Tag: Intellectual Property

WWF – World Wide Fund for Nature (Formerly World Wildlife Fund); World Wildlife Fund Inc v World Wrestling Federation Entertainment Inc: CA 27 Feb 2002

The claimant sought enforcement of a contract restricting the use by the appellant defendant of the initials ‘WWF’ in their trading. The agreement had been reached in settlement of an action for breach of the claimant’s trade mark rights. The claimant was particularly concerned as to the injurious association with the respondent, and its use of the mark on the Internet.
Held: The scratch logo used by the federation was a clear breach. They had not seriously sought to argue that they were not in breach of the agreement. The protection of the intellectual property rights of one business inevitably implies some restriction on the rights of others with potentially conflicting interests. There was no undue interference in the freedom of the defendant to trade. The breaches were clear, and the agreement was to be upheld. Appeal against summary judgement dismissed.

Judges:

Lord Phillips M.R., Lord Justice Judge, Lord Justice Carnwath

Citations:

Times 12-Mar-2002, Gazette 11-Apr-2002, [2002] EWCA Civ 196

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Three Rivers District Council and Others v Governor and Company of The Bank of England (No 3) HL 22-Mar-2001
Misfeasance in Public Office – Recklessness
The bank sought to strike out the claim alleging misfeasance in public office in having failed to regulate the failed bank, BCCI.
Held: Misfeasance in public office might occur not only when a company officer acted to injure a party, but also . .
Appeal from – WWF -World Wide Fund for Nature (Formerly World Wildlife Fund), World Wildlife Fund Inc v World Wrestling Federation Entertainment Inc ChD 1-Oct-2001
The Fund sought summary relief against the use of the sign ‘WWF’ by the defendants, in breach of a contract. The defendants urged that the contract operated in restraint of trade. There had been long running and widespread trade mark disputes, . .

Cited by:

See Also – World Wide Fund for Nature (Formerly World Wildlife Fund), World Wildlife Fund Incorporated v World Wrestling Federation Entertainment Incorporated – Intervener Jakks Pacific Llc CA 27-Mar-2003
. .
See Also – WWF-World Wide Fund for Nature and Another v World Wrestling Federation Entertainment Inc ChD 16-Feb-2006
. .
See Also – WWF (World Wide Fund for Nature) and Another v World Wrestling Federation Entertainment Inc CA 2-Apr-2007
The parties had disputed use of the initals WWF, with a compromise reached in 1994 allowing primary use by the Fund with restricted use by the Federation. The Federation now appealed an award of damages made after a finding of a breach of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contract, Commercial

Updated: 25 October 2022; Ref: scu.167702

Steven Mclellan, Distribuidora Internacional De Medicamentos Y Equipo Medico, SA De CV, Richard Paul Hayes-Pankhurst, Graham Keith Lacy, Julian Francis Ralph Swan (Patent): IPO 14 Oct 2010

IPO An uncontested application was filed by Steven McLellan under rule 10(2) of the Patents Rules 2007. As a result, it was found that he should be mentioned as a joint inventor in the published patent application along with Richard Paul Hayes-Pankhurst, Graham Keith Lacy and Julian Francis Ralph Swan, and directed that an addendum slip mentioning him as a joint inventor be prepared for the published patent application.

Judges:

Mrs S Williams

Citations:

O/350/10, [2010] UKIntelP o35010, GB 0905015.4

Links:

Bailii

Intellectual Property

Updated: 22 October 2022; Ref: scu.458112

Asphalt Re-Lay Ltd and NuPhalt Limited (Patent): IPO 4 Feb 2010

Both sides requested that the comptroller should decline to deal with a reference under section 72 in light of parallel proceedings in the Patents Court. The Hearing Officer concluded that it was clearly undesirable to have the same or largely similar issues litigated both before the comptroller and the court. He was satisfied that the question of whether these patents should be revoked was one which would now more properly be determined by the court. He therefore declined to deal with the reference.

Citations:

[2010] UKIntelP o04210

Links:

Bailii

Statutes:

Patents Act 1972

Intellectual Property

Updated: 22 October 2022; Ref: scu.457848

Loadhog Limited v Polymer Logistics Bv (Patent): IPO 28 Jan 2010

IPO The defendant in these revocation proceedings requested an interim award of costs above the published scale to recover costs which were incurred as a consequence of what they claimed was unreasonable conduct on the part of the claimant in relation to the statement of grounds.
The Hearing Officer decided on the basis of the papers of the case that there was no reason to award costs above the published scale, but he did award scale costs against the claimant in respect of preparation for a preliminary hearing on strike-out. The case continues.

Citations:

[2010] UKIntelP o03110

Links:

Bailii

Intellectual Property

Updated: 22 October 2022; Ref: scu.457834

Leonard Stockley v Husqvarna UK Ltd (Patent): IPO 30 Dec 2009

IPO The patent concerns an electric lawnmower, with a spool holder for storing the electric cable integrally formed on an outside surface of the grass-box. The validity of some of the claims was challenged on the basis of a prototype lawnmower kept in Mr Stockley’s garage, that he showed to his neighbour approximately two months before the priority date of the patent.
The hearing officer found that the circumstances of the disclosure by Mr Stockley to his neighbour constituted making it available to the public, so it formed part of the state of the art. Other individuals who saw the invention were found to be under an obligation of confidentiality – express or implied.
The purpose of Mr Stockley’s prototype was to develop a retractable lawnmower cable that feeds and rewinds as necessary to keep the cable off the ground when in use (to reduce the possibility of cutting through the cable). Although this was not quite the same as the purpose of Husqvarna’s invention, which was to provide a means of storing the cable on a lawnmower when not in use, the hearing officer concluded that the inventive concept in the claim was not so limited, and he decided (using Windsurfing and Pozzoli) that the differences between the prior art (Mr Stockley’s prototype) and the inventive concept in claims 1 and 3 would have been obvious to the skilled person. He allowed the patentee a period of time to amend under Section 75, failing which the patent would be revoked. A decisions on costs was deferred.

