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Intellectual Property - From: 1960 To: 1969

This page lists 34 cases, and was prepared on 08 August 2015.

 
Rosedale Associated Manufacturers -v- Carlton Tyre Saving Co Ltd [1960] RPC 59
1960
CA
Lord Evershed MR
Intellectual Property

1 Cites


 
Bollinger -v- Costa Brava Wine Co Ltd [1960] RPC 16; [1960] Ch 262; [1961] 1 WLR 271
1960

Danckwerts J
Intellectual Property
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 stop it. Held: They succeeded. Mr. Justice Danckwerts held that the French growers had a goodwill connected with the word Champagne: and that the Spanish intruders had been guilty of dishonest trading,
1 Citers


 
Parker Knoll Ltd -v- Knoll International Ltd [1961] RPC 346
1961
CA

Intellectual Property
The plaintiff owned the registered trade mark 'Parker Knoll'. The court held that the plaintiff was not entitled to register additionally the single word 'Knoll' because the evidence suggested that a number of people took it to refer to the goods of the defendant and it could not satisfy all the conditions of an independent trade mark. In particular it was not inherently capable of distinguishing the plaintiff's goods.
1 Citers



 
 Kark (Norman) Publications Ltd -v- Odhams Press Ltd; 1962 - [1962] RPC 163; [1962] 1 All ER 636; [1962] 1 WLR 380
 
AMP Incorporated -v- Hellerman Limited [1962] RPC 75
1962
HL
Denning L
Intellectual Property
An optional feature of a crimping machine, namely a "stop", was incorporated as an essential feature in an amendment made after acceptance of the patent specification. The question arose whether the amendment was a disclaimer for the purposes of section 31(1) or a new claim. Held: The amendment was a disclaimer. (Lord Denning) "In view of those cases and others, I am clearly of the opinion that a 'disclaimer' takes place whenever the patentee reduces the ambit of his monopoly: for he thereby reduces his previous claim in its fullest scope and limits it to a narrower scope. This renunciation need not, however, be done in express terms. It is sufficient if it is done implicitly: and this is what I think happened in this case. The patent here is not for a single new device. It is for a combination of old devices. But the combination of these, so it is said, is new and it produces new and useful results. If so, it is patentable and anyone who takes all the essential features of the combination is an infringer. The original specification, however, is framed so widely that a "stop" is not an essential feature of the combination. It includes both crimping tools without stops and crimping tools with stops. If the patent, as originally claimed, were good, it would give the patentee a monopoly in this way: if anyone produced a similar crimping tool which contained all the essential elements of the combination, he would be an infringer. Even though it does not include a 'stop', it would be an infringement; for a 'stop' is not an essential feature of the combination. Now the patentee desires to amend by making the 'stop' an essential feature. By doing so he reduces the ambit of his monopoly for the simple reason that, once he makes the 'stop' an essential feature, he can only complain of crimping tools with stops. He cannot complain of crimping tools without stops. If, after the amendment, anyone should make a crimping tool without a stop, he would not be an infringer, because he would not have taken all the essential features. In the result therefore the patentee by his amendment disclaims all crimping tools without stops and limits his claim to crimping tools with stops. That is, I think, a 'disclaimer' within the Act. Putting it in specialist language, once you add another essential feature to the combination, you produce a subcombination; and amendment so as to limit the scope of the specification to a subcombination which was within the original claims is disclaimer. See Baker Perkins Ltd's application [1958] RPC 267 at 276 by Lloyd-Jacob J, approving the judgment of the Assistant Controller."
Patents Act 1949 31(1)
1 Citers



 
 Parker-Knoll -v- Knoll International; HL 1962 - [1962] RPC 265

 
 Duke of Argyll -v- Duchess of Argyll; HL 1962 - 1962 SC (HL) 88
 
Swift's Application [1962] RPC 37
1962


Intellectual Property
An application for a patent should only be refused where on no reasonable view could the subject-matter be patentable.
1 Citers



