A Spoonful of IP (September 2016)

Frozen Peas

September 2016 issue

* “Brexit” – what will happen now to your IP?
* Stopping online sales of counterfeit products – injunctions against ISPs and other intermediaries to stop infringements by third parties
* Copyright reactivated for industrially-produced articles
* Colour trade marks – Glaxo’s registration for a combination of colours invalidated

“Brexit” – what will happen now to your IP?

Until the UK formally leaves the EU (in at least 2 years’ time), the scope of IP rights will remain unaffected.  In summary, after the UK has left the EU:

• UK registered rights (UK patents, trade marks and designs) will be unaffected.
• European Patents granted by the European Patent Office will be unaffected.
• As an unregistered right, with mutual recognition across most of the world, copyright’s existence will not be affected by an exit.
• European Union Trade Marks and Registered Community Designs will (eventually) almost certainly cease to have effect in the UK. However, it is likely that the UK Government will introduce provisions to convert or extend these rights to cover the UK.
• Furthermore, a pan-European injunction is no longer likely to be available through the UK courts for EUTMs and RCDs.

In the meantime, EU-wide registered IP rights continue to cover and be enforceable across the EU, including the UK.

The main immediate area of uncertainty surrounds the planned EU-wide patent, the “Unitary Patent”.  However, the Agreement has not yet come into force, so it is possible that its introduction could be postponed, whilst the UK negotiates to be included.  Alternatively, the rest of the EU could proceed without the UK.

What should I do now?

Nothing need be done by you immediately.  That said, Brexit is a timely reminder to consider the following:

• Review your registered IP portfolio;
• Keep your UK trade mark(s) registered, even if you have a EUTM that covers the same goods and/or services; and
• Review existing commercial relationships and include contractual provisions that may be affected by the Brexit (e.g. termination or “force majeure” provisions). IP licences and settlement agreements may be disrupted by a change in the territorial scope of EUTMs and RCDs.

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Stopping online sales of counterfeit products – injunctions against ISPs and other intermediaries to stop infringements by third parties

The English courts have been willing for a number of years to grant blocking injunctions against ISPs to prevent file sharing and other activities which infringe copyright e.g. in films and music. For example, in a series of cases the leading UK ISPs were ordered to block access to the Newzbin and Pirate Bay sites. In each case, the ISPs were innocent parties – they had no direct involvement in the infringing activities.

In 2014 that principle was extended when the High Court ordered (in Cartier v BSkyB) a blocking injunction against the leading UK ISPs to prevent the offering and selling of counterfeit goods which infringed trade marks such as “Cartier” and “Montblanc”. That injunction has now been approved by the Court of Appeal. In brief, the following important points arise:

• The onus lies on brand owners to be proactive and bring any infringing activities of which they are aware to the ISPs’ attention. There is no duty on ISPs to monitor websites which they host, and ISPs are not liable until the infringement is brought to their attention by the brand owner.

• The blocking injunction is discretionary, and the Court must consider a number of factors, including the importance of the IP rights being asserted, the efficacy of any blocking injunction if ordered, whether there are alternative measures which could be taken, and whether the benefit to the rights owner of the blocking measures justifies the cost to the ISPs of implementing them.

Accordingly, the courts expect brand owners to consider other available remedies before applying for a blocking injunction, which should be seen as a final resort. In any case, the cost of applying for a blocking injunction is substantial, which is likely only to be justified in respect of major brands. Nonetheless, it is clear that the availability of blocking injunctions is now firmly established in English law, and provides an additional tool for brand owners.

It is less clear what will happen following Brexit, as the Court of Appeal’s rationale for granting such injunctions relied both on English and EU law.  That question will no doubt need to be addressed in the coming years.

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Copyright reactivated for industrially-produced articles

Three dimensional articles, such as furniture, can be protected by copyright if they can be said to be “works of artistic craftsmanship”. However, until July this year, the term of protection for such articles was limited to 25 years if more than 50 copies were made. That 25 year term was far shorter than the period of protection for other artistic works, such as paintings and sculptures, which is the lifetime of the creator plus 70 years. In practice, the rule meant that items such as fine furniture received only a short term of protection in the UK, and a flourishing industry producing unauthorised but legal copies of classic modern designs, such as the Arne Jacobsen “Egg Chair” (shown below), appeared in the UK.

jacobsenegg

The situation has now completely changed, as the legal provision restricting the term of copyright (section 52 of the Copyright, Designs and Patents Act 1988) was repealed on 28 July 2016. The term of copyright for items formerly affected by s. 52 is now the full lifetime of the creator plus 70 years. The effect is that copyright in many items has now been reactivated, and manufacture and sale of those items – which was perfectly lawful – will be unlawful going forward. There is a short transitional period – until 28 January 2017 – during which copies (either 2D or 3D) imported, made or contracted for before 4.30pm on 28 October 2015 may be sold. After 28 January 2017, no further unauthorised copies may be sold at all in the UK.

The change in the law will not affect all three dimensional articles, only those which are “works of artistic craftsmanship”. That category is not closely defined, but ordinary items of mass-produced furniture, for example, are unlikely to qualify. Items by famous designers, though, which have genuine artistic or aesthetic quality and can fairly be said to be works of fine art, will now only be available through authorised sources, at substantially increased prices.

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Colour trade marks – Glaxo’s registration for a combination of colours invalidated

Colours can in principle be registered as trade marks, provided that the applicant can establish that the colour has become distinctive through use. Although that is an onerous requirement in practice, there are a number of registrations protecting colours, including cobalt blue for Tynant spring water bottles, orange for mobile phone services and green for BP’s filling stations.

Registrations covering combinations of colours are more problematic. In addition to the requirement of establishing distinctiveness, the manner in which the combination is described must also satisfy the requirement that the trade mark is a sign which is capable of graphical representation. In Nestlé v Cadbury, Cadbury’s mark specifying the colour purple “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods” was held to be invalid. The Court of the Appeal took the view that Cadbury’s mark was in reality “multiple signs with different permutations, presentations and appearances, which are neither graphically represented nor described with any certainty or precision, or at all”.

More recently, Glaxo sought to enforce its trade mark protecting the colour scheme on its Seretide® inhaler, as shown below. The description states “The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler”.

The judge, applying the Cadbury decision, held that a colour mark could not be validly composed of variants around a single sign. In his view, Glaxo’s mark “served only to pose a puzzle for the reader” – as such it was not sufficiently precise, clear or unambiguous, gave rise to too much uncertainty, and hence was invalidly registered.

glaxopurpletm

The decision against Glaxo serves as a reminder of the difficulties facing owners of unusual, “non-traditional” marks such as colour marks.  When applying to register such marks great care needs to be taken to clearly and specifically identify both the proportion and the position of each colour, leaving no room for doubt in the examiner’s mind as to what exactly is being protected.  It is vital to ensure that the graphical representation included in the application specifically delineates the colours, identifying precisely the scope of the right applied for.  If there is any possible ambiguity in the scope of protection the application is likely to be rejected, or any resulting registration may be vulnerable to cancellation and therefore unenforceable.  Additionally, it is important to bear in mind that when registering such non-traditional marks, it is highly likely that evidence of acquired distinctiveness will be requested by the examiner. Accordingly, owners of unusual marks are encouraged to ensure their mark is used consistently in a uniform way, without variation, and to keep accurate records of such use which can be presented at examination if required.

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Photograph of peas: “Frozen Peas” by Paul Wilkinson used under CC BY.

Photograph of Egg Chair: Regency Shop