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 and designs Country Q&A tool.
This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.
To be patentable an invention must:
Be novel (not anticipated).
Involve an inventive step (non-obvious).
Be capable of industrial application.
Be sufficiently described in the patent.
Not be within the scope of a statutory exclusion (see Question 2).
The statutory exclusions from patentability include:
A discovery, scientific theory or mathematical model.
A literary, dramatic, musical or artistic work or other aesthetic creation.
A scheme, rule or method for performing a mental act, playing a game or doing business or a program for a computer (the patentability of computer programs and business methods has come under close judicial scrutiny and particular attention should be paid to the case law in this area).
The presentation of information.
Inventions contrary to public policy or morality.
Methods of treatment of the human or animal body by surgery or therapy and methods of diagnosis practised on the human or animal body (but not the composition for use in such methods, which may be patentable).
The human body or the simple discovery of one of its elements (although an isolated gene sequence that is susceptible to industrial application may be patentable).
Processes for cloning human beings or modifying the germ line genetic identity of human beings.
Uses of human embryos for industrial or commercial purposes (following recent European case law this exclusion extends to inventions for human embryonic stem cell technologies that require the prior destruction of a human embryo, whatever the stage at which that takes place).
Plant and animal varieties and essentially biological processes for the production of plants or animals (except microbiologicals).
The Intellectual Property Office (UK-IPO) registers patents. Detailed guidance (and forms) are available online (www.ipo.gov.uk) (see box, The regulatory authorities).
UK patent applications may not be opposed by third parties (although observations may be filed with the UK-IPO). In contrast, for a period of nine months following publication of grant of a European patent, the validity of that patent (which may designate the UK) may be challenged in opposition proceedings at the European Patent Office. The grounds on which an opposition may be based are:
The subject matter of the patent is not patentable (that is, the patent lacks novelty, inventive step, industrial application or the invention falls within one of the exceptions to patentability).
The invention is not disclosed clearly and completely enough for a person skilled in the art to carry it out.
The subject matter extends beyond the content of the application as filed.
Protection starts on notice of the patent's grant being published (although damages may also be recoverable in respect of infringement during the period from publication of the application).
Protection runs for 20 years from the date of filing the application. The duration of a patent for medicinal products, veterinary products and plant protection products may be extended by up to five years to compensate patentees for the lost period of monopoly caused by the lengthy process to obtain regulatory approval. In respect of medicinal products a further six months may be added for paediatric extensions.
A patent infringement action can be brought in respect of products on the following grounds:
Making.
Disposing of.
Offering to dispose of.
Using.
Importing.
Keeping a patented product.
A patent infringement action can be brought in respect of processes on the following grounds:
Using the patented process.
Offering the patented process for use in the UK with the requisite knowledge that its use would be an infringement.
Disposing of or offering to dispose of, using, keeping or importing a product obtained directly from the patented process.
Furthermore, a patent may be infringed indirectly by supplying or offering to supply in the UK means relating to an essential element of the invention (other than a staple commercial product), for putting the invention into effect, with knowledge that such means are suitable for and intended to put the invention into effect in the UK.
A party may be held jointly liable for having a common design/plan with the primary infringer that an infringement take place.
The High Court (Patents Court) and the Patents County Court deal with patent infringement actions.
The most common defences to patent infringement are that the patent is not valid and/or not infringed. Additional defences include:
Private non-commercial use.
Experimental use.
Trials or studies performed for the purpose of obtaining a generic marketing authorisation (known as the Bolar defence).
Continuation of a use begun before the priority date.
Remedies for patent infringement include:
Preliminary and final injunctions.
Damages or (less commonly) an account of the infringer's profits.
Delivery up or destruction of the infringing goods.
Costs.
To be registered as a trade mark, a sign must:
Be capable of being represented graphically (including words, designs, letters, numerals or the shape of goods or their packaging).
Be distinctive and non-descriptive, unless the mark has acquired distinctiveness through use.
Not be otherwise objectionable on absolute grounds (including because it has become customary in the trade, is contrary to public policy or would deceive the public, amongst other grounds).
