Category: Intellectual Property

Joe Spiteri-Sargent (Patent): IPO 20 Mar 2008

IPO The application concerns an apparatus for converting ‘hydraulic energy’ into kinetic energy. It describes a reciprocating vessel submerged in a tank of water. Various chambers within the vessel rise upwards due to the force of buoyancy, and move the centre of gravity of the whole apparatus to a position on the other side of a frame pivot. This is said to make the apparatus rotate until the buoyant chambers are again at the bottom of the apparatus, and the cycle can be reversed.
The Hearing Officer decided that it was a species of perpetual motion machine, alleged to operate in a manner that is clearly contrary to the law of conservation of energy. In its current form, the Hearing Officer found that the invention was not capable of industrial application, and/or was not disclosed in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art. He accepted that it might be possible to amend the application to describe and claim the apparatus in a way that would overcome these objections, and he allowed a period of one month for the applicant to make such an amendment.

Citations:

[2008] UKIntelP o08608

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 September 2022; Ref: scu.456975

Phonographic Performance Ltd v Reader: ChD 22 Mar 2005

The claimant had in the past obtained an injunction to prevent the defendant broadcasting without their licence musical works belonging to their members at his nightclub. The defendant had obtained a licence, but had not renewed it. The claimants in this action sought additional damages under section 97.
Held: Where the underlying infringement is established to the standard required to support an application to commit for breach of an injunction, then there is no arguable defence to a claim for copyright infringement; and the circumstance that the infringements complained of are committed in breach of a Court Order render either an enquiry as to additional damages or, in a proper case, a summary award of additional damages to the copyright owner. In this case the court awarded as additional damages the costs of the enquiry agents and a sum equal to the unpaid licence fees down to the date of the application to commit.

Judges:

Pumfrey J

Citations:

[2005] EWHC 416 (Ch), [2005] EMLR 26, [2005] FSR 42,

Links:

Bailii

Statutes:

Copyright Designs and Patents Act 1988 97

Jurisdiction:

England and Wales

Citing:

Cited – British Motor Trade Association v Salvadori 1949
The plaintiff was a trade association whose policy was to enforce the fixing of prices of motor cars, at a time when the demand for cars greatly exceeded the supply, so that there were large profits to be made by anyone who could acquire a new car . .
Cited – Morton – Norwich Products v Intercen (No 2) ChD 1981
The plaintiffs had alleged patent infringement and now sought to recover the costs of the action it had had to take for discovery as against HM Customs and Excise, which they said had been necessary to discover the extent of the concealed fraud . .
Cited – Fairclough and Sons v The Manchester Ship Canal Co CA 1897
The court considered the remedies for a contempt of court.
Held: Lord Russell CJ said: ‘We desire to make it clear that in such cases no casual or accidental and unintentional disobedience of an Order would justify either a commitment or . .
Cited – Midland Marts v Hobday ChD 1989
The court considered a claim for costs on an application for committal of the defendant for infringement.
Held: Vinelott J said: ‘I can see no reason in principle why the Court, if satisfied that the facts proved at the hearing of a motion to . .
Cited – Sony Computer Entertainment v Paul Owen ChD 23-Jan-2002
Claim for infringement – sale of chip designed to bypass country code control on the claimant’s gaming machines.
Held: An infringement of copyright committed in breach of an injunction restraining such infringement can found an award of . .
Mentioned – WB v H Bauer Publishing Ltd 2002
. .
Cited – Nottinghamshire Healthcare National Health Service Trust v News Group Newspapers Ltd ChD 14-Mar-2002
The claimant sought additional and punitive damages for infringement of copyright by the defendant.
Held: The section of the 1988 Act should not normally justify an award of purely punitive or exemplary damages. The existence of several . .
Cited – Springsteen v Flute International Ltd and Others PatC 10-Dec-1998
The court awarded andpound;1 per CD produced and not sold, and andpound;5 per CD produced and sold for infringement by pressing CDs of recordings of the claimant artist’s performances. The court considered the personal responsibility of the director . .
Cited – Peninsula Business Services Limited v Citation Plc 2004
The court awarded 100% of a notional licence fee by way of additional statutory damages for copyright infringement. . .

Cited by:

Cited – Phonographic Performance Ltd v Ellis (T/A Bla Bla Bar) CA 18-Dec-2018
Additional infrimgement damages were not a fine.
The Society had succeeded in its claim of copyright infringement. The defendant having continued his breaches, it sought additional damages and committal for contempt. Having granted the committal the trial judge declined to award additional . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contempt of Court, Damages

Updated: 09 September 2022; Ref: scu.263691

Her Majesty’s Stationery Office and Another v Green Amps Ltd: ChD 5 Nov 2007

The claimants alleged breach of Crown Copyright by the defendants. Judgment was sought by default, and they now opposed an application for extension of time to serve proceedings, saying that no arguable defence had been disclosed. A student had used data derived from the claimant’s database of mapping information in work for the claimant.
Held: There was no arguable defence. There was no dispute that the defendant had used the material, and must show some defence recognised by the 1988 Act. The defendant argued that the clamiant was entitled only to recover the costs of reproducing the maps, since the production of the data was part of the claimant’s public task. It argued for fair use since the maps had so far only been used for research and development. That argument failed because the fair dealing requirement required use for a non-commercial purpose.

Judges:

N Strauss QC

Citations:

[2007] EWHC 2755 (Ch)

Links:

Bailii

Statutes:

Copyright, Designs and Patent Act 1988, Re-use of Public Sector Information Regulations 2005

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 September 2022; Ref: scu.261778

Sportswear Spa, Four Marketing Limited v Stonestyle Limited: CA 11 Apr 2006

Trade Marks – Imported goods.

Judges:

Lord Justice Waller Lord Justice Lloyd Lord Justice Longmore

Citations:

[2006] EWCA Civ 380, [2006] UKCLR 893, [2007] FSR 2, [2006] Eu LR 1014, [2006] ECC 27, [2006] ETMR 66

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property, European

Updated: 09 September 2022; Ref: scu.241970

Abernethy v Hutchinson: 17 Jun 1825

An application was made to restrain the Defendants from publishing, in ‘The Lancet,’ Mr Abernethy’s Lectures, which had been delivered extemporally. Lord Eldon, at first, refused the application; but afterward granted an injunction, in the ground that there was an implied contract between him and the parties who attended his Lectures, that they should not publish them.

Judges:

Lord Eldon LC

Citations:

(1825) 1 HandTw 28, [1825] EngR 653, (1824-1825) 1 H and Tw 28, (1825) 47 ER 1313

Links:

Commonlii

Jurisdiction:

England and Wales

Cited by:

Cited – British Steel Corporation v Granada Television Ltd HL 7-May-1980
The defendant had broadcast a TV programme using material confidential to the plaintiff, who now sought disclosure of the identity of the presumed thief.
Held: (Lord Salmon dissenting) The courts have never recognised a public interest right . .
Cited – Prince Albert v Strange ChD 8-Feb-1849
The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
Held: . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 09 September 2022; Ref: scu.193360

Wiseman v George Weidenfeld and Nicholson Ltd: ChD 1985

A play called The English Way of Doing Things was written by the second defendant, William Donaldson, who based it on his novel of the same name. Donaldson was an established novelist but had never written a play. The idea for transforming the novel into a play came from the plaintiff, Wiseman, an aspiring stage producer, who provided Donaldson with advice and criticism during the writing of the play and who claimed to be a joint author.
Held: Wiseman had written no part of the play.
Considering whether the contribution Wiseman had actually made qualified him as a joint author. It did not: ‘I have said that Mr. Donaldson quite frankly accepted that he had not had great experience in the field of the theatre. He made it quite plain that, in writing this play, he was indebted to Mr. Wiseman not only for many hints of stagecraft, but also for a great deal of constructive criticism. Mr. Wiseman, Mr. Donaldson told me, was a useful critic, able to say pertinent things about how plays should be written; but, says Mr. Donaldson, he certainly did not write the play.’

