Patents, trade marks, copyright and designs in UK (England and Wales): overview
A guide to intellectual property law in the UK (England and Wales).
The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.
To compare answers across multiple jurisdictions, visit the Patents, trade marks, copyright and designs: Country Q&A tool.
This Q&A is part of the global guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-guide.
The following categories are excluded from patent protection:
Scientific or mathematical discoveries, theories or methods.
Literary, dramatic, musical or artistic works.
Ways of conducting certain acts, like playing a game or doing business.
The design or presentation of information.
Inventions contrary to public policy or morality.
Plant and animal varieties.
Methods for medical treatment or diagnosis.
The UK Intellectual Property Office (UK-IPO) is the government authority that registers UK patents. The UK-IPO's website provides guidance on the patent application procedure at: www.gov.uk/government/organisations/intellectual-property-office.
Patent protection starts on publication of grant of the patent, but damages for infringement may be recoverable for infringements that happened from publication of the patent application.
Protection lasts for 20 years from the filing date. That period can be extended by up to five years for medicinal, plant protection and veterinary products.
Where the patent is a product, the patent can be infringed if a person:
Makes the product.
Disposes, or offers to dispose, of the product.
Uses the product.
Imports the product.
Keeps the product (for disposal or otherwise).
Where the patent is a process, the patent can be infringed if a person:
Uses the process.
Offers the process for use in the UK, where that person knew, or it was obvious to a reasonable person in the circumstances, that the use of the process in the UK without the proprietor's consent would infringe the patent.
A person may also infringe a patent indirectly when all of the following apply:
Supplying, or offering to supply, a person in the UK with any means relating to an essential element of the invention for putting the invention into effect.
Either knowingly, or where it is obvious to a reasonable person, that the means are suitable for putting, and are intended to put, the invention into effect.
The person being supplied, or receiving the offer of supply, is not a licensee of the patent or other person permitted to work with the patent.
Typically defendants argue that the patent is invalid and/or that the patent is not infringed. Other defences include acts:
That constitute continuation use or effective preparations to use which began before the priority date of the patent.
That are private and done for non-commercial purposes.
That are for experimental purposes.
That consist of extemporaneous preparation in a pharmacy of a medicine for a person following a prescription of a medical or dental practitioner, or acts consisting of dealing such medicine.
There is no fast track or small claims procedure for patent infringement claims in the High Court (Patents Court) or Intellectual Property Enterprise Court (IPEC). All such claims are allocated to the multi-track.
The procedure in IPEC is generally quicker than the High Court (Patents Court).
IPEC does have a small claims procedure, but it does not apply to claims relating to patents, registered designs or plant varieties.
To be registrable a trade mark must:
Be capable of graphical representation.
Not be devoid of distinctive character or descriptive of the goods or services for which protection is sought (unless it has acquired distinctiveness through use).
Not have become customary in the trade or generic.
Not be morally objectionable.
Not fall within a number of specifically excluded trade marks (for example, the Royal arms).
Not conflict with earlier rights owned by third parties. The UK-IPO and the EUIPO will not examine applications on relative grounds, but applications can be opposed by third parties.
There is no legal requirement to register a trade mark, but it is generally advisable to do so because the trade mark owner obtains a monopoly, that is the exclusive right to use the mark for the goods/services registered. Other advantages to registration are that:
Trade marks are easier and more cost effective to enforce than relying on unregistered rights.
Registrations can deter would-be infringers.
Recovering goods at customs is generally made easier by registered trade marks.
Registered trade marks are commercially exploitable assets.
Unregistered protection in the UK is available under the law of passing off. Passing off requires evidence from the claimant establishing:
That the unregistered trade mark has acquired goodwill.
That the defendant's activities constitute a misrepresentation that has or is likely to deceive consumers.
That the claimant suffers or is likely to suffer damage as a result of the misrepresentation.
UK registered trade marks
The UK Intellectual Property Office (UK-IPO) website provides guidance on the trade mark application procedure at: www.gov.uk/government/organisations/intellectual-property-office.
EU trade marks
There is a single application which covers 28 member states of the European Union and any additional member states that subsequently join the EU. The authority responsible for registering EU trade marks is the EU Intellectual Property Office (EUIPO) based in Alicante, Spain. Its website (https://oami.europa.eu/ohimportal/en/) provides guidance on the trade mark application procedure.
