The Concept of Originality in Copyright

Originality is an important concept in copyright since the protection of the work will arise when it satisfies this requirement, and the question of originality as said by Abrams “...the core of copyrightability”[1]. In addition, the function of originality plays a fundament role in determining whether a work has been infringed, and therefore it limits the scope of infringement.
“The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected”[2]
This requirement was stated in the Copyright, Design and Patent Act in section 1 (1), where it provides that:
“Copy right is a property right which subsists…in the following descriptions of work:
(a). Original literary, dramatic, musical or artistic works.” [3]
From this, it can be said that originality in the UK applies to authorial works. Nonetheless, the 1988 Act declares that copyright does not subsist in entrepreneurial works such as sound recordings, films, broadcasting and published editions if it is copied from previous works.[4]
The issue arises is the meaning of originality in copyright. In the absence of a precise definition in the statutory,[5] the courts, therefore, tried to explain originality. For instance, in the case of University of London, Justice Peterson said that:
“... the Act does not require that the expression must be in an original or novel form, but that must not be copied from another work - should originate from the author.”[6]

As stated above, originality does not require the work to be novel as in patent, rather it must originate from the author who exercises “ the skill, labour and judgment” to produce the work.[7] Therefore, the idea expressed in the work need not to be new but the way of expression must be so. This can be referred to as the idea-expression dichotomy, which means that copyright does not protect the idea but the expression.
“The copyright laws do not require that a work should be unprecedented, that is, new in comparison with already existing works…A copyright…is good provided a sufficient amount of work was originated by the author independently, even if some other person had already produced an identical piece by sheer coincidence.”[8]
This traditional test of originality was first introduced in the UK copyright law in the early twentieth century, and it was recognised by cases such as University London Press[9]. This lead to the fact that the UK has accepted a low standard of originality, that is, the work must originate from the author and not to be copied.[10] Originality, however, is a matter of degree that led commentators to state that
“ .. the effort, skill and judgment which is needed to confer originality on a work cannot be defined in precise term.”[11]
From the statement above, the amount of skill, labour or judgment depends upon the facts of each case. This view was supported by Lord Atkinson in the case of MacMillan.
“It must depend largely on the special facts of that case, and must in each case be very much a question of degree” [12]
Whilst this requirement may differ in accordance with the type of work, the common basic concept is that the work must not be copied.[13] Hence, originality should be explained in conjunction with the types of works that are copyrightability, which is this essay going to discuss.
Before going further, however, some commentators distinguish between new works (first generation) and derivative works.[14] The question arises here is whether new works can be created, and therefore can a work be totally original. It is argued that a work can never be totally original, and the existing creations are reproduction of preexisting works or from objects that surround us.[15] Despite this debate, as said by Peterson J that a work is original if it is not copied and when it originates from the creator, this is the key point in determining whether a new work is original. The problem here is when the resulting work is insignificant. In the case of Merchandising Corp of America, it was said by Lord Lawton that
“Two straight lines drawn with grease-paint …, in my judgment, by itself could not possibly attract copyright”[16]

This was due to the insignificant of the resulted work.
By contrast, it was held in the case of British Northrop, that the drawings of the plaintiff’s spare parts were not too simple to be capable of being an original artistic work.[17]
It seems that a new work is original when it originates from the author. The exception to this rule is when the outcome of the work is insignificant and the skill and labour are unsubstantial.[18]
Looking at derivative works. In principle, a derivative work to be original it should satisfy the requirements set out in the case law[19]. These requirements are:
1. The skill and labour must be of the right kind; otherwise the work would not be considered as original. In the case of Interlego, it was stated that no matter how much skill and labour was employed if they are not of the specific type of labour and skill.[20] Lord Oliver declared that
“But copying, per se, however much skill or labour may be devoted to the process, cannot make an original work”[21]
Thus, copying a pre-existing work would not be subject to copyright and the amount of skill and labour were employed is irrelevant.
“A well executed tracing is the result of much labour and skill but remains what it is, a tracing”[22]

2. A material alteration in the work is required, whether it was minor or substantial. What should be kept in mind, however, is that the changes should be material that distinguishes and differentiates the work from the pre-existing one. This is a matter of degree and as said by Lord Oliver
“.. regard to the quality rather than the quantity..”[23]
In addition, there are some exceptions to this requirement where, for instance, the same author or the plaintiff owns the works.
3. A connection exist between the skill and labour and the work in question, that means “ the skill and labour must produce a change which is relevant to the category of the work in question”.[24]
This was a question put before the Privy Council in the previous case where it said
“.. the question was whether the skill and labour was directed to the production of an original artistic work rather than the insertion of manufacturing instructions into an existing artistic work.”[25]
It was stated that there was not substantial visual changes, and thus “It is not sufficient to confer originality upon them that labour and skill were employed in the process of copying them or in the addition to them of fresh written manufacturing instructions”[26]
In respect to derivative works, it should be borne in mind that a work can be original and infringe copyright in another pre-existing work. In the case of ZYX Music, it was held
“The plaintiff's work, even if it infringed copyright in another work, nevertheless enjoyed copyright,”[27]

