A Casebook on the Enforcement
of Intellectual Property Rights
4th Edition
L.T.C. Harms

A Casebook on the Enforcement
of Intellectual Property Rights
4th Edition
L.T.C. Harms

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Table of contents
Preface 4th edition

5

Foreword

6

Chapter 1
Introduction:
The world of intellectual
property law
A.
B.
C.
D.
E.
F.

Introduction
What is ‘intellectual property’?
National law and
international instruments
Territoriality
Editorial policy
Useful websites

Chapter 2
Trademark law principles
A.
B.
C.
D.
E.

Trademark law sources
Definition of a ‘trademark’
‘Capable of distinguishing’
Registration
Public interest and balancing
of rights

Chapter 3
Infringement of
registered trademarks
A.
B.
C.
D.
E.
F.
G.
H.

Introduction
Elements of infringement of
registered trademarks
The subjective element in
trademark litigation
Registration
Identical marks
Similar marks
Similar goods or services
Use in the course of trade and
trademark use

Chapter 4
Trademarks: similar marks
and confusion
A.

7
8
9
10
12
13
13

15
16
17
19
21
22

27
28
29
29
30
31
32
32
33

37

The relevance and meaning
of confusion
Who must be confused?
Global appreciation
Evidence

38
39
40
43

Chapter 5
Trademark infringement:
well-known trademarks

45

B.
C.
D.

A.
B.
C.

Introduction
Trademark dilution
Protection of foreign
unregistered trademarks

Chapter 6
Trademark infringement
and unfair competition
A.
B.
C.
D.

Introduction
Passing-off
Extended passing-off
Geographical indications
(indications of origin) and collective
(certification) marks

Chapter 7
Copyright principles
A.
B.
C.
D.
E.

Copyright law sources
The nature of copyright
Moral rights
Balancing private
and public interests
Related rights

46
46
49

51
52
52
56

57

59
60
61
62
63
68

Chapter 8
Enforcement of
copyright: subsistence

71

A.
B.
C.
D.
E.
F.
G.

72
72
74
75
77
77
78

Introduction
Ownership and authorship
‘Work’
Originality
Criteria of eligibility for protection
Fixation
Proving subsistence of copyright

Chapter 9
Copyright: the infringing act

79

A.
B.
C.

80
80
86

Introduction
Direct infringement
Indirect (secondary) infringement

Chapter 10
Patent principles
A.
B.
C.

Introduction
Structure of a patent specification
Balancing patent rights and
public interest

87
88
89
91

Chapter 11
Patent infringement

97

A.
B.
C.
D.
E.
F.

98
100
101
101
103
104

Introduction
Primary rules of interpretation
Equivalence
Purposive construction
New approach?
Japanese approach

Chapter 12
Industrial designs

105

A.
B.
C.

106
108
113

Introduction
Visual assessment
Exclusions

Chapter 13
Unfair (unlawful) competition

115

A.
B.
C.

116
117
119

Introduction
Trade secrets
Remedies

Chapter 14
Civil remedies
A.
B.
C.
D.
E.

The TRIPS Agreement
Temporary injunctions
Injunctions (interdicts)
Damages
Disposal of infringing
and counterfeit goods

121
122
122
126
128
136

Chapter 15
Criminal enforcement of IP rights 139
A.
B.
C.
D.

Introduction
Trademark counterfeiting
Copyright piracy
Sentencing

140
143
150
154

Chapter 16
Enforcement of IPRs in the digital
and internet age
159
A.
B.
C.
D.
E.

Introduction
Copyright issues
Trademark infringement issues
Intermediaries
Jurisdictional issues

160
160
167
170
171

Preface
4th edition
Intellectual property (IP) violations remain a global
concern. This is reflected, inter alia, in a constant
high demand for IP enforcement-related technical
assistance addressed to WIPO by its Member States.
Within the mandate of the Advisory Committee on
Enforcement (ACE), the World Intellectual Property
Organization (WIPO) services include legislative advice,
specialized training as well as educational and awareness programs, seeking to assist Member States in
further developing effective and balanced IP enforcement systems, in the interest of socioeconomic development and consumer protection.
In this context, Member States continuously emphasize
the need for improved access to case law developments
relating to IP enforcement. In response to this demand,
the Honorable Justice Harms, former Deputy President
of the Supreme Court of Appeal of South Africa and
renowned international expert in the field, was asked
to prepare the WIPO Casebook on the enforcement of
intellectual property rights; the first edition focusing on
common-law jurisdictions, the second covering both
common-law and civil-law jurisdictions, and the third
updating the court decisions and creating a chapter on
criminal enforcement of IP.

WIPO is grateful to Mr. Justice Harms for preparing
this new edition. It is a compilation of IP enforcementrelated case law from a great number of courts and
tribunals, providing a thorough analysis rather than a
simple quotation of common and civil law jurisprudence,
underscoring similarities and, where appropriate, highlighting differences. It covers the most recent decisions
on topical issues in common and civil law jurisdictions
(including the case law of the Court of Justice of the
European Union). In addition, it emphasizes the jurisprudence in the area of copyright and trademark rights.
I am convinced that this fourth edition, like the first three
editions, will constitute a relevant tool to further improve
the handling of IP cases in developing countries and
to enhance confidence in the IP system.

Francis Gurry
Director General

The Casebook proved to be popular and an excellent
training tool for the judiciary, law enforcement officials,
attorneys and rights holders. Building on this success,
WIPO has requested Mr. Justice Harms to update and
further develop this important publication. The present
work is the fourth edition thereof.

5

Foreword
A fourth edition of any work requires an explanation
from the author. With a casebook on intellectual property law, the prime excuse is the avalanche of new, not
necessarily novel, case law and the dynamic nature of
the discipline. There are further reasons.
The general move from analogue to digital required an
edition aimed at internet users. Consequently, judgments and other material used are invariable accessible on the internet and have been linked to the text
for instant access.
Teaching after my retirement from the bench as Adams
& Adams Professor in Intellectual Property Law at the
Law School of University of Pretoria (graded as one of
the top 100 in the world) and as resource person for
WIPO has taught me much and is in part the cause of
many substantive changes to the text. These include
emphasis on the balancing of intellectual property
rights; rearrangement of material; deletion of matter
of lesser importance; greater emphasis on issues that
are relevant for judiciaries and law enforcement agencies in developing countries; and special attention on
enforcement in the digital era.
Acknowledgements in the third edition stand, but it
is necessary to recognize again the active support
and encouragement of WIPO’s Building Respect for
Intellectual Property Division and that of my wife, Irene,
who does not accept that I am retired.
Errors and omissions, as always, remain my responsibility, and the views expressed are not those of WIPO
but my own.

Louis Harms
April 2018
Pretoria

6

INTRODUCTION: THE WORLD OF INTELLECTUAL PROPERTY LAW

Chapter 1
Introduction:
The world of intellectual property law
A. Introduction

8

B. What is
‘intellectual property’?

9

C. National law and
international instruments

10

D. Territoriality

12

E. Editorial policy

13

F. Useful websites

13

7

CASEBOOK ON IP ENFORCEMENT

A. Introduction
1. Objective: This work was written at the request of the
World Intellectual Property Organization (WIPO), more
particularly the WIPO Building Respect for Intellectual
Property Division, and for its purposes.1 The division’s focus
on enforcement has changed, as has its name, which was
the Enforcement Division. Consequently, the main subject
of this work is the enforcement of intellectual property
rights (IP rights or IPRs) in the context of balancing IP rights
against the public interest. It should be emphasized that the
views expressed are those of the author and not of WIPO.
2. Readership: The work is intended for those (mainly in
the developing world) who are involved in the enforcement of IP rights, such as judicial officers in both civil
and criminal courts, lawyers, prosecutors as well as law
enforcement officers and customs officials.
3. Subjects covered: The main focus is the protection of
trademarks and copyright through civil and criminal law.
The discussion of patents and designs is limited because
their enforcement is infrequent and of relatively less importance in the target jurisdictions. The droit romain legal
tradition is covered by WIPO publication L’application des
droits de propriété intellectuelle,2 and the Spanish legal
tradition by La observancia de los derechos de propiedad
intelectual.3 This work does not intend to overlap with them.
4. Sources: Because this is a ‘casebook’ (or source
book) and has to cover a large number of jurisdictions,
a major selection criterion is the accessibility of judgments. Internet links, accessed during the preparation
of this edition, are provided where possible. Because
IP litigation is less prevalent in developing countries,
and case law not always available, the use of a broader
selection of jurisprudence was not feasible.
5. Generalizations: It will soon become apparent that
intellectual property law has two main sources, namely,
international conventions or agreements and national
statutory law.

Although national laws are, in general, based on these
international treaties, it does not follow that national
laws are all the same. 4 Even within the two general legal
traditions, common and civil, laws differ from jurisdiction to jurisdiction; and every individual system of law
has its own history and development, which accords
with its own legal culture, statutes and judge-made law.
It would thus be wrong to assume that there is a unified
or single common-law or civil-law IP law system or that
IP law and practice of different jurisdictions correspond.
Even where the laws of different countries may bear
substantial similarity, the differences between any two
legal cultures may result in different outcomes in any
particular case on the same facts.
This exercise consequently contains many generalizations because it is basic and the degree of exposure to
IP law by those who may have occasion to use it may
vary considerably.
HARVARD COLLEGE v. CANADA (COMMISSIONER
OF PATENTS) 2002 SCC 765:
Intellectual property has global mobility, and
states have worked diligently to harmonize
their patent, copyright and trademark regimes.
Legislation varies of course, from state to state,
but broadly speaking Canada has sought to
harmonize its concepts of intellectual property
with other like-minded jurisdictions. The mobility of capital and technology makes it desirable
that comparable jurisdictions with comparable
intellectual property legislation arrive (to the
extent permitted by the specifics of their own
laws) at similar legal results.
6. Common law and civil law – a comparison: The differences between the substantive provisions of IP laws
in common-law and civil-law countries are, subject to
the foregoing, relatively small.
The differences between the two systems are, in the
present context, mainly procedural. The common-law
judge plays a less active role in the proceedings than

1.

2.
3.

8

Its website is http://www.wipo.int/enforcement/en/.
Enforcement issues are discussed at meetings of
WIPO’s Advisory Committee on Enforcement (ACE):
www.wipo.int/enforcement/en/ace/.
http://www.wipo.int/edocs/pubdocs/fr/wipo_pub_629.pdf.
http://www.wipo.int/edocs/pubdocs/es/intproperty/627/
wipo_pub_627.pdf.

4.
5.

Statutory IP texts are normally accessible through the WIPO
webpage at http://www.wipo.int/portal/en/index.html.
See also Human Genome Sciences Inc v. Eli Lilly and
Company [2011] UKSC 51; Beecham Group Plc v.
Triomed (Pty) Ltd [2002] ZASCA 109.

INTRODUCTION: THE WORLD OF INTELLECTUAL PROPERTY LAW

the civil-law judge because, in the case of the former,
the parties tend to drive the litigation, while in the
latter, cases are judge-driven. Judges in common-law
countries at first instance (and on appeal) are seldom
specialists in the particular field of litigation and as a
general rule do not sit with experts or use court experts.
It is often different in civil-law countries.
7. Precedents: The common law lays greater emphasis
on the value and binding force of precedents than does
the civil law and, consequently, judgments in commonlaw countries tend to be more wide-ranging than in civillaw countries. As Sir Stephen Sedley (a former appellate
judge from England and Wales) explained,6 the prose
form of common-law judgments remains that of the oral
judgment, and the oral judgment at base represents the
process of thinking aloud. Civil-law judgments are more
closely reasoned and somewhat formalistic in the sense
that they are not self-explanatory and therefore not as
elaborate and loquacious as common-law judgments. 7
Appellate judgments in the civil tradition usually answer
legal questions put to that court (a cour de cassation)
and refer the case back to the lower court for finalization
while appeal judgments in the common-law tradition
may raise new legal issues and involve a reconsideration of the factual underlay, and usually lead to the
final disposal of the case without a reference back.
Dissenting or concurring judgments are not widespread
in the civil tradition.
8. U.K. jurisprudence: The jurisprudence of the United
Kingdom was a major source of information and inspiration for the judiciaries of most of the common-law world
but is now of a different value. Due to European Union
(EU) law and directives, the United Kingdom was drawn
more and more into the civil-law tradition although the
future is uncertain. Conversely, the continental civil law
is influenced by common-law principles.
9. USA jurisprudence: Another warning for those interested in comparative exercises concerns the law of the
United States of America. It is determined by the fact
that much of its IP law is derived from its Constitution
and its federal nature (although not all trademark,

6.
7.

Stephen Sedly. (2007). Second time around. London
Review of Books, 29(17), 14–15.
See also Dieter Stauder and David Llewelyn. (2004).
Oskar Hartwieg's thoughts on the English legal system.
In Vaver, D. and Bently, L. (eds), Intellectual Property
in the New Millennium: Essays in Honor of William R.
Cornish. Cambridge: Cambridge University Press, 56.

unfair competition or copyright issues are federal),
and it differs in many respects from the laws of other
common-law jurisdictions that had or have closer or
more recent ties with the United Kingdom and whose
constitutions do not create a similar diversity.

B. What is ‘intellectual property’?8
10. Right to imitate: Aristotle in Περὶ ποιητικῆς (Ars
Poetica in Latin), written in about 335 BCE, already
recognized that we all learn by imitation.
Not all imitation is unlawful. On the contrary,
imitation may be said to be the essence of
life. From the cradle to the grave man imitates
his fellow-men in speech and song, habits,
fashions and fads. Imitation is also, therefore,
legitimate in business, up to a point.9
IP rights limit the right to imitate in a particular manner
in the public interest for a limited period of time.
11. The Stockholm Convention: Intellectual property is
defined in the Stockholm Convention,10 which established WIPO. This Convention states that intellectual
property includes the rights related to:
• literary, artistic and scientific works,
• performances of performing artists, phonograms
and broadcasts,
• inventions in all fields of human endeavor,
• scientific discoveries,
• industrial designs,
• trademarks, service marks and commercial names
and designations,
• protection against unfair competition and
• all other rights resulting from intellectual activity
in the industrial, scientific, literary or artistic fields.
12. Formalities: Some IP rights depend for their existence on formalities, while others are not so dependent
and exist by virtue of creation. Patents, industrial
designs and trademarks are registered rights and are
only enforceable once they have been granted (although

As useful reference work, see WIPO. (2017). Introduction
to Intellectual Property: Theory and Practice. Second Ed.
Kluwer Law International.
9. Lorimar Productions Inc v. Sterling Clothing Manufacturers
(Pty) Ltd 1981 (3) SA 1129 (T) [South Africa].
10. http://www.wipo.int/treaties/en/text.jsp?file_id=283854.
8.

9

CASEBOOK ON IP ENFORCEMENT

trademark registrations may have retroactive effect).
The subsistence of copyright, on the other hand, does
not depend on any formalities, such as registration.
13. Overlap of rights: The same commercial object may
incorporate or reflect different IP rights, and the same
intellectual endeavor may be protected by more than
one IP right. For instance, a label may be entitled to
trademark and copyright protection, and a container
may be entitled to both trademark and design protection. This, however, does not justify the blurring of the
differences between the different IP rights; each must
be kept within its strict statutory limits.11
14. Balancing of IP rights: Because IPRs are not absolute, they have to yield to other rights and must be
balanced against the public interest, and they are
dependent upon public policy considerations.
Excessive control by holders of copyright and other
forms of intellectual property may limit unduly the
ability of the public domain to incorporate and embellish creative innovation in the long-term interests of
society as a whole or create practical obstacles to
proper utilization.12
The Agreement on Trade-Related Aspects of Intellectual
Property Rights (the TRIPS Agreement)13 requires a
balancing of rights and obligations (Art. 7):
The protection and enforcement of intellectual property rights should contribute to the
promotion of technological innovation and to
the transfer and dissemination of technology,
to the mutual advantage of producers and
users of technological knowledge and in a
manner conducive to social and economic
welfare, and to a balance of rights and obligations.
The Supreme Court, the First Petty Bench, of Japan,
for instance, said that ‘the protection of the rights of the
by the Copyright Law needs to be realized in harmony
with public and social interests.’14

11. Roland Corp. v. Lorenzo & Sons Pty Ltd (1991) 105 ALR
623; Kirkbi AG v. Ritvik Holdings Inc 2005 SCC 65.
12. Théberge v. Galerie d’Art du Petit Champlain inc 2002
SCC 34.
13. https://www.wto.org/english/docs_e/legal_e/27-trips.pdf.
14. Case: 2001(Ju) No.952, Minshu Vol 56 No 4 808.

10

BRISTOL-MYERS SQUIBB CO v. CANADA
(ATTORNEY GENERAL) 2005 SCC 26:15
Our court has often spoken of the balance
struck under the Patent Act in which the public
gives an inventor the right to prevent anybody
else from using his or her invention for a period
of 20 years in exchange for disclosure of
what has been invented. As a general rule,
if the patent holder obtains a monopoly for
something which does not fulfil the statutory
requirements of novelty, ingenuity and utility,
then the public is short-changed.
JT INTERNATIONAL SA v. COMMONWEALTH OF
AUSTRALIA [2012] HCA 43:
There are and always have been purposive
elements reflecting public policy considerations which inform the statutory creation of
intellectual property rights. The public policy
dimensions of trademark legislation and the
contending interests which such dimensions
accommodate were referred to in Campomar
Sociedad, Limitada v Nike International Ltd. The
observation in that case that Australian trade
marks law has manifested from time to time a
varying accommodation of commercial and
the consuming public’s interests applies with
varying degrees of intensity to other intellectual
property rights created by statute. Intellectual
property laws create property rights.

C. National law and
international instruments
15. Relationship between national law and international
obligations: Intellectual property law has both a national
and an international aspect.
IP law is statute-based, and IP laws are, accordingly,
first and foremost territorial and apply only within the
particular jurisdiction. They are, though, as mentioned,
based on international conventions and treaties.
The international instruments seek to (a) harmonize IP
laws and (b) provide for minimum levels of protection in

15. Cf. Metro-Goldwyn-Mayer Studios Inc v. Grokster Ltd
380 F.3d 1154.

INTRODUCTION: THE WORLD OF INTELLECTUAL PROPERTY LAW

all jurisdictions. They, accordingly, establish guidelines
for uniform definition and uniform protection of IP rights.
A major objective of these conventions and treaties is to
ensure that citizens and residents of one country receive
recognition for and protection of their IP rights, more
particularly, that a foreigner will be entitled to the same
rights as those accorded to nationals. This is referred
to as ‘national treatment.’ In other words, IP laws may
not, in general terms, discriminate against foreigners.16
16. WIPO conventions and treaties:17 Of importance
for present purposes are the Paris Convention for the
Protection of Industrial Property of March 20, 1883,18
the Berne Convention for the Protection of Literary
and Artistic Works of September 9, 188619, and the
more recent WIPO Copyright Treaty20 and the WIPO
Performances and Phonograms Treaty.21 Other treaties
administered by WIPO, such as the Patent Cooperation
Treaty, the Trademark Law Treaty and the Treaty on the
Law of Trademarks, fall beyond the scope of this work.22
17. TRIPS Agreement: Countries that are members of
the World Trade Organization (the WTO) are necessarily parties to the General Agreement on Trade and
Tariffs and, consequently, to the schedule containing
the Agreement on Trade-Related Aspects of Intellectual
Property Rights,23 also known as the TRIPS Agreement.
The TRIPS Agreement requires of member states of
the WTO to have laws in place that provide substantive
provisions for the recognition of IP rights, in particular
in respect of copyright and related rights (Section 1),
trademarks (Section 2), and patents (Section 5).

16. There is a related principle of ‘most-favorednation’ treatment. The effect of this is that any
advantage, favor, privilege or immunity granted
by a member country (which is party to the TRIPS
agreement – see below) to the nationals of any
other country is accorded unconditionally to
the nationals of all other member countries. The
TRIPS Agreement was the first agreement to
adopt the ‘most-favored-nation’ treatment as a
principle in relation to the protection of IPRs.
17. For details see WIPO. (2017). Introduction to
Intellectual Property: Theory and Practice.
Second Ed. Kluwer Law International.
18. http://wipo.int/treaties/en/ip/paris.
19. http://www.wipo.int/wipolex/en/details.jsp?id=12214.
20. http://www.wipo.int/treaties/en/ip/wct/.
21. http://www.wipo.int/treaties/en/ip/wppt/.
22. http://www.wipo.int/treaties/en/
23. https://www.wto.org/english/docs_e/
legal_e/27-trips_03_e.htm.

The TRIPS Agreement sets minimum IP law standards,
and member countries are free to impose higher standards. Member countries are also free to determine
the appropriate method of implementing the provisions of the Agreement within their own legal systems
and practices.
Local laws also have to comply with the minimum standards for IP protection: the TRIPS Agreement places an
obligation on member countries to provide for remedies
and enforcement procedures (most of which are fairly
common in both the civil-law and common-law traditions) that are to be at the disposal of rights holders.
18. Effect of international instruments on interpretation:
TWG TEA CO PTE LTD v. TSIT WING (HONG KONG)
CO LTD [2016] HKCFA 2:
Before turning specifically to the text of s 18(3)
and the issues of construction which arise,
attention first should be given to any relevant
international arrangements. Article 16(1) of the
1994 Agreement on Trade-Related Aspects
of Intellectual Property Rights (‘the TRIPS
Agreement‘) states: [quoted by the Court but
omitted here].
Hong Kong acceded to TRIPS with effect
1 January 1995, as did the European Union
and the United Kingdom. If there are several
reasonably possible interpretations of a statutory provision such as s 18(3), the Court should
favour that which is consistent with the international obligation found in Art 16(1) of TRIPS.
19. TRIPS compliance by member states: This work is
based on the minimum requirements laid down by the
TRIPS Agreement.24 The question of whether TRIPS
forms part of national law creating rights for citizens
and residents depends on local law.

24. In accordance with Article 66 TRIPS, the least
developed countries (LDCs) that are members of
the WTO had until 2013 to comply with the TRIPS
provisions (and until 2016 for the provisions on
pharmaceuticals), without prejudice to a further
extension if so decided by the council for TRIPS.
Extensions have been granted, and the matter
is pending: http://www.ictsd.org/bridges-news/
bridges/news/least-developed-countries-tablewto-proposal-to-extend-pharma-patents.

11

CASEBOOK ON IP ENFORCEMENT

D. Territoriality
20. National law and territoriality:25 The international
conventions all accept the principle of territoriality,
which means that national law creates IP rights, creates
remedies, provides structures for enforcement and
provides procedures for enforcement.

Other areas of dispute relate to contractual obligations
concerning IP rights, parallel importation and transit
or transhipment of goods. There are also questions
concerning jurisdiction over extra-jurisdictional infringements committed by locals.

It means that the scope of an IP right is limited to the territory of the state granting it. The exclusive right can only
cover activities occurring within the respective territory.

22. Jurisdiction and territoriality: The fact that IP rights
are territorial in nature does not mean that there cannot
be jurisdictional issues, because it is necessary to
distinguish between judicial competence and legislative competence.

No intangible subject matter (say copyright in a particular photograph) is protected by one uniform right covering the whole world. Such a work may be subject to a
bundle of possibly more than 200 territorial rights of
national or regional provenance. These rights are independent of one another so that an invention, copyright
work or trademark may exist and be protected in one
country but not in another.26

Private international law distinguishes between personal jurisdiction (judicial competence) of the court and the
applicable law (legislative competence). In intellectual
property, such a distinction was often ignored, mainly
because of the principle of territoriality, under which
the forum was most often the place of the injury, and
the applicable law was generally assumed to be the
law of the forum state.

This gives rise to enforcement problems as a result of
the increased opportunities for infringement of IPRs
in the digital environment by means of cross-border
online IP infringement.27

23. Basic jurisdictional principles: Jurisdiction depends
on the particular laws of a given country, including
principles relating to forum (non) conveniens.

21. Territoriality and enforcement: The enforcement of
IP rights is regulated by national or regional legislation
and within defined territorial borders. Yet IP assets are
of a global character and their use is not limited by territorial boundaries. Because of globalization, ever-closer
economic integration and fast-moving digitization,
challenges surrounding the interaction between IP law
and private international law are inevitably becoming
ever-more frequent and acute. Indeed IP infringements
routinely impact multiple territories, resulting in questions of jurisdiction, applicable law and enforcement
and recognition of foreign judgments.28

25. Lucasfilm Ltd v. Ainsworth [2009] EWCA Civ 1328,
[2011] UKSC 11; Microsoft Corp v. AT&T Corp 550
US (2007) [USA]; Gallo Africa v. Sting Music [2010]
ZASCA 96; Chugai Pharmaceutical Co Ltd v. UCB
Pharma SA [2017] EWHC 1216 (Pat); Abdichtsystem
German Bundesgericht 16th May 2017, X ZR 120/15.
26. Alexander Peukert, Territoriality and
Extraterritoriality in Intellectual Property Law at
https://www.ssrn.com/abstract=1592263.
27. See the WIPO publication by Andrew F Christie, Private
International Law Issues in Online IP Infringement
with Cross-Border Elements at http://www.wipo.int/
publications/en/details.jsp?id=3975&plang=EN.
28. http://www.wipo.int/enforcement/en/news/2015/
news_0002.html. See also Google Inc v. Equustek

12

The first rule of jurisdiction is that the court of residence
or domicile of the defendant is the primary court with
jurisdiction. This means that a court must have jurisdiction over the person of the defendant.
In addition, a court must have subject-matter jurisdiction. For registered rights, the law applicable to
determine the existence, validity, duration, attributes,
and infringement of IPRs and the remedies for their
infringement is the law of the state of registration. For
other IPRs, it is the law of the state in and for which
protection is sought.29
Cross-border online infringement has become ubiquitous and has created new challenges in the area of
jurisdiction and enforcement.30
24. Conventions concerning jurisdiction: Within the
European Union (and some other countries) the
matter is determined or influenced by the Brussels
Convention on Jurisdiction and the Enforcement of

Solutions Inc, 2017 SCC 34; Case X ZR 120/15
(German Bundesgerichtshof May 16, 2017).
29. Voda v. Cordiscorp 476 F.3d 887 (Fed. Cir. 2007).
30. See Andrew F Christie quoted above.

INTRODUCTION: THE WORLD OF INTELLECTUAL PROPERTY LAW

Judgments in Civil and Commercial Matters 1968
and the Lugano Convention on Jurisdiction and the
Enforcement of Judgments in Civil and Commercial
Matters. These have, to some extent, been superseded
by the Brussels Regulations.31

E. Editorial policy
25. Insertions and omissions: Except for a few instances, the extracts from judgments are relatively short and
do not deal with the facts of the case. Facts are given
if necessary for understanding the extract. Square
brackets ‘[ ]’ indicate insertions. To improve readability,
omissions are not shown. Words, phrases and paragraphs have been omitted to create (what the author
wishes to believe) a user-friendly text. So, too, long
paragraphs have been broken up into shorter ones, and
if a judgment dealt with more than one issue, the judgment may have been subjected to the same treatment.
26. Spelling and style: The author’s text is in U.S. English
because that is the house style of WIPO. One example
concerns trademarks. There are different spellings:
‘trade mark,’ ‘trade-mark’ and ‘trademark,’ sometimes
depending on whether the term is used as an adjective
or noun. U.S. English uses 'trademark,' therefore that
is the spelling in this work. The original spelling, as
far as practicable, has been retained, although a few
changes to spelling and style were made for the sake
of uniformity. Likewise, citations within quotations are,
if not omitted, standardized.

F. Useful websites
The following internet sources are useful: they all
provide free access to laws, law reports and related
material. But if all else fails, a search on a general search
engine may produce something useful.
An important academic site is the Social Sciences
Research Network: https://www.ssrn.com/.

The following sites are especially important for treaties
and conventions, judgments of the Court of Justice of
the European Union (CJEU) and judgments on domain
name decisions:
• WIPO: http://www.wipo.int
• WIPO has a non-exhaustive compilation list that
provides links to publicly and freely accessible
online databases: www.wipo.int/enforcement/en/
case_law.html
• WIPO Intellectual Property Laws and Treaties
Database (WIPO Lex): http://www.wipo.int/wipolex/
• WTO: http://www.wto.org
• Internet Domain Name Arbitration Decisions: http://
www.arbiter.wipo.int/domains/
• CJEU: http://curia.europa.eu/jcms/jcms/j_6/.
The Free Access to Law movement provides what its
name promises in relation to mainly English-speaking
law reports: www.worldlii.org.
Particular countries:
• Australia: http://www.austlii.edu.au
• Canada: www.canlii.org/
• Hong Kong: http://www.hklii.hk/eng/
• India: http://www.liiofindia.org/
• Ireland: http://www.ucc.ie/law/irlii/index.php
• Japan: http://www.ip.courts.go.jp/eng/
hanrei/index.html; http://jta.tokyo/english/
documents/?doc_cat_id=3
• New Zealand: http://www.nzlii.org/
• Singapore: http://www.commonlii.org/sg/cases/
• Southern and East Africa countries: http://www.
saflii.org
• The United Kingdom and Ireland: http://www.
bailii.org/
• United States: www.law.cornell.edu/; http://www.
findlaw.com
The China Legal Publishing House published in hard
copy a substantial work entitled Intellectual Property
Cases of the Supreme People’s Court 2008-2015 with
translation of the cases. It is not available online.

31. See Council Regulation (EC) No 44/2001 of
22 December 2000 on Jurisdiction and the
Recognition and Enforcement of Judgments
in Civil and Commercial Matters (Brussels 1
Regulation) at https://eur-lex.europa.eu/legalcontent/EN/TXT/?uri=celex%3A32001R0044.

13

TRADEMARK LAW PRINCIPLES

Chapter 2
Trademark law principles
A. Trademark law sources

16

B. Definition of a ‘trademark’

17

C. ‘Capable of distinguishing’

19

D. Registration

21

E. Public interest and
balancing of rights

22

15

CASEBOOK ON IP ENFORCEMENT

The purpose of this chapter is to introduce some
trademark principles that are particularly relevant in the
context of enforcement of trademark rights.

A. Trademark law sources1
1. TRIPS requirements: In terms of the TRIPS
Agreement,2 country members of the WTO must have
laws that provide for trademarks and their protection.
These must comply with certain minimum requirements. The discussion that follows takes these minimum requirements as its starting point. The provisions
of TRIPS relevant to trademarks will be quoted during
the discussion.
2. Paris Convention: Another important aspect of TRIPS
(Art. 2.1) is that it requires of WTO member states to
comply with certain provisions relating inter alia to trademarks of the 1967 text of the Paris Convention for the
Protection of Industrial Property.3 Similar obligations are
also imposed by the Trademark Law Treaty (TLT) (1994)4
and the Singapore Treaty on the Law of Trademarks.5
3. National treatment: TRIPS (Art. 3.1), like the Paris
Convention, requires that each member state must,
in relation to the protection of trademark rights, treat
nationals of other member states no less favorably
than it treats its own nationals. This is referred to as
‘national treatment.’ This means that IP laws may not
discriminate on the grounds of nationality or residence.
4. European Union Directive: The EU has a directive on
trademark law, and the national laws of all members
of the EU must be in conformity with the directive.6

In addition to national trademarks, the EU also provides
for Community marks. A new set of council regulations7
came into operation on March 23, 2016. A Community
trademark has a unitary character and has equal effect
throughout the community, and it may not be registered,
transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it
invalid, nor may its use be prohibited, save in respect
of the whole Community.8
A similar court, but with limited jurisprudence, is
the Court of Justice of the European Free Trade
Association States.9
Reference will, from time to time, be made to the terms
of the directive and the regulation, and judgments of
the CJEU10 as well as those of the General Court,11
which deal with their interpretation and application.
This is because judgments based on the directive and
national laws based on it provide a useful benchmark
against which to test outcomes in other jurisdictions.
The CJEU is essentially a cour de cassation because
one of its functions is to answer legal questions put to
it by the national courts of its member states in relation
to the scope of union laws and regulations. The judgments are, consequently, of importance as legal expositions concerning matters of principle (unless they are
concerned with an internal appeal) but may give limited
practical guidance to the outcome of any particular
case. Their persuasive force depends on the similarity
between EU laws and directions and local statute law.
5. U.K. trademark law: Many judiciaries have regard
to judgments of U.K. courts because of history and
language reasons.12 It is, however, necessary to consider

The directive provides for some broader trademark
protection than that envisaged in TRIPS.
7.
1.
2.
3.
4.
5.

6.

16

TWG Tea Co PTE LTD v. Tsit Wing (Hong
Kong) Co LTD [2016] HKCFA 2.
http://www.tripsagreement.net/?page_id=40.
http://www.wipo.int/treaties/en/ip/paris/.
http://www.wipo.int/treaties/en/ip/tlt/.
http://www.wipo.int/treaties/en/ip/singapore/.
These two treaties do not deal with enforcement
issues and are not dealt with. The same applies
to the Madrid Agreement Concerning the
International Registration of Marks (1891) and the
Protocol Relating to that Agreement (1989).
Directive (EU) 2015/2436 of the European
Parliament and of the Council of 16 December
2015 to approximate the laws of the EU
member states relating to trade marks.

Regulation (EU) 2015/2424 of the European Parliament
and of the Council of 16 December 2015 amending
Council Regulation (EC) No 207/2009 on the
Community trade mark and Commission Regulation
(EC) No 2868/95 implementing Council Regulation
(EC) No 40/94 on the Community trade mark, and
repealing Commission Regulation (EC) No 2869/95
on the fees payable to the Office for Harmonization
in the Internal Market (Trade Marks and Designs).
8. See the excellent European Union Intellectual
Property Office (EUIPO) Guidelines on trademarks
for a full discussion of principles with examples.
9. http://www.eftacourt.int/cases/.
10. https://curia.europa.eu/jcms/jcms/Jo2_6999/en/.
11. https://curia.europa.eu/jcms/jcms/Jo2_7033/en/.
12. Crocodile International PTE Ltd v.
Lacoste [2017] NZSC 14.

TRADEMARK LAW PRINCIPLES

that the U.K. Trade Marks Act of 199413 is a statute that
complies with the TRIPS Agreement and the EU Directive
and that the substantive provisions of this Act represent
an amalgam of civil-law and common-law principles.
INTER LOTTO (UK) LTD. v. CAMELOT GROUP PLC
[2003] EWCA Civ 1132:
As that summary makes clear, the 1994 Act is a
hybrid. There are two main European sources:
The Directive, aimed at harmonization of the
national trademarks laws, and the Regulation,
introducing the new Community trademark.
However, many of the basic concepts are
derived, in some cases solely, from the previous domestic law. Old authorities may be of
assistance, but ‘it should not be forgotten at
any point that the system is fundamentally
different and frequently demands a fresh look.
This means that judgments must be read in the context
of their time and in relation to the laws then applicable
and that judicial pronouncements, old and new, cannot
simply be transfused onto present local law.
6. ‘Trademark law is a remarkably difficult subject’: This
observation was made in a book review14 by Judge
Richard Arnold in respect of European trademark law,
but what he said is generally true of all trademark law.
He gave several reasons:
• While many of the concepts and doctrines may
seem straightforward, they are much more slippery
and elusive than they first appeared.
• There is a vast body of case law, a significant proportion of which is contradictory or poorly reasoned.
• It faces a series of challenges posed by new technologies and business models.
• It is an increasingly contested field, with trademark
proprietors continually trying to expand the boundaries of protection and others pushing back.
• Last, it needs to be understood holistically, but an
overall view of the system is hard to obtain. This
only comes with a great deal of experience.

13. https://www.gov.uk/government/
publications/trade-marks-act-1994.
14. Judge of the High Court of England and Wales,
Chancery Division in Journal of Intellectual
Property Law & Practice, 2017 (Oxford University
Press) at https://academic.oup.com/jiplp/
search-results?f_Authors=Richard+Arnold.

7. Related laws: What has been said thus far concerns
laws that deal with registered trademarks. There are
other related and relevant laws that may protect such
trademarks but also unregistered trademarks. Prime
examples would be laws, statutory or common law,
relating to unfair or unlawful competition, more particularly, those that deal with passing-off.
DRISTAN TRADE MARK case [1986] RPC 161(SC):
The registration of a trademark confers very
valuable rights upon the registered proprietor
of that mark. Under s 27(1) of the 1958 Act, no
person can institute any proceeding to prevent
or to recover damages for, the infringement
of an unregistered trademark.
However, his right of action against any person
for passing off goods as the goods of another
person or the remedies in respect thereof is
not affected by reason of the fact that his
trademark is an unregistered one. Under s
28(1), the registration of a trademark, if valid,
gives to the registered proprietor of the mark
the exclusive right to the use of the mark in
relation to the goods in respect of which it
is registered and to obtain relief in respect
of infringement of the mark in the manner
provided by the Act.
Other related laws deal with false trade descriptions and
the protection of certain emblems, heraldry, business
names, advertising standards, consumer protection
and protection of geographic indications.

B. Definition of a ‘trademark’
8. Subject matter of trademarks: The TRIPS Agreement
(Art. 15.1) defines the protectable subject matter of
registered trademarks in these terms:
• Any sign, or any combination of signs,
capable of distinguishing the goods or
services of one undertaking from those
of other undertakings, shall be capable of
constituting a trademark.
• Such signs, in particular words including
personal names, letters, numerals, figurative
elements and combinations of colours as
well as any combination of such signs, shall
be eligible for registration as trademarks.
17

CASEBOOK ON IP ENFORCEMENT

• Where signs are not inherently capable
of distinguishing the relevant goods or
services, Members may make registrability depend on distinctiveness acquired
through use. Members may require, as
a condition of registration, that signs be
visually perceptible.
9. Essentials of trademarks:15 It follows that a trademark must:
• consist of a ‘sign’ or combination of ‘signs’ and
• be able to distinguish the goods or services of one
undertaking from those of other undertakings.
The capability to distinguish can either be:
• inherent in the mark or
• acquired through use.
DYSON LTD v. REGISTRAR OF TRADEMARKS:16
It follows that to be capable of constituting a
trade-mark, the subject-matter of any application must satisfy three conditions. First, it must
be a sign. Secondly, that sign must be capable
of being represented graphically. Thirdly, the
sign must be capable of distinguishing the
goods or services of one undertaking from
those of other undertakings.
It is illustrated by the Indian law’s17 definition of a
trademark:
it is a mark capable of being represented
graphically and which is capable of distinguishing the goods or services of one person
from those of others and it may include the
shape of goods, their packaging, and a combination of colours.

15. Glaxo Wellcome UK Ltd (t/a Allen & Hanburys)
& Anor v. Sandoz Ltd [2017] EWCA Civ 335.
16. The requirement of graphic representation has
been superseded by a requirement that the
sign be capable of ‘being represented on the
register in a manner which enables the competent
authorities and the public to determine the clear
and precise subject matter of the protection
afforded to its proprietor’ (Article 3, Directive
(EU) 2015/2436 of 16 December 2015).
17. http://www.wipo.int/wipolex/en/
text.jsp?file_id=128107.

18

A mark, in turn, includes a device, brand, heading, label,
ticket, name, signature, word, letter, numeral, shape
of goods, packaging or combination of colors or any
combination thereof.
10. Types of trademarks: There are different types of
trademarks. What is or is not registrable as trademark
depends on the definition of the term in the relevant
national statute.
Typical are devices or logos, names (such as FORD),
words (like APPLE), letters (e.g., BMW), numerals
(4711), slogans and shapes, configurations, patterns,
ornamentations, colors or containers for goods (the
Coca-Cola bottle). Some jurisdictions allow the registration of anything that can serve to distinguish, even
musical tunes (for instance, mobile phone ringtones)
or fragrances for perfumes.
11. Factual issue: The question whether a mark constitutes a trademark as defined is a factual matter. Older
statutes often listed the kind of marks that were not
capable of being registered, such as names of persons
or localities, or laudatory words. The tendency is to
move away from this approach, which is in any event
incompatible with the TRIPS Agreement.
WEST (T/A EASTENDERS) v. SMITH & TURNER PLC
[2003] EWCA Civ 429:
To a much greater degree, this case illustrates
the break with our domestic past brought
about by the 1994 Act. One has to start by
forgetting the preconceptions of pre-1994
Act trademark law. The territory that can be
occupied by registered trademarks has been
significantly enlarged by the 1994 Act, and
traders who use such marks without consent
must increasingly rely on the limits as to the
effect of a registered trademark.

TRADEMARK LAW PRINCIPLES

C. ‘Capable of distinguishing’
12. A trademark must be distinctive:18 The primary
function of a trademark (registered or unregistered) is
to distinguish the goods or services of the trademark
owner from those of others. That means that it acts as
a badge of origin of the source.
In assessing infringement, the main question is whether
the use of the infringing mark affects the ability of the
senior mark to distinguish or serve as a ‘badge of origin.’
CANON KABUSHIKI KAISHA v. METRO-GOLDWYNMAYER INC, C-39/97, ECR 1998, I-5507:19
The essential function of the trademark is
to guarantee the identity of the origin of the
marked product to the consumer or end
user by enabling him, without any possibility of confusion, to distinguish the product
or service from others which have another
origin. For the trademark to be able to fulfill
its essential role in the system of undistorted
competition, it must offer a guarantee that all
the goods or services bearing it have originated under the control of a single undertaking
which is responsible for their quality.
WAL-MART STORES INC v. SAMARA BROTHERS
INC 529 US 205 (2000):20
In evaluating the distinctiveness of a mark, courts have
held that a mark can be distinctive in one of two ways.
First, a mark is inherently distinctive if ‘[its] intrinsic
nature serves to identify a particular source.’ In the
context of word marks, courts have applied the nowclassic test originally formulated by Judge Friendly in
which word marks that are ‘arbitrary’ (‘Camel’ cigarettes), ‘fanciful’ (‘Kodak’ film) or ‘suggestive’ (‘Tide’
laundry detergent) are held to be inherently distinctive.
Second, a mark has acquired distinctiveness (even if it

18. For Japanese examples, see Recent IP High Court
Decisions (Distinctiveness)(2016) (1):
http://jta.tokyo/english/documents/archive/2017/
19. See also Wing Joo Loong Ginseng Hong (Singapore)
Co Pte Ltd v. Qinghai Xinyuan Foreign Trade Co
Ltd and Another and Another Appeal [2009] SGCA
9; Municipality of Oslo EFTA Court E – 5/16.
20. Playboy Enterprises Inc v. Bharat Malik 2001
PTC 328 [India]: Yale Electric Corporation v.
Robertson, 26 F.2d 972 (2d Cir. 1928).

is not inherently distinctive) if it has developed secondary meaning, which occurs when, ‘in the minds of the
public, the primary significance of a [mark] is to identify
the source of the product rather than the product itself.’
GLAXO GROUP LTD v. DOWELHURST LTD [2000]
EWHC Ch 134:
A trademark is a badge, in the widest sense,
used on or in relation to goods so as to indicate source. That is to say it is meant to
indicate that goods are goods of the proprietor. In some cases this will mean that they
are the goods of a particular manufacturer,
as would be the case with RENAULT for
cars, CADBURY for chocolates and AGFA
for photographic equipment. Sometimes it
will mean that they are goods selected by
or distributed through a particular intermediary as would be the case with MARKS &
SPENCER for own-brand food, flowers etc.,
LITTLEWOODS for mail order clothes etc. and
AMAZON for books bought over the internet.
Furthermore, where goods have passed
through a number of hands, the marks of more
than one proprietor may be found on, or be
used in relation to, the goods. Someone who
buys a book over the internet will probably
receive it in a box and with a delivery note,
each of which bears the mark of the retailer
while the book itself will bear the mark of the
publisher. Similarly someone who purchases
a product in a large department store will
receive it in a bag bearing the store’s trademark. In some stores goods are priced with
sticky labels bearing the name of the store,
so that goods bear both the manufacturer’s
and the retailer’s marks. Sometimes marks
are anonymous. For example the marks
BEEFEATER for gin and JIF, DAZ and OMO
for cleaning materials are not the names of
the companies which make those products.
In some cases the customer will realize from
surrounding circumstances that a mark
identifies the source as a manufacturer or
as a retailer. RENAULT falls into the former
category while MARKS & SPENCER falls
into the latter. Sometimes it will not be clear
in what capacity a mark identifies source. For
example the well-known department store,
19

CASEBOOK ON IP ENFORCEMENT

Harrods, has many products which bear its
trademark HARRODS. However it also has
its own bakery. The mark HARRODS when
used on or in relation to many of its breads
and cakes is the mark of the manufacturer as
well as the retailer. This reflects not only legal
theory but the real world. A customer who is
supplied with defective goods may complain
to the retailer/distributor or the manufacturer, if
different, or both. It may well be immaterial to
him whether the mark is that of the distributor
or the manufacturer, all that matters is that it is
from a particular source. This variety of ways
in which marks are used by proprietors and
understood by customers does not undermine
or detract from their value or function.
13. Ability to distinguish may be acquired through use:21
SOCIÉTÉ DES PRODUITS NESTLÉ SA v. MARS UK
LTD, CJEU Case C-353/03:22
A mark devoid of any distinctive character may
not be registered or, if registered, is liable to
be declared invalid.
However, this is rendered inapplicable if, before
the date of application for registration and
following the use which has been made of the
mark, it has acquired a distinctive character.
In regard to acquisition of distinctive character through use, the identification, by the
relevant class of persons, of the product or
service as originating from a given undertaking must be as a result of the use of the mark
as a trademark.
The expression ‘use of the mark as a trademark’ must therefore be understood as referring solely to use of the mark for the purposes
of the identification, by the relevant class of
persons, of the product or service as originating from a given undertaking.

21. Oberbank and Santander (joined Cases
C-217/13 and C-218/13, EU:C:2014:2012).
http://curia.europa.eu/juris/document/
document.jsf?docid=153812&doclang=EN
22. See also Société Des Produits Nestlé SA v.
Cadbury UK Ltd [2016] EWHC 50 (Ch). http://www.
bailii.org/ew/cases/EWHC/Ch/2016/50.html

20

14. Assessment of distinctiveness:23
KONINKLIJKE PHILIPS ELECTRONICS NV v.
REMINGTON CONSUMER PRODUCTS LTD Case
C-299/99:
Whether inherent or acquired through use,
distinctive character must be assessed in
relation, on the one hand, to the goods or
services in respect of which registration is
applied for and, on the other, to the presumed
expectations of an average consumer of the
category of goods or services in question,
who is reasonably well-informed and reasonably observant and circumspect.
15. Guarantee of origin: A trademark offers a guarantee that all the goods bearing it have originated under
the control of a single undertaking that is responsible
for their quality. It does not, however, provide a legal
guarantee of quality, but trademark owners know
that consumers rely on the fact that they have an
economic interest in maintaining the value of their
marks. Trademarks, accordingly, provide a commercial
guarantee of quality.
SCANDECOR DEVELOPMENTS AB v. SCANDECOR
MARKETING AV 2001 UKHL 21:24
Although the use of trademarks is founded
on customers’ concern about the quality of
goods on offer, a trademark does not itself
amount to a representation of quality. Rather
it indicates that the goods are of the standard
which the proprietor is content to distribute
‘under his banner’. The concept of the owner
of a mark holding himself out as responsible
for the quality of the goods sold under his
mark was noted by Lord Wright:
The word origin is no doubt used in a
special and almost technical sense in
this connection, but it denotes at least

23. Case T85/13, K-Swiss Inc v. OHIM and Künzli
SwissSchuh AG.
24. Also L’Oréal SA v. Bellure NV, C-487/07 [2010] R.P.C.
1, CJEU 14: Laugh It Off Promotions CC v. South
African Breweries International (Finance) BV t/a
Sabmark International and another 2005 8 BCLR
743 (CC), 2006 1 SA 144 (CC); JT International SA
v. Commonwealth of Australia [2012] HCA 43.

TRADEMARK LAW PRINCIPLES

that the goods are issued as vendible
goods under the aegis of the proprietor
of the trademark, who thus assumes
responsibility for them, even though
the responsibility is limited to selection,
like that of the salesman of carrots on.
16. Descriptive use: Something that describes the
goods or services concerned cannot distinguish them
for trademark purposes.25 One could, accordingly, not
have the trademark ‘Apple’ for apples, but it is a perfect
trademark for computers.
CANADIAN SHREDDED WHEAT CO v. KELLOGG CO
OF CANADA LTD [1938] 1 All E.R. 618:26
A word or words to be really distinctive of a
person’s goods [or services] must, generally
speaking, be incapable of application to the
goods [or services] of anyone else.
The more a trademark is descriptive of the
goods or services, the less likely it will be
capable of distinguishing them in this sense. If
a trademark is primarily descriptive, it requires
‘sufficient capricious alteration’ to be able to
perform a trademark function.
The fact that a trademark, by use, has become such
as to denote goods or services of a specific source,
does not necessarily mean that it can distinguish those
goods or services in the trademark sense.
17. Unconventional trademarks: The recognition of the
ability of unconventional trademarks to perform a trademark function, i.e., to act as a badge of origin, is recent.
As late as 1986, the House of Lords27 regarded the idea
that the shape of a bottle – in that case, the classic CocaCola bottle – could be a trademark as startling, although
some countries had already accepted that they could be.

25. David Elliott, et al v. Google Inc, U.S.
Court of Appeals Ninth Circuit.
26. See also Breakfast -Drink II German Federal
Court; Court interpretation of 12 March
2003; Beecham Group Plc and Others v.
Triomed (Pty) Ltd [2002] ZASCA 109.
27. Coca-Cola Trade Marks [1986] 2 All E.R. 274 (HL).

Once recognized, these trademarks do not differ from
any other kind of trademark from a legal perspective,28
and the criteria for assessing their distinctive character
(for instance, the three-dimensional shape of products,
marks) are no different from those applicable to other
categories of trademark.

D. Registration
18. Effect of trademark registration: Trademark registration, in general terms, grants the proprietor an exclusive
right to the trademark to:
• use the trademark in relation to the goods or services in respect of which the mark is registered (subject
to other limitations),
• prevent other persons from registering the trademark or a confusingly similar mark in relation to the
same or similar goods or services,
• prevent other persons from infringing the trademark,
• license the use of the trademark and
• transfer (assign) the trademark.
KIRKBI AG v. RITVIK HOLDINGS INC 2005 SCC 65:
Registration of a trademark gives the registrant the exclusive right to the use throughout
Canada of the trademark and a right of action
to remedy any infringement of that right. In
addition, in order to exercise those rights,
the existence of the mark itself does not have
to be established. Registration is evidence
enough. Nonetheless, marks remain marks,
whether registered or unregistered, because
their legal characteristics are the same.
19. Common-law and other rights are not affected: The
existing common-law (in common-law jurisdictions) or
other statutory rights relating to unregistered marks
are not affected by the registration of a trademark. A
registered right cannot affect the use of an existing prior
right, albeit unregistered, that was obtained through
use. A party with an unregistered mark may rely on
unfair competition or passing-off as a separate cause
of action. This is discussed in a subsequent chapter.

28. Henkel / OHIM CJEU, 29 April 2004, joined
cases C-456/01 P and C-457/01 P.

21

CASEBOOK ON IP ENFORCEMENT

E. Public interest and
balancing of rights
20. Nature of the right: Trademarks are intangible and
somewhat anomalously intellectual property rights.29
Like all rights, a trademark right is not absolute but
relative. There is no constitutional right to a trademark,
but as a property right it is entitled to protection. It must
be balanced against, and may be trumped by, other
rights. Of consequence is freedom of speech, a factor
of special significance in the context of infringement
through dilution.30
21. Different interests: Both the trademark owner and
the consumer are protected by trademarks and against
the use of confusingly similar marks.
MISHAWAKA RUBBER & WOOLEN MANUFACTURING
CO v. S. S. KRESGE CO [1942] USSC 98; 316 US
203 (1942):
The protection of trademarks is the law’s
recognition of the psychological function
of symbols. A trademark is a merchandising short-cut which induces a purchaser to
select what he wants, or what he has been
led to believe he wants. The owner of a mark
exploits this human propensity by making
every effort to impregnate the trademark
sphere of the market with the drawing power
of a congenial symbol. Whatever the means
employed, the aim is the same – to convey
through the mark, in the minds of potential
customers, the desirability of the commodity
upon which it appears. Once this is attained,
the trademark owner has something of value.
LAUGH IT OFF PROMOTIONS CC v. SOUTH AFRICAN
BREWERIES INTERNATIONAL (FINANCE) BV [2005]
ZACC 7:
From the producer’s side, trademarks
promote invention, protect investment and
enhance market share by securely identifying
a product or service. From the consumer’s

29. Mattel Inc v. 3894207 Canada Inc 2006 SCC 22.
30. Laugh It Off Promotions CC v. South African
Breweries International (Finance) BV [2005] ZACC
7; The University of Alabama Board of Trustees
v. New Life Art, Inc., Daniel A. Moore U.S. Court
of Appeals Eleventh Circuit, June 11, 2012.

22

point of view, they facilitate choice by identifying the product and guaranteeing its provenance and presumed quality. Furthermore,
although this case has been presented as a
David and Goliath contest, it is not only the
Goliaths of this world who need trademark
protection. Small entrepreneurs fighting to
increase their share of the market against the
Goliaths strive energetically to identify their
uniqueness and that of their products and
services. Confusion, dilution or tarnishing of
their trademarks can be as harmful to them
as to any of the major companies, indeed
more so, because their capacity to mitigate
any detriment will be attenuated.
MASTERPIECE INC. v. ALAVIDA LIFESTYLES INC.,
2011 SCC 27, [2011] 2 S.C.R. 387:
Trademarks are an important tool to assist
consumers and businesses. In the marketplace, a business marks its wares or services
as an indication of provenance. This allows
consumers to know, when they are considering a purchase, who stands behind those
goods or services. In this way, trademarks
provide a shortcut to get consumers to
where they want to go. Where the trademarks of different businesses are similar, a
consumer may be unable to discern which
company stands behind the wares or services.
Confusion between trademarks impairs the
objective of providing consumers with a reliable indication of the expected source of
wares or services.
22. Trademark rights do not create monopolies:
Although trademarks give rise to exclusive rights as
an indication of the source and quality of goods, it is
only when relating to goods that they have life or value.
GLAXO GROUP LTD v. DOWELHURST LTD [2000]
EWHC Ch 134 [UK]:
Not infrequently courts, lawyers and clients
refer to trademarks as creating monopolies or
discuss them in terms which suggest that that is
so. But trademark rights do not create monopolies in the true sense. Although trademarks give
rise to exclusive rights as an indication of the
source and quality of goods, it is only when
relating to goods that they have life or value.

TRADEMARK LAW PRINCIPLES

A trademark is not a type of copyright. A
proprietor does not obtain a monopoly in the
mark as such.
Mere copying of a mark, for example by writing
it down on a piece of paper, even in the course
of business, does not per se infringe any trademark rights. The result is that the same or similar
marks can be owned by different proprietors in
respect of dissimilar goods or businesses. This
is an everyday experience. The name LLOYDS is
used as a mark by, amongst others, a pharmacy
chain, a bank and an insurance market and the
mark GRANADA has been used by unrelated
companies in respect of motor cars and a television rental business.
Importantly, a trademark is not a type of copyright.

similar trademark for the same or similar goods or
services as badges of origin. All things being equal,
its ownership gives a preferential right to use to the
owner but not an absolute right to use the mark on the
goods or services for which it is registered. To illustrate,
simply because one holds a trademark for a prohibited substance does not mean that one is entitled to
market that substance, with or without the mark. This
is the ratio of cases that deal with plain packaging for
tobacco products.32
Thus, the only right conferred by registration was a right
to prevent others from using the trademark as a mark for
their goods. This does not mean that one may register
trademarks for preventing others from using them.33
24. Right of others to use a trademark otherwise than as a
badge of origin: A typical statutory exception to the rights
of a trademark owner is to be found in the U.K. Act (art. 6):

MUNICIPALITY OF OSLO EFTA Court E – 5/16:
The protection of copyright and the protection
of trademarks pursue different aims, apply
under distinct legal conditions and entail
different legal consequences.
In addition, marks, such as container marks, do not
give a patent-like or industrial design-like monopoly in
the container itself.
NATION FITTINGS (M) SDN BHD v. OYSTERTEC PLC
[2006] 1 SLR 712; [2005] SGHC 225:
Whilst the court should recognize and give
effect to the rights of registered trademark
holders wherever appropriate, it should also
bear in mind the fact that such rights should not
be permitted to either blatantly or subtly develop into disguised monopolies which stifle or
stymie the general public interest and welfare.
23. The right to use is a limited right: Although the
main purpose of a trademark is the ability to use it,31 a
trademark is said to be a negative right. It is a right to
prevent others from using the same or a confusingly

31. Kirkby AG v. Ritvik Holdings Inc 2005 SCC 65
https://scc-csc.lexum.com/scc-csc/scc-csc/en/
item/2246/index.do; Höltershoff v. Freiesleben
Case C-2/00 [CJEU] http://eur-lex.europa.eu/legalcontent/EN/TXT/?uri=CELEX%3A62000CC0002.

The trademark shall not entitle the proprietor to prohibit a third party from using, in
the course of trade, (a) his own name and
address; (b) indications concerning the kind,
quality, quantity, intended purpose, value,
geographical origin, the time of production of
goods or of rendering of the service, or other
characteristics of goods or services; (c) the
trademark where it is necessary to indicate
the intended purpose of a product or service,
in particular as accessories or spare parts;
provided he uses them in accordance with
honest practices in industrial or commercial
matters.
ANHEUSER-BUSCH v. BUDĔJOVICKÝ BUDVAR,
C-245/02, the CJEU:
The exclusive right conferred by a trademark
was intended to enable the trademark proprietor to protect his specific interests as proprietor, that is, to ensure that the trademark can
fulfil its functions and that, therefore, the exer-

32. JT International SA v. Commonwealth of Australia
[2012] HCA 43 http://eresources.hcourt.gov.au/
showCase/2012/HCA/43; Campomar Sociedad v.
Nike International [2000] HCA 12 http://eresources.
hcourt.gov.au/showCase/2000/HCA/12.
33. Lubbe NO v. Millennium Style [2007] SCA 10 (RSA)
http://www.saflii.org/za/cases/ZASCA/2007/10.html.

23

CASEBOOK ON IP ENFORCEMENT

cise of that right must be reserved to cases in
which a third party’s use of the sign affects or is
liable to affect the functions of the trademark, in
particular its essential function of guaranteeing
to consumers the origin of the goods.
That is the case, in particular, where the use
of that sign allegedly made by the third party
is such as to create the impression that there
is a material link in trade between the third
party’s goods and the undertaking from which
those goods originate. It must be established
whether the consumers targeted, including
those who are confronted with the goods after
they have left the third party’s point of sale,
are likely to interpret the sign, as it is used
by the third party, as designating or tending
to designate the undertaking from which the
third party’s goods originate.
25. Application of the ‘badge of origin’ concept:
To explain, the German Federal Court in Ferrari v.
Jägermeister AG held that the use of a Ferrari car as a
price in an advertisement for liquor did not infringe the
Ferrari trademark in respect of vehicles:34
There is no justification for the trademark
owner to oppose the awarding of branded
goods bearing the competition sponsor’s sign
as prizes if the placing of the sign next to the
trademark is clearly only an indication of the
sponsorship and does not create the impression of there being a commercial relationship
between sponsor and trademark owner.
The advertising effect of making the company
look generous by promising a luxury product
as a prize is a natural consequence of this
particular competition. The fact that the prize
on offer is a well-known make of luxury car
does not push this transfer effect onto the
wrong side of the legal line. [Translated.]

34. See also Regina v. Johnstone [2003] UKHL 28;
CJEU Case C-63/97 Bayerische Motorenwerke
AG and another v. Deenik; Verimark (Pty) Ltd v.
Bayerische Motoren Werke AG [2007] ZASCA 53;
Bayerische Motoren Werke AG v. Technosport
London Ltd & Anor [2017] EWCA Civ 779.
Cf. Joop! Gmbh v. OHIM Case T-75/08.

