DRAFT INTELLECTUAL PROPERTY (REGISTERED RIGHTS) (MISCELLANEOUS PROVISIONS) (JERSEY) LAW 201-
REPORT
Overview
Intellectual property (IP) rights support innovative activity and can lead to increases in the profitability of a business investing in such activity. Products and services protected by IP rights ensure that there can be a reward for investment in innovation. IP rights can therefore be a valuable business asset. Ensuring that the laws making provision about IP in Jersey are modern and consistent with international standards is therefore an important policy objective for encouraging businesses of many types to locate and invest in the Island. Membership of the World Trade Organisation (WTO) also requires IP laws to specified standards to be in place and so Jersey must meet these if it desires the wider benefits of WTO membership.
The States approved the new law making provision compliant with international conventions about unregistered intellectual property rights, particularly copyright, in December 2010, which came into force in December 2012. This was an important milestone underpinning the work to diversify the economy in the area of e-commerce in particular and was the first stage of modernising Jersey’s intellectual property laws.
Registered IP rights can, though, also be important to support business activity in the area of e-commerce. For example, trade marks can brand a product or service being offered to the public online. Trade marks can be used to develop loyalty for a brand, often linked to a reputation for quality. Trade Marks are also important to rights holders to protect their products and services from misappropriation by others. Patents may arise in the inventive technical solutions that enable creative content to be delivered to consumers and enjoyed by them at home or on the move.
Registered IP rights can be crucial to other areas that are innovative too. Many goods and services are still made available to the public in the physical world and trade marks can be just as important to these as they are to goods and services sold online. A registered design right can be sought for the shape or visual appeal of any product or part of a product. This includes both 3-dimensional and 2-dimensional products, whether they are industrially produced or handcraft items. New designs might therefore be developed for many things, such as the shape of a car body, the appearance of a piece of jewellery, the configuration of a chair, the pattern on wallpaper or the style of a dress. Patents can apply to both products and processes that involve an inventive step. Businesses offering services to those who wish to acquire or already own IP rights are also affected by the nature of the law about registered IP rights. Ensuring the laws in Jersey about registered IP rights are modern and compliant with international conventions is therefore the priority now.
At the moment there are three laws in Jersey making provision about IP rights that arise as a result of registration, namely laws relating to trade marks, patents and registered designs. The laws essentially provide for re-registration of IP first registered in the UK. UK laws comply with the main international conventions and treaties relevant to these types of IP and so in many respects the Jersey laws permitting IP to be re-registered in Jersey will also be consistent with these obligations. But Jersey does not belong to the relevant international conventions and treaties, in particular the most recent version of the Paris Convention for the Protection of Industrial Property. There are a few detailed points in the Jersey laws that would preclude compliance with that Convention. This draft Law therefore brings forward amendments to remove these problems, and so should in due course enable the Island to seek extension of the UK’s membership of that Convention to the Island.
These changes to Jersey laws will not in practice make very much difference to the legal framework for registered IP rights in the Island. But extension of the UK’s membership of the Paris Convention to Jersey provides certainty for those concerned about the standard of protection in the areas of IP covered by that Convention. Businesses making decisions about whether to locate, invest in or expand their business operations in the Island will know that the relevant laws do indeed meet this important international standard. Compliance with the Paris Convention has another benefit too as it must be in place if Jersey wishes to be part of the WTO. Paris Convention compliance is required by the WTO agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). TRIPS includes additional requirements relating to laws about registered designs, patents and trade marks so this opportunity to update the three laws about registered IP rights is therefore also being used to ensure that they comply with TRIPS. The provisions needed to do this are also not very significant, and making these changes does not pre-judge whether or not the Island should seek to have the UK’s membership of the WTO extended to the Island. But TRIPS complaint laws ensure that there is no barrier in the IP area to WTO membership. Moreover, ensuring that the Jersey laws are TRIPS compliant delivers another important international standard which many businesses would expect.
