UK Law and Practice Contributed by: Jamie Singer and Flora Peel, Onside Law
5.2 Copyright/Database Rights Copyright
must have regard to when sentencing criminal offences under the TMA. This has been a sig - nificant development that should further deter counterfeiters and provide a degree of protection from abuse of registered trade marks. One of the most significant changes is the assessment of harm – this is now based on the equivalent retail value of the genuine goods being counterfeited. In 2022, the UK IPO raised bad-faith objec - tions to refuse the registration of the names of a couple of famous footballers by a third party. Although relatively rare, bad faith can be used as a reason to reject an application. The QC stated in this case that it was the duty of the registrar to raise these issues in order to protect both the consumer who might be misled, as well as the famous individuals themselves. Registration Advantages A registered trade mark has the following key advantages: • the period of protection is perpetual in theory (provided it is renewed every ten years and certain other conditions are satisfied); • the holder has a monopoly right over the registered brand in respect of the goods and services for which it is registered; and • the process for enforcing against infringers is more efficient and cost-effective than it is for unregistered rights. As an example, British Gymnastics success - fully argued a trade mark infringement against UK Gymnastics, relying on its registered trade marks. This case was taken to the Court of Appeal and subsequently held as a breach, based on the overall impression of the trade mark. The case demonstrated the importance of being able to rely on a registered trade mark.
The UK’s copyright law is laid down in the Cop - yright, Designs and Patents Act 1988 (CDPA), whereby copyright: • arises automatically (it does not require regis - tration); • is designed to protect the results of creative output; and • is formed as soon as that output is created and fixed in material form. In general, ownership of the copyright is vested in the “author” of the work, with copyright pro - tection lasting until: • 70 years after the author’s death for literary, dramatic, musical or artistic works (and in the case of films, 70 years after the death of the director, screenplay author and composer); • 70 years from first publication in relation to sound recordings; and • 50 years from first publication in respect of broadcasts. Defences There are various “permitted uses” under the CDPA which serve as a defence for alleged copyright infringement (such as non-commercial research and reporting), but in most instances the user must attribute sufficient acknowledge - ment to the copying. “Fair dealing” must also be established in some cases, requiring the user to demonstrate that the copying does not exceed what an honest and fair-minded person would consider to be justified. This has no statutory definition and is assessed on a case-by-case basis, depending on the facts in hand. There is also the common law defence of “public interest” .
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