Showing posts from 2017

Caspian Pizza Appeal - Caspian Pizza Ltd and Others v Shah and Another

Jane Lambert

Court of Appeal (Lady Justice Gloster and Lord Justices Patten and Richards) Caspian Pizza Ltd and Others v Shah and Another [2017] EWCA Civ 1874 (23 Nov 2017)

In Caspian Pizza Ltd and Others v Shah and Another [2015] EWHC 3567 (IPEC) (9 Dec 2015) Judge Hacon dismissed a claim for trade mark infringement and passing off. The trade marks relied upon were the device mark that appears above and the word mark CASPIAN. The judge declared the word mark invalid because the defendants had run a restaurant called "CASPIAN" in another part of the country which constituted an "earlier right" within the meaning of s.5 (4) of the Trade Marks Act 1994. However, he did not declare the device mark invalid on the ground that the defendants had no goodwill in the running chef logo.   I blogged about the case in Caspian Pizza Ltd and Others v Shah and Anotheron 24 Jan 2016.

The claimants appealed to the Court of Appeal against the invalidation of the word mark on the grou…

Scomadi v R A Engineering and Others - A Licence Agreement that went wrong

Jane Lambert

IPEC (Mr Recorder Campbell), Scomadi Ltd and Another v RA Engineering Co. Ltd and Others [2017] EWHC 2658 (IPEC) (27 Oct 2017)

On 19 Sept 2017, I chaired seminars in the studios of Northern Ballet in Leeds and at the Barnsley Business and Innovation Centre in South Yorkshire at which Tom Duke, our intellectual property attaché in Beijing, spoke on “Succeeding in China – How to mitigate IP risk” as part of a China IP Roadshow (see Jane Lambert Meet our IP Attaché to China21 July 2017 IP Yorkshire). One of the reasons why Tom made that tour is that an increasing number of British IP owners contract with manufacturers in China and other countries where production costs are lower than in the UK to make goods for them under licence. Often such arrangements work very well but sometimes they can go very badly wrong.  
An Example of an Agreement that did go wrong One instance where such an arrangement did go wrong is this litigation before Mr Recorder Campbell. It resulted in &quo…

"Is the shape of a London taxi a valid registered trade mark?" The London Taxi Corporation v Frazer Nash Research

Jane Lambert

Court of Appeal (Lord Justices Kitchin and Floyd) The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer-Nash Research Ltd and Another  [2017] EWCA Civ 1729 (1 Nov 2017)

In The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer-Nash Research Ltd and Another [2016] EWHC 52 (Ch) (20 Jan 2016) Mr Justice Arnold had to decide whether the shape of a London taxi could be registered as a British or European Union trade mark and, if it could, whether such a mark could be infringed by the manufacture and sale of a taxi that looks like the vehicle in the picture above. It should be remembered that art 3 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks provides that a trade mark may consist of any signs including the shape of goods providing that such signs are capable of distinguishing the goods of one undertaking from those of other unde…

Jurisdiction Disputes - a Portent of Problems to come? Parainen Pearl Shipping Ltd v Kristian Gerhard Jebsen Skipsrederi AS

Jane Lambert

Patents Court (Mr Justice Arnold) Parainen Pearl Shipping Ltd and Others v Kristian Gerhard Jebsen Skipsrederi AS and Others [2017] EWHC 2570 (Pat) (18 Oct 2017) 

This was a dispute between a company that had been incorporated in the Marshall Islands and its Cypriot subsidiaries on the one hand and three companies that had been incorporated in Norway on the other over whether the Patents Court had jurisdiction to hear an action for a declaration of non-infringement relating to the bulk discharge system of a Bahamas registered cement carrier that was alleged to infringe the British, Finnish and Swedish designations of European patent number 2 032 426 "System and method for discharge of bulk material from a ship".Particulars of the ship together with photographs of her can be found on the Marine Traffic website.

The Dispute
The patent had been granted to the first defendant.  It was designated in 32 countries but validated after grant in only 12 of them including th…


Jane Lambert

Chancery Division (Mr Justice Snowden) Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd and others[2017] EWHC 2600 (Ch)

In Denmark there was once a game show called "Minute Winner" which was devised by a Mr Derek Banner. Mr Banner claimed to have assigned his rights in the format for the game show to a company that he had set up called Banner Universal Motion Pictures Ltd. ("BUMP"). The rights that BUMP claims to have acquired were essentially copyright in a document entitled

"MINUTE WINNER Mini-format Game show Daily or weekly show. Or short one minute between main programs. Morning, Evening or Afternoon program. One minute, or 30 minutes with several winnings"
and the benefit of an obligation of confidence under Swedish and English trade secrecy laws. The obligation of confidence is said to have arisen when Mr Banner met Jock Millgardh and Matthias Olsson of the Swedish company Friday TV AB ("Friday") to discuss Mr Ba…

Copyright in Photographs - Pablo Star Media Ltd v Bowen

Jane Lambert

Pablo Star Media Ltd v Bowen [2017] EWHC 2541 (IPEC) (13 Oct 2017)

The above photograph is of a pub in Tenby where Dylan Thomas left the manuscript of Under Milk Woodon a stool.  Under Milk Wood is a radio play about the residents of a fictional village called Llareggub. I am told by those proficient in the language that Llareggub means nothing at all in Welsh but the letters do mean something in English if the spelling is reversed.

"Llareggub" less the first 3 letters spelt backwoods with the addition of the particle "-ation"

I thought of Llareggub when I read Judge Hacon's judgment in the appeal from Deputy District Judge Vary's decision in Pablo Star Media Ltd v Bowen [2017] EWHC 2541 (IPEC) (13 Oct 2017) where the learned Enterprise Judge dismissed a copyright owner's appeal against Deputy District Judge Vary's award of £250 damages plus £3 interest for infringing the copyright in the photo of Dylan Thomas and his bride less £164.10 c…