Tag: Intellectual Property

June Duncan (Patent): IPEC 26 Feb 2015

The application relates to a heat therapy bra. Inserts containing flax seeds and dried lavender flowers are heated for example in a microwave and placed into pockets inside the cups of the bra. The prior art documents showed that it was known to provide bras with pockets to receive heatable inserts (for example containing gel and other materials). It was considered common general knowledge to utilise flax seeds and lavender in heatable pads used for relaxation and pain relief. Applying the approach set out in Windsurfing and Pozzoli the hearing officer found that the differences found between the inventive concept of the bra defined in claim 1 and the prior art would be obvious to the skilled person and refused the application as lacking an inventive step required by section 1(b).

[2015] UKIntelP o09415
Bailii
England and Wales

Intellectual Property

Updated: 29 December 2021; Ref: scu.545463

Matratzen Concord v OHMI – KBT (Arktis): ECFI 16 Apr 2015

ECJ (Working Document) Community trade mark – forfeiture proceedings – Community word mark ARKTIS -Usage seriousness of the mark – Article 51, paragraph 1 a) of Regulation (EC) No 207/2009 – Form of use of the mark – Proof usage for registered products – Consent of the trade mark owner

Frimodt S. Nielsen, P
T-258/13, [2015] EUECJ T-258/13, ECLI : EU: T: 2015 207
Bailii
Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 29 December 2021; Ref: scu.545447

Airscience Technology International Limited and Wallenius Water Ab (Patent): IPO 19 Aug 2014

The decision dealt with a number of preliminary issues in an action for revocation brought by Airscience Technology International Limited. In particular the decision concluded that the claimant’s case was sufficiently set out in its amended statement of case; that the claimant’s evidence in chief was admissible and that the question of whether the defendant’s proposed amendments to the claims of the patent was a matter that needed to be considered. The Hearing Officer did however strike out the claimant’s evidence in reply as it was not strictly in reply to the defendant’s evidence. The claimant was given a further period of time to refile evidence in reply.

[2014] UKIntelP o37014
Bailii
England and Wales

Intellectual Property

Updated: 28 December 2021; Ref: scu.543140

Mastercard International Incorporated (Patent): IPO 17 Dec 2014

The application relates to redeeming credits in a loyalty program, such as airmiles in an airline frequent flyer program, against purchases a retail environment and processing the transaction on a point-of-sale (‘POS’) terminal. In order to complete the transaction the cost of the purchase must be converted from a POS terminal currency, using an exchange rate, to the equivalent number of loyalty program credits. If the user has sufficient credits available the transaction will be processed, if not the transaction will be declined. The Hearing Officer found that the invention related to computer implemented methods of doing business as such, could find no saving amendments, and refused the application.

Miss J Pullen
[2014] UKIntelP o55114
Bailii
England and Wales

Intellectual Property

Updated: 28 December 2021; Ref: scu.543163

Kayfoam Woolfson v Recticel Sa and Recticel Ltd (Patent): IPO 17 Jul 2014

The decision concerns whether the Comptroller has jurisdiction to hear the revocation case launched by the claimant under section 72 given that according to the defendant proceedings were at the time pending in both the English Intellectual Property Enterprise Court (IPEC) and in the Northern Ireland Court. The defendant also requested that if the comptroller does have jurisdiction that he should nevertheless certify that the question of revocation would more properly be determined by the court or failing that that the proceedings be stayed pending the outcome of the Northern Ireland proceedings, The hearing officer decided that the comptroller did have jurisdiction to deal with the revocation as there were no other proceedings pending when the proceedings under section 72 were instituted. He also declined to stay the proceedings

Mr P Thorpe
[2014] UKIntelP o31514
Bailii
England and Wales

Intellectual Property

Updated: 28 December 2021; Ref: scu.543133

Martin R H Cane (Patent): IPO 17 Jul 2014

An uncontested application for the claimant to be named as sole inventor and sole proprietor of the patent. It was found that the facts supported the claimant’s case and that the necessary orders and certificates should be made to put the findings into effect.

Mr H Jones
[2014] UKIntelP o31414
Bailii
England and Wales

Intellectual Property

Updated: 28 December 2021; Ref: scu.543136

Crystal World Holdings, Inc (Patent): IPO 26 Jan 2015

The application relates to a system for calculating a sports-related financial index to enable the trading of sports-based financial instruments. The Hearing Officer applied the Aerotel/Macrossan test and decided that the contribution made by the invention fell solely within excluded matter. He also considered the decisions in ATandT Knowledge Ventures LP and CVON and HTC Europe Co. Ltd. v Apple Inc. and concluded that the contribution did not have a relevant technical effect. The application was refused as no more than some combination of a business method and a program for a computer as s

