Category: Intellectual Property

Vega Finance (Trade Mark: Opposition): IPO 1 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection

Judges:

Ms J Ralph

Citations:

[2019] UKIntelP o36619

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 25 November 2022; Ref: scu.661016

Arnold Clark Easy Pay (Trade Mark: Invalidity): IPO 9 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations

Judges:

Mrs B Hedley

Citations:

[2019] UKIntelP o46219

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 25 November 2022; Ref: scu.661022

OHIM v Borco-Marken-Import Matthiesen: ECJ 9 Sep 2010

Appeal – Community trade mark – Application for registration of the figurative sign ‘a’ – Absolute grounds for refusal – Distinctive character – Mark consisting of a single letter

Citations:

[2010] EUECJ C-265/09

Links:

Bailii

Jurisdiction:

European

Citing:

Opinion – OHIM v Borco-Marken-Import Matthiesen ECJ 6-May-2010
(Intellectual Property) Opinion – Appeal Community trade mark Sign consisting of one letter Absolute grounds for refusal of registration Regulation (EC) No 40/94 Article 7(1)(b) Distinctive character Method of assessment Examination, based on the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 25 November 2022; Ref: scu.650815

Scotch Whisky Association (Protection of Geographical Indications of Spirit Drinks – Judgment): ECJ 7 Jun 2018

Reference for a preliminary ruling – Protection of geographical indications of spirit drinks – Regulation (EC) No 110/2008 – Article 16(a) to (c) – Annex III — Registered geographical indication ‘Scotch Whisky’ – Whisky produced in Germany and marketed under the designation ‘Glen Buchenbach’

Citations:

C-44/17, [2018] EUECJ C-44/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 25 November 2022; Ref: scu.618084

OHIM v Borco-Marken-Import Matthiesen: ECJ 6 May 2010

(Intellectual Property) Opinion – Appeal Community trade mark Sign consisting of one letter Absolute grounds for refusal of registration Regulation (EC) No 40/94 Article 7(1)(b) Distinctive character Method of assessment Examination, based on the facts, in relation to the goods or services specified in the application for registration

Citations:

C-265/09, [2010] EUECJ C-265/09 – O

Links:

Bailii

Jurisdiction:

European

Cited by:

Opinion – OHIM v Borco-Marken-Import Matthiesen ECJ 9-Sep-2010
Appeal – Community trade mark – Application for registration of the figurative sign ‘a’ – Absolute grounds for refusal – Distinctive character – Mark consisting of a single letter . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 25 November 2022; Ref: scu.410787

Guccio Gucci v Paulo Gucci: 1991

Trade mark infringement – own name defence

Citations:

[1991] FSR 81

Jurisdiction:

England and Wales

Cited by:

Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 25 November 2022; Ref: scu.194807

Boehringer Ingelheim Ltd and others v Vetplus Ltd: CA 20 Jun 2007

The claimants appealed refusal of an order restricting comparative advertising materials for the defendant’s competing veterinary medicine. The claimant said that the rule against prior restraint applicable to defamation and other tort proceedings did not apply to trade mark infringement.
Held: The rule against prior restraint applied to actions involving reputation, but did not apply to actions alleging trade mark infringement, which protect a property right.
Jacob LJ said: ‘I think a man who makes a damaging statement involving use of another’s mark which he reasonably believes to be true at the time but which later turns out to be untrue would not be acting in accordance with an honest practice if he were not prepared to compensate the owner of the damaged mark. He can express his honestly held opinion, but unless that is on the basis that he will compensate his trade rival if it is proved to be wrong, he is not acting in accordance with an honest practice and will be adjudged to infringe.
. . Indeed the Comparative Advertising Directive (97/55/EC) rather confirms the position. It is not in dispute that a comparative advertiser will be acting in accordance with ‘honest practices’ provided he does so in accordance with the conditions of Art 3a of the Misleading Advertising Directive (84/450/EC). One of those conditions is that the advertising must not be misleading. If an advertisement is in fact misleading, however honestly the advertiser believed what he said at the time, he would be outside the Directive.’
However: ‘A man who finds his trade mark disparaged by a rival trader in a comparative advertisement can obtain a prior restraining order only if he can show that it is more likely than not that the disparagement is wrong and misleading. Unless he can do that, then his rival, both for his own commercial interests and in the interests of the public, ought to be free to say that which he honestly believes.’ The claimant had not achieved the necessary standard and his appeal failed.

Judges:

Jacob LJ

Citations:

[2007] EWCA Civ 583, Times 27-Jun-2007, [2007] FSR 29

Links:

Bailii

Statutes:

Comparative Advertising Directive (97/55/EC), Misleading Advertising Directive (84/450/EC, Control of Misleading Advertisement Regulations 1988

Jurisdiction:

England and Wales

Citing:

