Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop registration: ‘a jurisdiction to grant injunctive relief where a defendant is equipped with or is intending to equip another with an instrument of fraud. Whether any name is an instrument of fraud will depend upon all the circumstances. A name which will, by reason of its similarity to the name of another, inherently lead to passing-off is such an instrument. If it would not inherently lead to passing-off, it does not follow that it is not an instrument of fraud. The court should consider the similarity of the names, the intention of the defendant, the type of trade and all the surrounding circumstances. If it be the intention of the defendant to appropriate the goodwill of another or enable others to do so, I can see no reason why the court should not infer that it will happen, even if there is a possibility that such an appropriation would not take place.’

Stuart-Smith LJ, Swinton Thomas LJ, Aldous LJ
Times 29-Jul-1998, Gazette 30-Sep-1998, [1998] EWCA Civ 1272, [1999] FSR 1, [1999] 1 WLR 903, [1998] 4 All ER 476, [2001] EBLR 2, [1998] ITCLR 146, [1999] 1 ETMR 61, [1997-98] Info TLR 423, [1998] Masons CLR 165
Bailii
England and Wales
Citing:
Appeal from – Marks and Spencer Plc, Ladbrokes Plc, J Sainsbury Plc, Virgin Enterprises Ltd, British Telecommunications Plc, Telecom Securior Cellular Radio Ltd v One In A Million and Others PatC 28-Nov-1997
The registration of internet domain names which would infringe trade marks and potentially facilitate passing off can be protected summarily by quia timet injunction. The defendants were dealers in domain names and the use of a trade mark in the . .
Cited – Singer Manufacturing Co v Loog CA 1880
The defendant wholesalers imported sewing machines from Germany which they sold using documents which referred to the machines as using the Singer system. The word Singer was a trade mark of the plaintiffs. The retailers were told that the machines . .
Cited – Southern v How 1616
A trader left counterfeit jewels with a factor who in turn arranged for an agent to sell them as genuine articles. The purchaser discovered the fraud, and had the agent arrested and had the money returned to him.
Held: No action lay as between . .
Cited – Orr Ewing v Registrar of Trade Marks HL 1879
In respect of trade marks which were in use before the 1875 Act but in respect of which registration had been refused, the common law action for infringement of the unregistered mark continued: ‘if the proprietor of a trade mark in use before the . .
Cited – Magnolia Metal Co v Tandem Smelting Syndicate Ltd 1900
‘Going back . . as far as the reign of Elizabeth the form of action which this Statement of Claim adopts has undoubtedly been a form of action in which if the right of a man to have the reputation of selling that which is his manufacture as his . .
Cited – in re Bass Nicholson CA 1931
Lawrence LJ said: ‘The cases to which I have referred (and there are others to the like effect) show that it was firmly established at the time when the Act of l875 was passed that a trader acquired a right of property in a distinctive mark merely . .
Cited – Burgess v Burgess 1853
The plaintiff had carried on a business selling ‘Burgess’s Essence of Anchovies’. His son set up a business with a similar name and purpose.
Held: the court would not restrain the use of his own name by a person in trade, save only if an . .
Cited – Spalding (A G ) and Brothers v A W Gamage Ltd HL 1915
The House considered the requirements for the tort of passing off. The judge has the sole responsibility for deciding whether anybody has been misled. He will hear evidence, but must not surrender his assessment to others.
Lord Parker said: . .
Cited – Edelsten v Edelsten ChD 28-Jan-1863
The plaintiff sought an injunction and damages for infringement by the defendant of his trade mark.
Held: The infringement was innocent. The plaintiff was entitled to an injunction, but for damages only after the defendant had become aware of . .
Cited – Reddaway and Co Ltd v Banham and Co Ltd HL 1896
The plaintiff manufactured and sold Camel Hair Belting. The defendant also began to sell belting made of camel’s hair in the name of Camel Hair Belting. The trader claimed a right in the term ‘Camel Hair’.
Held: The term was descriptive. Where . .
Cited – Iron-Ox Remedy Company Ld v Co-operative Wholesale Society Ld 1907
The plaintiffs, manufactureres of ‘Iron-Ox Tablets’ complained that defendants were selling ‘Iron Oxide Tablets’. The defendants had been unable to obtain the plaintiffs goods for sale and therefore sourced and resold tablets containing Iron oxide, . .
Cited – Guinness v Ullmer 1847
Labels similar to the ones used by the plaintiffs had been printed by a Mr Taylor from blocks manufactured by the defendants, and a trade mark infringement was seemingly alleged.
Held: An injunction was granted to prevent the defendants from . .
Cited – Farina v Silverlock 1855
The defendants sold Eau de Cologne labels which infringed the plaintiff’s trade marks. However they made it clear to the purchasing retailers that they were produced by them and not by the plaintiff, and had made no misrepresentation to the . .
Cited – Generale Bank Nederland Nv (Formerly Credit Lyonnais Bank Nederland Nv) v Export Credit Guarantee Department CA 23-Jul-1997
The bank claimed that it had been defrauded, and that since an employee of the defendant had taken part in the fraud the defendant was had vicarious liability for his participation even though they knew nothing of it.
Held: Where A becomes . .
Cited – Royal Brunei Airlines SDN BHD v Tan PC 24-May-1995
(Brunei) The defendants were a one-man company, BLT, and the one man, Mr Tan. A dishonest third party to a breach of trust was liable to make good a resulting loss even though he had received no trust property. The test of knowledge was an objective . .
Cited – Erven Warnink Besloten Vennootschap v J Townend and Sons (Hull) Limited (‘Advocaat’) HL 1979
The trademark was the name of a spirit-based product called ADVOCAAT. The product had gained a reputation and goodwill for that name in the English market and the defendants were seeking to take advantage of that name by misrepresenting that their . .
Cited – Singer Manufacturing Co v Loog HL 1882
The plaintiffs manufactured sewing machines, and had trade marked their name. The defendant imported machines which they sold as using the Singer system. The retailers they sold to were not led to think that the machines had been manufactured by the . .
Cited – Draper v Trist CA 1939
An action for passing off can be maintained without having to prove actual damage to trade.
Goddard LJ said: ‘The action is one of that class which is known as an action on the case, akin to an action of deceit. In an action on the case, the . .
Cited – John Walker and Sons Ltd v Henry Ost and Co Ltd ChD 1970
The plaintiff whisky distiller claimed in passing-off against the defendant who supplied bottles and labels to a distiller in Ecuador.
Held: An injunction was granted. Having cited from Singer v Loog, the court added: ‘I would be slow to . .
Cited – John De Kuyper and Son v W and G Baird Ltd 1903
. .
Cited – John Jameson and Son Ltd v R S Johnston and Co Ltd 1901
. .
Cited – Lever v Goodwin CA 1887
In trade mark and patent cases the plaintiff was entitled, if he succeeded in getting an injunction, to take either of two forms of relief: he might claim from the defendant either the damage he had sustained from the defendant’s wrongful act or the . .
Cited – Payton and Co Limited v Snelling, Lampard and Co Ltd HL 1901
The House rejected a suggestion that a manufacturer of goods, which did not by their get-up make a false representation, would be liable for any passing-off which resulted. . .
Cited – White Horse Distillers Ltd v Gregson Associates Ltd 1984
Complaint was made that the defendants were assisting traders in Ecuador in passing off their products as those of the plaintiff.
Held: ‘He [defence counsel] submitted that there can never be a tort where the English exporter exports nothing . .
Cited – Suhner and Co AG v Transradio Ltd 1967
The claimants complained at the defendant having registered a company under the name ‘Suhner’. The defendants gave no justification for using the word ‘Suhner’ as part of their name. They claimed that they had the right to form a company in order to . .
Cited – Direct Line Group Limited v Direct Line Estate Agency ChD 1997
The court granted an interlocutory injunction to the financial services group Direct Line against two individuals who had arranged the incorporation of a large number of companies under names comprising the names or trade marks of well-known . .
Cited – Glaxo Plc v Glaxowellcome Limited ChD 1996
The defendant company registration agent had registered the name Glaxowellcome Limited shortly after the announcement of Glaxo Plc’s intention to make a take-over bid for Wellcome and if it succeeded to re-name itself Glaxo-Wellcome Plc. He then . .
Cited – Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd 1982
(Supreme Court of New South Wales) The plaintiff company was formed from three companies well-known in New Zealand. The defendant company were formed anticipating being sold to the plaintiffs at a substantial profit. Defence Counsel told the judge . .
Cited – Norwich Pharmacal Co and others v Customs and Excise Commissioners CA 2-Jan-1972
The plaintiffs sought discovery of the names of patent infringers from the defendant third party, submitting that by analogy with trade mark and passing-off cases, the Customs could be ordered to give discovery of the names.
Held: Buckley LJ . .

