COPYRIGHT DESIGN PATENT TRADEMARK

INFORMATION IPO website - copyright section IPO - designs section & register IPO - patent section & register IPO - trademarks section & register
Designs Opinions Service Patents Opinions Service
LEGISLATION Copyright, Designs and Patents Act 1988 Copyright, Designs and Patents Act 1988 Copyright, Designs and Patents Act 1988 The Trademarks Act 1994
Registered Designs Act 1949 Patents Act 1977
CREATOR Author Designer Inventor Proprietor

COVERS Literary, dramatic, musical, artistic works, databases, films, Visual appearance of whole or part of a product Functional/technical aspects of any technology, chemical, mechanical or Names, logos, domain names, slogans, colours, shapes, music
sound recordings, broadcasts, typographical arrangements electrical

REGISTERED? No - automatic protection as soon as recorded UK Unregistered (3D only) Registered national, community, international Registered national, community, international
UK Registered Unregistered
EU Unregistered
EU Registered
International
HOW TO REGISTER None UK IPO, OHIM, WIPO (Hague) UK IPO, EU IPO (Munich), WIPO UK IPO, OHIM, WIPO (Madrid)
Unregistered - use
HOW LONG TO
REGISTER? Instant UK paper system - 30 days 3-4 years 4 months

OHIM & WIPO - 24 hours

PRE-REQUISITES Must be: Must be: Must be: Must be:
Original Novel New A sign that can be represented
Fixed onto a medium Individual character Inventive step graphically
Capable of industrial application Can distinguish goods or sevices
Not been disclosed to anyone of one undertaking from another
Must not:
Infringe pre-existing TM rights

DURATION LDMA - author's life + 70 years UKDR: 15 years from design/10 years from marketing 20 years max. Unlimited but must renew every 10

Sound recordings - 70 years from recording or publishing UKR: 5 years, renewed every 5 years. Max. 25 years. Renew 4 years from filing date years

Broadcasts - 50 years from making Unregistered Community: 3 years from creation

Typographical - 25 years from publishing Registered Community: 5 years, renewed every 5 years. Max. 25 years.

International: 5 years, renewed every 5 years. Max. 25 years.

Must be a sign, represented graphically & can distinguish goods & services
NOT PROTECTED Where qualification provisions s.153 not met Component part of complex product not seen in normal use LDMA works, aesthetic creations
from other companies

Protected emblem Discoveries, scientific theories, mathematical methods

i.e. author, country of publication and country of broadcast
Must be British or EU citizen, living in UK or EU or a UK/EU Schemes/rules/methods for performing mental act/playing games/doing
based company to qualify for protection business
Computer programmes
Presenting information
Medical treatment/diagnosis

GROUNDS FOR REFUSAL Outside grace period Marks: Descriptive, devoid of character, offensive, deceptive
Prior disclosure
Dictated by technical function Shapes: resulting from nature of goods, necessary for technical function,
gives substantial value, bad faith

Contrary to public policy/morality Protected emblems, some flags if use would be offensive or misleading

Earlier marks if potential conflict

INFRINGEMENTS s.16 CDPA Making, offering, putting on the market, importing, exporting, using s.60 Patents Act Use in the course of a trade in relation to goods/services
product in which design is incorporated, stocking a product for those
purposes

Copy, issue copies, rent/lend, perform, communicate to public, Registered Design Act 1949 Products: makes, sells, exports, disposes of, offers to dispose of, uses, Affixes to goods/packaging, offer/expose/put on market, stocks goods,
offers or supplies services under sign, imports, exports, advertises, uses on
adapt imports business papers

Processes: uses, offers for use without consent, disposes/offers to

dispose, import, export
PERMITTED ACTS Making of temporary copies Private, non-commercial, experimental purposes Private, non-commercial, experimental purposes Use to identify goods from proprietor
Personal copies for private use Reproduction for teaching purposes Prescription of medicine Use of own name

Research & private study Repair of aircraft & ships Indication of kind, quality, quantity, intended purpose, value, geographical
Repair of aircraft & ships origin, time of production, other characteistics

Copy for text/data analysis for non-commercial research Repair component of complex product Intended use of a product/service

Criticism, review, quotation, news reporting

Caricature, parody, pastiche
Incidental inclusion
Educational exceptions
Libraries & archiving
Orphaned works
Public admin
Computer programmes
REMEDIES &
RESOLUTIONS Damages Damages
Injunction
Injunction Declaration of validity Injunctions
Delivery up Delivery up Account of profits
Forfeiture Damages Delivery up
s.100 Seizure Account of profits Removal of sign
Destruction of goods
Passing off - Unregistered TM
WHO PROVIDES Opinions Service Patents Opinions Service
RESOLUTIONS? IPEC - Patent Court
Works Unauthorised intentional copying of a registered design in a course of a None Applying to goods
OFFENCES business
Illicit recordings Applying to packaging, business papers, adverts
Circumvention of technical devices Articles specifically designed for making copies of a sign
Fraudulent reception of programmes
Unauthorised decoders

DEFENCES None Believed on reasonable grounds that use of sign, in manner used, was not
Reasonable belief registration of design invalid N/A an infringement of a registered TM
Did not infringe right in design
Reasonable belief that did not infringe right in design

CASE LAW PRS v Camelo Robert Welch Designs v Argos Arsenal FC v Reed
Trunki Case Lego v Mega Brands/Best-Lock v Lego
Nestle v Cadbury
London Taxi Co v Fraser Nash
Nestle v Cadbury (KitKat)
Simba Toys v Seven Towers
Christian Louboutin v van Haven
Sabel BV v Puma
Morning Star v Express Newspapers