NIPC Law

Jane Lambert

An exception to the rule that a trade mark registration cannot be challenged for non-use in the first 5 years after registration is where the application to register the trade mark was made in "bad faith". The legislative mechanism is provided by s.47 (1) of the Trade Marks Act 1994:

"The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration)."

Subsection (6) of s.3 provides:

"A trade mark shall not be registered if or to the extent that the application is made in bad faith."

But what does "bad faith" mean exactly? In Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd and others[2009] Bus LR D81, [2008] EWHC 3032 (Ch), [2009] RPC 9, Mr Justice Arnold reviewed the Engish and European cases and concluded that it connoted not only dishonesty but also "…

High Court, Chancery Division, Technomed Ltd and Another v Bluecrest Health Screening Ltd and Another  [2017] EWHC 2142 (Ch) (24 Aug 2017)  Coram David Stone sitting as a judge of the High Court

This was an action for infringement of database right and copyright in an electrocardiogram ("ECG") analysis and reporting system known as ECG Cloud.

The System

The claimants, Technomed Ltd. and Technomed Telemedicine Ltd., had developed the system. The companies supply ECG equipment and use the ECG Cloud to analyse ECG readings and report the results to doctors or health screening companies such as the first defendant Bluecrest Health Screening Ltd. ("Bluecrest").

Mr Stone, who tried the action, described the operation of the system as follows at para [26] of his judgment:

"the process of using ECG Cloud starts with a mobile ECG machine which takes a reading from a patient. The patient data are then inputted into ECG Cloud through a web-based processing system. The pat…

Jane Lambert

Building the Evidence Base on the Performance of the UK Patent Systemis a report written by the Economics, Research, and Evidence team of the Intellectual Property Office. It was published on 23 Aug 2017.

The title of the report appears to refer to the first recommendation of Prof. Hargreaves's review of Intellectual property and growth (see Digital OpportunityMay 2011):

"Evidence. Government should ensure that development of the IP System is driven as far as possible by objective evidence. Policy should balance measurable economic objectives against social goals and potential benefits for rights holders against impacts on consumers and other interests. These concerns will be of particular importance in assessing future claims to extend rights or in determining desirable limits to rights."

It consists of 76 pages including covers and is divided into the following chapters:
Executive summary, Introduction and MethodologyChapter 1: Patent numbers in the UK and co…

Jane Lambert

On Wednesday I stressed the importance of pre-action correspondence and how the drafting of a letter before claim can make all the difference between getting what you want quickly and cheaply through focused negotiation and precipitating an expensive and possibly protracted law suit in Pre-Action Correspondence - Not Just a Box to be ticked or a Hoop to be jumped through2 Aug 2017. Today, I shall tell you what to do if you receive a letter accusing you of infringing a patent or some other intellectual property right.

If you have carried out an IP audit you should have a strategy in place for just such a contingency and you will have an insurance funded legal team ready to advise and represent you.  If you have a case they should be able to see off the challenge with a well-reasoned and documented response. If, however, you are in the wrong they will advise you of that reality and suggest ways of extricating yourself from the dispute as quickly and cost-effectively as poss…

Jane Lambert

Until the Civil Procedure Rules ("CPR") came into force in 1999 solicitors specializing in intellectual property law heralded litigation with an ultimatum called a letter before action. Written in haughty if not insulting terms and accompanied by a humiliating form of undertakings, they were intended to shock the recipient into submission. They rarely achieved the desired result. As often as not they were simply ignored.  Occasionally, they were answered by a defiant response.  As a result, a lot of actions were launched that could easily have been settled without recourse to litigation.

As I wrote in Dispute Resolutionall that was supposed to change with the introduction of Pre-Action Protocols and the Practice Direction-Pre-Action Conduct and Protocols:

"The objective of the Practice Direction and the Pre-Action Protocols is to enable the parties to identify the issues in dispute and, wherever possible, to resolve them through negotiation or some other fo…

Copyright is defined by s.1 (1) of the Copyright, Designs and Patents Act 1988 ("the CDPA") as  "a property right" which subsists in accordance with Part I of the Act in original artistic, dramatic, literary and musical work, broadcasts, films and sound recordings and typography. A work in which copyright subsists is known as "a copyright work" pursuant to s.1 (2). The owner of a copyright in a copyright work has the exclusive right to do certain acts that are restricted to the copyright owner (see s.2 (1) CDPA). More importantly, the copyright owner has the exclusive right to prevent others from doing those acts which are often referred to as "restricted acts".

There are two categories of restricted acts:
Primary Infringement which I discussed in Copyright: What is meant by "Primary Infringement"on 21 Sept 2008; andSecondary Infringement which I discussed in Copyright: What is meant by "Secondary Infringement"which I also wro…