International trade marks
Finally, protection in the UK can be obtained by filing an International Registration (IR) designating the UK and/or the EU can be filed before the World Intellectual Property Organization (WIPO). WIPO's website is accessible at: www.wipo.int.
Known as the "absolute grounds", the UK-IPO and EUIPO can refuse registration of a trade mark during the Examination Stage of the trade mark application if the mark:
Is not capable of graphical representation.
Is devoid of distinctive character or descriptive of the goods or services for which protection is sought (unless the applicant can show that the mark has acquired distinctiveness through its use).
Trade mark applications can be refused by the UK-IPO and EUIPO if the mark is:
Falls within a number of specifically excluded trade marks (for example, the Royal arms).
Prohibited for use in the UK or EU.
Applied for in bad faith (applied to UK marks only).
Third parties can apply to oppose the registration of a trade mark during the publication period based on the "relative grounds" where:
The mark applied for is identical to the earlier mark and has been applied for identical goods or services as that earlier mark.
The mark applied for is identical or similar to the earlier mark and has been filed for identical or similar goods or services as the earlier mark, and there is a likelihood of confusion on the part of the public, which includes a likelihood of association.
The earlier mark (which is similar or identical to the mark applied for) has a reputation in the applicable jurisdiction, where the use of the mark applied for being without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Use of the mark applied for can be prevented by virtue of any rule of law (in the UK, the law of passing off in particular) or because of an earlier right (copyright, design right or registered design).
A registered trade mark can be declared invalid if it was filed contrary to the absolute and/or relative grounds. This includes applications filed in bad faith (applicable to UK and EU trade marks).
A registered trade mark may be revoked where:
It has not been put to genuine use within five years of registration, or for any subsequent continuous five-year period, and there are no proper reasons for non-use.
As a consequence of the actions or omissions of the trade mark owner, the trade mark has become the common name in the trade for a product or service for which it is registered.
As a consequence of the proprietor or its licensees the trade mark is liable to mislead the public.
Trade marks last for ten years from the filing date, and can be renewed for further ten-year periods.
Provided the renewals are made, the trade mark can last indefinitely if it is not successfully cancelled (see Question 15, Cancellation actions).
Where a person without the consent of the trade mark owner, uses in the course of trade:
A sign that is identical to an earlier registered trade mark in relation to identical goods or services.
A sign that is identical or similar to an earlier registered trade mark in relation to identical or similar goods or services, such that there is a likelihood of confusion, which includes a likelihood of association.
A sign that is identical or similar to an earlier registered trade mark, where that earlier mark has a reputation in the relevant territory, such that use of the mark being without due course takes unfair advantage of, or is detrimental to, the distinctive character or repute of the earlier registered trade mark.
In all cases use of the mark must affect the functions of the earlier trade mark, such as its ability to operate as an indicator of origin.
Typically defendants will seek to argue that the trade mark is invalid. Other defences include:
Defendant is using own UK registered trade mark. This is a defence to infringement of a UK trade mark and does not apply as a defence to infringement of an EUTM. Typically claimants will apply to cancel UK trade marks in anticipation of this defence.
Defendant is using its own name. Recent changes in the law mean that this defence is only available to real people using their own given names not to company names.
Defendant is using a sign indicating the kind, quality, quantity, intended purpose, value, geographic origin, the time of production of goods or of rendering services, provided such use is in accordance with honest practices in industrial or commercial matters.
Defendant's use is a permitted comparative advertisement.
Defendant is using a right in a particular locality that is protected by particularly passing off.
Trade mark exhaustion (that is, the goods sold by the defendant bearing the infringing sign had been put on the market by the trade mark proprietor or with his consent).
Copyright protection in work starts once it is recorded and lasts:
70 years from the end of the calendar year in which the author (or last of the specified persons in the case of films) dies (applicable to literary, dramatic, musical, artistic works, films and sound recordings).
50 years from the end of the calendar year in which the work is made (applicable to computer-generated literary, dramatic, musical, artistic works and broadcasts).
25 years from the end of the calendar year in which the edition was first published (applicable to typographical arrangements of published editions).
Two registered design rights are enforceable in the UK:
A UK registered design (applying to the UK only).
