A Presentation of
Tilleke & Gibbins
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Bangkok * Phuket * Hanoi * Ho Chi Minh City
OVERLAPPING IP
TRADEMARK, PATENT,
COPYRIGHT OR DESIGN?
A COMPARATIVE ANALYSIS
Jakkrit Kuanpoth
Of Counsel
Tilleke & Gibbins Int’l Ltd.
Tilleke & Gibbins
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Advocates & Solicitors
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.
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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
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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
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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
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• Case law
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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?
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Quality King Dist. Inc., v. L’anza
Research Int. Inc., 523 U.S. 135 (1998)
• 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.
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• 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.”
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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.
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• 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.”
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• Case study
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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
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The Coca-Cola Company v Pepsico Inc
& Ors
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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.
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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
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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.
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Remington
Philips
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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.
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• 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.
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• How the law of countries
deals with the overlapping
issue?
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Dealing with IP overlapping
problems
• Judicial decisions
• Statutory bar
• Prepared to allow ‘some overlaps’
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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.”
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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
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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.”
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• 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.
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Thank you!
• Questions and/or comments?
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