[2015] UKIntelP o03715
Bailii
England and Wales

Intellectual Property

Updated: 28 December 2021; Ref: scu.543123

Bluecava Inc (Patent): IPO 26 Jan 2015

The alleged invention relates to a method and computer system to provide users with a customised or tailored experience when interfacing with networked computer services without disclosing personally identifiable information (PII). A request for user behaviour data containing an identifier of a user’s device is received at a device-indexed data server which retrieves user behaviour data associated with the identifier from the server’s memory and updates the user behaviour data by retrieving additional user behaviour data from an aggregator using non-PII data; and sending the updated user behaviour data to the server that provides services to a user. The device-indexed server never receives PII data from the aggregator and the aggregator never receives an indication of the device identifier from the server. The hearing officer found that the actual contribution of the invention related entirely to a method of doing business which, as it was brought about by a computer program, also related to a computer program, as such. Amongst its submissions the applicant criticized the approach of UK courts in some judgments concerning section 1(2), for example the Court of Appeal’s judgment in Re. Aerotel [2007] RPC 7, and argued that EPO case law should be adopted in favour of UK case law in some instances. The hearing officer said he was bound to follow UK precedents and referred to the Court of Appeal’s judgment in Re. Lantana [2014] EWCA Civ 1463 which affirms that the Aerotel four step test is the correct approach for assessing excluded matter and that the so-called ‘ATandT’ signposts modified by the Court of Appeal in HTC v Apple [2013] EWCA 451 are applicable guides for assessing whether a computer program, in particular, is excluded. Applying this test, the hearing officer found the invention to be excluded by Section 1(2) and refused the application.

[2015] UKIntelP o03815
Bailii
England and Wales

Intellectual Property

Updated: 28 December 2021; Ref: scu.543121

Football Dataco Ltd and Others v Sportradar Gmbh and Another: ECJ 18 Oct 2012

ECJ Directive 96/9/EC – Legal protection of databases – Article 7 – Sui generis right – Database relating to football league matches in progress – Concept of re-utilisation – Localisation of the act of re-utilisation

R. Silva de Lapuerta, acting as P
[2012] EUECJ C-173/11, ECLI:EU:C:2012:642, [2013] FSR 4
Bailii
Directive 96/9/EC
Citing:
Opinion – Football Dataco Ltd and Others v Sportradar Gmbh and Another ECJ 21-Jun-2012
ECJ (Opinion) Directive 96/9/EC – Legal protection of databases – Concepts of extraction and re-utilisation – Location of the act of re-utilisation . .

Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 27 December 2021; Ref: scu.542507

Evonik Oil Additives v OHMI – BRB International (Viscotech): ECFI 19 Nov 2014

ECJ Judgment – Community trade mark – Opposition proceedings – Application for Community word mark Viscotech – national and international word marks earlier VISCOPLEX – Proof of the territorial scope and validity of an earlier international brand – Rule 19, paragraph 2, and Rule 20 paragraph 1 of Regulation (EC) No 2868/95 – Relative ground for refusal – No likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No 207/2009

Frimodt S. Nielsen, P
T-138/13, [2014] EUECJ T-138/13, ECLI: EU: T: 2014 973
Bailii
Regulation (EC) No 207/2009 8(1)(b)

European, Intellectual Property

Updated: 23 December 2021; Ref: scu.538957

Out Of The Blue v OHMI – Dubois And Autre (Funny Bands): ECFI 19 Nov 2014

ECJ Judgment – Community trade mark – Opposition proceedings – Application for the Community word mark FUNNY BANDS – Earlier national trade name FUNNY BANDS – Earlier national Internet domain name ‘www.funny-bands.com’ – Relative ground for refusal – Article 8(4) of Regulation (EC) No 207/2009 – Use of a sign in the course of trade of more than mere local significance – Article 76(2) of Regulation No 207/2009 – Rejection of the opposition

A. Dittrich (Rapporteur), P
T-344/13, [2014] EUECJ T-344/13, ECLI:EU:T:2014:974
Bailii
Regulation (EC) No 207/2009 76(2)

European, Intellectual Property

Updated: 23 December 2021; Ref: scu.538961

Repsol v OHMI – Argiles (Electrolinera): ECFI 18 Nov 2014

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

S. Papasavvas, P
T-308/13, [2014] EUECJ T-308/13
Bailii
Regulation (EC) No 207/2009 8(1)(b)

European, Intellectual Property

Updated: 23 December 2021; Ref: scu.538886

Think Schuhwerk v OHMI – Muller (Voodoo): ECFI 18 Nov 2014

ECJ Judgment – Community trade mark – Invalidity proceedings – Community word mark VOODOO – Absolute grounds for refusal – Lack of distinctive character – Distinctive character – Article 7, paragraph 1, b) and c) of Regulation (EC) No 207/2009 – Bad Faith – Article 52, paragraph 1 b) of Regulation No 207/2009

H. Kanninen (Rapporteur), P
T-50/13, [2014] EUECJ T-50/13
Bailii
Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 23 December 2021; Ref: scu.538887

Conrad Electronic v OHIM – British Sky Broadcasting Group And Sky Ip International (Eurosky): ECFI 18 Nov 2014

