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Intellectual Property - From: 1980 To: 1984

This page lists 55 cases, and was prepared on 08 August 2015.


 
 Castrol Australia Pty Ltd -v- EmTech Associates Pty Ltd; 1980 - [1980] 51 FLR 184

 
 Talbot -v- General Television Corporation Pty Ltd; 1980 - [1980] VicRp 26; [1981] RPC 1
 
The Athletes' Foot Marketing Associates Inc -v- Cobra Sports Ltd [1980] RPC 343
1980
ChD
Walton J
Intellectual Property
The plaintiff, which carried on a retail shoe franchising business mainly in the United States, had prospective franchisee in England but had not commenced trading there. There was an awareness in England of the plaintiff's trade name and activities in the USA, but no more than preparatory steps had been taken to set up a business here. Held: That was not an adequate basis for a passing-off claim. No one in England had bought anything from one of the plaintiff’s franchised shops abroad. The plaintiff’s US advertisements reached England, but there was no solicitation by way of postal trade.
Walton J said: "as a matter of principle, no trader can complain of passing off as against him in any territory – and it will usually be defined by national boundaries, although it is well conceivable in the modern world that it will not – in which he has no customers, nobody who is in a trade relation with him. This will normally shortly be expressed by saying that he does not carry on any trade in that particular country . . but the inwardness of it will be that he has no customers in that country: no people who buy his goods or make use of his services (as the case may be) there."
1 Cites

1 Citers


 
Ravenscroft -v- Herbert [1980] RPC 193
1980
ChD
Brightman J
Intellectual Property
The plaintiff had written a non-fiction book entitled 'The Spear of Destiny.' He claimed infringement of copyright by the defendant in his book of fiction called 'The Spear'. Both books were centered on a spear exhibited in Vienna, said to have been the lance which pierced Christ's side on the cross. The allegation was that the story spun by the defendant had leant too heavily on the plaintiff's work. Held: The court described the work of the defendant: "One must not underestimate the commercial attraction of the rubbish which I have attempted to describe. The book is written with much inventiveness and a racy flow of language and incident and the numerous scenes of violence exercise a strong appeal to certain readers. The Defendants novels have enjoyed great financial success. Mr Herbert does not think of himself as a serious novelist". The judge went on to discuss the differential analysis of copyright claims involving facts or ideas: Mr. Laddie, for the defendants, rightly says that an author has no copyright in his facts, nor in his ideas, but only in his original expression of such facts or ideas. He submitted that in deciding whether copying is substantial there are four principal matters to be taken into account. First, the volume of the material taken, bearing in mind that quality is more important than quantity; secondly, how much of such material is the subject-matter of copyright and how much is not; thirdly, whether there has been an animus furandi on the part of the defendant . . ."
And: "There was a suggestion by Mr. Laddie that some distinction should be drawn in the present case because much of what the defendant copied from The Spear of Destiny was merely information derived by the plaintiff from Dr. Stein. I do not think it matters whether the source of the plaintiff's book was painstaking research into documented history or painstaking recording and recollection of what Dr. Stein had told him. It was also suggested that a distinction should be drawn on the ground that The Spear of Destiny was, since the death of Dr. Stein, the only possible source of certain of the facts brought to light by the meditation of Dr. Stein. It does not, however, seem to me that the paucity of sources of information excuses the defendant from taking the trouble of assembling his own information and making his own selection of material. If that is not practicable, he can always apply to the plaintiff for a licence".
1 Cites

1 Citers


 
Khashoggi -v- Smith Unreported, 15 Jan 1980
15 Jan 1980
CA
Sir David Cairns
Intellectual Property, Defamation
The plaintiff attempted to prevent a housekeeper from disclosing allegedly confidential information acquired during her employment. Held: Sir David Cairns said: "But when it is apprehended that what a former employee has disclosed, or is about to disclose, and what others to whom it has been disclosed are threatening to publish, consists in part of allegations of criminal conduct of a serious character, then in my judgment no action will lie on the basis that the employee learned of such conduct in confidence as distinct from an action for defamation on the basis that the allegations are untrue. It seems to me that there is a fundamental distinction between the two types of action, in that in the one case the plaintiff is saying 'Untrue and defamatory statements have been made about me,' and in the other case of the plaintiff is saying: 'Statements which are about to be published about events which have happened and have been disclosed as a result of breach of confidence.'
For this reason and also because it seems that a great part of the story in relation to alleged criminal conduct has already been made public at the trial at the Central Criminal Court, I consider that the plaintiff is not entitled to an injunction in respect of those matters."
1 Citers



 
 Cadbury-Schweppes Pty Ltd And Others -v- Pub Squash Co Pty Ltd; PC 13-Oct-1980 - [1981] 1 WLR 193; [1981] RPC 429; [1980] UKPC 30
 
