Category: Intellectual Property

Astea (UK) Ltd v Time Group Ltd: TCC 9 Apr 2003

The question of whether a reasonable time has been exceeded in performance of a contract is ‘a broad consideration, with the benefit of hindsight, and viewed from the time at which one party contends that a reasonable time for performance has been exceeded, of what would, in all the circumstances which are by then known to have happened, have been a reasonable time for performance. That broad consideration is likely to include taking into account any estimate given by the performing party of how long it would take him to perform; whether that estimate has been exceeded and, if so, in what circumstances; whether the party for whose benefit the relevant obligation was to be performed needed to participate in the performance, actively, in the sense of collaborating in what was needed to be done, or passively, in the sense of being in a position to receive performance, or not at all; whether it was necessary for third parties to collaborate with the performing party in order to enable it to perform; and what exactly was the cause, or were the causes of the delay to performance. The list is not intended to be exhaustive. ‘

Judges:

His Honour Judge Richard Seymour QC

Citations:

[2003] EWHC 725 (TCC), [2003] All ER (D) 212, [2007] Lloyds Rep PN 21

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Hick v Raymond and Reid HL 1893
The House was asked whether the consignee of a cargo was in breach of a contractual obligation to discharge the relevant vessel within a reasonable time, that is to say, a single obligation to do something within a reasonable time, rather than an . .
Cited – Charles Rickards Ltd v Oppenheim CA 1950
A buyer of a Rolls-Royce motor chassis agreed for a body to be built upon it by a fixed date. The body was not completed by that date, but after pressing for delivery, he gave a notice that unless delivery of the car with a completed body was . .
Cited – Universal Cargo Carriers Corporation v Citati 1957
The shipowners had cancelled a voyage charter-party because no cargo had been provided. The court asked what delay could lead to a claim for a repudiatory breach of a contract. Devlin J said: ‘This case gives rise to a difficult question. How long . .
Cited – Hong Kong Fir Shipping Co v Kawasaki Kisen Kaisha Ltd CA 20-Dec-1961
The plaintiffs had recently acquired the ship the ‘Hong Kong Fir’ and contracted to charter it to the defendants, but being late in delivering it, the defendants cancelled the charterparty contract. The plaintiffs said the repudiation was wrongful, . .
Cited – Latvian Shipping Company and Others v Stocznia Gdanska Sa CA 21-Jun-2002
A payment condition was just that and that a failure to pay entitled the seller to terminate at common law. Rix LJ said: ‘It is established law that, where one party to a contract has repudiated it, the other may validly accept that repudiation by . .
Cited – Rightside Properties Ltd v Gray ChD 1975
The vendor had served an invalid notice to complete on the purchaser. When the purchaser did not comply with the notice the vendor purported to terminate the contract by accepting the purchaser’s alleged repudiation. Walton J held that it was in . .
Cited – Dimsdale Developments (South East) Ltd v De Haan 1983
The court considered the interpretation of clauses allowing a notice to complete a contract for the sale of land. Godfrey QC said: ‘In my judgment this notice, served as it was under cover of the letter of November 10, 1981, referring to the . .
Cited – Country and Metropolitan Homes Surrey Ltd v Topclaim Ltd 1996
The issue was the proper construction and effect of condition 6.8 of the Standard Conditions of Sale, 2nd edition, in relation to the giving of a notice to complete a contract for the sale of land.
Held: The condition provided exclusively for . .
Cited – McDonald v Dennys Lascelles Ltd 1-Mar-1933
(High Court of Australia) ‘When a party to a simple contract, upon breach by the other contracting party of a condition of the contract, elects to treat the contract as no longer binding upon him, the contract is not rescinded as from the beginning. . .
Cited – Modern Engineering (Bristol) Ltd v Gilbert Ash (Northern) Ltd HL 1974
The court considered how to construe a clause in a contract which excluded a remedy provided by law. Lord Diplock said: ‘It is, of course, open to parties to a contract . . to exclude by express agreement a remedy for its breach which would . .
Cited – Hyundai Heavy Industries Co Ltd v Papadopoulos HL 1980
A shipbuilding contract provided that the second instalment of the contract price should be payable on a day certain. It gave the builders the right to rescind the contract in the event of non-payment. The buyers failed to pay the second instalment, . .
Cited – Cullinane v British ‘Rema’ Manufacturing Co Ltd CA 1954
The court considered the possibility of a claim in breach of contract for damages for both capital loss and loss of profit.
Lord Evershed MR said: ‘It seems to me, as a matter of principle, that the full claim of damages in the form in which . .
Cited – South West Water Services Ltd v International Computers Ltd 29-Jun-1999
The court looked at an allegation that there had been a total failure of consideration: ‘In my view the hardware did not have any significant value to SWW in itself (except for a minimal second hand value). Equally I am satisfied that the customer . .
Cited – Bank of Boston Connecticut v European Grain and Shipping Ltd (‘The Dominique’) HL 1989
A shipping company and a shipper responsible for the freight disputed the effect of their contract. The ship was duly loaded with its cargo and set out for the voyage from India to Europe. The bills of lading were signed. When the ship called at . .

