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Showing posts from November, 2015

Defending your Domain Name in the UDRP

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Whenever you apply to register, or to renew the registration of, a generic top level domain name such as one ending in ".com", ".org" or ".biz" you represent and warrant to the registrar that:
(a) the statements that you make in your agreement with the registrar are complete and accurate;
(b) the registration of the domain name will not to your knowledge, infringe upon or otherwise violate the rights of any third party;
(c) you are not registering the domain name for an unlawful purpose; and
(d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility and not the registrar's to determine whether your domain name registration infringes or violates someone else's rights.
What Rights might be violated or infringed?
These are usually registered trade marks and the rights to bring an action for passing off or equivalent cause of action in other legal systems. 
Trade marks do not exist in a…

Patents - Infringement and Revocation: Glass and others v Freysinnet Ltd.

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In Glass and Others v Freyssinet Ltd[2015] EWHC 2972 (IPEC) the inventors of a treatment process for concrete sued Freysinnet Ltd. ("Freysinnet") for infringement of their patent in the Intellectual Property Enterprise Court. Freysinnet counterclaimed for revocation of the patent on grounds of anticipation and obviousness. The action and counterclaim came on before His Honour Judge Hacon.

The Invention

The technical problem that the patented invention addressed was summarized by Judge Hacon at paragraph [3] of his judgment:
"Reinforced concrete is concrete containing bars made from another material, usually steel, which confer added strength (known as 'rebars'). The strength in compression of the concrete is complemented by the higher tensile strength and ductility of steel. Calcium hydroxide and alkaline salts within the concrete combine to create an iron oxide film on the surface of the steel which protects it from corrosion. That film may be broken down, typi…

Parallel Imports - Flynn Pharma Ltd v Drugsrus Ltd

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One of the fundamental principles of the European Union is that it "shall comprise a customs union which shall cover all trade in goods and which shall involve the prohibition between Member States of customs duties on imports and exports and of all charges having equivalent effect, and the adoption of a common customs tariff in their relations with third countries" (art 28 (1) of the Treaty on the Functioning of the European Union ("TFEU"). Art 34 of the TFEU further provides:
"Quantitative restrictions on imports and all measures having equivalent effect shall be prohibited between Member States." However, this is subject to the following exception provided by art 36:
"The provisions of Articles 34 and 35 shall not preclude prohibitions or restrictions on imports, exports or goods in transit justified on grounds of public morality, public policy or public security; the protection of health and life of humans, animals or plants; the protection of n…

"No Woman No Cry" BSI and another v Blue Mountain Music Appeal

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Between 1973 and 1976 Bob Marley wrote the words and composed the music for 13 songs of which the most famous was No Woman No Cry. At that time Marley was under contract to a New York company called Cayman Music Inc. ("CMI") which should have acquired the copyrights in those songs and the resulting royalties. To get round that contract Marley pretended that those works had been written by other individuals who collected those revenues and may possibly have shared them with him. Marley died in 1981.

After his death CMI sued Marley's estate in the New York courts for the moneys that it should have received under the contract and Marley's personal representative counterclaimed for rescission of Marley's contract with CMI. CMI's claim was found to be statute barred in New York but no decision was ever made on the counterclaim.

On 20 March 1992 Island Logic Ltd., one of the subsidiaries of Island Records, agreed to buy certain copyrights from CMI. The agreement …

How to complete a Complaint form for the UDRP

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I have been a member of the World Intellectual Property Organization's domain name dispute resolution panel since 2003 and I have seen a fair number of complaints in domain name disputes in that time. I have also settled a few of my own as counsel to trade mark proprietors or business owners who object to the registration of a domain name that is the same or similar to their trade mark or business name. The complaint is an important document as it is usually the only source of evidence and argument that a panellist can rely upon, yet it is rarely prepared well. More often and not I receive screeds of irrelevant matter, bad points, repetition of the same point and disjointed argument all presented in a tone of exaggerated indignation backed up by lengthy annexes all of which have to be read and most of which are next to useless. This short article is intended to be a guide for those contemplating a complaint under the Uniform Domain-Name Dispute-Resolution Policy ("UDRP"…

Introduction to Domain Name Dispute Resolution

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This is the first of  series of articles on domain name disputes. Schemes for the rapid resolution of domain name disputes such as ICANN's UDRP (Uniform Domain Name Dispute Resolution Policy), Nominet's Dispute Resolution Service ("DRS") and the Czech Court of Arbitration's ".euADR" are probably the most successful use of alternative dispute resolution ("ADR") on the planet and the topic is important for that reason alone. It is also important because such schemes are probably indispensable for the rapid development of the Internet.  It is inconceivable that businesses would have invested anything that the that they have on the development of on-line platforms for the delivery of many sorts of services without a quick and cheap method of domain name dispute resolution.

My Qualifications and Experience

I have been interested in this topic for nearly 20 years.  My interest was sparked by instructions that I received in the early days of the Inte…