Category: Intellectual Property

Intuit Inc (Patent): IPO 3 Feb 2012

IPO Patent application GB0915496.4, entitled ‘Method and system for generating a dynamic help document’, relates to generating a dynamic help document, which document comprises questions and answers (question-answer pairs) associated with a client-server application. Such a help document provides software users with assistance to understand the features of a computer application and/or how to make optimal use of these features. The questions and answers are pre-existing ones, and relate to those features thought to be most relevant to the largest number of customers using the computer application. The invention lies in ranking each question and answer according to user feedback, so that the questions and answers receiving the most favourable feedback are ranked first. The help document can be continually updated according to the most recent user feedback (hence a ‘dynamic help document’).
Applying the Aerotel/Macrossan test, as modified by Symbian and the ATandT/CVON signposts,, the hearing officer found that the contribution of this invention lay in automatically generating an updated help document at a server using rankings based on user feedback about an existing help document to determine question-answer pairs for inclusion in the updated help document. The invention does not reduce the risk of a problem arising in the computer system itself; rather, it attempts to reduce the risk of an operator, when using an application on the computer, not being able to find a suitable piece of information in a help document as readily as if the dynamic help document were not there.
The invention was thus found to be a program for a computer as such, which is matter excluded under s.1(2), and it was refused under s.18(3).

Judges:

Dr L Cullen

Citations:

[2012] UKIntelP o04512, O/045/12, GB 0915496.4

Links:

Bailii

Intellectual Property

Updated: 31 October 2022; Ref: scu.459994

Ability International Limited, Michael John Scanlon Holborn, Graham Neil Alston and David Rose (Patent): IPO 6 Feb 2012

As a result of an uncontested application filed under Section 13(3) by Ability International Limited, the comptroller found that David Rose should not have been mentioned as an inventor in the published patent application and granted patent. The decision serves as a certificate to this effect. The comptroller also directed that an addendum slip be prepared for the published patent application and granted patent stating that David Rose should not have been mentioned as an inventor.

Judges:

Mrs S Williams

Citations:

[2012] UKIntelP o04712

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 31 October 2022; Ref: scu.459977

Agilent Technologies Inc (Patent): IPO 27 Feb 2012

In this decision on the papers the invention related to managing the memory of a mass spectrometer computing system by purging infrequently used data objects when spare memory was running low while still keeping enough information to be able to recreate said objects should they be needed again. The Hearing Officer applied the Aerotel/Macrossan test and decided that the contribution made by the invention fell solely within excluded matter. He also considered the Court of Appeal decision in Symbian and the decision in ATandT and Cvon and concluded that the contribution did not have a relevant technical effect. Further, unlike the contributions in Vicom and Waters Investments (BL O/146/07), it did not result in better measurement data or an improved data processing method. The application was thus refused as no more than a program for a computer as such.

Citations:

[2012] UKIntelP o08912

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 31 October 2022; Ref: scu.459980

General Electric Company (Patent): IPO 20 Jan 2012

IPO The application relates to a method of predicting the behaviour of a process using a computer program. It was accepted that predicting the behaviour of a process is excluded under section 1(2) as being a computer program as such, unless the prediction is used for control or diagnostic purposes. Amendments to the claims were proposed which would add a step to evaluate or optimise the process based on the prediction. Support for the proposed amendments was identified in the description. The Hearing Officer referred the application back to the examiner for continued processing.

Judges:

Mr H Jones

Citations:

[2012] UKIntelP o01812, O/018/12, GB0624556.7

Links:

Bailii

Statutes:

Patents Act 1977 1(2) 76(2)

Intellectual Property

Updated: 31 October 2022; Ref: scu.459956

Samsung Electronics (UK) Ltd v Apple Inc: CA 30 May 2012

Samsung sought a declaration that it’s Galaxy tablet did not infringe Apple’s registered Community Design right. Apple now appealed against a refusal of a stay of the action. The court considered the possible jurisdictions to hear applications for declarations of non-infringement.
Held: ‘on our reading of article 91(1) it does not require that Samsung’s claim should be stayed, despite Apple’s counterclaim, but it does require Apple’s counterclaim to be stayed, unless there are special grounds for ‘continuing the hearing’, that is to say for allowing it to proceed without imposing a stay. ‘

Judges:

Lord Neuberger MR, Lloyd, Moore-Bick LJJ

Citations:

[2012] WLR(D) 166, [2012] EWCA Civ 729

Links:

Bailii

Statutes:

Council Regulation (EC) No 6/2002 on Community designs 91(1)

Jurisdiction:

England and Wales

Citing:

Appeal from – Samsung Electronics (UK) Ltd and Another v Apple Inc ChD 4-Apr-2012
The parties were engaged in worldwide litigation disputing an alleged infringement of Apple’s registered design by Samsung’s Galaxy tablet computer. In this case, Samsung sought a declaration of non-infringement. Apple counterclaimed, alleging . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 31 October 2022; Ref: scu.459843

Retractable Technologies v OHMI – Abbott Laboratories (Rt): ECFI 22 May 2012

ECFI Community trade mark – Opposition proceedings – Application for Community figurative RT – Earlier national word mark RTH – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1, sub b) of Regulation (EC) No 207/2009

Judges:

Czucz P

Citations:

T-371/09, [2012] EUECJ T-371/09

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 31 October 2022; Ref: scu.459672

