31 July 2011

Lucasfilm v Ainsworth: the Supreme Court's First IP Appeal

Had Mr. Andrew Ainsworth started to make "imperial stormtrooper" helmets when Star Wars was first released instead of in 2004 it ought to have been possible to have stopped him. As Lord Walker observed in paragraph 2 of his judgment in Lucasfilm Ltd. and Others v Ainsworth and Another [2011] UKSC 39, Mr Lucas’s concept of the Imperial Stormtroopers as threatening characters in “fascist white-armoured suits” was given visual expression in drawings and paintings by an artist, Mr Ralph McQuarrie. Assuming that Mr. McQuarrie was a "qualified person" within the meaning of s.1 (5) of the Copyright Act 1956, copyright would have subsisted in his drawings and paintings as original artistic works for his life plus 50 years. Making helmets to his design would have infringed that copyright.

Copyright Protection of Designs
Treating copies of finished products as infringements of the copyright in the design or engineering drawings for those products even though the copyist hardly ever saw those drawings was a very convenient way of protecting utilitarian as well as ornamental designs. It was well understood and non-discriminatory in that it covered most countries' designs. Since just about every country on the planet was party to the Berne or Universal Copyright Convention or some other treaty with HM Government for the protection of British copyright works, almost everybody was a "qualified person" for the purpose of the Act. This was the way in which designs were protected not just in the United Kingdom but also in many other common law jurisdictions including Australia, Canada, New Zealand and the Republic of Ireland.

Design Right
All of this came to an end exactly 22 years ago to this day when the Copyright Designs and Patents Act 1988 ("CDPA") came into force (see art 2 of the The Copyright, Designs and Patents Act 1988 (Commencement No. 1) Order 1989, SI 1989 No 816). S.51 (1) of that Act provided that it would no longer be an infringement of copyright in a design document to make an article to the design or to copy an article made to the design. In place of artistic copyright a new intellectual property right called "design right" came into being. Instead of a term of life plus 50 years a term of 10 years was substituted by s.216 (1) (b) of the CDPA. For the last 5 years of that term anyone in the world including an infringer could apply to the Comptroller for a licence of right under s.237 (1). Anyone who did so was immune from injunctions and orders for delivery up and the maximum amount of damages that could be awarded against the infringer was twice the licence fee for a licence of right (see s.239 (1)). Since design right is an almost exclusively British concept hardly any design outside the European Economic Area qualifies for protection under the CDPA. I remember explaining these impending changes as the Copyright, Designs and Patents Bill was passing through the Commons to a pioneering businessman from St. Helens who had been one of the first to design and manufacture his products in China. His whole business model had been based on the assumption that design drawings made by his Chinese and Lancashire designers would continue to be protected by copyright. To say that he was not happy would be something of an understatement.

Designing Round Design Right
Because of the limitations of design right protection exposed in yet another way by Judge Birss QC's recent decision in Albert Packaging v Nampak which I discussed in my IP Yorkshire blog on 2 July 2011, businesses have been looking for ways of restoring copyright protection by the back door. Electronic components manufacturers tried to argue that net lists could be protected as literary works (see Mackie Designs Inc v. Behringer Specialised studio equipment (UK) Ltd, Ulrich Bernhard Behringer & Behringer Spezielle Studiotechnik GmbH [1999] EWHC Ch 252 (22 Feb 1999). This appeal to the UK Supreme Court, the very first IP case before that tribunal, was another way. Lucasfilm argued that the model of a stormtrooper's helmet was a sculpture within the meaning of s.4 (1) (a) of the CDPA and hence protected for life plus 70 years.

The Issues before the Supreme Court
The basic facts of that case and the issues are set out fully in my case note on the decision of the Court of Appeal that I wrote 12 Jan 2010. In the appeal to the Supreme Court the issues had been whittled down to two:
(1) whether the model of a helmet was a sculpture and thus an artistic work in which copyright could subsist pursuant to s.1 (1) (a); and
(2) whether an English court could entertain an action for infringement of an American copyright.
Had their lordships found that the helmet was a sculpture the Supreme Court would have had to decide whether the exceptions under s.51 or s.52 applied.

Was the Helmet a Sculpture?
The Supreme Court held that it was not. Their lordships upheld the judgments in the courts below but with two qualifications.

