Category: Intellectual Property

SKA and Another v CRH and Others: QBD 31 Jul 2012

The claimant sought to restrain the publication of private information by the defendant against the alleged threat by the defendant to publish unless a substantial sum of money was paid.

Judges:

Nicola Davies J

Citations:

[2012] EWHC 2236 (QB)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – McClaren v News Group Newspapers Ltd QBD 5-Sep-2012
The claimant had obtained an interim injunction to restrain the defendant publishing what he said was private information about a sexual encounter. He also sought an injunction under the 1997 Act.
Held: The claim succeeded: ‘there have been . .
Lists of cited by and citing cases may be incomplete.

Media, Intellectual Property

Updated: 20 November 2022; Ref: scu.463365

RST v UVW: QBD 11 Sep 2009

The applicant sought an interim and without notice injunction preventing the defendant from disclosing confidential information covered by an agreement between the parties.
Held: The order was made on a without notice application because there was a real risk that if given notice the respondent would take steps to defeat its purpose. The applicant had had sexual encounters with the respondent several years before, in return for money. She more recently came back asking for money not to disclose the events. He paid under a formal written agreement for confidentiality. Later her agent approached others with a view to selling her story. When challenged, the agent threatened to publish anyway.

Judges:

Tugendhat J

Citations:

[2009] EWHC 2448 (QB), [2010] EMLR 13, [2010] Fam Law 141, [2010] 1 FLR 950

Links:

Bailii, Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Bonnard v Perryman CA 2-Jan-1891
Although the courts possessed a jurisdiction, ‘in all but exceptional cases’, they should not issue an interlocutory injunction to restrain the publication of a libel which the defence sought to justify except where it was clear that that defence . .
Cited – Gulf Oil (Great Britain) Limited v Page CA 1987
The plaintiff had contracted exclusively to supply to the defendants owners of petrol stations. On arrears arising, the plaintiff discontinued deliveries save on cash on delivery and direct debit terms. The defendants obtained supplies from another . .
Cited – Joyce v Sengupta and Another CA 31-Jul-1992
The defendant published an article accusing the plaintiff of theft. Not having funds to launch a claim in libel, the plaintiff obtained legal aid to claim in malicious falsehood. She now appealed against a strike out of that claim.
Held: A . .
Cited – Service Corporation International plc v Channel Four Television ChD 1999
The court considered an application for an interlocutory injunction to restrain a broadcast, based on copyright. The defendant argued that this was merely an attempt to circumvent difficulties in a defamation action.
Held: Where an interim . .
Cited – Theakston v MGN Ltd QBD 14-Feb-2002
The claimant, a celebrity sought to restrain publication by the defendant of information about his sex life, consisting of pictures of him in a brothel. The court considered the test for the grant of an injunction to restrain publication under the . .
Cited – A v B plc and Another (Flitcroft v MGN Ltd) CA 11-Mar-2002
A newspaper company appealed against an order preventing it naming a footballer who, they claimed, had been unfaithful to his wife.
Held: There remains a distinction between the right of privacy which attaches to sexual activities within and . .
Cited – Campbell v Mirror Group Newspapers Ltd (MGN) (No 1) HL 6-May-2004
The claimant appealed against the denial of her claim that the defendant had infringed her right to respect for her private life. She was a model who had proclaimed publicly that she did not take drugs, but the defendant had published a story . .
Cited – Von Hannover v Germany ECHR 24-Jun-2004
Princess Caroline of Monaco who had, at some time, received considerable attention in the media throughout Europe, complained at the publication of photographs taken of her withour her permission.
Held: There was no doubt that the publication . .
Cited – In re S (a Child) (Identification: Restrictions on Publication) HL 28-Oct-2004
Inherent High Court power may restrain Publicity
The claimant child’s mother was to be tried for the murder of his brother by poisoning with salt. It was feared that the publicity which would normally attend a trial, would be damaging to S, and an application was made for reporting restrictions to . .
Cited – Greene v Associated Newspapers Ltd CA 5-Nov-2004
The claimant appealed against refusal of an order restraining publication by the respondent of an article about her. She said that it was based upon an email falsely attributed to her.
Held: ‘in an action for defamation a court will not impose . .
Cited – Ash and Another v McKennitt and others CA 14-Dec-2006
The claimant was a celebrated Canadian folk musician. The defendant, a former friend, published a story of their close friendship. The claimant said the relationship had been private, and publication infringed her privacy rights, and she obtained an . .
Cited – Associated Newspapers Ltd v Prince of Wales CA 21-Dec-2006
The defendant newspaper appealed summary judgment against it for breach of confidence and copyright infringement having published the claimant’s journals which he said were private.
Held: Upheld, although the judge had given insufficient . .
Cited – Murray v Big Pictures (UK) Ltd; Murray v Express Newspapers CA 7-May-2008
The claimant, a famous writer, complained on behalf of her infant son that he had been photographed in a public street with her, and that the photograph had later been published in a national newspaper. She appealed an order striking out her claim . .
Cited – Karako v Hungary ECHR 28-Apr-2009
In an election campaign an opponent of the claimant politician had said in a flyer that he was in the habit of putting the interests of his electors second. The applicant accused his opponent of criminal libel, but the prosecutor’s office terminated . .
Lists of cited by and citing cases may be incomplete.

Media, Contract, Intellectual Property

Updated: 19 November 2022; Ref: scu.377858

Actavis UK Ltd v Novartis Ag: PatC 16 Jan 2009

Application to revoke patent for obviousness and insufficiency

Judges:

Warren J

Citations:

[2009] EWHC 41 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Brugger v Medic-Aid Ltd (No 2) ChD 1996
B alleged infringement by M of its patented nebulizer. M replied saying that the claims failed for obviousness. Features of the nebulizer were admittedly old and well known, but the claimant asserted a new mechanism which reduced the size of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 November 2022; Ref: scu.280072

Zipher Ltd v Markem Systems Ltd and Another: PatC 25 Jun 2008

Citations:

[2008] EWHC 1379 (Pat), [2009] FSR 1

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Markem Corporation and Another v Zipher Ltd CA 22-Mar-2005
A patent which was applied for as a result of a breach of confidence may be capable of giving the victim of the breach the benefit of an interest in the patent. In the UK at least the basis of an entitlement claim must be a breach of the claimant’s . .
See Also – Zipher Ltd v Markem Systems Ltd PatC 16-Jan-2007
. .

