Category: Intellectual Property

The Washington Post Company (Patent): IPO 24 Apr 2013

IPO The application relates to a data processing system and method in which tailored content is sent from the data processing system to a user’s computer based on a user record that the user can update. There is a data repository in which information files and their associated metadata are stored and the data processing system is used to selectively retrieve information files from the repository and provide a set of results to the user in the form of an executable document transferred across a network. A two-stage filtering process based upon attributes previously selected by the user is used to selectively retrieve the content which is presented to the user as the executable document when they select one of their ‘channels’. The user record is modified when the user selects certain mark-up associated with the information file, the mark-up also being displayed as part of the executable document. The user record is also displayed.
The Hearing Officer applied the Aerotel/Macrossan test in light of Symbian and noting the signposts found in the ATandT/Cvon judgment. The Hearing Officer concluded that the actual contribution did not satisfy any of the signposts and found that the contribution related solely to excluded matter as a computer program as such. The application was refused.

Citations:

[2013] UKIntelP o16313

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 30 November 2022; Ref: scu.511204

Annco v OHMI-Freche And Fils (Ann Taylor Loft) (Intellectual Property): ECFI 17 Feb 2011

ECFI Community trade mark – Opposition proceedings – Application for the Community word mark ANN TAYLOR LOFT – Earlier national word mark LOFT – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009.

Citations:

T-385/09, [2011] EUECJ T-385/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 30 November 2022; Ref: scu.430194

Murphy v Media Protection Services Ltd: Admn 21 Dec 2007

The prosecutor appealed dismissal of a charge of receiving a broadcast television programme with intent to avoid payment. The defendant ran a public house. She acquired a card which allowed her to receive transmissions from a Greek satellite broadcasting premier league football matches. The intellectual property rights to such matches in the UK lay with BSkyB alone. BSkyB had captured the visual images and sounds and transmitted them with commentaries. These were then sold on to the Greek company.
Held: The appeal was dismissed. The requisite intent to avoid any charge applicable was satisfied in the circumstances. It was wrong to attempt to determine whether a programme included in a broadcasting service is provided from a place in the United Kingdom by reference to Directive 93/83.

Judges:

Pumfrey LJ, Stanley Burnton J

Citations:

[2007] EWHC 3091 (Admin), [2008] Bus LR 1454, [2008] ECDR 9, [2008] ACD 30, (2008) 31(3) IPD 31018, [2008] FSR 15, [2008] 1 WLR 1869

Links:

Bailii

Statutes:

Copyright, Designs and Patents Act 1988 297(1), Copyright and Related Rights Regulations 2003 (SI 2003/2498), Copyright and Related Rights Regulations 1996 (SI 1996/2967, Council Directive 93/83/EEC of 27th September 1993 on the co-ordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable re-transmission, Council Directive 89/552/EEC of 3rd October 1989 on the co-ordination of certain provisions laid down by law, regulation or administrative action in Member States concerning the pursuit of television broadcasting activities

Jurisdiction:

England and Wales

Citing:

Cited – Marleasing SA v La Comercial Internacional de Alimentacion SA ECJ 13-Nov-1990
Sympathetic construction of national legislation
LMA OVIEDO sought a declaration that the contracts setting up Commercial International were void (a nullity) since they had been drawn up in order to defraud creditors. Commercial International relied on an EC . .
Cited – Entidad de Gestion de Derechos de los Productores Audiovisuales (Egeda) v Hosteleria Asturiana SA (Hoasa). ECJ 3-Feb-2000
Europa The question whether the reception by a hotel establishment of satellite or terrestrial television signals and their distribution by cable to the various rooms of that hotel is an act of communication to . .
Cited – Lagardere Active Broadcast ECJ 14-Jul-2005
Europa Copyright and neighbouring rights – Broadcasting of phonograms – Equitable remuneration. . .
Lists of cited by and citing cases may be incomplete.

