Kastner v Rizla Ltd and Another: CA 23 Jun 1995

Patent specification construction to be purposive- following ‘Catnic’.

Citations:

Times 23-Jun-1995, [1995] RPC 585

Statutes:

Patents Act 1977, European Patents Convention 1973

Jurisdiction:

England and Wales

Cited by:

CitedRocky Mountain Traders Limited and Hewlett Packard Gmbh; Westcoast Limited and Fellowes Manufacturing (UK) Limited CA 20-Dec-2000
The claimant appealed an order finding its patents for mechanisms for labelling CDs invalid for obviousness.
Held: the judge had applied the correct tests for obviousness, and the view taken by the judge of the expert evidence was not open to . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 21 January 2023; Ref: scu.82677

Regeneron Pharmaceuticals, Inc v Kymab Ltd and Another: CA 28 Mar 2018

The claimant R now appealed from a finding that its two patents involving transgenic mice were invalid. The ‘in situ replacement’ failed to comply.
Held: The appeal succeeded.

Judges:

Lord Justice Kitchin, LordJustice Floyd, Lady Justice Arden

Citations:

[2018] EWCA Civ 671

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal fromRegeneron Pharmaceuticals Inc v Kymab Ltd and Another PatC 1-Feb-2016
The parties disputed the validity of K’s patented mouse. R said that the specification was insufficient to allow reproduction, and that it was therefore incomplete.
Held: The specification was insufficient, and the patents invalid. The issue . .

Cited by:

Appeal fromRegeneron Pharmaceuticals Inc v Kymab Ltd SC 24-Jun-2020
SC Kymab alleged that the relevant patents are invalid for insufficiency because they did not enable the ordinary skilled person to work the claimed invention across the breadth of the claims. The patents were . .
Main CA JudgmentRegeneron Pharmaceuticals, Inc v Kymab Ltd and Another CA 23-May-2018
Leave to appeal to Supreme Court refused. Other post judgment issues – form of order. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Animals

Updated: 31 December 2022; Ref: scu.608354

Central Research Laboratories Ltd v Intelligent Clothing Ltd and Alan Magill (Patent): IPO 29 Sep 2000

IPO In his decision dated 24 July 2000 the HO gave Mr Magill 6 weeks to indicate whether or not he wished to resist an order to assign the patent application to Intelligent Clothing Ltd.. In the absence of a response Mr Magill was ordered to assign the application within 6 weeks. The order does not extend to the US patent over which the HO had no jurisdiction.

Citations:

[2000] UKIntelP o36200

Links:

Bailii

Statutes:

Patents Act 1977 12

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.453937

Lima (Trade Mark: Opposition): IPO 6 Dec 2018

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations

Citations:

[2018] UKIntelP o78218

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.631776

The Cellular Clothing Co Ltd v Maxton and Murray: HL 27 Apr 1899

An action of interdict was raised by the makers of a certain fabric which they had advertised and sold for some years under the name of ‘cellular cloth,’ for the purpose of preventing a rival trader from using the term ‘cellular’ to designate goods not made and sold by the pursuers.
The House of Lords (aff. the judgment of the First Division) refused to grant interdict, in respect that the pursuers had failed to prove (1) that the defenders had, otherwise than by the use of the term ‘cellular,’ done anything to induce the belief that the goods offered by them were goods of the pursuers’ manufacture, or (2) that the term ‘cellular’ had acquired in the trade any technical or secondary meaning different from its ordinary meaning as a term descriptive of the goods, so as to entitle the pursuers to claim its exclusive use.

Judges:

Lord Chancellor (Halsbury), and Lords Watson, Shand, and Davey

Citations:

[1899] UKHL 605, 36 SLR 605

Links:

Bailii

Jurisdiction:

Scotland

Intellectual Property

Updated: 20 December 2022; Ref: scu.631832

Matchfit Conditioning (Trade Mark: Opposition): IPO 7 Dec 2018

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Revocation / Proof of Use – Variant forms of marks – use with matter added or subtracted
Revocation / Proof of Use – Partial revocation – arriving at a fair description of goods / services

Citations:

[2018] UKIntelP o78418

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.631778

Daletech Electronics Limited v Jemella Limited (Patent): IPO 27 Nov 2014

The patent relates to an electric hair iron which overcomes the problem of condensation associated with operating an iron at low temperatures, the iron having a control circuit which prevents the supply of power to the heating elements when a temperature sensor detects that the temperature is below a minimum threshold. The claimant was commissioned by the respondent to carry out a variety of tasks relating to the design and testing of electronic circuits within the respondent’s hair irons, including work related to the technology of the patent. The claimant argued that all the development work leading to the invention was theirs alone and that there was no written agreement between the parties to assign any rights in the inventions to the respondent. They also claimed that one of the named inventors and a former employee of the respondent played no part in devising the invention.
The hearing officer found that the former employee had played a part in devising the invention and that both parties were entitled to the patent. However, although there was no written agreement in place between the parties concerning intellectual property rights in the work carried out by the claimant on behalf of the respondent, the general working arrangement of the two companies and their actions leading up to and subsequent to the filing of the patent application, was consistent with both sides assuming that the respondent alone would be entitled to the patent. The hearing officer dismissed the claim and awarded costs to the respondent.

