Arsenal Football Club Plc v Reed: ChD 26 Feb 2014

The parties had settled an intellectual property infringement action subject to terms. The defendant now sought an order to reflect what he said were breaches of the agreement by the claimants, insofar as they had promised to supply goods at specified discounts.

HHJ Pelling QC
[2014] EWHC 781 (Ch)
Bailii

Intellectual Property

Updated: 01 December 2021; Ref: scu.522664

Sartorius Lab Instruments Gmbh and Co. Kg v Office For Harmonisation In The Internal Market (Trade Marks And Designs): ECFI 26 Feb 2014

ECFI Community trade mark – Application for Community trade mark consisting of an arc of yellow circle at the bottom of a screen – Absolute ground for refusal – Lack of distinctive character – Article 7, paragraph 1 b) of Regulation (EC) No 207 / 2009

Frimodt S. Nielsen, P
T-331/12, [2014] EUECJ T-331/12
Bailii
Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 01 December 2021; Ref: scu.522472

Magmatic Ltd v PMS International Ltd: CA 28 Feb 2014

The parties disputed an alleged infringement of a registered design in the Trunki, a child’s suitcase designed to be ridden on, and other infringements of copyright in the packaging. PMS now appealed on the issue of whether the defendant’s Kiddee Case infringed the CRD.
Held: The appeal succeeded. The judge had made two errors. First the CRD images were not ‘simple line drawings’, but ‘three dimensional images which . . show the effect of light upon [the suitcase’s] surfaces’, and ‘Further and importantly, the suitcase looks like a horned animal with a nose and a tail, and it does so both because of its shape and because its flanks and front are not adorned with any other imagery which counteracts or interferes with the impression the shape creates. As Mr Vanhegan submits, the CRD is, in that sense, relatively uncluttered and it conveys a distinct visual message. Here then the first of the judge’s errors can be seen: he failed to appreciate that this is a design for a suitcase which, considered as a whole, looks like a horned animal.’ The CRD images were ‘shown in monochrome’, and the design claimed was ‘not limited to particular colours’, so that ‘PMS cannot point to the colour of the Kiddee Case as being a point of distinction’, and ‘That is not the end of the analysis, however, because each of the representations shows a distinct contrast in colour between the wheels and the strap, on the one hand, and the rest of the suitcase, on the other. I have given anxious consideration to whether this is simply an artefact of the computer generation process or a visual cue to indicate that the wheels and the strap are each separate components. However, I do not find either of these alternative explanations convincing. The clasps are also separately functioning components and they are not shown in a contrasting colour and it seems to me that the wheels could perfectly well have been shown and depicted as separate components in the same colour as the rest of the body. Moreover, depicted as they are and standing as they do at the four corners of the animal, the wheels are, to my eye, a rather striking aspect of the design as a whole.’
The second error was the judge’s failure to allow for ‘the colour contrast between the wheels and the body of the CRD’. This contrast as ‘a fairly striking feature of the CRD’ which was ‘simply not present in the accused designs’, and which ‘was another matter which the judge ought to have taken into account in carrying out the global comparison.’

Moses, Black, Kitchin LJJ
[2014] ECDR 20, [2014] RPC 24, [2014] EWCA Civ 181
Bailii
Council Regulation (EC) No 6/2002
England and Wales
Citing:
At PatCMagmatic Ltd v PMS International Ltd PatC 11-Jul-2013
The claimant manufactured and sold the ‘Trunki’ a child’s ride on suitcase. The defendant imported and sold a similar product. Claims were now made alleging infringement of (i) Community Registered Design, (ii) design rights in a number of designs . .
ApprovedProcter and Gamble Company v Reckitt Benckiser (UK) Ltd CA 10-Oct-2007
The claimant alleged infringement of its design right by the defendants’ Air-Wick product. The court considered the approach necessary in asking whether a European Community design had been infringed.
Held: Looking at an article for this . .

Cited by:
At CAPMS International Group Plc v Magmatic Ltd SC 9-Mar-2016
Overall Impression of Design is a Judgment
The respondent had alleged infringement of its registered design in the ‘Trunki’, a ride-on children’s suitcase. At first instance, the judge had held that the surface decorations were to be ignored. On appeal it had been held that the judge had . .
Main CAMagmatic Ltd v PMS International Ltd CA 10-Apr-2014
Post appeal assessments as to costs etc for final order. . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 December 2021; Ref: scu.521936

Svensson And Others v Retriever Sverige Ab: ECJ 13 Feb 2014

ECJ Reference for a preliminary ruling – Approximation of laws – Copyright and related rights – Directive 2001/29/EC – Information society – Harmonisation of certain aspects of copyright and related rights – Article 3(1) – Communication to the public – Meaning – Internet links (‘clickable links’) giving access to protected works

L Bay Larsen, P
[2014] EUECJ C-466/12
Bailii
Directive 2001/29/EC
European

Media, Intellectual Property

Updated: 01 December 2021; Ref: scu.521840

Merck Canada Inc. (Order Of The Court): ECJ 13 Feb 2014

ECJ Preliminary ruling – Concept of national jurisdiction within the meaning of Article 267 TFEU – Necessario Arbitral Tribunal – Admissibility – Regulation (EC) No 469/2009 – Article 13 – Supplementary protection certificate for medicinal products – Validity of certificate – Maximum Exclusivity Period

C-555/13, [2014] EUECJ C-555/13
Bailii
European

Intellectual Property

Updated: 30 November 2021; Ref: scu.521833

Zymogenetics, Inc, Cindy A Sprecher, L Joseph Kuijper, Maria M Dasovich, J Francis Grant, Angela K Hammond, E Julia Novak, Jane A Gross, R Stacey Dillon and Rolf E Kuestner (Patent): IPO 19 Jun 2013

IPO An uncontested application was filed by Zymogenetics, Inc. under rule 10(2) of the Patents Rules 2007. As a result, it was found that Rolf E. Kuestner should be mentioned as a joint inventor along with Cindy A. Sprecher, L. Joseph Kuijper, Maria M. Dasovich, J. Francis Grant, Angela K. Hammond, E. Julia Novak, Jane A. Gross and R. Stacey Dillon in the granted patent for the invention and directed that an addendum slip mentioning him as a joint inventor be prepared for the granted patent for the invention.

