Hector MacQueen is Professor of Private Law in the University ofEdinburgh, and Director of The David Hume Institute, a private think tank basedin Edinburgh. With colleagues he is also now directing the newly-foundedShepherd & Wedderburn Centre for Research in Intellectual Property andTechnology (SCRIPT). His publications include the ‘Intellectual Property’article in The Laws of Scotland: Stair Memorial Encyclopaedia and Copyright,Competition and Industrial Design (2nd edition 1995). This is an edited versionof the Scottish Group’s Annual Lecture.
Three matters provide my ‘points of departure’!
First, in February this year, the Faculty of Law in my University and theEdinburgh law firm Shepherd & Wedderburn launched a new Centre for Researchin Intellectual Property & Technology – SCRIPT, as its acronym goes. Ihave the honour to be a Director of the new Centre along with my colleaguesLilian Edwards, Graeme Laurie and Charlotte Waelde – your Chair, John Sibbald,has kindly agreed to become a member of our Advisory Board and has already madea characteristically enthusiastic and committed contribution in our early work.
Second, but first in point of time: in December 1997 a major inwardinvestment in Scotland by Cadence Design Systems, the Californian microchipsupplier, was announced. Amongst the various attractions of Scotland named bythe company was the Scottish legal system, in particular its stability, thewillingness and open-mindedness of the Scottish legal profession, the speed withwhich contracts can be finalised under Scots law, the law of intellectualproperty, and the willingness of legislators to extend the law to facilitateintellectual property exchange. The project, known as Project Alba, is, Iunderstand, now well under way, centred in Livingston. It is an investment ofenormous significance for the Scottish economy. Although Silicon Glen has beenin existence for a long time – in fact, several decades – the investmentshave essentially concentrated on the production side rather than on research anddevelopment in the fields of computers and software; and until recently therehad been little sign of the investment leading on to the development of start-upScottish companies moving into the sector. Project Alba brings in substantialresearch and development facilities just at the time an indigenous Scottishsoftware industry seems to be getting going, and it links Scottish universityresearch with that industrial development. Scottish lawyers can take legitimatepride in the fact that their professional qualities, legal system and law hadplayed an important part in facilitating this crucial step for Scotland.
My third key event occurred almost a year after the announcement of ProjectAlba, when the Scotland Bill completed its Parliamentary passage to become theScotland Act 1998 and set in train the processes by which we now have a ScottishParliament which will assume the legislative powers granted to it by the Act on1 July 1999. As is well known, the Act proceeds on the basis that everything isdevolved unless it is explicitly reserved to Westminster. Amongst the matters soreserved are the following in Schedule 5, Head C (Trade and Industry)
C4. Intellectual property, with the exception of Parts I and II of the PlantVarieties Act 1997 (plant varieties and the Plant Varieties and Seeds Tribunal).
In addition, we may note that under Head C10 (under the general heading‘Telecommunications and wireless telegraphy’) Internet services andElectronic encryption are reserved to Westminster, and indeed we may expectshortly to see a Bill on these matters from that quarter.
Reservation of Intellectual Property
What does the reservation of ‘intellectual property’ to Westminstercover? So far as I can see, the Scotland Act does not define the term apart fromexcluding the plant varieties legislation (an issue which I imagine will be oftop priority on Donald Dewar’s next legislative programme). I understand thatthe reason for devolving plant varieties was because for some reason theSecretary of State for Scotland had a ministerial competence in this area alongwith other Government departments – perhaps because of the link withagriculture?
I do not think that there is a standard definition of intellectual propertyin, for example, the Interpretation Act. There is a definition in the Law Reform(Miscellaneous Provisions) (Scotland) Act 1985, which says that the term‘includes [ie is therefore not necessarily limited to] any patent, trade mark,copyright, registered design, technical or commercial information or otherintellectual property’ (s 15(5)). While noting the clumsiness involved indefining intellectual property as including ‘other intellectual property’,most people would probably agree that patents, trade marks, copyright andregistered designs are clearly amongst the reserved matters; they are currentlythe subject of UK statutes emanating from the Department of Trade and Industry,and the Scottish Office has never had any say in their content. Unregistereddesign right, introduced by the Copyright, Designs and Patents Act 1988, wouldnow also undoubtedly be included, although its development along with such otherrecent innovations as topography right and performers’ rights does raise thequestion of whether ‘intellectual property’ is a closed category or whethersome wholly new form of protection introduced by the Scottish Parliament and notknown anywhere else in the civilised world – tartan protection might be anexample1 – could be struck down as beyond itslegislative competence under this head.