EMI Records -v- Riley [1981] 1 All ER 838; [1981] 1 WLR 923
1981
ChD
Dillon J
Intellectual Property, Litigation Practice
The defendant to an action for an injunction by the plaintiff on behalf of the British Phonographic Industry Copyright Society, said that the company did not properly represent the members of the Society. Held: It could be inferred that all relevant members of a copyright society would wish to suppress counterfeit goods, and so they had a sufficient common interest to allow a representative action by the society acting through the plaintiff. Allowing a representative action would avoid substantial and unnecessary complications of each member of the class pursuing a separate action.
1 Cites

1 Citers



 
 ICI -v- Berk; 1981 - [1981] FSR 1

 
 Spelling Goldberg -v- BPC Publishing; 1981 - [1981] RPC 225

 
 CBS United Kingdom Ltd -v- Charmdale Record Distributors Ltd; 1981 - [1981] 1 Ch 91

 
 Morton - Norwich Products -v- Intercen (No 2); ChD 1981 - [1981] FSR 337

 
 Andrew Master Homes Ltd v Cruikshank and Fairweather; CA 1981 - [1981] RPC 389
 
Rank Film Distributors -v- Video Information Centre [1982] AC 380; [1981] 2 All ER 76; [1981] 2 WLR 668
1 Mar 1981
HL
Lord Wilberforce, Templeman L
Litigation Practice, Intellectual Property
The plaintiffs claimed large-scale copyright infringement, and obtained Anton Pillar orders. The House considered the existence of the privilege against self-incrimination where the Anton Piller type of order has been made. The Court of Appeal had decided that the court should abstain from making an order ex parte requiring immediate answers to interrogatories or disclosure of documents when it can see that the defendant would be in danger of self-incrimination, and all requirements to answer those interrogatories or to disclose documents were deleted from the order originally made at first instance. Held: The appeal was dismissed. The privilege against self-incrimination was capable of being invoked. The test is as to whether there is a "real and appreciable risk of criminal proceedings . . being taken against" the witness.
Lord Wilberforce said: "However, it is only too clear (and I deliberately use the language of reluctance) that supply of the information and production of the documents sought would tend to expose the respondents to a charge of conspiracy to defraud… A charge of conspiracy to defraud, so far from being as it sometimes is, a contrived addition to other charges, is here an appropriate and exact description of what was being done… Unless some escape can be devised from this conclusion, the privilege must inevitably attach." and
"Mr. Nicholls was at pains to make clear that he was not, in these submissions, attempting to negate or undermine the privilege against self-incrimination. This has been too long established in our law as a basic liberty of the subject - in other countries it has constitutional status - to be denied. It has received modern recognition in section 14 of the Civil Evidence Act 1968 and in this House."
The protection extended to material the discovery of which which might "Set in train a process which may lead to incrimination or may lead to the discovery of real evidence of an incriminating character."
'It may seem to be a strange paradox that the worse, ie the more criminal, their [ie the defendants'] activities can be made to appear, the less effective is the civil remedy that can be granted, but that, prima facie, is what the privilege achieves.' and 'This has been too long established in our law as a basic liberty of the subject (in other countries it has constitutional status) to be denied.' "It is certainly correct to say, that existing law and practice to some extent prevent matter disclosed on discovery in civil proceedings from being used to the prejudice of the disclosing party. The protection is described with different words: the matter must not be used for an 'improper' purpose' or a 'collateral object' or, most strongly, ´otherwise than in the action, in which they are disclosed'.
Lord Fraser of Tullybelton: "At one stage, the argument seemed to depend on the possibility that the court which ordered the discovery might place an express restriction on the use of any information disclosed. In my opinion, any argument on that basis must be rejected. A restriction by the court making the order would, no doubt, be effective to bind the party who obtained the order, but it can hardly be suggested that it would be effective to prevent a prosecutor in the public interest from using, or an English criminal court (a fortiori a Scottish criminal court if a conspiracy were prosecuted in Scotland) from admitting the information in evidence at a trial. All evidence which is relevant is prima facie admissible in a criminal trial, although the trial judge has a discretion to exclude evidence which, though admissible, has been obtained by unfair means from the accused after commission of the offence: Reg. v. Sang [1980] AC 402. But it is obvious that a person who has to rely on an exercise of judicial discretion is in a less secure position than one who, by relying on the privilege, can avoid providing the information in the first place. " and "The main basis of the argument was an implied rule, said to be derived from the case of Riddick v. Thames Board Mills Ltd. [1977] QB 881, to the effect that evidence which has been disclosed under compulsion in a civil action cannot be used against a person who has disclosed if for the purposes of another civil action or of a criminal prosecution. It was argued that any incriminating information disclosed by a person making discovery or answering interrogatories would enjoy complete protection by reason of that rule, because the information would have been given under compulsion, in respect that refusal to give it would be contempt of court. I would make one preliminary observation on that argument. It seems to me to go much too far. If it is well-founded, it means that the established practice whereby judges warn witnesses that they need not answer questions addressed to them in oral examination in court, if the answers might tend to incriminate them, is unnecessary, because refusal to answer would, in the absence of the warning, be contempt of court and any incriminating evidence having been given under compulsion would not be admissible against them in criminal proceedings. I approach a proposition leading to that result with some scepticism. In any event, the case of Riddick was concerned only with the question of the use to which documents recovered on discovery could be put by the party who had obtained discovery. Lord Denning M.R. at p. 896H, stated the principle in a sentence thus: ´A party who seeks discovery of documents gets it on condition that he will make use of them only for the purposes of that action, and for no other purpose' (emphasis added). That statement of principle would have to be extended to include cases such as Norwich Pharmacal Co. v. Customs and Excise Commissioners [1974] AC 133, where an order was made for discovery of information for the purpose of its being used in another action. The principle is, I think, that information is not to be used by the party who gets discovery for purposes other than that for which production was ordered. But the case of Riddick had nothing to do with the use of information for prosecution in the public interest. On the contrary, both Lord Denning M.R. at p.896 and Stephenson L.J. at p.901, referred with approval to the observations of Talbot J. in Distillers Co. (Biochemicals) Ltd. v. Times Newspapers [1975] QB 613, 621, recognising that there might be a public interest in favour of disclosure which would override the public interest in the administration of justice which goes to preserve the confidentiality of documents disclosed on discovery. That is clearly correct. If a defendant's answers to interrogatories tend to show that he has been guilty of a serious offence I cannot think that there would be anything improper in his opponent reporting the matter to the criminal authorities with a view to prosecution, certainly if he had first obtained leave from the court which ordered the interrogatories, and probably without such leave. If that is right the object of the privilege against self-incrimination would not be completely achieved by relying on any rule which can be derived from Riddick v. Thames Board Mills Ltd. [1977] QB 881."
1 Cites

