Category: Intellectual Property

Interroof Products Limited (Patent): IPO 18 Jan 2002

IPO Judging from the various activities the proprietor was engaged in and the range of problems he was effectively dealing with during the period the eighth year renewal fee could have been paid, the stress the applicant was experiencing was not such as to prevent him from acting in a reasonable manner. Moreover, the applicants preoccupation with other business and personal activities did not absolve him from taking reasonable care to see that the renewal fee was paid and could not excuse his deliberate inaction in dealing with the renewal reminders he received from his agent and the Patent Office. The Hearing Officer refused to allow the request for restoration.

Judges:

Mr M C Wright

Citations:

[2002] UKIntelP o02302, GB 2251575

Links:

Bailii

Statutes:

Patents Act 1977 28(3)

Intellectual Property

Updated: 15 October 2022; Ref: scu.454956

Sonopress Produktionsgesellschaft Fur Ton-Und Informationstrager Mbh and Artur Redder-Pohlmann (Patent): IPO 7 Jan 2002

IPO As a result of an uncontested application filed under section 13(1) by Sonopress Produktionsgesellschaft fur Ton-und Informationstrager mbH, it was found that Artur Redder-Pohlmann 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 application of the patent.

Judges:

Mrs S Williams

Citations:

[2002] UKIntelP o00402, GB 0011553.5

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.454958

Biba (Trade Mark: Revocation) O34406: IPO 7 Dec 2006

IPO The specification of the mark in suit covers ‘Articles of clothing for woman and girls, but not including any such goods for export to Africa’.
The mark in suit dates back to the 1960’s and was first coined by a Ms Barbara Hulanicki. The mark was acquired by the registered proprietor in 1975 and use after than date appears to have been intermittent. The application for revocation was filed on 20 January 2005 so the relevant five year period for showing use covers the period 21 January 2000 to 20 January 2005.
The registered proprietor filed evidence of use of the mark in suit but the use shown was not clear cut and the evidence was not well focused. However, the Hearing Officer accepted that there had been use of a mark incorporating the word BIBA (the word BIBA used with an art deco swirl device) in respect of a range of outer clothing and shoes for women and children. Taking account of the use of the mark BIBA and device and how it was referred to in newspaper advertisements and articles, the Hearing Officer accepted that the use shown was sufficient to protect the registration of BIBA in respect of the following goods; ‘Articles of outer clothing; shoes; all for woman and girls; but not including any such goods for export to Africa.’ The Hearing Officer ordered that the specification of the mark in suit be restricted accordingly.

Judges:

Mr M Foley

Citations:

[2006] UKIntelP o34406

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.454920

Biba (Trade Mark: Revocation) O35206: IPO 7 Dec 2006

IPO The specification of the mark in suit covers a wide range of goods in Class 18 including leather goods, bags, luggage, wallets etc.
The mark in suit dates back to the 1960’s and was first coined by a Ms Barbara Hulanicki. The mark was acquired by the registered proprietor in 1975 and use after than date appears to have been intermittent. The application for revocation was filed on 20 January 2005 so the relevant five year period for showing use covers the period 21 January 2000 to 20 January 2005.
The registered proprietor filed evidence of use of the mark in suit but the use shown was not clear cut and the evidence was not well focused. However, the Hearing Officer accepted that there had been use of a mark incorporating the word BIBA (the word BIBA used with an art deco swirl device) in respect of bags and handbags. Taking account of the use of the mark BIBA and device and how it was referred to in newspaper advertisements and articles, the Hearing Officer accepted that the use shown was sufficient to protect the registration of BIBA in respect of bags and handbags. The Hearing Officer ordered that the specification of the mark in suit be restricted accordingly.

Judges:

Mr M Foley

Citations:

[2006] UKIntelP o35206

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.454925

Withers Rogers v Jon Henry Dobson (Patent): IPO 23 Nov 2006

IPO Withers and Rogers, a firm of patent attorneys, applied for the revocation of Mr Dobson’s patent on behalf of an anonymous client. The grounds were that the invention was not patentable because it lacked an inventive step having regard to certain prior art, notably patent number US5347765 and an alleged marketing brochure from a company called Joran Bor A/S. The invention relates to an elongate mortar raking tool coated with diamond grit for use with an angle grinder.
The claimant failed to provide sufficient evidence to prove the publication date of the non-patent citation, though the obviousness of the invention in the event that the citation’s date had been proven was considered.
The hearing officer found the patent to be inventive over the cited prior art and dismissed the application for revocation.

