NIPC Law

S.1 (1) of the Trade Marks Act 1994 , which implements art 2 of Directive 2008/95/EC of the European Parliament and the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, defines a trade mark as "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."  If you are new to trade mark law or wish to be refreshed on the basics take a decko at "Introduction to Trade Marks"  in our IP South East blog of 9 Oct 2013. As I mentioned in "The Colour Purple - Société Des Produits Nestlé S.A. v Cadbury UK Ltd ."  4 Oct 2013 the above words have been considered by the Court of Justice of the European Union in  Case C-104/01, Libertel Groep BV and Benelux-Merkenbureau [2004] Ch 83, [2004] 2 WLR 1081, [2003] EUECJ C-104/01, Case C-273/00 Sieckmann v. Deutsche Patent –und Markenamnt [2002] E...

"The Color Purple" is a novel by Alice Walker  which won its author the Pulitzer Prize for Fiction  in 1983. if you have not read the book here is Wikipedia's summary of the plot .  It is a great book with a great story. The colour purple (or rather pantone 2685C) is only slightly less gripping. It is the subject of a tussle between two of the world's largest confectionery companies the latest stage of which has just ended in the Court of Appeal (   Société Des Produits Nestlé S.A. v Cadbury UK Ltd .  [2013] EWCA Civ 1174 (4 Oct 2013)). It started on 15 Oct 2004 when Cadbury Limited ( “Cadbury” ) applied to register "the colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods" as a trade mark for the following goods: " Class 30 : Chocolate in bar and tablet form, chocolate confect...

Topshop, Oxford Circus   Source Wikipedia Mr. Justice Birss summarized the issues in  Fenty and Others v Arcadia Group Brands Ltd (t/a Topshop) and Another  [2013] EWHC 2310 (Ch), [2013] WLR(D) 310 admirably in paragraph [1] of his judgment in that case: "Topshop is a well known fashion retailer. Rihanna is a famous pop star. In March 2012 Topshop started selling a t-shirt with an image of Rihanna on it. The image was a photograph taken by an independent photographer. Topshop had a licence from the photographer but no licence from Rihanna. Rihanna contends that the sale of this t-shirt without her permission infringes her rights. Topshop does not agree. This action is the result." In the next paragraph his lordship stressed that this case was not concerned with so called "image rights": "Whatever may be the position elsewhere in the world, and how ever much various celebrities may wish there were, the...

When I was called to the Bar in 1977 I spent a lot of time studying the Community Patent Convention which of 1975 because I really thought I would need to know about it. Hélas le temps perdu!. I would have spent the time no less profitably in the Seven Stars.  Forty years on, as they sing at Harrow, there are signs that something close to the original concept of the Community patent is about to become a reality. On 17 Dec 2012 the Council of Europe and the European Parliament adopted two short regulations: Regulation (EU) No 1257/2012 of the European Parliament and the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection ; and Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements . These regulations do not establish a Community or EU patent as ...

In Novopharm Ltd v. Eli Lilly & Co 2010 FC 915 Mr. Justice Barnes of the Federal Court of Canada declared that Canadian patent no. 2,209,735 for the second medical use of the drug atomoxetine to treat attention deficit hyperactivity disorder in adults was invalid for inutility. His judgment was upheld by the Federal Court of Appeal in Eli Lilly & Co. v. Teva Canada Ltd 2011 FCA 220. Eli Lilly & Co. applied for leave to appeal to the Canadian Supreme Court but that was refused on 8 Dec 2012. Similarly, in Eli Lilly Canada Inc. and Others v Novopharm Ltd 2011 FC 1288 Mr. Justice O'Reilly threw out Eli Lilly's claim against Novopharm for infringement of its Canadian patent no. 2,041,113 for olanzapine on the ground of invalidity. Again, Eli Lilly appealed but the Federal Court of Appeal upheld the court below in Eli Lilly Canada Inc v Novopharm Limited, 2012 FCA 232. Again, Eli Lilly sought leave to appeal to the Supreme Court and, again, it was refused. E...

