IP glossary of terms

An opponent is the name given to a party who registers their objection to another party’s application for grant of a patent or registration of a trade mark.

In trade mark disputes the grounds of an opposition may differ depending on the jurisdiction but where an opposition is based on earlier rights, the Opponent is usually the owner of those earlier rights. If the earlier right is over a certain age (usually 5 years) then proof of use of the earlier right would typically need to be shown in the proceedings, according to local law. The Opponent can do this by way of trade mark registration certificates if relying on earlier registered rights or by proof of substantial use if relying on unregistered rights.

Where an opposition is based on grounds other than earlier rights, the Opponent may be any interested party and prove its case accordingly.

The owner of the challenged application in an opposition remains the “Applicant” whereas the party commencing cancellation action against a trade mark registration is the “Applicant for Revocation/Invalidation” and the owner of the challenged mark remains the “Proprietor”.

See Trade Mark Opposition

The Paris Convention for the Protection of Industrial Property was signed in 1883 and has been revised on a number of occasions over the years. It is an international agreement that applies to patents, trade marks, designs and other intellectual property rights.

The most important provisions of the Paris Convention are:-

• Reciprocity – With regard to intellectual property rights, each contracting state will extend the same protection to nationals (i.e. persons and legal entities) of other contracting states as it grants to its own nationals.‌

• Priority – When an application for a patent, trade mark or design is filed in one contracting state, the applicant is given a period of time (12 months for patents; 6 months for trade marks and designs) within which to file corresponding applications in other contracting states that claim priority from the initial application. This means that the subsequent applications benefit from the filing date of the initial application.

Passing off is a common law tort practiced in the UK and in other countries such as Australia and New Zealand.

It enables one party to enforce their rights against another under circumstances where those rights are not officially registered, but rather have been subject to use for a period of time. The trader on the receiving end of a passing off action would be accused of misrepresenting the products or services of its accuser, thereby giving the impression to the consumer that those products or services were its own. The law therefore protects the goodwill of a trader from having its products or services misrepresented on the market, leading to detriment to its business.

There is a very strong body of UK case law on the subject of passing off. Over time, this has produced the “Classic Trinity” test which was set out in the case Reckitt & Colman Products Ltd v Borden Inc [1990] by Lord Oliver. In general, for a passing off case to succeed, the following three criteria must be met:

1. The plaintiff must show that he has an established goodwill in the business name or right upon which he relies; and
2. He must further show that the actions of the defendant have caused there to be a misrepresentation, such that there is (or could be) genuine consumer deception as to which trader is providing the product or service in question; and
3. As a consequence of 1 and 2, there must be actual damage to the plaintiff’s business or a reasonable likelihood of damage, if no damage had occurred to that point. Invariably, such damage would amount to loss of trade and sales for the plaintiff, but could also mean damage to its business reputation

The burden is entirely on the plaintiff to show that all three points above are satisfied in order to succeed with a passing off case in court. Since evidence and argument of fact would be needed the bringing to court of a passing off action can be a time-consuming and expensive exercise. Therefore, it is generally unwise for any business to rely on their common law rights without giving thought to officially registering their rights through trade mark registration. By registering instead, this has a far greater deterrent factor and removes much of the evidential burden in trade mark infringement proceedings compared to a passing off action. Often, both actions can be brought simultaneously.

Introduced in the United Kingdom in April 2013, the Patent Box is a tax relief system which entitles companies to pay a reduced rate of corporation tax on a proportion of the profits that are generated from patented inventions.

In order to qualify for the Patent Box, a company must be liable for payment of corporation tax in the UK.  They must also either be the sole proprietor of the patent concerned or the holder of an exclusive licence under the patent.  The Patent Box applies to national UK and European patents (i.e. those granted by the EPO) and national patents granted in a number of the European Economic Area (EEA) countries.

The reduced tax rate cannot be claimed before the patent has been granted.  There is also a requirement that the company must have carried out “qualifying developments” in relation to the patent (e.g. significantly contributing to creating or developing the patented invention).