Judges:

Whitford J

Citations:

[1985] FSR 525

Jurisdiction:

England and Wales

Cited by:

Cited – Martin and Another v Kogan and Others IPEC 22-Nov-2017
The parties disputed whether joint authorship of the screenplay for a film, ‘Florence Foster Jenkins’. The claimant now sought a declaration of sole authorship of film screenplay, and the defendant cross-claimed for a declaration of joint . .
Cited – Kogan v Martin and Others CA 9-Oct-2019
Dispute over the authorship of the screenplay of a film.
Held: ‘the judgment cannot stand. The judge has adopted an erroneous approach to the evidence, failed to make important findings of primary fact, failed to take account of material . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 09 September 2022; Ref: scu.644132

Neudorf v Nettwerk: 10 Dec 1999

Supreme Court of British Columbia – There can be no joint authorship in the absence of a common intention to that effect.
Cohen J said: ‘In the result I find that the test for joint authorship that should be applied to the facts in the instant case is as follows:
i) Did the plaintiff contribute significant original expression to the songs? If yes,
ii) Did each of the plaintiff and Ms McLachlan intend that their contributions be merged into a unitary whole? If yes,
(iii) Did each of the [joint authors] intend the other to be a joint author of the song?’

Judges:

Cohen J

Citations:

1999 CanLII 7014 (BC SC), [2000] RPC 935, [1999] RPC 935

Links:

Canlii

Jurisdiction:

Canada

Citing:

Cited – Levy v Rutley CCP 1871
A claim of joint authorship was made in a play entitled The King’s Wager, or The Camp, the Cottage and the Court. The play had been written by a Mr Wilks, to whose work the plaintiff, and others at the plaintiff’s suggestion, had added a scene and a . .

Cited by:

Cited – Kogan v Martin and Others CA 9-Oct-2019
Dispute over the authorship of the screenplay of a film.
Held: ‘the judgment cannot stand. The judge has adopted an erroneous approach to the evidence, failed to make important findings of primary fact, failed to take account of material . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 09 September 2022; Ref: scu.644133

Louis Vuitton Malletier v OHMI – Nanunana (Representation D’Un Motif A Damier Gris): ECFI 21 Apr 2015

ECJ Judgment – Community trade mark – Invalidity proceedings – Community figurative mark representing a grey chequerboard pattern – Absolute ground for refusal – No distinctive character – No distinctive character acquired through use – Article 7(1)(b) and Article 7(3) of Regulation (EC) No 207/2009 – Article 52(1) and (2) of Regulation No 207/2009

Judges:

M.E. Martins Ribeiro (Rapporteur), P

Citations:

T-360/12, [2015] EUECJ T-360/12, ECLI:EU:T:2015:214

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 08 September 2022; Ref: scu.545881

Louis Vuitton Malletier v OHMI – Nanunana (Brown And Beige): ECFI 21 Apr 2015

ECJ Judgment – Community trade mark – Invalidity proceedings – Community figurative mark representing a brown and beige chequerboard pattern – Absolute ground for refusal – No distinctive character – No distinctive character acquired through use – Article 7(1)(b) and Article 7(3) of Regulation (EC) No 207/2009 – Article 52(1) and (2) of Regulation No 207/2009

Citations:

T-359/12, [2015] EUECJ T-359/12, ECLI:EU:T:2015:215

Links:

Bailii

Statutes:

Regulation No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 08 September 2022; Ref: scu.545880

Pro-Aqua International v OHMIi – Rexair (Wet Dust Can’t Fly): ECFI 22 Jan 2015

(Judgment) Community trade mark – Invalidity proceedings – Community word mark WET DUST CAN’T FLY – Absolute ground for refusal – Lack of distinctive character – Descriptive character – Article 7(1)(b) and (c) of Regulation (EC) No 207/2009

Judges:

M. van der Woude, P

Citations:

T-133/13, [2015] EUECJ T-133/13

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 7(1)(b)

Jurisdiction:

European

Intellectual Property

Updated: 08 September 2022; Ref: scu.541740

Brighton and Another v Jones: ChD 18 May 2004

The claimant was the director of a play. The defendant had written the entirety of the play first presented at rehearsals, although during rehearsals the claimant suggested changes. The parties disputed the copyright and other rights in a stage play, ‘Stones in his Pockets’.
Held: In substance the claim failed, the rights in the play being the sole property of the first defendant.
The claimant was not a joint author because (i) even where changes were made at the instigation of the claimant, the defendant was responsible for deciding what the new words would be, (ii) the changes were not significant to the plot, (iii) the contributions were only to interpretation and presentation of the play, not to creating the play itself, (iv) the defendant was in ultimate charge of words to be used in the play and (v) the director did no more than the actors in making the script better in the course of rehearsal.

Judges:

Park J

Citations:

[2004] EWHC 1157 (Ch), [2005] FSR 16

Links:

Bailii

Statutes:

Copyright, Designs and Patents Act 1988

Jurisdiction:

England and Wales

Cited by:

Cited – Kogan v Martin and Others CA 9-Oct-2019
Dispute over the authorship of the screenplay of a film.
Held: ‘the judgment cannot stand. The judge has adopted an erroneous approach to the evidence, failed to make important findings of primary fact, failed to take account of material . .
Cited – Martin and Another v Kogan and Others IPEC 22-Nov-2017
The parties disputed whether joint authorship of the screenplay for a film, ‘Florence Foster Jenkins’. The claimant now sought a declaration of sole authorship of film screenplay, and the defendant cross-claimed for a declaration of joint . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 08 September 2022; Ref: scu.539772

Novomatic v OHMI – Simba Toys (African Simba): ECFI 22 Jan 2015

ECJ (Judgment) Community trade mark – Opposition proceedings – Community trade mark AFRICAN SIMBA – Earlier national figurative mark Simba – Relative ground for refusal – Genuine use of the earlier mark – Article 42, paragraphs 2 and 3 of Regulation (EC) No 207 / 2009 – Obligation to state reasons – Article 75 of Regulation No 207/2009 – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation No 207/2009

Judges:

A. Dittrich, P

Citations:

T-172/13, [2015] EUECJ T-172/13

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 08 September 2022; Ref: scu.541738

Rockwell Electronics Commerce Technologies LLC (Patent): IPO 19 Mar 2008

The application relates to a method of compiling performance reports in a contact centre serving clients through the internet. Transactions passing through the internet are for the most part asynchronous in that the data is created first and then transmitted. A transaction involving an email exchange between a client and a contact centre agent may therefore take place over many hours or even days although the actual transmission of the data for each email is virtually instantaneous. It is therefore hard to determine how long an internet transaction has taken and the amount of effective effort expended by the agent in handling that transaction.
The invention relates to a way of measuring an agent’s efforts when handling asynchronous transactions with clients through the Internet which takes account of the type and content of each transmission within that transaction. This information is used to compile a performance report which can be used to evaluate the performance and quality of service provided by the agent. The hearing officer applied the four part test set out in the Aerotel and Macrossan judgment, found the invention to be excluded as method for doing business and a computer program, and refused the application.

Citations:

[2008] UKIntelP o08508

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 08 September 2022; Ref: scu.456979

Reflex Modulation Limited and Alteristic Instruments Limited (Patent): IPO 19 Mar 2008

The dispute over ownership revolved around the validity of an assignment between the parties. The claimant made allegations that the assignment under-valued the patent and that in executing it, a director who was also a shareholder had acted in breach of his fiduciary duty and contrary to the terms of a will under which he had been left shares in trust for the benefit of third parties. A further factor was the existence of parallel proceedings in the court against the claimant for infringement of the patent. In a statement of reasons for a decision to decline to deal given at the hearing, the hearing officer explained that although certain of the questions of law and fact (including some that would require resolution by cross-examination) were within the ambit of what the comptroller would typically handle, the allegations of improper conduct bordering on the fraudulent involved complex questions not normally dealt with by the comptroller, and this coupled with the existence of proceedings already underway in the court, made this a question that would more properly be determined by the court.

