Category: Intellectual Property

Walkerland (Trade Mark: Inter Partes): IPO 19 Mar 2004

Judges:

Mr M Foley

Citations:

2198572, [2004] UKIntelP o07104

Links:

Bailii

Citing:

See Also – Walkerland (Trade Mark: Rectification) IPO 19-Jul-2002
IPO Inter Partes Decisions – Trade Marks – Rectification . .

Cited by:

See Also – Walkerland (Trade Mark: Invalidity) IPO 9-Dec-2004
IPO Trade Marks – Appeals to the appointed person – Application No: 2198572 – Invalidity . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 October 2022; Ref: scu.455904

Eventsmarket Pty Ltd (Patent): IPO 26 Mar 2004

OIP The invention concerns a computer-based system for a form of online betting in which the participants effectively bet against each other rather than a bookmaker. It is based on the use of ‘coupons’ which are created and traded in the system. A coupon is defined as having a set value if some future event occurs, and no value if the event does not occur. The coupons are traded at a price determined by supply and demand, and the price of a coupon is thus analogous to the odds on a bet. The claims under consideration related to a system including a web server, database and other components comprising means to carry out the specified transactions. An alternative set of claims directed to an apparatus for playing a game having similar components was also considered.
The applicant argued that the invention made a technical contribution because the new and simplified nature of the system resulted in reduced use of bandwidth and other physical resources in comparison with existing systems. This argument was rejected and the application refused on the grounds that such benefits are not on their own enough to warrant a finding of technical contribution if the field of the invention is itself non-technical. In this case the only effects of the invention were in the field of business methods, the invention involved the solution of no technical problem within the computer, and no technical considerations beyond the skill of the computer programmer were involved in its realisation.
An argument based on the alternative claims that Official Ruling 1926(A) (appendix to 43 RPC), which sets out criteria for acceptance of claims to board games, should be applied by analogy to a computer system claimed as a game, was rejected on the grounds that the technical contribution requirement applies to all categories of excluded matter, including methods for playing games, and cannot be avoided by simple claim reformulation.

Judges:

Mr A C Howard

Citations:

GB 0202537.7, [2004] UKIntelP o08704

Links:

PO, Bailii

Statutes:

Patents Act 1977 1(2)(c)

Intellectual Property

Updated: 17 October 2022; Ref: scu.455878

IDA Limited Et Al v University of Southampton Et Al (Patent): IPO 31 Mar 2004

It was common ground that one of the claimants (M) contacted one of the defendants (H) with the idea of using magnetic particles instead of electrostatic particles in Hs prior cockroach trapping technology. M also supplied samples of magnetic particles for H to test. These tests proved the concept. The hearing officer was not persuaded on the balance of probabilities that H had thought of trapping or killing pests, such as insects, using magnetic particles to adhere to the cuticles of the pests, prior to any contact between the defendants and the claimants on this matter. He therefore found that M was solely responsible for devising this concept. The Hearing Officer also found on the balance of probabilities that M had devised a second inventive concept comprising an insect trap or bait station wherein magnetic particles are anchored to a magnetic zone. He further found that IDA was entitled to the patent applications by virtue of a prior assignment made by M. The Hearing Officer considered an alleged Gentlemans agreement concerning ownership of intellectual property but found that it was not a binding agreement and so it did not disturb his finding on entitlement. The claimants also presented a case for entitlement as the result of an alleged misuse of confidential information but the Hearing Officer did not consider this aspect of the claimants case in view of his finding on other grounds that IDA was entitled to be granted the patents in question.

Judges:

Mr S N Dennehey

Citations:

O/086/04, [2004] UKIntelP o08604

Links:

PO, Bailii

Statutes:

Patents Act 1977 8 12 13

Intellectual Property

Updated: 17 October 2022; Ref: scu.455882

John Francis Regan (Patent): IPO 2 Feb 2004

IPO The application concerns a computerised system for linking loan application and debt recovery procedures. When a loan eg for a car is applied for, information on the applicant and the vehicle etc is stored on a database. That same information is then used to co-ordinate a debt recovery process carried out by a number of agents if the loan is in default. The system reduces the risk of data input errors and makes the recovery process more efficient.
The application was refused as a method for doing business and a program for a computer. The problem to be addressed was one of business efficiency and the advantages achieved were exactly the sort expected when a computer system is employed to do what was previously done manually.

Judges:

Mr A Bartlett

Citations:

[2004] UKIntelP o03004, O/030/04

Links:

Bailii

Intellectual Property

Updated: 17 October 2022; Ref: scu.455859

Fujitsu Limited (Patent): IPO 2 Feb 2004

IPO Excluded fields (refused) The application concerns a system to enable semiconductor design information (IP) to be shared efficiently over a computer network by registered users. Each piece of semiconductor IP includes the detailed design information, a catalog portion to enable items meeting a users search criteria to be located and supplementary information to enable the user to select the most suitable piece from those meeting his general requirements.
The hearing officer found that the invention was concerned with administrative processes of the sort considered to fall within the business method exclusion and moreover that it made no technical contribution.

