Category: Intellectual Property

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

CinkciarzPl v EUIPO (E S) (EU Trade Mark – Judgment): ECFI 16 Dec 2020

European Union trade mark – Application for a figurative European Union trade mark Euro S – Absolute ground for refusal – Lack of distinctive character – Article 7 (1) (b) of Regulation (EU) 2017/1001 – Obligation motivation

Citations:

ECLI:EU:T:2020:631, T-665/19, [2020] EUECJ T-665/19

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 19 October 2022; Ref: scu.660705

British Amateur Gymnastics Association v UK Gymnastics Ltd and Others: IPEC 26 Jun 2020

Claim for trade mark infringement and passing off.

Judges:

Her Honour Judge Melissa Clarke

Citations:

[2020] EWHC 1678 (IPEC)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Appeal from – UK Gymnastics Ltd and Others v British Amateur Gymnastics Association CA 24-Mar-2021
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 October 2022; Ref: scu.654576

Inmusic Brands v EUIPO – Equipson (Marq) (EU Trade Mark – Judgment): ECFI 2 Dec 2020

EU trade mark – Invalidity proceedings – EU word mark Marq – Earlier national and international figurative marks MARK – 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) – Declaration of partial invalidity

Citations:

ECLI:EU:T:2020:582, T-687/19, [2020] EUECJ T-687/19

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 19 October 2022; Ref: scu.660734

Fage UK Ltd and Another v Chobani UK Ltd and Another: CA 28 Jan 2014

Lewison LJ said: ‘Appellate courts have been repeatedly warned, by recent cases at the highest level, not to interfere with findings of fact by trial judges, unless compelled to do so. This applies not only to findings of primary fact, but also to the evaluation of those facts and to inferences to be drawn from them.’ and: ‘(iv) In making his decisions the trial judge will have regard to the whole of the sea of evidence presented to him, whereas an appellate court will only be island hopping.
(v) The atmosphere of the courtroom cannot, in any event, be recreated by reference to documents (including transcripts of evidence).
(vi) Thus even if it were possible to duplicate the role of the trial judge, it cannot in practice be done.’
Lewison J also explained the task of a judge in delivering his judgment: ‘It is also important to have in mind the role of a judgment given after trial. The primary function of a first instance judge is to find facts and identify the crucial legal points and to advance reasons for deciding them in a particular way. He should give his reasons in sufficient detail to show the parties and, if need be, the Court of Appeal the principles on which he has acted and the reasons that have led him to his decision. They need not be elaborate. There is no duty on a judge, in giving his reasons, to deal with every argument presented by counsel in support of his case. His function is to reach conclusions and give reasons to support his view, not to spell out every matter as if summing up to a jury. Nor need he deal at any length with matters that are not disputed. It is sufficient if what he says shows the basis on which he has acted.’

Judges:

Longmore, Lewison, Kitchin LJJ

Citations:

[2014] EWCA Civ 5, [2014] FSR 29, [2014] CTLC 49, [2014] ETMR 26

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – John Walker and Sons Ltd v Henry Ost and Co Ltd ChD 1970
The plaintiff whisky distiller claimed in passing-off against the defendant who supplied bottles and labels to a distiller in Ecuador.
Held: An injunction was granted. Having cited from Singer v Loog, the court added: ‘I would be slow to . .
Cited – HP Bulmer Ltd and Another v J Bollinger Sa and others CA 22-May-1974
Necessity for Reference to ECJ
Lord Denning said that the test for whether a question should be referred to the European Court of Justice is one of necessity, not desirability or convenience. There are cases where the point, if decided one way, would shorten the trial greatly. . .
At ChD (1) – Fage UK Ltd and Another v Chobani Uk Ltd and Another ChD 11-Dec-2012
Action for passing off – application to allow additional survey evidence . .
At ChD (2) – Fage UK Ltd and Another v Chobani Uk Limited and Another ChD 29-Jan-2013
Whether additional survey evidence should be admitted . .
At ChD (3) – Fage UK Ltd and Another v Chobani Uk Ltd and Another ChD 26-Mar-2013
Extended passing-off case about yoghurt. The main issue was whether, by the beginning of September 2012, the phrase ‘Greek yoghurt’ had, when used in the UK marketplace, come to have attached to it a sufficient reputation and goodwill as denoting a . .