Be registrable on relative grounds, that is, it is not identical to or confusingly similar with a third party's mark.
Certain categories of trade mark are excluded from registration, including if use of the mark is prohibited by law, the mark is a specially protected emblem or was applied for in bad faith.
There is no legal obligation to register a trade mark, but there are particular advantages to doing so. Protection and enforcement will generally be easier and more cost effective than relying on unregistered rights. Further, the mark will be searchable on the trade mark register and the owner may use the ® symbol, both of which may deter infringers. Customs can also be notified of registered rights so as to stop infringing goods seized at the border.
It is possible to protect unregistered rights through the law of passing off in the UK, but there is a high evidentiary burden involving the claimant proving all of the following:
The mark has acquired goodwill.
There has been a misrepresentation that has or is likely to deceive or confuse consumers.
As a consequence, the claimant has suffered damage.
There are numerous parallel systems for registering a trade mark with effect in the UK.
UK trade marks can be applied for online or in paper before the UK-IPO. The UK-IPO's website is at www.ipo.gov.uk.
It is also possible to file for a Community trade mark (CTM), which covers the 27 member states of the EU, plus any additional member states as and when they join. CTMs are applied for online or by paper before the Office for Harmonisation in the Internal Market (OHIM). OHIM's website is at oami.europa.eu.
An International Registration (IR) designating the UK and/or the CTM can be filed before the World Intellectual Property Organization (WIPO). WIPO's website is at www.wipo.int.
During examination of a trade mark application, the UK-IPO and/or OHIM can refuse to register a trade mark on the basis of so called absolute grounds, that is, that the mark:
Cannot be graphically represented in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
Is devoid of any distinctive character.
Consists exclusively of signs which designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services.
Consists exclusively of signs which have become customary in the current language or in the bona fide and established practices of the trade.
These absolute grounds objections may be overcome by filing evidence of distinctiveness acquired through use.
A sign may also be refused by the UK-IPO and/or OHIM if it:
Consists exclusively of a shape which results from the nature of goods, is necessary to obtain a technical result, or which gives substantial value to goods.
Is contrary to public policy or accepted principles of morality.
Is of such a nature that it would deceive the public.
Is prohibited for use under UK or EU law.
It is a specially protected emblem (for example, flags, royal representations, and so on).
Has been applied for in bad faith (in the UK only).
The UK-IPO and OHIM do not examine trade mark applications on relative grounds (that is, earlier registered or applied for rights). It is for third parties to oppose applications on these grounds (see Question 14).
Third parties may oppose a UK trade mark application on the basis of the absolute grounds (see Question 13) (other than specially protected emblems). It is not possible for a third party to oppose a CTM application on absolute grounds, although observations may be filed.
It is also possible for third parties to oppose a UK or CTM application on relative grounds on the basis of earlier rights owned by them. The UK-IPO or OHIM will refuse to register the later filed application if a third party successfully demonstrates that:
The applied for mark is identical with the earlier mark and has been applied for in relation to identical goods or services.
The applied for mark is identical with or similar to the earlier mark and has been applied for in relation to identical or similar goods or services, such that there is a likelihood of consumer confusion (which includes a likelihood of association).
The earlier mark has a reputation in the relevant jurisdiction, such that use of the applied for mark would be without due cause and would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
Use of the applied for mark could 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).
Oppositions can be brought within two months (extendable to three months) of publication for UK applications, or within three months for CTM applications.
The following earlier rights may be relied on in UK and CTM opposition proceedings:
Any UK, CTM or IR (designating the UK and/or the EU) registration or application.
A mark entitled to protection under the WIPO Paris Convention for the Protection of Industrial Property 1883 (Paris Convention) or World Trade Organization agreement as a well-known trade mark.
A registered trade mark is initially protected for ten years from the filing date. This can be renewed indefinitely for further ten year periods on payment of a renewal fee.
From five years from the date of registration, a registration may become vulnerable to non-use revocation proceedings if it has not been put to genuine use in the relevant jurisdiction for some or all of the registered goods or services during a consecutive five year period.
Trade mark infringement proceedings can be brought in the UK when another person uses, in the course of trade:
A mark that is identical with an earlier registered mark in relation to identical goods or services.
