Intellectual Property

Football Association Premier League Ltd & Ors v QC Leisure & Ors, Ch Div (Kitchin J), 03/2/12

Thu, 05 Apr 2012 18:04:49 GMT

The screening of live television broadcasts in pubs constituted a communication to the public of a copyright work under s.20 CDPA 1988: However the defence in s.72(1)© CDPA 1988 applied: where there was no charge for admission, the showing in public of a broadcast did not infringe any copyright in the broadcast or in any film included in it. The intention of the legislature was clear.

Slater v Wimmer, PCC (Judge Birss QC), 16/02/12

Thu, 05 Apr 2012 18:03:42 GMT

In a dispute over copyright in a film of a skydive over Mount Everest, it was held that W, a financier who organised and paid for the skydive trip and the filming as well as taking part in it, and S, the cameraman, were joint owners of the copyright in the film. It had been W's intention that he would own all the intellectual property rights in the film but on the balance of probabilities he had not made this clear to S at the relevant meeting. In the absence of any express term to the contrary s.10(1A) CDPA 1988 provided that the principal director and the producer were joint authors. S was the director and W was the producer.

Murphy v Media Protection Services Ltd, QBD (Admin) (Stanley Burton LJ, Barling J), 24/2/12

Thu, 05 Apr 2012 18:02:06 GMT

In criminal proceedings involving the screening by a pub landlady of live premier league football matches using a satellite decoding card supplied by a Greek broadcaster, an appeal by way of case stated was allowed and M's convictions under the CDPA 1988 s.297 were quashed. The court applied the preliminary ruling of the CJEU to the effect that the decoder used by M was not an "illicit device" within Directive 98/84 art.2.

Adobe Systems Inc v Netcom Distributors Ltd & Ors, Ch Div (Mann J), 24/2/12

Thu, 05 Apr 2012 18:01:01 GMT

The court had jurisdiction under Regulation 207/2009 art 96(d) to hear a counterclaim for revocation of Community trade marks only if the counterclaim acted as a defence to the infringement claim. The court would not hear a counterclaim which related to Community trade marks other than those subject of the infringement claim. The appropriate forum for revocation claims unrelated to an infringement claim was OHIM.

Novartis Pharmaceuticals UK Ltd v Medimmune Ltd & Anr, Ch Div (Arnold J), 10/2/12

Thu, 05 Apr 2012 17:27:42 GMT

An SPC obtained by M in respect of a patent concerning antibody phage display was invalid. The SPC identified a product, ranibizumab, as a product obtained by a process which infringed the patent. The test laid down by the CJEU required the product to be specified or identified in the wording of the claims, which was a more demanding test than requiring it to be merely within the scope of the claims. There was nothing at all in the claims or in the specification to identify ranibizumab as the product of the process in question and the SPC was accordingly invalid.

Nokia GmbH v IPCom GmbH & Co KG, Ch Div (Floyd J), 20/02/12

Thu, 05 Apr 2012 17:26:55 GMT

IPCom's patent, relating to a method of handing over communications between a mobile phone and a first base station to a second base station, was invalid as granted. The main application to amend was not allowable because the claims as amended would be invalid for lack of novelty and lack of inventive step. A further application to amend was not allowable because it added subject matter. A further application to amend was allowable; however the court ruled that none of the claims as amended were essential to telecommunications standards.

MMI Research Ltd v Cellxion Ltd & Ors, CA (Elias, Kitchin LJJ, Sir Robin Jacob), 23/02/12

Thu, 05 Apr 2012 16:51:38 GMT

Following a patent trial in which C had raised a large number of defences and won on the single issue of obviousness, there was no order for costs. This took into account that C was the overall winner, and that C had taken an unnecessarily large number of points and had lost on most of them.

KCI Licensing Inc & Ors v Smith & Nephew Plc & Ors, Ch Div (Judge Birss QC), 1/3/12

Thu, 05 Apr 2012 16:50:28 GMT

In an enquiry into damages for patent infringement, it was too late for S to raise the issue of the true ownership of the patents. S had admitted in its defence that K was the registered proprietor of the patent. The issue had been raised in skeleton argument at trial but had not been raised when the trial judge ordered relief. At the stage of the enquiry into damages there was no longer any cause of action for patent infringement: it had been replaced by the judgment. An application for summary judgment on this issue was granted.

Temple Island Collections Ltd v New English Teas Ltd & Anr, PCC (Judge Birss QC), 12/1/12

Thu, 08 Mar 2012 23:04:57 GMT

The defendants were found to have infringed T's copyright in a digitally altered photograph of a London bus on Westminster bridge. The composition of a photographic image was capable of being a source of originality. There were obvious similarities between T's work and the image used by N, and the common elements were causally related. It was not right to say that T's work was so general or ordinary that only a facsimile copy could amount to reproduction of a substantial part. On Balance, N's work did reproduce a substantial part, despite some important differences, because of the combination of compositional elements. Similar images from independent sources served only to emphasise that independent expressions of the same idea were visually different.

WHG (International) Ltd & Ors v 32 Red Plc, CA (Toulson, Etherton, Kitchin LJJ), 24/1/12

Thu, 08 Mar 2012 23:02:36 GMT

An appeal was dismissed against a decision that Community trade mark registrations for 32RED for online gaming services were infringed by W's use of "32Vegas" for the same services. The judge had made no error of principle and had been entitled to find that the Community marks were highly distinctive in character and that the number 32 was the dominant feature. The judge had erred in assuming that it was not possible for there to be infringement of a UK trade mark registration for the number 32 in the absence of reputation established by use, and a cross appeal was allowed, finding infringement of the UK mark as well.

Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd, CA (Sir John Thomas, Black, Kitchin LJJ), 21/1/12

Thu, 08 Mar 2012 23:00:55 GMT

An appeal against findings of non-infringement of certain Community trade mark registrations was allowed in part. The judge should have found that the strapline "spec savings at Asda" took unfair advantage of the reputation of S's marks and infringed under art.9(1)©. Further, Asda's logo consisting of non-overlapping white ovals infringed S's logo marks under art9(1)© when used as part of a composite campaign. References were made to the CJEU to answer questions as to whether it was permissible to take into account the reputation enjoyed by S with respect to the green colour which had been used by S for many years, although the trade marks were not registered in any particular colour.

Apimed Medical Honey Ltd v Brightwake Ltd, CA (Toulson, Etherton, Kitchin LJJ), 20/1/12

Thu, 08 Mar 2012 22:58:56 GMT

An appeal was allowed against a decision that a patent, concerning a wound dressing combining honey with a gelling agent, was invalid for obviousness. The judge had misconstrued an article which described the use of an alginate dressing over a gauze dressing. The inventive concept of the claim was in discarding any gauze-type dressing and using a gelling agent instead to create a flexible sheet, and this was not taught or made obvious by the prior art.

MMI Research Ltd v Cellxion Ltd & Ors, CA (Elias, Kitchin LJJ, Sir Robin Jacob), 24/1/12

Thu, 08 Mar 2012 22:57:47 GMT

An appeal was allowed against a decision finding a patent valid and infringed. The patent concerned devices used by the police to discover the mobile phone numbers of suspected criminals. The judge had overlooked a concession made by the patent licensee's expert which led to the conclusion that the patent was obvious in view of a prior published article.

Mitchell v BBC, PCC (Judge Birss QC), 21/12/11

Thu, 09 Feb 2012 20:42:22 GMT

M's claim against the BBC for copyright infringement was dismissed. The claim concerned a set of drawings of a group of characters, the 'Bounce Bunch', which M had sent to the BBC together with a proposal for an animated children's programme. Subsequently the BBC broadcast a programme 'Kerwhizz', whose characters M perceived to be similar to the Bounce Bunch. It was appropriate to consider whether the visual similarities between the characters coupled with a possibility of access were sufficient to shift the burden to the BBC to explain how its characters were derived. However there was no basis on which to doubt the BBC's witness evidence that the characters had not been deliberately copied, and an inference of subconscious copying was not supported because the Bounce Bunch designs were rather generic, not particularly memorable, and unlikely to influence a designer of this kind of artwork.

Hollister Inc & Anr v Medik Ostomy Supplies Ltd, PCC (Judge Birss QC), 20/12/11

Thu, 09 Feb 2012 20:41:24 GMT

Where M, which had a lawful business parallel importing H's medical devices from elsewhere in the EU, had failed to comply with the requirement to give prior notice to H of repackaging goods, M admitted trade mark infringement on that technical ground and H pursued an account of profits. It was held that the financial remedy would be based on M's net profit and not gross profit. A proper proportion of fixed, centrally incurred overhead costs would be deducted from the gross profit. The remedy had further to be adjusted according to considerations of the extent of damage to the trade mark and the principle of proportionality. In the circumstances H was awarded half of M's net profits, which was an effective deterrent from breaching the notice requirements, whilst being proportionate to the reality that the infringement was nothing more than a breach of a procedural requirement.

Sandvik Intellectual Property AB v Kennametal UK Ltd & Anr, Ch Div (Arnold J), 15/12/11

Thu, 09 Feb 2012 20:40:21 GMT

A European patent, concerning a cutting tool having improved wear or toughness properties derived from a coating of alumina, was invalid for insufficiency because the skilled person following the specification and the common general knowledge would not be able to perform the invention without undue burden of experimentation to find a suitable way of depositing alpha-alumina to the requisite thickness. Further, claims 1 to 6 were invalid for lacking inventive step in view of the prior art. Had the patent been valid K would have infringed it.

Victor Ifejika v Charles Ifejika & Lens Care Ltd, PCC (judge Birss QC), 23/11/11

Thu, 05 Jan 2012 20:03:17 GMT

A design registration for a contact lens cleaning device was cancelled because the design did not and had not at the time of registration belonged solely to the registered proprietor. However the claimant's unregistered design rights in certain aspects of the design for a prototype lens cleaning device were valid and had been infringed by the defendants.

Forensic Telecommunications Services Ltd v Chief Constable of West Yorkshire & Anr, Ch Div (Arnold J), 9/11/11

Thu, 05 Jan 2012 20:02:26 GMT

The defendants had infringed the database right which subsisted in a list compiled by the claimant of mobile phone permanent memory absolute (PM abs) addresses, which could be used to recover evidence for criminal investigations. The defendant law enforcement agency and individual police officer had also acted in breach of confidence by posting a substantial part of the database on an internet forum and making copies for their own use. However copyright did not subsist in the PM abs address list because the addresses were not the claimant's own intellectual creations and the list had no structure meriting copyright protection.

Schutz (UK) Ltd v Werit UK Ltd & Anr, CA (Ward, Patten LJJ, Sir Robin Jacob), 22/11/11

Thu, 05 Jan 2012 20:00:48 GMT

The exclusive licensee of a patent which had been held valid and infringed would not be deprived of its costs in a period when, having previously registered its exclusive licence, a further licence was entered into on substantially the same terms without being separately registered. The statutory purpose of the provisions in s.68 of the Patents Act 1977 was to inform the public as to who had control of the patent. The details of the licence did not matter, and so a mere variation of the licence terms did not activate s.68. Schutz was awarded its costs from the time of its first registration as an exclusive licensee. Fresenius Kabi Deutschland GmbH & Ors v Carefusion 303 Inc, CA (Lord Neuberger MR, Aikens, Lewison LJJ), 8/11/11 An 'Earth Closet' provision within an order giving permission to amend pleadings in a patent revocation action should not in principle have been made. The established practice of providing for discontinuance by the patentee in this manner should be abandoned, and the usual rule under the CPR should in future apply, ie: a party wishing to discontinue without the usual costs consequences must apply under CPR r.38.6 and justify a departure from the usual rule. The specimen form of order in the Patents Court Guide should duly be amended. Obiter: Had the Earth Closet Order been valid, the patentee could validly have elected to discontinue before the amended pleadings had been served.

Liversidge v Owen Mumford Ltd & Anr, PCC (Judge Birss QC), 29/11/11

Thu, 05 Jan 2012 19:59:22 GMT

In a claim for infringement of a patent for a medical injector device used in the treatment of various autoimmune diseases, where the main issue at trial was likely to be the question of how the allegedly infringing product worked, it was appropriate to admit the defendants' evidence of experiments which they said showed that their product worked in a non-infringing way. The decisive factor was that the experiments went directly to the central issue, and it was hard to see how that issue could otherwise be resolved. The defendants' costs of conducting the experiments amounted to some £20,000, but the claimant was protected by the costs cap of £2,500. The costs incurred by the claimant in dealing with the evidence were under his control, and those costs were not likely to be disproportionate to the importance of the issue. The admission of the evidence satisfied the cost-benefit test.

Twentieth Century Fox Film Corp & Ors v British Telecommunications Plc, Ch Div (Arnold J), 26/10/11

Thu, 15 Dec 2011 13:39:46 GMT

Following the grant of an injunction, based on Directive 2001/29 art 8(3), requiring BT qua ISP to block access to a website which provided links to pirated films, certain ancillary matters were decided as follows. It was implicit in Recital 59 of the Directive that the costs of implementing the measures required by the injunction should be borne by the intermediary, BT. This should be regarded as one of the costs of carrying on the profitable business of providing internet services. As to the costs of the proceedings, it was reasonable for BT to require a court order, and for BT to require the claimants to adduce sufficient evidence to establish both that the court had jurisdiction to make the order and that it was appropriate to do so. Accordingly, the claimants bore the costs of the proceedings up to the date when BT received the claim form. After that time, during which BT took all measures available to oppose the application, the costs would be borne by BT.

Pro-Tec Covers Ltd v Specialised Covers Ltd & Ors, PCC (Richard Meade QC), 18/10/11

Thu, 15 Dec 2011 13:38:37 GMT

The claimant's unregistered design rights in a number of designs for caravan towing covers had not been infringed by its competitors because on the evidence it was not likely that the defendants had, as alleged, followed a concerted campaign of copying and of lying to cover up that copying. The similarities between the products were attributable to the defendants having conceived the design ideas independently and then followed broadly the same design logic as the claimant. Some of the features of the designs would in any event have been excluded from protection by the 'must fit' and 'method of construction' exclusions.

Dyson Ltd v Vax Ltd, CA(Jackson, Black LJJ, Sir Robin Jacob), 27/10/11

Thu, 15 Dec 2011 13:37:54 GMT

An appeal was dismissed against a decision that Dyson's registered design for a vacuum cleaner was not infringed by Vax's product. The judge had not made a relevant error of principle, and had allowed that Dyson's design was entitled to a broad scope of protection because of the differences between it and the pre-existing design corpus, and the high degree of design freedom. On the basis of a number of substantial differences between the designs, the judge had been entitled to conclude that Vax's design produced on the informed user a different overall impression. The court noted the importance of the provision of proper reproductions of photographs of the designs in suit, and further noted that the precise ambit of any expert evidence must be carefully defined.

Nokia OYJ v IPCOM GmbH & Co , Ch Div (Floyd J), 26/10/11

Thu, 15 Dec 2011 13:37:14 GMT

Following a decision that N had infringed I's patent, N claimed that certain relief was precluded by s.63(2) of the Patents Act 1977. The court found that, since that section was amended in 2006, the burden of proof no longer lay on the patentee to establish that the patent specification had been framed with good faith and reasonable skill and knowledge. S.63(2) was not intended as a sanction against careless drafting or bad faith when those matters had no bearing on the remedy sought.

Human Genome Sciences Inc v Eli Lilly & Co, SC (Lords Hope, Walker, Neuberger, Clarke and Collins), 2/11/11

Thu, 15 Dec 2011 13:35:55 GMT

An appeal was allowed against a decision that a European patent concerning a human protein called Neutrokine-alpha was invalid for failure to satisfy the requirement of industrial applicability in art. 57 EPC. The patent disclosed the existence of the protein, its structure, its encoding DNA and its likely membership of the TNF ligand superfamily, probable properties and possible therapeutic uses. Following the High Court's decision that the industrial applicability was too speculative, the EPO had later upheld the patent. The Supreme Court noted that although the reasoning in any particular decision of the Technical Board of Appeal of the EPO was not binding on national courts, it was important that national law was aligned so far as possible with the jurisprudence of the EPO, and where the Board had adopted a consistent approach to an issue in a line of decisions, a national court should be very hesitant to depart from that approach. After setting out the principles laid down by the Board, the Supreme Court held that the patent should have been found to satisfy art.57.

Ate My Heart Inc v Mind Candy Ltd & Anr, Ch Div (Vos J), 10/10/11

Thu, 17 Nov 2011 11:55:08 GMT

An application was granted to the company entitled to exploit the rights of the artist Lady Gaga (including the trade mark LADY GAGA) for an interim injunction restricting the use which could be made by the respondent of an animated parody character, Lady Goo Goo, and its parody song. The court found that some consumers might believe that the parody was connected to or approved by the artist. The balance of convenience, having regard to the status quo and the merits of each case, lay in favour of allowing the use of the parody character and song in a children's computer game, but preventing its promotion on YouTube and its sale online via iTunes.

Plentyoffish Media Inc v Plenty More LLP, Ch Div (Judge Birss QC), 11/10/11

Thu, 17 Nov 2011 11:53:53 GMT

The appellant foreign online dating service was unsuccessful in arguing that it had goodwill in the UK in its unregistered trading name PLENTYOFFISH. Accordingly it could not prevent the respondent dating agency from trading under the name PLENTYMOREFISH. A reputation in the UK was not sufficient: actual customers were required. UK visitors to the website could not be regarded as customers in the relevant sense because there was no evidence that such visitors could become members.

Generics (UK) Ltd v Novartis AG, Ch Div (Floyd J), 30/9/11

Thu, 17 Nov 2011 11:53:07 GMT

A declaration of invalidity was granted in respect of a patent and its SPC for a drug for the treatment of the symptoms of Alzheimer's disease. A relevantly skilled pharmaceutical development team would have found it obvious, in the light of a prior publication, to try resolving and testing a known racemic mixture to see if there were advantages and disadvantages associated with each enantiomer. This would have been a routine step and the chemistry involved was trivial.

Re Halliburton Energy Services Inc, Ch Div (Judge Birss QC), 5/10/11

Thu, 17 Nov 2011 11:52:22 GMT

An appeal was allowed against the rejection of four patent applications concerned with improving the design of roller cone drill bits. The claimed invention involved computer simulation of the interaction of the drill bit, which reduced the need for field testing. The hearing officer had construed the mental act exclusion under the Patents Act 1977 s.1(2) too widely. It was intended only to ensure that a patent could not be infringed by purely mental means. The approach to the mental act exclusion in para 8 of the Comptroller's Practice Note was wrong in law and should not be followed.

A S Watson (Health and Beauty Continental Europe) BV & Ors v Boots Co Plc & Ors, PCC (Judge Birss QC), 8/9/11

Thu, 27 Oct 2011 21:18:39 GMT

Boots' application to transfer trade mark infringement proceedings from the Patents County Court to the High Court was granted. The claimants were a group of companies one of which ran Superdrug in the UK. The Community trade mark in suit SOLAIT was used for sun screen and related products at substantial levels in several European countries, and B's SOLEI product was on the market in a number of different European countries. Factors pointing in favour of transfer included the substantial size of the enterprises on both sides, the substantial value of the claim, and the factual complications arising because the position in 14 countries was at stake, which would lead to a trial of substantially more than two days.

Ranbaxy (UK) Ltd v Astrazeneca AB, Ch Div (Kitchin J), 15/7/11

Thu, 27 Oct 2011 21:17:00 GMT

R obtained a declaration of non-infringement of A's European patent relating to a drug used to treat gastric acid-related disease. Claim 1 of the patent was in Swiss form and was directed to the use of magnesium esomeprazole with an optical purity of greater than 99.8% for the manufacture of a medicament for the inhibition of gastric acid secretion. The manufacture of R's product began with the compound at the specified level of optical purity but the finished product no longer contained esomeprazole of that purity. In context the skilled person would understand claim 1 to be directed to the use of the compound to manufacture a medicament which contained that pure active ingredient. It was inherent in the reasoning of all the jurisprudence in relation to Swiss form claims that the skilled person would generally understand that type of claim to mean the medicament must contain the active ingredient for which the new use had been found.

Warner-Lambert Co LLC v Teva UK Ltd & Ors, Ch Div (Floyd J), 22/7/11

Thu, 27 Oct 2011 21:14:53 GMT

In proceedings for infringement of a patent relating to the drug atorvastatin, where an interim injunction had been granted preventing further sales by T of a generic form, T's application for an expedited trial was granted as a matter of discretion, because the interim injunction would cause a potentially huge loss to T if the patent were ultimately revoked.

Schutz (UK) Ltd & Anr v Delta Containers Ltd & Anr, Ch Div (Briggs J), 5/7/11

Thu, 27 Oct 2011 20:20:00 GMT

Schutz obtained judgment for trade mark infringement and passing off in respect of the sale by Delta of re-modelled intermediate bulk containers (IBCs). IBCs were used for the transport and storage of liquids in large quantities and consisted of a removable bottle within a metal cage. Delta's business involved the replacement of bottles in used IBCs, which included placing bottles made by other manufacturers into Schutz's used cages on which Schutz's trade mark was displayed. Delta affixed its own label and after 2008 also attached notices disclaiming any relation to Schutz. However these disclaimers were insufficient and it was apparent that the typical end - user of a rebottled IBC in a Schutz cage would be likely to perceive that Schutz's trade mark was being used in relation to the IBC as a whole. There was a real risk that cross-bottled IBCs might occasionally fail and that end-users might attribute shortcomings to defects in design or manufacture by Schutz.

Allen (Trustee of Adrian Jacobs, deceased) v Bloomsbury Publishing Plc and Joanne Murray, CA (Rix, Lloyd, Sullivan LJJ), 14/7/11

Thu, 15 Sep 2011 18:56:53 GMT

An appeal was dismissed against an order that the claimant pay security for costs in respect of his claim for copyright infringement by the defendant publisher and author's book "Harry Potter and the Goblet of Fire". The judge had exercised his discretion properly in ordering 65% of the defendants' costs estimate to be paid in three tranches, in default of which the action to be struck out. The order was entirely justified given the claim's poor prospects of success, and given the claimant's nominal status, lack of disclosed assets and lack of good faith. The action fell to be struck out.

Newspaper Licensing Agency Ltd & Ors v Meltwater Holding BV & Ors, CA (Sir Andrew Morritt, Jackson, Elias LJJ), 27/7/11

Thu, 15 Sep 2011 18:55:37 GMT

This case concerned the licensing requirements for a media monitoring service provided by M to customers of a PR agency, which tracked the content of newspaper websites, enabling the end user to access the headline, opening text and an extract from articles matching their search terms. N, which managed the IP rights of various newspapers, introduced a requirement that PR consultants and end-users of the media monitoring service purchase end-user licences. The Court of Appeal upheld a decision confirming this requirement. The article headlines were capable of being independent literary works. The article extracts were capable of being a substantial part of the literary work consisting of the article as a whole. The copies made by the end user's computer infringed copyright and were not permitted by s.28A or s30 of the CDPA 1988. There was no double licensing because the copies made by the end user were not authorised by the media monitoring service provider's web database licence.

Twentieth Century Fox Film Corp & Ors v British Telecommunications Plc, Ch Div (Arnold J) 28/7/11

Thu, 15 Sep 2011 18:54:36 GMT

The claimant owners of copyright in films succeeded in obtaining an injunction requiring BT to prevent its subscribers from accessing a subscription website called Newzbin2, which provided links to pirated films. It was not essential to prove that the defendant had actual knowledge of a specific infringement of a specific copyright work by a specific individual. A service provider could be given actual knowledge of infringement by receipt of a sufficiently detailed notice and a reasonable opportunity to investigate the position. The order did not require BT to engage in active monitoring but simply to block access to the website by automated means. Those means were provided by BT's existing Cleanfeed blocking system. Although the order would prevent BT's subscribers from using the Newzbin2 website for non-infringing uses, the incidence of such uses was de minimis.

LucasFilm Ltd & Ors v Ainsworth & Anr, SC (Lord Phillips, Lord Walker, Lady Hale, Lord Mance, Lord Collins), 27/7/11

Thu, 15 Sep 2011 18:53:39 GMT

In a case concerning copyright in the "Stormtrooper" helmets and armour created in the UK for the Star Wars films, Lucasfilm's appeals were rejected by the Supreme Court, save that it was held that copyright claims under US law were justiciable in England. The Court of Appeal had been right to find that the helmets were not 'sculpture' within s.4 of the CDPA 1988. It was the film that was the work of art, and the helmets were a utilitarian element of the production process. This was the kind of conclusion with which appellate courts should be slow to interfere. The rule in British South Africa Co v Companhia de Mocambique (1893) AC 602 HL had been eroded and all that was left was that there was no jurisdiction in proceedings for infringements of rights in foreign land where proceedings principally concerned title or possession of the property. It was difficult to see how that rationale applied to copyright, which was unregistered.

Schutz (UK) Ltd v Werit UK Ltd & Anr, CA (Ward, Patten LJJ, Sir Robin Jacob), 29/7/11

Thu, 15 Sep 2011 18:52:08 GMT

Where W had been found to have infringed a patent in respect of which S was the exclusive licensee, the day before the final handing down of judgment W informed S that a point would be taken under s.68 of the Patents Act 1977 because S had not registered the licence at the Patent Office until a few weeks before it commenced the infringement action. The court found that s.68 was framed as a mandatory instruction to the court and accordingly it was not relevant to consider whether it was too late for W to raise the point. S was entitled to damages for the whole period, and to its costs incurred in the period after it had registered the licence, but not before.

Temple Island Collection Ltd v New English Teas Ltd & Anr, PCC (Judge Birss QC), 22/6/11

Thu, 04 Aug 2011 13:52:45 GMT

In a copyright infringement action based on an artistic work consisting of a photograph taken in 2009 of a red Routemaster bus against a greyscale image of Westminster bridge, an application to amend the Particulars of Claim was refused. The claimant wished to add to the claim a later artistic work, in which the position of the bus was closer to that in the allegedly infringing image. The court found that the amendment did not satisfy the cost/benefit test because it would transform a very simple case into something substantially more complex, and it was not likely to make a difference between success and failure for the claimant. The general approach to amendments of statements of case in the PCC was the same as in the High Court, but the exercise of discretion would be conditioned by the need for a more streamlined procedure.

United Airlines Inc v United Airways Limited & Anr, Ch Div (Vos J), 24/6/11

Thu, 04 Aug 2011 13:51:51 GMT

In an action for trade mark infringement and passing off based on the trade marks UNITED and UNITED AIRLINES, the claimant succeeded on all grounds in an application for summary judgment, and obtained a permanent injunction against the use of its marks. The differences between the registered marks and the defendants’ sign UNITED AIRWAYS LTD were so insignificant they would go unnoticed by the average consumer. The services were identical and it did not matter that the parties flew different routes. Therefore the claimant was bound to succeed under s.10(1) of the Trade Marks Act 1994. There was also no real prospect of defending the claims under s.10(2) and s.10(3) and the passing off action.

Medimmune Ltd v Novartis Pharmaceuticals UK Ltd & Anr, Ch Div (Arnold J), 5/7/11

Thu, 04 Aug 2011 12:45:00 GMT

In an action for infringement of M’s European patents relating to a method of antibody phage display (a biotechnological technique), it was held: (i) the claims were not entitled to priority from an earlier application because that application did not clearly and unambiguously disclose the inventions claimed; (ii) the patents were invalid for obviousness in light of a talk given at a US conference; (iii) N’s product was not produced by a process which fell within the method claims of the patent and would not have infringed had the patents been valid. In addition the judge made comments on the instruction of expert witnesses.

Albert Packaging Ltd & Ors v Nampak Cartons & Healthcare Ltd, [2011] EWHC 1411 (TCC), 2 June 2011

Fri, 01 Jul 2011 11:11:39 GMT

The designers of a carton for tortilla wraps were entitled to unregistered design right in the shape of the carton in its assembled form. The defendant's design had not been produced independently, since the claimants' carton had been provided to it and had been a design source. However, the defendant did not infringe, because looked at as a whole the defendant's carton was not made substantially to the claimants' design.

Best Buy Co Inc & Anr v Worldwide Sales Corp Espana SL, [2011] EWCA Civ 618, 24 May 2011

Fri, 01 Jul 2011 10:40:56 GMT

An appeal was allowed against a finding that a letter from Spanish lawyers which impliedly threatened infringement proceedings within s.21(1) of the Trade Marks Act 1994 was privileged from use in court because it was part of a negotiating process. Rather than making any sort of concession or admission, the letter merely underlined the defendant's belief in its case and determination to pursue it, and it was unrealistic to treat the demands as a settlement proposal.

Group Lotus Plc & Anr v 1Malaysia Racing Team SDN BHD & Ors, [2011] EWHC 1366 (Ch), 27 May 2011

Fri, 01 Jul 2011 10:35:09 GMT

Although the defendants' trade marks for logos used on Formula 1 racing cars fell to be cancelled for five years' non-use under s.46 of the Trade Marks Act 1994, the goodwill in the words “Team Lotus” and the Lotus roundel was retained and afforded the defendants the right to re-register the marks, providing a statutory defence to an infringement claim.

Omega SA v Omega Engineering Inc, CA, 27 May 2011

Fri, 01 Jul 2011 10:30:35 GMT

The parties, who used the same trade mark, OMEGA, for watches and for scientific instruments respectively, had entered into a co-existence agreement whereby SA agreed not to object to the use or registration by Engineering of trade marks for goods defined as “instruments and apparatus intended for scientific or industrial application in measuring … or recording heat or temperature (including such having provision to … display the time of day)”. That definition did not limit the goods to those within Class 9, and in proceedings for breach of the co-existence agreement, the judge had been right to award summary judgment in favour of Engineering where SA had objected to a trade mark application for goods in Classes 9 and 14.

Musion Systems Ltd v Activ8-3D Ltd & Ors [2011] EWPCC 12, 18 May 2011

Fri, 01 Jul 2011 10:21:18 GMT

In an action for infringement of a patent concerning projection apparatus and method for a 3D illusion, the court determined, as a preliminary issue, the extent to which certain defendants had personally committed acts alleged to be infringements.

Vestergaard Frandsen SA ( MVf3 APS) & Ors v Bestnet Europe Ltd & Ors [2011] EWCA Civ 424 20/04/2011

Thu, 09 Jun 2011 15:59:37 GMT

An appeal, against an injunction restraining Bestnet and others from selling a mosquito net they had developed using a former employer’s confidential information, was dismissed. The use of the confidential database had provided a short cut and it did not matter that the formulation could have been reached by independent research. The appeal of one of the former employees was allowed as she had no knowledge of the misuse of confidential information. There was no scope for implying strict liability into a confidentiality agreement in a contract of employment. Vestergaard’s appeal against the refusal to extend the injunction to later versions of the product was dismissed. By the time the later versions of the product were released, the ‘head start’ provided by the breach of confidence had much less significance and the judge had been right to consider proportionality.

Virgin Enterprises Ltd v Casey [2011] EWHC 1036 (Ch) 20/04/2011

Thu, 09 Jun 2011 15:45:24 GMT

An appeal was dismissed against the rejection of Virgin’s opposition to the registration of the word mark CARBON VIRGIN for goods and services in class 35. The word ‘virgin’ had a subtly different meaning in each mark, resulting in different concepts being created in the mind of the average consumer looking at each of the marks as a whole. The hearing officer had made no error of principle

Westwood v Knight [2011] EWPCC 11 11/05/2011

Thu, 09 Jun 2011 15:44:23 GMT

Following the determination of the first action heard under the new rules of procedure of the Patents County Court, the judge set out the correct approach to the assessment of costs.

H Lundbeck AS v Norpharma SPA & Ors [2011] EWHC 907 (Pat) 14/04/2011

Thu, 09 Jun 2011 15:43:31 GMT

A European patent concerning a method of making a compound (5-cbx), used in the manufacture of the antidepressant drug citalopram, was invalid for obviousness. If the patent had been valid it would have been infringed, although the remedies in costs and damages would have been reduced under s.68 of the Patents Act 1977 because of the delayed registration of the patent’s assignment.

