Category: Intellectual Property

Experience Hendrix Llc v Purple Haze Records Ltd and Another: CA 3 Aug 2005

Claim in performance rights – challenge to order for security for costs on appeal – evidence available at date of first hearing.

Citations:

[2005] EWCA Civ 1091

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

At First Instance – Experience Hendrix Llc v Purple Haze Records Ltd and Another ChD 24-Feb-2005
The claimant company sought summary judgment against the defendants who had manufactured and sold unauthorised recordings of a concert by the late Mr Hendrix in Sweden in 1969.
Held: The performance was given retrospective protection under the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Costs

Updated: 04 July 2022; Ref: scu.230030

Sara Lee Household and Body Care Ltd v Johnson Wax Limited: CA 20 Nov 2001

Judges:

Lord Justice Aldous, Lord Justice Chadwick, And, Sir Murray Stuart-Smith

Citations:

[2001] EWCA Civ 1609, (2002) 25 IPD 25008

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – Sara Lee Household and Body Care UK Limited v Johnson Wax Limited PatC 22-Nov-1999
Patent infringement allegation . .
Cited – Brugger v Medic-Aid Ltd (No 2) ChD 1996
B alleged infringement by M of its patented nebulizer. M replied saying that the claims failed for obviousness. Features of the nebulizer were admittedly old and well known, but the claimant asserted a new mechanism which reduced the size of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 03 July 2022; Ref: scu.166955

Reliance Water Controls Ltd v Altecnic Ltd: CA 12 Dec 2001

The Court considered right of an applicant for the registration of a trade mark to change the class number specified by him on Form TM3 in respect of goods for which he had made an application for registration. The appeal turned on the true construction of the relevant provisions of the Trade Marks Act 1994 (the 1994 Act) and of the Trade Marks Rules 1994, as amended (the Rules), and their application to the facts of this case.

Judges:

Lord Justice Kennedy, Lord Justice Mummery, And, Lord Justice Sedley

Citations:

[2001] EWCA Civ 1928, [2002] RPC 34, [2002] ETMR CN4

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 03 July 2022; Ref: scu.167062

Michalakopoulou Ktimatiki Touristiki v OHMI – Free (Free) (Intellectual Property): ECFI 27 Oct 2010

ECFI Community trade mark – Opposition proceedings – Application for the Community word mark FREE – Earlier national word mark FREE and earlier national figurative mark free LA LIBERTE N’A PAS DE PRIX – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009.

Citations:

T-365/09, [2010] EUECJ T-365/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 01 July 2022; Ref: scu.425764

Lloyd’s and Another v Lloyds Publishing Group Ltd: ChD 19 Jun 2008

Application for summary judgment on claims for trade mark infringement and passing off against the defendant, and to dismiss the defendant’s claim for partial invalidity of some of the first claimant’s registered trade marks and community trade marks.

Judges:

Warren J

Citations:

[2008] EWHC 2320 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 01 July 2022; Ref: scu.304549

Norbrook Laboratories (GB) Ltd v Adair and Another: QBD 6 May 2008

The claimants sought a post employment injunction to prevent the defendant revealing confidential materials relating to inventions created during his employment.

Citations:

[2008] EWHC 978 (QB)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Office Angels Ltd v Rainer-Thomas CA 1991
Reasonability Test of Post Employment Restriction
The court re-stated the principles applicable in testing whether an employee’s restrictive covenant was reasonable: ‘The court cannot say that a covenant in one form affords no more than adequate protection to a covenantee’s relevant legitimate . .
Lists of cited by and citing cases may be incomplete.

Employment, Intellectual Property

Updated: 01 July 2022; Ref: scu.268691

Macrossan v Comptroller-General of Patents, Designs and Trade Marks 2005: ChD 3 Apr 2006

The court upheld the rejection of a patent application with regard to a computer program.

Judges:

Mann J

Citations:

[2006] EWHC 705 (Ch)

Links:

Bailii

Statutes:

Patents Act 1977 77

Jurisdiction:

England and Wales

Cited by:

Cited – Blacklight Power Inc v The Comptroller-General of Patents PatC 18-Nov-2008
The applicant appealed against the refusal of two patents by the respondent.
Held: The standard of proof to be applied on objections to patentability was the same which applied when testing for exclusions. The standard was the balance of . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 July 2022; Ref: scu.240020

Mastercigars Direct Ltd v Hunters and Frankau Ltd and others: ChD 10 Mar 2006

Trade mark dispute concerning the import into the UK of many well-known brands of hand-rolled Cuban cigars.

Judges:

HHJ Fysh QC

Citations:

[2006] EWHC 410 (Ch), [2006] RPC 805

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Appeal from – Mastercigars Direct Ltd v Hunters and Frankau Ltd CA 8-Mar-2007
An allegation was made that Cuban cigars imported by the claimant infringed the trade marks of the respondents being either counterfeit or parallel imports, and were impounded. The claimant sought a declaration of non-infringement and their release, . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 July 2022; Ref: scu.238949

O2 Holdings Ltd. and Another v Hutchison 3G Ltd (No 2): ChD 23 Mar 2006

Judges:

Lewison J

Citations:

[2006] EWHC 534 (Ch), [2006] ETMR 55, [2006] RPC 30

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – 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 . .
Appeal from – O2 Holdings Ltd and Another v Hutchison 3G Ltd CA 5-Dec-2006
The court faced an allegation based on allegedly false comparative advertising, and referred to the European Court the question: ‘Where a trader, in an advertisement for his own goods or services uses a registered trade mark owned by a competitor . .
Cited – D Jacobson and Sons Ltd v Globe Gb Ltd Globe Europe Sas Chd 25-Jan-2008
The claimant alleged infringement by the defendants of its ‘Gola’ trade mark designs. The defendant said the registration was invalid because the stripes on the shoes were not distincive being seen as part of the design of the shoe rather than as an . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 01 July 2022; Ref: scu.239283

Tesco Stores Ltd v Elogicom Ltd and Another: ChD 8 Mar 2006

The claimant sought summary judgment against the defendant for operating websites using domain names which included the claimant’s name and trade marks. Tesco had entered into agreements with a third party company who organised adverts for Tesco on other sites. Tesco approved the main sites which did not use the Tesco name, but the defendant added further names about which the complaints were now made.
Held: Though the sites merely referred the web visitors on to the Tesco site: ‘the use of internet domain names is itself a service offered to the public, whereby the entry of such a name in the address bar of the computer of an individual browsing the internet will take them to a website. In my view, by registering and making its ‘tesco’ related domain names available as pathways on the internet to Tesco websites with a view to generating income for itself in the form of commission, Elogicom did use in the course of trade a series of signs (those domain names) which were each similar to the trade marks registered by Tesco ‘ and
‘I do not think that . . . trading without Tesco’s consent on Tesco’s own goodwill and by reference to Tesco’s own trade marks in order to generate business for itself, and commission payments to it from Tesco, could be described in objective terms as an honest practice. ‘ The internet domain name dispute resolution service is an alternative way of dealing with the matter, and Tesco had no duty to use it. There was no doubt that the ction constituted passing off. The counterclaims also failed.

Judges:

Philip Sales

Citations:

[2006] EWHC 403 (Ch)

Links:

Bailii

Statutes:

Trade Marks Act 1994 10

Jurisdiction:

England and Wales

Citing:

Cited – Marks and Spencer Plc, Ladbrokes Plc, J Sainsbury Plc, Virgin Enterprises Ltd, British Telecommunications Plc, Telecom Securior Cellular Radio Ltd v One In A Million and Others PatC 28-Nov-1997
The registration of internet domain names which would infringe trade marks and potentially facilitate passing off can be protected summarily by quia timet injunction. The defendants were dealers in domain names and the use of a trade mark in the . .
Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Cited – 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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 July 2022; Ref: scu.238950

Microsense Systems Ltd v Control Systems Technology Ltd: ChD 17 Jul 1991

The plaintiffs designed and built electronic signalling systems for controlling road traffic. The software was installed in particular within pelican crossings. An operator was able to change the way a particular set of lights worked by resetting the signals using a set of mnemonics or codes, invented by the plaintiffs. That set of mnemonics had come to be adopted in large part as the basis for a standard set promoted by the Department of Transport, and intended to be used by various manufacturers. The defendants were former employees of the Plaintiff, who left to set up a competing organisation. To control the signals, the defendants had to provide a way of using the same codes to work the plaintiff’s signals. The plaintiff claimed, inter alia, breach of copyright in the use of the codes.
Held: (at a preliminary hearing) The judge had been asked whether a copyright could inhere in a series of three letter mnemonics. J Aldous found that it was arguable that such did exist. He asked himself about the amount of skill and labour expended, and it was clear that the development of the list of codes had in fact taken just such labour, but as part of the development of their system as a whole.

Judges:

Aldous J

Citations:

Unreported, 17 July 1991

Jurisdiction:

England and Wales

Intellectual Property

Updated: 01 July 2022; Ref: scu.236578

Belegging-en Exploitatiemaatschappij Lavender BV v Witten Industrial Diamonds Ltd: 1979

The defendants sold diamond grit allegedly for the sole purpose of making grinding tools in which it was to be embedded in a resin bond as part of a grinding material patented by the plaintiffs.
Held: The defendants could not be infringers unless they ‘sold the grits in circumstances which in some way made them participants in their subsequent embodiment in resin bonded grinding wheels, or that they induced someone so to embody them.’
Lord Justice Buckley said: ‘The plaintiffs do not only assert infringement by the defendants. They also say that the defendants have procured, counselled and/or aided other persons to infringe. This may perhaps amount to an allegation of direct infringement by the defendants themselves, but I am inclined to think that it is a claim in respect of a distinct, suggested tort of procuring infringement by others (based upon the principle enunciated by Erle J in Lumley v Gye’ and
‘facilitating the doing of an act is obviously different from procuring the doing of an act.’