Crime, Intellectual Property, Media, European

Updated: 30 November 2022; Ref: scu.263492

Consorzio Del Prosciutio Di Parma v Asda Stores Ltd and Another: CA 4 Dec 1998

A rule regarding the designation of origin of goods, disallowing the use of an origin name, must be readily ascertainable in the detail of the regulation, in order to be directly applicable. Designations for Parma Ham, were not readily discoverable, and had no such direct effect.

Citations:

Times 04-Dec-1998, Gazette 13-Jan-1999, [1998] EWCA Civ 1878, [1998] EWCA Civ 1879

Statutes:

EC Regulation 2081/92

Jurisdiction:

England and Wales

Citing:

Cited – Commission v Germany ECJ 23-May-1985
The question was asked as to whether Germany had given effect in domestic law to a directive which required the mutual recognition of nursing diplomas. German law conferred no right of recognition upon holders of diplomas from other member states . .

Cited by:

Appeal from – Consorzio Del Prosciutto Di Parma v Asda Stores Limited and others HL 8-Feb-2001
The name ‘Parma Ham’ was controlled as to its use under Italian law, and the associated mark, the ‘corona ducale’, was to be applied to a sale of Parma Ham, including any packaging. Proper Parma Ham was imported and resold through the defendant’s . .
Lists of cited by and citing cases may be incomplete.

Commercial, European, Intellectual Property

Updated: 30 November 2022; Ref: scu.79462

Naked Restaurant Bar (Trade Mark: Opposition): IPO 6 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations

Citations:

[2019] UKIntelP o52719

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 30 November 2022; Ref: scu.661091

Light Relief (Trade Mark: Opposition): IPO 2 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Average Customer – Different consumer groups
Sections 5(1), 5(2) and 5(3) Average Customer – Consumer attention levels

Citations:

[2019] UKIntelP o45119

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 30 November 2022; Ref: scu.661042

Lime (Trade Mark: Opposition): IPO 16 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Unfair advantage of repute

Citations:

[2019] UKIntelP o47819

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 30 November 2022; Ref: scu.661043

Spirit Energy Spirit Solar (Trade Mark: Revocation): IPO 2 Aug 2019

Section 3(6) Bad Faith – Knowledge of opponent’s use in the UK
Sections 5(1), 5(2) and 5(3) Dilution Cases – Unfair disadvantage of distinctive character
Section 5(4) Earlier Rights – Added value (circumstances where S.5(4)(a) offers an advantageous position in comparison to S.5(2)

Judges:

Mrs J Pike

Citations:

[2019] UKIntelP o45219

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 30 November 2022; Ref: scu.661058

Snow Globe (Trade Mark: Opposition): IPO 9 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of
Sections 5(1), 5(2) and 5(3) Distinctive Character of Earlier Trade Mark – Any unusual issues
Other Issues – Treatment of foreign language words
Revocation / Proof of Use – Dates – genuine use
Revocation / Proof of Use – Variant forms of marks – use with matter added or subtracted
Revocation / Proof of Use – Variant forms of marks – stylistic / presentation differences

Judges:

Ms Leisa Davies

Citations:

[2019] UKIntelP o46019

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 30 November 2022; Ref: scu.661057

Device (Trade Mark: Opposition): IPO 4 Jun 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Average Customer – Consumer attention levels
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Section 5(4) Earlier Rights – Relevant date
Revocation / Proof of Use – Dates – genuine use
Revocation / Proof of Use – Variant forms of marks – use with another mark

Citations:

[2019] UKIntelP o31719

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 30 November 2022; Ref: scu.660932

Lithomex v OHMI – Glaubrecht Stingel (Lithofix): ECFI 3 Jun 2015

ECJ Judgment – Community trade mark – Invalidity proceedings – Community word mark LITHOFIX – Earlier national and international word marks LITHOFIN – Relative ground for refusal – Likelihood of confusion – Similarity of signs – Similarity of goods – No obligation for an examination to be carried out in relation to all the goods covered by the earlier mark – Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009

Citations:

T-273/14, [2015] EUECJ T-273/14, ECLI:EU:T:2015:352

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 30 November 2022; Ref: scu.547701