24

26. Doctrine of functionality: A trademark must be
a source identifier.35 According to public perception,
containers and shapes (especially functional shapes)36
generally do not, in U.S. parlance, serve as source
identifiers.37 In particular, the shape of a product, which
gives substantial value to that product, cannot constitute a trademark, even where, prior to the application
for registration, it acquired attractiveness as a result of
its recognition as a distinctive sign following advertising
campaigns presenting the specific characteristics of
the product in question.38
27. Prohibited trademarks: Trademark laws usually
contain a list of signs that may not be registered as
trademarks. The U.K. Act has the following list, which
is comprehensive, of prohibited marks. These obviously
include signs that do not satisfy the requirements of a
‘trademark,’ i.e., signs incapable of being represented
graphically and not capable of distinguishing goods
or services of one undertaking from those of other
undertakings and trademarks that are devoid of any
distinctive character.
But there are other prohibitions based on public policy
grounds. These grounds for refusal listed must be
interpreted in light of the public interest underlying each
of them.39 These are usually the following: trademarks
that consist exclusively of signs or indications that may
serve, in trade, to designate the kind, quality, quantity,
intended purpose, value, geographical origin, time of
production of goods or of rendering of services or other
characteristics of goods or services; trademarks that
consist exclusively of signs or indications that have

35. Qualitex Co v. Jacobson Products Co 514 U.S. 159
(1995); Bograin SA’s Trade Mark Application [2005]
RPC 14 (CA); Bang & Olufsen v. OHIM General Court,
6 October 2011, T-508/08. See also the absolute
prohibition of the registrations of signs discussed later.
36. BGH Case I ZR 17/05 – Pralinenform II (22 April 2010)
[Germany; OHIM v Yoshida Metal Industry Case
C-340/12 P.
37. In re Pacer Technology 338 F.3d 1348,
67 USPQ2d 1629 (Fed. Cir. 2003).
38. Benetton Group / G-Star International CJEU, 20
September 2007, C-371/06, ECR 2007, I-7709;
Koninklijke Philips Electronics NV v. Remington
Products Pty Ltd [2000] FCA 876 [Australia]; Lego
Juris A/S v. OHIM – Mega Brands Inc (LEGO) Case
C48-09P [CJEU]; Beecham Group Plc and Others v.
Triomed (Pty) Ltd [2002] ZASCA 109; Wal-Mart Stores
Inc v. Samara Brothers Inc 529 US 205 (2000) [USA].
39. Municipality of Oslo EFTA Court E – 5/16.
par 45 relying on Koninklijke Philips
Electronics NV v. Remington Consumer
Products Ltd, C-299/99, EU:C:2002:377.

TRADEMARK LAW PRINCIPLES

become customary in the current language or in the
bona fide and established practices of the trade; and
trademarks that consist exclusively of the shape that
results from the nature of the goods themselves, of
goods that are necessary to obtain a technical result
or that gives substantial value to the goods (cf. the
previous paragraph on the doctrine of functionality).40
Furthermore, a trademark may not be registered if it is
of such a nature as to deceive the public (for instance
as to the nature, quality or geographical origin of the
goods or service), its use is prohibited by any enactment or rule of law or to the extent that the application
is made in bad faith.41 Finally, it may not be registered if
it is contrary to public policy or to accepted principles
of morality.42

Singapore Trademarks Act and are that a registered
trademark is not infringed by the use of the trademark
in relation to goods that have been put on the market,
whether within or outside the jurisdiction, under that
trademark by the proprietor of the registered trademark
or with their express or implied consent (conditional or
otherwise). This does not apply where the condition
of the goods has been changed or impaired after they
have been put on the market, or the use of the registered trademark in relation to those goods has caused
dilution in an unfair manner of the distinctive character
of the registered trademark.

MUNICIPALITY OF OSLO EFTA Court E – 5/16:
The subjective values, which are relevant for
the assessment of this ground of refusal, are
determined by reference to the perception of
the sign by the relevant public. The perception
of whether a mark is contrary to accepted
principles of morality is influenced by the
circumstances of the particular country in
which the consumers who form part of the
relevant public are found.
28. Exhaustion of trademark rights:43 The TRIPS
Agreement (Art. 6) merely states that nothing in the
Agreement shall be used to address the issue of the
exhaustion of intellectual property rights. The principles
as generally applied44 are well encapsulated in the

40. Wing Joo Loong Ginseng Hong (Singapore) Co
Pte Ltd v. Qinghai Xinyuan Foreign Trade Co Ltd
and Another and Another Appeal [2009] SGCA 9.
41. Lindt C-529/07 (EU:C:2009:361).
42. 2013 (Gyo-Ke) 10233, March 26, 2014 [Intellectual
Property High Court] ('Touyama-no-Kinsan'
case) Japan. These may differ considerably:
Matal, Interim Director, United States Patent
and Trademark Office v. Tam 582 US (2017).
43. Champagne Heidsieck v. Buxton [1930] 1 Ch 330;
Samsonite IP Holdings Sarl v. An Sheng Trading
Pte Ltd [2017] SGHC 18; Protective Mining and
Industrial Equipment Systems (Pty) Ltd. [1987]
ZASCA 33; R & A Bailey & Co Ltd v. Boccaccio
Pty Ltd 77 ALR 177; Euro-Excellence Inc v. Kraft
Canada Inc 2007 SCC 37. 2002 (Ju) 1100, February
27, 2003 [Supreme Court] (Fred Perry case) Japan.
44. The European Economic Area and the European
Union have a somewhat different approach because
of the unity of the markets: IHT Internationale

Heiztechnik and Danzinger C-9/93; L’Oréal Norge
AS v. Aarskog Per AS and Others and Smart
Club Norge EFTA court E-09/07 and E-10/07;
Oracle America Inc (Formerly Sun Microsystems
Inc) v. M- Tech Data Ltd [2012] UKSC 27.

25

INFRINGEMENT OF REGISTERED TRADEMARKS

Chapter 3
Infringement of registered trademarks
A. Introduction

28

B. Elements of infringement
of registered trademarks

29

C. The subjective element
in trademark litigation

29

D. Registration

30

E. Identical marks

31

F. Similar marks

32

G. Similar goods and services

32

H. Use in the course of
trade and trademark use

33

27

CASEBOOK ON IP ENFORCEMENT

A. Introduction
1. Types of trademark infringement: Registered trademarks may be infringed in one of three ways.1
Primary infringement consists of the use of any sign,
which is identical to the registered trademark, in relation to goods or services that are identical with those
for which the trademark is registered, in the course of
trade, without the consent of the trademark proprietor.
Secondary infringement consists of the use of any sign
where, because of its identity with, or similarity to, the
registered trademark and the identity or similarity of the
goods or services covered by that trademark and the
sign, there exists a likelihood of confusion on the part of
the public, which includes the likelihood of association
between the sign and the trademark in the course of
trade, without the consent of the trademark proprietor.
In the case of both primary and secondary infringement,
confusion is of the essence.2
The third type concerns well-known marks, and they
are protected against the use of a mark that takes
unfair advantage of, or is detrimental to, the distinctive
character or the repute of the trademark.3 The term
‘dilution’ is used as a shorthand way to refer to this
type of infringement.
2. Illustration: The U.K. Trade Marks Act4 is typical of a
statute that provides for the three types of protection
envisaged by TRIPS. The provision is preceded by
the general principle that the proprietor of a registered
trademark has exclusive rights in the trademark that are
infringed by use of the trademark within the jurisdiction
without the proprietor's consent.
• Section 10(1) deals with primary infringement:
A person infringes a registered trademark if the
person uses in the course of trade a sign that is
identical with the trademark in relation to goods
or services that are identical with those for which
it is registered.

1.
2.
3.
4.

28

TWG Tea Co PTE LTD v. Tsit Wing (Hong
Kong) Co LTD [2016] HKCFA 2.
TRIPS Article 16(1).
Art 16(3).
http://www.legislation.gov.uk/
ukpga/1994/26/contents.

• Section 10(2) is concerned with secondary infringement: A person infringes a registered trademark if
the person uses in the course of trade a sign where
because:
∙∙ the sign is identical with the trademark and is
used in relation to goods or services similar to
those for which the trademark is registered,
∙∙ the sign is similar to the trademark and is used
in relation to goods or services identical with
or similar to those for which the trademark is
registered and
∙∙ there exists a likelihood of confusion on the part
of the public, which includes the likelihood of
association with the trademark.
• Section 10(3) deals with dilution: A person infringes
a registered trademark if the person uses in the
course of trade a sign that:
∙∙ is identical with or similar to the trademark,
∙∙ is used in relation to goods or services that are
not similar to those for which the trademark is
registered and
∙∙ where the trademark has a reputation in the
United Kingdom and the use of the sign, being
without due cause, takes unfair advantage of,
or is detrimental to, the distinctive character or
the repute of the trademark.
JOHNSTONE v. R [2003] UKHL 28 explained the differences:
Section 10 deals with several different situations. Section 10(1) concerns the case where
a person in the course of trade uses a sign
identical with a registered trademark in relation to goods identical with those for which it is
registered. Such use constitutes infringement.
Section 10(2) addresses cases where either
(a) a sign identical with a registered trademark
is used in relation to goods similar to those
for which the trademark is registered or (b) a
sign similar to a registered trademark is used
in relation to goods identical with or similar to
those for which the trademark is registered.
In such cases, user constitutes infringement
if there exists a likelihood of confusion on the
part of the public.
Section 10(3) concerns cases where a sign
identical with or similar to a registered trademark is used in relation to goods not similar
to those for which the trademark is registered.

INFRINGEMENT OF REGISTERED TRADEMARKS

Then, in short, user constitutes infringement
where the trademark has a reputation within
the United Kingdom and the sign takes unfair
advantage of, or is detrimental to, the distinctive character or the repute of the trademark.
3. Infringement of unregistered trademarks: Trademark
laws also provide for remedies in the case of the infringement of a specific class of unregistered trademark. This
protection is available for a peregrine trademark owner
whose trademark, even though not registered within the
local jurisdiction, is well-known within the local jurisdiction. The obligation to protect such trademarks flows
from Art. 6bis of the Paris Convention5 as reinforced
and extended by Art. 16.2 of the TRIPS Agreement.6
This issue is dealt with in a subsequent chapter.
It will be recalled that laws relating to unfair competition
protect unregistered (local) trademarks, and this issue
will also be dealt with in a subsequent chapter.
4. Infringement on the internet:7 Trademark infringement
on the internet does not differ in principle from other
trademark infringements. However, this form of infringement has its own challenges and is discussed separately.

B. Elements of infringement
of registered trademarks8
5. The common elements of infringement: The different
classes of infringement of registered trademarks have
several common elements:
• The trademark must be a ‘registered’ trademark.
In other words, a typical statute dealing with trademarks requires registration as a pre-condition for
relief provided under that law.
• The allegedly infringing use must have been ‘use
in the course of trade.’

5.
6.
7.

8.

http://www.wipo.int/treaties/en/
text.jsp?file_id=283854.
https://www.wto.org/english/docs_e/
legal_e/27-trips_03_e.htm.
Frederick Mostert, ‘Study on Approaches
to Online Trademark Infringements,’ WIPO/
ACE/12/9 REV.2 at http://www.wipo.int/
meetings/en/doc_details.jsp?doc_id=381836.
TWG Tea Co PTE LTD v. Tsit Wing (Hong Kong)
Co LTD [2016] HKCFA 2. The significant elements
are discussed in subsequent paragraphs, save for
‘confusion,’ which is dealt with in the next chapter.

• The use must have been without the consent of the
trademark owner.9
• The use must have been within the local jurisdiction.
• The infringing mark must be either identical (in all
three cases) or confusingly similar to the registered
mark (the second and third categories).
6. Difference between primary and secondary infringement: The difference between primary and secondary
infringement lies in ‘same’ versus ‘similar’:
• Primary infringement is limited to use of an identical
mark in relation to goods or services in respect of
which the trademark is registered.10
• Secondary infringement can take place in respect
of the use of an identical or similar mark in respect
of similar goods or services, i.e., goods or services
for which the mark is not registered or the use
of similar marks in respect of identical goods
or services.
7. Likelihood of confusion: The issue of likelihood of
confusion does not arise in respect of primary infringement because identical marks (used on identical goods
or services) are inherently confusing. It also does not
arise in the context of dilution but for a completely
different reason: marks that dilute do not confuse but
impinge on the value of the mark because they take
unfair advantage of, or are detrimental to, the distinctive
character or the repute of the trademark.
The likelihood of confusion is, however, the hallmark
of secondary infringement.

C. The subjective element
in trademark litigation
8. The subjective nature of determining infringement:
Infringement judgments depend to an extent on a value
judgment of the relevant forum.

Marussia Communications Ireland Ltd v. Manor Grand
Prix Racing Ltd & Anor [2016] EWHC 809 (Ch).
10. Céline SARL v. Céline SA CJEU, 11 September
2007, C-17/06, ECR 2007, I-7041.
9.

29

CASEBOOK ON IP ENFORCEMENT

FUTURE ENTERPRISES PTE LTD v. MCDONALD’S
CORP [2007] 2 SLR 845; [2007] SGCA 18:11

registered owner of the trademark and a registered
licensee, but it depends on the terms of the statute.13

The smorgasbord of trademark cases which
has reached the appellate courts demonstrates the innumerable (and subjectively
perceived) similarities and differences that
can be conjured up and persuasively articulated by an imaginative and inventive legal
mind. Expert and experienced judges, such
as Laddie J, have described trademark
infringement as ‘more a matter of feel than
science’ (in Wagamama Ltd v City Centre
Restaurants plc [1995] FSR 713 at 732), and
Chao Hick Tin JA similarly alluded to it as a
matter of ‘perception’ (in The Polo/Lauren
Co, LP v. Shop-In Department Store Pte
Ltd [2006] 2 SLR 690). In the light of the highly
subjective nature of assessing similarity and
the likelihood of confusion, we agree with
the approach that an appellate court should
not disturb the findings of fact of a trademark tribunal unless there is a material error
of principle.

11. Registration in classes:14 Goods and services are
registered in classes in terms of the classification
under the Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes
of the Registration of Marks (1957).15 Initially, trademarks
could only be registered for goods, and trademarks for
services are of a relatively recent origin, and an obligation to provide for them arises not only from TRIPS but
also from the Trademark Law Treaty (1994)16 and the
Singapore Treaty on the Law of Trademarks (2006).17

This case dealt with ‘MacCoffee’ and ‘McCafé,’ the
latter a trademark of McDonald’s, and the court found
that the former was too close for comfort.

D. Registration
9. Relevance of registration: It is the mark as registered,
i. e., as represented in the register, that delineates the
proprietor’s monopoly and proclaims to the general public
what the forbidden territory is. And it is the mark as registered that forms the basis of the comparison that must
be made when it is alleged that someone else is using a
mark that infringes the rights of the registered proprietor.12
10. Registered owner: The trademark owner must
prove the registration. A certificate of registration or
one authenticated by the registry is usually regarded
as prima facie evidence of registration. The right to
enforce the statutory rights is usually reserved for the

11. See by way of contrast Future Enterprises Pte
Ltd v. EUIPO, McDonald’s International Property
Co Ltd, T-518/13, EU:T:2016:389 (July 2016).
12. Cointreau et Cie SA v. Pagan International [1991]
ZASCA 89. http://www.saflii.org/za/
cases/ZASCA/1991/89.html

30

The classification consists of a list of classes – there
are 34 classes for goods and 11 for services – and
an alphabetical list of goods and services. The latter
comprises some 11,000 items. Both lists are, from time
to time, amended and supplemented by a committee of
experts. A typical class of goods looks like this:
Class 3: Bleaching preparations and other
substances for laundry use; cleaning, polishing, scouring and abrasive preparations;
soaps; perfumery, essential oils, cosmetics
and hair lotions; and dentifrices. And one for
services:
Class 36: Insurance; financial affairs and
monetary affairs; and real estate affairs.
A trademark such as CHANEL No 5 (one may presume)
will be registered in Class 3 because it is a perfume.
It may be registered for all the goods in the class,
or it may be limited to perfumes because the owner
may consider that ‘perfumes’ and ‘dentifrices’ are not
related, or it may not have any interest in dentifrices. The
unauthorized use of CHANEL No 5 on perfumes will be
a primary infringement. The unauthorized use of the
trademark on dentifrices may amount to a secondary
infringement, and, because it is a mark with a reputation, it may also amount to infringement by dilution.

13. Fujian Light Industrial Products v. Fuzhou Wan Da
Pencil (Supreme People’s Court of the People’s
Republic of China ZHI ZHONG ZI NO.8 (1999)).
14. British Sugar PLC v. James Robertson
& Sons Ltd [1996] RPC 281 [UK].
15. http://www.wipo.int/treaties/en/classification/nice/.
16. http://www.wipo.int/treaties/en/ip/tlt/.
17. http://www.wipo.int/treaties/en/ip/singapore/.

INFRINGEMENT OF REGISTERED TRADEMARKS

This means the choice of a narrow specification of
goods or services does not exclude the possibility of
wider protection.18

14. Territoriality: A trademark right is territorial.20 It is
only effective within the territory where it is registered
or, if not registered, well-known.

12. Notional use by trademark owner: In determining
infringement, regard should be had to the way the registered trademark may be used by the owner by virtue
of the registration and not to how it is in fact used by
the owner. This is because the rights of the owner are
determined by the scope of the registration and not by
its use of the trademark.19

PERSON’S CO LTD v. CHRISTMAN 900 F2d 1565 (Fed
Cir 1990) [USA]:21

13. Distinctive character is determined with reference
to the classification of the goods or services:

VICTORIA’S SECRET INC v. EDGARS STORES LTD
(428/92) [1994] ZASCA 43:

MONDELEZ UK HOLDINGS & SERVICES LTD v.
EUIPO AND SOCIÉTÉ DES PRODUITS NESTLÉ SA
Case T112/13 (General Court):

A trademark is purely a territorial concept; it
is legally operative or effective only within the
territory in which it is used and for which it is
to be registered. Hence, the proprietorship,
actual use, or proposed use of a trademark
mentioned in [the Trademarks Act], are all
premised by the subsection to be within the
[Republic of South Africa].

In the first place, it should be borne in mind
that, according to settled case-law, distinctive character, whether inherent or acquired
through use, must be assessed in relation,
on the one hand, to the goods or services in
respect of which registration has been sought
and, on the other, to the presumed perception
of the mark by an average consumer of the
category of goods or services in question,
who is reasonably well-informed and reasonably observant and circumspect.
In the second place, it should be borne in
mind that, according to settled case-law, if a
trademark has been registered for a category
of goods or services which is sufficiently
broad for it to be possible to identify within it
a number of sub-categories capable of being
viewed independently, proof that the mark has
been put to genuine use in relation to a part
of those goods or services affords protection
only for the sub-category or sub-categories
containing the goods or services for which the
trademark has actually been used.

18. Associated Newspapers Ltd & Another v.
Express Newspapers [2003] EWHC 1322 (Ch).
19. The Shell Company of Australia Ltd v. Esso
Standard Oil (Australia) Ltd (1963) 109 CLR
407. Cf Plascon-Evans Paints (TVL) Ltd. v. Van
Riebeeck Paints (Pty) Ltd [1984] ZASCA 51.

The concept of territoriality is basic to trademark law; trademark rights exist in each
country solely according to that country’s
statutory scheme.

E. Identical marks22
15. Identical marks: ‘Identity’ implies that the elements
compared should be the same in all material respects.
But in deciding whether a mark and a sign are identical,
the decision must be based on the overall impression created by them, including their visual, aural and
conceptual similarities. Insignificant differences must
be ignored in making the comparison.23

20. AMS Neve v. Heritage Audio [2016] EWHC 2563 (IPEC).
21. Barcelona.com, Inc v. Excelentisimo Ayuntamiento
de Barcelona 189 F Supp 2d 367 (ED Va 2002)
[USA]; Masterpiece Inc. v. Alavida Lifestyles
Inc 2011 SCC 27, [2011] 2 S.C.R. 387 [Canada];
L’Oréal SA and Others v. eBay International
AG and Others CJEU Case C324/09.
22. Supreme Pet Foods Ltd v. Henry Bell &
Co Ltd [2015] EWHC 256 at [83].
23. See also International Business Machines Corporation
& Anor v. Web-Sphere Ltd & Ors [2004] EWHC
529 (Ch); 1991 (Gyo-Tsu) 103, September 10, 1993
[Supreme Court] (‘SEIKO EYE’ case) Japan: Crocodile
International PTE Ltd v. Lacoste [2017] NZSC 14.

31

CASEBOOK ON IP ENFORCEMENT

LTJ DIFFUSION SA v. SADAS VERTBAUDET SA
C-291/00, ECR 2003, I-2799:

The criterion of identity of the [junior] sign
[‘Arthur et Felice’] and the [registered] trademark [‘Arthur’] must be interpreted strictly. The
very definition of identity implies that the two
elements compared should be the same in
all respects. Indeed, the absolute protection
in the case of a sign which is identical with
the trademark in relation to goods or services
which are identical with those for which the
trademark is registered, which is guaranteed by Art. 5(1)(a) of the directive, cannot be
extended beyond the situations for which it
was envisaged, in particular to those situations which are more specifically protected
by Art. 5(1)(b) of the directive.
There is, therefore, identity between the sign
and the trademark where the former reproduces, without any modification or addition,
all the elements constituting the latter.
However, the perception of identity between
the sign and the trademark must be assessed
globally with respect to an average consumer
who is deemed to be reasonably well-informed,
reasonably observant and circumspect. The
sign produces an overall impression on such a
consumer. That consumer only rarely has the
chance to make a direct comparison between
signs and trademarks and must place his trust
in the imperfect picture of them that he has
kept in his mind.
Since the perception of identity between the
sign and the trademark is not the result of a
direct comparison of all the characteristics of
the elements compared, insignificant differences between the sign and the trademark
may go unnoticed by an average consumer.24
16. Presumption of confusion: The use of an identical
trademark mark on identical goods or services neces-

24. Reed Executive plc v. Reed Business Information
Ltd [2004] EWCA (Civ) 159 held that ‘Reed
Business Information’ was not identical to the
trademark ‘Reed’. The same applies to ‘Compass’
and ‘Compass Logistics’: Compass Publishing
v. Compass Logistics 2004 EWHC 520.

32

sarily gives rise to confusion. Consequently, the TRIPS
Agreement (Art. 16.1) provides that in such instance,
a likelihood of confusion is to be presumed. Because
confusion is assumed, it is not mentioned as a separate
requirement and need not be established by means of
evidence. In such a case, the protection is absolute.
17. Identical marks are not necessarily infringing: The
use of an identical mark is not, as such, an infringement of a trademark. For primary infringement, the
marks must be used on identical goods or services.
For secondary infringement, the use must be in relation
to similar goods or services, but in the case of dilution,
it is the effect that counts.

F. Similar marks
The issue of similarity of marks that give rise to confusion is, because of its importance, dealt with in the
next chapter.

G. Similar goods or services
18. Similarity of goods or services:25 The use of an identical mark may amount to a secondary infringement if
the goods or services in respect of which they are used
are similar to those in respect of which the trademark
is registered. There are two possibilities depending on
whether an identical or a confusingly similar mark is used.
In this paragraph, the focus is on the similarity of goods or
services: when are goods or services similar?26 In order
for there to be a likelihood of confusion, the goods or
services designated must be identical or similar. Thus,
even where the mark applied for is identical to a mark
that is distinctive to a particularly high level, it must be
established that the goods or services designated by
the opposing marks are similar.27

25. For examples: FDC Limited v. Docsuggest
Healthcare Services [Delhi High Court, Jan 3, 2017;
Yu Hui (a judge from the Changsha Intermediate
People’s Court of Hunan Province) ‘Preliminary
Research on the Judicial Judgment of Similar
Goods in Trademark Infringement Cases in China’
2002 (Wa) 13569, April 20; and for Japan: 2004
[Osaka District Court] (‘Career-Japan’ case).
26. Mettenheimer and Another v. Zonquasdrif
Vineyards CC [2013] ZASCA 152.
27. Case T169/03 Sergio Rossi v. OHIM – Sissi
Rossi (SISSI ROSSI) [2005] ECR II685; Comic
Enterprises Ltd v. Twentieth Century Fox
Film Corporation [2016] EWCA Civ 41.

INFRINGEMENT OF REGISTERED TRADEMARKS

ASSEMBLED INVESTMENTS (PTY) LTD v. OHIM
& WATERFORD WEDGWOOD PLC 12 June 2007,
T-105/05, ECR 2007, II-60: 28
It should also be borne in mind that, in order
to assess the similarity of the goods in question, account must be taken of all the relevant
factors which characterize the relationship
between those goods, those factors including, in particular, their nature, their intended
purpose and their method of use and whether
they are in competition with each other or are
complementary. Next, the assessment of the
similarity of the goods should be restricted,
as regards the earlier mark, to ‘articles of
glassware’, since the other goods covered by
the earlier mark have no connection with wine.
As is apparent from the contested decision,
that category includes carafes, decanters
and stemware or wine glasses, articles which
are specifically intended to be used for the
consumption of wine.
The parties do not dispute that the goods at
issue, namely the articles of glassware, on
the one hand, and, on the other hand, the
wine, are distinct by nature and by their use,
that they are neither in competition with one
another nor substitutable and that they are
not produced in the same areas.
As regards distribution channels, it is true
that wine and certain articles of glassware
are sometimes sold in the same places, such
as specialist wine retailers. However, in the
absence of information proving the contrary,
it appears that such sales represent no more
than a negligible proportion of the overall
sales of the articles of glassware concerned.
Likewise, wine glasses and wine, although
normally marketed separately, are occasionally
distributed together for promotional purposes.
However, it has not been shown that that practice by wine producers is of any significant
commercial importance. In addition, the distribution of wine glasses with wine is normally

28. The subsequent appeal was dismissed: CJEU,
7 May 2009, Waterford Wedgwood / Assembled
Investments (Proprietary) and OHIM, C-398/07 P.

perceived by the consumers concerned as
a promotional attempt to increase sales of
the wine rather than as an indication that the
producer concerned devotes part of his activity to the distribution of articles of glassware.
19. The factors to consider in determining similarity
between goods or services:
BRITISH SUGAR PLC v. JAMES ROBERTSON & SONS
LTD [1996] RPC 281:
Thus, I think the following factors must be
relevant in considering whether there is or is
not similarity:
• the respective uses of the respective goods
or services;
• the respective users of the respective
goods or services;
• the physical nature of the goods or acts
of service;
• the respective trade channels through
which the goods or services reach the
market;
• in the case of self-serve consumer items,
where in practice they are respectively found
or likely to be found in supermarkets and in
particular whether they are, or are likely to
be, found on the same or different shelves;
• the extent to which the respective goods
or services are competitive.
This inquiry may take into account how those
in trade classify goods, for instance, whether
market research companies, who of course
act for industry, put the goods or services in
the same or different sectors.

H. Use in the course of trade
and trademark use
20. Meaning of trademark use:29 To infringe, the defendant must have used its mark in the course of trade,
and the use must have been trademark use, i.e., to indi-

29. Nation Fitting (M) Sdn Bhd v. Oystertec plc [2005]
SGHC 225; 2003 (Ne) 899, August 31, 2004
[Tokyo High Court] (‘Ink bottle’ case) Japan.

33

CASEBOOK ON IP ENFORCEMENT

cate origin. The case law is not harmonious30 because
the requirement is not expressly required by TRIPS
or statutes. However, trademark use is implicit in the
concept that the infringing use must have been in the
course of trade.31
L’ORÉAL SA AND OTHERS v. EBAY INTERNATIONAL
AG AND OTHERS Case C-324/09:
It is important to recall that the exclusive rights
conferred by trademarks may, as a rule, be
relied on only as against economic operators.
Indeed, for the proprietor of a trademark to be
entitled to prevent a third party from using a
sign identical with or similar to his trademark,
the use must take place in the course of trade.
Accordingly, when an individual sells a
product bearing a trademark through an
online marketplace and the transaction does
not take place in the context of a commercial
activity, the proprietor of the trademark cannot
rely on his exclusive right. If, however, owing
to their volume, their frequency or other
characteristics, the sales made on such a
marketplace go beyond the realms of a private
activity, the seller will be acting ‘in the course
of trade’.
21. Identifying the defendant’s trademark use: Before
it is possible to compare the infringing mark with the
registered trademark, it is necessary to establish
whether the defendant is using the mark as a trademark
to indicate origin or for other purposes.32 To explain the
difference: the trademark ‘Penguin’ for books does
not imply that no one may publish a book with the
word ‘penguin’ as part of its title, such as The Book of
Penguins or The Story of a Penguin or even Penguins,
because in these instances the word penguin is being

30. Cf Anheuser Busch Inc v. Budweiser Budvar
National Corporation [2002] NZCA 264.
31. The Nigerian Trademarks Act is explicit because
there a trademark is deemed to be infringed by
any person who uses a mark identical with it or so
nearly resembling it as to be likely to deceive or
cause confusion, in the course of trade, in such
manner as to render the use of the mark likely to be
taken as being use as a trademark. An example of
non-trademark use would be parodic use: United
Airlines, Inc. v. Cooperstock 2017 FC 616.
32. Apple Corps Ltd. v. Apple Computer,
Inc [2006] EWHC 996.

34

used in a descriptive manner to describe the particular
book or its contents, and not its origin.
JOHNSTONE v. R [2003] UKHL 28:
The message conveyed by a trademark has
developed over the years, with changing
patterns in the conduct of business. But the
essence of a trademark has always been
that it is a badge of origin. It indicates trade
source: a connection in the course of trade
between the goods and the proprietor of the
mark. That is its function. Hence the exclusive
rights granted to the proprietor of a registered trademark are limited to use of a mark
likely to be taken as an indication of trade
origin. Use of this character is an essential
prerequisite to infringement. Use of a mark
in a manner not indicative of trade origin of
goods or services does not encroach upon
the proprietor’s monopoly rights. Dillon LJ
observed trenchantly in Mothercare UK Ltd
v Penguin Books [1988] RPC 113:
it stands to reason that a Trademarks
Act would only be concerned to restrict
the use of a mark as a trademark or
in a trademark sense, and should be
construed accordingly. If descriptive
words are legitimately registered [as a
trademark], there is still no reason why
other people should not be free to use
the words in a descriptive sense, and
not in any trademark sense.
In this regard I cannot forbear adding the
extreme hypothetical example beloved of
trademark lawyers. If a magazine publisher
were to register an ordinary question mark,
‘?’, as a trademark for magazines this would
not prevent the grammatical use of question
marks on the covers of other magazines.
Trademark use is a convenient shorthand
expression for use of a registered trademark
for its proper purpose (that is, identifying and
guaranteeing the trade origin of the goods to
which it is applied) rather than for some other
purpose. It is easy to recognize those cases
which fall squarely on one side or other of the
line. If a counterfeiter sells a cheap imitation
watch under the trademark OMEGA, he is

INFRINGEMENT OF REGISTERED TRADEMARKS

fraudulently engaging in trademark use (as
he is, as [counsel] suggested, if he uses the
mark HOMEGAS but prints the first and last
letters very faintly). But if a publisher publishes a book named MOTHER CARE/OTHER
CARE (a serious study of the upbringing of
young children of working mothers) there is
no infringement of the registered trademark of
Mothercare UK Limited, despite the fact that
the trademark is registered for many classes
of goods, including books.
22. Complex trademarks: Once the defendant’s mark
has been identified, it is impermissible to denude it by
removing all additional material that differentiates it from
the plaintiff’s trademark, thereby bringing it closer to the
latter. The ‘added matter’ doctrine does not permit a
contextual examination of the accused sign because it
is highly artificial to compare the accused mark through
the eyes of the average consumer without considering what impact the overall use of the sign ‘in context’
would have upon the consumer.33
O2 HOLDINGS LTD. & ANOR v. HUTCHISON 3G LTD
[2006] EWHC 534 (Ch):
There is no good reason to say that the
consideration [for infringement] is limited to
a comparison between the defendant’s sign
with the registered mark. Indeed the very
Article clearly calls for an examination of the
context of the use – you have to consider how
the defendant is using the sign complained
of to answer the basic question of whether
he is using it ‘in the course of trade’. So it is
particularly artificial then to go on to try to
isolate the sign of which complaint is made
devoid from the context of its use.

33. British Sugar PLC v. James Robertson & Sons
Ltd [1996] RPC 281; Joules Limited v. Macy’s
Merchandising Group Inc, United States Court
of Appeals, Second Circuit, No. 16-3037-cv, 21
June 2017. For a useful analysis see The Polo/
Lauren Co, LP v. Shop-In Department Store Pte
Ltd [2006] 2 SLR 690; [2006] SGCA 14; Matratzen
Concord GmbH v. OHIM (Case T-6/01).

23. Descriptive (informative) use is not trademark use: 34
THE GILLETTE COMPANY AND GILLETTE GROUP
FINLAND OY v. LA-LABORATORIES LTD OY CJEU,
17 March 2005, C-228/03:
The defendants sold razor blades using the Parason
Flexor trademark, and the following reference to
Gillette’s trademarks was made on the packaging: All
Parason Flexor and Gillette Sensor handles are compatible with this blade. The Finnish Supreme Court found
that the defendant did not infringe Gillette’s trademark.
The reference in the packaging was necessary to indicate the intended purpose of the product and made in
accordance with honest practices.35 The CJEU held:
The lawfulness or otherwise of the use of the
trademark depends on whether that use is
necessary to indicate the intended purpose
of a product. Use of the trademark by a third
party who is not its owner is necessary in
order to indicate the intended purpose of a
product marketed by that third party where
such use in practice constitutes the only
means of providing the public with comprehensible and complete information on that
intended purpose in order to preserve the
undistorted system of competition in the
market for that product. [The court must
determine] whether such use is necessary,
taking account of the nature of the public for
which the product marketed by the third party
in question is intended.
The fact that a third party uses a trademark of
which it is not the owner in order to indicate
the intended purpose of the product which it
markets does not necessarily mean that it is
presenting it as being of the same quality as
or having equivalent properties to, those of
the product bearing the trademark. Whether
there has been such presentation, depends
on the facts of the case. 36

34. Wcvb-TV Boston Athletic Association 926 F2d 42
(1991); BMW v. Technosport [2017] EWCA Civ 779.
35. Finnish Supreme Court Judgment,
22.2.2006. KKO: 2006:17.
36. Michelin v. CAW [Compagnie Generale Michelin
v. National Automobile, etc Workers Union]
[1997] 2 FC 306; Tommy Hilfiger Licensing, Inc.
v. International Clothiers Inc [2005] 1 FCR 148,

35

CASEBOOK ON IP ENFORCEMENT

24. Trademarks that consist of shapes, configurations, patterns, ornamentations, colors or containers
for goods:
CLIPSAL AUSTRALIA PT Y LTD v. CLIPSO
ELECTRICAL PTY LTD (NO 3) [2017] FCA 60:
Where the issue of whether a shape has been
used as a trademark is concerned, common
sense suggests, and authority confirms, that
shapes dictated by functional requirements
are less likely to involve trademark use, whereas those which are purely aesthetic are more
likely to do so.

2004 FCA 252 (CanLII); Adidas-Salomon AG and
Adidas Benelux BV v. Fitnessworld Trading Ltd
ECR 2003, I-12537; Miele ET CIE Gmbh & Co v.
Euro Electrical (Pty) Ltd [1988] ZASCA 1; Arsenal
Football Club plc v. Matthew Reed CJEU, 12
November 2002, C-206/01, ECR 2002, I-10273;
Arsenal Football Club v. Reed [2003] EWCA 696.

36

TRADEMARKS: SIMILAR MARKS AND CONFUSION

Chapter 4
Trademarks: similar marks
and confusion
A. The relevance and
meaning of confusion

38

B. Who must be confused?

39

C. Global appreciation

40

D. Evidence

43

37

CASEBOOK ON IP ENFORCEMENT

A. The relevance and
meaning of confusion
1. Relevance of ‘confusion’: This chapter deals with
the element of confusion caused by the similarity of
marks.1 It will be recalled that confusion is a requirement for secondary trademark infringement because
a person infringes a registered trademark if, because
of the similarity of the marks, there exists a likelihood
of confusion or association on the part of the public
with the trademark.2
Some Trademark Acts speak of the likelihood of ‘confusion or deception.’ Those that, in line with TRIPS, speak
only of ‘confusion’ do not increase or reduce the level of
protection. Although the words have different dictionary meanings (‘deception’ means to cause someone to
believe something that is false, and ‘confusion’ means
to cause bewilderment, doubt or uncertainty), they have
been employed synonymously and interchangeably in
this context.3
2. Likelihood of confusion may include the likelihood of
association: The likelihood of confusion on the part of
the public includes, in terms of some laws, the likelihood
of association of the infringing sign with the registered
trademark. It is not an alternative to the likelihood of
confusion but serves to define its scope.4

1.
2.

3.

4.

38

1991 (Gyo-Tsu) 103, September 10, 1993
[Supreme Court] (‘SEIKO EYE’ case) Japan.
Les Éditions Albert René SARL v. European
Union Intellectual Property Office Case C-16/06
P. See also Case C-425/98 Marca Mode CV
v. Adidas AG [2000] ECR I-4861, Case C-3/03
Matratzen Concord GmbH v. GmbG v. Office for
Harmonisation in the Internal Market [2004] ECR
I-3657, Case C-120/04 Medion AG v. Thomson
Sales Germany & Austria GmbH [2005] ECR I-8551
and Case C-334/05 Office for Harmonisation in the
Internal Market v. Shaker de L. Laudato & C SAS
[2007] ECR I-4529; Red Bull v. OHMI - Sun Mark
(BULLDOG) (Judgment) [2015] EUECJ T-78/13.
Insight Radiology Pty Ltd v. Insight Clinical Imaging
Pty Ltd [2016] FCA 1406. Phones4u Ltd & Anor v.
Phone4u.Co.UK & Ors [2006] EWCA Civ 244: the
same issue arises in the context of passing-off.
SABEL BV v. Puma AG, Rudolf Dassler Sport CJEU,
11 November 1997, C-251/95; 1998 (Gyo-Hi) 85, July
11, 2000 [Supreme Court] (‘Reerudyutan’ case) Japan.

CERAMICHE CAESAR SPA v. CAESARSTONE SDOTYAM LTD [2017] SGCA 30 at #57:
There are at least two specific aspects to the
element of confusion. The first is mistaking
one mark for another. The second is where
the relevant segment of the public may well
perceive that the contesting marks are different but may yet remain confused as to the
origin which each mark signifies and may
perceive that goods bearing the two marks
emanate from the same source or from sources that are economically linked or associated.
3. Step-by-step analysis:
CERAMICHE CAESAR SPA v. CAESARSTONE SDOTYAM LTD [2017] SGCA 30 at #26:
Under the step-by-step approach, the three
requirements of (a) similarity of marks; (b)
similarity (or identity) of goods or services; and
(c) likelihood of confusion arising from the two
similarities are to be assessed systematically.
The first two elements are assessed individually before the final element.
4. List of factors to consider:5 Courts consider several
factors in assessing the likelihood of confusion due to
similarity. All these factors are not necessarily relevant
in every case, but a checklist is nevertheless useful.
The factors have been framed differently by different
courts.6 The lists are not mechanical checklists.7

5.
6.
7.

1998 (Gyo-Hi) 85, July 11, 2000 [Supreme
Court] (‘Reerudyutan’ case) Japan.
Interpace Corporation, Appellant,
v. Lapp, Inc 721 F.2d 460.
For a recent list summarizing most of what is stated in
the chapter, see Specsavers International Healthcare
Ltd & Ors v. Asda Stores Ltd [2012] EWCA Civ 24
as qualified in Comic Enterprises Ltd v. Twentieth
Century Fox Film Corporation [2016] EWCA Civ 41.
See also TWG Tea Co PTE LTD v. Tsit Wing (Hong
Kong) Co LTD [2016] HKCFA 2. The standard list
used by U.S. courts is to be found in Interpace
Corporation v. Lapp, Inc. 721 F.2d 460 (3d Cir. 1983).

TRADEMARKS: SIMILAR MARKS AND CONFUSION

VEUVE CLICQUOT PONSARDIN v. BOUTIQUES
CLIQUOT LTÉE, [2006] 1 SCR 824, 2006 SCC 23
(CanLII):

6. The ‘reasonable consumer’: The average consumer
must be presumed to be reasonably well-informed and
reasonably observant.

In every case, the factors to be considered
when making a determination as to whether or
not a trademark is confusing to the somewhat
hurried consumer ‘in all the circumstances’
include, but are not limited to, those enumerated in s. 6(5) of the Act. These are:

LLOYD SCHUHFABRIK MEYER & CO. GMBH v.
KLIJSEN HANDEL BV CJEU, 22 June 1999, C-342/97:

• the inherent distinctiveness of the trademarks or trade-names and the extent to
which they have become known;
• the length of time the trademarks or tradenames have been in use;
• the nature of the wares, services or business;
• the nature of the trade; and
• the degree of resemblance between the
trademarks or trade-names in appearance
or sound or in the ideas suggested by them.
The list of circumstances is not exhaustive and
different circumstances will be given different
weight in a context-specific assessment.

B. Who must be confused?
5. The average consumer must be confused:8 The class
of persons who are likely to be the consumers of the
goods or services in question must be considered in
determining whether there is a likelihood of confusion.
The problem is that it is not always possible to classify the consumers of particular products or services
because they are consumed or used by members of
many, or all, sectors of the population, irrespective
of the level of literacy or sophistication.9 The notional
consumer may, therefore, be as elusive as the ‘reasonable person.’

8.

9.

SABEL BV v. Puma AG, Rudolf Dassler Sport
CJEU, 11 November 1997, C-251/95; Interflora
Inc & Anor v. Marks and Spencer Plc (Rev 1)
[2014] EWCA Civ 1403; Case C147/14 Loutfi
Management Propriété Intellectuelle SARL v.
AMJ Meatproducts NV, Halalsupply NV.
Interflora Inc & Anor v. Marks and Spencer Plc (Rev
1) [2014] EWCA Civ 1403; Reckitt & Colman SA
(Pty) Ltd v. SC Johnson & Son SA (Pty) Ltd [1991]
ZASCA 181; Cadila Healthcare Limited vs Cadila
Pharmaceuticals Limited AIR 2001 SC 1952.

The average consumer normally perceives a
mark as a whole and does not proceed to
analyze its various details. For the purposes of
that global appreciation, the average consumer of the category of products concerned
is deemed to be reasonably well-informed
and reasonably observant and circumspect.
However, account should be taken of the fact
that the average consumer only rarely has the
chance to make a direct comparison between
the different marks but must place his trust in
the imperfect picture of them that he has kept
in his mind. It should also be borne in mind that
the average consumer’s level of attention is likely
to vary according to the category of goods or
services in question.
7. Substantial number of consumers: The onus rests
on the trademark owner to prove that a substantial
number of persons interested or concerned (usually as
a customer) in the class of goods for which his trademark has been registered will probably be confused.10
8. Attentive client: Depending on the product, the public
may be more attentive and discerning and less likely
to be confused.
CLAUDE RUIZ-PICASSO AND OTHERS v. EUROPEAN
UNION INTELLECTUAL PROPERT Y OFFICE,
C-361/04 P:
Where it is established in fact that the objective characteristics of a given product mean
that the average consumer purchases it only
after a particularly careful examination, it is
important in law to take into account that such
a fact may reduce the likelihood of confusion
between marks relating to such goods at the

10. Plascon-Evans Paints (TVL) Ltd. v. Van
Riebeeck Paints (Pty) Ltd [1984] ZASCA 51.
Sexwax Incorporated v. Zoggs International
Limited [2014] NZCA 311 discusses the issue
in some detail in the context of applications for
registration, but the principles are the same.

39

CASEBOOK ON IP ENFORCEMENT

crucial moment when the choice between
those goods and marks is made.

C. Global appreciation
9. The trademark must be considered as a whole:11
The general trend in considering trademark infringement is to apply the global appreciation test. Rights in
trademarks exist in the entire mark as registered and
not as segmented or dissected because ‘it is a fallacy
to break the faggot stick by stick’12 and ‘legal surgery, in
which trademarks have parts enhanced or discarded, is
of little value in determining the effect of design marks
on purchasers who merely recollect.’13 A close analysis
should accordingly be avoided.14 This does not mean
that the dominant feature of a trademark does not play
a role in determining the likelihood of confusion. On the
contrary, it plays an important part. The following test
from THE PIANOTIST COMPANY LTD (1906) 23 RPC
774 has been applied in numerous cases.15
You must take the two words [or marks]. You
must judge of them, both by their look and
by their sound. You must consider the goods
to which they are to be applied. You must
consider the nature and kind of customer who
would be likely to buy those goods. In fact,
you must consider all the surrounding circumstances; and you must further consider what
is likely to happen if each of those trademarks
is used in a normal way as a trademark for the
goods of the respective owners of the marks.
If, considering all those circumstances, you
come to the conclusion that there will be a
confusion— that is to say, not necessarily that
one man will be injured and the other will gain
illicit benefit, but that there will be a confusion
in the mind of the public which will lead to
confusion in the goods—then you may refuse

11. Ceramiche Caesar SpA v. Caesarstone
Sdot-Yam Ltd [2017] SGCA 30.
12. Joseph Schlitz Brewing Co v. Houston Ice and
Brewing Co 250 U.S. 28 (1919) per Holmes J.
13. Grandpa Pidgeon’s of Missouri Inc
v. Borgsmiller 447 F2d 586.
14. Veuve Clicquot Ponsardin v. Boutiques
Cliquot Ltée, [2006] 1 SCR 824, 2006 SCC 23
(CanLII); Cadila Healthcare Limited vs Cadila
Pharmaceuticals Limited AIR 2001 SC 1952 [India].
15. N V Sumatra Tobacco Trading Co v. British
American Tobacco (Brands) Inc [2010] NZCA 24.

40

the registration, or rather you must refuse the
registration in that case.
10. The global appreciation of sight, sound and concept:
SABEL BV v. PUMA AG, RUDOLF DASSLER SPORT
CJEU, 11 November 1997, C-251/95:
The appreciation of the likelihood of confusion ‘depends on numerous elements and, in
particular, on the recognition of the trademark
on the market, of the association which can
be made with the used or registered sign, of
the degree of similarity between the trademark and the sign and between the goods or
services identified’. The likelihood of confusion must therefore be appreciated globally,
taking into account all factors relevant to the
circumstances of the case.
That global appreciation of the visual, aural or
conceptual similarity of the marks in question
must be based on the overall impression given
by the marks, bearing in mind, in particular,
their distinctive and dominant components.
‘REERUDYUTAN’ CASE 1998 (Gyo-Hi) 85, July 11,
2000 [Supreme Court]:
Whether or not a trademark is likely to cause
confusion should be determined comprehensively in light of factors such as the degree of
similarity between the trademark and another
person’s indication, the degree of [being]
well-known, fame and creative nature of the
other person’s indication, and the degree of
association in terms of nature, use or purpose
between the designated goods or services
of the trademark and the goods or services
pertaining to the other person’s business,
as well as the commonality in terms of traders and consumers of goods or services
and other circumstances of transactions.
Furthermore, such determination should be
made on the basis of the level of care that traders and consumers of the designated goods
or services of the trademark normally have.

TRADEMARKS: SIMILAR MARKS AND CONFUSION

11. Interdependence of factors:
CANON KABUSHIKI KAISHA v. METRO-GOLDWYNMAYER INC, 29 September 1998, C-39/97:
A global assessment of the likelihood of confusion implies some interdependence between
the relevant factors, and in particular a similarity between the trademarks and between
these goods or services. Accordingly, a lesser
degree of similarity between these goods or
services may be offset by a greater degree of
similarity between the marks, and vice versa.
Furthermore the more distinctive the earlier
mark, the greater the risk of confusion. Since
protection of a trademark depends on there
being a likelihood of confusion, marks with a
highly distinctive character, either per se or
because of the reputation they possess on the
market, enjoy broader protection than marks
with a less distinctive character.
12. First impressions and imperfect recollection:16
Aristoc Ltd. v. Rysta Ltd (1945) 62 RPC 65 a leading
case, was quoted in APPLE CORPS LTD. v. APPLE
COMPUTER, INC [2006] EWHC 996:
The answer to the question whether the sound
of one word resembles too nearly the sound
of another must nearly always depend on first
impression, for obviously a person who is familiar with both words will neither be deceived
nor confused. It is the person who only knows
the one word and has perhaps an imperfect
recollection of it who is likely to be deceived
or confused. Little assistance, therefore, is to
be obtained from a meticulous comparison of
the two words, letter-by-letter and syllableby-syllable, pronounced with the clarity to be
expected from a teacher of elocution.
The court must be careful to make allowance
for imperfect recollection and the effect of
careless pronunciation and speech on the part

not only of the person seeking to buy under
the trade description, but also of the shop
assistant ministering to that person’s wants.
13. Effect of dominant features of the marks on the
assessment:17
PLASCON-EVANS PAINTS (TVL) LTD. v. VAN
RIEBEECK PAINTS (PTY) LTD [1984] ZASCA 51:
If each of the marks contains a main or dominant feature or idea the likely impact made
by this on the mind of the customer must
be taken into account. As it has been put,
marks are remembered rather by general
impressions or by some significant or striking
feature than by a photographic recollection of
the whole. And finally, consideration must be
given to the manner in which the marks are
likely to be employed as, for example, the use
of name marks in conjunction with a generic
description of the goods.
MATRATZEN CONCORD GMBH v. OHIM (Case T-6/01):
A complex trademark cannot be regarded as
being similar to another trade mark which is
identical or similar to one of the components
of the complex mark, unless that component
forms the dominant element within the overall
impression created by the complex mark. That
is the case where that component is likely to
dominate, by itself, the image of that mark
which the relevant public keeps in mind, with
the result that all the other components of the
mark are negligible within the overall impression created by it.
That approach does not amount to taking
into consideration only one component of
a complex trade mark and comparing it
with another mark. On the contrary, such
a comparison must be made by examining
the marks in question, each considered as
a whole.
However, an element of a complex trade mark
which is descriptive of the goods covered by

16. Australian Woollen Mills Limited v. F S Walton and
Company Limited [1937] HCA 51; 58 CLR 641; Shell
Co of Australia Ltd v. Esso Standard Oil (Australia)
Ltd (1963) 109 CLR 407(HC). Glaxo Group Ltd. and
Anr. v. Neon Laboratories Ltd [2004] F.S.R. 46 (HC).

17. Matratzen Concord GmbH v. OHIM (Case T-6/01);
CCHG Ltd v. Vapouriz Ltd [2017] CSOH 100.

41

CASEBOOK ON IP ENFORCEMENT

that mark cannot, in principle, be considered
to be the dominant element of the latter.

and the more distinctive the earlier mark, the greater
will be the likelihood of confusion.18

14. Highly distinctive marks have wider protection than
those that are less distinctive:

17. Multi-culturalism: Regard should be had to multiculturalism in the particular jurisdiction in considering
the likelihood of confusion.

LLOYD SCHUHFABRIK MEYER & CO. GMBH v.
KLIJSEN HANDEL BV CJEU, 22 June 1999, C-342/97:
There may be a likelihood of confusion,
notwithstanding a lesser degree of similarity
between the trademarks, where the goods or
services covered by them are very similar and
the earlier mark is highly distinctive.

CORN PRODUCTS REFINING CO. v. SHANGRILA
FOOD PRODUCTS LTD AIR 1960 SC 142:

In determining the distinctive character of a
mark and, accordingly, in assessing whether
it is highly distinctive, the court must make
an overall assessment of the greater or lesser
capacity of the mark to identify the goods or
services for which it has been registered as
coming from a particular undertaking, and
thus to distinguish those goods or services
from those of other [undertakings].

It is well known that the question whether the
two marks are likely to give rise to confusion
or not is a question of first impression. It is for
the court to decide that question. English cases
proceeding on the English way of pronouncing
an English word by Englishmen, which it may
be stated is not always the same, may not be
of much assistance in our country in deciding
questions of phonetic similarity. It cannot be
overlooked that the word is an English word
which to the mass of the Indian people is a
foreign word. It is well recognized that in deciding a question of similarity between two marks,
the marks have to be considered as a whole.

15. Confusion must be attributable to the resemblance
(or otherwise) of the marks themselves and not to
extraneous matter:

18. Conceptual association may not be enough: The
fact that two marks are conceptually similar may not
be sufficient to give rise to a likelihood of confusion.19

NATIONAL BRANDS LTD v. BLUE LION MANUFACTURING (PTY) LTD [2001] ZASCA 17:

SABEL BV v. PUMA AG, RUDOLF DASSLER SPORT
CJEU, 11 November 1997, C-251/95:

It is important to bear in mind that the likelihood (or otherwise) of deception or confusion
must be attributable to the resemblance (or
otherwise) of the marks themselves and not
to extraneous matter. Similarities in the goods
themselves or in the form in which they are
presented might form the basis for an action
for passing-off [unlawful competition], but
that is not what is before us, and for present
purposes, they must be disregarded.

The question was the extent to which a
conceptual similarity can determine whether
there is a likelihood of confusion. Puma’s mark
was the senior mark. The court did not answer
the factual question.

(The trademark is ROMANY CREAMS. To establish
trademark infringement, ROMANTIC DREAMS must
be confusingly similar to ROMANY CREAMS, which
it is not. The similarity of the packaging may give rise
to passing off.)
16. Degree of similarity of goods or services: The greater
the similarity between the goods or services covered

42

It is therefore not impossible that the conceptual
similarity resulting from the fact that two marks
use images with analogous semantic content
may give rise to a likelihood of confusion where
the earlier mark has a particularly distinctive
character, either per se or because of the reputation it enjoys with the public. However, where

18. Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen
Handel BV CJEU, 22 June 1999, C-342/97.
19. Zwilling v. Zweibrüder BGH, Urt. v. 29. April
2004 - I ZR 191/01 [Germany]; Cowbell AG
v. ICS Holdings Ltd [2001] ZASCA 18.

TRADEMARKS: SIMILAR MARKS AND CONFUSION

the earlier mark is not especially well known to
the public and consists of an image with little
imaginative content, the mere fact that the two
marks are conceptually similar is not sufficient
to give rise to a likelihood of confusion.
The criterion of ‘likelihood of confusion which
includes the likelihood of association with the
earlier mark’ means that the mere association,
which the public might make between two trademarks as a result of their analogous semantic
content, is not in itself a sufficient ground for
concluding that there is a likelihood of confusion
within the meaning of that provision.

D. Evidence
19. Evidence of intention: The intention or motive of
the defendant in adopting the plaintiff’s trademark
is sometimes considered in determining whether the
defendant’s mark is confusingly similar to that of the
plaintiff. The argument is that it will not be assumed
that a defendant, who intended to imitate, failed in its
object.20 The other view is that the subjective mental
state of the defendant is irrelevant in determining
confusion.21
20. Evidence of the likelihood of confusion: Where
the goods are available to the public for purchase
and consumption or domestic use, the fact-finder is
entitled to have regard to his or her own experience
and reaction as a member of the public. Because
these are not specialist products, there is no need to
rely on evidence from persons engaged in that trade
or industry, and such evidence may even be irrelevant
and inadmissible.22

20. Cadbury Schweppes Pty. Limited and others
(Appeal No. 5 of 1980) v. The Pub Squash Co. Pty.
Limited (New South Wales) [1980] UKPC 30.
21. Advantage Group Ltd v. Advantage
Computers Ltd [2002] NZCA 282.
22. Sexwax Incorporated v. Zoggs International
Limited [2014] NZCA 311; Playboy Enterprises
v. Bharat Malik 2001 PTC 328.

CLIPSAL AUSTRALIA PT Y LTD v. CLIPSO
ELECTRICAL PTY LTD (NO 3) [2017] FCA 60:
Insofar as the market consists of industry
participants, the principle in GE Trade Mark
will require evidence from market participants
that there was a likelihood of confusion. In
relation to the segment that is made up of
members of the public, the Court can itself
reach a conclusion on the issue.
21. Evidence of actual confusion: Evidence of actual
confusion (e.g., misdirected inquiries, complaints or
mail) is valuable but seldom available. Evidence of the
condition of the trade, especially if one is dealing with
a specialist market, may be important.
22. Expert and survey evidence: The evidence of
psychologists and linguistic experts tends to be singularly unhelpful, if not inadmissible, because in the final
analysis it tends to disguise opinion as a statement of
scientific principle or fact and attempts subtly to displace
the court’s value judgment with that of the witness.23
Survey evidence raises two questions: the problem of
getting the evidence before the court (the problem of
admissibility) and the problem of the value of the survey,
having regard to the way in which it was conducted (the
problem of weight). As far as admissibility is concerned,
it is now generally accepted that the results of a properly
conducted survey are admissible (sometimes under
statutory exceptions to the hearsay rule, and sometimes
subject to the court’s prior approval).24
As far as weight is concerned, courts have sometimes
tended to approach the evidence with a degree of
skepticism.25 If a survey is to have any value, the questions should be fair, and they should be so formulated
as to preclude a weighted or conditioned response.26

23. Reckitt & Colman SA (Pty) Ltd v. SC Johnson
& Son SA (Pty) Ltd [1991] ZASCA 181.
24. E.g., McDonald’s Corporation v. Joburgers Drive-Inn
Restaurant (Pty) Ltd. [1996] ZASCA 82; Interflora
Inc & Anor v Marks & Spencer Plc (Rev 1) [2013]
EWCA Civ 319; Zee Entertainment Enterprises
Ltd & Ors v. Zeebox Ltd [2014] EWCA Civ 82.
25. Masterpiece Inc. v. Alavida Lifestyles Inc,
[2011] 2 SCR 387, 2011 SCC 27 (CanLII).
26. Hoechst Pharmaceuticals (Pty) Ltd. v. Beauty
Box (Pty) Ltd. and Another [1987] ZASCA 5.

43

TRADEMARK INFRINGEMENT: WELL-KNOWN TRADEMARKS

Chapter 5
Trademark infringement:
well-known trademarks
A. Introduction

46

B. Trademark dilution

46

C. Protection of foreign
unregistered trademarks

49

45

CASEBOOK ON IP ENFORCEMENT

A. Introduction
1. Scope of chapter: Well-known trademarks are entitled to protection in three circumstances.1
• The first, already mentioned in a previous chapter,
is for well-known marks registered within the jurisdiction. They may be protected against ‘dilution’2
without confusion. This kind of protection is not
obligatory but envisaged in the TRIPS Agreement.3
• The second is based on a convention obligation
created by Art. 6bis of the Paris Convention4 as
reinforced and extended by Art. 16.2 and 16.3 of the
TRIPS Agreement. This protection is available for a
peregrine trademark owner whose trademark, even
though not registered within the local jurisdiction,
is well-known locally.
• The third is the protection given against passing off
(unfair competition). This general protection is available irrespective of whether the mark is registered.
It is the subject of the next chapter.

This is generally referred to as trademark ‘dilution.’7
The first requirement is that the trademark must be
registered within the jurisdiction. This aspect was dealt
with earlier and does not require any further discussion.
The second is that the trademark must be well-known
within the jurisdiction. This requirement is differently
expressed in national laws, but despite the semantic
differences between ‘well-known,’ ‘famous’ and ‘trademarks with a reputation,’ the concepts mean the same.8
GENERAL MOTORS v. YPLON C-375/97:
In order to enjoy protection extending to nonsimilar products or services, a registered
trademark must be known by a significant
part of the public concerned by the products
or services which it covers. It is sufficient for
the registered trademark to be known by a
significant part of the public concerned in a
substantial part of the territory.

B. Trademark dilution5

Finally, the objectionable mark must ‘dilute’ the
registered mark in one or other of the different
prescribed ways.

2. Protection of well-known registered trademarks:
Use of a trademark constitutes infringement where the
trademark (a) is registered, (b) is well-known within the
local jurisdiction and (c) the objectionable mark takes
unfair advantage of, or is detrimental to, the distinctive
character or the repute of the registered trademark.6

3. Confusion is not required for dilution: Confusion or
its likelihood is not required. However, there must be
a link in the mind of the public between the registered
mark and the infringing mark.
ADIDAS-SALOMON AG AND ADIDAS BENELUX BV
v. FITNESSWORLD TRADING LTD C-408/01, ECR
2003, I-12537:

1.

2.
3.
4.
5.

6.

46

Cf. WIPO ‘Joint Recommendation
Concerning Provisions on the Protection
of Well-known Trademarks’ 1999.
The term is used in a generic sense.
https://www.wto.org/english/
docs_e/legal_e/27-trips.pdf.
http://www.wipo.int/export/sites/www/
treaties/en/documents/pdf/paris.pdf.
Azumi Ltd v. Zuma’s Choice Pet Products Ltd
[2017] EWHC 609 (IPEC); Red Bull GmbH v.
Sun Mark Ltd & Anor [2012] EWHC 1929 (Ch)
(17 July 2012); Louis Vuitton Malletier SA v. My
Other Bag, 156 F. Supp. 3d 425 - Dist. Court,
SD New York 2016; Enterprise Holdings Inc v.
Europcar Group UK Ltd [2015] EWHC 17 (Ch).
Case C-487/07 L’Oré al v. Bellure NV [2009] ETMR
55, [2009] ECR I-5185. A similar but more detailed
Act is the 15 U.S. Code § 1125 - False designations
of origin, false descriptions, and dilution forbidden.

Article 5(2) establishes, for the benefit of trademarks with a reputation, a form of protection
whose implementation does not require the
existence of such a likelihood [of confusion].
Article 5(2) applies to situations in which the
specific condition of the protection consists

7.
8.

