NIPC Law

Massey (Child) v Dinamo Productions Ltd [2012] EWPCC 27 (13 June 2012) was an unusual case in that  the claimant was a minor when the claim began. He claimed £2 million for copyright infringement and appears to have acted for himself throughout the proceedings.  The claimant's complaint was that defendant television production company had appropriated his idea for a children's TV show to be called "The Wordles" which he offered to the BBC in July 2010. The defendant also developed a script for an episode of a children's TV show that was to be called "The Wordles" but that took place in 2009.  There was no direct contact between the parties until just before the claimant brought his action.  Their only point of contact was through a third party called Kavaleer. The defendant applied to strike out the claim on the grounds that  "it is without foundation and there is no real prospect of the case succeeding."  Mr. Recorder Campbell consider...

In   " Educating Samuel: No. 1 Added Matter "  4 Nov 2008 IP Northwest, I explained what is meant by "added matter." There are not many cases on added matter.   One such was   Smith & Nephew Plc v Convatec Technologies Inc .  [2012] EWHC 1602 (Pat). The Context This was an application by Smith & Nephew to revoke Convatec's  European Patent (UK) No. 1,343,510 entitled "Light Stabilized Antimicrobial Materials" on various grounds. In the course of the proceedings Convatec conceded that the patent was invalid and applied to amend.  Smith & Nephew objected to the amendments on the ground that they constituted added matter contrary to s.76 (3) of the Patents Act 1977 . They also argued obviousness and insufficiency. The Section S.76 of the Act provides as follows: " Amendment of applications and patents not to include added matter 76.-(1) An application for a patent which - (a) is made in respect of matter disclosed in an earlier ap...

S.13 of the Patents Act 2004 inserted two new sections into the Patents Act 1977 . S.74A provides as follows: " 74 A Opinions as to validity or infringement (1) The proprietor of a patent or any other person may request the comptroller to issue an opinion— (a) as to whether a particular act constitutes, or (if done) would constitute, an infringement of the patent; (b) as to whether, or to what extent, the invention in question is not patentable because the condition in section 1(1)(a) or (b) above is not satisfied. (2) Subsection (1) above applies even if the patent has expired or has been surrendered. (3) The comptroller shall issue an opinion if requested to do so under subsection (1) above, but shall not do so— (a) in such circumstances as may be prescribed, or (b) if for any reason he considers it inappropriate in all the circumstances to do so. (4) An opinion under this section shall not be binding for any purposes. (5) An opinion under this section shall be prepared by ...

One the most surprising and in many ways depressing passages of the IPO's publication "From ideas to growth: Helping SMEs get value from their intellectual property" (April 2012) is the statement on page 17 that only 13 mediations have been conducted by the IPO in the past 5 years, and just one in the past year.  Because the usage is so low the IPO is thinking of discontinuing the service altogether unless it can be adapted.   The IPO has requested feedback on perceived awareness levels and how, if the service does continue, the IPO might increase its visibility. The IPO's mediation service is extraordinarily good value.   A full day mediation in Newport facilitated by a CEDR (Centre for Effective Dispute Resolution)  trained mediator with specialist knowledge and experience of intellectual property including accommodation costs £750.  The same mediator will come to the IPO's London premises for just another £250.   So why ...

In Case T-336/08 Chocoladefabriken Lindt & Sprüngli v OHIM (shape of a chocolate rabbit with a red ribbon)  [2010]  EUECJ T-336/08, the General Court  dismissed Lindt & Sprunglli's action for annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 11 June 2008 (Case R 1332/2005-4) concerning its application for registration of a three-dimensional mark comprising the shape of a chocolate rabbit with a red ribbon as a Community trade mark on the ground that the applications are devoid of distinctive character within the meaning of art 7 (1) (b) of the Community trade mark regulation (Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark). The manufacturer appealed against that decision to the Court of Justice of the European Union essentially on the ground that there was no evidence for the conclusion that the "t...

The most remarkable aspect of Unilever Plc v S C Johnson & Son Inc [2012] EWPCC 19 (25 May 2012) is that this action took place in the Patents County Court rather than the Patents Court or before the Comptroller.  As the Patents County Court Guide notes at paragraph 1.3 "the Patents County Court was established to handle the smaller, shorter, less complex, less important, lower value actions and the procedures applicable in the court are designed particularly for cases of that kind. The court aims to provide cheaper, speedier and more informal procedures to ensure that small and medium sized enterprises, and private individuals, are not deterred from innovation by the potential cost of litigation to safeguard their rights." Judge Birss QC remarked at paragraph [4] of his judgment: "One might ask whether a case between two multinational corporations is suitable for the PCC. Since neither side suggested the matter should be transferred, the question did not arise. I c...