Kraft Foods Global Brands v OHMI – Fenaco (Suisse Premium): ECFI 22 May 2012

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark PREMIUM SWITZERLAND – Earlier Community figurative mark Premium – Relative ground for refusal – No likelihood of confusion – Opposition rejected – Article 8, paragraph 1, sub b), Regulation (EC) No 207/2009

Citations:

T-60/11, [2012] EUECJ T-60/11

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 31 October 2022; Ref: scu.459668

Olive Line International v OHMI – Umbria Olii International (O Live): ECFI 22 May 2012

ECFI Community trade mark – Opposition proceedings – Application for figurative Community trade mark O-LIVE – Earlier Community and Spanish figurative and word marks Olive line – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009

Citations:

T-273/10, [2012] EUECJ T-273/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 31 October 2022; Ref: scu.459670

Sport Eybl and Sports Experts v OHMI – Seven (Seven Summits): ECFI 22 May 2012

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark SEVEN SUMMITS – Earlier Community figurative mark Seven – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009

Citations:

T-179/11, [2012] EUECJ T-179/11

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009)

European, Intellectual Property

Updated: 31 October 2022; Ref: scu.459673

Environmental Manufacturing v OHMI – Wolf (Representation D’Une Tete De Loup): ECFI 22 May 2012

ECFI Community trade mark – Opposition proceedings – Application for a Community figurative mark representing a wolf’s head – Earlier national and international figurative marks WOLF Jardin and Outils WOLF – Relative grounds for refusal – Detriment to the distinctive character or repute of the earlier mark – Article 8(5) of Regulation (EC) No 207/2009

Citations:

T-570/10, [2012] EUECJ T-570/10, [2015] EUECJ T-570/10

Links:

Bailii, Bailii

European, Intellectual Property

Updated: 31 October 2022; Ref: scu.459665

Special Effects Ltd v L’Oreal Sa and Another: CA 12 Jan 2007

The defendants had opposed the grant of the trade mark which they were now accused of infringing. The claimants said that having failed at the opposition stage, they were now estopped from challenging the validity of the mark.
Held: It was not an abuse of process for L’Oreal to raise by way of defence or counterclaim, for a declaration of invalidity or for relief on the basis of passing off, matters which it raised in the opposition proceedings and which were found against it. In so doing, it wished to take advantage of opportunities expressly afforded by the Act, and it did not seek to do so in a manner which amounted to an abuse of the process. Opposition proceedings were best not conducted on a basis which would prevent later challenges before a court.

Judges:

Chadwick, Lloyd, leveson LJJ

Citations:

[2007] EWCA Civ 1, Times 24-Jan-2007, [2007] ETMR 51, [2007] Bus LR 759, [2007] RPC 15

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Procter and Gamble Co v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (‘Baby-Dry’) ECJ 20-Sep-2001
ECJ Appeal – Admissibility – Community trade mark – Regulation (EC) No 40/94 – Absolute ground for refusal to register – Distinctive character – Marks consisting exclusively of descriptive signs or indications – . .
Cited – Bessant 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 . .
Cited – Thrasyvoulou v Secretary of State for the Environment HL 1990
A building owner appealed against enforcement notices which alleged that there had been a material change of use of his buildings in 1982. This notice was issued by a planning authority. As a result of the appeal an inspector determined that the . .
Appeal from – Special Effects Ltd v L’Oreal Sa and others ChD 17-Mar-2006
The defendant had previously opposed the registration of the claimant’s trade mark before the Comptroller General, but failed. The claimant now in infringement procedings sought the strike out of the defendant’s challenge to its validity.
Cited – Hormel Foods Corporation v Antilles Landscape Investments NV ChD 24-Jan-2005
The claimant had alread challenged the validity of the defendant’s registered trade mark, but sought to do so now on grounds which could have been advanced in the earlier case. The claimant owned the trade mark ‘SPAM’ for canned meats, and the . .
See Also – ‘Special Effects’: Application No 2237923 TMR 22-Aug-2002
cw Inter Partes Decisions – Trade Marks – Opposition . .
Cited – 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. . .
Cited – Arnold v National Westminster Bank Plc HL 1991
Tenants invited the court to construe the terms of a rent review provision in the sub-underlease under which they held premises. The provision had been construed in a sense adverse to them in earlier proceedings before Walton J, but they had been . .
Cited – Re Deeley’s Patent 1895
A revocation of a patent for which the Attorney General’s fiat has been obtained is an action taken on behalf of the public at large. . .
Cited – Shoe Machinery Company v Cutlan 1896
The patentee had succeeded at trial in obtaining a declaration of validity and a determination of infringement, and, in subsequent proceedings, the infringer sought to challenge the validity of the patent by raising a fresh argument based on . .
Cited – Poulton v Adjustable Cover and Boiler Block Co CA 1908
The Plaintiff patent holder had obtained judgment, an injunction and damages against the Defendant for patent infringement despite a defence of invalidity based on prior art. The Defendant then acquired information about other instances of prior art . .
Cited – Thoday v Thoday CA 1964
The court discussed the difference between issue estoppel, and action estoppel: ‘The particular type of estoppel relied upon by the husband is estoppel per rem judicatam. This is a generic term which in modern law includes two species. The first . .
Cited – Coflexip S A and Another v Stolt Offshore Ms Ltd and others CA 27-Feb-2004
Proceedings had been brought by a third party in which the patent had been revoked. The Defendant in the first proceedings now sought release from an enquiry as to damages after being found, before the revocation, to have infringed the patent.
Cited – Johnson v Gore Wood and Co HL 14-Dec-2000
Shareholder May Sue for Additional Personal Losses
A company brought a claim of negligence against its solicitors, and, after that claim was settled, the company’s owner brought a separate claim in respect of the same subject-matter.
Held: It need not be an abuse of the court for a shareholder . .
Cited – Shoe Machinery Company v Cutlan (No 2) 1896
Prior litigation had been an infringement action in which the Defendants denied both validity and infringement, and succeeded on infringement but failed on validity and were ordered to pay costs of the validity issue. By the time of the second . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Estoppel

