DLP Ltd, Re UK Intellectual Property Office Decision: PatC 16 Nov 2007

First appeal before the court under the new scheme for ‘Comptroller’s opinions’. It raises two important issues:
i) Should this court entertain such an appeal at all?
ii) If it does, what approach should it adopt?

Judges:

Mr Justice Kitchin

Citations:

[2007] EWHC 2669 (Pat), [2008] 1 All ER 839, [2008] Bus LR 778

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 14 November 2022; Ref: scu.261326

Mayne Pharma Ltd and Another v Debiopharm Sa and Another: PatC 19 May 2006

Judges:

The Honourable Mr Justice Pumfrey

Citations:

[2006] EWHC 1123 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 14 November 2022; Ref: scu.241790

Environmental Technologies Inc (EPI) and Another v Symphony Plastic Technologies Plc and Another: CA 26 Jan 2006

Alleged breach of trade secrets.

Citations:

[2006] EWCA Civ 3, [2006] 1 WLR 495

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – EPI Environmental Technologies Inc and Another v Symphony Plastic Technologies Plc and Another ChD 21-Dec-2004
The claimant had developed an additive which would assist in making plastic bags bio-degradable. They alleged that, in breach of confidentiality agreements, the defendants had copied the product. The defendants said the confidentiality agreement was . .

Cited by:

Mentioned – Sibley and Co v Reachbyte Ltd and Another ChD 4-Nov-2008
Solicitors appealed against a costs order made refusing them payment of all of Leading and Junior counsel’s fees.
Held: The leading counsel involved had not provided anything like a detailed account of the time he had spent on what was a . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 14 November 2022; Ref: scu.238132

Phonographic Performance Limited v Maitra and Others: CA 3 Feb 1998

An injunction without time limit should normally be granted immediately where there was clear infringement and a threat of continued infringement. Copyrights can sometimes typically be identified only by reference to the trade marks under which the copyright recordings have been released.

Judges:

Lord Woolf MR

Citations:

Times 10-Feb-1998, [1998] EWCA Civ 137, [1998] 1 WLR 870, [1998] 2 All ER 638

Links:

Bailii

Statutes:

Jurisdiction:

England and Wales

Citing:

Appeal from – Phonographic Performance Ltd v Maitra and Others ChD 14-Jul-1997
The use of an injunction to prevent the use of copyrighted recordings was not to be misused to obtain recovery for past unlicensed playing. . .

Cited by:

Cited – Ludlow Music Inc v Williams and others ChD 2-Oct-2000
The claimant sought damages for copyright infringement in respect of two works which parodied a song to which they owned the rights.
Held: The amount copied, being as much as a quarter of the original work, meant that the claim was . .
Cited – Twentieth Century Fox Film Corp and Others v British Telecommunications Plc ChD 28-Jul-2011
The claimant rights holders sought an order to require the defendant broadband internet provider to deny access to its users to websites which were said to facilitate the distribution of infringing copies of their films. An earlier judgment had . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 14 November 2022; Ref: scu.143615

Eternal (Trade Mark: Opposition): IPO 12 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection

Judges:

Ms J Ralph

Citations:

[2019] UKIntelP o46719

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 14 November 2022; Ref: scu.661032

Intellectual Property

Updated: 14 November 2022; Ref: scu.471279

[2013] EWPCC 7

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 14 November 2022; Ref: scu.470954

Kohler Mira Ltd v Bristan Group Ltd: PCC 28 Jan 2013

Judges:

Birss QC J

Citations:

[2013] EWPCC 5

Links:

Bailii

Intellectual Property, Costs

Updated: 14 November 2022; Ref: scu.470953

Judges:

Kitchin J

Citations:

[2008] EWHC 1083 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property, Costs

Updated: 13 November 2022; Ref: scu.268010

Intellectual Property

Updated: 12 November 2022; Ref: scu.311791

Buhler Ag v FP Spomax Sa: PatC 28 Apr 2008

Judges:

