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Showing posts from May, 2012

Rabbits - Chocoladefabriken Lindt & Sprungli v OHIM

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In Case T-336/08 Chocoladefabriken Lindt & Sprüngli v OHIM (shape of a chocolate rabbit with a red ribbon) [2010] EUECJ T-336/08, the General Court  dismissed Lindt & Sprunglli's action for annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 11 June 2008 (Case R 1332/2005-4) concerning its application for registration of a three-dimensional mark comprising the shape of a chocolate rabbit with a red ribbon as a Community trade mark on the ground that the applications are devoid of distinctive character within the meaning of art 7 (1) (b) of the Community trade mark regulation (Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark).

The manufacturer appealed against that decision to the Court of Justice of the European Union essentially on the ground that there was no evidence for the conclusion that the "the shape of a sitting or crouching rabb…

Patents: Unilever v Johnson

The most remarkable aspect of Unilever Plc v S C Johnson & Son Inc [2012] EWPCC 19 (25 May 2012) is that this action took place in the Patents County Court rather than the Patents Court or before the Comptroller.  As the Patents County Court Guide notes at paragraph 1.3
"the Patents County Court was established to handle the smaller, shorter, less complex, less important, lower value actions and the procedures applicable in the court are designed particularly for cases of that kind. The court aims to provide cheaper, speedier and more informal procedures to ensure that small and medium sized enterprises, and private individuals, are not deterred from innovation by the potential cost of litigation to safeguard their rights." Judge Birss QC remarked at paragraph [4] of his judgment: "One might ask whether a case between two multinational corporations is suitable for the PCC. Since neither side suggested the matter should be transferred, the question did not arise. I c…

Passing off - Lumos Skincare Ltd v Sweet Squared Ltd.

In Stannard v Reay [1967] RPC 589, and Stacey v 2020 Communications [1991] FSR 49.it had been established that even a very modest goodwill can support an action for passing off.  Just how modest such goodwill can be was tested in Lumos Skincare Ltd v Sweet Squared Ltd and Others [2012] EWPCC 22 (10 May 2012).

This was a claim by a skincare distributor which markets a "pure redesnsifying serum", a "pure regenerating serum", a "deep exfoliating mask" and a "pure firming serum" under the brand names "Lumos one" to "four" to beauty salons and through its online shop against the manufacturer and distributor of a range of nail care products.  As Mr. Recorder Campbell noted at paragraph [35] of his judgment, the women's skincare market is huge. He referred to an undated article in The Times which stated that "sales of women's facial skincare products in Britain are expected to generate about £1 billion this year". …

Enforcing Small IP Claims: Sullivan v Bristol Film Studios

In Sullivan v Bristol Film Studios Ltd [2012] EWCA Civ 570 (3 May 2012) the Court of Appeal dismissed an appeal from a strike out of a claim for copyright, moral rights and performers' rights infringement and breach of contract under CPR 3.4 by the Chancery interim applications judge sitting in Bristol. The claim was struck out as an abuse of the process of the court not because it was bound to fail, but because even if it were to succeed the costs of fighting it would be out of all proportion to the amount that the claimant was likely to recover.

The claim was brought by a hip hop artist who had contracted with the defendant film company to make a video. The film was to have been a joint venture.  The claimant, Tony Sullivan (also known as Rudey Soloman ("Mr. Soloman"), made the sound track and appeared in the film.  The film company made the film in return for a share of the sales or other revenues.   After the film had been made, it was uploaded to YouTube.   Unfortun…

Injunctions against ISPs Part IV: Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd. and Others (No. 2)

In Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd and Others [2012] EWHC 268 (Ch) (20 Feb 2012) Mr. Justice Arnold concluded that both users and the operators of the Pirate Bay website infringed the copyrights of the claimants (and those they represent) in the UK. That had been the trial of preliminary issues that Mr. Justice Henderson had ordered in respect of applications by various businesses in the music industry for injunctions requiring the defendant internet service providers to block access to The Pirate Bay under s.97A of the Copyright Designs and Patents Act 1988.   I wrote about the case in "Injunctions against ISPs Part III: Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd. and Others" (21 Feb 2012). In Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd and Others (No. 2) [2012] EWHC 1152 (Ch) (02 May 2012) the judge granted the blocking order.
Analysing s.97A the judge directed himself that he had to…

Breach of Confidence: Force India Formula One Team Ltd v 1 Malaysia Racing Team SDN BHD and Others

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In Force India Formula One Team Ltd v 1 Malaysia Racing Team SDN BHD and Others  [2012] EWHC 616 (Ch) (21 March 2012), Force India sued  Aerolab and Fondmetal Technologies which had previously carried out wind tunnel tests and aerodynamic development work for Force India for breach of confidence.  Force India's allegation was that those companies had used information gained from such testing and development to help design a car for the first defendant,1 Malaysia and its British subsidiary.   Also sued was the former Chief Technical Officer of Force India who left to join 1 Malaysia.   There was also a counterclaim by Fondmetal for 846,230 euro for unpaid fees.Unusually for the Chancery Division, the master had directed the questions of liability and quantum of damages to be determined at the same hearing.  Force India had originally claimed damages of £15, 255,583 which claim was later reduced to £13, 771, 419.

The Issues
Aerolab admitted that there had been some copying of Force…