Cited by:

See Also – Zipher Ltd v Markem Systems Ltd and Another PatC 1-Sep-2008
This judgment deals with the issue of the scope of the injunction to which Markem should be entitled in support of the undertaking given to HHJ Fysh QC. . .
Appeal From – Zipher Ltd v Markem Systems Ltd and Another CA 10-Feb-2009
In earlier proceedings, Zipher had given an undertaking not to pursue their claim over and above a certain level. The defendant now sought to hold them to that undertaking. The claimants replied that the undertaking had lapsed when that action had . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 November 2022; Ref: scu.270484

Research In Motion UK Ltd v Visto Corporation: PatC 28 Feb 2008

Judges:

Floyd J

Citations:

[2008] EWHC 335 (Pat), [2008] Bus LR D89

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Brugger v Medic-Aid Ltd (No 2) ChD 1996
B alleged infringement by M of its patented nebulizer. M replied saying that the claims failed for obviousness. Features of the nebulizer were admittedly old and well known, but the claimant asserted a new mechanism which reduced the size of the . .

Cited by:

See Also – Research In Motion UK Ltd v Visto Corp PatC 1-Aug-2007
Application by the defendant for a stay of a revocation action pending the outcome of EPO opposition proceedings in relation to the patent in suit. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 November 2022; Ref: scu.266590

Rank Film Distributors v Video Information Centre: HL 1 Mar 1981

The plaintiffs claimed large-scale copyright infringement, and obtained Anton Pillar orders. The House considered the existence of the privilege against self-incrimination where the Anton Piller type of order has been made. The Court of Appeal had decided that the court should abstain from making an order ex parte requiring immediate answers to interrogatories or disclosure of documents when it can see that the defendant would be in danger of self-incrimination, and all requirements to answer those interrogatories or to disclose documents were deleted from the order originally made at first instance.
Held: The appeal was dismissed. The privilege against self-incrimination was capable of being invoked. The test is as to whether there is a ‘real and appreciable risk of criminal proceedings . . being taken against’ the witness.
Lord Wilberforce said: ‘However, it is only too clear (and I deliberately use the language of reluctance) that supply of the information and production of the documents sought would tend to expose the respondents to a charge of conspiracy to defraud . . A charge of conspiracy to defraud, so far from being as it sometimes is, a contrived addition to other charges, is here an appropriate and exact description of what was being done . . Unless some escape can be devised from this conclusion, the privilege must inevitably attach.’ and
‘Mr. Nicholls was at pains to make clear that he was not, in these submissions, attempting to negate or undermine the privilege against self-incrimination. This has been too long established in our law as a basic liberty of the subject – in other countries it has constitutional status – to be denied. It has received modern recognition in section 14 of the Civil Evidence Act 1968 and in this House.’
The protection extended to material the discovery of which which might ‘Set in train a process which may lead to incrimination or may lead to the discovery of real evidence of an incriminating character.’
‘It may seem to be a strange paradox that the worse, ie the more criminal, their [ie the defendants’] activities can be made to appear, the less effective is the civil remedy that can be granted, but that, prima facie, is what the privilege achieves.’ and ‘This has been too long established in our law as a basic liberty of the subject (in other countries it has constitutional status) to be denied.’ ‘It is certainly correct to say, that existing law and practice to some extent prevent matter disclosed on discovery in civil proceedings from being used to the prejudice of the disclosing party. The protection is described with different words: the matter must not be used for an ‘improper’ purpose’ or a ‘collateral object’ or, most strongly, ‘otherwise than in the action, in which they are disclosed’.
Lord Fraser of Tullybelton: ‘At one stage, the argument seemed to depend on the possibility that the court which ordered the discovery might place an express restriction on the use of any information disclosed. In my opinion, any argument on that basis must be rejected. A restriction by the court making the order would, no doubt, be effective to bind the party who obtained the order, but it can hardly be suggested that it would be effective to prevent a prosecutor in the public interest from using, or an English criminal court (a fortiori a Scottish criminal court if a conspiracy were prosecuted in Scotland) from admitting the information in evidence at a trial. All evidence which is relevant is prima facie admissible in a criminal trial, although the trial judge has a discretion to exclude evidence which, though admissible, has been obtained by unfair means from the accused after commission of the offence: Reg. v. Sang [1980] AC 402. But it is obvious that a person who has to rely on an exercise of judicial discretion is in a less secure position than one who, by relying on the privilege, can avoid providing the information in the first place. ‘ and ‘The main basis of the argument was an implied rule, said to be derived from the case of Riddick v. Thames Board Mills Ltd. [1977] QB 881, to the effect that evidence which has been disclosed under compulsion in a civil action cannot be used against a person who has disclosed if for the purposes of another civil action or of a criminal prosecution. It was argued that any incriminating information disclosed by a person making discovery or answering interrogatories would enjoy complete protection by reason of that rule, because the information would have been given under compulsion, in respect that refusal to give it would be contempt of court. I would make one preliminary observation on that argument. It seems to me to go much too far. If it is well-founded, it means that the established practice whereby judges warn witnesses that they need not answer questions addressed to them in oral examination in court, if the answers might tend to incriminate them, is unnecessary, because refusal to answer would, in the absence of the warning, be contempt of court and any incriminating evidence having been given under compulsion would not be admissible against them in criminal proceedings. I approach a proposition leading to that result with some scepticism. In any event, the case of Riddick was concerned only with the question of the use to which documents recovered on discovery could be put by the party who had obtained discovery. Lord Denning M.R. at p. 896H, stated the principle in a sentence thus: ‘A party who seeks discovery of documents gets it on condition that he will make use of them only for the purposes of that action, and for no other purpose’ (emphasis added). That statement of principle would have to be extended to include cases such as Norwich Pharmacal Co. v. Customs and Excise Commissioners [1974] AC 133, where an order was made for discovery of information for the purpose of its being used in another action. The principle is, I think, that information is not to be used by the party who gets discovery for purposes other than that for which production was ordered. But the case of Riddick had nothing to do with the use of information for prosecution in the public interest. On the contrary, both Lord Denning M.R. at p.896 and Stephenson L.J. at p.901, referred with approval to the observations of Talbot J. in Distillers Co. (Biochemicals) Ltd. v. Times Newspapers [1975] QB 613, 621, recognising that there might be a public interest in favour of disclosure which would override the public interest in the administration of justice which goes to preserve the confidentiality of documents disclosed on discovery. That is clearly correct. If a defendant’s answers to interrogatories tend to show that he has been guilty of a serious offence I cannot think that there would be anything improper in his opponent reporting the matter to the criminal authorities with a view to prosecution, certainly if he had first obtained leave from the court which ordered the interrogatories, and probably without such leave. If that is right the object of the privilege against self-incrimination would not be completely achieved by relying on any rule which can be derived from Riddick v. Thames Board Mills Ltd. [1977] QB 881.’