Cited by:

Cited – WM v HM FC 9-May-2017
. .
Cited – Perry v Raleys Solicitors SC 13-Feb-2019
Veracity of a witness is for the court hearing him
The claimant, a retired miner, had sued his former solicitors, alleging professional negligence in the settlement of his claim for Vibration White Finger damages under the government approved scheme for compensation for such injuries. At trial, the . .
Cited – Walsh v The Council of The Borough of Kirklees QBD 5-Mar-2019
No demonstrable error of assessment – no appeal
The claimant cyclist appealed from refusal of damages after being thrown from her bike on hitting a pothole in the road. The court had found it unproven that the pothole was dangerous.
Held: The evidence had been difficult. The court noted . .
Cited – Kynaston-Mainwaring v GVE London Ltd CA 19-Oct-2022
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 October 2022; Ref: scu.520770

Fujitsu Limited (Patent): IPO 23 Feb 2005

PO The application relates to the purchase of products over the Internet, and provides a website interface that presents information regarding the price and delivery dates of a particular product against a list of retailers. This allows a customer to decide at a glance whether to trade off the cost of a product with it’s time of delivery, and for retailers to present a number of delivery schedules per product where price is varied depending on delivery time. It was common ground that the application related to a method of doing business, and the hearing officer then went on to find that the improved transaction interface did not provide a technical contribution required to make an otherwise excluded invention patentable.

Judges:

Mr H Jones

Citations:

O/041/05, [2005] UKIntelP o04105, GB0105396.6

Links:

PO, Bailii

Statutes:

Patents Act 1977 1(2)(c)

Intellectual Property

Updated: 17 October 2022; Ref: scu.456217

Ajit Weekly (Trade Mark: Invalidity): IPO 2 Feb 2005

PO Trade Marks – Inter Partes Decisions – Invalidity

Judges:

Mr J MacGillivray

Citations:

Inv 81371, 2283796, [2005] UKIntelP o03005

Links:

PO, IPO, Bailii

Cited by:

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

Intellectual Property

Updated: 17 October 2022; Ref: scu.456208

Tanktech Co Ltd v Emil Aarestrup Sorensen (Patent): IPO 4 Feb 2005

The claimant (Tanktech Co Ltd) withdrew an application under section 71 for a declaration of non-infringement in view of a favourable finding on a related case in a Norwegian court.
The defendant (Emil Aarestrup Sorensen) submitted that the application had been brought in bad faith with no bona fide belief of success, and that in consequence the defendant should receive an award of costs representing its actual costs rather than a sum based on the standard published scale. The claimant returned the allegation of bad faith and requested that the claimant’s request for costs be dismissed.
The hearing officer decided that the defendant was entitled to an award of costs, but that the circumstances were not such as to justify departure from the scale.

Judges:

Mr D J Barford

Citations:

[2005] UKIntelP o03205, EP(UK) 0460082

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 17 October 2022; Ref: scu.456226

Walkerland (Trade Mark: Invalidity): IPO 9 Dec 2004

IPO Trade Marks – Appeals to the appointed person – Application No: 2198572 – Invalidity

Judges:

Professor Ruth Annand

Citations:

Inv 81086, 2198572, [2004] UKIntelP o01305

Links:

Bailii

Citing:

See Also – Walkerland (Trade Mark: Rectification) IPO 19-Jul-2002
IPO Inter Partes Decisions – Trade Marks – Rectification . .
See Also – Walkerland (Trade Mark: Inter Partes) IPO 19-Mar-2004
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 October 2022; Ref: scu.456179