Citations:

[2014] UKIntelP o50114

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.543157

Jeffrey Johnson Clawson (Patent): IPO 27 Jan 2015

The invention is concerned with a computer-based system and method for assisting an emergency dispatcher in responding to emergency calls. A diagnostic tool used by the dispatcher collects symptom information systematically over the telephone, particularly to identify a pandemic illness. A message with symptom information is then sent to the responder, allowing them to treat the patient appropriately and take any necessary precautions to reduce the spread of the illness. The invention may also receive geographical location information and analyse it to identify patterns and relationships within the data received to track the spread of a pandemic illness.
The hearing officer followed the steps set out in Aerotel in order to determine whether the invention was excluded from patentability. He concluded that the contribution made by the invention lay not in reducing the spread of a pandemic illness but in an improved way of obtaining and analysing medical information from a caller, by using a diagnostic tool to structure diagnostic questions in relation to existing medical understanding of symptoms and pandemic illnesses. This ensured that a dispatcher can obtain the required information and store it consistently for passing to the responder.
He concluded that the collating and ordering of medical data in a way which is different from prior art systems, and then sending (in a conventional technical way) a message containing that data, did not offer a technical effect on a process outside the computer. He considered that the first ATandT/CVON signpost did not point to patentability and distinguished this case on its facts from PKTWO. The contribution was also held to be a business method, since it was concerned with administrating, codifying, organising and then outputting the diagnostic information. An argument that section 4A indicated that the invention did not fall within excluded matter was also rejected.

Citations:

[2015] UKIntelP o04215

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.543126

Michael Torr Todman (Patent): IPO 14 Aug 2014

Application number GB0623079.1 was filed on 20 November 2006 in the name of Michael Torr Todman. On 22 November 2010, the IPO sent the examination report under s.18(3) of the Act to Mr Todman. Within that report, the r.30(2)(b) compliance date by which to bring the case in to order for grant was stipulated as 22 November 2011. Mr Todman replied to that report on 24 March 2011. The next official action was a letter issued on 1 August 2011 followed by an official letter issued on 16 November 2011, the latter explained that as the application had not been put in order for grant on 22 November 2011, it had been treated as having been refused.

Mr Todman rang the office on 6 December 2012 and explained that he did not receive the official letters of 1 August 2011 and 16 November 2011, but it was explained to him that it was now too late to apply for reinstatement under Section 20(A). Mr Todman wrote to the office saying that he can only conclude that some error occurred in the IPO and requested reinstatement of the application. When this was initially refused, Mr Todman requested to be heard in the matter.
As Mr Todman could not point to a specific failure within the office, the HO found that there was no evidence of any irregularity within the IPO under the terms of r.107. However on the evidence, he found that on the balance of probabilities Mr Todman did not receive the official letters of 1 August 2011 and 16 November 2011 and as such the failure to file a response to the official letter of 1 August 2011 was wholly attributable to a failure in the communication service and the failure to put the application in order for grant by the compliance date was in the very least mainly attributable to a failure in the communication service. Therefore the request for reinstatement succeeded under the provisions of rule 111.

Citations:

[2014] UKIntelP o36514

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.543143

Darryl Neudorf v Network Expressions: 1999

(Supreme Court of British Columbia) The court discussed the test for joint authorship after reviewing authorities in Canada, the US and England and said: ‘In the result I find that the test for joint authorship that should be applied to the facts in the instant case is as follows:
i) Did the plaintiff contribute significant original expression to the songs? If yes,
ii) Did each of the plaintiff and Ms McLachlan intend that their contributions be merged into a unitary whole? If yes,
iii) Did each of the plaintiff and Ms McLachlan intend the other to be a joint author of the song?’ and ‘the creation of the intent to co-author requirement in Childress v. Taylor happened despite the statutory definition of joint authorship . . . not because of it. The court looked beyond the language of the section and moved on to review policy considerations in the application of the section. In particular, the court could not accept that Congress intended to extend joint authorship to, for example, editors and researchers. It was for this reason that the court created the intent to co-author requirement.’