Stayer Iberica v OHMI – Korporaciya ‘Masternet’ (Stayer): ECFI 4 Jun 2015

ECJ Judgment – Community trade mark – Invalidity proceedings – Community figurative mark STAYER – Earlier international word mark STAYER – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) and Article 53(1)(a) of Regulation No 207/2009

Citations:

T-254/13, [2015] EUECJ T-254/13, ECLI:EU:T:2015:362

Links:

Bailii

Statutes:

Regulation No 207/2009 8(1) 53(1)(a)

Jurisdiction:

European

Intellectual Property

Updated: 30 November 2022; Ref: scu.547706

Bora Creations v OHIM (Gel Nails At Home): ECFI 4 Jun 2015

ECJ Judgment – Community trade mark – Application for Community word mark gel nails at home – Absolute ground for refusal – Descriptive character – Article 7, paragraph 1 c) of Regulation (EC) No 207/2009

Citations:

T-140/14, [2015] EUECJ T-140/14, ECLI:EU:T:2015:360

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 1(c)

Jurisdiction:

European

Intellectual Property

Updated: 30 November 2022; Ref: scu.547687

Pensa Pharma v OHMI – Ferring And Farmaceutisk Laboratorium Ferring (Pensa Pharma): ECFI 3 Jun 2015

ECJ Judgment – Community trade mark – Invalidity proceedings – Community word mark PENSA PHARMA and Community figurative mark pensa – Earlier national and Benelux word marks PENTASA – Express consent to the registration of the Community trade mark before submission of the application for a declaration of invalidity – Article 53(3) of Regulation (EC) No 207/2009 – Relative grounds for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation No 207/2009 and Article 53(1)(a) of Regulation No 207/2009

Citations:

T-544/12, [2015] EUECJ T-544/12, ECLI:EU:T:2015:355

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 30 November 2022; Ref: scu.547705

Bora Creations v OHMI – Beaute Prestige International (Essence): ECFI 3 Jun 2015

ECJ Judgment – Community trade mark – Invalidity proceedings – Community word mark essence – Absolute grounds for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009 – No distinctive character – Article 7(1)(b) of Regulation No 207/2009

Citations:

T-448/13, [2015] EUECJ T-448/13

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 30 November 2022; Ref: scu.547688

Yoo Holdings v OHMI – Eckes-Granini Group (Yoo): ECFI 4 Jun 2015

ECJ Judgment – Community trade mark – Opposition proceedings – Application for Community word mark YOO – Earlier national and international word marks YO – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009

Judges:

S Papasavvas, P

Citations:

T-562/14, [2015] EUECJ T-562/14, ECLI:EU:T:2015:363

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 8(1)(b)

Jurisdiction:

European

Intellectual Property

Updated: 27 November 2022; Ref: scu.547710

Infineon Technolgies Ag, Wolfgang Bergner, Johann Alsmeier and Erwin Hammerl (Patent): IPO 4 Nov 2005

As a result of an uncontested application filed under section 13(1) by Infineon Technologies AG, it was found that Erwin Hammerl should be mentioned as a joint inventor in granted patent EP (UK) 0948043 and directed that an addendum slip mentioning him as a joint inventor be prepared for the granted patent for the invention.

Judges:

Mrs S Williams

Citations:

[2005] UKIntelP o29505

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 November 2022; Ref: scu.456476

In Re Lee’s Patent: PC 16 Jun 1856

Citations:

[1856] EngR 684, (1856) 10 Moo PC 226, (1856) 14 ER 478

Links:

Commonlii

Jurisdiction:

Commonwealth

Cited by:

Cited – Lowick Rose Llp v Swynson Ltd and Another SC 11-Apr-2017
Losses arose from the misvaluation of a company before its purchase. The respondent had funded the purchase, relying upon a valuation by the predecessor of the appellant firm of accountants. Further advances had been made when the true situation was . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 27 November 2022; Ref: scu.291439

Boehringer Ingelheim Kg and Another v Swingward Ltd: CA 21 Feb 2008

The court considered the issue of a stay of proceedings to await a decision of the ECJ for guidance.

