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Intellectual Property - From: 1970 To: 1979

This page lists 66 cases, and was prepared on 08 August 2015.

 
General Electric Co -v- General Electric Co Limited; GE TM; Re GE Trade Mark [1970] RPC 339
1970
CA

Damages, Intellectual Property

1 Cites

1 Citers



 
 John Walker & Sons Ltd -v- Henry Ost & Co Ltd; ChD 1970 - [1970] RPC 489; [1970] 2 All ER 106; [1970] 1 WLR 917
 
Blair -v- Osborne & Tomkins and Another [1971] 1 QB 78; [1971] 2 WLR 503; [1971] 1 All ER 468
12 Nov 1970
CA
Lord Denning M.R., Widgery and Megaw L.JJ
Intellectual Property, Construction, Damages, Contract
Two neighbours engaged an architect to draw up plans for a building at the rear of their houses. He charged them the full RIBA rate for the plans. They did not ask the architect to build the house or supervise the project but handed the plans to a builder, who made minor amendments, then submitted them as his own design. The architect sued for infringement of the copyright in the plans. He appealed an award of only nominal damages. Held: The nominal award was correct. The contract included an implied term that the land owners would be free to use the plans to build the house, including necessary licences. The attribution was wrongful, but was not the source of damage.
1 Cites

1 Citers

[ lip ]

 
 General Tire and Rubber Company -v- Firestone Tyre and Rubber Company Ltd; CA 1971 - [1972] RPC 457; (1971) 1A IPR 121

 
 Great Lakes Carbon's Patent; 1971 - [1971] RPC 117

 
 Stovin-Bradford -v- Volpoint Properties Ltd; 1971 - [1971] 1 Ch 1007

 
 AMP Inc -v- Utilux Pty Ltd; HL 1971 - [1971] FSR 572; [1972] RPC 103
 
Hubbard -v- Vosper [1972] 2 WLR 389; [1971] 1 All ER 1023 CA; [1972] 2 QB 84
1971
CA
Lord Denning MR
Intellectual Property
Claims of infringement were made as to copyright works being various works about Scientology. Extracts had appeared in the defendant's book which was critical of the cult. It was submitted by the plaintiff that the fair dealing section applied only to criticism of the work, not of the doctrine or philosophy underlying it. Held: The court did not accept this submission. Lord Denning MR said: "I do not think that this proviso is confined as narrowly as Mr Pain submits. A literary work consists, not only of the literary style, but also of the thoughts underlying it, as expressed in the words. Under the defence of "fair dealing" both can be criticised. Mr Vosper is entitled to criticise not only the literary style, but also the doctrine or philosophy of Mr Hubbard as expounded in the books." It was not fair dealing for a rival "to take copyright material and use it to his own benefit".
As to the decision in British Oxygen: "I am afraid I cannot go all the way with those words of Romer J. Although a literary work may not be published to the world at large, it may, however, be circulated to such a wide circle that it is "fair dealing" to criticise it publicly in a newspaper or elsewhere. This happens sometimes when a company sends a circular to the whole body of shareholders. It may be of such general interest that it is quite legitimate for a newspaper to make quotations from it, and to criticise them - or review them - without thereby being guilty of infringing copyright. The newspaper must, of course, be careful not to fall foul of the law of libel. So also here, these bulletins and letters may have been so widely circulated that it was perfectly "fair dealing" for Mr Vosper to take extracts from them and criticise them in his book."
The court refused to grant an interlocutory injunction restraining breach of confidence or breach of copyright: "But here, although Mr Hubbard owns the copyright, nevertheless, Mr Vosper has a defence of fair dealing: and although Mr Hubbard may possess confidential information, nevertheless, Mr Vosper has a defence of public interest. These defences are such that he should be permitted to go ahead with the publication. If what he says is true, it is only right that the dangers of this cult should be exposed. We never restrain a defendant in a libel action who says he is going to justify. So in copyright action, we ought not to restrain a defendant who has a reasonable defence of fair dealing. Nor in an action for breach of confidence, if the defendant has a reasonable defence of public interest. The reason is because the defendant, if he is right, is entitled to publish it: and the law will not intervene to suppress freedom of speech except when it is abused."
1 Cites

1 Citers


 
Deutsche Grammophon Gesellschaft Mbh -v- Metro-Sb-Grossmarkte Gmbh & Co. Kg C-78/70; R-78/70; [1971] EUECJ R-78/70; [1971] ECR 487
8 Jun 1971
ECJ

