DCATS REVISION DAYS

October 2018
 Layout of Examination Paper

• Paper is written in 3 parts

• Section A – Short answers demonstrating

prescriptive knowledge

• Section B – Essay style question

• Section C – Scenario questions

 Marks available -100
• Section A – Five questions, each worth 5 marks.
Total 25 marks. Answer ALL questions.
All five questions must be answered

• Section B – Choice of two questions, each worth

25 marks. Answer one from two.

• Section C – Choice of three questions,

each worth 25 marks. Answer two from three.
 Duration
• 3 Hours plus 10 minutes reading time.
• On average each answer in section A should
take 9 minutes to complete.

• A good answer in section B would

cover 3-4 pages.

• A good answer in section C would

cover 3-4 pages.
 Examiner’s comments.
• A number of the candidates simply wrote all they
knew on a particular subject, with little regard to
the wording of the question.

• Answers such as 'Offences may have been

committed under the Copyright Designs & Patents
Act or Trade Marks Act ' are clearly unacceptable.
 Pass Mark
• The pass mark is 40%

• The aim is to award the pass mark for

responses which show that the candidate has
(just) the minimum knowledge, practical
insight and mental ability to be allowed to
practice on the public.
 Overall Response Required
• Accurate and relevant factual information
• Intellectual capability
(analytical, sound reasoning,
identify arguments for and against)
• Application of the above to practical situations
• Clear and appropriate presentation
 Section A

• Five short questions requiring specific

knowledge.
• Previous questions have sought explanations
of legal or technical words or phrases or an
understanding of a peripheral aspect of the IP
environment.
 Section A
45 mins 25 marks
• Five compulsory short answer questions that cover the range
of the syllabus demonstrating prescriptive knowledge. Each
question is worth 5 marks. This section is intended to ensure
that successful candidates can demonstrate a broad
understanding of the material that is included within the
syllabus.

• Comment: given the marks associated with these questions,

they should each take nine minutes to complete. Allowing for
reflection time, candidates should be writing for about seven
to eight minutes or so; this represents at least three or four
paragraphs for each question. It should not be possible to
answer these questions in a sentence or less.
 Section A
• 1. Distinguish between the 'subsistence' of
copyright and the 'registration' of a trade
mark.
1. Distinguish between the 'subsistence' of copyright and the 'registration'
of a trade mark.

• Copyright is an automatic and unregistered property right which protects

nine categories of works. Automatically exists once a work is created and
‘fixed’. Lasts for a limited period of time . No register exists.

• Trade Mark registration is an application and registration process that a

rights owner must submit to where the mark undergoes a range of
objective tests against legally established criteria.
A register is managed by IPO. A fee is payable. Can be renewed in
perpetuity - 10 year periods.
• 2. Explain the concept of licensing in an
intellectual property context. What is an
'exclusive licence'?
2. Explain the concept of licensing in an intellectual property context. What
is an 'exclusive licence'?

• Licensing is the granting of permission to do, or authorise the doing of any

restricted acts

i.e. anything that would otherwise be an infringement of the relevant

rights

• Exclusive licence is one which permits the licensee alone to carry out
restricted acts. This excludes the rights owner (licensor) from carrying out
those acts.

• (Answer to include a reference to licensing various IP rights, not just

Copyright).
• 3. Explain in your own words five forms of
civil remedy that may be ordered by a court,
to the owner of any civil intellectual property
rights when those rights have been infringed
by another party.
3. Explain in your own words five forms of civil remedy that may be
ordered by a court, to the owner of any civil intellectual property rights
when those rights have been infringed by another party.

• Damages, injunction, account of profits, delivery up, order for disposal,

forfeiture, destruction or otherwise, Anton Pillar order, Erasure S15 TMA,
S100 seizure.

• Answers must be in candidate’s own words, as the remedies themselves

are set out in the prescribed materials.
• 4. What is 'FAST' and what are the primary
functions of this organisation?
4. What is 'FAST' and what are the primary functions of this organisation?

• Federation Against Software Theft

• Rights owners representative body - Software publishers, resellers &
distributers, consultants and law firms
• Computer Software producer and owners
• Enforcement support
• Legal Affairs team - can support TS prosecutions, technical assistance,
witness statements
• Lobbying
• 5. What is passing off? What three elements
must exist for such an action to succeed and
what remedies can the court award in such
cases?
5. What is passing off? What three elements must exist for such an action
to succeed and what remedies can the court award in such cases?

• Delict or Civil tort of misrepresentation.

