Category: Intellectual Property

HTC 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 to the four-stage process set out in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Patent Application.

Judges:

Richards, Lewison, Kitchin LJJ

Citations:

[2013] EWCA Civ 451

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Applied – Aerotel 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 In one case a patent had been revoked on being challenged, and in the other, the . .

Cited by:

Cited – Lantana 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 . .
Cited – 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;
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 09 December 2022; Ref: scu.495178

Fresenius Kabi Deutschland Gmbh and Others v Carefusion 303, Inc: ChD 12 Oct 2011

The claimant sought an order debarring the defendant from relying on any evidence to support their case at the forthcoming trial for the revocation of a patent.

Judges:

Arnold J

Citations:

[2011] EWHC 2663 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Baird v Moule’s Patent Earth Closet Co Ltd CA 3-Feb-1876
Where a patentee sues for infringement and then discontinues his claim against the alleged infringer and consents to the revocation of his patent, he may yet require the alleged infringer to pay a substantial proportion of his costs if he can show . .

Cited by:

Appeal From – Fresenius Kabi Deutschland Gmbh and Others v Carefusion 303 Inc CA 8-Nov-2011
The parties had litigated the validity of a patent. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 09 December 2022; Ref: scu.447518

La Chemise Lacoste SA v Baker Street Clothing Ltd: 2010

Geoffrey Hobbs QC set out a summary of the principles when looking to confusion between trade marks: ‘(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a great degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;
(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion.’

Judges:

Geoffrey Hobbs QC

Citations:

O/330/10

Jurisdiction:

England and Wales

Cited by:

Approved – Lewis v Client Connection Ltd ChD 6-Jul-2011
The claimant alleged infringement of his registered trade marks ‘Money Saving Expert’ and associated terms. The defendant operated a service trading as ‘Money Claiming Expert’. Both services included advising those who might wish to claim refunds . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 09 December 2022; Ref: scu.441529

Smith v The London and South Western Railway Company: 3 Mar 1854

Order for Account dependent on further claim

The owners of a patent for a peculiar mode of manufacturing iron wheels for railway carriages having discovered that several railway companies were violating their patent brought an action for damages against one of such companies only, but did not in any way give notice to the other companies to discontinue theiri nfringements of the Plaintiffs’ right. In the action the validity of the patent was disputed, and it was not decided until three years after the patent had expired, when a verdict was given for the Plaintiffs, with large damages. Thereupon the Plaintiffs filed a bill for an account of profits, and an injunction against another of the companies who had infringed their patent, complaining of acts done nine years before.
Held: The delay was not excused by the pendency of the action, but was fatal to the Plaintiffs’ case,
The right to a decree in equity for an account of the profits made by the manufacturing and use of articles in infringement of a patent is incident to the right to an injunction to restrain future infringement; and where no case is made for the injunction the account will not be decreed.

Citations:

[1854] EngR 319, (1854) Kay 408, (1854) 69 ER 173

Links:

Commonlii

Jurisdiction:

England and Wales

Equity, Intellectual Property

Updated: 09 December 2022; Ref: scu.293176

Darryl Neudorf v Network Expressions: 1999

(Supreme Court of British Columbia) The court discussed the test for joint authorship after reviewing authorities in Canada, the US and England and said: ‘In the result I find that the test for joint authorship that should be applied to the facts in the instant case is as follows:
i) Did the plaintiff contribute significant original expression to the songs? If yes,
ii) Did each of the plaintiff and Ms McLachlan intend that their contributions be merged into a unitary whole? If yes,
iii) Did each of the plaintiff and Ms McLachlan intend the other to be a joint author of the song?’ and ‘the creation of the intent to co-author requirement in Childress v. Taylor happened despite the statutory definition of joint authorship . . . not because of it. The court looked beyond the language of the section and moved on to review policy considerations in the application of the section. In particular, the court could not accept that Congress intended to extend joint authorship to, for example, editors and researchers. It was for this reason that the court created the intent to co-author requirement.’

Judges:

Cohen J

Citations:

[1999] RPC 935

Jurisdiction:

Canada

Cited by:

Still Good Law – Hodgens v Beckingham CA 19-Feb-2003
The defendant appealed a finding of infringement in a music copyright work, ‘Young at Heart’, based on a claim of joint authorship. The claimant had delayed his claim for many years, but now sought only rights to future royalties.
Held: The . .
Lists of cited by and citing cases may be incomplete.

Commonwealth, Intellectual Property

Updated: 09 December 2022; Ref: scu.266723

Ultraframe (UK) Ltd v Eurocell Building Plastics Limited, Eurocell Profiles Limited: ChD 22 Jul 2004

Patent challenge for obviousness, and patent infringement.
Held: i) the patent was not infringed;
ii) the patent was valid;
iii) there was no fresh UDR arising from minor changes made to the design of the Ultralite 500 in 1995;
iv) there was no infringement of design right in the components;
v) but there was infringement by the Pinnacle 500 panels themselves and by the whole assembled Pinnacle 500 product.

