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The global coronavirus pandemic (Covid-19) is having an impact on us all to a certain degree. SH&P is committed to maintaining the health and welfare of its staff and to minimising any disruption of our services. SH&P will continue to follow this advice and we have also taken our own measures to mitigate the effect of the virus on our staff and clients alike. Most of our staff are currently working remotely at home while some others remain office-based. Regardless, our services are not affected and it is very much business as usual.
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.
A trade mark can consist of a word, a logo, a picture, a colour, a sound, a 3D shape or a combination of any of these, provided it can be depicted graphically. Not all signs are registrable, however. The legislation lists a number of prohibitions which could prevent a mark from being registered. These grounds for refusal are divided into two categories: “absolute grounds” and “relative grounds”. Absolute grounds are those which relate to the intrinsic qualities of the mark.
The UK and EU Intellectual Property Offices examine all new applications against absolute grounds in order to ensure that they possess all the essential qualities of a trade mark. They will notably check that:
An account of profits is a type of remedy in intellectual property disputes. If the claimant is awarded an account of profits, it means that the infringer is required to pay the claimant all profits made on the sales of infringing goods. This remedy is to be distinguished from damages, which are awarded to compensate the claimant for its loss caused by an infringement of its intellectual property right.
In legal principles the doctrine of acquiescence is a common law principle. If a person is in knowledge (over a sustained period of time) of their rights being infringed and does nothing to intervene, they cannot later make a legal claim against the person who infringed them.
A person who “acquiesces” is a person who is considered to have given their consent to the action by another party on the basis that they have been aware of the other party’s action over a period of time but have not taken any measures to stop it occurring. The party who was aware of the action but did nothing to stop it is deemed to have “acquiesced”.
In the UK, Section 48 of the UK Trade Marks Act 1994 covers this aspect. Take for example a situation where Party A has an earlier trade mark or earlier right. Acquiescence is deemed to have occurred when Party A has for a period of five years or more been aware of the use by Party B of a registered trade mark and has taken no action against Party B’s use within that time. In that scenario Party A would be considered by a court or tribunal to have “acquiesced” and under such circumstances they would not be able to invalidate Party B’s later registration nor take any action against the use of the registered mark.
In the US acquiescence is referred to as “laches”. Regardless of the territory the applied principles are the same in that the longer a party is allowed to carry out an infringing act without intervention by the earlier right owner, then the stronger that party’s defence will be, provided they can show the earlier right owner knew for a significant length of time that the infringing act had been taking place but had taken no steps to curtail it within that time.
An affidavit is a formal written statement of fact which is signed and sworn to be true. It can be used as proof in a law court.
The person making the statement is known as the ‘affiant’. The statement has to be signed in front of a person authorised to administer affidavits, such as a solicitor, a judge, or a commissioner for oaths, who witnesses the authenticity of the signature. To make a false affidavit knowingly can be contempt of court and as such it is punishable by criminal sanctions.
Affidavits can be used to provide evidence in intellectual property disputes before the court or the UK Intellectual Property Office (although the Office will also accept a less formal declaration such as a Witness Statement).
Affidavits are also used in other countries, although the requirements may vary slightly. For instance, in the USA the proprietor of a trade mark registration has to file an Affidavit of Use (also called a “Declaration of Use”) together with a specimen showing that the mark is in use in the USA in order to maintain the registration.
The person or company that has filed an application to register a design, a patent or a trade mark is called an “applicant”. Once the intellectual property right has been registered, the “applicant” then becomes known as the registration “owner” or “recorded proprietor”.
The Artist’s Resale Right (ARR) entitles the author of a qualifying work of art (including paintings, engravings, sculpture and ceramics) to a royalty each time one of their works is sold through an auction house or by an art market professional (gallery).
The right to a royalty in ARR lasts for the same period as copyright, meaning that since January 2012 an artist (or their estate if deceased) are entitled to royalties for a period extending up to 70 years after the original author’s death.
There are certain exemptions to the right of an author to claim royalties in this way, for example, sales between private individuals would not qualify and neither would a sale other than through an art market professional. In addition, sales of a piece of work to a public, non-profit making organisation such as a museum would not qualify.
Resale rights in the UK are managed by collecting societies who collect payments which they then distribute to the artists as royalties.
This is a term usually used in relation to copyright protection. Artistic works are one of the types of original works protected by copyright. This category of works includes paintings, drawings, diagrams, maps, charts, plans, engravings, etchings, lithographs, woodcuts, photographs, sculptures, collages, works of architecture and works of artistic craftsmanship.
In order to be protected by copyright, artistic works need to be recorded or fixated on some medium and require originality. For a work to be original, it needs to be its author’s own creation rather than the copy of someone else’s work or dictated by technical functions.
An assignment is a transfer of ownership of property from one person or company to another. In terms of intellectual property, the property right in question could mean a trade mark, a patent, a design, copyright or any volume or combination of these.
Intellectual property assignments take place when an individual or company wishes to sell an existing business (or part of that business) to another party. The selling party is known as the “assignor” and the buying party is referred to as the “assignee”. When a business is sold the buying party will purchase from the selling party various “tangible” assets including, for example, stock merchandise, some real estate, raw materials etc. as well as the “intangible” assets which could include any patent, trade mark and design rights the selling party might hold. Often it is these intangible assets that are the most valuable part of a business and they sometimes have a greater value than the other assets. Consider the example of the Apple, Inc. trade mark logo for an apple silhouette with a piece bitten out from out. Conservative estimates have recently placed the value of that trade mark registration alone at around $140 billion.
An “attorney” is an American-English word referring to a “lawyer”. A lawyer by definition is a person educated in law and thereby qualified to give legal advice to a client.
In our profession we refer to patent attorneys and trade mark attorneys. Patent attorneys are by definition qualified to advise clients on patent law and likewise trade mark attorneys are qualified to advise on trade mark law. Up until a few years ago patent attorneys and trade mark attorneys were typically referred to as patent and trade mark “agents”, but the word “agent” has been phased out and replaced by “attorney”, bringing the UK into line with most overseas territories.
Sometimes we are asked: “Why is it so important to use an attorney?” In answer to this, attorneys have wide experience when it comes to drafting patent applications, filing trade marks and seeing everything through to a successful conclusion. There are many pitfalls to avoid when seeking official protection for intellectual property rights and doing so without experience or comprehensive know-how can often lead to mistakes, culminating in added expense and potentially damaging consequences for a business. Very simply, if you want an expert job, you will need an expert.
An “author” is defined as a person who originates or gives existence to anything. Books are very common works by authors and the person writing a book and bringing the written work into existence is defined as the author. The term “authorship” determines responsibility for what is created.
In terms of copyright law, the author is defined as the person who is the creator of a piece of work, be it a literary work, musical work, dramatic work or artistic work. The creation of a copyright work means that it is a work expressed in an original manner by its author. It is rare that something is totally unique but original works can be created by merging different ideas to create a new expression.
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