Originality in literary works
Literary works were defined in s 3 (1) as:
“literary work” means any work, other than a dramatic or musical work, which is written, spoken or sung and accordingly includes –
a. A table or compilation other than database,
b. A computer program,
c. Preparatory design material for a computer program, and
d. A database.”[28]

It seems that this definition is wide to encompass not only written works but also spoken or sung works.[29]Thus speeches, translations and adaptation works might attract copyright irrespective of their quality or style.[30]
“"Literary work" cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high.” Peterson J. [31]
Whilst the quality or the style of the work may not be a question here, the work should satisfy the threshold of originality (the De-minims threshold). Consequently, if the work fails to satisfy this standard of originality then it will not attract copyright. A good illustration of this is the decision of Lord Davey in the case of Hollinrake, where he stated that:
“Now, a literary work is intended to afford either information and instruction, or pleasure, in the form of literary enjoyment.”[32]
Therefore, in the case of Exxon Corp, it was said by Lord Oliver that the word Exxon “... conveys no information; it provides no instruction; it gives no pleasure that I can conceive.”[33]
By Contrast, it was held in the case of the Express Newspapers,that the grids and sequences of letters were literary works due to the great deal of skill and labour that, and this work afforded information and gives pleasure to the public as it was the purpose of producing such letters.[34]
Furthermore, the standard of originality in the UK is lower than the standard implemented in Europe, which is the author’s own intellectual creation.

A. Tables and Compilations other than Database:

Original tables and compilations attract copyright, and they are subject to normal test of originality that is they have to originate from the author who has exercised the skill, labour and judgment in producing such a work. In the case of Ladbroke, it was held that coupons arranged in a certain general forms were original work, and thus protected by copyright. This judgment was based upon the fact that the skill and labour involved was not only writing the coupons but also the intellectual creation in arranging the bets.[35] This arise the question of the type of labour needed to confer originality.
Bently stated that the courts in the UK have taken two methods, “the quantity of the labour and the quality of the labour”. [36] In the previous case, it seems that Lord Devlin accepted the quantity approach (also known as “sweat of the brow"), where he said
“The requirement of originality means that the product must originate from the author in the sense that it is the result of a substantial degree of skill, industry or experience employed by him.”[37]

In contrast, the “quality of labour” emphasize on how the information in the work is “selected” or “arranged”. Apparently, Lord Reid took this approach in the previous case. Where in the case of Independent Television Publications, programme schedules were considered as literary work that attract copyright on the ground that “they required a great degree of skill and labour in their preparation.”[38]
The Sweat of the brow doctrine (the quantity approach) has been criticized on the bases that conferring originality on a work merely because of the labour and skill exercised might lead to abolish the author creativity in the work. Furthermore, this approach has been “put to rest” in several jurisdictions such as in the United State after the decision of the Supreme Court in the case of Feist Publications.[39]

B. Computer programs:
As we have mentioned above that originality simply means not copied and there is no requirement for novelty. In addition, there is no necessity for a work to be created by a human. Copyright can subsist in a work where there is no human creator.
Computer programs are not defined in the statutory due to the rabid changes in this field. This might lead to the fact that the standard of originality in the computer programs is the author’s own intellectual creation. This view is supported by Bently, where he stated that originality in computer programs in the United Kingdom “should now be read in the light of the EU standard of an author’s own intellectual creation.”[40]

C. Database:
The EU Directive defines a database as “a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means.”[41] This definition was introduced into the 1988 Act. In essence, for a database to be protected by copyright it should, normally, not only fall within that definition, but also it has to satisfy the standard of originality requested in the 1988 Act, which is:
“... a database is original if, and if, by reason of the selection or arrangement of the contents of the database the database constitutes the author’s own intellectual creation.” [42]
The standard of originality in database, which is author’s own intellectual creation, demonstrates a higher standard of originality than it is presented in the UK. It can be said, however, that when a work fail to comply with the definition of database and its standard of originality, it might be protected as a table or compilation or by the so-called the ‘Sui Generis’ Right.

Originality in Dramatic works

Whilst dramatic work is distinct from literary work,[43] there might be a similarity in standard of originality, that is, it must originate from the author and to be capable of being performed in front of the audience. The important issue here is allocating the author of a dramatic work, but it is outside the scope of this essay.

