Tag: Intellectual Property

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 injunctive relief.
Held: The defendant could not begin arrangements to take advantage of the expiry of the patent until it expired, and the extension of the injunction would put the parties back in the position they would have been in if the defendants had not infringed the patent. The Patents Act could not achieve this, but the Supreme Court Act could be used.

Judges:

Fysh QC

Citations:

Gazette 05-Apr-2001, [2001] EWHC Patents 30

Links:

Bailii

Statutes:

Supreme Court Act 1981 37, Patents Act 1977 60

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. . .
Cited – Multiform Displays v Whitmarley Displays CA 1956
Though contempt proceedings must remain a possibility whilst any injunction is running, this procedure is an undesirable and highly inconvenient way of resolving patent infringement disputes. . .
Cited – Multiform Displays v Whitmarley Displays HL 1957
The claimant appealed against refusal of a committal order to enforce a court order in patent infringement proceedings.
Held: Viscount Simonds said: ‘Thus it is, my Lords, that upon what was a motion for sequestration and committal your . .

Cited by:

Appeal from – 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 . .
See Also – 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 . .
Cited – Grisbrook v MGN Ltd and Others ChD 16-Oct-2009
The claimant sought an order committing officers of the defendant company for having failed to obey a court order requiring the defendant to cease infrigement of his copyright in photographs. He operated as a photographer of celebrities selling . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 04 May 2022; Ref: scu.80194

The Leather Cloth Company v The American Leather Cloth Company: 7 Jul 1863

Although a trade mark is not property as such, when a business is bona fide assigned, the right to exclusive use of the trade mark will pass with it.

Citations:

[1863] EngR 794, (1863) 1 H and M 271, (1863) 71 ER 118

Links:

Commonlii

Jurisdiction:

England and Wales

Cited by:

See Also – The Leather Cloth Company, Limited, v The American Leather Cloth Company, Limited 5-Dec-1863
The jurisdiction of the Court of Chancery in the protection given to trade marks rests upon property, and the Court interferes by injunction, because that is the only mode by which property of this description can be effectually protected.
See Also – Leather Cloth Co Ltd v American Leather Cloth Co Ltd HL 1-Feb-1865
Where an individual works in a partnership the goodwill generated by his acts will in the normal course vest in the partnership.
Lord Kingsdown said: ‘Nobody doubts that a trader may be guilty of such misrepresentations with regard to his . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 02 May 2022; Ref: scu.283449

The Leather Cloth Company, Limited, v The American Leather Cloth Company, Limited: 5 Dec 1863

The jurisdiction of the Court of Chancery in the protection given to trade marks rests upon property, and the Court interferes by injunction, because that is the only mode by which property of this description can be effectually protected.
Property in a trade mark is the right to an exclusive use of some mark, name or
symbol in connection with a particular manufacture or vendible commodity.

Judges:

Lord Chancellor Lord Westbury

Citations:

[1863] EngR 1050, (1863) 4 De G J and S 137, (1863) 46 ER 868

Links:

Commonlii

Jurisdiction:

England and Wales

Citing:

See Also – The Leather Cloth Company v The American Leather Cloth Company 7-Jul-1863
Although a trade mark is not property as such, when a business is bona fide assigned, the right to exclusive use of the trade mark will pass with it. . .

Cited by:

Appeal from – Leather Cloth Co Ltd v American Leather Cloth Co Ltd HL 1-Feb-1865
Where an individual works in a partnership the goodwill generated by his acts will in the normal course vest in the partnership.
Lord Kingsdown said: ‘Nobody doubts that a trader may be guilty of such misrepresentations with regard to his . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Torts – Other

Updated: 02 May 2022; Ref: scu.283705

A and M Records Ltd v VCI: 1995

Sir Mervyn Davies said: ‘However that may be, I am satisfied that Mr Ross was at all material times quite unaware of any activities of the plaintiffs being activities of a kind that he as owner of the copyright in the sound recordings could object to. It did not occur to Mr Ross that he had any right to copyright until it was explained to him about September 1994 that he might be the copyright owner. That being so I do not see how any estoppel can be raised against him or in turn against VCI. I do not see that Mr Ross acted unconscionably in failing to assert a right of which he was unaware.’

Judges:

Sir Mervyn Davies

Citations:

[1995] EMLR 25

Jurisdiction:

England and Wales

Citing:

Cited – Taylors Fashions Ltd v Liverpool Victoria Trustees Co Ltd ChD 1981
The fundamental principle that equity is concerned to prevent unconscionable conduct permeates all the elements of the doctrine of estoppel. In the light of the more recent cases, the principle ‘requires a very much broader approach which is . .