William Forbes v. Strathclyde Partnership for Transport and another [2011] CSOH 47

Mon, 30 May 2011 21:17:02 GMT

The pursuer, who claimed to be the author of some 26 collections of documents used by the defenders in relation to a proposal for a fixed heavy rail link between Glasgow City Centre and Glasgow International Airport, sued for infringement of copyright. The pursuer claimed that his own proposal and supporting documents had been copied. He claimed that the defenders had made copies of the works or a substantial part thereof, by issuing copies of the works, by showing the works in public, by broadcasting the works on their website and by making adaptations of the works, and had accordingly profited as a result. In response, the defenders tabled pleas in law to the relevancy of the pursuer’s averments and also challenged the pursuer’s title to sue.

Having heard submissions, the court concluded on that on the issue of title to sue, the pursuer should be given an opportunity to prove that the works were indeed his, and would have allowed a proof before answer on that point. On the second matter however, in relation to relevancy, the court found that there was no proper specification of documents, the alleged copying process and the link to infringement of copyright made out by the pursuer in his pleadings. Noting that there could be no simple copying of an idea, the court found that although the proposals of the pursuer and defender were similar in relation to the position of the station and the route, mere similarity was insufficient to give rise to any inference of copying. Finding that the whole case was premised on the notion that the defenders had stolen the pursuer’s idea, and not any copyright, the court ruled that the action was fundamentally irrelevant. Action dismissed.

Galileo International Technology, LLC v European Union [2011] EWHC 35 (Ch) 20/01/2011

Thu, 24 Feb 2011 23:59:01 GMT

An appeal against the revocation and partial revocation of Community trade mark registrations for the mark GALILEO, in respect of computer hardware and software, for lack of genuine use, was largely dismissed. There was no basis for suggesting that the hearing officer had wrongly applied a quantitative threshold for the use of the marks. The burden of proving use was on the proprietor, and it was right that the mark would be revoked in respect of goods for which use was not shown.

32Red Plc (A Gibraltar Company) v WHG (International) Ltd & Ors [2011] EWHC 62 (Ch) 21/01/2011

Thu, 24 Feb 2011 23:58:24 GMT

The claimant’s Community trade marks for online casino services based on the name 32RED were valid and infringed by the defendant’s use of 32VEGAS for an online casino. There was a likelihood of confusion under Art 9(1)(b), and there was also detriment to the distinctive character and repute of the marks under Art 9(1)(c). The claimant’s later UK registration for “32” was also valid and had not been made in bad faith even though the registration had been made with a view to strengthening the claimant’s position in the instant litigation.

Elvis Presley Enterprises v Carollo, Ch Div (Sir William Blackburne), 2/2/11

Thu, 24 Feb 2011 23:57:38 GMT

Summary judgment was granted on a claim for trade mark infringement, passing off and breach of contract against a licensee of Elvis Presley trade marks and other rights in relation to various products, who had failed to obtain a licence to release an album of music.

Nokia GmbH v IPCOM GmbH & Co KG [2011] EWCA Civ 6 20/01/2011

Thu, 24 Feb 2011 23:56:51 GMT

An appeal was dismissed against a decision that IPCom’s European patents relating to mobile phone technology were invalid for obviousness. The judge had been right to refuse applications to amend one of the patents shortly before trial and after the trial. There was no real justification for failing to advance the case much earlier. The patentee had made the first application for amendment too late for it to be dealt with fairly at the trial. It elected to proceed with the trial on the patent as it stood, and only when it lost did it seek to vex Nokia again with the same patent. This amounted to an abuse of process.

ink Floyd Music Ltd & Anor v EMI Records Ltd [2010] EWCA Civ 1429, 14/12/2010

Thu, 03 Feb 2011 23:45:45 GMT

An appeal was dismissed against the grant of summary judgment on a claim by Pink Floyd against EMI for under-accounting of royalty payments. EMI was obliged to account for income received by internet music providers, and EMI was not entitled to exploit albums by online distribution without prior written consent of Pink Floyd. It was wrong in principle that the appeal had been listed to be heard in private, because of the commercial sensitivity of the royalty percentage. A private hearing in the CA would be granted only to the extent that a member of the Court was satisfied it was necessary for the proper administration of justice.

Cowshed Products Ltd v Island Origins Ltd & Ors [2010] EWHC 3357 (Ch), 17/12/2010

Thu, 03 Feb 2011 23:44:56 GMT

In an action for trade mark infringement and passing off based on the Cowshed brand for beauty products and a series of subsidiary brands, an interim injunction to restrain the use of the brand “Jersey Cow” was refused. The case raised triable issues on both sides, and the balance of convenience fell in favour of the defendants. The claimant would not suffer serious irreparable harm if the defendants continued trading pending trial, but the defendants would be likely to be put out of business by an interim injunction, and damages could not compensate adequately for that. The defendants made undertakings, pending a speedy trial, not to offer their products at a discounted rate and to pay a percentage of profits on the products complained of into an escrow account.

Pfizer Health AB & Anor v Schwarz Pharma AG & Ors [2010] EWHC 3236 (Pat), 08/12/2010

Thu, 03 Feb 2011 23:43:49 GMT

A third party firm of solicitors was granted permission to obtain copies of documents from the court file in a discontinued patent action, where the solicitors represented a company who wished to determine its freedom to act in the technical area of the patents which had been in suit. There was no unfettered right to documents on the court file, but the court should lean in favour of disclosure where there was a legitimate interest in obtaining the documents. Such a legitimate reason was provided where the party was commercially active in a field to which a patent related. It was not however appropriate to obtain from the court file documents available from public sources such as the UKIPO.

Nokia OYJ v IPCOM GmbH & CO KG, Ch Div (Arnold J), 13/12/10

Thu, 03 Feb 2011 23:42:51 GMT

In litigation relating to European Patents concerning mobile phone technology, both parties had complied with orders to provide fuller statements of case. However, further directions were given for each party to present a fuller case, and to exchange the new statements of case rather than serve them sequentially.

EFH Technologies Limited and Xyrex Limited v. (1) Rytium Technology FZC trading as TRB Rytium and (2) T.R. Bonnyman, Son & Company Ltd [2010] CSOH 143

Sun, 02 Jan 2011 14:58:45 GMT

The pursuers sought interim interdict and damages against the defenders, seeking the defenders to cease manufacturing, distributing or selling a product known as "NaturAD Shrimp Treat". The pursuers manufactured and sold a product called "Prawnfresh" to fishermen in Scotland and elsewhere. Both products stopped the process of melanosis, which results in caught prawns and other crustaceans become blackened and unsightly.

The pursuers contended that the defenders’ Shrimp Treat was a copy of their product and relied on a comparison report of the products to this effect. The pursuers submitted that the Prawnfresh product utilized a unique soluble 4-HR, which was not available until around 2006 and that the process which rendered it soluble had been developed by the pursuers, whilst a shareholder of the defenders was an employee of their organization. They contended that the process was a trade secret and that the former employee in question was bound by an implied term of confidentiality not to disclose that secret or to make use of this information for his own benefit. It was contended that this obligation had been breached, as Shrimp Treat now employed soluble 4-HR also.

On the contrary, the defenders submitted that their shareholder had discovered the process through which 4-HR could be solubilised, that he did so long before he became an employee of the pursuers and that the know how which he deployed to develop the process was based on information which was already in the public domain. Counsel for the defenders also submitted that the pursuers had been aware of the defenders' product since late in 2008 and until recently had taken no action against them. It was submitted that there was no good reason for this lapse of time and that this factor alone demonstrated that the balance of convenience lay with the defenders.

Having heard submissions and considered the terms of the comparison report, the Lord Ordinary concluded that the defenders’ contention that they had invented the process was unlikely to be established and that the pursuers had set out a good prima facie case, showing that the defenders' product was a copy of the one developed and marketed by them. Moreover, the Lord Ordinary considered that the balance of convenience lay in favour of the pursuers, noting that their delay in raising the action was due to the time spent obtaining a comparison report before raising the action, and furthermore, the defenders’ company had been incorporated in the The Hamriyah Free Zone, Sharjah, in the United Arab Emirates, making it extremely difficult to enforce any award of damages made against them at a later date. Interim interdict granted.

Bayer Cropscience KK v. (1) Charles River Laboratories Preclinical Services Edinburgh Limited and (2) Albaugh Inc. [2010] CSOH 158

Thu, 02 Dec 2010 23:55:05 GMT

The pursuer, a company incorporated under the laws of Japan, was a developer of pesticides and insecticides. It was the proprietor of European Patent (UK) EP 0 192 061 B1, registered in the UK. It related to insecticidal agents containing new heterocyclic compounds, and in particular a compound with the generic name "imidacloprid”. The patent expired on 31 March 2006. A similar US patent expired on 21 January 2006.

The second defender was a competitor of the pursuer. In March 2005 it sought to register with the Environmental Protection Agency (EPA) in the USA an insecticide containing the patented product as its active ingredient, such registration being necessary before the second defender could place the insecticide on the market. The EPA required chemistry test data in relation to the active ingredient. Accordingly the second defender instructed the first defender to carry out the tests and produce the necessary information.

The pursuer did not supply the product to either defender. It never sold the product on its own, only once incorporated into an end product. The second defender instigated the importation of the active ingredient from China to the UK so that the first defender could carry out the tests. The second defender admitted that all of this occurred before the expiry of the patent. It was not disputed that, in respect of this importation and testing of the product, the second defender infringed the pursuer's patent.

Against this background the pursuer asked the court to order an account of the profits made by the second defender from its infringement of the patent. First, the pursuer sought all the profits made during 2006 on the basis that, but for the infringement, the second defender could not have put the products on the market until December 2006, thus all of the profits in that year are attributable to the infringement. Secondly, as a direct result of its early entry into the marketplace in 2006, it was submitted that the second defender achieved enhanced levels of sales in 2007 and 2008 - its infringement allowed it to compete against the pursuer significantly in advance of other suppliers. The pursuer submitted that the advantage gained would have dissipated by 2009.

The defender submitted that the court had no power to grant an account of profit in the circumstances. Section 61(1)(d) of the Patents Act 1977 allows the court to order an account of the profits "derived by (the infringer) from the infringement." However such profits as the second defender made were derived from lawful transactions, namely the post-expiry sales, not from the infringing acts.

The court was not attracted to the second defender’s submission. Whilst the court acknowledged that the sales themselves did not infringe the pursuer’s patent, if one were to look at all the circumstances in the round, it was clear that some of the profits were derived from the wrongful act of infringement. After examining the extensive case law cited by the parties, the court concluded that all authorities cited either supported or did not undermine the submissions of the pursuer. The court therefore rejected the second defender’s submission that the claim for account of profits by the pursuer was irrelevant before the court. Proof before answer on averments and pleas in law allowed.

Crosstown Music Company 1 LLC v Rive Droite Music Ltd & Ors [2010] EWCA Civ 1222 02/11/2010

Thu, 25 Nov 2010 15:54:13 GMT

The Court of Appeal upheld a decision dismissing C’s claim for a declaration that it retained copyright in songs which it had acquired from R. The songwriters had assigned to R the copyright for 25 years, after which the rights would revert to the writers. It was also provided that the assigned rights would revert in the event of an unremedied material breach of the agreement. The judge had been right to find that the automatic reverter clause was a valid partial assignment under s.90(2) CDPA, and that the rights had accordingly reverted on the dates the notices of breach expired.

Och-Ziff Management Europe Ltd & Anor v Och Capital LLP & Anor [2010] EWHC 2599 (Ch) 20/10/2010

Thu, 25 Nov 2010 15:53:26 GMT

The defendants had infringed the claimants’ Community trade marks OCH-ZIFF and OCH, registered for financial and investment services. Further, the defendants’ use of signs featuring the letters “OCH”, for an independent investment house, amounted to passing off. There was a manifest likelihood of confusion by a financial services consumer because of the strong distinctiveness of the shared element OCH, the descriptiveness of the defendants’ additional element “Capital”, and the identity of the services. The weight of authority supported the conclusion that ‘initial interest confusion’ was actionable under art (9)(b) even if it was likely that any confusion would be dispelled by the time any potential client of the defendants entered into a contract.

Tate & Lyle Technology Ltd v Roquette Freres [2010] EWCA Civ 1049 11/10/2010

Thu, 25 Nov 2010 15:52:34 GMT

The Court of Appeal upheld a decision that a European patent concerning the crystallisation of a sugar substitute, malitol, should be revoked because it was anticipated by the prior art and it amounted to a discovery and not an invention.

Grimme Maschinenfabrik GmbH & Co KG v Scott (t/a Scotts Potato Machinery) [2010] EWCA Civ 1110 15/10/2010

Thu, 25 Nov 2010 15:51:34 GMT

The Court of Appeal reversed a finding that a patent for a potato separating machine was invalid for obviousness. The judge had read claim 1 too widely. The judge had been right however to find that the defendant’s supply of machines was a contributory infringement contrary to s.60(2) of the Patents Act 1977. The Court observed that where a point of patent law of general importance had been decided by a higher court of another Member State, that decision might be of strong persuasive value in the other Member States, particularly where the judgment contained clear reasoning on the point.

BBC v (1) HarperCollins Publishers Ltd (2) Ben Collins & Anr, [2010] EWHC 2424 (Ch), 4/10/10

Thu, 21 Oct 2010 19:31:22 GMT

Confidential Information

Novartis AG & Anr v Johnson & Johnson Medical Ltd & Anr, CA (Ward, Jacob, Patten LJJ), 29/9/10

Thu, 21 Oct 2010 19:29:46 GMT

An appeal was dismissed against a decision that a patent concerning extended wear contact lenses was invalid for insufficiency. The heart of the test for sufficiency was whether the skilled person could readily perform the invention over the whole area claimed without undue effort by experimentation and without requiring invention. The patent’s avaricious ambit and failure to provide any useful teaching made it a hazard to those conducting research in this area and the judge had been right to revoke it in its entirety.

Experience Hendrix LLC & Anr v Times Newspapers Ltd, [2010] EWHC 1986 (Ch), 30/7/10

Thu, 23 Sep 2010 16:31:18 GMT

The defendant had infringed the claimant’s rights in the performance and recordings of a London concert in 1969, by issuing a free ‘covermount’ CD to newspaper purchasers, at a time when the claimants had been planning to launch a film of the concert. In an inquiry as to damages, it was impossible to guess the level of box office takings and associated sales in respect of the claimants’ film, which had yet to be completed. However it had been shown that the unlicensed distribution had caused a year’s delay to the film project, and damages were awarded to compensate the delayed receipt of money under a distribution agreement.

Ruark Distribution Ltd v Marpea SL, Ch Div (N Strauss QC), 29/7/10

Thu, 23 Sep 2010 16:30:32 GMT

The court refused to interfere with the decision of the hearing officer in upholding opposition to the registration of VITA AUDIO for electrical goods in class 9, based on the likelihood of confusion with an earlier registration for VIETA in stylised form for identical goods. The court would not necessarily have reached the same conclusion as the hearing officer, but there had been no material error of principle

Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd, [2010] EWHC 2035 (Ch), 30/7/10

Thu, 23 Sep 2010 16:06:49 GMT

Specsavers was largely unsuccessful in proceedings against Asda for trade mark infringement and passing off. Asda had launched a marketing campaign for its in-store opticians, and intended to ‘live dangerously’ by positioning itself as a competitor to Specsavers. The case under art.9(1)(b) failed because, although there was similarity between the logos, the wording introduced a very significant difference and a reasonably circumspect consumer would not be confused. Specsavers could not rely on the shade of green which it used, because that was not part of the registration. The case under art.(9)(1)(c) succeeded in respect of the strapline “be a real spec saver at Asda” but not in respect of the logos or the strapline “spec savings at Asda”. There was no misrepresentation giving rise to passing off because there was too much of Asda’s branding.

Diageo North America Inc & Anr v Intercontinental Brands (ICB) Ltd & Ors, [2010] EWCA Civ 920, 30/7/10

Thu, 23 Sep 2010 16:05:40 GMT

An appeal was dismissed against a decision that the term VODKA had acquired a reputation for certain characteristics, which was capable of protection, and the use of the name VODKAT for a 22% alcohol vodka-based drink amounted to extended passing off. There was no authority for the appellant’s proposition that some cachet had to exist, in the sense of the product being superior or luxury.

Oracle America Inc (Formerly Sun Microsystems) v M-Tech Data Ltd & Anr, [2010] EWCA Civ 997, 24/8/10

Thu, 23 Sep 2010 16:04:51 GMT

An appeal was allowed, setting aside the grant of summary judgment on a claim for trade mark infringement in relation to parallel importation activities. There was a real prospect of the defendant establishing that arts. 5 and 7 of Directive 89/104 had to be interpreted by reference to arts 28 and 30 of the Treaty concerning freedom of movement of goods. There was also arguably a sufficient connection between the claimant’s enforcement of its trade mark rights and its agreements with EEA distributors, which were contrary to art.81 of the Treaty. Therefore the claim was not suitable for summary disposal, and the case was remitted for trial, with a view to the judge making a reference to the Court of Justice if thought fit.

Dyson Ltd v Vax Ltd [2010] EWHC 1923 (Pat), 29/7/10

Thu, 23 Sep 2010 15:55:13 GMT

The defendant’s multi-stage cyclone vacuum cleaner did not infringe the claimant’s registered design, because it produced a different overall impression on the informed user, even on the basis that the registered design was entitled to a fairly broad scope of protection. The statement of novelty, which specified the “shape and configuration” was not to be read as excluding other aspects of the design, and the transparency of the bin was plainly a feature of the design which was depicted and which contributed to the aesthetic appeal. The transparent bin was not a feature dictated solely by function (in that in enabled the user to see when the bin was full), as aesthetic factors were also relevant.

SAS Institute Inc v World Programming Ltd, [2010] EWHC 1829 (Ch), 23/07/2010

Wed, 08 Sep 2010 19:50:51 GMT

It was appropriate to refer questions to the European Court for a preliminary ruling concerning the interpretation of art.1(2) and art.5(3) of Directive 91/250 and art.2 of Directive 2001/29. The background was that W had studied S’s software programs and manuals, and wrote its own program to emulate S’s functionality. There was no suggestion that W had copied the text or structural designs of S’s source code. S challenged the existing view of the English courts to the effect that it is not an infringement of copyright in the source code of a computer program for a competitor to write its own program emulating its functionality.

Hoist UK Ltd v Reid Lifting Ltd, Ch Div (Roger Wyand QC), 28/7/10

Wed, 08 Sep 2010 19:49:58 GMT

Where H had discontinued a threats action against R there was nothing to justify departing from the usual order that the discontinuing party should pay the costs of the discontinued action, although R’s costs of the counterclaim for infringement of unregistered design right and copyright would be excluded from the costs order against H.

Honda Motor Co Ltd & Anr v David Silver Spares Ltd, Ch Div (G Leggatt QC), 28/7/10

Wed, 08 Sep 2010 19:47:06 GMT

An application to strike out H’s particulars of claim in trade mark infringement proceedings, or alternatively for summary judgment, was refused. The complaint was that S had dealt in spare parts which, although genuine, had not been put on the market in the EEA with H’s consent. It was only where the defendant succeeded in establishing that the trade mark owner’s system of exclusive distributors created a real risk of partitioning of national markets that the burden of proof was reversed, following Case C-244/00 Van Doren + Q.

L’Oreal SA & Ors v Bellure NV & Ors, CA (Jacob LJ, Sir David Keene), 27/7/10

Wed, 08 Sep 2010 19:45:08 GMT

An appeal was allowed against a costs order in the claimants’ favour. The Court of Appeal considered that the decision was, commercially speaking, a draw and that there should be no order for costs.

Yeda Research and Development Company Ltd v Comptroller General of Patents, [2010] EWHC 1733 (Pat), 12/07/2010

Wed, 08 Sep 2010 19:37:49 GMT

A hearing officer had rightly refused to grant supplementary protection certificates in relation to a patent concerning the treatment of cancer. The patent claimed the combination of cetuximab (C) with irinotecan (I), and the manufacture or supply of C alone would not infringe. The marketing authorisation was for C, and brief references to I in explaining how C was used were wholly insufficient to amount to a marketing authorisation of a product consisting of both. Therefore both the SPC which specified C in combination with I, and the SPC which specified C alone, had to be refused as neither was both protected by the patent and subject of the marketing authorisation.

Fosroc International Ltd v WR Grace & Co - Conn, [2010] EWHC 1702 (Pat), 12/07/2010

Wed, 08 Sep 2010 19:18:28 GMT

An application for revocation of the defendant’s patent was dismissed. The patent was concerned with improving cement by making additions. The patentee’s application to amend the patent was granted as it did not add new subject matter. The specification of the patent as granted contained the disclosure of the combination of TIPA and TEA additives in a single claim, and it did not matter whether the synergistic effect of the combination was explicitly disclosed. Obviousness attacks on the patent as amended failed.

Leo Pharma A/S & Anor v Sandoz Ltd, [2010] EWHC 1911 (Pat), 27/07/2010

Wed, 08 Sep 2010 19:17:14 GMT

An application to correct an accidental slip in an order was refused. Following the trial of patent proceedings the parties drew up an order which included a provision for payment of sums found due by way of damages or an account of profits together with interest at 8% from the date of the order. The inclusion of the interest in the order was not an error which could be corrected under CPR r.40.12, the slip rule. The order was not inconsistent with the intention of the court at any stage.

Schlumberger Holdings Ltd v Electromagnetic Geoservices AS, [2010] EWCA Civ 819, 28/07/2010

Wed, 08 Sep 2010 19:15:22 GMT

An appeal was allowed against a decision that a patent concerning a method of detecting hydrocarbon layers under the sea bed was invalid for lack of inventive step. The patent taught the use of controlled source electromagnetic (CSEM) surveying. The person skilled in the art did not necessarily have the same attributes for the purpose of considering obviousness as for the purpose of considering sufficiency, because the patent itself altered the state of the art. Prior to the patented invention, oil exploration companies engaged exploration geophysicists but not CSEM specialists even though the CSEM technique had been known for 20 years. It could not have been obvious to construct a team consisting of both types of geophysicist when no such team existed in reality. The judge had erred in not recognising that the patent was for a useful technique which could have been proposed and used much earlier, and this pointed to invention.

Global Coal Ltd v London Commodity Brokers, [2010] EWHC 1347 (Ch) (Briggs J), 11/6/10

Thu, 29 Jul 2010 19:45:42 GMT

G was responsible for the establishment and maintenance of a standard form contract for the international trading of coal and coal derivatives (SCoTA) and related trading platform, data and indices. G’s product licensing agreement (PLA) for traders and brokers prohibited licensees from transacting with unlicensed third parties. L argued that G was not entitled to control absolutely the use of the SCoTA contract and its associated products but only to control the use of its IP rights in those products. However the court found as a preliminary issue that the PLA contained a clear mutual assumption that G had the right to control the use of its products and not merely use which, but for permission, would infringe its IP rights. This was the more reasonable interpretation of the words, and made enforcement of the agreement far simpler.

LG Electronics Inc’s Trade Mark Application, App Person (Amanda Michaels), 4/6/10

Thu, 29 Jul 2010 19:44:53 GMT

LG’s appeal was dismissed, the appointed person finding that the hearing officer had been entitled to refuse to register the trade mark INTELLIGENT SENSOR for goods in class 9 including television sets and mobile phones. The case was a borderline one, and whilst another hearing officer might have found the mark vague enough not to be objectionable under s.3(1)(c), it was open to the hearing officer in this case to take the view that the mark would be seen as describing a characteristic of the goods.

Best Buy Co Inc & Anr v Worldwide Sales Corp Espana SL, [2010] EWHC 1666 (Ch) (Floyd J), 8/7/10

Thu, 29 Jul 2010 19:42:34 GMT

An action for relief in respect of unjustified threats of trade mark infringement proceedings failed because the threats were made as part of a negotiating process and fell within the without prejudice rule, even though the letter was not expressly marked “without prejudice”. Obiter the threats provisions in the TMA 1994 referred only to proceedings for infringement in the UK courts and not to proceedings in any foreign court. However the letter, had it not fallen within the ‘without prejudice’ protection, would not have escaped the threats provisions on jurisdictional grounds because the reasonable recipient would not have taken the maker of the threats to be limiting itself to bringing proceedings in Spain.

Nampak Cartons Ltd v Rapid Action Packaging Ltd, [2010] EWHC 1458 (Pat), (Floyd J), 18/6/10

Thu, 29 Jul 2010 19:41:34 GMT

An appeal was dismissed against a hearing officer’s decision to refuse N’s application for the revocation of R’s patent relating to sandwich cartons. Not every slip in the application of the Pozzoli structured approach to obviousness opened the decision to an attack based on error of principle, and the hearing officer had been entitled to reject the arguments as to lack of inventive step.

Occlutech GmbH v Aga Medical Corp, [2010] EWCA Civ 702, (Pill, Patten LJJ, Sir Paul Kennedy), 22/6/10

Thu, 29 Jul 2010 19:40:09 GMT

An appeal was dismissed against the grant of a declaration of non-infringement in relation to a patent concerning intravascular devices used principally for the occlusion of blood vessels. The judge had been right to construe the patent as limited to a device that had clamps at both ends and as requiring the clamps to be the primary and effective means of securing the loose ends.

Re Medeva’s SPC Applications, [2010] EWCA Civ 700, (Chancellor of the High Court, Etherton, Elias LJJ), 23/6/10

Thu, 29 Jul 2010 19:39:21 GMT

In the context of an appeal against the refusal of five applications for supplementary protection certificates, relating to a patent claiming a method of making acellular vaccine compositions against whooping cough, the court referred to the ECJ a number of questions for a preliminary ruling. The questions related to the interpretation of Regulation 1768/92 art.3 where the product was a combined vaccine against several diseases and the basic patent in force protected one of the vaccine aspects.

Cook Biotech Inc v Edwards Lifesciences AG, CA (Jacob, Moore-Bick, Etherton LJJ), 28/6/10

Thu, 29 Jul 2010 19:38:01 GMT

C’s appeal, against a decision that its patent for an artificial heart valve was invalid for obviousness, was dismissed.

Medtronic Corevalve LLC v Edwards Lifesciences AG & Anr, [2010] EWCA Civ 704 (Jacob, Moore-Bick, Etherton LJJ), 30/6/10

Thu, 29 Jul 2010 19:36:13 GMT

E’s appeal, against a decision that C’s heart valve device did not infringe E’s patent, was dismissed. The basic theme of the patent was to put a valve onto a known type of stent, which was cylindrical. E’s arguments put too great a strain on the word ‘cylindrical’ and amounted to striking it out altogether, and this could not be justified. The judge had been right to find that C’s device, which was not uniform in cross section but was bulbous at one end, was outside the claims of the patent.

L’Oreal SA & Ors v Bellure NV & Ors, [2010] EWCA Civ 535, 21/5/10

Thu, 01 Jul 2010 17:24:17 GMT

Following a ruling of the ECJ the Court of Appeal decided, with some reluctance, that it was bound to hold the defendants liable for trade mark infringement arising from their advertising methods. The defendants sold perfumes which each smelt somewhat like a luxury branded perfume known by a registered trade mark, and they published comparison lists identifying which well-known branded perfume each smell-alike product corresponded to. The ECJ had indicated that, because the defendants’ comparative advertisements suggested the products were “imitation or replica”, the adverts failed to comply with the conditions of the Comparative Advertising Directive. Failure to comply meant that the descriptive use was “without due cause” and not “in accordance with honest practices”.

Numatic International Ltd v Qualtex Uk Ltd, [2010] EWHC 1237 (Ch), 28/5/10

Thu, 01 Jul 2010 17:16:18 GMT

Quia timet proceedings for passing off were successful, where the defendant’s prototype vacuum cleaner, which was exhibited at a trade show, bore a strong resemblance, by reason of its shape alone, to the claimant’s well-known Henry vacuum cleaner. The replica lacked the Henry’s smiley face and name and appeared in blue rather than red, however the overall shape and in particular the shiny black ‘bowler hat’ were sufficient to create a damaging misrepresentation in the minds of a substantial proportion of the purchasing public.

Fabio Perini SpA v LPC Group Plc & Ors, [2010] EWCA Civ 525, 14/5/10

Thu, 01 Jul 2010 17:15:27 GMT

An appeal and cross appeal against a decision, concerning two patents for machinery and methods for sealing the tail ends of rolls of paper, were dismissed. The judge’s approach to the questions of infringement and validity, and to joint liability, had been correct and his conclusions justified. The judge had been entitled to order the costs of an abandoned issue to be paid on the standard, rather than indemnity, basis.

Union of European Football Associations & Anr v Euroview, Ch Div (Kitchin J), 16/4/10

Thu, 20 May 2010 20:50:27 GMT

In ongoing proceedings concerning alleged copyright infringement arising from the supply and use of foreign satellite decoder cards, in was appropriate to refer certain questions on the interpretation of EU law to the Court of Justice.

Interflora Inc & Anr v Marks and Spencer Plc & Anr, 29/4/10, [2010] EWHC 925 (Ch)

Thu, 20 May 2010 20:48:04 GMT

Following the CJ’s judgment in Google France the court was required to provide clarification of its questions referred to the Court of Justice in the context of a dispute concerning the use of advertising keywords for internet search engines. Certain questions were withdrawn but the reference was maintained in part.

Trademark Licensing Co Ltd & Anr v Leofelis SA, 6/5/10, [2010] EWHC 969 (Ch)

Thu, 20 May 2010 20:47:20 GMT

In a claim for summary judgment in respect of royalties due under a trade mark licence agreement, the court found that the defence to the claim might succeed but would probably not, and accordingly made a conditional order requiring the defendant to pay into court the amount of the royalties claimed.

Betson Medical (Ireland) Ltd v Comptroller General of Patents, 31/3/10, [2010] EWHC 687 (Pat)

Thu, 20 May 2010 20:13:35 GMT

Evidence that a patentee faced severe financial difficulties in the relevant period, and had made strenuous efforts to secure funding to pay the renewal fees in respect of his patent portfolio, was not relevant to the very specific question whether he had taken reasonable care to ensure that renewal fees in respect of a particular patent were paid. The hearing officer had correctly held that he had not done so.

HTC Corporation v Yozmot 33 Ltd, 20/4/10, [2010] EWHC 786 (Pat)

Thu, 20 May 2010 20:10:19 GMT

In patent invalidity proceedings concerning a patent enabling users of mobile telephones to create customised ringtones and messages, three out of four of the claims attacked were held invalid for lack of novelty or obviousness over the prior art and the common general knowledge.

Neurim Pharmaceuticals (1991) Ltd v Comptroller General of Patents, 6/5/10, [2010] EWHC 976 (Pat)

Thu, 20 May 2010 20:09:34 GMT

The hearing officer had rightly refused to grant a supplementary protection certificate for a patent concerning a medicinal product containing melatonin for the treatment of insomnia in humans. An earlier marketing authorisation relating to a veterinary product containing melatonin to stimulate early reproductive activity in sheep was the relevant first authorisation, and it did not matter that the active ingredient was for a different indication in a different species.

Pink Floyd Music Ltd & Anr v EMI Records Ltd, [2010] EWHC 533 (Ch), 11/3/10

Thu, 06 May 2010 18:37:16 GMT

Summary judgment was granted on a claim against the EMI record label concerning undercounting of royalties under a licence agreement. On a proper construction of the licence agreement, it extended to online and other digital sales and was not confined to physical products. The sale of single tracks other than in the original album configuration was prohibited.

Ashley Wilde Group Ltd v Kocak & Ors, Ch Div (John Baldwin QC), 17/3/10

Thu, 06 May 2010 18:36:15 GMT

Where the claimant had obtained judgment against a Turkish company for infringement of its copyright in the design of a cushion, but efforts to execute the judgment had failed, it commenced the instant proceedings against the directors of the Turkish company on the basis that they were personally involved in the infringement. The defendants applied to strike out the proceedings as barred by res judicata or as an abuse of process, but the court held that although a claimant was required to bring all its claims at once, which arose out of the same incident against a particular defendant, this did not prevent the pursuit of separate parties who might have been involved in the same tort but not in the same litigation.

Twentieth Century Fox Film Corporation & Ors v Newzbin Ltd, [2010] EWHC 608 (Ch), 29/3/10

Thu, 06 May 2010 18:32:18 GMT

The claimant’s copyrights in films had been infringed by the operation of the Newzbin website which provided a searching and indexing facility and a guide to materials available on the Usenet online discussion network. Newzbin impliedly authorised its premium members to infringe copyrights, and it also procured and engaged in a common design with its premium members to infringe the copyrights, and profited from doing so.

