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Showing posts from 2020

Trade Marks - Sky v SkyKick: The Order

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Jane Lambert

Chancery Division (Lord Justice Arnold) Sky Ltd and others v Skykick UK Ltd and another [2020] EWHC 1735 (Ch) (2 July 2020)
On 9 May 2020, I wrote in Trade marks - Sky v Skykick, The Final Chapter:
"Thus endeth a lawsuit that required three hearings before Lord Justice Arnold as he now is, one to the Court of Appeal and another to the CJEU. Sky scraped home on electronic mail services but not much else. The Sky companies lost their passing off claim and part of their goods and services specification. The excursion to Luxembourg did result in a ruling that lack of clarity and precision is not fatal to a trade mark registration and that bad faith in applying for registration of some goods and services does not vitiate the whole mark."

Only the litigation didn't end.  There was a further hearing before Lord Justice Arnold on 2 July 2020 to argue the terms of the final order (see Sky Ltd and others v Skykick UK Ltd and another [2020] EWHC 1735 (Ch) (2 July 2020))…

Security for Costs - International Pipeline Products Ltd v IK UK Ltd. and others

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Jane Lambert

Chancery Division (Me David Stone) International Pipeline Products Ltd v IK UK Ltd and others [2020] EWHC 1602 (Ch) (24 June 2020)

This was an application by several defendants to a claim for breach of contract, conspiracy, breach of confidence and patent, copyright and unregistered design right infringement for security for costs.  It was heard by Mr David Stone sitting as a deputy judge of the High Court on 1 May 2020. He gave an extemporary judgment on the day of the hearing and delivered detailed reasons on 24 June 2020.

CPR 25.12 (1) provides:

"A defendant to any claim may apply under this Section of this Part for security for his costs of the proceedings."

The costs of civil litigation in the UK can be eye-watering.  It is bad enough to be sued in this country in the first place.  What makes it worse is being unable to recover those costs from an unsuccessful claimant.  To prevent that from happening the court has power under CPR Part 25 to stay an action un…

Contempt of Court - Centek Holdings v Giles

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Jane Lambert

Chancery Division (Mr Justice Marcus Smith) Centek Holdings Ltd and others  v Giles [2020] EWHC 1682 (Ch) (26 June 2020)

The shillelaghs shown above are known as tipstaves. They were used by officers of the Crown to compel obedience.  In time the officer who carried one of these weapons was known as "the tipstaff". One of the duties of the tipstaff is to conduct an individual who breaches an undertaking or injunction into custody. Ultimately, that is how courts in this and other common law countries ensure compliance with their orders.   Civil law countries enforce court orders in a different way.  The court imposes a daily penalty for non-compliance known as an astreinte when it makes its order.  Instead of lengthy, risky and expensive committal proceedings, a simple arithmetic calculation is made and the astreinte is recovered in the same way as damages. I have never met a continental lawyer who has seen any advantage in committal over the astreinte. 

A case th…

Practice - Thomas v Luv One Luv All Promotions

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Jane Lambert

Intellectual Property Enterprise Court (Judge Melissa Clarke) Thomas v Luv One Luv All Promotions Ltd and another [2020] EWHC 1565 (IPEC) (17 June 2020)

This was an application to strike out part of the defence to the claimant's action for passing off and transfer or cancellation of the second defendant's trade mark registration on grounds of cause of action estoppel, issue estoppel, the principle in Henderson v Henderson, and abuse of process or, alternatively, summary judgment under Part 24 of the Civil Procedure Rules.  The application was issued on 28 Feb 2010 which was a few days before the case management conference of 6 March 2020 at which several issues were ordered to be tried.  The application came on before Her Honour Judge Melissa Clarke who considered it on paper at the parties' request.

The Facts
Between 1986 and 2016 the claimant and the second defendant had been members of a band called LOVE INJECTION or LUV INJECTION. In 2016 the band broke up.…

Patents - The Supreme Court's Judgment in Regeneron Pharmaceuticals Inc v Kymab Ltd

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Jane Lambert
Supreme Court (Lords Reed, Hodge, Briggs and Sales and Lady Black) Regeneron Pharmaceuticals Inc v Kymab Ltd[2020] UKSC 27 (24 June 2020)