Cited by:

Cited – Barrett v Universal-Island Records Ltd and others ChD 15-May-2006
The claimant was entitled to share in the copyright royalties of Bob Marley and the Wailers, and claimed payment from the defendants. The defendants said that the matters had already been settled and that the claim was an abuse of process, and also . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, media

Updated: 01 May 2022; Ref: scu.251656

Greater Glasgow Health Board’s Application: 1996

An Opthalmic Registrar employed by the Board invented an optical spacing device for use with an indirect ophthalmoscope. The Hearing Officer decided that the invention belonged to the employer.
Held: The employee’s appeal succeeded. The court was only concerned to ascertain the normal duties of the Registrar. In doing so he relied on the contractual job description and the evidence of the Head of Department.

Judges:

Jacob J

Citations:

[1996] RPC 207

Jurisdiction:

Scotland

Cited by:

Cited – Liffe Administration and Management v Pinkava and Another CA 15-Mar-2007
The employee had patented in the US a trading system he invented whilst employed by the defendant, who now sought ownership. He appealed a finding that the inventions had been made during the normal course of his employment. The employment contract . .
Lists of cited by and citing cases may be incomplete.

Employment, Intellectual Property

Updated: 01 May 2022; Ref: scu.250560

Bamgboye v Reed: 2004

When finding a joint authorship, the court may award less than one half of the interest, in this case 33%.

Citations:

[2004] EMLR 5

Jurisdiction:

England and Wales

Cited by:

Cited – Fisher v Brooker and Another ChD 20-Dec-2006
The claimant said that he had contributed to the copyright in the song ‘A Whiter Shade of Pale’ but had been denied royalties. He had played the organ and particularly the organ solo which had contrbuted significantly to the fame of the record.
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 May 2022; Ref: scu.247518

Linkin Park: TMR 3 Aug 2004

The applicant sought registration of the mark ‘Linkin Park’ under the classifications including posters. The name had been used by a music band, and objection was made, saying it would jeopardise the guarantee of origin associated with the name.
Held: ‘The purchasers, and potential purchasers, of posters etc. purchase particular posters because they represent something to them. In this case the name LINKIN PARK represents the band who produces music to which the purchaser enjoys listening The name LINKIN PARK appearing on posters etc. is the subject matter of the goods which itself is an essential characteristic of such goods.’ The mark applied for consisted exclusively of a sign which may serve in trade to designate the kind and intended purpose of the goods and services and was excluded from registration by Section 3(1)(c) of the Act.

Judges:

Mr Pike

Links:

PO

Statutes:

Trade Marks Act 1994 3(1)(c)

Jurisdiction:

England and Wales

Citing:

Cited – 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 – Office for Harmonisation in the Internal Market (Trade Marks and Designs) v Wm. Wrigley Jr. Company ECJ 23-Oct-2003
In order for OHIM to refuse to register a trade mark under Article 7(1)(c) of Regulation No 40/94, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the . .
Cited – Zapf Creation v OHMI (New Born Baby) ECFI 3-Oct-2001
(Opinion) ‘It is an essential characteristic of many toys, and of all those classed as dolls, that they represent something. The characteristics of a toy motorcycle differ from those of a toy giraffe, and are certain to be perceived immediately by . .
Cited – Arsenal Football Club Plc v Reed CA 21-May-2003
The claimant had obtained a judgment in the European Court on reference from the Chancery Division as to its claim against the defendant. On attempting to have that judgement enforced, the Chancery court found that the European Court had made a . .
Cited – Linde AG, Winward Industries Inc and Rado Uhren AG ECJ 8-Apr-2003
Applications for the registration of three dimensional trade marks had been referred to the court on the question of whether they could be refused for lack of distinctiveness.
Held: The tests for three dimensional marks were no more strict . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 30 April 2022; Ref: scu.200138

Weld-Blundell v Stephens: HL 1920

The plaintiff had been successfully sued for a libel contained in a document which he had supplied to his accountant.
Held: He could not recover the damages he had had to pay to the defamed party from his accountant, who had negligently left the document about so that it came to the former’s attention.
Lord Sumner said: ‘In general, even though A is in fault, he is not responsible for injury to C which B, a stranger to him, deliberately chooses to do. Though A may have given the occasion for B’s mischievous activity, B then becomes a new and independent cause.’

