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Dear IP Practitioner,
I should like to share some of my recent articles and case notes on intellectual property and technology law in case one or more of the the issues that I have discussed arises in your practice.
I appreciate that you may not want to read this email all at once. However, you may want to keep it or forward it to a client or colleague since the text links to the articles and cases discussed and each of those articles is linked to the relevant transcript, legislation or other material.
Patents
EU Patent
"The irrepressible EU Commission, fresh from its resounding defeat before the CJEU, hopes to see the first Community Patents granted in 2013 (yes, 2013)"
Richard adds: "If that happens then a Community Patent Court (of some sort) cannot be far behind."
CasesI have discussed three cases this year: The practice of re-bottling has also given rise to a trade mark and passing off case which I mention in the trade marks section below.
Foreign Patent LawIn Guernsey's Patent Law I discussed Guernsey's fascinating Registered Patents and Biotechnological Inventions (Bailiwick of Guernsey) Ordinance 2009. Even though it has no patent office of its own Guernsey recognizes and reissues the patents of other countries. Obviously its legislators see an advantage in doing that. In my article I speculate what that advantage can be.
Trade Marks
Prince Ernst August of Hanover & Brunswick etc v OHIMThis is my favourite case this year. It was a challenge by the heir of the House of Hanover to OHIM's refusal to register a sign that looks very much like our royal coat of arms: Familiar huh? Take a look at my note on the case.
Re-Bottling.png "1712(image1)")
I have already mentioned re-bottling in the context of patents in Schutz v Werit.
The photo to the right shows what the fuss was about. It is a picture of an intermediate bulk carrier - essentially an outsize plastic bottle in a metal frame. Firms like Werit and Delta substituted one of their bottles for Schutz's. As I have already said, Schutz sued Werit for patent infringement. It sued Delta for trade mark infringement and passing off.
Other Cases
In 32Red because Mr. Justice Henderson expounded conveniently the test for infringement under art 9 (1) (b) of the Community trade mark regulation and s.10 (2) of the Trade Marks Act 1994. Judge Birss QC referred to the same authorities in Westwood.
As trade mark issues were secondary in Edge, I have discussed that case more fully in the copyright section of this email.
Copyright
Media CAT The year started off with claims by Media CAT Ltd. for injunctions and damages for failure to secure an internet connection (see my case note on Media CAT Ltd, v A and others of 12 Dec 2010). As the judge had noted a recent judgment of the German Federal Court that seemed to impose a duty to secure an internet connection, the litigation could have raised some interesting points of law. As it was, the claimant tried to discontinue its action and the subsequent hearings turned on procedural and costs issues.
The Edge This action arose out of the breakdown of a compromise to settle litigation that the defendant had brought against the claimant as long ago as 1993. There were several causes of action: - breach of contract
- copyright infringement
- passing off, and
- revocation of a trade mark for non-use.
Possibly the most interesting aspect of the case was the discussion on whether the compromise had been repudiated, if it had been repudiated whether the repudiation had been accepted and the effect of such repudiation on the available damages.
Other Cases I referred briefly to Judge Fysh QC's decision in Deakin and Others v Card Rax Ltd. and others in Why we needed to reform the Patents County Court. The case raised one important point of law, namely whether the breach of a licence agreement gives right to a claim in debt or a claim for infringement of damage.
Designs
Albert Packaging v Nampak Cartons The only designs case I have discussed this year has been Albert Packaging Ltd and Others v Nampak Cartons & Healthcare Ltd. This is an important case because it shows the limitations of design right. The case revolved on whether the claim fell within the "method of principle of construction" exception. It seemed to introduce an idea/expression dichotomy into design right reminiscent of US copyright law and possibly requiring a similar abstraction/expression filtration test.
Confidential Information
Hedgehog v Hauser I have written about only one case on confidentiality this year, namely Hedgehog Golf Co. Ltd. v Hauser. The curious feature of this case seemed to be the nature of the confidential information which seemed to relate to a patent. As I explained in "The Inventor's Bargain", the whole point of a a patent is that the invention is dedicated to the public.
Precedent As I am often asked to enforce, or to resist an application to enforce, a confidentiality agreement, the issues that arise most frequently upon an interim injunction application are whether the information really is confidential and whether it was already known to the confidante. Also, the cost of an application to the Chancery interim applications judge can be prohibitive, especially for an SME or individual.
Passing Off
I have already discussed Schutz, Westwood and The Edge in which passing off was pleaded in the trade mark and copyright sections of this email. I also wrote about the DIFC law of passing off which, as you can see, appears to be based on English law.
Injunctions
In view of the Chancellor's recent complaint about non-compliance with paragraphs 5.11 to 5.14 and paragraph 5.24 of the Chancery Guide I have written a brief guide to interim applications entitled "The Right Way to Move a Motion". In the article have set out 12 golden rules of moving a motion from an old pro.
 Also on the subject of injunctions is the dramatic decision of the Court of Appeal in Araci v Fallon when the Court of Appeal sat on Derby Day morning to consider an appeal from Mr. Justice MacDuff's refusal to injunct Kieren Fallon from riding in the race that same afternoon (see "Injunctions: Araci v Fallon").
Patents County Court
Judge Birss has made two useful decisions on practice:
Hargreaves
As this was the umpteenth report on UK intellectual property law since 2000 I did  not have very high expectations of Hargreaves. Unlike Gowers this report made only a handful of recommendations and proposed an evidence based approach to policy making. Although I was not too impressed with his recommendations on patents, enforcement and support for SME I quite liked his ideas on copyright - particularly the digital copyright exchange - though I think it will require international agreement and will need industry co-operation. I set out my thoughts in "Does Hargreaves say anything new?".
IP Strategy
As IP strategy is one of my interests, I wrote a short primer on the topic.
Gulf
One of the few export markets for the English Bar are the new English speaking common law courts for the Dubai and Qatar financial centres and the arbitration centres set up in other countries in the region. Those countries are investing heavily in education, research an development for when the oil runs out. I have already mentioned the Gulf Co-operation Council Patent Office and the DIFC's laws of confidence and passing off. You may also like to read my introductions to IP law in Dubai, Kuwait and Saudi Arabia.
If you find my articles and case notes useful, I hope you will bear me in mind next time you need representation in the Patents Court, Patents County Court, Chancery Division, Intellectual Property Office or some other tribunal, advice on a difficult point of intellectual property, technology, media or competition law or have an awkward or complex contract or other legal instrument to draft. As you can see, I have been in some important cases and I have contributed to the literature of IP and technology law. Since I practise outside London my fees are competitive.
I am also a trained arbitrator and mediator and sit on the WIPO and Consensus Mediation panels as well as those of my chambers. I know there are two schools of thought on the issue, but in my experience as counsel I always feel more confident when a mediator is also an IP practitioner.
If you need to contact me, call me on 0800 862 0055 or use my contact form.
With very best wishes,
Yours sincerely
Jane Lambert
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