Citations:

[2009] UKIntelP o40209

Links:

Bailii

Intellectual Property

Updated: 21 October 2022; Ref: scu.457553

Georgetown University (For Spc/Gb 07/070, Spc/Gb 07/071, Spc/Gb 07/073, Spc/Gb 07/078, Spc/Gb 07/079 and Spc/Gb 07/080); Loyola University of Chicago (For Spc/Gb 07/069 Only); University of Rochester (For Spc/Gb 07/075 Only) (Patent): IPO 29 Dec 2009

IPO Eight applications for SPCs for single active ingredients in the vaccine field were filed. One application concerned the recombinant L1 protein of Human Papillomavirus (HPV) strain HPV6; one application concerned the recombinant L1 protein of Human Papillomavirus strain HPV11; two applications concerned the recombinant L1 protein of Human Papillomavirus strain HPV16 and four applications concerned the recombinant L1 protein of Human Papillomavirus strain HPV18. Although in the name of three applicants, these applications all currently relate to a single licensee.
Two marketing authorisations were filed in support of these eight applications, Gardasil (RTM), which comprises the recombinant L1 proteins of HPV6, HPV11, HPV16 and HPV18, and Cervarix (RTM), which comprises the recombinant L1 proteins of HPV16 and HPV18.
The Hearing Officer considered the relevant ECJ and UK case law and took account of the alternative interpretation of Article 3(b) put forward by the applicant based on materials such as, the particular nature of vaccines; decisions of the courts and practice of national intellectual property offices in other EU and EFTA jurisdictions; previous practice at the UK Office; other official language versions of the Regulation; the explanatory memorandum of the Regulation; ECJ decision C-392/97 (Farmitalia Carlo Erba Srl’s SPC application). The eight SPC applications were found not to meet the requirement under Article 3(b), because the marketing authorisations filed in support of each of these applications comprises a further one or three active ingredients in addition to the active ingredient listed in the product definition of that SPC application. Thus, in each case, a valid authorisation has not been supplied to place the product (for which an SPC has been applied) on the market as a medicinal product.
Since in accordance with Article 10(3) an opportunity to correct the irregularities with these applications has been given, they were rejected under Article 10(4).

Citations:

[2009] UKIntelP o40109

Links:

Bailii

Intellectual Property

Updated: 21 October 2022; Ref: scu.457547

L’Oreal Sa and Others v Ebay International Ag and Others: ChD 22 May 2009

The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site.
Held: The ECJ had not yet clarified the law on accessory liability in trade mark infringement, and the legislation remained unclear. Many of the direct sellers were held to be selling in infringement of the claimants marks. Guidance from the ECJ was required to establish whether the first defendants were also infringing. eBay was under no legal duty to prevent infringement and facilitation of infringement with knowledge and an intention to profit was not enough to render it liable.

Judges:

Arnold J

Citations:

[2009] EWHC 1094 (Ch), [2009] RPC 21, [2009] ETMR 53

Links:

Bailii

Statutes:

Trade Marks Act 1994, First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks 5, Council Directive 76/768/EEC of 27 July 1976 on the approximation of the laws of the Member States relating to cosmetic products

Jurisdiction:

England and Wales

Citing:

