Archive for the ‘Intellectual Property’ Category
Tuesday, May 21st, 2013
Hammersmatch v Saint-Gobain [2013] EWHC 1161 is worthy of a read.
The court’s analysis of the s.18 cap and the weight it put on the parties’ valuation experts forms the biggest part of the judgment for good reason – the landlord’s original cost of works claim of £5 million was limited by the cap to £900k. Given that reduction, it would be interesting to know how the landlord’s litigation costs were assessed.
There is also a cautionary reminder that emails between a client and its non-legal advisor can be disclosed in legal proceedings. Here the court took them into account when considering whether the landlord actually intended to undertake the works.
For more insight see our dilapidations training video on our dedicated retail law website.
Posted by Tim Rayner, who specialises in property litigation, advises in connection with the full spectrum of property related disputes and commerical property
Tim Rayner
0121 237 3949
tim.rayner@brownejacobson.com
Tags: building surveyors, Dilapidations, Tim Rayner
Posted in Commercial dispute resolution, Commercial Litigation, Government, Health, Litigation, Local Authorities, NHS, Property, Public Sector, Retail | No Comments »
Friday, May 10th, 2013
It was announced in the Queen’s speech that the Government intends to enact a new Consumer Rights Act.
This act will:
- Expressly cover digital content, including music, films and e-books. Consumers will have rights to compensation if they purchase content which is inaccessible or repeatedly freezes.
- Consolidate consumer rights in one place. Consumer law is currently spread across more than 10 acts and regulations, which arguably makes it difficult for consumers to know their rights.
- Trading standards officers will be given new powers to require businesses to compensate consumers. We anticipate this will make complaints to Trading Standards more frequent.
- Implement recent EU directives, which are intended to harmonise consumer law across the EU.
Clarification on the status of digital content is welcomed, but it remains to be seen if other changes will truly help consumers, or will simply place new burdens on businesses.
We will provide further updates when the act is published in draft form later this year.
Posted by Oliver Sweeney, who specialises in regulatory matters; including compliance, representation e.g. company prosecutions and public inquiries; transport issues; commercial litigation, including reputation management, contractual litigation and injunctions.
Oliver Sweeney
0115 976 6247
oliver.sweeney@brownejacobson.com
Tags: consumer law, Consumer Rights, digital media, new Consumer Rights Act, oliver sweeney, Queen's speech
Posted in Advertising & Marketing, Brands, Charities, Commercial Litigation, Government, Regulatory, Retail | No Comments »
Thursday, April 25th, 2013
On 23 April 2013, the Government published guidance on cyber-security for small businesses.
The guidance explains what cyber-security risks are, and outlines how businesses can plan, implement and review their cyber security.
According to a recent survey by PwC, the threat of security breaches is at its highest ever level, with 87% of small businesses and 93% of large businesses experiencing a security breach in the last year. The average cost to a small business of its worst security breach was between £35k-£65k; whereas the figure for large businesses was between £450k-£850k. These costs were made up of regulatory fines and compensation, lost assets (including IP), lost business and cash spent to recover and remediate.
These figures, combined with the cost of reputational damage, show just how critical careful cyber security planning and management really is.
Posted by Oliver Laing, who specialises in intellectual property agreements, anti counterfeiting and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.
Oliver Laing
0115 908 4854
oliver.laing@brownejacobson.com
Tags: cyber crime, cyber security, department for business innovation and skills, oliver laing
Posted in Brands, Data Protection, Fraud, Government, In-house Lawyers, Insurance, Intellectual Property, Litigation, Public Sector, Retail | No Comments »
Wednesday, April 24th, 2013
After lengthy public debate, the Defamation Bill was yesterday passed by the House of Lords. The bill is intended to rebalance defamation laws in favour of freedom of expression.
Some significant provisions introduced include:
- companies must show that a publication has caused, or is likely to cause, substantial financial loss before they can claim
- a defence for website operators if it was not them who posted the statement – provided they cooperate in identifying the statement maker
- an effective limitation period for internet-based publications of one year from their first publication
A proposed amendment which would have prevented companies providing public services from suing in defamation has not been passed. Nor has there been any statutory restriction placed on public bodies funding actions by their employees.
The bill may not fundamentally change the underlying principles of defamation. But claimants will need to take advice, and perhaps consider alternatives (combining legal options and practical options) for successful reputation management.
Posted by Oliver Sweeney, who specialises in regulatory matters; including compliance, representation e.g. company prosecutions and public inquiries; transport issues; commercial litigation, including reputation management, contractual litigation and injunctions.
