Ice Mountain Ibiza v EUIPO – Marbella Atlantic Ocean Club (Ocean Ibiza): ECFI 25 May 2016

ECJ (Judgment) Brand of the European Union – Opposition proceedings – trade mark of the figurative EU ibiza ocean – Earlier national figurative marks OC and OC ocean club ocean club Ibiza – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8, paragraph 1 b) of Regulation (EC) No 207/2009

Citations:

T-6/15, [2016] EUECJ T-6/15, ECLI: EU: T: 2016 310

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 23 May 2022; Ref: scu.564882

Solen Cikolata Gida Sanayi Ve Ticaret v EUIPO – Zaharieva: ECFI 7 Feb 2018

Emballage Pour Cornets A Glace (Intellectual, Industrial and Commercial Property – Judgment – Community design – Invalidity proceedings – Registered Community design representing an ice cream cornet – Earlier international registration designating Bulgaria – Ground for invalidity – Use in the subsequent design of a distinctive sign the holder of which has the right to prohibit such use – Article 25(1)(e) of Regulation (EC) No 6/2002 – Obligation to state reasons – Article 62 of Regulation No 6/2002 – Duty of diligence – Article 63(1) of Regulation No 6/2002

Citations:

ECLI:EU:T:2018:70, [2018] EUECJ T-794/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 23 May 2022; Ref: scu.604739

The Smiley Company v OHMI (Representation De La Moitie D’Un Sourire De Smiley) (Intellectual Property): ECFI 29 Sep 2009

Europa Community trade mark – ‘ International registration designating the European Community Figurative mark representing half a smiley smile Absolute ground for refusal Lack of distinctive character Article 146(1) and Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 151(1) and Article 7(1)(b) of Regulation (EC) No 207/2009.

Citations:

T-139/08, [2009] EUECJ T-139/08

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 22 May 2022; Ref: scu.375418

Brandgroup v OHMI – Brauerei S Riegele, Inh. Riegele (Spezoomix): ECFI 1 Mar 2016

ECJ (Judgment) Community trade mark – Opposition proceedings – Application for Community word mark SPEZOOMIX – Earlier Community word mark Spezi – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No 207 / 2009

Citations:

T-557/14, [2016] EUECJ T-557/14, ECLI:EU:T:2016:116

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 20 May 2022; Ref: scu.560500

The Polo/Lauren Co LP v PT Dwidua Langgeng Pratama International Freight Forwarders Case: ECJ 14 Apr 2000

Council regulations empowered customs officers of member states to seize goods suspected of being counterfeit or pirated and in breach of Trade Mark and other laws This applied even to goods which were merely seized in transit through a member state, from a non-EU source to a non-EU destination. The validity of the regulation was not capable of doubt, and no factor had been identified which could challenge its validity. The wording of the regulation expressly envisaged such action.

Citations:

Times 14-Apr-2000, C-383/98, [2000] EUECJ C-383/98

Links:

Bailii

Cited by:

CitedNokia Corporation v Revenue and Customs ChD 27-Jul-2009
Nokia sought judicial review of a decision of the Commissioners to release a consignment of goods which it said were infringing counterfeits of its own models. The Commissioners said that in the absence of evidence that they were intended for . .
Lists of cited by and citing cases may be incomplete.

European, Customs and Excise, Intellectual Property

Updated: 20 May 2022; Ref: scu.89840

Industrias Francisco Ivars v OHMI- Motive (Reducteurs) ): ECFI 6 Oct 2011

ECFI Community design – Invalidity proceedings – Community design registered representative of a speed reduction gear – Community design prior – Reason for invalidation – No Individual – No different overall impression – Article 6 and Article 25 paragraph 1 b) of Regulation (EC) No 6 / 2002

Citations:

T-246/10, [2011] EUECJ T-246/10

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 20 May 2022; Ref: scu.445429

Regina v Registered Designs Appeal Tribunal, Ex Parte Ford Motor Company Ltd: HL 14 Dec 1994

Car parts which had no effect on appearance and were merely parts were not registerable as Registered Designs.
The section applies only to items of design which will have their own independent use, and not only as part of a larger item. Registration was refused for the part in this case.

Judges:

Lord Keith, Lord Ackner, Lord Goff, Lord Mustill, Lord Slynn

Citations:

Gazette 22-Feb-1995, Times 16-Dec-1994, (1995) RTR 68, (1995] 1 WLR 18, [1994] UKHL 10, [1995] RPC 167

Links:

Bailii

Statutes:

Copyright Designs and Patents Act 1988 sch4, Registered Designs Act 1949 1(1) 44(1)

Intellectual Property

Updated: 19 May 2022; Ref: scu.87616

PRO Sieben Media Ag v Carlton UK Television Ltd and Another: ChD 24 Sep 1997

The laudable motives of the defendant in an infringement of copyright were no defence, but relieved him from liability for additional damages.

Citations:

Times 24-Sep-1997

Statutes:

Copyright Designs and Patents Act 1988 97(2)

Jurisdiction:

England and Wales

Cited by:

Appeal fromPro Sieben Media AG v Carlton Television Ltd and Another CA 7-Jan-1999
The defendant was accused of infringing copyright in a TV programme relating to the pregnancy of a woman with eight foetuses. The defendant claimed fair dealing, but that defence was rejected by the trial judge.
Held: The decision was . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 May 2022; Ref: scu.85047

Regina v Department of Health, Ex Parte Source Informatics Ltd: Admn 28 May 1999

The damage to be shown to found a claim of breach of confidence need only be slight, if real, particularly in the context of personally sensitive materials. The NHS was correct to advise against the supply by pharmacists of anonymised data to outside agencies. This was a use outside the intention of the owner of the confidence, and would be in breach.

Citations:

Times 14-Jun-1999, [1999] EWHC Admin 510

Links:

Bailii

Intellectual Property, Information

Updated: 19 May 2022; Ref: scu.85218

Regina v Department of Health, Ex Parte Source Informatics Ltd: CA 21 Dec 1999

Where information was given by a patient to the pharmacist, and he took the data, stripping out any possibility of the individual being identified, the duty of confidence which attached to the prescription was not breached by the passing on of the reduced quantity information to a third party who wished to provide a statistical analysis of the prescriptions filled.

Judges:

Lord Justice Simon Brown Lord Justice Aldous And Lord Justice Schiemann

Citations:

Times 18-Jan-2000, [2001] QB 423, [1999] EWCA Civ 3011

Links:

Bailii

Statutes:

Data Protection Act 1998, Directive 95/46/EC on the protection of individuals with regard to the processing of personal data and on the free movement of such data

Jurisdiction:

England and Wales

Citing:

CitedSeager v Copydex Ltd CA 1967
Mr Seager had invented a patented carpet grip which he manufactured and marketed under the trade mark Klent. There were protracted negotiations between Mr Seager and Copydex over a proposal for Copydex to market the Klent. One of the issues in the . .
CitedMoorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) 1984
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 . .
CitedCoco v A N Clark (Engineers) Ltd ChD 1968
Requirememts to prove breach of confidence
A claim was made for breach of confidence in respect of technical information whose value was commercial.
Held: Megarry J set out three elements which will normally be required if, apart from contract, a case of breach of confidence is to . .

