19 January 2017

Case Note: Bhayani v Taylor Bracewell LLP - Goodwill generated by a Partner or Employee















Jane Lambert

Bhayani and Another v Taylor Bracewell LLP [2016] EWHC 3360 (IPEC) (22 Dec 2016)

In Reckitt and Colman Products Ltd v Borden Inc, and Others[1990] 1 WLR 491, [1990] RPC 341, [1990] 1 All ER 873, [1990] WLR 491, [1990] UKHL 12 discussed the elements of an action for passing off. The first of those elements was
 "a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services."
His Honour Judge Hacon considered that element in the above-mentioned case

This was an application by Taylor Bracewell LLP for summary judgment in, or, alternatively, the striking out of, a passing off action that had been brought against it by its former fee earner, Jay Bhayani, and her law firm, Bhayani Law Limited.

Ms Bhayani is a solicitor specializing in employment law. The judge observed that it was common ground that she was "an employment lawyer of some note in Sheffield." Taylor Bracewell wanted to open an office in Sheffield with an employment law department. In 2011 it offered to employ Ms Bhayani as a salaried partner in charge of an office in Sheffield from where the firm was to carry on business in the name or style of 'Bhayani Bracewell'.

On 14 Feb 2014 Taylor Bracewell applied to register











as a British trade mark for a wide range of services in classes 35 and 45 under registration number UK3042588.

The parties fell out and Ms, Bhayani left Taylor Bracewell on 17 Oct 2014. For a while, it continued to practise from Sheffield in the name or style of 'Bhayani Bracewell'. Ms Bhayani sued Taylor Bracewell alleging:
"that by use of the 'Bhayani Bracewell' name Taylor Bracewell has falsely represented that Ms Bhayani is still involved with their business and has thus passed off its services, particularly its employment law services, as being those of Ms Bhayani. The claimants allege further and more specific acts of passing off: that Taylor Bracewell has (i) stated that Ms Bhayani is still a team member on pages of the Website and on the website hosted at www.taylorbracewell.co.uk, (ii) kept a voicemail message recorded by Ms Bhayani which clients are liable to access out of hours, (iii) told a Mr Greaves of AAG Systems Ltd that Ms Bhayani was still carrying out work for Taylor Bracewell, (iv) maintained a Google business account in relation to 'Bhayani Bracewell', (v) used the Domain Name and refused to surrender it and (vi) used the Trade Mark and refused to surrender it."

Ms Bhayani also claimed revocation of the trade mark under s.46 (1) (d) of the Trade Marks Act 1994.

Taylor Bracewell applied for summary judgment or a striking out on the following grounds:
"[20] First, Taylor Bracewell says that in law Ms Bhayani does not own goodwill to found a case in passing off. It is common ground that Ms Bhayani has never practised as a sole practitioner. Before she joined Taylor Bracewell she worked at a firm called Watson Esam, initially as an employee and then as an equity partner from 1996 to 2011. Mr Moss argued that any goodwill generated by her activities as a solicitor before October 2014 can only have vested in Watson Esam and subsequently in Taylor Bracewell. In each case the goodwill was associated only with those firms' respective trading names. Ms Bhayani has never owned any relevant goodwill herself.
[21] Secondly, on a correct construction of the 2014 Partnership Agreement Taylor Bracewell is entitled to use the trading name 'Bhayani Bracewell'.
[22] Thirdly, the contractual right to use that name means that the Trade Mark cannot be invalid pursuant to s.46(1)(d)."
In her reply, Ms Bhayani argued that
"[23] ...... the goodwill she generated while she worked at Watson Esam and Taylor Bracewell was associated with her own name and was at all times owned by her. Mr Keay submitted that in law it is not necessarily the case that goodwill generated by an employee or partner is vested in the employer or partnership, as the case may be. It will depend on the facts. Those facts have to be explored at trial.
[24] On a correct construction of the partnership agreements, Ms Bhayani's consent to use 'Bhayani Bracewell' terminated once she had left. To the extent that there was any doubt about that, the agreements have to be construed in the light of the relevant factual matrix, which should be left until trial.
[25] Finally, even if Taylor Bracewell were to own the relevant goodwill, its use of the 'Bhayani Bracewell' name and other representations that Ms Bhayani was still part of the firm rendered the Trade Mark liable to deceive the public."
The case thus turned on whether Ms, Bhayani or her former employer owned such goodwill as may have been generated by her activities as a solicitor in relation to the "Bhayani Bracewell" name. The judge first drew a distinction between reputation and goodwillH:
"[26] During the course of her career at Watson Esam Ms Bhayani acquired a significant reputation, particularly in the Yorkshire area, as a solicitor with a high level of expertise in the field of employment law. It is not in dispute that reputation by itself does not found an action in passing off. The question is whether Ms Bhayani also acquired goodwill.
[27] Goodwill cannot in law subsist as a thing alone – it is indivisible from the business with which it is associated, see Star Industrial Co Ltd v Yap Kwee Kor [1976] FSR 256, at 259, recently endorsed by the Supreme Court in Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2015] UKSC 31; [2015] FSR 29, at [23] and [51]-[52].
[27] This is to be distinguished from reputation which exists by itself. A solicitor celebrated for his or her expertise may enjoy the highest possible reputation and this will be personal, attaching only to that individual. But reputation alone cannot form the basis of an action for passing off, no matter how high the wattage of celebrity."
He then turned to whether Ms Bhayani, as opposed to her employer or partners, had acquired any goodwill by virtue of her activities.