Whilst delivering Paris Convention and TRIPS compliance, and so ensuring that WTO membership can be achieved, is the policy objective behind this draft Law, there may in due course be a need to further adjust the three laws about registered IP rights for compliance with changes to, or new, international treaties or conventions, or otherwise. One such change, supported by some stakeholders in Jersey, might be to establish a primary registration system for trade marks in particular, possibly in addition to the current option of secondary registration of UK registered trade marks. Some work has already been undertaken to explore the business case for doing this, but more work and consultations with all stakeholders would be needed before any decisions can be made about this.
Given the increasing importance of IP rights to a wide range of businesses, it may, therefore, be important to bring forward certain changes to the laws about IP beyond those in this draft Law by a route that is faster to have effect than the legislative route for a new Law. That is why this draft Law also includes powers to enable provision about the three types of IP where rights arise as a result of registration to be amended and updated in various ways by Regulations. This does not, of course, remove the essential scrutiny of any changes by the States, which would need to approve any Regulations in the same way that it approves a new Law.
Intellectual property in general
Intellectual property rights ensure that innovative concepts, and investment in making, developing and commercialising a product or service based on those concepts, cannot easily be undermined by competitors copying what has been done. IP rights are intangible property rights in an idea or the particular expression of an idea and give the owner of the property exclusive rights in relation to exploitation of protected goods and services. IP can also be bought and sold, or the IP rights can be licensed by those who own them for others to exploit what is protected. Some types of IP right provide a monopoly in what is protected, albeit this may only be for a limited period of time. Other types of IP right only provide a right that prevents copying by others. In all cases, though, the IP right is a right in intangible property separate from the physical property and services incorporating that IP that have been developed or made and exploited.
IP rights are therefore often a valuable business asset that can substantially enhance the competitiveness of a business. But some IP rights need to be acquired and maintained in order to exist and all IP rights need to be understood and appreciated in order for the full potential for them to generate income for a business to be realised. The value of IP is, though, often not adequately appreciated by businesses that could or do acquire IP rights. SMEs in particular may not appreciate the importance of IP rights in increasing their profitability. Getting advice from professionals, such as lawyers or patent and trade mark agents, in order to understand the role that IP can have in any business activity may be as important as advice about a number of other areas of law that impinge on a business. There are a number of businesses already operating in Jersey that are well placed to provide this type of advice.
Governments, including in Jersey, must, though, ensure that the legal framework providing protection for IP is appropriate. A key aspect of this is to ensure that the IP laws do at least meet widely accepted international standards that businesses located in, or thinking of investing in, the Island would reasonably expect to apply. Certain types of IP rights, such as copyright, are automatic in that they arise as soon as protectable material has been created. As has been indicated above, the States of Jersey has already enacted and brought into force a new copyright and related unregistered IP rights law (the Intellectual Property (Unregistered Rights) (Jersey) Law 2011) and so business advisers, including those operating through Digital Jersey, are now able to assure businesses that rights in these areas are in line with rights in much of the rest of the world. Indeed, the extension of the UK’s membership of the most important international convention in the copyright area, the Berne Convention, to Jersey in January 2014 recognises the care with which the law in this area has been updated to deliver compliance with international norms. That law was also updated to comply with other international conventions and treaties in the copyright area as well as the requirements of the WTO TRIPS Agreement for unregistered IP rights.
This draft Law is about registered IP rights, though, that is rights that do not exist until registration has been applied for and approved. The three types of IP covered by the draft Law are registered designs, patents and trade marks. These types of IP apply to different things:
- Registered designs apply to the shape or appearance of a product. What can be protected is the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or ornamentation on the product. The design must be new and have individual character. The design can be for a three-dimensional product or two-dimensional ornamentation for any product. A design dictated solely by the product’s technical function cannot, though, be registered.
- Patents protect a new and inventive product, or part of a product, or a process for making something. The invention could therefore be about how things work, what they do, how they do it, what they are made of or how they are made. As well as being new, there must be an inventive step, which is something that is not obvious to a person with knowledge and experience in the relevant subject matter area. An invention must be capable of being made or used in some kind of industry. Certain things are specifically excluded from be being patentable, such as a method of treatment or diagnosis of a human or animal body, a scientific theory and a way of doing business.