Judges:

Mr A C Howard

Citations:

[2008] UKIntelP o08408

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 08 September 2022; Ref: scu.456978

Infopaq International A/S v Danske Dagblades Forening: ECJ 17 Jan 2012

ECJ Copyright – Information society – Directive 2001/29/EC – Article 5(1) and (5) – Literary and artistic works – Reproduction of short extracts of literary works – Newspaper articles – Temporary and transient reproductions – Technological process consisting in scanning of articles followed by conversion into text file, electronic processing of the reproduction and storage of part of that reproduction – Acts of temporary reproduction which form an integral and essential part of such a technological process – Purpose of those acts being the lawful use of a work or protected subject-matter – Independent economic significance of those acts

Judges:

K Lenaerts, P

Citations:

C-302/10, [2012] EUECJ C-302/10, ECLI:EU:C:2012:16

Links:

Bailii

Statutes:

Directive 2001/29/EC 5(1)

Jurisdiction:

European

Citing:

Opinion – Infopaq International v Danske Dagblades Forening ECJ 12-Feb-2009
ECJ (Opinion) Directive 2001/29 – Articles 2 and 5 – Harmonisation of certain aspects of copyright and related rights in the information society – Reproduction right – Exceptions and limitations – Temporary acts . .
Judgment – Infopaq International v Danske Dagblades Forening ECJ 17-Jul-2009
ECJ Copyright Information society – Directive 2001/29/EC Articles 2 and 5 – Literary and artistic works – Concept of ‘reproduction’ Reproduction ‘in part’ Reproduction of short extracts of literary works – . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property, Media

Updated: 08 September 2022; Ref: scu.472727

Bongrain v OHMI – Apetito (Apetito) (Intellectual Property): ECFI 4 May 2011

ECFI Community trade mark – Opposition proceedings – Application for the Community word mark APETITO – Earlier Community word mark apetito – Relative ground for refusal – Likelihood of confusion – Similarity of the goods – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009).

Citations:

T-129/09, [2011] EUECJ T-129/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 08 September 2022; Ref: scu.434820

Levy v Rutley: CCP 1871

A claim of joint authorship was made in a play entitled The King’s Wager, or The Camp, the Cottage and the Court. The play had been written by a Mr Wilks, to whose work the plaintiff, and others at the plaintiff’s suggestion, had added a scene and a few other alterations and additions. The plaintiff claimed that he was joint author of the play. The statute under which the case was decided, the 1842 Act, contained no concept of joint authorship.
Held: The claim for joint authorship was rejected. There can be no finding of joint authorship in a copyright work in the absence of a common intention to that effect.
Keating J said: ‘Could the additions so made constitute him a joint author with Wilks of the whole piece? There may, no doubt, be a plurality of authors: the statute, in s.1, dealing with the duration of copyright, speaks of ‘the author or authors, or the survivor of the authors.’ But I fail to discover any evidence that there was any co-operation of the two in the design of this piece, or in its execution, or in any improvements either in the plot or the general structure. All the plaintiff claims to have done is to vary some of the dialogue, so as to make it more suitable for his company or for his audience. If the plaintiff and the author had agreed together to rearrange the plot, and so to produce a more attractive piece out of the original materials, possibly that might have made them joint authors of the whole. So, if two persons undertake jointly to write a play, agreeing in the general outline and design, and sharing the labour of working it out, each would be contributing to the whole production, and they might be said to be joint authors of it. But, to constitute joint authorship, there must be a common design.’
Montague Smith J distinguished the circumstance in which alterations are made to a work which will not lead to joint authorship of the original work from a true collaboration which might result in joint authorship: ‘It is, no doubt, difficult to draw the line: but it never could be suggested that, when an author submits his manuscript to a friend, and the friend makes alterations and improvements, the latter would thereby become a joint author of the work. If, when the piece was brought to the plaintiff, he had said to Wilks, ‘This thing requires to be remodeled, and you and I will do it together,’ and Wilks had assented, possibly a case of joint authorship might have been set up. But the evidence here falls very short of that.’

Judges:

Keating J, Byles and Montague Smith JJ

Citations:

(1871) LR 6 CP 523

Statutes:

Literary Copyright Act 1842

Jurisdiction:

England and Wales

Cited by:

Cited – Hodgens v Beckingham CA 19-Feb-2003
The defendant appealed a finding of infringement in a music copyright work, ‘Young at Heart’, based on a claim of joint authorship. The claimant had delayed his claim for many years, but now sought only rights to future royalties.
Held: The . .
Still Good law – Martin and Another v Kogan and Others IPEC 22-Nov-2017
The parties disputed whether joint authorship of the screenplay for a film, ‘Florence Foster Jenkins’. The claimant now sought a declaration of sole authorship of film screenplay, and the defendant cross-claimed for a declaration of joint . .
Cited – Kogan v Martin and Others CA 9-Oct-2019
Dispute over the authorship of the screenplay of a film.
Held: ‘the judgment cannot stand. The judge has adopted an erroneous approach to the evidence, failed to make important findings of primary fact, failed to take account of material . .
Cited – Neudorf v Nettwerk 10-Dec-1999
Supreme Court of British Columbia – There can be no joint authorship in the absence of a common intention to that effect.
Cohen J said: ‘In the result I find that the test for joint authorship that should be applied to the facts in the instant . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 07 September 2022; Ref: scu.266724

Tate v Thomas: ChD 1921

Mr Peterman commissioned the plaintiff to write the music of a play and it was agreed that two others should write the libretto. This was done. Peterman devised the name of the play and the leading characters; he arranged the scenic effects and supplied certain catch lines in the dialogue. He claimed all this entitled him to be a joint author.
Held: It is not enough to claim joint authorship in a play that a contributor suggested a comic routine or a plot. The scenic effects were not in themselves subject to copyright protection under the 1911 Act, and therefore to be disregarded, and his other contributions were too insignificant to make him a joint author.

Judges:

Eve J

Citations:

[1921] 1 Ch 503

Statutes:

Copyright Act 1911

Jurisdiction:

England and Wales

Cited by:

Cited – Robin Ray v Classic FM Plc PatC 18-Mar-1998
Contractor and Client Copyrights
The plaintiff had contributed a design for a system of classifying and selecting tracks to be played on a radio station. He did so under a consultancy contract.
Held: A Joint authorship claim required that the contributor had made some direct . .
Cited – Kogan v Martin and Others CA 9-Oct-2019
Dispute over the authorship of the screenplay of a film.
Held: ‘the judgment cannot stand. The judge has adopted an erroneous approach to the evidence, failed to make important findings of primary fact, failed to take account of material . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 07 September 2022; Ref: scu.188596

Hodgens v Beckingham: CA 19 Feb 2003

The defendant appealed a finding of infringement in a music copyright work, ‘Young at Heart’, based on a claim of joint authorship. The claimant had delayed his claim for many years, but now sought only rights to future royalties.
Held: The defendant’s allegation of an estoppel against the claimant failed. The test for a joint authorship is not as to the intention to create a joint copyright, but as to the work itself. The judge had been right to confine his consideration to the language of section 11(3) and not to look beyond the section into the uncertain realms of policy.

Judges:

Lord Justice Laws Lord Justice Jonathan Parker Lord Justice Ward

Citations:

[2003] EWCA Civ 143, [2003] EMLR 18

Links:

Bailii

Statutes:

Copyright Act 1956 11(3)

Jurisdiction:

England and Wales

Citing:

Appeal from – Beckingham v Hodgens ChD 2002
Copyright in music – custom amd practice within the industry. . .
Restated – Taylors Fashions Ltd v Liverpool Victoria Trustees Co Ltd ChD 1981
The fundamental principle that equity is concerned to prevent unconscionable conduct permeates all the elements of the doctrine of estoppel. In the light of the more recent cases, the principle ‘requires a very much broader approach which is . .
Leave to appeal – Beckingham v Hodgens CA 4-Dec-2002
Renewed application for leave to appeal – refused – appeal against finding on facts. . .
Still Good Law – Darryl Neudorf v Network Expressions 1999
(Supreme Court of British Columbia) The court discussed the test for joint authorship after reviewing authorities in Canada, the US and England and said: ‘In the result I find that the test for joint authorship that should be applied to the facts in . .
Cited – Levy v Rutley CCP 1871
A claim of joint authorship was made in a play entitled The King’s Wager, or The Camp, the Cottage and the Court. The play had been written by a Mr Wilks, to whose work the plaintiff, and others at the plaintiff’s suggestion, had added a scene and a . .
Cited – Hadley v Kemp 1999
Three members of the group Spandau Ballet sought to be treated as joint authors of the songs in which copyright was claimed. The songs had been composed at home by another member of the group who was a keyboard player and singer, but then played and . .
Cited – Godfrey v Lees 1995
The court described the test for joint authorship in a work of music: ‘What the claimant to joint authorship of a work must establish is that he has made a significant and original contribution to the creation of the work and that he has done so . .
Cited – Redwood Music Ltd v Chappell and Co Ltd ChD 1982
It was submitted that an arrangement of an existing musical work only attracted a separate copyright if it involved great skill and labour. After referring to the University of London Press Limited, the court held: ‘That passage was cited with . .
Cited – Gillett v Holt and Another CA 23-Mar-2000
Repeated Assurances Created Equitable Estoppel
Repeated assurances, given over years, that the claimant would acquire an interest in property on the death of the person giving the re-assurance, and upon which the claimant relied to his detriment, could found a claim of equitable estoppel. The . .