Cited by:

CitedAxon, Regina (on the Application of) v Secretary of State for Health and Another Admn 23-Jan-2006
A mother sought to challenge guidelines issued by the respondent which would allow doctors to protect the confidentiality of women under 16 who came to them for assistance even though the sexual activities they might engage in would be unlawful.
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Health Professions, Information

Updated: 19 May 2022; Ref: scu.85219

Premier Brands Uk Ltd v Typhoon Europe Ltd: ChD 3 Feb 2000

The claimants owned a major brand mark used in the distribution of tea. The defendants operated in the sale of kitchen equipment. Whether a sign infringed a mark without due cause was to be resolved at trial by the judge on the facts. The infringer had to show that he had good cause for his use, and that was not discharged merely by demonstrating good faith. In this case however there was no evidence of any damage to the claimant’s Mark’s distinctive character or repute.

Citations:

Gazette 03-Feb-2000, Times 22-Feb-2000

Statutes:

Trade Marks Act 1994 10 (3)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 May 2022; Ref: scu.85018

Premier Luggage and Bags Ltd v Premier Company (Uk) Ltd and Another: ChD 17 Oct 2000

The word ‘Premier’ although devoid of distinctive character in itself, but having been registered as a trade mark, had acquired a sufficient distinctiveness to justify and found an action for infringement and passing off. The test was whether through use of the trademark, a sufficient number both of potential purchasers of the claimants goods, and also of actual purchasers had come to associate goods with the claimant because of the trade mark.

Citations:

Times 17-Oct-2000

Statutes:

Trade Marks Act 1994 3(1)

Jurisdiction:

England and Wales

Cited by:

Appeal fromPremier Luggage and Bags Ltd v The Premier Company (UK) Ltd and Another CA 26-Mar-2002
The owner of a registered trade mark ‘Premier’ sued for swing tags which carried the defendant’s full name ‘The Premier Company (UK) Ltd.’.
Held: A trade mark use can fall within the scope of the Art 6.1 defence. There there was no passing off . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 May 2022; Ref: scu.85020

Mehdi Norowzian v Arks Ltd and Guinness Brewing Worldwide Limited (No 2): CA 11 Nov 1999

The claimant film artist showed a film to an advertising agency, who did not make use of it, but later appeared to use techniques and styles displayed in the film in subsequent material sold to third parties.
Held: A film was protected as a dramatic work subject to copyright law, but not the artistic techniques demonstrated in it. ‘[W]here it is not suggested that the judge has made any error of principle a party should not come to the Court of Appeal simply in the hope that the impression formed by the judges in this court, or at least by two of them, will be different from that of the trial judge.’ As to jurisdiction: ‘On the other hand the standards applied by the law in different context vary a great deal in precision and generally speaking, the vaguer the standard and the greater the number of factors which the court has to weigh up in deciding whether the standards have been met, the more reluctant an appellant court will be to interfere with the trial judge’s decision.’

Judges:

Buxton, Nourse, Brooke LJJ

Citations:

Times 11-Nov-1999, Gazette 25-Nov-1999, [2000] FSR 363, [2000] EMLR 67, [1999] EWCA Civ 3014, [1999] EWCA Civ 3018, [2000] ECDR 205

Links:

Bailii, Bailii

Statutes:

Copyright Designs and Patents Act 1988

Jurisdiction:

England and Wales

Citing:

Appeal fromNorowzian v Arks Limited and Others ChD 17-Jul-1998
A film whose defining and innovative characteristic was the editing which produced stylised jumps in the action, which were incapable of performance by the actor, was not a dramatic work protected by copyright. A film per se cannot be a dramatic . .
CitedBiogen 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 . .
CitedEx parte Firth , In re Cowburn 1882
The court considered the practice where a point of law was raised first only on appeal: ‘the rule is that, if a point was not taken before the tribunal which hears the evidence, and evidence could have been adduced which by any possibility would . .
CitedPro Sieben Media AG v Carlton Television Ltd and Another CA 7-Jan-1999
The defendant was accused of infringing copyright in a TV programme relating to the pregnancy of a woman with eight foetuses. The defendant claimed fair dealing, but that defence was rejected by the trial judge.
Held: The decision was . .

Cited by:

CitedAssicurazioni Generali Spa v Arab Insurance Group (BSC) CA 13-Nov-2002
Rehearing/Review – Little Difference on Appeal
The appellant asked the Court to reverse a decision on the facts reached in the lower court.
Held: The appeal failed (Majority decision). The court’s approach should be the same whether the case was dealt with as a rehearing or as a review. . .
CitedDesigners Guild Ltd v Russell Williams (Textiles) Ltd (Trading As Washington DC) HL 28-Nov-2000
Copyright Claim: Was it Copied, and How Much?
The claimant sought to enforce its copyright in artwork for a fabric design Ixia, saying the defendant’s design Marguerite infringed that copyright. Two issues faced the House. Just what had been copied and if any, then did this amount amount to the . .
CitedBessant and others v South Cone Incorporated; in re REEF Trade Mark CA 28-May-2002
The Reef pop group applied to register ‘REEF’ for Classes 25 and 26 – e.g. T-shirts, badges, etc. South Cone opposed them as registered proprietors of ‘Reef Brazil’ for the footwear which also was included in Class 25. South’s reputation was . .
CitedMastercard International Incorporated v Hitachi Credit (Uk) Plc ChD 8-Jul-2004
The claimants challenged award of a trade mark saying they were owners of many marks incorporating the word ‘Master’ associated with credit, and the applicants mark was too similar to its own.
Held: Applying Davidoff, the words can also be . .
CitedCelador Productions Ltd v Melville ChD 21-Oct-2004
The applicants each alleged breach of copyright and misuse of confidential information in the format of the television program ‘Who wants to be a Millionaire’. The defendant appealed a refusal to strike out the claim. It was not contended that no . .
CitedHarding v Wealands CA 17-Dec-2004
The claimant sought damages here for a road traffic accident which had occurred in Australia. The defendant was working in England. The defendant argued that the law of New South Wales applied.
Held: The general rule in section 11 was not to . .
CitedNova Productions Ltd v Mazooma Games Ltd and others CA 14-Mar-2007
The defendant appealed against a finding of copyright infringement in a computer game.
Held: The appeal failed. The court must identify the artistic work relied upon and then decide whether it has been reproduced by copying of the work as a . .
CitedEsure Insurance Ltd v Direct Line Insurance Plc ChD 29-Jun-2007
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted . .
CitedNova Productions Ltd v Mazooma Games Ltd and others ChD 20-Jan-2006
The claimant alleged copyright infringement in respect of computer games in the coin operated video market. It was said not that the games copied bitmap graphics, but rather the composite frames which appeared on the screen.
Held: The games . .
CitedMeakin v British Broadcasting Corporation and Others ChD 27-Jul-2010
The claimant alleged that the proposal for a game show submitted by him had been used by the various defendants. He alleged breaches of copyright and of confidence. Application was now made to strike out the claim. . .
ApprovedLucasfilm Ltd and Others v Ainsworth and Another SC 27-Jul-2011
The claimant had produced the Star War films which made use of props, in particular a ‘Stormtrooper’ helmet designed by the defendant. The defendant had then himself distributed models of the designs he had created. The appellant obtained judgment . .
Lists of cited by and citing cases may be incomplete.