Citations:

[2006] UKIntelP o33106

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 15 October 2022; Ref: scu.454912

Archibald Kenrick Sons Limited v Laird Security Hardware Limited: IPO 22 Dec 2006

IPO In section 27 proceedings, the decision in BL O/067/06 that the claims as proposed amended are not novel over EP 0411271 was reversed on appeal. The case was remitted to the comptroller for consideration of the issue of inventive step.
Held that, on the construction found by the court, the claims are inventive, and accordingly the request to amend is allowable.

Judges:

Mr D J Barford

Citations:

[2006] UKIntelP o37506, O/375/06

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.454918

Biba (Trade Mark: Revocation) O34906: IPO 7 Dec 2006

IPO The specifications of the mark in suit cover the following goods:
Class 3 Perfumes, cosmetics, toilet preparations, preparations for the hair, soaps and dentifrices.
Class 14 Clocks and watches; jewellery; articles made of precious metal or coated therewith.
Class 25 Articles of clothing; footwear.
The mark in suit dates back to the 1960’s and was first coined by a Ms Barbara Hulanicki. The mark was acquired by the registered proprietor in 1975 and use after than date appears to have been intermittent. The application for revocation was filed on 20 January 2005 so the relevant five year period for showing use covers the period 21 January 2000 to 20 January 2005.
The registered proprietor filed evidence of use of the mark in suit but the use shown was not clear cut and the evidence was not well focused. However, the Hearing Officer accepted that there had been use of a mark incorporating the word BIBA (the word BIBA used with an art deco swirl device) in respect of a range of cosmetics (Class 3), jewellery (Class 14) and articles of outer clothing and shoes (Class 25). Taking account of the use of the mark BIBA and device and how it was referred to in newspaper advertisements and articles, the Hearing Officer accepted that the use shown was sufficient to protect the registration of BIBA in respect of the following goods:
Class 3 Cosmetic
Class 14 Jewellery; all made of gold or silve
Class 25 Outer clothing; shoe
The Hearing Officer ordered that the specifications of the mark in suit be restricted accordingly.

Judges:

Mr M Foley

Citations:

[2006] UKIntelP o34906

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.454924

Biba (Trade Mark: Revocation) O34706: IPO 7 Dec 2006

IPO The specification of the mark in suit covers ‘Articles of clothing, none being for export to Africa’.
The mark in suit dates back to the 1960’s and was first coined by a Ms Barbara Hulanicki. The mark was acquired by the registered proprietor in 1975 and use after than date appears to have been intermittent. The application for revocation was filed on 20 January 2005 so the relevant five year period for showing use covers the period 21 January 2000 to 20 January 2005.
The registered proprietor filed evidence of use of the mark in suit but the use shown was not clear cut and the evidence was not well focused. However, the Hearing Officer accepted that there had been use of a mark incorporating the word BIBA (the word BIBA used with an art deco swirl device) in respect of a range of outer clothing and shoes for women and children. Taking account of the use of the mark BIBA and device and how it was referred to in newspaper advertisements and articles, the Hearing Officer accepted that the use shown was sufficient to protect the registration of BIBA in respect of the following goods; ‘Articles of outer clothing; shoes; all for woman and girls; but not including any such goods for export to Africa.’ The Hearing Officer ordered that the specification of the mark in suit be restricted accordingly.

Judges:

Mr M Foley

Citations:

[2006] UKIntelP o34706

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.454922

Biba (Trade Mark: Revocation) O34606: IPO 7 Dec 2006

IPO The specification of the mark in suit covers ‘Perfumes, cosmetics, non-medicated toilet preparations and preparations for the hair; all for woman and all for sale in England, Scotland and Wales and for export to and sale in the Channel Islands’.
The mark in suit dates back to the 1960’s and was first adopted by a Ms Barbara Hulanicki. The mark was acquired by the registered proprietor in 1975 and use after than dated appears to have been intermittent. The application for revocation was filed on 20 January 2005 so the relevant five year period for showing use covers the period 21 January 2000 to 20 January 2005.
The registered proprietor filed evidence of use of the mark in suit but the use shown was not clear cut and the evidence was not well focused. However, the Hearing Officer accepted that there had been use of the mark in respect of cosmetics and he ordered that the specification of the mark in suit be restricted to read ‘Cosmetics; all for woman and all for sale in England, Scotland and Wales and for export to and sale in the Channel Islands’.