Oliver Sweeney
0115 976 6247
oliver.sweeney@brownejacobson.com
Tags: defamation, Defamation Bill, freedom of expression, oliver sweeney
Posted in Brands, Commercial Litigation, Education, Government, In-house Lawyers, Litigation, Public Sector, Retail | No Comments »
Tuesday, April 23rd, 2013
Section 60(3) of the Patents Act says supplying staple commercial products is not contributory patent infringement.
In Nestec v Dualit, Arnold J considered what is a staple commercial product.
He cited Pavel v Sony, which said “in ordinary language, a staple commercial product is a commodity or raw material” and staple commercial products are “of a kind which is needed every day and can be generally obtained”.
He also referred to the Australian decision in Northern Territory of Australia v Collins, which said a staple commercial product “must ordinarily be one which is supplied commercially for a variety of uses”.
As the defendants’ coffee capsules had “no other use other than with a limited range of portionised coffee machines”, they were not staple commercial products.
What amounts to an easily obtained daily necessity varies hugely between organisations, and this element of the test is unenlightening. But the ‘variety of uses’ test is helpful, particularly in the context that most staples are commodities or raw materials.
Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.
Giles Parsons
0121 237 4557
giles.parsons@brownejacobson.com
Tags: case law, Giles Parsons, Nestec v Dualit, patent, Patents
Posted in Intellectual Property, Litigation, Technology | No Comments »
Thursday, April 18th, 2013
The Patents County Court has a special costs regime, and costs are only normally recoverable if (a) they would normally be recoverable, (b) they fall within the stage limits, and (c) they fall beneath the cost cap, which for liability trials is £50,000.
Two recent decisions elucidate on this.
In Henderson v All Around the World, the judge said that the £50,000 costs cap can only be departed from in truly exceptional circumstances. Although costs has been assessed below £50,000 in accordance with the stage limits, a CFA uplift and an ATE insurance premium could be claimed above the stage limits and brought the recoverable costs up to the £50,000 cap.
In Azzurri Communications v International Telecommunications, the £25,000 cost cap for a damages enquiry could not be added to the £50,000 liability trial cap if a case concerned liability and quantum.
In short, the £50,000 costs cap is very difficult to avoid, unless there has been an abuse of the court’s process.
Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.
Giles Parsons
0121 237 4557
gparsons@brownejacobson.com
Tags: Azzurri Communications v International Telecommunications, costs, Giles Parsons, Henderson v All Around the World, patent, patents county court
Posted in Brands, Intellectual Property, Litigation, Retail, Technology | No Comments »
Wednesday, April 17th, 2013
The claimants’ solicitor entered into a conditional fee agreement (CFA) which provided for a success fee and after the event (ATE) insurance. The defendant argued that the claimant’s approved costs budget did not state that these items were excluded and that they should only be able to recover fees less the success fee and ATE premium.
However, revision of the budget was allowed with Mr Justice Coulson stating the claimant should not be penalised as the defendant knew of the existence of the CFA and ATE premium. The new Precedent H form now removes the chance of this mistake reoccurring. Further, departing from the cost budget will be an exceptional circumstance. The judgment says that if a party is looking to cure a fundamental inadequacy or to rectify a mistake this cannot be done via a new budget.
The court stressed that getting matters right is of the upmost importance to bring purpose and meaning to proper cost management.
Posted by Nichola Evans, who specialises in commercial dispute resolution, litigation funding issues including ATE insurance and third party funding; experienced litigator on high value complex litigation claims.
Nichola Evans
0161 242 1306
nevans@brownejacobson.com
Tags: civil procedure rules, costs, CPR, jackson, Jackson reforms, Nichola Evans
Posted in Commercial dispute resolution, Commercial Litigation, Insurance, Insurance - Advisory, Litigation | No Comments »
Friday, April 12th, 2013
This week India has confirmed its accession to the Madrid Protocol for International Registration of Trade Marks at WIPO (Madrid system). The Treaty will come into force in India on 8 July 2013.
The Madrid system gives trade mark owners the ability to protect and manage their trade mark portfolio in up to 88 countries plus the European Union with its Community Trade Mark (CTM) by filing just one application. See here for a list of all countries who have already signed up to the Madrid system from Albania to Zambia.
The move will make it easier and more cost-effective for brands to extend their protection to the important Indian market. With the Indian economy expecting to expand by up to 6.7% in the next two years, this is good news for brand owners thinking about extending their business to the Indian market.
