ECJ Community trade mark Revocation proceedings Community word mark Stella Earlier opposition proceedings based on that mark Admissibility Articles 50(1) and 55(1) of Regulation (EC) No 40/94 (now Articles 51(1) and 56(1) of Regulation (EC) No 207/2009)
T-27/09, [2009] EUECJ T-27/09
Updated: 11 August 2022; Ref: scu.384105
ECJ Community trade mark Opposition proceedings Application for the Community figurative mark SOLVO Earlier Community and national word and figurative marks VOLVO Relative ground for refusal Article 8(1)(b) and (5) of Regulation (EC) No 40/94 (now Article 8(1)(b) and (5) of Regulation (EC) No 207/2009).
T-434/07, [2009] EUECJ T-434/07
Updated: 11 August 2022; Ref: scu.384106
ECJ Community trade mark Applications for Community figurative marks 100 and 300 Statement as to the scope of protection Article 38(2) of Regulation (EC) No 40/94 (now Article 37(2) of Regulation (EC) No 207/2009) Lack of distinctive character.
T-426/07, [2009] EUECJ T-426/07
European
Updated: 11 August 2022; Ref: scu.384077
Tindal CJ told the jury that they had to decide whether the defendant’s product was ‘perfectly distinct’ from the patented product, or whether it varied ‘only in certain circumstances, which are not material to the principle and substance of the invention’.
[1841] EngR 1093, (1841) 3 Man and G 411, (1841) 133 ER 1203 (B)
England and Wales
Cited – Eli Lilly v Actavis UK Ltd and Others SC 12-Jul-2017
The issue raised on this appeal and cross-appeal is whether three products manufactured by Actavis would infringe a patent whose proprietor is Lilly, namely European Patent (UK) No 1 313 508, and its corresponding designations in France, Italy and . .
Lists of cited by and citing cases may be incomplete.
Updated: 11 August 2022; Ref: scu.309271
[2007] EWHC 2636 (Pat)
England and Wales
Updated: 09 August 2022; Ref: scu.261507
[2006] EWHC 2509 (Pat)
England and Wales
Updated: 09 August 2022; Ref: scu.245379
Patent infringement.
Ward, Jacob, Neuberger LJJ
[2005] EWCA Civ 987
England and Wales
Updated: 09 August 2022; Ref: scu.229085
The court should look to the ‘pith and marrow’ of the invention to see whether a patent infringement had occurred. For a claim be made for a ‘subordinate’ invention, it would have been necessary distinctly to claim it in the patent.
Lord Cairns
(1877) 2 App Cas 315
Scotland
Cited – C Van Der Lely NV v Bamfords Ltd HL 1963
The pith and marrow doctrine on the construction of patents claims was ‘necessary to prevent sharp practice.’ As to the doctrine of enablement as explained by Lord Westbury: ‘Lord Westbury must have meant experiments with a view to discovering . .
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 – 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 – Eli Lilly v Actavis UK Ltd and Others SC 12-Jul-2017
The issue raised on this appeal and cross-appeal is whether three products manufactured by Actavis would infringe a patent whose proprietor is Lilly, namely European Patent (UK) No 1 313 508, and its corresponding designations in France, Italy and . .
Lists of cited by and citing cases may be incomplete.
Updated: 09 August 2022; Ref: scu.218732
[1997] EWCA Civ 1905
England and Wales
Appeal from – Beecham Group Plc and Another v Norton Healthcare Ltd and Others ChD 11-Oct-1996
A patent claim could be amended to add a claim for an action for breach of confidence by the defendant. The claim was rightly amended after service abroad to add more heads; UK was the forum conveniens in this action. . .
Cited – Eli Lilly v Actavis UK Ltd and Others SC 12-Jul-2017
The issue raised on this appeal and cross-appeal is whether three products manufactured by Actavis would infringe a patent whose proprietor is Lilly, namely European Patent (UK) No 1 313 508, and its corresponding designations in France, Italy and . .
Lists of cited by and citing cases may be incomplete.
Updated: 09 August 2022; Ref: scu.142301
The Court of Appeal should not tinker with sentences passed by lower courts in the absence of exceptional circumstances, or where they were wrong in principle, or were manifestly excessive. Here a sentence of 30 months for a professional and systematic breach of Trade Mark law was not to be set aside. The sentence was intended to act as a deterrence. The potential loss to the music industry relevant to the case was a substantial factor.
Lord Justice Rose, Mr Justice Butterfield, Mr Justice Cooke
Times 30-Oct-2001, [2001] EWCA Crim 2023, [2002] 1 Cr App R (S) 485
England and Wales
Cited – Sheldrake v Director of Public Prosecutions; Attorney General’s Reference No 4 of 2002 HL 14-Oct-2004
Appeals were brought complaining as to the apparent reversal of the burden of proof in road traffic cases and in cases under the Terrorism Acts. Was a legal or an evidential burden placed on a defendant?
Held: Lord Bingham of Cornhill said: . .
Lists of cited by and citing cases may be incomplete.
Updated: 09 August 2022; Ref: scu.166716
Case management conference in a patent action.
Birss J
[2020] EWHC 3359 (Pat)
England and Wales
Updated: 09 August 2022; Ref: scu.657799
A patent claim could be amended to add a claim for an action for breach of confidence by the defendant. The claim was rightly amended after service abroad to add more heads; UK was the forum conveniens in this action.
Times 11-Oct-1996, Gazette 06-Nov-1996
England and Wales
Appeal from – Norton Healthcare Limited v Beecham Group Plc CA 19-Jun-1997
. .
Lists of cited by and citing cases may be incomplete.
Updated: 09 August 2022; Ref: scu.78314
ECJ Judgment – Community trade mark – Opposition proceedings – Figurative mark Darjeeling collection de lingerie – Earlier Community collective word and figurative marks DARJEELING – Relative grounds for refusal – Article 8(1)(b) and (5) of Regulation (EC) No 207/2009
D. Gratsias (Rapporteur), P
ECLI:EU:T:2015:742, T-625/13, [2015] EUECJ T-625/13
European
Updated: 08 August 2022; Ref: scu.552878
Hacon HHJ
[2015] EWHC 2667 (IPEC)
England and Wales
Updated: 08 August 2022; Ref: scu.552728
ECJ Judgment – Community trade mark – Opposition proceedings – Application for a Community figurative mark W E – Earlier Community word mark WE – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009
T-718/14, [2015] EUECJ T-718/14, ECLI:EU:T:2015:916
Regulation (EC) No 207/2009 891)(b)
European
Updated: 08 August 2022; Ref: scu.556127
[2015] UKIntelP o12815
England and Wales
Updated: 08 August 2022; Ref: scu.545542
A claim was brought for the infringement of a patent. It was brought after the specification had been published, but before the patent had been sealed.
Held: Time might run from a date before the plaintiff was entitled to sue. The cause of action for infringement accrued at the date of the infringement even if that was before the date of sealing but the claim could not be enforced until the procedural requirement of sealing was met.