• Reputation or Goodwill
• Prove misrepresentation
• Actual Damage

• Identify remedies – Injunction, Damages, Account of profits, Order to

repackage goods, Order for delivery up, Order for destruction or
Declaration as to ownership of Rights
• 6. Distinguish between a Design and a Patent
6. Distinguish between a Design and a Patent

• Patent protects inventions, industrial processes or product

• Design relates to the physical appearance of an item, or part of it,

industrial or handicraft

• Patent must be registered whereas design right subsists [unregistered

design right] and can be registered for greater protection
• 7. What is the BBFC and what are its primary
functions ?
7. What is the BBFC and what are its primary functions ?

British Board of Film Classification

Statutory body
Classify cinema film releases – maintain classification database
VRA 1984 contains criminal offences in respect of classification
requirements for video recordings of films
BBFC provides certificates for evidential purposes
Witness statements
• 8. Distinguish between assignment and
licensing of IP Rights.
8. Distinguish between assignment and licensing of IP Rights.

Certain intellectual property rights can be transferred

Assignment transfers the title in the IP, basically a sale of the IP.

A License grants permission to third party to use the IP in what would

otherwise would be an infringing way

Both assignments and licences can be exclusive or non exclusive

Both can be split between different parties, or the individual rights can be
split
• 9. What is a ‘must fit’ article ?
9. What is a ‘must fit’ article ?

Must fit articles are defined as articles where the features of shape or
configuration of the article enable it to perform its function

The way the article may be connected to, placed in or around, against
another art may perform its function

Design of the article is dictated by its intended use

E.g .key, brake pad etc

• 10. What is the IPEC and what are its primary
functions?
• 10. What is the IPEC and what are its primary
functions?
A specialist court, part of the Business and Property Court of the
High Court of Justice. Cases are heard by Judge Hacon.

Handles cases relating to intellectual property disputes,

including:
• registered designs
• patents
• registered trade marks
• copyrights
• other intellectual property rights

- ‘small claims track’ if damages less than £10000

• 11. What is the Copyright Tribunal and what
are its primary functions?
11. What is the Copyright Tribunal and what are its primary functions?

A quasi judicial tribunal, consists of a Chairman and two deputy Chairmen

who are appointed by the Lord Chancellor and must be experienced
lawyers and between two and eight members who are appointed by the
Secretary of State.

The Copyright Tribunal can rule on the nature, conditions and fees
associated with licensing schemes

The Licensing of a copyright work can be conducted by copyright owner, or

by a collecting society operating on their behalf

Collecting societies operate as a monopoly

In order to balance the power of this monopoly situation a Copyright

Tribunal acts as a copyright court and adjudicates on copyright matters
• 12. Compare and contrast the decisions in the
cases of Trebor Bassett Limited v The Football
Association Limited [1997] FSR 211 and
Football Association Premier League Ltd and
others v Panini UK Ltd [2003] EWCA Civ 995
12. Compare and contrast the decisions in the cases of Trebor Bassett
Limited v The Football Association Limited [1997] FSR 211 and Football
Association Premier League Ltd and others v Panini UK Ltd [2003] EWCA
Civ 995

Trebor Basset case related to FA 3 Lions RTM in photos in sweet cigarette

cards
FA sued for RTM infringement – TMA s10
Held 3 Lions RTM not being used as a trade mark in the photos 2

Pannini unauthorised sticker album – photos included FA Premier League

RTM
Alleged infringement of artistic copyright in their logos in the photos
Panini claimed ‘incidental inclusion’
Held inclusion was not incidental 2

First case was no infringement TMA – 2nd case was infringement CDPA
1
 Section B

• An essay seeking both the candidates

knowledge, appreciation and understanding of
elements of the IP environment.
• Does everyone know how to write an essay?
• Must have a structure
• Introduction, argument, conclusion
 Section B
45 mins 25 marks

Two essay questions of which candidates have to

answer one. They are intended to test the
candidate’s depth of understanding of the
professional demands, context and knowledge in the
area represented by the paper. Each question is
worth 25 marks. Comment: these questions represent
one quarter of the paper; they should therefore take
45 minutes to answer. A good answer would be
expected to cover at least three or four pages of
writing
 Section B
• 6. 'The provisions of UK Copyright and Trade
Mark law provide little or no protection for
rights owners in respect of infringements
committed on the Internet'. Discuss.
6. 'The provisions of UK Copyright and Trade Mark law provide little or no
protection for rights owners in respect of infringements committed on the
Internet'. Discuss.
• What are the most common offences or infringements? CDPA, TMA

• (No criminal offences in respect of Designs, Patents)

• What type of products / rights owners are commonly affected?

