Patents and Trademark Law - Coursework Example

Introduction The Soil brothers are at liberty to apply for and register the unique characteristics of their Tompot product under trademark legislative provisions. The Soil brothers may also obtain by way of an application and registration a patent for their innovative Tompot product. Once they obtain trademark and patent protection via registration they can control and restrict the use of Tompot’s unique characteristics and its name and style. In order to obtain patent and trademark protection via registration certain requirements have to be met. The inherent necessity for providing some sort of protection in respect of innovative products and designs is offset by serving the public’s interests in controlling and restricting protection of the various types of patentable property. The concept of intellectual property rights have consistently been defined and regulated so as to ascertain that the protection granted does not function to impede the rights of others.1 As Dr. Llewelyn suggests that this is why: “…there has been considerable strictness exerted in defining the requirements which have to be met before a right will be granted.”2 The discussion that follows examines those requirements and explains why and how the Soil brothers meet those requirements and can obtain protection thereby preventing the marketing of bags that appear to be mere imitations of the Soil brothers’ products. Trademark Protection A trademark is a distinguishing feature of any business entity that sets it apart from another business entity.3 Distinguishing features can consist of a name, a logo, a slogan, a design, colours and numbers either individually or a combination of any of these characters.4 The Soils appear to use the word Tompot superimposed on a bag. Together these features function to identify the Soil’s unique product which consists of a polythene growing bag with a distinctive shaped opening. Obviously there are competitors with similar products and the Soils have a common law right to use marketing and packaging designs with a view to distinguishing them from their competitors. At the same time, the Soils have a common law right to prevent passing off of their business identification traits. The Toms and Salisbury’s plans to market similar products with strikingly similar styles amount to the common law tort of passing off. The Soils can initiate legal proceedings with a view to prevent the intended passing off. In Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873 the House of Lords confirmed that a three tier test of good will and reputation and misrepresentation and damages were necessary elements of the plaintiffs case in a claim against passing off. Lord Oliver said of the plaintiff: “First, he must establish a goodwill or reputation attached to the goods or services…Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether intentional) leading or likely to lead the public to believe that the goods or services offered by him are goods or services or services of the plaintiff….Thirdly, he must demonstrate that he suffers loss of damage as a consequence of the erroneous belief that the goods or services of the defendant are the goods or services of the plaintiff.”5 On the facts stated, the Soils have had great success with their Tompot product since the Spring of 2006 and by the end of the year most amateur gardeners were familiar with their particular bag product. Therefore they will have no difficulty proving that they have the requisite goodwill or reputation in relation to their particular product. As to the second leg of the “classic trinity test”6 the Soils can successfully claim that the remarkably similar packaging and marketing of similar products by Salisbury’s and the Toms will likely lead to a misrepresentation that goods offered by Salisbutry’s and the Toms are the products offered by the Soils. The issue is always whether or not the latter product is marketed and packaged in such a way as to create some confusion as to association.7 The Soils are not required to prove that they have suffered actual damage, only the likelihood that the common law tort of passing off is likely to cause damages. As Clayton Utz explains: “Above all, the law requires deception and damage, or a likelihood of deception and damage, before a remedy will be granted. In other words, it must be possible to prove that the typical customer of those goods or services would recognise the mark or get-up and identify it with the plaintiff and no-one else, AND that this will result in lost revenue.”8 The fact that Sailsbury’s plans to offer its version of the Soils’ product at a 20 percent discount is strong evidence that the Soils are likely to incur a loss in revenue as a result of the passing off. It is important to note that there are appropriate cases in which the words or brand names used can sometimes bar a propriety right. For instance if the trade/brand name is merely descriptive of the product it cannot be said to have any special meaning to the user of that name. As an example, the word cola is not unique to Coke but simply describes a particular type of carbonated beverage. Once it can be reasonably assumed that the word used has a “secondary signification”9 to the product offered it is not merely descriptive and can be claimed as a trade name under the common law tort of passing off. In Frank Reddaway Ltd. v. George Banham, [1896] A.C. 199, Frank Reddaway manufactured and sold machine belting which he sold under the name and style of Camel Hair Belting for many years. At some stage a