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Showing posts from May, 2015

Whisky Galore - Whyte and MacKay Ltd v Origin Wine UK Ltd

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Jura is an island off the west coast of Scotland that is well known for its whisky. It is not to be confused with the Jura region of France which as it happens also produces whisky. According to the website Doubs Direct Whisky Jurassic consists of Scotch whisky that is matured in barrels that have contained the region's well known "Yelllow wine".  It is worth noting that France is not just a great consumer of whisky. It has in recent years launched into whisky production (see Wikipedia Whisky en France). There is actually a website called France Whisky which keeps tabs on the French whisky industry.

However, none of that has anything to do with the case in hand which was an appeal to Mr Justice Arnold by Whyte and Mackay Ltd ("WM") against the decision of Mr George Salthouse inJura Origin, Origin Wine UK Ltd and Another v Whyte and Mackay Ltd O-325-14 (23 July 2014) to block the registration of the sign JURA ORIGIN as a trade mark in respect of Scotch whisky a…

Another cautionary tale, - Stretchline v H & M

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Yesterday I told the tale of the claimant who sought an interim injunction and ended uo with a court order to pay £27 million damages to the defendant (see "Be careful for what you wish for when seeking an interim injunction - it may cost you plenty!" 23 May 2015). Today I have another cautionary tale. This time it is about the defendant which barred itself from contesting the validity of the claimant's patent by the terms of a settlement agreement.

The issue arose in Stretchline v H&M (UK) [2014] EWHC 3605 (Ch) (14 Oct 2014). In order to settle patent infringement proceedings in England and the USA the parties had entered a settlement agreement which provided
"...... the Parties each agree, on behalf of themselves, their successors or assigns, not to commence or pursue, or voluntarily assist the pursuit of, any further proceedings relating to or arising from the claims against the other Parties, or their parents, subsidiaries, assigns, transferees, principles,…

Be careful for what you wish for when seeking an interim injunction - it may cost you plenty!

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Whenever a court grants an interim injunction, or a respondent offers an undertaking, to do or refrain from doing something that might infringe a right claimed by the applicant, the applicant has to offer the respondent and in the most cases the court "a cross undertaking as to damages." Wording that is recommended for freezing injunctions but which could be adapted for other orders mutatis mutandis runs as follows:
"If the court later finds that this order has caused loss to the Respondent, and decides that the Respondent should be compensated for that loss, the Applicant will comply with any order the court may make." The need for such a cross-undertaking was considered by the House of Lords in the landmark case of American Cyanamid Co (No 1) v Ethicon Ltd [1977] FSR 593, [1975] AC 396, [1975] 1 All ER 504, [1975] 2 WLR 316, [1975] UKHL 1. An interim injunction is intended to be a temporary remedy to prevent a fait accompli where an award of damages would probab…

The Difference between Reputation and Goodwill: Starbucks (HK) Ltd and Another v British Sky Broadcasting Group PLC and Others

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In Reckitt & Colman Products Ltd v Borden Inc[1990] 1 WLR 491, [1990] RPC 341, [1990] WLR 491, [1990] 1 All ER 873, [1990] UKHL 12, Lord Oliver said:
"The law of passing off can be summarised in one short general proposition - no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepres…

Red Berries - Bodo Sperlein Ltd v Sabichi Ltd

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In John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd [2014] EWHC 3779 (IPEC) (21 Nov 2014) which I discussed in Is this a copy? John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd11 Dec 2014, His Honour Judge Hacon assessed the steps to be taken by the court when assessing an allegation of infringement of copyright. He considered them again in  Bodo Sperlein Ltd v Sabichi Ltd and Another [2015] EWHC 1242 (IPEC) (8 May 2015) at paragraph [33] of his judgment:
"In the absence of direct evidence of copying, the first of the steps to which I referred is to consider whether the claimant has established a prima facie inference of copying by reason of similarities between the copyright work and the defendant's work. In many cases (this is one) any inference of copying will come in the first instance from a comparison between the defendant's work and a publicly available design in the alleged chain of copying." He added at paragraph 35]:
"As I said in John Kaldor…

What to do about the new Practice Direction - Pre-Action Conduct

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CPR 63.20 (2) requires those bringing claims in the Intellectual Property Enterprise Court ("IPEC") including the small claims track to state whether they have complied with paragraph 7.1(1) and Annex A (paragraph 2) of the Practice Direction (Pre-Action Conduct). If they don't the defendant has an extra 28 days in which to file his or her defence under CPR 63.22 (3). But if you actually turn to the Practice Direction - Pre-Action Conduct you will find that the old paragraph 7 and Annex A aren't there any more.

That is because the practice direction was updated on 29 April 2015. In their place, paragraph 6 provides:
"Steps before issuing a claim at court
6. Where there is a relevant pre-action protocol, the parties should comply with that protocol before commencing proceedings. Where there is no relevant pre-action protocol, the parties should exchange correspondence and information to comply with the objectives in paragraph 3, bearing in mind that compliance sh…

Wrapped up: Everseal Stationery Products Ltd v Document Management Solutions Ltd

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Not all patented inventions are high tech. The title of the patent in Everseal Stationery Products Ltd v Document Management Solutions Ltd. and Others[2015] EWHC 842 (IPEC) (1 April 2015) was "Mailer with self-adhesive closure". The principal claim was for
"1. A business form with an adhesive closure having one or more adhesive regions for holding the form on a folded condition, characterised by the use on the adhesive region of a non-tacky layer of a dry self-sealing contact adhesive, which in the folded condition self-seals irreversibly to an opposed adhesive region also carrying a said contact adhesive, the adhesive being selected to self-seal irreversibly under a pressure of 500 kPa or less." The defendant, Document Management Solutions Ltd. ("DMS") was accused by Everseal Stationery Products Ltd ("ESP") of supplying mailers to a company called Mastermailer Stationery Limited ("Mastermailer") which had failed to obtain a declarati…