Judges:

Lord Justice Buckley

Citations:

[1979] FSR 59

Jurisdiction:

England and Wales

Citing:

Cited – Lumley v Gye 1853
Inducing breach of contract is a Tort
An opera singer (Miss Wagner) and the defendant theatre owner were joint wrongdoers. They had a common design that the opera singer should break her contract with the plaintiff theatre owner, refuse to sing in the plaintiff’s theatre and instead . .

Cited by:

Cited – MCA Records Inc and Another v Charly Records Ltd and others (No 5) CA 5-Oct-2001
The court discussed the personal liability of a director for torts committed by his company: ‘i) a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the . .
Cited – CBS Songs Ltd v Amstrad Consumer Electronics Plc HL 12-May-1988
The plaintiffs as representatives sought to restrain Amstrad selling equipment with two cassette decks without taking precautions which would reasonably ensure that their copyrights would not be infringed by its users.
Held: Amstrad could only . .
Cited – Fish and Fish Ltd v Sea Shepherd Uk and Others CA 16-May-2013
The claimant company sought damages after their transport of live tuna was attacked by a protest group. They now appealed against a decision that the company owning the attacking ship was not liable as a joint tortfeasor.
Held: The appeal was . .
Cited – Sea Shepherd UK v Fish and Fish Ltd SC 4-Mar-2015
Accessory Liability in Tort
The court considered the concept of accessory liability in tort. Activists had caused damage to vessels of the respondent which was transporting live tuna in cages, and had caused considerable damage. The appellant company owned the ship from which . .
Lists of cited by and citing cases may be incomplete.

Torts – Other, Intellectual Property

Updated: 01 July 2022; Ref: scu.230359

Pink v Sharwood: 1913

The goodwill of a business can be taken to have been abandoned where for example a business is discontinued, with no prospect of restarting, and its assets are broken up and sold. It was not possible for the claimant to obtain an injunction restraining the sale by another manufacturer of his goods so as to lead to the belief that they were the goods of someone who in fact had no goods on the market; and had had no goods on the market for some years.

Judges:

Eve J

Citations:

(1913) 30 RPC 725

Jurisdiction:

England and Wales

Cited by:

Cited – Ultraframe (UK) Ltd v Fielding and others ChD 27-Jul-2005
The parties had engaged in a bitter 95 day trial in which allegations of forgery, theft, false accounting, blackmail and arson. A company owning patents and other rights had become insolvent, and the real concern was the destination and ownership of . .
Lists of cited by and citing cases may be incomplete.

Company, Intellectual Property

Updated: 01 July 2022; Ref: scu.230351

Building Product Design Ltd v Sandtoft Roof Tiles Ltd (No. 2): 2004

An action was originally brought alleging infringement from a ‘vent tile’ which would be used in the ridge of a roof. What was pleaded was a clay half-round ridge vent tile; and this tile was the only infringement mentioned in the agreed order. BPD asked that three other tiles be included in the inquiry. Sandtoft objected. Sandtoft admitted selling such further tiles before the commencement of the action but argued that the pleadings and the agreed order being limited to the clay half-round ridge tiles only, there was no scope for these other tiles to be included in the enquiry. It was not disputed that the clay and concrete tiles were identical save as to their material.
Held: In a case management conference on the ‘clay v. concrete’ tile issue, the order could be corrected under the slip rule; and that the concrete half round ridge tiles could properly be regarded as falling within the scope of the inquiry as to damages. He dismissed BDP’s application to have the angled tiles included in the inquiry. BDP then brought a second action, claiming that the angled tiles infringed its patent. The court struck out the second action as an abuse of process: ‘I do not regard the commencement of this second action for infringement of the Patent as just a ‘procedural inconvenience’ to Sandtoft; it amounts to an abuse of process. Proper pleading requires the timely identification of every type of infringement alleged. And, on that understanding, a defendant should know by the end of the trial (and normally well before trial) where it stands. In relation to Sandtoft’s angled ridge tiles, that did not happen. This application succeeds and the second action will therefore be struck out.’ The ‘clay v. concrete’ issue involved a correction of the original order under the slip rule. It was the correction of a mistake in the original order. What they were made of was immaterial. By contrast, when the infringing product was a different product, the judge held that it should have been specifically pleaded.

Judges:

HH Judge Fysh QC

Citations:

[2004] FSR 41

Jurisdiction:

England and Wales

Cited by:

Cited – Ultraframe (UK) Ltd v Fielding and others ChD 27-Jul-2005
The parties had engaged in a bitter 95 day trial in which allegations of forgery, theft, false accounting, blackmail and arson. A company owning patents and other rights had become insolvent, and the real concern was the destination and ownership of . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 01 July 2022; Ref: scu.230350

Smithkline Beecham Plc and others v Apotex Europe Ltd and others: PatC 26 Jul 2005

Application was made to join in further parties to support a cross undertaking on being made subject to interim injunctions.
Held: On orders other than asset freezing orders it was not open to the court to impose cross-undertakings against parties unwilling to grant them. ‘Since a cross-undertaking cannot be imposed, it follows that a fortiori it cannot be imposed retrospectively. ‘ and ‘the proper interpretation of a cross-undertaking is not a question of divining the mutual understanding of the parties to the litigation, for the terms of the cross-undertaking are a matter for the court. Equally, because the cross-undertaking is given to the court, it may be enforced by one who is not a party to the action, if the cross-undertaking is given for his benefit.’ and ‘at least as at 2002, it could not be said that it was implicit in any application for an interim injunction (other than a freezing or search order) that the applicant must be taken to have offered a cross-undertaking in favour of third parties who were not defendants to the proceedings.’ Applications save under estoppel were struck out or dismissed.

Judges:

Lewison J

Citations:

[2005] FSR 44, [2006] 2 All ER 53, [2006] IP and T 307, [2005] EWHC 1655 (Ch), Times 10-Aug-2005

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – W v H (Family Division: without notice orders) FD 10-Jul-2000
Munby J considered the practice to be followed in the Family Division when injunctions are granted ex parte and without notice against third parties in ancillary relief cases.
Held: The court traced the history of undertakings in damages give . .
Cited – Tucker v New Brunswick Trading Company of London CA 1890
An action was brought against three defendants, Matthews, Lamplough and the New Brunswick Trading Company of London, to restrain the company from confirming in general meeting certain agreements between the company and Matthews and Lamplough. An . .
Cited – The Mito 1987
The court discussed the requirement of undertakings in damages from a party seeking an interim injunction: ‘When such security is originally sought it is sought as a condition for the grant of the injunction, in other words the plaintiff is told if . .
Cited – Colledge v Crossley CA 18-Mar-1975
The Master of the Rolls discussed undertakings given to support injunctions: ‘. that it was unfortunate that the undertaking in damages was not put into the original order. It was an automatic undertaking which was invariably inserted when an . .
Cited – Attorney-General v Albany Hotel Co 1896
The court considered the undertakings to be inserted in ex parte interim injunction applications: ‘Upon drawing up an order for an interlocutory injunction the registrar invariably inserts such an undertaking on the part of the plaintiff, even . .
Cited – F Hoffmann La Roche and Co A G v Secretary of State for Trade and Industry HL 1975
No Indemnity for misadministration
The Secretary of State sought an interlocutory injunction under the Act to restrain the appellant from charging prices in excess of those fixed by a statutory instrument he had made. The appellant argued that the statutory instrument was ultra . .
Cited – Miller Brewing Co v Ruhl Enterprises Ltd and another ; Miller Brewing Co v Mersey Docks and Harbour Co amd Others ChD 23-May-2003
The claimant obtained an interim injunction in respect of alleged infringement of its trade marks in beers brewed under licence by the respondents. They said the beers produced were of inferior quality, and threatened the brand. The grant of such . .
Cited – Allied Irish Bank v Ashford Hotels Limited and Ashford Hotels Limited v Higgins; Tyree and Emblem Bv CA 8-May-1997
The court asked itself whether it had power to require a cross-undertaking in favour of third parties as a condition of appointing a receiver.
Held: Phillips LJ: ‘The Mareva injunction is a comparatively recent addition to the armoury of the . .
Cited – Berkeley Administration Inc v McClelland CA 1990
There is no legally acceptable basis on which the benefit of an undertaking, to which a member of a group of companies is entitled, may be claimed on behalf of the group as a whole. The court discussed who had the benefit of cross undertakings given . .
Cited – Ketteman v Hansel Properties Ltd HL 1987
Houses were built on defective foundations. The purchasers sued the builders and later the architects who designed them. The defendants argued that the houses were doomed from the start so that the cause of action accrued, not when the physical . .
Cited – Re Inchcape 1942
The court had been called upon to decide the domicile of Lord Inchcape at the date of his death. Counsel then asked for the costs of all parties to be paid by the estate. However, costs had been incurred before the issue of proceedings and these . .
Cited – Republic of India and Another v India Steamship Co Ltd (Indian Endurance and Indian Grace) (No 2) HL 23-Oct-1997
When a action in rem against a ship was in fact parallel to an action in personam begun in India and awaiting a decision; an action was not to be allowed here.
Lord Steyn: ‘It is settled that an estoppel by convention may arise where parties to . .
Cited – Expert Clothing Service and Sales Ltd v Hillgate House Ltd CA 1985
Landlords took possession after a successful, at first instance, forfeiture claim. The tenant succeeded on appeal and then brought a claim for the wrong of breach of the covenant for quiet enjoyment.
Held: The lease had been in existence all . .
Cited – The Indian Endurance HL 1986
The House considered how an estoppel by convention arose: ‘It is settled that an estoppel by convention may arise where parties to a transaction act on an assumed state of facts or law, the assumption being either shared by them both or made by one . .
Cited – National Australia Bank Ltd v Bond Brewing Holdings Ltd 1991
(Supreme Court of Victoria) The court had appointed a receiver without requiring a cross-undertaking in damages. The order was then set aside, and compensation was sought. There had been no cross-undertaking.
Held: If it had power to award . .
Cited – Linden Gardens Trust Ltd v Lenesta Sludge Disposals Ltd and Others; St. Martins Property Corporation Ltd v Sir Robert McAlpine HL 8-Dec-1993
A contractor had done defective work in breach of a building contract with the developer but the loss was suffered by a third party who had by then purchased the development. The developer recovered the loss suffered by the purchaser.
Held: . .
Cited – Alfred Mcalpine Construction Limited v Panatown Limited HL 17-Feb-2000
A main contractor who was building not on his own land, would only be free to claim damages from a sub-contractor for defects in the building where the actual owner of the land would not also have had a remedy. Here, the land owner was able to sue . .
Cited – Regina v Medicines Control Agency ex parte Smith and Nephew (Primecrown Ltd intervening) ChD 1999
The court considered liability to third partries under a cross-undertaking given to the court: ‘Whether the recoverable damage is that which is foreseeable by the plaintiff or that which is directly caused by the injunction is not in point. None of . .