1 Citers


 
Pfizer Inc -v- Eurim-Pharm Gmbh R-1/81; [1981] EUECJ R-1/81; 1 CMLR 406
3 Dec 1981
ECJ

European, Intellectual Property
ECJ The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or final user by enabling him to distinguish without any possibility of confusion between that product and products which have another origin. This guarantee of origin means that the consumer or final user may be certain that a trade-marked product which is offered to him has not been subject at a previous stage in the marketing process to interference by a third person, without the authorization of the proprietor of the trade mark, affecting the original condition of the product. Therefore, the proprietor of a trade-mark right may not rely on that right in order to prevent an importer from marketing a pharmaceutical product manufactured in another member state by the subsidiary of the proprietor and bearing the latter ' s trade mark with his consent, where the importer, in re-packaging the product, confined himself to replacing the external wrapping without touching the internal packaging and made the trade mark affixed by the manufacturer to the internal packaging visible through the new external wrapping, at the same time clearly indicating on the external wrapping that the product was manufactured by the subsidiary of the proprietor and re-packaged by the importer.
As to the exhaustion of rights in the field of trade marks: "regard must be had to the main function of the trade mark which is to give the consumer or final buyer a guarantee of the identity of origin of the marked product, by enabling him to distinguish this product, with no risk of confusion, from products of a different origin. This guarantee of origin implies that the consumer or final buyer can be sure that any marked product offered to him has not been interfered with by a third party, at an earlier stage of marketing, in any way which has affected the original condition of the product, without the consent of the trade mark owner."
1 Citers

[ Bailii ]
 
Fletcher Challenge Ltd -v- Fletcher Challenge Pty Ltd (1982) FSR 1
1982

Powell J
Commonwealth, Intellectual Property, Company
(Supreme Court of New South Wales) The plaintiff company was formed from three companies well-known in New Zealand. The defendant company were formed anticipating being sold to the plaintiffs at a substantial profit. Defence Counsel told the judge that the defendants had not traded and offered undertakings that they would not trade without making it clear that they were not associated with the plaintiffs, and that therefore the defendants would not make a misrepresentation which could found a passing-off action. Held: The judge considered each of the characteristics of passing-off set out in the Warnink case. If the defendants started trading, they would be associated with or treated as part of the plaintiffs and that could affect the plaintiffs' reputation. He granted injunctions preventing passing-off and requiring the name to be changed. The name of the company was an instrument of fraud as its use would mean that passing-off would result.
1 Cites

1 Citers



 
 Leco Investments (UK) Ltd -v- Land Pyrometers; CA 1982 - [1982] RPC 133

 
 Schering Chemicals Ltd -v- Falkman Ltd; CA 1982 - [1982] QB 1; [1981] 2 All ER 321; [1981] 2 WLR 848