Cited – Interflora, Inc and Another v Marks and Spencer Plc and Another ChD 22-May-2009
Each of the parties provided a service delivering flowers. The claimant had a trade mark, and the defendants each purchased the use of that trade mark and variations of it with a search engine (Google) so that a search under the trade mark produced . .
Cited – Quads 4 Kids v Campbell 2006
. .
Cited – Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v Deenik ECJ 23-Feb-1999
The expressions complained of as trade mark infringements were ‘BMW specialist,’ ‘Specialised in BMWs’ and ‘Repairs and maintenance of BMWs’.
Held: The Court proceeded on the basis that this was an Art.5(1)(a) case of identical marks and . .
Cited – Arsenal 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 – Silhouette International Schmied GmbH and Co KG v Hartlauer Handelsgesellschaft mbH ECJ 16-Jul-1998
National Trade Mark rules providing for exhaustion of rights in Trade Marks for goods sold outside area of registration were contrary to the EU first directive on trade marks. A company could prevent sale of ‘grey goods’ within the internal market. . .
Cited – O2 Holdings Limited and O2 (UK) Limited v Hutchison 3G UK Limited ECJ 12-Jun-2008
Use of trade mark in coparative advertising
Europa Trade marks Directive 89/104/EEC Article 5(1) Exclusive rights of the trade mark proprietor Use of a sign identical with, or similar to, a mark in a comparative advertisement Limitation of the effects of a . .
Cited – Sebago and Maison Dubois et Fils SA v GB-Unic SA ECJ 1-Jul-1999
The fact that specific goods bearing a Trade Mark had been authorised for distribution within the EEA, did not mean that the relative trade mark rights had been exhausted. They would only be exhausted where the consent related to each individual . .
Cited – Robelco v Robeco Groep NV ECJ 21-Nov-2002
Europa Directive 89/104/EEC – Article 5(5) – Provisions on protection against use of a sign other than for the purposes of distinguishing goods or services – Extent of such protection – Signs similar to the mark. . .
Cited – Adam Opel AG v Autec AG, intervener: Deutscher Verband der Spielwaren-Industrie eV (Approximation Of Laws) ECJ 25-Jan-2007
Europa Reference for a preliminary ruling Trade Marks Article 5(1)(a) and (2), and Article 6(1)(b) of the First Directive 89/104/EEC Right of a trade mark proprietor to prevent use by a third party of a sign . .
Cited – Anheuser-Busch v Budejovicky Budvar, narodni podnik ECJ 16-Nov-2004
Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor’s exclusive right to the trade mark – Alleged use of the sign as a trade name. . .
Cited – Celine SARL v Celine SA (Approximation Of Laws) ECJ 18-Jan-2007
Celine SA, set up before 1945, traded in Paris creating and marketing clothes and accessories, and had a French registered trade mark Celine for clothes and shoes. Celine Sarl was set up in 1992 as successor to a business selling clothing and . .
Cited – Zino Davidoff SA v A and G Imports Ltd etc ECJ 20-Nov-2001
An injunction was sought to prevent retailers marketing in the EEA products which had been obtained outside the EEA for resale within the EEA but outside the controlled distribution system.
Held: Silence alone was insufficient to constitute . .
Cited – Van Doren + Q GmbH v Lifestyle sports + sportsewar Handelgesellschaft mbH and another ECJ 8-Apr-2003
The claimant was exclusive agent for the trademark holder for Germany. The defendant sold goods it had not bought from the claimant, but bearing the mark. The defendant alleged exhaustion of the claimant’s rights.
Held: The burden of proving . .
Cited – Peak Holding AB v Axolin-Elinor AB (formerly Handelskompaniet Factory Outlet i Loddekopinge AB) ECJ 30-Nov-2004
ECJ (Approximation Of Laws) Trade marks – Directive 89/104/EEC – Article 7(1) – Exhaustion of the rights conferred by a trade mark – Putting on the market of the goods in the EEA by the proprietor of the trade . .
Cited – Montex Holdings v Diesel (Free Movement Of Goods) ECJ 9-Nov-2006
Montex sold jeans in Ireland where the mark Diesel was not protected. The jeans were made by the manufacture of pieces in Ireland (including pieces with the mark on), exporting them under a customs seal procedure to Poland where they were made up . .
Cited – Bristol-Myers Squibb and others v Paranova ECJ 11-Jul-1996
ECJ 1. Reliance by a trade mark owner on his rights as owner in order to prevent an importer from marketing a product which was put on the market in another Member State by the owner or with his consent where . .
Cited – Pharmacia and Upjohn SA, formerly Upjohn SA v Paranova A/S ECJ 12-Oct-1999
ECJ Trade-mark rights – Pharmaceutical products – Parallel imports – Replacement of a trade mark. . .
Cited – Loendersloot v Ballantine and Son and others ECJ 11-Nov-1997
ECJ Article 36 of the EC Treaty – Trade mark rights – Relabelling of whisky bottles. . .
Cited – Parfums Christian Dior v Evora BV ECJ 4-Nov-1997
ECJ As a court common to more than one Member State which has the task of ensuring that the legal rules common to the three Benelux States are applied uniformly and reference to which is a step in the proceedings . .
Cited – Copad SA v Christian Dior couture SA, Vincent Gladel, as liquidator of Societe industrielle lingerie (SIL), Societe industrielle lingerie (SIL) ECJ 23-Apr-2009
ECJ Directive 89/104/EEC – Trade-mark law Exhaustion of the rights of the proprietor of the trade mark – Licence agreement – Sale of goods bearing the trade mark in disregard of a clause in the licence agreement . .
Cited – Boehringer Ingelheim KG and Others v Swingward Ltd and Another ECJ 23-Apr-2002
The applicant sought to restrict the right of parallel importers of its goods to repackage the goods, and re-supply them in packaging on which their trade mark had been re-applied.
Held: The prohibition of quantitative restrictions on imports . .
Cited – Michael Holterhoff v Ulrich Freiesleben ECJ 14-May-2002
A trade mark was found to have been used to describe a method of cutting precious stones, rather than to identify their producer. . .
Cited – Boehringer Ingelheim KG v Swingward Ltd ECJ 6-Apr-2006
Opinion – 1. In the present case the Court of Appeal (England and Wales) (Civil Division) seeks further guidance from the Court of Justice on the effect of the latter’s judgment in Boehringer Ingelheim and Others (‘Boehringer I’). (2) That case . .
Cited – Mastercigars Direct Ltd v Hunters and Frankau Ltd CA 8-Mar-2007
An allegation was made that Cuban cigars imported by the claimant infringed the trade marks of the respondents being either counterfeit or parallel imports, and were impounded. The claimant sought a declaration of non-infringement and their release, . .