Cited by:

Appeal from – Smithkline Beecham Plc Glaxosmithkline UK Ltd and Another v Apotex Europe Ltd and others (No 2) CA 23-May-2006
The parties to the action had given cross undertakings to support the grant of an interim injunction. A third party subsequently applied to be joined, and now sought to take advantage of the cross undertakings to claim the losses incurred through . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 01 July 2022; Ref: scu.229014

Kabushiki Kaisha Sony Computer Entertainment v Nuplayer Ltd.: ChD 14 Jul 2005

The claimant attempted to prevent the grey import from sales over the internet.
Held: The defendants had failed to establish any implied consent to the importation, and the attempt succeeded.

Judges:

Lawrence Collins J

Citations:

[2005] EWHC 1522 (Ch), [2006] FSR 9

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – Mastercigars Direct Ltd v Hunters and Frankau Ltd CA 8-Mar-2007
An allegation was made that Cuban cigars imported by the claimant infringed the trade marks of the respondents being either counterfeit or parallel imports, and were impounded. The claimant sought a declaration of non-infringement and their release, . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 July 2022; Ref: scu.228952

CFPH LLC, Patent Applications By: PatC 21 Jul 2005

In the context of deciding as to the patentability the use of the description ‘technical’ was ‘a useful servant but a dangerous master’. Peter Prescott QC discussed the importance of being clear as to the meaning of an ‘invention’ saying: ‘does it really matter? Is it merely a sterile argument about the meaning of words? To which I answer that whoever controls the meaning of ‘invention’ controls what can be patented and hence an important aspect of industrial policy. There can be but one justification for having a patent system, and that is that it is good for the people of the country. If the patenting of certain things does more harm than good, it matters. Patents that are wrongly granted can be very expensive to challenge and may deter small and medium enterprises. ‘

Judges:

Peter Prescott QC

Citations:

[2005] EWHC 1589 (Pat), [2006] RPC 5

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – CFPH LLC (Patent) IPO 14-Dec-2004
IPO The two applications are concerned with networked interactive wagering on the outcomes of events, with particular emphasis on reducing processing delays to a minimum so that in circumstances where prices are . .

Cited by:

Appeal from – Cappellini and Bloomberg, Re PatC 13-Mar-2007
The applicants appealed rejection of their applications for patents. The comptroller-general had said that patents were in respect of computer programs excluded from registration.
Held: The appeals failed. There was no relevant technical . .
Cited – Symbian Ltd v Comptroller General of Patents CA 8-Oct-2008
No Pattern Established to Patent Computer Systems
The Comptroller appealed against the decision in Chancery to grant a patent to the clamant for an invention which the comptroller said should have been excluded from protection under section 1(2) as a computer program. It was argued that the UK was . .
Cited – In re IGT / Acres Gaming Inc PatC 19-Mar-2008
The court was asked: ‘When a claim defines an invention partly by reference to excluded subject-matter e.g. a business method, how do you search the prior art?’ The company appealed against rejection of its request for a patent. . .
Cited – Overture Services Inc (Patent) IPO 21-Dec-2005
IPO The invention concerned a search engine for searching geo-coded records. The user specifies a distance range as a limitation on the field of search, so that for example, it is possible to search for a pizza . .
Cited – Overture Services Inc (Patent) (1) IPO 23-Mar-2006
IPO Excluded fields (refused) – The invention relates to a method for helping an advertiser or other information providers find the most relevant search terms for their website. This was held to be a method of . .
Cited – Overture Services Inc (Patent) (2) IPO 23-Mar-2006
IPO Excluded fields (refused) – The invention relates to an account monitoring system which allows a network based search engine provider to provide account information to various advertisers in order to prevent . .
Cited – Overture Services Inc (Patent) (3) IPO 23-Mar-2006
IPO Excluded fields (refused) – The invention relates to a method whereby the owner of a search listing is automatically informed if certain conditions pertaining to his listing, for example where the listing . .
Cited – Overture Services Inc (Patent) (4) IPO 23-Mar-2006
IPO The invention relates to a method for enabling information providers using a computer network such as the internet to influence the position of a search listing within a search result list generated by an . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 July 2022; Ref: scu.228953

London General Holdings Ltd and others v USP Plc and Another: CA 22 Jul 2005

Copyright was claimed in a draft legal agreement. Infringement was established, but the court was asked to look at the assessment of damages.
Held: ‘what is the basis upon which damages for breach of copyright are awarded? The question cannot be answered without consideration of the nature of the wrongdoing which breach of copyright represents. The nature of the wrong is clear enough. In a case where the copyright work is a written document, it consists in the unauthorised use of the actual text of the document. It does not consist in pirating the idea or ideas to be found in the text.’ The claimed loss was not attributable to any breach of copyright: not because it was unforeseeable or otherwise too remote . . . but because in principle . . . it lies beyond the scope of protection which the law of copyright affords.’ The judge had lost hold of the distinction between the loss which flowed from the copying of the text and that which flowed from the copying of the ideas. The appeal succeeded.

Citations:

[2005] EWCA Civ 931

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Sutherland Publishing Co Ltd v Caxton Publishing Co Ltd CA 1936
. .
Cited – Paterson Zochonis and Co v Merfarken Packaging Ltd CA 1986
The normal measure of damages for copyright infringement is the amount by which the copyright is depreciated, by the infringement, as a chose in action. . .
Cited – Work Model Enterprises Limited v ECO System Limited 1996
There had been an admitted infringement of copyright by a competitor who copied the claimant’s brochure.
Held: The infringement did not cause the lost sales which were the result of legitimate competition. . .
Cited – Gerber Garment Technology Inc v Lectra Systems Ltd ChD 30-Jan-1995
A prior art recital in a Patent application is strong but rebuttable evidence of the state of knowledge. . .
Cited – Jolley v Sutton London Borough Council HL 24-May-2000
An abandoned boat had been left on its land and not removed by the council. Children tried to repair it, jacked it up, and a child was injured when it fell. It was argued for the boy, who now appealed dismissal of his claim by the Court of Appeal, . .
Cited – Gerber Garment Technology Inc v Lectra Systems Limited Lectra Systemes SA CA 18-Dec-1996
The plaintiffs claimed damages for patent infringement. Some of the lost profits for which the plaintiff company claimed damages were suffered by subsidiary companies in which it held all the shares.
Held: When a shareholder has a cause of . .
Cited – South Australia Asset Management Corporation v York Montague Ltd etc HL 24-Jun-1996
Limits of Damages for Negligent Valuations
Damages for negligent valuations are limited to the foreseeable consequences of advice, and do not include losses arising from a general fall in values. Valuation is seldom an exact science, and within a band of figures valuers may differ without . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Damages

Updated: 01 July 2022; Ref: scu.228963

Wassen International v OHMI- Stroschein Gesundkost (Selenium-Ace): ECFI 14 Jul 2005

ECJ Community trade mark – Opposition proceedings – Earlier national figurative mark comprising the word element – Selenium Spezial A-‘C-‘E – Application for Community word mark SELENIUM-ACE – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94

Citations:

T-312/03, [2005] EUECJ T-312/03

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 01 July 2022; Ref: scu.228846

Reckitt Benckiser (Espana) v OHMI – Aladin (Aladin): ECFI 14 Jul 2005

ECJ Community trade mark – Opposition proceedings – Likelihood of confusion – Proof of use of earlier mark – Application for Community word mark ALADIN – Earlier national word mark ALADDIN – Articles 8(1)(b) and 43(2) and (3) of Regulation (EC) No 40/94

Citations:

[2005] ECR II-2861, [2005] EUECJ T-126/03

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 01 July 2022; Ref: scu.228839

Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd& Another: CA 24 Jun 2005

Appeal against finding of non-infringement of patent.