 
 Norman Kark Publications Ltd -v- Odhams Press Ltd; 1962 - [1962] RPC 163

 
 Francis Day & Hunter Ltd -v- Bron; CA 1963 - [1963] Ch 587

 
 C Van Der Lely NV -v- Bamfords Ltd; HL 1963 - [1963] RPC 61
 
Sheraton Corporation of America v Sheraton Motels Ltd [1964] RPC 202
1964
ChD
Buckley J
Intellectual Property
The plaintiff owned, ran and promoted a chain of hotels in the USA and elsewhere, but not including any hotel in the UK. Bookings for rooms in their hotels were frequently made from the UK, through an office which the plaintiff maintained in London or via travel agencies. The defendant was a company set up in this country which intended to establish hotels here, though with none in being at the time and none in prospect for some time to come. Held. On a motion to restrain passing off, the judge granted an interim injunction. He looked ahead to the position as it might be at trial, envisaging that the plaintiff might be able to show that it had a reputation and goodwill which would be exposed to risk from confusion between their business and that of the defendant, even though they were carrying on business in different parts of the world. He did not place specific reliance on the fact of direct bookings or on the plaintiff having an office in this country.
1 Citers


 
Dorling -v- Honnor Marine Ltd [1964] RPC 160; [1965] Ch 1
1964
CA

Intellectual Property
The court considered the protection of drawings of parts of a boat. The court distinguished between designs capable of registration which were subject to s 10, and designs which were not registrable (chiefly because they were functional) and so bore full-term artistic copyright even in respect of industrial products.
Copyright Act 1956 9(8)
1 Citers


 
Western Credit Ltd -v- Alberry [1964] 1 WLR 945; [1964] 2 All ER 938
1964
CA

Intellectual Property
An indemnity contract is an agreement by indemnifier to make good any loss of another party, and imposes a primary and independent obligation on the promisor.


 
 Ladbroke (Football) Ltd -v- William Hill (Football) Ltd; HL 1964 - [1964] 1 WLR 273; [1964] 1 All ER 465
 
Printers and Finishers Limited -v- Holloway [1965] RPC 239; [1965] 1 WLR 1
1965

Cross J
Intellectual Property, Employment
The court considered the questions arising from the use of information acquired by an employee during his employment after that employment had ended, and noted that information the future use of which will not be restrained is information not readily separable in the mind of the employee from other information which he is free to use, and the actual or threatened misuse of information which has been deliberately memorised for the purpose of its being carried away and used elsewhere will be restrained.
The question was whether the knowledge was "a separate part of the employee's stock of knowledge which a man of ordinary honesty and intelligence would recognise to be the property of his old employer." The law would defeat its own object if it sought to enforce standards which would be rejected by the ordinary person.
Cross J said: "The employee might well not realise that the feature or expedient in question was in fact peculiar to his late employer's process and factory; but even if he did, such knowledge is not readily separable from his general knowledge of the flock printing process and his acquired skill in manipulating a flock printing plant, and I do not think that any man of average intelligence and honesty would think that there was anything improper in his putting his memory of particular features of his late employer's plant at the disposal of his new employer." and
"Although the law will not enforce a covenant directed against competition by an ex-employee, it will enforce a covenant reasonably necessary to protect trade secrets. If the managing director is right in thinking that there are features in the plaintiffs process which can fairly be regarded as trade secrets and which their employees will inevitably carry away with them in their heads, then the proper way for the plaintiffs to protect themselves would be by exacting covenants from their employees restricting their field of activity after they have left their employment, not by asking the court to extend the general equitable doctrine to prevent breaking confidence beyond all reasonable bounds."
1 Citers