Originality in Musical works

As defined in the 1988 Act, musical work is
“... a work consisting of music, exclusive of any words or action intended to be sung, spoken or preformed with the music.”[44]
The originality requirement where discussed in the case of Sawkins. This case demonstrated that the common standard of originality, which is the work must originate from the author who spent the time, skill and effort to produce the work, can be applied in the musical works. However, the issue arises is the degree of the skill and labour. Actually, what matters is the de-minims threshold. It should be noted that the essential issue in the previous case was whether the performing edition can be “incapable of being original work” particularly when the edition is made in a close approximate with a previous work. It was said that
“… the effort, skill and time which the judge found the claimant spent in making the three performing editions were sufficient to satisfy the requirement that they should be "original" works in the copyright sense. This is so even though (a) the claimant worked on the scores of existing musical works composed by another person”.[45]

Originality in Artistic works
Artistic works mean:
“(a) a graphic work, photograph[46], sculpture or collage, irrespective of artistic quality,
(b) a work of architecture being a building or a model for a building, or
(c) a work of artistic craftsmanship.”[47]

In general, original artistic works attract copyright protection if it is not copied and a minimal level of skill, labour and judgment has been exercised in the produced works. However, in relation to the first category artistic quality is not needed, and the only exception to this is when the outcome of the work is insignificant. This was the issue in the case of Merchandising Corp which was explained above. It should be noted, however, when the artistic work is a derivative work it must met the requirements set out in the case law, which was discussed above. While in relation to the second and third category, a level of artistic quality is required. Therefore, any craftsmanship work such as jewellery will not be original artistic work only if it is artistic craftsmanship. What is essential is the meaning of artistic quality. This question rose in the case of Hensher,[48] and the lordships had different views concerning artistic quality. For example, Lord Reid focuses on the public, that is, they should see the workr as an artistic and admires it, whereas Lord Kilbrandon focuses on the intention of the author to produce an artistic work and it should be left to the court to determine the existing of such an intention. Furthermore, another test was introduced by Lombe J in the case of Vermaat where he emphasized on the evidence of creativity to confer artistic quality on the work.[49] However, this issue has not been settled yet.

Conclusion
As we have seen, originality is an important aspect in copyright since the protection is conferred to original works whether it was first generated or a derivative work. Surprisingly, a derivative work can be original and infringing a pre-existing works in the same time. However, the threshold of originality in the UK is lower than it is in the civil law jurisdictions, wherein the common concept of originality in the UK is that the work must originate from the author and not copied, the level of originality in the civil law system is the author’s own intellectual creation. Moreover, as stated above, although originality is not required in entrepreneurial works, the 1988 Act provides that these works should not be copied from a previous works. This low standard of originality in the entrepreneurial works, as suggested by some commentators, relates to an economic reason. It is said that the right in authorial works is “more expensive that with entrepreneurial works”.[50]

______________________________________
[1] Howard Abrams, “Originality and Creativity in Copyright Law” Law & Contemp Probs”,Vol.55,No.2, (Spring,1992), p 3.
[2] Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 W.L.R.
[3] Copyright, Design and Patent Act 1988, S 1 (a).
[4] CDPA 1988 ss. 5A (2), 5B (4), 6 (6) and 8 (2).
[5] The 1988 CDPA did not define originality except in reference to databases. See S 3A(2).
[6] University of London PressLtd v University Tutorial PressLtd[1916]2Ch.601.
[7] This test of originality is considered as a “De- minims threshold” of originality which differs from the European concept of originality which is “author’s intellectual creation”. See Bently and Sherman, “intellectual property” (2nd edn, Oxford University Press, 2001), p.92.
[8] Laddie, H. et al,“The Modern Law of Copyrights”(2nd edn., Butterworths, 1995), p.48
[9] It is argued that test of originality which was set out in the case of University London Press is not compatible with the Berne Convention. It was pointed out by Gervais that “Most dictionaries give three definitions for the word "original"…and, of course, to designate a thing about which one would say that it has been produced by a given author …. It is this last definition that Justice Petersen used. This is not the meaning that should be applied in copyright. All the discussions and negotiations concerning the Berne Con…show that originality is closely tied to the act of intellectual creation.” Dee Daniel J. Gervais, ”THE COMPATIBILITY OF THE SKILL AND LABOUR ORIGINALITY STANDARD WITH THE BERNE CONVENTION AND THE TRIPS AGREEMENT” E.I.P.R.2004, 26(2), pp. 75-80.
[10] Ibid, p 92.
[11] Ibid, p 92.
[12] MacMillan v. Cooper (1923) 93 LJPC 113.
[13]Dr Goldberg, “Copyright And Allied Rights (LS5551)” (University of Aberdeen, Session 2006-2007)
[14] Ibid, p. 92
[15] Litman, J “the public Domain” http://www.law.duke.edu/pd/papers/litman_background.pdf, accessed 18th April, 2007.
[16] Merchandising Corp of America v. Harpbond [1983] F.S.R. 32.
[17] British Northrop Ltd v Texteam Blackburn Ltd [1973] F.S.R. 241.
[18] Ibid, p 93.
[19] See Bently, ibid pp 94-98
[20] Ibid, p 94.
[21] Interlego v. Tyco Industries Inc [1988]3W.L.R.678.
[22] Ibid.
[23] Interlego v. Tyco (supra).
[24] See Bently, p 98.
[25] Ibid.
[26] Ibid.
[27] ZYX Music v. Chris King [1995] F.S.R. 566.
[28] CDPA 1988.
[29] However, it should be noted that it will only be protected if it is recorded in written or otherwise. S 3(2), CDPA 1988.
[30] Walter v. Steinkopff [1892] 3 Ch 489, Byrne v. Statist [1941] 1 KB 622 and Ravenscroft v. Herbert [1980] RPC 193.
[31] University of London Press v. University Tutorial Press (supra).
[32] Hollinrake v. Truswell [1894] 3 Ch.420.
[33] Exxon Corp v. Exxon Insurance Consultants, [1982] R.P.C.69CA.
[34] Express Newspapers v. Liverpool Daily Post [1985] FSR CA.
[35] W.R. Cornish, “Materials on Intellectual Property” (ESC Publishing Limited 1990) pp. 214-216.
[36] Ibid, p. 99.
[37] Ladbroke v. William Hill (supra).
[38] Independent Television Publications v. Time Out [1984]F.S.R.64.
[39] Feist Publications v. Rural Telephone Service Company, 1990 WL (U.S.). See also http://www.gesmer.com/publications/article.php?ID=115.
[40] Ibid, p. 103.
[41] Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases.
[42] CDPA 1988.
[43]The definition of dramatic work can be found in the case law such as Norowzian v. Arks Ltd [2000] F.S.R. 363 (CA), where it was held that “The expression "dramatic work" should be given its ordinary and natural meaning, which was a work of action, with or without words or music, which was capable of being performed before an audience.”
[44] CDPA 1988, S 3 (1).
[45] Sawkins v Hyperion Records Ltd [2005]1W.L.R. 3281.
[46] It is argued that test of originality in photographs should be treated as sound recording and films where there is no requirement of originality due to the fact that there is no skill and labour in pressing a button in camera for example. Richard Arnold, “COPYRIGHT IN PHOTOGRAPHS: A CASE FOR REFORM” E.I.P.R.2005, 27(9), 303-305.
[47] CDPA 1988, S4(1)
[48] Hensher v. Restawile [1975] RPC115. See also Bently, ibid pp. 74-76.
[49] Vermaat v Boncrest Ltd (No.1) [2001] F.S.R. 5.
[50] Bently, ibid p.106.