This was an appeal from the Court of Appeal's judgment in Regeneron Pharmaceuticals, Inc v Kymab Ltd and another [2018] EWCA Civ 671 (28 March 2018).  The Supreme Court reversed the judgment of the Court of Appeal to allow the appeal of  Regereron Pharmaceuticals Inc, ("Regeneron") against the judgment of Mr Justice Henry Carr in Regeneron Pharmaceuticals Inc v Kymab Ltd and another [2016] EWHC 87 (Pat) (1 Feb 2016).  Mr Justice Henry Carr had dismissed Regeneron's action for infringement of European Patent (UK) No. 1 360 287 ("the 287 Patent") and European Patent (UK) No. 2 264 163 ("the 163 Patent") and allowed a counterclaim by Kymab Ltd ("Kymab") for revocation of those patents.
The Invention A press summary and video issued by the Supreme Court described the invention for which the 287 …

Interim Injunctions: the Appeal in Neurim Pharmaceuticals v Mylan

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Jane Lambert

Court of Appeal (Lords Justices Floyd, Males and Arnold) Neurim Pharmaceuticals (1991) Ltd and another v Generics UK Ltd (t/a Mylan) and another [2020] EWCA Civ 793 (24 June 2020)

This was an appeal by the claimants, Neurim Pharmaceuticals (1991) Ltd ("Neurim") and its exclusive licensee Flynn Pharma Ltd ("Flynn"), against Mr Justice Marcus Smith's refusal in Neurim Pharmaceuticals (1991) Ltd and another v Generics UK Ltd (t/a Mylan) and another [2020] EWHC 1362 (Pat) (3 June 2020) to restrain the defendants, Generics UK Ltd and Mylan Healthcare Ltd ("Mylan"),  from launching a generic competitor to the claimants' drug Circadin until after the trial of the claimants' action for infringement of Neurim's European patent (UK) 1,441,702. I discussed Mr Justice Marcus Smith's judgment in Patents - Neurim Pharmaceuticals v Mylanon4 June 2020.
The claimant appealed and Lords Justices Floyd, Males and Arnold heard the appeal on an …

Practice - Injunctions pending Appeal Evalve Inc v Edwards Lifesciences Ltd

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Jane Lambert

Patents Court (Mr Justice Birss) Evalve Inc and others v Edwards Lifesciences Ltd [2020] EWHC 1524 (Pat) (18 June 2020)

In Evalve Inc and others v Edwards Lifesciences Ltd #1 [2020] EWHC 514 (Pat) (12 March 2020)). Mr Justce Birss held that two patents that protected the market for a device known as the MitraClip were valid and infringed.   In Evalve Inc and others v Edwards Lifesciences Ltd (#2) [2020] EWHC 513 (Pat) (12 March 2020) Mr Justice Birss rejected the defendant's contention that it should be allowed to market its product notwithstanding the judgment on the ground that some patients were assisted by a product that competed with the MitraClip but not by the MitraClip itself. I blogged about those cases in  Patents - Evalve Inc. and Others v Edwards Lifesciences Ltd. #127 March 2020 NIPC Law and Patents - Evalve Inc. and Others v Edwards Lifesciences Ltd. #230 March 2020.

The claimants sought a perpetual injunctions and their costs.  The defendants applied for…

Damages Awards in the IPEC Small Claims Track

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Jane Lambert

On 16 June 2020 the Intellectual Property Office updated its Guidance on IP crime and enforcement for business.  Most of the Guidance in three attachments:
IP crime and enforcement for businessesThe UK UP Crime Group, and Record of damages awarded in IPEC SCT cases 1 April 2018 - 31 March 2019 "IPEC SCT" stands for "Intellectual Property Enterprise Court Small Claims Track. This is a tribunal for IP claims under £10,000 other than those involving patents, registered and registered Community designs, plant varieties and semiconductor topographies.   I have discussed this jurisdiction in Small IP Claimsand the articles linked to that page.
The IP crime and enforcement for businesses attachment contains two videos.  One is entitled IP Rights Infringement Overview and the other is How do I avoid infringing IP rights at work?   There are summaries of the law on copyright, patent, design and trade mark infringement, advice on what to do if accused of IP infringeme…

An English Language Common Law Court in Kazakhstan

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Jane Lambert

Immediately to the west of China, the Republic of Kazakhstan straddles Europe and Asia. It was therefore logical for the President of China to announce the project now known as the Belt Road Initiative ("QBRI") to build new road, rail, power and telecommunications links between China and Europe on a visit to that country in 2013 (see President Xi Jinping delivers speech at Nazarbayev University9 Sept 2013 YouTube).

The construction and maintenance of those transport and communications links across Kazakhstan will require enormous investment from China and other countries.  It is likely that disputes will arise from time to time and a forum will be required for their resolution. The Supreme People's Court of China offers The China International Commercial Court at X'ian and Shenzhen but the proceedings are in Chinese before Chinese judges and are determined in accordance with Chinese law.  Not every foreign investor, contractor or service provider will be…