Trial of a preliminary issue concerning the alleged infringement of registered and unregistered design rights in motorised wheelbarrows
Roth J
[2013] EWHC 74 (Ch)
England and Wales
Updated: 28 July 2022; Ref: scu.470558
Application GB1005762.8 was filed on 7 April 2010 in the name of Kevin McIntyre and was published on 1 December 2010. The application proceeded until 17 May 2011, when the Office sent the applicant a reminder to his registered address for service in the UK (the applicant being resident in Australia) that if he wished to continue with the application, the request for a substantive examination should be filed on a Patents Form 10 with the prescribed fee on or before 1 June 2011, unless a request to extend that time by two months was made at additional cost. The Form 10 was not filed by the due or extended date and was duly terminated with effect from 2 June 2011. On 19 December 2011 the applicant rang the Office to enquire as to the status of the application. He was advised that it was terminated but that he could file for reinstatement if he did so by 20 February 2012. On 1 March 2012 the Office received by fax a Patents Form 14 along with its prescribed fee and an accompanying letter explaining the circumstances surrounding the lapse of the application, which included the reason that he had not received any correspondence relating the application from his UK address for service.
On 7 March 2012 the Office wrote via email to Mr McIntyre saying that based on the evidence he had filed to date, the case for reinstatement of the application had not been satisfactorily made because the request to reinstate the application was not filed in the time prescribed by rule 32(2)(a) – i.e. within two months from the date on which the cause of non compliance had been removed. Further evidence was subsequently filed, including evidence of the applicant’s medical conditions. However, the official objections were maintained and a telephone hearing with the applicant’s representative in Australia was held. At the hearing the HO heard further submissions on the applicant’s medical condition and how it affected his ability to remember and retain information. The HO allowed further time for evidence clarifying details surrounding a second phone call the applicant is said to have made to the Office. That further evidence when filed showed that Mr McIntyre had phoned the Office again on 5 January 2012 and had understood from that phone call that he had a two months from the date of that call in which to file his reinstatement application.
The HO held that as a result of the applicant not receiving his official correspondence, the application had lapsed and that therefore the cause of the non compliance was essentially that he did not know what he had to do to proceed with his application or by when he had to do it. Rule 32(2) (a) requires that the reinstatement is filed within two months of the removal of the cause of the non compliance. As such Mr McIntyre had originally been told he had until 20 February 2012 in which to file his reinstatement based on his first phone call to the Office on 19 December 2011 – that date having been taken to be the date on which the cause of his non compliance had been removed. The HO held that the applicant’s medical condition had contributed to his forgetting that date to the effect that the removal of the cause of his non compliance had not actually occurred until 5 January 2012 when he rang the office for a second time. As such, the filing of the reinstatement on 1 March 2012 had been made within the time prescribed by r.32(2)(a). The HO went on to decide that the failure to comply had been unintentional under the terms of Section 20(A) and as such, he ordered that the application be reinstated.
[2012] UKIntelP o47512
England and Wales
Updated: 28 July 2022; Ref: scu.467724
The application relates to a method of managing, maintaining and storing process models associated with a control routine in a process control system. A process model is described as being a representation of the dynamic relationship between process inputs and outputs, and can be used to directly generate the necessary control routine in a computer-control system. A process model can be ‘tuned’ over time such that it better represents the process under control and the conditions of the system at a particular point in time. These ‘tuned’ process models can be stored so that the control system can learn from previous experience, i.e. the control system can select from a list of process models the one most suited to the particular condition of the system. In a real-time system the number of process models may grow without bounds, although the rate of growth will be process dependent. The invention is concerned with limiting the number of process models stored in memory and thereby speeding up the process of selecting the most appropriate process model. The hearing officer found that the contribution was technical in that it related to a better way of controlling an industrial process. The application was remitted to the examiner for grant.
Mr H Jones
[2012] UKIntelP o43812
England and Wales
Updated: 28 July 2022; Ref: scu.466494
[2010] EWHC 976 (Pat)
England and Wales
Updated: 28 July 2022; Ref: scu.416813
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 could be regarded as having a limited degree of confidentiality even though it could be ascertained from public domain sources. He also separately discussed the question whether a court had power to grant an injunction to prevent a defendant from benefiting from a past misuse of confidential information even at a time when the information has ceased to be confidential.
Arnold J
[2009] EWHC 1456 (Ch), [2010] FSR 2
England and Wales
See Also – Vestergaard Frandsen As and Another v Bestnet Europe Ltd and Others ChD 3-Apr-2009
The claimant companies alleged misuse of trade secrets acquired by the defendants through former employees. . .
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 – Universal Thermosensors Ltd v Hibben and Others ChD 8-Jul-1992
After complex litigation, the remaining issues were a claim for damages by the claimant in respect of the defendant’s misuse of confidential information and a counterclaim by the defendants for loss falling within the claimant’s cross-undertaking in . .
Explained – Schering Chemicals Ltd v Falkman Ltd CA 1982
The Defendants’ professional skills were engaged to present the plaintiff company in a good light, and an injunction was granted to restrain them from doing the opposite. Sach LJ said: ‘even in the commercial field, ethics and good faith are not to . .
Cited – British Broadcasting Corporation v Harpercollins Publishers Ltd and Another ChD 4-Oct-2010
The claimant sought an injunction and damages to prevent the defendant publishing a book identifying himself as ‘the Stig’ saying that this broke his undertaking of confidentialty as to his identity, a necessary part of the character in the TV . .
Appeal From – 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 . .
Appeal from – 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 ChD – 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.
Updated: 28 July 2022; Ref: scu.347269
Whether the presence and appearance of the term ‘vet.local’ in certain aspects of the Claimant’s computer systems infringes the Defendant’s registered trade mark
[2007] EWHC 3061 (Ch)
England and Wales
Updated: 28 July 2022; Ref: scu.262965
Action to require Google to yield up address of advertiser providing link to a web-site which allowed download of infringing coipies of claimant’s book. Settled by consent.
Rimer J
[2005] EWHC 3444 (Ch)
England and Wales
Updated: 28 July 2022; Ref: scu.263695
Lewison J
[2007] EWHC 900 (Ch)
England and Wales
Updated: 28 July 2022; Ref: scu.263650
Application for interim injunction to restrain claimed patent infringement.
Patten J
[2007] EWHC 2405 (Ch)
England and Wales
Updated: 28 July 2022; Ref: scu.263651
[2008] EWCA Civ 192
England and Wales
Updated: 28 July 2022; Ref: scu.266386
[2006] EWHC 335 (Ch)
England and Wales
Updated: 28 July 2022; Ref: scu.263665
The claimant asserted that the defendant had infringed its goodwill in the name ‘Hot Picks’ the defendant argued that it was licensed to use the mark by the person who applied for its registration as a trade mark, and that the claim in passing off arose from the defendant’s own illegal act, and should be rejected.
Held: Registered trade marks, like all other statutory intellectual property rights do not give a right to the proprietor to use, but give him the right to exclude others from using. The owner of the registered trade mark does not have an entitlement to use his mark in the face of earlier competing rights owned by someone else. Nor could it be said that Inter Lotto’s action was so base as to prevent an action.
The Hon Mr Justice Laddie
[2003] EWHC 1256 (Ch)
England and Wales
Cited – ICI v Berk 1981
A party wished to assert that a claim in passing off should not proceed because of some illegality.
Held: There has to be a nexus between the illegality and the claim for passing off. . .
Cited – Perry v Truefitt CA 8-Dec-1842
The court considered the nature of the tort of passing off. ‘I think that the principle on which both the courts of law and of equity proceed, in granting relief and protection in cases of this sort, is very well understood. A man is not to sell his . .
