Tag: Intellectual Property

Printers and Finishers Limited v Holloway: 1965

The court considered the questions arising from the use of information acquired by an employee during his employment after that employment had ended, and noted that information the future use of which will not be restrained is information not readily separable in the mind of the employee from other information which he is free to use, and the actual or threatened misuse of information which has been deliberately memorised for the purpose of its being carried away and used elsewhere will be restrained.
The question was whether the knowledge was ‘a separate part of the employee’s stock of knowledge which a man of ordinary honesty and intelligence would recognise to be the property of his old employer.’ The law would defeat its own object if it sought to enforce standards which would be rejected by the ordinary person.
Cross J said: ‘The employee might well not realise that the feature or expedient in question was in fact peculiar to his late employer’s process and factory; but even if he did, such knowledge is not readily separable from his general knowledge of the flock printing process and his acquired skill in manipulating a flock printing plant, and I do not think that any man of average intelligence and honesty would think that there was anything improper in his putting his memory of particular features of his late employer’s plant at the disposal of his new employer.’ and
‘Although the law will not enforce a covenant directed against competition by an ex-employee, it will enforce a covenant reasonably necessary to protect trade secrets. If the managing director is right in thinking that there are features in the plaintiffs process which can fairly be regarded as trade secrets and which their employees will inevitably carry away with them in their heads, then the proper way for the plaintiffs to protect themselves would be by exacting covenants from their employees restricting their field of activity after they have left their employment, not by asking the court to extend the general equitable doctrine to prevent breaking confidence beyond all reasonable bounds.’

Judges:

Cross J

Citations:

[1965] RPC 239, [1965] 1 WLR 1

Cited by:

Cited – Poeton Industries Ltd and Another v Michael Ikem Horton CA 26-May-2000
The claimant sought damages and an injunction after their former employee set up in business, using, they said, information about their manufacturing procedures and customers obtained whilst employed by them. The defendant appealed the injunction . .
Cited – Faccenda Chicken Ltd v Fowler CA 1986
Nature of Confidentiality in Information
The appellant plaintiff company had employed the defendant as sales manager. The contract of employment made no provision restricting use of confidential information. He left to set up in competition. The company now sought to prevent him using . .
Cited – Thomas v Farr Plc and Another CA 20-Feb-2007
The employee, the former chairman of the company, appealed a finding that his contract which restricted his being employed for one year in the same field after termination, was valid and enforceable. The company had provided insurance services to . .
Cited – Napier and Another v Pressdram Ltd CA 19-May-2009
The claimant solicitors appealed against the refusal to grant them an injunction to prevent the publication of the outcome of a complaint against them to the Law society, and of the Ombudsman’s report. They said that the material remained . .
Cited – The Author of A Blog v Times Newspapers Ltd QBD 16-Jun-2009
The claimant, the author of an internet blog (‘Night Jack’), sought an order to restrain the defendant from publishing his identity.
Held: To succeed, the claimant would have to show that there would be a legally enforceable right to maintain . .
Cited – Caterpillar Logistics Services (UK) Ltd v Huesca De Crean QBD 2-Dec-2011
The claimant sought an order to prevent the defendant, a former employee, from misusing its confidential information said to be held by her. Her contract contained no post employment restrictions but did seek to control confidential and other . .
Cited – Littlewoods Organisations Ltd v Harris CA 1977
When construing restrictive covenants in an employment contract, the court should construe the contract in the light of the object and intent of the contract as a whole. It may be read down and need not be read literally. Lord Denning said that it . .
Cited – Bluebell Apparel Ltd v Dickinson SCS 14-Oct-1977
The former employee challenged a restriction on his post employment career.
Held: The restriction was world-wide and as such tooo wide, and unenforceable. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Employment

Updated: 16 May 2022; Ref: scu.200319

Evans v Eradicure: 1972

A plaintiff’s reputation in a trading style may be local not national.

Citations:

[1972] RPC 808

Jurisdiction:

England and Wales

Cited by:

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

Intellectual Property

Updated: 16 May 2022; Ref: scu.183855

Rickless v United Artists Corporation: CA 1987

The Act created a private right to performers. Although it might appear to provide criminal sanctions only, performers had the right to give or withhold consent to the use of their performances and to enforce that right by action in the civil courts. This statutory right was not purely personal, but survived the death of the performer and vested in his or her personal representatives, so that in the absence of consent of a performer or his or her personal representatives, there was an actionable breach. A feature film (Trail of the Pink Panther – ‘Trail’) starring the late Peter Sellers had been made by use of cutting floor clips from previous films made with his consent. In two films, The Pink Panther Strikes Again and Revenge of the Pink Panther his consent extended to the use in this way of the cutting floor clips, and ordered the producer companies to account for percentages of the gross receipts of Trail as sums derived from Strikes and Revenge. In the case of three films where there had been no consent, damages were awarded for breach, or inducing breach, of contract in the sum of $1,000,000.
Sir Nicolas Browne-Wilkinson V-C observed that, while not decisive, it was generally easier to spell out civil liability where Parliament had expressly stated that an act was unlawful rather than merely classifying it as a criminal offence.