 
 RCA -v- Pollard; ChD 1982 - [1982] 2 All ER 468

 
 CBS United Kingdom -v- Lambert; CA 1982 - [1982] 3 WLR 746; [1982] 3 All ER 237
 
Redwood Music Ltd -v- Chappell & Co Ltd [1982] RPC 109
1982
ChD
Robert Goff J
Intellectual Property
It was submitted that an arrangement of an existing musical work only attracted a separate copyright if it involved great skill and labour. After referring to the University of London Press Limited, the court held: "That passage was cited with approval in the House of Lords in Ladbroke (Football) Ltd. v. William Hill (Football) Ltd [1964] 1 W.L.R. 273 at pp. 277-78 per Lord Reid, where he stated that there was no dispute about the meaning of the term "original". It is on this basis, of course, that there may be copyright in works of a comparatively humdrum nature, such as straightforward translations; though of course such copyright may be of little value, because another such work may be produced without difficulty, without recourse to the copyright work. I should add that the decision in Wood v. Boosey, relied on by Mr Bateson, although decided before the Copyright Act 1911 and not therefore decided as a matter of construction of the statutory words "original work", is in my judgement consistent with the test proposed by Peterson J. The case was concerned with the question whether a piano reduction by Brissler of Nicolai's opera The Merry Wives of Windsor attracted a separate copyright in the arrangement, or whether the copyright in the piano reduction belonged to the owner of the copyright in the original opera. In holding that the piano reduction was an independent composition in which the arranger, as author, owned the copyright, the Court of Exchequer Chamber considered the questions whether it was "a new and substantive work in itself", or whether there was "something in the nature of authorship in Brissler" – tests at least consistent with that now adopted in relation to the statutory definition under the Acts of 1911 and 1956."
1 Cites

1 Citers



 
 RCA Corporation -v- Pollard; CA 1982 - [1982] 3 All ER 771; [1983] 1 Ch 135

 
 Catnic Components Ltd & Another -v- Hill & Smith Ltd; HL 1982 - [1983] FSR 512; [1982] RPC 183

 
 Exxon Corp -v- Exxon Insurance Consultants International Ltd; CA 1982 - [1982] RPC 69; [1982] Ch 119

 
 Kalman -v- PCL Packaging (UK) Ltd; 1982 - [1982] FSR 406

 
 Hytrac Conveyors Ltd -v- Conveyors International Ltd; CA 1982 - [1983] 1 WLR 44; [1982] 3 All ER 415; [1983] FSR 63
 
G D Searle & Co Ltd -v- Celltech Ltd [1982] FSR 92
1982
CA
Cumming-Bruce LJ
Intellectual Property, Employment
The court was asked as to an employee's covenant now said to be in restraint of trade. Held: In disputes between employers and ex-employees courts will usually seek to protect the rights of employees to advance their chosen trade and profession, to promote their own private interests by changing their employment and also to promote the public interest by better use of his personal aptitudes, experience and skill.
Cumming-Bruce LJ said: "The court seeks to uphold the obligation of free contracting parties to a contract of service to honour their contractual obligations. On the other hand, the court seeks to respect the rights of servants to advance in their chosen trade and profession, and in this connection to promote their own private interest by changing their employment, and also to promote the public interest by better use of the servants' personal aptitudes, experience and skill . . The picture that emerges is the market for labour in operation for the benefit of the employees and of the public, but in the short term, naturally to the disadvantage of the employer who loses in the competitive bargaining process. The usual procedure by which a business protects itself from competition for its employees is a restrictive covenant; that is conspicuous by its absence in the relevant contracts. If there were such covenants, the employee could invite the court to avoid them if on accepted principles of law they were unreasonable in their width or their duration . . The law has always looked with favour upon the efforts of employees to advance themselves, provided that they do not steal or use the secrets of their former employer. In the absence of restrictive covenants, there is nothing in the general law to prevent a number of employees in concert deciding to leave their employer and set themselves up in competition with him."
1 Cites

1 Citers



 
 CBS Inc -v- Ames Records & Tapes Ltd; 1982 - [1982] Ch 91

 
 RCA Corporation -v- John Fairfax & Sons Ltd; 1982 - [1982] RPC 91
 
Hoover plc -v- George Hulme (Stockport) Ltd [1982] FSR 565
1982

Whitford J
Intellectual Property
Section 5(3) of the 1956 Act provided that "Copyright in a . . work is infringed by any person who . . (a) sells, lets for hire, or by way of trade offers or exposes for sale or hire any article . . if to his knowledge the making of that article constituted an infringement of that copyright, or (in the case of an imported article) would have constituted such an infringement if the article had been made in the place into which it was imported". The plaintiffs brought a claim for copyright infringement in respect of the defendants' sales of spare parts for the plaintiffs' vacuum cleaners based on manufacturing drawings. Held: Whitford J said: "the true position is that the court is not concerned with the knowledge of a reasonable man but is concerned with reasonable inferences to be drawn from a concrete situation as disclosed in the evidence as it affects the particular person whose knowledge is in issue". The defendants did not have the requisite knowledge at the date of the writ because, although the plaintiffs had sent the defendants a letter before action which was followed by meetings to discuss the matter, the plaintiffs had failed to make it clear which parts were alleged to infringe which drawings and had not allowed the defendants a reasonable time to investigate their claims.
Copyright Act 1956 5(3)
1 Cites

