Category: Intellectual Property

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

Yeda Research and Development CoLtd v Rhone -Poulenc Rorer International (Holdings) Inc and Imclone Systems Inc (Patent): IPO 17 Jun 2005

IPO Following the filing of a reference and statement by the claimant, the defendants (the proprietor and its exclusive licensee) in May 2004 sought a stay to await the outcome, initially of EPO opposition proceedings, but then when these were suspended, until the decision at first instance in parallel US entitlement proceedings expected to be heard end 2005 – early 2006.
The hearing officer refused to grant the stay, it weighing particularly that no date was yet fixed for the US proceedings, they would not necessarily be decided ahead of any decision by the comptroller, and would be unlikely to bind him. Affymetrix v Multilyte was cited by the claimant as the nearest case, and the hearing officer considered that it gave useful guidance although not being decisive of the matter.
Notwithstanding the citation by the defendants of precedent cases showing that a broad approach was taken to the avoiding the risk of irreconcilable judgments under the above-mentioned provisions of the Brussels Convention and its successor Regulation 44/2001, the hearing officer did not consider that there was any general public policy to this effect in respect of countries such as the US which were not bound by this regime.

Citations:

[2005] UKIntelP o16305

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456360

Smith International Inc, Charles H Dewey and John E Campbell (Patent): IPO 13 Jun 2005

As a result of an uncontested application filed under section 13(1) by John E Campbell, it was found that he should be mentioned as a joint inventor in any patent granted for the invention and directed that an addendum slip mentioning him as a joint inventor be prepared for the published patent application.

Judges:

Mrs S Williams

Citations:

GB 0210136.8, [2005] UKIntelP o15705, O/157/05

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456352

Archibald Kenrick Sons v Laird Security Hardware Limited: IPO 13 Jun 2005

IPO Patent – In section 27 opposition proceedings, the opponent (Laird Security Hardware Limited) sought to file a supplementary statement, which was opposed by the applicant for amendment (Archibald Kenrick and Sons Limited) who requested that the opposition to amendment be struck out.
It was held that admission of the supplementary statement would not materially prejudice the applicant, but that the applicant was entitled to an award of costs.

Judges:

Mr D J Barford

Citations:

[2005] UKIntelP o15605, O/156/05

Links:

Bailii

Statutes:

Patents Act 1977 27

Intellectual Property

Updated: 19 October 2022; Ref: scu.456325

Buffalo Creek (Trade Mark: Invalidity): IPO 17 Jun 2005

IPO At first instance (see BL O/353/04) the Hearing Officer had found in favour of the applicant for invalidation. The registered proprietor appealed to the Appointed Person, contending that the Hearing Officer had erred in attaching geographical signification to both BUFFALO and BUFFALO CREEK, and had failed properly to consider the conceptual difference which resulted from the addition of the word CREEK to the word BUFFALO.
Following a detailed review of the Hearing Officer’s decision, the Appointed Person upheld it and dismissed the appeal.

Judges:

Richard Arnold QC

Citations:

[2005] UKIntelP o16905

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456327

Mr and Mrs House (Trade Mark: Opposition) O/093/05: IPO 8 Apr 2005

IPO Section 5(2)(b): – Opposition failed.
Section 5(3): – Opposition failed.
Section 5(4)(a): – Opposition failed.
The opposition was based on the marks MR. AND MRS. (in various formats) registered in respect of a television programme of the same name, and various goods (including a board game), off-shoots related to the programme.
The Sections 5(3) and 5(4)(a) grounds were quickly dismissed as the evidence of use provided was insufficient for the purpose.
Turning to the opposition based on Section 5(2)(b) the Hearing Officer found some of the goods to be identical. Having compared the marks, however, the Hearing Officer found that whilst there was some similarity in them, in that both contained the words MR AND MRS, there were significant differences. In the result she found no likelihood of confusion and the opposition consequently failed on all grounds.

Judges:

Mrs A Corbett

Citations:

[2005] UKIntelP o09305, O/093/05

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456287

Bio Pure Technology Ltd v Jarzon Plastics Ltd And, Anthony Elliott (Patent): IPO 31 Mar 2005

IPO Bio Pure had approached Jarzon about a new plastics clamp they wished to produce. Following discussions between the two sides, Jarzon produced drawings which incorporated the main invention of the patents and applications in suit. The Hearing Officer held that:
1. There was a contract between Bio Pure and Jarzon for the production of those drawings.
2. To make business sense of that contract, it was necessary to imply a term that any patent rights belonged to Bio Pure (Robin Ray v Classic FM plc [1998] FSR 622 and other case law considered).
3. The main invention had in any case been devised by someone on Bio Pure’s side, not by the named inventor Mr Elliott who worked for Jarzon.
A ruling on whether there were any significant features covered by subordinate claims which justified Mr Elliott being named as a co-inventor, and if so, whether that gave Jarzon any rights in respect of those features, was deferred pending further submissions.

Citations:

[2005] UKIntelP o08705

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

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

Intellectual Property

Updated: 19 October 2022; Ref: scu.456233