Cited by:

Cited – Fisher v Brooker and Another ChD 20-Dec-2006
The claimant said that he had contributed to the copyright in the song ‘A Whiter Shade of Pale’ but had been denied royalties. He had played the organ and particularly the organ solo which had contrbuted significantly to the fame of the record.
Mentioned – Brooker and Another v Fisher CA 4-Apr-2008
The claimant had asserted a joint authorship of the song ‘A Whiter Shade of Pale’ written in the sixties. The defendant appealed saying that the claim had been brought too late, and that the finding ignored practice in the music industry. The . .
Cited – Kogan v Martin and Others CA 9-Oct-2019
Dispute over the authorship of the screenplay of a film.
Held: ‘the judgment cannot stand. The judge has adopted an erroneous approach to the evidence, failed to make important findings of primary fact, failed to take account of material . .
Cited – Martin and Another v Kogan and Others IPEC 22-Nov-2017
The parties disputed whether joint authorship of the screenplay for a film, ‘Florence Foster Jenkins’. The claimant now sought a declaration of sole authorship of film screenplay, and the defendant cross-claimed for a declaration of joint . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 07 September 2022; Ref: scu.179485

Active Media Services Inc v Burmester, Duncker and Joly Gmbh and Co Kg and Others: ComC 9 Feb 2021

This dispute concerns the financing, completion and delivery of an animated Christmas film entitled ‘Elliot: the Littlest Reindeer’

Judges:

Mr Justice Calver

Citations:

[2021] EWHC 232 (Comm)

Links:

Bailii

Jurisdiction:

England and Wales

Media, Contract, Intellectual Property

Updated: 07 September 2022; Ref: scu.658133

Frisdranken Industrie Winters v Red Bull Gmbh: ECJ 14 Apr 2011

ECJ Directive 89/104/EEC – Trade mark – Right of the proprietor of a registered trade mark to oppose the illegal use of its mark – Use of a sign – Definition – Filling cans on behalf of third – Export Products – Likelihood of confusion – Target to take into consideration.

Citations:

C-119/10, [2011] EUECJ C-119/10

Links:

Bailii

Statutes:

Directive 89/104/EEC

Cited by:

See Also – Frisdranken Industrie Winters v Red Bull Gmbh ECJ 15-Dec-2011
ECJ Trade marks – Directive 89/104/EEC – Article 5(1)(b) – Filling of cans already bearing a sign similar to a trade mark – Service provided under an order from and on the instructions of another person – Action . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 07 September 2022; Ref: scu.433392

Safariland v OHMI – Def-Tec Defense Technology (First Defense Aerosol Pepper Projector): ECFI 13 Apr 2011

ECFI Community trade mark – Opposition proceedings – Application for the Community figurative mark FIRST DEFENSE AEROSOL PEPPER PROJECTOR – Relative ground for refusal – Article 8(3) of Regulation (EC) No 207/2009 – Implementation by OHIM of a judgment annulling a decision adopted by one of the OHIM Boards of Appeal – Rights of the defence – Obligation to state reasons – Articles 63(2), 65(6), 75 and 76 of Regulation No 207/2009.

Citations:

T-262/09, [2011] EUECJ T-262/09

Links:

Bailii

European, Intellectual Property

Updated: 07 September 2022; Ref: scu.433401

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 regarding some products of the defendants, but not for later products employing largely independently developed products.

Judges:

Jacob, Jackson LJJ, Sir John Chadwick

Citations:

[2011] EWCA Civ 424

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 . .
Cited – Seager v Copydex Ltd CA 1967
Mr Seager had invented a patented carpet grip which he manufactured and marketed under the trade mark Klent. There were protracted negotiations between Mr Seager and Copydex over a proposal for Copydex to market the Klent. One of the issues in the . .
Cited – LB (Plastics) Ltd v Swish Products Ltd 1979
Judging Copying in Industrial Drawings
The plaintiff alleged breach of copyright by the defendants in copying drawings of plastic drawers.
Held: The use, by an alleged copyist of odd or unusual detail found in the original is often a tell-tale of copying.
Lord Wilberforce said . .
Cited – Billhofer Maschinenfabrik GmbH v TH Dixon and Co Ltd 1990
The plaintiff complained that some engineering information had been taken from their copyright drawings by the defendants.
Held: There had been no infringement of copyright in the drawings.
When considering whether an author’s copyright . .

Cited by:

See Also – 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. . .
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: 07 September 2022; Ref: scu.432925

Caterpillar Logistics Services (UK) Ltd v Huesca De Crean: QBD 2 Dec 2011

The claimant sought an order to prevent the defendant, a former employee, from misusing its confidential information said to be held by her. Her contract contained no post employment restrictions but did seek to control confidential and other information. She had obtained employment with a customer of the claimant, and was said to carry out a similar managerial role in which she would make use of the financial and associated information she carried forward. The order sought was unlimited in time, did not specify what information was to be protected and went beyond any contractual obligation.
Held: The interim injunction was refused. The application gave the appearance of the claimant not intending to take the matter to any final hearing, but rather to resolve the issues on a more comfortable (for it) interim assessment. They had delayed in serving particulars and gave no fixed commitment to service of them. It was an abuse.
The clause on which the claimants based their case was too widely drawn including matters in which no confidence existed, and matters which an employee would carry in her head and be bound to be allowed to use. The order sought was also too widely drawn, in particular in having no time limit. Nor was there any evidence that the defendant had acted with any impropriety.
Tugendhat J discussed whether an employee could be said to be a fiduciary: ‘an employee may be a fiduciary in respect of specific property or confidential information entrusted to her care, even if her level of responsibility in the business is at the most junior level. This step in the argument for CLS is a strong one. I would also accept that there may be cases where an employee is in a relationship with her employer which is analogous to that of a trustee to a beneficiary, a parent to a child, or a solicitor to her client. But that is not the normal relationship between an employee and employer in the business context which was under consideration in all the employment cases referred to above (except Barker which was a case of domestic employment). In the normal employment relationship the balance of power is the opposite of that referred to in the examples given in Erlanger: it is the employer which is the dominant party.’

Judges:

Tugendhat J

Citations:

