Tag: Intellectual Property

Agencja Wydawnicza Technopol v OHIM (100): ECFI 19 Nov 2009

ECJ Community trade mark Applications for Community figurative marks 100 and 300 Statement as to the scope of protection Article 38(2) of Regulation (EC) No 40/94 (now Article 37(2) of Regulation (EC) No 207/2009) Lack of distinctive character.

Citations:

T-426/07, [2009] EUECJ T-426/07

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 11 August 2022; Ref: scu.384077

Beecham Group Plc and Another v Norton Healthcare Ltd and Others: ChD 11 Oct 1996

A patent claim could be amended to add a claim for an action for breach of confidence by the defendant. The claim was rightly amended after service abroad to add more heads; UK was the forum conveniens in this action.

Citations:

Times 11-Oct-1996, Gazette 06-Nov-1996

Jurisdiction:

England and Wales

Cited by:

Appeal from – Norton Healthcare Limited v Beecham Group Plc CA 19-Jun-1997
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 09 August 2022; Ref: scu.78314

HFC Bank Plc v Midland Bank Plc: ChD 28 Sep 1999

Mere confusion of identity was insufficient to establish the tort of passing off. The tort is not dependent upon intention. A claimant must establish that it has a goodwill capable of being damaged, that the confusion caused was such as to amount to a misrepresentation of some connection between the two companies, and that the misrepresentation had or was likely to damage the goodwill of the claimant.

Citations:

Times 28-Sep-1999

Jurisdiction:

England and Wales

Cited by:

Appeal from – HFC Bank Plc v HSBC Bank Plc (Formerly Midland Bank Plc) CA 26-Apr-2000
Following a trial, and before the judgment was delivered, the parties arranged to meet and settled their dispute. The judges and the court were not advised and continued to take the trouble of preparing the now nugatory judgment. The legal . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 August 2022; Ref: scu.81360

Film Investors Overseas Services Sa and Another v Home Video Channel Ltd T/A Adult: ChD 2 Dec 1996

Acquiescence by a TV company in the breach of a copyright licence by the sale of unlawful decoders was capable of defeating an infringement claim in respect of the same complaint.

Citations:

Gazette 04-Dec-1996, Times 02-Dec-1996

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 August 2022; Ref: scu.80521

L’Oreal Sa v OHIM (Trade Mark ): ECFI 25 Mar 2009

ECJ Community trade mark – Opposition proceedings Application for the Community word mark SPALINE – Earlier national word mark SPA Relative ground for refusal – Damage to reputation – Unfair advantage derived from the reputation of the earlier mark Use of the mark applied for without due cause Article 8(5) of Regulation (EC) No 40/94.

Citations:

T-21/07, [2008] EUECJ T-21/07, [2009] ETMR 49

Links:

Bailii

Statutes:

Regulation (EC) No 40/94 8(5)

European, Intellectual Property

Updated: 04 August 2022; Ref: scu.375626

Philips Electronics Nv v Remington Consumer Products Ltd: ChD 2 Feb 1998

It was a misuse of Trade Mark legislation to seek permanently to prevent the use of a substantial engineering design idea which was underlying the mark for which protection was sought. The judge revocation of the registration of the claimant’s mark on the ground, inter alia, that it was incapable of distinguishing the goods concerned from those of other undertakings and devoid of any distinctive character, and that it consisted exclusively of a shape which was necessary to obtain a technical result.

Judges:

Mr Justice Jacob

Citations:

Times 02-Feb-1998, [1998] RPC 283

Statutes:

Trade Marks Act 1994

Jurisdiction:

England and Wales

Cited by:

Appeal from – Philips Electronics Nv v Remington Consumer Products Limited CA 5-May-1999
The court referred to the European Court of Justice the question of whether the arrangement of three heads on a razor was functional, and so was not capable of protection as a trade mark. . .
Mentioned – Commissioners of Customs and Excise v Century Life Plc CA 19-Dec-2000
The Directive required member states to exempt from VAT, services involving the provision of insurance, and for intermediaries. Following the Regulator’s involvement, the principal company had to arrange for the checking of existing policies, and . .
See Also – Koninklijke Philips Electronics Nv v Remington Consumer Products Ltd and Another CA 26-Jan-2006
The court was asked whether a trade mark consisting of the shape of goods (a three headed rotary electric shaver) could be valid. In earlier proceedings a representation had been found incapable of registration representing only the function of the . .
Cited – Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc and others CA 31-Jul-2006
The claimants sought to amend their claim which had previously been on the basis of a joint ownership, to one of sole ownership.
Held: The application for the amendment being made more han two years after the grant, the amendment could not be . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 28 July 2022; Ref: scu.84710

Sepracor Inc v Hoechst Marion Roussel Ltd et al: ChD 1 Mar 1999

Where a party has been given a right by convention to sue in a Convention country, he is not to be disentitled from so doing, but where the facts only allowed an inference of infringement by a co-infringer this was insufficient to found jurisdiction.

Citations:

Times 01-Mar-1999

Statutes:

European Patents Convention 1973

Jurisdiction:

England and Wales

Intellectual Property

Updated: 28 July 2022; Ref: scu.89171

Scotch Whisky Association and Others v Glen Kella Distillers Ltd (No 2): ChD 1 Apr 1997

Re-distilled whisky may not be called ‘whisky’ when re-sold – not as defined.

Citations:

Times 01-Apr-1997

Statutes:

EC Regulation 1576/89

Jurisdiction:

England and Wales

Citing:

See Also – The Scotch Whisky Association v Kella Distillers Ltd ChD 27-Dec-1996
A judge has no power at an interlocutory stage to order the editing of an expert’s report. . .

Cited by:

See Also – The Scotch Whisky Association v Kella Distillers Ltd ChD 27-Dec-1996
A judge has no power at an interlocutory stage to order the editing of an expert’s report. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 28 July 2022; Ref: scu.89057

Phonographic Performance Ltd v AEI Rediffusion Music Ltd: ChD 14 Jul 1997

An authorisation to broadcast sound recording included right to make back up tapes, but not to keep that back up beyond 28 days. Broadcasters are bound by an obligation to destroy copies of material which had been used for broadcast within 28 days unless a licence given otherwise.