Lord McKay of Clashfern said: ‘If he were to institute proceedings for infringement before the patent for the invention was sealed, the procedural requirements of the proviso would not be satisfied but a statement of claim could not be struck out as disclosing no cause of action although it might be liable to be struck out as an abuse of the process of the court.’
Lord McKay of Clashfern
[1986] 1 WLR 462
England and Wales
Cited – Green and others v Gaul and Another; In re Loftus deceased ChD 18-Mar-2005
The claimants began an action in January 2003 to seek to set aside the appointment of an administrator from December 1991, and to have set aside transfers of property made within the estate.
Held: The limitation period against a personal . .
Cited – Legal Services Commission v Rasool CA 5-Mar-2008
The defendant had in 1993 obtained legal aid. Work was done but the certificate was then revoked. The Commission sought repayment of the sums paid on account to his solicitors. He replied that the claim was out of time. The Commission argued that . .
Cited – Swansea City Council v Glass CA 1992
The defendant had failed himself to repair his property, and the Local Authority carried out the work itself under the 1957 Act. It sought to recover the associated costs from the defendant, but he said that their claim was time barred, being more . .
Cited – FMX Food Merchants Import Export Co Ltd v Revenue and Customs SC 29-Jan-2020
This appeal concerns the meaning and effect of the phrase ‘Customs Debt’ in article 221(4) of the former Customs Code of the EU, contained in Council Regulation (EEC) No 2913/92. Customs duties may be due under ‘post-clearance demands’ and the Court . .
Cited – Doyle v PRA Group (UK) Ltd CA 23-Jan-2019
Whether the cause of action for the outstanding sums accrued when Mr Doyle first defaulted in his payments or only when Mr Doyle failed to comply with the default notice stipulated by CCA s.87(1) and required by clause 8f of the Agreement. Mr Doyle . .
Lists of cited by and citing cases may be incomplete.
Updated: 08 August 2022; Ref: scu.223965
The claimant had alread challenged the validity of the defendant’s registered trade mark, but sought to do so now on grounds which could have been advanced in the earlier case. The claimant owned the trade mark ‘SPAM’ for canned meats, and the defendant had the mark ‘SPAMBUSTER’ for computer programs.
Held: The claim was estopped. The law of estoppel as it applied to patents and registered design cases applied also to trade mark actions. If a party attacked the validity of a mark at trial, he had a duty to put his entire case. Whether he did so or not, if he failed, he would be estopped form trying again, even on different grounds. This kind of estoppel did not however bar a claim for revocation, because that concerned different events, namely those which had occurred after registration, and which could not have been advanced in a challenge to the validity of the mark.
Richard Arnold QC
[2005] ETMR 54, Times 28-Feb-2005, [2005] RPC 28, [2005] EWHC 13 (Ch)
England and Wales
Cited – Henderson v Henderson 20-Jul-1843
Abuse of Process and Re-litigation
The court set down the principles to be applied in abuse of process cases, where a matter was raised again which should have been dealt with in earlier proceedings.
Sir James Wigram VC said: ‘In trying this question I believe I state the rule . .
Cited – Johnson v Gore Wood and Co HL 14-Dec-2000
Shareholder May Sue for Additional Personal Losses
A company brought a claim of negligence against its solicitors, and, after that claim was settled, the company’s owner brought a separate claim in respect of the same subject-matter.
Held: It need not be an abuse of the court for a shareholder . .
Cited – Thoday v Thoday CA 1964
The court discussed the difference between issue estoppel, and action estoppel: ‘The particular type of estoppel relied upon by the husband is estoppel per rem judicatam. This is a generic term which in modern law includes two species. The first . .
Cited – Read v Brown CA 1-Dec-1888
Lord Esher defined the phrase ’cause of action’ to mean ‘Every fact which it would be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment of the court.’ . .
Cited – Special Effects Ltd v L’Oreal Sa and others ChD 17-Mar-2006
The defendant had previously opposed the registration of the claimant’s trade mark before the Comptroller General, but failed. The claimant now in infringement procedings sought the strike out of the defendant’s challenge to its validity.
Cited – Special Effects Ltd v L’Oreal Sa and Another CA 12-Jan-2007
The defendants had opposed the grant of the trade mark which they were now accused of infringing. The claimants said that having failed at the opposition stage, they were now estopped from challenging the validity of the mark.
Held: It was not . .
Lists of cited by and citing cases may be incomplete.
Updated: 08 August 2022; Ref: scu.223317
[2014] UKIntelP o12414
England and Wales
Updated: 07 August 2022; Ref: scu.523981
Hearing in continuing litigation as to the mark QUEENSBERRY
Birss J
[2014] EWHC 91 (Ch)
England and Wales
Updated: 07 August 2022; Ref: scu.520819
[2002] UKIntelP o25002
England and Wales
Updated: 07 August 2022; Ref: scu.455167
[2013] UKIntelP o01913
England and Wales
Updated: 07 August 2022; Ref: scu.472160
The invention relates to an application programming environment in a ‘resource constrained’ mobile telephone. It proposes the use of a runtime library comprising three types of code which enable a wide range of different applications to be constructed. These three types of code form what is described as a ‘restricted set of mandatory primitives’ that are capable of being combined with additional code (called ‘glue logic’) to create different applications. These primitives occupy very little code space, and this means that any primitives that are common to several applications can be burnt to ROM.
The Hearing Officer agreed that the test for patentability is as set out RiM v Inpro, ie. ‘Taking the claims correctly construed, what does the claimed invention contribute to the art outside excluded subject matter?’ He concluded that the substance of the invention is a better way of writing a computer program, and that therefore the contribution to the art that is made by this invention is entirely within excluded subject matter – ie. programs for computers as such.
[2006] UKIntelP o10206
England and Wales
Updated: 07 August 2022; Ref: scu.454684
The parties dispute the existence of copyright in a prototype of a piece of furniture.
Held: The term ‘craftsmanship’ in the Act suggests a durable useful handmade object.
Lord Reid explained the significance of the intention of the maker or designer: ‘It is I think of importance that the maker or designer of a thing should have intended that it should have an artistic appeal but I would not regard that as either necessary or conclusive. If any substantial section of the public genuinely admires and values a thing for its appearance and gets pleasure or satisfaction, whether emotional or intellectual, from looking at it, I would accept that it is artistic although many others may think it meaningless or common or vulgar . . During last century there was a movement to bring art to the people. I doubt whether the craftsmen who set out with that intention would have regarded all their products as works of art, but they were certainly works of artistic craftsmanship whether or not they were useful as well as having an artistic appeal . . In the present case I find no evidence at all that anyone regarded the appellants’ furniture as artistic. The appellants’ object was to produce something which would sell . . no doubt many customers bought the furniture because they thought it looked nice as well as being comfortable, but looking nice appears to me to fall considerably short of having artistic appeal. I can find no evidence that anyone felt or thought that the furniture was artistic in the sense which I have tried to explain.’