Judges:

The Honourable Mr Justice Lewison

Citations:

[2004] 1785 EWHC (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Appeal from – Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd& Another CA 24-Jun-2005
Appeal against finding of non-infringement of patent. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 09 December 2022; Ref: scu.199490

Aktiebolaget Volvo v Heritage (Leicester) Ltd: 2000

Citations:

[2000] FSR 253

Jurisdiction:

England and Wales

Cited by:

Cited – Asprey 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: 09 December 2022; Ref: scu.180534

Harley Academy (Trade Mark: Opposition): IPO 7 Oct 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of
Sections 5(1), 5(2) and 5(3) Average Customer – Different consumer groups
Sections 5(1), 5(2) and 5(3) Average Customer – Consumer attention levels
Sections 5(1), 5(2) and 5(3) Average Customer – Purchasing process

Citations:

[2019] UKIntelP o59719

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.661138

Sain (Trade Mark: Opposition): IPO 20 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Distinctive Character of Earlier Trade Mark – Any unusual issues
Procedural Issues – EOTs

Citations:

[2019] UKIntelP o48419

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.661056

Kink Central (Trade Mark: Opposition): IPO 16 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of

Citations:

[2019] UKIntelP o54319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.661086

Rocco London (Trade Mark: Opposition): IPO 30 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection

Citations:

[2019] UKIntelP o57319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.661098

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

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Revocation / Proof of Use – Dates – genuine use
Revocation / Proof of Use – Dates – use as a trade mark
Revocation / Proof of Use – Variant forms of marks – use with another mark

Citations:

[2019] UKIntelP o47919

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.661063

FAB Method (Trade Mark: Opposition): IPO 13 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of

Citations:

[2019] UKIntelP o54119

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.661074

The W Club (Trade Mark: Opposition): IPO 26 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Sections 5(1), 5(2) and 5(3) Dilution Cases – Unfair advantage of repute
Sections 5(1), 5(2) and 5(3) Dilution Cases – Detriment to distinctive character
Sections 5(1), 5(2) and 5(3) Dilution Cases – Detriment to repute

Citations:

[2019] UKIntelP o43519

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.661018

Terraultra (Trade Mark: Opposition): IPO 29 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – Effect of concurrent use
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – State of the register
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Procedural Issues – Costs – litigants in person, actual, security for
Procedural Issues – Pleadings, Strike out, Estoppel

Citations:

[2019] UKIntelP o50819

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.661061

Monkeyface (Trade Mark: Opposition): IPO 25 Jun 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Revocation / Proof of Use – Partial revocation – redrafting specifications

Citations:

[2019] UKIntelP o35519

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.660954

The Football Association Premier League Ltd v British Telecommunications Plc and Others: ChD 18 Jul 2018

The court continued a time limited order requiring the defendant Internet Service Providers to inhibit live streaming of Premier League football through their services.

Judges:

Arnold J

Citations:

[2018] EWHC 1828 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.619893

Swarbrick v Burge: 26 Apr 2007

Austlii (High Court of Australia) Copyright – Artistic works – Works of artistic craftsmanship – The respondent obtained an injunction against infringement by the appellants of the respondent’s ownership of copyright in works constituted by a ‘plug’ from which a mould for a yacht hull could be derived, and in the hull and deck mouldings of that yacht – Whether works protected by copyright or should have been protected, if at all, under the designs registration law.
Copyright – Artistic works – Works of artistic craftsmanship – Whether ‘work of artistic craftsmanship’ is a composite phrase to be construed as a whole – Relevance of aesthetic appeal to the existence of a work of artistic craftsmanship – Relevance of machine production to the existence of a work of artistic craftsmanship – Relevance of functional or utilitarian constraints to the existence of a work of artistic craftsmanship – Whether the ‘plug’ and mouldings constituted works of artistic craftsmanship.
Copyright – Anti-overlap provisions – Interaction between the statutory protection of copyright and designs – Absence of registered ‘corresponding design’ – Exclusion of copyright protection in the three-dimensional reproduction of artistic works, other than works of artistic craftsmanship, where the ‘corresponding design’ has been ‘applied industrially’ – Whether the ‘plug’ and mouldings were protected by copyright.
Intellectual property – Anti-overlap provisions – Interaction between statutory protection of copyright and designs – Position of works of artistic craftsmanship in the statutory scheme – Meaning of ‘corresponding design’.
Words and phrases – ‘applied industrially’, ‘artistic work’, ‘corresponding design’, ‘work of artistic craftsmanship’.

Judges:

Gleeson CJ, Gummow, Kirby, Heydon, Crennan JJ

Citations:

(2007) 232 CLR 336, [2007] HCA 17, 81 ALJR 950

Links:

Austlii

Jurisdiction:

Australia

Cited by:

Cited – Lucasfilm 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.

Intellectual Property

Updated: 07 December 2022; Ref: scu.442600

Cambridge Antibody Technology v Abbott Biotechnology Ltd and Another: 2005

Judges:

Laddie J

Citations:

[2005] EWHC 357 (Ch)

Jurisdiction:

England and Wales

Citing:

Principal Judgment – Cambridge Antibody Technology v Abbott Biotechnology Ltd and Another Patc 20-Dec-2004
Rectification of an agreement was sought.
Held: Laddie J rejected a submission that evidence of the subjective state of mind of one of the parties contained in statements which had not been communicated to the other party (‘crossed the line’) . .

Cited by:

Cited – Three Rivers District Council and others v The Governor and Company of the Bank of England ComC 12-Apr-2006
The claimants had pursued compensation over many years from the defendants alleging various kinds of misfeasance in regulating the bank BCCI. The action had collapsed.
Held: ‘this was extraordinary litigation which came to an abrupt albeit . .
Lists of cited by and citing cases may be incomplete.

Costs, Intellectual Property

Updated: 07 December 2022; Ref: scu.240386

Point 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 declaration was refused. There was no explicit provision in copyright law for a declaration of non-infringement as was available in Patent proceedings. A party had to have some sufficient interest to found a request for a declaration. There was no expert evidence before the court as to whether infringement had in fact taken place. Nevertheless sufficient was said to lay doubt as to the provenece of the defendant’s software.