Citations:

[2008] EWCA Civ 83, [2008] ETMR 36

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – Interflora, Inc and Another v Marks and Spencer Plc and Another ChD 22-May-2009
Each of the parties provided a service delivering flowers. The claimant had a trade mark, and the defendants each purchased the use of that trade mark and variations of it with a search engine (Google) so that a search under the trade mark produced . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 27 November 2022; Ref: scu.264652

In re Corgi: 1999

Geoffrey Hobbs QC said: ‘On the evidence before me I am prepared to accept that at the date of the application for registration of the later CORGI trade mark: (i) the applicant was the proprietor of a substantial and valuable goodwill built-up and acquired in connection with the promotion and sale of CORGI model vehicles over many years; (ii) the applicant could be damaged in its use and enjoyment of that goodwill if people were deceived or confused by use of the later CORGI trade marks as a trade mark for outer wear, sport and leisure wear. There is a question as to whether the word CORGI has been used by the applicant in a manner and to an extent sufficient to cause it to be misleading when used as a trade mark for the goods of interest to the respondent. This is the point at which I begin to have difficulty with the applicant’s objection under section 5(4). I do not regard it as self-evident that people would be misled (with a concomitant risk of damage to the applicant in its use and enjoyment of the goodwill built up and acquired in connection with the promotion and sale of CORGI model vehicles) if the word CORGI was used by the respondent as a trade mark for outer wear, sport and leisure wear. The applicant’s evidence leaves me in doubt on these matters. I think it is quite possible that people would perceive or assume correctly that the same mark was being used by separate undertakings trading independently of one another.’

Judges:

Geoffrey Hobbs QC

Citations:

[1999] RPC 15

Jurisdiction:

England and Wales

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: 27 November 2022; Ref: scu.260081

Bjornekulla Fruktindustrier (Judgment): ECJ 29 Apr 2004

Trade marks – Directive 89/104/EEC – Article 12(2)(a) – Revocation of rights conferred by the trade mark – Trade mark which has become the common name in the trade – Relevant circles for purposes of the assessment

Citations:

C-371/02, [2004] EUECJ C-371/02, [2004] ECR I-5791

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 27 November 2022; Ref: scu.196673

Union Carbide Corporation v BP Chemicals Limited: CA 26 Nov 1998

The parties alleged and denied infringement of patents and sought declarations that patents were invalid and sought revocation.

Judges:

Aldous LJ

Citations:

[1998] EWCA Civ 1863

Jurisdiction:

England and Wales

Citing:

Appeal from – Union Carbide Corporation v BP Chemicals Limited ChD 31-Jul-1997
The parties disputed the validity of patents concerning the processes for producing polymers.
Held: The patents were upheld. Jacob J explained the nature of invention underlying the right to apply for a patent: ‘Invention can lie in finding . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 27 November 2022; Ref: scu.145342

Roots (Trade Mark: Opposition): IPO 11 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of
Sections 5(1), 5(2) and 5(3) Average Customer – Consumer attention levels

Citations:

[2019] UKIntelP o39219

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 November 2022; Ref: scu.661006

Manfiter (Trade Mark: Opposition): IPO 2 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection

Judges:

Mr M Boyle

Citations:

[2019] UKIntelP o45019

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 November 2022; Ref: scu.661046

Stealth VR / Stealth (Trade Mark: Invalidity): IPO 16 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Section 5(4) Earlier Rights – Relevant date
Section 5(4) Earlier Rights – Standard of proof (evidential issues)
Procedural Issues – Assignment problems – ownership / authority to act, late defence

Citations:

[2019] UKIntelP o54419

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 November 2022; Ref: scu.661104

Speaking Up (Trade Mark: Opposition): IPO 24 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Distinctive Character of Earlier Trade Mark – Any unusual issues
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – State of the register

Judges:

Mrs T Perks

Citations:

[2019] UKIntelP o42819

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 November 2022; Ref: scu.661010