Judges:

Mummery, Jacob, Neuberger LJJ

Citations:

[2005] EWCA Civ 761

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – Ultraframe (UK) Ltd v Eurocell Building Plastics Limited, Eurocell Profiles Limited ChD 22-Jul-2004
Patent challenge for obviousness, and patent infringement.
Held: i) the patent was not infringed;
ii) the patent was valid;
iii) there was no fresh UDR arising from minor changes made to the design of the Ultralite 500 in 1995;
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 July 2022; Ref: scu.227927

Cambridge Antibody Technology v Abbott Biotechnology Ltd and Another: Patc 20 Dec 2004

Rectification of an agreement was sought.
Held: Laddie J rejected a submission that evidence of the subjective state of mind of one of the parties contained in statements which had not been communicated to the other party (‘crossed the line’) was inadmissible. I

Judges:

Laddie J

Citations:

[2004] EWHC 2974 (Pat), [2005] FSR 590

Links:

Bailii

Cited by:

Principal Judgment – Cambridge Antibody Technology v Abbott Biotechnology Ltd and Another 2005
. .
Cited – Daventry District Council v Daventry and District Housing Ltd CA 13-Oct-2011
The appellant challenged refusal of rectification of its agreement with the defendant. They asserted either mutual or unilateral mistake. The parties had agreed for the transfer of housing stock and management staff to the respondents. The claimant . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contract, Equity

Updated: 01 July 2022; Ref: scu.227185

IDA Ltd and others v University of Southampton and others; University of Southampton’s Applications: Patc 28 Jul 2004

Disclosure and enablement are distinct concepts in patents law, each of which has to be satisfied and each of which has its own rules. As to sufficiency: ‘In my view, devising an invention and providing enabling disclosure are two quite different things. Although both may be necessary to secure valid protection, as section 14 of the Act shows, they relate to different aspects of the law of patents. It is very possible to make a good invention but to lose one’s patent for failure to make an enabling disclosure. The requirement to include an enabling disclosure is concerned with teaching the public how the invention works, not with devising the invention in the first place.’
In the phrase ‘the actual deviser of the invention’, the word ‘actual’ denotes a contrast with a deemed or pretended deviser of the invention;the natural person who ‘came up with the inventive concept.’

Judges:

Laddie J

Citations:

[2004] EWHC 2107 (Pat), [2005] RPC 220

Links:

Bailii

Cited by:

Cited – Synthon Bv v Smithkline Beecham Plc HL 20-Oct-2005
Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the . .
Appeal from – IDA Ltd and others v The University of Southampton and others CA 2-Mar-2006
The claimants sought sole ownership of a patent.
Held: The judge had erred when he reversed the decision of the hearing officer that the claimant was sole owner of the patent. The court expressed its regret that the matter had not been . .
Cited – Yeda Research and Development Company Ltd v Rhone-Poulenc Rorer International Holdings Inc and others HL 24-Oct-2007
The claimants said that the defendant had misused confidential information sent to him to found an application for a patent, claiming wrongly to have been its inventor. The claimant appealed a refusal by the court to allow amendments to the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 July 2022; Ref: scu.227182

Commission v Italy C-456/03: ECJ 16 Jun 2005

EU (Industrial Policy) Failure of a Member State to fulfil obligations – Directive 98/44/EC – Legal protection of biotechnological inventions – Admissibility – Failure to transpose – Articles 3(1), 5(2), 6(2) and 8 to 12.

Citations:

[2005] EUECJ C-456/03

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 01 July 2022; Ref: scu.226962

Vine Products Ltd v Mackenzie and Co Ltd (the Sherry Case): ChD 1969

Assorted sherry producers and shippers to write to producers and importers of ‘British Sherry’ asking them to stop using the word ‘sherry’ other than in relation to wines emanating from the Jerez district of Spain. Those producers and importers to begin proceedings for a declaration that they were entitled to describe their wines as ‘British Sherry’, this being something they had done for very many years. The sherry producers then counterclaimed for an injunction to restrain the producers and importers of British sherry from passing off their wine as and for wine produced in Jerez.
Held: despite the long established and widespread use of the expressions ‘British Sherry’ and ‘South African Sherry’ and the like, the word ‘sherry’ standing alone still denoted a wine from the Jerez district of Spain and not a type of wine or alcoholic drink which might be produced anywhere or in any way. Nevertheless, it remained to be considered whether objection could now be raised to the use of the expression ‘British Sherry’. The judge concluded it could not because the Spanish producers had delayed while the producers and importers of British sherry had built up a substantial goodwill, and in consequence it would be unjust to prevent the further use of the expression. However, there had been no acquiescence in the use of the term ‘sherry’ simpliciter and so an injunction would be granted to restrain the use of that word otherwise than as part of a composite phrase such as ‘British Sherry’ or ‘South African Sherry’.
There was no distinction in principle between a champagne shipper and a sherry shipper and a claimant had to establish in a claim of this sort was that the district in which the goods in question were produced and which gave the goods their name was defined with reasonable precision.
Cross J said of the Bollinger case: ‘The decision went beyond the well trodden paths of passing-off into the area of ‘unfair trading’ or ‘unfair competition”. And: ‘That being, as I see it, the scope of the decision in the Spanish Champagne case, it remains to see how far, if at all, it applies to the facts of this case. It was not suggested by the plaintiffs that there was any distinction to be drawn between a Champagne shipper and a sherry shipper so far as concerned his title to bring the action. No doubt a plaintiff in this sort of action must establish that the district in which goods in question were produced and which gives the goods their name is defined with reasonable precision either by law or custom. The court must obviously be in a position to decide in case of dispute whether or not any given plaintiff is a producer in the district in question. But the evidence in this case shows that there would not be the least difficulty in saying whether or not anyone claiming to be producer and shipper of ‘sherry’ was entitled to be so described. It can, of course, make no difference in this connection that the boundaries of the district are not static but are liable to change, provided that there is no uncertainty as to when this change occurs and what is its extent. Thus the fact that Montilla used to be classed as sherry but now has its own separate system of control does not affect the question at issue one way or another.’

Judges:

Cross J

Citations:

[1969] RPC 1

Jurisdiction:

England and Wales

Citing:

Cited – Bollinger v Costa Brava Wine Co Ltd 1960
Intruders into the market brought into England a wine somewhat similar to Champagne. It had been produced in the Costa Brava district of Spain. They marketed it under the name ‘Spanish Champagne’. The French growers and shippers brought an action to . .

Cited by:

Cited – Chocosuisse, Kraft Jacobs Suchard (Schweiz) Ag, Chocoladefabriken Lindt and Sprungli (Schweiz) Ag v Cadbury Limited PatC 29-Oct-1997
The plaintiffs brought actions in passing off against the defendant company in respect of their chocolate products. They objected to the use of the terms ‘Swiss Chocolate’ applied to chocolates not made in Switzerland.
Held: The claimant had . .
Cited – HP Bulmer Ltd and Another v J Bollinger Sa and others CA 22-May-1974
Necessity for Reference to ECJ
Lord Denning said that the test for whether a question should be referred to the European Court of Justice is one of necessity, not desirability or convenience. There are cases where the point, if decided one way, would shorten the trial greatly. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Intellectual Property, Commercial

Updated: 01 July 2022; Ref: scu.239099

John Walker and Sons Ltd v Henry Ost and Co Ltd: ChD 1970

The plaintiff whisky distiller claimed in passing-off against the defendant who supplied bottles and labels to a distiller in Ecuador.
Held: An injunction was granted. Having cited from Singer v Loog, the court added: ‘I would be slow to decide that if a trader in England sells goods and labels which are true and has no knowledge of any improper use of those goods in a foreign country, such trader has committed a tort in England. But when I have already held as a fact that Mr Jindrich Ost, the proprietor of the first defendant, not only knew that the second defendant was going to add cane spirit and sell it as Scotch Whisky but intended that the whisky which was supplied should be admixed, bottled and have the labels put on the bottle describing it as Scotch Whisky, then in my judgment the first defendant’s acts in selling those instruments amount to tortious acts done in England.’

Judges:

Foster J

Citations:

[1970] RPC 489, [1970] 2 All ER 106, [1970] 1 WLR 917

Jurisdiction:

England and Wales

Citing:

Cited – Singer Manufacturing Co v Loog CA 1880
The defendant wholesalers imported sewing machines from Germany which they sold using documents which referred to the machines as using the Singer system. The word Singer was a trade mark of the plaintiffs. The retailers were told that the machines . .

Cited by:

Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Cited – White Horse Distillers Ltd v Gregson Associates Ltd 1984
Complaint was made that the defendants were assisting traders in Ecuador in passing off their products as those of the plaintiff.
Held: ‘He [defence counsel] submitted that there can never be a tort where the English exporter exports nothing . .
Cited – HP Bulmer Ltd and Another v J Bollinger Sa and others CA 22-May-1974
Necessity for Reference to ECJ
Lord Denning said that the test for whether a question should be referred to the European Court of Justice is one of necessity, not desirability or convenience. There are cases where the point, if decided one way, would shorten the trial greatly. . .
Cited – Fage UK Ltd and Another v Chobani UK Ltd and Another CA 28-Jan-2014
Lewison LJ said: ‘Appellate courts have been repeatedly warned, by recent cases at the highest level, not to interfere with findings of fact by trial judges, unless compelled to do so. This applies not only to findings of primary fact, but also to . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 July 2022; Ref: scu.239090

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 were not protected as a dramatic work: ‘it is not a work of action which is intended to be or is capable of being performed before an audience. On the contrary, it is a game. Although the game has a set of rules, the particular sequence of images displayed on the screen will depend in very large part on the manner in which it is played. That sequence of images will not be the same from one game to another, even if the game is played by the same individual. There is simply no sufficient unity within the game for it to be capable of performance. ‘ Though parts of the games were inspired by or derived from the originals for which protection was sought, those parts were not substantial, and the claim failed

Judges:

The Hon Mr Justice Kitchin

Citations:

[2006] EWHC 24 (Ch)

Links:

Bailii

Statutes:

Copyright, Designs and Patents Act 1988 4(1), Copyright (Computer Programs) Regulations 1992, Copyright Designs and Patents Act 1988 16

Jurisdiction:

England and Wales

Citing:

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. . .
Cited – Mehdi Norowzian v Arks Ltd and Guinness Brewing Worldwide Limited (No 2) CA 11-Nov-1999
The claimant film artist showed a film to an advertising agency, who did not make use of it, but later appeared to use techniques and styles displayed in the film in subsequent material sold to third parties.
Held: A film was protected as a . .
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 – Navitaire Inc v Easyjet Airline Co and Another ChD 30-Jul-2004
The claimant alleged infringement of its copyright in a software system which dealt with airline reservations. It was not said that any code had been copied, but merely that an express requirement of the defendant ordering the system was that it . .