Cited – Bonnard v Perryman CA 2-Jan-1891
Although the courts possessed a jurisdiction, ‘in all but exceptional cases’, they should not issue an interlocutory injunction to restrain the publication of a libel which the defence sought to justify except where it was clear that that defence . .
Cited – Bestobell v Bigg 1975
The rule in Bonnard preventing prior restraint in defamation proceedings applies also in the context of an allegation of malicious falsehood. . .
Cited – American Cyanamid Co v Ethicon Ltd HL 5-Feb-1975
Interim Injunctions in Patents Cases
The plaintiffs brought proceedings for infringement of their patent. The proceedings were defended. The plaintiffs obtained an interim injunction to prevent the defendants infringing their patent, but they now appealed its discharge by the Court of . .
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Cited – O2 Holdings Ltd and Another v Hutchison 3G Ltd CA 5-Dec-2006
The court faced an allegation based on allegedly false comparative advertising, and referred to the European Court the question: ‘Where a trader, in an advertisement for his own goods or services uses a registered trade mark owned by a competitor . .
Cited – Service Corporation International plc v Channel Four Television ChD 1999
The court considered an application for an interlocutory injunction to restrain a broadcast, based on copyright. The defendant argued that this was merely an attempt to circumvent difficulties in a defamation action.
Held: Where an interim . .
Cited – Microdata v Rivendale 1991
The need to protect freedom of speech overrode the need to protect a person’s trade reputation. . .
Cited – Greene v Associated Newspapers Ltd CA 5-Nov-2004
The claimant appealed against refusal of an order restraining publication by the respondent of an article about her. She said that it was based upon an email falsely attributed to her.
Held: ‘in an action for defamation a court will not impose . .
Cited – Harrods Ltd v Harrodian School CA 3-Apr-1996
No passing off was to be found to have been shown without the public believing that the plaintiff was responsible for the defendant’s services or goods. It was not enough to show only that the defendant was somehow ‘behind’ the defendant. Millet LJ . .
Cited – Cream Holdings Limited and others v Banerjee and others HL 14-Oct-2004
On her dismissal from the claimant company, Ms Banerjee took confidential papers revealing misconduct to the local newspaper, which published some. The claimant sought an injunction to prevent any further publication. The defendants argued that the . .
Cited – Consorzio del Prosciutto di Parma v Marks and Spencer plc 1990
Italian regulations are not directly enforceable within the United Kingdom. . .

Cited by:

See Also – Boehringer Ingelheim and others v Vetplus Ltd CA 5-Jul-2007
. .
Cited – Tiscali UK Ltd v British Telecommunications Plc QBD 16-Dec-2008
The claimant internet provider claimed damages against the defendant who it said had written to its clients making false assertions about the claimant. An earlier defamation claim had been struck out, but the claimant now alleged interference with . .
Lists of cited by and citing cases may be incomplete.

Media, European, Intellectual Property, Torts – Other

Updated: 24 November 2022; Ref: scu.253536

Banier v News Group Newspapers Ltd: 1997

The court considered the nature of the fair dealing defence to an allegation of copyright infringement: ‘What amounts to fair dealing must depend on the facts of the particular case and must to a degree be a matter of impression. What is of prime importance is to consider the real objective of the party using the copyright work. Section 30 is designed to protect a critic or reviewer who may bona fide wish to use copyright material to illustrate his review or criticism.’

Citations:

[1997] FSR 812

Statutes:

Copyright Designs and Patenst Act 1988 30

Jurisdiction:

England and Wales

Cited by:

Cited – Fraser-Woodward Ltd v British Broadcasting Corporation Brighter Pictures Ltd ChD 23-Mar-2005
The claimant asserted infringement of copyright by the defendants in photographs of the family of David Beckham. The defendant admitted using the photographs but asserted that no permission was required since the use was a fair dealing.
Held: . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 24 November 2022; Ref: scu.223815

Jarrold v Houlston: 1857

The plaintiff had written a work which ‘collects and reduces into the form of a systematic course of instruction those questions which he may find ordinary persons asking in reference to the common phenomena of life, with answers to those questions, and explanations of those phenomena.’ He had provided answers to those questions out of works consulted by him and had arranged the whole ‘under certain heads and in a scientific form’.
Held: The court expressed the principle thus: ‘if, knowing that a person whose work is protected by copyright has, with considerable labour, compiled from various sources a work in itself not original, but which he has digested and arranged, you, being minded to compile a work of a like description, instead of taking the pains of searching into all the common sources, and obtaining your subject matter from them, avail yourself of the labour of your predecessor, adopt his arrangements, adopt moreover the very questions he has asked, or adopt them with but a light degree of colourable imitation, and thus save yourself pains and labour by availing yourself of the pains and labour which he has employed, that I take to be illegitimate use.’

Judges:

Page Wood V-C

Citations:

(1857) 3 KandJ 708

Jurisdiction:

England and Wales

Cited by:

Cited – Navitaire Inc v Easyjet Airline Co and Another ChD 30-Jul-2004
The claimant alleged infringement of its copyright in a software system which dealt with airline reservations. It was not said that any code had been copied, but merely that an express requirement of the defendant ordering the system was that it . .
Cited – Ravenscroft v Herbert ChD 1980
The plaintiff had written a non-fiction book entitled ‘The Spear of Destiny.’ He claimed infringement of copyright by the defendant in his book of fiction called ‘The Spear’. Both books were centered on a spear exhibited in Vienna, said to have been . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 24 November 2022; Ref: scu.220471

Joseph v National Magazine: 1959

False attribution of article to plaintiff – injunctive relief

Citations:

[1959] Ch 14

Jurisdiction:

England and Wales

Cited by:

Cited – Alan Kenneth McKenzie Clark v Associated Newspapers Ltd PatC 21-Jan-1998
The claimant was a member of Parliament and an author. The defendant published a column which was said to give the impression that the claimant had written it. It was a parody. The claim was in passing off.
Held: The first issue was whether a . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 24 November 2022; Ref: scu.214641

Hadley v Kemp: 1999

Three members of the group Spandau Ballet sought to be treated as joint authors of the songs in which copyright was claimed. The songs had been composed at home by another member of the group who was a keyboard player and singer, but then played and learned by the claimants, who added their own interpretation to the performance.
Held: Their contribution as performers was not a sufficient original contribution to the creation of the songs for them to count as joint authors.

Judges:

Park J

Citations:

[1999] EMLR 589

Jurisdiction:

England and Wales

Citing:

Cited – Godfrey v Lees 1995
The court described the test for joint authorship in a work of music: ‘What the claimant to joint authorship of a work must establish is that he has made a significant and original contribution to the creation of the work and that he has done so . .