Interflora Inc & Anor v. Marks and Spencer
Plc (Rev 1) [2014] EWCA Civ 1403.
Davidoff & Cie SA and Zino Davidoff SA v. Gofkid Ltd
CJEU, 9 January 2003. Compare Y-Teq Auto Parts
(M) Sdn Bhd v. X1R Global Holdings & Anor (CACA
NO. W-02(IPCV)(A)-511 -03/2016). It may be different
in China: Cynthia S Wang, China: the problem with
defining famous. See in general about China: Ran,
Ruixue, Well-known trademark protection in China:
before and after the TRIPS amendments to China’s
trademark law, UCAL Pacific Basin Law Journal, 19(2).

TRADEMARK INFRINGEMENT: WELL-KNOWN TRADEMARKS

of a use of the sign in question without due
cause which takes unfair advantage of, or is
detrimental to, the distinctive character or the
repute of the trademark.
The protection conferred is not conditional on a
finding of a degree of similarity between the mark
with a reputation and the sign such that there
exists a likelihood of confusion between them
on the part of the relevant section of the public.
It is sufficient for the degree of similarity between
the mark with a reputation and the sign to have
the effect that the relevant section of the public
establishes a link between the sign and the mark.
4. Dissimilar goods and services: Importantly, the
infringing use need not be in respect of goods or
services that are the same or similar to those for which
the trademark is registered.9
PREMIER BRANDS UK LTD. v. TYPHOON EUROPE
LTD & ANOR [2000] EWHC 1557 (Ch)
The purpose of [the provision] is to provide
‘extensive protection to those trademarks
which have a reputation’, and such protection
is clearly intended to be over and above that
available to marks without a reputation.
The basic principle is that a trader may not
take unfair advantage of the trademark of
another. This can be done in a number of
ways. The principal method is by diluting
the trademark through blurring or tarnishing.
Confusion is not required.
5. Detriment must be actual:
VEUVE CLICQUOT PONSARDIN v. BOUTIQUES
CLIQUOT LTÉE, [2006] 1 SCR 824, 2006 SCC 23:
The depreciation or anti-dilution remedy is
sometimes referred to as a ‘super weapon’
which, in the interest of fair competition, needs
to be kept in check.

9.

C-65/12 Leidseplein Beheer BV, Herdrikus De Vries
v. Red Bull GmbH, Red Bull Nederland BV; Y-Teq
Auto Parts (M) Sdn Bhd v. X1R Global Holdings &
Anor (CACA NO. W-02(IPCV)(A)-511 -03/2016).

The Advocate General’s opinion in GENERAL MOTORS
v. YPLON, C-375/97, CJEU expressed a similar word
of caution:
It is to be noted in particular that Article 5(2) [of
the EU directive] does not refer to a mere risk
or likelihood of its conditions being fulfilled.
The wording is more positive: ‘takes unfair
advantage of, or is detrimental to’. Moreover,
the taking of unfair advantage or the suffering
of detriment must be properly substantiated,
that is to say, properly established to the
satisfaction of the national court: the national
court must be satisfied by evidence of actual
detriment, or of unfair advantage.
6. Taking unfair advantage of the distinctive character
or the repute of the trademark:10 It is an act of unfair
competition to associate the quality of one’s goods or
services with that of prestigious competitive products
for the purpose of exploiting the good reputation of a
competitor’s goods or services in order to enhance
one’s promotional efforts.11
L’ORÉAL v. BELLURE NV Case C-487/07 [2009] ETMR
55, [2009] ECR I-5185:12
As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of
the trademark’, also referred to as ‘parasitism’
or ‘free-riding’, that concept relates not to the
detriment caused to the mark but to the advantage taken by the third party as a result of the
use of the identical or similar sign. It covers, in
particular, cases where, by reason of a transfer
of the image of the mark or of the characteristics
which it projects to the goods identified by the
identical or similar sign, there is clear exploitation
on the coat-tails of the mark with a reputation.
7. Detriment to the distinctive character of the mark
(blurring):13

10. Future Enterprises Pte Ltd v. EUIPO,
McDonald’s International Property Co Ltd,
T-518/13, EU:T:2016:389 (July 2016).
11. Dimple [1985] GRUR 550 and Quick [1959] GRUR
182 quoted in Premier Brands UK Ltd. v. Typhoon
Europe Ltd & Anor [2000] EWHC 1557 (Ch). Y-Teq
Auto Parts (M) Sdn Bhd v. X1R Global Holdings &
Anor (CACA NO. W-02(IPCV)(A)-511 -03/2016).
12. L’Oreal SA & Ors v. Bellure NV & Ors [2010] EWCA Civ 535.
13. Interflora Inc & Anor v. Marks and Spencer Plc (Rev

47

CASEBOOK ON IP ENFORCEMENT

L’ORÉAL v. BELLURE NV Case C-487/07 [2009] ETMR
55, [2009] ECR I-5185:

L’ORÉAL v. BELLURE NV Case C-487/07 [2009] ETMR
55, [2009] ECR I-5185:

As regards detriment to the distinctive character
of the mark, also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’, such detriment is caused
when that mark’s ability to identify the goods or
services for which it is registered is weakened,
since use of an identical or similar sign by a third
party leads to dispersion of the identity and hold
upon the public mind of the earlier mark. That is
particularly the case when the mark, which at
one time aroused immediate association with
the goods or services for which it is registered,
is no longer capable of doing so.

As regards detriment to the repute of the mark,
also referred to as ‘tarnishment’ or ‘degradation’, such detriment is caused when the goods
or services for which the identical or similar sign
is used by the third party may be perceived by
the public in such a way that the trademark’s
power of attraction is reduced. The likelihood
of such detriment may arise in particular from
the fact that the goods or services offered by
the third party possess a characteristic or a
quality which is liable to have a negative impact
on the image of the mark.

8. Blurring erodes distinctiveness:
PREMIER BRANDS UK LTD. v. TYPHOON EUROPE
LTD & ANOR [2000] EWHC 1557 (Ch):
Blurring occurs where the distinctiveness of
a mark is eroded. A pithy explanation of blurring may be found in the observations of Sir
Thomas Bingham MR in Taittinger SA v Allbev
Ltd [1993] FSR 641 where he said this [in the
context of passing-off]:
The first plaintiff’s reputation and goodwill in the description Champagne
derive not only from the quality of their
wine and its glamorous associations
but also from the very singularity and
exclusiveness of the description, the
absence of qualifying epithets and
imitative descriptions. Any product
which is not Champagne but is allowed
to describe itself as such must inevitably, in my view, erode the singularity
and exclusiveness of the description
Champagne and so cause the first
plaintiffs damage of an insidious but
serious kind.
9. Detriment to the repute of the mark (tarnishing of a
trademark):14

1) [2014] EWCA Civ 1403: Intel Corp Inc v. CPM
United Kingdom Ltd (C-252/07) [2008] ECR I-8823.
14. C-65/12 Leidseplein Beheer BV, Herdrikus De Vries
v. Red Bull GmbH, Red Bull Nederland BV. As to

48

LAUGH IT OFF PROMOTIONS CC v. SOUTH AFRICAN
BREWERIES INTERNATIONAL [2004] ZASCA 76:
For instance, the use of the American Express
charge card and the slogan ‘Don’t leave home
without it’ in relation to condoms was not
acceptable to a US court [American Express
Co v. Vibra Approved Laboratories Corp 10
USPQ 2d 2006 (SDNY 1989)]. In Germany, the
Federal Supreme Court found that the use of
the confectionary trademark Mars and its slogan
that it will liven you up in relation to a gag item
consisting of a condom, tarnished Mars [Case
I ZR 79/92, 1995 [26] IIC 282]. And in England,
an attempt to register Visa as a trademark,
also in relation to condoms, was dismissed on
the same ground [A Sheimer (M) SDN BHD’s
Trademark Application [2000] RPC 13 (p 484)].
10. Test for detriment:
PEBBLE BEACH COMPANY v. LOMBARD BRANDS
[2002] ScotCS 265:
I must also be satisfied that there is a prima
facie case that the defenders’ use of the sign
would take unfair advantage of the distinctive character or repute of the pursuers’
trademark. Not only must this advantage be

parody, see United Airlines, Inc. v. Cooperstock
2017 FC 616 and Laugh It Off Promotions CC v.
South African Breweries International (Finance)
BV [2005] ZACC 7 and cases there mentioned.
Also The FRANCK MIURA (2017) case Japan.

TRADEMARK INFRINGEMENT: WELL-KNOWN TRADEMARKS

unfair, but it must be of a sufficiently significant degree to warrant restraining what is, ex
hypothesi, a non-confusing use. It is worthy
of note that there is a general reluctance to
apply these provisions too widely.
11. Evidence of detriment: The degree of proof of detriment depends much on the terms of local laws. In the EU
and, consequently the United Kingdom, the requirement
is ‘detriment or unfair advantage,’15 while in South Africa
the Act requires a likelihood, and not an actual detriment
or unfair advantage.16 In the United States, the statute
was amended after the Victoria’s Secret judgment,17 and
proof of actual harm is no longer required.
COCA-COLA v. EUIPO - MITICO (MASTER) T-61/16:
The proprietor of the earlier mark is required to adduce
evidence that use of the later mark takes unfair advantage of the distinctiveness or repute of the earlier mark.
To that end, the proprietor of the earlier mark is not
required to demonstrate actual and present harm to
the proprietor's mark, as confirmed by the wording of
that provision in the conditional. When it is foreseeable that such injury will ensue from the use that the
proprietor of the later mark may be led to make of
its mark, the proprietor of the earlier mark cannot be
required to wait for it actually to occur in order to be
able to prohibit that use. However, the proprietor of the
earlier mark must establish the existence of evidence
making it possible to conclude that there is a serious
risk that such an infringement will occur in the future
(see, to that effect, Environmental Manufacturing LLP
v. Société Elmar Wolf Case C383/12 P, paragraph 51)
or, in other words, adduce prima facie evidence of a
non-hypothetical future risk of undue profit or injury.
A finding of a risk of free-riding may, like a
finding of a risk of dilution or a risk of tarnishment, be established, in particular, on the
basis of logical inferences — so long as they
are not mere suppositions — resulting from
an analysis of the probabilities and by taking

15. Comic Enterprises Ltd v. Twentieth Century Fox
Film Corporation [2016] EWCA Civ 41. http://www.
bailii.org/ew/cases/EWCA/Civ/2016/41.html
16. Laugh It Off Promotions CC v. South African
Breweries International (Finance) BV [2005] ZACC 7.
http://www.saflii.org/za/cases/ZACC/2005/7.html
17. Moseley V. v. Secret Catalogue, INC.
(01-1015) 537 U.S. 418 (2003).

account of the usual practices in the relevant
commercial sector as well as all the other
circumstances of the case.

C. Protection of foreign unregistered
trademarks18
12. The Paris Convention:19 According to Art. 6 bis(1)
of the Paris Convention, a peregrine trademark owner
whose trademark, even though not registered within
the local jurisdiction, is well-known locally may object
to the registration, claim cancellation or prohibit the
use of a trademark that constitutes a reproduction,
an imitation or a translation, which is liable to create
confusion of the owner's trademark.
13. The TRIPS Agreement:20 The TRIPS Agreement
provides additionally that the Art. 6bis protection must
also be available in respect of service marks and not
only to goods marks (Art. 16.2), and that it must apply to
certain dissimilar goods or services, namely (Art. 16.3):
goods or services which are not similar to
those in respect of which a trademark is registered, provided that use of that trademark in
relation to those goods or services would
indicate a connection between those goods
or services and the owner of the registered
trademark and provided that the interests of
the owner of the registered trademark are
likely to be damaged by such use.
14. Exceptional nature of protection: These provisions
overlap in part with the principles relating to unfair
competition21 but, on the other hand, form exceptions to
some important trademark principles, namely those of:
• territoriality (a trademark is only effective within the
jurisdiction of registration),
• specialty (trademarks protect goods and services
for which they have been registered) and

18. Novelty Pte Ltd v. Amanresorts Ltd
and Another [2009] 3 SLR 216.
19. http://www.wipo.int/export/sites/www/
treaties/en/documents/pdf/paris.pdf.
20. https://www.wto.org/english/
docs_e/legal_e/27-trips.pdf.
21. See the discussion in Starbucks (HK) Ltd &
Anor v. British Sky Broadcasting Group PLC
& Ors (Rev 1) [2015] UKSC 31 #42 to #46.

49

CASEBOOK ON IP ENFORCEMENT

• registration (registration is a prerequisite for trademark protection).
15. Requirements for protection: The requirements for
protection of a foreign trademark are these:22
• The owner of the foreign trademark must have a real
and effective industrial or commercial establishment
in a convention country.
• A sector of the population must be ‘interested in
the goods or services to which the mark relates.’
• The mark must be well-known within the local jurisdiction as a trademark belonging to an enterprise
with a base in another country.
• A substantial number of people must have the
requisite knowledge.
• The local mark must constitute a reproduction, an
imitation or a translation23 of the foreign trademark.
• The local trademark must cause confusion.
16. Establishing that a trademark is well-known: A practical problem that arises in this context is whether the
mark must be well-known to all sectors of the public or
whether it will be sufficient if it is known to the relevant
section of the public that has an interest in the mark.
Other questions relate to the number of persons to
whom the mark must have been known and how well
it must have been known. The TRIPS Agreement, in
Art. 16.2, states:
In determining whether a trademark is wellknown, Members shall take account of the
knowledge of the trademark in the relevant
sector of the public, including knowledge in the
Member concerned which has been obtained
as a result of the promotion of the trademark.
17. Relevant sector of the public: Article 16.2 of the
TRIPS Agreement deals with the concept of ‘relevant
sector’ of the public:
In determining whether a trademark is wellknown, Members shall take account of the

22. AM Moolla Group Limited and Others v.
Commissioner for SARS [2003] ZASCA 18.
See also Jordan v. Qiaodan, a judgment of the
Supreme People’s Court of China of December 7,
2016. The full judgment is not yet accessible.
23. Michael Jordan is well known in China as
‘Qiaodan’ (乔丹), which means that the
translation of his name is also protected.

50

knowledge of the trademark in the relevant
sector of the public, including knowledge in the
Member concerned which has been obtained
as a result of the promotion of the trademark.
MCDONALD’S CORPORATION v. JOBURGERS
DRIVE-INN RESTAURANT (PTY) LTD. AND ANOTHER
[1996] ZASCA 82:
If protection is granted only to marks, which
are known (not to say well known) to every
segment of the population (or even to most
segments of the population), there must be
very few marks, if any, which could pass
the test. The legislation would therefore not
achieve its desired purpose. Moreover, there
would not appear to be any point in imposing
such a rigorous requirement. In argument,
we were referred as an example to a mark
which might be very well known to all persons
interested in golf. Why should it be relevant,
when deciding whether or not to protect such
a mark, that non-golfers might never have
heard of it? I consider therefore that a mark is
well known in the Republic if it is well known
to persons interested in the goods or services
to which the mark relates.
The next question then is: how well should
it be known to such persons? In the present
context the important practical question is
not whether a few people know the mark well
but rather whether sufficient persons know it
well enough to entitle it to protection against
deception or confusion.
How many people are sufficient? The only
guideline provided by the Legislature lies in the
expression “well known”. It seems to me the
Legislature intended to extend the protection
of a passing-off action to foreign businessmen
who did not have a business or enjoy goodwill
inside the country, provided their marks were
well known in the Republic. It seems logical
to accept that the degree of knowledge of
the marks that is required would be similar to
that protected in the existing law of passingoff. The concept of a substantial number of
persons is well established. It provides a practical and flexible criterion which is consistent
with the terms of the statute.

TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

Chapter 6
Trademark infringement
and unfair competition
A. Introduction

52

B. Passing-off

52

C. Extended passing-off

56

D. Geographical indications and
collective marks

57

51

CASEBOOK ON IP ENFORCEMENT

A. Introduction
1. TRIPS Agreement obligation: Art. 2.1 of the TRIPS
Agreement1 requires of member states of the WTO to
comply with Art. 10 bis of the Paris Convention,2 which
states that countries are bound to assure to nationals
of such countries effective protection against unfair
competition and that any act of competition contrary
to honest practices in industrial or commercial matters
constitutes an act of unfair competition. It particularizes acts that could be said to amount to passing off.

The Japanese Unfair Competition Prevention Act5 is even
more specific and defines the activities that amount to
unfair competition in terms that cover not only passingoff but also the protection of well-known marks.

B. Passing-off

3. Scope of this section: This section deals with what
is known in the common-law tradition as classical
passing-off. Passing-off is the common form of unfair
competition, whether in civil-law or common-law
Laws dealing with unlawful trade practices, including jurisdictions. It is known in U.S. jurisprudence as
laws against counterfeiting and monopolies, often cover ‘trade identity unfair competition.’ Classic passing-off
much that would be protected by unfair competition, protects goodwill.
issues discussed in later chapters.3
WILLIAMS T/A JENIFER WILLIAMS & ASSOCIATES
2. Civil law systems: Civil law systems tend to recognize AND ANOTHER v. LIFE LINE SOUTHERN TRANSVAAL
a general delict of unfair competition, which, latterly, [1996] ZASCA 46:
is amplified by a list of examples. One such instance
is German law. The general proposition in § 3 of the
Passing-off is a species of wrongful competiGerman UWG Act4 is that acts of unfair competition
tion in trade or business. In its classic form
likely to seriously impair competition to the disadit usually consists in A representing, either
vantage of competitors, consumers or other market
expressly or impliedly (but almost invariably by
participants are prohibited. The law then proceeds
the latter means), that the goods or services
to provide a list of examples. The one of interest in
marketed by him emanate in the course of
the present context is that a person is acting unfairly,
business from B or that there is an association
in the sense of Article 3, if he/she offers products or
between such goods or services and the busiservices that are imitations of the products or services
ness conducted by B. Such conduct is treated
of a competitor, if he/she:
by the law as being wrongful because it results,
or is calculated to result, in the improper filch• avoidably deceives the recipient about the commering of another’s trade and/or in an improper
cial origin of the product or service,
infringement of his goodwill and/or causing
• improperly exploits or negatively affects the reputainjury to that other’s trade reputation.6
tion of the product or service imitated or
• has dishonestly obtained the knowledge or equip- 4. Examples of passing-off: A few Japanese cases will
ment required for forgery.
illustrate the matter.

1.
2.
3.

4.

52

https://www.wto.org/english/
docs_e/legal_e/27-trips.pdf.
http://www.wipo.int/export/sites/www/
treaties/en/documents/pdf/paris.pdf.
E.g., the Australian Trade Practices Act 1974 (Cth).
Cf Re Taco Company of Australia Inc; Taco Bell
v. Taco Bell Pty Limited; Denbrad Management Pty
Limited; Robert Francis; Eric Baillie Francis [1982]
FCA 136; Parkdale Custom Built Furniture Pty Ltd
v. Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191;
Sydney Medical Service Co-operative Limited v.
Lakemba Medical Services Pty Ltd [2016] FCA 763.
https://www.gesetze-im-internet.de/
englisch_uwg/englisch_uwg.html.

In McDonald’s case,7 the defendant used the wellknown arched M of McDonald’s as part of its trademark.
This was not a trademark infringement case because
the arched M had not been registered as a trademark.
The court found that the defendant’s use of the mark was
unfair because the logo was unique to McDonald’s and
had been in constant use for a long period. The court

5.
6.

7.

http://www.wipo.int/wipolex/en/details.jsp?id=16034.
Sydney Medical Service Co-operative Limited v.
Lakemba Medical Services Pty Ltd [2016] FCA 763;
Pioneer Foods v. Bothaville Milling [2014] ZASCA 6.
Osaka District Court, Oct. 15, 1993.

TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

also held that the defendant’s use would cause ordinary
customers and consumers to think that the defendant’s
business was connected to that of McDonald’s and that
there was accordingly a high probability that this would
lead to false recognition and confusion.
In the Amex case,8 American Express sought to prevent
the use of the mark ‘Amex’ by the defendant in relation
to foreign exchange transactions. American Express
(at the time) never used Amex as a trademark, but
everyone associated the name Amex with American
Express. The court upheld the claim. Importantly, it
considered the fact that the defendant could not show
that it had been using Amex in good faith and without
the object of competing unfairly as significant.
The third case is the Manpower case.9 The plaintiff
used as the essential part of its trade name the word
‘Manpower.’ The defendant used as the essential part
of its trade name the term ‘Woman Power.’ The court
found that it was likely that customers would believe
that there was a trade association between the two
firms and that causing such a misunderstanding
amounted to unfair competition.
5. Trademark law and unfair competition law:10 An
infringement action in terms of a trademarks statute
is based upon the exclusive right to use a trademark
conferred upon the registered owner by that statute.
This statutory law differs from the law relating to passingoff because it is concerned only with one method of
passing-off, namely, using a registered trademark.

Personally, I still have some doubts as to
whether the law of registered trademarks
needs to be stretched to cover conduct readily caught by more general unfair competition
rules. Sometimes I wonder whether courts
concerned with just an isolated question
about registered trademark law overlook the
fact that unfair competition rules can and do
deal with the problem. There is more than one
way to skin a cat.
6. Advantages of trademark registration:
• Prior use is not required for trademark registration
(usually) or enforcement. Passing-off, on the other
hand, requires reputation by use before protection
can be claimed. It requires the plaintiff to prove the
existence and extent of its reputation each time
an action is brought. A reputation may come and
go and, with it, its legal protection. In other words,
registered trademarks have legal protection in the
marks themselves, while in the case of passing-off, it
is the goodwill attached to the mark that is protected.
• Registration is presumed valid for all the wares and
services for which the mark is registered. Protection
continues, though the mark is little-used or known.
Passing-off rights are limited to the actual business
reputation of the owner of the mark.
• A trademark registration is effective countrywide.
• Passing-off protects only in the locality of its reputation. Passing-off requires proof or misrepresentation and loss of goodwill. This is not required for
trademark protection.
• Passing-off does not protect against trademark
dilution, while registration does.

A rights holder is entitled to claim relief on either the
registered mark or, in the alternative, on unfair competition, which means that the owner of a registered mark
is not obliged to rely on its registration and may instead 7. Scope of passing-off: Passing-off is no longer
base the case on unfair competition. All this shows that anchored to a traditional trademark or a trade name
the law relating to registered trademarks and unfair but encompasses other material, such as slogans or
competition complement each other and the one does visual images, the get-up of a business or product11 and
not exclude the other.
even the shape of a product,12 provided always that this
material has become part of the plaintiff’s ‘goodwill.’13
BOEHRINGER INGELHEIM KG & ANOR v. An act of passing-off may also overlap with other types of
SWINGWARD LTD [2004] EWCA Civ 129:
unlawful competition, and the plaintiff may base the claim
in the alternative on a contravention of the relevant statute.

8. Supreme Court, Dec. 16, 1993.
9. Supreme Court, Oct. 17, 1983.
10. Kirkbi Ag v. Ritvik Holdings Inc 2005 SCC 65 at #25;
Sydney Medical Service Co-operative Limited v.
Lakemba Medical Services Pty Ltd [2016] FCA 763.

11. As to the meaning of get-up: Parkdale Custom Built
Furniture Pty Ltd v. Puxu Pty Ltd [1982] HCA 44.
12. Reckitt and Colman Products Ltd v.
Borden Inc & Ors [1990] UKHL 12.
13. Campomar Sociedad, Limitada v. Nike
International Limited [2000] HCA 12.

53

CASEBOOK ON IP ENFORCEMENT

A get-up may also constitute an original artistic work
protected in terms of a Copyright Act. If it does, the
plaintiff may base the claim on passing-off, infringement of copyright or both, and may claim the remedies
provided for in the Copyright Act.
However, a court should be wary of allowing the sharp
outlines of the established branches of the law of unlawful competition, evolved through long experience, to be
fudged by allowing a vague penumbra around the outline.
PAYEN COMPONENTS SOUTH AFRICA LTD. v.
BOVIC GASKETS CC AND OTHERS [1995] ZASCA 57:

CHOCOSUISSE UNION DES FABRICANTS SUISSES
DE CHOCOLAT v. CADBURY LTD [1997] EWHC 360:
The type of action of which Perry v. Truefitt
[(1842) 49 ER 749]17 and Spalding and
Brothers v. A W Gamage Ltd [84 LJ Ch
449, (1915) 32 RPC 273] are examples were
described by Lord Diplock in Advokaat18 as
the ‘classic form’ of passing-off. To succeed
in this, the plaintiff has to prove that he has
built up the necessary goodwill by his own
endeavors or that he has acquired it from a
predecessor who had done so.

Unlawful competition should not be added 10. Goodwill is based on reputation:19
as a ragbag and often forlorn final alternative to every trademark, copyright, design or CATERHAM CAR SALES AND COACHWORKS LTD.
passing-off action. In most cases, it is one of v. BIRKIN CARS (PTY) LTD. AND ANOTHER [1998]
the established categories or nothing.
ZASCA 44:
For example, there is no reason to import dilution into
this part of the law.14
8. Elements of passing-off: Although there are other
definitions, the one laid down in CIBA-GEIGY CANADA
v. APOTEX INC 1992 CanLII 33 (SCC) suffices:15
The three necessary components of a
passing-off action are thus: the existence
of goodwill, deception of the public due to
a misrepresentation and actual or potential
damage to the plaintiff.
9. Passing-off damages the right to goodwill of a business: Passing-off injures the right of property in the
plaintiff, namely the right to the goodwill of his business.16

14. TWG Tea Co PTE LTD v. Tsit Wing (Hong
Kong) Co LTD [2016] HKCFA 2.
15. Kirkbi Ag v. Ritvik Holdings Inc 2005 SCC 65; Reckitt
and Colman Products Ltd v. Borden Inc & Ors [1990]
UKHL 12; Novelty Pte Ltd v. Amanresorts Ltd and
Another [2009] SGCA 13; TWG Tea Co PTE LTD v. Tsit
Wing (Hong Kong) Co LTD [2016] HKCFA 2; Satyam
Infoway Ltd vs Siffynet Solutions Pvt. Ltd AIR 2004 SC
3540; Sydney Medical Service Co-operative Limited
v. Lakemba Medical Services Pty Ltd [2016] FCA 763.
16. From Salmond on Torts quoted with approval in
Ciba-Geigy Canada v. Apotex Inc 1992 CanLII
33 (SCC); Star Industrial Company Limited v. Yap
Kwee Kor trading as New Star Industrial Company
(Singapore) [1976] UKPC 2; Starbucks (HK) Ltd &
Anor v. British Sky Broadcasting Group PLC & Ors
(Rev 1) [2015] UKSC 31; Oxford Pendaflex Canada
Ltd. v. Korr Marketing Ltd., 1982 CanLII 45 (SCC).

54

Goodwill is the totality of attributes that lure
or entice clients or potential clients to support
a particular business. The components of
goodwill are many and diverse. Well recognized are the locality and the personality of the
driving force behind the business, business
licenses, agreements such as restraints of
trade and reputation. These components are
not necessarily all present in the goodwill of
any particular business.
The only component of goodwill of a business
that can be damaged by means of a passingoff is its reputation and it is for this reason
that the first requirement for a successful
passing-off action is proof of the relevant
reputation. Misrepresentations concerning
other components of goodwill are protected
by other causes of action such as claims for
injurious falsehoods. It is thus incorrect to
equate goodwill with reputation (or vice versa)
or to suggest that the ‘need for some reputa-

17. ‘A man is not to sell his own goods under the
pretense that they are the goods of another man.’
18. Star Industrial Company Limited v. Yap Kwee Kor
trading as New Star Industrial Company (Singapore)
[1976] UKPC 2. See also Erwen Warnick BV v.
Townend & Sons (Hull) Ltd [1979] AC 731 (HL): Passing
off a liqueur as ‘Advokaat,’ although it was not made
according to the traditional recipe for Advokaat.
19. Novelty Pte Ltd v. Amanresorts Ltd
and Another [2009] SGCA 13.

TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

tion or secondary meaning to be shown is not
a principle or rule of law’.

13. Misrepresentation: The basis of the cause of action
is misrepresentation giving rise to confusion.20

11. Reputation is dependent upon distinctiveness: It
is necessary to allege and prove that the trade name,
trademark, get-up or service mark was known in the
market and that the plaintiff’s goods, business or
service acquired a public reputation or became distinctive from other similar goods, businesses or services.
Consequently, where a trader uses a descriptive term,
it must be proved that, through use, the term acquired
a secondary meaning and designates in the mind of the
public only the plaintiff’s goods, services or business.
Where, however, a trader uses a fancy or invented
name, it is difficult to avoid an inference of passing-off
if a rival uses that name.

A G SPALDING BROS v. A W GAMAGE LTD (1915)
32 RPC 273:21

SUTHERLAND & ORS v. V2 MUSIC & ORS [2002]
EWHC 14 (Ch):
The law of passing-off protects the goodwill
of a small business as much as [the goodwill
of] the large, but it will not intervene to protect
the goodwill which any reasonable person
would consider trivial.
12. Reputation is a question of fact:
PARKER KNOLL LTD. v. KNOLL INTERNATIONAL
LTD 1962 RPC 278 (HL):

My Lords, the basis of a passing-off action
being a false representation by the defendant,
it must be proved in each case as a fact that
the false representation was made. It may, of
course, have been made in express words,
but cases of express misrepresentation of
this sort are rare. The more common case is,
where the representation is implied in the use
or imitation of a mark, trade name, or get-up
with which the goods of another are associated
in the minds of the public, or of a particular
class of the public. In such cases the point
to be decided is whether, having regard to all
the circumstances of the case, the use by the
defendant in connection with the goods of the
mark, name, or get-up in question impliedly
represents such goods to be the goods of
the plaintiff, or the goods of the plaintiff of a
particular class or quality, or, as it is sometimes
put, whether the defendant’s use of such mark,
name, or get-up is calculated to deceive. It
would, however, be impossible to enumerate
or classify all the possible ways in which a man
may make the false representation relied on.

It is a question of fact whether it is proved that
a name [or get-up] has acquired a secondary
meaning so that it denotes or has come to
mean goods made by a particular person and
not goods made by any other person even
though such person may have the same name.

14. Confusion and causation: Confusion, per se, is
not actionable. The confusion must be caused by the
defendant’s misrepresentation. 22

If it is proved on behalf of a plaintiff that a
name [or get-up] has acquired such a secondary meaning, then it is a question for the court
whether a defendant, whatever may be his
intention, is so describing his goods that there
is a likelihood that a substantial section of the
purchasing public will be misled into believing
that his goods are the goods of the plaintiff.
In arriving at a decision the court must not
surrender in favor of any witness its own
independent judgment.

In short, therefore, where the ‘badge’ of the
plaintiff is descriptive, cases of ‘mere confusion’
caused by the use of a very similar description
will not count. A certain amount of deception
is to be tolerated for policy reasons – one calls
it ‘mere confusion’.

PHONES4U LTD & ANOR v. PHONE4U.CO.UK & ORS
[2006] EWCA Civ 244:

20. TWG Tea Co PTE LTD v. Tsit Wing (Hong
Kong) Co LTD [2016] HKCFA 2.
21. The link is to a discussion of the case. See also
Playboy Enterprises v. Bharat Malik 2001 PTC 328.
22. Hoechst Pharmaceuticals (Pty) Ltd. v.
Beauty Box (Pty) Ltd. [1987] ZASCA 5.

55

CASEBOOK ON IP ENFORCEMENT

15. Damage that is actionable:
PHONES4U LTD & ANOR v. PHONE4U.CO.UK & ORS
[2006] EWCA Civ 244:

It is important to bear in mind, particularly in a
case like the present one that the likelihood (or
otherwise) of deception or confusion must be
attributable to the resemblance (or otherwise)
of the marks themselves and not to extraneous
matter. Similarities in the goods themselves or
in the form in which they are presented might
form the basis for an action for passing-off.

• Diverting trade from the plaintiffs to
the defendants;
• injuring the trade reputation of the plaintiffs, and
• injury which is inherently likely to be 19. Location: An issue on which there is conflicting
suffered by any business when on frequent jurisprudence in the common-law world is whether a
occasions it is confused by customers claimant who is seeking to maintain an action in passing
or potential customers with a business off (unfair competition) need only establish a reputaowned by another proprietor or is wrongly tion among a significant section of the public within
connected with that business.
the jurisdiction, or whether such a claimant must also
establish a business with customers within the jurisdic16. Calculated to deceive or confuse: The defendant’s tion. Courts in Australia and South Africa have held that
get-up or trade name must have been calculated or likely it is not necessary to establish a business within the
to deceive or confuse the ordinary customer and, thus, jurisdiction, but the U.K. and Hong Kong courts held
to cause confusion and damage to the goodwill of the otherwise while the Singapore court holds a somewhat
plaintiff’s business by, for example, diverting custom- intermediate view.27 The issue is, however, covered in
ers from the plaintiff’s business or products to that of part by the requirements set in Art 16.2 and 16.3 of
the defendant. It is not necessary for a trader seeking the TRIPS Agreement read with Art 6bis of the Paris
relief to prove that anyone has actually been deceived Convention requiring the protection of foreign unregisor confused or that the defendant intended to deceive.23 tered trademarks with a reputation (discussed earlier).
17. Reputation and its date: In the case of passing-off,
the plaintiff must prove a reputation in the mark or get-up,
and the reputation of the claimant must exist at the time
the respondent enters the market. In trademark infringement proceedings, the plaintiff’s reputation is irrelevant.24
18. Basis of comparison: Infringement proceedings
under a trademark statute are directed at a comparison
between the registered trademark as such and the
allegedly offending mark as such, whereas, in passingoff proceedings, the comparison is between the whole
get-up of the goods as marketed by the plaintiff and
the whole get-up of the defendant’s goods.25
NATIONAL BRANDS LTD v. BLUE LION MANUFACTURING (PTY) LTD [2001] ZASCA 17:26

23. TWG Tea Co PTE LTD v. Tsit Wing (Hong Kong)
Co LTD [2016] HKCFA 2; Sydney Medical Service
Co-operative Limited v. Lakemba Medical Services
Pty Ltd [2016] FCA 763; Blue Lion Manufacturing
(Pty) Ltd v. National Brands Ltd [2001] ZASCA 62.
24. Phones4u Ltd & Anor v. Phone4u.Co.UK
& Ors [2006] EWCA Civ 244.
25. Blue Lion Manufacturing (Pty) Ltd v. National
Brands Ltd [2001] ZASCA 62.
26. The visuals appear in the preceding chapter.

56

C. Extended passing-off 28
20. Nature of extended passing-off: Extended passingoff protects goodwill associated with descriptive and
geographical terms. It allows a class of traders to
prevent their rivals from incorrectly applying a descriptive term that the plaintiffs apply correctly. Extended
passing-off goodwill requires clearly identified distinctive and recognizable characteristics associated with

27. The cases are collected and discussed in Starbucks
(HK) Ltd & Anor v. British Sky Broadcasting Group
PLC & Ors (Rev 1) [2015] UKSC 31 #42 to #46. See
also TWG Tea Co PTE LTD v. Tsit Wing (Hong Kong)
Co LTD [2016] HKCFA 2. For the position in the
United States, see Belmora LLC v. Bayer Consumer
Care AG Appeal No. 15-1335 (4th Cir. March 23,
2016 (certiorari denied). Cf Prius Auto Industries
v. Toyota RFA(OS) 62/2016 (India) (appeal denied).
28. TWG Tea Co PTE LTD v. Tsit Wing (Hong Kong)
Co LTD [2016] HKCFA 2; Chocosuisse Union Des
Fabricants Suisses De Chocolat v. Cadbury Ltd [1997]
EWHC 360; Fage UK Ltd & Anor v. Chobani UK Ltd
& Anor [2014] EWCA Civ 5; Tilda Riceland v. OHIM/
Siam Grains Case T136/14 . See also Saunders,
Katharine ‘Choccosuisee – The New « Extended
Extended « Passing Off’ [2001] VUWLawRw 13.

TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

the product. The goodwill is shared by the traders in There is much dispute between countries about what a
the class. Extended passing-off is not protection of geographical indication is and what it is not. For instance,
a mark as a badge of origin or against dilution, but it the term ‘Champagne’ for a sparkling wine is considered
ensures the correct application of the descriptive term. in many countries an indication of origin meaning that
To succeed in extended passing-off, the plaintiff’s good- only wine of that kind produced within the Champagne
will must be damaged by the defendant’s incorrect appli- area in France may use the appellation.30 However, others,
cation of the term. Traders cannot use extended passing- such as the United States, regard the term as generic
off to prevent rivals from applying the descriptive term to cover sparkling wines of whatever origin. The issue is
correctly because this would not damage their goodwill. often dealt with in bilateral or regional trade agreements.31
Extended passing-off differs from classic passing-off
in two key respects. First, a misrepresentation of origin
is not required because it protects traders as a class
rather than as individuals. Second, it protects descriptive terms. This does not give monopoly rights in the
descriptive term because only incorrect application of
the term can be prevented.

D. Geographical indications
(indications of origin) and
collective (certification) marks

23. Required protection: Basically, the following protection for geographical indications is required (Art. 22):
• preventing the use of any means in the designation or presentation of a good that indicates or
suggests that the good in question originates in
a geographical area other than the true place of
origin in a manner that misleads the public as to
the geographical origin of the good and
• preventing any use that constitutes an act of unfair
competition.

21. Geographical indications: The extended form of
passing-off has, in a sense, been absorbed by the
requirement of the TRIPS Agreement, which requires
legislation for the protection of geographical indications.
Such legislative provisions may impact the scope of the
extended passing-off action, which developed in order
to protect these indications against a misrepresentation
relating to origin and replace it at least in part.

24. Collective (certification) trademarks: Some trademark statutes provide for the registration of collective
(certification) trademarks. These are marks capable of
distinguishing, in the course of trade, goods or services
of, persons who are members of any association from
goods or services of persons who are not members.
A typical provision is that contained in Article 83 of
EU Regulation No.1000/2017, which defines a
certification mark as:

The issue is further dealt with in the Lisbon Agreement
for the Protection of Appellations of Origin and their
International Registration (1958), but not all countries
have joined the Lisbon Agreement. It serves to protect
the ‘geographical denomination of a country, region, or
locality, which serves to designate a product originating
therein, the quality or characteristics of which are due
exclusively or essentially to the geographic environment,
including natural and human factors.’29

an EU trade mark which is described as such
when the mark is applied for and is capable
of distinguishing goods or services which
are certified by the proprietor of the mark in
respect of material, mode of manufacture of
goods or performance of services, quality,
accuracy or other characteristics, with the
exception of geographical origin, from goods
and services which are not so certified.

22. Defining geographical indications: Geographical
indications are defined (Art. 22.1) as indications that
identify goods as originating in the territory of a country,
or a region or locality in that territory, where a given
quality, reputation or other characteristics of the good
is essentially attributable to its geographical origin.

Examples would be the ‘Woolmark’ or a cotton mark.32
If registered, the trademark holder need not prove a
reputation to enforce its registered rights.

29. WIPO’s Appellation of Origins (Lisbon) register.

30. Comité Interprofessionnel du Vin de Champagne v.
Aldi Süd Dienstleistungs-GmbH & Co. OHG, C-393/16.
31. Tilda Riceland v. OHIM/Siam Grains Case T136/14.
32. WF Gözze Frottierweberei GmbH, Wolfgang
Gözze v. Verein Bremer Baumwollbörse,
C-689/15, EU:C:2017:434.

57

COPYRIGHT PRINCIPLES

Chapter 7
Copyright principles
A. Copyright law sources

60

B. The nature of copyright

61

C. Moral rights

62

D. Balancing private
and public interests

63

E. Related rights

68

59

CASEBOOK ON IP ENFORCEMENT

The purpose of this chapter is to introduce some
copyright principles that are particularly relevant to
the enforcement of copyright.

A. Copyright law sources

• Independence of protection: Copyright protection
is independent of the existence of protection in
the country of origin of the work. If, however, a
contracting state provides for a longer term than
the minimum prescribed by the Convention and the
work ceases to be protected in the country of origin,
protection may be denied as soon as protection in
the country of origin ceases.

1. The TRIPS Agreement:1 The TRIPS Agreement
contains several provisions relating to copyright and related rights. In particular, member 4. The WIPO Copyright Treaty (WCT):6 The WCT
countries of the WTO are obliged to comply with in a sense duplicates the provisions of the TRIPS
the major provisions of the Berne Convention. Agreement by incorporating by reference all the
It also adds to the Berne Convention, for instance, the substantive provisions of the Berne Convention and
nature of copyrightable material is extended to cover by including computer programs and compilations of
computer programs (which must be protected as liter- data as protected works.
ary works) and compilations of data.2
In addition, it sets out to clarify existing norms and,
2. The Berne Convention:3 The Berne Convention where necessary, creates new norms to respond to the
for the Protection of Literary and Artistic Works of problems raised by digital technology, particularly by
September 9, 1886, is the first and foremost interna- the internet. This is referred to as the ‘digital agenda.’
tional instrument that deals with copyright. It has been
the subject of a number of revisions, and the Paris The provisions of the WCT relating to the ‘agenda’
revision of July 24, 1971, is ‘incorporated’ by reference cover the following issues: the rights applicable to the
into the TRIPS Agreement and the WIPO Copyright storage and transmission of works in digital systems,
Treaty (see later).
the limitations on and exceptions to rights in a digital
environment, technological measures of protection
3. Berne principles: The Berne Convention rests on and rights management information.
three basic principles:4
The WCT also deals in some detail with certain rights
• National treatment: Works originating in one of of specified authors (not only of authors of computer
the contracting states (that is, the country where programs or databases) and accords them three,
the author is a national or where works were first namely a distribution,7 a rental and a communicapublished in a contracting state) must be given the tions right.8
same protection in every other contracting state to
the same extent as the latter grants to the works of 5. National laws: Copyright is based on local statute, and
its own nationals.5
it is accordingly territorial. Although copyright statutes are
• Automatic protection: Copyright protection may not generally based on international instruments, particularly
be conditional upon compliance with any formality. the Berne Convention and the TRIPS Agreement, there
This means that copyright protection is not depen- are a number of differences between common-law coundent on registration or the like.
tries and civil-law countries. These differences are often
due to different theoretical approaches to the matter.9

1.
2.

3.
4.
5.

60

http://www.tripsagreement.net/?page_id=40.
The provisions of the Universal Copyright
Convention have not been made applicable
by TRIPS, and it does not contain any
provisions relevant to the present work.
http://www.wipo.int/treaties/en/
text.jsp?file_id=283698.
http://www.wipo.int/treaties/en/ip/
berne/summary_berne.html.
Joined Cases 110/88, 241/88 and 242/88 François
Lucazeau and Others v. Société des auteurs,
compositeurs et éditeurs de musique (Sacem).

6.
7.

8.
9.

http://www.wipo.int/treaties/en/ip/wct/.
CASE NUMBER: 2001(JU) NO.952 Supreme
Court, the First Petty Bench (Japan)
Reporter: Minshu Vol.56, No.4, at 808.
Filmpeler, C-527/15; GS Media BV v. Sanoma
Media Netherlands BV and Others C-160/15.
Théberge v. Galerie d’Art du Petit Champlain
Inc. [2002] 2 SCR 336, 2002 SCC 34.

COPYRIGHT PRINCIPLES

BUTTERWORTH AND CO (PUBLISHERS) LTD v. NG
SUI NAM [1987] RPC 485 (HC):10
Copyright is a creation by statute, and whether
or not a work is entitled to copyright protection
depends on whether there is any statute which
confers copyright in such work. It is not a matter
of ‘mercantile’ law or anything of that kind.11
6. Common-law countries: The first Copyright Act was
the U.K. Act of Anne of 1709 (or 1710) ‘To promote the
Progress of Science and useful Arts, by securing for
limited Times to Authors and Inventors the exclusive
Right to their respective Writings and Discoveries.’ Many
amendments followed until the U.K. Copyright Act of 1911
(1 & 2 Geo 5 ch 46). In the common-law countries that
formed part of the British Empire, copyright laws were
primarily based on this Act, which applied directly or by
adoption.12 The 1911 Act was replaced by the 1956 U.K.
Copyright Act (4 & 5 Eliz 2 c 74), which formed the basis
of further developments in some of these countries.13
The current U.K. Copyright, Designs and Patents Act
of 1988 (as amended),14 complies in addition to TRIPS
with copyright directives of the EU. It differs in form
from the classical common-law copyright statutes,
although much remains the same.

8. Civil law: Civil-law countries do not have a basic law
similar to U.K. Copyright Act of 1911, but their laws
developed congruently based on principles laid down
in the French Literary and Artistic Property Act, Paris
(1793), namely that an exclusive right is conferred on
authors because their property flows from their intellectual creation; and on the Prussian Copyright Act of
1837, which recognized that the author rather than the
publisher is at the center of the protection and that the
protected subject matter consists of abstract works,
rather than specific physical goods.15
9.EU directives: There are 10 EU copyright directives.16
The first was adopted in an attempt to harmonize
certain aspects of copyright law in the EU, such as the
term of copyright. Others deal with more specific topics,
such as databases, computer programs, orphan works
and resale rights of original works of art.

B. The nature of copyright
10. Copyright and author’s right: The term ‘copyright’ is
somewhat of a misnomer even though it is commonly
used in the common-law tradition. The correct term,
which is used within the civil-law tradition, is ‘author’s
right.’ The Berne Convention uses neither ‘copyright’ nor
‘author’s right.’ Instead, it refers to ‘every production in the
literary, scientific and artistic domain, whatever may be
the mode or form of its expression’ and lists examples.

7. U.S. law: The U.S. law on copyright is based on the
copyright clause in its Constitution ‘to promote the
progress of science and useful arts by securing for
limited times to Authors and Inventors the exclusive 11. Copyright and industrial rights: Underlying the distincrights to their respective writings and discoveries.’ It tion between copyright and related rights (e.g., rights
differs in some material respects from the common- relating to performances of performing artists, phonolaw norm, and U.S. precedents must be approached grams and broadcasts) on the one hand and, on the
with that in mind.
other, industrial rights (such as patents, trademarks and
industrial designs) is the theory that copyright concerns
artistic creations, whereas industrial property concerns
creations that are in principle for industrial purposes.
10. Quoted in King v. South African Weather
Services (716/07) [2008] ZASCA 143.
11. Also Frank & Hirsch (Pty) Ltd. v. A Roopanand
Brothers (Pty) Ltd. (580/91) [1993] ZASCA 90; Bishop
v. Stevens, [1990] 2 SCR 467, 1990 CanLII 75 (SCC).
12. Section 1(1): ‘Subject to the provisions of this Act,
copyright shall subsist throughout the parts of His
Majesty’s Dominions to which this Act extends for
the term hereinafter mentioned in every original
literary dramatic musical and artistic work …’ See
also Butterworth and Co (Publishers) Ltd v. Ng
Sui Nam [1987] RPC 485 (CA) [Singapore].
13. Ashdown v. Telegraph Group Ltd [2001] EWCA
Civ 1142. The position in the United States is
more complicated due to its federal structure.
14. https://www.legislation.gov.uk/
ukpga/1988/48/contents.

The supposition is no longer true; on the contrary,
copyright has taken on a life of its own and has become
an important industrial asset because it covers, for
example, computer programs, architectural and engineering drawings and collections of data.17

15. L. Bently and M. Kretschmer (ed), Primary Sources
on Copyright (1450-1900): www.copyrighthistory.org.
16. https://ec.europa.eu/digital-single-market/
en/eu-copyright-legislation.
17. Golden China TV Game Centre and Others v.
Nintendo Co Ltd (55/94) [1996] ZASCA 103;

61

CASEBOOK ON IP ENFORCEMENT

Copyright does, nevertheless, differ from industrial
rights in some important respects. The author of a
copyrighted work has a moral right to the creation,
whereas the creator of industrial property has no such
right. The author’s right in a copyrighted work is also
not dependent on formalities (such as registration) for
its subsistence, whereas the subsistence of industrial
rights is, as a rule, dependent on compliance with
formalities (registration) prescribed by national law.

14. Copyright protects ‘works’: The Berne Convention
uses an expansive and non-limiting definition of ‘literary and artistic works’ to describe the works that are
entitled to copyright protection (Art. 2(1)). They ‘include’
every production in the literary, scientific and artistic
domain, whatever may be the mode or form of expression, and the Convention lists many examples.

15. Copyright protects expression and not ideas:20 The
TRIPS Agreement entrenches the principle that copy12. Copyright as a negative right: Although copyright right protection does not extend to ideas, procedures,
has often been referred to in common-law jurisdictions methods of operation or mathematical concepts as
as the intellectual property right of a copyright owner to such but applies to expressions only (Art. 9.2).21 In
prevent ‘unauthorized productions’ of a ‘work’ that is the WIPO publication, Principles of Copyright: Cases
entitled to copyright,18 that is not always a fair reflection and Materials (2002), professor David Vaver summed
of the modern approach. For instance, Canadian law the ‘ideas versus expression’ dichotomy up under
defines ‘copyright’ as the sole right to do certain things these headings: copyright does not subsist in style;
in relation to a work, such as to produce or reproduce mere news; history, historical incidents or facts and
the work in any material form. The South African Act, factoids; scientific principles or descriptions of an art;
similarly, provides that copyright in a literary or musi- mere principles or schemes; methods of operation; or,
cal work vests the exclusive right to do or to authorize in general ideas, e.g., for entertainment.
the doing of any of the listed exclusive acts (such as
reproducing the work in any manner or form) within
the country.
C. Moral rights
Civil law is no different. The Copyright Act of the 16. Nature of moral rights: Moral rights are basically the
Netherlands, for one, states that copyright is the exclu- right to make the work public (dissemination right), the
sive right of the author of a literary, scientific or artistic right of recognition as the author (right of paternity)22
work to communicate that work to the public and to and the right of preserving the integrity of the work
reproduce it (s 1). In the words of German law, copy- (integrity right).23 How these rights are circumscribed
right protects the author in the author's intellectual and are matters for local legislation and judicial interpretapersonal relationship to the work and the use of the tion. They may survive the death of the author. The
work; and it serves to secure reasonable remuneration Berne Convention obliges member states to recognize
for the use of the work.19
the moral rights of authors in these terms:
13. Copyright rights are exclusive rights: The Berne
Convention lists a number of exclusive rights that,
subject to certain permitted reservations, limitations
or exceptions, must be recognized as exclusive rights
of authorization. The list includes the right of reproduction, the right of communication to the public and
the performance right. It also allows for exceptions to
copyright protection. These have been amplified by
the TRIPS Agreement.

Robertson v. Thomson Corp., [2006]
2 SCR 363, 2006 SCC 43.
18. Ashdown v. Telegraph Group Ltd [2001]
EWCA Civ 1142.
19. National laws can be found at the WIPO
Intellectual Property Laws and Treaties Database
(WIPO Lex) at www.wipo.int/wipolex/en/.

62

Independently of the author’s economic rights,
and even after the transfer of the said rights, the
author shall have the right to claim authorship of
the work and to object to any distortion, mutilation or other modification of, or other derogatory
action in relation to, the said work, which would
be prejudicial to his honor or reputation.

20. Baigent & Anor v. The Random House
Group Ltd [2007] EWCA Civ 247.
21. Designer Guild Limited v. Russell Williams (Textiles)
Limited (Trading As Washington Dc) [2000] UKHL 58;
R.G. Anand v. Delux Films and Ors. AIR 1978 SC 1613.
22. Hyperion Records Ltd v. Sawkins [2005] EWCA Civ
565 (19 May 2005).
23. Confetti Records (a firm) & Ors v. Warner Music UK
Ltd (t/a East West Records) [2003] EWHC 1274 (Ch).

COPYRIGHT PRINCIPLES

AMAR NATH SEHGAL v. UNION OF INDIA 2005 (30)
PTC 253:

THEBERGE v. GALERIE D’ART DU PETIT CHAMPLAIN
INC 2002 SCC 34:

The author has a right to preserve, protect and
nurture his creations through his moral rights.

The Act provides the respondent with both
economic and ‘moral’ rights to his work. The
distinction between the two types of rights
and their respective statutory remedies is
crucial.

When an author creates a work of art or a
literary work, it is possible to conceive of
many rights which may flow. The first and
foremost right which comes to one’s mind
is the ‘paternity right’ in the work, i.e. the
right to have his name on the work. It may
also be called the ‘identification right’ or
‘attribution right’. The second right which
one thinks of is the right to disseminate his
work i.e. the ‘divulgation or dissemination
right’. It would embrace the economic right
to sell the work for valuable consideration.
Linked to the paternity right, a third right,
being the right to maintain purity in the
work can be thought of. There can be no
purity without integrity. It may be a matter
of opinion, but certainly, treatment of a work
which is derogatory to the reputation of the
author, or in some way degrades the work as
conceived by the author can be objected to
by the author. This would be the moral right
of ‘integrity’. Lastly, one can conceive of a
right to withdraw from publication [one's]
work, if the author feels that due to the
passage of time and changed opinion it is
advisable to withdraw the work. This would
be the authors right to ‘retraction’.

Generally speaking, Canadian copyright law
has traditionally been more concerned with
economic than moral rights. The economic
rights are based on a conception of artistic
and literary works essentially as articles of
commerce.
Moral rights, by contrast, descend from the
civil law tradition. They adopt a more elevated
and less dollars and cents view of the relationship between an artist and his or her work. They
treat the artist’s œuvre as an extension of his
or her personality, possessing a dignity which
is deserving of protection. They focus on the
artist’s right (which is not assignable, though
it may be waived) to protect throughout the
duration of the economic rights (even where
these have been assigned elsewhere) both the
integrity of the work and his or her authorship
of it (or anonymity, as the author wishes).

D. Balancing private and
public interests

Except for the ‘divulgation or dissemination 18. The balancing act:
right’, which perhaps is guided by commercial
considerations, the other three rights originate THEBERGE v. GALERIE D’ART DU PETIT CHAMPLAIN
from the fact that the creative individual is INC 2002 SCC 34:
uniquely invested with the power and mystique
of original genius, creating a privileged relationThe Copyright Act is usually presented as a
ship between a creative author and his work.
balance between promoting the public interest in the encouragement and dissemination
17. Different approaches to moral rights: The approach
of works of the arts and intellect and obtainto moral rights differs between common-law and civiling a just reward for the creator (or, more
law jurisdiction.24 Generally speaking, the protection in
accurately, to prevent someone other than the
civil-law countries is more extensive.
creator from appropriating whatever benefits
may be generated). This is not new.

24. U.S. law differs from both: Digital Millennium
Copyright Act 17 U.S.C. § 1202(b) and the Visual
Artists Rights Act of 1990. See Cohen v. G&M
Realty LP Case No. 13-CV-5612 (FB) (JMA).

The proper balance among these and other
public policy objectives lies not only in
recognizing the creator’s rights but in giving
due weight to their limited nature. In crassly
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CASEBOOK ON IP ENFORCEMENT

economic terms it would be as inefficient
to over-compensate artists and authors for
the right of reproduction as it would be selfdefeating to undercompensate them. Once an
authorized copy of a work is sold to a member
of the public, it is generally for the purchaser,
not the author, to determine what happens to it.

The protection of freedom of the press covers
the protection of freedom of the law, the
subject of reports to choose freely. It is not for
the courts to determine whether a particular
issue is at all newsworthy or not. The protection of fundamental rights includes freedom
of expression and press freedom in all its
dimensions. It covers not only the content
but also in the form of expression or reporting.

Excessive control by holders of copyrights
and other forms of intellectual property may
unduly limit the ability of the public domain ASHDOWN v. TELEGRAPH GROUP LTD [2001] EWCA
to incorporate and embellish creative inno- Civ 1142:
vation in the long-term interests of society
as a whole or create practical obstacles to
The infringement of copyright constitutes
proper utilization.
interference with ‘the peaceful enjoyment of
possessions’. It is, furthermore, the interferROBERTSON v. THOMSON CORP 2006 SCC 43:
ence with a right arising under a statute which
confers rights recognized under international
This Court has repeatedly held that the overconvention and harmonized under European
arching purposes of the Copyright Act are
law. There is thus no question but that restrictwofold: promoting the public interest in the
tion of the right of freedom of expression
encouragement and dissemination of artistic
can be justified where necessary in a demoand intellectual works, and justly rewarding
cratic society in order to protect copyright.
the creator of the work. Since these purposes
The protection afforded to copyright under
are often in opposition to each other, courts
the 1988 Act is, however, itself subject to
‘should strive to maintain an appropriate
exceptions. Thus both the right of freedom of
balance between those two goals’.
expression and copyright are qualified.
19. Constitutional considerations – freedom of speech
and the press: Jurisdictions that have a constitutionally
protected right to free speech (including the freedom
of the press) may have to consider whether a particular
copyright claim may be affected or inhibited by constitutional considerations. A constitutional complaint
concerning a copyright dispute requires a balancing of
intellectual property rights with freedom of expression
and press freedom.
BUNDESGERICHTSHOF I ZR 191/08 25 of 14
October 2010:
The sanctions [for copyright infringement] must
be effective, proportionate and dissuasive. In
the interpretation of the Directive and the
implementation of national law, fundamental
rights to freedom of expression and freedom
of reporting may only be restricted in accordance with the principle of proportionality.

25. Klinger v. Conan Doyle Estate Ltd,
U.S. Court of Appeal (7th Cir).

64

It is important to emphasize in the present
context that it is only the form of the literary
work that is protected by copyright. Copyright
does not normally prevent the publication
of the information conveyed by the literary
work. Thus it is only the freedom to express
information using the verbal formula devised
by another that is prevented by copyright.
This will not normally constitute a significant
encroachment on the freedom of expression.
The prime importance of freedom of expression is that it enables the citizen freely to
express ideas and convey information. It is
also important that the citizen should be free
to express the ideas and convey the information in a form of words of his or her choice. It is
stretching the concept of freedom of expression to postulate that it extends to the freedom
to convey ideas and information using the
form of words devised by someone else.
Freedom of expression protects the right both
to publish information and to receive it. There
will be occasions when it is in the public interest

COPYRIGHT PRINCIPLES

not merely that information should be published,
but that the public should be told the very words
used by a person, notwithstanding that the
author enjoys copyright in them. On occasions,
indeed, it is the form and not the content of a
document which is of interest.
20. Term of protection: Copyright lasts for a prescribed
term only, and once the term expires, the work becomes
part of the public domain and may be reproduced in
any manner or form.26 The term for protection under the
Berne Convention is, in very general terms, for the life
of the author and 50 years after his death. The TRIPS
Agreement adds that whenever the term of protection
of a work, other than a photographic work or a work of
applied art, is calculated on a basis other than the life of
a natural person, it shall be no less than 50 years from
the end of the calendar year of authorized publication,
or, failing such authorized publication within 50 years
from the making of the work, 50 years from the end of
the calendar year of making.
21. Fair dealing and fair use justification: Copyright laws
generally provide for, what is sometimes referred to as,
a fair dealing exception to copyright infringement. The
theory behind exceptions to copyright protection is to
achieve a proper balance between protection of the
rights of the author and public interest.27 A Copyright
Act is supposed to provide a balance between promoting the public interest in the encouragement and
dissemination of works of the arts and intellect obtaining a just reward for the creator (or, more accurately, to
prevent someone other than the author from appropriating whatever benefits may be generated).28
22. International rights and obligations: Article 9(2) of the
Berne Convention states that national legislation may
permit the reproduction of works in certain special cases,
provided that such reproduction does not conflict with
a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author.
Article 13 of the TRIPS Agreement is in similar terms:
Members shall confine limitations or exceptions to exclusive rights to certain special

26. Klinger v. Conan Doyle Estate Ltd,
U.S. Court of Appeal (7th Cir).
27. Pro Sieben Media A.G. v. Carlton Television
Ltd & Anor [1998] EWCA Civ 2001.
28. IceTV Pty Limited v. Nine Network
Australia Pty Limited [2009] HCA 14.

cases which do not conflict with a normal
exploitation of the work and do not unreasonably prejudice the legitimate interests of the
right holder.
The Berne requirements are cumulative and are to be
applied one after the other.29
23. Application of the Berne requirements: The stepped
approach described is perceivable in several laws,
especially in the civil tradition, such as France, China,
Portugal and Spain, but also now in Australia, which
means that a court must assess in each instance
whether all these conditions exist.
Other countries interpret the Berne Convention differently: the legislature prescribes what amounts to fair use,
and the overriding conditions prescribed by Art 9.2 of the
Berne Convention and Art 13 of TRIPS do not concern
courts in deciding the issue in the ultimate event. An
example would be a law that allows the reproduction of
a work for the purposes of research or private use to an
extent that will not unreasonably prejudice the interests
of the owner of the copyright. This means that a court
does not have any discretion to dispense with copyright
protection and that where use is made of a substantial
part of copyright, any defense must be brought squarely
within one or more of the fair dealing provisions.30
It also means that fair dealing is a defense to copyright
infringement and that the defendant has to allege and
prove that his use falls within one of the exceptions.31
Because we are dealing with exceptions, they have to
be interpreted restrictively, i.e., in favor of the owner and
against the public/user.32 There is, however, a movement in some countries to consider the exceptions
not as exceptions per se but rather as expressions of
the rights of users or the public and to balance those
against that of the author: ‘Fair use is not just excused
by the law; it is wholly authorized by the law.’33 This

29. Cohen Jehoram, ‘Restrictions on copyright and
their abuse’ [2005] EIPR 359; Ricketson, The
Berne Convention for the protection of literary
and artistic works: 1886-1996 p 482.
30. Pro Sieben Media A.G. v. Carlton Television
Ltd & Anor [1998] EWCA Civ 2001.
31. CCH Canadian Ltd. v. Law Society of Upper Canada,
[2004] 1 SCR 339, 2004 SCC 13 (CanLII) at [48].
32. ‘A directive which derogates from a general principle
established by that directive must be interpreted
strictly’: Case C265/16 VCAST v. RTI SpA.
33. Lenz v. Universal Music Corp., 801 F.3d 1126 (2015)

65

CASEBOOK ON IP ENFORCEMENT

approach may have a profound effect on the application of the exceptions.34
24. Assessing ‘fair dealing’: 35
F R A S E R - W O O D WA R D LT D v. B R I T I S H
BROADCASTING CORPORATION BRIGHTER
PICTURES LTD [2005] EWHC 472 (Ch):
In considering whether the use in the present
case amounted to fair dealing the following
guidelines are relevant:
i) It is relevant to have regard to the motives of
the user (contrast the question of criticism and
review where the focus is more on the actual
use without, or without so much, reference
to the motive).
ii) Whether there is fair dealing is a matter
of impression.
What amounts to fair dealing must
depend on the facts of the particular
case and must to a degree be a matter
of impression. What is of prime importance is to consider the real objective
of the party using the copyrighted work.

