Intellectual Property

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The respondent’s trade mark registered for hotel, restaurant and related services was revoked for lack of genuine use in the UK in the relevant period, where the proprietor of the mark had provided the services only via a hotel situated in the US.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.

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owner in the musical copyright in the work, with a share of 40%; and (3) the respondents’ licence to exploit the work was revoked in May 2005 when the proceedings were raised.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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.