Pavel Maslyukov v Diageo Distilling Ltd & Anr, [2010] EWHC 443 (Ch), 17/3/10

Thu, 06 May 2010 18:31:00 GMT

Where Diageo had been successful in opposing the registration of certain trade marks for whiskey, but success was based on only one of the grounds raised (bad faith), Diageo could not appeal the rejection of the other grounds. However, the judge did reconsider the objection under s.5(4)(a) because it was of wider significance to the parties, and it was held that Diageo retained residual goodwill in trademarks which corresponded to distilleries which had ceased to operate but which related to whiskies still stockpiled. The test in relation to residual goodwill was whether the business had been abandoned so as to destroy the goodwill. Mere cessation of business was not enough. The hearing officer had been wrong to conclude that there was no likelihood of damage to Diageo’s residual goodwill.

Andrew Kerr v Laurence Shaw & Associates Ltd, [2010] EWHC 585 (Ch), 19/3/10

Thu, 06 May 2010 18:30:12 GMT

A patent attorney, who had been engaged by the claimant to organise patent applications in several countries, was not liable for breach of contract nor negligence for failing to take steps to obtain a Canadian patent before the final deadline for doing so. The evidence showed that had the necessary steps been taken the claimant would not have proceeded with the Canadian application. Therefore the failure to open a file for Canada or to explain the deadline to the client was not a cause of the damage. In any event the patent was by the claimant’s own admission invalid.

Schutz (UK) Ltd v Werit UK Ltd & Anr, [2010] EWHC 660 (Pat), 31/3/10

Thu, 06 May 2010 18:28:18 GMT

In a patent infringement action concerning intermediate bulk containers which consisted of an outer protective cage and a removable plastic inner bottle, the defendant was not liable for selling its own plastic bottles to a third party who inserted them into the patentee’s second-hand cages before selling them on. It was held that the replacement of the inner container did not amount to making the patented product, as the inventive concept of the patents was wholly embodied in the cage.

Phonographic Performance Ltd v British Hospitality Association & Ors, Ch Div (Arnold J), 12/2/10

Thu, 25 Mar 2010 14:03:31 GMT

An appeal against a decision of the Copyright Tribunal was dismissed. The Tribunal had been entitled to find that new tariffs set by PPL for public performance of sound recordings as background music in pubs, restaurants, shops and offices showed an unjustifiably substantial increase on previous tariffs.

Nanjing Automobile (Group) Corporation & Ors v MG Sports & Racing Europe Ltd & Anr, Ch Div (Sir William Blackburne), 19/2/10

Thu, 25 Mar 2010 14:02:47 GMT

An action for trade mark infringement and passing off, brought by the Chinese transferees of the business and assets of the British car manufacturer MG (in administration in 2005), was successful. The defendant English company had purported to buy the “MG X POWER” trade mark from the liquidator in 2007 along with the sports car arm of the business, but on a proper construction of the 2005 agreement with the Chinese purchaser, all the trade marks including the MG X POWER mark were transferred to the Chinese in 2005. The purported agreement to sell the mark in 2007 was therefore of no effect.

Hotel Cipriani Srl & Ors v Cipriani (Grosvenor Street) Ltd & Ors, CA (Jacob, Lloyd, Stanley Burnton LJJ), 24/2/10

Thu, 25 Mar 2010 14:01:30 GMT

The London restauranteur (R) unsuccessfully appealed a decision that it had infringed the European hotelier’s (H) Community trade mark and passed off its services as those of the hotelier. The CTM was not invalid for bad faith as there was no use of the mark by the Cipriani family and no apparent right to use the mark, with which the registration was incompatible. The ‘own name’ defence provided by art.12(a) of Reg 40/94 was not limited to a corporate name but could in some circumstances apply to a trading name. The defence hinged largely on whether the adoption and use of the trading name was in accordance with honest practices. The defence did not apply to R’s use of CIPRIANI. H had substantial goodwill in the UK at the relevant time even though it was based outside the UK and its services were provided outside the UK. It had a reputation and a substantial body of customers in the UK sufficient to found a passing off action.

Actavis UK Ltd v Novartis AG, CA (Jacob, Lloyd, Stanley Burnton LJJ), 17/2/10

Thu, 25 Mar 2010 14:00:03 GMT

An appeal was dismissed against a finding that a European patent for a sustained release formulation of fluvastatin was invalid for obviousness. The problem presented in the patent – that fluvastatin was so highly soluble that the skilled person would it expect it to be difficult to make a sustained release form – was not a real problem. There was no technical difficulty, real or apparent, and it was obvious that any of the standard methods for making a sustained release formulation would work. Once it was shown that the technical step was obvious it was not necessary to show that the skilled person would actually implement the idea because this depended on commercial factors and was not relevant to the issue of inventive step.

Intervet UK Ltd v Merial & Ors, Ch Div (Arnold J), 23/2/10

Thu, 25 Mar 2010 13:58:55 GMT

A European patent concerning a method for diagnosing a virus infecting pigs was invalid as it was not properly supported by matter disclosed in the priority document. The patent was also invalid for lack of inventive step and was in any event not infringed by the claimant’s vaccine, which could not be used as a diagnostic tool.

Diageo North America Inc & Anr v Intercontinental Brands (ICB) Ltd & Ors, Ch Div (Arnold J), 19/1/10

Wed, 24 Feb 2010 23:26:05 GMT

The claimant producer of alcoholic drinks including Smirnoff vodka succeeded in an extended passing off action against the defendant marketer of a drink called VODKAT, which was a mixture of vodka and fermented alcohol having ABV 22%. The court found that the term ‘vodka’ denoted a class of goods with a reputation and a protectable goodwill and that the marketing of VODKAT had been such as to misrepresent to consumers that the product was vodka, and that this was likely to erode the reputation and distinctiveness of the term ‘vodka’.

Blinx UK Ltd v Blinkbox Entertainment Ltd, Ch Div (Floyd J), 5/2/10

Wed, 24 Feb 2010 23:24:52 GMT

An application for an interim injunction, restraining use of a name alleged to amount to passing off and trade mark infringement, was refused where the claimant had delayed more than a year in bringing the application. The claimant’s website BLINKX.COM provided access to film, television and video content, and the defendant had launched BLINKBOX.COM offering a service for viewing, customising and sharing television and video clips. It had been unreasonable and unjustified for the claimant to wait until confusion arose in the market before commencing proceedings

Nokia GmbH v IPCom GmbH & Co KG, Ch Div (Floyd J), 18/1/10

Wed, 24 Feb 2010 23:23:20 GMT

Nokia succeeded in establishing that two European patents belonging to the defendant and relating to mobile phone technology were invalid for lack of novelty and/or obviousness and had to be revoked. Had the patents been valid they would have been infringed by phones manufactured by Nokia.

Red Spider Technology v Omega Completions Technology, Ch Div (Mann J), 21/1/10

Wed, 24 Feb 2010 23:22:34 GMT

Claims for infringement of a patent concerning a water-based injection valve for use in oilfield exploration, and for infringement of design right in the valve, both failed. Further, the patent was invalid for anticipation and obviousness.

Properly construed, the patent did not claim the feature relied on. Further, the priority document relied on did not disclose all the integers of Claim 1, and so the sale of the valve by the patentee before the patent application date anticipated the patent. Further, the invention was obvious over the common general knowledge and a piece of prior art.

The defendant’s reproduction of the valve by working from the patent drawings was not copying of the valve design for design right purposes because the ideas taken were at a high level of abstraction.

Medeva BV v Comptroller General of Patents, Ch Div (Kitchin J), 27/1/10

Wed, 24 Feb 2010 23:20:28 GMT

An appeal against the refusal of a number of supplementary protection systems was dismissed. The SPCs related to a UK patent claiming a method of making vaccines against whooping cough. The products for which certificates were sought were combination vaccines against a number of different diseases including whooping cough, and contained ingredients not protected within the meaning of the Regulation. There was no basis for treating vaccines as a special case.

Research in Motion UK Ltd v Motorola Inc, Ch Div (Arnold J), 3/2/10

Wed, 24 Feb 2010 23:19:39 GMT

Motorola’s European patent concerning a messaging gateway system was invalid as lacking an inventive step, and was not infringed by two systems operated by the claimant under the well-known BlackBerry trade mark.

Eli Lilly & Co v Human Genome Sciences Inc, CA (Jacob, Hallett LJJ, Lewison J), 9/2/10

Wed, 24 Feb 2010 23:17:44 GMT

An appeal was dismissed against a decision that a European patent was invalid because not susceptible of industrial application. The patent disclosed the antibodies to and polynucleotide sequence encoding a neutrokine human protein. The appeal was based on the subsequent finding of the Technical Board of Appeal of the EPO (TBA) that the description of the patent delivered sufficient technical information (concerning the effect of the protein on tumour cells) to satisfy the requirement of use in industrial practice. The court took care to distinguish the fact-finding and evaluation process of the court from the EPO proceedings. In respect of legal principles decisions of the TBA were of immense importance and the English courts would follow any principles of law clearly laid down. The question in this case was one of fact and degree and the judge’s decision could not be faulted.

Far Out Productions Inc v Unilever UK & CN Holdings Ltd & Ors, Ch Div (N Strauss QC), (16 December 2009)

Thu, 04 Feb 2010 16:16:20 GMT

Where an action for copyright infringement against four defendants had been settled as against the first three and discontinued as against the fourth, the claimant was liable for the costs the fourth defendant had incurred until the date the notice of discontinuance was served. Costs were awarded on an indemnity basis because of the claimant’s unreasonable behaviour in joining the fourth defendant, delaying progress and refusing to negotiate. The action had concerned infringement of copyright in a sound recording used in an advertisement.

Mascha & Regner Consulting KEG v Carlyle LLC, TMR (Ann Corbett), (8 December 2009)

Thu, 04 Feb 2010 16:15:34 GMT

The respondent’s trade mark registered for hotel, restaurant and related services was revoked for lack of genuine use in the UK in the relevant period, where the proprietor of the mark had provided the services only via a hotel situated in the US. There was evidence that UK residents had stayed at the hotel but no evidence that there had been any marketing or advertising of the hotel in the UK. There was no need to decide whether advertising and marketing alone was sufficient to constitute genuine use in the UK for services provided elsewhere.

Molnlycke Health Care AB & Anr v BSN Medical Ltd & Anr, Ch Div (Floyd J), (17 December 2009)

Thu, 04 Feb 2010 16:09:47 GMT

A stay of English patent infringement proceedings pending resolution of declaratory proceedings in Sweden under Regulation 44/2001 art.27 was refused because the parties were not identical and indissociable. The patentee’s exclusive UK licensee was not a party to the foreign proceedings, and the licensee’s interests were different from those of the patentee (even though the licensee was the patentee’s British sister company). An interim injunction against the defendant’s activities in the UK was refused because the balance of convenience was in favour of maintaining the status quo, which was that the defendant had already launched the product.

Actavis UK Ltd v Eli Lilly & Co Ltd, CA (Jacob, Lloyd, Stanley Burnton LJJ), (13 January 2010)

Thu, 04 Feb 2010 16:07:00 GMT

In the aftermath of an unsuccessful application to revoke E’s pharmaceutical patent, an appeal against a costs order was dismissed. Actavis had commenced revocation proceedings in parallel with a prior application on the same grounds (by D), and the proceedings were directed to be heard simultaneously. Actavis discontinued its action shortly before trial. The judge found for the patentee E and directed the E’s costs to be shared equally between Actavis and D. It could not be said that this costs order was perverse or contrary to the spirit of the CPR. The two actions were indistinguishable, and Actavis was effectively a co-party.

R v Christopher Gilham, CA (Stanley Burton LJ, Penry-Davey J, Sharpe J), (9 November 2009)

Tue, 29 Dec 2009 23:22:49 GMT

An appeal was dismissed against convictions for offences under the CDPA 1988 s.296ZB, arising from the offender’s dealing in modchips which enabled counterfeit games to be played on consoles. The appellant claimed that because the data in the consoles’ RAM was constantly overwritten, at any one time only a very small percentage of the data on the disc was present in RAM and this did not amount to a substantial part of the work. The CA held that the images generated on the screen and the sounds played were themselves works protected by copyright, and even if the contents of the RAM at any one time was not a substantial copy of the whole work, the image shown and sounds played were substantial copies of those works.

Wasabi Frog Ltd v Miss Boo Ltd & Anor [2009] EWHC 2767 (Ch) (04 November 2009)

Tue, 29 Dec 2009 23:18:49 GMT

The balance of convenience favoured the granting of an interim injunction where there was a strongly arguable case of trade mark infringement and a well arguable case in passing off. The claimant’s marks were BOOHOO and BOOHOO.COM for women’s fashion. The defendant had recently launched an online retail business in direct competition under the name MISS BOO and MISSBOO.CO.UK.

Evans & Anor (t/a Firecraft) v Focal Point Fires Plc [2009] EWHC 2784 (Ch) (10 November 2009)

Tue, 29 Dec 2009 23:17:37 GMT

Summary judgment was granted against the defendants on a claim for passing off. A previous decision by the intellectual property registrar’s hearing officer, holding that the defendant’s trade mark registration for the mark “Firecraft” was invalid under s.5(4)(a) TMA because of the claimants’ earlier rights in that trade mark, was binding by way of cause of action and issue estoppel. The registrar was a court of competent jurisdiction in relation to the identified issues, and it would be an abuse of process to allow the defendants to re-litigate the matter in an attempt to reverse the unappealed decision.

Sun Microsystems Inc v M-Tech Data Ltd & Anor [2009] EWHC 2992 (Pat) (25 November 2009)

Tue, 29 Dec 2009 23:16:16 GMT

Sun Microsystems was granted summary judgment in proceedings for trade mark infringement against importers of computer hardware into the UK from the US. There was evidence that the drives were first placed on the market outside the EEA, and there was nothing to suggest that the claimant had consented to the importation. The enforcement of trade mark rights did not constitute a breach of the free movement rules in articles 28 to 30 of the Treaty. The allegation that the exercise of Sun’s trade mark rights was prohibited by article 81 had no real prospect of success.

Grimme Landmaschinenfabrik GmbH & Co KG v Scott (t/a Scotts Potato Machinery) [2009] EWHC 2691 (Pat) (03 November 2009)

Tue, 29 Dec 2009 23:15:10 GMT

The claimant’s European patent concerning a machine for separating potatoes from other material collected in harvesting was valid, other than Claim 1 which was invalid for obviousness. The claims which were valid had been infringed. Unregistered design rights also subsisted in the design of the machinery and these had been infringed by some of the defendant’s machinery. Threats made by the claimant in respect of patent infringement were justified, but veiled threats in relation to design rights were not fully justified.

Leo Pharma (a/s Leo Laboratories Ltd) v Sandoz Ltd [2009] EWCA Civ 1188 (17 November 2009)

Tue, 29 Dec 2009 23:13:58 GMT

An appeal was dismissed, against a decision that a patent concerning calcipotriol monohydrate for the topical treatment of skin conditions such as psoriasis and acne was valid. The judge’s reasoning and conclusions could not be faulted in any way. It was unfortunate that different national courts had reached different conclusions on the validity of the same patent but this was curable only by a single European Patent Court.

Teva UK Ltd v Merck & Co, Inc [2009] EWHC 2952 (Pat) (20 November 2009)

Tue, 29 Dec 2009 23:12:45 GMT

A European patent concerning an ophthalmic formulation for the treatment of glaucoma was revoked. The co-formulation, in topical eye-drops, of a beta-blocker and a carbonic anhydrase inhibitor lacked novelty and was obvious over the prior art and common general knowledge. Of the patentee’s proposals to amend the patent, only one was allowable and the rest added matter. The allowable amendment did not save the patent from invalidity.

Gemstar-Tv Guide International Inc & Ors v Virgin Media Ltd & Anor [2009] EWHC 3068 (Ch) (26 November 2009)

Tue, 29 Dec 2009 23:11:44 GMT

In a patent infringement action concerning Gemstar’s three patents relating to electronic programming guides for television services, Virgin successfully counterclaimed for revocation of the patents. The first two patents consisted of excluded subject matter as they were computer programs which contributed no technical effect and were mere presentation of information. In any event they were obvious or anticipated by a “Superguide” product available earlier in the US. The third patent achieved a technical effect but was anticipated by the prior art.

Daimler AG v Sany Group Co Ltd, Ch Div (Susan Prevezer QC), (23 October 2009)

Thu, 03 Dec 2009 17:29:44 GMT

Daimler’s claim for trade mark infringement, and Sany’s counterclaim for partial revocation of Daimler’s trade marks for non-use, were both dismissed.

Although both Daimler’s trade marks and the marks used by Sany consisted of a three-pointed star within a circle, the average consumer would not link the two logos.

Daimler’s evidence of use was sufficient even though in some instances there was only an uncorroborated statement from Daimler’s in-house counsel.

Boegli-Gravures SA v Darsail-Asp Ltd & Anor [2009] EWHC 2690 (Pat) (29 October 2009)

Thu, 03 Dec 2009 17:27:00 GMT

A patent concerning a system for embossing packaging foils was valid and infringed. The reference in the patent to ‘pyramidal’ teeth on the rollers did not require the precise geometric shape of a pyramid. The sale of rollers by the defendant to a private investigator in the UK working on behalf of the patentee was sufficient evidence of a threat and intention to commit infringements. The defendant company’s director was liable as a joint tortfeasor because he personally dealt with the sale and supply of the rollers and had gone beyond performing his constitutional role.

Grisbrook v MGN Ltd & Ors [2009] EWHC 2520 (Ch) (16 October 2009)

Mon, 02 Nov 2009 11:40:57 GMT

The claimant freelance photographer’s application to commit a newspaper publisher for breach of an undertaking contained in a consent order was refused, and instead a declaration of infringement was granted. The consent order arose out of a dispute over licence fees for the use of photographs, and the publisher had undertaken in general terms not to infringe the photographer’s copyright. The judge found that the publisher’s operation of back-issue websites did constitute an infringement of copyright, but that the publisher had been entitled in good faith to take a different view, and it was therefore not appropriate to resolve the matter through committal proceedings. The point had not featured specifically in the dispute which led to the consent order, and there had been no deliberate non-compliance.

Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc [2009] EWCA Civ 1022 (20 October 2009)

Mon, 02 Nov 2009 11:40:02 GMT

Questions were referred to the ECJ concerning the meaning of “acquiesced” in Art 9(1) of Directive 89/04, arising out of the honest concurrent use of identical marks by the two parties in the UK. The parties’ trade marks had the same date of registration, but Anheuser-Busch’s application had been made earlier. One day before the expiry of 5 years from the date of registration, Anheuser-Busch had made an application for a declaration of invalidity of Budejovicky’s mark, based on its “earlier mark”. The questions related to whether Budejovicky was prevented from making a counter-attack because of 5 years’ acquiesence.

Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062 (22 October 2009)

Mon, 02 Nov 2009 11:38:55 GMT

The Court of Appeal found in favour of the appellant patentee, reversing the decision below and holding a patent for an airline seating system valid and infringed by the respondent’s system for a rival airline (BA). The core finding was that the claimed invention was not limited to systems which use ‘flip-over’ seats (contoured as a seat on one side, and flat on the other side for use as a bed). The patent was not invalid for added matter because the parent application did cover systems which did not use “flip-over”. Jacob LJ clarified that the skilled reader of a patent can be expected to know (or to find out) about such matters as explicit drafting conventions and divisional applications.

First Conferences Services Ltd & Anor v Bracchi & Anor [2009] EWHC 2176 (Ch) (26 August 2009)

Wed, 28 Oct 2009 11:55:52 GMT

The defendant former employee (B) of the claimant conference organizer (F) was held to have misappropriated and misused F’s confidential information, infringed F’s rights in its database of customer contacts and other information, and passed himself off as F. However, F had no right to restrain competition of itself, absent a restrictive covenant.

Nude Brands Ltd.v Stella MccArtney Ltd & Ors [2009] EWHC 2154 (Ch) (20 August 2009)

Wed, 28 Oct 2009 11:54:04 GMT

An application for an interim injunction, to restrain the launch of STELLANUDE branded perfume products, was dismissed. There was a triable issue as to whether the use of the brand STELLANUDE would infringe the applicant’s CTM NUDE, which was registered for goods including cosmetics and perfume. However, on the balance of justice it was not appropriate to grant the injunction, as the likely damage to the respondents if an injunction was wrongly granted outweighed the damage to the applicant if it were refused.

Molnlycke Health Care AB v Wake Forest University & Anor [2009] EWHC 2204 (Pat) (28 August 2009)

Wed, 28 Oct 2009 11:52:33 GMT

In opposition proceedings, a patent, concerning apparatus for facilitating the healing of a wound, had been altered so as to widen the negative pressure parameter in claim 1. The correction was allowed on the basis that the inclusion of a more limited parameter had been an “obvious error” pursuant to the EPC Implementing Regulations 1973 r.88. It was now held that the correction had widened the protection conferred by the patent and had not been properly admissible. The patent fell to be revoked.

Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd & Anor [2009] EWCA Civ 646 (02 July 2009)

Wed, 23 Sep 2009 15:39:55 GMT

Generics’ appeal was dismissed, upholding the validity of Daiichi’s patent for a compound, levofloxacin, which is the negative enantiomer of the racemic compound ofloxacin. The judge’s conclusion that the invention was not obvious could not be criticized. A Supplementary Protection Certificate granted in respect of levofloxacin was also valid because it was for all practical purposes a new medicine, even though it had previously been available as part of the racemate.

Fisher (Original Appellant and cross-respondent) v Brooker and others (Original Respondent and cross-appellant), [2009] UKHL 41

Wed, 02 Sep 2009 16:00:02 GMT

This appeal concerns the ownership of the musical copyright in the song “A Whiter Shade of Pale" (“the work”), which was recorded by the band Procol Harum during April 1967 and first released as a single by Decca records under licence from Essex Music Ltd (“Essex”) in May 1967.

The dispute involved Gary Brooker (the band’s lead singer and pianist who composed the music in its original form), Keith Reid (the band’s manager who wrote the lyrics) and Matthew Fisher (who joined the band later as the organist and who composed the familiar organ solo at the beginning of the work, and the organ melody which is a counterpoint throughout most of the four minutes during which the work lasts).

Brooker and Reid had assigned rights in the work to Essex. Essex, in turn, agreed to pay royalties to them and, under a further recording contract, to the other members of the band. Fisher raised the question of his having a share in the rights in respect of the music with Brooker and Reid, but was rebuffed or ignored by them.

Fisher left the band in 1969 and an informal agreement was reached to release Fisher from any liability in respect of the band’s debts in return for his waiving any right to certain specified royalties (not including any copyright royalties in respect of the work).

Proceedings were raised in May 2005. The court found that (1) Fisher was a co-author of the work; (2) Fisher was a joint owner in the musical copyright in the work, with a share of 40%; and (3) the respondents’ licence to exploit the work was revoked in May 2005 when the proceedings were raised.

Allowing the respondents’ appeal, the majority of the Court of Appeal held that it was unconscionable, in all the circumstances, for Fisher to have revoked the implied licence, and that “the defences of acquiescence and laches operated to disentitle Fisher from the exercise of the court’s discretion to grant the second and third declarations”. Accordingly, they held that the licence continued and the second and third declarations should be set aside.

The House of Lords unanimously allowed Fisher’s appeal, dismissed the respondents’ cross-appeal and restored the two declarations set aside by the Court of Appeal. The House noted that the third declaration might have to be amended to keep open the issue whether Essex's rights had later been assigned.

Folding Attic Stairs Ltd v Loft Stairs Co Ltd & Anr, Ch Div (Peter Prescott QC), 9/6/09

Thu, 06 Aug 2009 15:16:44 GMT

The claimant’s patent for a process for manufacturing a folding stairway was valid and infringed. Before the priority date of the patent, the claimant had allowed a minister and a photographer onto its premises where they were able to see the product under development. This was quite different to displaying the test unit in a public place, and did not deprive the patent of novelty or inventiveness. The individuals who viewed the test unit were not skilled in the art or interested in manufacturing folding stairs. Also the test unit did not disclose or render obvious all aspects of the patent claim.

Edwards Lifesciences AG v Cook Biotech Incorporated [2009] EWHC 1304 (Pat) (12 June 2009)

Thu, 06 Aug 2009 15:15:17 GMT

The defendant’s patent, concerning a radially expandable stent which could be delivered by a catheter and expanded and deployed at a target site such as an artery or vein, was not anticipated but was obvious in light of an earlier US patent and was therefore invalid. The claimant’s artificial heart valve did not infringe the patent in any event.

FNM Corporation Ltd v Drammock International Ltd & Anor [2009] EWHC 1294 (Pat) (15 June 2009)

Thu, 06 Aug 2009 15:14:06 GMT

A patent claiming an aerosol spray containing water and dimethyl ether was invalid for lack of novelty and obviousness in light of prior art and common general knowledge. Communications from the claimant and its solicitors conveyed threats of proceedings for patent infringement but were protected by s.70(2A)(b) of the Patents Act 1977 because the claimant did not have reason to suspect that the patent was invalid at the time of the threats.

Tate & Lyle Technology Ltd v Freres [2009] EWHC 1312 (Pat) (16 June 2009)

Thu, 06 Aug 2009 15:12:26 GMT

A patent concerning the crystallization of a sugar substitute, malitol, was invalid for lack of novelty and because the claim was a discovery and not an invention. The patent claimed the use of a by-product of the malitol production process to modify the form which the malitol crystals took. However, a skilled person following the teaching of a number of prior art papers would infringe the patent, since in reality the industry had been using the by-product to control malitol crystal habit without knowing it. The patent merely informed of a property of the by-product which had been discovered, and explained why malitol crystals took the form they did.

Ancon Ltd v ACS Stainless Steel Fixings Ltd [2009] EWCA Civ 498 (16 June 2009)

Thu, 06 Aug 2009 15:10:28 GMT

An appeal was allowed against a decision that ACS’s product did not infringe Ancon’s patent for a channel assembly for use in building construction. The claim, which described the head of a bolt as having a “generally elliptical cone shape”, had to be construed purposively, which meant that the specific geometry was essential only to those parts of the bolt which co-operated with the channel, namely the sides and not the top. Therefore ACS’s product did not escape infringement by reason of having the top of the head of the bolt removed so that there was no ellipse on the top.

Occlutech GmbH v Aga Medical Corp [2009] EWHC 2013 (Ch) (31 July 2009)

Fri, 31 Jul 2009 14:30:00 GMT

A patent concerning intravascular medical devices delivered by catheter to remote locations in a patient’s vessels, formed of braided metal strands with a collapsed configuration for delivery and a dumbbell shape when expanded, was valid but not infringed.

Fabio Perini SPA v LPC Group Plc & Ors [2009] EWHC 1929 (Pat) (31 July 2009)

Fri, 31 Jul 2009 14:28:00 GMT

A patent claiming machinery and methods for sealing the tail ends of rolls of paper (such as toilet paper or kitchen towel) was valid and infringed. A second patent claiming an improvement to the first patented method was invalid for obviousness over the common general knowledge and prior art.

Wake Forest University Health Sciences & Ors v Smith & Nephew Plc & Anor [2009] EWCA Civ 848 (31 July 2009)

Fri, 31 Jul 2009 14:26:00 GMT

In relation to a patent concerning an apparatus for treating tissue damage by application of a vacuum, the judge had been correct to hold that claim 1 had been anticipated. In relation to several further claims, the judge had not applied the correct test of obviousness. The Court of Appeal substituted its own conclusion and found the further claims to be obvious over the prior art and common general knowledge.

Novartis AG & Anor v Johnson & Johnson Medical Ltd & Ors [2009] EWHC 2029 (Pat) (29 July 2009)

Wed, 29 Jul 2009 14:38:00 GMT

A patent concerning extended-wear contact lenses was revoked for insufficiency. It would require a research programme to identify silicone hydrogel formulations suitable for producing lenses having the properties set by the claims. Therefore the specification did not disclose the invention sufficiently for it to be performed by a person skilled in the art without undue experimentation.

W L Gore & Associates GmbH v Geox SPA [2009] EWCA Civ 794 (29 July 2009)

Wed, 29 Jul 2009 14:34:00 GMT

An appeal and cross-appeal were dismissed, finding that in respect of Geox’s patents relating to shoes with a waterproof and breathable sole and methods for making them, the judge had been entitled to grant a declaration of non-infringement in relation to one patent and to refuse in relation to another. The case turned on the construction of the main claims of the patents, as to the meaning of ‘mid-sole’, filler layer’ and ‘unitary upper assembly’.

Zeno Corp (Formerly Known As Tyrell Inc) & Anor v BSM-Bionic Solutions Management GmbH & Anor [2009] EWHC 1829 (Pat) (29 July 2009)

Wed, 29 Jul 2009 14:32:00 GMT

Z was entitled to damages for unjustified threats of patent infringement proceedings made by R to retailers of Zeno’s product. R’s patent, concerning a hand-held device used for topical heat treatment of insect bites and stings, was valid. Although the theory behind the device was dubious, it did not matter why it worked as long as there was a real beneficial effect. However, Z’s device for applying heat to acne lesions, which was specifically directed not to be used for insect bites, did not infringe because it operated at a significantly lower temperature to that specified in the patent and there was no evidence that it was capable of having a beneficial effect on insect bites. The letter from R’s solicitors to Z’s retailer amounted to a veiled threat of infringement proceedings.

Cranway Ltd v Playtech Ltd & Ors [2009] EWHC 1588 (Pat) (07 July 2009)

Tue, 07 Jul 2009 14:36:00 GMT

A patent concerning a home computer gaming system was revoked on grounds of (1) lack of novelty in light of the prior art; (2) obviousness over the common general knowledge and prior art; and (3) consisting wholly of excluded matter under s.1(2) of the Patents Act 1977, the subject matter being a computer program not claiming a technical effect.

Napp Pharmaceutical Holdings Ltd v Ratiopharm GmbH [2009] EWCA Civ 252 (01 April 2009)

Tue, 31 Mar 2009 23:00:00 GMT

An appeal, against a finding that R’s product did not infringe N’s patents relating to controlled-release formulations of a painkiller, oxycodone, was allowed. A cross-appeal, which claimed that the patents were invalid for added matter, failed. The case of PPG/Disclaimer (G1/03) (2004) EPOR 33 EPO did not vary the basic rule that an undisclosed disclaimer was permissible as not adding matter provided it was a mere disclaimer. If a disclaimer introduced by a divisional application did not add subject mater relevant to the invention, but merely excluded subject matter from protection, then it did not offend.

Scinopharm Taiwan Ltd v Eli Lilly & Company [2009] EWHC 631 (Pat) (27 March 2009)

Fri, 27 Mar 2009 00:00:00 GMT

An attack on the validity of the defendant’s patent failed. The patent related to a process for making gemcitabine, a drug used in cancer treatment. The process was not obvious in the light of the cited prior art and the patent was not insufficient.

Crosstown Music Company 1, Llc v Rive Droite Music Ltd & Ors [2009] EWHC 600 (Ch) (25 March 2009)

Wed, 25 Mar 2009 00:00:00 GMT

An agreement, by which song writers had assigned their copyright in compositions to a publisher so that they could be exploited and royalties collected, could and did provide for copyright to re-vest in the composers automatically upon expiry of a notice requiring the remedy of material breaches of the contract by the publisher. The composers had not behaved inconsistently by carrying on with the contract whilst having a right to have the copyrights back if the publisher did not remedy outstanding breaches.

AT&T Knowledge Ventures LP, Re [2009] EWHC 343 (Pat) (03 March 2009)

Tue, 03 Mar 2009 12:59:00 GMT

Two appeals against decisions of the Comptroller, that the devices claimed in two patent applications were not patentable, were both dismissed. The first patent application concerned computer software designed to provide a “content broker hosting service” to digital media suppliers. The second application concerned a mobile telecom network messaging system. The court assessed patentability ignoring the fact that the devices operated through computer programs, and found that neither invention provided any technical effect.

Novartis AG v Dexcel-Pharma Ltd [2009] EWHC 336 (Pat) (03 March 2009)

Tue, 03 Mar 2009 12:56:00 GMT

Novartis’ patent, claiming a pharmaceutical composition which was a microemulsion pre-concentrate comprising cyclosporine as an active ingredient, was held infringed by D’s product. The person skilled in the art would understand that the pre-concentrate need not itself be a microemulsion, but had to form a microemulsion when water was added. There was no technical reason therefore why the hydrophilic and lipophilic components had to constitute distinct phases in the pre-concetrate.

