IP glossary of terms

The term “disclosure” relates to a revelation of facts or the act or process of making known something that was previously unknown. In the field of copyright, “disclosure” could be construed as making a work accessible to the public for the first time.

Since works can be published by virtue of “non-copy” acts other than by actual publication there exist other forms of disclosure. Examples include public performance, as well as broadcasting to the public by cable (wire) or satellite. Recognition of such a disclosed right is not an obligation under international copyright convention. The Berne Convention for the Protection of Literary and Artistic Works (1971) refers to the use of publicly-disclosed works in the context of exceptions and that an author of a work has the right to disclose his work to the world. Under certain national laws, the “right of disclosure” is a moral right.

A domain name is used to identify a particular party’s website.  The website is accessed using an IP address, which is a coded series of numbers. The domain name converts this IP address into a text-based version, making it easier for people to use and remember. For example the actual IP address for the SH&P website is “http://87.237.69.103” – translated more easily as “https://www.shandp.com”.

Domain names are an important intellectual property consideration, since they can be used to distinguish the goods/services of one party from those of others on the Internet. Many brand owners seek to to register the domain name that reflects their branding, so the availability of a domain name when selecting a new brand is a very important consideration. Ideally a party should select a domain name that corresponds to their name, helping consumers to easily find them online.

A domain name can be generic (e.g. .com), give a geographic indication (e.g. .uk) or be a particular niche (e.g. .media).

The right to use a domain name is delegated by “Domain Name Registrars”.  A Registrar usually charges an annual fee for the service of delegating a domain name.  In return, the party will have an exclusive right to use the domain name (but not outright ownership).

This is a term usually used in relation to copyright protection. Dramatic works are one of the types of original works protected by copyright.  It usually requires action by a person or persons, with or without words or music, which can be performed before an audience. Stage plays and film productions are common forms of dramatic works.

In order to be protected by copyright, a dramatic work needs to be recorded or fixated on a medium and requires originality. For a work to be original, it needs to be its author’s own creation rather than the copy of someone else’s work or dictated by technical functions.

The European Patent Office (EPO) is responsible for the granting of European patents under the provisions of the European Patent Convention (EPC).

The EPO is one of the two organs of the European Patent Organisation;  the other being the Administrative Council, which supervises the activities of the EPO. It is located in Munich and has a branch in The Hague. There are sub-offices in Berlin and Vienna, and an office in Brussels which liaises with the European Union (EU). The official languages of the EPO are English, French and German.

In order to perform the procedures required under the EPC, the EPO has the following:-

• A Receiving Section;
• Search Divisions;
• Examining Divisions;
• Opposition Divisions;
• A Legal Division;
• Boards of Appeal;
• An Enlarged Board of Appeal.

The filing of a European patent application – provided of course that it is granted – results in a patent that can be made effective in as many of the EPC contracting states as are of interest to the proprietor. A European patent should thereafter be regarded as a bundle of patents and which are each subject to renewal at the national Patent Offices of the countries concerned.

The EPO does not handle disputes relating to the infringement of European patents; decisions on such matters are made by the courts in the countries concerned.

The decision of the United Kingdom to leave the EU (so-called Brexit) has no effect on European patents. The EPC is an international treaty and totally separate from the EU.

The European Union Intellectual Property Office (EUIPO) is a registry that offers European Union trade mark and design protection across all member states of the European Union (EU) in one single registration.

Based in Alicante, Spain, the EUIPO manages the registration of European Union trade marks and designs and works alongside the national intellectual property offices of the current 28 member states of the EU, with the aim of harmonising and developing consistent laws and registration procedures across Europe.

Formerly known as the Office for Harmonisation in the Internal Market (OHIM), the EUIPO was created as a decentralised agency of the European Union (EU) and has control of its own legal, administrative and financial matters. Its activities are overseen by the European Commission and the European Parliament and are subject to EU law.

The Executive director, who is appointed by the Council of the European Union, is responsible for the running of the EUIPO which is governed by the Management Board and Budget Committee.

Although the EUIPO has 5 working languages (English, French, German, Italian and Spanish), it is able to process trade mark and design applications in any of the 23 official languages of the EU. The EUIPO keeps a public register of all protected trade marks and designs which is freely-available for public viewing. A link to the register is here.

