Category: Intellectual Property

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 cross-examination at the substantive hearing. All three requests were allowed:
The new pleading of estoppel or acquiescence did little more than clarify the grounds originally pleaded by the defendant. Its admission did not require additional evidence to be filed by the claimant and would not unduly affect the timetable for the substantive hearing. Whilst the delay in introducing it was unfortunate, it had not disadvantaged the claimant;
Admitting the additional evidence would neither disadvantage the claimant nor affect the timetable for the substantive hearing. The potential relevance of the additional evidence and the undesirability of introducing new evidence at the substantive hearing were decisive;
Following the decision in Alliance and Leicester Plc’s Trade Mark Application [2002] RPC 29 the party seeking cross-examination does not need to show the existence of direct conflict of evidence on a particular point to justify cross examination of a witness. It is sufficient for the witness to say something which is relevant if true but which the other party wishes to probe. In this instance, the witnesss evidence was clearly relevant if true and it would have been wrong to refuse to allow him to be cross-examined. The notice given for the witness to appear clearly exceeded the normally accepted minimum.

Judges:

Mr P Hayward

Citations:

O/438/02, [2002] UKIntelP o43802

Links:

PO, Bailii

Jurisdiction:

England and Wales

Cited by:

See Also – 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 . .
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.455347

Elizabeth Emanuel (Trade Mark: Opposition): IPO 17 Oct 2002

IPO The opponent in these proceedings commenced to design and trade in clothing under the name EMANUEL about 1977. A shop was opened in Chelsea in 1986 but due to the breakdown of her marriage the shop closed in 1990 and Ms Emanuel commenced to trade under her own name ELIZABETH EMANUEL and she registered that mark with a logo in 1994.
Later in 1996 she entered into a partnership with a firm named Hamlet and formed a new company EE PLC. The ELIZABETH EMANUEL mark together with certain other assets were transferred to the new company. Because of financial difficulties encountered by Hamlet, EE PLC was forced to find another backer and subsequently in September 1997 an agreement was entered into with a firm named Frostprint. The business of EE PLC together with the registered mark and goodwill in the business were transferred to Frostprint for the consideration of andpound;65,000. At the same time Frostprint changed its name to Elizabeth Emanuel (International) Ltd.
In 1997 the registered mark ELIZABETH EMANUEL and logo was assigned to an associated firm named Oakridge who applied for the mark in suit in March 1998. In August 2000 the registered mark and the application were assigned to the current applicants Continental Shelf 128 Limited. Shortly after the 1997 agreement with Frostprint, Ms Emanuel left Elizabeth Emanuel International Ltd but that company continued to trade under the Elizabeth Emanuel name and the registered mark ELIZABETH EMANUEL logo.
In these proceedings it was accepted that Elizabeth Emanuel had an international reputation as a clothing designer following her design of the wedding gown for The Princess of Wales on her marriage to Prince Charles in the early 1980s. The Hearing Officer also accepted from the evidence that there had been a certain amount of deception and confusion of the public by the use of the mark ELIZABETH EMANUEL by the current owners in relation to clothing which had not in fact been designed by Ms Emanuel.
In relation to the ground under Section 3(3)(b) the Hearing Officer noted that the opponent had assigned her rights in the name ELIZABETH EMANUEL to the current applicants (or predecessors) and even though there was some deception of the public this was ‘lawful deception’ and might occur for a short period until the public were alerted to the fact that Ms Emanuel was not associated with the current owners of the mark. The Hearing Officer did not accept that the current owners had added to the confusion by failing to highlight the fact that Ms Emanuel was no longer associated with themselves. The opponent failed on the Section 3(3)(b) ground.
The ground under Section 3(b) was on the basis of intention to use in relation to all the goods claimed. However, it was accepted that the pleadings were not clear as regards the opponent’s stance on this ground and, in any case, the Hearing Officer doubted if the opponent could have succeeded on this ground on the basis of the evidence before him and concessions made by Counsel at the hearing.
The opponent also failed in the ground under Section 5(4)(a) – Passing Off – since the Hearing Officer concluded that the current applicants own the goodwill in the mark applied for.