• Auction sites –v- Direct (digital) delivery

• Compare liabilities of uploaders / downloaders of digital content

• Peer to Peer / Bit torrent

• Pre release music and games

• Problem of jurisdiction and identification of infringer

• ISPs position Internet Service Providers, Take down procedures, VERO Programme

• CASE: eBay v L’Oreal

• What responsibility do auction sites accept?

• Digital Britain Report

• Digital Economy Act

• Distance Selling Regulations

• Other relevant issues and discussion

 Section B

7. The UK Government is naive to the damage IP Crime is causing the

economy and needs to develop a National Strategy to combat the
problem.”

Consider the accuracy of this statement in terms of the relative strengths

and weaknesses of current legislation and resourcing.
• Structure of essay - intro, discussion, conclusion.
• Critical evaluation of roles of
– TS, UKBA, HMRC, POLICE, SOC, DWP
– Rights owners, APUs
• Harm financial, to business, to state, brand integrity
• Risk of safety critical goods, pharmaceuticals, electrical
• Scale hard to asses lack of data, exponential increase?
• IPC attractive to organised criminals, high profit/low risk criminality
• Case for National Strategy –v- Local Enforcement approach
• Fragmented enforcement landscape
• Joined up approach, UK overview
• Organised response to organised crime
• Conclusion
 Section B Question

• 6. “Counterfeiting and piracy is

predominantly the concern of large
businesses, It is therefore more appropriate
for these business to seek to protect their
own intellectual property interests rather
than to rely on enforcement action by local
authority trading standards authorities”.
Discuss.
(25 marks)
6. In this question candidates are asked to write an essay considering the merits, or
otherwise, of the civil and criminal protection regimes. Key points are:
• Counterfeiting – production of ‘fake’ goods
• Piracy – unauthorised copying or use of IP
• Business IP interests: Trade Marks, Copyright Designs & Patents
• IP protection regime
• Bargain balancing society and state interests against business interests
• Encourage Innovation and creativity
• Monopoly rights / public domain
• Brand
• Assurance of quality
• Health & safety implications of fake goods
• Relationship with other criminal offences
• Civil action expensive
• Role of Local Authority Trading Standards Authorities
• Statutory duty to enforce criminal law provisions TMA
• Statutory duty to enforce some criminal provisions CDPA ss107 & 198

• Cost to state, local authority, council tax payer

• Need for rights owner support assistance consent
• Discussion, argument, conclusion
 Section B Question

Compare and contrast the defences to copyright

infringement that exist within the Copyright
Designs and Patents Act 1988 with the defences
to trade mark infringement that exist within the
Trade Marks Act 1994.

(25 marks)
7. What are the defences?

Copyright:

Although no statutory defences to copyright offences, in civil law the

permitted acts and fair dealing provisions provide exemptions to
copyright infringement. Without an infringement no offence can be
committed.

Temporary copies, research & private study, criticism & review, incidental
inclusion; visual impairment, educational purposes, libraries, public
administration, time shifting, backups etc

Provision of examples required

Trade Marks Act

s10 defines infringement

s11 limitations to infringement

Provision of examples required

Statutory defence TMA s92(5)

Explanation - meaning of statutory defence

Not a due diligence defence, nor lack of knowledge of RTM

Relevant case law R v Johnstone, Arsenal v Reed, Satnam Singh

Proof of Civil infringement not required, but trade mark use necessary for
s92 offence to arise

Argument , discussion, comparison.

 Section C

• A practical scenario.
• Previous questions have included a TS
enforcement situation; a letter of advice; and
a contrived scenario incorporating both civil
and criminal aspects of IP protection.
 Section C
90 mins 50 marks

• Three scenario-based questions of which candidates must

answer two. Scenarios should reflect the areas of work
covered by the paper. They are intended to test the
candidate’s ability to analyse a situation and bring the
appropriate tools, be they legislative and / or professional, to
successfully resolve the problem(s). Each question is worth 25
marks. Comment: these questions each represent
approximately one quarter of the total marks available, they
should therefore take 45 minutes to answer. Typically, good
answers will each cover at least three or four pages.
8. You are a suitably authorised officer of a local weights and measures
authority, and have within your authority's area the national rugby
stadium.
• One match day, whilst on routine inspection, you notice a street trader
attending a display of shirts which he has hung on the railings of the
rugby ground. The street trader has tied a large cardboard sign to the
railings stating "INTERNATIONAL RUGBY SHIRTS £19.99".
• You inspect these shirts. There are six styles. Each style has been
manufactured in the appropriate colours of each of the 'Six nations'
rugby teams: England, France. Ireland, Italy, Scotland and Wales.
• The front of each shirt bears the name of the country in capital letters,
and a poor quality reproduction of the relevant national badge. The back
of each shirt carries a photograph of a famous rugby player from that
country, kicking a rugby ball over the posts.
a). Outline the enforcement action that you consider appropriate to secure
evidence for possible legal proceedings, with reference to the legislation
under which you are acting, and your reasons for doing so.

b). What action could the stadium authorities take in respect of any future
sales of similar products?
(a) Trade mark offences - what RTM s are there ? Country names,
national badges, protected emblems ?
CDPA - copyright in national badges ? copyright in photographs ?
CPUTRs 2008 Shed false claims of approval authorisation?