Cited by:
Cited – Bell Atlantic Corporation, Bell IP Holdings Llc v Bell Atlantic Communications Plc, Bell Atlantic Limited PatC 21-Dec-1998
The claimant sought to restrain the defendants from using the name ‘Bell Atlantic’ so as to cause confusion and a passing of the defendant had registered Internet domain names and sought to register trade marks similar to those of the claimants. The . .
Cited – Inter Lotto (Uk) Ltd v Camelot Group Plc CA 30-Jul-2003
The claimant and defendant had each operated using a the name ‘HotSpot’ for a name for its lottery. The respondent had registered the name as a trade mark. The claimant began to use the name first and claimed in passing off, and the respondent . .
Cited – Tesco Stores Ltd v Elogicom Ltd and Another ChD 8-Mar-2006
The claimant sought summary judgment against the defendant for operating websites using domain names which included the claimant’s name and trade marks. Tesco had entered into agreements with a third party company who organised adverts for Tesco on . .
Cited – Microsoft Corporation v Ling and others ChD 3-Jul-2006
The claimant sought damages against the respondent for various infringements in sales of unlicensed products, and also additional damages. The defendant argued that Microsoft’s licensing arrangements acted anti-competively.
Held: ‘the . .
Cited – Phones4U Ltd and Another v Phone4u.Co.UK and others CA 19-May-2006
Mobile phone companies brought claims of passing off and trade mark infringement by the defendant who had registered internet domain names in the same year as the claimants first registered their own names. The defendant appealed a finding that at . .
Cited – Global Projects Management Ltd v Citigroup Inc and Others ChD 17-Oct-2005
GPM had acquired an internet domain name ‘citigroup.co.uk’. Citigroup alleged passing off and trade mark infringement. The claimant complained of an unjustified threat. The defendant counterclaimed, and sought summary judgment.
Held: The . .
Cited – Future Publishing Ltd v The Edge Interactive Media Inc and Others ChD 13-Jun-2011
The claimant said that the defendant had infriged its rights by the use of its logo on their publications. . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Leading Case

Updated: 02 November 2021; Ref: scu.144751

No resale of backup copies of software

(Judgment) Reference for a preliminary ruling – Intellectual property – Copyright and related rights – Directive 91/250/EEC – Article 4(a) and (c) – Article 5(1) and (2) – Directive 2009/24/EC – Article 4(1) and (2) – Article 5(1) and (2) – Legal protection of computer programs – Resale of ‘used’ licensed copies of computer programs on non-original material media – Exhaustion of the distribution right – Exclusive right of reproduction)
Held: Article 4(a) and (c) and Article 5(1) and (2) of Directive 91/250 must be interpreted as meaning that, although the initial acquirer of a copy of a computer program accompanied by an unlimited user licence is entitled to resell that copy and his licence to a new acquirer, he may not, however, in the case where the original material medium of the copy that was initially delivered to him has been damaged, destroyed or lost, provide his back-up copy of that program to that new acquirer without the authorisation of the rightholder.

ECLI:EU:C:2016:762, [2016] WLR(D) 521, [2016] EUECJ C-166/15
WLRD, Bailii
Directive 91/250/EEC
European

Intellectual Property

Updated: 01 November 2021; Ref: scu.570145

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

Sir Nicolas Browne-Wilkinson VC
[1993] EMLR 27
England and Wales
Cited by:
Cited – Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others CA 24-Feb-2010
The claimants owned Community and UK trade marks in the name ‘Cipriani’. The defendants operated a restaurant in London using, under the licence of another defendant, the same name. The claimant sought an injunction to prevent further use of the . .
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.

Intellectual Property

Leading Case

Updated: 02 November 2021; Ref: scu.401812

patent action concerning two patents – revocation / infringement

Mr Justice Birss
[2013] EWHC 1876 (Pat)
Bailii
England and Wales

Intellectual Property

Updated: 01 November 2021; Ref: scu.515314

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 below held, such a claimant must also establish a business with customers within the jurisdiction. There was conflicting jurisprudence in the common law world, and it is of particularly acute significance in the age of global electronic communication.
Held: ‘As to what amounts to a sufficient business to amount to goodwill, it seems clear that mere reputation is not enough . . The claimant must show that it has a significant goodwill, in the form of customers, in the jurisdiction, but it is not necessary that the claimant actually has an establishment or office in this country. In order to establish goodwill, the claimant must have customers within the jurisdiction, as opposed to people in the jurisdiction who happen to be customers elsewhere. ‘ and ‘when it comes to a domestic, common law issue such as passing off, an English court has to consider the factual position in the UK. That is well illustrated by the fact that, even if PCCM’s argument was accepted and it was enough for a claimant merely to establish a reputation, that reputation would still have to be within the jurisdiction.’
and . . ‘If it was enough for a claimant merely to establish reputation within the jurisdiction to maintain a passing off action, it appears to me that it would tip the balance too much in favour of protection. It would mean that, without having any business or any consumers for its product or service in this jurisdiction, a claimant could prevent another person using a mark, such as an ordinary English word, ‘now’, for a potentially indefinite period in relation to a similar product or service. In my view, a claimant who has simply obtained a reputation for its mark in this jurisdiction in respect of his products or services outside this jurisdiction has not done enough to justify granting him an effective monopoly in respect of that mark within the jurisdiction’

