AIPPI UK Event Report: Registration, notice and infringement - is certainty an illusion?

Professor Bently kicks off his
talk last week with a "plan"

Last Tuesday evening, brave (and frozen) IP professionals battled through the Beast of the East to Bristows’ Victoria Embankment offices in London for an AIPPI UK event, with Professor Lionel Bently (University of Cambridge) delivering a talk on “Registration, Notice and Property Definition in Intellectual Property Law.  Kat friend Lucie Fortune (Bristows) reports on the event:

"Professor Bently started by posing a number of questions to the room: What is the relationship between registration and infringement in intellectual property law? What is the purpose of registration? Does registration really offer certainty? And what are the implications if this ‘certainty’ is largely illusory?

Recent cases such as Trunki and Actavis v Eli Lilly  in the Supreme Court and the CJEU ruling in Specsavers have drawn into focus the relationship between the representation contained on the patent, trade mark and design registers and the scope of protection conferred by those registrations. There has been something of a divergence between the IP rights: from a clear focus on the images included in the Community registered design registration by the Supreme Court in the Trunki case, to the CJEU looking beyond the trade mark register to real-life use of a mark and the complained-of sign in Specsavers v Asda and a  "new" doctrine of equivalents for patents established in Actavis v Eli Lilly.

In spite of the differing approaches between patents, trade marks and designs, the goals of registration appear to be broadly the same: to offer notice to the public that protection is claimed, and to define the boundaries of that protection. Indeed, clarity and precision are recognised as a crucial requirement of the registered representation by all three registration systems, in order to provide certainty (see the Guidelines published by the EPO and EUIPO, and the CJEU’s decision in Sieckmann).

But, Professor Bently asked, do the current systems really provide certainty? Patent claims delineate precisely what is new, whereas design and trade mark registrations identify the object that is claimed as new or distinctive but typically do not identify what is new or distinctive, and may include non-novel elements. The scope of protection is even less precise for trade marks when use is taken into account and, of course, the registers do not contain unregistered rights. Patents typically contain a multiplicity of claims and are often subject to amendment, or auxiliary requests. Perhaps, Professor Bently commented, the certainty afforded by registration systems is nothing more than a ‘mirage’.

Professor Bently concluded by mentioning a number of different possible ways forward (a ‘smorgasbord of ideas’, to use his term), such as legitimising a focus on prosecution history, using disclaimers in trade mark registrations more frequently or creating explicit codes for representation of designs. Or perhaps, we should simply reconsider our expectations for registration. A lively discussion followed, leaving the attendees to mull more philosophical questions over a glass of wine: Do we have certainty now? What could be done to improve the current systems? And is certainty, in fact, always better?"

You can access Professor Bently's PowerPoint presentation here.