Tag: Intellectual Property

Buchanan v Alba Diagnostics Limited: IHCS 6 Feb 2001

Judges:

Lord Clarke, Rodger of Earlsferry, President Lord Marnoch

Citations:

[2001] ScotCS 26, [2001] RPC 851

Links:

Bailii

Jurisdiction:

Scotland

Citing:

Appeal from – Buchanan v Alba Diagnostics Ltd OHCS 24-Jun-1999
The pursuer developed and patented a brake fluid safety device. They obtained an interest free loan, and as security assigned the patent and any future developments. After the enforcement of the debt, the lenders sold the assignment to the defenders . .
Appeal – Buchanan v Alba Diagnostics Limited HL 5-Feb-2004
The original inventor obtained a patent for a brake fluid protection system. A loan was raised against the patent, assigning also the future developments of the idea. The loan was called in, and then assigned to the defenders, who took the idea . .

Cited by:

Appeal – Buchanan v Alba Diagnostics Ltd OHCS 24-Jun-1999
The pursuer developed and patented a brake fluid safety device. They obtained an interest free loan, and as security assigned the patent and any future developments. After the enforcement of the debt, the lenders sold the assignment to the defenders . .
Appeal from – Buchanan v Alba Diagnostics Limited HL 5-Feb-2004
The original inventor obtained a patent for a brake fluid protection system. A loan was raised against the patent, assigning also the future developments of the idea. The loan was called in, and then assigned to the defenders, who took the idea . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 June 2022; Ref: scu.169109

China National Petroleum Corporation and others v Fenwick Elliott, Techint International Construction Company: ChD 31 Jan 2002

In the course of a dispute, the claimants concluded that the respondents had acquired documents of a confidential nature, and sought restoration and disclosure of the source. The solicitors for the respondents suggested that the claimants were in breach of disclosure orders, and that the materials were not privileged, and would be subject to disclosure in any event. It was then alleged that the respondent firm had acted improperly in seeking privileged information from employees of the claimants. It was argued that the sources of the information should be disclosed, but the respondents argued that this might put them at personal risk. In this case there was no evidence of privilege inhering, and no specific allegations, and the respondents claim of privilege attaching to his interviews of witnesses succeeded. The claim had no prospect of success and was struck out.

Judges:

The Vice-Chancellor

Citations:

[2002] EWHC 60 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Followed – Ashworth Security Hospital v MGN Ltd CA 18-Dec-2000
The court can order the identity of a wrongdoer to be revealed where the person against whom the order was sought had become involved in his tortious acts. This might apply even where the acts were unlawful, but fell short of being tortious. There . .
Lists of cited by and citing cases may be incomplete.

Construction, Intellectual Property, Information, Legal Professions

Updated: 05 June 2022; Ref: scu.167535

Merz and Krell GmbH and Co: ECJ 4 Oct 2001

ECJ Trade marks – Approximation of laws – Article 3(1)(d) of First Directive 89/104/EEC – Grounds for refusal or invalidity – Trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade – Need for signs or indications to have become customary to designate the goods or services in respect of which registration of the mark is sought – No need for the signs or indications to be directly descriptive of the properties or characteristics of the goods or services in respect of which registration of the mark is sought.

Citations:

C-517/99, [2001] EUECJ C-517/99

Links:

Bailii

European, Intellectual Property

Updated: 04 June 2022; Ref: scu.166677

WWF -World Wide Fund for Nature (Formerly World Wildlife Fund), World Wildlife Fund Inc v World Wrestling Federation Entertainment Inc: ChD 1 Oct 2001

The Fund sought summary relief against the use of the sign ‘WWF’ by the defendants, in breach of a contract. The defendants urged that the contract operated in restraint of trade. There had been long running and widespread trade mark disputes, resolved eventually by an agreement where the defendants undertook not to use the initials. That agreement came to be ignored by the defendants, and eventually the plaintiffs began this action. They argued that any contract in restraint of trade was void unless shown to be reasonable, and that in this case there was no prospect of confusion. The agreement was void. Arguments as to restraint of trade in intellectual property disputes must show some real and unreasonable fetter on trade. In this case though the Fund showed a reasonable need for such restraint. The court thought it would be odd if breach of an ordinary restraint of trade covenant (not to work in a defined area at a defined job for a defined time) did not attract an account, whereas breach of a lesser restraint (not to use a trademark in a trade otherwise permitted) did, and refused an account.

Judges:

The Hon Mr Justice Jacob

Citations:

Times 13-Nov-2001, [2002] FSR 32, [2001] EWHC Ch 482

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Esso Petroleum Co Ltd v Harper’s Garage (Stourport) Ltd HL 1968
Agreement in Restraint of Trade Unenforceable
The defendant ran two garages under solus agreements with the plaintiffs who complained when the defendants began to purchase petrol from cheaper alternative sources. The House was asked whether the solus agreements were be regarded in law as an . .

Cited by:

Doubted – Experience Hendrix LLC v PPX Enterprises Inc and Another CA 20-Mar-2003
The claimant had obtained an interim injunction against the defendant for copyright infringement, though it could show no losses. It now sought additionally damages. The defendant argued that it could not have both.
Held: The case arose form . .
Appeal from – WWF – World Wide Fund for Nature (Formerly World Wildlife Fund); World Wildlife Fund Inc v World Wrestling Federation Entertainment Inc CA 27-Feb-2002
The claimant sought enforcement of a contract restricting the use by the appellant defendant of the initials ‘WWF’ in their trading. The agreement had been reached in settlement of an action for breach of the claimant’s trade mark rights. The . .
First Instance – Liability – WWF (World Wide Fund for Nature) and Another v World Wrestling Federation Entertainment Inc CA 2-Apr-2007
The parties had disputed use of the initals WWF, with a compromise reached in 1994 allowing primary use by the Fund with restricted use by the Federation. The Federation now appealed an award of damages made after a finding of a breach of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contract, Damages

Updated: 04 June 2022; Ref: scu.166235

Procter and Gamble Co v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (‘Baby-Dry’): ECJ 20 Sep 2001

ECJ Appeal – Admissibility – Community trade mark – Regulation (EC) No 40/94 – Absolute ground for refusal to register – Distinctive character – Marks consisting exclusively of descriptive signs or indications – ‘BABY-DRY’.
The purpose of the prohibition of registration of purely descriptive signs as trade marks is to prevent registration as trade marks of signs or indications which, because they are no different from the usual way of designating the relevant goods or services or their characteristics, could not fulfil the function of identifying the undertaking that markets them and are thus devoid of the distinctive character needed for that function. If a real difference could be seen between the words used in a trade mark application, and their normal usage, the rules disallowing the registration of purely descriptive marks was not to be applied. Although the words in ‘Baby-Dry’ were separately descriptive, the combination was not ordinary usage. For trade marks composed of words, descriptiveness is viewed in relation, not only to each word taken separately, but also to the whole which they formed, and in the eyes of a native speaker. Though the phrase did deliver a description, the non-standard ordering was enough to disallow refusal of registration.