Lord Morris suggested some form of minimum standards before something could be called ‘artistic’: ‘If it is asked whether works which possess distinctive features of design and skill in workmanship or works which possessed distinctive characteristics of shape, form and finish or qualify to be called artistic, I would say that the word ‘artistic’ calls for something additional and different. If it is asked whether there is artistry if there is an appeal to the eye, I would say that something more is needed. In any event, and apart from this, such questions would tend to suggest or to impose a clamp of rigidity and restriction in definition where none is needed.
In deciding whether a work is one of artistic craftsmanship, I consider that the work must be viewed and judged in an attached and objective way. The aim and purpose of its author may provide a pointer, but the thing produced must itself be assessed without giving decisive weight to the author’s scheme of things . . So I would say that the object under consideration must be judged as a thing in itself. Does it have the character or virtue of being artistic?’
Viscount Dilhorne discussed what was required before a work could be one-off craftsmanship: ‘A work of craftsmanship is, in my opinion, something made by hand and not something mass produced.’ He differed from the trial judge as to whether the work, which was conceded to be one of craftsmanship, was artistic: ‘I do not think that the presence of distinctive features of shape, form and finish suffices to make a work artistic.’
Lord Simon said: ‘A work of craftsmanship, even though it cannot be confined to handicraft, at least presupposes special training, skill and knowledge for its production . .’craftsmanship’, particularly when considered in its historical context, implies a manifestation of pride in sound workmanship – a rejection of the shoddy, the meretricious, the facile. But the craftsmanship – not the work itself – must in addition be artistic.’ and
‘I start by re-emphasising that the statutory phrase is not ‘artistic work of craftsmanship’ but ‘work of artistic craftsmanship’ and that this distinction accords with the social situation in which Parliament was providing a remedy. It is therefore misleading to ask, first, is this a work produced by a craftsman, and secondly, is it a work of art? It is more pertinent to ask is this the work of one who was in this respect an artistic-craftsman. It follows that the artistic merit of the work is irrelevant . . .not only is artistic merit irrelevant as a matter of statutory construction, a valuation of artistic merit is not a task for which judges have any training or general aptitude . . since the Tribunal will not attempt a personal aesthetic judgment . . it follows, again, that whether the subject matter is or is not a work of artistic craftsmanship is a matter of evidence; and the most cogent evidence is likely to be from those who are either themselves acknowledged artists-craftsmen or concerned with the training of artists-craftsmen – in other words, expert evidence. In evaluating the evidence, the court will endeavour not to be tied to a particular metaphysics of art, partly because the courts are not naturally fitted to weigh such matters, partly because Parliament can hardly have intended the construction of its statutory phrase should turn on some recondite theory of aesthetics . . .it is probably enough the common experience tells us that artists have vocationally an aim and impact which differ from those of the ordinary run of humankind.’
Lord Kilbrandon said that the craftsman’s intention was the primary test: ‘The conscious intention of the craftsman will be the primary test of whether his product is artistic or not; the fact that many of us like looking at a piece of honest work, especially in the traditional trades, is not enough to make it a work of art.’
Simon, Reid, Kilbrandon, Morris LL, Viscount Dilhorne
[1976] AC 64, [1975] RPC 31
England and Wales
Cited – Lucasfilm Ltd and Others v Ainsworth and Another SC 27-Jul-2011
The claimant had produced the Star War films which made use of props, in particular a ‘Stormtrooper’ helmet designed by the defendant. The defendant had then himself distributed models of the designs he had created. The appellant obtained judgment . .
Lists of cited by and citing cases may be incomplete.
Updated: 07 August 2022; Ref: scu.442598
Jacob LJ: In the context of construing an international treaty by reference to the travaux preparatoires to find a definite legal intention Lord Steyn said: ‘Only a bull’s-eye counts’ (Effort Shipping v Linden Management [1988] AC 605 at 625). Much the same goes for trying to ascertain such an intention from a White Paper which precedes legislation.
Lord Justice Tuckey Lord Justice Lloyd Lord Justice Jacob
[2006] EWCA Civ 166, [2006] RPC 769
England and Wales
Appeal From – Dyson Limited v Qualtex (UK) Limited ChD 21-Dec-2004
Claim for infringement of unregistered design right. . .
Cited – Nova Productions Ltd v Mazooma Games Ltd and others CA 14-Mar-2007
The defendant appealed against a finding of copyright infringement in a computer game.
Held: The appeal failed. The court must identify the artistic work relied upon and then decide whether it has been reproduced by copying of the work as a . .
Lists of cited by and citing cases may be incomplete.
Updated: 06 August 2022; Ref: scu.239216
The court criticised the failure of applicants for an order made not on notice to follow good practice. Applications not on notice should be made only where there was real urgency. The more serious the allegations made the greater was the need to keep proper records and for openness. An applying party should normally provide a witness statement. It was not proper to rely upon the courts’ recording system, and a duty fell on both solicitors and counsel attending to keep a full note of what transpired to supply as neceesary to the other party.
Pumfrey J
Times 21-Dec-2005, [2005] EWHC 3180 (Pat)
England and Wales
Updated: 06 August 2022; Ref: scu.236668
ECJ Community trade mark – Opposition proceedings – Application for Community word mark CARPOVIRUSINE – Earlier national word mark CARPO – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No 40 / 94
T-169/04, [2005] EUECJ T-169/04
European
Updated: 06 August 2022; Ref: scu.236383
[2005] EWHC 2532 (Ch)
England and Wales
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.
Updated: 06 August 2022; Ref: scu.235230
When a party appealed a patent judge’s conclusions as to obviousness of a patent under challenge, that party should put before the court a summary showing succinctly what principles of law the judge had infringed.
Lord Justice Buxton Lord Justice Laws The Vice-Chancellor
[2003] EWCA Civ 1545, Times 16-Dec-2003
England and Wales
Applied – David J Instance Ltd and Another v Denny Brothers Printing Ltd CA 20-Jun-2001
In a case where a patent was being challenged for obviousness, the judge was not necessarily obliged to follow the structured approach recommended in the Windsurfing International case. Here the judge had gone straight to the issue at the heart of . .
Appeal from – Teva Pharmaceutical Industries Ltd Arrow Generics Ltd, Generics (UK) Ltd v Istituto Gentili Spa, Merck and Co Inc PatC 22-Jan-2003
. .
Cited – Angiotech Pharmaceuticals and Another v Conor Medsystems Inc CA 16-Jan-2007
The appellants challenged a finding that their patent for a vascular stent failed for obviousness.
Held: To overcome a judge’s finding in such a case some error of principle had to be shown. No such error was shown and the appeal failed. . .
Lists of cited by and citing cases may be incomplete.
Updated: 06 August 2022; Ref: scu.187541
The defendants appealed a finding that they had infringed the claimant’s unregistered design rights in collapsible umbrellas. The defendants said the law protected only the design as a whole, and that only part had been copied.
Held: Authority was clear that subject to considerations as to the non-protection of ‘must fit/must match elements’ of a design and as to minima, the right could be infringed by copy of part of a design. Totes had copied an aspect of the design indeed nearly all of it. ‘ . . . a designer is entitled to prevent the copying exactly or substantially of part only of his design, unless that part is excluded from protection because it is not original (i.e. is copied or is commonplace) or falls within the must fit/must match exceptions or any combination of these. ‘ The appeal failed.