- Trade marks are essentially signs used to distinguish goods and services from those of competitors. This branding of goods and services is often achieved by use of one or more words, or a logo, or a combination of both words and logos. In order to be protected, a trade mark must be distinctive for the goods or services it is to be used with. It must differentiate the goods or services from those of someone else. Certain things cannot be registered as trade marks, such as things that describe the goods or services or any characteristics of them. For example, marks which show the quality, quantity, purpose, value or geographical origin of the goods or services, and something that is deceptive in that it would lead the public to think that the goods or services have a quality that they do not have, cannot be registered.
The draft Law amends current Jersey laws for each of the three types of registered IP right rather than make entirely new provision. These registered IP rights are sometimes known as industrial property rights, but industrial property rights are in turn a category of intellectual property rights. Many businesses, may, of course, have an interest in more than one of these types of IP, as well as other types of IP.
There are other types of IP where rights only arise after registration that do not currently exist at all in the Island, in particular IP rights in new plant varieties. Plant varieties are specifically excluded from coming within the scope of what can be protected by a patent in the UK and so there cannot be a patent for a plant variety in Jersey either. Rights in new plant varieties can be obtained in the UK and many other countries though. A law about this type of IP is not essential in order to comply with the Paris Convention, but making it possible to acquire IP rights in new plant varieties is an essential requirement in the WTO TRIPS Agreement. A further draft Law to make provision in the Island for rights in new plant varieties is therefore being developed and will be lodged for approval by the States Assembly later this year.
International conventions and treaties
International conventions and treaties in the intellectual property area making provision about registered IP rights are generally different from those that make provision about unregistered IP rights. As indicated above, this has therefore enabled Jersey to already successfully pursue extension of the UK’s membership of the International Convention for the Protection of Literary and Artistic Works (Paris Act 1971) (the Berne Convention) to the Island as a result of the new copyright law provided by the Intellectual Property (Unregistered Rights) (Jersey) Law 2011. The Island became part of the Berne Convention framework in January 2014.
The main international convention relevant to registered designs, patents and trade marks, the three types of IP for which laws are updated by this draft Law, is the Paris Convention for the Protection of Industrial Property (Stockholm Act 1967). There are currently 176 Contracting Parties to this Convention. Given that the Jersey laws about these three registered IP rights provide a system of secondary registration of UK rights and UK law complies with the requirements of the Paris Convention, in many respects Jersey laws comply too. (The UK has been a contracting party to the Paris Convention (1967) since 1970, first joining the original version of the Convention in 1884.) However, there are a few issues where there would be problems with compliance with the Paris Convention under the existing laws. This draft Law therefore makes some amendments to the existing laws to deliver compliance with the Paris Convention and so enable the Island to seek extension of the UK’s membership of this Convention to Jersey.
Compliance with the provisions in the Paris Convention (although not necessarily membership of the Convention) is also a requirement of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), which is part of the Agreement on the World Trade Organisation (WTO). The TRIPS Agreement then requires some additional provision about the three types of IP covered by this draft Law. If Jersey is to obtain membership of the WTO by extension of the UK’s membership to the Island, then complying with TRIPS is essential, and this would not be possible without some other amendments made to the existing Laws about registered IP rights as made by this draft Law. However, even without Paris Convention and WTO membership, there are likely to be advantages in having laws that can be said to be Paris and TRIPS compliant. The Paris Convention and TRIPS Agreement provide widely accepted international standards for the three registered IP rights addressed by this draft Law and so may be considered as a benchmark against which those seeking to invest in the Island would judge Jersey’s IP laws.
The Paris Convention does contain a provision whereby the filing of an application for registration of IP in one Contracting Party can, within a specified time, be used to claim a priority date for filing an application in another Contracting Party. This can be a very useful option for those wanting IP rights for what they have developed in more than one country. A Jersey application under the current laws could not, though, be the basis of a claim for priority for an application elsewhere as a Jersey application is not an original application. It is, rather, an application for registration of something already applied for and granted in the UK. Some of the advantages of being within the Paris Convention framework would not, therefore, arise for Jersey on the basis of the amendments made to Jersey laws by this draft Law. The States has, though, been assured by the UK that the secondary registration system operating in Jersey is not a barrier to extension of the UK’s membership of the Paris Convention to Jersey. If there were, in due course, to be a primary registration system for one or more types of IP, then there would, though, be an additional benefit from Convention membership as a result of the provisions in the Paris Convention about claims for priority.
