QUESTION 1 (40 marks)
MEMORANDUM
To: Bilal Imran – Partner
From: Mirna Sulovic – Trainee
Date: [today]
Subject: PregnaForm Ltd – Potential actions against Maternity Wear Discounts
This memorandum will explain the causes of actions that PregnaForm Ltd (“Pregnaform”) may have against Maternity Wear Discounts (“MWD”) for selling a maternity belt that is very similar to Pregnaform’s product.
Pregnaform potentially has some cause of actions against MWD regarding its sale of the maternity belt which looks like Pregnaform`s belt. The relevant claims which can be raised by Pregnaform in this case are unregistered design right, passing off and copyright infringement. I will deal with each of these in turn.
Unregistered Design Right
The first potential claim Pregnaform has against MWD is for infringement of its UK unregistered design right (“UDR”). This right is given by the Copyright, Designs and Patents Act 1988 (“CDPA 1988”).
Under section 213 of the CDPA 1988, a design right protects the shape or configuration of the whole or part of an article. Here, the design is the "highly distinctive triangular configuration" of the maternity belt. This is about the shape of the belt, so it can be a design. For the right to exist, the design must be original. This means it can’t be commonplace in the design field at the time it was created. The facts say the belt is unlike other belts on the market, which suggests it is not commonplace and is an original design.
Ownership must also be established. Section 215 of the CDPA 1988 states that the designer is the first owner. Tanya Taggart came up with the design. The facts state she designed it “just after the company was incorporated”. She is the managing director and was running the company. It is very likely she created the design as an employee of Pregnaform, which would mean that Pregnaform owns the design right. If she created it in her own personal time before she was properly working for the company, then she might own it herself and would have to assign it to the company. Based on the facts, it seems Pregnaform is the owner.
Infringement of UDR is covered by section 226 of the CDPA 1988. This gives the owner the exclusive right to reproduce the design for commercial purposes. MWD is selling a belt with the “exact same triangular configuration”. This shows that they have copied the design and are selling it commercially. To prove infringement, Pregnaform must show that MWD copied its design. Because the MWD belt is identical and they are in the same market, it would be difficult for MWD to argue they came up with the exact same design independently. This looks like a strong claim for infringement.
Passing Off
Pregnaform may also have a claim in passing off. This is a common law action that protects the goodwill of a business from misrepresentation. To succeed, Pregnaform must prove three things, as set out in the Reckitt & Colman v Borden case (the Jif Lemon case).
- Goodwill: Pregnaform must show it has goodwill or reputation in its business. The facts state that Pregnaform’s designs were an “instant hit” and it “quickly became known for clothing that combined comfort with a highly fashionable look”. The belt is its “most popular and best-selling item”. This shows that Pregnaform has built up considerable goodwill in its brand and its products, especially the belt.
- Misrepresentation: Pregnaform must show that MWD has made a misrepresentation (whether intentional or not) that is likely to lead the public to believe that MWD’s goods are Pregnaform’s goods. MWD is selling a belt with the same design. It also uses a similar logo (a star with letters inside, with reversed pink/purple colours) and a similar-sounding slogan ("Making your life better" compared to "In the form of your life!"). This combination of factors could easily confuse a customer into thinking they are buying a Pregnaform product, or that MWD is somehow connected to Pregnaform. The fact that the MWD belt is of inferior quality is important, as customers might think Pregnaform’s quality has dropped, which damages their reputation.
- Damage: Pregnaform must show that it has suffered, or is likely to suffer, damage as a result of the misrepresentation. Pregnaform is likely to lose sales to MWD, as their belt is sold for half the price. There is also the risk of damage to Pregnaform`s reputation, as customers who buy the poor-quality MWD belt might think it was made by Pregnaform.
This seems to be a strong claim for Pregnaform.
Copyright
There is also a possible claim for copyright infringement, but it is weaker.
The Pregnaform logo (pink star, purple background, “PF” letters) could be protected by copyright as an original artistic work under section 4 of the CDPA 1988. Copyright protects against copying a substantial part of the work. The MWD logo is similar (purple star, pink background, “MWD” letters). It could be argued that the idea and arrangement has been copied. However, the letters are different and the colours are reversed, so MWD may argue they have not copied a substantial part.
The logo was created by an advertising agency, Ad Ex Ltd. Under section 11 of the CDPA 1988, the author is the first owner. This means Ad Ex Ltd would own the copyright unless there was an agreement that assigned the copyright to Pregnaform. This needs to be checked. If Pregnaform doesn’t own the copyright, it cannot sue for infringement.
The slogan "In the form of your life!" is probably too short to be protected by copyright as a literary work.
Conclusion
Pregnaform has strong potential claims against MWD for infringement of its unregistered design right and for passing off. A claim for copyright infringement of the logo is also possible, but it is less certain and depends on who owns the copyright and whether a substantial part has been copied.
QUESTION 2 (40 marks)
From: [email protected]
Date: [today]
Subject: Registered intellectual property protection for the "PregnaPillow"
Dear Tanya
Thank you for your email. It was good to see you yesterday.
I have considered what you told me about the new "PregnaPillow" and can provide some initial advice on the registered intellectual property rights that might be available. Registered rights give you a monopoly, which is stronger than the unregistered rights we discussed.
There are a few different rights you should consider for the pillow.
Registered Design
This right protects the appearance of a product. You mentioned that the shape of Niamh’s pillow is “unique and very different”.