Judges:

Lord Sumner

Citations:

[1920] AC 956

Jurisdiction:

England and Wales

Citing:

Appeal from – Weld-Blundell v Stephens CA 1919
The exception to the obligation not to disclose confidential information is limited to the proposed or contemplated commission of a crime or a civil wrong. . .

Cited by:

Cited – Stansbiev Troman CA 1948
A decorator working alone in a house went out to buy wallpaper and left the front door unlocked. He was held liable for the loss caused by a thief who entered while he was away. For the purpose of attributing liability to the thief (e.g. in a . .
Cited – Empress Car Company (Abertillery) Ltd v National Rivers Authority HL 22-Jan-1998
A diesel tank was in a yard which drained into a river. It was surrounded by a bund to contain spillage, but that protection was over ridden by an extension pipe from the tank to a drum outside the bund. Someone opened a tap on that pipe so that . .
Cited – Les Laboratoires Servier and Another v Apotex Inc and Others SC 29-Oct-2014
Ex turpi causa explained
The parties had disputed the validity a patent and the production of infringing preparations. The english patent had failed and damages were to be awarded, but a Canadian patent remained the defendant now challenged the calculation of damages for . .
Lists of cited by and citing cases may be incomplete.

Negligence

Updated: 29 April 2022; Ref: scu.190105

In re Nossen’s Letter Patent: 1969

Citations:

[1969] 1 WLR 638

Jurisdiction:

England and Wales

Cited by:

Cited – Admiral Management Services Ltd v Para-Protect Europe Ltd and Others ChD 4-Mar-2002
The claimants suspected the defendants of wrongfully using their confidential information. Their staff made an initial investigation. They obtained a search and seizure order; and the material seized was examined by the staff. A Tomlin Order was . .
Applied – Sisu Capital Fund Ltd and others v Tucker and others 28-Oct-2005
The Defendants were accountants who had been sued through their partnership in KPMG. They had been granted a order for their costs. They sought payment for the time they had spent prersonally in preparing their defences.
Held: As professionals . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Costs

Updated: 29 April 2022; Ref: scu.183006

PA Thomas and Co v Mould: QBD 1968

The court urged caution in the grant of an injunction to protect information for which confidence was claimed but where that claim might not succeed. O’Connor J refused to enforce by committal an injunction restraining the defendants from making use of certain confidential information acquired by them during their employment, when the nature of the alleged confidential information had not been specified in the evidence or disclosed to the court.
O’Connor J said: ‘But where parties seek to invoke the power of the court to commit people to prison and deprive them of their liberty, there has got to be quite clear certainty about it.’

Judges:

O’Connor J

Citations:

[1968] 1 All ER 963, [1968] 2 WLR 737, [1968] 2 QB 913

Jurisdiction:

England and Wales

Cited by:

Cited – Attorney-General v Leveller Magazine Ltd HL 1-Feb-1979
The appellants were magazines and journalists who published, after committal proceedings, the name of a witness, a member of the security services, who had been referred to as Colonel B during the hearing. An order had been made for his name not to . .
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 – 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, Contempt of Court