Cited by:

Cited – Peregrine Systems Ltd v Steria Ltd CA 14-Mar-2005
The claimant provided computer software to the defendants. The defendants appealed dismissal of their defences arguing that the system had failed.
Held: No repudiatory breach was established, and moreover Steria had elected to affirm the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contract

Updated: 06 December 2022; Ref: scu.180764

Yolo (Trade Mark: Opposition): IPO 26 Sep 2019

Section 3(1) Descriptiveness / Distinctiveness – Devoid of character – slogans
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – State of the register

Citations:

[2019] UKIntelP o57019

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 December 2022; Ref: scu.661114

Next Level (Trade Mark: Opposition): IPO 8 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 – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link

Citations:

[2019] UKIntelP o37919

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 December 2022; Ref: scu.660997

The London Hair Lab (Trade Mark: Opposition): IPO 12 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) Issues To Do With Goods / Services – Goods v retail services
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
Other Issues – Priority dates

Citations:

[2019] UKIntelP o40319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 05 December 2022; Ref: scu.660992

Hybrid (Trade Mark: Opposition): IPO 11 Jul 2019

Section 3(6) Bad Faith – No intention to use
Section 3(6) Bad Faith – Knowledge of opponent’s mark outside the UK
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Procedural Issues – Cross-examination
Procedural Issues – Decisions in other jurisdictions

Citations:

[2019] UKIntelP o38919

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 05 December 2022; Ref: scu.660985

WMS Gaming Inc (Patent): IPEC 10 Mar 2015

The invention relates to a system for integrating online communal wagering and social network functions to enhance social interaction. The contribution lies in providing a ‘chat console’ to enable users of different social networks who are involved in playing the communal game, to communicate directly. This is achieved by the wagering game server being operable to store information correlating participants in the communal wagering game and their respective social network servers.
The hearing officer found that the invention was excluded as a method of doing business implemented via a program for a computer as such and therefore refused the application.

Citations:

[2015] UKIntelP o10615

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 05 December 2022; Ref: scu.545466

Neij And Sunde Kolmisoppi v Sweden: ECHR 19 Feb 2013

ECHR Article 10-1
Freedom to impart information
Freedom to receive information
Conviction and order to pay damages for operating website allowing third parties to share files in breach of copyright: inadmissible
Facts – During 2005 and 2006 the two applicants were involved in different aspects of one of the world’s largest file sharing services on the Internet, the website ‘The Pirate Bay’ (TPB). The service provided by TPB made it possible for users to contact each other through torrent files and exchange digital material through file-sharing outside TPB’s computers. In 2008 they and others were charged with complicity to commit crimes in violation of the Copyright Act on the grounds that they had furthered the infringement by the website’s users of copyright in music, films and computer games. The applicants were convicted. On appeal the first applicant was sentenced to ten months’ imprisonment and the second applicant to eight months. They were also held jointly liable with the other defendants in damages of approximately EUR 3,300,000.
Law – Article 10: The applicants had put in place the means for others to impart and receive information within the meaning of Article 10. Their actions were afforded protection under that provision and, consequently, their convictions had interfered with their right to freedom of expression. Since they were convicted only in respect of material which was protected by copyright in accordance with the Copyright Act, the interference was ‘prescribed by law’. It had pursued the legitimate aims of protecting the rights of others and preventing crime..
As to whether the interference had been necessary in a democratic society, the Court was called upon to weigh the applicants’ interest in facilitating the sharing of the information against the interest in protecting the rights of the copyright-holders. As intellectual property, copyright was entitled to protection under Article 1 of Protocol No. 1 to the Convention. Accordingly, since it had to balance two competing interests which were both protected by the Convention, the respondent State had enjoyed a wide margin of appreciation. Indeed, that margin was particularly wide in the instant case as the type of material in respect of which the applicants were convicted was not entitled to the same level of protection as that afforded to political expression and debate. Further, since the Swedish authorities were under an obligation to protect the plaintiffs’ property rights in accordance with the Copyright Act and the Convention, there were weighty reasons for the restriction of the applicants’ freedom of expression. The Swedish courts had advanced relevant and sufficient reasons for finding that the applicants’ activities within the commercially run TPB amounted to criminal conduct. Lastly, the prison sentence and award of damages could not be regarded as disproportionate in view in particular of the applicants’ failure to take any action to remove the impugned torrent files, despite being urged to do so, and of their indifference to the fact that copyright-protected works had been the subject of file-sharing activities via TPB..
In conclusion, regard being had in particular to the nature of the information shared and the weighty reasons given, the interference with the applicants’ freedom of expression had been necessary in a democratic society.
Conclusion: inadmissible (manifestly ill-founded).