[2011] EWHC 3154 (QB)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Prince Jefri Bolkiah v KPMG (A Firm) HL 16-Dec-1998
Conflicts of Duty with former Client
The House was asked as to the duties of the respondent accountants (KPMG). KPMG had information confidential to a former client, the appellant, which might be relevant to instructions which they then accepted from the Brunei Investment Agency, of . .
Cited – Printers and Finishers Limited v Holloway 1965
The court considered the questions arising from the use of information acquired by an employee during his employment after that employment had ended, and noted that information the future use of which will not be restrained is information not . .
Cited – Faccenda Chicken Ltd v Fowler CA 1986
Nature of Confidentiality in Information
The appellant plaintiff company had employed the defendant as sales manager. The contract of employment made no provision restricting use of confidential information. He left to set up in competition. The company now sought to prevent him using . .
Cited – Herbert Morris Ltd v Saxelby HL 1916
For a covenant in restraint of trade to be treated as reasonable in the interests of the parties ‘it must afford no more than adequate protection to the benefit of the party in whose favour it is imposed.’ There is a need for the court to consider . .
Cited – Balston Ltd v Headline Filters Ltd and Another 1987
The second defendant, whilst still during his notice period to leave employment by the plaintiff, began to make arrangements to start his own competing business, and solicited future business from a customer of the plaintiff. The plaintiff sought an . .
Cited – Lansing Linde v Kerr CA 1991
Staughton LJ held that ‘trade secrets’ embrace information used in a trade, restricted in its dissemination, and the disclosure of which would be liable to cause real or significant harm to the party claiming confidentiality. He considered the . .
Cited – Mont v Mills 1993
Simon Brown LJ said: ‘I cannot accept that the law’s only concern underlying the doctrine of restraint of trade is to ensure that employees can earn their living . . If this were so, such restraints could always be purchased outright and yet the . .
Cited – Ocular Sciences Ltd v Aspect Vision Care Ltd ChD 11-Nov-1996
The freedom for a claimant in registered design right to frame his claim, as to whether he asserts an infringement of the entire design, or limits it to the section infringed, is important.
Laddie J said: ‘This means that the proprietor can . .
Cited – Roger Bullivant Ltd v Ellis CA 1987
The plaintiffs sought various remedies against an ex-employee who had set up a company in competition with the plaintiffs. One was for breach of confidence in respect of a card index of customer contacts, a copy of which the first defendant had . .
Cited – Frisbee v Campbell CA 14-Oct-2002
The claimant sought an account against her former employee for the disclosures made by her of their activities. The respondent had signed a confidentiality agreement. The respondent counterclaimed for assault. She now appealed from dismissal of her . .
Cited – United Pan-Europe Communications N V v Deutsche Bank Ag CA 19-May-2000
The claimant sought to prevent the misuse of what it said was its confidential information, identifying it by reference to specific documents in which it was said to be recorded.
Held: That was a sufficient description because the defendant . .
Cited – Attorney General v Barker CA 1990
A claim was made for an injunction to enforce an express covenant in a contract of employment by a member of the Royal Household by which he undertook (amongst other things) not to publish any information concerning a member of the family which came . .
Cited – Lock International plc v Beswick ChD 1989
Where the claimant seeks to prevent a former employee using some but not all information obtained during his employment, the employer must be specific as to the range of what is to be protected.
Hoffmann J said: ‘Some employers seem to regard . .
Cited – Littlewoods Organisations Ltd v Harris CA 1977
When construing restrictive covenants in an employment contract, the court should construe the contract in the light of the object and intent of the contract as a whole. It may be read down and need not be read literally. Lord Denning said that it . .
Cited – Erlanger v New Sombrero Phosphate Company HL 31-Jul-1878
Rescission needs Restitutio in Integrum
A syndicate, of which Erlanger (Orse Erlinger) was the head, purchased from an insolvent company an island, said to contain valuable mines of phosphates. Erlanger, who managed the purchase, prepared to get up a company to take over the island and . .
Cited – Meat Corporation of Namibia Ltd v Dawn Meats (UK) Ltd ChD 7-Mar-2011
The parties disputed the expert evidence to be admitted at a forthcoming trial. The claimant opposed the use of a particular expert witness who had had access to its confidential and privileged information and should not be allowed to act for the . .
Cited – Dyson Technology Ltd v Strutt ChD 25-Nov-2005
The claimant sought to restrain the defendant, one of its former engineers from working for a competitor and using the confidential knowledge he had obtained when working for them.
Held: The court set out the difficulties for a leaving . .
Cited – Koch Shipping Inc v Richards Butler (a Firm) CA 22-Jul-2002
The claimants in an arbitration sought orders with regard to a solicitor who had moved to the opponent’s firm of solicitors, but who came with privileged knowledge of the claimant’s business dealings. She offered undertakings, but the claimant . .
Cited – John Zink and Co Limited v Wilkinson CA 1973
Where a party alleged breach of confidence, the pleadings should be sufficiently particular to allow a defendant to know the particular allegations he faced. . .
Cited – American Cyanamid Co v Ethicon Ltd HL 5-Feb-1975
Interim Injunctions in Patents Cases
The plaintiffs brought proceedings for infringement of their patent. The proceedings were defended. The plaintiffs obtained an interim injunction to prevent the defendants infringing their patent, but they now appealed its discharge by the Court of . .
Cited – Lansing Linde v Kerr CA 1991
Staughton LJ held that ‘trade secrets’ embrace information used in a trade, restricted in its dissemination, and the disclosure of which would be liable to cause real or significant harm to the party claiming confidentiality. He considered the . .
Cited – Robert v Momentum Services Ltd CA 11-Feb-2003
The claimant appealed against an order refusing an extension of time for service of her particulars of claim. She had made the application before the period expired.
Held: The rules made a clear distinction between applications made before . .
Cited – Thomas v The Home Office CA 19-Oct-2006
The court was asked the parties agree an extension of time for service of a claim form outside the period specified in r. 7.5. The particulars of claim were served nearly five months late.
Held: An extension of time could be agreed between the . .
Cited – Price v Price (Trading As Poppyland Headware) CA 26-Jun-2003
The claimant sought damages from his wife for personal injuries. He had been late beginning the claim, and it was served without particulars. He then failed to serve the particulars within 14 days. Totty and then Sayers had clarified the procedure . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Employment

Updated: 07 September 2022; Ref: scu.449397

Realchemie Nederland v Bayer Cropscience Ag: ECJ 5 Apr 2011

ECJ (Area Of Freedom, Security And Justice) Jurisdiction and Enforcement – Definition of ‘civil and commercial matters – Recognition and enforcement of a decision imposing a fine calendar – Directive 2004/48/EC – Intellectual property rights – the measures, procedures and remedies in case achievement of such a right – pay the costs in the proceedings for enforcement efforts to recognize and execute decisions to preserve a right of intellectual property.

Citations:

C-406/09, [2011] EUECJ C-406/09

Links:

Bailii

Cited by:

Opinion – Realchemie Nederland v Bayer Cropscience Ag ECJ 18-Oct-2011
ECJ Regulation (EC) No 44/2001 – Jurisdiction and recognition and enforcement of judgments – Definition of ‘civil and commercial matters’ – Recognition and enforcement of an order imposing a fine – Directive . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 06 September 2022; Ref: scu.431963

Boehringer Ingelheim Kg, Boehringer Ingelheim Pharma Gmbh and Co Kg, Swingward Limited v Boehringer Ingelheim Kg, Boehringer Ingelheim Pharma Gmbh and Co Kg, Boehringer Ingelheim Limited-And-Dowelhurst Limited: CA 5 Mar 2004

Judges:

Lord Justice Clarke Lord Justice Kennedy Lord Justice Jacob

Citations:

[2004] EWCA Civ 129

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Answered by – Boehringer Ingelheim KG and Others v Swingward Ltd and Another ECJ 23-Apr-2002
The applicant sought to restrict the right of parallel importers of its goods to repackage the goods, and re-supply them in packaging on which their trade mark had been re-applied.
Held: The prohibition of quantitative restrictions on imports . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 06 September 2022; Ref: scu.194121

Regina v Register of Trade Marks ex parte Interturbine Germany Gmbh: Admn 22 Feb 1999

An action was begun opposing a trade mark. It was conducted under the old rules, which did not allow for an order for discovery. After the new rules came into effect, discovery was sought, but the registrar said the old rules would continue to apply within the case. That decision was now challenged by way of judicial review.
Held: The action was pending at the time of the new Act within Schedule 3. Section 78 gave wide powers to make rules, and those were not limited to merely procedural issues. The change in the rules would affect substantive rights, and a statute was not to be applied retrospectively unless it was clearly intended to do so.

Judges:

Laddie J

Citations:

[1999] EWHC Admin 165

Statutes:

Trade Marks Act 1994 Sch 3 par10(1)

Jurisdiction:

England and Wales

Citing:

Cited – Interlego AG’s Trade Mark Applications 1998
. .
Cited – Yew Bon Tew v Kenderaan Bas Mara PC 7-Oct-1982
(Malaysia) In 1972 the appellants were injured by the respondent’s bus. At that time the local limitation period was 12 months. In 1974 the limitation period became three years. The appellants issued a writ in 1975. To succeed they would have to sue . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 September 2022; Ref: scu.139429

Decon Laboratories Ltd v Fred Baker Scientific Ltd and Another: ChD 28 Feb 2001

The procedure for applying for the registration of a European Trade Mark did not involve the same issues as applied in England as to the use of the mark within the first five years, nor any statement of a bona fide intention to use the mark. Only exceptionally therefore could a European Trade Mark be revoked for non-use. An English Court dealing with a European Trade Mark, sits as a European court.

