Patent and Trademarks in the UK - Essay Example

Patent and Trademarks in UK Table of Contents Introduction 4 Definition of Patent and Trademark 4 Origin Patents and Trademarks 5 Significance of Patent and Trademark 6 Infringement of Proprietors Right 8 The extent to which the law protect trademark depends on similarities of products or services, thesimilarity of concerned marks, distinctiveness acquired by the trademarks, etc. An individual infringes the right of a registered trademark proprietor if in the course of trade they use a sign that is identical to the trademark relating to goods and services similar to those which the trademarkis registered.In the case of Improver Corporation v Remington Consumer Product Limited the house of lord stated three requirements to determine whether a party has infringed the patent rights of a proprietor. The firsttest is whether modifying the invention has asignificant effect on performance of the patented invention. The second test is whether an expert in that particular field of invention would consider the language describing the patent as the strict essential for distinguishing the invention. Finally, there is consideration whether it would not have not have been obvious to an expert in a related field that the modification made on the invention would not have any effect on the patented invention. Later, these principles were affirmed in the case of Kirin-Amgen Inc and Others v. Hoechst Marion Roussel Limited and Others. 8 Remedy against Infringement 9 Patent and Trademarks Registration Procedure 10 Acceptance and Rejection of Registration 12 Conclusion 13 Bibliography 14 Law Commission, Patents, Trade Marks and Design Rights:Groundless ThreatsGreat Britain. U K Stationery Office, 2013) 160. 14 Case laws 14 Improver Corp v Remington Consumer Products Ltd [1990] F.S.R. 181 14 Kirin-Amgen Inc and Others v. Hoechst Marion Roussel Limited and Others [2004] UKHL 46 14 Menashe Business Mercantile Ltd v William Hill Organisation Ltd [2003] 1 All ER 279  15 Scandecor Developments AB v Scandecor Marketing AV [2001] UKHL21) 15 Zino Davidoff SA v A&G Imports Ltd [2003[ Ch 1009 15 Internet Articles 15 Crown, The Patents Rules and fees 2007 (as amended) Patents Legal Section, (2014). accessed 16th April 2015. 15 Crown, Intellectual property and your work, (Government Press, 2014). 15 accessed 16th April 2015. 15 Copyright Witness Ltd., The UK Copyright Service, (2014). 15 Accessed 16th April 2015. 15 Thompson Reuters Legal Solution, Patents, trademarks, copyright and designs in UK (England and Wales): overview Accessed 16th April 2015. 15 Trade dress EU Subcommittee Research, Trade Dress Protection in Europe, (2005) 1 15 Accessed 16th April 2015. 15 Journal Articles 16 Ainurul R &Birgitte A, Are There "Institutional Failures" in Intellectual Property Marketplaces? Evidence from Information and Communication Technology Firms, (International Journal of Management, 2013) 723. 16 BakrA,Competitiveness and Value of Intangible Assets, (Irish Journal of Management, 2001 22(1) 214. 16 Magazines 16 DenoncourtJ, Reform to the UK Company Registration of Charges Scheme, (Nottingham Law Journal; Vol. 22, 2013) 138. 16 Henry L,Stealing Ideas, (Art Monthly, Issue, 295, 2006) 41. 16 Henry L, Management of Creativity 30 Years On, (Art Monthly, Issue 300, 2006) 49. 16 MarydeeO,Trademarks for the Business Searcher, (Online Magazine, 1996 20(2) 52. 16 MercerJ, A mark of distinction: Branding andtrademark law in the UK from the 1860s Business History 201052(1)17. Accessed 16th April 2015. 17 Michael T, The European Innovation Scoreboard: EU Lags US & Japan While China Is Closing Gap with EU, (Research-Technology Management, 200953(5)2. 17 Terry, C,Intellectual Property Rights, (Management Services, 200347(1),) 22. 17 Introduction The effects of globalisation, technological advancement, and the ensuing business competition necessitate the need for individuals and businesses to protect their intellectual property against infringement.1 The legislations provide qualifications and procedure for registering patents and trademarks, as well as remedies for the proprietor in case of violation of right. This document focuses on the patent and trademark registration process. This study focuses on the situation in which the registrar may decline the registration of patents and trademarks if previous similar inventions or signs are available at the filing date.2The proprietors of trademarks and patents may lose their rights if another person acquires legal protection through registration and continuous usage. Although there are no requirements for patents and trademark, their owners should register for the same within reasonable time