Category: Intellectual Property

Insight (Trade Mark: Opposition): IPO 13 Jun 2000

The applicants filed use of their mark INSIGHT so that the application could proceed to advertisement under the provisions of Section 7 – Honest Concurrent Use – in the face of marks owned by Laurentian Life and Ipsos Insight Marketing. First use was claimed from 5 September 1988.
Under Section 3 the Hearing Officer noted a claim by the opponents that the word ‘Insight’ is used in relation to market research but felt that the claim had not been substantiated to any significant extent. He accepted that the mark INSIGHT had some descriptive connotations but felt that it was not precluded from acceptance. In any event it had the support of some six years user and this clearly allowed acceptance under the proviso to Section 3.
With regard to Section 5(2) the Hearing Officer referred to the provision of Section 7 which stated that if an applicant proceeded under that Section in the face of other firms registered marks and those firms did not oppose, then their registrations could not be used by a third party as a basis of its opposition.
When reviewing the evidence filed in these proceedings the Hearing Officer concluded that the applicants had commenced to use their mark some three weeks before the opponents commenced to use their mark. Thus the opponents had no basis for their ground of objection under Section 5(4)(a) – Passing Off.

Citations:

[2000] UKIntelP o19400

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 12 October 2022; Ref: scu.453853

Tam (Trade Mark: Opposition): IPO 15 Jun 2000

Following the launching of opposition proceedings the opponents had filed their evidence within a period of six months. The applicants were set the standard period of three months to 16 November 1999 to file their evidence. A further period of three months to 16 February 2000 was requested on the grounds that the parties had been in negotiation and settlement of the dispute was likely. This request was granted.
On the 16 February the applicants requested a further three month period until 16 May 2000 on the basis that a settlement had been agreed in principle and only one further meeting was necessary to finalise matters. Subsequently, the opponents disputed that agreement had been reached and that the applicants should have filed their evidence within the generous period allowed.
Following further submissions from both parties advisors about their understanding of the negotiations which had taken place, an interlocutory hearing took place on 6 April 2000. At this hearing the applicants indicated that their evidence was ready to be filed and the Hearing Officer accepted it into the proceedings. He did so on the basis that the applicant had been proceeding on the basis that negotiations were proceeding smoothly and it was not until mid-February that the true position became apparent and that a settlement was not likely. In view of this uncertainty the Hearing Officer considered it reasonable to allow the period from 16 February to 6 April (the date of the hearing) for the applicants to complete and file their evidence. However, no further time beyond the 6 April allowed.

Citations:

[2000] UKIntelP o20200

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 12 October 2022; Ref: scu.453867

Digital Edge (Trade Mark: Opposition): IPO 1 Jun 2000

IPO Result
Applicants’ appeal abandoned – Opposition successful.
Points Of Interest
1. Costs in proceedings before the Registrar; and on appeal.
Summary
At first instance (see BL O/372/99) the Hearing Officer had found the opponents partially successful under Section 5(2)(b) and unsuccessful under the remaining rounds. He had directed the applicants to file a revised specification. Both sides appealed against that decision.
During the course of the appeal process the applicants had gone into receivership and the assets had been sold to a company which did not wish to pursue the matter. Accordingly, no revised specification had been filed, or would be filed. The original result sought by the opponents had therefore come about. The appointed person therefore made no finding on the merits of the appeals. He awarded costs in respect of the appeals but declined to interfere with the Hearing Officer’s decision to award costs to neither party in respect of the substantive matter.

Judges:

Mr Geoffrey Hobbs QC

Citations:

2051099, [2000] UKIntelP o18600

Links:

IPO, Bailii

Intellectual Property

Updated: 12 October 2022; Ref: scu.453848

Hyde Park Residence Limited v Yelland, News Group Newspapers Limited, News International Limited, Murrell: PatC 16 Mar 1999

There is a public interest defence to an allegation of copyright infringement. A newspaper republished video camera stills to demonstrate the untruth of assertions made publicly about the relationship if Princess Diana and Dodi Fayed.
Held: It was a current event, and the fair dealing defence applied.

Judges:

Jacob J

Citations:

Times 24-Mar-1999, [1999] EWHC Patents 247

Links:

Bailii

Statutes:

Copyright Designs and Patents Act 1988 30(2) 97

Jurisdiction:

England and Wales

Citing:

Appealed to – 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 . .

Cited by:

Appeal from – 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: 12 October 2022; Ref: scu.163098

Warner Music UK Ltd and Others v Tunein Inc: ChD 1 Nov 2019

Copyright owners’ challenge to alleged infringement by internet radio stations.

Judges:

Birss J

Citations:

[2019] EWHC 2923 (Ch), [2020] ECDR 8

Links:

Bailii

Statutes:

Copyright, Designs and Patents Act 1988 20

Jurisdiction:

England and Wales

Cited by:

Appeal from – Tunein Inc v Warner Music UK Ltd and Another CA 26-Mar-2021
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 October 2022; Ref: scu.643907

Nissan Jidosha v OHIM (CVTC): ECFI 4 Mar 2015

ECJ Judgment – Community trade mark – Request for renewal of the Community figurative mark CVTC – Partial renewal – Article 47 of Regulation (EC) No 207/2009

Citations:

T-572/12, [2015] EUECJ T-572/12, ECLI:EU:T:2015:136

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 47

Jurisdiction:

European

Intellectual Property

Updated: 12 October 2022; Ref: scu.543915

Three-N-Products v OHMI – Munindra (Pranayur): ECFI 4 Mar 2015

ECJ Community trade mark – Opposition proceedings – Application for Community word mark PRANAYUR – Earlier Community word mark AYUR and earlier Community figurative marks Ayur, Ayur Naturals Herbals and Aanb – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009