First, at the risk of appearing humourless they were not enthusiastic about the "elephant test" (that is to say, knowing one when you see one) which quoted in full in my previous case note. The reason for their lack of enthusiasm is explained in paragraph [47]:
"Any zoologist has no difficulty in recognising an elephant on sight, and most could no doubt also give a clear and accurate description of its essential identifying features. By contrast a judge, even one very experienced in intellectual property matters, does not have some special power of divination which leads instantly to an infallible conclusion, and no judge would claim to have such a power. The judge reads and hears the evidence (often including expert evidence), reads and listens to the advocates’ submissions, and takes what the Court of Appeal rightly called a multi-factorial approach. Moreover the judge has to give reasons to explain his or her conclusions."
Very true but try telling that to a district judge. Especially one who has to deal with litigants in person on both sides. They could not get through their work unless they assumed the very power of divination that Lord Walker and the other Supreme Court justices disclaimed. Also, isn't that what "judicial knowledge" is supposed to be about?

The other point on which their lordships differed from the Court of Appeal was on the legislative policy on the protection of 3-dimensional objects. Lord Walker said at paragraph [48]:
"It is a general point as to the policy considerations underlying Parliament’s development of the law in order to protect the designers and makers of three-dimensional artefacts from unfair competition. After reviewing the legislative history the Court of Appeal took the view (para [40]) that there was no assistance to be obtained from the relationship between copyright and registered design right. We respectfully disagree, especially if the relatively new unregistered design right is also taken into account. It is possible to recognise an emerging legislative purpose (though the process has been slow and laborious) of protecting three-dimensional objects in a graduated way, quite unlike the protection afforded by the indiscriminate protection of literary copyright. Different periods of protection are accorded to different classes of work. Artistic works of art (sculpture and works of artistic craftsmanship) have the fullest protection; then come works with “eye appeal” (AMP Inc v Utilux Pty Ltd [1971] FSR 572); and under Part III of the 1988 Act a modest level of protection has been extended to purely functional objects (the exhaust system of a motor car being the familiar example). Although the periods of protection accorded to the less privileged types have been progressively extended, copyright protection has always been much more generous. There are good policy reasons for the differences in the periods of protection, and the Court should not, in our view, encourage the boundaries of full copyright protection to creep outwards."
Now this is a very important point and possibly even more important than the judges had contemplated. The reason why it is important is that technologies are developing under the general label of 3-dimensional printing which will enable just about any artifact to be constructed on the spot more or less anywhere that it is needed. By coincidence I listened to yesterday's "In Business" on BBC Radio 4 where these technologies were described as nothing less than a second industrial revolution. Once those technologies mature there will no longer be any advantage in manufacturing in low wage economies. There will be no need to build up stocks or transport masses of quantities of finished goods by sea and road. But there will also be lots of intellectual property issues too.

How will the designs for these artifacts be protected? The law as it subsisted before 1989 offered simple answers. Now thanks to five different design regimes:
  • unregistered design right
  • design registration
  • registered Community design
  • unregistered Community design, and
  • artistic copyright for designs not protected by design right
we have complexity. This complexity will be exacerbated by the fact that the printer will be actuated by computer programs that are protected by copyright as literary works. Not a lot of folk are think of these issues. Simon Bradshaw, Adrian Bowyer and Patrick Haufe of QMC are and I would commend their article on "The Intellectual Property Implications of Low Cost IP Printing" in the April 2010 issue of Scripted.

Can an English Court entertain an Action for US Copyright Infringement?
The justices said "yes." The Court of Appeal had come to the opposite conclusion in reliance on the House of Lords' decision in British South Africa Co v Companhia de Moçambique [1893] AC 602 (see my case note). The Supreme Court took the view at paragraph [105] that much of the underpinning of the Moçambique rule and the decision of the High Court of Australia in Potter v Broken Hill Pty Ltd. [1906] HCA 88, (1906) 3 CLR 479 (20 March 1906) which had extended it to intellectual property had been eroded. "All that is left of the Moçambique rule", said Lord Walker, "(except to the extent that it is modified by the Brussels I Regulation) is that there is no jurisdiction in proceedings for infringement of rights in foreign land where the proceedings are 'principally concerned with a question of the title, or the right to possession, of that property.'” They came to the "to the firm conclusion that, in the case of a claim for infringement of copyright of the present kind, the claim is one over which the English court has jurisdiction, provided that there is a basis for in personam jurisdiction over the defendant."

Although this latter point took up the greater part of their judgment, the Supreme Court justices stated more than once "a very narrow one because the appellants do not take issue with the application of the Moçambique rule to intellectual property so far as it is limited to patents and other intellectual property rights dependent on the grant or authority of a foreign State, and to cases where what is in issue is the validity of the patent, as opposed to its infringement."

