3
Summarise the criteria for infringement found respectively in s.10(1), 10(2) and 10(3)
of the TMA, giving appropriate authority on the interpretation of key words and
phrases.

13.4 General defences to infringement

Core text
¢ Bainbridge, Chapter 21 ‘The UK trade marks – rights, infringement, limitations
and defences, remedies and criminal offences’ pp.810–18.

¢ Bently et al., Chapter 41 ‘Trade mark defences’ Section 1 ‘Introduction’,

Section 2 ‘Use of registered mark’, Section 3 ‘Use of name or address’, Section 4
‘Descriptive use’.

¢ Cornish, Chapter 18 ‘Registered trade marks’ paras 18–110 to 18–112.

¢ Karapapa and McDonagh, Chapter 14 ‘Defences to trade mark infringement’

Sections 14.1 to 14.8.

Essential reading
¢ Trade Marks Directive, Article 6; TMA s.11.

¢ Cases: C-63/97 BMW v Deenik [1999] ECR I-905; C-100/02 Gerolsteiner Brunnen
GmbH v Putsch GmbH [2004] ECR I-691; AB Volvo v Heritage (Leicester) Ltd [2000]
FSR 253.

As indicated at the start of this chapter, a defendant to a trade mark infringement

action may wish to argue that the claimant has failed to establish all the ingredients
of the action. Alternatively, the defendant may wish to rely on one or more of the
defences found in the TMA.
page 220 University of London

13.4.1 Consent and non-trade mark use

First, two defences flow from the definition of infringement itself. A defendant may
claim that what has been done is with the consent of the registered proprietor
(consider the wording of s.9). An example can be found in Northern & Shell v Condé
Nast [1995] RPC 117, where it was held that one licensee of the trade mark could not
sue another, because the latter was using the mark with consent. The other defence
implicit in the definition of infringement is that of non-trade mark use. You should
refer back to the discussion of the CJEU’s rulings in Arsenal and Céline as to how the
issue of trade mark use is to be determined. ‘Trade mark use’ now has a much broader
meaning than before: at one time it would have sufficed, in order to raise the defence,
to argue that the mark had been used in a manner which did not indicate origin. Today
what must be asked is whether the defendant’s use undermines any of the functions
of the mark. This will, of necessity, involve an examination of all the surrounding
circumstances and take into account the views of the reasonable consumer of the
goods. If the action is brought under s.10(3), where what matters is the association
which the claimant’s mark produces in the mind of the customer.

13.4.2 Use of another registered mark

Section 11(1) provides that use of another registered mark will not infringe. The section
therefore contemplates that there will be two conflicting marks on the Register.
This may have come about because the owner of an earlier right did not oppose the
application for the junior mark or else the opposition was unsuccessful. It is, of course,
open to the owner of the senior mark, having sued for infringement and having been
met by this defence, to seek to have the junior mark declared invalid under s.47, on the
grounds that at the time of its registration, it breached the requirements of s.5. This
will be subject to the time limits imposed by s.48 (explained below).

The only qualification in s.11(1) is that the junior mark must have been used in the
form in which it is registered. An example of where this was not the case (so that the
defence failed) was Neutrogena v Golden Ltd t/a Laboratoires Garnier [1996] RPC 473,
where the defendant’s registered mark was NUTRALIA. However, what they had used
was NEUTRALIA, which Jacob J held was not sufficiently similar to the registered mark
(because of the different imagery created by the first syllables) for them to be able to
rely on the defence.

13.4.3 Protection for other traders

As a result of Article 6 of the Directive, there are three defences in s.11(2) which are
designed to provide protection for other traders. Each of these defences is qualified by
a proviso, explained below.

Defence of making use of own name and address

First, under s.11(2)(a), the defendant may plead that they were making use of their own
name or address. Two cases illustrate this, IBM Corporation v Web-Sphere Ltd [2004] FSR
796 (where the defence failed because of the proviso) and Reed Executive plc v Reed
Business Information Ltd [2004] RPC 767 (where it succeeded). Until recent amendment
of the Act under the Trade Mark Regulations 2018, a company could rely on this
defence where it was using its trading name rather than its registered name: Hotel
Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ 110. However, as a result of
a change brought about by the 2015 Trade Mark Directive, the ‘own-name’ defence
extends only to the use by an individual of his own name and address. Corporate
bodies are thus not able to rely on the provision as amended.

Defence of describing a characteristic of the goods

Under s.11(2)(b), a trader may make use of signs or indications that are not distinctive
or which concern the kind, quality, quantity, intended purpose, value, geographical
origin, the time of production of goods or of rendering of services, or other
characteristics of goods or services. Under this defence, a defendant may be able to
Intellectual property 13 Trade mark infringement and defences page 221
use the claimant’s mark in order to describe a characteristic of their own goods. Bently
et al. provide a good example of the potential application of this provision, stating that
the defence would apply ‘where, in the face of the trade mark Baby Dry registered for
diapers, a competitor advertises its own nappies with the slogan “guaranteed to keep
your baby dry”’ (p.1136).

Defence that trade mark indicates intended purposes

Finally, s.11(2)(c) creates a defence for use of the trade mark for the purpose of
identifying or referring to goods or services as those of the proprietor of that trade
mark, in particular where that use is necessary to indicate the intended purpose
of a product or service (particularly, as accessories or spare parts). As an example,
a manufacturer of automotive parts may wish to state that ‘these brake pads are
suitable for use on the following models of FORD cars’ or a garage may wish to
advertise that it specialises in servicing BMW cars. ‘Necessary’ in this context means
that there is no other way that the defendant can indicate to consumers that their
product is compatible with that of the claimant: C-228/03 The Gillette Company &
Gillette Group Finland Oy v LA-Laboratories Oy [2005] ECR I-2337.

Proviso to the defences

These three defences are qualified by a proviso, which declares that such use must be
in accordance with honest practices in industrial or commercial matters. The origin
of this phrase lies in Article 10bis of the Paris Convention where it forms the definition
of unfair competition. The proviso requires the court to consider the defendant’s
motives in making use of the registered mark and to examine all the surrounding
circumstances. Such an assessment is to be made objectively (Scandecor Development
AB v Scandecor Marketing AB [1998] FSR 500 (CA)).

Guidance on the interpretation of the proviso was given by the CJEU in C-63/97 BMW v
Deenik [1999] ECR I-905. The case also involved a discussion of the Article 7 exhaustion of
rights defence (discussed below). The Court said that although Article 6 of the Directive
entitled a trader to make use of another’s mark for the purposes of telling customers
that they could repair goods made by the trade mark owner, such use must not confuse
customers into thinking that the defendant’s business was linked to or approved by the
trade mark owner, nor must the descriptive use tarnish the image of the trade mark.
The Court added to this in C-100/02 Gerolsteiner Brunnen GmbH v Putsch GmbH [2004] ECR
I-691 where it declared that ‘the condition of honest practice constitutes in substance
the expression of a duty to act fairly in relation to the legitimate interests of the trade
mark owner’. Descriptive use was not the converse of trade mark use. Instead, every
case depended on its facts and it was up to the national court to see if the defendant
has acted fairly in relation to the interests of the trade mark owner. The Putsch case was
applied by the Court of Appeal in the Reed Executive decision.

The CJEU has since expanded this policy in C-228/03 The Gillette Company & Gillette
Group Finland Oy v LA-Laboratories Oy [2005] ECR I-2337. The Court said that use of the
claimant’s mark will not be in accordance with honest practices if:

u it gives the impression that there is a commercial connection between the

defendant and the trade mark owner

u it affects the value of the trade mark by taking unfair advantage of its distinctive
character or repute

u it discredits or denigrates the mark

u the defendant presents its product as an imitation or replica of the product

bearing the claimant’s mark.

Examples of the proviso being applied so as to remove the benefit of the s.11(2)
defences include AB Volvo v Heritage (Leicester) Ltd [2000] FSR 253 (where the style of
the defendant’s headed notepaper made customers think it was still an authorised
Volvo dealer) and IBM Corporation v Web-Sphere Ltd [2004] FSR 796 (where the own
name defence failed because of clear evidence that the defendant had changed its
page 222 University of London
company name immediately after the launch of the claimant’s product so as to take
advantage of its success). In Hasbro Inc v 123 Nahrmittel GmbH [2011] EWHC 199 (Ch),
the descriptive use defence failed because the defendant acted contrary to honest
practices in industrial and commercial matters.

With regard to the purchase from an internet search engine such as Google of a
competitor’s trade mark for use as an ‘adword’, the CJEU has indicated that the s.11(2)
defence is unlikely to be available, although it is for the national court to decide
whether such use was in accordance with honest practices: C-558/08 Portakabin Ltd v
Primakabin BV, CJEU, 8 July 2010.

13.4.4 Other defences

Under s.11(3) (based again on Article 6 of the Directive) there is a defence for the owner
of any prior right in a particular locality. A variant of this defence is common to all
registered intellectual property rights. The defendant is basically saying ‘I was here first’.

Last, under s.48 (derived from Article 9 of the Directive) there is the defence of
acquiescence in the use of the mark by the proprietor of another registered mark for
a period of five years. Please note the very limited effect of statutory acquiescence
(which is distinct from the general equitable defence of acquiescence). The statutory
defence only applies where both marks are registered and leads to stalemate, that is,
the marks are forced to coexist. Section 48 is linked to s.11(1), as both defences assume
that there are two conflicting marks on the register. You will need to remember this
when we look at invalidity at the end of this chapter.

There is no defence of ‘honest concurrent use’ under either the Trade Marks Directive.
However, according to Carr J in Victoria Plum Ltd v Victorian Plumbing Ltd [2016] EWHC
2911 (Ch), ‘any rational system of registered trade marks has to cater for the situation
where two traders have co-existed, using trade marks which have caused confusion,
for many years’. He noted that this had been confirmed by the CJEU in C-482/09
Budejovicky Budvar NP v Anheuser-Busch Inc [2012] RPC 11 and summarised the principles
arising from that, and subsequent, cases:

(i) Where two separate entities have co-existed for a long period, honestly using the
same or closely similar names, the inevitable confusion that arises may have to be
tolerated.

(ii) This will be the case where the trade mark serves to indicate the goods or services of
either of those entities, as opposed to one of them alone. In those circumstances, the
guarantee of origin of the claimant’s trade mark is not impaired by the defendant’s
use, because the trade mark does not denote the claimant alone.

(iv) However, the defendant must not take steps which exacerbate the level of confusion
beyond that which is inevitable and so encroach upon the claimant’s goodwill. ([74])

On the facts of Victoria Plum Ltd itself, the defendant could not take advantage of any
‘honest concurrent use’ principle because it had been using the claimant’s mark,
rather than its own mark, in bidding for keywords.

Activity 13.4
Read the ruling of the CJEU in BMW v Deenik. What does the Court say about the
protection afforded to other traders by Article 6 of the Trade Marks Directive?

13.5 Comparative advertising

Core text
¢ Bainbridge, Chapter 21 ‘The UK trade marks – rights, infringement, limitations
and defences, remedies and criminal offences’ pp.791–96.

¢ Bently et al., Chapter 41 ‘Trade mark defences’ Section 6 ‘Comparative

advertising’.
Intellectual property 13 Trade mark infringement and defences page 223
¢ Cornish, Chapter 18 ‘Registered trade marks’ paras 18–103 to 18–106.

¢ Karapapa and McDonagh, Chapter 14 ‘Defences to trade mark infringement’

Section 14.9.

Essential reading
¢ TMA, s.10(6); Directive 2006/114/EC of the European Parliament and of the
Council of 12 December 2006 concerning misleading advertising so as to include
comparative advertising [2006] OJ L 376/21.

¢ Case: C-533/06 O2 Holdings Ltd v Hutchinson 3G UK Ltd [2008] ECR I-4231.

Comparative advertising occurs when one trader compares its goods or services with
those offered by others. Such comparison will usually refer to differences in price,
quality or value. The comparison may be brand free (‘cheaper than all other washing
powders’) or may refer directly or indirectly to the trade mark of the competitor
(‘washes cleaner than PERSIL’). Different countries have adopted differing attitudes
to comparative advertising: some regard it as a form of free riding, that is, unfair
competition; others regard consumer information as paramount.

United Kingdom law underwent a change of policy in 1994. Under the Trade Marks Act
1938, comparative advertising was treated as trade mark infringement (Bismag Ltd v
Amblins (Chemists) Ltd (1940) 57 RPC 209, Chanel Ltd v Triton Packaging Ltd [1993] RPC 32)
and even, in some cases, trade libel (Compaq v Dell [1992] FSR 93). When the TMA was
introduced, it was decided that in the interests of consumer information, the law on
comparative advertising should be deregulated. At that point, s.10(6) (a home-grown
provision, which had no equivalent in the Directive) was introduced with a view to
providing a defence for those using a mark in comparative advertising, within certain
boundaries. The provision generated some interesting and controversial case law
and has now been repealed (see, for example, British Airways plc v Ryanair Ltd [2001]
FSR 541). The situation is now governed by a combination of rules deriving from the
Trade Mark Directive (as amended in 2015) and the Comparative Advertising Directive
(Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997
amending Directive 84/450/EEC concerning misleading advertising so as to include
comparative advertising [1997] OJ L 290/18, now consolidated as Directive 2006/114/EC
of the European Parliament and of the Council of 12 December 2006 [2006] OJ L 376/21
(hereafter ‘the CAD’)). This combination of rules provides that comparative advertising
is acceptable only if it:

u is not misleading

u compares goods or services meeting the same needs or intended for the same
purpose

u is objective and compares only material, relevant, verifiable and representative

features of goods and services, which may include price

u does not create confusion in the marketplace between the advertiser and a
competitor or between their trade marks

u does not discredit or denigrate the trade marks of a competitor

u does not take unfair advantage of the reputation of a trade mark.

The Directive was implemented in the UK by the Business Protection from Misleading
Marketing Regulations 2008 (SI 2008/1276). Enforcement is by way of complaint to the
regulatory authorities (e.g. the Advertising Standards Authority).

The combined effect of the Trade Marks Directive and the CAD were considered by the
CJEU in C-533/06 O2 Holdings Ltd v Hutchinson 3G Ltd [2008] ECR I-4231. In effect the Court
read the two directives together so that the use of a trade mark in accordance with
the stipulated conditions of the CAD will not be regarded as an infringement. The CAD
provides a defence in such circumstances. By contrast, following the revisions to the
Directive in 2015, the use of a registered trade mark in comparative advertising in a
manner that does not comply with the CAD will infringe the mark (see TMA, s.10(4)(e)).
page 224 University of London
In C-487/07 L’Oréal SA v Bellure NV, the Court of Justice indicated that the use of a mark
by an advertiser who implies that a marketed product is an imitation of a product
bearing a trade mark with a reputation presents ‘goods or services as imitations or
replicas’ within the meaning of Article 3a(1)(h) of the CAD and therefore falls outside
the scope of that Directive’s protection. The advantage gained by the advertiser as a
result of such unlawful comparative advertising is also to be considered to be unfair
within the meaning of Article 3a(1)(g) of the CAD.

Activity 13.5
Read the ruling of the CJEU in O2 Holdings Ltd v Hutchinson 3G Ltd. What does the
Court say about the relationship between comparative advertising and trade mark
infringement?

13.6 Exhaustion of rights

Core text
¢ Bainbridge, Chapter 21 ‘The UK’ pp.818–20.

¢ Bently et al., Chapter 41 ‘Trade mark defences’ Section 7 ‘Local use’, Section 8
‘Exhaustion’, Section 9 ‘Freedom of expression’.

¢ Cornish, Chapter 18 ‘Registered trade marks’ paras 18–113 to 18–114; 18–119 to

18–122; Chapter 1 ‘Starting points’ paras 1–049 to 1–059.

¢ Karapapa and McDonagh, Chapter 14 ‘Defences to trade mark infringement’

Section 14.10.

Essential reading
¢ Article 7 Trade Marks Directive; s.12 TMA.

¢ Cases: 15 and 16/74 Centrafarm v Sterling Drug, Centrafarm v Winthrop [1974] ECR
1147, 1183; C-337/95 Parfums Christian Dior v Evora BV [1997] ECR I-6013; C-349/95
Frits Loendersloot v George Ballantine & Sons Ltd [1997] ECR I-6227; C-414/99 Zino
Davidoff SA v A & G Imports Ltd [2001] ECR I-8691; C-143/00 Boehringer Ingelheim,
Glaxo Group and others v Swingward Ltd and Dowelhurst [2002] ECR I-3759
(‘Boehringer I’); C-16/03 Peak Holding AB v Axolin-Elinor AB [2004] ECR I-11313;
C-348/04 Boehringer Ingelheim v Swingward Ltd and Dowelhurst [2007] ECR I-3391
(‘Boehringer II’).

13.6.1 The origin of the doctrine of exhaustion

Exhaustion of rights as a defence to trade mark infringement will arise in one specific
case, namely where goods have been imported into the UK (remember, importation is
a category of infringing act). The defence will be available either to the importer or to
anyone who subsequently deals with the imported goods. There are similar provisions
in respect of patents, copyright and designs, but most of the case law involves trade
marks. The doctrine of exhaustion arose because the CJEU had to reconcile the
territorial effect of intellectual property rights with the concept of the internal market
as established under the Treaty of Rome (now called, after the Treaty of Lisbon, the
Treaty on the Functioning of the European Union (TFEU)) (refer to Chapter 2 for an
explanation of the territorial nature of intellectual property rights). The Court has had
to strike a balance between the rights of the registered proprietor to keep imported
goods out of the territory where the trade mark was registered and the interests of
importers and consumers in the free movement of goods. The extensive case law of the
CJEU in interpreting Articles 34 and 36 TFEU (formerly Articles 28 and 30 EC) has been
transposed into Article 7 of the Directive (s.12 of the TMA). There are similarly worded
provisions in all the major harmonisation directives (such as the Computer Programs
Directive, Rental Rights Directive, Biotechnological Patents Directive and the Database
Directive). Somewhat surprisingly, the position on exhaustion of rights described here
is retained (see Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019;
see Section 3.3.3).
Intellectual property 13 Trade mark infringement and defences page 225
The balance of interests described here is best understood by contrasting the
intellectual property owner’s rights in the case of infringing and parallel imports. The
difference between parallel and infringing imports is essentially a question of fact,
requiring the following question to be answered: ‘Who first put these goods into
circulation in the EEA?’ If first marketing was by the intellectual property owner or
another person acting with their consent (e.g. a subsidiary, licensee or distributor)
then those goods are parallel imports and intellectual property rights in the Member
State of import cannot be used to object to further dealings in those goods (subject
to the case law on repackaging, rebranding and relabelling, discussed further below).
Such objection is ‘a disguised restriction on trade’ within the second sentence of
Article 36 TFEU. The intellectual property rights are said to be exhausted. If the goods
were first marketed by an unconnected third party (a competitor or counterfeiter)
then the intellectual property owner can always rely on national rights to prevent
their importation and sale.

However, there is no international doctrine of exhaustion of rights, so that if goods are

first put on the market outside the EEA, national intellectual property rights may be used
to prevent their importation and sale. This means that a further preliminary question
needs to be put: ‘Where were these goods first put on the market?’

In applying the first and second sentences of Article 36 TFEU, the Court has resorted to
three particular arguments which you will come across in the cases, namely:

u the difference between the ‘existence’ and ‘exercise’ of intellectual property rights

u the ‘specific subject matter’ of intellectual property

u the ‘essential function’ of each type of intellectual property.

None of these arguments is entirely transparent, but ultimately each is concerned with
whether the intellectual property owner is attempting to prevent the importation of
parallel or infringing goods.

13.6.2 The case law of the Court: parallel imports from within the
European Economic Area
Early cases on exhaustion of rights were obliged to use the competition law provisions
in Articles 81 and 82 of the Treaty of Rome (now Articles 101 and 102 TFEU), because
the provisions on free movement of goods had a lengthy transitional period. In Cases
56 and 58/64 Consten & Grundig v Commission [1966] ECR 299, the CJEU ruled that a
distribution agreement which sought to confer territorial protection on the exclusive
licensee of a trade mark was an abusive exercise of the intellectual property right. By
contrast, in Case 24/67 Parke Davis v Probel [1968] ECR 55 it stated that mere ownership
of an intellectual property right was not an abuse of a dominant position.

Once the free movement of goods provisions were fully in force, the CJEU rapidly
established its thinking on exhaustion of rights. In Case 78/70 Deutsche Grammophon
v Metro-SB-Grossmärkte [1971] ECR 487 it held that the owner of copyright in sound
recordings could not object to the sale in Germany of cheaper copies of the recordings
acquired from its French distributor. The wrongful exercise of its right was a disguised
restriction on trade. In Cases 15 and 16/74 Centrafarm v Sterling Drug, Centrafarm v
Winthrop [1974] ECR 1147, 1183, it held that the owners of patents and trade marks for
medical products could not prevent the defendant from acquiring the drugs cheaply in
the UK and reselling them in the Netherlands. The goods had been put on the market
within the EU with the consent of the intellectual property owner. The specific subject
matter of the patent and trade mark right was to put goods in circulation for the first
time. Once goods had been sold with consent (and the consent of one member of the
corporate group bound all the other members), the right was exhausted.

What does ‘put on the market’ within the European Economic Area mean?
The meaning of the phrase ‘put on the market within the [EEA]’ was considered by the
CJEU in C-16/03 Peak Holding AB v Axolin-Elinor AB [2004] ECR I-11313. The phrase requires
that goods have been sold, either to members of the public or to another trader who
page 226 University of London
has the power of disposal over them. Where goods have been kept in a warehouse by
the trade mark owner, or displayed in a shop without being sold, then they have not
been ‘put on the market’. However, if they have been supplied to another trader, then
even if there is a clause in the contract of sale prohibiting that trader from reselling
within the EU, the goods have been ‘put on the market’ and the doctrine of exhaustion
applies. The trade mark owner cannot prevent the other trader from reselling the
goods, although the act of resale might be a breach of contract. Hence in C-405/03
Class International BV v Colgate Palmolive [2005] ECR I-8735 it was held that goods had
not been imported into the EU where they were placed in a transit warehouse for
onward transmission to another non-EEA state. The IP owner could not object to their
storage. However, the CJEU has now said that where goods such as ‘perfume testers’
are supplied without transfer of ownership and with a prohibition on their resale,
they have not been ‘put on the market’ for the purposes of Article 7: Case 127/09
Coty Prestige Lancaster Group GmbH v Simex Trading AG, CJEU, 3 June 2010. In C-324/09
L’Oréal SA v eBay, CJEU, 12 July 2011, the Court repeated what it had said in the Coty case,
namely that perfume samples supplied to retailers had not been put on the market
when it had been made clear that they were not for resale. The case also makes clear
that the removal of packaging from imported products is equivalent to repackaging
and therefore makes the importer an infringer.

13.6.3 Exceptions to exhaustion

Repackaging, rebranding, relabelling and over-stickering of goods

Where an importer decides to repackage, rebrand, relabel or over-sticker trade
marked goods (usually so that they can be resold more easily to consumers in another
Member State) such conduct is prima facie infringement (over-stickering involves
putting sticky labels over the existing packaging as an inexpensive way of hiding the
original instructions which were probably in a different language). The trade mark
owner can oppose importation under Article 7(2) of the Directive (s.12(2) of the TMA)
unless the parallel importer can satisfy the cumulative guidelines established by the
Court. The principles apply to each type of conduct: C-143/00 Boehringer Ingelheim v
Swingward Ltd and Dowelhurst [2002] ECR I-3759 (‘Boehringer I’), C-348/04 Boehringer
Ingelheim v Swingward Ltd and Dowelhurst [2007] ECR I-3391 (‘Boehringer II’).

Repackaging
The first guidelines for the parallel importer who wishes to repackage goods were
set out by the CJEU in Case 102/77 Hoffmann-La Roche v Centrafarm [1978] ECR 1139.
Repackaging is trade mark infringement unless:

u the trade mark owner’s conduct (objectively) partitioned the market

u the importer indicates that the goods have been repackaged

u notice is given to the trade mark owner

u the repackaging does not affect the condition of the goods (‘physical impairment’).

An example of conduct which partitions the market would be selling identical goods
in different coloured boxes in different Member States.

Rebranding
Where goods are rebranded (that is, the importer changes the trade mark from that
used by the trade mark owner in the Member State of export to that used in the
Member State of import) this too amounts to trade mark infringement. The CJEU
originally ruled that the importer must show that the trade mark owner intended
to partition the market by having separate trade marks for different Member States:
Case 3/78 Centrafarm v American Home Products [1978] ECR 1823. It has since made clear
that whether the trade mark owner’s conduct partitioned the market is an issue to be
decided objectively without reference to intention: C-379/97 Pharmacia & Upjohn SA v
Paranova A/S (‘Paranova II’) [1999] ECR I-6927.
Intellectual property 13 Trade mark infringement and defences page 227
Relabelling
Where the importer removes labels affixed to goods and replaces them with other
labels, this too is trade mark infringement (C-349/95 Frits Loendersloot v George
Ballantine & Sons Ltd [1997] ECR I-6227). Labels often contain identification numbers to
enable the manufacturer to recall products under food safety laws. Reliance on these
numbers for other purposes (identifying customers who indulge in parallel importing
or to prevent counterfeiting) does not cause artificial partitioning of the market.

The Hoffmann-La Roche guidelines were added to by the CJEU in C-427/93 Bristol-Myers
Squibb v Paranova, C-71/94 Eurim-Pharm v Beiersdorf and C-232/94 MPA Pharma v Rhône-
Poulenc (‘Paranova I’) [1996] ECR I-3457. The Court said that samples must be supplied
if demanded and that the repackaging must not be untidy, of poor quality or likely to
injure the reputation of the mark (‘mental impairment’). The last of the guidelines for
the parallel importer was established in C-379/97 Pharmacia & Upjohn SA v Paranova
A/S (‘Paranova II’) [1999] ECR I-6927. Here the CJEU stated that the repackaging must be
objectively necessary to enable the importer to have access to the market.

United Kingdom courts have been reluctant to accept the argument in Paranova I that
there can be harm to a trade mark in the form of ‘mental impairment’ if repackaging is
of poor quality (see the remarks of Laddie J in Zino Davidoff SA v A&G Imports Ltd [1999]
2 CMLR 1056 and Glaxo Group Ltd v Dowelhurst Ltd (No 2) [2000] 2 CMLR 571). However,
Advocate General Jacobs advised the CJEU that it should confirm all its previous case
law in ‘Boehringer I’. This the CJEU did. Since then, the matter has come before the CJEU
again in ‘Boehringer II’ where the Court saw fit to restate the principles applicable to
repackaging, etc. by declaring that under Article 7(2) of the Directive, a trade mark
owner may legitimately oppose the further marketing of a repackaged/relabelled/
over-stickered pharmaceutical product unless:

u as a result of the trade mark owner’s conduct partitioning the market artificially,
repackaging/relabelling/over-stickering by the importer is necessary for market access

u the repackaging/relabelling/over-stickering does not affect the original condition

of the product

u the new packaging/relabelling/over-stickering, etc. clearly states who repackaged/

relabelled/over-stickered the product and the name of the manufacturer

u the presentation of the repackaged/relabelled/over-stickered product is not such

as to be liable to damage the reputation of the trade mark and of its owner

u the importer gives notice to the trade mark owner before the repackaged/
relabelled/over-stickered product is put on sale and, on demand, supplies a
specimen of the repackaged/relabelled/over-stickered product.

You should read the Court’s ruling in ‘Boehringer II’ carefully and note what was said
about:

u when there is necessity to repackage, etc.

u the meaning of ‘liable to damage the reputation of the trade mark and of its owner’
(i.e. ‘mental impairment’)

u the requirement of notice

u the giving of samples (a point explained further by the Court in C-276/05 The
Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH, CJEU, 22
December 2008)

u the burden of proof.

In C-46/10 Viking Gas A/S v BP Gas A/S, 14 July 2011 the CJEU ruled that refilling containers
(in this case, gas canisters) after they had been imported and resold did not amount to
infringement.

Advertising and after-sales service

Once goods have been imported, then they are likely to be dealt with by others,
normally by resale. Those who subsequently deal in imported goods can also rely on
page 228 University of London
the doctrine of exhaustion (otherwise the doctrine would be meaningless). However,
in reselling or repairing the goods the third party must take care not to cause mental
impairment by tarnishing the ‘aura of luxury’ associated with the product (C-337/95
Parfums Christian Dior SA and Parfums Christian Dior BV v Evora BV [1997] ECR I-6013 and
C-63/97 BMW v Deenik [1999] ECR I-905).

Assignment and licensing of intellectual property rights

With regard to the transfer of ownership of a trade mark, initially the CJEU ‘got it
wrong’ by treating an assignment as having continuing effect (and thereby treating
an assignment as if it were a licence) (Case 40/70 Sirena v Eda [1971] ECR 69). This
meant that goods coming from the new owner of the mark in Member State A could
not be kept out of Member State B by the original owner, even though there was
no connection between the old and new owner, and even though the change of
ownership occurred many years previously. The Court went to extreme lengths in
Case 192/73 Van Zuylen Frères v Hag AG (‘Hag I’) [1974] ECR 731 where it held that even
an involuntary change of ownership (by government expropriation at the end of the
Second World War) did not break the link between the original owner and the trade
mark. This was because of the Court’s obsession with the common (historical) origin of
the trade mark rather than the common origin of the goods.

The change of thinking began in Case 19/84 Pharmon v Hoechst [1985] ECR 2281. Here
the CJEU held that where a patent had been the subject of a compulsory licence in the
Member State of export, the patentee in the Member State of import could object to
the imported patented product. The patentee had not consented to the marketing of
the goods. In due course, the CJEU reconsidered its thinking with regard to involuntary
assignments in C-10/89 SA CNL-Sucal NV v Hag GF AG (‘Hag II’) [1990] ECR I-3711 (which
reversed ‘Hag I’); and voluntary assignments in C-9/93 IHT Internationale Heiztechnik
GmbH v Ideal-Standard GmbH [1994] ECR I-2789 (which reversed Sirena).

The effect of these cases can be summarised thus.

u The treatment of trade marks which have been assigned and those which have
been licensed is different, so that imports from an assignee can be stopped, while
imports from a licensee cannot.

u It is now clear that exhaustion of rights depends entirely on the issue of consent to
marketing. Consent is an EU law concept.

However, the Court has now said that consent may be treated as having been
withdrawn where the licensee breaches quality control provisions in the licence:
C-59/08 Copad SA v Christian Dior Couture SA, CJEU, 23 April 2009. Copad is a significant
case for a number of different reasons. It strengthens the argument that the trade
mark acts as a guarantee of quality; it emphasises the importance of quality control
provisions in a trade mark licence and makes clear that a licensee who breaches these
will be liable for trade mark infringement, not just breach of contract; that where
there is breach of quality control provisions in a licence, the goods will have been put
on the market without consent so that Article 7(1) does not apply; and that even if
selling to a prohibited retailer does not affect the condition of the goods, it may still
give the trade mark owner the right to oppose further commercialisation under Article
7(2) because of damage to the mark.

13.6.4 Parallel imports from outside the European Economic Area

Prior to the passing of the various harmonisation directives, the rule was that where
goods were first marketed in a non-EEA Contracting State, EU law had no application
and it was up to the law of the Member State of import to decide whether the
imports could be stopped (Case 51/75 EMI v CBS [1976] ECR 811) unless the trade mark
owner subsequently consented to their importation into the EEA (C-352/95 Phytheron
International SA v Jean Bourdon SA [1997] ECR I-1729). Some Member States recognised
national exhaustion of rights only (so that parallel imports could always be stopped),
others adopted a doctrine of international exhaustion of rights. The UK applied
Intellectual property 13 Trade mark infringement and defences page 229
international exhaustion in relation to trade marks (Revlon Inc v Cripps & Lee Ltd [1980]
FSR 87) unless the quality of the goods as sold in the country of export and the UK
differed so that there would be customer confusion (Colgate-Palmolive v Markwell
Finance [1989] RPC 497).

Following the enactment of the Trade Marks Directive, the key question was whether
Article 7 removed the discretion left to Member States by the ruling in EMI v CBS to
deal with parallel imports from non-EEA Member States in accordance with their
own national laws. If (as was logical) Member States no longer had any discretion,
but had to apply a single EU rule, should the EU impose a doctrine of international
exhaustion or only EU-wide exhaustion of rights? Controversially, the CJEU ruled that
there should be no doctrine of international exhaustion. Instead, EU Member States
had to apply intra-EU exhaustion of rights: C-355/96 Silhouette International Schmied
GmbH v Hartlauer Handelsgesellschaft mbH [1998] ECR I-4799. Further, there was to be
no doctrine of implied consent, so the fact that the trade mark owner had previously
agreed to the importation of goods from a non-EEA state could have no bearing on
whether there was consent to the present consignment of goods (C-173/98 Sebago
Inc & SA Ancienne Maison Dubois v SA G-B Unic [1999] ECR I-4103). In relation to each
consignment of goods produced by the trade mark owner, it should be asked whether
these goods have been ‘put on the market’ with consent: C-16/03 Peak Holding AB v
Axolin-Elinor AB [2004] ECR I-11313.

The CJEU’s decision in Silhouette was critically received because it contradicted the
origin function of trade marks. Why should a trade mark owner be able to object
to goods they have placed in circulation in Singapore or the USA when they cannot
object (subject to the repackaging rules) to goods they have placed in circulation
somewhere in the EEA (Zino Davidoff SA v A&G Imports Ltd [1999] 2 CMLR 1056 (Laddie
J))? However, the CJEU has very firmly restated the position that there should be no
international exhaustion of rights in EU law. In C-414/99 Zino Davidoff SA v A&G Imports
Ltd, C-415/99 and C-416/99 Levi Strauss & Co v Tesco Stores and Costco Wholesale UK Ltd
[2001] ECR I-8691 the Court was asked to rule on how consent to first marketing was
to be determined in the case of parallel imports coming from outside the EEA. Despite
Laddie J’s grave doubts about the compatibility of Silhouette with the origin function of
trade marks, the Court made the following points in its ruling:

u First marketing outside the EEA does not exhaust the trade mark owner’s rights.

u ‘Consent’ has to be an EU concept and, because of the wording of Article 5 of the

Trade Marks Directive, is a decisive factor.

u Articles 5 to 7 of the Trade Marks Directive are a complete harmonisation of the

owner’s rights.

u Consent must be so expressed that an intention to renounce Article 5 rights must

be unequivocally demonstrated. This will normally be by an express statement. It
may be implied but the facts must unequivocally demonstrate that the trade mark
owner has renounced their right to oppose the placing of the goods on the market
within the EEA.

u Consent may not be implied from the fact that the trade mark owner has not
communicated to all subsequent purchasers their opposition to the goods being
marketed in the EEA, from the fact that a warning notice was not placed on the
goods, from the absence of appropriate contractual reservations in any agreement
transferring ownership of the goods, nor from the owner’s silence.

u The onus of proof is on the importer to show consent, not on the trade mark owner
to show lack of consent.

u It is irrelevant that retailers/wholesalers did not pass on the trade mark owner’s
reservations.

Many writers have called for the decision in Davidoff to be reversed. Post-Brexit, the UK
will have the opportunity to choose a policy position on this issue. Initially, however,
the status quo prevails.
page 230 University of London

Activities 13.6 and 13.7

13.6 Reread the rulings of the CJEU in ‘Boehringer I’ and ‘Boehringer II’. Then
summarise the rules with which a parallel importer must comply if they wish to
repackage, rebrand or relabel trade marked goods.

13.7 Reread the ruling of the CJEU in Zino Davidoff SA v A&G Imports Ltd. Then
summarise what the Court says about the issue of consent in relation to the
parallel importation of non-EEA goods.

No feedback provided to 13.7.

13.7 Revocation and invalidity

Core text
¢ Bainbridge, Chapter 20 ‘The trade marks – registrability, surrender, revocation,
and invalidity, property rights and registration’ pp.755–63.

¢ Bently et al., Chapter 39 ‘Revocation’.

¢ Cornish, Chapter 18 ‘Registered trade marks’ paras 18–068 to 18–081.

¢ Karapapa and McDonagh, Chapter 13 ‘Infringement and loss of registration of

trade marks’ Section 13.5.

Essential reading
¢ TMA ss.46 and 47.

¢ Cases: C-40/01 Ansul BV v Ajax Brandbeveiliging BV [2003] ECR I-2439; La Mer

Technology Inc v Laboratoires Goemar SA [2006] FSR 49; C-371/02 Björnekulla
Fruktindustrier AB v Procordia Food AB [2004] ECR I-5791.

13.7.1 Revocation
An application to revoke a registered trade mark can be brought by any person:
there is no requirement of locus standi. The application can be made directly to the
Trade Marks Registry or it can be raised by way of a counterclaim in opposition or by
infringement proceedings. Revocation is essentially concerned with the failure of
the trade mark owner to look after the trade mark since it was registered. For this
reason, the effect of a successful application for revocation is that the mark is removed
from the register for the future unless the tribunal directs otherwise. In the context
of an infringement action, revocation of the claimant’s mark will not exonerate the
defendant from past acts of infringement, although it will enable the defendant to
continue using their sign in the future.

Grounds of revocation in s.46

The grounds of revocation are listed in s.46 and comprise four aspects of
mismanagement of a mark.

Non-use of the mark

The first two are related but distinct, and comprise five years’ non-use of the trade
mark since it was first entered on the Register (s.46(1)(a)) and any continuous five
year period of non-use (s.46(1)(b)). If you don’t use it, you lose it! The policy behind
revocation for non-use (as stated in Imperial Group v Philip Morris [1982] FSR 72) is that
the Register should be an accurate reflection of marks currently in use. To ‘stockpile’
marks in case of possible future need or to register a mark as a pre-emptive strike
against a competitor is contrary to this policy.

In regard to s.46(1)(a), the five-year period runs from the date the registration process
is completed, not the date of application (BON MATIN Trade Mark [1989] RPC 537).
Intellectual property 13 Trade mark infringement and defences page 231
Promotional use
In C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH, CJEU, 15 January 2009, the
CJEU ruled that there had not been genuine use of the trade mark (WELLNESS for
drinks) where the proprietor had affixed it to bottles of alcohol-free drinks which it
then gave away free to customers who bought items of clothing sold under the same
mark. The drinks mark (as opposed to the clothing mark) had been correctly revoked
for non-use. In this area, just as in other areas of trade mark law, the views of the
consumer will be relevant.

Genuine use is required

Section 46(1)(a) and (b) require the proprietor to make ‘genuine’ use of the mark. Use
is ‘genuine’, according to the CJEU in C-40/01 Ansul BV v Ajax Brandbeveiliging BV [2003]
ECR I-2439, where the mark is used in accordance with its essential function (consider
again the CJEU’s earlier remarks in Arsenal). In other words, the mark must guarantee
the identity of the origin of the goods or services for which it is registered, in order to
create or preserve an outlet for those goods or services. Genuine use does not include
token use for the sole purpose of preserving the rights conferred by the mark. When
assessing whether use of the trade mark is genuine, regard must be had to all the
facts and circumstances, particularly whether other traders would regard the use as
justified to maintain or create a share in the market for the goods or services protected
by the mark. The court should also consider the nature of those goods or services, the
characteristics of the market and the scale and frequency of use of the mark.

In Ansul itself (which concerned the activities of the trade mark owner supplying parts
and extinguishing substances to maintain fire-extinguishers which it had previously
sold), the CJEU added that the fact that a mark is not used for goods newly available on
the market but for goods that were sold in the past does not mean that its use is not
genuine. It suffices if the proprietor makes actual use of the same mark for component
parts that are integral to the make-up or structure of such goods or for goods or
services directly connected with the goods previously sold and intended to meet the
needs of customers of those goods.

In applying Ansul, the court will need to take account of all the circumstances of the
case. The size of the trade mark owner’s business will be relevant (POLICE Trade Mark
[2004] RPC 693) as will the nature of that business. In the case of a voluntary, non-profit
organisation, using the mark on headed paper may suffice: C-442/07 Verein Radetzky-
Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’, CJEU, 9 December
2008. What is clear, however, is that it is the quality not the quantity of use which
matters: in Laboratoires Goëmar SA v La Mer Technology Inc [2006] FSR 49 the Court of
Appeal held that although the volume of sales had been small (only £800 worth had
been despatched to one intermediary who had then gone into liquidation) and had
not been to members of the public, the transactions in question had been at arm’s
length so that title to the goods had been transferred. That transfer of title had been
with a view to creating a retail outlet for the goods.