Cited by:

Cited – Twentieth Century Fox Film Corporation and Another v Newzbin Ltd ChD 29-Mar-2010
The defendant operated a web-site providing a search facility of the Usenet news system which allowed its users to locate copies of films online for downloading. The claimant said this was an infringement of its copyrights.
Held: The defendant . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 21 October 2022; Ref: scu.346317

MeadWestVaco Corp v Montreuil Offset (Patent): IPO 20 Feb 2009

IPO The patent relates to packaging for optical discs. The initial application for revocation was based on allegations of lack of novelty and inventive step, as well as insufficiency and added matter. The hearing officer allowed amendments which had been offered to address the issues of insufficiency and added matter, and held that the attacks on the thus amended patent based on allegations of lack of inventive step and insufficiency failed.

Citations:

[2009] UKIntelP o05309

Links:

Bailii

Statutes:

Patents Act 1977 72 75

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.457262

Espeed, Inc (Patent): IPO 12 Jan 2009

IPO The invention related to an electronic trading system in which first and second users could issue commands to a trading system by means of game controllers with greater speed and accuracy than by using a keyboard and mouse. An interface was connected to a memory storing sets of controller signal relationships which associated first and second types of game controller with the first and second users respectively, and allowed a signal from a game controller to be converted into a trading system command according to both the particular user and the particular type of controller.
Except for claims relating to providing a further set of relationships associated with the second user and the first type of controller, the hearing officer held all the claims to lack inventive step over a specification disclosing the use of a game-type controller (although not specifically a game controller) adapted to issue trading commands.
However the hearing officer held that that the invention was excluded under section 1(2) as both a computer program and a method in the light of Symbian [2008] EWCA Civ 1066 and Aerotel [2007] RPC 7. He considered that the contribution lay in the interface and did not lie in a new combination of hardware even if it allowed a trading system to be controlled by two game controllers in a way not possible before. The contribution was merely a better program which did not produce any technical improvement in the operation of the hardware, and was still a contribution to business method even if the trading commands were fed into a conventional trading system.

Judges:

Mr R C Kennell

Citations:

[2009] UKIntelP o00909, GB 0802593.4

Links:

Bailii

Intellectual Property

Updated: 20 October 2022; Ref: scu.457242

Smart Holograms Limited,Millington, Lowe, Davidson, Blyth, Kabilan and Marshall: IPO 27 Nov 2008

(Patent) An uncontested application was filed by Smart Holograms Limited under rule 10(2) of the Patents Rules 2007 and section 13(3) of the Patents Act 1977. It was found that Roger Bradley Millington should be mentioned as sole inventor in relation to any patent granted for the invention and directed that an addendum slip mentioning him as sole inventor be prepared for the published patent application. The decision serves as a certificate, issued in accordance with section 13(3), to the effect that Christopher Robin Lowe, Colin Bennett Davidson, Jeffrey Blyth, Satyamoorthy Kabilan and Alexander James Marshall should not have been mentioned as inventors in the published patent application.

Judges:

Mrs S Williams

Citations:

GB 0703189.1, [2008] UKIntelP o31508

Links:

Bailii

Statutes:

Patents Act 1977 13(3)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.457208

Abb Research Ltd, Sean Keeping, Roger Arnold, Martin Ashford, Steve Eeles and Others (Patent): IPO 18 Jul 2008

IPO An uncontested application was filed by ABB Research Ltd under rule 10(2) of the Patents Rules 2007. As a result, it was found that Sean Keeping, Roger Arnold, Martin Ashford and Steve Eeles should also be mentioned as joint inventors in any patent granted for the invention and directed that an addendum slip mentioning them as joint inventors be prepared for the published patent application for the invention.

Judges:

Mrs S Williams

Citations:

[2008] UKIntelP o20508

Links:

Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 20 October 2022; Ref: scu.457083

Blacklight Power Inc (Patent): IPO 17 Apr 2008

The applications relate respectively to a plasma reactor and a laser, both dependent for their operation on a ‘new hydrogen species’. The new hydrogen species involves the electron (the hydrogen atom has one electron) existing in a lower energy state than the lowest possible energy state recognised in standard physics. This arrangement was described in a new theory of atomic physics. The hearing officer considered the likely validity of the new theory. He decided, on the basis of the experimental evidence provided and the acceptance of the theory by the physics community generally, that it was probably not valid. The applications were consequently refused for lack of industrial application and insufficiency.

Judges:

Mr P Marchant

Citations:

[2008] UKIntelP o11408

Links:

Bailii

Statutes:

Patents Act 1977 1

Intellectual Property

Updated: 20 October 2022; Ref: scu.456990

Blacklight Power Inc (Patent): IPO 14 Mar 2008

IPO The applications concerned a method and system for providing a new and more accurate way of describing the properties of electrons in atoms or ions (such as their energy levels) and representing those properties on a display.
Having deferred consideration of inventive step, the hearing officer applied the four step test set out in the Aerotel/Macrossan judgment and found that the contribution resided in the theorem for describing the properties of electrons in atoms and ions and a computer program for generating and displaying the results of the equations representing that theorem. The contribution was found to fall solely within excluded matter being a combination of a scientific theory and a computer program (and a mathematical method).

Judges:

Mr A Bartlett

Citations:

[2008] UKIntelP o07608, GB 0705155.0, GB 0614467.9

Links:

Bailii

Statutes:

Patnts Act 1977 1(1) 1(2)

Intellectual Property

Updated: 20 October 2022; Ref: scu.456962

Taxassist Direct The Accountancy and Tax Service for Small Business: IPO 13 Sep 2007

(Trade Mark: Invalidity) The Hearing concerned requests for extensions of time in which to file corrected evidence and a request by the applicant that that evidence be struck out. The extensions of time were granted and the corrected evidence admitted.