Lord Justice Kennedy Lord Phillips Of Worth Matravers, Mr Lord Justice Jacob
[2003] EWCA Civ 1514, Times 19-Nov-2003
Copyright Designs and Patents Act 1988 213(6)
England and Wales
Cited – Designers Guild Ltd v Russell Williams (Textiles) Ltd (Trading As Washington DC) HL 28-Nov-2000
Copyright Claim: Was it Copied, and How Much?
The claimant sought to enforce its copyright in artwork for a fabric design Ixia, saying the defendant’s design Marguerite infringed that copyright. Two issues faced the House. Just what had been copied and if any, then did this amount amount to 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 – Volumatic Ltd v Myriad Technologies Ltd ChD 10-Apr-1995
The court considered whether the protection given by the section extended to part only of a registered design: ‘The question is whether, when these features [must fit and must match] have been subtracted, there is anything left in which unregistered . .
Cited – A Fulton Co Ltd v Grant Barnett and Co Ltd ChD 2001
The court considered an allegation that part of an unregistered design had been copied. The defendant said that the section required a claim in respect of the entire design.
Held: The part in respect of which a claim must be made must neither . .
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 . .
Cited – Ultraframe UK Limited v Clayton, Fielding and Others ChD 3-Oct-2002
The claimants asserted infringement of their registered design rights in parts used in their double glazing and conservatory units. ‘Therefore it is possible for design right to subsist in the design of the part of the article which is not excluded . .
Cited – Mackie Designs Inc v Behringer Specialised Studio Equipment (Uk) Limited, Ulrich Bernhard Behringer and Behringer Spezielle Studiotechnik Gmbh ChD 22-Feb-1999
Unregistered design right extends beyond the visually appreciable to other aspects of the design of an article, in this case to semiconductor chips and electronic circuits. . .
Lists of cited by and citing cases may be incomplete.
Updated: 06 August 2022; Ref: scu.187467
Patents had been granted in the US for human antibodies, and licences issued to the respondent who developed another product themselves. The claimants asserted infringement under the US doctrine of equivalence under which a product or process which does not literally infringe the express terms of a patent claim may nevertheless be found to infringe if there is equivalence between the elements of the accused product or process and the claimed elements of the patented invention. The judge was wrong to find that Celltech was not precluded from relying on the doctrine of equivalence because of an Amendment Estoppel, but was right to find that Celltech was so precluded by an Argument Estoppel. The cross-appeal was allowed and the appeal dismissed save paragraph 1 of the order by which the court dismissed the action.
Lady Justice Arden And Lord Justice Longmore
[2003] EWCA Civ 1008
England and Wales
Appeal from – Celltech Chiroscience Ltd v Medimmune Inc PatC 28-Oct-2002
. .
Cited – AMP Incorporated v Hellerman Limited HL 1962
An optional feature of a crimping machine, namely a ‘stop’, was incorporated as an essential feature in an amendment made after acceptance of the patent specification. The question arose whether the amendment was a disclaimer for the purposes of . .
Cited – R Griggs Group Ltd and others v Evans and others (No 2) ChD 12-May-2004
A logo had been created for the claimants, by an independent sub-contractor. They sought assignment of their legal title, but, knowing of the claimant’s interest the copyright was assigned to a third party out of the jurisdiction. The claimant . .
Lists of cited by and citing cases may be incomplete.
Updated: 06 August 2022; Ref: scu.184615
A drawing, which was otherwise an artistic work, did not cease to be protected by copyright, merely because it contained words and figures, as a direction on how to make up the article of craftsmanship depicted, and the article could not be made without those directions. It was necessary for the author to be both artist and craftsman. It might be an artistic work if it contained details necessary to create an artistic work. Copyright did not subsist in samples created to exemplify the drawings.
Times 23-Jun-2000, Gazette 22-Jun-2000
England and Wales
Updated: 06 August 2022; Ref: scu.90151
Mere confusion of identity was insufficient to establish the tort of passing off. The tort is not dependent upon intention. A claimant must establish that it has a goodwill capable of being damaged, that the confusion caused was such as to amount to a misrepresentation of some connection between the two companies, and that the misrepresentation had or was likely to damage the goodwill of the claimant.
Times 28-Sep-1999
England and Wales
Appeal from – HFC Bank Plc v HSBC Bank Plc (Formerly Midland Bank Plc) CA 26-Apr-2000
Following a trial, and before the judgment was delivered, the parties arranged to meet and settled their dispute. The judges and the court were not advised and continued to take the trouble of preparing the now nugatory judgment. The legal . .
Lists of cited by and citing cases may be incomplete.
Updated: 06 August 2022; Ref: scu.81360
Acquiescence by a TV company in the breach of a copyright licence by the sale of unlawful decoders was capable of defeating an infringement claim in respect of the same complaint.
Gazette 04-Dec-1996, Times 02-Dec-1996
England and Wales
Updated: 06 August 2022; Ref: scu.80521
Obviousness challenge not to be supported by extensive evidence challenges.
Times 13-Feb-1997
England and Wales
Updated: 06 August 2022; Ref: scu.81419
[2019] EWHC 2376 (Ch)
England and Wales
Updated: 05 August 2022; Ref: scu.640899
[2012] UKIntelP o34512
England and Wales
Updated: 05 August 2022; Ref: scu.465325
ECJ Community trade mark Invalidity proceedings – Community trade mark consisting of a combination of the colours green and yellow – Absolute ground for refusal – Distinctive character acquired through use Article 7(3) and Article 51(1)(a) of Regulation (EC) No 40/94 (now Article 7(3) and Article 52(1)(a) of Regulation (EC) No 207/2009) – Relative ground for refusal Earlier unregistered national mark consisting of a combination of the colours green and yellow Article 8(4) and Article 52(1)(c) of Regulation No 40/94 (now Article 8(4) and Article 53(1)(c) of Regulation No 207/2009) – Obligation to state reasons Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009).
T-137/08, [2009] EUECJ T-137/08
Updated: 05 August 2022; Ref: scu.380274
Appeal Community trade mark Regulation (EC) No 40/94 Article 8(1)(b) Word and figurative mark ‘SUNPLUS’ Opposition by the proprietor of the national word marks ‘SUN’ Refusal of registration
C.W.A. Timmermans, P
C-21/08, [2009] EUECJ C-21/08, [2009] ETMR 46
Updated: 05 August 2022; Ref: scu.380269
ECJ Statement of questions referred (Patents)
[2009] EUECJ C-195/09
Reference From – Synthon Bv v Merz Pharma Gmbh and Co Kgaa PatC 2-Apr-2009
. .
Statement of questions – Synthon v Merz Pharma Gmbh and Co Kg ECJ 31-Mar-2011
ECJ Opinion – Regulation No 1768/92 – Supplementary protection certificate – Conditions for its grant – Concept of first marketing authorisation . .
