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Showing posts from May, 2009

Patents: Leo Pharma v Sandoz Ltd.

In Leo Pharma (a/s Leo Laboratories Ltd) v Sandoz Ltd [2009] EWHC 996 (Pat) (15 May 2009) the defendant admitted that it had infringed the patent in suit but contended that the patent was invalid for lack of novelty and obviousness. The case was decided on its facts rather than on the law.  
On anticipation, Mr Justice Floyd summarized the principles expounded by Lord Hoffmann in Synthon BV v. Smithkline Beecham plc [2005] UKHL 59 (20 October 2005) as follows:"(1) There are two requirements for anticipation which it is important to keep separate, (a) disclosure and (b) enablement;(2) So far as disclosure is concerned, the prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent."In Leo Pharma the relevant subject-matter contained in the prior art document was said to disclose the invention not because it described the product in terms (which it did not), but because it was said that carrying out the disclosure would…

Patents: TNS Group Holdings Ltd. v Nielsen Media Research Inc

A fascinating little case on judicial discretion.  The claimant in TNS Group Holdings Ltd. v Nielsen Media Research Inc. claimed the revocation of the defendant's patent for a television audience management measurement system. It had also launched opposition proceedings in the European Patent Office under art 99 of the European Patent Convention.   Shortly before the issue of the claim form in the present proceedings the patentee had offered the claimant a licence the terms of which were not disclosed but which are unlikely to have been burdensome.  
The patentee applied to strike out the claim underCPR 3.4, alternatively asking for a stay on the following grounds:(1)the revocation proceedings were pointless and wasteful and served no commercial purpose in view of the offer of a licence;(2)   the proceedings had been brought for an improper purpose; and(3)   the English revocation proceedings duplicated wastefully the opposition proceedings at the EPO.
Mr Justice Arnold accepted tha…

Trade Marks: Daimler AG v Sany Group Company Ltd

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In Daimler AG v Sany Group Company Ltd [2009] EWHC 1003 (Ch) (14 May 2009) the registered proprietor of the following marks 













sought injunctions and other relief against Sany Group Co. Ltd. in respect of its use of the following sign:









The claimant's marks had been registered in the UK and at OHIM for various goods and services for may years and it brought proceedings under s.10 (2) (b) and (3) of the Trade Marks Act 1994 and art 9 (1) (b) and (c) of the Community Trade Marks Regulation.
The Defendant acknowledged that it has sold and intends to sell construction machinery (including self-propelled and truck-mounted construction machines) in the UK under and by reference to the above sign but contended that "on a 'real world' assessment of the factors germane to the question of liability, the claims for infringement and passing off should be rejected". 

The action was listed for trial in July 2009 with an estimated duration of 3 to 5 days. In an attempt to simplify its…

Jurisdiction to make Declarations before Trial: Hayim v Couch

It takes a lot of courage for a deputy judge to extend the envelope of settled practice and Mr. Stephen Smith QC is to be congratulated for doing just that in Hayim and others v Couch [2009] EWHC 1040 (Ch). In this case Mr Smith was asked to make declarations of right without there having been a trial, or indeed any hearing on the merits of the claims.
The request was made in order to give effect to a compromise that had been negotiated shortly before a very complex and probably messy share dealing claim between relations was due to come on for trial. The parties had reduced the terms of their settlement to writing and their settlement agreement provided for a consent order that contained a number of declarations on the validity of share dealings that had been the subject of the dispute.
Both parties referred the judge to authorities dating back to Williams v Powell [1984] WN 141 that the court does not make declarations of right either on admissions or in default of pleading.  In Walle…

Trade Marks and E-Commerce: L'Oreal and Interflora

Over the last few months there have been a spate of claims by luxury goods manufacturers against eBay. In RG 07/11365 L'Oréal SA c eBay France SAin which the Tribunal de Grande Instance of Paris dismissed trade mark infringement claims by L'Oréal against eBay for providing an on-line market for counterfeit goods on 13 May 2009.   A similar case came before Mr Justice Anold in L'Oreal SA and others v eBay International AG and others[2009] EWHC 1094  on 22 May 2009.   The questions that arose in both cases were summarized by the judge as follows:"Are eBay Europe liable for trade mark infringements committed by their users? Do eBay Europe themselves commit infringements by using trade marks in relation to infringing goods? "In this case the well known cosmetics, skincare and toiletries multinational, L'Oréal, sued a number of alleged counterfeiters and parallel importers for trade mark infringement.   These were defendants 4 to 10.   They also sued various eBay …