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Showing posts from 2019

Trade Marks and Passing off - Nomination Di Antonio E Paolo Gensini SNC v Brealey and Another

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Jane Lambert

Intellectual Property Enterprise Court (Judge Hacon) Nomination Di Antonio E Paolo Gensini SNC and another v Brealey and another (t/a JSC Jewellery) [2019] EWHC 599 (13 March 2019)

This was an action for trade mark infringement and passing off.
The Claimants The first claimants are an Italian partnership dealing in charm bracelets.   The second is an Italian company that markets those bracelets.  The judge referred to the claimants collectively as "Nomination."   The second claimant advertises the bracelets in the UK on its website at www.nomination.com. Judge Hacon, who tried the action, called one of those products as a "composable bracelet" at paragraph [7] of his judgment. and described it as follows:

"It consists of individual links, measuring about 10 x 9mm, which may be detached from each other and relinked in any order to the taste of the wearer. These include what were called 'base links', which are made of stainless steel and bear …

The Cialis Dosing Appeal - Actavis Group PTC EHF and Others v ICOS Corporation and another

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Jane Lambert

Supreme Court (Lady Hale, Lords Kerr, Sumption, Hodge and Briggs) Actavis Group PTC EHF and others v ICOS Corporation and another [2019] UKSC 15 (27 March 2019)

In The Cialis Litigation - Actavis Group PTC EHF and Others v Icos Corp and Another 4 Oct 2016, I discussed Mr Justice Birss's judgment in Actavis and others v Eli Lilly and Co [2016] EWHC 1955 (Pat) (10 Aug 2016) in which he dismissed a claim for the revocation of European patent (UK) No 1,173,181  "Compositions comprising phosphodiesterase inhibitors for the treatment of sexual dysfunction" and held that the patent had been infringed,  His judgment was reversed by the Court of Appeal (Lord Justices Lewison, Kitchin and Floyd) in  Actavis Group PTC EHF and another v Teva UK Ltd and others  [2017] EWCA Civ 1671, 159 BMLR 108, (2018) 159 BMLR 108, [2018] RPC 7 (1 Nov 2017) on the ground that the claims relied upon had been obvious.  The patentee and its exclusive licensee in the UK appealed to the Sup…

Freshashia Foods Ltd. v Jing - The Trial

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Jane Lambert

Chancery Division (Mr Justice Arnold) Freshasia Foods Ltd v Jing Lu [2019] EWHC 638 (Ch) 20 March 2019

This was a claim by an employer against its former employee for breach of restrictive covenants in his contract of employment, breach of confidence and infringement of copyright and database right.  I have already mentioned the facts of this dispute in Restrictive Covenants - Freshasia Foods Ltd v Jing Lu11 Jan 2019.  On that occasion, Mr Daniel Alexander QC had to consider the claimant's application for an interim injunction to restrain those alleged breaches and infringements until judgment in the action or further order.  On 7, 8 and 11 March 2019, this action came on before Mr Justice Arnold for trial.

The Facts
As  I set out the basic facts and the covenants relied upon in my previous case note, there is no need for me to repeat them  Only two witnesses gave evidence at trial, namely one Calvin Lau on behalf of the claimant company and Mr Jing Lu for himself. The …

Another Decision on Equivalents - Marflow Engineering Ltd v Cassellie Ltd

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Intellectual Property Enterprise Court (HH Judge Hacon) Marflow Engineering Ltd v Cassellie Ltd [2019] EWHC 410 (IPEC) (26 Feb 2019)

This was another decision by his Honour Judge Hacon on the construction of claims in accordance with art 2 of the Protocol on the Interpretation of art 69 of the European Patent Convention. It follows his  judgments in Regen Lab SA v Estar Medical Ltd and others[2019] EWHC 63 (Pat) and Technetix BV and others v Teleste Ltd[2019] EWHC 126 (IPEC) which I discussed in Patents - Regen Lab SA v Estar Medical Ltd. 24 Jan 2019 and Patents - Technetix BV and others v Teleste Ltd19 Feb 2019.

The Invention
The patent in suit was for a method of installing a fluid-using appliance such as a shower.

The invention addressed problems arising when an appliance is connected to pipework extending from the wall against which the appliance is installed. The judge observed that the invention can be used with any fluid-using appliance and the fluid could be a gas, but it is…

Patents - Technetix BV and others v Teleste Ltd

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Jane Lambert

Intellectual Property Enterprise Court (HH Judge Hacon) Technetix BV and others v Teleste Ltd [2019] EWHC 126 (IPEC) (29 Jan 2019)

This is another case in which HH Judge Hacon applied the reasoning of the Supreme Court in Actavis UK Ltd and others v Eli Lilly and Company017] Bus LR 1731, [2017] RPC 21, [2017] UKSC 48, the Court of Appeal's in Icescape Limited v Ice-World International BV [2018] EWCA Civ 2219, and his own in Regen Lab SA v Estar Medical Ltd [2019] EWHC 63 (Pat).  I have discussed those cases in The Supreme Court's Judgment in Eli Lilly v Actavis UK Ltd and Others: how to understand it and why it is important13 July 2017, Patents Icescape Ltd v Ice-World International BV11 Feb 2019 and Patents - Regen Lab SA v Estar Medical Ltd. 24 Jan 2019He also discussed the possible existence of a Formstein defence in English law.

Summary
This was a claim by Technetix BV and its licensees ("Technetix") against Teleste Ltd. ("Teleste") for a…

Patents Icescape Ltd v Ice-World International BV

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Jane Lambert

Court of Appeal (Lord Kitchin, Lord Justices Floyd and Longmore)  Icescape Ltd v Ice-World International BV and Another: [2018] EWCA Civ 2219

The importance of this case is that it interprets, applies and possibly extends the Supreme Court's judgment in Eli Lilly v Actavis UK Ltd and Others [2017] Bus LR 1731, [2017] RPC 21, [2017] UKSC 48 which I discussed in The Supreme Court's Judgment in Eli Lilly v Actavis UK Ltd and Others: how to understand it and why it is important13 July 2017.

Summary 
This case started as a threats action.  The defence was that the threats were justified because the patent in suit had been infringed. That prompted a claim for a declaration of non-infringement and revocation of that patent to which there was a counterclaim for infringement.  Those actions and the counterclaim came on for trial before Mr John Baldwin QC who sat as a deputy judge of the High Court inIcescape Ltd v Ice-World International BV and another[2017] EWHC 42 (Pat) 23…

A New British Geographical Indications Regime after Brexit

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Jane Lambert

In Geographical IndicationsI quoted the WIPO definition of a geographical indication ("GI") as  "a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin".   I also stated that the UK has an international obligation to protect such signs under art 22 (2) of the TRIPS Agreement which is annexed to the WTO Agreement as Annex 1C. In Geographical Indications after Brexit6 Oct 2018 NIPC Branding I noted that this country had discharged that obligation through EU legislation and that the UK will need to establish its own GI regime in order to comply with art 22 (2) TRIPS whether it leaves the EU with or without a withdrawal agreement.  On 5 Fev 2019 the Department for Environment, Food and Rural Affairs ("DEFRA") published Protecting food and drink names if there's no Brexit dealstating what food and drink producers with GI protection need to know if the UK leaves the EU …