29 January 2016

Lookalikes: Gama Healthcare Ltd v PAL International Ltd

In  Gama Healthcare Ltd v PAL International Ltd [2016] EWHC 75 (IPEC) (20 Jan 2016) the claimant, Gama Healthcare Ltd ("Gama") sued PAL International Ltd. ("PAL") for passing off. Gama complained that the get-up of Pal's Medipal disinfectant and detergent wet wipes was so similar to the packaging of its Clinell wipes that it was likely to lead members of the trade to believe that the defendant's wipes were those of the  claimant or otherwise connected with the claimant. The goodwill claimed  lay in the use of those colours in combination with the colour block design for the front of the packaging described. The proportion of the front of the pack which was to be coloured was not specified, and no part of the packaging was relied upon apart from the front of the package. Gama pleaded that the front of the package was the critical aspect that would most commonly be viewed by the public.

Gama was founded in 2004 by two medical doctors. It developed a universal, disinfectant wipe, so called because it has both disinfectant and detergent properties and may be used as a hand wipe as well as on surfaces and equipment. The wipe was intended for use in the healthcare industry and was first sold to the NHS in 2006. A wider range of wipes was then developed and sold by Gama. The detergent wipes in issue were launched in September 2007. The claim against PAL related only to the disinfectant wipes sold in green and white packaging and detergent wipes sold in yellow and white packaging. By the time these proceedings were launched, over £5.8 million of Gama's disinfectant wipes were being sold annually, primarily to the NHS, and Gama had for some years (possibly since about 2008) been the market leader for the sale of such wipes to the NHS in England. It's evidence was that it had spent over £500,000 in the 3 years immediately before the action on marketing the wipes. The selection of advertising materials and merchandise in evidence showed the range of colours used.   Some but not all of those documents pre-dated September 2013, the relevant date for the assessment of passing off.

PAL is well established in the food sector and manufactured hygiene work wear. It started selling healthcare wipes in the Middle East in 2000. In 2005 it started manufacturing such wipes on a 'white-label' basis for other brands. In 2011 it decided to expand its business in the healthcare market in the UK by developing its own brand of healthcare wet wipes and chose the name "Medipal" for this new range of products. It looked at the packaging used by the various suppliers at that stage and saw that many of them, including the market leaders, used green for disinfectant wipes and yellow for detergent ones.  It developed several versions of the packaging before choosing the ones that appear in the photos in the right hand column above.

Referring to the speeches of Lord Halsbury LC and Lord Lindley in Schweppes Ltd v Gibbens (1905) 22 RPC 601, Miss Amanda Michaels, sitting as a deputy  enterprise judge, remarked at paragraph [29] of her judgment that it is not easy to establish passing off where the allegedly distinctive indicia consist only of get-up, and the parties' products bear distinctive names.  After reviewing the case law her ladyship directed herself to consider the following issues:
(1)   Does the Claimant have goodwill in its get-up?
(2)   Who is the relevant consumer?
(3)   Did the Defendant deliberately seek to pass off its products as those of the Claimant?
(4)   Was there evidence of actual deception?
(5)   Has there been a misrepresentation to a significant part of the relevant public?

Although the deputy judge discerned five separate issues the last four explored different aspects of the second probandum in Lord Oliver's famous formulation of the law of passing off in Reckitt and Colman Products Ltd v Borden Inc and Others  [1990] 1 WLR 491, [1990] RPC 341, [1990] WLR 491, [1990] 1 All ER 873, [1990] UKHL 12:
"The law of passing off can be summarised in one short general proposition—no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of purchasing public by association with the identifying "get-up" … such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant … (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods and services the plaintiff. … Thirdly, he must demonstrate that he suffers … damage …"
At para [27] of her judgment Miss Michaels noted that she was not required to consider damage as PAL had conceded at the case management conference that damage would follow if Gama succeeded on the first and second probanda.

Her ladyship found at paragraph [48] that Gama had a significant business in which it undoubtedly enjoyed goodwill but that goodwill subsisted in relation to its trade name Clinell but not in its pleaded get-up of its disinfectant or detergent wipes absent that trade name. That finding disposed of the case in the defendant's failure but the learned deputy judge addressed the other issues in the case in case she was wrong on the question of goodwill.