Mann J

Citations:

[2008] EWHC 1109 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property, Costs

Updated: 12 November 2022; Ref: scu.268792

Judges:

Sir William Blackburne

Citations:

[2012] EWHC 3679 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – British Sky Broadcasting Group Plc and Others v Digital Satellite Warranty Cover Ltd and Others ChD 7-Oct-2011
The parties now disputed whether they had reached a binding agreement settling the principal dispute, which was as to the alleged misuse of confidential information from its customer database. The defendants sought a stay. The claimants said that . .
See Also – British Sky Broadcasting Group Plc and Others v Digital Satellite Warranty Cover Ltd and Others ChD 27-Oct-2011
The claimants sought summary judgment in their action against the defendants for misuse of confidential information from their customer database.
Held: Summary judgment was granted agains the personal defendants. The two companies and . .
See Also – British Sky Broadcasting Group Plc v Digital Satellite Warranty Cover Ltd and Others ChD 1-Oct-2012
The claimants alleged misuse by the defendant companies of confidential information taken from its customer database.
Held: The claims failed. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Costs

Updated: 12 November 2022; Ref: scu.467205

Louver-Lite Ltd v Harris Parts Ltd (T/A Harris Engineering): PCC 23 Nov 2012

Citations:

[2012] EWPCC 53

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 12 November 2022; Ref: scu.467168

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 12 November 2022; Ref: scu.661045

[2012] EWCA Civ 1708, [2013] BUS LR 866, [2012] WLR(D) 392

Links:

Bailii, WLRD

Jurisdiction:

England and Wales

Citing:

Cited – Usher v Barlow CA 1952
A wall plaque was published before 1950. Its design was an original artistic work but was produced for the purpose of reproduction by an industrial process. It was not registered as an industrial design under the applicable designs legislation . .
Cited – Caproni v Alberti 1891
The defendant copied three casts made by the plaintiff of various arrangements of fruit and leaves. His defence was that the 1814 Act did not refer to casts of flowers, leaves or fruit and that such casts did not fall within the words ‘any subject . .
Cited – Clarke’s Registered Design CA 1896
Lindley LJ said: ‘The Act is confined to designs applicable to manufactured articles, and to the application of designs to such articles. Again, the Act does not apply to the things to which design is applied; the Act applies to the design applied . .
Cited – Britain v Hanks Bros and Co 1902
The plaintiff claimed copyright in a model soldier cast in metal as a statue. The defendant argued that the statute was intended to apply only to substantial works of art, such as busts, large sculptures and casts of copies of works recognised as . .
Cited – 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 . .
Appeal from – Lucasfilm Ltd and others v Ainsworth and Another ChD 31-Jul-2008
The parties disputed ownership of the designs for various props used in the Star Wars films. The defendant had developed designs from ideas originating within the claimant’s companies.
Held: The judgment from the US in a similar claim was . .
Cited – Pytram v Models (Leicester) Ltd ChD 1930
A model of a wolf-cub’s head was produced from a papier-mache mould in order to be used as a totem by the Boy Scouts Association. They had failed to register it as a design under the 1907 Act and sued for infringement of their copyright under the . .
Cited – Singh v Singh CA 1-Feb-1971
The wife appealed against refusal of her petition for agility and for the absence of consent. It had been an arranged marriage, and she met H at the altar. She found him repugnant, and refused to consummate the marriage.
Held: Her appeal . .
Cited – Wham-O Manufacturing Co v Lincoln Industries Ltd 1984
(Court of Appeal New Zealand) The wooden models made from preliminary drawings, which was used to produce a mould from which moulded discs known as Frisbees were made, fell ‘within the definition of sculptures and are thus properly the subject of . .
Cited – Davis (J and S) Holdings v Wright Health Group ChD 1988
The parties disputed the status in intellectual property law of a model of a dental impression tray. A cast was prepared from the model, and a final form prepared from the cast. The author, a professor, made a mock-up of materials but then drew from . .
Cited – British South Africa Company v Companhia de Mocambique HL 8-Sep-1893
Two companies, one Portuguese, the other British and controlled by Cecil Rhodes, were in dispute about a large territory called Manica. The Portuguese company complained that they owned lands and mineral rights in Manica yet the British company had . .