Cited – Burberry’s v Cording 1900
Discussing the tort of passing off the court said: ‘The principles of law applicable to a case of this sort are well known. On the one hand, apart from the law as to trade marks, no one can claim monopoly rights in the use of a word or name. On the . .
Cited – Millington v Fox 23-Jan-1938
To establish passing off, it was no longer necessary to establish fraud in the use of a trading name, and it became dependent upon proof, inter alia, of misrepresentation. . .
Cited – Orr Ewing v Registrar of Trade Marks HL 1879
In respect of trade marks which were in use before the 1875 Act but in respect of which registration had been refused, the common law action for infringement of the unregistered mark continued: ‘if the proprietor of a trade mark in use before the . .
Cited – Mitchell v Henry 1880
Passing off actions remained unaffected by the passing of the 1875 Act. . .
Cited – Montgomery v Thompson HL 1891
Thompson had registered Stone Ale as a trade mark. He had sued the plaintiff, his competitor and the said mark was removed from the register. Nevertheless Thompson succeeded in an action to restrain Mr Montgomery from using the mark in relation to . .
Cited – Faulder and Co Ltd v Rushton 1903
The court discussed the relationship between an action for trade mark infringement, and for passing off: ‘when an injunction is granted to restrain the use of a mark calculated to pass off the defendant’s goods as those of the plaintiff, by reason . .
Cited – Saville Perfumery Ltd v June Perfect Ltd CA 1941
Lord Greene MR said: ‘It does not necessarily follow that a trader who uses an infringing mark upon goods is also guilty of passing-off. The reason is that in the matter of infringement, as I have already pointed out, once a mark is used as . .
Cited – Re Lyle and Kinahan Ltd’s Application CA 1907
Buckley LJ said: ‘The registration of a trade mark does not confer any right at all of the description there pointed to, but it does confer a right, and the only right is the right to prevent anybody else from using that trade mark for their goods, . .
Cited – Leather Cloth Co Ltd v American Leather Cloth Co Ltd HL 1-Feb-1865
Where an individual works in a partnership the goodwill generated by his acts will in the normal course vest in the partnership.
Lord Kingsdown said: ‘Nobody doubts that a trader may be guilty of such misrepresentations with regard to his . .
Lists of cited by and citing cases may be incomplete.
Updated: 28 July 2022; Ref: scu.183285
Re-distilled whisky may not be called ‘whisky’ when re-sold – not as defined.
Times 01-Apr-1997
England and Wales
See Also – The Scotch Whisky Association v Kella Distillers Ltd ChD 27-Dec-1996
A judge has no power at an interlocutory stage to order the editing of an expert’s report. . .
See Also – The Scotch Whisky Association v Kella Distillers Ltd ChD 27-Dec-1996
A judge has no power at an interlocutory stage to order the editing of an expert’s report. . .
Lists of cited by and citing cases may be incomplete.
Updated: 28 July 2022; Ref: scu.89057
Re-distilled whiskey may not be called ‘whiskey’ when re-sold- not as defined
Gazette 23-Apr-1997
England and Wales
Updated: 28 July 2022; Ref: scu.89056
Application to strike out part of the claimant’s case in a damages inquiry in a patent action.
Birss J
[2020] EWHC 2941 (Pat)
England and Wales
Updated: 28 July 2022; Ref: scu.657794
[2021] EWHC 118 (Ch)
England and Wales
Updated: 28 July 2022; Ref: scu.657511
(Judgment) Community trade mark – Application for a Community trade mark consisting of two parallel stripes on pants – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009
T-64/15, [2015] EUECJ T-64/15, ECLI:EU:T:2015:973
European
Updated: 26 July 2022; Ref: scu.557032
(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
F-101/14, [2015] EUECJ F-101/14, ECLI:EU:T:2015:972
European
Updated: 26 July 2022; Ref: scu.556997
Hacon HHJ
[2014] EWHC 3234 (IPEC)
England and Wales
Updated: 26 July 2022; Ref: scu.537493
[2013] UKIntelP o13813
England and Wales
Updated: 26 July 2022; Ref: scu.511168
[2010] UKIntelP o12610
England and Wales
Updated: 26 July 2022; Ref: scu.457930
[2012] UKIntelP o20412
England and Wales
Updated: 26 July 2022; Ref: scu.465217
PO Patents – Inter Partes Decisions
The disputed patent relates to a pile driving device to be fixed to a conventional excavator rather than requiring a dedicated pile driving machine. A previous device of this sort, which relied on a single gripper that could be rotated so as to grip a pile either from the side or from the end, was prone to failure. The device disclosed in the patent improved reliability by having separate side and end grippers, and the proceedings had been conducted initially as though this was the only inventive concept. However, the device also had an improved mechanism for operating the gripper jaws, and by the time of the hearing the parties had recognised that this had to be considered too.
The Hearing Officer rejected the evidence of several witnesses on the grounds that cross examination had shown them to be unreliable. On the basis of the remaining evidence, whilst both companies had collaborated in the development of the device, the Hearing Officer found that the idea of separate side and end grippers had come from one, though not both, of the inventors named in the patent. As he was an employee of Expotech’s predecessor in title, this inventive concept belonged to Expotech. However, the Hearing Officer found that it was Mr Elliott, an employee of BSP, who had come up with the improved jaw-operating mechanism, and so this inventive concept belonged to BSP.
The Hearing Officer therefore found the parties to be entitled in principle to joint ownership of the patent. Recognising the unsatisfactory nature of joint ownership, particularly where the parties are in dispute, he allowed the parties two months to try and negotiate an alternative arrangement.
Mr Hayward
[2004] UKIntelP o09504
England and Wales
Updated: 26 July 2022; Ref: scu.455907
An uncontested application was filed by JTEKT Corporation, Koyo Machine Industries Co Ltd, Togo Seisakusyo Corporation and Nissan Motor Co Ltd. As a result, it was found that Tadakatsu Take should be named as a joint inventor along with the five currently named inventors. It was also directed that an addendum slip mentioning Tadakatsu Take as a joint inventor be prepared for the granted patent for the invention.
Mrs S Williams
[2012] UKIntelP o09512
England and Wales
Updated: 26 July 2022; Ref: scu.460036
Judge Hodge QC
[2012] EWHC 348 (Ch)
England and Wales
Updated: 26 July 2022; Ref: scu.451851
Warren J
[2012] EWHC 446 (Ch)
England and Wales
Updated: 26 July 2022; Ref: scu.451848
Ward, Patten LJJ, sir Robin Jacob
[2011] EWCA Civ 927
England and Wales
See Also – Schutz (UK) Ltd v Werit UK PatC 23-Jan-2009
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. . .
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
. .
Cited – United Wire Ltd v Screen Repair Services (Scotland) Ltd HL 21-Jul-2000
The patentees had two patents relating to parts of oil rigs, coming into play to clean drill bits of cuttings on retraction. The defendants sold re-conditioned frames for this process.
Held: Where the apparent exercise of a right of repair . .
Lists of cited by and citing cases may be incomplete.
Updated: 26 July 2022; Ref: scu.443233
[2009] EWHC 1160 (Pat)
England and Wales
Updated: 26 July 2022; Ref: scu.346894
[2009] EWHC 1312 (Pat)
England and Wales
Updated: 26 July 2022; Ref: scu.346926
Appeal from finding that a patent was valid but had not been infringed
Waller, Jacob LJJ
[2009] EWCA Civ 498
England and Wales
Updated: 26 July 2022; Ref: scu.346908
ECFI Community trade mark applications Community word marks P @ YWEB CARD and CARD PAYWEB absolute ground for refusal Partial lack of distinctiveness Article 7, paragraph 1 b) of Regulation (EC) No 40/94
T-406/07, [2009] EUECJ T-406/07
England and Wales
See Also – Federal cash Credit Mutuel Centre Est Europe v OHMIi (P@Yweb Card) T-405/07 ECFI 20-May-2009
ECJ Community trade mark applications Community word marks P @ YWEB CARD and CARD PAYWEB absolute ground for refusal Partial lack of distinctiveness Article 7, paragraph 1 b) of Regulation (EC) No 40/94 . .