Updated: 31 October 2022; Ref: scu.247684

O2 Holdings Ltd and Another v Hutchison 3G Ltd: CA 5 Dec 2006

The court faced an allegation based on allegedly false comparative advertising, and referred to the European Court the question: ‘Where a trader, in an advertisement for his own goods or services uses a registered trade mark owned by a competitor for the purpose of comparing the characteristics (and in particular the price) of goods or services marketed by him with the characteristics (and in particular the price) of the goods or services marketed by the competitor under that mark in such a way that it does not cause confusion or otherwise jeopardise the essential function of the trade mark as an indication of origin, does his use fall within either (a) or (b) of Art 5 of Directive 89/104?’

Citations:

[2006] EWCA Civ 1656, [2007] ETMR 19

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – O2 Holdings Ltd. and Another v Hutchison 3G Ltd (No 2) ChD 23-Mar-2006
. .

Cited by:

Cited – Boehringer Ingelheim Ltd and others v Vetplus Ltd CA 20-Jun-2007
The claimants appealed refusal of an order restricting comparative advertising materials for the defendant’s competing veterinary medicine. The claimant said that the rule against prior restraint applicable to defamation and other tort proceedings . .
At Court of Appeal – O2 Holdings Limited and O2 (UK) Limited -v -Hutchison 3G UK Limited ECJ 31-Jan-2008
ECJ (Opinion of Advocate General Mengozzi) Directive 84/450/EEC Comparative advertising Use of a competitor’s trade mark or of a sign similar to a competitor’s trade mark in comparative advertising Applicability . .
Cited – Interflora, Inc and Another v Marks and Spencer Plc and Another ChD 22-May-2009
Each of the parties provided a service delivering flowers. The claimant had a trade mark, and the defendants each purchased the use of that trade mark and variations of it with a search engine (Google) so that a search under the trade mark produced . .
Lists of cited by and citing cases may be incomplete.

Media, European, Intellectual Property

Updated: 31 October 2022; Ref: scu.246765

Harrods Ltd v Harrodian School: CA 3 Apr 1996

No passing off was to be found to have been shown without the public believing that the plaintiff was responsible for the defendant’s services or goods. It was not enough to show only that the defendant was somehow ‘behind’ the defendant. Millet LJ said: ‘Passing off is a wrongful invasion of property vested in the plaintiff; but the property which is protected by an action for passing off is not the plaintiff’s proprietary right in the name or get up which the defendant has misappropriated but the goodwill and reputation of his business which is likely to be harmed by the defendant’s misrepresentation.’

Judges:

Millet LJ

Citations:

Times 03-Apr-1996, [1996] RPC 697, [1996] EWCA Civ 1315

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Lego 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:

Cited – Associated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited) ChD 11-Jun-2003
The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark.
Held: The word . .
Cited – Chocosuisse, Kraft Jacobs Suchard (Schweiz) Ag, Chocoladefabriken Lindt and Sprungli (Schweiz) Ag v Cadbury Limited PatC 29-Oct-1997
The plaintiffs brought actions in passing off against the defendant company in respect of their chocolate products. They objected to the use of the terms ‘Swiss Chocolate’ applied to chocolates not made in Switzerland.
Held: The claimant had . .
Cited – Boehringer Ingelheim Ltd and others v Vetplus Ltd CA 20-Jun-2007
The claimants appealed refusal of an order restricting comparative advertising materials for the defendant’s competing veterinary medicine. The claimant said that the rule against prior restraint applicable to defamation and other tort proceedings . .
Cited – Harrods Limited v Harrods (Buenos Aires) Ltd and Harrods (South America) Ltd ChD 15-Jan-1997
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 31 October 2022; Ref: scu.81262

Forex Bank v EUIPO – Coino UK (Forex) (EU Trade Mark – Judgment): ECFI 2 Dec 2020

EU trade mark – Invalidity proceedings – EU word mark FOREX – Declaration of partial invalidity – Absolute grounds for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 40/94 (now Article 7(1)(c) of Regulation (EU) 2017/1001)

Citations:

ECLI:EU:T:2020:583, T-26/20, [2020] EUECJ T-26/20

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 October 2022; Ref: scu.660718

Smart Things Solutions v EUIPO – Samsung Electronics (Smart:) (EU Trade Mark – Judgment): ECFI 15 Oct 2020

EU trade mark – Invalidity proceedings – EU figurative mark smart:)things – Absolute ground for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EU) 2017/1001 – Article 59(1)(a) of Regulation 2017/1001 – Article 95(1) of Regulation 2017/1001

Citations:

T-48/19, [2020] EUECJ T-48/19, ECLI:EU:T:2020:483

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 October 2022; Ref: scu.660619

Kerry Luxembourg v EUIPO – Dohler (Tastesense) (EU Trade Mark – Judgment) T-109/19: ECFI 29 Apr 2020

EU trade mark – Opposition proceedings – Application for the EU figurative mark TasteSense – Earlier EU word mark MultiSense – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)

Citations:

T-109/19, [2020] EUECJ T-109/19

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 October 2022; Ref: scu.660134

Wohlfahrt v OHMI – Ferrero (Kindertraum): ECFI 16 May 2012

ECFI Community trade mark – Opposition proceedings – Application for Community word mark Kindertraum – Earlier national word mark Kinder – Relative ground for refusal – Proof of use of the earlier mark – Article 42, paragraph 2 of Regulation (EC) No 207/2009 – Risk of confusion – Article 8, paragraph 1, sub b) of Regulation No 207/2009

Judges:

Papasavvas P

Citations:

T-580/10, [2012] EUECJ T-580/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 2

European, Intellectual Property

Updated: 28 October 2022; Ref: scu.459588

Tsakiris-Mallas v OHMI – Seven (7 Seven Fashion Shoes): ECFI 8 May 2012

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark 7 Seven Fashion Shoes – Earlier national figurative marks Seven and 7seven – Partial refusal to register – Relative grounds for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009

Judges:

Forwood P

Citations:

T-244/10, [2012] EUECJ T-244/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 28 October 2022; Ref: scu.459586

Yoshida Metal Industry v OHMI – Pi-Design (Representation D’Une Surface Triangulaire Avec Des Pois Noirs): ECFI 8 May 2012

ECFI Community trade mark – Invalidity proceedings – Figurative Community trade mark representing a surface with black dots – Shape of goods which is necessary to obtain a technical result – Article 7(1)(e)(ii) of Regulation (EC) No 207/2009

Judges:

Pelikanova P

Citations:

T-331/10, [2012] EUECJ T-331/10, [2015] EUECJ T-331/10

Links:

Bailii, Bailii

Statutes:

Regulation (EC) No 207/2009 7(1)(e)(ii)

European, Intellectual Property

Updated: 28 October 2022; Ref: scu.459590

Panzeri v OHMI – Royal Trophy (Royal Veste E Premia Lo Sport): ECFI 8 May 2012

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark Royal Jacket premia e lo Sport – Community and international word marks lo sports jacket – Earlier figurative mark unregistered panzeri lo sports jacket – Relative grounds for refusal – Article 8, paragraph 1 b) and paragraph 4 of Regulation (EC) No 207/2009

Judges:

NJ Forwood, P

Citations:

T-348/10, [2012] EUECJ T-348/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 8(1)(b) 4

European, Intellectual Property

Updated: 28 October 2022; Ref: scu.459580

Universal Display v OHIM (Universalpholed): ECJ 2 May 2012

ECJ Community trade mark – International registration designating the European Community – Application for Community word mark UniversalPHOLED – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009

Judges:

L. Truchot, P

Citations:

T-435/11, [2012] EUECJ T-435/11

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 7(1)(c)

European, Intellectual Property

Updated: 28 October 2022; Ref: scu.459587

Mizuno v OHMI – Golfino (G): ECFI 8 May 2012

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark G – Earlier Community figurative mark G + – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1, sub b) of Regulation (EC) No 207 / 2009

Judges:

Pelikanova P

Citations:

T-101/11, [2012] EUECJ T-101/11

Links:

Bailii

European, Intellectual Property

Updated: 28 October 2022; Ref: scu.459577

Conceria Kara v OHMI – Dima (Karra): ECFI 3 May 2012

ECFI Community trade mark – Opposition proceedings – Application for Community word mark KARRA – national and Community figurative previous Kara – Name Conceria Kara Srl and trade name Kara – Relative grounds for refusal – Article 75, first sentence, of Regulation (EC) No. 207/2009 – Article 42, paragraphs 2 and 3 of Regulation (EC) No 207/2009 – Article 8, paragraph 1 b) of Regulation (EC) No 207/2009 – Article 8, paragraph 4 of Regulation (EC) No 207/2009 – Article 8 of the Paris Convention – Bad Faith

Citations:

T-270/10, [2012] EUECJ T-270/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 8(1)(b)

European, Intellectual Property

Updated: 28 October 2022; Ref: scu.459571

Rubinstein And L’Oreal v OHIM: ECJ 16 Feb 2012

ECJ Opinion – Appeal – Community trade mark – Trade mark which has a reputation for the purposes of Article 8(5) of Regulation No 40/94 – Conditions governing protection – Invalidity proceedings – Rule 38 of Regulation No 2868/95 – Obligation to produce, in the language of the proceedings, the documents supporting the application for a declaration of invalidity – Decisions of the Boards of Appeal of OHIM – Review by the Courts (Article 63 of Regulation No 40/94) – Duty to state reasons (Article 73 of Regulation No 40/94)

Judges:

Mengozzi AG

Citations:

C-100/11, [2012] EUECJ C-100/11 – P

Links:

Bailii

Statutes:

Regulation No 40/94 8(5)

Cited by:

Opinion – Rubinstein And L’Oreal v OHIM ECJ 10-May-2012
ECJ Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 8(5) – Community word marks BOTOLIST and BOTOCYL – Community and national figurative and word marks BOTOX – Declaration of invalidity – . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 28 October 2022; Ref: scu.459563

