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Costs: Westwood v Knight

The importance of Westwood v Knight [2011] EWPCC 11 (11 May 2011) is that it was the first trial under the new rules for the Patents County Court and thus the first opportunity for the court to consider the cost capping rules in the context of an entire case. The trial, which I blogged in my IP North West blog because the defendant came from Manchester, was an action for infringement of trade marks and copyrights and passing off that had been brought by the well known fashion designer Vivian Westwood.

Judge Birss QC assessed costs against the defendant in the sum of £60,625. That was just over half the £133,533 that the claimant claimed to have incurred. The trial judge promised to give his reasons for his assessment when he made his order and these he delivered on 11 May 2011.
His Honour considered the rules that he had to apply. The general approach to costs is set out in CPR 44.3 but he also had to consider the scale costs for claims in the Patents County Court set out in Section VI…

Trade Marks - The KitKat Appeal: How does a Shape Mark acquire Distinctiveness?

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Jane Lambert

Société Des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358 (17 May 2017)

Unregistered design right subsists for no more than 15 years. A design registration for only 25. But a trade mark registration can last forever. That no doubt explains why La Société des Produits Nestlé S.A ("Nestlé") has persevered with this case despite losing to Cadbury UK Ltd ("Cadbury") in the Trade Marks Registry and on appeal.

The Issue

S.1 (1) of the Trade Marks Act 1994 provides that any sign can be a trade mark so long as it is "capable of being represented graphically" and "capable of distinguishing goods or services of one undertaking from those of other undertakings." The section gives some examples one of which is "the shape of goods or their packaging."

On 8 July 2010, Nestlé's trade mark agents applied to the Intellectual Property Office ("the IPO") to register the shape of the KitKat bar shown in the photo above as…

Protecting FinTech Innovation

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Jane Lambert

A lot of money is going into FinTech (financial services technology) in this country and overseas nowadays including accelerator programmes promoted by our central bank and one of our major clearers (see the Bank of England's FinTech page and the Barclays Accelerator as well as details of the other accelerator programmes in the table below). But how is all that investment in FinTech to be protected if indeed it is to be protected at all?  In an extract from a longer article in Gluon. Steve Findley and Vanni Torelli ask whether IP is so important to FinTech (see Fintech Startups – is IP important?The FinTech Times).

In view of the amounts of money involved, I should be very surprised if it were not. Findley and Torelli argued that of the top 35 FinTec h unicorns than 25% have filed for patents. I am not in the least surprised by that statistic. Most FinTech innovation will be software implemented. Software is difficult to patent in England and indeed the rest of Europe…

Intellectual Property (Unjustified Threats) Bill

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Jane Lambert

The action arising from groundless threats has been one of the most perplexing features of our intellectual property law both for foreign owners of IPR in this country and their legal advisors (see Prince Plc v Prince Sports Group Inc[1998] FSR 21) and even non-specialist lawyers in the United Kingdom (see Brain v Ingeledew Brown Benson and Garrett and another [1996] FSR 341). Under s.70 of the Patents Act 1977 and similar provisions in other IP legislation, a letter threatening proceedings that would be quite acceptable in most countries and even in the UK in respect of most other causes of action can land the lawyer or attorney who wrote it, and the client on whose behalf the letter was written, in a whole heap of trouble that sometimes results in an infringer getting away with his or her wrongdoing.

S.70 (1) provides:

"Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens anoth…