Through its independent Boards of Appeal, the EUIPO can make decisions on appeals against first instance decisions relating to trade mark and design matters. However, the EUIPO’s decisions can be examined and overruled by the General Court (GC), whose judgments, in turn, can be appealed before the Court of Justice of the European Union (CJEU).

Formerly known as the Community Trade Mark (CTM), the European Union Trade Mark (EUTM) enables right holders to protect their trade mark in every member state of the European Union (EU) by means of a single trade mark registration. As a consequence, the EUTM system is a cost-effective way of protecting a trade mark in all current 28 member states of the EU, rather than seeking national registrations in each member state. The first EUTMs were filed on 1st April 1996.

An existing EUTM will automatically extend to any new member states joining the EU in the future. For example, the most recent member state to join was Croatia in 2013 and as a result all existing EUTM registrations automatically extended to this territory as from the admission date of Croatia to the EU. By the same token, for any member state that leaves the EU then protection of a trade mark in that territory by means of an EUTM will be lost. When the UK leaves the EU as is predicted by 2019, it is certain that protection of a trade mark in the UK will not be possible by means of an EUTM, as it is currently.

Administered by the European Union Intellectual Property Office (EUIPO), the EUTM can be registered in the form of an individual mark (i.e. word mark, figurative mark, figurative mark containing words, 3D mark, sound mark or colour mark) or alternatively as a “collective” mark.

Once an application is made, the EUIPO will examine the EUTM to ensure that it contains all the correct information and meets the legislative requirements. Provided the EUTM meets the criteria, the EUIPO will then publish the trade mark in their Official Bulletin for a period of 3 months. During this period, third parties may object to the registration of the EUTM. Should no objection be received during this period the mark becomes registered and the EUIPO issue a Certificate of Registration to its owner.

A registered EUTM gives its owner wide protection across the EU and empowers the owner to prevent the use by another party of a conflicting trade mark in any of the member states.

In order to keep an EUTM valid there must be genuine use of the mark in the EU within 5 years following its date of registration. Failure to use the mark would leave the EUTM vulnerable to cancellation for non-use by an interested third party. Such an action can be brought following the expiry of the 5 year period.

Failure by an applicant to meet certain deadlines set by the European Patent Office (EPO) in respect of a European patent application can be remedied by filing a request for further processing.

When it is available, a request for further processing effectively gives the applicant a two month extension of time.  The omitted act (for example, the filing of a response to an examination report) must be completed within this period of time, and the request must be accompanied by the official fee for further processing.

See Trade Dress

A key part of a trade mark registration is the list of goods and services that it covers. In essence, the goods and services identify what the trade mark is protected for.

Goods and services are broken down into specific classes in accordance with the Nice Classification, which describes in very broad terms the nature of the goods or services. There are 45 class headings in total; goods (tangible products) fall within Classes 1-34 and services (intangible products) fall within Classes 35-45. Each class is defined by a specific list of products or services. Clothing, for example, falls within Class 25 and restaurant services are in Class 43.

One of the roles of a trade mark attorney is to carefully craft a specification of goods and services that will enable a business to achieve adequate protection for its brand. This is never as easy it may seem, not least because there are different rules in different territories which dictate how broadly goods and services can be covered under a new trade mark application.

A trade mark attorney will take time to understand the business relating to the brand in question and devise a list of specification terms that will protect a mark for all the relevant products and services. Often the specifications will be slightly broader than necessary in order to “ringfence” the essential goods and services and therefore deter competitors from getting too close to the business’s brand. When composing a specification for a new trade mark application it is also vital to consider the business’s aspirations for the future and to take into account how the brand may expand and evolve over time. Without careful consideration at the outset this can lead to unnecessary expense later on because once a trade mark application is on file its scope cannot be increased. Protection for additional products and services would mean that a second trade mark application would need to be filed, duplicating the costs.