Justifying Trade Mark Rightful Place

The purpose of this essay is to discuss whether the right to a trade mark is a property right that ensures protection to the consumer and its relationship with passing off and unfair competition.
Despite the passing of the trademark act 1994, the thesis of this essay is that the right to trademark was and still a qualified property right, and though in close proximity to the torts of unfair competition and passing off, that it may be said to constitute part of them, yet it is governed by common law and statutory rules of its own.
Before going further, however, it is suggested to give a brief account of the background of the Trade Marks Act 1994, which implemented, to some extent, the Trade Mark Directive No. 89/104/EEC of December 21, 1988, of the European Council, to approximate the laws of the Member States relating to trade marks. It is to be noted here, that the aim, since the Treaty of Rome of March 25, 1957[1] was to eliminate the barriers which divide Europe and remove obstacles to trade in order to “guarantee steady expansion, balanced trade and fair competition ". It has become, therefore, necessary to harmonize the trade mark law throughout Europe in order to create a common market. This was considered a necessary step towards the ultimate goal of promulgating a unitary Trademarks system[2]. The Trade Mark Directive required that each member state should “bring into force the laws, regulations and administrative provisions necessary to comply with the Directive not later than December 28, 1991. Nevertheless, the Trade Mark Act 1994 of the United Kingdom did not come into force until October31, 1994.

Definition of a trade mark

The definition which is now introduced into English Trade mark law by the force of the Trade Mark Directive is provided for in section (1) of the Trade Mark Act 1994 as:
“Any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of another undertaking. It may in particular consists of wards (including personal names), designs, letters, numerals or shapes of goods or their purchasing packaging”[3]
This is presumed to be the definition adopted by all member states of the European Union which implemented the Trade marks directive. Nevertheless, it raises some difficulties because as said by Robert Burrel and Haw Beverley Smith:
“Prior to the implementation of the Trademark Directive, there was a long line of authority in the United Kingdom to the effect that shapes of products and containers or coverings should not be registerable as trade marks.”[4]
This was based on reasonable justifications, which are still valid and may be summerised in that shapes of goods and packagings can neither act as trade marks, nor perform their functions and their protection ultimately create perpetual monopolies over goods and containers, in addition to overlapping with patents and designs which enables them to be used to prevent an invention or design form falling into public domain after expiration.
Although section 3 (2) of the Trade Mark Act 1994 introduced limitations on the protection of shapes and packaging , yet these limitations are ambiguous and the exact scope of the trade mark protection for shapes and packaging is difficult to define as shown by the case of Phillips electrics NV V. Remington Consumers Products ltd[5].
However, there is no urgent necessity to protect shapes and containers as trade Marks in the United Kingdom, because they were already protected in the previous law, as an imitation of a shape or packaging might give rise to an action of passing off in the United Kingdom or an action for unfair competition in the United States[6].
By contrast, imitations of shapes and coverings may give rise to an action for commercial fraud in Saudi Arabia, but they are not registerable as trade marks since section (1) of the Saudi Trademark Law define a trade mark in the following terms:
“In implementing the provisions of this law trade marks shall be names of distinct shapes, signatures, words, letters, drawings, symbols , stamps and protruding inscriptions or any other sign or combination thereof which can be recognized by sight and suitable to distinguish industrial, commercial vacationed or agricultural products or a project to exploit forests or natural resources or to indicate that the thing upon which the trademark is put belongs to the owner of the trademark on grounds of manufacture , selection , invention thereof or trading therewith or to indicate the rendering of a certain service"[7].

