Regina v Comptroller General of Patents, Designs and Trade Marks ex parte Lenzing Ag Chancery Division, In the Matter of European Patent (Uk) No 0,356,419 In the Name of Lenzing Ag Chancery Division, Lenzing Ag v C: Admn 20 Dec 1996

The UK patents Registry must make note of the revocation of a European patent by the EPO.

Citations:

Gazette 05-Mar-1997, Times 17-Jan-1997, [1996] EWHC Admin 390

Links:

Bailii

Citing:

Appealed toRegina v Comptroller-General of Patents, Designs and Trademarks ex parte Lenzing A G CA 1-May-1997
. .

Cited by:

Appeal fromRegina v Comptroller-General of Patents, Designs and Trademarks ex parte Lenzing A G CA 1-May-1997
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 25 May 2022; Ref: scu.136938

Aubrey Max Sandman v Panasonic UK Limited, Matsushita Electric Industrial Co Ltd: PatC 21 Jan 1998

Application by Panasonic to have claim of copyright infringement of a circuit diagram struck out as vexatious.
Held: There was a good arguable case for inferring participation in a common design between a parent company and its subsidiary where the parent adapted a product it manufactured specifically for sale in the United Kingdom where it would infringe copyright. Pumfrey J felt some doubt over this and that his opinion had changed more than once in the course of the argument, suggests that it was a borderline case.

Judges:

Pumfrey J

Citations:

[1998] EWHC Patents 346, [1998] FSR 651, [1998] Masons CLR 220, (1998) 21(4) IPD 21038

Links:

Bailii

Cited by:

CitedSea Shepherd UK v Fish and Fish Ltd SC 4-Mar-2015
Accessory Liability in Tort
The court considered the concept of accessory liability in tort. Activists had caused damage to vessels of the respondent which was transporting live tuna in cages, and had caused considerable damage. The appellant company owned the ship from which . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Torts – Other

Updated: 25 May 2022; Ref: scu.136108

Gromax Plasticulture Ltd v Don and Low Nonwovens Ltd: PatC 12 Jun 1998

The court set out tests of bad faith for applications for the registration of trade marks: ‘I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and, as I would hold, includes also some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined. Parliament has wisely not attempted to explain in detail what is or is not bad faith in this context: how far a dealing must so fall-short in order to amount to bad faith is a matter best left to be adjudged not by some paraphrase by the courts (which leads to the danger of the courts then construing not the Act but the paraphrase) but by reference to the words of the Act and upon a regard to all material surrounding circumstances.’

Judges:

Lindsay J

Citations:

[1998] EWHC Patents 316, [1999] RPC 367

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

CitedHarrison v Teton Valley Trading Co; Harrison’s Trade Mark Application (CHINAWHITE) CA 27-Jul-2004
The applicant had been an employee of the objector at their nightclub ‘Chinawhite’ and whose principal attraction was a cocktail of the same name. Employees signed a confidentiality agreement as to the recipe. Having left the employment, the . .
CitedTwinsectra Ltd v Yardley and Others HL 21-Mar-2002
Solicitors acted in a loan, giving an undertaking as to its application. In breach of that undertaking they released it to the borrower. The appellants appealed a finding of liability as contributors to the breach.
Held: ‘Money in a . .
CitedJules Rimet Cup Ltd v The Football Association Ltd. ChD 18-Oct-2007
The parties disputed on preliminary issues the ownership of the rights in the trade mark ‘World Cup Willie’. The claimant had set out to register the mark, and the defendant gave notice of its intention to oppose. The claimant now alleged threat and . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 25 May 2022; Ref: scu.136094

Norowzian v Arks Limited and Others: ChD 17 Jul 1998

A film whose defining and innovative characteristic was the editing which produced stylised jumps in the action, which were incapable of performance by the actor, was not a dramatic work protected by copyright. A film per se cannot be a dramatic work within the meaning of the 1988 Act, though it can be a recording of such a work for the purpose of section 3(2).

Judges:

Rattee J

Citations:

Times 27-Jul-1998, Gazette 16-Sep-1998, [1999] EMLR 67, [1998] EWHC 315 (Ch), [1999] FSR 79

Links:

Bailii

Statutes:

Copyright Designs and Patents Act 1988 1(1)(a)

Cited by:

Appeal fromMehdi Norowzian v Arks Ltd and Guinness Brewing Worldwide Limited (No 2) CA 11-Nov-1999
The claimant film artist showed a film to an advertising agency, who did not make use of it, but later appeared to use techniques and styles displayed in the film in subsequent material sold to third parties.
Held: A film was protected as a . .
Lists of cited by and citing cases may be incomplete.

Media, Intellectual Property

Updated: 25 May 2022; Ref: scu.136091

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 substantial number of readers had been misled. The deception must be more than momentary and inconsequential. A parody of writing style was capable of constituting the tort of passing off and being a breach of Copyright Act rights even though there was a clear attribution. Here the evidence supported the fact that the parody, which relied upon creating just enough, but not too much confusion, had crossed the line. It was sufficient to establish that one of the possible reasonable meanings of the publication would mislead a substantial number of people; but a single meaning was required for the statutory tort of false attribution of authorship.

Judges:

Lightman J

Citations:

Times 28-Jan-1998, Gazette 18-Feb-1998, [1998] EWHC Patents 345, [1998] 1 WLR 1558

Links:

Bailii

Statutes:

Copyright Designs and Patents Act 1988 84

Citing:

CitedMarengo v Daily Sketch HL 1948
The appellant enjoyed a reputation as a cartoonist under the pseudonym ‘Kem’. The defendant published the work of another cartoonist with the pseudonym ‘Kim’ but without the dot over the ‘i’. The claimant claimed in passing off.
Held: ‘Is it . .
CitedMoore v News of the World CA 1972
An article was published which the plaintiff said left readers with the false apprehension that she had written it. She claimed under the statutory tort of false attribution.
Held: The judge was correct to direct the jury to make up their . .
CitedCadbury-Schweppes Pty Ltd And Others v Pub Squash Co Pty Ltd PC 13-Oct-1980
(New South Wales) The plaintiff had launched and advertised a soft drink. A year later, the defendant launched a similar product using similar names, styles and advertising, but then registered trade marks. The plaintiff sought damages, and for the . .
CitedSpalding (A G ) and Brothers v A W Gamage Ltd HL 1915
The House considered the requirements for the tort of passing off. The judge has the sole responsibility for deciding whether anybody has been misled. He will hear evidence, but must not surrender his assessment to others.
Lord Parker said: . .
CitedThe European Limited v The Economist Newspaper Limited CA 20-Nov-1997
When considering an allegation of passing off, the judge may also be assisted by the evidence of experts explaining special features of the relevant ‘market’ of which he may otherwise be ignorant and which are relevant to the likelihood of deception . .
CitedReckitt and Coleman Properties Ltd v Borden Inc HL 1990
The plaintiffs claimed passing off of their ‘Jif Lemon’ trading style.
Held: It is no defence to an allegation of passing off that members of the public would not be misled if they were more literate, careful, perspicacious, wary or prudent. . .
CitedNorman v Bennett 1974
The court considered the requirements to establish an offence under the 1968 Act: ‘I think that, where a false description is attached to goods, its effect can be neutralised by an express disclaimer or contradiction of the message contained in the . .
CitedJoseph v National Magazine 1959
False attribution of article to plaintiff – injunctive relief . .
CitedCharleston and Another v News Group Newspapers Ltd and Another HL 31-Mar-1995
The plaintiffs were actors playing Harold and Madge Bishop in the Australian soap series ‘Neighbours’. They sued on a tabloid newspaper article which showed their faces superimposed on the near-naked bodies of models apparently engaged in sexual . .
CitedRegina v Southwood CACD 1-Jul-1987
Where a car dealer had falsified the odometer on a car he was selling, a disclaimer as to the car’s mileage was ineffective to provide a defence under the 1968 Act. . .

Cited by:

CitedAjinomoto Sweeteners Europe Sas v Asda Stores Ltd CA 2-Jun-2010
The claimant sold a sweetener ingredient. The defendant shop advertised its own health foods range with the label ‘no hidden nasties’ and in a situation which, the claimant said, suggested that its ingredient was a ‘nasty’, and it claimed under . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Media

Updated: 25 May 2022; Ref: scu.136107

Glaxo Group Limited and Others v Dowelhurst Limited and Another: ChD 28 Feb 2000

Parallel importers could not be prevented from so acting by Trade Mark law unless it could be shown that the activity caused substantial damage to the specific substance of the Mark. If damage was shown, the owner could complain unless it would operate to breach European law. A mark owner could object to the re-application of his mark by such importers only if he had not received notice of such activity. This was irrespective of proof of damage, but knowledge of the importer’s activities constituted notice. ‘A trade mark is a badge, in the widest sense, used on or in relation to goods so as to indicate source.’

Judges:

Laddie J

Citations:

Times 14-Mar-2000, [2000] EWHC Ch 134, [2000] FSR 529

Links:

Bailii

Cited by:

CitedScandecor Developments AB v Scandecor Marketing AV and Others and One Other Action HL 4-Apr-2001
A business had grown, but the two founders split, and set up separate business. There was no agreement as to the use of the trading names and trade marks. The original law of Trade Marks prohibited bare exclusive licenses, licences excluding the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 23 May 2022; Ref: scu.135964

Charlesworth v Relay Roads Limited, Haley and Others: PatC 1 Feb 1999

Citations:

[1999] EWHC Patents 257

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

See AlsoCharlesworth v Relay Roads Ltd ChD 31-Aug-1999
It remains possible to amend pleadings after judgment but before the order is drawn up, provided the party involved complies with the appropriate procedures. This may apply even though it would require the presentation of further evidence and . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 May 2022; Ref: scu.136063

Philips Electronics Nv v Remington Consumer Products Limited: CA 5 May 1999

The court referred to the European Court of Justice the question of whether the arrangement of three heads on a razor was functional, and so was not capable of protection as a trade mark.

Judges:

Aldous LJ

Citations:

[1999] EWCA Civ 1340, [1999] RPC 809

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Referred toKoninklijke Philips Electronics NV v Remington Consumer Products Ltd ECJ 18-Jun-2002
The claimant developed a three headed rotary razor for men. They obtained registration of the arrangement as a trade mark. They sued the defendant for infringement, and the defendant countered challenging the validity of the registration, saying the . .
Appeal fromPhilips Electronics Nv v Remington Consumer Products Ltd ChD 2-Feb-1998
It was a misuse of Trade Mark legislation to seek permanently to prevent the use of a substantial engineering design idea which was underlying the mark for which protection was sought. The judge revocation of the registration of the claimant’s mark . .