Citations:

40397/12 – Legal Summary, [2013] ECHR 394

Links:

Bailii

Statutes:

European Convention on Human Rights 10-1

Human Rights, Media, Intellectual Property, Information

Updated: 05 December 2022; Ref: scu.491923

Pintos Global Services Limited (Patent): IPO 6 Apr 2001

The invention relates to a system for the exchange of information between prospective providers, such as lenders, and prospective enquirers, such as borrowers. Companies and other prospective borrowers seeking to raise finance traditionally have to approach prospective lenders through an intermediary .The present invention aims to provide a computerised system using databases to enable much easier, quicker and direct exchange of information between such parties and helps to match the requirements of the respective parties. The applicant argued that by claiming a system as opposed to a method, the present case was distinguished from Merrill Lynchs Application [1989] RPC 561, but was similar to that in Pension Benefit Systems Partnership (T 931/95) where the Technical Board of Appeal found that a claim to a computer system suitably programmed for use in a particular field, even where the field is one of business and economy, has the character of a concrete apparatus in the sense of a physical entity, man-made for a utilitarian purpose and is thus an invention within the terms of Section 52. This argument was rejected on the basis that the claim refused by the Court of Appeal in Merrill Lynch was directed to a data processing system, and so the present application was refused.

Citations:

[2001] UKIntelP o17101

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 05 December 2022; Ref: scu.454190

Pharma Intranet Information AG v IMS Health GmbH and Co. OHG: 2005

(Oberlandesgericht Frankfurt) The court asked whether a database produced by the claimant for the pharmaceutical market containing figures for revenue and sales development for medicines sold in Germany, was protected by copyright. The data was divided into a large number of geographical segments.
Held: ‘The concrete partitioning into segments, selected by the claimant with the participation of the Working Group, conveys the sufficient impression of individuality by the author of the collected work. This is because the individuality differentiates the work protected in copyright law from the unprotected mass of everyday things, from purely physical labour, routine performance. A selection or organisation that anyone would undertake in a particular manner does not constitute individual creation. If the selection or organisation is determined by the nature of the thing or is predetermined by purposefulness or logic, then there is no room for individual creative work . . It is true that the organisation of the data into segments and those segments’ border mappings occur consonant with aspects of purposefulness, because the claimant’s customers want to receive information that is as specific and informative as possible. This fact, however, does not stand in the way of the assumption of a work that is protected in copyright law. What is determinant for the segment structure’s ability to be protected within the meaning of s.4 of the UrhG, is that various criteria be considered for individual decisions and, in turn, can be variously weighted, such as, for example, the geographic position of bridges and rivers or the number of pharmacies within a segment. In the individual case, the decision goes beyond that which is manual labour or schematic and the decision allows sufficient manoeuvering room for an individuality that, in any case, satisfies the requirement of the so-called ‘small coin of copyright law’.

Citations:

[2005] ECC 12

Jurisdiction:

European

Cited by:

Cited – Football Dataco Ltd and Others v Brittens Pools Ltd (In Action 3222) and Others ChD 23-Apr-2010
The court considered what rights existed in the annual football fixture lists created by the claimants. The claimants said that the list was created only with a considerable effort applying certain rules. The defendants denied that any copyright . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 December 2022; Ref: scu.408857

Moorhouse v University of New South Wales: 1976

(High Court of Australia) The plaintiffs complained that the facilities of a library included a photocopying machine, alleging that this encouraged copyright infringement. Held; Gibbs J said: ‘a person who has under his control the means by which an infringement of copyright may be committed – such as a photocopying machine – and who makes it available to other persons, knowing, or having reason to suspect, that it is likely to be used for the purpose of committing an infringement, and omitting to take reasonable steps to limit its use to legitimate purposes, would authorise any infringement that resulted from its use.’

Judges:

Gibbs J

Citations:

[1976] RPC 151

Jurisdiction:

Australia

Cited by:

Cited – Twentieth Century Fox Film Corporation and Another v Newzbin Ltd ChD 29-Mar-2010
The defendant operated a web-site providing a search facility of the Usenet news system which allowed its users to locate copies of films online for downloading. The claimant said this was an infringement of its copyrights.
Held: The defendant . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 December 2022; Ref: scu.267926

Burgess v Burgess: 1853

The plaintiff had carried on a business selling ‘Burgess’s Essence of Anchovies’. His son set up a business with a similar name and purpose.
Held: the court would not restrain the use of his own name by a person in trade, save only if an intention to defraud was shown.