In C-720/18 Ferrari SpA v DU, the Court of Justice considered the application of these
provisions in relation to the use of a mark registered in respect of motor vehicles,
which had been used in connection with the resale of used vehicles bearing that mark.
As noted above, in C-40/01 Ansul BV v Ajax Brandbeveligung BV, the CJEU had already
provided important guidance on the interpretation of these provisions, holding that
there will be ‘genuine use’ of a mark where the mark is used in accordance with its
genuine function, in order to create or preserve an outlet for the goods or service at
issue. Genuine use does not include token use for the sole purpose of preserving the
rights conferred by the mark. In assessing whether use was genuine, regard was to be
had to:

all the facts and circumstances relevant to establishing whether the commercial
exploitation of the mark is real, particularly whether such use is viewed as warranted
in the economic sector concerned to maintain or create a share in the market for the
goods or services protected by the mark, the nature of those goods or services, the
characteristics of the market and the scale and frequency of use of the mark. (Ferrari SpA
[33])
page 232 University of London
In Ferrari SpA, the Court held that, while the simple resale of a used vehicle bearing
a mark would not constitute genuine use for the purpose of this provision, the use
of the mark in connection with resale of used motor vehicles bearing the mark was
capable of constituting genuine use.

Justifying non-use
Under s.46(1)(a) or (b), the proprietor can prevent revocation by showing that there
existed proper reasons for non-use, that is, obstacles arising independently of the
will of the proprietor: MAGIC BALL Trade Mark [2000] RPC 439. According to the CJEU in
C-246/05 Armin Häupl v Lidl Stiftung & Co KG [2007] ECR I-4673 the obstacles to non-use
must have a direct relationship with the trade mark such that its use is impossible or
unreasonable and that these must be independent of the will of the proprietor.

Alternatively, the proprietor can show that the mark has been used in a form differing
in elements which do not affect the distinctive character of the mark. This alternative
argument against revocation is very narrow, so that using NEUTRALIA when what
was registered was NUTRALIA did not suffice (Neutrogena v Golden Ltd t/a Laboratoires
Garnier [1996] RPC 473) and using similar but different cartoon drawings of penguins
than those which were registered did not prevent revocation (United Biscuits (UK)
Ltd v Asda Stores Ltd [1997] RPC 513). Using VENICE SIMPLON ORIENT EXPRESS differed
significantly from the registered mark (ORIENT EXPRESS) so that the owner could not
rely on s.46(2): ORIENT EXPRESS Trade Mark, Appointed Person, 31 October 2008.

When the mark has become a common name in the trade

Under s.46(1)(c) a registered trade mark will be revoked if, in consequence of the
acts or inactivity of the proprietor, the mark has become the common name in the
trade for the product or service for which it is registered. In other words, the mark has
become generic – the name of the product itself. Consider, as an example, the name
ASPIRIN. Originally this was a registered trade mark of Bayer AG but is now the name
for a painkiller. Whether the mark has become the common name in the trade for the
product is assessed through the eyes of the average consumer (i.e. the same test as is
used under s.3): C-371/02 Björnekulla Fruktindustrier AB v Procordia Food AB [2004] ECR
I-5791.

Marks liable to mislead the public

Under s.46(1)(d), the last ground of revocation is that in consequence of the use
made of it by the proprietor, the mark is liable to mislead the public. This provision
is a mirror image of the absolute ground in s.3(3)(b) TMA (see Chapter 12). In C-259/04
Elizabeth Emanuel v Continental Shelf [2006] ECR I-3089 (discussed in detail in Chapter
12) the Court ruled that the mark must be inherently deceptive. Although a consumer
might be influenced by the name ‘Elizabeth Emanuel’ when buying a garment, the
characteristics and qualities of that garment remained guaranteed by the business
which owned the mark. Therefore the name itself could not be regarded as being of
such a nature as to deceive the public.

Revocation may be total or partial as to some of the statement of goods and services:
David West t/a Eastenders v Fuller Smith & Turner plc [2003] FSR 816 (the description
‘beers’ was too wide when what had been sold was ‘bitter’). (Bitter is a traditional
British beer, less fizzy and mid-brown in colour. Hops are added to the brew to make it
bitter-tasting.) Where there is to be partial revocation, the views of the consumer as to
how the mark has actually been used will be taken into account: Thomson Holidays Ltd v
Norwegian Cruise Lines Ltd [2003] RPC 586.

13.7.2 Invalidity
An application to have a registered trade mark declared invalid can be brought by any
person: there is no requirement as to locus standi. The application can be made directly
to the Trade Marks Registry or it can be raised by way of a counterclaim in opposition
or infringement proceedings. A declaration of invalidity is based on the simple premise
that the trade mark was registered in error. The effect of a successful application for a
Intellectual property 13 Trade mark infringement and defences page 233
declaration of invalidity is that the mark is removed from the register retrospectively,
that is, from the date of the original registration. In contrast to revocation, this will
exonerate the defendant from past acts of infringement, and consequently is a much
more effective tactic to pursue. Like revocation, invalidity may be total or partial.

The grounds on which a trade mark can be declared invalid are set out in s.47(1). The
subsection covers two things: first, that the mark was registered in breach of s.3.
However, under the proviso to s.47(1) (which equates to the proviso to s.3(1) – see
Chapter 12), where the mark was registered in breach of s.3(1)(b), (c) or (d), the plea of
invalidity may be overcome where the mark has acquired factual distinctiveness since
the date of registration. You should compare the proviso to s.3(1) with the proviso
to s.47(1). The former requires that factual distinctiveness be acquired by use before
the date of application to register the trade mark. The latter requires that factual
distinctiveness be acquired by use between the date of registration and the date
of the application for the declaration of invalidity. Apart from this, the effect of the
two provisos is the same. The evidence required under s.47(1) will presumably have to
comply with the criteria in Windsurfing Chiemsee explained in Chapter 12.

The second ground of invalidity is that the mark was registered in breach of s.5, unless
the owner of the prior right consented. However, and in contrast to challenge under
s.3, the standing to seek a declaration of invalidity under s.5 is much more constrained.
Under the Trade Marks (Relative Grounds) Order 2007 (SI 2007/1976), only the owner
of the earlier right can bring an action under s.5; and the Trade Marks (Proof of Use)
Regulations 2004 (SI 2004/946) require such an action to be brought within five years
of the registration of the junior mark. Therefore, while it is not fatal if the owner of the
earlier right fails to bring opposition proceedings or is unsuccessful in them, they must
nevertheless act within the time limits. No one else can challenge the mark for conflict
with earlier rights.

Activity 13.8
Go over the materials on loss of registration (13.7 above), then write a concise
summary dealing with:
u the difference between revocation and invalidity
u the grounds of revocation
u the grounds of invalidity
u whether there are any arguments which can be advanced by the trade mark
owner to overcome an application to revoke the trade mark
u whether there are any arguments which can be advanced by the trade mark
owner to overcome an application for a declaration of invalidity.
No feedback provided.

Sample examination questions

Question 1 ‘Brand owners are at a disadvantage as it is too difficult to demonstrate
trade mark infringement.’
Discuss.
Question 2 Jo Fancy is a highly successful DJ whose performances at night clubs
have attracted a huge following. In order to promote his name and image, Jo
registered the name FANCY as a trade mark in January 2000 in respect of baseball
caps, sweatshirts and T-shirts. These items are much in demand by Jo’s fans.
However, his extravagant lifestyle has resulted in stories about him often appearing
in the tabloid press.
Jo now seeks your advice about his chances of success were he to bring an action
either for trade mark infringement or passing off in respect of each of the following:
a. Fashion plc is selling jeans under the name FANCY PANTS.

b. Radio Grunge, which has acquired a reputation for promoting drugs and
violence among young people, has distributed advertising leaflets showing a
picture of Jo with the words ‘Fancy listening to our station?’ printed underneath.
page 234 University of London
c. Drinks Ltd is selling a variety of fruit flavoured spirits (targeted at the ‘youth’
market) under the name FANCY’S.

d. General Cosmetics plc is selling aftershave and shower gel labelled FANSEE.

Advise Jo.

Advice on answering the questions

Question 1 A good answer will cover the following points.

u Explain the issues which need to be established in a trade mark infringement action.

u Identify the relevant statutory provisions setting out the rights of the trade mark
owner.

u Explain the ‘triad of protection’ found in s.10(1), 10(2) and 10(3) of the TMA.

u Comment that the protection under s.10(1) is absolute, so that as long as it can
be shown that there is identity between the mark and the sign and as regards the
goods or services, the trade mark owner has nothing further to prove (LTJ).

u Comment that under s.10(2) the trade mark owner must prove likelihood of
confusion, a requirement highly dependent on the facts of the case because of the
interdependence of factors (Sabel, Canon and Lloyd should be used extensively as
authority).

u Comment that under s.10(3) the trade mark owner must show that all the factors
required by the section are established (except that ‘due cause’ must be shown
by the defendant). In particular, harm to the mark must be shown, being one of
the three types identified by the CJEU in Intel and Bellure (see the discussion of
these two cases in Chapter 12). The section is not intended to provide sweeping
protection for marks with a reputation, and success is dependent on the
appropriate facts being established (Pfizer, Premier Brands and DaimlerChrysler
should be used extensively as illustrations).

u Point out that even though the claimant proves all the elements of infringement,
the defendant can rely on a number of statutory defences, some of which are
designed to protect the interests of other traders.

u Point out that the claimant’s mark may be the subject of a counter-attack for
revocation or invalidity.

Question 2 In relation to trade mark infringement, the good answer will include the
following points.

u Identify the issues likely to be raised in an infringement action.

u Consider whether the trade mark is likely to be the subject of a counter-attack for
revocation (unlikely) or invalidity. It is the name of a celebrity (see ELVIS PRESLEY)
and it is a highly descriptive word in relation to the goods of the registration (see
BABY DRY and DOUBLEMINT). However, use since registration may have rendered the
mark factually distinctive under the guidelines in Windsurfing Chiemsee.

u Identify which infringing conduct has been committed by each of the four
defendants (this should not occupy more than a sentence or two of the answer).

u Apply the ‘triad of protection’ to each of the four defendants in turn, taking the
first three subsections of s.10 systematically (Reed Executive plc v Reed Business
Information Ltd). In (a), is the sign identical? Does ‘Pants’ have trade mark
significance (Reed) (arguably, yes) so as the sign is not identical (LTJ) consider s.10(2)
and all its elements applying Sabel, Canon and Lloyd. In (b), is this an identical
sign (again, Reed is useful here as this could be a case of the senior mark being
included in the junior sign and surrounded by non-trade mark matter)? However,
as the services are neither identical nor similar, Jo would have to rely on s.10(3).
Remember the composite requirements having an identical or similar mark, a
senior mark with a reputation, absence of due cause and causing harm to the
senior mark by one of the three means set out in s.10(3). In (c), would this be an
Intellectual property 13 Trade mark infringement and defences page 235
identical mark under LTJ (the mark plus an apostrophe ‘s’)? – but as the goods are
drinks for teenagers rather than clothing for teenagers, consider s.10(2) and 10(3)
as above. Would the consumer think that Jo had diversified his product line under
Canon? In (d), the sign is aurally but not visually identical, but anyway the goods
are not identical. Under s.10(2), applying Sabel, the marks are aurally identical,
but there is not visual or conceptual similarity. Would the goods be regarded
as complementary (consider how many fashion houses also sell perfumes and
vice versa). Would consumers think there had been diversification (i.e. indirect
confusion under Canon)?

u Consider whether any of the defendants can argue that trade mark infringement
has not been established or rely on any of the statutory defences. The only
defendant likely to have a defence is the radio station: could they argue that this is
not ‘trade mark use’? Consider Arsenal and Céline here.

In respect of passing off, the good answer will set out the ‘classic trinity’ of passing off
from JIF LEMON and then proceed to apply each element to the facts of the question.
Does Jo have goodwill to protect as a result of a reputation? Consider whether in each
part there has been a misrepresentation and whether Jo is likely to sustain damage to
goodwill. In (b) in particular, consider the implications of Irvine v Talksport (which you
studied in Chapter 2) and its recognition that celebrities have merchandising rights to
protect, so that there might be a misrepresentation as to endorsement and therefore
a loss of opportunity to license.
page 236 University of London

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.

Tick a box for each topic. Ready to Need to Need to

move on revise first study again

I can summarise the issues which are likely to be

raised in an infringement action.   

I can list the various types of infringing conduct.

  
I can apply in sequence those sections of the TMA
which set out the scope of protection afforded to a
  
registered trade mark.

I can explain the various arguments which a

defendant may raise in a trade mark infringement
action, including the general and specific defences
  
found in legislation, and any counterclaim for
revocation or invalidity.

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

13.1 Overview of trade mark infringement  

13.2 Categories of infringing acts  

13.3 The scope of trade mark protection  

13.4 General defences to infringement  

13.5 Comparative advertising  

13.6 Exhaustion of rights  

13.7 Revocation and invalidity  

14 Character, personality and image merchandising;
licensing of trade marks

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 238

14.1 Definition of character merchandising . . . . . . . . . . . . . . . . . 239

14.2 Possible means of obtaining protection . . . . . . . . . . . . . . . . . 239

14.3 Licensing of trade marks . . . . . . . . . . . . . . . . . . . . . . . . 245

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . 249

page 238 University of London

Introduction
This chapter sets out the protection (or, perhaps, lack of protection) afforded under
UK law to merchandising activities. Merchandising, economically speaking, is an
important industry. Consider, as examples, goods sold by football clubs and other
sporting organisations, the sale of memorabilia connected with celebrities, the
endorsement of goods and services by famous people, and the way in which a whole
range of items can be used to promote films such as Jurassic Park or concert tours by
rock stars such as the Rolling Stones.

These commercial activities have, as their foundation, contractual arrangements

between the person or company ‘owning’ a name or image and undertakings which
make and sell goods on their behalf. Although the Copyright, Designs and Patents
Act 1988 (CDPA) contains no provisions which could invalidate a merchandising
agreement based on copyright, the Trade Marks Act 1994 (TMA) has a number of
provisions which are relevant to such arrangements. This chapter will therefore
conclude by examining the legal issues surrounding trade mark licences and their
implications for merchandising.

The chapter will first explore the legal means available to protect the merchandiser
against those who wish to free ride on the success of a particular name or image. It
will bring together a number of different areas of intellectual property law, namely
copyright, designs, registered trade marks, passing off and breach of confidence.
You have studied each one of these in detail already. If, however, at any stage of this
chapter you are unsure of the underlying legal principles, you should refer back to
your notes on earlier chapters. We shall select the relevant aspects of each of these
and apply them to the practice of merchandising to judge their effectiveness. Each
area of law has its own limitations. Brief reference will be made to the law in other
jurisdictions in order to demonstrate that in the UK, the law does not always accord
with commercial needs. You should therefore concentrate on those instances where
protection has been denied and reflect on whether this is defensible.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u explain when the law of copyright and designs can protect merchandising
activities and discuss its limitations
u explain when the law of registered trade marks can protect merchandising
activities and evaluate those cases where protection has been denied
u explain how, in general, the law of passing off has come to protect merchandisers
against the free riding activities of others
u consider the extent to which the action for ‘misuse of personal information’
enables celebrities to control the use of pictures and stories about them
u list the various legal means of protecting merchandising activities.
Intellectual property 14 Character, personality and image merchandising; licensing of trade marks page 239

14.1 Definition of character merchandising

Essential reading
¢ Cases: Lorimar Productions v Sterling Clothing [1982] RPC 395; Irvine v Talksport
[2002] 2 All ER 414.

As a starting point, the judicial definition of character merchandising which is most

helpful is that given in Lorimar Productions v Sterling Clothing [1982] RPC 395 at 398 by
Van Dijkhorst J. He states that it involves:

...the use of characters, locations, names, titles and logos from TV series, feature films or
other entertainment programmes for promotions and the sales of products and services.
It is alleged that modern buying habits are highly responsive to image-related advertising.
If carefully chosen merchandise is marketed in overt association with a popular film, TV
series, celebrity, fictitious character or the like, that merchandise will enjoy a greater
consumer demand than could have been expected for the unadorned product.
His comments should be seen in the light of the facts of the case (an unsuccessful
attempt to use passing off to prevent the use of the names DALLAS and SOUTH
FORK for, respectively, clothing and restaurant services) which was essentially
concerned with merchandising based on the names of fictitious characters or
places. Merchandising activities, however, go far beyond this: consider sporting
organisations (such as Manchester United in football, Ferrari in motor racing), celebrity
endorsements (where a person’s name or image is used to sell another’s goods or
services) as well as where a celebrity’s name or image is used to sell products (whether
the celebrity is alive or dead).

Activity 14.1
Read the cases of Lorimar and Irvine v Talksport. What do they tell you about judicial
attitudes towards the protection of merchandising activities?

14.2 Possible means of obtaining protection

Core text
¢ Bainbridge, Chapter 23 ‘Passing off’ pp.888–93.

¢ Cornish, Chapter 17 ‘Common law liability’ paras 17–033 to 17–035, 17–044 to

17–047; Chapter 18 ‘Registered trade marks’ para 18–046.

Further reading
¢ Jaffey, P. ‘Merchandising and the law of trade marks’ [1998] IPQ 240.

As stated in the introduction to this chapter, there are several means whereby legal
protection can be afforded to the merchandiser: copyright and design law, the law
of registered trade marks, passing off and breach of confidence. Each has its own
limitations. None provides a complete solution. We shall examine each in turn.

14.2.1 Copyright and design law

Essential reading
¢ Cases: King Features v Kleeman [1941] AC 417; BBC Worldwide Ltd v Pally Screen
Printing Ltd [1998] FSR 665; Merchandising Corporation of America v Harpbond
[1983] FSR 32; Lyngstad v Anabas [1977] FSR 62; Lucasfilm Ltd v Ainsworth [2009]
FSR 103 (Mann J), [2009] EWCA Civ 1328 (CA).

The simplest way in which character merchandising can be protected under the law
of copyright is where the character started out as a cartoon drawing. As long as the
drawing is original, copyright will subsist in it under s.4(1)(a) CDPA, irrespective of
artistic quality. The same applies where the character started out as a doll or puppet,
which would be regarded as a ‘sculpture’ for the purposes of s.4. Copyright will be
infringed by copying the work and issuing copies to the public (ss.17 and 18 CDPA, as
page 240 University of London
explained in Chapter 8). In particular, s.17(2) CDPA provides that a work is infringed
if it is reproduced in any material form, and s.17(3) adds to this by stating that a two-
dimensional artistic work is infringed by a three-dimensional reproduction and vice
versa. Hence, in King Features v Kleeman [1941] AC 417, POPEYE dolls and brooches were
held to be infringing reproductions of the claimant’s comic strips.

The copyright owner may have difficulty in suing for infringement where the
defendant merely takes the idea of the character. Copyright, remember, protects
expression not ideas. However, in Mirage Studios v Counter-Feat Clothing [1991] FSR
145, where the defendant took the claimants’ concept of humanoid turtles when
producing their own designs for T-shirts, Browne-Wilkinson VC nevertheless held that
there was an arguable case of copyright infringement.

Where the copyright owner sues a third party for copying the artistic work, the
defendant may seek to rely on s.51 CDPA. This occurred in BBC Worldwide Ltd v Pally
Screen Printing Ltd [1998] FSR 665 where the defendants had applied pictures of the
TELETUBBIES characters to T-shirts. Laddie J held that the defendants had an arguable
defence under s.51 (which provides that one cannot sue for copyright infringement of
a drawing for an article which is not otherwise an artistic work where the defendant
has made articles derived from that drawing). The decision should be treated with
caution, as arguably the design was applied to an article (the front of the T-shirt) rather
than being used to make the article (see Chapter 9 for a detailed explanation of s.51).

More significant is the decision in Lucasfilm Ltd v Ainsworth [2009] FSR 103 (Mann
J), [2009] EWCA Civ 1328 (CA), [2011] UKSC 39. The court had to decide whether the
Stormtrooper helmets for the film Star Wars could be regarded as either sculptures
or works of artistic craftsmanship and so are protectable under the law of copyright.
Mann J concluded that they were neither. A sculpture, he said, should have, as part
of its purpose, a visual appeal in the sense that it might be enjoyed for that purpose
alone, whether or not it might have another purpose as well. The purpose was that
of the creator. He also held that the Stormtrooper helmets were not works of artistic
craftsmanship. For a work to be to be regarded as one of artistic craftsmanship it must
be possible to say fairly that the author is both a craftsman and an artist. A craftsman is
a person who makes something in a skilful way and takes pride in their workmanship.
An artist is a person with creative ability who produces something with aesthetic
appeal. Here, the helmets fell squarely within the s.51 defence so that the action for
copyright infringement was barred. The Supreme Court endorsed Mann J’s suggested
approach.

The implication of the Lucasfilm decision is that where the article in question is not
a sculpture or a work of artistic craftsmanship, it can only be protected by either
registered or unregistered design right. Please refer to your notes on Chapter 9 for the
relevant criteria for protection.

Copyright also subsists in original literary works (ss.1(1)(a) and 3 of the CDPA), but
there can be no copyright in a single word or name. In Francis Day and Hunter Ltd v
Twentieth Century Fox Corporation [1940] AC 112, it was held that there was no copyright
in the song title: ‘The Man Who Broke the Bank at Monte Carlo’. Similarly, it was held
in Exxon Corporation v Exxon Insurance Consultants International Ltd [1981] 3 All ER 241,
that there was no copyright in the invented word trade mark EXXON despite the vast
amount of research and effort which went into its creation. Copyright is therefore of
no assistance to the production company who wants to promote the name of a film or
television series through merchandising activities.

Other forms of copyright which might assist the merchandiser are films and
photographs. Taking a photograph from a film, for example, to make a transfer
to be printed on T-shirts or to make posters or postcards will be infringement of
copyright in the film (Spelling-Goldberg Productions Inc v BPC Publishing Ltd [1981] RPC
283; s.17(4) CDPA). In the case of photographs, copyright protection will be available
if the personality (or their management company) is the owner of the copyright
in the photograph and that photograph is applied to a range of goods or services
without consent. But this does not stop the unauthorised exploiter from taking
an independent photograph of the personality and applying it to the goods or
Intellectual property 14 Character, personality and image merchandising; licensing of trade marks page 241
services concerned (see Lyngstad v Anabas Products Ltd [1977] FSR 62 (ABBA), Irvine v
Talksport [2002] 2 All ER 414). Furthermore, photographic copyright is very limited.
In Merchandising Corporation of America Inc v Harpbond Ltd [1983] FSR 32, a portrait of
the singer Adam Ant wearing his new ‘Prince Charming’ make-up was held not to be
infringement of the copyright in the photograph on which it was based. Also, it was
held in that case that there was no copyright in the singer’s make-up because it was
too transitory in nature.

14.2.2 Registered trade marks

Essential reading
¢ Cases: ELVIS PRESLEY Trade Marks [1999] RPC 567; DIANA, PRINCESS OF WALES
Trade Mark [2001] ETMR 254; JANE AUSTEN Trade Mark [2000] RPC 879; C-206/01
Arsenal Football Club v Matthew Reed [2002] ECR I-10273; LINKIN PARK Trade Mark
Application, Appointed Person, 7 February 2005 (available from the Trade Marks
Registry website).

It might be thought that the TMA improved the protection available to merchandisers.
The list of what comprises a trade mark under s.1 is much broader than before and the
scope of protection in an infringement action is far greater than under the Trade Marks
Act 1938. Despite that, a number of problems exist.

u There may be difficulty in registering the name of a celebrity (particularly if

the person concerned is no longer alive) as the name may not be inherently
distinctive for the purposes of s.3(1)(b) TMA. The public may not perceive the
name as indicating commercial origin, rather they will think that the name simply
commemorates the person in question: see ELVIS PRESLEY Trade Marks [1999] RPC
567 (decided under the 1938 Act), DIANA, PRINCESS OF WALES Trade Mark [2001] ETMR
254 and JANE AUSTEN Trade Mark [2000] RPC 879. These last two cases, decided
under the 1994 Act, need to be re-evaluated in light of the decision of the CJEU in
C-206/01 Arsenal Football Club v Matthew Reed [2002] ECR I-10273. The CJEU thought
the perceptions of the consumer (who need not be the original purchaser) went
beyond simply recognising the commercial origin of the goods. If the trade marks
in Arsenal could be infringed even though the purchasers saw the marks as ‘badges
of loyalty’, then arguably the names of deceased personalities could be registrable
even though they may be regarded as a form of commemoration. Despite Arsenal,
the practice of the United Kingdom Trade Marks Registry in handling applications
to register the names of personalities is to draw a distinction between different
types of goods. Where the name is to be used on books, sound recordings or films,
such use implies some form of control or guarantee, so that the name is prima
facie registrable. Where, however, the goods are what the Registry calls ‘mere
image carriers’ (posters, photographs, transfers and figurines) the name will be
seen by consumers as simply descriptive of the subject matter of the product. An
example of this policy in practice is LINKIN PARK Trade Mark Application, Appointed
Person, 7 February 2005. It was held that the trade mark (the name of a rock group)
was coined when the group was formed, but was no longer so by the date of the
application to register the mark for posters. The mark was therefore descriptive
of the characteristics of the goods because a fan of the group, had they gone into
a shop selling posters, would have asked for ‘a LINKIN PARK poster’. You should
evaluate the correctness of this practice in view of the Arsenal ruling.

u Any attempt to register the likeness of the character or celebrity as a three-

dimensional trade mark might be met by the objection under s.3(2)(c) TMA that
the shape gives substantial value to the goods. In other words, consumers buy the
goods primarily for their shape (see further Chapter 12). If a film company decides
to make toys in the shape of one of its popular characters (for example, Darth
Vader from Star Wars), s.3(2)(c) would logically prevent the registration of the
shape as a trade mark, because the item is a ‘collectible’.

u Use of the name or likeness of a character or celebrity on promotional goods may

not suffice to protect the trade mark against revocation for non-use under s.46(1)
page 242 University of London
(a) or (b) of the TMA (see further Chapter 13). Under the 1938 Act, promotional use
of the KODAK mark on T-shirts was not enough to protect the trade mark owner
against revocation in KODIAK Trade Mark [1990] FSR 49. It was suggested (albeit
obiter) that promotional use could suffice under the 1994 Act: Premier Brands UK
Ltd v Typhoon Europe Ltd [2000] FSR 767. The effect of such promotional use would
need to be assessed in the light of the CJEU’s guidance as to the meaning of ‘use’
in C-40/01 Ansul BV v Ajax Brandbeveiliging BV [2003] CR I-2439 and its decision in
C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH, 15 January 2009 where
promotional use did not protect against revocation.

u The use of the name or likeness of a character or celebrity on merchandise

produced without consent by a third party may not amount to ‘trade mark use’
for the purposes of trade mark infringement under s.10 TMA (see Chapter 13). The
CJEU has indicated that in the case of a trade mark with a reputation, decorative
use may amount to infringement for the purposes of s.10(3): C-408/01 Adidas-
Saloman AG and Adidas Benelux BV v Fitnessworld Trading Ltd [2003] ECR I-12537.
Further, the meaning of ‘trade mark use’ has been extended radically by the CJEU
in C-206/01 Arsenal Football Club v Matthew Reed [2002] ECR I-10273. The Court
ruled that even if goods are bought by football fans as a ‘badge of loyalty’, this still
amounts to trade mark use. By analogy, if an Elvis Presley fan buys a cup bearing
Elvis’s name or picture, this would still amount to trade mark use for the purposes
of infringement, assuming, that is, that the name or image had been successfully
registered as a trade mark. You are referred to the importance of the consumer’s
views as to whether something amounts to ‘trade mark use’ and to the rulings of
the CJEU in C-48/05 Adam Opel AG v Autec [2007] ECR I-1017 and C-17/06 Céline SARL v
Céline SA [2007] ECR I-7041 discussed in Chapter 13.

14.2.3 Passing off

Essential reading
¢ Cases: Taverner Rutledge v Trexapalm [1977] RPC 275; Lyngstad v Anabas [1977] FSR
62; Mirage Studios v Counter-Feat Clothing [1991] FSR 145; Irvine v Talksport [2002] 2
All ER 414; Clark v Associated Newspapers [1998] 1 All ER 959; Fenty v Arcadia Group
Brands [2015] EWCA Civ 3.

As indicated above, copyright law is incapable of protecting the name of a character or

the title of a film or television series. In the absence of trade mark registration, passing
off would appear to be the most logical means of providing protection for a name.
It might be thought that the claimant simply has to satisfy the requirements of Lord
Diplock in Erven Warnink BV v Townend & Sons [1979] AC 731 or those of Lord Oliver in
Reckitt & Colman Products Ltd v Borden Inc [1990] 1 All ER 873 (refer back to Chapter 11 if
you are unsure about these). In older passing off cases, the lack of a common field of
activity often prevented a claimant from succeeding in claims concerning character
merchandising (see, for example, Wombles v Wombles Skips [1977] RPC 99; Taverner
Rutledge v Trexapalm [1977] RPC 275; Lyngstad v Anabas [1977] FSR). However, it is now
established that, in passing off, there is no rule that the claimant and defendant must
be trading in the same or related fields in order to succeed in passing off (Lego Systems
A/S v Lego M Lemelstrich Ltd [1983] FSR 155). This understanding has resulted in a more
liberal approach to character merchandising.

In IPC Magazines Ltd v Black and White Music Corp [1983] FSR 348, for example, the
claimant sought an interim injunction to restrain the defendants from releasing
a record named after, and containing a song about, the claimant’s science fiction
cartoon character JUDGE DREDD. JUDGE DREDD enjoyed a cult following and, by
the time of the case, both the drawings and the name had been the subject of
merchandising agreements. The claimant argued that it had suffered damage under
two headings, namely damage to the reputation of their character and damage to
their existing licensing operations. It was alleged that others would be encouraged
to use the character without seeking licences. Goulding J was prepared to accept that
misrepresentation had been established because members of the public might think
that the record was approved by the claimant. But the claimant had failed to show
Intellectual property 14 Character, personality and image merchandising; licensing of trade marks page 243
damage to reputation (the record was ‘no worse’ than others in the charts) and there
was no evidence that others would use the character without a licence.

The most significant breakthrough under UK law in this area came with Mirage Studios
v Counter-Feat Clothing [1991] FSR 145 (‘The NINJA TURTLES decision’).

The NINJA TURTLES decision

In NINJA TURTLES, the claimants owned copyright in the drawings for the characters
TEENAGE MUTANT NINJA TURTLES. They did not manufacture or market goods
themselves, being concerned mainly with the creation of cartoons, films and videos
depicting the characters. However, a major part of their revenue was derived from
royalties received under various licensing agreements made with those who wished
to use the characters to sell goods (over 150 of such licences had been granted in the
UK). Each licence contained quality control provisions. Counter-Feat Clothing also
made drawings of humanoid turtles (in sporting guise), relying on the turtle concept
rather than the claimants’ actual drawings. The defendants licensed their drawings
to certain manufacturers to reproduce the images on clothing. Browne-Wilkinson VC
granted the claimants an injunction for the reason that there was an arguable case
of copyright infringement. The essential requirements propounded by Lord Diplock
in Warnink v Townend had been made out. The public had mistaken the defendants’
TURTLES for the claimants’ TURTLES and they ‘expect and know that where a famous
cartoon or television character is reproduced on goods, that reproduction is the
result of a licence granted by the owner of the copyright or owner of other rights in
that character’. An important part of the claimants’ business consisted of licensing
the copyright in their NINJA TURTLES drawings and they would lose royalties if the
unauthorised exploitation of the drawings was allowed. The licensing right would be
significantly reduced by placing TURTLE pictures on inferior goods.

Points to note
Points to note about the decision in NINJA TURTLES are that, first, there was a common
field of activity. Both claimants and defendants were in the business of licensing
pictures of TURTLE characters, although neither was actually concerned in the
manufacture or selling of the goods. The claimants were able to show extensive
merchandising activities. Another important factor was that the claimants were
licensing copyright material. Passing off exists to protect the goodwill in a business.
Here, because the business included licensing activities and not just making films,
Browne-Wilkinson VC was able to identify harm to the claimants’ business as a
result of the defendants’ conduct. The existence of copyright material also enabled
Browne-Wilkinson VC to distinguish earlier UK authorities (WOMBLES, KOJAK and ABBA)
because these were concerned with the licensing of names (in which there was no
copyright, and therefore no separate business in licensing their use) and to express his
preference for the Australian authorities, chiefly the MUPPETS case.

More recently, in Hearst Holdings Inc v Avela [2014] EWHC 439 (Ch), Birss J had to
consider a claim brought by a company which had, for many years, licensed imagery
of the famous cartoon character, ‘Betty Boop’. He noted that, at bottom, passing off
cases such as this were determined as questions of fact. It was necessary to establish
how customers viewed the application of the Betty Boop cartoon image to goods. He
held that, in this instance, where that had been extensive past merchandising activity,
a substantial number of customers would view the application of the image as having
significance as a designation of origin of goods. They were not perceived purely as
decorative. On that basis, the claimant was entitled to succeed in a passing off claim
against a defendant who had used the image without authorisation.

Sponsorship by a person or organisation

Another type of merchandising activity which has received judicial scrutiny in the
context of passing off is where the name of an organisation or a famous person is
used to endorse a product. If the organisation or person has not agreed to the use
of their name, this may amount to passing off. Until recently, the cases revealed the
possibility of two different outcomes, depending on whether the name in question
was that of a professional body or a commercial organisation, on the one hand, or
page 244 University of London
an individual on the other. For example, in BMA v Marsh (1931) 48 RPC 565, the British
Medical Association was able to prevent a pharmacist placing the letters BMA above
his shop; and in Walter v Ashton [1902] 2 Ch 282, The Times newspaper could prevent its
name being used to sell bicycles. In contrast, in Sim v Heinz [1959] RPC 75, it was held
that there was no misrepresentation of endorsement where the defendant’s television
advertisement for its soup imitated the voice of a famous actor. In McCulloch v May
(1947) 65 RPC 58, the presenter of children’s radio programmes could not restrain the
sale of breakfast cereal using his name (‘Uncle Mac’) as there was no common field of
activity. Lastly, in Stringfellow v McCain Foods (GB) Ltd [1984] RPC 501, a nightclub owner
unsuccessfully argued that the defendant had committed passing off when it had
called its chips ‘Stringfellows’. The public would not be misled into thinking that the
claimant had approved the product.

A significant change of attitude can be found in Irvine v Talksport [2002] 2 All ER 414.
You have already encountered this case earlier in this chapter and in Chapter 2. The
important points to note here are:

u that the claimant was already in the business of entering agreements for the use of
their name and/or image to sell goods and services

u the recognition by Laddie J that the public is aware of the practice of celebrity
endorsement.

The thinking in Irvine v Talksport has been applied in Fenty v Arcadia Group Brands Ltd
[2013] EWHC 2310 (Ch), [2015] EWCA Civ 3. The defendant retailer was restrained from
selling T-shirts bearing the image of the singer Rihanna, the court accepting that the
claimant had goodwill relating to the merchandising of her image.

14.2.4 Breach of confidence and privacy

Essential reading
¢ Cases: Douglas v Hello! Ltd (No 2) [2005] 4 All ER 128 (CA); Douglas v Hello! Ltd
[2007] 2 WLR 920 (HL) (do not try to read the whole case, only those parts
relating to whether the defendant was liable to OK! magazine as well as Mr
Douglas); Naomi Campbell v MGN [2004] 2 AC 457 (HL) (especially the judgment
of Lord Hope); Von Hannover v Germany (2004) 40 EHHR 1; Murray v Express
Newspapers [2009] Ch 481; PJS v News Group Newspapers [2016] AC 1081.

¢ Carty, H. ‘Advertising, publicity rights and English law’ [2004] IPQ 209 (available
in Westlaw via the Online Library).

When considering this aspect of image merchandising, you may wish to revisit
your notes from Chapter 5 on the use of breach of confidence to protect privacy. In
particular, you need to ensure that you understand the different judicial tests for
‘classical’ breach of confidence and for ‘misuse of personal information’.

One aspect of breach of confidence which is relevant to merchandising is the extent

to which celebrities can control the use of their image in the media. Although, at one
time, it was said that there was no general law of privacy in the UK (Kaye v Robertson
[1991] FSR 62), this has now changed. One of the significant cases is the decision of the
European Court of Human Rights in Von Hannover v Germany (2004) 40 EHHR 1. This
makes clear that the Contracting States of the ECHR have to ensure that the right to
private life (found in Article 8 of the ECHR) is protected. The Article 10 right (freedom of
expression) is not to prevail over Article 8 unless the person in question holds public
office. The court is required to ask whether the person has a reasonable expectation
of privacy which is to be assessed objectively. If they do, then, subject to the Article
10 right, there can be liability for ‘misuse of personal information’ (Naomi Campbell
v MGN [2004] 2 AC 457; Douglas v Hello! Ltd (No 2) [2005] 4 All ER 128; Murray v Express
Newspapers [2009] Ch 481). The defendant cannot argue that it is seeking to reveal
conduct on the part of the claimant which some would find distasteful (Mosley v News
Group Newspapers [2008] EWHC 1777), although privacy may be lost where the claimant
has been untruthful or hypocritical, so that there is the need to ‘set the record straight’
(Browne v Associated Newspapers [2007] 3 WLR 289).
Intellectual property 14 Character, personality and image merchandising; licensing of trade marks page 245
One particular form of media intrusion is photography. At one time, a celebrity who was
photographed in a public place had little redress, unless that photograph was taken
surreptitiously (Naomi Campbell v MGN). The result was different if the photograph is
taken on private premises: Theakston v Mirror Group Newspapers, Ouseley J, 14 February
2002. This may help to explain the extensive contractual arrangements employed by the
claimants in Douglas v Hello! to ensure that unauthorised pictures of their wedding were
not published. The effect of Von Hannover is to give greater protection to those celebrities
who are photographed in public: Murray v Express Newspapers.

Many privacy cases involve contractual arrangements. Apart from Douglas v Hello!,
you should return to your notes on Chapter 5 and reconsider the cases of McKennitt v
Ash [2007] 3 WLR 194 and HRH Prince of Wales v Associated Newspapers Ltd [2007] 3 WLR
222. The existence of contractual arrangements led the House of Lords in Douglas v
Hello! to suggest that the case was not actually about misuse of personal information,
but a straightforward commercial breach of confidence. As a result, the magazine
with whom Mr and Mrs Douglas had made an exclusive deal to publish their wedding
photographs had a claim against the defendant for publishing rival photographs.

With regard to remedies, the obiter comments in Douglas v Hello! Ltd (No 2) (CA) and
Douglas v Hello! Ltd (HL) suggest that an interim injunction is more likely to be granted
to restrain the publication of unauthorised images, because of the unique ability of
photographs to invade a person’s privacy, not just once, but repeatedly, each time the
photograph is published. What is unclear, however, is whether, should publication
actually occur, more than nominal damages are to be awarded, particularly if the images
are not very flattering. The Court of Appeal in Douglas v Hello! Ltd (No 2) did not disturb the
award of damages to the claimants, a conclusion which is at odds with its remark to the
effect that interim relief should have been granted. It may be that the underlying basis of
the complaint was not so much invasion of privacy, but a loss of control over the right of
publicity. Privacy and publicity are, of course, two sides of the same coin, but need to be
kept distinct. One is personal, the other is commercial.

Activities 14.2 and 14.3

14.2 Go over your notes on the types of intellectual property rights which are
available to protect merchandising activities. Then write a summary of the
different rights. Your answer should include:

u the advantages of each type of intellectual property right

u the drawbacks of each right.

No feedback provided.
14.3 Read the judgment of Browne-Wilkinson in Mirage Studios v Counter-Feat
Clothing. To what extent does the case show a judicial willingness to recognise
and protect merchandising activity?

14.3 Licensing of trade marks

Core text
¢ Bainbridge, Chapter 20 ‘The trade mark – registrability, surrender, revocation,
and invalidity, property rights and registration’ pp.763–66.

¢ Cornish, Chapter 18 ‘Registered trade marks’ paras 18–014 to 18–015; 18–076 to

18–078.

¢ Karapapa and McDonagh, Chapter 21 ‘Dealings in intellectual property rights’

Sections 21.1 and 21.2.

