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

PATENTS

Environmental Defence Systems Ltd v Synergy Health PLC and others [2014] EWHC 1306 (IPEC), 1 May 2014

Environmental Defence Systems brought an action against Synergy for patent infringement, in which they claimed that there was no inventive step in using a known method of  making parts for barrage units as claimed in the patent. There was a dispute as to which expert witness was the better placed to give evidence about the persons skilled in the art and, by extension, what the characteristics of the skilled person were.  The fact that the skilled person could be drawn from two or more technical fields highlights a principle of practice when considering the inventive step, particularly in the Intellectual Property Enterprise Court. In this case, neither proposed expert was a close approximation of the person skilled in the art, but the judge ruled that an expert’s evidence will be valuable if it accurately conveys the perspective of the hypothetical skilled person.

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

Actavis UK Limited and others v Eli Lilly & Company[2014] EWHC 1511 (Pat), 15 May 2014

Actavis sought declarations of non-infringement in relation to the UK, French, Italian and Spanish designations of Eli Lilly’s European patent. The patent related to the use of pemextrexed disodium in combination with vitamin B12 and optionally a folic binding protein agent for inhibiting tumour growth. Actavis sought declarations in relation to pemextrexed dipotassium in several countries. The High Court granted the declarations in relation to the French, Italian, Spanish and UK versions of the patent. Arnold J held that under the Rome II Regulation the rules relating to the grant of a declaration of non-infringement were governed by the law of the forum, therefore England and Wales, but even if that interpretation were wrong, the national rules of France, Italy and Spain would permit the grant of the declaration of non infringement.

For the full text of the decision, please click here

Ian Alexander Shanks v. Unilever Plc, Unilever NV and Unilever UK Central Resources Limited, [2014] EWHC 1647 (Pat), 23 May 2014

During his employment with Unilever UK Central Resources Ltd, Professor Shanks invented two pieces of glucose testing biosensor technology. Professor Shanks claimed that he was entitled to compensation from his employer under section 40(1) Patent Act 1977. The High Court dismissed his appeal and concluded that the Shanks patents were not of outstanding benefit to Unilever and therefore that Professor Shanks was not entitled to an award of employee compensation. In identifying the benefit to Unilever, the Court considered time value of money, tax, research and development cost and the employer’s undertaking.

For the full text of the decision, please click here

TRADE MARKS AND PASSING OFF

Cosmetic Warriors Ltd, Lush Ltd v Amazon.co.uk Ltd, Amazon EU Sarl [2014] EWHC 1316, 2 May 2014

In February 2014 the High Court held that Amazon had infringed the Community Trade Mark for the word ‘LUSH’, owned by Lush Ltd. This hearing considered numerous aspects of the form of order to be granted.  The parties were unable to agree on matters relating to the scope and extent of the injunction sought, the assessment of costs, the form of the publicity order and whether there should be a stay of injunctive relief pending the appeal. The judge ordered that a general form of injunction should be made and confirmed that the injunction should be EU-wide. The fact that the case related to the UK website only had no impact on the scope of the injunction when a CTM had been infringed. In respect of the publicity order sought, the judge took a pragmatic approach, finding a long notice to be unsuitable for a website and that placing a notice on Amazon’s homepage for 10 months would be disproportionate. The order was made for a short notice on the beauty pages (and not the homepage) of Amazon’s UK website, for one month only.

For the full text of the decision, please click here

Hauck GmbH & Co KG v Stokke A/S and others C-205/13, 14 May 2014

The Advocate General has provided an opinion on the interpretation of the exclusions from registrability for shape marks under Articles 3(1)(e)(i) and 3(1)(e)(iii) of Directive 2008/95. In doing so, he has also opined on the cumulative application of these grounds. It remains to be seen whether the CJEU will adopt the position held by the Advocate General.

Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC), 29 May 2014

The Intellectual Property Enterprise Court has dismissed a claim brought by Moroccanoil Israel Ltd against Aldi, ruling that there was insufficient evidence to support a claim for passing off based upon the similarity in get-up between the Claimant’s “Moroccanoil” and the “Miracle Oil” sold in the Defendant’s stores. The Court held that there was nothing to show that any identified individuals had assumed that Aldi’s “Miracle Oil” had a trade connection with Moroccanoil because of Miracle Oil’s name and/or get-up. Judge Hacon held that the three concepts of ‘initial interest confusion’, ‘bringing to mind’ and ‘living dangerously’ that imply confusion in the trade mark context were here held not to be applicable in proving misrepresentation in an action for passing off.

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

COPYRIGHT

Paramount Home Entertainment International Ltd and others v British Sky Broadcasting Ltd and others [2014] EWHC 937 (Ch), 18 February 2014

In the latest of a number of similar recent cases, the High Court has granted injunctions under section 97A of the Copyright, Designs and Patents Act 1988 ordering the UK’s main ISPs to block access to a number of websites set up to facilitate the illegal downloading of films and TV programmes.  The case contains a helpful summary of the test for engaging s97A, and of the law relating to copyright infringement by communicating a work to the public.

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

Twentieth Century Fox Film Corporation and others v David Harris and others [2014] EWHC 1568 (Ch), 16 May 2014

The High Court found that an individual, David Harris, the former operator of the Newzbin websites, and various companies controlled by him, were liable for copyright infringement and conspiracy to injure by unlawful means, both by infringing copyright and defrauding film studios whose films they made available via the Newzbin websites.  The case was brought after the companies operating the original Newzbin websites either went into liquidation or could not be traced and had failed to pay damages and costs.  

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

Public Relations Consultants Association Ltd v Newspaper Licensing Agency, CJEU, Case C-360/13, 5 June 2014 

The CJEU has confirmed the view of the Supreme Court that simply browsing the internet cannot constitute a copyright infringement as this activity falls within Article 5(1) of Directive 2001/29/EC.  Article 5(1) provides for an exception to the author’s reproduction right for copies made which are temporary, transient or incidental in nature, and constituting an integral and essential part of a technological process.

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

BSI Enterprises Ltd and another v Blue Mountain Music Ltd [2014] EWHC 1690 (Ch), 4 June 2014

The High Court has ruled that a 1992 agreement to assign the copyright in certain songs written by Bob Marley from his record label, CMI, to Island Logic did include a collection of misattributed songs, including the hit “No Woman No Cry”.  Marley had misattributed these songs to other artists in order to prevent their copyright and royalties from going to his record label and the ownership of these songs had since been disputed.  The principal issue was whether the definitions “Compositions” and “Catalogue” in the 1992 agreement included the misattributed songs.  The court held that they did as the definitions referred to all existing musical compositions written by Marley. 

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

DATA PROTECTION

‘Google Spain SL and Google Inc v Agencia Española de Protección de Datos (AEPD) and Mario Costeja González, Case C-131/12, 13 May 2014

The decision by the Court of Justice of the European Union has confirmed the right of data subjects across the EU to have certain information forgotten where it can be shown to be ‘inadequate, irrelevant or excessive.’ Google was held to be a data controller in its own right by virtue of the systems it uses to process and index data which it then provides as search results.  Consequently, requests for erasure can be made by data subjects even where the information available on the underlying website is lawfully published and the publishers cannot be compelled to alter or remove it. In addition, the Court confirmed that Directive 95/46/EC applies to companies registered outside of the EU where a branch or subsidiary within an EU member state exists for the purpose of advertising and selling the services of the non-EU entity.

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