The property concept & Trademark

From the above definition, it is clear that a trade mark is a distinctive name, symbol or device that indicates or authenticates the origin of products. Once this right is acquired and legally recognized, the owner becomes entitled to the exclusive use of the mark to the exclusion of all others. In other words, any unauthorized use by another person even if the use is innocent and without fraud, gives the owner the right of action for infringement against the user. As a consequence of this the right in the technical trade mark was classified at common law many years ago as a property right[8]. This was first recognized in the case of Millington V. Fox in which the infringement of a trademark was restrained[9], although it was committed innocently and without knowledge .This was reaffirmed in subsequent cases[10], and adopted by the Trade Mark Act 1938, according to which a trade mark validly registered becomes a species of incorporeal property.
However, prior to statutory provisions, the question whether the right to trade mark is a right of property was not firmly established. It was held in the case of Collins Co. V. Brown that there was no property whatever in a trade mark[11], and in Reddaway V. Banham the validity of the statement that there was a property in the common law trade mark was questioned[12].
By contrast, the old judicial authorities in the United States were like United Kingdom, somewhat conflicting. According to Rudolf Callmann in his discussion of the property concept in the law of Trade mark[13], the famous trade mark cases maintained that the right to adopt and use a trade mark is a property right, but this was not followed in subsequent cases, which recognized the property concept but in a qualified sense. However, the trade mark law revision
Act 1994 and the federal Dilution Act 1995 have broadened trade mark rights and suggest a return to the old concept of trade marks as property rights[14].
As far as the United Kingdom is concerned, the uncertainty was finally settled by the Trade Mark Act 1994 which provides in section 2(1) that:
“A registered trade mark is property right obtained by registration of the trade mark under this act and the proprietor of a registered trade mark has the right and remedies provided for in this Act,”
This is confirmed in section 22 which provided that:
"A registered trade mark is a personal property (in Scotland) incorporeal movable property"
Despite these statutory provisions, it submitted that the right of trade mark is a property right in a qualified sense for the following reasons:
In the first place, it is a movable not real property and the rights and duties of the owner are confined to the rights and duties provided for in the Trade mark Act 1994, as expressly stated in section 2 (1).
This implies a difference between property right relating to trade marks and ordinary property rights; otherwise the Trade mark owner would have been left to seek protection in the ordinary rights and duties of an intangible property.
Secondly, the property right in a trade mark is limited by the territorial scope of the United Kingdom. Section 9 (1) of the trademark Act 1994 which provides that:
“The proprietor of a registered trademark has exclusive rights in the trade mark which are infringed by the use of the trade mark in the United Kingdom without his consent”
There are, therefore, territorial limits to the protection.
Thirdly, a trade mark is only a symbol of the ' good will ' of the business of the trade mark owner who acquires the right to prevent his goods from being confused with goods of others and to prevent other to steal his business through the use of misleading marks. These are practically all the rights enjoyed by the owner of the trade mark[15].
Fourthly, the protection is not for the trade mark as such, but it is rather against injury to the business[16]. If there is any property right, then this is derived from the good will or the product not from the mark or symbol as such.
Fifthly, the purpose of protection is not the trade mark itself but is to prevent consumer’s deception and preserve the owner’s interests in his business. A trade mark is, therefore, not protected for its own self.
Sixth, it is difficultly to understand how a trade mark can have a value independent of the fact that it is a symbol of the good will of business or product.
Seventh, there are limitations on all property rights and a trade mark is not an exception. This supports the view that a trade mark is a property in a qualified sense. This is because if there are limitations on real personal property, it goes without saying that there should be limitation on property right to trade marks.
Finally, although the property right in the a trade mark is now supported by the Trade Mark Act 1994, which put an end to a long and old controversy, nevertheless the statement that it is a property in a qualified sense is still true.

