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Clause 13 of the Intellectual Property Bill will probably go through. What next?

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Despite the submissions of Sir Robin Jacob, leading academic lawyers, the IP Federation, the IP Bar Association and the other intellectual property professions HM government seems determined to force through criminal sanctions for registered design and registered Community design infringement. Why HMG has set and indeed held to this course in the face of almost unanimous opposition from those who know most about intellectual property is a mystery but there it is. Governments do silly things sometimes of which the Dangerous Dogs Act is but one example.

What happens next
I have done all that I can as a citizen to persuade HMG to think again by

explaining in this blog why this proposal is a very bad idealobbying my MP and even remonstrating with the Minister in person when we shared a platform last week.
But it is not really my battle. Criminalizing registered design infringement does not affect me personally except perhaps as a consumer in that it may feather bed designs such as the &q…

Copyright Licensing BBC v EOS

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As everyone knows, copyright restricts the acts listed in s.16 (1) of the Copyright, Designs and Patents Act 1988 ("CDPA") in relation to a work in which copyright subsists ("a copyright work"). Those acts include copying, issuing copies, renting, lending or communicating the work to the public etc. Anyone who does any of those acts without the owner's licence infringes that copyright. He or she may be sued or in an extreme case prosecuted.
Clearly, if you want to broadcast, perform or otherwise make use of a copyright work it is a good idea to get a licence. As all those lovely artists, choreographers, composers. dramatists, novelists, poets, song writers and other authors need to live it is only right that they get paid a reasonable fee for their trouble. But therein lies the rub because what may seem reasonable to you and me as consumers may not feel reasonable to an artist in his garret or, more importantly, his agent in his BMW. As I argued  at the Arab-B…

What's in a Name? WIPO Domain Name Dispute Resolution Panellists' Meeting 28 Oct 2013

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Every year at the end of October the World Intellectual Property Organization ("WIPO"), the UN agency for intellectual property holds a one day conference at its head office in Geneva for its domain name dispute resolution panellists. I have been a member of that panel for the last 10 years and I have attended every panellists' meeting since 2005. I have got to know quite a few of my fellow panellists over the years and several of them have become good friends. This year the conference took place on the 28 Oct.

In previous years the focus had been on practical issues arising under the Uniform Domain Name Dispute Resolution Policy ("UDRP") such as how to deal with privacy services and what constitutes evidence of registration and use in bad faith. There was some of that this year.  Andrew Lothian of Demys Ltd presented an analysis of the decisions where the domain name comprised the trade marks of more than one entity such asDr. Ing. h.c. F. Porsche AG v. Autom…

On the Tiles - the Court of Appeal's Judgment in Spear and Others v Zynga

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S.1 (1) of the Trade Marks Act 1994, which implements art 2 of Directive 2008/95/EC of the European Parliament and the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, defines a trade mark as "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."  If you are new to trade mark law or wish to be refreshed on the basics take a decko at "Introduction to Trade Marks" in our IP South East blog of 9 Oct 2013.

As I mentioned in "The Colour Purple - Société Des Produits Nestlé S.A. v Cadbury UK Ltd." 4 Oct 2013 the above words have been considered by the Court of Justice of the European Union in Case C-104/01, Libertel Groep BV and Benelux-Merkenbureau [2004] Ch 83, [2004] 2 WLR 1081, [2003] EUECJ C-104/01, Case C-273/00 Sieckmann v. Deutsche Patent –und Markenamnt [2002] ECR 1-11754, Case C-49/02 Heidelberger Bau…

The Colour Purple - Société Des Produits Nestlé S.A. v Cadbury UK Ltd.

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"The Color Purple" is a novel by Alice Walker which won its author the Pulitzer Prize for Fiction in 1983. if you have not read the book here is Wikipedia's summary of the plot.  It is a great book with a great story.

The colour purple (or rather pantone 2685C) is only slightly less gripping. It is the subject of a tussle between two of the world's largest confectionery companies the latest stage of which has just ended in the Court of Appeal (Société Des Produits Nestlé S.A. v Cadbury UK Ltd. [2013] EWCA Civ 1174 (4 Oct 2013)).

It started on 15 Oct 2004 when Cadbury Limited (“Cadbury”) applied to register "the colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods" as a trade mark for the following goods:
"Class 30: Chocolate in bar and tablet form, chocolate confectionery, chocolate assortments, cocoa-…

Passing off - Fenty v Topshop

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Mr. Justice Birss summarized the issues in Fenty and Others v Arcadia Group Brands Ltd (t/a Topshop) and Another  [2013] EWHC 2310 (Ch), [2013] WLR(D) 310 admirably in paragraph [1] of his judgment in that case: "Topshop is a well known fashion retailer. Rihanna is a famous pop star. In March 2012 Topshop started selling a t-shirt with an image of Rihanna on it. The image was a photograph taken by an independent photographer. Topshop had a licence from the photographer but no licence from Rihanna. Rihanna contends that the sale of this t-shirt without her permission infringes her rights. Topshop does not agree. This action is the result." In the next paragraph his lordship stressed that this case was not concerned with so called "image rights":
"Whatever may be the position elsewhere in the world, and how ever much various celebrities may wish there were, there is today in England no such thing as a free standing general right by a famous person (or anyone els…

Unified Patent Court Comes One Step Closer

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When I was called to the Bar in 1977 I spent a lot of time studying the Community Patent Convention which of 1975 because I really thought I would need to know about it. Hélas le temps perdu!. I would have spent the time no less profitably in the Seven Stars.  Forty years on, as they sing at Harrow, there are signs that something close to the original concept of the Community patent is about to become a reality.

On 17 Dec 2012 the Council of Europe and the European Parliament adopted two short regulations:
Regulation (EU) No 1257/2012 of the European Parliament and the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection; andRegulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements. These regulations do not establish a Community or EU patent as such but they do provide the very next be…

Bilateral Investment Treaties: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for failing to provide adequate IP Protection

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In Novopharm Ltd v. Eli Lilly & Co2010 FC 915 Mr. Justice Barnes of the Federal Court of Canada declared that Canadian patent no. 2,209,735 for the second medical use of the drug atomoxetine to treat attention deficit hyperactivity disorder in adults was invalid for inutility. His judgment was upheld by the Federal Court of Appeal in Eli Lilly & Co. v. Teva Canada Ltd 2011 FCA 220. Eli Lilly & Co. applied for leave to appeal to the Canadian Supreme Court but that was refused on 8 Dec 2012.

Similarly, in Eli Lilly Canada Inc. and Others v Novopharm Ltd 2011 FC 1288 Mr. Justice O'Reilly threw out Eli Lilly's claim against Novopharm for infringement of its Canadian patent no. 2,041,113 for olanzapine on the ground of invalidity. Again, Eli Lilly appealed but the Federal Court of Appeal upheld the court below in Eli Lilly Canada Inc v Novopharm Limited,2012 FCA 232. Again, Eli Lilly sought leave to appeal to the Supreme Court and, again, it was refused.

End of story on…