Judges:

Her Honour Judge Frances Kirkham

Citations:

[2005] EWHC 3096 (Ch)

Links:

Bailii

Statutes:

Civil Procedure Rules 40.20 C1-001, Patents Act 1977 71

Jurisdiction:

England and Wales

Citing:

Cited – In re Clay; Clay and Booth CA 1919
A plaintiff is not entitled to a declaration of non-liability where the defendant has neither asserted a contrary right nor made nor formulated an adverse claim. It is oppressive and unjust to subject a defendant to legal proceedings where he has . .
Cited – Russian Commercial and Industrial Bank v British Bank of Foreign Trade HL 1921
The court considered how the court should exercise any jurisdiction to make declarations.
Held: The House (Lord Dunedin) referred, with approval, to the approach taken by the Scottish Courts, identifying three propositions, namely that the . .
Cited – Stephens and Another v Cannon and Another CA 14-Mar-2005
The claimants had purchased land from the defendants. The contract was conditional on a development which did not take place. The master had been presented with very different valuations of the property.
Held: The master was not entitled to . .
Cited – Lever Faberge Ltd v Colgate Palmolive 2005
In intellectual property cases, the court might be ready to grant a declaration without undertaking the full enquiry which would precede a declaration in other areas of law. . .
Cited – Guild v Eskander Ltd 2003
. .
Cited – Financial Services Authority v Rourke ChD 19-Oct-2001
The applicant sought a declaration that the defendant had acted in breach of the Act, in accepting sums by way of deposit, without being authorised, and had made prohibited statements to attract such deposits. Could a civil court make such a finding . .
Cited – 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, . .
Cited – L’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 . .
Cited – Messier-Dowty Ltd and Another v Sabena Sa and others ComC 3-Dec-1999
Application by 2 and 3 defendants for an order suspending proceedings in England pending production and consideration of expert report. Whether, pursuant to Supreme Court Act 1981 s. 49(3) and CPR 3.1(2)(f), there were ‘compelling circumstances’ . .
Cited – Plastus Kreativ AB v Minnesota Mining and Manufacturing Co 1995
English law regards the rules for obtaining negative declaratory relief as being procedural
Aldous J said: ‘For myself I would not welcome the task of having to decide whether a person had infringed a foreign patent. Although patent actions . .
Cited – Patten v Burke Publishing Ltd ChD 1991
The publisher to whom the plaintiff author had sold the rights to his book became insolvent. He sought a declaration that it would be in breach of the contract.
Held: The guiding principle which determines how the discretion is to be exercised . .
Cited – Filhol Ltd v Fairfax (Dental Equipment) Ltd 1990
The defendant had lost an action on the design of dental pins used to create foundations for false teeth. He wanted to get onto the market with a product which was designed so as to avoid the construction of the patent claims found by both the High . .
Cited – Leco Investments (UK) Ltd v Land Pyrometers CA 1982
The defendant appealed against a striking out of his defence on a claim for copyright infringement.
Held: The appeal succeeded. Leave should have been given. Whether copying was substantial depended in part on quality, which was a matter of . .
Cited – Metzger v Department of Social Security 1977
A court’s declaration should constitute only what it has found after proper argument. . .
Cited – Wallersteiner v Moir CA 1974
The making of a declaration is a judicial act. A shareholder is entitled to bring a derivative action on behalf of the company when it is controlled by persons alleged to have injured the company who refuse to allow the company to sue. It is an . .
Cited – Amstrad Consumer Electronics Plc v British Phonographic Industry Limited CA 29-Oct-1985
Amstrad sought a declaration that their retailing of equipment with two cassette decks was not unlawful. A declaration was not granted because Amstrad might be guilty of a criminal offence. However in the absence of any evidence that Amstrad was . .
Cited – Messier-Dowty Ltd and Another v Sabena Sa and Others CA 21-Feb-2000
The defendants sought a declaration that they would not be liable in respect of their potential involvement in a pending action. The appellants asserted that such a declaration could not be granted since no proceedings were yet in issue. The court . .
Cited – Wyko Group Plc and Others v Cooper Roller Bearings Co Ltd ChD 4-Dec-1995
A court may not grant a declaratory relief anticipating facts which were not yet in being. There must be in existence of a real question in issue between the parties as to the legal consequences of existing facts. Declaratory relief could not be . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Civil Procedure Rules

Updated: 07 December 2022; Ref: scu.237599

Leco Investments (UK) Ltd v Land Pyrometers: CA 1982

The defendant appealed against a striking out of his defence on a claim for copyright infringement.
Held: The appeal succeeded. Leave should have been given. Whether copying was substantial depended in part on quality, which was a matter of degree. The court identified the difficulties in identifying the sorts of evidence which might be admissible in a claim for 3-dimensional copying. Fox LJ said: ‘I am not satisfied that no further evidence is relevant or admissible.’

Judges:

Fox LJ, Stephenson LJ

Citations:

[1982] RPC 133

Jurisdiction:

England and Wales

Cited by:

Cited – Point 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 . .
Cited – Ludlow Music Inc v Williams and others ChD 2-Oct-2000
The claimant sought damages for copyright infringement in respect of two works which parodied a song to which they owned the rights.
Held: The amount copied, being as much as a quarter of the original work, meant that the claim was . .
Lists of cited by and citing cases may be incomplete.

Litigation Practice, Intellectual Property

Updated: 07 December 2022; Ref: scu.237720

Genetech Inc’s (Human Growth Hormone) Patent: 1989

The court considered an enabling disclosure: ‘ . . what has come to be called an ‘enabling disclosure’, that is to say, one sufficient, in the case of a claim to a chemical compound, to enable those skilled in the art to make the compound claimed’

Judges:

Falconer J

Citations:

[1989] RPC 613

Jurisdiction:

England and Wales

Cited by:

Approved – Asahi Kasei Kogyo KK’s Application HL 1991
The House considered a case involving the issue of enablement of a particular peptide in a patent application.
Held: On the assumed facts that there had been a prior disclosure of the same invention neither the disclosed information nor common . .
Cited – Synthon 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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 07 December 2022; Ref: scu.231509

Electrolux Ltd v Electrix Ltd: 1954

Citations:

(1954) 71 RPC

Jurisdiction:

England and Wales

Cited by:

Cited – Gerber Products Company v Gerber Foods International Ltd ChD 18-Mar-2002
The opponent marketed baby food using the trade mark. The applicant sough revocation of the trade mark on the grounds of it not having been bona-fide used.
Held: The Electrolux case did not establish that the mark owner had to establish . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 07 December 2022; Ref: scu.183134

Pollard v Photographic Co: 1888

Mrs Pollard had contracted with the defendant for photographs to be taken of herself for her own purposes. She found that the defendant was using the photograph for quite different purposes. She argued that, she having contracted for the photograph to be taken for one purpose, there was an implied term that it should not be used for any other.
Held: Such an implied term did exist.