Judges:

Hobhouse J, Sir Nicolas Browne-Wilkinson V-C, Bingham LJ

Citations:

[1988] QB 40, [1987] 1 All ER 679, [1987] 2 WLR 945

Statutes:

Dramatic and Musical Performers Protection Act 1958 1

Jurisdiction:

England and Wales

Cited by:

Cited – 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 . .
Cited – Campbell v Gordon SC 6-Jul-2016
The employee was injured at work, but in a way excluded from the employers insurance cover. He now sought to make the sole company director liable, hoping in term to take action against the director’s insurance brokers for negligence, the director . .
Lists of cited by and citing cases may be incomplete.

Damages, Intellectual Property, Media

Updated: 16 May 2022; Ref: scu.180883

Ultraframe UK Limited v Clayton, Fielding and Others: ChD 3 Oct 2002

The claimants asserted infringement of their registered design rights in parts used in their double glazing and conservatory units. ‘Therefore it is possible for design right to subsist in the design of the part of the article which is not excluded under the must match provisions.’

Judges:

The Honourable Mr Justice Laddie

Citations:

[2003] RPC 435

Statutes:

Copyright Designs and Patents Act 1988 213(6) 215

Jurisdiction:

England and Wales

Citing:

Cited – Montgomery v Johnson Underwood Ltd CA 9-Mar-2001
A worker who had strictly been employed by an agency but on a long term placement at a customer, claimed to have been unfairly dismissed by the customer when that placement ended.
Held: To see whether she was an employee the tribunal should . .
Cited – Secretary of State for Trade and Industry v Bottrill CA 12-Feb-1999
There is no rule of law, to suggest that a sole director and owner of majority of shareholding, could not be an employee of that company, and be entitled to a redundancy payment on the liquidation of the company. ‘If the tribunal considers that the . .
Cited – Trussed Steel Concrete Ltd v Green 1946
A company director required to work full time for the company in return for a salary may be an employee: ‘… the question I have to consider is . . whether a managing director serving under a contract such as that by which Mr Green is bound is a . .
Cited – Anderson v James Sutherland (Peterhead) Ltd 1941
The court discussed the authorities on the question of whether a managing director of a company was an employee or contractor. ‘Each of the decisions was given in cases where the context played a vital part in the conclusions arrived at.’ . .
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 – Secretary of State for Trade and Industry v Bottrill EAT 28-May-1998
There is no rule of law to suggest that a sole director and owner of majority of shareholding could not be an employee and entitled to redundancy payment on the liquidation of the company. ‘The higher courts have taken the view that the issue as to . .
Cited – Lakeview Computers Plc v Steadman 26-Nov-1999
. .

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 . .
Appeal from – Ultraframe UK Limited v Clayton, Fielding and Others CA 12-Dec-2003
The company was 100% owned by its designer. He purported to retain the design right.
Held: The designer held the rights in trust for the company. An assignment by a shareholder holding all the shares in a company was possible, but not when the . .
See Also – Ultraframe UK Ltd v Clayton and others ChD 14-Feb-2003
Laddie J said: ‘I have to resolve a dispute between the parties on the issue of costs following on from the determination of the preliminary issues ordered to be heard by His Honour Judge Behrens. It is difficult to summarise the complex . .
See Also – Ultraframe UK Ltd v Fielding and others ChD 12-Jan-2004
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Employment

Updated: 16 May 2022; Ref: scu.178499

Merlet and Another v Mothercare Public Ltd: ChD 13 Apr 1984

The plaintiff claimed copyright infringement by the defendant in having copied her ‘raincosy’, a baby’s cape.
Held: The claim failed. The object did not count as a sculpture so as to receive protection.

Judges:

Walton J

Citations:

[1986] RPC 115

Jurisdiction:

England and Wales

Intellectual Property

Updated: 15 May 2022; Ref: scu.442599

Britain v Hanks Bros and Co: 1902

The plaintiff claimed copyright in a model soldier cast in metal as a statue. The defendant argued that the statute was intended to apply only to substantial works of art, such as busts, large sculptures and casts of copies of works recognised as works of art, and there was no artistic merit in the model soldiers in the sense contemplated by the Act.
Held: The first question was whether the toy representation was ‘an artistic thing – an artistic production within the Act. Being a toy was not conclusive against its being a sculpture. Wright J said: ‘It is tolerably certain that some toys would not fall within the protection of the Act; and the question whether this soldier’s or mounted yeoman’s figure comes within it must be decided upon evidence as to its artistic character. The evidence before me is all one way. A war correspondent has been called who is at the same time an artist and has shown several of these figures to be artistic productions, in that the anatomy is good, and that the modelling shows both technical knowledge and skill. I see nothing to quarrel with in that statement. On the whole, therefore, although I have great doubt as to the meaning of the Act, I am prepared to hold that the production of a metal figure of a mounted yeoman such as this is good enough to be protected by the provisions of the Act if [certain other provisions] are complied with.’

Judges:

Wright J

Citations:

(1902) 86 LT 765

Statutes:

Sculpture Copyright Act 1814

Jurisdiction:

England and Wales

Cited by:

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: 15 May 2022; Ref: scu.384437

Spottiswoode v Clark: 11 Dec 1846

A plaintiff seeking an injunction to restrain publication of documents must first demonstrate a title in them.

