Showing posts from April, 2020

Indemnity Costs - DSN v Blackpool Football Club

Jane Lambert

Queen's Bench Division (Mr Justice Griffiths) DSN v Blackpool Football Club Ltd[2020] EWHC 670 (QB) (20 March 2020)

Paragraph 8 of the Practice Direction - Pre-Action Conduct and Protocols which I discussed in Practice Direction - Pre-Action Conduct and Protocols Updateon 12 Oct 2019 advises:

"Litigation should be a last resort. As part of a relevant pre-action protocol or this Practice Direction, the parties should consider whether negotiation or some other form of ADR might enable them to settle their dispute without commencing proceedings."

Paragraph 9 adds that parties should continue to consider the possibility of reaching a settlement at all times, including after proceedings have been started.  Paragraph 10 lists the types of ADR that are available to litigants such as mediation, arbitration, early neutral evaluation and ombudsman schemes. Paragraph 11 warns:

"If proceedings are issued, the parties may be required by the court to provide evidence t…

Trade Marks and Passing Off - Planetart v Photobox

Jane Lambert
Chancery Division (Daniel Alexander QC) Planetart LLC and another v Photobox Ltd and another[2020] EWHC 713 (Ch) (25 March 2020)

This was an action for trade mark infringement. passing off and invalidation of one of the defendant's trade marks. The claimants were the Delaware company, Planetart LLC, and its English subsidiary, Planetart Ltd.  Those companies offer a photo printing service called FreePrints that is best explained in the How it Works video on the home page of their website. The defendants, Photobox Ltd. and Photobox Free Prints Ltd. offer a service that is similar to the claimants'.

The first claimant has registered the following as a UK trade mark for a range of goods and services in classes 9, 16, 40 and 42 under trade mark number UK3393165 with effect from 17 April 2019:

The defendants have used the following icons on their phone apps:

They also used the following signs in their advertising and packaging:

The claimants objected primarily to the d…

Practice - Anglo Atlantic Media Ltd v Slater and Others

Jane Lambert 

Chancery Division (HH Judge Briggs) Anglo Atlantic Media Ltd v Slater and others [2020] EWHC 710 (Ch) (8 April 2020)

This was an application to strike out proceedings that had been launched by the registered proprietor of the above trade mark against the musician, Rodney Slater, and others who had played together as The Bonzo Dog Doo-Dah Band in apparent retaliation for their application in the Trade Marks Registry to cancel the registration.  The musicians' application was heard by Mr Oliver Morris on behalf of the Registrar on 5 Sept 2019 who delivered his decision declaring the registration invalid on 30 Oct 2019 (see Re Bonzo Dog Doo-Dah Band, Spear and others v Anglo Atlantic Media Ltd, O/664/19 30 Oct 2019).

The former proprietor of the trade mark and the claimant in the retaliatory proceedings was a private company incorporated with limited liability in England and Wales in the name of Anglo Atlantic Media Ltd. Until recently one of its directors was one Robert…

Trade Mark Infringement and Passing off - Natural Instinct Ltd v Natures Menu Ltd.

Jane Lambert

Intellectual Property Enterprise Court (Mr David Stone) Natural Instinct Ltd v Natures Menu Ltd [2020] EWHC 617 (IPEC) (20 March 2020)

This was an action for trade mark infringement and passing off between two medium-sized enterprises.     Mr David Stone sitting as an Enterprise Judge heard 9 witnesses on 13 and 14 Feb and delivered judgment on 20 March 2020. The costs that the losing party will be ordered to pay to the successful party will be capped at £50,000.  It is it an example of how an intellectual property dispute should be resolved.  Save that the Wood Green County Court's jurisdiction had been limited to patents snd designs when it opened, this is probably just the sort of case that Sir Derek Oulton would have had in mind when he recommended the establishment of patents country courts in 1986.