former employee began marketing and selling the same product using the same name. Reddaway took the matter to court and the Court of Appeal found that the words used were merely descriptive and Reddaway could not claim any special interest in them. However the House of Lords did not agree, finding that on the facts Reddaway had developed a reputation whereby members of the public identified Camel Hair Belting with his particular product. Lord Hershel said as follows: “I cannot help saying that, if the defendants are entitled to lead purchasers to believe that they are getting the plaintiffs manufacture when they are not, and thus to cheat the plaintiffs of some of their legitimate trade, I should regret to find that the law was powerless to enforce the most elementary principles of commercial morality.”10 The facts of the case for discussion strongly indicate that the word Tompot itself has significance for the Soils. The facts state: “By the end of the year most amateur gardeners in the UK have heard of the TOMPOT and it is clear there will be a great demand for 2007.” The word Tompot is unique and particular to the Soils and their product a result of their own goodwill and reputation and it would be an affront to the commercial conscience to permit the Toms and Sailsbury’s to ride on the Soil’s reputation based upon a claim that the trade name is merely descriptive. In short, in order to substantiate a claim in passing off under the law of tort, the Soils will have to demonstrate that their Tompot product is a product and name together with its design that customer’s immediately recognse and identify with the Soils. Moreover, the duplication of these products under similar names and styles will result in a loss of revenue. It is important to note that the courts are not always consistent in holding what conduct amounts to a case of passing off. For example in the case of Cadbury-Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 864 Cadbury-Schweppes marketed a “solo-lemon” beverage in a distinctive yellow can with a particular campaign. The product was successful and sometime later Pub Squash launched a strikingly similar product, “pub squash” with virtually the same colors and campaign. The court held however that it was not convinced that consumers would confuse the two products.11 Although it is possible to distinguish the facts of the Soils’ case from the Cadbury-Schweppes Pty Ltd case in that the names used were vastly different in the latter scenario, it is not a virtual certainty that the courts will appreciate this distinction. In light of the cost of litigation and the slight chance of failing in a claim for passing off it is perhaps best for the Soils to seek better trademark protection via registration under trademark legislation. The advantage of trademark registration was aptly accounted for by Clayton Utz as follows: “The primary distinction between the common law protection of trade marks and the law under the Trade Marks Act is that, if a trade mark, a name or logo, has been registered, then the registered proprietor is relieved of what is often the heaviest burden in any passing off action, that is, proving the existence of goodwill and reputation associated with the mark. All that need be proved is that the defendant is using that trade mark, or a mark deceptively similar, in relation to the same goods or services in respect of which the mark is registered.”12 The Trade Marks Act 1994 provides broader protection in respect of registered trade marks than the protection accounted for in the common law tort of passing off. Section 10(1) of the 1994 Act provides as follows: "...a person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered..."13 In addition to this protection under Section 10(1) of the Trade Marks Act 1994, the owner of a registered Trade Mark can successfully claim infringement of his trade mark if and when a competitor launches a similar product using similar colours, names and designs.14 In fact, even if the product offered is not entirely similar to the product covered by the trade mark registration a claim will be successful if similar colours, names and designs are used.15 It is therefore in the Soils’ best interest to register their trade name and brand under the Trade Marks Act 1994. It will provide tighter protection and certainty in any action for injunctive relief. The Trade Marks Act 1995 was enacted to give effect to Council Directive No. 89/104/EEC which is designed to harmonize the trade marks law of all Member States.16 The Directive laid out a minimum requirement for the registration and enforcement of trade marks within the European Community.17 The Soil brothers may apply for registration of their Trade name and signature bag at the UK Intellectual Property Office.18 By virtue of Section 3(1)(b) of the Trade Marks Act 1995 the sign which the applicant wishes to register must have distinct characteristics and/or identifiers.19 In the case of Associated Newspapers Ltd v Express Newspapers [2003] EWHC 1322 it was held that the requirement that a sign have a distinct identifier did not require that the sign have a unique identifier.20 The court held that in determining whether or not there was a trademark infringement one had only to look at the closeness of the products, the impressions likely to arise out of the signs and marks used, whether they will be available to similar users, whether there are similarities in size and design and whether or not they will likely be distributed among similar consumers.21 There is no doubt that the products proposed for distribution by