Citations:

[1846] EngR 1197, (1846) 1 Coop T Cott 254, (1846) 47 ER 844

Links:

Commonlii

Jurisdiction:

England and Wales

Cited by:

Cited – Prince Albert v Strange ChD 8-Feb-1849
The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
Held: . .
Lists of cited by and citing cases may be incomplete.

Litigation Practice, Intellectual Property

Updated: 15 May 2022; Ref: scu.303092

MCA Records Inc and Another v Charly Records Ltd and others: ChD 22 Mar 2000

A licence to record is a one-off event authorising recording for the period of the licence.

Judges:

Rimer J

Citations:

Unreported, 22 March 2000

Jurisdiction:

England and Wales

Cited by:

Cited – Ludlow Music Inc v Williams and others ChD 2-Oct-2000
The claimant sought damages for copyright infringement in respect of two works which parodied a song to which they owned the rights.
Held: The amount copied, being as much as a quarter of the original work, meant that the claim was . .
Appeal from – 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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 May 2022; Ref: scu.272768

Sony Computer Entertainment and Others v. Ball and Others: ChD 17 May 2004

Pumfrey J considered the test to be applied when a party applied for leave to commence proceedings for contempt of court against another party: ‘It seems to me, in the light of the judgment in Malgar v. Leach, that the discretion to permit applications of this nature to proceed must be exercised with very great caution. It can hardly be appropriate, it seems to me, to permit a general investigation of the facts surrounding a particular infringement in the context of contempt proceedings. That is why I have excluded from the permission which I have granted the greater number of the non-disclosures and misrepresentations alleged by the claimants.

It seems to me also that before this discretion is exercised, the claimant must satisfy the court that there is a strong case – and preferably an admitted case – that a particular misrepresentation is untrue.’ and
‘the court must be astute not to allow tenuous or argumentative applications to commit to go forward.’

Judges:

Pumfrey J

Citations:

[2004] EWHC 1192 (Ch)

Jurisdiction:

England and Wales

Citing:

See Also – Kabushiki Kaisha Sony Computer Entertainment Inc., Sony Computer Entertainment Europe Limited, Sony Computer Entertainment UK Limited v Ball, and others ChD 19-Jul-2004
The claimant sought summary judgment in a claim that the defendant had manufactured computer chips which would be used with their playstation computer games consoles to avoid their copy protection systems.
Held: The fact that the chips only . .
Applied – Malgar Ltd v R E Leach Engineering Ltd ChD 1-Nov-1999
The Civil Procedure Rules could not change the substantive law. It therefore remained necessary for it to be shown that in addition to knowing that what was said was false, the party had to have known that what was being said was likely to interfere . .

Cited by:

Cited – Kirk v Walton QBD 24-Jul-2008
The defendant sought leave to bring proceedings for contempt of court against the claimant saying that she had had no honest belief in the matters deposed in her statement of truth, in that she had substantially exaggerated her injuries.
Held: . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contempt of Court

Updated: 15 May 2022; Ref: scu.272262

Harrods Limited v Harrods (Buenos Aires) Ltd and Harrods (South America) Ltd: ChD 15 Jan 1997

Judges:

Neuberer J

Citations:

[1997] FSR 420

Jurisdiction:

England and Wales

Citing:

Cited – Anheuser-Busch v Budejovicky Budvar CA 1984
The parties disputed the use of the name Budweiser for the beers which each sold.
Held: Neither party was entitled to an injunction. neither AB nor BB was disentitled to use the name Budweiser since in 1979 there was a dual reputation and . .
Cited – Harrods Ltd v Harrodian School CA 3-Apr-1996
No passing off was to be found to have been shown without the public believing that the plaintiff was responsible for the defendant’s services or goods. It was not enough to show only that the defendant was somehow ‘behind’ the defendant. Millet LJ . .

Cited by:

Appeal from – Harrods Limited v Harrods (Buenos Aires) Ltd and Harrods (South America) Ltd CA 21-May-1998
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 May 2022; Ref: scu.270274

Sony Music Entertainment Inc and another v Prestige Records Ltd and another: ChD 17 Feb 2000

On a case management hearing, the defendants made admissions on which judgment was entered. The master reserved but later awarded costs. The defendants appealed against the costs order saying that the claimants had proceeded unnecessarily aggressively and had failed to disclose evidence in a timely way. The appeal took effect as a rehearing. Intellectual property cases should be subject to the same overriding objectives as in other cases. In this case the order was correct. An appeal to a High Court judge against an order for costs, was a rehearing, and such a judge was free to exercise his discretion accordingly. Where however the issue related to something specifically within the knowledge of the first instance judge such as the proportionality of the costs to the matter in cause this was to be disturbed only rarely. That the award was made on what was essentially a case management conference should not make a difference of principle.

Citations:

Gazette 17-Feb-2000, Times 02-Mar-2000

Jurisdiction:

England and Wales

Costs, Intellectual Property

Updated: 15 May 2022; Ref: scu.89399

Coca-Cola Co and Another v Gilbey and Others: ChD 10 Oct 1995

A defendant in an infringement case was ordered to provide information on his associate co-infringers despite his claimed risk of violence. Such a threat was no defence to an action for contempt of court. Duress in civil cases goes as to mitigation only and does not operate as a defence.

