Trade Marks and Passing Off: Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd

The Inn Sign for the Beehive public house in  Grantham

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The Lincolnshire town of Grantham educated one of the world's greatest scientists and the first woman ti be British prime minister (see "Frit" - Merck Sharp Dohme Corp v Teva Pharma BV 25 March 2012). It has a magnificent parish church and is home to Chantry Dance Company which is very special to me as you will see from the last video clip in Chantry Dance Company's Sandman and Dream Dance 10 May 2014 Teprischore if you read that far. It has a pub called The Beehive with a real beehive for the pub sign (how's that for imaginative branding). Each Autumn it holds a science and arts festival in honour of Sir Isaac Newton called Gravity Fields (see Gravity Fields Festival - there's much more to Grantham than Mrs T 8 Aug 2014 East Midlands IP).

So you might think that the good people of Grantham would be very interested in intellectual property having contributed so much to science, branding and the arts - wouldn't you. Well you'd be wrong.  When I put together a workshop on intellectual property law with speakers from the IP Office, Loven IP and our chambers as part of the Gravity Fields festival which I promoted relentlessly in East Midlands IP for over a month I had hardly any takers and had to pull it at the last minute to save my speakers wasted journeys.

Or would you be so wrong?  A Grantham firm has just helped to make some trade mark law.  In Supreme Petfoods Ltd v Henry Bell &; Co (Grantham) Ltd  [2015] EWHC 256 (Ch) (12 Feb 2015) Supreme Petfoods Ltd of Ipswich sued Henry Bell & Co. of Grantham for trade mark infringement under s. 10 (1), (2) and (3) of the Trade Marks Act 1994, art 9 (1) (a), (b) and (c) of Council Regulation (EC) No 207/2009 of 26 February 2009on the Community trade mark ("CTM Regulation") and passing off. The marks relied upon were:

• UK registered trade mark no. 2345353 consisting of the word SUPREME registered as of 8 Oct 2003 in respect of (inter alia) "foodstuffs for animals; chews; meat and chocolate based animal treats; animal biscuits; animal litter; bird seed; animal bedding; … rabbit food" in Class 31 ("the UK Word Mark");
• UK registered trade mark no. 2454708 consisting of the stylised word shown below registered as of 5 May 2007 in respect of (inter alia) "animal foodstuffs; supplements for animal foodstuffs; edible treats for animals; animal bedding and litter" in Class 31 
  ("the UK Stylised Word Mark");
• UK registered trade mark no. 2454707 consisting of the ribbon device shown below registered as of 5 May 2007 in respect of (inter alia) "animal foodstuffs; supplements for animal foodstuffs; edible treats for animals; animal bedding and litter" in Class 31 
  ("the UK Ribbon Mark");
• CTM  No. 5874921 consisting of the stylised word shown above registered as of 4 May 2007 in respect of (inter alia) "animal foodstuffs; supplements for animal foodstuffs; edible treats for animals; animal bedding and litter" in Class 31 ("the Community Stylised Word Mark");
• CTM no 5875091 consisting of the ribbon device shown above registered as of 4 May 2007 in respect of (inter alia) "animal foodstuffs; supplements for animal foodstuffs; edible treats for animals; animal bedding and litter" in Class 31 ("the Community Ribbon Mark").

Supreme Petfoods complained of Henry Bell's use in the word "Supreme" its packaging as in the following example:

The case came on before Mr Justice Arnold who made clear his view of the case in the first sentence of his judgment: 

"In this case the Claimant ("Supreme Petfoods") seeks in essence to monopolise use of the word SUPREME as a trade mark for animal food."

From that moment onwards it became abundantly clear that the learned judge would throw out the claim. He concluded at paragraph [208] that:

"i) the UK Word Mark is invalidly registered save in relation to small animal food;
ii) the UK and Community Stylised Word Marks are invalidly registered save in relation to small animal food;
iii) the UK and Community Ribbon Marks are validly registered;
iv) Henry Bell has not infringed the UK Word Mark pursuant to Article 5(1)(a) of the Directive;
v) Henry Bell has not infringed the UK and Community Stylised Word Marks or UK and Community Ribbon Marks pursuant to Article 5(1)(b) of the Directive/Article 9(1)(b) of the Regulation;
vi) Henry Bell has not infringed the UK and Community Ribbon Marks pursuant to Article 5(2) of the Directive/Article 9(1)(c) of the Regulation."
vii) even if it would otherwise have infringed, Henry Bell would have a defence under Article 6(1)(b) of the Directive/Article 12(b) of the Regulation; and
viii) Henry Bell has not committed passing off."

Between paragraphs [12] and [25] the judge traced the development of Supreme's brand. From paragraph [26] to [42] he traced the development of Henry Bell's business and its marketing. At paragraph [43] he considered the use of the word SUPREME by other animal fee manufacturers.

His lordship then reviewed art 16 (1) of TRIPS, the 11th recital and arts 3, 5 and 6 of the European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version replacing Directive 89/104/EEC) ("the Directive"). The judge explained at paragraph [48] that he had referred to TRIPS because:

"The Court of Justice of the European Union has repeatedly held that, in a field of intellectual property law where the European Union has legislated, such as trade marks, national courts must interpret both European and domestic legislation as far as possible in the light of the wording and purpose of relevant international agreements to which the EU is a party, and in particular TRIPS."

He observed at paragraph [50] that:

"It is settled law that many issues in European trade mark fall to be assessed from the perspective of the "average consumer" of the relevant goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect"

adding  as Mr Justice Birss had pointed out in Hearst Holdings Inc v AVELA Inc [2014] EWHC 439 (Ch), [2014] FSR 36 at [60], that:

"The word 'average' denotes that the person is typical. The term 'average' does not denote some form of numerical mean, mode or median."

He decided that the average consumer in this case would be pet owners, that is to say ordinary members of the public some of whom own rabbits and gerbils and others cats and dogs.

The judge considered art 3 (1) (b) of the Directive and Case C-265/09 OHIM v BORCO-Marken-Import Matthiesen GmbH & Co KG [2010] ECR I-8265 and art 3 (1) (c) of the Directive and Case C-51/10P Agencja Wydawnicza Technopol sp. z o.o. v OHIM [2011] ECR I-1541. He concluded that neither the UK Word Mark nor the UK or Community Stylised Trade Marks was inherently distinctive.  However, he thought that the UK and Community Ribbon Marks were inherently distinctive.  He then analysed evidence of Supreme's marketing and sales under the Stylized and Word Marks and concluded that Supreme may have acquired some distinctiveness in relation to food for small animals but not otherwise.   He therefore declared that the Word Mark and the UK and Community Stylised Marks were invalid save in relation to small animal feed.

In relation to the claims under s.10 (1) of the Act and art 9 (1) (a) of the CTM Regulation Mr Justice Arnold held at paragraph [83] that:

"The case law of the CJEU establishes that the proprietor of a trade mark can only succeed in a claim under Article 5(1)(a) of the Directive or Article 9(1)(a) of the Regulation if six conditions are satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is identical to the trade mark; (v) it must be in relation to goods or services which are identical to those for which the trade mark is registered; and (vi) it must affect, or be liable to affect, one of the functions of the trade mark: see in particular Case C-206/01 Arsenal Football plc v Reed [2002] ECR I-10273 at [51], Case C-245/02 Anheuser-Busch Inc v Budejovicky Budvar np [2004] I-10989 at [59], Case C-48/05 Adam Opel AG v Autec AG [2007] ECR I-1017 at [18]-[22], Case C-17/06 Céline SARL v Céline SA [2007] ECR I-7041 at [16], Case C-62/08 UDV North America Inc v Brandtraders NV [2009] ECR I-1279 at [42] and Case C-487/07 L'Oréal SA v Bellure NV [2009] ECR I-5185 at [58]-[64]."

There was  no dispute that the first 4 conditions had been satisfied.  As for the 5th and 6th condition the judge found at paragraph [165] that Henry Bell used the word SUPREME in a way that would be understood by the average consumer as being purely descriptive. Hence the sign has not been used as a trade mark at all.   That meant that the 5th condition was not satisfied.   As there had been no use of the sign as a trade mark it also meant that the 6th condition could not be satisfied.   Thus, the claims under s.10 (1) and art 9 (1) (a) failed.