Judge Hacon observed at para [29]:
"In the general run, goodwill generated by the acts of an employee will be vested in the employer, see Asprey & Garrard v WRA (Guns) [2002] FSR 31, at [36]; Kingston, Miller & Co. Ltd. v Thomas Kingston & Co. Ltd. (1912) 29 R.P.C. 289, at 295. Similarly, where an individual works in a partnership the goodwill generated by his acts will in the normal course vest in the partnership, see Leather Cloth Co. v American Leather Cloth Co. [1865] 11 H.L.C. 523."
However, there were exceptions. Ms Bhayani's counsel had argued that any person who acquires a reputation by carrying out acts under their own name, real or otherwise, generates actionable goodwill on which they can personally rely. It makes no difference whether the person is employed or works for a partnership.  The judge rejected that contention as contradicting well-established authority. He accepted Taylor Bracewell's contention that an employee or partner acquires goodwill only in respect of actvities outside the scope of the employer's or the partnership business and relied on Edmund Irvine Tidswell Ltd. v Talksport Ltd. [2002] FSR 60, [2002] EWHC 367 (Ch), [2002] 2 All ER 414, [2002] EMLR 32, (2002) 25(6) IPD 25039, [2002] 1 WLR 2355, [2002] WLR 2355, [2002] EWHC 367 for support. He said at para [38]:
"Mr Irvine was under contract with Ferrari. The terms of the contract were apparently not relevant and so not made clear, but even if it had been a contract of employment, it was unlikely that his duties were stated to include the endorsement of products under his own name. The business conducted by Mr Irvine in the field of endorsement was quite separate from his business as a racing driver. It generated a distinct goodwill which was his and on which he could found an action for passing off."
The judge concluded at paras [42] and [43] that as there were no special facts any goodwill in the  "Bhayani Bracewell" name accrued to the firm and not to Ms Bhayani. Moreover, even if he was wrong on the passing off point, the partnership agreements were sufficient to transfer the goodwill in the "Bhayani Bracewell" name to Taylor Bracewell.

Taylor Bracewell had argued that the same partnership agreements afforded a cast iron defence to a claim for revocation under s,46 (1) (d). His Honour was not persuaded and allowed that portion of the claim to go to trial.

Accordingly, he allowed the application in respect of the claim for passing off but not for revocation of the trade mark.

Should anyone wish to discuss this case, or passing off or trade mark law in general, he or she should call me on +44  (0)20 7404 5252 during office hours or send me a message through my contact form.

18 January 2017

Just where does Mrs May's Speech leave the Unified Patent Court?

Rt. Hon. Theresa May MP
Author: Home office
Source: Wikipedia
Creative Commons Licence
















Jane Lambert

In her Lancaster House speech of the 17 Jan 2017 (the transcript of which can be found on The Independent's website) the Prime Minister acknowledged that "Britain might at times have been seen as an awkward member state" However, there is one policy upon which we have always been impeccably communautaire  That has been the scheme to establish a single European patent for the territories of all the EU member states with a single European patent court.

We were one of the few parties to ratify the Community Patent Convention in 1975 shortly after we joined the EEC. Ever since then our government has participated constructively in deliberations and negotiations both for a Community patent within the framework of the EU (see Community Patent on the Eur-Lex website) and a European patent litigation agreement ("EPLA") as an optional protocol to the European Patent Convention (see European Patent Litigation Agreement on the Wikipedia website).  The Gowers Review of Intellectual Property recommended the establishment of a unitary Community Patent (COMPAT) in 2006 to reduce substantially the cost of patent applications in Europe which were then twice as expensive as in the USA. Similarly, Professor Hargreaves urged the government 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" (see page 8 of Digital Opportunity A Review of Intellectual Property and Growth May 2011).

The reason why different governments of different political parties have always supported these initiatives is that patent litigation is considerably more expensive in England and Wales than it is anywhere else. In The Enforcement of Patent Rights Nov 2003, the Intellectual Property Advisory Committee reported at page 50 that the cost of an action in the Patents Court was £1 million and between £150,000 and £250,000 in the Patents County Court compared to €30,000 - 50,000 in France, €25,000 - 50,000 for Germany and €10,000 - 20,000 for summary proceedings and €40,000 for a simple action in the Netherlands.  According to Taylor Wessing's Patent Map - European Litigation Guide typical first instance costs are between £200,000 and £1 million in England despite the changes to CPR Part 63 (see New Patents County Court Rules 31 Oct 2010) and nearly as much in Finland, France and Ireland but considerably less in Germany, the Netherlands, Italy and Spain while in Poland they are between €2,000 and €25,000 depending on the value of the claim.

The relatively high cost of enforcement in England is often cited as one of the reasons why the UK trails not just Germany and France in the number of European patent applications but also the Netherlands with one third of our population and Switzerland with one eighth.
European Patent Applications 2015
Country
Number
USA
65,754
Japan
50,597
Germany
31,670
China
31,504
South Korea
18,215
France
13,370
Netherlands
8,451
Switzerland
8,354
UK
7,095
Source: European Patent Office

A single European patent for the territories of the UK and the other EU member states with a single court would clearly level the playing field for businesses in the UK.

The initiative for the EPLA stalled in 2007 when the legal service of the European Parliament opined that such an agreement would breach art 292 of the Treaty of Rome. The proposal for an EU patent and patent court failed over a disagreement with Italy and Spain as to the languages that to be used in EU patent proceedings. The remaining member states including the UK decided to press ahead with a European patent for the territories of those states to be known as a unitary patent with a single court to be known as the Unified Patent Court ("UPC").  An Agreement on a Unified Patent Court was reached on 19 Feb 2013 and implementing regulations were adopted by the European Council.

As I reported in Preparing for the Unified Patent Court 23 Jan 2016 the British government acted with considerable alacrity:
"The United Kingdom ....... 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)."
Until the June referendum there was every chance that the UPC would open at the beginning of this year.

The result of the referendum has delayed the launch of the UPC and unitary patent but it has not killed it off altogether. On 28 Nov 2016 Lady Neville Rolfe, the former Minister for Intellectual Property, announced in UK signals green light to Unified Patent Court Agreement that:
"the UK will continue with preparations for ratification over the coming months. It will be working with the Preparatory Committee to bring the Unified Patent Court (UPC) into operation as soon as possible."
However, the problem for the UK is that art 84 (1) of the UPC Agreement makes clear it is open only to EU member states and that disputes shall be resolved ultimately by the Court of Justice of the European Union.

The Prime Minister did not address the question about what to do with the Unified Patent Court in her Lancaster House speech though she did include four short paragraphs into her 10th negotiating principle headed "The best place for science and innovation."  However, she did give two pointers in saying that the UK intends to renounce the jurisdiction of the Court of Justice upon its departure from the EU but nevertheless wishes to remain a close partner of the EU.