U.S. Court of Appeals for the Ninth Circuit.
34. CCH Canadian Ltd. v. Law Society of Upper Canada,
[2004] 1 SCR 339, 2004 SCC 13 (CanLII); Society
of Composers, Authors and Music Publishers of
Canada (SOCAN) v. Bell Canada, 2012 SCC 36: the
use of previews of musical works on commercial
music websites amounts to fair dealing under s.29 of
the Copyright Act. Alberta (Education) v. Canadian
Copyright Licensing Agency (Access Copyright),
2012 SCC 37: the photocopying of textbook excerpts
by teachers, on their own initiative, to distribute
to students as part of course materials is fair
dealing pursuant to the provisions of the Copyright
Act. Entertainment Software Association and
Entertainment Software Association of Canada v.
Society of Composers, Authors and Music Publishers
of Canada, 2011 CanLII 16147 (SCC). Compare: Case
C-117/13 Tech. Uni. Darmstadt v. Eugen Ulmer KG.
35. See also HRH the Prince of Wales v. Associated
Newspapers Ltd [2006] EWHC 522 (Ch).; Ashdown v.
Telegraph Group Ltd [2001] EWCA Civ 1142 ; Hubbard
v. Vosper [1972] 1 All ER 1023 (CA) [UK]; Hyde Park
Residence Ltd v. Yelland & Ors [2000] EWCA Civ 37;
Newspaper Licensing Agency Ltd v. Marks & Spencer
Plc [2000] EWCA Civ 179; Moneyweb (Pty) Limited
v. Media 24 Limited and Another [2016] ZAGPJHC 81.
On private copying, which is generally unlawful, U.K.
Intellectual Property Office Private Copying (2013).

66

Section 30 is designed to protect a
critic or reviewer who may bona fide
wish to use the copyright material to
illustrate his review or criticism.
iii) If some degree of use would be fair dealing, excessive use can render the use unfair.
iv) In assessing whether the dealing is fair the
court can have regard to the actual purpose
of the work, and will be live to any pretense in
the purported purpose of the work:
‘… it is necessary to have regard to the
true purpose of the work. Is it a genuine piece of criticism or review, or is it
something else, such as an attempt to
dress up the infringement of another’s
copyright in the guise of criticism, and
so profit unfairly from another’s work?.
v) In the same vein, the amount of the work
used can be relevant:
I may add, however, that the substantiality of the part reproduced is, in my
view, an element which the Court will
take into consideration in arriving at
a conclusion whether what has been
done is a fair dealing or not. To take an
example, if a defendant published long
and important extracts from a plaintiff’s
work and added to those extracts some
brief criticisms upon them, I think that
the Court would be very ready to arrive
at the conclusion that that was not fair
dealing within the section.
vi) However, this must be carefully applied in
relation to photographs. It makes more sense
in relation to extended literary or musical
works. If one is critiquing a photograph, or
using it for the purpose of criticising another
work, then the nature of the medium means
that any reference is likely to be by means
of an inclusion of most of the work because
otherwise the reference will not make much
sense. This degree of care is particularly
appropriate in the context of a television
program where the exposure is not as
(for example) continuous or permanent as
publication in printed form would be.

COPYRIGHT PRINCIPLES

CANADIAN COPYRIGHT LICENSING AGENCY v.
YORK UNIVERSITY, 2017 FC 669 (CanLII):
As the Supreme Court of Canada made clear,
‘fair dealing’ is a positive user right, not merely a defense to infringement. However, the
burden of establishing fair dealing rests with
the party asserting the right.
The analysis is a two-step process: first, the
authorized purpose (in this case education)
must be established and second, the dealing
must be fair; ‘fair’ is not defined and is a question of fact depending on the circumstances of
each case; and, the fairness analysis engages
six non-exhaustive factors: purpose of the
dealing, the character of the dealing, the
amount of the dealing (amount of copying),
alternatives to the dealing, the nature of the
work, and the effect of the dealing on the work.
The first five features must be established by
York. To the extent Access claims a negative
effect of the dealing, the burden shifts to it to
establish that factor.
Through the pentalogy of cases, the Supreme
Court of Canada provided further guidance
and underscored the importance of the rights
of content users. However, importance does
not equate with exclusivity or dominance.
The analysis/fairness assessment requires a
balancing of interests.
25. Fair use in U.S. law: U.S. law is different because
it uses the concept of ‘fair use’ and sets out a list of
purposes for which the reproduction of a particular work may be considered ‘fair,’ such as criticism,
comment, news reporting, teaching, scholarship and
research. It also sets out four factors that have to be
considered in determining whether or not a particular use is fair: the purpose and character of the use,
including whether such use is of commercial nature
or is for nonprofit educational purposes, the nature of
the copyrighted work, the amount and substantiality
of the portion used in relation to the copyrighted work
as a whole and the effect of the use upon the potential
market for or value of the copyrighted work.36

36. Louis Vuitton Malletier SA v. My Other Bag, 156
F. Supp. 3d 425 - Dist. Court, SD New York 2016;

26. Design defense: It is recognized that because
copyright protection may overlap with industrial design
protection, the owner of a design right may be overprotected if they were also entitled to rely on copyright.
Another problem relates to copyright protection in relation to spare parts: is it fair to prevent competitors to
make spare parts using copyright laws?37 Legislatures
and courts approach these problems differently, and
it is not possible to give a generally applicable set
of rules.38
27. Further possible exceptions: Copyright conventions,
in addition, permit a number of special exceptions or
limitations on the rights of authors.39 Examples relate
to the exclusion of protection for political speeches and
speeches in the course of legal proceedings; conditions
under which lectures, addresses and like works that are
delivered in public may be reproduced; the possible
free use of certain articles and broadcast works and
works seen or heard in connection with current events;
compulsory licenses for broadcasting and the like; and
the right to make quotations from a work, including
quotations from newspaper articles and periodicals
in the form of press summaries.
28. The Appendix to the Berne Convention:40 It contains
additional discretionary exclusions. Developing countries are, for instance, entitled, in relation to works
published in printed or analogous forms of reproduction, to substitute for the exclusive right of translation a system of non-exclusive and non-transferable
licenses, granted by a competent authority subject to
conditions, and article III permits a licensing system
for the publication of certain published works for
educational purposes.
29. The Marrakesh Treaty to Facilitate Access to
Published Works for Persons Who Are Blind, Visually
Impaired or Otherwise Print Disabled:41 The Marrakesh

Cambridge University Press et al. v. Patton et al
October 17, 2014 (U.S. Court of Appeals, 11th Circuit).
37. British Leyland Motor Corp. v. Armstrong Patents Co
[1986] 1 All ER 850; Klep Values (Pty) Ltd. v. Saunders
Value Company Ltd. (493/84/av) [1986] ZASCA 157.
38. Cf Star Athletica, LLC v. Varsity Brands, Inc
580 U.S. (2017); Fisher-Price v. Dvoron
Import [Israel]; Samsonite Corporation v.
Vijay Sales [2000] FSR 463 (HC) [India].
39. See further Article 15 Rome Convention; Article 13
TRIPS Agreement; Article 10 WCT; Article 16 WPPT.
40. http://www.wipo.int/treaties/en/
text.jsp?file_id=283698.
41. http://www.wipo.int/treaties/en/ip/marrakesh/.

67

CASEBOOK ON IP ENFORCEMENT

Treaty was adopted on June 27, 2013, in Marrakesh. It INTERSTATE PARCEL EXPRESS CO PTY LTD v.
has a humanitarian and social development dimen- TIME-LIFE INTERNATIONAL (NEDERLANDS) BV
sion, and its main goal is to create a set of mandatory [1977] HCA 52:
limitations and exceptions for the benefit of the blind,
visually impaired and otherwise print disabled.
The owner of copyright has not the exclusive
right to use or sell the work in which copyright
30. Exhaustion of rights: Each country can decide on
subsists. The buyer of a book in which copyits own exhaustion regime.
right subsists does not need the consent of
the owner of the copyright to read, or speakKIRTSAENG v. JOHN WILEY & SONS, INC., USSC
ing generally to re-sell, the book. The necesNo. 11-697 (18 March 2013):
sity to imply a term in the contract which exists
when a patented article is sold does not arise
In the absence of agreement at the internaon the sale of a book the subject of copyright.
tional level, each country has been left to
It was not, and could not be, suggested that
choose for itself the exhaustion framework it
the sale of a copy of a book is a license to do
will follow. One option is a national-exhaustion
the acts comprised in the copyright.
regime, under which a copyright owner’s right
to control distribution of a particular copy is 32. International exhaustion:43 Copyright may be in
exhausted only within the country in which different hands in the country of export and the counthe copy is sold. Another option is a rule of try of import. This may be as a result of an assigninternational exhaustion, under which the ment of the rights. A South African case held that
authorized distribution of a particular copy the copyright owner in the importing country (South
anywhere in the world exhausts the copyright Africa), who became owner by means of an assignment,
owner’s distribution right everywhere with may prevent the importation of a work made by the
respect to that copy. The European Union Japanese copyright owner in Japan.44 A later Canadian
has adopted the intermediate approach of case45 deals with the unusual position of an exclusive
regional exhaustion, under which the sale of a licensee in the importing country and held that such
copy anywhere within the European Economic a person may not prevent the importation of goods
Area exhausts the copyright owner’s distribu- made under license of the copyright holder/licensor.46
tion right throughout that region. [This] Court’s
decision, in contrast, places the United States
solidly in the international-exhaustion camp. E. Related rights
31. National exhaustion: The ‘first sale’ doctrine limits 33. Related rights: Rights related to copyright are dealt
the copyright owner’s ‘exclusive rights’ to authorize or with by conventions other than the Berne Convention.
distribute copies of a copyrighted work to the public. These are listed,47 but will not be discussed separately
It provides that a sale of a ‘lawfully made’ copy termi- because there is hardly any case law available and
nates the copyright holder’s authority to interfere with because they do not create problems with interpretaor control subsequent sales or distributions of that tion or application.
particular copy. In short, through the first sale doctrine,
the first purchaser and any subsequent purchaser of that
specific copy of a copyrighted work receive the right to
43. KK Sony Computer Entertainmentanr v. Pacific Game
Technology (Holding) Ltd [2006] EWHC 2509 (Pat).
sell, display or dispose of their copy. If copyright owner A
44.
Frank & Hirsch (Pty) Ltd. v. A Roopanand
sells a copy of a work to B, B may sell that particular copy
Brothers (Pty) Ltd. (580/91) [1993] ZASCA 90.
without violating the law. B does not, however, receive
Interstate Parcel Express Co Pty Ltd v. Time-Life
International (Nederlands) BV [1977] HCA 52.
the right to reproduce and distribute additional copies
45.
Euro-Excellence
Inc. v. Kraft Canada Inc.,
made from that work. Thus, if B makes any unauthorized
[2007] 3 SCR 20, 2007 SCC 37 (CanLII).
42
copies of that work, he or she violates the law.
46. For the position in the United States: Kirtsaeng v.

42. Art & AllPosters International BV v. Stichting
Pictoright, C-419/13, ECLI:EU:C:2015:27.

68

John Wiley & Sons, Inc., No. 11-697 (18 March 2013).
47. WIPO Publication No.489 Ch 5 ‘International
Treaties and Conventions on Intellectual
Property’, http://www.wipo.int/export/sites/
www/about-ip/en/iprm/pdf/ch5.pdf.

COPYRIGHT PRINCIPLES

34. Rome Convention for the Protection of Performers,
Producers of Phonograms and Broadcasting
Organizations (1961): The Rome Convention secures
protection for a period of 20 years in performances of
performers, phonograms of producers of phonograms
and broadcasts of broadcasting organizations.
35. Convention for the Protection of Producers of
Phonograms against Unauthorized Duplication of their
Phonograms (1971): This Convention obliges contracting states to protect a producer of phonograms who is a
national of another contracting state against the making
of duplicates without the consent of the producer; the
importation of such duplicates, where the making or
importation is for the purposes of distribution to the
public; and the distribution of such duplicates to the
public.
36. Brussels Convention Relating to the Distribution of
Programme-Carrying Signals Transmitted by Satellite
(1974): The Brussels Convention provides for the obligation of contracting states to take adequate measures to
prevent the unauthorized distribution on or from their
territory of any program-carrying signal transmitted
by satellite.
37. WIPO Performances and Phonograms Treaty (1996):
It deals with the IP rights of two kinds of beneficiaries,
namely, performers (actors, singers, musicians, etc.)
and producers of phonograms (the persons or legal
entities who or which take the initiative and have the
responsibility for the fixation of the sound).

69

ENFORCEMENT OF COPYRIGHT: SUBSISTENCE

Chapter 8
Enforcement of copyright: subsistence
A. Introduction

72

B. Ownership and authorship

72

C. ‘Work’

74

D. Originality

75

E. Criteria of eligibility
for protection

77

F. Fixation

77

G. Proving subsistence
of copyright

78

71

CASEBOOK ON IP ENFORCEMENT

A. Introduction
1. Enforcement of copyright has two legs: The first leg
requires proof of the existence (subsistence) of the
right of the claimant, and the second requires proof
of the infringing act.
FISHER & PAYKEL FINANCIAL SERVICES LIMITED
v. KARUM GROUP LLC [2012] NZHC 3314:
In order to establish breach of copyright, [the
claimant] has to establish that:
(a) It is the owner of a copyright work;1 and
(b) [the defendant] has infringed its copyright.
For the sake of convenience, the second issue, infringement, is discussed in the next chapter. Liberal use
will be made of the structure used in the just quoted
judgment in the New Zealand High Court, dealing with,
inter alia, copyright in a computer program. The judgment was upheld on appeal,2 but because the appeal
judgment dealt with limited issues only, the High Court
judgment will be used as a point of reference.3
2. Subsistence of copyright does not depend on formalities: It is a general principle, established by the Berne
Convention,4 that the subsistence of copyright may
not be dependent on formalities, such as registration.
Some laws do provide for the possibility of registration, but that is for purposes of proof only: there is a
presumption that the registration is valid and that the
registered owner does have copyright in the work
deposited or described. Registration may also be
required for purposes of enforcement, as appears to
be the case in the United States.5
3. Copyright is a technical subject: The fact that copyright is not registered means that a person who wishes
to assert copyright must prove the subsistence of
copyright. In connection with works such as computer

1.
2.
3.

4.
5.

72

See section B that follows.
Karum Group LLC v. Fisher & Paykel Financial
Services Limited [2014] NZCA 389.
A similarly structured judgment on copyright
in a musical work is Eight Mile Style
v. National Party [2017] NZHC 2603.
http://www.wipo.int/treaties/en/
text.jsp?file_id=283698.
National laws can be found at the WIPO
Intellectual Property Laws and Treaties Database
(WIPO Lex) at www.wipo.int/wipolex/en/.

programs, cinematographic works and the like, it may
be an arduous and expensive exercise.
VAGAR v. TRANSAVALON (PTY) LTD 1977 (3) SA
766 (W):6
Copyright is a technical subject. In my view it
is essential that a person who claims to be the
owner of a whole or partial copyright should
offer evidence, even if it is hearsay evidence
in circumstances that may justify the use
of hearsay evidence, to cover the technical
points necessary to establish his claim.
4. The ‘technical points’ to establish copyright:7
FISHER & PAYKEL FINANCIAL SERVICES LIMITED
v. KARUM GROUP LLC [2012] NZHC 3314:
In order to establish ownership, [the claimant]
must show:
(a) The software is a work in which copyright
can subsist;8
(b) Copyright in fact subsists in the software; and
(c) [the claimant] owns the copyright in
the software.
In order to establish that copyright subsists
in a work, it must be shown that the work is:
(a) Original (s 14(1) of the Copyright Act 1994);
(b) That it qualifies for copyright under either
s 18, because the author(s) are citizens of
New Zealand or a prescribed country or s 19,
because the work has been first published in
New Zealand or a prescribed country; and
(c) The work has been recorded in writing or
otherwise (s 15).

B. Ownership and authorship
5. Ownership and conferral of copyright: As shown, the
right to enforce copyright belongs to the owner of the

6.

7.
8.

Quoted with approval in Payen Components
South Africa Ltd. v. Bovic Gaskets CC and Others
1995 (4) SA 441 (AD); [1995] 2 All SA 600 (A).
Toner v. Kean Construction (Scotland) Ltd
& Anor [2009] ScotCS CSOH_105.
See section C that follows.

ENFORCEMENT OF COPYRIGHT: SUBSISTENCE

copyright and not necessarily to the author. Conferral
of copyright and ownership of copyright accordingly do
not necessarily coincide. There are three aspects to this,
namely the wide meaning of the term ‘author’, the difference between ‘author’ and ‘owner’ and transmissibility.
These are dealt with in the subsequent paragraphs.

tion, which applies to computer programs
amongst others, concerns the case of a work
‘made in the course of the author’s employment by another person under a contract of
service’: in this event, the employer is ‘the
owner of any copyright subsisting in the
work’. There is another relevant exception
6. Wide meaning of ‘author’: Although the ‘author,’ in
that concerns works which were made ‘by or
relation to a literary, musical or artistic work, is the
under the direction or control of the state’ –
person who first makes or creates the work, depending
ownership of any such copyright initially vests
on national legislation, the same does not necessarily
in the state and not in the author.
apply to other works, e.g., in the case of a photograph,
the ‘author’ may be the person who was responsible 8. Employees: The employer – and not the actual author
for the composition of the photograph or the person – is often the first owner of any copyright subsisting in
who commissioned it, the author of a sound recording works made ‘in the course of the author’s employment’
may be the person who made the arrangements for under an employment contract. This kind of provision,
the making of the sound recording and the author of a which is typical in common-law jurisdictions, is also
cinematograph film also may be the person by whom found in civil-law countries, especially in respect of
the arrangements for the making of the film are made.9 technical works and computer programs.
A person who performs a mere mechanical function is
not an author.10 Copyright Acts recognize the concept 9. Independent contractors and commissioned works:
of joint authors.11
An author who is an independent contractor retains
copyright.12 Where a person commissions the taking
7. Author and owner:
of a photograph, the painting or drawing of a portrait or
the making of a cinematograph film or a sound recordKING v. SOUTH AFRICAN WEATHER SERVICES ing, and pays or agrees to pay for it when the work is
(716/07) [2008] ZASCA 143:
made in pursuance of that commission, the person
who commissioned the work may be the owner of the
Copyright infringement is actionable ‘at the copyright in the work.
suit of the owner of the copyright’. It is only
actionable at the suit of the author if the author 10. Transmissibility and right of action:13 Copyright is
is also the owner.
transmissible by assignment or by operation of law, but,
as mentioned, moral rights are not. The right of action
The word ‘author’ has a technical meaning, (except in relation to moral rights) belongs to the ‘owner,’
and the author is not necessarily the person who may be an assignee or cessionary.14 Exclusive
who first makes or creates a work. It depends licensees may also have an independent right of action
on the nature of the work. In the case of a without affecting the rights of the copyright owner.15
computer program, the author is ‘the person
who exercised control over the making of the
computer program’.
The author of a work that attracts copyright is
usually the first owner of the copyright but that
need not necessarily be the case. An excep-

9.

There are further possibilities under
Art.14bis of the Berne Convention.
10. Cala Homes (South) Ltd & Ors v. Alfred
McAlpine Homes East Ltd [1995] EWHC
7 (Ch). Cf Najma Heptulla vs Orient
Longman Ltd. And Ors 1989 PTC 157.
11. Fisher v. Brooker & Ors [2009] UKHL 41; Feldman
NO v. EMI Music SA (Pty) Ltd 2010 (1) SA 1 (SCA).

12. Telephonic Communicators International
Pty Ltd v. Motor Solutions Australia Pty
Ltd [2004] FCA 942 (21 July 2004).
13. Crosstown Music Company 1, LLC v. Rive Droite
Music Ltd & Ors [2010] EWCA Civ 1222.
14. Frank & Hirsch (Pty) Ltd. v. A Roopanand
Brothers (Pty) Ltd. (580/91) [1993] ZASCA 90.
15. Klep Values (Pty) Ltd. v. Saunders Value
Company Ltd. (493/84/av) [1986] ZASCA 157.

73

CASEBOOK ON IP ENFORCEMENT

C. ‘Work’
11. Need to identify the ‘work’:
MICROSOFT CORPORATION v. PC CLUB AUSTRALIA
PTY LTD [2005] FCA 1522 [Australia]:
Copyright protection is only available to what are referred
to in the Copyright Act as ‘literary, dramatic, musical and
artistic works’ or ‘subject-matters other than works,’ As
a first step in bringing an action for infringement of copyright in a literary work, it is necessary to demonstrate
that copyright subsists in that work.16
12. Types of works: Copyright laws have different
approaches toward the definition of copyrightable
works. Some laws distinguish between literary works,17
musical works, artistic works, cinematographic films,
sound recordings, broadcasts, program-carrying signals,
published editions (compilations) and databases. Each
type of work may be defined and the rights attaching to
each circumscribed. These definitions are wide-ranging.

artistic domain’, whatever may be the mode or form
of expression, ‘such as’ books, pamphlets and other
writings and so forth.
In common-law jurisdictions, ‘literary works’ were,
historically, defined to ‘include’ irrespective of literary quality and in whatever mode or form expressed,
novels, stories and poetical works; dramatic works,
stage directions, cinematograph film scenarios and
broadcasting scripts; textbooks, treatises, histories,
biographies, essays and articles; encyclopedias and
dictionaries; letters, reports and memoranda; and
lectures, speeches and sermons.
Currently, U.K. law defines it as any work, other than
a dramatic or musical work, that is written, spoken or
sung, and accordingly includes (a) a table or compilation and (b) a computer program. Dutch law is similar
by granting copyright protection to ‘books, pamphlets,
newspapers, periodicals and all other writings.’
14. Expansive and unorthodox meaning of ‘literary’: All
these definitions attach a meaning to ‘literary’ that is
quite different from the orthodox dictionary meaning.
Quality, especially literary quality, is not relevant.

Others, like Canada, apply the term ‘original literary,
dramatic, musical and artistic work’ to every original
production in the literary, scientific or artistic domain,
whatever may be the mode or form of its expression, UNIVERSITY OF LONDON PRESS LTD v. UNIVERSITY
‘such as’ compilations, books, pamphlets and other TUTORIAL PRESS LTD [1916] 2 Ch 601:18
writings, lectures, dramatic or dramatico-musical
works, musical works, translations, illustrations, sketchIt may be difficult to define ‘literary work’ as
es and plastic works relative to geography, topography,
used in this Act, but it seems to be plain
architecture or science.
that it is not confined to ‘literary work’ in the
This is not much different from the civil tradition where
sense in which that phrase is applied, for
the general concept of the Berne Convention, namely
instance, to Meredith’s novels add the writthat ‘literary, scientific or artistic works’ are defined
ings of Robert Louis Stevenson. In speaking
by means of a similar list, but there one finds that the
of such writings as literary works one thinks
definition is extended because the list is not exclusive
of the quality, the style, and the literary finish
and can ‘generally [include] any creation in the literary,
which they exhibit. Under the Act of 1842,
scientific or artistic areas, whatever the mode or form
which protected ‘books’, many things which
of its expression’, as in the Dutch definition.
have no pretensions to literary style acquired
copyright; for example, a list of registered bills
13. Definition of ‘literary work’: The Berne Convention
of sale, a list of foxhounds and hunting days,
uses an expansive and non-limiting definition of ‘literand trade catalogues; and I see no ground
ary and artistic works’ to describe the works that are
for coming to the conclusion that the presentitled to copyright protection, because these works
ent Act was intended to curtail the rights of
‘include’ every production in the ‘literary, scientific and
authors. In my view the words ‘literary work’
cover work which is expressed in print or

16. Also Nova Productions Ltd v. Mazooma
Games Ltd & Ors [2007] EWCA Civ 219.
17. Computer programs must, by virtue of a TRIPS
requirement, be protected as literary works.

74

18. The images are available at https://www.cipil.law.
cam.ac.uk/virtual-museum/university-londonpress-v-university-tutorial-1916-2-ch-601.

ENFORCEMENT OF COPYRIGHT: SUBSISTENCE

writing, irrespective of the question whether
the quality or style is high. The word ‘literary’
seems to be used in a sense somewhat similar
to the use of the word ‘literature’ in political or
electioneering literature and refers to written
or printed matter.

Where a defendant does not copy the plaintiff’s ‘work’
but takes from it parts that are primarily commonplace,
the plaintiff’s burden of proving originality and infringement may be more difficult than otherwise. This does
not imply that the plaintiff’s work may be deconstructed
to assess originality.22

15. Definition of ‘artistic work’: An ‘artistic work’ in terms
of copyright definitions is not necessarily ‘artistic’ within
the dictionary meaning of the word. These definitions
also do not require any artistic value or even artistic
intent. The term ‘artistic work’ may refer to any graphic
work, photograph, sculpture or collage, irrespective of
artistic quality, work of architecture being a building or
a model for a building or work of artistic craftsmanship.19

17. Common-law approach: Typically, common-law
jurisdictions that follow U.K. precedents require a
very low level of ‘originality’ and have denigrated the
requirement of originality to the question of whether
the author has copied the work, also known as the
‘sweat of the brow’ test.23 The sweat of the brow test for
originality requires a substantial (or not trivial) degree
of skill, judgment or labour in the creation of the work.24
The reason for the extensive interpretation approach
may be the fact that U.K. law does not recognize a
D. Originality
general tort of unfair competition and that matters that
could have been protected by such a tort are given the
16. Originality: The next inquiry is whether the ‘work’ generous protection of copyright laws.
was original.20 The types of works listed in Copyright
Acts are ‘eligible for copyright’ provided they are ‘origi- The approach of the U.S. Supreme Court is different.
nal.’ Although that presupposes, as a general rule, two Its test is this:25
different inquiries: first, whether the work falls within
one of the categories of ‘works’ and, if so, whether
Original, as the term is used in copyright,
it was original, the concept of ‘work’ and ‘originality’
means only that the work was independently
are intertwined.21 Whether an alleged work is proper
created by the author (as opposed to copied
subject-matter for copyright protection involves an
from other works), and that it possesses at
objective test, both in respect of originality and ‘work’.
least some minimal degree of creativity.

The approach to the concept of ‘originality’ differs from Canadian jurisprudence is moving toward an intermedijurisdiction to jurisdiction as will be shown.
ate position. This judgment of the Supreme Court of
Canada deals with the opposing views and suggests
The inquiry is not whether its parts are original. A a compromise.
work may be original even if its making involves the
infringement of copyright in some other work. That
would be the case where the work infringes by taking
a substantial part of the premier work but, in addition,
contains original material. A second version or edition of
22. Henkel KGAA v. Holdfast NZ Limited [2006]
NZSC 57 (4 August 2006). See also Holdfast
a work is entitled to its own copyright provided it differs
NZ Ltd v. Henkel KGAA [2006] NZCA 88;
in substance from the first (i.e. is not a mere copy).

19. Nova Productions Ltd v. Mazooma Games
Ltd & Ors [2007] EWCA Civ 219; Klep Values
(Pty) Ltd. v. Saunders Value Company
Ltd. (493/84/av) [1986] ZASCA 157.
20. Baigent & Anor v. The Random House Group Ltd
[2007] EWCA Civ 247; Designer Guild Limited v.
Russell Williams (Textiles) Limited [2000] UKHL 58.
21. This may also depend on the statutory
formulation: Exxon Corp v. Exxon Insurance
Consultants Ltd [1982] Ch 119 (CA) [UK].

[2007] 1 NZLR 336 (17 May 2006).
23. The Newspaper Licensing Agency Ltd & Ors v.
Meltwater Holding BV & Ors [2010] EWHC 3099 (Ch).
24. Appleton and Another v. Harnischfeger Corporation
and Another (495/92) [1994] ZASCA 141; Haupt t/a
Softcopy v. Brewers Marketing Intelligence (Pty)
Ltd. and Others (118/05) [2006] ZASCA 40; Fairfax
Media Publications Pty Ltd v. Reed International
Books Australia Pty Ltd [2010] FCA 984 (7 September
2010) IceTV Pty Limited v. Nine Network Australia
Pty Limited [2009] HCA 14 (22 April 2009).
25. Feist Publications, Inc., v. Rural Telephone
Service Co., 499 U.S. 340 (1991). For a full
analysis, see Global Yellow Pages Ltd v. Promedia
Directories Pte Ltd [2017] SGCA 28.

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CASEBOOK ON IP ENFORCEMENT

CCH CANADIAN LTD v. LAW SOCIETY OF UPPER
CANADA 2004 SCC 13:
There are competing views on the meaning of
‘original’ in copyright law. Some courts have
found that a work that originates from an author
and is more than a mere copy of a work is
sufficient to ground copyright. This approach
is consistent with the ‘sweat of the brow’ or
‘industriousness’ standard of originality, which
is premised on a natural rights or Lockean
theory [John Locke’s] of ‘just desserts’, namely
that an author deserves to have his or her
efforts in producing a work rewarded.
Other courts have required that a work must
be creative to be ‘original’ and thus protected
by copyright. This approach is also consistent
with a natural rights theory of property law;
however, it is less absolute in that only those
works that are the product of creativity will be
rewarded with copyright protection. It has been
suggested that the ‘creativity’ approach to
originality helps ensure that copyright protection only extends to the expression of ideas
as opposed to the underlying ideas or facts.
I conclude that the correct position falls
between these extremes. For a work to be
‘original’ within the meaning of the Copyright
Act, it must be more than a mere copy of
another work. At the same time, it need not
be creative, in the sense of being novel or
unique. What is required to attract copyright
protection in the expression of an idea is an
exercise of skill and judgement. By skill, I
mean the use of one’s knowledge, developed
aptitude or practised ability in producing the
work. By judgement, I mean the use of one’s
capacity for discernment or ability to form an
opinion or evaluation by comparing different
possible options in producing the work. This
exercise of skill and judgement will necessarily
involve intellectual effort. The exercise of skill
and judgement required to produce the work
must not be so trivial that it could be characterized as a purely mechanical exercise. For
example, any skill and judgement that might
be involved in simply changing the font of
a work to produce ‘another’ work would be
too trivial to merit copyright protection as an
‘original’ work.
76

In reaching this conclusion, I have had regard
to: (1) the plain meaning of ‘original’; (2) the
history of copyright law; (3) recent jurisprudence; (4) the purpose of the Copyright Act;
and (5) that this constitutes a workable yet
fair standard.
18. Civil-law approach: The civil law has a stricter
approach. It generally requires some level of creativity.26
The work must carry the personal stamp of the author.27
INFOPAQ INTERNATIONAL A/S v. DANSKE
DAGBLADES FORENING [2009] EUECJ C-5/08:
Article 2(a) of Directive 2001/29 provides that
authors have the exclusive right to authorize
or prohibit reproduction, in whole or in part,
of their works. It follows that protection of the
author’s right to authorize or prohibit reproduction is intended to cover ‘work’.
It is, moreover, apparent from the general
scheme of the Berne Convention, in particular, Article 2(5) and (8), that the protection of
certain subject-matters as artistic or literary
works presupposes that they are intellectual
creations.
Copyright is liable to apply only in relation
to a subject-matter which is original in the
sense that it is its author’s own intellectual
creation. As regards the parts of a work, it
should be borne in mind that there is nothing in Directive 2001/29 or any other relevant
directive indicating that those parts are to
be treated any differently from the work as
a whole. It follows that they are protected
by copyright since, as such, they share the
originality of the whole work. In the light of the
considerations referred to the various parts
of a work thus enjoy protection, provided that
they contain elements which are the expression of the intellectual creation of the author
of the work.

26. Construction Denis Desjardins inc. v.
Jeanson, 2010 QCCA 1287 (CanLII).
27. The Newspaper Licensing Agency Ltd &
Ors v. Meltwater Holding BV & Ors [2011]
EWCA Civ 890 Case C-604/10 Football
Dataco and Others v. Yahoo! UK Ltd.

ENFORCEMENT OF COPYRIGHT: SUBSISTENCE

EVA-MARIA PAINER v. STANDARD VERLAGSGMBH
AND OTHERS Case C-145/10:
A portrait photograph can be protected by
copyright if such photograph is an intellectual
creation of the author reflecting his personality
and expressing his free and creative choices
in the production of that photograph.
CASE NUMBER: 2003(WA)NO.12551, 2004(WA)
NO.8021 Tokyo District Court, 47th Civil Division:
This case must be understood in the light
of the definition of ‘work’ in Japanese law,
namely ‘work’ means a production in which
thoughts or sentiments are expressed in a
creative way and which falls within the literary,
scientific, artistic or musical domain.

E. Criteria of eligibility for protection
19. When is copyright conferred on a work, i.e., when
does a work qualify for copyright?: Copyright may be
conferred on a work under three alternative circumstances: (a) if the author is a qualified person, (b) by
first publication or (c) state (crown) copyright.
20. Qualified persons: Copyright is conferred on every
work, eligible for copyright, of which the author is, at
the time the work is made, a ‘qualified person.’ This
applies to published and unpublished works. A ‘qualified person’ is an individual who is a local citizen or is
domiciled or resident within the jurisdiction or a body
incorporated under local laws.
To give effect to the requirement of national treatment, as required by the Berne Convention, citizens
of a convention country or persons there domiciled or
resident, and juristic persons there incorporated, are
deemed to be ‘qualified persons.’14
21. First publication: If the work was not made by a
qualified author, copyright will be conferred on a work
if the work was first published within the local jurisdiction or in a convention country.28

22. State (crown) copyright: Copyright may also be
conferred on a work made by or under the direction
or control of the State or an international organization.
In such event, the initial copyright vests in the State or
international organization and not in the author.

F. Fixation
23. Fixation is an optional requirement: According to
the Berne Convention, it is a matter for legislation for
each country to prescribe that works in general or any
specified categories of works will not be protected
unless they have been fixed in some material form.
(The terminology used in statutes differs in this regard.)
As a rule, works are not eligible for copyright unless
they have been written down, recorded, represented
in digital data or signals or otherwise ‘reduced to a
material form.’
The rule does not apply to works that are not literary,
dramatic or musical, such as a broadcast or programcarrying signal: they require either a broadcast or
transmission to be eligible for copyright.
CHEN WEIHUA v. CHENGDU COMPUTER BUSINESS
INFORMATION WEEKLY Judgment No. (1999) 18
Intellectual Property Branch of Haidian District Court:
The term ‘works’ means intellectual creations
with originality in the literary, artistic or scientific domain and to the extent that they are
capable of being reproduced in a tangible
form. An intellectual creation should be fixed
in a tangible medium of expression and kept
stable enough to permit it to be reproduced
or contacted by the public directly or with the
help of some machines. The work is a literary
description of 3D technology, in character
of originality. Besides, it could be fixed in a
digital format in the hard disc of a computer
and uploaded onto the internet through a
www server and kept stable enough to be
accessed and reproduced by the public via
any host. Therefore, the work is deemed to
be a copyrightable work. The time of its first
publication should be the time when it was
first uploaded onto the personal homepage.

28. The term has a technical meaning. See e.g., Fisher
& Paykel Financial Services Limited v. Karum
Group LLC [2012] NZHC 3314 para [176].

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CASEBOOK ON IP ENFORCEMENT

G. Proving subsistence of copyright
24. Proof of subsistence of copyright: It will immediately
be clear that proving subsistence of copyright can be
bothersome. It is consequently not surprising that most
laws contain special provisions for alleviating this problem. There are three models (apart from oral evidence),
but they are not exclusive or self-excluding: registration (notification),29 affidavit evidence and presumptions. These matters are dealt with in the chapter on
criminal enforcement and are therefore omitted from
this chapter.

29. See WIPO’s survey on the registration requirement:
http://www.wipo.int/copyright/en/registration/
registration_and_deposit_system_03_10.html.

78

COPYRIGHT: THE INFRINGING ACT

Chapter 9
Copyright: the infringing act
A. Introduction

80

B. Direct infringement

80

C. Indirect
(secondary) infringement

86

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CASEBOOK ON IP ENFORCEMENT

A. Introduction
1. Scope of chapter: As pointed out in the preceding chapter, to establish copyright infringement, two
things must be established, namely, (a) ownership of
copyright and (b) the infringing act. This chapter deals
with the second and assumes that the claimant has
satisfied the first.1
2. Types of infringement: Copyright laws tend to distinguish between direct (primary) and indirect (secondary)
infringement.
STEVENS v. KABUSHIKI KAISHA SONY COMPUTER
ENTERTAINMENT [2005] HCA 58:
Copyright remains defined in the Act primarily in
terms of the doing (or the authorizing of the doing)
of any of various acts listed as those comprised
in the relevant copyright. Other infringement
provisions include those dealing with importation
for sale and hire and sale and other dealings. It
follows from this specificity that not all activities
involving the use of copyright material require a
license to escape infringement.
The two will be discussed separately.
3. Proof of copyright infringement requires proof of lack
of consent:2 If disputed, the claimant must establish the
lack of consent. Consent can be either express or implied.
Consent may be presumed from the circumstances. The
inference of consent must be clear before it will operate
and must come from the person holding the right.3

There is no reproduction where two persons produce
substantially similar works through independent effort.
5. Infringing acts: Copyright statutes, as a rule, define
acts of infringement, e.g., reproducing or translating a
literary work, performing it in public or broadcasting it.
It is not feasible to discuss all these possibilities, and
the emphasis will be on a few aspects important for
enforcement. The main form of infringement is reproducing or copying the copyright work.
Copyright is infringed by any person, not being the
owner of the copyright, who, without the license of the
owner, does or causes any other person to do, within
the jurisdiction, any act that the owner has the exclusive
rights to do or to authorize.
6. Berne Convention:4 Although the term ‘reproduction’
is not defined in the Berne Convention, it guarantees
authors the right of reproduction in any manner or form.
ROBERTSON v. THOMSON CORP 2006 SCC 43:
Article 9 of the Berne Convention guarantees
authors a right of reproduction of works ‘in
any manner or form’, which the WIPO Guide
to the Copyright and Related Rights Treaties
Administered by WIPO and Glossary of
Copyright and Related Rights Terms (2003),
at p. 55, develops as follows:
The text of the Berne Convention does
not contain any complete and explicit
definition of ‘reproduction’. Certain
elements of the concept of reproduction may, however, be identified in it.
A good example is the clarification
offered in Article 9(3) [sound or visual
recordings deemed to be reproductions] which makes it obvious that it is
not a condition that, on the basis of the
reproduction, the copy of the work be
directly perceivable; it is sufficient if the
reproduced work may be made perceivable through appropriate equipment.

B. Direct infringement
4. Relationship between the original and the copy: The
rights of an author are all rights in relation to derivations
from the original. What this, in general, means is that the
accused work must be a ‘copy’ or reproduction of the
owner’s work and that there must be some causal connection between the two works. The copyrighted work must
be the source from which the infringing work is derived.

1.
2.
3.

80

Global Yellow Pages Ltd v. Promedia
Directories Pte Ltd [2017] SGCA 28.
Albian Sands Energy Inc. v. Positive Attitude
Safety System Inc., 2005 FCA 332 at [39].
Tajdin v. Aga Khan, 2012 FCA 12 (CanLII); Pinto v.
Bronfman Jewish Education Centre, 2013 FC 945.

4.

http://www.wipo.int/treaties/en/ip/berne/.

COPYRIGHT: THE INFRINGING ACT

7. Reproduction: Reproduction requires not only a
reproduction of the work but also that it must have
been ‘copied,’ i.e., there must be a causal connection
between the copyright work and the ‘copy.’5
CREATIVE TECHNOLOGY LTD v. AZTECH SYSTEMS
PTE LTD [1997] FSR 491:

9. To reproduce does not require exact replication:
SPECTRAVEST INC v. APERKNIT LTD [1988] FSR 1616:
Reproduction does not mean exact replication. A man may use another’s work as an
inspiration to make a new work of his own,
treating the same theme in his own manner;
but he is not entitled to steal its essential
features and substance and retain them with
minor and inconsequential alterations. The
question is whether there is such a degree
of similarity between the salient features of
the two works that the one can be said to be
a reproduction of the other. In considering
whether a substantial part of the plaintiffs’
work has been reproduced by the defendant,
attention must primarily be directed to the part
which is said to have been reproduced, and
not to those parts which have not.

To ‘reproduce’ within the meaning of the Act
means to copy and in order for there to have
been an infringement of the copyright in an
original work it must be shown (i) that there
is sufficient objective similarity between the
alleged infringing work and the original work,
or a substantial part thereof, for the former
to be properly described, not necessarily as
identical with, but as a reproduction or copy of
the latter; and (ii) that the original work was the
source from which the alleged infringing work
was derived, i.e. that there is a causal connection between the original work and the alleged
infringing work, the question to be asked being: 10. Objective similarity: Where there is sufficient resemhas the defendant copied the plaintiff’s work, blance shown between the two works, the court may
or is it an independent work of his own?
draw an inference of access and of copying. It is,
however, possible that the similarity is due to mere
8. Reproduction involves the making of a copy or copies: chance, that the claimant’s work was taken from the
defendant’s or that the two works were taken from the
THEBERGE v. GALERIE D’ART DU PETIT CHAMPLAIN same source.
INC 2002 SCC 34:
CREATIVE TECHNOLOGY LTD v. AZTECH SYSTEMS
The historical scope of the notion of ‘reproduc- PTE LTD [1997] FSR 491:
tion’ under the Copyright Act should be kept in
mind. As one would expect from the very word
The burden of proof does remain with the
‘copyright’, ‘reproduction’ is usually defined as
plaintiff in an infringement claim, to prove
the act of producing additional or new copies of
copying and access to his work, and, where
the work in any material form. Multiplication of
there is sufficient resemblance shown
the copies would be a necessary consequence
between the two works, he will invite the
of this physical concept of ‘reproduction’.
court to draw an inference of copying. The
defendant then has the opportunity to rebut
A similar understanding of ‘reproduction’ is reflected
the inference; to give an alternative explanain decisions under the U.K. Act on which s 3(1) of the
tion of the similarities where this is possible;
Act is based, i.e., the physical making of something
and at this point, in our view, the burden shifts.
that did not exist before.
The copyright owner must essentially show
that ‘causal connection’ is the explanation of
the similarity between the work and infringe5. Galago Publishers (Pty) Ltd. and Another v Erasmus
ment – but there are other possibilities which
(130/88) [1988] ZASCA 131; Baigent & Anor v The
may be pleaded by way of defense; that the
Random House Group Ltd [2007] EWCA Civ 247; Toy
Major Trading Co v Hang Shun Plastic Toys Civil Appeal
No. 11 of 2007 [Hong Kong Special Administrative
Region]; Clarendon Homes (Aust) Pty Ltd v Henley Arch
Pty Ltd [1999] FCA 1371 (7 October 1999); University of
Waikato v Benchmarking Services Ltd [2004] NZCA 90.

6.

Quoted in Jacana Education (Pty) Ltd v Frandsen
Publishers (Pty) Ltd (305/96) [1997] ZASCA 109.

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CASEBOOK ON IP ENFORCEMENT

plaintiff copied from the defendant, that they
both copied from a common source, or that
they arrived at their respective results independently. The relevant question in our case
is this: whether the inference of copying could
be displaced by evidence from Aztech how in
fact they had arrived at their design and that
they had not done so by copying?
The above statement must not be read to
mean that the copyright plaintiff is awarded
a lower standard of proof. He must still run
his case in the most thorough and best way
he can, to show the existence of probative
similarities leading to the inference of copying,
whereupon the opportunity then arises for the
defendant to explain those difficulties away.
CREATIVE TECHNOLOGY LTD v. AZTECH SYSTEMS
PTE LTD [1997] FSR 491:

down in the cases in order to tell whether what
is sought to be protected is on the ideas side
of the dividing line, or on the expression side.
RG ANAND v. M/S DELUX FILMS (1978) 4 SCC 118:
Where the same idea is being developed
in a different manner, it is manifest that the
source being common, similarities are bound
to occur. In such a case the courts should
determine whether or not the similarities are
on fundamental or substantial aspects of the
mode of expression adopted in the copyrighted work. If the defendant’s work is nothing
but a literal imitation of the copyrighted work
with some variations here and there it would
amount to violation of the copyright.
In other words, in order to be actionable, the
copy must be a substantial and material one
which at once leads to the conclusion that the
defendant is guilty of an act of piracy.

Next, we turn to the literal similarities which
exist (including the programming errors)
between the respective firmware of the 12. ‘What is worth copying is worth protecting’: This
parties, when viewed in toto, raise the irresist- is a commonly quoted axiom, but it is dangerous and
ible inference that the chances of independent may beg the question.7
development on the part of Aztech were low.
We find that Aztech have failed to provide a NETWORK TEN PTY LIMITED v. TCN CHANNEL NINE
reasonable explanation, one that is consistent PTY LTD [2004] HCA 14:
with the absence of any copying through
disassembly. In our view, the learned Judicial
Counsel invoked ‘the rough practical test that
Commissioner failed to address the question
what is worth copying is prima facie worth
of the cumulative weight and significance of all
protecting’. But later authorities correctly
the similarities in reaching his decision, includemphasize that, whilst copying is an essential
ing similarities in non-essentials and errors.
element in infringement to provide a causal
connection between the plaintiff’s intellectual
11. Reproduction is concerned with form and not ideas:
property and the alleged infringement, it does
not follow that any copying will infringe. The
BAIGENT v. THE RANDOM HOUSE GROUP LTD
point was stressed by Laddie J when he said:
[2007] EWCA Civ 247:
Furthermore, many copyright cases
If the copyright work in question is a literary
involve defendants who have blatantly
work, the allegation will normally be that part of
stolen the result of the plaintiff’s labors.
the text of the earlier work was copied, exactly
This has led courts, sometimes with
or with some modification, in the creation of
almost evangelical fervor, to apply the
the later work. In the present case that is not
commandment ‘thou shalt not steal’.
what is alleged as the basis for the claim in
If that has necessitated pushing the
copyright infringement. What is said to have
boundaries of copyright protection
been copied is a theme of the copyright work.
Copyright does not subsist in ideas; it protects
the expression of ideas, not the ideas them7. See also Lambretta Clothing Company Ltd v.
Teddy Smith (U.K.) Ltd [2004] EWCA Civ 886.
selves. No clear principle is or could be laid
82

COPYRIGHT: THE INFRINGING ACT

further out, then that has been done.
This has resulted in a body of case law
on copyright which, in some of its further
reaches, would come as a surprise to the
draughtsman of the legislation to which
it is supposed to give effect.
13. Reproduction in the digital era:
ROBERTSON v. THOMSON CORP 2006 SCC 43:
That there is no loss of copyright by virtue of
reproduction in digital storage form, such as
databases, is further confirmed by an Agreed
Statement concerning Art. 1(4) of the WIPO
Treaty which is set out in a footnote to that article:
The reproduction right, as set out in
Article 9 of the Berne Convention, and
the exceptions permitted thereunder,
fully apply in the digital environment, in
particular to the use of works in digital
form. It is understood that the storage
of a protected work in digital form in
an electronic medium constitutes a
reproduction within the meaning of
Article 9 of the Berne Convention.

KING FEATURES SYNDICATE INC v. O AND M
KLEEMAN LTD [1940] 2 All ER 355 (Ch):

There can be no doubt at all that a figure which
in fact reproduces an original artistic work
consisting, in substance, of a sketch of that
figure, is none the less a reproduction of the
original artistic work, because the maker of it
has copied it not directly from the original but
from some representation derived directly or
indirectly from the original work. It seems to
have been suggested in the court below that
the fact that the alleged infringement was in
three dimensions, whereas the original was
in two, prevented the plaintiffs making good
their claim. I agree with the learned judge that
while this circumstance may add to the difficulty of forming a conclusion on the degree
of resemblance between the infringing article
and the original, the plain words of the Act
(‘in any material form’) get rid of any difficulty
there might otherwise have been in treating a
copy in three dimensions as an infringement
of copyright in a sketch in two dimensions.

15. Fault is not an element of copyright infringement:
Copyright infringement, although a statutory wrong,
Just as individual authors do not lose copy- does not require fault on the part of the infringer for
right in their articles by virtue of their inclu- liability. The question is simply whether there has
sion in an electronic database, newspaper been copying, not what the intention of the copier
publishers do not lose their right to reproduce was in doing it. Although some older cases referred
their newspaper, including the articles that to infringement as theft and made mention of animus
comprise it, by doing the same.
furandi (the intention to steal), the comparison is false,
and animus furandi is not required. Although intention
The fact that the actual newspaper page is not is not required, copying requires an act of volition.8
fully or identically reproduced in the database
and the articles are therefore presented in BAIGENT & ANOR v. THE RANDOM HOUSE GROUP
a different form from a paper newspaper is LTD [2007] EWCA Civ 247:
irrelevant. It is not the physical manifestation
of the work that governs; it is whether the
Breach of copyright does not depend on intenproduct perceivably reproduces the exercise
tion or knowledge (though these may be relevant
of skill and judgment by the publishers that
in some cases to remedy. The question now
went into the creation of the work.
is whether there has been copying, not what
the intention of the copier was in doing it. If the
14. Two-dimensional drawings may be ‘reproduced’ by
alleged infringer denies copying, and is disbethree-dimensional articles:
lieved, then what matters is the finding of fact as
to copying which follows, though no doubt his

8.

Religious Technology Center v. Netcom On-Line
Communications Services, Inc. 907 F.Supp. 1361.

83

CASEBOOK ON IP ENFORCEMENT

being disbelieved may also have other forensic
effects as to the findings made by the judge in
the case. I cannot see how the intention with
which any copying was done is or can be legally
relevant to the issue whether the copying is an
infringement, either generally or by reference
to the question whether what was copied is a
substantial part of the copyright work.
16. Copying of a part of a work: There are two approaches to the question as to when the reproduction of part
of a work amounts to infringement: The one is reflected
in the wording of many Copyright Acts and requires
that the part must be a substantial part of the work,9
and the other, which is the position under the present
European copyright regime, is as follows:10
As regards the parts of a work, it should be
borne in mind that there is nothing in Directive
2001/29 or any other relevant directive indicating that those parts are to be treated any
differently from the work as a whole. It follows
that they are protected by copyright since,
as such, they share the originality of the
whole work. In the light of the considerations
referred to the various parts of a work thus
enjoy protection, provided that they contain
elements which are the expression of the
intellectual creation of the author of the work.
17. Quotations: The Berne Convention (Article 10)11
provides for the fair use of quotations and for the use
of illustration in publications, broadcasts or sound or
visual recordings for teaching, provided such use is
compatible with fair practice.
18. When is a part ‘substantial’?
NETWORK TEN PTY LIMITED v. TCN CHANNEL NINE
PTY LTD [2004] HCA 14:

acts done in relation to insubstantial
parts do not constitute an infringement
of copyright and the defenses of fair
dealing only come into operation in
relation to substantial parts or more.
It would be quite wrong to approach an
infringement claim on the footing that the
question of the taking of a substantial part
may be by-passed by going directly to the
fair dealing defenses.
As already emphasized in these reasons, the
requirement that an infringer who takes less
than the whole of the protected subject-matter
must take at least a substantial part thereof
plays a well-established and central part in
copyright law. Questions of quality (which
could include the potency of particular images
or sounds, or both, in a broadcast), as well
as quantity, arise.
GLOBAL YELLOW PAGES LTD v. PROMEDIA
DIRECTORIES PTE LTD [2017] SGCA 28:
The third principle [of copyright] is that the
method of analysis is heavily shaped by what
it is in a work that attracts copyright protection,
especially where infringement and fair dealing
are concerned. In other words, there is a
nexus between the originality, skill and effort
that goes into a work, and the substantiality
of copying required to establish infringement.
Thus, although copyright may subsist in a
work as a whole, there would be no infringement of such copyright unless one copies
the work as a whole or a substantial portion
of the part of the work that attracts copyright
protection in the first place.
19. The test is rather qualitative than quantitative:

The term ‘substantial part’ has a legislative
pedigree [and] keeps separate the concepts of
substantial part and fair dealing. Accordingly:

9. Warman v. Fournier 2012 FC 803.
10. Infopaq International A/S v. Danske Dagblades
Forening [2009] EUECJ C-5/08. The Newspaper
Licensing Agency Ltd & Ors v. Meltwater
Holding BV & Ors [2011] EWCA Civ 890.
11. http://www.wipo.int/treaties/en/ip/berne/.

84

LADBROKE (FOOTBALL) LTD v. WILLIAM HILL
(FOOTBALL) LTD [1964] 1 All ER 465 (HL):
If he does copy, the question whether he has
copied a substantial part depends much more
on the quality than on the quantity of what
he has taken. One test may be whether the
part which he has taken is novel or striking,
or is merely a commonplace arrangement of
ordinary words or well-known data.

COPYRIGHT: THE INFRINGING ACT

The more correct approach is first to determine whether the plaintiff’s work as a whole
is ‘original’ and protected by copyright, and
then to enquire whether the part taken by the
defendant is substantial. A wrong result can
easily be reached if one begins by dissecting
the plaintiff’s work and asking, could selection be the subject of copyright if it stood by
itself and so on.
To my mind, it does not follow that because
the fragments taken separately would not
be copyright, therefore the whole cannot be.
Indeed, it has often been recognized that
if sufficient skill and judgment have been
exercised in devising the arrangement of the
whole work, that can be an important or even
decisive element in deciding whether the work
as a whole is protected by copyright.
DESIGNER GUILD LIMITED V. RUSSELL WILLIAMS
(TEXTILES) LIMITED (TRADING AS WASHINGTON
DC) [2000] UKHL 58:12
Plainly there can be no copyright in an idea
which is merely in the head, which has not
been expressed in copyrightable form, as a
literary, dramatic, musical or artistic work. But
the distinction between ideas and expression
cannot mean anything so trivial as that. On the
other hand, every element in the expression of
an artistic work (unless it got there by accident
or compulsion) is the expression of an idea on
the part of the author. It represents her choice
to paint stripes rather than polka dots, flowers
rather than tadpoles, use one colour and brush
technique rather than another, and so on. The
expression of these ideas is protected, both
as a cumulative whole and also to the extent
to which they form a “substantial part” of the
work. Although the term “substantial part” might
suggest a quantitative test, or at least the ability
to identify some discrete part which, on quantitative or qualitative grounds, can be regarded as
substantial, it is clear upon the authorities that
neither is the correct test. Ladbroke (Football)
Ltd. v. William Hill (Football) Ltd. [1964] 1 W.L.R.

12. Images of the designs can be found at
http://www.bailii.org/ew/cases/EWHC/
Patents/1998/349(image1).pdf.

273 establishes that substantiality depends
upon quality rather than quantity. And there
are numerous authorities which show that the
«part» which is regarded as substantial can be
a feature or combination of features of the work,
abstracted from it rather than forming a discrete
part. That is what the judge found to have been
copied in this case. Or to take another example,
the original elements in the plot of a play or novel
may be a substantial part, so that copyright
may be infringed by a work which does not
reproduce a single sentence of the original. If
one asks what is being protected in such a case,
it is difficult to give any answer except that it is
an idea expressed in the copyright work.
20. Reproduction by adaptation:13 A work may be reproduced by adapting it. Adaptation of a work involves
producing a different version of the work incorporating the same product of originality. The term is usually
defined in the relevant Copyright Act. In relation to a
literary work, ‘adaptation’ may include the conversion of
a non-dramatic work, such as a novel, into a dramatic
work or vice versa. The Berne Convention (Art. 2(3))
provides in this regard that ‘translations, adaptations,
arrangements of music and other alterations of a literary or artistic work shall be protected as original works
without prejudice to the copyright in the original work.’
CASE NUMBER: 2005(NE) NO.10023 [2005.6.14]
Intellectual Property High Court, Second Division [Japan]:
‘Adaptation’ under the Copyright Law is an
act of creating a separate work by modifying,
adding/subtracting, changing, etc., a specific
expression, based on an existing work while
maintaining the same essential expression of
the existing work, so as to creatively express
a new thought or feeling. Under this Article, a
person exposed to this separate work must
be able to directly perceive the essential
expression of the existing work. Along these
lines, if a work created based on an existing
work is merely identical to the existing work
with respect to an aspect which is not in itself
an expression or which has no expressional
creativity, such as any thought, feeling or idea,
or fact or incident in the existing work is not an

13. Benchmark Building Supplies Ltd v. Mitre 10
(New Zealand) Ltd [2003] NZCA 213.

85

CASEBOOK ON IP ENFORCEMENT

adaptation. The ‘Seven Samurai’ is a work that
is much more artistic than ‘MUSASHI’ and
these works have similarities or commonalities
in their ideas only. The essential expression
of the ‘Seven Samurai’ cannot be perceived
from ‘MUSASHI’. Therefore, the similarities or
commonalities do not constitute an infringement of the copyright (right of adaptation) or
of the author’s moral rights (right of attribution
and right of integrity).

C. Indirect (secondary) infringement
21. Meaning of indirect infringement: Indirect infringement refers to those instances in which the infringing act
does not involve the reproduction of the copyright work.
Traditionally it applied principally to commercial dealing with infringing works with guilty knowledge, more
particularly the importation of goods that would have
infringed the copyright, had they been made within the
country of importation.14
The TRIPS Agreement has added another kind through
the recognition of a rental right in respect of at least
computer programs and cinematographic works:
member states must provide copyright owners the
right to authorize or to prohibit commercial rental to the
public of originals or copies of their copyright works.
As mentioned before, the WIPO Copyright Treaty
recognizes additional rights of specified authors (not
only of authors of computer programs or databases)
and accords them three: a distribution, a rental and
communications right.
EURO-EXCELLENCE INC v. KRAFT CANADA INC
2007 SCC 37:
The Kraft companies thus allege that EuroExcellence has engaged in ‘secondary
infringement’ by importing for sale or distribution copies of KFS and KFB’s copyrighted
works into Canada. Secondary infringement
is dealt with under s. 27(2) of the Act.
Three elements must be proven to establish
secondary infringement: (1) a primary infringe-

14. Frank & Hirsch (Pty) Ltd. v. A Roopanand
Brothers (Pty) Ltd. (580/91) [1993] ZASCA 90.

86

ment; (2) the secondary infringer should have
known that he or she was dealing with a
product of infringement; and (3) the secondary infringer sold, distributed or exposed for
sale the infringing goods. Perhaps the most
straightforward form of secondary infringement arises when one sells a copy of an
infringing work. Under s. 27(2)(a),
[i]t is an infringement of copyright for
any person to [...] sell [...] a copy of
a work [...] that the person knows or
should have known infringes copyright.
Section 27(2)(e) stands out as an apparent
exception to the rule in CCH that secondary
infringement first requires primary infringement because, unlike s. 27(2)(a) to (d), it does
not require actual primary infringement.
Instead, it requires only hypothetical primary
infringement. Under s. 27(2)(e),
It is an infringement of copyright for
any person to[...] import[...]a copy of a
work[...]that the person knows[...]would
infringe copyright if it had been made
in Canada by the person who made it.
Section 27(2)(e) substitutes hypothetical primary
infringement for actual primary infringement. It
is possible that the infringing imports may have
been lawfully made outside of Canada. Still,
they are deemed to infringe copyright if the
importer has imported into Canada works that
would have infringed copyright if those works
had been made in Canada by the persons who
made the works abroad.
The apparent purpose of s. 27(2)(e) is to give
Canadian copyright holders an added layer of
protection where the Canadian copyright holder
does not hold copyright in that work in foreign
jurisdictions. Section 27(2)(e) protects Canadian
copyright holders against ‘parallel importation’ by
deeming an infringement of copyright even where
the imported works did not infringe copyright
laws in the country in which they were made.