Conclusion
This is an important case and one that is likely to be cited many times in future. Indeed, I have already mentioned it in one opinion and taken it into account in a pleading. Our friends in the rest of the common law world are also likely to refer to this decision both for "sculpture" point but also the justiciability issue because it had distinguished a decision of the Australian High Court that had stood unchallenged for over 100 years. Should anyone wish to discuss any point that arises from the decision he or she should call me on 0800 862 0055 or use my contact form.

16 July 2011

Swiss Style Claims: Ranbaxy v AstraZeneca

Ranbaxy (UK) Ltd. v AstraZeneca AB [2011] EWHC 1831 (Pat) (15 July 2011) raises an interesting point on the interpretation of claims. To be more precise "Swiss style claims".

Swiss style claims get their name from the legal advice of the Swiss Federal Intellectual Property Office of 30 May 1984 (OJ EPO 581) on the patentability of compounds used in the manufacture of a medicine for the treatment of a disease. As Mr. Justice Kitchin explained between paragraphs [42] and [60] this convoluted form of words was devised to get around the exclusion by art 52 (4) of the European Patent Convention before its revision in 2000 of "methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body." Lord Justice Jacob discussed Swiss style claims in some detail in Actavis UK Ltd v Merck & Co Inc [2008] EWCA Civ 444 (21 May 2008).

The usual context in which Swiss style claims are considered is "second medical use" - that is to say where a compound used to treat condition A is found to have healing properties in respect of condition B. In this case, however the generics company Ranbaxy wanted to import from India a drug for the treatment of gastric acid related diseases. The active ingredient of the drug was magnesium esomeprazole. AstraZeneca had a European patent for the use of this compound. Claim 1 of EP 1 020 461 was as follows:
"The use of a magnesium salt of (-)-5-methoxy-2[[(4-methoxy-3,5-dimethyl-2-pyridinyl)methyl]sulfinyl]-1H-benzimidazole ((-)-omeprazole) with an optical purity of = 99.8% enantiomeric excess (e.e.) for the manufacture of a medicament for the inhibition of gastric acid secretion."
It was common ground that the process of manufacture of Randaxy's product began with magnesium esomeprazole with an optical purity of = 99.8 % but the process involved the addition of a quantity of omeprazole racemate so that the finished product ceased to contain magnesium esomeprazole of that optical purity. Ranbaxy had obtained regulatory clearance for the sale of its drug in the UK and the only obstacle in its way was AstraZeneca's patent. Ranbaxy claimed a declaration of non-infringement and AstraZeneca counterclaimed for infringement.

Mr. Justice Kitchin gave judgment to Ranbaxy on both the claim and counterclaim. Giving the specification a purposive construction the judge held that the AstraZeneca's invention was the use of magnesium esomeprazole with an optical purity of = 99.8 % e.e. He found
"no suggestion anywhere in the body of the specification of the provision or use of any analogue or derivative of magnesium esomeprazole or, indeed, of any other active ingredient for the treatment of gastrointestinal disorders or any other condition. Nor is there any suggestion that the specification provides a new way of making a medicament. The whole teaching of the specification is about the production of optically pure magnesium esomeprazole and its use in particular therapies and, for that purpose, its formulation with a conventional carrier." (para [66])
The key point is actually to be found in paragraph [35] of the judgment where His Lordship addressed Ranbaxy's argument that claim 1 was a Swiss form claim and that such claims are in substance directed to the protection of a new therapeutic use of a medicament containing a known active compound. It follows that if the claim is valid the medicament must contain that compound.

This is very much lawyers' law - indeed intellectual property lawyers and patent agents' law. Should any lawyer, patent agent or member of the public want amplification or clarification of this case, he or she should call me on 0800 862 0055 or use my contact form.

14 July 2011

The Effect of the Legal Aid, Sentencing and Punishment of Offenders Bill on Intellectual Property Litigation

We have an adversarial system of civil litigation in England and Wales as do most other English speaking countries. In an adversarial system the parties choose the issues over which they wish to fight and produce the evidence that they want the tribunal to consider. By contrast, most of the rest of the world has an inquisitorial system where the tribunal leads an inquiry into the facts.