Mrs May's negotiating strategy seems to be to exit the EU altogether and then negotiate ad hoc arrangements on such matters as appear to be in both British and the remaining states' interests as she did with justice and crime when she was Home Secretary. That may be what she hopes to do about the UPC if it is on her agenda at all. The possibility of such an ad hoc agreement for the UPC was floated by Richard Gordon QC and Tom Pascoe who were consulted by the IP Federation, the Chartered Institute of Patent Attorneys and the Intellectual Property Lawyers Association.  However, they flagged up several difficulties and concluded that in the absence of such an agreement any divisions of the UPC in the UK would have to close.

Even though it seems likely that the UK will have to leave the UPC it is clearly in the interests of British business (as it is is also in the interests of American, Chinese, Japanese and Korean business) to promote the unitary patent and the UPC since it will reduce patent prosecution and enforcement costs. But if the UK excludes itself from the UPC and unitary patent by its renunciation of the jurisdiction of the jurisdiction of the Court of Justice it will make it very much harder for it to achieve the aim of being the best place for science and innovation.

25 November 2016

Plummy!

Victoria Plums
Author Rasbak
Source Wikipedia
Creative Commons Licence

























Victoria Plum Ltd (t/a Victoria Plumb) v Victorian Plumbing Ltd and Others [2016] EWHC 2911 (Ch) (18 Nov 2016)  Mr Justice Henry Carr

In this case, Victoria Plum Ltd. had registered the words VICTORIA PLUMB as a UK trade mark in relation to a range of goods and services in classes 11, 20 and 35 under trade mark number 3,066,332. The specified services include:
"the bringing together, for the benefit of others, of…[bathroom items]… enabling customers to conveniently view and purchase those goods… via a website."
The question before Mr Justice Henry Carr was whether that trade mark was infringed by a process known as pay-per-click bidding.

Pay-Per-Click Bidding

Just about everyone who has ever used the internet will be familiar with Google, Yahoo and other search engines. Whenever a user wants to search the internet he or she enters search terms that the user thinks may be relevant into a slot on the search engine's web page and then clicks the "Search" symbol. Those search terms are known as "keywords" and search engine operators have found a way of making money out of them.

Whenever a user clicks a link to a website the website owner becomes liable to pay the search engine operator a sum of money.  That is what is known as "pay per click" (see the article on Pay-per-click in Wikipedia). The operators have developed software that enables advertisements containing pay-per-click links to be generated by typing keywords. Those advertisements appear on pages known as "search engine results pages" or "SERPS".  The position and prominence of such advertisements on a SERP depend on how much the advertiser wishes to pay for each keyword. Whoever is prepared to pay the most gets the best advertisement in the most prominent position. The price of each keyword is determined by the software through an automated online auction.

The process is perhaps better explained in this Wikipedia article:
"The advertiser signs a contract that allows them to compete against other advertisers in a private auction hosted by a publisher or, more commonly, an advertising network. Each advertiser informs the host of the maximum amount that he or she is willing to pay for a given ad spot (often based on a keyword), usually using online tools to do so. The auction plays out in an automated fashion every time a visitor triggers the ad spot.
When the ad spot is part of a search engine results page (SERP), the automated auction takes place whenever a search for the keyword that is being bid upon occurs. All bids for the keyword that target the searcher's Geo-location, the day and time of the search, etc. are then compared and the winner determined. In situations where there are multiple ad spots, a common occurrence on SERPs, there can be multiple winners whose positions on the page are influenced by the amount each has bid. The bid and Quality Score are used to give each advertiser's advert an ad rank. The ad with the highest ad rank shows up first. The predominant three match types for both Google and Bing are broad, exact and phrase match. Google also offers the broad modifier match type which differs from broad match in that the keyword must contain the actual keyword terms in any order and doesn't include relevant variations of the terms."
There is more information in paragraphs [23] to [29] of Mr Justice Henry Carr's judgment.

The Complaint

S.9 (1) of the Trade Marks Act 1994 confers on the registered proprietor of a trade mark "exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent." The next sub-paragraph of that section adds that the acts amounting to infringement, if done without the consent of the proprietor, are specified in s.10.  Subsection (4) of that section provides:
"For the purposes of this section a person uses a sign if, in particular, he-
(a). affixes it to goods or the packaging thereof;
(b). offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;
(c). imports or exports goods under the sign; or
(d). uses the sign on business papers or in advertising."
Victorian Plumbing Ltd. had  bid quite considerable sums for the following keywords:
a) "victoria plumb" / "victoriaplumb";
b) "victoria plum"/ "victoriaplum";
c) "victorian plumb" / "victorianplumb";
d) "victorian plum" / "victorianplum"; 
When keyed into search engines those keywords generated advertisements with links to Victorian Plumbing's website. The claimant submitted that bidding for those keywords constituted use within the meaning of s.10 (4) and hence infringement of its trade mark in that each of those keywords was either identical or similar to that mark and used in respect of the same or similar goods and services.

The Defence

Victorian Plumbing could not deny that those search terms were identical or similar to the registered trade mark or that they were used in respect of the same or similar goods and services but it raised the defence of honest concurrent user which Mr Justice Henry Carr summarized at paras [13] and [14] of his judgment:
"[13] .............  The parties have traded for many years in a wide range of directly competing goods. It is self-evident that the parties' names are so similar that there is a likelihood of confusion on the part of the public between them. In spite of actual confusion, the parties have co-existed peaceably for many years, each trading, without complaint, on an increasing scale.
[14] They allege that the parties have, honestly, built up their respective businesses and reputations using confusingly similar names, over many years. Consequently, as a matter of law, they have to live with the resulting confusion. To those consumers who are confused, the Claimant's trade mark does not constitute a unique guarantee of origin. The Defendants have done nothing to exacerbate confusion. Bidding on the Claimant's trade mark as a keyword constitutes fair competition. It is less likely to cause confusion than, for example, the First Defendant's television advertising, about which the Claimant does not even try to complain."
Victorian Plumbing also relied on estoppel and acquiescence.