Lord Neuberger, President, Lord Sumption, Lord Carnwath, Lord Toulson, Lord Hodge
[2015] ETMR 31, [2015] ECC 19, [2015] UKSC 31, [2015] WLR(D) 229, [2015] 1 WLR 2628, [2015] 3 All ER 469, [2015] FSR 29,#, UKSC 2013/0274
Bailii, WLRD, Bailii Summary, SC, SC Summary
England and Wales
Citing:
At ChD – Starbucks (HK) Ltd and Others v British Sky Broadcasting Group Plc and Others ChD 2-Nov-2012
The claimants asserted infringement by the defendants of their registered Community Trade Mark by their announcement of a new TV station ‘NOW TV’. The defendants in turn challenged the validity of the mark.
Held: The court found that a . .
Appeal from – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others CA 15-Nov-2013
The claimant appealed against rejection of its claim for trade mark infrimgement. It had a goodwill in China, and, it claimed among the chinese community in the UK. The claimant’s appeal was dismissed. . .
Cited – Commissioners of Inland Revenue v Muller and Co Margarine HL 1901
The House considered the liability, or not, to stamp duty of an agreement made in the UK. Under the Stamp Act 1891 an agreement made in the UK for the sale of any estate or interest in any property except lands or property locally situate out of the . .
Cited – Spalding (A G ) and Brothers v A W Gamage Ltd HL 1915
The House considered the requirements for the tort of passing off. The judge has the sole responsibility for deciding whether anybody has been misled. He will hear evidence, but must not surrender his assessment to others.
Lord Parker said: . .
Cited – T Oertli AG v EJ Bowman (London) Ltd CA 1957
The Swiss plaintiff had sold 50 machines in England and exhibited them at one exhibition. They claimed in passing off.
Held: Such evidence fell ‘far short’ of proof that the word ‘Turmix’ had become distinctive in England of machines of the . .
Cited – T Oertli AG v EJ Bowman (London) Ltd HL 1959
A company which originally made and sold a food mixer in the United Kingdom called a ‘Turmix’, under licence from the Swiss developer, continued after revocation of the licence to make and sell a similar mixer under a different name, ‘Magimix’.
Cited – Star Industrial Company Limited v Yap Kwee Kor trading as New Star Industrial Company PC 26-Jan-1976
(Singapore) The plaintiff Hong Kong company had manufactured toothbrushes and exported them to Singapore, for re-export to Malaysia and Indonesia, but with some local sales as well. Their characteristic get-up included the words ‘ACE BRAND’ and a . .
Cited – Anheuser-Busch v Budejovicky Budvar CA 1984
The parties disputed the use of the name Budweiser for the beers which each sold.
Held: Neither party was entitled to an injunction. neither AB nor BB was disentitled to use the name Budweiser since in 1979 there was a dual reputation and . .
Cited – Reckitt and Coleman Properties Ltd v Borden Inc 1987
Evidence as to the results of market research surveys was not admissible as expert evidence. . .
Cited – Reckitt and Coleman Properties Ltd v Borden Inc HL 1990
The plaintiffs claimed passing off of their ‘Jif Lemon’ trading style.
Held: It is no defence to an allegation of passing off that members of the public would not be misled if they were more literate, careful, perspicacious, wary or prudent. . .
Cited – Erven Warnink Besloten Vennootschap v J Townend and Sons (Hull) Limited (‘Advocaat’) HL 1979
The trademark was the name of a spirit-based product called ADVOCAAT. The product had gained a reputation and goodwill for that name in the English market and the defendants were seeking to take advantage of that name by misrepresenting that their . .
Cited – Panhard et Levassor v Panhard Levassor Motor Company Ltd 1901
French car manufacturers had established a reputation under their name in this country. The defendant company was formed not to take over the plaintiffs’ goodwill, but to block the plaintiffs from entering this country.
Held: Injunctions were . .
Cited – Suhner and Co AG v Suhner Ltd ChD 1967
A Swiss corporation manufacturing electronic components asserted an international reputation and goodwill in the name of ‘Suhner’. The defendants disputed that the plaintiff had goodwill in the United Kingdom. From 1946 until some years thereafter . .
Cited – Alain Bernardin and Cie v Pavilion Properties Ltd ChD 1967
The owner of the Crazy Horse Saloon in Paris tried to stop a business in London under the same name. The plaintiff advertised in the UK but carried on no other activities here.
Held: An injunction was refused. The plaintiff had reputation but . .
Cited – Globelegance BV v Sarkissian ChD 1974
The plaintiff claimed in passing off, seeking an intelocutory injunction. Mr Valentino Garavani, a fashion designer opened a salon in Rome in 1960, and built up a reputation in ladies’ high fashion under the name ‘Valentino’. His fashion shows in . .
Cited – Erven Warnink Besloten Vennootschap v J Townend and Sons (Hull) Limited (‘Advocaat’) HL 1979
The trademark was the name of a spirit-based product called ADVOCAAT. The product had gained a reputation and goodwill for that name in the English market and the defendants were seeking to take advantage of that name by misrepresenting that their . .
Cited – Maxwell v Hogg CA 1867
The court considered whether a mere reputation, wihout customers, was sufficient to base a claim for passing off.
Held: The plaintiff’s advertising campaign in respect of a proposed new newspaper called ‘Belgravia’ with a view to imminent . .
Cited – Amway Corporation v Eurway International Ltd ChD 1974
The subject matter of a claim in confidence must be ‘information’, and that information must be clear and identifiable as being confidential.
Brightman J said: ‘I asked the plaintiffs’ counsel if he could point in his literature to some . .
Cited – C and A Modes v C and A (Waterford) Ltd 1978
(Supreme Court of Ireland) The plaintiff’s C and A department store in Belfast was entitled to mount a claim in passing off in the Irish Republic.
Henchy J was unhappy about the decision in Alain Bernardin, and said that there were in the Irish . .
Cited – The Athletes’ Foot Marketing Associates Inc v Cobra Sports Ltd ChD 1980
The plaintiff, which carried on a retail shoe franchising business mainly in the United States, had prospective franchisee in England but had not commenced trading there. There was an awareness in England of the plaintiff’s trade name and activities . .
Cited – Orkin Exterminating Co Inc v Pestco Co of Canada Ltd 10-Jun-1985
Canlii (Court of Appeal, Ontario) Torts — Passing off — Goodwill — Pest control company carrying on business in United States but not in Canada — Company having reputation among Canadian customers for . .
Cited – British Broadcasting Corporation v Talbot Motor Co Ltd 1981
Held: The plaintiff Corporation had acquired a protectable goodwill in the mark CARFAX relating to a system for receiving traffic information on the radio, even though the system had not been launched, as a result of its widespread promotion such as . .
Cited – WH Allen and Co v Brown Watson Ltd 1965
Whenever a demand has been created by advertising, and better still if there are actual sales, the law can recognise it as sufficient reputation spawning potential goodwill and grant an injunction, and add to it the ancillary remedy of account of . .
Cited – Dominion Rent A Car Ltd v Budget Rent A Car Systems (1970) Ltd 27-Mar-1987
(Court of Appeal of New Zealand) The court considered looked at the degree of activity required to justify a finding that an international company had sufficient business connection in New Zealand to which goodwill could attach.
Held: Somers J . .
Cited – Ten-Ichi Co Ltd v Jancar Ltd 19-Jul-1989
(High Court of Hong Kong) – Tort – Passing off – whether action lies when no active business in Hong Kong – International reputation and goodwill – Damages whether recoverable if sustained outside the jurisdiction.
Sears J hearing of an . .
Cited – Conagra Inc v McCain Foods (Aust) Pty Ltd 14-Apr-1992
Austlii Intellectual Property – passing off – bases and elements of passing off action – whether carrying on business within jurisdiction or place of business within jurisdiction – sufficiency of nexus with the . .
Cited – Pete Waterman Ltd v CBS UK Ltd ChD 1993
The plaintiff practised in the pop music industry and claimed to be entitled to the exclusive use in this country of the name or description ‘The Hit Factory’. The defendant proposed a similarly named recording studio in London in a joint venture . .
Cited – Jet Aviation (Singapore) Pte Ltd v Jet Maintenance Pte Ltd 1998
(High Court of Sigapore) Where there is no loss or division of business or reasonable likelihood of such loss resulting from a confusion of names, there is no cause of action in passing off. . .
Cited – Caterham Car Sales and Coachworks Ltd v Birkin Cars (Pty) Ltd and Another 27-May-1998
(South Africa: Supreme Court of Appeal) the plaintiff sought to prevent the defendant, as it claimed, passing off their cars as its own.
Held: On the facts, the case failed. However, the only component of goodwill of a business that can be . .
Cited – In re Ping An Securities Ltd 12-May-2009
(Hong Kong – Court of Final Appeal) The court approved a proposition that a plaintiff ‘must establish a goodwill (in the country or region) in a business in the supply of goods or services’ under the relevant get-up in order to maintain a claim in . .
Cited – Staywell Hospitality Group Pty Ltd v Starwood Hotels and Resorts Worldwide Inc 29-Nov-2013
(Singapore – Court of Appeal) The ‘hard-line’ approach to goodwill is the law in Singapore was continued. meaning that a foreign trader who does not conduct any business activity in Singapore will generally not be able to maintain an action in . .
Cited – Grupo Gigante SA De CV v Dallo and Co Inc 15-Dec-2004
(United States Court of Appeals, Ninth Circuit) ‘priority of trademark rights in the United States depends solely upon priority of use in the United States, not on priority of use anywhere in the world. Earlier use in another country usually just . .
Cited – Rey v Lecouturier HL 1910
A ruling by the French courts that the ownership of the trade mark Chartreuse (formerly belonging to the monastery of Grand Chartreuse) had passed to a liquidator under French law, could not affect the title to the English trade mark, since the . .
Cited – Carl Franz Adolf Otto Ingenohl v Wing On and Company (Shanghai) Ltd PC 30-May-1927
Shanghai Action to restrain the respondents from passing off cigars not manufactured by the appellants but manufactured by the respondents to look as if they did. . .
Cited – RJ Reuter Co Ltd v Mulhens CA 1954
Complaint was made of the use of a the trade mark for ‘4711 Eau de Cologne’ where the figures ‘4711’ appeared within a scroll next to a bell. In fact, the place of business of the defendant company was No. 4711 Koln am Ehein, in Cologne. The . .
Cited – Adrema Werke Maschinenbau GmbH v Custodian of Enemy Property and the Administrator of German Enemy Property CA 1957
. .
Cited – Matratzen Concord v Hukla Germany SA (Free Movement Of Goods) ECJ 9-Mar-2006
ECJ (Judgment) Reference for a preliminary ruling – Article 3(1)(b) and (c) of Directive 89/104/EEC – Grounds for refusal to register – Articles 28 EC and 30 EC – Free movement of goods – Measure having . .
Cited – L’Oreal SA, Lancome parfums et beaute and Cie, Laboratoire Garnier and Cie, L’Oreal (UK) Limited v eBay International AG, eBay Europe SARL, eBay (UK) Limited ECJ 12-Jul-2011
ECJ Grand Chamber – Trade marks – Internet – Offer for sale, on an online marketplace targeted at consumers in the European Union, of trade-marked goods intended, by the proprietor, for sale in third States – . .
Cited – Leno Merken Bv v Hagelkruis Beheer Bv ECJ 5-Jul-2012
ECJ Community trade mark – Regulation No 207/2009 on the Community trade mark – Genuine use – Place of use
A ‘genuine use’ of a mark, namely ‘to guarantee the identity of the origin of the goods or services . .
Cited – 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 – . .
See Also – Starbucks (Hk) Ltd v British Sky Broadcasting Group Plc and Others CA 13-Sep-2012
. .

