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These cases are from the lawindexpro database. They are now being transferred to the swarb.co.uk website in a better form. As a case is published there, an entry here will link to it. The swarb.co.uk site includes many later cases.  














Intellectual Property - From: 1993 To: 1993

This page lists 15 cases, and was prepared on 08 August 2015.

 
Sears Plc -v- Sears Roebuck & Co and others [1993] RPC 385
1993

Lindsay J
Intellectual Property, Litigation Practice
The court granted an Order against the plaintiff requiring it not to proceed with its case before the Trade Mark Registry until the determination of their High Court action. Lindsay J said: "the court should look to the two matters broadly and ask whether the matters are substantially the same."
1 Citers


 
Pete Waterman Ltd -v- CBS UK Ltd [1993] EMLR 27
1993
ChD
Sir Nicolas Browne-Wilkinson VC
Intellectual Property
The plaintiff practised in the pop music industry and claimed to be entitled to the exclusive use in this country of the name or description "The Hit Factory". The defendant proposed a similarly named recording studio in London in a joint venture with a New York company, The Hit Factory Inc, which ran a successful recording studio in New York under that name. He sought an injunction against passing-off. Held. Recording studios worked internationally, and a studio may well be used in a country other than that in which the artists or the producers live. The New York studio had been used by producers and artists from England for many years past. However, the New York company had never had a place of business in the UK, and had rendered all its services outside the UK. The plaintiff had not shown that the name 'The Hit Factory' was distinctive. However he also went on to consider what he called the Crazy Horse issue, on the premise that (a) the plaintiff had established a distinctive goodwill in the name The Hit Factory, but (b) that the Hit Factory Inc also had a trade reputation under that name in this country. The issue was whether the English courts will protect the trade connection with the UK customers of non-UK traders. The problem was particularly acute with service industries. Referring to older cases, he said that the critical questions, until the Crazy Horse case, had always been (a) the use of the name in this country and (b) the presence of customers here. He pointed out that the basis of the Crazy Horse decision, that business activity other than merely advertising was necessary, was not fatal to The Hit Factory Inc, because that company had English customers which placed their business with it and who were invoiced in this country. He expressed the view that the distinction was too narrow. As to Walton's judgement in Athletes' Foot Marketing Associates: "This is a very important passage for three reasons. First, it shows that the importance of the plaintiff showing he has a business here is essentially linked to the presence of customers here. Secondly, it adverts to the possibility that in some cases the relevant area may not be limited by national boundaries." The third reason was that it had been approved in Budweiser. As to Budweiser: "A. As a matter of principle, the existence of a severable English goodwill attached to a place of business in this country is not the basis of a right to complain of passing off in this country. What is necessary is for the plaintiffs to show they have a trade connection here which will normally consist of customers forming part of their goodwill, wherever that goodwill is situate, which goodwill is being invaded by the acts of the defendant in this country;
B. The approach which I have set out at A above is not open to me as there is binding authority to the effect that the basis of plaintiffs' claim must be a goodwill locally situate in England; but
C. The presence of customers in this country is sufficient to constitute the carrying on of business here whether or not there is otherwise a place of business here and whether or not the services are provided here. Once it is found that there are customers, it is open to find that there is a business here to which the local goodwill is attached;
D. To the extent that the Crazy Horse case is authority to the contrary, I prefer not to follow it."
On that basis he held that the New York company would have been entitled to protect its name against third parties here because it had always had a significant number of customers in this country.
1 Citers


 
STEP -v- Emson Europe Ltd [1993] RPC 513
1993
CA
Hoffmann LJ
Intellectual Property
Hoffmann LJ said: "The well known principle that patent claims are given a purposive construction does not mean that an integer can be treated as struck out if it does not appear to make any difference to the inventive concept. It may have some other purpose buried in the prior art and even if this is not discernible, the patentee may have had some reason of his own for introducing it."
1 Citers


 
MacMillan -v- Thomas Reed [1993] FSR 455
1993
PatCC
Mummery J
Intellectual Property
(Patents County Court) Both parties published almanacs for yachtsmen. The plaintiff claimed copyright infringement and an injunction. Held: An injunction was granted. Enough had been done by the plaintiff to show that in creating the work at issue, it had relied upon work labour and skills invested in an earlier version of the work. There was no issue for trial as to originality, and an injunction was appropriate.
1 Citers


 
Raytheon's Application [1993] RPC 427
1993


Intellectual Property
A patent application was made for a system for the automatic recognition of ships by comparison of a digital image with data stored in a computer database. Held: The court gave a wider meaning to the phrase 'mental act'
Patents Act 1977 1
1 Citers


 
Mentor Corporation -v- Hollister Incorporated [1993] RPC 7
1993
CA
Lloyd LJ
Intellectual Property

Patents Act 1977 72(1)©
1 Cites

1 Citers


 
Rediffusion -v- Singer Link [1993] FSR 369
1993
CA
Aldous LJ
Intellectual Property, Costs
In Patent infringement proceedings it may be proper for a court to assess costs on an issue by issue basis because of the "large number of issues and the very extensive costs that can be incurred."
1 Citers