the Toms and Saislbury’s are similar in size and design to the Soil brothers’ products and are very close, if not identical in substance and will be distributed among like users. There is a very real possibility for confusion and on this basis, after obtaining registration the Soils will have a very good case for infringement if the Toms and Sailsbury proceed with their marketing plans. By virtue of Section 9 of the Trade Marks Act 1994 the Soils will be protected against infringement at the date of registration.22 Moreover, Section 40(3) the date of registration is taken to mean the date that registration is filed.23 The date of registration is the actual date of filing the application for registration.24 Therefore, once the Soils have applied for registration of their bag’s design and trade name they will be protected from the date of that application. Patents Patent protection is calculated to prevent others, particularly those in competition, from product exploitation. Essentially, patent protection restricts and controls the manner in which others can copy, manufacture, sell and otherwise use a patent without permission from the patent’s registered owner. In the event others use a registered paten without prior approval from the registered owner, the owner can take legal action for damages in respect of such exploitation.25 It is therefore wise that the Soils apply for patent protection to restrict and control the use of their idea and/or invention by the Toms and Sailsbury. The Patents Act 1977 represents the substantive law regarding patent protection within the UK. The 1977 Act also makes provision for the application of UK patent law within the European Patent Convention as well as the Patent Cooperation Treaty. Subsequent statutory provisions such as the Copyright, Designs and Patents Act 1988, the Regulatory Reform (Patents) Order 2004 and the Patents Act 2004 have modified the Patents Act 1977. 26 Section 60 of the Patents Act 1977 defines infringement of a patent in the ordinary course of business. In that case a patent is infringed when a person does “any of the following things”27within the jurisdiction of the UK ‘”in relation to the patent”28without first obtaining the patentee’s permission: “(a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise; (b) where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent; (c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.”29 By virtue of Section 61(1) the Soils, once they have applied for registration of their product as a patent can commence legal proceedings in the civil courts for infringement of his patent pursuant to Section 60 as cited above. The following applications may be made in a civil action: “(a) for an injunction or interdict restraining the defendant or defender from any apprehended act of infringement; (b) for an order for him to deliver up or destroy any patented product in relation to which the patent is infringed or any article in which that product is inextricably comprised; (c) for damages in respect of the infringement; (d) for an account of the profits derived by him from the infringement; (e) for a declaration or declarator that the patent is valid and has been infringed by him.”30 Even if a patent is only partially valid a patentee may obtain partial relief in respect of that part of the patent which is found to be valid.31 Section 77 of the Patents Act 1977 makes identical provisions for patent protection in respect of a European patent as follows:- “(a) the proprietor of a European patent (UK) shall accordingly as respects the United Kingdom have the same rights and remedies, subject to the same conditions, as the proprietor of a patent under this Act…”32 The difficulty with the Soils’ product is that it might not be patentable property since it can be regarded as a natural phenomenon. In the United Kingdom natural phenomena is incapable of patent protection by implication as well. Section 1(2) of the Patents Act 1977 makes the following provisions: “2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of: (a) discovery, scientific theory or mathematical method;  (b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;  (c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;  (d) the presentation of information…”33 Article 52 (2)(c) of the European Patents Convention similarly provides: “(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods;  (b) aesthetic creations;  (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;  (d) presentations of information.”34 European Union’s Directive 98/44/EC specifically makes provision for barring the patenting of certain material which are aligned to nature and are more properly defined as discoveries rather than inventions.35 Article 4 of the Directive specifically provides that the following items will not be capable of patent protection: “ (a) plant and animal varieties; (a) essentially biological processes for the production of plants or animals.”36 It appears that the plant growing product developed and distributed by the Soils is a natural phenomenon in the sense that it is a discovery rather than an invention. The primary requirement for a product to be capable of patent protection is that it is new and innovative. These requirements include producing evidence that the specific patent is an invention seeking protection via registration is new and original, was the product of some inventive steps, has industrial possibilities and “does not fall within any of the categories of excluded material.”37 Dr. Llewelyn explains that Europe has developed a practice of excluding items such