Posted by Paula Dumbill, who specialises in non-contentious intellectual property, particularly trade marks and copyright, advising in particular on IP exploitation and collaboration agreements and trade mark portfolio management.
Paula Dumbill
0115 976 6059
pdumbill@brownejacobson.com
Tags: Browne Jacobson LLP, India, Madrid Protocol, Paula Dumbill, Registration of trade marks, trade marks
Posted in Advertising & Marketing, Brands, Food & drink, In-house Lawyers, Intellectual Property, Retail | No Comments »
Thursday, April 11th, 2013
The Court of Appeal has ruled in Flatman v Germany that a solicitor funding a disbursement does not mean they become a ‘real party’ to the litigation and therefore liable to meet the costs of successful defendants.
Initially, Eady J gave a favourable judgment in the Commercial Court to the insurers stating that on some occasions it may be sufficient that the funder has something to gain alongside the nominal party therefore having an interest in the litigation.
However, the Court of Appeal stated that although the legislation in place does visualise the possibility of the solicitor funding a disbursement it does not automatically mean they incur any potential liability to an adverse costs order. It remains to be seen whether in the post Jackson world further applications may be made to the court where it is felt that but for the backing of a solicitor’s firm the claimant would not have brought the claim.
Posted by Nichola Evans, who specialises in commercial dispute resolution, litigation funding issues including ATE insurance and third party funding; experienced litigator on high value complex litigation claims.
Nichola Evans
0161 242 1306
nevans@brownejacobson.com
Tags: civil procedure rules, costs, CPR, jackson, Jackson reforms, Nichola Evans
Posted in Commercial dispute resolution, Commercial Litigation, employer/public liability, Employers & Public Liability, Employment, Health, Insurance, Insurance - Advisory, Litigation, Local Authorities | No Comments »
Thursday, March 28th, 2013
The Civil Justice Council has provided a guide for litigants in person (LiPs) that supposedly “works through” the process of bringing and defending a small claim. With the legal aid cuts this should be a guide that is welcomed in addressing a gap in the lack of information provided.
However, there are many problems with the guide such as reverting to legal talk and bypassing some important issues. The guide only touches upon the important CPR rules and advises that LiPs need “to pick out the rules that are relevant”. One must ask how a legally untrained eye is able to spot which CPR rules are relevant and which are not.
The poorly drafted guide is more like a directory for LiPs to “find out more information” from other sources which could result in unanswered questions and unnecessary confusion.
Sadly, an opportunity has been missed and the attempt has failed to address many LiPs concerns.
Posted by Nichola Evans, who specialises in commercial dispute resolution, litigation funding issues including ATE insurance and third party funding; experienced litigator on high value complex litigation claims.
Nichola Evans
0161 242 1306
nevans@brownejacobson.com
Tags: CPR, LIP's, Litigant’s in Person, Nichola Evans, small claims
Posted in Commercial Litigation, employer/public liability, Employers & Public Liability, Insurance, Insurance - Advisory, Litigation | No Comments »
Tuesday, March 26th, 2013
The Intellectual Property Office (IPO) is encouraging SMEs (small and medium enterprises) to use its recently introduced mediation service to solve disputes between rights holders and others. However, a rights owner should first consult the IPO website as the service cannot deal with all disputes, such as those concerning:
- distinctiveness of a trade mark
- trade mark opposition and invalidation proceedings on absolute grounds
- IPO decisions like refusal of a patent application.
Experienced mediation providers such as CEDR (Centre for Effective Dispute Resolution) and In Place of Strife are already frequently used and the Law Society and Bar Council also provide information on their qualified mediator members.
The scheme aims to reduce SMEs’ costs of dispute resolution, but common issues such as IP right validity or the need for an injunction may limit this. Rights owners will need to carefully consider its suitability and what outcome they want from any dispute resolution procedure. The IPO scheme will have value, but may not provide an alternative to other mediation services or the courts.
Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.
Peter Ellis
0115 976 6269
pellis@brownejacobson.com
Tags: Browne Jacobson LLP, CEDR, dispute resolution, mediation, Peter Ellis, SME, UK Intellectual Property Office
Posted in Advertising & Marketing, Brands, Commercial dispute resolution, Commercial Litigation, Data Protection, In-house Lawyers, Intellectual Property, IT Contracts, Licensing | No Comments »
Monday, March 25th, 2013
Google has amended its policy enabling advertisers to choose any trademark term to trigger their advert onto consumers’ screens. In 2008 advertisers needed the owner’s permission to use trademark keywords but in 2010 Google amended its policy allowing retailers unconnected with a trademarked brand to use the trademark in AdWords ads provided they had a loose connection, such as selling the trademarked brands’ products.