ECJ Judgment – Community trade mark – Opposition proceedings – Application for Community word mark EuroSky – Earlier Community word mark SKY – Article 8, paragraph 1 b) of Regulation (EC) No 207/2009

H. Kanninen, P
T-510/12, [2014] EUECJ T-510/12, ECLI: EU: T: 2014 966
Bailii
Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 23 December 2021; Ref: scu.538882

Lumene v OHIM (The Youth Experts): ECFI 18 Nov 2014

ECJ Judgment – Community trade mark – Application for Community word mark THE YOUTH EXPERTS – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009 – Extent of the examination to be carried out by the Board of Appeal – Examination as to the merits conditional on the admissibility of the action – First sentence of Article 59 of Regulation No 207/2009

S. Papasavvas, P
T-484/13, [2014] EUECJ T-484/13, ECLI:EU:T:2014:963
Bailii
Regulation (EC) No 207/2009 7(1)(b)

European, Intellectual Property

Updated: 23 December 2021; Ref: scu.538883

Natura Selection v OHMI – AFOI Anezoulaki (Natur): ECFI 13 Nov 2014

ECJ Judgment – Community trade mark – Opposition proceedings – Application for the Community word mark natur – Earlier application for the figurative mark natura – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009

M. van der Woude, P
T-549/10, [2014] EUECJ T-549/10, ECLI:EU:T:2014:949
Bailii
Regulation (EC) No 207/2009 8(1)(b)

European, Intellectual Property

Updated: 23 December 2021; Ref: scu.538765

Pearce v Ove Arup Partnership Ltd and others: ChD 2 Nov 2001

An architect was accused of deliberate copying of another’s plans in building the Kunsthal in Rotterdam. The case concerned Dutch copyright, and the experts could not agree on the degree of copying required to found a claim.
Held: The expert evidence fell well short of establishing any copying, and the court rejected the allegation entirely. Jacob J: ‘I see no reason why a judge who has formed an opinion that an expert had seriously broken his Part 35 duty should not, in an appropriate case, refer the matter to the expert’s professional body if he or she has one. Whether there is a breach of the expert’s professional rules and if so what sanction is appropriate would be a matter for the body concerned.’ A witness should be given an opportunity to make representations before any referral took place.

Jacob J
[2001] EWHC Ch 455, [2001] EWHC Ch 481
Bailii, Bailii
England and Wales
Citing:
Cited – Routestone Ltd v Minories Finance ChD 1996
A receiver’s management duties will ordinarily impose on him no general duty to exercise the power of sale, or to ‘work’ an estate by refurbishing it before sale. Speaking of the role of an expert witness ‘What really matters in most cases are the . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property, Torts – Other

Updated: 23 December 2021; Ref: scu.263743

Junited Autoglas Deutschland v OHMI – Belron Hungary (United Autoglas) (Judgment): ECFI 16 Oct 2014

ECJ Community trade mark – Opposition proceedings – Application for the Community word mark United Autoglas – Earlier national figurative mark AUTOGLASS – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009

A. Dittrich (Rapporteur), P
T-297/13, [2014] EUECJ T-297/13, ECLI:EU:T:2014:893
Bailii
European
Cited by:
Cited – Starbucks (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.

European, Intellectual Property

Updated: 22 December 2021; Ref: scu.537695

Media CAT Ltd v A: PCC 1 Dec 2010

The claimant sought to make use of the Request for Judgment procedure.
Held: The procedure was not appropriate in this case. There were sufficient disturbing circumstances about the case to warrant a further on notice hearing.

[2010] EWPCC 17
Bailii
England and Wales
Cited by:
See Also – Media Cat Ltd v Adams and Others PCC 18-Apr-2011
The claimants had begun copyright infringement cases. Having been refused a request to be allowed to withdraw the cases as an abuse, their solicitors now faced an application for a wasted costs order.
Held: The court only has jurisdiction to . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 20 December 2021; Ref: scu.428485

Mclaughlin and Harvey Limited and Openhydro Group Limited (Patent): IPO 30 May 2014

Costs, Entitlement – This was a Decision on costs following an earlier substantive Decision on entitlement in favour of the defendants. Although the claimant’s presentation of its case had suffered from some defects, the hearing officer declined to depart from the standard scale of costs. An award on the scale was made to the defendant.

Mr J Elbro
[2014] UKIntelP o23614, EP1980746
Bailii
Patents Act 1977 37
England and Wales

Intellectual Property, Costs

Updated: 17 December 2021; Ref: scu.534563

OR Specific Inc (Patent): IPO 16 Apr 2014

An offer to surrender was not opposed but the proprietor had given notice of an action for revocation pending before the High Court. Having regard to the practice where surrender was offered in revocation before the comptroller, it was considered desirable to bring the offer into the same forum as the revocation action. Surrender was therefore stayed to await the outcome of the court proceedings or any order from the court that the surrender proceedings should continue.