Omega (Trade Mark: Revocation) (O-007-05): IPO 11 Jan 2005

IPO 1. Genuine use; internal use; promotional use.
2. Jewellery; jewelled watches.
The registration specified ‘all goods in Class 14’. The applicant for revocation claimed that the mark had not been used in relation to any goods in Class 14 other than wristwatches and parts and fittings therefore. In the course of the proceedings the registered proprietor had filed a partial surrender, restricting the specifications to ‘jewellery; horological and chronometric instruments; parts and fittings therefor’.
The goods that remained in contention between the parties were clocks and jewellery. The Hearing Officer confined his examination of the matter to the evidence in relation to those items. He took first the evidence in relation to jewellery. In the result, after a detailed examination of the evidence the Hearing Officer concluded that the registration should be revoked in respect of all jewellery, wef 1/1/1986.
Turning to the evidence relating to clocks, the Hearing Officer eventually concluded that any such use of the mark had been ‘internal’; the registered proprietor had used the mark to promote their watches, they had not been trying to establish or maintain a market for clocks. The specification was reduced accordingly.

Judges:

Mr D Landau

Citations:

Rev 81328, 699058, [2005] UKIntelP o00705

Links:

IPO, Bailii

Intellectual Property

Updated: 17 October 2022; Ref: scu.456190

Transense Technologies Plc, Raymond David Lohr, David Daniel George Vile and Mark Lee (Patent): IPO 13 Dec 2004

PO Patents – Inter Partes Decisions – As a result of an uncontested application filed under section 13(1) by Transense Technologies PLC, it was found that Mark Lee 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.

Citations:

[2004] UKIntelP o36304

Links:

PO, Bailii

Intellectual Property

Updated: 17 October 2022; Ref: scu.456178

Elle (Trade Mark: Revocation) O/381/04: IPO 30 Dec 2004

IPO Two applications for revocation dismissed; application, partially successful in respect of third registration.
This was a decision in respect of three of five revocation actions launched on the same day and involving the same parties. The decisions in the other two cases are set out in BL O/379/04 and BL O/380/04.
The evidence of use filed by the proprietor showed use in relation to a range of clothing items. Although the applicant did not formally withdraw their applications in respect of the affected registrations, the skeleton arguments and submissions at the hearing effectively conceded the position. The Hearing Officer formally recorded that two of the three applications were dismissed.
The evidence in respect of the third registration did not establish use in relation to slippers and headgear and it was revoked in respect of those items.
Again, the Hearing Officer found that in the matter of discretion he was bound by the decision of the judge in ‘Premier Brands UK Ltd v Typhoon Europe Ltd’ q.v.

Judges:

Mr M Reynolds

Citations:

O/381/04, [2004] UKIntelP o38104

Links:

Bailii

Cited by:

See Also – Elle (Trade Mark: Revocation) O/380/04 IPO 30-Dec-2004
IPO Application for revocation successful.
This was one of five revocation actions launched on the same day and involving the same parties. The decisions in relation to the others are set out in BL O/379/04 . .
See Also – Elle (Trade Mark: Revocation) O/379/04 IPO 30-Dec-2004
IPO Application for revocation largely successful: registration reduced to ‘beach towels’.
This was one of five revocation actions launched on the same day and involving the same parties. The decisions in . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 October 2022; Ref: scu.456158

Elle (Trade Mark: Revocation) O/379/04: IPO 30 Dec 2004

IPO Application for revocation largely successful: registration reduced to ‘beach towels’.
This was one of five revocation actions launched on the same day and involving the same parties. The decisions in relation to the others are set out in BL O/380/04 and BL O/381/04.
The registrations in this case covered: ‘Bedcovers, tablecovers, household linen (other than clothing), bed blankets and beach towels.’ After a detailed examination of the evidence the Hearing Officer was not satisfied that the proprietor had shown use of the mark in relation to any of the goods, other than beach towels. Nor did the evidence demonstrate that preparations for use were under way by the end of the relevant period. Per ‘Premier Brands UK Ltd v Typhon Europe Ltd’ the tribunal had no residual discretion to preserve the registration. Accordingly, the registration was revoked in respect of all the goods for which it was registered, save ‘beach towels’.