Each system has its advantages and it is beyond the scope of this article to decide which is superior but one advantage of the inquisitorial system is that it is very much cheaper. In the New Patent County Court Rules, Why IP Yorkshire and many other articles as well as in my book Enforcing Intellectual Property Rights I referred to the IPAC report The Enforcement of Patent Rights that compared the costs of patent infringement litigation in France, Germany and the Netherlands in 2003 (between 10,000 and 50,000 euro) with the costs in England and Wales (£150,000 to £250,000 in the Patents County Court and over £1 million in the Patents Court) and the United States of America ($2 to $4 million and upwards).

This disparity in the cost of civil litigation mattered very much less when we had comprehensive legal aid that often extended to intellectual property litigation. Although I never had much publicly funded work I did have some cases where taxpayers' money enabled private inventors and talented fashion designers to hold massive manufacturing companies and retail chains to account. Legal aid for inventors, artists and entrepreneurs ceased when paragraph 1 (h) of Schedule 2 to the so called Access to Justice Act 1999 came into force in April 2000.

That Act had the effect of reserving chancery and commercial litigation for the super rich. That was possibly not the intention. In its white paper Modernising Justice (Cm 4155) Dec 1998 the government of the day envisaged that conditional fee agreements ("CFA") and after-the-event ("ATE") insurance would ensure access to the courts for the less well off. In some areas of civil litigation, such as personal injuries and defamation, that actually happened. But it did not happen to any significant extent in intellectual property and most other chancery litigation for the simple reason that it was just not economic for specialist counsel and solicitors to accept instructions for complex cases that could last for years on a speculative basis.

The other point that I made in the book and articles that I mention above is that the UK trails its competitors in the number of patent applications. In Why IP Yorkshire I compared the number of European patent applications from the UK and other leading industrial countries between 2002 and 2007 in a table that showed that we were a long way behind not just the USA and Japan in our own patent office (perhaps unsurprising in view of the size of those economies) and our neighbours France and Germany of similar size and GDP but also the Netherlands with one third of our population and Switzerland with one eighth. In the New Patents County Court Rules I produced the 2009 statistics which showed that that trend had continued. Anyone who wants to see what happened last year has only to consult the European patents and patent applications - 2010 statistics.

I believe that there is a correlation between the cost of enforcement and the number of patent applications and I have lots of anecdotal evidence gained from my IP Clinics and inventors clubs to back up that assertion. Those who take a contrary view point to the USA where the costs of litigation are at least as high as in England but which still tops the list of European patent applications. My answer to that point is that the American justice system is still more inventor friendly than the English. Costs do not usually follow the event and counsel can contract for a share of the damages which are often awarded by a jury and tend to be very much larger than those awarded here. I know of at least one British inventor, John Mitchell of the SME Innovation Alliance, who has pursued his rights in the USA for that very reason.

Now I am delighted to say that at least some of the provisions of the Access to Justice Act 1999 are about to be repealed. Alas, not the restoration of legal aid for the areas of civil litigation that fell within Schedule 2 to that statute. The Legal Aid, Sentencing and Punishment of Offenders Bill actually restricts public funding in some respects by making civil legal services available only if they fall within Part ! of Schedule 1 to the proposed legislation or if they are "exceptional cases" within the meaning of clause 9 of the Bill. However, the Bill does implement several of Sir Rupert Jackson's recommendations from his Review of Civil Litigation Costs. Clause 41 (4) will relieve unsuccessful defendants from paying success fees in CFA. Clause 43 (1) will prevent recovery of ATE insurance premiums. Clause 42 will extend the range of circumstances in which lawyers may contract for a share of the damages. Clause 51 should encourage early settlement.

The Bar Council has expressed concern over this Bill (see the Bar Council's press release of 28 July 2011 "Parliament should heed experts' warnings on legal aid changes") and is lobbying hard for amendments to it but so far as intellectual property litigation is concerned I am not so sure that it is a bad thing. When taken together with the cap on costs and the other procedural changes in the Patents County Court that I discussed in my article of 31 Oct 2010 clause 41, 42, 43 and 51 should reduce the risk and costs of intellectual property enforcement. CFA and ATE insurance will be a great deal less attractive to litigants if success fees and premiums are irrecoverable. There will be greater incentive for patentees and other intellectual property owners to take out intellectual property insurance when they obtain their grants (see my article "IP Insurance Five Years On" The Inventors Club 23 Oct 2010). They are also likely to consider alternative methods of dispute resolution such as examiners' opinions on validity and infringement, the Uniform Domain Name Dispute Resolution Policy and Nominet equivalent for domain name disputes, mediation by WIPO, Intellectual Property Office and indeed these chambers or arbitration by WIPO and NIPC.

