10 June 2009

Cases You Should Know About

Here is a list of some recent intellectual property and other cases that I you may wish to read.

I have commented on some of some of those cases in articles and case notes on this or one of my other blogs:








Court of Appeal

Aerotel Ltd v Wavecrest Group Enterprises Ltd
20 May 2009

[2009] EWCA Civ 408

Obviousness, software implemented invention

Patents Court: Peter Prescott QC

Folding Attic Stairs Ltd v The Loft Stairs Company Ltd and Another

9 June 2009

[2009] EWHC 1221 (Pat)

What constitutes an enabling disclosure

Construction of claims: words of intentionality

Arnold J

NS Group Holdings Ltd. v Nielsen Media Research Inc
20 May 2009

[2009] EWHC 1160 (Pat)

Whether there is discretion to strike out a valid claim under CPR 3.4 (see also Shah v Ul-Haq below).

Judicial discretion to stay a case to abide the outcome of opposition proceedings in the European Patent Office.

Case Note

29 May 2009

IP/IT Update blog

Fioyd J

Leo Pharma v Sandoz Ltd

15 May 2009

[2009] EWHC 996 (Pat)

Anticipation and obviousness. Windsurfing principles as amplified by Pozzoli applied.

Case Note

29 May 2009 IP/IT Update blog

Trade Marks

Chancery Division: Arnold J

Interflora, Inc and Another v Marks & Spencer Pl

22 May 2009

[2009] EWHC 1095 (Ch)

Google “AdWords”: whether purchase of sponsored links and searches infringes a trade mark. Reference to the European Court.

Discussed in “Trade Marks and E-Commerce”

24 May 2009

IP/IT Update blog

Arnold J

L'Oreal SA & Ors v EBay International AG & Ors
22 May 2009

[2009] EWHC 1094 (Ch)

Whether a trade mark is infringed by sponsored links and searches and the scope of the defence in art 14 of the E-Commerce Directive.

Discussed in “Trade Marks and E-Commerce”

24 May 2009

IP/IT Update blog

Geoffrey Hobbs QC

Daimler AG v Sany Group Company
14 May 2009

[2009] EWHC 1003 (Ch)

Practice: whether CPR Part 24 is appropriate to a case that requires a comparison of similar signs and similar goods

Case Note

28 May 2009 IP/IT Update blog

Trade Marks Registry: Mrs Corbett

Sparklycard, Barclays Bank Plc v Snelgrove

BL No. O/104/09

Opposition on the ground of an earlier mark.

Domain Names

WIPO: Jane Lambert

Intesacanda.com: Intesa Sanpaolo S.p.A. v. George Papadakos

Case No. D2008-1531

Whether parking a domain name on an “under construction” page that generates sponsored links or searches is necessarily evidence of bad faith.

Discussed in “Trade Marks and E-Commerce”

24 May 2009

IP/IT Update blog


Court of Appeal

Shah v Ul-Haq and Others 9 June 2009

[2009] EWCA Civ 542

Whether there is jurisdiction under CPR 3.4 to strike out a valid statement of case on the grounds that there has been fraud in an associated claim

Chancery Division: Stephen Smith QC

Hayim and Others v Couch

15 May 2009

[2009] EWHC 1040 (Ch)

The extent of the court’s jurisdiction t make a declaration before trial

Case Note 28 May 2009 IP/IT Update blog

Business Link

Court of Appeal

Business Link Berkshire & Wiltshire Ltd v Fearn

20 May 2009

[2009] EWCA Civ 455

Circumstances in which Business Link can recoup grants

Case Note 27 May 2009 IP Yorkshire

If you want instant, pithy reaction to a new decision or simply an alert that it is there, just search for @nipclaw or follow me on twitter at http://twitter.com/nipclaw.

01 June 2009

Practice: an IP Practitioner's Diary, 31 May 2009

I am often asked by solicitors whether I go to the Patents Court. Or by trade mark attorneys whether I represent clients in the Registry. Or by Business Link whether I can do a risk analysis or draft terms and conditions for their clients. Or by businessmen and women whether I can review a draft contract.   The answer to all those questions is a resounding YES.