Media, Intellectual Property

Updated: 19 May 2022; Ref: scu.84335

Hermes International v FHT Marketing: ECJ 9 Sep 1998

Where interim orders had been granted following seizure of goods under TRIPS agreement, the court gave guidance on what characteristics where required for it to be considered provisional measures under TRIPS and so imposed time limits.
ECJ Agreement establishing the World Trade Organisation – TRIPS Agreement – Article 177 of the Treaty – Jurisdiction of the Court of Justice – Article 50 of the TRIPS Agreement – Provisional measures

Citations:

Gazette 09-Sep-1998, C-53/96, Ecj/Cfi Bulletin 16/98, [1998] EUECJ C-53/96

Links:

Bailii

Statutes:

Council Decision 94/800/EC Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)

Cited by:

CitedForensic Telecommunications Services Ltd v West Yorkshire Police and Another ChD 9-Nov-2011
The claimant alleged infringement by the defendant of assorted intellectual property rights in its database. It provided systems for recovering materials deleted from Nokia mobile phones.
Held: ‘the present case is concerned with a collection . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 19 May 2022; Ref: scu.81344

eFax Com Inc v Oglesby: ChD 25 Jan 2000

The claimant, an American company claimed in passing off against the defendant. It had come into the UK market and established a free service under the name. The defendant had operated a paid for service under the same name from some time before.
Held: The claim should proceed, but an interim injunction was refused. In passing off, the words claimed to establish a reputation in the goods had to be more than descriptive. Words which might once have been distinctive could become descriptive by general usage, as had happened in this case. The common stock of language conception was becoming increasingly difficult to apply. Here the use of the word ‘efax’ had become descriptive. Any confusion or association between the two companies arose from the common meaning of the words and not from any reputation in the name belonging to the claimant.

Judges:

Parker J

Citations:

Times 16-Mar-2000, Unreported, 25 January 2000

Intellectual Property

Updated: 19 May 2022; Ref: scu.80268

Discovery Communications Inc v Discovery Fm Ltd: IHCS 25 Jan 2000

It was no defence to an action for trade mark infringement to assert that although the registration covered activities of the type undertaken, the claimant did not actually provide services of that precise type. It is in the nature of such registrations that they reserve to the mark holder the right to develop his activities within the registration class.

Citations:

Times 25-Jan-2000

Statutes:

Trade Marks Act 1994 10

Intellectual Property, Scotland

Updated: 19 May 2022; Ref: scu.80063

Decon Laboratories Ltd v Fred Baker Scientific Ltd and Another: ChD 28 Feb 2001

The procedure for applying for the registration of a European Trade Mark did not involve the same issues as applied in England as to the use of the mark within the first five years, nor any statement of a bona fide intention to use the mark. Only exceptionally therefore could a European Trade Mark be revoked for non-use. An English Court dealing with a European Trade Mark, sits as a European court.

Citations:

Times 28-Feb-2001, [2001] RPC 293

Statutes:

Trade Marks Act 1994 10(1) 46(5)

Cited by:

CitedAsprey and Garrard Ltd v WRA (Guns) Ltd and Another CA 11-Oct-2001
The Asprey family had been in business for many years. Their business was incorporated, and later sold to the claimants. A member of the Asprey family sought to carry on new businesses through limited companies using the family name. Upon request, . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 May 2022; Ref: scu.79866

Celanese International Corporation and Another v Bp Chemicals Ltd and Another: ChD 5 Nov 1998

A plaintiff alleging infringement of a patent and choosing an account of profits rather than damages, was entitled to assume that the defendant traded as an agent for the plaintiff and take his profits limited to the trading enabled by the infringement.

Citations:

Times 05-Nov-1998

Intellectual Property

Updated: 19 May 2022; Ref: scu.78951

British Broadcasting Corporation v Talksport Ltd: ChD 29 Jun 2000

The tort of passing off depended upon there being some goodwill capable of being relied upon. Words which were merely descriptive of the service offered, such as ‘live sports broadcasting,’ were incapable of carrying any goodwill, and accordingly a service of broadcasting live commentary but based upon other broadcasts was not a passing off when describing itself as such.

Citations:

Times 29-Jun-2000, Gazette 06-Jul-2000

Intellectual Property, Media

Updated: 18 May 2022; Ref: scu.78614

British Horseracing Board Ltd v William Hill Organisation Ltd: PatC 9 Feb 2001

The defendants received data, prepared and distributed by the claimants, regarding horse races, and incorporated the information into their web pages as part of a betting service. There might have been other, indirect, ways of obtaining the same data, but in practice they would rely on data received by a third party from the claimant. The claimant asserted breach of its database rights. The right protected the data, not just the way it was organised. The Directive required only that a substantial part of the contents of the database should be copied. There was no need to show a direct derivation.

Judges:

Laddie J

Citations:

Times 23-Feb-2001, [2001] EWHC 517 (Patents)

Links:

Bailii

Statutes:

Copyright and Rights in Databases Regulations 1997 (1997 No 3032)

Cited by:

Appeal fromBritish Horseracing Board Ltd and Others v William Hill Organization Ltd CA 31-Jul-2001
The Board had established a database of information about horse racing. It was costly. The defendants recovered the information from a licensed user, and used it for its own business purposes. It was not suggested that the licensee had any right to . .
Appeal fromBritish Horseracing Board Ltd and Another v William Hill Organization Ltd CA 13-Jul-2005
The Court allowed William Hill’s appeal, holding that BHB had not established that the ECJ had given its earlier ruling on the basis of an erroneous assumption of fact and that the result of applying the ruling was that BHB’s Database did not fall . .
At First InstanceThe British Horseracing Board Ltd and Others v William Hill Organization Ltd ECJ 9-Nov-2004
bhb_whECJ2004
The claimant sought to prevent re-use by the defendant of information from its horse racing subscription service. They claimed that they had a database right in the information. It cost andpound;4m per year to assemble.
Held: The expression . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 May 2022; Ref: scu.78629

Beloit Technologies Inc and Another v Valmet Paper Machinery Inc and Another: ChD 12 May 1995

The judge urged that the Convention should be incorporated into English law without rephrasing difficult clauses: ‘it helps no-one for the Parliamentary draftsman to re-write matter in a treaty or convention (or EU directive for that matter) which is to be implemented in the United Kingdom. If the language of the basic document is obscure or less than complete it makes things worse if the Parliamentary draftsman tries to ‘clarify’ it in some other words. Where he does, he simply causes extra complications (and therefore legal uncertainty and costs) . . The point at which obscurities should be avoided is in the underlying international document. If they are unfortunately there, it is too late for our Parliamentary draftsman to help and the problem must be left for industry to pay for in the courts. The particular question here is a typical example of what could be avoided by simply adopting the language of the underlying document as it stands.’

Judges:

Jacob J

Citations:

Times 12-May-1995, [1995] RPC 705

Statutes:

Patents Act 1977 6(1)

Cited by:

CitedCommissioners of Customs and Excise v Century Life Plc CA 19-Dec-2000
The Directive required member states to exempt from VAT, services involving the provision of insurance, and for intermediaries. Following the Regulator’s involvement, the principal company had to arrange for the checking of existing policies, and . .
CitedSynthon Bv v Smithkline Beecham Plc HL 20-Oct-2005
Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the . .
CitedYeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc and others CA 31-Jul-2006
The claimants sought to amend their claim which had previously been on the basis of a joint ownership, to one of sole ownership.
Held: The application for the amendment being made more han two years after the grant, the amendment could not be . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 May 2022; Ref: scu.78327

Biosource Technologies Inc v Axia Genetics Plc (In Administration): ChD 25 Nov 1999

The rule which prevents a company in administration being prosecuted without the leave of the court, was not intended only to restrict creditors. Here another company wanted to bring patent infringement proceedings, but were first to be required to obtain the court’s consent.