Cited by:

Cited – Sawkins v Hyperion Records Limited ChD 5-Jul-2004
The claimant had edited ancient music scores so as to be ready for performance for the defendant. He asserted a copyright. The defendants argued that the contribution was too little to create a copyright.
Held: To succeed Dr Sawkins had to . .
Cited – Hyperion Records Ltd v Sawkins CA 19-May-2005
The claimant had developed historical musical works for performance. They were published by the defendant, by means of recordings of a performance from the scores he had prepared – so called ‘performance editions’. The many hundreds of hours . .
Cited – Hodgens v Beckingham CA 19-Feb-2003
The defendant appealed a finding of infringement in a music copyright work, ‘Young at Heart’, based on a claim of joint authorship. The claimant had delayed his claim for many years, but now sought only rights to future royalties.
Held: The . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 24 November 2022; Ref: scu.199974

Merchant Adventurers Ltd v Grew: 1973

Citations:

[1973] RPC 1

Jurisdiction:

England and Wales

Cited by:

Cited – Robin Ray v Classic FM Plc PatC 18-Mar-1998
Contractor and Client Copyrights
The plaintiff had contributed a design for a system of classifying and selecting tracks to be played on a radio station. He did so under a consultancy contract.
Held: A Joint authorship claim required that the contributor had made some direct . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 24 November 2022; Ref: scu.188607

Buchanan v Alba Diagnostics Ltd: OHCS 24 Jun 1999

The pursuer developed and patented a brake fluid safety device. They obtained an interest free loan, and as security assigned the patent and any future developments. After the enforcement of the debt, the lenders sold the assignment to the defenders who made improvements which they patented. The pursuer claimed that those improvements infringed the patent.

Judges:

Lord Hamilton

Citations:

[1999] ScotCS 159, [2000] RPC 367

Links:

Bailii, ScotC

Jurisdiction:

Scotland

Citing:

Appeal – Buchanan v Alba Diagnostics Limited IHCS 6-Feb-2001
. .

Cited by:

Appeal from – Buchanan v Alba Diagnostics Limited IHCS 6-Feb-2001
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 24 November 2022; Ref: scu.169570

Tuv (Trade Mark: Opposition): IPO 31 Dec 2020

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – State of the register
Other Issues – Treatment of foreign language words

Judges:

Ms Bethany Wheeler-Fowler

Citations:

[2020] UKIntelP o65320

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 24 November 2022; Ref: scu.661634

Oryzatein (Trade Mark: Opposition): IPO 22 Dec 2020

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Average Customer – Different consumer groups
Revocation / Proof of Use – Dates – genuine use
Revocation / Proof of Use – Variant forms of marks – use with matter added or subtracted
Revocation / Proof of Use – Variant forms of marks – stylistic / presentation differences

Judges:

Mr Arran Cooper

Citations:

[2020] UKIntelP o65120

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 24 November 2022; Ref: scu.661627

Cardland (Trade Mark: Opposition): IPO 5 Aug 2019

Section 3(6) Bad Faith – No intention to use
Section 3(6) Bad Faith – Knowledge of opponent’s use in the UK
Section 3(6) Bad Faith – Breach of agreement between the parties
Section 3(6) Bad Faith – Breach of fiduciary duty
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Other Issues – Estoppel
Other Issues – Construction of agreements / contracts
Procedural Issues – Costs – litigants in person, actual, security for
Procedural Issues – Pleadings, Strike out, Estoppel

Judges:

Mr A James

Citations:

[2019] UKIntelP o45319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 24 November 2022; Ref: scu.661025

All-Fill (Trade Mark: Opposition): IPO 5 Aug 2019

Section 3(6) Bad Faith – Knowledge of opponent’s use in the UK
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Section 5(4) Earlier Rights – Relevant date
Section 5(4) Earlier Rights – Standard of proof (evidential issues)
Other Issues – Construction of agreements / contracts
Procedural Issues – Stays / Suspensions and Cross-proceedings

Judges:

Ms A Skilton

Citations:

[2019] UKIntelP o45419

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 24 November 2022; Ref: scu.661020

Armed Forces Veterans Breakfast Club Vbc (Trade Mark: Rectification): IPO 23 Aug 2019

Other Issues – Construction of agreements / contracts
Procedural Issues – ‘Wrong’ party’s name on statutory form
Procedural Issues – Assignment problems – ownership / authority to act, late defence

Judges:

Mr M King

Citations:

[2019] UKIntelP o49519

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 24 November 2022; Ref: scu.661021

SAS Institute Inc v World Programming Ltd: CA 12 May 2020

Appeal from refusal of continuance of anti-suit injunction

Judges:

Flaux, Males, Popplewell LJJ

Citations:

[2020] EWCA Civ 599, A4/2019/2516, A4/2019/2516(A)

Links:

Bailii, udiciary

Jurisdiction:

England and Wales

Citing:

See Also – SAS Institute Inc v World Programming Ltd ChD 23-Jul-2010
The court considered the impact of the distinction drawn by Article 9(2) of TRIPS and Article 2 of the WIPO Copyright Treaty between ‘expressions’ and ‘ideas, procedures, methods of operation and mathematical concepts as such’ on domestic copyright . .
See Also – SAS Institute Inc v World Programming Ltd ECJ 29-Nov-2011
ECJ Opinion – Intellectual property – Directive 91/250/EEC – Directive 2001/29/EC – Legal protection of computer programs – Creation of various programs including the functionalities of another computer program . .
See Also – SAS Institute Inc v World Programming Ltd ChD 22-Nov-2010
The parties sought to agree the terms of a reference to the European Court of Justice. . .
See Also – SAS Institute Inc v World Programming Ltd ECJ 2-May-2012
ECJ (Grand Chamber) Intellectual property – Directive 91/250/EEC – Legal protection of computer programs – Articles 1(2) and 5(3) – Scope of protection – Creation directly or via another process – Computer . .
See Also – SAS Institute Inc v World Programming Ltd ChD 25-Jan-2013
The parties disputed the extent to which elements of the claimant’s software package could be used by the defendants. SAS had written software including its own computer language to create a data processing environment. The defendants had wanted to . .
See Also – SAS Institute Inc v World Programming Ltd CA 21-Nov-2013
The court was asked as to the extent to which the developer of a computer program may lawfully replicate the functions of an existing computer program; and the materials that he may lawfully use for that purpose. SAS had produced a computer software . .
See Also – SAS Institute Inc v World Programming Ltd ComC 13-Dec-2018
SAS sought to enforce its North Carolina judgment which was contrary to decisions already made by the UK and European Courts.
Held: Cockerill J held that the terms of the contract which purported to prohibit WPL’s conduct constituted a . .
Cited – SAS Institute Inc v World Programming Ltd (2495) ComC 25-Sep-2019
Post judgment orders . .
Appeal from – SAS Institute Inc v World Programming Ltd (Injunction) ComC 25-Sep-2019
Continuation of anti-suit injunction – refused . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 24 November 2022; Ref: scu.650724