Fisher-Rosemount Systems Inc (Patent) O26110: IPO 23 Jul 2010

The invention relates to a ‘graphical runtime interface’ for use in a process control system which can be used on a single workstation to create and configure display panels more specifically to define the information to be displayed in various panels, to control the layout and scale of the panels which can then be transferred across the network to other workstations ensuring the various displays are consistent. The information displayed on individual workstations is controlled in accordance with content information generated by the interface and associated runtime applications. In addition, the graphical runtime interface includes a runtime workspace application which sits between the operator and the various functional or runtime applications resident on the workstation, effectively encapsulating them and preventing the operator from inadvertently executing commands which may affect their operation or that of the underlying operating system. The application does this by disabling the operating systems system keys, shortcuts or combinations of other keys on the keyboard which previously would have invoked specific software functions. For example, in a Windows based operating environment, the runtime workspace application may disable access to the Windows keyboard shortcuts including, for example, Run Dialog (WinKey+R), Minimise all (WinKey+M), or switch to another application (Alt-tab) etc. This is said to provide a more robust, consistent and reliable process control system.
The hearing officer considered the four-step test in Aerotel/Macrossan in the light of the Symbian judgment, and found the contribution to relate to computer program for configuring displays across a network and which prevents the operator from invoking functions by accidentally pressing keys on the keyboard which may adversely affect the underlying operating system. It does this not at a technical level but by disabling keystrokes and/or combinations of keystrokes. The Hearing Officer could find no technical contribution and so refused the application under Section 18(3).

Citations:

[2010] UKIntelP O26110

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 October 2022; Ref: scu.458010

Fisher-Rosemount Systems Inc (Patent) O26010: IPO 23 Jul 2010

The invention relates to a graphical user interface for use in a process control system for displaying the status of various alarms associated with devices within the system to an operator. A typical process control system, for example, as used in a chemical or petroleum processing plant consists of a large number of field devices including sensors for measuring temperature, pressure and flow rates throughout the system. When an abnormal condition is detected by one or more of the sensors an alarm is typically generated at the operator workstation. Often, as a result of chain reactions with the plant, the operator may be presented with a large number of alarms at the same time, generating what is referred to as an ‘alarm flood’ which is difficult to deal with. Furthermore, it is extremely useful for the alarm indicators to present ‘contextual’ information about a specific alarm to the operator. For example, the identity of the device generating the alarm, its location, the date and time at which the alarm was activated are often included as part of the display. The user interface allows the operator to modify, configure and manipulate alarm indicators to show alarm priority, age and location, as well as providing additional contextual information showing the relationship between various alarms within the display.
The hearing officer considered the four-step test in Aerotel/Macrossan in the light of the Symbian judgment, and found the contribution to relate to a user interface for displaying information related to alarms in a process control system including information showing the relationship between different alarms. The Hearing Officer could find no technical contribution and so refused the application under Section 18(3).

Citations:

[2010] UKIntelP O26010

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 October 2022; Ref: scu.458009

Fisher-Rosemount Systems Inc (Patent): IPO 10 Sep 2009

IPO The invention relates to a process control safety system and in particular to a method and apparatus for generating a script for use in writing data in a process control safety system. The claims address the interface provided to the user when changes to safety systems are required. A script is automatically generated as a result of one (or a number) or parameters selected by the user, and a confirmation is required by the user before the command is sent. By virtue of the invention, the applicant has enabled what would otherwise be a manual process to be automated.
The hearing officer considered the four-step test in Aerotel/Macrossan in the light of the Symbian judgment, and found the contribution to relate to a computer program for automatically generating a script. The Hearing Officer could find no technical contribution and so refused the application under Section 18(3).

Judges:

Miss J Pullen

Citations:

[2009] UKIntelP o27709

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 October 2022; Ref: scu.457453

Fisher-Rosemount Systems Inc (Patent) O15107: IPO 1 Jun 2007

IPO The application related to a process control system which used program objects corresponding to components of the process, and specifically objects corresponding to physical connections between process components. The hearing officer followed the four-step approach to the assessment of patentability under section 1(2) approved by the Court of Appeal in Aerotel/Macrossan [2006] EWCA Civ 1371 in determining whether the invention was excluded from patentability. He held that the contribution defined by the claims was a program object which linked to other program objects, and that therefore they were excluded from patentability as a computer program as such.

Citations:

[2007] UKIntelP o15107

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 October 2022; Ref: scu.456683

Fisher-Rosemount Systems Inc (Patent) O14807: IPO 1 Jun 2007

IPO The application related to a process control system which used program objects corresponding to components of the process to provide information to an operator. The hearing officer followed the four-step approach to the assessment of patentability under section 1(2) approved by the Court of Appeal in Aerotel/Macrossan [2006] EWCA Civ 1371 in determining whether the invention was excluded from patentability. He held that claims to a workstation with the objects stored on it were excluded as claims to a computer program, but claims to a process control system comprising the objects were held not to be excluded.