There are three other international conventions making provision about the types of IP covered by this draft Law for which extension of the UK’s membership, or expected membership, to the Island may be appropriate. They make provision about international applications for the relevant IP rights, including the circumstances in which this is possible and the procedures to be followed. International applications do not lead to rights which are international. The rights eventually obtained as a result of registration of the IP are national ones. But international applications do simplify the process for obtaining those rights because the starting point is a single application. The three international conventions are as follows:
- The Protocol Relating to the Madrid Agreement Concerning
the International Registration of Marks (the Madrid Protocol), which has applied to the UK since 1995 - The Patent Co-operation Treaty (PCT), which has applied to the UK since 1978
- The Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement), which does not yet apply to the UK but for which the UK made a legislative change in the Intellectual Property Act 2014 in order to enable accession to the Agreement
So long as the IP rights in Jersey are provided by a secondary registration system, there is probably no need to make any changes to the Island’s laws in order to seek extension of the UK’s membership of these international conventions to the Island, and there could be some advantages to membership for businesses located in Jersey which want to benefit from their provisions. However, it would be necessary to consider what legislative provision is needed if there are any changes to Jersey laws to enable primary registration of one or more types of IP. As already mentioned and as further discussed below in the section explaining the process that has led to this draft Law, this is something that is being considered for some types of IP, but it is not addressed by this draft Law. How any changes to the IP framework would work with membership of these three international conventions would therefore be part of the assessment that would need to be made before any decisions on possible changes are made.
It would, though, be appropriate on the basis of this draft Law to seek extension of the UK’s membership of the Paris Convention, the Madrid Protocol and the PCT to the Island, and, in due course when the UK has acceded, the Hague Agreement.
Current Jersey laws about registered intellectual property rights
The three current Jersey laws about registered IP rights are as follows:
- Registered Designs (Jersey) Law 1957
- Patents (Jersey) Law 1957
- Trade Marks (Jersey) Law 2000
Each law permits registration in Jersey of the relevant IP right that is valid in the UK. The person who is the proprietor of the right in the UK is the person who can apply for registration in Jersey. The Judicial Greffier is the Registrar to whom an application for registration must be made, with a Register of Rights maintained at the Judicial Greffe. There is no examination of the UK right for compliance with the various requirements in UK law that apply before there can be a registration in Jersey, but in each case the secondary registration in Jersey can only remain in force so long as the right remains in force in the UK. The Registrar does have some powers to query whether a registration in Jersey should go ahead and in some circumstances a person who is prejudicially affected by the registration can seek to have it revoked. A registration of IP in Jersey essentially gives the person who has done that the same rights and equivalent remedies as exist in the UK. An action for infringement of an IP right in Jersey can therefore be pursued in the court in Jersey and the activities that infringe the right, essentially exploitation in the course of business of what is protected by the IP right, are the same as in the UK.
In the case of trade marks, there are also criminal offences applying to wilful unauthorised dealing and use in the course of trade of a trade mark that has been registered in Jersey, something that is often referred to as counterfeiting. Border measures can also lead to counterfeit goods being seized by customs, although in this respect the much more important relevant provision is in an EU Regulation that applies to Jersey and which permits such seizures for any counterfeit goods arriving in Jersey directly from outside the EU customs territory. These additional enforcement measures applying to trade marks are an important part of what is necessary for compliance with the TRIPS Agreement which Jersey law largely already complies with. (Some details regarding the application of the EU Regulation to Jersey is dealt with in the Community Provisions (Goods Suspected of Infringing Intellectual Property Rights) (Jersey) Regulations 2014. But action by customs at the border is possible under the EU Regulation which has direct effect in the Island. Action is possible regarding goods infringing IP rights generally, ie not just trade marks, but the EU Regulation and Jersey Regulations are about customs matters only. They do not have any effect to confer, or alter any position regarding, IP rights in Jersey.)
