Bringing you regular news of key developments in intellectual property law.

PATENTS

Design & Display Ltd v Ooo Abbott & Anor [2016] EWCA 95

The Court of Appeal has reversed the decision of the IPEC in determining an account of profits for patent infringement proceedings. In reaching this decision the Court of Appeal has given welcome guidance on the principles to be applied in calculating the account of profits in intellectual property infringement cases. In particular, the case addresses the issue of apportionment of profits where the infringing item is part of a larger product. It also considers the issue of deducting overheads from gross products in making these calculations. The case will now be remitted to the IPEC for further findings of fact. 

For the full text of the decision, please click here:   

TRADE MARKS AND PASSING OFF 

Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41, 8 February 2016

The Court of Appeal has upheld a ruling made by the High Court in 2014 (for a full discussion of the High Court ruling see insert link to No Glee as comedy club left laughing) which held that Comic Enterprises Ltd.’s comedy club's figurative trade mark incorporating the words "the glee CLUB" was infringed by Twentieth Century Fox Film Corporation’s American "Glee" television series, under sections 10(2) and 10(3) of the Trade Mark Act 1994. The Court of Appeal confirmed that evidence of “wrong-way round” confusion was admissible and provided evidence of confusion at a later date. The order in which a consumer came across the Mark and the sign was not significant. The court also dismissed the appeal against the finding of infringement under s.10(3) of the Act stating that there was a likelihood of confusion and moreover the use of the sign had caused, and was likely to continue to cause, significant detriment to the Mark and as such Fox’s use of the Mark was not with due course. 

For the full text of the decision, please click here.

Youssef Hassan v Breiding Vertriebsgesellschaft mbH C-163/15

The CJEU has held that a licensee of a Community trade mark may bring proceedings for infringement, where he has the proprietors consent, without the need to record his licence on the Community trade mark register.

For the full text of the decision, please click here.  

Cartier International Ltd and another v British Telecommunications Plc and others [2016] EWHC 339 (Ch), 23 February 2016

The High Court has granted a blocking injunction against number of ISPs in relation to various websites selling counterfeit goods under the Claimants’ trade marks. The Claimants submitted that the sale of such goods amounted to trade mark infringement and sought a website blocking order against the five main ISPs in the UK. The Court considered that the threshold conditions set out by Arnold J in Cartier International AG v British Sky Broadcasting Limited [2014] EWHC 3354 (CH) had been met and granted the injunction. In response to the Defendants’ arguments questioning the efficacy of blocking the five target websites given the significant number of websites selling fake products under the Claimants’ marks, the Court held that there is no requirement for a claimant to show that blocking the relevant websites would be likely to reduce overall infringement of the marks.

For the full text of the decision, please click here.