Judges:

Cohen J

Citations:

[1999] RPC 935

Jurisdiction:

Canada

Cited by:

Still Good LawHodgens v Beckingham CA 19-Feb-2003
The defendant appealed a finding of infringement in a music copyright work, ‘Young at Heart’, based on a claim of joint authorship. The claimant had delayed his claim for many years, but now sought only rights to future royalties.
Held: The . .
Lists of cited by and citing cases may be incomplete.

Commonwealth, Intellectual Property

Updated: 09 December 2022; Ref: scu.266723

The Football Association Premier League Ltd v British Telecommunications Plc and Others: ChD 18 Jul 2018

The court continued a time limited order requiring the defendant Internet Service Providers to inhibit live streaming of Premier League football through their services.

Judges:

Arnold J

Citations:

[2018] EWHC 1828 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 07 December 2022; Ref: scu.619893

Redrow Homes Ltd v Bett Brothers Plc: IHCS 2 May 1997

A pursuer in an action for breach of copyright must take either an account of profits or additional damages but not both.

Citations:

Times 02-May-1997

Statutes:

Copyright Designs and Patents Act 1988 96(2) 97

Jurisdiction:

Scotland

Cited by:

Appeal fromRedrow Homes Ltd and others v Bett Brothers Plc and others HL 22-Jan-1998
Additional damages under section 97 of the 1988 Act, can only be awarded with compensatory damages, not with a claim for damages under section 96. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Damages

Updated: 07 December 2022; Ref: scu.85931

Regeneron Pharmaceuticals Inc v Kymab Ltd and Another: PatC 1 Feb 2016

The parties disputed the validity of K’s patented mouse. R said that the specification was insufficient to allow reproduction, and that it was therefore incomplete.
Held: The specification was insufficient, and the patents invalid. The issue of construction which divided the parties is the meaning of ‘in situ replacement’
Henry Carr J considered the rival arguments on construction before concluding: ‘In my judgment, in situ replacement means replacing ‘in the position of’. The phrase is apt to describe a positional replacement and this is how it is used in context. The human sequences are to be inserted in the original position of the mouse segments juxtaposed with the mouse constant regions. The skilled person would appreciate that the patentee is using this language to distinguish targeted replacement from random insertion into the genome. This includes the case where the relevant murine sequence is deleted, and also the case where it is moved to a different location and inactivated.
The word ‘replacement’ is used in the specification to describe both deletion and displacement/inactivation. The invention is concerned with the use of LTVECs and the MOA assay to enable the targeted insertion and detection of human variable V, D and J gene segments, in place of mouse variable V, D and J gene segments, whilst retaining the mouse constant segments. Given that inactivation was a well-known alternative to deletion at the priority date, I do not consider that it would make technical sense for the patentee to have excluded embodiments where the murine sequence had been moved to a different location and rendered inactive.’

Judges:

Henry Carr J

Citations:

[2016] EWHC 87 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Appeal fromRegeneron Pharmaceuticals, Inc v Kymab Ltd and Another CA 28-Mar-2018
The claimant R now appealed from a finding that its two patents involving transgenic mice were invalid. The ‘in situ replacement’ failed to comply.
Held: The appeal succeeded. . .
At PatCRegeneron Pharmaceuticals, Inc v Kymab Ltd and Another CA 23-May-2018
Leave to appeal to Supreme Court refused. Other post judgment issues – form of order. . .
At PatCRegeneron Pharmaceuticals Inc v Kymab Ltd SC 24-Jun-2020
SC Kymab alleged that the relevant patents are invalid for insufficiency because they did not enable the ordinary skilled person to work the claimed invention across the breadth of the claims. The patents were . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 December 2022; Ref: scu.566275

Ross v Playboy Enterprises International, Inc: IPEC 13 Jun 2016

Claim for declarations and related relief arising out of a dispute between the parties over the registration of the domain name

Judges:

Miss Amanda Michaels sitting as a Deputy Enterprise Judge

Citations:

[2016] EWHC 1379 (IPEC)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 December 2022; Ref: scu.565568

Global Flood Defence Systems Ltd and Another v Van Den Noort Innovations Bv and Others: IPEC 29 Jan 2015

Application by the claimants for summary judgment in relation to their allegation against the first and second defendants of unjustified threats of proceedings for patent infringement.

Judges:

Hacon HHJ

Citations:

[2015] EWHC 153 (IPEC)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 December 2022; Ref: scu.541971

Yoo Holdings v OHMI – Eckes-Granini Group (Yoo): ECFI 4 Jun 2015

ECJ Judgment – Community trade mark – Opposition proceedings – Application for Community word mark YOO – Earlier national and international word marks YO – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009

Judges:

S Papasavvas, P

Citations:

T-562/14, [2015] EUECJ T-562/14, ECLI:EU:T:2015:363

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 8(1)(b)

Jurisdiction:

European

Intellectual Property

Updated: 27 November 2022; Ref: scu.547710

Rank Film Distributors v Video Information Centre: HL 1 Mar 1981

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.’