Updated: 29 April 2022; Ref: scu.182810

Harman Pictures N V v Osborne: ChD 1967

The plaintiffs asserted ownership in the copyright in a reproduction in a film of the book ‘The Reason Why’. There had been abortive discussions about the purchase of rights. The defendants intended to proceed with another production. They claimed a marked similarity.
Held: There was a copyright infringement in the screenplay where the similarity in language was slight but the choice of incidents was the same. Goff J discussed the situation which arose where there was an apparent similarity of ideas: ‘It is common ground that there can be an original work entitled to protection although the subject matter is not original, but is for example, as in the present case, some well-known event in history. The precise amount of knowledge, labour, judgment or literary skill or taste which the author of any book or other compilation must bestow upon its composition in order to acquire copyright in it within the meaning of the Copyright Act, 1911, cannot be defined in precise terms: per Lord Atkinson in Macmillan and Co. Ltd. v. Cooper. There is, however, no dispute that Mrs. Woodham-Smith displayed all these qualities in amply sufficient measure and acquired copyright in her book, whilst the plaintiffs’ title to the film rights by assignment is also not disputed. What is much more difficult is whether the plaintiffs have made out a sufficient prima facie case of infringement, or rather intended infringement, and before considering the facts, I must refer at some length to the relevant law.
There is no copyright in ideas or schemes or systems or methods: it is confined to their expression . . .Br />One must, however, be careful not to jump to the conclusion that there has been copying merely because of similarity of stock incidents, or of incidents which are to be found in historical, semi-historical and fictional literature about characters in history, see Poznanski v. London Film Production Ltd. In such cases the plaintiffs, and that includes the plaintiffs in the present case, are in an obvious difficulty because of the existence of common sources, as was emphasised in the case of Pike v. Nicholas . . ‘
The judge asked: ‘… did John Osborne work independently and produce a script which, from the nature of things, has much in common with the book, or did he proceed the other way round and use the book as a basis, taking his selection of incidents and quotations therefrom, albeit omitting a number and making some alternations and additions, by reference to the common sources and by some reference to other sources?’
Goff J: (quoting from authority) ‘… another person may originate another work in the same general form, provided he does so from his own resources and makes the work he so originates a work of his own by his own labour and industry bestowed upon it. In determining whether an injunction should be ordered, the question, where the matter of the plaintiff’s work is not original, is how far an unfair or undue use has been made of the work? If, instead of searching into the common sources and obtaining your subject-matter from thence, you avail yourself of the labour of your predecessor, adopt his arrangements and questions, or adopt them with a colourable variation, it is an illegitimate use’. And
‘In the case of works not original in the proper sense of the term, but composed of, or compiled or prepared from materials which are open to all, the fact that one man has produced such a work does not take away from anyone else the right to produce another work of the same kind, and in doing so to use all the materials open to him. But as the law has been precisely stated by Hall V.C. in Hogg v. Scott, .the true principle in all these cases is that the defendant is not at liberty to use or avail himself of the labour which the plaintiff has been at for the purpose of producing his work, that is, in fact, merely to take away the result of another man’s labour or, in other words, his property.’

Judges:

Goff J

Citations:

[1967] 2 All ER 324, [1967] 1 WLR 723

Jurisdiction:

England and Wales

Cited by:

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 – Navitaire Inc v Easyjet Airline Co and Another ChD 30-Jul-2004
The claimant alleged infringement of its copyright in a software system which dealt with airline reservations. It was not said that any code had been copied, but merely that an express requirement of the defendant ordering the system was that it . .
Cited – Ravenscroft v Herbert ChD 1980
The plaintiff had written a non-fiction book entitled ‘The Spear of Destiny.’ He claimed infringement of copyright by the defendant in his book of fiction called ‘The Spear’. Both books were centered on a spear exhibited in Vienna, said to have been . .
Cited – Baigent and Another v The Random House Group Ltd (The Da Vinci Code) ChD 7-Apr-2006
The claimants alleged infringement of copyright by the defendant publishers and author in the plot and otherwise in the book ‘The Da Vinci Code’. They said that their own work had been copied substantially, using themes and copying language. The . .
Lists of cited by and citing cases may be incomplete.

Litigation Practice, Intellectual Property

Updated: 29 April 2022; Ref: scu.182266

Sleckmann v Deutsches patent-und Markenamt: ECJ 12 Dec 2002

The applicant sought to register a smell as a trade mark. It filed a chemical formula, a description, and a sealed container holding an example of the smell.
Held: A non-visual mark was capable of registration provided it could be represented so as to be precisely defined, so as to allow users of the registry to know what was registered. The formula represented a chemical, not its smell, the description was too uncertain, and the physical sample was neither a graphical representation, nor stable nor durable.

Judges:

Iglesias, Wathelet, Schintgen, Timmermans, Gulmann, Edward, La Pergola, Skouris, Macken, Colneric, Rodrigues JJ

Citations:

Times 27-Dec-2002, Case C-273/00

Statutes:

First Council Directive 89/104/EEC

Jurisdiction:

European

Intellectual Property

Updated: 28 April 2022; Ref: scu.178618

Procter and Gamble Company v Office for the Harmonisation in the Internal Market (Trade Marks and Designs): ECJ 12 Dec 2002

ECJ A case had been referred back to the Office board by the court of first instance. The applicant complained when the same panel members were listed to hear the case again,
Held: The Board of Appeal exercised the same function as the examiner. When it acted, it did so as the administration of the office in exercising those powers, and thus the Board was not properly classified as a tribunal, and therefore no right of fairness to a hearing applied.

Citations:

Times 28-Dec-2002

Jurisdiction:

European

Intellectual Property, Human Rights

Updated: 28 April 2022; Ref: scu.178609

Kabushiki Kaisha Fernandes v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM): ECFI 12 Dec 2002

The applicant sought to annul the decision of the OHIM to grant a mark, claiming it was similar to its own.
Held: Such an applicant bore the burden under the Regulation, if requested, of proving that the earlier trade mark had ‘been put to genuine use’. That meant providing evidence of real use in a substantial part of the territory protected, in an effective and consistent way over time, and as a genuine trade mark use, namely to identify the source of the goods. The applicant had failed to establish such use.

