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Showing posts from January, 2015

Threats: Global Flood Defence Systems Ltd v Van Den Noort Innovations BV

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One of the peculiarities of our intellectual property law is the threats action. It arises from provisions of the Patents Act 1977, Registered Designs Act 1949, Copyright, Designs and Patents Act 1988, Trade Marks Act 1994, The Community Designs Regulations 2005 and The Community Trade Mark Regulations 2006 that enable persons aggrieved by threats of infringement proceedings whether express or implied to sue the person making such threats (and his lawyer or trade mark attorney) if those threats prove to be unjustified. There are no similar provisions in other areas of our law and except for a few Commonwealth countries and the Irish Republic no similar provisions in other countries' intellectual property laws. These provisions ensnare foreign intellectual property owners and even experienced English commercial litigators.

This legislation has been criticized many times. In Intellectual Property 'Groundless Threats' Actions To Be Tackled By Government17 April 2013 DACbeach…

Swiss Style Claims: Warner Lambert v Actavis

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In Warner -Lambert Company, LLC v Actavis Group Plc EHF and Others[2015] EWHC 72 (Pat) (21 Jan 2015) Warner-Lambert LLC applied to Mr Justice Arnold for an interim injunction in the following terms:
"1, The Defendants: (a) shall make it a condition of any oral or written agreement entered into with a pharmacy for the supply of Lecaent that the pharmacy shall use reasonable endeavours not to supply or dispense Lecaent to patients who have been prescribed pregabalin for the treatment of pain, by making reasonable enquiries of a person presenting a prescription for 'pregabalin' as to whether the prescription is for pain and/or making reasonable checks of pharmacy records for the same; and (b) shall make it a condition of any oral or written agreement entered into with an intermediary (such as a distributor) for the supply of Lecaent that, in any onward supply of Lecaent by the intermediary, such intermediary must in turn make it a condition of any onward supply agreement fo…

Court of Appeal upholds Birss J in Rihanna's Case

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In Fenty and Others v Arcadia Group Brands Ltd and another[2013] EWHC 2310 (Ch), [2013] WLR(D) 310 Mr Justice Birss gave judgment to Robyn Rihanna Fenty (better known as Rihanna) and her corporate licensing companies against Top Shop for selling a t-shirt that reproduced a photo of the singer. The claim was brought not for infringement of copyright since the owner of the copyright in the photograph had licensed the reproduction of his work but for passing off. Rihanna and her companies had claimed that the t-shirt misrepresented authorization or approval of the manufacture and distribution of the garments and that such misrepresentation damaged her commercial activities. I wrote about the case in Passing off - Fenty v Topshop10 Sept 2013 and readers are referred  to that note for an appreciation of the judgment.

A lot of people were surprised by Mr Justice Birss's decision including me though I was eventually won over by his Lordship's reasoning after re-reading the case seve…

Car Wars: Enterprise and Europcar

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In Enterprise Holdings, Inc v Europcar Group UK Ltd and another [2015] EWHC 17 (Ch) (13 Jan 2015) Enterprise Holdings Inc. ("Enterprise") sued Europcar UK Ltd and its French holding company ("Europcar") for trade mark infringement and passing off.  Enterprise trades under the logo to the left while Europcar had begun to use the sign on the right. The litigation in England iwa part of a global struggle between the two car hire giants over those logos.  According to Mr Justice Arnold there are some 98 trade mark disputes between those parties over Europcar's new logo around the world. 
The Registration
Enterprise alleged infringement of 3 of its UK registered trade Marks and 7 of its Community ones. At trial Enterprise focused its case on CTM  937,4497 ("the CTM") which was registered as of 14 Sept 2010 in respect of  "vehicle rental and leasing services".  The device appears below:















Enterprise contended that Europcar's new logo infringed i…

Patents: the Difficulties of Designing Around a Patent: Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc #2

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In Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2013] EWHC 3768 (Pat) (3 Dec 2013) the claimant sued the defendant telecommunications company for infringing two of its European patents:
EP 2,259,495 adaptive DSL margin and band control using historical operational data ("495"); andEP 1,869,790 DSL state and line profile control ("790"). Mr Justice Birss held that 495 was valid but had not been infringed and that 790 was valid and had been infringed. Both sides appealed to the Court of Appeal. In Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2014] EWCA Civ 1462 (11 Nov 2014) the Court of Appeal allowed the claimant's appeal against the finding of non-infringement of 495 and dismissed the defendant's appeal against the finding of infringement of 790.
Following Mr Justice Birss's judgment BT attempted a redesign by replacing  loop software with an equation. BT argued that that was enough to tak…

Injunctions against ISPs Part VIII: Cartier International AG and Others v British Sky Broadcasting Ltd and Others

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In Cartier International AG and Others v British Sky Broadcasting Ltd and Others[2014] EWHC 3354 (Ch), [2014] WLR(D) 464 three of the subsidiaries of Compagnie Financière Richemont SA applied to Mr Justice Arnold for injunctions against the five largest internet service providers ("ISPs") in the UK in the following terms:
"1. In respect of its residential fixed line broadband customers to whose service the system known as … is applied, the … Defendant shall within 15 working days in relation to the initial notification (and thereafter, within 10 working days of receiving any subsequent notification) adopt the following technical means to block or attempt to block access to the Target Websites, their domains and sub-domains and any other IP address or URL notified to the …. Defendant whose sole or predominant purpose is to enable or facilitate access to a Target Website. The technology to be adopted is:
(i) IP blocking in respect of each and every IP address from which …

Patents: Court of Appeal allows the appeal in Jarden

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In Jarden Consumer Solutions (Europe) Ltd v SEB SA and Another [2014] EWHC 445 (Pat) (28 Feb 2014) Jarden Consumer Solutions (Europe) Ltd ("Jarden") sued SEB SA ("SEB") for the revocation of its European patent number 2.085,003 ("the patent") for deep fryer with automatic fat coating. SEB counterclaimed for infringement of the patent by importing and selling the Breville Halo Health fryer. The action came on for trial before Mr Justice Arnold who found that 3 of the claims of the patent were invalid but 3 others were valid and had been infringed. Jarden appealed against the judge's construction of the patent and his finding of infringement. The appeal was heard by Lord Justices Vos and Burnett and Sir Timothy Lloyd in Jarden Consumer Solutions (Europe) Ltd v SEB SA and Another [2014] EWCA Civ 1629 (17 Dec 2014),

The Patent
The invention  for which the patent was granted is was summarized by Lord Justice Vos at paragraph [4] by reference to the followin…