European, Intellectual Property
Europa Under article 177 of the court, when giving a preliminary ruling, is entitled only to pronounce on the interpretation of the treaty and of acts of the institutions of the community or on their validity but may not, on the basis of that article, give judgment on the interpretation of a provision of national law. It may however extract from the wording of the questions formulated by the national court those matters only which pertain to the interpretation of the treaty, taking into account the facts communicated by the said court.
The second paragraph of article 5 of the eec treaty lays down a general duty for the member states, the actual tenor of which depends in each individual case on the provisions of the treaty or on the rules derived from its general scheme.
The exercise of an industrial property right falls under the prohibition set out in article 85 (1) of the treaty each time it manifests itself as the subject, the means or the result of an agreement which, by preventing imports from other member states of products lawfully distributed there, has as its effect the partitioning of the market.
The provisions of article 36 of the treaty may be relevant to a right related to copyright, in the same way as to an industrial or commercial property right.
It is clear from article 36 that, although the treaty does not affect the existence of rights recognized by the legislation of a member state with regard to industrial and commercial property, the exercise of such rights may nevertheless fall within the prohibitions laid down by the treaty.
Article 36 only admits derogations from the free movement of products in order to protect industrial and commercial property to the extent to which such derogations are justified for the purpose of safeguarding rights which constitute the specific matter of such property.
It is in conflict with the rules providing for the free movement of products within the common market for the holder of a legally recognized exclusive right of distribution to prohibit the sale on the national territory of products placed by him or with his consent on the market of another member state on the ground that such distribution did not occur within the national territory. Such a prohibition, which could legitimize the isolation of national markets, would be repugnant to the essential purpose of the treaty, which is to unite national markets into a single market.
The holder of a legally recognized exclusive right of distribution does not occupy a dominant position within the meaning of article 86 of the treaty merely by exercising that right. It is necessary that the holder, alone or jointly with other undertakings in the same group, should have the power to impede the maintenance of effective competition over a considerable part of the relevant market, having regard in particular to the existence of any producers marketing similar products and to their position on the market.
The difference between the controlled price and the price of the product reimported from another member state does not necessarily suffice to disclose an abuse of a dominant position; it may, however, if unjustified by any objective criteria and if it is particularly marked, be a determining factor in such abuse.
1 Citers

[ Europa ] - [ Bailii ]
 
General Electric Co -v- General Electric Co Ltd; GE TM; Re GE Trade Mark [1972] 2 All ER 507; [1973] RPC 297; [1972] 1 WLR 729
1972
HL
Lord Diplock
Intellectual Property
Lord Diplock said: "The common law of trade marks before 1875
The use by manufacturers of distinctive marks upon goods which they had made is of very ancient origin, but legal recognition of trade marks as a species of incorporeal property was first accorded by the Court of Chancery in the first half of the 19th century. It may be said to have been established by Lord Cottenham L.C. in Millington v. Fox (1838) 3 My. & Cr. 338. He decided that it was not necessary to establish any intention to deceive on the part of an infringer against whom an injunction to restrain his use of a trade mark was sought.
The right of property in a trade mark had special characteristics. One, which it shared with patents and with copyright, was that it was a monopoly, that is to say, it was a right to restrain other persons from using the mark. But it was an adjunct of the goodwill of a business and incapable of separate existence dissociated from that goodwill. To be capable of being the subject matter of property a trade mark had to be distinctive, that is to say, it had to be recognisable by a purchaser of goods to which it was affixed as indicating that they were of the same origin as other goods which bore the same mark and whose quality had engendered goodwill. Property in a trade mark could therefore only be acquired by public use of it as such by the proprietor and was lost by disuse. The property was assignable, transmissible and divisible, but only along with the goodwill of the business in which it was used . . A right of property of this character calls for an accommodation between the conflicting interests of the owner of the monopoly, of the general public as purchasers of goods to which the trade mark is affixed, and of other traders. This accommodation had been substantially worked out by the Court of Chancery by 1875.
The interest of the general public requires that they should not be deceived by the trade mark. It ought not to tell a lie about the goods. Two main kinds of deception had been the subject of consideration. These were misrepresentation (a) of the character of the goods to which the trade mark was attached, and (b) as to their origin, i.e. that they were the product of some other manufacturer.
But the interest of the public in not being deceived about the origin of goods had and has to be accommodated with the vested right of property of traders in trade marks which they have honestly adopted and which by public use have attracted a valuable goodwill. In the early 19th century trade was still largely local; marks which were identical or which closely resembled one another might have been innocently adopted by traders in different localities. In these their respective products were not sold in competition with one another and accordingly no question of deception of the public could then arise. With the rapid improvement in communications, however, in the first half of the 19th century markets expanded; products of two traders who used similar marks upon their goods could thus come to be on sale to the same potential purchasers with the consequent risk of their being misled as to the origin of the goods. Furthermore, it was accepted that as an adjunct of the goodwill of the business the right to use a trade mark might be acquired by more than one successor if the goodwill of the business were divided, as it might be, for instance, where the business had formerly been carried on in partnership or from more than one manufactory or shop. To meet this kind of situation the doctrine of honest concurrent user was evolved. Under this doctrine a trade mark remained entitled to protection in cases where the use of it had not originally been deceptive but a risk of deception had subsequently arisen as a result of events which did not involve any dishonesty or other wrongful conduct upon the part of the proprietor of the mark. If, however, his own wrongful conduct had played a part in making the use of the mark deceptive, the Court of Chancery would not grant him an injunction against infringement. This was but a particular application of the general equitable doctrine that he who seeks equity must come with clean hands.
In cases of honest concurrent user, neither of the owners of the mark could restrict the other from using it, but as against a usurper who infringed it either owner of the mark could obtain an injunction: Dent v. Turpin (1861) 2 J. & H. 139 and Southorn v. Reynolds (1865) 12 L.T. 75."
1 Cites