PATENT PRINCIPLES

Chapter 10
Patent principles
A. Introduction

88

B. Structure of a
patent specification

89

C. Balancing patent rights
and public interest

91

87

CASEBOOK ON IP ENFORCEMENT

The purpose of this chapter is to provide a brief overview of patent principles that relate to the enforcement
of patent rights against an infringer.

A. Introduction
1. The TRIPS Agreement: The TRIPS Agreement1
imposes obligations in relation to the protection of
patents on the member states of the WTO. It also
introduced certain provisions of the Paris Convention2
by reference. Some of these will be referred to during
the discussion and form its basis. As before, it will be
assumed that the laws of WTO member states comply
with these provisions.
2. Patents for inventions: Although the term ‘patent’
is often used as synonymous with ‘invention,’ the
terms are not synonyms. Patents (or letters patent) are
granted for inventions. A patent is the grant of exclusive
rights by the state for an invention. In other words, an
invention is the subject matter of a patent. For example,
Thomas Edison found that an electric current passed
through a tungsten filament in a vacuum produces
light, and he used that finding to develop a light bulb.
That was an invention, which entitled him to the grant
of a patent.
3. Patentable subject matter: To be patentable, an
invention must have patentable subject matter. The
requirement is spelt out in the TRIPS Agreement (Art. 27),
which provides that patents must be available for any
inventions, whether products or processes, in all fields
of technology, if they are (a) new, (b) involve an inventive step (are non-obvious) and (c) capable of industrial
application (or useful).
4. Rights conferred by the grant of a patent: The exclusive rights conferred by a patent depend on the nature
of the subject matter of the particular patent (Art. 28 of
TRIPS). Patents are classified as (a) product patents or
(b) process (method) patents. Typically, the same patent
may have product and process claims.

its consent from the acts of making, using, offering
for sale, selling or importing for any of these purposes
that product.
Where the subject matter of a patent is a process, the
owner of the patent has the right to prevent third parties
from using the process without its consent and from
using, offering for sale, selling or importing for these
purposes a product obtained directly by that process.
In other words, a process patent protects the patentee not only against the use of the process within the
jurisdiction but also against the importation of goods
made elsewhere by the same process.3 In addition,
as appears from the TRIPS Agreement, the product
produced by a patented process is also protected.
5. Negative right: It follows from the preceding paragraph that a patent does not entitle the patentee to use
the invention, but only to prevent others from using it.
Usually, though, a patentee will be able to exercise a
patented invention, and a failure to exercise the invention may lead to a compulsory license.
PANDUIT CORP v. STAHLIN BROS 575 F2d 1152:
Patents must by law be given the attributes
of personal property. The right to exclude
others is the essence of the human right called
property. The right to exclude others from free
use of an invention protected by a valid patent
does not differ from the right to exclude others
from free use of one’s automobile, crops, or
other items of personal property.
6. Patent infringement: Any act that infringes the
exclusive rights of the patentee amounts to patent
infringement.4
LEONARDIS & ANOR v. THETA DEVELOPMENTS
P/L & ORS No. SCGRG-93-344 [2000] SASC 4025
It may be concluded that infringement occurs
when a person does an act which breaches
the monopoly of the patentee.

Where the subject matter of a patent is a product, the
patentee has the right to prevent third parties without
3.
4.
1.
2.

88

https://www.wto.org/english/
docs_e/legal_e/27-trips.pdf.
https://www.unido.org/sites/default/
files/2014-04/Paris_Convention_0.pdf.

5.

Paris Convention Art. 5 quater.
Impression Products, Inc. v. Lexmark
Int’l, Inc. 581 U. S. ____ (2017).
The judgment on appeal does not deal
with the matter: Theta Developments Pty
Ltd v. Leonardis [2002] FCAFC 170.

PATENT PRINCIPLES

7. Patents are territorial: This principle is spelled out
by the Paris Convention (Art. 4bis). In practical terms,
‘territoriality’ means that an inventor may apply for a
patent for his invention in country A and, within one
year, may apply in country B for a patent in relation to
the same invention. This application is referred to as
a convention application. The first application cannot
destroy the novelty of the second application. These
patents (if granted) will exist independently; they may
differ in scope, and the one may lapse or be revoked
without affecting the other.
It also means that a patentee can only sue for patent
infringement in a country where the invention is patented. The principle is also relevant for judging the legality
of parallel importation (the importation of so-called grey
goods) and the doctrine of patent exhaustion.6
BBS CASE Japan Supreme Court 1 July 1997:
Article 4bis of the Paris Convention denies the
mutual dependency of patents and stipulates
that patents in the various countries of the
Paris Union shall be independent of each other
regarding their generations, variations and
extinctions; that is, a patent in one country is
independent from a patent in another country
with respect to nullity, forfeiture and normal
duration. A question of whether or not to allow
a patentee to enforce his patent right under a
certain condition is of no concern in Article 4bis.
The territoriality principle in patents means
that a patent right in a country of the Paris
Union shall be defined by that country’s laws
as regards its establishment, transfer, validity,
among other things, and that the patent right
can be enforced only in that country’s territory.
In the case where a Japanese patent owner
enforces his/her Japanese patent right within
Japan, it is entirely a matter of interpretation
of the Japanese Patent Law as to how the
fact that the accused products were already
lawfully sold by the patent owner in a foreign
country is considered for determining whether
or not the patent owner can indeed enforce
his Japanese patent right on the accused
products in Japan.

6.

B. Structure of a patent specification
8. A patent specification (document) has different parts
with different functions: A typical patent specification
(or document) contains (a) the name of the inventor
(according to the Paris Convention an inventor is
entitled to be named), (b) a title, (c) the so-called body
of the specification and (d) one or more claims. Relevant
for present purposes is the body and the claims.
WELCH PERRIN CO PTY LTD v. WORREL [1960]
HCA 91:
The specification must be read as a whole. But
it is a whole made up of several parts, and
those parts have different functions. Courts
have often insisted that it is not legitimate to
narrow or expand the boundaries of monopoly
as fixed by the words of a claim by adding to
those words glosses drawn from other parts
of the specification.
9. The ‘body’ of the specification: The purpose of the
body of the specification is to describe, ascertain and,
where necessary, illustrate or exemplify the invention
through examples and drawings and the way it is to be
performed to enable the invention to be performed by
a person skilled in the art of the invention.
Apart from a description of the invention, the specification usually provides a general description of the prior
art and the problem that faced the inventor, and it may
explain the inventive step.
The specification may also contain a consistory clause,
which is a paragraph or section that sets out the heart
of the invention. Quite often it is a recital of the first or
broadest claim and is inserted to avoid an attack of
lack of fair basis or insufficiency.
Some laws require an abstract of the invention but
provide that the abstract may not be used in interpreting the specification.
10. Claims define the exclusive right: Infringement
involves the taking of the invention as claimed in the
claims and not as described in the body of the specification. The claims circumscribe the monopoly. They
define the invention, thereby setting the limits of the
monopoly.

The position under the European Patent
Convention and in the EU is not discussed.

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CASEBOOK ON IP ENFORCEMENT

ELECTRIC AND MUSICAL INDUSTRIES LTD v.
LISSEN LTD (1938) 56 RPC 237:
The function of the claims is to define clearly
and with precision the monopoly claimed, so
that others may know the exact boundary of
the area within which they will be trespassers. Their primary object is to limit and not to
extend the monopoly. What is not claimed is
disclaimed. The claims must undoubtedly be
read as part of the entire document and not as
a separate document; but the forbidden field
must be found in the language of the claims
and not elsewhere.
CUTTER I, BGH, judgment of March 12, 2002 – X
ZR 168/00:
The extent of the protection conferred by
a patent is determined by the terms of the
claims and by the description and drawings
used to interpret those claims. The construction of the patent claims serves not only to
clarify any ambiguities but also to explain
the technical terms used therein and to clarify the meaning and scope of the invention
described therein.
The description should be geared to consider
the point of view of a person skilled in the
art: it is on his/her understanding that the
meaning of the contents of the patent claims
– including the terms used therein – depends,
and his/her understanding that is decisive
in determining from their wording how far
the scope of the protection conferred by the
patent claims extends.
In assessing whether use is being made of
the invention protected under the patent, the
contents of the patent claims must first be
established, on the basis of the specialist’s
understanding – that is to say, the meaning
inferred by the specialist from the wording
of the claims.

7.

90

Quoted in Kirin-Amgen Inc & Ors v Hoechst Marion
Roussel Ltd & Ors [2004] UKHL 46 par. 20.

FREE WORLD TRUST v. ÉLECTRO SANTÉ INC 2000

SCC 66:
Patent claims are frequently analogized to
‘fences’ and ‘boundaries’, giving the ‘fields’
of the monopoly a comfortable pretence of
bright line demarcation. Thus, in Minerals
Separation North American Corp v Noranda
Mines Ltd [1947] Ex CR 306 Thorson P put
the matter as follows:
By his claims the inventor puts fences
around the fields of his monopoly and
warns the public against trespassing on his property. His fences must
be clearly placed in order to give the
necessary warning and he must not
fence in any property that is not his
own. The terms of a claim must be free
from avoidable ambiguity or obscurity
and must not be flexible; they must be
clear and precise so that the public
will be able to know not only where
it must not trespass but also where it
may safely go.
In reality, the fences often consist of complex
layers of definitions of different elements (or
components or features or integers) of differing complexity, substitutability and ingenuity.
A matrix of descriptive words and phrases
defines the monopoly, warns the public and
ensnares the infringer. In some instances,
the precise elements of the fence may be
crucial or essential to the working of the
invention as claimed; in others the inventor
may contemplate, and the reader skilled in the
art appreciate, that variants could easily be
used or substituted without making any material difference to the working of the invention.
The interpretative task of the court in claims
construction is to separate the one from the
other, to distinguish the essential from the
inessential, and to give to the field framed by
the former the legal protection to which the
holder of a valid patent is entitled.

PATENT PRINCIPLES

11. What is not claimed is disclaimed:
RA-LIPASE CASE Supreme Court of Japan 8
March 1991:

talcum and one with gel can be said to be discrete
inventions falling within the scope of the claim (provided
the other integers are present). Sometimes a claim
may cover hundreds of thousands of embodiments,
particularly when a general chemical formula is used
to describe a class of compounds.

The summary of the invention in the patent
application must be evaluated when examining whether the patent requirements of
novelty and inventive step have been met as C. Balancing patent rights
prerequisites. This determination, except for and public interest
in cases of special circumstances, must be
made on the basis of the scope of the patent 14. The bargain between the inventor and the public:
claim as indicated in specifications attached
to the patent application.
FREE WORLD TRUST v. ÉLECTRO SANTÉ INC 2000

SCC 66:
Only where the technological meaning
contained in the scope of the patent claim
cannot be clearly or unequivocally understood,
or, where, in light of the detailed description of
the invention, there is an obvious error in the
entry of the scope of the patent claim, among
other cases, can the detailed explanation in
the Specification be taken into account. This is
evident from [the] Patent Law, which stipulates
that in the scope of the patent claim only matters
that are essential to the constitution of the invention in the patent applications shall be entered.
12. The purpose of integers: For the sake of convenience,
a claim is divided into its elements (or, in patent jargon, its
integers) for purposes of interpretation. This division may
be done by the patentee or by the court when considering
the meaning of the claim, because it simplifies the exercise. But a claim need not have more than one element,
for instance, a claim to a chemical compound may consist
of a single element. A claim for a toothpaste may have
more than one integer and may read thus:
(a) A toothpaste consisting of (b) a polishing
agent, (c) a water-soluble fluoride-containing
compound that yields fluoride ions in aqueous
solution, (d) a buffering agent and (e) the dentifrice being such that its pH is from five to six.
To infringe, each of these integers must be present in
the defendant’s product.
13. Embodiments are discrete inventions: This claim
for toothpaste contains more than one embodiment
(or discrete invention). For instance, the use of any
polishing agent is claimed in this combination, whether
talcum, gel or whatever. Therefore, a toothpaste with

Patent protection rests on the concept of a
bargain between the inventor and the public.
In return for disclosure of the invention to the
public, the inventor acquires for a limited time
the exclusive right to exploit it. It was ever thus.
CFS BAKEL BV v. STORK TITAN BV AU6098, Hooge
Raad (Supreme Court), C04/334HR (29 September
2006):
On the one hand, the granting of a patent
honors the achievement underlying the invention embodied in the patent, as well as the
research carried out and the investment in
time and money. This encourages the making
of inventions, which also serves the public
interest. These considerations argue in favor
of not regarding the owner of a tested patent
liable to his competitors on the grounds of
an unlawful act solely on the ground that
the patent has been subsequently revoked
or declared void. The patent owner would
otherwise be discouraged from exercising
his rights against those who deny them to
him, which might reduce the incentive to
produce inventions.
On the other hand, the granting of a patent (or
at least the invoking of it) restricts competition
and gives the patentee a lead on the competition. The invoking of the patent against third
parties is generally an appropriate means of
influencing the behavior of those third parties
to the patent owner’s benefit. The fact that
our social system is based precisely on the
encouragement of free competition in the
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CASEBOOK ON IP ENFORCEMENT

public interest is an argument, in this light,
for allowing the person who relies on a patent
that is subsequently revoked or declared void
to bear the risk of his claims being disproved.

They may, in addition, exclude from patentability:
diagnostic, therapeutic and surgical methods for the
treatment of humans or animals; plants and animals
other than micro-organisms; and essentially biological
processes to produce plants or animals other than
CANON INC. v. RECYCLE ASSIST C, LTD [2006] non-biological and microbiological processes. However,
JPIPHC 3:
there is a duty to provide for the protection of plant
varieties either by patents or by an effective sui generis
In addition, as compensation for the disclo- system, or a combination of them.8
sure of an industrially applicable invention to
the public, the patent holder is given the exclu- Some laws exclude from their definition of patentable
sive right to exploit the patented invention for invention matters such as schemes, rules and methods
making profit, and the patent holder has the for performing mental acts, playing games or doing
discretion to set the prices of the patented business, programs for computers and presentations of
products and other related products unless information. In others, business methods and programs
there are special circumstances where such for computers are patentable.
pricing is against public interest or public
order under the Anti-monopoly Law, etc.
17. Period of protection: The term of a patent is 20 years,
calculated from the date of filing and not the date of
15. Exclusion of discoveries: A discovery (including grant (Art 33 of TRIPS). Because patent rights are only
the laws of nature, physical phenomena and abstract granted (many) years after filing of the application for
ideas) is not a patentable invention, even where a a patent, the effective term of patent protection may
statute provides that whoever ‘invents’ or ‘discovers’ be much shorter than 20 years.
any new and useful process, machine or manufacture
may obtain a patent for it, as in the United States. Another complicating factor is the fact that for certain
Marie Curie, for example, discovered the radioactive products, such as pharmaceuticals, some or other
element radium, isolated it and established its proper- regulatory permission is required before they may be
ties. This discovery without any industrial application marketed, which further reduces the effective term
did not entitle her to a patent. The discovery of X-rays of protection. For this reason, some countries used
by Röntgen consisted of an application for medical to provide for an extension of the term of a patent on
use of the properties of radioactive material and was the grounds of inadequate remuneration, and others
an invention that could have been patented.
provide for supplementary protection certificates.
DIAMOND v. CHAKRABARTY (1980) 447 US 303,

100 S Ct 2204:
The laws of nature, physical phenomena, and
abstract ideas have been held not patentable.
Thus, a new mineral discovered in the earth
or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could
not patent his celebrated law that E=mc2
nor could Newton have patented the law of
gravity. Such discoveries are manifestations
of nature, free to all men and reserved exclusively to none.
16. Limitations on patentable subject matter: Member
countries may disallow the patenting of inventions if
necessary to protect public order or morality within their
territory, including to protect human, animal or plant life
or health or to avoid serious prejudice to the environment.
92

18. Exhaustion of patent rights: The TRIPS Agreement
(Art. 6) states ‘that nothing in this Agreement shall be
used to address the issue of the exhaustion of intellectual property rights,’ which means that the issue is
left for national law.
As far as domestic exhaustion is concerned, laws
typically provide that patent or design rights are not
infringed by the doing of anything in relation to products to which the patent or design has been applied
or is incorporated where such products have been
put on the market within the relevant jurisdiction by or

8.

The International Convention for the Protection of
New Varieties of Plants (at http://www.upov.int/
upovlex/en/upov_convention.html) is administered
by the International Union for the Protection of
New Varieties of Plants. This work does not cover
issues relating to protection of plant varieties.

PATENT PRINCIPLES

with the consent of the registered proprietor. There is,
however, a lack of unanimity in respect of international
exhaustion, particularly in connection with so-called
parallel importation.

opportunity to decline the purchase because
of the exclusion.
IMPRESSION PRODUCTS, INC. v. LEXMARK INT’L,
INC. 581 U. S.
(2017):9

BBS CASE Japan Supreme Court 1 July 1997:
Once a Japanese patent owner has sold a
patented product in Japan under his/her
Japanese patent right, it should be considered
that the patent right has achieved its purpose
and has been exhausted. There is no need to
allow double profits, and therefore the patent
right cannot be enforced on the acts of using,
selling or lending the already sold product in
this situation.
On the other hand, a situation where a Japanese
patent owner sells a patented product in another country is not necessarily analogous to the
above situation. The patent owner does not
necessarily own [the corresponding] patent in
the other country on the same invention as in
the Japanese patent. Even if the patent owner
owns the corresponding patent, the Japanese
patent right and the corresponding patent
right are separate rights and independent of
each other. Accordingly, the patent owner’s
enforcing his Japanese patent right against
the products sold by himself/herself in the
other country does not fall under double profits.
When a Japanese patent owner sells patented
products to a purchaser in a foreign country without reservation, it is deemed that
the patent owner implicitly assigns to the
purchaser, or subsequent purchasers of
the product, a right to control the patented
products in Japan without restriction by the
Japanese patent right.
On the other hand, it is possible for such
patent owner to reserve the right to enforce its
Japanese patent right in Japan when selling
the patented products in the foreign country. If the patent owner agrees that Japan
is excluded from the export destinations of
the patented products, and such agreement
is clearly indicated on the patented products, then even a subsequent purchaser who
purchased through an intermediary will have
notice of the agreement of exclusion on the
patented products and will have been given an

A patentee’s decision to sell a product exhausts
all of its patent rights in that item, regardless
of any restrictions the patentee purports to
impose. As a result, even if the restrictions in
[the patentee’s] contracts with its customers
were clear and enforceable under contract law,
they do not entitle [it] to retain patent rights in
an item that it has elected to sell.
When a patentee sells an item, that product
‘is no longer within the limits of the [patent]
monopoly’ and instead becomes the ‘private,
individual property’ of the purchaser. If the
patentee negotiates a contract restricting
the purchaser’s right to use or resell the item,
it may be able to enforce that restriction as
a matter of contract law, but may not do so
through a patent infringement lawsuit.
This Court accordingly has long held that, even
when a patentee sells an item under an express,
otherwise lawful restriction, the patentee does
not retain patent rights in that product.
The Patent Act gives patentees a limited exclusionary power, and exhaustion extinguishes
that power. A purchaser has the right to use,
sell, or import an item because those are the
rights that come along with ownership, not
because it purchased authority to engage in
those practices from the patentee.
An authorized sale outside the United States,
just as one within the United States, exhausts
all rights under the Patent Act. The question
about international exhaustion of intellectual
property rights has arisen in the context of
copyright law. [Kirtsaeng v. John Wiley & Sons,
Inc., 568 U. S. 519.]
Applying patent exhaustion to foreign sales
is just as straightforward. Patent exhaustion,

9.

The extracts were taken from the
syllabus or summary of the case.

93

CASEBOOK ON IP ENFORCEMENT

too, has its roots in the antipathy toward
restraints on alienation, and nothing in the
Patent Act shows that Congress intended
to confine that principle to domestic sales.
Differentiating between the patent exhaustion
and copyright first sale doctrines would also
make little theoretical or practical sense. The
territorial limit on patent rights is no basis for
distinguishing copyright protections; those do
not have extraterritorial effect either.
Exhaustion is a distinct limit on the patent
grant, which is triggered by patentee’s decision to give a patented item up for whatever
fee it decides is appropriate. The patentee
may not be able to command the same
amount for its products abroad as it does in
the United States. But the Patent Act does
not guarantee a particular price. Instead, the
Patent Act just ensures that the patentee
receives one reward—of whatever it deems
to be satisfactory compensation—for every
item that passes outside the scope of its
patent monopoly.
[However], a sale abroad does not exhaust
a patentee’s rights when the patentee had
nothing to do with the transaction. That just
reaffirms the basic premise that only the
patentee can decide whether to make a sale
that exhausts its patent rights in an item.
Exhaustion occurs because allowing patent
rights to stick to an already-sold item as it
travels through the market would violate the
principle against restraints on alienation. As a
result, restrictions and location are irrelevant
for patent exhaustion; what matters is the
patentee’s decision to make a sale.
BRITISH LEYLAND MOTOR CORPORATION v.
ARMSTRONG PATENT CO LTD [1986] AC 577:

reconstruction will constitute the manufacture
of a new and infringing product.
There is, in my view, no inconsistency between,
on the one hand, allowing patent rights to be
exercised to prevent the reproduction of an
article covered by the patent and, on the other
hand, not allowing copyright to be exercised
in derogation of grant to prevent the reproduction of an article which is not covered by
the copyright.
CANON KABUSHIKI KAISHA v. GREEN CARTRIDGE
CO (HONG KONG) LTD [1997] AC 728:
Their Lordships would observe that the
concept of a license, namely something which
‘makes an action lawful, which without it had
been unlawful’ is not really applicable to the
repair of a patented article. Because repair
is by definition something which does not
amount to the manufacture of the patented
article, it is not an infringement of the monopoly conferred by the patent. It cannot, therefore,
be an unlawful act and needs no special
license to make it lawful, unless as part of a
general implied license to use the patented
product at all, which is sometimes used to
explain why mere use does not infringe the
patentee’s monopoly. But this is perhaps
better regarded as a consequence of the
exhaustion of the patentee’s rights in respect
of the particular article when it is sold.
19. Bolar exception: It has become the norm to allow
some experimental use of patents by third parties
without the consent of the patentee. One of these is to
permit someone to prepare a dossier for the registration of a drug before the expiry of the patent. This is
known as the Bolar exception after the U.S. case of
Roche Pharmaceuticals v Bolar10 and the subsequent
legislative measures.

There are substantial differences between
patent law and copyright law in relation to repairs. 20. Compulsory licenses: Articles 30 and 31 of the
First, a patent for an invention is only infringed, TRIPS Agreement permit member states to provide
for present purposes, where the invention is limited exceptions to the exclusive rights conferred by
a product, by a person who ‘makes’ or ‘uses’ a patent. This is often provided for through the grant
the product without the consent of the propri- of compulsory licenses. The grant of exceptions is
etor of the patent. Where therefore a patented
product is sold for use with the consent of the
proprietor, repair of the patented product will not
10. Roche Products v. Bolar Pharmaceutical,
733 F.2d 858 (Fed. Cir. 1984).
constitute an infringement; repair amounting to
94

PATENT PRINCIPLES

subject to conditions, namely (a) the exceptions may
not unreasonably conflict with a normal exploitation
of the patent; (b) they may not unreasonably prejudice
the legitimate interests of the patent owner, taking
account of the legitimate interests of third parties; and
(c) the requirements of Article 31 must be complied
with. These include matters such as that authorization must be considered on its individual merits, use
must be authorized predominantly for the supply of
the domestic market (there is an exception in respect
of pharmaceuticals for certain countries), the rights
holder must be paid adequate remuneration and the
legal validity of any decision relating to the authorization of such use shall be subject to judicial or some
other independent review.

95

PATENT INFRINGEMENT

Chapter 11
Patent infringement
A. Introduction

98

B. Primary rules of
interpretation

100

C. Equivalence

101

D. Purposive construction

101

E. New approach?

103

F. Japanese approach

104

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CASEBOOK ON IP ENFORCEMENT

‘In patent litigation an application of Murphy’s Law
has special significance: if a word or sentence is
capable of two interpretations, the reader will choose
the wrong one.’1

deals with the breadth of the claim: would a pH of
4,9 fall within the scope of the claim?
• Last: are all the integers essential? For instance,
if the defendant omits a buffering agent, is it
still infringement?

A. Introduction

4. The conventional answers:

1. Infringement and claim interpretation: Infringement of
a patent depends on the meaning of the claim alleged
to have been infringed. In other words, the claims must
be construed to determine their scope. Interpretation
also performs an important role when the validity of
claims is in issue.

AZUKO PTY LTD v. OLD DIGGER PTY LTD [2001]

2. All the essential integers must be taken before there
can be an infringement of the claim: The basic rule of
patent infringement is that the infringer must have taken
all the integers of a claim properly interpreted. However,
because courts dislike technicalities and frown on
immaterial alterations or omissions to escape liability
for infringement, different doctrines have developed
that in effect extend the patentee’s monopoly beyond
the literal wording of the claim.
3. Problems with interpretation: The hypothetical claim
mentioned previously can be used to illustrate the
problems. It reads:
(a) A dentifrice [toothpaste] consisting of (b) a
polishing agent, (c) a water-soluble fluoridecontaining compound which yields fluoride
ions in aqueous solution, (d) a buffering agent,
(e) the dentifrice being such that its pH is
from 5 to 6.
Four problems can arise with its interpretation.
• The first is one of meaning. A dispute may, for
instance, arise in relation to the meaning of the
term ‘polishing agent,’ and whether the defendant’s
product contains a polishing agent within the meaning of the term as used in the claim.
• The second relates to equivalents. The defendant
may use a chemical, which is equivalent to fluoride, and the question will then be whether the
claim is limited to fluoride or whether it extends
to equivalents.
• The third problem, which is related to the second,

1.

98

Monsanto Company v MDB Animal Health (Pty) Ltd
(formerly MD Biologics CC) [2001] ZASCA 4 par. 1.

FCA 1079:
Infringement requires that all integers of the
claim be taken, with the exception of the
substitution of a mechanical equivalent of an
inessential integer. Populin v HB Nominees
(1982) 41 ALR 471 [held] that –
the patentee must show that the defendant has taken each and every one of
the essential integers of the patentee’s
claim. Therefore if, on its true construction, the claim in a patent claims a
particular combination of integers and
the alleged infringer of it omits one of
them he will escape liability.
The invention must be defined with precision
and with clarity in the claims. [The] application
of this principle [of the functional equivalent]
is limited to two possible situations:
where the alleged infringing article
possesses a mechanical equivalent
of an inessential integer; or
where upon a too literal construction of
an integer of a claim, the alleged infringing device would escape infringement.
In both these situations, it is necessary to
determine first whether or not the alleged
infringing article possesses each and every
integer of the claim. In considering the [first]
question of a mechanical equivalent of an
inessential integer, an assessment is made of
the ‘essentiality’ of the integers taken or omitted by the alleged infringing device. But this
is a very narrow class of case. Infringement
was not demonstrated merely by showing the
performance of substantially similar functions
by the apparatus.

PATENT INFRINGEMENT

IMPROVER CORPORATION AND ANOTHER v.
RAYMOND INDUSTRIAL AND ANOTHER [1990]

HKCA 312:2
It is a well-known rule of patent law that no
one who borrows the substance of a patented
invention can escape the consequences of
infringement by making immaterial variations. The question is whether the infringing
apparatus is substantially the same as the
apparatus said to be infringed. It is also clear
that there will be an infringement of a patent
even if the infringement is an improvement.
If an inventor takes an essential integer of
somebody else’s patent and simply makes it
work better by some alteration but does not
change the way in which that integer basically
operates, he can patent his own invention but
it is what has been referred to by [counsel] as
a ‘nesting’ patent and if his device is produced
and sold he must pay royalties to the other
patentee. The alleged infringing patent can
perform the same task but it must, in at least
one essential respect, do it in a different way
if it is to escape liability.
5. Interpretation is for the court: Interpretation is not a
‘jury question.’ This means that it is not a factual issue
but a legal one. Expert evidence has a limited role in
relation to patent interpretation. As the German Federal
Court said, the granted patent claim and its subject
matter have a normative character and meaning must,
therefore, be determined as a question of law.3
PFIZER CANADA INC v. CANADA (MINISTER OF
HEALTH) 2005 FC 1725:
The Court construes the claim. It is not the
function of an expert witness to construe the
claim. As the [Canadian] Supreme Court said:
The role of the expert was not to interpret the patent claims but to put the
trial judge in the position of being able
to do so in a knowledgeable way.

2.
3.

The Court may be assisted by expert witnesses in order to understand the context of the
invention described and the particular meaning of terms used in the patent. The expert,
however, is not to displace the Court in the role
of the person who is to interpret the claims. In
Whirlpool the Supreme Court stated:
The key to purposive construction
is, therefore, the identification by
the court, with the assistance of the
skilled reader, of the particular words
or phrases in the claims that describe
what the inventor considered to be the
‘essential’ elements of his invention.
SACHTLER GMBH & CO KG v. RE MILLER PTY LTD

[2005] FCA 788:
Evidence can be given by experts on the
meaning which those skilled in the art would
give to technical or scientific terms and
phrases and on unusual or special meanings given by such persons to words which
might otherwise bear their ordinary meaning.
Where the patent contains technical material, the Court must, by evidence, be put in a
position of a person of the kind to whom the
patent is addressed, a person acquainted
with the surrounding circumstances of the
state of the art at the relevant time. However,
if the evidence does not establish that such
a technical meaning exists words used in
a patent specification should be given their
ordinary meaning.
The evidence of the skilled reader is not determinative of the construction of the document.
It is evidence of how a skilled reader would
have read the document at the relevant time.
It is then for the Court to construe the document, giving such weight to the evidence as
it sees fit.
The construction of the specification is for the
Court, not for the expert witness.

See also SNE Engineering Co Ltd v. Hsin Chong
Construction Co Ltd And Another [2014] HKCFI 552.
BGH, Judgment of 31 March 2009,
Strassenbaumaschine Case X ZR 95/05.

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6. Interpretation begins with the words used:

B. Primary rules of interpretation

FABIO PERINI SPA v. LPC GROUP PLC & ORS [2010]

8. Primary rules of interpretation:6 These have often been
formulated and reformulated. Here is a random sample.7

EWCA Civ 525:
The process of construction has to start
somewhere, and when the ultimate issue is
the interpretation of a common English word,
it is often helpful to begin with its ordinary
meaning before one turns to its documentary
context and other relevant factors. After all,
issues of interpretation (whether arising in
connection with patents or any other commercial documents) often require an intracranial
iterative process, involving multiple factors,
including natural meaning, documentary
context, technical considerations, commercial context, and business common sense.
Interpretation takes place without any regard
to the infringing product or process. A patent
has one meaning only, irrespective of whether
validity or infringement has to be determined.4
7. The interpretation must be logical and make technical sense:
YKK CORPORATION v. OPTI PATENT, FORSCHUNGS
UND FABRIKATIONS AG BOARDS OF APPEAL
OF THE EUROPEAN PATENT OFFICE Case no T

0190/99 - 3.2.4:

FREE WORLD TRUST V. ÉLECTRO SANTÉ INC.,

[2000] 2 SCR 1024, 2000 SCC 66:
The appeal thus raises the fundamental issue of
how best to resolve the tension between ‘literal
infringement’ and ‘substantive infringement’ to
achieve a fair and predictable result. There has
been considerable discussion of this issue in
Canada and elsewhere, which I will discuss
briefly in support of the following propositions:
(a) The Patent Act promotes adherence to
the language of the claims.
(b) Adherence to the language of the claims, in
turn, promotes both fairness and predictability.
(c) The claim language must, however, be
read in an informed and purposive way.
(d) The language of the claims thus construed
defines the monopoly. There is no recourse
to such vague notions as the ‘spirit of the
invention’ to expand it further.
(e) The claims language will, on a purposive
construction, show that some elements of the
claimed invention are essential while others are
non-essential. The identification of elements
as essential or non-essential is made:

The board adds that the skilled person when
considering a claim should rule out interpretations which are illogical or which do not
make technical sense. He should try, with
synthetical propensity i.e. building up rather
than tearing down, to arrive at an interpretation of the claim which is technically sensible
and takes into account the whole disclosure of
the patent (Article 69 EPC). The patent must
be construed by a mind willing to understand
not a mind desirous of misunderstanding.5

(i) on the basis of the common knowledge
of the worker skilled in the art to which
the patent relates;
(ii) as of the date the patent is published;
(iii) having regard to whether or not it was
obvious to the skilled reader at the time
the patent was published that a variant
of a particular element would not make a

6.

4.

5.

100

Stauffer Chemical Company and Another v. Safsan
Marketing and Distribution (85/86) [1986] ZASCA 78;
Whirlpool Corp. v. Camco Inc. [2000] 2 S.C.R. 1067.
The statement that a patent ‘must be read by
a mind willing to understand, not by a mind
desirous of misunderstanding’ must have
been taken from Lister v. Norton Brothers and
Co. (1886) 3 RPC199 (Ch D) per Chitty J.

7.

For an exposition by a U.K. court of the German
approach, see Celltech R & D Ltd. v. Medimmune
Inc [2004] EWHC 1124 (Patents); and one of U.S.
law, see Celltech Chiroscience Ltd. v. Medimmune
Inc [2002] EWHC 2167 (Patents). These cases
must now be read in the light of Eli Lilly v Actavis
UK Ltd & Ors [2017] UKSC 48 discussed later on.
See also Ranbaxy Australia Pty Ltd v. WarnerLambert Company LLC(No 3) [2006] FCA 1797;
Monsanto Company v. MDB Animal Health (Pty)
Ltd (formerly MD Biologics CC) [2001] ZASCA 4.

PATENT INFRINGEMENT

difference to the way in which the invention works; or
(iv) according to the intent of the inventor,
expressed or inferred from the claims,
that a particular element is essential
irrespective of its practical effect;
(v) without, however, resort to extrinsic
evidence of the inventor’s intention.

interpreted purposively or realistically, with
the understanding of persons with practical
knowledge and experience of the kind of
work in which the invention was intended to
be used and in the light of what was generally known by such persons at the date of the
patent, which date by our law is the priority
date of the claim.

(f) There is no infringement if an essential
element is different or omitted. There may
still be infringement, however, if non-essential
elements are substituted or omitted.

Obviously, the fact that a claim incorporates
a particular feature does not alone suffice to
make that feature an essential one. Otherwise,
the problem would not arise. In general, if
the feature is, in fact, essential to the working of the claimed invention, then it must be
regarded as an essential feature.

GLAXOSMITHKLINE INC. v. CANADA (ATTORNEY
GENERAL), 2004 FC 1725:
A dictionary approach is not to be used
in construing claims. This would be using
evidence from outside the four corners of
the specification. Furthermore, looking at the
claims of a patent using a dictionary approach
is equivalent to looking at the words through
the eyes of a grammarian or etymologist,
rather than through the eyes of and with the
knowledge of a person skilled in the art.
(The judgment contains a useful annexure setting out
rules of construction.)

C. Equivalence

On the other hand, a patentee may indicate
in his specification, either expressly or by
implication, that he regards a particular integer as essential; and in that event, it must be
treated as essential and it matters not that
it may not be essential to the working of the
invention. Where, however, a feature is not
essential to the working of the invention and
the patentee has not indicated that he regards
it as an essential integer, then in general it
may be treated as unessential and an alleged
infringer may be held to have infringed the
claim notwithstanding that his product or
process does not incorporate that feature or
substitutes an equivalent for it.

9. Doctrine of equivalence: The basis of the doctrine
(also called the pith and marrow doctrine) is that essen- D. Purposive construction
tial integers cannot be omitted or replaced (by equivalents) without infringing the claim. ‘Equivalents’ are 10. Purposive construction: The so-called doctrine of
usually mechanical equivalents; chemical equivalents purposive construction is simply an aid to determine
are rare. The classic (Catnic) example relates to a claim the scope of the claim as a matter of construction.
that required that one structure had to be ‘vertical.’ The
question that arose was whether vertical meant the NAMPAK PRODUCTS LTD AND ANOTHER v.
strictly mathematical 90 degrees from the horizontal MAN-DIRK (PTY) LTD (162/97) [1999] ZASCA 21;
or could include something that was ‘substantially’ [1999] 2 All SA 543 (A):
vertical. Both performed the same function.
The concept of a purposive construction was
STAUFFER CHEMICAL COMPANY AND ANOTHER v.
used as an interpretive aid in these cases in
SAFSAN MARKETING AND DISTRIBUTION (85/86)
different ways. In some, it is employed as a
[1986] ZASCA 78:
phrase of general application in the construction of claims connoting an approach based
To ascertain what are and what are not the
upon the skilled addressee’s knowledge of the
essential features or integers of a claimed
art (as opposed to a purely verbal analysis).
invention the specification must be read and
In others, it is invoked as an interpretive aid
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CASEBOOK ON IP ENFORCEMENT

where the alleged infringer was considered to
have appropriated what has been called the
‘pith and marrow’ of the invention and merely
substituted a mechanical equivalent for an
inessential part. It is necessary to point out
that in all of the above cases the Court was
concerned to establish whether the particular
features of the claimed invention taken by the
alleged infringer represented all the essential
features of the claim. This, in the final analysis,
remains a pure question of construction.
11. European Patent Convention (EPC) and Its Protocol:8
The EPC and Its Protocol apply to a few countries,
particularly the United Kingdom, Germany, the
Netherlands, Italy, France and Spain, and seeks to
unify the approach to patent infringement between its
member states. Judgments from the United Kingdom,
nowadays, are based on these documents and should
be read in that light.

tion for the patent proprietor with a reasonable
degree of legal certainty for third parties.
Article 2 Equivalents: For the purpose of determining the extent of protection conferred by
a European patent, due account shall be
taken of any element which is equivalent to
an element specified in the claims.
12. ‘Improver’ questions: U.K. courts interpreted the
Protocol (before the introduction of Article 2) as imposing a three-stage approach to claim construction. This
was the leading case in the United Kingdom:9
IMPROVER CORP v. REMINGTON CONSUMER
PRODUCTS [1990] FSR 181:
The claim required the use of a curved spring. The infringer used a curved rubber rod with slats. Both performed
the same function. Courts from different jurisdictions
came to different conclusions on infringement.

Article 69(2) of the Convention provides that:
[t]he extent of the protection conferred by a
European patent … shall be determined by
the claims’, but that nevertheless ‘the description and drawings shall be used to interpret
the claims.
The Protocol on the Interpretation of Article 69 provides
as follows:
Article 1 General principles: Article 69 should
not be interpreted as meaning that the extent
of the protection conferred by a European
patent is to be understood as that defined by
the strict, literal meaning of the wording used in
the claims, the description and drawings being
employed only for the purpose of resolving
an ambiguity found in the claims. Nor should
it be taken to mean that the claims serve only
as a guideline and that the actual protection
conferred may extend to what, from a consideration of the description and drawings by a
person skilled in the art, the patent proprietor
has contemplated. On the contrary, it is to be
interpreted as defining a position between
these extremes which combines a fair protec-

The language should be given a ‘purposive’
and not necessarily a literal construction. If
the issue was whether a feature embodied
in an alleged infringement which fell outside
the primary, literal or a-contextual meaning of
a descriptive word or phrase in the claim (a
variant) was nevertheless within its language
as properly interpreted, the court should ask
itself the following three questions:
• Does the variant have a material effect upon
the way the invention works? If yes, the
variant is outside the claim. If no –
• Would this (i.e. that the variant had no material effect) have been obvious at the date of
publication of the patent to a reader skilled
in the art? If no, the variant is outside the
claim. If yes –
• Would the reader skilled in the art nevertheless have understood from the language of
the claim, that the patentee intended that
strict compliance with the primary meaning
was an essential requirement of the invention? If yes, the variant is outside the claim.

9.

8.

102

http://www.epo.org/law-practice/legal-texts/epc.html.

Importantly, followed in Kirin-Amgen Inc
& Ors v. Hoechst Marion Roussel Ltd &
Ors [2004] UKHL 46. The result, however,
differed from jurisdiction to jurisdiction.

PATENT INFRINGEMENT

E. New approach?
13. Change of direction: In Eli Lilly v. Actavis UK Ltd & Ors
[2017] UKSC 48, the U.K. Supreme Court reconsidered
the approach to interpretation and equivalents as set
out in the earlier House of Lords case of Kirin-Amgen
Inc & Ors v. Hoechst Marion Roussel Ltd & Ors [2004]
UKHL 46. It is important to restate that the Eli Lilly case
is based on the European Patent Convention, and the
judgment does not reflect the conventional approach
set out earlier as followed by courts in common-law
countries – and the Convention does not apply to them.10
Eli Lilly formulated these questions that arise if the
infringer has not been infringed on a literal meaning of
the claim but used a ‘variant’: (i) does the variant infringe
any of the claims as a matter of ‘normal’ (non-literal,
purposive) interpretation, and if not, (ii) does the variant
nonetheless infringe because it varies from the invention in a way or ways that is or are immaterial? If the
answer to either issue is ‘yes,’ there is an infringement;
otherwise, there is not. In other words, there is not a
single conflated or compound issue of interpretation.
ELI LILLY v. ACTAVIS UK LTD & ORS [2017] UKSC 48:
In a nutshell, the rival contentions are these.
Lilly [the patentee] argues that the Actavis
products infringe the Patent because they
are medicaments to be used as a treatment
for cancer consisting of pemetrexed diacid,
or a pemetrexed salt, with vitamin B12, which
represents the essence of the teaching and
claim of the Patent. By contrast, Actavis [the
defendant] argues that their products do not
infringe because the claims of the Patent are
limited to a specific pemetrexed salt, namely
pemetrexed disodium, and the Actavis products contain either pemetrexed diacid or
different pemetrexed salts.
More specifically, two points appear to be
clear from the Protocol. The first, which can
be deduced from article 1, is that the scope
of protection afforded to a patentee is not to
be limited by the literal meaning of the claims.

10.

Nampak Products Ltd and Another v. Man-Dirk
(Pty) Ltd (162/97) [1999] ZASCA 21; [1999] 2 All SA
543 (A); SNE Engineering Co Ltd v. Hsin Chong
Construction Co Ltd And Another [2014] HKCFI 552.

Secondly, it is apparent from article 2 that there
is at least potentially a difference between interpreting a claim and the extent of the protection
afforded by a claim, and, when considering the
extent of such protection, equivalents must be
taken into account, but no guidance is given as
to precisely what constitutes an equivalent or
how equivalents are to be taken into account.
Any patent system must strike a balance
between the two competing factors referred
to at the end of article 1 of the Protocol, namely
‘a fair protection for the patent proprietor [and]
a reasonable degree of legal certainty for third
parties’. The balance cannot be struck on an
ad hoc case-by-case basis without any guiding
principles, as that would mean that there was
no legal certainty. On the other hand, striking
the balance by adopting a normal approach to
interpretation would risk depriving patentees
of a proper measure of protection. But, if one
departs from ordinary language, it is necessary
to have some guidance or to draw some lines.
In my view, a problem of infringement is best
approached by addressing two issues, each
of which is to be considered through the eyes
of the notional addressee of the patent in suit,
i.e. the person skilled in the relevant art. Those
issues are: (i) does the variant infringe any of
the claims as a matter of normal interpretation;
and, if not, (ii) does the variant nonetheless
infringe because it varies from the invention
in a way or ways which is or are immaterial? If
the answer to either issue is ‘yes’, there is an
infringement; otherwise, there is not.
I have considerable difficulties with the notion
that there is a single conflated, or compound,
issue, and, even if that notion is correct, that that
issue raises a question of interpretation. Indeed,
in my view, to characterize the issue as a single
question of interpretation is wrong in principle,
and unsurprisingly, therefore, can lead to error.
Turning to the two issues identified [...] issue (i), as
already mentioned, involves solving a problem
of interpretation, which is familiar to all lawyers
concerned with construing documents. While
the answer in a particular case is by no means
always easy to work out, the applicable principles
are tolerably clear and were recently affirmed by
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CASEBOOK ON IP ENFORCEMENT

Lord Hodge in Wood v Capita Insurance Services
Ltd, [2017] UKSC 24 paras 8 to 15. In the present
case, there is no doubt that, according to normal
principles of interpreting documents, the Actavis
products do not infringe the Patent. According
to normal principles of interpreting documents,
then, this would be the end of the matter.
However, the second issue poses more difficulties of principle: what is it that makes a
variation ‘immaterial’? While the language of
some or all of the questions may sometimes
have to be adapted to apply more aptly to the
specific facts of a particular case, the three
reformulated questions are as follows:
i) Notwithstanding that it is not within the
literal meaning of the relevant claim(s)
of the patent, does the variant achieve
substantially the same result in substantially the same way as the invention, i.e. the
inventive concept revealed by the patent?
ii) Would it be obvious to the person
skilled in the art, reading the patent at the
priority date, but knowing that the variant
achieves substantially the same result as
the invention, that it does so in substantially the same way as the invention?
iii) Would such a reader of the patent
have concluded that the patentee nonetheless intended that strict compliance
with the literal meaning of the relevant
claim(s) of the patent was an essential
requirement of the invention?
In order to establish infringement in a case
where there is no literal infringement, a patentee would have to establish that the answer to
the first two questions was ‘yes’ and that the
answer to the third question was ‘no’.

F. Japanese approach
14. Japanese approach: The courts of Japan have a
somewhat different approach.
BALL SPLINE BEARING CASE Japan Supreme Court
Feb 4, 1998:
In a patent infringement case, when deciding
whether a product manufactured or sold by
104

an accused infringer or a process employed
by same falls within the technical scope of a
patented invention, the technical scope of the
patented invention must be determined based
on the invention recited in the patented claim.
In a case where the invention recited in the
patented claim includes a part that is different
from the accused device, the accused device
is considered as not falling within the technical scope of the patented invention. In such
case, however, it is reasonable to deem the
accused device an equivalent to the invention
recited in the patented claim, and therefore to
fall within the technical scope of the patented
invention, if the following five tests are met:
Positive tests:
Test 1: Such different part is not an
essential part of the patented invention (non-essentiality).
Test 2: Even if such different part
is interchanged with a part of the
accused device, the objects of the
patented invention can be achieved,
and the same advantages attained by
the accused device (interchangeability).
Test 3: Such interchange would have
been easily conceived by a person
skilled in the art at the time of manufacturing the accused device (ease
of interchangeability).
Negative tests:
Test 4: The accused device was not
the same as publicly known art at the
time of filing the application or could not
have been easily conceived by a person
skilled in the art based on the publicly
known art at the time of filing the application (exclusion of publicly known art).
Test 5: There is no special circumstance such as where the accused
device was intentionally excluded
during the prosecution of the patent
application (file wrapper estoppel).

INDUSTRIAL DESIGNS

Chapter 12
Industrial designs
A. Introduction

106

B. Visual assessment

108

C. Exclusions

113

105

CASEBOOK ON IP ENFORCEMENT

A. Introduction
1. The Paris Convention:1 The Paris Convention recognizes industrial designs as ‘industrial property’ without
defining it. Member countries are obliged to protect
industrial designs and to apply the principle of national
treatment to nationals of the other member countries.
The protection of industrial designs may not be subject
to forfeiture due to, for instance, non-working. In this
respect, they differ from patents.
The Convention also refers to utility models without
defining them. According to Japanese law, for instance,
a utility model is a device that is industrially applicable
and that relates to the shape or construction of the
device, and ‘device’ is in turn defined as the creation
of technical ideas by which a law of nature is used.
However, because there is no convention obligation
to recognize utility models, the issue is not discussed.
2. The TRIPS Agreement:2 The protection of industrial
designs is also required by the TRIPS Agreement, but
it is silent about utility models. It lays down the requirements for the validity and the minimum term of protection of industrial designs without, once again, defining
them. There is, in addition, a special provision relating
to textile designs.
Articles 25 and 26 provide as follows:

or substantially a copy, of the protected design when
such acts are undertaken for commercial purposes.
• Limited exceptions to the protection of industrial
designs are permitted, provided that they do not
unreasonably conflict with the normal exploitation
of protected industrial designs and do not unreasonably prejudice the legitimate interests of the
owner of the protected design, taking account of
the legitimate interests of third parties.
• The duration of protection available must amount
to at least 10 years.
3. Definition:3 In general terms, a design consists of a
shape, configuration and/or ornamentation (a) applied
to an article (b) with features that are judged visually. It
it does not matter whether or not the design has any
aesthetic quality.
To be valid, a design must be (a) new and/or (b) original
(i.e., independently created) and (sometimes) have
individual character.
A design is considered to have individual character
if the overall impression it produces on the informed
user differs from the overall impression produced on
such a user by any design that has been made available to the public.
It may not involve a method or principle of construction, and any feature that is necessitated solely by the
function that the article is intended to perform is not
entitled to design protection.

• Members must provide for the protection of independently created industrial designs that are new
or original.
• Designs are not new or original if they do not signifi- 4. Registration: Design rights are usually dependent
cantly differ from known designs or combinations upon registration and, in that regard, are similar to
of known design features.
patent rights. As a result, infringement of a design right
• Protection does not extend to designs dictated differs from copyright infringement: copyright infringeessentially by technical or functional considerations. ment requires that the second (infringing) work must
• The requirements for securing protection for textile have been derived (copied) from the other, while this
designs, in particular in regard to any cost, exami- is not required in the case of design infringement – the
nation or publication, may not unreasonably impair
the opportunity to seek and obtain such protection.
• The owner of a protected industrial design must
3. Council Regulation (EC) No 6/2002 of 12 December
have the right to prevent third parties not having the
2001 on Community Designs, amended by
owner’s consent from making, selling or importing
Council Regulation (EC) No 1891/2006 of 18
December 2006. See PMS International Group Plc
articles bearing or embodying a design that is a copy,

1.
2.

106

http://www.wipo.int/export/sites/www/
treaties/en/documents/pdf/paris.pdf.
https://www.wto.org/english/
docs_e/legal_e/27-trips.pdf.

v. Magmatic Ltd [2016] UKSC 12; U.K. Registered
Designs Act 1949 (Consolidated version);
U.S. design patents: https://www.uspto.gov/
patents-getting-started/patent-basics/typespatent-applications/design-patent-applicationguide#def; Australia: Keller v. LED Technologies
Pty Ltd [2010] FCAFC 55, LED Technologies Pty
Ltd v. Elecspess Pty Ltd [2008] FCA 1941.

INDUSTRIAL DESIGNS

only issue is one of similarity, irrespective of independent creation.
Some systems recognize unregistered design rights,
but the term of protection is substantially shorter than
that of registered design rights.4
5. The overlap between designs and copyright: Many
works that are entitled to design rights are, simultaneously, entitled to copyright, something recognized in
the Community Designs Regulation.5
This has given rise to practical problems, because it
means, for instance, that spare or body parts of motor
vehicles may be protected for a minimum of 50 or 70
years, something many laws consider to be unacceptable.
The law in Singapore,6 for example, states that the
making of any useful article in three dimensions does
not infringe the copyright in an artistic work if, when
the useful article or reproduction is made, the artistic
work has been industrially applied at any time before
the useful article or reproduction is made. An artistic
work is applied industrially if, for instance, more than
50 reproductions in three dimensions are made of it,
for the purposes of sale or hire. A ‘useful article’ means
an article has an intrinsic utilitarian function that is not
merely to portray the appearance of the article or to
convey information.
The South African Copyright Act,7 similarly, provides
that the copyright in an artistic work of which threedimensional reproductions were made available, whether inside or outside the country, to the public by or with
the consent of the copyright owner are not infringed if
any person without the consent of the owner makes or
makes available to the public three-dimensional reproductions or adaptations of the authorized reproductions,
provided these reproductions primarily have a utilitarian
purpose and are made by an industrial process.
6. The overlap between trademarks and designs:
Because trademarks may consist of, for instance,
shapes or containers, there is necessarily some overlap

4.
5.
6.
7.

Cf. Ifejika v. Ifejika [2015] EWCA Civ 873.
Article 96(2) of Council Regulation
(EC) Community Designs.
http://www.wipo.int/wipolex/en/details.jsp?id=6132.
http://www.wipo.int/wipolex/en/details.jsp?id=4067.

between the two areas. Because the term of protection of a trademark may be renewed indefinitely, while
the term of protection of a design may not, they have
different commercial values. The point is, however,
that a trademark may destroy the novelty of a design.
BEIFA GROUP CO. LTD v. OHIM AND SCHWANSTABILO SCHWANHAÜßER GMBH & CO. KG General
Court, 12 May 2010, T-148/08, ECR, 2010, II-1681 [EU]:
It should be borne in mind that the proprietor of an earlier [trade]mark – whether a
Community mark or a mark registered in a
Member State – has the right to prevent the
use of a subsequent Community design both
where use is made in that design of a sign
which is identical to the earlier mark and the
goods or services covered by the design are
identical to those covered by the earlier mark,
and where use is made in the Community
design of a sign bearing such similarity to the
earlier mark that, in view also of the fact that
the goods or services covered by the mark
are identical or similar to those covered by
the design, there is a likelihood of confusion
on the part of the public.
Given that the proprietor of an earlier mark
– whether a Community mark or a mark registered in a Member State – has the right to
prevent the use of a subsequent Community
design in which use is made of a sign which
is either identical to the earlier mark or similar to it, it is inconceivable that, in adopting
Article 25(1)(e) of Regulation No 6/2002, the
Community legislature intended to allow such
a proprietor to submit an application for a
declaration of invalidity of the design only
where use was made in that design of a sign
identical to the earlier mark, and not to allow
such an application to be submitted where
use was made in the design of a sign so similar
that there would be a likelihood of confusion
on the part of the relevant public.
Moreover, the proprietor of a mark – whether
a Community mark or a mark registered in a
Member State – cannot rely on the provisions
referred to […] above to prevent the use of a
Community design which has been registered
earlier and in which use is made of a sign
identical or similar to the mark, since the
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CASEBOOK ON IP ENFORCEMENT

proprietor of the Community design is able
to defend itself against such a prohibition
by applying for a declaration of invalidity in
respect of the subsequent mark in question,
where necessary, by way of counterclaim.
7. Design and trademark infringement differ: The question of design infringement involves a determination
of whether the respondent’s products embody the
registered design or a design not substantially different from the registered design. The search is not for
differences but for substantial differences. This test
is not a trademark infringement test, and the issue is
not whether or not there is confusion or deception. It
would, therefore, be wrong to use concepts developed
in a trademark context, such as imperfect recollection.
The design test is closer to the patent infringement test.
HONEYWELL ANALYTICS LIMITED v. HEE JUNG
KIM Case R 609/2006-3 (OHIM) [EU]:
The appellant’s argument that a registered
design cannot be assumed to exist for the
purposes of distinguishing goods and services, is not pertinent. It is true that the essential
purpose of a design is not to distinguish the
products or services of an undertaking from
those of other undertakings. However, that
does not mean that in a commercial context,
when applied to products, their packaging
and get up, or when used in advertising,
the contested RCD [registered Community
design] may not be perceived as a sign by
the relevant public.
An assessment can, therefore, be made of
whether there is a risk that the relevant public
might believe that the goods or services in
question come from the same undertaking or,
as the case may be, from economically-linked
undertakings, within the meaning of Article
5(1)(b) TMD [Trademark Directive].
Within the meaning of that article, the assessment of the similarity of signs requires a global
appreciation of their visual, aural or conceptual similarity, based on the overall impression
they give, bearing in mind, in particular, their
distinctive and dominant components.

identical. Conceptually, the signs are identical.
In their overall impression, the signs are similar.
It is conceivable that when the public encounters the logo, the subject of the contested
RCD applied to products, their packaging
or their get up, it will perceive that logo as
an indication of the commercial origin of the
products in question and not as a pure embellishment. Consequently, the contested RCD
is liable to jeopardize the guarantee of origin
which constitutes the essential function of
the respondent’s trademark. The presence
of the other elements in the contested RCD
will not prevent the likelihood of the relevant
public in the relevant Member States taking
the products marketed with the appellant’s
logo as a line of products originating from
the respondent undertaking or an undertaking economically connected to the respondent undertaking.

B. Visual assessment
8. Designs are assessed visually:8
PROCTER & GAMBLE COMPANY v. RECKITT
BENCKISER (UK) LTD [2007] EWCA Civ 936:9
The most important things in a case about
registered designs are:
• The registered design;
• The accused object;
• The prior art.
And the most important thing about each of
these is what they look like. Of course, parties
and judges have to try to put into words why
they say a design has ‘individual character’ or
what the ‘overall impression produced on an
informed user’ is. But ‘it takes longer to say than
to see’ as I observed in Philips v Remington
[1998] RPC 283 at 318. And words themselves
are often insufficiently precise on their own.

8.

The registered design and the earlier mark are
visually similar. Phonetically, the marks are
108

9.

PMS International Group Plc v.
Magmatic Ltd [2016] UKSC 12.
Quoted with approval in PMS International
Group Plc v. Magmatic Ltd [2016] UKSC 12.

INDUSTRIAL DESIGNS

It follows that a place for evidence is very
limited indeed. By and large, it should be
possible to decide a registered design case
in a few hours. The evidence of the designer,
e.g. as to whether he/she was trying to make,
or thought he/she had made, a breakthrough,
is irrelevant. The evidence of experts, particularly about consumer products, is unlikely to
be of much assistance: anyone can point out
similarities and differences, though an educated eye can sometimes help a bit. Sometimes
there may be a piece of technical evidence
which is relevant – e.g. that design freedom
is limited by certain constraints. But even so,
that is usually more or less self-evident and
certainly unlikely to be controversial to the
point of a need for cross-examination still
less substantial cross-examination.

The Gorham Court then set forth the test that
has been cited in many subsequent cases:
‘[I]f, in the eye of an ordinary observer, giving
such attention as a purchaser usually gives,
two designs are substantially the same, if
the resemblance is such as to deceive such
an observer, inducing him to purchase one
supposing it to be the other, the first one
patented is infringed by the other.’ In the case
before it, the Court concluded that ‘whatever
differences there may be between the plaintiffs’ design and those of the defendant in
details of ornament, they are still the same in
general appearance and effect, so much alike
that in the market and with purchasers they
would pass for the same thing — so much
alike that even persons in the trade would be
in danger of being deceived.’

It follows that the design history of the P&G
design, and whether Reckitt copied was
irrelevant.

However, in a series of cases tracing their
origins to Litton Systems, Inc. v. Whirlpool
Corp., 728 F.2d 1423 (Fed. Cir. 1984), this court
has held that proof of similarity under the ordinary observer test is not enough to establish
design patent infringement. Rather, the court
has stated that the accused design must also
appropriate the novelty of the claimed design
in order to be deemed infringing.

