TRADE MARKS AND PASSING OFF

Actavis Group PTC EHF v Pharmacia LLC [2014] EWHC 2611 (Pat), 24 July 2014

The High Court granted a stay of patent revocation proceedings pending an EPO decision. The court had previously refused to grant the stay, primarily because the EPO proceedings would likely take longer than the UK and the need for commercial certainty for the generic drug company outweighed other factors. However, before the judgment was finalised, Pharmacia amended their application and offered further undertakings, namely an undertaking not to seek an injunction against Actavis in the UK for the life of the Patent (if found valid by the EPO) and an undertaking to only seek damages of 1% of Actavis’ net sales in the UK. In light of the additional undertakings the court was satisfied that when weighing up all the factors, the balance of justice fell in favour of granting the stay.

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

International Stem Cell Corporation v Comptroller General of Patents, Case C-364/13, 17 July 2014

The Advocate General has given his opinion on the question referred to the ECJ by the High Court in the International Stem Cell Corporation patent case. He advised the ECJ that the decision in Oliver Brüstle v Greenpeace eV, C-34/10, to the extent that it equated unfertilised ova (which were incapable of developing into a human being unless genetically modified) with fertilised ova, appeared to have been based on incorrect facts provided to the court. Applying the general principle laid down in that case, such organisms were not human embryos and not within the exclusion from patentability in Article 6(2)(c) of the Biotechnology Directive.

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

TRADE MARKS AND PASSING OFF

Wilko Retail Ltd v Buyology Ltd [2014] EWHC 2221 (IPEC), 7 July 2014

The Intellectual Property Enterprise Court (IPEC) rejected Wilko Retail Ltd’s application for a Norwich Pharmacal order requiring Buyology Ltd, the defendant retailer, to disclose the details of its suppliers in a trade mark infringement and passing off case. After becoming aware in 2012 that Buyology had been selling ‘Wilko’ branded goods the claimant commenced litigation proceedings. However, when filing their defence, Buyology acknowledged an ‘accidental’ wrong-doing and the parties agreed to settle. Following settlement Wilko then went to IPEC and asked for a Norwich Pharmacal order to be granted against Buyology forcing them to disclose details relating to the suppliers who had provided them with the infringing products. After establishing that the settlement agreement was binding and that Wilko were not precluded from bringing the application, Hacon J. refused the request using the test of “balance of irreparable harm”.

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

DESIGNS

Ifejika v Ifejika and another [2014] EWHC 2625 (IPEC), 31 July 2014


Hacon J has ruled on the sum to be awarded for infringement of UK unregistered design rights in respect of a contact lens cleaning device and, in doing so, has demonstrated the effect of licences of right on any such inquiry. In assessing the amount awarded to the claimant for infringement of a UK unregistered design right, Hacon J. took into account the effect of section 239 of the Copyright, Designs and Patents Act 1988, which states that the amount recoverable may not exceed double the amount which would have been payable by the infringing party as a licensee had they exercised their right to obtain a licence from the owner of the design right during the last five years of its term.

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