Judges:

Lord Wilberforce, Templeman L

Citations:

[1982] AC 380, [1981] 2 All ER 76, [1981] 2 WLR 668

Jurisdiction:

England and Wales

Citing:

Appeal From – Rank Film Distributors v Video Information Centre CA 1980
The plaintiff film companies accused the defendants of pirating their films. They obtained Anton Piller orders which required the defendants to permit the plaintiffs to enter their premises to inspect and remove any unauthorised films, and three . .
Cited – Rasu Maritima SA v Perusahaan (the Pertamina) CA 1978
Section 45 of the 1925 Act gives the court a very wide discretion to grant an injunction. . .
Cited – Anton Piller v Manufacturing Processes Ltd CA 8-Dec-1975
Civil Search Orders possible
The plaintiff manufactured and supplied through the defendants, its English agents, computer components. It had reason to suspect that the defendant was disclosing its trade secrets to competitors. The court considered the effect of a civil search . .

Cited by:

Cited – Holder v The Law Society Admn 26-Jul-2005
The applicant challenged the independence of the respondent’s disciplinary tribunal.
Held: The claim failed: ‘the nature of the Tribunal is entirely adequately independent and impartial for the purposes for which it is constituted. The . .
Cited – C Plc and W v P and Secretary of State for the Home Office and the Attorney General ChD 26-May-2006
The claimant sought damages from the first defendant for breach of copyright. An ex parte search order had been executed, with the defendant asserting his privilege against self-incrimination. As computer disks were examined, potentially unlawful . .
Cited – C Plc v P and Attorney General Intervening CA 22-May-2007
The respondent had been subject to a civil search, which revealed the existence of obscene images of children on his computer. He appealed against refusal of an order that the evidence should not be passed to the police as evidence. He said that the . .
Cited – Mohamed, Regina (on the Application of) v Secretary of State for Foreign and Commonwealth Affairs (No 1) Admn 21-Aug-2008
The claimant had been detained by the US in Guantanamo Bay suspected of terrorist involvement. He sought to support his defence documents from the respondent which showed that the evidence to be relied on in the US courts had been obtained by . .
Cited – Phillips v Mulcaire SC 24-May-2012
The claimant worked as personal assistant to a well known public relations company. She alleged that the defendant had intercepted telephone message given by and left for her. The court was asked first as to whether the information amounted to . .
Lists of cited by and citing cases may be incomplete.

Litigation Practice, Intellectual Property

Updated: 19 November 2022; Ref: scu.230905

Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc and others: CA 31 Jul 2006

The claimants sought to amend their claim which had previously been on the basis of a joint ownership, to one of sole ownership.
Held: The application for the amendment being made more han two years after the grant, the amendment could not be allowed. s.37(5) bars the making of a new claim out of time. Insofar as the proposed amended reference claims sole ownership and seeks to set up facts in support of that remedy it is a ‘reference . . made after [the expiry of the two-year period].’
Jacon LJ: ‘Is the court to construe s.37(5) as having the same meaning as the provision in the CPC about bringing entitlement claims more than 2 years after grant? Or can one simply forget about the CPC because it never came into force and so had no effect anywhere? I have no hesitation in holding the former. I quite accept that the bizarre s.130(7) talks about ‘the same effects in the UK as the corresponding provisions of [the specified Conventions] have in the territories to which those Conventions apply.’ And that in the case of the CPC it has no effect anywhere because it is not in force. But I am unable to read the sense of the provision as saying the CPC is to be used for construction only if and when it comes into force. ‘

Judges:

Sir Anthony Clarke MR, keene LJ, Jacob LJ

Citations:

Times 05-Sep-2006, [2006] EWCA Civ 1094, [2007] Bus LR 1

Links:

Bailii

Statutes:

Patents Act 1977 37(5)

Jurisdiction:

England and Wales

Citing:

Cited – Beloit Technologies Inc and Another v Valmet Paper Machinery Inc and Another ChD 12-May-1995
The judge urged that the Convention should be incorporated into English law without rephrasing difficult clauses: ‘it helps no-one for the Parliamentary draftsman to re-write matter in a treaty or convention (or EU directive for that matter) which . .
Cited – IDA Ltd and others v The University of Southampton and others CA 2-Mar-2006
The claimants sought sole ownership of a patent.
Held: The judge had erred when he reversed the decision of the hearing officer that the claimant was sole owner of the patent. The court expressed its regret that the matter had not been . .
Cited – British Sugar plc v James Robertson and Sons Ltd 1996
Use ‘in the course of trade’ means use by way of business and does not just mean use as a trade mark. . .
Cited – Rhone-Poulenc Rorer International Holdings Inc and Another v Yeda Research and Development Co Ltd ChD 16-Feb-2006
The patent application had been presented to the European Patent Office and granted only after 13 years. The claimant now appealed refusal to allow amendment of its claim to allow a claim in its sole name. The defendant argued that it was out of . .
Cited – Philips Electronics Nv v Remington Consumer Products Ltd ChD 2-Feb-1998
It was a misuse of Trade Mark legislation to seek permanently to prevent the use of a substantial engineering design idea which was underlying the mark for which protection was sought. The judge revocation of the registration of the claimant’s mark . .
Cited – Markem Corporation and Another v Zipher Ltd CA 22-Mar-2005
A patent which was applied for as a result of a breach of confidence may be capable of giving the victim of the breach the benefit of an interest in the patent. In the UK at least the basis of an entitlement claim must be a breach of the claimant’s . .
Cited – Koninklijke Philips Electronics NV v Remington Consumer Products Ltd and Another ChD 21-Oct-2004
The claimant alleged infringement of its trade mark. It registered a two dimensional mark which represented its razor which had three rotary blades on the head of the razor. The defendant manufactured and sold a similar design, and counterclaimed . .
Cited – Commissioners of Customs and Excise v Century Life Plc CA 19-Dec-2000
The Directive required member states to exempt from VAT, services involving the provision of insurance, and for intermediaries. Following the Regulator’s involvement, the principal company had to arrange for the checking of existing policies, and . .
Cited – Coflexip S A and Another v Stolt Offshore Ms Ltd and others CA 27-Feb-2004
Proceedings had been brought by a third party in which the patent had been revoked. The Defendant in the first proceedings now sought release from an enquiry as to damages after being found, before the revocation, to have infringed the patent.
Cited – Menashe Business Mercantile Ltd and Another v William Hill Organization Ltd PatC 15-Mar-2002
The claimants had a patent specifying a means of gambling over computers connected at a distance. They brought infringement proceedings against the respondent, who defended by asserting that since the host computer was located abroad it did not . .
Cited – Henry Brothers (Magherafelt) Ltd v Ministry of Defence Northern Ireland Office ChD 1997
Jacobs J said: ‘I do not think it is right to divide up the claim for an invention which consists of a combination of elements and then to seek to identify who contributed which element. I think the inquiry is more fundamental than that. One must . .
Cited – Henry Brothers (Magherafelt) Ltd v Ministry of Defence Northern Ireland Office CA 6-Nov-1998
Robert Walker LJ said: ‘I cannot entirely agree with the judge’s approach in the passage of his judgment (at 706) which I have already set out. I am not inclined to think that the invention was a ‘combination’ of elements. Mr Z saw Mr X’s drawing . .
Appeal from – Rhone-Poulenc Rorer International Holdings Inc and Another v Yeda Research and Development Co Ltd ChD 16-Feb-2006
The patent application had been presented to the European Patent Office and granted only after 13 years. The claimant now appealed refusal to allow amendment of its claim to allow a claim in its sole name. The defendant argued that it was out of . .