Citations:

[1853] LR 14 CD 748, (1853) De G MandG 896, [1843-60] All Er Rep 90, [1853] 22 LJ Ch 675, [1853]

Jurisdiction:

England and Wales

Cited by:

Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Cited – Spalding (A G ) and Brothers v A W Gamage Ltd HL 1915
The House considered the requirements for the tort of passing off. The judge has the sole responsibility for deciding whether anybody has been misled. He will hear evidence, but must not surrender his assessment to others.
Lord Parker said: . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 December 2022; Ref: scu.239040

Saphena Computing Ltd v Allied Collection Agencies Ltd: 1995

The court faced a claim as regards an undeveloped computer system which was sold with bugs ‘warts and all’.
Held: The court spoke of expert evidence that in a bespoke system, bugs were inevitable.

Judges:

Staughton LJ

Citations:

[1995] FSR 616

Jurisdiction:

England and Wales

Cited by:

Cited – Profile Software Ltd v Becogent Ltd OHCS 16-Feb-2005
The pursuers claimed for breach of copyright and of a software licence. The defendants disputed the title or right of the pursuers to claim.
Held: The assignation of the rights in the software carried with it the rights to enforce intellectual . .
Cited – Sam Business Systems Ltd v Hedley and Company TCC 19-Dec-2002
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contract

Updated: 05 December 2022; Ref: scu.242249

Farina v Silverlock: 1855

The defendants sold Eau de Cologne labels which infringed the plaintiff’s trade marks. However they made it clear to the purchasing retailers that they were produced by them and not by the plaintiff, and had made no misrepresentation to the retailers; they were not deceived.
Held: An injunction was granted. The court explained the relationship between the law relating to trade marks and that of passing off. ‘But if it be stated that the Defendant is manufacturing that which is known to be the trade mark which the Plaintiff alone has the right to use, and the use of which on the goods of a third party would be a fraud upon the Plaintiff; and that the Defendant is selling such labels to anyone who asks for them, and is thus scattering over the world the means of enabling parties to commit frauds upon the Plaintiff, and that such frauds have been committed; that is, I think, a sufficient averment to entitle the Plaintiff to an injunction. The ground of the jurisdiction being fraud, if the Defendant be committing fraud, either by selling goods under the Plaintiff’s trade mark, or enabling others to do so by distributing the means of doing so, it cannot be said that this Court has no power to interfere by injunction to arrest the evil at its source, without compelling the Plaintiff to wait until the whole fraud is brought to a completion by the sale of the goods.’ The jurisdiction was based on fraud and an injunction would be granted to inter alia prevent the defendant from enabling passing-off.

Judges:

Sir William Page Wood VC

Citations:

(1855) 1 K and J 509

Jurisdiction:

England and Wales

Cited by:

Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 December 2022; Ref: scu.239047

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 Court and the Court of Appeal. The patentee refused to acknowledge that the new product was outside the patent claims.
Held: An injunction was granted and proceedings had to be brought for a declaration of non-infringement. Those proceedings were successful.

Citations:

[1990] RPC 293

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

Intellectual Property, Litigation Practice

Updated: 05 December 2022; Ref: scu.237721

Bourns Inc v Raychem Corporation; Latham and Watkins (a Firm): CA 30 Mar 1999

Documents disclosed in support an application in a costs taxation, remained subject to implied duties of confidence, and they could not be used for any other purpose, including to support litigation abroad. Where questions of US law arose, a US court was the best place to decide those questions. Legal privilege is not lost under English law because it cannot be claimed in another country: ‘To suggest otherwise would mean that a court, when deciding whether to uphold a claim for privilege, would need to be informed as to whether privilege could be claimed in all the countries of the world. . . The fact that under a foreign law the document is not privileged or that the privilege that existed is deemed to have been waived is irrelevant. The crucial consideration is whether the document and its information remain confidential in the sense that it is not properly available for use. If it is, then privilege in this country can be claimed and that claim, if properly made, will be enforced.’

Judges:

Aldous LJ

Citations:

Times 12-May-1999, [1999] EWCA Civ 1128, [1999] 3 All ER 154

Jurisdiction:

England and Wales

Citing:

See also – Bourns Inc v Raychem Corporation CA 17-Dec-1998
. .