Judges:

North J

Citations:

(1888) 40 Ch Div 345

Jurisdiction:

England and Wales

Cited by:

Cited – Douglas etc v Hello! Ltd etc ChD 11-Apr-2003
The claimants were to be married. They sold the rights to publish photographs of their wedding, but various of the defendants took and published unauthorised pictures.
Held: The claimants had gone to lengths to ensure the commercial value of . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contract

Updated: 07 December 2022; Ref: scu.181411

Allen and Hanburys Ltd v Generics (UK) Ltd: 1986

A licence: ‘passes no proprietary interest in anything; it only makes an action lawful which would otherwise have been unlawful.’

Judges:

Lord Diplock

Citations:

[1988] 2 All ER 454, [1986] RPC 203

Jurisdiction:

England and Wales

Cited by:

Cited – In Re Smith Kline and French Laboratories Ltd HL 9-Feb-1989
The plaintiffs had applied for a product licence for a patented drug. To support its application, it supplied the authority with confidential information which the authority now sought to make use of the confidential information when considering . .
Cited – Douglas and others v Hello! Ltd and others (No 3) CA 18-May-2005
The principal claimants sold the rights to take photographs of their wedding to a co-claimant magazine (OK). Persons acting on behalf of the defendants took unauthorised photographs which the defendants published. The claimants had retained joint . .
Cited – Ultraframe (UK) Ltd v Fielding and others ChD 27-Jul-2005
The parties had engaged in a bitter 95 day trial in which allegations of forgery, theft, false accounting, blackmail and arson. A company owning patents and other rights had become insolvent, and the real concern was the destination and ownership of . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 07 December 2022; Ref: scu.180541

L’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 circumstances. A threat need not be direct, and conditionality may not be an answer. The thrust of the letter was a warning of the possibility in the future of proceedings for infringement, with contingencies on success of other proceedings. The threat was veiled and muffled by protestations of continuing indecision (which did not ring true) but the threat was sufficient (if not designed) to unsettle the Claimants and the threat was of trade mark infringement proceedings in respect of sales within the United Kingdom.
Lightman said: ‘The policy represented by the first statutory threats provision . . was clearly to stop patentees who were (in Pope’s words about Addison) ‘willing to wound but afraid to strike’ from holding the sword of Damocles above another’s head . . in summary, the term ‘threat’ covers any information that would convey to a reasonable man that some person has trade mark rights and intends to enforce them against another. It matters not 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:

Mr Justice Lightman

Citations:

[2000] EWHC Ch 129, [2000] FSR 686

Links:

Bailii

Statutes:

Trade Marks Act 1994 21, Patents, Designs and Trade Marks Act 1883 32

Jurisdiction:

England and Wales

Citing:

Cited – Prince PLC v Prince Sports Group Inc ChD 1998
In a threat action for trade mark infringement, the plaintiff had only supplied services. The defendant made a general threat without limiting it to proceedings in respect of goods or services. The defendant argued that the threat would be . .
Cited – 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. . .
Cited – Unilever 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 . .
Cited – Bowden 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 – Patten v Burke Publishing Ltd ChD 1991
The publisher to whom the plaintiff author had sold the rights to his book became insolvent. He sought a declaration that it would be in breach of the contract.
Held: The guiding principle which determines how the discretion is to be exercised . .
Cited – In re Clay; Clay and Booth CA 1919
A plaintiff is not entitled to a declaration of non-liability where the defendant has neither asserted a contrary right nor made nor formulated an adverse claim. It is oppressive and unjust to subject a defendant to legal proceedings where he has . .
Cited – Wyko Group Plc and Others v Cooper Roller Bearings Co Ltd ChD 4-Dec-1995
A court may not grant a declaratory relief anticipating facts which were not yet in being. There must be in existence of a real question in issue between the parties as to the legal consequences of existing facts. Declaratory relief could not be . .

Cited by:

Cited – Point 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 . .
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 . .
Approved – Best Buy Co Inc and Another v Worldwide Sales Corporation Espana Sl CA 24-May-2011
Appeal against dismissal of claim of trade mark infringement threats by the defendants’ lawyers. The court was asked to consider whether a letter, described as ‘the September letter’ was an actionable threat.
Held: Lord Neuberger MR said: ‘In . .
Cited – 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

Updated: 07 December 2022; Ref: scu.162991

Redrow Homes Ltd and others v Bett Brothers Plc and others: HL 22 Jan 1998

Additional damages under section 97 of the 1988 Act, can only be awarded with compensatory damages, not with a claim for damages under section 96.

Citations:

Times 26-Jan-1998, Gazette 11-Feb-1998, [1998] 1 All ER 385, [1998] UKHL 2, [1999] AC 197, [1998] 2 WLR 198

Links:

House of Lords, Bailii

Statutes:

Copyright Designs and Patents Act 1988 97

Jurisdiction:

England and Wales

Citing:

Appeal from – Redrow Homes Ltd v Bett Brothers Plc IHCS 2-May-1997
A pursuer in an action for breach of copyright must take either an account of profits or additional damages but not both. . .
Overruled – Cala Homes (South) Ltd and Others v Alfred Mcalpine Homes East Ltd (No 2) ChD 30-Oct-1995
A plaintiff may claim damages under section 97(2) in addition to claiming an account of profits, as his primary remedy. A person claiming joint rights in the copyright as author must contribute to the ‘production’ of the work and create something . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Scotland, Damages

Updated: 07 December 2022; Ref: scu.158933

Cala Homes (South) Ltd and Others v Alfred Mcalpine Homes East Ltd (No 2): ChD 30 Oct 1995

A plaintiff may claim damages under section 97(2) in addition to claiming an account of profits, as his primary remedy. A person claiming joint rights in the copyright as author must contribute to the ‘production’ of the work and create something protected by copyright which finds its way into the finished work. There is no restriction on the way in which a joint author’s contribution may be funnelled into the finished work, and in particular that there is no requirement that each of the authors must have exercised penmanship.
The fact that there are numerous similar works produced by the author does not mean that he does not have to prove that one or more discrete copyright works have been copied.