Judges:

Lord Wilberforce, Templeman L

Citations:

[1982] AC 380, [1981] 2 All ER 76, [1981] 2 WLR 668

Jurisdiction:

England and Wales

Citing:

Appeal FromRank Film Distributors v Video Information Centre CA 1980
The plaintiff film companies accused the defendants of pirating their films. They obtained Anton Piller orders which required the defendants to permit the plaintiffs to enter their premises to inspect and remove any unauthorised films, and three . .
CitedRasu Maritima SA v Perusahaan (the Pertamina) CA 1978
Section 45 of the 1925 Act gives the court a very wide discretion to grant an injunction. . .
CitedAnton Piller v Manufacturing Processes Ltd CA 8-Dec-1975
Civil Search Orders possible
The plaintiff manufactured and supplied through the defendants, its English agents, computer components. It had reason to suspect that the defendant was disclosing its trade secrets to competitors. The court considered the effect of a civil search . .

Cited by:

CitedHolder v The Law Society Admn 26-Jul-2005
The applicant challenged the independence of the respondent’s disciplinary tribunal.
Held: The claim failed: ‘the nature of the Tribunal is entirely adequately independent and impartial for the purposes for which it is constituted. The . .
CitedC Plc and W v P and Secretary of State for the Home Office and the Attorney General ChD 26-May-2006
The claimant sought damages from the first defendant for breach of copyright. An ex parte search order had been executed, with the defendant asserting his privilege against self-incrimination. As computer disks were examined, potentially unlawful . .
CitedC Plc v P and Attorney General Intervening CA 22-May-2007
The respondent had been subject to a civil search, which revealed the existence of obscene images of children on his computer. He appealed against refusal of an order that the evidence should not be passed to the police as evidence. He said that the . .
CitedMohamed, Regina (on the Application of) v Secretary of State for Foreign and Commonwealth Affairs (No 1) Admn 21-Aug-2008
The claimant had been detained by the US in Guantanamo Bay suspected of terrorist involvement. He sought to support his defence documents from the respondent which showed that the evidence to be relied on in the US courts had been obtained by . .
CitedPhillips v Mulcaire SC 24-May-2012
The claimant worked as personal assistant to a well known public relations company. She alleged that the defendant had intercepted telephone message given by and left for her. The court was asked first as to whether the information amounted to . .
Lists of cited by and citing cases may be incomplete.

Litigation Practice, Intellectual Property

Updated: 19 November 2022; Ref: scu.230905

Murray v Yorkshire Food Managers Ltd and Another: CA 18 Dec 1997

Confidential information was jointly owned but in the absence of a clear contractual limitation, it could be used by some parties to the agreement without including the others.

Citations:

Times 18-Dec-1997, Gazette 21-Jan-1998, Gazette 28-Jan-1998

Jurisdiction:

England and Wales

Intellectual Property

Updated: 13 November 2022; Ref: scu.84137

Environmental Recycling Technologies Plc v Upcycle Holdings Ltd: PCC 5 Feb 2013

Challenge to validity o a patent.

Citations:

[2013] EWPCC 4

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See AlsoEnvironmental Recycling Technologies PatC 2012
Warren J discussed the importance of the financial health of the parties to a case when considering a transfer to the Chancery Division, and referring to Comic Enterprises said: ‘Ms. Lawrence submits that the financial position of the parties is . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 13 November 2022; Ref: scu.470762

Secretary of State for Health and Others v Servier Laboratories Ltd and Others: ChD 12 Oct 2012

Application by defendant for stay of proceedings – parallel action in Europe

Judges:

Henderson J

Citations:

[2012] EWHC 2761 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property, Litigation Practice

Updated: 13 November 2022; Ref: scu.470136

Carl Franz Adolf Otto Ingenohl v Wing On and Company (Shanghai) Ltd: PC 30 May 1927

Shanghai Action to restrain the respondents from passing off cigars not manufactured by the appellants but manufactured by the respondents to look as if they did.