Celebrities who wish to make money out of their image and the creators of films and
television programmes who wish to take advantage of the success of their work will
often register trade marks as the first step in the merchandising process. Assuming
that the difficulties listed in Section 14.2.2 can be overcome and registration is
obtained, the next step is to enter into a series of trade mark licences with those who
wish to exploit the name or image in question.
page 246 University of London
Licensing under the TMA
The TMA makes the business of trade mark licensing more straightforward than its
predecessor. It declares that a trade mark is personal property (s.22) so that it can
be assigned like any other form of intangible personal property, with or without the
goodwill of the business (s.24). The meaning of ‘goodwill’ was explained in Chapter
11 (‘the attractive force which brings in custom’ and ‘that which distinguishes an old
business from a new’ per Lord McNaghten in CIR v Muller & Co’s Margarine Ltd [1901]
AC 217). Further, under s.28(1), a trade mark can be licensed, either in a general or in a
limited manner, partial licences being granted either to some of the goods or services,
as to a locality or as to manner of use. A trade mark licence (whether exclusive or
non-exclusive, general or partial) must be in writing and signed by the trade mark
proprietor (s.28(2)). A trade mark licence will bind the proprietor’s successor in title
unless it says otherwise. The licensee can grant sub-licences unless there is a provision
to the contrary. However, like any other transaction affecting the property right in
the mark, the licence must be recorded at the Trade Marks Registry (s.25). Failure to
do so means that the licensee is at risk from a bona fide purchaser of the mark, and
the licensee will not obtain the procedural rights conferred on licensees under the
Act. Failure to record the licence within six months of its being granted (or as soon
as practicable thereafter) means that the claimant will not be awarded costs in any
subsequent infringement action.

The rights of the licensee

An exclusive licensee (as defined in s.29) is given certain procedural rights by s.31.
However, even though the licensee can bring infringement proceedings in their own
name, that does not give them any proprietary rights over the trade mark.
A trade mark licence simply confers personal rights: Northern & Shell v Condé Nast
[1995] RPC 117.

The critical clause which must be present in a trade mark licence is one imposing
an obligation on the licensee to comply with the proprietor’s instructions as to the
quality of the goods. The proprietor must be able to dictate quality and to ensure that
the obligation is being observed. The sorts of clauses which are normally inserted in
a trade mark licence are those requiring the licensee to submit samples periodically
or those which permit the proprietor to enter the licensee’s premises with a view to
checking the quality of the goods being made there.

The importance of quality control

The reason why quality control is so important is because it impinges on the functions
which trade marks fulfil (see Chapter 10). Under the 1938 Act, where the only recognised
function was that of indicating origin, to license a trade mark without an effective
system of quality control undermined the origin function and rendered the trade mark
deceptive. Further, if the trade mark proprietor was willing to grant an unlimited number
of licences to other firms, then that would amount to ‘trafficking in a trade mark’, a
practice which meant that the Registrar could refuse to register any licence relating to
that mark: Re American Greetings Corporation’s Application [1984] 1 All ER 426, HL.

The prohibition on ‘trafficking in a trade mark’ (that is, treating the mark as a
commodity in its own right) is no longer in the UK legislation. The Court of Justice’s
decision in C-259/04 Emanuel v Continental Shelf 128 Ltd [2006] ECR I-3089 states that it is
the mark itself that must be inherently deceptive, not the use that is made of it. Lack of
care by the licensor is unlikely to lead to revocation.

Another case from that Court has shown that the presence of quality control
provisions in a trade mark licence may give the trade mark owner enhanced powers in
the context of the free movement of goods. As discussed in Chapter 13, C-59/08 Copad
SA v Christian Dior Couture SA, 23 April 2009, shows that breach of the terms of a licence
(at least one involving luxury goods) may entitle the proprietor to sue the licensee
under Article 8(2) of the Trade Marks Directive because the quality of the goods might
be affected (one of the conditions set out in Article 8(2)). Further, because of the
quality control clause, the licence does not amount to absolute and unconditional
consent so that there can be no exhaustion of rights. A further argument is that
Intellectual property 14 Character, personality and image merchandising; licensing of trade marks page 247
even if such contractual breach does not trigger the right to sue under Article
8(2), the proprietor can rely on Article 7(2) of the Directive and can oppose further
commercialisation of the goods, but only where it could be established that the resale
of the goods could damage the reputation of the trade mark.

The case of Arsenal v Reed, discussed above, adopts, as we have seen, a far broader
view of trade mark function. The CJEU emphasised the importance of the function of
guaranteeing the quality of goods. You should therefore consider the implications of
this for trade mark licensing. If a registration can be revoked because the mark has
become deceptive (reread s.46(1)(d) TMA carefully), what does this tell you about the
importance of:

u inserting quality control provisions in trade mark licences?

u the need for the trade mark owner to make effective use of such contractual
provisions?

Lastly, you should compare this aspect of trade mark law with the passing off cases on
character merchandising.

Sample examination questions

Question 1 ‘Under the English law of passing off, a cartoon character is better
protected than a pop star.’
Discuss whether, and why, this statement is true or not.
Question 2 Chris is a freelance author and artist who occasionally writes stories for
Picture Perfect Comics (Picture Perfect). Some 10 years ago he created a character
called ‘Dilly the Dinosaur’. Chris proceeded to write a number of stories about Dilly
which were aimed at younger readers, his stories being accompanied by cartoon
drawings of Dilly. Picture Perfect published the original stories and cartoons in
one of their magazines, TeenyBopper Tales. Dilly the Dinosaur proved to be a great
success with children in the 7 to 11 age group.
Keen to make money out of the success of Dilly, Chris and Picture Perfect next
published a series of books. The series was called ‘The Dilly the Dinosaur Series’
and consisted of stories and drawings about Dilly, intended to both entertain and
educate by introducing young readers to basic scientific information. Again, the
series proved to be very successful. Each volume of the series has a picture of Dilly
on the front cover as well as the name, ‘Dilly the Dinosaur’.
Picture Perfect and Chris have just agreed that it would be a good idea to develop
Dilly the Dinosaur merchandise. They have approached Speedy Ltd with a view to
negotiating a licence to produce greetings cards and posters based on the Dilly
character. At a meeting last week, Speedy informed them that there were already
a number of other merchandisers selling Dilly the Dinosaur products. In particular,
Speedy mentioned the activities of:
a. Rupert, who is selling T-shirts and other items of clothing bearing pictures of
dinosaurs that look like Dilly

b. Framleys, a well-known department store, which is selling cuddly toys in the

shape of dinosaurs

c. Mrs Mayson, who has opened a ‘Dilly the Dinosaur’ coffee shop.

Advise Chris and Picture Perfect how they could stop the unofficial merchandising
activities of Rupert, Framleys and Mrs Mayson.

Advice on answering the questions

Question 1 A good answer will:

u identify that the question concerns character merchandising as a particular aspect

of passing off

u briefly summarise the elements of passing off and give a definition of character
merchandising

u indicate what other legal means of protection are available, particularly copyright
page 248 University of London
u explain how the defence of ‘no common field of activity’ resulted in lack of
protection for the image owner in WOMBLES, KOJAK, ABBA and Lorimar

u explain how Mirage Studios came to a different conclusion

u point out that the presence of copyright licensing as an aspect of the claimant’s
business was crucial to the outcome of this last-mentioned case

u contrast the decisions in Irvine and Alan Clark where the celebrity had a business
interest to protect (thereby showing that it is possible for celebrities to succeed in
passing off if the facts are suitable).

Question 2 This question is intended to test your understanding of the issues

surrounding the practice of character merchandising. In particular, it requires you to
explain how the ability to stop unofficial merchandising activities depends heavily on
which area of law the claimant uses: copyright, registered trade marks or passing off. A
good answer will deal competently with both copyright and passing off.

Parts (a) and (b) were concerned with the application of copyright law to
merchandising, particularly artistic copyright. In (a), a good answer would consider
the basics on copyright infringement (i.e. whether there was objective similarity,
derivation and substantial taking). Had Rupert copied? If so, what had he copied – the
idea of a dinosaur character or Chris’s expression? You are reminded of the importance
of Designers Guild as the leading authority on copyright infringement. Further, in view
of BBC Worldwide v Pally Screen Printers and Lucasfilm, would Rupert have a defence
under s.51 CDPA? In (b), Framleys were selling three-dimensional articles, toys in the
shape of dinosaurs. Bearing in mind s.17(3) CDPA (a two-dimensional artistic work is
infringed by the making of a three-dimensional copy), was there objective similarity,
derivation and substantial taking? Again, would the s.51 defence apply? If it would,
could the claimants have relied on NINJA TURTLES as authority to obtain relief in passing
off? Was it significant that they were themselves starting to merchandise?

Part (c) did not involve copyright (there can be no copyright in the title of a book)
and instead required a discussion of the extensive case law on the use of passing off
to prevent unofficial merchandising where what is taken is the name of the character
(e.g. WOMBLES, KOJAK and ABBA).
Intellectual property 14 Character, personality and image merchandising; licensing of trade marks page 249

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.
Tick a box for each topic. Ready to Need to Need to
move on revise first study again

I can explain when the law of copyright and designs

can protect merchandising activities and discuss its   
limitations.
I can explain when the law of registered trade marks
can protect merchandising activities and evaluate   
those cases where protection has been denied.
I can explain how in general the law of passing off
has failed to protect merchandisers against the free
  
riding activities of others and why this might be so.

I can consider the extent to which the action for

‘misuse of personal information’ enables celebrities
to control the use of pictures and stories about   
them.
I can list the various legal means of protecting
merchandising activities.   

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

14.1 Definition of character merchandising  

14.2 Possible means of obtaining protection  

14.3 Licensing of trade marks  

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Notes
15 Introduction to patents

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 252

15.1 The history of patent law . . . . . . . . . . . . . . . . . . . . . . . . 253

15.2 Justifications for patent protection . . . . . . . . . . . . . . . . . . . 254

15.3 Understanding the Patents Act 1977 . . . . . . . . . . . . . . . . . . 254

15.4 Outline of UKIPO procedure . . . . . . . . . . . . . . . . . . . . . . . 255

15.5 Key issues in patent cases . . . . . . . . . . . . . . . . . . . . . . . . 258

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . 263

page 252 University of London

Introduction
The purpose of this chapter is to provide an introduction to the three chapters which
follow on the law of patents. It will do so by giving an overview of the development
of United Kingdom patent law and the external influences on the Patents Act 1977
which affect its interpretation. We shall also take the opportunity to reconsider the
justifications of the patent system, previously discussed in Chapter 2.

In order that you may better understand how patents are obtained, a brief overview
of UK Intellectual Property Office (UKIPO) procedure will be given. This is, however,
merely background information and not examinable as such.

Many students find the law of patents challenging. They believe that the facts of patent
cases are difficult to understand (especially if they do not have a science background)
and because of this, ‘techno-fear’ gets in their way. This chapter aims to overcome
these challenges by identifying the key issues which need to be resolved in patent
cases. By understanding these issues (which are straightforward), you will begin to
appreciate that the basic rules of patent law are not that difficult. Mastering these
issues will give you the confidence you need to study the remaining three chapters.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u summarise the historical and external factors which have influenced UK
patent law
u discuss the theoretical justifications for the patent system
u explain in outline the procedure whereby UK patents are granted
u explain the meaning of key concepts likely to be encountered in patent cases
u list the issues which are likely to require determination in a typical patent case.
Intellectual property 15 Introduction to patents page 253

15.1 The history of patent law

Core text
¢ Bainbridge, Chapter 11 ‘Patent law – background, basic principles and practical
aspects’ pp.392–93.

¢ Bently et al., Chapter 14 ‘Introduction to patents’ Section 2 ‘History of the British

patent system to 1977’.

¢ Cornish, Chapter 3 ‘Growth and purpose of patents’ paras 3–004 to 3–012.

¢ Karapapa and McDonagh, Chapter 15 ‘Introduction to patents’ Section 15.1.

The word ‘patent’ derives from the Latin phrase literae patentes meaning ‘open letter’.
It reflects the practice of the Crown in England from the Middle Ages onwards to
grant monopolies to individuals by way of an open letter to which the Great Seal was
affixed. Such monopolies might relate to a new product or new way of making an
existing product (and were intended to encourage the importation of skilled labour
and technology with a view to promoting local manufacture), but equally could confer
a trading monopoly over an everyday item (such as playing cards) upon a favoured
courtier.

Patents have existed for many centuries and were by no means exclusive to England.
Indeed, it is arguable that the Tudor practice was influenced by legislation elsewhere
in Europe, for example, the Statute of Venice 1474. Criticism of the overuse of
patents by Elizabeth I led to legal challenges (as an example see Darcy v Allin (Case of
Monopolies) (1602) 11 Co Rep 84b). Conversely, where the monopoly resulted in the
acquisition of new technology, the courts were prepared to uphold the grant as valid
(Clothworkers of Ipswich Case (1615) Godbolt 252). Disquiet in Parliament led to the
enactment of the Statute of Monopolies 1623 which encapsulated these two cases.
Section 1 declared all monopolies to be ‘altogether contrary to the laws of this realm,
and...void’, but s.6 contained an exception for ‘any manner of new manufacture’.
Section 6 was, until 1977, the only substantive provision on patent law in the UK, and
(surprisingly) is still in force today. The law of patents (and indeed intellectual property
generally) is therefore built on an exception to the principle that monopolies are bad.

Like many areas of commercial law, the law of patents was primarily shaped by 19th
century events. Legislation was concerned exclusively with procedural improvements
to the patent system (you will find further details in Cornish), thereby responding
to the effect of the Industrial Revolution. This stimulated greater use of the patent
system by inventors. Apart from concerns about the lack of efficiency in the patent
system, there was at the same time vigorous debate about whether there should
be patents at all. Some (principally those who favoured free trade) called for their
abolition, believing that they stifled innovation. Nevertheless, the system survived and
remained largely unchanged until 1977. The revolutionary effect of the Patents Act 1977
is explained below.

Activity 15.1
Read the accounts in Cornish or Bently et al. of the development of UK patent law.
Then write a concise summary of what you have read.
No feedback provided.
page 254 University of London

15.2 Justifications for patent protection

Core text
¢ Bainbridge, Chapter 11 ‘Patent law – background, basic principles and practical
aspects’ pp.393–401.

¢ Bently et al., Chapter 14 ‘Introduction to patents’ Section 3 ‘Justification for

patents’.

¢ Cornish, Chapter 3 ‘Growth and purpose of patents’ paras 3–036 to 3–053.

¢ Karapapa and McDonagh, Chapter 15 ‘Introduction to patents’ Section 15.2.

Essential reading
¢ Chapter 2 of this module guide.

¢ Machlup, F. and E. Penrose ‘The patent controversy in the nineteenth century’

(1950) 10 J of Economic History 1 (available in JSTOR via the Online Library).

You will recollect from Chapter 2 the justifications which are advanced for the
protection of intellectual property in general. Further discussion of the reasons why
there should be a system to protect inventions can be found in the textbooks: the
ones by Cornish or Bently et al. should be studied. These reasons are sometimes
rehearsed in case law: as examples, see Lord Oliver in Re Asahi KKK’s Patent [1991] RPC
485 at 523; the Court of Appeal in Dranez Anstalt v Hayek [2003] FSR 561 at para 25; and
the Court of Appeal in Eli Lilly and Company v Human Genome Sciences Inc [2010] EWCA
Civ 33. You should keep these justifications in mind when you study the chapters
which follow on patentability, employee inventions and infringement, and you should
consider from time to time whether the law does indeed match them.

Activity 15.2
Go over your notes from Chapter 2 about the justification for intellectual property
rights. Then read the article by Machlup and Penrose listed above. From that article
draw up a concise summary of the justifications for the patent system.

15.3 Understanding the Patents Act 1977

Core text
¢ Bently et al., Chapter 14 ‘Introduction to patents’ Section 4 ‘Current legislative
framework’, Chapter 15 ‘Nature of a patent’ Section 1 ‘Introduction’, Section 2
‘Types of patent’, Section 3 ‘Drafting of a patent’.

¢ Cornish, Chapter 3 ‘Growth and purpose of patents’ paras 3–054 to 3–058; 3–013 to
3–035.

¢ Karapapa and McDonagh, Chapter 15 ‘Introduction to patents’ Section 15.3.

Essential reading
¢ Patents Act 1977 s.130(7).

The Patents Act 1977 was enacted primarily to give effect to the UK’s obligations under
international treaties.

u The Patent Co-operation Treaty 1970 (PCT). This Convention (administered by WIPO)
creates a procedural mechanism assisting the intending patentee who wishes to
obtain protection in more than one state by enabling a single application to be made,
which is then subjected to an international search and preliminary examination
before being turned into a bundle of national applications for all PCT Contracting
States unless the applicant ‘opts out’ of protection in particular countries. The PCT is
not on the syllabus and you should simply be aware that it exists.

u The European Patent Convention 1973 (EPC). The revised version of this, EPC 2000,
came into force on 13 December 2007, the same date on which the amendments
Intellectual property 15 Introduction to patents page 255
made to the Patents Act 1977 by the Patents Act 2004 to comply with EPC 2000
became operative. The rest of the Patents Act 2004 (making changes to domestic
law) came into force on 1 January 2005. Remember the EPC is not an EU measure,
but is an instrument of the Council of Europe in Strasbourg. Membership of the
Convention is open to any country belonging to the Council of Europe, but patent
applicants need not be citizens of these states. It creates a centralised search,
examination and grant for a European patent at the European Patent Office (EPO),
hence one application produces a bundle of parallel national patents, by-passing
national patent offices. Once granted, European patents are treated as national
patents, so that infringement actions are heard by local courts.

The 1977 Act is therefore a hybrid creature. It introduced substantive provisions on

patentability and exclusions therefrom (derived from the EPC) into domestic law
for the first time, as well as a statutory definition of infringement derived from the
wording of the then Community Patent Convention. As a result of the definition
of ‘patentable invention’ in s.1, the grounds of revocation in s.72 are different from
those applying before. The Act also introduced, as a purely domestic measure, rules
on the ownership of inventions made in the course of employment and a scheme of
compensation for employee-inventors.

The fact that the content of the 1977 Act is influenced by international conventions has
an effect upon its interpretation. This is ensured by the wording of s.130(7). Read this
section now. Observe how it declares that certain key sections (specifically those on
patentability, infringement and revocation) are deemed to have the same effect in the
UK as the corresponding provisions of the above conventions have in other states to
which those conventions apply. In plain English, UK courts are to have regard to how
courts in other countries interpret the EPC. In particular, they should have regard to
the decisions of the EPO Boards of Appeal with regard to patentability (see Merrell Dow
v Norton [1996] RPC 76 at 82 per Lord Hoffmann; and Bristol-Myers Squibb v Baker Norton
Pharmaceuticals Inc [1999] RPC 253 at 272–73 per Jacob J). Notice should be taken of how
German courts have dealt with the interpretation of patent claims: Kirin Amgen Inc
v Hoechst Marion Roussel Ltd [2005] 1 All ER 667 at paras 72–75 per Lord Hoffmann and
Conor Medsystems v Angiotech Pharmaceuticals Inc [2008] RPC 716 at para 3, again per
Lord Hoffmann.

15.4 Outline of UKIPO procedure

Core text
¢ Bainbridge, Chapter 11 ‘Patent law – background, basic principles and practical
aspects’ pp.388–401.

¢ Bently et al., Chapter 15 ‘Nature of a patent’ Section 3 ‘Drafting of a patent’,

Chapter 16 ‘Procedure for grant of a patent’.

¢ Cornish, Chapter 4 ‘The patent; grant and content’ paras 4–01 to 4–50.

¢ Karapapa and McDonagh, Chapter 15 ‘Introduction to patents’ Section 15.4.

The information which follows on the steps taken in obtaining patent protection in the
UK is intended as background information only. You will not be expected to remember
it for the examination. It is provided simply so that you can understand some of the
terminology you will encounter in case law. Several of the textbooks contain quite
detailed flow charts that you might find helpful.

In essence, there are five key stages in the procedure to obtaining a patent:

u filing the application

u publication

u search and preliminary examination

u substantive examination

u grant.
page 256 University of London

15.4.1 Filing the application

Under s.7, anyone can apply for a patent, although it can only be granted to the
inventor or their successor in title. Any disputes as to entitlement are resolved by
UKIPO under powers set out in the 1977 Act.

Section 14(2) requires every patent application to contain certain items. Read s.14(2)
now. Two words require further explanation, namely ‘specification’ and ‘claims’.

The specification is the name for the patent document. It will consist of a description
of the invention, any relevant drawings and one or more claims. An example of a
patent specification can be found in Bainbridge. It is deemed to be addressed to an
imaginary person called ‘the skilled addressee’ (see below).

Sufficiency
Section 14(3) of the Patents Act 1977 requires the specification to disclose the
invention ‘in a manner which is clear enough and complete enough for the invention
to be performed by a person skilled in the art’. This is known as sufficiency. Sufficiency
relates to the clarity of the description of the invention, not the claims.

Lack of sufficiency is a ground of revocation under s.72(1)(c) (explained in Chapter 18).

Examples of lack of sufficiency include:

u Monsanto Company v Merck & Co Inc [2000] RPC 709 (there was no guarantee that the
skilled addressee, carrying out the instructions in the description, would produce a
class of pharmaceutical compounds which had the desired characteristics, namely
anti-inflammatory drugs which did not have particular side-effects)

u Kimberley-Clark Worldwide Inc v Procter & Gamble Ltd, Pumfrey J, 21 July 2000 (a
patent for a new type of disposable nappy was insufficient because the skilled
addressee, performing the various tests for absorbency set out in the description,
would have arrived at contradictory results)

u Novartis AG v Johnson & Johnson Medical Ltd [2009] EWHC 1671 (Pat) (the skilled
addressee would not be able to carry out the invention without prolonged
research: the patent claimed extended wear contact lenses by reference to
certain characteristics such as ophthalmic compatibility, corneal health and
wearer comfort, and to physical parameters such as oxygen transmission and ion
permeability; achieving both sets of objectives was too much to expect)

u In Conor Medsystems v Angiotech Pharmaceuticals Inc [2008] RPC 716 it was held
that disclosing that the invention works, and how to perform it, is different from
explaining why it works. The latter is not required.

u In Warner-Lambert v Actavis [2018] UKSC 56, the Supreme Court considered the
sufficiency of claims in a patent for a second medical use of a substance for
the treatment of neuropathic pain. By a majority, it was held disclosure was
insufficient. Second-use patents present a particular problem for the courts in
establishing sufficiency. If all that had to be disclosed was the new purpose, there
was a risk that patents would be obtained for speculative inventions. To avoid this
difficulty, courts had held that a ‘plausible’ claim for efficacy of the new use was
required. In this instance, the plausibility standard was not satisfied.

u In Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27, taking a strict
approach to the sufficiency requirement, it was held that a product patent
application for types of transgenic mouse was invalid. The teaching of the patent,
combined with the available common general knowledge at the priority date,
enabled the person skilled in the art to make some, but not all, of the products
within the scope of the product’s claim. Accordingly, the test of sufficiency was not
satisfied.

u In Fibrogen Inc v Akebia Therapeutics Inc [2021] EWCA Civ 1279 the Court of Appeal
held that it was useful to categorise objections on the ground of insufficiency into
three classes: classical insufficiency, Biogen insufficiency (excessive claim breadth)
and uncertainty.
Intellectual property 15 Introduction to patents page 257
Under s.14(5), the claim or claims that are required to define the matter for which
the applicant seeks protection, must be clear and concise, be supported by the
description and relate to one invention or a group of inventions so linked as to form a
single inventive concept. As a result of s.60 of the Patents Act 1977, claims may relate
to a product (a thing) or a process (how to make something or do something or use
something). A patent may have all product claims or all process claims or have a mixture
of claims; thus a pharmaceutical patent may have claims both for a new compound and
how to make it.

Under s.15, the filing date of the patent will be the date on which certain minimum
formalities are satisfied. The filing date is to be treated as the ‘priority date’ unless the
application is based on an earlier Convention application. Under s.5, this will occur
where the UK application is based on an earlier filing in respect of the same subject
matter in another Contracting State of the Paris Convention (claiming Convention
priority was explained in Chapter 3). If this is the case, the priority date of the UK
application is in effect backdated to the filing in the other Convention country. The
priority date of a patent is of crucial importance, as it is the date on which the validity
of the patent is assessed (see Chapter 16).

15.4.2 Publication
Eighteen months after filing, the application is published in the Patents Journal. The
date of publication is significant in relation to infringement, as once the patent has
been granted, the patentee can sue for any acts of infringement committed between
the publication date and the date of grant (Patents Act 1977 s.69). If the patent
contains information prejudicial to public safety, publication can be prohibited under
ss.22 and 23. Unlike EPO procedure, there is no system of opposition, but third parties
can make observations to UKIPO under s.21.

15.4.3 Search and preliminary examination

Under s.17(4), the Patent Office Examiner shall make such investigation as is reasonably
practicable and necessary to identify the documents needed for substantive
examination to determine whether the invention is new and contains an inventive
step. Under s.15A (inserted into the 1977 Act by the Regulatory Reform (Patents) Order
2004 (SI 2004/2357)), the Examiner shall determine whether the application complies
with the formal requirements of the Act.

15.4.4 Substantive examination

Under s.18, the patent application is examined as to whether it complies with the
substantive requirements of novelty and inventive step in the light of the search
report produced by UKIPO under s.17.

15.4.5 Grant
If the application is successful, then upon payment of the correct fee the patent will be
granted (s.18(4)). The grant must be made within a maximum period of four-and-a-half
years from the priority date. The fact that the patent has been granted is published
in the Patents Journal (s.24). It will last for a maximum of 20 years, calculated from
the filing date of the application (s.25), but from the fifth year onwards, its continued
existence is subject to the payment of annual renewal fees, which increase with each
year of the life of the patent.

15.4.6 Amendment
A patent applicant can always seek to amend the patent application during the course
of its progress through UKIPO procedure (see ss.17, 18 and 19). Similarly, a patent can be
amended once it has been granted (see ss.27, 73 and 75). However, there are restrictions
on amendment in s.76. In essence, the patentee cannot extend the description so as to
disclose additional matter and cannot expand the scope of protection in the claims. Any
amendment which so broadens the patent is a ground of revocation under s.72(1)(d) and
page 258 University of London
(e). Whether an amendment has such a broadening effect is determined through the
eyes of the skilled addressee (Re Flexible Directional Indicators Application [1994] RPC 207;
Bonzel v Intervention (No 3) [1991] RPC 553).

Summary
The five steps in obtaining a UK patent are filing, publication of the application, search
and preliminary examination, substantive examination and grant. Publication occurs
within 18 months of filing. Grant occurs within four-and-a-half years of the filing date.
The patent’s validity is assessed in the light of the state of the art at the priority date,
which may be the actual UK filing date or, where Convention priority is claimed, the
date of the first filing for that patent in any Contracting State of the Paris Convention.

Self-assessment questions
1. Why is the date of publication of a patent application important?

2. What is ‘sufficiency’?

3. Can an application contain a mixture of product and process claims?

15.5 Key issues in patent cases

Core text
¢ Bently et al., Chapter 20 ‘Internal requirements for patentability’ Section 3
‘Claims’.

¢ Cornish, Chapter 4 ‘The patent; grant and amendment’ paras 4–37 to 4–50.

¢ Karapapa and McDonagh, Chapter 15 ‘Introduction to patents’ Section 15.5.

¢ Patents Act 1977, ss.125, 130(1).

Essential reading
¢ EPC 2000 Article 69 and the Protocol to Article 69.

¢ Case: Dyson Appliances Ltd v Hoover Ltd [2001] RPC 473.

When you read patent cases, you will find that certain issues frequently arise. We deal
with them here by way of introduction.

15.5.1 The inventive concept

One of the tasks which a court dealing with a patent infringement action has to
undertake is to decide what the patent is all about. This is usually referred to as
‘identifying the inventive concept’. Some cases call it the ‘epitome’ of the invention
(Dyson Appliances Ltd v Hoover Ltd [2001] RPC 473), others describe the process as
identifying the essence of the invention (Unilever v Chefaro [1994] RPC 567 at 580 per
Jacob J; H Lundbeck A/S v Generics (UK) Ltd [2009] RPC 407 (HL) at para 30). Identifying
the inventive concept is done by construing the claims in the light of the description
of the invention. However, when doing so the court should expressly or by implication
take into account the problem that the patentee was trying to solve (Biogen Inc v
Medeva plc [1997] RPC 1 at 45 per Lord Hoffmann). As an example of how the court used
the problem and solution test (as it is called) to identify the inventive concept, see
Wheatley (Davina) v Drillsafe Ltd [2001] RPC 133. In Schütz (UK) Ltd v Werit (UK) Ltd [2013]
FSR 395, the Supreme Court has said that the question of whether it is necessary to
show that the defendant took the inventive concept of a patent in order to be liable
for patent infringement requires a nuanced approach. Much depends on the wording
of the claims and on what the defendant has actually done.
Intellectual property 15 Introduction to patents page 259

Summary
One of the first tasks of the court in any patent litigation is to identify the inventive
concept or essence of the invention. This is done by reading the patent claims in the
light of the description and by identifying the problem that the inventor was trying to
solve.

15.5.2 The skilled addressee and their common general knowledge

A patent specification is a unilateral statement by the patentee. The specification
both describes the invention and demarcates the scope of the monopoly which the
patentee wishes to claim as theirs. However, the patent specification does not exist
in a vacuum: it is deemed to be addressed to the skilled addressee (also known as the
skilled reader).

The role of the skilled addressee in patent law

The skilled addressee is a judicial construct, a legal fiction. They are not a real person,
but a hypothetical creature through whose eyes various issues in patent law are
determined. The reason for having such a person is to impart objectivity (Lilly Icos Ltd v
Pfizer Ltd [2001] FSR 201 at para 62). When you read the chapters which follow, you will
discover that the skilled addressee is used by the judges to:

u construe the claims of the patent in the light of the description of the invention
and any drawings contained in the patent specification

u determine whether an invention is new or (to put this another way) whether
the prior art contains enough information by way of enabling disclosure that the
skilled addressee could have put the invention into effect before the priority date
(this will affect whether the patent is or is not valid)

u determine whether an invention possesses inventive step, that is, it was not obvious
to the skilled addressee (this will affect whether the patent is or is not valid)

u determine whether the description of the invention is sufficient (this will affect
whether the patent is liable to revocation for lack of sufficiency)

u determine whether an invention has been the subject of an impermissible

amendment, so that it is liable to revocation for having extended the description
or claims

u determine whether an invention has been infringed by a product or process which

is not literally within the wording of the claims to decide whether the patent in
suit is capable of industrial application (see Eli Lilly and Company v Human Genome
Sciences Inc [2011] UKSC 51).

Characteristics of the skilled addressee

The qualifications and level of experience of the skilled addressee are for the court
to determine in each case. These will vary depending on the field of technology with
which the patent is concerned and how advanced the invention is. In the case of
mechanical patents the skilled addressee is likely to be a graduate engineer in the
relevant discipline with practical experience in the field in question (Dyson Appliances
Ltd v Hoover Ltd [2001] RPC 473). Where the patent involves genetic engineering, as in
Re Genentech’s (Human Growth Hormone) Patent [1989] RPC 613, the skilled addressee
will be a team of postdoctoral researchers experienced in recombinant DNA; where
it involves hand-held devices for accessing the internet, the skilled addressee is likely
to have a Master’s degree in information technology (Research in Motion UK Ltd v Inpro
Licensing SarL [2006] RPC 517).

The characteristics and abilities of the skilled addressee have also been explained by
the judges. Such a person is:
page 260 University of London

…deemed to have looked at and read publicly available documents and to know of
public uses in the prior art. He understands all languages and dialects. He never misses
the obvious nor stumbles on the inventive. He has no private idiosyncratic preferences or
dislikes. He never thinks laterally. He differs from all real people in one or more of these
characteristics… (Lilly Icos Ltd v Pfizer Ltd [2001] FSR 201 at para 62).

Such a person does not possess a spark of inventiveness (per Lord Reid in Technograph
v Mills & Rockley [1972] RPC 346 at 355) but is sufficiently interested in their work to
want to improve on the prior art (per Oliver LJ in Windsurfing International v Tabur
Marine [1985] RPC 59, at 69–71). The skilled addressee is expected to try experiments
which appear to them to be technically rather than commercially worthwhile
(Hallen v Brabantia [1991] RPC 195). Where the technical field is very advanced (such
as biotechnology), the addressee is to be credited with sufficient time and the best
available equipment to carry out the work (Genentech Inc’s Patent [1989] RPC 147).

More recent cases have described the skilled addressee as ‘determined but prosaic’
(Koninklijke Philips Electronics NV v Princo Digital Disc GmbH [2003] EWHC 1598) and
a ‘nerd’, ‘if real, would be very boring’ but ‘not a complete android’ (per Jacob LJ in
Rockwater Ltd v Technip France SA (formerly Coflexip SA) [2004] RPC 919 CA, at paras 6–15).
The skilled addressee will possess the prejudices of others working in that field of
technology. In Dyson Appliances Ltd v Hoover Ltd [2001] RPC 473, the vacuum cleaner
industry accepted without question that vacuum cleaners without dust collecting
bags would not work. The court held that the skilled addressee would have such a
‘mind-set’ when reading the claimant’s patent.

Last, the skilled addressee of the patent may be a team (Valensi v British Radio
Corporation [1972] RPC 373 at 450; Re Genentech’s (Human Growth Hormone) Patent
[1989] RPC 613). Even if not in a team, the skilled addressee may well consult another
for technical help in understanding the patent. As an example, see Vericore Ltd v
Vetrepharm Ltd [2003] EWHC 111 where the patent involved the use of chemicals
to treat sea-lice in fish. It was said that the skilled addressee would be either a
toxicologist or a fish health expert and the one would consult the other.

Frequently the courts warn against assuming too high a level of qualifications and
ability on the part of the skilled addressee. The skilled addressee is not to be equated
with specialist witnesses called by the claimant and defendant to assist the court. The
former is meant to be the average technician in the area to which the patent relates.
These latter individuals are usually experts in their field.

The Court of Appeal has suggested that in a patent case involving ground-breaking
technology, because the skilled addressee will ‘learn’ from the patent specification,
the characteristics of the skilled addressee might not be the same for all the issues
to be decided by the court. There might thus be a difference between the skilled
addressee for the purposes of inventive step and for sufficiency because the former is
determined at the priority date, the latter after grant. See Schlumberger Holdings Ltd v
Electromagnetic Geoservices AS [2010] RPC 851 (CA).

In Alcon Research LLC v Actavis Group PTC EHF [2021] EWHC 1026 (Pat) Meade J stated
that the correct approach to determining the skilled addressee was set out in Illumina
Cambridge Ltd v Latvia MGI Tech SIA [2021] EWHC 57 (Pat). Under this approach, when
considering obviousness, it is necessary to ask what problem the invention aimed to
solve. The identification of this problem allowed a court to determine the established
field in which the problem could be located. The notional person or team in that
established field was the relevant person skilled in the art.

Common general knowledge

The skilled addressee is deemed to come equipped with certain background
information. This is called ‘common general knowledge’. Note that the phrase contains
the words ‘common’ and ‘general’. These should tell you something about the nature
of what the skilled addressee already knows before they are used by the court to
determine one or more of the issues listed above.
Intellectual property 15 Introduction to patents page 261
Again, there are numerous judicial explanations of what the phrase ‘common general
knowledge’ means. The leading explanation is by Sachs LJ in General Tire v Firestone
[1972] RPC 457 at 497, 500 where he described it as standard texts or material accepted
without question by those in that line of work. Common general knowledge, however,
does not include prior patents.

Other descriptions of common general knowledge include ‘the technical background

of the notional man skilled in the art’ (Raychem Corporation’s Patent [1998] RPC 31,
[1999] RPC 497, CA); ‘a good basis for further action’ (Wheatley (Davina) v Drillsafe Ltd
[2001] RPC 133 per Aldous LJ); and ‘good background technical knowledge’ (Rockwater
Ltd v Technip France SA (formerly Coflexip SA) [2004] RPC 919 per Jacob LJ at paras 16–21).
Where the patent involves sophisticated technology, common general knowledge
may be worldwide (Re Genentech’s (Human Growth Hormone) Patent [1989] RPC 613).

Frequently the courts warn against assuming too high a level of common general
knowledge. The fact that something is known to some or indeed recorded does not
make it common general knowledge and the court should be sensitive to the fact that
not all skilled addressees will have equal access to information (Beloit Technologies
v Valmet Paper Machinery [1995] RPC 705, [1997] RPC 489). The knowledge which the
skilled addressee possesses should be both common and general to the average
person in that field of technology. For consideration, and application, of the concept of
common general knowledge, see the judgment of Arnold J in Generics (UK) v Warner-
Lambert [2015] EWHC 2548 (Pat).

Self-assessment questions
1. Summarise the role of the skilled addressee in patent law.

2. What are the characteristics of the skilled addressee?

3. What is meant by ‘common general knowledge’?

Summary
The skilled addressee is a hypothetical person used by the court to determine
objectively a number of issues in patent law. They are the average skilled person
working in the area of knowledge to which the patent relates. They will be
appropriately qualified and have practical experience, but this will vary from case to
case, depending on the nature of the invention. The skilled addressee comes equipped
with the common general knowledge of those working in that area of technology. This
is good background information, known to and accepted without question by all.

15.5.3 The role of patent claims

The claims of a patent fulfil a vital role. They are the patentee’s attempt to demarcate
the scope of the monopoly. By analogy with land law, a map will show the boundaries
of an owner’s fee simple estate. In the case of a patent, there is no pictorial means of
showing the patentee’s territory. Instead, this must be done in words. The claims are
important in two particular respects. They are compared with the prior art in order
to determine whether the patent is valid, and they are compared with the alleged
infringement in order to determine whether the defendant’s product or process falls
within the territory marked out by the patentee’s words.

All this flows from certain key statutory provisions. Read s.125 of the Patents Act
now, together with the definition of ‘patent’ in s.130(1). Observe how the former
incorporates Article 69 of the European Patent Convention together with the Protocol
thereto into UK patent law. Note also how the two provisions link the words ‘patent’,
‘invention’ and ‘patented invention’, and that an invention and its scope is to be
determined entirely by the wording of the claims. The claims are everything. They
determine what is the invention in respect of which the patent has been granted and
the scope of protection to be accorded to that invention. The same construction of the
claims has to apply for all the purposes listed above in which the skilled addressee is
used in patent law, which is why a court will attempt to construe the claims at a fairly
page 262 University of London
early stage of its judgment. The claims are to be read purposively through the eyes of
the skilled addressee. The court should ask but one question: ‘What would a person
skilled in the art have understood the patentee to have used the language of the claim
to mean?’ (Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] 1 All ER 667 at para 34 per
Lord Hoffmann).

Self-assessment questions
1. Summarise the role of the claims in a patent document.

2. How are claims to be interpreted?

Activity 15.3
Read the judgment of Dyson v Hoover. Then write a summary of how the judge in
that case (Michael Fysh QC) deals with the dispute between the parties.
Note the action plan suggestion given in the feedback.

Sample examination question

The subject matter of this chapter forms an integral part of the substantive law of
patents set out in Chapters 16, 17 and 18. You should be aware that the examiners
may set multi-part ‘bookwork’ questions to test your understanding of and critical
appreciation of key concepts of patent law. Although most of these concepts are
dealt with later in this module guide, a few have been covered in this chapter. You
should therefore ensure that you have a good understanding of the contents of
this chapter, as part-questions could be set on the skilled addressee, the role of the
claims and the meaning of key words such as ‘inventive concept’, ‘common general
knowledge’ and ‘sufficiency’. If need be, you should return to this chapter once you
have completed the remaining three chapters in this module guide.
Intellectual property 15 Introduction to patents page 263

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.

Tick a box for each topic. Ready to Need to Need to

move on revise first study again

I can summarise the historical and external factors

which have influenced UK patent law.   

I can discuss the theoretical justifications for the

patent system.   

I can explain in outline the procedure whereby UK

patents are granted.   

I can explain the meaning of key concepts likely to

be encountered in patent cases.   

I can list the issues which are likely to require

determination in a typical patent case.   