Prof. Tanya Aplin I have been a fan of Professor Tanya Aplin  for some time, originally because of her transformation of Gurry on Breach of Confidence  and more recently because of her part in the Submission to the UK IPO on the issue of criminal sanctions for the deliberate copying of designs  by Sir Robin Jacob and the Professors of IP law at the Universities of Oxford, Cambridge, Glasgow, Edinburgh and Bournemouth. Like Francis Gurry , the Director-General of the WIPO, she is an Australian which is almost a qualification in itself as the courts of that island continent are a laboratory for the development of the common law positively fizzing with bright ideas some good and others not so good. Professor Aplin was guest of honour at the Intellectual Property Bar Association garden party on Monday which I attended with Robert Griffiths QC , the IPBA's latest recruit, and our pupil Nicola Strachan . Before we could taste our pudding metaphorically speak...

Early international between England and Scotland   Source Wikipedia In  The Football Association Premier League Ltd v British Sky Broadcasting Ltd and Others [2013] EWHC 2058 (Ch) (16 July 2013) Mr. Justice Arnold granted an injunction under s.97A of the Copyright, Designs and Patents Act 1988 against the top 6 internet service providers in the UK to block access to the First Row Sports website. As the judge had already made similar orders against the same defendants in Newzbin2 (see "Injunctions against ISPs" 6 Nov 26), Dramatico ( "Injunctions against ISPs Part III: Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd. and Others" ) and EMI ( "Injunctions against ISPs Part V: EMI Records Ltd and Others v British Sky Broadcasting Ltd and Others"  5 March 2013) they did not defend the application but instead agreed the terms of the order with the Premier League. However, as the judge acknowledged at paragraph [7] ...

"In this case", began Lord Sumption in Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46 (3 July 2013).  "Virgin Atlantic Airways Ltd wishes to recover damages exceeding £49,000,000 for the infringement of a European Patent which does not exist in the form said to have been infringed. The Technical Board of Appeal ( "TBA" ) of the European Patent Office ( "EPO" ) has retrospectively amended it so as to remove with effect from the date of grant all the claims said to have been infringed." The reason why Virgin contended that it was nevertheless entitled to those damages is that the Court of Appeal had held that those same claims were valid and had been infringed, that the questions of validity and infringement were now res judicata  and thus not capable of review and that there was authority to that effect from thee Court of Appeal in  Coflexip S.A. and another v Stolt Offshore Ms Ltd. and others [2004] EWCA Civ 213 (27 Feb 20...

In British Sky Broadcasting Group Plc and Others v Microsoft Corporation Microsoft and another   [2013] EWHC 1826 (Ch), Sky (that is to say British Sky Broadcasting Group plc, Sky IP International Limited, British Sky Broadcasting Limited and Sky International AG) sued Microsoft (Microsoft Corporation and Microsoft Luxembourg Sarl) for infringement of its British and Community trade marks and passing off while Microsoft counterclaimed for declarations of invalidity of Sky's trade marks on grounds of descriptiveness and  impermissible amendment. Sky's registrations were: 2 415 829 for the word 'SKY', for "computer software to enable searching of data; computer programs; computer software; computer software to enable connection to databases and the Internet; computer software supplied from the Internet".in class 9 and "communications by means of or aided by computers; transmission of text, messages, sound and/or pictures; computer aided transmission of ...

You might think that this would be quite different from that but if you did you'd be wrong.  The decision of Mr Justice Birss (as he now is) in  Lizzanno Partitions (UK) Ltd v Interiors Manufacturing Ltd [2013] EWPCC 12 (11 April 2013) is an object lesson in claim construction. It is also a text book example of the application of the law on novelty, obviousness, insufficiency, added value and infringement which is why I am going to dissect it at some length now and perhaps use it as a case study in my "Introduction to Intellectual Property" talk on the 26 June 2013. The Issues This was a claim by Lizzanno Partitions (UK) Ltd . ( "Lizzanno" )   for a declaration that the product identified in the first diagram did not infringe British patent number  GB 2 432 617  for a gasket ( "the patent" ) and revocation of the patent.    The patentee (whom the judge referred to as "Komfort" ) counterclaimed for injunctive and other re...