Cited by:

Cited – Cinpres Gas Injection Limited v Melea Limited ChD 23-Nov-2006
The claimant sought to pursue its licence claim after its claim to a proprietary interest in the patent had been dismissed.
Held: The claim misunderstood the way section 37 worked. To have a claim to a license the license the claimant had to . .
Appeal from – Yeda Research and Development Company Ltd v Rhone-Poulenc Rorer International Holdings Inc and others HL 24-Oct-2007
The claimants said that the defendant had misused confidential information sent to him to found an application for a patent, claiming wrongly to have been its inventor. The claimant appealed a refusal by the court to allow amendments to the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 November 2022; Ref: scu.244106

Inter Lotto (Uk) Ltd v Camelot Group Plc: CA 30 Jul 2003

The claimant and defendant had each operated using a the name ‘HotSpot’ for a name for its lottery. The respondent had registered the name as a trade mark. The claimant began to use the name first and claimed in passing off, and the respondent claimed infringement of its mark.
Held: The law of passing off was not displaced by the Trade Marks legislation. There was no current provision for satisfactorily reconciling the two systems. Liability in passing off was to be determined as at the date of the activity complained of.

Judges:

Lord Justice Pill Lord Justice Keene Lord Justice Carnwath

Citations:

[2003] EWCA Civ 1132, Times 20-Aug-2003, [2004] 1 WLR 955

Links:

Bailii

Statutes:

Trade Mark Act 1994 2(2)

Jurisdiction:

England and Wales

Citing:

Cited – Cadbury-Schweppes Pty Ltd And Others v Pub Squash Co Pty Ltd PC 13-Oct-1980
(New South Wales) The plaintiff had launched and advertised a soft drink. A year later, the defendant launched a similar product using similar names, styles and advertising, but then registered trade marks. The plaintiff sought damages, and for the . .
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 – Regina v Johnstone HL 22-May-2003
The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act . .
Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Cited – Percy and Another v Hall and Others QBD 31-May-1996
There was no wrongful arrest where the bylaw under which it was made was invalid. The question is the belief of the arresting officers. The effect of retrospective legislation is not always fully worked through. English law provides no cause of . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 November 2022; Ref: scu.185238

O Mustad and Son v Dosen and Another; O Mustad and Son vAllcock: HL 1924

(Heard in 1924, but noted only in 1963) Dosen worked for a company T under a contract of employment that included an undertaking to keep confidential information acquired at work. His employer went into liquidation. The benefit of that company’s trade secrets was bought by the plaintiffs, O. Mustad and Son. Dosen went to work for Allcock and Co.
Held: Though the employee was never employed by the plaintiff, the benefit of a confidence could pass, by a purchase from the liquidator of Thoring, and, so, could be shared between and be enforceable by co-owners or by a successor in title where the defendant knew or could be taken to have known of the co-ownership or sharing before acting in breach and where all entitled to the confidence assert it.