Judges:

Viscount Haldane

Citations:

[1927] UKPC 54

Links:

Bailii

Jurisdiction:

Commonwealth

Cited by:

CitedStarbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 13 November 2022; Ref: scu.469585

Halliburton Energy Services, Inc, Schetky, Johnson, Hackworth, Bixenman and Besselink (Patent): IPO 5 Nov 2012

IPO Application under section 13(1) was filed by Halliburton Energy Services, Inc. to mention Peter Besselink as a joint inventor. L McDonald Schetky, Craig D Johnson, Matthew R Hackworth and Patrick W Bixenman were invited to file a counter-statement in relation to the proceedings but failed to do so. As such, the comptroller considered the application to be unopposed and found that Peter Besselink should be mentioned as a joint inventor in the published patent applications and granted patents for the inventions. The comptroller also directed that an addendum slip be prepared mentioning Peter Besselink as a joint inventor for the published patent applications and granted patents for the inventions.

Citations:

[2012] UKIntelP o43512, O/435/12

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 November 2022; Ref: scu.466497

Forensic Pathways Limited, Richard Maurice Leary and Chang-Tsun Li (Patent): IPO 1 Nov 2012

As a result of an uncontested application filed under section 13(3) by Forensic Pathways Limited, the comptroller found that Richard Maurice Leary should not have been mentioned as a joint inventor in the published patent application or granted patent for this invention. The decision serves as a certificate to this effect. The comptroller also directed that an addendum slip be prepared for the published patent application and granted patent stating that Richard Maurice Leary should not have been mentioned as a joint inventor.

Citations:

[2012] UKIntelP o43312

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 November 2022; Ref: scu.466495

Linstol UK Limited v Huang (Patent): IPO 21 Nov 2012

In an earlier interim decision relating to an application for revocation, the claims of the patent had been found to be invalid but the patentee was allowed the opportunity to file amendments under s.75 aimed at rectifying the defects found. A request to amend was subsequently filed which was opposed by the claimant for revocation. The patentee (a Taiwan resident) was directed to provide security for costs, the order specifying different amounts of security depending on whether the action proceeded to a hearing or was to be decided on the papers. Following a case management conference at which it was agreed that there should be an oral hearing, the patentee failed to provide the required security for costs.
The claimant submitted that in accordance with s.107(4) of the Act, the patentee should be taken to have abandoned his case. The Hearing Officer considered that although this was a matter of discretion, where there is failure to provide security for costs, abandonment should be regarded as the usually expected outcome in the absence of good reasons to the contrary. The patentee’s behaviour, in going away on a business trip without leaving any means to be contacted or any instructions for his representative in the UK, left little room for doubt that he had lost all interest in the proceedings. In these circumstances it was appropriate to exercise discretion to treat the application for amendment as abandoned. Since the unamended patent had previously been found to be invalid it followed that it should be revoked under s. 72(1).

Judges:

Mr A C Howard

Citations:

[2012] UKIntelP o46012

Links:

Bailii

Statutes:

Patents Act 1977 72(1) 75 107(4)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 November 2022; Ref: scu.466500

Winther Browne Company Limited and Valor Limited (Patent): IPO 1 Nov 2012

IPO The Hearing Officer found the patent to be invalid during the course of revocation action. In order to meet the issues raised, Valor Limited applied to amend the patent under s75. In Decision BL/O/121/12, the Hearing Officer concluded that the proposed amendments were allowable, and so in the present decision the Hearing Officer allowed the amendments.
Valor Limited requested a certificate of validity. The Hearing Officer certified that the validity of patent GB2402468 as amended had been contested on the grounds of added matter and lack of novelty, inventive step, clarity and industrial applicability, and the patent as amended had been found to be valid.

Judges:

Dr J E Porter

Citations:

[2012] UKIntelP o43412, O/434/12, GB 2402468

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 November 2022; Ref: scu.466503

Caproni v Alberti: 1891

The defendant copied three casts made by the plaintiff of various arrangements of fruit and leaves. His defence was that the 1814 Act did not refer to casts of flowers, leaves or fruit and that such casts did not fall within the words ‘any subject being matter of invention in sculpture’. It was not suggested that the casts which were copied were not otherwise works of sculpture.
Held: The judge rejected this argument. The cast had been produced by carving an artistic reproduction of the fruit and leaves.