Cited by:

Reference fromKoninklijke Philips Electronics NV v Remington Consumer Products Ltd ECJ 18-Jun-2002
The claimant developed a three headed rotary razor for men. They obtained registration of the arrangement as a trade mark. They sued the defendant for infringement, and the defendant countered challenging the validity of the registration, saying the . .
CitedKoninklijke Philips Electronics Nv v Remington Consumer Products Ltd and Another CA 26-Jan-2006
The court was asked whether a trade mark consisting of the shape of goods (a three headed rotary electric shaver) could be valid. In earlier proceedings a representation had been found incapable of registration representing only the function of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 23 May 2022; Ref: scu.136041

Healing Herbs Limited v Bach Flower Remedies Limited: PatC 22 May 1998

Citations:

[1998] EWHC Patents 318

Links:

Bailii

Cited by:

Appeal fromBach Flower Remedies Ltd v Healing Herbs Ltd CA 21-Oct-1999
The originator of ‘Bach Flower Remedies’ had distributed them widely, and encouraged the use of the term as a general descriptive remedies. After the plaintiff had registered the names as trade marks, the respondent challenged the registration, and . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 May 2022; Ref: scu.135892

Unilever Plc v The Procter and Gamble Company: PatC 24 Feb 1999

Representatives of the Defendant company were said to have asserted, during an expressly ‘without prejudice’ meeting, that the plaintiff’s marketing of its product infringed the Defendant’s patent and threatened to bring an action for infringement. The plaintiff, relying on the statements made at the meeting, brought proceedings against the Defendant under section 70 of the Patents Act 1977 for threatening the plaintiff with proceedings for infringement of the patent.
Held: The overriding principal of without prejudice negotiations meant that disclosure in patents negotiations of perceived strengths and weaknesses was not to be used against a party. This is to be even more so under the new litigation regime. In a threat action, it does not matter that the threat may be veiled or covert, conditional or future. Nor does it matter that the threat is made in response to an enquiry from the party threatened.

Judges:

Laddie J

Citations:

Times 18-Mar-1999, [1999] EWHC Patents 250, [1999] FSR 849

Links:

Bailii

Statutes:

Patents Act 1977 70

Jurisdiction:

England and Wales

Cited by:

Appeal fromUnilever plc v Procter and Gamble Company CA 4-Nov-1999
The defendant’s negotiators had asserted in an expressly ‘without prejudice’ meeting, that the plaintiff was infringing its patent and they threatened to bring an action for infringement. The plaintiff sought to bring a threat action under section . .
CitedL’Oreal (UK) Limited and Another v Johnson and Johnson and Another ChD 7-Mar-2000
The claimant appealed against an order striking out their threat action for trade mark infringement, in respect of the words ‘No Tears’ when used for children’s shampoo.
Held: The court had to consider both the letter and the surrounding . .
See AlsoUnilever plc v Procter and Gamble Company CA 4-Nov-1999
The defendant’s negotiators had asserted in an expressly ‘without prejudice’ meeting, that the plaintiff was infringing its patent and they threatened to bring an action for infringement. The plaintiff sought to bring a threat action under section . .
CitedPaymaster (Jamaica) Ltd and Another v Grace Kennedy Remittance Services Ltd PC 11-Dec-2017
(Court of Appeal of Jamaica) The parties disputed the ownership of copyight in certain computer software, and also an allegation of the misuse of confidential information. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice, Evidence

Updated: 23 May 2022; Ref: scu.135852

Coflexip Stena Offshore Limited, Coflexip S A v Stolt Comex Seaway Ms Limited, Stolt Comex Seaway Limited, Stolt Comex Seaway A/S: PatC 29 Jan 1999

The past normal practice, after a finding of patent infringement, to grant a wide ranging injunction, needs to be reconsidered, and the Court of Appeal should be asked for guidance. The present practice was capable of producing unfairness.

Citations:

Times 04-Feb-1999, [1999] EWHC Patents 258

Links:

Bailii

Cited by:

Appeal fromCoflexip SA, Coflexip Stena Offshore Ltd v Stolt Comes Seaway MS Ltd, Stolt Comex Seaway Ltd, Stolt Comex Seaway SA CA 31-Jul-2000
Any injunction to restrain passing off will need to be carefully drafted so not to give relief beyond that justified by the findings. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 May 2022; Ref: scu.135856

The Newspaper Licensing Agency Limited v Marks and Spencer Plc: PatC 19 Jan 1999

The daily circulation within a large company of press cuttings was outside the scope of the reporting of current events defences to copyright infringement. Ownership of the typographical arrangement of a newspaper article sufficed to found a claim. An edition meant a ‘version’ of a literary work and ‘In the case of a newspaper made up of a number of different articles, each separate article is in my view a literary work and the typographical arrangement of each separate article is accordingly a copyright work.’

Judges:

Lightman J

Citations:

Times 26-Jan-1999, Gazette 24-Feb-1999, [1999] EWHC Patents 266, [1999] RPC 536

Links:

Bailii

Statutes:

Copyright Designs and Patents Act 1988 30(2)

Jurisdiction:

England and Wales

Citing:

Appealed toNewspaper Licensing Agency Ltd v Marks and Spencer Plc CA 26-May-2000
The defendant had a cuttings service, and distributed selected articles amongst its staff. The Agency complained that this amounted to copying a substantial part of the editions from which the cuttings were taken. There was no typographical . .

Cited by:

Appeal fromNewspaper Licensing Agency Ltd v Marks and Spencer Plc CA 26-May-2000
The defendant had a cuttings service, and distributed selected articles amongst its staff. The Agency complained that this amounted to copying a substantial part of the editions from which the cuttings were taken. There was no typographical . .
CitedHyde Park Residence Ltd v Yelland, News Group Newspapers Ltd, News International Ltd, Murrell CA 10-Feb-2000
The court considered a dispute about ownership and confidence in and copyright of of video tapes taken by Princess Diana before her death.
Held: The courts have an inherent discretion to refuse to enforce of copyright. When assessing whether . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 May 2022; Ref: scu.135861

Bristol-Myers Squibb Company v Baker Norton Pharmaceuticals Inc, Napro Biotherapeutics Inc: CA 23 May 2000

Citations:

[2000] EWCA Civ 169

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal fromBristol-Myers Squibb Company v Baker Norton Pharmaceuticals Inc, Napro Biotherapeutics Inc PatC 20-Aug-1998
. .
See alsoBristol-Myers Squibb Company v Baker Norton Pharmaceuticals Inc and Another CA 26-Apr-2001
The slip rule could not be used by the court to add second thoughts to a judgment, but could be used by the court to amend the judgment to give effect to the court’s original intention. In this case the effect of an appeal was to restart the running . .

Cited by:

Appealed toBristol-Myers Squibb Company v Baker Norton Pharmaceuticals Inc, Napro Biotherapeutics Inc PatC 20-Aug-1998
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 May 2022; Ref: scu.135749

Imutran Ltd v Uncaged Campaigns Ltd and Another: ChD 11 Jan 2001

The test for whether an interim injunction should be granted restraining publication of material claimed to be confidential, where such a grant would infringe the right to freedom of expression was slightly different under the 1998 Act. The established test was whether the claimant had a real prospect of succeeding at trial in restraining publication, but the new test was whether he was likely to do so. Nevertheless the difference was so small as to make any calculation fruitless.
The court was asked to restrain the publication of confidential documents, and the effect of the section. The defendants argued that the requirement of likelihood imposed a higher standard than that formulated in American Cyanamid, but the claimant said that his case satisfied whatever the standard was applied. Theoretically and as a matter of language likelihood is slightly higher in the scale of probability than a real prospect of success. But the difference between the two is small. The court could not imagine many (if any) cases which would have succeeded under the American Cyanamid test but will now fail because of the terms of section 12(3). The court applied the test of likelihood without any further consideration of how much more probable that now has to be.
Sir Andrew Morritt set out the approach to be taken: ‘Of course, the defendants’ right to freedom of expression is an element in their democratic right to campaign for the abolition of all animal xenotransplantation or other experimentation. But they may continue to do that whether the injunction sought by Imutran is granted or not. The issue is whether they should be free to do so with Imutran’s confidential and secret documents. Many of those documents are of a specialist and technical nature suitable for consideration by specialists in the field but not by the public generally. Given the provisos to the injunction sought there would be no restriction on the ability of the defendants to communicate the information to those specialists connected with the regulatory bodies denoted by Parliament as having special responsibility in the field.’

Judges:

Sir Andrew Morritt

Citations:

Times 30-Jan-2001, Gazette 05-Apr-2001, [2001] EWHC Ch 31, [2001] 2 All ER 385, [2002] FSR 2, [2001] HRLR 31, [2001] EMLR 21, [2001] CP Rep 28, [2001] ECDR 16

Links:

Bailii

Statutes:

Human Rights Act 1998 12(3)

Jurisdiction:

England and Wales

Citing:

CitedAmerican 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 by:

ApprovedA v B plc and Another (Flitcroft v MGN Ltd) CA 11-Mar-2002
A newspaper company appealed against an order preventing it naming a footballer who, they claimed, had been unfaithful to his wife.
Held: There remains a distinction between the right of privacy which attaches to sexual activities within and . .
CitedBarclays Bank Plc v Guardian News Media Ltd QBD 19-Mar-2009
The bank sought continuation of an injunction preventing publication by the defendant of papers leaked to relating to the claimant’s tax management. The claimant claimed in confidentiality. The papers did not reveal any unlawful activity. The . .
CitedTheakston v MGN Ltd QBD 14-Feb-2002
The claimant, a celebrity sought to restrain publication by the defendant of information about his sex life, consisting of pictures of him in a brothel. The court considered the test for the grant of an injunction to restrain publication under the . .
CitedCream Holdings Limited and others v Banerjee and The Liverpool Daily Post and Echo Limited CA 13-Feb-2003
The defendants considered publication of alleged financial irregularities by the claimant, who sought to restrain publication. The defendants argued that under the Act, prior restraint should not be used unless a later court would be likely to . .
CitedBains and Others v Moore and Others QBD 15-Feb-2017
The claimant anti-asbestos campaigners complained that the defendant investigators had infringed their various rights of privacy. They now sought discovery to support the claim.
Held: the contents of the witness statements do show that it is . .
Lists of cited by and citing cases may be incomplete.