Let’s suppose a business produces clothing under a particular brand name and obtains a trade mark registration for it. Then, in the following year, the business begins producing leather bags under the same trade mark. In that scenario it would be necessary to obtain another trade mark registration for the same mark in relation to bags. These products cannot be added to an existing registration which covers only clothing. Had the product expansion been anticipated to begin with then bags and clothing could have been included under the original registration. Not only would this have been cheaper, it would have deterred a competitor at a much earlier date from producing their own range of bags with an identical or similar brand to the business’s.

The idea of a single, unitary Community trade mark system was conceived in the 1960s. Preliminary proposals were prepared in 1964 and published in 1973, though ensuing legislation was a long time coming. In 1980, proposals for a Community Trade Mark Regulation were published. However, not until the principle of harmonisation was accepted and implemented could the creature in the shape of the present Community trade mark be born. Known universally to the English-speaking world as the CTM, the Community Trade Mark was renamed the European Union Trade Mark (EUTM) by Regulation (EU) 2015/2424 with effect from 23 March 2016.

On 20 December 1993, the European Council issued Council Regulation (EC) 40/94 (“the Regulation”) on the Community trade mark which came into force on 15 March 1994. It established a unitary system for registration of marks throughout the European Community and signalled the Commission’s objective of preventing trade mark owners partitioning the European market by adopting different trade marks for different countries and, thereby, thwarting the concept of a single market as originally envisaged by the Treaty of Rome. It was replaced by Council Regulation 207/2009 of 26 February 2009 and was amended further by Regulation (EU) 2015/2424 (“the CTMR”) as of 23 March 2016 (with some provisions coming into force at a later date). It is supported by Commission Regulation 2868/95 of 13 December 1995 (Implementing Regulation, “the Rules”), which has been amended from time to time. Guidelines on practice are published and an up to date set has been in place since 23 March 2016, when many provisions of amending Regulation 2015/2424 came into force.

In practice, whilst the principle of harmonisation holds true throughout the European Union, countries remain free to interpret and enforce law and practice according to national needs. With the coming of Brexit, it is likely that the UK’s national approach to trade mark law and practice will diverge over time from the remainder of the European Union.

Although trade marks are territorial by nature, there are a variety of harmonisation practices worldwide which seek to bring the laws and practices of the different jurisdictions of the world together.  Examples are:

• The Benelux Trade Marks Act which harmonises the trade mark laws of Belgium, the Netherlands and Luxemburg,

• The Paris Convention for the Protection of Intellectual Property (1883), which has 196 contracting jurisdictions (2017) and which obviates discrimination between domestic and foreign applicants, provides for use of a trade mark in a form differing immaterially from its registered format not to invalidate it or diminish the protection granted to it, provides for the protection of well-known marks and imposes an obligation on contracting parties to provide protection against unfair competition.

• Nice Agreement concerning the International Classification of goods and services for the purposes of the registration of marks (1957).

• Vienna Agreement establishing an International Classification of the Figurative Elements of Marks (1973).

• TRIPs Agreement (1993) which sets out minimum standards in acquiring trade mark rights, enforcement, customs and criminal procedures and in dispute prevention and enforcement.

See Patent Infringement and Trade Mark Infringement

Whether a trade mark is “registrable” or not depends on a number of factors.

If you have a new brand name that you want to use then a trade mark attorney will consider if that mark is suitable for registration and that it passes the various tests set out under the relevant act. For example, a trade mark must be distinctive and must not directly describe the goods or services for which it seeks registration. Further, it must not be a “generic” name for a product, nor should it be immoral or offensive to the everyday consumer. A brand name or other sign must pass all of these tests in order to be considered inherently registrable as a trade mark.

The purpose of obtaining a trade mark registration is to give the owner the right to prevent others from copying the same of very similar trade mark. It makes sense, therefore, that nobody should have the right to stop others from using a mark that is purely descriptive, for example.

“Intellectual property” is the collective term used to refer to patents, trade marks, designs and copyright. Intellectual property (IP) rights may also include other so-called intangible assets, such as geographical indications, goodwill, know-how and trade secrets. It is common to see the term “intellectual property” abbreviated to “IP”.

IP rights enable their owners to take legal action to prevent others from, for example, copying their product or brand. They are therefore a significant business asset which can play a key role in establishing and maintaining a company’s competitive edge and enhancing their market position.