Judges:

Mr M Foley

Citations:

[2006] UKIntelP o34606

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.454921

Biba (Trade Mark: Revocation) O34806: IPO 7 Dec 2006

IPO The specification of the mark in suit covers ‘Leather, imitation leather and articles included in class 18 made from these materials; cases and bags, all included in Class 18; articles of luggage, knapsacks, rucksacks, purses (not of precious metal or coated therewith), pocket wallets, umbrellas, parasols, walking sticks, rattan walking canes, whips, harness straps made of leather; leads made of leather and collars, all for animals; parts and fittings included in class 18 for all the aforesaid goods.’
The mark in suit dates back to the 1960’s and was first adopted by a Ms Barbara Hulanicki. The mark was acquired by the registered proprietor in 1975 and use after than dated appears to have been intermittent. The application for revocation was filed on 20 January 2005 so the relevant five year period for showing use covers the period 21 January 2000 to 20 January 2005.
The registered proprietor filed evidence of use of the mark in suit but the use shown was not clear cut and the evidence was not well focused. However, the Hearing Officer accepted that there had been use of the mark in respect of bags and handbags and he ordered that the specification of the mark in suit be restricted to read ‘bags and handbags’.

Judges:

Mr M Foley

Citations:

[2006] UKIntelP o34806

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.454923

Glen’s Glen’s Vodka Glen’s Gin Glen’s White Rum Glen’s Dark Rum (Series) (Trade Mark: Opposition): IPO 16 Nov 2006

Section 5(2)(b): Opposition failed. Section 5(3): No formal finding. – The opposition was based on the opponents’ marks GLEN ORCHY and HUNTER’S GLEN.
There was no dispute that identical goods )alcoholic beverages, whisky etc) were involved.
Having compared the marks the Hearing Officer found no likelihood of confusion and the opposition under Section 5(2)(b) failed accordingly.
She did not go on to make a formal finding under Section 5(3) but did remark that the available evidence did not provide much support for the claim.

Judges:

Mrs A Corbett

Citations:

[2006] UKIntelP o32306

Links:

Bailii

Intellectual Property

Updated: 15 October 2022; Ref: scu.454895

M-Systems Flask Disk Pioneers Ltd and Trek Technology (Singapore) Pte Ltd (Patent): IPO 8 Nov 2006