Belvac Production Machinery Inc v Carnaudmetalbox Engineering Ltd, Ch Div (John Baldwin QC), 26/2/09

Thu, 26 Feb 2009 13:01:00 GMT

A patent in the field of manufacture of cans for the drinks industry, which claimed machinery for introducing a neck into the upper body of a can, was invalid for lack of inventive step (but not for lack of novelty) and was not infringed by the defendant’s necking machines because their drive means were not “housed within an internal chamber defined within the shaft support portion” but were housed in an external chamber attached to the outside of the support means.

Generics (UK) Limited and others (Appellants) v H Lundbeck A/S (Respondents), [2009] UKHL 12

Wed, 25 Feb 2009 11:00:00 GMT

An organic compound, with the generic name of citalopram, was patented by the respondent. The patent expired. Citalopram was found to have a significant antidepressant effect.

Citalopram was known to be a racemate in that it existed as a mixture of two types of molecule, known as enantiomers, in equal proportions. Two enantiomers can have different properties from each other. The only way in which it is possible to tell whether the effects of the two enantiomers of a particular racemate differ, and if so how, is by obtaining relatively pure forms of each enantiomer and comparing them experimentally.

Accordingly, the notion of obtaining pure forms of each enantiomer of a racemate, which has a therapeutic, or other beneficial, effect, was obvious. The respondents took seven years to manufacture a relatively pure form of each of the two enantiomers of citalopram. After comparison of the two, the respondents found that virtually the whole of the therapeutic effect of citalopram lay in the (+)-enantiomer, which had the generic name escitalopram.

The respondents applied for, and obtained, the patent which is the subject of the present appeal (“the Patent”). The Patent primarily claims escitalopram which has been successfully marketed under the brand name Cipralex since 2002.

The three appellants all wish to market generic citalopram. They started these proceedings in 2005, claiming revocation of the Patent. The claims came before Kitchin J, who decided that, although the attacks based on lack of novelty and on obviousness failed, the attack on the Patent’s claim to the (+)-enantiomer succeeded on the ground of insufficiency. The Court of Appeal upheld the Judge’s conclusions on lack of novelty and obviousness, but reversed his decision on insufficiency. Accordingly, the court concluded that the main claim of the Patent, namely the claim to the (+)-enantiomer, was valid.

The only point in issue in this appeal is that on which the Court of Appeal disagreed with Kitchin J, namely whether the claim to the (+)-enantiomer was insufficient.

The House of Lords unanimously dismissed the appeal.

Generics (UK) Ltd & Ors v H Lundbeck A/S [2009] UKHL 12 (25 February 2009)

Wed, 25 Feb 2009 00:00:00 GMT

An appeal, against a decision that claims in L’s European patent for an antidepressant drug were valid, was dismissed. The patent claimed the + enantiomer of the racemate drug citalopram, and described a method for separating the enantiomers. G argued that the product claim was insufficient because the only inventive step consisted of the method by which the product was made available, and superior methods had been found by others which owed nothing to that method. The House disagreed, finding that L’s technical contribution, put at its lowest, was to make available for the first time a product which had previously been unavailable, and on that basis L was entitled to claim the product. The reasoning of Lord Hoffman in Biogen v Medeva was of no assistance to G: It applied in the light of the very unusual nature of the claim in that case and was not of wider application.

ratiopharm (UK) Ltd v Alza Corp [2009] EWHC 213 (Pat) (12 February 2009)

Thu, 12 Feb 2009 00:00:00 GMT

A patent claiming a method and patch for transdermal administration, over a sustained period of time, of fentanyl for analgesic purposes, was infringed but invalid for obviousness over the common general knowledge.

Kelly & Anor v GE Healthcare Ltd [2009] EWHC 181 (Pat) (11 February 2009)

Wed, 11 Feb 2009 00:00:00 GMT

Two research scientists were awarded compensation under s.40 and 41 of the Patents Act 1977 for having devised an invention in the course of their employment which had been patented and had been of outstanding benefit to the employer. The invention was a compound which formed the basis of a radioactive imaging agent, “Myoview”, and it had been “outstanding” in the sense of ‘special’ and out of the ordinary; more than ‘substantial’, ‘significant’ or ‘good’. An employee’s share of the value of a patent might in principle lie somewhere in the range from nil to 33 per cent or beyond. In the instant case 3 % was a just and fair reward.

Zipher Ltd v Markem Systems Ltd & Anor [2009] EWCA Civ 44 (10 February 2009)

Tue, 10 Feb 2009 00:00:00 GMT

An appeal was allowed against a finding that Z had given a binding undertaking, in earlier patent entitlement proceedings, not to prosecute certain patent claims. On a proper analysis of the transcripts of the court proceedings, there had been no more than an offer of an undertaking to the judge, which was not taken up. Z had not given, and was not bound by, any undertaking. The Court of Appeal gave some guidance as to the principles to be applied.

Bending Light Ltd, Re [2009] EWHC 59 (Pat) (30 January 2009)

Fri, 30 Jan 2009 00:00:00 GMT

The UKIPO had been right to refuse to restore a patent which had lapsed due to non-payment of a renewal fee. The proprietor of the patent had not established that it had taken reasonable care to ensure that the fees were paid by the due date. In particular, the evidence did not show that the proprietor had not been in a financial position to make the payment.

Schutz (UK) Ltd v Werit UK: Schutz UK Ltd & Anr v Delta Containers Ltd, Ch Div (Kitchin J), 23/1/09

Fri, 23 Jan 2009 00:00:00 GMT

Schutz brought actions against Werit for patent infringement and against Delta for patent infringement, trade mark infringement and passing off. Delta was a tiny company which agreed to be bound by the judgment on infringement and validity in the proceedings against Werit. Delta applied for a stay of the trade mark and passing off proceedings pending the outcome of the action against Werit. Schutz argued that there was a considerable overlap of evidence and that separate hearings would result in a waste of costs. The court directed that the actions would be heard sequentially nine months apart.

Dyson Technology Ltd v Samsung Gwangju Electronics Co Ltd [2009] EWHC 55 (Pat) (22 January 2009)

Thu, 22 Jan 2009 00:00:00 GMT

Dyson succeeded in part in seeking revocation of two of Samsung’s patents concerning the use of a series of three cyclones to separate dust from air in a vacuum cleaner. A number of the claims of both patents were held to lack novelty or to be obvious in light of the prior art.

Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd & Anor [2009] EWHC 26 (Pat) (21 January 2009)

Wed, 21 Jan 2009 00:00:00 GMT

Virgin sued the manufacturer of its “Upper Class Suite” aircraft seating system for infringement of a patent and of unregistered design rights by supplying similar seating systems to other airlines. The patent was held valid but limited to “flip-over seats” (true flat bed) and so not infringed by the supply of the other seats. It was relevant that Premium had interpreted the patent in this way when trying to design round the patent: The way in which a real skilled third party interpreted the claim before any litigation arose was some indication of how the notional skilled reader would have understood it. In any event, on the construction proposed by Virgin the patent would be invalid for added matter. On the evidence, the other seats supplied by Premium had been independently designed and not copied from the Upper Class Suite, and so there was no infringement of design rights.

Actavis UK Ltd v Novartis AG [2009] EWHC 41 (Ch) (16 January 2009)

Fri, 16 Jan 2009 00:00:00 GMT

A patent, claiming a sustained release formulation of the known drug fluvastatin, was invalid for lack of inventiveness. Despite the lack of specific motivation for developing a sustained release formulation, the concept would have been present and the skilled team would not have rejected it out of hand.

Corevalve Inc v Edwards Lifesciences AG & Anor [2009] EWHC 6 (Pat) (09 January 2009)

Fri, 09 Jan 2009 00:00:00 GMT

A patent, claiming a prosthetic cardiac valve suitable for implantation by catheterization through a blood vessel, was valid but not infringed. The defence of ‘acts done for experimental purposes’ under s.60(5)(b) of the Patents Act 1977 could not necessarily be relied on if a defendant had mixed purposes. The preponderant purpose had to be experimental.

Hotel Cipriani SRL & Ors v Cipriani (Grosvenor Street) Ltd & Ors [2008] EWHC 3032 (Ch) (09 December 2008)

Tue, 09 Dec 2008 00:00:00 GMT

The Defendants’ operation of their restaurant “Cipriani London” infringed the Claimants’ UK and Community trade mark registrations for the word CIPRIANI (for goods and services including hotels and restaurants) and amounted to passing off, and the Claimants were also entitled to an injunction under s.56 of the Trade Marks Act 1994 because the CIPRIANI mark was a well-known mark. The Claimants’ marks had not been registered in bad faith and were valid. The Defendants could not rely on an “own name” defence.

Armour Group Plc v Leisuretech Electronics Pty Ltd [2008] EWHC 2797 (Pat) (14 November 2008)

Fri, 14 Nov 2008 00:00:00 GMT

A patent claiming a system for providing stereo sound to several rooms from a single source of audio signals was invalid for lack of inventive step. What mattered was whether the invention was technically obvious, not whether it was commercially obvious. The expert evidence established that the skilled person would have been well aware of the existence of Cat.5 cable and its suitability for carrying audio signals.

Corus UK Ltd v Qual-Chem Ltd [2008] EWCA Civ 1177 (29 October 2008)

Wed, 29 Oct 2008 00:00:00 GMT

Corus’ appeal, against a decision that Qual-Chem’s patent for a process in steelmaking was valid and infringed, was dismissed. The patent was not invalid for added matter because the expression “molten iron” in the original specification meant, in context, the iron with the supernatant slag. Corus’ process did not escape infringement because the words “being tailored”, in the claim relating to the pressure of conveying gas, did cover Corus’ supply of gas from the standard plant supply. It was enough that this supply had been selected so as to work.

Ancon Ltd v ACS Stainless Steel Fixings Ltd [2008] EWHC 2489 (Pat) (21 October 2008)

Tue, 21 Oct 2008 00:00:00 GMT

A patent for a channel assembly, with a bolt fixing which had a head with sides of a “generally elliptical cone shape”, was valid but not infringed by the defendant’s T-head bolt assembly.

Magical Marking Ltd & Anor v Holly & Ors [2008] EWHC (Ch) 2428 (16 October 2008)

Thu, 16 Oct 2008 00:00:00 GMT

This case followed a decision in which summary judgment had been entered against H, a former director and company secretary of M, for infringement of copyright, database right, and misuse of confidential information. H had entered M’s premises with an IT consultant, and had made and taken a complete copy of M’s business records and disabled M’s computer system by the insertion of passwords. In these proceedings the IT consultant was held also liable for infringement because he could not rely on the ostensible authority of H to instruct him. The abnormal circumstances of the conduct of the raid on M’s premises had to have raised in the mind of any reasonable IT consultant questions as to whether he was truly working for the company. An injunction and delivery up were directed, and if M sought damages it was directed that the IT consultant should be completely indemnified by H.

Les Laboratoires Servier & Anor v Apotex Inc & Ors [2008] EWHC 2347 (Ch) (9 October 2008)

Thu, 09 Oct 2008 00:00:00 GMT

The court assessed the compensatory damages to be awarded to Apotex as a result of it having been restrained by injunction from infringing Servier’s pharmaceutical patent, which was later held invalid. The method was to assess damages on a particular hypothesis and then adjust the award by reference to the percentage chance of the hypothesis occurring.

Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066 (08 October 2008)

Wed, 08 Oct 2008 00:00:00 GMT

The Comptroller had been wrong to refuse to grant a patent application concerning a method of accessing data in a dynamic link library in a computing device. The decision of the Court of Appeal in Aerotel v Telco (2006) EWCA Civ 1371 was followed notwithstanding that subsequent decisions of the Board of Appeal of the EPO had adopted an analysis which was more restrictive of the exclusion of computer programs, and which supported an approach disapproved in Aerotel. In the instant case, the claimed invention did make a technical contribution and was not excluded from patentability.

W L Gore & Associates GmbH v Geox SPA [2008] EWHC 2311 (Pat) (07 October 2008)

Tue, 07 Oct 2008 00:00:00 GMT

Actions for revocation, on grounds of lack of inventive step, of two patents relating to shoes with a waterproof and breathable sole and methods for making them, were dismissed and the patents upheld. A declaration of non-infringement by the claimant’s processes was granted in respect of one of the patents, but the other patent was found to be infringed.

Boulter, R. v [2008] EWCA Crim 2375 (07 October 2008)

Tue, 07 Oct 2008 00:00:00 GMT

In a criminal prosecution for counterfeiting, concerning CDs and DVDs bearing the logos of EMI and other companies, the defendant argued that the material bearing the trade marks was of such poor quality that there was no likelihood of the public being deceived or confused. Since this was a s.10(1) case of ‘identical mark’ and ‘identical goods’ (however poorly they may have been reproduced) there was no requirement for any likelihood of confusion. In any event, in a straightforward counterfeiting case there was no foundation for such a defence in authority and such a defence would assist the vice which the statute was intended to combat.

Oxonica Energy Ltd v Neuftec Ltd [2008] EWHC 2127 (Pat) (05 September 2008)

Fri, 05 Sep 2008 00:00:00 GMT

N held an international patent application claiming a method for improving engine fuel efficiency. O and N had entered a licence agreement whereby N agreed to licence the patent to O and to pass to O all of its know-how relating to the patent, and O agreed to use its specialist technology to manufacture the subject matter of the patent and to pay to N royalties on sales of the product. Thereafter, O developed another fuel additive, premised on a similar principle to the patented substance, which O believed fell outside the claims of N's patent so that royalties were not payable. It was held that O could not use the know-how passed to it by N in confidence to create products which purported to fall outside the patent claims, as this would be contrary to the business context of the licence. Further, O could not avoid paying royalties by selling to distributors in countries where there was no granted or pending patent. Therefore royalties were payable by O on the second product, and on products wherever sold.

Whirlpool Corporation & Ors v Kenwood Ltd [2008] EWHC 1930 (Ch) (04 August 2008)

Mon, 04 Aug 2008 00:00:00 GMT

The claimant was unsuccessful in an action for infringement of its Community trade mark consisting of the three-dimensional shape of its retro-design Kitchenaid food mixer, upon which the word “Kitchenaid” appeared. The bodywork of the claimant’s mixer did to an extent perform an independent distinctive role in the context of the registered mark as a whole, and there was a not insubstantial body of design-conscious consumers for whom the appearance of the claimant’s mixer functioned as an indication of trade origin without assisitance from the word “Kitchenaid”. However, Kenwood’s product was not sufficiently similar for there to be a likelihood of confusion, and although it might remind people of the claimant’s mixer, it did not harm the distinctive character or repute of the trade mark.

Lucasfilm Ltd & Ors v Ainsworth & Anor [2008] EWHC 1878 (Ch) (31 July 2008)

Thu, 31 Jul 2008 00:00:00 GMT

Copyright: The producers of the Star Wars films brought an action against Shepperton Studios and its director claiming infringement of copyright in designs for the Stormtrooper helmets and armour. Shepperton had made the original props for the film, based on drawings and a clay model supplied by the claimants. Shepperton had later sold replica helmets and armour to the public. The court found as follows: * The Stormtrooper helmet and armour were not sculptures as they lacked artistic purpose, and they were also not works of artistic craftsmanship as it was not part of the purpose of each item to appeal as a piece of art. * The claimants’ original drawings were “design documents” and the clay helmets were “models” within the meaning of s.51 CDPA and so the making of articles to the designs did not infringe copyright. * The defendants had not been sufficiently present in the US at any time to allow the US default judgment to be enforced in England. It was appropriate for the English court to consider the claims for infringement of US copyright. Having regard to US law, the three-dimensional items were not utilitarian or functional and the claim based on infringement of US copyright succeeded.

Eli Lilley & CO v Human Genome Sciences Inc, Ch Div (Kitchin J), 31/7/08

Thu, 31 Jul 2008 00:00:00 GMT

A patent which claimed a novel protein member of the TNF ligand superfamily, which had been discovered by computational biology, was invalid for lack of industrial applicability. The description of the protein’s activities and uses was not supported by data obtained by in vitro or in vivo studies, but was a prediction based upon what was known about other members of the TNF superfamily. This was no more than speculation about how the substance might be useful. The patent was additionally invalid for insufficiency and obviousness.

Handi-Craft Company & Anor v B Free World Ltd & Ors [2008] EWCA Civ 868 (30 July 2008)

Wed, 30 Jul 2008 00:00:00 GMT

A patent for a ventable baby bottle (preventing the creation of a partial vacuum during feeding) had been rightly revoked for obviousness where there was a prior patent for a soft drink bottle which worked in exactly the same way.

Minimax GmbH & Co Kg v Chubb Fire Ltd [2008] EWHC 1960 (Pat) (29 July 2008)

Tue, 29 Jul 2008 00:00:00 GMT

An appeal was allowed, reversing a finding that M’s application to register the trade mark MINIMAX for fire extinguishers was liable to be prevented by C’s rights under s.5(4)(a), ie passing off. It was held that it was possible for a party to have made no real use of a mark for a period of five years, yet to have retained goodwill in a name sufficient to support a passing off action. However, on the evidence, there was no proper basis to conclude that C retained sufficient residual reputation in the name MINIMAX for a passing off action to succeed.

Land Securities Plc & Ors v The Registrar of Trade Marks [2008] EWHC 1744 (Pat) (25 July 2008)

Fri, 25 Jul 2008 00:00:00 GMT

The applicant shopping centre operators’ appeals were allowed, holding that a specification of services in Class 35 which included “the bringing together for the benefit of others of a variety of retail outlets, entertainment, restaurant and other services, enabling customers to conveniently view and purchase goods and services and make use of such facilities in a shopping centre or mall” was acceptable because the services were “normally provided for remuneration” as required by the Directive and the Act, and the services were sufficiently clearly described.

Wise Property Care Limited v. White Thomson Preservation Ltd And Others [2008] CSIH 44

Thu, 24 Jul 2008 10:31:00 GMT

Reclaiming Motion:- On 26 February 2008, interim interdict was granted that prevented the defenders "...from passing off as those of the pursuers any service or business provided by the defenders and in particular by trading or carrying on business under or using in their brochures, business cards, stationery, promotional material and signage or in any other manner in connection therewith (including but not limited to any use on the internet) the names 'White', 'White Thomson', 'White Preservation', 'White Thomson Preservation' and 'White Thomson Preservation (Northern)' or any other word or combination of words colourably similar thereto and likely to cause confusion with the business of the pursuers trading as 'White Preservation, a division of Wise Property Care Limited'...". The defenders enrolled a motion for recall and on 7 March 2008 the motion for recall was refused. Here the defenders reclaimed against the refusal to recall the interim interdict. On behalf of the defenders it was submitted that the central question was whether the defenders' use of the title "White Thomson Preservation" had the potential for passing off their business as that of the pursuers and the the averments did not justify the granting of interim interdict. Further, the prima facie case was weak and did not justify interim interdict, the balance of convenience favouring the defenders. On behalf of the pursuers it was submitted that the Lord Ordinary had made the correct decision and had properly assessed what was likely to happen by way of confusion and damage to the pursuers' business if interim interdict was not granted. Here the court considered whether the Lord Ordinary erred and whether his discretion in reaching his decision should be interfered with.

esure Insurance Ltd v Direct Line Insurance Plc [2008] EWCA Civ 842 (23 July 2008)

Wed, 23 Jul 2008 00:00:00 GMT

Direct line, the owner of registered trade marks featuring a telephone on wheels for insurance and financial services, objected to the registration by esure of an image of a computer mouse on wheels for the same services. In the Registry, the hearing officer found that there was confusing similarity between the marks and upheld the objections under s.5(2)(b) and 5(3). On first appeal the judge reversed the finding under s.5(2)(b), finding that a ‘threshold’ level of similarity had to exist and that the hearing officer had been wrong to conclude that there was a likelihood of confusion in the absence of evidence. However, he upheld the decision under s.5(3) on the basis that there was no error of principle. The Court of Appeal unanimously reversed the judge’s decision under s.5(2)(b) and it was unnecessary to consider s.5(3). There was no ‘threshold’ condition of similarity and the hearing officer had been entitled to decide the issue of likelihood of confusion in the absence of evidence other than the marks themselves and the services to which they were applied. Except in the case of a specialist market, there was little to be gained from the evidence of an expert as to likelihood of confusion.

Rousselon Freres Et Cie v Horwood Homewares Ltd [2008] EWHC 1660 (Ch) (18 July 2008)

Fri, 18 Jul 2008 00:00:00 GMT

Following proceedings in which Rousselon successfully acquired a declaration of invalidity against Horwood’s trade marks featuring the word SABATIER, Horwood succeeded in obtaining a suspension of declaratory relief (revocation of its marks) pending the outcome of proceedings in which Horwood claims invalidity of Rousselon’s trade marks. The court had jurisdiction to suspend orders of revocation pending the outcome of any appeals, and there was no logical reason why the jurisdiction should not extend to other circumstances within recognized boundaries.

Conor Medsystems Incorporated (Respondents) v Angiotech Pharmaceuticals Incorporated and others (Appellants), [2008] UKHL 49

Wed, 09 Jul 2008 09:22:00 GMT

Angiotech and the University of British Columbia are joint proprietors of a European patent which claims, among other things, a stent coated with taxol for “treating or preventing recurrent stenosis". Conor Medsystems applied in both the UK and the Netherlands for revocation of the patent on the ground that the claimed invention was obvious. In the UK, at first instance and before the Court of Appeal, it succeeded. In the Netherlands, before the District Court of The Hague, it failed. Angiotech appealed to the House of Lords submitting that the Dutch court was right and that the patent should be declared valid.

Following the decision of the Court of Appeal, Angiotech and Conor reached a settlement and therefore Conor did not oppose Angiotech’s appeal. However, a patent confers proprietary rights in rem and the validity of a patent cannot be established simply by a judgment in default of opposition. The House of Lords therefore invited the Comptroller General of Patents to assist the court in presenting the arguments against the validity of the patent.

The only issue that the experts initially disagreed upon was whether it would have been obvious at the priority date to coat a stent with taxol to prevent or treat restenosis. However, Conor later went on to argue that the coating of the stent with taxol was not the inventive step. Conor argued that the inventive step lay in the “trying” a taxol combination to determine whether restenosis could thereby be treated. On the basis that the patent taught no more than that taxol was worth trying, Conor submitted that it added nothing to existing knowledge. The fact that it was worth a try was obvious.

The House of Lords noted that the question of obviousness was whether it was obvious to use a taxol-coated stent to prevent or treat restenosis.

The House of Lords agreed with the opinion of the Dutch court that Angiotech sufficiently clearly indicated in the patent that it was advantageous to use taxol and stated a reason for this – that taxol scored well when considering a solution to restenosis. The question was whether that was obvious and not whether it was obvious that taxol might have this effect.

The Dutch court was not addressing itself to whether taxol worked, or whether the specification proved that it would work, but to whether the specification taught that it should be used.

The House of Lords stated that neither the judge nor the Court of Appeal answered the correct question – whether it was obvious to use a taxol-coated stent to prevent restenosis.

The judge had held that the patent did not in any way demonstrate that taxol actually worked to prevent restenosis. The House of Lords agreed with the Dutch court that patent law did not require such a demonstration. It was not a sufficient reason for not applying the ordinary principles of obviousness to the claimed invention.

The House of Lords (unanimously) allowed the appeal.

Conor Medsystems Inc v Angiotech Pharmaceuticals Inc & Ors [2008] UKHL 49 (9 July 2008)

Wed, 09 Jul 2008 00:00:00 GMT

Patents: The House of Lords reversed a decision of the Court of Appeal which had found a European patent invalid for obviousness, and upheld the patent in line with a previous decision of a Netherlands court. The patent claimed a stent coated with taxol used to treat or prevent restenosis (in tissues such as arteries). The Court of Appeal had wrongly identified the concept which constituted the inventive step of the patent. The correct question was whether it was obvious to use a taxol-coated stent to prevent restenosis. There was no requirement that the specification had to demonstrate that the invention worked or to explain why it worked. It was sufficient if, for whatever reason, taxol-coated stents possessed the claimed property. A patent would not be granted for an idea which was mere speculation, but there was enough in the specification to demonstrate that it was plausible that taxol would work. The prior art mentioned taxol as one of a large and varied number of drugs which could be tried, but this was insufficient to make it obvious that taxol would prevent restenosis. Aside It was desirable that there should be uniformity in the way the different European national courts and the EPO interpreted the EPC 2000.

Leofelis SA & Anor v Lonsdale Sports Ltd & Ors [2008] EWCA Civ 640 (01 July 2008)

Tue, 01 Jul 2008 00:00:00 GMT

An appeal in a trade mark licensing matter was allowed in part. The licensee claimed damages for misrepresentation and breach of contract against the defendant trade mark owner, where the trade mark owner had purported to terminate the agreement, and it was alleged that the trade mark owner had failed to disclose pre-existing rights which had been granted to a third party. The Court of Appeal dismissed the trade mark owner’s appeal on the termination issue, holding that the trade mark owner’s notice had not effectively terminated the licence agreement because it was not clear and unequivocal but had attempted at the same time to keep the agreement effectively in place. On the issue of the undisclosed rights the trade mark owner’s appeal was allowed, because the trade mark owner had merely stated that it believed the third party licence was capable of termination and this belief was genuinely held.

Actavis UK Ltd v Janssen Pharmaceutica NV [2008] EWHC 1422 (Pat) (30 June 2008)

Mon, 30 Jun 2008 00:00:00 GMT

A revocation action was largely successful against a patent for manufacture of a medicament for potentiating the effects of blood pressure reducing agents. The patentee’s own earlier patent anticipated several of the claims of the later one. The same technical effect underlay both the old and new use and the new use was for the same purpose. Merely explaining the mechanism that lay behind the previously described use could not without more give rise to novelty. Further claims of the patent had been anticipated by matters discussed and shown by the patentee at a scientific conference. Only one claim remained valid.

Zipher Ltd v Markem Systems Ltd & Anor [2008] EWHC 1379 (Pat) (25 June 2008)

Wed, 25 Jun 2008 00:00:00 GMT

Z, the owner of various patents concerned with tape drives for printers and similar equipment, claimed for infringement following a series of earlier disputes with M over entitlement. In the earlier entitlement proceedings, counsel for Z had made an unconditional undertaking to amend patent 602 down to a claim no wider than claim 5, although this had not been recorded in any order. Accordingly, and even though the earlier court had not relied on the undertaking in deciding the entitlement claim, Z was precluded from making amendments to patent 602 that would result in claims wider than claim 5. In any event, patent 602 was invalid for insufficiency and lack of inventive step and would remain so even if amended, and some of the amendments would in any event have added matter.

Football Association Premier League Ltd & Ors v QC Leisure & Ors [2008] EWHC 1411 (Ch) (24 June 2008)

Tue, 24 Jun 2008 00:00:00 GMT

In proceedings for copyright infringement, arising from the supply and use in the UK of foreign satellite transmission decoder cards, the court decided that a number of questions should be referred to the ECJ for determination. In particular, guidance was required as to the interpretation of “illicit device” and “possession for commercial purposes” in Directive 98/84, and as to the legal test to be applied and circumstances to be taken into consideration in deciding whether the contractual restriction engaged Art.81 EC Treaty (Nice).

Higgs v R [2008] EWCA Crim 1324 (24 June 2008)

Tue, 24 Jun 2008 00:00:00 GMT

Higgs’ appeal was allowed, overturning his conviction for offences contrary to CDPA 1988 s.296ZB. Higgs sold modchips for games consoles, which enabled the consoles to play counterfeit CDs of games that had been copied without the relevant embedded codes. The prosecution’s case was not that the use of a modified console to play a game from an infringing CD would itself involve infringement of copyright by the reading of the copyright material into the console’s memory. Rather, the prosecution was based on a contention that by selling modchips Higgs opened the market to counterfeit games and so circumvented “effective technological measures” (“ETMs”) which prevented infringement. An ETM within the Act had to be one which physically prevented or restricted acts of copyright infringement. It was not enough if the measure merely had a general deterrent or discouraging effect on those who might be contemplating copyright infringement. There was no purposive need for a wider construction, since prosecutions could be brought successfully on the narrow construction if given the proper basis.

Patel v Allos Therapeutics Inc, Ch Div (Sonia Proudman QC), 13/6/08

Fri, 13 Jun 2008 00:00:00 GMT

P’s claim to block the implementation of an order of an approved panel of the Uniform Domain Name Dispute Resolution Policy was struck out. The panel had found that P’s registration of the domain name allostherapeutics.com, which he had not used for any purpose, was contrary to A’s legitimate interests as a proprietor of a US trademark, and that having regard to P’s past conduct of multiple domain name registrations, P had registered the domain name in bad faith. The panel ordered that the domain name be transferred to T. Before the High Court, P contended that the panel’s order was contrary to his rights under the ECHR 1950. The judge held that P had not pleaded or proved any cause of action giving him an interest in retaining the domain name. P’s Art10 right to freedom of expression was not unqualified and his misleading action could not be categorized as free speech.

Alan Nuttal Ltd v Fri-Jado Ltd & Anr, Ch Div (Peter Prescott QC), 12/6/08

Thu, 12 Jun 2008 00:00:00 GMT

A patent claiming a self-service display cabinet for hot food, which employed an air curtain in place of a door, was valid and infringed by the defendants' product which utilised a system in which air was drawn up rather than down. In order to be sufficient, a patent did not have to teach the skilled reader how to make all possible artefacts which could fall within its claims.

Trunature Limited v. Scotnet (1974) Limited & Scobie and Junor (Est 1919) Limited [2008] CSIH 33

Wed, 11 Jun 2008 14:31:00 GMT

Intellectual Property - Reclaiming Motion:- On 1 February 2007 the Lord Ordinary found the defenders liable to the pursuers in the expenses of the action on an agent and client basis, remitted the case to the auditor to tax and to report and decerned in favour of the pursuers for the expenses as taxed. At the same time the Lord Ordinary allowed the pursuers an additional fee. The pursuers lodged an account of expenses and the auditor approved the claim for outlays in full and allowed a lump-sum additional fee which represented an uplift of nearly 150% on the taxed amount of the solicitors' fees. The defenders objection to the auditor's report on the basis that:- "At taxation, the auditor made provision for payment of a significant additional fee in addition to payment of the expenses on an agent and client basis. As a result, the pursuer will recover an amount vastly in excess of the sum expended by it on legal expenses. In so providing, the auditor erred." It was submitted on behalf of the defenders that by reason of the additional fee the pursuers would recover a sum greater than they were obliged to pay to their solicitors. Here the court considered whether the additional fee would be retained by the pursuer or whether the pursuers' solicitors would receive a greater sum than they would have recovered from the pursuers on their account of fees and outlays.

Novartis AG v Dexcel-Pharma Ltd [2008] EWHC 1266 (Pat) (10 June 2008)

Tue, 10 Jun 2008 00:00:00 GMT

An interim injunction was granted, restraining Dexcel-Pharma from marketing a medicinal compound which was subject of a claim for infringement of a patent concerned with a micro-emulsion of cyclosporine. The patent had already been declared valid by the Court of Appeal in related proceedings (although this was very arguably not binding if new or different evidence were adduced in the subsequent proceedings). Novartis faced the greater injustice in suffering a potentially unlawful competitor that would affect its ability to recover lost market control, and in any event the order sought maintained the status quo during the relatively short space of time between the application and the date of trial.

LB Europe Ltd & Anr v Smurfit Bag in a Box SA & Anr, Ch Div (Roger Wyand QC), 6/6/08

Fri, 06 Jun 2008 00:00:00 GMT

The claimant L was entitled to damages from the defendant S for lost sales caused by threats, made by S to L’s primary customer, of proceedings for infringement of S’s patent for a form of tap for use with boxed wine. The patent was subsequently found to be valid but not infringed by L’s version of the tap. S’s threats had delayed the progress of the development of L’s product and so L could claim damages for sales lost between the date when sales would have commenced but for the threats, and the actual date sales commenced.