An interim or interlocutory injunction is a temporary court order that restrains one party from doing an act that would damage the other party to the legal proceedings. It may be issued at a preliminary stage in the proceedings and is usually intended to maintain the status quo, or to protect the interests of one party, until such time as the case comes to trial and a final decision is reached by the court.

In patent infringement proceedings, for example, the patent proprietor (the plaintiff) may seek an interim injunction against the defendant so as to prevent them from selling their allegedly infringing product in the period leading up to the full trial. The court would be likely to grant an interim injunction if it is satisfied that the subsequent award of damages to the patent proprietor (in the event that the patent is held to be infringed) would not be adequate to compensate them for the harm caused by the infringement.

An interim or interlocutory judgement is a provisional or temporary one that is given by a court at an intermediate stage in legal proceedings.  It is not the final decision on the matter.

The invalidation of a UK or EU trade mark registration can be based on absolute grounds and/or relative grounds.  Similar procedures regarding arguments and evidence in a UK opposition apply to invalidation proceedings, including proof of use of prior registrations (if over 5 years old), rights to appeal and award of costs. The same considerations also apply with regard to settlement discussions, mediation and awards of costs.

An important aspect of a successful invalidation action is that the cancellation of the registration has effect from the date at which the registration had been filed. In other words, a successful invalidation action against a trade mark registration gives the net result of the registration being treated as if it had never existed. As such, the proprietor would be unable to assert any infringement rights that may have arisen during the time of registration.

Invalidation may be partial in respect of some or all of the goods and services covered by the registration.

In order to be patentable in the United Kingdom, an invention must involve an inventive step.  It must also possess novelty.

An invention involves an inventive step if – having regard to the state of the art – it is not obvious to a person skilled in the art.  A routine modification of something that is already known is likely to be regarded as obvious and, consequently, lacking an inventive step. The notional person skilled in the art is deemed to be of average ability – not a genius – and to be aware of everything that was previously publicly known in the relevant field. If appropriate, the person skilled in the art may be a multi-disciplinary team of such persons.

One approach to assessing whether an invention is obvious is to begin by considering what technical problem is being solved. How widely known is the problem and how long has it existed? Are other solutions known to that problem and, if so, what advantage over them does the present invention possess? Care must be taken to avoid viewing the invention with the benefit of hindsight. If it is obvious, then why has it not been done before?

By definition, a “jurisdiction” is the authority or power that a court or official has to apply laws and make legal judgments. In England, for example, the High Court has jurisdiction to decide patent infringement cases.

This term may also be used to refer to the country or other geographical area over which the authority of a legal system extends; for example: “the company has trade mark registrations in the UK, Australia and several other jurisdictions”.

The term“know-how” is generally defined as the expertise or practical knowledge in how to do something. In the context of intellectual property, it refers to intangible assets such as confidential information and trade secrets.

Know-how can give a company a significant competitive edge and be of great value to its owner. For example, it may relate to unpatented inventions, optimised manufacturing techniques, or skills and knowledge possessed by experienced members of staff.

There is no registration procedure for know-how and so, in order to keep its value, it is essential that it remains confidential. If the know-how is to be shared with another party, this should be done under the terms of a confidentiality agreement or non-disclosure agreement (NDA). It is also important for know-how to be documented so that it can be readily identified and managed.

See Acquiescence

The term lawsuit refers to proceedings brought by one party (the plaintiff or claimant) against another party (the defendant) in a civil court of law. A lawsuit may also be known as an “action”.

The process of conducting a lawsuit is called “litigation” and the parties may be collectively referred to as the “litigants”.

A “letter before action” (also known as a “cease and desist letter” or “warning letter”) is a letter addressed to an individual or business which puts them on notice that court proceedings may be bought against them. In the field of intellectual property, a party may write to another if they consider their IP rights are being breached, for example, if the potential “infringer” is using a patent or trade mark without the owner’s permission.

Litigation resulting from the infringement of IP rights is almost always taken as a last resort since court proceedings can be expensive to bring, as well as the fact that a court will always expect the parties to have made every attempt to resolve their dispute before taking it any further. Parties are always encouraged to settle their disputes at an early stage by communicating directly with each other or by using alternative dispute resolution procedures such as mediation.

