The law of passing off: Intellectual property rights
The law of passing off, protects the intellectual property rights a person has in their creation where another person seeks to exploit a similarity between that creation and another creation. Intellectual property rights have been explained in the following terms:
‘No one receives a patent or any form of patent protection at the moment when they think of a marvellous new invention. Nor do they receive a patent when they write the invention down or when they make or use the invention. For a product or a process to be patented a patent application needs to be lodged with the appropriate Patent Office….. (Fawcett, J. Torremans, P. (1998) 8 and 9)’.
There are various problems with this law, mainly because it is based in the common law of tort. This problem was addressed with the incorporation in 1994, of the Trade Marks Act which in many ways transposed the rights which had ordinarily been protected at common law into a statutory form of protection which afforded individuals greater rights in terms of intellectual property protection and also established processes whereby individuals could protect their rights in terms of intellectual property prospectively and opposed to retrospectively (Fawcett, J. Torremans, P. (1998) 8-9).
The common law of passing off however has not been made redundant by the new legislation. The law still can protect those individuals by providing injunctive relief in circumstances where the protections in the statute have not been availed of, and the common law also affords people the right to claim damages and costs where their rights have been infringed.
To trigger the protections in the common law of passing off, a person will have had to adopt the same or a similar trademark to the person who is claiming the protection of the law of passing off. This may be referred to as an infringement, and the onus is on the person complaining under the law of passing off to prove, on the balance of probabilities that an infringement has occurred. A person taking advantage of the protections offered through the law of passing off must firstly show that they own the trademark in question, and that they have built up a reputation around it, which is being damaged by another’s unauthorised use of it (www.itma.org.uk).
Merchandising rights are therefore protected as this law will on many occasions be relied on in commercial situations where the infringement relates to a product or service which is the subject of the passing off claim. Merchandising is particularly vulnerable to patent and trademark infringements as products which are on the market are often the subject of expensive advertising and promotion campaigns. In this situation it is easy for another unauthorised supplier of the product to piggyback on the back of the promotions which a person will associate with another’s merchandise and therefore benefit from that person’s investment, at no cost to themselves, while at the same time potentially damaging the reputation and the profits of the person whose rights are infringed.
The main difficulty with the law of passing off lies in the fact that it offers retrospective protections (Green, D. (2005) Ch. 1-5). To illustrate this point, one might say that prevention is better than cure. This is true of the law of passing off, because whereas the law of passing off allows a person to claim a remedy for the damage that has already been done, the legislation incorporated within the Trade Marks Act 1994, allows a person to address problems which might arise in the future, ensuring that if it becomes necessary to institute legal proceedings to protect a reputation, or to prevent another from damaging that reputation, the preliminary groundwork in already in place to support and facilitate a claim (www.itma.org.uk).
Therefore while the law of passing off has in many ways been superseded by statutory protections which are more effective in a lot of ways, protection of intellectual property rights are still protected, albeit to a lesser extent where this legislation does not operate, through the common law of passing off.
Trade mark dilution is a relatively new area of law. It provides more targeted protection mainly within the field of consumer law to businesses whose products are patented, and made use of by other corporate actors whose use of the trademark is intended to make them profit through taking advantage of another’s protected patent, and the use of the trademark is in another industry (www.itma.org.uk).
Therefore an illustration of trademark dilution is where a hair care product has a very well known reputation which is protected by trademark, and another corporate actor attempts to piggyback on the good reputation by naming a product within another industry in similar terms, with the aim of causes confusion between the two and thus gaining profit through the use of another’s trademark, or patented identity.
In America the principles of trademark dilution are expressly protected by statute. The Trademark Dilution Revision Act 2006 was made law on the 6th of October 2006. This legislation ensures that relief may be sought in the form of injunctions where trade mark dilution occurs (www.itma.org.uk). In Britain, protections apply against the phenomena of trademark infringements in a more indirect fashion.
Section 10 (3) and Section 5 of the Trade Marks Act 1994 provides that trademarks which are similar or identical may not be used in order to erode the uniqueness of another’s trademark (www.itma.org.uk). The prerequisite to trigger the protections this legislation provides is that the trademark, to which the protections against trademark infringement are claimed, must be shown to be unique.