I discussed many of those possibilities in my presentation to the IPO's intellectual property awareness day and accompanying handout last September. We can provide comprehensive, reliable and cost-effective advice and representation for all those options. We can represent parties to arbitrations, mediation and domain name disputes and if all else fails applications for injunctions. For further information call us on 0800 862 0055 or fill in our contact form.

06 July 2011

Trade Marks and Passing Off: Schütz (UK) Ltd v Delta Containers Ltd

In my case note on Schütz (UK) Ltd v Werit (UK) Ltd [2011] EWCA Civ 303 (29 March 2011) of 2 April 2011 in this blog and in my note on Schutz (UK) Ltd and Another v Delta Containers Ltd and Another [2011] EWHC 1173 (Pat) (5 May 2011) in IP North West I referred to the practice of cross-bottling. That practice has already given rise to a patent infringement claim againstWerit (UK) Ltd. ("Werit") which Werit won at first instance but lost on appeal.

What is "Cross Bottling"
The bottles in question are 1,000 litre plastic bottles which are fitted into metal cages and mounted on pallets. The whole assembly is known as an IBC (intermediate bulk carrier) so called because it is smaller than a tanker but larger than a keg. The evolution of this technology was discussed in some detail by Mr. Justice Floyd in paragraphs 7 to 11 of his judgment in the Weritclaim. A photo of the assembly appears below.


For a time the whole assembly was made by the same manufacturer but as bottles and cages have lifespans a practice developed of encasing a bottle by one manufacturer in the cage of another. In short, the practice of "cross bottling".

The Litigation
The claimant Schütz complained that "cross bottling" infringed not only its two of its European patents but also its registered trade mark and that the practice also amounted to practice off. It sued Delta Containers Ltd. ("Delta") which makes cages and Werit which makes bottles. Delta agreed to abide by the decision against Werit in respect of patent infringement but resisted the claim for trade mark infringement and passing off. The case that is discussed in this note, Schütz (UK) Ltd and Another v Delta Containers Ltd and Another [2011] EWHC 1712 (Ch) (5 July 2011) was the trial before Mr. Justice Briggs of the trade mark infringement and passing off claim.

The Issue
As the manufacturer of that component Delta inserted its trade mark on the frame. Schütz placed its trade mark on the bottle but that was much less noticeable than the Delta's mark. Despite the use of disclaimers Schütz complained that Delta's mark gave the impression that it had made the whole assembly and not just the frame.

The Decision
Schütz had registered Community and British trade marks covered both the bottle and the whole IBC assembly. Directing himself to consider how the average consumer would regard the marking, the judge directed himself that:
"the application of the average consumer test to the question whether Delta used Schütz' trade marks in relation to the bottles of the IBCs as a whole does not depend upon a vain attempt to find a notional average consumer with perceptions somewhere between those of the fillers on the one hand and the end-users on the other. The search for a statistical average is neither warranted by European jurisprudence, nor sensible in the present context. In my judgment the test requires the court to identify the relevant perception of consumers within any relevant class who are neither deficient in the requisite characteristics of being well informed, observant and circumspect, nor top performers in the demonstration of those characteristics. That is in substance what "average" means."
Rejecting Delta's contention that end-users are not consumers, he propounded the following "what if" test:
"For as long as an IBC performs its functions effectively, that role of the trade marks may be of little consequence to the end-user. But if the IBC were to fail, then it is to the proprietor of the trade mark displayed on it that the end-user is likely to attribute blame for the failure, even if the end-user has no legal recourse against the manufacturer, and has to pursue a complaint through its (filler) supplier. In my judgment end-users of IBCs are consumers in the relevant sense, for that reason."
He concluded at paragraph [100]:
"It follows that, since I have concluded that the average or typical end-user of a Delta rebottled IBC in a Schütz cage is likely to perceive that the Schütz trade marks on the cage are being used in relation to the IBC as a whole, including the bottle, the claimants' case of trade mark infringement by Delta is made out, under Article 9.1(a). It is made out both in relation to the bottles, where the use of Schütz' trade marks is protected by its Community trade mark registrations, and in relation to the IBCs as a whole, where its marks are protected by its UK trade mark registrations, albeit that they were filed after the commencement of these proceedings."
The disclaimers in Mr. Justice Briggs's judgment made no difference but, in any event, the evidence of the practical effect on consumers was inconclusive.

In the judge's view, the facts that gave rise to a finding of trade mark infringement necessitated a finding of passing off also.

