Table Of Content

Classics Series Intellectual Property Patents, Copyright, Trade Marks and Allied Rights Ninth Edition Classics Series Intellectual Property Patents, Copyright, Trade Marks and Allied Rights Ninth Edition DAVID LLEWELYN Professor (Practice), School of Law, Singapore Management University Professor of Intellectual Property Law, King’s College London TANYA APLIN Professor of Intellectual Property Law, King’s College London First Edition 1981 Second Edition 1989 Third Edition 1996 Fourth Edition 1999 Fifth Edition 2003 Sixth Edition 2007 Seventh Edition 2010 Eighth Edition 2013 Ninth Edition 2019 Published in 2019 by Thomson Reuters, trading as Sweet & Maxwell. Thomson Reuters is registered in England & Wales, Company No.1679046 Registered Office and address for service: 5 Canada Square, Canary Wharf, London, E14 5AQ. For further information on our products and services, visit http://www.sweetandmaxwell.co.uk A CIP catalogue record of this book is available from the British Library. The right of W.R. Cornish, D. Llewelyn and T. Aplin to be identified as the authors of this work has been asserted by them in accordance with the Copyright, Designs and Patents Act, 1988 Thomson Reuters, the Thomson Reuters Logo and Sweet & Maxwell ® are trademarks of Thomson Reuters. Crown copyright material is reproduced with the permission of the Controller of HMSO and the Queen’s Printer for Scotland. All rights reserved. No part of this publication may be reproduced, or transmitted in any form, or by any means, or stored in any retrieval system of any nature, without prior written permission, except for permitted fair dealing under the Copyright, Designs and Patents Act 1988, or in accordance with the terms of a licence issued by the Copyright Licensing Agency in respect of photocopying and/or reprographic reproduction. Application for permission for other use of copyright material, including permission to reproduce extracts in other published works should be made to the publishers. Full acknowledgement of the author, publisher and source must be given. © 2019 W.R. Cornish, D. Llewelyn, T. Aplin Preface to the Ninth Edition This is the first edition of this textbook, first published 37 years ago, in which Bill Cornish has not been involved actively. But this has been no Bill-Exit, for his inimitable style and penmanship live on in what remains for us ‘Bill’s book’, despite our involvement in what has become from its Fifth Edition (and remains) a genuine work of joint authorship. (Indeed, amongst the rewards for this labour of love have been readers’ comments “that comment must be you” and “that barbed aside is obviously you”, when neither was!) We look forward to hearing Bill’s comments, barbed or otherwise, on this edition after he reads it in his well-deserved retirement in Cambridge. Looking at the Preface to the Eighth Edition in 2013, we realise how politics and the people can make a mug of us all. Three-quarters of it was about EU developments and their impact on the UK: “[o]ver the past four decades, the Europeanisation of IP law has been striking”. Just over three years later came the Referendum, or should we say the First Referendum? And now, over two years on, there is “more confusion and complexity”, to adopt the words we used there to describe the state of trade mark law. In fact, that is to understate the position: “confusion and complexity” need not be chaotic, which seems as we write this the most apposite and succinct description of the present state of Brexit negotiations. Nevertheless, time marches on and it is time for a new edition. So, we crave the reader’s indulgence about both the number of times the words “the future position is unclear” (or variants thereof) appear in this edition, and our having taken the inevitable risk that much of what we say may be rendered redundant if and when the Brexit saga is over. Leaving aside Brexit ramifications, we have incorporated as far as the bounds of a manageably- sized textbook permit the continuing stream of new material since 2013 and the edition is up to date as at the end of June 2018. Of course, as we all now know, you should never trust experts, so we welcome any comments or corrections. David Llewelyn Tanya Aplin August 2018 Table of Abbreviations 1. General Cornish Oxford History W. Cornish in Cornish et al., Oxford History of the Laws of England, 1802-1914, Vol.XIII, Pt V EMLR Entertainment & Media Law Reports EIPR European Intellectual Property Reports EUIPO European Intellectual Property Office FSR Fleet Street (IP) Law Reports Gowers Review A. Gowers, Review of Intellectual Property (2006) Hargreaves Review I. Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth (2011) IIC International Review of Intellectual Property and Competition Law IPQ Intellectual Property Quarterly JIPLP Journal of Intellectual Property Law and Practice Ng, Bently and C. Ng, L. Bently and G. D’Agostino (eds), The Common Law of D’Agostino Intellectual Property (2010) PIP Paris Convention for the Protection of Industrial Property Sherman and Bently B. Sherman and L. Bently, The Making of Modern Intellectual Property Law (1999) TEU Treaty of European Union, Lisbon 2007 TFEU Treaty on the Functioning of the European Union 2007 TRIPS Agreement on Trade-Related Intellectual Property Rights including Trade in Counterfeit Goods 2004 UK IPO Intellectual Property Office of the United Kingdom Vaver and Bently D. Vaver and L. Bently (eds), Intellectual Property in the New Millenium (2004) WIPO World Intellectual Property Organisation WTO World Trade Organisation 2. Patents Benyamini Patent Infringement in the European Community (1993) CIPA Guide P.G. Cole, CIPA Guide to the Patents Acts (7th edn, 2011) CIPA CIPA—Journal of the Chartered Institute of Patent Agents CPC Community Patent Convention 1975 EPC European Patent Convention 1973 EPO European Patent Office EPO Guidelines EPO Examination Guidelines (2012) EPOR European Patent Office Reports OJ EPO Official Journal of the EPO PA 1977 Patents Act 1977 PCT Patent Co-operation Treaty 1970 Singer R. Singer, M. Singer and D Stauder, The European Patent Convention (2nd English edn, 2003; 5th German edn, 2013) SPC Supplementary Protection Certificate UPC Agreement Unified Patent Court Agreement UPOV Convention Convention for the Protection of New Varieties of Plants 3. Confidence and Privacy Gurry T. Aplin, L. Bently, P. Johnson and S. Malynicz, Gurry on Breach of Confidence (2nd edn, 2012) 4. Copyright and Designs Berne Convention Berne Convention for the Protection of Literary and Artistic Works CA 1956 Copyright Act 1956 CDPA 1988 Copyright, Designs and Patents Act 1988 Copinger K. Garnett, G. Davies and G. Harbottle (eds), Copinger and Skone James on Copyright (17th edn, 2017) ECDR European Copyright and Designs Reports EURD EU Registered Design Laddie et al Laddie et al., Modern Law of Copyright and Designs (5th edn, 2018) Modernising Copyright UK IPO, Modernising Copyright: a modern, robust and flexible Report framework (2012) PLR Scheme Public Lending Right Scheme PLRA 1979 Public Lending Right Act 1979 PRT Performing Right Tribunal RDA Registered Designs Act 1949 Ricketson and Ginsburg S. Ricketson and J. Ginsburg, International Copyright and Neighbouring Rights (2nd edn, 2006) Rome Convention Rome Convention for the Protection of Performers, Phonograms and Broadcasting Organisations of 1961 Russell-Clarke Russell-Clarke and Howe on Industrial Designs (9th edn, 2016) Sherman and Wiseman B. Sherman and L. Wiseman (eds), Copyright and the Challenge of the New (2012) UCC Universal Copyright Convention 1952 UDR Unregistered Design Right (UK or EU) UK Designs Reform UK IPO, Consultation on the Reform of the UK Designs Legal Framework (2012) 5. Trade Marks and Names ETMR European Trade Mark Reports EUTM EU Trade Mark EUTM Reg. EU Trade Mark Regulation 207/2009 Kerly Mellor, Llewelyn, et al, Kerly's Law of Trade Marks and Trade Names (16th edn, 2018) Madrid Madrid Agreement Concerning the International Registration of Agreement/Protocol Marks/Protocol thereto TMA 1994 Trade Marks Act 1994 TM Dir First Directive on the Approximation of Trade Mark Laws (89/104/EEC) TABLE OF CONTENTS PAGE Preface to the Ninth Edition v Table of Abbreviations vii Table of Cases xxxiii Table of Statutes cxv Table of Statutory Instruments cxxix Table of European and International Legislation cxxxiii Table of International Treaties, Conventions and Agreements. cxli PARA PART I Common Ground 1. STARTING POINTS 1. GENERAL (1) “Intellectual property” 1-001 (2) Organisation of the material 1-002 2. TYPES OF INTELLECTUAL PROPERTY 1-004 (1) Patents (Chs 3–7, 20, 21) 1-005 (2) Copyright (Chs 10–14, 20) 1-006 (3) Trade marks and names (Chs 16–18) 1-007 (4) Other aspirants 1-008 (a) Industrial designs (Ch.15) 1-009 (b) Trade secrets and other confidential information (Chs 8 and 9) 1-010 (c) Further demands 1-011 3. PRESSURES FOR DEVELOPMENT 1-012 (1) Specific rights and unfair competition 1-013 (2) Enhancement of intellectual property (a) Demands for greater protection 1-023 (b) Sources of UK law: legislation and interpretation 1-025 (c) Sources of EU law: general 1-026 (d) The EU Treaty and intellectual property 1-028 (e) Conceptions of Judicial Precedent in the mixed IP systems of the EU and Member States affecting IPRs 1-029 (f) European Convention on Human Rights 1-030 (g) Legal issues across state boundaries; international conventions agreed between states 1-031 (h) International treaties: authority and applicability 1-034 (3) Challenges to intellectual property: political 1-036 (4) Challenges to intellectual property: technological 1-038 4. PROPERTY AND MONOPOLY: ECONOMIC APPROACHES 1-040 (1) Property rights 1-041 (2) Monopolist behaviour 1-044 (3) The presumption against monopoly 1-045 (4) Intellectual property and monopoly 1-046 5. DIVISION OF MARKETS AND THE EUROPEAN ECONOMIC AREA (1) Dividing markets 1-049 (2) Exhaustion of rights. 1-050 (3) The idea of a common market 1-051 (4) Free movement of goods 1-052 (5) Rules of competition 1-054 (6) Relation between the two policies 1-056 (a) Trade between Member States 1-057 (b) The economic counter-balance 1-058 (7) Overview of the parallel importation problem 1-059 2. THE ENFORCEMENT OF RIGHTS 1. TYPES OF PROCEEDING 2-004 (1) Civil causes of action 2-005 (a) Owners and licensees of intellectual property 2-006 (b) Defendants 2-007 (c) High Court and County Court 2-010