 
Chaplin -v- Leslie Frewin (Publishers) Ltd [1966] Ch 71
1966

Denning LJ, Dankwerts LJ
Contract, Intellectual Property
It had been agreed that the defendant publishers should during the legal term of the copyright have the exclusive right of producing, publishing and selling a work in volume form in any language throughout the world. The author warranted that he was the owner of the copyright. Application was made to set aside an interlocutory judgment. Held: The words used were an "ample and effective to constitute an assignment", though Danwerts LJ also thought they might constitute an exclusive licence. Winn LJ unequivocally thought the words "should . . be regarded as, and given the effect of, an assignment of copyright".
Lord Denning (dissenting) thought that the agreement . . was an assignment of copyright; . . or at any rate it was the grant of an interest in the copyright" and "The law of this country for centuries has been that if anyone under the age of 21 makes, or agrees to make, a disposition of his property by a deed or document in writing, he may avoid it at any time before he comes of full age or within a reasonable time thereafter."
1 Citers



 
 Suhner & Co AG -v- Transradio Ltd; 1967 - [1967] RPC 329

 
 Seager -v- Copydex Ltd; CA 1967 - [1967] 1 WLR 923; [1967] RPC 349

 
 Alain Bernardin & Cie -v- Pavilion Properties Ltd; ChD 1967 - [1967] RPC 581
 
Harman Pictures N V -v- Osborne [1967] 2 All ER 324; [1967] 1 WLR 723
1967
ChD
Goff J
Litigation Practice, Intellectual Property
The plaintiffs asserted ownership in the copyright in a reproduction in a film of the book 'The Reason Why'. There had been abortive discussions about the purchase of rights. The defendants intended to proceed with another production. They claimed a marked similarity. Held: There was a copyright infringement in the screenplay where the similarity in language was slight but the choice of incidents was the same. Goff J discussed the situation which arose where there was an apparent similarity of ideas: "It is common ground that there can be an original work entitled to protection although the subject matter is not original, but is for example, as in the present case, some well-known event in history. The precise amount of knowledge, labour, judgment or literary skill or taste which the author of any book or other compilation must bestow upon its composition in order to acquire copyright in it within the meaning of the Copyright Act, 1911, cannot be defined in precise terms: per Lord Atkinson in Macmillan & Co. Ltd. v. Cooper. There is, however, no dispute that Mrs. Woodham-Smith displayed all these qualities in amply sufficient measure and acquired copyright in her book, whilst the plaintiffs' title to the film rights by assignment is also not disputed. What is much more difficult is whether the plaintiffs have made out a sufficient prima facie case of infringement, or rather intended infringement, and before considering the facts, I must refer at some length to the relevant law.
There is no copyright in ideas or schemes or systems or methods: it is confined to their expression . . .Br />One must, however, be careful not to jump to the conclusion that there has been copying merely because of similarity of stock incidents, or of incidents which are to be found in historical, semi-historical and fictional literature about characters in history, see Poznanski v. London Film Production Ltd. In such cases the plaintiffs, and that includes the plaintiffs in the present case, are in an obvious difficulty because of the existence of common sources, as was emphasised in the case of Pike v. Nicholas…"
The judge asked: "... did John Osborne work independently and produce a script which, from the nature of things, has much in common with the book, or did he proceed the other way round and use the book as a basis, taking his selection of incidents and quotations therefrom, albeit omitting a number and making some alternations and additions, by reference to the common sources and by some reference to other sources?"
Goff J: (quoting from authority) "... another person may originate another work in the same general form, provided he does so from his own resources and makes the work he so originates a work of his own by his own labour and industry bestowed upon it. In determining whether an injunction should be ordered, the question, where the matter of the plaintiff's work is not original, is how far an unfair or undue use has been made of the work? If, instead of searching into the common sources and obtaining your subject-matter from thence, you avail yourself of the labour of your predecessor, adopt his arrangements and questions, or adopt them with a colourable variation, it is an illegitimate use". And
"In the case of works not original in the proper sense of the term, but composed of, or compiled or prepared from materials which are open to all, the fact that one man has produced such a work does not take away from anyone else the right to produce another work of the same kind, and in doing so to use all the materials open to him. But as the law has been precisely stated by Hall V.C. in Hogg v. Scott, .the true principle in all these cases is that the defendant is not at liberty to use or avail himself of the labour which the plaintiff has been at for the purpose of producing his work, that is, in fact, merely to take away the result of another man's labour or, in other words, his property.'
1 Citers



