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Showing posts from 2014

Designs in Ice Cream Vans: Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others

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There are often a lot of cases brought by the fashion trade or toy or novelty manufacturers in the run up to Christmas. There don't seem to have been all that many this year judging by the Chancery Division cause list and the Patent Court and Intellectual Property Enterprise Court ("IPEC") diaries. However, there has been a case about ice cream or rather ice cream vans. In Whitby Specialist Vehicles Ltd. v Yorkshire v Yorkshire Specialist Vehicles Ltd[2014] EWHC 4242 (Pat) the biggest manufacturer of ice cream vans in the UK sued one of its competitors or unregistered Community design, design right and trade mark infringement.

The trial took place in the Patents Court on the 10, 12-14, 20 Nov 2014 and judgment was delivered on the 17 Dec 2014. Usually actions of this kind proceed in IPEC where trials are limited to two days and costs are capped at £50,000 for the trial on liability and £25,000 for the account or inquiry. Those not in the case have to wonder why that did…

Is Infringement of a Foreign Patent akin to Highway Robbery?

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Patents: Les Laboratoires Servier and another v Apotex Inc and others[2014] UKSC 55, [2014] 3 WLR 1257, [2014] WLR(D) 452, [2014] BUS LR 1217, UK Supreme Court


In Everet v. Williams (1893), 9 L.Q. Rev. 197, the highwayman John Everet sued his partner in crime Joseph Williams "for discovery, an account, and general relief" for dealing "with several gentlemen for divers watches, rings, swords, canes, hats, cloaks, horses, bridles, saddles, and other things" which they acquired "at a very cheap rate". The court dismissed the action on the ground that no action arises from a disgraceful act ("ex turpi causa non oritur actio"), fined the claimant's solicitors and ordered them to pay the defendant's costs. They got off lightly. Their client and the defendant were arrested, brought to trial for their "dealings" and hanged. You can find out more about the case in The Highwayman's Case.

Fast forward to 2008.  In Les Laboratoires Se…

What is the definition of "design" in s.213 (2) of the Copyright, Designs and Patents Act 1988 following the deletion of "any aspect of" from the sub-section

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In DKH Retail Ltd v H. Young (Operations) Ltdthe claimant, which claimed design rights and unregistered Community design in relation to the front portion and hood of a range of gilets sold under the product name Academy under the Superdry brand sued the defendant for importing and selling a range of Glaisdale gilets under the Animal brand. The defendant raised the usual defences on subsistence, ownership and infringement. 
This case is interesting because it is the first judicial analysis of the effect of the deletion by s.1 (1) of the Intellectual Property Act 2014 of the words "any aspect of" from the definition of "design" in s.213 (2) of the Copyright, Designs and Patents Act 1988. I had discussed that deletion in "How the Intellectual Property Act 2014 will change British Unregistered Design Right Law"11 June 2014 and "The Intellectual Property Bill 2013"28 May 2013.  Even though the case began before the Intellectual Property Act 2014 re…

Is this a copy? John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd

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In John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd[2014] EWHC 3779 (IPEC) (21 Nov 2014) Judge Hacon had to decide whether the fabric used to make the dress in the bottom photo was a copy of the fabric in the top one.

The Facts
Some time before the beginning of Aug 2012 Lee Ann Fashions Ltd. ("Lee Ann") received the following design brief from Marks & Spencer:
"Print Direction  More primitive wood blocking prints, bold batiks, multi-stripes and tribal prints. Often these are anchored with stone and Black with highlights of the colour pops of the collection"

On 2 Aug 2012 employees from Lee Ann met a sales executive of John Kaldor Fabricmaker UK Ltd ("Kaldor"). Lee Ann invited Kaldor to supply samples of its materials so that Kaldor could bid for Marks & Spencer's order.