Cited by:

Appeal from – 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: 11 November 2022; Ref: scu.384149

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 against the respondent in the US for punitive damages, but these had not been collected, and the courts below had declared then unenforceable here.
Held: The judgment as to the applicability of English copyright below was upheld insofar as the helmets were not sculptures. It would be inappropriate to stray too far from what would normally be regarded as a sculpture. Not every three dimensional representation of a concept qualifies. The helmet remained a utilitarian item, even though it had a clear role in an artistic work, the film.
However the US judgment was justiciable here. English courts have jurisdiction to entertain claims in relation to infringement of foreign copyrights where there is a basis for in personam jurisdiction for those courts over a defendant: ‘in the case of a claim for infringement of copyright of the present kind, the claim is one over which the English court has jurisdiction, provided that there is a basis for in personam jurisdiction over the defendant, or, to put it differently, the claim is justiciable. It is clear that much of the underpinning of the Mocambique rule and the decision in Potter v Broken Hill Pty Co Ltd has been eroded. All that is left of the Mocambique rule (except to the extent that it is modified by the Brussels I Regulation) is that there is no jurisdiction in proceedings for infringement of rights in foreign land where the proceedings are ‘principally concerned with a question of the title, or the right to possession, of that property.’ So also article 22(1) of the Brussels I Regulation does not apply to actions for damages for infringement of rights in land.’

Judges:

Lord Phillips, President, Lord Walker, Lady Hale, Lord Mance, Lord Collins

Citations:

[2011] 3 WLR 487, [2011] FSR 41, [2011] Bus LR 1211, [2011] UKSC 39, UKSC 2010/0015, [2011] 4 All ER 817, [2011] FSR 41, [2012] 1 All ER (Comm) 1011, [2012] 1 AC 208, [2012] EMLR 3,, [2011] ECDR 21

Links:

Bailii, Bailii Summary, SC, SC Summary

Statutes:

Copyright Designs and Patents Act 1988 4 51 52, Copyright (Industrial Process and Excluded Articles) (No 2) Order 1989 (SI 1989/1070)

Jurisdiction:

England and Wales

Citing:

