NIPC Law

Jane Lambert

Intellectual Property Enterprise Court (HH Judge Melissa Clarke) ARB Sakes Ltd v Rich Energy Ltd. and Others[2019] EWHC 1207 (IPEC) 9 May 2019

This was a copyright infringement claim. The claimant trades as Whyte's Bikes and if you visit its website you should see a very distinctive antler logo. That was designed by two of its employees, Guy Farrant and Mark Morgan. The first defendant supplies an energy drink known as Rich Energy which it promotes with a racing car.  If you visit its website right now (but probably not for much longer) you will see a not dissimilar logo. The claimant claimed that the first defendant had copied the artwork for its logo. As the first defendant had registered that logo as a trade mark, the claimant applied for it to be declared invalid on the ground that its use was liable to be prevented by the law of copyright pursuant to s.5 (4) (b) of the Trade Marks Act 1994.

The Issues
The second defendant was the sole director and shareholder of th…

Jane Lambert

There are almost two and a half times as many internet users in China as there are citizens of the USA and some of the biggest e-commerce companies on earth are located in that country. These include Alibaba in Hangzhou, Baidu in Beijing and Tencent in Guangzhou. A lot of disputes arise anywhere in e-commerce between suppliers and their customers. internet service providers and their subscribers and between different internet users, In China, they can be referred to three specialist internet courts based respectively in Hangzhou, Beijing and Guangzhou.

The first of those courts was established in Hangzhou which has an English language website. According to that website, the court resolves contract disputes arising from online shopping, product liability disputes arising from online shopping, internet service contract disputes, internet loan contracts and online copyright disputes.  The last of these is particularly interesting to me as an IP lawyer. The website explains t…

Jane Lambert

Chancery Division (Mr Justice Nugee) Davies v Wolverhampton Wanderers Football Club (1986) Ltd [2019] EWHC 1252 (Ch) (15 May 2019)

This was a claim for infringement of copyright.  The football club, Wolverhampton Wanderers, known as Wolves, has a stylized wolf's head as a logo.  It can be seen at the centre of the menu bar of the club's website and in lots of photos. The club has used that logo on players' shirts, signage, programmes, business stationery and so on ever since 1979.  In the early 1960s when the claimant was at secondary school he drew stylized animal heads including that of a wolf which bore a considerable resemblance to the club's logo. In this action, he claimed that copyright subsists in his drawings as original artistic works and that Wolves had infringed his copyright by copying one of his drawings when it designed its logo.

Copyright confers the exclusive right to do certain acts in respect of a work in which copyright subsists.  One of…

Jane Lambert

Intellectual Property Enterprise Court (Recorder Amanda Michaels) Asian Business Publications Ltd v British Asian Achievers Awards Ltd and Another [2019] EWHC 1094 (IPEC) (2 May 2019)

This was an action for passing off.  The claimant ran an event called the Asian Achievers Awards. The defendants ran a similar event called the British Asian Achievers Awards. These were both charity dinners held in top class West End hotels at which prominent individuals of subcontinental heritage were presented with certificates.

The Issues
The following issues were identified at the case management conference:

"1) Whether the Claimant has acquired goodwill in the UK associated with the name or mark Asian Achievers Awards.
2) Whether the Defendants have (by using and/or threatening to use, the name or mark British Asian Achievers Awards) misrepresented that their competing events and/or any goods or services associated therewith is or are those of the Claimant or are connected or assoc…

Jane Lambert

Intellectual Property Enterprise Court (HH Judge Hacon)FBT Productions, LLC v Let Them Eat Vinyl Distribution Ltd and another [2019] EWHC 829 (IPEC)

This was a claim for infringement of copyright in the sound recording of an album called Infinite by Marshall Bruce Mathers III who is better known as Eminem. The claimant, a Detroit record company, alleged that the first defendant had made vinyl copies of Infinite which it supplied to the second defendant for resale to the public. Neither defendant denied those acts but they challenged the claimant's claim to copyright and the second defendant denied that it knew or had reason to believe that the items that it sold were infringing copies.

The Issues
The action came on for trial before His Honour Judge Hacon.  At paragraph [5] of his judgment, he identified three issues in dispute:
(1) Whether the claimant owned the copyright.
(2) Whether the defendants were licensed under the copyright.
(3) If there was no licence, whether…

Jane Lambert

Intellectual Property Enterprise Court (Judge Hacon) BDI Holding GmbH v Argent Energy Ltd. and another [2019] EWHC 765 (IPEC) (27 March 2019)

This was an action by BDI Holding GmbH ("BDI") for a declaration that it was entitled to a European patent for the following invention:

"There is described a biodiesel composition and process for producing biodiesel and related products. There is also described related fuels and fuel blends comprising biodiesel. The biodiesel composition is prepared from a mixture comprising fats, oils and greases from sewer waste. The composition comprises a mixture of esters of which 7-10.5 weight % is methyl octadecanoate (stearate). Specified percentages of other methyl esters are also claimed, including methyl tetradecanoate (myristate), methyl hexadecanoate (palmitate), methyl cis-9-octadecenoate (oleate) and others."

An application for a patent for that invention had been filed under application, number EP3011041 (A1) by Arg…