Citations:

Times 14-Jul-1997, Gazette 23-Jul-1997

Statutes:

Copyright Designs and Patents Act 1988 13 68

Jurisdiction:

England and Wales

Cited by:

Appeal from – AEI Rediffusion Music Ltd v Phonographic Performance Ltd CA 1-Feb-1999
The copyright tribunal was given a wide discretion for the awarding of costs on applications made to it for licenses. The nature of the applications and the different basis makes it dangerous to import rules for awards from the general rules on . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Media

Updated: 25 July 2022; Ref: scu.84724

Phonographic Performance Ltd v Maitra and Others: ChD 14 Jul 1997

The use of an injunction to prevent the use of copyrighted recordings was not to be misused to obtain recovery for past unlicensed playing.

Citations:

Times 14-Jul-1997

Statutes:

Copyright Designs and Patents Act 1988

Jurisdiction:

England and Wales

Cited by:

Appeal from – Phonographic Performance Limited v Maitra and Others CA 3-Feb-1998
An injunction without time limit should normally be granted immediately where there was clear infringement and a threat of continued infringement. Copyrights can sometimes typically be identified only by reference to the trade marks under which the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 25 July 2022; Ref: scu.84726

Phonographic Performance Ltd v South Tyneside Metropolitan Borough Council: ChD 23 Nov 2000

Local authorities ran classes in which aerobics teachers used music for lessons. No licence was obtained for the performance of the music. They claimed to be ‘a club, society or other organisation the main objects of which were charitable or otherwise concerned with the advancement of religion, education or social welfare.’ In effect this was a claim that a local government was a charity.
Held: The defence could not succeed. The functions of a local authority would not normally be considered charitable. In this context, ‘social welfare’ was an inappropriate expression to describe such activities. Similarly the term ‘organisation’ in the Act, in this particular phrase, was to be read ejusdem generis with the words ‘club’ and ‘society’. It could not apply to a local authority. The function of a local authority is to carry out the administrative and governmental functions, in respect of its area. The legislature had thought it right to devolve those functions from national government. Those functions might include social welfare, but that was not its main purpose.

Judges:

Neuberger J

Citations:

Gazette 18-Jan-2001, Times 19-Dec-2000, [2000] EWHC 455 (Ch), [2001] 1 WLR 400, [2001] EMLR 446, [2001] RPC 594

Links:

Bailii

Statutes:

Copyright Designs and Patents Act 1988 67

Jurisdiction:

England and Wales

Intellectual Property, Local Government, Charity

Updated: 25 July 2022; Ref: scu.84728

Warimex v EUIPO (Stone): ECFI 31 May 2016

ECJ (Judgment) Mark of the European Union – Application for figurative mark of the European Union STONE – Absolute ground for refusal – Descriptive character – Article 7, paragraph 1 c) of Regulation (EC) No 207/2009

Citations:

T-454/14, [2016] EUECJ T-454/14, ECLI:EU:T:2016:325

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 25 July 2022; Ref: scu.564899

Jochen Schweizer v EUIPO (Du Bist, Was Du Erlebst): ECFI 31 May 2016

(Judgment) Mark of the European Union – Application for verbal mark of the European Union Du bist, was du erlebst. – Absolute grounds for refusal – Trade mark consisting of an advertising slogan – Lack of distinctive character – Article 7, paragraph 1 b) of Regulation (EC) No 207/2009 ‘

Citations:

T-301/15, [2016] EUECJ T-301/15, ECLI:EU:T:2016:324

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 25 July 2022; Ref: scu.564885

ESL Fuels Ltd v Fletcher and Another: ChD 27 Nov 2013

Application for interim injunctive relief pending the speedy trial of a claim as to what is said to be confidential information in the nature of trade secrets, although that characterisation is disputed by the defendants; and it is that dispute which lies at the heart of this case.

Judges:

Hodge QC HHJ

Citations:

[2013] EWHC 3726 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property, Information

Updated: 25 July 2022; Ref: scu.519660

A and E Television Networks Llc and Another v Discovery Communications Europe Ltd: ChD 20 Apr 2011

Case management decision in trade mark infringement action, on the extent to which the court should give permission for a survey to be conducted, and for evidence resulting from previous surveys to be admitted.
Held: Mann J gave the claimant permission to administer questionnaires to members of the public in the form attached to the order.
Mann J said: ‘In the case before me, as will appear, it is necessary to bear in mind the juridical basis of what it is that the court is doing when exercising its control. In my view it is doing (at least) the following:
i) So far as a party is going to seek to put expert evidence before the court, the court is exercising its power to control the amount and nature of expert evidence in order to make sure the expert evidence is proper evidence, admissible, and proportionate.
ii) So far as a party seeks to put in the actual answers to questions, the court is ensuring the evidence is admissible and probative.
iii) So far as the court is controlling the calling of live witnesses obtained as a result of some form of survey evidence (so-called witness collection exercises) it is again ensuring that the evidence is admissible and probative. In particular, it is acting to prevent a party seeking to call a witness whose evidence is going to be tainted to an unacceptable degree by the mechanism under which it is collected (an inappropriate question).
iv) In so doing, the court is ensuring that costs are not wasted and are proportionate. It is wrong for costs to be wasted in conducting hopeless surveys, for the other party to have to waste costs dealing with that evidence, and for court time to be wasted in dealing with it at trial.
v) When a court is acting in this capacity it must bear in mind that it is acting at some remove from the trial. If it disallows a survey it is concluding, short of a trial, that evidence which one party wishes to adduce should not be allowed in because it will be of no or insufficient value. In embarking on that exercise it must acknowledge that there will be cases in which it is not wholly clear that the evidence in question will be valueless. In those circumstances the right course may be not to bar the evidence or survey at the interim stage, but to allow it and to have more informed argument at the trial (or conceivably at another interim stage, provided that that is a cost-effective way of going about the matter).’

Judges:

Mann J

Citations:

[2011] EWHC 1038 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Directions – A and E Television Networks Llc and Another v Discovery Communications Europe Ltd ChD 1-Feb-2013
The claimants had operated the ‘History’ and associated variant TV channels and trade marks. The claimed that the defendant’s ‘Discovery History’ channels were in breach. The defendants challenged the validity of the trade marks. The court now . .
Cited – Marks and Spencer Plc v Interflora Inc and Another CA 20-Nov-2012
The court gave guidance on the use of surveys in trials for passing off and trade mark infringement.
Lewison LJ reviewed the practice of conducting interviews and surveys in passing off cases: ‘The upshot of this review is that courts have . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 25 July 2022; Ref: scu.434878

Actavis UK Ltd and Others v Eli Lilly and Company: PatC 15 May 2014

The defendants owned a cancer treatment drugs patent which had been extended. The various claimants wished to introduce a generic version, and sought a declaration of invalidity of the patent.
Held: None of the Actavis products would directly or indirectly infringe the Patent in the UK or in France, Italy or Spain.