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

15.1 The history of patent law  

15.2 Justifications for patent protection  

15.3 Understanding the Patents Act 1977  

15.4 Outline of UKIPO procedure  

15.5 Key issues in patent cases  

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Notes
16 Patentability

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 266

16.1 The meaning of ‘an invention’ . . . . . . . . . . . . . . . . . . . . . . 267

16.2 Excluded subject matter . . . . . . . . . . . . . . . . . . . . . . . . 267

16.3 Novelty . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 275

16.4 Inventive step . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 279

16.5 Capable of industrial application . . . . . . . . . . . . . . . . . . . . 282

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . 286

page 266 University of London

Introduction
The purpose of this chapter is to deal with the criteria for patentability. These are
relevant both when deciding whether something is capable of patent protection, and
in the context of an infringement action where a defendant alleges that the claimant’s
patent should be revoked for invalidity. It is important therefore that you master this
chapter before you approach the material in Chapter 18, where revocation will be
considered.

The patentability of an invention, as defined by the Patents Act, comprises four

elements, three positive and one negative. The positive ones are that the invention
possesses novelty, inventive step and industrial applicability. The negative criterion
is that it must not consist of excluded subject matter. All four elements are the
subject of an extensive body of case law, some of which emanates from the Boards of
Appeal of the European Patent Office (EPO). It is important that you make the effort to
read the cases, even if some of the technology discussed in them seems difficult. You
should concentrate on the legal principles established by these cases.

When reading the provisions of the Patents Act 1977 dealing with patentability, you
should bear in mind their origin in the European Patent Convention (EPC). United
Kingdom judges are now in the habit of referring directly to the wording of the EPC
rather than the Act itself, and it is a habit which you should consider.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u explain the grounds on which an invention may be denied patent protection,
and discuss the underlying public policy behind each of the exclusions from and
exceptions to patentability
u explain the requirement of novelty in patent law and apply the judicial tests for
lack of novelty in problem questions
u explain what is meant by the requirement of inventive step, and apply the test
established in case law in problem questions
u explain what is meant by the requirement that an invention must be capable of
industrial application
u list the criteria for patentability.
Intellectual property 16 Patentability page 267

16.1 The meaning of ‘an invention’

Core text
¢ Bainbridge, Chapter 12 ‘Requirements for patentability’ pp.432–34.

¢ Karapapa and McDonagh, Chapter 17 ‘Patentability’ Sections 17.1 and 17.2.

Essential reading
¢ Patents Act 1977, s.1.

Further reading
¢ Cases: Biogen v Medeva [1997] RPC 1; HITACHI/Auction method [2004] EPOR 548.

The elements which go to make up a patentable invention are set out in s.1 of the
Patents Act 1977 which is based on Article 52 EPC. Read these two provisions carefully
now. A debate in some of the cases is whether there is a separate requirement of
‘an invention’ which must be satisfied before a patent can be granted or whether an
invention is simply a combination of all the elements in s.1. The UK cases in which it
has been said that there is a separate requirement of an invention have all involved
recombinant DNA technology: as an example, see Genentech Inc’s Patent [1989] RPC 147,
in particular the judgment of Mustill LJ. A contrasting view by a differently constituted
Court of Appeal can be found in Chiron Corporation v Organon Teknika Ltd (No 12) [1996]
FSR 153, where it was said that an invention is simply the outcome of satisfying the
patentability criteria. This later case had the merit of following the thinking at the
time of the EPO in HOWARD FLOREY/Relaxin [1995] EPOR 541. The opening words of
s.1(1) (‘that is to say’) lent support to this approach. The debate continued in Biogen v
Medeva [1997] RPC 1 where Lord Hoffmann and Lord Mustill offered opposing views as
to whether it was necessary to identify ‘an invention’.

Current case law from the EPO Boards of Appeal regards ‘an invention’ as a separate
requirement, a prerequisite for the examination with respect to novelty, inventive
step and industrial application. This is supported by reference to the wording of
Article 52 EPC, both in its original (1973) and current (2000) version. There is no explicit
definition of ‘an invention’ in the EPC. The EPO has refused to define the term, but
has explained that what comprises an invention is very broad. What matters is the
presence of technical character (PBS PARTNERSHIP/Controlling Pension Benefits System
[2002] EPOR 522). ‘Technical character’ means that there must be a physical entity or
concrete product, man-made for a utilitarian purpose. Non-inventions, however, are
those of an entirely abstract nature, for example, theories or mathematical methods
or economic calculations. The current thinking of the EPO Boards of Appeal is to be
found in PBS PARTNERSHIP/Controlling Pensions Benefit System [2002] EPOR 522; HITACHI/
Auction method [2004] EPOR 548; and DUNS LICENSING ASSOCIATES/Estimating Sales
Activity [2007] EPOR 349.

Activity 16.1
Read the opinions of Lord Mustill and Lord Hoffmann in Biogen v Medeva [1997] RPC.
u What does each say about the word ‘invention’? Do their respective views
suggest any judicial disquiet about the granting of patents in respect of living
matter?
No feedback provided.

16.2 Excluded subject matter

Core text
¢ Bainbridge, Chapter 12 ‘Requirements for patentability’ pp.464–93, 443–68.

¢ Bently et al., Chapter 17 ‘Patentable subject matter’.

¢ Cornish, Chapter 5 ‘Validity’ paras 5–052 to 5–081.

¢ Karapapa and McDonagh, Chapter 17 ‘Patentability’ Sections 17.3 and 17.4.

page 268 University of London

Essential reading
¢ Patents Act 1977, s.1(2), s.1(3) and Schedule A2, s.4.

¢ EPC Articles 52 and 53.

¢ Directive 98/44 on the legal protection of biotechnological inventions.

¢ Cases: VICOM/Computer related invention [1987] EPOR 74; Re Fujitsu’s Application

[1997] RPC 610; HARVARD/Onco Mouse [1990] EPOR 501; C-377/98 Kingdom of the
Netherlands v European Parliament and Council of the European Union [2001] ECR
I-7079.

Overview
Two Articles in the EPC deal with what cannot be patented, namely Article 52(2) and
Article 53. The former contains the list of exclusions from patentability. The latter
was revised in 2000 with the objective of bringing together all the exceptions to
patentability in a single article.

The equivalent provisions in the Patents Act 1977 are, first, s.1(2) which deals with
excluded subject matter. The EPO has stated that the common denominator is the lack of
technical character. Examined closely, however, the list of excluded items is not a logical
class (Re CFPH LLC’s Application [2006] RPC 259). The enactment of Article 53 EPC 2000
is not in a single subsection, but is to be found in s.1(3), Schedule A2 and s.4A. Here the
common denominator is that although the subject matter of the invention possesses
technical character, it is denied patent protection for reasons of public policy.

16.2.1 Exclusions from patentability

The list of items excluded from patentability are set out in s.1(2) of the Patents Act 1977,
based on EPC Article 52. Read both of these provisions now. Observe how the list is
qualified by a proviso. You will probably find the wording of the EPC easier to understand,
that is, that ‘patentability is only excluded to the extent to which the patent relates to
such subject matter or activities as such’. The qualification ‘as such’ therefore needs
to be read into each paragraph of s.1(2). When applying s.1(2), you should remember
that everything depends on the wording of the claims. It is the claims which define the
subject matter of the invention (s.14(5)). This means it is up to the patentee to word the
specification in such a way that it avoids the various exclusions.

The meaning of ‘as such’

The way the phrase ‘as such’ is to be interpreted was originally explained by the EPO in
VICOM/Computer related invention [1987] EPOR 74. This states that the ‘whole contents’
approach should be adopted. The patent is to be read as a whole to see if it achieves
a technical advance, rather than ignoring those aspects which are excluded from
protection and then assessing whether what remains is patentable. The emphasis is on
what the invention does, that is, whether it makes a technical contribution to solving
a problem. If it is merely a quicker way of performing a task which has been done
previously by hand or by the human mind, then even if this results in efficiency it is not
a patentable invention: Re Fujitsu’s Application [1997] RPC 610 (CA). The VICOM approach
was adopted by the UK courts: Genentech’s Application [1989] RPC 147; Re Fujitsu’s
Application [1997] RPC 610, although the EPO itself has moved on from VICOM.

The EPO’s current method of approaching the list of exclusions can be found in PBS
PARTNERSHIP/Controlling Pensions Benefit System [2002] EPOR 522 and HITACHI/Auction
method [2004] EPOR 548. Once it has been determined that there is an ‘invention’, that
is, something having technical character, whether that invention falls within the list
of exclusions is decided by asking if its technical contribution is obvious. The correct
approach therefore is to see if there is an invention. In the former case, the claim for
a method for determining pensions benefits was held not patentable, being caught
by the exclusion. The apparatus which made the calculations was not caught by the
exclusion, but nevertheless failed because it lacked inventive step. In the latter case,
a computerised Dutch auction system, which claimed to overcome the technical
Intellectual property 16 Patentability page 269
deficiencies of previous systems by synchronising key information during the online
bidding process was held in principle to be an invention and not excluded from
patentability, but both the method claims and the apparatus claims were denied
protection because they were obvious. The case contains a very clear statement of the
EPO’s policy on excluded subject matter. You should read it.

The current UK thinking is to be found in Aerotel Ltd v Telco Holdings Ltd/Macrossan’s

Application [2007] RPC 117. In this case, Jacob LJ set out a four-step formula for dealing
with excluded subject matter, namely that, first, one should properly construe
the claim; next, one should identify the actual contribution; third, one should ask
whether such a contribution fell solely within the list of excluded subject matter;
and, last, one should check whether the actual or alleged contribution was actually
technical in nature. Subsequently, the EPO criticised this approach in DUNS LICENSING
ASSOCIATES/Estimating Sales Activity [2007] EPOR 349 where it repeated its earlier test,
namely that one first considered whether there was ‘an invention’. If there is, then the
exclusions do not apply, but the invention then has to be assessed for patentability.
United Kingdom cases since have struggled to reconcile Aerotel/Macrossan with DUNS
LICENSING ASSOCIATES: see Astron Clinica Ltd v Comptroller General of Patents [2008] RPC
339 and Symbian Ltd v Comptroller-General of Patents [2009] RPC 1.

The list of exclusions

Going through the four paragraphs of s.1(2) in turn, discoveries, scientific theories or
mathematical methods amount to abstract ideas. There is no applied technology.
There is, however, a fine dividing line between a patent which claims a discovery and
one which claims its practical application. In Chiron v Organon (No 12) [1996] FSR 153
the Court of Appeal held that although the identification of Hepatitis C amounted to
a discovery, the patent was valid because what was claimed were testing kits which
enabled doctors to identify whether someone had the disease (see also the views
of Aldous LJ in Re Fujitsu’s Application [1997] RPC 608). Aesthetic creations (such as
architect’s plans – ESP’s Application (1945) 62 RPC 87) are excluded as they are best left
to copyright.

Case law on the exclusions in s.1(2)(c) (methods of performing a mental act, etc. and
computer programs) demonstrate neatly the technical contribution point in VICOM. In
Raytheon’s Application [1993] RPC 427 patentability for an automated ship identification
system was denied as the alleged invention merely mechanised a task previously
done by the human eye, and in Merrill Lynch’s Application [1989] RPC 561, an automated
dealing system was held to be no different than the previous method of trading in
securities.

With regard to the computer program exclusion, an overview of the large body of EPO
case law is given in Aerotel Ltd v Telco Holdings Ltd/Macrossan’s Application [2007] RPC
117. The initial approach was to ask whether the machine, as programmed, achieved
a technical advance: see VICOM and KOCH & STERZEL/X-ray apparatus [1988] EPOR 72.
The second phase of the EPO case law stated that the exclusion was only directed to
those computer programs which amount to abstract creations lacking in technical
character, but that programs which had a technical character were patentable: IBM/
Computer programs [1999] EPOR 301. When does a computer program have a technical
character? According to the case, a program will be potentially patentable (subject to
novelty and inventive step) if it produces additional technical effects going beyond the
normal physical interaction between hardware and software. A key feature of the case
is the concern expressed by the EPO that the Patent Offices of the USA and Japan were
perceived as being more generous towards software patents. UKIPO subsequently
published a practice notice expressly adopting the criteria of the EPO in the IBM case.
The third phase of the case law can be found in PBS PARTNERSHIP/Controlling Pensions
Benefit System [2002] EPOR 522 where the EPO adopted the ‘any hardware’ approach,
so that the apparatus used to run a program would be patentable but the process
which operated that equipment would not be. The current thinking is found in DUNS
LICENSING ASSOCIATES/Estimating Sales Activity [2007] EPOR 349 which asks first whether
there is an invention (something tangible) and then considers whether it is new,
inventive and capable of industrial application.
page 270 University of London
There were a number of UK decisions on the exclusion relating to computer programs
prior to the decision in Aerotel Ltd v Telco Holdings Ltd/Macrossan’s Application [2007]
RPC 117. In most of them the patent application was rejected for lack of technical
effect. They include Merrill Lynch’s Application [1989] RPC 561 (mentioned above), Re
Gale’s Patent [1991] RPC 305 (method of calculating square root stored on ROM) and
Re Fujitsu’s Application [1997] RPC 610, CA (which concerned a method of processing
crystalline structures by computer which saved chemists the time and trouble
of building such structures by hand). In this last case, you should note Aldous LJ’s
adoption of VICOM and his general observations about the need for a technical
contribution. One (rare) successful case was Quantel v Spaceward Microsystems Ltd
[1990] RPC 83, where the patent involved a computerised video graphics system.

The last exclusion, in paragraph (d), concerns the presentation of information. Examples
of unsuccessful patents in this category include Re Townsend’s Application [2004] EWHC
482 (which concerned an attempt to patent an advent calendar) and Re Crawford’s Patent
Application [2006] RPC 345 (which concerned a display system for buses). The Patents
Court has stated unequivocally that the ‘mental acts’ exclusion should be narrowly
construed (see Halliburton Energy Services Inc’s Application [2011] EWHC 2508).

One matter you will come across in your reading is the current controversial practice
of the US Patent Office in granting business methods patents. UKIPO and the EPO have
indicated that they do not intend to follow this.

Summary
The exclusions from patentability found in s.1(2) of the Patents Act (based on Article
52 EPC) are items which lack technical effect. Each exclusion is qualified by the words
‘as such’. The original method of interpreting the words ‘as such’ was the ‘whole
contents’ approach of the EPO in the VICOM case. This required the patent to be read
as a whole in order to determine whether it makes a technical contribution. The
current approach is that set out in HITACHI which involves asking whether there is an
invention (something concrete and man-made) and, if so, whether it then satisfies the
requirements of patentability.

16.2.2 Exceptions to patentability

Here (in theory) the criteria for patentability are met, but the right to obtain a patent
is denied for reasons of public policy. All the exceptions are now to be found in
Article 53 EPC.

A preliminary point is that this is an area where EU Directive 98/44/EC on the legal
protection of biotechnological inventions (hereafter called the Biotech Directive) has
had a major impact. The Directive requires Member States to protect biotechnological
inventions (Article 1) and declares that inventions which satisfy the criteria for
patentability shall be patentable even if they concern a product consisting of
biological material (as defined in Article 2) or a procedure whereby biological material
is produced (Article 3(1)). Further, biological material which is isolated from its natural
environment or which is the subject of a technical process is patentable even if it
occurs in nature (Article 3(2)). There are a number of exclusions in Articles 4–6 of the
Directive. The Directive was the subject of an unsuccessful challenge before the CJEU in
C-377/98 Kingdom of the Netherlands v European Parliament and Council of the European
Union [2001] ECR I-7079 and has been implemented in UK law.

One aspect of the Netherlands case is that it explains the relationship between the
Directive and the EPC, the former being an EU legislative measure, the latter being
a Convention promulgated by the Council of Europe. The Opinion of the Advocate
General and the ruling of the CJEU reveal two things. First, that the EPC Implementing
Regulations were modified so as to incorporate the wording of Article 6 of the
Directive. Further, when the CJEU rejected the challenge to the Directive on policy
grounds, it adopted the case law of the EPO Boards of Appeal (explained below). In
effect there has been two-way traffic between the EU and the EPC on the availability of
patent protection for living matter. Although each operates its own legal system, they
contain the same basic principles.
Intellectual property 16 Patentability page 271

Patents contrary to public policy

The first exclusion prohibits patents that are contrary to public policy: see s.1(3) of the
Patents Act. Read the wording of s.1(3) now. Then compare this wording with that of
Article 27(2) of the TRIPS Agreement and with EPC Article 53(a). Examples of patents
contrary to public policy are listed in Schedule A2, paragraphs 3(a)–(e) of the Patents
Act 1977. You will see that there are now two forms of morality/public policy exclusion.
First, there is the general provision contained in Article 53(a) and s.1(3) of the Patents
Act 1977, which precludes the patenting of inventions where the exploitation of the
invention would be contrary to morality or public policy. Second, deriving from the
Biotechnology Directive (but now also to be found in the PA 1977 and the EPC), there is
a list of specifically excluded inventions (including, for example, processes for cloning
human beings).

There has been no UK case law on s.1(3). In relation to Article 53(a) of the EPC (the
parent provision), the EPO has generally adopted a robust attitude to attempts to
challenge patents on grounds of morality. It has demonstrated considerable reluctance
to assume the role of moral censor or adjudicator of public policy. Simply because
a technology is perceived as controversial (for example, using animals to develop a
cure for cancer or modifying plants so that they are resistant to disease) is not a bar
to the patentability of the subject matter. Although the EPO is required to balance the
benefits to society against harm to living matter, the onus has been placed on those
challenging the patent to adduce evidence of conclusively documented hazards. The
EPO’s reluctance to employ the power that it has under Article 53(a) is apparent in the
cases determined under this provision, including HARVARD/Onco Mouse [1990] EPOR 501;
PLANT GENETIC SYSTEMS/Glutamine synthetase inhibitors [1995] EPOR 357; HOWARD FLOREY/
Relaxin [1995] EPOR 541; and LELAND STANFORD/Modified Animal [2002] EPOR 16.

The one decision which goes against this trend is that of the Enlarged Board of Appeal
in G 2/06 WARF/Stem Cells [2009] EPOR 129. The patent there contained a series of claims
involving the use of human embryonic stem cell cultures. By combining Article 53(a)
with the text of the Implementing Regulations derived from Article 6(2) of the Biotech
Directive, the Board was able to hold that it was not possible to grant a patent for
an invention which necessarily involved the use and destruction of human embryos
from which the stem cells were derived. It was not the fact of the patenting itself
which was contrary to ‘ordre public’, rather it was the performing of the invention,
which included a step which contravened that principle. However, it stressed that
the decision did not concern the patentability in general of inventions relating to
human stem cells or stem cell cultures. It was only concerned with those inventions
concerning products which could only be obtained by the destruction of embryos. See
now also the judgments of the Court of Justice on the provisions of the Biotechnology
Directive: C-34/10 Oliver Brüstle v Greenpeace eV, 18 October 2011, in which the Court of
Justice interpreted Article 6(2) of the Biotech Directive. In C-364/13 International Stem
Cell Corporation v Comptroller General of Patents Designs & Trade Marks, considering
the specific prohibition on ‘uses of human embryos for industrial or commercial
purposes’, the Court held that an unfertilised human ovum, the division and further
development of which had been stimulated by parthenogenesis, was not a ‘human
embryo’ for the purpose of Article 6(2)(c) of the Biotech Directive (implemented
as para 3(d), Schedule A2, Patents Act 1977 in the UK) if it did not have the inherent
capacity to develop into a human being.

Activities 16.2 and 16.3

16.2 Read Schedule A2 paragraphs 1, 2 and 3(a) to (e) of the Patents Act 1977. Then
write a concise summary of the principles to be found there concerning the
patenting of living matter.

16.3 Read the decision of the EPO in HARVARD/Onco Mouse and then the later decision
in LELAND STANFORD/Modified Animal. What do these cases tell you about the
likely success of any challenge to a patent on the ground that it is contrary to
morality?
page 272 University of London

Animal and plant varieties and biological processes

The second exclusion in EPC Article 53(b) (Patents Act 1977 Schedule A2, paragraph 3(f))
denies patent protection for any variety of animal or plant or any essentially biological
process for the production of animals or plants, not being a micro-biological or other
technical process or the product of such a process (this wording should be compared
with that of the Biotech Directive Article 4 and with TRIPS Article 27(3)(b)).

Under this exclusion, morality aside, the issue is whether it is possible to patent
something found in nature. This reflects the difference between a discovery and
its technical application (see above). The traditional analysis is to the effect that
there is a difference between that found in nature and (a) a process for reproducing
that substance in the laboratory, and (b) the synthetic equivalent of that substance
resulting from the process: see the comments of Lord Wilberforce in Re American
Cyanamid (Dann’s) Patent [1971] RPC 425; and American Cyanamid v Berk [1976] RPC 231.
This principle is now set out in Article 5(2) of the Biotech Directive.

Paragraph 3(f) contains four separate elements. Again, when you look at this list, you
should remember that whether a patent falls within the exception depends on the
wording of the claims.

u The first prohibition is against the patenting of animal varieties. The EPO has
explained that there is a taxonomy (i.e. system of classification) implicit in the
exclusion, namely, in descending order, animals in general, animal species and
varieties within that species. Whether a patent relates to an animal variety
depends on the wording of the claims. Hence a genetically engineered mouse is
not an animal variety: HARVARD/Onco Mouse [1990] EPOR 501.

u The same thinking applies to the second element of paragraph 3(f), plant varieties.
As with animal varieties, the issue is to be decided by interpreting the claims. It
must be decided whether the patentee has claimed plants generally or a plant
variety. Only the latter is caught by the exception. Hence, in LUBRIZOL/Hybrid plants
[1990] EPOR 173 it was held that hybrid plants and their seeds were not a ‘plant
variety’ because they did not comply with the definition of a variety; and in PLANT
GENETIC SYSTEMS/Glutamine synthetase inhibitors [1995] EPOR 357 it was held that
genetically modified tobacco plants which were herbicide resistant were not a
plant variety. As with the prohibition on patenting animal varieties, the legislative
provision contains an implicit taxonomy, whereby a plant variety is the lowest level
of the classification system. However, unlike the animal variety exclusion, there is
a specific reason why plant varieties cannot be patented, and that is because there
is an alternative legal mechanism for protecting plant varieties, which exists under
the International Convention for the Protection of New Varieties of Plants 1961 as
amended in 1991 (the UPOV Convention).

u The next prohibition is against patenting essentially biological processes. The

EPO has stated that the test for whether a patent involves a biological process is
whether the claims relate to human, technical intervention or traditional cross-
breeding methods. Only the latter are denied patent protection: PLANT GENETIC
SYSTEMS/Glutamine synthetase inhibitors [1995] EPOR 357. In PLANT BIOSCIENCE/
Broccoli and STATE OF ISRAEL/Tomatoes [2011] EPOR 247, the EPO said that a non-
microbiological process for the production of plants which contains or consists of
the steps of sexually crossing the whole genomes of plants and of subsequently
selecting plants is in principle excluded from patentability as being ‘essentially
biological’ within the meaning of Article 53(b) EPC. Such a process does not escape
the exclusion of Article 53(b) EPC merely because it contains, as a further step or as
part of any of the steps of crossing and selection, a step of a technical nature which
serves to enable or assist the performance of the steps of sexually crossing the
whole genomes of plants or of subsequently selecting plants.

However, under the fourth element of paragraph (f), micro-biological processes are
deemed patentable. The suggestion from the EPO is that such processes are those
which are not visible to the human eye: PLANT GENETIC SYSTEMS/Glutamine synthetase
inhibitors [1995] EPOR 357.
Intellectual property 16 Patentability page 273
In G2/12 Tomatoes II and G3/12 Broccoli II, the Enlarged Board of Appeal of the EPO held
that, even where an essentially biological process for the production of a plant or
animal is not patentable, the animal or plant resulting from such a process may be
patentable. The exclusion under Article 53(b) (equivalent of Patents Act 1977, Schedule
A2, para 3(f)) did not apply, it was said, because it applied only to processes. However,
in December 2016, the EPO announced that it had stayed all proceedings relating
to the grant of such patents because it had received a notice from the European
Commission querying the availability of such patents under the Biotech Directive
(even though, of course, the Directive is not binding on the EPO). With reference to the
Biotechnology Directive, the Commission explained that the EU legislator’s intention
had been to exclude products from patentability when they were produced by an
essentially biological purpose. Subsequently, the EPO changed its procedures so that
such patents can no longer be granted. Most recently, in T-1063/18, which concerned
cultivated pepper plants, a Technical Board of Appeal ruled that the decisions of the
EBA in G2/12 Tomatoes II and G3/12 Broccoli II took precedence over the EPO’s regulatory
alteration of its procedures and therefore that such patents should continue to be
granted. In an attempt to resolve this question, the President of the EPO referred this
question to the EBA again and the Board has finally provided an end to this long-
running saga (G3/19 Pepper). Taking account of the EPO’s Administrative Council’s
change to the Rules on the application of the EPC to exclude products produced by
natural processes from patentability, the EBO abandoned its earlier interpretation
of the exclusion. The conclusive position now is that the products of essentially
biological processes cannot be patented.

Activity 16.4
Go over your notes on the wording of Schedule A2, paragraph 3(f) of the Patents
Act 1977 and the EPO cases which have explained this exception to patentability.
Morality aside, do you find the reasoning of the EPO logical?
No feedback provided.

Methods of treatment
Under Article 53(c) EPC, methods of treatment are not patentable. Again, as with the
other exceptions, much depends on the wording of the claims. Careful drafting by the
patentee’s patent attorney means that the exception can be avoided.

As a result of this exception being moved from Article 52(4) to Article 53, the Patents
Act 1977 was altered so that ss.2(6), 4(2) and 4(3) were deleted, with a new s.4A(1) being
inserted to implement Article 53(c). Section 4A(2), (3) and (4) contains the qualifications
to the method of treatment exception, namely the patentability of new substances used
in medical treatment, and the patentability of first and second medical uses of known
substances. Read s.4A as a whole now. Note that the ‘methods of treatment’ exception
comprises surgery and therapy (whether on the human or animal body) and methods of
diagnosis. The three alternative exclusions are cumulative, so that the claimed method
must be neither a therapeutic nor a surgical nor a diagnostic one: G 1/07 MEDI-PHYSICS/
Treatment by surgery, EPO Enlarged Board of Appeal, 15 February 2010.

The policy reason underlying the Article 53(c) exclusion is simply that medical
practitioners should not be hindered in their treatment of patients by patent
protection: Wyeth/Schering’s Applications [1985] RPC 545. Other jurisdictions may permit
the patenting of methods of treatment, as the TRIPS Agreement allows Contracting
States the option of whether or not to allow such patents: Anaesthetic Supplies Pty Ltd v
Rescare Ltd (1994) 122 ALR 141.

What is a method of treatment?

Cases decided under the Patents Act 1949 (which contained a similar exception) were
full of contradictions. Thus, it was not possible to patent the use of sound waves as
an anaesthetic (Neva’s Application [1968] RPC 481) nor a system of abortion (Upjohn
(Kirton’s) Application [1976] RPC 324) nor a method of filling teeth (Lee Pharmaceutical’s
Application [1975] RPC 51). However, it was possible to patent a system of evaluating
health screening tests (Bio-digital’s Application [1973] RPC 668), contraception
page 274 University of London
(Schering’s Application [1971] RPC 337) and a method for making a wound dressing
(Nolan’s Application [1977] FSR 435).

It has been held that under the 1977 Act the phrase ‘method of treatment’ is to be
given a wide interpretation, so that it would include a system of immunisation
(Unilever (Davis’) Application [1983] RPC 219).

The EPO has equally adopted a wide interpretation of Article 53(c) because of its
underlying policy reasons. It has stated that methods of diagnosis should be given a
broad meaning. In CYGNUS/Diagnostic methods [2006] EPOR 161, it said that if a claim
included features relating to the diagnosis for curative purposes representing the
deductive medical or veterinary decision phase as a purely intellectual exercise, the
preceding steps which are taken in making such a diagnosis, and the specific interactions
with the human or animal body which occur when carrying these out, it would be
caught by the wording of Article 53(c). Similarly, ‘method of treatment by surgery’ was
broadly interpreted in MEDI-PHYSICS/Treatment by surgery, EPO Enlarged Board of Appeal,
15 February 2010. Where the invention comprised a number of steps (as here, injecting
a special gas into the heart so that a scanner could take clearer pictures of the patient’s
blood flow), the fact that just one of the steps involved a surgical procedure meant
that the whole claim was caught by the Article 53(c) exclusion. The Board, however,
declined to provide a definition of surgery which would once and for all delimit the exact
boundaries of the concept because of the constant developments in medical science.

The EPO has made it clear that the treatment does not have to be administered
personally by a doctor or vet (DUPHAR/Pigs II [1989] EPOR 10; WELLCOME/Pigs I [1988]
EPOR 1). Even so, some of the earlier contradictions have survived, so that cosmetic
treatment falls outside the exclusion and so is patentable, as in ROUSSEL-UCLAF/Thenoyl
peroxide [1987] EPOR 1 (which involved a treatment for acne) and DU PONT/Appetite
suppressant [1987] EPOR 6 (which involved a slimming treatment). One extreme UK
decision is Re Stafford-Miller Ltd’s Application [1984] FSR 258 (where the judge upheld
a method of killing ectoparasites on humans as patentable, a patent application
described as being ‘on the absolute frontier of the law’).

The exceptions to s.4A(1)

Section 4A(2), (3) and (4) all qualify s.4A(1). Under s.4A(2), equipment and substances
used in methods of treatment can be patented. Without this, we are told, there would
be no pharmaceutical industry.

Further, under s.4A(3) (which used to be found in s.2(6) Patents Act), a known
substance used for the first time in a method of treatment can be patented: this
is because of the wording of Article 54(4) EPC. Read s.4A(3) now. In plain English,
it means that where a known substance is used for the first time in a method
of treatment (a ‘first medical use’), it can be patented for use in that method of
treatment even though the substance itself is not new. Novelty is ‘borrowed’ from its
new use, even though the use itself (the method of treatment) cannot be patented.

EPO case law extended this further to cover second and subsequent medical uses
(provided such uses were new and inventive): EISAI/Second medical indication [1979–85]
EPOR: B: 241. EISAI/Second medical indication has been put on a statutory basis as a result
of the new Article 54(5) EPC, enacted by s.4A(4) Patents Act. The EISAI principle was
accepted (initially with some reluctance) by UK courts: Wyeth/Schering’s Applications
[1985] RPC 545. An example of a successful second medical use patent is that in
American Home Products Corp v Novartis Pharmaceuticals UK Ltd [2001] RPC 159, where
the substance rapamycin, used initially as an anti-fungal agent, was found to be
beneficial in transplant surgery. However, where a naturally occurring substance (such
as taxol, derived from the yew tree, which is used in treating cancer) is the subject
of a patent, it is not possible to obtain a further patent after research has identified
its optimum dosage, as this is not a second (unexpected) therapeutic use of the
substance: Bristol-Myers Squibb Company v Baker Norton Pharmaceuticals Inc [2001] RPC
1. However, both the Court of Appeal and the Enlarged Board of the EPO have since
stated that there is nothing in principle to stop the patenting of a dosage regime
where this was new and not directed to a method of treatment: Actavis UK Ltd v Merck
Intellectual property 16 Patentability page 275
& Co Inc [2009] 1 WLR 1186; G2/08 ABBOTT RESPIRATORY/Dosage regime, 19 February 2010.
Thus the new use need not be the treatment of a different disease.

If the principle in EISAI was to be utilised, it used to be a requirement that the

specification had to contain so-called ‘Swiss form’ claims, namely ‘use of X for the
manufacture of a medicament for treatment of Y’. The changes to Article 54 EPC and
s.4A(4) Patents Act mean that this is no longer so. Further guidance is available on the
UKIPO website. There are, however, a number of such patents still in existence. For a
recent high-profile case in which the Supreme Court had to wrestle with consequences
(for sufficiency and infringement) of the grant of such patents, see Warner-Lambert v
Actavis [2018] UKSC 56 (discussed in a little more detail in 15.4.1 above).

Activity 16.5
Read s.4A Patents Act 1977, together with the decision in Wyeth/Schering’s
Applications. Then write a concise summary of the law concerning methods of
treatment, the patenting of substances used in methods of treatment, and first and
second medical use patents.

Summary
The exclusions and exceptions to patentability set out in the EPC and in the Patents
Act 1977 fall into two distinct groups. First, there are those items which are deemed
unpatentable because they are not technical in nature. These are listed in EPC Article
52(2) and s.1(2) of the Patents Act. Second, there are inventions which do have technical
effect, but are denied patentability on policy grounds. These are set out in EPC Article
53, together with the provisions in the Biotech Directive, and are incorporated into UK
law by s.1(3) of the Patents Act, Schedule A2 and s.4A.

16.3 Novelty

Core text
¢ Bainbridge, Chapter 12 ‘Requirements for patentability’ pp.434–46.

¢ Bently et al., Chapter 18 ‘Novelty’.

¢ Cornish, Chapter 5 ‘Validity’ paras 5–003 to 5–026.

¢ Karapapa and McDonagh, Chapter 17 ‘Patentability’ Section 17.5.

Essential reading
¢ Patents Act 1977, s.2, EPC, s. Article 54.

¢ Cases: General Tire v Firestone [1972] RPC 457, pp.481–506 only; Lux v Pike [1993]
RPC 107; UNION CARBIDE/Atmospheric Vaporiser [1991] EPOR 373; Merrell Dow v
Norton [1996] RPC 76; Synthon BV v Smithkline Beecham plc [2006] RPC 323.

16.3.1 Novelty: an overview

The requirement of novelty is set out in s.2 of the Patents Act 1977, based on Article 54
of the EPC. Read these two provisions now. Observe how s.2(1) contains a statement
of principle, and s.2(2) defines what is meant by ‘state of the art’. Section 2(4) contains
an exception for information obtained in breach of confidence, but only in the period
of six months before the priority date of the patent. When considering whether a
patent passes the test of novelty, the issues are (according to the House of Lords in
Synthon BV v Smithkline Beecham plc [2006] RPC 323):

u whether information in the prior art was accessible (potentially rather than
actually) by any member of the public (even one person) without any fetter of
confidentiality, and if so

u whether that information anticipated the invention, that is, did it contain an
enabling disclosure such that the skilled addressee, armed with the prior art,
could perform the invention.
page 276 University of London
These issues are referred to as disclosure and enablement. They should be kept
separate and should be dealt with sequentially.

Just as with other areas of patent law, the issue of novelty is determined objectively
through the eyes of the skilled addressee. This hypothetical person’s attributes were
explained in Chapter 15. Further, novelty is determined by reference to the wording
of the claims. It is the claims which are compared with the prior art to see if there is
disclosure. (If you are unsure about either what patent claims do or the role of the
skilled addressee, you should revisit your notes from Chapter 15.)

The meaning of ‘the public’ in s.2 was explained by Aldous J in PLG Research Ltd v
Ardon [1993] FSR 197: to form part of the state of the art, the information given must
have been made available to at least one member of the public who was free in law
and equity to use it. This makes clear that ‘the public’ can consist of one person, but
the distinguishing characteristic is that the recipient of the information must not
be bound by confidentiality. Information obtained in breach of confidence cannot
destroy novelty. Hence in UNION CARBIDE/Atmospheric Vaporizer [1991] EPOR 373 (an EPO
decision) novelty was not destroyed where an invention located on private property
was viewed through a fence and in Re Gallay [1959] RPC 141 there was implied secrecy in
the case of a joint venture. However, in Re Dalrymple [1957] RPC 449, the large number
of members in a trade association meant that the fact that the word ‘confidential’ was
stamped on the front of a document circulated to all had no effect.

Whether the prior art contains an enabling disclosure depends on a comparison of

each claim of the patent with each individual item of prior art (it is not possible to
combine pieces of prior art for the purpose of attacking a patent for lack of novelty). If
the item of prior art does not contain all the elements (or integers) of a claim, then the
claim is valid for novelty (but may still be subject to attack for lack of inventive step).

With regard to the application of s.2(2), the 1977 Act changed the previous law on
novelty in two respects.

u Under the 1949 Act, only information available in the UK was taken into account
whereas now information anywhere in the world is relevant.

u Under the 1949 Act, information made available through publication had to
contain an enabling disclosure, whereas information made available through prior
use did not. As a result, any uninformed prior use of an invention could destroy
novelty (as an example, see Gore v Kimal [1988] RPC 137). By contrast, the 1977 Act
simply requires that the information be ‘made available to the public’, the phrase
used in the 1949 Act to define publication. The net result of this is that under the
1977 Act all forms of prior art must contain an enabling disclosure: Re Asahi KKK’s
Patent [1991] RPC 485, HL. Consequently, cases decided under earlier legislation
on anticipation by prior use should be treated with caution (see, to this effect,
the remarks of Aldous J in PLG Research Ltd v Ardon [1993] FSR 197 at 225). The same
approach is taken by the EPO: Availability to the Public [1993] EPOR 241.

16.3.2 What amounts to the prior art?

The patent system is basically about information (per Lord Hoffmann in Merrell Dow
v Norton [1996] RPC 76). In consequence, what amounts to the prior art requires an
understanding of how information can be made available. Information can be obtained
through documents, but it can also be obtained through the supply of goods, through
the use of an item or through its demonstration. In every case, however, the question
to be asked is: what would the skilled addressee understand from that information?

Documentary prior art will include earlier patents, such as occurred in the two House
of Lords’ decisions of Re Asahi KKK’s Patent [1991] RPC 485 and Merrell Dow v Norton
[1996] RPC 76. The only issue in these two cases was whether the description of a
substance in the earlier patent amounted to an enabling disclosure: in Asahi it did
not; in Merrell Dow it did. A clear explanation of what prior written art must contain in
order to invalidate a later patent was given by Lord Hoffmann in Synthon v Smithkline
Beecham [2006] RPC 323. Quoting from Lord Westbury in Hills v Evans (1862) 31 LJ Ch 457
he stated that:
Intellectual property 16 Patentability page 277

...the antecedent statement must be such that a person of ordinary knowledge of the
subject would at once perceive, understand and be able practically to apply the discovery
without the necessity for making further experiments and gaining further information
before the information can be made useful. If something remains to be ascertained which
is necessary for the useful application of the discovery, that affords sufficient room for
another valid patent.
Documentary prior art may also include sales leaflets (Monsanto (Brignac’s) Application
[1971] RPC 153); books and magazines as long as they could have been read by a
member of the public (Lang v Gisbourne (1862) 31 Beav 133); and information in a library
as long as the public has access to it. A private research library may not be accessible
by the public, so that documents stored there do not amount to prior art: Re Tecalemit
[1967] FSR 387, Re Bakelite [1967] FSR 582.

Prior use of a later claimed invention may be by the patentee, as in Gore v Kimal [1988]
RPC 137 where samples of PTFE tape were supplied to customers before the filing date
of the patent (the case should be treated with caution today as there was no enabling
disclosure, it being impossible to determine from the samples how the tape had
been made). Equally, the use of the invention may be by an innocent third party (as in
Fomento v Mentmore [1956] RPC 87) or by a competitor (as in Bristol-Myers Co (Johnson’s)
Application [1975] RPC 127). Under the 1977 Act, the issue is whether the skilled
addressee, had they been present when the information was made public, could have
implemented the invention.

A leading case (and one which you should study carefully) is Lux Traffic Controls v Pike
Signals [1993] RPC 107. Traffic lights containing a new infra-red detector were tested in
a public place. It was held that even though there was no evidence that anyone had
examined the inside of the device, had the skilled addressee been present at the trial,
it would have been possible for such a person to deduce from their observations how
the device worked. By contrast, in Pall v Bedford Hydraulics [1990] FSR 329 microporous
filters were supplied for testing which were incapable of analysis and so there was
no enabling disclosure. Similarly, if a device is demonstrated in public, if this contains
enough information to carry out the later invention, novelty will have been destroyed
(Windsurfing International Inc v Tabur Marine [1985] RPC 59, Wheatley’s Application [1985]
RPC 91) but not if those present were not able to observe how the device worked
(Quantel v Spaceward Microsystems [1990] RPC 83).

But what if the disclosure occurs not in a public place but on private premises where
members of the public (albeit unskilled people) were present and could examine the
device if they wished? In Folding Attic Stairs Ltd v The Loft Stairs Company Ltd [2009] FSR
887, Peter Prescott QC thought that it was the place of disclosure which mattered, so
that there is a significant difference between public and private premises. He added
that the visitors would not have appreciated what they had seen but, even if they had,
this disclosure would not have anticipated claim 1 of the patent which was for the
manufacturing process.