Lists of cited by and citing cases may be incomplete.
Updated: 26 July 2022; Ref: scu.346693
ECJ Community trade mark applications Community word marks P @ YWEB CARD and CARD PAYWEB absolute ground for refusal Partial lack of distinctiveness Article 7, paragraph 1 b) of Regulation (EC) No 40/94
T-405/07, [2009] EUECJ T-405/07
European
See Also – CFCMCEE v OHMI (P@Yweb Card) T-406/07 ECFI 20-May-2009
ECFI Community trade mark applications Community word marks P @ YWEB CARD and CARD PAYWEB absolute ground for refusal Partial lack of distinctiveness Article 7, paragraph 1 b) of Regulation (EC) No 40/94 . .
Lists of cited by and citing cases may be incomplete.
Updated: 26 July 2022; Ref: scu.346692
Jacob, Richards, Sullivan LJJ
[2009] EWCA Civ 408, [2009] Bus LR D117, [2009] Info TLR 88
England and Wales
Appeal from – Aerotel Ltd v Wavecrest Group Enterprises Ltd and others PatC 14-May-2008
Patent invalid. . .
See Also – Aerotel Ltd v Wavecrest Group Enterprises Ltd and others PatC 23-May-2008
. .
Lists of cited by and citing cases may be incomplete.
Updated: 26 July 2022; Ref: scu.346212
ECFI Community trade mark – Community word mark AURELIA – Failure to pay renewal fee – Removal of trade mark from register on expiry of registration Application for restitutio in integrum.
T-136/08, [2009] EUECJ T-136/08
Updated: 26 July 2022; Ref: scu.346193
[2009] EWHC 656 (Pat)
Reference From – Synthon v Merz Pharma Gmbh and Co Kg ECJ 15-Aug-2009
ECJ Statement of questions referred (Patents) . .
Lists of cited by and citing cases may be incomplete.
Updated: 26 July 2022; Ref: scu.344038
[2009] EWHC 996 (Pat)
England and Wales
Appeal from – Leo Pharma (A/S Leo Laboratories Ltd) v Sandoz Ltd CA 17-Nov-2009
Validity of patent . .
Lists of cited by and citing cases may be incomplete.
Updated: 26 July 2022; Ref: scu.344039
ECJ Community trade mark Opposition proceedings Application for Community figurative trade mark MEZZOPANE Earlier national word marks MEZZO and MEZZOMIX Article 8(1)(b) of Regulation (EC) No 40/94 No likelihood of confusion.
T-175/06, [2008] EUECJ T-175/06
European
Updated: 26 July 2022; Ref: scu.270307
Norris J
[2007] EWHC 3137 (Ch)
England and Wales
Updated: 26 July 2022; Ref: scu.263655
(New Zealand) B agreed to license manufacture and distribute N’s veterinary treatment in New Zealand. They agreed for confidentiality of the information disclosed to B. The distributorship was to be ended, and B sought to engage another party to manufacture a similar preparation. In the course of arranging this, it was said to have disclosed essential and confidential. The appeal was against a ruling that the respondent had not broken its agreement with regard to the confidential information.
Held: The appeal succeeded. Though the defendant may have thought the information not confidential, it was in fact – not having been made public.
Lord Bingham of Cornhill, Lord Hope of Craighead, Lord Carswell, Lord Mance, Sir Martin Nourse
[2006] UKPC 25
Commonwealth
Updated: 26 July 2022; Ref: scu.241472
(Free Movement Of Goods ) Copyright – Different protection periods.
R-341/87, [1989] EUECJ R-341/87
European
Updated: 26 July 2022; Ref: scu.215663
Inquiry as to damages after patent infringement.
The Hon Mr Justice Jacob
[2003] EWHC 1892 (Patent)
England and Wales
Updated: 26 July 2022; Ref: scu.185231
Still photographs had been taken of a forthcoming film, which the producers had taken steps to keep confidential.
Held: A chancery judge may grant an injunction to restrain the publication of photographs taken surreptitiously in circumstances such that the photographer is to be taken to have known that the occasion was a private one and that the taking of photographs by outsiders was not permitted.
Mr Martin Mann QC said: ‘whether or not equity imposes an obligation to keep information confidential depends upon a great many factors often unique to the case in which it is said to do so. However, most cases will have certain common constituents, namely, the existence of a body of information which a plaintiff wishes to keep confidential for the protection of some lawful interest of his, a defendant coming into possession of such information in circumstances in which he actually knows (or is fixed by operation of law with knowledge of) or ought as a reasonable person to know the plaintiff intends to be kept confidential, a detriment actual or potential to the plaintiff from publication, the non-availability of such information to the public and the absence of any public interest in disclosure.’
Mr Martin Mann QC
[1994] EMLR 134
England and Wales
Cited – Douglas etc v Hello! Ltd etc ChD 11-Apr-2003
The claimants were to be married. They sold the rights to publish photographs of their wedding, but various of the defendants took and published unauthorised pictures.
Held: The claimants had gone to lengths to ensure the commercial value of . .
Cited – Douglas and others v Hello! Ltd and others (No 3) CA 18-May-2005
The principal claimants sold the rights to take photographs of their wedding to a co-claimant magazine (OK). Persons acting on behalf of the defendants took unauthorised photographs which the defendants published. The claimants had retained joint . .
Lists of cited by and citing cases may be incomplete.
Updated: 26 July 2022; Ref: scu.181407
The plaintiff sold television entertainment through subscriptions. The broadcasts were protected by encryption. The defendant sold equipment which could unscramble the broadcasts. They were sued under the section. At first instance, the claim was struck out.
Held: Programmes were received under the terms of the licence granted by the broadcaster. Those who had not paid were not so licensed, and the receptions were unlawful. Those who sold equipment designed to achieve this were acting in breach of the section. The claim was to proceed.
cw Copyright – Broadcast – Unauthorised reception – Encrypted satellite transmission of television programmes – Sale of unauthorised decoders – Whether sale to persons ‘entitled’ to receive programme
Beldam LJ said: ‘I approach the construction of s 298 with these considerations in mind. The rights and remedies which are given are clearly intended to be in addition to the rights which a copyright owner has in respect of an infringement of copyright. A person who makes charges for the reception of programmes included in a broadcast may or may not be the person who is entitled to rights as a copyright owner. The reception of programmes included in a broadcast is not generally speaking an infringement of copyright by itself.’ and ‘Section 298 is intended to give the person who makes charges for the reception of programmes rights and remedies, similar to those of the owner of copyright, against a person who provides decoding equipment which will enable a person to receive the programmes without paying for them. I have no doubt that that is the purpose of the section and that the words ‘when they are not entitled to do so’ mean, as BBC Enterprises contend, ‘when they are not authorized by them to do so’.’
Staughton LJ said: ‘A person who seeks to charge for programmes, or sends encrypted transmissions, has the right not to have others making apparatus or devices designed to be of use to persons not authorized by him to receive the programmes. The remedies for that right are to be the same as those of a copyright owner in respect of an infringement of copyright. It does not seem to me to matter whether the right is proprietary or not; but I do not think that it is, as it is not a right over property, although one remedy available is delivery up or seizure of certain articles.’