Judges:

Arnold J

Citations:

[2014] EWHC 1511 (Pat), [2014] 2 All ER (Comm) 669, [2014] 4 All ER 331, [2015] Bus LR 154, [2015] RPC 6

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

At First Instance – Eli Lilly v Actavis UK Ltd and Others SC 12-Jul-2017
The issue raised on this appeal and cross-appeal is whether three products manufactured by Actavis would infringe a patent whose proprietor is Lilly, namely European Patent (UK) No 1 313 508, and its corresponding designations in France, Italy and . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 24 July 2022; Ref: scu.525790

In Re A Patent Application No 9204959 2 by Fujitsu Ltd; Merrill Lynch, Gale, and Fujitsu Limited’s Application: ChD 18 Jun 1996

The applicant appealed rejection of its application for a patent for a method and apparatus for modelling synthetic crystalline structures. The apparatus would involve (indeed consist of) a computer programmed for the task.
Held: A pure software application or method did not become registrable merely because it took control of a computer screen; it was still software. It was in substance a method of performing a mental act since the result depended on the personal skill and assessment of the user in selecting certain criteria for the modelling process.

Judges:

Laddie J

Citations:

Times 18-Jun-1996, [1996] RPC 511

Statutes:

Patents Act 1977 1(2)

Jurisdiction:

England and Wales

Cited by:

Appeal from – In Re Patent Application No 9204959 by Fujitsu Ltd CA 14-Mar-1997
A computer program modelling a crystal structure is not patentable; it was not a hardware function, and software is not capable of protection under Patents law. Aldous LJ repeated his concern at the so called ‘technical contribution test’ for . .
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 . .
Cited – Blacklight Power Inc v The Comptroller-General of Patents PatC 18-Nov-2008
The applicant appealed against the refusal of two patents by the respondent.
Held: The standard of proof to be applied on objections to patentability was the same which applied when testing for exclusions. The standard was the balance of . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 24 July 2022; Ref: scu.81676

Football Dataco Ltd and Others v Sportradar Gmbh and Another: CA 29 Mar 2011

Matter referred to ECJ. The claimants sougt to restraiin alleged breach of database rights by the defendants in lists of Football League fixtures.

Citations:

[2011] EWCA Civ 330

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – Football Dataco Ltd and Others v Sportradar Gmbh and Another ChD 17-Nov-2010
The claimants complained of alleged breach of database rights claimed by the claimants in their lists of football match schedules. . .

Cited by:

At CA – Football Dataco Ltd and Others v Sportradar Gmbh and Another ChD 8-May-2012
. .
Reference – 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.

Jurisdiction, European, Intellectual Property

Updated: 23 July 2022; Ref: scu.431246

Football Dataco Ltd and Others v Brittens Pools Ltd and Others: ChD 26 Nov 2009

Judges:

Fysh QC J

Citations:

[2009] EWHC 3294 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

See Also – Football Dataco Ltd and Others v Brittens Pools Ltd (In Action 3222) and Others ChD 23-Apr-2010
The court considered what rights existed in the annual football fixture lists created by the claimants. The claimants said that the list was created only with a considerable effort applying certain rules. The defendants denied that any copyright . .
See Also – Football Dataco Ltd and Others v Yahoo! UK Ltd and Others CA 9-Dec-2010
The claimants asserted ownership of copyright in football fixture lists as a database right. The defendant denied that they attracted any such right. The judge had found that significant skill and labour went into the preparation of the list.
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 July 2022; Ref: scu.401889

Ranbaxy (UK) Ltd v Warner-Lambert Company: CA 28 Jun 2006

Cross appeals from refusal of declaration of non-infringement and of invalidity of patent for lack of novelty and obviousness.

Judges:

Chadwick, Jacob, Neuerger LJJ

Citations:

[2006] EWCA Civ 876

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – Ranbaxy UK Ltd and Another v Warner-Lambert Company PatC 12-Oct-2005
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 July 2022; Ref: scu.242972

Ashdown v Telegraph Group Ltd: ChD 11 Jan 2001

The claimant, during his career had written private diaries, including minutes of secret political meetings. As he stepped down from leadership, he began to arrange publication. Before this was complete, the defendant published extracts. He complained of breach of copyright.
Held: The claim succeeded. The VC granted a final injunction against any further infringement and directed disclosure of information to enable Mr Ashdown to exercise his right of election between damages and an account of profits. The Human Rights Act did not operate to extend the defences available to a claim for copyright infringement, on the basis that it was needed to provide for freedom of the press. The needs of the right to freedom of expression were satisfied by the defences available under the Act, including that of fair dealing, and there was no need to consider the individual facts of each situation. The need to have particular regard to an element did not mean that it should be given extra weight.
Sir Andrew Morritt V-C considered the meaning of ‘criticism and review’, saying: ‘I accept, of course, that the expression ‘criticism and review’ is of wide import. Cf Robert Walker LJ in Pro Sieben Media AG v. Carlton UK Television Ltd [1999] 1 WLR 605, 614G. Likewise I accept that it is necessary to have regard to the true purpose of the work. Is it ‘a genuine piece of criticism or review, or is it something else, such as the attempt to dress up the infringement of another’s copyright in the guise of criticism, and so profit unfairly from another’s work’? Cf Henry LJ in Time Warner Entertainments Co LP v. Channel Four Television Corpn plc [1994] EMLR 1, 14. But what is required is that the copying shall take place as part of and for the purpose of criticising and reviewing the work. The work is the minute. But the articles are not criticising or reviewing the minute: they are criticising or reviewing the actions of the Prime Minister and the claimant in October 1997′

Judges:

Sir Andrew Morritt VC

Citations:

Times 06-Feb-2001, Gazette 22-Feb-2001, [2001] EWHC Ch 28, [2001] 2 WLR 967

Links:

Bailii

Statutes:

Copyright Designs and Patents Act 1988, European Convention on Human Rights 10

Jurisdiction:

England and Wales

Citing:

Cited – Time Warner Entertainments LP v Channel Four Television Corporation plc CA 1994
In testing whether a defence to copyright infringement of fair dealing succeeds, the court can take note of the actual purpose of the work, and will look carefully to verify the claimed purpose: ‘it is necessary to have regard to the true purpose of . .