A R Busell
[2013] UKIntelP o25613, O/256/13
Bailii
Patents Act 1977 13(1)
England and Wales

Intellectual Property

Updated: 30 November 2021; Ref: scu.511217

Sean Sweeney, Graham Edward Camps v Macmillan Publishers Limited, Danis Rose: ChD 22 Nov 2001

The claimants were trustees of the estate of James Joyce, and complained at the publication of unpublished parts of the work Ulysses in a readers edition by the defendants. Published works are protected for fifty years after the author’s death, but unpublished works received protection for fifty years after the work was created. A European Directive had extended the protection to 70 years.
Held: The work was complex, with many amendments and an unsettled form. The defendant had done much preparatory work before publication, and that work had begun before the copyright was revived by the new regulations. Had he acquired his own copyright so that the original Joycean copyright was not revived by the new regulations. The claimants suggested that it was absurd to make a substantial distinction between the work as published by Joyce, and the unpublished texts from which that work was gathered. The regulations protected works where arrangements for publication had been made before the regulations came into effect. The term ‘arrangements for publication’ should be construed not too widely, and the defendant’s editorial activities were not sufficient to give him protection. The defendants sought a compulsory licence under regulation 24. In this case they had given sufficient notice to be entitled to a licence. The claimants sought damages for passing off, claiming that the work was so different from Joyce’s own as to be misleading. The claim was unusual but failed.

Mr Justice Lloyd
[2001] EWHC Ch 460
Bailii
Directive, 93/98/EEC, Duration of Copyright and Rights in Performances Regulations 1995 (SI 1995/3297) 24
England and Wales
Citing:
CitedInterlego AG v Tyco Industries Inc PC 5-May-1988
How much new material for new copyright
(Hong Kong) Toy building bricks were manufactured by Lego in accordance with engineering drawings made for that purpose. One issue was whether new drawings made since 1972, altering the original drawings in various minor respects but added new . .
CitedLA Gear Inc v Hi-Tec Sports plc 1992
The court considered at what point a work would constituted a finished work, and how this related to the copyright in earlier forms of the work: ‘If, in the course of producing a finished drawing, the author produces one or more preliminary . .
CitedCala Homes (South) Ltd and Others v Alfred Mcalpine Homes East Ltd (No 2) ChD 30-Oct-1995
A plaintiff may claim damages under section 97(2) in addition to claiming an account of profits, as his primary remedy. A person claiming joint rights in the copyright as author must contribute to the ‘production’ of the work and create something . .
CitedRobin 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 . .
CitedBlack v Murray 1870
. .
CitedTaittinger and Others v Allbev Ltd and Another CA 30-Jun-1993
An injunction was granted to restrain the labelling of a sparkling fruit (Elderflower Champagne) non-alcoholic drink made in Surrey to include the word ‘champagne’. The trial judge had held that all the necessary ingredients for a successful passing . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property, Media, European

Updated: 30 November 2021; Ref: scu.166928

Bayerische Motoren Werke Ag (Bmw) v Premier Alloy Wheels (Uk) Ltd and Others: ChD 8 Jun 2018

Application for a search order, interim injunction and related relief. The claimant alleged the manufacture of fake BMW wheels by the defendant.
Mr Justice Henry Carr gave his reasons for granting a search order, interim injunction and related relief. He summarised the criteria: ‘A search and seizure order is an exceptional form of relief. The conditions that need to be satisfied are as follows. First, there must be a strong prima facie case of a civil cause of action. Suspicion is not enough; nor is it enough that there is a serious question to be tried. Second, the danger to the applicant to be avoided by the grant of the order must be serious, and if the order is to forestall the destruction of evidence, the evidence must be of major importance. Third, there must be clear evidence that the respondent has incriminating documents or articles in its possession. Fourth, there must be a real possibility of the destruction or removal of evidence. Fifth, the harm likely to be caused by the execution of the order on the respondent and his business affairs must not be out of proportion to the legitimate object of the order.’

Henry Carr J
[2018] EWHC 1713 (Ch)
Bailii
England and Wales
Cited by:
CitedCalor Gas Ltd v Chorley Bottle Gas Ltd and Another QBD 22-Jul-2020
Search and Seizure – Concerns for Public Safety
The claimant supplied branded liquid gas containers and the gas, on condition that only its liquid gas would be used within the containers. The sought a search and seizure order against the defendants, saying that the public health and safety risks . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 30 November 2021; Ref: scu.619885

Entecon Entecon Bagflow Entecon Bin Flow Entecon Easishift: IPO 9 Apr 2008

(Trade Mark: Revocation) The registered proprietor filed evidence to show that the firm of Entecon Limited was owned by a predecessor in business until the end of 2003. The proprietor filed sufficient-evidence from that period to convince the Hearing Officer that there had been genuine use of the marks ENTECON, ENTECON BAGFLOW and ENTECON EASISHIFT up to that date. The registered proprietor also stated that much of the evidence of use of the marks in suit is held by Entecon UK Limited, the applicant for revocation. The applicant has not challenged the proprietor’s evidence.
During 2003 the marks in suit were assigned to the registered proprietor’s predecessor by Entecon Limited. In 2004 Entecon Limited went into administration and was sold to Entecon UK Limited. However, the marks in suit remained in the ownership of the registered proprietor’s predecessor.
As noted above the registered proprietor filed sufficient evidence to protect the registrations of ENTECON, ENTECON BACFLOW and ENTECON EASISHIFT and the revocation action was dismissed in respect of these marks. In relation to ENTECON BINFLOW the Hearing Officer considered that the BINFLOW element was descriptive and non-distinctive and that the proved user of the distinctive element ENTECON also protected this registration. Revocation therefore failed in respect of all four registrations.

[2008] UKIntelP o10208
Bailii
England and Wales

Intellectual Property

Updated: 30 November 2021; Ref: scu.456995

Comic Enterprises Ltd v Twentieth Century Fox Film Corp: ChD 7 Feb 2014

Action for infringement of United Kingdom registered trade mark

Roger Wyand QC HHJ
[2014] EWHC 185 (Ch)
Bailii
England and Wales
Citing:
See AlsoComic Enterprises Ltd v Twentieth Century Fox Film Corp PCC 22-Mar-2012
Birss QC HHJ explained his comments in ALK-Abello regarding the criteria for transerring a case to Chancery Division: ’21. This case is one in which access to justice for SMEs is raised squarely. It is the key element of Miss McFarland’s submissions . .