As to the claim under s.10 (2) and art 9 (1) (b), the judge referred to his review of the law in Enterprise v Europcar, He said at paragraph [185]:

"For the purposes of its claim under Article 5(1)(b)/Article 9(1)(b), Supreme Petfoods relies upon the UK and Community Stylised Word Marks and the UK and Community Ribbon Marks I have considered the average consumer and the distinctive character of these Trade Marks above. I shall assume that Henry Bell has used the sign SUPREME in relation to its goods, which are identical goods to those covered by these Trade Marks. The sign is visually, aurally and conceptually identical to the SUPREME element of these Trade Marks, but there is no similarity with any of the graphical elements of these Trade Marks. In my judgment there is no likelihood of confusion, because there is no distinctive resemblance between the sign and the Trade Marks. The presence of the common non-distinctive element consisting of the word SUPREME is not enough for a likelihood of confusion. Furthermore, even if there might otherwise be a likelihood of confusion, the context of the use, which is always subsidiary to the prominent and well-known Mr Johnson's® branding, would suffice to negate such a likelihood."

He thus dismissed the claims under those heads.

On the claims under s.10 (3) and art 9 (1) (c) the judge referred again to his judgment in Europcar and also to Red Bull. He found that Supreme had not established that the Ribbon Marks had the requisite reputation and even if it had the average consumer would not link Henry Bell's use of the sign SUPREME with the Ribbon Marks, since there is no similarity apart from the non-distinctive word SUPREME. Even if there was a link, he did not consider that Supreme  had shown that Henry Bell's use of the sign SUPREME had been, or was likely to be, detrimental to the distinctive character of the Ribbon Marks. The distinctive character of the Ribbon Marks resided in the graphical elements. There was nothing similar in Henry Bell's sign. Furthermore, use of the sign SUPREME was commonplace in the animal food sector. Moreover, the defendant had due cause to use that sign in that its use was entirely descriptive.  Overall, his lordship concluded that Henry Bell's use of the sign SUPREME did not amount to unfair competition with Supreme Petfoods and was in accordance with honest practices in industrial and commercial matters. Accordingly, Henry Bell had a defence under s.11 (2) (b) of the Act and art 12 (b) of the directive.

Counsel for the claimant conceded in his closing submission  that if the claim under s,10 (2) and art 9 (1) (b) failed so too would his claim for passing off.

When taken together Mr Justice Arnold's decisions in Supreme Petfoods and Europcar are almost a text book on the law of trade mark infringement and to the some extent the law of passing off.  Those judgments analyse, systematize and simplify nearly two decades of arcane and in some respects contradictory case law of the Court of Justice and the General Court. For that practitioners owe him a great debt of gratitude. Should anyone wish to discuss this case note, he or she should not hesitate to call me on 020 7404 5252 or contact me through this form.

Unregistered Design Rights: G-Star Raw v Rhodi

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In G-Star Raw CV v Rhodi Ltd and Others [2015] EWHC 216 (Ch) (6 Feb 2015) G-Star Raw sued Rhodi Ltd and five other companies and two directors of those companies for infringing its design rights in the designs of two ranges of jeans by importing into, and distributing in, the UK jeans that the defendants knew to be infringing articles. The defendants challenged the subsistence of design right. They denied copying and any knowledge of the alleged infringements. They counterclaimed for declarations of non-infringement and the recovery of moneys that had been paid to G-Star under a bank guarantee. The two directors also denied any personal liability for any wrongdoing by their companies

The claim and counterclaim came on before Mr Richard Spearman QC sitting as a judge of the High Court. Mr Spearmam gave judgment to the claimant against the first, second, fourth and fifth corporate defendants but dismissed the claims against the third and sixth defendant companies. He also dismissed the claim against the directors and the defendants' counterclaim against the claimant.

On the subsistence of design rights the deputy judge adopted the judgment of Mr Justice Lewison in  Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd and Another (2009) 32(4) IPD 32031, [2009] ECDR 11, [2009] EWHC 26 (Pat) between paragraphs [27] and [38] of his judgment. The claimant called the designer of its jeans to give evidence of the process by which she had created them. Mr Spearman concluded at paragraph [60] that:

"This account was clear, compelling and supported by both contemporary documents, including original pattern pieces which were produced for inspection in court, and the statement of Mr Morisset. On the basis of this evidence, and having regard to other undisputed facts which mean that the criteria contained in section 213(5) of the CDPA are satisfied in the present case, in my judgment it is plain that unregistered design rights subsist in the Arc Pant Designs (see section 213) and that G-Star is the owner of those rights (see section 215)."

The deputy judge also found that garments made to those designs were first made available in 2008.

Although Mr Spearman acknowledged at paragraph [88] that it was clear from s.226 (2) of the Copyright Designs and Patents Act 1988 in that design right is infringed by making articles exactly or substantially to a design rather than copying the whole or substantial part of the original he looked for objective similarities and an opportunity to copy and then sought an explanation from the defendants for those similarities. The similarities that he found between the defendants' jeans and the claimant's was "striking".  In his view the defendants had not provided a satisfactory explanation of how the Rhodi Styles were produced, or come anywhere near rebutting the inference that they were produced by copying the claimant's designs. In the deputy judge's judgment, the similarities between the Arc Pant and the Rhodi Styles arose from copying.

As the defendants' jeans had been manufactured overseas G-Star Ray had to prove that the defendants knew or had reason to believe that those jeans were infringing articles for the purpose of s.227 (1) (a), S.228 (3)  included in the definition of "infringing article" an article that has been or is proposed to be imported into the United Kingdom, and its making to that design in the United Kingdom would have been an infringement of design right in the design or a breach of an exclusive licence agreement relating to the design. Mr Spearman found evidence that the first, second, fourth and fifth defendants had the requisite knowledge but not the other defendants.

This case was decided largely on its own facts and followed well established authority. It did not establish any new principles or otherwise change the law. It is nevertheless worth reading for its analysis of the legislation and review of the case law. Should anyone wish to discuss this article or design right law generally he or she should call me on 020 7404 5252 during normal office hours or use my contact form.

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

Lord Esher MR: the judge in Ungar v
Sugg

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

This legislation has been criticized many times. In Intellectual Property 'Groundless Threats' Actions To Be Tackled By Government 17 April 2013 DACbeachcroft wrote:

"The complexities, in relation to patents, designs and trade marks, mean that:

• IP rights owners are often simply advised to write opaque letters to infringers referring only to the existence of certain trade mark registrations or design rights but with no evident request to desist or take other action;
• Lawyers have found themselves the subject of legal proceedings when they have simply sought to settle an IP claim without the issue of legal proceedings;
• Claimants are often driven to threaten legal proceedings for infringement of certain areas not covered by the 'threats' provisions, eg, for copyright infringement when the real (unsaid) claim is for instance in respect of design right or trade mark infringement;
• Intended defendants cannot obviously understand what they are being asked to do or explain."

I have warned Americans of the hazards of this legislation in Consider the Implications of Foreign Laws Before Sending a Cease and Desist Letter Intellections June 2005, The Law Commission considered threats actions in Patents, Trade Marks and Design Rights: Groundless Threats in April 2014 and recommended that they should stay albeit with reforms. The basic justification for threats actions is that intellectual property litigation is particularly pleasant - Lord Esher MR famously compared it to what was probably a strain of bird flu in Ungar v Sugg (1892) 9 RPC 113 - and folk should not be allowed to threaten it willy nilly.

All this is a roundabout but I hope nonetheless instructive and entertaining introduction to Judge Hacon's decision in Global Flood Defence Systems Ltd and Another v Van Den Noort Innovations BV and Others [2015] EWHC 153 (IPEC) (29 Jan 2015). The threats were notices that appeared on the defendant's website and in a letter to Sir Peter Luff MP after it fell out with the claimants in February 2014 which readers will find between paragraphs [9] and [11] of the judgment:

"9.  The copy of the first of the Website Notices in the evidence was taken from the first defendant's website on 17 February 2014. It was in relevant part as follows:

'Important message
We are sorry to inform you that we have terminated the cooperation with Global Flood Defence Systems Ltd by the first of January 2014.
Global Flood Defence Systems LTD in the UK is therewith not longer allowed to manufacture, marketing and distribute the Self Control Flood Barriers.
Infringements of our patents by any party, which have not explicit our written approval, will be prosecuted by court.'