Citations:

Times 28-Nov-1995, Independent 10-Oct-1995

Cited by:

Cited – The Coca-Cola Company and Another v Cengiz Aytacli and others ChD 30-Jan-2003
The claimant having succeeded in an action against the defendants, now sought an order for their committal for contempt, accusing them of having given false evidence, and of having failed to comply with court orders made. The defendant asserted a . .
Lists of cited by and citing cases may be incomplete.

Contempt of Court, Intellectual Property

Updated: 15 May 2022; Ref: scu.79253

U-R Lab v EUIPO (The Dining Experience): ECFI 25 May 2016

ECJ (Judgment) Mark of the European Union – Application for figurative marks of the European Union and verbal THE DINING EXPERIENCE – Absolute ground for refusal – Lack of distinctive character – Article 7, paragraph 1 b) of Regulation (EC) No 207/2009 – Obligation to state reasons – Article 75 of Regulation No 207/2009

Citations:

T-422/15, [2016] EUECJ T-422/15, ECLI:EU:T:2016:314

Links:

Bailii

Jurisdiction:

European

European, Intellectual Property

Updated: 15 May 2022; Ref: scu.564898

Ice Mountain Ibiza v EUIPO – Etyam (Ocean Beach Club Ibiza): ECFI 25 May 2016

(Judgment) Brand of the European Union – Opposition proceedings – Application for figurative mark of the EU ocean beach club ibiza – Earlier national figurative and word marks ocean drive and Ibiza-hotel THE OCEAN GROUP – Cancellation of the earlier mark serving basis for the contested decision – No need to adjudicate

Citations:

T-753/14, [2016] EUECJ T-753/14

Links:

Bailii

Jurisdiction:

European

European, Intellectual Property

Updated: 15 May 2022; Ref: scu.564880

Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik; Budejovicky Budvar Narodni Podnik v Anheuser Busch Inc: ChD 20 May 1998

It is possible to grant two identical trade marks in respect of beer where either there was no confusion, or an honest concurrent use could justify such double registrations.

Citations:

Times 20-May-1998

Statutes:

Trade Marks Act 1994 11 12(2)

Cited by:

Appeal from – Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik v Anheuser-Busch CA 7-Feb-2000
The registration of two trade marks (‘Budweiser’) with the identical names was against the Act since it would appear to encourage the very confusion the Act sought to avoid. Nevertheless, where there was genuine honest concurrent use, that use might . .
See Also – Podnik v Anheuser-Busch Inc CA 29-Oct-2002
. .
See Also – Anheuser-Busch v Budejovicky Budvar, narodni podnik ECJ 16-Nov-2004
Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor’s exclusive right to the trade mark – Alleged use of the sign as a trade name. . .
See Also – Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc ChD 19-Feb-2008
. .
See Also – Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc CA 20-Oct-2009
The parties had long disputed the use of the trade marks ‘Bud’ and ‘Budweiser’ for their beers. The claimant now said that the defendants had made an abusive registration under the 1994 Act, by requesting a declaration that the registration by the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 15 May 2022; Ref: scu.77801

Quiksilver v Charles Robertson: ChD 2004

Citations:

[2005] FSR 8, [2004] EWHC 2010 (Ch)

Jurisdiction:

England and Wales

Cited by:

Cited – Mastercigars Direct Ltd v Hunters and Frankau Ltd CA 8-Mar-2007
An allegation was made that Cuban cigars imported by the claimant infringed the trade marks of the respondents being either counterfeit or parallel imports, and were impounded. The claimant sought a declaration of non-infringement and their release, . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 14 May 2022; Ref: scu.249939

Robert McBride Ltd’s Trade Mark Application: TMR 2003

The applicant sought to amend its application for a trade mark. The Appointed Person refused the application, emphasising that an applicant must specify his claim from the start. Geoffrey Hobbs QC said: ‘Amendment of a trade mark after registration has been applied for will not in general be possible under the proposed Community trade marks system, nor is it possible under the Madrid Agreement. Under the new law therefore it will not be possible to make such amendments. If the mark as filed is unregistrable it will be necessary to file a fresh application in order to register any amended version of the mark.’

Judges:

Geoffrey Hobbs QC

Citations:

[2003] RPC 19

Cited by:

Cited – Societe Des Produits Nestle Sa v Mars UK Limited CA 26-Jul-2004
The appellant had sought to register as a trade mark the shape of a polo mint. The objector said it lacked sufficient distinctive character. The appellant sought to amend the specification of the trade mark to limit its application as to the goods . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 13 May 2022; Ref: scu.200246

NIC Instruments Limited v P W Allen And Company Limited: PO 29 Jan 2004

PO Designs – Designs/Design Right Decisions

Judges:

Mr P Hayward

Citations:

O/026/04

Links:

PO, PO

Jurisdiction:

England and Wales

Cited by:

See Also – NIC Instruments Limited v P W Allen And Company Limited PO 11-May-2004
PO Designs – Designs/Design Right Decisions . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 13 May 2022; Ref: scu.200150

Intel Corporation v Sihra: ChD 2003

The court considered the observations of Pumfrey J in the Chrysler case as requiring proof of real future unfair advantage or detriment and not merely risk, and emphasised both the need for a causal connection between similarity on the one hand and relevant confusion on the other and the need to keep ‘similarity’ and ‘confusion’ as issues separate from one another.