Cited by:

Appeal from – Ashdown v Telegraph Group Ltd CA 18-Jul-2001
The appellant complained that a part of his confidential diaries had been republished without his consent by the defendant newspaper group. The defendant appealed, saying that the publication was fair dealing.
Held: The exceptions within the . .
Cited – Fraser-Woodward Ltd v British Broadcasting Corporation Brighter Pictures Ltd ChD 23-Mar-2005
The claimant asserted infringement of copyright by the defendants in photographs of the family of David Beckham. The defendant admitted using the photographs but asserted that no permission was required since the use was a fair dealing.
Held: . .
Cited – Forensic Telecommunications Services Ltd v West Yorkshire Police and Another ChD 9-Nov-2011
The claimant alleged infringement by the defendant of assorted intellectual property rights in its database. It provided systems for recovering materials deleted from Nokia mobile phones.
Held: ‘the present case is concerned with a collection . .
Cited – The Newspaper Licensing Agency Ltd and Others v Meltwater Holding Bv and Others ChD 26-Nov-2010
The claimant newspapers complained of the spidering of the web-sites and redistribution of the materials collected by the defendants to its subscribers. The defendants including the Public Relations Consultants Association (PRCA) denied that they . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Media, Human Rights

Updated: 23 July 2022; Ref: scu.77890

Hyde Park Residence Ltd v News Group Newspapers Ltd et Al: ChD 19 May 1999

There is a public interest defence to an allegation of copyright infringement. A newspaper republished video camera stills to demonstrate the untruth of assertions made publicly about the relationship if Princess Diana and Dodi Fayed. It was a current event.

Citations:

Gazette 19-May-1999

Statutes:

Copyright Designs and Patents Act 1988 30(2) 97

Jurisdiction:

England and Wales

Intellectual Property

Updated: 23 July 2022; Ref: scu.81571

Candy v Holyoake and Others: QBD 2 Mar 2017

Mr Candy claimed remedies for what he alleged were completed or threatened wrongs in the form of breach of confidence, misuse of private information, and breach of the Data Protection Act 1998 (‘DPA’) against five defendants, one of whom had filmed the claimant misbehaving whilst intoxicated, and threatened to publish it.

Judges:

Warby J

Citations:

[2017] EWHC 373 (QB)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Holyoake and Another v Candy and Others ChD 27-Jul-2016
The claimants alleged several torts had been involved in a substantial fraud on them by means of a funding loan. . .
See Also – Holyoake and Another v Candy and Others ChD 29-Nov-2016
Application by the Defendants for security for costs. . .
See Also – Holyoake v Candy and Another QBD 24-Jan-2017
The claimant sought to have access to his personal information held by the defendant. The defendant relied upon the legal professional privilege exemption. . .
See Also – Holyoake and Another v Candy and Others ChD 27-Feb-2017
Applications for further disclosure on the grounds of collateral waiver. . .
See Also – Candy and Others v Holyoake and Another CA 28-Feb-2017
Appeal against grant of ‘notification injunction’ . .
Cited – Hutcheson (Formerly Known As ‘KGM’) v News Group Newspapers Ltd and Others CA 19-Jul-2011
The claimant appealed against the refusal of a privacy order, protecting his identity in his claim.
Held: The appeal was refused. That Article 8 was ‘engaged’ was not conclusive of the question whether the claimant enjoyed a reasonable . .

Cited by:

Cited – Candy v Holyoake and Others (No 2) QBD 22-Nov-2017
. .
See Also – Holyoake and Another v Candy and Others ChD 21-Dec-2017
. .
Cited – HRH The Duchess of Sussex v Associated Newspapers Ltd ChD 11-Feb-2021
Defence had no prospect of success – Struck Out
The claimant complained that the defendant newspaper had published contents from a letter she had sent to her father. The court now considered her claims in breach of privacy and copyright, and her request for summary judgment.
Held: Warby J . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Information

Updated: 23 July 2022; Ref: scu.578047

Budejovicky Budvar v OHMI- Anheuser-Busch (Bud): ECFI 16 Dec 2008

Europa Community trade mark Opposition proceedings Applications for Community word and figurative marks BUD Appellations ‘bud’ Relative grounds for refusal Article 8(4) of Regulation (EC) No 40/94.

Citations:

T-309/06, [2008] EUECJ T-309/06

Links:

Bailii

Statutes:

Council Regulation (EC) No 40/94

European, Intellectual Property

Updated: 21 July 2022; Ref: scu.279128

Hotel Cipriani Srl and others v Cipriani (Grosvenor Street) Ltd and others: ChD 9 Dec 2008

Judges:

Arnold J

Citations:

[2008] EWHC 3032 (Ch)

Links:

Bailii

Cited by:

Appeal from – 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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 21 July 2022; Ref: scu.278849

White v Withers Llp and Another: QBD 19 Nov 2008

The claimant sought damages. The defendant firm of solicitors had represented the claimant’s wife in matrimonial procedings, and had used in evidence documents which the claimant said had been taken from him and were confidential.
Held: The claim was struck out. Any claim would be for nominal damages only, but was struck out for disclosing no cause of action.

Judges:

Eady J

Citations:

[2008] EWHC 2821 (QB)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Applied – Hildebrand v Hildebrand 1992
The parties in ancillary relief proceedings sought orders for discovery. H had been to the wife’s flat surreptitiously on five occasions, and taken photocopies of so many documents obtained by him in the course of those visits (but returned after . .

Cited by:

Cited – White v Withers Llp and Dearle CA 27-Oct-2009
The claimant was involved in matrimonial ancillary relief proceedings. His wife was advised by the defendants, her solicitors, to remove his private papers. The claimant now sought permission to appeal against a strike out of his claim against the . .
Lists of cited by and citing cases may be incomplete.

