ENGLAND & WALES Law and Practice Contributed by: James Ross, Paolo Palmigiano, Debbie Cloake, Helen Farr, Debbie Heywood and Louise Popple, Winston Taylor
7. Intellectual Property 7.1 Patents
• afford the undertakings concerned the possibility of eliminating competition in respect of a substan - tial part of the products in question. If an agreement is investigated, the CMA can impose fines on undertakings that violate the prohibition of up to a maximum of 10% of their worldwide turnover. 6.4 Abuse of Dominant Position Chapter 2 of the Competition Act 1998 prohibits any conduct by one or more undertakings that amounts to the abuse of a dominant position in a market within the UK, and partially prohibits it if it may affect trade within the UK. An undertaking is considered dominant if it can act independently of competitive pressures (eg, setting prices, controlling supply or hindering competitors’ ability to operate in the market). There is a rebuttable presumption of dominance if an undertaking has a share of the relevant market of more than 50%, and CMA guidance confirms that less than a 40% share is unlikely to create dominance. Section 18 (2) of the Act sets out examples of abuse, including the following: • directly or indirectly imposing unfair purchase or selling prices, or other unfair trading conditions; • limiting production, markets or technical develop - ment to the prejudice of consumers; • applying dissimilar conditions to equivalent trans - actions with other trading parties, thereby placing them at a competitive disadvantage; and • making the conclusion of contracts subject to acceptance by the other parties of supplementary obligations that, by their nature or according to commercial usage, have no connection with the subject of such contracts. If it can be shown that the behaviour is objectively justified, it will not be abusive even if competition is restricted. It is for the dominant undertaking to prove the justification. If conduct is investigated, the CMA can impose fines on dominant undertakings of up to 10% of their worldwide turnover.
Patents are exclusivity rights that protect products and processes of a technical nature. The subject matter of protection must be novel and inventive, and must sat - isfy several other statutory requirements, for the pat - ent to be valid. Patents last 20 years, but protection may be extended in the case of a medicinal product by up to a further five years by a supplementary pro - tection certificate. Patents are normally registered in national patent offices once granted, but the unitary patent (which has pan-European protection for 18 countries rather than a single country) is registered at the European Patent Office. Depending on the nature of the patent, it may be enforced in infringement pro - ceedings in the national courts or the Unified Patent Court. Remedies for infringement typically include damages and injunction. 7.2 Trade Marks Broadly, a trade mark is any sign capable of distin - guishing the goods and services of one undertak - ing from those of others. A trade mark can consist of, for example, words (including personal, business and brand names), logos, patterns, letters, numerals, colours, sounds, motions, holograms, videos and the shape of goods or their packaging. Provided they are not cancelled, trade mark registrations subsist for ten years from the date of registration and can be renewed (potentially indefinitely) for successive periods of ten years on payment of a fee. No proof of use is required for renewal. Trade mark protection can be obtained by filing an application with (i) the UK IP Office or (ii) the World Intellectual Property Organization (WIPO) for an international mark designating the UK. The latter can be cheaper and administratively easier if applications for the same mark are being filed in numerous juris - dictions. Trade marks must be registered for specific goods and/or services. Protection for one good/service will not necessarily mean that the owner can prevent third-party use of the same mark for other goods/services. Unlike some other jurisdictions, a trade mark does not need to have been used for an application to be filed. However, once registered, if a mark is not put to genuine use for a continuous period of five years in the UK, it can
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