1 Citers


 
Evans -v- Eradicure [1972] RPC 808
1972


Intellectual Property
A plaintiff's reputation in a trading style may be local not national.
1 Citers



 
 Ad-Lib Club -v- Granville; ChD 1972 - [1972] RPC 673
 
Norwich Pharmacal Co and others -v- Customs and Excise Commissioners [1972] 1 All ER 972
1972
ChD

Intellectual Property, Litigation Practice
The court considered an application for an order that the other party identify third party wrong-doers.
1 Citers



 
 Re GE TM; General Electric Co -v- General Electric Co Ltd; 1972 - [1973] RPC 297; [1972] 2 All ER 507; [1972] 1 WLR 729
 
Technograph Printed Circuits Ltd -v- Mills and Rockley (Electronics) Ltd [1972] RPC 346
1972


Intellectual Property
The court advised of the need for caution to avoid hindsight when looking for obviousness in a patent.
1 Citers


 
Norwich Pharmacal Co and others -v- Customs and Excise Commissioners [1972] 2 All ER 813; [1972] RPC 743
2 Jan 1972
CA
Buckley LJ
Intellectual Property, Litigation Practice
The plaintiffs sought discovery of the names of patent infringers from the defendant third party, submitting that by analogy with trade mark and passing-off cases, the Customs could be ordered to give discovery of the names. Held: Buckley LJ said: "If a man has in his possession or control goods the dissemination of which, whether in the way of trade or, possibly, merely by way of gifts (see Upmann v Forester (1883) 24 ChD 231) will infringe another's patent or trade mark, he becomes, as soon as he is aware of this fact, subject to a duty, an equitable duty, not to allow those goods to pass out of his possession or control at any rate in circumstances in which the proprietor of the patent or mark might be injured by infringement ensuing. The man having the goods in his possession or control must not aid the infringement by letting the goods get into the hands of those who may use them or deal with them in a way which will invade the proprietor's rights. Even though by doing so he might not himself infringe the patent or trade mark, he would be in dereliction of his duty to the proprietor. This duty is one which will, if necessary, be enforced in equity by way of injunction: see Upmann v Elkan (1871) LR 12 Eq 140 (1871) 7 Ch App 130. The man having possession or control may also be under a duty to give information in relation to the goods to the proprietor of the patent or mark: Upmann v Elkan ."
1 Cites

1 Citers


 
Beloff -v- Pressdram Ltd [1973] RPC 765; [1973] 1 All ER 241
1973
QBD
Ungoed-Thomas J
Intellectual Property
A journalist on The Observer sued the publishers of Private Eye for having published a memorandum of the plaintiff about a politician, Mr Maudling, which had been circulated amongst the employees of The Observer. Held. The defences to a claim of copyright infringement of fair dealing and of being in the public interest were separate. The court rejected the defence of fair dealing. The relevant fair dealing must be fair dealing for the approved purpose and not dealing which might be fair for some other purpose or fair in general. What amounts to fair dealing is a question of fact and impression and that matters which had been held to be relevant included the extent and importance of the quotation, whether the work was unpublished, the extent to which the work had been circulated and the motives and intention of the alleged infringer: "The law by bestowing a right of copyright on an unpublished work bestows a right to prevent its being published at all; and even though an unpublished work is not automatically excluded from the defence of fair dealing, it is yet a much more substantial breach of copyright than publication of a published work." and
"… the disclosure justified in the public interest, of matters carried out or contemplated, in breach of the country's security, or in breach of law, including statutory duty, fraud or otherwise destructive of the country or its people, including matters medically dangerous to the public; and doubtless other misdeeds of similar gravity".
1 Citers



 
 GE Trade Mark; HL 1973 - [1973] RPC 297
 
Merchant Adventurers Ltd -v- Grew [1973] RPC 1
1973


Intellectual Property

1 Citers



 
 John Zink & Co Limited -v- Wilkinson; CA 1973 - [1973] RPC 717; [1973] FSR1
 
Valensi -v- British Radio Corporation [1973] RPC 337
1973
CA
Buckley LJ
Intellectual Property
The court considered the test for deciding what degree of knowledge, skill and perseverance the skilled man was assumed to have as a ground for revocation of a patent on the associated basis. "The hypothetical addressee is not a person of exceptional skill and knowledge, that he is not to be expected to exercise any invention nor any prolonged research, inquiry or experiment. He must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors in the specification if a means of correcting them can readily be found."
Patents Act 1977 7291)©
1 Citers


 
Bulmer (HP) Ltd -v- Bollinger SA [1974] 1 Ch 401; [1974] 3 WLR 202; [1974] 2 All ER 1226
1974
CA
Lord Denning MR
European, Constitutional, Intellectual Property
The plaintiff complained that the respondent had described its drink 'Babycham' as a champagne perry, which it said was a misuse of the appellation 'champagne'. Held: The court considered the effect of European legislation on the law of England and Wales. Lord Denning MR said: "But when we come to matters with a European element, the treaty is like an incoming tide. It flows into the estuaries and up the rivers. It cannot be held back. Parliament has decreed that the treaty is henceforward to be part of our law. It is equal in force to any statute." Community instruments are not expressed against the background of English canons of construction and should not be so construed.
1 Citers