There are other, possibly more immediate, areas of uncertainty. Perhaps themost significant is the law of passing off, which has developed at common law inScotland rather than under statute, albeit closely in line with and largelyfollowing English law. Passing off is commonly treated in textbooks, not onlythose on intellectual property, but also those on delict, which is certainlydevolved as part of Scottish private law. Could the Scottish Parliament abolishthe law of passing off and replace it with a delict of unfair competition of thekind found in many continental jurisdictions, much desired there as part of ageneral harmonisation of European Community law at this level, and resistedstrongly, so far as I can see, by the DTI? It would be curious if the Scottishcourts could develop passing off, as the English courts have done, to deal withcybersquatters (see BT v One in a Million Ltd [1998] FSR 265; [1998] 4All ER 476), but the Scottish legislature could not; but this may or may not bethe position under the Scotland Act. A further question might be whetherlegislation on cybersquatters is also reserved to Westminster because it relatesto Internet services. Perhaps one day the Judicial Committee of the PrivyCouncil, which has the ultimate power of adjudication on such devolution issues,will tell us the answers.
Again, the Law Reform Act of 1985 included ‘technical and commercialinformation’ within intellectual property; is the law on confidentialinformation and the action for breach of confidence reserved or not? Likepassing off, it rests on common law rather than statute; it also appears in bothintellectual property and delict texts, and in the context of restrictivecovenants may also feature in books on the law of contract, another devolvedmatter. There is a Scottish Law Commission report on breach of confidence from1984, with an unenacted draft Bill attached. The lack of enactment may be partlybecause judicial developments and text-writings have removed a number of theuncertainties which existed in the early 1980s; but the law is still far fromwholly clear, and might well be improved by clear and succinct statutoryprovision. Will it be necessary to wait for Westminster, or can the job be doneon The Mound or, in due course, at Holyrood?
The reservation of intellectual property may create other complications. The1985 Act had to define intellectual property because it was dealing with thecourt procedure of commission and diligence – the pre-trial discovery fromopponents and others of items of evidence relevant to a case – in the contextof intellectual property litigation. This is the Scottish equivalent of theEnglish Anton Piller order. In 1980 the English courts declared that theprivilege against having to give evidence tending to incriminate you applied tostop an Anton Piller order; within a year Westminster had reversed this bystatute, showing how important the procedure was seen to be in the protection ofintellectual property and the battle against pirates. Perhaps inevitably, in1982, the same issue arose in the Court of Session and, since the legislationapplied only in England, the Court held that the privilege againstself-incrimination could be taken against a pre-trial commission and diligence.It took another three years for Westminster to resolve the Scottish dimension tothis problem. (See for all this The Laws of Scotland: Stair MemorialEncyclopaedia, vol 18, para 803.) The story illustrates why a ScottishParliament can at least be useful; but it also leaves us with the trickyquestion of whether the Scottish Parliament can deal with a matter which, whilein general undoubtedly devolved (court procedure and remedies), is mostimmediately concerned with an area which is not devolved (intellectualproperty). It should be noted that the particular issue concerned may well haveto be looked at again once the Human Rights Act 1998 comes into force. The AntonPiller order has already been critically inspected in Strasbourg by the EuropeanCourt of Human Rights, and the rules relating to it amended in certain respects;the Scottish procedure should at least be reconsidered with these matters inmind.
Endnotes
1.There is no official regulation of tartans; clan tartansare a matter for the clan chief to determine, and bodies such as the ScottishTartans Society, which advise on and record tartans, are purely privateassociations.
