Category: Intellectual Property

Ajit Weekly (Trade Mark: Invalidity): IPO 29 Dec 2005

Professor Annand set out the combined test of bad faith in a trade mark application: ‘Bad faith is to be judged according to the combined test of dishonesty for accessory liability to breach of trust set out by the majority of the House of Lords in Twinsectra Ltd v Yardley, with Gromax Plasticulture Ltd v Don and Low Nonwovens Ltd providing the appropriate standard, namely acceptable commercial behaviour observed by reasonable and experienced persons in the particular commercial area being examined.
the upshot of the Privy Council decision in Barlow Clowes is: (a) to confirm the House of Lords’ test for dishonesty applied in Twinsectra, i.e. the combined test; and (b) to resolve any ambiguity in the majority of their Lordships’ statement of that test by making it clear that an enquiry into a defendant’s views as regards normal standard of honesty is not part of the test. The subjective element of the test means that the tribunal must ascertain what the defendant knew about the transaction or other matters in question. It must then be decided whether in the light of that knowledge, the defendant’s conduct is dishonest judged by ordinary standard of honest people, the defendant’s own standards of honesty being irrelevant to the objective element.’

Judges:

Professor Ruth Annand

Citations:

[2006] RPC 25, 2283796, [2005] UKIntelP o00406

Links:

IPO, Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Ajit Weekly (Trade Mark: Invalidity) IPO 2-Feb-2005
PO Trade Marks – Inter Partes Decisions – Invalidity . .

Cited by:

Cited – Jules Rimet Cup Ltd v The Football Association Ltd. ChD 18-Oct-2007
The parties disputed on preliminary issues the ownership of the rights in the trade mark ‘World Cup Willie’. The claimant had set out to register the mark, and the defendant gave notice of its intention to oppose. The claimant now alleged threat and . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 October 2022; Ref: scu.456487

Attaca Limited v Myriad Genetics, Endorecherche Inc, University of Pennsylvania and Hsc Res Dev Lp (Patent): IPO 14 Dec 2005

IPO After initiating the action, the claimant failed to prosecute the case diligently. He failed to respond to numerous communications from the Office. This amounted to an abuse of process and the action was therefore struck out for want of prosecution. The hearing officer decided that there was no public interest in continuing the action under section 72.

Judges:

Mr P Thorpe

Citations:

[2005] UKIntelP o32205, EP 0785216

Links:

Bailii

Statutes:

Patenst Act 1977 72

Intellectual Property

Updated: 19 October 2022; Ref: scu.456488

Seiko Epson Corporation, Saturo Hosono, Tomoaki Abe, Shuji Yonekubo, Minoru Usui and Masahiko Yoshida (Patent): IPO 30 Nov 2005

IPO As a result of an uncontested application filed under section 13(1) by Seiko Epson Corporation, it was found that Minoru Usui and Masahiko Yoshida should also be mentioned as joint inventors in granted patent EP (UK) 0548984 and directed that an addendum slip mentioning them as joint inventors be prepared for the granted patent for the invention.

Judges:

Mrs S Williams

Citations:

[2005] UKIntelP o31105, O/311/05

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456484

Omega (Trade Mark: Revocation) – O-281-05: IPO 17 Oct 2005

IPO 1. Genuine use; internal use; use between related companies.
2. Admission of further evidence on appeal.
3. ‘The relevant buying public . . would perceive a watch with precious stones adorning the face and/or bracelet as an item of jewellery’. (see BL O/393/03)
At first instance (see BL O/007/05) the Hearing Officer had found the applicants for revocation successful in respect of jewellery and clocks and had partially revoked the registration accordingly. The registered proprietor appealed to the Appointed Person, seeking to have the registration restored so as to read ‘jewellery; horological and chronometric instruments; parts and fittings therefor’. They also applied to introduce further evidence on appeal. Reviewing the decision below the Appointed Person noted that the Hearing Officer appeared to have ignored certain evidence of use (because it related to watches; use of which was not in dispute) and also had not properly understood the relationship between the various parts of the parent company’s group of companies.
In the result the Appointed Person decided to admit the further evidence and also found that the Hearing Officer had erred in failing to take into account the evidence of use on watches, as this provided an important backdrop against which to assess the genuineness of the use in respect of the other items. The Appointed Person therefore decided that the matter should be considered afresh, and that the further evidence should be included in this re-assessment.
Having done so, the Appointed Person found that the proprietor had shown genuine use of the mark in relation to clocks and also genuine use of the mark ‘on the main items that the public would perceive as falling within the description ‘horological and chronometric instruments’.’
Also, in an important comment on her own decision in a related case (see BL O/393/03) Professor Annand said ‘With hindsight, I should have categorically stated that a significant proportion of the relevant buying public would, in my view, perceive a watch with precious stones adorning the face and/or bracelet as an item of jewellery as well as being a timepiece.’
Taking all this into account Professor Annand decided that the registration should be partially restored so as to cover ‘jewellery watches and pins; horological and chronometric instruments; parts and fittings therefor’. Both parties having achieved a measure of success, the Appointed Person decided that they should bear their own costs in the appeal. But in view of the lateness of the application she awarded costs to the respondents in the matter of the application to admit further evidence

Judges:

Professor Ruth Annand

Citations:

O-281-05, [2005] UKIntelP o28105

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456455

British Numberplate Manufacturers Association v Hills Numberplates Limited (Patent): IPO 28 Oct 2005

IPO Second preliminary decision – Having found in the earlier decision that the BNMA was not entitled to make the application in its own name, the hearing officer had been prepared to allow the application to proceed with the substitution of another applicant, subject to a guarantee in relation to costs already incurred in the proceedings in line with Moores Patent O/25/92 . Bestplate Ltd now proposed to substitute and undertook to accept liability for such contribution to costs as the BNMA or Bestplate were adjudged liable to make at the conclusion of the proceedings. The defendant objected that this was not in the spirit of Moore because it did not guarantee costs before substitution and did not require the new applicant to accept the statement filed by BNMA. The hearing officer did not accept the defendants arguments. However, he did not accept the proposed guarantee, considering that it should include costs awarded at any stage of the proceedings. If Bestplate were willing to give that guarantee, he would order substitution to proceed with consequential amendment of the pleadings being made in the Office.