Judges:

GC Rodriguez Iglesias, President and Judges C. Gulmann, M. Wathelet, V. Skouris, J.-P. Puissochet, P. Jann, L. Sevon, R. Schintgen, F. Macken, N. Colneric and S. von Bahr Advocate General F. G. Jacobs

Citations:

Times 03-Oct-2001, [2002] Ch 82, [2002] ETMR 22, [2001] EUECJ C-383/99P, C-383/99, [2001] ECR I-6251, [2001] EUECJ C-383/99

Links:

Bailii, Bailii

Statutes:

Council Regulation (EC) No 40/94 7(1) 12

Jurisdiction:

European

Cited by:

Cited – Dyson Limited v The Registrar of Trade Marks ChD 15-May-2003
Applications for trade marks on behalf of the claimant had been rejected. Acquired distinctiveness was a significant issue, and the question of whether the appeal was a review or a rehearing was significant. In this appeal, the parties had given . .
Cited – Special Effects Ltd v L’Oreal Sa and Another CA 12-Jan-2007
The defendants had opposed the grant of the trade mark which they were now accused of infringing. The claimants said that having failed at the opposition stage, they were now estopped from challenging the validity of the mark.
Held: It was not . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 04 June 2022; Ref: scu.166227

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

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

Judges:

Laddie J

Citations:

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

Jurisdiction:

England and Wales

Cited by:

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

Intellectual Property, Torts – Other

Updated: 04 June 2022; Ref: scu.83587

Mecklermedia Corporation and Another v D C Congress Gmbh: ChD 27 Mar 1997

The claimants, a US company with a UK subsidiary, sought summary judgment in its passing off action against the defendant German company. They claimed a trading reputation in trade shows called ‘Internet World’. It appeared that the defendant had deliberately targeted visitors to the claimant’s shows in its promotions in Germany.
Held: The claimant had established a ‘serious question’ that they owned the goodwill in the name. ‘It is to be noted that all the activities of DC take place in Germany and Austria – none take place within the territorial jurisdiction of this court. But I cannot think that it matters so far as the English law of passing off is concerned. To do acts here which lead to damage of goodwill by misleading the public here is plainly passing off. To do those same acts from abroad will not avoid liability.’ A German trade mark action and an English passing off claim are not the same causes of action.

Judges:

Jacob J

Citations:

Times 27-Mar-1997, [1998] 1 All ER

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 June 2022; Ref: scu.83593

Pifco Limited v Philips Domestic Appliances and Personal Care Bv, Philips Electronics UK Limited: PatC 16 Dec 1998

Action for the infringement of a patent relating to the manufacture of electric kettles. Infringement is denied. There is the usual counterclaim for revocation. The principal claim is a method claim.

Citations:

[1998] EWHC Patents 276

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 June 2022; Ref: scu.163085

Discovision Associates, Pioneer Electronics Capital Ltd and Pioneer Electronics (USA) Inc v Disctronics (UK) Ltd, Disctronics Manufacturing (UK) Ltd, and others: PatC 29 Jul 1998

Action for infringement of six patents

Citations:

[1998] EWHC Patents 307

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Brugger v Medic-Aid Ltd (No 2) ChD 1996
B alleged infringement by M of its patented nebulizer. M replied saying that the claims failed for obviousness. Features of the nebulizer were admittedly old and well known, but the claimant asserted a new mechanism which reduced the size of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 04 June 2022; Ref: scu.163078

Hewlett Packard (GmbH), Agilent Technologies Deutschland (GmbH) v Waters Corporation, Waters Ltd: ChD 12 Feb 2001

The Claimant claimed an infringement of their patent, and the respondents counter-claimed for its revocation there having been undisclosed prior art. There were differences between the equipment alleged to be infringing and the patent. The two questions of fact which must be answered are whether the variant has any effect upon the way the ‘invention’ works and, if so, would that then have been obvious to the skilled man. The difference here was material. Nevertheless, the claim of obviousness also failed.

Judges:

Justice Pumfrey

Citations:

[2001] EWHC Ch 16

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 June 2022; Ref: scu.162938

Tickner, Woodhouse v Honda Motor Company Limited (a Company Incorporated Under the Laws of Japan), Honda Europe Nv (a Company Incorporated Under the Laws of Belgium), Honda Motor Europe Limited: PatC 24 Jan 2002

Damages were claimed for patent infringement, and met by conditional cross claims for revocation if infringement was found. The claim related to methods of lubricating petrol engines. An expert witness’s evidence was rejected as unreliable or biased.
Held: The evidence suggested that the amendment proposed was to be allowed, that the patent did disclose a new step, and was valid, and not infringing of any other patent.

Judges:

The Honourable Mr Justice Jacob

Citations:

[2002] EWHC 8 (Patents)

Links:

Bailii, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 June 2022; Ref: scu.167471

Mark Wilkinson Furniture Ltd v Woodcraft Designs (Radcliffe) Ltd: ChD 13 Oct 1997

Design right is limited to shape excluding any surface decoration. There is no infringement of design right by copying only the surface decoration. ‘The design in which the plaintiff primarily claims design right is now pleaded as ‘the whole external shape and configuration of that part of the wall units which are used in its Cook’s Kitchen comprising the front, front corners, sides and cornice’ . . Save to the extent that it is affected by the exclusions in section 213(3), the design so pleaded plainly falls within the definition of design in section 213(2) in that it is a design of an aspect or aspects of the shape or configuration of the unit.’
Though the test was an objective one because the significance of a functional element in the design might only be apparent to those to whom the product was directed, he should consider the issue from the viewpoint of a purchaser of a fitted kitchen.