Cited by:

Appeal from – Nova Productions Ltd v Mazooma Games Ltd and others CA 25-Jul-2006
Request for reference to European Court – infringement of copyright in computer game. . .
At First Instance – 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 . .
Cited – 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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 July 2022; Ref: scu.237914

Ultraframe (UK) Ltd v Fielding, Northstar Systems Ltd, Seaquest Systems Ltd etc: ChD 27 Jul 2005

Lewison J considered the nature of the duty to provide an account: ‘The taking of an account is the means by which a beneficiary requires a trustee to justify his stewardship of trust property. The trustee must show what he has done with that property. If the beneficiary is dissatisfied with the way that a trustee has dealt with trust assets, he may surcharge or falsify the account. He surcharges the account when he alleges that the trustee has not obtained for the benefit of the trust all that he might have done, if he had exercised due care and diligence. If the allegation is proved, then the account is taken as if the trustee had received, for the benefit of the trust, what he would have received if he had exercised due care and diligence. The beneficiary falsifies the account when he alleges that the trustee has applied trust property in a way that he should not have done (e.g. by making an unauthorised investment). If the allegation is proved, then the account will be taken as if the expenditure had not been made; and as if the unauthorised investment had not formed part of the assets of the trust. Of course if the unauthorised investment has appreciated in value, the beneficiary may choose not to falsify the account: in which case the asset will remain a trust asset and the expenditure on it will be allowed in taking the account.’

Judges:

Mr Justice Lewison

Citations:

[2005] EWHC 1638 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property, Torts – Other, Trusts

Updated: 01 July 2022; Ref: scu.236219

Henderson v Clippens Oil Co (Ltd) and Another: HL 23 Feb 1883

A patent was obtained for improvement in the destructive distillation of shale, and co., and in apparatus therefor. The specification stated that the invention ‘has for its object the economical and satisfactory obtainment and application of the heat required for the destructive distillation of shale, and co., and it comprises improved arrangements for the utilisation of the spent shale, and co., itself as fuel for supplying the heat or a portion thereof.’
The claim in the specification was for ‘(1) the conducting of the destructive distillation of shale, and co., substantially according to and by means of the arrangements and apparatus hereinbefore described; (2) the arranging of two or more retorts in one oven, but with a separate passage or space for the transference of the contents of each retort directly into a common fire-chamber substantially as hereinbefore described; (3) the applying of a valve in the passage or space through which the contents of each retort are transferred to the common fire-chamber, such valve being in addition to the door or cover which closes the discharge-opening of the retort substantially as and for the purpose hereinbefore described.’
The object of the invention was to utilise the spent shale as fuel without loss of heat, by passing it after distillation from the retort into the furnace without exposure to the air. This was accomplished by means of an arrangement of the doors of the retorts in relation to corresponding doors in the roof of the fire-chamber, which prevented the heat in the retorts from becoming too great, and also the door opening out of the retorts from being destroyed by excessive heat.
In a question of infringement of patent- held ( aff. judgment of Second Division) that what the specification described and the patent was obtained for was a certain novel and useful arrangement of apparatus for the purpose of managing the heat for distillation, and utilising for that purpose the spent shale, the essence of which arrangement was the placing and working of the doors in the retort and fire-chamber in a certain manner; (2) that the use of the common fire-chamber was on a proper construction of the specification not claimed as essential to the invention, but was only an incident of it, and therefore, (3) that an arrangement of apparatus which was substantially the same as that patented except that no common fire-chamber was used, was merely a colourable imitation of that of the patentee, as described by him and claimed under the first clause of his claim.

Judges:

Lord Chancellor, Lords Watson, Bramwell, and Fitzgerald

Citations:

[1883] UKHL 423, 20 SLR 423

Links:

Bailii

Jurisdiction:

Scotland

Intellectual Property

Updated: 30 June 2022; Ref: scu.636758

Coflexip Sa and Another v Stolt Comex Seaway Ms Ltd and others: ChD 5 Jan 2004

Judges:

Laddie J

Citations:

[2004] EWHC 3 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Appeal from – Coflexip S A and Another v Stolt Offshore Ms Ltd and others CA 27-Feb-2004
Proceedings had been brought by a third party in which the patent had been revoked. The Defendant in the first proceedings now sought release from an enquiry as to damages after being found, before the revocation, to have infringed the patent.
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 30 June 2022; Ref: scu.226159

Teletech Holdings v OHMI – Teletech International (Teletech Global Ventures): ECJ 25 May 2005

ECJ Community trade mark – Invalidity proceedings – Community word mark TELETECH GLOBAL VENTURES – National word mark TELETECH INTERNATIONAL – Right to be heard – Article 8, paragraph 1 b) and Article 52, paragraph 1 a), the Regulation (EC) No 40/94

Citations:

[2005] EUECJ T-288/03

Links:

Bailii

Statutes:

Regulation (EC) No 40/94

Intellectual Property, European

Updated: 30 June 2022; Ref: scu.225276

Cognis Deutschland Gmbh and Co Kg, Guido Baumoller, Achim Ansmann, Rolf Kawa, Dr Stephen Eichhorn And Andrea Urban – O/039/05: PO 14 Feb 2005

PO Patents – Inter Partes Decisions. – As a result of an uncontested application filed under section 13(1) by Cognis Deutschland GmbH and Co KG, it was found that Andrea Urban should be mentioned as a joint inventor in granted patent EP (UK) 1165887 and directed that an addendum slip mentioning her as a joint inventor be prepared for the granted patent for the invention.

Judges:

Mrs S Williams

Citations:

[2005] UKIntelP o03905, EP (UK) 1165887

Links:

PO, Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 30 June 2022; Ref: scu.225031

Naipes Heraclio Fournier v OHMI-France Cartes (Epee D’Un Jeu De Cartes): ECFI 11 May 2005

Community trade mark – Proceedings in relation to invalidity – Article 51(1)(a) of Regulation (EC) No 40/94 – Figurative mark comprising the representation of a sword in a pack of cards – Figurative mark comprising the representation of a knight of clubs in a pack of cards – Figurative mark comprising the representation of a king of swords in a pack of cards – Absolute grounds for refusal – Article 7(1)(b) and (c) of Regulation No 40/94.

Citations:

T-160/02, [2005] EUECJ T-160/02

Links:

Bailii

Statutes:

Regulation (EC) No 40/94 51(1)(a)

European, Intellectual Property

Updated: 30 June 2022; Ref: scu.224832

Blayney (T/A Aardvark Jewelry) v Clogau St David’s Gold Mines Ltd and others: ChD 20 Jul 2001

The court undertook an enquiry as to damages: ‘(1) Damages were to be assessed liberally on the basis of such inferences as the evidence justified.
(2) Damages were to be assessed by reference to two periods, November 1992 to February 1996 and March 1996 to March 1997. The difference between them is that in the latter period but not the former Mr Blayney was incorporating Welsh gold which the judge considered to be an important selling point.
(3) Damages were to be assessed by reference to the profit Mr Blayney would have made in respect of such of the sales of infringing articles effected by Clogau as he could show he would have made but for the infringement.
(4) In the absence of any evidence as to an appropriate rate of royalty for sales of infringing articles by Clogau which Mr Blayney could not show he would have made but for the infringement Mr Blayney was not entitled to damages.
(5) Mr Blayney had not made out a case for an award of additional damages under s.97(2) Copyright Designs and Patents Act 1988.’

Judges:

Kim Lewison QC

Citations:

[2002] FSR 14

Statutes:

Copyright Designs & Patents Act 1988

Jurisdiction:

England and Wales

Cited by:

Appeal from – Blayney (T/A Aardvark Jewelry) v Clogau St David’s Gold Mines Ltd and others CA 16-Jul-2002
. .
Lists of cited by and citing cases may be incomplete.

Damages, Intellectual Property

Updated: 30 June 2022; Ref: scu.276907

Regina v Zaman: CACD 1 Jul 2002

The defendant had been convicted of offences under the Act, and challenged a direction form the judge that the phrases ‘with a view to’ and ‘with intent to’ meant different things.
Held: The judge’s direction was correct. ‘With a view to’ in this context, meant that the offender contemplated some result, without necessarily wanting or intending it, which might realistically occur.

Judges:

Lord Justice Longmore, Mr Justice Wright and Judge Goddard, QC

Citations:

Times 22-Jul-2002, Gazette 12-Sep-2002

Statutes:

Trade Marks Act 1994 92(1)

Jurisdiction:

England and Wales

Intellectual Property, Crime

Updated: 30 June 2022; Ref: scu.174439

Pharmedica GMBH’s Trade Mark Application: ChD 2000

The tribunal was asked whether an assignee of a trademark should be substituted in existing opposition proceedings for the assignor. The assignment had taken place after the proceedings had begun.
Held: A tribunal has an inherent power to regulate its own proceedings. Pumfrey J: ‘Turning to the present case, I must first deal with the question whether the three-month time limit on oppositions was, as the hearing officer decided in this case, . . being circumvented. In my judgment, it plainly is not. Once the proceedings are on foot the time limit has ceased to be relevant to those proceedings at all.’ After referring to Industrie Chimiche Italia Centrale, Pumfrey J continued: ‘The effect of a substitution is that the party substituted carries on the original proceedings. He does not, by reason of substitution, become entitled to plead, if the pleadings are over, or file evidence, if the evidence is in, otherwise than by making application in the same manner as the original opponent would be obliged to apply if it wished to be allowed to revisit the pleadings or the evidence. No question of circumventing any time limit arises. So I do not think that to permit substitution offends against the requirements of the Act requiring an opposition to be started within three months of publication.’

