Trademarks
| Module title | Trademarks |
|---|---|
| Module code | LAWM044 |
| Academic year | 2021/2 |
| Credits | 30 |
| Module staff | (Convenor) |
| Duration: Term | 1 | 2 | 3 |
|---|---|---|---|
| Duration: Weeks | 11 |
| Number students taking module (anticipated) | 20 |
|---|
Module description
In most modern economies the ‘brand’ has assumed major economic and social importance and pervades all aspects of our lives. This is a matter of major economic significance in modern economies because well-known marks such as Coca-Cola, as well as encouraging brand loyalty by consumers, are a valuable intangible asset to the companies often exceeding the value of their fixed assets such as factories and plant and machinery. You will examine the historical development of the key component of the brand image, the trade mark, and the legal and economic rationales advanced for trade mark protection. You will look at the key trade mark systems operating in the European Union - protection of domestic UK marks, Community Trade Marks and the international trade mark system under the Madrid Agreement and their inter-relationship. Registration of marks, infringement of marks, defences and remedies will be examined. You will consider arguments that the current trade mark system is now too strong and whether large corporations are able to use the system to impose barriers to effective competition. As well as an examination of the trade mark registration system, the common law protection of unregistered marks via the common law tort of passing off will also be considered. In addition you will look at the protection of geographical indications such as Champagne & Parmesan cheese etc and the use of trade marks by competitors in comparative advertisements regulated by the EU Comparative Advertising Directive. Comparisons will be made with other systems such as the US where relevant.
No prior knowledge of trade mark law or intellectual property law generally is required to participate in this module.
The module will be of particular interest to those interested in a career in intellectual property, advertising or brand management. As well as theoretical issues wherever possible the practical issues in working within the trade mark registration system will be explored e.g. use and construction of market surveys to demonstrate infringement which will be accepted by the courts).
Module aims - intentions of the module
The module aims are as follows:
- To develop an awareness of the importance of the trade mark system and its implications for the development of business in both a theoretical and practical way;
- To encourage engagement with research and scholarship in relation to trade mark law and protection;
- To stimulate critical analysis and evaluation about the operation of the current operation of trade mark law and in particular whether any reforms are needed;
- To encourage evaluation of the respective interests of right holders, authorised licensees, competitors and consumers and whether the current law balances those interests fairly and equitably;
- To encourage a practical awareness of the operation of the registration system in real business situations;
- To consider potential abuses of trade mark rights and the relationship of such trade mark rights to other key rights such as freedom of expression (e.g. parodying trade marks) and freedom of competition.
Intended Learning Outcomes (ILOs)
ILO: Module-specific skills
On successfully completing the module you will be able to...
- 1. Demonstrate a deep and systematic knowledge and understanding of the law in relation to the protection of trade marks and geographical appellations and an extensive range of major concepts, values and principles relevant to the application of the law;
- 2. Undertake complex critical evaluations of the main legal rules, institutions and procedures relevant to trade mark law using specialist literature and current research;
- 3. Compare, analyse and synthesise innovatively the principle rules and theories relating to the scope of protection of trade marks and geographical appellations;
- 4. Identify, explain and evaluate key issues in trade mark law critically and comprehensively and to apply relevant rules and a range of theories systematically;
- 5. Demonstrate deep and critical awareness of a wide range of legal and contextual implications of the areas of trade mark law studied;
ILO: Discipline-specific skills
On successfully completing the module you will be able to...
- 6. Demonstrate detailed and comprehensive knowledge and understanding of a range of legal concepts, values, principles and institutions and procedures and the ability to evaluate systematically the relationships among them as well as their limits;
- 7. Apply detailed and comprehensive legal knowledge and understanding to a problem/case study and to argue alternative approaches/to propose solutions innovatively;
ILO: Personal and key skills
On successfully completing the module you will be able to...
- 8. Interact effectively, confidently and proactively within a team/learning group to share information and ideas to clarify, plan and undertake tasks confidently and independently, individually and with others, to reflect critically on the learning process and to make use of feedback efficiently; and
- 9. Work independently and effectively and to manage time efficiently in preparing for scheduled learning activities, exercises and assessments.
Syllabus plan
Whilst the module’s precise content may vary from year to year to reflect current developments in the area it is envisaged that it will cover the following topics:
(1) The general history and development of the trade mark system and the rationales put forward to justify the granting of legal protection. The development of international protection through the World Intellectual Property Organisation, the World Trade Organisation and the Paris Convention for the Protection of Industrial Property (1883) (as amended).
(2) The structure and conditions for obtaining trade mark protection at UK, European Union and international level via the UK Intellectual Property Office, the European Union Trade Mark Office and the WIPO international search bureau in Geneva for international marks.
(3) The core requirements for trade mark protection – and absolute or public interest grounds of objection (e.g. that the mark is not distinctive, is generic or deceptive etc) and relative grounds of objection (e.g. prior third party rights).
(4) Legal rights and remedies granted to a trade mark owner to enforce trade mark rights against third parties including criminal law offences for misuse of trade marks.
(5) Licensing of trade marks to third parties or use of trade marks as security interest.