The number of registrations for the three types of IP under the current laws in Jersey is not that high in the area of patents and very low for registered designs. (Designs do now get some protection without registration under the automatic design right in the Intellectual Property (Unregistered Rights) (Jersey) Law 2011 and so applying for a registered design right may be even less popular.) More trade marks are registered in Jersey though, with well over 9000 UK trade marks having been entered on the Jersey trade marks register. The register would, of course, need to be referred to for the details of the registration and whether or not it is still in force. It may be that there will be more applications for registration of IP in the Island when this draft Law has delivered compliance with international standards for these three types of IP. The draft Law will not, however, change the nature of the registration system for all three registered IP rights regarding the link to and re-registration of UK rights and so a significant change to the number of registrations seems unlikely. One of the policy issues that is being explored, as explained further below in the section explaining the process that has led to this draft Law, is whether or not there should be any change to this system of secondary registration. The draft Law is, though, essentially limited to delivering compliance with important international conventions and treaties and providing a mechanism to more easily update the Jersey laws in the future should that be desirable.
UK laws about registered intellectual property rights
The three UK laws about registered IP rights relevant to this draft Law are as follows:
- The Registered Designs Act 1949
- The Patents Act 1977
- The Trade Marks Act 1994
All three of these Acts have been amended on a number of occasions since their enactment. The most recent amendments to the Registered Designs Act have been made by provisions in the Intellectual Property Act 2014, including to adjust the rules on ownership of rights in a design that has been commissioned and to create a new criminal offence for intentional copying of a registered design to make a product in the course of business. The Patents Act has also been amended by the Intellectual Property Act, including to make provision about marking products protected by a patent with an internet link for information about the patent and providing the Comptroller with a power to revoke a patent after an opinion that the patent is invalid. The Patents Act has also recently been amended by the Legislative Reform (Patents) Order 2014 to ensure that anything done for the purposes of a medicinal product assessment does not infringe a patent. The most recent changes to the Trade Marks Act relate to how it applies in the Isle of Man as set out in The Trade Marks (Isle of Man) Order 2013 (SI 2013 No. 2601). (Unlike the position in Jersey where UK registered trade marks must be registered in Jersey to have effect in Jersey, UK registered trade marks have direct effect in the Isle of Man, subject to the modifications as set out in the 2013 Order.)
Each of the three UK laws makes provision for primary registration of IP and grant of the relevant rights. A number of statutory instruments made under each law set out various additional details, including on the fees to be paid both during the process of making an application and after the application has been granted in order to keep the IP rights in force. The rights provided are monopoly rights in that the protection provided can be used to prevent others from exploiting what has been protected. This can be the case even if the other person was not aware of the IP rights, and so can apply even where another person has, say, independently developed the same invention which has been patented, and even when they have done that earlier than the first person who has been granted rights. This system is therefore referred to as one based on rights given to the first person to file an application. There are, though, some limits to the extent of the protection provided by IP rights, including for the benefit of prior users of what is protected and on the time that rights can last for. Very broadly, the IP rights enable the holder of the rights to take legal action against another person who uses what is protected without his or her permission. Such use is an infringement of the IP rights and the remedies that can be sought, such as seeking damages and the award of an injunction, are in general the same as those that apply to an infringement of any property right.
The time for which the rights can last and some other important provisions applying to each of the three types of IP under UK laws is as follows:
- A registered design can last for up to 25 years if renewal fees are paid. The rights are infringed by a person who makes, offers, puts on the market, imports or exports the design, or stocks the product for any of these purposes without permission from the owner of the rights and for commercial gain.
- A patent can be renewed to last for a maximum of 20 years from the date of filing the application. A patent is infringed by a person who copies, manufactures, sells or imports the patented invention without permission from the rights’ owner. Certain activities are, though, specifically excluded from amounting to an infringement, such as private, non-commercial use and something done for experimental purposes relating to the subject matter of the invention.