Legal Professions, Intellectual Property

Updated: 19 July 2022; Ref: scu.277903

Bookmakers’ Afternoon Greyhound Services Ltd and others v Amalgamated Racing Ltd and others (No 2): ChD 6 Nov 2008

Judges:

Morgan J

Citations:

[2008] EWHC 2688 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Bookmakers Afternoon Greyhound Services Ltd and others v Amalgamated Racing Ltd and others ChD 8-Aug-2008
Various racecourses had combined together to sell the rights to televise their races to bookmakers. The bookmakers complained that the combination was anti-competitive and in breach of European law. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Commercial, European

Updated: 19 July 2022; Ref: scu.277736

The Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH (Approximation Of Laws): ECJ 9 Oct 2008

ECJ Trade marks – Pharmaceutical products – Repackaging – Parallel imports – Change in appearance of the packaging Obligation of prior notice

Citations:

C-276/05, [2008] EUECJ C-276/05 – O

Links:

Bailii

Jurisdiction:

European

Cited by:

Opinion – The Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH (Approximation Of Laws) ECJ 22-Dec-2008
Trade marks Pharmaceutical products Repackaging Parallel imports Substantial change in appearance of the packaging Obligation of prior notice . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 July 2022; Ref: scu.276799

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 be ordered under the undertaking.
Held: The first issue was to establish the actual loss on a compensation not a punitive basis: ‘the award is of equitable compensation (not of damages strictly so called) and that there may be occasion to examine whether such equitable compensation should be fettered by rigid adherence to common law rules.’ and ‘whilst it is for Apotex to establish its loss by adducing the relevant evidence, I do not think I should be over eager in my scrutiny of that evidence or too ready to subject Apotex’ methodology to minute criticism. That is so for two reasons, quite apart from an acceptance of the proposition that the very nature of the exercise renders precision impossible.’ The reasons where that the party seeking the injunction had already stated that such a calculation could be made, and that the assessment is a liberal one, though falling short of punitive.

Judges:

Norris J

Citations:

[2008] EWHC 2347 (Ch), [2009] FSR 3

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – 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 . .
Cited – Smithkline Beecham Plc and Another v Apotex Europe Ltd and others CA 14-Feb-2003
Patent infringement claim. . .
See Also – Les Laboratoires Servier and Another v Apotex Inc and others CA 9-May-2008
Appeal against finding that patent was invalid for lack of novelty, but that if valid the defendant’s product would have infringed it. . .
Cited – Pozzoli Spa v BDMO Sa and Another CA 22-Jun-2007
The patentee had invented a method for storing CDs. The patentee sought leave to appeal a finding that its patent was invalid, and if successful, to appeal a finding that the defendant’s apparatus was not infringing.
Held: The application for . .
Cited – Smith v Day 1882
. .
Cited – Chaplin v Hicks CA 1911
A woman who was wrongly deprived of the chance of being one of the winners in a beauty competition was awarded damages for loss of a chance. The court did not attempt to decide on balance of probability the hypothetical past event of what would have . .
Cited – Mallett v McMonagle HL 1970
The House discussed the role of the court in assessing future losses. Lord Diplock: ‘The role of the court in making an assessment of damages which depends upon its view as to what will be and what would have been is to be contrasted with its . .
Cited – General Tire v Firestone Tyre and Rubber Company Limited HL 1975
The object of damages is to compensate for loss or injury. The general rule for ‘economic’ torts is that the measure is that sum of money which will put the injured party in the same position as he would have been in if he had not sustained the . .
Cited – Malmesbury and others v Strutt and Parker (A Partnership) and Another QBD 11-May-2007
. .
Cited – Ketteman v Hansel Properties Ltd HL 1987
Houses were built on defective foundations. The purchasers sued the builders and later the architects who designed them. The defendants argued that the houses were doomed from the start so that the cause of action accrued, not when the physical . .
Cited – Columbia Pictures Industries Inc v Robinson ChD 1986
The plaintiff had obtained an Anton Piller order against a defendant whose business consisted almost entirely in the manufacture and sale of pirated videos.
Held: The injunction had been obtained for an improper purpose and without full . .

Cited by:

Cited – Soutzos v Asombang and Others ChD 21-Jun-2011
The claimant had obtained a freezing order against the defendants. His claim having been dismissed, the court now considered if and what damages should be paid under the cross-undertaking he had given.
Held: Setting out and applying the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Damages

Updated: 19 July 2022; Ref: scu.276791

Kanal 5 and TV 4 v Foreningen Svenska Tonsattares Internationella Musikbyra: ECJ 11 Sep 2008

ECJ (Competition) Article 82 EC Dominant position Abuse Collective copyright management body De facto monopoly Television broadcasting Method of calculation of remuneration

Citations:

C-52/07, [2008] EUECJ C-52/07 – O

Links:

Bailii

Jurisdiction:

European

Cited by:

Order – Kanal 5 and TV 4 v Foreningen Svenska Tonsattares Internationella Musikbyra ECJ 11-Dec-2008
ECJ Competition – Copyright – Copyright management organisation enjoying a de facto monopoly – Collection of royalties relating to the broadcast of musical works – Method of calculating those royalties – Dominant . .
Lists of cited by and citing cases may be incomplete.

Commercial, Intellectual Property

Updated: 19 July 2022; Ref: scu.276382

Minimax Gmbh and Co Kg v Chubb Fire Ltd: PatC 29 Jul 2008

Chubb sought to prevent the registration of a mark by the claimant arguing that its use would amount to passing off as against its own marks.
Held: There was insufficient evidence for the hearing officer to have found that Chubb had maintained a sufficient residual reputation in goods bearing the mark to complain as to the proposed registration.

Judges:

Floyd J

Citations:

[2008] EWHC 1960 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

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 – Wild Child TMR 17-Feb-1998
PO Trade Marks – Appeals to the Appointed Person Decisions – Application No: 2013102 – Opposition
The court set out the elements of the cause of action of passing off: ‘The necessary elements of the action . .
Cited – Bessant and others v South Cone Incorporated; in re REEF Trade Mark CA 28-May-2002
The Reef pop group applied to register ‘REEF’ for Classes 25 and 26 – e.g. T-shirts, badges, etc. South Cone opposed them as registered proprietors of ‘Reef Brazil’ for the footwear which also was included in Class 25. South’s reputation was . .
Cited – South Cone Incorporated v Bessant, Greensmith, House and Stringer (a Partnership) trading as ‘Reef’; REEF Trade Mark ChD 24-Jul-2001
The applicants sought registration of the trade mark ‘Reef’ in connection with merchandising activities in classes 25 and 26 arising from their pop group of the same name. The challengers owned a trade mark ‘Reef Brazil’ in class 25 in relation to . .
Cited – Ad-Lib Club v Granville ChD 1972
The plaintiff operated a night club for two years from 1964 to 1966 under the name AD-LIB CLUB. It was closed down for making excessive noise. The plaintiff could not find for alternate premises. The defendant, who did not file any evidence in . .
Cited – Sutherland v V2 Music Ltd 2002
The court considered whether the goodwill generated by a funk music band called Liberty 1, which had been formed in the late 1980s, was still subsisting in March 2001. Laddie J considered the relevant principles, reviewed the authorities, and said . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 July 2022; Ref: scu.273173

Bookmakers Afternoon Greyhound Services Ltd and others v Amalgamated Racing Ltd and others: ChD 8 Aug 2008

Various racecourses had combined together to sell the rights to televise their races to bookmakers. The bookmakers complained that the combination was anti-competitive and in breach of European law.