Cited by:
Cited – Bhayani and Another v Taylor Bracewell Llp IPEC 22-Dec-2016
Distinction between reputation and goodwill
The claimant had practised independently as an employment solicitor. For a period, she was a partner with the defendant firm practising under the name ‘Bhayani Bracewell’. Having departed the firm, she now objected to the continued use of her name, . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Leading Case

Updated: 01 November 2021; Ref: scu.546545

The Swiss plaintiff had sold 50 machines in England and exhibited them at one exhibition. They claimed in passing off.
Held: Such evidence fell ‘far short’ of proof that the word ‘Turmix’ had become distinctive in England of machines of the plaintiff’s manufacture. A more substantial use in England of the mark or get-up in respect of the plaintiff’s goods was essential.
It is a requirement of passing off that the plaintiff had to establish that he had a business presence and a reputation in the country which he brought the action: ‘It is, of course, essential to the success of any claim in respect of passing off based on the use of a given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by use in this country distinctive of the plaintiff’s goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get-up will be understood by the trade and the public in this country as meaning that the goods are the plaintiff’s goods. The gist of the action is that the plaintiff, by using and making known the mark or get-up in relation to his goods, and thus causing it to be associated or identified with those goods, has acquired a quasi-proprietary right to the exclusive use of the mark or get-up in relation to goods of that kind.’

Jenkins LJ
[1957] RPC 388
England and Wales
Cited by:
Appeal from – T Oertli AG v EJ Bowman (London) Ltd HL 1959
A company which originally made and sold a food mixer in the United Kingdom called a ‘Turmix’, under licence from the Swiss developer, continued after revocation of the licence to make and sell a similar mixer under a different name, ‘Magimix’.
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.

Intellectual Property

Leading Case

Updated: 01 November 2021; Ref: scu.566005

kristiansen_norwayECHR2013

ECHR Article 6-1
Access to court
Civil rights and obligations
Lengthy delays in examination of patent application rendering right of appeal to a court meaningless: violation
Facts – The applicants jointly owned a patent application that was lodged with the Norwegian Industrial Property Office (NIPO) in 1990. The application was ultimately refused by the NIPO in a decision that was upheld by the Board of Appeals (an internal patents appeal body) in September 2008. By then the twenty-year period of protection that would have applied had the patent been granted was due to expire just two years later. The applicants do not appear to have challenged the Board of Appeals’ decision in the domestic courts.
In their application to the European Court, the applicants alleged that, as a result of the excessive length of the proceedings before the national patent authorities and the twenty years’ limitation on patent protection under the Patents Act, their right of access to a court had become illusory, in breach of Article 6-1 of the Convention.
Law – Article 6-1: The Court reiterated that in civil length cases examined under Article 6-1 the period to be taken into consideration did not necessarily start when the competent tribunal was seized but could also encompass the prior administrative phase. In the instant case, there could be little doubt that the length of the administrative proceedings had been excessive. Due to the considerable lapse of time and the twenty years’ limitation on the protection offered by the Patents Act, the applicants’ exercise of their right of access to a court had become illusory. That state of affairs had resulted in a limitation on the applicants’ right of access to a court, which limitation was not only arbitrary for the purposes of the Article 6-1 guarantee but had also impaired the very essence of that right.
Conclusion: violation (unanimously).
Article 41: EUR 15,000 to the first applicant in respect of non-pecuniary damage.

25498/08 – Chamber Judgment, [2013] ECHR 399, 25498/08 – Legal Summary, [2013] ECHR 607
Bailii, Bailii
European Convention on Human Rights
Human Rights

Intellectual Property

Updated: 01 November 2021; Ref: scu.512069

The plaintiff claimed in both trade mark infringement and passing off. The defendant had opened a restaurant called ‘Rajamama’ or ‘Raja Mama’s’, which was said to amount to infringement of the claimant’s mark WAGAMAMA and also to amount to passing off.
Held: The claims succeeded. Laddie J held that one kind of confusion likely to occur between WAGAMAMA and RAJAMAMA was that some would think that the businesses were associated
‘A judge brings to the assessment of marks his own, perhaps idiosyncratic, pronunciation and view or understanding of them. Although the issue of infringement is one eventually for the judge alone, in assessing the marks he must bear in mind the impact the marks make or are likely to make on the minds of those persons who are likely to be customers for goods or services under the marks. Not all customers are the same. It is therefore sometimes of assistance for the court to hear evidence from witnesses who will help him to assess the variety of ways in which members of the target market will pronounce the marks and what, to them, will be the visual or phonetic impact of the marks. When considering infringement it is also necessary to bear in mind the possible impact of imperfect recollection on the part of members of the target market.’
and ‘I have come to the conclusion that the defendant’s mark, in either form, is so similar to the plaintiff’s registered mark that in use there exists a substantial likelihood of confusion on the part of the relevant public. That confusion is likely to take the form that some members of the public as a result of imperfect recollection will think the marks are the same while others will think that they are associated in the sense that one is an extension of the other . . or otherwise derived from the same source.’
As to the passing off claim and its associated evidence: ‘As is usual in passing off cases, the plaintiff produced a number of members of the public to prove that confusion was likely. No attempt was made to choose a group of people who would represent a reasonable cross-section of the population of England or London. The plaintiff did not have the financial resources to engage in that sort of exercise. Instead its solicitors attempted to contact all those customers who at one time or another had left their name and telephone number at the WAGAMAMA restaurant. On the evidence, no attempt was made to skew the results.’

Laddie J
[1995] FSR 713
England and Wales
Cited by:
Cited – Bocacina Ltd v Boca Cafes Ltd IPEC 14-Oct-2013
The claimant alleged passing off by the defendant’s use of the name ‘Boca Bistro Cafe’, and subsequently ‘Bica Bistro Cafe’
Held: Where the defendant had changed its trading style during the proceedings it was possible, if the claimant . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Leading Case

Updated: 01 November 2021; Ref: scu.516495

ECJ (Judgment) Reference for a preliminary ruling – Intellectual property – Community designs – Regulation (EC) No 6/2002 – Articles 32 and 33 – Licence – Register of Community designs – Right of the licensee to bring proceedings for infringement notwithstanding the fact that the licence has not been entered in the register – Right of the licensee to bring proceedings for infringement in order to obtain damages for its own loss)

ECLI:EU:C:2016:468, [2016] EUECJ C-419/15
Bailii
Regulation (EC) No 6/2002
European

Intellectual Property

Updated: 01 November 2021; Ref: scu.565863

ECJ (Judgment) Reference for a preliminary ruling – Copyright and related rights – Rental right and lending right in respect of copyright works – Directive 2006/115/EC – Article 1(1) – Lending of copies of works – Article 2(1) – Lending of objects – Lending of a digital copy of a book – Public libraries

ECLI:EU:C:2016:856, [2016] EUECJ C-174/15, [2016] WLR(D) 588
Bailii, WLRD
European

Intellectual Property

Updated: 01 November 2021; Ref: scu.571288

[2012] EWHC 2545 (Pat)
Bailii
England and Wales

Updated: 18 October 2021; Ref: scu.464398

[2010] EWCA Civ 1110
Bailii
England and Wales
Citing:
Appeal from – Grimme Landmaschinenfabrik Gmbh and Co KG v Scott (T/A Scotts Potato Machinery) PatC 3-Nov-2009
Claim for infringement and cross application for revocation of patent . .

