Four2Five - IP & TMT April 2013

IP & Tech Law Update

April 2013
Latest Cases
  Twentieth  Century Fox Film Corp & Others v Harris and Others
  Strellson AG v Thornton & Ross
  4-5 Gray's Inn  Square IP and Technology Group
  Jane Lambert
  Thomas Dillon
  Joseph Dalby
  David Hughes
  Tahir Ashraf
  Contact Clerks

Case of the Month

In Twentieth Century Fox Film Corporation and Others v Harris and Others  [2013] WLR(D) 42, [2013] EWHC 159 (Ch) ithe trade association of the US film industry claimed an injunction to restrain the first defendant from dealing with, or disposing of, his home, car and other assts on the ground that he held them on constructive trusts for the association and its members. The claimants argued that he held those assets on trust because he had purchased them with with the proceeds of the infringement of their members' copyrights. Both sides were represented by counsel from these chambers. 

To understand this difficult case, see "Twentieth Century Fox v Harris - very interesting but what exactly was that case about?" by Jane Lambert (NIPC Law, 5 Feb 2013).


Dear IP Practitioner,

I hope you like the first newsletter of our Intellectual Property and Technology Law Group.

Although we have always done some IP work it was mainly copyright and confidentiality. We have now recruited mew members  so we can offer advice on patents, registered trade marks and designs as well as the work we have always done.
We can also represent you in the Patents Court, Patents County Court and Intellectual Property Office as well as the Chancery Division.

This month we focus on Twentieth Century Fox v Harris an important case on remedies for online piracy.  This is an area of the law in which we are particularly strong. As well as Jane Lambert, we have Thomas Dillon who was Vice-President of, and Deputy General Counsel to, the Motion Picture Association in Europe, the Middle East and Africa.

If you want further information about our IP and Technology Law group please call me on +44 (0)20 7670 1555 or fill in our contact form. I look forward to hearing from you.

With best wishes

Yours sincerely

Senior Clerk

In Schütz (UK) Ltd v Werit (UK) Ltd  [2013] UKSC 16, the second  patent appeal to the Supreme Court, the issue was the boundary between "making" and repair".
The patent in suit was for an intermediate bulk carrier, an assembly in which a large plastic bottle was housed in a metal cage. The defendants substituted a competitor's bottle in the patentee's frame. The Court had to determine whether that amounted to "repair" or "making the invention".

The trial judge had held that this substitution amounted to repair. The Court of Appeal reversed him. The Supreme Court held that the trial judge had been right but for "more nuanced reasons,"

See Jane Lambert's case note "Make or Mend: Schütz v Werit reaches the Supreme Court", 5 April 2013.

Registered Designs

In Mainetti (UK) Ltd v Hangerlogic UK Limited [2012] EWPCC 42 (24 Oct 2012) Mr Recorder Purvis had to consider the validity of a series of registered designs for coat hangers and whether those design registrations had been infringed.The decision is mentioned because of the judge's analyses of whether a design is new and whether it has been infringed.

See Registered Designs: Mainetti (UK) Ltd v Hangerlogic UK Limited, 4 Nov 2012.

Trade Marks

In Strellson AG v Thornton & Ross  a Swiss fashion goods manufacturer opposed the pharmaceutical supplier's application to register the above for a range of medical products and cosmetics in classes
0000390382183 and 5 on the grounds that the sign conflicted with the following marj for perfumes and cosntics in class 3. The opposition succeeded in respect of certain skin care products but failed as to the rest.

The case is iinstructive because of the hearing officer's guidance in comparing signs and goods.

See "
Trade Marks - Huddersfield Firm Marks its Cross". IP Yorks 18 Jan 2013.

Confidential Information
Because of the high cost of litigation the enforcement of a non-disclosure agreement by a start-up or small business has been prohibitive.  The new small claims track of the Patents County Court now provides a solution (see "Enforcing a Confidentialty Agreement in the Small Claims Track" IP Yorks, 18 March 2013).

Also, damages based agreements are now permissible for contentious matters and the limit for damages in the small claims track has been raised from £5,000 to £10,000 (see "Intellectual Property Litigation - the Funding Options" NIPC Law, 10 April 2013).

Tel: +44 (0)20 7404 5252
Fax:+44 (0)20 7242 7803

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