Judges:

Mr M Knight

Citations:

1586464, [2002] UKIntelP o42402, O/424/02

Links:

IPO, Bailii

Statutes:

Trade Marks Act 1994

Citing:

See Also – EE Elizabeth Emanuel (Trade Mark: Revocation) IPO 17-Oct-2002
IPO In the parallel opposition proceedings (BL O/024/02) which has been reviewed in some detail the Hearing Officer concluded that as Ms Emanuel had assigned rights in this mark together with the goodwill in the . .
See Also – ‘Elizabeth Emanuel’: Application No 2009499 TMR 9-Jun-1998
cw Inter Partes Decisions – Trade Marks – Opposition . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 16 October 2022; Ref: scu.455312

EE Elizabeth Emanuel (Trade Mark: Revocation): IPO 17 Oct 2002

IPO In the parallel opposition proceedings (BL O/024/02) which has been reviewed in some detail the Hearing Officer concluded that as Ms Emanuel had assigned rights in this mark together with the goodwill in the business to the present proprietors, opposition under Section 3(3)(b) – which is the equivalent to Section 46(1)(d) in revocation proceedings – failed because any deception or confusion of the public would be short term and arose as a consequence of the assignment and the departure of Ms Emanuel from the business.
In these proceedings the same issue was involved – deception of the public. In these proceedings the relevant date was the date of the hearing (18 April 2002) whereas in the opposition proceedings the relevant date was 18 March, 1998. As the Hearing Officer had concluded in the opposition proceedings that any deception was likely to be short term until the public became aware that Ms Emanuel had left the business, he concluded that the registered proprietors must be in a better position some three years later in that the public would have become more aware that Ms Emanuel was no longer associated with them. Deception of the public was therefore less likely. The Revocation action based on Section 46(1)(d) thus failed.

Judges:

Mr M Knight

Citations:

2161562B, [2002] UKIntelP o42502, O/425/02

Links:

IPO, Bailii

Statutes:

Trade Marks Act 1994 46(1)(d)

Citing:

See Also – ‘Elizabeth Emanuel’: Application No 2009499 TMR 9-Jun-1998
cw Inter Partes Decisions – Trade Marks – Opposition . .

Cited by:

See Also – Elizabeth Emanuel (Trade Mark: Opposition) IPO 17-Oct-2002
IPO The opponent in these proceedings commenced to design and trade in clothing under the name EMANUEL about 1977. A shop was opened in Chelsea in 1986 but due to the breakdown of her marriage the shop closed in . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 16 October 2022; Ref: scu.455311

Brian Leo Hardman (Patent): IPO 17 Oct 2002

The patent ceased due to failure by proprietor to pay the sixth year renewal fee. The Hearing Officer decided that the proprietor failed to take reasonable care to establish a system to remind him when to pay the renewal fee or to properly read and act upon the rule 39(4) official reminder notice he received from the Patent Office. The Hearing Officer accepted that the proprietor was under pressure which would have affected his ability to perform at full efficiency. However, in the absence of any medical evidence to the contrary, the Hearing Officer concluded that the proprietor was able to function in a reasonable manner as was evident from the fact that he was coping with other demanding tasks and that his preoccupation with these other endeavours contributed to his failure to take appropriate action on receipt of the official reminder.

Judges:

Mr M C Wright

Citations:

[2002] UKIntelP o42302

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 16 October 2022; Ref: scu.455333

Device Only (Trade Mark: Opposition): IPO 14 Oct 2002

This was one of three related actions involving the same parties and heard on the same day, based on the opponents’ mark LUCENT and device of circular swirl or ring and registered in Class 11; (see BL O/410/02 and BL O/411/02).
Under Section 5(2)(b) the Hearing Officer considered that the marks had an ‘extremely low level of similarity’. The Hearing Officer then gave detailed consideration to the goods/services at issue and found no similarity, save that in Class 37 he considered that the services of ‘installation, maintenance and repair’, relating to electrical and electronic apparatus and instruments was a broad term which would include those services in relation to lighting. In the result he found that there was no realistic likelihood of confusion.
The evidence of reputation covered the whole of the opponents’ business and did not separately identify the reputation attaching to their earlier mark in relation to Class 11 goods. Consequently, the Hearing Officer could not find the opponents successful under Section 5(3).
The differences in the marks effectively decided the matter under Section 5(4)(a), as no misrepresentation would arise.