Miss Michaels found that the average customer was not a member of the general public but a hospital procurement department or a GP surgery which would pay attention to the sources and labelling of the products rather than the get-up. They would know the difference between Clinell and Medipal wipes and if they wanted one rather than the other they would make that clear when placing their orders.

As to the third issue Miss Michaels found that PAL intended to follow market trends and more specifically to reference Gama's packaging and products, to show that its products were competing with Gama's.   She characterized that as "a decision to live dangerously" but not to deceive or pass off. "Significantly", in her view, "the trade name chosen was distinctively different from 'Clinell'" and the disinfectant wipes were described as such, not as "universal" wipes like the Claimant's." There were also other noticeable differences between the parties' packaging. She accepted the defendant's evidence that it wanted its goods to be distinguished from the claimant's goods, if only because the defendant had every interest in building up goodwill for its own Medipal brand, in which it was making a significant investment.

On the fourth issue the deputy judge noted that several instances of alleged actual deception were pleaded, but not proved by witnesses with direct knowledge, A number of other instances of alleged confusion were attested to by witnesses who had provided witness statements but these proved to be initial impressions or otherwise discountable when subjected to cross-examination.

At paragraph [77] Miss Michaels concluded:
"I have taken into consideration the nature of the Claimant's case, which rather as in Schweppes (supra) invites this Court to look at only part of each party's Packaging and ignore the most conspicuous difference of the trade name. I have also considered the specialist market in which the great majority of these goods are sold, the manner in which they are sold, the characteristics of the majority of purchasers, the manner of purchase, and the unsatisfactory evidence of alleged confusion adduced by the Claimant. I conclude that most people will not be fooled most of the time, but there is a small risk of deception of some people in atypical circumstances. I do not consider that there is a risk of deception amongst a sufficiently substantial number of the Claimant's customers or potential customers for there to be a real effect on its goodwill. Nor, in all the circumstances, do I consider that the Defendant's products amount to instruments of deception. In my judgment, therefore, the Claimant has not established a case of passing off."
Though she did not say so in terms, it followed that Gama failed on the second probandum of Lord Oliver's formulation of the law of passing off mentioned above.

Surprisingly, the judgment did not refer to Mr Justice Jacob's decision in Hodgkinson Corby Limited and Another v Wards Mobility Services Limited [1995] F.S.R. 169 which suggests that neither party cited it.  This was another case where a defendant was sued for supplying a lookalike product to the NHS. The action failed because of the way in which supplies were procured by the NHS which was essentially the same reason for the claimant's failure in Gama. As his lordship put it at page 180:
"Now all the healthcare professionals I heard struck me particularly as not only caring but also careful people. Not one of them (and I heard from healthcare professionals called by both sides) suggested they would themselves be deceived. The process of ordering itself rules deception out. The main customer is the National Health Service, although, of course, there are also private customers such as charities and private hospitals and nursing homes. There are variations between the ways things are done between regions of the NHS and as to how private purchasers buy. None of this matters. Always it is a healthcare professional who initiates a purchase. Once such a professional decides a particular type of ROHO is needed, he or she puts in a written requisition. That must identify the particular type of ROHO wanted. If it does not, then the ordering department cannot move and must go back to the prescriber. Most orders mention ROHO by name (for instance the Welsh form requires the name of the maker). In some instances no name is used, but simply the model number. Those responsible for ordering (who are, of course, responsible for ordering a vast range of other things too) then process the order."
In those circumstances Mr Justice Jacob concluded at page 181 that the  likelihood of copying was non-existent.

Great play had been made by the claimant of the similarities in appearance between the claimant's product and the defendant's which, the claimant complained, amounted to copying. That did not matter said the judge:
"Some think that copying is unethical; others do not. Often the copyist of today becomes the innovator of tomorrow. Copying is said by some to be part of the lifeblood of competition, the means of breaking de facto market monopolies and keeping down the price of articles not protected by special monopolies such as patents or registered designs. Others say that copyists are parasites on innovators. None of this matters. Certainly it is not the law that copying as such is unlawful: the common law (and I am concerned with the common law) leans against monopolies."
Appeals were also made to such notions as “riding on the back of ROHO”, or “taking Roho's market”. That did not matter for, as the judge said, you can ride, on the back of a competitor by by honest competition.