Lord Buckmaster ‘My Lords, the most important thing to remember is that, for the purpose of establishing their case in these proceedings, it was essential that the appellants should prove, firstly, that there was special information that Dosen had obtained in their service which he was prevented from disclosing, and, secondly, that he either had disclosed it or had threatened that it should be disclosed. It might well be that, had nothing more happened, the circumstances connected with this case would have been sufficient to support the claim which the appellants put forward; but on January 22, 1926, a few months after the institution of these proceedings, the appellants applied for a patent to protect an invention relating to the manufacture of fish-hooks, which in substance covered the principle of the machine which Dosen had constructed while in the service of Thoring and Co. It consisted of an arrangement by which what was known as the transporter could be operated so that it would alternatively move the pieces of wire along, lift, and depress them in order that they might be brought into contact with the various shaping tools which would perform the operation by means of which a piece of straight wire ultimately assumed the form of a fish-hook. Now that specification was called to the notice of the respondents by a letter from the appellants’ solicitors, who informed them that a specification to this effect had been filed, in these words, on June 7, 1926: ‘Our clients have applied for a British patent of the machine and the application has been accepted.’ Following on that the respondents’ solicitors asked whether the patent covered precisely the same machine as was referred to in the statement of claim, and later repeated the inquiry whether it was the same machine as was the object of the appellants’ complaint against the respondents, but this, the appellants’ solicitors said, was information which they were not in a position to give – and the matter so remained. Meanwhile the appellants had obtained an interlocutory injunction against the disclosure of secrets by Dosen to the other respondents; they subsequently alleged that that injunction had been broken, and sought the process of committal against the respondents in respect of the breach. Upon that application coming before the Court of Appeal, Mr. Wallington, counsel for the respondents, referred again to this machine and said that the appellants had themselves applied for a patent for the very thing and were now asking that the respondents ‘be committed to prison for breach of an injunction which relates to the non-disclosure of a secret which they themselves have published to the world.’ Later on in the course of argument Mr. Rayner Goddard, who appeared for the appellants, accepted the statement to this extent, that when Bankes L.J. said to him, ‘If Mr. Wallington is right, whatever his knowledge, if it were secret, assuming it was secret, it is now public,’ he said, ‘yes, it is now patented in this country.’ The effect of this conduct and statement must clearly have been to suggest to the respondents that the essential part of this machine had been disclosed in the specification and was the subject of protection by a patent. In that position the matter comes for trial.
Of course, the important point about the patent is not whether it was valid or invalid, but what it was that it disclosed, because after the disclosure had been made by the appellants to the world, it was impossible for them to get an injunction restraining the respondents from disclosing what was common knowledge. The secret, as a secret, had ceased to exist. But the appellants say – and I think say with considerable force – that it might well have been that in the course of the experience which Dosen had gained in their service he had obtained knowledge of ancillary secrets connected with the patented invention which were not in fact included in the invention but which would be of very great service to any person who proceeded to make the machine to which the invention related. Mr. Trevor Watson, in his admirable argument, satisfied me that it was at least probable or possible that such a set of circumstances might have existed; but, having regard to what had taken place and to the express request on the part of the respondents that they should be informed if the patented machine did in fact cover the very matter the disclosure of which was made the subject of complaints, it appears to me that there was thrown upon the appellants the burden of showing that there were in fact these outside matters which were not included in the specification, that they had been or there was reasonable ground for believing they might be disclosed, and that their disclosure would be a wrong against which they were entitled to be protected by injunction. Nothing of the kind occurred. There was no attempt whatever made at the trial to distinguish between those parts of the machine which were outside the patent and those which were within. At no time was evidence led for the purpose of showing the added matter which Dosen might have learned in his former master’s service and which he might disclose to the detriment of the present appellants’.

Judges:

Lord Buckmaster

Citations:

[1964] 1 WLR 109, [1963] 3 All ER 416

Jurisdiction:

England and Wales

Citing:

Appeal from – O Mustad and Son v Dosen and Another CA 1923
There had been a discussion as to what a trade secret might be:- ‘The learned Judge discussed with the Jury what constitutes a trade secret, but of course it is no good discussing what constitutes a trade secret if the person who is the owner of the . .

Cited by:

Cited – Douglas etc v Hello! Ltd etc ChD 11-Apr-2003
The claimants were to be married. They sold the rights to publish photographs of their wedding, but various of the defendants took and published unauthorised pictures.
Held: The claimants had gone to lengths to ensure the commercial value of . .
Approved – Attorney-General v Guardian Newspapers Ltd (No 2) (‘Spycatcher’) HL 13-Oct-1988
Loss of Confidentiality Protection – public domain
A retired secret service employee sought to publish his memoirs from Australia. The British government sought to restrain publication there, and the defendants sought to report those proceedings, which would involve publication of the allegations . .
Cited – EPI Environmental Technologies Inc and Another v Symphony Plastic Technologies Plc and Another ChD 21-Dec-2004
The claimant had developed an additive which would assist in making plastic bags bio-degradable. They alleged that, in breach of confidentiality agreements, the defendants had copied the product. The defendants said the confidentiality agreement was . .
Cited – Douglas and others v Hello! Ltd and others (No 3) CA 18-May-2005
The principal claimants sold the rights to take photographs of their wedding to a co-claimant magazine (OK). Persons acting on behalf of the defendants took unauthorised photographs which the defendants published. The claimants had retained joint . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 November 2022; Ref: scu.181409

Harrods Limited v Harrods (Buenos Aires) Ltd and Harrods (South America) Ltd: CA 21 May 1998

Judges:

Nourse, Potter, Mummery LJJ

Citations:

[1998] EWCA Civ 874

Jurisdiction:

England and Wales

Citing:

Appeal from – Harrods Limited v Harrods (Buenos Aires) Ltd and Harrods (South America) Ltd ChD 15-Jan-1997
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Company

Updated: 19 November 2022; Ref: scu.144353

Willow (Trade Mark: Opposition): IPO 26 Jul 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 – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Average Customer – Purchasing process

Judges:

Ms S Wilson

Citations:

[2019] UKIntelP o43719

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 November 2022; Ref: scu.661019

UKBD (Trade Mark: Opposition): IPO 26 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 – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Distinctive Character of Earlier Trade Mark – Any unusual issues
Procedural Issues – Costs – litigants in person, actual, security for
Procedural Issues – Pleadings, Strike out, Estoppel

Judges:

Mrs T Perks

Citations:

[2019] UKIntelP o43919

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 November 2022; Ref: scu.661014

No Gunk No Junk (Trade Mark: Opposition): IPO 13 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 – 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 – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of

Judges:

Ms A Skilton

Citations:

[2019] UKIntelP o47319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 November 2022; Ref: scu.661049

Hacker (Trade Mark: Revocation): IPO 16 Aug 2019

Revocation / Proof of Use – Dates – genuine use
Revocation / Proof of Use – Partial revocation – arriving at a fair description of goods / services
Revocation / Proof of Use – Partial revocation – redrafting specifications

Judges:

Mr M Williams

Citations:

[2019] UKIntelP o48119

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 November 2022; Ref: scu.661037

Pfizer Ltd v F Hoffmann-La Roche Ag and Another: PatC 20 Jun 2019

Claim by Pfizer for Arrow declarations in relation to its proposed launch in Europe, including the UK, of a biosimilar monoclonal antibody drug called bevacizumab, for the treatment of various cancers in combination with other drugs.

Judges:

Mr Justice Birss

Citations:

[2019] EWHC 1520 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 November 2022; Ref: scu.649987

Master Data Center Inc v The Comptroller General of Patents (Costs): PatC 11 Mar 2020

Citations:

[2020] EWHC 601 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

See Also – Master Data Center Inc v The Comptroller General of Patents PatC 11-Mar-2020
Supplementary Protection Certificates . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Costs

Updated: 19 November 2022; Ref: scu.649971

Datacard Corporation v Eagle Technologies Ltd: PatC 14 Feb 2011

In the context of patents, Arnold J accepted that ‘extent of protection’ was purely a question of the scope of the claims under Article 69(1) of the EPC, and that was a different concept to ‘the rights conferred’ under national UK law.