10 The copy of the second Website Notice in the evidence was dated 4 March 2014. It was headed "Important warning with regard to global Flood Defence Systems!" and stated that licences granted to the claimants had come to an end. It went on as follows:

'Global Flood Defence Systems Ltd and UK Flood Barriers Ltd are, however, still marketing the Self Closing Flood Barrier as is shown on their website.
At this stage, we have taken legal proceedings against Global Flood Defence Systems Ltd and UK Flood Barriers Ltd for infringing our patent rights as well as our intellectual property rights.
Under these circumstances we need to advise you that Infringements of our patents by any party (also buyers), without our explicit and written approval, will be brought to court.'

11. The letter to Sir Peter Luff MP of 3 March 2014 included this:

'We have seen an invitation of UK Flood Barriers for the reception of "Britain Prepared - A Flood Resilient Society on the 11 March 2014 at the Churchill Room, House of Commons, London SW1A 0AA.
On the list of speakers we see Mr. Frank Kelly CEO of UK Flood Barriers. Therefore it is our duty to warn you that Mr Kelly will speeks in his presentation about the Self Closing Flood Barriers, he is not allowed to do this and will probably suggest the stakeholders that Global Flood Defence Systems Ltd or UK Flood Barriers Ltd are the inventors and / or own the IP of these or same specific barriers.
At this moment we have taken proceedings against Global Flood Defence Systems Ltd for infringing our patents and the intellectual property rights.
We will warn you that infringements of our patents by any party (also buyers), which have not explicit our written approval, will be prosecuted by court.
The new distributor of the Self Closing Flood Barriers (SCFB) for the UK and Ireland is Flood Control International Ltd at Tavistock, Devon.

When you need more information please contact us or our Sollicitor Mr. Richard Arnold from Quality Solicitors Wilson Brown at Kettering rarnold@qswblaw.com."

There was a third notice put on to the home page of the first defendant's website on about 7 March 2014 but it adds nothing."

S.70 (1) of the Patents Act 1977 provides:

"Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4) below, bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3) below."

There was no doubt that those notices and the contents of the letter to Sir Peter were "threats" within the meaning of that section or that the claimants were persons aggrieved. Right now the defendants don't actually have a patent that covers the claimants' flood defence products though they have applied to the European Patent Office for one.  The claimants sued the defendants for groundless threats and applied for summary judgment under CPR Part 24.

The only defence to the application was justification under s.70 (2A):

"(2A) If the defendant or defender proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent -

(a) the claimant or pursuer shall be entitled to the relief claimed only if he shows that the patent alleged to be infringed is invalid in a relevant respect;

(b) even if the claimant or pursuer does show that the patent is invalid in a relevant respect, he shall not be entitled to the relief claimed if the defendant or defender proves that at the time of making the threats he did not know, and had no reason to suspect, that the patent was invalid in that respect."

The defendants relied on the provision that the rights granted by a patent are backdated to the date of grant by s.69 (1)  of the Patents Act 1977 and they argued that even though they didn't have a patent just now they might have a patent by the time of trial.

This question had arisen in  Patrick John Brain v Ingledew Brown Bennison & Garrett [1996] FSR 341 which the judge considered between paragraphs [21] and [24]:

21 The related matter which remained in dispute in the appeal was this: given that a party could sue for a threat to bring proceedings to enforce s.69 rights, was there a defence of justification available to the party who issued the threat? (At the time of the Brain litigation such a defence was provided for by what was then s.70(2) of the Act. The change introduced by the repeal of that subsection and the introduction of s.70(2A) makes no difference here.) Aldous LJ observed that it would be illogical to provide for a cause of action for a threat to bring proceedings for infringement of s.69 rights and yet deprive the threatening party of a defence of justification. Accordingly there is such a defence. He said this (at p.344):

'Section 70 is designed to prevent groundless threats of patent proceedings being made. Thus it would be illogical to construe section 70 as giving rights to a person threatened with proceedings for infringement of a patent albeit in respect of pre-grant acts, if the threatener could not establish that his threats were proper. That illogicality does not in my view arise. Section 70(2)(a) allows the threatener to avoid liability if he proves that the acts in respect of which the proceedings were threatened constitute or if done would constitute an infringement of a patent. The acts, to be an infringement, must fall within section 60. That section is to be read subject to section 69. Thus a threat of the type contemplated in this case, is a threat to bring proceedings when the patent is granted for acts which are actionable acts by reason of section 69. No difficulty arises in deciding whether the threats can be justified, provided appropriate steps are taken to ensure the patent is granted before the action comes to trial.'

22. Thus, Aldous LJ's primary view was that where a defence of justification was being run by a party threatening to bring proceeding for infringement of s.69 rights, that party should make sure that the patent is granted before trial. He went on to consider what the position might be if the patent had not been granted by then. He said this (at p.348):

'If, however, there is an extraordinary delay in grant of the patent, the court could perhaps look at the published specification and decide, upon the balance of probabilities, whether the alleged acts will infringe the patent when granted and whether a valid patent will be granted.'

23. Hobhouse LJ agreed that threats to bring proceedings for infringement of s.69 rights could be brought under s.70(1) and justified under what was then s.70(2). But he was not persuaded that a defence under s.70(2) could ever be available unless the patent had been granted before the trial (at p.355). Beldam LJ agreed with both judgments.
24. Following the appeal the plaintiffs applied to strike out the defence of justification under s.70(2) on the ground that the second defendant's patent application was still pending before the European Patent Office. As a consequence the defendants were unable to give particulars of each patent claim which they said would be infringed or of the respective alleged infringing acts. Laddie J ([1997] FSR 271) considered the earlier judgment of the Court of Appeal. He ruled that there was a strict limit to the defence of justification available under s.70(2) where the threat had been in relation to s.69 rights: there could be no such defence if the patent had not been granted by the time of the trial."

The claimants made the point that the defendants had not alleged that they would have a patent by the time of trial. The judge took the view that this matter should not turn on a pleading point and gave the defendants' permission to amend so that they could rely on s.70 (2A).

Judge Hacon then considered whether the contention that the defendants would have a patent by trial was sufficiently plausible to resist an application for summary judgment and decided at paragraph [35] that it was:

"Mr van den Noort's evidence that he had been informed by the second defendant's patent attorney that the patent will be granted in the near future is at least something, and it has not been contradicted by the claimants. Secondly, it is apparent from the exchanges between the patent attorney and the EPO that the prosecution of the patent has reached the stage at which the patent attorney is submitting claims intended to satisfy objections raised by the EPO examiner. Of course the examiner may never be satisfied. Alternatively, these exchanges might go on for a long time, more than a year, before the EPO is finally prepared to grant the patent. But taking a realistic view on the limited information I have, it seems to me that there is a real prospect (as opposed to a fanciful one) that the patent will be granted in the course of this year. Such is the crowded state of the IPEC diary currently, absent an application for a speedy trial (there has been none) the trial will not be fixed until December 2015. For those reasons I reject Mr Campbell's first argument."

The claimants also argued that the threats could never be justified but that would have required argument over the construction of the claims of the application that was not appropriate for summary judgment proceedings. They also contended that any defence under s.70 (2A) should apply now. The judge rejected that on the ground that it was incompatible with his earlier finding that the defendants would be entitled to rely on that subsection if they get their patent by the date of trial. Finally, His Honour rejected the claimants application for an order that leave to defend should be conditional upon the defendants paying £50,000 into court as he did not believe that this matter was to be approached as if it were a runner-up prize. The need for such relief must always be justified on the facts and will only be granted if it is necessary to do justice between the parties. Although the defendants had made an incorrect statement in alleging that infringement proceedings had already started that was not a sufficient ground for the order sought by the claimants.

This is an interesting decision and possibly an important one as it extends the Court of Appeal and Mr Justice Laddie's reasoning in Brain. There was a lot of disappointment among practitioners when the Law Commission rejected the opportunity to get rid of threats actions. They are definitely a dampener on litigation for they reinforce the impression that IP is an arcane area of the law that is best avoided. In view of the reforms to IPEC, the introduction of the small claims track and the advent of the Unified Patent Court can it still be said that IP litigation is so much more awful than any other type?