Cited by:
Cited – Warner-Lambert Company Llc v Generics (UK) Ltd (T/A Mylan) and Another SC 14-Nov-2018
These proceedings raise, for the first time in the courts of the United Kingdom, the question how the concepts of sufficiency and infringement are to be applied to a patent relating to a specified medical use of a known pharmaceutical compound. Four . .

Lists of cited by and citing cases may be incomplete.
Updated: 18 October 2021; Ref: scu.425302

The court was asked: ‘Firstly, did Arnold J correctly hold certain claims of the patent in suit invalid for insufficiency; and, if so, should he have held more claims invalid on that ground? Secondly, was he correct in holding the patentee’s application to amend claim 3 of the patent, made after judgment on the issue of invalidity, to be an abuse of the process of the court? Thirdly, if there were any valid claims which were the subject of the allegation of infringement, was the judge correct to hold that there was no infringement of the (Swiss-form, second medical use) claims in the patent?’
Patten, Kitchin, Floyd LJJ
[2016] EWCA Civ 1006
Bailii
England and Wales
Cited by:
Appeal from (CA) – Warner-Lambert Company Llc v Generics (UK) Ltd (T/A Mylan) and Another SC 14-Nov-2018
These proceedings raise, for the first time in the courts of the United Kingdom, the question how the concepts of sufficiency and infringement are to be applied to a patent relating to a specified medical use of a known pharmaceutical compound. . .

Lists of cited by and citing cases may be incomplete.
Updated: 12 October 2021; Ref: scu.570179

Where a copyright assignment was subject to the provisions of a side letter, a sub-assignee was subject to the same provisions even though he was not made aware of the existence of the side letter.
Rattee J
Times 31-Jul-1998, [1998] EMLR 640
England and Wales
Citing:
Cited – Sport International Bussum BV v Inter-Footwear Ltd HL 2-Jan-1984
A contractual licence was granted to use names and trademarks for sports shoes. An earlier action between the parties had been stayed on the terms scheduled to a Tomlin order, which provided for Inter-Footwear to pay a sum in instalments and to have . .

Lists of cited by and citing cases may be incomplete.
Updated: 01 October 2021; Ref: scu.85087

[2016] EWHC 2161 (Pat)
Bailii
England and Wales

Updated: 29 September 2021; Ref: scu.568934

Challenge by the Defendants to the jurisdiction of the English court in relation to a claim for infringement of UK patents, where the relief sought is the determination of a global FRAND licence.
Henry Carr J
[2018] EWHC 808 (Pat), [2018] RPC 16
Bailii
England and Wales
Cited by:
See Also – Conversant Wireless Licensing Sarl v Huawei Technologies Co Ltd and Others ChD 8-May-2018
. .
See Also – Conversant Wireless Licensing Sarl v Huawei Technologies Co Ltd and Others ChD 2-Oct-2018
. .
See Also – Huawei Technologies Co Ltd v Conversant Wireless Licensing Sarl CA 30-Jan-2019
. .
See Also – Conversant Wireless Licensing Sarl v Huawei Technologies Co Ltd and Others PatC 4-Jul-2019
. .
See Also – Conversant Wireless Licensing Sarl v Huawei Technologies Co Ltd and Others PatC 8-Jan-2020
Patents essential to telecommunications standards. . .
See Also – Conversant Wireless Licensing Sarl v Huawei Technologies Co Ltd and Others PatC 10-Feb-2020
Application for disclosure in a FRAND case. . .
See Also – Unwired Planet International Ltd and Another v Huawei Technologies (UK) Co Ltd and Another SC 26-Aug-2020
The Court considered the licensing of Standard Essential Patents, those necessary for the design an use of smartphones. Huawei were said to have continued to use the technology despite the expiry of their licences. . .

Lists of cited by and citing cases may be incomplete.
Updated: 09 September 2021; Ref: scu.614953

Birss J
[2017] EWHC 1304 (Pat), [2017] RPC 20
Bailii
England and Wales
Citing:
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another PatC 5-Apr-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 24-Apr-2015
Allegations of patent infringement in manufacture of mobile phones. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 5-May-2015
Further directions for case management. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 21-Jul-2015
Application by the Eleventh Party, to strike out allegations of breaches of Article 101 TFEU which are made against it by the defendants in this action or for summary judgment in its favour on the points. In addition Ericsson applied to stay a . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 23-Nov-2015
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co, Ltd and Others ChD 16-Dec-2015
Order for costs post patents action. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 29-Jan-2016
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co, Ltd and Others PatC 22-Mar-2016
Judgment in a mobile telecommunications patent case involving Unwired Planet as claimant and Samsung and Huawei as defendants . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 29-Apr-2016
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another PatC 5-Apr-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others CA 12-Apr-2017
Appeal from order revoking patent . .

Cited by:
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another (3083) PatC 30-Nov-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another (2988) PatC 30-Nov-2017
The court considered the structure of Standards Essential Patents and the FRAND licensing scheme: ‘art of the process of standardisation involves holders of patents which are essential to an international telecommunications standard declaring them . .
See Also – Unwired Planet International Ltd and Another v Huawei Technologies Co Ltd and Another CA 23-Oct-2018
This appeal raises a number of important points of principle concerning the obligation upon the owner of a patent which protects a technology which its owner has declared to be essential to the implementation of one or more of the telecommunications . .
See Also – Unwired Planet International Ltd and Another v Huawei Technologies (UK) Co Ltd and Another SC 26-Aug-2020
The Court considered the licensing of Standard Essential Patents, those necessary for the design an use of smartphones. Huawei were said to have continued to use the technology despite the expiry of their licences. . .

Lists of cited by and citing cases may be incomplete.
Updated: 09 September 2021; Ref: scu.601490

Appeal from order revoking patent
Gross, Floyd LJJ, Sales J
[2017] EWCA Civ 266, [2017] WLR(D) 276, [2017] Bus LR 1971, [2018] RPC 6
Bailii, WLRD
England and Wales
Citing:
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 24-Apr-2015
Allegations of patent infringement in manufacture of mobile phones. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 5-May-2015
Further directions for case management. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 21-Jul-2015
Application by the Eleventh Party, to strike out allegations of breaches of Article 101 TFEU which are made against it by the defendants in this action or for summary judgment in its favour on the points. In addition Ericsson applied to stay a . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 23-Nov-2015
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co, Ltd and Others ChD 16-Dec-2015
Order for costs post patents action. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 29-Jan-2016
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co, Ltd and Others PatC 22-Mar-2016
Judgment in a mobile telecommunications patent case involving Unwired Planet as claimant and Samsung and Huawei as defendants . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 29-Apr-2016
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another PatC 5-Apr-2017
. .

Cited by:
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another PatC 7-Jun-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another (3083) PatC 30-Nov-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another (2988) PatC 30-Nov-2017
The court considered the structure of Standards Essential Patents and the FRAND licensing scheme: ‘art of the process of standardisation involves holders of patents which are essential to an international telecommunications standard declaring them . .
See Also – Unwired Planet International Ltd and Another v Huawei Technologies Co Ltd and Another CA 23-Oct-2018
This appeal raises a number of important points of principle concerning the obligation upon the owner of a patent which protects a technology which its owner has declared to be essential to the implementation of one or more of the telecommunications . .
See Also – Unwired Planet International Ltd and Another v Huawei Technologies (UK) Co Ltd and Another SC 26-Aug-2020
The Court considered the licensing of Standard Essential Patents, those necessary for the design an use of smartphones. Huawei were said to have continued to use the technology despite the expiry of their licences. . .

Lists of cited by and citing cases may be incomplete.
Updated: 09 September 2021; Ref: scu.582102

Birss J
[2017] EWHC 711 (Pat)
Bailii
England and Wales
Citing:
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 24-Apr-2015
Allegations of patent infringement in manufacture of mobile phones. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 5-May-2015
Further directions for case management. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 21-Jul-2015
Application by the Eleventh Party, to strike out allegations of breaches of Article 101 TFEU which are made against it by the defendants in this action or for summary judgment in its favour on the points. In addition Ericsson applied to stay a . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 23-Nov-2015
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co, Ltd and Others ChD 16-Dec-2015
Order for costs post patents action. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 29-Jan-2016
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co, Ltd and Others PatC 22-Mar-2016
Judgment in a mobile telecommunications patent case involving Unwired Planet as claimant and Samsung and Huawei as defendants . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 29-Apr-2016
. .