Cited by:
Appeal fromComic Enterprises Ltd v Twentieth Century Fox Film Corporation CA 8-Feb-2016
The proceedings concern a dispute about the right to use the word ‘glee’ as the name for a TV drama series. . .
See AlsoComic Enterprises Ltd v Twentieth Century Fox Film Corporation CA 25-May-2016
The court was asked as to the validity of certain trade marks. . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 29 November 2021; Ref: scu.521242

Cosmetic Warriors Ltd and Another v Amazon.Co.Uk Ltd and Another: ChD 10 Feb 2014

The claimants sold cosmetics under the brand name ‘Lush’. They alleged trade mark infringement by the defendant website. The claimants declined to market their products through the website, and the defendants used the mark to catch searches and direct them to competing products.

John Baldwin QC
[2014] EWHC 181 (Ch)
Bailii
England and Wales

Intellectual Property

Updated: 29 November 2021; Ref: scu.521168

Leidseplein Beheer Bv v Red Bull Gmbh: ECJ 6 Feb 2014

ECJ Request for a preliminary ruling – Trade marks – Directive 89/104/EEC – Rights conferred by a trade mark – Trade mark with a reputation – Protection extended to non-similar goods or services – Use by a third party, without due cause, of a sign identical with or similar to the trade mark with a reputation – Definition of ‘due cause’

A. Tizzano, P
C-65/12, [2014] EUECJ C-65/12
Bailii
Directive 89/104/EEC
European

Intellectual Property

Updated: 29 November 2021; Ref: scu.521188

Martin Blomqvist v Rolex Sa: ECJ 6 Feb 2014

ECJ Reference for a preliminary ruling – Regulation No 1383/2003 – Measures to prevent counterfeit or pirated goods being placed on the market – Article 2 – Scope of the Regulation – Private sale by internet of a counterfeit watch from a non – member country to an individual residing in a Member State – Seizure of the watch by the customs authorities on entry into the territory of the Member State – Lawfulness of seizure – Conditions – Conditions relating to infringement of intellectual property rights – Directive 2001/29/EC – Article 4 – Distribution to the public – Directive 2008/95/EC – Article 5 – Regulation (EC) No 207/2009 – Article 9 – Use in the course of trade

R. Silva de Lapuerta, P
C-98/13, [2014] EUECJ C-98/13
Bailii
Regulation No 1383/2003, Directive 2001/29/EC, Directive 2008/95/EC, Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 29 November 2021; Ref: scu.521189

Worbey and Another v Elliott: SCS 6 Feb 2014

‘the pursuers seek an accounting by the defender of his intromissions with the receipts obtained by him from two social networking applications (‘apps’), and payment of such sum as may be found to be due to them following that accounting. In the alternative, they seek payment of a sum estimated to represent the sum due to them.’

Lord Tyre
[2014] ScotCS CSOH – 19
Bailii

Scotland, Intellectual Property, Damages

Updated: 29 November 2021; Ref: scu.521148

Societe Des Produits Nestle Sa v Cadbury Uk Ltd: ChD 17 Jan 2014

The court was asked ‘In what circumstances can a trader secure a perpetual monopoly in the shape of a product by registering it as a trade mark? ‘
Held: the hearing officer was incorrect to find that the Trade Mark was inherently distinctive in relation to ‘cakes’ and ‘pastries’. However, in relation to the issues of acquired distinctiveness and necessity to obtain a technical result Arnold J concluded that it was necessary to seek clarification of the law from the Court of Justice of the European Union in order to determine the appeals.

Arnold J
[2014] EWHC 16 (Ch), [2014] ETMR 17, [2014] FSR 28
Bailii
England and Wales
Cited by:
Reference fromSociete Des Produits Nestle v Cadbury UK Ltd ECJ 16-Sep-2015
ECJ (Judgment) Reference for a preliminary ruling – Trade marks – Directive 2008/95/EC – Article 3(3) – Concept of ‘distinctive character acquired through use’ – Three-dimensional mark – Kit Kat four finger . .
At Chd (1)Societe Des Produits Nestle Sa v Cadbury UK Ltd ChD 20-Jan-2016
The parties disputed the registration as a trade mark of three dimensional signs representing specific shapes of chocolate biscuit products.
Held: The objection by Cadbury’s succeeded. . .
At ChD (1)Societe Des Produits Nestle Sa v Cadbury Uk Ltd CA 17-May-2017
Distinctive Character through Use not established
Nestle had sought to register as a trade mark, a three dimensional representation of their four fingered Kit Kat chocolate biscuit. Cadbury objected, and the hearing officer rejected the claim saying that the mark had not acquired a distinctive . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 29 November 2021; Ref: scu.520826

Personnel Hygiene Services Ltd and Another v Rentokil Initial UK Ltd (T/A Initial Medical Services) and Another: CA 29 Jan 2014

‘Initial’s appeal is against two orders . . By the first order . . the judge enjoined Initial: (i) until 15 January 2013, from making use of the claimants’ confidential information or documents as defined in the order with a view to obtaining orders for goods or services from customers of the claimants; and (ii) until 15 July 2012, by way of ‘springboard’ relief, from contacting particular customers identified in the Schedules to the order for the supply to them of services they had received, or were receiving, under contracts with the claimants.’

Rimer, Lewsion, Briggs LJJ
[2014] EWCA Civ 29
Bailii
England and Wales

Intellectual Property

Updated: 29 November 2021; Ref: scu.520807

Sintax Trading v Maksu ja Tolliameti Pohja maksu ja tollikeskus (Advocate Generals Opinion): ECJ 28 Jan 2014

ECJ Customs action against goods suspected of infringing intellectual property rights – Regulation (EC) No 1383/2003 – Article 13(1) – Competent authority to conduct proceedings to determine whether an intellectual property right has been infringed – Competence of the customs authorities to initiate proceedings to determine whether an intellectual property right has been infringed – Article 47 of the Charter of Fundamental Rights of the European Union

Cruz Villalon AG
C-583/12, [2014] EUECJ C-583/12
Bailii
Regulation (EC) No 1383/2003 13(1)

European, Customs and Excise, Intellectual Property

Updated: 29 November 2021; Ref: scu.520799

Synthon v Merz Pharma Gmbh and Co Kg: ECJ 28 Jul 2011

ECJ Patent law – Medicinal products – Supplementary protection certificate for medicinal products – Regulation (EEC) No 1768/92 – Article 2 – Scope – Safety and efficacy testing laid down by Directive 65/65/EEC – Absence – Invalidity of the certificate

J.N. Cunha Rodrigues, P
C-195/09, [2011] EUECJ C-195/09, [2012] RPC 3
Bailii
Regulation (EEC) No 1768/92 2, Directive 65/65/EEC
Citing:
Statement of QuestionsSynthon v Merz Pharma Gmbh and Co Kg ECJ 15-Aug-2009
ECJ Statement of questions referred (Patents) . .
OpinionSynthon v Merz Pharma Gmbh and Co Kg ECJ 31-Mar-2011
ECJ Opinion – Regulation No 1768/92 – Supplementary protection certificate – Conditions for its grant – Concept of first marketing authorisation . .

Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 29 November 2021; Ref: scu.520762

Synthon v Merz Pharma Gmbh and Co Kg: ECJ 31 Mar 2011

ECJ Opinion – Regulation No 1768/92 – Supplementary protection certificate – Conditions for its grant – Concept of first marketing authorisation

Mengozzi AG
[2011] EUECJ C-195/09 – O
Bailii
Regulation No 1768/92
Citing:
Statement of questionsSynthon v Merz Pharma Gmbh and Co Kg ECJ 15-Aug-2009
ECJ Statement of questions referred (Patents) . .

Cited by:
OpinionSynthon v Merz Pharma Gmbh and Co Kg ECJ 28-Jul-2011
ECJ Patent law – Medicinal products – Supplementary protection certificate for medicinal products – Regulation (EEC) No 1768/92 – Article 2 – Scope – Safety and efficacy testing laid down by Directive 65/65/EEC – . .

Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 29 November 2021; Ref: scu.520761

August Storck v OHIM (2Good): ECFI 25 Sep 2015

ECJ Judgment – Community trade mark – Application for Community word mark 2good – Mark consisting of an advertising slogan – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009

T-366/14, [2015] EUECJ T-366/14, ECLI:EU:T:2015:697
Bailii
Regulation (EC) No 207/2009 7(1)(b)
European

Intellectual Property

Updated: 29 November 2021; Ref: scu.552736

Storck v OHIM (Forme D’Une Souris En Chocolat): ECFI 17 Dec 2010

ECFI Community trade mark – Application for three-dimensional CTM – Shape of a chocolate mouse – Absolute ground for refusal – Lack of distinctive character – Article 7, paragraph 1 b) of Regulation (EC) No 40/94 [now Article 7, paragraph 1 b) of Regulation (EC) No 207/2009] – Human Rights Defence.

T-13/09, [2010] EUECJ T-13/09
Bailii
European

Intellectual Property

Updated: 29 November 2021; Ref: scu.427729

Dicks v Yates: ChD 1881

A newspaper headline may enjoy copyright protection.

(1881) 18 Ch 76
England and Wales
Cited by:
CitedThe Newspaper Licensing Agency Ltd and Others v Meltwater Holding Bv and Others CA 27-Jul-2011
The defendant companies provided media monitoring services, automatically searching web-sites for terms of interest. The claimant newspapers operated a licensing system through the first claimant permitting the re-use of the content on its members . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 28 November 2021; Ref: scu.470966

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 needed a licence for the purpose.
Held: The members of PRCA required licences from the claimants in order lawfully to receive and/or use the Meltwater News Service: (1) The headlines to the various articles reproduced in Meltwater News are capable of being literary works independently of the article to which they relate.
(2) The extracts from the articles reproduced in Meltwater News with or without the headline to that article are capable of being a substantial part of the literary work consisting of the article as a whole.
(3) Accordingly the copies made by the end-user’s computer of (a) Meltwater News (i) on receipt of the email from Meltwater, (ii) opening that email, (iii) accessing the Meltwater website by clicking on the link to the article and (b) of the article itself when (iv) clicking on the link indicated by Meltwater News are and each of them is, prima facie, an infringement of the Publishers’ copyright.
(4) No such copies are permitted (a) by s.28A CDPA dealing with temporary copies, or (b) as fair dealing within s.30 CDPA, or (c) by the Database Regulations.
(5) Accordingly, the end-user requires a licence from NLA or the Publishers, whether or not in the form of the WEUL in order lawfully to receive and use the Meltwater News Service.
Proudman J said: ‘The effect of Infopaq is that even a very small part of the original may be protected by copyright if it demonstrates the stamp of individuality reflective of the creation of the author or authors of the article. Whether it does so remains a question of fact and degree in each case. It is often a matter of impression whether use has been made of those features of the article which, by reason of the skill and labour employed in its production, constitute it an original copyright work. Is there merely a commonplace arrangement of unoriginal words (see Ladbroke at 276) as Mr Silverleaf submitted? Or has substantial use been made of the skill and labour which went into the creation of the original work?’

