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

PATENTS

Global Flood Defence Systems Ltd and another v Johan Van Den Noort Beheer BV and others [2016] EWHC 1851 (Pat) 

In this groundless threats case, Arnold J in the High Court refused an appeal against a decision of HHJ Hacon in the Intellectual Property Enterprise Court, holding that a threat of proceedings in respect of a patent application could potentially be justified despite that fact that at the time the threats were made the patent had not been granted and the patent claims had therefore not been finalised. 

Arnold J also refused an appeal against the decision of HHJ Hacon to allow an adjournment of the trial of the groundless threats claim until after the patent claims had been finalised. Although the adjournment created some uncertainty this was not a reason to refuse it and, additionally, the claimant’s position was protected in the meantime by an interim injunction preventing further threats.

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

TRADE MARKS

Cartier International AG and another v British Sky Broadcasting Ltd and another [2016] EWCA Civ 658

The Court of Appeal has handed down its much anticipated decision in the case of Cartier International AG and others v British Sky Broadcasting Ltd and others concerning website blocking orders in respect of sites selling counterfeit goods.

In doing so, it has maintained the ability for rightsholders to obtain injunctions against third party internet service providers: a valuable new route of enforcement. The decision will be gratefully received by rightsholders because such blocking injunctions represent a powerful tool in their armoury in the fight against the sale of counterfeit goods online.

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

GENERAL

Hilfiger Licensing LLC and others v Delta Center a.s., Case C 494/15

The CJEU has held that operators of physical marketplaces may be forced to put an end to trade mark infringements committed by market-traders such as the sale of counterfeit goods, and to take measures in order to prevent new infringements. 

Specifically, the CJEU ruled that, under Article 11 of the Enforcement Directive, the tenant of market halls who sublet the various sales points situated therein, some of whom used their pitches to sell counterfeit branded products, fell within the concept of an intermediary whose services were being used by a third party to infringe an intellectual property right within the meaning of the provision. 

For a CMS Law Now on this case, please click here

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

Marks & Spencer PLC v Asda Stores Ltd (2016), Ch D (Patents Ct) (Judge Hacon)

In a costs management hearing, the High Court agreed with the defendant’s assertions that the claimant’s costs budget relating to an intellectual property claim was excessive and disproportionate, and accordingly made an order to reduce the budget by close to one half. 

The court held that whilst the burden on one party in litigation might be greater than that on the other, it is still legitimate to make a costs comparison to see if there was good reason for any dramatic difference in costs between the parties (in this case the claimant’s proposed budget was £700,000 compared to the defendant’s budget of £300,000). 

The court also held that in coming to a decision on costs, due regard had to be had to the complexity of the case, the principle of proportionality, and the fact that the parties were not entitled to spend whatever they liked on legal fees for the purposes of recovery. 

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