 
 John Richardson Computers -v- Flanders; ChD 1993 - [1993] FSR 497; (1993) 26 IPR 367
 
Gaskell & Chambers Ltd -v- Measure Master Ltd [1993] RPC 76
1993

Aldous LJ
Intellectual Property
The court considered how it should compare the design as registered and that of which complaint was made of copying: "The decision whether the registered design and the designs of the alleged infringements are substantially different is for the court and cannot be delegated to the opinions of the witnesses. It must be decided on a comparison of the features which appeal to, and are judged by, the eye. To do this, the court must adopt the mantle of a customer who is interested in the design of the articles in question as it is the eye of such an interested person, the interested addressee, which is relevant. To adopt that mantle it is often helpful to look at what was available before the priority date of the registered design as the eye of the interested addressee could be drawn to details if the design of the registered design only differs from the prior art by such details. However where a design differs radically from previous designs then the interested addressee's eye would be more likely to concentrate on and he would be more likely to remember the general form of the new design rather than the details . . It is settled law that the comparison must be made between the registered design and the alleged infringement side by side and also upon an assumption of "now and later", namely upon the assumption that the two designs are compared side by side and thereafter the interested addressee goes away and comes back later to the alleged infringements. It is in that way that the court can conclude which features of the design would in reality appeal to and be noticed by the eye and then decide whether the designs are or are not substantially different."
Registered Designs Act 1949 1 7
1 Citers


 
Chiron Corporation -v- Organon Teknika (No 2) [1993] FSR 567
1993
CA

Intellectual Property, Contract, Jurisdiction
Section 44 could be used in a patent contract dispute even though the patent at issue was governed by the law of a foreign state which would not itself have applied that section.
Patents Act 1977 44
1 Citers


 
Joy -v- Federation Against Copyright Theft Ind Summary, 15 February 1993
15 Feb 1993
QBD

Intellectual Property
The PACE codes of practice apply to FACT investigators who were acting in the investigation of a copyright breach wher and others criminal offence was suspected. Although they were in effect private individuals and fulfilled not even a quasi-statutory duty, they still fulfilled a duty, and had to obey the codes of practice.
Police and Criminal Evidence Act 1984 67(9)

 
Ciba Geigy Plc -v- Parke Davis & Co Ltd Times, 06 April 1993
6 Apr 1993
ChD

Intellectual Property
Injunction banning advertising was discharged as plaintiff in good position.

 
Taittinger and Others -v- Allbev Ltd and Another Independent, 30 June 1993; Times, 28 June 1993; [1993] FSR 641
30 Jun 1993
CA
Peter Gibson LJ
Intellectual Property, Litigation Practice
An injunction was granted to restrain the labelling of a sparkling fruit (Elderflower Champagne) non-alcoholic drink made in Surrey to include the word 'champagne'. The trial judge had held that all the necessary ingredients for a successful passing off action had been made out save for proof of likelihood of substantial damage to the plaintiff. Held: the plaintiff argued that if the defendant continued to call its product "Elderflower Champagne", ". . . the effect would be to demolish the distinctiveness the word champagne, and that would inevitably damage the goodwill of the champagne houses." Peter Gibson LJ: By parity of reasoning it seems to me no less obvious that erosion of the distinctiveness of the name champagne in this country is a form of damage to the goodwill of the business of the champagne houses." and as to CIVC, he said that Sir Robin Cooke "thought the [Champagne] case exemplified the principle that a tendency to impair distinctiveness might lead to an inference of damage to goodwill . . ."
"Like the judge, I do not think the defendants' product would reduce the first plaintiffs' sales in any significant and direct way. But that is not, as it seems to me, the end of the matter. The first plaintiffs' reputation and goodwill in the description Champagne derive not only from the quality of their wine and its glamorous associations, but also from the very singularity and exclusiveness of the description, the absence of any qualifying epithets and imitative descriptions. Any product which is not Champagne but is allowed to describe itself as such must inevitably, in my view, erode the singularity and exclusiveness of the description Champagne and so cause the first plaintiffs damage of an insidious but serious kind. The amount of damage which the defendants' product would cause would of course depend on the size of the defendants' operation. That is not negligible now, and it could become much bigger. But I cannot see, despite the defendants' argument to the contrary, any rational basis upon which, if the defendants' product were allowed to be marketed under its present description, any other fruit cordial diluted with carbonated water could not be similarly marketed so as to incorporate the description champagne. The damage to the first plaintiffs would then be incalculable but severe."
1 Citers


 
Phil Collins and Patricia Im- und Export -v- Imtrat and EMI Electrola Ind Summary, 06 December 1993; Times, 19 November 1993; C-92/92; [1993] EUECJ C-92/92
20 Oct 1993
ECJ

Intellectual Property, European
Member states must not apply rules differently to nationals of other states. Non-nationals have copyright protection under article 7 of the Treaty
[ Europa ] - [ Bailii ]
 
Re Marley (Uk) Ltd Ind Summary, 22 November 1993
22 Nov 1993
CA

Intellectual Property
Where claimant files dual claims in UK and Europe, UK Patent may be revoked.
Patents Act 1977 73(2)

 
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