- A registered trade mark can be renewed every ten years to last forever if a person wishes. The rights are likely to be infringed by a person who uses without permission an identical or similar trade mark for identical or similar goods or services to the one that has been registered. Issues such as the likelihood of confusion among members of the public and where use may damage, or take unfair advantage of, the reputation of the owner of the rights will be taken into account in determining whether there is an infringement. Wilful use of a trade mark without permission in the course of trade (often referred to as counterfeiting) may also amount to a criminal offence.
The three UK laws all include the possibility of an application being made based on a claim for a priority date for the application earlier than the actual date by reference to an earlier application made in another country. This provision is, as explained above, part of the Paris Convention, and so also the WTO TRIPS Agreement due the obligations in that Agreement to comply with the Paris Convention, for contracting parties that provide a primary registration system. Article 4 of the Paris Convention sets out the details of how a right of priority must apply to applications, including the time limits that must apply. Thus, each of the three UK laws makes provision about claims for priority. For patents, an application filed in the UK up to twelve months after an application filed in another convention country for the same thing can have the date of filing of that earlier application as a priority date. For registered designs and trade marks similar provision is made but with the maximum time between filing of the application in another convention country and filing in the UK being six months.
Main features of this draft Law
As already noted, the draft Law has two main aims as follows:
(1) To make changes to the three Jersey laws on registered IP rights for compliance with the relevant provisions of the Paris Convention for the Protection of Industrial Property (1967) (the Paris Convention) and the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement).
(2) To provide powers to permit the States to make further provision about the three types of registered IP rights by Regulations.
In addition, the draft Law makes some minor drafting changes to the three Jersey laws, including for consistency with the relevant UK laws where those have been amended since the three Jersey laws were enacted.
In more detail, changes being made by this draft Law for compliance with the Paris Convention and the TRIPS Agreement include:
(a) Registered designs
The main difficulty with the current law concerns compliance with Article 5B of the Paris Convention. Article 5B prevents the forfeiture of protection for industrial designs for failure to work and this is currently permitted by Article 10(1)(d) and (e) of the Registered Designs (Jersey) Law 1957. Compulsory licences would be possible in these circumstances, but such provision does not exist in the UK, so the draft Law simply revokes Article 10(1)(d) and (e).
There could also be a problem with forfeiture of a design being possible as a result of Article 10(1)(c) of the 1957 Law because delays outside the control of the applicant could mean that more than three years have elapsed between the date of registration in the UK (which is the UK application or priority date) and the date registration in the UK is determined, which must occur before there can be a registration in Jersey. The draft Law therefore amends Article 10(1)(c) so that the three years are measured from the date that the application for registration in the UK is determined.
The use of terminology such as “copyright in a design” in the 1957 Law, which has been revoked and replaced in UK law, may lead to uncertainty about the nature of, and so enforcement of, rights in Jersey and so lead to concerns about compliance with, for example, Articles 26 and 41 of the TRIPS Agreement. Article 9 of the 1957 Law is therefore amended by the draft Law to clarify the effect of a registration in Jersey. Article 5 is amended to clearly permit any extension of the period of registration of a design in the UK and any restoration of a UK registration to be registered in Jersey.
(b) Patents
Article 5A of the Paris Convention does not permit a patent to be forfeit, such as for failure to work, unless the grant of compulsory licences does not solve the problems. Article 9(1)(d) and (e) of the Patents (Jersey) Law 1957, which permit revocation without compulsory licences being tried, is therefore contrary to the Paris Convention. Article 31 of the TRIPS Agreement imposes extensive conditions on compulsory licences making revocation on the grounds in Article 9(1)(d) and (e) of the 1957 Law unlikely to be possible even after the grant of compulsory licences. The draft Law therefore revokes Article 9(1)(d) and (e) of the 1957 Law and introduces new provision to permit compulsory licences to be granted in circumstances essentially as is possible in the UK.
In addition, the new provision on compulsory licences would permit their grant when it is necessary to do so to comply with an international treaty or convention. This would therefore permit such licences in the circumstances covered by Article 31bis of the TRIPS Agreement to enable the production of medicines for export to developing countries.
(c) Trade marks
Article 6quinqies of the Paris Convention prevents trade marks that have been registered in their country of origin from being refused a registration except on the grounds indicated. Possible refusal of a trade mark registration under Article 4(5) of the Trade Marks (Jersey) Law 2000 is not so limited. The draft Law therefore amends Article 4(5) to only permit refusal of a registration where this is not contrary to any international convention or treaty that has effect in Jersey.