Judges:

Pumfrey J

Citations:

[2000] RPC 536

Jurisdiction:

England and Wales

Citing:

Cited – Industrie Chimiche, Italia Centrale and Another v Alexander G Tsavliris and Sons Etc ComC 19-Jul-1995
Procedure – RSC Order 20 r.5 – amendment with leave – mistake – mistake as to identity of person intending to sue – mistake as to name of that party – distinction – Procedure- RSC Order 20 r.5(3) – amendment with leave – discretion – RSC Order 6 . .

Cited by:

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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 30 June 2022; Ref: scu.245173

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 claimant’s expert survey evidence was defective in several ways, but even so there was no evidence of confusion under the claim in passing off. Mere similarities between shapes of the bottles cannot amount to infringement The court considered the effect of a disclaimer within the registration: ‘The effect of a disclaimer is that the trade mark owner recognises that that which is disclaimed is not in itself distinctive of the origin of the goods or services in question. Accordingly, there will be no infringement of the trade mark where the only similarity between the mark and the sign consists of a similarity to those features that have been disclaimed. ‘
The correct comparison is a contextual comparison between the mark and the sign, having first identified both the mark and the sign. In that context the alleged infringements were not proven

Judges:

Lewison J

Citations:

[2006] EWHC 2355 (Ch), [2007] ETMR 1

Links:

Bailii

Statutes:

Trade Marks Act 1994 10(1)

Jurisdiction:

England and Wales

Citing:

Cited – O2 Holdings Ltd. and Another v Hutchison 3G Ltd (No 2) ChD 23-Mar-2006
. .
Cited – Devinlec Developpement Innovation Leclerc SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) ECJ 12-Jan-2006
ECJ Community trade mark – Figurative mark containing the verbal element ‘quantum’ – Opposition of the proprietor of the national figurative mark Quantieme – Relative ground of refusal – Likelihood of confusion – . .
Cited – Parfums Christian Dior v Evora BV ECJ 4-Nov-1997
ECJ As a court common to more than one Member State which has the task of ensuring that the legal rules common to the three Benelux States are applied uniformly and reference to which is a step in the proceedings . .
Cited – Reed Executive plc and Reed Solutions plc v- Reed Business Information Ltd, Reed Elsevier (UK) Ltd and totaljobs com Ltd ChD 19-Dec-2002
Pumfrey J said: ‘Under Art 5(1) (b) [section 10 (2)] the comparison is not a straightforward mark for sign comparison. On the contrary, it involves a global assessment of the likelihood of confusion as to origin of the goods or services concerned. . .
Cited – Societe Des Produits Nestle Sa v Mars UK Limited CA 26-Jul-2004
The appellant had sought to register as a trade mark the shape of a polo mint. The objector said it lacked sufficient distinctive character. The appellant sought to amend the specification of the trade mark to limit its application as to the goods . .
Cited – Arsenal Football Club Plc v Reed CA 21-May-2003
The claimant had obtained a judgment in the European Court on reference from the Chancery Division as to its claim against the defendant. On attempting to have that judgement enforced, the Chancery court found that the European Court had made a . .
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 – Regina v Johnstone HL 22-May-2003
The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act . .
Cited – Sabel BV v Puma AG, Rudolf Dassler Sport ECJ 11-Nov-1997
The test of whether a sign is confusing is how the use of the sign would be perceived by the average consumer of the type of goods in question. ‘The likelihood of confusion must therefore be appreciated globally, taking into account all factors . .
Cited – Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer ECJ 29-Sep-1998
In a complaint of trade mark infringement, and when comparing the mark and sign, a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods/services and vice versa.
Adidas-Salomon AG and Another v Fitnessworld Training Ltd ECJ 23-Oct-2003
The claimants had trade marks consisting of three parallel lines of contrasting colour to the underlying garment. They alleged infringement by the use of similar designs with two lines by the defendant. The directive allowed member states to elect . .
Cited – Lloyd Schuhfabrik Meyer v Klijsen Handel ECJ 22-Jun-1999
ECJ In accordance with the division of functions provided for by Article 177 of the Treaty (now Article 234 EC), the role of the Court of Justice is limited to providing the national court with the guidance on . .
Cited – General Motors Corporation v Yplon SA ECJ 14-Sep-1999
Europa Article 5(2) of First Council Directive 89/104 concerning trade marks – which extends the protection of a registered trade mark to products or services which are neither identical nor similar to those for . .
Cited – Mango Sport System Srl Socio Unico Mangone Antonio Vincenzo v Diknak OHIM 2005
(First Board of Appeal of OHIM) The Board held the registration of the trade mark ‘Mango’ for crash helmets potentially to take unfair advantage of the registered mark ‘Mango’ in relation to ladies clothing aimed at fashionable young women. The . .
Cited – Marca Mode CV v Adidas AG ECJ 22-Jun-2000
The reputation of a trade mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense.
Europa Article 5(1)(b) of First Directive . .
See Also – L’Oreal Sa and others v Bellure Nv and others ChD 24-May-2006
Action for trade mark infringement and passing off – suggestion that goods of such superior quality that no possibility of confusion. . .

Cited by:

Cited – Esure Insurance Ltd v Direct Line Insurance Plc ChD 29-Jun-2007
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted . .
Appeal from – L’Oreal Sa and others v Bellure Nv and others CA 10-Oct-2007
. .
At first instance – 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.

Intellectual Property

Updated: 30 June 2022; Ref: scu.245192

Regina v Johnstone, etc: CACD 1 Feb 2002

The several defendants appealed convictions for breaches of section 92 of the Act.
Held: The section presumed that a civil infringement of the Trade Mark had taken place. Accordingly any of the defences available to a civil action must be available also against a criminal action. Furthermore there was no conflict between the Act and the Directive.

Judges:

Lord Justice Tuckey, Mr Justice Pumfrey and Mr Justice Burton

Citations:

Times 12-Mar-2002, Gazette 28-Mar-2002, [2002] EWCA Crim 194

Links:

Bailii

Statutes:

Council Directive 89/104/EEC (OJ 1989 L40/5) the Trade Marks Directive, Trade Marks Act 1994

Jurisdiction:

England and Wales

Citing:

Cited – Regina v Lambert HL 5-Jul-2001
Restraint on Interference with Burden of Proof
The defendant had been convicted for possessing drugs found on him in a bag when he was arrested. He denied knowing of them. He was convicted having failed to prove, on a balance of probabilities, that he had not known of the drugs. The case was . .
Lists of cited by and citing cases may be incomplete.

Crime, Intellectual Property

Updated: 30 June 2022; Ref: scu.167750

Ampafrance v OHMI-Johnson and Johnson (Monbebe): ECFI 21 Apr 2005

ECJ Community trade mark – d-proceedings – Application for Community figurative mark containing the word element – monBeBe – Earlier word marks bebe – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1, b) and paragraph 5 of Regulation (EC) No 40/94

Judges:

MM Jaeger P

Citations:

T-164/03, [2005] EUECJ T-164/03

Links:

Bailii

Statutes:

Regulation (EC) No 40/94

European, Intellectual Property

Updated: 29 June 2022; Ref: scu.224393

ATOMIC Austria v OHMI (Judgment): ECFI 20 Apr 2005

ECJ Community trade mark – Word mark ATOMIC BLITZ – Opposition of the proprietor of national word marks ATOMIC – Evidence of renewal of registration of the earlier mark – Scope of the examination conducted by OHIM – Rejection of opposition – Article 8(1)(b) of Regulation (EC) No 40/94

Citations:

T-318/03, [2005] EUECJ T-318/03

Links:

Bailii

European, Intellectual Property

Updated: 29 June 2022; Ref: scu.224470

Gillette v OHM I- Wilkinson Sword (Right Guard Xtreme Sport): ECFI 13 Apr 2005

ECFI Community trade mark – d-proceedings – Application for Community figurative mark RIGHT GUARD XTREME SPORT – Earlier national figurative mark WILKINSON SWORD XTREME III – Likelihood of confusion – Refusal-registration – Article 8, paragraph 1 b) of Regulation (EC) No 40/94

Citations:

T-286/03, [2005] EUECJ T-286/03

Links:

Bailii

European, Intellectual Property

Updated: 29 June 2022; Ref: scu.224275

Duarte Y Beltran v OHMI – Mirato (Intea): ECFI 13 Apr 2005

ECJ Community trade mark –opposition – Community word mark INTEA – Earlier national word marks INTESA – d-Refusal to register – Relative ground for refusal – Article 8 paragraph 1 b) of Regulation (EC) No 40/94

Citations:

T-353/02, [2005] EUECJ T-353/02

Links:

Bailii

Statutes:

Regulation (EC) No 40/94

European, Intellectual Property

Updated: 29 June 2022; Ref: scu.224273

Premier Luggage and Bags Ltd v The Premier Company (UK) Ltd and Another: CA 26 Mar 2002

The owner of a registered trade mark ‘Premier’ sued for swing tags which carried the defendant’s full name ‘The Premier Company (UK) Ltd.’.
Held: A trade mark use can fall within the scope of the Art 6.1 defence. There there was no passing off or Art.5.1(a) infringement in respect of these: ‘If the use by Premier UK plc of swing tags does not amount to passing off, the claim for infringement of trade mark based on that use must fail also. This is because, as the judge recognised, there was no desire on the part of Premier UK to take unfair advantage of the reputation or goodwill of Premier Luggage. The swing tags were used for a legitimate commercial purpose – to identify the trade origin of Premier UK’s product and to take advantage of the existing goodwill and trade connections of Premier Decorations. The use of the name ‘The Premier Company (UK) Limited and the address ‘Premier House’ on the swing tags is within s.11(2)(a) of the 1994 Act.’
However, The Premier Company (UK) Ltd could not use Premier, Premier Luggage or the Premier Luggage Company with impunity under section 11(1)(a) because these were abbreviations or adaptations of the company’s name. There was no indication that it had adopted any of these words or phrases as a trading name

Judges:

Chadwick LJ

Citations:

[2002] EWCA Civ 387, [2003] FSR 5

Links:

Bailii

Statutes:

Trade Marks Act 1994 11(1)(a)

Jurisdiction:

England and Wales

Citing:

Appeal from – Premier Luggage and Bags Ltd v Premier Company (Uk) Ltd and Another ChD 17-Oct-2000
The word ‘Premier’ although devoid of distinctive character in itself, but having been registered as a trade mark, had acquired a sufficient distinctiveness to justify and found an action for infringement and passing off. The test was whether . .
Cited – GE Trade Mark HL 1973
A trade mark must be ‘distinctive’, it must be recognisable by a buyer of goods to which it has been affixed as indicating that they are of the same origin as other goods which bear the mark and whose quality has engendered goodwill. Trade Marks . .