Sir Nicolas Browne-Wilkinson V-C, Staughton and Beldam LJJ
[1990] 2 All ER 118, [1990] Ch 609, [1990] 2 WLR 1123, [1990] FSR 217
Copyright Designs and Patents Act 1988 298(2)
England and Wales
Cited – Kirkness v John Hudson and Co Ltd HL 1955
Viscount Simonds said: ‘the beliefs or assumptions of those who frame Acts of Parliament cannot make the law’. While subsequent legislation could resolve ambiguity in earlier legislation, it could only do so where the subject of the subsequent . .
Cited – Fothergill v Monarch Airlines Ltd HL 10-Jul-1980
The plaintiff, on arriving at the airport found that his luggage had been lost. The defendant denied liability saying he had not notified his claim within the requisite period.
Held: Elementary justice requires that the rules by which the . .
Cited – Bradlaugh v Clarke HL 1883
The use of the word ‘like’ is apt to incorporate all the features of the principal subject. . .
Appeal from – BBC Enterprises Ltd v Hi-Tech Xtravision Ltd HL 1991
The BBC’s appeal failed. Section 228 of the 1988 Act is intended to protect those who do no more than re-broadcast or retransmit, while not necessarily being copyright owners of a broadcast in their own right. . .
Lists of cited by and citing cases may be incomplete.
Updated: 25 July 2022; Ref: scu.174137
An authorisation to broadcast sound recording included right to make back up tapes, but not to keep that back up beyond 28 days. Broadcasters are bound by an obligation to destroy copies of material which had been used for broadcast within 28 days unless a licence given otherwise.
Times 14-Jul-1997, Gazette 23-Jul-1997
Copyright Designs and Patents Act 1988 13 68
England and Wales
Appeal from – AEI Rediffusion Music Ltd v Phonographic Performance Ltd CA 1-Feb-1999
The copyright tribunal was given a wide discretion for the awarding of costs on applications made to it for licenses. The nature of the applications and the different basis makes it dangerous to import rules for awards from the general rules on . .
Lists of cited by and citing cases may be incomplete.
Updated: 25 July 2022; Ref: scu.84724
UK has jurisdiction in infringement by foreign bank through the distribution of a loan note.
Times 15-Aug-1996
England and Wales
Updated: 25 July 2022; Ref: scu.77580
The use of an injunction to prevent the use of copyrighted recordings was not to be misused to obtain recovery for past unlicensed playing.
Times 14-Jul-1997
Copyright Designs and Patents Act 1988
England and Wales
Appeal from – Phonographic Performance Limited v Maitra and Others CA 3-Feb-1998
An injunction without time limit should normally be granted immediately where there was clear infringement and a threat of continued infringement. Copyrights can sometimes typically be identified only by reference to the trade marks under which the . .
Lists of cited by and citing cases may be incomplete.
Updated: 25 July 2022; Ref: scu.84726
Local authorities ran classes in which aerobics teachers used music for lessons. No licence was obtained for the performance of the music. They claimed to be ‘a club, society or other organisation the main objects of which were charitable or otherwise concerned with the advancement of religion, education or social welfare.’ In effect this was a claim that a local government was a charity.
Held: The defence could not succeed. The functions of a local authority would not normally be considered charitable. In this context, ‘social welfare’ was an inappropriate expression to describe such activities. Similarly the term ‘organisation’ in the Act, in this particular phrase, was to be read ejusdem generis with the words ‘club’ and ‘society’. It could not apply to a local authority. The function of a local authority is to carry out the administrative and governmental functions, in respect of its area. The legislature had thought it right to devolve those functions from national government. Those functions might include social welfare, but that was not its main purpose.
Neuberger J
Gazette 18-Jan-2001, Times 19-Dec-2000, [2000] EWHC 455 (Ch), [2001] 1 WLR 400, [2001] EMLR 446, [2001] RPC 594
Copyright Designs and Patents Act 1988 67
England and Wales
Updated: 25 July 2022; Ref: scu.84728
(Judgment) Mark of the European Union – Application for verbal mark of the European Union Du bist, was du erlebst. – Absolute grounds for refusal – Trade mark consisting of an advertising slogan – Lack of distinctive character – Article 7, paragraph 1 b) of Regulation (EC) No 207/2009 ‘
T-301/15, [2016] EUECJ T-301/15, ECLI:EU:T:2016:324
European
Updated: 25 July 2022; Ref: scu.564885
ECJ (Judgment) Preliminary reference – Intellectual property – Copyright and related rights – Directive 2001/29 / EC – Article 3, paragraph 1 – Directive 2006/115 / EC – Article 8, paragraph 2 – Concept of ‘communication to the public’ – Installation of television sets by the operator of a rehabilitation center in order to allow patients to watch television programs
C-117/15, [2016] EUECJ C-117/15, ECLI:EU:C:2016:379
European
Updated: 25 July 2022; Ref: scu.564893
ECJ (Judgment) Mark of the European Union – Application for figurative mark of the European Union STONE – Absolute ground for refusal – Descriptive character – Article 7, paragraph 1 c) of Regulation (EC) No 207/2009
T-454/14, [2016] EUECJ T-454/14, ECLI:EU:T:2016:325
European
Updated: 25 July 2022; Ref: scu.564899
Application for interim injunctive relief pending the speedy trial of a claim as to what is said to be confidential information in the nature of trade secrets, although that characterisation is disputed by the defendants; and it is that dispute which lies at the heart of this case.
Hodge QC HHJ
[2013] EWHC 3726 (Ch)
England and Wales
Updated: 25 July 2022; Ref: scu.519660
[2013] EWPCC 8
England and Wales
Updated: 25 July 2022; Ref: scu.471059
Trade Mark: Opposition
[2013] UKIntelP o03913
England and Wales
Updated: 25 July 2022; Ref: scu.472164
ECJ Appeals – Community trade mark – Regulation (EC) No 207/2009 – Article 8(1)(b) – Relative ground for refusal – Likelihood of confusion – Figurative mark – Opposition by the proprietor of an earlier trade mark – Appeal clearly inadmissible and clearly unfounded
U. Lohmus, A P
C-42/12, [2012] EUECJ C-42/12
Regulation (EC) No 207/2009 8(1)(b)
European
Updated: 25 July 2022; Ref: scu.467079
ECFI Community trade mark – Invalidity proceedings – Community word mark Fagumit and Community figurative mark FAGUMIT – Earlier national figurative mark FAGUMIT – Relative ground for invalidity – Article 8(3) and Article 165(4)(b) of Regulation (EC) No 207/2009
NJ Forwood R
T-537/10, [2012] EUECJ T-537/10
European
Updated: 25 July 2022; Ref: scu.466422
ECFI Community trade mark – Opposition proceedings – Application for Community word mark MILRAM – Earlier national figurative and verbal previous RAM – Relative ground for refusal – Similarity of goods and signs – Likelihood of confusion – Article 8, paragraph 1, sub b), Regulation (EC) No 207/2009
T-546/10, [2012] EUECJ T-546/10
European
Updated: 25 July 2022; Ref: scu.459669
IPO The application concerns a game machine involving a simulated race between vehicles or ‘karts’ displayed on a track in a virtual space. When a kart overturns or spins, the computer takes over and shows an animated sequence of steps to place it back on the track facing in the same direction as it was travelling immediately beforehand. This is achieved through a recovery sequence comprising distinct phases during which the kart moves under the influence of different virtual forces. In prior art games the recovery was either not displayed in a seamless manner, or the kart was not re-established on the track in the same direction as it was travelling before the crash. It was decided that the contribution was concerned with how the player object transitions from one game state to another and is realised wholly within the game computer by means which are in practice computer program elements. This was considered to lie wholly within the excluded area of a computer program. An alternative objection that the contribution comprised a scheme method or rule for playing a game was not upheld on the grounds that what the player does (or is able to do or prevented from doing) is no different according to the invention than it is in the prior art.