Judges:

Morgan J

Citations:

[2008] EWHC 1978 (Ch)

Links:

Bailii

Statutes:

Competition Act 1998, EC Treaty 81

Jurisdiction:

England and Wales

Cited by:

See Also – Bookmakers’ Afternoon Greyhound Services Ltd and others v Amalgamated Racing Ltd and others (No 2) ChD 6-Nov-2008
. .
Lists of cited by and citing cases may be incomplete.

Media, Intellectual Property, European, Commercial

Updated: 19 July 2022; Ref: scu.272305

Whirlpool Corporation and others v Kenwood Ltd: ChD 4 Aug 2008

The court was asked whether Whirlpool was entitled, either on the basis of the rights conferred by registration of Community trade mark number 2, 174, 761 or on the basis of the law relating to passing off, to prevent Kenwood from marketing stand mixers having the shape and appearance of its own kMix mixer.

Judges:

Geoffrey Hobbs QC J

Citations:

[2008] EWHC 1930 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Appeal from – Whirlpool Corporation and Another v Kenwood Ltd CA 23-Jul-2009
Allegation of infringement of trade mark. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 July 2022; Ref: scu.272256

Globelegance BV v Sarkissian: ChD 1974

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

Judges:

Templeman J

Citations:

[1974] RPC 603

Jurisdiction:

England and Wales

Citing:

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 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.

Intellectual Property

Updated: 18 July 2022; Ref: scu.566007

In Re Club Europe Trade Mark: ChD 2 Sep 1999

A court hearing an appeal under the Act, and deciding whether or not to admit new evidence, must now bear in mind the overriding objectives of litigation as defined, and also the need for proportionality. In this case, the pre-hearing procedures had failed to identify the real issues between the parties, and justice required that additional evidence be admitted rather than the case be remitted for hearing.

Citations:

Gazette 02-Sep-1999, Times 02-Aug-1999

Jurisdiction:

England and Wales

Intellectual Property, Civil Procedure Rules

Updated: 18 July 2022; Ref: scu.81809

In Re Dualit Trade Mark; Dualit (Toaster Shapes): ChD 19 Jul 1999

An application to register a shape as a trade mark, on the basis of the shape only and without association with any other indication, would fail unless some particular element of the shape was driven by more than the need to produce a technical effect. Where an association with a particular shape with the applicant arising from long use was to be used found the claim, full evidence would be required. When application was made to register the shape of an electric toaster as a trade mark, LLoyud J said that he should ask: ‘does [the mark] have a meaning denoting the origin of the goods?’

Judges:

LLoyd J

Citations:

Times 19-Jul-1999, [1999] RPC 890

Statutes:

Trade Marks Act 1994

Jurisdiction:

England and Wales

Intellectual Property

Updated: 18 July 2022; Ref: scu.81849

Reber v OHMI – Chocoladefabriken Lindt and Sprungli (Mozart): ECFI 9 Jul 2008

Europa Community trade mark – Invalidity proceedings – Community word mark Mozart Subject-matter of the dispute Absolute ground for refusal Descriptive character Obligation to state the reasons on which a decision is based Legitimate expectations Equal treatment Principle of legality Article 7(1)(c), Article 51(1)(a), Article 73, first sentence, and Article 74(1), first phrase, of Regulation (EC) No 40/94.

Citations:

T-304/06, [2008] EUECJ T-304/06

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 17 July 2022; Ref: scu.270884

Murphy v Media Protection Services Ltd: Admn 16 Jul 2008

The defendant publican appealed against convictions for dishonestly receiving a broadcast programme with intent to avoid payment.

Citations:

[2008] EWHC 1666 (Admin), [2008] FSR 33, [2008] UKCLR 427

Links:

Bailii

Statutes:

Copyright, Design and Patents Act 1988 297(1)

Jurisdiction:

England and Wales

Citing:

See Also – The Football Association Premier League Ltd v QC Leisure and others ChD 18-Jan-2008
The court considered interlocutory applications in an action for copyright infringement alleging the unauthorised broadcast of football matches. . .
Lists of cited by and citing cases may be incomplete.

Crime, Media, Intellectual Property, European

Updated: 17 July 2022; Ref: scu.270848

Federacion De Cooperativas Agrarias De La Comunidad Valenciana v OCVV- Nador Cott Protection (Nadorcott): ECFI 31 Jan 2008

ECJ Plant varieties Appeal to the Board of Appeal of the Community Plant Variety Office – Inadmissibility – Lack of individual concern Effective judicial protection Obligation to state reasons.

Citations:

T-95/06, [2008] EUECJ T-95/06

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 13 July 2022; Ref: scu.264048

O2 Holdings Limited and O2 (UK) Limited -v -Hutchison 3G UK Limited: ECJ 31 Jan 2008

ECJ (Opinion of Advocate General Mengozzi) Directive 84/450/EEC Comparative advertising Use of a competitor’s trade mark or of a sign similar to a competitor’s trade mark in comparative advertising Applicability of Article 5(1) of Directive 89/104/EEC – Conditions on which comparative advertising is permitted Whether reference to the competitor’s trade mark indispensable

Citations:

C-533/06, [2008] EUECJ C-533/06, [2008] ECR I-4231, [2008] ETMR 55, [2008] CEC 899, [2009] Bus LR 339, [2008] RPC 33, [2008] 3 CMLR 14

Links:

Bailii

Statutes:

Directive 89/104/EEC 5(1)

Jurisdiction:

European

Citing:

At First instance – O2 Holdings Ltd and Another v Hutchison 3G UK Ltd ChD 11-Mar-2005
The idea of the ‘average consumer’, the arbiter of similarity in trade mark disputes, is a legal construct which tends to emphasise that similarity is an autonomous concept of European law. Similarity and likelihood of confusion are intimately bound . .
At Court of Appeal – O2 Holdings Ltd and Another v Hutchison 3G Ltd CA 5-Dec-2006
The court faced an allegation based on allegedly false comparative advertising, and referred to the European Court the question: ‘Where a trader, in an advertisement for his own goods or services uses a registered trade mark owned by a competitor . .