Citations:

Times 28-Feb-2001, [2001] RPC 293

Statutes:

Trade Marks Act 1994 10(1) 46(5)

Jurisdiction:

England and Wales

Cited by:

Cited – Asprey and Garrard Ltd v WRA (Guns) Ltd and Another CA 11-Oct-2001
The Asprey family had been in business for many years. Their business was incorporated, and later sold to the claimants. A member of the Asprey family sought to carry on new businesses through limited companies using the family name. Upon request, . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 September 2022; Ref: scu.79866

Benelli QJ v OhHMI – Demharter (Motobi B Pesaro): ECFI 2 Feb 2016

ECJ Judgment – Community trade mark – Revocation proceedings – Community figurative mark MOTOBI B PESARO – Genuine use of the mark – Article 51(1)(a) of Regulation (EC) No 207/2009 – Evidence submitted against the application for revocation after the expiry of the period set for that purpose – Failure to take account thereof – Discretion of the Board of Appeal – Provision to the contrary – Circumstances precluding additional or supplementary evidence from being taken into account – Article 76(2) of Regulation No 207/2009 – Rule 50(1), third subparagraph, of Regulation (EC) No 2868/95

Citations:

T-171/13, [2016] EUECJ T-171/13, ECLI:EU:T:2016:54

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 04 September 2022; Ref: scu.559497

Regina v M and Others: SC 3 Aug 2017

The defendants pursued an interlocutory appeal. They were being prosecuted inter alia for the sale of items manufactured elsewhere under trade mark licence, but then imported within the EU. They argued that the criminal offence did not apply since the marks had been correctly applied, even though the sales were not authorised.
Held: The appellants’ reading of the section was strained and unnatural: ‘ It requires one to read ‘sign’ in (a), which is incorporated into (b), as ‘which bears a sign, so applied’, or at least as ‘such a sign, so applied’.’ The wording was not ambiguous.
‘it is, on any view, unlawful for a person in the position of the defendants to put grey goods on the market just as it is to put fake ones there. Both may involve deception of the buying public; the grey market goods may be such because they are defective. The distinction between the two categories is by no means cut and dried. But both are, in any event, clear infringements of the rights of the trade mark proprietor. Defendants who set out to buy up grey market goods to make a profit on re-sale do so because the object is to cash in on someone else’s trade mark. If such be proved, they have scant claim to a beneficent construction of the Act. As it is, its ordinary reading plainly means that, unless they have the statutory defence, they have committed an offence.’

Judges:

Lord Neuberger, President, Lord Mance, Lord Sumption, Lord Hughes, Lord Hodge

Citations:

[2017] UKSC 58, UKSC 2017/0006

Links:

Bailii, Bailii Summary, SC, SC Summary, SC Summary Video, SC 20170619 am Video

Statutes:

Trade Marks Act 1994 92(1)

Jurisdiction:

England and Wales

Citing:

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 . .
Appeal from – Regina v C and Others CACD 1-Nov-2016
The court considered the existence of criminal liability under the 1994 Act for those importing from outside the EU and selling within the EU items marked with trade marks but not manufactured by them (counterfeits) or licensed by the trade mark . .
Lists of cited by and citing cases may be incomplete.

Crime, Intellectual Property

Updated: 04 September 2022; Ref: scu.591360

Xxxlutz Marken v OHMI – Natura Selection (Linea Natura Natur Hat Immer Stil): ECFI 24 Mar 2011

ECFI Community trade mark – Opposition proceedings – Application for Community figurative Linea Natura Natur hat immer Stil – Earlier Community figurative mark natura selection – Relative ground for refusal – Likelihood of confusion – Similarity of signs – Article 8, paragraph 1, b) of Regulation (EC) No 40/94 [now Article 8, paragraph 1 b) of Regulation (EC) No 207/2009]

Citations:

T-54/09, [2011] EUECJ T-54/09

Links:

Bailii

European, Intellectual Property

Updated: 04 September 2022; Ref: scu.431367

Checkmobile v OHIM (Carcheck): ECFI 24 Mar 2011

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

Citations:

T-14/10, [2011] EUECJ T-14/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 04 September 2022; Ref: scu.431339

Cybergun v OHMI – Umarex Sportwaffen (Ak 47) (Intellectual Property): ECFI 24 Mar 2011

ECFI Community trade mark – Invalidity proceedings – Community word mark AK 47 – Absolute ground for refusal – Descriptive character – Article 7, paragraph 1, sub c) and Article 52, paragraph 1, sub a) of Regulation (EC) No. 207/2009.

Citations:

T-419/09, [2011] EUECJ T-419/09

Links:

Bailii

European, Intellectual Property

Updated: 04 September 2022; Ref: scu.431344

Ferrero v OHIM: ECJ 24 Mar 2011

ECJ Appeal – Community trade mark – Regulation (EC) No 40/94 – Community figurative mark TiMi KiNDERJOGHURT – Earlier word mark KINDER – Invalidity proceedings – Article 52(1)(a) – Article 8(1)(b) and (5) – Assessment of the similarity of the signs – Family of marks.

Citations:

C-552/09, [2011] EUECJ C-552/09

Links:

Bailii

European, Intellectual Property

Updated: 04 September 2022; Ref: scu.431351

Cybergun v OHMI – Umarex Sportwaffen (Ak 47): ECFI 24 Mar 2011

ECFI Community trade mark – Invalidity proceedings – Community word mark AK 47 – Absolute ground for refusal – Descriptive character – Article 7, paragraph 1, sub c) and Article 52, paragraph 1, sub a) of Regulation (EC) No. 207/2009.

Citations:

T-503/09, [2011] EUECJ T-503/09

Links:

Bailii

Statutes:

Regulation (EC) No. 207/2009

European, Intellectual Property

Updated: 04 September 2022; Ref: scu.431345

Les Laboratoires Servier and Another v Apotex Inc and Others: PatC 29 Mar 2011

Arnold J considered what kinds of unlawfulness would engage the ex turpi causa principle.
Held: a relevant illegality was one which was sufficiently serious in all the circumstances of the case, including in particular whether the illegal act was done with knowledge or deliberately.
After reviewing the authorities, he said: ‘The main conclusion which I draw from this survey of the cases cited to me is that they confirm that the application of the ex turpi causa rule depends on the circumstances of the case. Significant factors include the knowledge of the claimant at the relevant time, whether the illegality involved intentional or negligent conduct on the part of the claimant and whether the commission of the illegal act was induced by the defendant. It appears from dicta in a number of these cases that it may not be sufficient that the act was criminal if the offence was one of strict liability and the claimant was unaware of the relevant facts. Equally, mere negligence is unlikely to be enough in the circumstances of a claim for contribution or indemnity against another tortfeasor.
In my judgment none of these authorities establishes that, in the case of acts which are tortious rather than criminal, the rule only applies if the acts involve dishonesty. Furthermore, I consider that such a limitation would not properly reflect the policy considerations which underlie the rule. I accept that there will be situations in which the tort is not sufficiently serious to engage the rule, but what degree of seriousness is sufficient will depend on the circumstances of the case. In my view the key factor in most cases is likely to be the claimant’s state of knowledge at the time of committing the act in question. If the claimant knew the material facts, and particularly if he committed the act in question intentionally, then the rule is likely to apply.’
Arnold J explained the significance of section 18 of the 1956 Act: ‘S.18 of the 1956 Act created a statutory fiction that infringing copies of copyright works were deemed to belong to the copyright owner. This gave rise to the remedy of conversion damages i.e. damages based on the whole value of the infringing article. It was a provision that often caused surprise even to lawyers and judges other than those who specialised in intellectual property law, let alone to lay people. By the time of Columbia v Robinson it had been widely criticised, and was generally recognised as being anomalous and ripe for repeal. It was duly repealed not long afterwards by the Copyright, Designs and Patents Act 1988’.