Judges:

Ladde J

Citations:

Ind Summary 30-Oct-1995, [1995] FSR 36

Statutes:

Copyright Designs and Patents Act 1988 97(2)

Jurisdiction:

England and Wales

Citing:

See Also – Cala Homes (South) Ltd and others v Alfred McAlpine Homes East Ltd ChD 6-Jul-1995
The plaintiff alleged that the defendant had copied its house designs after a senior employee involved in creating the designs left and eventually came to work for the defendant. The plaintiff alleged that the copying was flagrant allowing . .

Cited by:

Cited – Sean Sweeney, Graham Edward Camps v Macmillan Publishers Limited, Danis Rose ChD 22-Nov-2001
The claimants were trustees of the estate of James Joyce, and complained at the publication of unpublished parts of the work Ulysses in a readers edition by the defendants. Published works are protected for fifty years after the author’s death, but . .
Cited – Robin Ray v Classic FM Plc PatC 18-Mar-1998
Contractor and Client Copyrights
The plaintiff had contributed a design for a system of classifying and selecting tracks to be played on a radio station. He did so under a consultancy contract.
Held: A Joint authorship claim required that the contributor had made some direct . .
Cited – IPC Media Ltd v Highbury-Leisure Publishing Ltd ChD 21-Dec-2004
The claimant magazine publisher alleged breach of copyright by the defendant in their magazine, as to the cover page designs used. It was not clear just which cover was said to have been copied.
Held: The first step in a copyright action is . .
Cited – Phonographic Performance Ltd v Ellis (T/A Bla Bla Bar) CA 18-Dec-2018
Additional infrimgement damages were not a fine.
The Society had succeeded in its claim of copyright infringement. The defendant having continued his breaches, it sought additional damages and committal for contempt. Having granted the committal the trial judge declined to award additional . .
Overruled – Redrow Homes Ltd and others v Bett Brothers Plc and others HL 22-Jan-1998
Additional damages under section 97 of the 1988 Act, can only be awarded with compensatory damages, not with a claim for damages under section 96. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Damages

Updated: 07 December 2022; Ref: scu.78830

Redrow Homes Ltd v Bett Brothers Plc: IHCS 2 May 1997

A pursuer in an action for breach of copyright must take either an account of profits or additional damages but not both.

Citations:

Times 02-May-1997

Statutes:

Copyright Designs and Patents Act 1988 96(2) 97

Jurisdiction:

Scotland

Cited by:

Appeal from – Redrow Homes Ltd and others v Bett Brothers Plc and others HL 22-Jan-1998
Additional damages under section 97 of the 1988 Act, can only be awarded with compensatory damages, not with a claim for damages under section 96. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Damages

Updated: 07 December 2022; Ref: scu.85931

Frozen Fridays (Trade Mark: Opposition): IPO 24 Jun 2019

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

Citations:

[2019] UKIntelP o35319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.660942

Miss To Mrs With All My Bitches (Trade Mark: Opposition): IPO 17 Jun 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)

Citations:

[2019] UKIntelP o33819

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.660953

Fivepoundworld (Trade Mark: Opposition): IPO 12 Sep 2019

Sections 5(1), 5(2) and 5(3) Average Customer – Consumer attention levels
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Sections 5(1), 5(2) and 5(3) Dilution Cases – Unfair advantage of repute

Citations:

[2019] UKIntelP o53919

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.661076

Lifesecure (Trade Mark: Opposition): IPO 6 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Procedural Issues – Costs – litigants in person, actual, security for

Citations:

[2019] UKIntelP o52319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.661087

BRF Singapore Foods v EUIPO – Tipiak (Sadia) (EU Trade Mark – Judgment) T-310/19: ECFI 25 Nov 2020

EU trade mark – Opposition proceedings – Application for EU word mark SADIA – Earlier national word mark SAIDA – 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) – Principle of sound administration – Equal treatment – Obligation to state reasons

Citations:

[2020] EUECJ T-309/19, T-310/19, [2020] EUECJ T-310/19, ECLI:EU:T:2020:566

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 07 December 2022; Ref: scu.660648

Real Pet Food Company (Trade Mark: Opposition): IPO 26 Sep 2019

Section 3(1) Descriptiveness / Distinctiveness – Devoid of character – other
Section 3(1) Descriptiveness / Distinctiveness – Descriptiveness – other characteristic of goods or services
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of
Sections 5(1), 5(2) and 5(3) Average Customer – Different consumer groups
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Section 5(4) Earlier Rights – Relevant date
Revocation / Proof of Use – Partial revocation – simple deletions

Citations:

[2019] UKIntelP o56919

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.661097

Major Golf Direct (Trade Mark: Opposition): IPO 3 Jun 2019

Section 3(6) Bad Faith – Knowledge of opponent’s use in the UK
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Issues To Do With Goods / Services – Goods v retail services

Citations:

[2019] UKIntelP o31219

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.660952

Lord Nelson (Trade Mark: Opposition): IPO 10 Jun 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – Effect of concurrent use
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – State of the register

Citations:

[2019] UKIntelP o32719

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.660949

Liberize (Trade Mark: Opposition): IPO 18 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Average Customer – Consumer attention levels