Cited by:
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another PatC 7-Jun-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another (3083) PatC 30-Nov-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another (2988) PatC 30-Nov-2017
The court considered the structure of Standards Essential Patents and the FRAND licensing scheme: ‘art of the process of standardisation involves holders of patents which are essential to an international telecommunications standard declaring them . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others CA 12-Apr-2017
Appeal from order revoking patent . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another PatC 7-Jun-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another (3083) PatC 30-Nov-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another (2988) PatC 30-Nov-2017
The court considered the structure of Standards Essential Patents and the FRAND licensing scheme: ‘art of the process of standardisation involves holders of patents which are essential to an international telecommunications standard declaring them . .
See Also – Unwired Planet International Ltd and Another v Huawei Technologies Co Ltd and Another CA 23-Oct-2018
This appeal raises a number of important points of principle concerning the obligation upon the owner of a patent which protects a technology which its owner has declared to be essential to the implementation of one or more of the telecommunications . .
See Also – Unwired Planet International Ltd and Another v Huawei Technologies (UK) Co Ltd and Another SC 26-Aug-2020
The Court considered the licensing of Standard Essential Patents, those necessary for the design an use of smartphones. Huawei were said to have continued to use the technology despite the expiry of their licences. . .

Lists of cited by and citing cases may be incomplete.
Updated: 09 September 2021; Ref: scu.581698

Birss J
[2016] EWHC 94 (Pat)
Bailii
England and Wales
Citing:
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 24-Apr-2015
Allegations of patent infringement in manufacture of mobile phones. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 5-May-2015
Further directions for case management. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 21-Jul-2015
Application by the Eleventh Party, to strike out allegations of breaches of Article 101 TFEU which are made against it by the defendants in this action or for summary judgment in its favour on the points. In addition Ericsson applied to stay a . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 23-Nov-2015
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co, Ltd and Others ChD 16-Dec-2015
Order for costs post patents action. . .

Cited by:
See Also – Unwired Planet International Ltd v Huawei Technologies Co, Ltd and Others PatC 22-Mar-2016
Judgment in a mobile telecommunications patent case involving Unwired Planet as claimant and Samsung and Huawei as defendants . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 29-Apr-2016
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another PatC 5-Apr-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others CA 12-Apr-2017
Appeal from order revoking patent . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another PatC 7-Jun-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another (3083) PatC 30-Nov-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another (2988) PatC 30-Nov-2017
The court considered the structure of Standards Essential Patents and the FRAND licensing scheme: ‘art of the process of standardisation involves holders of patents which are essential to an international telecommunications standard declaring them . .
See Also – Unwired Planet International Ltd and Another v Huawei Technologies Co Ltd and Another CA 23-Oct-2018
This appeal raises a number of important points of principle concerning the obligation upon the owner of a patent which protects a technology which its owner has declared to be essential to the implementation of one or more of the telecommunications . .
See Also – Unwired Planet International Ltd and Another v Huawei Technologies (UK) Co Ltd and Another SC 26-Aug-2020
The Court considered the licensing of Standard Essential Patents, those necessary for the design an use of smartphones. Huawei were said to have continued to use the technology despite the expiry of their licences. . .

Lists of cited by and citing cases may be incomplete.
Updated: 09 September 2021; Ref: scu.566272

Birss J
[2016] EWHC 958 (Pat), [2016] Bus LR 796, [2016] WLR(D) 227
Bailii, WLRD
England and Wales
Citing:
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 24-Apr-2015
Allegations of patent infringement in manufacture of mobile phones. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 5-May-2015
Further directions for case management. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 21-Jul-2015
Application by the Eleventh Party, to strike out allegations of breaches of Article 101 TFEU which are made against it by the defendants in this action or for summary judgment in its favour on the points. In addition Ericsson applied to stay a . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 23-Nov-2015
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co, Ltd and Others ChD 16-Dec-2015
Order for costs post patents action. . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others PatC 29-Jan-2016
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co, Ltd and Others PatC 22-Mar-2016
Judgment in a mobile telecommunications patent case involving Unwired Planet as claimant and Samsung and Huawei as defendants . .

Cited by:
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another PatC 5-Apr-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others CA 12-Apr-2017
Appeal from order revoking patent . .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another PatC 7-Jun-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another (3083) PatC 30-Nov-2017
. .
See Also – Unwired Planet International Ltd v Huawei Technologies Co Ltd and Another (2988) PatC 30-Nov-2017
The court considered the structure of Standards Essential Patents and the FRAND licensing scheme: ‘art of the process of standardisation involves holders of patents which are essential to an international telecommunications standard declaring them . .
See Also – Unwired Planet International Ltd and Another v Huawei Technologies Co Ltd and Another CA 23-Oct-2018
This appeal raises a number of important points of principle concerning the obligation upon the owner of a patent which protects a technology which its owner has declared to be essential to the implementation of one or more of the telecommunications . .
See Also – Unwired Planet International Ltd and Another v Huawei Technologies (UK) Co Ltd and Another SC 26-Aug-2020
The Court considered the licensing of Standard Essential Patents, those necessary for the design an use of smartphones. Huawei were said to have continued to use the technology despite the expiry of their licences. . .

Lists of cited by and citing cases may be incomplete.
Updated: 09 September 2021; Ref: scu.566282

The claimants had used the distinctive shape of their bottle to help advertise their soft drink. The registered design rights in the bottle had expired.
Held: The House refused to allow trade mark law to be exploited and rejected the argument that the manufacturer of a beverage sold under a trade name had established a perpetual monopoly in and could prevent the copying of the shape of a bottle which was no longer protected by the Registered Designs Act 1949. The House drew attention to the undesirable practice of seeking to expand the boundaries of intellectual property rights beyond the purposes for which they were created in order to obtain an unintended and undeserving monopoly.
[1986] 2 All ER 274, [1986] 1 WLR 695
England and Wales
Cited by:
Cited – In Re Smith Kline and French Laboratories Ltd HL 9-Feb-1989
The plaintiffs had applied for a product licence for a patented drug. To support its application, it supplied the authority with confidential information which the authority now sought to make use of the confidential information when considering . .
Cited – Interlego AG v Tyco Industries Inc PC 5-May-1988
How much new material for new copyright
(Hong Kong) Toy building bricks were manufactured by Lego in accordance with engineering drawings made for that purpose. One issue was whether new drawings made since 1972, altering the original drawings in various minor respects but added new . .

Lists of cited by and citing cases may be incomplete.
Updated: 03 September 2021; Ref: scu.183214

[2013] EWHC 1575 (Pat)
Bailii
England and Wales

Updated: 30 August 2021; Ref: scu.512211

[2017] UKIntelP o00617
Bailii, Bailii
England and Wales

Updated: 23 August 2021; Ref: scu.603127

Mr Justice Mann
[2013] EWHC 3393 (IPEC)
Bailii
England and Wales

Updated: 12 August 2021; Ref: scu.518003

Mr John Baldwin QC
[2013] EWHC 3796 (IPEC)
Bailii
England and Wales

Updated: 12 August 2021; Ref: scu.519002

Mr Justice Birss
[2013] EWHC 3467 (IPEC)
Bailii
England and Wales

Updated: 12 August 2021; Ref: scu.518564

Daniel Alexander QC
[2014] EWHC 26 (IPEC)
Bailii
England and Wales

Updated: 12 August 2021; Ref: scu.520813

[2014] EWHC 349 (IPEC)
Bailii
England and Wales

Updated: 12 August 2021; Ref: scu.522104

District Judge Clarke
[2013] EWHC 3804 (IPEC)
Bailii
England and Wales

Updated: 12 August 2021; Ref: scu.519004

[2014] EWHC 475 (IPEC)
Bailii
England and Wales

Updated: 12 August 2021; Ref: scu.522107

The appellants, a firm of staymakers, whose principal place of business was in America, introduced into Great Britain a new make of corset which they called ‘Erect Form Corsets,’ and on their showcards, boxes, and advertisements they printed the name in a peculiar and distinctive type upon a special ‘scroll.’ The respondents, a well-known firm of British stay-makers, copied this new design in stays and proceeded to sell them in boxes, having on their outside the name ‘Erect Form Corsets’ printed on the identical form of scroll employed by the appellants, with the addition of the letters C.B. (their own trademark) placed upon the right and left of it.
Held: (diss Lord Robertson) that while the respondents were entitled to use the name, the appellants having acquired no special right therein, the latter were entitled to an injunction to restrain the respondents from using the scroll in connection with the goods.
‘No trader is justified in taking the peculiar symbol, device, or mark, or any ‘accompaniment’ by which another man distinguishes his goods on the market, and so attract to himself the custom which would otherwise flow to his rival’- per Lord Macnaghten.
Lord Macnaghten, Lord Robertson, and Lord Lindley
[1905] UKHL 859, 42 SLR 859
Bailii
England and Wales