Judges:

Jonathan Parker J

Citations:

Times 13-Oct-1997, [1998] FSR 63

Statutes:

Copyright Designs and Patents Act 1988 213(2) 226 51(3)

Jurisdiction:

England and Wales

Citing:

Applied – C and H Engineering v F Klucznik and Sons Ltd 1992
. .

Cited by:

Cited – A Fulton Company Limited v Totes Isotoner (UK) Limited CA 4-Nov-2003
The defendants appealed a finding that they had infringed the claimant’s unregistered design rights in collapsible umbrellas. The defendants said the law protected only the design as a whole, and that only part had been copied.
Held: Authority . .
Cited – Designers Guild Ltd v Russell Williams (Textiles) Ltd CA 26-Mar-1999
The claimant alleged copying of designs. The defendant appealed a finding that copying had taken place.
Held: The rejection of the dissection test in Ladbroke was as to the subsistence of copyright and not as to infringement. Evidence of those . .
Cited – Lambretta Clothing Company Limited v Teddy Smith (UK) Limited, Next Retail Plc CA 15-Jul-2004
The claimant settled upon a combination of colours to identify its goods. It then began an action against the defendants claiming unregistered design right and artistic copyright in the combination of colours.
Held: The mere combination of . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 04 June 2022; Ref: scu.83412

Scotch Whisky Association v Compagnie financiere europeenne de prises de participation and others: ECJ 16 Jul 1998

A drink being a blend of various whisky’s and water but with minimum strength only greater than 30 per cent was not entitled to be called a whisky. Dilution destroyed the right to claim the title.

Citations:

Times 21-Aug-1998, C-136/96, [1998] EUECJ C-136/96

Links:

Bailii

Statutes:

Council Regulation (EEC) No 1576/89

Jurisdiction:

European

Commercial, Intellectual Property

Updated: 03 June 2022; Ref: scu.161841

Loendersloot v Ballantine and Son and others: ECJ 11 Nov 1997

ECJ Article 36 of the EC Treaty – Trade mark rights – Relabelling of whisky bottles.

Judges:

Rodriguez Iglesias, P

Citations:

C-349/95, [1997] EUECJ C-349/95, [1997] ECR I-6227

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 . .
Cited – Oracle America Inc v M-Tech Data Ltd SC 27-Jun-2012
The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 03 June 2022; Ref: scu.161715

Sabel BV v Puma AG, Rudolf Dassler Sport: ECJ 11 Nov 1997

The test of whether a sign is confusing is how the use of the sign would be perceived by the average consumer of the type of goods in question. ‘The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case. That global appreciation of the visual, aural or conceptual similarity or the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components . . The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.’ (A point noted by the Hearing Officer as I have said). ‘In that perspective, the more distinctive the earlier mark, the greater will be the likelihood of confusion. It is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public.’
The court set out three possible links between a mark and a sign: ‘(1) where the public confuses the sign and the mark in question (likelihood of direct confusion); (2) where the public makes a connection between the proprietors of the sign and those of the mark and confuses them (likelihood of indirect confusion or association); (3) where the public considers the sign to be similar to the mark and perception of the sign calls to mind the memory of the mark, although the two are not confused (likelihood of association in the strict sense).’

Citations:

[1997] ECR I-6191, C-251/95, [1998] RPC 199, [1997] EUECJ C-251/95

Links:

Bailii

Cited by:

Cited – Regina v Johnstone HL 22-May-2003
The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act . .
Cited – Associated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited) ChD 11-Jun-2003
The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark.
Held: The word . .
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Cited – Mastercard International Incorporated v Hitachi Credit (Uk) Plc ChD 8-Jul-2004
The claimants challenged award of a trade mark saying they were owners of many marks incorporating the word ‘Master’ associated with credit, and the applicants mark was too similar to its own.
Held: Applying Davidoff, the words can also be . .
Cited – 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 – L’Oreal Sa and others v Bellure NV and others ChD 4-Oct-2006
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled.
Held: The . .
Cited – Esure Insurance Ltd v Direct Line Insurance Plc ChD 29-Jun-2007
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted . .
Cited – Nude Brands Ltd v Stella McCartney Ltd and Others ChD 20-Aug-2009
The claimant sought an injunction against the defendants to restrain an alleged trade mark infringement in respect of the use of the mark ‘NUDE’ by the proposed product ‘STELLANUDE’.
Held: Despite the differences, it was ‘arguable that the . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 03 June 2022; Ref: scu.161642

PLG Research Ltd and Another v Ardon International Ltd and Others: ChD 25 Nov 1994

A patent infingement claim was met by the assertion that the material covered had been disclosed before the patent had been obtained. The court was asked as to the test of whether the information in a claim had been disclosed. Aldous J said: ‘Mr. Thorley submitted that if a product had been made available to the public, it was not possible thereafter to patent the product whether claimed as a product claim or a product-by-process claim. That submission is too broad. Under the 1977 Act, patents may be granted for an invention covering a product that has been put on the market provided the product does not provide an enabling disclosure of the invention claimed. In most cases, prior sale of the product will make available information as to its contents and its method of manufacture, but it is possible to imagine circumstances where that will not happen. In such cases a subsequent patent may be obtained and the only safeguard given to the public is section 64 of the Act.’ The test is the same under the Patents Acts 1949 and 1977.
As to the case of Catnic: ‘Lord Diplock was expounding the common law approach to the construction of a patent. This has been replaced by the approach laid down by the Protocol. If the two approaches are the same, reference to Lord Diplock’s formulation is unnecessary, while if they are different it is dangerous.’
The court considered the liability of a company director for the infringement, the authorities clearly showed ‘that a director of a company was not automatically to be identified with his company for the purpose of the law of tort, however small the company may be and however powerful his control over its affairs’ and that ‘in every case where it is sought to make him liable for his company’s torts, it is necessary to examine with care what part he played personally in regard to the act or acts complained of’. Also: ‘I believe it is clear that a director will not be liable unless his involvement would be such as to render him liable as a joint tortfeasor if the company had not existed. For example, the law distinguishes between facilitating and procuring a tort. A person who only facilitates a tort is not liable as a joint tortfeasor whereas a person who procures the tort is liable.’