Meridian International Services Ltd v Richardson & Ors [2008] EWCA Civ 490 (24 April 2008)

Wed, 04 Jun 2008 00:00:00 GMT

An appeal was dismissed, finding that the judge had not erred in holding that an oral agreement did not contain an implied term that the copyright in computer software would belong to Meridian. The existence of a draft contract, the terms of which were still open to negotiation, was an insufficient basis for the implication of a term. The judge had been right to reject Meridian’s argument on the ground that it looked at the matter entirely from Meridian’s point of view, and to hold that no implied term was necessary from the point of view of the respondents.

Actavis UK Ltd v Merck & Co Inc [2008] EWCA Civ 444 (21 May 2008)

Wed, 21 May 2008 00:00:00 GMT

An appeal was allowed, holding that a swiss-type claim to the use of a known drug, finasteride, in a new dosage to treat a known disorder, was not invalid for lack of novelty and was not obvious. Swiss-type claims were allowed under the EPC where the novelty was conferred by a new dosage regime. Bristol Myers Squibb did not contain a clear ratio that a swiss-type claim lacked novelty if the only difference between it and the prior art was a new dosage regime for a known medical condition, and the court was free to follow Genentech and allow the appeal. In any event, the special circumstances arising from the creation of the European Patent system required the court to recognize a further exception to the rules of precedent.

Controller of HM Stationery Office & Anor v Green AMPS Ltd [2008] EWCA Civ 588 (08 May 2008)

Thu, 08 May 2008 00:00:00 GMT

The defendant provider of wind turbines had no arguable defence to a claim for infringement of Crown copyright in a database of ordnance survey maps. The database was licensed to UK universities, one of which was previously attended by an employee of the defendant. After the student left the university, the username and password he had used were cached on the defendant’s computers, and were used to download digital maps without payment. There was no s.29 defence because the defendant’s acts were for a commercial purpose and could not be described as fair dealing in view of the extent and covertness of the copying.

Interdigital Technology Corporation v Nokia Corporation & Anor [2008] EWHC 969 (Pat) (29 April 2008)

Tue, 29 Apr 2008 00:00:00 GMT

In advance of the trial of a preliminary issue to determine whether the court should grant declarations concerning the essentiality of certain patents, Nokia applied for disclosure of certain documents said to be commercially confidential, and the court determined the terms on which documentary disclosure would be made. It was held that Nokia’s solicitors would give an undertaking to retain the documents at their premises except to the extent that they were required for applications to court or for delivery to counsel. Named individual employees of Nokia would have access to the documents at the solicitor’s premises, against personal undertakings. Disclosure would not be extended to an additional firm of solicitors instructed by Nokia.

European Central Bank v Document Security Systems Incorporated [2008] EWCA Civ 192 (19 March 2008)

Wed, 19 Mar 2008 00:00:00 GMT

The appeal court upheld a finding that a patent, relating to a method of making documents that could not be accurately copied by standard devices, was invalid for added matter. The specification of the patent as filed did not disclose the overlaying onto an original image of a grid pattern with a pitch distance minutely different from that of a copier.

Symbian Ltd v Comptroller General Of Patents [2008] EWHC 518 (Pat) (18 March 2008)

Tue, 18 Mar 2008 00:00:00 GMT

An appeal was allowed, finding that the hearing officer had erred in excluding an invention from patentability because it was no more than a computer program. The invention related to a method of accessing data held in a dynamic link library in a computing device. It was not limited to the processing of data but involved re-organisation of the dynamic link library in the operating system. The hearing officer had taken too narrow a view of the technical effect of the invention.

Interdigital Technology Corporation v Nokia Corporation & Anr, Ch Div (Floyd J), 17/3/08

Mon, 17 Mar 2008 00:00:00 GMT

In an action for declarations that a number of Nokia’s patents were not essential to the third generation mobile telecoms standard in Europe, Nokia’s re-amended defence contained a denial that the claimant had any legitimate or sufficient interest in the proceedings to entitle it to discretionary or declaratory relief. The claimant’s application to strike out these denials was refused because it was not possible to say that the matters advanced by Nokia could not be material. The case was concerned with a developing area of law and special care needed to be taken when cutting out part of a case.

Digipos Store Solutions Group Ltd v Digi International Inc [2008] EWHC 3371 (Ch) (12 March 2008)

Wed, 12 Mar 2008 00:00:00 GMT

The Deputy Judge declined to interfere with the decision of the Hearing Officer to uphold opposition to the registration of the mark DIGIPOS for computer hardware including point-of-sale apparatus and software for use in the retail industry, based on earlier registrations for DIGI + Device and DIGI INTERNATIONAL for microcomputer hardware and software for data communications. The Deputy Judge expressed real doubts about the ultimate outcome of the global assessment but was unable to conclude that the Hearing Officer was plainly wrong in his approach or in his conclusion or that he made an error of principle.

Qualcomm Incorporated (A Delaware Corporation) v Nokia Corporation (A Finnish Company) [2008] EWHC 329 (Pat) (03 March 2008)

Mon, 03 Mar 2008 00:00:00 GMT

In an action for infringement of two patents, relating to an apparatus for controlling the way in which mobile telephones reduced power consumption by monitoring a channel for incoming messages intermittently, and relating to a method for the correction and limitation of the transmitted power of a mobile telephone, the first patent was held invalid for lack of novelty and obviousness over an earlier Japanese patent, and the second patent was held invalid for lack of inventive step and for insufficiency. Judgment for the defendant.

Honda Motor Co Ltd & Anr v Derek Neesam & Ors, Ch Div (Sir Andrew Park), 28/2/08

Thu, 28 Feb 2008 00:00:00 GMT

Honda made summary judgment applications against a number of defendants who sold Honda motorbikes in the UK which had been imported from outside the EU. An issue arose as to consent in relation to bikes which had been purchased from Honda’s Australian subsidiary. Honda had the evidential burden as to whether the Australian subsidiary imposed a relevant restriction on resales abroad. It was held that there was insufficient evidence that such a restriction was imposed during various periods and that for those periods there was implied consent to the parallel importation.

Note in the Case of Trunature Ltd v. Scotnet (1974) Ltd & c [2008] CSOH 30

Thu, 21 Feb 2008 09:06:00 GMT

Note of Objections:- On 1 February 2007 the court found the defenders liable to the pursuers for expenses on an "agent and client" basis following proof in which the court found in favour of the pursuers. The court also found the pursuer entitled to charge an additional fee in terms of certain of the heads of Rule of Court 42.14(3). The result of that taxation was that the pursuers were entitled to recover,£130,000 for outlays, and £225,968.81 in respect of solicitors fees. The defenders' Note of Objections stated:- "At taxation, the Auditor made provision for payment of a significant additional fee in addition to payment of the expenses on an agent and client basis. As a result, the pursuer will recover an amount vastly in excess of the sum expended by it on legal expenses. In so providing, the Auditor erred." On 4 February 2008 the defenders' Note of Objections to the Auditor's Report on the Pursuers' Account of Expenses was repelled and on 8 February 2008 the court acceded to the defenders motion for leave to reclaim against that decision.

Boehringer Ingelheim Kg & Anor v Swingward Ltd [2008] EWCA Civ 83 (21 February 2008)

Thu, 21 Feb 2008 00:00:00 GMT

The Court of Appeal resumed hearing appeals following the judgment of the ECJ on questions referred. The cases concerned trade mark infringement actions against parallel importers to the UK from other Member States of pharmaceuticals, which involved either over-stickering or re-boxing in boxes designed for the UK market, and the replacement of information leaflets with new ones complying with UK regulations. The original trade mark was generally re-affixed on the leaflets and sometimes on the boxes, and the boxes/stickers indicated that the goods had been procured in the EU and repackaged by the importer. It was held that the importers activities had to satisfy the conditions in Bristol Myers Squibb v Paranova C-427/93, including the fourth condition of non-damaging presentation. Whether co-branding and de-branding caused damage was a question of fact for the national court. The evidence in relation to co-branding did not establish any damage. Total de-branding, where all traces of the trade mark were removed, was clearly not an infringement because there was simply no use of the trade mark. The specific partial de-branding complained of had not been shown to be damaging. The court deferred making a final decision, awaiting the outcome of a further reference to the ECJ in another case on the issue of whether the presentation of the new packaging was to be measured against the principle of minimum intervention or only against whether it was such as to damage the reputation of the trade mark.

Fearns (t/a Autopaint International) v Anglo-Dutch Paint & Chemical Company Ltd. & Ors [2008] EWCA Civ 99 (19 February 2008)

Tue, 19 Feb 2008 00:00:00 GMT

In an appeal against a decision that the claimant Fearns had consented to the defendant supplying his customers direct with car paint products when Fearns had been unable to do so because of indebtedness, it was held that he judge had been entitled to draw from the evidence the conclusion of consent. However, on the issue of causation, the appeal was allowed to the extent that Fearns should not be prevented from seeking to establish, if he could, loss of his business flowing from unlawful acts of supply by the respondent outside the limits of the consent.

Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc [2008] EWHC 263 (Ch) (19 February 2008)

Tue, 19 Feb 2008 00:00:00 GMT

An appeal against a decision to grant a declaration of invalidity in respect of certain of Budvar’s UK trade marks was allowed in part. The parties’ use over many years of BUDWEISER and BUD was honest concurrent use and neither party was exclusively entitled to the goodwill. Both parties applied for registered trade marks, Anheuser-Busch in 1979 for “beer, ale and porter”, and Budvar in 1989 for “beer, ale and porter; malt beverages”. Anheuser-Busch applied under the 1994 Act s.47 for a declaration of invalidity on the basis of its earlier marks. It was held that the period of acquiescence by the proprietor of the earlier mark for the purposes of s.48 began with the date of registration of the later mark, and so Anheuser-Busch’s application did not fall foul of s.48. Further, at common law, Anheuser-Busch had not acquiesced in Budvar’s use of either trade mark. The doctrine of estoppel was inapplicable and there was no abuse of process. On the evidence there was no proven risk of confusion between beer and malt beverages. Therefore the appeal was allowed insofar as the declaration extended to malt beverages.

Knorr-Bremse Systems for Commercial Vehicles Ltd v Haldex Brake Products GmbH [2008] EWHC 156 (Pat) (07 February 2008)

Thu, 07 Feb 2008 00:00:00 GMT

Patents: In proceedings for a declaration of non-infringement of a patent relating to brake systems, an application to stay proceedings, on grounds that the parties were bound by an agreement conferring exclusive jurisdiction on the German courts, was refused. The agreement was between H and the parent company of K, but K was not a party.

Autonomy Corporation Ltd v The Comptroller General of Patents, Trade Marks & Designs [2008] EWHC 146 (Pat) (06 February 2008)

Wed, 06 Feb 2008 00:00:00 GMT

A patent application had been rightly refused where the claim was for a computer program as such and also consisted of the display of information. The claimed invention was a method of analyzing a file or document in an open window, searching the computer and other sources such as the internet, creating links to files with similar or relevant content, and displaying the links on the computer. This was in short a claim to a better search engine, and it was a paradigm example of a case in which the contribution fell squarely within excluded matter.

Eli Lilly & Company & Anor v 8pm Chemist Ltd [2008] EWCA Civ 24 (05 February 2008)

Tue, 05 Feb 2008 00:00:00 GMT

Where pharmaceuticals bearing a Community and UK registered trade mark were sent to customers in the United States from Turkey, via a UK processor, and the UK processor’s activities were all carried out under the Customs-approved inward processing relief procedure, the goods did not become “Community goods” and the marks were never used “in the course of trade” in the Community. As long as the Customs-approved procedure was followed, there was no “import” within the meaning of s.10 of the Trade Marks Act. The interim injunction was discharged.

Glaxo Group Ltd v Genentech Inc & Anor [2008] EWCA Civ 23 (31 January 2008)

Thu, 31 Jan 2008 00:00:00 GMT

An appeal against a judge’s refusal to grant a stay of patent revocation proceedings, pending the outcome of EPO opposition proceedings, was dismissed. The risk of duplication of national and EPO proceedings was inherent in the EPC regime, and if the likelihood was that proceedings in the Patents Court would achieve a resolution of validity issues significantly sooner than the EPO proceedings, it would normally be a proper exercise of discretion to decline to stay the national proceedings.

M-Systems Flash Disk Pioneers Ltd v Trek 2000 International Ltd & Anor [2008] EWHC 102 (Pat) (28 January 2008)

Mon, 28 Jan 2008 00:00:00 GMT

A patent, relating to a portable data storage device for connecting to a computer via its UBS port a device with a solid state (flash) memory, had been rightly revoked. Claim 1 as granted was anticipated, and the hearing officer had been entitled to find that the proposed amendments were inadmissible as they would result in added matter. The doctrine of issue estoppel would in theory apply to the foreign judgment indicated by the patentee, but it would be unjust now to allow the patentee to rely on the estoppel point as the failure to have raised it earlier would cause the respondent real prejudice.

Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks [2008] EWHC 85 (Pat) (25 January 2008)

Fri, 25 Jan 2008 00:00:00 GMT

A patent application was remitted for further consideration where the hearing officer had been wrong to approach the application on the basis that claims to computer programs were necessarily excluded by Art 52 of the European Patent Convention. In a case where claims to a method performed by running a suitably programmed computer were allowable, then in principle a claim to the program itself should also be allowable.

D Jacobson & Sons Ltd. v Globe Gb Ltd. Globe Europe Sas [2008] EWHC 88 (Ch) (25 January 2008)

Fri, 25 Jan 2008 00:00:00 GMT

In a trade mark infringement action it was held that J’s registered trade mark for a wing flash logo for shoes was valid and infringed by G’s use of a similar logo on the sides of trainers. The wing flash logo was an unusual design and was inherently distinctive. Brand recognition in the trainers market was informed to a significant degree by logos displayed on the side of shoes, and the average consumer would have considered G’s side design to be a mark of origin rather than mere decoration. On the evidence G was also liable for passing off.

Cinpres Gas Injection Ltd v Melea Ltd [2008] EWCA Civ 9 (24 January 2008)

Thu, 24 Jan 2008 00:00:00 GMT

In patent entitlement proceedings, an appeal was allowed, holding that the claimant was not barred by res judicata from pursuing the claim. There was a cause of action estoppel because both ss.12 and 37 were concerned with the same claim to entitlement. However, the judge’s finding that the inventor of the patent had perjured himself in the earlier proceedings was sufficient to provide an exception to the doctrine of res judicata as the earlier judgment had been obtained by the fraud of a party. The inventor’s fraud could be treated as that of his employer as they made a common cause against the claimant and the employer had adopted the fraud.

The Football Association Premier League Ltd v QC Leisure & Ors [2008] EWHC 44 (Ch) (18 January 2008)

Fri, 18 Jan 2008 00:00:00 GMT

The FA brought an action for copyright infringement based on the unauthorized supply and use of non-UK broadcast decoder cards which enabled customers to view encrypted broadcasts of Premier League football matches filmed in the UK. It was held that it was not appropriate to grant summary judgment to the claimant because the defendant had an arguable defence that the prohibition, contained in the licence agreements relied on by the claimant, was contrary to Art 81 of the EC Treaty (Nice).

Murphy v Media Protection Services Ltd [2007] EWHC 3091 (Admin) (21 December 2007)

Fri, 21 Dec 2007 00:00:00 GMT

Ms Murphy, the licensee of a public house, appealed by way of case stated against a decision of the Crown Court to uphold her conviction for offences contrary to the CDPA 1988 s.297, in connection with her screening of live premier league football matches. The matches took place in the United Kingdom and were filmed and originally transmitted from the UK. Ms Murphy subscribed to a licensed Greek broadcaster because it charged less than the licensed UK broadcaster. It was held that the UK was the ‘place from which the broadcasting service was provided’ because the initial transmission of the programme took place in the UK. The evidence confirmed that Ms Murphy knew that the UK broadcaster was the exclusive provider of the programmes in the UK and that it charged a subscription fee. Accordingly the offence of dishonestly receiving a programme provided from the UK with intent to avoid payment of a charge was made out and the appeal was dismissed.

Nokia Corp v Interdigital Technology Corp [2007] EWHC 3077 (Pat) (21 December 2007)

Fri, 21 Dec 2007 00:00:00 GMT

The court granted a declaration that the inventions claimed in three out of four of the defendant’s patents in issue were not essential to the third generation mobile telecoms standard in Europe.

Crowson Fabrics Ltd v Rider & Ors [2007] EWHC 2942 (Ch) (20 December 2007)

Thu, 20 Dec 2007 00:00:00 GMT

It was held that two former employees of the claimant had been in breach of their duty of fidelity and had infringed database rights, by, whilst still employed, creating a document which contained names and addresses of the claimant’s suppliers, agents, and individually negotiated costs for each transaction, all with a view to setting up a rival business. The claimant had failed to establish that the information alleged to be confidential was confidential such that it could not be used in a legitimate way post-termination of employment. However, it was no defence to a claim for breach of an obligation of fidelity for an employee who had taken a customer list to say that the information was publicly available.

RXWorks Ltd v Paul Hunter, Ch Div (Daniel Alexander QC), 20/12/07

Thu, 20 Dec 2007 00:00:00 GMT

In an action for unjustified threats of proceedings for infringement of a registered trade mark VET.LOCAL (for computer software, hardware etc), a declaration of non-infringement was granted. The specialist computer systems supplied by the claimant for the administration of veterinary practices used “vet.local” as a local network domain name. It was held that such use was buried in the workings of the systems such that it was likely only to be encountered to a significant extent by computer professionals administering the system, and that the sign was not inherently likely to denote trade origin, and was not used in a context which made it likely to be taken as an indication of trade origin.

Sectrack NV v Satamatics Ltd & Anor [2007] EWHC 3003 (Comm) (19 December 2007)

Wed, 19 Dec 2007 00:00:00 GMT

Breach Of Confidence: An application to set aside injunctions obtained on a without notice basis, restraining the defendants from communicating with the claimant’s customers and from using the claimant’s confidential information, was refused. There was a seriously arguable case, damages would not be an adequate remedy for the claimant, and it was also doubtful whether either defendant would be able to meet an award of damages. In the circumstances the balance of convenience was very firmly in favour of maintaining the status quo and continuing the injunction until trial.

Societa Esplosivi Industriali SPA v Ordnance Technologies (UK) Ltd & Ors [2007] EWHC 2875 (Ch) (05 December 2007)

Wed, 05 Dec 2007 00:00:00 GMT

In an action for breach of contract, breach of confidence and breach of copyright and design right, arising from the breakdown of an agreement to develop new multiple warhead systems, amongst other findings it was held that it was a necessary component of an allegation within the documents class of CDPA s.226(1)(b) that it be proved that, at the material time, what the alleged infringer had done or authorized to be done, by way of making a design document recording the design, was done with the purpose that articles to the design should thereby be enabled to be made.

Uk Channel Management Ltd v E! Entertainment Television Inc & Anor [2007] EWHC 2813 (Ch) (21 November 2007)

Wed, 21 Nov 2007 00:00:00 GMT

In proceedings for passing off and infringement of the trade mark “UKTV Style” by the launch of a new channel under the name “The Style Network”, the claimant was granted permission to amend the Particulars of Claim to add allegations relating to the ways in which the claimant had used the mark, an allegation that the defendant had used the word “Style” in a font similar to that used by the claimant, and some additional relief. The amendments did not hugely enlarge the scope of the action and did not prejudice the defendant’s position or case preparation.

Les Laboratoires Servier & Anor v Apotex Inc & Ors [2007] EWHC 1538 (Pat) (11 July 2007)

Sat, 17 Nov 2007 00:00:00 GMT

A patent claiming the pharmaceutical composition of perindopril (for treatment of hypertension), and the process for its preparation, was invalid for lack of novelty and obviousness, and was revoked in its entirety. The claim for infringement would otherwise have succeeded.

DLP Ltd, Re UK Intellectual Property Office Decision [2007] EWHC 2669 (Pat) (16 November 2007)

Fri, 16 Nov 2007 00:00:00 GMT

The proprietor of a UK patent, relating to a shower tray designed to enable access by those seated in a wheelchair, sought an opinion from the Comptroller under s74A of the Patents Act 1977 as to whether a competitor’s product infringed the patent. The opinion was negative and the patentee requested a review of the opinion. The hearing officer agreed with the overall conclusion of the examiner’s opinion. The patentee appealed under s.74B. It was held that although the opinion of the Comptroller was not binding and did not estop any party from raising any issue in litigation, the provision of the opinion was nonetheless of great value and so it would be wrong to decline the appeal jurisdiction. However, the appeal function was limited to considering whether there was an error of principle or a conclusion which was clearly wrong. The examiner and hearing officer had directed themselves correctly in law and the opinion was a reasonable view to have taken.

Wobben v Vestas-Celtic Wind Technology Ltd [2007] EWHC 2636 (Pat) (14 November 2007)

Wed, 14 Nov 2007 00:00:00 GMT

Two European patents concerning the control of the emission of power from wind turbine systems to an electricity network were found to be invalid for obviousness and insufficiency, and the proposed amendments were not allowed as they added subject matter. A third patent was allowed to be amended as to one of the claims.

Frandsen & Ors v Bestnet Europe Ltd & Ors [2007] EWHC 2455 (Ch) (25 October 2007)

Thu, 25 Oct 2007 00:00:00 GMT

Breach of Confidence: It was not appropriate to strike out an action for breach of confidence because it was not possible to decide without a proper examination of the facts that the claimants’ case was without merit. It was not clear that the defendants had not made use of the claimant’s confidential information in the development of its mosquito net product which had similarities to that of the claimants.

Yeda Research and Development Company Ltd v. Rhone-Poulenc Rorer International Holdings Inc & Ors [2007] UKHL 43 (24 October 2007)

Wed, 24 Oct 2007 00:00:00 GMT

An appeal was allowed in patent entitlement proceedings. (1) The broad principle laid down in Markem Corp v Zipher Ltd [2005] RPC 31 was wrong and that decision was overruled. In a claim to entitlement to a patent it was enough for the claimant to show he was the inventor, and there was no requirement to show the registered proprietor had procured the registration by breach of some other rule of law. (2) An amendment of a claim of joint entitlement to a claim of sole entitlement did not amount to the assertion of a new claim, and therefore the amendment could be made after the expiry of the two-year limitation period.

Vector Corporation v Glatt Air Techniques Inc [2007] EWCA Civ 805 (19 October 2007)

Fri, 19 Oct 2007 00:00:00 GMT

An appeal was allowed against the grant of permission to amend a patent. The patent concerned a product and process for spraying liquid onto fluidized particles in order to coat them. The additional claim added subject matter and was disallowed.

Novartis AG v Ivax Pharmaceuticals UK Ltd, CA (Buxton, Jacob, Hughes LJJ), 18/10/07

Thu, 18 Oct 2007 00:00:00 GMT

An appeal was dismissed against a finding of non-infringement of a valid patent, which claimed a micro-emulsion formulation of an immuno-suppressant drug called cyclosporin. While 14% of the active ingredient in the Defendant’s composition was in the form of micro-emulsion sized particles, the Defendant’s dispersion did not amount to a micro-emulsion. The Defendant’s product was not ‘an inefficient product sufficient for commercial purposes’, but was one which was nearly everything that the patentee was trying to avoid.

Jules Rimet Cup Ltd. v The Football Association Ltd. [2007] EWHC 2376 (Ch) (18 October 2007)

Thu, 18 Oct 2007 00:00:00 GMT

The court determined a number of preliminary issues arising in an action between the FA and the applicant for registered trade marks consisting of the words WORLD CUP WILLIE on their own and together with a cartoon lion dressed in the England football strip. “World Cup Willie” was the name of the cartoon lion mascot for the 1966 World Cup. It was held that (1) the FA owned the copyright in the original lion drawing and so could prevent anyone else from registering a reproduction of it as a trade mark. However, J’s lion device did not reproduce a substantial part of the original drawing and so did not infringe copyright, even though the work was not an independent design. (2) The FA had goodwill in the lion cartoon mascot arising from its use in connection with the 1966 World Cup, it had not abandoned the goodwill, and the available evidence established that after 40 years there was still residual goodwill sufficient to found a passing off action. Further, there was a clear likelihood of confusion. (3) The application for the trade mark registration was in bad faith, applying the subjective and objective elements of the test.

Teva Pharmaceutical Industries Ltd & Anor v Merrell Pharmaceuticals Inc & Anor [2007] EWHC 2276 (Ch) (12 October 2007)

Fri, 12 Oct 2007 00:00:00 GMT

Patents claiming an acid metabolite of an anti-histamine drug, formed by metabolism of the drug in the liver, were invalid as lacking in novelty and inventive step.

Monsanto Technology LLC v Cargill International SA & Anor [2007] EWHC 2257 (Pat) (10 October 2007)

Wed, 10 Oct 2007 00:00:00 GMT

A patent relating to a gene encoding an enzyme which conferred resistance to the herbicide “Round Up” was not infringed by the importation of soya bean meal made from beans carrying the gene. There was present in the cargo of meal some genomic DNA that included the gene and some of it was double-stranded. However, this was not an isolated gene sequence as required by some of the claims, and did not react with certain antibodies as required by the other claims.

University of Queensland v Siemens Magnet Technology Ltd & Anor [2007] EWHC 2258 (Pat) (10 October 2007)

Wed, 10 Oct 2007 00:00:00 GMT

The claimant’s patent, concerning magnets for use in magnetic resonance imaging, was revoked for added matter because there had been no disclosure in the application as filed that the magnets in question had a common inner radius, and the use of that phrase to characterize the invention in the claims of the patent as granted added subject matter. The added matter could not be removed by amendment as this would widen the scope of the claims. The patent claims also covered what was obvious from the prior art.

Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936 (10 October 2007)

Wed, 10 Oct 2007 00:00:00 GMT

An appeal was allowed against a decision that P’s registered Community design for an air freshener spray container had been infringed by R’s product. It was sufficient to avoid infringement if the accused product was of a design which produced a different overall impression. There was no policy requirement that it be ‘clearly’ different. It was legitimate to compare the registered design and the alleged infringement with a reasonable degree of care. The possibility of imperfect recollection had a limited part to play in the exercise. In the instant case, the similarities between the products were at too general a level to say fairly that they would produce on the informed user the same overall impression.

L'Oreal SA & Ors v Bellure NV & Ors [2007] EWCA Civ 968 (10 October 2007)

Wed, 10 Oct 2007 00:00:00 GMT

Bellure and others appealed against a decision that they had infringed UK and Community trade marks by their marketing of ‘smell-alike’ perfumes, and use of comparison tables listing the famous brands against their own products. The appeal court found that neither the image nor the essential function of the trade marks was adversely affected by the appellants’ marketing. There was no tarnishing or blurring of the trade marks and the owner’s sales were not impaired, but the appellants did derive a commercial advantage from their use of the marks. A number of questions were referred to the ECJ concerning the scope and meaning of Articles 5 and 6 of Directive 89/104 in this context. The appeals were stayed pending the ECJ’s reply.

Knight, R (on the application of) v HM Comptroller-General of Patents, Trade Marks & Designs [2007] EWHC 2264 (Admin) (09 October 2007)

Tue, 09 Oct 2007 00:00:00 GMT

An application had been filed under the Patent Co-operation Treaty with two pages missing, which contained the claims. The applicant was notified that the application did not contain a part which ‘on the face of it’ appeared to be a claim. The applicant requested that either a section of the ‘abstract’ or a numbered list concluding the ‘description’ should be treated as a set of claims. These requests were declined, and that decision was upheld at a subsequent hearing. The court found on judicial review that that the decision of the Comptroller was not irrational and did not contain an error of law. It was not the role of the receiving office to carry out a detailed analysis of the application to determine whether it contained something that could form a claim.

Siemens Schweiz AG v Thorn Security Ltd [2007] EWHC 2242 (Ch) (04 October 2007)

Thu, 04 Oct 2007 00:00:00 GMT

The claimant’s European patent, for a printed circuit board having a particular protective coating, was valid and infringed. The correct approach to competing English and German versions, where there was a perceived difference between the meaning of words used, was to interpret both the original and the translation as though they were independent documents. The version which gave the narrower protection would be treated as the authentic one. The non-registration of a transfer of ownership of the patent did not limit the recovery of damages under the old s.68 of the Patents Act because the transfer had taken place by the operation of the doctrine of universal succession.

Bignell (t/a Just Employment (a firm)) v Just Employment Law Ltd. [2007] EWHC 2203 (Ch) (02 October 2007)

Tue, 02 Oct 2007 00:00:00 GMT

A claim for trade mark infringement and passing off was dismissed, and the claimant’s registered trade mark JUST EMPLOYMENT was declared invalid under s.47 as being contrary to s.3(1). The mark was descriptive of the services in the specification and had not acquired the requisite distinctiveness in relation thereto. The claimant had built up a small goodwill under the trade mark but this was entirely local and the claimant was wholly unknown in most parts of the country.

Research in Motion UK Ltd v Visto Corporation, Ch Div (Patten J), 1/8/07

Wed, 01 Aug 2007 00:00:00 GMT

R, which markets the Blackberry, issued proceedings in the UK for revocation of a patent owned by V for a system of synchronizing email across a network, and also issued parallel opposition proceedings in the EPO. V applied to stay the English proceedings pending the outcome of the opposition proceedings. The stay was refused because there was no underlying reason for giving primacy to the EPO proceedings; the English proceedings were at an advanced stage and ready for trial in January whereas the EPO proceedings were expected to take up to 5 years; and there was a need for commercial certainty at the earliest opportunity.

Research In Motion UK Ltd v Visto Corp [2007] EWHC 1921 (Pat) (01 August 2007)

Wed, 01 Aug 2007 00:00:00 GMT

Arrow Generics Ltd & Anor v Merck & Co, Inc [2007] EWHC 1900 (Pat) (31 July 2007)

Tue, 31 Jul 2007 00:00:00 GMT

Where the European Patent Office allowed an application to proceed to grant and the patent was published in the Office’s bulletin and entered on the UK register, but the UK designation had already been withdrawn by the patentee, the patent had never been granted in the UK and the Court had no jurisdiction to make a declaration that it was invalid.

Arrow Generics Ltd & Anor v Merck & Co, Inc [2007] EWHC 1900 (Pat) (31 July 2007)

Tue, 31 Jul 2007 00:00:00 GMT

Cantor Gaming Ltd v Gameaccount Global Ltd [2007] EWHC 1914 (Ch) (31 July 2007)

Tue, 31 Jul 2007 00:00:00 GMT

The defendant had breached the terms of a limited licence granted by the claimant to use two computer programs, and had thereby also infringed the claimant’s copyright. It was appropriate to grant a final injunction notwithstanding the questionable proportionality of the proceedings to the matters at stake. The injunction was not unjust to the defendant because it involved only enforcing what it had already undertaken not to do by contract, and had taken steps to ensure was not done in the future.

Cantor Gaming Ltd v Gameaccount Global Ltd, Ch Div (Daniel Alexander QC), 31/7/07

Tue, 31 Jul 2007 00:00:00 GMT

Interdigital Technology Corp v Nokia Corp, Ch Div (Pumfrey J) 25/7/07

Wed, 25 Jul 2007 00:00:00 GMT

An application for an order that N comply with a request for further information was refused. The information sought was full facts and matters relied on in support of N’s allegations that each of 28 patent claims was essential to the ‘Release 5’ mobile telephony standards. The request required a statement of case on all the features of each claim, including features which barely mattered. The court held that once N’s pleading had set out what was said to be the essential feature of each claim it was limited to that plea. The application requested N to set out material which related to no pleaded case, and would not be acceded to in the exercise of the courts’ discretion.

Interdigital Technology Corp v Nokia Corp, Ch Div (Pumfrey J) 25/7/07

Wed, 25 Jul 2007 00:00:00 GMT

Wrenn & Anr v Landamore, Ch Div (Robert Englehart QC), 23/7/07

Mon, 23 Jul 2007 00:00:00 GMT

Where there was an informal relationship in which L wrote software for audio interfaces which were marketed by W through his company, on the evidence L was not an employee within the meaning of the CDPA; it was more likely than not that W had promised L a per unit reasonable royalty in addition to hourly fees; W was entitled to an exclusive licence to use the software, and L was obliged to provide access to W to the source code.