In Hodgkinson Mr Justice Jacob explained at page 174 what is not the law: 
"There is no tort of copying. There is no tort of taking a man's market or customers. Neither the market nor the customers are the plaintiff's to own. There is no tort of making use of another's goodwill as such. There is no tort of competition."
He added at page [175]:
"At the heart of passing off lies deception or its likelihood, deception of the ultimate consumer in particular. Over the years passing off has developed from the classic case of the defendant selling his goods as and for those of the plaintiff to cover other kinds of deception, e.g.that the defendant's goods are the same as those of the plaintiff when they are not, e.g. Combe International Ltd v. Scholl (UK) Ltd [1980] R.P.C. 1 .; or that the defendant's goods are the same as goods sold by a class of persons of which the plaintiff is a member when they are not, e.g. Warnink (Erven) Besloten Vennootschap v. J. Townend Sons Ltd [1980] R.P.C. 29 . Never has the tort shown even a slight tendency to stray beyond cases of deception. Were it to do so it would enter the field of honest competition, declared unlawful for some reason other than deceptiveness. Why there should be any such reason I cannot imagine. It would serve only to stifle competition."
In assessing whether there has been (or is likely to be) deception the court must take into account not just the similarities between the original and lookalike products but also whether the potential purchaser is likely to be deceived. The get-up of a packet of chocolate business on a supermarket shelf may mislead a busy shopper as in United Biscuits (U.K.) Limited v Asda Stores Limited [1997] R.P.C. 513 but not a healthcare professional.

Should anyone wish to discuss this case, the law of passing off in relation to lookalikes or passing off generally, he or she should call me on 020 7404 5252 during office hours or contact me through my message form.

24 January 2016

Caspian Pizza Ltd and Others v Shah and Another

The sign that appears above is registered as a trade mark for
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; prepared meals; soups and potato crisps; canned foodstuffs; pizza toppings; preparations for making pizza toppings; dried preparations for use as pizza toppings; ingredients for making pizzas
in class 29 in the name of Caspian Holding Franchise Limited under trade mark number 2,559,245 with effect from 21 Sept 2010. Until 12 Jan 2016 it had been registered to Behzad Zarandi (Mr Zarandi") and Nadar Zand ("Mr Zand").

Until that date Mr Zarandi and Mr Zand also owned UK trade mark number 2,396,396 whereby the word CASPIAN had been registered for restaurant services, take-away food services and catering in services in class 43 with effect from 8 July 2005.

Caspian Pizza Ltd. ("CP") run a chain of pizza restaurants in and around Birmingham which is a business that Mr Zarandi claims to have started in 1991. He was joined in that business by his brother in law, Mr Zand, in 2011. Mr Zarandi and Mr Zand transferred their business to CP in 2012 though they continued to hold the trade marks.  By a licence agreement dated 7 Aug 2012 they licensed the company to use their trade marks.

A Mr Makseen Shah ("Mr Shah") had run similar restaurants in Worcester also called CASPIAN since about 2002 but the premises from which he operated that business had been let to a company called Porcelain Ltd. which now ran the business. There had been negotiations and dealings between Mr Shah and Mr Zarandi over the years which Messrs Zarandi and Zand claimed to have crystallized into a franchise agreement but that was denied by Mr Shah.

In  Caspian Pizza Ltd and Others v Shah and Another [2015] EWHC 3567 (IPEC) (9 Dec 2015) Messsts Zarandi and Zand and their company sued Mr Shah and the company that let the Worcester restaurant to Porcelain for trade mark infringement and passing off.  The defendants denied infringement on the ground inter alia that they had an earlier right under s.11 (3) of the Trade Marks Act 1994 and counterclaimed for revocation or invalidation of the trade marks on grounds of lack of genuine use, bad faith under s.3 (6), an earlier right under s.5 (4) (a) or that the use of the mark was prevented by copyright under s.5 (4) (b).

The action and counterclaim came on for trial before Judge Hacon on 26 and 27 Oct 2015 and he delivered judgment on 9 Dec 2015.  In his judgment he dismissed the claims for trade mark infringement and passing off and held that the word mark but not the device mark had been invalidly registered (see paragraph [83]).

The claimants had pleaded that Mr Shah had entered the franchise agreement with them in about 2008, that he had failed to pay the royalties due under that agreement and that they had terminated his franchise and licence to use the device and word marks for his restaurants but they abandoned that case at trial.  The judge found that Mr Shah had operated a restaurant under the CASPIAN name in Worcester since 2002 and that the goodwill generated by that operation would have been sufficient to found an action in passing off to prevent parties other than Mr Shah from conducting a pizza business under that name in Worcester.  That constituted an "earlier right" under s.11 (3).  As the claimants had no alternative case in the event of a finding that there had been no franchise agreement it followed that the claim for trade mark infringement failed.  

