Intellectual Property in Scotland

Introduction to Intellectual Property in Scotland

We're a firm of patent and trade mark attorneys with our headquarters in Edinburgh and so, in this article, we're excited to explain what you may need to know about patents, trade marks and other intellectual property rights in Scotland! We also discuss IP rights affecting important Scottish products, such as tartan and whisky.

Most IP rights are uniform across the United Kingdom

Before we discuss unique features of IP in Scotland, we should first explain that for most purposes, IP rights apply uniformly across the United Kingdom (Scotland, England, Wales & Northern Ireland). UK patents, UK trade marks and UK registered designs, obtained through the UK Intellectual Property Office all apply in Scotland. European patents designating the UK also take effect in Scotland. As with the rest of the UK, Scotland is no longer part of the EU and so EU trade mark and design registrations do not apply. EU Unitary patents do not cover Scotland (although as firm we do have representatives before the Unitary Patent Court).

From 1765 to 1875 it used to be possible to obtain a Scottish patent (referred to as Charters of gift). In the mid 19th century, calotype photography flourished in Scotland because certain key patents were registered around the world, including England, but not in Scotland - but those days are long gone.

However, the legal system is not uniform

Scotland has its own legal system, Scots law, which is fundamentally different to English law, and which has its own terminology. For example, assignments are referred to as assignations; injunctions are referred to as interdicts. There are differences in the rules relating to signatures and issues such as legal privilege. Scotland has its own Court system. Intellectual property cases are usually heard at the Court of Session (High Court) which comprises an Outer House, which is predominantly a Court of first instance, and an Inner House, which predominantly functions as a Court of Appeal. Some decisions of the Court of Session may be appealed to the UK-wide Supreme Court. That being said, some intellectual property matters, e.g. passing off, can be heard at the Sherriff Courts.

Scottish solicitors are regulated by the Law Society of Scotland, which is separate to the Law Society, based in England. Many Scottish IP solicitors are dual qualified in Scotland and England. The Scottish equivalent of barristers are advocates who are members of the Faculty of Advocates. However, the patent attorney and trade mark attorney professions are unified throughout the UK and regulated by the UK-wide Intellectual Property Regulator. Like us, most patent and trade mark attorneys practising in Scotland are members of the Chartered Institute of Patent Attorneys and/or Chartered Institute of Trade Mark Attorneys, as appropriate.

Which legal system do you need?

Contracts relating to intellectual property might refer to Scots law or English law and, when dealing with Scottish businesses, it is important to be clear which applies. For Scots law contracts, be sure to take local legal advice.

Most IP enforcement litigation takes place through the English Courts. As well as the English High Court, there is the Intellectual Property Enterprise Court which is an English Court that is cost-effective for some matters. Injunctions and other legal remedies from the English Courts apply throughout the UK and cover Scotland. Litigation in Scotland can however be advantageous where the Scottish Courts have jurisdiction, for example if the defendant is based in Scotland or if there are sales of an infringing product in Scotland. Injunctions and other legal remedies from the Scottish Courts will only cover the rest of the UK in some circumstances.

One very significant difference is that the Scottish Courts can be much more inclined than the English Courts to grant preliminary injunctions ("interim interdicts") pending full trial for IP matters. Furthermore, it is sometimes the case that the Scottish Courts will grant such a measure without the defender (defendant) having an opportunity to enter a defence. A party that thinks that it may be at risk of being sued in the Scots Courts should file caveats with relevant Courts. Caveats name a solicitor and, if an application for interim interdict is filed against them, the solicitor will be called to enter a defence. We are not solicitors and do not file caveats but we can put you in touch with IP solicitors who do.

It should not be forgotten that the UK Intellectual Property Office will also rule on some IP matters and it is possible to bring actions before the IPO under Scottish provisions, where there is any merit to doing so.

Heraldric rights

Scotland has a system of Heraldric rights governed by the Lyon King of Arms Acts of 1592 through 1867. There is a Public Register of All Armorial Bearings which is administered by the Court of the Lord Lyon. In Scotland, it is a criminal offence to use a coat of arms which is not recorded in the register. UK trade mark applications which feature heraldic devices may be objected to by the holder of relevant earlier rights.

Other issues relating to trade mark registrations

Although UK IP rights cover Scotland, there are some registered trade marks which have been geographically limited just to Scotland, or to exclude Scotland. A limitation of this type may, for example, result from a dispute or other circumstances where a third party has unregistered rights of limited geographical scope, or be agreed as part of a settlement agreement.

In the UK (and throughout Europe), it is not possible to register a trade mark consisting exclusively of a sign serving to designate the geographical origin of a good or service. We have a separate article on the protection of geographical names in the UK which discusses this in more depth, but our point here is that various Scottish references are listed in the UK trade mark examination guide as being strongly suggestive of Scotland. These include words such as THISTLE, TARTAN, BRAE, HIGHLAND, GLEN and LOCH. Representations of tartans which should be free to others to use will generally receive objections. Representations of thistles, unless highly stylised, will usually received objections for goods and services associated with Scotland.

Tartan

Tartans are a famous product of Scottish culture and be protected using copyright, registered design rights and in some cases registered trade marks. Further, Scotland has its own tartan registry!

Whisky

The term Scotch Whisky is protected around the world in a number of different ways, using Geographical Indications, local laws, and certification and collective trade marks. This is managed by the Scotch Whisky Association who publish a map of how the term Scotch Whisky is protected in different countries. In Scotland, the composition of Scotch Whisky and its categories, such as Single Malt (our favourite...) are protected through UK-wide legislation and through registered Geographical Indications. Many distilleries and individual whisky product names are registered as trade marks in the UK and around the world. We very enjoy working with new whisky and other drinks brands to protect their IP - as well as product names, it is often possible to protect aspects of get up, packaging and even bottle shapes.

If you have any questions about intellectual property in Scotland, please do not hesitate to contact us.

(The image at the top of this page is the famous view of the Cuillin mountains of Skye from Elgol on the mainland).