Judges:

Mr A Bartlett

Citations:

O/031/04, [2004] UKIntelP o03104, GB9902887.0

Links:

PO, Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 17 October 2022; Ref: scu.455854

Generics (UK) Ltd and others v H Lundbeck A/S: PatC 4 May 2007

Kitchin J said: ‘The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.’

Judges:

Kitchin J

Citations:

[2007] EWHC 1040 (Pat), [2007] RPC 32

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Generics (UK) Ltd v H Lundbeck A/S CA 2-Aug-2006
. .
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 . .

Cited by:

Cited – Conor Medsystems Inc v Angiotech Pharmaceuticals Inc and others HL 9-Jul-2008
The respondents had applied for and obtained an order to revoke the appellant’s patent of a stent for obvousness. Though the parties had settled, the public law element required the intervention of the Comptroller General. The House was asked about . .
Dictum Approved – H Lundbeck A/S v Generics (UK) Ltd and others CA 10-Apr-2008
The court heard an appeal against a finding that a patent for a chemical compound was invalid for insufficiency.
Held: The appeal succeeded.
Enough information to ‘work the invention’ meant in order to make the product. . .
Cited – W L Gore and Associates Gmbh v Geox Spa PatC 7-Oct-2008
The claimants sought a declaration of non-infringement of four patents relating to waterproof fabrics for shoes.
Held: The patents could not be set as invalid for obviousness. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 October 2022; Ref: scu.251661

Societe Des Produits Nestle Sa v Mars UK Limited: CA 26 Jul 2004

The appellant had sought to register as a trade mark the shape of a polo mint. The objector said it lacked sufficient distinctive character. The appellant sought to amend the specification of the trade mark to limit its application as to the goods to which it would be applied, and the dimensions and colour.
Held: The specification could not be amended. Such an amendment did not fall within section 13(1), since the requirement sought to be altered did not limit the ‘rights conferred by the registration’. The appellant must instead commence a new registration application with the new specification.

Judges:

Lord Justice Chadwick, Lord Justice Mummery, Master Of The Rolls Lord Phillips Of Worth Matravers, Mr

Citations:

[2004] EWCA Civ 1008, Times 04-Aug-2004

Links:

Bailii

Statutes:

Trade Marks Act 1994 13 39(1)

Jurisdiction:

England and Wales

Citing:

Cited – Robert McBride Ltd’s Trade Mark Application TMR 2003
The applicant sought to amend its application for a trade mark. The Appointed Person refused the application, emphasising that an applicant must specify his claim from the start. Geoffrey Hobbs QC said: ‘Amendment of a trade mark after registration . .

Cited by:

Reference from – Nestle v Mars UK Ltd (Approximation Of Laws) ECJ 7-Jul-2005
Europa Trade marks – Directive 89/104/EEC – Absence of distinctive character – Distinctive character acquired through use – Use as part of or in conjunction with a registered trade mark.
‘An applicant who . .
Cited – L’Oreal Sa and others v Bellure NV and others ChD 4-Oct-2006
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled.
Held: The . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 October 2022; Ref: scu.199574

Hadley Industries Plc v Metal Sections Limited, Metsec (UK) Limited: PatC 13 Nov 1998

A court no longer has the discretion as to whether to amend a patent upon application, but must, following European practice, do so when a proper application is made. This is the case despite the clear wording of the English Act. A judge at first instance should be careful to follow a line of cases also at first instance so as to avoid uncertainty: ‘I do not pretend that I would have regarded the point as at all easy, if it had been virgin territory. It would be wrong to leave this case with the impression that I regard the decisions of the three judges as clearly right or, indeed, as wrong. What I do think is that the arguments that I have been presented with do not justify me in departing from those decisions. I consider that the arguments that have been addressed to me are arguments which should be addressed to the Court of Appeal. For my part, I await their decision with interest. For me, I think the right course must be to follow Laddie J, Pumfrey J and Jacob J. Whether one characterises that course as craven or prudent no doubt depends on whether one is [the defendant] or the [claimant].’

Citations:

Times 28-Oct-1999, [1998] EWHC Patents 284

Links:

Bailii

Statutes:

Patents Act 1977 75

Jurisdiction:

England and Wales

Citing:

Cited – PLG Research Ltd and Another v Ardon International Ltd and Others ChD 25-Nov-1994
A patent infingement claim was met by the assertion that the material covered had been disclosed before the patent had been obtained. The court was asked as to the test of whether the information in a claim had been disclosed. Aldous J said: ‘Mr. . .

Cited by:

Cited – National Westminster Bank Plc v Spectrum Plus Ltd and others ChD 15-Jan-2004
The company granted a debenture to the claimant purporting to secure its book debts. The company went into liquidation. The liquidator challenged the bank’s charge.
Held: Siebe was wrongly decided. The charge was ineffective over the book . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 October 2022; Ref: scu.163082

Siemens Schwiez Ag v Schwihag Gesellschaft Fur Eisenbahnoberbau Mbh (Patent): IPO 30 Jan 2004

Siemens applied for the (partial) revocation of Schwihag’s patent for railway sleepers on grounds of lack of novelty and inventive step in respect of specified claims. The Hearing Officer found neither ground to be made out, issued a Certificate of Contested Validity, and awarded costs to the proprietor.

