INTELLECTUAL PROPERTY: An Introduction to South West

Overview for Intellectual Property in the South West

The South West region hosts diverse industries ranging from animation to pasties to space exploration.

Location aside, what these players have in common is that intellectual property (“IP”) is a major asset.

Prudently IP needs appropriate protection and maintenance in order to preserve and optimise its value.

Businesses face the outside world and a trade mark connects the goods and services supplied with the genuine supplier. Trade marks are badges of origin. Importantly, trade marks also function as guarantees of quality and effective marketing tools.

Research shows that brand-building drives profits, and start-ups should think about brand-building (and therefore brand protection) at an early stage. No doubt belts will continue to be tightened and budgets squeezed for the foreseeable future; however, it is usually false economy to put IP protection on the back burner not least because, for example, trade mark registrations are generally granted on a first come, first served basis.

Design registrations monopolise the outward appearance of products including technology. The designs economy contributes around £86 billion in gross added value to the UK (around 7% of UK GVA). The designs industries employ around 1.7 million people and are consistently expanding. It will resonate in the South West that a registered design for a vacuum cleaner bag was successfully defended in the EUIPO against attack by Chinese generic manufacturers.

Copyright (unregistrable) protects the expression of ideas but not the ideas themselves. The line can be difficult to draw, especially with formats. For the first time in English law, copyright was held to subsist in the character “Del Boy” that was infringed by making an interactive dining show using characters from the TV series “Only Fools and Horses” (which was largely filmed in Bristol).

Patents monopolise technical advances. Individual research and organisations, eg, in life sciences and telecoms, often seek to pursue the same or similar goals. It is vital to secure foundation patents for the base technology as soon as possible. Otherwise, subsequent foundation patents may be liable to challenge on grounds of lack of novelty and/or obviousness over the prior art. As the technology advances with applications in different fields product-specific patents become important in order to protect and capitalise on investment. The downside is that competition may be stifled in the absence of adequate cross-licensing arrangements and patent pools.

As for pasties – only those made in Cornwall can be called “Cornish” because “Cornish Pasty” is a protected geographical food name (“PGI”).

Copyright arises automatically but other forms of IP need to be registered nationally or regionally in order to obtain a statutory monopoly in the market. Moreover, registration constitutes a powerful warning to others not to trespass on the registered right projected to have been monopolised.

IP rights are territorial, meaning they are valid and enforceable only in the country or region in which they are registered. There is, for example, no “worldwide” trade mark. However, schemes exist whereby international applications can be made centrally, eg, under the Madrid and Hague treaties for trade marks and designs respectively, which significantly reduce the administration, time and costs of obtaining and maintaining international IP portfolios.

Following Brexit, the UK is no longer obliged strictly to adhere to EU IP harmonisation laws. In order to increase innovation and competitiveness, the UK Government is presently engaged in a review of the UK’s IP laws.

Proposals for designs include extending/clarifying the definition of protectable designs to include new technologies like 4D products of 3D printing and better to cater for the digital environment, second stage substantive examination by the UKIPO to aid enforcement of registered designs and maintaining a suitable divide between copyright and design right for fine art and functional designs.

Also under the spotlight are Standard Essential Patents, ie, patents that protect technology essential to implementing a standard. Here the UK Government is seeking to ensure that the present framework optimally serves industry requirements.

Owners in the South West (and elsewhere) of European patents (including European unitary patents) valid in participating EU Member States may benefit from the opening of the Unitary Patent Court (“UPC”) anticipated in Spring 2023. The UPC was set up centrally to decide issues of infringement and invalidity otherwise to be determined locally.

Finally, the protection for well-known marks owned by UK proprietors is going to be recognised, and for well-known marks owned by UK and overseas proprietors the position will be strengthened by extending enforcement to cover dissimilar goods and services.

Contributed by Humphreys & Co. Humphreys Law Ruth Annand, Tristan Morse & Robert Humphreys.