Darren took the audience through the function of the trade mark as viewed through the Bellure decision, explaining how the essential function of indicating the origin of goods and services has been complemented by the functions of communicating, investment and advertising -- terms the meaning of which, Darren suspected, the Court had not fully considered. Darren also reviewed the concept of "unfair advantage" and the need to consider the intention of the alleged infringer -- factors which may render a course of business action legal if done by one person but infringing if done by another.
|Interflora -- may provide answers|
to questions still unresolved
|Starbucks cup cosy -- looks |
prosaic, but patent-protected
Is there a patent? It might not yet be granted, but the use of a patent application's contents may still be unlawful if it proceeds to grant. It's worth also checking whether and for how long it's in force. It may be worth waiting for an impending expiry date before using it. And where is the patent in force? Sometimes an invention is only protected in only a small number of markets.
not mean what
they say ...
How many changes need be made to a patent before it won't be infringed? There's no hard-and-fast rule, warned Trevor, since it all depends on the nature and number of claims contained in the patent -- which need not be interpreted literally. Terms such as "a generally elliptical cone" shape have been interpreted quite purposefully, which can catch out third parties who make quite specific changes over the invention as claimed.
Defences to patent infringement include private and non-commercial use, use for purely experimental purposes relating to the subject of the patent, and -- where appropriate -- an implied licence. Parallel importation obeys different rules relating to consent to reimportation from those which apply to other IP rights.
Moving on to competition law -- when will it come to the rescue of an alleged infringer? Pretty well never, said Trevor, who could think of no case in which it had succeeded as a defence to a patent infringement action. In the ICT (information and communications technology) sector, competition law will be directed at patents that are essential to a standard and to licences of these. Generally however it has only been discussed in the context of applications that seek to strike it out as a defence.
Challenging a patent is often the best strategy for an unlicensed user -- in 2009 two thirds of patents challenged in UK litigation were held invalidated. Removing a patent completely clears the path for commercial exploitation, particularly in areas in which, if even a patent is allowed to remain, a business may be stopped in its tracks by an interim injunction. Finally, Trevor alluded to the advantages of seeking a non-binding Comptroller's opinion on validity or infringement -- a cheap and underused facility which could still be highly useful.