Category: Intellectual Property

Michaell Van Clarke Great Hair Days (Trade Mark: Opposition): IPO 9 Jun 2003

This was an appeal from the Hearing Officer’s decision of 12 November 2002 (BL O/460/02).
The Hearing Officer had rejected the opposition on all three grounds raised. In particular he decided that Michael Van Clarke identified the applicant (given name Michael Evangelus Clarke) but for the avoidance of doubt allowed the application to be amended to show his proper name. As regards the grounds under Sections 5(2)(b) and 5(4)(a) the Hearing Officer concluded that the respective names NICKY CLARKE and MICHAEL VAN CLARKE were not confusingly similar since Clark was a common surname and no evidence had been filed by the opponents to show that they had a separate and distinct reputation in the CLARKE element of their mark.
The opponents appealed to the Appointed Person under all three grounds, claiming that the applicant should not have been allowed to amend his application, and that the Hearing Officer had failed to have sufficient regard to the distinctive nature of the element CLARKE in the opponents’ mark and had attached undue weight to the fact that it was a surname. The Appointed Person rejected the opponents’ appeal under all three grounds. He was satisfied that the name Michael Van Clarke clearly identified the applicant and the Hearing Officer was within his right to allow the applicant to amend the application form; he was also satisfied with the Hearing Officer’s reasoning in rejecting the opposition under Sections 5(2)(b) and 5(4)(a) and fully supported his decision. Appeal dismissed.

Citations:

Opp 50917, 2214352, [2003] UKIntelP o15403

Links:

PO, IPO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 16 October 2022; Ref: scu.455591

Synseal Extrusions Limited v Ultraframe (UK) Limited: IPO 13 May 2003

Patent – Application for revocation withdrawn. Costs agreed by parties. The objections were reviewed and no order for revocation was made.

Judges:

Mr M G Wilson HO

Citations:

[2003] UKIntelP o17603, O/176/03, GB 2266545

Links:

Bailii

Statutes:

Patenst Act 1977 72

Intellectual Property

Updated: 16 October 2022; Ref: scu.455566

Philip Trevor Slack and Simon Philip Slack v Joshua Charles Michael Haigh (Patent): IPO 16 Apr 2003

The international application was in the name of the defendant as both applicant and inventor. In an interim decision ([2002] UKIntelP o38402), the claimants had been given an opportunity to clarify certain matters. In the light of the further explanation that they offered, the hearing officer found and declared that S P Slack and not the defendant was the inventor, and that P T Slack and not the defendant was entitled to be granted a patent. It being likely that the application had failed to enter any national or regional phases, the hearing officer ordered that P T Slack could file a new UK application under section 12(6) in which S P Slack would be entitled to be named as inventor under section 13(1), and declared under section 12(3) that P T Slack had the right to a European patent under Arts 60 and 61 EPC . The hearing officer declined to make any orders in respect of proceedings in other jurisdictions, but gave the claimants the option of seeking further directions from the comptroller if his declaration was insufficient for such proceedings.

Judges:

Mr R C Kennell

Citations:

[2003] UKIntelP o10703, O/107/03

Links:

Bailii

Intellectual Property

Updated: 16 October 2022; Ref: scu.455538

Orbis Risk Management Others (Trade Mark: Opposition): IPO 25 Apr 2003

IPO Three separate oppositions, not consolidated, but as same issues involved only one decision.
The opponents’ opposition was based on their ownership of registrations in Classes 9, 16, 35, 41 and 42 of their mark CORBIS. The opponents claimed use of their mark in relation to computer readable media from 1994 but only gave turnover figures for the year 2000. No details of sales were provided before the material date of June 2000. Some advertising took place between September 1999 and December 2000. The Hearing Officer accepted that their mark CORBIS was an inherently distinctive mark.
The applicants also claimed extensive use of their mark in relation to property protection services with turnover increasing from andpound;5.3m in 1996/7 to andpound;33.5m in 2000/2001. They claimed that the respective firms operated in totally different trade areas and there was no likelihood of confusion.
The Hearing Officer noted the principal activities of the two parties but under Section 5(2)(b) noted that he must compare the respective specifications. Having carefully considered the matter he concluded that at best there was only a slight possibility that similar goods were at issue. As regards the respective marks he considered that ORBIS and CORBIS were not similar and he did not believe that the public would consider that the device element which preceded the word ORBIS would be seen as a letter ‘C’ and thus increase the likelihood of confusion. Taking an overall view of the matter he did not consider that the marks in their totality were similar and as there was little of any similarity in the respective goods and services, he considered there was no likelihood of confusion. Opposition failed on this ground.
Under Section 5(4)(a) – Passing Off – the Hearing Officer noted that the opponents had filed insufficient evidence to establish that they had a goodwill in their mark. Thus they must also fail in their opposition on this ground.

