to allow fair dealing with acknowledgement provided
that the work has been made available to the public. Mak-
ing available to the public includes Internet publication.
3 Library copying.Copying works in libraries will be
permitted only if required for non-commercial purposes
or private study. Any other copying will require a licence,
and some libraries are considering the taking up of licences.
Other matters of general interest are that it becomes
an offence to supply a person with the means to get
round anti-copying protection on CDs: and injunctions
can be obtained against an Internet service provider if he
or she has actual knowledge that another person is using
the service to infringe copyright.
Trade marks
Types of trade marks
There are two types of trade marks:
■common law or unregistered trade marks; and
■registered trade marks.
A common law trade mark is any mark which has
been so widely used on or in connection with a certain
class of goods that it can be shown that the public recog-
nised goods with such a mark as coming from the owner
of the mark. The remedy to restrict improper use is a
passing-off action. In this category would come ‘Persil’
and ‘Polaroid’, which are household names in regard to
the products concerned.
Registered trade marks
The law of registered trade marks in the UK was
reformed by the Trade Marks Act 1994 which came into
force on 31 October 1994. The impetus for the Act was
the implementation of the EC Trade Marks Directive
(89/104) which harmonised the law of trade marks
throughout the EC. The distinction between trade marks
on goods and on services, e.g. the black horse of Lloyds
Bank, has gone. These are now under the same law. Also
abolished was the system of registration as a Part A mark
or a Part B mark. The main provisions which affect UK
law appear below.
Definition
Section 1 of the Act states that a trade mark is any
sign capable of being represented graphically which is
capable of distinguishing goods or services of one
undertaking from those of others. It can include words
(including personal names), designs, letters, numerals
or the shape of goods or their packaging. It is also ex-
pected to include sounds, smells and colours. The first
application for registration of a smell was the scent of
roses impregnated into Sumitomo tyres.
However, the registration of smells may now have
become harder since the German Patent and Trade Mark
Office (supported by the European Court of Justice)
turned down a trade mark application for the smell of a
scent described as ‘balsamically fruity with a slight hint
of cinnamon’. It appears that non-visual trade marks
can be registered if they are capable of being represented
graphically. Thus, in Shield Mark BV v Kist(2004) the
European Court ruled that a mark consisting of the first
five notes of Beethoven’s composition ‘Für Elise’ could
be the subject of a trade mark. The claimant used the
sound in advertising its wares on radio commercials that
commenced with the notes and on stands at bookshops
and newspaper kiosks where removal of its news sheets
from the stand caused the tune to play. It is, of course,
possible to represent the notes graphically on a musical
stave. The sound of a cockcrow was turned down in the
same case.
Although personal names are allowed, they must
comply with s 3 which allows the refusal of registration
where the so-called mark is not distinctive. Thus, if Mr
Brown trades in a business name of Brown & Co, this
cannot be registered as a mark since it is not distinctive.
In this connection it is of interest to note that the Court
of Appeal held in Elvis Presley Enterprises Inc vSid Shaw
Elvisly Yours(1999) that the name Elvis Presley was too
well known to have the inherent distinctiveness which is
required for a registered trade mark for goods such as
perfumes, soaps and other toiletries. The Trade Mark
Registrar had therefore been in error when he registered
the name in favour of Elvis Presley Enterprises Inc. The
court decided in favour of a London businessman, Sid
Shaw, who had been trading in Elvis products since 1979
and could continue to do so.
Mr Shaw also complained that the Elvis Presley
Enterprises registration was an infringement of his own
registration of the expression ‘Elvisly Yours’ as a trade
mark, which is, of course, registrable since it is not merely
a name. The court quoted from the judgment in Du
Boulayv Du Boulay(1896) where it was said:
‘... in this country we do not recognise the absolute right
of a person to a particular name to the extent of entitling
him to prevent the assumption of that name by a stranger... [this] is a grievance for which our law affords no
redress.’
Part 4Business resources