Consumer Protection

The question arises here is not whether a trade mark is a property, but is whether it provides the necessary protection for both the trader and the purchasing public from fraud, confusion and deception. In cases of infringement it is clear that the infringer " works fraud upon dealer and customer alike; his palming off is a piracy pure and simple " as has been put by an American judge[17].
In the case of General Electric Company v. The General Electric Co. ltd, Lord Diplock considered the interests that deserve protection by registration of a trade mark in following words:
" A right of property of this character calls for an accommodation between the conflicting interests of the owner of the monopoly, of general public as purchasers , of goods to which the trade mark is affixed and the general traders ……. the interest of the general public requires that they should not be deceived by the trade mark ……… …….. it ought not to tell a lie about the goods."[18]
In fact as has been expressed by Daniel M. Mcclure:
“The history of trade mark was seen as play out the tension between protecting entitlements on the one hand and encouraging competition by allowing free access to protected trade mark on the other."[19].
From the above definition of a trade mark, it follows that the main function of a trade mark is to distinguish goods and services of one undertaking from those of other undertakings, and to identify them with a particular manufacture or trader. One of the goals of this is the protection of the consumer from deception and confusion but this cannot be realised unless the rights of the owner to use the trade mark are restricted. Unfortunately, this is not the case due to the fact that the owners of marks are now free even after the Trade Mark Act 1994 to establish subsidiaries to manufacture products under their trade marks or even give license to independent undertakings to do so. This makes the trade mark unable to offer the Consumer an effective means of identifying the origin of products and gives him no guarantee of the quality or characteristics of the product. Since the owner is not required by law to guarantee the quality or characteristics of the products manufactured by a subsidiary or a licensee[20]. This constitutes serious limitations to the extent of protection provided to the consumer by the trade mark. Moreover, in the context of the European community application of national law introduces a further limitation on consumer protection, because a trade mark owner is able to exclude imports from other member states bearing his mark, even if the use of the trademark was with his consent and thereby deprives the consumers of increased choice and domestic producers will continue to enjoy a protected market without improving quality or reducing the prices. Consequently a trade mark owner and his subsidiaries or licensees will be able to divide the common market among themselves to the detriment of consumers. To remedy this situation and eliminate all trade barriers the Trade Mark Directive and other Regulations were issued by the European council to harmonies the laws of states members as step towards unification of these laws.
The consumers are further victimized by the allegation that trade mark rights are in danger of coming to be used as an instrument for the support of monopolies and restrictive practices rather than an indication of origin of the goods and a guarantee of their quality[21].
The argument in support of this view may be summerised as follows[22]:
1. Trade marks have monopolistic features that affect public interests due to the legal privileges attached to them.
2. As a result of trade mark monopoly a cartel can be able though use or abuse of trade marks to divide the world among its members because a trade mark exists only where it is used and two or more businesses may use the same trade mark on the same products in different territories.
It has been pointed out that these arguments are not convincing as the proponents failed to show what are the legal privileges flowing ownership of a trade mark, and how these legal privileges affect the public. Moreover, the attack on trade marks by calling them monopolies is an attack on property in general, and all property is essentially monopolistic as its owner may use it to the exclusion of all other. In this sense a monopoly exists, but this is not monopoly in the ordinary sense. This has been expressed more forcefully by L.D. Taggart [23] as follows:
“Upon analysis of the facts underlying the use and protection of trade- marks, trade- marks are not monopolies in any objectionable sense, nor are they restraint of competition. They are the essence of competition. Their purpose and effect is to distinguish competitive goods. If there is no competitive product the basic need for a trade-mark disappear because there is no reason to distinguish one product from another. When only one product exists, these is no “customer”, there is only “consumer”. The consumer takes or dose without. He has no choice”.
In fact trade marks protection tends to enhance competition among providers of goods. As stated by Gideon Parchomvsley and Peter Seigedman:
“By identifying the source of the goods and services, trademarks promote competition in two related ways. First trademarks enable business to convey information to consumers about the quality of products and services, reducing consumers' search costs. This informational function of trademarks is specially valuable in the context of “experience goods " – Products whose attributes consumers can not discern before purchasing them – where consumers rely on prior experience in deciding among competing brands. Second ,trade mark allow consumers to associate product and service attributes with certain firm and base their consumption decision on this association . For this reason, on the supply side, trade mark, protection spurs firms to maintain and improve the quality of their products and services. The availability of trade mark protection protects firms against free- riding by competitors enabling them to reap the fruits of their investment in superior products and services." [24]
In the light of the above, it clear that the law of trade mark does not guarantee to the consumer complete freedom from deception even if the trade marks have no monopolistic features.
This is further complicated by the fact that the scope of its application is too narrow to provide complete protection for the consumer. Apparently for this reason, Trade Mark Act 1994 has expressly saved the common law action of passing off in accordance with S.2 (2) which provides that:
“No proceeding shall lie to prevent or recover damages for the infringement of an unregistered mark as such but nothing in this Act affects the law relating to passing off.”
Passing off is ,therefore, the safety value in cases of unregistered marks and cases when the deception is by such things like weigh or size which do not constitute trademarks.

Passing off

It is defined as carrying on" business or to sell merchandise under such a name , mark, description or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong actionable at the suit of that other person .. This form of injury is commonly …… termed …. passing off one's goods or business as the goods or business of another."[25]
The action of passing off gives sufficient protection in all cases in which the use of the name does not constitute an infringement of the trademark but nevertheless it is in some degree deceptive. The action for infringement of a trade mark is based upon the plaintiff's title to the exclusive use of the mark and the use of this mark by the defendant .The action for passing off is based on the fact that the defendant has been using some means such as imitation of the plaintiff goods which are calculated to pass the defendant’s goods off as those of the plaintiff and that the plaintiff thereby sustained injury. In an action for infringement the plaintiff needs to prove only the registration of the mark under his name and the use of mark by the defendant. In the action of passing off it must be proved that the defendant has been using means which are calculated to deceive as well as injury to the plaintiff[26]. The law of passing off, therefore, supplements the law of trade mark and is the equivalent of unfair competition in the United States. It can, thus, to be said that the law of trade marks is a part of the law of unfair competition since the principle of unfair competition is the principle of passing off. In other words, the rule of passing off is the rule of unfair competition itself[27]. However, the common law does not recognize a general law of unfair competition. Hence, it is impossible to describe English law beyond the well defined principle of passing off and other economic torts[28]. In case of passing off the goods or services must be offered for sale in an area where the defendant and plaintiff are competitors. As stated by Lord Kingsdown in Leather Cloth Co v. American leather Cloth Co.[29]:
“The fundamental rule is that one man has no right to put off his goods for sale as the goods of arrival trader"