IPO The patent in suit relates to a portable data storage device which can be connected to the USB port of a computer. The Claimant (M-Systems) sought revocation of the patent on the grounds that the patent as granted included matter extending beyond that originally disclosed, was not novel or did not involve an inventive step and was insufficient for lack of clarity. The Defendant (Trek) sought to amend the patent unconditionally under s.75, in part by disclaimer, when it filed an amended counter statement, and by further amendment requested during a lengthy adjournment brought about by the unavailability of an expert witness.
The hearing officer found that the application as originally filed taught that the plug of the USB device was capable of being directly and physically plugged into the USB port of a computer but that the generality of the language used meant that the application imposed no restriction on how the plug was coupled to the rest of the device or how the other components of the device were coupled to one another. He also found the application imposed no restriction on the size of the device other than it must be compact and portable and no restriction on the memory capacity of the device (although users expected to be able to use it as an alternative to conventional storage means like CD-Rom or magnetic disk) and that the device could be read/write or read only. In construing the application the hearing officer drew a distinction between the teaching of the application and a contemporary product (the ThumbDrive) Trek had developed.
Having construed the application in this way the hearing officer found that amendments made to claim 1 pre-grant such that the data storage device could be ‘directly plugged into a USB socket of a computer’, was ‘operative to function as an alternative to a magnetic disk or CD-ROM’ and was ‘capable of storing software for installation to the computer or of receiving and storing user’s data present in the computer’ did not add matter. Furthermore, he found claim 1 as granted to be clear and thus the insufficiency point failed.
The first request for post grant amendment of claim 1 sought to disclaim the subject matter of a piece of s.2(3) prior art as well as introduce some textual amendments. Following the decision of the Enlarged Board of Appeal of the EPO in G1/03 and G2/03 [2004] EPOR 33 the hearing officer found that a disclaimer was allowable to distinguish a claimed invention from such prior art. However, he observed that the disclaimer would add matter and thus would not be allowable if it also excluded section 2(2) prior art (other than an accidental anticipation) which would otherwise destroy the novelty or inventiveness of the claimed invention. Furthermore, he noted that the mere possibility that a disclaimer might give rise to added matter if relevant section 2(2) prior was unearthed at some later date was not a barrier to allowing the disclaimer in the first place.
Nevertheless, the hearing officer refused to exercise discretion to allow the amendment because Trek had failed to provide a full disclosure of all the relevant facts and thus had not discharged the onus on it to establish that the amendment should be allowed.
Even if he had exercised discretion to allow the amendment, the hearing officer found it not to be permitted under the Act because changing the wording ‘directly plugged into’ to ‘directly introducible into’ added matter contrary to section 76(3)(a). Alternatively, if it did not alter the meaning of the claim, discretion to make the amendment would be refused. Furthermore, he found claims 1, 3, 4 and 6 to be anticipated and claims 2 and 5 to be obvious
As for the second request for amendment, the hearing officer found that there was no legal bar to considering an amendment requested during the course of proceedings, even when the request was made between the presentation of evidence and summing up. However, as with the first request, he found that Trek had not discharged the onus on it to establish that the second request for amendment should be allowed.
The amendments requested under section 75 were refused and the patent revoked.

Judges:

Mr R Walker

Citations:

[2006] UKIntelP o31806, GB 2371653

Links:

Bailii

Statutes:

Patents Act 1977 72

Jurisdiction:

England and Wales

Intellectual Property

Updated: 15 October 2022; Ref: scu.454906

Autoliv Development Ab, Karl-Erik Tommy Andersson, Jan Ulrik Odenmo, Ola Bostrom and Bertil Mattson (Patent): IPO 23 Nov 2006

IPO As a result of an uncontested application filed under section 13(1) by Autoliv Development AB, it was found that Bertil Mattson should be mentioned as a joint inventor in the published patent application and granted patent and directed that an addendum slip be prepared mentioning him as a joint inventor for the published patent application and the granted patent.

Judges:

Mrs S Williams

Citations:

[2006] UKIntelP o33006, GB 2330068

Links:

Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 15 October 2022; Ref: scu.454888

Wheels ‘R’ Us (Trade Mark: Inter Partes): IPO 19 Oct 2006

Section 5(2)(b): Opposition partially successful in respect of Class 12 goods. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed. Section 56: Opposition failed.
The opponent relied on a number of prior registrations but these were reduced to BIKES ‘R’ US, BIKES’ R’ US (with the R reversed), ‘R’US (with the R reversed) and TOYS ‘R’ US (with the R reversed). The opponent also filed evidence of use of its marks BIKES ‘R’ US (with the R reversed) and TOYS ‘R’ US (with the R reversed) though the evidence was not particularly well focused or detailed.
The applicant, in its specifications, excluding goods for use in relation to bicycles and related goods and the opponent queried whether or not such a qualification was acceptable. The Hearing Officer determined that the wording of the restriction was acceptable.
Under Section 5(2)(b) it was agreed that the opponent’s best case rested on its marks ‘R’ US and BIKES ‘R’ US (both with the R reversed). When the Hearing Officer compared the respective specifications he concluded that identical and similar goods were covered by the respective Class 12 specifications. While the Hearing Officer accepted that the opponent’s marks were inherently distinctive he rejected the opponent’s claim that through use of their TOYS ‘R’ US mark the ‘R’US (with the R reversed) element had become distinctive through use. When he compared the respective marks the Hearing Officer considered that there were a number of similarities and taking account of the goods at issue there was a likelihood of confusion. Thus the opponent was successful in respect of certain goods in Class 12.
The Hearing Officer went on to find that the opponent failed in its ground under Section 5(4)(a) because there was insufficient evidence to show that its reputation extended into automobile goods and that there would be thus be misrepresentation.
With regard to the ground under Section 5(3) the Hearing Officer concluded that the opponent had not proved a reputation in any mark other than TOYS ‘R’ US (with the R reversed) in relation to the sale of toys and the Hearing Officer did not think that this reputation would extend to goods or services which were not similar. Opposition failed on this ground.
The Section 56 ground also failed.