Mrs S E Chalmers
[2014] UKIntelP o17014
Bailii
England and Wales

Intellectual Property

Updated: 17 December 2021; Ref: scu.534534

Sainsbury’s Supermarkets Ltd (Patent): IPO 16 Apr 2014

The alleged invention relates to a computer system and method for executing a point of sale transaction. In particular, the invention provides a point of sale terminal which is capable of receiving first price data from at least one item purchased by a customer and a server which receives both transaction data from the point of sale terminal and second price data pertaining to comparable competitor items from an update server so that the first and second price data can be compared and a voucher issued based on the comparison. The hearing officer found that the actual contribution of the invention related entirely to a method of doing business which, as it was brought about by a computer program, also related to a computer program, as such. The invention was therefore excluded by section 1(2) and the application was refused.

Mr J Houlihan
[2014] UKIntelP o17414
Bailii
Patents Act 1977 1(2)(c)
England and Wales

Intellectual Property

Updated: 17 December 2021; Ref: scu.534538

CBS Songs Ltd v Amstrad Consumer Electronics Plc: CA 1987

Persons other than the Attorney General do not have standing to enforce, through a civil court, the observance of the criminal law as such. However, Sir Denys Buckley considered that such a claim might be maintained as a representative action because, as in Duke of Bedford: ‘the plaintiffs, and all the persons whom they purport to represent, have statutory rights of the same character under the Copyright Act 1956, which the action is designed to protect from infringement resulting from the conduct of the defendants which is complained of. They share, in my judgment, a common interest and a common grievance, such as Lord Macnaghten had in mind. The relief which is primarily claimed is injunctive in a form which would benefit the plaintiffs and all whom they purport to represent in the same way, that is to say, by protecting them from the risk of infringements incited by the defendants.’

Nicholls LJ, Sir Denys Buckley
[1988] Ch 61, [1987] RPC 42
Copyright Act 1956
Citing:
Cited – Duke of Bedford v Ellis HL 10-Dec-1900
Ellis and five others sued on behalf of themselves and all other growers of fruit, flowers, vegetables, roots or herbs to enforce rights conferred on them by the Covent Garden Act 1828 against the Duke of Bedford as the owner of the market. The Duke . .

Cited by:
Appeal from – CBS Songs Ltd v Amstrad Consumer Electronics Plc HL 12-May-1988
The plaintiffs as representatives sought to restrain Amstrad selling equipment with two cassette decks without taking precautions which would reasonably ensure that their copyrights would not be infringed by its users.
Held: Amstrad could only . .
Cited – Bermuda Cablevision Limited and others v Colica Trust Company Limited PC 6-Oct-1997
(Bermuda) An alternative remedy to winding up is available to a shareholder where oppressive conduct is alleged, though the main thrust is that the conduct is unlawful. . .
Cited – Emerald Supplies Ltd and Another v British Airways Plc ChD 8-Apr-2009
The claim was for damages after alleged price fixing by the defendants. The claimants sought to recover for themselves and as representatives of others who had similarly suffered. The defendants sought that the representative element of the claim be . .
Cited – Fish and Fish Ltd v Sea Shepherd UK and Another AdCt 25-Jun-2012
The claimant company was engaged in tuna fish culture off shore to Malta. The defendant ship was owned by a charity which campaigned against breaches of animal preservation conventions. Fish were being transporting live blue fin tuna in towed . .
Cited – Fish and Fish Ltd v Sea Shepherd Uk and Others CA 16-May-2013
The claimant company sought damages after their transport of live tuna was attacked by a protest group. They now appealed against a decision that the company owning the attacking ship was not liable as a joint tortfeasor.
Held: The appeal was . .
Cited – Sea 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.

Criminal Practice, Intellectual Property

Updated: 15 December 2021; Ref: scu.392981

Merck and Co Inc (A Company Incorporated In the United States of America) v Generics (UK) Limited: ChD 27 Nov 2003

Action for infringement of a relating to a method of making a compound called 4-amino-1-hydroxybutylidene-1,1-bisphosphonic acid monosodium salt trihydrate, that is to say the monosodium salt of alendronic acid, more commonly called monosodium alendronate

The Hon Mr Justice Laddie
[2003] EWHC 2842 (Pat), [2004] RPC 31
Bailii
England and Wales

Intellectual Property

Updated: 13 December 2021; Ref: scu.188273

American Cyanamid Co v Ethicon Ltd: HL 5 Feb 1975

Interim Injunctions in Patents Cases

The plaintiffs brought proceedings for infringement of their patent. The proceedings were defended. The plaintiffs obtained an interim injunction to prevent the defendants infringing their patent, but they now appealed its discharge by the Court of Appeal.
Held: The questions which applied when looking for an interim injunction in patent infringement cases were no different from those in other cases. The court must first look to the balance of convenience. There was no rule that the court must first look for the prospects of success of either party. The court must be satisfied the claim ‘is not frivolous or vexatious; in other words, that there is a serious question to be tried’. Where there was any doubt about damages being adequate compensation for the grant or withholding of an injunction, the court should preserve the status quo. The judge’s assessment of that balance of convenience was not to be disturbed.
Lord Diplock said of the phrase ‘prima facie case’ that it ‘may in some contexts be an elusive concept’ and ‘the governing principle is that the court should first consider whether, if the plaintiff were to succeed at trial in establishing his right to a permanent injunction, he would be adequately compensated by an award of damages for the loss he would have sustained as a result of the defendant’s continuing to do what was sought to be enjoined between the time of the application and the time of the trial. If damages in the measure recoverable would be [an] adequate remedy and the defendant would be in a financial position to pay them, no interim injunction should normally be granted, however strong the plaintiff’s claim appeared to be at that stage.’