Citations:

Times 25-Nov-1999, Gazette 25-Nov-1999

Statutes:

Insolvency Act 1986 11(3)(d)

Insolvency, Litigation Practice, Intellectual Property

Updated: 18 May 2022; Ref: scu.78409

Barclays Bank Plc v RBS Advanta: ChD 8 Feb 1996

A party complaining about the use of a trade mark in a comparative advert is required to show some dishonesty. Section 10(6) of the Act was described as ‘home grown’ rather than derived directly from the Directive.

Judges:

Laddiie J

Citations:

Times 08-Feb-1996, [1996] RPC 307

Statutes:

Trade Marks Act 1994 10(6)

Cited by:

CitedBritish Airways Plc v Ryanair Limited ChD 25-Oct-2000
The claimant alleged that disparaging adverts by the defendant infringed its trade marks and amounted to the tort of malicious falsehood.
Held: There was no dispute that the mark had been used. The Act could not be used to prevent any use of . .
CitedVodafone Group Plc v Orange Personal Communications Services Ltd ChD 1997
The court examined the development of the law in relation to comparative advertising. Jacob J said: ‘Prior to the coming into force of the Trade Marks Act 1994 comparative advertising using a registered trade mark of a competitor was, subject to . .
CitedCable and Wireless plc v British Telecommunications plc ChD 1998
The court set out the applicable legal principles in trade mark infringement. The court considered the elements necessary to establish a defence under s10(6): The primary objective of section 10(6) of the 1996 Act is to permit comparative . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 May 2022; Ref: scu.78216

Bank of Scotland v Dunedin Property Investment Co Ltd: IHCS 24 Sep 1998

Issue of loan stock supported by charge for ‘all costs charges and expenses incurred’ this included the breakage cost of the bank in setting up interest-rate swap arrangements to protect itself against swings in costs.

Judges:

Lord President (Rodger

Citations:

Times 24-Sep-1998, 1998 SC 658

Citing:

Appeal fromBank of Scotland v Dunedin Property Investment Co Ltd OHCS 16-May-1997
The cost of an interest rate swap brokerage agreement was not covered by an indemnity against ‘all costs charges and expenses incurred’. . .

Cited by:

Appealed toBank of Scotland v Dunedin Property Investment Co Ltd OHCS 16-May-1997
The cost of an interest rate swap brokerage agreement was not covered by an indemnity against ‘all costs charges and expenses incurred’. . .
CitedAMEC Mining v Scottish Coal Company SCS 6-Aug-2003
The pursuers contracted to remove coal by opencast mining from the defender’s land. They said the contract assumed the removal first of substantial peat depositys from the surface by a third party. They had to do that themselves at substantial cost. . .
See AlsoThe Governor and Company of the Bank of Scotland v Dunedin Property Investment Company Ltd OHCS 8-Jun-1999
. .
CitedProfile Software Ltd v Becogent Ltd OHCS 16-Feb-2005
The pursuers claimed for breach of copyright and of a software licence. The defendants disputed the title or right of the pursuers to claim.
Held: The assignation of the rights in the software carried with it the rights to enforce intellectual . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contract, Scotland

Updated: 18 May 2022; Ref: scu.78162

Charlesworth v Relay Roads Ltd and Others: PatC 20 Jul 1999

Application by the defendants for permission to amend their Defence and Counterclaim and Particulars of Objections and to call further evidence to support those amendments in circumstances where, not only has the hearing of the action been completed, but judgment has been handed down, although, crucially, the order has not been drawn up.

Judges:

Neuberger J

Citations:

[1999] EWHC 829 (Pat), [2000] RPC 300, [2000] CP Rep 37, [2000] CPLR 109, [2000] 1 WLR 230, [1999] 4 All ER 397

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property, Litigation Practice

Updated: 18 May 2022; Ref: scu.567878

Autospin (Oil Seals) Ltd v Beehive Spinning (A Firm): ChD 9 Aug 1995

An expert witness in a copyright case is under a duty to approach his task seriously. What is substantial reproduction in copyright depends on the nature of the copyright work in issue.

Judges:

Laddie J

Citations:

Times 09-Aug-1995, [1995] RPC 683

Cited by:

CitedHyperion Records Ltd v Sawkins CA 19-May-2005
The claimant had developed historical musical works for performance. They were published by the defendant, by means of recordings of a performance from the scores he had prepared – so called ‘performance editions’. The many hundreds of hours . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 May 2022; Ref: scu.78028

Brutt Trade Marks: 2007

Citations:

[2007] RPC 462

Jurisdiction:

England and Wales

Cited by:

CitedWhitmar Publications Ltd v Gamage and Others ChD 4-Jul-2013
Whitmar claimed damages for breach of contract; an account of profits; damages for breach of fiduciary duty and/or for infringement of its Database Rights under the Copyright and Rights in Database Regulations 1997; and for a permanent injunction . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 May 2022; Ref: scu.619037

BBC Enterprises Ltd v Hi-Tech Xtravision Ltd: HL 1991

The BBC’s appeal failed. Section 228 of the 1988 Act is intended to protect those who do no more than re-broadcast or retransmit, while not necessarily being copyright owners of a broadcast in their own right.

Citations:

(1991) 21 IPR 461, [1991] 3 WLR 1, [1992] RPC 167, [1991] 3 All ER 257, [1991] 2 AC 327

Statutes:

Copyright Designs and Patents Act 19885

Jurisdiction:

England and Wales

Citing:

Appeal fromBBC Enterprises Ltd v Hi-Tech Xtravision Ltd and Others CA 21-Dec-1989
The plaintiff sold television entertainment through subscriptions. The broadcasts were protected by encryption. The defendant sold equipment which could unscramble the broadcasts. They were sued under the section. At first instance, the claim was . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 May 2022; Ref: scu.568889

RJ Reuter Co Ltd v Mulhens: CA 1954

Complaint was made of the use of a the trade mark for ‘4711 Eau de Cologne’ where the figures ‘4711’ appeared within a scroll next to a bell. In fact, the place of business of the defendant company was No. 4711 Koln am Ehein, in Cologne. The defendant contended that the use of the figures ‘4711’ within a scroll and next to a bell identical to that of the registered trade mark for 4711 Eau de Cologne was a use in good faith by the defendant of the company’s name or place of business.
Held: The Court rejected the defence. Although ‘4711’ was the defendant’s place of business, the representation of that place by ’embellishment of the scroll and bell’ was not within the protection of the defence. The fact that the additional material (the scroll and bell) were part of the registered trade mark appears to have dictated this outcome. The envelopes on the outside of which the allegedly infringing mark was placed as advertising matter were sent by post into the United Kingdom by the defendants. It is trite law that the Post Office is the agent of the sender of a letter to carry it, and thus it was the defendants who were to be taken to have delivered the letter to the recipients and to have displayed the mark to them within this jurisdiction.