A Community registered design (applying to the EU).
The design must:
Have individual character.
Not be excluded. Examples include that the design must not be:
solely dictated by technical function;
contrary to public policy or morality.
UK registered designs
The UK Intellectual Property Office (UK-IPO) registers designs, whose website provides guidance on the design application procedure at: www.gov.uk/government/organisations/intellectual-property-office.
EU Community designs
There is a single application which covers 28 member states of the European Union and any additional member states that subsequently join the EU. The authority responsible for registering Community designs is the EUIPO based in Alicante, Spain. Its website (https://oami.europa.eu/ohimportal/en/) provides guidance on the design application procedure.
Finally, protection in the UK can be obtained by filing an International Registration (IR) designating the EU (which includes the UK) before the World Intellectual Property Organization (WIPO). WIPO's website is accessible at: www.wipo.int.
No procedure exists before EUIPO or the UK-IPO in which third parties may oppose the registration of designs.
Design registrations may be invalidated (post registration) for ground including:
Design does not comply with statutory requirements, such as the definition of a design, or it is dictated solely by technical function.
Design lacks novelty and/or individual character (for example, there is a prior design).
Design includes an earlier trade mark, passes off, or includes a work protected by copyright.
Design is contrary to public policy or morality.
The scope of protection of a registered design right includes any design which does not produce on the informed user a different overall impression.
The right granted by a registered design is an exclusive right to use and prevent other from using the design. Use in this context means making, offering, putting on the market, importing, exporting, or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.
Other than arguing that the design is invalid, defences include:
Acts done privately not for commercial purposes.
Acts done for experimental purposes.
Use of equipment on ships or aircraft which are registered in another country but which are temporarily in the UK.
Importing spare parts or accessories in the UK for the purposes or repairing such ships or aircraft.
Repairing such ships or aircraft.
Reproducing for teaching purposes or for the purposes of making citations provided the act of reproduction is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the designs and mention is made of the source.
There are two types of unregistered designs applicable in the UK:
UK unregistered designs (applying to the UK).
Community unregistered designs (applying to the EU).
UK unregistered design rights arise automatically in designs that are:
The shape or configuration (whether internal or external) of the whole or the part of an article.
Recorded in a design document or an article made to the design.
Designed by a designer who complies with the qualification/nationality criteria.
Not a method or principle of construction.
Not a feature of a shape or configuration of an article which enables the article to be connected to, or placed in, around or against, another article so that either article may perform its function.
Not a feature of a shape or configuration of an article which is dependent on the appearance of another article of which the article is intended by the design to form an integral part.
Not surface decoration.
Community unregistered designs arise automatically when first disclosed in the territory of the EU. Community unregistered designs must meet the same conditions as Community registered designs (see Question 30).
UK unregistered design protection starts from when it is recorded in a design document or an article is made, and ends on the lesser of:
15 years from the end of the calendar year in which the design was recorded in a design document or an article first made to the design (whichever is first).
If articles to the design are first made available for sale or hire within five years from the end of that calendar year, ten years from the end of the calendar year in which that first occurred.
Community unregistered design rights last for three years from the date of first disclosure in the territory of the EU.
UK unregistered design right
On the grounds of primary and/or secondary infringement:
Primary infringement: reproducing articles exactly or substantially to the design, or making a design document for the purposes of enabling such articles to be made.
Secondary infringement: without the design owner's consent, importing articles which are, or are believed to be, infringing.
EU unregistered design
The grounds are the same as those for Community Registered designs (except copying must be proved). Copying must be proved for UK and Community unregistered design infringement.
A finding of non-infringement of a UK unregistered design will arise if the earlier right does not comply with the requirements of design protection. A partially mitigating defence is available for a finding of secondary infringement of a UK unregistered design if the defendant did not know or had no reason to believe that a UK unregistered design existed in the product (here damages will not exceed a reasonable royalty).
The defences to Community registered design infringement apply to Community unregistered design infringement.
There is no small claims track for confidentiality matters, although the Intellectual Property Enterprise Court's procedure is generally quicker than most other courts (but see Question 46).
Simon Sellars, Senior Associate
Professional qualifications. Registered UK Trade Mark Attorney; Solicitor (England and Wales).
Areas of practice. Intellectual property.