Judges:

Mr M Reynolds

Citations:

O/379/04, [2004] UKIntelP o37904

Links:

Bailii

Citing:

See Also – Elle (Trade Mark: Revocation) O/381/04 IPO 30-Dec-2004
IPO Two applications for revocation dismissed; application, partially successful in respect of third registration.
This was a decision in respect of three of five revocation actions launched on the same day . .
See Also – Elle (Trade Mark: Revocation) O/380/04 IPO 30-Dec-2004
IPO Application for revocation successful.
This was one of five revocation actions launched on the same day and involving the same parties. The decisions in relation to the others are set out in BL O/379/04 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 October 2022; Ref: scu.456156

Elle (Trade Mark: Revocation) O/380/04: IPO 30 Dec 2004

IPO Application for revocation successful.
This was one of five revocation actions launched on the same day and involving the same parties. The decisions in relation to the others are set out in BL O/379/04 and BL O/381/04.
The registration in this case covered ‘lace and embroidery; ribbons and braid; artificial flowers; all included in Class 26’.
The Hearing Officer was not satisfied that the evidence filed by the registered proprietor showed use of the mark on the goods specified in the registration. The application for revocation succeeded accordingly. As in the case of BL O/379/04, the tribunal had no discretion to preserve the registration.

Judges:

Mr M Reynolds

Citations:

O/380/04, [2004] UKIntelP o38004

Links:

Bailii

Citing:

See Also – Elle (Trade Mark: Revocation) O/381/04 IPO 30-Dec-2004
IPO Two applications for revocation dismissed; application, partially successful in respect of third registration.
This was a decision in respect of three of five revocation actions launched on the same day . .

Cited by:

See Also – Elle (Trade Mark: Revocation) O/379/04 IPO 30-Dec-2004
IPO Application for revocation largely successful: registration reduced to ‘beach towels’.
This was one of five revocation actions launched on the same day and involving the same parties. The decisions in . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 October 2022; Ref: scu.456157

Mobilicity (Trade Mark: Opposition) O-367-04: IPO 14 Dec 2004

IPO Section 3(6): – Opposition failed.
Section 5(2)(b): – Opposition failed.
Section 5(3): – Opposition failed.
Section 5(4)(a): – Opposition failed.
1. Admission of additional evidence.
2. Admission of ‘without prejudice’ evidence.
3. Bad faith; Section 32(3) not to be used as ‘a form of revocation prior to registration’.
4. Comparison of the marks MOBIL v mobilicity
Preliminary issue : At a late stage in the proceedings each side sought to put in additional evidence. The Hearing Officer considered first the applicant’s request.
Having reviewed the principles and practice on the filing of additional evidence, however, he refused to admit it to the proceedings, principally because it related to events long after the material date and was unlikely to have an important influence on the outcome of the case.
The additional evidence sought to be introduced by the opponent was also refused. It consisted of a ‘without prejudice’ letter sent by the applicant to the opponent.
After a detailed examination of the case in the light of the relevant jurisprudence, the Hearing Officer saw no reason to depart from the general rule that ‘without prejudice’ material should not be exhibited in evidence. The opponent’s evidence was also open to additional objections in that it could have been filed much earlier in the proceedings and was in any case unlikely to have a decisive bearing on the outcome. The Hearing Officer indicated that he would refuse the evidence on these grounds also.
These matters disposed of, the Hearing Officer turned to a consideration of the matter under Section 3(6) which, in this case, related to an allegation that the applicant had no intention of using the mark in relation to the whole of the specification of goods and services. The Hearing Officer however, found no reason to doubt the good faith of the applicant and he dismissed the Section 3(6) objection, remarking that a good deal of caution had to be exercised in the application of Section 32(3); ‘it cannot become a backdoor way of demanding evidence of concrete plans in relation to all and every part of a specification; a form of revocation prior to registration.’
Taking next the objection under Section 5(2)(b), the Hearing Officer stated his view that the pleadings did not include an attack on the Class 12 goods. A TM5 having been filed requesting a statement of the Hearing Officer’s grounds in respect of that issue, a separate decision covering it was issued (see BL O/368/04). In case he should be wrong, however, the Hearing Officer treated the attack as though it included the Class 12 goods.
The services in Class 39 were identical, in Class 12 there was a high degree of similarity except in the case of lubricants and fuels, which were not similar to the applicant’s goods. Comparing the marks the Hearing Officer found they were not similar; overall, there was no likelihood of confusion. The Section 5(2)(b) objection failed as did the Section 5(3) objection, the marks not being similar. This same absence of similarity in the marks effectively decided the matter under Section 5(4)(a) also, as without it there would be no misrepresentation.
The Hearing Officer made an award of costs to the applicant, adjusted to reflect the fact that it was a litigant in person.