All of those things are within the traditional scope of the intellectual property barrister and I m as much an intellectual property barrister as anyone in Lincoln's Inn or Grays.  Confusion may arise because there are some things that I don't do. I don't apply for patents, trade marks or registered designs. I don't issue claim forms or even send letters of claim in my own name. I don't even accept instructions to appear in court or other hearing in a matter that requires lengthy correspondence or investigation such as reviewing documents and interviewing witnesses unless the client has instructed a solicitor or other authorized literature as well as me.   The reason why I do not do any of those things is that barristers keep their eye on the law and leave legal management to such as solicitors, patent agents and other professionals who are trained and equipped to manage clients' legal business. Moreover, as the law stands, barristers are not even allowed to hold clients' funds.

So that members of the public and indeed other professionals can enjoy a clearer picture of what intellectual property counsel like me can do, and also what we do not do, I shall publish a monthly diary.    This supplements the FAQ and case studies on my personal website.

I practise as an arbitrator and mediator as well as a barrister. One of the panels upon which I sit is the WIPO's domain name dispute resolution panel. The last domain name dispute to come before me was Case No. D2008-1531 Intesa Sanpaolo S.p.A. v. George Papadakos.  In that case the complainant, which carried on business in many parts of the world though not in Canada, complained that the respondent had registered one of its brands with the addition of the word "canada" as a domain name and had parked that domain name on an "under construction" page of the Yahoo website. The "under construction" page generated all sorts of sponsored links and searches some of which led to the complainant's competitors.   The parking of the domain name on the "under construction" page raised the possibility of preparations to use the domain name for a website for the bona fide goods and services which might have afforded a defence. Also, I was not persuaded that the automatic generation of sponsored links and searches outside a respondent's control was necessarily a sign of bad faith. Whether automatically generated links and searched infringe a trade mark is a question that has recently been referred to the European Court.   To help me draw inferences I took the unusual step of making a procedural order requiring the respondent to a written statement identifying the preparations (if any) that he may have made to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services exhibiting any draft web pages or other material to such statement.   

I have of course been been in court and in the IPO.  In one design case that went to trial before the Patents County Court both parties were able to keep their costs well below £17,000 and the claim was tried within 8 months of the issue of the claim form.   The issues in dispute were not straightforward and were closely argued over 2 full days.   This shows that intellectual property litigation need not be ruinously expensive or take forever. However, even £17,000 is a lot of money for most people and litigation is to be avoided wherever possible.

One forum where costs are very tightly controlled are is the Trade Marks Registry. Costs in proceedings before hearing officers are awarded on a fixed scale unless a party has acted unreasonably.   The Intellectual Property Office in Newport which I attended a few weeks ago on a trade mark invalidation hearing was one of the most convenient venues that I have ever visited. I was allotted a parking space just a few feet from the entrance to the hearing rooms and my opponent and I were offered refreshments afterwards. NIPC are looking into the possibility of opening an annexe in Newport for proceedings in the IP Office.

However, most of my work is non-contentious and I have done lots of advisory and drafting work. I have had to draft terms and conditions for several e-commerce sites, review patent licences and assist parties to a joint venture to go their separate ways.   Much of that work comes to me under the public access scheme.   Some of it is funded by Business Link and other funding bodies.   Some by the clients themslves.

I have also done a lot of pro bono  work through NIPC Clinics.  At present I run IP clinics in 8 centres: Barnsley, Bradford, Halifax, Huddersfield, Leeds, Rotherham and York in Yorkshire and Bromborough in the Wirral. That is just about as much as one woman can manage and as I want to run them nationally we shall be reorganizing them shortly in association with local professionals.   Any solicitor, patent attorney or other professional who would like to take part is welcome to drop us a line. Everyone who has assisted us has found found NIPC clinics to be a good source of work.