In  Stannard v Reay [1967] RPC 589, and Stacey v 2020 Communications [1991] FSR 49.it had been established that even very modest goodwill can support an action for passing off.  Just how modest such goodwill can be was tested in  Lumos Skincare Ltd v Sweet Squared Ltd and Others [2012] EWPCC 22 (10 May 2012). This was a claim by a skincare distributor which markets a  "pure redesnsifying serum" , a "pure regenerating serum" , a  "deep exfoliating mask"  and a "pure firming serum"  under the brand names "Lumos one" to "four" to beauty salons and through its online shop  against the manufacturer and distributor of a range of nail care products.   As Mr. Recorder Campbell noted at paragraph [35] of his judgment, the women's skincare market is huge. He referred to an undated article in The Times which stated that "sales of women's facial skincare products in Britain are expected to generate about £1 billion this ...

In  Sullivan v Bristol Film Studios Ltd     [2012] EWCA Civ 570 (3 May 2012) the Court of Appeal dismissed an appeal from a strike out of a claim for copyright, moral rights and performers' rights infringement and breach of contract under CPR 3.4 by the Chancery interim applications judge sitting in Bristol. The claim was struck out as an abuse of the process of the court not because it was bound to fail, but because even if it were to succeed the costs of fighting it would be out of all proportion to the amount that the claimant was likely to recover. The claim was brought by a hip hop artist who had contracted with the defendant film company to make a video. The film was to have been a joint venture.  The claimant, Tony Sullivan (also known as Rudey Soloman ( "Mr. Soloman" ), made the soundtrack and appeared in the film.  The film company made the film in return for a share of the sales or other revenues.   After the film had been made, it was up...

In Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd and Others [2012] EWHC 268 (Ch) (20 Feb 2012) Mr. Justice Arnold concluded that both users and the operators of the Pirate Bay website infringed the copyrights of the claimants (and those they represent) in the UK. That had been the trial of preliminary issues that Mr. Justice Henderson had ordered in respect of applications by various businesses in the music industry for injunctions requiring the defendant internet service providers to block access to The Pirate Bay under s.97A of the Copyright Designs and Patents Act 1988 .   I wrote about the case in  "Injunctions against ISPs Part III: Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd. and Others " (21 Feb 2012). In  Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd and Others  (No. 2) [2012] EWHC 1152 (Ch) (02 May 2012) the judge granted the blocking order. Analysing s.97A the judge directed...

In Force India Formula One Team Ltd v 1 Malaysia Racing Team SDN BHD and Others     [2012] EWHC 616 (Ch) (21 March 2012), Force India sued   Aerolab and Fondmetal Technologies which had previously carried out wind tunnel tests and aerodynamic development work for Force India for breach of confidence.  Force India's allegation was that those companies had used information gained from such testing and development to help design a car for the first defendant,1 Malaysia and its British subsidiary.   Also sued was the former Chief Technical Officer of Force India who left to join 1 Malaysia.   There was also a counterclaim by Fondmetal for 846,230 euro for unpaid fees.Unusually for the Chancery Division, the master had directed the questions of liability and quantum of damages to be determined at the same hearing.  Force India had originally claimed damages of £15, 255,583 which claim was later reduced to £13, 771, 419. The Issues Ae...

We have all given a warm welcome to the small intellectual property claims track but, as I warned in "The New Small IP Claims Jurisdiction" on 5 March 2012, there are likely to be a lot of claims against little people in the new tribunal.  I mentioned claims by photo libraries in my article but there may well be a torrent  (apologies for the pun) of claims against file sharers too. An indication that could happen is  Golden Eye (International) Ltd and Others v Telefonica UK Ltd [2012] EWHC 723 (Ch) (26 March 2012). Importance of the Case This was a claim by Golden Eye (International) Ltd. and 13 other claimants against O2   (the trading name of Telefonica UK Ltd) for Norwich Pharmacal orders. These are orders requiring a person who is not himself a wrongdoer but who has documents or information identifying wrongdoers to make that information available to an injured party.   The jurisdiction takes its name from the appeal in  Norwich Pharmacal...