to acquire legal protection against infringement. Definition of Patent and Trademark Patents refer to an exclusive right granted by the central governments to the creator of an invention to use, produce or sell the invention.3Trademarks refer to names, designs, symbol, slogans, word or any other distinctive device that ascertains a product or a business.4 Also, it involves the use of symbols that are addedto goods to distinguish them from similar products of other manufacturers. Patents and trademarks are industrial intellectual property since they are used in the industrial context. Origin Patents and Trademarks The origin of a trademark can be traced to 2000 years ago among the Romans. In that period, Roman used to imprint or inscribed their goods with marks to differentiate them from those of other manufacturers.5 Ever since merchants have relied on those marks to single their products in the market. However, lack of registration of trademark legislations made it hard for the court to settle claims involving infringement owners’ right to the goods.6 The court relied on principles of common law to settle such claims. However, common law relied on the evidence given by the claimant to prove the right of ownership.7 Such evidence depended on the reputation the plaintiffs had established in relation to use of the particular mark. In UK, the process of developinglegal framework to address the issue of trademark came into effect in 1875.8 The Patents, Designs and Trade Marks Act 1883 integrated the UK trademark legislations. This resulted in a convention applicable to both trademarks and patents. Trade Mark Act 1919 established the registration requirements and remedies to ensure better protection of the owner against infringement.9 Significance of Patent and Trademark “Patents explicitly prevent the diffusion of new technology to guarantee the existence of technology to diffuse in the future.”10According to the case of Catnic Components Ltd. v. Hill & Smith Ltd,patenting is a process in which the proprietor informs interested individuals or organizations about the most distinguishing features of his or her products or services.11On the other hand, trademark distinguishes similar goods and services of different manufacturers. Additionally, registered trademarks enable consumers to identify the products and services of various traders. It also grants anexclusive right to the proprietor against unauthorized use by other persons.12 Patents protect the invention and industrial processes against illegal use of the discovery. The patent right prevents other persons from producing, selling or using the invention of the patented right without obtaining the owner’s permission.13 The goal is to encourage inventionand increase of knowledge through free sharing ideas without fear that someone may steal those ideas.14 Patents and trademarks protect consumers against deception regarding the source and quality of goods and services.15 Also, it helps them to identify the source of commercial goods and services hence increasing customer satisfaction.16 Furthermore, trademarks give manufacturers and traders incentives to offer superior goods and services in order to maintain business reputation. It is for these reasons that the proprietors should protect their intellectual rights against infringement through registration of ownership.17 Infringement of Proprietors Right The extent to which the law protect trademark depends on similarities of products or services, thesimilarity of concerned marks, distinctiveness acquired by the trademarks, etc.18 An individual infringes the right of a registered trademark proprietor if in the course of trade they use a sign that is identical to the trademark relating to goods and services similar to those which the trademarkis registered.19In the case of Improver Corporation v Remington Consumer Product Limited20 the house of lord stated three requirements to determine whether a party has infringed the patent rights of a proprietor. The firsttest is whether modifying the invention has asignificant effect on performance of the patented invention. The second test is whether an expert in that particular field of invention would consider the language describing the patent as the strict essential for distinguishing the invention. Finally, there is consideration whether it would not have not have been obvious to an expert in a related field that the modification made on the invention would not have any effect on the patented invention. Later, these principles were affirmed in the case of Kirin-Amgen Inc and Others v. Hoechst Marion Roussel Limited and Others.21 An infringement of trade mark can occur where a person uses