Moza (Trade Mark: Opposition): IPO 29 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Section 5(4) Earlier Rights – Other

Judges:

Mrs B Hedley

Citations:

[2019] UKIntelP o50619

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 November 2022; Ref: scu.661048

Easy Mover (Trade Mark: Invalidity): IPO 16 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Family of marks
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Revocation / Proof of Use – Dates – genuine use

Citations:

[2019] UKIntelP o54219

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 November 2022; Ref: scu.661073

Monstavape (Trade Mark: Opposition): IPO 15 Aug 2018

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Average Customer – Purchasing process
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Sections 5(1), 5(2) and 5(3) Dilution Cases – Unfair advantage of repute
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)

Citations:

[2018] UKIntelP o50318

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 26 November 2022; Ref: scu.631586

Henkel v OHMI: ECJ 29 Apr 2004

Appeal – Community trade mark – Article 7 (1) (b) of Regulation (EC) No 40/94 – Three-dimensional shelves for washing machines or dishwashers – Absolute ground for refusal to register – Distinctive character

Citations:

C-457/01, [2004] EUECJ C-457/01P

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 26 November 2022; Ref: scu.213797

Ipswich Clothworkers’ Case; Ipswich Taylors v Sherring: 1614

The king’s power to create corporations and to order trade did not include a power to make a monopoly, for that is to take away free trade which is the birthright of every subject. A trader creating a new invention could be granted a charter by the king allowing him sole use of it for a set period of time, but when that patent expired, it could not be renewed. A copporation could not be the judge of whether its patent had been breached, for that would make it judge and jury in its own cause, and the King could not grant unto another the power to do a thing which was against the law.

Citations:

(1614) Godb 252

Jurisdiction:

England and Wales

Cited by:

Cited – Oakley Inc v Animal Ltd and others PatC 17-Feb-2005
A design for sunglasses was challenged for prior publication. However the law in England differed from that apparently imposed from Europe as to the existence of a 12 month period of grace before applying for registration.
Held: Instruments . .
Lists of cited by and citing cases may be incomplete.

Commercial, Intellectual Property

Updated: 26 November 2022; Ref: scu.222832

MCA Records Inc v Charly Records Ltd and others (No 5): CA 29 Nov 2001

Thre had been an action for copyright and trade mark infringement. The court considered the personal liability of directors of the company for the costs of the action.

Judges:

Chadwick LJ

Citations:

[2001] EWCA Civ 1923, [2003] 1 BCLC 93, [2002] EMLR 1

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – MCA Records Inc and Another v Charly Records Ltd and others (No 5) CA 5-Oct-2001
The court discussed the personal liability of a director for torts committed by his company: ‘i) a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the . .

Cited by:

See Also – MCA Records Inc and Another v Charly Records Ltd and others (No 5) CA 5-Oct-2001
The court discussed the personal liability of a director for torts committed by his company: ‘i) a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the . .
Cited – John Louis Carter Fourie v Allan Le Roux and others CA 7-Mar-2005
The defendant’s company in South Africa had become insolvent and the claimant had recovered judgment for arrears of rent. They obtained a freezing order against the defendant. The defendant appealed saying the court did not have jurisdiction, and . .
Applied – Experience Hendrix Llc v Purple Haze Records Ltd and Another ChD 24-Feb-2005
The claimant company sought summary judgment against the defendants who had manufactured and sold unauthorised recordings of a concert by the late Mr Hendrix in Sweden in 1969.
Held: The performance was given retrospective protection under the . .
Cited – Bunt v Tilley and others QBD 10-Mar-2006
The claimant sought damages in defamation in respect of statements made on internet bulletin boards. He pursued the operators of the bulletin boards, and the court now considered the liability of the Internet Service Providers whose systems had . .
Cited – Metropolitan International Schools Ltd. (T/A Skillstrain And/Or Train2Game) v Designtechnica Corp (T/A Digital Trends) and Others QBD 16-Jul-2009
The claimant complained that the defendant had published on its internet forums comments by posters which were defamatory of it, and which were then made available by the second defendant search engine. The court was asked what responsibility a . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Costs

Updated: 26 November 2022; Ref: scu.201507

Performing Right Society Ltd v Qatar Airways Group Qcsc: ChD 13 Apr 2021

Whether an order for extended disclosure should be made, and if so the extent of such an order, as part of the directions for the trial of preliminary issues in these proceedings.