Judges:

Arnold J

Citations:

[2011] EWHC 730 (Pat)

Links:

Bailii

Statutes:

Copyright Act 1956 18

Jurisdiction:

England and Wales

Cited by:

Cited – Soutzos v Asombang and Others ChD 21-Jun-2011
The claimant had obtained a freezing order against the defendants. His claim having been dismissed, the court now considered if and what damages should be paid under the cross-undertaking he had given.
Held: Setting out and applying the . .
See Also – Les Laboratoires Servier and Another v Apotex Inc. and Others PatC 11-May-2011
. .
Cited – Twentieth Century Fox Film Corp and Others v Harris and Others ChD 5-Feb-2013
The court was asked whether a copyright owner has a proprietary claim to money derived from infringement of the copyright.
Held: He did not. No such argument could be shown to have suceeded before. . .
At Patents Court – Les Laboratoires Servier and Another v Apotex Inc and Others SC 29-Oct-2014
Ex turpi causa explained
The parties had disputed the validity a patent and the production of infringing preparations. The english patent had failed and damages were to be awarded, but a Canadian patent remained the defendant now challenged the calculation of damages for . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Damages, Torts – Other

Updated: 04 September 2022; Ref: scu.431298

Allen v Bloomsbury Publishing Plc and Another: ChD 18 Mar 2011

Further applications in defendant’s application for summary judgment and or security for costs in the claimant’s claim alleging copyright infringement.
Held: The claimant was ordered to pay a sum of andpound;50,000 as security for costs.
Kitchin J summarised the principles: ‘(i) the court has jurisdiction under rule 24.6 to make an order which is tantamount to an order for security for costs;
(ii) that jurisdiction extends to requiring someone advancing an unpromising claim to secure the defendant’s costs;
(iii) before ordering security for costs in any case, the court should be alert and sensitive to the risk that by making such an order it may be denying the party concerned a right of access to the court; whether or not the person concerned has raised or can raise the money will always be a prime consideration;
(iv) the court has a wide discretion to ensure that justice is done in any particular case;
(v) relevant considerations, besides the ability of the person to pay, include his conduct of the proceedings and the apparent strength of his case;
(vi) a party only becomes amenable to an adverse order for security under rule 3 once he can be seen either regularly to be flouting proper court procedures or orders or otherwise has demonstrated a want of good faith, that is to say a will to litigate a genuine claim or defence as economically as reasonably possible in accordance with the overriding objective;
(vii) likewise, an order for security for costs would not be appropriate in every case where a party appears to have a somewhat weak claim or defence;
(viii) exorbitant applications for summary judgment in misguided attempts to obtain conditional orders providing security for costs are not to be encouraged;
(ix) the occasions when security for costs is ordered solely because the case appears weak may be expected to be few and far between;
(x) it would be wrong to encourage litigants to regard rule 3.1 as providing a convenient means of circumventing the requirements of Part 25 and thereby providing a less demanding route to obtaining security for costs. When the court is asked to consider making an order under rule 3.1(3) or 3.1(5) which is or amounts to an order for security for costs or when it considers doing so of its own motion it should bear in mind the principles underlying rules 25.12 and 25.13. In my judgment the court should also bear this principle in mind when considering whether to make a conditional order under rule 24.6.’

Judges:

Kitchin J

Citations:

[2011] EWHC 770 (Ch), [2011] FSR 22, [2011] FSR 22

Links:

Bailii

Statutes:

Civil Procedure Rules 3 24.6

Jurisdiction:

England and Wales

Citing:

See Also – Allen v Bloomsbury Publishing Plc and Another ChD 14-Oct-2010
The claimant sought damages alleging breach of copyright by the defendant author saying she had copied large parts of the claimant’s work in her book ‘Harry Potter and the Goblet of Fire’. The defendant now sought summary judgment, saying the action . .
Cited – Olakunle O Olatawura v Alexander O Abiloye CA 17-Jul-2002
The claimant challenged an order requiring him to give security for costs before proceeding. The judge had felt he was unreasonable in the way he was pursuing his claim. He appealed saying the order was made outside the scope of Part 25.
Held: . .
Cited – Huscroft v P and O Ferries Ltd CA 21-Dec-2010
Second appeal against order requiring sum for security for costs to be paid into court and in default for the claim to be struck out.
Held: The Court considered its jurisdiction to make an order for security for costs under rule 3.1 and, . .

Cited by:

Appeal from – Allen v Bloomsbury Publishing Ltd and Another CA 14-Jul-2011
The claimant appealed against an order requiring him to deposit a substantial sum as security for costs for the bringing of his action for copyright infringement in respect of the Harry Potter series of books.
Held: The appeal failed. The . .
Lists of cited by and citing cases may be incomplete.

Costs, Intellectual Property

Updated: 04 September 2022; Ref: scu.431281

Ford Motor v OHMIi – Alkar Automotive: ECFI 22 Mar 2011

ECFI Community trade mark – Opposition proceedings – Application for figurative Community trade mark CA – Earlier Community word and figurative marks KA – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009)

Citations:

T-486/07, [2011] EUECJ T-486/07

Links:

Bailii

Statutes:

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

European, Intellectual Property

Updated: 04 September 2022; Ref: scu.430785

Visti Beheer v OHMI – Meister (Gold Meister): ECFI 21 Mar 2011

ECFI Community trade mark – Opposition proceedings – Application for Community figurative GOLD MEISTER – Marks National and Community word marks MEISTER – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No 207/2009.

Citations:

T-372/09, [2011] EUECJ T-372/09

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 8.1(b)

European, Intellectual Property

Updated: 04 September 2022; Ref: scu.430728

Stichting De Thuiskopie v Mijndert van der Lee, Hananja van der Lee, Opus Supplies Deutschland GmbH: ECJ 10 Mar 2011

ECJ Copyright – Directive 2001/29/EC – Article 5(2)(b) – Article 5(5) – Reproduction rights – Fair compensation – Distance selling.

Citations:

[2011] ECR I-0000, C-462/09, [2011] EUECJ C-462/09

Links:

Bailii

Statutes:

Directive 2001/29/EC 5(2)(b)

Jurisdiction:

European

Cited by:

Cited – Forensic Telecommunications Services Ltd v West Yorkshire Police and Another ChD 9-Nov-2011
The claimant alleged infringement by the defendant of assorted intellectual property rights in its database. It provided systems for recovering materials deleted from Nokia mobile phones.
Held: ‘the present case is concerned with a collection . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 04 September 2022; Ref: scu.430724

Jimenez Sarmiento v OHMI – Oxygene Sport: ECFI 17 Mar 2011

ECFI Community trade mark – Opposition proceedings – Calculation of time for submission of statement of grounds of appeal before the Board of Appeal – Rule 70 of Regulation (EC) No 2868/95 – Practice before the OHIM – Definition of excusable error.

Citations:

T-455/09, [2011] EUECJ T-455/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 04 September 2022; Ref: scu.430714

Airfield And Canal Digitaal (Intellectual Property): ECJ 17 Mar 2011

ECJ Approximation of laws – Copyright and related rights – Directive 93/83/EEC – Satellite broadcasting – the author’s exclusive right to authorize the release of his works – Act of public communication satellite – Broadcasting Organization – Supplier of channel satellite television.

Citations:

C-432/09, [2011] EUECJ C-432/09, [2011] EUECJ C-432/09

Links:

Bailii, Bailii

Jurisdiction:

European

Intellectual Property

Updated: 04 September 2022; Ref: scu.430695

Airfield and Canal Digitaal C-431/09: ECJ 17 Mar 2011

ECJ Approximation of laws – Copyright and related rights – Directive 93/83/EEC – Satellite broadcasting – the author’s exclusive right to authorize the release of his works – Act of public communication satellite – Broadcasting Organization – Supplier of channel satellite television.

Citations:

C-431/09, [2011] EUECJ C-431/09, [2011] EUECJ C-431/09

Links:

Bailii, Bailii

Jurisdiction:

European

Intellectual Property

Updated: 04 September 2022; Ref: scu.430694

Agencja Wydawnicza Technopol v OHIM: ECJ 10 Mar 2011

ECJ Appeal – Community trade mark – Sign composed exclusively of numerals – Application for registration of the sign ‘1000’ as a mark in respect of brochures, periodicals and newspapers – Allegedly descriptive character of that sign – Criteria for the application of Article 7(1)(c) of Regulation (EC) No 40/94 – Obligation on OHIM to take into account its previous decision-making practice.

Citations:

C-51/10, [2011] EUECJ C-51/10

Links:

Bailii

European, Intellectual Property

Updated: 04 September 2022; Ref: scu.430693

Oxonica Energy Ltd v Neuftec Ltd: PatC 5 Sep 2008

The parties disputed the meaning of an patent and know how licence. The parties disputed whether the agreement referred to IP rights before formal patents had been granted despite the terms of the agreement.
Held: ‘The secret of drafting legal documents was best described by Nicolas Boileau, who was not only a literary critic but a qualified lawyer: ‘Ce que l’on concoit bien s’enonce clairement et les mots pour le dire arrivent aisement’. What one conceives well can be stated with clarity and the words to say it come easily. We should all have that framed and displayed on our desks.’ The parties would have required a knowhow licence in any event in order to provide a confidentiality agreement. The contract having been drafted not clearly by one side or the other, the contra preferentem rule could not be used to settle the matter.
Neuftec’s suggestion succeeded, and royalties were attracted by any product falling within at least one claim in the agreement, but not otherwise.