a trademark that is reputable in UK such that its use gives the user an unfair advantage or results to harmful effects on the distinct character or reputation.22An infringement of a mark registered in UK can occur if a person imports goods or services into the country from other countries outside the European Union bearing the same mark as that registered in UK without the consent of the registered owner.23However, the owner of registered trademark can authorize another person to use that trademark legally through licensing. Remedy against Infringement In case a proprietor succeeds in a claim of infringement of trademark against another person the court may award the claimant an injunction, account of profit or damages.24The plaintiff seeks acourtorder to stop the defendant from continuing to use the trademark. They can also claim for the damages caused by the infringing party. However, in case the plaintiff is unable to provide evidence of damages they suffered as a result of infringement the court must take account of the profit the defendant enjoyed by using that trademark.25 Patent and Trademarks Registration Procedure The registration can be made at national or regional level through bodies appointed by the government. The registration process of a trademark can take between six and eighteen months.26 Registration of a trademark in UK protects the owner in that country only.27 However, within European Union there is a Community Trade Mark (CTM) that protects the brand within the countries in the European Union.28Additionally, under Madrid System one can submit trademark applications to multiple countries in order to get protection in those countries.29 The proprietor of thetrademark has to apply for registration to TrademarkRegistrythat is a division of thepatent office.30 The application for registration must be relating to one or more of the thirty-fourcategories of goods and eighttypes of services. The proprietor can make an application to more than one categories of goods or make an application for registration to cover more than one types of goods and services.31The registrar publishes all successful applications in the trademark journal. Upon such publication, any person wishing to protect his or her trademark against infringement should present the objection to the Registrar within three months after the publication. The registration process of a patent takes between two to three years. A trademark should be able to identify the products, services or the organizatio in order to qualify for registration.32Additionally,it should not cause confusion to the consumers about the relationship between different parties or mislead them in relation to quality of goods and services. The UK Intellectual Property Office (UKIPO) is responsible for registration of trademarks. UKIPO grants the owner of the trademark numerous exclusive rights such as theright to private use of the mark in relation to the goods or services for which the mark is registered.33Additionally, the proprietor has an opportunity to pursue legal action against infringement.34Furthermore, registration can give the owner right to prevent the use of trademark for unrelated products. For example, a person can be prevented from using Sony trademark on goods such as sunglass even though they are not in the range of goods produced by Sony.35This protects consumers from buying product using that trademarkthinking they areproducts of Sony Company.A registered trade mark is valid for ten years after which the owner can decide to renew it at some fees in order to preserve the right of its ownership. Acceptance and Rejection of Registration The only prove of adescriptivetrademark is the evidence of prolonged use and the extent to which public can identify it with theassociated product, service or organization. Trade Marks Act 1994 is the current UK trade mark legislation guiding the registration of trademarks.36The new law bestows the proprietor of the trademark the onus to oppose the application on the basis of opposition after UKIPO has published it in the journal.37Therefore, UKIPO cannot singularly reject the application on the basis of on-going conflicts between marks or previousunapproved applications. UKIPOscrutinizes the distinctiveness of the trademark to qualify it for registration.The proprietor can apply for registration of trade mark at any time as long as they satisfy the legislation requirements for registration set in Trade Mark Act 1994.38A new mark that is similar or identical to an earlier mark that has a reputation in UK cannot be registered even if it not for similar or identical goods or services.39 The argument is that registration of such reputable