Statement of Questions – Synthon v Merz Pharma Gmbh and Co Kg ECJ 28-Jul-2011
ECJ Patent law – Medicinal products – Supplementary protection certificate for medicinal products – Regulation (EEC) No 1768/92 – Article 2 – Scope – Safety and efficacy testing laid down by Directive 65/65/EEC – . .
Lists of cited by and citing cases may be incomplete.
Updated: 05 August 2022; Ref: scu.380270
The court held that although JandJ’s Oasys contact lenses fall within the scope of claims 1 and 24 of Novartis’ EP (UK) No. 0,819,258, the Patent was invalid. The ground of invalidity was insufficiency (patent law jargon for failure to comply with Art. 83 of the EPC). The Judge rejected JandJ’s contentions that the Patent was invalid for obviousness or lack of novelty (patent law jargon for the latter is ‘anticipation’).
Kitchin J
[2009] EWHC 2029 (Pat)
Appeal from – Novartis Ag and Another v Johnson and Johnson Medical Ltd and Another CA 29-Sep-2010
. .
Lists of cited by and citing cases may be incomplete.
Updated: 04 August 2022; Ref: scu.377330
[2009] EWHC 2690 (Pat)
England and Wales
Updated: 04 August 2022; Ref: scu.377332
Jacob, Patten, Kitchin LJJ
[2010] RPC 8, [2009] EWCA Civ 1062
England and Wales
Appeal from – 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. . .
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 – Mayne Pharma Pty Ltd v Mayne Pharma Plc CA 17-Feb-2005
Patents – patentee’s appeal in a case subjected to the streamlined procedure. The court set out the principles underlying the approach to the determination of what a person skilled in the art would have understood the patentee to have been using the . .
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 . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 August 2022; Ref: scu.376234
ECJ Community trade mark – Opposition proceedings Application for the Community word mark SPALINE – Earlier national word mark SPA Relative ground for refusal – Damage to reputation – Unfair advantage derived from the reputation of the earlier mark Use of the mark applied for without due cause Article 8(5) of Regulation (EC) No 40/94.
T-21/07, [2008] EUECJ T-21/07, [2009] ETMR 49
Updated: 04 August 2022; Ref: scu.375626
ECJ (Opinion of advocate General Poiares Maduro) – The court was asked whether it was lawful for Google to allow its advertisers to specify trade marks in the keywords against which Google users could search.
Held: Google’s practice was not unlawful.
C-238/08, [2009] EUECJ C-238/08 – O, [2010] EUECJ C-238/08
See Also – Google France and Google v Louis Vuitton Malletier (Intellectual Property) ECJ 22-Sep-2009
ECJ (Opinion of Advocate General Maduro) The court considered the alleged misuse of trade marks as keywords for internet searches. . .
See Also – Google France and Google (Intellectual Property) ECJ 22-Sep-2009
Opinion – The AG consideed the applicable law as regards the use of trade mark names within websites to attract internet search engines. . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 August 2022; Ref: scu.375109
Opinion – The AG consideed the applicable law as regards the use of trade mark names within websites to attract internet search engines.
Maduro AG
C-236/08, [2009] EUECJ C-236/08 – O
See Also – Google France and Google v Louis Vuitton Malletier (Intellectual Property) ECJ 22-Sep-2009
ECJ (Opinion of advocate General Poiares Maduro) – The court was asked whether it was lawful for Google to allow its advertisers to specify trade marks in the keywords against which Google users could search.
Opinion – Google France and Google (Intellectual Property) ECJ 23-Mar-2010
ECJ Trade marks Internet Search engine Keyword advertising Display, on the basis of keywords corresponding to trade marks, of links to sites of competitors of the proprietors of those marks or to sites offering . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 August 2022; Ref: scu.375107
ECJ Community trade mark Community word mark DANELECTRO and Community figurative mark QWIK TUNE Failure to observe the time’limit for submitting a request for renewal of the trade marks Application for restitutio in integrum Reformatio in pejus Rights of the defence Right to be heard Article 61(2), second sentence of Article 73, and Article 78 of Regulation (EC) No 40/94 (now Article 63(2), second sentence of Article 75, and Article 81 of Regulation (EC) No 207/2009).
T-21/08, [2009] EUECJ T-21/08
See Also – Evets v OHMI (Danelectro) ECFI 23-Sep-2009
ECJ Community trade mark Community word mark DANELECTRO and Community figurative mark QWIK TUNE Failure to observe the time’limit for submitting a request for renewal of the trade marks Application for restitutio . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 August 2022; Ref: scu.375106
ECJ Community trade mark Opposition proceedings Application for the Community figurative mark astex TECHNOLOGY Earlier Community word mark ASTEX Ground for refusal Likelihood of confusion Restriction of the goods designated in the trade mark application Article 8(1)(b) of Regulation No 40/94
O Czucz P
T-48/06, [2008] EUECJ T-48/06
Updated: 04 August 2022; Ref: scu.374470
ECJ Appeal Community trade mark Regulation (EC) No 40/94 Article 8(5) Reputation Taking unfair advantage of the distinctive character or the repute of the earlier mark Application for registration as a Community trade mark of the word mark ‘TDK’ Opposition by the proprietor of the Community and national word and figurative marks TDK Refusal to register.
C-197/07, [2008] EUECJ C-197/07
Updated: 04 August 2022; Ref: scu.374477
ECJ Community trade mark Opposition proceedings Application for Community figurative mark affilene Earlier Community word mark AFFILIN Relative ground for refusal Likelihood of confusion Similarity between products Article 8(1)(b) of Regulation (EC) No 40/94.
T-87/07, [2008] EUECJ T-87/07
Regulation (EC) No 40/94 8(1)(b)
Updated: 04 August 2022; Ref: scu.374476
ECJ Community trade mark Application for Community word mark DREAM IT, DO IT! Absolute ground for refusal Lack of distinctive character Article 7(1)(b) of Regulation (EC) No 40/94
M. Vilaras (Rapporteur), P
T-186/07, [2008] EUECJ T-186/07, [2008] ETMR 70
Regulation (EC) No 40/94 7(1)(b)
Updated: 04 August 2022; Ref: scu.374467
ECJ Community trade mark opposition proceedings Application for Community figurative mark Stradivari 1715 – Earlier Community figurative marks Stradivarius Reason refusal Relative risk of confusion Article 8, paragraph 1 b) of Regulation (EC) No 40/94
Mme ME Martins Ribeiro, P
T-340/06, [2008] EUECJ T-340/06
Updated: 04 August 2022; Ref: scu.374469
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 right to the invention and that that right must stem from the operation of a rule of law (e.g. breach of contract or confidence). The court emphasised the need to construe the 1977 Act to accord with the European Directive upon which it was based: ‘we begin by what must be the rational way to approach this, whatever section is under consideration. Parts of it are intended to implement the European Patent Convention of 1972. In a peculiarly cack-handed way the draftsman chose to re-number and re-write some of these and then say, in s.130(7) in effect that his re-writing does not count – that the relevant provision is ‘so framed as to have, as nearly as practicable, the same effect in the UK as it has in the EPC’. No one has ever identified any difference in meaning between a 1977 Act provision and the meaning of a corresponding provision of the EPC and we do not suppose anyone ever will.’