Citations:

[2007] UKIntelP o14807

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 October 2022; Ref: scu.456680

Fisher-Rosemount Systems Inc (Patent) O14907: IPO 1 Jun 2007

The application related to the configuration of a process control system, allowing new process flow modules to be created by assembling program objects representing components of the process. The hearing officer followed the four-step approach to the assessment of patentability under section 1(2) approved by the Court of Appeal in Aerotel/Macrossan [2006] EWCA Civ 1371 in determining whether the invention was excluded from patentability. He held that as the applicant had accepted that there was not necessarily any new process flow modules being created which could not be created by conventional programming, the contribution made by the invention was a program which made it easier to modify a control system. He therefore held that the invention was excluded from patentability as it was a computer program as such.

Citations:

[2007] UKIntelP o14907

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 October 2022; Ref: scu.456681

Contra Vision Ltd v Clear Focus Imaging Inc (Patent): IPO 13 Apr 2000

cw Inter Partes Decisions – Patents
PO Patents – Inter Partes Decisions
IPO In an earlier interim decision, the comptroller had refused an application to amend a patent but allowed the parties two months to comment on the possibility of an order allowing a further opportunity to amend. The normal time limit for lodging an appeal against the interim decision was six weeks from the date of the decision. The patentee now sought to have that time limit extended to six weeks from the date of the anticipated order, on the grounds that they ought to know the form of the order before having to decide whether to appeal. The extension was granted

Judges:

Mr P Hayward

Citations:

O/137/00, [2000] UKIntelP o13700, GB 2165292

Links:

PO, PO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 October 2022; Ref: scu.453794

Webb v Mcgriskin (Patent): IPO 13 Apr 2000

Mr Webb was a producer of furniture, in particular seating. Ms McGriskin was an Alexander Technique teacher from whom, inter alia, Webb had taken lessons in the technique. On seeing how much easier it was to stand out of a rocking chair that he kept in his workshop, she commissioned a stool on rockers for use in teaching the technique. Subsequently, McGriskin applied for a GB patent in respect of the stool in her sole name.
The crucial feature of the stool was that it had three legs in a triangular configuration, but it was not clear whether one party had devised this first or whether it was a joint idea. What was clear, however, was that McGriskin did not have the expertise to fabricate the stool which involved a complex joint at the join of the rockers. On this basis joint inventorship and joint ownership was found. An interim decision (dated 3 February 2000) was issued because of the requirements of Section 36(3) and the clear antagonism between the parties at the hearing which boded ill for their cooperation. This decision spelled out the various options available to the parties and asked for submissions.
Following receipt of submissions both parties indicated that they were willing to have a final decision made on the papers. This decision was to the effect that (i) the patent shall proceed in the joint names of Sandra Agnes McGriskin and Andrew Webb and, under rule 51, an entry shall be made in the register to this end, and an erratum slip shall be prepared for the patent ;(ii) Each proprietor shall have the right to licence out the invention to a third party without the agreement or interference of the other proprietor; (iii) each proprietor shall pay half the renewal fees in a timely manner and shall only have the right to stop such payment of renewal fees if agreement is reached to do so with the other proprietor. In the circumstances of the case, no costs were awarded since McGriskin had borne the costs of the patent application but had received no profits from the manufacture of the stools whereas Webb had been manufacturing the stools from the outset.

Judges:

Mr G Bridges

Citations:

O/135/00, [2000] UKIntelP o13500

Links:

PO, PO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 October 2022; Ref: scu.453786

Fisher-Rosemount Systems Inc (Patent) O15207: IPO 1 Jun 2007

The application related to a process control system which used a two tier database of objects corresponding to elements of the process and process flow modules. The hearing officer followed the four-step approach to the assessment of patentability under section 1(2) approved by the Court of Appeal in Aerotel/Macrossan [2006] EWCA Civ 1371 in determining whether the invention was excluded from patentability. He held that the contribution defined by the claims was the two-tier database, and that therefore they were excluded from patentability as they related to a computer program as such.

Citations:

[2007] UKIntelP o15207

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 October 2022; Ref: scu.456684

Brain v Ingledew Brown Benson and Garrett and Another: CA 1996

The defendant firm of solicitors had acted for a Danish Research Institute. They wrote to several parties regarding a patent. B initiated a threat action. IBB appealed against an order striking out their defence, saying that the issue of whether what they said amounted to a threat was a question of fact to be decided at trial, and not on a summary application.
Held: The appeal succeeded. Until the patent was granted before trial, the defendant could justify his action. Whilst the judge could ascertain the meaning of the letter complained of, whether it amounted to a threat remained a question for the trial.
Aldous LJ said: ‘the conclusion as to whether a document amounts to a threat of patent proceedings is essentially one of fact. It is a jury-type decision to be decided against the appropriate matrix of fact. Thus a letter or a statement may on its face seem innocuous, but when placed in context it could be a threat of proceedings. The contrary is less likely but could happen.’ and ‘even if it be assumed that the letter contained a threat in general terms it does not follow that the recipient would read it as making a threat of proceedings in respect of all potentially infringing acts. A letter, such as the letter of June 13, when written to a person who only operated a process, could be understood as being a threat of infringement by carrying out the process; whereas a letter written in general terms to a person who not only carried out the process but sold the products of that process, could be understood in a different way.’

Judges:

Aldous LJ

Citations:

[1996] FSR 341

Statutes:

Patents Act 1977 70, Rules of the Supreme Court 14A

Jurisdiction:

England and Wales

Citing:

Appeal From – Brain v Ingledew Brown Benson and Garrett and Another ChD 18-Apr-1995
A threats of an infringement claim regarding acts of the addressee between the Patent application being filed and the grant of the patent are actionable under the threat action procedure. . .