If anyone wants to discuss this judgment or threats actions in general give me a ring on Monday on 020 7404 5252 or use my contact form.

Swiss Style Claims: Warner Lambert v Actavis

In Warner -Lambert Company, LLC v Actavis Group Plc EHF and Others [2015] EWHC 72 (Pat) (21 Jan 2015) Warner-Lambert LLC applied to Mr Justice Arnold for an interim injunction in the following terms:

"1, The Defendants: (a) shall make it a condition of any oral or written agreement entered into with a pharmacy for the supply of Lecaent that the pharmacy shall use reasonable endeavours not to supply or dispense Lecaent to patients who have been prescribed pregabalin for the treatment of pain, by making reasonable enquiries of a person presenting a prescription for 'pregabalin' as to whether the prescription is for pain and/or making reasonable checks of pharmacy records for the same; and (b) shall make it a condition of any oral or written agreement entered into with an intermediary (such as a distributor) for the supply of Lecaent that, in any onward supply of Lecaent by the intermediary, such intermediary must in turn make it a condition of any onward supply agreement for the supply of Lecaent that the receiving pharmacy shall use reasonable endeavours as specified in (a) above.
2. Insofar as the Defendants are to supply Lecaent to intermediaries (such as a distributor) they inform the Claimant's solicitors of the name of that intermediary prior to supply.
3. No later than the date of first supply of Lecaent to a pharmacy in the United Kingdom, the Defendants shall write a letter, in the form attached, to the superintendent pharmacist responsible for the pharmacy to which Lecaent is to be supplied.
4. Prior to launch of Lecaent in the United Kingdom the First, Second and Third Defendants and each of them shall ensure that each pack of Lecaent supplied to a pharmacist is accompanied by removable notification that is easily legible stating:

'This product is not authorised for the treatment of pain and must not be dispensed for such purposes.'

5. The Defendants shall notify in writing forthwith, and in any event before the date of first supply of Lecaent to a pharmacy in the United Kingdom, the NICE Medicines and Prescribing Centre of the Department of Health informing it that Lecaent should not be prescribed or dispensed for the treatment of pain.
6. No later than the date of first supply of Lecaent to a pharmacy in the United Kingdom, the Defendants shall write a letter, in the form attached, to all Clinical Commissioning Groups in the UK."

In order to understand the application it is necessary to know that Warner Lambert (which is now a subsidiary of Pfizer) holds a patent for a drug known as pregabalin as a method for treating pain and in particular neuropathic pain which it markets under the trade mark "Lyrica".  Pregabalin is a known substance that was already used for treating epilepsy and generalized anxiety disorder ("GAD"). The patent for pregabalin itself had expired in 2013. Protection for the drug had been extended until 2018 by a supplementary protection certificate but that SPC lapsed for non-payment of the prescribed fees.

The use of pregabalin for the treatment of pain is an example of a "Swiss style claim". In G 5/83 the Enlarged Board of Appeal of the European Patent Office held that a patent could be granted for a second or subsequent medical use if a specification claimed the use of a known substance that was already used for the treatment of one condition in the manufacture of a medicament for the treatment of another condition. Since the revision of the European Patent Convention by the Act revising the European Patent Convention of 29 Nov 2000 it has ceased to be necessary to draft claims for second and subsequent medical use in this way because art 54 (5) of the Convention now permits second and subsequent medical uses of known substances.

Actavis and its subsidiaries develop, manufacture and commercialize "high quality affordable generic and innovative branded pharmaceutical products for patients around the world." They propose to market a generic version of pregabalin for the treatment of epilepsy and GAD under the trade mark "Lecaent" at a lower price than Lyrica. 

The problem for Warner Lambert and the Pfizer group is that 83% of prescriptions are written generically and 95% of prescriptions do not state the condition for which the drug is prescribed. Unless they are made aware that pregabalin has been prescribed for the treatment of pain they are likely to deliver the generic preparation in response to a prescription rather than Lyrica.

Warner Lambert claim that the use of Lacaent for pain relief would infringe its patent. Actavis and another generic manufacturer have applied for revocation of the patent.   The trial of the infringement and revocation actions will be heard in the summer.  In the meantime Warner Lambert brought this application to oblige Actavis to take steps to preserve its sales of Lyrica for pain relief.

The questions that Mr Justice Arnold had to decide were as follows:

"whether, in such circumstances, the generic supplier will infringe the second medical use patent unless the supplier takes positive steps to prevent its generic version of the drug being dispensed for patients who have been prescribed the drug for the patented indication."

If the answer to that question was yes the judge then had to consider what steps if any the generic suppliers had to consider pending trial.

The biggest customer for pregabalin in the UK is, of course, the National Health Service.  Mr Justice Arnold noted at paragraph [1] of his judgment that:

"This case arises out of a collision between the policy of incentivising important medical research by granting second medical use patents on the one hand and other policies and practices which form part of the United Kingdom's healthcare systems (and in particular the English and Welsh systems) on the other hand."

He added at paragraph [4]:

"This question is complicated by the involvement of third parties who are not under either party's control: not just prescribing doctors and pharmacists, but also healthcare organisations such as Clinical Commissioning Groups ("CCGs") (in England) and Health Boards (in Wales), regulators such as the Medicines and Healthcare Products Regulatory Agency ("MHRA") and the National Institute for Heath and Care Excellence ("NICE"), NHS England and NHS Wales, and the Department of Health itself. It is further complicated by the fact that the patentee has itself taken, and is continuing to take, steps to prevent the generic version being dispensed for patients who have been prescribed the drug for the patented indication. It is still further complicated by the behaviour of patients, many of whom do not take their own prescriptions to the pharmacy, some of whom may not remember what they have been prescribed pregabalin for and a few of whom may mislead their doctors for ulterior reasons."

Warner Lambert sought to join the Highland Health Board as a defendant because it had published an article in The Pink One that was said to encourage doctors to prescribe, and pharmacists to dispense. generic pregabalin for all indications regardless of the patent position.  Mr Justice Arnold did not make a ruling on that issue because the parties were negotiating a settlement and seemed close to agreement.

Because the relief that Warner Lambert sought was intended not to affect Actavis' own conduct so much as the conduct of third parties who were not before the court there was no precedent for the application. Actavis opposed it on the ground that Warner-Lambert's infringement claim had no real prospect of success, and that the balance of the risk of injustice favoured refusal of the relief sought. The defendant group also argued that the relief sought was contrary to competition law.

The judge applied the principles set out by Lord Diplock in American Cyanamid Co (No 1) v Ethicon Ltd : [1977] FSR 593, [1975] AC 396, [1975] 1 All ER 504, [1975] 2 WLR 316, [1975] UKHL 1 (5 Feb 1975) with particular care.

His Lordship considered first whether there was a serious issue to be tried and decided that there was not. Swiss style claims are process claims so if any action lay against Actavis it would be under s.60 (1) (c) of the Patents Act 1977 that is to say disposing of, offering to dispose of, using or importing any product obtained directly by means of that process or keeping any such product whether for disposal or otherwise. There was no dispute that Actavis's pregabalin was derived from the patented process. The argument was whether such manufacture was for the purpose of treating neuropathic and other pain.  There was no doubt that such pregabalin was suitable for treating pain but it was denied that that was Actavis's intention.  Warner Lambert submitted that it was enough to show that Actavis knew that such use was likely.  The judge accepted at paragraph [108] that:

"there are circumstances in which an intermediary who knows that goods in his possession will, if disposed of by another, infringe an intellectual property right or who knows that his services are being used by third parties to infringe an intellectual property right, can come under a duty to take positive steps to prevent or reduce such infringement. As counsel for Actavis pointed out, however, such duties arise in circumstances where the person in question knows of infringement by another. This does not assist Warner-Lambert to establish that Actavis will infringe unless it is shown that others will infringe; but that is not the case. Furthermore, Warner-Lambert does not rely upon any extra-statutory duty upon Actavis, but only upon section 60(1)(c)."