Lord Diplock, Viscount Dilhorne, Lord Cross of Chelsea, Lord Salmon and Lord Edmund-Davies
[1975] 2 WLR 316, [1975] AC 396, [1975] UKHL 1, [1975] 1 All ER 504, [1975] FSR 101, [1975] RPC 513
Bailii
England and Wales
Citing:
Cited – Donmar Productions Ltd v Bart (Note) 1967
. .
Cited – Harman Pictures N V v Osborne ChD 1967
The plaintiffs asserted ownership in the copyright in a reproduction in a film of the book ‘The Reason Why’. There had been abortive discussions about the purchase of rights. The defendants intended to proceed with another production. They claimed a . .
Cited – Hubbard v Vosper CA 1971
Claims of infringement were made as to copyright works being various works about Scientology. Extracts had appeared in the defendant’s book which was critical of the cult. It was submitted by the plaintiff that the fair dealing section applied only . .
Cited – Jones v Pacaya Rubber and Produce Co Ltd CA 30-Nov-1910
If, while an action is pending against a company for the rescission of a contract to take shares, the company give notice to the plaintiff to forfeit the shares in consequence of non-payment of calls, the Court will, on the plaintiff paying into . .
Cited – Preston v Luck CA 1884
The court referred to the need to show ‘a probability that the plaintiff is entitled to relief’
Cotton LJ, though not using the expression ‘prima facie case’ defined the said requirement thus: ‘. . though the Court is not called upon to decide . .
Cited – Smith v Grigg Ltd CA 1924
The plaintiff sought an interlocutory injunction to restrain infringement of a registered design.
Held: Where the design was of recent origin, had not been established by a court of law, and where its validity could be doubted, the court would . .
Cited – Wakefield v Duke of Buccleugh 1865
The practice of taking undertakings from a party at an interlocutory hearing: ‘aided the court in doing that which was its great object, viz. abstaining from expressing any opinion upon the merits of the case until the hearing.’ . .

