Patent rights are monopoly rights. Once you've got them they are infringed by anyone who produces an article, or utilises a process, which falls within the scope of the monopoly right granted by the patent regardless of whether or not they knew of your product or process at the time.
Immaterial variations, or the insertion or omission of some inessential element will not be sufficient to avoid infringement. The wording of the claims in the patent is crucial. It is this wording which sets out the monopoly claimed, and which, therefore, forms the basis for assessing whether others have infringed.
It is vital to remember that patent rights are territorial. If an infringing article is manufactured or marketed in a territory where you have no patent registration, then there can be no infringement in that territory and you will have to look to other means of redress.
Registered Designs
By registering a design the proprietor can protect the shape and configuration or the decorative features of a design provided they are original.
Generally speaking registration gives the proprietor the exclusive right to manufacture and market any article in respect of which the design is registered, and this extends to any other use of a design which is not substantially different from that which is registered. Whether another design is substantially different or not is a question determined by the eye alone.
Copyright
Copyright arises upon the creation of an original literary, musical or artistic work, or a sound recording. These categories can be extremely broad. Thus a book would qualify as a literary work, but so too would a computer programme and the text showing the ingredients on a packet of crisps. Similarly a painting will qualify as an artistic work, but so would the pack design of a bar of chocolate.
For a copyright work to be infringed there must be copying of the work, or a substantial part of it.
Thus, if by coincidence a particular work is imitated, or in other words the imitator did not have the original in front of him or in his mind when he produced his version, there is no infringement.
Of course, there are only so many similarities which a court is likely to put down to coincidence. Legal history is littered with classic cases where the defendant has alleged that he produced his work totally independently - i.e. without "copying" - only to be caught out by having made the same typographical mistake as the Plaintiff. Copying does not have to be slavish, but does have to be of a substantial part of any given work.
Trade Marks
A trade mark registration gives its proprietor the exclusive right to use the mark, or any confusingly similar mark.
This right covers unauthorised use by a third party in respect of not only the same goods or services covered by the registration, but also similar goods or services where there exists a likelihood of confusion.
It can even extend to use in respect of non-similar goods or services where the proprietor's mark has a reputation in the country, and the defendant's use of the same or a similar mark takes unfair advantage of the repute of the mark or is detrimental to its distinctive character.
Except in the rare case that a mark is so famous that others are likely to want to use it in respect of totally different goods (marks like Coca-Cola will fall into this category) then IP owners will normally be faced with competitors using identical or similar marks in respect of the same goods to try to gain a commercial advantage. It is vital to remember similar marks can infringe just as much as identical ones.
All too often around the world unscrupulous traders think that by making a variation to a mark, and thus moving away from the identical, they have avoided infringement. This simply isn't so.
Similarity, provided it is sufficient to give rise to a likelihood of confusion, will give rise to infringement. And when assessing the likelihood of confusion most courts will take account of consumers' imperfect recollection of what they may have seen or heard before, such that they are more easily confused than you might otherwise think.
As for patents and registered designs, trade marks are territorial and need to be registered in any given country to give rise to infringement rights in that territory.
Unfair Competition/Passing Off
For unfair competition, no registration is required. For a cause of action to be available here a Plaintiff will generally have to establish that the Defendant has so marketed a product as to mislead the public into thinking that it is somehow authorised by or connected with the Plaintiff's.
The parameters of this cause of action are virtually limitless. The public could be misled by a brand name, a pack's appearance, a product's appearance, an advertising jingle, and so on.
The basic underlying criteria is that, generally, the IP owner will need a significant enough reputation in the country concerned that whatever it is the defendant is doing will cause confusion amongst consumers.
If the consumers have never come across your product they are not going to be confused.
(c) Rouse & Co. International
The content of this article is to provide only a general information on the subject. Legal advice should be sought for any specific circumstances.
For further information please contact Peter Rouse at Rouse & Co at
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