Judges:

Patten J

Citations:

[2003] EWHC 17 (Ch), [2003] RPC 44

Citing:

Cited – General Motors Corporation v Yplon SA ECJ 14-Sep-1999
Europa Article 5(2) of First Council Directive 89/104 concerning trade marks – which extends the protection of a registered trade mark to products or services which are neither identical nor similar to those for . .
Cited – Daimler Chysler AG v Javid Alavi (t/a Merc) ChD 18-Dec-2000
Where a trader was involved in an activity quite outside any activity which might be undertaken by the holder of the registered trade mark, and there was no real likelihood of confusion, the owner of the mark could not claim that the value of his . .
Cited – British Sugar plc v James Robertson and Sons Ltd 1996
Use ‘in the course of trade’ means use by way of business and does not just mean use as a trade mark. . .

Cited by:

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

Intellectual Property

Updated: 13 May 2022; Ref: scu.198677

Wild Child: TMR 17 Feb 1998

PO Trade Marks – Appeals to the Appointed Person Decisions – Application No: 2013102 – Opposition
The court set out the elements of the cause of action of passing off: ‘The necessary elements of the action for passing off have been restated by the House of Lords as being three in number:
(1) that the plaintiffs goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;
(2) that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and
(3) that the plaintiff has suffered to is likely to suffer damage as a result of the erroneous belief engendered by the defendant’s misrepresentation.’

Judges:

Geoffrey Hobbs QC

Citations:

Opp 43414, [1998] RPC 455

Links:

PO

Jurisdiction:

England and Wales

Cited by:

Cited – Minimax Gmbh and Co Kg v Chubb Fire Ltd PatC 29-Jul-2008
Chubb sought to prevent the registration of a mark by the claimant arguing that its use would amount to passing off as against its own marks.
Held: There was insufficient evidence for the hearing officer to have found that Chubb had maintained . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 13 May 2022; Ref: scu.192906

A Fulton Co Ltd v Grant Barnett and Co Ltd: ChD 2001

The court considered an allegation that part of an unregistered design had been copied. The defendant said that the section required a claim in respect of the entire design.
Held: The part in respect of which a claim must be made must neither be insignificant, nor included in any part of the design which ‘must match’ ‘ . . . the core meaning of ‘design’ is the shape or configuration of an article. Prima facie that would mean the shape or configuration of the whole article. But it does not have to be the whole article: the design can be the shape or configuration of the article, and apparently any part may be sufficient. And the scope of what design right may subsist in is enlarged further by the reference to ‘any aspect’ of the shape or configuration concerned . . . Design right might be claimed to subsist in the whole aspect of the shape or configuration of the whole . . . or it might be claimed to subsist in one or more particular aspects of the shape or configuration of one or more particular parts . . .’

Judges:

Park J

Citations:

[2001] RPC 36

Statutes:

Copyright Designs and Patents Act 1988 213(6)

Jurisdiction:

England and Wales

Citing:

Cited – Ocular Sciences Ltd v Aspect Vision Care Ltd ChD 11-Nov-1996
The freedom for a claimant in registered design right to frame his claim, as to whether he asserts an infringement of the entire design, or limits it to the section infringed, is important.
Laddie J said: ‘This means that the proprietor can . .

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

Intellectual Property

Updated: 12 May 2022; Ref: scu.188220

Anheuser-Busch Inc v Budejovicky Budvar: CA 1984

The plaintiff sold the well-known ‘Budweiser’ beer in the US, but it was not generally available in the UK, being sold in American military bases and in a few duty-free shops. However, the beer was widely known throughout the UK because of the plaintiff’s publicity efforts as well as tourist and business traffic between Europe and the US. The defendant sold its own beer under the same name. The right to a trade mark was challenged.
Held: Neither side was making a false representation; there was a dual reputation in the mark and name ‘Budweiser.’ Oliver LJ said that the plaintiff could ‘legitimately claim . . a reputation as the [brewer] of a beer, Budweiser, with a substantial section of the public’. The question for the court, then, was ‘whether this reputation associated with a beer which, for practical purposes, nobody could buy [in the UK], constituted . . goodwill in any relevant sense’ and asked whether the plaintiff’s name could be said to be an attractive force for custom in the UK.He answered no, saying: ‘[O]ne asks oneself ‘what custom in this country in 1973 was brought in by the knowledge of members of the indigenous British public of the [plaintiff’s] Budweiser beer?’ And the answer must be that there was none, because however attractive [the British public] may have found the idea of drinking the [plaintiff’s] beer, they could not get it. In so far, therefore, as anyone was misled by the defendants’ use of the name ‘Budweiser,’ the [plaintiff] could suffer no damage either by loss of sales, for there were none at that time and none were contemplated, nor by loss of reputation, because if there was any such loss (which seems highly improbable) the reputation was quite unconnected with either an ability or a willingness to supply.’