At ChD – Lucasfilm Ltd and others v Ainsworth and Another ChD 31-Jul-2008
The parties disputed ownership of the designs for various props used in the Star Wars films. The defendant had developed designs from ideas originating within the claimant’s companies.
Held: The judgment from the US in a similar claim was . .
Appeal from – Lucasfilm Ltd and Others v Ainsworth and Another CA 16-Dec-2009
The claimants had made several Star Wars films for which the defendants had designed various props items. The parties disputed ownership of the rights in the designs, and in articular of a stormtrooper helmet. The issues came down to whether the . .
Cited – Gahagan v Cooper 4-Dec-1811
Lord Ellenborough discussed the 1798 Act, saying: ‘The statute seems to have been framed with a view to defeat its own object’ . .
Cited – Britain v Hanks Bros and Co 1902
The plaintiff claimed copyright in a model soldier cast in metal as a statue. The defendant argued that the statute was intended to apply only to substantial works of art, such as busts, large sculptures and casts of copies of works recognised as . .
Cited – Pytram v Models (Leicester) Ltd ChD 1930
A model of a wolf-cub’s head was produced from a papier-mache mould in order to be used as a totem by the Boy Scouts Association. They had failed to register it as a design under the 1907 Act and sued for infringement of their copyright under the . .
Cited – British Leyland Motor Corporation Ltd v Armstrong Patents Co Ltd HL 1986
The claimant’s product was made from drawings. The drawings were protected as copyright artistic works. They were reproduced in a three dimensional form by the claimant’s own products. Someone who copied the claimant’s products indirectly copied the . .
Cited – Swarbrick v Burge 26-Apr-2007
Austlii (High Court of Australia) Copyright – Artistic works – Works of artistic craftsmanship – The respondent obtained an injunction against infringement by the appellants of the respondent’s ownership of . .
Cited – 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: . .
Cited – 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 – George Hensher Ltd v Restawile Upholstery (Lancs) Ltd HL 1975
The parties dispute the existence of copyright in a prototype of a piece of furniture.
Held: The term ‘craftsmanship’ in the Act suggests a durable useful handmade object.
Lord Reid explained the significance of the intention of the maker . .
Cited – Wham-O Manufacturing Co v Lincoln Industries Ltd 1984
(Court of Appeal New Zealand) The wooden models made from preliminary drawings, which was used to produce a mould from which moulded discs known as Frisbees were made, fell ‘within the definition of sculptures and are thus properly the subject of . .
Cited – Wildash v Klein 2004
(Supreme Court of the Northern Territory – Australia) The parties, two women, each of whom made craftwork depicting local wildlife for sale at markets. Initially they co-operated but later each accused the other of copyright infringement. The . .
Cited – Metix (UK) Ltd v G H Maughan (Plastics) Ltd ChD 1997
The plaintiff sought protect its products by claiming copyright protection in the moulds made for making industrial products (twin cartridges like a double-barrelled syringe, which held products prior to their being mixed) The plaintiff claimed that . .
Cited – Breville Europe v Thorn EMI Domestic Appliances Ltd ChD 1995
Copyright was asserted in plastic shapes used as moulds for the heated plates in a sandwich toaster.
Held: The defendants had not appropriated the plaintiff’s designs contained in their drawings in producing their own machine. Falconer J . .
Cited – Davis (J and S) Holdings v Wright Health Group ChD 1988
The parties disputed the status in intellectual property law of a model of a dental impression tray. A cast was prepared from the model, and a final form prepared from the cast. The author, a professor, made a mock-up of materials but then drew from . .
Mentioned – Pro Sieben Media AG v Carlton Television Ltd and Another CA 7-Jan-1999
The defendant was accused of infringing copyright in a TV programme relating to the pregnancy of a woman with eight foetuses. The defendant claimed fair dealing, but that defence was rejected by the trial judge.
Held: The decision was . .