Profits qualifying for the reduced rate of corporation tax include those arising from:-

• The sale of products incorporating one or more inventions covered by the patent
• The sale of spare parts for such products.
• Royalties received for the use of an invention covered by the patent.
• Damages paid by third parties for infringing the patent.
• The sale of the patent.

In the case of a patent relating to a process, income from a licence to use that process would qualify.  If a company uses its own patented process, a notional arm’s length royalty may be calculated.

Patent attorneys and tax accountants are able to advise on the Patent Box.

In the United Kingdom, a patent is infringed by the unauthorised manufacture, use, offer for sale or importation of the invention concerned. The scope of the protection afforded by a patent is determined by the wording of its claims.

Infringement proceedings cannot be commenced until a patent has been granted. In England and Wales, patent infringement actions take place in the Patents Court or the Intellectual Property Enterprise Court (IPEC) – both are within the Chancery Division of the High Court. The IPEC is more appropriate for cases that are less complex and of smaller value (relief is capped at £500,000 and costs are capped at £50,000).

The relief available to the proprietor of a patent that is held to have been infringed includes: a) the granting of an injunction; b) an order for the delivery up or destruction of the infringing products; and either of c) damages or d) an account of profits.

By agreement between the parties, patent infringement disputes may be heard at the UK Intellectual Property Office (UKIPO). However, relief available at the UKIPO is limited to damages and a declaration that the patent is valid and has been infringed.

Under the provisions of the Paris Convention, an applicant for a patent, trade mark or design has a period of time (12 months for patents; 6 months for trade marks and designs) within which to file corresponding applications in other countries which claim priority from the initial application. A claim to priority means that the subsequent application benefits from the filing date of the initial application and, consequently, will not be adversely affected by events (such as the publication of an invention, or the filing of applications by other parties) that occur during the intervening period.

Revocation is another form of cancellation of a registered trade mark. Unlike invalidation, the grounds are limited to acts which occur after registration.

A successful revocation will establish the exact date upon which the proprietor loses its registered rights. The proprietor will technically maintain its earlier infringement rights which may have occurred prior to the actual date of cancellation, so it is an important aspect of revocation to correctly identify the date from which cancellation is being sought as any use of a conflicting mark that pre-dates the revocation may still be deemed an infringement.

• The most common grounds for revocation are:-Five years’ non-use of the mark from registration (or any continuing period of five years non-use thereafter);
• The mark has become a common term in the trade due to the action or inaction of the proprietor (and essentially has ceased to act as an indication of origin); or
• The use of the mark is likely to mislead the public, in particular with regard to the nature, quality, geographic origin of the goods/services (and essentially has ceased to act as an indication of origin).

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

The European Union trade mark (EUTM) system introduced a cost-effective means of obtaining and maintaining trade mark protection throughout the EU. However, to encourage use of the system going forward, particularly where comprehensive EU protection was already in place at a national level, the system includes a mechanism whereby an EUTM can “absorb” the rights of national registrations in EU states and maintain the original national filing dates. The ability to claim “seniority” from these earlier rights enables the proprietor of older national registrations to allow these rights to lapse without concern about the loss of longstanding priority – thus reducing renewal costs.

To qualify, the national registration and the EUTM must be the same mark (with any differences being barely noticeable to the average consumer); the owners of the respective national and EUTM rights must be the same; and the specification of the national registration must not be broader than the EUTM.

The benefits of seniority are mostly cost and management based, particularly with regard to large EU portfolios. There remains, however, some advantages of maintaining the national registrations depending on the extent and nature of your portfolio. These are: possible broader national rights; loss of protection in smaller territories reliant on national rights (ie UK and French extended territories not automatically covered by an EUTM); an automatic defence to infringement provided by some EU states (for example, in the UK) is not provided by an EUTM; the onus on proving use in a significant part of the EU in order to defend a subsequent non-use challenge.

It should be noted that seniority claims for UK registrations are not recommended at this time in the light of the uncertainty regarding national UK rights post Brexit.