A mark that is identical with or similar to an earlier registered mark in relation to identical or similar goods or services, such that there is a likelihood of consumer confusion (which includes a likelihood of association).
The earlier registered mark has a reputation in the relevant jurisdiction, such that use of the mark would be without due cause and would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
An earlier UK registration, CTM registration or IR designating the UK and/or EU may be relied on in infringement proceedings.
The following courts deal with infringement proceedings in the UK:
England: The High Court (Chancery Division), the Patents County Court and County Courts with Chancery District Registries. Appeals are heard by the Court of Appeal and Supreme Court.
Scotland: The Court of Session. Appeals are heard by the Court of Session and the Supreme Court.
Northern Ireland: The High Court. Appeals are heard by the Northern Irish Court of Appeal and Supreme Court.
For CTMs, the designated Community trade mark courts are the same as above, except that appeals are heard only by the Court of Appeal in England and Northern Ireland and the Court of Session in Scotland.
If a finding of trade mark infringement is made, a defendant has a defence to infringement if:
The use has been of a UK registered trade mark in relation to the goods or services for which it has been registered (this is a defence only against infringement of a UK registered trade mark, not a CTM).
The use has been:
use of a person's own name or address;
use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;
use where it is necessary to indicate the intended purpose of a product or service, so long as that use has been in accordance with honest practices in industrial or commercial matters;
use of a local earlier right that is protected (in particular) under the law of passing off;
use in relation to goods which have been put on the market in the European Economic Area (EEA) by the proprietor or with its consent (for example, exhaustion of rights);
use in a lawful comparative advertisement under the Comparative Advertising Directive.
There will be no finding of infringement if the earlier registered right relied on is successfully revoked or invalidated as a counterclaim in the proceedings.
The remedies for a finding of trade mark infringement include:
Injunctions to prevent future use.
Damages or account of profits.
Delivery up or destruction of the infringing goods.
Dissemination and publication of judgment, and so on.
Costs in the proceedings.
To qualify for copyright protection:
All works must:
be recorded;
meet the relevant requirements regarding the nationality or domicile of the author and/or country of first publication (or broadcast).
Literary, dramatic, musical and artistic works must also be original (in the sense of not being copied).
Copyright cannot be registered.
Copyright subsists in all works once they are recorded and lasts for between:
A minimum of 25 years from the end of the year of first publication (in the case of copyright in typographical arrangements of published editions).
70 years from the end of the calendar year of the death of the author (in the case of literary, dramatic, musical or artistic works), depending on the type of work in question.
An action for copyright infringement can be made on the following grounds:
Primary infringement (such as copying, issuing copies to the public or adapting a copyright work).
Secondary infringement (such as importing an infringing copy or providing means for making such a copy).
The following courts deal with copyright infringement actions:
High Court (Chancery Division).
Patents County Court.
County Courts with Chancery District Registries.
Statutory defences include:
Making temporary copies of works (other than computer programs and databases) which are an essential part of technological process.
Research and private study.
Criticism, review and news reporting.
Certain educational purposes.
Decompiliation.
Backing up.
Remedies for copyright infringement include:
Interim injunctions and/or final injunctions (including injunctions against service providers in certain circumstances).
Damages or account of profits.
Delivery up or destruction of the goods.
Dissemination and publication of judgment.
Costs in the proceedings.
It is possible to obtain design registration in the UK (UK registered design) or across the whole EU (Registered Community Design) (RCD). The laws regulating UK registered designs and RCDs are similar.
A design means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.
To be validly registered, a design must:
Be novel.
Have individual character (that is, form a different overall impression on the informed user than any prior designs).
Not fall within certain statutory exemptions, including:
comprising only features which are solely dictated by the product's technical function;
being contrary to public policy or to accepted principles of morality;
comprising a specially protected emblem (for example, royal symbols or national flags).
UK designs are registered by the UK-IPO. Guidance on the application procedure is available online (www.ipo.gov.uk).
RCDs are registered before OHIM. Guidance on the application procedure is available online (oami.europa.eu).