Citations:

[2005] UKIntelP o29305

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456443

Sirna Therapeutics Inc (Patent): IPO 1 Sep 2005

IPO The application GB 0507019.8 was filed on 6 April 2005 and claimed priority from two US applications, the earlier of which was filed on 20 February 2004, outside the twelve-month period for normal priority claims. This filing was accompanied by a request to make a late declaration of priority under section 5(2B) of the Act. The applicant had intended to file at the US Patent Office within the 12-month priority period a PCT application claiming priority from the same earlier applications. This PCT application would have designated the United Kingdom. However the wrong cover sheet was inadvertently filed with the application and therefore the application was effectively filed as a US utility application. The case turned on the meaning of section 5(2C)(b) of the Act, specifically on whether the failure to file the application in suit within the priority period was unintentional. The hearing officer held that to satisfy section 5(2C)(b) the applicant had to have intended to file the very same GB national application with the same application papers, within the twelve-month period. In the present case this had not been satisfied. Rather the applicant intended to file a different application, namely a PCT application, before the end of the twelve month period. The hearing officer also found that no such PCT application was in existence and for this reason also such an application could not be considered as ‘the application in suit’ for the purposes of section 5 of the Act. Therefore the request was refused.

Citations:

[2005] UKIntelP o24005

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456432

Clear Focus Imaging Inc v Contra Vision Limited (Patent): IPO 25 Oct 2005

The claimant, Clear Focus Imaging Inc, sought to introduce amended pleadings at a late stage in the proceedings. The amendments extend an existing attack on the validity of one claim on the ground that it involves added subject matter, to certain other claims dependant on it. They also adduce a new ground in relation to validity of certain claims, based on the change in the law in relation to product-by-process claims introduced by the judgment in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 Notwithstanding a considerable presumption against the introduction of new pleadings at this stage, the Hearing Officer admitted the amendments on the basis that the first was trivial and the second was necessary to allow the case to be argued in relation to the law as it now stands.

Judges:

Mr P Back

Citations:

[2005] UKIntelP o28705, O/287/05, GB 2165292

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456445

Delta (Trade Mark: Opposition): IPO 1 Sep 2005

Section 5(4)(a): – Opposition failed.
Points Of Interest
The opponent appealed to the Appointed Person. In her decision dated 27 April 2006 (BL O/135/06) the Appointed Person decided that the Hearing Officer had been correct in finding that the applicant was the senior user and dismissed the appeal.
Summary
The mark in suit was applied for on 13 June 2002. In these proceedings the opponent claimed to have used the mark DELTA in relation to shower cubicles from March 1999 onwards and filed evidence showing considerable use in the period March 1999 to 2002 and beyond.
The applicant also claimed use of its mark from 1996 and filed evidence to support this claim. The applicant’s evidence was not quite so well documented or extensive as that of the opponent but there was sufficient evidence to convince the Hearing Officer that there had been limited use of the mark DELTA by the applicant in respect of shower cubicles from at least 1997 onwards. Thus it was the senior user, albeit on a lesser scale as compared to the use of the opponent.
The Hearing Officer considered the matter under Section 5(4)(a) and concluded that as the applicant was the senior user the opposition by the opponent must fail.

Citations:

[2005] UKIntelP o24205

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456415

David Duckett and Joan Duckett (Patent): IPO 12 Aug 2005

IPO The application relates to a propulsion unit including electric and hydraulic systems alleged to work by using an alternator to maintain a battery at full charge whilst providing further electricity for auxiliary power. Objection was also raised that the invention lacked novelty and/or an inventive step on the basis of two documents. The HO held that the application would contravene the law of conservation of energy since it appeared to create energy out of nothing. She also found the invention to be novel but obvious. She therefore refused the application as not having industrial application and lacking an inventive step.

Judges:

Mrs S E Chalmers

Citations:

[2005] UKIntelP o22805, O/228/05, GB 0208751.8

Links:

Bailii

Statutes:

Patents Act 1977 1(1)(a) 1(1)(b) 1(1)(c)

Cited by:

Appeal from – Duckett v Comptroller-General of the Patent Office PatC 24-Nov-2005
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 October 2022; Ref: scu.456396

Omega (Trade Mark: Invalidity) (O-227-05): IPO 13 Jul 2005

IPO Material date for determination of relative rights; in an appropriate case a reference to the ECJ may become necessary.
At first instance (see BL O/211/04) the Hearing Officer had found for the applicants under Sections 5(2)(b) and 5(4)(a), in respect of period timers, and had ordered the removal of those items from the registrations. The registered proprietor appealed to the Appointed Person, contending that the Hearing Officer had erred in finding similarity in the goods because he had attached too little significance to the qualifications ‘all for scientific and/or industrial purposes’ in a sophisticated area of trade. He had also erred in holding that the relevant time for determining the parties relative rights was the date of the application for registration.
The Appointed Person upheld the Hearing Officer’s findings in respect of Sections 5(2)(b) and 5(4)(a) but came to a different view about the material date. Since this latter issue was not crucial in this case the appeal was dismissed but the Appointed Person recorded her view that in an appropriate case a reference to the ECJ for a preliminary ruling may be necessary.

Judges:

Professor Ruth Annand

Citations:

O/227/05, [2005] UKIntelP o22705

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456380