2. Lord Nimmo Smith has joined Lord Kingarth as a Court of Session PatentJudge.
Two other areas of difficulty to drive home the point that the reservation ofintellectual property to Westminster has the potential to cause problems infuture. In December 1998 the Scottish Law Commission published a DiscussionPaper on Attachment Orders and Money Attachment, ie certain aspects ofdiligence. Amongst the matters considered by the Commission in its usual carefulway was the question of how you attach intellectual property in the enforcementof debt and judgments, and it comes up with a number of interesting and usefulproposals generally designed to facilitate this use of intellectual property.But it has also to address the question of which Parliament should pass thenecessary legislation. Diligence is devolved, intellectual property is not. TheCommission’s provisional view is that ‘legislation introducing attachmentorders applicable to intellectual property would pass the tests on legislativecompetence for Acts of the Scottish Parliament’ (para 1.13). But the questionis not really argued out – and in truth it is difficult to see how you couldargue one way or the other, save perhaps through consideration of whether thethrust of the reform concerned diligence or intellectual property. Another anglemight be whether the purpose of the reservation – to keep the laws of the UKin line with each other – would be damaged or not by the reform; since herethey are already distinct, this might tend to favour either a devolved treatmentor a central one to bring about uniformity. The Discussion Paper also touchesupon the use of intellectual property as security, which poses more than a fewissues not really addressed by the intellectual property statutes currently inforce. Given the ever-increasing value of intellectual property in businessgenerally, certainty as to the ability to use it as collateral would obviouslybe highly desirable; but can the Scottish Parliament exercising its undoubtedpowers in relation to rights in security clarify the position with regard tointellectual property as the subject of such rights? The same questions arisehere as with diligence.
The Effect of Reservation
Two final observations. First, on a practical level the sorts of questionsjust raised will no doubt often be dealt with by agreement and concordat betweenUK and Scottish ministers and between the civil servants in Whitehall and Leith,and certainly this will indeed address the problems I am attempting to sketch.Ministers will stand up at Holyrood and declare that the legislation is withinthe scope of the Parliament’s legislative powers, and explain the basis forthat belief. But this will not preclude later challenge in the courts when thelegislation is sought to be enforced; and who knows what arguments will beaddressed to the judges then, and how they will respond to them?
Second, the fact that the Scottish Parliament cannot legislate in aparticular area does not mean that its members cannot talk about that area; andin doing so, they may serve to highlight a need for action at Westminster,possibly on a Scottish level, perhaps – and here I think again of the issuesabout diligence and rights in security – across the United Kingdom as a whole,for it cannot be said that the English law on these matters in relation tointellectual property is in a satisfactory state at present.
The Role of Intellectual Property Law in Scotland
What holds these three facts – Cadence (or Project Alba, as it is perhapsbetter known), the Scottish Parliament, and SCRIPT – together is my majortheme. I am concerned with the role of intellectual property law in Scotland, asan example close to home of what may be a global issue, that of intellectualproperty in peripheral jurisdictions. I use the word ‘peripheral’ very muchin the context of intellectual property law, and in no pejorative or dismissivesense. If you were to ask what are the principal centres of law-making andpolicy-making – in relation to intellectual property, you would not includeScotland. Instead, in a British context, you would talk about London, with a nodin the direction of Newport in Wales, home of The Patent Office (although itretains a London presence); in a European context about Brussels (home of theEuropean Commission), Munich as the home of the European Patent Office and nowperhaps Alicante in Spain as the location of the European Trade Mark Office. Inglobal terms, you would look to Geneva, the home of both the World IntellectualProperty Organisation and the World Trade Organisation, and to Washington DC inthe United States; perhaps also to Tokyo in Asia.. Even before the Scotland Act,you would not think of turning to Edinburgh; and the exclusion of intellectualproperty from the legislative competence of the Scottish Parliament simplyreinforces this predisposition.