Proudman J
[2010] EWHC 3099 (Ch)
Bailii
Copyright Designs and Patents Act 1988 28A, Database Directive 96/9/EC
England and Wales
Citing:
CitedUniversity of London Press Ltd v University Tutorial Press Ltd ChD 1916
In a copyright claim, the test of originality which had to be passed was set out by Peterson J, saying: ‘The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are . .
CitedLadbroke (Football) Ltd v William Hill (Football) Ltd HL 1964
What is substantial copying
The plaintiff alleged copying of their football pools coupons and copyright infringement. The issues were as to the extent of copying required to establish infringement, and whether it was proper to look at the several parts of the work separately. . .
CitedHyperion 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 . .
CitedWalter v Lane HL 6-Aug-1900
Reporter of Public Speech Owns Copyright I
A reporter attended a speech by Lord Rosebery. His report of the speech was republished in the Times after another journalist who had not been present published a verbatim copy. He claimed a copyright in the work he produced.
Held: The first . .
CitedInterlego AG v Tyco Industries Inc PC 5-May-1988
How much new material for new copyright
(Hong Kong) Toy building bricks were manufactured by Lego in accordance with engineering drawings made for that purpose. One issue was whether new drawings made since 1972, altering the original drawings in various minor respects but added new . .
CitedExpress Newspapers v News (UK) plc 1990
If summary judgment is given to one party on his claim, it must also be given on a counterclaim made on the same basis by the defendant. The principle that a party to litigation cannot ‘approbate and reprobate’ (or ‘blow hot and cold’) can curtail a . .
CitedMarleasing SA v La Comercial Internacional de Alimentacion SA ECJ 13-Nov-1990
Sympathetic construction of national legislation
LMA OVIEDO sought a declaration that the contracts setting up Commercial International were void (a nullity) since they had been drawn up in order to defraud creditors. Commercial International relied on an EC . .
CitedRevenue and Customs v IDT Card Services Ireland Ltd CA 27-Jan-2006
Under the Marleasing principle, or principle of conforming interpretation, the domestic court of a member state must interpret its national law so far as possible in the light of the wording and purpose of the Directive in question. However this . .
CitedInfopaq International v Danske Dagblades Forening ECJ 17-Jul-2009
ECJ Copyright Information society – Directive 2001/29/EC Articles 2 and 5 – Literary and artistic works – Concept of ‘reproduction’ Reproduction ‘in part’ Reproduction of short extracts of literary works – . .
CitedExxon Corp v Exxon Insurance Consultants International Ltd CA 1982
Single letter commands used within a computer program, and those with longer names, even if clearly recorded in the source code, are unlikely to be entitled to a copyright. . .
CitedLamb v Evans CA 1893
The plaintiff printed and published a multi-lingual European trade directory, engaging the defendants as commission agents to solicit paid entries for the directory. The businessmen could, if they wished, supply wood blocks or other materials from . .
CitedFrancis Day and Hunter Limited v 20th Century Fox Corporation Limited PC 12-Oct-1939
(Ontario) Copyright protection was asserted on in connection with the title to a film (‘The Man Who Broke the Bank at Monte Carlo’).
Held: It was not a literary work capable of attracting copyright protection. As a rule, such titles do not . .
CitedIceTV Pty Ltd v Nine Network Australia Pty Ltd 22-Apr-2009
Austlii High Court of Australia – Intellectual property – Copyright – Literary work – Compilation – Infringement – Production by employees of Nine Network Australia Pty Limited (‘Nine’) of weekly schedules of . .
CitedFairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd 7-Sep-2010
fairfax_ibaFCA2010
Austlii (Federal Court of Australia)
COPYRIGHT – respondent reproduces headlines and creates abstracts of articles in the applicant’s newspaper – whether reproduction of headlines constitutes copyright . .
CitedPro Sieben Media AG v Carlton Television Ltd and Another CA 7-Jan-1999
The defendant was accused of infringing copyright in a TV programme relating to the pregnancy of a woman with eight foetuses. The defendant claimed fair dealing, but that defence was rejected by the trial judge.
Held: The decision was . .
CitedThe Eschersheim; The Jade HL 1976
The 1956 Act implemented as part of the domestic law the treaty obligations of the United Kingdom under the International Convention Relating to the Arrest of Seagoing Ships signed at Brussels on 10 May 1952 (the Arrest Convention).
Held: The . .
CitedTime Warner Entertainments LP v Channel Four Television Corporation plc CA 1994
In testing whether a defence to copyright infringement of fair dealing succeeds, the court can take note of the actual purpose of the work, and will look carefully to verify the claimed purpose: ‘it is necessary to have regard to the true purpose of . .
CitedAshdown v Telegraph Group Ltd ChD 11-Jan-2001
The claimant, during his career had written private diaries, including minutes of secret political meetings. As he stepped down from leadership, he began to arrange publication. Before this was complete, the defendant published extracts. He . .
CitedAshdown v Telegraph Group Ltd CA 18-Jul-2001
The appellant complained that a part of his confidential diaries had been republished without his consent by the defendant newspaper group. The defendant appealed, saying that the publication was fair dealing.
Held: The exceptions within the . .
CitedBaigent and Another v The Random House Group Ltd CA 28-Mar-2007
The claimants appealed against a decision that the defendant’s book, the Da Vinci Code, had not infringed their copyright. The judge had found some copying, but not so much that a substantial part had been copied.
Held: Mummery LJ said: ‘In . .
CitedSAS 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:
Appeal fromThe Newspaper Licensing Agency Ltd and Others v Meltwater Holding Bv and Others CA 27-Jul-2011
The defendant companies provided media monitoring services, automatically searching web-sites for terms of interest. The claimant newspapers operated a licensing system through the first claimant permitting the re-use of the content on its members . .
At first InstancePublic Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd and Others SC 17-Apr-2013
The agency alleged copyright infringement by the members of the appellant association who were licensed to copy newspaper articles for its members as part of its news monitoring service.
Held: It was necessary to refer to the European Court of . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 28 November 2021; Ref: scu.426712

The Newspaper Licensing Agency Ltd and Others v Meltwater Holding Bv and Others: CA 27 Jul 2011

The defendant companies provided media monitoring services, automatically searching web-sites for terms of interest. The claimant newspapers operated a licensing system through the first claimant permitting the re-use of the content on its members web-sites. The defendant denied that it required such a licence, saying that the arrangement required, in effect, double licensing.
Held:

Sir Andrew Morritt Ch, Jackson, Elias LJJ
[2011] EWCA Civ 890, [2012] RPC 1, [2012] Bus LR 53
Bailii
Copyright Designs and Patents Act 1988 16 17 18 28A, Copyright and Rights in Databases Regulations 1997, Database Directive 96/9/EC
England and Wales
Citing:
CitedUniversity of London Press Ltd v University Tutorial Press Ltd ChD 1916
In a copyright claim, the test of originality which had to be passed was set out by Peterson J, saying: ‘The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are . .
CitedLadbroke (Football) Ltd v William Hill (Football) Ltd HL 1964
What is substantial copying
The plaintiff alleged copying of their football pools coupons and copyright infringement. The issues were as to the extent of copying required to establish infringement, and whether it was proper to look at the several parts of the work separately. . .
Appeal fromThe 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 . .
CitedLamb v Evans CA 1893
The plaintiff printed and published a multi-lingual European trade directory, engaging the defendants as commission agents to solicit paid entries for the directory. The businessmen could, if they wished, supply wood blocks or other materials from . .
CitedDicks v Yates ChD 1881
A newspaper headline may enjoy copyright protection. . .
CitedFairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd 7-Sep-2010
fairfax_ibaFCA2010
Austlii (Federal Court of Australia)
COPYRIGHT – respondent reproduces headlines and creates abstracts of articles in the applicant’s newspaper – whether reproduction of headlines constitutes copyright . .
CitedInfopaq International v Danske Dagblades Forening ECJ 17-Jul-2009
ECJ Copyright Information society – Directive 2001/29/EC Articles 2 and 5 – Literary and artistic works – Concept of ‘reproduction’ Reproduction ‘in part’ Reproduction of short extracts of literary works – . .
CitedFrancis Day and Hunter Limited v 20th Century Fox Corporation Limited PC 12-Oct-1939
(Ontario) Copyright protection was asserted on in connection with the title to a film (‘The Man Who Broke the Bank at Monte Carlo’).
Held: It was not a literary work capable of attracting copyright protection. As a rule, such titles do not . .
CitedExxon Corp v Exxon Insurance Consultants International Ltd CA 1982
Single letter commands used within a computer program, and those with longer names, even if clearly recorded in the source code, are unlikely to be entitled to a copyright. . .
CitedInfopaq International v Danske Dagblades Forening ECJ 12-Feb-2009
ECJ (Opinion) Directive 2001/29 – Articles 2 and 5 – Harmonisation of certain aspects of copyright and related rights in the information society – Reproduction right – Exceptions and limitations – Temporary acts . .
CitedWalter v Lane HL 6-Aug-1900
Reporter of Public Speech Owns Copyright I
A reporter attended a speech by Lord Rosebery. His report of the speech was republished in the Times after another journalist who had not been present published a verbatim copy. He claimed a copyright in the work he produced.
Held: The first . .

