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

PATENTS

Abbott and another v Design & Display Ltd and another [2014] EWHC 3234 (IPEC), 10 October 2014

The High Court has ruled that the cap on damages or on account of profits of £500,000 in the Intellectual Property Court (IPEC), relates to the overall total recoverable from all defendants, rather than a limit to be applied to each individually.

Hacon J. noted that the claimant had a free choice regarding where to bring its action and, given that there were also potential benefits to bringing a single claim in IPEC (i.e. limits on potential liability for costs were the claimant to lose), the claimant had to be prepared to accept both sides of the bargain.

The court also gave guidance as to whether any ‘additional payments’ that may become due following rejection of a Part 36 offer should fall within the IPEC cap.

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

Merck Canada Inc and another v Sigma Pharmaceuticals plc Case C-539/13, 23 October 2014

Advocate General Jääskinen has issued his opinion on the questions referred to the CJEU by the UK Court of Appeal regarding the interpretation of the specific mechanism which allows patent owners to prevent parallel imports from the 2004 EU accession countries into other EU Member States.  

In the opinion of the Advocate General, the patent owner, or the beneficiary of a patent, is required to respond to a notification of an intention to import pharmaceutical products covered by that patent from a 2004 accession country in order to be able to rely on its rights.  

The AG also considers that it is irrelevant who gives the notification as long as the relevant importer or marketer is identified in the notification. Finally, the AG was of the opinion that the notification had to be given to the patent owner or any person who is able to enforce the rights under the relevant national law.

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

Les Laboratoires Servier and another v Apotex Inc and others [2014] UKSC 55, 29 October 2014

The Supreme Court has dismissed an appeal from Les Laboratoires Servier against a decision of the Court of Appeal that the infringement of Servier’s Canadian patent by Apotex was not a relevant illegality that would engage the illegality defence in relation to English patent infringement proceedings. 

Lord Sumption held that a criminal or quasi-criminal act was required in order to constitute “turpitude” sufficient to engage the defence. A breach of a patentee’s rights does not engage the public interest and the defence was therefore not applicable in this case.

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

TRADE MARKS AND PASSING OFF

Specsavers International Healthcare Ltd and others v Asda Stores Ltd [2014] EWCA Civ 1294

The Court of Appeal, applying the guidance from the CJEU, has reached its decision on whether use of the Specsavers logo mark with the word “Specsavers” on it constituted genuine use of the wordless logo mark.

The Court of Appeal has held that, in this case, this use did constitute genuine use of the wordless logo mark. However, the court has made it clear that the facts of this case were “unusual”.

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

Cartier International AG and others v British Sky Broadcasting Ltd and others [2014] EWHC 3354 (Ch), 17 October 2014

The High Court has concluded that brand owners are entitled to orders requiring ISPs to block or impede access by their subscribers to websites which advertise and sell counterfeit goods.

In doing so, Arnold J. has granted a novel remedy under Article 11 of the Enforcement Directive, extending the Court’s existing jurisdiction (in respect of claims of copyright infringement) to claims relating to allegations of trade mark infringement.

The orders sought by the claimants were granted in substantially the form requested, but were subject to the introduction of additional safeguards: namely that the orders should expressly permit affected subscribers to apply to court to discharge or vary the orders; and that users who attempted to access blocked websites received a message identifying the party or parties which had obtained the order and stating that affected users had the right to apply to court to discharge or vary the order.

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

To read our Law Now on this case, please click here.

DESIGNS

Cezar Przedsiębiorstwo Produkcyjne Dariusz Bogdan Niewiński v OHIM, Case T-39/13, 3 October 2014

The EU General Court allowed an appeal against a decision by the OHIM Board of Appeal to uphold a declaration of invalidity for a registered Community design.

OHIM had previously ruled that a Community design for a skirting board wire recess cover, which had been registered on 1 September 2003, was invalidly registered as it lacked uniqueness and novelty in respect of an earlier design that had been available to the public.

However, the EU General Court found that OHIM’s appraisal of the visible features of the earlier design, which were necessary to establish if the design formed part of a complex product, was inaccurate and, as such, the basis of comparison between the earlier design and the contested design was flawed.

The court therefore upheld the appeal.

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

COPYRIGHT

Henderson v All Around the World Recordings Ltd[2014] EWHC 3087 (IPEC), 3 October 2014

The IP Enterprise Court has made an inquiry into damages in a case of a singer’s performer’s rights being infringed by a record company. 

In addition to referring to his summary of principles that should be taken into account in relation to an inquiry as to damages, as set out in SDL v Next Row, Hacon J. considered a number of relatively new legal concepts, including the application of the IP Enforcement Directive and the UK regulations implementing it.

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

1967 Ltd and others v British Sky Broadcasting and others [2014] EWHC 3444 (Ch), 23 October 2014

The High Court has granted an injunction to a number of record companies requiring five internet service providers (ISPs) to block access to several websites which had been providing access to music that was subject to copyright.

The orders sought by the claimants were granted in substantially the form requested, but were subject to the introduction of the additional safeguards introduced by Arnold J. in Cartier v B Sky B.

The decision follows a number of similar cases in which such injunctions were granted pursuant to section 97A of the Copyright, Designs and Patents Act 1988.

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