 
Alfred Crompton Amusement Machines Ltd -v- Customs and Excise Commissioners [1974] AC 405; [1973] 2 All ER 1169
1974
HL
Denning, Cross LL
Intellectual Property, Litigation Practice
An application was made to inspect documents held by the Customs and Excise Commissioners. The plaintiff sought to inspect the documents to discover whether calculations of taxes were correct. The Commissioners swore an affidavit identifying documents supplied to them by others containing confidential information about the affairs of persons other than the plaintiff who were not parties to the litigation. Much of the material appears to have been provided by those persons to the Commissioner of Customs and Excise pursuant to their statutory powers. Held: The Court had a discretion to order disclosure of the documents and a Court would do so "if it is in the public interest . . if either party wanted them before the Court, he would have to subpoena the third party to produce them."
As to this ground of privilege, Lord Denning said: "Although the commissioners are not entitled to Crown privilege, they are, I think, entitled to claim privilege on another ground. The privilege is quite sufficiently claimed by Sir Louis Petch in his affidavit on the ground of confidence, but is not a privilege peculiar to the Crown. It is a privilege available to all litigants. It comes down to us from the Chancery Court. It is this; a party to litigation is not obliged to produce documents, or copies of documents, which do not belong to him, but which have been entrusted to his custody by a third party in confidence. It frequently happens that a party who thinks he may be involved in litigation goes to a friend who has a material document. The friend allows him in confidence to see it and take a copy of it. He takes a copy and hands it to his solicitor. The original document came into existence long before any litigation was contemplated. It was not prepared for the purpose of getting advice on it. If the party had been entrusted by the owner with the original, it would clearly be privileged from production, simply because it did not belong to him."
Lord Denning then quotes some authorities and continues: "Likewise the copy in his hands is also privileged, because he was only allowed to take the copy in confidence, and it would be an abuse of that confidence to disclose it without the permission of the owner of the original."
Lord Cross said: "Here, on the other hand, one can well see that the third parties that have supplied this information to the commissioners because of their statutory powers would very much resent disclosure by the commissioner to the appellant and that it is not at all fanciful for Sir Louis to say that the knowledge that the commissioners cannot keep such information secret may be harmful to the official working of the Act. In a case where the considerations for and against disclosure appear to be fairly evenly balanced the court should I think uphold the claim for privilege on public interest and trust to the head of the department concerned to do whatever he can to mitigate the ill-effects of non-disclosure."
Purchase Tax Act 1963
1 Cites

1 Citers


 
A Schroeder Music Publishing Co Ltd -v- Macaulay [1974] 1 WLR 1308
1974


Intellectual Property
Assignments of copyright which were manifestly inequitable and oppressive could be void or unenforceable on grounds of public policy.
1 Citers


 
Levey -v- Henderson-Kenton (Holdings) [1974] RPC 617
1974


Intellectual Property
A trader’s reputation in one part of the country may be different to its reputation in another and may be protected locally.
1 Citers



 
 HP Bulmer Ltd and Another -v- J Bollinger Sa and others; CA 22-May-1974 - [1974] EWCA Civ 14; [1974] 2 All ER 1226; [1974] 3 WLR 202; [1974] Ch 401
 
Van Zuylen Freres -v- Hag Ag. (Free Movement Of Goods ) R-192/73; [1974] EUECJ R-192/73; [1974] ECR 731
3 Jul 1974
ECJ

European, Intellectual Property
European Article 36 only admits derogations from the free movement of goods to the extent that such derogations are justified for the purpose of safeguarding rights that constitute the specific subject matter of industrial and commercial property. Thus the application of the legislation relating to the protection of trade marks protects the legitimate holder of the trade mark against infringement on the part of persons who lack any legal title. The exercise of a trade mark right tends to contribute to the partitioning off of the markets and thus to affect the free movement of goods between member states, all the more so since - unlike other rights of industrial and commercial property - it is not subject to limitations in point of time. Accordingly, one cannot allow the holder of a trade mark to rely upon the exclusiveness of a trade mark right - which may be the consequence of the territorial limitation of national legislation - with a view to prohibiting the marketing in a member state of goods legally produced in another member state under an identical trade mark having the same origin. This is also the case where a third party duly acquired the product in the first state.
1 Citers

[ Bailii ]
 
Centrafarm Bv and Others -v- Winthorp Bv [1974] ECR 1183; C-16/74; R-16/74; [1974] EUECJ R-16/74
31 Oct 1974
ECJ

European, Intellectual Property
(Free Movement Of Goods)
1 Citers

[ Europa ] - [ Bailii ]
 
Scott -v- Metropolitan Police Commissioner; Regina -v- Scott [1975] AC 819; [1974] UKHL 4
20 Nov 1974
HL
Viscount Dilhorne, Lord Reid, Lord Diplock, Lord Simon of Glaisdale, Lord Kilbrandon
Intellectual Property, Crime
The defendant had been accused of conspiracy to produce pirate copies of films obtained by purchasing copies from cinema owners without the knowledge or consent of the copyright owners. Held: To establish a conspiracy to defraud, it was not necessary to prove a deceit by the defendant of the person who would end up being defrauded. A conspiracy to defraud is an agreement between two or more people dishonestly to deprive a person of something which is his or to which he would be entitled, or to injure a proprietory right.
Copyright Act 1956 21(1)(a)
1 Cites