The Counterclaim

The learned judge noted at para [12] that:
"The Claimant has also bid on the First Defendant's name as a keyword. It ceased this activity in 2016. The Defendants claim that, as a result of this conduct, the Claimant is estopped from pursuing its claim of infringement of trade mark. Alternatively, it has pleaded a counterclaim for passing off, which it relies on solely as a "squeeze" in the event that its defences fail."
He added at [138]:
"The Defendants complain of the Claimant's bidding on the name "Victorian Plumbing" as a keyword, so as to cause the return of sponsored links containing the text "Victoria Plum(b)". They allege that if, contrary to their primary case, bidding by the First Defendant on the Victoria Plum(b) marks as keywords is an infringement, then the same is true of the Claimant's keyword bidding."
Director's Liability

The claimant also joined the first defendant's managing director, John Radcliffe, as a second defendant on the basis that he was a joint tortfeasor. It contended that  he had day-to-day control of his company's activities, that he maintained its website and dealt with making changes to it, that he was solely responsible for branding the site, that he undertook the majority of the search engine optimization work. that he nvested time and money into SEO and that until 2012 he was solely responsible for ad words campaigns.

The Issues

The issues that the judge had to decide were as follows:
  • whether bidding for the keywords constituted use within the meaning of s.10 (4);
  • whether the defence of "honest concurrent user" applied in a case such as this;
  • whether Mr Radcliffe was personally liable for his company's wrongdoing; and
  • whether the claimant was liable to the first defendant for passing off.
The Judgment

His Lordship held at [143]:
"i) The First Defendant is liable for infringement of trade mark of the Claimant's "Victoria Plum(b)" marks.
ii) The Second Defendant is not jointly liable with the First Defendant for infringement of trade mark.
iii) The First Defendant's counterclaim for passing off against the Claimant is successful."
Whether Pay-per-click Bidding infringes a Trade Mark

In Case C-236/08 Google France Sarl v Louis Vuitton Malletier SA  [2010] ECR I-2417, [2011] Bus LR 1, [2011] All ER (EC) 411, [2010] RPC 19, [2010] ETMR 30, 3 ALR Int'l 867, the Court of Justice of the European Union decided that bidding on a trade mark as a keyword could constitute use of a sign identical with that mark in the course of trade. However, the Court hinted in paras [82] to [90] of its judgment that might not always be the case. It was possible to envisage circumstances when bidding for a keyword might not indicate the origin of goods or services and hence not infringe.

The Court of Appeal considered Google France in Interflora Inc and another v Marks and Spencer Plc (Rev 1) [2014] EWCA Civ 1403 (5 Nov 2014), [2015] ETMR 5, [2015] FSR 10, [2014] WLR(D) 473, [2015] BUS LR 492. Lord Justice Kitchin noted at para [98]:
"… internet advertising using keywords which are identical to trade marks is not an inherently objectionable practice. On the contrary, its aim is, in general, to offer to internet users alternatives to the goods or services of trade mark proprietors and it is not the purpose of trade marks to protect their proprietors from fair competition"
After considering both cases Mr Justice Henry Carr and reconciled them as follows at para 51:
"In my view, the case law establishes the following:
") A user who searches by reference to a brand name is likely to be looking for that brand. In this context, there is a particular propensity for confusion if the resultant advertising is vague as to origin; Google France at [85]; Interflora at [132].
ii) This explains the particular emphasis on "transparency" in the judgment of the CJEU. The reason why transparency is necessary is to protect the consumer from unclear advertising which, in context, is liable to mislead; Google France at [86] – [87]; Interflora at [143].
iii) On the other hand, bidding on trade marks as keywords, where the advertiser ensures that his advertisements enable average internet users to ascertain whether the goods or services originate from the trade mark proprietor or an unconnected third-party, cannot be objected to; Google France at [57] – [59]; Interflora at [98]."
Earlier in his judgment at para [48] he distilled the following principles:
"In my judgment, it is necessary, first, to identify the signs complained of. These are 'Victoria Plumb' and trivial variations on that sign. This constitutes use of signs identical to, or immaterially different from, the Victoria Plum(b) marks. This is not use of the First Defendant's name 'Victorian Plumbing'. Secondly, it is necessary to ask whether such use is likely adversely to affect the origin function of the Claimant's trade marks (since, in the present case, is not alleged that any other function is adversely affected). If the answer to this second question is in the affirmative, then, subject to the various defences advanced by the defendants, there is infringement. If it is answered in the negative, then there is no infringement. This does not alter the fact that the First Defendant is using the Claimant's name, rather than its own name, in the keyword bidding complained of."
Applying that test to the facts of the case he found that the trade mark had been infringed.

Honest Concurrent User

Noting that there was no provision for the defence of honest concurrent user in Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks or indeed Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark, Mr Justrice Henry Carr explained that the doctrine derived from the CJEU's decision in Case C-482/09, Budejovicky Budvar NP v Anheuser-Busch Inc.  [2012] ETMR 2, [2012] RPC 11, [2011] EUECJ C-482/09, [2012] Bus LR 298 that:
"Article 4(1)(a) of Directive 89/104 must be interpreted as meaning that the proprietor of an earlier trade mark cannot obtain the cancellation of an identical later trade mark designating identical goods where there has been a long period of honest concurrent use of those two trade marks where, in circumstances such as those in the main proceedings, that use neither has nor is liable to have an adverse effect on the essential function of the trade mark which is to guarantee to consumers the origin of the goods or services."
That judgment was considered by the Court of Appeal upon receiving the CJEU's ruling and again in IPC Media Ltd v Media 10 Ltd [2014] EWCA Civ 1439 (12 Nov 2014).

