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Showing posts from January, 2012

Trade Marks: "The Griller", Ghias v Ikram and Others

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This was a decision by Mrs Recorder Michaels who sits as an appointed person in appeals from hearing officers in the Trade Marks Registry under s.77 of the Trade Marks Act 1977. She is therefore used to oppositions under s.5 and applications for invalidity under s.47 (2) of that Act where there will have been no oral evidence and in many cases no hearing.   You will find the transcript of her judgment at Ghias v Ikram and Others[2012] EWPCCC 3.

The Registered Marks
The claimant had registered the following British trade marks:

2,326,754  






for a wide range of foods and beverages in classes 29, 30 and 32 and various services in class 43 including "Restaurant, bar and catering services." with effect from 15 March 2003.

2,376,629








for the same range of goods and services with effect from 26 Oct 2004.

In her judgment, the recorder referred to 2,326,754 as "the logo" and 2,376,629 as "the device". As both marks are obviously logos and devices I prefer to call the f…

MMI Research Ltd v CellXion Ltd and Others

This is the second appeal in litigation that has come before Mr. Justice Floyd and the Court of Appeal on two occasions (see MMI Research Ltd v CellXion Ltd and Others[2009] Info TLR 35, [2009] EWHC 418 (Pat) (11 March 2009) and MMI Research Ltd v CellXion Ltd and Others[2011] EWHC 426 (Pat) (7 March 2011). At the first trial the judge held that the patent in suit was valid and that it had been infringed. The defendants appealed to the Court of Appeal on the basis of new evidence. Lords Justices Jacob and Kitchin allowed the appeal and ordered a new trial. At the second trial the judge considered the new evidence but held that it made no difference to his decision.

The Invention The invention was a device that facilitates the detection of mobile phone numbers. It is used by police forces and security services to monitor the movements of suspected wrongdoers. It works by fooling the suspect's mobile into releasing a unique identifier known as an "IMSI". The phone …

Trade Marks: 34Red v WHG Appeal

In 32Red Plc v WHG (International) Ltd and Others [2012] EWCA Civ 19 (24 Jan 2012) the Court of Appeal allowed a cross appeal by the claimant, 32Red Ltd. ("Red") against Mr. Justice Henderson's finding at first instance [2011] EWHC 62 (Ch) (21 Jan 2011) [2011] ETMR 21that Red's number mark had not been infringed but dismissed the appeal by the defendants, the William Hill group of companies ("WHG"), against his finding that all of Red's marks were valid and all but one of them had been infringed. The facts of this case are complex but I set out the background and summarized the legal issues in my post Trade Marks: 32Red v WHG of 23 Jan 2011.

The Grounds of Appeal
Lord Justice Etherton described WHG's attack on the trial judge's judgment as "a full-scale, wide-ranging attack on the Judge's analysis and conclusions on virtually every aspect of his judgment" alleging not just errors of principle but also failure by the judge to apply …

Damages for Infringement of Copyright in Photographs: Hoffmann v Drug Abuse Resistance

A few years ago it became possible for photo libraries to sniff the Internet for unlicensed copies of their photographs. When they found one they demanded pretty steep damages for copyright infringement. Often the owners of the websites were decent people who had acted in the sincere belief that they were entitled to use the snaps. Frequent questions at my IP clinics were: "Have they got a case?" and "Do we really owe them that much." Judge Birss QC's documents only decision in Hoffman v Drug Abuse Resistance Education (UK) Ltd [2012]  EWPCC 2 (19 Jan 2012) answers both those questions..

Why the Case was Conducted in Writing The reason why this was a documents only decision is  that the defendant went into liquidation before the acton came on for trial. Even though the liquidator advised him that no creditor was likely to get a dividend, the claimant asked for judgment.  Rather than put the parties to further expense, the judge ordered amended particulars of cla…

Costs in the IPO

This article was prompted by the decision of Mr. Phil Thorpe in Farr v Orbis Corp. (No. 2)BL/0/469/11 23 Dec 2011 where the hearing officer refused to award the defendant costs off the scale published in Tribunal Practice Note ("TPN") 2/2000 as amended by TPN 4/2007 against a litigant in person.  As the time for appealing has not yet run out, and as I represented the claimant at the costs hearing, it would be wrong for me to say anything more about that particular case. Rather I wish to explore the Comptroller's jurisdiction to award costs for proceedings in the Intellectual Property Office.