Although the judge noted at paragraph [11] of his judgment that the claimants' counsel had conceded that his case for passing off was unlikely to succeed if his claim for trade mark infringement failed His Honour considered at paragraph [34] the geographical extent of their goodwill. Finding that their restaurants were small outlets with a local clientèle he concluded that their goodwill associated with the CASPIAN sign never stretched as far as Worcester.   Consequently, there could be no claim for passing off.

The judge added at paragraph [48] that even if the business operated from the Worcester premises had infringed the registered trade marks and there had been an action for passing off neither Mr Shah nor his company would have been liable for the infringements or acts of passing off as they had divested themselves of the business by the start of the action.

Having dealt with the claim Judge Hacon considered the counterclaim for revocation of the marks or declaration of invalidity. Relying on Mr Allan James's decision in Re Sworders, West v Hudson BL O/212/06 (28 July 2006) the judge held that Mr Shah could have prevented the registration of the word mark under s.5 (4) of the Trade Marks Act 1994 and that he therefore had an "earlier right" within the meaning of s.47 (2) (b). However, there was no evidence of an earlier right in respect of the device mark.

As for the remaining defences, Mr Shah admitted in cross-examination that the CASPIAN trade mark had been used between 2005 and 2014 (see para [59]), there was no real evidence of registration in bad faith (paras [60] to [61]) and there was no evidence as to who owned copyright in the running chef illustration in the device mark.

The most interesting parts of the judgment concerned the s. 11 (3) defence to the claim for trade mark infringement and the counterclaim for a declaration of invalidity in respect of the word mark. Both arose out of Mr Shah's operation of his pizza business in Worcester between 2002 and 2004.

S.11 (3) of the Trade Marks Act 1994 defines "earlier right" for the purpose of that subsection as follows:
"For this purpose an “earlier right” means an unregistered trade mark or other sign continuously used in relation to goods or services by a person or a predecessor in title of his from a date prior to whichever is the earlier of—
(a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his, or
(b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his;
and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by virtue of any rule of law (in particular, the law of passing off)."
As Mr Zarandi had given unchallenged evidence that he had started his pizza restaurant business in Birmingham in 1991 which was long before Mr Shah began his in Worcester the judge acknowledged at para [530] that  "[o]n a straightforward reading of s.11(3), particularly sub-paragraph (a), the defendants have no defence under that subsection."

However His Honour was not sure that is right because s. 11 (3) must be interpreted in a manner consistent with art.6 (2) of the Trade Mark Directive which provides as follows:
"The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular locality if that right is recognised by the laws of the Member State in question and within the limits of the territory in which it is recognised."
According to the judge the draftsman of s.11 (3) appears to have elaborated on art. 6 (2). Referring to Mr Justice Jacob' decision in British Sugar plc v James Robertson & Sons Ltd [1996] R.P.C. 281, at 292; Lord Nicholls of Birkenhead's speech in R. v Johnson : [2003] FSR 42, (2003) 167 JP 281, (2003) 167 JPN 453, [2003] 3 All ER 884, [2004] ETMR 2, [2003] 1 WLR 1736, [2003] HRLR 25, [2003] UKHRR 1239, [2003] 2 Cr App Rep 33, [2003] 2 Cr App R 33, [2003] WLR 1736, [2003] UKHL 28, at [30] and the judgment of the European Court of Justice in Budejovicky Budvar v Anheuser-Busch Inc  [2012] RPC 11, [2012] ETMR 2, [2011] EUECJ C-482/09, [2012] Bus LR 298 he concluded: "What matters is the language of the Directive". He could speculate as to how s.11 (3)(a) should be notionally reworded so as to arrive at a correct interpretation, but in his view was that it is better to ignore it and focus on art 6 (2).  On that basis Judge Hacon reached the view at para [56] that art.6 (2) provided the defendants with a defence.

I have to say that I am not entirely persuaded by the learned judge's reasoning on that point. Art 6 (2) refers to "the laws of the Member State in question" but it does not prescribe what those laws should be. That is surely the job of the national legislatures and there seems to me to be no reason why the statute that implements the Directive should not define "the earlier right" applying to the particular locality to which art 6 (2) refers.