1 Citers



 
 Rotocrop International Ltd -v- Gembourne Ltd; 1982 - [1982] FSR 241

 
 My Kinda Town Ltd -v- Soll; QBD 1982 - [1982] FSR 147; (1983) RPC 15
 
Keurkoop Bv -v- Nancy Kean Gifts Bv R-144/81; [1982] EUECJ R-144/81; [1982] ECR 2853
14 Sep 1982
ECJ

European, Intellectual Property
ECJ The protection of designs comes under the protection of industrial and commercial property within the meaning of article 36 inasmuch as its aim to define exclusive rights which are characteristic of that property. In the absence of community standardization or a harmonization of laws the determination of the conditions and procedures under which protection of designs is granted is a matter for the national rules of each member state. In its present state community law does not preclude the adoption of national provisions to the effect that the person who first files the design acquires the exclusive right to it without its being necessary to inquire whether that person is also the author of the design or a person entitled under him and without those concerned being entitled to allege that the person filing the design is not the author, the person commissioning him or his employer. Although a right to a design, as a legal entity, does not as such fall within the class of agreements or concerted practices envisaged by article 85(1), the exercise of that right may be subject to the prohibitions contained in the treaty when it is the purpose, the means or the result of an agreement, decision or concerted practice. The proprietor of a right to a design acquired under the legislation of a member state may prevent the importation of products from another member state which are identical in appearance to the design which has been filed, provided that the products in question have not been put into circulation in the other member state by, or with the consent of, the proprietor of the right or a person legally or economically dependent on him, that as between the natural or legal persons in question there is no kind of agreement or concerted practice in restraint of competition and finally that the respective rights of the proprietors to the right to the design in the various member states were created independently of one another.
1 Citers

[ Bailii ]
 
Machinery Market Ltd -v- Sheen Publishing Limited [1983] FSR 431
1983
ChD
Walton J
Intellectual Property
A newspaper republished advertisements which were in fact copied from a competitor. They blamed their printers. Held: The plaintiff did own the copyright in the advertisements, and was entilted to an injunction and an account of profits. It was not a defence to blame the printers.
Copyright Act 1956 15
1 Citers



 
 Sillitoe -v- McGraw-Hill Book Co; 1983 - [1983] FSR 545
 
Murray -v- King (1983) 2 IPR 99
1983


Intellectual Property

1 Citers


 
Lego System Aktieselskab -v- Lego M. Lemelstrich Ltd [1983] FSR155
1983
ChD
Falconer J
Intellectual Property
An association was claimed between irrigation equipment supplied by the defendant and plastic toy bricks made by the plaintiff. Held: When looking for the likelihood of confusion in a passing off action between parties whose activities lie in different fields must depend mainly on the scope of the "field of recognition" of the name in question, and not merely on the disparity between their fields of activity.
1 Citers



 
 My Kinda Town Ltd -v- Soll; CA 1983 - [1983] RPC 407
 
Hindley -v- Higgins and News Group Newspapers Ltd Unreported, 24 August 1983; CAT No. 830 of 1983
24 Aug 1983
CA

Intellectual Property
The court considered what would amount to fair dealing in copyright
1 Citers


 
Ferdinand M.J.J. Duijnstee -v- Lodewijk Goderbauer R-288/82; [1983] EUECJ R-288/82; [1983] ECR 3663
15 Nov 1983
ECJ

European, Insolvency, Intellectual Property
A liquidator sought to recover a patent from an employee of the company, a claim held not to be excluded from the Convention.
Europa 1. The Convention of 27 September 1968, which seeks to determine the jurisdiction of the courts of the contracting states in civil matters, must override national provisions which are incompatible with it. 2. Article 19 of the Convention of 27 September 1968 requires the national court to declare of its own motion that it has no jurisdiction whenever it finds that a court of another contracting state has exclusive jurisdiction under article 16 of the convention, even in an appeal in cassation where the national rules of procedure limit the court ' s reviewal to the grounds raised by the parties. 3. The term "proceedings concerned with the registration or validity of patents "contained in article 16 ( 4 ) of the convention of 27 september 1968 must be regarded as an independent concept intended to have uniform application in all the contracting states. 4. The term "proceedings concerned with the registration or validity of patents" does not include a dispute between an employee for whose invention a patent has been applied for or obtained and his employer, where the dispute relates to their respective rights in that patent arising out of the contract of employment.
1 Cites

1 Citers

[ Bailii ]
 
Duijnstee -v- Goderbauer C-288/82; [1983] ECR 3663
15 Nov 1983
ECJ

European, Intellectual Property
There was a dispute between an inventor and the liquidator of a company concerning ownership of patents. The liquidator's claim was that under Dutch law the inventions had been made on terms that the patents ought to belong to the company. He demanded that the inventor should be ordered to transfer not only the Dutch patent, but also the corresponding patents in 22 other countries, including five which had adhered to the Brussels Convention. Held: To make the order would not violate Article 16(4) of the Convention. The validity of the patents was not being challenged. Nor was the conduct of the various national authorities whose business it was to keep the patent registers. Nor was the liquidator seeking an order directing those authorities to rectify their registers in the light of Dutch law. Instead, the liquidator was asking for an order which would have required the inventor himself to apply to rectify the registers: an order in personam.
1 Citers