Cited by:
Appeal fromPublic Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd and Others SC 17-Apr-2013
The agency alleged copyright infringement by the members of the appellant association who were licensed to copy newspaper articles for its members as part of its news monitoring service.
Held: It was necessary to refer to the European Court of . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 28 November 2021; Ref: scu.442235

Redwood Music Ltd v Chappell and Co Ltd: ChD 1982

It was submitted that an arrangement of an existing musical work only attracted a separate copyright if it involved great skill and labour. After referring to the University of London Press Limited, the court held: ‘That passage was cited with approval in the House of Lords in Ladbroke (Football) Ltd. v. William Hill (Football) Ltd [1964] 1 W.L.R. 273 at pp. 277-78 per Lord Reid, where he stated that there was no dispute about the meaning of the term ‘original’. It is on this basis, of course, that there may be copyright in works of a comparatively humdrum nature, such as straightforward translations; though of course such copyright may be of little value, because another such work may be produced without difficulty, without recourse to the copyright work. I should add that the decision in Wood v. Boosey, relied on by Mr Bateson, although decided before the Copyright Act 1911 and not therefore decided as a matter of construction of the statutory words ‘original work’, is in my judgement consistent with the test proposed by Peterson J. The case was concerned with the question whether a piano reduction by Brissler of Nicolai’s opera The Merry Wives of Windsor attracted a separate copyright in the arrangement, or whether the copyright in the piano reduction belonged to the owner of the copyright in the original opera. In holding that the piano reduction was an independent composition in which the arranger, as author, owned the copyright, the Court of Exchequer Chamber considered the questions whether it was ‘a new and substantive work in itself’, or whether there was ‘something in the nature of authorship in Brissler’ – tests at least consistent with that now adopted in relation to the statutory definition under the Acts of 1911 and 1956.’

Robert Goff J
[1982] RPC 109
England and Wales
Citing:
CitedUniversity of London Press Ltd v University Tutorial Press Ltd ChD 1916
In a copyright claim, the test of originality which had to be passed was set out by Peterson J, saying: ‘The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are . .
CitedLadbroke (Football) Ltd v William Hill (Football) Ltd HL 1964
What is substantial copying
The plaintiff alleged copying of their football pools coupons and copyright infringement. The issues were as to the extent of copying required to establish infringement, and whether it was proper to look at the several parts of the work separately. . .

Cited by:
CitedSawkins 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 . .
CitedFisher v Brooker and Another ChD 20-Dec-2006
The claimant said that he had contributed to the copyright in the song ‘A Whiter Shade of Pale’ but had been denied royalties. He had played the organ and particularly the organ solo which had contrbuted significantly to the fame of the record.
CitedHodgens 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: 28 November 2021; Ref: scu.199977

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 establish that each of his editions is an original musical work. The argument that he was only making minor embellishments to recreate the original work was not successful. The CD’s used or were derived from the scores prepared by the claimant. The claim largely succeeded. Dr Sawkins also succeded in his claim for infringement of his moral rights.

The Honourable Mr Justice Patten
[2004] EWHC 1530 (Ch), Times 26-Jul-2004, [2005] RPC 47, [2004] 4 All ER 418
Bailii
Copyright Designs and Patents Act 1988 3
England and Wales
Citing:
CitedAustin v Columbia Gramophone Company 1917
Infringement of the plaintiff’s copyright in the music of the opera ‘Polly’, written by John Gay as a sequel to ‘The Beggar’s Opera’ was alleged. A volume comprised the opera in prose form, with an appendix including simple airs with an added bass. . .
CitedHadley 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 . .
CitedGodfrey 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 . .
CitedUniversity of London Press Ltd v University Tutorial Press Ltd ChD 1916
In a copyright claim, the test of originality which had to be passed was set out by Peterson J, saying: ‘The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are . .
CitedRedwood Music Ltd v Chappell and Co Ltd ChD 1982
It was submitted that an arrangement of an existing musical work only attracted a separate copyright if it involved great skill and labour. After referring to the University of London Press Limited, the court held: ‘That passage was cited with . .
CitedLadbroke (Football) Ltd v William Hill (Football) Ltd HL 1964
What is substantial copying
The plaintiff alleged copying of their football pools coupons and copyright infringement. The issues were as to the extent of copying required to establish infringement, and whether it was proper to look at the several parts of the work separately. . .
CitedMacMillan and Co Ltd v Cooper PC 1923
The purpose of copyright is to protect from misappropriation the skill and labour of the author which is expended on the production of the original work. Anyone can copy the source material. As regards copyright in textbooks containing excerpts from . .
CitedInterlego AG v Tyco Industries Inc PC 5-May-1988
How much new material for new copyright
(Hong Kong) Toy building bricks were manufactured by Lego in accordance with engineering drawings made for that purpose. One issue was whether new drawings made since 1972, altering the original drawings in various minor respects but added new . .
CitedFrancis Day and Hunter Ltd v Bron CA 1963
The test of substantial similarity in copyright infringement cases is an objective one. That assessment is for the court with such assistance from the evidence and parties as it can muster. To be an infringement there must be ‘some causal . .
CitedWalter v Lane HL 6-Aug-1900
Reporter of Public Speech Owns Copyright I
A reporter attended a speech by Lord Rosebery. His report of the speech was republished in the Times after another journalist who had not been present published a verbatim copy. He claimed a copyright in the work he produced.
Held: The first . .