Citations:

[2019] UKIntelP o41419

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.660990

The Organised Mum (Trade Mark: Opposition): IPO 6 Jun 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of
Revocation / Proof of Use – Dates – genuine use
Revocation / Proof of Use – Partial revocation – arriving at a fair description of goods / services
Revocation / Proof of Use – Partial revocation – simple deletions

Citations:

[2019] UKIntelP o32019

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.660956

Royal Caspian (Trade Mark: Opposition): IPO 24 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Other Issues – Domain name / company name
Revocation / Proof of Use – Dates – use outside the relevant periods
Revocation / Proof of Use – Partial revocation – arriving at a fair description of goods / services

Citations:

[2019] UKIntelP o56219

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.661099

Highland Fashion Week (Trade Mark: Opposition): IPO 16 Jul 2019

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

Citations:

[2019] UKIntelP o41119

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.660984

Regeneron Pharmaceuticals Inc v Kymab Ltd and Another: PatC 1 Feb 2016

The parties disputed the validity of K’s patented mouse. R said that the specification was insufficient to allow reproduction, and that it was therefore incomplete.
Held: The specification was insufficient, and the patents invalid. The issue of construction which divided the parties is the meaning of ‘in situ replacement’
Henry Carr J considered the rival arguments on construction before concluding: ‘In my judgment, in situ replacement means replacing ‘in the position of’. The phrase is apt to describe a positional replacement and this is how it is used in context. The human sequences are to be inserted in the original position of the mouse segments juxtaposed with the mouse constant regions. The skilled person would appreciate that the patentee is using this language to distinguish targeted replacement from random insertion into the genome. This includes the case where the relevant murine sequence is deleted, and also the case where it is moved to a different location and inactivated.
The word ‘replacement’ is used in the specification to describe both deletion and displacement/inactivation. The invention is concerned with the use of LTVECs and the MOA assay to enable the targeted insertion and detection of human variable V, D and J gene segments, in place of mouse variable V, D and J gene segments, whilst retaining the mouse constant segments. Given that inactivation was a well-known alternative to deletion at the priority date, I do not consider that it would make technical sense for the patentee to have excluded embodiments where the murine sequence had been moved to a different location and rendered inactive.’

Judges:

Henry Carr J

Citations:

[2016] EWHC 87 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Appeal from – Regeneron Pharmaceuticals, Inc v Kymab Ltd and Another CA 28-Mar-2018
The claimant R now appealed from a finding that its two patents involving transgenic mice were invalid. The ‘in situ replacement’ failed to comply.
Held: The appeal succeeded. . .
At PatC – Regeneron Pharmaceuticals, Inc v Kymab Ltd and Another CA 23-May-2018
Leave to appeal to Supreme Court refused. Other post judgment issues – form of order. . .
At PatC – Regeneron Pharmaceuticals Inc v Kymab Ltd SC 24-Jun-2020
SC Kymab alleged that the relevant patents are invalid for insufficiency because they did not enable the ordinary skilled person to work the claimed invention across the breadth of the claims. The patents were . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 December 2022; Ref: scu.566275

Regeneron Pharmaceuticals, Inc v Kymab Ltd and Another: CA 23 May 2018

Leave to appeal to Supreme Court refused. Other post judgment issues – form of order.

Citations:

[2018] EWCA Civ 1186

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

At PatC – Regeneron Pharmaceuticals Inc v Kymab Ltd and Another PatC 1-Feb-2016
The parties disputed the validity of K’s patented mouse. R said that the specification was insufficient to allow reproduction, and that it was therefore incomplete.
Held: The specification was insufficient, and the patents invalid. The issue . .
Main CA Judgment – Regeneron Pharmaceuticals, Inc v Kymab Ltd and Another CA 28-Mar-2018
The claimant R now appealed from a finding that its two patents involving transgenic mice were invalid. The ‘in situ replacement’ failed to comply.
Held: The appeal succeeded. . .

Cited by:

Request for leave – Regeneron Pharmaceuticals Inc v Kymab Ltd SC 24-Jun-2020
SC Kymab alleged that the relevant patents are invalid for insufficiency because they did not enable the ordinary skilled person to work the claimed invention across the breadth of the claims. The patents were . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Animals

Updated: 06 December 2022; Ref: scu.617309

Ross v Playboy Enterprises International, Inc: IPEC 13 Jun 2016

Claim for declarations and related relief arising out of a dispute between the parties over the registration of the domain name

Judges:

Miss Amanda Michaels sitting as a Deputy Enterprise Judge

Citations:

[2016] EWHC 1379 (IPEC)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 December 2022; Ref: scu.565568

Vertical Leisure Ltd v Poleplus Ltd and Another: IPEC 27 Mar 2015

Claims were made alleging infringement of domain name and trade mark rights in accessories for use with pole dancing kits.

Judges:

Hacon J

Citations:

[2015] EWHC 841 (IPEC)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Lumley v Gye 1853
Inducing breach of contract is a Tort
An opera singer (Miss Wagner) and the defendant theatre owner were joint wrongdoers. They had a common design that the opera singer should break her contract with the plaintiff theatre owner, refuse to sing in the plaintiff’s theatre and instead . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 December 2022; Ref: scu.544910

Emerson Electric Co, John Mezzalingua Associates, Inc, Todd A Westley, Richard W Ballas, Richard R Bowles, Brian A Mitchell and Shawn M Chawgo (Patent): IPEC 17 Feb 2015

An uncontested application was filed by the proprietor Emerson Electric Co under rule 10(2) of the Patents Rules 2007. As a result, it was found that Shawn M Chawgo should be mentioned as a joint inventor along with Todd A Westley, Richard W Ballas, Richard R Bowles and Brian A Mitchell in the granted patent for the invention and directed that an addendum slip mentioning him as a joint inventor be prepared for the granted patent for the invention.