Equally courageous was the judge's preference for a decision of a hearing officer in Sworders over that of his illustrious predecessor in the later case of Redd Solicitors LLP v Red Legal Ltd and Another [2012] EWPCC 54; [2013] E.T.M.R. 13. In that case His Honour Judge Birss QC (as he then was) found that an earlier right which afforded a defence to infringement of a trade mark under s.11 (3) did not afford a ground for invalidity under s.5 (4) (a). Noting at para [67] that Judge Birss had not been referred to Sworders he declined to follow Redd on the following grounds:
"I think the difficulty with the approach to s.5(4)(a) taken in Redd may be that the resolution of the conflicting rights of parties using the same trade mark in different localities would come to depend arbitrarily on which party first gets to the tape of making an application to register the mark. Party A may have the more geographically widespread business and a greater legitimate expectation of expanding further. Party B, using the same trade name in another part of the UK, may be satisfied with a business limited to a relatively small locality. But if party B applies for a trade mark first then following Redd there would be nothing that Party A could do about it, save rely on its 'earlier right' to provide a defence to infringement under s.11(3), a defence strictly limited in geographical scope. The approach in SWORDERS is more likely to give the tribunal the opportunity, where possible and appropriate, to set a fair territorial limit to the trade mark right or rights granted. I therefore prefer the approach to s.5(4)(a)/art.4(4)(b) in SWORDERS."
Judge Hacon's argument on this point is attractive and I can see its force particularly as s.47 (2) (b) refers to the conditions in s.5 (4).  It would be anomalous if the same facts could found a defence to a trade mark infringement but not invalidate the trade mark in the absence of a disclaimer.   It will be interesting to see whether Caspian Pizza will be followed and, more importantly, endorsed on appeal.

Should anyone wish to discuss this case, earlier rights under s.5 (4) or s.47 (2) (b) or trade marks and passing off in general, he or she should not hesitate to call me on 020 7404 5252 during office hours or message me using my contact form.

23 January 2016

Preparing for the Unified Patent Court

Site of the London Section and UK Division of the Unified Patent Court

On 28 Jan 2016 I shall give a talk to the CIPA Merseyside Meeting entitled Preparing for the UPC. I will give another presentation in my chambers on 4 Feb 2016 entitled Unitary Patent and Unified Patent Court. The reason I shall give those talks is that the Unified Patent Court ("the UPC") is likely to come into being in the next few months which will in turn enable the European Patent Office to grant its first European patents with unitary effect ("unitary patents") for the territories of those countries that ratify the Agreement on a Unified Patent Court of 19 Feb 2013 ("the UPC Agreement"),

When will the UPC come into being?

Art 89 (1) of the UPC Agreement provides that it will come into force:
"on 1 January 2014 or on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession in accordance with Article 84, including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place or on the first day of the fourth month after the date of entry into force of the amendments to Regulation (EU) No 1215/2012 concerning its relationship with this Agreement, whichever is the latest."
So far, nine countries have notified their ratification or accession to the UPC Agreement including France, which is one the three member states with the highest number of European patents in force in 2012 (see the ratification details page on the Council website). The United Kingdom, another of the three, has passed primary legislation to enable the UK to ratify the agreement (see s.17 of the Intellectual Property Act 2014). The government has recently responded to to replies to a Technical Review and Call for Evidence on Secondary Legislation Implementing the Agreement on a Unified Patent Court and EU Regulations Establishing the Unitary Patent (see Government Response to the Technical Review and Call for Evidence on Secondary Legislation Implementing the Agreement on a Unified Patent Court and EU Regulations Establishing the Unitary Patent of 14 Jan 2016). It has also taken a lease to space in Aldgate Tower for the London section of the Central Division and the British Division of the Court of First Instance. Germany, the last of the three, is thought likely to ratify the UPC Agreement in September (see the interview of Wouter Pors of Bird & Bird by the Kluwer UPC News blogger on January 4, 2016, 2016: Countdown to the start of the Unified Patent Court Kluwer Patent Blog).