There is a clear a public interest (of which the Comptroller is the guardian) in not having apparent monopolies on the register which are invalid: ‘The sooner an obviously invalid monopoly is removed, the better from the public point of view.’
A person (A) who claims to be entitled to a patent which has been granted to someone else (B) could not succeed merely by proving that he had been the inventor and B had not. Jacob LJ said that: ‘[A] must be able to show that in some way B was not entitled to apply for the patent, either at all or alone. It follows that A must invoke some other rule of law to establish his entitlement – that which gives him title, wholly or in part, to B’s application.’
Jacobs LJ
[2005] RPC 76, [2005] EWCA Civ 267
England and Wales
Cited – 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 . .
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 – 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 . .
Part Criticised – 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 . .
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
. .
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. . .
See Also – 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 . .
Cited – MBR Acres Ltd and Others v McGivern QBD 2-Aug-2022
Contempt Procedures Not to be abused
Reasons for dismissal of contempt application.
Held: The contempt application against Ms McGivern was dismissed and certified as being totally without merit.
The court does not grant injunctions to parties to litigation to be used as a . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 August 2022; Ref: scu.223779
[2003] ScotCS 138
Scotland
Updated: 03 August 2022; Ref: scu.182168
Patents action
Mr Justice Birss
[2020] EWHC 2746 (Pat)
England and Wales
Updated: 03 August 2022; Ref: scu.657792
Patent infringement allegation
Mr Justice Meade
[2020] EWHC 3282 (Pat)
England and Wales
Updated: 03 August 2022; Ref: scu.657797
The appellants were proprietors of a registered design and raised an action against the respondents to obtain injunction against an alleged infringement of the design. The respondents admitted the design to be new and original, but denied infringement, and judgment pronounced in the respondents’ favour was affirmed by the Court of Appeal (Cozens-Hardy, M.R., and Buckley, L. J., diss. Fletcher Moulton, L.J.), on the ground that there was no infringement.
Held: The Court was not bound by the admission, and that the design founded on had not the novelty or originality required to bring it within the statutory protection.
Opinion, on the question of infringement, per Earl of Halsbury, that the principles of patent law were inapplicable to designs, and that only exact reproduction of a design would amount to infringement.
Lord Chancellor (Loreburn), the Earl Of Halsbury, Lords Atkinson and Shaw
[1911] UKHL 1081
England and Wales
Updated: 03 August 2022; Ref: scu.619184
Application for a reference to be made to the Court of Justice of the European Union – patents and FRAND dispute
Birss J
[2020] EWHC 2425 (Pat)
England and Wales
Updated: 03 August 2022; Ref: scu.657790
‘This appeal raises an issue about what patent lawyers call ‘added matter’. Added matter refers to the rule that a patent application or patent may not be amended in such a way that it contains subject matter which extends beyond the content of the application as filed.’
[2014] EWCA Civ 40, [2014] RPC 27
England and Wales
Updated: 03 August 2022; Ref: scu.520801
The appeal succeeded. Where there is already a substantial potentiality for confusion of two businesses simply by reason of their being engaged in the same trade, a trader cannot legitimately build on and increase that trade potentiality in such a way that confusion becomes worse confounded. This would amount to passing off.
Oliver LJ said: ‘The question to be asked is, no doubt, in all cases the same – is the get-up, or the method of training’ (sic, presumably this is a misprint for `trading’) ‘or the use of a particular trading name by the defendants calculated to lead to the belief that their business is the plaintiff’s business? But it becomes an extraordinarily difficult question to answer where there is already a substantial potentiality for confusion of the two businesses, simply by reason of their being engaged in the same trade. That does not mean, of course, that a defendant is legitimately entitled to build on and increase that potentiality in such a way that confusion becomes worse confounded, but it does mean that where evidence of actual confusion is tendered it has to be approached … with the caveat that there may well be reasons why it occurs which involve no question of legal liability at all.’
Oliver LJ
[1983] RPC 407
England and Wales
Appeal from – My Kinda Town Ltd v Soll QBD 1982
Although there was no acquiescence on the part of the plaintiffs, such as to have destroyed their rights, the court was not persuaded that, nevertheless, they should be deprived of an injunction. . .
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 . .
mentioned – Devenish Nutrition Ltd v Sanofi-Aventis Sa (France) and others CA 14-Oct-2008
The defendant had been involved in price fixing arrangements, and the claimant sought damages for breach of its proprietary rights. The claimant appealed refusal of an award an account of profits for what was akin to a breach of statutory duty.
Lists of cited by and citing cases may be incomplete.
Updated: 31 July 2022; Ref: scu.258736
Ranbaxy, an importer of generic pharmaceuticals, sought a declaration of non infringement and revocation of EP 1 020 461 owned by AstraZeneca. AstraZeneca counterclaimed for infringement.
Kitchin J discussed the prohibition from patentability any method of treatment of humans or animals, and the attempts to circumvent this by casting therapeutic claims a manufacturing ones, so called Swiss form claims.
Kitchin J
[2011] EWHC 1831 (Pat), [2011] FSR 45
England and Wales
Cited – Eli Lilly v Actavis UK Ltd and Others SC 12-Jul-2017
The issue raised on this appeal and cross-appeal is whether three products manufactured by Actavis would infringe a patent whose proprietor is Lilly, namely European Patent (UK) No 1 313 508, and its corresponding designations in France, Italy and . .
Lists of cited by and citing cases may be incomplete.
Updated: 30 July 2022; Ref: scu.441879
[2009] EWHC 931 (Pat)
England and Wales
Updated: 30 July 2022; Ref: scu.368652
Shutz sued Werit for patent infringement, Delta for patent infringement, trade mark infringement and passing off. Both actions concerned the same subject matter, namely intermediate bulk containers, otherwise known as IBCs, and the same patents. Shutz was the exclusive licensee of the three patents in suit and the second defendant in each case was the registered proprietor and made a party pursuant to section 67(3) of the Patents Act.
Held: The case would proceed by directing that the trade mark and passing off actions be heard separately from the patents claim.
Kitchin J
[2009] EWHC 131 (Pat)
See Also – Schutz (UK) Ltd v Werit UK Ltd and Another PatC 31-Mar-2010
The claimant said that the defendant had infringed its patents regarding containers for the transport of liquids in bulk. The patent provided for a steel cage surrounding a large bottle. The defendant supplied refurbished or replacement bottles. The . .
See Also – Schutz (UK) Ltd v Werit (UK) Ltd CA 29-Mar-2011
. .
See Also – Schutz (UK) Ltd v Werit UK Ltd and Another CA 29-Jul-2011
. .
See Also – Schutz (UK) Ltd v Werit UK Ltd and Another CA 22-Nov-2011
. .
