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Flashcards in Intellectual Property Deck (74)
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Other kinds of goods and services which can be TM

Kind/type – ‘personal’ for computers
Quality – ‘perfection’, ‘best’
Quantity – 454 for butter (454g packs)
Intended purpose
Value – ‘buy one, get one free’
Geographical origin
Time of production – ‘same day delivery’, ‘winter 2004’


What is said about TM registrations

Section 1(1) does not provide an exhaustive list of signs which can be potentially registered as trade marks. The following categories of trade "signs" can be registered provided that they meet other criteria for registration specified by the Act.


Tell about TM colours

In some cases the unique colours which a business uses to distinguish its goods or services can be registered as a trade mark although will depend on the individual circumstances. The following cases were decided in terms of the Trade Marks Act 1938 but are equally applicable to the Trade Marks Act 1994


What are the relative grounds of refusal?

-Conflict with earlier identical/similar mark for identical/similar goods
-Conflict with mark of repute
-Conflict with earlier rights
---Confusing similarity
---Can be overcome by obtaining permission of holder of the earlier mark
---UK IP office conducts search of national, Community, international trade marks


Tell about confusing similarity related to TM

-Recognition of earlier trademark on the market
-Association that can be made between registered mark and the sign
-Degree of similarity between mark/sign and product/service...likelihood of confusions
1) Consumer perception - visual, phonetic, conceptual similarity (the more the distinctive the earlier mark, the more likely it is to establish confusion)
2) Goods/services - distinct re their nature, end users, cost, normal method of purchase/use


Tell about conflict with mark of repute

Mark is identical or similar re dissimilar goods - earlier mark of repute, later sign takes unfair advantage/detrimental to TM's distinctiveness or reputation, no confusion required


Tell about Infringement

Once registered, TM protected for 10y, renewable every 10years. Holder may take action if TM or similar mark used on packaging, stocking/offering (inferior) goods for sale under the TM, importing/exporting, using TM on business papers or advertising.


When it TM revoked

If not in genuine use for 5 years without proper reason/use of TM liable to mislead public


Tell about McDonalds and McCurry

McDonald's argued that the use of the "Mc" prefix infringed its trademark.
But the Federal Court in Kuala Lumpur ruled that there was no evidence to show McCurry was trying to pass itself off as part of the McDonald's empire.
The owner of McCurry insists its "Mc" prefix is an abbreviation for Malaysian Chicken Curry.
Ruled the application for this was dismissed after a long line of legal battle.


Tell about patents

Patents act 1977 rules
-Invention/innovation must be new and not known anywhere in the world
-Invention must have an inventive step not obvious or a simple adaptation
-Inventions must be industrially applicable
-The unwritten rule: it must be commercially viable - most importantly, must be a market.


What are the benefits of patents? 6

1) An agreement between the state and inventor fixed period of time 20y exclusive rights to this innovation
2) Solution to technical problems
3)State gets access to the technology - stops others from re-inventing the wheel
4) International registration available but comes at a cost so consider wisely
5) IP Office UK (Gwent) ; European Patent Office (Munich)
6) People want to be rewarded for the innovation


How to avoid other stealing your ideas

-Don't male details of your innovation known before filing
-If you want to work with others use Non-Disclosure or Confidentiality agreement
-Do work by yourself (free information opportunity to search for existing patents and to familiarise yourself with structure of a specification)
-You can DIY but a patent agent provides a value added service
-Employees whose invention (made during course of employment) makes significant contribution to their employers can get compensation - a rare feat


Patent case Kelly and Chiu v GE Healthcare Ltd

Compensation was ordered to continue. Kelly's invention was worth 50million to Amersham International (taken over by GE), the judge held Kelly was entitled to £1million and Chiu (assistive contribution) to 500,000million as adding value with their innovation to the employers profitability.


Tell about The Patents Act 1977 section 39-42

provide a self-contained employee invention compensation code which, till recently proved more or less impossible for inventors to operate to their advantage, largely on account of the difficulty of showing that the patent resulting from their efforts conferred an outstanding benefit upon their employer. Now it is easier, in that it is only the invention, not the patent, that must confer the benefit.


Tell about Case of Phil Robinson

Invented a bike bump which is attached to the bike saddle. He was an innovator by hobby, design student who took the technology and refined it further, worked with DAHON (largest manufacturer of folding bicycles) but used confidentiality agreements, retained the ownership of the resultant IP. He did commercial work on it, and field test, brand development was Zorin


Tell about registered Design 4

-Protects the external appearance of a product
-12 months window to test the market before you file
-Lasts for 25years and costs £60 for the first five years
-Registration available across the UK


What can be a registered design?



What does ACID stand for? and what is an example case for this

Anti Copying In Design

Robert Welch Designs Ltd and Argos case, resulted in large payments over roaylties and legal costs


Tell about copyrights

Copy right is the automatic right - not registered - provides people who produce creative work to take ownership over what they have created. C in the circle.


How long does a copy right last?

70 years after the authors death
-Copyright material can earn revenue long after the original author has passed away


What about copyright as a property right?

As a property rights to works it can be passed on as part of an estate, sold, licensed or given away


To who is the copyright for?

everyone, automatic if you can prove its your work. For authors, musicians, artists, photographers… Musicians rely on rights as a means of earning royalties from their creation


What are the key points of copyright

Its up to the artist to claim that they have been copied, retain original to prove ownership.



Tell about authorship

Author - first owner of the work, but the right or licence might be sold in order to exploit it: Publisher.. Recording company.
Author remains moral rights and gets royalties


Tell about ownership

Owner - holds all economic rights to control commercial exploitation of the work (and takes legal action against copyright pirates/illegal file sharers). Joint authorship can be very problematic.


Tell about revenue flow regarding a copyright

Copyright lasts up to 70y after authors death, there is an opportunity to earn a lot of revenue


Tell about Tolkien's revenue

Tolkien’s work which was sold for £10,000 has scooped millions and will continue to do so until 2046


Tell about Elvis Presley's revenue

Elvis Presley’s estate top dead earner £25.2 million per annum


Tell about John Lennon's estate

Earns £12.4 million


What are the trends/developments affecting IP

Pace of innovation/technological change
-Increasing value of IP (scope of protection & commercial exploitation)
-Technology to harm IP (mp3 technology, internet)
Changes in business structure
-Outsourcing, sub-contracting
-Reliance on brands &logos as basis of market identity
-Franchising & merchandising