1 Citers

[ Bailii ]

 
 George Hensher Ltd -v- Restawile Upholstery (Lancs) Ltd; HL 1975 - [1976] AC 64; [1975] RPC 31

 
 General Tire -v- Firestone Tyre and Rubber Company Limited; HL 1975 - [1976] RPC 197; [1975] 1 WLR 819; [1975] 2 All ER 173; [1975] FSR 273

 
 American Cyanamid Co -v- Ethicon Ltd (1); HL 5-Feb-1975 - [1975] 2 WLR 316; [1975] AC 396; [1975] UKHL 1

 
 Mood Music Publishing Co -v- De Wolfe Ltd; CA 1976 - [1976] Ch 119

 
 Star Industrial -v- Yap Kwee Kor; PC 1976 - [1976] FSR 256

 
 Morton-Norwich Products Inc -v- Intercen Ltd; 1976 - [1978] RPC 501
 
Moorhouse -v- University of New South Wales [1976] RPC 151
1976

Gibbs J
Intellectual Property, Commonwealth
(High Court of Australia) The plaintiffs complained that the facilities of a library included a photocopying machine, alleging that this encouraged copyright infringement. Held; Gibbs J said: "a person who has under his control the means by which an infringement of copyright may be committed - such as a photocopying machine - and who makes it available to other persons, knowing, or having reason to suspect, that it is likely to be used for the purpose of committing an infringement, and omitting to take reasonable steps to limit its use to legitimate purposes, would authorise any infringement that resulted from its use."
1 Citers


 
Warner Bros Records Inc -v- Rollgreen Ltd [1976] QB 430
1976
CA
Lord Denning MR, Roskill LJ, Sir John Pennycuick
Intellectual Property
The court considered an equitable assignment of a copyright, and in particular the assignment of rights of action associated with a copyright. Held: The only rights that an equitable assignment could create in the equitable assignee were rights against the assignor - who became trustee of the benefit of the option for the assignee, and thus could be compelled in equity to exercise those rights for the benefit of the assignee.
Lord Denning MR said: "The grantor cannot be expected to act on a letter (purporting to exercise the option) which comes out of the blue from someone or other of which he knows nothing. He must be told that it comes from an assignee who has taken an assignment."


 
 EMI Records -v- CBS Grammofon; ECJ 15-Jun-1976 - C-86/75; R-86/75; [1976] EUECJ R-86/75
 
EMI Records Limited -v- CBS Schallplatten Gmbh C-96/75; R-96/75; [1976] EUECJ R-96/75
15 Jun 1976
ECJ

European, Intellectual Property
ECJ 1. Neither the rules of the treaty on the free movement of goods nor those on the putting into free circulation of products coming from third countries nor, finally, the principles governing the common commercial policy, prohibit the proprietor of a mark in all the member states of the community from exercising his right in order to prevent the importation of similar products bearing the same mark and coming from a third country.

2. A trade-mark right, as a legal entity, does not possess those elements of contract or concerted practice referred to in article 85(1).

Nevertheless the exercise of that right might fall within the ambit of the treaty if it were to manifest itself as the subject, the means, or the consequence of a restrictive practice.

3. A restrictive agreement between traders within the common market and competitors in third countries that would bring about an isolation of the common market as a whole which, in the territory of the community, would reduce the supply of products originating in third countries and similar to those protected by a mark within the community, might be of such a nature as to affect adversely the conditions of competition within the common market. In particular if the proprietor of the mark in dispute in the third country has within the community various subsidiaries established in differend member states which are in a position to market the products at issue within the common market such isolation may affect trade between member states.

4. For article 85 to apply to cases of agreements which are no longer in force it is sufficient that such agreements continue to produce their effects after they have formally ceased to be in force.
Europa

An agreement is only regarded as continuing to produce its effects if from the behaviour of the persons concerned there may be inferred the existence of elements of concerted practice and of coordination peculiar to the agreement and producing the same result as that envisaged by the agreement.

This is not so when the said effects do not exceed those flowing from the mere exercise of the national trade-mark rights. And in particular when a foreign trader can obtain access to the common market without availing himself of the mark in dispute.

5. Although the trade-mark right confers upon its proprietor a special position within the protected territory this, however, does not imply the existence of a dominant position within the meaning of article 86 in particular where several undertakings whose economic strength is comparable to that of a proprietor of the mark operate in the market for the products in question and are in a position to compete with the said proprietor.

Furthermore, in so far as the exercise of a trade-mark right is intended to prevent the importation into the protected territory of products bearing an identical mark, it does not constitute an abuse of a dominant position within the meaning of article 86 of the treaty.