Judges:

Lord Evershed MR and Romer LJ

Citations:

[1954] Ch 50

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: 18 May 2022; Ref: scu.566022

Adrema Werke Maschinenbau GmbH v Custodian of Enemy Property and the Administrator of German Enemy Property: CA 1957

Judges:

Lord Evershed MR and Jenkins LJ

Citations:

[1957] RPC 49

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: 18 May 2022; Ref: scu.566023

Globelegance BV v Sarkissian: ChD 1974

The plaintiff claimed in passing off, seeking an intelocutory injunction. Mr Valentino Garavani, a fashion designer opened a salon in Rome in 1960, and built up a reputation in ladies’ high fashion under the name ‘Valentino’. His fashion shows in Rome and New York were attended by buyers from various countries including the United Kingdom. In 1966 and 1968 Mr Garavani held fashion shows in London and in 1970 clothes made from his patterns were sold in London under the ‘Valentino’ label. In 1969 Mr Garavani assigned to the plaintiffs, an Italian company based in Rome, some of the business assets which he owned including the trade mark ‘Valentino’ and the goodwill in his business in connection with it. Also he entered into a service agreement with the plaintiffs. In 1970 and 1971 Mr Garavino’s activities were given publicity in various international papers and in newspapers including The Times. By 1972 the world wide business carried on under the name ‘Valentino’ was very substantial. Valentino ties were sold in the United Kingdom in August 1972.
The plaintiffs sought an interlocutory injunction to restrain the defendant from passing off his business and goods as those of the plaintiffs by the display of the name ‘Valentino’ on his premises and otherwise. The defendant wished to establish a men’s fashion business in London. His Lordship said that there was obviously ‘a very great difference between the activities of the plaintiff outside England and their activities inside England’. He referred to the Crazy Horse Case and to Pioret and distinguished Pioret on the ground that, though like the Garavani case there was no establishment in England, Pioret made a practice of himself coming or sending over an assistant three or four times a year with dress models which he sold to English dress making firms and he gave a display attended by the then wife of the Prime Minister, Mrs Asquith, at No. 10 Downing Street which caused some resentment amongst his English competitors. His Lordship said that Pioret was a very much stronger case on the facts than the case before him as a great deal more business was done in the United Kingdom notwithstanding that there was no place of business there. Templeman J took up the point left by Pennycuick J. in the Crazy Horse Case that there must be some kind of user in the United Kingdom; but his Lordship said: ‘The question is really: What kind of user? Pure advertisement is clearly insufficient. Taking bookings was sufficient in Sheraton. Carrying out orders in this country was held to be sufficient in Pioret.’
He referred to the evidence of user in the United Kingdom in the Garavani case and said that the necessary conditions were fulfilled bearing in mind of course he was dealing with the matter at an interlocutory stage only. He also held there were sufficient persons who might become purchasers from the defendants and who would assume a connection between the defendant’s premises in Jermyn Street and the name ‘Valentino’ and the activities of the plaintiffs in respect of the ‘Valentino’ products. His Lordship concluded: ‘One knows that in practice the trade in high fashion is becoming more and more international, and it does seem to me, in general, that it would be a very great pity if the strait jacket of the Crazy Horse decision was found to constrain me from preventing Valentino from keeping the name which he has so well publicised.’

Judges:

Templeman J

Citations:

[1974] RPC 603

Citing:

CitedAlain Bernardin and Cie v Pavilion Properties Ltd ChD 1967
The owner of the Crazy Horse Saloon in Paris tried to stop a business in London under the same name. The plaintiff advertised in the UK but carried on no other activities here.
Held: An injunction was refused. The plaintiff had reputation but . .

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: 18 May 2022; Ref: scu.566007

Davis (J and S) Holdings v Wright Health Group: ChD 1988

The parties disputed the status in intellectual property law of a model of a dental impression tray. A cast was prepared from the model, and a final form prepared from the cast. The author, a professor, made a mock-up of materials but then drew from that and then someone else produced the actual first trays.
Held: The judge rejected the submission that it was a sculpture largely on the grounds of its ephemeral nature. Whitford J observed how the notion of sculpture, and other artistic works, had been extended to a point where: ‘their meaning bears very little relation to the meaning which those not familiar with the law would give to those words.’

Judges:

Whitford J

Citations:

[1988] RPC 403

Jurisdiction:

England and Wales

Cited by:

CitedLucasfilm Ltd and others v Ainsworth and Another ChD 31-Jul-2008
The parties disputed ownership of the designs for various props used in the Star Wars films. The defendant had developed designs from ideas originating within the claimant’s companies.
Held: The judgment from the US in a similar claim was . .
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 . .
CitedLucasfilm Ltd and Others v Ainsworth and Another SC 27-Jul-2011
The claimant had produced the Star War films which made use of props, in particular a ‘Stormtrooper’ helmet designed by the defendant. The defendant had then himself distributed models of the designs he had created. The appellant obtained judgment . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 May 2022; Ref: scu.442603

Mentor Corporation v Hollister Incorporated: ChD 1991

The court considered the meaning of the phrase a ‘person skilled in the art’ in the context of a patent claim.
Aldous J said: ‘The section requires the skilled man to be able to perform the invention, but does not lay down the limits as to the time and energy that the skilled man must spend seeking to perform the invention before it is insufficient. Clearly there must be a limit. The sub-section, by using the words, clearly enough and completely enough, contemplates that patent specifications need not set out every detail necessary for performance, but can leave the skilled man to use his skill to perform the invention. In so doing he must seek success. He should not be required to carry out any prolonged research, enquiry or experiment. He may need to carry out the ordinary methods of trial and error, which involve no inventive step and generally are necessary in applying the particular discovery to produce a practical result. In each case, it is a question of fact, depending on the nature of the invention, as to whether the steps needed to perform the invention are ordinary steps of trial and error which a skilled man would realise would be necessary and normal to produce a practical result.’

Judges:

Aldous J

Citations:

[1991] FSR 557

Statutes:

Patents Act 1977 72(1)(c)

Jurisdiction:

England and Wales

Citing:

CitedValensi v British Radio Corporation CA 1973
The court considered the test for deciding what degree of knowledge, skill and perseverance the skilled man was assumed to have as a ground for revocation of a patent on the associated basis. There had been a mistake in the specification of the . .

Cited by:

Appeal fromMentor Corporation v Hollister Incorporated CA 1993
Lloyd LJ added to the guidance at first instance:
‘In each case sufficiency will thus be a question of fact and degree, depending on the nature of the invention and the other circumstances of the case.
But if a working definition is required . .
CitedGenerics (UK) Ltd and others v H Lundbeck A/S HL 25-Feb-2009
Patent properly granted
The House considered the patentability of a chemical product, citalopram made up of two enantiomers, as opposed to the process of its creation, questioning whether it could be new or was insufficient within the 1977 Act.
Held: The appeal . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 May 2022; Ref: scu.304529

Artistic Upholstery Ltd v Art Forma (Furniture) Ltd: ChD 21 Sep 1999

An unincorporated association has standing to pursue an action for passing off through an action brought by one or more of its members in a representative capacity despite its not being a natural legal person. A local association having held a trade fair for many years under a certain name could prevent a former member using the same name for a fair after leaving the association.

Citations:

Times 21-Sep-1999

Intellectual Property

Updated: 17 May 2022; Ref: scu.77884

Antiquesportfolio Com Plc v Rodney Fitch and Co Ltd: ChD 21 Jul 2000

In a contract to supply designs, there was an implied obligation to carry out the design work with reasonable care and skill and to use reasonable care to ensure that the materials supplied were free of any adverse claim.
Held: The breach arose not at the time when proceedings for infringement were begun, but when the duty not to copy was broken. A photograph of a static object was itself capable of founding a claim to copyright. The requirement of originality was satisfied ‘by little more than the opportunistic pointing of a camera and the pressing of the shutter button.’