The protection for well-known trade marks required by Article 6bis of the Paris Convention, and also applied to marks for services by Article 16 of the TRIPS Agreement, requires the possibility of injunctive relief in certain circumstances in Jersey. The draft Law makes new provision to be inserted into the 2000 Law for this purpose. Similar issues arise regarding Articles 6ter and 6septies of the Paris Convention relating to state emblems etc. and unauthorised registration in the name of an agent or representative. The draft Law also makes new provision to be inserted into the 2000 Law on both of these. (In many situations the requirements about well-known marks and so on that must apply in Jersey if it is to comply with the Paris Convention and TRIPS Agreement will be delivered by UK law and the way a Jersey registration is linked to a UK one.)
The enforcement of criminal sanctions for wilful trade mark counterfeiting on a commercial scale, which are required by Article 61 of TRIPS, could be difficult without all those involved in any enforcement action able to seize infringing articles as evidence. Article 26 of the 2000 Law does make appropriate provision where enforcement action is taken by inspectors of weights and measures. The draft Law introduces a new provision about search warrants into the 2000 Law so that enforcement action by police officers is also possible.
The Regulation-making powers are provided by a new Article inserted by the draft Law into each of the three Jersey laws about registered IP rights. The new Articles will each provide a power to make provision by Regulations about registered designs, patents and trade marks respectively in the circumstances indicated. These circumstances will mean that it will be possible to make provision in relation to any of the following:
- registration, by first registration or otherwise, and the exercise and enforcement of any title or interest in rights, but so long as the provision is believed by the States to be consistent with any international convention which applies to Jersey;
- giving effect to any international convention which applies, or is to apply, to Jersey;
- implementing any obligation the UK has under EU Treaties, whether or not that obligation applies to Jersey;
- giving effect to any provision that applies in the UK.
The minor amendments being made by this draft Law include the following:
- updating the terminology in the Registered Designs (Jersey) Law 1957 in line with current UK law;
- updating the penalty levels for offences in the Registered Designs (Jersey) Law 1957;
- updating the meaning of “invention” in the Patents (Jersey) Law 1957 in line with current UK law;
- providing consistency between the three Jersey laws regarding the provision on the effect of a registration of IP in Jersey; and
- providing clarity about the registration of assignments and other transfers of and interests in, as well as licences of, trade marks in the Trade Marks (Jersey) Law 2000.
Process leading to proposals in this draft Law
Given the very technical nature of the provision in this draft Law, and the essential nature of the majority of the provision in the Law if Jersey is to have laws that comply with the TRIPS Agreement, which is in turn an essential requirement if the UK’s membership of the WTO is to be extended to the Island, it was decided to produce a very well-developed draft Law before seeking any external input regarding the detailed provisions in the draft Law. This very well-developed draft Law was then made available in September 2014 to a targeted group of stakeholders for comment.
There were very few comments as a result of this consultative exercise. Regarding the details of the draft Law, one comment received concerned whether or not the new provision on compulsory licences for patents provided by Article 19 of the draft Law should be on application to a person other than the court. It has been decided that such a change would not be appropriate, including because the issues that would need to be decided before a compulsory licence could be granted are essentially the same as those that currently apply to a case that can be made to the court for revocation of a patent.
Another comment received concerned the territory that is considered for where a trade mark is well known when it is to be decided whether or not to grant injunctive relief under the new provision provided by Article 29 of the draft Law. It was proposed that the territory should be just Jersey and not as drafted, that is the UK including Jersey. It has been decided that such a change is appropriate as Jersey will be the jurisdiction where it is necessary to decide whether or not use of a trade mark is likely to cause confusion with a well known mark and so what is well known in Jersey is therefore relevant. A well known mark is now defined in the draft Law as one well known in Jersey.
Two stakeholders queried whether the draft Law would actually make Jersey’s trade marks and designs laws compliant with the Paris Convention without changing the system to one of primary registration. This is an issue that had already been explored with the UK and assurances have been given that Jersey’s system of secondary registration does not preclude extension of the UK’s membership of the Convention to include Jersey.
