Jakkrit Kuanpoth

Tilleke & Gibbins Int’l Ltd. Overlapping IP Trademark, Patent, Copyright or Design? A comparative Analysis Jakkrit Kuanpoth Of Counsel Tilleke & Gibbins Int’l Ltd.

Overlapping protection Two segments of IP are used for protection of a single creation to maximize the economic gains. Courts in countries generally oppose overlapping protection: Using rights in one segment of IP to extend rights belonging in another segment. It leads to expanding monopoly rights granted.

Problems of IP dual protection Undermine the structure of the IP system Defy the purposes of IP law which statutorily separates all the segments Overcompensate the right holder, thus undermining the purpose of the IP system

Overlapping IP rights: Permissible Patents and Plant Breeder Rights process patents and varieties of plant Trademarks and Patents brand names and active ingredients Copyright and Patents computer programs Designs and Trademarks 3D marks Geographical indications and Trademarks Collective marks; Certification marks

Overlapping IP rights: Not permissible Patents and Trade secret Disclosure or Confidentiality Patents and Plant Breeder Rights Varieties of plant Designs and Patents Product appearance or Solution to a technical problem Copyrights and Designs Artistic merit or Product appearance Geographical indications and Trademarks Sui generis GI system

Case law

Kraft Canada Inc. v. Euro Excellence Inc. (2004 ) Preventing parallel importation of trade-marked goods, by claiming copyright infringement The wrappers of the chocolate bars produced by Kraft were marked with words and pictures which were both registered trade-marks and copyrighted works. Kraft claimed there was a violation of their copyrights in the artwork on the wrappers. Harrington J. ruled against the parallel importer: The purpose of the Copyright Act as “to prevent unauthorized distribution of copyrighted works”. But the purpose of the copyright is to promote creativity, isn’t it?

Quality King Dist. Inc. , v. L’anza Research Int. Inc. , 523 U. S Facts: L’anza affixed copyrighted labels to all its products. L’anza also sold its products in Europe where they were subsequently purchased by the defendant and sold in California to unauthorized retailers. L’anza sued for copyright infringement of the labels affixed to its products. Both the District Court and the Court of Appeal held for L’anza.

US Supreme Court reversed the decisions. Jakkrit Kuanpoth US Supreme Court reversed the decisions. The decision was really based on public policy grounds: “In construing the statute, however, we must remember that its principal purpose was to promote the progress of the ‘useful Arts’ ... by rewarding creativity, and its principal function is the protection of original works, rather than ordinary commercial products that use copyrighted material as a marketing aid.”

Rucker Co. v Gavel’s Vulcanizing Ltd., 7 C.P.R. (3d) 294, [1985] Use of copyright to expand patent protection Claim copyright protection in drawings incorporated in a patent registration in order to obtain protection for machinery made from the drawing after the patent for inventions had expired The Federal Court of Canada: rejecting the notion of using Copyright Act to expand rights granted under another segment of the IP system.

The Federal Court: “I strongly believe that it was not the intention of Parliament nor from a practical view is it desirable that the Patent Act, the Copyright Act, and the Industrial Design Act should be interpreted so as to give overlapping protection.” “Something suitable for industrial design cannot be registered for copyright, as the statute states, and something for which a patent is granted should not also be given double protection for an extended period of time by registering for copyright drawings from which the patented object was made.”

Case study

Product shapes Patents – a pure technical solution to a technical problem Copyright – artistic merit Design – a product’s visual appearance 3D mark – distinctiveness but not a technical solution

The Coca-Cola Company v Pepsico Inc & Ors

Fact Oct 14, 2010 – Federal Court of Australia Coca-Cola: Only it has the right to forming what it calls the ‘contour bottle’, which is protected by 4 registered trade marks in Australia. Coca-Cola: Pepsi co Inc, its local subsidiary, Pepsi co Australia Holdings, and its licensee, Schweppes Australia, have been selling Pepsi in infringing bottles in Australia.

Claims by Coca-Cola Trade mark infringement under Section 120(1) of the Trade Marks Act 1995 (Cth) Breach of Sections 52 and 53 of the Trade Practices Act 1974 (Cth) Coca Cola claims Pepsi and Cos have engaged in conduct which is misleading or deceptive or is likely to mislead or deceive in breach of section 52 of the TPA. Passing off

Pepsi’s defence – it’s not using bottle as a trade mark Deceptive similarity Coca-Cola: Pepsi’s bottle contains a pinch near the bottom and a narrowing from the waist up, which Coca-Cola argues is ‘deceptively similar’ to its own. Pepsi: Due to Pepsi’s own reputation, consumers, on seeing Pepsi and Pepsi Max products for the first time, would not think that the shape of its glass bottle was a trade mark (distinguishing its products from other manufactures). Functionality Pepsi: Pepsi’s bottle was designed to make the bottle comfortable to hold.

Remington Philips

Koninklijke Philips Electronics NV v Remington Products Australia Pty Limited [2000] Philips failed to establish trade mark infringement of its triple head shaver shape mark. The use of the shape by Remington is not a use as a trade mark. Functionality! The purpose of the exclusion of functional shapes was to prevent undertakings from obtaining exclusive rights over technical developments that should be the subject of a patent.

The Federal Court of Australia: “a shape can ... be registered as a trade mark if it is the shape of the whole or part of the relevant goods, so long as the goods remain distinct from the mark.” The functional shape was not to distinguish the goods on the basis of their origin, but on the basis of their functionality.

How the law of countries deals with the overlapping issue?

Dealing with IP overlapping problems Judicial decisions Statutory bar Prepared to allow ‘some overlaps’

UK law The Copyright, Designs and Patents Act 1988 Section 51 provides: “(1) It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work … to make an article to the design or to copy an article made to the design … (3) In this section, ‘design’ means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration; and ‘design document’ means any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise.”

Section 51, 3 elements required Whether there is a design document; What this document embodies i.e. either a design for an artistic work or a design for something other than an artistic work; and To make an article to the design or to copy an article made to the design

Australian law ‘Corresponding design’ defence, s. 74(1), 75-77 of the Copyright Act. Section 75 (registered designs): “Where copyright subsists in an artistic work (whether made before the commencement of this section or otherwise) and a corresponding design is or has been registered under the Designs Act 1906 on or after that commencement, it is not an infringement of that copyright to reproduce the work by applying that, or any other, corresponding design to an article.”

Section 77 (unregistered designs): Where copyright subsists in an artistic work (other than a building or a model of a building, or a work of artistic craftsmanship), and the corresponding design is not registrable or has not been registered. If the copyright owner or licensee industrially applies the corresponding design to articles which are then dealt with commercially, then it is not an infringement of copyright to reproduce the work by applying the corresponding design. ‘Applied industrially’ refers to it is applied to more than 50 articles.

Thank you! Questions and/or comments?