[2006] UKIntelP o37706
England and Wales
Updated: 25 July 2022; Ref: scu.454944
[2010] UKIntelP o13810
England and Wales
Updated: 25 July 2022; Ref: scu.457964
The invention provided a generator powered by vehicles passing along a road surface. The hearing officer held that the invention was not new and did not involve an inventive step having regard to several prior art documents. Since there was nothing new and inventive in the original disclosure, the hearing officer refused the application.
Mrs S E Chalmers
[2010] UKIntelP o13710
England and Wales
Updated: 25 July 2022; Ref: scu.457944
The invention related to information retrieval and storage by mapping distinct information items to respective nodes in an array of nodes so that similar items mapped to similar positions; for greater awareness of the information associated with selected nodes, selected nodes were displayed together with representations of the information items to which they related. At the hearing the claims were restricted to the information items being video metadata and to the sequential display in time of pictorial representations of the video material to which selected metadata related. Applying the Aerotel/Macrossan test, the hearing officer held that the contribution of the invention lay in associating selected information items with representations thereof rather than in the use of metadata for more effective searching of video material, and did not think there was a new physical combination of hardware representing a new video processing apparatus. He held that the contribution related solely to a computer program or to the presentation of information. Unlike the applicant’s earlier case O/010/07 also relating to video metadata, he could not see any limitation of the claims which might define a contribution not relating solely to excluded matter and therefore refused the application.
[2007] UKIntelP o17407
England and Wales
Updated: 25 July 2022; Ref: scu.456701
ECFI Community trade mark – Opposition proceedings – Application for Community word mark FEMIFERAL – Earlier national Feminatal earlier word and figurative mark feminatal – Relative ground for refusal of signs-Similarity – Likelihood of confusion – Article 8, paragraph 1, sub b) of Regulation (EC) No 207/2009
T-110/11, [2012] EUECJ T-110/11
European
Updated: 25 July 2022; Ref: scu.459662
[2010] UKIntelP o13610
England and Wales
Updated: 25 July 2022; Ref: scu.457965
[2010] UKIntelP o15510
England and Wales
Updated: 25 July 2022; Ref: scu.457938
The application claimed a hierarchical data structure for communicating metadata describing the content of at least one shot of information material between a network of devices interconnected in a data communications network. Applying the test for patentability in Aerotel/Macrossan [2006] EWCA Civ 1371, the hearing officer held that the contribution made by the invention was the provision of a data structure comprising a particular hierarchical structure, and that, since it formed part of the instructions whereby a computer in the network was enabled to interrogate, retrieve and communicate metadata, it was excluded under section 1(2) as relating to a computer program as such. It was therefore unnecessary under Aerotel/Macrossan to consider whether the contribution was technical in nature, even if the data structure had the potential to bring about a technical effect. However, the hearing officer was prepared to allow an alternative set of claims relating to a data communications network incorporating the data structure.
[2007] UKIntelP o01007
England and Wales
Updated: 25 July 2022; Ref: scu.456552
ECFI Community trade mark – Application for the Community word mark CHROMA – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009.
T-281/09, [2010] EUECJ T-281/09
European
Updated: 25 July 2022; Ref: scu.427320
ECFI Community trade mark – Application for Community word mark Hallux – Absolute ground for refusal – Article 7, paragraph 1, sub c) of Regulation (EC) No 40/94 [now Article 7, paragraph 1, sub c) of Regulation (EC) No 207/2009].
T-286/08, [2010] EUECJ T-286/08
European
Updated: 25 July 2022; Ref: scu.427697
ECFI Community trade mark – Invalidity proceedings – Community word marks BOTOLIST and BOTOCYL – Earlier national figurative and word marks BOTOX – Relative ground for refusal – Damage to reputation – Article 8(5) of Regulation (EC) No 40/94 (now Article 8(5) of Regulation (EC) No 207/2009) – Obligation to state the reasons on which the decision is based – Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009).
T-357/08, [2010] EUECJ T-357/08
European
Updated: 25 July 2022; Ref: scu.427722
Application for summary judgment in an action concerning a trade mark licence agreement
Kitchin J
[2010] EWHC 969 (Ch)
England and Wales
Updated: 25 July 2022; Ref: scu.415094
Case management decision in trade mark infringement action, on the extent to which the court should give permission for a survey to be conducted, and for evidence resulting from previous surveys to be admitted.
Held: Mann J gave the claimant permission to administer questionnaires to members of the public in the form attached to the order.
Mann J said: ‘In the case before me, as will appear, it is necessary to bear in mind the juridical basis of what it is that the court is doing when exercising its control. In my view it is doing (at least) the following:
i) So far as a party is going to seek to put expert evidence before the court, the court is exercising its power to control the amount and nature of expert evidence in order to make sure the expert evidence is proper evidence, admissible, and proportionate.
ii) So far as a party seeks to put in the actual answers to questions, the court is ensuring the evidence is admissible and probative.
iii) So far as the court is controlling the calling of live witnesses obtained as a result of some form of survey evidence (so-called witness collection exercises) it is again ensuring that the evidence is admissible and probative. In particular, it is acting to prevent a party seeking to call a witness whose evidence is going to be tainted to an unacceptable degree by the mechanism under which it is collected (an inappropriate question).
iv) In so doing, the court is ensuring that costs are not wasted and are proportionate. It is wrong for costs to be wasted in conducting hopeless surveys, for the other party to have to waste costs dealing with that evidence, and for court time to be wasted in dealing with it at trial.
v) When a court is acting in this capacity it must bear in mind that it is acting at some remove from the trial. If it disallows a survey it is concluding, short of a trial, that evidence which one party wishes to adduce should not be allowed in because it will be of no or insufficient value. In embarking on that exercise it must acknowledge that there will be cases in which it is not wholly clear that the evidence in question will be valueless. In those circumstances the right course may be not to bar the evidence or survey at the interim stage, but to allow it and to have more informed argument at the trial (or conceivably at another interim stage, provided that that is a cost-effective way of going about the matter).’
Mann J
[2011] EWHC 1038 (Ch)
England and Wales
Directions – A and E Television Networks Llc and Another v Discovery Communications Europe Ltd ChD 1-Feb-2013
The claimants had operated the ‘History’ and associated variant TV channels and trade marks. The claimed that the defendant’s ‘Discovery History’ channels were in breach. The defendants challenged the validity of the trade marks. The court now . .
Cited – Marks and Spencer Plc v Interflora Inc and Another CA 20-Nov-2012
The court gave guidance on the use of surveys in trials for passing off and trade mark infringement.
Lewison LJ reviewed the practice of conducting interviews and surveys in passing off cases: ‘The upshot of this review is that courts have . .
Lists of cited by and citing cases may be incomplete.
Updated: 25 July 2022; Ref: scu.434878
Norris J
[2011] EWHC 1036 (Ch)
England and Wales
Updated: 25 July 2022; Ref: scu.434888
Arnold J
[2015] EWHC 17 (Ch)
England and Wales
Updated: 25 July 2022; Ref: scu.541367
ECJ Community trade mark – Application for a three-dimensional Community trade mark Shape of an arrangement of sausages Absolute ground for refusal Lack of distinctive character Article 7(1)(b) of Regulation (EC) No 40/94.