Updated: 06 August 2021; Ref: scu.621179

An action for passing off can be maintained without having to prove actual damage to trade.
Goddard LJ said: ‘The action is one of that class which is known as an action on the case, akin to an action of deceit. In an action on the case, the cause of action is the wrongful act or default of the defendant. The right to bring the action depends on the happening of damage to the plaintiff. A man, for instance, may be negligent: and the consequences of his negligence may not cause damage for twelve months. The cause of action is the breach of duty: the right to bring the action depends upon the happening of the damage. But this class of case forms an exception, or an apparent exception, to the ordinary action of deceit; because, in an ordinary action of deceit, the plaintiff’s cause of action is false representation, but he cannot bring the action until the damage has accrued to him by reason of that false representation.
But, in passing-off cases, the true basis of the action is that the passing-off by the defendant of his goods as the goods of the plaintiff injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business. The law assumes, or presumes, that if the goodwill of a man’s business has been interfered with by the passing-off of goods, damage results therefrom. He need not wait to show that damage has resulted, he can bring his action as soon as he can prove the passing-off; because it is one of the class of cases in which the law presumes that the Plaintiff has suffered damage.’
Lord Greene MR, Goddard LJ
(1939) 56 RPC 429, [1939] 3 All ER 513
England and Wales
Cited by:
Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .

Lists of cited by and citing cases may be incomplete.
Updated: 30 July 2021; Ref: scu.239045

[2013] UKIntelP o18513
Bailii
England and Wales

Updated: 29 July 2021; Ref: scu.517107

[2013] UKIntelP o18313
Bailii
England and Wales

Updated: 29 July 2021; Ref: scu.517110

The application concerns a method for cleaning and rehabilitating water boreholes, wells or shafts using hydrogen peroxide. After interpreting the claims in light of the very brief description, the hearing officer founds that the claims as amended lack novelty and inventive step as required by sections 1(1)(a) and (b) of the Act and refused the application under section 18(3).
[2013] UKIntelP o37213
Bailii
England and Wales

Updated: 27 July 2021; Ref: scu.517185

In patents law, the Catnic approach accords with the Protocol.
[1995] RPC 321
England and Wales
Citing:
Cited – Catnic Components Ltd and Another v Hill and Smith Ltd HL 1982
The plaintiffs had been established as market leaders with their patented construction, had ample production capacity and stocks, but had never granted any licence under their patent. The patent was for a novel type of galvanised steel lintel, which . .

Cited by:
Cited – Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others etc HL 21-Oct-2004
The claims arose in connection with the validity and alleged infringement of a European Patent on erythropoietin (‘EPO’).
Held: ‘Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance . .

Lists of cited by and citing cases may be incomplete.
Updated: 25 July 2021; Ref: scu.218736

[2013] UKIntelP o11813
Bailii
England and Wales

Updated: 10 July 2021; Ref: scu.511174

The parties disputed the registration of the trade mark ‘World Cup Willie’.
Mann J
[2006] EWHC 2415 (Ch)
Bailii
England and Wales

Updated: 08 July 2021; Ref: scu.341773

Floyd J
[2012] EWHC 3158 (Ch)
Bailii
England and Wales

Updated: 24 June 2021; Ref: scu.465803

The issue of loss in a prior patent challenge is res judicata in later proceedings despite the presence of experimental difficulties leading to ipossibly severe time limits. A patent applicant has no duty to inform the Patent Office of matters surrounding his application over and beyond a general duty of good faith.
Aldous J
Ind Summary 11-Apr-1994, Ind Summary 11-Apr-1994, Times 17-Feb-1994, [1994] FSR 458
Patents Act 1977 63(2)
England and Wales
Citing:
See Also – Chiron v Murex CA 18-Oct-1993
It was for a judge to identify the real issues, and he may strike out parts of the defence and refuse amendments. . .
See Also – Chiron Corporation and Others v Murex Diagnostics Ltd CA 14-Oct-1994
ECJ judgments make a UK court functus officio only after their full judgment has been delivered. Where judgment had already been given, it was no longer possible for the defendant in an action to seek a reference to the European Court on refusal of . .
See Also – Chiron Corporation v Organon Teknika (No 2) CA 1993
Section 44 could be used in a patent contract dispute even though the patent at issue was governed by the law of a foreign state which would not itself have applied that section. . .

Cited by:
Cited – Kirin Amgen Inc and others v Hoechst Marion Roussel Ltd and others CA 31-Jul-2002
The claimants sought damages for infringement of their patent. The defendants denied infringement, and sought a revocation of the patent.
Held: The patent concerned gene technology. Although an error had been made, the patent was valid, since . .
See Also – Chiron Corporation and Others v Murex Diagnostics Ltd CA 14-Oct-1994
ECJ judgments make a UK court functus officio only after their full judgment has been delivered. Where judgment had already been given, it was no longer possible for the defendant in an action to seek a reference to the European Court on refusal of . .
See Also – Chiron Corporation and Others v Murex Diagnostics Ltd (No 11) ChD 15-Mar-1996
A large interim award of damages can be proper if it is less than the likely damages which would be awarded at trial despite their remaining outstanding issues of fact to be decided. . .

These lists may be incomplete.
Updated: 21 June 2021; Ref: scu.79094

cw Ex Parte Decisions – Patents
PO Patent Office – Ex Parte Decisions
(Patent)
Mr H J Edwards
Ep(Uk) 0493695, O/007/98, [1998] UKIntelP o00798
PO, PO, Bailii
England and Wales

Updated: 26 March 2021; Ref: scu.453094

IPO This application was filed on 2 November, 1995. In their evidence the opponents stated that the 07000 series of telephone numbers had been allocated to one of their subsidiary companies on 2 February 1995 for their exclusive use. The allocation was confirmed by OFTEL on 6 November 1995 and the service was launched in December 1995. The applicants neither filed a counterstatement nor a response to the opponents evidence.
The Hearing Officer accepted that the opponents wholly owned subsidiary were exclusive proprietors of the 07000 series of telephone numbers and that the applicants were not entitled to obtain registered rights in a mark incorporating the 07000 number. He therefore concluded that the applicants had made their application in bad faith and that the opponents were successful under Section 3(6).
Mr D Morgan
OPP 44881, 2043266, [1998] UKIntelP o01898, O/018/98
PO, IPO, Bailii
England and Wales

Updated: 26 March 2021; Ref: scu.453086

PO Trade Marks – Appeals to the appointed person – Application No: 2283400
Mr Hobbs Qc
N/A
PO
England and Wales