Judges:

Mrs S Eaves

Citations:

[2015] UKIntelP o07615, EP 2176928

Links:

Bailii

Statutes:

Patents Act 1977 13(1)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 December 2022; Ref: scu.545461

Omnibill (Pty) Ltd v EGPSXXX Ltd and Another: IPEC 17 Nov 2014

The claimant alleged that the defendant had copied photographs from the claimant’s escort website and used them on its own. The parties disputed the effect of the defendant’s web hosting servers not being located within the UK.

Judges:

Birss J

Citations:

[2014] EWHC 3762 (IPEC), [2015] ECDR 1

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 December 2022; Ref: scu.538780

Global Flood Defence Systems Ltd and Another v Van Den Noort Innovations Bv and Others: IPEC 29 Jan 2015

Application by the claimants for summary judgment in relation to their allegation against the first and second defendants of unjustified threats of proceedings for patent infringement.

Judges:

Hacon HHJ

Citations:

[2015] EWHC 153 (IPEC)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 December 2022; Ref: scu.541971

DKH Retail Ltd v H Young (Operations) Ltd: IPEC 8 Dec 2014

The parties disputed the designs of two overlapping parts of a gilet. The claimant (‘DKH’) claims UK unregistered design right and unregistered Community design in relation to (1) the front central portion and hood of its ‘Academy’ gilet sold under the SUPERDRY brand name and (2) the hood alone. DKH alleges that the defendant (‘H Young’) has infringed those rights by the importation and sale of its ‘Glaisdale’ gilet sold under the ANIMAL brand name.

Judges:

Hacon HHJ

Citations:

[2014] EWHC 4034 (IPEC), [2015] FSR 21

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 December 2022; Ref: scu.539763

William Mark Corporation and Another v Gift House International Ltd: IPEC 22 Aug 2014

The claimant said that the defendants imported model airplanes infringing the claimant’s patents, and registered community designs. The defendant responded that the patents were invalid.
Held: Some but not all of the patent claims were valid, and the goods were infringing.

Judges:

Hacon HHJ

Citations:

[2014] EWHC 2845 (IPEC)

Links:

Bailii

Statutes:

Patents Act 1977 69

Jurisdiction:

England and Wales

Citing:

Cited – Pozzoli Spa v BDMO Sa and Another CA 22-Jun-2007
The patentee had invented a method for storing CDs. The patentee sought leave to appeal a finding that its patent was invalid, and if successful, to appeal a finding that the defendant’s apparatus was not infringing.
Held: The application for . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 December 2022; Ref: scu.536027

Energy Glow (Trade Mark: Opposition): IPO 22 Oct 2007

The opposition was based on a CTM of ‘ENERGY COSMETICS’, registered in respect of identical goods. The Hearing Officer found the marks to be similar and a likelihood of confusion. The opposition succeeded accordingly

Judges:

Mr D Landau

Citations:

[2007] UKIntelP o30907

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 December 2022; Ref: scu.456817

Potter v Broken Hill Pty Co Ltd: 20 Mar 1906

(High Court of Australia) (affirmed)

Judges:

Griffith C.J., Barton and O’Connor JJ

Citations:

(1906) 3 CLR 479, [1906] HCA 88

Links:

Austlii

Jurisdiction:

Australia

Citing:

Appeal from – Potter v Broken Hill Pty Co Ltd 21-Aug-1905
VLR (Supreme Court – Victoria) International law – Conflict of laws – Tort committed abroad – Jurisdiction – Patent in New South Wales – Infringement by Victorian company in New South Wales of New South Wales . .

Cited by:

Mentioned – Lucasfilm 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.

Jurisdiction, Intellectual Property

Updated: 06 December 2022; Ref: scu.442607

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 letters in issue has to be decided in accordance with how they would be understood by an ordinary reader . . What is particularly important is the initial impression which the letters would have on a reasonable addressee. During court proceedings, it is inevitable that the lawyers, parties and judge will read and re-read the offending passages with ever closer attention. Such meticulous analysis is not what would happen in the real world and the court must guard against being led down a path of forensic analysis to a meaning which is narrower or broader than would occur to the ordinary recipient reading the letter . . in the normal course of business’

Judges:

Laddie J

Citations:

[1997] FSR 51

Jurisdiction:

England and Wales

Citing:

See Also – 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. . .
See Also – 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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 December 2022; Ref: scu.420495

Lock International plc v Beswick: ChD 1989

Where the claimant seeks to prevent a former employee using some but not all information obtained during his employment, the employer must be specific as to the range of what is to be protected.
Hoffmann J said: ‘Some employers seem to regard competition from former employees as presumptive evidence of dishonesty. Many have great difficulty in understanding the distinction between genuine trade secrets and skill and knowledge which the employee may take away with him. In cases in which the plaintiff alleges misuse of trade secrets or confidential information concerning a manufacturing process, a lack of particularity about the precise nature of the trade secrets is usually a symptom of an attempt to prevent the employee from making legitimate use of the knowledge and skills gained in the plaintiff’s service. That symptom is particularly evident in this case. Judges dealing with ex parte applications are usually also at a disadvantage in dealing with alleged confidential knowledge of technical processes described in technical language, such as the electric circuitry in this case. It may look like magic but turn out merely to embody a principle discovered by Faraday or Ampere.’ and
‘The employee may not, after leaving his employment, make use of, in the words of Neil LJ [in Faccenda Chicken Ltd v Fowler [1987] 1 Ch 117 at 136]: ‘secret processes of manufacture such as chemical formulae . . or designs or special methods of construction . . and other information which is of a sufficiently high degree of confidentiality as to amount to a trade secret.’ On the other hand, there will be a good deal of other information which an employee could not without breach of duty disclose while he was employed but which he is free to use as part of his own skill and knowledge after his employment has ceased. It is therefore of the essence of a claim against an employee for misuse of confidential information that the employer should be able to identify with particularity the trade secret or similar confidential information to which he lays claim. The terms of any injunction must also be capable of being framed in sufficient detail to enable the defendant to know exactly what information he is not free to use on behalf of his new employer.’
In the context of any application to vary or discharge a search order it is permissible for the Court to refer to the fruits of the search: ‘I agree that in deciding whether the defendants have suffered injustice as a result of the order, I should not ignore evidence which the order itself has brought to light.’ and
‘Even in cases in which the plaintiff has strong evidence that an employee has taken what is undoubtedly specific confidential information, such as a list of customers, the court must employ a graduated response. To borrow a useful concept from the jurisprudence of the European Community, there must be proportionality between the perceived threat to the plaintiff’s rights and the remedy granted. The fact that there is overwhelming evidence that the defendant has behaved wrongfully in his commercial relationships does not necessarily justify an Anton Piller order. People whose commercial morality allows them to take a list of customers with whom they were in contact when employed will not necessarily disobey an order of the court requiring them to deliver it up. Not everyone who is misusing confidential information will destroy documents in the face of a court order requiring him to preserve them.’