Litigation Practice, Intellectual Property, Human Rights, Media

Updated: 23 May 2022; Ref: scu.135620

Scholes Windows Ltd v Magnet Ltd: CA 11 Apr 2001

The claimant sought damages for infringement in their unregistered design right in a part of a window. Copyright was accepted, but in the claim for unregistered design right, the respondent said the design was commonplace.
Held: The judge was correct to use his own experience to find that it was so. The extent of the field within which comparisons were to be made was a matter of fact and degree for the judge. He was not restricted in allowing comparison with older but extant examples of similar designs. The term ‘design field in question’ was not defined in the Act and fell to be construed according to its ordinary meaning. In looking at the design, the judge was entitled to examine it from the point of view of the ordinary person it was designed to appeal to rather than from the point of view of the expert. The fact that the definition of design did not incorporate any reference to the nature of purpose of the article or the material structure of it meant that these were not relevant to the identifying of the design field.

Citations:

Times 05-Jun-2001, [2001] EWCA Civ 532, [2002] FSR 10

Links:

Bailii

Statutes:

Copyright Designs and Patents Act 1988 213 (4)

Jurisdiction:

England and Wales

Citing:

See AlsoScholes Windows Limited v Magnet Limited CA 5-Nov-1999
Unregistered design right infringement. . .

Cited by:

CitedSales v Stromberg and others ChD 26-Jul-2005
The claimant sought damages alleging infringement of design right, breach of confidentiality and passing off. The claimants sold a system for purification of water.
Held: The situations behind the two sets of products were different. Products. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 May 2022; Ref: scu.135496

McGhan Medical Uk Ltd v Nagor Ltd and Biosil Ltd: PatC 28 Feb 2001

The claimants had a patent for breast (and other) implants, the surface of which was claimed to be an improvement. They claimed infringement, and the defendant challenged the validity of the patent as lacking novelty, obviousness, and that description extended beyond the claim. The claim for infringement failed, as did the cross application to defeat the patent.

Judges:

Fysh QC

Citations:

[2001] EWHC Patents 452

Links:

Bailii

Statutes:

Patents Act 1971 72(1)(d)

Citing:

AppliedHorne Engineering v Reliance Water Controls 10-Jun-1999
cw Action for infringement of European patent relating to thermostatic mixing valve. . .
AppliedWindsurfing International Inc v Tabur Marine (Great Britain) Limited CA 1985
Testing Validity of a Patent
A patent was challenged where the windsurf board had been shown as a primitive prototype to have been built and used in public by a twelve year old boy. The court set out the four steps required to be taken when ascertaining the validity of a . .
on disclosure, appliedBonzel (T) v Intervention Ltd (No3) 1991
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 May 2022; Ref: scu.135550

Thermos Limited v Aladdin Sales and Marketing Limited: CA 10 May 2001

The complainant alleged breach of their registered design for a flask. Whether the designs are substantially different is for the court on a comparison of the features judged eye. The court represents a customer interested in the design. It can look at available design if the design of the registered design only differs from the prior art by such details. Where a design differs radically from previous designs, the interested eye would more likely concentrate on the general form of the new design. Given the involvement of a judge in that factual assessment, his decision should be set aside only with care, and not in this case.

Judges:

Lord Justice Aldous Lord Justice Mummery And Lord Justice Kay

Citations:

[2001] EWCA Civ 667

Links:

Bailii, courtcommentary.com

Statutes:

Copyright Designs and Patents Act 1988

Jurisdiction:

England and Wales

Citing:

AppliedGaskell and Chambers Ltd v Measure Master Ltd 1993
The court considered how it should compare the design as registered and that of which complaint was made of copying: ‘The decision whether the registered design and the designs of the alleged infringements are substantially different is for the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 May 2022; Ref: scu.135466

Kapur v Comptroller General of Patents, Designs and Trade Marks: PatC 10 Apr 2008

The applicant sought patents for systems of document management. The applications had been rejected as being for computer programs as such.
Held: The exclusion from protection created by the section was to be construed narrowly. In the absence of non-mental limitations, the product should not be excluded.

Judges:

Floyd J

Citations:

[2008] EWHC 649 (Pat), Times 03-Jun-2008, [2008] Bus LR D77

Links:

Bailii

Statutes:

Patents Act 1977 1(2)(c)

Jurisdiction:

England and Wales

Citing:

CitedGenentech’s (Human Growth Hormone) Patent CA 1989
A patent claim for an important protein called Tissue Plasminogen Activator was objected to on the basis of the obviousness of the gene sequence.
Held: The court considered the categories of exclusion in the context of what was said to be a . .
CitedCappellini and Bloomberg, Re PatC 13-Mar-2007
The applicants appealed rejection of their applications for patents. The comptroller-general had said that patents were in respect of computer programs excluded from registration.
Held: The appeals failed. There was no relevant technical . .
CitedGale’s Application CA 1991
The applicant had devised a new and better algorithm for finding square roots. Having embodied the method in a read only chip which could be installed within a computer which could then apply the algorithm, he sought to patent it.
Held: . .
CitedCapellini v Bloomberg; Capellini and Bloomberg’s Applications 2007
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 May 2022; Ref: scu.268008

Thetford Corporation And Others v Fiamma Spa And Others: ECJ 30 Jun 1988

The court considered a reference to the European Court on assumed facts where the domestic court had not yet established those facts.
Europa In the present state of Community law, characterized by the absence of harmonization of the patents legislation of the Member States, and in the absence of international conventions in force providing to the contrary, Article 36 of the Treaty must be interpreted as not precluding the application of a Member State’s legislation which recognizes the principle of relative novelty and provides that a patent granted for an invention may not be declared invalid by reason only of the fact that the invention in question appears in a patent specification filed more than 50 years previously. Where national law normally provides for the issue of an injunction to prevent any infringement, that measure is justified under Article 36 in so far as it aims to preserve the actual substance of the patent right.

Citations:

C-35/87, R-35/87, [1988] EUECJ R-35/87, [1987] 3 CMLR 266

Links:

Bailii

Cited by:

CitedAttridge Law (A Firm of Solicitors) v Coleman and Law EAT 20-Dec-2006
The claimant asserted associative disability discrimination. She was the carer for her disabled son.
Held: To succeed the claimant would have to show that associative discrimination was prohibited by the directive and that the 1995 Act could . .
Lists of cited by and citing cases may be incomplete.

European, Litigation Practice, Intellectual Property

Updated: 23 May 2022; Ref: scu.134565

Edge and Sons Ltd v Niccolls and Sons Ltd: HL 21 Jul 1911

The plaintiffs had since 1884 manufactured washing-blue and sold it extensively in small bags with a wooden stick attached as a handle for use in washing. A patent was obtained for this method of wrapping the article, but was revoked in 1891. The bags were retailed without any maker’s name attached. No other manufacturer of washing-blue used this get-up for his goods until in 1909 the respondents began to do so, imitating exactly the bags and the wooden handle, but attaching a label with their own name. The plaintiffs sought for an injunction.
Held that the imitation of the get-up of the plaintiffs’ article amounted to a representation likely to deceive retail purchasers into believing they were buying the plaintiffs’ manufacture, and that the attachment of the respondents’ label was not a sufficient distinction, and injunction granted.

Judges:

Lord Chancellor (Loreburn), Lords Atkinson, Gorell, and Robson

Citations:

[1911] UKHL 670, 49 SLR 670

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 23 May 2022; Ref: scu.619208

Ice Mountain Ibiza v EUIPO – Marbella Atlantic Ocean Club (Ocean Ibiza): ECFI 25 May 2016

ECJ (Judgment) Brand of the European Union – Opposition proceedings – trade mark of the figurative EU ibiza ocean – Earlier national figurative marks OC and OC ocean club ocean club Ibiza – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8, paragraph 1 b) of Regulation (EC) No 207/2009

Citations:

T-6/15, [2016] EUECJ T-6/15, ECLI: EU: T: 2016 310

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 23 May 2022; Ref: scu.564882

Solen Cikolata Gida Sanayi Ve Ticaret v EUIPO – Zaharieva: ECFI 7 Feb 2018

Emballage Pour Cornets A Glace (Intellectual, Industrial and Commercial Property – Judgment – Community design – Invalidity proceedings – Registered Community design representing an ice cream cornet – Earlier international registration designating Bulgaria – Ground for invalidity – Use in the subsequent design of a distinctive sign the holder of which has the right to prohibit such use – Article 25(1)(e) of Regulation (EC) No 6/2002 – Obligation to state reasons – Article 62 of Regulation No 6/2002 – Duty of diligence – Article 63(1) of Regulation No 6/2002

Citations:

ECLI:EU:T:2018:70, [2018] EUECJ T-794/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 23 May 2022; Ref: scu.604739

The Smiley Company v OHMI (Representation De La Moitie D’Un Sourire De Smiley) (Intellectual Property): ECFI 29 Sep 2009

Europa Community trade mark – ‘ International registration designating the European Community Figurative mark representing half a smiley smile Absolute ground for refusal Lack of distinctive character Article 146(1) and Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 151(1) and Article 7(1)(b) of Regulation (EC) No 207/2009.

Citations:

T-139/08, [2009] EUECJ T-139/08

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 22 May 2022; Ref: scu.375418

Hydrotherm Geratebau gmbh v Compact del Dott Ing Mario andreoli and c Sas: ECJ 12 Jul 1984

Europa In competition law, the term ‘ undertaking ‘ must be understood as designating an economic unit for the purposes of the subject-matter of the agreement in question even if in law that economic unit consists of several persons, natural or legal. Regulation nr 67/67 of the commission on the application of article 85 (3) of the treaty to categories of exclusive dealing agreements must be applied even if several legally independent undertakings participate in the agreement as one contracting party provided that those undertakings constitute an economic unit for the purposes of the agreement. In those circumstances competition between the persons participating together, as a single party, in the agreement in question is impossible.
Regulation no 67/67 is applicable where the obligations entered into cover not only a defined area of the common market but also countries outside the community.
Article 3 (b) (1) of regulation no 67/67 must be interpreted as excluding an agreement from block exemption only if it is clear from the actual terms of the agreement or from the conduct of the parties that they intend to use, or are in fact using, an industrial property right in such a way as to prevent or impede, with the aid of that right, parallel imports into the territory covered by the exclusive dealership. The fact that an agreement does not contain any provision to prevent abuse of an industrial property right is not in itself a sufficient reason for excluding that agreement from the application of regulation no 67/67.