Approved – 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 – Biogen Plc v Medeva Plc HL 31-Oct-1996
The claim patented sought to protect a genetic molecule rather than a whole mouse namely that the molecule would, if inserted into a suitable host cell, cause the cell to make antigens of the Hepatitis B virus. A recombinant method of making the . .
Overruled – Tyburn Productions Ltd v Conan Doyle ChD 1990
The rule in ‘British South Africa’ extends also to intellectual property. The court was asked whether, many years after the death of Sir Arthur Conan Doyle, there still existed copyrights or other intellectual property rights under the laws of the . .
Cited – AMP Inc v Utilux Pty Ltd HL 1971
The 1949 Act denied protection to the features of a design that were solely dictated by a product’s technical function.
Held: A product’s configuration was solely dictated by its technical function if every feature of the design was determined . .
Cited – Hosokawa Micron International Inc v Fortune 1990
(Federal Court of Australia) A design which is dictated solely by function is not a ‘design’ within the meaning of section 4 of the Designs Act 1906. Lockhart J said that: ‘The essence of the registrability of a design is that it has an element of . .
Cited – Duke of Brunswick v The King of Hanover HL 31-Jul-1948
The Duke claimed that the King of Hanover had been involved in the removal of the Duke from his position as reigning Duke and in the maladministration of his estates.
Held: ‘A foreign Sovereign, coming into this country cannot be made . .
Cited – Underhill v Hernandez 29-Nov-1897
(US Supreme Court) Underhill, a US citizen, had constructed a waterworks in Bolivar for the government which was eventually overthrown by revolutionary forces, one of whose generals was Hernandez. After Hernandez had captured Bolivar, Underhill . .
Cited – Potter v Broken Hill Pty Co Ltd 21-Aug-1905
VLR (Supreme Court – Victoria) International law – Conflict of laws – Tort committed abroad – Jurisdiction – Patent in New South Wales – Infringement by Victorian company in New South Wales of New South Wales . .
Mentioned – Potter v Broken Hill Pty Co Ltd 20-Mar-1906
(High Court of Australia) (affirmed) . .
Cited – British South Africa Company v Companhia de Mocambique HL 8-Sep-1893
Two companies, one Portuguese, the other British and controlled by Cecil Rhodes, were in dispute about a large territory called Manica. The Portuguese company complained that they owned lands and mineral rights in Manica yet the British company had . .
Cited – Land Oberosterreich v CEZ (Judgments Convention/Enforcement Of Judgments) ECJ 11-Jan-2006
ECJ Interpretation of Article 16(1)(a) of the Brussels Convention – Exclusive jurisdiction for ‘proceedings which have as their object rights in rem in immovable property’ – Action for the abatement of a nuisance . .
Cited – Def Lepp Music v Stuart-Brown 1986
A claim to infringement of copyright by acts performed in the Netherlands and Luxembourg was not justiciable in England, because such a claim cannot satisfy the double-actionability rule, namely, that the relevant acts must be actionable in the . .
Cited – Owusu v Jackson ECJ 1-Mar-2005
ECJ Brussels Convention – Territorial scope of the Brussels Convention – Article 2 – Jurisdiction – Accident which occurred in a non – Contracting State – Personal injury – Action brought in a Contracting State . .
Cited – Hesperides Hotels Ltd and Another v Aegean Turkish Holidays Ltd and Another CA 1978
An action was brought by the displaced owner of a hotel in Northern Cyprus taken over by the Turkish administration.
Held: The court declined to exercise an original jurisdiction in the northern part of Cyprus.
Lord Denning MR said that . .
Cited – Aksionairnoye Obschestvo A M Luther v James Sagor and Co CA 1921
A claim was made as to property seized by a decree of Russian revolutionaries later recognised as the government.
Held: A court is required to recognise a foreign state’s dealings with private proprietary rights within its jurisdiction. An . .
Cited – Buttes Gas and Oil Co v Hammer (No 3) HL 1981
In a defamation action, issues arose as to two conflicting oil concessions which neighbouring states in the Arabian Gulf had granted over their territorial and offshore waters. The foreign relations of the United Kingdom and Iran were also involved . .