Judges:

Mr R Colombo

Citations:

[2007] UKIntelP o26507

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456807

Skyner (Patent): IPO 23 Jul 2007

The invention is concerned with wall mounted light switches incorporating an electronic timer for switching the lights on and off. The timer can be set by push buttons or by a remote control unit and can be overridden by use of the normal light switch. The hearing officer considered novelty and obviousness of the claims in the light of prior art which had been cited by the examiner during the application process. He found that claims 1 and 7 lacked novelty and that all the claims lacked inventive step. There was no further disclosure in the specification upon which valid claims could be based. The application was therefore refused.

Citations:

[2007] UKIntelP o20507

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456716

DNA Electronics Ltd, Christofer Toumazou, Bhusana Premanode and Leila Shepherd (Patent): IPO 14 May 2007

As a result of an uncontested application filed under Section 13(1) by DNA Electronics Ltd, it was found that Leila Shepherd should be mentioned as a joint inventor in any patent granted for the invention and directed that an addendum slip be prepared mentioning her as a joint inventor for the published patent application for the invention.

Judges:

Mrs S Williams

Citations:

[2007] UKIntelP o12507, O/125/07, GB 2416210

Links:

Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 19 October 2022; Ref: scu.456647

Withers Rogers v Jon Henry Dobson (Patent): IPO 23 Jan 2007

IPO Withers and Rogers had previously applied for the revocation of Mr Dobson’s Patent on behalf of an anonymous client on the grounds that the invention lacked an inventive step. The Hearing Officer issued a decision in which the application was dismissed.
The patentee subsequently requested the issue of a certificate of contested validity under section 65(1). The Hearing Officer agreed to this request and made an order to the effect that the Patent had been unsuccessfully challenged in revocation proceedings before the Comptroller and was found to be valid.

Citations:

[2007] UKIntelP o02807

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 October 2022; Ref: scu.456557

Ajit Weekly (Trade Mark: Invalidity): IPO 29 Dec 2005

Professor Annand set out the combined test of bad faith in a trade mark application: ‘Bad faith is to be judged according to the combined test of dishonesty for accessory liability to breach of trust set out by the majority of the House of Lords in Twinsectra Ltd v Yardley, with Gromax Plasticulture Ltd v Don and Low Nonwovens Ltd providing the appropriate standard, namely acceptable commercial behaviour observed by reasonable and experienced persons in the particular commercial area being examined.
the upshot of the Privy Council decision in Barlow Clowes is: (a) to confirm the House of Lords’ test for dishonesty applied in Twinsectra, i.e. the combined test; and (b) to resolve any ambiguity in the majority of their Lordships’ statement of that test by making it clear that an enquiry into a defendant’s views as regards normal standard of honesty is not part of the test. The subjective element of the test means that the tribunal must ascertain what the defendant knew about the transaction or other matters in question. It must then be decided whether in the light of that knowledge, the defendant’s conduct is dishonest judged by ordinary standard of honest people, the defendant’s own standards of honesty being irrelevant to the objective element.’

Judges:

Professor Ruth Annand

Citations:

[2006] RPC 25, 2283796, [2005] UKIntelP o00406

Links:

IPO, Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Ajit Weekly (Trade Mark: Invalidity) IPO 2-Feb-2005
PO Trade Marks – Inter Partes Decisions – Invalidity . .

Cited by:

Cited – Jules Rimet Cup Ltd v The Football Association Ltd. ChD 18-Oct-2007
The parties disputed on preliminary issues the ownership of the rights in the trade mark ‘World Cup Willie’. The claimant had set out to register the mark, and the defendant gave notice of its intention to oppose. The claimant now alleged threat and . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 October 2022; Ref: scu.456487

Ajit Weekly (Trade Mark: Invalidity): IPO 2 Feb 2005

PO Trade Marks – Inter Partes Decisions – Invalidity

Judges:

Mr J MacGillivray

Citations:

Inv 81371, 2283796, [2005] UKIntelP o03005

Links:

PO, IPO, Bailii

Cited by:

See Also – Ajit Weekly (Trade Mark: Invalidity) IPO 29-Dec-2005
Professor Annand set out the combined test of bad faith in a trade mark application: ‘Bad faith is to be judged according to the combined test of dishonesty for accessory liability to breach of trust set out by the majority of the House of Lords in . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 October 2022; Ref: scu.456208

Fujitsu Limited (Patent): IPO 2 Feb 2004

IPO Excluded fields (refused) The application concerns a system to enable semiconductor design information (IP) to be shared efficiently over a computer network by registered users. Each piece of semiconductor IP includes the detailed design information, a catalog portion to enable items meeting a users search criteria to be located and supplementary information to enable the user to select the most suitable piece from those meeting his general requirements.
The hearing officer found that the invention was concerned with administrative processes of the sort considered to fall within the business method exclusion and moreover that it made no technical contribution.

Judges:

Mr A Bartlett

Citations:

O/031/04, [2004] UKIntelP o03104, GB9902887.0

Links:

PO, Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 17 October 2022; Ref: scu.455854

Generics (UK) Ltd and others v H Lundbeck A/S: PatC 4 May 2007

Kitchin J said: ‘The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.’