Judges:

Aldous J

Citations:

[1993] FSR 197

Statutes:

Patents Act 1977 2(2) 64

Jurisdiction:

England and Wales

Citing:

Cited – C Evans and Sons Ltd v Spritebrand Ltd and another CA 1985
The court considered when a company director might be personally liable for acts of the company: ‘in order to make a director, other officer or employee of a company personally liable for the company’s tort, it is necessary to show either that he . .
Cited – Townsend v Haworth CA 1875
The defendant sold chemicals to be used by the purchaser in infringement of patent and agreed to indemnify the purchaser if the patent should prove to be valid.
Held: Only the person who actually manufactures or sells infringing goods is the . .
Cited – B E Lavender v Witten Industrial Diamonds 1979
. .
Cited – CBS Songs Ltd v Amstrad Consumer Electronics Plc HL 12-May-1988
The plaintiffs as representatives sought to restrain Amstrad selling equipment with two cassette decks without taking precautions which would reasonably ensure that their copyrights would not be infringed by its users.
Held: Amstrad could only . .
Cited – 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 . .
Appeal from – PLG Research Ltd and Another v Ardon International Ltd and Others CA 1995
As to Catnic: ‘Lord Diplock was expounding the common law approach to the construction of a patent. This has been replaced by the approach laid down by the Protocol. If the two approaches are the same, reference to Lord Diplock’s formulation is . .
Cited – MCA Records Inc and Another v Charly Records Ltd and others (No 5) CA 5-Oct-2001
The court discussed the personal liability of a director for torts committed by his company: ‘i) a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the . .
Cited – Merrell Dow Pharmaceuticals Inc and Another v H N Norton and Co Ltd; Same v Penn Etc HL 26-Oct-1995
A patent for a substance which had been produced naturally before the application of the process was invalid. The patent was invalidated after the discovery that the effect was produced naturally from an acid metabolite. Patent infringement does not . .
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 – Hadley Industries Plc v Metal Sections Limited, Metsec (UK) Limited PatC 13-Nov-1998
A court no longer has the discretion as to whether to amend a patent upon application, but must, following European practice, do so when a proper application is made. This is the case despite the clear wording of the English Act. A judge at first . .
Cited – Springsteen v Flute International Ltd and Others PatC 10-Dec-1998
The court awarded andpound;1 per CD produced and not sold, and andpound;5 per CD produced and sold for infringement by pressing CDs of recordings of the claimant artist’s performances. The court considered the personal responsibility of the director . .
Cited – Stocznia Gdanska SA v Latvian Shipping Company and Others ComC 25-May-2001
When a claimant commenced litigating several issues, but succeeded only on some of the them, the rule allowing an award of costs to the generally successful party was not dependent upon questions of whether the party was reasonable to have raised . .
Cited – Asahi Medical Co Ltd v Macopharma (UK) Ltd, Macopharma S A CA 16-Apr-2002
. .
Cited – Bunt v Tilley and others QBD 10-Mar-2006
The claimant sought damages in defamation in respect of statements made on internet bulletin boards. He pursued the operators of the bulletin boards, and the court now considered the liability of the Internet Service Providers whose systems had . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Company

Updated: 02 June 2022; Ref: scu.84773

Kaisha v Green Cartridge Company (Hong Kong) Limited: PC 30 Apr 1997

(Hong Kong) The claimants complained of the sale by the defendants of refilled cartridges for use with their printers.
Held: The spare cartridge manufacturer’s appeal failed: ‘repair is by definition something which does not amount to the manufacture of the patented article, it is not an infringement of the monopoly conferred by the patent. It cannot therefore be an unlawful act and needs no special licence to make it lawful, unless as part of a general implied licence to use the patented product at all, which is sometimes used to explain why mere user does not infringe the patentee’s monopoly. But this is perhaps better regarded as a consequence of the exhaustion of the patentee’s rights in respect of the particular article when it is sold. ‘ The British Leyland case which supported the ‘spares exception’ seemed to be a judicial creation to what was a clear statutory monopoly. The extension of such an exception to printer cartridges which were required in order to keep a machine running was too far: ‘once one departs from the case in which the unfairness to the customer and the anticompetitive nature of the monopoly is as plain and obvious as it appeared to the House of Lords in British Leyland, the jurisprudential and economic basis for the doctrine becomes extremely fragile. ‘ and ‘the features of unfairness and abuse of monopoly power which underlay the decision in British Leyland cannot be said to be plainly and obviously present in this case. The analogy with repair is not strong enough to bring the case within the exceptional doctrine which the House of Lords propounded. ‘

Judges:

Lord Browne-Wilkinson, Lord Lloyd of Berwick, Lord Hoffmann, Lord Hope of Craighead, Lord Hutton

Citations:

[1997] UKPC 19, [1997] AC 728

Links:

Bailii

Citing:

Cited – 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 . .
Cited – Thomas v Sorrell KBD 1674
The plaintiff said that the defendant had sold wine without paying a license fee as required under a statute creating the Company of Vintners.
Held: Vaughan CJ said: ‘every act a man is naturally enabled to do, is in it self equally good, as . .
Cited – LB (Plastics) Ltd v Swish Products Ltd HL 3-Jan-1979
Access and Similarity base proof of Copying
Copyright is intended to protect one person against his work being copied by another. One person must not be permitted to appropriate the result of another’s labour; it is for the plaintiff to establish and prove as a matter of fact that copying has . .
Cited – Burke and Margot Burke Ltd v Spicers Dress Designs 1936
. .
Cited – Solar Thomson Engineering Co Ltd v Barton CA 1977
The court was asked as to the extent to which a purchaser of a patented article had an implied licence to keep it in repair. Buckley LJ said: ‘The cardinal question must be whether what has been done can fairly be termed a repair, having regard to . .
Cited – King Features Syndicate Inc v O and M Kleeman Ltd HL 1941
The owners of copyright in drawings of ‘Popeye, the Sailor’ sued importers of ‘Popeye’ dolls and other toys. The defendants contended that the copyright in the original work had been lost by the operation of section 22 of the 1911 Act because the . .
Cited – King Features Syndicate Inc v O and M Kleeman Ltd ChD 1940
The plaintiff alleging copyright infringement, had relied on fifty five drawings of the Popeye character out of the many thousands of such drawings in the cartoon series. The defendant might have copied from any one of those thousands.
Held: . .
Cited – Dorling v Honnor Marine Ltd CA 1964
The court considered the protection of drawings of parts of a boat. The court distinguished between designs capable of registration which were subject to s 10, and designs which were not registrable (chiefly because they were functional) and so bore . .

