Showing posts from 2019

Trade Marks and Passing off - Claridge's Hotel Ltd v Claridge Candles Ltd

Jane Lambert

Intellectual Property Enterprise Court (Mr Recorder Campbell) Claridge's Hotel Ltd v Claridge Candles Ltd and Another  [2019] EWHC 2003 (IPEC)

This was an action for trade mark infringement and passing off. There was also a counterclaim for revocation of the marks in suit for non-use.  The claimant was the owner and operator of Claridge's, the well-known luxury hotel on the corner of Brook Street and Davies Street.  The defendants were a small private company that supplied candles like the one in the photograph below and its only director and majority shareholder, Denise Shepherd, who lives on a street that happens to be called Claridge Court.

The Claimant's Mark
The claimant registered the word CLARIDGE'S as a UK trade mark with effect from 22 July 2005 for the following goods and services:

Class 3: "Toiletries; shampoos; conditioners; bath preparations; body lotions; essential oils; shower gels; moisturiser".
Class 5: "Bath preparations; hai…

The Trial - Conversant v Huawei Technologies and Others

Patents Court (Mr Justice Arnold) Conversant Wireless Licensing SARL v Huawei Technologies Co. Ltd. and Others [2019] EWHC 1687 (Pat)

This was a claim by Conversant Wireless Licensing SARL  against Huawei Technologies Co. Ltd.ZTE Corporation and their respective British subsidiaries for patent infringement. The patent in suit was European patent (UK) 1797659 entitled  Slow MAC-e for autonomous transmission in high speed uplink packet access (HSUPA) along with service specific transmission time control. The claimant contended that the patent was essential to an aspect of the 3rd generation mobile phone Universal Mobile Telecommunications Standard ("UMTS") referred to as Uplink DRX,  As the defendants distributed mobile phones that complied with that standard the claimant complained that the defendants would have infringed its patent.  The defendants denied essentiality and hence infringement and counterclaimed for revocation of the grounds of added matter, obviousness and ins…

Missed! Arrow Declarations - Pfizer v Hoffmann La Roche

Jane Lambert
Patents Court (Mr Justice Birss)Pfizer Ltd v F. Hoffmann-La Roche AG and another [2019] EWHC 1520 (Pat) (20 June 2019)

An "Arrow declaration" is a declaration that a product or process was known or obvious at a particular date and therefore could not fall within the claims of a patent.  It takes its name from the decision of Mr Justicce Kitchin as he then was in Arrow Generics Ltd and another v Merck & Co,  [2007] FSR 39, [2007] EWHC 1900 (Pat), [2008] Bus LR 487 where his lordship refused to strike out an application for such a declaration. The purpose of Arrow declarations is to determine in advance issues that might prevent or delay a  competitor from entering a market immediately after a monopoly is due to come to an end.  Thus, in Arrow, the launch of a competing product was threatened by the revival of several divisional applications that had been derived from a revoked patent.  Had the competitor not applied for the declaration when it did it might hav…

Patents - Illumina, Inc and another v TDI Genetics Ltd and others

Jane Lambert

Patents Court (Mr Justice Arnold) Illumina, Inc and another v TDL Genetics Ltd and others [2019] EWHC 1497 (Pat) (17 June 2019)

This was an action for patent infringement with a counterclaim for revocation on grounds of obviousness and insufficiency. The patent in suit was European patent EP1524321 for Non-invasive detection of fetal genetic traits which was granted to the second claimant. The first claimant was the second claimant's exclusive licensee.  The third defendant has developed a non-invasive prenatal test called "Harmony" which the first defendant offers to its patients.  The claimants allege that it infringes their patent.  The action and counterclaim came on before Mr Justice Arnold.

The Patent
The invention for which the patent was granted reads as follows:

"Blood plasma of a pregnant woman contains both fetal and maternal circulatory extracellular DNA, the latter forming the major part (generally > 90%) thereof. The majority of the circ…

Patents - Allergan v Aspire Pharma

Jane Lambert

Patents Court (Mr Justice Atnold)  Allergan, Inc and another v Aspire Pharma Ltd [2019] EWHC 1085 (Pat) (3 May 2019) 

Allergan Inc is the proprietor of European patent EP1753434 for an enhanced bimatoprost ophthalmic solution which its English subsidiary, Allergan Ltd. exploitsby marketing a product containing 0.1 mg/ml (0.01%) bimatoprost for ophthalmic administration for the treatment of glaucoma under the trade mark Lumigan 01 mg/ml. Aspire Pharma Ltd and Accord Healthcare Ltd have obtained marketing authorizations to market generic versions of Lumigan 0.1 mg/ml which they do not dispute would infringe the patent. They contend that the patent is invalid on the ground of obviousness or, alternatively insufficiency.

S.72 (1) of the Patents Act 1977 provides that the Patents or Intellectual Property Enterprise Court or the Comptroller-General of Patents, Designs and Trade Marks may revoke a patent for an invention on the ground that the invention is not a patentable inventio…

Patents - Emson v Hozelock

Standard YouTube Licence

Jane Lambert

Patents Court (Mr Justice Nugee) E Mishan & Sons, Inc (t/a Emson) v Hozelock Ltd and others [2019] EWHC 991 (Pat) (17 April 2019)

This was a claim for the infringement of two patents:  UK patent GB 2 490 276 for an expandable hose assembly and European patent EP 2 687 575 also for an expandable hose assembly. There was a counterclaim for the revocation of those patents on grounds of obviousness and, for a while, anticipation. This action and counterclaim came on before Mr Justice Nugee.

The Invention
The invention for which those patents were granted was a new type of garden hose. Conventional ones are made of plastic in a number of layers bonded together. They tended to be heavy. bulky and difficult to store.  They also tended to kink.  The invention avoided those difficulties. The inventor, Michael Berardi, made a hose consisting of two tubes, one inside the other.  The inner tube which carries the water is made of an elastic material such as …

Choice of Forum - Ablynx NV and Another v Vhsquared Ltd and Others

Jane Lambert

Patents Court (HH Judge Hacon) Ablynx NV and another  v Vhsquared Ltd and others [2019] EWHC 792 (Pat) (29 March 2019)

In Litigating in London after Halloween26 July 2019 NIPC Brexit, I discussed the likely consequences of the intended repeal of Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters OJ L 351, 20.12.2012, p. 1–32 if the Johnson administration withdraws the United Kingdom from the European Union without a withdrawal agreement in accordance with art 50 (2) of the Treaty of European Union.  One Richard de Vere wrote:

"I almost feel silly asking, I read the blog twice and it’s not through a lack of trying... but can you simplify this and give some examples of how it will impact smaller businesses?"

I replied:

"You have asked for a simple example. Art 36 (1) of reg 1215/2012 provides: "A judgment given in a …