Citations:

(1891) 65 LT 785

Statutes:

Sculpture Copyright Act 1814

Jurisdiction:

England and Wales

Cited by:

CitedLucasfilm Ltd and Others v Ainsworth and Another CA 16-Dec-2009
The claimants had made several Star Wars films for which the defendants had designed various props items. The parties disputed ownership of the rights in the designs, and in articular of a stormtrooper helmet. The issues came down to whether the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 09 November 2022; Ref: scu.384436

Robertson v Thomson Corporation: 12 Oct 2006

CSC (Supreme Court of Canada) Intellectual property – Copyright – Infringement – Right to reproduce work – Newspaper publishers reproducing in databases and CD-ROMs articles by freelance and staff writers published in newspapers – Freelance author bringing class action against newspaper publishers for copyright infringement – Whether newspaper publishers entitled to reproduce in databases and CD-ROMs freelance articles acquired for publication in newspapers and staff written articles – Copyright Act, R.S.C. 1985, c. C 42, s. 3(1).
Intellectual property – Copyright – Licences – Whether licence from freelance author granting right to newspaper publishers to republish his or her articles in databases and CD-ROMs must be in writing – Copyright Act, R.S.C. 1985, c. C-42, s. 13.
Civil procedure – Class actions – Class members – Newspaper publishers reproducing in databases and CD-ROMs freelance and staff writers’ articles published in newspapers – Freelance author bringing class action against newspaper publishers for copyright infringement – Whether staff writers should have been certified as members of class.

Judges:

McLachlin C.J. and Bastarache, Binnie, LeBel, Deschamps, Fish, Abella, Charron and Rothstein JJ

Citations:

2006 SCC 43, 353 NR 104, [2006] 2 SCR 363, 2006 SCC 43

Links:

CSC, Canlii (short)

Statutes:

Copyright (Libraries and Archivists) (Copying of Copyright Material) Regulations 1989 (1989 No 1212) 3

Jurisdiction:

Canada

Cited by:

CitedGrisbrook v MGN Ltd and Others ChD 16-Oct-2009
The claimant sought an order committing officers of the defendant company for having failed to obey a court order requiring the defendant to cease infrigement of his copyright in photographs. He operated as a photographer of celebrities selling . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 09 November 2022; Ref: scu.376160

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

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

Judges:

Arnold J

Citations:

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

Links:

Bailii

Statutes:

Council Regulation 207/2009/EC

Jurisdiction:

England and Wales

Citing:

See AlsoStarbucks (Hk) Ltd v British Sky Broadcasting Group Plc and Others CA 13-Sep-2012
. .

Cited by:

At ChDStarbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
At ChDStarbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others CA 15-Nov-2013
The claimant appealed against rejection of its claim for trade mark infrimgement. It had a goodwill in China, and, it claimed among the chinese community in the UK. The claimant’s appeal was dismissed. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 November 2022; Ref: scu.465532

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

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

Judges:

Mr A R Bushell

Citations:

[2012] UKIntelP o37812, GB0911197.2

Links:

Bailii

Statutes:

Patents Act 1977 20(A)

Intellectual Property

Updated: 06 November 2022; Ref: scu.465347

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

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

Citations:

[2012] UKIntelP o34712

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 November 2022; Ref: scu.465351

Fabio Passetti Et Al (Patent): IPO 3 Jul 2012

IPO The application relates to a computer system which implements a computer program for searching and displaying biological information stored in one or more databases by converting the information from the database(s) into a ternary matrix using three separate characters to represent biological information eg 0, 1 and |. The Hearing Officer applied the Aerotel/Macrossan test and decided that the contribution made by the invention fell solely within excluded matter. He also considered the Court of Appeal decision in Symbian and the decisions in ATandT and Cvon and concluded that the contribution did not have a relevant technical effect. The application was refused as no more than a program for a computer and the presentation of information as such.

Judges:

Mr B Micklewright

Citations:

[2012] UKIntelP o26012, GB0920058.5

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 06 November 2022; Ref: scu.465252

Mars UK Limited (Patent): IPO 16 Oct 2007

IPO The application relates to a foodstuff which has specific macronutrient content parameters, the macronutrients in question being protein, fat and carbohydrate, when used in a method of increasing the acceptance and enjoyment of the foodstuff to a cat.
The hearing officer found independent claims 1 and 6 to be lacking in clarity, with it not being possible to precisely determine the scope of the invention. Consequently, the hearing officer was unable to come to a definitive view regarding novelty. The application was refused.

Judges:

Mrs C L Davies

Citations:

[2007] UKIntelP o30407, GB 0329453.5

Links:

Bailii

Statutes:

Patents Act 1977 1(1)(a) 14(5)(b)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 November 2022; Ref: scu.456828

Jager and Polacek v OHIM: ECJ 18 Oct 2012

Appeal – Community trade mark – Opposition – Regulation (EC) No 2868/95 – Rule 18(1) – Legal nature of a communication from OHIM informing a party that an opposition has been found to be admissible – Right to an effective legal remedy

Citations:

[2012] EUECJ C-402/11

Links:

Bailii, Bailii

Jurisdiction:

European

Citing:

OpinionJager and Polacek v OHIM ECJ 5-Jul-2012
ECJ Opinion – Appeals – Community trade mark – Regulation (EC) No 40/94 – Regulation (EC) No 2868/95 – Procedure upon opposition to registration of a Community trade mark – Legal nature of the act adopted at the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 November 2022; Ref: scu.465014

Destra Software Ltd v Comada (Uk) Llp and Others: PCC 11 Jun 2012

The parties disputed property rights in certain computer software. Birss HHJ refused a transfer to the high court and said: ‘However, in fact at the moment we do not know whether this case will be anything like as complicated as it might seem. That will depend on the process of disclosure and rounds of pleadings which are inevitable in a software copyright case. Although it sounds complicated, in fact it is inevitable that copyright cases of this kind have to be looked at this way. They do require more management than other intellectual property cases.’