Citations:

T-543/13, [2015] EUECJ T-543/13, ECLI:EU:T:2015:134

Links:

Bailii

Statutes:

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

Jurisdiction:

European

Intellectual Property

Updated: 12 October 2022; Ref: scu.543882

FSA v OHMI – Motokit Veiculos E Acessorios (FSA K-Force): ECFI 4 Mar 2015

Judgment – Community trade mark – Invalidity proceedings – Community word mark FSA K-FORCE – Earlier Community word mark FORCE-X – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Obligation to state reasons – Article 75 of Regulation No 207/2009

Citations:

T-558/13, [2015] EUECJ T-558/13

Links:

Bailii

Statutes:

Regulation No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 12 October 2022; Ref: scu.543880

British Telecommunications Plc v A C Egerton Ltd (Patent): IPO 12 May 2000

IPO Egerton applied for a patent for a ‘Pole Top Distribution Point’ (PTDP) connector in February 1993. BT claimed they were entitled to the patent under section 37(1)(b) of the Act. They said BT had disclosed the invention to Egerton during a competitive tendering process which was initiated in 1991 to find suppliers of such connectors. Also, since they alleged the patent had been granted to a person not entitled to it, they asked for it to be revoked under section 72(1)(b).
In the tendering process, Egerton were supplied with a ‘Statement of Requirements’ (SOR) by BT setting out required design features, and BT alleged that they had also given Egerton further relevant design details. BT also argued that the Egerton design was so close to what BT were proposing that Egerton must somehow have acquired relevant information from BT even after they had dropped out of the tendering process. It was found that the SOR did not refer to any of the essential features of the invention, and that BT did not provide any relevant details to Egerton in any other way, except for the idea of a 5 pin plug-in module. While it was accepted that the 5 pin module contributed to the Egerton design, BT had not dealt with the idea of using a 5 pin module confidentially and consequently did not qualify for joint proprietorship on that score. Furthermore, BT were unable to show that BT and their collaborators had themselves arrived at a design incorporating all the features of the invention before the priority date. Egerton on the other hand demonstrated that they had pursued an coherent sequence of development leading to the connector described in the patent application, and in any case the design of that connector was so different from the connectors eventually produced by BTs collaborators that copying was not credible.
The invention comprised a combination of features each of which was in itself not necessarily inventive. The hearing officer held that for BT to be successful they would have to show that they had taught Egerton to incorporate all the features in a single connector – not simply provided Egerton with each feature in a disjointed, piecemeal fashion over time. In the event they did not succeed in showing that they had communicated either individual or combined features to Egerton. If they had communicated any such features, it would still have been necessary for them to demonstrate that they had done so confidentially, and this they also failed to do. On another point, the hearing officer expressed concern that BT were claiming entitlement without being able to say which individual(s) they alleged to be the inventor(s). However because Egerton did not make an issue of this, it was not taken to be fatal to the case. On a final point, BT were unable to show, as they had alleged, that the combination of features in the invention resulted inevitably from the design requirement proposed by BT when taken in combination with the 5 pin module.
On a point of law, BT suggested that the Egerton design was so close to what BT had been proposing, that the burden of proof should switch from BT to Egerton, so that Egerton would have to demonstrate that they had not copied the design from BT. Copyright precedents were cited in support, in which the burden of proof had been switched in this way when an allegedly infringing work was closely similar to the copyright work and the possibility of access to the copyright work was established. This argument was rejected on the grounds that the driving forces for creating the invention were known in the art and it was therefore quite possible that inventors might independently make similar inventions.
BT were unsuccessful in their reference and were not found to be entitled to any part of the patent. Their application for revocation also failed.

Judges:

Mr P Hayward

Citations:

[2000] UKIntelP o17000, O/170/00, EP0683925

Links:

Bailii

Intellectual Property

Updated: 12 October 2022; Ref: scu.453815

Crompton Lighting Ltd v Emergi-Lite Safety Systems Ltd (Patent): IPO 18 May 2000

IPO Crompton Lighting applied to revoke GB2059196B on the grounds that it was not new and did not involve an inventive step. The proprietor, Emergi-Lite Safety Systems, filed a counter-statement, but the two parties reached a settlement before any evidence was filed. Following the settlement, the applicant sought leave to withdraw from the revocation proceedings. However, acting in the public interest, the Comptroller refused to allow the revocation to be withdrawn because it appeared that the invention as claimed was indeed lacking in novelty and inventiveness. The proprietor declined to amend the patent (which would have expired anyway a few months later) and so it was formally revoked.

Judges:

Mr P Hayward

Citations:

[2000] UKIntelP o17800, GB2059196

Links:

Bailii

Statutes:

Patents Act 1977 72

Intellectual Property

Updated: 12 October 2022; Ref: scu.453819

Hans Plechinger v Converganza Ag Alexander Brockhoff (Patent): IPO 20 Apr 2000

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

Judges:

Mrs S Williams

Citations:

O/141/00, [2000] UKIntelP o14100

Links:

PO, PO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 12 October 2022; Ref: scu.453797

Silverwood Spring Water Device (Trade Mark: Opposition): IPO 2 Mar 2000

This was an appeal to the Appointed Person against the Hearing Officer’s decision (see O/128/99). The appellants’ case in particular was that on first impression the marks at issue were confusingly similar and the Hearing Officer should have so found. The Appointed Person, however, could discern no error in the Hearing Officer’s approach, and he had not come to the wrong conclusion, he said.

Judges:

Thorley QC

Citations:

[2000] UKIntelP o12100, O/121/00

Links:

Bailii

Intellectual Property

Updated: 12 October 2022; Ref: scu.453780