Cited by:
Cited – Imutran Ltd v Uncaged Campaigns Ltd and Another ChD 11-Jan-2001
The test for whether an interim injunction should be granted restraining publication of material claimed to be confidential, where such a grant would infringe the right to freedom of expression was slightly different under the 1998 Act. The . .
Cited – Cream Holdings Limited and others v Banerjee and The Liverpool Daily Post and Echo Limited CA 13-Feb-2003
The defendants considered publication of alleged financial irregularities by the claimant, who sought to restrain publication. The defendants argued that under the Act, prior restraint should not be used unless a later court would be likely to . .
Cited – Belize Alliance of Conservation Non-Governmental Organisations v Department of the Environment and Another (No 2) PC 13-Aug-2003
(Belize) The applicants sought an interim order preventing continuation of the building of a dam, saying that the environmental damage had not been properly aanticipated.
Held: The Board of the Council did have power to grant an interim . .
Cited – Cream Holdings Limited and others v Banerjee and others HL 14-Oct-2004
On her dismissal from the claimant company, Ms Banerjee took confidential papers revealing misconduct to the local newspaper, which published some. The claimant sought an injunction to prevent any further publication. The defendants argued that the . .
Cited – Herbage v Pressdram Ltd CA 1984
There was a publication of articles which referred to convictions which were spent under the 1974 Act. The court restated the principle in Bonnard v Perryman: ‘These principles have evolved because of the value the court has placed on freedom of . .
Cited – Herbage v Times Newspapers Ltd CA 30-Apr-1981
The principles in American Cyanamid did not affect the rule in Bonnard v Perryman. Sir Denys Buckley saiod: ‘the question what meaning the words complained of bore was primarily one for the jury. Suppose the words bore the second meaning alleged and . .
Cited – University of Oxford and others v Broughton and others QBD 10-Nov-2004
The claimants sought injunctions to protect themselves against the activities of animal rights protesters, including an order preventing them coming with a wide area around the village.
Held: The orders made were justified with the additional . .
Cited – Hall and others v Save Newchurch Guinea Pigs (Campaign) and others QBD 17-Mar-2005
The claimants ran a guinea pig farm. They and their neighbours applied for injunctions and an exclusion zone to keep away the defendants who campaigned against the breeding of animals for research.
Held: The claimants had been subjected to a . .
Cited – Jewellery Appraisal Services v Belson and others QBD 11-Apr-2005
The defendants had sold a business and included a non-compete covenant. The claimants sought to enforce it against them. It was said that they had approached insurers with a view to commencing business supplying jewelry. The defendants said their . .
Considered – Regina v Secretary of State for Transport, ex parte Factortame (No 2) HL 11-Oct-1990
The validity of certain United Kingdom legislation was challenged on the basis that it contravened provisions of the EEC Treaty by depriving the applicants of their Community rights to fish in European waters, and an interlocutory injunction was . .
Cited – International Transport Workers’ Federation and Another v Viking Line Abp and Another CA 3-Nov-2005
An order had been made restraining the defendant trades unions from taking industrial action. The unions said the UK court had no jurisdiction.
Held: ‘It is at first sight surprising that the English Commercial Court should be the forum in . .
Cited – NWL Ltd v Woods HL 1979
The phrase ‘trade dispute’ was defined by reference to (i) the parties to it and (ii) the subject matter. Lord Scarman referred to the legislative history of attempts to regulate strike actions by trades unions: ‘It is wrong to attempt to construe . .
Cited – Adidas-Salomon Ag v Drape and others ChD 7-Jun-2006
The claimants had sponsored tennis players to wear their logo. The respondents organised tennis tournaments whose intended rules would prevent the display of the claimant’s logos. The claimants said that the restriction interfered with their rights . .
Cited – Garden Cottage Foods Ltd v Milk Marketing Board HL 1984
In English law a breach of statutory duty, is actionable as such by a private individual to whom loss or damage is caused by a breach of that duty. Lord Diplock said that it was quite unarguable: ‘that if such a contravention of Article 86 gives . .
Cited – Smithkline Beecham Plc Glaxosmithkline UK Ltd and Another v Apotex Europe Ltd and others (No 2) CA 23-May-2006
The parties to the action had given cross undertakings to support the grant of an interim injunction. A third party subsequently applied to be joined, and now sought to take advantage of the cross undertakings to claim the losses incurred through . .
Cited – Fiona Trust Holding Corp and others v Privalov and others ComC 21-May-2007
Allegations were made of different varieties of fraud. Applications were made for freezing orders. . .
Cited – Boehringer Ingelheim Ltd and others v Vetplus Ltd CA 20-Jun-2007
The claimants appealed refusal of an order restricting comparative advertising materials for the defendant’s competing veterinary medicine. The claimant said that the rule against prior restraint applicable to defamation and other tort proceedings . .
Cited – Jacobs v Official Receiver; In re Jacobs (a bankrupt) ChD 3-Apr-1998
The bankrupt was due to have his automatic discharge, but the Official Receiver applied on the day before for the discharge for an interim suspension of the discharge to allow consideration of his alleged lack of co-operation. The bankrupt said the . .
Cited – Intercall Conferencing Services Ltd v Steer QBD 15-Mar-2007
The claimant company sought an interim injunction to prevent the defendant, a former employee, from working for a competitor in breach of a clause in his contract and from divulging any confidential information. The defendant said that the . .
Cited – Les Laboratoires Servier and Another v Apotex Inc and others ChD 9-Oct-2008
The claimant had alleged that the defendant was producing generic drugs which infringed its rights in a new drug. The patentee had given a cross-undertaking in damages, but the patent was later ruled invalid. The court had to assess the damages to . .
Cited – New ISG Ltd v Vernon and others ChD 14-Nov-2007
The claimant sought to continue an interim injunction obtained without notice. The claimant sought to restrain former employees misusing information it claimed they had taken with them. The claimants said that having objected to a transfer of their . .
Cited – National Commercial Bank Jamaica Ltd v Olint Corp Ltd (Jamaica) PC 28-Apr-2009
Jamaica – The customer appealed against refusal of an order requiring its bank not to close the customer accounts after the customer had been accused of fraud. There was no evidence that the account was being used unlawfully.
Held: In the . .
Cited – Faisaltex Ltd and Others v Lancashire Constabulary and Another QBD 24-Jul-2009
The claimants wished to claim damages saying that in executing a search warrant, the defendant had made excessive seizures of material. The claimants sought inspection by independent counsel of the materials seized to establish this in a manner . .
Cited – Dass Solicitors v Southcott ChD 2-Apr-2009
The claimant solicitors said that the defendant employed solicitor had sought to leave without giving the required three months’ notice and had sought to persuade clients of the firm to go to his new practice. Application was made on a without . .
Cited – Associated Foreign Exchange Ltd v International Foreign Exchange (UK) Ltd and Another ChD 26-May-2010
The claimant sought interim injunctions to enforce a restrictive covenant against solicitation of customers in a former employee’s contract. The employee, a FOREX dealer, had been placed on garden leave for three months and then his contract . .
Cited – British Broadcasting Corporation v Harpercollins Publishers Ltd and Another ChD 4-Oct-2010
The claimant sought an injunction and damages to prevent the defendant publishing a book identifying himself as ‘the Stig’ saying that this broke his undertaking of confidentialty as to his identity, a necessary part of the character in the TV . .
Cited – Smith v Inner London Education Authority CA 1978
Lord Denning MR doubted the applicability of the criteria in American Cynamid to public law proceedings. It is appropriate at the interface of public law and private law for the public interest to be taken into account as one of the factors in the . .
Cited – Coventry City Council v PGO and Others CA 22-Jun-2011
The children had been placed with short term fosterers. On adopters being found, the fosterers themselves applied to adopt the children. The court was asked whether a county court judge had power to injunct the authority not to remove the children . .
Cited – Caterpillar 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 . .
Cited – Revenue and Customs v Rochdale Drinks Distributors Ltd CA 13-Oct-2011
The revenue appealed against refusal of its petition for the winding up of the company for non-payment of a VAT assessment. The company said that the assessment was disputed. The revenue said that the company had been run for the purpose of . .
Cited – AB v CD QBD 3-Jan-2014
The parties were contracted to each other in respect of an internet based marketing system for metals and other resources. The claimant had contracted in effect to promote the system. The claimant sought an injunction to prevent termination of . .
Cited – Nugent v Nugent ChD 20-Dec-2013
The court was asked whether the court has, following the the 2002 Act, an inherent power to order the cancellation of a unilateral notice registered against a title registered under the 2002 Act and, if so, in what circumstances, and how, such a . .
Cited – Merlin Entertainments LPC and Others v Cave QBD 25-Sep-2014
The claimants operated amusement parks. The defendant, believing that the parks were not being opearated as safely as they should be set up web-sites attacking the claimants and some employees in intemperate terms. The claimants sought interim . .
Cited – NATS (Services) Ltd v Gatwick Airport Ltd and Another TCC 2-Oct-2014
NATS had tendered unsuccessfully for a contract to provide air traffic control services at Gatrwick airport, and challenged the award. GAL denied that the Regulations applied and now sought disapplication of the automatic suspension from the award . .
Modified – NWL Limited v Woods 1979
Lord Diplock said: ‘Where, however, the grant or refusal of the interlocutory injunction will have the practical effect of putting an end to the action because the harm that will have been already caused to the losing party by its grant or its . .
Cited – Heythrop Zoological Gardens Ltd (T/A Amazing Animals) and Another v Captive Animals Protection Society ChD 20-May-2016
The claimant said that the defendant had, through its members visiting their premises, breached the licence under which they entered, by taking photographs and distributing them on the internet, and in so doing also infringing the performance rights . .
Cited – Lawrence David Limited v Ashton CANI 1989
The American Cyanamid principles apply in cases of interlocutory injunctions in restraint of trade just as they do in other cases. . .
Cited – Whitmar 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.