[ Europa ]

 
 Fraser -v- Thames Television Ltd; QBD 1984 - [1984] QB 44
 
Imperial Group Plc -v- Philip Morris Ltd [1984] RPC 293
1984
ChD
Whitford J
Intellectual Property
A brand name used in association with product get-up is likely to be a feature upon which customers rely, especially if the get-up combines features in common use in the trade with a distinctive brand name. Whtford J set out guidelines for the admission of survey evidence in passing off cases, noting that "great importance inevitably attaches to the way in which the questions are cast."
As to the plaintiff's survey, it was: "very difficult in connection with to think of questions which, even if they are free from the objection of being leading, are not in fact going to direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put."
The guidelines were:
the interviewees must be selected so as to represent a relevant cross-section of the public;
the size must be statistically significant;
it must be conducted fairly;
all the surveys carried out must be disclosed including the number carried out, how they were conducted, and the totality of the persons involved;
the totality of the answers given must be disclosed and made available to the defendant;
the questions must not be leading nor should they lead the person answering into a field of speculation he or she would never have embarked upon had the question not been put;
the exact answers and not some abbreviated form must be recorded;
coding must be accurately carried out;
the instructions to the interviewers as to how to carry out the survey must be disclosed; and
where the answers are coded for computer input, the coding instructions must be disclosed.
1 Citers


 
Moorgate Tobacco Co Ltd -v- Philip Morris Ltd (No 2) (1984) 156 CLR 414
1984

Deane J
Intellectual Property, Commonwealth
The court approved “.. the adaptation of the traditional doctrine of passing off to meet new circumstances involving the deceptive or confusing use of names, descriptive terms or other indicia to persuade purchasers or customers to believe that the goods or services have an association, quality or endorsement which belongs or would belong to goods or services of, or associated with, another or others.”
1 Citers


 
Kleeneze Ltd -v- DRG (UK) Ltd [1984] FSR 399
1984


Intellectual Property
However strikingly original is a work, copyright law alone will not prevent others expressing the same idea themselves, even if the result is similar.
1 Citers


 
Faccenda Chicken -v- Fowler [1984] ICR 589; [1985] 1 All ER 724; [1985] FSR 105
1984
ChD
Goulding J
Employment, Intellectual Property
The court was asked to restrain the plaintiff's a former sales manager making use of information acquired during his employment which information the employer claimed to be confidential. F had set up a business in a similar field, the marketing of fresh chicken. The employment contract contained no express provision for such restraint. Held: Goulding J identified three classes of information which an employee may have as he leaves an employment, and his duties to a former employer as regards each: "(1) Information which is trivial, or accessible from public sources :
There is no prohibition against use of such information by the employee, whether during or after employment.
(2) Information which is confidential, either because the employee was expressly told so, or because of its character, but which once learned necessarily remains in the employee’s head and becomes part of his own skill and knowledge applied in the course of his employer’s business.
So long as the employment continues, the employee cannot otherwise use or disclose such information without infidelity or breach of contract; but when he is no longer in the same service, he can use his full skill and knowledge for his own benefit in competition with his former employer. If the employer wants to protect information of this kind, he can do so by an express stipulation restraining the employee from competing with him (within reasonable limits of space and time) after the termination of the employment.
(3) Specific trade secrets
Even though they may necessarily have been learned by heart and even though the employee may have left the service, they cannot lawfully be used for anyone’s benefit but the employer’s."
1 Citers


 
White Horse Distillers Ltd -v- Gregson Associates Ltd (1984) RPC 6l
1984

Nourse J
Intellectual Property
Complaint was made that the defendants were assisting traders in Ecuador in passing off their products as those of the plaintiff. Held: "He [defence counsel] submitted that there can never be a tort where the English exporter exports nothing but the malt whisky, that being something which is susceptible of being used innocently in the foreign country. It seems to me that Mr Cochrane's submission cannot be correct. Suppose, for example, a case where the English exporter has told the foreign importer exactly how to set up deceptive sales of the admixture. It cannot be the law that the English exporter will escape liability simply because he does nothing except export the Scotch Whisky. If he exports it with the intention that the admixture shall be sold in a deceptive manner, it is immaterial that he has been responsible neither for the printing and production of the deceptive labels and cartons, nor for their actual implication in the sale of the liquor in the foreign country. In that state of affairs the whisky, being intended to facilitate the deceptive sales, is itself, if you like, an inchoate instrument of deception."
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1 Citers