T-449/07, [2009] EUECJ T-449/07
Updated: 24 July 2022; Ref: scu.342057
ECJ Community trade mark – Application for the Community figurative mark – Absolute ground for refusal Distinctive character Article 7(1)(b) of Regulation (EC) No 40/94
T-23/07, [2009] EUECJ T-23/07
European
Updated: 24 July 2022; Ref: scu.342019
ECJ Directive 89/104/EEC – Trade-mark law Exhaustion of the rights of the proprietor of the trade mark – Licence agreement – Sale of goods bearing the trade mark in disregard of a clause in the licence agreement – No consent of the proprietor of the mark – Sale to discount stores – Damage to the reputation of the trade mark.
C-59/08, [2009] EUECJ C-59/08, [2009] ECR I-0000
Cited – L’Oreal Sa and Others v Ebay International Ag and Others ChD 22-May-2009
The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site.
Held: The ECJ had not yet clarified the law on accessory liability in trade mark . .
Lists of cited by and citing cases may be incomplete.
Updated: 24 July 2022; Ref: scu.342026
(Ontario) Copyright protection was asserted on in connection with the title to a film (‘The Man Who Broke the Bank at Monte Carlo’).
Held: It was not a literary work capable of attracting copyright protection. As a rule, such titles do not involve literary composition, and will not be sufficiently substantial to justify claims of copyright infringement.
As a rule, a title does not involve literary composition, and is not sufficiently substantial to justify a claim to protection. That statement does not mean that in particular cases a title may not be on so extensive a scale, and of so important a character, as to be a proper subject of protection against being copied. As Jessel MR said in Dick v Yates . . there may be copyright in a title ‘as, for instance, in a whole page of title of something of that kind requiring invention’.
Thankerton, Russell of Killowen, Wright, Romer LL, Sir Lyman Poore Duff (CJ Canada)
[1940] AC 112, [1939] UKPC 68, [1939] 4 All ER 192
Canada
Cited – The Newspaper Licensing Agency Ltd and Others v Meltwater Holding Bv and Others ChD 26-Nov-2010
The claimant newspapers complained of the spidering of the web-sites and redistribution of the materials collected by the defendants to its subscribers. The defendants including the Public Relations Consultants Association (PRCA) denied that they . .
Cited – The Newspaper Licensing Agency Ltd and Others v Meltwater Holding Bv and Others CA 27-Jul-2011
The defendant companies provided media monitoring services, automatically searching web-sites for terms of interest. The claimant newspapers operated a licensing system through the first claimant permitting the re-use of the content on its members . .
Cited – Green v Broadcasting Corporation of New Zealand 22-Sep-1988
(Court of Appeal of New Zealand) The plaintiff had created a hugely sucessful TV programme in the UK, called Opportunity Knocks. He now appealed against rejection of his claim in copyright alleging that the defendant had copied the format, and also . .
Cited – Green v Broadcasting Corporation of New Zealand PC 18-Jul-1989
Format of TV show not copyrightable
Court of Appeal of New Zealand – The plaintiff had developed the program ‘Opportunity Knocks’ on British television. He claimed copyright in the general structure or format of a similar television programme in New Zealand, and also in passing off. . .
Lists of cited by and citing cases may be incomplete.
Updated: 24 July 2022; Ref: scu.334620
Peter Smith J
[2009] EWHC 639 (Ch)
England and Wales
See Also – JD Wetherspoon Plc v Van De Berg and Co Ltd and others ChD 4-May-2007
Lewison J summarised the approach to be taken by courts hearing an application by defendants to strike out claims: ‘Both the application to strike out and the application for summary judgment are summary applications. The application for summary . .
Lists of cited by and citing cases may be incomplete.
Updated: 24 July 2022; Ref: scu.331151
[2009] EWCA Civ 252
England and Wales
Appeal from – Ratiopharm Gmbh v Napp Pharmaceutical Holdings Ltd PatC 16-Dec-2008
. .
Lists of cited by and citing cases may be incomplete.
Updated: 24 July 2022; Ref: scu.328888
The claimants disputed the right of the defendants to use their mark ‘Lotus’ in the name of their Formula 1 racing team.
Held: There are exceptional cases when goodwill can be shared.
Peter Smith J
[2011] EWHC 1366 (Ch), [2011] ETMR 62
England and Wales
Cited – A and E Television Networks Llc and Another v Discovery Communications Europe Ltd ChD 1-Feb-2013
The claimants had operated the ‘History’ and associated variant TV channels and trade marks. The claimed that the defendant’s ‘Discovery History’ channels were in breach. The defendants challenged the validity of the trade marks. The court now . .
Lists of cited by and citing cases may be incomplete.
Updated: 24 July 2022; Ref: scu.440232
Second appeal from decision of trade marks registry – reference to European Court.
[2007] EWCA Civ 431
England and Wales
Updated: 24 July 2022; Ref: scu.252319
The complainant said the department had been wrong to send on to Europe an appllication by the Melton Mowbray Pork Pie Association for a geographical designation for their products.
Held: The claimant objected that the areas intended to be designated were wider than the geographical area associated with the name Melton Mowbray. However a desgnation need not be strictly limited to such area. The request for a judicial review failed.
Mr Justice Crane
[2005] EWHC 2971 (Admin), Times 09-Jan-2006
England and Wales
Updated: 24 July 2022; Ref: scu.236654
The claimant asserted infringement of copyright by the defendants in photographs of the family of David Beckham. The defendant admitted using the photographs but asserted that no permission was required since the use was a fair dealing.
Held: Most of the photographs were used to demonstrate a particular style, and the use was fair criticism or review. There was not sufficient evidence to establish any significant damage to the residual value of the photographs, the publication in the film being transitory: ‘Risk to the commercial value of the copyright may go towards demonstrating or creating unfairness, but it does not follow that any damage or any risk makes any use of the material unfair. ‘ The use of the photographs amounted to fair dealing for the purposes of section 30(1) of the Act, but did not amount to incidental use.
The Honourable Mr Justice Mann
Times 15-Apr-2005, [2005] EWHC 472 (Ch)
Copyright Designs and Patents Act 1988 30(1)
England and Wales
Cited – Hubbard v Vosper CA 1971
Claims of infringement were made as to copyright works being various works about Scientology. Extracts had appeared in the defendant’s book which was critical of the cult. It was submitted by the plaintiff that the fair dealing section applied only . .
Cited – Ashdown v Telegraph Group Ltd CA 18-Jul-2001
The appellant complained that a part of his confidential diaries had been republished without his consent by the defendant newspaper group. The defendant appealed, saying that the publication was fair dealing.
Held: The exceptions within the . .
Cited – Pro Sieben Media AG v Carlton Television Ltd and Another CA 7-Jan-1999
The defendant was accused of infringing copyright in a TV programme relating to the pregnancy of a woman with eight foetuses. The defendant claimed fair dealing, but that defence was rejected by the trial judge.
Held: The decision was . .
Cited – Time Warner Entertainments LP v Channel Four Television Corporation plc CA 1994
In testing whether a defence to copyright infringement of fair dealing succeeds, the court can take note of the actual purpose of the work, and will look carefully to verify the claimed purpose: ‘it is necessary to have regard to the true purpose of . .
Cited – Banier v News Group Newspapers Ltd 1997
The court considered the nature of the fair dealing defence to an allegation of copyright infringement: ‘What amounts to fair dealing must depend on the facts of the particular case and must to a degree be a matter of impression. What is of prime . .
Cited – De Garis v Nevill Jeffress Pidler Pty Ltd 1990
(High Court of Australia) The court considered the defence of criticism and review to a charge of coyright infringement.
Held: The court should start with a dictionary definition. . .