SAS Institute Inc v World Programming Ltd: ECJ 2 May 2012

ECJ (Grand Chamber) Intellectual property – Directive 91/250/EEC – Legal protection of computer programs – Articles 1(2) and 5(3) – Scope of protection – Creation directly or via another process – Computer program protected by copyright – Reproduction of the functions by a second program without access to the source code of the first program – Decompilation of the object code of the first computer program – Directive 2001/29/EC – Copyright and related rights in the information society – Article 2(a) – User manual for a computer program – Reproduction in another computer program – Infringement of copyright – Condition – Expression of the intellectual creation of the author of the user manual

Judges:

V Skouris, P

Citations:

C-406/10, [2013] BUS LR 941, [2012] EUECJ C-406/10, [2012] WLR(D) 131

Links:

Bailii

Statutes:

Directive 91/250/EEC 1(2) 5(3)

Jurisdiction:

European

Citing:

At Chd (1) – SAS Institute Inc v World Programming Ltd ChD 23-Jul-2010
The court considered the impact of the distinction drawn by Article 9(2) of TRIPS and Article 2 of the WIPO Copyright Treaty between ‘expressions’ and ‘ideas, procedures, methods of operation and mathematical concepts as such’ on domestic copyright . .
At Chd (2) – SAS Institute Inc v World Programming Ltd ChD 22-Nov-2010
The parties sought to agree the terms of a reference to the European Court of Justice. . .
At ECJ (Opinion) – SAS Institute Inc v World Programming Ltd ECJ 29-Nov-2011
ECJ Opinion – Intellectual property – Directive 91/250/EEC – Directive 2001/29/EC – Legal protection of computer programs – Creation of various programs including the functionalities of another computer program . .

Cited by:

ECJ Judgment – SAS Institute Inc v World Programming Ltd ChD 25-Jan-2013
The parties disputed the extent to which elements of the claimant’s software package could be used by the defendants. SAS had written software including its own computer language to create a data processing environment. The defendants had wanted to . .
ECJ Judgment – SAS Institute Inc v World Programming Ltd CA 21-Nov-2013
The court was asked as to the extent to which the developer of a computer program may lawfully replicate the functions of an existing computer program; and the materials that he may lawfully use for that purpose. SAS had produced a computer software . .
See Also – SAS Institute Inc v World Programming Ltd ComC 13-Dec-2018
SAS sought to enforce its North Carolina judgment which was contrary to decisions already made by the UK and European Courts.
Held: Cockerill J held that the terms of the contract which purported to prohibit WPL’s conduct constituted a . .
See Also – SAS Institute Inc v World Programming Ltd (2495) ComC 25-Sep-2019
Post judgment orders . .
See Also – SAS Institute Inc v World Programming Ltd (Injunction) ComC 25-Sep-2019
Continuation of anti-suit injunction – refused . .
See Also – SAS Institute Inc v World Programming Ltd CA 12-May-2020
Appeal from refusal of continuance of anti-suit injunction . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 23 November 2022; Ref: scu.518368

Manjinder S Virdee (Patent): IPO 15 Mar 2011

The issue concerns whether the request to reinstate the application was filed within the time allowed by Rule 32(1) and if so should it then be reinstated under the provisions of Section 20A.
The request for substantive examination was due by 4 May 2010. However it was not filed until the following day. The Office wrote to the applicant explaining that the period could be extended via a patents form 52, if that form was filed by 4 July 2010. However the form 52 was never filed. On 6 July 2010 the applicant telephoned the Office and was informed that the application had been terminated but it may still be possible to continue with the application upon filing the patents form 14 and fee. An Official letter also issued on 6 July 2010. The letter explained that the request must be made within two months of the applicant becoming able to comply with the outstanding requirement (the filing of the form 52). The request for reinstatement was filed on 14 September 2010; an Official letter issued on 15 October 2010 stating that the request was filed outside the two month period allowed and therefore could not be allowed.
The applicant’s case for reinstatement centred on his ill health and that he overlooked the need to file the relevant forms by their due dates because of his hospital appointments. The HO found that the application for reinstatement was not filed within the time allowed by Rule 32(2)(a) and as that is a non extendable period the application must be refused.
As the application was not filed within the permitted time, the HO did not consider whether the failure to comply with Rule 28(2) and Rule 108 was unintentional

Citations:

[2011] UKIntelP o10411

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 23 November 2022; Ref: scu.458270

Timothy Adam Kieck (Patent): IPO 4 Aug 2009

The application relates to a vacuum apparatus for foodstuffs in which an enclosure with a sealing lid is provided with a vacuum pump. Various sealing configurations are disclosed, with alternative latching mechanisms, and the pump may be manual. The applicant’s own prior art, published before filing in the UK, disclosed most of the invention and the Hearing Officer decided that there was nothing in what remained which could result in a patentable invention.