Cited by:

Cited – Human Genome Sciences Inc v Eli Lilly and Company SC 2-Nov-2011
The court considered an appeal against the declaration of invalidity of a biomedical patent for a new human protein on the grounds that it was not susceptible of industrial application.
Held: The patentee’s appeal succeeded. The court had to . .
Cited – Seven Arts Entertainment Ltd v Content Media Corporation Plc and Others ChD 18-Mar-2013
The claimant sought summary judgment on its claim for copyright infringement based upon judgements on the same materials in Canada. . .
Cited – PMS International Group Plc v Magmatic Ltd SC 9-Mar-2016
Overall Impression of Design is a Judgment
The respondent had alleged infringement of its registered design in the ‘Trunki’, a ride-on children’s suitcase. At first instance, the judge had held that the surface decorations were to be ignored. On appeal it had been held that the judge had . .
Cited – Belhaj and Another v Straw and Others SC 17-Jan-2017
The claimant alleged complicity by the defendant, (now former) Foreign Secretary, in his mistreatment by the US while held in Libya. He also alleged involvement in his unlawful abduction and removal to Libya, from which had had fled for political . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Jurisdiction

Leading Case

Updated: 11 November 2022; Ref: scu.442226

Pearce v Ove Arup Partnership Ltd and others: CA 21 Jan 1999

An English court does not have to refuse an application which sought to apply a foreign copyright law in a claim based on acts committed abroad on the basis that not actionable here. Such restrictions applicable to land actions only: ‘It is, we think, clear from an analysis of the judgments in the Mocambique case that the House of Lords treated the question whether the English courts should entertain an action for trespass to foreign land as one of justiciability. The English courts should not claim jurisdiction to adjudicate upon matters which, under generally accepted principles of private international law, were the peculiar province and competence of another state . . ‘

Citations:

Gazette 03-Mar-1999, Times 10-Feb-1999, [1999] EWCA Civ 625, [2000] Ch D 402, [1999] 1 All ER 769

Jurisdiction:

England and Wales

Citing:

Appeal from – Pearce v Ove Arup Partnership Ltd and Others ChD 17-Mar-1997
A UK court may not decline jurisdiction in enforcing Dutch copyright law if it is asked to do so. . .
Cited – British South Africa Company v Companhia de Mocambique HL 8-Sep-1893
Two companies, one Portuguese, the other British and controlled by Cecil Rhodes, were in dispute about a large territory called Manica. The Portuguese company complained that they owned lands and mineral rights in Manica yet the British company had . .

Cited by:

Cited – Chagos Islanders v The Attorney General, Her Majesty’s British Indian Ocean Territory Commissioner QBD 9-Oct-2003
The Chagos Islands had been a British dependent territory since 1814. The British government repatriated the islanders in the 1960s, and the Ilois now sought damages for their wrongful displacement, misfeasance, deceit, negligence and to establish a . .
Cited – R Griggs Group Ltd and others v Evans and others (No 2) ChD 12-May-2004
A logo had been created for the claimants, by an independent sub-contractor. They sought assignment of their legal title, but, knowing of the claimant’s interest the copyright was assigned to a third party out of the jurisdiction. The claimant . .
Cited – Sawyer v Atari Interactive Inc CA 2-Mar-2007
The claimant designed games software and complained of infringements by the defendant of licensing agreements by failing to allow audits as required.
Held: The defendant should be allowed to be heard on the standard practices for management of . .
Lists of cited by and citing cases may be incomplete.

Jurisdiction, Intellectual Property

Updated: 11 November 2022; Ref: scu.145540

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 sought an order for its transfer, and an order was so made. Before it was perfected the defendant brought this application, denying that the court had such power in the case of a foreign copyright.
Held: The court had power to hear a new point, but not merely because the parties so agreed. We should treat the fact that the land is situate abroad as affecting the choice of law, not jurisdiction, if the case is one in which it is sought to enforce an equitable claim in personam: ‘a claim to have foreign land conveyed to one, based on an English contract and made against a purchaser of the land with prior notice of that contract, could in principle succeed, provided the foreign law would not overreach our doctrine of notice. It would be a claim in personam, not in rem.’ This case concerned the court’s equitable in personam jurisdiction. As such it was not a breach of international comity to order transfer of the ownership of the foreign copyrights. This avoided the need for a multiplicity of proceedings, and it had not been shown that foreign courts would not respect the order made in equity here. The court did have power to make orders affecting the ownership of foreign intellectual property rights.

Judges:

Peter Prescott QC

Citations:

[2004] EWHC 1088 (Ch), Times 27-May-2004, [2005] Ch 153, [2004] FSR 939

Links:

Bailii

Bailii

Jurisdiction:

England and Wales

Citing:

Cited by:

See Also – British Sky Broadcasting Group Plc v Digital Satellite Warranty Cover Ltd and Others ChD 1-Oct-2012
The claimants alleged misuse by the defendant companies of confidential information taken from its customer database.
Held: The claims failed. . .
See Also – British Sky Broadcasting Group Plc and Others v Digital Satellite Warranty Cover Ltd and Others ChD 19-Dec-2012
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 10 November 2022; Ref: scu.447616

Football Association Premier League Ltd and Others v QC Leisure and Others: ChD 3 Feb 2012

The claimant complained that in using decoders imported from Greece, the defendants had infringed their copyrights.