EGYPTIAN GODDESS, INC. V. SWISA, INC 543 F.3d
665 (Fed. Cir. 2008):10

The starting point for any discussion of the
law of design patents is the Supreme Court’s
decision in Gorham Co. v. White (1871). That
case involved a design patent for the handles
After a review of those authorities, [...] we
of tablespoons and forks. In its analysis of claim
conclude that the point of novelty test, as a
infringement, the Court stated that the test of
second and free-standing requirement for
identity of design ‘must be sameness of appearproof of design patent infringement, is inconance, and mere difference of lines in the drawing
sistent with the ordinary observer test laid
or sketch or slight variances in configuration will
down in Gorham, is not mandated by Whitman
not destroy the substantial identity.’ Identity of
Saddle or precedent from other courts, and is
appearance, the Court explained, or ‘samenot needed to protect against unduly broad
ness of effect upon the eye, is the main test of
assertions of design patent rights.
substantial identity of design’; the two need not
be the same ‘to the eye of an expert,’ because if CLIPSAL AUSTRALIA (PTY) LTD AND ANOTHER v.
that were the test, ‘[t]here never could be piracy TRUST ELECTRICAL WHOLESALERS AND ANOTHER
of a patented design, for human ingenuity has (125/06) [2007] ZASCA 24:
never yet produced a design, in all its details,
exactly like another, so like, that an expert could
Important aspects to consider when determinnot distinguish them.’
ing the scope of the registered design protection flow from the definition of an ‘aesthetic
design’, namely that design features have to
appeal to and be judged solely by the eye.
10. For a discussion of the subject, Evan Szarenski's
First, although the court is the ultimate arbiter,
Egyptian Goddess, Inc. v. Swisa, Inc.: A Dramatic
it must consider how the design in question
Change in the Law of Design Patent? at https://
will appeal to and be judged visually by the
scholars.unh.edu/cgi/viewcontent.cgi?referer=
&httpsredir=1&article=1187&context=unh_lr.
likely customer. Secondly, this visual criterion
109

CASEBOOK ON IP ENFORCEMENT

is used to determine whether a design meets
the requirements of the Act and in deciding
questions of novelty and infringement. And
thirdly, one is concerned with those features
of a design that ‘will or may influence choice
or selection’ and because they have some
‘individual characteristic’ are ‘calculated to
attract the attention of the beholder.’ To this
may be added the statement by Lord Pearson
that there must be something ‘special, peculiar, distinctive, significant or striking’ about
the appearance that catches the eye and in
this sense appeals to the eye.
9. Eyes of the informed user:
PROCTER & GAMBLE COMPANY v. RECKITT
BENCKISER (UK) LTD [2007] EWCA Civ 936:
The ‘informed user’ test makes sense: a user
who has experience of other similar articles
will be reasonably discriminatory – able to
appreciate enough detail to decide whether a design creates an overall impression
which has individual character and whether
an alleged infringement produces a different
overall impression.
It follows that the informed user is not the
same as the ‘average consumer’ of trademark law. The informed user of design law
is more discriminating. Whilst I do not say
that imperfect recollection has no part to
play in judging what the overall impression of
design is, it cannot be decisive. I would say
that what matters is what strikes the mind of
the informed user when it is carefully viewed.
I think the Higher Provisional Court in Vienna,
in holding that P&G’s design is not infringed
by the Air-Wick product (decision of 6 th
December 2006, overruling a lower court
decision granting an interim injunction) was
right when it said:
The ‘informed user’ will, in the view of
the Appeals Court, have more extensive
knowledge than an ‘average consumer in possession of average information, awareness, and understanding’,
in particular, he will be open to design
issues and will be fairly familiar with them.
110

SAMSUNG ELECTRONICS (UK) LTD v. APPLE INC
[2012] EWCA Civ 1339:
The designs are assessed from the perspective of the informed user. The identity and
attributes of the informed user have been
discussed by the Court of Justice of the
European Union [references omitted].
i) He (or she) is a user of the product in which
the design is intended to be incorporated, not
a designer, technical expert, manufacturer
or seller;
ii) However, unlike the average consumer of
trademark law, he is particularly observant;
iii) He has knowledge of the design corpus and
of the design features normally included in the
designs existing in the sector concerned;
iv) He is interested in the products concerned
and shows a relatively high degree of attention
when he uses them;
v) He conducts a direct comparison of the
designs in issue unless there are specific
circumstances or the devices have certain
characteristics which make it impractical or
uncommon to do so.
vi) I would add that the informed user neither
(a) merely perceives the designs as a whole
and does not analyze details, nor (b) observes
in detail minimal differences which may exist.
KWANG YANG MOTOR CO LTD v. OHIM AND HONDA
GIKEN KOGYO KABUSHIKI KAISHA 9 September
2011, T-11/08 [EU]:
Therefore, in assessing the individual character of the challenged design, it must be
examined, […] whether the overall impression
that that design produces on an informed
user is different from that produced by earlier
designs […], in particular, the design relied on
by the applicant in support of the application
for a declaration of invalidity, taking account
of the degree of freedom enjoyed by the
designer when developing the design.
The informed user:
According to the case-law, an ‘informed user’
[…] is neither a manufacturer nor a seller of
the products in which the designs at issue
are intended to be incorporated or to which

INDUSTRIAL DESIGNS

they are intended to be applied. An informed
user is particularly observant and has some
awareness of the state of the prior art, that
is to say, the previous designs relating to the
product in question that had been disclosed
on the date of filing of the contested design.
Furthermore, the status of ‘user’ implies that the
person concerned uses the product in which
the design is incorporated, in accordance with
the purpose for which that product is intended.
The qualifier ‘informed’ suggests in addition
that, without being a designer or a technical
expert, the user knows the various designs
which exist in the sector concerned, possesses a certain degree of knowledge with regard
to the features which those designs normally
include, and, as a result of his interest in the
products concerned, shows a relatively high
degree of attention when he uses them.
However, that factor does not imply that the
informed user is able to distinguish, beyond
the experience gained by using the product
concerned, the aspects of the appearance of
the product which are dictated by the product’s
technical function from those which are arbitrary.
Therefore, an informed user is a person having
some awareness of the existing designs in
the sector concerned, without knowing which
aspects of that product are dictated by technical function.
10. Overall impression:
SHENZHEN TAIDEN INDUSTRIAL CO. LTD v. OHIM
AND BOSCH SECURITY SYSTEMS BV General Court,
22 June 2010, T-153/08, ECR 2010, II-2517 [EU]:
Since Article 6(1) of Regulation No 6/2002
refers to a difference between the overall
impressions produced by the designs at
issue, the individual character of a Community
design cannot be examined in the light of
specific features of various earlier designs.
Therefore, a comparison should be made
between, on the one hand, the overall impression produced by the contested Community
design and, on the other, the overall impres-

sion produced by each of the earlier designs
legitimately relied on by the party seeking a
declaration of invalidity.
The obligation to make a comparison between
the overall impressions produced by the
designs at issue does not preclude the possibility of taking into consideration, as representations of one and the same earlier design,
features which were made available to the
public in different ways, in particular, first, by
the publication of a registration and, second,
by the presentation to the public of a product incorporating the registered design. The
purpose of registering a design is to obtain
an exclusive right, in particular, to make and
market the product incorporating it, which
means that the representations in the application for registration are, as a general rule,
closely related to the appearance of the product placed on the market.
PROCTER & GAMBLE COMPANY v. RECKITT
BENCKISER (UK) LTD [2007] EWCA Civ 936:
Once one has identified the notional ‘informed
user’ correctly and what he would know about
the design corpus, one asks whether the
accused product produces ‘a different overall
impression’ to such a person?
This test is inherently rather imprecise: an
article may reasonably seem to one man to
create ‘a different overall impression’ and yet
to another to do so. It is always so with the
scope of rights in a visual work. You need to
cover not only exact imitations, but also things
which come ‘too close’. Whatever words you
choose, you are bound to leave a considerable margin for the judgment of the tribunal.
Having said that, however, there are some
general observations that can be made:
• For the reasons I have given above, the test
[in the infringement context] is ‘different’ not
‘clearly different.’
• The notional informed user is ‘fairly familiar’
with design issues, as discussed above.
• Next is not a proposition of law but a statement about the way people (and thus the
notional informed user) perceive things.
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CASEBOOK ON IP ENFORCEMENT

It is simply that if a new design is mark- GRUPO PROMER MON GRAPHIC SA v. OHIM AND
edly different from anything that has gone PEPSICO INC General Court, 18 March 2010, T-9/07,
before, it is likely to have a greater overall ECR 2010, II-981 [EU]:11
visual impact than if it is ‘surrounded by
kindred prior art,
Since ‘conflict’ is not defined as such in
• On the other hand, it does not follow, in a
Regulation No 6/2002, it is necessary to clarify
case of markedly new design (or indeed
that concept. [The] Board of Appeal found that
any design) that it is sufficient to ask ‘is
a conflict arose between two designs when
the alleged infringement closer to the
they produced the same overall impression
registered design or to the prior art’, if
on the informed user, and that in that connecthe former infringement, if the latter not.
tion the degree of freedom of the designer in
The test remains ‘is the overall impresdeveloping the contested design had to be
sion different?’
taken into account.
• It is legitimate to compare the registered
design and the alleged infringement with a
In the case of a design registered in a Member
reasonable degree of care. The court must
State, the scope of the protection conferred by
‘don the spectacles of the informed user’
a design is to include any design which does
to adapt the hackneyed but convenient
not produce on the informed user a different
metaphor of patent law. The possibility of
overall impression and that, in assessing the
imperfect recollection has a limited part to
scope of that protection, the degree of freeplay in this exercise.
dom of the designer in developing his design
• The court must identify the ‘overall impresis to be taken into consideration.
sion’ of the registered design with care. True
it is that it is difficult to put into language,
Next, in assessing whether a design is in
and it is helpful to use pictures as part of
conflict with a prior design, the designer’s
the identification, but the exercise must
freedom in developing his design is to be
be done.
taken into consideration.
• In this exercise the level of generality to
which the court must descend is important.
Consequently, Article 25(1)(d) of Regulation
Here, for instance, it would be too general
No 6/2002 must be interpreted as meaning
to say that the overall impression of the
that a Community design is in conflict with a
registered design is ‘a canister fitted with a
prior design when, taking into consideration
trigger spray device on the top.’ The approthe freedom of the designer in developing
priate level of generality is that which would
the Community design, that design does
be taken by the notional informed user.
not produce on the informed user a different
• The court should then do the same exercise
overall impression from that produced by the
for the alleged infringement.
prior design relied on.
• Finally, the court should ask whether the
overall impression of each is different. This 11. Comparing the whole: The shape or configurais almost the equivalent to asking wheth- tion as a whole has to be considered, not only for
er they are the same – the difference is purposes of novelty and originality, but also in relation
nuanced, probably, involving a question to infringement.
of onus and no more.
OCULAR SCIENCES LTD v. ASPECT VISION CARE
LTD [1996] EWHC Patents 1:

11. The appeal against this judgment was dismissed:
Judgment of the Court (Fourth Chamber) of 20
October 2011 — PepsiCo, Inc., v. Grupo Promer Mon
Graphic SA, Office for Harmonisation in the Internal
Market (Trade Marks and Designs) (Case C-281/10 P).

112

INDUSTRIAL DESIGNS

The proprietor can choose to assert design
right in the whole or any part of his product.
If the right is said to reside in the design of
a teapot, this can mean that it resides in the
design of the whole pot, or in a part such as
the spout, the handle or the lid, or, indeed, in
a part of the lid. This means that the proprietor can trim his design right claim to most
closely match what he believes the defendant
to have taken.

C. Exclusions

Secondly, it would be wrong in principle to
conclude that a design incapable of protection merely because it serves a functional
purpose. There is simply no justification in
policy or principle for such a conclusion. It
would mean that a design which had only
aesthetic features would be favored over one
with both aesthetic and functional features,
a curious consequence of legislation one of
whose main functions is to reward imagination
and inventiveness.
As Park J rightly observed in A Fulton Co Ltd v
Grant Barnett Ltd [2001] RPC 257, at para 70:

12. Methods or principles of construction are excluded:
LANDOR & HAWA INTERNATIONAL LTD v. AZURE
DESIGNS LTD [2006] EWCA Civ 1285:
The first issue centres around Azure’s contention that Landor’s claim for UKUDR [U.K.
Unregistered Design Right] in the Expander
Design is precluded by s 213(3)(a) of the
Copyright, Designs and Patents Act 1988
which provides as follows:
Design right does not subsist in . . . a
method or principle of construction.

‘The fact that a special method or principle of construction may have been
used in order to create an article with
a particular shape or configuration
does not mean that there is no design
right in the shape or configuration. The
law of design right will not prevent
competitors using that method or principle of construction to create competing design as long as the competing
designs do not have the same shape
or configuration as the design right
owner’s design has.’

This contention has given rise to two main
arguments, one of principle and one essentially of fact. The argument of principle concerns
the meaning and effect of [the provision].
The Judge held that the provision should be
relatively narrowly construed, and that it did
not apply merely because a design serves a
functional purpose: it would not apply unless
it can be shown that that purpose cannot be
achieved by any other means.
In my opinion, the Judge’s interpretation
is correct. First, the section does not, as
a matter of ordinary language, preclude a
design being protected merely because it has
a functional purpose. The language is perhaps
a little opaque, but the words ‘method or
principle’ are important, and serve, in my
view, to emphasize that mere functionality
is quite insufficient to exclude a design from
protection.

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UNFAIR (UNLAWFUL) COMPETITION

Chapter 13
Unfair (unlawful) competition
A. Introduction

116

B. Trade secrets

117

C. Remedies

119

115

CASEBOOK ON IP ENFORCEMENT

A. Introduction
1. TRIPS requirements: The TRIPS Agreement1 requires
WTO members to comply with the provisions of the
Paris Convention for the Protection of Industrial
Property2 that deal with unfair competition. Nationals
of member countries are entitled to effective protection against unfair competition, which is defined as
‘any act of competition contrary to honest practices in
industrial or commercial matters.’ The following must
be prohibited:
• all acts of such a nature as to create confusion by
any means whatever with the establishment, the
goods or the industrial or commercial activities of
a competitor,
• false allegations in the course of trade of such
a nature as to discredit the establishment, the
goods or the industrial or commercial activities, of
a competitor and
• indications or allegations the use of which in the
course of trade is liable to mislead the public as to
the nature, the manufacturing process, the characteristics, the suitability for their purpose or the
quantity of the goods.
Some of these aspects have been dealt with in Chapter 6.
Laws dealing with unlawful trade practices, including
laws against counterfeiting and monopolies, often cover
much that would be protected by unfair competition.3
2. Civil law: Civil-law systems tend to recognize a
general delict of unfair competition that may be amplified by a list of examples.4 One such instance is German
law. The general proposition in § 3 of the German UWG
Act is that acts of unfair competition likely to seriously
impair competition to the disadvantage of competitors,
consumers or other market participants are prohibited.
The law proceeds to provide a list of examples, such
as if a person undertakes competitive acts calculated

1.
2.
3.

4.

116

https://www.wto.org/english/
docs_e/legal_e/27-trips.pdf.
http://www.wipo.int/export/sites/www/
treaties/en/documents/pdf/paris.pdf.
E.g., the Australian Trade Practices Act 1974 (Cth).
Cf Re Taco Company of Australia Inc; Taco Bell
v. Taco Bell Pty Limited; Denbrad Management
Pty Limited; Robert Francis; Eric Baillie Francis
[1982] FCA 136; Parkdale Custom Built Furniture
Pty Ltd v. Puxu Pty Ltd [1982] HCA 44.
Civil countries have, their own different laws.

to impair the freedom of consumers or other market
participants to make choices, through the exertion of
pressure, cruelty or other improper, undue influence, or
obstructs competitors deliberately, contravenes a legal
provision intended to regulate market relationships in
the interests of market participants.
3. The common law does not recognize a general tort:
U.K. common law does not recognize a general unfair
competition tort.5 Instead, it recognizes torts that cover
some of the field, the important ones being passing off
and the protection of confidential information.
MOORGATE TOBACCO CO LTD v. PHILIP MORRIS
LTD [1984] HCA; (1984) 156 CLR 414:
The phrase ‘unfair competition’ has been used
in judgments and learned writings in at least
three distinct ways, namely, as a synonym
of the doctrine of passing off; as a generic
name to cover the range of legal and equitable causes of action available to protect a
trader against the unlawful trading activities
of a competitor particularly, by the ‘misappropriation’ of knowledge or information;
and to describe what is claimed to be a new
and general cause of action which protects
a trader against damage caused either by
‘unfair competition’ generally or, more he has
a ‘quasi-proprietary’ right.
The first and second of the above uses of the
phrase are liable to be misleading in that they
may wrongly imply that the relevant action or
actions are restricted to proceedings against
a competitor. The second use is also liable to
imply that there exists a unity of underlying
principle between different actions when, in
truth, there is none. The third use of the phrase
is, in an Australian context, simply mistaken
in that “unfair competition” does not, in itself,
provide a sufficient basis for relief under the
law of this country.
The United States approaches unfair competition on a
more general basis, in part because of its jurisprudence
(including the Supreme Court’s opinion in International

5.

ABC v. Lenah Game Meats Pty Ltd [2001] HCA
63; 208 CLR 199 (also referred to as Australian
Broadcasting Corp v. Lenah Game Meats Pty Ltd).

UNFAIR (UNLAWFUL) COMPETITION

News Service v. Associated Press [1918] 248 US 215)
and in part because of legislative intervention, both
at the state and federal level, the latter through the
Lanham Act.
4. The mixed-law approach: In countries with a mixed
legal tradition, such as South Africa, unfair competition
is regarded as a manifestation of the general delict
protected by the Aquilian action, but common-law
precedents have a significant influence on this part of
the law.6 Unlawful acts are not limited to acts that fall
into a category of clearly recognized illegality but may
be determined by the application of certain criteria,
which include fairness and honesty in competition
(which requires that regard be had to boni mores and
the general sense of justice in the community) and
questions of public policy that may be of importance
in a particular case, such as the importance of the free
market and of competition in our economic system.

B. Trade secrets
5. Defining trade secrets: Both the TRIPS Agreement
and the Paris Convention do not deal in terms with
the protection of trade secrets, but trade secrets
have become an important IP asset and are generally
protected.
ANSELL RUBBER CO (PTY) LTD v. ALLIED RUBBER
INDUSTRIES (PTY) LTD [1967] VR 37:
There is very little in these English cases to
enable one to identify a “trade secret”. But
some collation of the characteristics may
be attempted, without trying to make it an
exhaustive statement. Its subject-matter may
not be a process in common use, or something which is public property and public
knowledge, but if it is the result of work done
by the maker upon materials which may be
available for the use of anybody, so as to
achieve a result which can only be produced
by somebody who goes through the same
process, it will be sufficient. All of its separate
features may have been published, or capable
of being ascertained by actual inspection by

6.

The general principles of the law relating
to unlawful competition were settled in
Schultz v. Butt (327/84) [1986] ZASCA 47.

any member of the public, but if the whole
result has not been achieved, and could
not be achieved, except by someone going
through the same kind of process as the
owner, it will not fail to qualify by reason of
the publication. It may derive from a maker
in another country without losing its character, if it is used, or entitled to be used, by
the owner alone in the country in which the
owner operates. There is no suggestion of the
need for invention. Little can be gathered of
the degree of secrecy required beyond what
is implied in what is said. But it is a fair inference from what is said that the employer must
have kept the matter to himself and from his
competitors. The emphasis in the cases is on
the confidence.
6. The common-law approach: The cause of action
is at common law an equitable action and at present, it does not only protect confidential information
in the commercial sense but also the right to privacy.
It is not dependent on the existence of a contractual
relationship.7
ATTORNEY GENERAL v. GUARDIAN NEWSPAPERS
LTD (NO 2) [1988] UKHL 6:
The Crown’s case upon all the issues which
arise invokes the law about confidentiality. So
it is convenient to start by considering the
nature and scope of that law. The law has
long recognized that an obligation of confidence can arise out of particular relationships.
Examples are the relationships of doctor
and patient, priest and penitent, solicitor and
client, banker and customer. The obligation
may be imposed by an express or implied
term in a contract but it may also exist independently of any contract on the basis of an
independent equitable principle of confidence.

7.

Douglas & Ors v. Hello! Ltd & Ors [2007] UKHL 21;
Campbell v. MGN Ltd [2004] UKHL 22; Campbell
v. MGN Ltd [2005] UKHL 61; Force India Formula
One Team Ltd v. 1 Malaysia Racing Team SDN BHD
& Ors [2012] EWHC 616 (Ch); Wee Shuo Woon v. HT
S.R.L. [2017] SGCA 23; Kerry Ingredients (UK) Ltd
v. Bakkavor Group Ltd & oRS [2016] EWHC 2448
(Ch); Vestergaard Frandsen A/S & Ors v. Bestnet
Europe Ltd & Ors [2009] EWHC 1456 (Ch).

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CASEBOOK ON IP ENFORCEMENT

Most of the cases have arisen in circumstances where there has been a threatened or actual breach of confidence by an
employee or ex-employee of the plaintiff,
or where information about the plaintiff’s
business affairs has been given in confidence to someone who has proceeded to
exploit it for his own benefit. In such cases
the detriment to the confider is clear. In
other cases, there may be no financial
detriment to the confider, since the breach
of confidence involves no more than an
invasion of personal privacy. The right to
personal privacy is clearly one which
the law should in this field seek to protect. If
a profit has been made through the revelation in breach of confidence of details of a
person’s private life it is appropriate that the
profit should be accounted for to that person.
Further, as a general rule, it is in the public
interest that confidences should be respected,
and the encouragement of such respect may
in itself constitute a sufficient ground for
recognizing and enforcing the obligation of
confidence even where the confider can point
to no specific detriment to himself.

Further, while a recipient of confidential information may be said to be primarily liable in
a case of its misuse, a person who assists
her in the misuse can be liable, in a secondary sense. However, as I see it, consistently
with the approach of equity in this area, she
would normally have to know that the recipient was abusing confidential information.
Knowledge in this context would of course
not be limited to her actual knowledge, and
it would include what is sometimes called
“blind-eye knowledge”.
Further, even a person who did not know
that the information which is being abused
is confidential could nonetheless be liable if
there were relevant additional facts. Thus, if
a person who directly misuses a claimant’s
trade secret does so in the course of her
employment by a third party, then the third
party could (at least arguably) be liable to
the claimant for the breach of confidence.
However, that would simply involve the application of one well established legal principle,
vicarious liability, to another, misuse of confidential information.

7. Civil law: Japanese law, as an example of the civillaw approach, defines the activities that amount to
unfair competition in specific terms, and those relating
The classic case of breach of confidence to confidential information provide inter alia that the
involves the claimant’s confidential infor- following acts amount to unfair competition:8 acquiring
mation, such as a trade secret, being used a trade secret by theft, fraud, duress or other wrongful
inconsistently with its confidential nature by means; using or disclosing a trade secret so acquired;
a defendant, who received it in circumstances and acquiring a trade secret with the knowledge that
where she had agreed, or ought to have such trade secret has been acquired through acts of
appreciated, that it was confidential. Thus, in wrongful acquisition. There does not appear to be any
order for the conscience of the recipient to be difference of consequence between this approach and
affected, she must have agreed or must know, the more detailed approach of the common law.
that the information is confidential.
8. Springboard doctrine: 9 The object of the springboard
Liability for breach of confidence is not, of doctrine is to prevent a person who has breached a
course, limited to such classic cases. A duty to keep matters confidential to capitalize on any
defendant, who learns of a trade secret in head start gained. The problems with this doctrine
circumstances where she reasonably does are manifold, especially when it concerns the issue of
not appreciate that it is confidential, may an injunction.10
nonetheless be liable to respect its confidentiality from the moment she is told, or otherwise appreciates, that it is in fact confidential.
8. Unfair Competition Prevention Act
From that moment, it can be said that her
1993 – Act No.47 of 1993.
conscience is affected in a way which should
9. Aim Maintenance Ltd v. Brunt [2004] WASC 49.
10. Ocular Sciences Ltd v. Aspect Vision Care
be recognized by equity.

VESTERGAARD FRANDSEN A/S & ORS v. BESTNET
EUROPE LTD & ORS [2013] UKSC 31:

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UNFAIR (UNLAWFUL) COMPETITION

TERRAPIN LTD v. BUILDERS SUPPLY CO (HAYES)
LTD [1960] RPC 128:
As I understand it, the essence of this branch
of the law, whatever the origin of it may be, is
that a person who has obtained information
in confidence is not allowed to use it as a
springboard for activities detrimental to the
person who made the confidential communication, and springboard it remains even when
all the features have been published or can
be ascertained by actual inspection by any
member of the public.
It is, in my view, inherent in the principle that
the possessor of such information must be
placed under a special disability in the field
of competition in order to ensure that he does
not get an unfair start; or, in other words, to
preclude the tactics which the first defendants
and the third defendants and the managing
director of both of those companies employed
in this case.

10. Balancing of rights:
VESTERGAARD FRANDSEN A/S & ORS v. BESTNET
EUROPE LTD & ORS [2013] UKSC 31:
Particularly in a modern economy, the law
has to maintain a realistic and fair balance
between (i) effectively protecting trade secrets
(and other intellectual property rights) and (ii)
not unreasonably inhibiting competition in the
market place. The importance to the economic prosperity of the country of research and
development in the commercial world is selfevident, and the protection of intellectual
property, including trade secrets, is one of the
vital contributions of the law to that end. On
the other hand, the law should not discourage
former employees from benefitting society
and advancing themselves by imposing unfair
potential difficulties on their honest attempts
to compete with their former employers.

C. Remedies
9. Remedies: The typical remedies available for torts
and delicts are available in these cases.11 As far as
springboard relief is concerned, an injunction in the
following terms may be appropriate:12
The defendant is enjoined for a period of x
months of marketing any vacuum cleaner
under or by reference to the trademark or
name VORTEX, except that it shall not be
a breach of this part of the order to use the
same mark or logo in a context where there
is no likelihood of deception.

Ltd (No.2) [1996] EWHC Patents 1.
11. As to damages: MVF 3 Aps & Ors v. Bestnet
Europe Ltd & Ors [2016] EWCA Civ 541 ;
Kerry Ingredients (UK) Ltd v. Bakkavor Group
Ltd & Ors [2016] EWHC 2448 (Ch).
12. The issue is dealt with in detail in Vestergaard
Frandsen A/S & Ors v. Bestnet Europe Ltd & Ors
[2009] EWHC 1456 (Ch). See in general Personnel
Hygiene Services Ltd & Ors v. Rentokil Initial UK Ltd
(t/a Initial Medical Services) & Ors [2014] EWCA Civ 29.

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CIVIL REMEDIES

Chapter 14
Civil remedies
A. The TRIPS Agreement

122

B. Temporary injunctions

122

C. Injunctions (interdicts)

126

D. Damages

128

E. Disposal of infringing
and counterfeit goods

136

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A. The TRIPS Agreement
1. Introduction: Civil remedies for the infringement of
IP rights are prescribed in the TRIPS Agreement.1 It
states the minimum requirements, which, in general
terms, are contained in one form or another in most
legal systems: interim measures, injunctions, damages
and destruction of infringing goods.

5. Damages: Article 45 provides that courts must
be able to order the infringer to pay the rights holder damages adequate to compensate for the injury
suffered by the rights holder because of the infringement, as well as the rights holder’s expenses, which
may include appropriate attorney’s fees. The liability
to pay damages may be made dependent upon the
infringer’s knowledge or negligence.

The underlying principles do not change simply
because a matter involves an IP right – it is the application of those principles that may be challenging in
the circumstances of a case.

Damages may consist of the recovery of profits and/or
payment of pre-established damages, even where the
infringer did not knowingly, or with reasonable grounds
to know, engage in infringing activity.

2. Interim measures: The TRIPS Agreement (Article 50)
sets the minimum requirements for interim measures
that member countries have to provide for all IP rights
holders. National laws must provide for (a) temporary
injunctions (interim interdicts in the nomenclature of civil
or mixed systems) on notice or, in cases of urgency, on
an ex parte basis and (b) orders to preserve evidence.
Most jurisdictions comply in general, without special
legislation, with these requirements.
3. Disclosure orders: In accordance with the provisions
of TRIPS (Article 47), member states may provide the
judiciary with the authority to order the infringer to
inform the rights holder of the identity of third persons
involved in the production and distribution of the
infringing goods or services and of their channels of
distribution, unless this would be out of proportion to
the seriousness of the infringement.

B. Temporary injunctions
6. Nature of temporary injunctions: A temporary injunction pending the full ventilation of the dispute at a trial
is probably the most important legal remedy for the
infringement of an IPR. Apart from restoring the status
quo and halting the allegedly infringing act, interim
injunction proceedings provide parties with a preview
of the opponent’s case. As a result, cases are often
settled or concluded without subsequent proceedings,
such as a trial. Interim injunctions are also cost-effective.
An interim injunction, however, has far-reaching
commercial consequences, and it is seldom that the
innocent respondent will be able to prove or recover
its loss should it subsequently appear that the order
was incorrectly granted.

4. Injunctions (interdicts): In terms of Article 44.1, courts This remedy has three legs. The first substantive issue is
must have the authority to issue injunctions or inter- the IP right of the claimant and the second is the quesdicts2 ordering a party to desist from infringing. The tion whether the respondent is infringing or threatening
injunction must also prevent the entry into the channels to infringe that right.
of commerce in their jurisdiction of imported goods that
involve the infringement of an IP right, immediately after The third is a discretionary issue, namely whether an
customs clearance of such goods. Injunctions may order would do justice in the circumstances of the case.
be dependent on the defendant’s prior knowledge (or It includes a consideration of issues such as irreparable
having had reasonable grounds to know) that the act harm and the balance of convenience (sometimes
entails the infringement of an IP right.
referred to as the balance of hardship). This means that
the court is entitled to have regard to a number of disparate and incommensurable features in coming to a decision, and not that the court has a free and unfettered
discretion. The discretion is a judicial one that must be
exercised according to law and upon established facts.3
1.
2.

122

http://www.tripsagreement.net/?page_id=40.
For the sake of convenience, the English law term of
injunction will be used in this text while recognizing
that civil systems prefer the term interdict. There is
not any substantive difference between the two.

3.

Google Inc. v. Equustek Solutions Inc. 2017 SCC 34.

CIVIL REMEDIES

7. The purpose of interim relief is to regulate the interim
and to preserve the status quo:4

be able to show sufficient color of right to
the final relief, in aid of which interlocutory
relief is sought.

ATTORNEY GENERAL v. PUNCH LTD [2002] UKHL 50:
The one approach (the traditional one) is to ask whether
The purpose for which the court grants an the applicant has a prima facie right. This test, as formuinterlocutory injunction can be stated quite lated in the European directive, is that the court must
simply. In American Cyanamid Co v. Ethicon be satisfied with a sufficient degree of certainty that
Ltd [1975] AC 396 Lord Diplock described it the applicant is the right holder and that the applicant’s
as a remedy which is both temporary and right is being infringed, or that such infringement is
discretionary. Its purpose is to regulate, and imminent. In the United States, the test is a reasonwhere possible to preserve, the rights of the able likelihood of success on the merits.5 Other courts,
parties pending the final determination of the under the influence of the House of Lords decision in
matter which is in issue by the court. That American Cyanamid Co v. Ethicon Ltd, now use the
purpose should not be confused with the ‘serious question to be tried' test.6 The requirement of
court’s reasons for deciding that it would be a serious question to be tried is not the same as that of
appropriate to grant an interlocutory injunc- a prima facie right, although the court must be satisfied
tion. The court must, of course, have a good that the claim is not frivolous or vexatious.
reason for granting an order of this kind.
MANITOBA (A.G.) v. METROPOLITAN STORES LTD.,
It is no part of the court’s function at that stage [1987] 1 SCR 110:
to resolve conflicts of evidence or questions
of law that require detailed argument. All it
The first test is a preliminary and tentative
can do is to preserve the status quo in the
assessment of the merits of the case, but
meantime until these matters can be deterthere is more than one way to describe this
mined at the trial.
first test. The traditional way consists in asking
whether the litigant who seeks the interlocu8. Threshold requirement – the right of the applicant:
tory injunction can make out a prima facie
Courts differ in their approach to the level of satisfaction
case. The injunction will be refused unless
that a court must have before it may issue a tempohe can. The House of Lords has somewhat
rary injunction. It is not clear that these differences
relaxed this first test in American Cyanamid
are material.
Co v. Ethicon Ltd, where it held that all that
was necessary to meet this test was to satisfy
AUSTRALIAN BROADCASTING CORPORATION v.
the Court that there was a serious question
LENAH GAME MEATS PTY LTD [2001] HCA 63:
to be tried as opposed to a frivolous or vexatious claim.
When a plaintiff applies to a court for an interlocutory injunction, the first question counsel MOTT & ANOR v. MOUNT EDON GOLD MINES (AUST)
may be asked is: what is your equity? If a plain- LTD & ORS [1994] WASC 81:
tiff, who has commenced an action seeking
a permanent injunction, cannot demonstrate
• The applicant must satisfy the court there
that, if the facts alleged are shown to be true,
is a serious question to be tried;
there will be a sufficiently plausible ground for
the granting of final relief, then that may mean
there is no basis for interlocutory relief.
5.
Polymer Technols., Inc. v. Bridwell (Fed Cir 1996)
The corollary of the proposition is that a plaintiff seeking an interlocutory injunction must

4.

Australian Broadcasting Corporation v. Lenah
Game Meats Pty Ltd [2001] HCA 63.

6.

103 F3d 970.
It has been adopted in Canada: RJR-MacDonald
Inc. v. Canada (Attorney General) [1994] 1 SCR 311 at
348; Australia: e.g., Australian Coarse Grains Pool Pty
Ltd v. Barley Marketing Board [1985] HCA 38. In India,
however, it does not apply to (all) IP cases, and a
patentee cannot, for instance, rely on the presumption
that the patent is valid and has to prove it, prima facie:
Gujarat Bottle v. Coca-Cola Co 1995 (5) SCC 545.

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CASEBOOK ON IP ENFORCEMENT

• If there is a serious question to be tried, an
factor to be brought into the balance by the
injunction will not be granted if common law
judge in weighing the risks that injustice may
damages would be an adequate remedy;
result from his deciding the application one
• If there is a serious question to be tried and
way rather than the other.
damages would not be an adequate remedy, the court must then consider whether 10. Irreparable harm:
the balance of convenience lies in favor of
granting or refusing the relief sought.
RJR-MACDONALD INC. v. CANADA (ATTORNEY
• When considering the balance of conve- GENERAL) [1994] 1 SCR 311:
nience, the relative strength and weaknesses of the applicant’s case may be
Irreparable refers to the nature of the harm
taken into account, and
suffered rather than its magnitude. It is harm
• The court should not attempt to decide
which either cannot be quantified in monetary
factual conflicts arising from the affidavit
terms or which cannot be cured, usually
material and nor should it determine difficult
because one party cannot collect damages
questions of law which require detailed
from the other. Examples of the former include
argument.
instances where one party will be put out of
business by the court’s decision; where one
9. Interim orders that are final in effect: The tests set
party will suffer permanent market loss or
out in the previous paragraph do not apply where the
irrevocable damage to its business reputainterlocutory order will be final in effect.
tion; or where a permanent loss of natural
resources will be the result when a challenged
NWL LIMITED v. WOODS [1979] 3 All ER 614:7
activity is not enjoined. The fact that one
party may be impecunious does not autoAmerican Cyanamid Co v. Ethicon Ltd, which
matically determine the application in favor
enjoins the judge on an application for an
of the other party who will not ultimately be
interlocutory injunction to direct his attention to
able to collect damages, although it may be
the balance of convenience as soon as he has
a relevant consideration.
satisfied himself that there is a serious question to be tried, was not dealing with a case 11. Balance of convenience:
in which the grant or refusal of an injunction
at that stage would, in effect, dispose of the AMERICAN CYANAMID CO v. ETHICON LTD [1975]
action finally in favor of whichever party was AC 396:
successful in the application, because there
would be nothing left on which it was in the
The plaintiff’s need for such protection must
unsuccessful party’s interest to proceed to trial.
be weighed against the corresponding need
for the defendant to be protected against injuWhere, however, the grant or refusal of the
ry resulting from his having been prevented
interlocutory injunction will have the practical
from exercising his own legal rights for which
effect of putting an end to the action because
he could not be adequately compensated
the harm that will have been already caused
under the plaintiff’s undertaking in damages
to the losing party by its grant or its refusal
if the uncertainty were resolved in the defenis complete and of a kind for which money
dant’s favor at the trial. The court must weigh
cannot constitute any worthwhile recompense,
one need against another and determine
the degree of likelihood that the plaintiff would
where ‘the balance of convenience’ lies.
have succeeded in establishing his right to an
injunction if the action had gone to trial is a
It would be unwise to attempt even to list all
the various matters which may need to be
taken into consideration in deciding where the
balance lies, let alone to suggest the relative
7. No internet link available, but quoted by a Fiji
weight to be attached to them. These will vary
court in Mcpherson’s Consumer Products Pty
Ltd v. Usha Lal T/A Ishwar Industries (2015).
from case to case.
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CIVIL REMEDIES

POLO/LAUREN CO LTD PARTNERSHIP v. DINOON
2004 SCJ 44 [Mauritius]:8
As it is not easy for me to decide if the
prejudice allegedly suffered can or cannot
adequately be compensated by damages
on contradictory affidavit evidence, I shall,
therefore, turn to the question of balance
of convenience.
Here, the respondents tried to play on emotion,
putting forward the argument that in granting
the interlocutory order, thousands of workers
would lose their employment.
On the other hand, there is the very strong
case of the applicant as to the ownership of
the copyright of the Artistic Work. Moreover,
consideration must also be given to the
obligation of the State to comply with its
international obligations coupled with the
fact that there is an element of public order,
for the legislator has made it an offence for
anybody who infringes the copyright in a
work. Consequently, in the public interest,
the rule of law must be upheld against any
private interest, more especially in the field
of infringement of copyright which is legion
and rampant. I also take judicial notice of the
fact that the State is attempting to put order
to show another image of the country other
than that of being notoriously known as a
haven for counterfeiters.
12. U.S. law: The law in the United States requires, in
addition, a consideration of the impact of the injunction
on the public interest.9

• a reasonable likelihood of success on the
merits;
• irreparable harm if the injunction were not
granted;
• the balance of the hardships and
• the impact of the injunction on the public
interest.
13. Preservation orders: Preservation of evidence
orders are required by TRIPS as an interim measure.10
The European Court of Human Rights had the opportunity to deal with these types of orders and to assess
their legitimacy and it gave a useful exposition of their
development under U.K. law and their scope.11
CHAPPELL v. UNITED KINGDOM [1990] 12 EHRR 1:
The High Court [in the United Kingdom] developed – in particular from 1974 onwards – the
practice of granting in appropriate cases to the
plaintiff or intending plaintiff in civil proceedings
‘Anton Piller orders’, so called after the name
of a case in which their use was approved
by the Court of Appeal (Anton Piller KG v.
Manufacturing Processes Ltd [1976] 1 All ER
779). They are of a procedural and essentially
provisional nature only, being granted pending
the trial of the action on the merits.
Whilst Anton Piller orders have been made
in a wide variety of cases, the great majority
are granted in proceedings involving allegations of infringement of patents, trademarks
or copyright or of passing off. Of these, by far
the most frequent have been cases involving
pirate records, tapes, and video-cassettes,
where the risks of suppression of evidence
are especially strong.

POLYMER TECHNOLS., INC. v. BRIDWELL (FED CIR
1996) 103 F3d 970:
The grant or denial of a preliminary injunction
is within the discretion of the district court. As
the moving party, Polymer [the applicant] had
to establish its right to a preliminary injunction
in light of four factors:

8.
9.

No internet link available.
Discussed in Cipla Medpro (Pty) Ltd v. Aventis Pharma
SA, Aventis Pharma SA and Others v. Cipla Life
Sciences (Pty) Ltd and Others [2012] ZASCA 108.

10. Another related type of order concerns the
preservation of assets, but because it is not a
TRIPS requirement, it is not discussed: Fourie v. Le
Roux and others [2007] UKHL 1; Karl Construction
(Scotland) Ltd v. Palisade Properties plc (No1)
[2002] Adj.L.R.; Knox D’Arcy Ltd. and Others
v. Jamieson and Others [1996] ZASCA 58.
11. See further Anton Piller KG v. Manufacturing
Processes Ltd [1976] 1 All ER 779; Shoba
v Officer Commanding, Temporary Police
Camp, Wagendrift Dam, Maphanga v. Officer
Commanding, SA Police Murder & Robbery
Unit, Pietermaritzburg [1995] ZASCA 49.

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One of the basic purposes of this interlocu- C. Injunctions (interdicts)
tory measure being to preserve for that trial
evidence in the possession of the defendant or 14. Nature of injunctions:12
prospective defendant, its essence is surprise.
For this reason, the court – by virtue, so it L’OREAL SA AND OTHERS v. EBAY INTERNATIONAL
was held in the Anton Piller case, of a power AG, 12 July 2011, C-324/09:
deriving from its inherent jurisdiction – grants
the order on an ex parte application, that is
Member States [must] ensure that the nationwithout the defendant’s being given notice
al courts with jurisdiction in relation to the
and without his being heard. For the same
protection of intellectual property rights are
reason, the application is invariably heard in
able to order the operator of an online marketprivate and the defendant will become aware
place to take measures which contribute,
of the order’s existence only when it is served
not only to bringing to an end infringements
on him with a view to immediate execution.
of those rights by users of that marketplace
but also to preventing further infringements
An Anton Piller order will normally contain
of that kind. Those injunctions must be effecrestrictive or mandatory injunctions: prohibittive, proportionate, dissuasive and must not
ing the defendant from dealing with materials
create barriers to legitimate trade.
that are the subject of the action; requiring the
defendant to disclose the whereabouts of all 15. Nature of the wrongful act: The power of the court
such materials and details of suppliers and to grant an injunction is limited by the nature of the act
customers, and to deliver up the materials to that it is sought to restrain.
the plaintiff; requiring the defendant to make
an affidavit containing all the information to CARDILE v. LED BUILDERS PTY LTD [1999] HCA 18:
be disclosed by him under the order; [and]
requiring the defendant to permit the plainHowever, in England, it is now settled by
tiff to enter the premises for the purpose of
several decisions of the House of Lords that
searching for the items.
the power stated in Judicature legislation –
that the court may grant an injunction in all
Before making an Anton Piller order, the court
cases in which it appears to the court to be
must be satisfied that:
just and convenient to do so – does not confer
an unlimited power to grant injunctive relief.
• the plaintiff has made out an extremely
Regard must still be had to the existence of
strong prima facie case that his claim will
a legal or equitable right which the injuncsucceed on the merits;
tion protects against invasion or threatened
• the actual or potential damage is very seriinvasion, or other unconscientious conduct
ous for him;
or exercise of legal or equitable rights. The
• there is clear evidence that the defendant
situation thus confirmed by these authorities
has in his possession incriminating docureflects the point made by Ashburner that
ments or things, and that
‘the power of the court to grant an injunction
• there is a real possibility that, if he is foreis limited by the nature of the act which it is
warned, he may destroy such material.
sought to restrain’.

12. An order for destruction or delivery-up as an adjunct
to an injunction is discussed under criminal remedies.

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CIVIL REMEDIES

16. Rules relating to injunctions in IP cases are no differ- 18. General entitlement: Having established the infringeent from those applicable in other cases:
ment of an IP right, the claimant is entitled to an injunction. Not all jurisdictions accept the discretionary nature
EBAY INC. v. MERCEXCHANGE, L.L.C., 547 U.S. 388 of the relief, which enables a court to refuse an injunc(2006):
tion once the infringement has been established and
there is some reason to believe that the respondent
According to well-established principles of will continue with infringing.
equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a Even if the remedy is discretionary, that does not
court may grant such relief. A plaintiff must mean that a party may be denied its rights through
demonstrate:
the exercise of discretion, unless there are special
circumstances present.
• that it has suffered an irreparable injury;
• that remedies available at law, such as In exercising its discretion, the court will, as a rule,
monetary damages, are inadequate to have regard to whether payment of damages without
compensate for that injury;
an injunction does not, in fact, compel the applicant to
• that, considering the balance of hardships part with its rights. Because of this consideration, final
between the plaintiff and defendant, a injunctions have been granted as a matter of course
remedy in equity is warranted; and
(if the claimant has otherwise established its entitle• that the public interest would not be ment) in IP cases in most countries. Otherwise, it could
disserved by a permanent injunction.
amount to granting the defendant a compulsory license.
These familiar principles apply with equal
force to disputes arising under the Patent Act.
This approach is consistent with our treatment
of injunctions under the Copyright Act.
17. Object of an injunction: The object of a permanent
injunction is to restrain feared future acts of infringement.13
COFLEXIP SA & ANOR v. STOLT COMEX SEAWAY
MS LTD & ORS [2000] EWCA Civ 242:
An injunction is a remedy against further injury
and the court will not make the order if satisfied that no such injury is likely to occur. It is
not because a defendant has done a wrong
that an injunction will be granted against him.
Where a patentee has conclusively established
the validity of his patent and that it had been
infringed, as a general rule an injunction will
be granted. However, that will not happen as a
matter of course as an injunction is a discretionary remedy. It is for that reason there have been
cases where injunctions have been refused,
for example, where the defendant satisfied the
court that further infringement was not likely.

13. See also Phonographic Performance Ltd
v. JJPB Ltd & Anor [2017] EWHC 1370 (Ch).

LOUIS VUITTON MALLETIER SA v. KNIERUM [2004]
FCA 1584:
The true position is this. The basis for the grant
of an injunction in an intellectual property case
is in every respect the same as in any other
case. The plaintiff must show that there is a
risk that the defendant will engage in infringing
conduct in the future. If the plaintiff is unable
to make good that proposition, he will not
obtain an injunction.
On the question of proof of the risk of repetition, some judges have been prepared to
infer that risk simply from past infringement.
But the better view is expressed by Laddie J
in Coflexip SA v Stolt Comex Seaway MS
Ltd, where he said that it is simply not right to
treat [all intellectual property right] infringers
as ‘bad apples’.
SCHNEIDER ELECTRIC SA v. TELEMECANIQUE
CONTROLS 2002 PTC (24) 632:
It has to be appreciated that undoubtedly [a]
patent creates a statutory monopoly protecting
the patentee against any unlicensed user of
the patented device. Thus once a violation is
established in the case of a registered patent,
subject of course to the patent being used, it
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CASEBOOK ON IP ENFORCEMENT

will not be permissible to contend that the said
patentee is not entitled to an injunction.

COFLEXIP STENA OFFSHORE LIMITED, COFLEXIP
S.A. [1999] EWHC Patents 258:

CIPLA MEDPRO (PTY) LTD v. AVENTIS PHARMA
SA, AVENTIS PHARMA SA AND OTHERS v. CIPLA
LIFE SCIENCES (PTY) LTD AND OTHERS [2012]
ZASCA 108:

A defendant who has been enjoined must
know what he can and cannot do. He should
not be set a puzzle. [In] most cases the precise
outer limits of a patent claim are far from
clear. An injunction not to infringe a patent
incorporates all this imprecision.

The TAC’s [Treatment Action Campaign]
opposition to the grant of an interdict really
comes down to no more than opposition to
the monopoly that the law confers upon a D. Damages
patentee. It submits that those who cannot
afford Taxotere, but are able to afford the 20. General rule: Unless a statute provides otherwise,
price of Cipla Docetaxel, will be prejudiced if the ordinary rules of law that determine the quantificadistribution of the latter were to be prohibited. tion of damages for statutory wrongs apply.15
Where the public is denied access to a generic
during the lifetime of a patent that is the ordi- ARO MFG. CO., INC. v. CONVERTIBLE TOP CO 377
nary consequence of patent protection and U.S. 476:
it applies as much in all cases. To refuse an
interdict only so as to frustrate the patentee’s
[Damages] have been said to constitute ‘the
lawful monopoly seems to me to be an abuse
difference between [the plaintiff’s] pecuniary
of the discretionary powers of a court.
condition after the infringement, and what his
condition could have been if the infringement
NOKIA CORPORATION v. TRUONG [2005] FCA 1141:
had not occurred.’ The question to be asked
in determining damages is ‘how much had
Permanent injunctions are granted conventhe patent holder and licensee suffered by the
tionally in respect of cases of intellectual
infringement. And that question [is] primarily:
property infringement against proven infringehad the infringer not infringed, what would the
ment and a proven threat to continue infringpatent holder/licensee have made?’
ing as this avoids multiplicity of proceedings.
There is clear evidence that the respondents The rule also applies in civil and mixed legal systems.
have continued to sell the infringing products, For instance, according to Article 1382 of the French
despite being aware of these proceedings, Civil Code, any harmful wrongdoing must be compenand the respondents have given no undertak- sated, and according to Article 1149, compensation
ings not to infringe. I, therefore, consider it usually extends to the ‘lost profit’ (gain manqué, lucrum
appropriate to exercise my discretion to grant cessans) and the ‘loss suffered’ (perte subie, damnum
a permanent injunction.
emergens).
19. Formulation of injunction: Care should be taken in
formulating an injunction.14

14. Coflexip SA & Anor v. Stolt Comex Seaway MS
Ltd & Ors [2000] EWCA Civ 242; Vestergaard
Frandsen A/S & Ors v. Bestnet Europe Ltd &
Ors [2009] EWHC 1456 (Ch); Personnel Hygiene
Services Ltd & Ors v. Rentokil Initial UK Ltd (t/a
Initial Medical Services) & Ors [2014] EWCA Civ 29.

128

21. Problem of quantification: Courts often have great
difficulty determining compensation for the infringement of IP rights. The problem is not limited to ordinary
civil courts – specialist IP courts are probably less
qualified to determine questions relating to damages.
And in the United States, there is a right to a jury trial
to quantify damages.16

15. For a full discussion of damages in copyright cases:
Eight Mile Style v. National Party [2017] NZHC 2603.
16. Feltner v. Columbia Pictures Television,
Inc., 523 U.S. 340 (1998).

CIVIL REMEDIES

The problem is not peculiar to patent or other IP litigation. In many fields (such as damages for personal
injuries, professional negligence, breach of contract
and loss of profit and the like), quantification is a problem not only for the judiciary but also for the parties
that must present proof of causation and the extent
of damages suffered.
Despite the burden of proof, courts have a duty to assess
damages, even if it means that they have to make an
estimate. The claimant has a duty to adduce the best
available evidence of quantum, and if that has been done,
the court must apply the best estimate rule.17
The issue of the calculation of damages is usually
determined separately, after the issues of validity of
the intellectual property right and of infringement have
been decided. In some countries with an inquisitorial
procedure, like France, the court on finding infringement appoints an expert to provide it with all the
information necessary to assess damages.
22. Flexible approach: The law sometimes has a more
flexible approach toward the question of damages, and
compensation may be available that, strictly, compensates the plaintiff for more than the actual financial loss.
These other methods will be discussed later in this chapter.
ATTORNEY GENERAL v. BLAKE AND ANOTHER
[2000] UKHL 45:
Damages are measured by the plaintiff’s loss,
not the defendant’s gain. But the common
law, pragmatic as ever, has long recognized
that there are many commonplace situations
where a strict application of this principle
would not do justice between the parties.
Then compensation for the wrong done to the
plaintiff is measured by a different yardstick.
FABIO PERINI SPA v. LPC GROUP PLC & ORS [2012]
EWHC 1393 (Pat):
Once causation is established (and subject
to any question of remoteness arising in this

17. Canada: Penvidic Contracting Co. Ltd. v.
International Nickel Co. of Canada Ltd (1975)
53 DLR (3d) 748. South Africa: De Klerk v. Absa
Bank Ltd and Others [2003] ZASCA 6.

case) the issue is one of measurement. As to
measurement:
It is probably a mistake in language to
treat the methods usually adopted in
ascertaining the measure of damages
in patent cases as principles. They are
the practical working rules which have
seemed helpful to judges in arriving at
a true estimate of the compensation
which ought to be awarded against an
infringer to a patentee. In the case of
damages in general, there is one principle which does underlie the assessment. It is what may be called that of
restoration. The idea is to restore the
person who has sustained injury and
loss to the condition in which he would
have been had he not so sustained
it. In cases of financial loss, injury to
trade, and the like, caused either by
breach of contract or by tort, the loss
is capable of correct appreciation in
stated figures. In a second class of
cases, restoration being difficult, the
task of restoration under the name of
compensation calls into play inference,
conjecture and the like [...] The restoration by way of compensation is therefore accomplished to a large extent by
the exercise of a sound imagination
and the practice of the broad axe. In all
these cases the attempt which justice
makes is to get back to the status quo
ante in fact, or to reach imaginatively,
by the process of compensation, a
result in which the same principle is
followed [...]
(Per Lord Shaw in Watson Laidlaw & Co v
Pott Cassels and Williamson (1914) 31 RPC
104 at 117-118.)
23. Statutory compensation: It is consequently not
only damages in the ordinary sense of the word that
are recoverable in certain jurisdictions in the case of
an IP infringement. Apart from the extended commonlaw approach toward the calculation of damages,
legislatures (and the European directive) have realized
that to require of plaintiffs to prove their damages in the
ordinary manner may be unfair, and they have devised
alternative methods of calculating compensation.
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CASEBOOK ON IP ENFORCEMENT

These other forms of monetary compensation will be
dealt with later on in this chapter.
24. Duty to present evidence: Courts differ on whether
or not damages may be presumed in trademark and
passing-off cases. It is, however, generally accepted
that damages must be proved in patent, designs and
copyright cases.
NISSAN CANADA INC. v. BMW CANADA INC., 2007
FCA 255:
With respect to the third component, i.e.
damages, the trial judge accepted the respondents’ argument that, once [infringement
has been established,] damages [whether
nominal or substantial] are presumed [in a
passing-off case].
I find the trial judge erred in law in assuming
that there would be damages. Actual or
potential damage is a necessary element in
finding liability. In the absence of evidence in
this regard, the Court cannot conclude that
there is liability. A plaintiff must ‘demonstrate
that he suffers or, in a quia timet action, that
he is likely to suffer damage by reason of the
erroneous belief engendered by the defendant’s misrepresentation that the source of
the defendant’s goods or services is the same
as the source of those offered by the plaintiff’.
A bifurcation order does not relieve the appellant from the necessity of proving the existence of damage as an element of his cause
of action. It simply defers proof of the extent of
the damage pending a determination as to the
respondents’ liability. In this case, there was no
evidence before the trial judge demonstrating
damages and no finding of damages. It was
not open to the trial judge to presume damages.
TOMMY HILFIGER EUROPE v. MCGARRY & ORS
[2008] IESC 36:
Before considering what effect, if any, the
correction of these errors may have I propose
considering the basis upon which damages
should be awarded for infringement of a registered Trade Mark and passing off. The position
is the same in respect of each of the causes
of action.
130

The object of an award of damages is to give
to the plaintiff compensation for the damage
or loss which he has suffered. Damage is
divisible into pecuniary and non-pecuniary
loss. The former comprises all financial loss
such as loss of business profits or expenses
incurred in a case such as the present. The
latter in a case such as the present would
include damage to reputation or goodwill and
can be described as monetary compensation
or reparation and takes the form of general as
opposed to special damages as they do not
admit of mathematical calculation.
The assessment of damages for infringement
and passing off follow the same lines and both
claims are frequently taken together with a
single award being made. The plaintiff need
not show damage and the law presumes that
any interference with goodwill by infringement
or passing off will result in damage. However
unlike other causes of action which are actionable per se the plaintiff is not restricted to
purely nominal damages.
There was no evidence of diversion given
in this case and indeed the evidence was
that no damage had been sustained by the
respondents: in the absence of evidence, it
will not be assumed that the sales achieved
by the defendant would necessarily have been
obtained by the plaintiff.
25. General rules:
ULTRAFRAME (UK) LTD v. EUROCELL BUILDING
PLASTICS LTD & ANOR [2006] EWHC 1344 (Pat):
The general principles to be applied in assessing damages for infringement of patent are now
well established. So far as relevant to the present case, they can be summarized as follows:
• Damages are compensatory. The general
rule is that the measure of damages is to
be, as far as possible, that sum of money
that will put the claimant in the same position as he would have been in if he had not
sustained the wrong.
• The claimant can recover loss which was (i)
foreseeable, (ii) caused by the wrong, and
(iii) not excluded from recovery by public or

CIVIL REMEDIES

social policy. It is not enough that the loss
would not have occurred but for the tort.
The tort must be, as a matter of common
sense, a cause of the loss.
• The burden of proof rests on the claimant.
Damages are to be assessed liberally. But
the object is to compensate the claimant
and not to punish the defendant.
• It is irrelevant that the defendant could have
competed lawfully.
• Where a claimant has exploited his patent
by manufacture and sale he can claim (a)
lost profit on sales by the defendant that
he would have made otherwise; (b) lost
profit on his own sales to the extent that he
was forced by the infringement to reduce
his own price; and (c) a reasonable royalty
on sales by the defendant which he would
not have made.
• As to lost sales, the court should form
a general view as to what proportion of
the defendant’s sales the claimant would
have made.
• The assessment of damages for lost profits
should take into account the fact that the
lost sales are of ‘extra production’ and that
only certain specific extra costs (marginal
costs) have been incurred in making the
additional sales. Nevertheless, in practice
costs go up and so it may be appropriate to
temper the approach somewhat in making
the assessment.
• The reasonable royalty is to be assessed
as the royalty that a willing licensor and a
willing licensee would have agreed. Where
there are truly comparable licenses in the
relevant field these are the most useful
guidance for the court as to the reasonable royalty. Another approach is the profits available approach. This involves an
assessment of the profits that would be
available to the licensee, absent a license,
and apportioning them between the licensor and the licensee.
• Where damages are difficult to assess
with precision, the court should make the
best estimate it can, having regard to all
the circumstances of the case and dealing with the matter broadly, with common
sense and fairness.

26. Burden of proof: A claimant must ordinarily prove is:
• the extent of the infringement (usually the quantity
of infringing articles sold),
• the proportion of them that the claimant could and
would have sold but for the infringement and
• the profit the claimant would have made on the
sale of those articles.
Sometimes the rights holder does not market the goods
but holds the rights as negative rights; sometimes the
right relates to something that is not sold, such as a
manufacturing method. In these cases, the matter
becomes even more complicated.18
27. Causation – the ‘but for’ principle: The burden of
proving causation is on the plaintiff. The plaintiff’s
actual situation must be compared with a hypothetical
situation where infringement had not taken place. The
difference is the damage, but only insofar as the difference has actually been caused by the infringement.
RITE-HITE CORP. v. KELLEY CO. 56 F.3d 1538 (Fed.
Cir. 1995):
To recover lost profits damages, the patentee
must show a reasonable probability that, but
for the infringement, it would have made the
sales that were made by the infringer. Panduit
Corp v. Stahlin Bros Fibre Works Inc 575
F2d 1152 (6th Cir 1978), articulated a fourfactor test that has since been accepted as a
useful, but non-exclusive, way for a patentee
to prove entitlement to lost profits damages.
The Panduit test requires that a patentee
establish: (1) demand for the patented product; (2) absence of acceptable non-infringing
substitutes; (3) manufacturing and marketing
capability to exploit the demand; and (4) the
amount of the profit it would have made. A
showing under Panduit permits a court to
reasonably infer that the lost profits claimed
were in fact caused by the infringing sales,
thus establishing a patentee’s prima facie
case with respect to but for causation.
28. Depreciation of the IP right: Damages may consist of, or
include, the amount by which the relevant IP right has been

18. Paramount Pictures Corporation v. Hasluck
[2006] FCA 1431.

131

CASEBOOK ON IP ENFORCEMENT

depreciated by the infringement.19 The measure is sometimes used in copyright cases. Depreciation is, however,
not an exclusive measure and is potentially misleading.
RE AUTODESK AUSTRALIA PTY LTD AND AUTODESK,
INC v. CHARLES CHEUNG [1990] FCA 97:
In Sutherland Publishing Co Ltd v Caxton
Publishing Co Ltd [1936] 1 Ch 323 Lord Wright
MR said that the measure of damages, in a
copyright case, ‘is the depreciation caused
by the infringement to the value of the copyright as a chose in action’. This formulation
has often been cited in judgments. But it
is a formulation to be applied with caution
because it is potentially misleading. It will
usually be difficult, often impossible, for a
copyright owner to establish that a particular
unauthorized reproduction has caused a diminution in the capital value of a copyright. There
may be cases where this occurs, perhaps
because of low-quality reproductions or
saturation of the market. But, on other occasions, unauthorized reproduction may actually
increase the residual value of a copyright. For
example, the unauthorized broadcasting of a
song on radio may have the effect of increasing the demand for recordings of that song.
No doubt, it is because of these matters that
judicial warnings have sometimes been given
against applying Lord Wright’s test too literally.
Thus in Interfirm Comparison v Law Society
of New South Wales (1975) 6 ALR 445 Bowen
CJ in Eq. commented that it would be wrong
to treat the measure of damages stated by
Lord Wright as
having, in effect, the force and rigidity
of statutory provision. The purpose of
damages is to compensate the plaintiff for the loss which he has suffered
as a result of the defendant’s breach.
It would, in my opinion, be wrong to
regard it as the exclusive measure
of damages for breach of copyright
appropriate to all circumstances.

19. Cf Universal City Studios Incorporated v.
Mulligan (No.2) [1999] IEHC 165; Retail Systems
Technology v. Mc Guire & Ors [2007] IEHC 13.

132

29. Notional royalty: Another device is to permit the
plaintiff to claim a notional royalty from the defendant.
In some jurisdictions, it is a common-law measure of
compensation based on the user principle, while in
others there is a statutory basis for it.20 The U.S. Patent
Act, for instance, provides that a claimant is entitled to
damages that are not less than a reasonable royalty,21
and the EU directive has it as an option.22 (South African
law, until legislative intervention, did not regard notional
royalty as available.) In order to succeed, a plaintiff has
to prove what a reasonable royalty rate is in commercial practice. This may give rise to difficulties of proof,
because in some industries licensing is uncommon.
It has been said that this is the preferred method of
calculating damages and is used in Germany in more
than 90 percent of cases.23 The reason is obvious: it is
the method of calculation with the least risks.
CINCINNATI CAR CO. v. NEW YORK RAPID TRANSIT
CORP., 66 F.2d 592:
The whole notion of a reasonable royalty
is a device in aid of justice, by which that
which is really incalculable shall be approximated, rather than that the patentee, who
has suffered an indubitable wrong, shall be
dismissed with empty hands.
PUMA AG RUDOLF DASSLER SPORT v. GLOBAL
WARMING (PTY) LTD [2009] ZASCA 89:
The object of permitting a claim for damages
in the form of notional royalties is to obviate
proof of actual loss, something extremely
difficult to establish in intellectual property
infringement cases. All a claimant has to
prove is the number of infringing articles and
the reasonable royalty rate.