Judges:

Oliver LJ

Citations:

[1984] FSR 413, (1984) 4 IPR 260

Jurisdiction:

England and Wales

Cited by:

See Also – Anheuser-Busch v Budejovicky Budvar, narodni podnik ECJ 16-Nov-2004
Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor’s exclusive right to the trade mark – Alleged use of the sign as a trade name. . .
See Also – Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc ChD 19-Feb-2008
. .
See Also – Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc CA 20-Oct-2009
The parties had long disputed the use of the trade marks ‘Bud’ and ‘Budweiser’ for their beers. The claimant now said that the defendants had made an abusive registration under the 1994 Act, by requesting a declaration that the registration by the . .
Cited – Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others CA 24-Feb-2010
The claimants owned Community and UK trade marks in the name ‘Cipriani’. The defendants operated a restaurant in London using, under the licence of another defendant, the same name. The claimant sought an injunction to prevent further use of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 11 May 2022; Ref: scu.377524

Pearce v Ove Arup Partnership Ltd and Others: ChD 17 Mar 1997

A UK court may not decline jurisdiction in enforcing Dutch copyright law if it is asked to do so.

Citations:

Times 17-Mar-1997, Gazette 16-Apr-1997

Statutes:

Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters (1968) (Cmnd 7395)

Jurisdiction:

England and Wales

Cited by:

Appeal from – Pearce v Ove Arup Partnership Ltd and others CA 21-Jan-1999
An English court does not have to refuse an application which sought to apply a foreign copyright law in a claim based on acts committed abroad on the basis that not actionable here. Such restrictions applicable to land actions only: ‘It is, we . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Jurisdiction

Updated: 11 May 2022; Ref: scu.84630

Kimberley-Clark Worldwide Inc v Proctor and Gamble Ltd and Another: CA 1 Dec 1999

Where a party to an action asserted that the patent holder had abused his monopoly position, the courts in England had discretion to refuse the patent holder leave to apply to amend his patent. When dealing with such issues, the court was entitled to take into account a wider range of issues than that contemplated by the European Patent Office.

Citations:

Times 01-Dec-1999, Gazette 08-Dec-1999

Statutes:

Patents Act 1977 75, Convention on the Grant of European Patents (Munich 1973)

Jurisdiction:

England and Wales

European, Intellectual Property

Updated: 10 May 2022; Ref: scu.82778

John De Kuyper and Son v W and G Baird Ltd: 1903

Citations:

(1903) 20 RPC 581

Cited by:

Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 10 May 2022; Ref: scu.239088

Surene Pty Ltd v Multiple Marketing Ltd: ETMR 2000

(Cancellation Division) (year?) The proprietor, Multiple Marketing, distributed the applicant for revocation’s products under the trade mark BE NATURAL.
Held: The application had been made in bad faith: ‘Bad faith is a narrow legal concept in the CTMR system. Bad faith is the opposite of good faith, generally implying or involving, but not limited to, actual or constructive fraud, or a design to mislead or deceive another, or any other sinister motive. Conceptually, bad faith can be understood as a ‘dishonest intention’. This means that bad faith may be interpreted as unfair practices involving lack of any honest intention on the part of the applicant of the CTM at the time of filing. Bad faith can be understood either as unfair practices involving lack of good faith on the part of the applicant towards the Office at the time of filing, or unfair practices based on acts infringing a third person’s rights. There is bad faith not only in cases where the applicant intentionally submits wrong or misleading by insufficient information to the Office, but also in circumstances where he intends, through registration, to lay his hands on the trade mark of a third party with whom he had contractual or pre-contractual relations.’

Citations:

C000479899/1

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

Intellectual Property

Updated: 09 May 2022; Ref: scu.200437

Environmental Recycling Technologies: PatC 2012

Warren J discussed the importance of the financial health of the parties to a case when considering a transfer to the Chancery Division, and referring to Comic Enterprises said: ‘Ms. Lawrence submits that the financial position of the parties is determinative. I think she gets that proposition in the sense that when an SME wants the Patents County Court and is poor, the factor is decisive and that was indeed what Judge Birss said. If you have a very poor defendant, SME or individual who wants a case in the Patents County Court, that is a decisive factor. For my part I would not say it was decisive but it is obviously an enormously important factor and may overwhelm others.
But even Judge Birss did not mean to be as prescriptive as that. For him, as is obviously correct, the overriding matter is the justice of the case and access to justice. It does not follow, and it is illogical, that just because a party can afford High Court litigation means that the case must be in the High Court (other factors pointing in that direction) especially if the party is an SME or individual.’

Judges:

Warren J

Citations:

[2012] EWHC 2097 Pat

Jurisdiction:

England and Wales

Citing:

Cited – Comic Enterprises Ltd v Twentieth Century Fox Film Corp PCC 22-Mar-2012
Birss QC HHJ explained his comments in ALK-Abello regarding the criteria for transerring a case to Chancery Division: ’21. This case is one in which access to justice for SMEs is raised squarely. It is the key element of Miss McFarland’s submissions . .