6. In so far as the proprietor of a mark in the member states of the community may prevent the sale by a third party within the community of products bearing the same mark held in a third country, the requirement that such third party must, for the purposes of his exports to the community, obliterate the mark on the products concerned and perhaps apply a different mark forms part of the permissible consequences of the protection which the national laws of each member state afford to the proprietor of the mark against the importation of products from third countries bearing a similar or identical mark.
[ Bailii ]

 
 EMI Records -v- CBS United Kingdom; ECJ 15-Jun-1976 - [1976] ECR 811; C-51/75; R-51/75; [1976] EUECJ R-51/75
 
Societe Terrapin (Overseas) Ltd. -v- Societe Terranova Industrie Ca Kapferer & Co R-119/75; [1976] EUECJ R-119/75; [1976] 2 ECR 1039
22 Jun 1976
ECJ

European, Intellectual Property, Commercial
The court discussed the doctrine of exhaustion of rights: ". . . the proprietor of an industrial or commercial property right protected by the law of a member state cannot rely on that law to prevent the importation of a product which has lawfully been marketed in another member state by the proprietor himself or with his consent."
1 Citers

[ Bailii ]

 
 Tavener Rutledge -v- Trexapalm; 1977 - [1977] RPC 275

 
 Krisarts SA -v- Briarfine Ltd; ChD 1977 - [1977] FSR 557
 
Solar Thomson Engineering Co Ltd -v- Barton [1977] RPC 537
1977
CA
Buckley LJ
Intellectual Property
The court was asked as to the extent to which a purchaser of a patented article had an implied licence to keep it in repair. Buckley LJ: "The cardinal question must be whether what has been done can fairly be termed a repair, having regard to the nature of the patented article. If it is, any purchaser of such an article, whether from the patentee ... or from a purchaser from the patentee ..., is impliedly licenced to carry it out or to contract with someone else to carry it out for him: ..." A purchaser of an article is impliedly licenced to infringe the owner's copyright in drawings of parts of that article so far as is necessary to enable repairs to be carried out. A licence was implied since, without it, the reproduction of the parts would be unlawful.
1 Citers


 
Electrolux -v- Hudson [1977] FSR 31
1977


Employment, Intellectual Property
A clause in a storekeeper's contract giving inventions to employer was held invalid because it was in unreasonable restraint of trade.


 
 Prior -v- Lansdowne Press Pty Ltd; 1977 - [1977] RPC 511
 
Solar Thompson -v- Barton [1977] RPC 537
1977
CA
Buckley LJ
Intellectual Property
The parties disputed whether the defendant had a right to repair his equipment manufactured by the plaintiff under its patent. Held: There was an implied licence to repair. However, the real issue was whether the defendants had made a "new merchantable article": had the defendants made the patented product. Buckley LJ said that the question was one of fact and degree and that the "cardinal question" was whether "what has been done can fairly be termed a repair, having regard to the nature of the patented article". He saw no difference between this question and the question of whether, having regard to the nature of the patented article, the defendant could be said to have made it.
1 Citers


 
Maxim's Ltd -v- Dye [1977] FSR 364
1977
ChD
Graham J
Intellectual Property
The Parisian restaurant had an extensive fame and goodwill, was extensively patronised by persons resident in England and had received direct bookings from England to reserve a table there. It sought to stop a restaurant in Norwich from trading as Maxims. Held. The injunction was granted. The existence and extent of the plaintiff's reputation and goodwill in every case is a question of fact, however it may be proved and whatever it is based on.
1 Cites

1 Citers



 
 Bernstein of Leigh (Baron) -v- Skyview and General Ltd (Summary); QBD 9-Feb-1977 - [1977] EWHC QB 1; [1977] 3 WLR 136; [1977] 241 EG 917; [1977] 2 All ER 902; [1978] QB 479
 
Hoffmann La Roche Ag -v- Centrafarm Vertriebsgesellschaft Pharmazeutischer Erzeugnisse Mbh C-107/76; R-107/76; [1977] EUECJ R-107/76; [1978] 2 ECR 1139
24 May 1977
ECJ

European, Intellectual Property
The court considered the application of the doctrine of exhaustion of rights in the context of trade marks. The exercise of trade mark rights had to take account of and might be restricted by the prohibitions contained in the Treaty of Rome intended to promote the free movement of goods. The court dealt specifically with the question whether, where a product marketed under a trade mark had been re-packaged by a third party, the third party could be prevented from applying the trade mark to the re-packaged product. As to that, the court concluded that the answer would depend upon the nature of the product and the circumstances and method of the re-packaging and that the application of the mark to the re-packaged product should be allowed where it could be shown that the re-packaging could not adversely affect the condition of the product (pp 1164 and 1165). The court said also that the re-packager should give the proprietor of the mark prior notice and state on the new packaging that the product had been re-packaged.
1 Citers

[ Bailii ]
 
RCA Corporation -v- Custom Cleared Sales Pty Ltd [1978] FSR 576
1978


Intellectual Property, Commonwealth
(Court of Appeal of New South Wales) The court considered the knowledge to be established for copyright infringement saying, "the knowledge which has to be proved is actual but not constructive".
1 Citers