Judges:

Kitchin J

Citations:

[2012] EWHC 108 (Ch)

Links:

Bailii

England and Wales

Citing:

Cited by:

See Also – Football Association Premier League Ltd and Others v QC Leisure (A Trading Name) and Others ChD 13-Nov-2008
Football organisations applied to be joined to a case being remitted to the European Court for the purpose of giving their views on the questions raised. The European Court practice only allowed for states to act as interveners. The court had . .
See Also – Football Association Premier League Ltd and Others v QC Leisure and Others ChD 3-Feb-2012
The claimant complained that in using decoders imported from Greece, the defendants had infringed their copyrights. . .
See Also – Football Association Premier League and Others v QC Leisure ECJ 16-Dec-2009
ECJ (Order) REFERENCES for a preliminary ruling under Article 234 EC from the High Court of Justice of England and Wales, Chancery Division, and the High Court of Justice of England and Wales, Queen’s Bench . .
See Also – Football Association Premier League and Others v QC Leisure ECJ 3-Feb-2011
ECJ Advocate General’s Opinion – Satellite transmission of football matches – Marketing of decoder cards which have been lawfully placed on the market in other Member States – Directive 98/84/EC – Legal . .
See Also – Football Association Premier League and Others v QC Leisure ECJ 4-Oct-2011
ECJ Judgment – Satellite broadcasting – Broadcasting of football matches – Reception of the broadcast by means of satellite decoder cards – Satellite decoder cards lawfully placed on the market in one Member . .
Lists of cited by and citing cases may be incomplete.

Media, Intellectual Property

Updated: 10 November 2022; Ref: scu.270462

Mexichem UK Ltd v Honeywell International Inc: CA 1 Apr 2020

The issue in this appeal is whether the judge, HHJ Hacon, was correct, in an action for revocation of a number of patents, to refuse to strike out a claim for additional declaratory relief.

Judges:

Lord Justice Floyd

Citations:

[2020] EWCA Civ 473

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 10 November 2022; Ref: scu.649505

Citations:

[2012] EWHC 3318 (Pat)

Links:

Bailii

Intellectual Property

Updated: 09 November 2022; Ref: scu.466310

Vernacare Ltd v Environmental Pulp Products Ltd: PCC 30 Oct 2012

Citations:

[2012] EWPCC 49

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 November 2022; Ref: scu.465808

Bailey and Another v Graham (Aka ‘Levi Roots’) and Others: CA 16 Nov 2012

The claimants asserted an interest under contract and confidence in respect of a Jamaican sauce which had been successfully taken to market by the defendant. They now appealed against rejection of the claim.

Citations:

[2012] EWCA Civ 1469

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – Bailey and Another v Graham and Others ChD 25-Nov-2011
. .
Lists of cited by and citing cases may be incomplete.

Contract, Intellectual Property

Updated: 06 November 2022; Ref: scu.465832

Wilkinson v London Strategic Health Authority: PCC 14 Nov 2012

Citations:

Intellectual Property

Updated: 06 November 2022; Ref: scu.465805

Samsung Electronics (UK) Ltd v Apple Inc: CA 9 Nov 2012

Citations:

[2012] EWCA Civ 1430

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 November 2022; Ref: scu.465711

Starbucks (HK) Ltd and Others v British Sky Broadcasting Group Plc and Others: ChD 2 Nov 2012