Cited by:

Advocate General’s Opinion – O2 Holdings Limited and O2 (UK) Limited v Hutchison 3G UK Limited ECJ 12-Jun-2008
Use of trade mark in coparative advertising
Europa Trade marks Directive 89/104/EEC Article 5(1) Exclusive rights of the trade mark proprietor Use of a sign identical with, or similar to, a mark in a comparative advertisement Limitation of the effects of a . .
Cited – Interflora, Inc and Another v Marks and Spencer Plc and Another ChD 22-May-2009
Each of the parties provided a service delivering flowers. The claimant had a trade mark, and the defendants each purchased the use of that trade mark and variations of it with a search engine (Google) so that a search under the trade mark produced . .
Cited – Specsavers International Healthcare Ltd and Others v Asda Stores Ltd ChD 30-Jul-2010
The claimant complained of the defendant’s use of its trade marks alleging infringement and passing off when it relaunched its own optician services. Having had advance notice of the details of the proposed campaign, the claimants had launched their . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 13 July 2022; Ref: scu.264050

Ultraframe UK Ltd v Clayton and others: ChD 14 Feb 2003

Laddie J said: ‘I have to resolve a dispute between the parties on the issue of costs following on from the determination of the preliminary issues ordered to be heard by His Honour Judge Behrens. It is difficult to summarise the complex multifaceted dispute which exists between the parties and in relation to which the determination of the preliminary issues arose. The issues I had to concern myself with related to the ownership of the design rights in the parts from which conservatories are made, whether a case of infringement by the defendants have been out and whether design rights subsisted. However this is just a part of what is really a very big and convoluted dispute. ‘

Judges:

Laddie J

Citations:

[2003] EWHC 242 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Ultraframe UK Limited v Clayton, Fielding and Others ChD 3-Oct-2002
The claimants asserted infringement of their registered design rights in parts used in their double glazing and conservatory units. ‘Therefore it is possible for design right to subsist in the design of the part of the article which is not excluded . .
Lists of cited by and citing cases may be incomplete.

Costs, Intellectual Property

Updated: 13 July 2022; Ref: scu.227063

Clearsprings Management Ltd v Businesslinx Ltd and Another: ChD 14 Jul 2005

The parties disputed the ownership of copyrights in a computer software program.

Judges:

Christopher Floyd QC DHCJ

Citations:

[2005] EWHC 1487 (Ch), [2006] FSR 3

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Robin Ray v Classic FM Plc PatC 18-Mar-1998
Contractor and Client Copyrights
The plaintiff had contributed a design for a system of classifying and selecting tracks to be played on a radio station. He did so under a consultancy contract.
Held: A Joint authorship claim required that the contributor had made some direct . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 July 2022; Ref: scu.263697

Citibank Na v The Comptroller General of Patents: ChD 9 Jun 2006

Appeal against refusal of patent – invention related to a scheme, rule, or method, for doing business and/or a mathematical method – financial derivatives.

Judges:

Mann J

Citations:

[2006] EWHC 1676 (Ch)

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 12 July 2022; Ref: scu.263670

Merlet and Another v Mothercare Public Ltd: CA 4 Nov 1985

The plaintiff asserted copyright in a ‘raincosy’ which she said had been copied by the defendants.

Judges:

Ackner, O’Connor, Slade LJJ

Citations:

[1985] EWCA Civ 19

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – British Leyland Motor Corporation Ltd v Armstrong Patents Co Ltd HL 1986
The claimant’s product was made from drawings. The drawings were protected as copyright artistic works. They were reproduced in a three dimensional form by the claimant’s own products. Someone who copied the claimant’s products indirectly copied the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 July 2022; Ref: scu.262665

Zipher Ltd v Markem Systems Ltd: PatC 16 Jan 2007

Citations:

[2007] EWHC 154 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See also – Regina v Coutts HL 19-Jul-2006
The defendant was convicted of murder. Evidence during the trial suggested a possibility of manslaughter, but neither the defence nor prosecution proposed the alternate verdict. The defendant now appealed saying that the judge had an independent . .
See Also – Markem Corporation and Another v Zipher Ltd CA 22-Mar-2005
A patent which was applied for as a result of a breach of confidence may be capable of giving the victim of the breach the benefit of an interest in the patent. In the UK at least the basis of an entitlement claim must be a breach of the claimant’s . .

Cited by:

Cited – Whaley and Another v Lord Advocate HL 28-Nov-2007
The House considered claims that the 2002 Act, which set out to make unawful the hunting of wild mammals with dogs unlawful, infringed the claimants’ human rights, in that it contravened international treaties requiring the support for traditional . .
See Also – Zipher Ltd v Markem Systems Ltd and Another PatC 25-Jun-2008
. .
See Also – Zipher Ltd v Markem Systems Ltd and Another PatC 1-Sep-2008
This judgment deals with the issue of the scope of the injunction to which Markem should be entitled in support of the undertaking given to HHJ Fysh QC. . .
See Also – Zipher Ltd v Markem Systems Ltd and Another CA 10-Feb-2009
In earlier proceedings, Zipher had given an undertaking not to pursue their claim over and above a certain level. The defendant now sought to hold them to that undertaking. The claimants replied that the undertaking had lapsed when that action had . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 July 2022; Ref: scu.261504

Procter and Gamble Company v Reckitt Benckiser (UK) Ltd: CA 10 Oct 2007

The claimant alleged infringement of its design right by the defendants’ Air-Wick product. The court considered the approach necessary in asking whether a European Community design had been infringed.
Held: Looking at an article for this purpose required a different viewpoint from checking for trade mark infringement. The purpose was different. The court should look through the eyes of an informed user, with a more discriminating view than the average consumer and who was to some extent familiar with design issues. In this case the similarities were of too general a nature. The judge should have looked for and stated what was the overall impression created by the article said to be infringing.
Jacob LJ said: ‘The most important things in a case about registered designs are:
(1) the registered design:
(2) the accused object; and
(3) the prior art.
nd the most important thing about each of these is what they look like.’ and ‘[t]he point of protecting a design is to protect that design as a design. So what matters is the overall impression created by it: will the user buy it, consider it or appreciate it for its individual design?’