 
 Bauman -v- Fussell (1953); CA 1978 - [1978] RPC 493
 
Infabrics Ltd -v- Jaytex Shirt Co Ltd [1978] FSR 451
1978

Whitford J
Intellectual Property
Section 5(2) of the 1956 Act provided that "Copyright in a . . work is infringed by any person who . . imports an article . . if to his knowledge the making of that article constituted an infringement of that copyright, or would have constituted such an infringement if the article had been made in the place into which it is so imported". The defendants imported shirts from Hong Kong. They had a design similar to one they had previously been shown by the plaintiffs. The plaintiffs sent a letter before action on 21 February 1976. It was common ground that, in the light of Van Dusen v Kritz, knowledge could be imputed to the defendants by 5 March 1975, 14 days after receipt of the letter. One of the issues was whether the defendants had had the requisite knowledge prior to receipt of the letter. Held: The claim failed. Whitford J cited Van Dusen v Kritz, and adopted the approach of Harvey J in Albert v Hoffnung & Co Ltd (1921) 22 SR (NSW) 75 at 81 that "'Knowledge' means . . notice of facts such as would suggest to a reasonable man that a breach of copyright law was being committed". On that basis the defendants had not had the requisite knowledge prior to receipt of the letter.
Copyright Act 1956 5(2)
1 Cites

1 Citers


 
Franklin -v- Giddins [1978] Qd R 72
1978


Intellectual Property
Obligation of confidence
1 Citers


 
Redwood Music Ltd -v- Francis, Day & Hunter [1978] RPC 429
1978

Goff J
Intellectual Property
The court asked about the history of the assignability of a copyright reversion: "The Act of 1911 was repealed by the Copyright Act 1956; and the Act of 1956 contains no provision comparable to the proviso to section 5(2) of the Act of 1911. However by virtue of section 50 and paragraph 28 of the Seventh Schedule of the Act of 1956, the proviso to section 5(2) of the Act of 1911 remains applicable to pre-1957 works, unless some further assignment of the copyright has been made since the commencement of the Act of 1956. It is perhaps of some significance that Parliament did not consider the reversionary interest worth preserving in the Act of 1956."
Copyright Act 1911 5(2) - Copyright Act 1956 50
1 Citers



 
 Hoffman-La Roche -v- Centrafarm; ECJ 23-May-1978 - [1978] ECR 1139; [1978] 3 CMLR 217; [1978] FSR 598; [1978] ECR I-1139; C-102/77; R-102/77; [1978] EUECJ R-102/77
 
Centrafarm Bv -v- American Home Products Corporation C-3/78; R-3/78; [1978] EUECJ R-3/78; [1978] ECR 1823
10 Oct 1978
ECJ

European, Intellectual Property
It is clear from article 36 of the EEC treaty, in particular its second sentence, as well as from the context, that whilst the treaty does not affect the existence of rights recognized by the laws of a member state in matters of industrial and commercial property, the exercise of those rights may nevertheless, depending on the circumstances, be restricted by the prohibitions contained in the treaty.
Inasmuch as it contains an exception to one of the fundamental principles of the common market, article 36 in fact admits of exceptions to the rules on the free movement of goods only to the extent to which such exceptions are justified for the purpose of safeguarding the rights which constitute the specific subject- matter of that property.
The proprietor of a trade-mark which is protected in one member state is justified pursuant to the first sentence of article 36 in preventing a product from being marketed by a third party even if previously that product has been lawfully marketed in another member state under another mark held in the latter state by the same proprietor.
Nevertheless such prevention may constitute a disguised restriction on trade between member states within the meaning of the second sentence of article 36 of the treaty if it is established that the proprietor of different marks has followed the practice of using such marks for the purpose of artificially partitioning the markets.
1 Citers

[ Europa ] - [ Bailii ]
 
Thomas Marshall (Exports) Ltd -v- Guinle [1979] Ch 227; [1978] 3 All ER 193; [1978] ICR 950; [1978] 3 WLR 116
1979
ChD
Sir Robert Megarry VC
Torts - Other, Contract, Intellectual Property
The managing director defendant had resigned before the end of the contractual term. There was an express covenant in his contract against using or disclosing the company's confidential information during or after his employment. It was submitted that this was a repudiation which brought the contract to an end and with it any obligation to observe the restrictive covenants. Held: Sir Robert Megarry VC considered the power of a court to prevent a wrongdoer from benefiting from his wrong: "Above all, I think the courts must be astute to prevent a wrongdoer from profiting too greatly from his wrong. If without just cause a servant who has contracted to serve for a term of years refuses to do so, it is easy to see that the court is powerless to make him do what he has contracted to do: neither by decreeing specific performance nor by granting an injunction can the court make the servant perform loyally what he is refusing to do, however wrongfully . . But why should the court's inability to make a servant work for his employer mean that as soon as the servant refuses to do so the court is forthwith disabled from restraining him from committing any breach, however flagrant, of his other obligations during the period of his contract? I would wholly reject the doctrine of automatic determination, whether in its wide form or in its narrowed version."
As to whether information was confidential, Sir Robert Megarry VC said: "If one turns from the authorities and looks at the matter as a question of principle, I think (and I say this very tentatively, because the principle has not been argued out) that four elements may be discerned which may be of some assistance in identifying confidential information or trade secrets which the court will protect. I speak of such information or secrets only in an industrial or trade setting. First, I think that the information must be information the release of which the owner believes would be injurious to him or of advantage to his rivals or others. Second, I think the owner must believe that the information is confidential or secret, i.e., that it is not already in the public domain. It may be that some or all of his rivals already have the information: but as long as the owner believes it to be confidential I think he is entitled to try and protect it. Third, I think that the owner's belief under the two previous heads must be reasonable. Fourth, I think that the information must be judged in the light of the usage and practices of the particular industry or trade concerned. It may be that information which does not satisfy all these requirements may be entitled to protection as confidential information or trade secrets: but I think that any information which does satisfy them must be of a type which is entitled to protection."
1 Citers