The Development of Intellectual Property Law
The reason for this is the increasingly global nature of IP in the modernworld. And if you look at the development of IP law historically, thisglobalisation seems to be the inevitable outcome of the globalisation of tradingmarkets – a process being accelerated now at the consumer level not only byincreasing affluence and mobility but also by the Internet and the prospect ofthe information superhighway. Perhaps the single most important thing about IPis its relationship with markets – its crucial role, indeed, in creatingmarkets where otherwise none might exist. Patents and copyrights enable theinventive and creative to claim an exclusivity without which it might be verydifficult or impossible for them to earn any economic return for their work.This becomes very problematic if the existence and nature of these rights varyaround the several places in which an inventor or an author might find customersfor his or her product. So as market places grow in scale, you find intellectualproperty rights following closely behind. An early example is the United Kingdomafter 1707. The first Copyright Act – Queen Anne’s Act – was passed in1709. There is every reason to believe that this was an anti-Scottish move atthe behest of the London printers, who were concerned that the monopoly whichthey had hitherto enjoyed in England would now be subject to the cut-pricecompetition of piratical Edinburgh printers now able to sell south of theborder. Every subsequent copyright statute has been a UK Act; statutorycopyright law has been harmonised and indeed uniform in the UK since 1709.Perhaps because the grant of a patent was an act of the Sovereign’s power,there seems to have been less uncertainty that patent law was uniform throughoutthe UK, even when, as was the case until 1852, there actually were separateScottish and English patents and even separate registers of patents until 1883.This was said to follow from Article 6 of the 1707 Union, which said that ‘allparts of the United Kingdom for ever after the Union are to have the sameallowances, encouragements and drawbacks, and to be under the same prohibitions,restrictions and regulations of trade’. And when registered trade mark lawbegan to develop late in the 19th century it was once more upon a UK basis.
Similarly, in the United States the Constitution provided from the beginningfor a federal law of patents and copyright and it was joined in due course by afederal registered trade mark law. Globalisation was sufficiently far advancedby the late 19th century to lead to the two great international conventions of1883 and 1886: the Paris Convention on industrial property (patents, trade marksand designs) in the former year, the Berne Copyright Convention three yearslater. What these remarkable instruments did was to facilitate internationalactivity by enabling foreigners to obtain national rights in member states –the principle of national treatment – thus opening up the possibility ofobtaining international and, ultimately, worldwide protection for one’sintellectual property wherever one carried out one’s relevant activities. Inaddition, the Berne Convention set minimum standards for national copyrightlaws, the beginning of a process of harmonisation of national rules on thesubject which has led today to a very substantial consensus as to the core ofcopyright law in at least the western world.
In more recent times, we have seen significant strides being made in easingthe path of the person who would obtain patent and trade mark protection on aworldwide basis, albeit still operating on the basis of acquiring a bundle ofnational rights through a single application procedure at an internationaloffice or bureau. Minimum standards of intellectual property protection havebeen established in patents and trade marks as well as copyright by the 1994Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).Perhaps most interestingly for present purposes, within the European Union, notonly has there been substantial progress towards harmonisation of theintellectual property laws of the member states, but there have also been movestowards the establishment of supra-national intellectual property rights. Todate, the most successful of these has been the Community Trade Mark; but wealso have the Community Plant Variety Right and waiting in the wings – orpossibly in limbo – we have the Community Patent and the Community RegisteredDesign. The creation of these Community rights, and the removal of differencesbetween national rules, have been seen as crucial to the creation and long-termsuccess of a single market in Europe, and the process is on-going.