There was authority from a number of European jurisdictions that supported the proposition that subjective intent is required to which Warner Lambert had no cogent answer.  Accordingly. his Lordship held at [111] that "the word 'for' in Swiss form claims imports a requirement of subjective intention on the part of the manufacturer that the medicament or pharmaceutical composition will be used for treating the specified condition."

The judge  next considered whether Warner Lambert would suffer unquantifiable and irreparable harm between the application and trial if relief were refused and held that it would not. Actavis was already allowed to supply pregabalin to treat epilepsy and GAD and it had taken steps to prevent the use of its product for relieving pain. It could not be held responsible for the actions of doctors and patients. Warner Lambert might lose some revenue as a result of competition with generic pregabalin but that was inevitable. There was no reason to suppose that its losses for the use of generic pregabalin for pain relief would be substantial.

On the other hand the judge decided that Actavis would suffer substantial unquantifiable loss if the injunction were granted because Actavis's entry into the market would be delayed and pharmacists would be deterred from supplying pregabalin for any purpose by the proposed label. He concluded at paragraph [137]:

"granting the relief sought by Warner-Lambert would create a greater risk of injustice than refusing it. In my view, wrongly granting the relief is more likely to cause Actavis substantial unquantifiable harm than wrongly refusing it is likely to cause Warner-Lambert substantial unquantifiable harm. Taking into account the other factors considered above, including the likely efficacy of the measure, I consider that the balance is firmly tipped against ordering Actavis to put a notice on its packaging."

He therefore dismissed the application at paragraph [139] on the grounds that:

"i) there is no serious issue to be tried with regard to Warner-Lambert's claim that Actavis will infringe the Patent by marketing Lecaent; and
ii) even if there was a serious issue to be tried, the balance of the risk of injustice would favour refusal of the relief sought by Warner-Lambert."

Even though this was an interlocutory decision it is an important judgment and one to be welcomed. Had it gone the other way it would have been much more difficult for generic manufacturers to enter the market for drugs for permitted medical uses where there was a patent for second or subsequent medical uses and the NHS would have to pay more for its medicines. The judgment may have wider significance since it considered the conditions for liability under s.60 (1) (c), Finally, as American Cyanamid approaches its 40th anniversary the judgment shows that Lord Diplock's principles are in rude health and capable of development and extension.

Should anyone wish to discuss this case, patents or interim injunction applications in general, he or she should call me on 020 7404 5252 during office hours or use my contact form.

Court of Appeal upholds Birss J in Rihanna's Case

Topshop, Leeds

Photo Wikipedia

In Fenty and Others v Arcadia Group Brands Ltd and another  [2013] EWHC 2310 (Ch), [2013] WLR(D) 310 Mr Justice Birss gave judgment to Robyn Rihanna Fenty (better known as Rihanna) and her corporate licensing companies against Top Shop for selling a t-shirt that reproduced a photo of the singer. The claim was brought not for infringement of copyright since the owner of the copyright in the photograph had licensed the reproduction of his work but for passing off. Rihanna and her companies had claimed that the t-shirt misrepresented authorization or approval of the manufacture and distribution of the garments and that such misrepresentation damaged her commercial activities. I wrote about the case in Passing off - Fenty v Topshop 10 Sept 2013 and readers are referred  to that note for an appreciation of the judgment.

A lot of people were surprised by Mr Justice Birss's decision including me though I was eventually won over by his Lordship's reasoning after re-reading the case several times. However, others were not. Robert Furneaux of Sipara wrote:

"i was reading your review on the case but cant seem to post a comment! my problem with the case is around the finding of misrepresentation. i am no fashion afficiendo but my sense is that few fashion icons produce collections containing pretty basic t-shirts with photos of themselves on. indeed the River Island collection by Rhianna contains nothing like it. i just dont think TS customers would be confused in that way... hope there's an appeal!"

Well there has been an appeal which came on before Lord Justice Richards, Kitchin and Underhill in Fenty and others v Arcadia Group Brands Ltd and another [2015] EWCA Civ 3 (22 Jan 2015) and they upheld the judgment of the judge below.

Top Shop appealed on four grounds which are summarized in paragraphs [25] to [28] of Lord Justice Kitchin's judgment:

"25   First, the judge wrongly proceeded on the basis that there was no difference in law between an endorsement case and a merchandising case. Character merchandising generally serves to provide the products concerned with features of shape or get-up which become part of the make-up of the products themselves. It is not the province of the common law to create or confer exclusive rights in particular categories of product.
26.   Second, the judge properly and correctly acknowledged that the sale of a garment bearing a recognisable image of a famous person does not, in and of itself, amount to passing off. However, the judge fell into error thereafter in failing to proceed on the basis that the law of passing off treats the use on garments of such images as origin neutral. So, Mr Hobbs continues, the claim for passing off in the present case should only have been entertained upon the basis that the market for garments carrying images of Rihanna was, at least in principle, a market which others were lawfully entitled to enter. Further, the injunction granted by the judge is founded upon the proposition that Topshop is answerable for a misrepresentation by omission, that is to say for failing clearly to inform prospective purchasers that the t-shirts were not approved or authorised by Rihanna. Once it is accepted, as it must be, that selling a garment with a recognisable image of a famous person does not, in and of itself, amount to passing off, any claim for misrepresentation by omission should have evaporated.
27.  Third, the judge ought to have recognised and accepted that the absence of an image right is a matter of law and not a matter of fact. Further, he ought to have assessed the claim having regard to the perceptions of those persons for whom the presence of the image of Rihanna on the t-shirt was origin neutral, and not the perceptions of those persons who were liable to regard the presence of the image as an indication of authorisation. Indeed, had the judge assessed the issue from the correct perspective he would have been bound to find that the claim as pleaded and pursued disclosed no sustainable basis for a finding of liability.
28.   Fourth, the judge fell into further error in finding Topshop liable for misrepresentation in the way that he did because Rihanna had never properly alleged or developed a case that the particular image in issue was in any way distinctive as a result of any marketing or promotional activity which she had ever carried out; that there was no admissible evidence that this image was in any way distinctive; and that the evidence upon which the judge relied had no probative value. In this connection Topshop also seeks permission to appeal against the decision and consequential order of the judge at a pre-trial review hearing which took place on 5 July 2013 concerning objections to the admissibility of the evidence contained in six of the witness statements served on behalf of Rihanna, including that of Mrs Perez, a member of Rihanna's management team, who gave the critical evidence upon which the judge relied."

His Lordship, who delivered the lead judgment, considered those arguments one by one.

As to the first ground he said at paragraphs [45] and [46]:

"45.   In the present case I am entirely satisfied that the judge did have proper regard to the distinction between endorsement and general character merchandising. He began his analysis of the law by reminding himself that to make good any claim in passing off it must be established that the claimant has a goodwill, that the defendant has committed a misrepresentation and that the claimant has, as a result, suffered damage. He then referred to the decision of Laddie J in Irvine and acknowledged that it is not a necessary feature of merchandising that members of the public will think that the products in issue are in any sense endorsed by the celebrity or creator of the character in issue. He continued that it must be shown that the claimant has a relevant goodwill and that the impugned activity involves a false representation that there is a connection between the claimant and the goods in issue of a relevant kind, that is to say that the claimant is materially responsible for their quality. Finally, of course, the belief which this false representation engenders in the minds of the purchasers must play a part in their decision to buy.
46.   With all these principles in mind the judge then approached the facts of present case and made his findings. He considered that the use of this image would, in all the circumstances of the case, indicate that the t-shirt had been authorised and approved by Rihanna. Many of her fans regard her endorsement as important for she is their style icon, and they would buy the t-shirt thinking that she had approved and authorised it. In short, the judge found that the sale of this t-shirt bearing this image amounted to a representation that Rihanna had endorsed it. In my judgment the reasoning of the judge discloses no error of principle of the kind for which Mr Hobbs contends."