Citations:

[2009] UKIntelP o23309

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 23 November 2022; Ref: scu.457442

Shanks and Unilever Plc, Unilever UK Central Resources Limited, and Unilever Nv (Patent): IPO 19 May 2009

The claimants in an employee compensation claim under section 40 sought to amend their statement of claim by way of a supplementary statement. The statement put forward an argument based on a construction of section 41(2) on calculating the amount of compensation which applied in circumstances where patents had been assigned to a connected company. The argument was that it was necessary to calculate a ‘putative benefit’ of what a reasonable company could have obtained from the patents and use this as the comparator for determining if outstanding benefit was provided and the baseline for calculating how much the employee should share in.
The defendants argued that the amendment to the statement of claim should not be allowed because the claimant’s argument was wrong in law. The hearing officer agreed, holding that the words should take their natural meaning, which was that the hypothetical ‘person’ was the same as the actual person to whom the rights were transferred, except that their position if there had been no connection with the employer needed to be considered. In particular, arguments that with a different exploitation strategy greater returns could have been made from the patent were not directly relevant, although evidence relating to this might have some relevance in determining how much would have been paid in the absence of a connection. To hold otherwise would be to allow claims for sums of money far in excess of what anyone had actually made from the patents. The amendment to the statement of claim was therefore refused.
The defendants also sought striking out of some of the claimants other arguments relating to a claimed share in proceeds from the sale of a company. Although the hearing officer found the evidence relating to these arguments currently scant, he declined to strike them out at this stage.

Citations:

[2009] UKIntelP o13809, O/138/09

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 23 November 2022; Ref: scu.457347

SAS Institute Inc v World Programming Ltd: ECJ 29 Nov 2011

ECJ Opinion – Intellectual property – Directive 91/250/EEC – Directive 2001/29/EC – Legal protection of computer programs – Creation of various programs including the functionalities of another computer program without access to the latter’s source code

Judges:

Bot AG

Citations:

C-406/10, [2011] EUECJ C-406/10

Links:

Bailii

Statutes:

Directive 91/250/EEC, Directive 2001/29/EC

Jurisdiction:

European

Citing:

At ChD (1) – SAS Institute Inc v World Programming Ltd ChD 23-Jul-2010
The court considered the impact of the distinction drawn by Article 9(2) of TRIPS and Article 2 of the WIPO Copyright Treaty between ‘expressions’ and ‘ideas, procedures, methods of operation and mathematical concepts as such’ on domestic copyright . .
Reference – SAS Institute Inc v World Programming Ltd ChD 22-Nov-2010
The parties sought to agree the terms of a reference to the European Court of Justice. . .

Cited by:

At ECJ (Opinion) – SAS Institute Inc v World Programming Ltd ECJ 2-May-2012
ECJ (Grand Chamber) Intellectual property – Directive 91/250/EEC – Legal protection of computer programs – Articles 1(2) and 5(3) – Scope of protection – Creation directly or via another process – Computer . .
At ECJ (Opinion) – SAS Institute Inc v World Programming Ltd ChD 25-Jan-2013
The parties disputed the extent to which elements of the claimant’s software package could be used by the defendants. SAS had written software including its own computer language to create a data processing environment. The defendants had wanted to . .
ECJ Opinion – SAS Institute Inc v World Programming Ltd CA 21-Nov-2013
The court was asked as to the extent to which the developer of a computer program may lawfully replicate the functions of an existing computer program; and the materials that he may lawfully use for that purpose. SAS had produced a computer software . .
See Also – SAS Institute Inc v World Programming Ltd ComC 13-Dec-2018
SAS sought to enforce its North Carolina judgment which was contrary to decisions already made by the UK and European Courts.
Held: Cockerill J held that the terms of the contract which purported to prohibit WPL’s conduct constituted a . .
See Also – SAS Institute Inc v World Programming Ltd (2495) ComC 25-Sep-2019
Post judgment orders . .
See Also – SAS Institute Inc v World Programming Ltd (Injunction) ComC 25-Sep-2019
Continuation of anti-suit injunction – refused . .
See Also – SAS Institute Inc v World Programming Ltd CA 12-May-2020
Appeal from refusal of continuance of anti-suit injunction . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 23 November 2022; Ref: scu.459581

Infabrics Ltd v Jaytex Shirt Co Ltd: 1978

Section 5(2) of the 1956 Act provided that ‘Copyright in a . . work is infringed by any person who . . imports an article . . if to his knowledge the making of that article constituted an infringement of that copyright, or would have constituted such an infringement if the article had been made in the place into which it is so imported’. The defendants imported shirts from Hong Kong. They had a design similar to one they had previously been shown by the plaintiffs. The plaintiffs sent a letter before action on 21 February 1976. It was common ground that, in the light of Van Dusen v Kritz, knowledge could be imputed to the defendants by 5 March 1975, 14 days after receipt of the letter. One of the issues was whether the defendants had had the requisite knowledge prior to receipt of the letter.
Held: The claim failed. Whitford J cited Van Dusen v Kritz, and adopted the approach of Harvey J in Albert v Hoffnung and Co Ltd (1921) 22 SR (NSW) 75 at 81 that ”Knowledge’ means . . notice of facts such as would suggest to a reasonable man that a breach of copyright law was being committed’. On that basis the defendants had not had the requisite knowledge prior to receipt of the letter.

Judges:

Whitford J

Citations:

[1978] FSR 451

Statutes:

Copyright Act 1956 5(2)

Jurisdiction:

England and Wales

Citing:

Cited – Van Dusen v Kritz 1936
Section 2(2) of the 1911 Act, which provided that ‘Copyright in a work shall also be deemed to be infringed by any person who . . (c) by way of trade exhibits in public . . any work which to his knowledge infringes copyright.’ The plaintiff owned . .

Cited by:

See Also – Infabrics Ltd v Jaytex Ltd 1985
Where a party fails to preserve documents after the commencement of proceedings, the defaulting party risks ‘adverse inferences’ being drawn for such ‘spoliation’. Because the defendant had not preserved documents affecting the quantum of damage, . .
Cited – Twentieth Century Fox Film Corp and Others v British Telecommunications Plc ChD 28-Jul-2011
The claimant rights holders sought an order to require the defendant broadband internet provider to deny access to its users to websites which were said to facilitate the distribution of infringing copies of their films. An earlier judgment had . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 November 2022; Ref: scu.442534

SAS Institute Inc v World Programming Ltd: ChD 22 Nov 2010

The parties sought to agree the terms of a reference to the European Court of Justice.