Trade dress is an American term that refers to the visual appearance or essential characteristics of a product or its packaging, which in turn indicates the source of the product in question to consumers. Taking for example the well-known Jif “lemon”, this is distinctive by virtue of its trade dress – i.e. the product shape (that of a lemon fruit) and its bright lemon colour.

In the UK we refer to trade dress as the “getup” of a product, which by the same definition conveys how a brand owner presents its product to the market. Features of this presentation include the labelling and packaging of the product, such as colour and combination of colours, graphics and any design elements. Trade dress or getup is the overall visual presentation taking all these features into account.

Using the example of a bottle of COCA-COLA, the trade dress or getup would include the red and white colouring on the label, the white horizontal “swirl” across the label, the shape of the bottle itself perhaps (particularly if it is a small glass bottle) and last – but by no means least – the wording COCA COLA on the bottle. The impact of the combination of these features (i.e. the trade dress) is to leave the consumer in no doubt that they what they are purchasing is the real COCA COLA.

Infringement of a registered trade mark occurs when there is unauthorised use by another party of the identical or similar trade mark  in relation to the identical or similar goods or services for which the registered mark is protected. The infringement of a trade mark is actionable in civil law, but can also be a criminal offence.

In the UK, infringement of a trade mark registration is covered by Section 10 of the UK Trade Marks Act 1994, the following being the key sections:

• Section 10(1) – Unauthorised use of an identical mark in relation to identical goods or services;
• Section 10(2)(a) & (b) – Unauthorised use of an identical or similar mark in relation to identical or similar goods or services;
• Section 10(3) – Unauthorised use of mark that is identical or similar to a registered mark having an established reputation, such that use of the later mark (without due cause) would take unfair advantage or operate to the detriment of the registered trade mark’s distinctive character.

“Use” of the trade mark must be defined as use “in the course of trade”. In other words, an alleged infringer must use the mark in the course of business such that he or she gains an economic benefit in its use and profits from it. There are exceptions to this provision which are dealt with under Section 10(6) of the Act governing fair use of one party’s trade mark by another party. Section 11 of the Act covers defences to infringement. Examples of this include use of a person’s own name as a defence to infringement. Further, under UK law, the use of a registered trade mark cannot infringe an earlier identical or similar trade mark registration. Under those circumstances the owner of the earlier right would need to launch a successful invalidation action against the later registration as matter of course in order to pursue an infringement claim.

Most jurisdictions allow for third parties to object to the registration of a trade mark, either during the application process or immediately after registration, with formal procedures varying depending on the territory.

Once a UK or EU application has been examined on absolute grounds, its acceptance is published for opposition purposes in a trade mark journal, providing a fixed period within which to file an objection to its registration. It is possible to file opposition against only some of the goods  or services claimed in the application.

In the UK, the opposition must be filed by an opponent within two months of the publication date of an application. This period can be extended by a further month on request. The grounds of opposition may be based on any absolute grounds (usually that the mark is non-distinctive/descriptive) and/or relative grounds (earlier identical or confusingly similar registered or unregistered trade mark or other rights such as design right, registered design or copyright).

If relying on earlier registered rights, it is important to consider what rights are most appropriate as any registration that has been registered for more than five years must be accompanied by a declaration stating that the mark has been in use in the UK for the past five years. Such a claim can be challenged by the applicant, adding cost and effort.

The UK IPO provide the option for a “fast track” opposition enabling a swift and low cost resolution of the dispute. To qualify, the grounds must be limited to certain earlier rights (i.e. registered trade mark for identical or similar marks covering identical or similar goods/services only) in order to keep the consideration simple. Proof of use of any older registrations must be filed at the time of the opposition (if over five years old). A quick decision is therefore based solely on similarity of marks and goods/services and would be expected within 3 months.  It is still possible to appeal a fast track opposition decision.