Judges:

Deputy Master Francis

Citations:

[2021] EWHC 869 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Litigation Practice, Intellectual Property

Updated: 26 November 2022; Ref: scu.662126

Rock City (Trade Mark: Opposition): IPO 1 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – Effect of concurrent use
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Section 5(4) Earlier Rights – Relevant date

Citations:

[2019] UKIntelP o36319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 26 November 2022; Ref: scu.661005

SPA (Trade Mark: Opposition): IPO 23 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Identical marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Revocation / Proof of Use – Dates – genuine use
Revocation / Proof of Use – Variant forms of marks – use with matter added or subtracted

Citations:

[2019] UKIntelP o55619

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 26 November 2022; Ref: scu.661103

Bender (Trade Mark: Rectification): IPO 15 Aug 2019

Other Issues – Partnership law
Procedural Issues – Pleadings, Strike out, Estoppel
Procedural Issues – ‘Wrong’ party’s name on statutory form
Procedural Issues – Assignment problems – ownership / authority to act, late defence

Judges:

Mr A James

Citations:

[2019] UKIntelP o47619

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 26 November 2022; Ref: scu.661023

Gas Monkey Garage/Gas Monkey Energy (Trade Mark: Opposition): IPO 20 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions

Judges:

Ms S Wilson

Citations:

[2019] UKIntelP o48819

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 26 November 2022; Ref: scu.661035

Fujitsu Limited (Patent): IPO 29 Apr 2004

PO Patent Office – Ex Parte Decisions
The invention concerns a system enabling customers to do their grocery shopping from home via the internet. The home shopping system is hosted on a grocery store’s server which includes a database including information on all the products available to customers. These include standard items such as price, weight and volume of goods but also ‘environmental storage metrics’ which indicate the conditions under which each item should be stored. In the embodiments described these are the categories ‘room temperature’, ‘refrigerated’ and ‘frozen’. When a customer is placing an order online, a virtual shopping basket is displayed on their pc screen including an indication of the volume of items already selected in each of the storage categories. The storage information on the server is used by clerks at the store to make up orders and load them onto delivery vehicles having separate storage compartments providing room temperature, refrigerator and freezer conditions.
The hearing officer decided that the invention was excluded as a method for doing business and a program for a computer as such. Whilst the claims included technical features, the invention did not provide a technical contribution. There were two distinct parts to the claimed invention – the provision of information to the shopper via the virtual shopping basket concerning the quantity of items (s)he had already ordered requiring the various storage requirements and the delivery of these via a suitable vehicle. However, there was no direct technical result produced by the invention due to the lack of causality between the two parts of the claims.

Judges:

Mr A Bartlett

Citations:

O/121/04, [2004] UKIntelP o12104

Links:

PO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 26 November 2022; Ref: scu.455921

Dunhill v Sunoptic: 1979

Trade mark infringement – own name defence

Citations:

[1979] FSR 426

Jurisdiction:

England and Wales

Cited by:

Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 26 November 2022; Ref: scu.194806

Annesley v Earl of Anglesea: 1743

‘no private obligations can dispense with that universal one which lies on every member of the society to discover every design which may be formed, contrary to the laws of the society, to destroy the public welfare.’