 
Anheuser-Busch Inc v Budejovicky Budvar [1984] FSR 413; (1984) 4 IPR 260
1984
CA
Oliver LJ
Intellectual Property
The plaintiff sold the well-known 'Budweiser' beer in the US, but it was not generally available in the UK, being sold in American military bases and in a few duty-free shops. However, the beer was widely known throughout the UK because of the plaintiff’s publicity efforts as well as tourist and business traffic between Europe and the US. The defendant sold its own beer under the same name. The right to a trade mark was challenged. Held. Neither side was making a false representation; there was a dual reputation in the mark and name "Budweiser." Oliver LJ said that the plaintiff could “legitimately claim . . a reputation as the [brewer] of a beer, Budweiser, with a substantial section of the public”. The question for the court, then, was “whether this reputation associated with a beer which, for practical purposes, nobody could buy [in the UK], constituted . . goodwill in any relevant sense” and asked whether the plaintiff’s name could be said to be an attractive force for custom in the UK.He answered no, saying: "[O]ne asks oneself “what custom in this country in 1973 was brought in by the knowledge of members of the indigenous British public of the [plaintiff’s] Budweiser beer?” And the answer must be that there was none, because however attractive [the British public] may have found the idea of drinking the [plaintiff’s] beer, they could not get it. In so far, therefore, as anyone was misled by the defendants’ use of the name “Budweiser,” the [plaintiff] could suffer no damage either by loss of sales, for there were none at that time and none were contemplated, nor by loss of reputation, because if there was any such loss (which seems highly improbable) the reputation was quite unconnected with either an ability or a willingness to supply."
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Anheuser-Busch -v- Budejovicky Budvar [1984] FSR 413
1984

Whitford J, Oliver LJ
Intellectual Property
The parties disputed the use of the name Budweiser for the beers which each sold. Held: Neither party was entitled to an injunction. neither AB nor BB was disentitled to use the name Budweiser since in 1979 there was a dual reputation and neither had achieved the reputation improperly and neither was making a misrepresentation. The court recognised that some degree of confusion might result, but this was true in the case of marks used in pursuance of registration under section 12(2) of the 1938 Act.
Trade Marks Act 1938 12(2)
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International Flavors & Fragrances Inc [1984] OJ EPO 309
1984
EPO

Intellectual Property
A patentee who wishes to complain of dealings in a product made by his patented process must rely on his process claim and article 64(2). The United Kingdom is the only Member State of the EPC which accepted product-by-process claims. The EPO will only accept a claim to a product defined in terms of its process of manufacture when the product is new in the sense of being different from any existing product in the state of the art but the difference cannot be described in chemical or physical terms: "This may well be the only way to define certain natural products or macromolecular materials of unidentified or complex composition which have not yet been defined structurally."
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Francome -v- Mirror Group Newspapers Ltd [1984] 1 WLR 892
1984
CA
Sir John Donaldson MR
Intellectual Property, Media
The defendant had acquired illegal tapes of telephone conversations which it said implicated the plaintiff. He sought to restrain publication of the material pending forthcoming discliplinary charges at the Jockey Club. Held: The court had to find a balance of justice. The court spoke of the media and the public interest.
Sir John Donaldson MR said: "The media, to use a term which comprises not only the newspapers, but also television and radio, are an essential foundation of any democracy. In exposing crime, anti-social behaviour and hypocrisy, and in campaigning for reform and propagating the views of minorities, they perform an invaluable function. However, they are peculiarly vulnerable to the error of confusing the public interest with their own interest. Usually these interests march hand in hand, but not always. In the instant case, pending a trial, it is impossible to see what public interest would be served by publishing the contents of the tape which would not equally be served by giving them to the police or to the Jockey Club. Any wider publication could only serve the interests of the Daily Mirror."
The public interest may better be served by passing information to the police than publishing it. If it turns out that the suspicions are without foundation, the confidence can then still be protected.
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Wham-O Manufacturing Co -v- Lincoln Industries Ltd [1985] RPC 127; [1984] 1 NZLR 641
1984

