Showing posts from 2020

Trade Marks: Sazerac Brands, LLC and others v Liverpool Gin Distillery Ltd and others

Jane Lambert
Chancery Division (Mr Justice Fanccourt) Sazerac Brands, LLC and others v Liverpool Gin Distillery Ltd and others [2020] EWHC 2424 (Ch) (10 Sept 2020)

This was an action for the trade mark infringement and invalidation of the defendants registered mark and a counterclaim by the defendant for revocation of the claimant's marks for non-use. The action and counterclaim came on for trial before Mr Justice Fancourt on 14, 15 and 17 July 3020. The counterclaim was compromised in the course of the trial by the claimant's agreeing to the revocation of both their trade marks except for whiskey and bourbon whiskey.  There was also a claim for passing off but that was abandoned before the end of the trial.  In his judgment in Sazerac Brands, LLC and others v Liverpool Gin Distillery Ltd and others [2020] EWHC 2424 (Ch) which he delivered on 10 Sept 2020, Mr Justice Fancourt held that the claimant's trade marks had been infringed and declared the defendant's mark invali…

The Court of Appeal Revisits Search Orders - TBD (Owen Holland) Ltd v Simons and Others

Jane Lambert

Court of Appeal (Lords Justices David Richards, Newey and Arnold) TBD (Owen Holland) Ltd v Simons and others [2020] EWCA Civ 1182 (8 Sept 2020)

This was a judgment on two appeals.  The first appeal was brought by John O'Boyle ("Mr O'Boyle") against an order by His Honour Judge Keyser QC permitting TBD (Owen Holland) Ltd, ("TBD") to bring committal proceedings for contempt of court against Mr O'Boyle in TBD (Owen Holland) Ltd v Simons [2019] EWHC 2390.  The second was by TBD against Mr Justice Marcus Smith's order in TBD (Owen Holland) Ltd v Simons and others[2020] EWHC 30 (Ch) which I blogged in Search Orders - TBD (Owen Holland) Ltd v Simons and Otherson 22 Jan 2020.   Both appeals arose from the execution of an order for the search of Mr O'Boyle's home and the premises of his former company G2A Limited ("G2A") on 9 Nov 2018.

The Judgment
Lord Justice Arnold, who delivered the lead judgment in TBD (Owen Holland) Ltd v S…

Copyright - DPA (London) Ltd v D'Aguanno and Others

Jane Lambert

Intellectual Property Enterprise Court (HH Judge Melissa Clarke) DPA (London) Ltd v D'Aguanno and others [2020] EWHC 2374 (IPEC) (3 Sept 2020)

This was an action for copyright infringement and breach of contract brought by a firm of architects against two of its former architectural designers and the company that those designers had set up after they stopped working for the claimant. It is not clear when proceedings were issued but the first and second defendants left the claimant at the end of Dec 2019 and there was a case management conference before His Honour Judge Hacon on 4 March 2020.   The action was tried by Judge Melissa Clarke on 14 and 15 July 2020.  She handed down judgment on 3 Sept 2020.

While working for the claimant the defendants produced architectural plans and drawings for a number of projects.  The first defendant, Andrea D'Aguanno also produced 3-dimensional computer models and computer-generated images for those projects. It was common ground…

Patents: What exactly does a FRAND Licence look like?

A question that I have been asked more than once is "What exactly does a FRAND licence look like?" Before the Supreme Court handed down its decision on 26 Aug 2020 I could say: "Let's wait for the Supreme Court's judgment,"  The Supreme Court did not answer that question in its judgment though it has given some guidance.  I shall discuss this topic in my talk on 3 Sept 2020.  If you want to take part in the conversation, register here.

The starting point is to look at the draft agreement between (1) Unwired Planet Limited Liability Company and (2) Unwired Planet International LimitedandHuawei Technologies Co., Ltd.Huawei Technologies (UK) Co., Ltd. at the end of the judgment of Mr Justice Birss (as he then was) in Unwired Planet International Ltd v Huawei Technologies Co Ltd. and another[2017] RPC 20, [2017] EWHC 1304 (Pat). The judgment of which that draft agreement forms part has been upheld by the Supreme Court in Unwired Planet International Ltd and an…

Patents: Supreme Court upholds Court of Appeal and Sir Colin Birss on FRAND

Jane Lambert

Supreme Court (Lord Reed, Lord Hodge, Lady Black. Lord Briggs and Lord Sales) Unwired Planet International Ltd and another v Huawei Technologies (UK) Co Ltd and another [2020] UKSC 37 (26 August 2020)

This was the judgment in the conjoined appeals from the decisions of the Court of Appeal in Unwired Planet International Ltd and another v Huawei Technologies Co Ltd and another[2018] RPC 20, [2018] EWCA Civ 2344 and Huawei Technologies Co, Ltd v Conversant Wireless Licensing S.A.R.L[2019] RPC 6, [2019] EWCA Civ 38.  I have discussed the litigation in the High Court and Court of Appeal in FRAND - A Recapon8 Aug 2020 and FRANDon 8 Oct 2017.  I shall discuss the Supreme Court's judgment on FRAND in a talk over Zoom on 8 Sept 2020 at 14:00. There will be no charge for the talk but participants must register through Eventbrite in good time.

The Issues
The issues in this appeal were set out in paragraph [1] of the Court's judgment to which all justices contributed:


Joint Liability: BMW v Premier Alloy Wheels

Jane Lambert

Patents Court (Mr Recorder Campbell) Bayerische Motoren Werke AG v Premier Alloy Wheels (UK) Ltd and others [2020] EWHC 2094 (Pat) (30 July 2020)

This was an action by the motor manufacturer. Bayerische Motoren Werke AG ("BMW) for trade mark and registered Community design ("RCD") infringement, passing off and, in the case of one the defendants, Devon Thompson ("Devon"), breach of contract.  There was also a counterclaim for revocation of the RCD.  The main defendant was a company called DGT Wheels and Tyres Ltd ("DGT") the ordinary shares of which were owned by  Jerome Layzell ("JL") who was also its only director.   DGT had a warehouse on an industrial estate in Basildon as well as retail premises elsewhere in that town.   The warehouse was operated by another company called Premier Alloy Wheels (UK) Ltd ("Premier") which was owned and run by JL's stepfather, Devon. Devon was in prison when the trial took place. …