After considering those cases, the judge concluded at [74]:

"i) Where two separate entities have co-existed for a long period, honestly using the same or closely similar names, the inevitable confusion that arises may have to be tolerated.
ii) This will be the case where the trade mark serves to indicate the goods or services of either of those entities, as opposed to one of them alone. In those circumstances, the guarantee of origin of the claimant's trade mark is not impaired by the defendant's use, because the trade mark does not denote the claimant alone.
iii) However, the defendant must not take steps which exacerbate the level of confusion beyond that which is inevitable and so encroach upon the claimant's goodwill."
A crucial element of that defence was honesty and that had to be assessed as follows:
"i) The defendant has a duty to act fairly in relation to the legitimate interests of the trade mark proprietor.
ii) All circumstances must be considered when ascertaining whether or not the use by the defendant is honest, including whether the defendant can be regarded as unfairly competing with the trade mark proprietor.
iii) However, the question is not simply whether use of the sign complained of gives rise to consumer deception, as such deception may have to be tolerated. Similarly, the defendant may well be aware of the existence of such confusion, having lived with it for a considerable period.
iv) The question is whether the defendant has taken steps which exacerbate the level of confusion beyond that which is inevitable and so has encroached upon the claimant's goodwill.
v) Whether the defendant ought to be aware that such steps will exacerbate confusion is a relevant factor."
His Lordship decided that the honest concurrent user defence could not apply when the parties used different trade marks . In any case, Victorian Plumbing had greatly increased its expenditure on keywords thereby greatly exacerbating the level of confusion.

Mr Radcliffe's Liability

The judge referred to Lord Neuberger's judgment in Sea Shepherd UK v Fish & Fish Ltd  [2015] 4 All ER 247, [2015] 2 WLR 694, [2015] WLR(D) 102, [2015] 1 AC 1229, [2015] UKSC 10, [2015] 1 Lloyd's Rep 593, [2015] 2 All ER (Comm) 867, [2015] AC 1229 where he identified three conditions for joint liability:
"First that he has assisted in the commission of the tort by another person; second, that it is pursuant to a common design; and third, an act is done which is, or turned out to be tortious."
In his Lordship's view the first and second conditions had not been satisfied:
"The acts complained of were not commenced until the end of 2012 and Mr Radcliffe's knowledge of and involvement in these acts was at a very high level of generality. He mistakenly claimed during his oral evidence that the First Defendant was still using the Victoria Plumbing ad format, although this was clearly incorrect. This shows his lack of involvement in the First Defendant's keyword advertising. The Claimant submits that because Mr Radcliffe stated in cross-examination that he took full responsibility for all actions of his staff, and had regular meetings with Mr Pascoe to discuss the success of the bidding campaign, this is sufficient to show a common design. I disagree. Mr Radcliffe was fulfilling his responsibilities as Managing Director but was not sufficiently involved in the acts complained of by the First Defendant for joint liability to be established."
This reasoning suggests quite a narrowing of scope for holding directors personally liable for their company's IP infringements since the Court of Appeal's decision in  MCA Records Inc and another v Charly Records Ltd and Others [2003] 1 BCLC 93, [2002] FSR 26, [2002] ECDR 37, [2001] EWCA Civ 1441, [2002] EMLR 1, [2002] BCC 650.

Claimant's Keyword Bidding

Victoria Plumb began to bid on Victorian Plumbing's name, initially in May 2011 and then on a more substantial scale in August 2012. That bidding continued until 2016. Victorian Plumbing and Mr Radcliffe argued that against the background of long-standing and peaceable coexistence of the parties' businesses, a reasonable party in their position would have understood the other side as positively indicating that it did not object to their bidding on its trade marks as keywords and that in the light of that representation, it would be unfair to allow the claimant to complain about those acts.  The judge rejected that contention on the ground that the claimant's conduct did not amount to a representation and, even if it did, the defendants never relied on it.

However, the claimant's bidding did amount to passing off.  The judge was satisfied that the first defendant had goodwill in the Victorian Plumbing name and that bidding for those keywords was a misrepresentation. In the circumstances, damage could be inferred. The counterclaim therefore succeeded.

Conclusion

This is an important decision on three difficult points of law, namely:
  • when keyword bidding infringes a trade mark and amounts to passing off;
  • whether the honest concurrent user defence applies under the 1994 Act; and
  • when a director can be personally liable for the wrongdoing of his company.
It is likely to be quoted frequently in skeleton arguments as well as case notes and articles. Should anyone wish to discuss this case or trade marks and passing off generally, he or she should call me on +44 (0)20 7404 5252 or send me a message through my contact form.

29 October 2016

Where can you sue for trade mark infringement or passing off: AMS Neve v Heritage Audio

Author NuclearVaccum
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AMS Neve Ltd and Others v Heritage Audio S.L. and Another [2016] EWHC 2563 (IPEC)

Mark Vallance Crabtree and Barnett Waddingham Trustees Limited are the registered proprietors of three trade marks for sound recording and processing equipment that are used by AMS Neve Ltd. in its business. Two of those are UK trade marks and the third is an EU mark. Heritage Audio SL is a Spanish company that trades in audio equipment. AMS Neve and the trade mark proprietors have brought proceedings against Heritage Audio and its sole director, Pedro Rodriguez Arribas, in the Intellectual Property Enterprise Court for trade mark infringement and passing off on the grounds that they have offered for sale and sold equipment by reference to signs confusingly similar to each of those marks in the United Kingdom and other places.

Heritage and Mr Arribas applied for an order that the English courts do not have jurisdiction to try the claim under CPR Part 11. The application came on before His Honour Judge Hacon on 27 July and 11 Oct 2016. His Honour granted the application with regard to the EU trade mark but dismissed it with regard to the rest of the claim. The reason why the application in relation to the EU trade mark was allowed but not the rest of the action is that the jurisdiction to try claims for infringement of national trade marks and passing off is determined by Regulation (EU) No. 1215/2012 of 12 December 2012 ("the Jurisdiction and Judgments Regulation") while the jurisdiction to try claims for infringement of EU trade marks is determined by Council Regulation (EC) No. 207/2009 ("the EU Trade Mark Regulation") as amended by Regulation (EU) 2015/2424.