International protection for a design may also be obtained under the Hague Convention. However, the UK is not currently a member of the Hague Union, such that UK designs do not benefit from this system, but RCDs may apply for international protection under the Hague Convention.
It is not possible for a third party to oppose a design application before the UK-IPO or OHIM. A third party can only bring invalidity proceedings after a design has been registered.
Post-registration grounds for invalidity include if the design:
Does not fall within the definition of design (see Question 27) or is dictated solely by technical function.
Is contrary to morality or public policy.
Lacks novelty (that is, an identical design or design whose features differ only in immaterial details has been made available to the public before the relevant date).
Lacks individual character (that is, the overall impression it produces on the informed user does not differ from the overall impression produced on such a user by any design which has been made available to the public before the relevant date).
Falls within the scope of protection of an earlier registered trade mark or copyright or its use would amount to passing off under UK law.
Following registration, a design is protected for an initial period of five years from the filing date.
Protection is extendable for five-year periods on payment of a renewal fee up to a maximum of 25 years.
The registered proprietor has the exclusive right to use the design and any design which does not produce on the informed user a different overall impression.
Design infringement proceedings may be brought where a third party (without consent) makes, offers, puts on the market, imports, exports or uses a product (or stocks a product for those purposes) which incorporates the design or whose design does not produce a different overall impression on the informed user (compared to the registered design).
The following courts deal with infringement proceedings in the UK:
England: The Patents Court and the Patents County Court. Appeals are heard by the Court of Appeal and Supreme Court.
Scotland: The Court of Session. Appeals are heard by the Court of Session and Supreme Court.
Northern Ireland: The High Court. Appeals are heard by the Northern Irish Court of Appeal and Supreme Court.
For RCDs, the designated Community design courts are:
England: The High Court and the Patents County Court. Appeals are heard by the Court of Appeal.
Scotland: The Court of Session. Appeals are heard by the Court of Session.
Northern Ireland: The High Court. Appeals are heard by the Northern Irish Court of Appeal.
A number of acts are allowed in relation to UK registered designs and RCDs, such that they provide a defence to infringement, including:
An act which is done privately and for purposes which are not commercial.
An act which is done for experimental purposes.
An act of reproduction for teaching purposes or for the purpose of making citations provided that the act of reproduction or citation is fair.
An act which relates to a product that has been put on the market in the EEA by the registered proprietor or with its consent (for example, exhaustion of rights).
An act committed before registration is granted.
There will be no finding of registered design infringement if the registered design is successfully invalidated as a counterclaim in the proceedings.
The remedies for a finding of registered design infringement include:
Injunctions to prevent future use.
Damages or account of profits.
Delivery up or destruction of the infringing goods.
Dissemination and publication of judgment and so on.
Costs in the proceedings.
There is a substantial difference in the laws relating to UK unregistered design rights and Community unregistered design rights (UCDs). Both apply in the UK.
UK unregistered design rights automatically arise in a design that:
Is original.
Is an aspect of the shape or configuration (whether internal or external) of the whole or part of an article.
Has been recorded in a design document or an article has been made to the design.
Is a qualifying design (that is, designed by a qualifying person, commissioned by a qualifying person, designed by someone employed by a qualifying person, or first marketed in a qualifying country by a qualifying person).
The design must not be:
Commonplace.
A method or principle of construction.
Features of a shape or configuration of an article which enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function (must fit).
Features of a shape or configuration of an article which are dependent on the appearance of another article of which the article is intended by the designer to form an integral part (must match).
Surface decoration.
A UCD also arises automatically under EU law if a design is first disclosed in the territory of the EU. UCDs have the same legal conditions as RCDs (see Question 27), except that the right only lasts three years and that for infringement to occur the UCD must have been copied.
Protection starts when the design has been recorded in a design document or an article has been made to the design and expires on the lesser of:
15 years from the end of the calendar year when the design was first recorded in a design document or an article was first made to the design, whichever first occurred.
If articles made to the design are 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.
Protection begins from the date that the design was first disclosed in the EU and lasts for three years from that date.
Infringement requires copying of the exact design or a copy substantially to that design. Proceedings can be brought for primary infringement or secondary infringement.