Cited by:
Appeal fromHyperion 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 . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 28 November 2021; Ref: scu.198575

Geistbeck and Another v Saatgut-Treuhandverwaltungs Gmbh: ECJ 5 Jul 2012

ECJ Intellectual and industrial property – Community plant variety rights – Regulation (EC) No 2100/94 – ‘Farmer’s privilege’ – Concept of ‘reasonable compensation’ – Compensation for damage suffered – Infringement

A. Tizzano, P
[2012] EUECJ C-509/10, C-509/10
Bailii
Citing:
OpinionGeistbeck and Another v Saatgut-Treuhandverwaltungs Gmbh ECJ 29-Mar-2012
ECJ Opinion – Intellectual and industrial property – Regulation (EC) No 2100/94 – Community plant variety rights – Obligation to pay reasonable compensation to the holder of such a right and to compensate the . .

Lists of cited by and citing cases may be incomplete.

European, Intellectual Property, Agriculture

Updated: 28 November 2021; Ref: scu.520002

Donner (Free Movement Of Goods): ECJ 21 Jun 2012

ECJ Free movement of goods – Industrial and commercial property – Sale of reproductions of works in a Member State in which the copyright on those works is not protected – Transport of those goods to another Member State in which the infringement of the copyright is sanctioned under criminal law – Criminal proceedings against the transporter for aiding and abetting the unlawful distribution of a work protected by copyright law.

[2012] EUECJ C-5/11, C-5/11
Bailii
Citing:
OpinionDonner (Free Movement Of Goods) ECJ 29-Mar-2012
ECJ Opinion – Free movement of goods – Industrial and commercial property – Sale of goods copyright protected in the Member State of the buyer but not in the Member State of the seller – Penal sanction imposed on . .

Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 28 November 2021; Ref: scu.519651

Innoweb v Wegener ICT Media BV: ECJ 19 Dec 2013

ECJ Directive 96/9/EC – Legal protection of databases – Article 7(1) and (5) – Sui generis right of the database maker – Concept of ‘re-utilisation’ – Substantial part of the contents of the database – Dedicated meta search engine

T. von Danwitz
C-202/12, [2013] EUECJ C-202/12
Bailii
Directive 96/9/EC

European, Intellectual Property

Updated: 28 November 2021; Ref: scu.519478

Keene, In re: CA 1922

The bankrupt, against whom a receiving order had been made, had carried on business in the manufacture and sale in England, France and America of proprietary articles made according to secret formulas invented by him and his brother with whom he was in partnership. At his public examination he was required to disclose these formulas in writing to his trustee. The bankrupt and his brother had each of them agreed not to disclose the secret. Upon the dissolution of the partnership the bankrupt retained the assets and goodwill of the business in England and America, while his brother continued to carry it on in France. The formulas had never been committed to writing. The bankrupt refused to disclose them on the ground that they existed only in his brain as the result of his skill and capacity, and that to disclose them would be a breach of this agreement with his brother.
Held: The formulas were part of the Goodwill and assets of the business and he was bound to communicate them to his trustee.

91 LJ Ch 484, [1922] 2 Ch 475, 127 LT 831, 35 TLR 663, 66 Sol Jo 503, [1922] B and CR 103
England and Wales
Cited by:
CitedIn Re Smith Kline and French Laboratories Ltd HL 9-Feb-1989
The plaintiffs had applied for a product licence for a patented drug. To support its application, it supplied the authority with confidential information which the authority now sought to make use of the confidential information when considering . .

Lists of cited by and citing cases may be incomplete.

Insolvency, Intellectual Property

Updated: 28 November 2021; Ref: scu.182805

In Re Smith Kline and French Laboratories Ltd: HL 9 Feb 1989

The plaintiffs had applied for a product licence for a patented drug. To support its application, it supplied the authority with confidential information which the authority now sought to make use of the confidential information when considering later applications for licences for similar products.
Held: The authority had a duty of public safety, and to ensure fair treatment of all applicants. That duty required it to make use of such information where required. EU law did not prevent such use since the regulations allowed the restrictions on such use to be overridden by national law.

Lord Bridge of Harwich, Lord Templeman, Lord Ackner, Lord Oliver of Aylmerton and Lord Lowry
[1989] 1 WLR 1
lip
Council Directive (65/65/E.E.C.) 4.8, Medicines Act 1968 (c. 67), 6 7(2) 20(1)(b), Medicines (Medicines Act 1968 Amendment) Regulations 1977 (S.I. 1977 No. 1050) 4(3)
England and Wales
Citing:
CitedAllen and Hanburys Ltd v Generics (UK) Ltd 1986
A licence: ‘passes no proprietary interest in anything; it only makes an action lawful which would otherwise have been unlawful.’ . .
CitedBritish Leyland Motor Corporation Ltd v Armstrong Patents Co Ltd HL 1986
The claimant’s product was made from drawings. The drawings were protected as copyright artistic works. They were reproduced in a three dimensional form by the claimant’s own products. Someone who copied the claimant’s products indirectly copied the . .
CitedButler v Board of Trade ChD 1970
Goff J discussed the criterion for admissibility of evidence:’If one rejects the bare relevance test, as I have done, then what has to be shown prima facie is not merely that there is a bona fide and reasonably tenable charge of crime or fraud but a . .
CitedCastrol Australia Pty Ltd v EmTech Associates Pty Ltd 1980
(Australia) The court reviewed the development of the common law rule that no confidence can exist in iniquity. The court rejected a submission that the Trade Practices Commission should be able to use a particular confidential report for the . .
CitedIn re Coca-Cola Co HL 1986
The claimants had used the distinctive shape of their bottle to help advertise their soft drink. The registered design rights in the bottle had expired.
Held: The House refused to allow trade mark law to be exploited and rejected the argument . .
CitedInterlego AG v Tyco Industries Inc PC 5-May-1988
How much new material for new copyright
(Hong Kong) Toy building bricks were manufactured by Lego in accordance with engineering drawings made for that purpose. One issue was whether new drawings made since 1972, altering the original drawings in various minor respects but added new . .
CitedKeene, In re CA 1922
The bankrupt, against whom a receiving order had been made, had carried on business in the manufacture and sale in England, France and America of proprietary articles made according to secret formulas invented by him and his brother with whom he was . .
CitedMetropolitan Asylum District Managers v Hill HL 7-Mar-1881
There was an allegation that the managers had been committing an actionable nuisance, alternatively that they had been negligent in and about the construction and maintenance of a hospital for small-pox patients in Hampstead. The trial judge had . .