Cited by:

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 – Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others CA 24-Feb-2010
The claimants owned Community and UK trade marks in the name ‘Cipriani’. The defendants operated a restaurant in London using, under the licence of another defendant, the same name. The claimant sought an injunction to prevent further use of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 29 June 2022; Ref: scu.170095

De Taranto v Cornelius: CA 17 Oct 2001

Mrs Cornelius fell into difficulties at her employment, and in the course of claiming damages, obtained a report from the appellant psychiatrist. There was a dispute, but the claimant said she had refused consent to her being referred again to another consultant. She said she had wanted a report for the purposes of the proceedings only. When the report was copied to other professionals, including her doctor, she claimed damages for defamation and breach of confidence by the Doctor. The issue resolved itself to the question of whether she had been referred for treatment or for a report.
Held: Although the judge’s findings as to the credibility of the two protagonists was difficult to reconcile with his findings, that aspect did not undermine the second finding that the report was to be prepared for one purpose, and was not should not have been or used for other purposes disclosed without the complainant’s consent.

Judges:

Lord Justice Simon Brown Lord Justice Mantel, And Citations: [2001] EWCA Civ 1511, [2002] EMLR 6, (2002) 68 BMLR 62

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property, Health Professions

Updated: 29 June 2022; Ref: scu.166644

Pharmacia Corporation, G D Searle and Company, Pfizer Inc v Merck and Co, Inc, Merck, Sharp and Dohme Limited: CA 14 Dec 2001

Question as to obviousness of patent.

Judges:

Lord Justice Aldous, Lord Justice Sedley, And, Lady Justice Arden

Citations:

[2001] EWCA Civ 1610, [2002] ENPR 10, [2002] RPC 41

Links:

Bailii

Statutes:

Patents Act 1977

Jurisdiction:

England and Wales

Citing:

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

Cited by:

Cited – Conor Medsystems Inc v Angiotech Pharmaceuticals Inc and others HL 9-Jul-2008
The respondents had applied for and obtained an order to revoke the appellant’s patent of a stent for obvousness. Though the parties had settled, the public law element required the intervention of the Comptroller General. The House was asked about . .
Cited – Generics (UK) Ltd and others v H Lundbeck A/S HL 25-Feb-2009
Patent properly granted
The House considered the patentability of a chemical product, citalopram made up of two enantiomers, as opposed to the process of its creation, questioning whether it could be new or was insufficient within the 1977 Act.
Held: The appeal . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 29 June 2022; Ref: scu.167220

United Biscuits v Asda: ChD 1997

Robert Walker J upheld a claim in passing off notwithstanding the existence of different branding. He said: ‘But it seems to me to be likely that [certain individuals acting for the defendants] were, under advice, seeking to make only such changes as were needed in order to avoid what they judged to be an unacceptable risk of being attacked for copying, while maintaining Puffin’s position as an obvious competitor and parody, and (they hoped) a ‘brand beater. I cannot escape the conclusion that, while aiming to avoid what the law would characterise as deception, [the defendant is] taking a conscious decision to live dangerously. That is not in my judgment something that the court is bound to disregard.’ The question of the similarity between the get up of two products should be judged, to a significant extent, as a matter of first impression.

Judges:

Robert Walker J

Citations:

[1997] RPC 513

Jurisdiction:

England and Wales

Cited by:

Cited – Specsavers International Healthcare Ltd and Others v Asda Stores Ltd ChD 30-Jul-2010
The claimant complained of the defendant’s use of its trade marks alleging infringement and passing off when it relaunched its own optician services. Having had advance notice of the details of the proposed campaign, the claimants had launched their . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 29 June 2022; Ref: scu.421578

Stephenson Jordan and Harrison Limited v Macdonald and Evans: CA 3 Dec 1951

An accountant engineer employed by the plaintiffs assigned to the defendants the copyright in a work derived from public lectures he had given. The plaintiffs obtained an injunction saying that the work contained confidential material and that having been prepared in the course of his employment, the copyright belonged to them. The publishers appealed.
Held: The defendant’s appeal succeeded in part. The claim of breach of confidence was not supported by the evidence and failed. The bulk of the work was derived from public lectures given outside the scope of the author’s employment as an accountant, and he owned and could assign the copyrights. In particular it seemed that some was written after the termination of the employment. Certain parts of it however were created as part of his employment and were not his to assign. There was a mixed contract with certain parts created under a contract of employment, and certain under a contract for services.

Judges:

Sir Raymoind Evershed MR, Denning and Morris LJJ

Citations:

[1952] 1 TLR 101, [1952] RCOC 10

Statutes:

Copyright Act 1911 5(1)(b)

Jurisdiction:

England and Wales

Intellectual Property, Employment

Updated: 29 June 2022; Ref: scu.430518

King Features Syndicate Inc v O and M Kleeman Ltd: ChD 1940

The plaintiff alleging copyright infringement, had relied on fifty five drawings of the Popeye character out of the many thousands of such drawings in the cartoon series. The defendant might have copied from any one of those thousands.
Held: The Court accepted that the fifty five drawings included the earliest from which all the many thousands of others were subsequently derived. The copying of a subsequent drawing was an indirect copying of one or more of the first fifty five.

Citations:

[1940] Ch 523

Jurisdiction:

England and Wales

Cited by:

Appeal from – King Features Syndicate Inc v O&M Kleeman Ltd CA 2-Jan-1940
. .
At first instance – King Features Syndicate Inc v O and M Kleeman Ltd HL 1941
The owners of copyright in drawings of ‘Popeye, the Sailor’ sued importers of ‘Popeye’ dolls and other toys. The defendants contended that the copyright in the original work had been lost by the operation of section 22 of the 1911 Act because the . .
Cited – IPC Media Ltd v Highbury-Leisure Publishing Ltd ChD 21-Dec-2004
The claimant magazine publisher alleged breach of copyright by the defendant in their magazine, as to the cover page designs used. It was not clear just which cover was said to have been copied.
Held: The first step in a copyright action is . .
Cited – Kaisha v Green Cartridge Company (Hong Kong) Limited PC 30-Apr-1997
(Hong Kong) The claimants complained of the sale by the defendants of refilled cartridges for use with their printers.
Held: The spare cartridge manufacturer’s appeal failed: ‘repair is by definition something which does not amount to the . .
Cited – Cala Homes (South) Ltd and others v Alfred McAlpine Homes East Ltd ChD 6-Jul-1995
The plaintiff alleged that the defendant had copied its house designs after a senior employee involved in creating the designs left and eventually came to work for the defendant. The plaintiff alleged that the copying was flagrant allowing . .
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.

Intellectual Property

Updated: 29 June 2022; Ref: scu.231499

L’Oreal v OHMI-Revlon (Flexi Air): ECFI 16 Mar 2005

Community trade mark – Opposition proceedings – Application for word mark FLEXI AIR – Earlier word mark FLEX – Relative ground for refusal – Likelihood of confusion – Request for proof of genuine use – Article 8(1)(b), Article 8(2)(a)(ii) and Article 43(2) of Regulation (EC) No 40/94

Citations:

T-112/03, [2005] EUECJ T-112/03

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 29 June 2022; Ref: scu.223655

Oakley Inc v Animal Ltd. and others: PatC 16 Mar 2005

Citations:

[2005] EWHC 419 (Patents), [2006] Ch 337

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Oakley Inc v Animal Ltd and others PatC 17-Feb-2005
A design for sunglasses was challenged for prior publication. However the law in England differed from that apparently imposed from Europe as to the existence of a 12 month period of grace before applying for registration.
Held: Instruments . .

Cited by:

See Also – Oakley Inc v Animal Ltd and others PatC 17-Feb-2005
A design for sunglasses was challenged for prior publication. However the law in England differed from that apparently imposed from Europe as to the existence of a 12 month period of grace before applying for registration.
Held: Instruments . .
See Also – Oakley Inc v Animal Ltd and others CA 20-Oct-2005
It was argued that the Secretary of State, when implementing the Directive in the 2001 Regulations, had exceeded his powers in preserving provisions of the Registered Designs Act. The judge had held the Seceretary had exceeded his powers. The . .
Cited – Alemo-Herron v Parkwood Leisure Ltd EAT 12-Jan-2009
EAT TRANSFER OF UNDERTAKINGS: Acquired rights directive
TRANSFER OF UNDERTAKINGS: Varying terms of employment
As a matter of construction of TUPE Reg 5(1), a contractual term entitling employees to . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 29 June 2022; Ref: scu.223589

Saint-Gobain Pam Sa v Fusion Provida Limited Electrosteel Castings Limited: CA 25 Feb 2005

In a challenge to a patent for obviousness: ‘Mere possible inclusion of something within a research programme on the basis you will find out more and something might turn up is not enough. If it were otherwise there would be few inventions which were patentable. The only research which would be worthwhile (because of the prospect of protection) would be in areas totally devoid of prospect. The ‘obvious to try test really only works where it is more-or-less self evident that what is being tested ought to work.’

Judges:

Lord Justice Peter Gibson Lord Justice Scott Baker

Citations:

[2005] EWCA Civ 177, [2005] EWCA Civ 258

Links:

Bailii, Bailii

Jurisdiction:

England and Wales

Cited by:

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.