Citations:

[2004] UKIntelP o02904

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 16 October 2022; Ref: scu.455840

Auntie G’s Jolly Good Meals / Auntie G Auntie G’s Jolly Good Meals / Auntie G (Trade Mark: Opposition): IPO 20 Jan 2004

IPO At first instance (see BL O/094/03 and BL O/095/03)) the Hearing Officer had found against Aunty G Limited (AGL) as applicant in BL O/095/03) and as opponent in BL O/094/03). Aunty G Limited appealed against both the decisions.
The Appointed Person noted that an appeal in one case could not succeed if the appeal in the other case were dismissed.
Aunty G Limited’s case had been that Netbiz Limited’s reclassification had been contrary to Section 39(2) and hence their application was invalid.
The Appointed Person having reviewed the terms of the Act and Rules said ‘The guiding principle is that in the event of a conflict between the linguistic description and the numerical identification, the linguistic description prevails.’ The Registrar’s determination as to the class within which any particular goods or services fall was final under Section 34(2).
After examining the matter the Appointed Person concluded that the eventual classification on Netbiz Limited’s application reflected the range of goods as originally described. Hence the application was valid; the appeal was dismissed and hence the other appeal could not succeed.

Citations:

[2004] UKIntelP o08304

Links:

Bailii

Intellectual Property

Updated: 16 October 2022; Ref: scu.455818

Leather Master (Trade Mark: Opposition): IPO 20 Jan 2004

IPO This was an appeal from the Hearing Officer’s decision of 2 April; 2003 (BL O/090/03) in which he decided that the provisions of Rule 13(6) of the Trade Marks Rules 2000 were mandatory and that the application should be deemed abandoned.
Before the Appointed Person the applicant relied upon essentially the same arguments as before the Hearing Officer. They contended that they had in substance complied with the requirements of Rule 13(3) and in any event they should be granted relief from the provisions for Rule 13(6).
The Appointed Person carefully examined the applicable Section of the Trade Marks Act 1994, Section 66 which required the use of forms and the associated Rule 3 of the Trade Marks Rules 2000. The use of forms was mandatory and while information might be provided by way of counterstatement and letter this was insufficient to comply with Rule 13(3). The requirements of Rule 13(6) followed and the application must be deemed abandoned.
The Appointed Person also considered Rule 68(1) and (3) and confirmed that the Registrar had no power to grant an extension. Nor could Rules 57 and 66 assist the applicant.

Citations:

[2004] UKIntelP o08404, O/084/04

Links:

Bailii

Intellectual Property

Updated: 16 October 2022; Ref: scu.455828

Elizabeth Emanuel (Trade Mark: Revocation): IPO 16 Jan 2004

IPO The Hearing Officer in the above proceedings found for Continental Shelf 128 Limited. (Decisions dated 17 October 2002) (BL O/424/02 and BL O/425/02). A request by Continental Shelf 128 Limited that the appeals to the Appointed Person be referred to the High Court was refused by the Appointed Person in his decision dated 27 June 2003 (BL O/196/03).
The background to these proceedings is set down in the Hearing Officer’s decision. Briefly Elizabeth Emanuel is a famous dress designer who had her own company at one stage. She later set up a company with Continental Shelf’s predecessors and assigned her registered mark which consisted of her name and device. She then left that company but Continental Shelf retained ownership of the mark.
Continental Shelf later applied to register the ELIZABETH EMANUEL name solus and the Hearing Officer found that they were entitled to do so. He also refused the application to revoke the existing mark.
The appeal attacked the Hearing Officer’s decision on two grounds:
(i) he wrongly assessed the evidence; and
(ii) he applied the wrong legal test when considering sections 3(3)(b) and 46(1)(d) of the Act.
The Appointed Person expressed some doubts about the Hearing Officer’s decision and suggested that he might have been more precise when considering the nature of any deception which might have occurred after the separation of the two parties. He also stated in respect of the revocation action that the relevant date was the date of the application for revocation and not the date of the hearing.
The Appointed Person went on to consider the nature of deception envisaged by Articles 3(1)(g) and 12(2)(b) of the Directive while at the same time recognizing that the Directive allowed the Assignment of goodwill and marks in a business. Thus there was likely to be a period where the public might be deceived.
With the agreement of both parties he suggested that a submission as regards these matters should be submitted to the European Court of Justice for guidance. The wording of the relevant question to be agreed with the parties.

Citations:

Opp 49342 Rev 11105, 1586464, 2161562B, [2004] UKIntelP o01704

Links:

PO, IPO, Bailii

Citing:

See Also – Elizabeth Emanuel, Elizabeth Emanuel Double E Crown Device (Trade Mark: Revocation) IPO 27-Jun-2003
IPO The Hearing Officer in the above proceedings found for Continental Shelf 128 Limited. (Decisions dated 17 October 2002 (BL O/424/02 and BL O/425/02). Ms Emanuel appealed to the Appointed Person. Subsequently, . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 16 October 2022; Ref: scu.455822