Cited by:

Cited – 77 Ltd v Ordnance Survey Ltd and Others IPEC 15-Jun-2017
The court heard an application to transfer the case to the Chancery Division.
Held: Given the different levels of resources available to the parties, a transfer was refused. . .
See Also – Environmental Recycling Technologies Plc v Upcycle Holdings Ltd PCC 5-Feb-2013
Challenge to validity o a patent. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 09 May 2022; Ref: scu.588984

Harmonize (Trade Mark: Opposition): IPO 24 Jul 2018

Sections 5(1), 5(2) and 5(3) Issues To Do With Goods / Services – Goods v retail services
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)

Citations:

[2018] UKIntelP o45518

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 May 2022; Ref: scu.621000

Device Mark (Trade Mark: Opposition): IPO 24 Jul 2018

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Sections 5(1), 5(2) and 5(3) Dilution Cases – Unfair advantage of repute
Sections 5(1), 5(2) and 5(3) Dilution Cases – Detriment to distinctive character

Citations:

[2018] UKIntelP o44818

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 May 2022; Ref: scu.620995

Wang Laboratories Inc’s Application: ChD 1990

The applicant sought to patent an expert system embodied in a computer program for storing information in a way which allowed particular access.
Held: ‘Before turning to the claims, I must deal with a submission of Mr Burkill, who appeared for the applicant. He submitted that the words ‘a scheme, rule or method for performing a mental act’ in section 1(2)(c) only excluded schemes, rules or methods which were intended to be performed and were capable of being performed in the human mind. He submitted that the word ‘for’ introduced a subjective element. Thus, as claim l had as its basis steps which were not intended to be carried out by a human, in that the human mind would not go through those steps, the basis of the claim was not excluded matter.
The word ‘for’ does not, in my view, introduce a subjective element. It means ‘for the purposes of’. The fact that the scheme, rule or method is part of a computer program and is therefore converted into steps which are suitable for use by a person operating the computer does not matter. What is excluded from being patented is a scheme, rule or method for performing a mental act, whatever mental steps or process is involved. As I pointed out in Gale’s Application , it is a question of fact to be decided in each case whether the claimed invention is more than a claim to an invention for a disqualified matter. Just as a claim to a disc containing a program can be in fact a claim to an invention for a computer program, so can a claim to steps leading to an answer be a claim to an invention for a performing a mental act. The method remains a method for performing a mental act, whether a computer is used or not. Thus a method of solving a problem, such as advising a person whether he has acted tortiously, can be set out on paper, or incorporated into a computer program. The purpose is the same, to enable advice to be given, which appears to me to be a mental act. Further, the result will be the advice which comes from performance of a mental act. The method may well be different when a computer is used, but to my mind it still remains a method for performing a mental act, whether or not the computer program adopts steps that would not ordinarily be used by the human mind.’

Judges:

Adous J

Citations:

[1991] RPC 463

Statutes:

Patents Act 1977 1(2)(c)

Jurisdiction:

England and Wales

Cited by:

Cited – Aerotel Ltd v Telco Holdings Ltd and others, In re Patent Application GB 0314464.9 in the name of Neal Macrossan Rev 1 CA 27-Oct-2006
In each case it was said that the requested patent concerned an invention consisting of a computer program, and was not therefore an invention and was unpatentable. In one case a patent had been revoked on being challenged, and in the other, the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 07 May 2022; Ref: scu.245713

IBM/Data processor network: EPOBA 1988

The Board considered an application for a patent apparently relating to a computer program. The ‘technical feature’ of the claimed innovation was the removal of limitations of prior art systems with the result that the data processing system was more flexible and had: ‘improved communication facilities between programs and files held at different processors within the known network.’
Held: ‘The Board holds the view that an invention relating to the coordination and control of the internal communication between programs and data files held at different processors in a data processing system having a plurality of interconnected data processors in a telecommunication network, and the features of which are not concerned with the nature of the data and the way in which a particular application program operates on them, is to be regarded as solving a problem which is essentially technical.’

Citations:

(1988) T6/83

Jurisdiction:

European

Cited by:

Cited – Aerotel Ltd v Telco Holdings Ltd and others, In re Patent Application GB 0314464.9 in the name of Neal Macrossan Rev 1 CA 27-Oct-2006
In each case it was said that the requested patent concerned an invention consisting of a computer program, and was not therefore an invention and was unpatentable. In one case a patent had been revoked on being challenged, and in the other, the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 07 May 2022; Ref: scu.245711

BASF Plc v CEP (UK) Plc: ChD 26 Oct 1995

Section 10(3) does require proof that the use was such as was likely to cause confusion.

Judges:

Knox J

Citations:

Unreported, 26 October 1995

Statutes:

Trade Marks Act 1994 810(4)

Jurisdiction:

England and Wales

Cited by:

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

Intellectual Property

Updated: 07 May 2022; Ref: scu.239035

General Electric Co v General Electric Co Limited; GE TM; Re GE Trade Mark: CA 1970

Citations:

[1970] RPC 339

Jurisdiction:

England and Wales

Citing:

Appeal from – General Electric Co v General Electric Co Ltd ChD 1969
A form of co-branding was held to be non-deceptive. Grahame J said: ‘The registered use provisions are permissive only and not a compulsory prerequisite for retention of validity of the mark and that, provided the conditions of control are adequate, . .