Judges:

Neuberger J

Citations:

Times 21-Jul-2000, Gazette 27-Jul-2000, [2001] FSR 345, [2000] All ER (D) 950

Cited by:

CitedTemple Island Collections Ltd v New English Teas Ltd and Another PCC 12-Jan-2012
The claimant asserted infringement of their copyright in a photograph. It showed the Houses of Parliament in black and white with a London bus in red. The original action had been settled and the proposed image withdrawn as a copy. The defendants . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 May 2022; Ref: scu.77818

Arsenal Football Club Plc v Reed: ChD 6 Apr 2001

The defendant had sold memorabilia using the claimant’s name, and marks for thirty years. He sought to make it clear that the products were not sourced from the club. They were purchased, generally, by people who wore them as badges of allegiance to the club. The claim of passing off failed because the club had brought no evidence of confusion as to the source of them. The use appeared to infringe the claimant’s trade mark rights, but there is confusion as to whether such use constituted a non-trade mark use and could not be restrained by the Act, and whilst the judge was constrained to find for the claimant, he invited the parties to consider an appeal or reference to the European Court of Justice.

Citations:

Times 26-Apr-2001, [2001] EWHC Ch 440

Links:

Bailii, Bailii

Statutes:

Trade Marks Act 1994 10, Trade Marks Directive 89/104/EEC (1989 OJ No L40/5)

Citing:

Referred toArsenal Football Club plc v Reed ECJ 12-Nov-2002
The trade mark owner sought orders against a street vendor who sold articles using their marks. He asserted that the marks were not attached to show any quality, but were used by the fans as badges of allegiance.
Held: The function of a trade . .

Cited by:

Reference FromArsenal Football Club plc v Reed ECJ 12-Nov-2002
The trade mark owner sought orders against a street vendor who sold articles using their marks. He asserted that the marks were not attached to show any quality, but were used by the fans as badges of allegiance.
Held: The function of a trade . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 17 May 2022; Ref: scu.77875

Allergan Inc and Another v Sauflon Pharmaceuticals Ltd: PatC 24 Feb 2000

A claimant in patent infringement proceedings sought leave to join in the defendant’s Spanish supplier as a joint tortfeasor. The application was refused because before exposing a foreign party to the expense of defending such proceedings there had to be shown an arguable case. Here what was shown was compatible with proper acts of a supplier supporting his customer with information as to the product being sold, the market and providing information which might assist the defendant to defend.

Citations:

Gazette 24-Feb-2000, Times 15-Mar-2000, [2000] EWHC Patents 168

Links:

Bailii

Jurisdiction:

England and Wales

Litigation Practice, Intellectual Property

Updated: 17 May 2022; Ref: scu.77747

Allied Domecq Spirits and Wine Ltd v Murray Mcdavid Ltd: SCS 9 Dec 1997

Old Trade Mark infringement cases are to be viewed only with great care; on balance of convenience, the use of trade marked place name is to be allowed.

Citations:

Times 09-Dec-1997

Statutes:

Trade Marks Act 1994 11(2)(b)

Jurisdiction:

Scotland

Intellectual Property, Scotland

Updated: 17 May 2022; Ref: scu.77754

Regina v McCrudden: CACD 2005

Laws LJ: ‘Section 92(5) affords a positive and specific defence as to the use of the trade mark by the defendant. It does not provide a general defence of good faith … It seems to us that the provisions contained in section 92 have been devised to constitute a rigorous statutory code, involving offences initially of strict liability, for the plain policy reason that there is a very considerable public importance in preventing the trade in counterfeit goods.’

Judges:

Laws LJ

Citations:

[2005] EWCA Crim 466

Statutes:

Trade Marks Act 1994 92(5)

Jurisdiction:

England and Wales

Cited by:

CitedWest Sussex County Council, Regina (on the Application of) v Kahraman Admn 13-Jun-2006
The complainant appealed dismissal of charges against the respondent of displaying for sale goods bearing marks identical to registered trade marks. The defendant asserted that he had reasonable grounds for belief that the goods were not counterfeit . .
Lists of cited by and citing cases may be incomplete.

Crime, Intellectual Property

Updated: 17 May 2022; Ref: scu.243318

Panhard et Levassor v Panhard Levassor Motor Company Ltd: 1901

French car manufacturers had established a reputation under their name in this country. The defendant company was formed not to take over the plaintiffs’ goodwill, but to block the plaintiffs from entering this country.
Held: Injunctions were granted requiring the defendants to change the name of their company and not to trade in that name, as to which: ‘The question of the plaintiffs’ right to an injunction is covered by Collins Co v Brown ; but, apart from that authority, I should have thought it was plain that in a case such as I have stated this court would certainly interfere to protect a foreign trader who has a market in England, in the way I have specified, from having the benefit of his name annexed by a trader in England who assumes that name without any sort of justification.’

Judges:

Farwell J

Citations:

(1901) 2 Ch 513

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: 17 May 2022; Ref: scu.239092

Suhner and Co AG v Transradio Ltd: 1967

The claimants complained at the defendant having registered a company under the name ‘Suhner’. The defendants gave no justification for using the word ‘Suhner’ as part of their name. They claimed that they had the right to form a company in order to try to stop the plaintiffs trading in this country under their own name.
Held: They were not, and an injunction was granted. Unless the confidential information sought to be protected by an action is properly identified, an injunction in the resulting unclear terms will have uncertain scope and be difficult to enforce: identification of what the information at issue was and whether it was confidential would have to be determined on a contempt motion. As to what information was confidential: ‘A great deal of the defendants’ evidence seems to me to be really beside the point, first of all, because the confidential nature of the document is not dependent on whether the information which it contains is available elsewhere; but, on the question of whether it contains useful information which has been compiled by the plaintiffs for a particular purpose and, if it does contain such information and if it has been compiled and handed over to the defendants for a particular purpose, then, as I understand the law, that document is confidential and the defendants are not entitled to use it for another purpose’.

Judges:

Plowman J

Citations:

[1967] RPC 329

Citing:

AppliedSaltman Engineering Co v Campbell Engineering Co Ltd CA 1948
The plaintiffs instructed the defendant to make tools for the manufacture of leather punches in accordance with drawings which the plaintiffs provided to the defendant for this purpose. The defendant used the drawings to make tools, and the tools to . .

Cited by:

CitedMarketmaker Beijing Co Ltd and others v CMC Group Plc and others QBD 8-Oct-2004
Interim injunctions had been obtained to prevent the defendants carrying out certain banking transactions.
Held: The remedy sought and the claim was extravagant and unlikely to succeed. The injunctions should be discharged. It was not at all . .
CitedEPI Environmental Technologies Inc and Another v Symphony Plastic Technologies Plc and Another ChD 21-Dec-2004
The claimant had developed an additive which would assist in making plastic bags bio-degradable. They alleged that, in breach of confidentiality agreements, the defendants had copied the product. The defendants said the confidentiality agreement was . .
CitedBritish Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 16 May 2022; Ref: scu.216389

Printers and Finishers Limited v Holloway: 1965

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

Judges:

Cross J

Citations:

[1965] RPC 239, [1965] 1 WLR 1

Cited by:

CitedPoeton Industries Ltd and Another v Michael Ikem Horton CA 26-May-2000
The claimant sought damages and an injunction after their former employee set up in business, using, they said, information about their manufacturing procedures and customers obtained whilst employed by them. The defendant appealed the injunction . .
CitedFaccenda Chicken Ltd v Fowler CA 1986
Nature of Confidentiality in Information
The appellant plaintiff company had employed the defendant as sales manager. The contract of employment made no provision restricting use of confidential information. He left to set up in competition. The company now sought to prevent him using . .
CitedThomas v Farr Plc and Another CA 20-Feb-2007
The employee, the former chairman of the company, appealed a finding that his contract which restricted his being employed for one year in the same field after termination, was valid and enforceable. The company had provided insurance services to . .
CitedNapier and Another v Pressdram Ltd CA 19-May-2009
The claimant solicitors appealed against the refusal to grant them an injunction to prevent the publication of the outcome of a complaint against them to the Law society, and of the Ombudsman’s report. They said that the material remained . .
CitedThe Author of A Blog v Times Newspapers Ltd QBD 16-Jun-2009
The claimant, the author of an internet blog (‘Night Jack’), sought an order to restrain the defendant from publishing his identity.
Held: To succeed, the claimant would have to show that there would be a legally enforceable right to maintain . .
CitedCaterpillar Logistics Services (UK) Ltd v Huesca De Crean QBD 2-Dec-2011
The claimant sought an order to prevent the defendant, a former employee, from misusing its confidential information said to be held by her. Her contract contained no post employment restrictions but did seek to control confidential and other . .
CitedLittlewoods Organisations Ltd v Harris CA 1977
When construing restrictive covenants in an employment contract, the court should construe the contract in the light of the object and intent of the contract as a whole. It may be read down and need not be read literally. Lord Denning said that it . .
CitedBluebell Apparel Ltd v Dickinson SCS 14-Oct-1977
The former employee challenged a restriction on his post employment career.
Held: The restriction was world-wide and as such tooo wide, and unenforceable. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Employment

Updated: 16 May 2022; Ref: scu.200319

Evans v Eradicure: 1972

A plaintiff’s reputation in a trading style may be local not national.

Citations:

[1972] RPC 808

Jurisdiction:

England and Wales

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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 16 May 2022; Ref: scu.183855

Rickless v United Artists Corporation: CA 1987

The Act created a private right to performers. Although it might appear to provide criminal sanctions only, performers had the right to give or withhold consent to the use of their performances and to enforce that right by action in the civil courts. This statutory right was not purely personal, but survived the death of the performer and vested in his or her personal representatives, so that in the absence of consent of a performer or his or her personal representatives, there was an actionable breach. A feature film (Trail of the Pink Panther – ‘Trail’) starring the late Peter Sellers had been made by use of cutting floor clips from previous films made with his consent. In two films, The Pink Panther Strikes Again and Revenge of the Pink Panther his consent extended to the use in this way of the cutting floor clips, and ordered the producer companies to account for percentages of the gross receipts of Trail as sums derived from Strikes and Revenge. In the case of three films where there had been no consent, damages were awarded for breach, or inducing breach, of contract in the sum of $1,000,000.
Sir Nicolas Browne-Wilkinson V-C observed that, while not decisive, it was generally easier to spell out civil liability where Parliament had expressly stated that an act was unlawful rather than merely classifying it as a criminal offence.

Judges:

Hobhouse J, Sir Nicolas Browne-Wilkinson V-C, Bingham LJ

Citations:

[1988] QB 40, [1987] 1 All ER 679, [1987] 2 WLR 945

Statutes:

Dramatic and Musical Performers Protection Act 1958 1

Jurisdiction:

England and Wales

Cited by:

CitedExperience Hendrix LLC v PPX Enterprises Inc and Another CA 20-Mar-2003
The claimant had obtained an interim injunction against the defendant for copyright infringement, though it could show no losses. It now sought additionally damages. The defendant argued that it could not have both.
Held: The case arose form . .
CitedCampbell v Gordon SC 6-Jul-2016
The employee was injured at work, but in a way excluded from the employers insurance cover. He now sought to make the sole company director liable, hoping in term to take action against the director’s insurance brokers for negligence, the director . .
Lists of cited by and citing cases may be incomplete.

Damages, Intellectual Property, Media

Updated: 16 May 2022; Ref: scu.180883

Ultraframe UK Limited v Clayton, Fielding and Others: ChD 3 Oct 2002

The claimants asserted infringement of their registered design rights in parts used in their double glazing and conservatory units. ‘Therefore it is possible for design right to subsist in the design of the part of the article which is not excluded under the must match provisions.’

Judges:

The Honourable Mr Justice Laddie

Citations:

[2003] RPC 435

Statutes:

Copyright Designs and Patents Act 1988 213(6) 215

Jurisdiction:

England and Wales

Citing:

CitedMontgomery v Johnson Underwood Ltd CA 9-Mar-2001
A worker who had strictly been employed by an agency but on a long term placement at a customer, claimed to have been unfairly dismissed by the customer when that placement ended.
Held: To see whether she was an employee the tribunal should . .
CitedSecretary of State for Trade and Industry v Bottrill CA 12-Feb-1999
There is no rule of law, to suggest that a sole director and owner of majority of shareholding, could not be an employee of that company, and be entitled to a redundancy payment on the liquidation of the company. ‘If the tribunal considers that the . .
CitedTrussed Steel Concrete Ltd v Green 1946
A company director required to work full time for the company in return for a salary may be an employee: ‘… the question I have to consider is . . whether a managing director serving under a contract such as that by which Mr Green is bound is a . .
CitedAnderson v James Sutherland (Peterhead) Ltd 1941
The court discussed the authorities on the question of whether a managing director of a company was an employee or contractor. ‘Each of the decisions was given in cases where the context played a vital part in the conclusions arrived at.’ . .
CitedBritish Leyland Motor Corporation Ltd v Armstrong Patents Co Ltd HL 1986
The claimant’s product was made from drawings. The drawings were protected as copyright artistic works. They were reproduced in a three dimensional form by the claimant’s own products. Someone who copied the claimant’s products indirectly copied the . .
CitedSecretary of State for Trade and Industry v Bottrill EAT 28-May-1998
There is no rule of law to suggest that a sole director and owner of majority of shareholding could not be an employee and entitled to redundancy payment on the liquidation of the company. ‘The higher courts have taken the view that the issue as to . .
CitedLakeview Computers Plc v Steadman 26-Nov-1999
. .

Cited by:

CitedA Fulton Company Limited v Totes Isotoner (UK) Limited CA 4-Nov-2003
The defendants appealed a finding that they had infringed the claimant’s unregistered design rights in collapsible umbrellas. The defendants said the law protected only the design as a whole, and that only part had been copied.
Held: Authority . .
Appeal fromUltraframe UK Limited v Clayton, Fielding and Others CA 12-Dec-2003
The company was 100% owned by its designer. He purported to retain the design right.
Held: The designer held the rights in trust for the company. An assignment by a shareholder holding all the shares in a company was possible, but not when the . .
See AlsoUltraframe UK Ltd v Clayton and others ChD 14-Feb-2003
Laddie J said: ‘I have to resolve a dispute between the parties on the issue of costs following on from the determination of the preliminary issues ordered to be heard by His Honour Judge Behrens. It is difficult to summarise the complex . .
See AlsoUltraframe UK Ltd v Fielding and others ChD 12-Jan-2004
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Employment

Updated: 16 May 2022; Ref: scu.178499

Merlet and Another v Mothercare Public Ltd: ChD 13 Apr 1984

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.