Judges:

May LJ, Dyson LJ, Jacob LJ

Citations:

[2007] EWCA Civ 936, Times 17-Oct-2008, [2008] FSR 8, [2008] ECDR 3, [2008] Bus LR 801

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – Procter and Gamble Company v Reckitt Benckiser (UK) Ltd ChD 13-Dec-2006
It was alleged that a Community registered design comprising a series of monochrome line drawings of a spray canister was infringed by a product called ‘Air Wick’. The claimant argued that, in light of the registration, only the product shapes . .

Cited by:

Approved – Magmatic Ltd v PMS International Ltd CA 28-Feb-2014
The parties disputed an alleged infringement of a registered design in the Trunki, a child’s suitcase designed to be ridden on, and other infringements of copyright in the packaging. PMS now appealed on the issue of whether the defendant’s Kiddee . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 July 2022; Ref: scu.259768

Tedesco (Justice And Home Affairs): ECJ 18 Jul 2007

ECJ Opinion – Cooperation between the courts of the Member States in the Evidence Regulation (EC) No 1206/2001 Directive 2004/48/EC of the Hague Convention on the Taking of Evidence Procedure for conservation of evidence violations of intellectual property rights

Judges:

Kokott AG

Citations:

C-175/06, [2007] EUECJ C-175/06

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 11 July 2022; Ref: scu.259236

Arrow Generics Ltd and Another v Merck and Co, Inc: PatC 31 Jul 2007

The court considered it arguable that it had power properly to grant declarations that a product was old or obvious in patent law terms at a particular date.

Judges:

Kitchin J

Citations:

[2007] EWHC 1900 (Pat), [2007] FSR 39

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property, Litigation Practice

Updated: 11 July 2022; Ref: scu.258670

Generics (UK) Ltd and others v H Lundbeck A/S (Costs): PatC 27 Jun 2007

The parties disputed the patentability of an anti-depressant drug Citalopram (Prozac).
Held: the claims were invalid for insufficiency.

Judges:

Kitchin J

Citations:

[2007] EWHC 1606 (Pat), [2007] RPC 729

Links:

Bailii

Statutes:

Patents Act 1977 1 2

Citing:

Applied – Biogen Plc v Medeva Plc HL 31-Oct-1996
The claim patented sought to protect a genetic molecule rather than a whole mouse namely that the molecule would, if inserted into a suitable host cell, cause the cell to make antigens of the Hepatitis B virus. A recombinant method of making the . .

Cited by:

Appeal From – H Lundbeck A/S v Generics (UK) Ltd and others CA 10-Apr-2008
The court heard an appeal against a finding that a patent for a chemical compound was invalid for insufficiency.
Held: The appeal succeeded.
Enough information to ‘work the invention’ meant in order to make the product. . .
At First Instance – Generics (UK) Ltd and others v H Lundbeck A/S HL 25-Feb-2009
Patent properly granted
The House considered the patentability of a chemical product, citalopram made up of two enantiomers, as opposed to the process of its creation, questioning whether it could be new or was insufficient within the 1977 Act.
Held: The appeal . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Costs

Updated: 11 July 2022; Ref: scu.258181

Mulhens v OHMI – Minoronzoni (Tosca Blu): ECFI 11 Jul 2007

ECJ Community trade mark – Opposition procedure Application for figurative Community trade mark TOSCA BLU Earlier national word mark TOSCA Relative grounds for refusal Well-known trade mark within the meaning of Article 6 bis of the Paris Convention Article 8(1)(b) of Regulation (EC) No 40/94 Article 8(5) of Regulation (EC) No 40/94.

Citations:

T-150/04, [2007] EUECJ T-150/04

Links:

Bailii

Statutes:

Regulation (EC) No 40/94

European, Intellectual Property

Updated: 11 July 2022; Ref: scu.258203

Sherwin-Williams v OHMI (Twist and Pour): ECFI 12 Jun 2007

ECJ Community trade mark Application for Community word mark TWIST and POUR Absolute ground for refusal of registration Mark devoid of distinctive character Article 7(1)(b) of Regulation (EC) No 40/94.

Citations:

T-190/05, [2007] EUECJ T-190/05

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 11 July 2022; Ref: scu.253453

Boehringer Ingelheim KG v Swingward Ltd: ECJ 6 Apr 2006

Opinion – 1. In the present case the Court of Appeal (England and Wales) (Civil Division) seeks further guidance from the Court of Justice on the effect of the latter’s judgment in Boehringer Ingelheim and Others (‘Boehringer I’). (2) That case concerned the circumstances in which a trade mark owner may rely on his trade mark rights to prevent a parallel importer who has repackaged products bearing the trade mark from marketing those products.
2. In the judgment of the Court of Appeal which led up to the order for reference, Lord Justice Jacob said: ‘Sometimes I think the law may be losing a sense of reality in this area – we are, after all, only considering the use of the owner’s trade mark for his goods in perfect condition. The pickle the law has got into would, I think, astonish the average consumer.’
3. I agree. It seems to me that after 30 years of case-law on the repackaging of pharmaceutical products it should be possible to distil sufficient principles to enable national courts to apply the law to the constantly replayed litigation between manufacturers and parallel importers. I will attempt to articulate such principles in this Opinion. I would then hope that national courts will play their part robustly in applying the principles to the facts before them without further requests to fine-tune the principles. Every judge knows that ingenious lawyers can always find a reason why a given proposition does or does not apply to their client’s situation. It should not however in my view be for the Court of Justice to adjudicate on such detail for evermore. (3)

Judges:

Sharpston AG

Citations:

[2006] EUECJ C-348/04

Links:

Bailii

Cited by:

Cited – L’Oreal Sa and Others v Ebay International Ag and Others ChD 22-May-2009
The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site.
Held: The ECJ had not yet clarified the law on accessory liability in trade mark . .
See also – Boehringer Ingelheim KG v Swingward Ltd ECJ 26-Apr-2007
ECJ (Free Movement of Goods) Industrial and commercial property – Trade mark rights – Pharmaceutical products – Parallel imports – Repackaging of the product bearing the trade mark. . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 11 July 2022; Ref: scu.251860