NEW REGS SWEEP INTO UK IP LAW

The IPKat has received details of two new UK Statutory Instruments, both of which were laid before Parliament on 6 April and come into force on 29 April. They are, respectively

Right: modern Statutory Instruments are unlikely to set the House of Parliament alight, but they still generate excitement here in the world of IP blogs

The Community Trade Mark Regulations 2006 (2006 No. 1027), which replace the Community Trade Mark Regulations 1996 (SI 1996/1908). The new Regulations make provision for (i) the operation of Council Regulation 40/94 on the Community trade mark (CTM) and (ii) marks protected under the Madrid Protocol in the territory of the EU. In brief

* Regulations 3 and 4 provide for the procedure for determining the invalidity, or liability to revocation, of the registration of a trade mark from which a CTM claims seniority.

* Regulation 5 sets out the sanctions available under national law for infringement of a CTM. It also applies to such marks the provisions of the Trade Marks Act 1994 that deal with infringement proceedings.

* Regulation 6 applies to CTMs the provisions of the 1994 Act dealing with
groundless threats of infringement.

* Regulations 7 and 8 apply to CTMs the provisions of the 1994 Act dealing with
the importation of infringing goods, materials and articles, offences and forfeiture.

* Regulation 9 makes it a criminal offence to represent falsely that a mark is a CTM or to make false representations as to the goods and services for which a CTM is registered.

* Regulation 10 provides for the conversion of a CTM or application for a
CTM into an application for registration under the 1994 Act.

* Regulation 11 provides the privilege for communications with persons on the list of professional representatives maintained under Article 89 of Regulation 40/94.

* Regulation 12 designates the UK courts which have jurisdiction over proceedings
arising out of Regulation 40/94.

The IPKat confesses himself to full of admiration for the splendid manner in which UK trade mark law is truly regulated. No-one could ever accuse the Brits of leaving things to chance. Merpel adds, but there are lots of gaps representing problem areas that await judicial rulings, aren't there?


The Intellectual Property (Enforcement, etc.) Regulations 2006 (2006 No. 1027) implement the following Community instruments: (a) the Directive on the enforcement of intellectual property rights, (b) the Agreement establishing the World Trade Organisation (including the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), (c) Directive 98/71 on the legal protection of designs, (d) Community Design Regulation 6/2002 and (e) the European Economic Area Agreement.

Left: enforcement isn't just a matter of legal rules - it's a matter of imposing your authority ...

The highlights of this SI are as follows:

* Regulation 3 (implementing Article 13 of the Enforcement Directive) sets out the grounds on which damages should be awarded against a person who knowingly infringes an IP right.

* Regulation 4 implements Article 8 of the Enforcement Directive in Scotland, creating a new type of court order for disclosure of information about infringing goods and services (this is already English law: see Norwich Pharmacal v Customs and Excise Commissioners [1974] AC 133).

* Schedule 1 makes various amendments to the already much-amended Registered Designs Act 1949.

* Schedule 2 amends the Patents Act 1977, the Copyright, Designs and Patents Act 1988 and the Trade Marks Act 1994. Amendments relate to, among other things, restrictions on the ecovery of damages and relief for infringement of a partially invalid patent.

* Schedule 3 amends the Duration of Copyright and Rights in Performances
Regulations 1995 (SI 1995/3297), the Copyright and Related Rights Regulations 1996 (SI 1996/2967), the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032) and the Community Design Regulations 2005 (SI 2005/696), by (among other things) creating a new presumption in relation to publication right.

The IPKat regrets that this post does not contain more helpful guidance, but he has started to glaze over whenever further design and copyright law amendment comes his way. He prays that some kind legislator will come and rewrite the UK's convoluted, cross-referenced and confusing provisions from scratch, since they are well-nigh unmanageable.