S.107 (1) of the Patents Act 1977 provides:
"The comptroller may, in proceedings before him under this Act, by order award to any party such costs or, in Scotland, such expenses as he may consider reasonable and direct how and by what parties they are to be paid." In Rizla Ltd.'s Application [1993] RPC 365 Anthony Watson QC confirmed that that section confers a very wid…

Copyright in Photographs: Temple Island Collections and Creation Records

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In our very first NIPC newsletter which we published in June 1997 I wrote a case note on Mr. Justice Lloyd's decision in Creation Records Ltd. and Others v News Group Newspapers Ltd[1997] EMLR 444, [1997] EWHC Ch 370, (1997) 16 Tr LR 544. In that case Mr. Noel Gallagher of Oasis and others applied for an interlocutory injunction to restrain The Sun from offering for sale and selling a poster of Oasis that featured a photo of an elaborate set that included a white Rolls Royce in a country club swimming pool. The Sun's photograph was very similar to the photograph that appeared on an Oasis album cover. The similarity arose because The Sun's photographer shot the same scene at roughly the same time and from the same angle as Mr. Gallagher's photographer but he did not reproduce any part of Oasis's print or negative. The learned judge held that the plaintiffs had no arguable case for infringement of copyright though he accepted that they had an arguable case for breach…

Copyright: Forensic Telecommunications Services Ltd. v West Yorkshire Police

In Forensic Telecommunications Services Ltd v West Yorkshire Police and Another [2011] EWHC 2892 (Ch) (9 November 2011) the claimant company ("FTS") complained that the West Yorkshire Police and one of the force's former detective constables had infringed its copyright, alternatively its database right, in certain tables of data referred to as "the PM Abs Lists" and had misused information consisting of the data in those tables that was alleged to have been disclosed to them in confidence. In an 142 paragraph judgment that discussed every aspect of copyright and database law from TRIPS to the interpretation of EU directives, Mr Justice Arnold threw out the claim for copyright infringement on the ground that copyright did not subsist in "the PM Abs Lists" but allowed the claim for database right infringement and breach of confidence. In the last paragraph of his judgment, his lordship said:

"I cannot part from this case without expressing my concer…

Is there any IP in Recipes? Reflections on the Reggae Reggae Case

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Most of us will have eaten so much over Christmas that food is likely to be one of the last things on our minds. Nevertheless, I was put in mind of food yesterday by two things. First, a Linkedin connection with Aunty Bernadette George, the owner of "Smokey Bites" whose African and Caribbean catering service is famous throughout London and beyond. Secondly, I read Judge Pelling QC's decision in Bailey and another v Graham and Others[2011] EWHC 3098 (Ch) (25 Nov 2011), "the Reggae Reggae Court Case" as the Levi Roots website put it.

Aunty Bernadette and Levi Roots are  both known to the legal profession though, in Aunty Bernadette's case, entirely in a good way. One of her testimonials comes from one of my instructing solicitors and her list of customers includes the Middle Temple and "De Silver Chambers" which I assume to be Argent Chambers (the chambers of Herendra de Silva QC).

The Reggae Reggae court case was decided entirely on the facts.   Th…

Copyright: Hooper Calls for Evidence

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The first of Professor Ian Hargreaves's recommendations in his report Digital Opportunitywas that "Government should ensure that development of the IP System is driven as far as possible by objective evidence." In carrying out his feasibility study on a digital copyright exchange Richard Hooper has called for evidence on:

(1) whether the copyright system really is unfit for purpose; and
(2) the correctness or otherwise of his suggested definitions.

A copy of the call for evidence can be downloaded from the IPO's website and his terms of reference can be viewed here. Responses to the call for evidence have to be submitted by email no later than the 10 Feb 2012.


Background
Jane Lambert "IP Policy: Does Hargreaves say anything new?" 24 June 2011

Patentability of Computer Programs: Halliburton Energy and Protecting Kids

It is some years since I last discussed software patents ("Software Patents: January Patents Ltd.'s Application", 16 Jan 2009, "Software Patents: New Guidance from the IPO", 29 Dec 2008 and "Patents: Software Protection after Symbian and Bilski" 11 Nov 2008) and Judge Birss QC's decision in Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) (5 Oct 2011) and Mr. Justice Floyd's in Re Protecting Kids the World Over (PKTWO) Ltd [2011] EWHC 2720 (Pat) (26 Oct 2011) justify a return to the topic.

The Statutory Exclusion Most people in intellectual property and many in information technology know that art 52 (2) of the European Patent Convention and s.1 (2) of the Patents Act 1977 exclude from patentability: (a)discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of infor…