Wrenn & Anr v Landamore, Ch Div (Robert Englehart QC), 23/7/07

Mon, 23 Jul 2007 00:00:00 GMT

Green Lane Products Ltd v PMS International Group Ltd & Ors, Ch Div (Lewison J), 19/7/07

Thu, 19 Jul 2007 00:00:00 GMT

It was determined as a preliminary issue that, as concerns the issue of novelty for the purposes of Community Registered Designs, the ‘sector concerned’ is the whole of the prior art and is not limited to the sector specified in the application for registration. One of the compelling reasons for this was that once a design is registered the monopoly extends across all classes of goods. In the instant case the design in question was a design for spiky plastic balls and the application cited use in laundry dryers. The same design had for two years prior to the application been used as massage balls.

Green Lane Products Ltd v PMS International Group Ltd & Ors, Ch Div (Lewison J), 19/7/07

Thu, 19 Jul 2007 00:00:00 GMT

Nichia Corporation v Argos Ltd, CA (Pill, Rix, Jacob LJJ), 19/7/07

Thu, 19 Jul 2007 00:00:00 GMT

An appeal was allowed against a refusal to order the patentee to disclose documents concerning the making of the invention in issue. It was arguable that, where obviousness was being considered, what the inventor actually did was irrelevant; however, such evidence was admissible as secondary evidence. As such, it was prima facie disclosable in standard disclosure.

Riemann & Co & Ors v Linco Care Ltd [2007] EWHC 3466 (Ch) (14 June 2007)

Sat, 14 Jul 2007 00:00:00 GMT

The proprietor of Community trade marks for the word P60, in various forms in respect of once-a-day sunscreen, applied for an interim injunction restraining the defendant from selling a rival product at a cheaper price in similar packaging under the mark C20. In the circumstances, the balance of convenience marginally favoured the grant of the injunction because the risk of irreparable harm to the proprietor if no injunction was granted was greater than the risk to the defendant of it was granted. It was doubtful that sophisticated retailers would misinterpret the nature of an interim injunction and it would be wrong in principle for the court to shrink from the grant of an otherwise just injunction because of an apprehension that it would be misinterpreted by third parties.

Riemann & Co & Ors v Linco Care Ltd [2007] EWHC 3466 (Ch) (14 June 2007)

Sat, 14 Jul 2007 00:00:00 GMT

Luxim Corp v Ceravision Ltd [2007] EWHC 1624 (Ch) (09 July 2007)

Mon, 09 Jul 2007 00:00:00 GMT

An appeal was allowed against a decision of the Comptroller-General of Patents refusing a request that it should decline to deal with patent entitlement proceedings in favour of the High Court. The Comptroller was wrong to state that the discretion to decline to deal should be exercised sparingly and not simply on the ground that the case was difficult or complex. The correct test was that it should appear to the hearing officer that the question was more properly to be determined by the Court.

esure Insurance Ltd v Direct Line Insurance Plc [2007] EWHC 1557 (Ch) (29 June 2007)

Fri, 29 Jun 2007 00:00:00 GMT

On appeal, Direct Line’s objection to the registration of Esure’s device mark, consisting of a representation of a computer mouse on wheels, was upheld under s.5(3) based on Direct Line’s mark consisting of a telephone on wheels. There was no error of law in the hearing officer’s conclusion that the use of Esure’s mark would be detrimental to the distinctive character of Direct Line’s mark. The appeal was allowed in respect of the hearing officer’s decision under s.5(2)(b) because the hearing officer had not properly based his conclusion on evidence before him. However, this did not affect the result.

Pozzoli Spa v BDMO SA & Anor [2007] EWCA Civ 588 (22 June 2007)

Fri, 22 Jun 2007 00:00:00 GMT

An appeal was dismissed against a decision that a patent was invalid for obviousness and that had it been valid it would not have been infringed. The patent claimed a container that was capable of holding two or more CDs so that they overlapped, were held in their centres and could be removed individually. Obiter, nothing in the TRIPS Agreement required that permission to appeal had to be granted in all patent cases irrespective of the prospects of success.

Boehringer Ingelheim Ltd & Ors v Vetplus Ltd [2007] EWCA Civ 583 (20 June 2007)

Wed, 20 Jun 2007 00:00:00 GMT

An appeal was dismissed against the refusal of an interim injunction to restrain a competitor from using the claimant’s trade marks in comparative advertising. It was held that Art 10 ECHR (freedom of expression) was engaged, and so s.12(3) of the HRA 1998 imposed a threshold which had to be satisfied before a court could grant interim relief: The claimant had to show that it was more likely than not he would succeed at trial. That was the general rule for trade mark infringement in comparative advertising cases.

Triumph Actuation Systems LLC v Aeroquip-Vickers Ltd & Anor [2007] EWHC 1367 (Pat) (15 June 2007)

Fri, 15 Jun 2007 00:00:00 GMT

An application to amend a European patent was refused. Substantial material contained in the patent specification as originally applied for was excised from the patent as granted. It was held that it was correct to compare the proposed amendment and the application as filed, rather than with the specification of the patent prior to amendment. However, on the evidence, the proposed amendment claimed a new combination not described in either the application as filed or the patent as granted.

Glaxo Group Ltd v Genentech Inc & Anor [2007] EWHC 1416 (Pat) (15 June 2007)

Fri, 15 Jun 2007 00:00:00 GMT

The patentee applied to stay proceedings issued for the revocation of the UK designation of its European patent, because opposition proceedings had already begun in the EPO between the same parties based on the same grounds of invalidity. It was held that there was a mild presumption in favour of a stay, but in this case the balance of justice came down in favour of allowing the UK proceedings to continue to trial. A long delay was likely if a stay was granted, and this delay might cost the respondent $80 million. Obiter the current practice in patent cases was out of line with other commercial cases and it might be time for the Court of Appeal to examine the practice and determine whether it was justified.

Flashing Badge Co Ltd v Brian Groves, Ch Div (Rimer J), 14/6/07

Thu, 14 Jun 2007 00:00:00 GMT

Summary judgment was granted in part on a claim for infringement of copyright in the design of a number of novelty badges and their backing cards. It was held that the claimant’s drawings of the badges were ‘design documents’ within the meaning of s.51(3) but that each (apart from one, which had no surface decoration) incorporated a design for an artistic work. The s.51(1) defence did not apply to any infringement of the copyright in the graphic design which provided the surface decoration of the badges.

IGT v The Comptroller General of Patents [2007] EWHC 1341 (Pat) (07 June 2007)

Thu, 07 Jun 2007 00:00:00 GMT

An appeal was dismissed against the refusal of applications for four patents concerning systems for playing gambling games in which there was a ‘main game’ and a ‘bonus game’. The technical contribution of each of the applications fell wholly within the exclusion of the Patents Act s.1(2)(c) as being a scheme, rule or method for playing a game.

Actavis UK Ltd. v Merck & Co. Inc Rev 1 [2007] EWHC 1311 (Pat) (06 June 2007)

Wed, 06 Jun 2007 00:00:00 GMT

An action for revocation of a patent for lack of novelty succeeded. The defendant’s patent concerned the use of a drug called finasteride as a treatment for male pattern baldness. The defendant’s earlier patent had disclosed the therapeutic application, but in a much larger dose than claimed in the later patent. It was held that novelty could not reside in a new dosing regimen for treatment of the same disorder as previously disclosed.

Experience Hendrix LLC v Purple Haze Records Ltd & Ors [2007] EWCA Civ 501 (24 May 2007)

Thu, 24 May 2007 00:00:00 GMT

On a proper construction, the rights granted to a performer by the Copyright, Designs and Patents Act 1988 continued to subsist for the benefit of the estate of a performer who had died, whether or not the performer had died before the Act came into force. It was not a requirement for protection that a performance which took place before the commencement of the Act had to be in a country which was a ‘qualifying country’ at the date of the performance. It was sufficient that the country in which the performance took place became a qualifying country before the time of the infringement.

Andrew Knight v Beyond Properties Pty Ltd & Ors, Ch Div (David Richards J), 24/5/07

Thu, 24 May 2007 00:00:00 GMT

An action for passing off, based on rights in the word “Mythbusters”, failed. The word had been used in the title of three children’s books and brief television programmes, which involved the investigation of legends or stories. The word was in a sense descriptive of the books and programmes, but would not be used in ordinary speech to describe them, and so was capable of generating goodwill in that context. However, a claim in passing off could not be sustained to protect goodwill which a reasonable person would consider to be trivial. The goodwill which subsisted originally was on a very minor scale, and by the time the defendants’ programmes were made such goodwill had diminished to a trivial if any reputation.

Raytheon Company v Comptroller General of Patents, Designs and Trade Marks [2007] EWHC 1230 (Pat) (22 May 2007)

Tue, 22 May 2007 00:00:00 GMT

An appeal was dismissed against the refusal of a patent application concerning a new method and apparatus for inventory management. The patent provided for databases defining the layout of the facility and the items in it, and an interactive graphical map of the facility and its contents. The claimed invention was wholly within excluded subject matter under the Patents Act 1977 s1(2)(c) because certain aspects of the technical contribution were merely a computer program, and the remaining aspects were merely a method of doing business.

Associated Newspapers Ltd v HRH Prince of Wales [2006] EWCA Civ 1776 (21 December 2006)

Mon, 21 May 2007 00:00:00 GMT

The claimant obtained summary judgment on the remaining part of his claim against the respondent newspaper, for an injunction restraining breach of confidence and infringement of copyright relating to his journals. The remaining seven journals were not materially different from the Hong Kong journal in respect of which relief had already been granted.

Intel Corporation Inc v CPM United Kingdom Ltd [2007] EWCA Civ 431 (15 May 2007)

Tue, 15 May 2007 00:00:00 GMT

On appeal against a refusal of a declaration of invalidity on grounds of s.5(3) TMA, the Court of Appeal referred questions to the ECJ, based on the situation where the earlier mark had a ‘huge’ reputation for specific goods, and the later mark was for dissimilar goods. In particular, was it sufficient that the earlier mark would be ‘brought to mind’ by the average consumer encountering the later mark? The court also asked for general guidance on what factors were to be taken into account in deciding whether there was the requisite ‘link’, and what was required on order to satisfy the condition of detriment to distinctive character.

Generics (UK) Ltd & Ors v H Lundbeck A/S [2007] EWHC 1040 (Pat) (04 May 2007)

Fri, 04 May 2007 00:00:00 GMT

In an application for revocation of a European patent on various grounds, the claimants succeeded in part. The patent concerned an antidepressant drug which comprised a pure enantiomer of a drug which was previously available as a racemate. The claims of lack of novelty and inventive step failed, but two of the claims were held invalid for insufficiency because they covered all ways of making the pure enantiomer, which did not owe anything to the principle disclosed by the patent and was too broad.

Oneida Indian Nation's Application No.0308259, Re [2007] EWHC 954 (Pat) (02 May 2007)

Wed, 02 May 2007 00:00:00 GMT

A patent application was refused because the invention claimed fell within the business method exclusion. The claim concerned a computerized gaming apparatus which involved the computer generating and storing the results following a wager, and then displaying the results on request by the player. The advantages relied upon were advantages of a new method of doing business and fell wholly within the exclusion. Whilst they could be described as ‘technical’ they were merely the consequence of putting the new business method into effect. The hardware involved was standard and formed no part of the contribution.

Fearns (t/a Autopaint International) v Anglo-Dutch Paint and Chemical Co. Ltd & Ors [2007] EWHC 955 (Ch) (02 May 2007)

Wed, 02 May 2007 00:00:00 GMT

The claim arose out of the disruption of the claimant’s high quality paint shop franchise business, by reason of the UK distributor of the paint product selling direct to the claimant’s franchisees under the claimant’s mark AUTOPAINT. It was held that the defendants had infringed the claimant’s registered trade mark and were guilty of passing off and also breach of contract. However the claim for intentionally inflicting economic harm by unlawful means did not succeed because the defendants lacked the necessary intention to harm the claimant, and the claim for copyright infringement in the design and logo on the paint tins failed because the copyright was limited to 15 years by virtue of s.52 CDPA, and the tins did not fall into the exception for printed matter of a primarily literary or artistic character.

Douglas & Ors v Hello! Ltd & Ors: OBG Ltd & Ors v Allan & Ors: Mainstream Properties Ltd v Young & Ors, HL (Lord Hoffman, Lord Nicholls of Birkenhead, Lord Walker of Gestingthorpe, Baroness Hale of Richmond, Lord Brown of Eaton-under-Heywood), 2/5/07

Wed, 02 May 2007 00:00:00 GMT

Breach of Confidence: In one of three appeals considered together, OK’s appeal was allowed, finding Hello! in breach of confidence owed to OK in respect of photographs of the Douglas wedding. The obligation of confidence in the photographs was imposed on the guests for the benefit of OK as well as for the Douglases. Hello! Did not act in good faith and used the photographs to the detriment of OK. The other appeals related to the torts of wrongful interference with contractual relations and wrongful inducement of breach of contract. There could be no liability for interference with contractual relations where there had been no breach of contract. If the breach of contract was neither an end in itself not a means to an end but a foreseeable consequence, then it could not be said to have been intended. Both the appeals were dismissed, finding on the part of one respondent no intention to cause a breach of contract and in relation to the other that there had been no breach or non-performance of any contract.

Boehringer Ingelheim & Ors (Free movement of goods) [2007] EUECJ C-348/04 (26 April 2007)

Thu, 26 Apr 2007 00:00:00 GMT

An application for an interim injunction to restrain defamation and trade mark infringement was refused. The defendant had published an advertisement which compared the results of a laboratory analysis of various nutritional supplement products for dogs. The results showed that the claimant's product contained a low level of the active ingredient. The judge held it was impossible to say that the defendant would certainly not be able to justify the allegations, and it could not be said that the defendant acted maliciously or had a dominant improper motive. The Trade Marks Act 1994 s.11(2)(b) provided a defence to trade mark infringement.

Unilin Beheer BV v Berry Floor NV & Ors [2007] EWCA Civ 364 (25 April 2007)

Wed, 25 Apr 2007 00:00:00 GMT

The patentee’s appeal was allowed, finding that a decision of an English court, as to the patentee’s entitlement to damages/account of profits and costs after succeeding in infringement proceedings, was res judicata. It was not affected by subsequent opposition proceedings in the European Patent Office.

Red Dot Technologies Ltd v Apollo Fire Detectors Ltd, Ch Div (David Richards J), 24/4/07

Tue, 24 Apr 2007 00:00:00 GMT

The claimant applied for an interim injunction restraining the publication of a chart which the defendant had produced for the purpose of comparative advertising. Art 10 of the European Convention on Human Rights and s.12(3) of the Human Rights Act 1998 were engaged. However, for the practical reason that there was insufficient time to reach a proper view on whether the claimant would probably succeed at trial, the court had to adopt a lesser degree of likelihood of success. There was a sufficient likelihood of establishing infringement under s.10(3) of the Trade Marks Act to permit further consideration of the application for interim injunction. However, in the meantime the balance of prejudice was even between the parties, and the fact that the chart was already in use, together with Art 10 considerations, tipped the balance against granting the injunction at the present stage.

Baigent & Anor v The Random House Group Ltd [2007] EWCA Civ 247 (28 March 2007)

Wed, 28 Mar 2007 00:00:00 GMT

The claimants’ appeal was dismissed. The novel “The Da Vinci Code” (DVC) did not infringe any copyright in the claimants’ book “The Holy Blood and the Holy Grail” (HBHG). The judge had been correct to conclude that what had been taken from HBHG amounted to generalized propositions at too high a level of abstraction to qualify for copyright protection. The judge had been entitled to find that whatever elements may have been copied from HBHG, and even if this included the ‘central theme’ of HBHG, these elements did not amount to a substantial part of the work for copyright purposes.

European Central Bank v Document Security Systems Inc. [2007] EWHC 600 (Pat) (26 March 2007)

Mon, 26 Mar 2007 00:00:00 GMT

The defendant’s patent, for a method of preventing security documents from being accurately copied, was revoked as being invalid for added matter. The claims in the original application had been limited by amendment to include a requirement for a grid overlay, which had not been explicitly or implicitly disclosed in the application.

Independiente Ltd & Ors v Music Trading On-Line (HK) Ltd (t/a CD-WOW) & Ors [2007] EWHC 533 (Ch) (20 March 2007)

Tue, 20 Mar 2007 00:00:00 GMT

The defendants were found to be in contempt of court, and applications were granted for an enquiry as to damages arising from copyright infringement in breach of undertakings which had been made in settlement of proceedings. The subject matter was the sale via the internet to customers in the UK of CD and DVD recordings which had been intended for sale outside the EEA. Test purchases made by the claimants established beyond reasonable doubt that the defendants had supplied products in breach of the undertakings. The enquiry as to damages was not limited to damages flowing from breaches proven by test purchases, but extended to all acts of copyright infringement.

LB Europe Ltd. (t/a Dupont Liquid Packaging Systems) v Smurfit Bag In Box SA & Anor [2007] EWHC 510 (Pat) (15 March 2007)

Thu, 15 Mar 2007 00:00:00 GMT

A patent for tamper-evident sealed tap units for the boxed wine market was valid but not infringed.

Nova Productions Ltd v Mazooma Games Ltd & Ors [2007] EWCA Civ 219 (14 March 2007)

Wed, 14 Mar 2007 00:00:00 GMT

An appeal was dismissed, upholding a finding that there was no infringement of copyright in works associated with a computer game based on the game of pool. There was no general principle that whenever copying was found it must follow that a substantial part had been taken. The apparent reproduction of small, unimportant details was a starting point indicating copying, but those details alone would not mean that a substantial part had been copied. Council Directive 91/250 was clear that for computer programs, including preparatory work, ‘ideas’ were not protected. The claimant’s ideas, which the judge had found to have inspired some aspects of the defendant’s games, were too general to amount to a substantial part of the program.

Score Draw Ltd v Alan Finch, Ch Div (Mann J), 9/3/07

Fri, 09 Mar 2007 00:00:00 GMT

An appeal was allowed against the decision of a hearing officer not to declare invalid the registration of a trade mark for sports and leisure wear, which was in the form of the emblem of an organization which had formerly been the governing body for sport in Brazil. The mark had been used by the Brazilian football team until 1971. It was held that the mere fact that the badge was used to denote an affiliation or allegiance to the Brazilian football team did not in itself mean that the mark could not have trade mark meaning. However, the actual use of the badge over the years had robbed the badge of any capability of being an indication of trade origin.

Mastercigars Direct Ltd v Hunters & Frankau Ltd & Ors [2007] EWCA Civ 176 (08 March 2007)

Thu, 08 Mar 2007 00:00:00 GMT

An appeal was allowed against a decision that the parallel importation of Cuban cigars into the UK had infringed trade marks. The appellant had imported cigars into the UK, which had been purchased from a retail outlet in Cuba, which was permitted by the trade mark owner to sell up to $25,000 worth of cigars to an individual per transaction, and to provide documentation for export through Cuban Customs. The appellant’s consignment was seized by UK Customs at the instigation of the exclusive UK distributor. On appeal, it was held that the trade mark proprietor had consented to the goods being put on the market in the EEA. Consent could be implied, and ‘unequivocal’ did not mean that the defendant had to prove implied consent to the criminal standard. That the proprietor permitted the Cuban retailers to sell commercial quantities for export indicated unequivocally its consent to the use of the trade marks on the purchasers’ home markets.

Baxter Healthcare Corporation & Anor v Abbott Laboratories & Anor [2007] EWHC 348 (Pat) (02 March 2007)

Fri, 02 Mar 2007 00:00:00 GMT

A patent, concerning a method of preventing the degradation by a Lewis acid of a particular fluoroether, was invalid for insufficiency of description, anticipation by prior publication, and added matter.

Microsoft Corporation v P4 Com Ltd & Ors [2007] EWHC 746 (Ch) (21 February 2007)

Wed, 21 Feb 2007 00:00:00 GMT

The Defendants’ application for summary judgment, on its counterclaim for unjustified threats, was unsuccessful. The claim was for copyright and trade mark infringement and passing off arising out of the defendant company’s dealings in counterfeit goods. The Defendants alleged that the defendant company was a dormant company which had not been trading at the relevant time. The judge held that disclosure and cross-examination could cast a whole new light on the case, and the issue of whether the company was trading at the relevant time could not be decided on a summary basis.

Research In Motion UK Ltd v Inpro Licensing SARL & Ors [2007] EWCA Civ 51 (07 February 2007)

Wed, 07 Feb 2007 00:00:00 GMT

A patentee’s appeal was dismissed, upholding a finding that its patent for a computing system, which concerned how a small hand-held field computer could access the internet, was invalid for obviousness.

Cembrit Blunn Ltd & Anor v Apex Roofing Services LLP & Anor [2007] EWHC 111 (Ch) (05 February 2007)

Mon, 05 Feb 2007 00:00:00 GMT

In the context of a threatened claim by a roofing contractor (Apex) against a roofing materials manufacturer (C), concerning the alleged unsatisfactory quality of roofing tiles supplied, C corresponded with its parent company discussing possible settlement. Apex obtained a copy of the correspondence and circulated it. It was held that Apex’s actions amounted to infringement of copyright and breach of confidence. Apex’s disclosure of the letter was not justified in the public interest and had been used as a tactic to force C to capitulate.

Hachette Filipacchi Presse SA v Saprotex International (Proprietary) Ltd [2007] EWHC 63 (Ch) (24 January 2007)

Wed, 24 Jan 2007 00:00:00 GMT

An appeal was dismissed, upholding the hearing officer’s decision to allow the registration of the mark ELLE for knitting yarns, and rejecting an opposition by the proprietor of the trade mark ELLE for periodicals and women’s clothing. There was no reason to conclude that the degree of association was any more than the hearing officer had found.

Point Solutions Ltd v Focus Business Solutions Ltd & Anor [2007] EWCA Civ 14 (23 January 2007)

Tue, 23 Jan 2007 00:00:00 GMT

An appeal was dismissed against a decision rejecting a claim for a declaration that the claimant’s software did not infringe copyright in the respondent’s software. The claimant had failed to discharge the burden of showing on the balance of probabilities that its software was of independent design. The court indicated that it might have been open to the judge to put the respondent to an election between either making a positive case of copying, or accepting that the court would try only the single issue of whether the respondent had made an assertion of infringement, and that if the respondent had made such an assertion, it would be required to withdraw and not to repeat that assertion.

Ferag AG v Muller Martini Ltd [2007] EWCA Civ 15 (23 January 2007)

Tue, 23 Jan 2007 00:00:00 GMT

An appeal was allowed against a judge’s finding of no infringement and invalidity on grounds of obviousness. The patent claimed a method of cutting or trimming continuously conveyed, multilayered printed products. The judge had erred in failing to guard against hindsight and the danger of a step-wise approach to obviousness.

Angiotech Pharmaceuticals & Anor v Conor Medsystems Inc [2007] EWCA Civ 5 (16 January 2007)

Tue, 16 Jan 2007 00:00:00 GMT

A patentee’s appeal, against a decision that its patent was invalid for obviousness, was dismissed. The difference between the patent and the cited prior art was that the patent claimed a specific drug, taxol, from the class of drugs suggested in the prior art. On the information given in the patent, taxol was no more or less likely to be found to work in practice than any other drug in the class, and to name taxol was not to make an invention.

Hyundai Mobis Ltd v Exxonmobil Oil Corporation, App Person (Richard Arnold QC), 15/1/07

Mon, 15 Jan 2007 00:00:00 GMT

An appeal was allowed in part against a hearing officer’s rejection of Exxonmobil’s opposition to the registration of MOBIS in respect of goods including motor vehicle parts and engine oil filters. The hearing officer had failed to apply a proper global appreciation test to the question of likelihood of confusion. The opposition succeeded under s.5(2) in relation to those goods which were identical to those covered by Exxonmobil’s registration, and those goods which were related to engine oil. The hearing officer had not erred in holding that, under s.5(3), since Exxonmobil’s earlier mark was a Community mark, Exxonmobil was required to show a reputation in the European Community.

Special Effects Ltd v L'Oreal SA & Anor [2007] EWCA Civ 1 (12 January 2007)

Fri, 12 Jan 2007 00:00:00 GMT

An appeal was allowed against the decision that the defendants were barred by cause of action estoppel and issue estoppel from raising a counterclaim of invalidity as part of a defence to a trade mark infringement action, when the defendant’s privy had previously unsuccessfully opposed the registration of the claimant’s trade mark on similar grounds to those cited for invalidity. The Court of Appeal held that opposition proceedings were not a cause of action for the purposes of cause of action estoppel, and they were inherently not ‘final’ for the purposes of issue estoppel. The statutory provisions as to declarations of invalidity showed an intention by the legislature to exclude the principle of res judicata. In principle it was possible that a party who took advantage of the double opportunity to argue the same issues in opposition and in invalidity proceedings could be found to be abusing the process of the court, but circumstances would have to be unusual to justify such a finding, and on the facts of the instant case there was no abuse of process.

Associated Newspapers Ltd v HRH Prince of Wales [2006] EWCA Civ 1776 (21 December 2006)

Thu, 21 Dec 2006 00:00:00 GMT

An appeal was dismissed against the grant of summary judgment against the newspapers for breach of confidence and copyright infringement in respect of the Prince’s private journals. The journals were obviously confidential and private. It was significant that the copies of the journals had been passed to the newspapers by an employee of the Prince in breach of her contract of employment. The public interest in disclosure of the journals’ contents did not outweigh the public interest in employees respecting the obligations of confidence they had assumed. The claims for breach of confidence and breach of privacy were unanswerable. There was no arguable ‘fair dealing’ defence to copyright infringement.

Matthew Fisher v Gary Brooker & Anr, Ch Div (Blackburne J), 20/12/06

Wed, 20 Dec 2006 00:00:00 GMT

The organ soloist in the song “Whiter Shade of Pale” by Procul Harum was entitled to a declaration that he was a co-author of the work and the owner of a 40% share of the musical copyright. The organ solo was a distinctive and significant contribution to the overall composition and it was clear that the version devised by the claimant was the product of sufficient skill and labour and was sufficiently different from the earlier version to qualify in law as an original contribution. There had been no express or implied agreement between the claimant and the music publisher, and it would be wholly unjust to deprive the claimant of his interest in the musical copyright on the basis of estoppel, acquiescence or laches.

Roche Products Ltd & Anor v Kent Pharmaceuticals Ltd [2006] EWCA Civ 1775 (20 December 2006)

Wed, 20 Dec 2006 00:00:00 GMT

An appeal was dismissed against the grant of summary judgment for trade mark infringement against a parallel importer of pharmaceutical test kits. For Art 7 purposes the consent of a trade mark owner needed to be clear and unequivocal. In principle, it might be possible to establish through evidence that a mark on packaging, such as the CE mark, could be understood to operate as consent by the trade mark owner to marketing in the EU. However, the defendant’s evidence fell far short of establishing such a case. It would undermine much of the purpose of CPR Part 24 if a defendant could successfully resist summary judgment on the basis that it could obtain evidence to adduce at trial which could have been produced for the Part 24 hearing.

Target Fixings Ltd v Brutt Beteiligungsgesellschaft MbH & Ors, App Person (Richard Arnold QC), 20/12/06

Wed, 20 Dec 2006 00:00:00 GMT

An appeal was allowed against a hearing officer’s dismissal of an application for declarations of invalidity based on allegations of bad faith. The proprietor of the marks (T) had been the UK distributor for the German manufacturer (B) and had applied for the registrations at the end of that relationship, without B’s knowledge. The hearing officer had been wrong to reject the applications on the basis of a finding that the evidence had been inconclusive and so B had failed to discharge the burden of proof. The standard of proof was the balance of probabilities. A serious allegation was inherently improbable and so required more cogent evidence, but the standard of proof was the same. When proving bad faith it might be necessary and proper to rely on inference. In the circumstances, B had proved that T’s actions had fallen short of standards of acceptable commercial behaviour in seeking to monopolise the trade marks of another in its own name.

LG Phillips LCD Co Ltd v Tatung (UK) Ltd & Ors, CA (Lord Phillips LCJ, Neuberger, Leveson LJJ), 20/12/06

Wed, 20 Dec 2006 00:00:00 GMT

In an action for infringement of a patent entitled “Portable Computer” (concerning a way of mounting flat panel display panels into portable computers), proposed amendments to the claims were not allowed because they constituted added matter excluded under s.76 Patents Act 1977. Without the amendments it was conceded that the patent was invalid.

Halliburton Energy Services Inc v Smith International (North Sea) Ltd & Ors [2006] EWCA Civ 1715 (15 December 2006)

Fri, 15 Dec 2006 00:00:00 GMT

An appeal was dismissed against a finding that a patent relating to the use of computer simulation systems in the design of rotary cone drill bits was invalid for insufficiency. The patent could not be regarded as an enabling disclosure.

The Lunan Group Ltd v Edwin Co Ltd [2006] EWHC 3284 (Ch) (14 December 2006)

Thu, 14 Dec 2006 00:00:00 GMT

An appeal was allowed against a hearing officer’s refusal to register the trade mark FIORELLI on the basis that it was confusingly similar to an earlier mark FIORUCCI. The hearing officer had been wrong to suggest that an approach used to consider aural similarity could also apply to visual similarity. A person looking at a mark would look at it as a whole, and would not necessarily pay more attention to the beginning of a word than to the end. The hearing officer had also erred in refusing to take into account the absence of any actual confusion in the market place in which there had been parallel trading for many years.

Ash & Anor v McKennitt & Ors [2006] EWCA Civ 1714 (14 December 2006)

Thu, 14 Dec 2006 00:00:00 GMT

An appeal was dismissed against a decision injuncting further publication of part of a book written about Loreena McKennitt, a well-known folk singer, by her former friend, on grounds that Miss McKennitt had a reasonable expectation of privacy in the material. The Court of Appeal found that the judge had adopted the correct approach in finding that the material was confidential, and that the right to privacy was not in the circumstances outweighed by the interests of freedom of expression.

Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 (Ch) (13 December 2006)

Wed, 13 Dec 2006 00:00:00 GMT

Designs: A registered Community design for an air freshener spray dispenser was valid and infringed. The similarities between the overall visual impression created by the registered design and the defendant’s product were overwhelmingly greater than the differences. It did not matter that the registered design was of far greater quality than the defendant’s design – otherwise a poor quality imitation would escape infringement despite creating the same visual impression.

Microsoft Corporation v McDonald (Also Known As Gary A Webb) (t/a Bizads and Bizads UK) [2006] EWHC 3410 (Ch) (12 December 2006)

Tue, 12 Dec 2006 00:00:00 GMT

An application for summary judgment was granted under the Privacy and Electronic Communications (EC Directive) Regulations 2003, against a person who was responsible for the instigation of transmission of unsolicited emails, by offering for sale large databases of email addresses.

O2 Holdings Ltd & Anr v Hutchison 3G Ltd, CA (Mummery, Jacob LJJ, Sir Christopher Staughton), 5/12/06

Tue, 05 Dec 2006 00:00:00 GMT

It was appropriate to refer to the ECJ three questions relating to the limits on permissibility of the use of a registered trade mark in comparative advertising.

Nokia Corporation v Interdigital Technology Corporation [2006] EWCA Civ 1618 (05 December 2006)

Tue, 05 Dec 2006 00:00:00 GMT

An appeal was dismissed against a decision to allow the continuance of proceedings seeking declarations to the effect that a number of patents were not essential for compliance with the internationally agreed 3G standard for mobile phones.

# CC v AB [2006] EWHC 3083 (QB) (04 December 2006)

Mon, 04 Dec 2006 00:00:00 GMT

An interim injunction was granted restraining the respondent from publishing the fact of and details of the applicant’s adulterous relationship with the respondent’s wife. The respondent had admitted that his motivations for publication were spite against the applicant and a wish to make money for himself. There was no general rule that an adulterous relationship could not attract a legitimate expectation of privacy.

Milk Link Ltd v Almighty Marketing Ltd, App Person (Geoffrey Hobbs QC) 29/11/06

Wed, 29 Nov 2006 00:00:00 GMT

An appeal was dismissed against a hearing officer’s refusal to declare invalid a registration of the trade mark MOO JUICE for milk beverages. The hearing officer had found that at the material date the expression MOO JUICE was not in common parlance in the UK as a synonym for milk. Evidence of the meaning of the expression in American English usage in the United States did not weaken the conclusion that, on a localised assessment, the quirkiness of the designation was sufficient to individualise products to a single undertaking.