Judges:

Birss HHJ

Citations:

[2012] EWPCC 39

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited77 Ltd v Ordnance Survey Ltd and Others IPEC 15-Jun-2017
The court heard an application to transfer the case to the Chancery Division.
Held: Given the different levels of resources available to the parties, a transfer was refused. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 November 2022; Ref: scu.464530

Starbucks (Hk) Ltd v British Sky Broadcasting Group Plc and Others: CA 13 Sep 2012

Citations:

[2012] EWCA Civ 1201

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

See AlsoStarbucks (HK) Ltd and Others v British Sky Broadcasting Group Plc and Others ChD 2-Nov-2012
The claimants asserted infringement by the defendants of their registered Community Trade Mark by their announcement of a new TV station ‘NOW TV’. The defendants in turn challenged the validity of the mark.
Held: The court found that a . .
SeeAlsoStarbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others CA 15-Nov-2013
The claimant appealed against rejection of its claim for trade mark infrimgement. It had a goodwill in China, and, it claimed among the chinese community in the UK. The claimant’s appeal was dismissed. . .
See AlsoStarbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 November 2022; Ref: scu.464265

Fisher-Rosemount Systems Inc (Patent): IPEC 23 Mar 2015

The decision concerns whether the invention set out in patent application GB1004051.7 relates to excluded matter. The invention relates generally to process plants and, more particularly, to the scaling of composite shapes in an editor for graphical representations of components and various activities associated with plant configuration, control, maintenance, and simulation. The Hearing Officer found the invention excluded as a program for a computer and the presentation of information.

Citations:

[2015] UKIntelP o11815

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 03 November 2022; Ref: scu.545462

Kevin Hickey (Patent): IPO 7 Jun 2012

The invention concerned a device for showing correct ladder angle, comprising a weighted indicator connected via a hoop to a semi-circular rail, positioned near the top of a symbol ‘A’. The indicator moved along the rail as the ladder incline changed. Correct ladder angle was shown by alignment with a marking within a limb of the ‘A’, and the width of the limbs of the ‘A’ indicated the limits of acceptable ladder angle.
The Hearing Officer considered that the skilled person would have an engineering background and his common general knowledge would include knowledge of a variety of fixed and moveable couplings. The Hearing Officer then considered the prior art ladder inclination indicators, which showed weighted indicators freely mounted on a pivot, interacting with symbols or scales of some sort to indicate either the correct or a range of acceptable ladder angles. He found that the skilled person would not be exercising any inventive ingenuity in replacing the pivot mechanism with a hoop or rail for allowing the weighted indicator freely to indicate angle. Nor would that person be exercising any inventiveness in noting the teaching of the prior art and using some form of symbol to mark the position of the weighted indicator when at the optimum angle and at the limits of acceptable or safe angles. The application was refused

Citations:

[2012] UKIntelP o23112

Links:

Bailii

Statutes:

Patents Act 1977 1(1)(b)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 03 November 2022; Ref: scu.462528

Harrods Ltd v Harrodian School: CA 3 Apr 1996

No passing off was to be found to have been shown without the public believing that the plaintiff was responsible for the defendant’s services or goods. It was not enough to show only that the defendant was somehow ‘behind’ the defendant. Millet LJ said: ‘Passing off is a wrongful invasion of property vested in the plaintiff; but the property which is protected by an action for passing off is not the plaintiff’s proprietary right in the name or get up which the defendant has misappropriated but the goodwill and reputation of his business which is likely to be harmed by the defendant’s misrepresentation.’

Judges:

Millet LJ

Citations:

Times 03-Apr-1996, [1996] RPC 697, [1996] EWCA Civ 1315

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

CitedLego System Aktieselskab v Lego M Lemelstrich Ltd ChD 1983
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 . .