Judges:

Arnold J

Citations:

[2012] Bus LR 160, [2011] EWHC 244 (Pat), [2011] RPC 17

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – Samsung Electronics (UK) Ltd and Another v Apple Inc ChD 4-Apr-2012
The parties were engaged in worldwide litigation disputing an alleged infringement of Apple’s registered design by Samsung’s Galaxy tablet computer. In this case, Samsung sought a declaration of non-infringement. Apple counterclaimed, alleging . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 November 2022; Ref: scu.428704

Smith v Day: 1882

Citations:

(1882) 21 Ch D 421

Jurisdiction:

England and Wales

Cited by:

Cited – Les Laboratoires Servier and Another v Apotex Inc and others ChD 9-Oct-2008
The claimant had alleged that the defendant was producing generic drugs which infringed its rights in a new drug. The patentee had given a cross-undertaking in damages, but the patent was later ruled invalid. The court had to assess the damages to . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 November 2022; Ref: scu.324698

W L Gore and Associates Gmbh v Geox Spa: PatC 7 Oct 2008

The claimants sought a declaration of non-infringement of four patents relating to waterproof fabrics for shoes.
Held: The patents could not be set as invalid for obviousness.

Judges:

Floyd J

Citations:

[2008] EWHC 2311 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd CA 1971
Degree of Novelty Required before patent grant
The court set out the test for novelty required to be established before a patent could properly be granted: ‘To determine whether a patentee’s claim has been anticipated by an earlier publication it is necessary to compare the earlier publication . .
Cited – 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 . .
Cited – Catnic Components Ltd and Another v Hill and Smith Ltd HL 1982
The plaintiffs had been established as market leaders with their patented construction, had ample production capacity and stocks, but had never granted any licence under their patent. The patent was for a novel type of galvanised steel lintel, which . .
Cited – Improver Corporation v Remington Consumer Products Ltd ChD 1989
Protocol Tests For Onbviousness Set Out
The invention was based upon the discovery that an arcuate rod with slits, when rotated at high speed, would take the hair off the skin by means of the opening and closing of the slits. The claim was to a rod in the form of an ‘helical spring’ but . .
Cited – Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others etc HL 21-Oct-2004
The claims arose in connection with the validity and alleged infringement of a European Patent on erythropoietin (‘EPO’).
Held: ‘Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance . .
Cited – Rockwater Ltd v Technip France Sa (Formerly Coflexip Sa), Technip Offshore UK Limited (Formerly Coflexip Stena Offshore Limited) CA 1-Apr-2004
. .
Cited – Halliburton Energy Services, Inc v Smith International (North Sea) Ltd and others PatC 21-Jul-2005
A claim was made for a method of design in which certain calculations were to be carried out recursively, modifying the results each time until a particular criterion was satisfied. Though the method was susceptible of solution by computer, but the . .
Cited – Comsafe Engineering v Emtunga (UK) Limited 1999
The court interpreted the phrase ‘full particulars of the product or process alleged to infringe’ in the context of the disclosure-avoidance provision in the former Order 104 rule 11 as ‘particulars sufficient to enable all issues of infringement to . .
Cited – H Lundbeck A/S v Generics (UK) Ltd and others CA 10-Apr-2008
The court heard an appeal against a finding that a patent for a chemical compound was invalid for insufficiency.
Held: The appeal succeeded.
Enough information to ‘work the invention’ meant in order to make the product. . .
Cited – Pozzoli Spa v BDMO Sa and Another CA 22-Jun-2007
The patentee had invented a method for storing CDs. The patentee sought leave to appeal a finding that its patent was invalid, and if successful, to appeal a finding that the defendant’s apparatus was not infringing.
Held: The application for . .
Cited – Rockwater Ltd v Technip France Sa (Formerly Coflexip Sa), Technip Offshore UK Limited (Formerly Coflexip Stena Offshore Limited) CA 1-Apr-2004
. .
Cited – Pozzoli Spa v BDMO Sa and others PatC 21-Jun-2006
. .
Cited – Generics (UK) Ltd and others v H Lundbeck A/S PatC 4-May-2007
Kitchin J said: ‘The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 November 2022; Ref: scu.276712

Armour Group Plc v Leisuretech Electronics Pty Ltd: PatC 14 Nov 2008

Judges:

Arnold J

Citations:

[2008] EWHC 2797 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Brugger v Medic-Aid Ltd (No 2) ChD 1996
B alleged infringement by M of its patented nebulizer. M replied saying that the claims failed for obviousness. Features of the nebulizer were admittedly old and well known, but the claimant asserted a new mechanism which reduced the size of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 November 2022; Ref: scu.278786

Zipher Ltd v Markem Systems Ltd and Another: PatC 1 Sep 2008

This judgment deals with the issue of the scope of the injunction to which Markem should be entitled in support of the undertaking given to HHJ Fysh QC.

Judges:

Floyd J

Citations:

[2008] EWHC 2078 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Markem Corporation and Another v Zipher Ltd CA 22-Mar-2005
A patent which was applied for as a result of a breach of confidence may be capable of giving the victim of the breach the benefit of an interest in the patent. In the UK at least the basis of an entitlement claim must be a breach of the claimant’s . .
See Also – Zipher Ltd v Markem Systems Ltd PatC 16-Jan-2007
. .
See Also – Zipher Ltd v Markem Systems Ltd and Another PatC 25-Jun-2008
. .

Cited by:

Appeal From – Zipher Ltd v Markem Systems Ltd and Another CA 10-Feb-2009
In earlier proceedings, Zipher had given an undertaking not to pursue their claim over and above a certain level. The defendant now sought to hold them to that undertaking. The claimants replied that the undertaking had lapsed when that action had . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice, Costs

Updated: 19 November 2022; Ref: scu.273175

Magical Marking Ltd and Another v Phillips and others: PatC 7 Jul 2008

Trial is of the claim arising out of what are alleged to be breaches of fiduciary duty by a former director of the claimant. What is said is that in breach of his duties to Magical Marking, H acquired a complete electronic copy of the designs, business documentation and customer list of Magical Marking which he then used to establish a rival business.