Judges:

Arnold J

Citations:

[2010] EWHC 3012 (Ch), [2011] 2 CMLR 9, [2011] FSR 12, [2011] Eu LR 303

Links:

Bailii

Statutes:

Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs

Jurisdiction:

England and Wales

Citing:

Principle judgment – SAS Institute Inc v World Programming Ltd ChD 23-Jul-2010
The court considered the impact of the distinction drawn by Article 9(2) of TRIPS and Article 2 of the WIPO Copyright Treaty between ‘expressions’ and ‘ideas, procedures, methods of operation and mathematical concepts as such’ on domestic copyright . .

Cited by:

Reference – SAS Institute Inc v World Programming Ltd ECJ 29-Nov-2011
ECJ Opinion – Intellectual property – Directive 91/250/EEC – Directive 2001/29/EC – Legal protection of computer programs – Creation of various programs including the functionalities of another computer program . .
Reference – SAS Institute Inc v World Programming Ltd CA 21-Nov-2013
The court was asked as to the extent to which the developer of a computer program may lawfully replicate the functions of an existing computer program; and the materials that he may lawfully use for that purpose. SAS had produced a computer software . .
At Chd (2) – SAS Institute Inc v World Programming Ltd ECJ 2-May-2012
ECJ (Grand Chamber) Intellectual property – Directive 91/250/EEC – Legal protection of computer programs – Articles 1(2) and 5(3) – Scope of protection – Creation directly or via another process – Computer . .
At ChD (2) – SAS Institute Inc v World Programming Ltd ChD 25-Jan-2013
The parties disputed the extent to which elements of the claimant’s software package could be used by the defendants. SAS had written software including its own computer language to create a data processing environment. The defendants had wanted to . .
See Also – SAS Institute Inc v World Programming Ltd ComC 13-Dec-2018
SAS sought to enforce its North Carolina judgment which was contrary to decisions already made by the UK and European Courts.
Held: Cockerill J held that the terms of the contract which purported to prohibit WPL’s conduct constituted a . .
See Also – SAS Institute Inc v World Programming Ltd (2495) ComC 25-Sep-2019
Post judgment orders . .
See Also – SAS Institute Inc v World Programming Ltd (Injunction) ComC 25-Sep-2019
Continuation of anti-suit injunction – refused . .
See Also – SAS Institute Inc v World Programming Ltd CA 12-May-2020
Appeal from refusal of continuance of anti-suit injunction . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 23 November 2022; Ref: scu.426449

SAS Institute Inc v World Programming Ltd: ChD 23 Jul 2010

The court considered the impact of the distinction drawn by Article 9(2) of TRIPS and Article 2 of the WIPO Copyright Treaty between ‘expressions’ and ‘ideas, procedures, methods of operation and mathematical concepts as such’ on domestic copyright law.
Held: Arnold J said: ‘Skill, judgement and labour in devising ideas, procedures, methods of operation and mathematical concepts is not protected by the copyright in a literary work. What is protected by copyright in a literary work is the skill, judgement and labour in devising the form of expression of the literary work.’
As to the test of whether there had been any ‘substantial part of a literary work, Arnold J said: ‘it is important to be clear as to the basis upon which a compilation of unprotectable subject-matter can be protected as a copyright work. As can be seen from Article 2(5) of the Berne Convention, Article 10(2) of TRIPS and Article 5 of the WIPO Copyright Treaty, compilations are protected (whether or not the items compiled are protected) which ‘by reason of the selection or arrangement of their contents constitute intellectual creations’. Similarly, EU legislation adopts the test of ‘intellectual creation’ for the originality of computer programs (Article 1(3) of the Software Directive), databases for the purposes of copyright (Article 3(1) of [the Database Directive]) and photographs (Article 6 of Council Directive 93/98/EEC of 29 October 1993 harmonizing the terms of protection of copyright and certain related rights, now codified as Directive 2006/116/EC). It is now clear from [Case C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-0000] at [31]-[48] that there will only be reproduction of a substantial part of a literary work, including a compilation, where what has been reproduced represents the expression of the intellectual creation of the author of that literary work.’

Judges:

Arnold J

Citations:

[2011] RPC 1, [2010] ECDR 15, [2010] EWHC 1829 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – Allen v Bloomsbury Publishing Plc and Another ChD 14-Oct-2010
The claimant sought damages alleging breach of copyright by the defendant author saying she had copied large parts of the claimant’s work in her book ‘Harry Potter and the Goblet of Fire’. The defendant now sought summary judgment, saying the action . .
Cited – Forensic Telecommunications Services Ltd v West Yorkshire Police and Another ChD 9-Nov-2011
The claimant alleged infringement by the defendant of assorted intellectual property rights in its database. It provided systems for recovering materials deleted from Nokia mobile phones.
Held: ‘the present case is concerned with a collection . .
Cited – The Newspaper Licensing Agency Ltd and Others v Meltwater Holding Bv and Others ChD 26-Nov-2010
The claimant newspapers complained of the spidering of the web-sites and redistribution of the materials collected by the defendants to its subscribers. The defendants including the Public Relations Consultants Association (PRCA) denied that they . .
Principle judgment – SAS Institute Inc v World Programming Ltd ChD 22-Nov-2010
The parties sought to agree the terms of a reference to the European Court of Justice. . .
At ChD (1) – SAS Institute Inc v World Programming Ltd ECJ 29-Nov-2011
ECJ Opinion – Intellectual property – Directive 91/250/EEC – Directive 2001/29/EC – Legal protection of computer programs – Creation of various programs including the functionalities of another computer program . .
At ChD (1) – SAS Institute Inc v World Programming Ltd ChD 25-Jan-2013
The parties disputed the extent to which elements of the claimant’s software package could be used by the defendants. SAS had written software including its own computer language to create a data processing environment. The defendants had wanted to . .
At ChD (1) – SAS Institute Inc v World Programming Ltd CA 21-Nov-2013
The court was asked as to the extent to which the developer of a computer program may lawfully replicate the functions of an existing computer program; and the materials that he may lawfully use for that purpose. SAS had produced a computer software . .
At Chd (1) – SAS Institute Inc v World Programming Ltd ECJ 2-May-2012
ECJ (Grand Chamber) Intellectual property – Directive 91/250/EEC – Legal protection of computer programs – Articles 1(2) and 5(3) – Scope of protection – Creation directly or via another process – Computer . .
See Also – SAS Institute Inc v World Programming Ltd ComC 13-Dec-2018
SAS sought to enforce its North Carolina judgment which was contrary to decisions already made by the UK and European Courts.
Held: Cockerill J held that the terms of the contract which purported to prohibit WPL’s conduct constituted a . .
See Also – SAS Institute Inc v World Programming Ltd (Injunction) ComC 25-Sep-2019
Continuation of anti-suit injunction – refused . .
See Also – SAS Institute Inc v World Programming Ltd (2495) ComC 25-Sep-2019
Post judgment orders . .
See Also – SAS Institute Inc v World Programming Ltd CA 12-May-2020
Appeal from refusal of continuance of anti-suit injunction . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 23 November 2022; Ref: scu.421059

BALI Trade Mark: 1969

Section 11 and its predecessors were designed not so much for the protection of other traders in the use of their marks or to protect their reputation but for the protection of the public. The test of confusion in section 11 is not the same as the test for passing off. Lord Upjohn also said: ‘It is not necessary in order to find that a mark offends against section 11 to prove that there is an actual probability of deception leading to a passing off or (I add) an infringement action. It is sufficient if the result of registration of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt, but the court has to be satisfied not merely that there is a possibility of confusion; it must be satisfied that there is a real tangible danger of confusion if the mark which it is sought to register is put on the register.’

Judges:

Lord Upjohn

Citations:

[1969] RPC 472

Statutes:

Trade Marks Act 1938 11

Jurisdiction:

England and Wales

Cited by:

Cited – Hunt-Wesson Inc v Chocosuise CA 2-Jul-1998
The applicant had sought registration of the ‘Swiss Miss’ mark. Objection was raised on the ground that it was misleading in suggesting any connection with Switzerland.
Held: The appeal succeeded as to some uses, but not in general. The court . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 November 2022; Ref: scu.258730

Origins Natural Resources Inc v Origin Clothing Ltd: 1995

Jacobs J considered the trade marks regulation of double registrations: ‘There is no provision of the Trade Marks Act 1938 which prevents the registration of a mark twice for the same goods by the same proprietor. There is no reason in public policy why that should not happen under the old Act, provided of course that the two registrations were held by the same proprietor. That was bound to be the case if the marks were associated.
The … way in which it was said to be implicit under the old Act that two identical marks could not be registered for the same goods was under section 26. The argument was that a man could keep registering the same mark, thereby avoiding the effect of section 26(1)(b) (non-use for five years). Again it does not seem to me that that provision shows anything of the kind. If a man were to keep registering the same mark with no genuine intention of using it then he would lose his mark under section 26(1)(a) or (b). If, on the other hand, a man had registered a mark with a bona fide intention to use it and found himself unable to use it for a number of years so that the mark was removable under section 26(1)(b) but he still had genuine plans to use the mark then I see no reason why he should not apply again, thereby avoiding the effect of section 26(1)(b).
In practice for very many years many people have been applying for registered trade marks which do cover the same goods as earlier marks registered by them, the mark being the same in both cases. They have done this for the sensible reason that they wanted to upgrade a Part B registration to a Part A registration and sometimes simply because they put in marks with wider specifications of goods. No harm to the public interest in any way has resulted from their doing so.’

Judges:

Jacobs J

Citations:

[1995] FSR 280

Statutes:

Trade Marks Act 1938 26

Jurisdiction:

England and Wales

Cited by:

Cited – Cussons (New Zealand) Pty Limited v Unilever Plc and others PC 20-Nov-1997
(New Zealand) The defendants appealed against an interlocutory injunction restraining them from use of a trade mark which was said to be infringing. The mark had not been used and was vulnerable to being removed, and Cussons applied for the removal . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 November 2022; Ref: scu.258728

Re Deeley’s Patent: 1895

A revocation of a patent for which the Attorney General’s fiat has been obtained is an action taken on behalf of the public at large.

Citations:

[1895] 1 Ch 687

Jurisdiction:

England and Wales

Cited by:

Cited – Shoe Machinery Company v Cutlan 1896
The patentee had succeeded at trial in obtaining a declaration of validity and a determination of infringement, and, in subsequent proceedings, the infringer sought to challenge the validity of the patent by raising a fresh argument based on . .
Cited – Special Effects Ltd v L’Oreal Sa and Another CA 12-Jan-2007
The defendants had opposed the grant of the trade mark which they were now accused of infringing. The claimants said that having failed at the opposition stage, they were now estopped from challenging the validity of the mark.
Held: It was not . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 November 2022; Ref: scu.247699

Ranbaxy UK Ltd and Another v Warner-Lambert Company: PatC 12 Oct 2005

Judges:

The Honourable Mr Justice Pumfrey

Citations:

[2005] EWHC 2142 (Patents)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Appeal from – Ranbaxy (UK) Ltd v Warner-Lambert Company CA 28-Jun-2006
Cross appeals from refusal of declaration of non-infringement and of invalidity of patent for lack of novelty and obviousness. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 November 2022; Ref: scu.231064

De Garis v Nevill Jeffress Pidler Pty Ltd: 1990

(High Court of Australia) The court considered the defence of criticism and review to a charge of coyright infringement.
Held: The court should start with a dictionary definition.