The feedback from the consultative exercise also included comments about issues relating to the laws about registered IP rights in the Island more generally. In particular, two stakeholders suggested that the draft Law should not be pursued in its present form, but, rather, a more comprehensive review should establish whether or not the Island should establish a primary registry for trade marks and designs in particular. Such an approach is not being pursued as it would significantly delay compliance with the WTO TRIPS Agreement. The Regulation-making powers that are included in the draft Law do, however, permit changes to be made to the nature of the registration system in Jersey in the future, including making provision for primary registration of IP in Jersey, either instead of or as well as a system of secondary registration. Another alternative approach that could be delivered in the future by Regulations would be a system under which rights registered in the UK are automatically recognised in Jersey.
Using Regulations to change the Jersey laws about registered IP rights in the future will be faster than a Law that must have Royal Assent as well as approval by the States Assembly. Adopting this draft Law does not, therefore, necessarily delay making the sort of changes that stakeholders have identified should they be appropriate. Changes as suggested would, moreover, require further consultation of stakeholders in order to inform any decisions taken, but the process of developing what might be possible can commence before the Regulation-making powers are in place. Indeed, some work has already been undertaken to investigate the likely cost of setting up a primary registry for IP. Most recently, Digital Jersey has done some work at a high level to explore whether or not there is a business case for a system of primary registration for trade marks in particular. That work has not, though, provided sufficient evidence to demonstrate a business case given the likely costs of establishing and running a primary registry so more work is needed.
Financial and manpower implications
There are not expected to be any financial or manpower implications arising from the adoption of the draft Law by the States. The Law makes small changes to the existing framework under which a person who owns rights in designs, patents and trade marks first obtained in the UK can apply to have the rights re-registered in Jersey. It is not expected that there will be any significant change in the number of applications for re-registration, or the cost of processing an application for re-registration, as a result of the changes made by this Law. Should there be a dispute about the rights that have been re-registered in Jersey, this may have to be resolved by the court interpreting the laws about registered IP rights as amended, but this is not expected to be any more costly than at the moment. Disputes in the court about IP rights are in any case very rare indeed and there is no reason to expect any change to this as a result of the amendments made by this draft Law. It is therefore currently expected that the costs and required manpower for continuing to operate the secondary registration system for designs, patents and trade marks as a result of the amendments to those laws made by this draft Law will be met from existing resources
This analysis includes the possible cost of a case under the new provision to be inserted into patents law permitting a compulsory licence to be sought from the court in certain situations. The situations when this would be possible are very similar to those when it would be possible to seek revocation of the registration of a patent in Jersey under the current law and so cases are no more likely than at the moment. There do not appear to have been any cases in Jersey regarding revocation of the registration of a patent and so cases seeking a compulsory licence for a patent are considered to be equally unlikely.
Human Rights
The notes on the human rights aspects of the draft Law in the Appendix have been prepared by the Law Officers’ Department and are included for the information of States Members. They are not, and should not be taken as, legal advice.
APPENDIX TO REPORT
Human Rights Note on the Intellectual Property (Registered Rights) (Miscellaneous Provisions) (Jersey) Law 201-
These notes on the human rights aspects of the draft Law, the Intellectual Property (Registered Rights) (Miscellaneous Provisions) (Jersey) Law 201-, have been prepared by the Law Officers’ Department.
These notes are included for the information of States Members. They are not, and should not be taken as, legal advice.
This Law gives rise to no obvious issues under the Human Rights (Jersey) Law 2000. Intellectual property rights are a creation of statute giving rights and privileges to individuals for innovation and endeavour. The law gives these rights to further the public good. The extent to which such rights are given, and are subsequently regulated, is a matter for judgement of the public good. The legislature is except in extremis free to make its own judgements in this regard.
Insofar as the granting of compulsory licences might be seen as an interference with a patent holder’s licence, the procedure is fully regulated by law and licences will be granted on a public interest basis. Such regulation is plainly within the margin of appreciation given to jurisdictions under the European Convention on Human Rights.
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