Primary infringement. Primary infringement is without consent, doing or authorising another to do anything which is the exclusive right of the design right owner (that is, making an article to that design or making a design document recording the design for the purpose of enabling such articles to be made).
Secondary infringement. Secondary infringement is without consent, engaging in the commercial importation of articles which are, or should be believed to be, infringing.
Copying must be proven, but infringement proceedings can otherwise be brought on the same basis as for RCDs (see Question 31).
There will be no finding of infringement if:
The earlier right relied on does not qualify for design right protection.
In relation to secondary infringement (see Question 37) the defendant did not know and had no reason to believe that design right subsisted in the design. If so, damages will not exceed a reasonable royalty.
The same defences apply as for RCDs (see Question 33).
The remedies for a finding of unregistered design infringement include:
Injunctions to prevent future use.
Damages or account of profits.
Delivery up or destruction of the goods.
Dissemination and publication of judgment and so on.
Costs in the proceedings.
To be protectable, information must:
Have the necessary quality of confidence.
Be subject to an express or implied duty of confidence.
An action for unauthorised use of confidential information can be made on actual or threatened misuse (such as disclosure or unauthorised use).
Claims for breaching technical trade secrets are dealt with by the:
High Court (Chancery Division).
Patents County Court.
County Courts with Chancery District Registries.
Claims for other types of breach of confidence are dealt with by the:
High Court.
County Court.
Defences include:
The information is no longer confidential (that is, it has entered the public domain).
The information is useless or trivial.
Disclosure is in the public interest.
Remedies include:
Interim injunctions and/or final injunctions.
Damages or account of profits.
Delivery up.
Costs in the proceedings.
Main areas of responsibility. Patents, trade marks, designs and copyright.
Guidance on application procedure. Available online.
Main areas of responsibility. Trade marks and designs.
Guidance on application procedure. Available online.
T +44 20 7825 4574
F +44 20 7628 2070
E richard.binns@simmons-simmons.com
W www.simmons-simmons.com
Qualified. England and Wales, 1988
Areas of practice. Contentious and non-contentious IP, including regulatory matters.
Recent transactions
T +44 20 7825 4967
F +44 20 7628 2070
E marc.doring@simmons-simmons.com
W www.simmons-simmons.com
Qualified. England and Wales and Hong Kong, 1997
Areas of practice. Contentious and non-contentious IP, focussing specifically on patent litigation.
Recent transactions
T +44 20 7825 4098
F +44 20 7628 2070
E david.stone@simmons-simmons.com
W www.simmons-simmons.com
Qualified. New South Wales, Australia, 1996; England and Wales, 2002
Areas of practice. Trade marks, copyright and registered and unregistered designs.
Recent transactions
T +44 20 7825 4086
F +44 20 7628 2070
E oliver.heinisch@simmons-simmons.com
W www.simmons-simmons.com
Qualified. Germany, 2000; England and Wales, 2006
Areas of practice. European, competition and intellectual property law.
Recent transactions
T +44 20 7825 3070
F +44 20 7628 2070
E scott.parker@simmons-simmons.com
W www.simmons-simmons.com
Qualified. England and Wales, 2000
Areas of practice. Contentious and non-contentious IP, focussing specifically on patent litigation.
Recent transactions
T +44 20 7825 4625
F +44 20 7628 2070
E michael.gavey@simmons-simmons.com
W www.simmons-simmons.com
Qualified. England and Wales, 2002
Areas of practice. All types of transactions involving intellectual property.
Recent transactions
T +44 20 7825 4142
F +44 20 7628 2070
E angus.mclean@simmons-simmons.com
W www.simmons-simmons.com
Qualified. England and Wales, 2002
Areas of practice. Contentious and non-contentious IP, including breach of confidence and privacy law.
Recent transactions
T +44 20 7825 4595
F +44 20 7628 2070
E lisa.ritchie@simmons-simmons.com
W www.simmons-simmons.com
Qualified. Australia, 2002; England and Wales, 2007
Areas of practice. Trade mark litigation, oppositions, revocation actions, clearance, prosecution, defensive strategy and portfolio management.
Recent transactions