Effect of the Unitary Patent and the UPC

For many years the cost of patent prosecution in Europe has been considerably higher than in the USA or Japan (see Cost of Patents: EPO Report tells us what most of us already knew 23 Dec 2005 NIPC Inventors' Club) and the cost of enforcement in the UK higher still.  In Why IP Yorkshire I wrote:
"According to the British government's own (but now disbanded) Intellectual Property Advisory Committee, it can cost over £1 million for an infringement action in the Patents Court and even £150,000 to £250,000 for the Patents County Court compared to no more than €50,000 in France, Germany and the Netherlands (see the table at page 50 of IPAC "The Enforcement of Patent Rights" published on 18 Nov 2003)."
There has been progress with the London Agreement (Agreement on the application of Article 65 of the Convention on the Grant of European Patents) Official Journal EPO 12/2001 550, the new Patent County Court Rules and the introduction of the Small Claims Track but patent protection in Europe is still significantly more expensive than in the USA and Japan and patent litigation in the UK more expensive than in most of the rest of Europe. The unitary patent should reduce considerably prosecution and maintenance costs in Europe and the UPC will level the playing field for British litigants. That is why Hargreaves urged the UK to "attach the highest immediate priority to achieving a unified EU patent court and EU patent system, which promises significant economic benefits to UK business" (page 25 of Digital Opportunity A Review of Intellectual Property and Growth May 2011).

What is the UPC?

The UPC is neither a European Union court like the Court of Justice of the European Union nor a national court like the Patents Court or the Intellectual Property Enterprise Court but a legal hybrid.  It is a self-contained legal system with its own substantive and procedural law shared by the EU member states that ratify the UPC Agreement. Immediately it will share jurisdiction with national courts over infringement and revocation claims relating to European patents designating individual countries and exclusive jurisdiction over such claims relating to European patents having unitary effect. Eventually it will have exclusive jurisdiction over infringement and revocation claims relating to all European patents leaving national courts only with jurisdiction over national patents and property and other ancillary issues relating to European patents. The UPC will consist of a Court of Appeal and Registry in Luxembourg and a Court of First Instance with its seat in Paris and sections in London and Munich and local and regional divisions elsewhere in the contracting member states.

Substantive Law

In addition to the European Patent Convention, much of which is already imported into the laws of the constituent parts of the United Kingdom by the Patents Act 1977, the states that ratify the UPC Agreement become bound by Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (OJ 31.12.2012 L 361/1)Council Regulation (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 (OJ 31.12.2012 L 361/89) and of course the UPC Agreement.

The Regulations set out the framework for the substantive law and the UPC Agreement fills in the details. For instance, art 5 (1) of Regulation 1256/2012 provides:
"The European patent with unitary effect shall confer on its proprietor the right to prevent any third party from committing acts against which that patent provides protection throughout the territories of the participating Member States in which it has unitary effect, subject to applicable limitations."
That provision is supplemented by art 25 of the UPC Agreement:
"A patent shall confer on its proprietor the right to prevent any third party not having the proprietor's consent from the following:
(a) making, offering, placing on the market or using a product which is the subject matter of the patent, or importing or storing the product for those purposes;
(b) using a process which is the subject matter of the patent or, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor, offering the process for use within the territory of the Contracting Member States in which that patent has effect;
(c) offering, placing on the market, using, or importing or storing for those purposes a product obtained directly by a process which is the subject matter of the patent."
The following articles prohibit indirect infringement and provide for limitations and exceptions to the monopoly.


The UPC Agreement outlines the procedure, the composition of the judiciary and the remedies and these are supplemented by a comprehensive set of Rules of Procedure which have been drafted by a Preparatory Committee of representatives of all the contracting EU member states. Those Rules are likely to be submitted for public consultation shortly. Interestingly art 71 (1) of the UPC Agreement provides for legal aid for natural persons who are unable to meet the costs of proceedings, either wholly or in part.  As I helped to set up, and chaired, the Leeds, Liverpool and Sheffield inventors groups for many years I shall be taking a close interest in that provision and its implementation in the Rules of Procedure. It is also a consideration for patentees when considering an opt-out.

Further Information

This is the first of a series of articles that I shall be writing on the unitary patent and UPC over the next few weeks.   If anyone wishes to attend my presentation on 4 Feb 2016 or obtain a copy of my slides and handout afterwards, he or she should call Steve Newbery on 020 7404 5252 or email my clerks.

Further Reading


Preparatory Committee
UPC website
23 Jan 2016
Jane Lambert
NIPC Inventors
26 Jan 2016
Jane Lambert
IP North West
5 Feb 2016
Jane Lambert