ASIN Numbers and Trade Marks - Birlea Furniture v Platinum

Jane Lambert

Intellectual Property Enterprise Court (Judge Melissa Clarke)Birlea Furniture Ltd v Platinum Enterprise (UK) Ltd and another [2018] EWHC 26 (IPEC) (11 Jan 2018) 

Sites like Amazon offer unparalleled opportunities to both suppliers and consumers. To suppliers they offer a massive worldwide market that they could never access in any other way. Conversely, they offer consumers a wider choice of suppliers than would otherwise be available thereby enabling them to source products at the optimum price.

Sellers are allocated a unique identifier which Amazon calls an ASIN ("Amazon Standard Identification Number"). Such identifier allows consumers to specify the goods they need and identify the businesses that supply them. That's fine so long as the ASIN is used by the same supplier, the goods are from the same source or are fungible. However, difficulty can arise when a supplier seeks to brand goods to be supplied under someone else's identifier.

In Birlea Furnitu…

Transposing the Trade Secrets Directive into English Law: Confidentiality Agreements

Jane Lambert

Patents subsist for 20 years, copyrights for the life of the author plus 70 years but the obligation neither to disclose nor make use of business or technical information that is disclosed in confidence can last indefinitely.  The recipe for Chartreuse is a case in point.  That distinctive liqueur has been emulated and occasionally counterfeited but never replicated.

All members of the World Trade Organization are obliged to protect undisclosed information from unauthorized use and disclosure by art 39 of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") but different countries including different EU member states discharge that obligation in different ways. Such differences affect the functioning of the internal market.  To minimize those differences the European Council adopted the trade secrets directive (Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-ho…

What, if anything, can be salvaged from the UPC Agreement?

Jane Lambert

On 12 Feb 2018 I shall address a seminar entitled the Implications of Brexit on Intellectual Property Law which will be hosted by Queen Mary University of London Centre for Commercial Law Studies at 67-69 Lincoln's Inn Fields (see Jane Lambert Implications of Brexit on Intellectual Property Law19 Jan 2018 NIPC News). The topic that I have chosen is "What if anything can be salvaged from the Unified Patent Court Agreement?"

The reason I have chosen that topic is that it seems increasingly unlikely that the Unified Patent Court ("UPC") will open its doors before 23:00 on 29 March 2019 which is "exit day" within the meaning of clause 14 (1) of the European Union (Withdrawal) Bill (HL Bill 79).

I say that for two reasons.

The first is that art 89 (1) of the Agreement on a Unified Patent Court provides that that agreement will come into force "the first day of the fourth month after the deposit of the thirteenth instrument of ratification…

Obviousness - Hospira v Cubist Appeal

Jane Lambert
Court of Appeal (Lord Justices Lewison and Kitchin) Hospira UK Ltd v Cubist Pharmaceuticals LLC [2018] EWCA Civ 12 (18 Jan 2018)
Daptomycin is an antibiotic used to treat systemic and life-threatening infections caused by multiple drug resistant bacteria. Its effectiveness depends on its purity. The invention for which the patent in suit was  granted was a way of purifying the antibiotic. In Hospira UK Ltd v Cubist Pharmaceuticals LLC [2016] EWHC 1285 (Pat) (10 June 2016), Hospira UK Ltd, (a British subsidiary of Pfizer) sought the revocation of that patent.  Mr Justice Henry Carr found that the patent was invalid and ordered its revocation. Cubist Pharmaceuticals LLC (a subsidiary of Merck & Co.) appealed against that judgment and order inHospira UK Ltd v Cubist Pharmaceuticals LLC [2018] EWCA Civ 12 (18 Jan 2018),

The Issue
The only issue in the appeal was whether the invention was obvious over an article by by Sung-Chyr Lin and Horng-Jyh Jiang entitled "Recovery …

Design Rights in Wedding Dresses: Madine and Another v Phillips and Another

Jane Lambert

Intellectual Property Enterprise Court (Ms Amanda Michaels)  Madine and Another v Phillips and Others [2017] EWHC 3268 (IPEC) (13 Dec 2017) 

Thelma Madine makes wedding addresses.  According to Amanda Michaels, who tried an action that Mrs Madine brought against Miss Leanne Phillips and her mother Mrs Pauline Phillips, two of her former employees, for design right and copyright infringement and passing off, "the hallmark of her dress designs is their extravagance, not just in terms of the price of the gowns, but in terms of the size and weight of the skirts, which tend to have to be supported by hoops (like a crinoline), and the elaborate nature of the decoration applied to the dresses." Mrs Madine was featured in the Channel 4 documentary My Big Fat Gypsy Weddingwhich was broadcast some years ago.

The Action
One of Mrs Madine's customers was a bride who is referred to as "Delilah" in Miss Michael's judgment.  Delilah appears in the above photo  i…

FRAND - a Postscript

Patent Court (Mr Justice Birss) Unwired Planet International Ltd v Huawei Technologies Co. Ltd and Another [2017] EWHC 3083 (Pat) (30 Nov 2017) 

On 5 April 2017 Mr Justice Birss delivered two judgments. One contained the judge's reasoning in full which was seen only by the parties' lawyers while the other was redacted.  I discussed the redacted version in FRAND8 Oct 2017. The problem with redactions, as Mr Justice Birss observed at paragraph [23] of his judgment in Unwired Planet International Ltd v Huawei Technologies Co. Ltd and another [2017] EWHC 3083 (Pat) (30 Nov 2017) is that "unless the public can see and understand a judge's reasons they cannot hold the courts to account."  Since different parties to the litigation had requested the removal of different parts of the full judgment, his lordship convened that hearing with the parties' solicitors to give directions about what should be published and what should not.

In approaching that issue the learned…

Trade Marks: Nicoventures Holdings Ltd v The London Vape Company Ltd

Jane Lambert

Chancery Division  (Mr Justice Birss) Nicoventures Holdings Ltd v The London Vape Company Ltd [2017] EWHC 3393 (Ch) (21 Dec 2017) 

On 26 Oct 2016, Nicoventures Holdings Limited applied to register the above trade mark for:
electronic cigarettes; cartridges for electronic cigarettes; liquids for electronic cigarettes; cigarettes containing tobacco substitutes; tobacco substitutes; cigarettes; tobacco; tobacco products; cigarette cases; cigarette boxes in class 34; andretail store services connected with the sale of e-cigarettes, electronic cigarettes, liquid solutions for use in electronic cigarettes, tobacco, smokers' articles, matches, personal vaporisers and electronic cigarettes and flavourings and solutions therefore in class 35. The application was opposed by The London Vape Company Ltd. under s.5 (2) (b) of the Trade Marks Act 1994.  The earlier trade mark upon which the opponent relied was the following mark:

That mark was registered for electronic cigarettes; Li…