Litigation Practice, Intellectual Property

Leading Case

Updated: 11 December 2021; Ref: scu.174732

Instance and Others v Denny Bros Printing Ltd and Others: ChD 3 Feb 2000

The dispute arose between parties to without prejudice communications or who had obtained documents from such persons and were commercially connected with them.
Held: An implied agreement would bind them as parties or by reason of the source of the documents in their hands. The without prejudice communications were governed by an implied agreement that they will not be used in the current or any subsequent litigation between the same or related parties. It was not appropriate to leave the issue to the foreign court to decide on admissibility, and an injunction was granted against their use. ‘The present dispute arises between persons who either were parties to the original communications or have obtained the documents from persons who were such parties, and, to the extent that it be relevant, are commercially and corporately connected with such parties. If there was an implied agreement the persons before me are either bound by it as parties or must be taken to be subject to it by reason of the source of the documents in their hands. In my judgment it is very strongly arguable, and indeed probable, that the without prejudice communications are indeed governed by an implied agreement that they will not be used in the current or any subsequent litigation between the same or related parties . . It is correct in my judgment to regard the protection as extending to subsequent litigation because otherwise on the one hand the public policy recognised by Lord Griffiths and other judges and on the other hand the expectation of the parties would not be fulfilled but rather would be subverted. The position may perhaps be different in practice between two parties who are brought together for example by the circumstances of a road accident and may never have anything else to do with each other, but the holders of patents in related areas, whether or not they are to be regarded as competitors, may well, through themselves or their licensees, come up against each other in a number of different commercial circumstances giving rise, not only among the litigation-prone, to several different disputes over time, such that it cannot be assumed that one piece of litigation is the last there will ever be.’

Mr Justice Lloyd
Gazette 03-Feb-2000, Times 28-Feb-2000, [2000] FSR 869
Citing:
Cited – Bourns Inc v Raychem Corporation, Clifford Chance, Row and Maw, Latham and Watkins PatC 17-Oct-1998
Where a party sought disclosure of documents in support an application in a costs taxation, the payee could choose not to disclose, but if he did so the payer was bound by implied undertakings to use them only for the purposes of that application . .

