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Showing posts from November, 2019

Supplementary Protection Certificates - The Waiver Regulation

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Jane Lambert

On 1 July 2019 Regulation (EU) 2019/933 of the European Parliament and of the Council of 20 May 2019 amending Regulation (EC) No 469/2009 concerning the supplementary protection certificate for medicinal products (Text with EEA relevance.) OJ L 153, 11.6.2019, p. 1–10 came into force.  It consists of 30 paragraphs of recitals but only 2 articles. Art 1 amends Regulation (EC) No 469/2009 of the Europea Parliament and of the Council f 6 May 2009concerning the supplementary protection certificate for medicinal products OJ 16.6.2009 L 152 p1-9 so as to enable generic and biosimilar manufacturers to make products that are protected by supplementary protection certificates ("SPC") for export to third countries or to stockpile them for distribution from the moment the SPC expires.  Art 2 provided for Regulation 2019/933 to enter into force on the 20th day following its publication in the Official Journal.

What is an SPC?

An SPC is an intellectual property right akin to …

Copyright - Ashley Wilde Group Ltd. v BCPL Limited

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Jane Lambert

Intellectual Property Enterprise Court (Judge Melissa Clarke) Ashley Wilde Group Ltd v BCPL Ltd [2019] EWHC 3166 (IPEC) (21 Nov2019)

This was an action for infringement of copyright in a prototype for a bed linen range.  An example of a duvet cover from that range appears at the top of the above photo together with an example of the allegedly infringing item at the bottom. The claimant's product, known as "Evangeline" was sold as part of the "Kylie Minogue at Home" range even though the prototype had been made by one of the claimant's employees and not by Kylie Minogue.   The defendant's, called "Amore", was under the "Buy Caprice Home" brand even though it had been designed not by the Caprice in question (the celebrity Caprice Bourret) but by a freelance designer.

In her judgment of 21 Nov 2019, Her Honour Judge Melissa Clarke dismissed the claim on the ground that there had been no copying.  She also made some importan…

Patents - Excel-Eucan Ltd v Source Vagabond Systems Ltd

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Jane Lambert
Patents Court (HH Judge Melissa Clarke) Excel-Eucan Ltd v Source Vagabond Systems Ltd [2019] EWHC 3175 (Pat) (21 Nov 2019)

This action began as a claim for:
a declaration that a patent licence agreement subsisted between the parties,royalties payable under that agreement or, alternatively, damages for breach of the agreement.  The defendant counterclaimed for declarations that:
the agreement had been terminated, the agreement was unenforceable in the absence of a valid patent, the claimant's patents had not been infringed by the manufacture and sale of items that the defendant claimed to have developed independently of the claimant. and,no royalties were payable in respect of the manufacture and sale of those items.  By the time the action and counterclaim came on for trial, the defendant had admitted that the licence agreement had not been terminated and was valid and binding and that the claimant held valid patents.  The issues that Her Honour Judge Melissa Clarke was …

Designs - Shnuggle Ltd v Munchkin, Inc

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Jane Lambert

Intellectual Property Enterprise Court (HH Melissa Clarke) Shnuggle Ltd v Munchkin, Inc and another[2019] EWHC 3149 (IPEC) (20 Nov 2019)

This was an action for the infringement of registered Community designs and unregistered design right and a counterclaim for a declaration of invalidity of one of those RCDs.  The action and counterclaim were tried by Her Honour Judge Melissa Clarke on 23 and 24 Sept 2019. She delivered her judgment on 20 Nov 2019 the transcript of which is at Shnuggle Ltd v Munchkin, Inc. and another [2019] EWHC 3149 (IPEC) (20 Nov2019)

The Parties

The claimant is a Northern Irish company called Shnuggle Ltd. ("Shnuggle") which designs, makes and markets baby products. The first defendant, Munchkin Inc. ("Munchkin") is a much bigger American company in the same industry. The second defendant, Lindam Ltd., ("Lindam") distributes Munchkin's products in the UK.

The Registered Designs

Shnuggle is the registered proprietor of …

Patents - Technetix BV v Teleste Ltd

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Patents Court (HH Judge Hacon) Technetix BV and another v Teleste Ltd [2019] EWHC 3106 (Pat) (18 Nov 2019)

This was a claim for patent infringement and a counterclaim for revocation on grounds of anticipation, obviousness and added matter. There was also an application for unconditional and conditional amendments to the patent. The claim and counterclaim came on before His Honour Judge Hacon sitting as a judge of the Patents Court in  Technetix BV and another v Teleste Ltd [2019] EWHC 3106 (Pat) (18 Nov 2019). His Honour tried the action in May and delivered judgment on 18 Nov 2019. The learned judge held at paragraph [122] of his judgment that the patent was invalid on all three grounds .and refused the amendments though he found that the patent would have been infringed hand it been valid.

The Patent

The patent in suit was European patent 1259074 for a communication system comprising means for preventing intermodulation products which had been granted to the Dutch company, Technetri…

An IP Case from my Alma Mater - University of St Andrews v Student Gowns Ltd

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Jane Lambert

Outer House, Court of Session (Lord Doherty) The University Court of the University of St Andrews v Student Gowns Ltd [2019] CSOH 86, [2019] ScotCS CSOH_86

This was a challenge to the jurisdiction of the Scottish courts by Student Gowns Ltd. ("Gowns").  Gowns is an English company carrying on business from premises in London. In 2018 it marketed a red gown to undergraduates of the United College of St. Salvator and St Leonard in the University of St. Andrews through its website and on Google and Amazon and a roadshow in St Andrews.  The University Court of the University of St Andrews ("the Court"), the governing body of the University and proprietor of the registered trade marksUNIVERSITY OF ST. ANDREWS, ST ANDREWS UNIVERSITY and THE UNIVERSITY OF ST. ANDREWS, brought proceedings against Gowns in the Outer House of the Court of Session for infringement of those marks and passing off.

In its defence, Gowns admitted that it had so…

Evidence in IPO Tribunal Proceedings

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Jane Lambert

For many years the Chief Executive of the Intellectual Property Office ("IPO") who is also known as "the Comptroller" for patent and unregistered design right matters and "the Registrar" for trade marks and registered designs, has referred disputes that have been brought before him or her to officials known as "hearing officers".  Until 19 April 2000, those hearing officers conducted their proceedings very differently from the courts. There was nothing that resembled statements of case in civil litigation and evidence was filed in statutory declarations. As a result, many of those proceedings were slower and more expensive than they should have been.

A great change occurred on 26 April 2000 when Tribunal Practice Notice (TPN 1/2000) came into force. It addressed the following matters:
"The Office and parties should endeavour to complete with notice proceedings within 18 months. (paragraph 7)The periods for filing a counterstatem…