Citations:

Times 28-Dec-2002, Case T-39/01

Statutes:

Council Regulation (EC) No 40/94 of Dec 1993 on the Community Trade Mark

Jurisdiction:

European

Intellectual Property

Updated: 28 April 2022; Ref: scu.178620

Clear Focus Imaging Inc v Contra Vision Limited: ChD 16 Nov 2001

The patentee sought to amend its specification.
Held: The court expressed its concern that the appeal had first been listed as an oral hearing, though quite propelry it had now been dealt with on the papers. The court had to be shown some error by the Comptroller. Evidence had been excluded, but the evidence had been filed late, with no reason being given, and would have amounted to an attack not on the amendment but on the validity of the patent. Appeal dismissed

Judges:

Mr Justice Jacob

Citations:

Unreported, 16 November 2000

Jurisdiction:

England and Wales

Citing:

Cited – Thibierge and Comar Sa v Rexam CFP Limited ChD 9-Nov-2001
An appeal from the Patents Office relating to an exercise of discretion required that it should be shown that there was error of principle. It has to be shown that the decision maker below exercised his discretion under a mistake of law, or in . .
Cited – Great Lakes Carbon’s Patent 1971
Pure amendment (of a patent) proceedings should be short – they are not the place for a roving inquiry into validity. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 28 April 2022; Ref: scu.166812

Thames and Hudson Ltd v Design and Artists Copyright Society Ltd and Others: ChD 10 Aug 1994

The criminal code provisions of the Copyright Designs and Patents Act was not limited in use to plainly criminal conduct, against ‘pirates’.

Citations:

Independent 23-Aug-1994, Times 10-Aug-1994

Statutes:

Copyright Designs and Patents Act 1988 107(1) 110(1)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 28 April 2022; Ref: scu.89786

Satnam Investments Ltd v Dunlop Heywood and Co Ltd and Others: CA 13 Jan 1999

Satnam’s agents (DH) had passed on confidential information to the claimant’s business rival (Morbaine). Armed with this information Morbaine acquired a development site which Satnam had wanted to buy.
Held: The court rejected an argument that Morbaine held the site on constructive trust for Satnam. A company purchasing land on strength of unintended and uninvited disclosure of confidential information from a rival for the land did not, simply because of that, hold the land on trust of whatever nature for the owner of the information. Nourse LJ: ‘Clearly, DH and Mr Murray can be regarded as trustees of the information and, clearly, Morbaine can be regarded as having been a knowing recipient of it. However, even assuming, first, that confidential information can be treated as property for this purpose and, secondly, that but for the disclosure of the information Morbaine would not have acquired the Brewery Street site, we find it impossible, in knowing receipt, to hold that there was a sufficient basis for subjecting the Brewery Street site to the constructive trust for which Satnam contends. The information cannot be traced into the site and there is no other sufficient nexus between the two.’

Judges:

Nourse LJ

Citations:

Times 31-Dec-1998, Gazette 13-Jan-1999, Gazette 10-Feb-1999, [1999] 3 All ER 652

Jurisdiction:

England and Wales

Cited by:

Cited – Crown Dilmun, Dilmun Investments Limited v Nicholas Sutton, Fulham River Projects Limited ChD 23-Jan-2004
There was a contract for the sale of Craven Cottage football stadium, conditional upon the grant of non-onerous planning permissions. It was claimed that the contract had been obtained by the defendant employee in breach of his fiduciary duties to . .
Cited – Ultraframe (UK) Ltd v Fielding and others ChD 27-Jul-2005
The parties had engaged in a bitter 95 day trial in which allegations of forgery, theft, false accounting, blackmail and arson. A company owning patents and other rights had become insolvent, and the real concern was the destination and ownership of . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Equity

Updated: 28 April 2022; Ref: scu.89022

Regina v Comptroller-General of Patents, ex Parte Archibald Kendrick and Sons Ltd: QBD 2 Aug 1994

Date of filing of international patent application is the actual date of the receipt of the application. There was no deeming provision. The rule did not deem an application to have been filed when it would be received in course of post, instead it was filed only when it was actually received.