The claimants asserted infringement by the defendants of their registered Community Trade Mark by their announcement of a new TV station ‘NOW TV’. The defendants in turn challenged the validity of the mark.
Held: The court found that a substantial number of Chinese speakers permanently or temporarily resident in the UK were acquainted with PCCM’s NOW TV service through exposure to it when residing in or visiting Hong Kong. He also found that PCCM’s NOW TV service had acquired a reputation amongst members of the Chinese-speaking community in the UK, based on their exposure to it via PCCM’s NOW TV ‘channel’ on the YouTube website and PCCM’s NOW TV websites (together ‘the websites’) as well as the showing of PCCM’s programmes on international flights. Arnold J held that this reputation was modest but more than de minimis. However, it was not sufficient for PCCM to identify a body of people in the UK who associated the mark NOW TV with its IPTV service in Hong Kong: they were not customers in the UK, and therefore did not represent goodwill in the jurisdiction. He also considered that the mere accessibility of PCCM’s material in the UK via the websites did not give rise to a protectable goodwill, stating that ‘the key question is whether the viewers of PCCM’s programmes in the [UK] were customers for its service so as to give rise to a protectable goodwill in the UK’
‘i) The CTM is invalid under Article 7(1)(c), alternatively Article 7(1)(b), of the CTM Regulation.
ii) Even if the CTM is valid, Sky have not infringed
iii) If the CTM were valid and Sky’s use was within Article 9(1)(b) of the CTM Regulation, Sky would not have a defence under Article 12(b).
iv) PCCW’s claims for passing off fail.’

Judges:

Arnold J

Citations:

[2012] EWHC 3074 (Ch), [2013] FSR 29

Links:

Bailii

Statutes:

Bode Oluwa (Patent) O/378/12: IPO 3 Oct 2012

The application was filed on 29 June 2009 by an applicant who was resident in China, but who had correctly provided a UK address for service. The application proceeded normally until 21 June 2011, when the Office sent the applicant a reminder that if he wished to continue with the application, the request for a substantive examination should be filed on a Form 10 with the prescribed fee, on or before 5 July 2011, unless a request to extend that time by two months was made at an additional cost.
The Form 10 was not received by the due date but was filed late on 15 August 2011, but with no request to extend the deadline for filing the Form 10. Subsequent attempts by the Office to contact him by letter in August and October 2011 proved to be unsuccessful. The application was therefore terminated. It transpired the first the applicant knew his request for substantive examination had been unsuccessful due to its late filing was when he received copies of the official letters forwarded by his family to his address in China on 3 November 2011. On 28 December 2011 the applicant requested reinstatement of the application. After examination of the evidence filed by the applicant, the Office wrote to him explaining that the case for reinstatement had not been made out because the failure to file the Form 10 on time was not ‘unintentional’ as required by s. 20(A) of the Act. The applicant subsequently requested to be heard on this matter.
At the hearing, the HO had to investigate in further detail whether the application for reinstatement had been filed within the time allowed under rule 32(2)(a) because the evidence filed prior to the hearing was inconclusive on this point. After submissions at the hearing and further evidence filed after it, he concluded that the request for reinstatement had been filed in time.
He therefore went on to consider whether the applicant’s failure to file his Form 10 on time was unintentional. He concluded that Mr Oluwa had been made aware of the all the requirements he needed to fulfil in order to file his Form 10 but that had made a conscious decision to put off making the payment until after he had returned home to China. As such he found that the applicant’s failure to file the Form 10 on time could not be taken to have been unintentional as required by section 20A(2) of the Act.
The reinstatement request was therefore refused.

Judges:

Intellectual Property

Updated: 06 November 2022; Ref: scu.465370

Samsung Electronics Co Ltd (Patent): IPO 8 Oct 2012

The application related to a method for selectively displaying images for example photographs of buildings, embedded in an electronic map. The Hearing Officer found the invention to be excluded as a progam for a computer but not as presentation of information. The application was refused.

Citations:

[2012] UKIntelP o34712

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 November 2022; Ref: scu.465351