Citations:

[2008] EWHC 1640 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 November 2022; Ref: scu.273172

Lambretta Clothing Company Limited v Teddy Smith (UK) Limited, Next Retail Plc: CA 15 Jul 2004

The claimant settled upon a combination of colours to identify its goods. It then began an action against the defendants claiming unregistered design right and artistic copyright in the combination of colours.
Held: The mere combination of colours could not be protected in this way. Unregsistered design right did not exist in the juxtaposition of colours alone. The Mark Wilkinson Furniture Case did not say such an arrangement must have either design right or artistic copyright protection. The Court must look to the application of the words in each case to see whether there was a gap. Furthermore the choice of colours was commonplace, which did not mean that the entire design would be.

Judges:

Lord Justice Mance Lord Justice Sedley Lord Justice Jacob

Citations:

Times 28-Sep-2004, [2004] EWCA Civ 886, [2005] RPC 6

Links:

Bailii

Statutes:

Copyrights Designs and patents Act 1988 213(2)

Jurisdiction:

England and Wales

Citing:

Cited – Mark Wilkinson Furniture Ltd v Woodcraft Designs (Radcliffe) Ltd ChD 13-Oct-1997
Design right is limited to shape excluding any surface decoration. There is no infringement of design right by copying only the surface decoration. ‘The design in which the plaintiff primarily claims design right is now pleaded as ‘the whole . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 November 2022; Ref: scu.198843

GE Trade Mark: HL 1973

A trade mark must be ‘distinctive’, it must be recognisable by a buyer of goods to which it has been affixed as indicating that they are of the same origin as other goods which bear the mark and whose quality has engendered goodwill. Trade Marks legislation must be understood in its historical context.
To understand the words ‘would be disentitled to protection in a court of justice’ in section 6, the court had to return to the practice of the Court of Chancery before the 1875 Act. Legal recognition of trade marks as a species of incorporeal property was first accorded by the Court of Chancery in the first half of the 19th century, and established that there was no need to prove an intent to deceive, that the right was part of the goodwill of a business, and had no existence outside it, that remedies were discretionary in equity, and the that same mark might properly be used by different traders in different locations.
Where goods would be sold to the general public for consumption, a judge is entitled to form his own opinion on the jury question of the likelihood of deception or confusion by the use of the trade mark.’
The question posed by the section is ‘a hypothetical question which first arises on an original application for registration. It looks to the future use of the matter as a trade mark and embraces any normal and fair use which as registered proprietor the applicant would be entitled to make of it in the ordinary course of trade in respect of goods of the class for which it is registered.’

Judges:

Lord Diplock

Citations:

[1973] RPC 297

Statutes:

Trade Marks Act 1875

Jurisdiction:

England and Wales

Cited by:

Cited – Scandecor Developments AB v Scandecor Marketing AV and Others and One Other Action HL 4-Apr-2001
A business had grown, but the two founders split, and set up separate business. There was no agreement as to the use of the trading names and trade marks. The original law of Trade Marks prohibited bare exclusive licenses, licences excluding the . .
Cited – Cussons (New Zealand) Pty Limited v Unilever Plc and others PC 20-Nov-1997
(New Zealand) The defendants appealed against an interlocutory injunction restraining them from use of a trade mark which was said to be infringing. The mark had not been used and was vulnerable to being removed, and Cussons applied for the removal . .
Cited – Hunt-Wesson Inc v Chocosuise CA 2-Jul-1998
The applicant had sought registration of the ‘Swiss Miss’ mark. Objection was raised on the ground that it was misleading in suggesting any connection with Switzerland.
Held: The appeal succeeded as to some uses, but not in general. The court . .
Cited – Premier Luggage and Bags Ltd v The Premier Company (UK) Ltd and Another CA 26-Mar-2002
The owner of a registered trade mark ‘Premier’ sued for swing tags which carried the defendant’s full name ‘The Premier Company (UK) Ltd.’.
Held: A trade mark use can fall within the scope of the Art 6.1 defence. There there was no passing off . .
Cited – Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik v Anheuser-Busch CA 7-Feb-2000
The registration of two trade marks (‘Budweiser’) with the identical names was against the Act since it would appear to encourage the very confusion the Act sought to avoid. Nevertheless, where there was genuine honest concurrent use, that use might . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 November 2022; Ref: scu.181225

Stena Rederi Aktiebolag and Another v Irish Ferries Ltd: CA 6 Feb 2003

A ferry plied its way between Dublin and Holyhead, coming into English territorial waters three or four times a day, and for up to three hours on each occasion. The claimants asserted that the construction of the hull infringed its patent.
Held: The Act specifically excluded liability where an infringing ship or other item came into the jurisdiction only accidentally or temporarily. The word ‘temporarily’ should be construed to mean ‘transient’ or ‘for a limited period of time’. The fact that visits were regular or frequent was to no effect, provided they remained temporary. Counsel ‘had some difficulty in suggesting just where the line might be drawn. I am not at all surprised. There is no line to be drawn. The matter cannot depend on something as indefinite and imprecise as frequency. ‘

Judges:

Aldous, Chadwick, Munby LJJ

Citations:

Times 10-Feb-2003, [2003] EWCA Civ 66

Links:

Bailii

Statutes:

Patents Act 1977 60(5)(d)

Jurisdiction:

England and Wales

Citing:

Appeal from – Aktiebolag and Another v Irish Ferries Ltd ChD 25-Apr-2002
Patents – territoriality. . .
Cited – British Road Services v Wurzal 1971
A trailer used to transport goods between this country and continental Europe as found to be without a plate as required by regulation 3. The defence claimed the trailer was exempted by Schedule 2 of the regulations as it fell within the class of . .
Cited – Catnic Components Ltd and Another v Hill and Smith Ltd HL 1982
The plaintiffs had been established as market leaders with their patented construction, had ample production capacity and stocks, but had never granted any licence under their patent. The patent was for a novel type of galvanised steel lintel, which . .

Cited by:

Cited – Kastor Navigation Co Ltd and Another v AGF M A T and others ComC 17-Mar-2003
The court was able to make costs orders which differentiated between different stages and elements of a case. This might well result, as here, in a situation of a succesful claimant being ordered to pay 80% of the defendant’s costs, because of costs . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 November 2022; Ref: scu.179025

Original Beauty Technology Company Ltd and Others v G4K Fashion Ltd and Others (Costs): ChD 28 Apr 2021

Does the existence of a genuine Part 36 offer prevent the Court from dealing with the costs of a liability trial prior to quantum being determined even when the ‘losing’ party’s conduct has been egregious?