Citations:

Ind Summary 17-Oct-1994, Times 02-Aug-1994

Statutes:

Patent Co-operation Treaty 1970

Jurisdiction:

England and Wales

Intellectual Property

Updated: 28 April 2022; Ref: scu.86431

Bowden Wire Ltd v Bowden Brake Co Ltd: 1914

Trade Marks

Citations:

(1914) 31 RPC 384 HL(E)

Jurisdiction:

England and Wales

Cited by:

Applied – In Re American Greetings Corporation’s Application HL 26-Jan-1984
The applicant owned an American Trade Mark in the name ‘Holly Hobbie’. They sought to register the same mark here. Objection was made that the applicant intended to license the use of the mark to others, rather than use it itself, and would this be . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 28 April 2022; Ref: scu.180985

Lever v Goodwin: CA 1887

In trade mark and patent cases the plaintiff was entitled, if he succeeded in getting an injunction, to take either of two forms of relief: he might claim from the defendant either the damage he had sustained from the defendant’s wrongful act or the profit made by the defendant from the defendant’s wrongful act.
Chitty J described a class of case where relief was approriate in a passing off case: ‘In the second class of cases which I am considering, the trade is not deceived. I am speaking from my large experience in these matters. The retail buyers know from whom they are buying, and, if there is anything like a fraudulent device, such as I am referring to, they are not taken in, they are not deceived. But what is done by the manufacturer is this – he puts an instrument of fraud into their hands. It has been said more than once in this case, in substance, that the manufacturer ought not to be held liable for the fraud of the ultimate seller, that is, the shop-keeper, or the shop-keeper’s assistant. But that is not the right view of the case. Have the Defendants in this case, or not, knowingly put into the hands of the shopman, who is more or less scrupulous or unscrupulous, the means of deceiving the ultimate purchaser? That is the question which I have to try, and that is a question of fact, and nothing else.’

Judges:

Cotton LJ, Chitty J

Citations:

(1887) 36 Ch D 1, (1887) 4 RPC 492

Jurisdiction:

England and Wales

Citing:

Followed – Edelsten v Edelsten ChD 28-Jan-1863
The plaintiff sought an injunction and damages for infringement by the defendant of his trade mark.
Held: The infringement was innocent. The plaintiff was entitled to an injunction, but for damages only after the defendant had become aware of . .

Cited by:

Cited – HM Attorney General v Blake (Jonathan Cape Ltd third Party intervening) HL 3-Aug-2000
Restitutionary Claim against Pofits from Breach
The author had written his book in breach of his duty of confidence. Having signed the Official Secrets Act, he accepted a contractual private law duty. After conviction as a spy, the publication of the book was in breach of the undertaking by not . .
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, Damages

Updated: 27 April 2022; Ref: scu.180888

The Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH (Approximation Of Laws): ECJ 22 Dec 2008

Trade marks Pharmaceutical products Repackaging Parallel imports Substantial change in appearance of the packaging Obligation of prior notice

Citations:

[2008] EUECJ C-276/05, [2009] ETMR 20, (2009) 107 BMLR 1

Links:

Bailii

Jurisdiction:

European

Citing:

Opinion – The Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH (Approximation Of Laws) ECJ 9-Oct-2008
ECJ Trade marks – Pharmaceutical products – Repackaging – Parallel imports – Change in appearance of the packaging Obligation of prior notice . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 27 April 2022; Ref: scu.622710

Dunlop Pneumatic Tyre Co Ltd v Dunlop Motor Co Ltd: HL 24 Jul 1907

The Dunlop Pneumatic Tyre Company was a company of world-wide reputation whose chief business was the manufacture and sale of ‘Dunlop’ tyres, but which also supplied motor accessories. To these the name ‘Dunlop’ was also usually attached, but had not become appropriated. It sought to restrain from the use of the name ‘Dunlop’ the Dunlop Motor Company, Limited, a small company formed in 1904 by two brothers Dunlop in Kilmarnock, where they had been since 1898 carrying on the business of cycle and motor repairing under their own names, R. and J. F. Dunlop. The objects of this company were the manufacture and sale and repair of motors, and the supply of motor accessories, but from its size the company’s business was restricted to the sale on commission of motors, their repair, and the supply of the accessories. There was no evidence of anyone dealing with it in the belief he was dealing with the Dunlop Pneumatic Tyre Company.
Held that there was not sufficient similarity in the businesses carried on, or sufficient likelihood of confusion in the mind of the public to entitle to the restraint sought.

Judges:

Lord Chancellor (Loreburn), Lord James of Hereford, Lord Robertson, and Lord Collins

Citations:

[1907] UKHL 977

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 27 April 2022; Ref: scu.622302