Judges:

Kitchin J

Citations:

[2007] EWHC 1040 (Pat), [2007] RPC 32

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Generics (UK) Ltd v H Lundbeck A/S CA 2-Aug-2006
. .
Cited – Brugger v Medic-Aid Ltd (No 2) ChD 1996
B alleged infringement by M of its patented nebulizer. M replied saying that the claims failed for obviousness. Features of the nebulizer were admittedly old and well known, but the claimant asserted a new mechanism which reduced the size of the . .

Cited by:

Cited – Conor Medsystems Inc v Angiotech Pharmaceuticals Inc and others HL 9-Jul-2008
The respondents had applied for and obtained an order to revoke the appellant’s patent of a stent for obvousness. Though the parties had settled, the public law element required the intervention of the Comptroller General. The House was asked about . .
Dictum Approved – H Lundbeck A/S v Generics (UK) Ltd and others CA 10-Apr-2008
The court heard an appeal against a finding that a patent for a chemical compound was invalid for insufficiency.
Held: The appeal succeeded.
Enough information to ‘work the invention’ meant in order to make the product. . .
Cited – W L Gore and Associates Gmbh v Geox Spa PatC 7-Oct-2008
The claimants sought a declaration of non-infringement of four patents relating to waterproof fabrics for shoes.
Held: The patents could not be set as invalid for obviousness. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 17 October 2022; Ref: scu.251661

V Vehicleoptions.Co.Uk (Trade Mark: Invalidity): IPO 21 Nov 2003

The applicant for invalidity stated that they had made substantial use of the mark VEHICLEOPTIONS from December 1998; that Mr Akram had been appointed a franchisee on 29 July 1999 and that termination of the agreement between the parties had been given on 2 February 2000. Thus Mr Akram was a franchisee when he applied to register the mark in suit on 11 February 2000. Therefore, that application had been made in bad faith.
Both parties filed evidence but in his consideration under Section 5(4)(a) – Passing Off – the Hearing Officer observed that the applicant’s evidence of use up until 11 February 2000 was not well focused and he was unable to conclude that they had the necessary reputation and goodwill at that date. Invalidity failed on this ground.
As regards the ground under Section 3(6) the Hearing Officer noted that the agreement between the parties did not mention ownership of marks. However, he accepted that Mr Akram must have been aware that the applicant carried on a business under the trade mark VEHICLEOPTIONS when he was appointed as a franchisee and he was not therefore in a position to claim ownership of the mark in suit when he applied for registration at a later date. Invalidity thus succeeded on this ground.
There was a parallel dispute about the registration and ownership of internet names but the Hearing Officer was only able to deal with the trade mark side of the dispute

Judges:

Mr S P Rowan

Citations:

[2003] UKIntelP o36803, O/368/03

Links:

Bailii

Intellectual Property

Updated: 16 October 2022; Ref: scu.455781

Sumitomo Rubber Industries Limited (Patent): IPO 14 Nov 2003

IPO The Hearing Officer found that the proprietor, represented by the General Manager (the Directing Mind), had effectively taken reasonable care to see that the sixteenth year renewal fee was paid by issuing standing instructions that renewal fees should be paid automatically on any overseas patent which was licenced, even if its Japanese parent patent was abandoned. The fact that the subject patent was licenced meant that the fee should have been paid and so the decision by an employee to abandon the patent by not paying the renewal fee was contrary to the proprietor’s standing instructions. That decision was not something the General Manager could be expected to have foreseen. The Hearing Officer therefore concluded that the proprietor had taken reasonable care to see that the renewal fee was paid and allowed the application for restoration.

Judges:

Mr M C Wright

Citations:

[2003] UKIntelP O35103, GB 2176409

Links:

Bailii

Statutes:

Patents Act 1977 28(3)

Intellectual Property

Updated: 16 October 2022; Ref: scu.455778

Synseal Extrusions Limited v Ultraframe (UK) Limited: IPO 13 May 2003

Patent – Application for revocation withdrawn. Costs agreed by parties. The objections were reviewed and no order for revocation was made.

Judges:

Mr M G Wilson HO

Citations:

[2003] UKIntelP o17603, O/176/03, GB 2266545

Links:

Bailii

Statutes:

Patenst Act 1977 72

Intellectual Property

Updated: 16 October 2022; Ref: scu.455566

Koito Manufacturing Co Ltd and Akinori Matsumoto and Takayuki Iwaki (Patent): IPO 31 Mar 2003

PO Patent Office – Ex Parte Decisions – As a result of an uncontested application filed under section 13(1) by Koito Manufacturing Co Ltd, it was found that Akinori Matsumoto and Takayuki Iwaki should also be mentioned as joint inventors in any patent granted for the invention and directed that an addendum slip mentioning them as joint inventors be prepared for the published application of the patent.

Judges:

Mrs Williams

Citations:

O/081/03, GB 0124450.8, [2003] UKIntelP o08103

Links:

PO, Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 16 October 2022; Ref: scu.455499

Ford Motor Company (Patent): IPO 5 Dec 2002

The application was concerned with a method of creating items according to a schedule based on the location to which the items were to be transported. The examiner had not searched the application because in his view it related to a method of doing business. A report under s18(3) had been issued to the effect that the invention was not patentable by virtue of section 1(2)(c) and offering the applicant the opportunity to be heard or withdraw the application. In the absence of any response from the applicant the HO refused the application on the grounds that the invention related to a method of doing business and was thus excluded.