Judges:

Mr M Reynolds

Citations:

[2002] UKIntelP o40902, O/409/02

Links:

Bailii

Intellectual Property

Updated: 16 October 2022; Ref: scu.455307

Accenture Global Services v OHMI – Silver Creek Properties (Acsensa) (Intellectual Property): ECFI 7 Oct 2010

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark acsensa – Earlier Community and national word and figurative marks ACCENTURE and accenture – Relative ground for refusal – No likelihood of confusion – No similarity of signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Obligation to state reasons – Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009).

Citations:

T-244/09, [2010] EUECJ T-244/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 16 October 2022; Ref: scu.425275

SBS Bilimsel Bio Cozumler v EUIPO – Laboratorios Ern (Apiheal): ECFI 5 Oct 2020

(Judgment) European Union trade mark – Opposition proceedings – Application for a figurative European Union trade mark apiheal – Earlier national word mark APIRETAL – Relative ground for refusal – No likelihood of confusion – No similarity of signs – Article 8, paragraph 1 (b) of Regulation (EC) No 207/2009 [now Article 8 (1) (b) of Regulation (EU) 2017/1001]

Citations:

T-53/19, [2020] EUECJ T-53/19, ECLI:EU:T:2020:469

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 15 October 2022; Ref: scu.660617

Sanchez Romero Carvajal Jabugo v EUIPO – Embutidos Monells (5MS MMMMM) (EU Trade Mark – Judgment): ECFI 2 Dec 2020

European Union trade mark – Opposition proceedings – Application for an EU figurative trade mark 5MS MMMMM – Earlier figurative EU trade mark 5J – Relative grounds for refusal – No likelihood of confusion – No similarity of signs – Article 8 (1) (b) of Regulation (EC) No 207/2009 [now Article 8 (1) (b) of Regulation (EU) 2017/1001] – No damage to reputation – Article 8 (5) of Regulation No 207/2009 (now Article 8 (5) of Regulation 2017/1001)

Citations:

T-639/19, [2020] EUECJ T-639/19, ECLI: ECLI:EU:T:2020:581

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 15 October 2022; Ref: scu.660752

Kerry Luxembourg v EUIPO – Dohler (Tastesense By Kerry) (EU Trade Mark – Judgment) T-108/19: ECFI 29 Apr 2020

EU trade mark – Opposition proceedings – Application for the EU figurative mark TasteSense By Kerry – Earlier EU word mark MultiSense – 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)

Citations:

T-108/19, [2020] EUECJ T-108/19

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 15 October 2022; Ref: scu.660135

Coty Germany GmbH v Amazon Services Europe Sarl and another: ECJ 2 Apr 2020

Reference for a preliminary ruling – EU trade mark – Regulation (EC) No 207/2009 – Article 9 – Regulation (EU) 2017/1001 – Article 9 – Rights conferred by a trade mark – Use – Stocking of goods for the purposes of offering them or putting them on the market – Storage with a view to dispatching goods sold in an online marketplace which infringe trade mark rights

Judges:

President of Chamber E Regan

Citations:

C-567/18, [2020] EUECJ C-567/18, [2020] WLR(D) 209, ECLI:EU:C:2020:267, [2020] Bus LR 777, [2019] EUECJ C-567/18_O

Links:

Bailii, WLRD, Bailii

Jurisdiction:

European

Intellectual Property

Updated: 15 October 2022; Ref: scu.660111

Easy Rent A Car Ltd and Another v Easygroup Ltd: CA 20 Mar 2019

Application of articles 29 and 30 of Regulation (EU) No 1215/2012 (the Judgments Regulation) to proceedings for trade mark infringement and passing off issued in England by the respondent against the appellants, a month after the appellants had commenced proceedings in Cyprus against the respondent.
The defendants had brought proceedings in Cyprus seeking declarations to the effect that they could use disputed trade marks under the terms of what they claimed to be a settlement agreement between the parties; the claimant in this jurisdiction was seeking relief in respect of alleged infringements and passing off.
Held: There was identity of ’cause’ and ‘objet’, notwithstanding that the respective claims were in contract and in tort. The absence of the claimant’s consent was part of its cause of action (as understood in the domestic law sense) in the English proceedings, and ‘the very matter being asserted by the defendants in the Cypriot proceedings is that the claimant consented to the use of the marks.’. Accordingly:
‘If the claims in the English and Cypriot proceedings are examined, without regard to any possible defences, it is apparent that the claimant’s consent to the defendants’ use of the marks, or lack of such consent, is an essential element of both claims. While the Cypriot proceedings are more extensive in the relief sought that the English proceedings, so that there is not a complete overlap between the proceedings, the essential question is whether the ’cause’ in the English proceedings is mirrored in the Cypriot proceedings. It is, in my judgment, as regards the issue of consent.’

Judges:

Lord Justice David Richards

Citations:

[2019] EWCA Civ 477, [2019] WLR(D) 177, [2019] 1 WLR 4630

Links:

Bailii, WLRD

Jurisdiction:

England and Wales

Cited by:

Cited – Wright v Granath QBD 16-Jan-2020
Defamation across borders – Jurisdiction
The claimant began an action for defamation in an online publication. The Norwegian resident defendant had begun an action there seeking a declaration negating liability. The Court was now asked by the defendant whether under Lugano, the UK action . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 October 2022; Ref: scu.634792

Otsuka Pharmaceuticals Company Limited (Patent): IPEC 4 Mar 2015

This is an application for a six-month extension to SPC number SPC/GB04/039, filed on 12 October 2012, just before the deadline for doing so, i.e. 2 years before the expiry date of the SPC which (if not extended) is 26 October 2014. The SPC concerns aripiprazole, the active ingredient in medicinal product, Abilify, marketed by Otsuka for the treatment of schizophrenia and bipolar disorder.
The applicant was carrying out clinical studies concerning the use of Abilify to treat these two conditions in children. At the date of application, all of the studies in the agreed Paediatric implementation Plan (PIP) had not been completed. As a consequence, the application, as acknowledged by the applicant, did not contain a marketing authorisation with an updated summary of product characteristics (SmPC) including the results of the studies in all the paediatric population nor did it contain a statement of compliance according to Article 28(3) of the paediatric regulation. These are necessary requirements for obtaining the six-month extension to the SPC under article 8 of the SPC regulation and Article 36 of the paediatric regulation. The applicant argued that they should be entitled to the extension based on all the studies in the paediatric population that they had completed so far and because the delay in completing these studies arose from the time taken to agree the PIP with the EMEA, i.e. not their fault.
The hearing officer took note of IPO decision BL O/035/09, Merck, and referred to the UK Court of Appeal decision, EI du Pont de Nemours and Co v UK Intellectual Property Office [2009] EWCA Civ 966, in his finding that the application for the extension did not meet the requirements of Article 8(1)(d) of the SPC regulation because it did not include an updated MA with the results of the paediatric studies and an Article 28(3) compliance statement. Although the applicant was set a period of time under Article 10(3) to address the irregularity identified with their application, they were unable to do so within this time limit. The hearing officer also considered that, on the balance of probability, this irregularity would not be addressed before the expiry date of the SPC. He rejected the application for an extension to granted SPC/GB04/039 under Article 10(4) of the SPC Regulation.

Citations:

[2015] UKIntelP o09815

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 15 October 2022; Ref: scu.545464

The City, The Reef, The Rock (Trade Mark: Opposition): IPO 14 Oct 2002

IPO The opponents were proprietors of an International Registration of LA City, in Class 25.
The Hearing Officer confirmed that the goods in Class 25 were identical but he did not find any likelihood of confusion in view of the differences in the marks and the care normally taken in the selection of clothing.

Judges:

Mr G Salthouse

Citations:

[2002] UKIntelP o41702, O/417/02

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.455306