Cited by:

Cited – Profile Software Ltd v Becogent Ltd OHCS 16-Feb-2005
The pursuers claimed for breach of copyright and of a software licence. The defendants disputed the title or right of the pursuers to claim.
Held: The assignation of the rights in the software carried with it the rights to enforce intellectual . .
Lists of cited by and citing cases may be incomplete.

Contract, Intellectual Property

Updated: 01 June 2022; Ref: scu.159230

Farmer Build Ltd v Carier Bulk Materials Handling Ltd and others (2): CA 3 Dec 1998

First case on design right to reach the court of appeal

Judges:

Simon Brown, Mummery LJJ, Sir Christopher Slade

Citations:

[1998] EWCA Civ 1900, [1999] RPC 461, [1999] ITCLR 29, [2000] ECDR 42

Links:

Bailii

Statutes:

Copyright, Designs and Patents Act 1988

Jurisdiction:

England and Wales

Intellectual Property

Updated: 30 May 2022; Ref: scu.145379

Fage UK Ltd and Another v Chobani Uk Ltd and Another: ChD 26 Mar 2013

Extended passing-off case about yoghurt. The main issue was whether, by the beginning of September 2012, the phrase ‘Greek yoghurt’ had, when used in the UK marketplace, come to have attached to it a sufficient reputation and goodwill as denoting a distinctive type of yoghurt made in Greece, so that the use of the same phrase to describe yoghurt not made in Greece, however otherwise similar, would involve a damaging misrepresentation sufficient to support a claim in passing-off.
Briggs J found that the phrase ‘calculated to’ means ‘damage is, in the ordinary course of events, viewed objectively, likely to be caused by the conduct of which complaint is made’

Judges:

Briggs J

Citations:

[2013] EWHC 630 (Ch), [2013] FSR 32

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

At ChD (1) – Fage UK Ltd and Another v Chobani Uk Ltd and Another ChD 11-Dec-2012
Action for passing off – application to allow additional survey evidence . .
At ChD (2) – Fage UK Ltd and Another v Chobani Uk Limited and Another ChD 29-Jan-2013
Whether additional survey evidence should be admitted . .

Cited by:

At ChD (3) – Fage UK Ltd and Another v Chobani UK Ltd and Another CA 28-Jan-2014
Lewison LJ said: ‘Appellate courts have been repeatedly warned, by recent cases at the highest level, not to interfere with findings of fact by trial judges, unless compelled to do so. This applies not only to findings of primary fact, but also to . .
Cited – Gerrard and Another v Eurasian Natural Resources Corporation Ltd and Another QBD 27-Nov-2020
The claimants, a solicitor and his wife, sought damages in harassment and data protection, against a party to proceedings in which he was acting professionally, and against the investigative firm instructed by them. The defendants now requested the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 29 May 2022; Ref: scu.472041

Peer International Corporation and others v Termidor Music Publishers Ltd and others: ChD 16 Nov 2006

Claim for English copyright of Cuban musical scores.

Judges:

Lindsay J

Citations:

[2006] EWHC 2883 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Peer International Corporation and Others v Termidor Music Publishers Ktd and Another ChD 11-Dec-2002
The claimant company had acquired the copyrights to the works of several Cuban musicians. A law later passed by Cuba in 1960 had allowed the musicians to re-assign their copyrights.
Held: A title to property which had been given by English law . .
See Also – Peer International Corporation Southern Music Publishing Company Inc Peermusic (UK) Limited v Termidor Music Publishers Limited Termidor Musikverlag Gmbh and Co Kg -And-Editoria Musical De Cuba CA 30-Jul-2003
Peer sought declarations that they were the owners, or licensees, of the UK copyright in musical works composed by Cuban nationals, relying on assignments in writing by the composers and in some instances by their heirs. The defendants claimed under . .
See Also – Peer International Corp and others v Termidor Music Publishers Ltd and Another ChD 25-May-2005
The claimants sought declarations as to the ownership of copyrights to music fom Cuba. Many witnesses would be required to give evidence from Cuba. Attempts to take evidence by video link from Cuba had failed. It was suggested that the judge might . .

Cited by:

See Also – Peer International Corporation and others v Termidor Music Publishers and others CA 23-Nov-2007
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 28 May 2022; Ref: scu.246062

Rstudio, Inc v European Union Intellectual Property Office (EUIPO): ECFI 7 Mar 2018

(EU Trade Mark – Judgment) EU trade mark – Opposition proceedings – International registration designating the European Union – Word mark RSTUDIO – Earlier EU word mark ER/STUDIO – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Genuine use of the earlier mark – Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001)

Citations:

T-230/17, [2018] EUECJ T-230/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 26 May 2022; Ref: scu.606023

Candy v Holyoake and Others (No 2): QBD 22 Nov 2017

Citations:

[2017] EWHC 2943 (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 – 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 . .

Cited by:

See Also – Holyoake and Another v Candy and Others ChD 21-Dec-2017
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 26 May 2022; Ref: scu.601101

Mediaexpert v EUIPO – Mediaexpert (Mediaexpert): ECFI 20 Jul 2017

(EU Trade Mark – Invalidity Proceedings : Judgment) EU trade mark – Invalidity proceedings – EU figurative mark mediaexpert – Earlier national word mark mediaexpert – Relative ground for refusal – Article 53(1)(a) and Article 8(1)(b) of Regulation (EC) No 207/2009 – Evidence of the existence, validity and scope of protection of the earlier mark – Registration certificate for the earlier mark – Translation – Rules 37 to 39 and Rule 98(1) of Regulation (EC) No 2868/95 – Legitimate expectations

Citations:

T-780/16, [2017] EUECJ T-780/16, ECLI:EU:T:2017:538

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 26 May 2022; Ref: scu.590508

Ajit Lalvani, Kartar Singh Lalvani Robert Taylor (Patent): IPO 23 May 2013

IPO The two applications relate to a composition for bone health maintenance and a composition for use during lactation, respectively.
Prior to considering the inventiveness of the claims of these two applications, the hearing officer addressed the impact of the decision in Human Genome Sciences v Eli Lilly on the relative effects of the jurisprudence of the UK national courts and that of the Boards of Appeal of the EPO. He found that the relative effects were unchanged, with the decisions of the UK courts remaining binding on the Intellectual Property Office and those of the EPO Boards of Appeal remaining persuasive.
Applying the Windsurfing/Pozzoli test the claims of both applications were construed as not relating to medical use. Furthermore, following SABAF, they were then found to lack an inventive step as a collocation of known ingredients.
The hearing officer then considered the applications as a whole and concluded that even if the claims could be amended so as to relate to medical uses, they would then lack support following the decision in Prendergast’s Applications and the decision before the Intellectual Property Office in BL O/192/04.
Finally, the hearing officer also found that three claims in each application added subject matter that was not present at their respective filing dates.
Both applications were refused.