Judges:

Peter Prescott QC

Citations:

[2008] EWHC 2127 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Coco v A N Clark (Engineers) Ltd ChD 1968
Requirememts to prove breach of confidence
A claim was made for breach of confidence in respect of technical information whose value was commercial.
Held: Megarry J set out three elements which will normally be required if, apart from contract, a case of breach of confidence is to . .
Cited – G, Regina (on the Application of) v Nottinghamshire Healthcare NHS Trust Admn 20-May-2008
The applicants were detained at Rampton. The form of detention denied the access to space in which they would be able to smoke cigarettes to comply with the law.
Held: The claim failed. The legislative objectives were sufficiently serious to . .
Cited – Celltech R and D Ltd v Medimmune Inc Patc 18-Jun-2004
With the consent of the parties, the court tried two questions of US patent law – file wrapper estoppel and argument estoppel, neither of which exists under our domestic law – without needing to receive expert evidence of US law. . .
Cited – Mannai Investment Co Ltd v Eagle Star Assurance HL 21-May-1997
Minor Irregularity in Break Notice Not Fatal
Leases contained clauses allowing the tenant to break the lease by serving not less than six months notice to expire on the third anniversary of the commencement date of the term of the lease. The tenant gave notice to determine the leases on 12th . .
Cited – Bank of Credit and Commerce International SA v Ali, Khan and others (No 1); BCCI v Ali HL 1-Mar-2001
Cere Needed Releasing Future Claims
A compromise agreement which appeared to claim to settle all outstanding claims between the employee and employer, did not prevent the employee later claiming for stigma losses where, at the time of the agreement, the circumstances which might lead . .
Cited – Investors Compensation Scheme Ltd v West Bromwich Building Society HL 19-Jun-1997
Account taken of circumstances wihout ambiguity
The respondent gave advice on home income plans. The individual claimants had assigned their initial claims to the scheme, but later sought also to have their mortgages in favour of the respondent set aside.
Held: Investors having once . .
Cited – Kempe’s Application 1942
The court considered the meaning of the word ‘application’ in the context of the 1907 Act. Morton J said: ‘Mr Shelley . . argued that . . the words ‘the application’ mean a piece of paper . . and do not mean what he calls ‘the legal proceeding’ and . .
Cited – Antaios Compania Naviera SA v Salen Rederierna AB (‘the Antaios’) HL 1984
A ship charterer discovered that the bills of lading were incorrect, but delayed withdrawal from the charter for 13 days. They now sought leave to appeal the arbitration award against them.
Held: Though he deprecated extending the use of the . .
Cited – Woolard, Re A Patent Application PatC 12-Apr-2002
The question was what was meant by ‘application’ in section 2(3): the request, or the document. It was crucial, because if it meant the document it would have counted as prior art, and would have been novelty-destroying; but if it meant the request, . .
Cited – Mitsui Construction Co Ltd v Attorney General of Hong Kong PC 1986
Lord Bridge said that poor drafting in a contract itself provides: ‘no reason to depart from the fundamental rule of construction of contractual documents that the intention of the parties must be ascertained from the language that they have used . .
Cited – Co-operative Wholesale Society Ltd v National Westminster Bank plc CA 1995
The court considered the proper construction of rent review clauses in several cases. The underlying result which the landlords sought in each case was the same.
Held: It was a most improbable commercial result. Where the result, though . .
Cited – Sinochem International Oil (London) Co Ltd v Mobil Sales and Supply Corporaton and Another CA 17-Feb-2000
. .
Cited – Gan Insurance Co Ltd v Tai Ping Insurance Co Ltd CA 3-Jul-2001
A reinsurance contract which contained a clause which provided that no settlement or compromise of a claim could be made or liability admitted by the insured without the prior approval of the reinsurers. The court considered how the discretion to . .
Cited – Badische Anilin und Soda Fabrik v Hickson HL 1906
A British patent was not infringed by a sale of goods where the property in the goods had already passed before they arrived in this country. Lord Loreburn LC said: ‘A contract to sell unascertained goods is not a complete sale, but a promise to . .
Cited – Morton-Norwich Products Inc v Intercen Ltd 1976
Graham J addressed the question of whether a Dutch defendant who consigned furazolidone by air from Holland on terms cif Gatwick but denied liability for patent infringement was liable in English patent proceedings.
Held: They were liable as . .
Cited – Badische Anilin und Soda Fabrik v Johnson HL 1898
A manufacturer in Switzerland who sold and delivered in that country to an English trader goods manufactured according to an invention the subject of English letters patent had not thereby infringed the rights of the holder of the patent by using or . .
Cited – Morton – Norwich Products v Intercen (No 2) ChD 1981
The plaintiffs had alleged patent infringement and now sought to recover the costs of the action it had had to take for discovery as against HM Customs and Excise, which they said had been necessary to discover the extent of the concealed fraud . .
Cited – Tam Wing Chuen v Bank of Credit and Commerce Hong Kong Ltd PC 1996
The Board considered a banking transaction and the application of a chargeback by the bank, under which a loan was made only after a deposit by a third party against which it was secured, and particularly in the context of the insolvency of the bank . .

Cited by:

Appeal from – Oxonica Energy Ltd v Neuftec Ltd CA 9-Jul-2009
The parties had entered into a patent and know-how licensing agreement, the interpretation of which was now disputed. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contract

Updated: 04 September 2022; Ref: scu.273174

Spokey v OHMI – Leder Jaeger (Spokey): ECFI 21 Jan 2016

ECJ Judgment – Community trade mark – Invalidity proceedings – Community figurative mark Spokey – Earlier Community word mark SPOOKY – Declaration of partial invalidity – Article 53, paragraph 1 a) of Regulation (EC) No 207/2009 – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation No 207/2009 – Examination of evidence – Article 76, paragraph 1 of Regulation No 207/2009 – Obligation to state reasons – Article 75 of Regulation No 207/2009

Citations:

T-846/14, [2016] EUECJ T-846/14, ECLI:EU:T:2016:24

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 03 September 2022; Ref: scu.559488

Hesse v OHIM: ECJ 21 Jan 2016

ECJ Judgment – Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 8(1)(b) and (5) – Word mark Carrera – Opposition by the proprietor of the national and Community word marks CARRERA – Likelihood of confusion – Reputation acquired by the earlier mark

Citations:

C-50/15, [2016] EUECJ C-50/15, ECLI:EU:C:2016:34

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 03 September 2022; Ref: scu.559472

Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd and Another: CA 23 Feb 2011

Citations:

[2011] EWCA Civ 163

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd and Another PatC 21-Jan-2009
The claimant alleged infringement of its patent for certain airline seats.
Held: The defendant’s aircraft seating system did not infringe its EP (UK) 1,495,908 patent. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 02 September 2022; Ref: scu.429730

Cinpres Gas Injection Ltd v Melea Ltd: ChD 9 Oct 2006

The claimant had sought a declaration as to the ownership of a patent, and now said that a witness had procured his earlier judgment by perjury. The witness now said that he had formed his statement against a feeling of oppression by the threat of a US lawsuit.
Held: The decision in the first proceedings was affected by, and indeed was obtained by, perjured evidence which was material to that decision, but that the benefiting party (Mr Ladney) neither procured nor knowingly took advantage of that perjury. In all the circumstances, despite the perjury by which it was obtained, the 1996 decision in the first proceedings cannot be impeached and governs the issues which would otherwise arise in this action as to the ownership of the patent. Accordingly this action has to be dismissed.

Judges:

Mann J

Citations:

[2006] EWHC 2451 (Ch)

Links:

Bailii

Statutes:

Patents Act 1997 37

Jurisdiction:

England and Wales

Citing:

Cited – Odyssey Re (London) Limited and Alexander Howden Holdings Limited v OIC Run-Off Limited (Formerly Orion Insurance Company Plc) CA 13-Mar-2000
There had been litigation between the two companies previously. The general manager and director had given evidence which was accepted by the judge and again on appeal. After his death and in other proceedings it became clear that he had perjured . .
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 by:

See Also – 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 – Cinpres Gas Injection Ltd v Melea Ltd CA 24-Jan-2008
A final judgment may be impugned for fraud. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 02 September 2022; Ref: scu.245215