Intellectual Property

Updated: 29 June 2022; Ref: scu.223288

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 language of the claim to mean.

Judges:

The President, Jacob, Hooper LJ

Citations:

[2005] EWCA Civ 137

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd CA 22-Oct-2009
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 29 June 2022; Ref: scu.223102

Experience Hendrix Llc v Purple Haze Records Ltd and Another: ChD 24 Feb 2005

The claimant company sought summary judgment against the defendants who had manufactured and sold unauthorised recordings of a concert by the late Mr Hendrix in Sweden in 1969.
Held: The performance was given retrospective protection under the 1988 Act. At the time of the performance, English law would have given no remedy, but the new right was given retrospective effect in the 1988 Act. That Sweden was not at the time a member of the European Community made no effective difference. The MCA v Charly case could be used to fix the defendants with personal responsibility.

Citations:

[2005] EWHC 249 (Ch), Times 05-May-2005

Links:

Bailii

Statutes:

Copyright Designs and Patents Act 1988 181

Jurisdiction:

England and Wales

Citing:

Applied – MCA Records Inc v Charly Records Ltd and others (No 5) CA 29-Nov-2001
Thre had been an action for copyright and trade mark infringement. The court considered the personal liability of directors of the company for the costs of the action. . .

Cited by:

At First Instance – Experience Hendrix Llc v Purple Haze Records Ltd and Another CA 3-Aug-2005
Claim in performance rights – challenge to order for security for costs on appeal – evidence available at date of first hearing. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 29 June 2022; Ref: scu.222982

Profile Software Ltd v Becogent Ltd: OHCS 16 Feb 2005

The pursuers claimed for breach of copyright and of a software licence. The defendants disputed the title or right of the pursuers to claim.
Held: The assignation of the rights in the software carried with it the rights to enforce intellectual property rights and rights in licences previously granted.

Judges:

Lord Kingarth

Citations:

[2005] ScotCS CSOH – 28, [2005] CSOH 28

Links:

Bailii

Jurisdiction:

Scotland

Citing:

Cited – Saphena Computing Ltd v Allied Collection Agencies Ltd 1995
The court faced a claim as regards an undeveloped computer system which was sold with bugs ‘warts and all’.
Held: The court spoke of expert evidence that in a bespoke system, bugs were inevitable. . .
Cited – Kaisha v Green Cartridge Company (Hong Kong) Limited PC 30-Apr-1997
(Hong Kong) The claimants complained of the sale by the defendants of refilled cartridges for use with their printers.
Held: The spare cartridge manufacturer’s appeal failed: ‘repair is by definition something which does not amount to the . .
Cited – Bank of Scotland v Dunedin Property Investment Co Ltd IHCS 24-Sep-1998
Issue of loan stock supported by charge for ‘all costs charges and expenses incurred’ this included the breakage cost of the bank in setting up interest-rate swap arrangements to protect itself against swings in costs. . .
Cited – British Actors Film Company Limited and Co v Glover 1918
Under a written agreement the owners of the copyright in a dramatic and the musical work agreed to let to the defendant the right of professionally performing the work in the provinces of the United Kingdom, reserving to themselves full liberty to . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contract

Updated: 29 June 2022; Ref: scu.222733

SPAG v OHMI – Dann and Becker: ECFI 1 Feb 2005

ECJ (Hooligan) (Intellectual Property) – Community mark – Opposition proceedings – Application for Community word mark HOOLIGAN – Earlier word marks OLLY GAN – Matters of fact or of law outside OHIM’s jurisdiction – Admissibility – Likelihood of confusio

Citations:

T-57/03, [2005] EUECJ T-57/03, [2005] ECR II-287

Links:

Bailii

European, Intellectual Property

Updated: 29 June 2022; Ref: scu.222625

Commission v France C-59/04: ECJ 27 Jan 2005

(Approximation Of Laws) Failure of a Member State to fulfill obligations – Directive 2001/29 / EC – Harmonization of certain aspects of copyright and related rights in the information society – Non-transfer within the prescribed period

Citations:

[2005] EUECJ C-59/04

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 29 June 2022; Ref: scu.222055

R Griggs Group Ltd, R Griggs and Co Ltd, Airwair Ltd v Evans, Raben Footwear Pty Ltd, Lewy, Lewy: CA 25 Jan 2005

The claimants distributed Doc Marten footwear. They asked an agency to prepare a logo. The agency paid an independent contractor to prepare it, but did not take an assignment of copyright to it. The contractor sold the rights in the logo to the defendants who distributed the shoes in Australia. The claimants obtained an order vesting the copyright in them. The defendant appealed.
Held: The appeal failed. The court adopted and approved the approach in Ray v Classic FM. There was no business sense in importing a clause under which the defendant would retain the copyright.

Judges:

Lord Justice Chadwick Mr Justice Lloyd Lord Justice Jacob

Citations:

[2005] EWCA Civ 11, [2005] FSR (31) 706

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See also – 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 . .
Appeal from – R Griggs Group Ltd and others v Evans and others ChD 2-Dec-2003
An advertising agency was requested to provide a logo. It employed an independent designer. Who owned the copyright, in this case of the AirWair logo? The defendants had taken an assignment of the copyright from the first author. The claimants . .
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 – Meikle v Maufe 1941
An implied licence is limited to what is in the joint contemplation of the parties at the date of the contract, and does not extend to enable the Client to take advantage of a new unexpected profitable opportunity.
Uthwatt J said: ‘It was . .
Cited – Liverpool City Council v Irwin HL 31-Mar-1976
The House found it to be an implied term of a tenancy agreement that the lessor was to be responsible for repairing and lighting the common parts of the building of which the premises formed part. In analysing the different types of contract case in . .
Cited – Philips Electronique v British Sky Broadcasting Ltd CA 1995
There is a presumption against adding terms to a contract. The presumption is stronger where the contract is in writing and represents an apparently complete bargain between the parties. Sir Thomas Bingham MR set out Lord Simon’s formulation, and . .
Cited – BP Refinery (Westernport) Pty Ltd v The Shire of Hastings PC 1977
(Victoria) The Board set out the necessary conditions for a clause to be implied into a contract.
Held: Lord Simon of Glaisdale said: ‘Their Lordships do not think it necessary to review exhaustively the authorities on the implication of a . .

Cited by:

Cited – Orvec International Ltd v Linfoots Ltd IPEC 18-Jun-2014
Action for passing off and breach of contract. The defendants had provided photography services, the copyright residing with the claimants. The claimant said that the defendant had continued use of the photographs after termination of the contract. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contract

Updated: 28 June 2022; Ref: scu.221741

E I Du Pont de Nemours and Co v S T Dupont (1): ChD 31 Oct 2002

Parties appealed from decisions of the Trade Marks Registry, and requested leave to introduce new evidence.
Held: It was not agreed what rules applied on appeals under the 1938 Act. The Trade Mark system had public interest effects as well as private law. The rules governing appeals were therefore different from other regimes. The courts should adopt a more relaxed attitude, and treat the appeal as a full re-hearing rather than as a review, and that, accordingly fresh evidence might be admissible.

Judges:

Neuberger J

Citations:

Times 07-Nov-2002, Gazette 09-Jan-2003, [2003] EWCA 1368

Statutes:

Trade Marks Act 1938 18, Civil Procedure Rules 52.11(2)

Jurisdiction:

England and Wales

Citing:

Cited – ‘Wunderkind’: Application No 2156362A TMR 15-Aug-2001
cw Inter Partes Decisions – Trade Marks – Opposition . .
See also – E I Du Pont de Nemours and Co v S T Dupont (2) ChD 22-Nov-2002
The parties had appeared before a hearing officer at the Trade Marks registry. The opponent of the registration sought leave to argue an additional point which, though unpleaded, could have been argued without any significant adjournment. The . .

Cited by:

See Also – E I Du Pont de Nemours and Co v S T Dupont (2) ChD 22-Nov-2002
The parties had appeared before a hearing officer at the Trade Marks registry. The opponent of the registration sought leave to argue an additional point which, though unpleaded, could have been argued without any significant adjournment. The . .
Cited – Haw and Another v City of Westminster Magistrates’ Court Admn 12-Dec-2007
The defendants appealed convictions for contempt of court, on the basis of having wilfully interrupted the court. The respondent said that no appeal lay.
Held: The statute was ambiguous, and ‘there can be no good reason why a person convicted . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Evidence, Civil Procedure Rules

Updated: 28 June 2022; Ref: scu.178034

Stewart v M’Clure, Naismith, Brodie, and Macfarlane, and Others: HL 22 Jul 1887

Agent and Client – Duty of Agent when lending Client’s Money on Security of Patent
A law-agent was employed by a client to obtain a loan on the security of a patent. Another client, after consulting the law-agent, lent pounds 5000. The patent was subsequently found to be invalid, having been anticipated by prior patents. An action was raised at the instance of the lender against the law-agent, for payment of the sum alleged to have been lost through the transaction, on the ground that before the loan was completed the defender had been advised by a patent-agent that a search ought to be made for the purpose of ascertaining the validity of the patent, and that this advice was concealed from the pursuer; that by reason of this concealment, and in ignorance of the advice given to the defender, the pursuer was led to advance his money on a worthless security. Held ( rev. judgment of First Division, diss. Lord Chancellor Halsbury) that the onus of proving that the communication had not been made lay upon the pursuer, and that he had failed to discharge it. Defenders assoilzied.

Judges:

Lord Chancellor (Halsbury), Earl of Selborne, Lord Watson, Lord Herschell, and Lord Macnaghte

Citations:

[1887] UKHL 153, 25 SLR 153

Links:

Bailii

Jurisdiction:

Scotland

Agency, Intellectual Property

Updated: 28 June 2022; Ref: scu.636754