Outline appropriate enforcement action.

Test purchase? Surveillance? Seizure – police support
Reasoning

(b) What action could the stadium authorities take in respect of future
sales...ideas?
Street trading, register rights, CDPA s100 Seizures
9. Lily is an entrepreneur who intends to organise, arrange and market
personalised adventure holidays to Peru under the brand name 'Alpaca
Holidays'. She intends to market the holidays in the UK.

• She goes onto the Internet and searches for a photograph of an Alpaca,
which she downloads, manipulates with Photoshop and then uses
resulting image on her advertising material.

• Lily also designs weather proof raincoats and sweatshirts, which are
unusual in that they are made from a plastic resin. The clothes will have
the phrase "ALPACA HOLIDAYS' printed across the back, and the Alpaca
photograph printed on the front.

• She produces neck labels for her clothing, which state 'Alpaca'. 'TM'.

• What rights have been infringed by Lily, what rights could she acquire and
what steps could Lily take to protect them?
• Use of downloaded photograph – artistic work therefore potential
infringement of copyright, both on advertising material and on clothing.

• ‘Alpaca TM’ likely to be an indication of an unregistered trade mark use

Possible false claim? TMA s95 offence?

• Offences in respect of false description ‘Alpaca’ to items not made of

Alpaca fleece. CPUTR ?
• Rights acquired – Unregistered Design rights in respect of clothing.

• Could register design (Options)

• ‘Alpaca Holidays’ - Can be registered as a trade mark even though it is the

provision of a service and not ‘goods’.

• “Alpaca” likely to be accepted for registration in relation to clothing and

holidays – distinctive use
10. Dr Phillpot is a food scientist employed by GYXL Corp, in the research
and development department. For many years he has been developing a
revolutionary product - the self chipping potato fryer, which consists of a
tubular metal container containing serrated grooves into which raw
potatoes are compressed. A special secret frying agent is then added.

• Dr Phillpot approached the famous Yorkshire fish and chip millionaire

Archie Chipthwaite, who owns a global chain of fish and chip shops to
develop the secret frying agent using his expert knowledge of lard and
chip frying.

• At the same time Dr Phillpot asked Stephanie, his able assistant to write
an instruction booklet and come up with an idea for a presentation box
in which to sell the product.
• Stephanie makes a nice red and blue chequered box with a picture of the
product in use on the front of the box, along with the words "the famous
GYXL self chipper". Stephanie took the photo herself one evening using
her own camera, at a friends house whilst frying some chips for her tea
using the self chipper .

• What intellectual property rights have been created and who owns those
rights?

• What potential problems may Dr Phillpot and GYXL Corp experience in

the absence of any formal agreements with any of the parties?
Item IP Creator / Owner

Container Patent Creator Dr P

Unregistered design Owner GYXL
Artistic work - Drawing

Frying Agent Patent Owner?

Dr P; GYXL; Archie Chipthwaite?

Booklet Copyright Creator S

Artistic / literary work Owner GYXL

Packaging Copyright Creator S

Artistic Work Owner GYXL
Unregistered design

Photograph Copyright Owner?

Artistic Work S; GYXL?

Famous GYXL Chipper' Unregistered Trade Mark Owner GYXL

Problems?

Confidentiality Agreement
Prior disclosure – Patent
Ownership of IP
‘Course of employment’
 Q8. Phil and Donna are engaged to
be married
They approach their friend Trevor, a photographer employed by Sunny Snaps, and invite
him to take their wedding photos. They invite another friend, Graham, to act as a disc
jockey at the reception in the local pub.

During the course of the wedding Trevor uses his skill and experience to arrange the
guests into suitable groups and poses, and takes a large selection of photographs.

Donna’s sister, Jane, follows Trevor around and takes a number of her own photographs
of the guests at the same time as Trevor does, resulting in substantially.identical
photographs.