An excellent example of the strict approach to novelty in patent law is provided by the
decision of Hacon J in the Intellectual Property & Enterprise Court in Claydon Yield-O-
Meter Ltd v Mzuri Ltd [2021] EWHC 1007 (IPEC). In a claim for infringement of a patent for
an improved seed drill (a type of agricultural machine), the defendant counterclaimed
for invalidity based on prior use. A prototype of the claimant’s seed drill had been
tested in a field on private land over a period of two days before a patent had been
applied for. In such cases in which prior use is at issue, the information made available
to the public is that which would (hypothetically) have been noticed or inferred by
a person skilled in the art who had taken advantage of the available access to the
invention. As you know, there is no requirement for the party challenging the validity
of the patent to prove that a person skilled in the art, or indeed anyone, actually
obtained access to the information at issue.

The defendant’s case was that the prototype could have been observed from nearby
roads and from a footpath to which the public had access and that the information
obtained by the hypothetical skilled observer in such circumstances would have been
sufficient to have enabled him to understand the claimed invention. At the relevant
page 278 University of London
time, the footpath was unmarked and unmaintained. There was a tall hedge between
the footpath and field but with gaps at three points.

As an initial issue, the Judge considered whether the hypothetical skilled person
should be treated as having technical equipment at his or her disposal. He stated that:

If enablement required a phone with a sufficient zoom facility and the evidence showed
that at the relevant time and place a member of the public could reasonably have been
expected to carry such a phone and use the zoom and could have done so lawfully, then
it may be that the hypothesis will go forward on the basis that the information made
available included information obtained using the phone, whether seen at the time or
recorded and discerned later. On the other hand, it will not be often that evidence will
establish that the skilled person would have had a swarm of drones to hand at the relevant
time and place and even if they did, use of the swarm may be liable to give rise to issues
of privacy and breach of confidence. Both examples assume that the skilled person is a
passer-by, in that he or she is not to be taken to have planned the observation in advance.

However, in this case, this issue had not been explored sufficiently in evidence and
therefore enablement was to be assessed by reference to hypothetical observation
with the naked eye.

Overall, the evidence in this case suggested that a hypothetical skilled observer
standing on the footpath would have been able to see the prototype in action and
would thereby have been able to deduce the claimed invention. As a consequence,
the patent was anticipated through prior use.

16.3.3 Anticipation
Anticipation is a technical term of patent law which you must understand. It means that
the prior art matches exactly the subject matter (i.e. the claims) of the later patent
so as to render it not new. Anticipation occurs where the prior art contains an enabling
disclosure. Three interchangeable tests for what amounts to an enabling disclosure
are to be found in General Tire v Firestone [1972] RPC 457 which is generally endorsed by
modern cases as being a correct statement of the modern law on anticipation.

Activity 16.6
Read the judgment of Sachs LJ in General Tire v Firestone at pp.484–86. Then write
a concise summary of the tests which he proposes to determine whether prior art
amounts to an anticipation of the claimed invention.
Whether the prior art points inevitably to the later patent is assessed through the eyes
of the notional skilled addressee. The question is whether such a person would be able
to ‘work the invention’ from the information disclosed without undue burden: Lux Traffic
Controls v Pike Signals [1993] RPC 107. Although the House of Lords has endorsed General
Tire on two occasions, it appears to have changed its mind (without explanation) as to
which of the tests is to be preferred. In Merrell Dow v Norton [1996] RPC 76 Lord Hoffmann
indicated that the infringement test was to be avoided, while in Synthon v Smithkline
Beecham [2006] RPC 323 he stated that this was the test he favoured.

Activity 16.7
Read the opinion of Lord Hoffmann in Merrell Dow v Norton. Why does he say that
the patent for terfenadine was anticipated by the earlier patent but not by the
clinical trials of the drug?
No feedback provided.
As noted above, if an individual item of prior art does not contain all the elements of
the later claimed invention, then the invention is valid for novelty. The test of enabling
disclosure is very precise, so that if the earlier information does not contain every single
integer of the claim, then the invention is new. It is then necessary to consider separately
and sequentially whether the invention meets the requirement of inventive step.
Intellectual property 16 Patentability page 279

16.3.4 Novelty of purpose

The ability to obtain a patent for the first and second medical use of a pharmaceutical
substance was explained above. The EPO has further extended this principle to novelty
of purpose in non-medical fields: MOBIL III/Friction reducing additive [1990] EPOR 73
which concerned a new use for a substance previously used as a rust inhibitor. United
Kingdom courts have reluctantly accepted the principle: Merrell Dow v Norton [1996]
RPC 76, Bristol-Myers Squibb Company v Baker Norton Pharmaceuticals Inc [2001] RPC 1.

Summary
The requirement of novelty set out in s.2 of the Patents Act entails a comparison
between the claims of an invention and the prior art. The prior art is any information
made available to the public anywhere in the world. Information disclosed in breach
of confidence does not destroy novelty. Besides determining whether information has
been made available, it is also necessary to decide whether that information contains
an enabling disclosure, such that a skilled addressee is able to carry out the invention
claimed without undue burden.

16.4 Inventive step

Core text
¢ Bainbridge, Chapter 12 ‘Requirements for patentability’ pp.446–60.

¢ Bently et al., Chapter 19 ‘Inventive step’.

¢ Cornish, Chapter 5 ‘Validity’ paras 5–027 to 5–050.

¢ Karapapa and McDonagh, Chapter 17 ‘Patentability’ Section 17.6.

Essential reading
¢ Patents Act 1977, s.3, EPC Article 56.

¢ Cases: Pozzoli SpA v BDMO SA [2007] FSR 872; Hallen v Brabantia [1991] RPC 195.

16.4.1 Inventive step: general principles

The next positive requirement of patentability is that there must be an inventive step
or, rather, the invention must not be obvious. The requirement is found in s.3 of the
Patents Act 1977, derived from Article 56 of the EPC. Read s.3 now. Inventive step has to
be considered after the issue of novelty and involves different issues. Something may
be new but not inventive. Whereas novelty is a question of whether the inventive is
quantitatively different from what has gone before, inventive step is concerned with
whether it is qualitatively different. Inventiveness is a question of fact to be decided
objectively and without hindsight. Thus in Lilly Icos Ltd v Pfizer Ltd [2002] EWCA Civ 1, the
patent for VIAGRA was little more than a putting into practice of the recommendations
and suggestions already found in the prior art. It may be difficult to avoid hindsight
where the patent relates to an everyday item and the inventive step is small (see, for
example, SEB SA v De’Longhi SpA [2003] EWCA Civ 952, CA, which concerned deep fat
fryers), but nevertheless, the court must ensure that hindsight is not used.

Many cases assert that the word ‘obvious’ requires no further explanation, but then
proceed to offer synonyms, such as ‘very plain’, ‘so easy that any fool could do it’,
‘routine development work’ or ‘workshop adjustment’. In contrast, an inventive step
requires ‘a flash of insight’ or an ‘intellectual jump’.

16.4.2 Inventive step: the test to be applied

For many years, the test for inventive step was that established by Oliver LJ in
Windsurfing International v Tabur Marine [1985] RPC 59 at 73. The test provided a
structured approach for determining whether an invention is or is not obvious and
had been approved by the House of Lords. However, the test has now been reordered
by Jacob LJ in Pozzoli SpA v BDMO SA [2007] FSR 872. You should note how important
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the notion ‘person skilled in the art’ and the ‘common general knowledge’ are to the
operation of this test. For further detail on the characteristics of the person skilled in
the art or the skilled addressee) and common general knowledge, see 15.5.2 above.

Activity 16.8
Read the judgment of Jacob LJ in Pozzoli SpA v BDMO SA. What does he say is the test
for whether an invention has inventive step?

16.4.3 The test is objective not subjective

Inventive step is a ‘jury question’ (that is, a question of fact) to be determined by
the court objectively, using the yardstick of the notional skilled addressee. Just as
with novelty, the skilled addressee (discussed in Chapter 15) has a vital role to play.
Inventive step is determined without reference to the inventor. It does not matter how
the inventor achieved success, whether by accident, hard work, intuition or creativity:
Allmanna Svenska Electriska A/B v Burntisland Shipping Co (1952) 69 RPC 63 at 70.

16.4.4 The meaning of ‘prior art’ for the purpose of inventive step
The Pozzoli case requires the court to compare the prior art with the invention. In
Windsurfing itself (the forerunner of Pozzoli), the Court of Appeal held that all prior art
should be considered.

In E Mishan & Sons Inc v Hozelock Ltd [2020] EWCA Civ 871, the Court of Appeal
considered the application of the test for obviousness in a situation in which the
prior art was a document that would not ordinarily have come to the attention of the
person skilled in the art. By a majority, the Court upheld the finding of Nugee J that
an invention of a particular form of expandable garden hose was obvious in relation
to a document describing a form of hose to be employed for delivering oxygen on an
aeroplane. The Court confirmed that the judge had carefully followed the structured
approach to obviousness required under Pozzoli in concluding that there was no
inventive step. The case illustrates the significance of the fact that the very broad
approach taken to the prior art in assessing novelty applies also in (and can have a
major impact on) the assessment of inventive step.

16.4.5 The prior art: ‘mosaicing’

In contrast to novelty, where each item of prior art has to be considered in isolation,
in inventive step it is possible to combine different items of prior art when arguing
that an invention is obvious. This process is called ‘mosaicing’. Despite this colourful
language, it is unusual for a court to hold that separate, unrelated pieces of prior
art can be combined when attacking a patent under s.3, because it has to be shown
that the skilled addressee would think it obvious to mosaic (remember, the skilled
addressee has no inventive capacity). One example of where the court upheld the
argument that the skilled addressee would combine separate items of prior art is Dow
Chemicals (Mildner’s) Patent [1975] RPC 165. A more recent case which discussed the
matter is SEB SA v De’Longhi SpA [2003] EWCA Civ 952.

A related issue is where an invention is said to consist of a combination of existing

technology. The very act of putting together two or more known features may in itself
involve an inventive step, especially where the skilled addressee has only basic skills
and qualifications in the relevant field and has a technical prejudice against changing
accepted technology. However, there will only be a ‘collocation’ (as it is known) if the
invention, considered as a whole, consists of a single inventive concept where the
combination of known elements produces a synergy. If each element performs its own
function independently of the other, then there is not one invention but two, and each
part must be considered on its own in light of the prior art: Sabaf SpA v MFI Furniture
Centres Ltd [2005] RPC 209, applying the guidelines of the EPO and the earlier UK case
of British Celanese Ltd v Courtaulds Ltd (1935) 52 RPC 171. An example of a combination of
known elements, which is not inventive (because it does not amount to a collocation),
is the putting together of a mincing machine and a filling machine to produce a
sausage-making machine.
Intellectual property 16 Patentability page 281

16.4.6 Secondary issues

Sometimes subsidiary arguments are raised by a patentee to support the contention
that a patent possesses an inventive step. These secondary issues, attractive as
they are, are peripheral to the objective assessment via the Windsurfing test: Beloit
Technologies v Valmet Paper Machinery [1995] RPC 705, [1997] RPC 489. The first of these
arguments concerns the length of time taken to develop the invention (‘Why hasn’t
someone done this before?’). Thus in Re Beecham’s (Amoxycillin) Application [1980] RPC
261 the fact that it took six years to develop the next generation of antibiotics (in a
highly competitive field) convinced the court that the patent possessed an inventive
step. By contrast, in Genentech Inc’s Patent [1989] RPC 147 the Court of Appeal was
not convinced that the time taken to develop a treatment for an illness by means of
genetic engineering demonstrated inventiveness: it was simply a question of throwing
time and money at the problem.

The subsidiary argument, which can be advanced by the patentee to demonstrate

inventiveness, is that the patent has proved to be highly successful (Rotocrop v
Genbourne [1982] FSR 241). Commercial success, however, may be attributable to other
factors, such as fashion (Wildey v Freeman (1931) 48 RPC 405) or a successful advertising
campaign (Haskell Golf Ball Co v Hutchinson (1906) 23 RPC 301). However, if something
is inventive, it is not a counter-argument to say that it is simple: Haberman v Jackel
International Ltd [1999] FSR 683.

In Actavis Group v ICOS Corporation [2019] UKSC 15, the Supreme Court considered
the law relating to inventive step in a case concerning a second medical use claim
relating to information concerning dosage. The Court (the judgment of which was
handed down by Lord Hodge) reviewed the approach that UK courts and the EPO had
taken to the requirement of non-obviousness. It was noted that UK courts tended to
apply the structured framework set out in Pozzoli SPA v BDMO SA [2007] FSR 37 (‘the
so-called Windsurfing/Pozzoli structure’) and that the EPO adopted the alternative
‘problem–solution’ approach. This latter approach is helpfully summarised in the EPO’s
Guidelines for Examination (Part G–Chapter VII, para.5):

In the problem–solution approach there are three main stages: (i) determining the
‘closest prior art’, (ii) establishing the ‘objective technical problem’ to be solved, and (iii)
considering whether or not the claimed invention, starting from the closest prior art and
the objective technical problem, would have been obvious to the skilled person.

While endorsing these approaches, the Supreme Court was eager to ensure that
neither should be applied ‘mechanistically’. It was also important to bear in mind the
fact-specific approach set out by Kitchin J (as he was) in Generics (UK) Ltd v H Lundbeck
[2007] RPC 32. According to the Supreme Court, potentially relevant factors might be:
(i) whether something was ‘obvious to try’ at the priority date; (ii) whether research
was routine or not; (iii) the burden and cost of the research programme; (iv) the
necessity for and nature of value judgements made; (v) the existence of alternative
or multiple paths of research; (vi) whether a skilled person would have a motive to
carry out the research; (vii) the fact that the results of the research actually carried out
were unexpected or surprising; (viii) the importance of not employing hindsight; (ix)
whether a feature of a claimed invention is an added benefit in a context in which the
claimed innovation is obvious for another purpose [64]–[73].

The nature of the invention is also an important feature to be taken into account.
In the case of a dosage patent, as here, a skilled person would generally attempt
to establish a dosage regime as low as possible while still being effective and, as a
consequence, such claims are particularly likely to be obvious [76]–[77]. Furthermore,
an appellate court ought to be wary of overturning a trial court’s assessment on
obviousness and ought to do so only in cases of error of legal principle. In upholding
the Court of Appeal’s assessment that the claim in this instance was obvious, the
Supreme Court stated that:
page 282 University of London

The target of the skilled team would be to ascertain the appropriate dose, which would
usually be the lowest effective dose. The skilled team would know of that target from
the outset of its research. The pre-clinical and clinical tests involved familiar and routine
procedures and normally progressed to the discovery of the dose-response relationship
[…]. In this case the trial judge’s findings of what would have been the sequence of the
tests, which did not depend upon hindsight, included the finding, which the evidence
clearly justified, that the team, having found a therapeutic plateau, would be very likely to
test lower doses and so come upon the dosage regime which is the subject matter of the
patent. For the reasons which I have given above, I am satisfied that the Court of Appeal
was entitled to interfere with the trial judge’s assessment of obviousness and to hold that
the […] patent was invalid for lacking an inventive step.

Summary
Inventive step (to be determined subsequently to and separately from the issue of
novelty) requires the court to decide objectively, and without hindsight, whether
an invention is not obvious. The structured approach of the Pozzoli test is used.
This requires a comparison between the invention and the prior art once the court
has identified the skilled addressee and their common general knowledge and has
determined the inventive concept.

16.5 Capable of industrial application

Core text
¢ Bainbridge, Chapter 12 ‘Requirements for patentability’ pp.460–64.

¢ Bently et al., Chapter 17 ‘Patentable subject matter’ Section 3 ‘Industrial

application’.

¢ Cornish, Chapter 5 ‘Validity’ para 5–051.

¢ Karapapa and McDonagh, Chapter 17 ‘Patentability’ Section 17.8.

Essential reading
¢ Patents Act 1977, s.4 and EPC, Article 57.

¢ Cases: General Tire v Firestone [1972] RPC 457, pp.481–506 only; Lux v Pike [1993]
RPC 107; UNION CARBIDE/Atmospheric Vaporiser [1991] EPOR 373; Merrell Dow v
Norton [1996] RPC 76; Synthon BV v Smithkline Beecham plc [2006] RPC 323.

The last positive element of patentability (found in s.4 of the Patents Act, derived from
Article 57 of the EPC) is that the invention must be capable of industrial application.
Read s.4(1) and Article 57 now. The requirement can be equated with the phrase
‘any manner of new manufacture within the Statute of Monopolies’ found in s.101 of
the Patents Act 1949. Under previous legislation, case law originally held that there
had to be the production, improvement or preservation of a ‘vendible product’
(GEC’s Application (1943) 60 RPC 1). The meaning of ‘vendible product’ was gradually
expanded until it meant that the invention had to produce some economic advantage,
that is, have a useful effect: NRDC’s Application [1961] RPC 134. Under the 1977 Act, it has
been held that s.4 simply requires that the invention must not be something which is
useless for any known purpose: in other words, the issue is whether the subject matter
of the patent is ‘useful’: Chiron v Organon (No 12) [1996] FSR 153.

Examples of patent applications which have been rejected under s.4(1) include Re
Duckett’s Patent Application [2005] EWHC 3140 where the alleged invention concerned
an engine which went against the accepted laws of physics and Blacklight Power Inc v
Comptroller General of Patents [2009] RPC 173 where the invention involved a plasma
reactor based on an allegedly new species of hydrogen.

The requirement that an invention must be useful was considered by the Court
of Appeal in Eli Lilly and Company v Human Genome Sciences Inc [2010] EWCA Civ 33.
The patent in this case was declared invalid for being speculative. It concerned a
particular protein which had been identified using ‘bioinformatics’. Jacob LJ made use
Intellectual property 16 Patentability page 283
of the skilled addressee when dealing with the issues. The specification suggested
an astonishing range of diseases and conditions which could be treated by the
claimed protein: the skilled addressee would consider it totally far-fetched that the
substance could be used in all of them and ‘would be driven to the conclusion that
the authors had no clear idea what the activities of the protein were and so included
every possibility’. The Supreme Court reversed Eli Lilly and Company v Human Genome
Sciences Inc [2011] UKSC 51, holding that the lower courts had applied the relevant case
law of the EPO too strictly in the case and that the patent was capable of industrial
application. Lord Neuberger’s speech at para 107 contains a detailed summary of the
principles established by the EPO when dealing with this aspect of patentability and
should be studied carefully.

Sample examination questions

Question 1 Genchem plc is a UK company involved in biochemistry and genetic
engineering. In 1996, it discovered the existence of a new substance: moron
tribromide. Having created an artificial version of the substance in the laboratory,
Genchem applied for and was granted a patent in respect of moron tribromide.
It was assumed at first that the benefits of the substance were limited to the
treatment of high blood pressure in humans. In December 2006, by accident,
Genchem discovered that, if the substance was added to foodstuff given to sheep,
it led to a genetic modification of their sweat glands, which resulted in their wool
becoming repellent to insects. This provided the solution to the long-standing
problem of producing moth-proof wool. Genchem accordingly applied for a
second patent, which bore the filing date of 2 February 2007. The description of the
invention stated that between 100 and 200 grammes of moron tribromide should
be added to every kilo of foodstuff one month before shearing in order to produce
the desired result.
The following items of prior art have now come to light.
a. A thesis by Boris, a Russian scientist, written in 1987, describing the means of
modifying the sweat glands of mink so as to improve the quality of their fur. This
thesis was kept in the library of the Moscow Academy of Sciences, which until
1991 was open only to scientists working for the government of the then USSR.

b. An Australian patent application, dated 2 January 2006, describing a method

of injecting sheep with a related substance, moron dibromide, so as to modify
their wool to produce a ‘self-shearing’ fleece.

c. A research paper written in June 2003 by a British university lecturer, Fred

Ramsden, discussing the use of genetic engineering to modify the sweat glands
of farm animals to make the animals less susceptible to parasites. This paper
was submitted at the end of June 2003 to the members of the Animal Research
Council with a view to obtaining research funding.

Advise Genchem as to the patentability of moron tribromide to produce moth-

proof wool.
Question 2 Kenneth is an electronics engineer and the managing director of Red
Eye Ltd, a company specialising in the manufacture of electronic surveillance
equipment. In his spare time he is an enthusiastic, if incompetent, golfer. Kenneth
has been anxious to improve the standard of his golf for some time, but every time
he consulted the coach at his golf club, the only advice he was given was ‘keep your
head still’. Kenneth tried various commercially available devices which purported
to help the golfer maintain a consistent head position, such as a neck brace and a
weighted hat. Dissatisfied with the results, he decided to find an alternative device
which would have the desired result.
After various experiments conducted in his office after hours, Kenneth came up
with a simple electronic device which is to be attached to the shaft of a golf club
just above its head. The device consists of a small black box containing a battery-
powered light emitting diode (which is a tiny, flashing red light). Provided the
golfer keeps his or her head still, the constant stream of flashes can be seen as
the golf club is swung back prior to the shot. If, however, the golfer’s head moves,
page 284 University of London
the flashing light can no longer be seen. Kenneth tried out his device on several
occasions in the summer of 2007 when he played golf with his friend Bill, who was
sworn to secrecy.
Claim 1 of the patent which Kenneth filed on 26 February 2008 states:
‘A device for training the golfer to keep their head still, said device consisting of a
small box clamped to the shaft of any golf club adjacent to its head and containing
a battery-powered light-emitting diode (LED), so positioned that when switched on
the stream of tiny flashes coming from the LED can be seen by the golfer if the head
is kept still, but not if the head is moved out of place.’
The following pieces of information have now come to light.
i. For many years university lecturers and others giving presentations have used a
battery-operated laser pointer so as to draw attention to information displayed
on a white board or similar.

ii. From 1990, soldiers in the Russian army have been issued with rifles which point
a tiny high-powered laser, thus enabling the user to know whether the weapon
is aimed accurately.

iii. Since 1995, the Yukon Camera Company Inc has sold cameras which have a
flashing green LED in the view-finder indicating to the photographer that the
camera is correctly focused.

Advise Kenneth whether his device is patentable.

Advice on answering the questions

Question 1 What is required is a systematic application of ss.1 to 4 of the Patents
Act 1977, prefaced by a discussion of who might be the skilled addressee of the
Genchem patent. The skilled addressee here is likely to have a postgraduate degree in
biotechnology, and would possess the mindset and prejudices of those working in that
industry, as well as the appropriate common general knowledge.

Dealing first with excluded subject matter, was the identification of the unexpected
properties of moron tribromide a ‘discovery’ or was there a practical application
(Chiron)? Was the patent claiming a method of treatment (which is excluded from
patentability under s.4A(1)) or was it claiming the substance used in that treatment
(s.4A(2))? If so, the fact that the substance had been used before as a medicine meant
that Genchem would have to rely on the provision for second medical use in s.4A(4).
There was also a point as to whether the patent fell within s.1(3) Patents Act because
it was contrary to morality (harming animals), which requires a discussion of EPO case
law on this topic. Also, was the invention within Schedule A2 Patents Act because it
was claiming an animal variety? Probably not.

Having considered any ‘internal’ objections to the patent, a good answer will go on
to compare the invention with the prior art (identified in paragraphs (a), (b) and
(c) of the question) to decide, in sequence, whether it was a new and possessed
inventive step (you are reminded that these are separate issues and should not be
run together). Novelty requires consideration of whether the information in question
has been ‘made available to the public’, that is, as explained by the House of Lords in
Synthon v Smithkline, whether there has been disclosure and enablement. The Russian
thesis and Australian patent had each been disclosed before the date of the second
invention, but what about Fred Ramsden’s paper? Might the last mentioned be subject
to confidentiality? Assuming that each of these three pieces of information had been
disclosed and so amounted to prior art, did they anticipate Genchem’s invention?
What is crucial here is the application of the test of anticipation from General Tire
(i.e. to see if the prior art would enable the skilled addressee to carry out Genchem’s
invention without undue burden). On balance, none of the three items would enable
the skilled addressee to utilise moron tribromide to produce moth-proof wool
because none contained the exact information. Having concluded that the invention
is new, it is still necessary to see next if it is inventive (it is vital to apply novelty and
inventive step sequentially), by applying the Pozzoli test to each of the three items
of prior art. What should be asked is whether the skilled addressee, armed with the
Intellectual property 16 Patentability page 285
prior art, would think it ‘worthwhile to try’ to produce moth-proof wool using moron
tribromide (Hallen v Brabantia). Could the skilled addressee progress from the prior art
to the invention as a matter of course or would it require a ‘flash of insight’?

Question 2 Again, what is required is a systematic application of ss.1 to 4 of the

Patents Act 1977, prefaced by a discussion of who might be the skilled addressee of
Kenneth’s patent. As the invention appears not to be objectionable under any of the
exclusions from and exceptions to patentability, the good answer should compare the
claim with all the prior art. This is not just the information identified in paragraphs (i),
(ii) and (iii), but also Kenneth’s experiments in his office after hours (did anyone see
him and, if so, were they bound by confidentiality?) and his games of golf with Bill. Bill
might have been sworn to secrecy but the golf course is a public place. Did anyone
else see what Kenneth was doing? Had the skilled addressee been present, could they
have worked out how Kenneth’s device worked (Lux v Pike)? Therefore, for each piece
of prior art it is necessary to decide, in sequence, whether the invention is new and
possesses inventive step (these are separate issues and should not be run together).

Novelty requires consideration of whether the information in question has been

‘made available to the public’, that is, as explained by the House of Lords in Synthon v
Smithkline, whether there has been disclosure and enablement. Assuming that each
of these pieces of information had been disclosed and was prior art, did it anticipate
Kenneth’s invention? A good answer will apply the test of anticipation from General
Tire to see if the prior art would enable the skilled addressee to carry out what was
claimed in Kenneth’s invention without undue burden or whether, if performed today,
any of the prior art would infringe (see Lord Hoffmann in Synthon).

Although the prior art identified in paragraphs (i), (ii) and (iii) might not enable the
skilled addressee to utilise a flashing LED attached to the head of a golf club because
none contained the exact information in the claim, the tests of the device on the golf
course might well destroy novelty. Even if it is concluded that the invention might
not be new, it is still necessary to see next if it is inventive. Again, the good answer will
apply the test set out in Pozzoli to all the items of prior art. What should be asked is
whether the skilled addressee, armed with the prior art, would think it ‘worthwhile
to try’ to produce the LED on the golf-club (Hallen v Brabantia)? Could the skilled
addressee progress from the prior art to the invention as a matter of routine or would
it require a ‘flash of insight’?
page 286 University of London

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.

Tick a box for each topic. Ready to Need to Need to

move on revise first study again

I can explain the grounds on which an invention

may be denied patent protection, and discuss
the underlying public policy behind each of the   
exclusions from and exceptions to patentability.

I can explain the requirement of novelty in patent

law and apply the judicial tests for lack of novelty in
problem questions.   

I can explain what is meant by the requirement of

inventive step, and apply the test established in case
  
law in problem questions.

I can explain what is meant by the requirement

that an invention must be capable of industrial
  
application.

I can list the criteria for patentability.

  

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

16.1 The meaning of ‘an invention’  

16.2 Excluded subject matter  

16.3 Novelty  

16.4 Inventive step  

16.5 Capable of industrial application  

17 Ownership of patents and employee inventions

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 288

17.1 Who is an inventor? . . . . . . . . . . . . . . . . . . . . . . . . . . . 289

17.2 Ownership of employee inventions . . . . . . . . . . . . . . . . . . . 290

17.3 Compensation for employee inventions . . . . . . . . . . . . . . . . 292

17.4 Dealings in patents . . . . . . . . . . . . . . . . . . . . . . . . . . . 294

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . 296

page 288 University of London

Introduction
This brief chapter will deal with the ownership of inventions. In order to be able to
apply the rules on ownership, it is first necessary to explore what we mean when we
say someone is the inventor of a patent.

Having explained the criteria used by the courts to identify an inventor, we shall
then look at the special rules concerning employee-inventors. This is a topic where
intellectual property law, contract law and employment law overlap. Each has its
different values. The Patents Act 1977 provides a particular solution to the ownership
of employee-inventions which is coloured by employment rights thinking.

Once it has been decided who owns an invention − the employer or employee − the
Act creates a scheme of compensation for employee-inventors. The details of the
scheme will be considered and you should reflect on whether the legislation lives up
to the aspirations of the reformers.

Last, and by way of background information only, this chapter looks at the ways in
which a patent owner can exploit the value of the invention by means of assignment
and licensing. You should concentrate, however, on how the Patents Act deals with the
rights of the employee-inventor.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u state the criterion which determines who is to be treated as the inventor of a
patent
u state the rules which determine when an employer is treated as the owner of a
patent
u summarise the rules on compensation for employee-inventors and evaluate the
cases which have applied them
u identify whether an employee is or is not the owner of a patent.
Intellectual property 17 Ownership of patents and employee inventions page 289

17.1 Who is an inventor?

Core text
¢ Bainbridge, Chapter 13 ‘Ownership, dealing with patents, safety and security and
crown use’ pp.494–99.

¢ Bently et al., Chapter 21 ‘Ownership’.

¢ Cornish, Chapter 7 ‘Property rights and exploitation’ paras 7–001 to 7–002.

¢ Karapapa and McDonagh, Chapter 16 ‘Ownership of patents’ Section 16.1.

Essential reading
¢ Patents Act 1977, s7.

¢ Cases: Staeng Ltd’s Application [1996] RPC 183; Re Viziball Ltd’s Application [1988]
RPC 213.

Section 7 of the Patents Act 1977 deals with the question of who is an inventor. Read
s.7 now. Observe how any person may apply for a patent, but it may only be granted
to the inventor. The word ‘inventor’ is defined in s.7(3) as the ‘actual deviser’ of the
invention. Pre-1977 law was not entirely clear whether the inventor was the person
who had the bright idea or the person who put the idea into practical effect. Cases
decided under s.7 have confirmed that the inventor is the person who thinks up
the inventive concept underlying the patent: Staeng Ltd’s Application [1996] RPC 183,
confirmed in Henry Brothers (Magherafelt) Ltd v Ministry of Defence [1999] RPC 442. The
‘inventive concept’ of a patent was explained in Chapter 15. To illustrate this, consider
the facts in IDA Ltd v Southampton University [2006] RPC 567. Here, an article had
appeared in The Times where one of the defendant’s professors had set out his ideas
about how to build a better cockroach trap. He was then contacted by one of the
claimant’s staff who in a confidential telephone call had suggested how to improve
the invention by using magnetic powder. It was held that it was the claimant’s
employee who had provided the inventive concept − the ‘bright idea’ − and so the
claimant was entitled to the patent.

Thaler v Comptroller-General of Patents, Designs & Trade Marks [2020] EWHC 2412 (Pat)
raised a fascinating question about the concept of the ‘inventor’ under the Patents
Act 1977. The owner of an Artificial Intelligence (AI) machine (called DABUS) appealed
against the refusal of patent applications for inventions generated by the machine.
The machine’s owner made the applications on the basis of his ownership of the
machine. He claimed that the machine was the inventor of the inventions. His appeal
was rejected. Marcus Smith J held that the requirements of s.7 were not satisfied.
The machine was not a natural or legal person and therefore could not make the
application itself under s.7 and could not be granted a patent. The owner was a person
but did not satisfy the requirements of s.7 himself. Under the scheme of the Patents
Act 1977, it was necessary for an ‘inventor’ to be a natural person. In concluding, the
judge was careful to point out that the case before him had not raised the different
question of whether or not the owner, or controller, of an AI machine that ‘invents’
something might, in certain circumstances, be said to be an inventor themselves for
the purpose of the Act. That was an argument that was open for another occasion.
The Court of Appeal upheld this decision, confirming that an inventor under s.7 must
be a person. Furthermore, it held there is no rule of law that an invention created by
a machine should be regarded as owned by the owner of the machine. In December
2023, in Thaler v Comptroller [2023] UKSC 49, the UK Supreme Court upheld the finding
that the Patents Act 1977 requires a natural person to be the inventor.

In passing, where there is a dispute as to entitlement, the United Kingdom Intellectual

Property Office (UKIPO) has jurisdiction to resolve the matter (see ss.8, 9 and 37 of the
Patents Act 1977). Previously, the Court of Appeal held that the jurisdiction to settle a
dispute under s.37 depended on there having been either a breach of confidence (as in
IDA Ltd v Southampton University [2006] RPC 567) or a breach of contract (as in Markem
v Zipher [2005] RPC 761). In Yeda Research & Development Co Ltd v Rhone-Poulenc Rorer
page 290 University of London
[2008] RPC 1 the House of Lords disagreed, stating that the only question is ‘who came
up with the inventive concept?’ (either solely or jointly). Questions of entitlement
and novelty were to be kept separate and both Markem and IDA were overruled with
regard to the approach to entitlement disputes.

Under s.72(1)(b) of the Patents Act 1977, the grant of a patent to the wrong person is
a ground of revocation but the ability to challenge for revocation on this ground is
limited to co-inventors and has a strict time limit of two years from grant. The inventor
is entitled to be mentioned in the patent even if they do not own it: s.13 of the Patents
Act 1977.

Activity 17.1
Read the cases of Staeng Ltd’s Application and Re Viziball Ltd’s Application listed
above. What do the cases tell you about how the court determines who is the
inventor of a patent?
No feedback provided.

17.2 Ownership of employee inventions

Core text
¢ Bainbridge, Chapter 13 ‘Ownership, dealing with patents, safety and security and
crown use’ pp.499–502.

¢ Bently et al., Chapter 21 ‘Ownership’.

¢ Cornish, Chapter 7 ‘Property rights and exploitation’ paras 7–003 to 7–007.

¢ Karapapa and McDonagh, Chapter 16 ‘Ownership of patents’ Section 16.2.

Essential reading
¢ Cases: Electrolux v Hudson [1977] FSR 312; Re Harris’ Patent [1985] RPC 19; Greater
Glasgow Health Board’s Application [1996] RPC 207; Staeng Ltd’s Application [1996]
RPC 183; LIFFE Administration and Management v Pinkava [2007] RPC 667.

¢ Patents Act 1977, ss.39 and 42.

17.2.1 The pre-1977 law on ownership of employee inventions

The law as it stood before the effective date of the Patents Act 1977 is explained here
briefly so that you can appreciate the changes that the 1977 Act introduced.

Prior to the Patents Act 1977 there were no statutory rules on the ownership of
inventions. The matter was governed entirely by a century or more of case law. The
cases revealed that freedom of contract was the prevailing approach, and that the
employer’s superior economic bargaining power was rarely questioned. In essence,
the employer would own an invention made by an employee either by virtue of a
provision in the contract of employment or because the employee was deemed to
hold the invention on trust for the employer. Such a trust would arise by virtue of the
employee’s fiduciary status or by virtue of their contractual duties.

With regard to the contractual solution, an employer had the economic power to
insert a clause (called a ‘pre-assignment clause’) into the contract of employment
stating that all inventions, whenever and wherever made, belonged to the employer.
This practice was widely used but was eventually criticised for being in restraint of
trade in Electrolux v Hudson [1977] FSR 312. Falconer J declared that a storekeeper who
made improvements to a vacuum cleaner was beneficially entitled to the patent: it
was not the employee’s job to invent and the clause in his contract requiring him to
hand over all inventions was unenforceable.

The use of the trust to determine ownership of inventions occurred in one of two
situations. The court could treat a senior employee as having the status of a fiduciary,
so that they would then be held to be a trustee of the invention (as happened to the
Intellectual property 17 Ownership of patents and employee inventions page 291
managing director in Worthington Pumping Engine Co v Moore (1903) 20 RPC 41 and the
senior researcher in British Syphon Co v Homewood [1956] 1 WLR 119). Alternatively, the
court would examine the employment contract and conclude that as the employee
was employed to invent, then they must be a trustee of the invention as the result of
their duties: Triplex Safety Glass Co v Scorah [1938] Ch 211. It was, of course, open to the
employer to draft the employment contract in such a way that the court could easily
make such an inference.

The Patents Act 1949 conferred (in s.56) the power to resolve entitlement disputes.
However, the restrictive interpretation accorded to the section by the House of Lords
in Sterling Engineering v Patchett [1955] AC 534 at 543 meant that, if by virtue of contract
or trust, the employer clearly owned the invention, then there was no dispute and the
section could not be utilised.

Summary
The pre-1977 law on employee inventions conferred enormous power on an employer
to claim ownership of inventions made by employees, either through the mechanism
of sweeping contractual provisions or by claiming that the employee was a trustee of
any inventions. This economic power was only questioned once, in Electrolux v Hudson
[1977] FSR 312.

17.2.2 The post-1977 law on ownership of employee inventions

As a result of the deliberations of Banks Committee (the British Patent System) (1970)
(Cmnd 4407) and the White Paper (on Patent Law Reform 1975) (Cmnd 6000), together
with lobbying from trades unions, the Patents Act introduced a new regime for
employee inventions. The effect of new legislation can be summarised thus.

u It introduced a new (comprehensive) statutory test of ownership which is to the

exclusion of anything which applied before.

u It introduced a scheme of compensation for employee inventors.

u It rendered unenforceable certain terms in contracts of employment.

With regard to ownership of inventions, the key provision is s.39 of the Patents Act
1977. Read s.39 in full now. The following observations can be made.

u It displaces all the previous case law (observe the wording ‘notwithstanding
anything in any rule of law’).

u The ‘default’ position is found in s.39(2): in all cases except those that fall within
s.39(1), the invention belongs to the employee.

u The circumstances when the invention belongs to the employer under s.39(1) are
precisely set out.

With regard to when an invention belongs to the employer, read again the provisions
of s.39(1)(a) and (b). Under s.39(1)(a), observe how the section stresses:

u that the invention must be made in the course of the employee’s duties (either
normal duties or those specifically assigned to them)

u the circumstances in either case were such that an invention might reasonably be
expected to result from the performance of their duties.

This wording makes clear that the test is whether, as a result of the employee’s
duties, they are expected to invent. Two cases provide useful illustrations of this.
In Re Harris’ Patent [1985] RPC 19, Falconer J held that the patent belonged to the
employee: as a salesman he was not expected to invent. In Greater Glasgow Health
Board’s Application [1996] RPC 207, Jacob J held that a junior doctor was not expected
to invent, even though part of his time was spent teaching and researching. Whether
an employee is employed to invent is a matter requiring an examination of all the
surrounding circumstances when the invention was made. Someone who was not
originally employed to invent can become so as a result of promotion or changing
page 292 University of London
conditions of employment: LIFFE Administration and Management v Pinkava [2007]
RPC 667.

Under s.39(1)(b), observe how the invention will belong to the employer where the
inventor made it in the course of their employment duties if, when the invention
was made, the nature of their responsibilities indicates that they are under a special
obligation to further the interests of the employer’s undertaking. It is not entirely clear
whether this provision enacts the thinking in Worthington v Moore and British Syphon
v Homewood. The only decision on the provision to date is Staeng Ltd’s Application
[1996] RPC 183 which was considered above in relation to the identification of the
inventor. It suggests, however, that the subsection is concerned with those employees
who are company directors or equivalent and shows how the court will consider
all the circumstances of the employment relationship, including remuneration
arrangements.

Last, in relation to s.39, you should also read s.42. Read this section in full now. Note
how it renders unenforceable any contractual provision which purports to diminish
the employee’s rights.

Activity 17.2
Reread s.39 of the Patents Act 1977. Then read the decisions in Re Harris’ Patent,
Greater Glasgow Health Board’s Application and Staeng Ltd’s Application. Then
consider who would be entitled to own the patent which results from each of the
following scenarios.
a. A trainee solicitor who invents a drink which helps him to overcome tiredness
and headaches induced by his long working hours.

b. A university lecturer (who teaches in the School of Sociology) who invents a new
shampoo for treating head lice in children.

c. A hairdresser’s assistant who discovers a new way of making hair conditioner

from plant extracts while away on holiday in an exotic location.

d. A sales director who invents a new method of dispersing washing powder in a

washing machine by placing tablets of detergent in a mesh bag.

17.3 Compensation for employee inventions

Core text
¢ Bainbridge, Chapter 13 ‘Ownership, dealing with patents, safety and security and
crown use’ pp.502–05.

¢ Bently et al., Chapter 23 ‘Exploitation’ Section 5 ‘Compensation for use’.

¢ Cornish, Chapter 7 ‘Property rights and exploitation’ paras 7–008 to 7–015.

¢ Karapapa and McDonagh, Chapter 16 ‘Ownership of patents’ Section 16.3.

Essential reading
¢ Patents Act 1977 ss.40 and 41.

