NIPC Law

My case note on the Information Tribunal's decision of 15 May 2006 in Scottish National Party v The Information Commissioner is the first update to my IP/IT-Update website since 3 May 2006 and indeed my first entirely new contribution to that site for yonks. The case is interesting and important for several reasons which I set out in the note. It may well have an impact far beyond our shores and indeed far beyond its subject matter. Readers who are not au fait with English (or Scottish or Northern Irish) data protection law may be interested to know that we have had data protection legislation in this country since 1984. We were by no means the first country to have such legislation. Sweden has had a Data Protection Act since 1973 and Austria since 1978. One of the reasons why Parliament enacted data protection legislation here was an early decision of the Swedish Data Inspection Board which prevented the Swedish subsidiary of a German multinational from transmitting data on i...

A post from my public access blog "nipc invention" which may interest some of you is a seminar called the "Innovators Toolkit " which will take place at Lancaster University's InfoLab21 on 3 August 2006 between 09:15 and 12:30. I am giving one of the talks but the main speaker will be Dr Ron Jones who has 25 years practcial experience as an inventor and innovator. This will be one of the first initiatives in the UK of ip.com , a US company that offers a variety of services to inventors, innovators, entrepreneurs and other creative people. Further information on the UK services are available from the UK page of the ip.com website.

This is an interesting example of how the courts can still be useful in a domain name dispute. The claimants included the Ritz Hotel , The Ritz Club , and the Ritz Club London Online. As one might imagine, they had registered a number of national and Community trade marks that included the word RITZ in class 21 including UK registered trade mark no. 1509163 for RITZ for "gaming services" and CTM no. 1703974 for RITZ for the "provision of gaming services accessed via local and world-wide computer networks". The defendants were had registered the domain name which was the URL for a website called RoyalPlaza.Net which contained information about gaming with links to third party sites such as Pacific Poker, Party Poker and Poker Room. The claimants complained of trade mark infringement to which complaint the defendants responded by registering 5 more sites containing the letters RITZ, namely , , , and . The claimants sued for infringement of their trade marks under s....

This is the latest episode in a marathon case that has already made a lot of interesting law. The claimant company, Ultraframe (UK) Ltd ( "Ultraframe" ) ., designs and makes modular conservatory roofing systems. One of its products, the Ultralite 500 , is partly protected by UK patent no GB2300012 and partly by unregistered design right. The defendant, Eurocell Building Plastics Ltd. ( "Eurocell" ), makes and sells window and door systems, conservatory roof systems, PVCU profiles and rooflines. Until 2002 Eurocell distributed Ultraframe's Ultralite 500 system. In that year it started to make and sell its own system known as the " Pinnacle 500". Ultraframe alleged that the "Pinnacle 500" infringed its patent and design rights and sued Eurocell for the infringement of those design rights. Mr Justice Lewison held in Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd and another [2004] 1785 EWHC (Ch) (22 July 2004) that the design ri...

In Bolkiah v. KPMG [1998] UKHL 52, [1999] 2 AC 222, [1999] 1 All ER 517, [1999] 2 WLR 215 (16 Dec, 1998) the House of Lords considered for the first time some of the problems of confidentiality and conflict that have arisen with the development of multinational, multi-service professional firms. The question in that case was whether, and, if so how far, a firm of accountants that had acted in one capacity for one party to a law suit could properly act for that party's opponents in another. There was never any question of impropriety. The professionals involved were not part of the same team. Steps were taken to minimize the already small risk of misuse of confidential information, But despite all those measures, the House were not satisfied that the accountants had discharged the burden of showing that there was no risk of confidential information in their possession that they had obtained in the course of a former client relationship unwittingly or inadvertently coming to the no...

This case was about the exercise of the judicial discretion to grant summary judgment under CPR Part 24 . One of the principal changes brought about by the replacement of the Orders of the Supreme Court by the Civil Procedure Rules ( "CPR" ) was the substitution of what we used to call the Saudi Eagle test for "triable issue" test for summary judgment. The Saudi Eagle case (Alpine Bulk Transport Co Inc v Saudi Eagle Shipping Co Inc (1986) 2 Lloyd’s Report 221) was an application to set aside judgment under RSC O13 r 9. The rule enabled the court to set aside or vary any judgment entered on such terms as it thought just. One of the advantages of the old rules was that a simple statement of principle could spawn a judge-made code that tended to fit just about every circumstance in the same was as a fragment of grit produces a pearl. The pearl from this particular piece of grit was that the court's discretion under O19 r 9 would be exercised in favour of a de...