 
 LB (Plastics) Ltd -v- Swish Products Ltd; ChD 1979 - [1979] RPC 551
 
Warnink (Erven) Besloten Vennootschap -v- J Townend & Sons (Hull) Ltd [1979] 2 All ER 927; [1979] 3 WLR 68; [1979] AC 731; (1980) RPC 31
1979
HL
Lord Diplock, Lord Fraser of Tullybelton
Intellectual Property, Torts - Other
The House formulated the modern principle which governs the tortious liability compendiously described as passing off. The right protected by the tort is the "property in the business or goodwill likely to be injured by the misrepresentation."
Lord Diplock set out five characteristics required in a passing off action: "My Lords, Spalding v Gamage and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so."
Lord Fraser formulated the action of passing off as it applied to goods: "It is essential for the Plaintiff in a passing off action to show at least the following facts:
(1) That his business consists of, or includes, selling in England a class of goods to which the particular trade name applies;
(2) That the class of goods is clearly defined, and that in the minds of the public, or a section of the public, in England, the trade name distinguishes that class from other similar goods;
(3) That because of the reputation of the goods, there is a goodwill attached to the name;
(4) That he, the Plaintiff, as a member of the class of those who sell the goods, is the owner of goodwill in England which is of substantial value;
(5) That he has suffered, or is really likely to suffer, substantial damage to his property in the goodwill by reason of the Defendant selling goods which are falsely described by the trade name to which the goodwill is attached."
1 Cites

1 Citers


 
Dunhill -v- Sunoptic [1979] FSR 426
1979


Intellectual Property
Trade mark infringement - own name defence
1 Citers


 
Elanco Products Ltd -v- Mandops (Agrochemical Specialists) Ltd [1979] FSR 46
1979
CA
Goff and Buckley LJJ
Intellectual Property
The plaintiffs conducted trials to test their new herbicide. When they sold the patented product, they included instructions based, they said uon that research. After the patent expired, the defendants sold a similar product with similar instructions. The plaintiffs claimed copyright infringement. The defendants said they were entitled to use the information provided they did not copy the words.
Buckley LJ: "As I understand the law in this case, the defendants were fully entitled to make use of any information of a technical or any other kind, which was available to them in the public domain, for the purpose of compiling their label and their trade literature, and they were not entitled to copy the plaintiffs' label or trade literature thereby making use of the plaintiffs' skill and judgment and saving themselves the trouble, and very possibly the cost, of assembling their own information, either from their own researches or from sources available in documents in the public domain and thereby making their own selection of material to put into that literature and producing their own label and trade literature".
1 Citers


 
Erven Warnink Besloten Vennootschap -v- J Townend & Sons (Hull) Limited ('Advocaat') 1A IPR 666; [1979] FSR 397; [1979] AC 731; [1980] RPC 31; [1979] 3 WLR 68; [1979] 2 All ER 927
1979
HL
Lord Diplock, Lord Fraser
Intellectual Property, Media
The trademark was the name of a spirit-based product called ADVOCAAT. The said product had gained a reputation and goodwill for that name in the English market and the defendants were seeking to take advantage of that name by misrepresenting that their wine-based product was of the same type as ADVOCAAT. The court considered the law on comparative advertising as prohibited by the law against passing off in its extended form where the goodwill is alleged to reside in a class of producers of a product sharing a common name or get up. Held: Whether the name denoted a product made from ingredients from a particular locality or whether the goodwill in the name was the result of the product being made from particular ingredients regardless of their provenance, since it was the reputation that the product itself had gained in the market by reason of its recognisable and distinctive qualities which had generated the relevant goodwill. In The remedy is intended to prevent unfair trading practices.
Lord Diplock said: "in an economic system which has relied on competition to keep down prices and to improve products there may be practical reasons why it should have been the policy of the common law not to run the risk of hampering competition by providing civil remedies to everyone competing in the market who has suffered damage to his business or goodwill in consequence of inaccurate statements of whatever kind that may be made by rival traders about their own wares. The market in which the action for passing off originated was no place for the mealy mouthed; advertisements are not on affidavit; exaggerated claims by a trader about the quality of his wares, assertions that they are better than those of his rivals even though he knows this to be untrue, have been permitted by the common law as venial ‘puffing’ which gives no cause of action to a competitor even though he can show that he has suffered actual damage in his business as a result." The goodwill of a manufacturer's business may well be injured by someone else who sells goods which are correctly described as being made by that manufacturer but being of an inferior class or quality are misrepresented as goods of his manufacture of a superior class or quality.
1 Cites

1 Citers



 
 LB (Plastics) Ltd -v- Swish Products Ltd; 1979 - [1979] RPC 551

 
 Nichols Advanced Vehicle Systems Inc -v- Rees; 1979 - [1979] RPC 127

 
 LB (Plastics) Ltd -v- Swish Products Ltd; HL 3-Jan-1979 - [1979] RPC 551
 
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