Cited by:

Cited – Cavity Trays Ltd v RMC Panel Products Ltd CA 2-Jan-1996
The exclusion provided in section 70(4) of the 1977 Act is of limited scope. Whatever the legislative intention, it does not give rise to a general entitlement to threaten manufacturers or importers or users. In particular, if a trader both . .
See Also – Brain v Ingledew Brown Bennison and Garrett (A Firm) (No 3) ChD 1997
The meaning of an alleged threat is to be decided in accordance with the understanding of an ordinary recipient in the position of the applicant, reading the letter in the normal course of business. Laddie J said: ‘the meaning and impact of the . .
Cited – Best Buy Co Inc and Another v Worldwide Sales Corp. Espana Sl ChD 8-Jul-2010
The claimant accused the defendant of making threats in connection with trade mark applications. The claimants operated under US trade marks associated with ‘Best Buy’ and sought similar marks in Europe. The defendant company traded under a similar . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 27 October 2022; Ref: scu.420494

Cavity Trays Ltd v RMC Panels Products Ltd: CA 1996

The threats provisions may have the effect of making litigation more rather than less likely. The exclusion in the subsection is limited in its scope. It does not give rise to a general entitlement to threaten manufacturers or importers or users. In particular, if a trader both manufactures and sells products and a patentee threatens him with infringement proceedings in respect of both activities, section 70(3) provides a statutory defence in relation to the threats directed at the acts of manufacture, but not in relation to threats directed at acts of selling.

Citations:

[1996] RPC 361

Statutes:

Patents Act 1977 70(4)

Jurisdiction:

England and Wales

Cited by:

Cited – Cintec International Ltd v John Humphries Parkes (T/A Dell Explosives) and Another ChD 2-Oct-2003
The defendants wanted to defend their patent against a possible infringement. There were negotiations, following which the defendants wrote claiming damages or licence fees. The claimant asserted that the letter constituted a threat. The defendant . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 27 October 2022; Ref: scu.230101

Storck v OHIM C-24/05: ECJ 22 Jun 2006

ECJ Appeal – Community trade mark – Article 7(1)(b) and (3) of Regulation (EC) No 40/94 – Absolute ground for refusal to register – Three-dimensional mark – Three-dimensional shape of a light-brown sweet – Distinctive character.

Citations:

C-24/05, [2006] EUECJ C-24/05

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 27 October 2022; Ref: scu.243011

Lancashire Fires Ltd v S A Lyons and Co Ltd: CA 1996

It was claimed that a loan to the employee from a customer of the employer coupled with an exclusive supply agreement by the employee as and when the competing business becomes operative was in breach of an non-compete clause.
Held: The injunction was granted. It was not incumbent on an employer to point out to an employee the precise limits of what he might later seek to protect as confidential information. Distinctions can be hard to draw in this field. Sir Thomas Bingham MR said that it was ‘just that Susan Magnall should be precluded from disclosing the information to others’ and therefore granted an injunction against her, though ‘if the plaintiff seeks financial relief against Susan Magnall, we shall need to hear further argument before deciding the point.’
Sir Thomas Bingham MR said: ‘In Faccenda Chicken (at page 137) the Court of Appeal drew attention to some of the matters which must be considered in determining whether any particular item of information falls within the implied term of a contract of employment so as to prevent its use or disclosure by an employee after his employment has ceased. Those matters included: the nature of the employment: the nature of the information itself: the steps (if any) taken by the employer to impress on the employee the confidentiality of the information: and the case or difficulty of isolating the information in question from other information which the employee is free to use or disclose. We have no doubt that these are all very relevant matters to consider. In the ordinary way, the nearer an employee is to the inner counsels of an employer, the more likely he is to gain access to truly confidential information. The nature of the information itself is also important: to be capable of protection, information must be defined with some degree of precision: and an employer will have great difficulty in obtaining protection for his business methods and practices. If an employer impresses the confidentiality of certain information on his employee, that is an indication of the employer’s belief that the information is confidential, a fact which is not irrelevant: Thomas Marshall Ltd v Guinle [1979] Ch 227 at 248. But much will depend on the circumstances. These may be such as to show that information is or is being treated as, confidential; and it would be unrealistic to expect a small and informal organisation to adopt the same business disciplines as a larger and more bureaucratic concern. It is plain that if an employer is to succeed in protecting information as confidential, he must succeed in showing that it does not form part of an employee’s own stock of knowledge, skill and experience. The distinction between information in Goulding J’s class 2 and information in his class 3 may often on the facts be very hard to draw, but ultimately the court must judge whether an ex-employee has illegitimately used the confidential information which forms part of the stock-in-trade of his former employer either for his own benefit or to the detriment of the former employer, or whether he has simply used his own professional expertise, gained in whole or in part during his former employment.’

Judges:

Sir Thomas Bingham MR

Citations:

[1996] FSR 629

Jurisdiction:

England and Wales

Citing:

Cited – Thomas Marshall (Exports) Ltd v Guinle ChD 1979
The managing director defendant had resigned before the end of the contractual term. There was an express covenant in his contract against using or disclosing the company’s confidential information during or after his employment. It was submitted . .
Cited – Faccenda Chicken Ltd v Fowler CA 1986
Nature of Confidentiality in Information
The appellant plaintiff company had employed the defendant as sales manager. The contract of employment made no provision restricting use of confidential information. He left to set up in competition. The company now sought to prevent him using . .