Variations in Protection
The possible problems which can arise in a marketplace which has variableintellectual property protection in its constituent parts can be wellillustrated by the cases which have come before the European Court of Justiceover the years. Thus, for example, there was a time when Italy, Spain andPortugal did not grant patents for pharmaceuticals, unlike the other memberstates of the Community. As a result it was possible for imitators tomanufacture freely, and much more cheaply, in those countries, and to argue thatthe free movement of goods principle central to the existence of a market couldbe used to enable these products to undercut the patented versions in othermember states, and thus undermine the use of the patents by their owner torecover the research and development costs which had led to the development ofthe drug in the first place. Nevertheless the Court held that the free movementprinciple prevailed (see Merck v Stephar [1981] ECR 2063; [1981] 3 CMLR463; Merck v Primecrown [1996] ECR I-6285; [1997] 1 CMLR 83). A differentresult was reached, however, in a case involving the content rather than theexistence of intellectual property rights. This was a case about soundrecordings where copyright had expired in Germany but not in Denmark inconsequence of different rules about the duration of copyright in such material.The Court held that the Danish copyright could be used to block the import ofrecords manufactured in Germany. As a result records lawfully made withoutcopyright permission in Germany could not be lawfully sold in Denmark (see EMI ElectrolaGmbH v Patricia Im- und Export [1989] ECR 79; [1989] 2 CMLR 413). It is notnecessary here to go into the detailed reasoning justifying the differentoutcomes of these cases; they are mentioned here merely to illustrate thedifficulties, and it is worth noting that all member states now grant patentsfor pharmaceuticals and have the same length of copyright in sound recordings.
But is the global market the only market? – the only concern in thinkingabout the future development of intellectual property? The question is afamiliar one in the context of the developing world. The process ofinternational harmonisation and minimum standards of protection which Imentioned a moment ago takes as its point of departure the highly developedintellectual property laws of the western world. Are such laws, conferring highlevels of protection, appropriate for other, less industrially advanced, partsof the world? Is there a danger that products so protected will only reach avery limited market in developing countries? More pertinently, will intellectualproperty rights freeze the technology gap and make industry and information inthe developing countries permanently dependent upon what the developed world isprepared to let them have, and so prevent the growth of indigenous inventivenessand creativity?
I do not pretend to have the answer to these very complex questions. Instead,I want to approach the question of whether the global market is the only marketfrom a different perspective – a Scottish perspective. Is there anyspecifically Scottish dimension to intellectual property issues? Is the onlyresponse to present conditions harmonised national rules and supra-national newones? Are there organisations out there who might not really be interested inthe European or the global markets, and who might benefit from a more‘local’ approach to IP rights? And are there out there more companies likeCadence who could be attracted to invest in Scotland because there is a locallegislature which is prepared to adapt its laws to meet what these investorsperceive to be their requirements from a legal system?
Just as it was impossible for me to answer my own questions about the role ofintellectual property in the developing world, so is it equally impossible forme to give definitive answers to my questions about Scotland and intellectualproperty. All I can hope to do is to persuade you that there are at leastquestions to be asked and that it might be worthwhile trying to find out atleast a little more than we presently know about the answers, or about how totry to find out what the answers might be. And that, of course, is where SCRIPTcomes in, and the points made at the outset come to be unified.
I think, first of all, that there is demand for and experience ofintellectual property in Scotland, and that it has grown significantly in the 20or so years for which I have been studying the subject. The main evidence I havefor this is the frequency with which I have been asked for opinions on thesubject; the growth of a body of practitioners specialising in the area over thelast decade, culminating in the emergence of intellectual property as anspecialisation accredited by the Law Society of Scotland; the increasing numberof courses and lectures about intellectual property matters which my colleaguesand I have given to lawyers and others around Scotland in recent times; and thegrowing amount of case law in the Court of Session, to which I shall return indue course, and which has recently led to the appointment of a second PatentJudge in the court.2 I am sure that it issymptomatic of the perception of a growth area of business that the Law Societyof Scotland held what was by all accounts a very successful IntellectualProperty Awareness Week in April 1999.
The impression which I have formed over the years is that the intellectualproperty rights which matter most in Scotland are the ones which do not involveprocesses of registration – ie copyright, passing off, breach of confidenceand, more recently, unregistered design right, rather than patents, trade marksand registered designs. It is important to say at once that this is an entirelyimpressionistic view, and one which I have made no effort to quantify. Indeed, Iam not sure how one would quantify it, since I do not think that the PatentOffice keeps a record of the parts of the United Kingdom from which patent,trade mark or design applications come. My impression may well be mistaken; myown university certainly makes a large number of patent applications each year,and I am sure that the same must be true of other Scottish universities andresearch institutes. But the industries which have traditionally made thegreatest use of the patent system – pharmaceuticals, heavy engineering, and soon – have in modern times either not been present in Scotland or notheadquartered in Scotland, so that research and development is being carried outelsewhere and applications are accordingly being made from other centres.