Judges:

Mr D Landau

Citations:

[2004] UKIntelP o36704

Links:

Bailii

Statutes:

Trade Marks Act 1994 3(6) 5(2)(b) 5(3) 5(4)(a)

Cited by:

See Also – Mobilicity (Trade Mark: Opposition) O-368-04 IPO 14-Dec-2004
1. Statement of grounds of opposition : scope of the attack.
2. Amendment of pleadings; inherent jurisdiction to allow.
In dealing with the opposition to this application (see BL O/367/04) the Hearing Officer questioned the scope of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 October 2022; Ref: scu.456165

Mobilicity (Trade Mark: Opposition) O-368-04: IPO 14 Dec 2004

1. Statement of grounds of opposition : scope of the attack.
2. Amendment of pleadings; inherent jurisdiction to allow.
In dealing with the opposition to this application (see BL O/367/04) the Hearing Officer questioned the scope of the objections under Section 5(2)(b), giving as his view that the pleadings did not include an attack on the Class 12 specification. He also refused to allow an amendment to the pleadings.
A TM5 was filed asking for a statement of the Hearing Officer’s grounds for holding this view and for his refusal of the amendment. This decision, which is supplementary to BL O/367/04, sets out the requisite statement.

Judges:

Mr D Landau

Citations:

[2004] UKIntelP o36804

Links:

Bailii

Statutes:

Trade Marks Act 1994 5(2)(b)

Citing:

See Also – Mobilicity (Trade Mark: Opposition) O-367-04 IPO 14-Dec-2004
IPO Section 3(6): – Opposition failed.
Section 5(2)(b): – Opposition failed.
Section 5(3): – Opposition failed.
Section 5(4)(a): – Opposition failed.
1. Admission of additional evidence. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 October 2022; Ref: scu.456166

CFPH LLC (Patent): IPO 14 Dec 2004

IPO The two applications are concerned with networked interactive wagering on the outcomes of events, with particular emphasis on reducing processing delays to a minimum so that in circumstances where prices are changing continuously, a client is provided with the most up-to-date information before placing a bet. In refusing the application, the hearing officer found that the invention was concerned merely with providing an improved transactional process over a computer network and therefore fell within the business method exclusion of section 1(2). The hearing officer went on to find that the invention did not provide a technical contribution required to make an otherwise excluded invention patentable, the invention in both applications merely representing non-technical changes to a business method in order to overcome technical problems.

Judges:

Mr H Jones

Citations:

[2004] UKIntelP o36604, GB0419317.3, GB0226984.3

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Cited by:

Appeal from – CFPH LLC, Patent Applications By PatC 21-Jul-2005
In the context of deciding as to the patentability the use of the description ‘technical’ was ‘a useful servant but a dangerous master’. Peter Prescott QC discussed the importance of being clear as to the meaning of an ‘invention’ saying: ‘does it . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 October 2022; Ref: scu.456152