Cited by:
CitedSmith New Court Securities Ltd v Scrimgeour Vickers HL 21-Nov-1996
The defendant had made misrepresentations, inducing the claimant to enter into share transactions which he would not otherwise have entered into, and which lost money.
Held: A deceitful wrongdoer is properly liable for all actual damage . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 28 November 2021; Ref: scu.178601

Watermist Limited and Protec Fire Detection Limited: IPO 26 Nov 2013

IPO (Patent) The patentee requested a review of Opinion 4/13 on the grounds that the examiner had misconstrued the claims and wrongly concluded that there was no infringement. The patent relates to fire fighting units and the invention is concerned with an arrangement of hose reel, pump and nozzle placed in a cabinet having a hinged door. The Hearing Officer found that the examiner had not misconstrued the meaning of the claims or misunderstood the relevance of the evidence, and had not reached a conclusion that was clearly wrong. The examiner had not considered the question of indirect infringement because he was not asked to do so. The Opinion was not set aside.

Mr H Jones
[2013] UKIntelP o47313, O/473/13
Bailii
England and Wales

Intellectual Property

Updated: 27 November 2021; Ref: scu.519197

Petrowell Limited, Colin Smith and Daniel George Purkis – O/487/13: IPO 4 Dec 2013

IPO An uncontested application was filed by the proprietor Petrowell Limited under rule 10(2) of the Patents Rules 2007. As a result, it was found that Daniel George Purkis should be mentioned as a joint inventor along with Colin Smith in the published patent application for the invention and directed that an addendum slip mentioning him as a joint inventor be prepared for the published patent application for the invention.

Mr A R Bushell
[2013] UKIntelP o48713, O/487/13
Bailii
Patents Rules 2007 10(2)
England and Wales

Intellectual Property

Updated: 27 November 2021; Ref: scu.519207

Petrowell Limited, Colin Smith and Daniel George Purkis – O/489/13: IPO 4 Dec 2013

IPO An uncontested application was filed by the proprietor Petrowell Limited under rule 10(2) of the Patents Rules 2007. As a result, it was found that Daniel George Purkis should be mentioned as a joint inventor along with Colin Smith in the published patent application for the invention and directed that an addendum slip mentioning him as a joint inventor be prepared for the published patent application for the invention.

Mr A R Bushell
[2013] UKIntelP o48913, O/489/13
Bailii
Patents Rules 2007 10(2)
England and Wales

Intellectual Property

Updated: 27 November 2021; Ref: scu.519208

Watermist Limited and Protec Fire Detection Limited: IPO 25 Nov 2013

IPO The patentee requested a review of Opinion 1/13 on the grounds that the examiner had misconstrued the claims and wrongly concluded that there was no infringement. The patent relates to fire fighting units and the invention is concerned with an arrangement of hose reel, pump and nozzle placed in a cabinet having a hinged door. The Hearing Officer found that the examiner had not misconstrued the meaning of the claims or misunderstood the relevance of the evidence, and had not reached a conclusion that was clearly wrong. The Opinion was not set aside.

Mr H Jones
[2013] UKIntelP o47213, O/472/13
Bailii
England and Wales

Intellectual Property

Updated: 27 November 2021; Ref: scu.519196

Medimmune Vaccines, Inc, Robert George Trager, George Kemble, Richard M Schwartz, Harshvardhan Mehta, Vu Truong-Le, Zhongying Chen, A Alfred Pan, Eric Tsao, Kathy Chiaoyin Wang, Luisa Yee, Palani Balu, John Michael Berry and Weldong Cui: IPO 4 Nov 2013

IPO An uncontested application was filed by Medimmune Vaccines, Inc. under rule 10(2) of the Patents Rules 2007 and section 13(3) of the Patents Act 1977. It was found that both John Michael Berry and Weldong Cui should be mentioned as joint inventors in relation to the granted EP (UK) patent and directed that an addendum slip mentioning them as such be prepared for the granted patent for the invention. The decision also serves as a certificate, issued in accordance with section 13(3), to the effect that George Kemble, Zhongying Chen, A. Alfred Pan, Eric Tsao, Kathy Chiaoyin Wang and Palani Balu should not have been mentioned as joint inventors in the granted EP (UK) patent for the invention.

Mr A R Bushell
[2013] UKIntelP o43513, O/435/13
Bailii
England and Wales

Intellectual Property

Updated: 27 November 2021; Ref: scu.519184

O’Hare and Deo Beauty Products Ltd and Australian Bodycare UK Ltd (Patent): IPO 11 Nov 2013

IPO The patentee requested a review of Opinion 3/12 on the grounds that the examiner had misconstrued the claims and wrongly concluded that there was no infringement. The patent relates to a heater for depilatory wax and the invention is concerned with an adaptor arrangement for converting an open chamber wax heater into a wax tube heater. The Hearing Officer found that the examiner had misconstrued the meaning of the phrase ‘comprising a plate’ and that this had led to the wrong conclusion on infringement. The Opinion was set aside.

[2013] UKIntelP o44913
Bailii
England and Wales

Intellectual Property

Updated: 27 November 2021; Ref: scu.519174

Richard Perry: IPO 11 Nov 2013

IPO Patent number GB2390104 was filed on 8 August 2003 and granted with effect from 12 May 2004. The 9th year renewal fee fell due on 8 August 2011, but the renewal fee was not paid by that date or during the six months allowed under s.25 (4) upon payment of the prescribed additional fees. The patent therefore ceased 08 August 2011.
In his initial evidence filed with the application for restoration, the applicant unequivocally stated that he ‘could not afford to renew it at the time . . ‘. Based on this, the Office notified the applicant that it was minded to refuse the application, but invited him to file any further evidence. Further evidence was filed, but it did not convince the Office to restore the patent and the matter went to a hearing. At the hearing the applicant argued that although he had initially said he had no money to renew the patent during the relevant period, this was based on confusion as to exactly when the fees were due and what amount he had to pay. He also argued that he had received erroneous advice from the Office in that he was told it would be cheaper to let the patent cease and apply for restoration instead of paying the renewal fees and fines. He stated at the hearing that he did in fact have sufficient funds to renew the patent during the relevant period, but the confusion caused by his various business and IP dealings and the erroneous advice he had allegedly received, caused him to unintentionally miss the payment.
The HO officer allowed the applicant time after the hearing file further evidence of his ability to pay the relevant renewal fees and fines. This was provided and on balance the HO accepted the evidence and the applicant’s submissions. On that basis, he found that the evidence provided in this case was sufficient satisfy the Comptroller that the ‘unintentional’ test of s.28(3) had been met. As such he ordered that the patent be restored.

Mr G J Rose’Meyer
[2013] UKIntelP o45413, O/454/13
Bailii
England and Wales

Intellectual Property

Updated: 27 November 2021; Ref: scu.519190