Citations:

[1984] ECR 2999, C-170/83, R-67/67, [1984] EUECJ R-67/67

Links:

Bailii

Cited by:

CitedAdidas-Salomon Ag v Drape and others ChD 7-Jun-2006
The claimants had sponsored tennis players to wear their logo. The respondents organised tennis tournaments whose intended rules would prevent the display of the claimant’s logos. The claimants said that the restriction interfered with their rights . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property, Commercial

Updated: 22 May 2022; Ref: scu.133688

Windsurfing International v Commission: ECJ 25 Feb 1986

Although the Commission is not competent to determine the scope of a patent, it is still the case that it may not refrain from all action when the scope of the patent is relevant for the purposes of determining whether there has been an infringement of article 85 or 86 of the treaty. Even in cases where the protection afforded by a patent is the subject of proceedings before the national courts, the Commission must be able to exercise its powers in accordance with the provisions of regulation no 17. The findings of the commission relating to the scope of a patent do not in any way pre-empt the determinations made later by national courts within their spheres of jurisdiction and are subject to review by the court of justice. That review must be limited to determining whether, in the light of the legal position existing in the state in which the patent was granted, the commission has made a reasonable assessment of the scope of the patent. The following clauses in patent licensing agreements do not fall within the specific subject-matter of the patent and are incompatible with article 85(1) of the treaty in so far as they restrict competition: quality controls to be exercised by the licensor either in respect of a product not covered by the patent or without being based on objective criteria laid down in advance, an obligation arbitrarily placed on the licensee only to sell the patented product in conjunction with a product outside the scope of the patent, a method of calculating royalties inducing the licensee to refuse to sell separately a product not covered by the patent, an obligation on the licensee to affix a notice of the patent to a product not covered by the patent, a no-challenge clause with regard to the licensor’ s trade-marks and patents, and a clause prohibiting the licensee from manufacturing the patented product in a country where it has no patent protection. In order for an agreement between undertakings to be regarded as affecting intra-community trade within the meaning of article 85(1) of the treaty, it is not necessary for each individual clause to be capable of affecting such trade. Only if the agreement as a whole is capable of affecting trade is it necessary to examine which are the clauses of the agreement which have as their object or effect a restriction or distortion of competition.

Citations:

C-193/83, [1986] EUECJ C-193/83

Links:

Bailii

European, Intellectual Property

Updated: 22 May 2022; Ref: scu.133714

Hoffman-La Roche v Centrafarm: ECJ 23 May 1978

ECJ (Judgement) 1. It is clear from article 36 of the EEC treaty, in particular its second sentence, as well as from the context, that whilst the treaty does not affect the existence of rights recognized by the laws of a member state in matters of industrial and commercial property, yet the exercise of those rights may nevertheless, depending on the circumstances, be restricted by the prohibitions contained in the treaty.
Inasmuch as it creates an exception to one of the fundamental principles of the common market, article 36 in fact admits of derogations from the free movement of goods only to the extent to which such exceptions are justified for the purpose of safeguarding the rights which constitute the specific subject-matter of that property.
2. In order to answer the question whether that exclusive right involves the right to prevent the trade-mark being affixed by a third person after the product has been repackaged, regard must be had to the essential function of the trade-mark, which is to guarantee the identity of the origin of the trade-marked product to the consumer or ultimate user, by enabling him without any possibility of confusion to distinguish that product from products which have another origin.
This guarantee of origin means that the consumer or ultimate user can be certain that a trade-marked product which is sold to him has not been subject at a previous stage of marketing to interference by a third person, without the authorization of the proprietor of the trade-mark, such as to affect the original condition of the product.
The proprietor of a trade-mark right which is protected in two member states at the same time is justified pursuant to the first sentence of article 36 of the treaty in preventing a product to which the trade-mark has lawfully been applied in one of those states from being marketed in the other member state after it has been repacked in new packaging to which the trade-mark has been affixed by a third party.
However, such prevention of marketing constitutes a disguised restriction on trade between member states within the meaning of the second sentence of article 36 of the treaty where;
– it is established that the use of the trade-mark right by the proprietor, having regard to the marketing system which he has adopted, will contribute to the artificial partitioning of the markets between member states;
– it is shown that repackaging cannot adversely affect the original condition of the product;
– the proprietor of the mark receives prior notice of the marketing of the repackaged product; and
– it is stated on the new packaging by whom the product has been repackaged.
3. To the extent to which the exercise of a trade-mark right is lawful in accordance with the provisions of article 36 of the treaty, such exercise is not contrary to article 86 of the treaty on the sole ground that it is the act of an undertaking occupying a dominant position on the market if the trade-mark right has not been used as an instrument for the abuse of such a position.

Citations:

[1978] ECR 1139, [1978] 3 CMLR 217, [1978] FSR 598, [1978] ECR I-1139, C-102/77, R-102/77, [1978] EUECJ R-102/77

Links:

Bailii

Statutes:

EEC Treaty 36 86

Cited by:

CitedOracle America Inc v M-Tech Data Ltd SC 27-Jun-2012
The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 21 May 2022; Ref: scu.132530

Centrafarm Bv and Others v Winthorp Bv: ECJ 31 Oct 1974

(Free Movement Of Goods)

Citations:

[1974] ECR 1183, C-16/74, R-16/74, [1974] EUECJ R-16/74

Links:

Bailii

Cited by:

CitedScandecor Developments AB v Scandecor Marketing AV and Others and One Other Action HL 4-Apr-2001
A business had grown, but the two founders split, and set up separate business. There was no agreement as to the use of the trading names and trade marks. The original law of Trade Marks prohibited bare exclusive licenses, licences excluding the . .
CitedMastercigars Direct Ltd v Hunters and Frankau Ltd CA 8-Mar-2007
An allegation was made that Cuban cigars imported by the claimant infringed the trade marks of the respondents being either counterfeit or parallel imports, and were impounded. The claimant sought a declaration of non-infringement and their release, . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 21 May 2022; Ref: scu.132357

EMI Records v CBS Grammofon: ECJ 15 Jun 1976

ECJ Neither the rules of the treaty on the free movement of goods nor those on the putting into free circulation of products coming from third countries nor, finally, the principles governing the common commercial policy, prohibit the proprietor of a mark in all the member states of the community from exercising his right in order to prevent the importation of similar products bearing the same mark and coming from a third country.
A trade-mark right, as a legal entity, does not possess those elements of contract or concerted practice referred to in article 85(1). Nevertheless the exercise of that right might fall within the ambit of the treaty if it were to manifest itself as the subject, the means, or the consequence of a restrictive practice.
A restrictive agreement between traders within the common market and competitors in third countries that would bring about an isolation of the common market as a whole which, in the territory of the community, would reduce the supply of products originating in third countries and similar to those protected by a mark within the community, might be of such a nature as to affect adversely the conditions of competition within the common market. In particular if the proprietor of the mark in dispute in the third country has within the community various subsidiaries established in different member states which are in a position to market the products at issue within the common market such isolation may affect trade between member states.

For article 85 to apply to cases of agreements which are no longer in force it is sufficient that such agreements continue to produce their effects after they have formally ceased to be in force. An agreement is only regarded as continuing to produce its effects if from the behaviour of the persons concerned there may be inferred the existence of elements of concerted practice and of coordination peculiar to the agreement and producing the same result as that envisaged by the agreement. This is not so when the said effects do not exceed those flowing from the mere exercise of the national trade-mark rights. And in particular when a foreign trader can obtain access to the common market without availing himself of the mark in dispute.
Although the trade-mark right confers upon its proprietor a special position within the protected territory this, however, does not imply the existence of a dominant position within the meaning of article 86 in particular where several undertakings whose economic strength is comparable to that of a proprietor of the mark operate in the market for the products in question and are in a position to compete with the said proprietor. Furthermore, in so far as the exercise of a trade-mark right is intended to prevent the importation into the protected territory of products bearing an identical mark, it does not constitute an abuse of a dominant position within the meaning of article 86 of the treaty.
In so far as the proprietor of a mark in the member states of the community may prevent the sale by a third party within the community of products bearing the same mark held in a third country, the requirement that such third party must, for the purposes of his exports to the community, obliterate the mark on the products concerned and perhaps apply a different mark forms part of the permissible consequences of the protection which the national laws of each member state afford to the proprietor of the mark against the importation of products from third countries bearing a similar or identical mark.

Citations:

C-86/75, R-86/75, [1976] EUECJ R-86/75

Links:

Bailii

European, Intellectual Property

Updated: 21 May 2022; Ref: scu.132296

EMI Records v CBS United Kingdom: ECJ 15 Jun 1976

ECJ Neither the rules of the Treaty on the free movement of goods nor those on the putting into free circulation of products coming from third countries nor, finally, the principles governing the common commercial policy, prohibit the proprietor of a treade mark in all the member states of the community from exercising his right in order to prevent the importation of similar products bearing the same mark and coming from a third country. Nor may the provisions of the treaty on the free movement of goods be invoked for the purpose of prohibiting the proprietor of the mark in the territories of the member states from exercising his right in order to prevent another proprietor of the same mark in a third country from manufacturing and marketing his products within the community, either himself or through his subsidiaries established in the community.
‘neither the rules of the Treaty on the free movement of goods nor those on the putting into free circulation of products coming from third countries nor, finally, the principles governing the common commercial policy, prohibit the proprietor of a mark in all the Member States of the Community from exercising his right in order to prevent the importation of similar products bearing the same mark and coming from a third country.’

Citations:

[1976] ECR 811, C-51/75, R-51/75, [1976] EUECJ R-51/75

Links:

Bailii

Cited by:

CitedLevi Strauss and Co and Another v Tesco Stores Ltd and Others ChD 31-Jul-2002
Pumfrey J discussed the principle of European law disallowing so called grey imports in breach of trade mark law, as set out in EMI v CBS, and said that it: ‘could hardly be clearer. It has formed, with the principle of exhaustion, the basis for the . .
CitedOracle America Inc v M-Tech Data Ltd SC 27-Jun-2012
The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 21 May 2022; Ref: scu.132217

Brandgroup v OHMI – Brauerei S Riegele, Inh. Riegele (Spezoomix): ECFI 1 Mar 2016

ECJ (Judgment) Community trade mark – Opposition proceedings – Application for Community word mark SPEZOOMIX – Earlier Community word mark Spezi – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No 207 / 2009

Citations:

T-557/14, [2016] EUECJ T-557/14, ECLI:EU:T:2016:116

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 20 May 2022; Ref: scu.560500

Parke, Davis and Co v Probel, Reese, Beintema-Interpharm and Centrafarm: ECJ 29 Feb 1968

ECJ The restrictive nature of article 85(1) is incompatible with any extension of the prohibition for which it provides beyond the three categories of agreement exclusively enumerated therein. The existence of the rights granted by a member state to the holder of a patent is not affected by the prohibitions contained in articles 85(1) and 86 of the treaty. The exercise of such rights cannot of itself fall either under article 85(1), in the absence of any agreement, decision or concerted practice prohibited by this provision, or under article 86, in the absence of any abuse of a dominant position. A higher sale price for the patented product as compared with that of the un-patented product coming from another member state does not necessarily constitute an abuse of a dominant position.