Citations:

(1743) 16 State Tr 1139

Jurisdiction:

England and Wales

Cited by:

Cited – Initial Services Ltd v Putterill CA 1967
The plaintiff’s sales manager resigned, but took with him confidential documents which he gave to a newspaper. The defendant sought to justify this, saying that the company had failed to register agreements it should have done under the Act.
Cited – British Steel Corporation v Granada Television Ltd HL 7-May-1980
The defendant had broadcast a TV programme using material confidential to the plaintiff, who now sought disclosure of the identity of the presumed thief.
Held: (Lord Salmon dissenting) The courts have never recognised a public interest right . .
Cited – Hyde Park Residence Ltd v Yelland, News Group Newspapers Ltd, News International Ltd, Murrell CA 10-Feb-2000
The court considered a dispute about ownership and confidence in and copyright of of video tapes taken by Princess Diana before her death.
Held: The courts have an inherent discretion to refuse to enforce of copyright. When assessing whether . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 26 November 2022; Ref: scu.193373

Macmillan, Inc (Incorporated Under the Laws of the State of Delaware, Usa) MCC Proceeds Inc v Bishopsgate Investment Trust Plc (No 4): CA 4 Nov 1998

When a court came to be obliged to decide issues of foreign law which were in substance issues of fact, and experts disagreed, it had to do so, and the Court of Appeal had to come to its own conclusions respecting the circumstances in first instance court

Citations:

Times 07-Dec-1998, [1998] EWCA Civ 1680, [1999] CLC 417

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – Morgan Grenfell and Co Ltd v Sace – Istituto Per i Servizi Assicurativi Del Commercio CA 19-Dec-2001
The claimants sought to recover under guarantees, issued by the respondent banks, underwriting export credit guarantees. Though described as guarantees, the agreements were in law and substance, contracts of insurance governed by Italian law. The . .
Lists of cited by and citing cases may be incomplete.

Jurisdiction, Commercial, Intellectual Property

Updated: 25 November 2022; Ref: scu.145158

Brooks v Olysager OMS (UK) Ltd: CA 14 Oct 1998

An employer was unable to prevent an employee making true if very embarrassing disclosures about its business after the end of the employment without a contract to that effect. There is no implied duty of confidentiality continuing after employment ends.

Citations:

Gazette 14-Oct-1998, [1998] IRLR 590

Jurisdiction:

England and Wales

Intellectual Property

Updated: 25 November 2022; Ref: scu.78682

Bolkiah v KPMG (A Firm): CA 22 Oct 1998

When considering whether an accountancy firm could be permitted to conduct an investigation on behalf of solicitors acting in a matter acting against a client for whom it still held confidential information, the court could find a balance between rights of confidence and professional and ethical duties and legal duties.

Judges:

Lord Woolf MR, Otton, Walker LJJ

Citations:

Gazette 04-Nov-1998, Times 22-Oct-1998, Gazette 28-Oct-1998, [1998] EWCA Civ 1563

Jurisdiction:

England and Wales

Citing:

Appeal from – Bolkiah v KPMG (A Firm) ChD 25-Sep-1998
A company who had custody of confidential information and who sought to act for another client from whom the confidential information had to be protected, had to have its claim to be able to protect that confidentiality examined skeptically by the . .
Cited – G D Searle and Co Ltd v Celltech Ltd CA 1982
The court was asked as to an employee’s covenant now said to be in restraint of trade.
Held: In disputes between employers and ex-employees courts will usually seek to protect the rights of employees to advance their chosen trade and . .

Cited by:

Appeal from – Prince Jefri Bolkiah v KPMG (A Firm) HL 16-Dec-1998
Conflicts of Duty with former Client
The House was asked as to the duties of the respondent accountants (KPMG). KPMG had information confidential to a former client, the appellant, which might be relevant to instructions which they then accepted from the Brunei Investment Agency, of . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Information

Updated: 25 November 2022; Ref: scu.78469

Woodmans Business Services (Trade Mark: Opposition): IPO 4 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of

Citations:

[2019] UKIntelP o51819

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 25 November 2022; Ref: scu.661112

Imperfect Angel – Perfectly Imperfect (Trade Mark: Opposition): IPO 23 Oct 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection

Citations:

[2019] UKIntelP o62819

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 25 November 2022; Ref: scu.661143

Vega Finance (Trade Mark: Opposition): IPO 1 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection

Judges:

Ms J Ralph

Citations:

[2019] UKIntelP o36619

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 25 November 2022; Ref: scu.661016