This impression is also borne out by the nature of the intellectual propertylitigation being carried out in Scotland, at any rate as found in the lawreports. The number of patent cases in my time has been very small. True, therewas the Santa Fe¨ case in the early 1980s, at the time the longest proofin Scottish legal history even although it eventually settled; and more recentlythe Conoco case. But both cases arose out of activities in the North Seaand not from inventiveness in Scotland or work by Scottish inventors andcompanies. The exploitation of the North Sea oil resource was all that led toScotland being the forum for the dispute. In registered designs the onlyreported Scottish case of which I am aware was in 1966 (G & A Harvey vSecure Fittings 1966 SLT 121). Registered trade mark cases were likewiserare until the passage of the Trade Marks Act 1994, since which there has been arelative spate of litigation – although as nothing compared with theoutpouring of decisions on the Act by the English High Court. Much, although byno means all, of the Scottish litigation has come about at the instance of thewhisky companies, who have a particularly strong interest in the protection oftheir brand names, and who clearly wish to take advantage of the increasedregistrability of marks which the 1994 Act makes possible.
There is by contrast a reasonably steady flow of cases about copyright,passing off and breach of confidence. And when unregistered design right wasintroduced, one of the very first cases on the subject was in Scotland. Now thiscould be explained by the fact that unregistered rights are inherently lesscertain in their existence and scope than registered ones, and are thus morelikely to be tested through court action; or it could be that for the typicalsmall Scottish enterprise, operating principally or even entirely in Scotland,there is relatively little attraction in registered rights obtained byapplication to an office in Wales or even further afield, involving theexpenditure of reasonably large sums of money on both the registration itselfand on professional advice, and a certain amount of time, effort and furthercost to maintain. It may give far more protection than you are ever likely toneed if you are operating on a local base only.
My own experience provides this example: a fish-and-chip shop in a small townin Central Scotland which had diversified its offerings to include pizzas,pastas and kebabs and which claimed to draw its clientele from a good-sized areaaround its home town. The unregistered trading name indicated that in one shoppremise it was possible to obtain four different categories of fast food.Another such carry-out shop using the same or a similar trading name opened upin a neighbouring town inside the radius claimed by the first shop as the areawithin which it enjoyed goodwill. The first shop sought protection throughpassing off. When asked why no trade mark had been registered, the answer camethat (a) it had not been thought of; (b) it seemed unnecessary to haveprotection outside the area of Central Scotland, since the business was, and wasintended to remain, not only family owned but also family run. Registration of atrade mark against a purely hypothetical future expansion beyond this levellooked like a waste of hard-earned money.
Another example, this time from reported litigation, is Shetland Times vWills 1997 SLT 669; 1997 SCLR 160 (Notes). This case gained great notorietybecause it was one of the first anywhere in the world to discuss copyright onthe Internet. Yet in the end it was above all a local dispute, involving twocompeting businesses in the Shetlands. No doubt before the dispute there was aninternational market constituted by the Shetland diaspora; but my guess would bethat this constituted only a very small part of the market for which the twobusinesses catered, and that the essential customer base which made worthwhilethe publication of newspapers about Shetland was to be found in the Shetlandsthemselves, and that any copyright enjoyed outside that part of the world was oflittle real value to the parties, and unlikely ever to be of value.
What Does Scotland Need?
I should take care not to be misunderstood. I am not advocating anindependent Scottish intellectual property law. That would probably be pointlessand possibly even dangerous. It is evident that there are Scottish enterpriseswhich use and benefit from the whole range of intellectual property rights, notjust in Scotland, but also in the wider world. The new Scottish software houses,for example, will need the international protection of copyright because themarket for their products is indeed a global one. But one might observe that itis the good fortune of these still fledgling businesses that as a result of theBerne Convention copyright arises automatically, without registration, in everymember state of the Berne Union. The result is that in the key markets of NorthAmerica, Europe and the Pacific Rim they will enjoy protection and have apowerful bargaining chip. The only issue is the ability and the determination toenforce the rights that exist. Things might be a little different if, say,patents were the only available means of protecting software. Then the companieswould have to decide in which of the world’s markets they wanted protectionand undertake the considerable expense of registration, possibly having to fightoff competitors seeking registration themselves and arguing that the Scottishproduct should not be registered on one of the grounds of invalidity underpatent law. On the other hand, once the process of registration is complete, atleast after examination for registrability there is a fair degree of certaintythat the right exists, and this can be brandished against competitors as a wayof ‘marking your territory’.