Kaldor supplied 22 samples including 4 metres of the fabric in Annex 1. Lee Ann offered to supply Marks & Spencer dresses made from that fabric. The offer was accepte…

Eli Lilly and Co. v Government of Canada: Latest Developments

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I mentioned Eli Lilly's claim against Canada for compensation under art 1110 of the North American Free Trade Agreement ("NAFTA") in Bilateral Investment Treaties: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for failing to provide adequate IP Protection27 July 2013 and Bilateral Investment Treaties: Eli Lilly and Co. v Government of Canada2 Jan 2014 as well as my article "Bilateral Investment Treaties: A Remedy for SME?" which was published in Issue 12 of Volume 35 of the European Intellectual Property Review on page 759.

Following Eli Lilly's Notice of Arbitrationwhich I mentioned in January the parties appointed Professor Albert Jan van den Berg, Mr Gary Born and Sir Daniel Bethlehem KCMG, QC as arbitrators. Eli Lilly designated its Notice of Arbitration as its statement of claim by a letter from its lawyers dated 14 May 2014. The arbitrators have made a procedural order dated 26 May 2014

designating the Internationa…

Software Patents - Lantana v The Comptroller

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Lantana Ltd. ("Lantana") is a California company that offers communication cable services, telephone systems and services and computer and data network services mainly to customers in Southern California. One of the company's employees invented a "method, systems, and computer program products for retrieving a file of machine readable data" for which Lantana applied for patents in the USA and around the world under the Patent Co-operation Treaty.

The Invention 
The invention is described in the abstract of the application as follows:


"A user, wishing to retrieve a file of machine-readable data from a remote machine-readable data storage device, transmits a first e-mail message from a local station to a remote station via a packet switched network. The first e-mail message includes a first machine-readable instruction and a first machine-readable retrieval criterion. The remote station receives the first e-mail message from the packet switched network. The r…

Inquiries as to Damages in the Intellectual Property Enterprise Court: The National Guild of Removers and Storers Ltd v Statham and Others

The National Guild of Removers and Storers is a trade association for the removal industry. According to its website

"The Guild's priority has always been, and remains, consumer protection in an industry where there are no specific laws to protect the moving public"

and its efforts in respect of consumer protection have been recognized by Which.  As a result, the Guild has a good reputation among the public making it advantageous to become a member.  The Guild has a number of trade marks which it allows its members to reproduce on their stationery, marketing literature and websites for so long as they remain members of the Guild.

When a remover ceases to be a member of the Guild it is required to remove the trade mark and references to the Guild immediately. If it fails to do so the Guild sues it for trade mark infringement or passing off. The Guild has brought a number of infringement proceedings over the years against its former members and the damages that have been awa…

Inquiries as to Damages in the Intellectual Property Enterprise Court: Henderson v All Around the World Recordings Ltd.

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I last discussed this litigation in Success Fees and ATE Premiums in the Patents County Court: Henderson v All Around the World Recordings Ltd4 May 2013. I set out the basic facts in my case note:
"This was an action for infringement of a performer's rights which Judge Birss QC (as he then was) decided in Henderson v All Around the World Recordings Ltd and Another [2013] EWPCC 7 (13 Feb 2013).......  She had not been entirely successful and the costs of an unsuccessful copyright claim and half the costs of an application were awarded against her but she had succeeded overall." The claimant had entered a conditional fee agreement with specialist solicitors and counsel because it was the only way she could bring this litigation. Her total costs and disbursements including success fees and after-the-event premiums would have been £232,676.20 had they been allowed but Judge Birss QC (as he then was) awarded her only £52,484.25.It followed that the balance would have to come…

Orphan Works Licensing

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One of the consequences of extending the term of copyright in many types of copyright has been a massive increase in the number of works in which copyright subsists whose owners cannot be identified or found. Such works are known as "orphan works" and HM government claims that there are some 91 million of them in the UK alone.  Because their owners cannot be traced orphan works cannot lawfully be reproduced even for preservation. Consequently, works recorded on such media as celluloid film and magnetic tape may be lost for ever.  Much of that work is culturally important and some of it is of considerable scientific interest such as patient records in studies of malaria.  In Digital Opportunity: A Review of Intellectual Property and GrowthProfessor Hargreaves described the problem of orphan works as "the starkest failure of the copyright framework to adapt."

The Orphan Works Directive
This is not of course a specifically British problem and on the 25 Oct 2012 the Eu…