NIPC Law

Jane Lambert Court of Appeal (Lord Justices Lewison and Arnold and Mr Justice Marcus Smith) Bentley Motors Limited v Bentley 1962 Limited and another [2020] EWCA Civ 1726 (16 Dec2020) This was an appeal by Bentley Motors Limited against Judge Hacon's decision in Bentley 1962 Ltd and another v Bentley Motors Ltd [2019] EWHC 2925 (Ch) (1 Nov 2019) which I discussed in Trade Marks - Bentley 1962 Ltd and another v Bentley Motors Ltd.   on 3 Nov 2019.  In that decision, the learned judge held that Bentley Motors had infringed trade mark numbers  1180215 ,    2177779A  and  2505233  by marketing and distributing clothing and headgear with the word "BENTLEY" in combination with the motor company's winged "B" emblem. The above picture is an example of the use of the combination to which the claimants objected. Grounds of Appeal Bentley Motors' grounds of appeal were as follows.  First, the judge had been wrong to hold that the average consumer of...

Jane Lambert Intellectual Property Enterprise Court (HH Judge Hacon)  Lifestyle Equities CV and another v Hornby Street (MCR) Ltd and others [2020] EWHC 3320 (IPEC) (30 Nov 2020) The first claimant has registered the following sign in the EU and UK as trade marks for clothes and various other goods. The second claimant is its exclusive licensee. They have brought proceedings in the Intellectual Property Enterprise Court ("IPEC")  alleging trade mark infringement and passing off arising from the use of the following mark in the UK: Disputes had arisen between the previous owners of the Beverly Hills mark and the registered proprietor of the Santa Barbara mark,  These were settled in 1997 by a co-existence agreement which was governed by California law.  Clause 7 of that agreement contained the following provision: "Any controversy, dispute or claim with regard to, arising out of, or relating to this Agreement, including but not limited to its scope or meaning, breach,...

  Jane Lambert Patents Court (Mr Justice Birss)  Regeneron Pharmaceuticals, Inc. and another v Rinat Neuroscience Corp . [2020] EWHC 3359 (Pat) (7 Dec 2020) Interest rei publicae ut sit finis litium.  This pithy maxim is usually trotted out in  res judicata  cases but it can apply equally to a claim such as this.  It might even apply to attempts to frustrate the outcome of the recent US presidential election. According to the transcript, the claimants are about to launch a treatment for osteoarthritis called fasinumab .  They were prevented from doing so by three patents, namely: EP (UK) 2,270,048 ,  EP (UK) 2,305,711 , and EP (UK) 1,871,416. . The claimants applied for revocation of those patents to clear the way for the marketing of their treatment.  Two points to note about the patents is that the second and third of those patents were divisionals of the first and that all three patents were for second medical uses of known medicament...

Author  Subhrajyoti Saha,   Licence  CC BY-SA 4.0   Source  Wikipedia   Jane Lambert  Patents Court (Mr Justice Birss) Optis Cellular Technology LLC and others v Apple Retail UK Ltd and others [2020] EWHC 3248 (Pat) (23 Nov 2020) On 23 Nov 2020 Mr Justice Birss held a hearing to decide the consequences of his judgment in  Optis Cellular Technology LLC and others v Apple Retail UK Ltd and others [2020] EWHC 2746 (Pat) (16 Oct 2020)  which I discussed in  Patents - Optis Cellular Technology LLC and others v Apple Retail UK Ltd and others   14 Nov 2020.  It will be recalled that the patent in suit was found to be valid and essential to the relevant standard, that the counterclaim for revocation failed and the claim for infringement on the basis of compliance with the standard succeeded.  The claimants were the clear winners and they were entitled to their costs. The first question for the judge was upon what basis thos...

Author Basher Eyre Licence CC BY-SA 2.0    Jane Lambert Patents Court (Mr Justice Fancourt) T eva UK Ltd v Janssen Pharmaceutica N.A . [2020] EWHC 3157 (Pat) (16 Nov 2020) This was an application by the claimant for extended disclosure of correspondence and other documents under the PD51U-Disclosure Pilot for the Business and Property Courts . An issue in an action for a declaration that a supplementary protection certificate ("SPC")  is invalid and should be revoked is whether the active ingredient of the SPC has already been protected by an earlier certificate.  The claimant has alleged that correspondence between the European Medicines Agency ("EMA") and the defendant would assist the court to determine that issue. Accordingly, the claimant applied for the following disclosure under Model C of the practice direction: "1. Correspondence and/or communications between the European Medicines Agency, EMA, and Janssen-Cilag, or any Janssen group company or agen...

                        Jane Lambert Intellectual Property Enterprise Court (David Stone)    Freddy SpA v Hugz Clothing Ltd and others [2020] EWHC 3032 (IPEC) (19 Nov 2020) This was an action for breach of a settlement agreement, patent and unregistered design right infringement and passing off. There was also a counterclaim from the defendants for revocation of the patent and unjustified threats.  The defendants instructed specialist solicitors and counsel to defend the claim until 5 June 2020. On that day the solicitors came off the record and the defendants took no further steps in the proceedings. The action and counterclaim came on for trial before Mr David Stone sitting as a deputy judge of the High Court on 5 Oct 2020.  By his judgment of 19 Nov 2020, Mr Stone struck out the counterclaim under CPR 39.3 (1) (c)  and gave judgment to the claimant on the claim (see  Freddy SpA v Hugz Clothing ...

  Jane Lambert Intellectual Property Enterprise Court (HH Judge Melissa Clarke) Communisis Plc v The TALL Group of Companies Ltd and others [2020] EWHC 3089 (IPEC) (17 Nov 2020) This was a claim for patent infringement and a counterclaim for revocation on grounds of obviousness and excluded matter. The action and counterclaim came on for trial before Judge Melissa Clarke on 14 and 15 July 2920. By her judgment of 17 Nov 2020 she found the patent to be invalid and not to have been infringed (see  Communisis Plc v The TALL Group of Companies Ltd and other s [2020] EWHC 3089 (IPEC) (17 Nov 2020). The Parties The claimant was Communisis Plc, the proprietor of UK patent no GB2512450   entitled "A method of generating a payment/credit instrument", the patent in suit.  The defendants were The TALL Group of Companies Ltd and its wholly-owned subsidiaries, Checkprint Ltd, and DLRT Limited.  Each party manufactures cheques, cheque books and cheque fraud prevention systems...

Jane Lambert   Patents Court (Mr Justice Birss) IPCom GmbH & Co Kg v HTC Europe Co Ltd and others [2020] EWHC 2941 (Pat) (4 Nov 2020) This was an application by the defendants to strike out part of the  points of claim in an inquiry as to the claimant's damages for patent infringement that had been ordered by the Chancellor, Sir Geoffrey Vos, on 17 Dec 2019. The claimant claimed millions of dollars whereas the defendants contended that it was entitled only to a small percentage of that sum. The patent in suit was EP (UK) 1 841 268   which had been declared essential to an ETSI telecommunications standard.  The claimant had given an undertaking to license the use of the patent to implementers of the standards on FRAND (fair, reasonable and non-discriminatory) terms.  The patent had been the subject of litigation for many years.  When the case came on before the Chancellor the patent had only a few more weeks to run.  The defendants withdrew t...