Judges:

Mr G Salthouse

Citations:

2359787, [2006] UKIntelP o29606

Links:

IPO, Bailii

Statutes:

Trade Marks Act 1994

Intellectual Property

Updated: 15 October 2022; Ref: scu.454884

Royalty Pharma Collection Trust (Judgment): ECJ 30 Apr 2020

Reference for a preliminary ruling – Intellectual and industrial property – Regulation (EC) No 469/2009 – Supplementary protection certificate for medicinal products – Conditions for obtaining – Article 3 (a) – Concept of ‘product protected by a basic patent in force ‘- Assessment criteria

Citations:

C-650/17, [2020] EUECJ C-650/17, ECLI:EU:C:2020:327, [2019] EUECJ C-650/17_O

Links:

Bailii, Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 October 2022; Ref: scu.660150

Provation Medical Inc (Patent): IPO 2 Oct 2006

IPO The invention relates to a computer system for helping physicians to document the medical procedures they’ve carried out, with a view to making billing easier.
There was held to be no advance in a non-excluded field and the application was refused. CFPH LLC’s Application [2006] RPC 5 followed

Citations:

[2006] UKIntelP o27806

Links:

Bailii

Intellectual Property

Updated: 14 October 2022; Ref: scu.454877

Helix (Trade Mark: Inter Partes): IPO 2 Oct 2006

IPO The opposition was based on the opponents’ mark HELIS, registered in respect of what was agreed were identical goods.
The matter therefore came down to a comparison of the marks. These the Hearing Officer found to be ‘highly similar and, from on aural point of view, all but indistinguishable’.
The opposition under Section 5(2)(b) succeeded accordingly.

Citations:

[2006] UKIntelP o28106

Links:

Bailii

Intellectual Property

Updated: 14 October 2022; Ref: scu.454870

Megadent (Trade Mark: Inter Partes): IPO 19 Oct 2006

IPO The opponent’s opposition was based on its ownership of the mark NEVADENT in Classes 3 and 21 in respect of dentifrices and toothbrushes. It also filed evidence of use of its mark in relation principally to toothbrushes but that user was modest in respect of the overall market for such goods and the Hearing Officer concluded that the opponent had not proved that its mark had an enhanced reputation through the use make of it and that it did not have a significant reputation as regards the public at large. This latter finding was fatal to its ground under Section 5(3).
The applicant also filed evidence about the size of the market in the UK for toothbrushes and tooth care products and submitted that in this context the user by the opponent was modest.
As regards the ground under Section 5(2)(b) the opponent indicated at the Hearing that it was withdrawing its objection in respect of such goods as deodorants. As regards the other goods at issue the Hearing officer carried out a careful comparison and concluded that identical and similar goods were at issue.
As regards the respective marks MEGADENT and NEVADENT the Hearing Officer noted that both marks had the suffix DENT but he did not consider this element to be particularly distinctive in the context of dental products. He also noted that when comparing MEGA and NEVA that MEGA has a well known meaning as large or great. Comparing the marks overall the Hearing Officer concluded that they were not confusingly similar and that the opposition failed on the Section 5(2)(b) ground.

Judges:

Mr D Landau

Citations:

2373346, [2006] UKIntelP o30006

Links:

IPO, Bailii

Intellectual Property

Updated: 14 October 2022; Ref: scu.454874

Micron Europe Limited (Patent): IPO 20 Sep 2006

IPO Excluded fields (allowed) – The applications relate to the use of parallel processing in active memory applications. Following the CFPH approach, the Hearing Officer was able to identify an advance in the art that lay outside the description of an invention in the sense of Article 52 of the EPC. However, he could find no support for such an advance in the claims as currently filed. The Hearing Officer gave the applicant a further two months in which to submit amended claims.

Judges:

Mr H Jones

Citations:

[2006] UKIntelP o26406

Links:

Bailii

Statutes:

Patents Act 1977 1(2)(c)

Intellectual Property

Updated: 14 October 2022; Ref: scu.454841