Cited by:
Cited – Prudential Insurance Company of America v Prudential Assurance Company Ltd CA 31-Jul-2003
The appellant sought to restrain the use in proceedings in New Zealand and elsewhere of ‘without prejudice’ documents discovered in court proceedings here.
Held: It was not sensible to elide the distinction between the two sources of . .
See Also – David J Instance Ltd, David J Instance v Denny Bros Printing Ltd PatC 14-Apr-2000
. .
See Also – David J Instance Ltd and Another v Denny Brothers Printing Ltd CA 20-Jun-2001
In a case where a patent was being challenged for obviousness, the judge was not necessarily obliged to follow the structured approach recommended in the Windsurfing International case. Here the judge had gone straight to the issue at the heart of . .
Cited – Oceanbulk Shipping and Trading Sa v TMT Asia Ltd CA 15-Feb-2010
The parties had settled their disagreement, but now disputed the interpretation of the settlement. The defendant sought to be allowed to give in evidence correspondence leading up to the settlement which had been conducted on a without prejudice . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 06 December 2021; Ref: scu.82377

Golam v OHMI – Pentafarma (Metabol): ECFI 11 Jun 2014

ECJ (Judgment) Community trade mark – Opposition proceedings – Application for the Community word mark METABOL – Earlier national word mark METABOL-MG – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009

T-486/12, [2014] EUECJ T-486/12
Bailii
Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 04 December 2021; Ref: scu.526680

Schrader Electronics Limited, Duffy, Strahan, Dorman, Marguet, Henriet and Guillemin: IPO 17 Feb 2014

IPO (Patent) An uncontested application was filed by the proprietor Schrader Electronics Limited under rule 10(2) of the Patents Rules 2007. As a result, it was found that Emmanuel Marguet, Nicolas Henriet and Thomas Guillemin should be mentioned as joint inventors along with Mark Duffy, Samuel Strahan and Philip Dorman in the published patent application and directed that an addendum slip mentioning them as joint inventors be prepared for the published patent application for the invention.

[2014] UKIntelP o07914
Bailii
England and Wales

Intellectual Property

Updated: 02 December 2021; Ref: scu.523972

Bayerische Motoren Werke Ag (Bmw) v Premier Alloy Wheels (Uk) Ltd and Others: ChD 8 Jun 2018

Application for a search order, interim injunction and related relief. The claimant alleged the manufacture of fake BMW wheels by the defendant.
Mr Justice Henry Carr gave his reasons for granting a search order, interim injunction and related relief. He summarised the criteria: ‘A search and seizure order is an exceptional form of relief. The conditions that need to be satisfied are as follows. First, there must be a strong prima facie case of a civil cause of action. Suspicion is not enough; nor is it enough that there is a serious question to be tried. Second, the danger to the applicant to be avoided by the grant of the order must be serious, and if the order is to forestall the destruction of evidence, the evidence must be of major importance. Third, there must be clear evidence that the respondent has incriminating documents or articles in its possession. Fourth, there must be a real possibility of the destruction or removal of evidence. Fifth, the harm likely to be caused by the execution of the order on the respondent and his business affairs must not be out of proportion to the legitimate object of the order.’

Henry Carr J
[2018] EWHC 1713 (Ch)
Bailii
England and Wales
Cited by:
Cited – Calor Gas Ltd v Chorley Bottle Gas Ltd and Another QBD 22-Jul-2020
Search and Seizure – Concerns for Public Safety
The claimant supplied branded liquid gas containers and the gas, on condition that only its liquid gas would be used within the containers. The sought a search and seizure order against the defendants, saying that the public health and safety risks . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 30 November 2021; Ref: scu.619885

Redwood Music Ltd v Chappell and Co Ltd: ChD 1982

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

Robert Goff J
[1982] RPC 109
England and Wales
Citing:
Cited – University of London Press Ltd v University Tutorial Press Ltd ChD 1916
In a copyright claim, the test of originality which had to be passed was set out by Peterson J, saying: ‘The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are . .
Cited – Ladbroke (Football) Ltd v William Hill (Football) Ltd HL 1964
What is substantial copying
The plaintiff alleged copying of their football pools coupons and copyright infringement. The issues were as to the extent of copying required to establish infringement, and whether it was proper to look at the several parts of the work separately. . .

Cited by:
Cited – Sawkins v Hyperion Records Limited ChD 5-Jul-2004
The claimant had edited ancient music scores so as to be ready for performance for the defendant. He asserted a copyright. The defendants argued that the contribution was too little to create a copyright.
Held: To succeed Dr Sawkins had to . .
Cited – Fisher v Brooker and Another ChD 20-Dec-2006
The claimant said that he had contributed to the copyright in the song ‘A Whiter Shade of Pale’ but had been denied royalties. He had played the organ and particularly the organ solo which had contrbuted significantly to the fame of the record.
Cited – Hodgens v Beckingham CA 19-Feb-2003
The defendant appealed a finding of infringement in a music copyright work, ‘Young at Heart’, based on a claim of joint authorship. The claimant had delayed his claim for many years, but now sought only rights to future royalties.
Held: The . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 28 November 2021; Ref: scu.199977