20. Paramount Pictures Corporation v. Hasluck [2006]
FCA 1431; Eight Mile Style v. National Party [2017]
NZHC 2603: Force India Formula One Team Ltd
v. 1 Malaysia Racing Team SDN BHD & Ors [2012]
EWHC 616 (Ch); Winnebago Industries Inc v. Knott
Investments Pty Ltd (No 4) [2015] FCA 1327.
21. 35 U.S.C. § 284; Tektronix, Inc. v. The
United States et al 552 F.2d 343 (1977).
22. Stowarzyszenie ‘Oławska Telewizja Kablowa’ w Oławie
v. Stowarzyszenie Filmowców Polskich w Warszawie
case C- 367/15: Polish law that permits damages at
twice the royalty rate is compatible with EU law.
23. BGH Case I ZR 87/07 – Zoladex 29 June 2009.

CIVIL REMEDIES

CASE NUMBER: 2004 (WA) NO.12032 Osaka District
Court, 26th Civil Division:24

then it remains necessary to prove causation, i.e., that
the profit was made because of the infringement.27

The court mentioned that, in general, there This remedy is not available in countries such as France
may be various ways to decide how to pay because it conflicts with the ordinary civil-law rule that
a royalty under a trademark license contract a harmed party is only entitled to be compensated to
between the trademark holder and the licens- the extent of its loss. However, it is now available in
ee, and the parties were free to choose one Germany, and Dutch law provides that, in addition to
by agreement. The court then concluded that claiming damages, the author or the author's successor
although such an agreement might not always in title may request the court to order anyone who has
exist in the case of trademark infringement, it infringed the copyright to hand over the profits originatwas appropriate to calculate the amount of ing from the infringement and to render account therefor.
reasonable royalty by determining a monthly
rate multiplied by the number of months 31. Statutory damages: Pre-established or statutory
during which the infringement continued, damages offer ‘an alternative and perhaps more effecunless the calculation method thus argued tive way to compensate rights holders and provide them
was particularly unreasonable.
with an expedient and economical way to prove and
recover the damage suffered through counterfeiting
The court explained that the amount of reason- and piracy.’ Some lawgivers, in an attempt to ensure
able royalty per unit period should be decided that rights holders receive their just recompense, have
by taking into consideration various factors done just that. For instance, the U.S. Copyright Act (s
concerned, including the value of the trade- 504(c)) gives the court a discretion to award a plaintiff
mark, the actual circumstances of transactions, up to USD30,000 with respect to one copyrighted work
and the details of the infringement. The court and USD150,000 if the court finds that the infringement
calculated the amount of damage taking into was willful. Because this is a matter of local law, it will
consideration the royalty rate usually imposed not be pursued in this text any further.
by a plaintiff on a third party for a non-exclusive
license (whether or not and to what extent the 32. Conversion: Conversion, as a remedy for copyright
trademarks were well known) and how the infringement, is regulated by statute in many countries
defendant used the marks.
and works on the assumption that the rights holder is
the owner of the infringing article.
30. Account of profits: Difference between accounts
and loss: The profit made by the defendant is seldom POLYGRAM PTY LTD & ORS v. GOLDEN EDITIONS
equivalent to the plaintiff’s loss. Some jurisdictions, PTY LTD & ANOR [1997] FCA 686:
such as common-law jurisdictions25 and Japan,26 allow
a claimant to claim the infringer’s gain.
Section 116 [of the Copyright Act] confers a
right to recover infringing copies or damages
The defendant is treated as if it conducted its business
for conversion of those copies. A copyright
on behalf of the rights holder. The claimant usually must
owner’s rights and remedies under s 116 are
make an election between this remedy and claiming
those which may be asserted in an action
its actual loss. The maximum payment that can be
for conversion or detention. The hypothesis
ordered is the total profit made by the defendant. But
on which the remedy is conferred by s 116 is
that the copyright owner is not the owner of
the infringing copy, but is treated by a fiction,
created by the section, of being entitled to sue
24. Internet link not available.
for damages for conversion or detention as if
25. Attorney General v. Blake and Another
he or she were the owner of the infringing copy.
[2000] UKHL 45; Monsanto Canada
Inc. v. Schmeiser, [2004] 1 SCR 902.
26. See 2001 (Ne) 6316, 2002 (Ne) 1980, September
26,2002 [Tokyo High Court] (‘Canadian Maple
Syrup’ case); 2012 (Ne) 10015, February 1, 2013
[Intellectual Property High Court] (‘Waste
Storage Device Grand Panel case’).

27. Dart Industries Inc v. Decor Corporation Pty
Ltd [1993] HCA 54; Design & Display Ltd v.
Ooo Abbott & Anor [2016] EWCA Civ 95.

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CASEBOOK ON IP ENFORCEMENT

The measure of damages in conversion is
generally the value of the infringing copy at
the date of conversion. Conversion damages
are awarded on the basis that the infringing
copy is deemed to be the property of the
copyright owner.

consideration and the discretion to award
them should be most cautiously exercised.
Furthermore, the quantum awarded should
not be excessive but should be reasonable, in
keeping with the Canadian experience in the
award of relatively modest punitive damages.

33. Punitive damages: Punitive damages are available
in some common-law jurisdictions against a deliberate
infringer who has behaved in a particularly appalling
manner.

TIME INCORPORATED v. LOKESH SRIVASTAVA 2005
(30) PTC 3:28

LUBRIZOL CORP. v. IMPERIAL OIL LTD [1996] 3 FCR 40,
1996 CanLII 4042 (FCA):
It is now clear that Canadian law recognizes
three distinct types of damages. First, there
are general or compensatory damages, which
are meant to reimburse a victim of wrongdoing for any losses suffered, both pecuniary
and non-pecuniary.
Second, there are aggravated damages,
which are also compensatory, but which may
be awarded only in cases where ‘defendants’
conduct has been particularly high-handed or
oppressive, thereby increasing the plaintiff’s
humiliation and anxiety’.

134

Coming to the claim of punitive and exemplary damages for the flagrant infringement
of the plaintiff’s trademark, this Court is of
the considered view that a distinction has to
be drawn between compensatory damages
and punitive damages. The award of compensatory damages to a plaintiff is aimed at
compensating him for the loss suffered by
him whereas punitive damages are aimed at
deterring a wrongdoer and the like-minded
from indulging in such unlawful activities.
Whenever an action has criminal propensity
also the punitive damages are clearly called
for so that the tendency to violate the laws
and infringe the rights of others with a view to
make money is curbed. The punitive damages
are founded on the philosophy of corrective
justice and as such, in appropriate cases
these must be awarded to give a signal to the
wrongdoers that law does not take a breach
merely as a matter between rival parties but
feels concerned about those also who are
not party to the lis [litigation] but suffer on
account of the breach.

Third, punitive or exemplary damages, unlike
general and aggravated damages, are not
compensatory; their aim is ‘to punish’ a defendant and to express ‘outrage at the egregious
conduct of the defendant’. They are akin to a
civil fine which is meant to ‘act as a deterrent
to the defendant and to others from acting
in this manner’. Exemplary damages may be
awarded only ‘where the combined award of
general and aggravated damages would be
insufficient to achieve the goal of punishment
and deterrence’. In addition, it is necessary for
such an award to ‘serve a rational purpose’,
that is, ‘was the misconduct of the defendant
so outrageous that punitive damages were
rationally required to act as deterrence’?

This Court has no hesitation in saying that
the time has come when the Courts dealing actions for infringement of trademarks,
copyrights, patents, etc. should not only grant
compensatory damages but award punitive
damages also with a view to discourage and
dishearten lawbreakers who indulge in violations with impunity out of lust for money so
that they realize that in case they are caught,
they would be liable not only to reimburse

The standard of proof in punitive or exemplary
damage cases is the civil standard of proof on
the balance of probabilities, not the criminal
standard of proof beyond a reasonable doubt.
Nevertheless, an award of exemplary damages should always receive the most careful

28. India. Quoted with approval in Hero Honda Motors
Ltd. v. Shree Assuramji Scooters 2006 (32) PTC
117. Although overruled in Hindustan Unilever Ltd.
v. Reckitt Benckiser India Ltd, it has been followed
repeatedly in cases such as M/S Rspl Health Pvt
Ltd v. M/S M.D Chemicals on 28 July, 2017.

CIVIL REMEDIES

the aggrieved party but would be liable to
pay punitive damages also, which may spell
financial disaster for them.
34. Statutory punitive damages: Typical in common-law
countries is a provision in copyright laws that provides
for additional damages.29 It is available in the case of
flagrancy, which implies ‘the existence of scandalous
conduct, deceit and such like; it includes deliberate
and calculated copyright infringement.’
MICROSOFT CORPORATION v. GOODVIEW
ELECTRONICS PTY LIMITEd [2000] FCA 1852:30
The applicants claim that additional damages
should be awarded under s 115(4) of the
Copyright Act to take into account the ‘calculated and deliberate’ nature of the infringements by the respondents. Section 115(4)
provides that, where an infringement of copyright is established, the court may award
additional damages if it is satisfied that it is
proper to do so, having regard to:
• the flagrancy of the infringement;
• any benefit shown to have accrued to the
defendant by reason of the infringement;
and
• all other relevant matters.
For the purposes of s 115(4), flagrant conduct
will include conduct that is ‘deliberate, deceitful and serious’. The structure of s 115(4),
however, demonstrates that it is not necessary to establish that a breach demonstrates
a particular degree of flagrancy in order for
additional damages to be awarded. That is,
flagrancy is not a threshold which must be
crossed, but merely one of the factors to be
taken into account in calculating an award
of damages.
In the present case, the conduct of the respondents can properly be described as flagrant in
the sense referred to above. A defense filed

29. Winnebago Industries Inc v. Knott Investments Pty Ltd
(No 4) [2015] FCA 1327. U.S. law, which is not typical in
this regard, permits a court to increase the award up
to three times the actual damages. 35 U.S.C. § 284.
30. Microsoft Corporation v. PC Club Australia Pty Ltd
[2005] FCA 1522.

in these proceedings was proved to be false.
The respondents have benefited financially
from the sale of infringing copies of various
Microsoft products. The profit margin created
by the respondents was substantial in a very
competitive industry. [It is] relevant to take into
account the fact that computer software is
easy to duplicate, distribute and conceal. This
makes detection and proof of infringement
a substantial task.31 The court has a broad
unilateral discretion in relation to the quantum
of additional damages. I regard this as a strong
case for an award of additional damages.
WELLINGTON NEWSPAPERS v. DEALERS GUIDE
(1984) 4 IPR 417:32
What is flagrant must, of course, be a question
of fact and degree to be decided against the
background of relevant facts. The additional
damages are to be awarded where the court is
satisfied that the remedies otherwise provided
by the section for an action brought under
it do not provide effective relief. This would
suggest that there may be some damage or
loss suffered by a plaintiff which compensatory damages, injunction, the taking of
accounts or other remedy would not assuage.
It is difficult to see what is contemplated by
the additional damage unless it is something
in the nature of punishment to the defendant
for the hurt done to the plaintiff which the
conventional remedies would not provide.
How otherwise would the flagrancy of the
infringement be relevant?
35. Willfulness: Some statutes require proof of willfulness before punitive damages may be imposed on a
defendant. And others provide that a defendant ‘in

31. The full quotation reads: ‘Turning to sub-para (iii),
one matter which is, in my opinion, relevant, is the
difficulty computer program owners face in trying to
protect their copyrights. Computer software is easy
to duplicate, distribute and conceal. Particularly in a
case where a person is supplying computer programs
as an adjunct to other equipment and is therefore
not advertising the supply, infringements may be
difficult to detect. And, when they are detected,
proof of the facts may be a substantial task.’
32. Quoted in Microsoft Corporation v. Able
System Development Ltd T/A Able Computer
Centre [2002] HKCFI 240; Eight Mile Style
v. National Party [2017] NZHC 2603.

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CASEBOOK ON IP ENFORCEMENT

proceedings for infringement of a patent, damages
shall not be awarded, and no order shall be made or an
account of profits, against a defendant or defender who
proves that at the date of the infringement he was not
aware, and had no reasonable grounds for supposing,
that the patent existed.’33

Courts must also have the authority to order that materials and implements, the predominant use of which has
been in the creation of the infringing goods be, without
compensation of any sort, disposed of outside the
channels of commerce in such a manner as to minimize
the risks of further infringements.

E. Disposal of infringing
and counterfeit goods

In considering requests for disposal or destruction,
the need for proportionality between the seriousness
of the infringement and the remedies ordered as well
as the interests of third parties must be considered.

36. The TRIPS Agreement: The TRIPS Agreement
contains two provisions relating to the disposal or
destruction of goods that have been found to infringe
IP rights. The one, Article 46, is of general application,
i.e., it applies to the disposal or destruction of infringing
goods, irrespective of whether they are counterfeit. The
other, Article 59, deals with imported counterfeit goods
in the hands of the customs authorities.
The two provisions are interrelated in the sense that
Art 59 refers to Art 46. This has given rise to interpretation difficulties. A Panel Report, prepared under the
auspices of the WTO, is invaluable in understanding
these provisions.34
On a practical level, there are issues concerning the
methods used to dispose of or destroy such goods.
These would include environmental issues, but they
fall outside the scope of this work.35
37. Terms of Art 46 of TRIPS: To create an effective
deterrent to infringement, the courts must have the
authority to order that goods found to be infringing,
without compensation of any sort, be disposed of
outside the channels of commerce in such a manner
as to avoid any harm caused to the rights holder, or,
unless this would be contrary to existing constitutional
requirements, destroyed.

33. E.g., U.K. Patents Act 1977 s 62(1). In the
United States: Halo Electronics, Inc. v. Pulse
Electronics, Inc 579 U. S. ____ (2016).
34. WTO Panel Report: China – measures
affecting the protection and enforcement of
intellectual property rights 26 January 2009.
35. David Blakemore, A Study Relating to Existing
Methods of Disposal and Destruction of
Counterfeit Goods and Pirated Goods within
the Asia Pacific Region; Martin Guard, 'The
Environmentally Safe Disposal and Destruction
of Intellectual Property Infringing Goods.'

136

Removal of a counterfeit trademark is insufficient,
other than in exceptional cases, to permit release of
the goods into the channels of commerce.
38. Application of Art 46: The Article is a general
remedy that applies to all types of IP infringement,
whether patent, designs, trademarks or copyright. It
is as much a remedy as awards of damages or the
grant of interdicts or injunctions. By its very nature, an
order destruction or disposal requires a judicial finding
of infringement.
39. Remedies under Art 46 are discretionary: The
discretion to order disposal or destruction is not a
free discretion: A disposal order should ensure that
disposal will be outside of channels of commerce and
in a manner that avoids harm to the rights holder; and, if
this is not possible, destruction should be ordered. The
rights holder must initiate the process and not ex officio.
In the exercise of this discretion, the judicial authority
must consider (a) that these remedies are supposed
to act as deterrents; (b) the issue of proportionality;
and (c) the interests of third parties, such as innocent
importers and the public. There is a limitation on this
discretion because, as far as counterfeit trademark
goods are concerned, the simple removal of the trademark unlawfully affixed is not sufficient, other than in
exceptional cases, to permit release of the goods into
the channels of commerce.
40. Text of Art 59:
Without prejudice to other rights of action
open to the right holder and subject to the
right of the defendant to seek review by a
judicial authority, competent authorities shall
have the authority to order the destruction or
disposal of infringing goods in accordance
with the principles set out in Article 46.

CIVIL REMEDIES

In regard to counterfeit trademark goods, the
authorities shall not allow the re-exportation
of the infringing goods in an unaltered state
or subject them to a different customs procedure, other than in exceptional circumstances.

interests of third parties shall be taken into account.’
• In regard to counterfeit trademark goods, the simple
removal of the trademark unlawfully affixed shall
not be sufficient, other than in exceptional cases,
to permit release of the goods into the channels
of commerce.

41. Scope of Art 59: This Article is a Customs provision
and applies to importation only. This means that it need
not be made applicable to goods seized by Customs
where those goods are destined for export or are being
trans-shipped. The panel held as follows:

The discretion is not limited to disposal or destruction
because these remedies are not exhaustive. There
is, however, a limitation on discretion: re-exportation
may not be used as a method of disposal other than
in exceptional circumstances. The exercise of discreTo be applicable, the goods must be ‘infring- tion by the administrative authority must be subject to
ing goods’ within the terms of Art 51 which judicial review.
means that they must either be ‘counterfeit
trademark goods’ or ‘pirated copyright goods’.

42. Procedure: Initiation of the process leading to
disposal or destruction must be by the IP rights holder.
Before the Article comes into play, there must have
been a positive determination by the relevant administrative authority that the goods are counterfeit.
43. Authority to order disposal or destruction vests
in Customs: The obligation on member states is to
give the necessary authority to Customs. There is
no obligation on Customs to ‘exercise’ that authority.
It must, however, exercise its discretion. ‘Disposal’
means disposal ‘outside the channels of commerce.’
The responsibility of Customs is to ensure that the way
the goods are disposed of outside the channels of
commerce is designed (in terms of purpose, not result)
in such a way that it will comply with the principle. It
may entrust the actual disposal to another body, and it
is not responsible for acts of such body in carrying out
the disposal otherwise than in the authorized manner.
44. Nature of the discretion: Discretion must be exercised in terms of the Art 46. These are the principles
as identified by the panel:
• Authorities shall have the authority to order disposal
or destruction ‘without compensation of any sort.'
• Authorities shall have the authority to order disposal
‘outside the channels of commerce in such a manner
as to avoid any harm caused to the rights holder.'
• Authorities shall have the authority to order
destruction ‘unless this would be contrary to
existing constitutional requirements.’
• In considering such requests, ‘the need for proportionality between the seriousness of the infringement and the remedies ordered as well as the
137

CRIMINAL ENFORCEMENT OF IP RIGHTS

Chapter 15
Criminal enforcement of IP rights
A. Introduction

140

B. Trademark counterfeiting

143

C. Copyright piracy

150

D. Sentencing

154

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CASEBOOK ON IP ENFORCEMENT

A. Introduction1

different types of IP rights, such as copyright, patent,
and design infringement. However, the term is technically accurate in the trademark area only. A trademark
that cannot be distinguished in its essential aspects
from a registered trademark, and thereby infringes the
rights of the owner of the trademark in question, is a
counterfeit trademark.

1. Source of the obligation to criminalize: The international obligation to provide for criminal sanctions for
the infringement of IP rights derives from the TRIPS
Agreement.2 More particularly, Article 61 requires of
member states to provide for criminal procedures and
penalties to be applied at least in cases of willful trademark counterfeiting AND copyright piracy, committed 4. Piracy relates to copyright: Piracy, on the other hand,
on a commercial scale.
concerns copyright infringement. Commonly, it refers
to clear-cut unauthorized infringement of printed works,
Penalties should include imprisonment and/or mone- sound recordings, audio-visual works and computer
tary fines sufficient to provide a deterrent, consistently software. Pirated copyright goods are copies made
with the level of penalties applied for crimes of a corre- without the consent of the rights holder and are made
sponding gravity and, in appropriate cases, the seizure, directly or indirectly from an article where the making
forfeiture and destruction of infringing goods and of of that copy would have constituted an infringement
any materials and implements the predominant use of a copyright or a related right.
of which has been in the commission of the offence.
R v. JOHNSTONE [2003] UKHL 28:
2. Counterfeiting is an age-old problem: Part of the
fame of Archimedes (287–212 BCE) rests on his discovCounterfeit goods and pirated goods are big
ery of the principle that bears his name. His king had
business. Counterfeit goods comprise cheap
ordered a gold crown but suspected that the crown
imitations of the authentic article, sold under
delivered by the goldsmith was counterfeit containthe trademark of the authentic article, as with
ing silver. Having struck the answer in his bathtub,
imitation ‘Rolex’ watches.
Archimedes is reputed to have run nakedly into the
street, calling ‘Eureka, Eureka’ (I have found it, I have
Pirated goods comprise illicit copies of the
found it). Concern about the quality of drugs is as old as
authentic article which are not sold under the
drugs themselves, says the World Health Organization.
trademark of the authentic article. This would
Writings from as early as the fourth century BCE warn
happen, for instance, when a person makes
about the dangers of adulterated drugs and, in the
and sells unauthorized copies of computer
first century CE, Dioscorides, a celebrated Greek
software which is the subject of copyright.
physician, botanist, pharmacologist and surgeon who
Thus, in the context of music recordings, a
traveled with the armies of the Roman Emperor Nero,
counterfeit compact disc is an unlawful copy
identified fake herbal drugs in his De Materia Medica,
of, say, a Virgin compact disc sold ostensibly
the precursor of modern pharmacopeias, and advised
as a Virgin product. A pirated compact disc is
on their detection.
an unlawful copy of, in my example, a Virgin
compact disc which is sold, not as a Virgin
3. Counterfeiting relates to trademarks: As the referproduct, but under a different brand name.
ence to Archimedes shows, counterfeiting is concerned
with forgery, originally of coins. It still has that meaning 5. Other IP rights: Article 61 of the TRIPS Agreement
but is now used in many senses. In the context of IPRs, does not require criminal sanctions for patent infringethe term ‘counterfeiting’ is used in a generic sense with ment but leaves it to member states to criminalize,
reference to unauthorized appropriation of a variety of especially in the case of willful infringement on a
commercial scale. Although countries such as Japan,
Thailand and Brazil do criminalize patent infringement,
this is not found in most common-law jurisdictions.3
1.

2.

140

Much material is to be found at WIPO’s Advisory
Committee on Enforcement (ACE) site: www.
wipo.int/enforcement/en/ace/. See, in general,
too: Prosecuting Intellectual Property Crimes
(Fourth Edition, Office of Legal Education
Executive Office for United States Attorneys).
http://www.tripsagreement.net/?page_id=40.

3.

Irina D Manta, ‘The Puzzle of Criminal Sanctions
for Intellectual Property Infringement’, Harvard
Journal of Law & Technology (2011).

CRIMINAL ENFORCEMENT OF IP RIGHTS

Industrial design registrations may also be protected
by criminal sanctions but, once again (except in those
countries that criminalize patent infringement), it is not
done as a rule. Activities related to counterfeiting, that
are not necessarily so treated by enforcement laws are
parallel importation and factory over-runs.4

of trade, or that custom, which, without the
improper act, would have flowed to the person
who first used, or was alone in the habit of
using the particular name or mark.

I think that the principle on which both the
courts of law and of equity proceed, in granting relief and protection in cases of this sort
[an unregistered trademark case], is very
well understood. A man is not to sell his own
goods under the pretence that they are the
goods of another man; he cannot be permitted to practice such a deception, nor to use
the means which contribute to that end. He
cannot, therefore, be allowed to use names,
marks, letters or other indicia, by which he
may induce purchasers to believe, that the
goods which he is selling are the manufacture of another person. I have no doubt that
another person has not the right to use that
name or mark for the purposes of deception,
and in order to attract to himself the course

Professor Waddams,5 speaking of the use of
terms such as ‘piracy’, ‘robbery’ and ‘theft’ to
stigmatize the conduct of alleged infringers
of intellectual property rights, describes ‘the
choice of rhetoric’ as ‘significant, showing the
persuasive power of proprietary concepts’.
He also remarks:

AUTODESK INC, AUTODESK AUSTRALIA PTY
LIMITED, MICROSOFT CORPORATION AND
6. The criminalization of counterfeiting and piracy did MICROSOFT PTY LIMITED v. MICHAEL YEE AND
not originate with TRIPS: There are historical anteced- PETER LEUNG [1996] FCA 1774:
ents for the criminalization of counterfeiting. Trademark
counterfeiting has been criminalized since, at least, the
An element of penalty is an accepted feature
end of the 19th Century. For example, the U.S. Act of
of copyright legislation. The infringer has been
August 14, 1876, already punished the counterfeiting
regarded, at least since the eighteenth century,
of and dealing in counterfeit trademark goods. Most, if
as a ‘pirate’, who ought to be treated accordnot all, countries that fell under the British Crown had
ingly. In Millar v Taylor (1769) 4 Burr 2303; 98
laws with a similar effect. These were statutes that
ER 201 reference was made to ‘the whole
dealt with merchandise marks and false trade descripjurisdiction exercised by the Court of Chancery
tion. (These statutes are still common and basically
since 1710, against pirates of copies’; and, in
unchanged.) Copyright infringement, likewise, was
the same case it was said that the statute
criminalized since the beginning of the 20th century in
of Queen Anne of 1709, from which modern
all British dependencies.
copyright law takes its origin, ‘secures [the
property of the copyright owner] by penalties’.
7. TRIPS did not introduce any revolutionary principles:
The Copyright Act 1968 is entirely in keeping
Counterfeiting may be regarded as a species of fraud
with traditional views of the matter.
– not necessarily on the consumer but on the state or
the rights holder. And piracy is often referred to as a The use of hyperbole is deprecated by some and may
species of theft (albeit of intangible property). But this even be counterproductive.
does not mean it is theft.
NETWORK TEN PTY LTD v. TCN CHANNEL NINE
PERRY v. TRUEFITT (1842) 49 ER 749; (1842) 6 Beav 66: [2004] HCA 14:

4.

R v. C [2016] EWCA Crim 1617 and R v. M & Ors
[2017] UKSC 58.

Against the merits of enlarging the
property rights of one person or class
of persons must always be set the loss
of freedom of action that such enlargement inevitably causes to others.
8. Reasons for criminal sanctions for IPR infringement: Intellectual property rights are private rights,
and it is legitimate to ask whether these rights should

5.

Dimensions of Private Law: Categories and Concepts
in Anglo-American Legal Reasoning (2003).

141

CASEBOOK ON IP ENFORCEMENT

be enforced by means of criminal sanctions and why
civil remedies do not suffice.6 The short answer is that
criminal law, in general, protects private rights against
infringement if there is a public policy element involved.
A typical example is theft.
9. Public interest issues: Public interests wider than
the mere protection of private rights are at stake in the
case of counterfeiting.7 These include the protection
of public health and safety,8 tax and customs income,9
local and regional industries, foreign investment and
investor confidence, international trade relations and
the prevention of corruption and organized crime.10
SLINEY v. HAVERING [2002] EWCA Crim 2558 (20
November 2002):
Implicit in the provisions of sections such
as s 92 [of the Trademarks Act] itself is the
objective not only of protecting the ownership
rights relating to registered trademarks but
also of enhancing trade and promoting a legitimate economy and of providing consumer
protection. Trademarks have a value, often
a very great value. People commonly buy
products bearing a particular trademark just
because the products bear that trademark:
as representing or connoting some or all of
the characteristics of reliability, quality, and
fashion. It is precisely for that reason that
there are those who seek to counterfeit goods
bearing such marks: counterfeiting being an
ever-increasing problem.
Moreover, there are also important considerations of public safety involved: counterfeit
goods (in the form of toys or packaged foodstuffs or motor vehicle parts for example) have
in numerous ways over the years proved to
be highly dangerous.

6.

Andreas Rahmatian, ‘Trade mark infringement as a
criminal offence,’ 67 (4) Modern Law Review, p. 670.
7. Michael Blakeney, ‘Enforcement of Intellectual
Property Rights: Challenges’ – WIPO.
8. ‘Counterfeiting: A Global Spread, a Global
Threat’ – UNICRI at http://www.unicri.it/news/
article/0712-3_counterfeiting_crt_foundation.
9. OECD/EUIPO, Trade in Counterfeit
and Pirated Goods, 2016.
10. Michael Blakeney, ‘Policy Responses to
the Involvement of Organized Crime.’

142

A degree of protection, both in the mercantile
and public interest, in respect of trademarks,
going beyond the civil remedies available, is
plainly desirable.
10. Alternative charges: The acts that give rise to
charges of counterfeiting or piracy may also give
rise to other alternative or additional charges, some
of which might be easier to establish. In this regard,
the following may be considered: fraud, customs and
excise contraventions; tax evasion;11 racketeering and
money laundering; food and drug legislation; laborrelated legislation; and trading offenses. In addition,
laws like those dealing with proceeds of crimes may
usefully be employed.
11. Liability of accessories: The liability of accessories
can be civil or criminal and the principles are, depending on the question of mens rea and particular criminal
legal precepts, more or less the same. An example
would be the liability of landlords for the infringing
acts of tenants. It is a possibility in some jurisdictions,
though the legal basis varies. It is easier to attach civil
liability than criminal liability because of the requirement
of guilty knowledge and the lesser burden of proof.12
FONOVISA INC. v. CHERRY AUCTION, INC. 76 F.3d
259 (9th Cir. 1996):
This is a copyright and trademark enforcement action against the operators of a swap
meet, sometimes called a flea market, where
third-party vendors routinely sell counterfeit
recordings that infringe on the plaintiff’s copyrights and trademarks.
For purposes of this appeal, it is undisputed
that Cherry Auction operates a swap meet
in Fresno, California, similar to many other
swap meets in this country where customers come to purchase various merchandise
from individual vendors. The vendors pay a
daily rental fee to the swap meet operators
in exchange for booth space. Cherry Auction
supplies parking, conducts advertising and

11. OECD/EUIPO, Trade in Counterfeit
and Pirated Goods, 2016.
12. Case C494/15 Tommy Hilfiger Licensing LLC
v. Delta Center a.s; Louis Vuitton Malletier S.A.
v. Zekria Wakilzada, 2017 ONSC 2409 (CanLII).

CRIMINAL ENFORCEMENT OF IP RIGHTS

retains the right to exclude any vendor for
any reason, at any time, and thus can exclude
vendors for patent and trademark infringement. In addition, Cherry Auction receives an
entrance fee from each customer who attends
the swap meet.
There is also no dispute for purposes of this
appeal that Cherry Auction and its operators
were aware that vendors in their swap meet
were selling counterfeit recordings in violation of Fonovisa’s trademarks and copyrights.
Although the Copyright Act does not expressly impose liability on anyone other than direct
infringers, courts have long recognized that in
certain circumstances, vicarious or contributory liability will be imposed.
Similar principles have also been applied in
the trademark field. The Seventh Circuit, for
example, has upheld the imposition of liability for contributory trademark infringement
against the owners of a flea market similar to
the swap meet operated by Cherry Auction.
Vicarious Copyright Infringement: The
concept of vicarious copyright liability was
developed as an outgrowth of the agency
principles of respondeat superior. Noting
that the normal agency rule of respondeat
superior imposes liability on an employer
for copyright infringements by an employee,
the court endeavored to fashion a principle
for enforcing copyrights against a defendant
whose economic interests were intertwined
with the direct infringer’s, but who did not
actually employ the direct infringer.

outgrowth of enterprise liability and imposes
liability where one person knowingly contributes to the infringing conduct of another.
There is no question that plaintiff adequately
alleged the element of knowledge in this
case. The disputed issue is whether plaintiff adequately alleged that Cherry Auction
materially contributed to the infringing activity. We have little difficulty in holding that the
allegations, in this case, are sufficient to show
material contribution to the infringing activity.
Indeed, it would be difficult for the infringing
activity to take place in the massive quantities
alleged without the support services provided
by the swap meet. These services include,
inter alia, the provision of space, utilities, parking, advertising, plumbing, and customers.
Moreover, we agree with the Third Circuit’s
analysis that providing the site and facilities
for known infringing activity is sufficient to
establish contributory liability.
Contributory Trademark Infringement: Just as
liability for copyright infringement can extend
beyond those who actually manufacture or
sell infringing materials, our law recognizes
liability for conduct that assists others in
direct trademark infringement. Contributory
trademark liability is applicable if defendant
(1) intentionally induces another to infringe
on a trademark or (2) continues to supply a
product knowing that the recipient is using the
product to engage in trademark infringement.

B. Trademark counterfeiting 13

The test was more clearly articulated in a later 12. Counterfeiting is a crime: Trademark infringecase as follows: ‘even in the absence of an ment by means of counterfeiting is a crime, while
employer-employee relationship one may be ‘ordinary’ trademark infringement is a statutory civil
vicariously liable if he has the right and ability wrong. Counterfeiting is regarded as a species of
to supervise the infringing activity and also fraud. However, counterfeiting is not possible unless
has a direct financial interest in such activities.’ the particular action does not also amount to trademark infringement.
Contributor y Copyright Infringement:
Contributory infringement originates in tort
law and stems from the notion that one who
directly contributes to another’s infringement
13. David J. Goldstone and Peter J. Toren, ‘The
should be held accountable. Contributory
criminalization of trademark counterfeiting,’
Connecticut Law Review, Vol. 31, No. 1, 1998.
infringement has been described as an
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R v. JOHNSTONE [2003] UKHL 28:
Counterfeiting, piracy and bootlegging are
not exact terms but all involve deliberate,
and generally fraudulent, infringement of
various intellectual property rights—notably trademarks, copyright, design right and
performing rights.
13. Counterfeiting defined: The TRIPS Agreement
defines ‘counterfeit trademark goods’ in footnote 14 –

As for ‘counterfeit goods’, these must bear
a mark which is the same or essentially the
same as the registered mark and it must be
used on goods which are of the same type
as those the subject of the registration. It is
apparent that this definition includes but is not
limited to fakes. It also encompasses the use
of the registered mark on goods which are
of the same type as those the subject of the
registration even if the trademark holder is not
using the mark on those goods himself. It is,
however, limited to goods which, by virtue of
the fact they bear the offending mark, infringe
the trademark holder’s rights.

to mean any goods, including packaging,
bearing without authorization a trademark
which is identical to the trademark validly registered in respect of such goods, or 15. TRIPS provisions: Art 61 of the TRIPS Agreement,
which cannot be distinguished in its essential as mentioned, contains the primary obligation to crimiaspects from such a trademark, and which nalize trademark counterfeiting ‘in cases of willful
thereby infringes the rights of the owner of trademark counterfeiting on a commercial scale.’ The
the trademark in question under the law of following issues arise in this context:
the country of importation.
• The application of the mark to goods and services.
The reference in this footnote to the country of importa• To be entitled to protection, the mark must be a
tion is because the definition appears in the context of
‘registered’ trademark.
customs obligations, and not elsewhere.
• The registration must be valid.
• Counterfeiting must be without authorization.
14. Counterfeiting is more than trademark infringe• Counterfeiting must be willful.
ment: All trademark infringement is not counterfeiting.
• Counterfeiting must be on a commercial scale.
Trademark infringement, in general terms, is commit• The accused mark must be ‘identical to’ or indisted if the infringer’s mark is so close to the registered
tinguishable ‘in its essential aspects from’ the
mark that there is a likelihood of confusion between the
registered trademark.
marks. For counterfeiting, the likelihood of confusion
is generally not enough; the two marks must either 16. Goods and services: The TRIPS Agreement requires
be identical or indistinguishable. In other words, the not only the protection of goods marks against counprotected goods must be imitated in such a manner terfeiting but also service marks. However, because
and to such a degree that the infringing goods are of an interpretation issue, most countries appear to
substantially identical copies of the protected goods fail to criminalize counterfeit service marks. Others
or a colorable imitation thereof so that the infringing do not appear to distinguish between the two types
goods are intended to cause confusion.
of marks for present purposes and, accordingly, by
implication, include service marks, while a country such
NOKIA CORPORATION v. REVENUE & CUSTOMS as Singapore does so in its definition of a counterfeit
[2009] EWHC 1903 (Ch) (27 July 2009):
trademark, which includes a registered trademark as
applied to services.
It can be seen that the Regulation [EU Council
Regulation 1383/03, the ‘Customs Regulation Countries that rely on trade description or merchandise
on IPR Enforcement’] is concerned with marks acts for dealing with counterfeiting, such as
three categories of infringing goods, namely Nigeria, Malta and Malaysia, sometimes also criminalize
‘counterfeit goods’ which infringe a registered the use of false trade descriptions in relation to services.
trademark; ‘pirated goods’ the making of Whether counterfeiting is possible when the trademark
which would have infringed a copyright or is used on dissimilar goods or services depends on
design right; and goods which infringe a each country’s laws.
patent or other miscellaneous rights.
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17. Local laws: Each country is obviously entitled to
define counterfeiting in its own terms and to prescribe
sentences within the parameters set by the TRIPS
Agreement. The most authoritative judgment on the
subject came from the House of Lords (now the
Supreme Court) in the United Kingdom in a judgment
on the interpretation of the Trade Marks Act 1994
Chapter 26.14
R v. JOHNSTONE [2003] UKHL 28:
• The prosecution must prove the special
mens rea of ‘with a view to gain’ (including
causing loss to another). There is no civil
equivalent.
• The offence-creating provisions apply only
in respect of goods (whereas the civil provisions cover goods or services).
• The offence-creating provisions refer to a
sign ‘identical to, or likely to be mistaken
for’ the registered mark. This is a simpler
and narrower formulation than [the civil
test of ‘likelihood of confusion on the part
of the public’].
• A defendant’s belief in his innocence is
irrelevant to civil liability.
18. Registered trademark: The second requirement
is that the counterfeited trademark must have been
‘registered.' For imported goods, this means registered
in the jurisdiction into which the goods are imported.
Otherwise, it refers to the jurisdiction where the prohibited dealing takes place. The TRIPS Agreement does
not require that counterfeiting of famous foreign trademarks must be criminalized.15
19. Valid registration: Because of a general presumption that a trademark registration is valid, the effect of
this requirement for counterfeiting would, generally,
mean that the accused must be able to attack the
validity of the registration of the mark as a defense to
the charge of counterfeiting. But by the very nature of
things, counterfeiters do not bother to counterfeit weak
marks – they prefer to use the magnetism of famous
and strong marks, because that is where the money
lies. Many laws do not require a ‘valid’ registration

14. http://www.wipo.int/wipolex/en/
text.jsp?file_id=127270.
15. See Chapter 5. Some national laws do, however.

but define counterfeiting with reference to ‘registered’ trademarks.16
20. Counterfeiting presupposes trademark infringement: Counterfeiting is by its very nature trademark
infringement, and there cannot be counterfeiting without infringement. But something more than infringement is required for counterfeiting.
PUMA AG RUDOLPH DASSLER SPORT v. RAMPAR
TRADING (PTY) LTD AND OTHERS (59/10) [2010]
ZASCA 140:
It is now necessary to consider whether the
shoes were counterfeit. As mentioned above,
the answer has to be sought in para (b) of
the definition of counterfeiting [in the South
African Counterfeit Goods Act]. In view of
the common cause facts, the only remaining issue is whether the marks applied to
Rampar’s shoes are ‘the subject matter’ or ‘a
colourable imitation’ of any of Puma’s registered trademarks. To be ‘the subject matter’
means, as mentioned, that the Rampar mark
must be identical to a Puma trademark. An
‘imitation’, in turn, is by definition a copy, and
the adjective ‘colourable’ reinforces the fact
that the copy is counterfeit. In other words,
the definition says no more than that a counterfeit must be counterfeit. That is why it
must be ‘calculated to be confused with’ or
‘taken as being’ the registered mark and why
it involves deliberate and fraudulent infringement of trademarks.
This test is not the same as the standard trademark infringement test of ‘likely to deceive or
cause confusion’ but counterfeiting, by its
very nature, amounts a fortiori to trademark
infringement. Reference during argument to
the test to be applied to determine the likelihood of deception and confusion, confusing
similarity, to passing-off principles, imperfect recollection, momentary confusion, the
prospective purchaser, that a substantial
(ie, not negligible) number of people have
to be confused, evidence about the public’s
perception and how Rampar intended to

16. But see the Indian Trademarks Act 1999 sect 113 at
http://www.wipo.int/wipolex/en/details.jsp?id=2400.

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market the goods was, accordingly, singularly
out of place and unhelpful.
21. Actual confusion is not required: It is known that
many persons buy counterfeit goods willingly. However,
an accused may not rely on the fact that the purchaser
was not or could not have been misled because of, for
instance, the price or low quality of the goods or the
location of the seller’s premises.
BOULTER, R. v. [2008] EWCA Crim 2375 (07 October
2008):
In our judgment, it is impossible to read
Parliament as having intended that, where
there is straightforward counterfeiting of
goods and their registered trademark, it is
open to a defendant to advance a defence
that the quality was so poor as not to give
rise to any risk of confusion, not only because
that would fail to recognize the distinction
drawn between section 10(1) and 10(2) but
it would go a considerable way to assist the
vice which Lord Nicholls, at any rate, thought
that Parliament had attempted to combat,
namely the counterfeiter who sells his wares
as ‘genuine fakes’.
In the present case, it is not and could not
seriously be suggested that the use of the EMI
logo or other logos was anything other than a
replication of those badges as signs of origin
registered by the proprietors. It had no other
rational purpose. Whether the reproductions
were poor, and whether they were actually
likely to deceive, is in our judgment neither
here nor there, and for good reason.

different type of shoe. One can also conceive of a
situation in which the rights holder has not used the
trademark at all. In these cases, the infringer (because
it will be trademark infringement), although using the
identical trademark, did not clone goods bearing a
trademark of the rights holder. Some argue that unless
trademarked goods have been cloned, they cannot
be ‘counterfeit’ and that cloning of the mark itself and
use on goods covered by the mark is not enough. The
answer depends on the terms of national law.17
PUMA AG RUDOLPH DASSLER SPORT v. RAMPAR
TRADING (PTY) LTD AND OTHERS (59/10) [2010]
ZASCA 140:
Shorn of verbiage [the South African provision] covers any particular class or kind of
goods which may bear a registered trademark,
but has not yet been produced or to which it
has not yet been applied with the authority of
or by the IP owner. In other words, the goods
protected are not actual goods but notional
goods, ie, goods to which the owner could
have applied the trademark. It means that
counterfeiting is possible without cloning and
the fact that Puma may not have produced a
shoe bearing the particular trademark does
not mean that Rampar’s shoes could not be
counterfeit.
Counsel submitted that in spite of the wide
wording, [the provisions] should be read to
conform to Trips which, it was suggested,
does not require such protection.
Whatever the general understanding of the
term ‘counterfeiting’, or the motive behind
the anti-counterfeiting Trips provisions, the
limitation is not to be found in Trips or in the
clear wording of the Act.

The goods, in this case, did not involve the
use of a trademark for a descriptive purpose
but, as already stressed, was pure counterfeiting. It self-evidently damages the registered
proprietor of a trademark if that proprietor 23. The counterfeit mark or packaging must either be
is not able to control the use of its logo as a ‘identical to’ or indistinguishable in ‘essential aspects
badge of origin and if goods of variable quality from’ the registered trademark: This requirement
bearing that stamp are on the market.
distinguishes counterfeiting from trademark infringement simpliciter. Trademark infringement may amount
22. Is cloning required? The cloning issue can best be to counterfeiting but not necessarily so. A mark will,
described with reference to a simplified example. A accordingly, be counterfeit if it is either (a) identical to
trademark is registered in class 25 in relation to clothing, shoes and headgear. The rights owner uses the
trademark on shoes only, but the alleged counterfeiter
17. United States of America v. Able
Time Inc (9th Circuit, 2008).
uses the identical mark on headgear or on a completely
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CRIMINAL ENFORCEMENT OF IP RIGHTS

or (b) indistinguishable in its essential aspects from the
registered trademark.
FISHER v. FORREST 1:14-cv-01304-PAE-AJP (District
Court, Southern District of New York):
When comparing marks, a court asks whether
an average purchaser would find the allegedly
counterfeit mark to be ‘substantially indistinguishable’ from the registered mark as it
appears on the actual merchandise. When
comparing the alleged counterfeit mark with
the registered mark, one must not view the
marks in the abstract. Rather, the alleged
counterfeit mark ‘must be compared with
the registered mark as it appears on actual
merchandise to an average purchaser.’ ‘There
is nothing in the Act [...] which states that to
determine whether a defendant is engaged in
counterfeiting, one compares plaintiff’s and
defendant’s marks in the abstract, without
considering how they appear to consumers in
the marketplace.’ A side-by-side comparison
of the items’ distinct visual characteristics is
important.
24. Use as badge of origin: From the fact that counterfeiting is by its very nature trademark infringement, it
follows that the accused must have used the counterfeit
mark as a badge of origin, i.e., to indicate a connection
in the course of trade between the goods (or, if applicable, services) and the trademark owner. Descriptive
use is not infringing use.
R v. JOHNSTONE [2003] UKHL 28:
Section 92 [of the U.K. Trade Marks Act, quoted earlier] is to be interpreted as applying only
when the offending sign is used as an indication of trade origin. This is one of the ingredients of each of the offences created by s 92. It
must, therefore, be proved by the prosecution.
Whether a sign is so used is a question of fact
in each case. The test is how the use of the sign
would be perceived by the average consumer
of the type of goods in question.

US v. PETROSIAN 126 F.3D 1232:18
Petrosian and two associates purchased
genuine Coca-Cola bottles, filled them with
a cola-like carbonated beverage that was not
Coca-Cola, and told purchasers the beverage
was Coca-Cola. Petrosian was charged with
violating 18 U.S.C. § 2320(a), which provides:
‘Whoever intentionally traffics or attempts to
traffic in goods or services and knowingly
uses a counterfeit mark on or in connection
with such goods or services shall’ be criminally liable. Petrosian asserts that the district
court erred in instructing the jury that ‘[t]he
term ‘counterfeit mark’ includes genuine
trademarks, affixed to packaging containing
products not made by, but sold as products
of the owner of the registered trademark.’
When a genuine trademark is affixed to a
counterfeit product, it becomes a spurious
mark. A ‘spurious’ mark is one that is false
or inauthentic. The Coca-Cola mark became
spurious when Petrosian affixed it to the
counterfeit cola because the mark falsely
indicated that Coca-Cola was the source of
the beverage in the bottles and falsely identified the beverage in the bottles as Coca-Cola.
Obviously, this spurious Coca-Cola mark was
‘identical with or substantially indistinguishable from’ the registered Coca-Cola mark.
The spurious mark was also likely to cause
confusion because consumers were likely to
assume the mark indicated Coca-Cola was
the source of the beverage inside the bottle.
25. Counterfeiting must be without authorization: The
requirement that the use of the trademark must have
been ‘without the consent of the proprietor’ of the registered mark is generally found in all anti-counterfeiting
laws. It speaks for itself and is logical because there
cannot be infringement of a right if what was done was
with the consent of the rights owner.

18. No internet link available.

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LEOFELIS SA & ANOR v. LONSDALE SPORTS LTD
& ORS [2008] EWCA Civ 640:
A trademark, when registered, is a proprietary
right, an item of property; the same is not true,
under English law, of a trademark licence. A
licence gives no proprietary interest and does
no more than make lawful some use of the
trademark (or other right) that would otherwise
be unlawful. It is a matter of contract.
26. Counterfeiting must be willful. The minimum TRIPS
requirement for counterfeiting is willfulness. This reference deals with the meaning of the (related) concept.
R. v. BORGE, 2007 CanLII 36083 (ON SC):
This is an appeal by the appellants from their
convictions and sentences which followed
their trial for various offences involving the
sale and distribution of counterfeit Microsoft
and Symantec Softwares contrary to the
Copyright Act [for ‘knowingly’ selling or offering for sale infringing copies of works in which
copyright subsists].
The appellants also submit that the trial judge
misdirected himself in law as to the meaning of willful blindness. In articulating their
position, the appellants correctly state the
test for willful blindness as outlined in R. v
SANSREGRET, 1985 CanLII 79 (S.C.C.). In
these cases, it has been held that willful
blindness is not just a mere failure to make
inquiries in circumstances where a reasonable person would do so; it includes subjective components that make it tantamount to
actual knowledge.
I also agree, as submitted by the appellants,
that in order to establish willful blindness, the
Crown must establish the following beyond a
reasonable doubt:
• That the accused had a subjective realization that a certain fact in question was likely
or, at least, ‘possible above the average’, or
that there was a ‘real suspicion in the mind
of the accused that causes the accused to
see the need for inquiry’;
• That the accused failed to make the inquiry; and
148

• That the accused’s purpose in not making
the inquiry was to avoid actual knowledge
of the suspected fact.
Applying the test formulated above within the
context of this case, the Crown had to prove
beyond a reasonable doubt that: The appellant had a real suspicion that the CDs were
counterfeit; he failed to make the appropriate inquiries to confirm or refute this suspicion; and the specific purpose in failing to
make these inquiries was to avoid finding out
whether the CDs were counterfeit.
R. v. Sansregret clarified the legal definition
of the concept of recklessness as a basis for
criminal liability as well as the legal concept
of willful blindness:
The concept of recklessness as a basis
for criminal liability has been the subject
of much discussion. Negligence, the
failure to take reasonable care, is a creature of the civil law and is not generally
a concept having a place in determining criminal liability. Nevertheless, it is
frequently confused with recklessness
in the criminal sense and care should
be taken to separate the two concepts.
Negligence is tested by the objective
standard of the reasonable man.
In accordance with well-established
principles for the determination of
criminal liability, recklessness, to form
a part of the criminal mens rea, must
have an element of the subjective.
R. v. Sansregret (supra) also dealt with the
issue of willful blindness, where he defined
its legal concept and applicability:
Where willful blindness is shown, the
law presumes knowledge on the part
of the accused. Willful blindness is
distinct from recklessness because,
while recklessness involves knowledge
of a danger or risk and persistence in
a course of conduct which creates
a risk that the prohibited result will
occur, willful blindness arises where
a person who has become aware of

CRIMINAL ENFORCEMENT OF IP RIGHTS

the need for some inquiry declines to
make the inquiry because he does not
wish to know the truth. He would prefer
to remain ignorant. The culpability in
recklessness is justified by consciousness of the risk and by proceeding in
the face of it, while in willful blindness
it is justified by the accused’s fault in
deliberately failing to inquire when he
knows there is reason for inquiry.
27. National laws may be stricter: Legislatures have
chosen to deal with the requirement of mens rea
(guilty consciousness) in different ways and do not
necessarily limit criminal liability to willfulness. In many
countries, it is for the accused to prove the absence of
mens rea. In the United Kingdom and countries such
as Barbados and Jamaica, it is a defense that the
accused believed on reasonable grounds that the use
of the sign in the way it was used, or was to be used,
was not an infringement of the registered trademark.
From this, it follows that the intention to profit or to
cause loss must be established by the prosecution but
that the accused must prove reasonable grounds for
an innocent mindset. However, a lack of intention to
infringe is not a defense. In Barbados, any trademark
infringement is criminal, provided it is done knowingly,
while in Singapore, the importation of counterfeit goods
is punishable unless the accused can prove an innocent
mindset. Different approaches to the matter of onus
appear from the two cases next cited.
R v. JOHNSTONE [2003] UKHL 28 [UK]:
(1) Counterfeiting is fraudulent trading. It is a
serious contemporary problem. Counterfeiting
has adverse economic effects on genuine
trade. It also has adverse effects on consumers,
in terms of quality of goods and, sometimes,
on the health or safety of consumers. The
Commission of the European Communities has
noted the scale of this ‘widespread phenomenon with a global impact’. Urgent steps are
needed to combat counterfeiting and piracy.
Protection of consumers and honest manufacturers and traders from counterfeiting is an
important policy consideration.
(2) The offences created by s 92 have rightly
been described as offences of ‘near absolute
liability’. The prosecution is not required to
prove intent to infringe a registered trademark.

(3) The offences attract a serious level of
punishment: a maximum penalty on indictment of an unlimited fine or imprisonment
for up to ten years or both, together with the
possibility of confiscation and deprivation
orders.
(4) Those who trade in brand products are
aware of the need to be on guard against
counterfeit goods. They are aware of the
need to deal with reputable suppliers and
keep records and of the risks they take if
they do not.
(5) The s 92(5) defence relates to facts within
the accused person’s own knowledge: his
state of mind, and the reasons why he held
the belief in question. His sources of supply
are known to him.
(6) Conversely, by and large, it is to be expected that those who supply traders with counterfeit products, if traceable at all by outside
investigators, are unlikely to be co-operative.
So, in practice, if the prosecution must prove
that a trader acted dishonestly, fewer investigations will be undertaken and fewer prosecutions will take place.
In my view factors (4) and (6) constitute compelling reasons why the s 92(5) defence should
place a persuasive burden on the accused
person. Taking all the factors mentioned above
into account, these reasons justify the loss
of protection which will be suffered by the
individual. Given the importance and difficulty
of combating counterfeiting, and given the
comparative ease with which an accused can
raise an issue about his honesty, overall it is
fair and reasonable to require a trader, should
[the] need arise, to prove on the balance of
probability that he honestly and reasonably
believed the goods were genuine.
LAU HOK TUNG AND OTHERS v. HKSAR [2012]
HKCFA 31:
The presumption of innocence is constitutionally protected and the principles applicable when statutory reverse onus provisions encroach upon such protection are
well-established.
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CASEBOOK ON IP ENFORCEMENT

The starting point is the basic rule of the crimithat the concerns expressed in the English
nal law that an accused person is presumed
cases regarding the unworkability of their
innocent and that the prosecution bears the
statutory regime in the absence of a reverse
burden of proving his or her guilt beyond
onus do not arise here.
reasonable doubt. However, it is clear that a
statute may reverse the burden, abrogating 28. Counterfeiting must be on a commercial scale:
the presumption by placing a persuasive Private acts of counterfeiting need not be criminalized
burden on the defendant to prove specified – only those done on a commercial scale. Accordingly,
matters on a balance of probabilities as a most laws are directed at punishing the counterfeiter
condition of avoiding liability.
and the dealer in counterfeit goods. The purchaser
of a fake watch, CD or DVD does not commit a crime
The second task is to ascertain whether such unless the purchase is with the object of an on-sale.
reversal of the onus engages and derogates Likewise, a person who for their own use makes an
from the presumption of innocence.
otherwise unauthorized copy does not commit the
crime of counterfeiting.19
The burden placed on the prosecution is relatively light. It must first prove possession of R v. JOHNSTONE [2003] UKHL 28:
the goods by the defendant in circumstances
establishing that they are possessed for sale
Civil liability arises only in respect of use of a
or other purposes of trade. Secondly, it must
sign ‘in the course of trade’. The equivalent
prove that the trademarks applied to those
phrase ‘in the course of a business’ appears
goods are in fact forged.
in s 92 in respect of some, but not all, of the
However, the statutory intent is plainly not
alternative sets of factual ingredients of the
to penalise the possession of goods bearoffences. An essential ingredient of all the
ing forged trade marks as a matter of absocriminal offences created by s 92(1) to (3) is
lute liability in respect of the falsity of the
that a person commits an offence where ‘with
marks. The gravamen of the offence is that
a view to gain for himself or another, or with
the accused possesses the offending goods
intent to cause loss to another’ he does the
knowing, or having reason to suspect that they
act in question. With this in mind, it is hard to
bear forged trademarks or in circumstances
think of a realistic example of conduct which
where, using reasonable diligence, he could
would attract criminal liability and yet be
have ascertained that the marks are false.
excluded from civil liability because it would
not be ‘in the course of trade’.
However, the third condition makes our
section qualitatively different from the English There is, however, a move toward a ‘no tolerance’ policy,
provision. It requires the defendant to satisfy and in France, for one, the purchaser or possessor may
the court that he ‘could not with reasonable be guilty of an offence.
diligence have ascertained’ the falsity. This
condition does not involve any inquiry into
what the defendant actually knew or believed. C. Copyright piracy
It is immaterial whether he thought there was
or was not any likelihood of him discovering 29. Pirating is more than copyright infringement:
the forgeries by using reasonable diligence. It Copyright infringement is essentially a civil wrong.
depends on what the court finds that he could All copyright infringement is not criminalized, and
have discovered, using reasonable diligence.
Requiring the prosecution to prove the third
condition, even applying the usual criminal
19. On the notion of « commercial scale » within
standard of proof beyond reasonable doubt,
the meaning of Article 61 TRIPS, see WTO
Panel Report in case DS362 China – Measures
is much less exacting than requiring the prosAffecting the Protection and Enforcement
ecution in England to negate the subjective
of Intellectual Property Rights (http://www.
defence specified in section 92(5) of the TMA
wto.org/english/tratop_e/dispu_e/362r_e.
pdf), and, in particular, para 7.532 et seq.
[Trade Marks Act]. Accordingly, it is my view
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CRIMINAL ENFORCEMENT OF IP RIGHTS

copyright infringement is not per se piracy. On the
other hand, there cannot be piracy without copyright
infringement. The effect of this is that before there
can be copyright piracy, there must be copyright
infringement.
29. The TRIPS obligations: As mentioned before, the
TRIPS Agreement obliges member countries to provide
for criminal procedures and penalties to be applied at
least in cases of willful copyright piracy on a commercial scale. The minimum requirements of Art 61 are
accordingly the following:
• There must be an act of copyright piracy.
• The act of copyright piracy must be willful.
• The act of copyright piracy must be on a commercial scale.
Willfulness and commercial scale have been dealt
with in the preceding section concerning trademark
counterfeiting and will not be repeated.
30. Subsistence of copyright: Part and parcel of any copyright infringement case, whether civil or criminal, is that the
subsistence of copyright must be established, meaning
this means that special attention must be given to these
elements, which were dealt with in Chapter 8. Some works,
because of, especially, digital technology, are more prone
to piracy, and they are (to use non-technical language)
printed works, works published on the internet, sound
recordings (CDs), cinematograph films (DVDs), computer
programs, compilations of data and broadcastings.
30. The act of piracy must constitute an infringement
of a copyright of a particular type: Anyone who violates
any of the exclusive rights of the copyright owner
infringes copyright. The position in relation to criminal
infringement is generally different. The TRIPS requirement for pirating is the making of ‘copies’ that infringe
‘copyright.’ This, prima facie, means that all copyright
infringement is not covered, only that consisting of
the making of copies. A ‘reproduction’ or ‘adaptation’
is often defined in wider terms than ‘copying’ in local
laws, and every reproduction would not necessarily
amount to the making of a ‘copy’ for purposes of piracy.
Copyright infringement requires a causal connection
between the original work and the copy, which means
that the fact that one work is the same as the other does
not mean that it is copied, because both could have
been original creations. The one must be derived from
the other. In the criminal law context, this can hardly
ever be an issue of any practical significance.

