- Online injunctions, declarations and appeals - Lush Cosmetics v Amazon
Earlier this year Lush won a big victory against Amazon when the High Court found that it had infringed Lush’s trade marks. But many wondered what the final order would look like, and in particular, how extensive would the injunction be? This short judgment contains various gems on how to handle an internet injunction, the importance of registering licenses and getting a publicity order.
Injunction: Amazon’s lawyers argued that a broad injunction not to use the word LUSH was technically difficult to avoid breaching. This went down like a lead balloon – ‘I am satisfied that Amazon has the expertise to do what is required if it wished’. The Judge ended up ordering an injunction against Amazon in broad terms which covered the whole of Europe (as would be expected given that the claim was for infringement of Community and UK trade marks). This indicates there is a higher onus on sophisticated and technically advanced companies who fall foul of the law to comply with court orders resulting from infringement.
Licensing: Lush’s victory nearly turned out to be a pyrrhic one due to a failure to keep track of its licensing housekeeping. In the UK if you fail to register your exclusive trade mark licence with the UK’s IP office on grant, your ability to recover costs in an infringement action is limited. Lush managed to avoid this problem, in part because one of the Claimants was the trade mark owner and the other was the exclusive licensee. You might not be so lucky. Good record keeping and prompt recordal of licences and assignments are key to avoiding any nasty surprises down the line.
Publicity orders: Ever since Apple famously attempted to defy an Order to publicise the Apple v Samsung design judgment in the UK, publicity Orders have been a judicial hot potato. Lush wanted Amazon to publicise notices in almost every major UK newspaper (although not The Sun!) and plaster the judgment over Amazon’s various European websites. The Judge was more measured and ordered Amazon to put a short notice with a link to the judgment on its ‘.co.uk’ site for a month following the Order. This was considerably more restrained than a notice to be published in the two months preceding Christmas (Amazon’s busiest period) which Lush had requested! He also suspended the publicity notice until after the Appeal.
- Summary judgment for milk bottle patent – Nampak v Alpla
It is pretty unusual to get a summary judgment in a patent case. The issues are normally seen as too technically complex to be adequately dealt with at a hearing without expert evidence and it is rare to be in a position to convince a judge that an argument of patent infringement has no ‘real prospect of success’. However, in this case about milk bottles (!) Mr Justice Birss not only allowed the issue of infringement to be decided by way of summary judgment but he also found in favour of the party seeking to prove non-infringement. The technology in this case was very simple and some of the issues would have looked more at home in a design case rather than a complex patent dispute. So, whilst it clearly is possible to get summary judgment for a patent case, avoiding a trial is unlikely for anything other than extremely straightforward technology. It is useful to note that the invalidity aspects of this case will be going to a full trial in 2015.
For simple patent disputes, it is also worth considering the UK’s IP Enterprise Court which has seen a huge growth in patent cases in the last few years. It can get from claim form to judgment in eight months to a year.
- Can you follow a link you’ve been sent without infringing copyright?
The Court of Justice for the European Union kindly confirmed that what we have all been doing since the dawn of the internet is perfectly permissible. You can now sleep easy. How does such a straightforward question end up before the court? It was all in the context of whether or not a PR company sharing a list of links of relevant news stories to its clients required a licence. The short answer is the PR company needs a licence but its clients don’t.