My argument comes to this. We do not know what Scottish business wants orneeds from intellectual property law as its growth and development continues. Weneed to ask ourselves whether there is any connection between Scotland’sapparent under-performance in entrepreneurship and starting up businesses andfailures either of intellectual property itself or in the knowledge of those whomight benefit from it. We can perhaps detect that international business will befacilitated by harmonised and supra-national law offering a relatively high andconsistent level of protection for key interests. Registered rights createcertainty about the existence of rights, but the price of certainty isrelatively high, perhaps prohibitively so for small and start-up firms. Thesofter-edged unregistered rights may be more attractive in the present state ofthe law; alternatively, if there are to be registered rights, the conditions onwhich they are made available ought perhaps to be reduced in order to make themmore accessible. This may be one of the reasons underlying the remarkablesuccess of the Community Trade Mark, which has attracted an enormous number ofapplications from all over Europe.
One of the present Community law harmonisation directives can be seen asanother step in the same direction. It proposes the introduction of ‘utilitymodel’ protection. Something like it is already found in most of the memberstates of the Union; the major exception is the United Kingdom. The idea isessentially a second- or lower-level patent, in which a party can register sometechnical improvement, possibly falling short of the levels of inventivenessrequired for a patent; registration is carried out without any or very muchsubstantive examination before grant; and throughout the much shorter period ofprotection the grant is subject to challenges to validity. The reasoning behindthis scheme is essentially the protection of small business unable through lackof resources to patent or to maintain the protection and enforcement of apatent. By and large the official United Kingdom position has been to oppose theintroduction of such a scheme. One criticism, with which I have a good deal ofsympathy, is that there is already too much intellectual property protectionabout and that all this protectionism is bad for the market; another is theexistence of an unexamined intellectual property right can cause a great deal ofdamage in the market place, since not all competitors will necessarily have theresources to mount challenges to their validity. Having attended meetings inLondon at which these issues have been discussed, I know that the interestswhich tend to command the ear of Government in determining its response toCommunity proposals are those of large industry and those who advise them onintellectual property matters. Small business rarely gets a voice. And Scotland,apart perhaps from the occasional interventions of the Law Society’s WorkingParty on Intellectual Property, is not heard at all. Although I think that I amopposed to the introduction of utility models, I would nonetheless like to knowmore than I do about the Scottish situation in reacting to and commenting uponthe proposals.
It is with this sort of thing, I think, that an intellectual propertyresearch centre based in Scotland can play a useful role. Of course, we alsoexpect to play a role in Scotland in disseminating knowledge about andunderstanding of intellectual property, and in helping businesses and otherpeople and their advisers to understand what intellectual property can do forthem. But I think that we can also try to find out more about intellectualproperty in Scotland, and represent to the principal centres of the subject whatis important on the periphery. To this end, a colleague in Northern Ireland andI have recently made applications for funding to support a project aimed to dojust this, taking in not only Scotland and Northern Ireland, but also a numberof other small countries and regions in Europe, possibly extending into EasternEurope if our more grandiose ambitions are realised. In taking this on, we hopeto deepen the debate about intellectual property both locally andinternationally, since it is clear that the issues raised are by no meansconfined to Scotland in the United Kingdom. I would hope that, whatever may bethe formal constraints on the legislative competence of the Scottish Parliament,it will feel free to discuss intellectual property as an important element inthe economic performance of this country, but will wish to do so on the basis ofresearch and knowledge. It is that, amongst other things, which our Centre willtry to provide.