Cited by:

Cited – B and Others Russell McVeagh McKenzie Bartleet and Co v Auckland District Law Society, Gary J Judd PC 19-May-2003
(New Zealand) Solicitors resisted requests to disclose papers in breach of legal professional privilege from their professional body investigating allegations of professional misconduct against them.
Held: The appeal was allowed. The . .
See also – Bourns Inc v Raychem Corporation CA 17-Dec-1998
. .
Cited – British American Tobacco (Investments) Ltd v United States of America CA 30-Jul-2004
The claimant appealed an order for its London solicitor to be examined in connection with proceedings in the US.
Held: A court should not make an order which was superfluous. The witness had now given his evidence. However, the foreign . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice, Jurisdiction

Updated: 05 December 2022; Ref: scu.146043

Viskase Limited and Viskase (UK) Limited v Paul Kiefal Gmbh: CA 19 Mar 1999

Appeal from refusal of requests to stay the action on two grounds. First, that under the Civil Jurisdiction and Judgment Acts 1952 which gives effect to the Brussels Convention the English court has no jurisdiction to hear it. Secondly, because each of the contracts under which the plaintiffs sue contains an exclusive jurisdiction clause in favour of a court in Germany.

Citations:

[1999] EWCA Civ 1045, [1999] 1 WLR 1305, [2000] ILPr 29, [1999] CLC 957

Links:

Bailii

Jurisdiction:

England and Wales

Jurisdiction, Intellectual Property

Updated: 05 December 2022; Ref: scu.145960

Phonographic Performance Limited v AEI Redifussion Music Limited: CA 19 Feb 1999

This appeal is concerned with the circumstances in which it is appropriate for an appellate court, to which an appeal lies on a point of law from a tribunal (or court), to interfere with the exercise of a wide discretion to make an order in relation to the payment of the costs of the proceedings.

Judges:

Mummery LJ

Citations:

[1999] CPLR 551, [1999] EWCA Civ 834, [1999] 1 WLR 1507, [1999] RPC 599, [1999] EMLR 335, [1999] 2 All ER 299

Links:

Bailii

Jurisdiction:

England and Wales

Costs, Intellectual Property

Updated: 05 December 2022; Ref: scu.145749

Hosking v Legal and General Ventures Limited (2): CA 12 Feb 1999

Citations:

[1999] EWCA Civ 775

Jurisdiction:

England and Wales

Cited by:

Cited – Becerra v Close Brothers ComC 25-Jun-1999
ComC Claim for fee for introducing successful bidder at a controlled auction – no express contract – no implied contract based on City practice – claim for quantum meruit failed because no express or implied . .
Lists of cited by and citing cases may be incomplete.

Contract, Company, Intellectual Property

Updated: 05 December 2022; Ref: scu.145690

Chocosuisse Union Des Fabricants Suisse De Chocolat et Al v Cadbury Ltd: CA 25 Feb 1999

A trade association formed to protect a trading style or name, but which did not itself trade in the goods, had no trade which was capable of being damaged and accordingly had no locus standi to found an action for passing off against the use of the name it set out to defend.

Citations:

Times 15-Mar-1999, [1999] EWCA Civ 856

Jurisdiction:

England and Wales

Citing:

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

Intellectual Property

Updated: 05 December 2022; Ref: scu.79104

Bosco (Trade Mark: Opposition): IPO 29 Oct 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Issues To Do With Goods / Services – Goods v retail services
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation

Citations:

[2019] UKIntelP o65719

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 December 2022; Ref: scu.661120

Graphlon (Trade Mark: Opposition): IPO 23 Oct 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Identical marks
Sections 5(1), 5(2) and 5(3) Issues To Do With Goods / Services – Goods v retail services
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of
Sections 5(1), 5(2) and 5(3) Average Customer – Different consumer groups
Procedural Issues – Decisions in other jurisdictions

Citations:

[2019] UKIntelP o63219

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 December 2022; Ref: scu.661135

Pure (Trade Mark: Opposition): IPO 23 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) Issues To Do With Goods / Services – Goods v retail services

Citations:

[2019] UKIntelP o42619

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 December 2022; Ref: scu.661000

Sonic (Trade Mark: Opposition): IPO 3 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) Average Customer – Identification of
Sections 5(1), 5(2) and 5(3) Average Customer – Purchasing process

Citations:

[2019] UKIntelP o51219

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 December 2022; Ref: scu.661102

Soul Train Records (Trade Mark: Invalidity): IPO 31 Jul 2019

Section 3(6) Bad Faith – No intention to use
Section 3(6) Bad Faith – Knowledge of opponent’s mark outside the UK
Revocation / Proof of Use – Dates – calculation of dates
Revocation / Proof of Use – Dates – genuine use
Procedural Issues – Costs – litigants in person, actual, security for