The acts that were alleged to have infringed the trade marks were the advertisement, offer for sale and sale of goods under or by reference to signs that were said to resemble the registered marks. Those acts were also said to amount to passing off as did certain statements on Heritage's website and in social media that were said to imply a connection between Heritage and AMS. Evidencing those acts was an invoice for €1,260 plus €40 for shipping to a customer in London, emails between Mr Arribas and a distributor in London, an Engish language website listing distributors in England and phone conversations by the claimant's solicitors with one of those distributors. The defendants argued that all transactions were concluded in Spain and the website contained invitations to treat.

Applying art 7 (2) of the Jurisdiction and Judgments Regulation which provides that
"A person domiciled in a Member State may be sued in another Member State:

(2) in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur;"
the judge held that the harmful event that was alleged to have occurred would have taken place in England. He referred to Case C-523/10 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH ECLI:EU:C:2012:220, [2012] EUECJ C-523/10, [2012] WLR(D) 117, EU:C:2012:220, [2013] Bus LR 150 where the Court of Justice  held:
"Article 5(3) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted as meaning that an action relating to infringement of a trade mark registered in a Member State because of the use, by an advertiser, of a keyword identical to that trade mark on a search engine website operating under a country-specific top-level domain of another Member State may be brought before either the courts of the Member State in which the trade mark is registered or the courts of the Member State of the place of establishment of the advertiser."
With regard to EU trade mark infringement, Judge Hacon noted that art 97 (1) of the EU Trade Mark Regulation provides:
"Subject to the provisions of this Regulation as well as to any provisions of Regulation (EC) No 44/2001 applicable by virtue of Article 94, proceedings in respect of the actions and claims referred to in Article 96 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment."
One of the exceptions to this rule was provided by art 97 (5):
"Proceedings in respect of the actions and claims referred to in Article 96, with the exception of actions for a declaration of non-infringement of a Community trade mark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened, or in which an act within the meaning of Article 9(3), second sentence, has been committed."
The Court of Justice had considered the predecessor to art 97 (5) in Case C-360/12 Coty Germany GmbH v First Note Perfumes NV  [2014] EUECJ C-360/12, ECLI:EU:C:2014:1318, [2014] BUS LR 1294, [2014] WLR(D) 243, EU:C:2014:1318 which concluded:
"The concept of ‘the Member State in which the act of infringement has been committed’ in Article 93 (5) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that, in the event of a sale and delivery of a counterfeit product in one Member State, followed by a resale by the purchaser in another Member State, that provision does not allow jurisdiction to be established to hear an infringement action against the original seller who did not himself act in the Member State where the court seised is situated."
This issue before the Court in Coty was whether the German courts had jurisdiction over a Belgian reseller who sold infringing goods in Belgium to a German importer. Judge Hacon discerned from the above ruling that the place where the infringement had been committed or was threatened for the purposes of art 97 (5) of the EU Trade Mark Regulation was not necessarily the same as the place where a harmful event had occurred or might occur within the meaning of art 7 (2) of the Jurisdiction and Judgments Regulation. In his view, there would have to be an infringing act as prohibited by art 9 (2) of the EU Trade Mark Regulation.

Referring to Coty His Honour stated at paragraph [67] of his judgment that the scope of art 97 (5) exception would be limited in many cases. He continued that the Court had drawn
"a conscious distinction between, on the one hand, the event of taking steps to put a sign on a website or alternatively the event of taking a decision to that effect and, on the other hand, the event of the display of the sign on the website. Only the courts of the place where the former event(s) take place have jurisdiction, in particular where locating the action in that place is most likely to facilitate the taking of evidence and the conduct of the proceedings for infringement of the EU Trade Mark."
Applying that principle to the facts of the case  before him, Judge Hacon held that the proper forum was Spain since that was the place of the defendant's domicile as well as the Member State in which the allegedly infringing acts had occurred.

Both the Jurisdiction and Judgments and EU Trade Mark Regulations will cease to apply once the negotiating period provided by art 50 (3) of the Treaty on European Union has expired. As there will be many businesses holding British and EU or other national trade marks it is to be hoped that HM Government will negotiate something like the Lugano Convention for the UK after we leave (see What Sort of IP Framework do we need after Brexit and what are we likely to get? 3 July 2016). Ironically, if we were able to negotiate something like Lugano for our country, the jurisdiction of our courts in respect of infringements of EU trade marks could in some circumstances be broader than it is at present since art 97 (5) would not apply but something like art 7 (2) of the Jurisdiction and Judgments Regulation would.

Should anyone wish to discuss this case, the Jurisdiction and Judgments Regulation or trade mark law generally (see Trade Marks FAQ he or she should call me on +44 (0)20 7404 5252 during office hours or use my message form.

17 October 2016

The Pregabalin Appeal: Generics v Warner Lambert

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Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2016] EWCA Civ 1006 (13 Oct 2016)

This was an appeal against two of Mr Justice Arnold's judgments. The first was his decision in Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 2548 (Pat) which I discussed in The Pregabalin Trial: Generics (UK) Ltd v Warner-Lambert Company LLC 18 Sept 2015. The second was his refusal to allow Warner-Lambert to amend certain claims of its patent after trial in  Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 3370 (Pat) on the ground that the application was an abuse of the process of the court.

The Issues
Lord Justice Floyd, who delivered the lead judgment on the appeal, identified the issues before the Court of Appeal as follows in the first paragraph of his judgment:
"Firstly, did Arnold J correctly hold certain claims of the patent in suit invalid for insufficiency; and, if so, should he have held more claims invalid on that ground? Secondly, was he correct in holding the patentee's application to amend claim 3 of the patent, made after judgment on the issue of invalidity, to be an abuse of the process of the court? Thirdly, if there were any valid claims which were the subject of the allegation of infringement, was the judge correct to hold that there was no infringement of the (Swiss-form, second medical use) claims in the patent?"
In the first of those judgments, Mr Justice Arnold had held that none of the claims of the patent in suit was obvious over any of the prior art relied on but several of the claims were invalid on grounds of insufficiency. Even if those claims had been valid, they would not have been infringed under s.60 (1) (c) or (2) of the Patents Act 1977. Consequently, as a result of certain letters sent out by Warner-Lambert, Pfizer was liable for making groundless threats of patent infringement proceedings.