Judges:

S Brown

Citations:

[2013] UKIntelP o22013, O/220/13

Links:

Bailii

Statutes:

Patents Act 1977 1(1)(b) 14(5)(c) 76(2)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 26 May 2022; Ref: scu.511207

Monte Di Massima v OHMI -Hoefferle Internationale (Valle Della Luna): ECFI 4 Oct 2006

ECJ Community trade mark – Opposition proceedings – Application for figurative Community trade mark Valle della Luna – Earlier national figurative mark VALLE DE LA LUNA – Proof of use of the earlier mark – Article 15, paragraph 2 a) and Article 43 , paragraphs 2 and 3 of Regulation (EC) No 40/94

Citations:

T-96/05, [2006] EUECJ T-96/05

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 26 May 2022; Ref: scu.245185

Freixenet v OHMI (Forme D’Une Bouteille Emerisee Noire Mate): ECFI 4 Oct 2006

ECJ Community trade mark – Shape of a frosted matt black bottle – Absolute grounds for refusal – Article 7, paragraph 1 b) of Regulation (EC) No 40/94 – Lack of distinctive character – Infringement of the rights of defense – Article 73 of Regulation No 40/94

Citations:

T-188/04, [2006] EUECJ T-188/04

Links:

Bailii

Statutes:

Regulation (EC) No 40/94 1(b)

Jurisdiction:

European

Intellectual Property

Updated: 26 May 2022; Ref: scu.245183

Freixenet v OHMI (Forme D’Une Bouteille Emerisee Blanche): ECFI 4 Oct 2006

ECJ Community trade mark – Shape of a frosted white bottle – Absolute ground for refusal – Article 7, paragraph 1 b) of Regulation (EC) No 40/94 – Lack of distinctive character – Infringement of the rights of defense – Article 73 of Regulation No 40/94

Citations:

T-190/04, [2006] EUECJ T-190/04

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 26 May 2022; Ref: scu.245182

Gromax Plasticulture Ltd v Don and Low Nonwovens Ltd: PatC 12 Jun 1998

The court set out tests of bad faith for applications for the registration of trade marks: ‘I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and, as I would hold, includes also some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined. Parliament has wisely not attempted to explain in detail what is or is not bad faith in this context: how far a dealing must so fall-short in order to amount to bad faith is a matter best left to be adjudged not by some paraphrase by the courts (which leads to the danger of the courts then construing not the Act but the paraphrase) but by reference to the words of the Act and upon a regard to all material surrounding circumstances.’

Judges:

Lindsay J

Citations:

[1998] EWHC Patents 316, [1999] RPC 367

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – Harrison v Teton Valley Trading Co; Harrison’s Trade Mark Application (CHINAWHITE) CA 27-Jul-2004
The applicant had been an employee of the objector at their nightclub ‘Chinawhite’ and whose principal attraction was a cocktail of the same name. Employees signed a confidentiality agreement as to the recipe. Having left the employment, the . .
Cited – Twinsectra Ltd v Yardley and Others HL 21-Mar-2002
Solicitors acted in a loan, giving an undertaking as to its application. In breach of that undertaking they released it to the borrower. The appellants appealed a finding of liability as contributors to the breach.
Held: ‘Money in a . .
Cited – Jules Rimet Cup Ltd v The Football Association Ltd. ChD 18-Oct-2007
The parties disputed on preliminary issues the ownership of the rights in the trade mark ‘World Cup Willie’. The claimant had set out to register the mark, and the defendant gave notice of its intention to oppose. The claimant now alleged threat and . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 25 May 2022; Ref: scu.136094

Aubrey Max Sandman v Panasonic UK Limited, Matsushita Electric Industrial Co Ltd: PatC 21 Jan 1998

Application by Panasonic to have claim of copyright infringement of a circuit diagram struck out as vexatious.
Held: There was a good arguable case for inferring participation in a common design between a parent company and its subsidiary where the parent adapted a product it manufactured specifically for sale in the United Kingdom where it would infringe copyright. Pumfrey J felt some doubt over this and that his opinion had changed more than once in the course of the argument, suggests that it was a borderline case.

Judges:

Pumfrey J

Citations:

[1998] EWHC Patents 346, [1998] FSR 651, [1998] Masons CLR 220, (1998) 21(4) IPD 21038

Links:

Bailii

Cited by:

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

Intellectual Property, Torts – Other

Updated: 25 May 2022; Ref: scu.136108

Charlesworth v Relay Roads Limited, Haley and Others: PatC 1 Feb 1999

Citations:

[1999] EWHC Patents 257

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

See Also – Charlesworth v Relay Roads Ltd ChD 31-Aug-1999
It remains possible to amend pleadings after judgment but before the order is drawn up, provided the party involved complies with the appropriate procedures. This may apply even though it would require the presentation of further evidence and . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 May 2022; Ref: scu.136063

Imutran Ltd v Uncaged Campaigns Ltd and Another: ChD 11 Jan 2001

The test for whether an interim injunction should be granted restraining publication of material claimed to be confidential, where such a grant would infringe the right to freedom of expression was slightly different under the 1998 Act. The established test was whether the claimant had a real prospect of succeeding at trial in restraining publication, but the new test was whether he was likely to do so. Nevertheless the difference was so small as to make any calculation fruitless.
The court was asked to restrain the publication of confidential documents, and the effect of the section. The defendants argued that the requirement of likelihood imposed a higher standard than that formulated in American Cyanamid, but the claimant said that his case satisfied whatever the standard was applied. Theoretically and as a matter of language likelihood is slightly higher in the scale of probability than a real prospect of success. But the difference between the two is small. The court could not imagine many (if any) cases which would have succeeded under the American Cyanamid test but will now fail because of the terms of section 12(3). The court applied the test of likelihood without any further consideration of how much more probable that now has to be.
Sir Andrew Morritt set out the approach to be taken: ‘Of course, the defendants’ right to freedom of expression is an element in their democratic right to campaign for the abolition of all animal xenotransplantation or other experimentation. But they may continue to do that whether the injunction sought by Imutran is granted or not. The issue is whether they should be free to do so with Imutran’s confidential and secret documents. Many of those documents are of a specialist and technical nature suitable for consideration by specialists in the field but not by the public generally. Given the provisos to the injunction sought there would be no restriction on the ability of the defendants to communicate the information to those specialists connected with the regulatory bodies denoted by Parliament as having special responsibility in the field.’