Citations:

C-24/67, [1967] ECR 55, [1968] CMLR 47, [1968] FSR 393, R-24/67, [1968] EUECJ R-24/67

Links:

Bailii

Cited by:

CitedRegina and The Secretary of State for Health v Association of Pharmaceutical Importers and Dowelhurst Limited CA 18-Dec-2001
The applicants sought to quash the Scheme in the 1999 Regulations by judicial review. Prescribers under the NHS are not directly concerned with price, and that led to the need for independent regulatory controls over prices. Those controls allowed . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 20 May 2022; Ref: scu.131853

William Grant and Sons Ltd v Glen Catrine Bonded Warehouse Ltd: OHCS 11 May 1999

The test for passing off is objective, and not dependant upon the intention of the defendant. Is it reasonably foreseeable that confusion would arise? A close similarity of the market also affected the issue.

Judges:

Lord Cameron of Lochbroom

Citations:

Times 11-May-1999, [1999] ScotCS 58

Links:

Bailii

Jurisdiction:

Scotland

Citing:

CitedLego System Aktieselskab v Lego M Lemelstrich Ltd ChD 1983
An association was claimed between irrigation equipment supplied by the defendant and plastic toy bricks made by the plaintiff.
Held: When looking for the likelihood of confusion in a passing off action between parties whose activities lie in . .

Cited by:

Appeal fromWilliam Grant and Sons Limited and others v Glen Catrine Bonded Warehouse Limited and others SCS 18-Aug-1999
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 20 May 2022; Ref: scu.90512

The Polo/Lauren Co LP v PT Dwidua Langgeng Pratama International Freight Forwarders Case: ECJ 14 Apr 2000

Council regulations empowered customs officers of member states to seize goods suspected of being counterfeit or pirated and in breach of Trade Mark and other laws This applied even to goods which were merely seized in transit through a member state, from a non-EU source to a non-EU destination. The validity of the regulation was not capable of doubt, and no factor had been identified which could challenge its validity. The wording of the regulation expressly envisaged such action.

Citations:

Times 14-Apr-2000, C-383/98, [2000] EUECJ C-383/98

Links:

Bailii

Cited by:

CitedNokia Corporation v Revenue and Customs ChD 27-Jul-2009
Nokia sought judicial review of a decision of the Commissioners to release a consignment of goods which it said were infringing counterfeits of its own models. The Commissioners said that in the absence of evidence that they were intended for . .
Lists of cited by and citing cases may be incomplete.

European, Customs and Excise, Intellectual Property

Updated: 20 May 2022; Ref: scu.89840

Stoddard International Plc v William Lomas Carpets Ltd: ChD 14 Feb 2001

The need for a defendant, accused of copying, to overcome the obstacle created by the similarity of his work with that of the claimant’s, did not remove entirely the claimant’s own obligation to prove his case. As the degree of similarity increased, so might the incredulity of the defendant’s denial of copying, and explanations. Nevertheless, the court should be slow to find for the claimant only on the issue of onus. Where the defendant received a brief which might lead to the production of work similar to the claimant’s was the selection of a design similar to the claimant’s an act of copying? It is a question of degree. Where the design specified would inevitably create a design similar to the claimant’s that was not itself to be taken as copying.

Citations:

Times 14-Feb-2001, Gazette 05-Apr-2001, [2001] FSR 44

Jurisdiction:

England and Wales

Cited by:

CitedPoint Solutions Ltd v Focus Business Solutions Ltd and Another ChD 16-Dec-2005
It was claimed that the defendant’s computer software infringed the copyright in software owned by the claimant. A declaration was sought beacause of allegations that assertions about infringement had been made to third parties.
Held: The . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 20 May 2022; Ref: scu.89571

Scandecor Development Ab v Scandecor Marketing Ab and Another (No 2): CA 7 Oct 1998

Actions for passing off and Trade Mark infringement tended to end up as factual disputes resolvable only after a full enquiry. ‘Not a branch of law in which references to these cases is of an real assistance.’

Citations:

Times 07-Oct-1998, [1998] EWCA Civ 1282

Jurisdiction:

England and Wales

Citing:

CitedReckitt and Coleman Properties Ltd v Borden Inc HL 1990
The plaintiffs claimed passing off of their ‘Jif Lemon’ trading style.
Held: It is no defence to an allegation of passing off that members of the public would not be misled if they were more literate, careful, perspicacious, wary or prudent. . .
Appeal fromScandecor Development Ab v Scandecor Marketing Ltd and Another ChD 9-Mar-1998
A company with same name as a registered trademark could trade under that name provided the use was honest and otherwise within the section. . .
CitedBowden Controls Ltd v Acco Cable Controls Ltd ChD 1990
The parties each made cable mechanisms for cars. There had been a patent dispute in Germany resulting in a finding of infringement, which finding was subject to appeal. A letter was sent in England referring to the German decision, stating that the . .

Cited by:

Appeal fromScandecor Developments AB v Scandecor Marketing AV and Others and One Other Action HL 4-Apr-2001
A business had grown, but the two founders split, and set up separate business. There was no agreement as to the use of the trading names and trade marks. The original law of Trade Marks prohibited bare exclusive licenses, licences excluding the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 20 May 2022; Ref: scu.89040

IBM Corporation/Data processor network: EPO 1990

A new method of communicating between programs and data files within the computer, so that they operated effectively as a single entity, was held by the Board to be properly ‘regarded as solving a problem which is essentially technical’ and therefore it did not fall foul of art 52(2). While programs for computers were included in the items listed in Article 52(2), if the claimed subject matter had a technical character it was not excluded from patentability.

Citations:

[1990] EPOR 91, 06/83

Jurisdiction:

England and Wales

Cited by:

CitedLantana Ltd v The Comptroller General of Patents, Design and Trade Marks CA 13-Nov-2014
The inventor company appealed against rejection of its application for a patent for a computer program.
Held: The appeal failed: ‘on the facts found by the Hearing Officer, the invention is no more than the computerisation of a process which . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 20 May 2022; Ref: scu.538770

Swatch v OHMI – Panavision Europe (Swatchball): ECFI 19 May 2015

ECJ Judgment – Community trade mark – Opposition proceedings – Application for Community word mark SWATCHBALL – Community word and figurative marks and international word and figurative marks SWATCH and swatch – Relative ground for refusal – Damage to reputation – Article 8(5) of Regulation (EC) No 207/2009

Judges:

M. Prek (Rapporteur), P

Citations:

T-71/14, [2015] EUECJ T-71/14, ECLI:EU:T:2015:293

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 8(5)

Jurisdiction:

European

European, Intellectual Property

Updated: 20 May 2022; Ref: scu.547048

Nutrexpa v OHMI – Kraft Foods Italia Intellectual Property (Cuetara Maria Oro): ECFI 21 May 2015

ECJ Judgment – Community trade mark – Opposition proceedings – Figurative Community trade mark Cuetara Maria ORO – Earlier Community and national figurative marks ORO – Partial refusal to register – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No 207/2009

Judges:

M. van der Woude (Rapporteur), P

Citations:

T-218/13, [2015] EUECJ T-218/13, ECLI: EU: T: 2015 305

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

Jurisdiction:

European

European, Intellectual Property

Updated: 20 May 2022; Ref: scu.547042

Formula One Licensing v OHMI – Idea Marketing (F1H2O): ECFI 21 May 2015

ECJ Judgment – Community trade mark – Opposition proceedings – International registration designating the European Community – Word mark F1H2O – Community, international, Benelux and national word and figurative marks with the element ‘F1’ – Relative grounds for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Unfair advantage taken of the distinctive character or reputation of the earlier trade marks – Article 8(5) of Regulation No 207/2009 – Rejection of the opposition

Judges:

D. Gratsias, P

Citations:

T-55/13, [2015] EUECJ T-55/13, ECLI:EU:T:2015:309

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 20 May 2022; Ref: scu.547039

Industrias Francisco Ivars v OHMI- Motive (Reducteurs) ): ECFI 6 Oct 2011

ECFI Community design – Invalidity proceedings – Community design registered representative of a speed reduction gear – Community design prior – Reason for invalidation – No Individual – No different overall impression – Article 6 and Article 25 paragraph 1 b) of Regulation (EC) No 6 / 2002

Citations:

T-246/10, [2011] EUECJ T-246/10

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 20 May 2022; Ref: scu.445429

Seattle Genetics Inc v Osterreichisches Patentamt: ECJ 6 Oct 2015

ECJ Judgment – Reference for a preliminary ruling – Intellectual and industrial property – Proprietary medicinal products – Regulation (EC) No 469/2009 – Article 13(1) – Supplementary protection certificate – Duration – Concept of the ‘date of the first authorisation to place the product on the market in the European Union’ – Whether account is to be taken of the date of the decision granting authorisation or the date on which notification was given of that decision

Citations:

C-471/14, [2015] EUECJ C-471/14

Links:

Bailii

Statutes:

Regulation (EC) No 469/2009 13(1)

Jurisdiction:

European

Intellectual Property

Updated: 20 May 2022; Ref: scu.553104

Guild v Eskander Ltd: 2003

Citations:

[2003] FSR 3

Jurisdiction:

England and Wales

Cited by:

CitedPoint Solutions Ltd v Focus Business Solutions Ltd and Another ChD 16-Dec-2005
It was claimed that the defendant’s computer software infringed the copyright in software owned by the claimant. A declaration was sought beacause of allegations that assertions about infringement had been made to third parties.
Held: The . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 May 2022; Ref: scu.237722

Kenrick and Co v Lawrence and Co: 1890

Ideas expressed by a copyright work may not be protected because, although they are ideas of a literary, dramatic or artistic nature, they are not original, or are so commonplace as not to form a substantial part of the work.