- Why would it be available? A design can be registered under the Registered Designs Act 1949 if it is new and has ‘individual character’. This means no identical design is already public, and it creates a different overall impression on a user compared to earlier designs. As you believe the shape is unique, it is likely to meet these requirements. It is very important that you apply to register the design before you show it to the public at the maternity fair, as public disclosure can destroy the novelty of the design and prevent you from getting a registration.
- Who would own the right? The designer is the first owner. In this case, that is Niamh Spence. However, because she is an employee and created the design as part of her job, the right will automatically belong to her employer, PregnaForm Ltd.
- For how long would protection last? Protection lasts for a maximum of 25 years from the date of application, but you have to renew it every 5 years.
- What protection is provided? A registered design gives you the exclusive right to use the design. This means you can stop anyone else from making, selling or importing any product with the same design, or a design that doesn’t create a different overall impression. You would not need to prove that they copied you, which makes it a powerful right.
Patent
This right protects inventions. The most interesting part of your pillow is the special gel that absorbs and retains heat. This is a technical invention and could be patented.
- Why would it be available? To be patented under the Patents Act 1977, an invention must be new, involve an inventive step (i.e. not be obvious), and be capable of industrial application. From what you have said, the gel technology sounds “revolutionary” and is not something seen before. This suggests it is new and involves an inventive step. It can clearly be made and used, so it has industrial application.
- Who would own the right? The inventor, Niamh, would normally be the owner. However, like with the design, the law says that if an employee makes an invention during their normal duties, the invention belongs to the employer. As Niamh is your designer and came up with this for a new company product, PregnaForm Ltd would almost certainly own the patent rights.
- For how long would protection last? A patent lasts for up to 20 years from the date you apply, provided you pay the annual renewal fees.
- What protection is provided? A patent gives you a monopoly on your invention. You can stop anyone from making, using, or selling your patented gel technology without your permission in the UK.
Registered Trade Mark
You mentioned you want to call the pillow the “PregnaPillow”. This name can be protected as a registered trade mark.
- Why would it be available? A trade mark helps customers recognise your products. To be registered under the Trade Marks Act 1994, a mark must be distinctive. A potential issue here is that "PregnaPillow" is made up of "Pregna" (suggesting pregnancy) and "Pillow" (describing the product). A mark which just describes the product can be refused registration. However, you have an existing brand with "PregnaForm", so this may help argue the name is distinctive of your business. It is worth considering an application.
- Who would own the right? PregnaForm Ltd would be the owner, as the company applying for and using the mark.
- For how long would protection last? A trade mark can last forever. Registration is for 10 years, and you can renew it every 10 years.
- What protection is provided? It gives you the exclusive right to use that name for pillows and similar goods. It would stop a competitor from selling a “PregnaPillow” or a confusingly similar name for a similar product.
I would strongly advise you to start the application process for a registered design and a patent before you launch or exhibit the pillow at the fair.
Please let me know if you would like to discuss this further.
Kind regards
Bilal
QUESTION 3 (20 marks)
To: Raphael Knafo
From: Bilal Imran
Date: [today]
Subject: Use of "PregnaForm" as an advertising keyword
Dear Raphael
Thank you for the details you passed on about your online search for "PregnaForm" and the advert for BIM Ltd ("BIM") that appeared. I am writing to advise on whether what BIM have done infringes PregnaForm’s registered trade mark.
You have a UK registered trade mark for the word "PregnaForm". BIM has paid to use this word as a keyword, so that when someone searches for "PregnaForm", BIM's advert is displayed on the search results page.
The law in this area, under the Trade Marks Act 1994, has been looked at by the courts in cases like Interflora v Marks & Spencer. Using a trade mark as a keyword is considered 'use' of the trade mark. The key question is whether this use adversely affects the functions of your trade mark, especially its main function of indicating the origin of the goods.
Infringement happens if the advert does not enable a reasonably well-informed internet user to tell whether the goods being advertised are from the trade mark owner (PregnaForm) or from a third party (BIM).
In your case, BIM's advert does not feature the word "PregnaForm". Also, BIM sells different products to you – prams and car seats, not maternity clothing. An internet user searching for "PregnaForm" is looking for your products. When they see the BIM advert, it will likely be clear to them that BIM is a different company selling different (though related) baby products. Because the advert itself is not misleading and doesn't mention PregnaForm, it is unlikely that the user would be confused into thinking BIM is connected to you.
Therefore, it is unlikely that BIM’s actions have damaged the function of your trade mark. The user can still find your website easily, and the BIM advert doesn't pretend to be from you or an affiliate. For this reason, a court would probably find that there is no trade mark infringement here.
Regarding remedies, if there was an infringement, PregnaForm could seek an injunction to stop BIM from using the keyword, and also claim damages for any loss suffered. However, as it is unlikely that a court would find there has been an infringement, I would not advise pursuing these remedies at this stage. It is likely to be an expensive legal action with a low chance of success.
I hope this clarifies the position.
Kind regards
Bilal
References
Interflora Inc v Marks and Spencer plc [2014] EWCA Civ 1403
Google France SARL v Louis Vuitton Malletier SA (Joined Cases C-236/08 to C-238/08) [2010] ECR I-2417
Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491
Copyright, Designs and Patents Act 1988
Patents Act 1977
Registered Designs Act 1949
Trade Marks Act 1994