Judges:

Mrs P Everett

Citations:

[2002] UKIntelP o01003, GB 0123911.0

Links:

PO, Bailii

Statutes:

Patents Act 1977 1(2)(c) 18(3)

Intellectual Property

Updated: 16 October 2022; Ref: scu.455405

EE Elizabeth Emanuel (Trade Mark: Revocation): IPO 17 Oct 2002

IPO In the parallel opposition proceedings (BL O/024/02) which has been reviewed in some detail the Hearing Officer concluded that as Ms Emanuel had assigned rights in this mark together with the goodwill in the business to the present proprietors, opposition under Section 3(3)(b) – which is the equivalent to Section 46(1)(d) in revocation proceedings – failed because any deception or confusion of the public would be short term and arose as a consequence of the assignment and the departure of Ms Emanuel from the business.
In these proceedings the same issue was involved – deception of the public. In these proceedings the relevant date was the date of the hearing (18 April 2002) whereas in the opposition proceedings the relevant date was 18 March, 1998. As the Hearing Officer had concluded in the opposition proceedings that any deception was likely to be short term until the public became aware that Ms Emanuel had left the business, he concluded that the registered proprietors must be in a better position some three years later in that the public would have become more aware that Ms Emanuel was no longer associated with them. Deception of the public was therefore less likely. The Revocation action based on Section 46(1)(d) thus failed.

Judges:

Mr M Knight

Citations:

2161562B, [2002] UKIntelP o42502, O/425/02

Links:

IPO, Bailii

Statutes:

Trade Marks Act 1994 46(1)(d)

Citing:

See Also – ‘Elizabeth Emanuel’: Application No 2009499 TMR 9-Jun-1998
cw Inter Partes Decisions – Trade Marks – Opposition . .

Cited by:

See Also – Elizabeth Emanuel (Trade Mark: Opposition) IPO 17-Oct-2002
IPO The opponent in these proceedings commenced to design and trade in clothing under the name EMANUEL about 1977. A shop was opened in Chelsea in 1986 but due to the breakdown of her marriage the shop closed in . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 16 October 2022; Ref: scu.455311

Accenture Global Services v OHMI – Silver Creek Properties (Acsensa) (Intellectual Property): ECFI 7 Oct 2010

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark acsensa – Earlier Community and national word and figurative marks ACCENTURE and accenture – Relative ground for refusal – No likelihood of confusion – No similarity of signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Obligation to state reasons – Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009).

Citations:

T-244/09, [2010] EUECJ T-244/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 16 October 2022; Ref: scu.425275

Dbt Automation Gmbh and Dr Abel (Patent) – O/327/02: IPO 7 Aug 2002

As a result of an uncontested application filed under section 13(1) by DBT Automation GmbH, it was found that Dr Dirk Abel should be mentioned as a joint inventor in any patent granted for the invention and directed that an addendum slip mentioning him as a joint inventor be prepared for the published application of the patent.

Judges:

Mrs S Williams

Citations:

O/327/02, [2002] UKIntelP o32702

Links:

PO, PO, Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Dbt Automation Gmbh and Dr Dirk Abel (Patent) – O/328/02 IPO 7-Aug-2002
As a result of an uncontested application filed under section 13(1) by DBT Automation GmbH, it was found that Dr Dirk Abel should be mentioned as a joint inventor in any patent granted for the invention and directed that an addendum slip mentioning . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 October 2022; Ref: scu.455224

Dbt Automation Gmbh and Dr Dirk Abel (Patent) – O/328/02: IPO 7 Aug 2002

As a result of an uncontested application filed under section 13(1) by DBT Automation GmbH, it was found that Dr Dirk Abel should be mentioned as a joint inventor in any patent granted for the invention and directed that an addendum slip mentioning him as a joint inventor be prepared for the published application of the patent.

Judges:

Mrs S Williams

Citations:

O/328/02, [2002] UKIntelP o32802

Links:

PO, PO, Bailii

Jurisdiction:

England and Wales

Cited by:

See Also – Dbt Automation Gmbh and Dr Abel (Patent) – O/327/02 IPO 7-Aug-2002
As a result of an uncontested application filed under section 13(1) by DBT Automation GmbH, it was found that Dr Dirk Abel should be mentioned as a joint inventor in any patent granted for the invention and directed that an addendum slip mentioning . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 October 2022; Ref: scu.455225

H Lundbeck A/S (Patent): IPO 10 Jul 2002

IPO The applicants did not offer observations to meet the examiners objection that the product had already been the subject of a certificate. Subsequent warnings that failure to reply would result in rejection and an invitation to be heard also failed to illicit a response. Therefore the application for an SPC was rejected.

Judges:

Mr R Walker

Citations:

[2002] UKIntelP o27502, O/275/02, SPC/GB/98/010

Links:

PO, PO, Bailii

Intellectual Property, European

Updated: 15 October 2022; Ref: scu.455187

The Thrombosis Research Institute and Trigen Limited v West Pharmaceutical Services Drug Delivery and Clinical Research Centre Limited (Formerly Danbiosyst) Or, In The Case of The Usa, Peter Watts (Patent): IPO 6 Feb 2002

PO Patents – Inter Partes Decisions
IPO Patents – Inter Partes Decisions – The claimant requested that the comptroller decline to deal with a reference under section 12(2) on the grounds of the complexity of the issues. The defendant consented to the request, but on the grounds that there were substantially identical grounds before the High Court.
The request was refused on claimants grounds, but granted on the defendants grounds.