Peer International Corporation & Ors v Termidor Music Publishers Ltd & Ors, Ch Div (Lindsay J), 16/11/06

Thu, 16 Nov 2006 00:00:00 GMT

The claimants claimed to own the English copyright in a number of musical works by Cuban artists created between 1930 and 1945, through assignments to them from the composers and through documents signed by heirs to the composers. A Part 20 defendant argued that the agreements with the composers were voidable due to fraudulent misrepresentation and that the further deals with the heirs were invalid. It was held that the Part 20 defendant did not have locus standi to assert the avoidability of the agreements. The Part 20 defendant was a stranger to the contracts and the putative innocent parties to the contracts were not present. However, the declarations of ownership sought by the claimants were not granted because there might be parties who did have locus standi and who might wish to oppose the claims.

Monsanto Technology LLC v Cargill International SA & Anr, Ch Div (Warren J), 13/11/06

Mon, 13 Nov 2006 00:00:00 GMT

In a patent infringement action relating to genetically modified soyabean plants, the defendant’s application for summary judgment on the issue of infringement was refused. The determination of the application would have required a decision as to whether the processing of soyabean plants into the defendant’s imported soyabean meal was such that the essential characteristics were retained. In view of case management considerations it was not appropriate to do so.

Merz Pharma GmbH & Co. KGaA v Allergan Inc. [2006] EWHC 2686 (Pat) (30 October 2006)

Mon, 30 Oct 2006 00:00:00 GMT

An application for revocation of a patent was granted, because the patent was invalid for added matter, lack of novelty and obviousness. The patent claimed the use of botulinum toxins in medicines for relieving pain related to muscle activity.

Celem SA & Anor v Alcon Electronics Pvt Ltd. [2006] EWHC 3042 (Pat) (19 October 2006)

Thu, 19 Oct 2006 00:00:00 GMT

Permission had been correctly granted to serve outside the jurisdiction proceedings for infringement of UK intellectual property rights including a patent, unregistered designs and copyright, against a company in India, which sold or imported products into the UK.

Novartis Ag v IVAX Pharmaceuticals UK Ltd [2006] EWHC 2506 (Pat) (16 October 2006)

Mon, 16 Oct 2006 00:00:00 GMT

A patent relating to the formulation of cyclosporin, a drug used as an immunosuppressant for recipients of organ transplants, was not infringed. Cyclosporin was known to be almost completely insoluble in water, and the patent described a microemulsion pre-concentrate composition which aimed to overcome this difficulty. The defendant’s composition contained microemulsion-sized particles, but the dispersion was not a microemulsion, and there was no separately identifiable lipophilic phase.

Quads 4 Kids v Campbell, Ch Div (Pumfrey J), 13/10/06

Fri, 13 Oct 2006 00:00:00 GMT

An injunction was granted, based on an action for statutory threats of proceedings for infringement of a sequence of Community registered designs for a child’s dirt bike. Quads 4 Kids had been offering children’s quad bikes for sale on eBay. Campbell alleged the bikes infringed his design rights, and he availed himself of eBay’s VeRO system to prevent Q from selling them. This involved merely completing an online form recording the registration number of the designs. Publication of the registered designs had been deferred and C did not disclose the design file. Q argued that the registered designs were likely not to be valid. It was seriously triable that the use of the VeRO system amounted to an actionable threat, taking a wider view than previously as a result of the clear potential for abuse of registered rights which this system was open to. Substantial damage was being caused, which C was unlikely to be able to compensate.

Cinpres Gas Injection Ltd v Melea Ltd [2006] EWHC 2451 (Ch) (09 October 2006)

Mon, 09 Oct 2006 00:00:00 GMT

In an entitlement action between two companies who had each employed the inventor of a patented invention, it was found that the inventor had lied under oath in earlier Patent Office proceedings, and had in fact acquired and deployed knowledge of the invention while working for the applicant and not for the patentee. The true facts would have been capable of affecting the decision in the earlier proceedings, and the perjury was a material perjury as to a material matter. However, the patentee had not induced the inventor to commit perjury, and had not knowingly taken advantage of it. Therefore the earlier decision could not be impeached and it governed the issue of ownership of the patent.

L'oreal SA & Ors v Bellure NV & Ors [2006] EWHC 2355 (Ch) (04 October 2006)

Wed, 04 Oct 2006 00:00:00 GMT

The claimant luxury perfume companies succeeded in part in an action of trade mark infringement and passing off against the defendants who sold “smell-alike” perfumes. The smell of a fine fragrance was a characteristic of the product itself, and was not a part of a trade mark and was not protected by the tort of passing off. Two of the defendants’ products were packaged so as to be sufficiently similar to registered trade marks as to give rise to an association. This amounted to taking unfair advantage of the reputation of the marks under s.10(3) TMA, since the similarity was deliberate and the brands had been well promoted. The other claims failed because there was not sufficient similarity between the packaging and the registered marks as to be likely to cause confusion or to establish a link in the mind of the average consumer.

Les Laboratoires Servier & Anor v KRKA Polska SP Zo.o & Anor [2006] EWHC 2453 (Pat) (03 October 2006)

Tue, 03 Oct 2006 00:00:00 GMT

In an action for patent infringement an interim injunction was granted restraining the defendant, pending trial, from disposing of an allegedly infringing pharmaceutical product in the UK. There was a serious question to be tried, and the balance of convenience was in the applicants’ favour, particularly since there was a real risk of other manufacturers launching similar products, which would permanently erode the price of the drug, and since the defendant had not yet actually launched the offending product in the UK.

Bailey & Anor v Haynes & Ors [2006] EWPCC 5 (02 October 2006)

Mon, 02 Oct 2006 00:00:00 GMT

The claimants alleged infringement of UK and Community unregistered design rights (UDR) in a polyvinyl alcohol warp knitted ladder-resistant micromesh bait bag used to catch freshwater fish. It was held that the 3D structure was excluded from UK UDR protection under the ‘method or principle of construction’ exclusion. A challenge to subsistence of Community UDR based on functionality failed because the design was not the only design which was capable of achieving the function of containing fine bait in proscribed circumstances. However, there was no infringement because on the evidence the defendants had designed their own product independently.

Gail Boura & Anr v Nirvana Spa & Leisure Ltd, App Person (Richard Arnold QC), 18/9/06

Mon, 18 Sep 2006 00:00:00 GMT

In an appeal against a refusal to revoke two registrations of the trade mark NIRVANA for non-use, it was held that the hearing officer had not erred in finding that the proprietor’s use of the composite mark NIRVANA NATURAL was sufficient. The addition of the word “natural” did not alter the distinctive character of the mark NIRVANA because “natural” was descriptive, and did not change the conceptual impact of the registered marks.

Ian Fleming Publications Ltd v Danjaq LLC, App Person (Ruth Annand) 8/9/06

Fri, 08 Sep 2006 00:00:00 GMT

An appeal was dismissed, against the grant of an extension of time for the opponent to file evidence against a trade mark application for the mark YOUNG BOND. The opponent had filed a written request for an extension (on the last day of the time allowed for filing evidence) and the applicant objected to the extension. At the hearing, the opponent gave additional reasons justifying the extension. The extension was granted on the basis of the new reasons, and the applicant appealed on the ground that the hearing officer ought not to have taken into account the additional reasons, because they constituted a new request for an extension made after the time allowed. Held: it was desirable that all reasons sought to be relied upon should be advanced in writing ahead of the hearing, but this did not preclude the hearing officer from taking into account additional reasons advanced orally at the hearing.

Yeda Research and Development Co Ltd. v Rhone-Poulenc Rorer International Holdings & Anor [2006] EWCA Civ 1094 (31 July 2006)

Mon, 31 Jul 2006 00:00:00 GMT

An appeal was dismissed against a decision disallowing amendments to an entitlement claim outside the limitation period in s.37(5) of the Patents Act 1977. The amendment added a claim to sole ownership of the patent, where the existing claim was to joint ownership. The special interpretation provision in s.130(7) provided that s.37(5) had the same meaning as Art 23 of the Community Patent Convention as to the bringing of entitlement claims out of time, and it did not matter that the CPC had not actually been implemented.

Intel Corporation Inc v CPM United Kingdom Ltd, Ch Div (Patten J), 26/7/06

Wed, 26 Jul 2006 00:00:00 GMT

An appeal was dismissed against the refusal to grant a declaration of invalidity of the registration of INTELMARK for marketing and telemarketing services. The application was made on the basis that the use of the mark would take unfair advantage of or be detrimental to the distinctive character of Intel’s earlier marks INTEL and INTEL.INSIDE. To establish unfair advantage it was necessary to show that the making of the link between the marks had economic consequences beneficial to the user of the later mark. In relation to detriment, the association between the marks and the products/services might be detrimental to the strength and reputation of the earlier mark if it tarnished it by association or made it less distinctive.

Charles Seven v Christopher Gossage & Ors, Ch Div (Pumfrey J), 26/7/06

Wed, 26 Jul 2006 00:00:00 GMT

The claimant applied to show why her claims should not be struck out for failure to comply with an earlier court order. The claims were based on breach of confidence and plagiarism in relation to a concept for a television series and a manuscript. The application was refused. The serious step of striking out for procedural failure was entirely justified. There was no rational basis to the complaints and no objective support for the allegations.

Nova Productions Ltd v Mazooma Games Ltd & Ors [2006] EWCA Civ 1044 (25 July 2006)

Tue, 25 Jul 2006 00:00:00 GMT

In a pending appeal in an action for copyright infringement with respect to a computer game, an application to refer questions to the ECJ for a preliminary ruling was refused. The questions related to the inclusion of ‘preparatory design material’ as part of the meaning of ‘computer program’ in Council Directive 91/250 Art.1. It was held that there was a real prospect that the appeal could be decided on the facts without needing to consider questions of Community law, and if the appeal court did need to refer a question, this could be better formulated at the end of the appeal hearing.

Trunature Limited v. Scotnet (1974) Limited and Others [2006] CSOH 114

Thu, 20 Jul 2006 23:00:00 GMT

Prelimiminary Proof - Intellectual Property

Scholl Ltd v Lidl Stiftung & Co KG, App Person (Richards Arnold QC), 18/7/06

Tue, 18 Jul 2006 00:00:00 GMT

An appeal was allowed in part against the a decision to dismiss Lidl’s opposition to the registration of the mark CHIC FEET under s.5(4)(a) TMA, on the basis of its common law rights in the mark CHIC plus device. Lidl had used its mark in the UK since 1994 in respect of toiletries such as hair care products and anti-perspirants. It was held that the hearing officer had been too critical of Lidl’s evidence of turnover and expenditure on promotion of the products, which demonstrated a substantial goodwill. There was a likelihood of misrepresentation in relation to the relevant goods in Class 3, but Scholl’s mark could proceed to registration in respect of the remainder of the specification.

MacDonald v French Connection Group Plc, Ch Div (Briggs J), 14/7/06

Fri, 14 Jul 2006 00:00:00 GMT

In a claim for infringement of copyright in a fabric design, the claimant sought pre-action disclosure under CPR 31.16 of documents held by the defendant relating to sales of the allegedly infringing garments, with the purpose of enabling the claimant to estimate the likely value of the claim on the alternative bases of damages and account of profits, and thereby improving the prospects of achieving a compromise. Disclosure was ordered, on a more limited basis than that sought.

Easynet Group Plc v Easygroup IP Licensing Ltd, Ch Div (Mann J), 14/7/06

Fri, 14 Jul 2006 00:00:00 GMT

An appeal was dismissed against a hearing officer’s decision rejecting an opposition to registration of EASY.COM (in lower case) as a trade mark for a wide range of goods and services. The correct approach to assessing descriptiveness was to look at the mark as a whole to see if it was descriptive within s.3(1)(c) and whether the mark as a whole added something more than its parts. The test of overall impression was not qualified by concepts such as ‘unusualness’ or ‘out-of-the-ordinary’.

Baxter Healthcare SA & Ors v Bayer Corporation & Ors, Ch Div (Pumfrey J), 14/7/06

Fri, 14 Jul 2006 00:00:00 GMT

Baxter, the patentee applied for a stay of proceedings brought against it by Bayer for a declaration of non-infringement and for revocation of a European patent. Bayer’s opposition in the EPO to the grant of the patent had been rejected and an appeal was pending. The question was whether a stay was in the interests of justice. The main issue was one of costs, and where both parties were able to pay, the mere possibility of wasted costs did not justify a stay unless the costs were grossly disproportionate to the interests to be protected. The application was refused.

Vector Corporation v Glatt Air Techniques Ltd, Ch Div (Lewison J), 7/7/06

Fri, 07 Jul 2006 00:00:00 GMT

An action for revocation of a patent was dismissed. The patentee was allowed under s.75 of the Patents Act 1977, pre-trial, to amend claim 1 and to insert a series of independent claims, each one narrower than the last, since the amendments did not amount to added matter and there was no abuse of process. The patent was neither anticipated nor obvious in the light of the prior art. The court emphasized the request in the Patents Court Guide para 9(e) that important documents should be supplied to the judge in electronic format.

Citibank NA & Anr v Citybond Holdings Plc, App Person (Geoffrey Hobbs QC), 7/7/06

Fri, 07 Jul 2006 00:00:00 GMT

An appeal was allowed in part against the decision to dismiss Citibank’s opposition to the registration of CITYBOND, under ss.5(2)(b), 5(3) and 5(4)(a) TMA, on the basis of its earlier registered mark CITIBANK. There was a likelihood of confusion in relation to services in areas where banking and insurance services converged. The parts of Citybond’s specification which included insurance services, insurance brokerage and insurance consultancy were struck out, and the mark was allowed to proceed to registration in respect of the remainder of the specification.

Microsoft Corporation v Ling & Ors [2006] EWHC 1619 (Ch) (03 July 2006)

Mon, 03 Jul 2006 00:00:00 GMT

The claimant was granted summary judgment against the defendants for infringement of copyright and trade marks and passing off by trading in counterfeit products and instruments of deception. There was no real prospect that the defendants would be able to establish at trial that the claimant’s licensing system operated unreasonably in restraint of trade. Further, the defendants had no real prospect of resisting the claim for additional damages on the basis of flagrant infringement.

Ranbaxy (UK) Ltd. v Warner-Lambert Company Rev 1 [2006] EWCA Civ 876 (28 June 2006)

Wed, 28 Jun 2006 00:00:00 GMT

On appeal it was held that the trial judge had been right to refuse a declaration of non-infringement of a patent concerned with a cholesterol synthesis inhibitor, and had also been right to hold that a second related patent was invalid as anticipated by a prior application.

Pozzoli SPA v BDMO SA & Ors [2006] EWHC 1398 (Pat) (21 June 2006)

Wed, 21 Jun 2006 00:00:00 GMT

The claimant’s patent for a form of packaging multiple discs was invalid because obvious in the light of the prior art, and it was not infringed by the defendants’ product.

Ellerman Investments Ltd & Anor v Elizabeth C-Vanci & Anor [2006] EWHC 1442 (Ch) (16 June 2006)

Fri, 16 Jun 2006 00:00:00 GMT

Summary judgment was granted to the Claimant owners of the Ritz hotel and Casino in London, restraining the Defendants’ use of the domain names ritzpoker.net, .org, .info and .biz and ritzypoker.co.uk and .net, which all pointed to a website with gambling links called RitzPoker. There was no real prospect that the Claimant would fail to establish at trial that there was a likelihood of confusion with the Claimants’ earlier marks.

James Bourne & Ors v Brandon Davis, Ch Div (Mark Herbert QC), 15/6/06

Thu, 15 Jun 2006 00:00:00 GMT

The claimant held, as an individual, performer’s rights relating to the performances of a group of musicians of which he had been a member. Copies of a recording of the performances could not be made and distributed without the consent of the claimant or his assignee. It was possible that the individual performer’s rights could have become partnership property, even in the absence of an express agreement, but in the circumstances this did not assist D. Even if the performers’ rights had been partnership property, they had ceased to be so before issue of proceedings.

West Sussex County Council, R (on the application of) v Kahraman [2006] EWHC 1703 (Admin) (13 June 2006)

Tue, 13 Jun 2006 00:00:00 GMT

An appeal was allowed against a magistrates’ court’s finding that the defendant believed on objectively reasonable grounds that he was not infringing trade mark law. The defendant market trader had been visited by VAT inspectors and market inspectors and if anything had been wrong he had expected them to point it out. The divisional court held that a person who purchased goods bearing trade marks at very low prices from a person known only by his first name could not begin to discharge the burden of proof under s.92(5) of the Trade Marks Act 1994. A reasonable person whether experienced or not would not have taken the risk of selling the items in the circumstances

Citibank Na v The Comptroller General of Patents [2006] EWHC 1676 (Ch) (09 June 2006)

Fri, 09 Jun 2006 00:00:00 GMT

An appeal against a hearing officer’s refusal of a patent application under Patents Act 1977 s.1(2) was unsuccessful. The alleged invention was a system for detecting abnormalities in data used to evaluate financial risk, which worked by a statistical analysis. The invention was not a ‘method of doing business’, but it was a ‘mathematical method’.

Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd & Anor [2006] EWHC 1344 (Pat) (09 June 2006)

Fri, 09 Jun 2006 00:00:00 GMT

The claimant conservatory manufacturer was entitled to damages for patent infringement against the defendant, which had been a distributor of the claimant’s patented product but had later manufactured and sold a competing and infringing product. Damages were awarded for lost sales by C to D of the patented product, for royalties on the remaining sales made by D, and for price depression caused by the sales of D’s product.

Doncaster Pharmaceuticals Group Ltd.& Ors v The Bolton Pharmaceutical Company 100 Ltd [2006] EWCA Civ 661 (26 May 2006)

Fri, 26 May 2006 00:00:00 GMT

An appeal was allowed against the grant of summary judgment for trade mark infringement in respect of goods imported to the UK from Spain. The original trade mark owner had assigned the separate trade mark registrations in Spain and in the UK to separate entities in Spain and the UK. A trial preceded by disclosure was necessary in order to investigate whether there were economic links or the possibility of control between the original owner and the Spanish and UK assignees, which might prevent the enforcement of the trade mark in the circumstances.

Re Sony Ericsson MobileCommunications AB’s Application, App Person (Richard Arnold QC), 25/5/06

Thu, 25 May 2006 00:00:00 GMT

Sony applied to register two marks, F500 and F800, each mark consisting of a series of four marks, having three different lower case letters as suffices to the 2nd, 3rd and 4th mark in each series. The hearing officer’s decision, that the two sets of marks did not comprise two series so as to satisfy s.41(2) TMA, was upheld on appeal. The differences between the marks substantially affected the marks’ identities and were not so insignificant that they might go unnoticed by an average consumer.

Smithkline Beecham Plc Glaxosmithkline UK Ltd & Ors v Apotex Europe Ltd & Ors [2006] EWCA Civ 658 (23 May 2006)

Tue, 23 May 2006 00:00:00 GMT

In patent litigation, an interim injunction had been granted preventing D from dealing in the product which was claimed to infringe. C had given the usual cross-undertaking in damages. The patent was found valid but not infringed. D and the manufacturer of D’s product sought to claim damages in restitution on the cross-undertaking. The judge’s decision to strike out the claim was upheld on appeal. There was no rational basis for a non-party to claim in restitution in respect of benefits accrued to a ‘wrongful’ injunctor.

Phones 4U Ltd & Anr v Phone4U.co.uk Internet Ltd & Ors, CA ( Tuckey, Carnwath, Jacob LJJ), 19/5/06

Fri, 19 May 2006 00:00:00 GMT

An appeal was allowed against a judge’s finding that there was no passing off by the defendant. The judge had erred in the tests and considerations he applied, and contrary to his findings, C had established the requisite goodwill at the relevant date, and there had clearly been deception and damage to goodwill. The appeal against the finding of no trade mark infringement failed because it was clear that C’s trade mark registration was limited to certain colours.

Unilin Beheer BV v Berry Floor NV & Anr, PCC (Fysh QC), 18/5/06

Thu, 18 May 2006 00:00:00 GMT

An application to stay an inquiry as to damages for infringement of a patent, pending the final determination of opposition proceedings in the European Patent Office relating to the patent, was refused. It was held that as a matter of policy, the disposal of patent litigation ought not to depend on opposition business at the EPO. The stay was declined as a matter of discretion.

French Connection Ltd v Dennis Woodman, App Person (Richard Arnold QC), 17/5/06

Wed, 17 May 2006 00:00:00 GMT

Mr Woodman, acting in the public interest, had applied for a declaration that the trade mark FCUK was invalid on the ground that the registration was contrary to accepted principles of morality under s.3(3)(a) of the Trade Marks Act 1994. The hearing officer dismissed the application and Mr Woodman’s appeal was dismissed. FCUK was not a swear word but was capable of being seen as a swear word. French Connection had used the mark in a way which invoked the swear word in people’s minds. However, a mark was objectionable under s.3(3)(a) only if its use contravened a generally accepted moral principle by reason of its intrinsic qualities.

Aston Barrett v Universal-Island Records Ltd & Ors, Ch Div (Lewison J), 15/5/06

Mon, 15 May 2006 00:00:00 GMT

A claim by a former member of the band Bob Marley and the Wailers for a share of income from recordings and copyrights, brought on behalf of himself and his deceased brother, was dismissed. The claimant had previously compromised all the claims brought in his personal capacity. C’s brother had not been a party to the agreements upon which the claim was based.

In the Matter of Sensornet Ltd’s Application No.2375067, App Person (Richard Arnold QC), 11/5/06

Thu, 11 May 2006 00:00:00 GMT

The hearing officer had been wrong to refuse in its entirety an application to register a trade mark in a number of Classes, when grounds for refusal existed only in respect of some or all goods in Class 9. The application should be allowed to proceed in respect of the goods for which there were no grounds for objection, and it was not necessary for the applicant to amend the specification under s.39 for the acceptable part to proceed to be published.

Union des Associations Europeennes de Football & Ors v Briscomb & Ors, Ch Div (Lindsay J) 8/5/06

Mon, 08 May 2006 00:00:00 GMT

Summary judgment for copyright infringement was granted against the defendants, who copied and disseminated broadcasts of Champions League football matches, via their website www.sportingstreams.com.

Apple Corps Ltd. v Apple Computer, Inc [2006] EWHC 996 (Ch) (08 May 2006)

Mon, 08 May 2006 00:00:00 GMT

A claim for breach of a trade mark agreement was dismissed. The agreement delimited the parties’ worldwide exclusive rights to use their APPLE trade marks: C was exclusively entitled to use its marks for creative works in the record business, and D was exclusively entitled to use its marks for data processing and telecommunications. Where services in D’s field of use were capable of delivering content within C’s field of use, D was entitled to use the mark “on or in connection with” services to play or deliver musical content, provided the marks were not used “on or in connection with” physical media delivering pre-recorded musical content. It was held that “on or in connection with” required an association between the mark and the commercial origin of the subject matter. The presence of the logo of the download service would not be likely to be taken by the reasonable consumer as implying a trade association with the musical content beyond that of a retailer. D’s use of the apple logo on the server was a fair and reasonable use of the mark which did not unreasonably suggest an additional association with the creative works and which did not breach the agreement.

Aerotel Ltd v Telco Holdings Ltd [2006] EWHC 997 (Pat) (03 May 2006)

Wed, 03 May 2006 00:00:00 GMT

In an action for infringement of a patent for a telephone system, summary judgment was granted against the patentee on the counterclaim of invalidity. Although the system was revolutionary in the way telephone calls could be charged, the method was implemented using technology which had been available for some years. The patent described the use of known equipment in such a way as to amount to no more than a method of doing business. As such it was not a patentable invention.

Nokia Corporation v Interdigital Technology Corporation, Ch Div (Pumfrey J), 12/4/06

Wed, 12 Apr 2006 00:00:00 GMT

The court had jurisdiction to hear a claim for a declaration of non-essentiality in respect of certain patents which had been notified by the patentee to the European Telecommunications Standards Institute as being technically ‘essential’ to the standard being set for 3G mobile technology. The notification by the patentee involved a ‘formulated claim’ against potential users of the standard, so that the claim for a negative declaration was justiciable.

Sportswear Spa & Anor v Stonestyle Ltd [2006] EWCA Civ 380 (11 April 2006)

Tue, 11 Apr 2006 00:00:00 GMT

An appeal was successful against the striking out of a defence to a claim of trade mark infringement. The substance of the defence was that the claimants were not entitled to rely on s.12(2) of the Trade Marks Act 1994 (legitimate reasons for opposing further dealing in goods after first marketing in the EEA) because the object of bringing the infringement action was to enforce a distribution agreement which illegally partitioned the market within the EEA. The Court of Appeal held that, subject to proof of an 'appreciable effect' on inter-state trade, the allegation of breach of Art 81 EC Treaty could have sufficient nexus with the infringement action to constitute a defence. It was not established that Art 81 could provide only a claim and not a defence.

BSW Ltd v Balltec Ltd [2006] EWHC 822 (Ch) (11 April 2006)

Tue, 11 Apr 2006 00:00:00 GMT

An application for pre-action disclosure of design drawings belonging to a potential defendant to a design right and copyright claim was rejected. The applicant alleged that it was impossible for the respondent to have designed, produced and tested a range of products in a short period of time without copying the applicant’s designs. However, the applicant was unable to particularise its claim without pre-action disclosure of the respondent’s designs. The claim was speculative and based on uncorroborated statements of impression and theory not supported by expert evidence, and disclosure might damage the respondent, whose designs were secret and alleged to be valuable.

IVAX Pharmaceuticals (UK) Ltd v Chugai Seiyaku Kabushiki Kaisha [2006] EWHC 756 (Pat) (10 April 2006)

Mon, 10 Apr 2006 00:00:00 GMT

The patentee’s proposed amendments to the claims of a patent (for a method of producing a stable pharmaceutical containing the drug nicorandil) were not allowable because the amendments would introduce a qualitative and not merely quantitative change. The claims as they stood were invalid for obviousness in the light of the prior art.

In the matter of Howmet Research Corporation Patent, Ch Div (Pumfrey J), 6/4/06

Thu, 06 Apr 2006 00:00:00 GMT

An appeal was allowed against the Comptroller’s refusal to rescind the grant of a patent under Rule 100 of the Patents Rules 1995 in order to allow the patentee to file divisional applications. The Patent Office had been at fault in failing to send a letter EL26 to the patentee, and it was accepted that, but for that error, the patentee would have taken the step that was closed to it. That the applicant had been careless did not constitute a reason for denying it the safety net which ought to have been provided.

Macrossan v Comptroller-General Of Patents, Designs And Trade Marks 2005 [2006] EWHC 705 (Pat) (03 April 2006)

Mon, 03 Apr 2006 00:00:00 GMT

A decision refusing an application for a patent was upheld on appeal. The application claimed an automated method of acquiring the documents necessary to incorporate a company. In substance this was a computer program which automated the performance of a mental act. The contribution to the art consisted of subject matter which was excluded from patentability by s.1(2)(c) Patents Act 1977.

Liffe Administration and Management v Pinkava & Anor Rev 1 [2006] EWHC 595 (Pat) (24 March 2006)

Fri, 24 Mar 2006 00:00:00 GMT

US patent applications for a novel system allowing the trading on an electronic exchange of certain types of financial instruments belonged to the employer of the inventor. The employee had devised the system in the course of performing specifically assigned duties, and, in the circumstances, an invention might reasonably have been expected to result from the performance of the duties.

O2 Holdings Ltd. & Anor v Hutchison 3g Ltd [2006] EWHC 534 (Ch) (23 March 2006)

Thu, 23 Mar 2006 00:00:00 GMT

Although the claimant made out a prima facie case of trade mark infringement under Art.5(1)(b), the defendant successfully argued that it had a defence under Directive 97/55 on comparative advertising, because as a whole the advertising campaign was a fair and objective price comparison that did not take unfair advantage of or denigrate the claimant’s marks.

Special Effects Ltd v L’Oreal SA & L’Oreal (UK) Ltd, Ch Div (Sir Andrew Morritt C), 17/3/06

Fri, 17 Mar 2006 00:00:00 GMT

L’Oreal SA (holding company) had unsuccessfully opposed the registration of the claimant’s trade mark SPECIAL EFECTS. Following registration, the claimant brought infringement proceedings against L’Oreal (UK) Ltd (trading company) based on its use of the sign “Special FX”. L’Oreal (UK) Ltd sought to plead invalidity of the claimant’s mark, on the same grounds as raised by L’Oreal SA in opposition. It was decided as a preliminary issue that all companies in the L’Oreal group were precluded from doing so by cause of action estoppel. Further, issue estoppel prevented L’Oreal from pleading prior use as a defence under s.11(3).

Julius Samann Ltd & Anr v Tetrosyl Ltd, Ch Div (Kitchin J), 17/3/06

Fri, 17 Mar 2006 00:00:00 GMT

The claimant owner of registered trade marks comprising the outline of a pine tree for air fresheners was successful in an infringement action under Arts. 5(1)(b) and 5(1)(c) against a company which sold card air fresheners in the shape of a Christmas tree with flashing lights. The challenge to validity failed because the tree shape for air fresheners did not in itself add greater value to the goods than any other shape, and the substantial value attaching to it was attributable to the claimant’s reputation rather than the inherent nature of the shape.

HRH the Prince of Wales v Associated Newspapers Ltd. [2006] EWHC 522 (Ch) (17 March 2006)

Fri, 17 Mar 2006 00:00:00 GMT

Breach of Confidence: The claimant was granted summary judgment in respect of his claim for breach of confidence and copyright infringement arising from the defendant’s publishing of extracts of his journal containing his observations on a tour of Hong Kong. The claimant had a reasonable expectation of privacy in the contents of the journal and it was impossible to say that this entitlement was overridden by any public interest in the disclosure. The defendant had no real prospect of establishing a fair dealing defence to copyright infringement.

Mastercigars Direct Ltd v Hunters & Frankau Ltd & Ors [2006] EWHC 410 (Ch) (10 March 2006)

Fri, 10 Mar 2006 00:00:00 GMT

A consignment of cigars which was detained by HM Customs and Excise at the instance of the exclusive UK distributor was to be regarded as ‘imported’ for trade mark purposes, and there was no scope for asserting that the goods could legitimately be released for sale in a non-EEA country. The parallel importation of the cigars had not been with the implied consent of the trade mark proprietor. The outlets in Cuba from which the cigars had been purchased were not associated companies of the trade mark proprietor. The fact that the limit on sales from those outlets to an individual was $25,000 indicated that the proprietor knew that purchasers would resell the goods; however this did not prove that the proprietor had unequivocally renounced the benefit of its trade mark rights in the EEA.

Tesco Stores Ltd v Elogicom Ltd & Anor [2006] EWHC 403 (Ch) (08 March 2006)

Wed, 08 Mar 2006 00:00:00 GMT

Summary judgment was granted for trade mark infringement and passing off. The defendant had registered a number of domain names which incorporated the word “Tesco”, and had subverted a website ‘affiliation’ system so that when a customer entered one of the defendant’s domain names into his computer’s address bar, the customer was taken direct to Tesco’s website, and the defendant obtained a commission on any sales thereby made by Tesco. The domain names were similar to registered marks, and the defendant had used them in the course of trade, such that there was infringement under s.10(2) and s.10(3) TMA. The registration of the domain names was inherently misleading and was injuncted.

Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166 (08 March 2006)

Wed, 08 Mar 2006 00:00:00 GMT

An appeal was dismissed against a finding of infringement by Qualtex of Dyson’s unregistered design rights by the production of replica spare parts for vacuum cleaners. The trial judge’s findings as to the applicability of the ‘must fit’ , ‘must match’ and surface decoration exclusions, and as to originality, were not disturbed.

Fields v Klaus Kobec Ltd & Anor [2006] EWHC 350 (Ch) (02 March 2006)

Thu, 02 Mar 2006 00:00:00 GMT

The claimant was the owner of trade mark registrations for KLAUS KOBEC for watches, and had licensed the defendant to use the mark as a brand. After the licence was terminated, further use of the brand by the defendant amounted to infringement, subject to a defence under s.11(2). The ‘own name’ defence was made out in relation to the continued use of the company name, including on the backplate of watches. The defence was not made out in respect of the use of the klauskobec.com domain name and the defendant’s threats to continue to use the mark in relation to watches.