Citations:

(1890) 25 QBD 99

Jurisdiction:

England and Wales

Cited by:

CitedDesigners Guild Ltd v Russell Williams (Textiles) Ltd (Trading As Washington DC) HL 28-Nov-2000
Copyright Claim: Was it Copied, and How Much?
The claimant sought to enforce its copyright in artwork for a fabric design Ixia, saying the defendant’s design Marguerite infringed that copyright. Two issues faced the House. Just what had been copied and if any, then did this amount amount to the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 May 2022; Ref: scu.192011

Regina v Registered Designs Appeal Tribunal, Ex Parte Ford Motor Company Ltd: HL 14 Dec 1994

Car parts which had no effect on appearance and were merely parts were not registerable as Registered Designs.
The section applies only to items of design which will have their own independent use, and not only as part of a larger item. Registration was refused for the part in this case.

Judges:

Lord Keith, Lord Ackner, Lord Goff, Lord Mustill, Lord Slynn

Citations:

Gazette 22-Feb-1995, Times 16-Dec-1994, (1995) RTR 68, (1995] 1 WLR 18, [1994] UKHL 10, [1995] RPC 167

Links:

Bailii

Statutes:

Copyright Designs and Patents Act 1988 sch4, Registered Designs Act 1949 1(1) 44(1)

Intellectual Property

Updated: 19 May 2022; Ref: scu.87616

Pro 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 reversed. The test of use for ‘criticism or review’ is objective, and satisfied here with full attribution and short extract for clear journalistic purpose. Fair dealing was established through subjective test of the copiers intentions from the work as a whole: ”Criticism or review’ and ‘reporting current events’ are expressions of wide and indefinite scope. Any attempt to plot their precise boundaries is doomed to failure. They should be interpreted liberally’ and ‘Criticism of a work need not be limited to criticism of style. It may also extend to the ideas to be found in a work and its social or moral implications.’ and ‘It may be said that those words [‘The Plaintiff’s Film and/or the Plaintiff’s Broadcast and/or other media exploitation’ ] are very vague . . Nevertheless the judge should in my view have taken as his starting point that the appellants’ pleaded case was that the Carlton Programme was criticising various works representing the fruits of chequebook journalism, of which the TAFF report was one. The other (which might have been more particularised if Pro Sieben had pressed) were daily or weekly newspapers mentioned as having run stories on Ms Allwood or her partner or one or more of the other ‘ordinary people’ to whom ‘something extraordinary happens in their lives’. Four newspapers – the News of the World, the Sun, the Daily Mirror and the Daily Mail – were mentioned frequently in the Carlton programme, with shots of mastheads, headlines and parts of articles in those papers. Other newspapers (and one British television programme) received passing references.’ The judge ‘ . . . did not consider the possibility that [the programme’s use] might have been for the purpose of criticism or review of the TAFF report and the newspaper material mentioned above, taken collectively as a genre of the fruits of chequebook journalism’ Such use, thus described, was capable of falling within the section: ‘The Carlton programme as a whole was in my judgment made for the purpose of criticism of works of chequebook journalism in general, and in particular the (then very recent) treatment by the media of the story of Ms Allwood’s multiple pregnancy.’

Judges:

Robert Walker, Nourse, Henry LJJ

Citations:

Times 07-Jan-1999, Gazette 03-Feb-1999, [1999] FSR 160, [1999] 1 WLR 605, [1998] EWCA Civ 2001

Links:

Bailii

Statutes:

Copyright Designs and Patents Act 1988 30

Jurisdiction:

England and Wales

Citing:

Appeal fromPRO Sieben Media Ag v Carlton UK Television Ltd and Another ChD 24-Sep-1997
The laudable motives of the defendant in an infringement of copyright were no defence, but relieved him from liability for additional damages. . .
ConfirmedTime 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 . .

Cited by:

CitedDesigners Guild Ltd v Russell Williams (Textiles) Ltd (Trading As Washington DC) HL 28-Nov-2000
Copyright Claim: Was it Copied, and How Much?
The claimant sought to enforce its copyright in artwork for a fabric design Ixia, saying the defendant’s design Marguerite infringed that copyright. Two issues faced the House. Just what had been copied and if any, then did this amount amount to the . .
CitedFraser-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: . .
CitedHyde Park Residence Ltd v Yelland, News Group Newspapers Ltd, News International Ltd, Murrell CA 10-Feb-2000
The court considered a dispute about ownership and confidence in and copyright of of video tapes taken by Princess Diana before her death.
Held: The courts have an inherent discretion to refuse to enforce of copyright. When assessing whether . .
CitedEsure Insurance Ltd v Direct Line Insurance Plc ChD 29-Jun-2007
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted . .
CitedMehdi Norowzian v Arks Ltd and Guinness Brewing Worldwide Limited (No 2) CA 11-Nov-1999
The claimant film artist showed a film to an advertising agency, who did not make use of it, but later appeared to use techniques and styles displayed in the film in subsequent material sold to third parties.
Held: A film was protected as a . .
CitedIPC Media Ltd v News Group Newspapers Ltd ChD 24-Feb-2005
The defendant sought to advertise its new TV listings magazine, and to do so reproduced in its advert a copy of the front page of the equivalent magazine published by the claimant. The claimant sought damages for copyright infringement. The . .
MentionedLucasfilm Ltd and Others v Ainsworth and Another SC 27-Jul-2011
The claimant had produced the Star War films which made use of props, in particular a ‘Stormtrooper’ helmet designed by the defendant. The defendant had then himself distributed models of the designs he had created. The appellant obtained judgment . .
CitedThe 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 . .
CitedHeythrop Zoological Gardens Ltd (T/A Amazing Animals) and Another v Captive Animals Protection Society ChD 20-May-2016
The claimant said that the defendant had, through its members visiting their premises, breached the licence under which they entered, by taking photographs and distributing them on the internet, and in so doing also infringing the performance rights . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 May 2022; Ref: scu.85045

PRO Sieben Media Ag v Carlton UK Television Ltd and Another: ChD 24 Sep 1997

The laudable motives of the defendant in an infringement of copyright were no defence, but relieved him from liability for additional damages.

Citations:

Times 24-Sep-1997

Statutes:

Copyright Designs and Patents Act 1988 97(2)

Jurisdiction:

England and Wales

Cited by:

Appeal fromPro 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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 May 2022; Ref: scu.85047

Regina v Department of Health, Ex Parte Source Informatics Ltd: Admn 28 May 1999

The damage to be shown to found a claim of breach of confidence need only be slight, if real, particularly in the context of personally sensitive materials. The NHS was correct to advise against the supply by pharmacists of anonymised data to outside agencies. This was a use outside the intention of the owner of the confidence, and would be in breach.

Citations:

Times 14-Jun-1999, [1999] EWHC Admin 510

Links:

Bailii

Intellectual Property, Information

Updated: 19 May 2022; Ref: scu.85218

Regina v Department of Health, Ex Parte Source Informatics Ltd: CA 21 Dec 1999

Where information was given by a patient to the pharmacist, and he took the data, stripping out any possibility of the individual being identified, the duty of confidence which attached to the prescription was not breached by the passing on of the reduced quantity information to a third party who wished to provide a statistical analysis of the prescriptions filled.

Judges:

Lord Justice Simon Brown Lord Justice Aldous And Lord Justice Schiemann

Citations:

Times 18-Jan-2000, [2001] QB 423, [1999] EWCA Civ 3011

Links:

Bailii

Statutes:

Data Protection Act 1998, Directive 95/46/EC on the protection of individuals with regard to the processing of personal data and on the free movement of such data

Jurisdiction:

England and Wales

Citing:

CitedSeager v Copydex Ltd CA 1967
Mr Seager had invented a patented carpet grip which he manufactured and marketed under the trade mark Klent. There were protracted negotiations between Mr Seager and Copydex over a proposal for Copydex to market the Klent. One of the issues in the . .
CitedMoorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) 1984
The court approved ‘the adaptation of the traditional doctrine of passing off to meet new circumstances involving the deceptive or confusing use of names, descriptive terms or other indicia to persuade purchasers or customers to believe that the . .
CitedCoco v A N Clark (Engineers) Ltd ChD 1968
Requirememts to prove breach of confidence
A claim was made for breach of confidence in respect of technical information whose value was commercial.
Held: Megarry J set out three elements which will normally be required if, apart from contract, a case of breach of confidence is to . .

Cited by:

CitedAxon, Regina (on the Application of) v Secretary of State for Health and Another Admn 23-Jan-2006
A mother sought to challenge guidelines issued by the respondent which would allow doctors to protect the confidentiality of women under 16 who came to them for assistance even though the sexual activities they might engage in would be unlawful.
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Health Professions, Information

Updated: 19 May 2022; Ref: scu.85219

Premier Brands Uk Ltd v Typhoon Europe Ltd: ChD 3 Feb 2000

The claimants owned a major brand mark used in the distribution of tea. The defendants operated in the sale of kitchen equipment. Whether a sign infringed a mark without due cause was to be resolved at trial by the judge on the facts. The infringer had to show that he had good cause for his use, and that was not discharged merely by demonstrating good faith. In this case however there was no evidence of any damage to the claimant’s Mark’s distinctive character or repute.

Citations:

Gazette 03-Feb-2000, Times 22-Feb-2000

Statutes:

Trade Marks Act 1994 10 (3)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 May 2022; Ref: scu.85018

Premier Luggage and Bags Ltd v Premier Company (Uk) Ltd and Another: ChD 17 Oct 2000

The word ‘Premier’ although devoid of distinctive character in itself, but having been registered as a trade mark, had acquired a sufficient distinctiveness to justify and found an action for infringement and passing off. The test was whether through use of the trademark, a sufficient number both of potential purchasers of the claimants goods, and also of actual purchasers had come to associate goods with the claimant because of the trade mark.