Judges:

Hoffmann J

Citations:

[1989] 1 WLR 1268, (1989) 16 IPR 497, [1989] 3 All ER 373

Jurisdiction:

England and Wales

Cited by:

Cited – Tchenguiz and Others v Imerman CA 29-Jul-2010
Anticipating a refusal by H to disclose assets in ancillary relief proceedings, W’s brothers wrongfully accessed H’s computers to gather information. The court was asked whether the rule in Hildebrand remained correct. W appealed against an order . .
Cited – Caterpillar Logistics Services (UK) Ltd v Huesca De Crean QBD 2-Dec-2011
The claimant sought an order to prevent the defendant, a former employee, from misusing its confidential information said to be held by her. Her contract contained no post employment restrictions but did seek to control confidential and other . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Employment

Updated: 06 December 2022; Ref: scu.421365

MMI Research v Cellxion: CA 16 Oct 2009

Application for leave to appeal against finding that patent valid. The defendants had received anonymously new evidence suggesting theexistence of prior art.
Held: The matter was to be remitted to the judge to deal with the new issues and none other.

Judges:

Jacob LJ, Kitchin J

Citations:

[2009] EWCA Civ 1120

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – MMI Research Ltd v Cellxion Ltd and others PatC 22-Aug-2007
Application for unless order as regards defendant’s failure to serve defence. . .
Appeal from – MMI Research Ltd. v Cellxion Ltd and Others PatC 31-Jul-2009
. .
See Also – MMI Research Ltd v Cellxion Ltd and others PatC 11-Mar-2009
. .

Cited by:

Remitted from – MMI Research Ltd v Cellxion Ltd and Others PatC 7-Mar-2011
The court had decided in favour of the claimant patent holders that the patent was valid and had been infringed. The defendants, with the consent of the Court of Appeal now asked the court to reconsider its decision so far as it was affected by new . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 December 2022; Ref: scu.377532

MMI Research Ltd. v Cellxion Ltd and Others: PatC 31 Jul 2009

Citations:

[2009] EWHC 1938 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – MMI Research Ltd v Cellxion Ltd and others PatC 22-Aug-2007
Application for unless order as regards defendant’s failure to serve defence. . .
See Also – MMI Research Ltd v Cellxion Ltd and others PatC 11-Mar-2009
. .

Cited by:

Appeal from – MMI Research v Cellxion CA 16-Oct-2009
Application for leave to appeal against finding that patent valid. The defendants had received anonymously new evidence suggesting theexistence of prior art.
Held: The matter was to be remitted to the judge to deal with the new issues and none . .
First hearing – MMI Research Ltd v Cellxion Ltd and Others PatC 7-Mar-2011
The court had decided in favour of the claimant patent holders that the patent was valid and had been infringed. The defendants, with the consent of the Court of Appeal now asked the court to reconsider its decision so far as it was affected by new . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 December 2022; Ref: scu.368656

Capellini v Bloomberg; Capellini and Bloomberg’s Applications: 2007

Citations:

[2007] FSR 26, [2007] EWHC 476 (Pat)

Jurisdiction:

England and Wales

Cited by:

Cited – 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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 December 2022; Ref: scu.276708

Burke and Margot Burke Ltd v Spicers Dress Designs: 1936

Citations:

[1936] Ch 400

Jurisdiction:

England and Wales

Cited by:

Cited – Kaisha v Green Cartridge Company (Hong Kong) Limited PC 30-Apr-1997
(Hong Kong) The claimants complained of the sale by the defendants of refilled cartridges for use with their printers.
Held: The spare cartridge manufacturer’s appeal failed: ‘repair is by definition something which does not amount to the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 December 2022; Ref: scu.242419

Sympson v Juxon: 1624

At first instance, judgment had wrongly given possession of land to the plaintiff. Upon successful appeal the defendant had his land restored along with profits made meanwhile: ‘for the plaintiff in the writ of error is to be restored to all that he lost.’

Citations:

(1624) Cro Jac 699

Jurisdiction:

England and Wales

Cited by:

Cited – Smithkline Beecham Plc Glaxosmithkline UK Ltd and Another v Apotex Europe Ltd and others (No 2) CA 23-May-2006
The parties to the action had given cross undertakings to support the grant of an interim injunction. A third party subsequently applied to be joined, and now sought to take advantage of the cross undertakings to claim the losses incurred through . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Damages

Updated: 06 December 2022; Ref: scu.242619

Ghazilian’s Trade Mark Application: 2002

The court considered the basis of the conduct of an appeal from a trade mark registry decision.
Held: The correct approach is for the appeal to proceed by way of re-hearing, but with due weight being given to the decision of the Registrar, whose hearing officers have extensive experience in dealing with trade mark matters

Citations:

[2002] RPC 628

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 December 2022; Ref: scu.182504