Davison CJ
Intellectual Property, Commonwealth
(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 copyright protection."
Davison CJ refered to dictionary definitions of sculpture and said: "'In the New Encyclopaedia Britannica, vol. 16, p.421 there appears an article on 'Art of sculpture'. The following passages are of some interest:
'Sculpture is not a fixed term that applies to a permanently circumscribed category of objects or sets of activities. It is, rather, the name of an art that grows and changes and is continually extending the range of its activities and evolving new kinds of objects. The scope of the term is much wider in the second half of the 20th century than it was only two or three decades ago, and in the present fluid state of the visual arts, nobody can predict what its future extensions are likely to be.
Certain features, which in previous centuries were considered essential to the art of sculpture, are not present in a great deal of modern sculpture and can no longer form part of its definition. One of the most important of these is representation. Before the 20th century, sculpture was considered a representational art; but its scope has now been extended to include non-representational forms. It has long been accepted that the forms of such functional three-dimensional objects as furniture, props and buildings may be expressive and beautiful without being in any way representational, but it is only in the 20th century that non-functional, non-representational, three-dimensional works of art have been produced.
. . 20th century sculpture is not confined to the two traditional forming processes of carving and modelling or to such traditional natural materials as stone, metal, wood, ivory, bone and clay. Because present-day sculptors use any materials and methods of manufacture that will serve their purposes, the art of sculpture can no longer be identified with any special materials or techniques. Through all of these changes there is probably only one thing that has remained constant in the art of sculpture, and it is this that emerges as the central and abiding concern of sculptors:
The art of sculpture is the branch of the visual arts that is especially concerned with the creation of expressive form in three dimensions.
. . Furthermore it appears to be implicit in the definitions of sculpture to which we have already referred and from the article in the New Encyclopaedia Britannica particularly the passage reading: "The art of sculpture is the branch of the visual arts that is especially concerned with the creation of expressive form in three dimensions" that sculpture should in some way express in three-dimensional form an idea of the sculptor. It seems to us inappropriate to regard utilitarian objects such as plastic flying discs, manufactured as toys by an injection moulding process, as items of sculpture for the purpose of the Copyright Act. They lack any expressive form of the creator and any idea which the creator seeks to convey."
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Sport International Bussum BV -v- Inter-Footwear Ltd [1984] 1 WLR 776
2 Jan 1984
HL
Lord Templeman
Contract, Intellectual Property, Equity
A contractual licence was granted to use names and trademarks for sports shoes. An earlier action between the parties had been stayed on the terms scheduled to a Tomlin order, which provided for Inter-Footwear to pay a sum in instalments and to have a licence (partly exclusive and partly non-exclusive) to use the names and marks. If any instalment was not paid on the due date, the whole unpaid balance became due at once and the licensor could determine the licence. There was a delay in payment of the second instalment and the licensor terminated the licence. Held: Relief was not available against the forfeiture of a mere contractual licences. As to the discussion of proprietoty or possessory right in Scaptrade: "Mr Wilson submitted that in the present case the licences to use the trade marks and names created proprietary and possessory rights in intellectual property. He admits, however, that so to hold would be to extend the boundaries of the authorities dealing with relief against forfeiture. I do not believe that the present is a suitable case in which to define the boundaries of the equitable doctrine of relief against forfeiture. It is sufficient that the appellants cannot bring themselves within the recognised boundaries and cannot establish an arguable case for the intervention of equity. The recognised boundaries do not include mere contractual licences and I can see no reason for the intervention of equity."
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In Re American Greetings Corporation's Application [1984] 1 WLR 189
26 Jan 1984
HL
Lord Diplock, Lord Fraser of Tullybelton, Lord Scarman, Lord Bridge of Harwich and Lord Brightman
Intellectual Property
The applicant owned an American Trade Mark in the name 'Holly Hobbie". They sought to register the same mark here. Objection was made that the applicant intended to license the use of the mark to others, rather than use it itself, and would this be trafficking in the mark. Held: The appeal against refusal of registration failed. The intended trade would not seek to identify the mark with its owner, but rather to make money from mere ownership of the mark by licensing its use to third parties unconnected with the applicant. This would be an abuse of the trade mark system. The mere attempt to seek quality control over the goods was not enough to remove the suspicion of trafficking.
Trade Marks Act 1938 28(6)
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Merlet and Another -v- Mothercare Public Ltd [1986] RPC 115
13 Apr 1984
ChD
Walton J
Intellectual Property
The plaintiff claimed copyright infringement by the defendant in having copied her 'raincosy', a baby's cape. Held: The claim failed. The object did not count as a sculpture so as to receive protection.

 
Hydrotherm Geratebau gmbh -v- Compact del Dott Ing Mario andreoli & c Sas [1984] ECR 2999; C-170/83; R-67/67; [1984] EUECJ R-67/67
12 Jul 1984
ECJ

European, Intellectual Property, Commercial
Europa In competition law, the term ' undertaking ' must be understood as designating an economic unit for the purposes of the subject-matter of the agreement in question even if in law that economic unit consists of several persons, natural or legal. Regulation nr 67/67 of the commission on the application of article 85 (3) of the treaty to categories of exclusive dealing agreements must be applied even if several legally independent undertakings participate in the agreement as one contracting party provided that those undertakings constitute an economic unit for the purposes of the agreement. In those circumstances competition between the persons participating together, as a single party, in the agreement in question is impossible.
Regulation no 67/67 is applicable where the obligations entered into cover not only a defined area of the common market but also countries outside the community.
Article 3 (b) (1) of regulation no 67/67 must be interpreted as excluding an agreement from block exemption only if it is clear from the actual terms of the agreement or from the conduct of the parties that they intend to use, or are in fact using, an industrial property right in such a way as to prevent or impede, with the aid of that right, parallel imports into the territory covered by the exclusive dealership. The fact that an agreement does not contain any provision to prevent abuse of an industrial property right is not in itself a sufficient reason for excluding that agreement from the application of regulation no 67/67.
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