Cited by:

Cited – Pegler Ltd v Wang (UK) Ltd TCC 25-Feb-2000
Standard Conract – Wide Exclusions, Apply 1977 Act
The claimant had acquired a computer system from the defendant, which had failed. It was admitted that the contract had been broken, and the court set out to decide the issue of damages.
Held: Even though Wang had been ready to amend one or . .
Appeal from – General Electric Co v General Electric Co Ltd; GE TM; Re GE Trade Mark HL 1972
Lord Diplock said: ‘The common law of trade marks before 1875
The use by manufacturers of distinctive marks upon goods which they had made is of very ancient origin, but legal recognition of trade marks as a species of incorporeal property was . .
Lists of cited by and citing cases may be incomplete.

Damages, Intellectual Property

Updated: 07 May 2022; Ref: scu.238585

Regina v Rhodes: CACD 2002

Andrew Smith J: ‘No doubt in many cases the fact that a trader could ascertain whether a trade mark was registered by searching the register will make it extremely difficult to establish a belief involving ignorance of a registered mark is held on ‘on reasonable grounds’.’

Judges:

Kay LJ and Andrew Smith J

Citations:

[2003] FSR 147, [2002] EWCA 1390

Statutes:

Trade Marks Act 1994

Jurisdiction:

England and Wales

Citing:

Doubted – Regina v Keane CACD 2001
. .
Doubted – Torbay Council v Singh Admn 10-Jun-1999
The court was asked if the section 92(5) defence applied where the defendant does not know of the existence of the registered trade mark in question.
Held: The defence is not available in such a case. The court noted that section 92(5) speaks . .

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 – 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.

Intellectual Property, Crime

Updated: 06 May 2022; Ref: scu.182487

Regina v Johnstone: CACD 2002

Citations:

[2002] EWCA Crim 194

Jurisdiction:

England and Wales

Citing:

Appealed to – 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 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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Crime

Updated: 06 May 2022; Ref: scu.182483

Industrial Furnaces v Reaves: 1970

The plaintiffs succeeded at the trial in respect of their claim for misuse of confidential information and other claims, and their entitlement to an injunction and delivery up of material containing confidential information. In argument about the form of the order, counsel for the defendants #suggested that a number of the documents of which delivery up was sought might well contain confidential information of the Defendants which would thus be placed in the hands of the plaintiffs.
Held: Graham J rejected the submission, saying: ‘If a wrongdoer includes material of his own and adds it to material which he has taken from the plaintiffs in my judgment he cannot complain if equity demands that when he has been found out he should deliver up the documents, even though they may now contain information of his own.’

Judges:

Graham J

Citations:

(1970) RPC 605.

Jurisdiction:

England and Wales

Cited by:

Cited – Imerman v Tchenguiz and Others QBD 27-Jul-2009
It was said that the defendant had taken private and confidential material from the claimant’s computer. The claimant sought summary judgement for the return of materials and destruction of copies. The defendant denied that summary judgement was . .
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.

Intellectual Property, Litigation Practice

Updated: 06 May 2022; Ref: scu.582081

Dyson Appliances Limited v Hoover Limited (No 4): PatC 18 Feb 2003

The court refused to make an order for a payment of interim costs when the substantive claim for costs remained to be heard. The claimant had accepted a payment in entitling it to its costs, but now sought an interim award before the full costs could be assessed.
Any rule allowing a judge to make such an assessment could not apply where the judge had not heard the substantive claim. In this case the costs judge would be blind to the underlying issues. Application refused.

Judges:

Laddie J

Citations:

Times 18-Mar-2003, Gazette 17-Apr-2003, [2003] EWHC 624 (Pat), [2004] 1 WLR 1264

Links:

Bailii

Statutes:

Civil Procedure Rules 14

Jurisdiction:

England and Wales

Citing:

See Also – Dyson Appliances Ltd v Hoover Ltd PatC 3-Oct-2000
The plaintiff alleged infringement of its European Patent in a vacuum cleaning appliance. The defendants sought its revocation on the statutory grounds of lack of novelty, obviousness and insufficiency, and for threats. . .
See Also – Dyson Appliances Ltd v Hoover Ltd PatC 5-Apr-2001
The claimant had obtained injunctive relief against the defendant for patent infringement. Only twelve months of the patent remained, and the claimants applied for an extension of the injunction twelve months beyond the patent expiry, and for other . .
See Also – Dyson Appliances Limited v Hoover Limited CA 4-Oct-2001
Hoover appealed a finding that Dyson’s patent was valid and infringed. They asserted the patent was not novel in the light of a US patent, and even so was obvious. One test was whether an application of the claimed patent would inevitably infringe . .
See Also – Dyson Appliances Limited v Hoover Limited (No 3) ChD 21-Oct-2002
The plaintiff had accepted a payment in which was more advantageous than its own offer of settlement. It now sought costs on an indemnity rather than a standard basis. They argued that under the rule they were entitled to costs on an indemnity basis . .

Cited by:

Cited – Simms and others v The Law Society CA 12-Jul-2005
The appellant challenged intervention proceedings brought against his solicitors practice by the respondent. Following disciplinary proceedings, the Society had obtained summary judgment rejecting the application, and awarding costs. The solicitor . .
Lists of cited by and citing cases may be incomplete.

Costs, Civil Procedure Rules, Intellectual Property

Updated: 04 May 2022; Ref: scu.180956