Cited – Ashdown v Telegraph Group Ltd ChD 11-Jan-2001
The claimant, during his career had written private diaries, including minutes of secret political meetings. As he stepped down from leadership, he began to arrange publication. Before this was complete, the defendant published extracts. He . .
Cited – Hyde Park Residence Ltd v Yelland, News Group Newspapers Ltd, News International Ltd, Murrell CA 10-Feb-2000
The court considered a dispute about ownership and confidence in and copyright of of video tapes taken by Princess Diana before her death.
Held: The courts have an inherent discretion to refuse to enforce of copyright. When assessing whether . .
Cited – Johnstone v Bernard Jones Publications Ltd 1938
The question of whether a fair dealing defence to a claim of copyright infringement succeeded, the amount of the work used is relevant: ‘I may add, however, that the substantiality of the part reproduced is, in my view, an element which the Court . .
Cited – Associated Newspapers Group plc v News Group Newspapers 1986
The Sun printed copyright letters which had passed between the late Duke and Duchess of Windsor, but the exclusive rights to which had been obtained by another newspaper. As to dicta that use by a competitor is not fair: ‘That seems to be exactly . .
Cited – IPC Media Ltd v News Group Newspapers Ltd ChD 24-Feb-2005
The defendant sought to advertise its new TV listings magazine, and to do so reproduced in its advert a copy of the front page of the equivalent magazine published by the claimant. The claimant sought damages for copyright infringement. The . .
Cited – Sillitoe v McGraw-Hill Book Co 1983
The defendants had imported and distributed a series of ‘study notes’ for students which the plaintiffs alleged infringed the copyrights in the works under discussion.
Held: The defendants had been ‘fixed with knowledge’ 14 days after letters . .
Cited – Football Association Premier League Ltd and others v Panini UK Ltd CA 11-Jul-2003
The respondents published articles including pictures which themselves included the claimant’s logo. The claimant sought damages for breach of copyright. The defendant claimed protection under section 31 on the basis that the inclusion of the marks . .
Lists of cited by and citing cases may be incomplete.
Updated: 24 July 2022; Ref: scu.223809
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 matters and applied incorrect legal standards to the assessment of the sufficiency of Ms Kogan’s contributions. In those circumstances, and with reluctance, we see no escape from the conclusion that there must be a retrial. ‘
Floyd LJ observed: ‘In deciding whether there is a collaboration, it can never be enough simply to ask who did the writing . . there is a . . distinction . . between the making of the work and its reduction to material form (or fixation)’.
Lord Justice Floyd, Lord Justice Henderson, Lord Justice Peter Jackson
[2019] EWCA Civ 1645, [2020] ECDR 3, [2020] FSR 3, [2020] EMLR 4
Copyright, Designs and Patents Act 1988 10(1)
England and Wales
Appeal from – 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 – 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 – 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 . .
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 – 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 . .
Cited – 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 . .
Cited – Fylde Microsystems Limited v Key Radio Systems Limited PatC 11-Feb-1998
The plaintiff’s employee wrote computer software for use with telecommunications equipment. The defendant’s employee had set the specification of the software, reported errors and bugs, made suggestions as to the cause of some faults and had . .
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 . .
Cited – 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 . .
Cited – 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 – . .
Cited – Gestmin SGPS Sa v Credit Suisse (UK) Ltd and Another ComC 15-Nov-2013
The claimant sought damages alleging negligence by the defendants in advice given on an investment in an initial public offering of shares.
Leggatt J considered the reliability of the memories of witnesses: ‘An obvious difficulty which affects . .
Cited – Blue v Ashley ComC 26-Jun-2017
A newspaper sought disclosure of witness statements and other papers lodged at the court in the course of proceedings but not yet used in court.
Held: The application was refused.
Leggatt J said: ‘When a witness statement forms part of . .
Cited – Simetra Global Assets Ltd and Another v Ikon Finance Ltd and Others CA 9-Aug-2019
The claimant alleged that the various defendants had been involved in dishonest assistance in the running of an investment ponzi scheme leading to substantial losses.
Held: The Court considered the considerations for an appellate court asked . .
Cited – Marussia Communications Ireland Ltd v Manor Grand Prix Racing Ltd and Another ChD 13-Apr-2016
Application for summary judgment in a claim for trade mark infringement.
Held: The application was refused. The term ‘consent’ used in the Regulation had an autonomous Community meaning and it required that the proprietor demonstrate . .
Cited – HRH The Duchess of Sussex v Associated Newspapers Ltd ChD 11-Feb-2021
Defence had no prospect of success – Struck Out
The claimant complained that the defendant newspaper had published contents from a letter she had sent to her father. The court now considered her claims in breach of privacy and copyright, and her request for summary judgment.
Held: Warby J . .
Lists of cited by and citing cases may be incomplete.
Updated: 24 July 2022; Ref: scu.642675
Justice Julian Knowles
[2019] EWHC 1952 (QB)
England and Wales
See Also – Bull v Desporte (1650) QBD 26-Jun-2019
Claim for misuse of private information and copyright infringement. . .
See Also – Bull v Desporte (1669) QBD 26-Jun-2019
Claim for misuse of private information and copyright infringement. . .
Lists of cited by and citing cases may be incomplete.
Updated: 24 July 2022; Ref: scu.639716
Claim for misuse of private information and copyright infringement.
Justice Julian Knowles
[2019] EWHC 1669 (QB)
England and Wales
See Also – Bull v Desporte (1650) QBD 26-Jun-2019
Claim for misuse of private information and copyright infringement. . .
See Also – Bull v Desporte (1952) QBD 26-Jun-2019
. .
Lists of cited by and citing cases may be incomplete.
Updated: 24 July 2022; Ref: scu.639715
Claim for misuse of private information and copyright infringement.
[2019] EWHC 1650 (QB)
England and Wales
See Also – Bull v Desporte (1669) QBD 26-Jun-2019
Claim for misuse of private information and copyright infringement. . .
See Also – Bull v Desporte (1952) QBD 26-Jun-2019
. .
Lists of cited by and citing cases may be incomplete.
Updated: 24 July 2022; Ref: scu.639714
ECJ Judgment – Reference for a preliminary ruling – Community trade mark – Regulation (EC) No 207/2009 – Article 9(1)(b) – Effects – Rights conferred by a Community trade mark – Identical or similar signs – Prohibition of use – Likelihood of confusion – Assessment – Taking into consideration the use of a language other than an official language of the European Union
C. Vajda, P
C-147/14, [2015] EUECJ C-147/14, [2015] WLR(D) 276, ECLI:EU:C:2015:420
Regulation (EC) No 207/2009 9(1)(b)
European
Updated: 24 July 2022; Ref: scu.549582
ECJ (Judgment) Community trade mark – Opposition proceedings – Application for Community word mark LUCEA LED – Earlier Community word mark LUCEO – Lack of precedence – Claiming of priority – Priority date entered in the register – Priority documents – Examination by OHIM of its own motion – Rights of the defence
T-186/12, [2015] EUECJ T-186/12, ECLI:EU:T:2015:436
European
Updated: 24 July 2022; Ref: scu.549575
Application made without notice by CHS for interim injunctive relief against her boyfriend for interim non-disclosure orders.
[2015] EWHC 1214 (Ch)
England and Wales
Updated: 24 July 2022; Ref: scu.547060
The court was asked as to the extent to which the developer of a computer program may lawfully replicate the functions of an existing computer program; and the materials that he may lawfully use for that purpose. SAS had produced a computer software language and system for statistical analysis, together with supporting manuals. The defendants had produced software which was intended to mimic SAS software in part. SAS alleged copyright infringement.