Great care must be taken when drafting a letter before action because it must be very carefully-worded. Stevens Hewlett & Perkins have great expertise in preparing letters of this nature and we are equally very adept in handling responses to these letters sent from an aggrieved party.

See Licensing

In essence, a licence grants permission to do something (to a Licensee) which would otherwise infringe the rights of the IP owner (the Licensor). Since unregulated use of IP by a third party will undermine the IP itself, it is important that any such arrangement is covered by a properly constructed legal agreement (the licence) which sets out the terms of such use and meets the legal requirements of the territory in which it is to have affect.

A licence will provide benefits to both the Licensor and Licensee. In exchange for the right to use the Licensee will normally pay a consideration or a royalty based on the income generated by the activities associated with the use of the IP. The Licensor may save production and marketing costs, gain access to otherwise inaccessible markets and benefit from the Licensee’s local market expertise and knowledge. For the Licensee, the saving on research and development costs by buying in the IP may be substantial. The parties may wish to combine their respective IP to produce a wholly new product or process from which they can both benefit. Licence arrangements between related companies may provide opportunities for tax efficiency.

The value of IP for the purposes of licensing will reflect its importance to the marketing or production process and the extent to which it is properly protected. The IP has to be protected in the geographical location where it is to be licenced. Poorly protected IP may obviate the need for a licence and/or reduce the price attaching to it.

The extent of the rights granted under a licence fall into three main categories. Under an “exclusive licence”, the Licensee will be the only party that can use the IP within the terms and conditions set out in the Licence itself. This excludes use by the IP owner as well. A “sole licence” will prevent the IP owner from granting the same rights to any other Licensees but will allow the IP owner himself to operate alongside the sole Licensee. In the last scenario a “non-exclusive” licence will enable the IP owner to licence the same rights to others and to operate alongside those licensees himself. The value of these different types of licence will of course vary but the most suitable in any situation will depend on a variety of factors, not least the relative bargaining position of the parties.

A single licence may include different types of IP. It may be limited territorially and/or limited to certain products or market sectors. Licences can be granted for an indefinite period, a fixed period or a fixed period extendible by agreement. The licence might permit the licensee to further licence the IP rights via a sub-licence. A licence may be a single stand-alone agreement or may form part of a distributorship, franchise or other business agreement.

The actual terms of an IP licence will be a matter of negotiation and the legal position in the licenced territory but both parties will want to include provisions intended to safeguard their own position. Certainly a well constructed agreement will specify how the IP can be used and in relation to which products, processes or platforms. The licence will also include quality standards and the means by which that can be monitored and regulated. You would also expect provisions clarifying the ownership of any new IP in future product developments.

As owned and protected IP is an important business asset, so the right to use another’s IP can form the cornerstone of a licensee’s business and add significantly to its value. Before entering into a Licence Agreement both parties would want to conduct due diligence exercises to satisfy themselves as to the veracity of the IP in question and the efficacy of the potential partner. As discussions commence a non-disclosure agreement will provide the confidentiality necessary to engage in open and frank pre-contractual talks.

This is a term usually used in relation to copyright protection. Literary works are one of the types of original works protected by copyright.

A literary work can be written, spoken or sung. This type of work includes for instance books, articles, letters, tables, computer programs and even newspaper headline provided they are creative to some extent. Single words on their own on the other hand, such as a name or a title, are usually not considered to be literary works.

The lyrics of a song for instance are considered to be a literary work, whereas the music itself is a musical work.

In order to be protected by copyright, this type of work needs to be recorded or fixated on some medium and requires originality. For a work to be original, it needs to be its author’s own creation rather than the copy of someone else’s work or dictated by technical functions.

The Madrid Protocol is an international treaty concluded in 1989 which forms part of the international trade mark registration system. Its full title is referred to as “The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks”.

The treaty allows a proprietor to register a trade mark simultaneously in one or more of the territories (contracting parties) that have signed up to the Madrid Protocol. The mechanism to file an application to register a mark under the Madrid Protocol is by submitting a single application to the Office of the World Intellectual Property Organisation (WIPO).

Approximately 100 territories (contracting parties) have signed up to the Madrid Protocol. A full list can be seen here at the WIPO website.

See Inventive Step