Catch up time! So much has happened. Where should I start? I've just spent a really interesting two days as a sort of speaker at large at the b.TWEEN06 new media fest at the National Photographic Museum in Bradford yesterday and today. I was there to conduct one-to-one sessions on intellectual property issues. The conference was opened by David Putnam who told a parable about a boat race between GM and Toyota. Toyota won by a mile largely because their crew had 8 men rowing and only one steering in contrast to the GM team which was the other way round. The parable continued with the US team flattening their management for the next race with the effect that there was still only one oarsman. This time the Japanese won by 2 miles. GM sacked its oarsman and distributed the research and development money saved on stock options for its directors. Lord P was followed by John Sanborn, Creative Director of eBay, Inc, who could at least appreciate a good joke at his nation's expense. He ...

The interesting point about the Privy Council's judgment in Norbrook Laboratories Ltd v. Bomac Laboratories Ltd (New Zealand) [2006] UKPC 25 (4 May 2006) is that it was expressed as a decision in contract. This is a departure (at least in emphasis) from many recent decisions on confidentiality such as Campbell v MGN Ltd [2004] UKHL 22 (6 May 2004) that have treated a duty in confidence as a freestanding equitable obligation in its own right quite independent of any contractual obligation. In Norbrook , by contrast, the claim was for breach of a confidentiality agreement. Clause 3 of an agreement by which a UK manufacturer disclosed the formula and other confidential information about one of its products to its local distributor so that it could obtain permission from the licensing authority to distribute the product in Aotearoa-New Zealand required the distributor to "maintain in confidence and not use, except as contemplated herein, any information provided by NORBROOK or i...

I am glad to say that Cordelia Lean of the Bar Council will allow 2 hours and 30 minutes CPD points to any barrister who attends our seminar at BPP Law School in Leeds on 10 May 2006. IPCEX has not yet had time to apply to the Law Society, ITMA or CIPA for CPD accreditation but I think that those professions also offer ad hoc accreditation. Check the Law Society's FAQ . We are now close to bursting point. I have to decide whether or not to look for more space in another building so I really do need to know who is coming in good time.

I am very sad to learn from Pinsent Masons' website of the death of Shelagh Gaskell. I had known Shelagh for over 20 years. Although we had lost touch some years ago I will miss her greatly. I am sure I shall not be the only lawyer to do so. She was a lovely lady but a very formidable one. The first time I met her was at Leeds University shortly after she would have joined Dibb Lupton Fawcett (as DLA Piper was known at that time). I was giving a talk on protecting semiconductor chip topograpraphies which was a burning issue before the Washington Treaty. Simon Chalton, who was then senior partner of Dibbs, brought her along and I remember that she asked me some very perceptive questions. I got to know her better at the IBA conference in Buenos Aires in 1988. There were not many Brits at that conference - HMG had not yet restored diplomatic relations with Argentina - and even fewer Northerners. Apart from Simon and Shelagh the only other delegate from the North was Dan - now Lord - B...

Free Seminar: BPP Law School, Leeds Wednesday, 10 May 2006 14:00 - 17:00 On 3 April 2006 the UK Patent Office announced a new mediation service for the resolution of intellectual property disputes. That announcement followed hard on the implementation of s.74A and s.74B of the Patents Act 1977 providing for advisory opinions on the validity and infringement of patents. These initiatives indicate determination on the part of HM government that to do something about the scandal that England and Wales is one of most expensive places in the developed world to enforce intellectual property rights . This scandal is one of the reasons why the UK trails not just the USA, Japan, Germany and France in the number of European patent applications every year but even the Netherlands. Things are about to change and if you want to learn about these changes the best opportunity is to attend a free IPCEX s eminar at BPP Law School, 2 Whitehall Quays, Leeds LS1 4HG on Wednesday 10 May 2006 at 14:0...

The European Court of Justice has just held that in determining the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, a court must take into account the perception of the public at the time when the allegedly infringing sign began to be used rather than rather than the time the registered mark first began to be used. This was a reference under art 234 of the Treaty of Rome from the Belgian Cour de Cassation in a trade mark infringement case originally launched by Levi Strauss & Co. against Casucci SpA in the Brussels Commercial Court. The battle was over stitching on the rear pocket of a pair of jeans. The claimant had registered what it called the "seagull" design resembling a lance-corporal stripe's in the British army in Benelux in respect of clothes within class 25 in 1980. Some years later, the defendant marketed jeans with a stitching device on the back pocket which looked rather more like one of th...

Yesterday, I mentioned the Hon Mr Justice Peter Smith's secret code ( Copyright - The Da Vinci Code: ho ho! 27 Apr 2006). Well now we have the decryption - "Judge's own Da Vinci code cracked" (BBC 28 Apr 2006). His message in "Smithy code" reads "Smithy Code Jackie Fisher who are you Dreadnought." So desu . I reported yesterday that his lordship remarked that he didn't see why a judgment should not be a matter of fun. Quite so, especially after detailed assessment. But another quotation occurs to me, this time from A P Herbert: "People must not do things for fun. We are not here for fun. There is no reference to fun in any act of Parliament." On quite a different point I knew the judge when he was at the Manchester bar and even appeared against him once or twice. I don't recall anybody calling him "Smithy" then. Should I ever find myself in front of him I certainly shan't start now.

