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Like most areas of law, Intellectual Property can appear daunting and complex. There are a great many practice areas, subjects and procedures. The SH&P “A-Z” Intellectual Property glossary is a free and easy to use glossary of legal terms commonly used and associated with IP. We hope that it will help you better understand this topic. All of the entries include contact details for SH&P expert advisers. Alternatively, you can request a free, no obligation, IP Consultation and Review here if you require more information or have a particular issue you would like us to help you with.
Whether a trade mark is “registrable” or not depends on a number of factors.
If you have a new brand name that you want to use then a trade mark attorney will consider if that mark is suitable for registration and that it passes the various tests set out under the relevant act. For example, a trade mark must be distinctive and must not directly describe the goods or services for which it seeks registration. Further, it must not be a “generic” name for a product, nor should it be immoral or offensive to the everyday consumer. A brand name or other sign must pass all of these tests in order to be considered inherently registrable as a trade mark.
The purpose of obtaining a trade mark registration is to give the owner the right to prevent others from copying the same of very similar trade mark. It makes sense, therefore, that nobody should have the right to stop others from using a mark that is purely descriptive, for example.
“Intellectual property” is the collective term used to refer to patents, trade marks, designs and copyright. Intellectual property (IP) rights may also include other so-called intangible assets, such as geographical indications, goodwill, know-how and trade secrets. It is common to see the term “intellectual property” abbreviated to “IP”.
IP rights enable their owners to take legal action to prevent others from, for example, copying their product or brand. They are therefore a significant business asset which can play a key role in establishing and maintaining a company’s competitive edge and enhancing their market position.
An interim or interlocutory injunction is a temporary court order that restrains one party from doing an act that would damage the other party to the legal proceedings. It may be issued at a preliminary stage in the proceedings and is usually intended to maintain the status quo, or to protect the interests of one party, until such time as the case comes to trial and a final decision is reached by the court.
In patent infringement proceedings, for example, the patent proprietor (the plaintiff) may seek an interim injunction against the defendant so as to prevent them from selling their allegedly infringing product in the period leading up to the full trial. The court would be likely to grant an interim injunction if it is satisfied that the subsequent award of damages to the patent proprietor (in the event that the patent is held to be infringed) would not be adequate to compensate them for the harm caused by the infringement.
An interim or interlocutory judgement is a provisional or temporary one that is given by a court at an intermediate stage in legal proceedings. It is not the final decision on the matter.
The invalidation of a UK or EU trade mark registration can be based on absolute grounds and/or relative grounds. Similar procedures regarding arguments and evidence in a UK opposition apply to invalidation proceedings, including proof of use of prior registrations (if over 5 years old), rights to appeal and award of costs. The same considerations also apply with regard to settlement discussions, mediation and awards of costs.
An important aspect of a successful invalidation action is that the cancellation of the registration has effect from the date at which the registration had been filed. In other words, a successful invalidation action against a trade mark registration gives the net result of the registration being treated as if it had never existed. As such, the proprietor would be unable to assert any infringement rights that may have arisen during the time of registration.
Invalidation may be partial in respect of some or all of the goods and services covered by the registration.
In order to be patentable in the United Kingdom, an invention must involve an inventive step. It must also possess novelty.
An invention involves an inventive step if – having regard to the state of the art – it is not obvious to a person skilled in the art. A routine modification of something that is already known is likely to be regarded as obvious and, consequently, lacking an inventive step. The notional person skilled in the art is deemed to be of average ability – not a genius – and to be aware of everything that was previously publicly known in the relevant field. If appropriate, the person skilled in the art may be a multi-disciplinary team of such persons.
One approach to assessing whether an invention is obvious is to begin by considering what technical problem is being solved. How widely known is the problem and how long has it existed? Are other solutions known to that problem and, if so, what advantage over them does the present invention possess? Care must be taken to avoid viewing the invention with the benefit of hindsight. If it is obvious, then why has it not been done before?