Judges:

Sir Andrew Morritt

Citations:

Times 30-Jan-2001, Gazette 05-Apr-2001, [2001] EWHC Ch 31, [2001] 2 All ER 385, [2002] FSR 2, [2001] HRLR 31, [2001] EMLR 21, [2001] CP Rep 28, [2001] ECDR 16

Links:

Bailii

Statutes:

Human Rights Act 1998 12(3)

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 by:

Approved – A v B plc and Another (Flitcroft v MGN Ltd) CA 11-Mar-2002
A newspaper company appealed against an order preventing it naming a footballer who, they claimed, had been unfaithful to his wife.
Held: There remains a distinction between the right of privacy which attaches to sexual activities within and . .
Cited – Barclays Bank Plc v Guardian News Media Ltd QBD 19-Mar-2009
The bank sought continuation of an injunction preventing publication by the defendant of papers leaked to relating to the claimant’s tax management. The claimant claimed in confidentiality. The papers did not reveal any unlawful activity. The . .
Cited – Theakston v MGN Ltd QBD 14-Feb-2002
The claimant, a celebrity sought to restrain publication by the defendant of information about his sex life, consisting of pictures of him in a brothel. The court considered the test for the grant of an injunction to restrain publication under the . .
Cited – Cream Holdings Limited and others v Banerjee and The Liverpool Daily Post and Echo Limited CA 13-Feb-2003
The defendants considered publication of alleged financial irregularities by the claimant, who sought to restrain publication. The defendants argued that under the Act, prior restraint should not be used unless a later court would be likely to . .
Cited – Bains and Others v Moore and Others QBD 15-Feb-2017
The claimant anti-asbestos campaigners complained that the defendant investigators had infringed their various rights of privacy. They now sought discovery to support the claim.
Held: the contents of the witness statements do show that it is . .
Lists of cited by and citing cases may be incomplete.

Litigation Practice, Intellectual Property, Human Rights, Media

Updated: 23 May 2022; Ref: scu.135620

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

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

Citations:

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

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 23 May 2022; Ref: scu.564882

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

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

Citations:

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

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 23 May 2022; Ref: scu.604739

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

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

Citations:

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

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 22 May 2022; Ref: scu.375418

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

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

Citations:

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

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 20 May 2022; Ref: scu.560500

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

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

Citations:

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

Links:

Bailii

Cited by:

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

European, Customs and Excise, Intellectual Property

Updated: 20 May 2022; Ref: scu.89840

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

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

Citations:

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

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 20 May 2022; Ref: scu.445429

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

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

Judges:

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

Citations:

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

Links:

Bailii

Statutes:

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

Intellectual Property

Updated: 19 May 2022; Ref: scu.87616

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

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

Citations:

Times 24-Sep-1997

Statutes:

Copyright Designs and Patents Act 1988 97(2)

Jurisdiction:

England and Wales

Cited by:

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

Intellectual Property

Updated: 19 May 2022; Ref: scu.85047

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

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

Citations:

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

Links:

Bailii

Intellectual Property, Information

Updated: 19 May 2022; Ref: scu.85218

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

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

Judges:

Lord Justice Simon Brown Lord Justice Aldous And Lord Justice Schiemann

Citations:

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

Links:

Bailii

Statutes:

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

Jurisdiction:

England and Wales

Citing:

Cited – Seager v Copydex Ltd CA 1967
Mr Seager had invented a patented carpet grip which he manufactured and marketed under the trade mark Klent. There were protracted negotiations between Mr Seager and Copydex over a proposal for Copydex to market the Klent. One of the issues in the . .
Cited – Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) 1984
The court approved ‘the adaptation of the traditional doctrine of passing off to meet new circumstances involving the deceptive or confusing use of names, descriptive terms or other indicia to persuade purchasers or customers to believe that the . .
Cited – Coco v A N Clark (Engineers) Ltd ChD 1968
Requirememts to prove breach of confidence
A claim was made for breach of confidence in respect of technical information whose value was commercial.
Held: Megarry J set out three elements which will normally be required if, apart from contract, a case of breach of confidence is to . .

Cited by:

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

Intellectual Property, Health Professions, Information

Updated: 19 May 2022; Ref: scu.85219

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

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

Citations:

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

Statutes:

Trade Marks Act 1994 10 (3)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 May 2022; Ref: scu.85018

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

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

Citations:

Times 17-Oct-2000

Statutes:

Trade Marks Act 1994 3(1)

Jurisdiction:

England and Wales

Cited by:

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

Intellectual Property

Updated: 19 May 2022; Ref: scu.85020

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

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

Judges:

Buxton, Nourse, Brooke LJJ

Citations:

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

Links:

Bailii, Bailii

Statutes:

Copyright Designs and Patents Act 1988

Jurisdiction:

England and Wales

Citing:

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

Cited by:

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

Media, Intellectual Property

Updated: 19 May 2022; Ref: scu.84335

Hermes International v FHT Marketing: ECJ 9 Sep 1998

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

Citations:

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

Links:

Bailii

Statutes:

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

Cited by:

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

Intellectual Property, European

Updated: 19 May 2022; Ref: scu.81344

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

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

Citations:

Times 25-Jan-2000

Statutes:

Trade Marks Act 1994 10

Intellectual Property, Scotland

Updated: 19 May 2022; Ref: scu.80063

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

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

Citations:

Times 05-Nov-1998

Intellectual Property

Updated: 19 May 2022; Ref: scu.78951

British Broadcasting Corporation v Talksport Ltd: ChD 29 Jun 2000

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

Citations:

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

Intellectual Property, Media

Updated: 18 May 2022; Ref: scu.78614

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

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

Judges:

Laddie J

Citations:

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

Links:

Bailii

Statutes:

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

Cited by:

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

Intellectual Property

Updated: 18 May 2022; Ref: scu.78629

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

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

Judges:

Jacob J

Citations:

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

Statutes:

Patents Act 1977 6(1)

Cited by:

Cited – 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 . .
Cited – Synthon Bv v Smithkline Beecham Plc HL 20-Oct-2005
Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the . .
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: 18 May 2022; Ref: scu.78327

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

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

Citations:

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

Statutes:

Insolvency Act 1986 11(3)(d)

Insolvency, Litigation Practice, Intellectual Property

Updated: 18 May 2022; Ref: scu.78409

Barclays Bank Plc v RBS Advanta: ChD 8 Feb 1996

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

Judges:

Laddiie J

Citations:

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

Statutes:

Trade Marks Act 1994 10(6)

Cited by:

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

Intellectual Property

Updated: 18 May 2022; Ref: scu.78216

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

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

Judges:

Lord President (Rodger

Citations:

Times 24-Sep-1998, 1998 SC 658

Citing:

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

Cited by:

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

Intellectual Property, Contract, Scotland

Updated: 18 May 2022; Ref: scu.78162

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

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

Judges:

Neuberger J

Citations:

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

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property, Litigation Practice

Updated: 18 May 2022; Ref: scu.567878

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

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

Judges:

Laddie J

Citations:

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

Cited by:

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

Intellectual Property

Updated: 18 May 2022; Ref: scu.78028

Brutt Trade Marks: 2007

Citations:

[2007] RPC 462

Jurisdiction:

England and Wales

Cited by:

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

Intellectual Property

Updated: 18 May 2022; Ref: scu.619037

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

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

Citations:

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

Statutes:

Copyright Designs and Patents Act 19885

Jurisdiction:

England and Wales

Citing:

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

Intellectual Property

Updated: 18 May 2022; Ref: scu.568889

RJ Reuter Co Ltd v Mulhens: CA 1954

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

Judges:

Lord Evershed MR and Romer LJ

Citations:

[1954] Ch 50

Cited by:

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 May 2022; Ref: scu.566022

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

Judges:

Lord Evershed MR and Jenkins LJ

Citations:

[1957] RPC 49

Cited by:

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 May 2022; Ref: scu.566023

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

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

Judges:

Whitford J

Citations:

[1988] RPC 403

Jurisdiction:

England and Wales

Cited by:

Cited – Lucasfilm Ltd and others v Ainsworth and Another ChD 31-Jul-2008
The parties disputed ownership of the designs for various props used in the Star Wars films. The defendant had developed designs from ideas originating within the claimant’s companies.
Held: The judgment from the US in a similar claim was . .
Cited – Lucasfilm Ltd and Others v Ainsworth and Another CA 16-Dec-2009
The claimants had made several Star Wars films for which the defendants had designed various props items. The parties disputed ownership of the rights in the designs, and in articular of a stormtrooper helmet. The issues came down to whether the . .
Cited – Lucasfilm Ltd and Others v Ainsworth and Another SC 27-Jul-2011
The claimant had produced the Star War films which made use of props, in particular a ‘Stormtrooper’ helmet designed by the defendant. The defendant had then himself distributed models of the designs he had created. The appellant obtained judgment . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 18 May 2022; Ref: scu.442603

Mentor Corporation v Hollister Incorporated: ChD 1991

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

Judges:

Aldous J

Citations:

[1991] FSR 557

Statutes:

Patents Act 1977 72(1)(c)

Jurisdiction:

England and Wales

Citing:

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

Cited by:

Appeal from – Mentor Corporation v Hollister Incorporated CA 1993
Lloyd LJ added to the guidance at first instance:
‘In each case sufficiency will thus be a question of fact and degree, depending on the nature of the invention and the other circumstances of the case.
But if a working definition is required . .
Cited – 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

Updated: 18 May 2022; Ref: scu.304529

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

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

Citations:

Times 21-Sep-1999

Intellectual Property

Updated: 17 May 2022; Ref: scu.77884

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

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

Judges:

Neuberger J

Citations:

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

Cited by:

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

Intellectual Property

Updated: 17 May 2022; Ref: scu.77818

Arsenal Football Club Plc v Reed: ChD 6 Apr 2001

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

Citations:

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

Links:

Bailii, Bailii

Statutes:

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

Citing:

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

Cited by:

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

Intellectual Property, European

Updated: 17 May 2022; Ref: scu.77875

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

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

Citations:

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

Links:

Bailii

Jurisdiction:

England and Wales

Litigation Practice, Intellectual Property

Updated: 17 May 2022; Ref: scu.77747

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

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

Citations:

Times 09-Dec-1997

Statutes:

Trade Marks Act 1994 11(2)(b)

Jurisdiction:

Scotland

Intellectual Property, Scotland

Updated: 17 May 2022; Ref: scu.77754

Regina v McCrudden: CACD 2005

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

Judges:

Laws LJ

Citations:

[2005] EWCA Crim 466

Statutes:

Trade Marks Act 1994 92(5)

Jurisdiction:

England and Wales

Cited by:

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

Crime, Intellectual Property

Updated: 17 May 2022; Ref: scu.243318

Panhard et Levassor v Panhard Levassor Motor Company Ltd: 1901

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

Judges:

Farwell J

Citations:

(1901) 2 Ch 513

Cited by:

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: 17 May 2022; Ref: scu.239092

Suhner and Co AG v Transradio Ltd: 1967

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

Judges:

Plowman J

Citations:

[1967] RPC 329

Citing:

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

Cited by:

Cited – Marketmaker Beijing Co Ltd and others v CMC Group Plc and others QBD 8-Oct-2004
Interim injunctions had been obtained to prevent the defendants carrying out certain banking transactions.
Held: The remedy sought and the claim was extravagant and unlikely to succeed. The injunctions should be discharged. It was not at all . .
Cited – EPI Environmental Technologies Inc and Another v Symphony Plastic Technologies Plc and Another ChD 21-Dec-2004
The claimant had developed an additive which would assist in making plastic bags bio-degradable. They alleged that, in breach of confidentiality agreements, the defendants had copied the product. The defendants said the confidentiality agreement was . .
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.

Intellectual Property, Litigation Practice

Updated: 16 May 2022; Ref: scu.216389