Citations:

[2019] UKIntelP o44619

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 December 2022; Ref: scu.661009

Cupids Inspiration (Trade Mark: Opposition): IPO 11 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 – Treatment of descriptive / allusive elements
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Section 5(4) Earlier Rights – Relevant date

Citations:

[2019] UKIntelP o53719

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 December 2022; Ref: scu.661069

The Bonzo Dog Doo-Dah Band (Trade Mark: Opposition): IPO 30 Oct 2019

Section 3(6) Bad Faith – Knowledge of opponent’s use in the UK
Section 3(6) Bad Faith – Application by local agent / UK distributor problems
Section 3(6) Bad Faith – Partnership issues
Section 3(6) Bad Faith – Music groups
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Section 5(4) Earlier Rights – Relevant date

Citations:

[2019] UKIntelP o66419

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 December 2022; Ref: scu.661119

Tast Cuina Catalana (Trade Mark: Opposition): IPO 24 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 and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements

Citations:

[2019] UKIntelP o55919

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 December 2022; Ref: scu.661105

The Football Association Premier League Ltd v British Sky Broadcasting Ltd and Others: ChD 16 Jul 2013

The League sought an injunction against the majority Internet Service Provider respondents seeking to prevent them carrying links to a free sports TV internet channel.
Held: The orders were granted.

Judges:

Arnold J

Citations:

[2013] EWHC 2058 (Ch)

Links:

Bailii

Statutes:

Copyright, Designs and Patents Act 1988

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 December 2022; Ref: scu.512437

British Sky Broadcasting Group Plc v Digital Satellite Warranty Cover Ltd and Others: ChD 1 Oct 2012

The claimants alleged misuse by the defendant companies of confidential information taken from its customer database.
Held: The claims failed.

Judges:

Sir William Blackburne

Citations:

[2012] EWHC 2642 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – British Sky Broadcasting Group Plc and Others v Digital Satellite Warranty Cover Ltd and Others ChD 7-Oct-2011
The parties now disputed whether they had reached a binding agreement settling the principal dispute, which was as to the alleged misuse of confidential information from its customer database. The defendants sought a stay. The claimants said that . .
See Also – British Sky Broadcasting Group Plc and Others v Digital Satellite Warranty Cover Ltd and Others ChD 27-Oct-2011
The claimants sought summary judgment in their action against the defendants for misuse of confidential information from their customer database.
Held: Summary judgment was granted agains the personal defendants. The two companies and . .

Cited by:

See Also – British Sky Broadcasting Group Plc and Others v Digital Satellite Warranty Cover Ltd and Others ChD 19-Dec-2012
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Information

Updated: 04 December 2022; Ref: scu.465050

Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd and Others: ChD 2 May 2012

The claimant record companies sought injunctions to prevent the defendant broadband suppliers allowing access to a website which provided facilties to those wishing to swap materials which infringed the claimants’ copyrights in music.
Held:

Judges:

Arnold J

Citations:

[2012] EWHC 1152 (Ch)

Links:

Bailii

Statutes:

European Parliament and Council Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society 8(3), Copyright, Designs and Patents Act 1988 97A

Jurisdiction:

England and Wales

Citing:

Cited – Twentieth Century Fox Film Corp and Others v British Telecommunications Plc ChD 28-Jul-2011
The claimant rights holders sought an order to require the defendant broadband internet provider to deny access to its users to websites which were said to facilitate the distribution of infringing copies of their films. An earlier judgment had . .
Principal judgment – Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd and Others ChD 20-Feb-2012
The claimants, music copyright holders, sought an injunction against the defendant Internet Service Providers to require them to restrain access to a file-sharing website (TPB).
Held: The website was infringing the copyright of the claimants. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Media

Updated: 04 December 2022; Ref: scu.454052

Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd and Others: ChD 20 Feb 2012

The claimants, music copyright holders, sought an injunction against the defendant Internet Service Providers to require them to restrain access to a file-sharing website (TPB).
Held: The website was infringing the copyright of the claimants.

Judges:

Arnold J

Citations:

[2012] EWHC 268 (Ch), [2012] 3 CMLR 14, [2012] RPC 27, [2013] Bus LR D24, [2012] ECDR 14

Links:

Bailii

Statutes:

Copyright, Designs and Patents Act 1988 97A, European Parliament and Council Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society 8(3)

Jurisdiction:

England and Wales

Citing:

Cited – Twentieth Century Fox Film Corp and Others v British Telecommunications Plc ChD 28-Jul-2011
The claimant rights holders sought an order to require the defendant broadband internet provider to deny access to its users to websites which were said to facilitate the distribution of infringing copies of their films. An earlier judgment had . .