Held: (a) if expression is dictated by technical function then the criterion of originality is not satisfied; and (b) where that is the case, the product is not an intellectual creation of the author at all.
The essence of the term ‘own intellectual creation’ is that the person in question ‘has exercised expressive and creative choices in producing the work’
Tomlimson, Lewison, Vos LJJ
[2013] EWCA Civ 1482, [2014] RPC 8, [2015] ECDR 17
Agreement on Trade-Related Aspects of Intellectual Property Rights, World Intellectual Property Organisation Copyright Treaty, Council Directive 91/250/EEC, Council Directive 2001/29/EC, Copyright Designs and Patents Act 1988 16(3)
England and Wales
At ChD (1) – SAS Institute Inc v World Programming Ltd ChD 23-Jul-2010
The court considered the impact of the distinction drawn by Article 9(2) of TRIPS and Article 2 of the WIPO Copyright Treaty between ‘expressions’ and ‘ideas, procedures, methods of operation and mathematical concepts as such’ on domestic copyright . .
Reference – SAS Institute Inc v World Programming Ltd ChD 22-Nov-2010
The parties sought to agree the terms of a reference to the European Court of Justice. . .
ECJ Opinion – SAS Institute Inc v World Programming Ltd ECJ 29-Nov-2011
ECJ Opinion – Intellectual property – Directive 91/250/EEC – Directive 2001/29/EC – Legal protection of computer programs – Creation of various programs including the functionalities of another computer program . .
ECJ Judgment – SAS Institute Inc v World Programming Ltd ECJ 2-May-2012
ECJ (Grand Chamber) Intellectual property – Directive 91/250/EEC – Legal protection of computer programs – Articles 1(2) and 5(3) – Scope of protection – Creation directly or via another process – Computer . .
ChD (3) – SAS Institute Inc v World Programming Ltd ChD 25-Jan-2013
The parties disputed the extent to which elements of the claimant’s software package could be used by the defendants. SAS had written software including its own computer language to create a data processing environment. The defendants had wanted to . .
Cited – Bezpecnostni Softwarova Asociace – Svaz Softwarove Ochrany ECJ 22-Dec-2010
ECJ Intellectual property – Directive 91/250/EEC – Legal protection of computer programs – Notion of ‘expression in any form of a computer program’ – Inclusion or non-inclusion of a program’s graphic user . .
Cited – 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 – . .
Cited – Bezpecnostni Softwarova Asociace – Svaz Softwarove Ochrany ECJ 14-Oct-2010
ECJ Opinion – Intellectual Property – Directive 91/250/EEC – Legal protection of computer programs – Definition of ‘all forms of expression of a computer program’ – Inclusion of the GUI program – Copyright – . .
Cited – Football Dataco And Others v Yahoo UK Ltd etc ECJ 15-Dec-2011
ECJ Opinion of Advocate General Mengozzi – Directive 96/9/EC – Legal protection of databases – Football league fixture lists – Copyright
No copyright subsisted in databases set up according to technical . .
Cited – Nova Productions Ltd v Mazooma Games Ltd and others ChD 20-Jan-2006
The claimant alleged copyright infringement in respect of computer games in the coin operated video market. It was said not that the games copied bitmap graphics, but rather the composite frames which appeared on the screen.
Held: The games . .
Cited – SAS Institute Inc v World Programming Ltd ComC 13-Dec-2018
SAS sought to enforce its North Carolina judgment which was contrary to decisions already made by the UK and European Courts.
Held: Cockerill J held that the terms of the contract which purported to prohibit WPL’s conduct constituted a . .
See Also – SAS Institute Inc v World Programming Ltd (2495) ComC 25-Sep-2019
Post judgment orders . .
See Also – SAS Institute Inc v World Programming Ltd (Injunction) ComC 25-Sep-2019
Continuation of anti-suit injunction – refused . .
See Also – SAS Institute Inc v World Programming Ltd CA 12-May-2020
Appeal from refusal of continuance of anti-suit injunction . .
Cited – HRH The Duchess of Sussex v Associated Newspapers Ltd ChD 11-Feb-2021
Defence had no prospect of success – Struck Out
The claimant complained that the defendant newspaper had published contents from a letter she had sent to her father. The court now considered her claims in breach of privacy and copyright, and her request for summary judgment.
Held: Warby J . .
Lists of cited by and citing cases may be incomplete.
Updated: 24 July 2022; Ref: scu.518323
The parties disputed the extent to which elements of the claimant’s software package could be used by the defendants. SAS had written software including its own computer language to create a data processing environment. The defendants had wanted to produce software it could sell in competition which, for the same inputs would produce the same results, emulating SAS functionality. The matter had been referred to the ECJ, but the parties now also disputed their interpretation of the answer provided.
Held: The Court dismissed the claims of SAS Institute, save that he found limited breaches of copyright in relation to the ‘Manual to Manual’ Claim.
Arnold J
[2013] EWHC 69 (Ch), [2013] RPC 17
England and Wales
At ChD (1) – SAS Institute Inc v World Programming Ltd ChD 23-Jul-2010
The court considered the impact of the distinction drawn by Article 9(2) of TRIPS and Article 2 of the WIPO Copyright Treaty between ‘expressions’ and ‘ideas, procedures, methods of operation and mathematical concepts as such’ on domestic copyright . .
At ChD (2) – SAS Institute Inc v World Programming Ltd ChD 22-Nov-2010
The parties sought to agree the terms of a reference to the European Court of Justice. . .
At ECJ (Opinion) – SAS Institute Inc v World Programming Ltd ECJ 29-Nov-2011
ECJ Opinion – Intellectual property – Directive 91/250/EEC – Directive 2001/29/EC – Legal protection of computer programs – Creation of various programs including the functionalities of another computer program . .
ECJ Judgment – SAS Institute Inc v World Programming Ltd ECJ 2-May-2012
ECJ (Grand Chamber) Intellectual property – Directive 91/250/EEC – Legal protection of computer programs – Articles 1(2) and 5(3) – Scope of protection – Creation directly or via another process – Computer . .
ChD (3) – SAS Institute Inc v World Programming Ltd CA 21-Nov-2013
The court was asked as to the extent to which the developer of a computer program may lawfully replicate the functions of an existing computer program; and the materials that he may lawfully use for that purpose. SAS had produced a computer software . .
See Also – SAS Institute Inc v World Programming Ltd ComC 13-Dec-2018
SAS sought to enforce its North Carolina judgment which was contrary to decisions already made by the UK and European Courts.
Held: Cockerill J held that the terms of the contract which purported to prohibit WPL’s conduct constituted a . .
See Also – SAS Institute Inc v World Programming Ltd (2495) ComC 25-Sep-2019
Post judgment orders . .
See Also – SAS Institute Inc v World Programming Ltd (Injunction) ComC 25-Sep-2019
Continuation of anti-suit injunction – refused . .
See Also – SAS Institute Inc v World Programming Ltd CA 12-May-2020
Appeal from refusal of continuance of anti-suit injunction . .
Lists of cited by and citing cases may be incomplete.
Updated: 24 July 2022; Ref: scu.470586
The defendants owned a cancer treatment drugs patent which had been extended. The various claimants wished to introduce a generic version, and sought a declaration of invalidity of the patent.
Held: None of the Actavis products would directly or indirectly infringe the Patent in the UK or in France, Italy or Spain.
Arnold J
[2014] EWHC 1511 (Pat), [2014] 2 All ER (Comm) 669, [2014] 4 All ER 331, [2015] Bus LR 154, [2015] RPC 6
England and Wales
At First Instance – 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: 24 July 2022; Ref: scu.525790