Comment
The most interesting aspect of this case is the "what if" test for determining whether an average consumer would associate the mark on the frame with the IBC as a whole. As the judge conceded, the mark "Pirelli" on a tyre does not suggest that the car or even the wheel was made by Pirelli. I suppose the answer must be that a claim arsing from an accident caused by a burst tyre would be directed to the tyre manufacturer and not the manufacturer of the car. It will be interesting to see whether any other judge, or more importantly, the Court of Justice of the European Union would follow that line.

01 July 2011

Practice: Wuxi Suntech Power Co. Ltd. v Tittmann Solar GmbH

This is not something they teach in law schools. Much less is it advertised to clients. But in my experience and I daresay that of most other intellectual property practitioners many if not most disputes are resolved on procedural points rather than lofty principles of substantive law.

Judge Birss QC's decision in Wuxi Suntech Power Co. Ltd. v Tittmann Solar GmbH [2011] EWPCC 17 (3 May 2011) is a case in point. This was an application under CPR 13.3 (1) to set aside or vary a default judgment entered by His Hon. Judge Fysh QC on 5 Aug 2010. That rule confers a discretion upon the court to set aside a default judgment if "the defendant has a real prospect of successfully defending the claim" or it appears to the court that there is some other good reason why the judgment should be set aside or varied or the defendant should be allowed to defend the claim. CPR 13.3 (2) further provides that in exercising its discretion "the matters to which the court must have regard include whether the person seeking to set aside the judgment made an application to do so promptly." A note in parenthesis reminds judges and practitioners that the court has power under CPR3.1 (3) to attach conditions when it makes an order.

CPR 13.3 (2) is new. As the Court of Appeal noted in Standard Bank Plc and Another v Agrinvest International Inc and Others [2010] EWCA Civ 1400 (8 Dec 2010), O13 r9 RSC gave the courts an unfettered discretion:
"Without prejudice to rule 7 (3) and (4) the Court may, on such terms as it thinks just, set aside or vary any judgment entered in pursuance of this Order."
Delay in making an application to set aside rarely appears to have been decisive so long as the defendant could show that it had a real prospect of successfully defending the claim. In J.H. Rayner (Mincing Lane) Ltd v Cafenorte S.A. Importadora e Exportadora S.A. [1999] EWCA Civ 2015 (29 July 1999), for example, judgment was set aside after 7½ years because the applicants'could show that they had a real prospect of success.

The Civil Procedure Rules changed all that. As Lord Justice Moore-Bick noted at paragraph [22] of Agrinvest:
"The Civil Procedure Rules were intended to introduce a new era in civil litigation, in which both the parties and the courts were expected to pay more attention to promoting efficiency and avoiding delay. The overriding objective expressly recognised for the first time the importance of ensuring that cases are dealt with expeditiously and fairly and it is in that context that one finds for the first time in rule 13.3(2) an explicit requirement for the court to have regard on an application of this kind to whether the application was made promptly. No other factor is specifically identified for consideration, which suggests that promptness now carries much greater weight than before. It is not a condition that must be satisfied before the court can grant relief, because other factors may carry sufficient weight to persuade the court that relief should be granted, even though the application was not made promptly. The strength of the defence may well be one. However, promptness will always be a factor of considerable significance, as the judge recognised in paragraph 27 of his judgment, and if there has been a marked failure to make the application promptly, the court may well be justified in refusing relief, notwithstanding the possibility that the defendant might succeed at trial."
In Wuxi judgment had been entered on 5 Aug 2010 but the application to set aside the order was made on 17 Feb 2011. The defence to an action for trade mark infringement was that a bill of lading that consigned a quantity of counterfeit goods to the defendant company (which goods had been intercepted by customs) was a forgery. The learned judge described that defence as "weak". There was an explanation for the delay between August and November 2010 but His Honour described the delay between November and February as "troubling."

The judge's solution was to order the defendant to pay £20,000 into court as a condition for granting it permission to defend. Hos Honour acknowledged that this was an unusual approach but considered it to be right when the defence was weak. Some would regard Judge Birss QC's order as exceptionally generous to the defendant in view of his assessment of the defence and lack of explanation for the delay. The clue to this indulgence probably lies in the value of the goods. Each solar panel sells for around £500 and there were several tons of this kit. The parties had spent £50,000 on this application alone. The consequences of injustice to the defendant if by some chance it prevailed would have been catastrophic. That alone would explain why Judge Birss QC felt that he had to offer Tittmann a bone.