Cited by:

Principal judgment – Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd and Others ChD 2-May-2012
The claimant record companies sought injunctions to prevent the defendant broadband suppliers allowing access to a website which provided facilties to those wishing to swap materials which infringed the claimants’ copyrights in music.
Held: . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Torts – Other

Updated: 04 December 2022; Ref: scu.451434

Grimme Landmaschinenfabrik Gmbh and Co KG v Scott (T/A Scotts Potato Machinery): PatC 3 Nov 2009

Claim for infringement and cross application for revocation of patent

Judges:

Floyd J

Citations:

[2009] EWHC 2691 (Pat), [2010] FSR 11, [2010] ECDR 4

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Appeal from – Grimme Maschinenfabrik Gmbh and Co Kg v Derek Scott (T/A Scotts Potato Machinery) CA 15-Oct-2010
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 04 December 2022; Ref: scu.377356

In Re Blake’s Patent: 14 Jan 1873

EngR A Patent was first, taken out in America, afterwards in England, and two days after the date of the English Patent the invention was patented in France. The French patent was allowed to drop. On an application for prolongation of the English Patent,
Held: Following Winan’s Patent (8 Moore’s P.C. Cases, (NS) 306; S.C. Law Rep. 4 P.C. 93)-that, although the Judicial Cominittee might have jurisdiction under the 25th section of the 15th and 16th Vict c 83, to entertain the application, yet, on the ground of public policy, as the French Patent had been allowed to expire, they would not in the exercise of the discretion vested in them, reoommend the extension of the term of the English Patent.

Citations:

[1873] EngR 1, (1873) 9 Moo PC NS 373, (1873) 17 ER 554

Links:

Commonlii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 December 2022; Ref: scu.280085

In Re Carr’s Patent: 14 Jan 1873

In circumstanes showing a want of adequate remuneration, an extension of the term of Letters Patent granted for six years.
In estimating the profits derived from the Patent, the Judicial Committee mill take into consideration a deduction. from the profits of the Patent for the personal expenses of the Patentee for the exclusive devotion of his time in bringing the Patent into practical operation and public notice.

Citations:

[1873] EngR 2, (1873) 9 Moo PC NS 379, (1873) 17 ER 556

Links:

Commonlii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 December 2022; Ref: scu.280086

Cipla Ltd and others v Glaxo Group Ltd; Glaxo Group Ltd’s Patent: PatC 19 Mar 2004

Judges:

Pumfrey J

Citations:

[2004] EWHC 477 (Pat), [2004] EWHC 477 (Ch), [2004] RPC 43, (2004) 27 IPD 27060

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Brugger v Medic-Aid Ltd (No 2) ChD 1996
B alleged infringement by M of its patented nebulizer. M replied saying that the claims failed for obviousness. Features of the nebulizer were admittedly old and well known, but the claimant asserted a new mechanism which reduced the size of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 04 December 2022; Ref: scu.266600

Valucci Designs Ltd v IPC Magazines: 22 Sep 2000

The parties disputed the validity of registrations of Trade Marks for the word ‘Loaded’.
Held: This was a case of ‘non-confusing’ uses.

Judges:

Mr Simon Thorley QC

Citations:

BL 0-455-00

Jurisdiction:

England and Wales

Cited by:

Cited – Esure Insurance Ltd v Direct Line Insurance Plc ChD 29-Jun-2007
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 04 December 2022; Ref: scu.254336

Guinness v Ullmer: 1847

Labels similar to the ones used by the plaintiffs had been printed by a Mr Taylor from blocks manufactured by the defendants, and a trade mark infringement was seemingly alleged.
Held: An injunction was granted to prevent the defendants from producing or selling blocks or plates adapted to print labels similar to those of the plaintiff.

Citations:

(1847) 10 LT (OS) 127

Jurisdiction:

England and Wales

Cited by:

Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 December 2022; Ref: scu.239046

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.

Citations:

[2005] EWHC 2655 (Patents)

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

Intellectual Property

Updated: 01 December 2022; Ref: scu.237723

Southorn v Reynolds: 1865

Citations:

(1865) 12 LT (NS) 75

Jurisdiction:

England and Wales

Cited by:

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

Intellectual Property

Updated: 01 December 2022; Ref: scu.239097

Dent v Turpin: 1861

Citations:

(1861) 2 J and H 139

Jurisdiction:

England and Wales

Cited by:

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

Intellectual Property

Updated: 01 December 2022; Ref: scu.239096

Upjohn Pharmaceuticals Inc v T Kerfoot and Co Ltd: 1988

The claim was dismissed based on the finding of the learned Judge on the affidavit evidence before him that the pleadings did not disclose any reasonable cause of action: ‘when one cones to consider the inherent jurisdiction, one is entitled to look at the evidence, and evidence chat has been put in’.
Mr Justice Whitford said: ‘Equally, a long line of authorities has decided that it is only in the plainest and most obvious cases that it would be appropriate to strike out under this particular head and it has been held that a reasonable cause of action means a cause of action with some chance of success and, under this head, you have got to decide if there is a chance of success, considering only the allegations in the pleadings which go only to this, that the acts the subject of complaint, if proved, must make out an arguable case …’

Judges:

Mr Justice Whitford

Citations:

[1988] FSR 1 6

Jurisdiction:

England and Wales

Cited by:

Cited – Arsenal Football Club plc and Others v Elte Sports Distribution Ltd ChD 10-Dec-2002
The claimant alleged that the respondent had unlawfully made use of photographs of its footballers in a calendar. The respondent asked the court to strike out the claim as merely speculative, and the claimant sought pre-action disclosure.
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 01 December 2022; Ref: scu.181820

Regina v Licensing Authority Established By Medicines Act 1968 (Acting By Medicines Control Agency) ex parte Rhone Poulenc Rorer Limited; May and Baker Limited: Admn 23 Dec 1997

The applicants sought to suspend licences granted for grey or parallel imports of pharmaceutical products, pending resolution of the issue by the European Court. Licences had been granted for certain products, which the manufacturers considered to be superceded. This was an interim application. It first fell to be decided whether there was a serious issue to be tried. There was. Next would the damage be payable in damages. In this case no action would lie against the state, and losses would be irrecoverable. The balance of convenience lay in granting the injunction and to require suspension of the licences.

Judges:

Laws J

Citations:

[1997] EWHC Admin 1176

Links:

Bailii

Statutes:

Medicines Act 1968, Council Directive 65/65/EEC of 26 January 1965 for the approximation of provisions laid down by law, regulation or administrative action relating to proprietary medicinal products,, Medicines for Human Use (Marketing Authorisations etc.) Regulations 1994 (SI 1994/3144)

Jurisdiction:

England and Wales

Citing:

Applied – Regina v H M Treasury ex parte British Telecommunications Plc ECJ 1994
. .
Lists of cited by and citing cases may be incomplete.

Commercial, Intellectual Property, Licensing

Updated: 01 December 2022; Ref: scu.138121

Trek (Trade Mark: Opposition): IPO 5 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) Issues To Do With Goods / Services – Goods v retail services
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – Effect of concurrent use

Citations:

[2019] UKIntelP o44919

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 01 December 2022; Ref: scu.661062

Life Nutrients (Trade Mark: Opposition): IPO 3 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 – Composite word and device 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) Issues To Do With Goods / Services – Goods v retail services

Citations:

[2019] UKIntelP o37119

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 01 December 2022; Ref: scu.660991

Frankincense Myrrh (Trade Mark: Opposition): IPO 4 Sep 2019

Section 3(6) Bad Faith – Knowledge of opponent’s use in the UK
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Section 5(4) Earlier Rights – Relevant date
Section 5(4) Earlier Rights – Standard of proof (evidential issues)
Section 5(4) Earlier Rights – Trivial v minimal goodwill

Citations:

[2019] UKIntelP o51619

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 01 December 2022; Ref: scu.661078

‘3D Mark’ (Trade Mark: Opposition): IPO 3 Oct 2019

Section 3(1) Descriptiveness / Distinctiveness – Devoid of character – shapes / packaging
Section 3(2) Shapes – Shape resulting from the nature of the goods
Section 3(2) Shapes – Shape necessary to obtain a technical result
Section 3(2) Shapes – Shape giving substantial value to the goods
Section 3(3) Immoral and Deceptive Marks – Contrary to public policy / accepted principles of morality
Section 3(6) Bad Faith – No intention to use
Procedural Issues – Costs – litigants in person, actual, security for

Citations:

[2019] UKIntelP o58919

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 01 December 2022; Ref: scu.661116

Tappit (Trade Mark: Revocation): IPO 22 Aug 2019

Revocation / Proof of Use – Dates – genuine use
Revocation / Proof of Use – Variant forms of marks – use with matter added or subtracted
Revocation / Proof of Use – Variant forms of marks – stylistic / presentation differences

Citations:

[2019] UKIntelP o49219

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 01 December 2022; Ref: scu.661060

Heisenberg (Trade Mark: Invalidity): IPO 18 Jun 2019

Section 3(6) Bad Faith – Knowledge of opponent’s mark outside the UK
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Identical marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Well known mark claims
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)

Citations:

[2019] UKIntelP o34219

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 01 December 2022; Ref: scu.660945