The EU opposition procedure allows for an opposition to be filed within three months of publication and opposition may only be based on relative grounds. Objection on the basis of absolute grounds may only be submitted by way of observation (pre-publication) or by cancellation (post registration).

Again, when relying on registered rights, it is important to consider what rights are most appropriate as the applicant can challenge the validity of any registration over five years old and request proof of its use. In addition, if the opposition is successful, the extent to which the applicant may then convert its application (see conversion) will depend on the extent of prior rights claimed in the opposition.

Both opposition procedures in the UK and the EU incorporate a cooling off period enabling parties to discuss settlement of the dispute, and so deferring the costly stages of the legal process. Furthermore, if there has been no attempt to settle prior to formal proceedings, the level of costs awarded may be affected.

An award of costs is granted to the successful party. However it merely represents a contribution – not a compensation of all the fees incurred by a party. For a fast track opposition, the cost award is capped at £500.

Both systems also allow for decisions to be appealed up to the Court of Justice for the European Union (CJEU).

A trade secret is the name given to a process, design, formula, practice, instrument, pattern, or compilation of information that a company can utilise in order to create or maintain an economic advantage over its competitors and customers. It is kept out of the public knowledge and is non-discoverable, meaning that its secrecy can be maintained indefinitely. Every business must take its own special measures and precautions to ensure that secrecy is kept intact. This is no mean feat given the numbers of employees that would need to be made privy to such information.

There is no formal protection for a trade secret, but its value can be almost priceless as a business asset. Consider for example trade secrets such as the COCA COLA formula and Colonel Sanders’ “secret blend of herbs and spices” for KENTUCKY FRIED CHICKEN (KFC). These secrets underpin these business operations and are perhaps the most valuable part of each business – ahead of even the value of the COCA COLA and KFC trade mark rights.

Transformation allows the owner of a Madrid Protocol International Registration (“IR”) to change the basis of its protection from that of one or more IR designations to non-IR national registrations – in the event there is a successful challenge against the base (or home) IR registration.

An international registration is essentially a “bundle of national rights” brought together to simplify the prosecution process and enable single transactions (assignment/renewal) post registration – which provide significant cost savings for the proprietor. However, an IR is entirely dependent on its “base/home” registration for the first five years of its life. Accordingly, should the base application fail to proceed to registration or if the registration is cancelled within five years of the IR registration (by a process called “central attack”), the entire IR falls. However, rather than lose the protection in all the designated territories, it is possible to “transform” the IR into “independent” national rights – choosing some or all the originally listed designations – whilst maintaining the original filing dates (or subsequent designation dates).

Upon cancellation of the IR, there is three months within which to apply for transformation. In the UK, it merely means filing a fresh application with the original IR filing date being claimed as priority. The process (and costs) for transformation in other territories will vary with some requiring full re-examination and others simply re-registering the mark.

It is possible to divide and partially transform an IR if the base registration has been rejected/cancelled in respect of only some of the goods or services.

See Letter Before Action

The World Intellectual Property Organisation (WIPO) is an agency of the United Nations that is dedicated to the protection of intellectual property. It was established in 1967 and is based in Geneva.

WIPO administers the following international systems:-

• The Patent Cooperation Treaty (PCT)
• The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (see Madrid Protocol)
• The Hague Agreement Concerning the International Registration of Industrial Designs

The first US patent was granted in 1790 and by 1836 nearly 10,000 patents had been issued in the USA. Unfortunately, all of those patents were destroyed in December 1836 by a fire at the premises in Washington where they were being stored. While most of them were lost for good, it was possible to reconstruct about 2800 of the patents from records held by their inventors.

The reconstituted patents were given a number that either started or finished with the letter X. They are therefore referred to as “X Patents”. This distinguishes them from subsequently granted US patents.

Zombie copyright is a term that appears in US copyright law and specifically in accordance with Section 104A of the US Copyright Act. It refers to copyright in a work that is restored or otherwise resurrected at a time when the original copyright had expired and the work placed in the public domain. This right for a copyright holder is allowed only under special circumstances and is peculiar to US copyright law.