In the light of the foregoing the learned Lord Justice dealt with the second ground shortly at paragraph [48]:

"Rihanna has always accepted that she has no right in English law to prevent any use of her image. Further and specifically, she acknowledges that the sale of garments bearing recognisable images of her does not, in and of itself, amount to passing off. However, as Mr Martin Howe QC, who appears with Mr Andrew Norris on her behalf, submits, it does not follow that the image itself must be excluded from the matrix of facts which are said to give rise to an overall representation that she has endorsed the goods to which it has been applied. I am entirely satisfied that the proposition that a famous personality has no right to control the use of her image in general does not lead inexorably to the conclusion that the use of a particular image cannot give rise to the mistaken belief by consumers that the goods to which it is applied have been authorised. Here the judge came to the conclusion that the use of this particular image on fashion t-shirts sold by Topshop amounted to a misrepresentation by Topshop that the garments had been approved or authorised by Rihanna. There is no inconsistency between this finding and the proposition that Rihanna has no absolute right to prevent traders selling garments carrying her image. Nor is the judge's approach undermined by the form of injunction which he ultimately granted. It simply recognises that the vice in the impugned activities lay not in the use of Rihanna's image but in using it in such a way as to cause a misrepresentation. As Mr Howe submits and again I accept, Topshop is in effect contending not for the absence of an image right, but rather for a positive right to market goods bearing an image even if the use of that image in particular circumstances to particular customers gives rise to a misrepresentation. To accede to that submission would be to sanction a trade which results in the deception of the public."

Lord Justice Kitchin considered that the third ground was misconceived.  It would in his Lordship's view require the court both "to shut its eyes to reality and to put on one side well settled principles".  He explained at paragraph [50]:

"In any case of passing off the claimant must establish that he has a goodwill in his business under the name or other feature he is seeking to protect, and that the use of that name or other feature by another trader amounts to a misrepresentation which is calculated to cause deception and so cause damage to his goodwill and his business. The claimant must therefore establish the likelihood of confusion of a substantial number of consumers but not necessarily all of them. Here the t-shirts in issue were being sold through Topshop's stores. It was therefore plainly relevant to consider potential customers who were both fans of Rihanna and prepared to shop in a Topshop store. So also the judge was bound to consider and take into account the activities of Topshop in publicising and promoting its connection with Rihanna over a period of time."

 Turning to the final ground, Lord Justice Kitchin saw no merit in the first limb:

"The statement of claim made clear that Rihanna contended that the image was unauthorised and had been taken whilst she was filming for one of her singles in Northern Ireland. This theme was developed in the statements of those witnesses who gave evidence on her behalf and then, in her opening written argument at trial, there appeared a full exposition of her contentions. She explained that that the image shows her dressed for her video for the single We Found Love from the Talk That Talk album; that the video shoot received lengthy press coverage, partly as a result of the complaints by the farmer upon whose land it was made; and that the image is recognisably her in that music video context."

However, there was more substance in the second. Topshop had objected to the evidence of Mrs Perez on the ground that it amounted to expert evidence for which no permission had been given. Lord Justice Kitchin agreed that Top Shop was entitled to complain that the trial judge had focused upon an expression of opinion by that witness having earlier ruled that it was argument and not something that needed to be cross-examined. However, despite the legitimacy of Topshop's complaint, there was plenty of other evidence upon which Mr Justice Birss coud rely. It followed that the judge was entitled to find that the sale by Topshop of the t-shirt amounted to passing off and that the main appeal should be dismissed and permission to appeal against the judgment of 5 July 2013 refused.

Lord Justice Underhill agreed that the appeal should be dismissed, and that permission to appeal against Birss J's decision of 5 July 2014 should be refused but nevertheless considered that the appeal came close to the border line. He explained at paragraph [63]:

"The judge's conclusion that some members of the relevant public would think that the t-shirt was endorsed by Rihanna is based essentially on two things - her past public association with Topshop (as described by Kitchin LJ at paras. 17-18) and the particular features of the image itself, which is apparently posed and shows her with the very distinctive hairstyle adopted in the publicity for Talk That Talk. I do not believe that either by itself would suffice; in particular, Rihanna's association with Topshop does not seem to me to have been such as to weigh very heavily in the balance. But the judge considered the question very carefully, taking due account of the factors going the other way, and in my view he was entitled to find that the two features in combination were capable of giving rise to the necessary representation."

In other words, as I explained in my previous case note, this case turned on the fact "that Rihanna was no mere clothes horse with a voice but a fashion authority (indeed a designer among other things) and that Topshop had gone out of its way to show a connection with Rihanna." Lord Justice Richards agreed with both Lord Justice Kitchin and Lord Justice Underhill.

Lord Justice Kitchin went out of his way to emphasize that there is in English law no "image right" or "character right" which allows a celebrity to control the use of his or her name or image. If a celebrity wishes to control the use of his or her image he or she must rely upon some other cause of action such as breach of contract, breach of confidence, infringement of copyright or, as in this case, passing off. However, there is one jurisdiction in the British Isles where images rights do exist as I explained in my article on Guernsey's Image Rights Legislation 2 Jan 2013 and as Kate Storey amplified in her guest post on Guernsey's image rights 8 Jan 2013.

I should be amazed if this appeal is not discussed in the seminar on the Law of luxury goods series: intellectual property – how to protect, manage & monetize the know-how & intangible capital of luxury & fashion brands that IALCI (the International Association of Business Lawyers) will hold at the Pullman St Pancras Hotel on 10 Feb 2015. I shall be giving a presentation on the enforcement of intellectual property rights and my friend Alexander Rozycki will discuss John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd [2014] EWHC 3779 (IPEC) (21 Nov 2014) which I discussed in Is this a copy? John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd 11 Dec 2014. If you want to attend that seminar you can book through the form on that website. If you would like to discuss this article or the law of passing off in general, call me in 020 7404 5252 during normal office hours or send me a message through my contact form.

Car Wars: Enterprise and Europcar

The Rival Logos: Enterprise's to the left and Europcar's to the right

In Enterprise Holdings, Inc v Europcar Group UK Ltd and another [2015] EWHC 17 (Ch) (13 Jan 2015) Enterprise Holdings Inc. ("Enterprise") sued Europcar UK Ltd and its French holding company ("Europcar") for trade mark infringement and passing off.  Enterprise trades under the logo to the left while Europcar had begun to use the sign on the right. The litigation in England iwa part of a global struggle between the two car hire giants over those logos.  According to Mr Justice Arnold there are some 98 trade mark disputes between those parties over Europcar's new logo around the world. 

The Registration
Enterprise alleged infringement of 3 of its UK registered trade Marks and 7 of its Community ones. At trial Enterprise focused its case on CTM  937,4497 ("the CTM") which was registered as of 14 Sept 2010 in respect of  "vehicle rental and leasing services".  The device appears below:

Enterprise contended that Europcar's new logo infringed its registered trade mark under art 9 (1) (b) and (c) of the Community trade mark regulation (Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark OJ 24.3.2009 L78/1).

Art 9 VTM Regulation
Art 9 (1) (b) and (c) provide:

"A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

…
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the Community trade mark;
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark."

Claim under art 9 (1) (b)
As to art 9 (1) (b) the judge directed himself at para [112]:

"In order to establish infringement under Article 9(1)(b) of the Regulation, six conditions must be satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public."

In this case there was no dispute as to the first 5 conditions.  This action turned on whether there was a likelihood of confusion.  The judge continued at paragraph [113]:

"The manner in which the requirement of a likelihood of confusion in Article 9(1)(b) of the Regulation and Article 5(1)(b) of the Directive, and the corresponding provisions concerning relative grounds of objection to registration in both the Directive and the Regulation, should be interpreted and applied has been considered by the Court of Justice of the European Union in a considerable number of decisions ..."

He summarized the principles derived from those decisions as follows:

"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."

His Lordship reminded himself at paragraph [116] that the Court of Justice had defined "the likelihood of confusion" as "the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings" in Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] CEC 920, [1998] EUECJ C-39/97, [1998] ECR I-2655, [1998] All ER (EC) 934, [1999] FSR 332, [1998] ECR I-5507, [1999] 1 CMLR 77, [1999] RPC 117, [1999] ETMR 1. Also, that in determining whether there is a likelihood of confusion under art 9 (1) (b) of the CTM regulation, the court must take into account the precise context in which the sign has been used.

At paragraph [172] he identified "the average consumer" in this case as

"an ordinary member of the public who rents a vehicle. As noted above, the evidence is that people who rent vehicles are more likely to be male, aged 17-54 and from the ABC1 social groups. As explained above, many consumers of vehicle rental services in the UK are resident abroad, in particular elsewhere in Europe and in North America."

