Substantiality doctrine in infringement matters

IN this 61st instalment, we canvass the doctrinal requirement of the concept of substantiality in intellectual property (IP) infringement matters with respect to patent, industrial design, trademark and copyright protection.

Report by Richard Pasipanodya

From the onset, it is instructive to reiterate: Patents are for the protection of the unique ideas embedded in processes or product of manufacture; industrial designs for the aesthetic visual appeal of products of manufacture; trademarks for distinctiveness or singularity in identifying and selling the products or processes to which they are attached; and copyright is for the protection of the expression of ideas.

In all these fields of IP protection, to be deemed to have infringed, the accused should have taken and copied a substantial portion of the protected IP work. That is to say, if the portion taken by the infringer is de minimis (very little) then there is no infringement committed. The issue then is what criteria should be used for establishing substantiality.

Definition of substantiality
The Concise Oxford Dictionary 10th Edition defines substantiality as implying “of considerable importance, size or worth … concerning the essentials of something”.

Sadly, neither the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), nor our local IP laws have any clear definition of what constitutes substantial copying, imitation and expropriation. This has been left to be determined by the judiciary.
Obviously, under such a scenario, courts are bound to find themselves in doctrinal inconsistences and puzzlement.

Considerable importance
Proceeding on the dictionary definition, we deduct that substantiality in terms of IP infringement entails copying the core ideas underlying the protected title, however small that portion may be, compared to the complete work. Thus the issue in this case would be whether or not the portion of the protected title expropriated is of core value. This approach would be most appropriately applied to copyright, trademark and industrial design matters with relative ease as these are tangible or visible to the eye. However, with patents, this would be a bit difficult as these are uniquely abstract ideas.

The term size
The reference to size in the definition is ambiguous when applied to IP infringement matters. Using the copyright example, one may wholesomely copy the work or just a small portion of it. In this instance, one who has copied just a small portion of the copyrighted work may still find their conduct as constituting an act of infringement with respect to the worthiness of the portion so copied. Contrariwise, they would not be found wanting should the portion copied not be of considerable importance.

Concerning essentials of something
This definition would be more appropriate to registered titles such as patents for inventions, industrial designs and trademarks. This is because regardless of their rationale basis for protection, they are adjudged by the main features or essential integers. This is moreso with patents wherein the extent of monopolistic rights accorded by law is confined to the contents of the claims.

In other words, patent monopoly is delineated by the claims so that what is not claimed is disclaimed.

In the circumstances, substantial similarity would arise in an issue where the alleged infringement act incorporates all the essential features or integers of the patented invention, registered industrial design or trademark. In this assessment, the courts will disregard non-essential features as well as variants to claimed features as inconsequential.

The test
The test for substantial similarity is that of the relevant national consumer or end-user of the products or processes. As regards trademarks, the court would assess by comparison the sound in pronunciation of the words or signs constituting the mark. This is also done by placing the trademarks side by side, then separately as they would appear in the marketplace.

Is it not fallacy that this test assumes the so-called average person as a perfect yardstick in this determination?

We submit that whether or not the courts claim to adjudge substantial similarity on the basis of an objective approach this is neither here nor there. For, in fact, it is the court’s own subject test based on its views, not that of the actual relevant sector of the consuming public. This is particularly so where the mark is well-known and a large number of the consuming public has associated it with consistent quality due to its origins, whether known or not. In mind we have renowned or famous marks such as Nike, Adidas, Puma, Samsung, Philips, Nando’s, Nestlé, Lyons Maid, Dairibord, Unilever, National Foods, Irvines, Suncrest, etc.

The substantial similarity test has further been overtaken by the internet or digital environment. Whereas it was reasonably easier to determine substantial similarity in the traditional hard copy environment, it is now nigh impossible to limit this to a territorial phenomenon.

Now that substantial similarity is globalised, so too is the copying such that the de minimis principle has become redundant. Copyright works, trademarks and industrial designs are the most battered by the advent of the digital environment, which permits the end user to interact and manipulate the works at a time and place of their choice without trace.

In a nutshell, we advocate the concept of substantial similarity would still be upheld where the provisions of our laws address issues pertaining to the digital environment.

A look around would better expose the effect of the digital environment vis-a-vis trademarks, designs and copyright. We lobby for appropriate legislative updates or formulation which provides for the digital environment.

Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: Mobile +263 775 053 007 or e-mail