¢ Cases: British Steel plc’s Patent [1992] RPC 117; GEC Avionics Ltd’s Patent [1992] RPC
107; Memco Med Ltd’s Patent [1992] RPC 403; Kelly & Chiu v GE Healthcare Ltd [2009]
RPC 363; Shanks v Unilever plc [2017] EWCA Civ 2.

The Patents Act 1977 provides for two separate instances when an employee may
be awarded compensation in respect of a successful patent of which they are the
inventor but not the owner. The conditions imposed by the statute on the award of
compensation are extremely restrictive and there is only one reported instance of an
employee’s claim being successful. The two circumstances are as follows.
Intellectual property 17 Ownership of patents and employee inventions page 293

17.3.1 Compensation where the employer owns the patent

Section 40(1) (as amended by the Patents Act 2004) deals with where the patent
is owned by the employer as the result of the operation of s.39(1). The cumulative
conditions which must be satisfied are that:

u there must be an invention made by the employee which belongs to the employer

u a patent for that invention has been granted

u the patent, the invention, or both, must be of outstanding benefit to the employer

u it is just that compensation should be awarded.

The second criterion is the most problematic. It requires that a patent must have been
granted. This means that if a patent application is unsuccessful (for whatever reason)
or if the patent is revoked before it becomes successful or if the employer decides not
to file a patent application, then compensation cannot be claimed.

Also, a restrictive interpretation has so far been accorded to the requirement of

outstanding benefit under s.40(1). In British Steel plc’s Patent [1992] RPC 117, it was held
that there was no outstanding benefit where the savings in production costs, although
totalling several hundred thousand pounds, amounted to 0.01 per cent of turnover.
This would suggest that the requirement of ‘outstanding benefit’ is harder to establish
in the case of an employer with a large multi-million pound business than where
the employer runs a small enterprise. Note also the wording of the section requires
the benefit to the employer to be the result of the patent. There might be many
other reasons why the employer’s business is successful, for example, the employer
might acquire a lucrative contract in which the patent plays only a very small part
(GEC Avionics Ltd’s Patent [1992] RPC 107) or the company’s success might be the result
of a cordial relationship with a long-term customer (Memco Med Ltd’s Patent [1992]
RPC 403). However, outstanding benefit does not have to be proved over a lengthy
period of business dealings: Entertainment UK Ltd’s Patent [2002] RPC 291. However,
compensation was awarded in Kelly & Chiu v GE Healthcare Ltd [2009] RPC 363 where
the claimants were awarded £1 million and £500,000 respectively, representing 2 per
cent and 1 per cent of the value of patents worth £50 million for a radioactive imaging
agent, the key compound of which had been synthesised by the claimants.

In Shanks v Unilever plc [2019] UKSC 45, the Supreme Court heard an appeal in a
case concerning the application of the ‘outstanding benefit’ provision. The Court’s
judgment (given by Lord Kitchin) reviews the law to be applied in cases brought for
compensation under ss.40 and 41 Patents Act 1977. The Court notes that ‘outstanding’
is an ordinary English word, meaning ‘exceptional or such as to stand out’ and, by
contrast with the Hearing Officer, Arnold J and the Court of Appeal concluded that the
employer’s benefit in this case had been ‘outstanding’:

It is true that Unilever patented and maintained a patent portfolio which protected it
and in due course expended significant effort and skill in the licensing negotiations. But
the rewards it enjoyed were substantial and significant, were generated at no significant
risk, reflected a very high rate of return, and stood out in comparison with the benefit
Unilever derived from other patents. What was more, they could not be attributed to the
deployment or application of Unilever’s wider business assets or infrastructure; nor were
they found to be the consequence of any leverage Unilever could exert because of its size.
In short, the benefit Unilever enjoyed from the Shanks patents was outstanding within the
meaning of section 40 of the 1977 Act. [85]

The Supreme Court held that the Hearing Officer had erred in considering whether the
benefit received by the employer was ‘outstanding’ in relation to the whole turnover
and profitability of the group within which the inventor’s direct employer operated.
Rather, he ought to have considered that part of the group that was concerned
with inventive activity. The Court also reversed the Court of Appeal’s finding on the
‘time value of money’ (i.e. the fact that the benefit is received some years before the
hearing into an award of compensation), holding that this benefit to an employer was
something that was to be taken into account in assessing appropriate compensation.
page 294 University of London
Having come to the conclusion, it was necessary for the Court to determine a ‘fair
share’ of the benefit that the employer had derived (s.41(1) PA 1977). In considering
the circumstances and in case he was held to be mistaken on the question of whether
or not the benefit was ‘outstanding’, the Hearing Officer had set a ‘fair share’ at 5 per
cent. For reasons set out in its Judgment, the Supreme Court held that this was an
appropriate percentage [90]–[91]. On this basis, Professor Shanks was awarded a sum
of £2 million.

17.3.2 Compensation where the employee owned the patent

The alternative compensation scheme provided by s.40(2) contemplates that the
invention once belonged to the employee (because of the operation of s.39(2)) but
no longer does so because the employee has since assigned the invention to the
employer or an associated company. The relevant criteria are that:

u a patent must have been granted for an invention made and owned by the employee

u they have since assigned it or granted an exclusive licence over it to the employer

u the benefit from this is inadequate in relation to that derived by the employer

u it is just that additional compensation be awarded.

Again, these are cumulative requirements. Their precise nature means that
compensation may not always be available, for example if the invention is not
patented (see above for why this might be so) or if the employee grants a non-
exclusive licence to the employer rather than assigning the patent or licensing
it exclusively. Consider also how the word ‘inadequate’ raises similar issues to its
counterpart in s.40(1), ‘outstanding benefit’.

The factors to be taken into account when calculating compensation under

both s.40(1) and s.40(2) are to be found in s.41. Read s.41 now. Given the narrow
interpretation accorded to employee inventors under s.40, how effective do you think
the provision is likely to be? What is a ‘fair share of the benefit’?

Activity 17.3
Read ss.39–42 of the Patents Act 1977 and then consider what rights to
compensation an employee might have in the following situations.
a. The employer refuses to apply for a patent to cover the invention as the costs
are too high.

b. The employer points out that there is a collective agreement covering all such
inventions that stipulates the precise level of compensation, which works out to
be £2.50 in the present case.

c. There is a term in all employees’ contracts of employment stating that all

inventions made during normal working hours belong to the employer, with no
obligation to compensate the relevant employees.

d. The employer closes down their company and sets up a completely separate
company to which they sell existing patent rights at an undervalued figure;
meanwhile the employee has been made redundant.

e. The patented invention wins a prestigious prize for innovation, but profits from
its manufacture and sale are very low.

17.4 Dealings in patents

Core text
¢ Bainbridge, Chapter 13 ‘Ownership, dealing with patents, safety and security and
crown use’ pp.505–16.

¢ Bently et al., Chapter 23 ‘Exploitation’.

Intellectual property 17 Ownership of patents and employee inventions page 295
¢ Cornish, Chapter 7 ‘Property rights and exploitation’ paras 7–016 to 7–030.

¢ Karapapa and McDonagh, Chapter 21 ‘Dealings in intellectual property rights’

Section 21.2.

Lastly, and by way of background information only, we consider the property aspects
of patents. You will find that all of the textbooks deal with this in far more detail than
is necessary for this course. You should concentrate on the following basic features of
patent ownership.

u Patents are classified as personal property (s.30) and can be dealt with in the
same way as other forms of personal property, provided that the transaction is
in writing. All transactions affecting patents should be entered on the Register of
patents (s.32). A patent can be licensed to others. Such a licence can be exclusive or
non-exclusive. An exclusive licensee has procedural rights conferred upon them by
s.67, but if the licence has not been recorded on the Register, then under s.68 the
licensee will not be awarded any costs in any subsequent infringement action.

u A patent may be the subject of a compulsory licence three years after the date of
grant (s.48). The reason why the patentee can be forced to license the invention is
failure to exploit it.

u Alternatively, the patentee can ask that the entry on the Register be endorsed to
the effect that licences of right are available (s.46), thus inviting others to request a
licence, the terms of which may be decided by UKIPO.

u The Crown has extensive powers to exploit patents (s.55).

u Patent licences must comply with the requirements of UK and EU competition law.
United Kingdom competition law is to be found in the Competition Act 1998, which
introduced EU competition law principles into domestic law. EU competition law
is a product of the case law of the CJEU and of the EU Commission in interpreting
and applying Articles 101 and 102 of the Treaty on the Functioning of the European
Union (TFEU) (formerly Articles 81 and 82 EC). In relation to patent licences, these
are subject to the provisions of Commission Regulation (EC) No 772/2004 of 27 April
2004 (the Technology Transfer Block Exemption). The Regulation exempts various
types of intellectual property licences from Article 101 TFEU (which prohibits
restrictive agreements) provided that such licences do not contain any prohibited
clauses.

Sample examination question

‘In relation to employee inventions, the scope of an employee’s duties is critical.’
Discuss.

Advice on answering the question

A good answer will:

u explain the structure of s.39 of the Patents Act 1977

u in particular, highlight the differences between s.39(1)(a) and (b)

u use decided cases to illustrate the criteria contained in s.39(1)(a)

u contrast these decisions with those cases decided under s.39(1)(b) where the
employee’s position is more important in deciding whether they owe a duty to
further the interests of the employer’s business

u conclude by indicating the nature of the culture change effected by the 1977 Act.
page 296 University of London

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.
Tick a box for each topic. Ready to Need to Need to
move on revise first study again

I can state the criterion which determines who is to

be treated as the inventor of a patent.   

I can state the rules which determine when an

employer is treated as the owner of a patent.   

I can summarise the rules on compensation for

employee-inventors and evaluate the cases which
  
have applied them.

I can identify whether an employee is or is not the

owner of a patent.   

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

17.1 Who is an inventor?  

17.2 Ownership of employee inventions  

17.3 Compensation for employee inventions  

17.4 Dealings in patents  

18 Patent infringement and defences

Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 298

18.1 Overview of patent infringement . . . . . . . . . . . . . . . . . . . . 299

18.2 Categories of infringing acts . . . . . . . . . . . . . . . . . . . . . . . 299

18.3 Defences to infringement . . . . . . . . . . . . . . . . . . . . . . . . 302

18.4 Revocation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 304

18.5 Interpretation of patent claims . . . . . . . . . . . . . . . . . . . . . 305

Reflect and review . . . . . . . . . . . . . . . . . . . . . . . . . . . 315

page 298 University of London

Introduction
This chapter deals with the rights conferred on a patentee to stop others exploiting
the invention. As with other forms of intellectual property, the statutory list of
prohibited conduct is divided into direct and indirect infringement. The statute also
provides a list of defences which may provide a defendant with protection in specific
circumstances.

As you should by now appreciate, when an infringement action is based on a

registered intellectual property right, the best tactic for any defendant is to challenge
the validity of that right. If a patent has been granted in error, it will be revoked,
thereby disposing of any liability for infringement. We shall therefore look at the
grounds for revocation listed in the Patents Act 1977.

In order to succeed in a patent infringement action, the patentee will have to show
that what has been produced by the defendant falls within the wording of the
claims of the patent. The defendant will rarely have committed what is called ‘literal
infringement’. The task of the court is therefore to construe the claims purposively and
then decide whether the alleged infringement is within the meaning of the claims.
This is an area which has generated a considerable amount of case law, and it is upon
this that you should concentrate.

Learning outcomes
By the end of this chapter and the relevant reading, you should be able to:
u explain and apply the statutory provisions that list the types of conduct which
can infringe a patent
u explain and apply the principal defences to an action for patent infringement
u explain the grounds on which a patent may be revoked
u discuss critically the approach of United Kingdom courts to patent claim
interpretation
u list the issues which are likely to arise in a patent infringement action.
Intellectual property 18 Patent infringement and defences page 299

18.1 Overview of patent infringement

A claimant who brings a patent infringement action has to establish two matters. First,
that one or more of the acts of infringement set out in s.60 of the Patents Act 1977 has
been committed and that such conduct falls within the scope of protection afforded
to the patent. The scope of protection requires the court to construe the claims of the
patent purposively, and then to compare the alleged infringing product or process
with the claim(s) to see if it falls within the patentee’s monopoly (you should refer to
Dyson Appliances Ltd v Hoover Ltd [2001] RPC 473, studied in Chapter 15, for an example
of this). These two issues are sometimes called ‘infringement in law’ and ‘infringement
in fact’. Once the claimant has established their case, the court will normally find in
their favour unless one or more of the counter-arguments raised by the defendant
succeeds. If you are unsure about the role of the claims in a patent specification, you
should revisit your notes for Chapter 15.

The defendant to a patent infringement action has several possible counter-arguments.

u First, that there was no infringing conduct and/or that this did not fall within the
scope of protection given to the patentee; in other words, the claimant has failed
to establish the key ingredients of the infringement action.

u Next, even if all the ingredients of the infringement action have been proved, that
one or more of the statutory defences apply to exonerate the defendant from
liability. Such defences include private and domestic use, experimental use and
exhaustion of rights. Whether one or more of these defences is applicable will
depend primarily on the facts of the individual case.

u Last, the patent should be revoked under one or more of the grounds of revocation
set out in s.72 of the Patents Act 1977. A successful counterclaim for revocation is a
complete answer to any action for patent infringement.

Summary
The statutory tort of patent infringement enables the patentee to prevent others from
committing certain types of conduct, provided that the defendant’s product or process
falls within the scope of protection accorded to the patentee. The scope of protection
is determined by purposive construction of the claims. A defendant can deny that
infringement in law and infringement in fact have been established by the patentee. A
defendant may also rely on one or more of the statutory defences to infringement or
may seek to have the patent revoked on one or more of the statutory grounds.

18.2 Categories of infringing acts

Core text
¢ Bainbridge, Chapter 14 ‘Patents – infringement, remedies and criminal offences’
pp.517–26.

¢ Bently et al., Chapter 22 ‘Infringement’ Section 1 ‘Introduction’, Section 2 ‘Types

of infringing activity’, Section 3 ‘Scope of protection’.

¢ Cornish, Chapter 6 ‘Scope of monopoly’ paras 6–002 to 6–008.

¢ Karapapa and McDonagh, Chapter 18 ‘Infringement of patents’ Sections 18.1 and

18.2.

Essential reading
¢ Case: Tamglass Ltd Oy v Luoyang North Glass Technology Co Ltd [2006] FSR 608.

Prior to the Patents Act 1977, there was no statutory definition of infringement. Instead,
the courts relied on the actual wording of the document granting the patent as an
indication of the patentee’s rights. It has always been the case that patent infringement
requires some sort of commercial activity (British United Shoe Machinery Co v Simon
page 300 University of London
Collier (1910) 27 RPC 567; SKF v Douglas [1991] FSR 522). Further, intention is irrelevant
to the imposition of liability (Proctor v Bennis (1887) 4 RPC 333). However, innocence,
objectively defined, may affect the remedy awarded (Patents Act 1977 s.62(1)).

Section 60(1) and (2) of the Patents Act 1977 sets out the statutory definition of
infringement, the former dealing with direct infringement; the latter with indirect,
or contributory, infringement. As Cornish observes, the list of infringing acts can be
reclassified, time-wise, into what happens before, during and after manufacture.

18.2.1 Direct infringement

Read s.60(1) now. The following observations can be made.

u It requires that the infringing conduct be done without the patentee’s consent and
within the UK (Menashe Business Mercantile Ltd v William Hill Organisation Ltd [2003]
RPC 575).

u It requires that the infringing conduct be done while the patent is in force: this
means that the annual renewal fees must have been paid.

u It lists the infringing conduct in respect of product and process patents. Whether
a patent relates to a product (a thing) or a process (how to make something or do
something or use something) depends on the wording of the claims. As explained
in Chapter 15, a patent may have all product claims, or all process claims or a
mixture of both.

u In relation to process patents, knowledge is required, but only as regards the

offering for use of the process, not using the process. The knowledge required
under s.60(1)(b) is that use of the process which has been offered to another
would infringe. This suggests that the defendant has to have information about the
patent in order to know that use of the process will infringe. The test is objective,
because of the words ‘obvious to a reasonable person in the circumstances’. By
analogy to similar wording in s.22 CDPA, the defendant’s conduct is likely to be
compared with that of the reasonable trader in that area of commerce: LA Gear
v Hi-Tech Sports [1992] FSR 121. The inference must be that companies which seek
patent protection for their own inventions or who exploit patents as part of their
business are expected to familiarise themselves with patented inventions in
their line of business by conducting regular searches of the UK’s patent database:
Tamglass Ltd Oy v Luoyang North Glass Technology Co Ltd [2006] FSR 608. Ignorance of
the claimant’s patent is unlikely to provide an excuse in such circumstances.

Key words and phrases in s.60(1)

Some of the key words and phrases in s.60(1) require further explanation from case law.
‘Making’ and ‘importing’ are relatively straightforward. However, in some interesting
cases, courts have been required to determine the boundary between the concept
of ‘making’ and the concept of ‘repair’. It has generally been accepted that the owner
of a product is entitled to repair it but the point at which a repair becomes a ‘making’
is the point at which we pass from non-infringing to infringing activity. This was an
issue that was considered by the Supreme Court in Schütz v Werit [2013] UKSC 16, a case
concerning a product patent for a bulk waste container consisting of a metal outer
cage and a large inner plastic container. The defendant was involved in repairing the
product, a process that could involve the replacement of the plastic container. Lord
Neuberger held that the question of whether a particular activity was a non-infringing
‘repair’ or an infringing ‘making’ had to be determined contextually and by reference to
relevant factors. In this instance, a free-standing part had been replaced and that part
had no connection to the inventive element of the product. Accordingly, he held this
not to be a ‘making’ within the terms of s.60(1).

‘Disposes’ includes the purchase of an infringing product with the intention of

exporting it (United Telephone Co v Sharples (1885) 2 RPC 28). You should not assume
that the word ‘offers’ bears its contract law meaning, as it has been held to include
both display of an infringing product at an exhibition (Dunlop Tyre Co v British & Colonial
Motor Co (1901) 18 RPC 313) and advertising.
Intellectual property 18 Patent infringement and defences page 301
‘Uses’ requires something more active than simply possessing unassembled equipment
(British United Shoe Machinery Co v Simon Collier (1910) 27 RPC 567). However, there
is also liability for ‘keeping’ (introduced into UK law in 1977). ‘Keeping’ should be
understood in the sense of ‘stocking’ something preparatory for sale (note the wording
in Article 7 of the draft EU Patent Regulation above). Hence it does not impose liability
on a person who is merely a warehouse keeper or carrier: SKF v Harbottle [1980] RPC
363. Rather, it indicates possession with intention to trade in order to make a profit:
Hoffmann-La Roche v Harris [1977] FSR 200. Last, the word ‘directly’ was accorded a
narrow interpretation in Pioneer Electronics Capital Inc v Warner Music Manufacturing
Europe GmbH [1997] RPC 757, CA, namely, the court should ask whether the end product
retained the essential characteristics of the patented process.

The case of Ensygnia v Shell [2023] EWHC 1495 (Pat) illustrates the risk of adding matter
to amend a patent claim after initial grant. This can have an impact not only on validity
but also on infringement claims. The High Court held that in a dispute over alleged
infringement of mobile device patents, the holder of the patent that was alleged to
have been infringed had added too much detail to the patent claims after grant. The
additional matter eventually led to a patent invalidity finding (due to a post-grant
claim amendment). But the court also considered what would have occurred had the
patent been held to be valid. It was additionally held by the court that there would
have been infringement of the first iteration of the patent, but the later iteration (post-
amendment) would not have been infringed.

18.2.2 Indirect infringement

Conduct which amounts to indirect infringement is set out in s.60(2), which is subject
to the specific defence in s.60(3). Read these two subsections now. The following
observations can be made.

u The conduct in question (which must be in the UK) involves supplying or offering
to supply something tangible.

u That ‘something tangible’ is an essential element of the invention.

u The result of the infringing act is that it puts the invention into effect (i.e. makes it
work).

u The provision requires knowledge (objectively defined) on the part of the

defendant. This is not knowledge of the patent, rather it is knowledge that what
has been supplied will make the invention work.

u There is no liability if the thing supplied is a staple commercial product, that is,
something which is readily available from a number of different sources of supply.
‘Staple commercial product’ should be contrasted with something that is made by
the defendant to the primary infringer’s order.

The Court of Appeal has provided detailed guidance on liability for indirect
infringement of a patent under s.60(2) Patents Act 1977. See Grimme Maschinenfabrik
GmbH v Scott [2010] EWCA Civ 1110. The Patents Court has now provided guidance on
the meaning of ‘staple commercial product’ in s.60(3) Patents Act (Nestec SA v Dualit
Ltd [2013] RPC 841 at [182]). The case also provides a useful illustration of indirect
infringement. (The scope of s.60(2) was examined by the Court of Appeal in Menashe
Business Mercantile Ltd v William Hill Organisation Ltd [2003] RPC 575. You may find it
helpful to read this case.)

18.2.3 Other types of infringing conduct

It may be possible for a patentee to sue for infringement in cases which fall outside the
exact wording of s.60(1) and (2). The most important is where the defendant is a joint
tortfeasor, either because they induced the infringing act or because they were party
to a common design. This may be useful where a primary infringer is located outside
the United Kingdom, but a company based within the jurisdiction arranges for them
to make the infringing product. However, the mere supply of infringing goods to a UK
page 302 University of London
purchaser is not enough for this type of liability. ‘Each person must make the infringing
acts his own’: Sabaf SpA v Meneghetti [2003] RPC 264 (CA) at para 58.

One practical point is that a claimant cannot sue for infringement until the patent has
been formally granted. However, it is possible to back-date any claim for damages to
the date when the patent application was published in the Patents Journal, subject to
certain conditions, so that infringement committed between publication and grant
is actionable: Patents Act s.69. If you are unsure about the steps in obtaining patent
protection, you should reread your notes from Chapter 15.

Activity 18.1
Read Tamglass Ltd Oy v Luoyang North Glass Technology Co Ltd [2006] FSR 608 for
an illustration of how a defendant can commit a number of restricted acts under
s.60(1). Then undertake the following exercise.
Supermed plc holds a UK patent for cuprocillin, a new type of antibiotic which is
highly effective in treating bacterial infections. Cuprocillin has two ingredients,
copper sulphate (a chemical known for many years and which is readily available)
and moron tribromide, which is a relatively new compound and difficult to make.
Supermed has discovered that Moulds Ltd have made the identical drug without
permission and has then supplied the drug to Pharmagen Ltd, a wholesaler.
Pharmagen has in turn supplied both Blacks, a chain of chemists’ shops, and
Barsetshire Hospital. Moulds Ltd has obtained its supplies of copper sulphate from
Tom and its supplies of moron tribromide from Harry.
Explain which infringing acts listed in s.60(1) and 60(2) of the Patents Act 1977
have been committed and by whom (you may assume that all the claims in the
cuprocillin patent are product claims). Would your answer be different if Moulds
Ltd arranged for cuprocillin to be manufactured by Pasteur SA, a French company, at
a factory in France?

18.3 Defences to infringement

Core text
¢ Bainbridge, Chapter 15 ‘Patents – defences, groundless threats and revocation’
pp.553–59.

¢ Bently et al., Chapter 22 ‘Infringement’ Section 4 ‘Defences to proceedings for

infringement’.

¢ Cornish, Chapter 6 ‘Scope of monopoly’ para.6–011.

¢ Karapapa and McDonagh, Chapter 18 ‘Infringement of patents’ Section 18.3.

Essential reading
¢ Cases: Lubrizol Corp v Esso Petroleum Ltd [1998] RPC 727; United Wire Ltd v Screen
Repair Services (Scotland) Ltd [2000] 4 All ER 353; Schütz v Werit [2013] UKSC 16.

There are a number of defences which may be raised against a claim of patent
infringement. For convenience, they are organised here into separate groups.

18.3.1 Statutory defences under the Patents Act, s.60(5)

Section 60(5) of the Patents Act 1977 contains a number of specific defences. The
common denominator of these provisions is that they are concerned with striking
a fair balance between the interests of the patentee and the legitimate business
interests of third parties. Read s.60(5) now. Observe how most of the defences involve
quite specific factual circumstances, such as the activities of a pharmacist (s.60(5)(c))
and the defences on farmers’ privilege (inserted as a result of the Biotech Directive)
which will apply only in the context of patents involving living matter (s.60(5)(g) and
(h)). Another group of defences which will only arise in a particular factual scenario
relates to vehicles, ships and aircraft temporarily within United Kingdom territorial
waters or airspace (s.60(5)(d), (e) and (f)). In Stena Rederi Aktiebolag v Irish Ferries Ltd
Intellectual property 18 Patent infringement and defences page 303
[2003] RPC 681, in the context of a ferry travelling regularly between Eire and the UK,
the Court of Appeal clarified what is meant by ‘temporarily’. Quite simply it means ‘for
a limited period of time’. The frequency, persistency and regularity of the visits were
irrelevant.

The remaining two defences in the subsection relate, first, to using the invention for
private not commercial purposes. SKF v Evans [1989] FSR 513 explained that ‘private’
meant ‘personal’ rather than ‘secret’. Second, there is the defence of experimental
purposes. The old case of Frearson v Loe (1878) 9 Ch D 48 stated the policy that ‘patent
rights were never granted to prevent persons of ingenuity exercising their talents in a
fair way’. Like the private use defence, there is the requirement that the conduct must
not be done for some overriding commercial purpose. Thus to conduct experiments
with a view to challenging the validity of a patent would fall within the defence, but
conducting trials of a product with a view to obtaining government approval for its
subsequent sale would not: Monsanto v Stauffer Chemical [1985] RPC 515. As pointed
out in SKF v Evans, the wording of s.60(5)(b) requires the experiments to be done
for purposes ‘relating to the subject matter of the invention’. Such subject matter
is determined by the wording of the claims. In SKF v Evans itself, this meant that
experiments carried out on goods which were the subject matter of one patent with a
view to challenging a separate but related patent were not protected by this defence.
Similarly, in Corevalve Inc v Edwards Lifesciences AG [2009] FSR 367, the defendant’s
device for an artificial heart valve was different from the claimant’s. Applying Monsanto
v Stauffer the court concluded that if, as here, the defendant had mixed purposes
(developing confidence in its product by the professionals who would use it, building
up technical data through the use of its device in hospitals and generating revenue) it
was necessary to determine what was the main purpose. It could not be said that data
gathering was the predominant purpose so, had the defendant’s device infringed, the
experimental use defence would not have been available.

18.3.2 Prior use

As with other forms of registered intellectual property right, a defendant can always
argue ‘I was here first’. The prior use defence is set out in s.64 of the Patents Act
1977. Read the section carefully now. You should note the very precise criteria in
the section, in particular that the relevant conduct must have been started by the
defendant before the priority date of the patent. This means that the defendant’s
conduct must pre-date the filing date of the claimant’s patent, not its date of grant.
The section was accorded a narrow interpretation by the Court of Appeal in Lubrizol
Corp v Esso Petroleum Ltd [1998] RPC 727.

Activity 18.2
Read the Court of Appeal decision in Lubrizol Corp v Esso Petroleum. Explain why the
defendant in that case was unable to rely on the defence in s.64.
No feedback provided.

18.3.3 Case law

Case law has provided three further defences to patent infringement. Under the
jurisprudence of the CJEU, the exhaustion of rights doctrine can be relied upon by
a defendant who has imported a patented product which has been placed on the
market with the patentee’s consent in another EEA Contracting State: Cases 15 and
16/74 Centrafarm v Sterling Drug [1974] ECR 1147. If you are unclear on the doctrine
of exhaustion of rights, please refer to your notes from Chapter 13 (‘Trade mark
infringement and defences’).

Another so-called defence, first recognised in Sirdar v Wallington (1907) 24 RPC 539, is
that the purchaser of a patented product has an implied licence to repair it, as long as
the repair does not amount to the manufacture of a total replacement. The ‘defence’ has
been examined by the House of Lords in United Wire Ltd v Screen Repair Services (Scotland)
Ltd [2000] 4 All ER 353, and by the Supreme Court in Schütz v Werit [2013] UKSC 16. It is not
a true defence to infringement but, rather, is a way of saying that the defendant has not
page 304 University of London
actually infringed the patent, as the act of repair does not appear in the list of infringing
acts in s.60.

Another so-called ‘defence’ (sometimes known as the ‘squeeze’ argument) is to say

that the infringement is ‘not novel’. It comes from the decision in Gillette Safety Razor Co
v Anglo-American Trading Co (1913) 30 RPC 465 (hence it is often referred to as the Gillette
defence). It involves the defendant arguing that the alleged infringement (which is not
quite identical to the patent) is within the prior art. Its effect is to place the patentee
‘on the horns of a dilemma’ (to quote Lord Moulton in that case). If the patentee
argues that the patent claims should be widely interpreted (so that the alleged
infringement falls within their scope) the patent will be invalid because of anticipation
or obviousness. If, however, a narrow construction of the patent is adopted, so that the
patent survives any attack on its validity, the defendant’s product or process will fall
outside its wording and not infringe. As was explained by Lord Evershed in Page v Brent
Toy Products (1950) 67 RPC 4, the Gillette defence is not really a defence. Rather, it is a
method of pleading, enabling the defendant to raise non-infringement and validity in
the same argument. You should return to the Gillette defence once you have completed
your reading of Section 18.5.

18.3.4 Restrictions on the availability of damages

Section 62 of the Patents Act 1977 limits the availability of damages in certain
circumstances. The most important is when the defendant argues that the infringement
was innocent. Innocence is to be determined objectively: Wilbec v Dawes [1966] RPC 513.

Summary
A defendant to a patent infringement action, besides denying that the claimant has
established the ingredients of the action and has a number of statutory and case
law defences. The most important statutory defences are to be found in s.60(5) and
s.64 of the Patents Act. Section 60(5) aims to strike a balance between the needs of
competitors and the interests of the patentee, whereas s.64 contains the defence of
prior use. The statutory defences all contain precise wording and will only apply in
very specific situations.

18.4 Revocation

Core text
¢ Bainbridge, Chapter 15 ‘Patents – defences, groundless threats and revocation’
pp.565–69.

¢ Bently et al., Chapter 22 ‘Infringement’ Section 4 ‘Defences to proceedings for

infringement’.

¢ Karapapa and McDonagh, Chapter 18 ‘Infringement of patents’ Section 18.4.

Essential reading
¢ Case: H Lundbeck A/S v Generics (UK) Ltd [2009] RPC 407 (HL).

Section 74 of the Patents Act 1977 lists the circumstances when the validity of the
patent may be put in issue. The most important one in this list from your point of view
is an action for patent infringement. Any person can apply to revoke a patent − there
is no need for the applicant for revocation to show that they have standing to sue:
Cairnstores Ltd v AB Hassle [2002] FSR 95. The grounds for revocation are set out in s.72.
This is a self-contained provision which excludes any consideration of the previous
law: Genentech Inc’s Patent [1989] RPC 147, Mentor v Hollister [1991] FSR 557.

Read s.72(1) now. Of the five grounds of revocation listed there, the ones on which
you should concentrate are those in paragraph (a) (not a patentable invention)
and paragraph (c) (insufficiency). Paragraph (a) means failure to comply with any of
the requirements of patentability will invalidate the patent. You cannot therefore
Intellectual property 18 Patent infringement and defences page 305
study patent infringement without also knowing thoroughly the requirements for
patentability. These were explained in Chapter 16.

Activity 18.3
List the requirements for a patentable invention found in s.1 of the Patents Act 1977.
No feedback provided.
The requirement of sufficiency was explained in Chapter 15. You should be aware that a
challenge under s.72(1)(c) can involve two different allegations. First, that the description
of the invention in the patent specification does not enable the skilled addressee to
perform the invention (sometimes called ‘classic insufficiency’). Section 72(1)(c) also
covers what is sometimes referred to as ‘Biogen insufficiency’ (so called after the decision
of the House of Lords in Biogen v Medeva [1997] RPC 1). This means that the claims of the
patent are broader than the description. The matter was explained by Aldous LJ in Kirin
Amgen Inc v Hoechst Marion Roussel Ltd [2003] RPC 31, at para 71, in the following terms.

The specification must enable the invention to be performed to the full extent of the
monopoly claimed. If the invention discloses a principle capable of general application,
the claims may be in correspondingly general terms. The patentee need not show that
he has proved its application in every individual instance. On the other hand, if the
claims include a number of discrete methods or products, the patentee must enable the
invention to be performed in respect of each of them.

The matter has since been considered by the House of Lords in H Lundbeck A/S v
Generics (UK) Ltd [2009] RPC 407. You should read carefully what Lord Neuberger says
about the significance of Biogen v Medeva and the fact that the latter was a highly
unusual case. In essence, the ability to revoke a patent for overly broad claims depends
on whether the claims match the description.

Summary
Section 72 of the Patents Act 1977 contains an exhaustive list of the grounds on which
a patent may be revoked. Revocation may be the subject of separate proceedings
before the Patent Office or can be raised by way of a counterclaim to infringement
proceedings. The grounds of revocation are, in essence, that there is not a patentable
invention, that the patent has been granted to the wrong party, that the description of
the invention is insufficient or that there has been an impermissible broadening of the
description or claims of the patent when it was amended. The grounds of revocation
most frequently encountered are that what was granted was not a patentable
invention and/or that the specification was insufficient.

18.5 Interpretation of patent claims

Core text
¢ Bainbridge, Chapter 14 ‘Patents – infringement, remedies and criminal offences’
pp.526–37.

¢ Bently and Sherman, Chapter 22 ‘Infringement’ Section 3 ‘Scope of protection’.

¢ Cornish, Chapter 6 ‘Scope of monopoly’ paras 6–001 to 6–008.

¢ Karapapa and McDonagh, Chapter 18 ‘Infringement of patents’ Section 18.5.

Essential reading
¢ Cases: Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48; Catnic Components v Hill &
Smith [1982] RPC 183; Improver v Remington [1990] FSR 181; Daily v Berchet [1992]
FSR 533; Wheatley (Davina) v Drillsafe Ltd [2001] RPC 133; Kirin Amgen Inc and
others v Hoechst Marion Roussel Ltd [2005] 1 All ER 667; Actavis UK Ltd v Eli Lilly & Co
[2017] UKSC 48.
page 306 University of London

18.5.1 Claim interpretation: the issues

In determining whether there has been patent infringement, it is necessary to decide
whether the defendant’s conduct falls within the scope of the claimant’s patent.
Such an issue requires the court to interpret the claims in the patent specification, a
notoriously subjective activity. in the past, UK courts adopted a ‘literal’ interpretation:
‘what is not claimed is disclaimed’ (EMI v Lissen (1939) 56 RPC 23 at 39 – Lord Russell).
The literal approach was not followed if this produced an absurd result and deprived
the patentee of all protection (Henrickson v Tallon [1965] RPC 434). The literal approach
treated the claims as marking the absolute extent of the patentee’s monopoly
(a ‘fence post’), so that anything outside the scope of the claims did not count as
infringement. You may find it helpful to think of the claims in a patent specification
as analogous to a map of real property for the purposes of land registration. Patent
infringement then becomes a question of whether the defendant has ‘trespassed’ on
the patentee’s monopoly by entering the linguistic territory marked out by the claims.
Courts have struggled to establish an approach to this issue that is fair to both the
patentee, on the one hand, and the public and competitors, on the other. The correct
approach to this issue has recently been laid down by the Supreme Court in Actavis UK
Ltd v Eli Lilly & Co [2017] UKSC 48. Nevertheless, it is worth setting the current position
in historical context.

18.5.2 Claim interpretation: taking the substance of the invention

A defendant may not have committed ‘textual’ or ‘literal’ infringement. Instead, they
will have made changes to the claimant’s invention. Whether these differences (called
‘variants’) infringe or not, used to be determined by what was known as the ‘pith and
marrow doctrine’ or the doctrine of ‘mechanical equivalents’. In order to infringe, the
defendant had to have taken the ‘pith and marrow’ of the invention by incorporating
all the essential integers in the alleged infringement (an ‘integer’ is a key feature of
a claim). If such integers, being the ‘substance’ of the invention, were present, it did
not matter if other, non-essential, integers had ‘mechanical equivalents’ substituted
for them: Marconi v British Radio Telegraph & Telephone Co (1911) 28 RPC 181, Birmingham
Sound Reproductions v Collaro [1956] RPC 232. The difficulty was to decide what was the
substance of any given invention. As examples of older cases (these are no longer of
precedential value, although each is a majority decision of the House of Lords) we may
note Van der Lely v Bamfords [1963] RPC 61 (a mechanical hay rake with ‘demountable’
hindmost wheels was not infringed by a rival product with ‘demountable’ front wheels)
and Rodi & Wienenberger v Showell [1969] RPC 367 (an expandable watch-strap with ‘U’
shaped links was not infringed by one with ‘C’ shaped links). In both of these cases the
alleged infringement worked in exactly the same way as the claimed invention.

18.5.3 Claim interpretation: purposive construction

A more liberal approach arrived when Lord Diplock in Catnic Components v Hill & Smith
[1982] RPC 185 argued that a ‘purposive construction’ of the patent specification
should be adopted. He stated that the court should ask whether persons experienced
in the kind of work in which the patent was intended to be used (i.e. the skilled
addressee) would understand that the patentee intended strict compliance with the
words appearing in the claim. In this case it was decided, in relation to a patent for
a lintel which stipulated that the back-plate of the lintel had to be ‘vertical’, that the
claims would cover lintels, the back-plate of which was not at a precise right-angle.
A literal interpretation, confining the patent to those with right-angled back-plates,
would have deprived the patentee of all protection. ‘Vertical’ here was treated as a
descriptive word rather than one having an exact meaning. Lord Diplock’s ‘purposive
construction’ test replaced the ‘pith and marrow’ doctrine which should now be
regarded as of historical interest only.

18.5.4 The effect of the Protocol to Article 69 EPC 1973 and the 2000
amendments
The 1977 Act introduced a changed approach to claim interpretation. Section 125
of the Patents Act 1977 incorporates Article 69 of the European Patent Convention
Intellectual property 18 Patent infringement and defences page 307
(EPC) on the extent of protection to be conferred on a patent. Read s.125 and Article
69 EPC now.

Article 69 EPC declares that the scope of protection accorded to a patent is to be

determined by the claims which are to be interpreted in the light of the description and
any drawings. The original wording of the Protocol to Article 69 EPC directed national
courts to avoid applying a strictly literal interpretation of the claims and equally to avoid
using the claims simply as guidelines. A middle path was to be adopted, ‘combining fair
protection for the patentee with a reasonable degree of certainty for third parties’.

The 2000 amendments to the EPC included a revision to the Protocol to Article 69. The
amended Protocol consists of two Articles. Article 1 reproduces the current version of
the wording, except that ‘patentee’ is replaced by ‘patent proprietor’. Article 2 is new:
it provides that: ‘For the purpose of determining the scope of protection conferred by
a European patent, due account shall be taken of any element which is equivalent to
an element specified in the claims.’

It is important that you remember the wording of Article 69 and the amended
wording of the Protocol.