The Facts
Warner-Lambert Company LLC ("Warner-Lambert"), now a subsidiary of Pfizer Inc ("Pfizer"), owns European Patent (UK)  0 934 061. Although the patent's title is "Isobutyl GABA and its derivatives for the treatment of pain", the relevant derivative is pregabalin, to which the Swiss-style, second medical use claims are limited. Warner-Lambert markets pregabalin under its trade mark Lyrica for the treatment of neuropathic pain, as well as for its previously known indications of general anxiety disorder ("GAD") and epilepsy. Pfizer markets the drug in the UK through its British subsidiary Pfizer Ltd. Lyrica is one of the Pfizer's most successful products. Global sales of the product amounted to approximately $4.6 billion in 2013 of which UK sales contributed approximately $310 million. Naturally, generic manufacturers want to break into the markets for the treatment of GAD and epilepsy and neuropathic pain.

The Litigation
Generics (UK) Ltd, trading as Mylan ("Mylan"), and Actavis Group PTC EHF brought separate claims for revocation of the patent on 24 June and 12 Sept 2014 respectively on the grounds of lack of inventive step and insufficiency. On 8 Dec 2014 Warner-Lambert commenced a claim for infringement of the patent against Actavis PTC, Actavis UK Ltd and Caduceus Pharma Ltd ("Actavis"), Warner-Lambert applied for an interim injunction to restrain sales of Actavis' generic pregabalin product, which was called Lecaent. The application came on before Mr Justice Arnold, who dismissed it in Warner-Lambert Company, LLC v Actavis Group Ptc EHF and Others [2015] EWHC 72 (Pat) (21 Jan 2015). I wrote about that judgment in Swiss Style Claims: Warner Lambert v Actavis 28 Jan 2015.

Actavis then made an application to strike out Warner-Lambert's claim for infringement. The application also came before Mr Justice Arnold J, who granted it insofar as the action was brought under s.60 (2) but not under s.60 (1) (c) of the Act because the correct scope to be afforded to Swiss style second medical use claims was a developing area of patent law. On 28 May 2015 the Court of Appeal dismissed Warner-Lambert's appeal against the refusal of the interim injunction but allowed an appeal against the striking out of the claim under s.60 (2). In so doing the learned Lord Justices held that Warner-Lambert's case under both subsections of s.60 was arguable.

The actions and counterclaims for groundless threats came on for trial before Mr Justice Arnold who delivered the first of the judgments mentioned above. His lordship gave both sides permission to appeal.

On 1 Oct 2015 Warner-Lambert made a conditional application to amend claim 3 of the patent by adding  the words "caused by injury or infection of peripheral sensory nerves" to the claim to the use of pregabalin to treat neuropathic pain,  The amendment was opposed by Mylan and Actavis in Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 3370 (Pat) (25 Nov 2015)  on the ground that that application was an abuse of process and Mr Justice Arnold agreed with them,

The Appeal
Warner-Lambert appealed against Mr Justice Arnold's finding on insufficiency and abuse of process and his dismissal of the counterclaim for infringement. The Court of Appeal dealt with each of the issues that Lord Justice Floyd had identified in para [1] of his judgment in turn.

Insufficiency
S.72 (1) (c) of the Patents Act 1977 gives the court power to revoke a patent if "the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art." The reason for this provision is that s.14 (3) requires every specification to 
"disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art."
That requirement is the heart of the bargain that an inventor makes with a state. In exchange for teaching those with the necessary skills and knowledge how to make or use the invention, the state offers the inventor a monopoly of the invention for up to 20 years from his or her patent application.

Citing paras 100 and 101 of Lord Justice Kitchin's judgment in Regeneron Pharmaceuticals Inc. and another v Genentech Inc. [2013] EWCA Civ 93, [2013] RPC 28, Lord Justice Floyd noted that a patent may be bad for insufficiency not only where the directions in the specification are inadequate to enable the skilled addressee to perform the invention at all but also where a claim is excessively broad having regard to the patentee's contribution to the art. At para [100] of his jusgment in Regeneron, Lord Justice Kitchin had said  that it must
"be possible to make a reasonable prediction the invention will work with substantially everything falling within the scope of the claim or, put another way, the assertion that the invention will work across the scope of the claim must be plausible or credible."
In the appeal before him, Lord Justice Floyd considered what was meant by the requirement that the specification should make the invention plausible or credible.

After reviewing  T 0609/02 Salk Institute for Biological Studies and T 1329/04 Johns Hopkins University School of Medicine where that point had arisen before the European Patent Office Boards of Appeal Lord Justice Floyd concluded at para [19] of his judgment:
"i) A mere assertion that compound X is suitable for treating disease Y is not sufficient without any more to render the invention plausible: Salk [9];
ii) The disclosure of the patent specification does not have to be definitely predictive of the efficacy of the invention: in vitro tests which may well not be reproducible in humans or animals may suffice: Salk [10], [11];
iii) An example of adequate support to amount to a plausible disclosure would be experimental tests, showing that the claimed compound has a direct effect on a metabolic mechanism specifically involved in the disease: Salk [9];
iv) Later published data are not admissible if they alone render the invention plausible: Salk [9], Johns Hopkins [12];
v) Ultimately the purpose of the requirement of sufficiency is to place the reader in possession of the invention without imposing undue burden on him by way of further investigation or research: Salk [10]."
 His Lordship also considered the Supreme Court' decision in  Human Genome Sciences Inc v Eli Lilly & Co.  [2012] 1 All ER 1154, [2012] RPC 6, [2011] UKSC 51, [2012] Bus LR D37 and the House of Lords' in Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] UKHL 49, [2008] RPC 28 which were broadly consistent with his conclusions even though those cases addressed different issues.

In order to determine whether a specification discloses the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art it is  necessary to construe the relevant claims, identify the person or persons skilled in the art to whom the specification is addressed and their common general knowledge. I discussed how the trial judge had approached those issues and reached his decision in my Pregabalin trial case note.

On appeal Warner-Lambert maintained the arguments that Mr Justice Arnold had rejected on the construction of the contentious claims arguing that if it was correct on those issues, the claims were plausible substantially across their breadth. Secondly, it submitted that the claims were plausible substantially across their breadth even on the construction arrived at by the judge. Thirdly it contended that the claims were plausible because pregabalin was shown to be anti-hyperalgesic.