At Patents Court 1 – Schutz (UK) Ltd v Werit (UK) Ltd SC 13-Mar-2013
The parties disputed whether there had been an infringement of the claimant’s patent in respect for ‘intermediate bulk containers’ designed for the safe transport of liquids in bulk. They were a cage holding a plastic bottle. The defendant had a . .
Lists of cited by and citing cases may be incomplete.
Updated: 30 July 2022; Ref: scu.368651
The claimant had accidentally disclosed a confidential document it should not have done. The defendant argued that there had been a waiver of privilege.
Held: Applying Al Fayed, it could not in these circumstances be said that the mistake was obvious.
Mann J
[2007] EWHC 2456 (Ch)
England and Wales
See Also – MMI Research Ltd v Cellxion Ltd and others PatC 22-Aug-2007
Application for unless order as regards defendant’s failure to serve defence. . .
Cited – Mohamad Al Fayed v The Commissioner of Police of the Metropolis CA 29-May-2002
During an action, advice from counsel had been inadvertently disclosed to the claimants. The defendant sought to restrain use of the papers in the trial. It was accepted that the papers attracted legal professional privilege, but the police also . .
Cited – Locabail (UK) Ltd, Regina v Bayfield Properties Ltd CA 17-Nov-1999
Adverse Comments by Judge Need not be Show of Bias
In five cases, leave to appeal was sought on the basis that a party had been refused disqualification of judges on grounds of bias. The court considered the circumstances under which a fear of bias in a court may prove to be well founded: ‘The mere . .
Lists of cited by and citing cases may be incomplete.
Updated: 30 July 2022; Ref: scu.347724
ECJ Trade marks – International registration Protocol Relating to the Madrid Agreement – Regulation (EC) No 40/94 Article 146 – International registration and a Community trade mark having the same effects in the Community Regulation (EC) No 1383/2003 Article 5(4) Goods suspected of infringing a trade mark Customs action Proprietor of a Community trade mark Right to secure action also in Member States other than the Member State in which the application is lodged Extension to the holder of an international registration.
Bonichot P
C-302/08, [2009] EUECJ C-302/08
Regulation (EC) No 40/94, Regulation (EC) No 1383/2003 5(4)
Updated: 30 July 2022; Ref: scu.347541
The claimant challenged the term given extending the defendant’s patent under a Supplementary Protection Certificate.
Roger Wyand QC
[2009] EWHC 659 (Ch)
England and Wales
Updated: 30 July 2022; Ref: scu.347452
[1837] EngR 196, (1837) 8 Car and P 68, (1837) 173 ER 402
England and Wales
Updated: 30 July 2022; Ref: scu.313313
Action for trade mark infringement and passing off – suggestion that goods of such superior quality that no possibility of confusion.
Peter Smith J
[2006] EWHC 1503 (Ch)
England and Wales
See Also – L’Oreal Sa and others v Bellure NV and others ChD 4-Oct-2006
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled.
Held: The . .
See Also – L’Oreal Sa and others v Bellure Nv and others CA 10-Oct-2007
. .
See Also – L’Oreal SA, Lancome parfums et beaute and Cie, Laboratoires Garnier and Cie v Bellure NV, Malaika Investments Ltd, Starion International Ltd ECJ 18-Jun-2009
loreal_bellureECJ2009
ECJ Approximation of laws – Trade marks Directive 98/104/EEC Article 5(1)(a) – Use of another person’s trade mark for identical goods in comparative advertising Article 5(2) – Unfair advantage taken of the . .
See Also – L’Oreal Sa and Others v Bellure Nv and Others CA 21-May-2010
The claimant, manufacturers of perfumes, complained that the defendants, manufacturers of smell-alike products, were in breach of the Directive in marketing their products using lists which identified those of the claimants products to which they . .
Lists of cited by and citing cases may be incomplete.
Updated: 30 July 2022; Ref: scu.263669
ECJ Failure of a Member State to fulfil obligations – Directive 92/100/EEC – Copyright – Exclusive right to authorise or prohibit rental and lending – Incorrect transposition.
[2006] EUECJ C-61/05
European
Updated: 28 July 2022; Ref: scu.243104
The claimant sought an order to restrict the defendant and other unknown defendants from publishing confidential details of the book it was about to publish from the Harry Potter series.
Held: Whilst: ‘I think it would be preferable for the issue of John Doe orders to be the subject of mature reflection, which is not possible in an application like this, which is done at great speed and without the benefit of submissions on both sides.
Nevertheless, for the reasons that I have indicated, I do not think it is outside the court’s power to grant injunctive relief against parties who are not identified by name, but who are known to exist and who will not be in any doubt that the order is directed at them.
Furthermore, if such an order is made, it seems to me it will be effective once brought to the attention, not only of the person (or persons) directly offering this stolen volume for sale, but all those, who knowing of the order, assist in attempts to sell it. ‘
Laddie J
[2003] EWHC 1087 (Ch)
England and Wales
Cited – Acrow (Automation) Ltd v Rex Chainbelt Inc 1971
A person not party to proceedings, but who knows of an order made in them, and assists in its breach or nullifies the purpose of a trial may be liable for contempt. . .
Cited – Tony Blain Pty Ltd v Splain 1994
(High Court of New Zealand) Complaint was made the possible sales of products infringing the plaintiffs’ ‘Metallica’ property rights. The court was asked to make an order against unknown defendants.
Held: Anderson J discussed the correct . .
Cited – EMI Recurds v Kudhail CA 1985
An order was sought against the defendasnt and unnamed defendants involved in copyright piracy.
Held: The court was prepared to make an order against the named defendant on his own behalf and as representing all other persons engaged in the . .
Lists of cited by and citing cases may be incomplete.
Updated: 28 July 2022; Ref: scu.227067
A claim was made on the one hand for a patent infringement, and on the other it was challenged. The patent related to recombinant erythropoietin.
Held: The claim 19 was invalid (for insufficiency) but that claim 26 was valid and infringed.
The Hon Mr Justice Neuberger
[2002] EWHC 471 (Patents)
England and Wales
Appeal from – Kirin Amgen Inc and others v Hoechst Marion Roussel Ltd and others CA 31-Jul-2002
The claimants sought damages for infringement of their patent. The defendants denied infringement, and sought a revocation of the patent.
Held: The patent concerned gene technology. Although an error had been made, the patent was valid, since . .
At First Instance – 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 . .
Lists of cited by and citing cases may be incomplete.
Updated: 28 July 2022; Ref: scu.170015
[2000] IP and T 1076, [2001] RPC 7
England and Wales
Cited – Rocky Mountain Traders Limited and Hewlett Packard Gmbh; Westcoast Limited and Fellowes Manufacturing (UK) Limited CA 20-Dec-2000
The claimant appealed an order finding its patents for mechanisms for labelling CDs invalid for obviousness.
Held: the judge had applied the correct tests for obviousness, and the view taken by the judge of the expert evidence was not open to . .
Appeal from – Wheatley, Bortec Limited v Drillsafe Limited, Force Group Services Plc, Foster, Foster, Carter, Davies CA 25-Jul-2000
In a claim for infringement of a patent, where variations on a patent were to be considered, the court should look to the three tests set down in Improver (‘the Protocal questions’), and the claim should be interpreted in a purposive and contextual . .