 
 Initial Services Ltd -v- Putterill; CA 1967 - [1967] 3 All ER 145; [1968] 1 QB 396

 
 Duchess of Argyll -v- Duke of Argyll; ChD 1967 - [1967] Ch 302
 
Terrapin -v- Builders Supply Co (Hayes) [1967] RPC 375
1967
ChD
Roxburgh J
Intellectual Property
The defendants made up prefabricated portable buildings to the plaintiffs' design, provided to them only for this purpose. When the contract ended, the defendants then offered their own prefabricated buildings using much of the material, including modifications, claiming that any duty of confidence was discharged once the plaintiffs sold buildings and published brochures which disclosed all the features of their buildings. The defendants denied having in fact employed any of the confidential material in development of its own designs. Held: The interlocutory injunction requested by the plaintiff was granted. The defendants had been using the confidential material before the manager arrived who designed their own building, and had no access to the materials, but may have had indirect access through his staff, and his mind may have been 'saturated' with the knowledge. In effect his task had been not to design a new building but to improve on that of the plaintiffs. Roxburgh J said: "When, therefore, Mr Chambers was instructed on behalf of the first defendants to design a new building unit – and I may say I have no doubt at all that in June or July 1958 Mr Moere was taking precautionary steps in anticipation of a breakdown of the negotiations for an extension of the contract – intended, as I am quite certain it was, to compete in the open market with the Mark 24 as about to be improved, he could not have avoided starting his dive into the future from the springboard of the confidential information acquired by the first defendants and by Mr Chambers as their servant"
In relation to "information" for the purposes of the springboard principle, he said: "Therefore, in my judgment, Mr Chambers, acting for the first defendants, used the aforesaid confidential information directly or indirectly obtained from the plaintiffs without the consent, express or implied, of the plaintiffs within the meaning of the passage which I have already read. Lord Greene draws no distinction between documents and other types of information, and, in my judgment, in principle there is not, though not doubt documents are often more specific than other types of information, and there may well be cases in which information may merge with general knowledge. I recognise the possibility of such cases, but this is, in my judgment, not one of them, and when I use the word “information”, I mean something that can be traced to a particular source and not something which has become so completely merged in the mind of the person informed that it is impossible to say from what precise quarter he derived the information which led to the knowledge which he is found to possess.
As to the submission that the confidentiality obligation was discharged when the plaintiffs published all the general features of the building units in brochures and by putting the goods on the market (thereby enabling every member of the public by the elementary process of dismantling to access the confidential information), Roxburgh J said: "As I understand it, the essence of this branch of the law, whatever the origin of it may be, is that a person who has obtained information in confidence is not allowed to use it as a spring-board for activities detrimental to the person who made the confidential information, and spring-board it remains even when all the features have been published or can be ascertained by actual inspection by any members of the public. The brochures are certainly not equivalent to the publication of the plans, specifications, other technical information and know-how. The dismantling of a unit might enable a person to proceed without plans or specifications or other technical information, but not, I think, without some of the know-how, and certainly not without taking the trouble to dismantle. I think it is broadly true to say that a member of the public to whom the confidential information had not been imparted would still have to prepare plans and specifications. He would probably have to construct a prototype, and he would certainly have to conduct tests. Therefore, the possessor of the confidential information still has a long start over any member of the public. The design may be as important as the features. It is, in my view, inherent in the principle upon which the Saltman case rests that the possessor of such information must be placed under a special disability in the field of competition in order to ensure that he does not get an unfair start; or, in other words, to preclude the tactics which the first defendants and the third defendants and the managing director of both of those companies employed in this case."
1 Citers


