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Trade Marks: The Tomatin Distillery Co. Ltd. v The Tomatin Trading Co. Ltd.

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The Railway Viaduct at Tomatin Author Chris McKenna   Licence CC BY-SA 4.0   Source Wikimedia Commons   Jane Lambert Court of Session, Inner House (Lord President, Lord Woolman and Lord Pentland) The Tomatin Distillery Co. Ltd. v The Tomatin Trading Co. Ltd .  [2022] ScotCS CSIH_28 (14 June 2022) This was an appeal from the decision of the Scottish Intellectual Property Judge, Lady Wolffe, in The Tomatin Distillery Co. Ltd. v The Tomatin Trading Co. Ltd. [2021] ScotCS CSOH_100, 2021 SLT 1327, [2021] CSOH 100, 2021 GWD 33-438 (6 Oct 2021).  The pursuer, a whisky distiller in the village of  Tomatin , had sued the defender , which runs an hotel, café and farm shop in the same village, for trade mark infringement and passing off.  The defender denied infringement and counterclaimed for the invalidity of the pursuer's marks.  Her ladyship dismissed the claim and declared that two of the pursuer's trade marks were invalid on the ground inter alia that those marks had been registe

Registered Designs - Erol v Posh Fashion Ltd

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Jane Lambert Intellectual Property Enterprise Court (Mr Recorder Campbell) Erol v Posh Fashion Ltd [2022] EWHC 195 (IPEC) (8 Feb 2022) This was an action for the alleged infringement of two registered designs : Design number 4020066 for a hoody sweatshirt; and  Design number 4020067 for a T-shirt. The action came on for trial before Mr Recorder Campbell QC on 2 Dec 2021 who delivered judgment on 8 Feb 2022 (see  Erol v Posh Fashion Ltd [2022] EWHC 195 (IPEC) (8 Feb 2022)). By para [38] of his judgment, he dismissed the action on the ground that the registrations were invalid. Registered Designs A registered design is a design that is registered with the Designs Registry of the Intellectual Property Office under the provisions of the Registered Designs Act 1949 as amended.  Registration confers on the proprietor the exclusive right to use the design and any design which does not produce on an informed user a different overall impression.  "Use” means making, offering, putting

IPEC and the Shorter Trials Scheme Compared

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Manchester Civil Justice Centre Photo Michaelmazr   Licence CC BY-SA 4.0   S ource Wikimedia Commons   Jane Lambert Since the 1 Oct 2010, intellectual property claims of £500,000 or less that can be tried in no more than 2 days have been eligible to proceed in what was previously the Patents County Court and is now the Intellectual Property Enterprise Court ("IPEC)  (see New Patents County Court Rules   31 Oct 2010). The advantages of litigating in IPEC are that parties know from an early stage precisely when their trial will take place and judgment be delivered and their maximum liability for the other side's costs. The timetable is strictly enforced and the work that has to be done on case preparation is controlled. Shorter Trials Scheme Some of those advantages are now available for claims for more than £500,000 in the Business and Property Courts that have been issued on or after 1 Oct 2015 and can be tried in 4 days or less under a regime known as "the Shorter Trials

Copyright - Columbia Pictures and others v BT Plc and others

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Crossroads of the World Author Carol M Highsmith   Public domain  Source Wikimedia Commons   Jane Lambert Business and Property Courts, Intellectual Property Lost (Mrs Justice Falk) Columbia Pixtures Inc and others v British Telecommunications Plc and others [2021] EWHC 2799 (ch) (22 Oct 2021)  This was an application by members and representatives of the US film and television programme-makers industry for a blocking order against the leading British internet service providers under s.97A of the Copyright Designs and Patents Act 1988  ("CDPA").  A blocking order is an injunction requiring an internet service provider to take steps to prevent its subscribers from accessing a proscribed website.  S.97A provides: (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 servi

Witness Statements for Use in IP Proceedings

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  Jane Lambert Since 6 April 2021 Practice Direction 57AC Practice Direction 57AC - Trial Witness Statements in the Business and Property Courts  has regulated the form and content of witness statements for use in trials in the Business and Property Courts.  In  Greencastle MM LLP v Payne and other s [2022] EWHC 438 (IPEC) (13 Jan 2022), Mr Justice Fancourt withdrew permission for the service of the claimant's witness statements for a trial that was due to come on in less than a month's time on the ground that they failed to comply with the Practice Direction.   In that case, there was time to serve a replacement witness statement and his lordship gave the claimant a week to do that but the courts have power to impose a wide range of sanctions including striking out non-compliant statements. I discussed that case and PD57AC in Preparing Witness Statements for Use in Trials in IP Actions: Greencastle v Payne   on 7 May 2022.   I made clear in that article that PD57AC does not ap

Preparing Witness Statements for Use in Trials in IP Actions: Greencastle v Payne

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Author Francis Carruthers Gould  Source Wikimedia Commons Jane Lambert Chancery Division (Mr Justice Fancourt)  Greencastle MM LLP v Payne and others   [2022] EWHC 438  (13 Jan 2022) For many years witnesses in civil proceedings in England and Wales have delivered their  evidence in chief  in writing. That shortens trials and enables parties to know the case they have to meet at an early stage but it has given rise to concerns that factual witness statements are often ineffective in performing their core function of achieving best evidence at proportionate cost. Those concerns were expressed at a meeting of the Commercial Court Users’ Committee in March 2018.  A working group was set up consisting of: Mr Justice Popplewell (Commercial Court) (Chair)  Mr Justice Andrew Baker (Commercial Court)  Mr Justice Fancourt (Chancery Division)  Mr Justice Waksman (Commercial Court and Technology and Construction Court, and formerly Circuit Commercial Court)  Andrew George QC (Blackstone Chambers)

FRAND - The InterDigital v Lenovo Litigation

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By Nachoman-au - A digital photograph taken by myself., CC BY-SA 3.0, https://commons.wikimedia.org/w/index.php?curid=589068   Jane Lambert Interdigital Technology Corporation and others v Lenovo Group Ltd and others (Trial B) [2022] EWHC 10 (Pat) (6 Jan 2022) Interdigital Technology Corporation and others v Lenovo Group Ltd and others  [2021] EWHC 3401 (Pat) (16 Dec 2021) Interdigital Technology Corporation and others v Lenovo Group Ltd and others  [2021] EWHC 3192 (Pat) (26 Nov 2021) Interdigital Technology Corporation and another v Lenovo Group Ld Ltd and others [2021] EWHC 2152 (Pat) (29 July 2021) Interdigital Technology Corporation and others v Lenovo Group Ltd and others  [2021] EWHC 89 (Pat) (19 Jan 2021) Mr Justice Birss (as he then was) summarized this litigation in para [1] of the transcript in  Interdigital Technology Corporation and others v Lenovo Group Ltd and others  [2021] EWHC 89 (Pat) (19 Jan 2021) which was the first judgment in this litigation: "InterDigital