CHAN NAI MING v. HKSAR [2007] HKCFA 36:
A ‘copy’ of a work may exist in electronic or
digital form. Section 24(4) expressly refers to
issuing copies of a work in electronic form. It
is, moreover, important to distinguish between
the electronic copy itself and the physical
medium in which it resides. Thus, section
23(2) refers to storing a work ‘in any medium
by electronic means’ as an instance of copying. The resultant reproduction of the work, i.e.,
the copy, is ‘in electronic form’ consisting of a
specific combination of digital data which is
‘usable only by electronic means’. The physical
storage article is therefore conceptually and
physically different from the electronic copy
it contains. Obviously, if a further reproduction of the work were to be made from that
electronic copy, the resultant copy would
constitute a further electronic copy.
In the present case, when the appellant electronically copied a film from the VCD and stored
the copy made on his computer’s hard disk, he
was ‘reproducing the work in [a] material form’
as provided by section 23(2). The copy was an
infringing copy since its making was an infringement of the copyright in the film, as stipulated
by Section 35(2). Each copy was also a copy in
electronic form as it was only usable by electronic means. If it were to be further reproduced,
the resultant electronic copies would also be
infringing copies of the protected work.
I agree of course that an electronic copy must
exist in some physical medium or environment
and not in a vacuum. But as the evidence established and as everyday experience indicates,
electronic data constituting a digital copy of a
work can plainly be transmitted via the medium
of the network of computers and cables making
up the internet. Electronic copies can thus
plainly be transmitted without first being stored
in a tangible article such as a CD or DVD to be
physically handed over to a recipient.
It is, of course, true that an electronic copy
will often be stored in a disk or some similar tangible object which is capable of and
intended for physical delivery. But use of such
a storage device is not an essential condition
for the transfer or distribution of an electronic
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CASEBOOK ON IP ENFORCEMENT

copy. An internet network made up of linked
computers is no less tangible and effective
a medium for its transmission.
31. Proof of subsistence of copyright: It will immediately
be clear that proving subsistence of copyright can be
bothersome. It is, consequently, not surprising that
most laws contain special provisions for alleviating this
problem. There are three models, but they are not selfexcluding: registration (notification), affidavit evidence,
and presumptions. Not all copyright presumptions
apply necessarily to criminal cases. Whether they do,
depends upon the laws of each country.
32. Registration: Registration is not – and may not
be – a requirement for subsistence of copyright, but,
if provided for in the laws of a country, registration
may provide prima facie evidence of subsistence. The
United States, which formerly required registration for
subsistence, permits registration, which serves the
mentioned purpose because a certificate of registration
made before or within five years after first publication
of the work constitutes prima facie evidence of the
validity of the copyright.
33. Affidavit evidence: Systems that generally only
permit oral evidence in relation to disputed issues
may allow the use of affidavit evidence to establish
subsistence of copyright. Australian and Singapore law,
for instance, allow affidavit evidence in civil as well as
criminal proceedings. This evidence may establish that,
at a particular time, copyright subsisted in the work;
that copyright in the work was owned by, or exclusively
licensed to, a particular person; that copyright in that
work or subject matter was not owned by, or exclusively
licensed to, a particular person; or that a particular
act was done without the license of the owner of the
copyright, or of the exclusive licensee of the copyright,
in that work or subject matter.
34. Presumptions – the Berne requirements: Last, there
are some relevant presumptions having their origin in
the Berne Convention (art. 15):
• Authorship is presumed if the author’s name appears
on the work in the usual manner. This provision applies
to a pseudonym, where the pseudonym adopted by
the author leaves no doubt as to their identity.
• The person or body corporate whose name appears
on a cinematographic work in the usual manner
must, in the absence of proof to the contrary, be
presumed to be the maker of the said work.
• In the case of anonymous and pseudonymous
152

works, the publisher whose name appears on the
work must, in the absence of proof to the contrary,
be deemed to represent the author unless the
author reveals their identity and establishes their
claim to authorship of the work.
35. Application of presumptions: This judgment is
cited as an example of the application of some of the
presumptions contained in the Australian legislation.20
MICROSOFT CORPORATION v. PC CLUB AUSTRALIA
PTY LTD [2005] FCA 1522 [Australia]:
By virtue of the respondents’ denial of both
subsistence of copyright in Windows XP
Home and Windows XP Pro and Microsoft’s
ownership thereof, subsistence and ownership were placed in issue in the current
proceedings: see again pars (a) and (b) of
s 126 of the Copyright Act. For the purpose
of establishing subsistence and ownership of
copyright in those programs the applicants
have relied upon the presumptions contained
in s 128 of the Copyright Act and additionally,
or at least in the alternative, on the evidentiary
provisions ss 126A and 126B.
Section 128 was considered in DHD
Distribution, a case similarly involving
Microsoft computer programs. Lehane J
was there presented with original copies
of the relevant programs as first published.
Having been satisfied that those computer
programs were first published in the United
States within the 50 year period prescribed
by s 128(a) of the Copyright Act, his Honour
then considered what was required under
s 128(b) to prove that those original copies
bore the name purporting to be that of the
publisher. Lehane J found it significant that
those copies of the computer program, as it
was first published, made explicit reference
to ‘Microsoft Corporation’ as the owner of
copyright in the programs. Accordingly his
Honour concluded that those references to
‘Microsoft Corporation’ were ‘plainly references to the first applicant as a person who
has issued or caused to be issued copies of

20. http://www.wipo.int/wipolex/en/details.jsp?id=15724.

CRIMINAL ENFORCEMENT OF IP RIGHTS

the works, as they were first published’, and
hence Microsoft Corporation was entitled to
the benefit of the s 128 presumptions as to
subsistence of copyright and ownership of
the same in those programs.

The applicants urged that the words unless
the contrary is established appearing in s
128 have the effect that the presumptions of
subsistence and ownership in favour of the
entity, whose name appeared on copies of
the work first published, would stand unless
the contrary was proved on the balance of
probabilities. So much was not disputed by
the respondents and correctly so in my view.

Likewise, I am satisfied that the evidence
tendered by the applicants establishes
Microsoft’s ability to rely upon the presumptions contained in s 128. Pursuant to s 126A(3)
of the Copyright Act, the United States certifiThe standard of proof necessary to be
cate of registration of copyright in Windows
achieved by the respondents to assail the
XP Pro (that program wholly subsuming
prima facie evidentiary provisions of ss
Windows XP Home as earlier pointed out
126A and 126B is less straightforward. [After
constituted) is prima facie evidence of the
discussion] I accept the applicants’ case
facts stated therein, that is, that Microsoft
that once enlivened, the presumptions of
Windows XP Pro (and as a corollary, also
subsistence and ownership arising under s
Windows XP Home) was first published in the
128 stood, unless and until the respondents
United States on 25 October 2001, which is
were to adduce evidence which would prove,
well within the 50 year period prescribed by
on the balance of probabilities, that copyright
s 128(a). As the United States is a Convention
did not subsist in the relevant programs, and
country, s 184 of the Copyright Act and reg
that Microsoft was not the owner thereof.
4 of the Copyright Regulations have the
effect of applying the operation of s 128 to 36. Copying must be without the authorization of the
literary works first published in the United rights holder. Copyright infringement is usually defined
States. Furthermore, I find that the name of as an act committed without the consent of the rights
Microsoft, who purports to be the entity who holder. Copying with consent cannot be wrongful. The
has issued or caused to be issued copies onus is important.
of the relevant programs, duly appeared on
copies of the programs and their packaging ALBIAN SANDS ENERGY INC. v. POSITIVE ATTITUDE
as first published, and was also stated to be SAFETY SYSTEM INC., 2005 FCA 332:
the owner of the copyright therein, as was the
case in DHD Distribution. Accordingly, I must
Copyright is defined in terms of the absence
conclude that copyright subsists in Windows
of the consent of the owner of the copyright.
XP Home and Windows XP Pro, and further
Consequently, proof of copyright infringethat Microsoft is the owner of that copyright,
ment requires proof of lack of consent. It is
unless I should find that the contrary has been
therefore illogical to conclude that there has
established by the respondents.
been infringement, subject to the effect of a
purported license. It may be that a party has
Both parties made submissions to the effect
done something which, by the terms of the
that the prima facie case that each had
Copyright Act, only the owner of the copyrespectively established had the effect of
right may do. But, before that conduct can
shifting the burden of proof to the other. It
be defined as infringement, the judge must
was the applicants’ submission that having
find that the owner of the copyright did not
discharged the evidentiary burden of bringconsent to that conduct.
ing into operation ss 126A, 126B and 128, it
necessarily remained for the respondents
to adduce sufficient evidence to extirpate
the presumptions triggered respectively by
those provisions.

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D. Sentencing
37. TRIPS Agreement: In terms of Art 61 of the TRIPS
Agreement, member countries must provide for
remedies for counterfeiting and piracy, which must
include imprisonment and/or monetary fines, sufficient
to provide a deterrent, consistently with the level of
penalties applied for crimes of a corresponding gravity. It follows from this that the drafters of the TRIPS
Agreement regarded deterrence as the main purpose
of criminal sanctions.
It is also clear from the wording of the article that
the level of penalties must be comparable to those
for crimes of a corresponding gravity. The TRIPS
Agreement does not, however, mention the names
of those crimes, and it is left to member countries to
identify them. By the very nature of counterfeiting and
piracy, it is to be expected that the comparable crimes
are commercial crimes, such as fraud and the like.
38. Different approaches to sentencing. Sentence levels
and sentencing attitudes differ from society to society.
It is impossible to make any sensible comparisons to
draw any meaningful conclusions. Subject to statutory
prescriptions, it remains the task of a court to impose
the sentence that it thinks suitable in the circumstances.
REGINA v. WAYNE EVANS [2017] EWCA Crim 139:
Having considered the matter, our conclusion is that we cannot agree. The appellant
may not have been motivated by gain for
himself. But there was undoubtedly a real
loss to the owners of the relevant copyrights
and related performers. Further, quite apart
from such loss as could be identified and
quantified, such offending always has a wider
detrimental impact on the music industry and
its profitability: and the music industry is an
important economic contributor to society.
That detriment is none the less real for being
difficult to quantify. As has, in fact, long been
established in the context of intellectual
property offending, an element of deterrent
sentencing is justified in this context; not
least also because of the difficulty in tracking down and investigating such offending.
Most certainly here the appellant had strong
personal mitigation. But his conduct was
sustained and he persisted in it even after
receiving the cease and desist notices. He
154

carried on his activities for a lengthy period
of time and he used sophisticated equipment
for the purpose.
In our view, the judge in his careful and
thorough sentencing remarks addressed all
relevant points. He correctly appraised the
position. He had due regard to the plea and
all other matters available to the appellant in
terms of mitigation. We consider that overall
the sentence of 12 months’ immediate imprisonment was a well-judged sentence, and at all
events cannot be said to be excessive.
Ms. Loftus, appearing for the Crown, has
suggested that given there is no definitive
guideline relating to such offences under the
1988 Act it may be of some assistance if some
guidance is given by this court.
The position must be that in offending of this
kind the sentencing court must retain flexibility and gear a sentence to the circumstances
of the particular offence or offences and to
the circumstances of the particular offender.
Nevertheless, we would suggest that the
following (non-exhaustive) considerations
are likely to be relevant in sentencing cases
of this particular kind, involving the unlawful
distribution of infringing copyright articles:
(1) First, illegal downloading and distribution is very often difficult to investigate and
detect. It can give rise to serious problems
and losses (none the less real for not being
readily quantifiable) to the music and entertainment industry. Deterrent sentencing in
such a context is appropriate.
(2) Second, the length of time (and including
also any continuation after service of cease
and desist notices) of the unlawful activity will
always be highly relevant.
(3) Third, the profit accruing to the defendant
as a result of the unlawful activity will always
be relevant.
(4) Fourth, and whether or not a significant
profit is made by the defendant, the loss
accruing to the copyright owners so far as
it can accurately be calculated will also be

CRIMINAL ENFORCEMENT OF IP RIGHTS

relevant: as will be the wider impact upon the
music industry even if difficult to quantify in
precise financial terms: because wider impact
there always is.
(5) Fifth, even though this particular type of
offending is not the subject of any Definitive
Guideline there may be cases where it will
be helpful to a judge to have regard to the
Definitive Guidelines on fraud, bribery and
money laundering offences. In some cases,
such as the present, that will positively be
required because one or more of the counts
on the indictment, as here, will be a count
which comes within the ambit of the guideline
itself. But even where that is not the position
there may be some cases where a judge, at
least if only as a check, may wish to refer
to the Definitive Guideline to get a feel, as it
were, for the appropriate sentence. However,
there will be other cases where the Definitive
Guideline may be of marginal, and perhaps no,
assistance at all. That will be a matter for the
assessment of the judge in the individual case.
Where the Definitive Guideline is required to
be taken into account because one of the
counts on the indictment is within the ambit
of the guideline, that of itself will no doubt lend
assistance in deciding what the appropriate
overall sentence will be.
(6) Sixth, personal mitigation, assistance to
the authorities and bases and pleas of guilt
are to be taken into account in the usual way.
(7) Seventh, unless the unlawful activity of
this kind is very amateur, minor or short-lived,
or in the absence of particularly compelling
mitigation or other exceptional circumstances,
an immediate custodial sentence is likely to
be appropriate in cases of illegal distribution
of copyright infringing articles.

39. Proportionality: Professor Andreas Rahmatian adds
this perspective:21
Sentencing practice for trademark crimes
should not neglect the issue of proportionality.
Too severe penalties may not deter, but even
encourage counterfeiting at a larger scale
(because taking the risk of harsh punishment
only pays off in relation to larger operations),
and they may undermine public respect and
acceptance of trademark and criminal law
alike: ‘If the death penalty is imposed for
both small and considerable thefts [quoting Voltaire], it is obvious that [the offenders] will try to steal much. They may even
become murderers if they believe that this is a
means not to be detected. All that proves the
profound truth that a severe law sometimes
produces crimes.’ What Voltaire wrote in relation to theft in 1766, is also valid in relation to
intellectual property offences today.
40. Precedents on sentencing:22 The following extracts
from judgments provide examples of how courts
approach sentencing.
HKSAR v. CHAN NAI MING [2005] HKMC 2:23
I must say this first of all: that Hong Kong
carefully guards intellectual property rights.
These rights are not illusory; they are not
something which exists only in theory and not
in practice. They are real, they are valuable
and they amount to genuine property. And the
owners of those rights are entitled to the same
level of protection from dishonest appropriation as the owners of ordinary, more tangible
property. What is created by or on behalf of
the owners of copyright is theirs to deal with
and dispose of as they [may] choose. It is not
up to others to dictate how they should do
so or at what price. It is not open to others to

21. ‘Trade mark infringement as a criminal offence,’
Modern Law Review, 67 (4), p.670–683. See also
Irina D. Manta, ‘The puzzle of criminal sanctions
for intellectual property infringement,’ Harvard
Journal of Law and Technology, 24 (2).
22. Cf. Sandra L. Rierson, ‘Pharmaceutical counterfeiting
and the puzzle of remedies,’ 8 Wake Forest
Intellectual Property Law Journal, 8 (3), p. 433.
23. Confirmed on appeal: HKSAR v. Chan
Nai Ming [2006] HKCFI 1402.

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CASEBOOK ON IP ENFORCEMENT

make moral judgments about the price of a
book or a DVD or a music CD, and claim that
it is excessive, as some form of justification
for infringing the copyright. The law does not
accord any validity to such attempts to justify
copyright piracy.
The practical application of this principle,
when the courts are dealing with persons
who criminally infringe copyright, is to apply
a firm, deterrent based sentencing policy.
This is nothing new. There are many decided
cases of higher courts which have, time after
time, affirmed this approach. In particular, in
1999, in a case called Choi Sai-lok, the Court
of Appeal approved the comments of a judge
in an earlier case when he said, ‘The victims
are the proprietors of the intellectual property
whose rights are being violated. There is international pressure upon Hong Kong to stamp
out traffic in pirated goods. Failure to attack
th[is] illegal activity [...] would be perceived as
a default on the part of the government on its
international obligations.’
This provided the foundation for the approach
of the Court of Appeal in Choi Sai-lok because
it went on to say, ‘We emphasize that custodial sentences of immediate effect [i.e., not
suspended sentences] should be imposed for
offences of this kind unless the circumstances
can be said to be truly exceptional [...] The
open flouting of the law in this trade requires
sentences, even for first offenders, to act as
a deterrent to others.’
This was, as I have found, at least an attempted distribution of the infringing copies to such
an extent as to affect prejudicially the owners
of the copyright. It was done in a public, open
forum where anyone with the appropriate
equipment could download. It is proper to
infer that some copies of films obtained by
downloaders in this manner would themselves
be downloaded to others. The potential for
prejudice to the copyright owners by this
latent risk of re-distribution, beyond those
who initially take the seeded film, is extensive.

156

GOIK SOON GUAN v. PUBLIC PROSECUTOR
[2015] SGHC 31:
At the outset, I will acknowledge that the
Prosecution rightly submitted that the primary
sentencing consideration in cases of trademark or copyright infringement is deterrence.
Strong intellectual property protection is an
integral component of Singapore’s economic and industrial policy, and is vital to our
economic success. This was recognised right
from the start when we began developing our
intellectual property laws.
The value of a robust intellectual property
protection framework cannot be overstated
as intellectual property continues to increase
in strategic importance against traditional
business advantages such as geographical
location and abundance of natural resources. As we strive to develop our intellectual
property laws to suit an increasingly global
environment, it is crucial that strict measures
are enforced so as to send a strong deterrent message to the public lest these efforts
[would] be undermined.
That deterrence is the central consideration
for copyright and trademark infringement
offences is also highlighted by the authors
of Sentencing Practice in the Subordinate
Courts. Likewise, this has been recognised
in numerous cases.
That having been said, it must be stressed
that a deterrent sentence need not always
take the form of a custodial term.
It is also important to bear in mind that the
sentence imposed must, at the end of the day,
be fair to the accused, bearing in mind all the
relevant mitigating factors. The principle of
proportionality ‘acts as a counterbalance to
the principles of deterrence, retribution, and
prevention’, in that ‘the sentence must be
commensurate with the gravity of the offence,
[...] the sentence must fit the crime, and [...]
the court should not lose sight of the ‘proportion which must be maintained between the
offence and the penalty and the extenuating
circumstances which might exist’’.

CRIMINAL ENFORCEMENT OF IP RIGHTS

THE SECRETARY FOR JUSTICE v. CHOI SAI LOK
AND ANOTHER [1999] HKCA 3:
We have no doubt that a distinction should
be drawn between the proprietors of retail
outlets and warehouses to commit these
offences, and the persons employed by them.
The former should receive longer sentences
than the latter. But where we disagree with
the judge is in the distinction which he drew
between salesmen on the one hand and
couriers on the other. The roles played by
store men, packers, delivery men and salesmen may be different, but we do not see
much difference between them in terms of
criminal culpability. What will justify differences in sentences between them will be,
for example, the number of infringing copies
involved, the length of time in which they
had been engaged in the trade and factors
personal to them such as pleas of guilty.

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ENFORCEMENT OF IPRS IN THE DIGITAL AND INTERNET AGE

Chapter 16
Enforcement of IPRs in the
digital and internet age
A. Introduction

160

B. Copyright issues

160

C. Trademark
infringement issues

167

D. Intermediaries

170

E. Jurisdictional issues

171

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CASEBOOK ON IP ENFORCEMENT

A. Introduction1
1. From analogue to digital: The principles of IP law
were settled during the analogue age. It was a physical
world. We have now moved into the digital era, where
data are computerized and represented numerically.
Digital technology and the process of ‘digitization’
allow the conversion of copyright material into binary
form, which can be transmitted across the internet and
re-distributed, copied and stored in perfect digital form.
The internet has become the main carrier and distributor of data. This has created new stresses for copyright
and trademark law in particular, more often because of
blatant piracy and counterfeiting. Old principles must be
applied to new and ever-changing technology. Analogies
must be found. Legal remedies must be adapted.
All this creates risks and opportunities. The risks for
owners arise from perfect copies and easy distribution.2
They have, however, new opportunities in the form
of a reduction in production costs and the creation
of new income sources based on new technologies.
Consumers, in turn, demand lower product costs, easy
access to information, free access to knowledge and
preservation of culture and cultural diversity.
2. The internet:3
PERFECT 10, INC. v. GOOGLE INC. 508 F.3d 1146
(9th Cir. 2007):

called a webpage. A webpage consists of
text interspersed with instructions written in
Hypertext Markup Language (‘HTML’) that is
stored in a computer. No images are stored
on a webpage; rather, the HTML instructions on the webpage provide an address for
where the images are stored, whether in the
webpage publisher’s computer or some other
computer. In general, webpages are publicly
available and can be accessed by computers
connected to the Internet through the use of
a web browser.

B. Copyright issues
3. Internet treaties: The TRIPS Agreement4 introduced
copyright protection for computer programs and databases. And WIPO became involved in the ongoing
international debate to shape new standards for copyright protection in cyberspace. It administers the WIPO
Copyright Treaty5 and the WIPO Performances and
Phonogram Treaty.6 They provide international norms
aimed at preventing unauthorized access to and use of
creative works on the internet or other digital networks.
Both require countries to provide a framework of basic
rights and allow creators to control and/or be compensated for the various ways in which their creations are
used and enjoyed by others. The treaties clarify that
existing rights continue to apply in the digital environment, and the treaties also create new online rights.7

[Computers] are connected to networks 4. Interpreting laws in the light of new technology: The
known collectively as the ‘Internet.’ ‘The problem with the digital explosion is that the law finds it
Internet is a worldwide network of networks all difficult to adapt. Amending laws are not promulgated.
sharing a common communications technol- There are conflicts between different interests, espeogy.’ Computer owners can provide informa- cially between rights holders and the general public.
tion stored on their computers to other users Emerging technologies require a flexible approach, and
connected to the Internet through a medium wide definitions in copyright acts often permit flexible
interpretation to cover new technologies as they appear.

1.

2.
3.

160

Institutional Arrangements Concerning
Intellectual Property Enforcement Policies
and Regimes to Address Online Infringements
at: http://www.wipo.int/meetings/en/details.
jsp?meeting_id=42290; Approaches to Online
Trademark Infringements at: http://www.wipo.int/
meetings/en/doc_details.jsp? _id=381836.
Graham Dutfield and Uma Suthersanen, Global
Intellectual Property Law (2008) pp. 234–5.
Roadshow Films Pty Ltd v. iiNet Ltd [2012]
HCA 16 (20 April 2012); Google Inc v. Australian
Competition and Consumer Commission
[2013] HCA 1 (6 February 2013).

4.
5.
6.
7.

https://www.wto.org/english/
docs_e/legal_e/27-trips.pdf.
http://www.wipo.int/treaties/en/ip/wct/.
http://www.wipo.int/treaties/en/ip/wppt/.
WIPO Internet Treaties.

ENFORCEMENT OF IPRS IN THE DIGITAL AND INTERNET AGE

GOLDEN CHINA TV GAME CENTRE AND OTHERS
v. NINTENDO CO LTD [1996] ZASCA 103:

or intangible, they are in general agreement
that software is ‘property’. There seems no
reason to treat data files differently from
software in this respect.

As with many definitions in the Act and its
antecedents, very wide terms have been
employed. The only reason for this can be an 6. Computer programs:8 Computer programs, whether
intention to cover future technical innovations in source or object code, are, in terms of the TRIPS
by using general words. Legislative inertia Agreement, entitled to copyright protection ‘as literought not to impede human ingenuity and ary works.' The WIPO Copyright Treaty is similar and
the reasonable protection thereof. Typical is states that computer programs, irrespective of the
the case of computer programs. The wide mode or form of their expression, are entitled to copywording of the Act made it possible to grant right protection.
them protection as literary works. It was only
in the amending Act that the Legislature dealt TELEPHONIC COMMUNICATORS INTERNATIONAL
with the subject. This general scheme of PTY LTD v. MOTOR SOLUTIONS AUSTRALIA PTY
the Act suggests to me that the definitions LTD [2004] FCA 942:
in the Act should be interpreted ‘flexibly so
that it would cover new technologies as they
For the purposes of the Copyright Act 1968, a
appeared, rather than to interpret those provicomputer program is a ‘set of statements or
sions narrowly and so force [the Legislature]
instructions to be used directly or indirectly in a
periodically to update the act’.
computer in order to bring about a certain result’.
5. Software and data files are intangible property:
Copyright works, films, sound recordings and broadcasts are protected in the digital environment, as in
the offline world.

A computer program is a ‘literary work’.
Subject to a number of qualifications the
original author of a computer program has
the copyright in that program.9

DIXON v. R [2015] NZSC 147 (20 October 2015):

The copyright entitles the owner to various
monopoly rights in relation to the program,
including the right to reproduce and copy it,
to make an adaptation of it, to publish it to the
public and to enter into a commercial rental
arrangement in relation to it.

It cannot be seriously disputed that society’s
reliance on computers and electronic data
is substantial, if not essential. Computers
and digital information are ubiquitous and
pervade all aspects of business, financial
and personal communication activities. We
cannot conceive of any reason in law or logic
why this process of virtual creation should
be treated any differently from production
by pen on paper or quill on parchment. A
document stored on a computer hard drive
has the same value as a paper document kept
in a file cabinet.
Information stored in the electronic records
and databases at issue was valuable to the
claimant regardless of whether the format in
which the information was stored was tangible
or intangible.
What emerges from our brief discussion of
the United States authorities is that although
they differ as to whether software is tangible

Breach of those monopoly rights is an infringement of the copyright. It is not necessary that
the relevant reproduction be an exact copy.
It is sufficient if there is a reproduction or
copying of a ‘substantial part’ of the program.
Copyright is also infringed by the sale of
the computer program without the permission of the copyright owner in circumstances
where the person selling it knew, or should
reasonably have known, that the making of
the program was a breach of copyright.10

UsedSoft v. Oracle CJEU Case 128/11; Bezpečnostní
softwarová asociace – Svaz softwarové ochrany
v. Ministerstvo kultury Case C-393/09.
9. This is often different in other laws.
10. Karum Group LLC v. Fisher & Paykel
Financial Services Limited [2014] NZCA
8.

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CASEBOOK ON IP ENFORCEMENT

7. Video games: Video games contain at least two main 10. Net neutrality:
parts: (a) audiovisual elements (including pictures, video
recordings and sounds) and (b) software, which techni- ROBERTSON v. THOMSON CORP., 2006 SCC 43
cally manages the audiovisual elements and permits (CanLII), [2006] 2 S.C.R. 363:
users to interact with the different elements of a game.
For some countries, video games are predominantly
Media neutrality is reflected in s. 3(1) of the
computer programs because of the specific nature of
Copyright Act which describes a right to
the works and their dependency on software. In other
produce or reproduce a work ‘in any material
jurisdictions, the complexity of video games implies
form whatever’. Media neutrality means that
that they are given a distributive classification. Finally,
the Copyright Act should continue to apply in
few countries consider that video games are essentially
different media, including more technologicalaudiovisual works.11
ly advanced ones. But it does not mean that
once a work is converted into electronic data
8. Databases:12 In terms of the TRIPS Agreement,
anything can then be done with it. The resultcompilations of data or other material (whether in
ing work must still conform to the exigencies
machine-readable or other form) are, by reason of the
of the Copyright Act. Media neutrality is not
selection or arrangement of their contents constitute
a license to override the rights of authors —
intellectual creations, entitled to copyright protection.
it exists to protect the rights of authors and
This protection does not extend to the data or material
others as technology evolves.
itself, and it does not affect any copyright subsisting
in the data or material.
ENTERTAINMENT SOFTWARE ASSOCIATION v.
SOCIETY OF COMPOSERS, AUTHORS AND MUSIC
A database may be defined as a collection of inde- PUBLISHERS OF CANADA, [2012] 2 SCR 231, 2012
pendent works, data or other materials arranged in a SCC 34 (CanLII):
systematic or methodical way and individually accessible by electronic or other means, including a method
In our view, there is no practical difference
or system of some sort for the retrieval of each of its
between buying a durable copy of the work in
constituent materials.13
a store, receiving a copy in the mail, or downloading an identical copy using the Internet.
9. New and extended exclusionary (copyright) rights:
The Internet is simply a technological taxi that
The main exclusive rights affected by the internet are
delivers a durable copy of the same work to
(a) the right of reproduction (copying) and (b) the right
the end user.
of communication to the public (publication). In other
words, subject to fair use/dealing, the copyright owner 11. Reproduction right: The WIPO Copyright Treaty
can prevent copying (reproduction) and publication provides as follows:
(communication to the public) of a copyrighted work
in digital form.14
The reproduction right, as set out in Article 9
of the Berne Convention, and the exceptions
permitted thereunder, apply fully in the digital
environment, in particular to the use of works
389, an appeal from [2012] NZHC 3314.
in digital form. The storage of a protected
11. http://wipo.int/copyright/en/
work in digital form in an electronic medium
activities/video_games.html.
12. Technomed Ltd & Anor v. Bluecrest Health Screening
constitutes a ‘reproduction’. Reproduction
Ltd & Anor [2017] EWHC 2142 (Ch). As to the originality
‘in any manner or form’ irrespective of the
requirement of databases, see Global Yellow Pages
duration of the reproduction, applies to a
Ltd v. Promedia Directories Pte Ltd [2017] SGCA 28.
13. C-444/02, Fixtures Marketing Limited
reproduction in digital form through storage
v. Organismos Prognostikon Agonon
in an electronic memory, even if the reproducPodosfairou (OPAP) [2004] ECR I-10549.
tion is of a temporary nature.
14. The obligation of member countries to deal
with circumvention of effective technological
measures under the Treaty is not discussed.
As to the EU lending right, see Vereniging
Openbare Bibliotheken [VOB] v. Stichting
Leenrecht, C-174/15, ECLI:EU:C:2016:856.

162

12. Reproduction right – reproduction requires new
copies: On general principles, the resale of physical
DVDs and CDs is permitted, because it does not

ENFORCEMENT OF IPRS IN THE DIGITAL AND INTERNET AGE

amount to an act of reproduction (the number of
physical objects does not increase); also, it would be
unlawful in the light of the ‘exhaustion of rights’ principle.15 Resale of hardware (the PC hard disk, external
hard drive or music player) onto which the media was
originally downloaded is likewise permitted. However,
it is illegal to make copies of CDs, DVDs, downloads
and the like.
13. Search engines: Search engines do not reproduce,
or copy, works, nor do they distribute works. They
merely provide the internet address to the user.
PERFECT 10, INC. v. GOOGLE INC. 508 F.3d 1146
(9th Cir. 2007):

computers do not store the photographic
images, Google does not have a copy of
the images for purposes of the Copyright
Act. Instead of communicating a copy of the
image, Google provides HTML instructions
that direct a user’s browser to a website
publisher’s computer that stores the full-size
photographic image. Providing these HTML
instructions is not equivalent to showing a
copy. The HTML merely gives the address of
the image to the user’s browser. The browser
then interacts with the computer that stores
the infringing image. It is this interaction that
causes an infringing image to appear on the
user’s computer screen. Google may facilitate
the user’s access to infringing images.

Google operates a search engine, a software
program that automatically accesses thou- 14. Reproduction right – browsing: Most websites are
sands of websites (collections of webpages) designed to be accessed by members of the public.
and indexes them within a database stored The operators add content to their website with the
on Google’s computers. When a Google user very intention of wanting people to access it. Anyone
accesses the Google website and types in who places material on the internet without restriction
a search query, Google’s software searches knows that the material may be downloaded, forwarded,
its database for websites responsive to that printed and links provided. This may amount to a tacit or
search query. Google then sends relevant implied free-of-charge copyright license to the reader to
information from its index of websites to the make a copy of their content on the reader’s computer
user’s computer. Google’s search engines screen to view it. As such, most acts of browsing will
can provide results in the form of text, images, be entirely legal and will not infringe copyright. Such
or videos. The Google search engine that an implied license must, however, be construed strictly.
provides responses in the form of images is It may not cover commercial use or more copies than
called ‘Google Image Search.’ In response to a the person accessing would require for personal use.
search query, Google Image Search identifies
text in its database responsive to the query and PUBLIC RELATIONS CONSULTANTS ASSOCIATION
then communicates to users the images asso- LTD v. THE NEWSPAPER LICENSING AGENCY LTD
ciated with the relevant text. Google’s software & ORS [2013] UKSC 18:16
cannot recognize and index the images themselves. Google Image Search provides search
The owner of a copyright has the exclusive
results as a webpage of small images called
right to do or to authorise a number of acts
‘thumbnails,’ which are stored on Google’s
defined in sections 16 to 26 of the Copyright,
servers. The thumbnail images are reduced,
Designs and Patents Act 1988. Broadly speaklower-resolution versions of full-sized images,
ing, it is an infringement to make or distribute
stored on third-party computers.
copies or adaptations of a protected work.
Merely viewing or reading it is not an infringeGoogle does not, however, display a copy of
ment. A person who reads a pirated copy
full-size infringing photographic images for
of a protected book or views a forgery of a
purposes of the Copyright Act when Google
protected painting commits no infringement
frames in-line linked images that appear on
although the person who sold him the book
a user’s computer screen. Because Google’s
or forged the painting may do.

15. UsedSoft GmbH v. Oracle International
Corp, Case C-128/11.

16. See, too, Public Relations Consultants
Association v Meltwater C-360/13.

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CASEBOOK ON IP ENFORCEMENT

The ordinary use of the Internet will involve the
creation of temporary copies at several stages.
Copies will be created in the course of transmission in Internet routers and proxy servers.
Where a webpage is viewed by an end-user
on his computer, without being downloaded,
the technical processes involved will require
temporary copies to be made on screen and
also in the Internet ‘cache’ on the hard disk.
The screen copy is self-evidently an essential
part of the technology involved, without which
the webpage cannot be viewed by the user.
The important point is that in none of these
cases does the end-user set out to make a
copy of the webpage unless he chooses to
download it or print it out. His object is to view
the material. The copies temporarily retained
on the screen or the Internet cache are merely
the incidental consequence of his use of a
computer to do that.

works are distinguished from their material
embodiments. These include phonorecords,
which are the material objects in which
sounds are fixed by any method now known
or later developed, and from which the sounds
can be perceived, reproduced, or otherwise
communicated, either directly or with the aid
of a machine or device. Thus, the plain text of
the Copyright Act makes clear that reproduction occurs when a copyrighted work is fixed
in a new material object.
16. Reproduction right – linking: Linking typically occurs
when the creator of one website provides a reference
to another website, usually indicated in colored text
or icons, using software that allows the user to click
on the reference and view the content on the linked
website. Deep-linking involves the transfer of a user
to an internal page of the second site and not only to
the other website. This means that the user does not
need to open the website itself and then move to the
webpage. This does not amount to reproduction. As
to whether linking may amount to a communication to
the public, see item 21.

15. Reproduction right – duplicating digital files: The
unauthorized duplication of digitized material, such
as digital music files, over the Internet or otherwise,
infringes a copyright owner’s exclusive right to repro- TICKETMASTER v. TICKETS.COM 2003 US Dist Lexis
duce. This is obviously subject to any fair-use excep- 6483 from 54 USPQ 2d 1344:
tions, if applicable.
[H]yperlinking does not itself involve a [direct]
CAPITOL RECORDS, LLC v. REDIGI INC, 934 FSupp2d
violation of the Copyright Act (whatever it
640:
may do for other claims) since no copying
is involved.
Courts have consistently held that the unauthorized duplication of digital music files over 17. Reproduction right – monitoring media websites:
the Internet infringes a copyright owner’s The Meltwater17 system monitors websites with a
exclusive right to reproduce. See, e.g., A & ‘spider’ computer program to ‘scrape’ or read the
M Records, Inc. v. Napster, Inc., 239 F.3d contents of sites to identify required information, which
1004, 1014 (9th Cir.2001). However, courts is communicated to a client by means of an email alert.
have not previously addressed whether the The alert contains (a) a hyperlink to each relevant article,
unauthorized transfer of a digital music file (b) the headline from the article, (c) the opening words
over the Internet where only one file exists of the article after the headline and (d) an extract from
before and after the transfer constitutes the article showing the context in which the agent
reproduction within the meaning of the appears by reproducing the agent and some words
Copyright Act. The Court holds that it does.
immediately preceding and following it.
The Copyright Act provides that a copyright
owner has the exclusive right to reproduce
the copyrighted work in phonorecords.
Copyrighted works are defined to include,
inter alia, sound recordings, which are works
that result from the fixation of a series of
musical, spoken, or other sounds. Such
164

17. The Newspaper Licensing Agency Ltd & Ors
v. Meltwater Holding BV & Ors [2011] EWCA
Civ 890 (27 July 2011); The Associated Press
v. Meltwater US Holdings Inc 12-cv-1087, U.S.
District Court, Southern District of New York.

ENFORCEMENT OF IPRS IN THE DIGITAL AND INTERNET AGE

This raises several issues, such as whether a headline
and opening words can be original literary works,18
whether extracts are substantial parts of the work, fairuse protection, and whether the end-user is infringing.
These issues depend very much on local law, and for
this reason, extracts are not provided.
18. Reproduction right – television sports clips: That the
use of sports clips amounts to copyright infringement,
if the clip reproduces a substantial part of the work, is
beyond argument.
ENGLAND AND WALES CRICKET BOARD LTD &
ANOR v. TIXDAQ LTD & ANOR [2016] EWHC 575 (Ch):

back at the time of the subscriber’s choosing. Because
this requires the copying and storing by the service of
each television broadcast recorded for a subscriber, it
amounts to copyright infringement.20
20. Communication right: Authors of literary and artistic
works enjoy in terms of the WIPO Copyright Treaty the
exclusive right of authorizing any communication to the
public of their works, by wire or wireless means, including the making available to the public of their works in
such a way that members of the public may access
these works from a place and at a time individually
chosen by them.

The mere provision of physical facilities for enabling
Quantitatively, 8 seconds is not a large propor- or making a communication does not in itself amount
tion of a broadcast or film lasting two hours to communication.
or more. Qualitatively, however, it is clear that
most of the clips uploaded constituted high- Countries may carry over and adapt for the digital
lights of the matches: wickets taken, appeals environment limitations and exceptions in their national
refused, centuries scored and the like. Thus laws that are acceptable under the Berne Convention.
most of the clips showed something of interest, They also may devise new exceptions and limitations
and hence value. The majority of the clips also that are appropriate in the digital network environment.
involved action replays discussed above. Thus These remain subject to the limitations and exceptions
each clip substantially exploited the Claimants’ permitted by the Berne Convention.
investment in producing the relevant broadcast
and/or film. Accordingly, in my judgment, each 21. Communication right – linking: A hyperlink does
such clip constituted a substantial part of the not render the operator of the linking website liable
relevant copyright work(s).
based on an infringement of the communication right.21
19. Reproduction right – time shifting: As to whether
manufacturers of video recording machines and the
like could be held liable for contributory copyright
infringement, reference should be made to Sony Corp.
of America v. Universal City Studios, Inc., 464 U.S.
417(1984). The grounds on which the court held that
Sony was not liable were because (a) many copyright
holders would likely not object to viewers recording
programs to allow later viewing, (b) ‘time-shifting’ is
fair use and (c) there existed ‘substantial non-infringing
uses’ (i.e., the product was not directed at infringement
only). The third point might be convincing.19
The second kind of time shifting is a subscription
service that enables a subscriber to have television
programs recorded when broadcast and then played

18. As discussed before, the meaning of ‘original work’
is differently understood in different jurisdictions.
19. But see Stichting Brein v. Jack Frederik
Wullems (Filmspele) C527/15.

PERFECT 10, INC. v. GOOGLE INC. 508 F.3d 1146
(9th Cir. 2007): 22
Google’s search engine communicates HTML
instructions that tell a user’s browser where to
find full-size images on a website publisher’s
computer, but Google does not itself distribute copies of the infringing photographs. It is
the website publisher’s computer that distributes copies of the images by transmitting
the photographic image electronically to the
user’s computer.

20. National Rugby League Investments Pty Limited v.
Singtel Optus Pty Ltd [2012] FCAFC 59 (27 April 2012).
21. Warman v. Fournier, 2012 FC 803 (CanLII).
22. The question whether, by indexing and displaying
thumbnails of photographs publicly available
on the internet, Google infringes the author’s
exclusive right of communication to the public,
was also answered in the negative by the
German court: (I ZR 11/16 - Preview III).

165

CASEBOOK ON IP ENFORCEMENT

NILS SVENSSON AND OTHERS v. RETRIEVER
SVERIGE AB, C-466/12, 13 February 2014:
Whether the act of communication (or rather
the act of making the copyright work available)
to the public is an infringing act depends on (i)
whether the content to which the link is made
is posted with the permission of the copyright
owner and (ii) whether the link makes the
content available to the same audience as
that of the original website. If either of these
components is missing, the provision of a
hypertext link automatically amounts to a
copyright infringement.
GS MEDIA BV v. SANOMA MEDIA NETHERLANDS
BV (C-160/15):
The referring court asks, in essence, whether,
and in what possible circumstances, the
fact of posting, on a website, a hyperlink to
protected works, freely available on another
website without the consent of the copyright
holder, constitutes a ‘communication to the
public’ within the meaning of Article 3(1) of
Directive 2001/29.
In that context, it raises the question of the
relevance of the fact that the works in question have not yet been published in another
way with the consent of that right-holder, that
providing those hyperlinks makes it much
easier to find those works, given that the
website on which they are available is not
easily findable by the general Internet public,
and that whoever posts those links knew or
ought to have been aware of those facts and
the fact that that right-holder did not consent
to the publication of the works in question on
that latter website.
In order to establish whether the fact of posting, on a website, hyperlinks to protected
works, which are freely available on another
website without the consent of the copyright
holder, constitutes a ‘communication to the
public’ within the meaning of that provision,
it is to be determined whether those links are
provided without the pursuit of financial gain
by a person who did not know or could not
reasonably have known the illegal nature of
the publication of those works on that other
166

website or whether, on the contrary, those links
are provided for such a purpose, a situation
in which that knowledge must be presumed.
22. Communication/distribution right – file sharing:
DRAMATICO ENTERTAINMENT LTD & ORS v.
BRITISH SKY BROADCASTING LTD & ORS [2012]
EWHC 268 (Ch):23
File sharing (Person-to-Person or P2P) services share certain basic elements: The user
downloads and installs on his computer software, for example, µTorrent. No personal identification is required. Whenever that computer
connects to the Internet, it becomes part
of a P2P network consisting of many other
computers using the same software. A user
locates files for download made available by
other users of the network. At the same time,
the user’s computer acts as an uploader,
making the files that it has available. The files
are not stored or hosted on a central server.
P2P technology distributes large data files
by breaking them up into small pieces
(chunks) and sends them over the Internet to
the requesting user. The P2P software then
requests chunks of the file from different
members of the P2P network. When all the
data is received by the user’s computer, the
file is reassembled as a whole.
23. Legal consequences of file sharing:24
DRAMATICO ENTERTAINMENT LTD & ORS v.
BRITISH SKY BROADCASTING LTD & ORS [2012]
EWHC 268 (Ch):
Operators authorize its users’ infringing acts
of copying and communication to the public.
They induce, incite or persuade its users to
commit infringements of copyright. Thus they
are jointly liable for the infringements commit-

23. Redacted version. LondonSire Records, Inc.
v. John Doe 1, 542 F.Supp.2d 153, 166 &
n. 16 (D.Mass.2008). Stichting Brein v. Jack
Frederik Wullems (Filmspele) C527/15.
24. Redacted. Metro-Goldwyn-Mayer Studios Inc. v.
Grokster 913 (2005). EMI Records Ltd & Ors v. British
Sky Broadcasting Ltd & Ors [2013] EWHC 379 (Ch).

ENFORCEMENT OF IPRS IN THE DIGITAL AND INTERNET AGE

ted by users. The fact that the network was
capable of substantial non-infringing uses is
irrelevant since such downloads are not the
principal aim of the system.

C. Trademark infringement issues
25. Trademark infringement on the internet does not
differ from any other trademark infringement: Typically,
it concerns counterfeit goods and the use of identical
marks on identical goods.

24. Communication right – streaming:25 Streaming
involves an act of communication by electronic transmission to each user who accesses a streaming server. The associated problems are mainly practical. As
Operators of the servers commit an act of communica- indicated by Dr. Frederick Mostert:26
tion because they intervene deliberately in communicating the works to the public.
In virtually all WIPO Member States, civil
remedies against online infringers are availITV BROADCASTING LTD AND OTHERS v. TV
able to trademark owners. These remedies
CATCHUP LTD Case C-607/11:
more often than not prove to be ineffective for
the following reasons: (1) the identity of the
Television broadcasters may prohibit the
infringers is often unknown to the trademark
retransmission of their program by another
owner; (2) the anonymity problem is exacercompany via the Internet. That retransmisbated by the ‘whack-a-mole’ phenomenon
sion constitutes, under certain conditions, ‘a
– in those situations where the infringer is
communication to the public’ of works which
identified and their webpage is taken down,
must be authorized by their author. Authors
another online listing usually pops under a
have an exclusive right to authorize or prohibit
different URL or page almost instantly; (3) the
any communication of their works to the
sheer volume and velocity of online sales of
public. An Internet television broadcasting
counterfeits make them very time sensitive –
service which permits its users to receive,
postings are typically posted only for a few
via the Internet, ‘live’ streams of free-to-air
hours or days; this tempus fugit issue makes
television broadcasts which they are already
the timely online track and trace of counterfeit
legally entitled to watch in the United Kingdom
listings very difficult; (4) civil remedies are
by virtue of their television license infringes
complemented with criminal and administracopyright in broadcasts and films as being a
tive measures, but these normally require a
communication to the public.
large volume of counterfeit infringements in
order for authorities to take action; (5) it is not
The term ‘public’ refers to an indeterminate
always clear what minimum contacts or links
number of potential recipients and implies,
are required to find jurisdiction in a country;
moreover, a fairly large number of persons.
(6) infringers typically using more than one
The cumulative effect of making the works
website in different countries raises questions
available to potential recipients should be
of enforcement of foreign judgments and
taken into account and that, in that connec(7) currently there is no international mechation, it is in particular relevant to ascertain the
nism for the voluntary arbitration of online
number of persons who have access to the
counterfeit cases.
same work at the same time and successively.
PRO SWING INC v. ELTA GOLF INC [2006] 2 S.C.R.
612, 2006 SCC 52:
Modern-day commercial transactions require
prompt reactions and effective remedies. The
advent of the Internet has heightened the
need for appropriate tools. On the one hand,
25. The Football Association Premier League
Ltd v. British Telecommunications Plc & Ors
[2017] EWHC 480 (Ch); Stichting Brein v. Jack
Frederik Wullems (Filmspele) C527/15.

26. Frederick Mostert, Study on Approaches to Online
Trademark Infringements WIPO/ACE/12/9 REV.2.

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CASEBOOK ON IP ENFORCEMENT

frontiers remain relevant to national identity
and jurisdiction, but on the other hand, the
globalization of commerce and mobility of
both people and assets make them less so.
Extraterritoriality and comity cannot serve as
a substitute for a lack of worldwide trademark
protection. The Internet poses new challenges to trademark holders, but equitable
jurisdiction cannot solve all their problems.
In the future, when considering cases that
are likely to result in proceedings in a foreign
jurisdiction, judges will no doubt be alerted
to the need to be clear as regards territoriality.
26. Keywords: Two questions arise when trademarks
are used as keywords: (a) does the seller of keywords (or
AdWords) commit trademark infringement and (b) does
the user (the competitor) commit trademark infringement?
GOOGLE INC v. AUSTRALIAN COMPETITION AND
CONSUMER COMMISSION [2013] HCA 1
Internet users are increasingly resorting to
search engines to locate information online,
as an alternative to relying on domain names
to navigate the Web. Users request a search
of specified terms and the search engine then
uses a mixture of manual and automated
methods to locate those keywords on the
Web, either in meta tags, URLs, keyword
listing or based on a history of visits. Some of
these search engines ‘sell’ keywords to advertisers who want to target their marketing, such
that, whenever the keyword is entered into
the search engine, an advertisement appears
along with any search results. Retailers, for
example, have purchased keywords so that
their banner advertisements are displayed
whenever certain trademarked products are
the object of a search. 27

27. Institutional Arrangements Concerning Intellectual
Property Enforcement Policies and Regimes to
Address Online Infringements at: http://www.wipo.
int/edocs/mdocs/enforcement/en/wipo_ace_12/
wipo_ace_12_10.pdf; Approaches to Online
Trademark Infringements at: http://www.wipo.int/
meetings/en/doc_details.jsp? _id=381836.

168

27. Sale of AdWords: The preferred answer to the
question is that a provider, such as Google, in selling
AdWords does not use the trademark as a badge of
origin – it does not use it in the trademark sense. It
sells advertising space.
GOOGLE FRANCE SARL AND GOOGLE INC. v. LOUIS
VUITTON MALLETIER SA (C-236/08):
Google operates an internet search engine.
When an internet user performs a search on
the basis of one or more words, the search
engine will display the sites which appear best
to correspond to those words, in decreasing
order of relevance. These are referred to as
the ‘natural’ results of the search.
In addition, Google offers a paid referencing service called ‘AdWords’. That service
enables any economic operator, by means
of the reservation of one or more keywords,
to obtain the placing, in the event of a correspondence between one or more of those
words and that/those entered as a request in
the search engine by an internet user, of an
advertising link to its site. That advertising link
appears under the heading ‘sponsored links’,
which is displayed either on the right-hand
side of the screen, to the right of the natural
results, or on the upper part of the screen,
above the natural results.
That advertising link is accompanied by a
short commercial message. Together, that link
and that message constitute the advertisement (‘ad’) displayed under the abovementioned heading.
A fee for the referencing service is payable by
the advertiser for each click on the advertising link. That fee is calculated on the basis, in
particular, of the ‘maximum price per click’
which the advertiser agreed to pay when
concluding with Google the contract for the
referencing service and on the basis of the
number of times that link is clicked on by
internet users.
A number of advertisers can reserve the same
keyword. The order in which their advertising
links are then displayed is determined according to, in particular, the maximum price per

ENFORCEMENT OF IPRS IN THE DIGITAL AND INTERNET AGE

click, the number of previous clicks on those
links and the quality of the ad as assessed
by Google. The advertiser can at any time
improve its ranking in the display by fixing a
higher maximum price per click or by trying
to improve the quality of its ad.
Google has set up an automated process for
the selection of keywords and the creation of
ads. Advertisers select the keywords, draft
the commercial message, and input the link
to their site.
A referencing service provider allows its clients
to use signs which are identical with, or similar
to, trademarks, without itself, using those signs.
That conclusion is not called into question by
the fact that that service provider is paid by its
clients for the use of those signs. The fact of
creating the technical conditions necessary for
the use of a sign and being paid for that service
does not mean that the party offering the
service itself uses the sign. It follows from the
foregoing that a referencing service provider
is not involved in use in the course of trade.
28. Use of AdWords: If a competitor uses the trademark of a trademark owner as an AdWord, a user who
searches for that trademark will be given a link to the
competitor’s site or an advertisement of the competitor
will appear on the screen. In other words, the AdWord
will trigger an advertisement of the competitor and
divert the attention of the user to the competitor’s
website or advertisement. The general approach of
courts appears to be that, unless the advertisement or
sponsored link use the complainant’s trademark in the
trademark sense and cause confusion, there cannot
be trademark infringement.28

28. Interflora Inc & Anor v. Marks and Spencer Plc
(Rev 1) [2014] EWCA Civ 1403 (05 November 2014);
Cochrane Steel Products (Pty) Ltd v. M-Systems
Group (Pty) Ltd and Another (227/2015) [2016] ZASCA
74; Argos Ltd v. Argos Systems Inc [2017] EWHC
231 (Ch). But see Victoria Plum Ltd (t/a Victoria
Plumb) v. Victorian Plumbing Ltd & Ors [2016] EWHC
2911 (Ch); See further Network Automation, Inc. v.
Advanced Systems Concepts, Inc. 638 F.3d 1137 (9th
Cir. 2011), Rosetta Stone Ltd. v. Google, Inc., 676
F.3d 144, (4th Cir. 2012), and Multi Time Mach., Inc.
v. Amazon.com, Inc., 804 F.3d 930 (9th Cir. 2015)
(2-1 decision), cert denied, 136 S. Ct. 1231 (2016).

29. Use of trademarks as meta tags:29 A ‘meta tag’
or ‘metadata’ is a keyword or phrase embedded in a
website’s HTML (hypertext markup language) code
as a means for internet search engines to identify and
categorize the contents of the website. Meta tags
are not visible to normal users on the website itself
(although they can be made visible together with the
source code of the page), however, a search engine
seeking particular keywords will find and list that
particular site. The more often a keyword appears in
the hidden code, the higher a search engine will rank
the site in its search results.
However, a trademark employed as a meta tag, because
it is used in a way that is invisible to the average viewer,
is not used primarily to distinguish particular goods or
services. In some jurisdictions, the courts have nevertheless found that the use of competitors’ names as
meta tags constitutes unfair competition.
RED LABEL VACATIONS INC. (REDTAG.CA) v. 411
TRAVEL BUYS LIMITED (411TRAVELBUYS.CA), 2015
FC 18 (CanLII):30
As with copyright, there is some dispute internationally on whether the use of a trademark in
a meta tag can constitute passing off or trademark infringement. Both the English Court
of Appeal, in Reed Executive plc & Another
v Reed Business Information Ltd & Others,
[2004] EWCA Civ 159 at para 147, and the
British Columbia Supreme Court, in Insurance
Corp of British Columbia v Stainton Ventures
Ltd, 2012 BCSC 608 (CanLII) at paras 46-47
[ICBC], found that use of a trademark (and, I
would add, a trade name) in a metatag would
not support a finding of confusion or a likelihood of deception, and therefore trademark
infringement or passing off could not be
proven by that use alone. As stated by Justice
Grauer, the behaviour of search engines is not
evidence of anything other than the operation
of an algorithm, and search-engine marketing.
It is certainly not evidence of confusion.

29. Institutional Arrangements Concerning Intellectual
Property Enforcement Policies and Regimes
to Address Online Infringements; Approaches
to Online Trademark Infringements.
30. On appeal: Red Label Vacations Inc. (Redtag.
ca) v. 411 Travel Buys Limited (411 Travel
Buys Limited), 2015 FCA 290 (CanLII).

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30. Domain names and cybersquatting: A domain
name is a website address on the internet that gives an
online identity. Domain names differ from trademarks.31
In particular, their use is determined in terms of a
contract with a registering authority, which invariably
requires that disputes be settled through alternative
dispute resolution.
Cybersquatting is the pre-emptive registration
of trademarks by third parties as domain names.
Cybersquatters exploit the first-come, first-served
nature of the domain name registration system to
register names of trademarks, famous people or businesses with which they have no connection.
International disputes are, pursuant to the standard
dispute clause for registration, dealt with in terms of
the Uniform Domain Name Dispute Resolution Policy
(UDRP).32 The registrant must submit to the Domain
Name Dispute Resolution Service under WIPO.33
Generally, complainants must show that they have
valid rights in the mark, the domain name registrant has
no rights in the mark and the domain was registered
in bad faith. Local jurisdictions may have their own
ADR systems.
CONSORZIO PER LA TUTELA DEL FORMAGGIO
GORGONZOLA V. ROB MONSTER / DIGITALTOWN,
INC. Case No. D2017-0253:
The disputed domain name <gorgonzola.city>.
The Complainant is the holder of trademark
registrations for CG GORGONZOLA. The
Respondent is a U.S. public company and is
engaged in developing a platform to enable
cities worldwide to provide access to local
information, including restaurants, lodging,
and city services.
Under paragraph 4(a) of the Policy, the
Complainant is required to prove each of
the following three elements: (i) the Disputed
Domain Name is identical or confusingly
similar to a trademark or service mark in
which the Complainant has rights; and (ii)

31. Hong Kong Trademark Registry, ‘Differences
Between Trade Marks and Domain Names.'
32. UDRP Procedures for Generic Top Level
Domains (gTLDs), at http://www.wipo.
int/amc/en/domains/gtld/udrp/.
33. http://www.wipo.int/amc/en/domains/.

170

the Respondent has no rights or legitimate
interests in respect of the Disputed Domain
Name; and (iii) the Disputed Domain Name
has been registered and is being used by the
Respondent in bad faith.
The Panel accepts that the Complainant has
rights in the CG GORGONZOLA device trademark [and that the] Disputed Domain Name
is identical to the most prominent element of
the Complainant’s CG GORGONZOLA device
trademark, i.e., the word ‘gorgonzola’.
The Panel concludes that the Respondent
is using the Disputed Domain Name in a
descriptive manner, rather than in order to
target the Complainant’s CG GORGONZOLA
mark and that such activity provides the
defense to the Respondent set out in paragraph 4(c)(i), in respect to the Disputed
Domain Name. The Panel [accordingly] finds
that the Complainant has failed to satisfy
paragraph 4(a)(ii) of the Policy.

D. Intermediaries
31. Liability of intermediaries: In the digital environment,
the services of intermediaries are increasingly used
for infringing activities. The typical intermediary is the
internet service provider (ISP). Intermediaries are often
best placed to bring such infringing activities to an end.
In Roadshow Films Pty Ltd v. iiNet Ltd [2012] HCA 16
(20 April 2012), the court adopted what appears to
be the consensus view on the liability of ISPs: they
are not liable for ‘authorizing’ copyright infringement
by making their services available to people who do
infringe copyright because ISPs do not have any direct
technical power to prevent their customers from using
other systems to infringe copyright. The extent of their
power to prevent customers from infringing is limited
to an indirect power to terminate an ISP's contractual
relationship with its customers. The same applies to
trademark infringement.34

34. Cartier International AG & Ors v. British Sky
Broadcasting Ltd & Ors [2016] EWCA Civ 658
(06 July 2016); Cartier International Ltd & Anor
v. British Telecommunications Plc & Ors [2016]
EWHC 339 (Ch); Dallas Buyers Club LLC v.
iiNet Limited [2015] FCA 317 (7 April 2015).

ENFORCEMENT OF IPRS IN THE DIGITAL AND INTERNET AGE

32. Injunctive relief against ISPs: However, rights holders may apply for an injunction against intermediaries
if the rights holders' services are being used by a third
party to infringe a copyright or related right.35

of the court. To determine whether such a website is
committing copyright or trademark infringement within
the local jurisdiction, courts tend to determine whether
the local jurisdiction is being targeted by the website.37

Four things need to be established to satisfy the
jurisdictional requirements for an injunction: (a) that
the respondent is a service provider, (b) that the users
and/or the operators of the websites infringe an IP
right, (c) that the users and/or the operators use the
services of the respondent to do that and (d) that the
respondent has actual knowledge of the infringement.
If these jurisdictional requirements are satisfied, the
court then considers issues of proportionality and
discretion before granting the injunction.

ARGOS LTD v. ARGOS SYSTEMS INC [2017] EWHC
231 (Ch):38

2010 (Ne) 10076, February 14, 2012 [Intellectual
Property High Court] (‘Chupa Chups’ case):
A case in which, with regard to the infringement of a trademark right by the participating
shops of an Internet-based shopping mall
called ‘Rakuten market (Rakuten ichiba)’ and
whether or not it is possible to seek an injunction and damages against the appellee, a
company which operates said market, the
court dismissed the appeal by finding that,
while operators of webpages are liable in
certain cases, the appellee, in this case, had
taken steps to rectify the infringement of the
trademark right within a reasonable period
from the time when it became aware of or there
were reasonable grounds to find that it could
have become aware of such infringement of
trademark right and thus was not liable for
injunction or compensation of damages

E. Jurisdictional issues36
33. Typical problem: Because copyrights and trademarks are territorial, they can only be protected as a
general principle by the court where they are infringed.
In the digital era, though, the problem is that the infringing website may be situated beyond the jurisdiction

35. The Football Association Premier League Ltd v. British
Telecommunications Plc & Ors [2017] EWHC 480 (Ch).
36. Annabelle Bennett and Sam Granata, 'The
Intersection Between Intellectual Property Law and
Private International Law.’ at http://www.wipo.int/
meetings/en/doc_details.jsp?doc_id=382036.

(i) The question is not one of the subjective
intention of the advertiser, but rather one of
the objective effect of its conduct viewed from
the perspective of the average consumer; (ii)
in order to determine whether there is use in
a territory there must be an inquiry as to what
the purpose and effect of the advertisement
in question is; (iii) it all depends upon the
circumstances, particularly the intention of
the website owner and what the reader will
understand if he accesses the site, (iv) any
other evidence of the advertiser’s intention
(which I would interpret, in context, as being
a reference to evidence of intentions which
are manifested in such a way that the average
consumer of the goods or services in issue
within the UK would regard the advertisement
and site as being aimed and directed at him);
(v) the question of whether a website is targeted to a particular country is a multi-factorial
one which depends on all the circumstances;
(vi) what matters is how the site looks and
functions when someone in this jurisdiction
interacts with it, and (vii) the focus should
[not] be anywhere other than on the effect of
the trader’s activity on the average consumer.
EMI RECORDS LTD & ORS v. BRITISH SKY
BROADCASTING LTD & ORS [2013] EWHC 379 (Ch):39
The third question is whether the act of communication to the public occurs in the UK. Since
the operators appear to be based outside
the UK, the question is whether their acts of

37. Much depends on local law, and the facts may be
complex: Nintendo Co Ltd v. BigBen Interactive
GmbH (C-25/16) of 27 September 2017; BGH, I
ZR 164/16 of 20 November; ‘Parfummarken.’
38. Stichting BDO & Ors v. BDO Unibank, Inc & Ors
[2013] EWHC 418 (Ch), [2013] FSR 35; Thomas
Pink Limited v. Victoria’s Secret UK Ltd [2014]
EWHC 2631 (Ch), [2014] WLR(D) 368.
39. Omnibill (Pty) Ltd v. Egpsxxx Ltd &
Anor [2014] EWHC 3762 (IPEC).

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communication to the public are targeted at the
public in the UK. In considering this question,
it appears from the judgment of the CJEU in
Football Dataco v Sportradar that it is relevant
to take into account, by analogy, criteria which
the CJEU has treated as relevant to the issue of
targeting in a number of other contexts.
In Pammer and Hotel Alpenhof the Court of
Justice held at [93] as follows:
The following matters, the list of
which is not exhaustive, are capable
of constituting evidence from which
it may be concluded that the trader’s
activity is directed to the Member State
of the consumer’s domicile, namely
the international nature of the activity, mention of itineraries from other
Member States for going to the place
where the trader is established, use of
a language or a currency other than the
language or currency generally used in
the Member State in which the trader
is established with the possibility of
making and confirming the reservation in that other language, mention
of telephone numbers with an international code, outlay of expenditure
on an internet referencing service in
order to facilitate access to the trader’s site or that of its intermediary by
consumers domiciled in other Member
States, use of a top-level domain name
other than that of the Member State in
which the trader is established, and
mention of an international clientele
composed of customers domiciled
in various Member States. It is for the
national courts to ascertain whether
such evidence exists.

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