as: “…discoveries and material which might be better suited to protection under another form of intellectual protection rights, for example literary works under copyright; and inventions which might be regarded as per so patentable but for reasons of public interest it is felt that it is not appropriate to allow a patent grant.”38 This latter category of patents capable of exclusion might be morally offensive material or “living material.”39 Lord Hoffman did not define the term innovative investment in Biogen Inc v Medeva plc [1997] RPC 1 but he did say that the judiciary: “…would be well advised to put on one side their intuitive sense of what constitutes an invention until they have considered the questions of novelty, inventiveness and so forth…”40 By virtue of the Patent Rules 1995 as amended the composition of human genes as they are currently constituted within the body are not capable of patent protection.41 The spirit and nature of patent laws by and large will only attract patent protection if the material in question is an invention of technical merit. Discovering that a particular constitution of natural products can produce living material such as plants is not technically an invention and therefore is not patentable.42 The Department for Environment Food and Rural Affairs regulate the patent protection of plant and animal varieties. Generally, plant and animal varieties are not capable of patent protection. The UK Patent Office does say that there are instances where: “… inventions concerning genetic manipulation of plant and animal tissue may be patentable and rights can extend to the products of this genetic manipulation.  There exists a stand-alone system of protection for plant varieties which is administered by the Plant Varieties Office in the Department for Environment Food and Rural Affairs.”43 The recent case Macrossan’s Application [2006] EWCA Civ 1371 represents the approach the courts will take in considering whether or not a product is abstract, or a natural phenomena or otherwise not capable of patent protection. In this case the court ruled that the general formulation requires that the following course be taken when attempting to determine whether a product is patentable within the meaning of the Patents Act 1977: 1) Effectively decipher the claim, 2) Scrutinize its ultimate contribution, 3) Determine whether or not the subject matter belongs entirely within the excluded category, and 4) Determine whether or not the contributions are purely technical.44 Georgios I Zekos explains that the courts in both Europe and the United States have struggled with the process of patent protection in the area of discoveries since: “…these patents are really drawn to principles of nature, which must remain in a domain where they can be used by all people.”45 Keeping these factors in mind it is not certain whether or not the Soils’ plant growing product will be regarded by the courts as a discovery or an invention. It is therefore best to make the application for patent protection with an expectation that it might not be successful Conclusion On the facts of the case discussed and the law in relation to passing off and trademark protection the Soils have very strong grounds for registration and exclusive distribution of their bag’s name and design. While they may not be in a position via patent protection to prevent the distribution of a similar product, they can certainly take steps as previously discussed to prevent the reproduction of that product in the manner and style contemplated by the Toms and Sailsbury. Works Cited Anderson, R. and Gallini, N. T., (1998) Competition Policy and Intellectual Property Rights in the Knowledge-based Economy, Calgary: University of Calgary Press. Associated Newspapers Ltd v Express Newspapers [2003] EWHC 1322 Bainbridge, David . (2007) Intellectual Property. Pearson Longman Biogen Inc v Medeva plc [1997] RPC 1 Cadbury-Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 864 Cornish, W.R.,(2003) Intellectual Property: Patent, Copyright, Trade Marks and Allied Rights , London, Sweet & Maxwell. Council Directive No. 89/104/EEC Drexl, J and Ku.r, A. (2005) Intellectual Property and private international Law: heading for the future, Oxford: Portland, Or: hart Pub. DIRECTIVE 98/44/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 6 July 1998 European Patents Convention Article Frank Reddaway Ltd. v. George Banham, [1896] A.C. 199 Inter Lotto (UK) Ltd. v Camelot Group Plc [2003] EWCA Civ 1132 Llewelyn, Margaret Dr. Proposals for the Introduction of a Community Utility Model System: A UK Perspective. [1995] 2 Web JCLI http://webjcli.ncl.ac.uk/articles2/llewel2.html Viewed July 29, 2007 Macrossan’s Application [2006] EWCA Civ 1371 Patents Act 1977 Patent Rules 1995 Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873 The UK Patent Office. http://www.patent.gov.uk/patent/p-decisionmaking/p-law/p-law-legislation.htm Viewed July 30, 2007 Thorley, S., Miller, R., Burkill,G., Briss, C., Campbell, D. (2006) Terrell on The Law Of Patent.London: Sweet & Maxwell. Trade Marks Act 1994 Utz, Clayton and Knight, Peter. (n.d.) Protecting the Brand: The Law of Passing Off and Registered Trade Marks. Available at: http://216.239.51.104/search?q=cache:oaoPeeAhiEwJ:www.claytonutz.com/redirector.asp%3Fdoc%3D1433+Clayton+Utz.+Protecting+the+Brand,+The+Law+of+Passing+off+and+Registered+Trademarks&hl=en&ct=clnk&cd=1&gl=us Viewed July 30, 2007 Zekos, Georgios I. Patenting Biotechnology. JILT 2004 (1) http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/2004_1/zekos/ Viewed July 30 2007 Read More