Updated: 15 December 2020; Ref: scu.224193

galeChD1990

The applicant had implemented an algorithm for solving square roots problems by embodying it within a computer chip. He appealed against refusal of the patent by the Patents Office.
Held: The appeal succeeded.
Aldous J said: ‘I have come to the conclusion that the ROM claimed cannot be considered as a claim to an invention which is no more than an invention relating to disqualified matter defined in section 1(2) of the Act. The ROM is an article which can be manufactured. It has one dedicated function. It is an article whose structure has been altered during manufacture so as to perform the function of this method or program defined by the claim. A claim in a patent to such an article cannot to my mind be called a claim relating to a mathematical method or a method for performing a mental act, nor a program for a computer. There is a difference between a claim which relates to a disc containing a program and a ROM with particular circuitry. In the former the disc carries the program and therefore can be considered as in effect a claim relating to the program; where as in the latter the program or method is used as the basis for altering the structure of the ROM which then becomes a dedicated piece of apparatus, which can be used to carry out the program or method.
That difference also applies to the combination of an ordinary computer when programmed, which was referred to by Dillon L.J. in the Genentech case. Such a computer even when programmed remains an ordinary computer: the only difference being the fact that it is programmed and therefore in reality what is being claimed is the use of the program. However, in the case where a computer is constructed so as to operate in a particular way by insertion of a ROM the result is a technical change resulting in a different computer. Thus a claim to a computer containing a ROM as defined in Mr. Gale’s claim would in my view be more than a claim to a program. No doubt the claim would cover use of the program, but only when a particular ROM was used. What appears to me to be important is that such a claim relates to a new technical product namely a computer constructed in a particular way.
I believe that the principal examiner was wrong in equating the claimed ROM with a disc carrying a program. A disc serves as a carrier for a program, as no doubt can a ROM. However a ROM is more than a carrier, it is a manufactured article having circuit connections which enables the program to be operated. A claim to a ROM with particular circuitry, albeit defined by functional steps, cannot to my mind be said to relate to the program or the functional steps as such.’
Aldous J
[1991] RPC 305
Patents Act 1977 1(2)
Citing:
Appeal from – Merrill Lynch’s Application ChD 1988
The court rejected an application for a patent for, inter alia, a ‘data processing system for making a trading market in at least one security in which the system proprietor is acting as principal’.
Held: Falconer J said: ‘In my judgment, . .
[1988] RPC 1
Cited – Genentech’s (Human Growth Hormone) Patent CA 1989
A patent claim for an important protein called Tissue Plasminogen Activator was objected to on the basis of the obviousness of the gene sequence.
Held: The court considered the categories of exclusion in the context of what was said to be a . .
[1989] RPC 147

Cited by:
Cited – Aerotel Ltd v Telco Holdings Ltd and others, In re Patent Application GB 0314464.9 in the name of Neal Macrossan Rev 1 CA 27-Oct-2006
In each case it was said that the requested patent concerned an invention consisting of a computer program, and was not therefore an invention and was unpatentable. In one case a patent had been revoked on being challenged, and in the other, the . .
[2006] EWCA Civ 1371, [2007] Bus LR 634, [2007] RPC 7, [2006] Info TLR 215, [2007] 1 All ER 225
Appeal from – Gale’s Application CA 1991
The applicant had devised a new and better algorithm for finding square roots. Having embodied the method in a read only chip which could be installed within a computer which could then apply the algorithm, he sought to patent it.
Held: . .
[1991] RPC 305
Cited – Symbian Ltd v Comptroller General of Patents CA 8-Oct-2008
No Pattern Established to Patent Computer Systems
The Comptroller appealed against the decision in Chancery to grant a patent to the clamant for an invention which the comptroller said should have been excluded from protection under section 1(2) as a computer program. It was argued that the UK was . .
[2008] EWCA Civ 1066, Times 28-Oct-08, [2009] RPC 1
Cited – Symbian Ltd v Comptroller General of Patents PatC 18-Mar-2008
The company appealed against rejection of its patent application, the objection being as to the invention’s patentability. The EPO had granted a European Patent. . .
[2008] EWHC 518 (Pat), GB 0325145.1

These lists may be incomplete.
Leading Case
Updated: 12 December 2020; Ref: scu.245710

IPO Opposition.
Mr D Landau
711071, 723763, 724496
IPO
England and Wales

Updated: 03 December 2020; Ref: scu.274357

PO Patents – Inter Partes Decisions
Links: PO
Judges: Mr D Barford
Jurisdiction: England and Wales

Last Update: 27 November 2020; Ref: scu.193144

PO Trade Marks – Appeals to the appointed person – Application No: 2243686 – Opposition
References: Opp 52055
Links: PO
Judges: Mr Hobbs QC
Jurisdiction: England and Wales

Last Update: 27 November 2020; Ref: scu.192844

References: T-754/16, [2017] EUECJ T-754/16
Links: Bailii
Ratio: (Judgment) Trade mark of the European Union – Opposition proceedings – Application for registration of the figurative European Union mark representing a discontinuous ellipse-shaped silhouette – European earlier figurative union mark representing an ellipse – Reasons relating to of refusal – Article 8 (1) (b) and (5) of Regulation (EC) No 207/2009 (now Article 8 (1) (b) and (5) of Regulation (EU) 2017/1001 ]
Jurisdiction: European

Last Update: 20-Nov-17
Ref: 598931

References: 2193241
Links: IPO
Coram: Mr M Reynolds
Ratio: IPO Opposition.
Jurisdiction: England and Wales

Last Update: 09-Apr-17
Ref: 275408

References: [2013] UKIntelP o22513
Links: Bailii
Ratio:

Last Update: 11-Oct-16
Ref: 517100

References: [2006] RPC 25
Coram: Professor Annand
Ratio: 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 & 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.’

Last Update: 10-Aug-16
Ref: 260082

References: [1831] EngR 410, (1831) 2 Russ & My 247, (1831) 39 ER 388
Links: Commonlii
Ratio:In a suit to restrain the sale of pirated copies of a print, where the answer did not suggest that the prints complained of were not pirated copies, a decree was made, under the particular circumstances, though the prints, which had been exhibited to the witness who proved the offence, were not produced at the hearing.
Where the Plaintiff is entitled to have the injunction made perpetual, the Defendant will have to pay the costs of the suit, however trivial the subject-matter of the suit may be, if he did not, after the injunction was granted, tender the costs up to that time.

Last Update: 12-Jul-16
Ref: 320288

References: [1994] EMLR 448
Ratio:
This case is cited by:

• Cited – Godfrey -v- Lees ([1995] EMLR 307)
  The court described the test for joint authorship in a work of music: ‘What the claimant to joint authorship of a work must establish is that he has made a significant and original contribution to the creation of the work and that he has done so . .

(This list may be incomplete)

Last Update: 29-Jun-16
Ref: 537529

References: 2068123
Links: IPO
Coram: Mr G Salthouse
Ratio: IPO Opposition.

Last Update: 14-Jun-16
Ref: 275819

References: (1887) 4 RPC 508
This case is cited by:

• Cited – Chocosuisse, Kraft Jacobs Suchard (Schweiz) Ag, Chocoladefabriken Lindt & Sprungli (Schweiz) Ag -v- Cadbury Limited PatC (Times 25-Nov-97, Bailii, [1997] EWHC Patents 360)
  The plaintiffs brought actions in passing off against the defendant company in respect of their chocolate products. They objected to the use of the terms ‘Swiss Chocolate’ applied to chocolates not made in Switzerland.
  Held: The claimant had . .

(This list may be incomplete)
Last Update: 30-Jan-16 Ref: 239136

References: [2004] EWHC 2107 (Pat), [2005] RPC 220
Links: Bailii
Coram: Laddie J
Disclosure and enablement are distinct concepts in patents law, each of which has to be satisfied and each of which has its own rules. As to sufficiency: ‘In my view, devising an invention and providing enabling disclosure are two quite different things. Although both may be necessary to secure valid protection, as section 14 of the Act shows, they relate to different aspects of the law of patents. It is very possible to make a good invention but to lose one’s patent for failure to make an enabling disclosure. The requirement to include an enabling disclosure is concerned with teaching the public how the invention works, not with devising the invention in the first place.’
In the phrase ‘the actual deviser of the invention’, the word ‘actual’ denotes a contrast with a deemed or pretended deviser of the invention;the natural person who ‘came up with the inventive concept.’
This case is cited by:

• Cited – Synthon Bv -v- Smithkline Beecham Plc HL (Bailii, [2005] UKHL 59, House of Lords, [2006] RPC 10, [2006] 1 All ER 685)
  Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the . .
• Appeal from – IDA Ltd and others -v- The University of Southampton and others CA (Bailii, [2006] EWCA Civ 145, Times 31-Mar-06, [2006] RPC 21)
  The claimants sought sole ownership of a patent.
  Held: The judge had erred when he reversed the decision of the hearing officer that the claimant was sole owner of the patent. The court expressed its regret that the matter had not been . .
• Cited – Yeda Research and Development Company Ltd -v- Rhone-Poulenc Rorer International Holdings Inc and others HL (Bailii, [2007] UKHL 43, Times 30-Oct-07)
  The claimants said that the defendant had misused confidential information sent to him to found an application for a patent, claiming wrongly to have been its inventor. The claimant appealed a refusal by the court to allow amendments to the . .

(This list may be incomplete)
Last Update: 21-Nov-15 Ref: 227182