Judges:

Mr M Reynolds

Citations:

[2003] UKIntelP o11803, O/118/03

Links:

Bailii

Intellectual Property

Updated: 16 October 2022; Ref: scu.455536

Clear Focus Imaging Inc v Contra Vision Limited (Patent): IPO 10 Apr 2003

IPO Following refusal of a request to amend under section 75 (originally made under section 27), Contra Vision filed a revised proposal. The hearing officer refused this proposal on various grounds (including lack of novelty and added subject matter), and set out a schedule of strictly limited amendments, including the deletion of certain claims, which if made would render the proposal acceptable. A period of two months was given to Contra Vision to submit a further proposal.
Taking account of the result of this hearing and of previous hearings on the matter, no order as to costs was made.

Judges:

Mr S N Dennehey

Citations:

[2003] UKIntelP o09903, O/099/03, GB 2165292 C

Links:

Bailii

Intellectual Property

Updated: 16 October 2022; Ref: scu.455511

Xtralite Limited v Hartington Conway Limited (Patent): IPO 21 Feb 2003

When Hartington Conway bought Xtralite Industrial Rooflights Limited (XIRL), the sale agreement included rights to the patent applications in suit which had been applied for by XIRL. These patents related to a glazing system known as the Xlok which was invented by Mr Robert Tweedy who was a Director of XIRL but also Managing Director of its sister company Xtralite Limited (Xtralite). Xtralite brought the action claiming that the patents should not have been included in the sale of XIRL to Hartington Conway because they belonged to Xtralite (not XIRL).
The Hearing Officer found that whilst Tweedy was a director of both companies, his role at XIRL was purely that of a non-executive director. He was thus not an XIRL employee and XIRL had not been entitled to apply for the patents. As Tweedy’s employer, under section 39 Xtralite were entitled to first ownership of the applications.
He found that the requirement in section 30(6) that an assignment be made in writing applies even before a patent application is filed and that in this case no formal assignment from Xtralite to XIRL had been made. Furthermore, particularly given the absence of any consideration , there was no evidence that a non-written assignment had been made at any stage either.
However, he also found that the Claimants were estopped from now claiming ownership of the patent applications. Estoppel requires the presence of three essential elements: a representation from A to B, reliance by B on that representation and B acting to their detriment as a result. Having been (wrongly) advised that it was too late to challenge XIRL’s claim to ownership of the patents, Xtralite had agreed a licence from XIRL to manufacture Xloks. The Hearing Officer found on the evidence that at a meeting shortly before the licence was signed and shortly before Hartington Conway bought XIRL, Xtralite had discussed the licence with Hartington Conway. The Hearing Officer decided that by this discussion Xtralite represented to Hartington Conway that XIRL owned the patent rights. Hartington Conway acted on that representation by continuing with the purchase of XIRL and at a higher price than they would have paid if they had known XIRL might not own the patents in dispute. Furthermore, even if Xtralite had not mentioned the licence with XIRL at that meeting, their failure to do so would still have constituted representation by silent acquiescence.

Judges:

Mr P Hayward

Citations:

[2003] UKIntelP o05503, O/055/03

Links:

PO, Bailii

Statutes:

Patents Act 1977 7 8 12 30 39

Jurisdiction:

England and Wales

Citing:

See Also – Xtralite Limited v Hartington Conway Limited (Patent) IPO 25-Oct-2002
PO Preliminary decision
After the normal evidence rounds in an entitlement dispute, the defendants sought to amend their pleadings, to submit additional evidence and to have a further witness available for . .

Cited by:

See Also – Xtralite (Rooflights) Ltd v Hartington Conway Ltd ChD 31-Jul-2003
The claimant appealed a refusal of the divisional director to substitute itself as applicant for a patent.
Held: The claimant had sold its assets to the respondent. The respondent claimed that an estoppel by representation existed, saying the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 16 October 2022; Ref: scu.455491

Koito Manufacturing Co Ltd and Akinori Matsumoto and Takayuki Iwaki (Patent): IPO 31 Mar 2003

PO Patent Office – Ex Parte Decisions – As a result of an uncontested application filed under section 13(1) by Koito Manufacturing Co Ltd, it was found that Akinori Matsumoto and Takayuki Iwaki should also be mentioned as joint inventors in any patent granted for the invention and directed that an addendum slip mentioning them as joint inventors be prepared for the published application of the patent.

Judges:

Mrs Williams

Citations:

O/081/03, GB 0124450.8, [2003] UKIntelP o08103

Links:

PO, Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 16 October 2022; Ref: scu.455499