mark would have anunfair advantage to the new owner or detrimental effects to the earlier trademark. Alternatively, the issue may be raised in the subsequent proceedings upon which the registration may be refused if the earlier mark was in use in UK within the last five years on the goods and services it was registered.40However, if the mark was not in use for the last five years, the registrar can decline registration of the new mark if the owner of the earlier mark states a valid reason the mark was not in use over the last five years. Conclusion Patents and trademarks protect traders or producers of goods against unfair competition by assisting customers distinguish goods and services offered by different merchants or manufacturers. It also helps the producers to increase thevariety of products and services to the market hence helping consumers to have assortments of goods and services from which to choose from in terms of price, quality, etc. In order for the proprietor to obtain the exclusive right to production, ownership, use and sale of marks or inventions they should register for the same and pay all necessary fees. However, the registration can be declined in case of their similarity to other existing marks whether for similar goods of different goods. Registration provides the propriety legal recognition right and protection against infringement or illegal use. Bibliography Books BradgateR&White F,Commercial Law, (Oxford University Press, 2007) 465- 488 CharmassonH &Buchaca J,Patents, Copyrights & Trademarks for Dummies, 2ndEd., (John Wiley & Sons, 2009) 84 Fidelma W. White, Commercial and Economic Law in Ireland, (Kluwer Law International, 2011) 368. Gompel Stef van,Formalities in Copyright Law:An Analysis of Their History, Rationales and Possible Futures,(Kluwer Law International, 2011) 346. Law Commission, Patents, Trade Marks and Design Rights:Groundless ThreatsGreat Britain. U K Stationery Office, 2013) 160. TillsonJ, Law Express: Consumer and Commercial Law 3rd edn, (Pearson Education Limited, 2014) 264. Torremans, P,Intellectual Property Law, (Oxford University Press, 2013) 1-718. WillistonS,Richard D.C& Richard, W.H, Commercial Law, (American Institute of Banking, 2015) 484. Case laws Improver Corp v Remington Consumer Products Ltd [1990] F.S.R. 181 Kirin-Amgen Inc and Others v. Hoechst Marion Roussel Limited and Others [2004] UKHL 46 Menashe Business Mercantile Ltd v William Hill Organisation Ltd [2003] 1 All ER 279  Scandecor Developments AB v Scandecor Marketing AV [2001] UKHL21) Zino Davidoff SA v A&G Imports Ltd [2003[ Ch 1009 Internet Articles Crown, The Patents Rules and fees 2007 (as amended) Patents Legal Section, (2014). accessed 16th April 2015. Crown, Intellectual property and your work, (Government Press, 2014). accessed 16th April 2015. Copyright Witness Ltd., The UK Copyright Service, (2014). Accessed 16th April 2015. Thompson Reuters Legal Solution, Patents, trademarks, copyright and designs in UK (England and Wales): overview Accessed 16th April 2015. Trade dress EU Subcommittee Research, Trade Dress Protection in Europe, (2005) 1 Accessed 16th April 2015. The Law Commission, “Patents, Trade Marks and Design Rights: Groundless Threats;” Law Commission Consultation Paper No 1-138 http://lawcommission.justice.gov.uk/docs/cp212_patents_groundless_threats.pdf Accessed 16th April 2015. Journal Articles Ainurul R &Birgitte A, Are There "Institutional Failures" in Intellectual Property Marketplaces? Evidence from Information and Communication Technology Firms, (International Journal of Management, 2013) 723. BakrA,Competitiveness and Value of Intangible Assets, (Irish Journal of Management, 2001 22(1) 214. EllenH,Report of the Commission on Intellectual Property Rights, Innovation and Public Health: A Call to Governments, (Bulletin of the World Health Organization, 200684(5). 421. EstelleD,Intellectual Property Rights and Global Warming, (Marquette Intellectual Property Law Review, 2008, 12(2) 263. Magazines DenoncourtJ, Reform to the UK Company Registration of Charges Scheme, (Nottingham Law Journal; Vol. 22, 2013) 138. Henry L,Stealing Ideas, (Art Monthly, Issue, 295, 2006) 41. Henry L, Management of Creativity 30 Years On, (Art Monthly, Issue 300, 2006) 49. MarydeeO,Trademarks for the Business Searcher, (Online Magazine, 1996 20(2) 52. MercerJ, A mark of distinction: Branding andtrademark law in the UK from the 1860s Business History 201052(1)17. Accessed 16th April 2015. Michael T, The European Innovation Scoreboard: EU Lags US & Japan While China Is Closing Gap with EU, (Research-Technology Management, 200953(5)2. Terry, C,Intellectual Property Rights, (Management Services, 200347(1),) 22. Read More