Judges:

Mr D J Barford

Citations:

O/058/02, [2002] UKIntelP o05802, PCT/GB98/03511

Links:

PO, PO, Bailii

Statutes:

Patents Act 1977 12

Intellectual Property

Updated: 15 October 2022; Ref: scu.455004

Withers Rogers v Jon Henry Dobson (Patent): IPO 23 Nov 2006

IPO Withers and Rogers, a firm of patent attorneys, applied for the revocation of Mr Dobson’s patent on behalf of an anonymous client. The grounds were that the invention was not patentable because it lacked an inventive step having regard to certain prior art, notably patent number US5347765 and an alleged marketing brochure from a company called Joran Bor A/S. The invention relates to an elongate mortar raking tool coated with diamond grit for use with an angle grinder.
The claimant failed to provide sufficient evidence to prove the publication date of the non-patent citation, though the obviousness of the invention in the event that the citation’s date had been proven was considered.
The hearing officer found the patent to be inventive over the cited prior art and dismissed the application for revocation.

Citations:

[2006] UKIntelP o33106

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 15 October 2022; Ref: scu.454912

Secretary of State for Defence v R C D Young and C R Chatwin (Patent): IPO 10 Apr 2001

Inter Partes Decisions – Patents – This decision gave formal effect to a draft order agreed between the parties following the hearing officers earlier decision in which he found some aspects of the invention belonged to one party and some to the other. The hearing officer allowed the claimant to file a new patent application in respect of part of the matter in the earlier application, having first satisfied himself that the part in question was adequately identified.

Judges:

Mr P Hayward

Citations:

O/174/01, [2001] UKIntelP o17401, GB 2317487

Links:

PO, PO, Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454195

Amit Jain v Asahi (Patent): IPO 10 Apr 2001

IPO As a result of an uncontested application filed under section 13(1) by Amit Jain, it was found that Amit Jain should be mentioned as a joint inventor in any patent granted for the invention and directed that an addendum slip mentioning him as a joint inventor be prepared for the published patent application.

Judges:

Mrs S Williams

Citations:

O/173/01, [2001] UKIntelP o17301, GB 9813892.8

Links:

PO, PO, Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 13 October 2022; Ref: scu.454171

Magic Ball (Trade Mark: Opposition): IPO 1 Aug 2000

cw Appeals to the Appointed Person Decisions – Trade Marks – Opposition

Judges:

Mr S Thorley QC

Citations:

OPP 46130, 2100056, [2000] UKIntelP o29700

Links:

PO, IPO, Bailii

Citing:

See Also – Magic Ball (Trade Mark: Revocation) IPO 17-Mar-1999
cw Inter Partes Decisions – Trade Marks – Revocation . .
See Also – Magic Ball (Trade Mark: Opposition) IPO 29-Apr-1999
cw Inter Partes Decisions – Trade Marks – Opposition . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 13 October 2022; Ref: scu.453911

Euroguard (Trade Mark: Opposition): IPO 25 Feb 2000

cw Inter Partes Decisions – Trade Marks – Opposition

Judges:

Mr M Foley

Citations:

OPP 44120, 2015812, [2000] UKIntelP o07100

Links:

PO, IPO, Bailii

Citing:

See Also – Euroguard (Trade Mark: Opposition) IPO 26-Mar-1999
cw Inter Partes Decisions – Trade Marks – Opposition . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 October 2022; Ref: scu.453729

Magic Ball (Trade Mark: Opposition): IPO 29 Apr 1999

cw Inter Partes Decisions – Trade Marks – Opposition

Judges:

Mr M Foley

Citations:

OPP 46130, 2100056, [1999] UKIntelP o12399

Links:

PO, IPO, Bailii

Citing:

See Also – Magic Ball (Trade Mark: Revocation) IPO 17-Mar-1999
cw Inter Partes Decisions – Trade Marks – Revocation . .

Cited by:

See Also – Magic Ball (Trade Mark: Opposition) IPO 1-Aug-2000
cw Appeals to the Appointed Person Decisions – Trade Marks – Opposition . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 October 2022; Ref: scu.453465

Magic Ball (Trade Mark: Revocation): IPO 17 Mar 1999

cw Inter Partes Decisions – Trade Marks – Revocation

Judges:

Mr M Foley

Citations:

REV 9042 / 9043, 1240037, 240907, [1999] UKIntelP o08499

Links:

PO, IPO, Bailii

Cited by:

See Also – Magic Ball (Trade Mark: Opposition) IPO 29-Apr-1999
cw Inter Partes Decisions – Trade Marks – Opposition . .
See Also – Magic Ball (Trade Mark: Opposition) IPO 1-Aug-2000
cw Appeals to the Appointed Person Decisions – Trade Marks – Opposition . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 October 2022; Ref: scu.453442

Euroguard (Trade Mark: Opposition): IPO 26 Mar 1999

cw Inter Partes Decisions – Trade Marks – Opposition

Judges:

Dr W J Trott

Citations:

OPP 47876, 2107451, [1999] UKIntelP o09799

Links:

PO, IPO, Bailii

Cited by:

See Also – Euroguard (Trade Mark: Opposition) IPO 25-Feb-2000
cw Inter Partes Decisions – Trade Marks – Opposition . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 October 2022; Ref: scu.453427