Cited by:

Cited – Poeton Industries Ltd and Another v Michael Ikem Horton CA 26-May-2000
The claimant sought damages and an injunction after their former employee set up in business, using, they said, information about their manufacturing procedures and customers obtained whilst employed by them. The defendant appealed the injunction . .
Cited – EPI Environmental Technologies Inc and Another v Symphony Plastic Technologies Plc and Another ChD 21-Dec-2004
The claimant had developed an additive which would assist in making plastic bags bio-degradable. They alleged that, in breach of confidentiality agreements, the defendants had copied the product. The defendants said the confidentiality agreement was . .
Cited – Thomas v Farr Plc and Another CA 20-Feb-2007
The employee, the former chairman of the company, appealed a finding that his contract which restricted his being employed for one year in the same field after termination, was valid and enforceable. The company had provided insurance services to . .
Cited – Vestergaard Frandsen A/S and Others v Bestnet Europe Ltd and Others SC 22-May-2013
The claimant companies appealed against a reversal of their judgment against a former employee that she had misused their confidential trade secrets after leaving their employment. The companies manufactured and supplied bednets designed to prevent . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Employment

Updated: 27 October 2022; Ref: scu.200324

Neutrogena Coroporation v Golden Ltd: CA 1996

The court discussd the ‘substantial proportion of the public’ test applied in passing off. The purpose of this evidence was to provide real evidence from ordinary members of the public wholly untainted by any artificiality.

Judges:

Morritt LJ

Citations:

[1996] RPC 473

Jurisdiction:

England and Wales

Citing:

Appeal from – Neutrogena Coroporation v Golden Ltd ChD 1996
Jacob J discussed the value of survey evidence in passing off cases: ‘Unless one can have some real evidence, tested in cross examination, one cannot really be sure of what was passing through peoples minds. Those cases where surveys have proved to . .

Cited by:

Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Cited – Chocosuisse, Kraft Jacobs Suchard (Schweiz) Ag, Chocoladefabriken Lindt and Sprungli (Schweiz) Ag v Cadbury Limited PatC 29-Oct-1997
The plaintiffs brought actions in passing off against the defendant company in respect of their chocolate products. They objected to the use of the terms ‘Swiss Chocolate’ applied to chocolates not made in Switzerland.
Held: The claimant had . .
Cited – A and E Television Networks Llc and Another v Discovery Communications Europe Ltd ChD 1-Feb-2013
The claimants had operated the ‘History’ and associated variant TV channels and trade marks. The claimed that the defendant’s ‘Discovery History’ channels were in breach. The defendants challenged the validity of the trade marks. The court now . .
Cited – Bocacina Ltd v Boca Cafes Ltd IPEC 14-Oct-2013
The claimant alleged passing off by the defendant’s use of the name ‘Boca Bistro Cafe’, and subsequently ‘Bica Bistro Cafe’
Held: Where the defendant had changed its trading style during the proceedings it was possible, if the claimant . .
Cited – Moroccanoil Israel Ltd v Aldi Stores Ltd IPEC 29-May-2014
The claimant asserted passing off and trade mark infringement by the defendant in respect of its own hair oil product and the defendant’s sale of ‘Miracle Oil’. The defendant counterclaimed in a threat action. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 27 October 2022; Ref: scu.194803

Regina v Broadcasting Complaints Commission Ex Parte Granada Television Ltd: CA 16 Dec 1994

The Broadasting Complaints Commission had been established to determine questions of privacy, and the courts should be slow to intervene. The right of privacy of an individual had not been lost by past publicity. That privacy had been infringed by the broadcast complained of, and the commissions decision was not unreasonable. The privacy of bereaved families was infringed by photographs even if the family was otherwise notorious.

Citations:

Gazette 15-Feb-1995, Ind Summary 20-Feb-1995, Times 16-Dec-1994, [1995] EMLR 16

Statutes:

Broadcasting Act 1990 143

Jurisdiction:

England and Wales

Citing:

Cited – Regina v Broadcasting Complaints Commission, ex Parte Granada Television Ltd QBD 31-May-1993
The Commission had not been unreasonable in taking the view that a broadcast had infringed the privacy of the subject of the complaint. Judicial Review was not available against BBC for infringement of privacy. . .

Cited by:

Cited – McKennitt and others v Ash and Another QBD 21-Dec-2005
The claimant sought to restrain publication by the defendant of a book recounting very personal events in her life. She claimed privacy and a right of confidence. The defendant argued that there was a public interest in the disclosures.
Held: . .
Cited – CTB v News Group Newspapers Ltd and Another (1) QBD 16-May-2011
A leading footballer had obtained an injunction restraining the defendants from publishing his identity and allegations of sexual misconduct. The claimant said that she had demanded money not to go public.
Held: It had not been suggested that . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Media, Judicial Review, Information

Updated: 27 October 2022; Ref: scu.86221

Biogen Inc v Medeva Plc: CA 28 Nov 1994

The description in a patent application’s specification must be of an invention.

Citations:

Ind Summary 28-Nov-1994

Statutes:

Patents Act 1977 1(1) 72(1)

Jurisdiction:

England and Wales

Cited by:

Appeal from – Biogen 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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 27 October 2022; Ref: scu.78412