He found that such a person "does not always display that level of attention throughout their interaction with vehicle rental companies."  He added:

"On the contrary, in various circumstances, many consumers are stressed, in a hurry and relatively inattentive. This is particularly the case when they are collecting and returning vehicles in locations such as airports. But it may also be the case when collecting and returning vehicles in other locations."

The judge compared the Europcar sign with the CTM visually and conceptually and concluded at paragraph [202]:

"Overall, it seems to me that there is some similarity between the two logos, but not a great deal. The similarity is not such that anyone who was able to compare the two logos would mistake them. Nor would someone who had a clear mental image of one logo be likely to mistake the other for it. But I consider that someone who only had an imperfect recollection of the Enterprise logo, and then saw the Europcar logo, could mistake the latter for the former, at least in the absence of any differentiating context. In particular, someone who recalled the concept of the Enterprise logo as I have described it could, when they saw the e-moving logo, see it as conveying a very similar concept. As is well known, the human eye is not an accurate recorder of detail and has a tendency to see what it expects to see."

 The services in relation to which the Europcar sign had been used were identical to those for which the CTM had been registered. There was evidence of actual confusion which the judge attributed to the Europcar logo.

Claim under art 9 (1) (c)
At paragraph [119] of his judgment Mr Justice Arnold directed himself that:

"in order to establish infringement under Article 9(1)(c) of the Regulation, nine conditions must be satisfied: (i) the trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party within the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor of the trade mark; (v) it must be of a sign which is at least similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a "link" between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause."

In this case there was a dispute as to the CTM's reputation,  the existence of a link between the sign and the trade mark in the mind of the average consumer and whether there had been detriment to the distinctive character of the trade mark or unfair advantage had been taken of the distinctive character or repute of the CTM.

On the first point, the judge conclude at paragraph [219] that the CTM had acquired a reputation in the UK in the form in which it had been used, that is to say in the colours green and white. Given the size of the UK market for, and the transnational character of, vehicle rental services, he considered that was sufficient to constitute a reputation in the EU. Although the similarity between Europcar's logo and the CTM was relatively low, he considered that the similarity was sufficient, having regard to the reputation of the CTM and the paucity of other 'e' logos in the field of vehicle rental services, for the use of the Europcar sign to bring the CTN to the mind of the average consumer, but not strongly so. However, he was not persuaded that there was any evidence of detriment or unfair advantage.

Passing off
At paragraph [156] the judge referred to the three elements of an action for passing off expounded by Lord Oliver 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:

"(1) the claimant's goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indication;
(2) the defendant has used, or threatens to use, a name, mark or other indication which has led, or is likely to lead, the public to believe that goods or services offered by the defendant are goods or services of the claimant, or connected with it, and thus to a misrepresentation by the defendant (whether or not intentional); and
(3) the claimant has suffered, or is likely to suffer, damage as a result of the erroneous belief engendered by the defendant's misrepresentation."

In his Lordship's view the facts that gave rise to a claim under art 9 (1) (b) also gave rise to an action for passing off.

Comment
The upshot is that the judge found for Enterprise on its claim under art 9 (1) (b) of the CTM regulation and passing off but not on its claim under art 9 (1) (c). This case does not create any new law (except perhaps on the question of whether, "where the claimant does have a business and goodwill in England and Wales, it can rely upon deception of customers who are resident abroad, and in particular deception of customers who became aware of the claimant's business and trade mark in their home country and then encounter the defendant's sign in this country" which he decided in the affirmative) but it is like all of Mr Justice Arnold's judgments great revision on the relevant law. The painstaking way in which he compared the defendant's sign to the registered trade mark should be followed by judges and hearing officers in other cases.

Further Information
Should anyone wish to discuss this case or trade mark law in general, he or she should not hesitate to call me on 020 7404 5252 during normal office hours or use my contact form.

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

In Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2013] EWHC 3768 (Pat) (3 Dec 2013) the claimant sued the defendant telecommunications company for infringing two of its European patents:

• EP 2,259,495 adaptive DSL margin and band control using historical operational data ("495"); and
• EP 1,869,790 DSL state and line profile control ("790").

Mr Justice Birss held that 495 was valid but had not been infringed and that 790 was valid and had been infringed. Both sides appealed to the Court of Appeal. In Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2014] EWCA Civ 1462 (11 Nov 2014) the Court of Appeal allowed the claimant's appeal against the finding of non-infringement of 495 and dismissed the defendant's appeal against the finding of infringement of 790.

Following Mr Justice Birss's judgment BT attempted a redesign by replacing  loop software with an equation. BT argued that that was enough to take its system outside claims 1 and 13 of 790. The claimant disagreed and argued that the equation operated in exactly the same way as had been claimed. BT applied for a declaration of non-infringement under s.71 of the Patents Act 1977. The judge gave directions for the resolution of the issue. It came before him as Adaptive Spectrum And Signal Alignment Inc v British Telecommunications Plc #2 [2014] EWHC 4194 (Pat) (18 Dec 2014). BT also proposed some further modifications arguing that even if its equation system infringed the further modified system would not. His Lordship therefore had two issues to determine, namely whether the original redesigned system infringed the patent and if it did whether the further redesigned system did so also.

The judge found for the claimant on both issues. 

As to the original redesign his Lordship held that the only difference between the original and the redesigned system was that a loop was replaced by an equation. The point of the loop was to find a profile with a maximum rate above but closest to the safe rate. The equation achieved that directly.  He explained at para [79]:

"Standing back it seems to me that the NGA Equation system infringes claim 1. In the circumstances considered at trial, such as using the green downstream logic, the NGA Equation system, like the original NGA system itself, operates by having isolated out from the overall set of all profiles in which a line is capable of operating, a set of possible profiles ranked by priorities which exist independently of line conditions and then choosing from that set the highest priority feasible profile. The other aspects of the claim concerning feasibility (sub-rules etc.) are satisfied. The process works as a whole because for a given starting profile the possible profile transitions and the priorities are indicated in the Service Profile Table. That table is a profile state transition matrix. The final profile is selected from that matrix. The fact an equation is used instead of a loop makes no difference, the NGA Equation system infringes claim 1 just the same."

 Similarly the judge was not persuaded that the further redesign availed BT because it also included a threshold table. As the claimant relied on the use of threshold tables in the non-infringement proceedings but not in the original proceedings BT argued that it was barred from raising the new point by the rule in Henderson v. Henderson (1843) 3 Hare 100 as amplified by the House of Lords in Johnson v. Gore Wood & Co. [2000] UKHL 65; [2001] 1 All ER 481; [2001] 2 WLR 72 (14 Dec 2000). Mr Justice Birss was having none of that. There was simply no reason for the claimant to refer to the threshold table. As the judge observed at [93]:

"The crucial point is that the system alleged to infringe at trial was one thing whereas the system being considered now is another different one."

He added:

"ASSIA established that the original NGA system infringed. That was not a warrant that a different system did not. If the infringement case at trial had been concerned only with distinct and clearly separable adjunct to the NGA system and, after a finding of infringement by that adjunct, the defendant removed it, then I can see that a defendant in such a case might have grounds to complain about abuse of process if the patentee turned round and said for the first time - oh well the system without the adjunct still infringes. But that is a long way from the facts of this case."

That must surely be right.

As there was no dispute that the claims should be construed in accordance with the principles established by the House of Lords in Kirin-Amgen Inc and Others  v Hoechst Marion Roussel Ltd and Others [2005] RPC 9, [2004] UKHL 46, [2005] 1 All ER 667, (2005) 28(7) IPD 28049, [2005] RPC 169 and the Court of Appeal in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062, [2010] RPC 8 the case hung on the construction of the claims and its own facts. Consequently, the only issue for which this case may be remembered is the issue estoppel point and even then it is hard to argue that it made new law.

I decided to discuss this case because of the maths.  If anyone is similarly interested he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.