Judges:

Beaumont J

Citations:

(1990) 18 IPR 292

Jurisdiction:

Australia

Cited by:

Cited – Fraser-Woodward Ltd v British Broadcasting Corporation Brighter Pictures Ltd ChD 23-Mar-2005
The claimant asserted infringement of copyright by the defendants in photographs of the family of David Beckham. The defendant admitted using the photographs but asserted that no permission was required since the use was a fair dealing.
Held: . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 November 2022; Ref: scu.223813

Cooper v Stephens: 1895

Citations:

[1895] 1 Ch 567

Jurisdiction:

England and Wales

Cited by:

Cited – Robin Ray v Classic FM Plc PatC 18-Mar-1998
Contractor and Client Copyrights
The plaintiff had contributed a design for a system of classifying and selecting tracks to be played on a radio station. He did so under a consultancy contract.
Held: A Joint authorship claim required that the contributor had made some direct . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 November 2022; Ref: scu.188605

Hodgkinson and Corby Ltd and Another v Wards Mobility Services Ltd: ChD 3 Aug 1994

Proof of the deception of some purchasers is an essential pre-requisite of the tort of passing off.

Citations:

Ind Summary 17-Oct-1994, Times 03-Aug-1994

Jurisdiction:

England and Wales

Cited by:

See Also – Hodgkinson and Corby Ltd and Another v Wards Mobility Services Ltd ChD 6-Nov-1996
The claimants brought a claim in passing-off first obtaining an interim injunction but then failing at trial. The defendants then claimed under the undertaking in damages given. The claimants now sought to say that the injunction could have been . .
See Also – Hodgkinson and Corby Ltd (T/a Raymar) v Wards Mobility Services Ltd CA 27-Oct-1997
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 22 November 2022; Ref: scu.81415

Chefuber (Trade Mark: Opposition): IPO 12 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – State of the register
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Sections 5(1), 5(2) and 5(3) Dilution Cases – Unfair disadvantage of distinctive character
Section 5(4) Earlier Rights – Added value (circumstances where S.5(4)(a) offers an advantageous position in comparison to S.5(2)

Judges:

Mr O Morris

Citations:

[2019] UKIntelP o46619

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 22 November 2022; Ref: scu.661027

Maxivac (Trade Mark: Opposition): IPO 15 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – Effect of concurrent use

Judges:

Ms S Wilson

Citations:

[2019] UKIntelP o47719

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 22 November 2022; Ref: scu.661047

Tech Nation (Trade Mark: Opposition): IPO 18 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Other Issues – Colour issues
Revocation / Proof of Use – Dates – genuine use

Judges:

Mrs B Hedley

Citations:

[2019] UKIntelP o41719

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 22 November 2022; Ref: scu.661012

Hunt-Wesson Inc v Chocosuise: CA 2 Jul 1998

The applicant had sought registration of the ‘Swiss Miss’ mark. Objection was raised on the ground that it was misleading in suggesting any connection with Switzerland.
Held: The appeal succeeded as to some uses, but not in general. The court had a discretion to amend the registration, but should not do so in the absence of the views of the Trade Marks Registry, and the issue was therefore remitted.

Judges:

Peter Gibson LJ, Schiemann LJ, Mantell LJ

Citations:

[1998] EWCA Civ 1140

Statutes:

Trade Marks Act 1938 9

Jurisdiction:

England and Wales

Citing:

Cited – GE Trade Mark HL 1973
A trade mark must be ‘distinctive’, it must be recognisable by a buyer of goods to which it has been affixed as indicating that they are of the same origin as other goods which bear the mark and whose quality has engendered goodwill. Trade Marks . .
Cited – Re Jellinek’s Application 1946
Romer J discussed the test to be applied under section 11: ‘[Counsel] submitted to me the following propositions with regard to this section: (1) In all applications for registration of a trade mark the onus is on the applicant to satisfy the . .
Cited – BALI Trade Mark 1969
Section 11 and its predecessors were designed not so much for the protection of other traders in the use of their marks or to protect their reputation but for the protection of the public. The test of confusion in section 11 is not the same as the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 20 November 2022; Ref: scu.144619

Reehut (Trade Mark: Opposition): IPO 31 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link

Judges:

Mrs L White

Citations:

[2019] UKIntelP o44719

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 November 2022; Ref: scu.661003

Greens of Highgate (Trade Mark: Opposition): IPO 12 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Issues To Do With Goods / Services – Goods v retail services
Sections 5(1), 5(2) and 5(3) Distinctive Character of Earlier Trade Mark – Any unusual issues
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – State of the register

Judges:

Ms E Venables

Citations:

[2019] UKIntelP o47019

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 November 2022; Ref: scu.661036

Laure (Trade Mark: Opposition): IPO 16 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Revocation / Proof of Use – Dates – genuine use
Revocation / Proof of Use – Variant forms of marks – stylistic / presentation differences
Revocation / Proof of Use – Partial revocation – arriving at a fair description of goods / services

Judges:

Ms S Wilson

Citations:

[2019] UKIntelP o48019

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 November 2022; Ref: scu.661041

Uwell (Trade Mark: Opposition): IPO 23 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of
Sections 5(1), 5(2) and 5(3) Average Customer – Consumer attention levels
Sections 5(1), 5(2) and 5(3) Average Customer – Purchasing process
Sections 5(1), 5(2) and 5(3) Distinctive Character of Earlier Trade Mark – Any unusual issues

Judges:

Mr C Bowen

Citations:

[2019] UKIntelP o42419

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 November 2022; Ref: scu.661015

Credit Key (Trade Mark: Opposition): IPO 30 Jan 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Identical marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements

Citations:

[2019] UKIntelP o06619

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 November 2022; Ref: scu.637342