The EPO has just published in this month's Official Journal an up to date list of contracting parties to every conceivable patent treaty and convention. The treaties covered include: Paris Convention Patent Co-operation Treaty Patent Law Treaty Budapest Vienna Convention on the Law of Treaties World Trade Organization European Patent Convention, Munich Act, London Agreement on art 65 et cetera. I noted two things. First, HMG is party to a relatively large number of treaties - more than the USA and many EC member states. Secondly, 16 states have now ratified Munich 2000 which means that the EPC will be amended from 31 Dec 2007 at the latest.

According to the BBC website , the Honourable Mr Justice Peter Smith has brought a touch of levity to the Da Vinci Code case - as if that case needed it (see "Copyright: "Da Vinci Code Case" - No Surprises" ). His lordship has apparently hidden his own secret code in his judgment: "Seemingly random italicised letters were included in the 71-page judgement given by Mr Justice Peter Smith, which apparently spell out a message." The learned judge is quoted as saying: "I can't discuss the judgement, but I don't see why a judgement should not be a matter of fun." Quite so! A sense of humour is a very good thing in a judge (see " Dispute Resolution: Judicial Humour from across the Pond") . A pretty good repository of it (proving that the words "American humour" are not quite an oxymoron) is "The Green Bag" . I may not agree with Mr Justice Scalia's politics but I do like his wit.

I have attempted my first animated online PowerPoint presentation. It consists of the slides and handout of a talk that I gave last week at Leeds Civic Hall on information security law. I have a full report of it in my other blog. I also intend to try some more podcasts over the May day bank holiday. Cave.

Today is world intellectual property day. According to WIPO press release 445 of 24 April 2006, member states decided to designate this day "to raise awareness of the role of intellectual property in our daily lives, and to celebrate the contribution made by innovators and artists to the development of societies across the globe." This date was chosen because it is the anniversary of the day on which the WIPO Convention came into force in 1970. WIPO and its member states have celebrated World Intellectual Property Day every year since its inception in 2001. Because of pressure of work nipc , have not done much to mark this date this year. Last year, we presented a lunch time event to launch the NCC's copyright deposit service and the year before I won a Dyson in the Ideas21 raffle at its do at the Melton Mowbray in Holborn. We shall certainly do something next year. For those who want to know what is happening today around the world there is a list of events on the WIP...

I attended a presentation by David Morgan of the Patent Office at the Leeds Hilton yesterday as part of the consultation on relative grounds of refusal . Having attended the very popular roadshow on software implemented inventions last year (which would have affected only a small number of people and in the event came to nothing) I expected an even bigger turnout as this proposal almost certainly will come to something and will affect thousands of SME in the North of England. I couldn't have been more wrong. There were 8 of us in the meeting room. That was, however, one more than they were able to muster for Birmingham on 20 April. The presentation did not add much to the materials on the Patent Office website. Mr Morgan outlined the present practice where the Patent Office does consider relative grounds and the OHIM practice which does not and set out the options. These are all on the consultation page of the Patent Office website. These are essentially variations on keeping the...

In case anybody is interested, today is St George's Day and Shakespeare's birthday. St George is the patron saint of England so today is our national day. Our national flag is St George's cross, that is to say a simple red cross on a white background which became the centre piece of our union flag (see Julian Wiseman " How to draw the Union Jack — accurately "). Australians, New Zealanders, Hawaiians and many other states and territories around the world have incorporated into their own flags. Possibly the licence fees on all those reproductions would make a good little earner for HM Treasury - if, Gordon is reading, I am sure a lot of barristers at the London patent bar would be happy to consider getting them in for you on a CFA. Anyway getting back to St George I was agreeably surprised to learn from the BBC yesterday that St George - who was part Turkish and part Palestinian - is highly regarded in the Muslim community. Apparently the day will be marked by a ...

As promised yesterday, I have just updated my Community Trade Marks page to take account of the new Community Trade Mark Regulations 2006 which come into effect on 29 April 2006. I have also updated my Geographical Indications page to take account of two new Council regulations, Council Regulation No 510/2006 and Council Regulation 509/2006 . The new Council regulations replace regulations 2081/92 and 2082/92. Their purpose is to comply with a recent WTO panel decision and introduce specific rules aimed at simplifying relevant registration procedures. An important change is that applications and objections from third countries may now be made directly to the Commission and eliminates the need for reciprocal and equivalent protection.