Appeal from – Wheatley and Another v Drillsafe Ltd and Others CA 5-Jul-2000
Appeal against declaration of patent invalidity. . .
Lists of cited by and citing cases may be incomplete.
Updated: 28 July 2022; Ref: scu.135853
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 on the ground, inter alia, that it was incapable of distinguishing the goods concerned from those of other undertakings and devoid of any distinctive character, and that it consisted exclusively of a shape which was necessary to obtain a technical result.
Mr Justice Jacob
Times 02-Feb-1998, [1998] RPC 283
England and Wales
Appeal from – Philips Electronics Nv v Remington Consumer Products Limited CA 5-May-1999
The court referred to the European Court of Justice the question of whether the arrangement of three heads on a razor was functional, and so was not capable of protection as a trade mark. . .
Mentioned – 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 . .
See Also – Koninklijke Philips Electronics Nv v Remington Consumer Products Ltd and Another CA 26-Jan-2006
The court was asked whether a trade mark consisting of the shape of goods (a three headed rotary electric shaver) could be valid. In earlier proceedings a representation had been found incapable of registration representing only the function of the . .
Cited – 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 . .
Lists of cited by and citing cases may be incomplete.
Updated: 28 July 2022; Ref: scu.84710
Mr Justice Miles
[2021] EWHC 90 (Ch)
England and Wales
Updated: 28 July 2022; Ref: scu.657513
Where a party has been given a right by convention to sue in a Convention country, he is not to be disentitled from so doing, but where the facts only allowed an inference of infringement by a co-infringer this was insufficient to found jurisdiction.
Times 01-Mar-1999
European Patents Convention 1973
England and Wales
Updated: 28 July 2022; Ref: scu.89171
The comptroller said that the respondent had misled rights holders into believing ithad some connection with the Intellectual Property Office.
Hacon HHJ
[2015] EWHC 3256 (IPEC)
England and Wales
Updated: 28 July 2022; Ref: scu.554528
[2015] EWHC 2737 (IPEC)
England and Wales
Updated: 28 July 2022; Ref: scu.554085
[2015] EWHC 2972 (IPEC)
England and Wales
Updated: 28 July 2022; Ref: scu.554084
(Judgment) Community trade mark – Application for a Community trade mark consisting of two parallel stripes on the long sleeves of a shirt – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009
T-63/15, [2015] EUECJ T-63/15, ECLI:EU:T:2015:972
European
Updated: 28 July 2022; Ref: scu.557031
Dispute as to damages for infringement of copyright in photographic images copied from the claimant’s website and used on that of the defendant.
Hacon HHJ
[2015] EWHC 2608 (IPEC)
England and Wales
Updated: 28 July 2022; Ref: scu.552357
[2015] UKIntelP o41415
England and Wales
Updated: 28 July 2022; Ref: scu.552463
Action for infringement of copyright in certain artistic works, and for infringement of United Kingdom registered design no. 4 010 499. The Claimant’s complaint concerns bed linen sets marketed by the First Defendant.
Douglas Campbell HHJ
[2015] EWHC 2888 (IPEC)
England and Wales
Updated: 28 July 2022; Ref: scu.554233
[2015] UKIntelP o41515
England and Wales
Updated: 28 July 2022; Ref: scu.552461
[2015] UKIntelP o16015
England and Wales
Updated: 28 July 2022; Ref: scu.545563
Inquiry into damages after finding of infringement of unregistered EU design right.
Hacon J
[2015] EWHC 1372 (IPEC)
England and Wales
Updated: 28 July 2022; Ref: scu.546854
The claimant alleged infringement of his tableware design by the defendant as an infringement of copyright..
Hacon J
[2015] EWHC 1242 (IPEC)
England and Wales
Updated: 28 July 2022; Ref: scu.546833
[2015] UKIntelP o12715
England and Wales
Updated: 28 July 2022; Ref: scu.545540
[2015] UKIntelP o08815
England and Wales
Updated: 28 July 2022; Ref: scu.545525
[2015] UKIntelP o13115
England and Wales
Updated: 28 July 2022; Ref: scu.545546
[2015] UKIntelP o15915
England and Wales
Updated: 28 July 2022; Ref: scu.545562
[2015] UKIntelP o13615
England and Wales
Updated: 28 July 2022; Ref: scu.545547
Application for summary judgment or alternatively judgment on admissions in an action for infringement of trade marks and passing off. The defendant (‘Buyology’) admits infringement. At the hearing judgment on admissions was not resisted. The single point at issue was whether the relief granted should include an order for disclosure in the form granted in Norwich Pharmacal.
Hacon J
[2014] EWHC 2221 (IPEC)
England and Wales
Updated: 28 July 2022; Ref: scu.533825
Inquiry as to damages after findings as to infringement of registered design.
Hacon J
[2014] EWHC 1931 (IPEC)
England and Wales
Updated: 28 July 2022; Ref: scu.526581
The parties disputed the use of a trademark on goods imported from Hong Kong.
Hacon J
[2014] EWHC 1499 (IPEC)
England and Wales
Updated: 28 July 2022; Ref: scu.525475
The claimant asserted passing off and trade mark infringement by the defendant in respect of its own hair oil product and the defendant’s sale of ‘Miracle Oil’. The defendant counterclaimed in a threat action.
Hacon J
[2014] EWHC 1686 (IPEC)
England and Wales
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 – Reckitt and Coleman Properties Ltd v Borden Inc HL 1990
The plaintiffs claimed passing off of their ‘Jif Lemon’ trading style.
Held: It is no defence to an allegation of passing off that members of the public would not be misled if they were more literate, careful, perspicacious, wary or prudent. . .
Cited – Neutrogena Coroporation v Golden Ltd CA 1996
The court discussd the ‘substantial proportion of the public’ test applied in passing off. The purpose of this evidence was to provide real evidence from ordinary members of the public wholly untainted by any artificiality. . .
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Cited – Phones4U Ltd and Another v Phone4u.Co.UK and others CA 19-May-2006
Mobile phone companies brought claims of passing off and trade mark infringement by the defendant who had registered internet domain names in the same year as the claimants first registered their own names. The defendant appealed a finding that at . .
Cited – OCH-Ziff Management Europe Ltd and Another v OCH Capital Llp and Another ChD 20-Oct-2010
The court considered the vaule of evidence of ‘initial interest’ confusion in passing off and trade mark infringement cases. . .
Lists of cited by and citing cases may be incomplete.
Updated: 28 July 2022; Ref: scu.526068
ECFI Community trade mark – Invalidity proceedings – Community word mark Simca – Bad Faith – Article 52, paragraph 1 b) of Regulation (EC) No 207/2009
MM Dittrich P
T-327/12, [2014] EUECJ T-327/12
European
Updated: 28 July 2022; Ref: scu.525450
[2014] EWHC 99 (IPEC)
England and Wales
Updated: 28 July 2022; Ref: scu.522105