 
Johns-Manville Corporation's Patent [1967] RPC 479
1967
CA
Diplock LJ
Intellectual Property
A patent for a method of producing asbestos cement was challenged for obviousness. Held. Diplock LJ considered that a development should be treated as obvious if 'the person versed in the art would assess the likelihood of success as sufficient to warrant actual trial'. However the notion of something being obvious to try was useful only in a case in which there was a fair expectation of success. He said: "It is enough that the person versed in the art would assess the likelihood of success as sufficient to warrant actual trial. . The Superintending Examiner and the Patents Appeal Tribunal were both of opinion that, filtration processes being common to many industries, these documents, although addressed primarily to the mining and paper industries respectively, were likely to be read by those concerned with the asbestos cement industry, and that such readers would have realised that here was a newly-introduced flocculating agent which it was well worth trying out in their own filtration process. I can see no grounds which would justify this court in reversing this concurrent finding by two expert tribunals." and

"I have endeavoured to refrain from coining a definition of 'obviousness' which counsel may be tempted to cite in subsequent cases relating to different types of claims." and

"Patent law can too easily be bedevilled by linguistics and the citation of a plethora of cases about inventions of different kinds. The correctness of a decision upon an issue of obviousness does not depend upon whether or not the decider has paraphrased the words of the Act in some particular verbal formula. I doubt whether there is any verbal formula which is appropriate to all classes of claims."
Patents Act 1949
1 Citers


 
Thomas (P A ) & Co -v- Mould [1968] 1 All ER 963; [1968] 2 WLR 737; [1968] 2 QB 913
1968


Intellectual Property, Litigation Practice
The court urged caution in the grant of an injunction to protect information for which confidence was claimed but where that claim might not succeed.
1 Citers



 
 Coco -v- A N Clark (Engineers) Ltd; ChD 1968 - [1969] RPC 41; [1968] FSR 415; (1968) 1A IPR 587

 
 Parke, Davis and Co -v- Probel, Reese, Beintema-Interpharm and Centrafarm; ECJ 29-Feb-1968 - C-24/67; [1967] ECR 55; [1968] CMLR 47; [1968] FSR 393; R-24/67; [1968] EUECJ R-24/67
 
In re Nossen's Letter Patent [1969] 1 WLR 638
1969


Intellectual Property, Costs

1 Citers


 
General Electric Co -v- General Electric Co Ltd [1969] RPC 418
1969
ChD
Grahame J
Intellectual Property
A form of co-branding was held to be non-deceptive. Grahame J said: "The registered use provisions are permissive only and not a compulsory prerequisite for retention of validity of the mark and that, provided the conditions of control are adequate, there is no reason for holding by using the mark without a registered user the parties have destroyed the mark" .
1 Citers



 
 Vine Products Ltd -v- Mackenzie & Co Ltd (the Sherry Case); ChD 1969 - [1969] RPC 1
 
BALI Trade Mark [1969] RPC 472
1969

Lord Upjohn
Intellectual Property
Section 11 and its predecessors were designed not so much for the protection of other traders in the use of their marks or to protect their reputation but for the protection of the public. The test of confusion in section 11 is not the same as the test for passing off. Lord Upjohn also said: "It is not necessary in order to find that a mark offends against section 11 to prove that there is an actual probability of deception leading to a passing off or (I add) an infringement action. It is sufficient if the result of registration of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt, but the court has to be satisfied not merely that there is a possibility of confusion; it must be satisfied that there is a real tangible danger of confusion if the mark which it is sought to register is put on the register."
Trade Marks Act 1938 11
1 Citers



 
 Vine Products Ltd -v- Mackenzie & Co Ltd (the Sherry Case); ChD 1969 - [1969] RPC 1
 
Warwick Film Producers Ltd -v- Eisinger [1969] Ch 509; [1967] 3 All ER 367
1969


Intellectual Property
Although, in a claim for copyright infringement, the features alleged to have been copied from a work must be a substantial part of the plaintiff's work, they do not need to form a substantial part of the defendant's work to found a claim for infringement.
1 Citers


 
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