Mylan and Actavis, submitted that the judge was right on the issues of construction and thus right to reject the argument that the claims were plausible substantially across their breadth. They also submitted that the judge had been wrong to find that the claims which were limited to types of peripheral neuropathic pain, claims 10, 11 and 12, were plausible.

The Court of Appeal rejected Warner-Lambert's criticism of the trial judge's findings on the skilled addressees' common general knowledge and his construction of the claims in contention. Finding themselves in substantial agreement with the court below their lordships rejected Warner Lambert's appeal on insufficiency.

Abuse of Process
Actavis and Mylan objected to the application to amend the  patent on the ground that it was an abuse of the process of the court, When the application came before him Mr Justice Arnold dismissed it on the ground that the application to amend  could and should have been made before trial.

In reaching his decision Mr Justiice Arnold considered the decisions of the Court of Appeal in  Nikken Kosakusho Works and another v Pioneer Trading Company and another [2006] FSR 4, [2005] EWCA Civ 906 and Nokia GmbH v IPCOM GmbH & Co KG [2011] FSR 15, [2011] Bus LR 1488, [2011] EWCA Civ 6. In thse cases Lord Justice Jacob had explored the circumstances when a c an amendment of a patent might be allowed, He said in Nikken:
"There are different situations in which the exercise of the discretion to allow amendment of a patent may be sought: (a) before a trial; (b) after trial, at which certain claims have been held valid but other claims held invalid, the patentee simply wishing to delete the invalid claims (I would include here also the case where the patentee wishes to re-write the claims so as to exclude various dependencies as in Hallen v Brabantia [1990] FSR 134. There the patentee is in effect continuing to claim which he had claimed before but in a much smaller way); and (c) after a trial in which all claims have been held invalid but the patentee wishes to insert what he hopes are validating amendments."
Lord Justice Jacob said that the court would usually allow amendment in the first two situations but not in the third in the absence of a good reason for doing so.

Lord Justice Floyd explained at para [174] of his judgment:
"The reason why the jurisprudence views with hostility the rewriting of claims after judgment is that, in contrast to the case where the claim existed in some form in the unamended patent, the party attacking the patent has not had a proper opportunity during the trial to address that claim. A further trial is thus rendered necessary in order to avoid procedural unfairness to that party, and it is the imposition of that further trial which is regarded as undue harassment."
He concluded at that that the amendment sought would, if granted, enable Warner-Lambert to bring fresh proceedings for the infringement of the amended patent on grounds that had not been raised at trial and that would be procedurally unfair. In the absence of a good reason for not seeking an amendment before trial Lord Justice Floyd could see no ground for interfering with Mr Justice Arnold's decision,

Infringement
Having held that the claims of  patent upon which Warner-Lambert relied were invalid and that those claims should not be amended, the appeal on infringement failed.

Swiss Style Claims
Although not strictly an issue in the appeal the Lord Justices considered the arguments that had been made on infringement in relation to Swiss style claims. As Lord Justice Floyd observed at para [187]:
"The law is struggling on the one hand to give the patentee a proper reward for his contribution to the art by elucidating the new use for the drug, whilst at the same time not excluding the competing manufacturer from making and marketing the drug for its known purpose. The issue is complicated by the interaction with the law relating to, and the practices of the market in, prescription medicines. The solution adopted by this court in [its decision of the interlocutory issues] was an attempt to strike the right balance by not placing insuperable obstacles in the path of the patentee, whilst at the same time recognising in very clear terms that the remedies available for infringement will have to be moulded so as to achieve fair and proportionate relief tailored to the very special circumstances of this type of case."
He therefore considered the following matters:
"Firstly, it is right that I should take a further look at the law on the construction of second medical use claims in Swiss form in the light of Arnold J's reservations and the further developments in the law of other states and the EPO. Secondly, I propose to deal with the arguments addressed to us by the intervener, the Secretary of State for Health, who was not called upon in [the interim issues appeal] and who has served a respondent's notice on the issue of the proper interpretation of Swiss-form claims. Thirdly, I propose to address Warner-Lambert's complaint that the judge failed correctly to apply the law as stated in [the previous appeal]. Fourthly, I will say something about indirect infringement."
After reviewing decisions on Swiss style claims in other EU member states Lord Justice Floyd endorsed the approach of the Court of Appeal in its earlier decision in this case notwithstanding Mr Justice Arnold's misgivings in the court below.

The Secretary of State had submitted that "as a general principle, the law does not impose liability as an accessory on the basis of a mental element which is less demanding than that of the person primarily responsible" and referred to the decision of the Supreme Court in Fish & Fish v Sea Shepherd UK and others [2015] UKSC 10 with regard to joint tort feasance at pars [37] to [44]. His lordship rejected that submission on the ground that the policy considerations in that case were different. S.60 (2) of the Patents Act 1977 provided a complete code for the issues in hand.

As to the third point, Lord Justice Floyd opined at para [216] that Mr Justice Arnold fell into error in his application of the Court of Appeal's judgment. He explained:
"Because claims in this form rely for their novelty on the purpose of the use of the drug, it is only essential that the manufacturer is able to foresee that there will be intentional use for the new medical indication. Intentional use is to be distinguished from use where the drug is prescribed for a different indication and, without it in any sense being the intention of the treatment, a pain condition is in fact treated."
On the fourth point, the learned Lord Justice considered that the prescription of a generic drug for a second medical use or its packaging for that purpose could amount to infringing acts.

Decision
Lord Justice Kitchin and Lord Justice Patten delivered concurring judgments.

Conclusion
This is an important case on insufficiency and abuse of process but it does not take the law on the infringement of a patent for a second medical use of an existing preparation much further. The Court of Appeal affirmed its earlier decision in the appeal on the interlocutory issues but that was never intended to be a final decision of the substantive ones.

Should anyone wish to discuss this case or any of the issues that arose in it, he or she should not hesitate to call me on 020 7404 5252 during office hours or send me a message through my contact form.