18.5.5 Case law on the Protocol

The adoption of the Protocol has been discussed in an extensive body of UK case law.
You should make every effort to read the principal cases. However, this case law must
now be read in the light of Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48. The historical
development of the cases can be summarised as follows.

u The Court of Appeal in the interlocutory proceedings in Improver v Remington

[1989] RPC 69 declared that Lord Diplock’s purposive construction test in Catnic
was the appropriate test for patents granted under the 1977 Act (even though the
Catnic litigation involved a patent granted under the 1949 Patents Act).

u In the substantive hearing in Improver v Remington [1990] FSR 181, Hoffmann J took
Lord Diplock’s question from Catnic and reworked it into a more complex three-
stage test, the final question asking whether the skilled addressee, confronted with
the specification, would understand that the patentee intended strict compliance
with the wording of the claim.

u Thereafter, UK courts applied what became known as the Catnic/Improver questions

to determine whether a variant infringed. An example is Daily v Berchet [1992] FSR
533 where it was held that a baby walker with a ‘braking arrangement in association
with the rear wheels’ was not infringed by a similar walking frame where braking
was achieved by means of friction with the ground. The approach of the Court of
Appeal in this case repays close study: the Court takes the claim and breaks it down
into essential integers (in the same manner as the old ‘pith and marrow’ doctrine),
thereby emphasising the literal meaning of the claim. Other cases where the Catnic/
Improver questions were used include Electrolux v Black & Decker [1996] FSR 595 and
American Home Products Corp v Novartis Pharmaceuticals UK Ltd [2001] RPC 1.

u There is only one UK decision which has questioned the correctness of the Catnic/
Improver questions, namely PLG Research Ltd v Ardon [1995] RPC 287 CA. Here, Millett
LJ argued that it was preferable to follow the then approach of the German courts
to claim interpretation. He stated that these courts used a modified version of the
Improver questions. The first two questions are identical (namely, as a question
of fact, whether the variant works in the same way as the invention and, if so,
whether this would have been obvious to the skilled addressee). However, the
third question is replaced by an alternative which asks what variants the skilled
addressee would contemplate as falling within the claims.

u PLG v Ardon was immediately criticised (and Millett LJ’s remarks were stated to be
obiter) by Aldous J in Assidoman Multipack v The Mead Corporation [1995] RPC 321. It
was then repeatedly stated by the Court of Appeal (for example, in Beloit v Valmet
[1997] RPC 489 and Kastner v Rizla [1995] RPC 585) that reliance on the Improver
questions was the proper approach under the EPC to determine patent claim
interpretation.
page 308 University of London
u The Improver questions were renamed ‘the Protocol questions’ in Wheatley (Davina)
v Drillsafe Ltd [2001] RPC 133. There is an interesting division of opinion in the Court
of Appeal as to whether or not there had been infringement.

u Not every case utilised the questions. For example, the court dispensed with the
questions in Warheit v Olympia Tools Ltd [2003] FSR 95, where the invention was
very simple and there was literal infringement. Equally, in cases dealing with
pharmaceutical patents, it was said that the Protocol questions, though providing
a structured approach, were not always appropriate and that the Protocol itself
simply required the third question to be put: Pharmacia Corp v Merck & Co Inc [2002]
RPC 775 (CA) and Merck & Co Inc v Generics (UK) Ltd [2004] RPC 607.

u In Kirin Amgen Inc v Hoechst Marion Roussel Ltd [2005] 1 All ER 667 (HL), the issue of
claim interpretation was revisited in detail by Lord Hoffmann. He suggested that
in fact there is only one question that must be asked: what would a person skilled
in the art have understood the patentee to have used the language of the claim
to mean? Everything else, including the Protocol questions themselves, was only
guidance to a judge trying to answer that question. Further, in instances of new
technology, the Protocol questions might be unhelpful.

u Since Kirin Amgen, the 2000 revisions to the EPC have come into force, including
the changes to the Protocol. It was pointed out earlier that Article 2 of the Protocol
now states that equivalent elements are to be taken into account. You should
consider carefully whether Lord Hoffmann’s statement in Kirin Amgen that there is
no doctrine of equivalents accords with this.

u Following Kirin Amgen it was clear that the choice of the skilled addressee, as
well as the context of the patent (i.e. how sophisticated it is) and the precision of
language used by the patentee, could all have a crucial bearing on how claims are
interpreted. Consider how the court approached key words in the following cases:
Corus UK Ltd v Qual-Chem Ltd [2008] EWCA Civ 1177 (the word ‘tailored’ in a patent
relating to the manufacture of steel did not have a precise meaning); Ancon Ltd v
ACS Stainless Steel Fixings Ltd [2009] EWCA Civ 498 (the skilled addressee of a patent
concerned with bolts used in fixing metal-framed buildings was not a geometer
but a practical designer of such buildings); Boegli-Gravures SA v Darsail-ASP Ltd
[2009] EWHC 2690 (Pat) (‘pyramidal teeth’ in a patent for a machine for embossing
paper was used figuratively rather than precisely); Occlutech GmbH v Aga Medical
Corporation [2009] EWHC 2013 (Ch) (the words ‘dumb-bell shaped’ in a patent for
a surgical device were descriptive, while the word ‘clamp’ involved a degree of
precision); and Zeno Corporation v BSM-Bionic Solutions Management [2009] EWHC
1829 (Pat) (the use of exact measurements for time and temperature in a device for
treating insect bites indicated that the patentee expected precise compliance).

he current approach established in Actavis UK Ltd v Eli Lilly & Co

18.5.6 T
[2017] UKSC 48
In Actavis UK Ltd, the Supreme Court revisited the methodology to be applied by UK
courts in the interpretation of patent claims in cases of alleged patent infringement
through the manufacture or use of a variant of the invention. The Court emphasised
the importance of taking into account the Protocol to Article 69 of the European
Patent Convention (as amended by EPC 2000):

Article 1

General principles

Article 69 should not be interpreted as meaning that the extent of the protection
conferred by a European patent is to be understood as that defined by the strict, literal
meaning of the wording used in the claims, the description and drawings being employed
only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken
to mean that the claims serve only as a guideline and that the actual protection conferred
may extend to what, from a consideration of the description and drawings by a person
skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be
interpreted as defining a position between these extremes which combines a fair
Intellectual property 18 Patent infringement and defences page 309

protection for the patent proprietor with a reasonable degree of legal certainty for third
parties.

Article 2

Equivalents

For the purpose of determining the extent of protection conferred by a European patent,
due account shall be taken of any element which is equivalent to an element specified in
the claims.

In the cases noted immediately above, UK courts had already considered the impact
of the Protocol (both before and after the amendment of the Protocol under the EPC
2000). In Kirin Amgen Inc v Hoechst Marion Roussel Ltd in particular, Lord Hoffmann
examined the question of claim interpretation in detail. He suggested that courts
should focus only on assessing what a person skilled in the art would have understood
the patentee to have meant in using the language of the claim. In essence, under this
approach, the task of claim interpretation was viewed purely as an issue of linguistic
interpretation. Everything else, including the Protocol to Article 69 and the Improver/
Protocol questions, simply provided guidance to a judge attempting to make that
assessment. In Kirin Amgen, Lord Hoffmann made it clear that, in interpreting patent
claims, decision-makers in the UK should not apply a ‘doctrine of equivalents’ (that
is, a doctrine under which a variant outside the wording of the patent claim could
nevertheless be held to infringe that claim on the basis that it is ‘equivalent’ to the
claim). In Actavis UK Ltd, Lord Neuberger (with whom the other Justices of the Supreme
Court agreed) moved away from this approach, holding that its single-minded focus
on linguistic interpretation was too narrow and took too little account of Article 2 of
the amended Protocol to Article 69 of the EPC 2000.

Actavis UK Ltd concerned a Swiss-type claim for a drug patent (see ‘Methods of
treatment’ in 16.2.2 above). Eli Lilly held a European patent for the use of a particular
compound, pemetrexed disodium (with vitamin B12), in the manufacture of a
medicament for the treatment of cancer. The claimant (Actavis), which is a supplier
of generic pharmaceuticals, brought proceedings for a Declaration that it would
not commit direct infringement of this patent (under s.60(1) Patents Act 1977) in
marketing products containing other pemetrexed compounds. Under an approach
based purely upon linguistic interpretation, it was difficult to see how there could be
direct infringement of a claim which made such specific reference to the particular
compound in this instance. It was therefore not surprising that, in relation to direct
infringement, both Arnold J at first instance and the Court of Appeal, in following Kirin
Amgen, had found no infringement.

In reversing this conclusion, Lord Neuberger held that, in considering an allegation

of infringement by a variant, two successive questions should be considered. In both
instances, these questions were to be considered through the eyes of the notional
skilled addressee. First, it was necessary to ask whether the variant infringed the
claim at issue as a matter of interpretation. If it did not, it was then necessary to
ask nevertheless whether the variant infringed because it varied from the claimed
invention in a way or ways which were not material (or, in other words, because the
variant was equivalent to the claimed invention). In approaching this second question,
Lord Neuberger held that the Improver/Protocol questions that had previously been
employed by UK courts remained useful, but required slight amendment. As adjusted,
the questions required a decision-maker to consider (i) whether the variant has a
material effect on the way in which the invention works; (ii) whether the notional
addressee, on being told what the variant does, would consider it obvious that it
achieved substantially the same result in substantially the same way as the invention;
and (iii) whether the notional addressee would have understood from the language of
the claim that the patentee intended that strict compliance with the primary meaning
was an essential requirement of the invention. On this approach, Actavis’s product was
not held to infringe at stage one. However, it was held to infringe at stage two. On this
basis, it was held that the claimant’s activities would infringe Eli Lilly’s patent.
page 310 University of London
In confirming a doctrine of equivalents or variants in accordance with Article 2 of the
Protocol, Actavis UK Ltd brings the UK much more closely in line with other members
of the EPC 2000. At the risk of sowing some uncertainty, the judgment will provide an
expansion in the scope of patent protection that will be welcomed by right holders.

Courts have begun to apply the test to claims construction established by the
Supreme Court. In Icescape v Ice-World [2018] EWCA Civ 2219, the Court of Appeal
described this test as markedly different from that adopted previously. However, Floyd
LJ went out of his way to emphasise that there were limits to the liberalisation of the
approach to infringement initiated by Actavis:

[97] It should not be thought, however, that the claims do not continue to have an
important function. It is variants from the claim which have to achieve substantially
the same effect in substantially same way as the invention. The claims remain the
starting point for the subsequent analysis of variants. Although we may have edged
closer to it, the new approach does not transgress the second of the outlawed
approaches in the Protocol, which treats the claim merely as a somewhat vague
guideline.

In Regen Lab SA v Estar Medical Ltd [2019] EWHC 63 (Pat), HHJ Hacon applied the
approach to the interpretation of the scope of patent claims set out by the Supreme
Court in Actavis UK Ltd v Eli Lilly & Co. He considered, inter alia, the first question that
a court must ask under the Actavis approach (i.e. does a variant infringe any of the
claims on a ‘normal interpretation’?). The judge held that, given the purposive nature
of the enquiry at subsequent stages of the Actavis enquiry, this first step was to be
undertaken in a more limited way:

…[T]he normal construction of the claim is confined to interpreting the words of the
claim in the context of the specification as a whole. This is to be done in a manner akin to,
although of course it could never be identical to, the interpretation of a contract… [207]

Such construction was to be viewed through the eyes of the skilled person, furnished
with common general knowledge.

In 2022, the IPEC decided the case of Vernacare Ltd v Moulded Fibre Products Ltd [2022]
EWHC 2197 (IPEC). The case concerned open-topped washbowls made from moulded
paper pulp. The judgment addresses infringement on equivalence.

Vernacare and Moulded Fibre (MFP) are competitors. Vernacare owns two patents, GB
2446793 (the ‘793 patent’) and GB 2439947 (the ‘947 patent’), both with a priority date
of 2006, which relate to the shape and composition of pulp washbowls. Vernacare
claimed MFP had infringed the 793 and 947 patents. MFP argued non-infringement
and that the patent was obvious. For the 947 patent, MFP accepted that its washbowl
would infringe but claimed the patent was invalid. The 947 patent was held by the
court to be valid and, as infringement was admitted, MFP lost on this ground. However,
what is crucial for our purposes is the 793 patent, as this concerned the doctrine of
equivalents. At the priority date, in 2006, pulp moulded containers were used in care
settings as bed pans but not as washbowls. The 793 patent states that this is because
washbowls need to hold a greater volume of liquid (up to four litres) and existing
designs only incorporated a lip, thus would break when carried. The 793 patent goes
beyond this by providing a washbowl with inwardly projecting recesses on opposite
sides of the bowl, allowing the washbowl to be lifted in a rigid, and thus safe, form.
On infringement, the key question was whether the rival MFP washbowl contained
‘an enclosing wall comprising recesses’ and whether those recesses formed ‘grip
means’ for ‘facilitating lifting’. For the 793 patent, the judge first asked whether the
MFP washbowl infringed under a purposive construction. The 793 patent claimed
‘recesses’ so there had to be multiple recesses and the wording of the specification
meant that these recesses had to have near vertical sides. But the MFP washbowl was a
single ridge with no near vertical sides and therefore it did not infringe on a purposive
construction. The product had been ‘designed around’ the patent.
Intellectual property 18 Patent infringement and defences page 311
The judge proceeded to assess infringement by equivalence. This was done by way of
the three questions set out by Lord Neuberger in Actavis v Eli Lilly [2017] UKSC 48:

1. Does the variant achieve substantially the same result in substantially the same
way as the invention (i.e. the inventive concept revealed by the patent)?

2. Would it be obvious to the skilled person at the priority date, knowing that the
variant achieves substantially the same result as the invention, that it does so in
substantially the same way as the invention?

3. Would the skilled person have concluded that the patentee nonetheless intended
that strict compliance with the literal meaning of the relevant claim of the patent
was an essential requirement of the invention?

To make out infringement by equivalence the answers must be: (1) yes; (2) yes; (3) no.
To answer the first two questions, the judge is meant to identify the patent’s inventive
concept. Vernacare stated that it was ‘to provide a moulded paper pulp bowl large
enough to be used as a washbowl, with a grip means in the form of recesses’. MFP
argued it was ‘the use of recesses with vertical sides’. However, the judge did not
consider it necessary to decide this point relating to the first two questions, finding
that Vernacare would clearly fail on two separate points: the answer to the third
question would be ‘yes’ and MFP could rely on the Formstein defence.

The Formstein defence (named after a decision in a German case) is where an alleged
infringer is able to avoid infringement liability under the doctrine of equivalents, if the
scope of the claim is so expanded as to read onto the prior art. There have been obiter
discussions of its availability in other UK cases (e.g. by Birss LJ in Facebook v Voxer [2021]
EWHC 1377 and by HHJ Hacon in Technetix v Teleste [2019] EWHC 126 (IPEC)) but in neither
case was the defence determinative as the patents were found invalid. The judge
found that a moulded bowl with an undulating ridge running around the side walls
was part of the common general knowledge (prior art). As such, the defence kicked
in and equivalence could not apply. The skilled person would have concluded that
the patentee intended strict compliance with the wording of the claim, as otherwise
the claim would be invalid for obviousness. Thus, the 793 patent was held to be valid
but not infringed. This is the first decision when a Formstein defence was made out in
UK law. This was decisive on the 793 patent. However, the claimant succeeded in the
infringement argument on the 947 patent.

Activities 18.4–18.7
18.4 Read the opinion of Lord Diplock in Catnic Components v Hill & Smith. Then read
the judgment of Hoffmann J in Improver v Remington. How does each say the
issue of patent claim interpretation is to be approached? What is the effect of
Lord Hoffmann’s speech in Kirin Amgen?

18.5 Read the decision of the Court of Appeal in Wheatley v Drillsafe. What are the
differences between the majority judgments (Sedley and Mance LJJ) and the
minority judgment of Aldous LJ on the issues of infringement?

18.6 Read paragraphs 18–52 and 65–75 of the opinion of Lord Hoffmann in Kirin
Amgen. What does he say about claim interpretation?

18.7 Now consider the approach adopted in these cases in the light of your reading
of Actavis UK Ltd v Eli Lilly & Co.
page 312 University of London

Sample examination questions

Question 1 Critically discuss the extent to which UK courts have adopted a
purposive approach to the construction of patent claims.
Question 2 Levron plc, which until a few years ago manufactured only shampoos,
hair conditioners and hairspray, is the owner of a UK patent granted on 1 April 2000
for an improved type of heated roller. The description of the invention explains
that the problem encountered previously with heated rollers was that they tended
to have an adverse effect on the user’s hair. There was well-documented evidence
that heated rollers had a drying effect on the hair such that excessive use resulted
in the hair becoming damaged and brittle. The description goes on to say that the
advance over the prior art lies in the fact that the Levron roller contains an inner
chamber in which is stored a hair-conditioning gel. When the gel becomes heated
along with the roller the gel softens and passes through tiny perforations in the
roller to come into contact with the hair. Claim 1 of the specification accordingly
reads:
‘A plastic hair roller comprising a round tube containing a substantially circular
inner chamber in which can be stored hair-conditioning gel, the outer surface of
said roller consisting of perforations each of 1 millimetre diameter such that when
said roller is placed over the element of an electric heater until it is hot, the said gel
becomes semi-liquid so that when hair is wrapped around the roller, the gel can
pass from the inner chamber through the perforations and into contact with the
user’s hair.’
Bella SA, a French company, has started to manufacture a rival product to the
Levron heated roller at its factory on the outskirts of Paris. The Bella heated
rollers have an elliptical profile and an oval internal chamber which utilises a hair
conditioning liquid rather than a gel. In consequence the size of the perforations in
the rollers is 0.75 millimetres diameter. Levron has discovered that Bella has agreed
to supply 10,000 units to Largesse plc, a UK firm which runs a mail order catalogue.
In addition, the Bella product is being advertised on Bella’s website which can be
readily accessed from the UK.
Levron seeks your advice as to its chances of success in any infringement
proceedings in the UK, including any remedies to which it might be entitled. (You
should assume that Levron has obtained patent protection only in the UK.)
Intellectual property 18 Patent infringement and defences page 313

Advice on answering the questions

Question 1 A good answer will:

u begin by explaining the role of patent claims in the law of patents, mentioning
s.14(5) of the Patents Act 1977 as well as s.125 and Article 69 and the Protocol
thereto in the EPC

u briefly explain the historical development of claim interpretation up to the

decision in Catnic (but it should be emphasised that this account should be as
concise as possible)

u set out Lord Diplock’s remarks in Catnic and explain how Hoffmann J reworked the
Catnic question into the three Improver questions (again, this should be as brief as
possible)

u evaluate whether Lord Diplock’s approach in Catnic was as radical as is often

claimed and whether it met the objectives of the Protocol to Article 69 EPC 1973
(reference to some of the available literature is expected)

u similarly, consider whether Hoffmann J’s Improver questions fulfilled the Protocol’s
objectives, in particular whether the third question carried the implicit danger of a
return to literal interpretation which is outlawed by the Protocol

u discuss the outcome in Wheatley v Drillsafe and whether the ‘rebranding’ of the
Improver questions to the ‘Protocol’ questions was significant

u discuss Lord Hoffmann’s opinion in Kirin Amgen, in particular his statement that
there is no doctrine of equivalents

u explain the changes to the wording of the Protocol found in EPC 2000 and debating
whether they are likely to have any effect on the approach of UK courts to patent
claim interpretation, especially with regard to the treatment of equivalent
elements.

u consider the test established in Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48 and
explain why it can be regarded as markedly different from that which went before.
Relate the discussion to the ‘purposive approach’, about which the question has
asked.

Question 2 A good answer will do the following.

u Consider, as a preliminary matter, the inventive concept, the skilled addressee

of the patent and their common general knowledge (compare the technique
adopted in Dyson v Hoover considered in Chapter 15). The inventive concept here
might be the combination of hair conditioner with heated rollers to solve the
problem of brittle hair. The skilled addressee is likely to be a graduate (Dyson),
with a degree in biology and practical experience in the cosmetics industry. Their
common general knowledge would be information accepted without question by
those working in the industry. The skilled addressee will be used by the court to
determine issues of infringement and validity.

u Consider the wording of the claim (which is a product claim), observing that it does
not contain highly technical language. Some language is general (‘substantially
circular’), other language is more precise (e.g. the diameter of the perforations).
How have recent cases treated such language?

u Identify who has committed the relevant acts of direct infringement under
s.60(1)(a). Bella’s manufacture of the competing product will not be actionable as
it occurs outside the UK, but the company’s website would amount to ‘offering
to dispose of’ the product (see Gerber v Lectra discussed above concerning the
meaning of the word ‘offer’ in s.60(1)). Largesse has imported, offered to dispose of
(through its mail order catalogue) and disposed of the infringing product.

u Consider whether the above two potential defendants have any defences under
the Patents Act or case law (note there would not be an exhaustion of rights
defence as the alleged infringing product has not been put on the market by the
patentee).
page 314 University of London
u Consider whether the patent is liable to revocation. The most likely objection
under s.72 is that this is not a patentable invention. Although the patent appears
not to fall within any of the categories of excluded subject matter and is capable of
industrial application, it might be open to challenge on the ground that it is either
not new or not inventive.

u Consider whether the alleged infringement falls within the scope of the patentee’s
protection. The wording of the claim should be broken down into its essential
integers, and these should then be compared with the infringement. The four
variants which need discussion are the round roller versus the elliptical roller; the
shape of the respective inner chambers; the use of a liquid in the Bella roller rather
than a gel; and the size of the hole through which the hair conditioner has to pass.
The Kirin Amgen question should be applied to each variant: what would a person
skilled in the art have understood the patentee to have used the language of the
claim to mean?

u Briefly discuss remedies should the action succeed. Damages would be calculated
in accordance with the principles set out by Lord Wilberforce in the General Tire
case (see Chapter 4). Other remedies are as set out in s.61 of the Patents Act.
Intellectual property 18 Patent infringement and defences page 315

Reflect and review

Look through the points listed below:

Are you ready to move on to the next chapter?

Ready to move on = I am satisfied that I have sufficient understanding of the

principles outlined in this chapter to enable me to go on to the next chapter.

Need to revise first = There are one or two areas I am unsure about and need to revise
before I go on to the next chapter.

Need to study again = I found many or all of the principles outlined in this chapter
very difficult and need to go over them again before I move on.

Tick a box for each topic. Ready to Need to Need to

move on revise first study again

I can explain and apply the statutory provisions that

list the types of conduct which can infringe a patent.   

I can explain and apply the principal defences to an

action for patent infringement.   

I can explain the grounds on which a patent may be

revoked.   

I can discuss critically the approach of UK courts to

patent claim interpretation.   

I can list the issues which are likely to arise in a

patent infringement action.   

If you ticked ‘need to revise first’, which sections of the chapter are you going to
revise?
Must Revision
revise done

18.1 Overview of patent infringement  

18.2 Categories of infringing acts  

18.3 Defences to infringement  

18.4 Revocation  

18.5 Interpretation of patent claims  

page 316 University of London

Notes
Feedback to activities

Contents
About feedback . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 318

Chapter 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 319

Chapter 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 321

Chapter 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 322

Chapter 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 324

Chapter 6 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 325

Chapter 7 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 326

Chapter 8 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 328

Chapter 9 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 329

Chapter 10 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 330

Chapter 11 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 330

Chapter 12 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 331

Chapter 13 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 333

Chapter 14 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 335

Chapter 15 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 336

Chapter 16 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 337

Chapter 17 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 338

Chapter 18 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 339
page 318 University of London

About feedback
Feedback to activities is given to help you learn more about the material you have
been studying. It gives you answers to – or guidance on answering – the activities.

A few activities do not have feedback because it was considered unnecessary. Please
do not bypass the work in the activities and go straight to the feedback.
Intellectual property Feedback to activities page 319

Chapter 2

Activity 2.1
No feedback provided.

Activity 2.2
From the information given, intellectual property protection is relevant to the
following features of the kettle.

u The name, HOTTA, could be protected as a trade mark. The company has a choice
whether to register the name under the provisions of the Trade Marks Act 1994,
or to seek protection for the name under the tort of passing off. If the company
elects for registration, it will need to consider whether, besides complying with
the formal requirements of the Act, the trade mark might be rejected by the
Trade Marks Registry under either the absolute or relative grounds of refusal (see
further Chapter 12). If the company chooses to rely on the tort of passing off in
order to prevent a competitor adopting a similar name, it will have to prove all the
elements of the tort listed in Reckitt & Colman v Borden. For that reason, registration
would seem to be the safer option.

u The shape of the kettle could be protected as a design. Again, the company has
a choice whether to register the design under the Registered Designs Act 1949.
It would have to demonstrate that the design was ‘new’ and had ‘individual
character’. Alternatively, it could rely on the unregistered design right found in
the Copyright, Designs and Patents Act 1988, provided it could demonstrate that
the design was ‘original’, ‘not commonplace’ and had been recorded in a design
document. This form of protection has the advantage of being automatic, thereby
avoiding the requirements of registration, but if it wishes to stop a competitor
selling a similar-looking kettle, the company would have to show that its rival
copied its design. As the kettle is unlikely to be treated as an artistic work in its own
right, copyright protection would not be available.

u The use of the double wall and special gas in the manufacture of the kettle
could be protected as a product patent, provided that the invention satisfies the
requirements of patentability in the Patents Act 1977, that is, that the invention is
new, has an inventive step and is capable of industrial application. The invention
would have to be compared with the prior art to see if it met the requirements of
novelty and inventive step.

u The instruction leaflet would qualify for protection as a copyright work (see Elanco
v Mandops [1980] RPC 213).

u The list of suppliers could amount to confidential information. The company

should consider entering confidentiality agreements with the suppliers
themselves, and requiring its employees to sign confidentiality undertakings.
However, this form of protection would only be available if the relevant
information was not in the public domain.

Activity 2.3
No feedback provided.

Activity 2.4
Many theories have been advanced to justify the creation of intellectual property
rights. The ones most frequently encountered are: the natural law theory (based on
the writings of John Locke) which argues that a person is entitled to the fruits of their
labour; utilitarian theory (based on the writings of Jeremy Bentham) which argues
that limited monopolies lead to the greatest social good and the maximisation of
net welfare; the theory of personality which argues that what a person creates is
an extension of their personality, so that ownership is in fulfilment of basic human
needs; and social policy theory, where granting limited monopolies is part of social
planning. Often these arguments are distilled further, so that intellectual property
page 320 University of London

rights are justified by saying that they provide an incentive to innovate or a reward for
innovation, or that in the long term they improve the quality of life for those who use
the tangible products, or else they add to the store of human knowledge. Each one
of these theories can be challenged. To give two simple examples, the argument that
individuals will not innovate if there is little or no intellectual property protection in
case others ‘steal’ their ideas is not born out by the early developments in computer
software which occurred in the absence of any legal protection; and Henry Ford
refined the system of mass-producing motor cars long before the US Patent Office
granted patents for ‘methods of doing business’.

Further, the natural law theory may appear logical when viewed in light of the social
and political conditions when it was written, but Locke was writing in the context
of an agrarian society when land was the principal commodity. Does the natural law
theory translate into the 21st century? What should count as ‘labour’ in the context of
intellectual property rights, when it is very easy to think up a brand name and when
the threshold for copyright protection is so low? In the information society, what are
the ‘commons’: facts, culture, ideas?

In the case of utilitarianism, the principal concern is how to achieve the appropriate
balance between rewarding the individual and safeguarding the interests of society.
There is the ever-present risk of the ‘reward’ creating monopoly power. Equally, with
the theory of personality, there is the challenge of defining which resources should be
deemed to belong to an individual and which should belong to the public. How much
autonomy should an individual have? How much public property should they be able
to monopolise? The social policy theory begs the question: what sort of society do we
want? Should it be based on consumer welfare, the artistic tradition or distributive
justice?

Finally, is it correct to attempt to apply a particular theory to every single type of

intellectual property right? Return to the descriptions of the various rights in 2.1
above. Can copyright be supported by the same arguments as patents? Does the same
reasoning apply to the protection of designs or trade secrets? The odd one out here is
clearly the trade mark right. The reasons for having a trade mark law are much more
to do with the workings of the consumer society rather than with rewarding creativity.
However, the pro-competitive benefits of having brand names have to be balanced by
the need to avoid anti-competitive behaviour by brand owners.

You may have found this question difficult to answer at this stage of your studies.
Do not worry. Come back to it when you have completed this module guide, and
reconsider the issues. You may come to a different conclusion. Also, when working
your way through the various chapters on the individual types of intellectual property
rights, keep at the back of your mind the justifications for having them. Consider
whether the law lives up to its supposed aim.

Activity 2.5
No feedback provided.

Activity 2.6
At first glance the views of Lord Diplock and Lord Scarman cannot be reconciled (and
ironically, Lord Scarman was one of the members of the House of Lords in the Erven
Warnink case). Lord Diplock argues that the common law, through the tort of passing
off, must develop and remain flexible to changing business practices and to offer new
forms of redress. He comments that passing off is a ‘protean’ tort, that is, one that can
change its shape to suit the needs of the case. Lord Scarman, however, argues that
passing off should stay within its traditional boundaries. If the key elements of the
action are not present, there can be no redress merely because it is felt intuitively that
the defendant’s conduct was ‘unfair’. Hence in the present case, the defendants had
not committed passing off by taking the theme of the claimant’s advertising campaign
nor by copying the rather common colour scheme of the claimant’s product (green
and yellow for cans of lemonade was not unusual). Such division of opinion is quite
common in passing off (compare the views of Aldous LJ in Arsenal v Reed with those of
Intellectual property Feedback to activities page 321

Jacob LJ in L’Oréal SA v Bellure NV about whether passing off should develop into a more
general tort of unfair competition.

Despite the differences of attitude between the two Law Lords about the response of
the common law to unfair trading, the two cases can be reconciled at a factual level.
In the Pub Squash case, their Lordships were constrained by a finding of fact at first
instance (by Powell J) that the defendant’s conduct had not caused any confusion. The
facts as found did not even meet the requirements suggested by Lord Diplock in the
Erven Warnink case (and you should note that Lord Diplock himself pointed out that
just because all the elements of the tort were established did not guarantee redress
for the claimant – though why that should be so he did not explain). By contrast, in
Erven Warnink there was clear evidence of damage to the claimant’s business through
lost sales once the defendant starting selling their imitation product.

Activity 2.7
It has been a matter of debate for some time whether there should be a recognised
action under UK law to claim redress for the harm done by unfair competition. Several
unsuccessful attempts have been made in recent years to introduce this by statute
but the official government response has always been that the law of passing off
provides adequate redress (consider the accuracy of this assertion once you have
studied Chapter 11). There is ample authority against the introduction of a general
tort of unfair competition, for example, the views of the judges in Victoria Park Racing
v Taylor and Moorgate Tobacco v Philip Morris, and of Jacob LJ in L’Oréal SA v Bellure NV
as well as the views of Lord Scarman in the Pub Squash case. On the other side of the
line, Lord Diplock in Erven Warnink, Laddie J in Irvine v Talksport and Aldous LJ in Arsenal
v Reed together with the CJEU in L’Oréal SA v Bellure NV all appear to suggest that
the law should remain responsive to changing business practice and to protect the
investment which businesses make in their intellectual property rights.

Whether, as debated in the articles by Spence, Libling, Ricketson and Carty, the
doctrine of misappropriation as the basis of a new tort of unfair competition could be
utilised is open to argument. It would be necessary to define what would be capable of
protection and whether this subject matter should give rise to proprietary rights. If the
basis of protection was the investment which a company had made in its intellectual
property rights, would that not simply lead to monopoly power, so that the law
would be protecting the large enterprise rather than the individual innovator? Where
should the boundary be drawn between acceptable and unacceptable behaviour?
What should the justification of such protection be? Why should competition not be
encouraged? And, lastly, what is wrong with imitation?

Activity 2.8
No feedback provided.

Chapter 3

Activity 3.1
No feedback provided.

Activity 3.2
A good answer will identify the following differences:

u The origins and objectives of WIPO and the WTO.

u WIPO’s educational role, and its oversight and revision of the main international
conventions.

u The presence of the WTO’s dispute settlement procedure as a means of requiring a

Contracting State to change its domestic law.

u The criticisms which have been levelled at the WTO.

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Activity 3.3
A good answer will identify that:

u the EPC is a regional rather than a global treaty

u the EPC deals with patents, not any other form of intellectual property right

u the EPC deals with substantive patent rights, rather than simply laying down
minimum standards

u the EPC established the EPO, an organisation with its own internal judicial organs,
in Munich

u a patent application to the EPO results in the grant of national patent rights, rather
than simply providing a procedural shortcut for making multiple applications to
national patent offices.

Chapter 4

Activity 4.1
No feedback provided.

Activity 4.2
At first glance the views of Laddie J in Series 5 appear to contradict those of Lord
Diplock in American Cyanamid. Students often ask the question ‘how is this possible?’
in view of the fact that a decision of the House of Lords is binding on all lower courts.
It is, however, instructive to compare in more detail what was said in the two cases.
In American Cyanamid, Lord Diplock set out the criteria for the award of what is now
called an interim injunction. These criteria can be summarised as follows.

u Is there a serious issue to be tried?

u Are damages an adequate remedy? That is, if the claimant succeeds at trial and
obtains a permanent injunction, could it be compensated adequately if the
defendant continues the conduct for which an injunction is sought between the
date of the application and the date of the trial? If so, if the defendant were to
succeed at trial, could it be compensated adequately if an injunction were granted
between the date of the application and the date of the trial?

u Where does the balance of convenience lie?

u If factors are evenly balanced, is the status quo preserved?

u Which party has the stronger case?

If a similar exercise is conducted in respect of Laddie J’s judgment in Series 5, his

restatement of the guiding principles is:

u interim relief is a matter of discretion always depending on the facts of the case

u the rule is that there are no rules – the relief must be kept flexible

u the court should avoid dealing with complex issues of disputed fact or law.

The major factors to be considered are the adequacy of damages, the balance of
convenience, the maintenance of the status quo and whether there is any clear view of
the relative strengths of the parties.

Looked at more closely, both judgments are saying the same thing. Interim injunctions
are always a matter of discretion. Each case will depend on a number of factors. The
conclusion to be drawn from both cases is that periodically the courts need to remind
themselves of the discretionary nature of the award. Laddie J was doing no more than
Lord Diplock had done 20 years before.
Intellectual property Feedback to activities page 323

Activity 4.3
Search orders have always been of a draconian nature. Often misdescribed as a ‘civil
search warrant’, the order is addressed to the defendant who it is thought might destroy
vital evidence of infringing conduct. It requires them to admit the claimant’s solicitor to
their premises with a view to copying or removing such evidence. The defendant is not
given notice of the request for the order and hence is not in court when it is granted.
Surprise is of the essence. At one time, such orders were granted relatively readily. By the
late 1980s the perception was that they were being misused. Such misuse was either that
claimants were using them as a ‘fishing expedition’ to gain information about a rival’s
business or they were being administered in a very aggressive manner. This led Nicholls VC
to restate the guidance principles in the Hibben decision. The criteria he established were:

u the order is to be executed during office hours so that the defendant can contact
their solicitor

u a female solicitor must be present if female family members or office staff will be
on the defendant’s premises

u the defendant must be given a list of items which are being removed

u the injunction restraining the defendant from giving a ‘tip off’ to third parties is to
be limited in time

u the order must be executed only at company premises before a responsible officer
of the defendant’s business

u the claimant is not allowed to make a thorough search of the defendant’s premises
(that is, the order should not be a ‘fishing expedition’)

u there must be an experienced supervising solicitor who should report back to the
court.

These are now part of the CPR. It may be observed that the guidelines are indicative
of the sorts of abuse which occurred before the Hibben decision, which may well have
justified the description of the order as a ‘nuclear weapon’. Further, the guidelines,
when coupled with the requirement to give a cross-undertaking in damages and the
fact that the claimant’s failure to disclose everything to the court when seeking the
order may render any evidence gathered inadmissible, suggest that the opportunity
for abuse is much reduced.

Activity 4.4
No feedback provided.

Activity 4.5
The basis of an account of profits is to give to the claimant what the defendant has
gained from their infringing conduct, although the basis of damages is restorative. The
calculation of damages for infringement of intellectual property rights is explained by
Lord Wilberforce in the General Tire case. If claimant and defendant are not in direct
competition as manufacturers, the normal measure of damages will be a reasonable
licence fee.

The decision of Potton v Yorkclose is a good example of when an account will provide
a more favourable outcome for the claimant. It was a case of copyright infringement
where the copyright work consisted of an architect’s plans for houses. Had the
defendant sought a licence before building the houses, the fee would have been
governed by the rules of the Royal Institute of British Architects and would have been
relatively low. However, by copying without permission and by building houses at a
time of a rising housing market, the defendant gained much more from its infringing
activities. Despite the complexity of the calculation (see the case note by Bently et al.
referred to above), an account was a more effective remedy.

A claimant will therefore elect for an account of profits where the money made by the
defendant from infringing conduct (for example, because each infringing copy has a
very high resale value) far outweighs the licence fee which would normally be paid.
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Activity 4.6
The threats action can be seen as a means of ensuring that the intellectual property
owner does not attempt to stifle competition by excessive use of their monopoly
power. Small competitors may be intimidated by a ‘letter before action’, particularly in
view of the high costs of litigation. Accordingly, where an intellectual property owner
makes an unjustified threat of litigation, they may become the defendant to a threats
action. This has the effect of shifting the onus to the intellectual property owner to
show that there had been infringing conduct and that the right in question is valid.
The exception is that the owner can threaten to sue a manufacturer or importer of an
infringing product. They cannot threaten to sue someone merely for selling infringing
goods. The scope of protection of the threats action is very wide. For example, where
a patentee (or their solicitor) writes to a third party threatening to sue them for
supplying an allegedly infringing product to another, and the recipient then ceases
supply of that product, the persons who can sue the patentee (or their solicitor) for
making unjustified threats are not only the recipient of the letter but also the other
party to the contract of supply.

Chapter 5

Activity 5.1
No feedback provided.

Activity 5.2
A good answer will do the following.

u Set out the facts of the two cases succinctly.

u As regards the Naomi Campbell case, summarise the five categories of information
identified by the House of Lords as being potentially protectable (see para 88 of
Lord Hope’s judgment) and explain which of these five categories were treated as
confidential by the majority of the House of Lords and why.

u As regards the Douglas decision, comment on the claimants’ use of confidentiality

undertakings, and the views of the court on how photographic invasions of privacy
(as opposed to the publication of factual information) are to receive special
treatment. Just because a photograph has been published does not mean that
another photograph (taken on the same occasion but without permission) can be
published.

u Consider the twofold impact of Von Hannover v Germany both with regard to the
‘horizontal effect’ of the ECHR (i.e. that the courts are obliged to ensure that the
Article 8 right is protected against media intrusion) and with regard to the public
interest defence.

u Evaluate subsequent cases, whether they involve a pre-existing contractual

relationship (McKennitt v Ash, HRH Prince of Wales v Associated Newspapers) or not
(Murray v Express Newspapers, Mosley v News Group News).

Activity 5.3
No feedback provided.

Activity 5.4
Faccenda v Fowler states that information obtained by an employee in the course
of their employment can be of three types, namely trade secrets, commercially
sensitive information and the employee’s general skill and knowledge. On cessation
of employment, the first is automatically protected, the second will require an
appropriate contractual provision (which may raise issues of restraint of trade) and
the third category, for reasons of public policy, is non-protectable. In individual cases,
it may not be easy to distinguish between the first and second categories.
Intellectual property Feedback to activities page 325

Activity 5.5
The defence of ‘in the public interest’, as established in Initial Services v Putterill,
reflects the equitable nature of the action for breach of confidence. There can be no
liability in disclosing something which does not deserve the protection of secrecy. A
good example can be seen in the facts of Lion Laboratories v Evans.

A recent example, in which the current role played by Article 10 of the ECHR is
demonstrated is Brevan Howard Asset Management LLP v Reuters Ltd [2017] EWCA Civ 950.

More problematic are the cases concerned with media intrusion. Here, following
the introduction of the Human Rights Act, the courts have to balance the conflicting
rights of respect for private life and freedom of expression enshrined in the ECHR. In
the case of celebrities, as opposed to private citizens, do those in the public eye have
to accept a diminution in their privacy? Although A v B (a Company) appeared to blur
the distinction between ‘in the public interest’ and ‘of public interest’, the decision
of the ECtHR in Von Hannover v Germany makes it clear that it is the position held by
the person which matters. Those holding political office should expect every aspect
of their lives to be the subject of scrutiny, while in the case of those who do not hold
political office, Article 8 ECHR prevails over Article 10 unless there has been hypocrisy or
criminal conduct. Subsequent cases like McKennitt v Ash, HRH Prince of Wales v Associated
Newspapers and Mosley v News Group Newspapers all confirm this approach.In such cases
concerning private information, courts have moved beyond a framework established
by the equitable cause of action of breach of confidence and the defence of ‘public
interest’. They now seek directly to establish a balance between Articles 8 and 10.

Activity 5.6
The normal remedies for breach of confidence will be an injunction and some sort of
compensatory award.

With regard to the award of an injunction, the conflict between the equitable maxim
‘equity does nothing in vain’ and the desire to punish the confidant, revealed by cases
such as ‘Spycatcher’ should be explored. The resolution of the conflict over ‘springboard’
injunctions in Vestergaard Frandsen A/S v BestNet Europe Ltd should be discussed.

In relation to the award of compensation, there is conflict in the case law as to the
correct method of calculating damages. In some cases, where there was a contract
between the parties, then the contractual measure of damages is deployed. Where the
relationship is non-contractual, then the outcomes in Seager v Copydex and Dowson &
Mason v Potter should be contrasted. In some instances (like the facts which occurred
in AG v Blake), an account of profits is an alternative compensatory remedy.

Chapter 6

Activity 6.1
No feedback provided.