Judges:

Walton J

Citations:

[1986] RPC 115

Jurisdiction:

England and Wales

Intellectual Property

Updated: 15 May 2022; Ref: scu.442599

Britain v Hanks Bros and Co: 1902

The plaintiff claimed copyright in a model soldier cast in metal as a statue. The defendant argued that the statute was intended to apply only to substantial works of art, such as busts, large sculptures and casts of copies of works recognised as works of art, and there was no artistic merit in the model soldiers in the sense contemplated by the Act.
Held: The first question was whether the toy representation was ‘an artistic thing – an artistic production within the Act. Being a toy was not conclusive against its being a sculpture. Wright J said: ‘It is tolerably certain that some toys would not fall within the protection of the Act; and the question whether this soldier’s or mounted yeoman’s figure comes within it must be decided upon evidence as to its artistic character. The evidence before me is all one way. A war correspondent has been called who is at the same time an artist and has shown several of these figures to be artistic productions, in that the anatomy is good, and that the modelling shows both technical knowledge and skill. I see nothing to quarrel with in that statement. On the whole, therefore, although I have great doubt as to the meaning of the Act, I am prepared to hold that the production of a metal figure of a mounted yeoman such as this is good enough to be protected by the provisions of the Act if [certain other provisions] are complied with.’

Judges:

Wright J

Citations:

(1902) 86 LT 765

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 . .
CitedLucasfilm Ltd and Others v Ainsworth and Another SC 27-Jul-2011
The claimant had produced the Star War films which made use of props, in particular a ‘Stormtrooper’ helmet designed by the defendant. The defendant had then himself distributed models of the designs he had created. The appellant obtained judgment . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 May 2022; Ref: scu.384437

Spottiswoode v Clark: 11 Dec 1846

A plaintiff seeking an injunction to restrain publication of documents must first demonstrate a title in them.

Citations:

[1846] EngR 1197, (1846) 1 Coop T Cott 254, (1846) 47 ER 844

Links:

Commonlii

Jurisdiction:

England and Wales

Cited by:

CitedPrince Albert v Strange ChD 8-Feb-1849
The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
Held: . .
Lists of cited by and citing cases may be incomplete.

Litigation Practice, Intellectual Property

Updated: 15 May 2022; Ref: scu.303092

MCA Records Inc and Another v Charly Records Ltd and others: ChD 22 Mar 2000

A licence to record is a one-off event authorising recording for the period of the licence.

Judges:

Rimer J

Citations:

Unreported, 22 March 2000

Jurisdiction:

England and Wales

Cited by:

CitedLudlow Music Inc v Williams and others ChD 2-Oct-2000
The claimant sought damages for copyright infringement in respect of two works which parodied a song to which they owned the rights.
Held: The amount copied, being as much as a quarter of the original work, meant that the claim was . .
Appeal fromMCA Records Inc and Another v Charly Records Ltd and others (No 5) CA 5-Oct-2001
The court discussed the personal liability of a director for torts committed by his company: ‘i) a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 May 2022; Ref: scu.272768

Sony Computer Entertainment and Others v. Ball and Others: ChD 17 May 2004

Pumfrey J considered the test to be applied when a party applied for leave to commence proceedings for contempt of court against another party: ‘It seems to me, in the light of the judgment in Malgar v. Leach, that the discretion to permit applications of this nature to proceed must be exercised with very great caution. It can hardly be appropriate, it seems to me, to permit a general investigation of the facts surrounding a particular infringement in the context of contempt proceedings. That is why I have excluded from the permission which I have granted the greater number of the non-disclosures and misrepresentations alleged by the claimants.

It seems to me also that before this discretion is exercised, the claimant must satisfy the court that there is a strong case – and preferably an admitted case – that a particular misrepresentation is untrue.’ and
‘the court must be astute not to allow tenuous or argumentative applications to commit to go forward.’

Judges:

Pumfrey J

Citations:

[2004] EWHC 1192 (Ch)

Jurisdiction:

England and Wales

Citing:

See AlsoKabushiki Kaisha Sony Computer Entertainment Inc., Sony Computer Entertainment Europe Limited, Sony Computer Entertainment UK Limited v Ball, and others ChD 19-Jul-2004
The claimant sought summary judgment in a claim that the defendant had manufactured computer chips which would be used with their playstation computer games consoles to avoid their copy protection systems.
Held: The fact that the chips only . .
AppliedMalgar Ltd v R E Leach Engineering Ltd ChD 1-Nov-1999
The Civil Procedure Rules could not change the substantive law. It therefore remained necessary for it to be shown that in addition to knowing that what was said was false, the party had to have known that what was being said was likely to interfere . .

Cited by:

CitedKirk v Walton QBD 24-Jul-2008
The defendant sought leave to bring proceedings for contempt of court against the claimant saying that she had had no honest belief in the matters deposed in her statement of truth, in that she had substantially exaggerated her injuries.
Held: . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contempt of Court

Updated: 15 May 2022; Ref: scu.272262

Harrods Limited v Harrods (Buenos Aires) Ltd and Harrods (South America) Ltd: ChD 15 Jan 1997

Judges:

Neuberer J

Citations:

[1997] FSR 420

Jurisdiction:

England and Wales

Citing:

CitedAnheuser-Busch v Budejovicky Budvar CA 1984
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 . .
CitedHarrods 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 . .

Cited by:

Appeal fromHarrods Limited v Harrods (Buenos Aires) Ltd and Harrods (South America) Ltd CA 21-May-1998
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 May 2022; Ref: scu.270274

Sony Music Entertainment Inc and another v Prestige Records Ltd and another: ChD 17 Feb 2000

On a case management hearing, the defendants made admissions on which judgment was entered. The master reserved but later awarded costs. The defendants appealed against the costs order saying that the claimants had proceeded unnecessarily aggressively and had failed to disclose evidence in a timely way. The appeal took effect as a rehearing. Intellectual property cases should be subject to the same overriding objectives as in other cases. In this case the order was correct. An appeal to a High Court judge against an order for costs, was a rehearing, and such a judge was free to exercise his discretion accordingly. Where however the issue related to something specifically within the knowledge of the first instance judge such as the proportionality of the costs to the matter in cause this was to be disturbed only rarely. That the award was made on what was essentially a case management conference should not make a difference of principle.

Citations:

Gazette 17-Feb-2000, Times 02-Mar-2000

Jurisdiction:

England and Wales

Costs, Intellectual Property

Updated: 15 May 2022; Ref: scu.89399

Mead Corporation and Another v Riverwood Multiple Packaging Division of Riverwood Etc: ChD 28 Mar 1997

The Court must have evidence of a foreign company’s involvement in an infringement before a joinder could be ordered.

Judges:

Laddie J

Citations:

Times 28-Mar-1997, [1997] FSR 484

Cited by:

CitedSea Shepherd UK v Fish and Fish Ltd SC 4-Mar-2015
Accessory Liability in Tort
The court considered the concept of accessory liability in tort. Activists had caused damage to vessels of the respondent which was transporting live tuna in cages, and had caused considerable damage. The appellant company owned the ship from which . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Torts – Other

Updated: 15 May 2022; Ref: scu.83587

Coca-Cola Co and Another v Gilbey and Others: ChD 10 Oct 1995

A defendant in an infringement case was ordered to provide information on his associate co-infringers despite his claimed risk of violence. Such a threat was no defence to an action for contempt of court. Duress in civil cases goes as to mitigation only and does not operate as a defence.

Citations:

Times 28-Nov-1995, Independent 10-Oct-1995

Cited by:

CitedThe Coca-Cola Company and Another v Cengiz Aytacli and others ChD 30-Jan-2003
The claimant having succeeded in an action against the defendants, now sought an order for their committal for contempt, accusing them of having given false evidence, and of having failed to comply with court orders made. The defendant asserted a . .
Lists of cited by and citing cases may be incomplete.

Contempt of Court, Intellectual Property

Updated: 15 May 2022; Ref: scu.79253