The claimant, Natural Instinct Ltd., is the registered proprietor of UK trade mark number UK00002626609:

The mark is registered for

"Foodstuffs for dogs and cats;…

Bayer v NHS Darlington Appeal

Jane Lambert

Court of Appeal (Lords Justice Underhill and Floyd and Lady Justice Rose) Bayer Plc and Another v NHS Darlington Clinical Commissioning Group and others[2020] EWCA Civ 449 (25 March 2020)

This was an appeal by Bayer Plc and Novartis Pharmaceuticals UK Limited against Mrs Justice Whipple's judgment in Bayer Plc v NHS Darlington Clinical Commissioning Groups and others: [2019] PTSR 922, [2018] WLR(D) 589, [2018] EWHC 2465 (Admin) which I blogged in Bayer Plc v NHS Darlington CCG and Others2 Oct 2018. In her judgment, Mrs Justice Whipple dismissed applications for judicial review by Bayer and Novartis of a decision by NHS Darlington and other Clinical Commissioning Groups in Northeast England that the NHS Trusts from which they commission services should use a drug called Avastin as the preferred treatment option for an eye disease generally referred to as wet age-related macular degeneration ("WAMD").

I set out the reason for the CCGs' decision in my case n…

Arrow Declarations - Mexichem UK Ltd v Honeywell International Inc

Jane Lambert

Court of Appeal (Lord Justices Floyd and Lewison) Mexichem UK Limited v Honeywell International Inc. [2020] EWCA Civ 473 (1 April 2020)

This was an appeal by the defendant company against Judge Hacon's refusal in Mexichem UK Ltd v Honeywell International Inc, 2019 WL 06877912 (2019) to strike out, or grant summary judgment in respect of, the claimant's application for an Arrow declaration. In Missed! Arrow Declarations - Pfizer v Hoffmann La Roche 5 Aug 2019 I described an "Arrow declaration" as "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." They take their name from the judgment in Arrow Generics Ltd and another v Merck & Co, Inc [2008] Bus LR 487, [2007] FSR 39, [2007] EWHC 1900 (Pat) but they derive from the much older "squeeze" case of Gillette Safety Razor Co v Anglo-American Trading Co Ltd. (1913) 30 RPC 465.

The order that th…

Supplementary Protection Certificates - the Genentech Appeals

Jane Lambert

Court of Appeal (Lord Justices Floyd and Arnold and Lady Justice Nichola Davies) Genentech Inc v Comptroller and Master Data Center v Comptroller[2020] EWCA Civ 475 (31 March 2020)

These were appeals from the decision of Mr Recorder Campbell QC in Master Data Center, Inc v Comptroller [2020] EWHC 572 (Pat) (11 March 2020) which I blogged in Supplementary Protection Certificates - Master Data Center, Inc v The Comptrolleron18 March 2020.  The cases are remarkable for the speed with which they progressed from the hearing officer to the Court of Appeal.  They were before Mr  Micklewright on 21 Feb 2020 (see Re Genentech, Inc. and Master Data Center, Inc. BL O/111/20 21 Feb 2020), Mr Campbell on 4 March 2020 and the Court of Appeal on 26 of that month (Genentech Inc v Comptroller and Master Data Center v Comptroller [2020] EWCA Civ 475 (31 March 2020).   The cases are also remarkable for being heard entirely online in accordance with Practice Direction 51Y with a media repres…

Passing off and Copyright Infringement - Shua Ltd. v Camp and Furnace Ltd.

Standard YouTube Licence

Jane Lambert

Chancery Division  (HH Judge Halliwell) Shua Ltd v Camp and Furnace Ltd [2020] EWHC 687 (Ch) (24 March 2020)

This was a trial of preliminary issues in a passing off and copyright infringement action that had been brought by Shua Limited ("Shua") against one of its shareholders, Camp and Furnace Ltd. ("Camp") and unfair prejudice proceedings that Camp has launched against Shua, its director and shareholder Joshua Burke ("Mr Burke") and his fellow shareholder Jonathan Lacey ("Mr Lacey").

The Passing off Claim
Shua offers an entertainment called Bongo's Bingo,  That appears from the above promotional video to be a combination of bingo and disco.  "Bingo" is described by Wikipedia as "a game of probability in which players mark off numbers on cards as the numbers are drawn randomly by a caller, the winner being the first person to mark off all their numbers."  Having played the game once las…