Trevor subsequently supplies Phill and Donna with a Compact Disc containing 100
‘proof’ photographs in the form of digital images.These images each contain a
‘watermark’ stating ‘ Sunny Snaps ®’ Trevor invites Phill and Donna to select 40 of these
photographs to be printed and compiled into a wedding album.
Phill and Donna identify a selection of 40 photographs to be included in an album, and
copy the disc before returning it to Trevor.

Trevor prints these 40 photographs and produces an album of wedding photos, which he
sells to Phill & Donna for £400.

Phill and Donna themselves print a number of photographs from the copied disc using a
home computer. They distribute these photographs to their family and friends.

Trevor is so pleased with one of the photographs that he prints an extra copy and
displays it in the window of his shop. He sends a further copy to a local newspaper, who
publish it in their ‘Bride of the week’ section.

Discuss the implications of the Copyright Designs and Patents Act 1988 to this scenario.
(25 marks)
8. Who owns the copyright on photographs?

If Trevor was working for himself, then he will retain the copyright.

If the Trevor is an employee of Sunny Snaps, the photographer will be acting

on behalf of his/her employer, and the company the photographer works
for will own the copyright.

So was Trevor acting on his own, or as an employee of Sunny Snaps? The

indication ‘® Sunny Snaps’ on the photos may be an indication that Trevor
was working on behalf of that company.

Does Trevor own ‘Sunny Snaps’?

In either event, if there is an agreement that assigns copyright to Phill and

Donna then they will own the copyright.
• As Trevor has been paid for his work, the payment will be for the
photographer’s time and typically an allocated number of prints. The
copyright to the photos will (in the absence of an agreement to the
contrary) remain with the photographer, and therefore any reproduction
without permission would be an infringement of copyright.

• Jane does not infringe copyright, as the arrangement of the wedding

group is not a work protected under Copyright. The copyright of these
photos belongs to Jane, as the author, despite the similarity with the
official photos taken by Trevor.
• Copying the disc – discussion of infringement CD&P. Is this an offence
under S107? – remedies?

• Application of Trade Marks Act to pictures. ® Sunny Snaps?

• Civil infringement? Criminal offence? – Remedies?

• Distribution of copies of prints? TMA / CDPA implications? Offence?

Remedies?

• Publication of photo in newspaper – Who owns copyright? Is there

infringement by newspaper? Guilty knowledge? Permitted Act?
 Question 9
• You are an authorised officer of a local Trading
Standards Authority and you are asked to
draft a witness statement for a rights holder.
 Information required in a Witness
Statement

Full name, address of company

Company position, authorised to speak on behalf of Company
Competence to speak on product
Confirmation that manufacturer is TM proprietor, licensee etc
Confirm company owns TM(s)
Produce, copy any relevant TM certificates
Check TM cert(s), product, company name ? etc
Registration number
Class goods/classification categories
Examination of product
Product examination/identification
Product not manufactured by/on behalf of company? Reasons
Contents
Qualitative test
Safety implications if any
Address possibility of parallel import

Infringers Lack of consent to use TM [how will company show this ?]

Sign identical/likely mistaken for TM

Continuity of evidence
 Question 10
Becks is a talented young cake maker, who bakes a range of amusingly shaped and
uniquely decorated cakes to her own recipes.She decorates and ices each cake, and
supplies each cake in a home made novel presentation box. In each box is presentation card
containing the recipe for the cake. Becks designs all the cake decorations, recipe cards and
presentation box artwork herself .Becks take s a good quality photograph of each completed
cake which she retains in a portfolio to show potential customers. Becks trades under the
name ‘Becks’ cakes’.

What IP protection has Becks acquired in the course of her business ?

(14 marks)

10(b)

Becks business expands.She wishes to continue to design the cake decorations and
presentation boxes, but to sub conract the manufacture of the cakes to Alison. How could
this decision affect the IP protection acquired by Becks and what further steps could she
take to enhance the protection of her IP ?
(11 marks)
• 10(a). Cake Shape copyright artistic work
unregistered design

• Decoration copyright artistic work

unregistered design

• Recipe card copyright literary work

Copyright typographical arrangement

• Discussion on whether any IP protection in idea of recipe

• Presentation box copyright artist work
unregistered design

Discussion that patent not applicable

• Photograph copyright artistic work

• Photograph proof of copyright in cake as artistic work

• Becks cakes unregistered trade mark

• Passing off protection

• 10(b) Discussion - registered design

Discussion - relevance of licensing

Explanation that copyright is retained in original work even if cake made

by Alison

Relevance of Trade Mark registration

Contractual obligations – confidentiality agreement

 Structure of examination

• Section A
• Five questions - Five marks each
– Answer ALL
• Section B
• Choose ONE from TWO
• Section C
• Choose TWO from THREE

Good luck !