Cited by:

CitedAssociated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited) ChD 11-Jun-2003
The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark.
Held: The word . .
CitedChocosuisse, Kraft Jacobs Suchard (Schweiz) Ag, Chocoladefabriken Lindt and Sprungli (Schweiz) Ag v Cadbury Limited PatC 29-Oct-1997
The plaintiffs brought actions in passing off against the defendant company in respect of their chocolate products. They objected to the use of the terms ‘Swiss Chocolate’ applied to chocolates not made in Switzerland.
Held: The claimant had . .
CitedBoehringer Ingelheim Ltd and others v Vetplus Ltd CA 20-Jun-2007
The claimants appealed refusal of an order restricting comparative advertising materials for the defendant’s competing veterinary medicine. The claimant said that the rule against prior restraint applicable to defamation and other tort proceedings . .
CitedHarrods Limited v Harrods (Buenos Aires) Ltd and Harrods (South America) Ltd ChD 15-Jan-1997
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 31 October 2022; Ref: scu.81262

Wohlfahrt v OHMI – Ferrero (Kindertraum): ECFI 16 May 2012

ECFI Community trade mark – Opposition proceedings – Application for Community word mark Kindertraum – Earlier national word mark Kinder – Relative ground for refusal – Proof of use of the earlier mark – Article 42, paragraph 2 of Regulation (EC) No 207/2009 – Risk of confusion – Article 8, paragraph 1, sub b) of Regulation No 207/2009

Judges:

Papasavvas P

Citations:

T-580/10, [2012] EUECJ T-580/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 2

European, Intellectual Property

Updated: 28 October 2022; Ref: scu.459588

Regina v Broadcasting Complaints Commission Ex Parte Granada Television Ltd: CA 16 Dec 1994

The Broadasting Complaints Commission had been established to determine questions of privacy, and the courts should be slow to intervene. The right of privacy of an individual had not been lost by past publicity. That privacy had been infringed by the broadcast complained of, and the commissions decision was not unreasonable. The privacy of bereaved families was infringed by photographs even if the family was otherwise notorious.

Citations:

Gazette 15-Feb-1995, Ind Summary 20-Feb-1995, Times 16-Dec-1994, [1995] EMLR 16

Statutes:

Broadcasting Act 1990 143

Jurisdiction:

England and Wales

Citing:

CitedRegina v Broadcasting Complaints Commission, ex Parte Granada Television Ltd QBD 31-May-1993
The Commission had not been unreasonable in taking the view that a broadcast had infringed the privacy of the subject of the complaint. Judicial Review was not available against BBC for infringement of privacy. . .

Cited by:

CitedMcKennitt and others v Ash and Another QBD 21-Dec-2005
The claimant sought to restrain publication by the defendant of a book recounting very personal events in her life. She claimed privacy and a right of confidence. The defendant argued that there was a public interest in the disclosures.
Held: . .
CitedCTB v News Group Newspapers Ltd and Another (1) QBD 16-May-2011
A leading footballer had obtained an injunction restraining the defendants from publishing his identity and allegations of sexual misconduct. The claimant said that she had demanded money not to go public.
Held: It had not been suggested that . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Media, Judicial Review, Information

Updated: 27 October 2022; Ref: scu.86221

Biogen Inc v Medeva Plc: CA 28 Nov 1994

The description in a patent application’s specification must be of an invention.

Citations:

Ind Summary 28-Nov-1994

Statutes:

Patents Act 1977 1(1) 72(1)

Jurisdiction:

England and Wales

Cited by:

Appeal fromBiogen Plc v Medeva Plc HL 31-Oct-1996
The claim patented sought to protect a genetic molecule rather than a whole mouse namely that the molecule would, if inserted into a suitable host cell, cause the cell to make antigens of the Hepatitis B virus. A recombinant method of making the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 27 October 2022; Ref: scu.78412

Taittinger and Others v Allbev Ltd and Another: CA 30 Jun 1993

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.’

Judges:

Peter Gibson LJ

Citations:

Independent 30-Jun-1993, Times 28-Jun-1993, [1993] FSR 641

Jurisdiction:

England and Wales

Cited by:

CitedSean Sweeney, Graham Edward Camps v Macmillan Publishers Limited, Danis Rose ChD 22-Nov-2001
The claimants were trustees of the estate of James Joyce, and complained at the publication of unpublished parts of the work Ulysses in a readers edition by the defendants. Published works are protected for fifty years after the author’s death, but . .
CitedChocosuisse, Kraft Jacobs Suchard (Schweiz) Ag, Chocoladefabriken Lindt and Sprungli (Schweiz) Ag v Cadbury Limited PatC 29-Oct-1997
The plaintiffs brought actions in passing off against the defendant company in respect of their chocolate products. They objected to the use of the terms ‘Swiss Chocolate’ applied to chocolates not made in Switzerland.
Held: The claimant had . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 26 October 2022; Ref: scu.89691