Citations:

Times 17-Oct-2000

Statutes:

Trade Marks Act 1994 3(1)

Jurisdiction:

England and Wales

Cited by:

Appeal fromPremier Luggage and Bags Ltd v The Premier Company (UK) Ltd and Another CA 26-Mar-2002
The owner of a registered trade mark ‘Premier’ sued for swing tags which carried the defendant’s full name ‘The Premier Company (UK) Ltd.’.
Held: A trade mark use can fall within the scope of the Art 6.1 defence. There there was no passing off . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 May 2022; Ref: scu.85020

Mehdi Norowzian v Arks Ltd and Guinness Brewing Worldwide Limited (No 2): CA 11 Nov 1999

The claimant film artist showed a film to an advertising agency, who did not make use of it, but later appeared to use techniques and styles displayed in the film in subsequent material sold to third parties.
Held: A film was protected as a dramatic work subject to copyright law, but not the artistic techniques demonstrated in it. ‘[W]here it is not suggested that the judge has made any error of principle a party should not come to the Court of Appeal simply in the hope that the impression formed by the judges in this court, or at least by two of them, will be different from that of the trial judge.’ As to jurisdiction: ‘On the other hand the standards applied by the law in different context vary a great deal in precision and generally speaking, the vaguer the standard and the greater the number of factors which the court has to weigh up in deciding whether the standards have been met, the more reluctant an appellant court will be to interfere with the trial judge’s decision.’

Judges:

Buxton, Nourse, Brooke LJJ

Citations:

Times 11-Nov-1999, Gazette 25-Nov-1999, [2000] FSR 363, [2000] EMLR 67, [1999] EWCA Civ 3014, [1999] EWCA Civ 3018, [2000] ECDR 205

Links:

Bailii, Bailii

Statutes:

Copyright Designs and Patents Act 1988

Jurisdiction:

England and Wales

Citing:

Appeal fromNorowzian v Arks Limited and Others ChD 17-Jul-1998
A film whose defining and innovative characteristic was the editing which produced stylised jumps in the action, which were incapable of performance by the actor, was not a dramatic work protected by copyright. A film per se cannot be a dramatic . .
CitedBiogen Plc v Medeva Plc HL 31-Oct-1996
The claim patented sought to protect a genetic molecule rather than a whole mouse namely that the molecule would, if inserted into a suitable host cell, cause the cell to make antigens of the Hepatitis B virus. A recombinant method of making the . .
CitedEx parte Firth , In re Cowburn 1882
The court considered the practice where a point of law was raised first only on appeal: ‘the rule is that, if a point was not taken before the tribunal which hears the evidence, and evidence could have been adduced which by any possibility would . .
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 . .

Cited by:

CitedAssicurazioni Generali Spa v Arab Insurance Group (BSC) CA 13-Nov-2002
Rehearing/Review – Little Difference on Appeal
The appellant asked the Court to reverse a decision on the facts reached in the lower court.
Held: The appeal failed (Majority decision). The court’s approach should be the same whether the case was dealt with as a rehearing or as a review. . .
CitedDesigners Guild Ltd v Russell Williams (Textiles) Ltd (Trading As Washington DC) HL 28-Nov-2000
Copyright Claim: Was it Copied, and How Much?
The claimant sought to enforce its copyright in artwork for a fabric design Ixia, saying the defendant’s design Marguerite infringed that copyright. Two issues faced the House. Just what had been copied and if any, then did this amount amount to the . .
CitedBessant and others v South Cone Incorporated; in re REEF Trade Mark CA 28-May-2002
The Reef pop group applied to register ‘REEF’ for Classes 25 and 26 – e.g. T-shirts, badges, etc. South Cone opposed them as registered proprietors of ‘Reef Brazil’ for the footwear which also was included in Class 25. South’s reputation was . .
CitedMastercard International Incorporated v Hitachi Credit (Uk) Plc ChD 8-Jul-2004
The claimants challenged award of a trade mark saying they were owners of many marks incorporating the word ‘Master’ associated with credit, and the applicants mark was too similar to its own.
Held: Applying Davidoff, the words can also be . .
CitedCelador Productions Ltd v Melville ChD 21-Oct-2004
The applicants each alleged breach of copyright and misuse of confidential information in the format of the television program ‘Who wants to be a Millionaire’. The defendant appealed a refusal to strike out the claim. It was not contended that no . .
CitedHarding v Wealands CA 17-Dec-2004
The claimant sought damages here for a road traffic accident which had occurred in Australia. The defendant was working in England. The defendant argued that the law of New South Wales applied.
Held: The general rule in section 11 was not to . .
CitedNova Productions Ltd v Mazooma Games Ltd and others CA 14-Mar-2007
The defendant appealed against a finding of copyright infringement in a computer game.
Held: The appeal failed. The court must identify the artistic work relied upon and then decide whether it has been reproduced by copying of the work as a . .
CitedEsure Insurance Ltd v Direct Line Insurance Plc ChD 29-Jun-2007
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted . .
CitedNova Productions Ltd v Mazooma Games Ltd and others ChD 20-Jan-2006
The claimant alleged copyright infringement in respect of computer games in the coin operated video market. It was said not that the games copied bitmap graphics, but rather the composite frames which appeared on the screen.
Held: The games . .
CitedMeakin v British Broadcasting Corporation and Others ChD 27-Jul-2010
The claimant alleged that the proposal for a game show submitted by him had been used by the various defendants. He alleged breaches of copyright and of confidence. Application was now made to strike out the claim. . .
ApprovedLucasfilm Ltd and Others v Ainsworth and Another SC 27-Jul-2011
The claimant had produced the Star War films which made use of props, in particular a ‘Stormtrooper’ helmet designed by the defendant. The defendant had then himself distributed models of the designs he had created. The appellant obtained judgment . .
Lists of cited by and citing cases may be incomplete.

Media, Intellectual Property

Updated: 19 May 2022; Ref: scu.84335

Island Records Ltd v Tring International Plc and Another: ChD 12 Apr 1995

A copyright plaintiff may delay the choice of his remedy between damages and account of profits until information was available from the defendant which would allow him to gauge which remedy suited him best. The court may make the orders necessary for such discovery.

Judges:

Lightman J

Citations:

Times 28-Apr-1995, [1995] EWHC 8 (Ch), [1995] FSR 560, [1995] 3 All ER 444

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

CitedPersonal Representatives of Tang Man Sit v Capacious Investments Ltd PC 18-Dec-1995
The claimant, Capacious Investments Ltd, brought proceedings against Tang’s estate for damages for the loss of use and occupation, and also an account of profits and damages for loss and damage incurred, for example by encumbering the property with . .
CitedRamzan v Brookwide Ltd CA 19-Aug-2011
The defendant had broken through into a neighbour’s flying freehold room, closed it off, and then included it in its own premises for let. It now appealed against the quantum of damages awarded. The judge had found the actions deliberate and with a . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Damages

Updated: 19 May 2022; Ref: scu.82432

Hermes International v FHT Marketing: ECJ 9 Sep 1998

Where interim orders had been granted following seizure of goods under TRIPS agreement, the court gave guidance on what characteristics where required for it to be considered provisional measures under TRIPS and so imposed time limits.
ECJ Agreement establishing the World Trade Organisation – TRIPS Agreement – Article 177 of the Treaty – Jurisdiction of the Court of Justice – Article 50 of the TRIPS Agreement – Provisional measures

Citations:

Gazette 09-Sep-1998, C-53/96, Ecj/Cfi Bulletin 16/98, [1998] EUECJ C-53/96

Links:

Bailii

Statutes:

Council Decision 94/800/EC Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)

Cited by:

CitedForensic 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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 19 May 2022; Ref: scu.81344

eFax Com Inc v Oglesby: ChD 25 Jan 2000

The claimant, an American company claimed in passing off against the defendant. It had come into the UK market and established a free service under the name. The defendant had operated a paid for service under the same name from some time before.
Held: The claim should proceed, but an interim injunction was refused. In passing off, the words claimed to establish a reputation in the goods had to be more than descriptive. Words which might once have been distinctive could become descriptive by general usage, as had happened in this case. The common stock of language conception was becoming increasingly difficult to apply. Here the use of the word ‘efax’ had become descriptive. Any confusion or association between the two companies arose from the common meaning of the words and not from any reputation in the name belonging to the claimant.

Judges:

Parker J

Citations:

Times 16-Mar-2000, Unreported, 25 January 2000

Intellectual Property

Updated: 19 May 2022; Ref: scu.80268

Discovery Communications Inc v Discovery Fm Ltd: IHCS 25 Jan 2000

It was no defence to an action for trade mark infringement to assert that although the registration covered activities of the type undertaken, the claimant did not actually provide services of that precise type. It is in the nature of such registrations that they reserve to the mark holder the right to develop his activities within the registration class.

Citations:

Times 25-Jan-2000

Statutes:

Trade Marks Act 1994 10

Intellectual Property, Scotland

Updated: 19 May 2022; Ref: scu.80063

Decon Laboratories Ltd v Fred Baker Scientific Ltd and Another: ChD 28 Feb 2001

The procedure for applying for the registration of a European Trade Mark did not involve the same issues as applied in England as to the use of the mark within the first five years, nor any statement of a bona fide intention to use the mark. Only exceptionally therefore could a European Trade Mark be revoked for non-use. An English Court dealing with a European Trade Mark, sits as a European court.

Citations:

Times 28-Feb-2001, [2001] RPC 293

Statutes:

Trade Marks Act 1994 10(1) 46(5)

Cited by:

CitedAsprey and Garrard Ltd v WRA (Guns) Ltd and Another CA 11-Oct-2001
The Asprey family had been in business for many years. Their business was incorporated, and later sold to the claimants. A member of the Asprey family sought to carry on new businesses through limited companies using the family name. Upon request, . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 May 2022; Ref: scu.79866

David J Instance Ltd and Another v Denny Brothers Printing Ltd: CA 20 Jun 2001

In a case where a patent was being challenged for obviousness, the judge was not necessarily obliged to follow the structured approach recommended in the Windsurfing International case. Here the judge had gone straight to the issue at the heart of the case, had properly assumed the mantle of a skilled person, and had asked himself the correct questions. The judge’s decsion should be set aside only if an error in principle could be shown.

Citations:

Times 22-Jun-2001, [2001] EWCA Civ 939, [2002] RPC 14

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

CitedWindsurfing International Inc v Tabur Marine (Great Britain) Limited CA 1985
Testing Validity of a Patent
A patent was challenged where the windsurf board had been shown as a primitive prototype to have been built and used in public by a twelve year old boy. The court set out the four steps required to be taken when ascertaining the validity of a . .
See AlsoInstance and Others v Denny Bros Printing Ltd and Others ChD 3-Feb-2000
The dispute arose between parties to without prejudice communications or who had obtained documents from such persons and were commercially connected with them.
Held: An implied agreement would bind them as parties or by reason of the source . .
Appeal fromDavid J Instance Ltd, David J Instance v Denny Bros Printing Ltd PatC 14-Apr-2000
. .