Specifically, Section 5 of the Trade Marks Act 1994 provides that a trademark owner can challenge the registration of a new trademark on the grounds that it infringes the uniqueness of an already registered trademark. Section 5 of this legislation allows that permission for the registration of a trademark can be withdrawn if such a conflict arises and is deemed to be a conflict (www.itma.org.uk) (Benson, C. and Jones, H. (2002) Chapters 1-5) (Deakin, S. and Markesinis, B. (1999) 1-20).
The test of detriment in terms of trade mark dilution in the UK is that to which Section 5 apples, and corporate actors are expected to be watchful that their trademark is not infringed. In many ways therefore the legislation in Britain requires corporate actors to ensure prospectively as opposed to retrospectively that trade mark infringement does not happen. Specifically, the test contained in Section 5 to advance this protection centres on an enquiry into whether the earlier trademark had a reputation, and whether the use of the trademark which is objected to would take unfair advantage or prove damaging to the distinctive character of the earlier trademark.
It may be surmised therefore that the protections which are available to the victims of trade mark infringement through dilution in the UK are considerably less potent than those which are available to similar actors within the US. The US has only recently addressed the problem of trade mark dilution through the use of statute, and while the protections which are available in Britain are statutory in nature, the absence of specific statutory provisions arguably indicates both inadequacy of protection for those who suffer damage to their intellectual property rights and a need for further revision of the law.
The main issue to be discussed in relation to this problem it copyright. In general terms when something is created by an individual, they also own the copyright which goes with it (www.itma.org.uk).
Copyright is a form of intellectual property right which creates, for the owner of the copyright, propriety rights in the things they have created. Further rights in things which have been created can be created by creating a trademark and registering it. This process affords more rights to a person who is in a situation where what they have created is used and disseminated into the public domain by an unauthorised person.
When something is copyrighted, it means that were somebody to make use of it in the public domain, i.e. through publishing it, plagiarising it, advertising it, quoting from it or printing it without the permission of the person to whom the copyright belongs, that person may be in breach of copyright. In general terms copyright protection lasts for seventy years, and at the end of this period, it expires. Copyright and copyright process may be defined as follows:
‘Copyright does not require any formalities. It comes into existence when a work is fixated or recorded in any permanent way. No application, examination or registration system exists for original literary, artistic, musical and dramatic works, films, sound recordings, broadcasts, cable programmes and the typographical arrangements of published editions. The Copyright Designs and Patents Act 1988 also introduced a design right for functional designs along the same lines. The latter right could be called an unregistered design. A design is defined as ‘the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article (Fawcett, J. Torremans, P. (1998) 8 and 9)’.
Copyright protection can not be infringed where insubstantial extracts are quoted from copyrighted material. The meaning of ‘substantial’ is subjectively assessed and will depend on the overall size of the book or other copyrighted material from which the quotation has been made. It appears that the ‘extensive’ quotation which Brad has used from both the book and the screenplay may fall foul of these rules, and it could transpire that Brian has actually infringed the intellectual property rights of both the authors; Paul and Brad, and Andrea (depending on who owned the copyright to the screenplay).
In terms of the still frame, which is taken from the film, this will also be subject to copyrighted protection, and the copyright protection also vests in the creator, for seventy years, therefore, in these circumstances Brian’s publication of the still from the film may constitute a breach of copyright. The printing of the word ‘lies’ across it may damage the reputation of the author and as such it may be considered defamatory. In these circumstances it may be possible for Paul, Brad or Andrea to obtain an injunction against Brian which could require him to discontinue his conduct which is damaging the reputation of Brad, Paul and Andrea.
In terms of Brian’s rights there seems to be an intersection with the law of defamation, which needs to be clarified. Defamation occurs where words tend to reduce the reputation of a claimant in the viewpoint of right thinking individuals. There are two types of defamation-libel and slander. The words which Brain has used therefore can be argued as having reduced the reputation of those who disseminated the screenplay. Therefore Andrea, Brad and Paul may all have concurrent claims against Brian for infringement of intellectual property rights and through the law of defamation.
Fair dealing is a system whereby copyrighted quotations may be used by an unauthorised person, for the purposes of criticism or review. It is unlikely that Brian’s conduct falls into this category, given the extent to which he appears to have quoted form the screenplay.