Passing ऑफ़य्ेक्ommitted in several ways such as:
(1) Marketing a product as that of the plaintiff.
(2) Using plaintiff's name.
(3) Using plaintiff trade name.
(4) Using the plaintiff trademark.
(5) Imitating appearance of the plaintiff's goods.
(6) Selling inferior goods thereby misleading purchasers.
The defendant is liable even if his conduct was honest and innocent but his representation must be calculated to deceive.
The relation of the law of Trade marks to the common law of passing off is that trade marks are now governed by the Trade mark Act 1994 in accordance with which a trade mark is property giving the proprietor an exclusive right to the use of it in respect of the classes of goods in relation to which it is registered. This kind of monopoly or right of property is not firmly established in the common law. The cause of action in a common law action for passing off is not the infringement of any statutory monopoly or right of property but damage done to the plaintiff in his business by the deceptive acts of the defendant. In other words at Common Law the use of the plaintiff's trade mark is never in itself any cause of action but is merely one of several means by which the wrong of deceiving the public to the plaintiff's prejudice may be committed . Moreover, passing off may arise in cases which have nothing to do with trade marks such as using the plaintiff name[30].
However, as pointed out above it is not possible to give a complete picture of British law without reference to economic Torts and cases such as Donoghue v. Stevenson[31]. In this case Mrs. Donoghue drank a bottle of ginger beer manufactured by the defendant. The bottle allegedly contained the decomposed remains of a snail which were not, and could not be detected until the greater part of the content of the bottle was consumed. It was alleged that she was ill as a result and sued the defendant. The House of Lords gave a judgment for the plaintiff on the grounds that:
" … a manufacturer of products which he sells in such a form as to show that he intends them to reach the ultimate consumer in the form in which they left him, with no reasonable possibility of intermediate examination and with the knowledge that the absence of reasonable care in the preparation or putting up of the product will result in an injury to the consumers life or property, owes a duty to the consumer to take that reasonable care".
This case is an example of protection to the consumer which the tort of passing off cannot provide. The Principle of Donoghue V. Stevenson has been extended to provide more protection to the consumer, but this is outside the scope of this essay. It is sufficient to state that, although the protection provided by the law of passing off is wider than the protection provided by trade marks, nevertheless the action of passing off alone is not sufficient to provide a complete protection, especially in cases of personal injuries as happened in the case of Donoghue V.Stevenson referred to above .The rule of this case is so elastic that the courts were able to extend it to make manufacturers of products liable in certain circumstances to the end consumer, however far the distance between the place of manufacture and the place where the ultimate consumer resides.

Conclusion

It may be concluded from the above that the 1994Trade marks Act has added a new element to the definition of a trade mark by allowing shapes and packagings to be registered as trademarks.
It is true that, the 1994 Act has recognized the right to trademark as a property right, but as far as British law is concerned this is not new. As we mentioned above, it was recognized by the Common law in some cases which were reaffirmed by the Trade mark Act, 1938. Consequently the question whether a trademark right is a property right is now settled by legislation in the United Kingdom and is no longer subject of dispute except as to whether it is a qualified property right or not. The arguments in support of its qualified nature are enumerated above, and it is seems, to me, be an academic rather than practical.
The another issue that we have concluded is that trade marks are unable to provide their full expected protection, because trade marks proprietors are free to create subsidiaries and give licenses and authorize them to use their trade marks without keeping control over the products of those subsidiaries and licensees. The suggested remedy is to restrict in some way the freedom of those trade marks proprietors; otherwise they will also be able to divide the world among themselves and their subsidiaries and licencees.
As to the wrongs of infringement of a trade mark, passing off and unfair competition they are so interrelated that it is nearly impossible to a discuss them separately. Trade marks law is a part of the law of passing off, and this law in the United Kingdom is the equivalent of Unfair Competition in the United State and is governed by the same rules. For this reason we have concentrated to some extent on Passing Off as the essay is concerned mainly with British Law.
Although much has been written in the United States on the tort of unfair competition, nevertheless it seems that the expression" unfair competition" is a descriptive expression and not well defined as the tort of " passing off". This is at least the impression left behind after reading many American Articles[32]. The confusion may be because the expression is frequently used in economics and each of "Infringement of a trade mark"; "Passing Off" and "Monopoly" can be described as unfair competition. In any case the expression is the name given to the tort of Passing Off in the United States of America.
The action for Passing Off, therefore, gives sufficient protection where the use of the name, though deceptive, does not constitutes an infringement of the Trade mark, but the consumer is still in need of protection in cases where there is neither infringement nor a deceptive use, but the injury to the plaintiff is caused by the defective nature of the product itself। To bridge this gab, the British law recognizes liability for defective products and holds that, a manufacturer of products is liable to the ultimate consumer for injuries caused by any defective product.