Cited by:

AppliedIstituto Gentili Spa Merck and Co Inc v Teva Pharmaceutical Industries Ltd, Arrow Generics Ltd Generics UK Ltd CA 6-Nov-2003
When a party appealed a patent judge’s conclusions as to obviousness of a patent under challenge, that party should put before the court a summary showing succinctly what principles of law the judge had infringed. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 May 2022; Ref: scu.79824

Celanese International Corporation and Another v Bp Chemicals Ltd and Another: ChD 5 Nov 1998

A plaintiff alleging infringement of a patent and choosing an account of profits rather than damages, was entitled to assume that the defendant traded as an agent for the plaintiff and take his profits limited to the trading enabled by the infringement.

Citations:

Times 05-Nov-1998

Intellectual Property

Updated: 19 May 2022; Ref: scu.78951

Buehler Ag v Chronos Richardson Ltd: CA 20 Mar 1998

The rejection of an opposition claim to a European Patent by the European Patents Office, did not create an estoppel for an English Court looking at a similar issue.

Judges:

Roch, Aldous LJJ

Citations:

Times 03-Apr-1998, [1998] 2 All ER 960, [1998] EWCA Civ 509

Links:

Bailii

Statutes:

Patents Act 1977 72

Jurisdiction:

England and Wales

Cited by:

CitedSpecial 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, European

Updated: 18 May 2022; Ref: scu.78729

British Broadcasting Corporation v Talksport Ltd: ChD 29 Jun 2000

The tort of passing off depended upon there being some goodwill capable of being relied upon. Words which were merely descriptive of the service offered, such as ‘live sports broadcasting,’ were incapable of carrying any goodwill, and accordingly a service of broadcasting live commentary but based upon other broadcasts was not a passing off when describing itself as such.

Citations:

Times 29-Jun-2000, Gazette 06-Jul-2000

Intellectual Property, Media

Updated: 18 May 2022; Ref: scu.78614

British Horseracing Board Ltd v William Hill Organisation Ltd: PatC 9 Feb 2001

The defendants received data, prepared and distributed by the claimants, regarding horse races, and incorporated the information into their web pages as part of a betting service. There might have been other, indirect, ways of obtaining the same data, but in practice they would rely on data received by a third party from the claimant. The claimant asserted breach of its database rights. The right protected the data, not just the way it was organised. The Directive required only that a substantial part of the contents of the database should be copied. There was no need to show a direct derivation.

Judges:

Laddie J

Citations:

Times 23-Feb-2001, [2001] EWHC 517 (Patents)

Links:

Bailii

Statutes:

Copyright and Rights in Databases Regulations 1997 (1997 No 3032)

Cited by:

Appeal fromBritish Horseracing Board Ltd and Others v William Hill Organization Ltd CA 31-Jul-2001
The Board had established a database of information about horse racing. It was costly. The defendants recovered the information from a licensed user, and used it for its own business purposes. It was not suggested that the licensee had any right to . .
Appeal fromBritish Horseracing Board Ltd and Another v William Hill Organization Ltd CA 13-Jul-2005
The Court allowed William Hill’s appeal, holding that BHB had not established that the ECJ had given its earlier ruling on the basis of an erroneous assumption of fact and that the result of applying the ruling was that BHB’s Database did not fall . .
At First InstanceThe British Horseracing Board Ltd and Others v William Hill Organization Ltd ECJ 9-Nov-2004
bhb_whECJ2004
The claimant sought to prevent re-use by the defendant of information from its horse racing subscription service. They claimed that they had a database right in the information. It cost andpound;4m per year to assemble.
Held: The expression . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 May 2022; Ref: scu.78629

Beloit Technologies Inc and Another v Valmet Paper Machinery Inc and Another: ChD 12 May 1995

The judge urged that the Convention should be incorporated into English law without rephrasing difficult clauses: ‘it helps no-one for the Parliamentary draftsman to re-write matter in a treaty or convention (or EU directive for that matter) which is to be implemented in the United Kingdom. If the language of the basic document is obscure or less than complete it makes things worse if the Parliamentary draftsman tries to ‘clarify’ it in some other words. Where he does, he simply causes extra complications (and therefore legal uncertainty and costs) . . The point at which obscurities should be avoided is in the underlying international document. If they are unfortunately there, it is too late for our Parliamentary draftsman to help and the problem must be left for industry to pay for in the courts. The particular question here is a typical example of what could be avoided by simply adopting the language of the underlying document as it stands.’

Judges:

Jacob J

Citations:

Times 12-May-1995, [1995] RPC 705

Statutes:

Patents Act 1977 6(1)

Cited by:

CitedCommissioners of Customs and Excise v Century Life Plc CA 19-Dec-2000
The Directive required member states to exempt from VAT, services involving the provision of insurance, and for intermediaries. Following the Regulator’s involvement, the principal company had to arrange for the checking of existing policies, and . .
CitedSynthon Bv v Smithkline Beecham Plc HL 20-Oct-2005
Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the . .
CitedYeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc and others CA 31-Jul-2006
The claimants sought to amend their claim which had previously been on the basis of a joint ownership, to one of sole ownership.
Held: The application for the amendment being made more han two years after the grant, the amendment could not be . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 May 2022; Ref: scu.78327

Biosource Technologies Inc v Axia Genetics Plc (In Administration): ChD 25 Nov 1999

The rule which prevents a company in administration being prosecuted without the leave of the court, was not intended only to restrict creditors. Here another company wanted to bring patent infringement proceedings, but were first to be required to obtain the court’s consent.

Citations:

Times 25-Nov-1999, Gazette 25-Nov-1999

Statutes:

Insolvency Act 1986 11(3)(d)

Insolvency, Litigation Practice, Intellectual Property

Updated: 18 May 2022; Ref: scu.78409

Bank of Scotland v Dunedin Property Investment Co Ltd: IHCS 24 Sep 1998

Issue of loan stock supported by charge for ‘all costs charges and expenses incurred’ this included the breakage cost of the bank in setting up interest-rate swap arrangements to protect itself against swings in costs.

Judges:

Lord President (Rodger

Citations:

Times 24-Sep-1998, 1998 SC 658

Citing:

Appeal fromBank of Scotland v Dunedin Property Investment Co Ltd OHCS 16-May-1997
The cost of an interest rate swap brokerage agreement was not covered by an indemnity against ‘all costs charges and expenses incurred’. . .

Cited by:

Appealed toBank of Scotland v Dunedin Property Investment Co Ltd OHCS 16-May-1997
The cost of an interest rate swap brokerage agreement was not covered by an indemnity against ‘all costs charges and expenses incurred’. . .
CitedAMEC Mining v Scottish Coal Company SCS 6-Aug-2003
The pursuers contracted to remove coal by opencast mining from the defender’s land. They said the contract assumed the removal first of substantial peat depositys from the surface by a third party. They had to do that themselves at substantial cost. . .
See AlsoThe Governor and Company of the Bank of Scotland v Dunedin Property Investment Company Ltd OHCS 8-Jun-1999
. .
CitedProfile Software Ltd v Becogent Ltd OHCS 16-Feb-2005
The pursuers claimed for breach of copyright and of a software licence. The defendants disputed the title or right of the pursuers to claim.
Held: The assignation of the rights in the software carried with it the rights to enforce intellectual . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contract, Scotland

Updated: 18 May 2022; Ref: scu.78162

Barclays Bank Plc v RBS Advanta: ChD 8 Feb 1996

A party complaining about the use of a trade mark in a comparative advert is required to show some dishonesty. Section 10(6) of the Act was described as ‘home grown’ rather than derived directly from the Directive.

Judges:

Laddiie J

Citations:

Times 08-Feb-1996, [1996] RPC 307

Statutes:

Trade Marks Act 1994 10(6)

Cited by:

CitedBritish Airways Plc v Ryanair Limited ChD 25-Oct-2000
The claimant alleged that disparaging adverts by the defendant infringed its trade marks and amounted to the tort of malicious falsehood.
Held: There was no dispute that the mark had been used. The Act could not be used to prevent any use of . .
CitedVodafone Group Plc v Orange Personal Communications Services Ltd ChD 1997
The court examined the development of the law in relation to comparative advertising. Jacob J said: ‘Prior to the coming into force of the Trade Marks Act 1994 comparative advertising using a registered trade mark of a competitor was, subject to . .
CitedCable and Wireless plc v British Telecommunications plc ChD 1998
The court set out the applicable legal principles in trade mark infringement. The court considered the elements necessary to establish a defence under s10(6): The primary objective of section 10(6) of the 1996 Act is to permit comparative . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 May 2022; Ref: scu.78216

Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks: PatC 4 Sep 2013

Peter Prescott QC J set out the four steps to be taken: ‘The approach is in four steps:
‘(1) properly construe the claim;
(2) identify the actual contribution;
(3) ask whether it falls solely within the excluded subject matter;
(4) check whether the actual or alleged contribution is actually technical in nature.’ (see Aerotel at [40] per Jacob LJ giving the judgment of this court).’

Judges:

Peter Prescott QC J

Citations:

[2013] EWHC 2673 (Pat)

Links:

Bailii

Statutes:

Patents Act 1977 1

Jurisdiction:

England and Wales

Citing:

Appeal fromLantana Ltd (Patent) IPO 4-Feb-2013
IPO The application relates to retrieving data from a remote computer using e-mail. A local computer sends a first e-mail containing machine-readable retrieval criteria and the remote computer responds with an . .
CitedAerotel Ltd v Telco Holdings Ltd and others, In re Patent Application GB 0314464.9 in the name of Neal Macrossan Rev 1 CA 27-Oct-2006
In each case it was said that the requested patent concerned an invention consisting of a computer program, and was not therefore an invention and was unpatentable. In one case a patent had been revoked on being challenged, and in the other, the . .
CitedHTC Europe Co Ltd v Apple Inc CA 3-May-2013
Appeal against two findings that two patents relating to touch sensitive screens were invalid for obviousness in the light of prior art.
Held: It was appropriate for the court, when considering the patentability of computer programs, to adhere . .

Cited by:

Appeal fromLantana Ltd v The Comptroller General of Patents, Design and Trade Marks CA 13-Nov-2014
The inventor company appealed against rejection of its application for a patent for a computer program.
Held: The appeal failed: ‘on the facts found by the Hearing Officer, the invention is no more than the computerisation of a process which . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 May 2022; Ref: scu.515316