Ostensibly therefore it appears as though Brain has been harshly treated in that his father’s reputation seems to have been encroached upon by the authors who have written about his affair and other events in his private life. If Brian is unhappy about the way that the affair between his father and Chrsitie has been portrayed, there is unfortunately no much that he can do about it in legal terms, since it is not possible for a dead person (Brian’s father) to be defamed, and the law of defamation does not permit a person to sue on behalf of a deceased person in respect of defamation. In the circumstances of the problem, it appears that Brian himself may be considered to have published defamatory material and may have infringed copyright and the intellectual property rights of others.
In law Tina is protected by copyright and intellectual property law, however in practical terms in may be very difficult for Tina to obtain a remedy in respect of the breach of her copyright which Lisa may have committed.
Tina should keep a copy of the drawing which she showed Lisa. It would also be useful if Tina could obtain witness statements from anyone who witnessed the meeting between Lisa and Tina, whereby the unusual drawing of the ring was shown to Lisa, as this might assist her, should she wish to obtain a remedy against Lisa. Ultimately however, it is likely to prove very difficult for Tina to obtain a remedy against Lisa, on the face of the facts as they appear in the problem.
The situation would change if Tina had the image of the ring registered so that it had more substantial intellectual property right protections, most of which may arise through the operation of the Trade Mark Act 1994, which implemented an EU Directive in the UK, affording greater intellectual property rights to particular classes of people (www.itma.org.uk). A patent would have to have been registered at the Patent Office in the UK, and where this is the case, Tina can class Lisa’s conduct as an infringement of her patent. The process of intellectual property right protection may be explained in the following terms:
‘In the application, the invention must be described and the scope of the exclusive rights that are claimed must be laid down. The examination of the application focuses on the three requirements of novelty meaning that the invention must be new; inventive step, meaning that the invention must present a clear departure from the existing level of knowledge and not be obvious; and capability of industrial applications. A patent is only granted if the Patent Office arrives at the conclusion that all requirements for patentability are met (Fawcett, J. Torremans, P. (1998) 8 and 9)’.
The process for registering a trademark takes approximately nine months so Tina would have had ample opportunity between the initial design of the ring and the reproduction of the ring to have it registered and therefore protected from unlawful reproduction. Also the process of registration can become very complicated where the distinctiveness of the trademark to be registered is questioned by others who regard the design as very similar to their own. In these circumstances individual patent holders can raise an objection to the registration of a trademark which they consider as similar to their own.
It is not clear from the problem question whether Tina might have this protection, but if this is the case, Tina would be in a much stronger position to have a remedy against Lisa in terms of intellectual property rights. If this is the case, the remedy which may be open to Tina would depend very much on how similar the manufactured ring is to the design which Tina has protected.
There are also circumstances whereby the design of the ring may be protected under intellectual property law even in the event that the shape of the ring has not been registered, however without prior protections the practical problems associated with proving that Lisa may have committed an infringement of Tina’s intellectual property rights would still represent an obstacle to her obtaining a remedy against Lisa.
At common law Tina’s rights in the design of the ring may also be protected through the law which is referred to a ‘passing off’ which is a tort in UK law. It refers to a situation whereby a person passes off the creation of another person by creating something similar and then indirectly benefiting from the association. An example of this could be where an individual intentionally creates a website which uses a distinction word or series of words in the anticipation that users of their site might be attracted there because they had mistaken one site for the other.
Benson, C. and Jones, H. (2002) Publishing Law. Routledge. London.
Deakin, S. and Markesinis, B. (1999) Tort Law. Clarendon Press. Oxford.
Fawcett, J. Torremans, P. (1998) Intellectual Property and Private International Law. Publisher: Oxford University Press. Place of Publication: Oxford.
Green, D. (2005) Torts Law. Cavendish Publishing. London.
<< (www.itma.org.uk) >>
 (www.itma.org.uk) (Benson, C. and Jones, H. (2002) Chapters 1-5) (Deakin, S. and Markesinis, B. (1999) 1-20) (Fawcett, J. Torremans, P. (1998) 8-9) (Green, D. (2005) Ch. 1-5).
 (www.itma.org.uk) (Benson, C. and Jones, H. (2002) Chapters 1-5).
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