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

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In Cartier International AG and Others v British Sky Broadcasting Ltd and Others [2014] EWHC 3354 (Ch), [2014] WLR(D) 464 three of the subsidiaries of Compagnie Financière Richemont SA applied to Mr Justice Arnold for injunctions against the five largest internet service providers ("ISPs") in the UK in the following terms:

"1. In respect of its residential fixed line broadband customers to whose service the system known as … is applied, the … Defendant shall within 15 working days in relation to the initial notification (and thereafter, within 10 working days of receiving any subsequent notification) adopt the following technical means to block or attempt to block access to the Target Websites, their domains and sub-domains and any other IP address or URL notified to the …. Defendant whose sole or predominant purpose is to enable or facilitate access to a Target Website. The technology to be adopted is:

(i) IP blocking in respect of each and every IP address from which each of the Target Websites operate and which is:

(a) notified in writing to the … Defendant by the Applicants or their agents; and
(b) in respect of which the Claimants or their agents notify the … Defendant that the server with the notified IP address does not also host a site that is not part of a Target Website.

(ii) IP address re-routing in respect of all IP addresses that provide access to each and every URL available from each of the Target Websites and their domains and sub-domains and which URL is notified in writing to the … Defendant by the Claimants or their agents; and
(iii) URL blocking in respect of each and every URL available from each of the Target Websites and their domains and sub-domains and which is notified in writing to the … Defendant by the Claimants or their agents.

2. For the avoidance of any doubt paragraphs 1(i), 1(ii) and 1(iii) are complied with if the … Defendant uses the system known as … to implement the steps required by those paragraphs.
3. The Claimants or their agents will notify the … Defendant should any IP address and/or URL which has already been notified to the … Defendant under the terms of this Order cease to enable or facilitate access to a Target Website (in which case the … Defendant shall no longer be obliged to block that IP address and/or URL). For the avoidance of doubt, the …. Defendant is wholly reliant on the Claimants accurately identifying the IP addresses and/or URLs from which the Target Websites operate and which should be blocked under the terms of this Order.
4. The … Defendant shall not be in breach of paragraphs 1(i), 1(ii) and/or 1(iii) if it temporarily suspends … or the addition of IP addresses or URLs thereto with the consent of the Claimants or their agents.made
5. The proceedings shall be stayed, save for the purposes of any application to give effect to the terms of this order and save that the parties have permission to apply on notice in the event of any material change of circumstances including, for the avoidance of doubt but without limiting the generality of the foregoing, in respect of the costs, consequences for the parties and effectiveness of the aforesaid technical means from time to time.
6. The operators of the Target Websites (as defined in the Schedule to this Order) and the operators of any other website who claim to be affected by this Order, are to have permission to apply on notice to vary or discharge this Order insofar as it affects such an applicant, any such application to be on notice to all the parties and to be supported by materials setting out and justifying the grounds for the application. Any such application shall clearly indicate the status of the applicant and indicate clearly (supported by evidence) that it is the operator of any website which is the subject of such application.
7. There be no order for costs."

The "Target Websites" were websites that offered for sale counterfeit copies of the claimants' goods.

Mr Justice Arnold had made several such orders against ISPs since 2011 under s.97A of the Copyright, Designs and Patents Act 1988. That section provides:

"97A Injunctions against service providers
(1) The High Court (in Scotland, the Court of Session) shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.
(2) In determining whether a service provider has actual knowledge for the purpose of this section, a court shall take into account all matters which appear to it in the particular circumstances to be relevant and, amongst other things, shall have regard to--

(a) whether a service provider has received a notice through a means of contact made available in accordance with regulation 6(1)(c) of the Electronic Commerce (EC Directive) Regulations 2002 (SI 2002/2013); and
(b) the extent to which any notice includes--

(i) the full name and address of the sender of the notice;
(ii) details of the infringement in question.

(3) In this section "service provider" has the meaning given to it by regulation 2 of the Electronic Commerce (EC Directive) Regulations 2002."

This section had been inserted to give effect to art 8 (3) of the Information Society Directive (Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society OJ L 167, 22.6.2001 P10-19). There is no similar provision in the Trade Marks Act 1994 or any other intellectual property statute. The question for Mr. Justice Arnold was whether the Senior Courts of England and Wales already had jurisdiction to make such an order under their inherent jurisdiction or under art 11 of the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights OJ L 157 30.3.2004).

Mr Justice Arnold said at paragraph [6] of his judgment that he had been informed by counsel that, so far as they and their professional and lay clients were aware, this was the first occasion on which an application for a website-blocking order against ISPs in order to combat trade mark infringement has been made anywhere in the EU, with the possible exception of the Danish case of Home A/S v Telenor A/S (Retten på Frederiksberg, 14 December 2012). "It is a test case", said the judge, "which, if successful, is likely to be followed by other applications by Richemont and other trade mark owners, both here and in other countries."

This being a test case the judge summarized the issues that he had to decide at paragraph [2]:

"First, does this Court have jurisdiction to make an order of the kind sought? Secondly, if the Court has jurisdiction, what are the threshold conditions, if any, which must be satisfied if the Court is to make an order? Thirdly, are those conditions satisfied in the present case? Fourthly, if those conditions are satisfied, what are the principles to be applied in deciding whether or not to make such an order? Fifthly, applying those principles, should such orders be made in the present case?"

His Lordship decided that he did have jurisdiction and that it was right for him to make the orders sought in the circumstances of this case.

As to the first issue, the judge noted that s.37 (1) of the Senior Courts Act 1981 provides:

"The High Court may by order (whether interlocutory or final) grant an injunction or appoint a receiver in all cases in which it appears to the court to be just and convenient to do so."

After reviewing the authorities and in particular Lord Scott's speech in Fourie v Le Roux and Otherts [2007] 1 WLR 320, [2007] 1 All ER 1087, [2007] BusLR 925, [2007] WLR 320, [2007] UKHL 1, [2007] UKHL 01, [2007] Bus LR 925 and the Court of Appeal's judgment in  Samsung Electronics (UK) Ltd v Apple Inc  [2012] EWCA Civ 1339 the judge concluded at paragraph [111] that the English courts did have jurisdiction to make website blocking orders of the kind sought by the claimants. If he was wrong on that point the judge concluded at paragraph [132] that s.37 (1) had to be interpreted in accordance with art 11 of the Enforcement Directive which required EU member states to "ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC."

Having decided that he had jurisdiction  to make blocking orders in trade mark disputes the judge turned to the conditions for the making of such orders and concluded that they must be consistent with the other provisions of the Enforcement Directive and other provisions of EU law. He listed these at paragraph [141]:

"First, the ISPs must be intermediaries within the meaning of the third sentence of Article 11. Secondly, either the users and/or the operators of the website must be infringing the claimant's trade marks. Thirdly, the users and/or the operators of the website must use the ISPs' services to do that. Fourthly, the ISPs must have actual knowledge of this."

The first three conditions were clear from the wording of the art 11. As for the fourth condition His Lordship said:

"The fourth condition is not contained in Article 11, but in my view it follows from Article 15 of the E-Commerce Directive and by analogy with Articles 13 (1) (e) and 14 (1) (a) of the E-Commerce Directive. If ISPs could be required to block websites without having actual knowledge of infringing activity, that would be tantamount to a general obligation to monitor. It is also difficult to see that such a requirement would be consistent with the requirements of Article 3(1) of the Enforcement Directive. As to what constitutes "actual knowledge" in this context, I see no reason to interpret this requirement differently to the manner in which I interpreted it in the section 97A/Article 8(3) context: see 20C Fox v BT at [114]-[157]."

Mr Justice Arnold decided that each of those conditions had been satisfied and that it was right to make blocking orders in this case.

A few weeks later the claimants found evidence of other websites that offered counterfeit goods for sale and returned to court with applications for orders to block those sites. In Cartier International AG v British Sky Broadcasting Ltd and others [2014] EWHC 3915 (Ch) (26 Nov 2014) Mr Justice Arnold made the requested orders.

None of the orders made by Mr Justice Arnold or other judges in the earlier cases has ever been appealed successfully and it is unlikely that anyone will appeal or apply to vary this order. As His Lordship reasoned that his jurisdiction derived from s.37 (1) of the Senior Courts Act 1981 there is no reason why blocking should not be made in support of other intellectual property rights such as passing off and registered designs.

If anyone wants to discuss this case, he or she should not hesitate to call me on 020 7404 5252 during office hours or use my message form.