(6) Protection of well-known marks under Article 6bis Paris Convention of Industrial Property (1883)
(7) Use of protected trade marks by competitors in comparative advertising – EU Comparative Advertising Directive.
(8) Protection of geographical appellation such as Champagne, Parma Ham or Parmesan cheese etc.
(9) Use of trade marks in artistic works – trade marks and freedom of expression and use of trade marks in parodies.
(10) Prohibitions on use of trade marks in certain contexts e.g. cigarette plain packaging controversy.
(11) Common law protection of unregistered marks via the common law tort of passing off and unfair competition law.
(12) Inter-relationship of trade mark law and design law – limits on registering product designs as trade marks.
(13) Defences to trade mark infringement actions e.g. use of own name and concept of use according to honest commercial or industrial practices.
Learning activities and teaching methods (given in hours of study time)
| Scheduled Learning and Teaching Activities | Guided independent study | Placement / study abroad |
|---|---|---|
| 33 | 267 | 0 |
Details of learning activities and teaching methods
| Category | Hours of study time | Description |
|---|---|---|
| Scheduled Learning & Teaching Activities | 6 | Two 3 hour lectures which introduce students to the history and context of the topics and will provide the foundation for independent guided study |
| Scheduled Learning & Teaching Activities | 27 | Nine 3 hour lecturer led seminars which will involve at least one student/team lead presentation in each seminar relating to the topic under discussion. |
| Guided independent study | 157 | Preparation for seminars which will involve reading the recommended text and a cross-section of case law and critical academic article literature on the relevant topic. You would be expected to make appropriate notes on these materials to assist the making of seminar presentations and discussions of questions and issues in seminars. |
| Guided independent study | 60 | Preparation for formative and summative assessment |
| Guided independent study | 50 | Further independent research and reading and wider contextual study |
Formative assessment
| Form of assessment | Size of the assessment (eg length / duration) | ILOs assessed | Feedback method |
|---|---|---|---|
| Written formative assessment to be submitted by Week 7 of the course | 2000 words | 1-7, 9 | Use of feedback forms and where necessary oral discussion with the student. |
| Individual and team presentations | 15 minutes | 1-9 | Oral discussion |
Summative assessment (% of credit)
| Coursework | Written exams | Practical exams |
|---|---|---|
| 100 | 0 | 0 |
Details of summative assessment
| Form of assessment | % of credit | Size of the assessment (eg length / duration) | ILOs assessed | Feedback method |
|---|---|---|---|---|
| Essay | 100 | 7,500 words | 1-7, 9 | Formal written feedback and an opportunity, where necessary, for oral feedback and guidance from the lecturer. |
| 0 | ||||
| 0 | ||||
| 0 | ||||
| 0 | ||||
| 0 |
Details of re-assessment (where required by referral or deferral)
| Original form of assessment | Form of re-assessment | ILOs re-assessed | Timescale for re-assessment |
|---|---|---|---|
| Essay | Essay (7,500 words) | 1-7, 9 | August/September re-assessment period |
Re-assessment notes
Marks for re-assessments following an earlier failed attempt will, in the absence of special circumstances be capped at 50%.
Indicative learning resources - Basic reading
Core reading list:
Intellectual Property Law, 4 th edn, Bently and Sherman, OUP (2014).
Contemporary Intellectual Property: Law and Policy, Waelde, Laurie, Kheria and Cornwell, 4th edn OUP (2016).
Intellectual Property Law, 8 th edn, Holyoak and Torremans, OUP (2016).
Intellectual Property, 9th edn, Bainbridge, Pearson Education (2012).
Journals
European Intellectual Property Law Review
Intellectual Property Quarterly
Oxford Journal of Intellectual Property Law and Practice
Indicative learning resources - Web based and electronic resources
Westlaw, LexisNexis, and Lawtel, as well as knowledge-based materials at relevant organisations such as: the World Intellectual Property Organisation; the European Union Intellectual Property Office; the UK Intellectual Property Office; and the numerous expert blogs on the topic of trade mark law.
Key Organisations and weblinks:
UK Intellectual Property Office: http://www.ipo.gov.uk
UK Government Website: https://www.gov.uk/topic/intellectual-property/trade-marks EU Intellectual Property Office: https://euipo.europa.eu/ohimportal/en/
EU Intellectual Property Gateway: http://ec.europa.eu/internal_market/intellectual-property/index_en.htm
Indicative learning resources - Other resources
Library holds stock of relevant intellectual property books that cover these topics, as well as relevant journals. Students will have access to relevant knowledge databases, the Law School subscribes to databases such as Westlaw, LexisNexis, Lawtel etc and students will be able to access the wealth of material via the internet at the UK Intellectual Property Office, the EU Trade Mark Office and the WIPO and WTO data collections. Also blogs such as the IPKAT Blog and the Marques Blog will also be of use and easily accessible.
| Credit value | 30 |
|---|---|
| Module ECTS | 15 |
| Module pre-requisites | None |
| Module co-requisites | None |
| NQF level (module) | 7 |
| Available as distance learning? | No |
| Origin date | 31/07/2014 |
| Last revision date | 24/07/2017 |