Judges:

David Stone (sitting as a Deputy Judge of the High Court)

Citations:

[2021] EWHC 954 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property, Litigation Practice

Updated: 18 November 2022; Ref: scu.662216

Cotswold Botanicals (Trade Mark: Opposition): IPO 22 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 – Treatment of descriptive / allusive elements
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 – Standard of proof (evidential issues)

Judges:

Mr G Salthouse

Citations:

[2019] UKIntelP o49119

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 17 November 2022; Ref: scu.661029

The Trillionaire Club (Trade Mark: Opposition): IPO 25 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 – Importance of first element

Judges:

Ms J Ralph

Citations:

[2019] UKIntelP o43019

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 17 November 2022; Ref: scu.661013

Pet Technology Store Limited (Patent): IPO 27 Oct 2014

The application relates to a system for identifying lost or stolen animals and reuniting them with their owners.
The hearing officer decided that the claims as most recently amended included added matter that was not present in the application as filed.
He also applied the Windsurfing/Pozzoli test and concluded that the claims were inventive over the cited prior art. This remained true even when the added subject matter was omitted.
Finally, the Hearing Officer applied the Aerotel/Macrossan test and identified that the contribution made by the invention resided in processing data such that only unique identification numbers were provided to hand-held scanners with owner personal data being held elsewhere. As this was done in order to conform with data protection legislation the hearing officer concluded that the contribution fell solely within excluded matter and did not have a relevant technical effect. The application was refused as no more than some combination of a method of doing business and a programme for a computer as such.

Citations:

[2014] UKIntelP o46014

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 17 November 2022; Ref: scu.543153

Xtratherm Limited (Patent): IPO 15 Aug 2014

An uncontested application for revocation of the patent on the grounds of lack of novelty, inventive step and added subject matter. The hearing officer found that there was a prima facie case for lack of novelty in claim 1 and ordered the patent be revoked.

Citations:

[2014] UKIntelP o36814

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 17 November 2022; Ref: scu.543146

Michael Oluwaseun Bamidele (Patent): IPO 10 Nov 2014

The invention is concerned with a system for the wireless transmission of audio visual signals from a portable device (such as a smart phone or personal computer) to a television or video projector. The system comprises a transmitter adaptor for encoding and transmitting the signals from the portable device and a receiver adaptor for receiving and decoding the signals. The transmitter receiver may be built into the portable device or connected to the USB port of the portable device. Likewise, the receiver adaptor may be built-in or connected to the transmission port of the television or video projector.
The Hearing Officer found that the claims lacked clarity and, in so far as they could be understood, also lacked novelty and did not involve an inventive step. She refused the application under section 18(3).

Citations:

[2014] UKIntelP o48114

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 17 November 2022; Ref: scu.543158

Vestergaard Frandsen A/S and Others v Bestnet Europe Ltd and Others: CA 25 Apr 2013

Appeal by the defendants from the judgment and order of Arnold J in which he dismissed the defendants’ application to strike out in part the claimants’ Amended Points of Claim in an enquiry as to damages for breach of confidence.

Judges:

Lloyd, Tomlinson, Floyd LJJ

Citations:

[2013] EWCA Civ 428

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – Vestergaard Frandsen A/S and Others v Bestnet Europe Ltd and Others ChD 26-Jun-2009
Arnold J reviewed the authorities and expressed his conclusion that an injunction will not be granted to prevent a future publication of information that has ceased to be confidential. He qualified this statement in relation to information that . .
See Also – Vestergaard Frandsen Sa ( Mvf3 Aps) and Others v Bestnet Europe Ltd and Others CA 20-Apr-2011
The claimants manufactured insecticidal fabrics. They claimed that the defendants had produced their own product using confidential information obtained from their former employees now working for the defendant. The courts had granted injunctions . .

Cited by:

At CA – Vestergaard Frandsen A/S and Others v Bestnet Europe Ltd and Others SC 22-May-2013
The claimant companies appealed against a reversal of their judgment against a former employee that she had misused their confidential trade secrets after leaving their employment. The companies manufactured and supplied bednets designed to prevent . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 November 2022; Ref: scu.472966

Ghias (T/A Griller) v Ikram (T/A The Griller Original): CA 20 Feb 2013

Leave to appeal – findings of trade mark infringement – liability as joint tortfeasor.
Held: Recorder’s judgment faultless – leave refused.

Judges:

Kitchin LJ

Citations:

[2013] EWCA Civ 219

Links:

Bailii

Statutes:

Trade Marks Act 1994 10(2)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 17 November 2022; Ref: scu.472882

Colloseum Holding Ag v Levi Strauss and Co: ECJ 18 Apr 2013

ECJ Trade marks – Regulation (EC) No 40/94 – Article 15(1) – Definition of ‘genuine use’ – Trade mark used only as one element of a composite mark or in conjunction with another mark

Judges:

T von Danwitz, P

Citations:

C-12/12, [2013] EUECJ C-12/12

Links:

Bailii

Statutes:

Regulation (EC) No 40/94 15(1)

Jurisdiction:

European

Intellectual Property

Updated: 17 November 2022; Ref: scu.472718

Martin y Paz Diffusion Sa v David Depuydt: ECJ 18 Apr 2013

ECJ Trade marks – Directive 89/104/EEC – Article 5(1) – Exclusive rights of the trade mark proprietor – Shared use of a trade mark – Consent – Revocation of consent to use a trade mark – Unfair competition

Judges:

Cruz Villalon AG

Citations:

C-661/11, [2013] EUECJ C-661/11

Links:

Bailii

Statutes:

Directive 89/104/EEC 5(1)

Jurisdiction:

European

Cited by:

Opinion – Martin y Paz Diffusion Sa v David Depuydt ECJ 19-Sep-2013
Trade marks – Directive 89/104/EEC – Article 5 – Consent on the part of the proprietor of a trade mark to the use, by a third party, of a sign which is identical with that mark – Consent given in a situation where there is shared use – Possibility . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 November 2022; Ref: scu.472723

Continental Bulldog Club Deutschland Ev v Office For Harmonisation In The Internal Market (Trade Marks And Designs): ECFI 17 Apr 2013

ECFI Community trade mark – Application for Community word mark CONTINENTAL – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009

Judges:

N.J. Forwood, P

Citations:

T-383/10, [2013] EUECJ T-383/10

Links:

Bailii

European, Intellectual Property

Updated: 17 November 2022; Ref: scu.472654