Activity 6.2
Viewed historically, copyright law in the 18th, 19th and 20th centuries has arguably
always been reactive to technological change. Technology impacts in two ways: it can
produce new forms of creativity (as examples, consider films, sound recordings and
computer software) and it can produce new ways of reproducing existing works (as
examples, consider the photocopier and the video recorder in the 20th century, and the
impact of digital technology in the 21st century).

By way of challenging the statement in the question, consider whether copyright law
needs amending today to embrace new forms of creativity or whether the existing
definitions of ‘works’ in s.1 of the CDPA are sufficiently flexible to cope. Likewise, is the
current law adequate to deal with the effect of digital technology (reference should
be made to the WIPO treaties of 1996 and the EU’s Information Society Directive on
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this point)? Is the real difficulty not the scope of the substantive law, but the ability to
enforce it against those who reproduce copyright works in the home?

You will understand more of this when you have completed the work in Chapters 7 and 8.

Activity 6.3
The key features of copyright
u It does not depend on registration but arises automatically upon the act of
creation. Thanks to international conventions, such protection is worldwide.

u It protects ‘works’.

u Such works must be original.

u Under UK law, the threshold of protection is low.

u It exists to prevent copying, so that independent creation is always a defence.

u Copyright infringement need not be committed in the course of trade, but if it is,
then such conduct may give rise to criminal as well as civil liability.

u There is no liability for the use of a copyright article.

u Copyright is fragmentary in nature, conferring a ‘bundle’ of rights on the copyright

owner.

u In most instances, copyright lasts for the author’s life plus 70 years. Once copyright
expires, the work passes into the public domain.

Activity 6.4
Laddie J’s article suggests three ‘sacred principles’ which justify the existence of
copyright protection: ‘thou shalt not steal’; natural law; and reward theory. Regarding
these justifications, consider whether there is a tension between natural law theory
(as put forward in the old decision of Millar v Taylor) and the ‘sweat of the brow’ test
of originality as currently used in UK copyright law. Laddie J’s concerns about the over-
expansion of copyright are:

u the three-dimensional protection for two-dimensional artistic works

u the award of exemplary damages

u the lengthy duration of copyright protection, the ease of creation and the low test
of originality under UK law

u the imposition of criminal liability

u the narrow nature of the UK defence of fair dealing.

Chapter 7

Activities 7.1–7.6
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Activity 7.7
Because the EU Database Directive created a two-tier system of protection for databases,
one dependent on intellectual creativity and one dependent on substantial investment,
it had been assumed that the sui generis right in Article 7 protected those databases
compiled with ‘the sweat of the brow’. The CJEU’s ruling in the British Horseracing Board
case should be compared with the judgment by Laddie J at first instance ([2001] RPC
612). The interpretation of Article 7 by the CJEU had the effect of severely limiting the
number of databases which will obtain protection under the sui generis right to those
where the effort of obtaining and verifying information is considerable. This is in contrast
to the facts of the British Horseracing Board case itself where, although the claimant had
invested a lot of money in maintaining its database of horseracing activity in the UK, it
Intellectual property Feedback to activities page 327

was largely the passive recipient of information supplied to it by others. The ruling of the
CJEU has the effect of upholding the argument advanced by the defendant before Laddie
J (but ultimately rejected by him) that what is protected under Article 7 is the quality
of the database itself, not the value of the information contained in it. As a result, the
requirement of substantial taking for the purposes of infringement reflects the effort in
assembling the database, even though the restricted acts of extraction and utilisation
receive a liberal interpretation by the Court.

Activity 7.8
No feedback provided.

Activity 7.9
This question is designed to test your understanding of the key elements of
permanent form and originality as requirements of copyright protection.

a. The novel as it is being dictated would be spoken word literary copyright. Is an MP3
recording enough for fixation in view of s.178? If so, the recording would be both
the fixation of the literary copyright under s.3(2) and a sound recording in its own
right. The secretary cannot be the owner of the literary work copyright because of
the requirement of originality. They are just an amanuensis and not the ‘creator’ of
the work, unless, of course, they provide enough editorial input to amount to joint
authorship. In any event, the secretary may be an employee.

b. Here you need to distinguish the speech and the report of the speech. Pay
particular attention to s.3(3) (discussed in the Phillips article): fixation need not
be by the author, but until there is fixation there can be no copyright. Phillips also
makes the observation that it is impossible to be both the ‘fixer’ of a copyright
work and an infringer at the same time, because until a work is fixed it cannot
be infringed. The presence or absence of prepared notes affects the reporter’s
potential liability as an infringer (subject to s.30 –­the defence of fair dealing in
respect of reporting current events and s.58 as regards the reporting of spoken
words ­– see Chapter 8). Whether the reporter (or their employer) obtains copyright
in the report depends on how much originality the reporter added. Consider the
cases of Walter v Lane and Express Newspapers v News (UK).

c. This raises the same issues as in the first part of the question. Does a dramatic work
require writing or equivalent to be in permanent form or does the film suffice
as fixation? Is this case distinguishable from Norowzian? Note the difficulties
inherent in the case caused by the fact that (a) there was no copying of either the
dramatic work or the film; (b) the Court of Appeal confused the dramatic work with
its means of fixation, which was itself the subject of separate copyright. Besides
the mime, there would be film copyright here, but note because of s.9 the two
copyrights might be owned by different people. There could also be performer’s
rights as set out in Part II of the CDPA (although such rights are not on the syllabus).

d. There would be separate copyrights in the words and music. D would get copyright
in the words. Concerning the music, is this a case of there being nothing to copy
(because what is improvised is a mere idea) or is D’s deferred recording a fixation
of B’s work under s.3(3) and s.178, or is this a case of joint authorship, or could D
claim copyright by analogy with Sawkins v Hyperion? What are the criteria for joint
authorship? Can this be distinguished from Walter v Lane? How much skill, labour
and judgment is there in writing down music? Could there also be a claim for
breach of confidence?

e. The demo tape is sufficient to fix a musical work (Hadley v Kemp). It would also
amount to a sound recording in its own right. E infringes music copyright but not
that of the sound recording because there is no copying of the sounds (note the
very precise wording of s.5A). What about B’s moral rights?
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Activity 7.10
This question is designed to test your understanding of the ‘connecting factors’ which
enable a non-UK national to claim the benefit of UK copyright.

This is a literary work copyright and so governed by the Berne Convention rules for
qualification for protection under ss.153–160 CDPA.

a. In the case of an unpublished work, qualification is dependent on the status of the

author at the time the work was made (note the statutory definition of ‘made’ in
s.3(2) as regards literary, dramatic or musical works – subsections 154(4) and (5)
are generally unhelpful). A does not qualify by virtue of his nationality. Further
information is required, that is, where does A reside or where is he domiciled?

b. In the case of a published work, qualification depends either on A’s status at

the time of publication (remember the statutory definition of publication is in
s.175(1) and that s.175(4) defines what is not publication) or on the place of first
publication. As Ruritania is not a convention country, qualification will have to
depend again on A’s status, so the same additional information is required as in the
first part of the question.

c. As the CDPA extends to the Falkland Islands, you need to consider the possibility
of simultaneous publication under s.155(3) if this occurs within 30 days of the
publication in Ruritania.

d. If Ruritania joins the Berne Convention, this has a retrospective effect as regards
protection in the UK (see Article 18).

Activity 7.11
As regards the distinction between ownership and authorship, CDPA s.11 provides that
the author is first owner (subject to any contractual arrangements to the contrary) but:

u it is the owner who can sue for infringement and who has the ability to assign or
license the right, in whole or in part (see CDPA s.96 and ss.90–93 respectively)

u it is the identity of the author which is used to determine (a) whether the work
attracts UK copyright; (b) the duration of copyright protection; (c) the existence of
any moral rights (moral rights are explained in Chapter 8).

Chapter 8

Activity 8.1
No feedback provided.

Activity 8.2
Lord Millett’s statement of principle can be summarised thus.

u The court should first identify those features of the defendant’s design which the
claimant alleges have been copied from the copyright work.

u In the case of an artistic work (as here) the court undertakes a visual comparison of
the two designs, noting the similarities and the differences.

u The purpose of the examination is not to see whether the overall appearance of
the two designs is similar, but to judge whether the particular similarities relied
on are sufficiently close, numerous or extensive so as to be more likely to be the
result of copying than of coincidence. It is at this stage that similarities may be
disregarded because they are commonplace, unoriginal or consist of general ideas.

u If there is sufficient similarity, not in the work as a whole but in the features alleged
to have been copied, and the defendant had prior access to the copyright work,
the burden passes to the defendant to satisfy the court that they did not result
from copying.
Intellectual property Feedback to activities page 329

u If the court finds that the defendant’s design incorporates features taken from the
copyright work, the question is whether what has been taken constitutes all or a
substantial part of the copyright work. This is a matter of impression, for whether
the part taken is substantial must be determined by its quality rather than its
quantity. It depends on its importance to the copyright work. It does not depend
upon its importance to the defendant’s work.

Activity 8.3
No feedback provided.

Activity 8.4
The Court of Appeal in Pro Sieben sets out a two-stage inquiry which must be
undertaken before any of the fair dealing defences will apply.

u Whether the facts are objectively within the wording of the defence, although
the words ‘criticism’, ‘review’, ‘current events’, etc. are to be given a wide
interpretation.

u If so, whether the dealing was fair. The court will consider the amount of the
original work which is taken, the purpose of the use, the necessity of such use,
whether the original work has already been published and the motives of the
copier.

Activities 8.5 and 8.6

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Chapter 9

Activity 9.1
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Activity 9.2
u The hand-carved furniture could be a work of artistic craftsmanship, in view of the
reasoning in Vermaat & Powell v Boncrest Ltd.

u The figurine would amount to a sculpture or, alternatively, a work of artistic

craftsmanship.

u The mat could be argued to be an engraving, in view of the reasoning in Wham-O

Manufacturing Co v Lincoln and Hi Tech Autoparts v Towergate Two Ltd (Nos 1 and 2).

Activity 9.3
u The drawing here is a design document and it is for an article: a dust-collecting bag
for a vacuum cleaner could hardly be said to be an artistic work. Section 51 applies,
so the designer cannot rely on copyright.

u The sketch is likewise a design document for an article (the dress); however, it
could be argued that the dress is a work of artistic craftsmanship (provided it
satisfies the composite criteria in s.4(1)(c) of the CDPA and the cases discussed
above). If that were so, s.51 would not apply and the designer would be able to rely
on copyright.

u The painting is arguably not a design document, as it is not for an article, and so
s.51 would not apply. Were a third party to copy the chair in a three-dimensional
form, the artist could rely on copyright protection.

Activity 9.4
No feedback provided.
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Activity 9.5
Those aspects of design right which are similar to copyright are the need for
permanent form, and the property rights conferred on the owner.

Those aspects of design right which are different from copyright are:

u the rules on qualification for protection (you should first compare the definition
of ‘qualifying person’ in s.217 with the definition in s.154, and then compare
the definition of ‘qualifying country’ in s.217 with the equivalent provisions in
ss.157–159)

u the rules on ownership (note in particular the effect of a commission on design

right ownership when compared to copyright)

u the rules on duration.

Activity 9.6
Your list should compare:

u what acts amount to primary infringement (look at s.16 CDPA and compare it with
s.226)

u the fact that design right infringement has to be for commercial purposes

u the test for infringement (compare the decision in Klucznik with that in Designers
Guild)

u the differences in available remedies

u the effect of innocence on the availability of damages (compare s.97 with s.233)

u the availability of licences of right.

Chapter 10
No feedback to activities.

Chapter 11

Activity 11.1
In answering this question, you need first to discuss the material covered in Chapter
2, specifically about whether it is possible to reconcile the views of Lord Diplock and
Lord Scarman about the role of the court in protecting against unfair trading. You
should then refer to the material covered in Chapter 10 about the modern functions
performed by trade marks, particularly the views expressed in Arsenal v Reed about
the scope of protection accorded to the trade mark owner. If these remarks are valid
for registered trade marks should they also apply to passing off? The judgment of
Aldous LJ implies that they should. You should note that the comments of Aldous LJ in
the last-mentioned case about passing off are, in a sense, obiter, because the claimant
did not appeal against the finding at first instance that there had been no passing off
as there had been no origin confusion. However, Aldous LJ does say that he was not
convinced that Laddie J’s reasoning was correct. The ‘traditional’ form of passing off, he
says, is no longer the definitive ambit of the action and the absence of confusion here
did not matter. The damage sustained was the dilution and gradual destruction of the
claimant’s goodwill. Aldous LJ’s views seem therefore to be more in accord with those
of Lord Diplock than Lord Scarman.

Activity 11.2
No feedback provided.
Intellectual property Feedback to activities page 331

Activity 11.3
When dealing with collective goodwill (or shared reputation) the facts of the
Chocosuisse case raise several issues.

u How extensive must the trade of the claimant be in order for them to share in the
goodwill?

u What should an individual trader have to prove to show that they are a member of
the class?

u When can a new member of the class sue for passing off?

u How are the courts to define the class where the product is not subject to
regulatory control?

u How exact does the recipe have to be?

u Can the members of the class change the recipe?

You should study the judgment of Chadwick LJ carefully for guidance on these points.

Activity 11.4
Taittinger v Allbev can be regarded as ahead of its time, as it recognises dilution as
a form of harm to the goodwill of the trade mark owner (you might want to return
to this point once you have studied s.5(3) of the Trade Marks Act 1994 in Chapter
12 and s.10(3) in Chapter 13). Although the evidence in Taittinger showed that the
average consumer was not misled, when they bought the defendant’s elderflower
champagne, into believing they were buying the ‘real thing’, had the defendants (and
others) been allowed to continue, then the champagne name would have been less
valuable. The case therefore does not accord with the traditional view that passing off
protects against origin confusion. Rather, it is an illustration of the court being more
adventurous when dealing with other forms of harm to goodwill than simple diversion
of custom. The judgment of Peter Gibson LJ should be studied carefully.

Activities 11.5–11.7
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Activity 11.8
A good answer should:

u summarise the judgment of Lord Neuberger in Starbucks (HK) Ltd. It should explain
how that judgment relates to earlier decisions, such as that of the Court of Appeal
in Budweiser. Most importantly, the answer should analyse Lord Neuberger’s
reasons (both of legal principle and of policy) for coming to his conclusion.
You should not forget to ask whether an approach based upon the existence of
goodwill in a single jurisdiction is the most suitable for the 21st century. In this
respect, you will find discussion of interesting comparative information within
Lord Neuberger’s judgment.

Activity 11.9
No feedback provided.

Chapter 12

Activity 12.1
No feedback provided.

Activity 12.2
The CJEU in Sieckmann gives the following reasons why there is a requirement of
graphic representation.
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u The need for the sign to be identified precisely for the sound operation of the trade
mark registration system.

u The mark must be defined in order to determine the scope of protection accorded
to its proprietor.

u The entry on the register must be accessible to competent (i.e. state) authorities,
the public and to other economic operators (i.e. competitors).

u State authorities need to know the nature of the signs of which a mark consists in
order to be able to carry out their duties of prior examination of applications and
to maintain the register.

u Competitors need to know about the rights of third parties.

u The criteria for graphic representation are that:

u it must be self-contained, easily accessible and intelligible

u the sign must always be perceived unambiguously as an indicator of origin

u as the mark can be renewed indefinitely, the representation must be durable

u the representation must be unequivocal and objective, so as to avoid any

element of subjectivity.

You must also consider the extent to which these concerns are still reflected in the
revised requirement enshrined in s.1(1)(a) of the TMA, which requires that a mark must
be:

represented in the register in a manner which enables the registrar and other competent
authorities and the public to determine the clear and precise subject matter of the
protection afforded to the proprietor.

You should explain that the change in terminology means that certain forms of marks
(sounds, etc.) will be more easily registrable than previously. Does this situation
endanger the policy rationales on which Sieckmann was based?

Activity 12.3
No feedback provided.

Activity 12.4
The policy underlying s.3(1)(b) reflects the essential function of a trade mark of
guaranteeing the origin of goods or services (SAT.1 SatellitenFernsehen GmbH v OHIM
(SAT.2)). This policy is not concerned with leaving signs free for other traders (Nichols
plc v Registrar of Trade Marks), rather of preventing the registration of signs which are
not yet trade marks. However, in the case of marks consisting of single colours, the
policy is not to restrict unduly the choice of colours available to other traders in the
same line of business (Libertel Groep BV v Benelux-Merkenbureau).

The policy underlying paragraphs 3(1)(c) and (d) is to ensure that descriptive signs
and those common in the trade are left free for other traders: Windsurfing Chiemsee
Produktions und Vertriebs GmbH v Boots und Segelzubehor Walter Huber, OHIM v Wm Wrigley
Junior Co (DOUBLEMINT) and Merz & Krell GmbH & Co v Deutsches Patent- und Markenamt
(BRAVO).

Activity 12.5
In Windsurfing Chiemsee, the CJEU listed the following factors to be taken into account
by a tribunal when deciding whether a mark has acquired distinctive character.

u There should be an overall assessment of the evidence, taking into account the
nature of the name in question (so that a very well-known geographical name or
a very descriptive mark will require greater evidence of use) as well as the market
share held by the mark.

u How intensive, widespread and long-standing the use has been.

Intellectual property Feedback to activities page 333

u The amount invested in promoting the mark.

u The proportion of the relevant class of persons who identify the goods as
originating from a particular undertaking.

u Statements from chambers of commerce and other trade and professional associations.

Activity 12.6
Strowel gives the following examples of the shape marks found within Article 3(1)(e)
Trade Marks Directive (s.3(2) of the TMA).

u As regards shapes resulting from the nature of the goods themselves (‘natural
shapes’) he suggests an egg box, an umbrella or a carrier bag.

u As regards shapes necessary to obtain a technical result, he suggests the ‘Lego’ brick.

u As regards shapes which give substantial value to the goods, he suggests a set of
miniature china houses or a children’s bath in the shape of a scallop shell. However,
Strowel argues that this exclusion does not bar the registration of shapes added to
foodstuffs such as chocolate, ice cream, crisps or drink bottles, because such shape
is not the prime reason for the purchase. Even if the registered shape trade mark
makes the goods more expensive, this is not ‘substantial’ value.

Strowel argues that as a matter of policy the provision on shape marks should be
narrowly construed as it is a derogation from Article 2 in which shapes are declared to
be registrable as trade marks. He also points out the presence of the words ‘exclusively’,
‘necessary’ and ‘substantial’ in the provision. The CJEU in Philips v Remington, however,
took a broader approach when interpreting the exclusion for technical shapes,
disagreeing with Strowel’s argument that the availability of other means of achieving
the same result should prevent the application of the exclusion. The Court does appear
to agree with Strowel that the purpose of the shapes exclusion is not to prevent overlap
with other means of intellectual property protection but to protect the interests of other
traders.

Activity 12.7
No feedback provided.

Chapter 13

Activities 13.1 and 13.2

No feedback provided.

Activity 13.3
The ‘triad of protection’ for the trade mark owner found in s.10 comprises the
following.

u The ability to prevent the use of the identical sign for the identical goods or
services. The requirement of identity is to be strictly applied and assessed though
the eyes of the consumer (LTJ Diffusion SA v Sadas Vertbaudet SA (CJEU)). The
comparison is between what the defendant has used with the claimant’s registry
entry, both as regards goods (British Sugar plc v James Robertson & Sons Ltd) and the
mark (Philips Electronics NV v Remington Consumer Products).

u The ability to prevent the use of the same or similar sign for the same or similar
goods or services, provided that there is a likelihood of confusion on the part of
the public, which includes a likelihood of association. Similarity of signs is to be
determined in accordance with Sabel v Puma (CJEU). Similarity of goods is to be
determined in accordance with Canon (CJEU). Sabel is also the case on the meaning
of ‘likelihood of confusion’, complemented by Canon and Lloyd which explain the
‘interdependence of factors’ (resulting from Recital 11 to the Directive) so that all
circumstances must be taken into account.
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u The ability to prevent the use of the same or similar sign for any goods or services
where the senior mark has a reputation and the use of the junior mark without due
cause would take unfair advantage of or be detrimental to the distinctive character
or repute of the senior mark. All elements of this composite requirement must be
shown. The meaning of ‘reputation’ and the criteria for establishing it can be found
in General Motors. The policy of protecting marks with a reputation is explained by
the CJEU in Davidoff v Gofkid and Adidas v Fitnessworld.

Activity 13.4
Any discussion of the decision in Deenik should identify the relevant facts. These were
that Mr Deenik ran a garage in the Netherlands, specialising in the sale of secondhand
BMW cars, and in the repair and servicing of such cars. He was not part of the dealer
network run by BMW. The car manufacturer sued him for trade mark infringement, taking
particular objection to the way in which his advertisements described him as a ‘BMW
specialist’. In reply, Mr Deenik relied on the defences in Article 6(1)(c) and Article 7.

The CJEU stated that Article 7 was the relevant defence to the sale of secondhand
cars but that Article 6(1)(c) was appropriate to the activities of repair and servicing. It
applied the same test to each defence, noting that both defences sought to achieve
a balance of interests: Article 7 balancing the rights of the trade mark owner with the
interests of the internal market, and Article 6 balancing the rights of the trade mark
owner with those of other traders. Even though use of another’s trade mark may be
legitimate as a means of informing consumers about the nature of the defendant’s
business, such use will not be permitted if it was contrary to the duty to act fairly
in relation to the legitimate interests of the trade mark owner. Therefore, if the
advertisements for Mr Deenik’s business either misled consumers into thinking that
there was a commercial connection with BMW (in particular that the defendant was
part of the dealer network) or if they sought to take unfair advantage of the distinctive
character or repute of the trade mark, they would lose the benefit of both defences.

Activity 13.5
The ruling of the CJEU in O2 Holdings Ltd v Hutchinson 3G Ltd begins with the statement
that the use of a competitor’s trade mark in a comparative advertisement was use for
the advertiser’s own goods and services and therefore prima facie infringement. This
principle is now expressed directly in the TMA 1994 (see s.10(4)9e).

However, the CAD was intended to promote comparative advertising. Further, Recitals
13 to 15 of the consolidated version of the CAD cross-refer to the Trade Marks Directive
and so it is necessary to read the CAD into the limitations on the trade mark owner’s
rights. The trade mark owner could not object to the use of an identical or similar
sign by a third party in a comparative advertisement which complied with the CAD.
Compliance with the CAD is therefore a complete defence to trade mark infringement
unless the advertisement gives rise to a likelihood of confusion. This means that
most direct comparative advertisements (‘our washing powder is cheaper than your
washing powder’), where the consumer is alerted to the fact that there are two rival
producers, will get the protection of the defence. Only an indirect comparison, where
the consumer does not appreciate that there are two different sources of supply
and consequently confuses the two, will amount to infringement. The Court added
that the trade mark owner could not object to the use by a third party of a similar
sign if this did not give rise to a likelihood of confusion, regardless of whether the
advertisement satisfied all the conditions of the CAD.

Activity 13.6
The cumulative guidelines from Hoffmann-La Roche, Paranova I and Paranova II
summarised by the CJEU in Boehringer I and Boehringer II are as follows.

u It must be shown that conduct of the trade mark owner objectively partitioned the
market.

u There must be an indication on the goods that they have been repackaged.
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u The importer must personally give 15 days’ notice to the trade mark owner that
they intend to repackage the goods.

u There must be no physical impairment.

u Samples must be supplied if requested.

u There must be no mental impairment.

u It must be shown objectively that there was a necessity to repackage (i.e. to enable
the importer to have access to the market).

Activities 13.7 and 13.8

No feedback provided.

Chapter 14

Activity 14.1
Your answer should do the following.

u Summarise concisely the facts of the two cases.

u Highlight the fact that the cases do not deal with the same aspect of
merchandising. Lorimar was concerned with the attempt to stop the use of names
from a television series to sell merchandise (jeans and restaurant services) whereas
the claimant’s business was concerned with the creation of films and television
programmes. In Irvine, the case was concerned with the use of a celebrity’s image
to promote the programmes offered by a radio station, thereby implying that the
claimant had in some way approved the advertisement.

u Point out the significance of the fact that in Irvine the claimant was in the business
of granting licences to others to use his image, while in Lorimar the defendants
were not in competition with the claimants.

u Comment that in Lorimar the court recognised the consumer’s receptiveness to

image-related advertising but regarded the defence of ‘no common field of activity’ as
conclusive; in Irvine, Laddie J simply recognised the practice of celebrity endorsement.
However, the fact that the claimant already derived a lot of income from endorsement
showed that he had a business goodwill capable of being protected.

Activity 14.2
No feedback provided.

Activity 14.3
Mirage Studios v Counter-Feat Clothing can be regarded as a significant decision in
favour of the practice of merchandising. Browne-Wilkinson VC says that the public are
used to the practice of merchandising and assume, when they see a product bearing
the name or image of a fictitious character, that there has been some sort of licence.
However, the case should be treated with a degree of caution because:

u there was a finding of fact that both claimant and defendant were in the business
of merchandising

u what was being protected was a series of copyright works, so that the case may not
be appropriate authority in cases where merchandising is based on names

u there was an arguable case in copyright infringement (remember the case involved
an application for interim relief)

u there was a finding of fact that the claimant was in the business of licensing
copyright images, and so had suffered harm to its business goodwill as a result of
the defendant’s conduct.
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Chapter 15

Activity 15.1
No feedback provided.

Activity 15.2
Machlup and Penrose identify four justifications for patents.

u That there is a natural property right in ideas; appropriation of ideas is therefore

tantamount to stealing.

u Justice demands that there should be a reward for services which are useful to
society; patents are useful and so should be protected.

u Patents are necessary to secure industrial progress. Incentives are necessary

to ensure that inventions are made; alternatively, incentives are necessary to
ensure that inventors disclose information in return for patent protection, such
information in due course becoming part of the store of human knowledge to be
shared by all.

u Industrial progress is desirable to society. If there were no patents, inventions

would be kept secret, so disclosure is the quid pro quo for exclusivity.

You should link these arguments by Machlup and Penrose with case law which has
referred to them, for example, Re Asahi KKK’s Patent, Dranez Anstalt v Hayek and Eli Lilly
and Company v Human Genome Sciences Inc.

Activity 15.3
The judgment in Dyson v Hoover is structured in such a way that all the issues can
be dealt with in a logical manner. This technique can be used as an ‘action plan’ for
dealing with patent problems. The order in which the issues are dealt with is:

u the identification of the background of the invention (here it was that the vacuum
cleaner industry assumed that vacuum cleaner bags had to be used to collect dirt
but that these possessed certain disadvantages)

u the identification of the inventive concept (or ‘epitome’) of the invention (here
it was the patentee’s insight that vacuum cleaners could use a dual cyclone as a
means of collecting large and small particles of dirt without the necessity of using
a bag)

u the identification of the attributes of the skilled addressee of the patent, namely
their qualifications and experience (here it was a graduate engineer with practical
experience in the vacuum cleaner industry, plus the identification of the common
general knowledge which the skilled addressee possessed) the allocation of
meaning to the claims in the light of the description and drawings (the court
considered whether the patentee had used everyday English, or instead whether
the patentee provided special definitions of key words in the specification,
or instead whether the meaning of key words in the specification had to be
ascertained from specialist dictionaries)

u the determination of infringement (the court made a comparison of the claims

with the defendant’s product)

u the determination of the validity of the patent (the court made a comparison of
the claims with the prior art).

You may find it useful to adopt a similar template when dealing with problem
questions on patents.
Intellectual property Feedback to activities page 337

Chapter 16

Activity 16.1
No feedback provided.

Activity 16.2
Schedule A2 (incorporating the key provisions of the Biotech Directive) provides
that an invention shall not be considered unpatentable on the ground solely that
it concerns a product consisting of biological material or a process whereby such
material is to be produced. Biological material which is isolated from its natural
environment or produced by a technical process may be the subject of an invention
even if it previously occurred in nature (paragraphs 1 and 2). These provisions enact
the well-established principle that although one cannot patent something found
in nature (it would amount, at best, to a mere discovery) it is possible to patent a
product which incorporates living matter or a process for replicating living matter,
provided the positive requirements for patentability are met.

The Schedule then declares that the following are not patentable inventions because
(in the light of the Recitals to the Biotech Directive) they are contrary to morality.

u the human body, at the various stages of its formation and development, and the
simple discovery of one of its elements, including the sequence or partial sequence
of a gene.

u processes for cloning human beings.

u processes for modifying the germline genetic identity of human beings.

u uses of human embryos for industrial or commercial purposes.

u processes for modifying the genetic identity of animals which are likely to cause
them suffering without any substantial medical benefit to man or animal, and also
animals resulting from such processes.

Activity 16.3
Comparison of the two EPO decisions in HARVARD/Onco Mouse and LELAND STANFORD/
Modified Animal shows that over a period of time, the EPO has perhaps hardened its
attitude towards challenges to patents on ethical grounds. Initially it adopted the
view that it had a duty to balance the interests of benefits to society through medical
research, on the one hand, with preventing cruelty to animals on the other. Later, it
seems to place the onus on those challenging the patent to prove conclusively and by
objective, scientific evidence that the patent will cause harm. Arguments that many
people find animal experiments distasteful are not sufficient: it must be shown that an
overwhelming majority of people find such an activity abhorrent.

Activity 16.4
No feedback provided.

Activity 16.5
Regarding the law on methods of treatment, your summary should read:

u methods of treatment are not patentable under s.4A(1)

u new substances (and equipment) used in such treatments are patentable (s.4A(2))

u known substances having a first medical use are patentable under s.4A(3), novelty
being found in the new use (this would have to be in the form of a ‘purpose limited
product claim’, for example, ‘substance x for use as a treatment for y’)

u known substances having a second medical use are patentable under EISAI, now
enacted in s.4A(4), novelty residing in the subsequent (unexpected) therapeutic
use. While this used to have to be worded as a ‘Swiss form claim’, for example,
‘use of x for the manufacture of a medicament for the treatment of y’, which was a
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process claim, it suffices today if it is worded as ‘substance x for use in treatment of
disease y’ which again is a purpose limited product claim.

Activity 16.6
Sachs LJ puts forward a number of synonymous tests which can be used in order to
decide whether there has been anticipation.

u ‘Would the prior use infringe if carried out today?’ This can be referred to as the
‘infringement test’. Although disapproved by Lord Hoffmann in Merrell Dow v Norton,
he later changed his mind in Synthon and said that it was the test to be applied.

u ‘Is the claimed subject matter derivable directly and unambiguously from the
(prior) publication?’

u ‘Does the earlier material point inevitably to the later invention?’

u There is a difference between a ‘signpost’ and a ‘flag-post’ contained

(metaphorically speaking) in the prior art. Only the latter will suffice to destroy
novelty (although the former may suffice to destroy inventive step).

Activity 16.7
No feedback provided.

Activity 16.8
The test for inventive step given Jacob LJ in Pozzoli SpA v BDMO SA is to:

u identify the person skilled in the art and their common general knowledge

u identify the inventive concept (the epitome or essence of the invention), bearing
in mind the problem which the inventor was trying to solve

u identify the differences between the prior art and the inventive concept

u decide whether those differences, viewed without knowledge of the invention,

would have been obvious to the skilled man.

You should note that the second requirement is the identification of the inventive
concept (not the inventive step – a very common misquotation which you should
endeavour to avoid). Identification of the inventive concept was discussed in Chapter
15, as were the skilled addressee and their common general knowledge. If you are
unsure about these three ingredients of the Pozzoli formula, please reread your
notes on Chapter 16. The remaining steps in the Pozzoli formula require the court,
in the light of the inventive concept, the skilled addressee and common general
knowledge, to compare the prior art with the invention and then to decide whether
the differences are obvious. Although there is a degree of circularity in Jacob LJ’s
statement of principle, it has been used and approved since.

This is a formula which you should memorise and endeavour to apply.

Chapter 17

Activity 17.1
No feedback provided.

Activity 17.2
Applying the wording of s.39(1), the answers are as follows.

a. The nature of the duties of a trainee solicitor is such that an invention would not be
expected to result from the performance of their duties; the invention will belong
to the employee.

b. As the lecturer teaches in the School of Sociology, it is debatable whether an

invention would be expected to result from the performance of their duties which
would involve teaching and research in social policy rather than applied technology.
Intellectual property Feedback to activities page 339
c. The nature of the hairdresser’s duties as an employee would be such that an
invention would not be expected to result.

d. Depending on the nature of their appointment, a sales director might be treated as

falling within s.39(1)(b). You should refer to the decision in Staeng Ltd’s Application
for an example of how the court examined the nature of the director’s pay and
benefits before concluding that they had the duty to further the interests of the
employer’s business. In such a case the invention would belong to the employer.

Activity 17.3
Applying the statutory criteria for compensation, the situations will be as follows.

a. If there is no patent, then the compensation scheme is not available. The employer
cannot be forced to apply for patent protection.

b. Under s.40(3), the presence of a collective agreement (that is, an agreement

between the employer and one or more trades unions) will exclude the operation
of the compensation scheme, no matter what the terms of that collective
agreement may be.

c. Under s.42, any contractual term which seeks to diminish the employee’s rights
under the Act is rendered unenforceable.

d. This part raises two separate points, namely whether the new company set up by
the employer is to be treated as a ‘connected person’ under s.40(1) and s.40(2)
(more information would be needed) and whether the compensation scheme
extends to former employees who have been made redundant. The definition of
‘employee’ in s.43(2) and the treatment of deceased employees in s.43(6) suggest
that former employees are not protected.

e. ‘Outstanding benefit’ has been interpreted as meaning financial reward, so the fact
that the invention has won a prize does not count.

Chapter 18

Activity 18.1
As regards direct infringement, because this is a product patent, the list of infringing
acts is that contained in s.60(1)(a) of the Patents Act 1977. You might like to think of
Cornish’s analysis that infringing conduct can be divided time-wise into three phases,
the most important of which is the exploitation of the patent by manufacture. The
other two phases are pre- and post-manufacturing conduct.

On this analysis, the principal defendant will be Moulds Ltd, who has made the
product. In respect of post-manufacture infringement, the relevant conduct is:

u disposing of the product – this has been done by Moulds Ltd, by Pharmagen Ltd and
by Blacks

u offering to dispose of the product – this has been done by Blacks as a result of the
product being on display in any of their shops (see Gerber v Lectra)

u using the product – this has been done by the hospital when prescribing the drug
to its patients

u keeping the product – this has been done by Moulds Ltd, Pharmagen Ltd, Blacks
and the hospital when they have stocked it preparatory to their infringing conduct
given above.

As regards indirect infringement (i.e. pre-manufacture conduct), consider the

ingredients which are mentioned. Tom’s supply of the copper sulphate will not infringe
because although this would be a ‘means essential’ under s.60(2), arguably he will have
the defence in s.60(3) that this is a staple commercial product. Harry, however, will have
supplied the ‘means essential’ required for liability for indirect infringement, subject
to the requirement of knowledge. The ‘staple commercial product’ defence will not be
available to him as the moron tribromide has to be specially made.
page 340 University of London
If the product had been made in France, Pasteur would not infringe by making, as its
conduct occurs outside the Uk (note again the general wording at the start of s.60(1)).
Moulds Ltd would be liable for importing rather than making. It might be possible to
argue, however, that Pasteur is a party to a ‘common design’ so as to render it liable as a
joint tortfeasor, but the criteria in Sabaf SpA v Meneghetti would need to be established.

Activities 18.2 and 18.3

No feedback provided.

Activity 18.4
In Catnic Components v Hill & Smith Lord Diplock counsels against the use of ‘meticulous
verbal analysis’ which lawyers tend to use. Instead he says the following question
should be asked. Would persons, with practical knowledge and experience of the
kind of work in which the invention was intended to be used, understand that strict
compliance with a particular descriptive word or phrase appearing in a claim was
intended by the patentee to be an essential requirement of the invention so that
any variant would fall outside the monopoly claimed, even though it could have no
material effect upon the way the invention worked? However, he then adds:

The question, of course, does not arise where the variant would in fact have a material
effect upon the way the invention worked. Nor does it arise unless at the date of
publication of the specification it would be obvious to the informed reader that this
was so. Where it is not obvious, in the light of the then-existing knowledge, the reader
is entitled to assume that the patentee thought at the time of the specification that he
had good reason for limiting his monopoly so strictly and had intended to do so, even
though subsequent work by him or others in the field of the invention might show the
limitation to have been unnecessary. It is to be answered in the negative only when it
would be apparent to any reader skilled in the art that a particular descriptive word or
phrase used in a claim cannot have been intended by a patentee, who was also skilled in
the art, to exclude minor variants which, to the knowledge of both him and the readers
to whom the patent was addressed, could have no material effect upon the way in which
the invention worked.

Hoffmann J in Improver reformulates Lord Diplock’s initial question and the further
statement as follows:

If the issue was whether a feature embodied in an alleged infringement which fell outside
the primary, literal or acontextual meaning of a descriptive word or phrase in the claim (‘a
variant’) was nevertheless within its language as properly interpreted, the court should ask
itself the following three questions:

(1) Does the variant have a material effect upon the way the invention works? If yes, the
variant is outside the claim. If no –

(2) Would this (i.e. that the variant had no material effect) have been obvious at the date
of publication of the patent to a reader skilled in the art. If no, the variant is outside the
claim. If yes –

(3) Would the reader skilled in the art nevertheless have understood from the language of
the claim that the patentee intended that strict compliance with the primary meaning
was an essential requirement of the invention. If yes, the variant is outside the claim.

Lord Hoffmann, as he became, then restated the law again in Kirin Amgen, appearing
to return to the test first set out in Catnic. The question to be asked today when there
is a difference between the claimed invention and the alleged infringement is ‘what
would a person skilled in the art have understood the patentee to have used the
language of the claim to mean?’

It is very important that you can accurately state what the Kirin Amgen question is.

Activity 18.5
The differences between the majority and the minority in Wheatley v Drillsafe lie in
the way in which the court approaches the issue of inventive concept. The majority
takes a narrower view of the patent’s inventive concept, regarding it as the use of a
Intellectual property Feedback to activities page 341
‘centre-less’ drill cutter for drilling holes in underground petrol storage tanks without
the need for the use of a pilot drill. The minority (Aldous LJ) takes a broader view of the
inventive concept: what mattered was that the defendant’s probe did not enter the
tank (thereby avoiding the risk of sparks) which was the problem that the patent had
sought to solve. Aldous LJ therefore follows the advice of Lord Hoffmann in Biogen v
Medeva in identifying the problem to be solved as part of the process of identifying the
inventive concept (see the discussion of the inventive concept in Chapter 15). What
Wheatley v Drillsafe demonstrates is that it is possible for the underlying inventive
concept to be drawn broadly or narrowly by the court simply as a consequence of
differing judicial opinions. This means that contrasting answers will be obtained to
the Kirin Amgen question in each instance because depending on the nature of the
inventive concept, the skilled addressee will view the claims in a different light.

Activity 18.6
Lord Hoffmann’s speech in Kirin Amgen makes clear that the scope of protection of a
patent is determined by the claims. Anything which extends protection outside the
claims is expressly prohibited (para 44). There is therefore nothing which equates to
the US ‘doctrine of equivalents’. The Protocol is concerned with the construction of
Article 69. It says that literalism should be avoided, but otherwise says that one should
not go outside the claims. Accordingly, fair protection for the patentee together with
certainty for third parties are both catered for by asking ‘what is the full extent of
the monopoly which the person skilled in the art would think he was intending to
claim?’ Therefore Catnic is in full accord with the Protocol (paras 47 and 48). Purposive
construction does depend on context: strict compliance is appropriate where ‘figures,
measurements, angles and the like are given’, and no doubt there are other cases
where a word or phrase is used in some looser sense. The Protocol questions are
difficult to apply in patents such as the one in the instant case where the language
used was very exact. Even if one resorted to the inventive concept, the Protocol
questions answered themselves, but even here it was possible to come to different
conclusions as to what the inventive concept was. The Protocol questions were not
a substitute for trying to understand what the person skilled in the art would have
understood the patentee to mean by the language of the claims.

Lord Hoffmann appears to be saying that where the patent involves sophisticated
technology, of necessity the language of the claims will have to be precise (otherwise
there might be a risk of ‘Biogen insufficiency’), so that where the claims consist of exact
language, the Protocol questions do not assist the court. The only issue will therefore
be to ask what the skilled addressee understood the patentee to mean. This appears to
mark a complete return to Lord Diplock’s question in Catnic.

If need be, return to your notes on Catnic to see exactly what Lord Diplock said
about purposive construction.

Activity 18.7
See Section 18.5.6.
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Notes