IDA Ltd & Ors v The University of Southampton & Ors [2006] EWCA Civ 145 (02 March 2006)

Thu, 02 Mar 2006 00:00:00 GMT

In an entitlement action concerning a patent for an insect trap, an appeal was successful against a finding of joint entitlement. In so far as there was anything inventive in the patent, the inventive step was contributed solely by the claimant’s suggestion that magnetic particles be substituted for the electrostatic particles which were known in the prior art.

Roche Products & Anr v Kent Pharmaceuticals Ltd, Ch Div (Lewison J), 23/2/06

Thu, 23 Feb 2006 00:00:00 GMT

The claimants were entitled to summary judgment for trade mark infringement against an importer into the UK of products which had been supplied by the proprietor into the Dominican Republic exclusively for the purposes of a clinical trial and on the basis that they would not be resold. The fact that the packaging bore the CE mark and instructions in three European languages was not an indication that the proprietor had consented to marketing in the EEA. What was required was actual consent (express or implied) and not deemed consent.

Harrods Ltd. v Times Newspaper Ltd. & Ors [2006] EWCA Civ 294 (22 February 2006)

Wed, 22 Feb 2006 00:00:00 GMT

Breach of Confidence: On appeal, an order for disclosure of information (see January 2006 Law Brief update), requested by the defendants in order to make good a defence on public interest grounds, was varied so as to define the information to be disclosed more narrowly.

Rhone-Poulenc Rorer International Holdings Inc & Anor v Yeda Research and Development Co Ltd [2006] EWHC 160 (Ch) (16 February 2006)

Thu, 16 Feb 2006 00:00:00 GMT

An appeal was allowed against a decision of the Comptroller of Patents to allow an amendment to a claim of joint ownership of a patent, to include an additional claim of sole ownership. The amendment was filed outside the two year limitation period for claiming entitlement to a granted patent. The claim to sole ownership was a ‘new claim’ and so the amendment could not relate back to the date of the original reference. Since the limitation defence was available, there was no useful purpose in allowing the amendment.

Tamglass Ltd. Oy v Luoyang North Glass Technology Company Ltd. & Anor [2006] EWHC 65 (Ch) (27 January 2006)

Wed, 15 Feb 2006 00:00:00 GMT

Following a finding that the claimant’s patent was valid and infringed, the defendants argued that the claimant was not entitled to damages in respect of infringements committed prior to the claimant becoming the owner of the patent. It was held that the transfer of the patent did not fall within s.33(3) and did not have to be registered. There was no basis for depriving the patentee of damages under s.68.

Mayne Pharma Pty Ltd & Anor v Debiopharm SA & Anor [2006] EWHC 164 (Pat) (10 February 2006)

Fri, 10 Feb 2006 00:00:00 GMT

An application was granted for disclosure of documents relating to work-up experiments that had been carried out for the purposes of patent revocation litigation. The respondent had given notice of the experiments, which negated any claim to privilege, and the disclosure reflected a need to reveal the full story.

Research In Motion UK Ltd. v Inpro Licensing SARL [2006] EWHC 70 (Pat) (02 February 2006)

Thu, 02 Feb 2006 00:00:00 GMT

An action for revocation of a European patent for a proxy-server system used by the claimant’s ‘Blackberry’ handheld device was successful, on the grounds that all the claims of the patent were invalid for anticipation or obviousness. However, had the patent otherwise been valid, the subject matter was not excluded by Art 52 of the Convention. The claims were for more than merely a collection of computer programs, and they did give a technical effect.

Sun Microsystems Inc v Amtec Computer Corporation Ltd [2006] EWHC 62 (Ch) (30 January 2006)

Mon, 30 Jan 2006 00:00:00 GMT

The defendant had infringed the claimant’s trade marks by unknowingly selling servers which had been produced by the claimant but which had not been imported or put on the market in the EU with the claimant’s consent. The injunction was qualified so as to be proportionate and not to carry the risk of shutting down the defendant’s legitimate business. The defendant was not prevented from dealing in the claimant’s products if it did so innocently and if it informed the claimant of the serial numbers of the products, giving the claimant an opportunity to object to the selling of the product.

Tamglass Ltd. Oy v Luoyang North Glass Technology Company Ltd. & Anor [2006] EWHC 65 (Ch) (27 January 2006)

Fri, 27 Jan 2006 00:00:00 GMT

A patent for a glass bending and tempering process was valid and infringed by the defendants’ activities. The features of the defendants’ machine which were additional to those claimed were not relevant: What mattered was that the machine had all of the features which were integers of the patent claims. The patent was novel and not obvious over the prior art.

Environmental Technologies Inc (EPI) & Anor v Symphony Plastic Technologies Plc & Anor [2006] EWCA Civ 3 (26 January 2006)

Thu, 26 Jan 2006 00:00:00 GMT

Breach of Confidence: A judge’s finding that the defendants had not copied the claimants’ confidential formula for a plastic material was upheld on appeal. The similarity of the defendants’ product to that of the claimants obliged the defendants to give an explanation, and this could be described as an evidential burden, but this was not the same as shifting the burden of proof to the defendants. The appellants had not established that the judge had misdirected himself.

Deutsche Telecom AG v E! Entertainment Television Inc, Ch Div (Peter Smith J) 25/1/06

Tue, 24 Jan 2006 00:00:00 GMT

An opposition to an application to register E! ONLINE, on the basis of similarity to earlier registrations for T-ONLINE, failed. The decision of the hearing officer was upheld on appeal. The opponent’s services were accessible only in the German language, and did not have a reputation in the UK. The distinctive elements of the two marks were readily distinguished by the average consumer.

Harrods Ltd v Times Newspapers Ltd & Ors, Ch Div (Warren J), 23/1/06

Mon, 23 Jan 2006 00:00:00 GMT

Breach of Confidence: The defendants’ application for disclosure of documents by the claimant was granted, where, in an action for breach of confidence, the defendants raised a defence of the public interest in exposing unlawful employment practices of the claimant, and the defendants claimed that the requested documents showed examples of the alleged iniquity. It did not matter that the material sought to be disclosed was not known to the defendants at the date of the publication complained of. What mattered was whether it was relevant to the public interest.

Nova Productions Ltd v Mazooma Games Ltd & Ors Rev 1 [2006] EWHC 24 (Ch) (20 January 2006)

Fri, 20 Jan 2006 00:00:00 GMT

An action for infringement of copyright in a video game called Pocket Money was unsuccessful. The claimant alleged that the defendants’ games infringed copyright in relation to artistic, literary and dramatic works. It was held that the claimant’s bitmap files were ‘graphic works’, the composite frames generated by the computer using the bitmap files were ‘artistic works’ , and the computer program and design notes for Pocket Money were ‘literary works’, for the purposes of the CDPA. However, the game was not a ‘dramatic work’ capable of being performed. Although certain features of the defendants’ games were to some extent derived from or inspired by Pocket Money, there was not reproduction of a substantial part of any of the classes of copyright work relied on.

Northern Foods Plc v The Department for Environment, Food and Rural Affairs & Anor [2005] EWHC 2971 (Admin) (21 December 2005)

Wed, 21 Dec 2005 00:00:00 GMT

The court refused an application for judicial review of DEFRA’s decision to forward an application for the registration of “Melton Mowbray Pork Pie” as a protected geographical indication under Council Regulation 2181/92. It was held that the “defined geographical area” could be wider area than the specific region where the foodstuff originated.

Canady v Erbe Elektromedizin GmbH & Ors [2005] EWHC 2946 (Pat) (21 December 2005)

Wed, 21 Dec 2005 00:00:00 GMT

In an action for infringement of a patent for a surgical device (an argon beam coagulator for use in an endoscope), the defendants’ device included all the features of claim 1 except that it lacked a ‘handle’ for manoeuvring the tube. It was held that the connector at the end of the defendants’ probe was not designed as or used as a ‘handle’, and that the defendants’ probes did not infringe the patent.

Dennis Woodman v French Connection Ltd, TMR (Mr Foley), 20/12/05

Tue, 20 Dec 2005 00:00:00 GMT

An application for a declaration of invalidity under s.47 TMA 1994, on the basis that the mark, FCUK, had been registered in contravention of s.3(3), in that it was contrary to public policy or principles of morality, was unsuccessful. Any offence which had been caused by the use of the mark had been a result of the context in which the trader had used the letters, which could be censored, rather than a result of the letters themselves. There was nothing in s.47 that provided for a mark to become objectionable on absolute grounds through the use made of it.

Music Choice Ltd v Target Brands Inc, Ch Div (Geoffrey Vos QC), 14/12/05

Wed, 14 Dec 2005 00:00:00 GMT

In response to an application for a declaration of invalidity of a trade mark, the proprietor filed a counter-statement within the time limit, but form TM8 was filed a day late, outside the time limit of Rule 33(6). The judge reversed the decision of the hearing officer to treat the application as unopposed. Distinguishing the Lowden case, it was held that there was, in an invalidation case, a general discretion in the Registrar, and that in the circumstances the discretion would be exercised in favour of the proprietor.

Baxter Healthcare Corp & Anr v Abbott Laboratories & Anr, Ch Div (Mann J) 6/12/05

Tue, 06 Dec 2005 00:00:00 GMT

Where a claimant sought a declaration of non-infringement under Patents Act 1977 s.71, the patentee was required under the CPR to particularise the positive case it intended to run, notwithstanding that the burden of proof was on the claimant.

Metrix Electronics Ltd v Chauvin Arnoux, TMR (John MacGillivray), 29/11/05

Tue, 29 Nov 2005 00:00:00 GMT

An opposition to the registration of the trade mark METRIX ELECTRONICS succeeded because the mark applied for was similar to the earlier trade mark MULTIMETRIX which was registered for identical or similar goods, such that there was a likelihood of confusion. It was not relevant that the applicant already owned a registration for METRIX ELECTRONIC PLC for goods in the same class, which predated the opponent’s registration.

Polydor Ltd & Ors v Brown & Ors [2005] EWHC 3191 (Ch) (28 November 2005)

Mon, 28 Nov 2005 00:00:00 GMT

The defendants had infringed the claimants’ copyright by their acts of making audio files available via the internet to all users of a type of peer-to-peer software on a network. The acts amounted to primary infringement, and it did not matter whether the defendants knew or had reason to believe that they were infringing copyright; innocence or ignorance was no defence.

Schering-Plough Ltd v Norbrook Laboratories Ltd, Ch Div (Christopher Floyd QC), 18/11/05

Fri, 18 Nov 2005 00:00:00 GMT

A patent concerned with a veterinary medicine which was a long-acting combination of antimicrobial and anti-inflammatory agents was not obvious in view of the prior art, but some of the broader claims were invalid for insufficiency because they could not be made to work without undue research or experiment.

Almighty Marketing Ltd. v Milk Link Ltd. [2005] EWHC 2584 (Ch) (18 November 2005)

Fri, 18 Nov 2005 00:00:00 GMT

In an application for revocation for non-use, it was not sufficient for the purposes of rule 31(3) of the Trade marks Rules 2000 for the proprietor merely to assert that he had made genuine commercial use of the mark; however, on the other hand neither was it essential that the proprietor supply the specific documents suggested in Carte Bleue Trade Marks [2002] RPC 31. What was required was that the evidence, considered as a whole, established that the proprietor had an arguable defence to the application, and this had been done in the instant case.

Smith International Inc v Specialised Petroleum Services Group Ltd. [2005] EWCA Civ 1357 (17 November 2005)

Thu, 17 Nov 2005 00:00:00 GMT

s.55 of the Access to Justice Act 1999 had not expressly or impliedly repealed s.97(3) of the Patents Act 1977, and the applicant was entitled to appeal from the Patents Court, on appeal from a decision of the comptroller, on the basis of a ‘real prospect of success’. It was not necessary to show that the proposed appeal raised an ‘important point of principle or practice’.

Lever Faberge Ltd v Colgate-Palmolive Ltd, Ch Div (Lewison J), 11/11/05

Fri, 11 Nov 2005 00:00:00 GMT

Since the introduction of the CPR’s rules as to verification of Particulars of Claim by statement of truth, the court was less reluctant to grant a declaration of invalidity of a patent on a summary basis. In the instant case, the particulars of claim were supported additionally by a witness statement and prior art citations.

Finecard International Ltd (t/a the Ninja Corporation) v Urquhart Dyke & Lord (A Firm) & Anor [2005] EWHC 2481 (Ch) (10 November 2005)

Thu, 10 Nov 2005 00:00:00 GMT

In a negligence action the defendant’s causation defence was summarily dismissed. The defendant patent agent’s delay of 2 years in registering an exclusive licence deprived the claimant of the right to bring infringement proceedings during the period when the licence was not registered, pursuant to s.68 of the Patents Act 1977.

Unilin Beheer BV v Berry Floor NV & Ors (No. 2) [2005] EWCA Civ 1292 (03 November 2005)

Thu, 03 Nov 2005 00:00:00 GMT

Where a patentee of a partially valid patent had failed properly to amend the description of the invention to conform with an amended claim, so that some irrelevant material remained in the description, this did not deprive the patentee of damages for infringement by reason of the ‘reasonable skill and knowledge’ requirement of s.63 Patents Act 1977. S.63 was intended to deprive the patentee of damages only where the patentee had done something which might mislead.

Re EP (UK) 1048609 in the joint names of Hughes and Paxman, CH Div (Kitchin J), 21/10/05

Fri, 21 Oct 2005 00:00:00 GMT

Where co-proprietors of a patent were unable to reach agreement as to the exploitation of the patent, s.37 of the Patents Act 1977 gave the comptroller a discretion to order the grant of licences to third parties, and one or other co-proprietor was entitled to make an application to the comptroller seeking such an order.

Synthon BV v. Smithkline Beecham plc [2005] UKHL 59 (20 October 2005)

Thu, 20 Oct 2005 00:00:00 GMT

On appeal the judge’s decision was restored. A patent for a crystalline form of a pharmaceutical salt was invalid, because the invention was disclosed by a patent application which had been filed but not published before the priority date. The judge was entitled to find that the prior disclosure was enabling, on the basis that, although the solvent disclosed proved unsuitable, the skilled man would have found a suitable solvent using his common knowledge.

Oakley Inc v Animal Ltd & Ors [2005] EWCA Civ 1191 (20 October 2005)

Thu, 20 Oct 2005 00:00:00 GMT

The Secretary of State successfully appealed a decision that the Registered Designs Regulations 2001 reg.12 was ultra vires and made in breach of Community law.

Global Projects Management Ltd & Anr v Citigroup Inc & Ors, Ch Div (Park J), 17/10/05

Mon, 17 Oct 2005 00:00:00 GMT

The defendants were entitled to summary judgment on their counterclaims for trade mark infringement and passing off (in a threats action). The claimants had registered and maintained a domain name (citigroup.co.uk), which was a potential “instrument of fraud”. The claimant had applied for the registration on the same day that a merger was announced leading to the formation of Citigroup Inc.

GMG Radio Holdings Ltd & Ors v Tokyo Project Ltd & Anor [2005] EWHC 2188 (Ch) (14 October 2005)

Fri, 14 Oct 2005 00:00:00 GMT

The claimant owners of the HED KANDI brand for CDs and music events were refused an interim injunction restraining the defendants from using artwork on CDs and flyers which was similar to the pop-art style graphics used by the claimant. The particular get-up relied on by the claimant was a general style which was hard to define, and, additionally, had always been used in conjunction with the HED KANDI name. The balance of convenience was firmly in the defendant’s favour.

Ranbaxy UK Ltd & Anor v Warner-Lambert Company [2005] EWHC 2142 (Patents) (12 October 2005)

Wed, 12 Oct 2005 00:00:00 GMT

In proceedings seeking a declaration of non-infringement and revocation of patents relating to a pharmaceutical, it was determined that, on a true construction, a patented formula covered both a racemic mixture (of two enantiomers) and also the single enantiomer which was the effective compound and which could be extracted using conventional techniques.

Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd, Ch Div (Pumfrey J) 26/8/05

Fri, 26 Aug 2005 00:00:00 GMT

Pending appeal against a finding of patent infringement the claimant was granted an interim award of damages reflecting a reasonable proportion of the likely final award. The claimant and its holding company were required to give cross undertakings of repayment in the event of a successful appeal.

Daniele Ryman Aromacology Ltd v Chantecaille Beaute Inc, TMR (M Renolds) 16/8/05

Tue, 16 Aug 2005 00:00:00 GMT

The registered trade mark AROMACOLOGY was declared invalid because, at the time the registration was applied for, the word was used as the name of a new science, and it would have been required by other members of the trade to refer to that science. Since that time, the word had not acquired a distinctive character through use, and this was partly due to the inherent characteristics of the word as a descriptive name of a science.

E-Data Corporation v Getty Images Inc & Anor [2005] EWHC B2 (Pat) (08 June 2005)

Mon, 08 Aug 2005 00:00:00 GMT

On the evidence, the claimant’s patent for “a system for reproducing information in material objects at a point of sale location” was invalid for obviousness and lack of novelty, as understood by the addressee, an information technology prefessional.

Agilent Technologies Deutschland GmbH v Waters Ltd [2005] EWCA Civ 987 (29 July 2005)

Fri, 29 Jul 2005 00:00:00 GMT

Dismissal of a patentee’s appeal against a finding that the claims in a patent for a liquid pumping device having “control means” were not infringed by a manually controlled pumping device.

Laboratoires Goemar SA v La Mer Technology Inc [2005] EWCA Civ 978 (29 July 2005)

Fri, 29 Jul 2005 00:00:00 GMT

An appeal against revocation of a registration for non-use was allowed. Goods bearing the mark had been imported into the UK pursuant to five small orders amounting to £800 in total. The UK distributor had intended to sell the goods through sub-agents but there was no evidence that any sales had been made to consumers. It was held that there was no quantitative or qualitative threshold for market use and market share, and the imports amounted to ‘genuine use’.

General Cigar Co Inc v Partagas Y Cia SA [2005] EWHC 1729 (Ch) (29 July 2005)

Fri, 29 Jul 2005 00:00:00 GMT

The trade mark CIFUENTES WINKS had been registered under the 1938 Act with a disclaimer of exclusive use of the word CIFUENTES. The proprietor opposed an application for the trade mark CIFUENTES. The Registrar’s rejection of the opposition was upheld on appeal. On a true construction of s.13 of the 1994 Act, the disclaimer had to be taken into account in opposition and invalidity proceedings as well as in infringement proceedings.

Smithkline Beecham Plc & Ors v Apotex Europe Ltd & Ors [2005] EWHC 1655 (Ch) (26 July 2005)

Tue, 26 Jul 2005 00:00:00 GMT

An application for a direction to determine a preliminary issue was refused because it was more appropriate to analyse the pleaded case according to strike out/summary judgment criteria.

London General Holdings Ltd & Ors v USP Plc & Anor [2005] EWCA Civ 931 (22 July 2005)

Fri, 22 Jul 2005 00:00:00 GMT

An appeal was allowed against a Master’s award of damages representing loss of profit caused by a reduction in tender price because of a competitor’s unauthorised use of a scheme document. The document was an adaptation of the claimant’s original copyright work. The use of the document amounted to copyright infringement, but this did not cause the loss. The loss was caused by the deployment of the idea contained in the document, rather than any of the actual text.

Halliburton Energy Services, Inc. v Smith International (North Sea) Ltd & Ors [2005] EWHC 1623 (Pat)

Thu, 21 Jul 2005 00:00:00 GMT

Two European patents relating to methods of designing roller cone drill bits (such as used in oil and gas wells) were invalid in their entirety for insufficiency of disclosure. Both patents also covered unpatentable subject matter, which defect could have been cured by amendment, were it not for the insufficiency.

CFPH LLC, Patent Applications by [2005] EWHC 1589 (Pat) (21 July 2005)

Thu, 21 Jul 2005 00:00:00 GMT

Two patent applications concerned with operating systems for internet gambling were held not to disclose patentable inventions, as they fell within the business method exclusion. The approach of the European Patent Office was approved, although the result was the same whether the test applied was that of the EPO or of the UK Patent Office.

Burnden Group Plc v Ultraframe (UK) Ltd & Anor [2005] EWCA Civ 867 (20 July 2005)

Wed, 20 Jul 2005 00:00:00 GMT

A patentee’s appeal against a finding of invalidity was dismissed. The patent, relating to components of conservatory roof panels, was not novel and was obvious in the light of the prior art.

Clearsprings Management Ltd v (Businesslinx Ltd & Anor [2005] EWHC 1487 (Ch) (14 July 2005)

Thu, 14 Jul 2005 00:00:00 GMT

D had designed and developed a web-based database system pursuant to the commission of C and using information supplied by C. It was conceded by C that D was the owner of the copyright in the database, but C claimed to be entitled to an assignment or exclusive licence based on an implied term. As a preliminary issue it was held that, on the minimalist principle, it was necessary to imply a term preventing D from making use C’s information, and allowing C to use the software for the purposes of its business. It was not necessary to imply an assignment or exclusive licence.

Kabushiki Kaisha Sony Computer Entertainment v Nuplayer Ltd. [2005] EWHC 1522 (Ch) (14 July 2005)

Thu, 14 Jul 2005 00:00:00 GMT

An injunction was granted to restrain the sale in the UK, by use of the internet, of unauthorised parallel imports of the claimant’s “Playstation Portable” (“PSP”). The claimant’s registered trade marks were infringed by the defendant’s activities, and it did not matter that the products were marketed only by reference to the term ‘PSP’, which was not a registered mark. The trade marks were not visible at the point of sale, but the customer would expect to see the marks on the product on delivery.

Hewlett-Packard Development Company LP & Anor v Expansys UK Ltd. [2005] EWHC 1495 (Ch)

Thu, 14 Jul 2005 00:00:00 GMT

Summary judgment was granted on a claim for trade mark infringement, based on ‘parallel imports’ of electronic personal organisers into the UK from Asia. The claimant could not be said to have consented to the imports, and, even if it was arguable that the claimant had breached competition rules, this did not affect the enforceability of intellectual property rights.

British Horseracing Board Ltd & Ors v William Hill Organization Ltd [2005] EWCA Civ 863 (13 July 2005)

Wed, 13 Jul 2005 00:00:00 GMT

Database Right: Following the response of the ECJ to a reference, the Court of Appeal held that officially verified information concerning the runners and riders in horse races did not constitute a database within Art 7(1) of Council Directive 96/9. There was a distinction between “obtaining and verification” of material, and “creation” of the material which formed the content.

Betafence Ltd. v The Registrar of Trade Marks [2005] EWHC 1353 (Ch) (29 June 2005)

Wed, 29 Jun 2005 00:00:00 GMT

The refusal to register the shape of a fencing panel as a trade mark was upheld on appeal. The shape was devoid of inherent distinctiveness because the average consumer was not used to relying on the shape of goods (or not of this type of goods) as an indication of trade origin. For the same reason the shape had not acquired distinctiveness despite substantial sales.

Nikken Kosakusho Works & Anor v Pioneer Trading Company & Anor [2005] EWCA Civ 906 (29 June 2005)

Wed, 29 Jun 2005 00:00:00 GMT

Following a finding at trial that a patent was invalid, the patentee applied to amend one of the claims. The refusal to allow amendment was upheld on appeal. The general principle was that a litigant was not permitted to amend its claim post-judgment, and there was no special rule in patent cases which allowed it.

Ultraframe (UK) Ltd. v Eurocell Building Plastics Ltd.& Anor [2005] EWCA Civ 761 (24 June 2005)

Fri, 24 Jun 2005 00:00:00 GMT

Design Right: In an appeal against a number of findings in patent and unregistered design right (UDR) infringement proceedings, it was held that the judge was correct in deciding there could be separate UDR in the assembly of individual parts even if their design was commonplace, and that the judge was entitled to accept the undertaking offered by the defendant to take a licence under s.237 CDPA even though at the time of the undertaking the UDR had expired. There was no time limit as to when the undertaking had to be offered.

Criminal Clothing Ltd v Aytan’s Manufacturing (UK) Ltd, Ch Div (Christopher Floyd QC), 22/6/05

Wed, 22 Jun 2005 00:00:00 GMT

The opposition to registration of the word “Criminal” as a trade mark was upheld on appeal on the basis of similarity to an earlier mark, “Criminal damage + skull & crossbones device”, for identical goods. The officer was entitled to conclude that the words were dominant and that the device component played a lesser role, even where the device was distinctive.

I N Newman Ltd v Richard T Adlem, CA (Tuckey, Arden, Jacob LJJ), 221/6/05

Tue, 21 Jun 2005 00:00:00 GMT

Where a funeral director sold his business and later started a new business under the same name, which was his own name, and registered the name as a trade mark, it was held on appeal that the sale of the business included the goodwill attached to the name, and the defendant’s conduct amounted to passing off, and the trade mark registration was invalid.

Tercica Inc v (1) Avecia Ltd. Insmed Inc Genentech Inc [2005] EWHC 984 (Ch) (20 May 2005)

Fri, 20 May 2005 00:00:00 GMT

In a summary judgment application for patent revocation on the basis of lack of novelty, the court analysed the prior art and considered the construction of the patent, but decided it was not possible at that stage to reach a conclusion.

Hyperion Records Ltd v Sawkins [2005] EWCA Civ 565 (19 May 2005)

Thu, 19 May 2005 00:00:00 GMT

The effort, skill and time expended in creating modern performable editions of the works of an out-of-copyright composer were sufficient for the editions to qualify as original musical works, even though they contained no new music. The appellant’s recordings of performances of the modern editions infringed the respondent’s copyright, and it did not matter that some additional material was included by the performers.

Douglas & Ors v Hello Ltd. & Ors [2005] EWCA Civ 595 (18 May 2005)

Wed, 18 May 2005 00:00:00 GMT

Private or personal information which was capable of commercial exploitation could be subject of breach of confidence by a third party who was objectively aware of the circumstances of confidentiality and who knowingly obtained the information without authority. However, such information did not amount to a right of intellectual property, and it could not be transferred. The economic tort claims were not made out because the subjective recklessness demonstrated did not suffice as the mental element.

Play It Ltd & Anr v Digital Bridges Ltd, Ch Div (Sir Andrew Morritt VC), 12/5/05

Thu, 12 May 2005 00:00:00 GMT

In proceedings for passing off (relating to a representation of a red ball together with the word ‘play’ for video games for mobile phone handsets) an application for an interim injunction was granted to preserve the status quo, and a speedy trial was ordered.

Canady v Erbe Elektromedizin GmbH & Ors, Ch Div (Laddie J) 5/5/05

Thu, 05 May 2005 00:00:00 GMT

It was not appropriate to grant a stay of patent infringement proceedings pending a determination by the Technical Board of Appeal of the European Patent Office, relating to opposition proceedings.

Conde Nast Publications Ltd v Peers Hardy (UK) Ltd, Ch Div (Pumfrey J), 3/5/05

Tue, 03 May 2005 00:00:00 GMT

An application for permission to adduce further expert evidence after exchange of expert reports was refused. Although the evidence was not wholly irrelevant, the problems which would be caused by allowing it would outweigh the slight benefit conferred.

Smith International Inc v Specialised Petroleum Services Group Ltd [2005] EWHC 686 (Ch) (21 April 2005)

Thu, 21 Apr 2005 00:00:00 GMT

On appeal from a finding that a patent (for an apparatus for filtering oil well fluid) lacked novelty, it was held on the facts that the prior art did not include a feature enabling well fluid to be filtered in one direction but not the other, and so the patent had not been anticipated.

Markem Corporation & Anor v Zipher Ltd [2005] EWCA Civ 267 (22 March 2005)

Tue, 22 Mar 2005 00:00:00 GMT

In entitlement proceedings under s.8 Patents Act 1977, it was irrelevant that the claimant could show that it was entitled to apply for a patent pursuant to s.7: What the claimant was required to show was that because of some breach of some rule of law, the defendant was not entitled to apply for the patent (either at all or alone). On the facts, the invention did not arise from misuse of the claimant’s information. Breach of confidence proceedings brought after the trial were struck out as an abuse of process.

Phonographic Performance Ltd v Reader [2005] EWHC 416 (Ch) (22 March 2005)

Tue, 22 Mar 2005 00:00:00 GMT

Where the defendant flagrantly infringed copyright in breach of a court order and was found to be in contempt of court, the claimant was entitled to additional damages under CDPA 1988 s.97(2), which could include a punitive element, and could be based on the contribution of the infringements to the profitability of the business.

O2 Holdings Ltd & Anor v Hutchison 3G UK Ltd [2005] EWHC 344 (Ch) (11 March 2005)

Fri, 11 Mar 2005 00:00:00 GMT

It was not ‘necessary’ for the ECJ to give a preliminary ruling in order for the national court to give judgment. The claimant’s application to refer questions in advance of a trial for trade mark infringement (comparative advertising) failed because some or all of the questions would be unnecessary in the event of certain factual findings at trial.

Phones 4U Ltd & Anr v Phone4U.co.uk Internet Ltd & Ors, Ch Div (Richard Sheldon QC), 9/3/05

Wed, 09 Mar 2005 00:00:00 GMT

The claimants had not acquired the requisite goodwill at the relevant time in the trade mark “Phones4u” in order to succeed in a passing off action against the operator of websites using the expression “phone4u”. The expression “Phones4u” was mainly but not wholly descriptive. The evidence showed confusion but not deception. The use of metadata was considered. A related trade mark infringement claim failed because of limitation to certain colours.

Hunt Technology Ltd v Don & Low Ltd ,Ch Div (Laddie J),

Thu, 03 Mar 2005 00:00:00 GMT

Where EPO opposition proceedings were ongoing, there was a presumption in favour of a stay of English patent revocation proceedings having the same subject matter. However the court would weigh commercial considerations to see where the balance of justice lay.

Enterprise Rent-a-Car Co v Eurodrive Car Rental Ltd, Ch Div (Laddie J),

Wed, 02 Mar 2005 00:00:00 GMT

The court refused to disturb the hearing officer’s conclusions that there was no likelihood of confusion between the applicant’s marks and the opponent’s marks for identical services even though both included a stylised “E”.

Saint-Gobain PAM SA v Fusion Provida Ltd & Anor [2005] EWCA Civ 177 (25 February 2005)

Fri, 25 Feb 2005 00:00:00 GMT

A patent for the use of zinc/aluminium alloy in place of zinc as a coating for buried cast-iron pipes was not obvious over the prior art, even though the use of the alloy for above-ground and marine purposes had been known for many years.

IPC Media Ltd v News Group Newspapers Ltd [2005] EWHC 317 (Ch) (24 February 2005)

Thu, 24 Feb 2005 00:00:00 GMT

Where the defendant had reproduced the front cover of the claimant’s magazine in an advert for the defendant’s own magazine, the ‘fair dealing’ defence under s.30 Copyright Designs and Patents Act 1988 was not available because comparative advertising required merely that the defendant identify the product, which could have been done without infringing copyright.

Experience Hendrix LLC v Purple Haze Records Ltd & Anor [2005] EWHC 249 (Ch) (24 February 2005)

Thu, 24 Feb 2005 00:00:00 GMT

For the purposes of enforcing performers’ rights, performances given in a ‘qualifying’ foreign country before the commencement of the Copyright, Designs and Patents Act 1988 could be regarded retrospectively as qualifying performances, and it did not matter whether the country was a ‘qualifying country’ at the commencement of the Act or joined subsequently.

R v McCrudden, CA (Crim Div) (Laws LJ, Dame Heather Steel, Judge Stephens QC)

Mon, 21 Feb 2005 00:00:00 GMT

The judge was correct to rule that a market trader who sold counterfeit clothing could not avail herself of the defence under s.92(5) of the Trade Marks Act 1994. S.92(5) required proof of a positive case that the defendant knew that the trade mark was registered but believed that the use of it was not an infringement. It did not provide a general defence of good faith.

Oakley Inc v Animal Ltd & Ors [2005] EWCA Civ 1191 (20 October 2005)

Fri, 18 Feb 2005 00:00:00 GMT

Registered Designs: Regulation 12 of the Registered Designs Regulations 2001, which retained the old 1949 Act law of validity in respect of ‘existing registrations’, was ultra vires because it attempted to implement a derogation from Community obligations, by secondary legislation, after the deadline for transposition of the Directive into national law. Reg 12 took effect subject to revision of its wording so that the validity of design applications made after the deadline for implementation would be decided under the new law.