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[1] See recitals of the Treaty of Rome of 25 March 1957.
[2] Timothy W. Blankely, “Beyond the International Harmonization of Trademark Law: The Community Trade Mark as a Model of Unitary Transnational Trademark Protection” University of Pennsylvania Law Review Vol. 149 No. 1 (Nov. 2000) PP 309-354.
[3] Trade Mark Act 1994.
[4] Robert Burrell; Huw Beverley Smith, “Shaving the Trade Marks Directive down to Size?” M.L.R Vol. 63 No. 4 ( July 2000) p. 570
[5] Philips Electronics NV v. Remington Consumer Products Ltd [1999] R.P.C. 809 CA.
[6] See W.L.P.A. Molengraaff, “The Nature of the Trade-Mark” Yale Law Journal Vol. 29 No.3 (Jan. 1920) PP.303-311.
[7] The Law of Trade Marks, Royal Decree No. M/21, 2002.
[8] See W.L.P.A. Molengraaff, "The Nature of the Trademark", Yale Law Journal vol. 29 No.3 (Jan. 1920) pp.303-311, and “The Nature and Extent of the Right in Trade-Marks" Columbia Law Review, Vol.16 No.5 (May 1916) p.416.
[9] Millington V. Fox 3 Myl. X c. 338 [1838].
[10] See Edelsten V. Edelsten I De G. J.&S 188,199. Leather Cloth Co.v. American Leather Cloth Co. 4 De G. J&S 137.142 1863. Singer Manufacture Co.v. LOOG 8 App.cas 15.33 (1882) and Hall v. Barraws 4 De G.J. 150.
[11] Collins Co. v. Brown [1857] 3 Kay & J. 423, 426.
[12] Reddaway V. Banham A.C. [1896],199,209
[13] Rudolf Callmann, “Unfair Competition without Competition? The Importance of the Property Concept in the Law of Trade-Marks”, The University of Pennsylvania Law Review Vol.95 No. 4 (March 1947) pp. 443- 467.
[14] Daniel M.Mcclure, “Trademarks and Competition: The Recent History” law & Contemp Probs vol. 59 No.2 (1996) p.14.
[15] See Rudolf Callmann op. cit. p.458
[16] See Op. Cit p.13. See also “Nature and Extent of the Right in Trade-Marks”, Colum. L. Rev., Vol. 16, No. 5 (May, 1916), pp. 416-417. See Leslie Davison Taggant, “Trade-Marks: Monopoly or Competition?” Mich. L. Rev., Vol. 43, No. 4. (Feb., 1945), pp. 659-674.


[17] Op. Cit. p. 668
[18] General Electric Co Ltd (USA) v General Electric Co Ltd [1972] 1 W.L.R. 729. See also R. K. Gardiner, “Consumer Interest in Trade Mark Protection” Vol. 36, No. 3 (May, 1973), p. 300.
[19] Daniel M. Mcclure , Op. Cit. p.14.
[20] See A.C Evans, “Trade Marks and Consumer Interests in EEC Law”, ICLQ No1 (1983), pp. 241-249.
[21] Op. Cit. pp.300-303.
[22] See Kurt Berchard " Are Trademark an anti Trust Problem?" 31 Georgetown L.J. 245 (1943), Bartholomew Diggin “Trademark and restraint of Trade” 32 Georgetown L.J. 113 (1944). Also James Fay Hall Jr. “Possible monopoly implications in the Trademark Bill" 32 Georgetown L.J. 171(1944).
[23] See Taggart, op. Cit. p.668.
[24]G. Parchomvsley and P. Seigedman "Towards an integrated theory of intellectual Property" Virginia Law Review vol. 88 No.7 (Nov. 2002) p.1468, 1469.

[25] See Salmond on Torts section 149.
[26] W.L.P.A. Molengraaff, “The Nature of the Trade-Mark”, Yale law Journal Vol. 29 No.3 (Jan. 1920) pp. 303- 311.
[27] See Rudoff Callmann op. Cit. p.445.
[28] See Anselm Kamperman Sanders, " unfair competition: The protection of intellectual and industrial creativity" (Oxford University Press, 1997).
[29] Leather Cloth Co v. American leather Cloth Co, (1865), 11 H.L. Cas. 523, p.538.
[30] Salmond on Torts section 151.
[31] Donoghue v. Stevenson [1932] A.C. 562.
[32] See for example” Trade Mark: Monopoly or Competition " Leslie Davidson Taggart Supra. " Trademarks and Competition: The Recent History “Danied M.McClure Supra.” Unfair Competition without Competition . Rudolf Callmann, “Unfair Competition without Competition? The Importance of the Property Concept in the Law of Trade-Marks” Supra.