This latest change might have followed Google’s success in the Australian High Court where it was found not to have misled or deceived the public by publishing ads in which advertisers used rivals’ names.
The policy states Google will still “investigate and may restrict the use of a trademark within ad text”, but what security does that offer to trademark owners if consumers have already been led to the advert?
This will not stop trademark owners enforcing their rights against advertisers, who should seek advice before choosing keywords and creating ads, especially if they’re intending on using other brands’ trademarks.
Posted by Paula Dumbill, who specialises in non-contentious intellectual property, particularly trade marks and copyright, advising in particular on IP exploitation and collaboration agreements and trade mark portfolio management.
Paula Dumbill
0115 976 6059
pdumbill@brownejacobson.com
Tags: advertising, AdWords, Google, Paula Dumbill, Trademarks
Posted in Advertising & Marketing, Brands, Commercial contracts, In-house Lawyers, Intellectual Property, Retail, Technology | No Comments »
Wednesday, March 13th, 2013
A person infringes a patent for a particular product if he ‘makes’ the product without the consent of the patentee. In Schutz v Werit the relevant ‘making’ involved replacing an old or damaged component vitally important to the function of the patent but not the subject of the patent itself.
At first instance Floyd J held there was no infringement but the Court of Appeal disagreed because once the relevant component (a bottle) was removed, there was little left of the patented invention so what was left enabled a new product to be made.
The Supreme Court gave guidance on the ‘proper approach to the meaning of makes’ and, after identifying eight different approaches to the meaning and decisions in the German courts, decided neither of the courts below had used the correct approach. It concluded that replacing the bottle did not amount to an infringing act of manufacture.
Anyone now considering the market for reconditioned products should carefully consider this decision.
Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.
Peter Ellis
0115 976 6269
pellis@brownejacobson.com
Tags: Intellectual Property, intellectual property dispute, judgement, patent infringement, Peter Ellis, Schutz v Werit, Supreme Court
Posted in Intellectual Property | No Comments »
Tuesday, March 5th, 2013
Defences to allegations of trade mark infringement where infringers says “I’m using my own name!” rarely succeed. So much so that commentators have challenged readers to come up with a list of any examples of success. But the High Court has bucked the trend in Stichting BDO and others v BDO Unibank, Inc and others.
The claimant is an international accountancy and professional services firm trading under the trade mark “BDO”. The successful defendant is a Philippine bank also trading under the “BDO” mark. By demonstrating it used BDO as its own name “in accordance with honest practices in industrial or commercial matters”, Unibank avoided trade mark infringement.
Whilst this decision is unlikely to spark a sea change, it should be noted when running such a defence. Businesses remain well advised to carry out detailed clearance searches when embarking on a re-branding programme, even if the brand contains reference to the business’ own name (be it a company or trading name).
Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.
Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
Tags: High Court, Inc and others, mark daniels, Stichting BDO and others v BDO Unibank, trade marks
Posted in Advertising & Marketing, Intellectual Property | No Comments »
Friday, February 22nd, 2013
Media stories suggesting high-cost cases are to escape new management rules do not depict a true picture.
Costs management is a crucial part of the Jackson reforms. It is suggested that the civil procedure rules will not apply to commercial cases worth more than £2 million and will be exempt from costs management.
The costs Budgeting Direction amending the new CPR 3.12(1) issued by the President of the Queens Bench Division Sir John Thomas, notes that cost management will be used in all cases except where there is good reason not do so.
Although headlines may suggest otherwise, it is likely that costs management will be the norm post-April and should always be considered, even when exceptions are carved out. Anyone who thinks differently may be in for a shock.
Posted by Nichola Evans, who specialises in commercial dispute resolution, litigation funding issues including ATE insurance and third party funding; experienced litigator on high value complex litigation claims.
Nichola Evans
0161 242 1306
nevans@brownejacobson.com
Tags: civil procedure rules, costs management, CPR, Jackson reforms, Nichola Evans
Posted in Commercial dispute resolution, Commercial Litigation, employer/public liability, Employers & Public Liability, Health, In-house Lawyers, Insurance, Litigation, Local Authorities, NHS, Professional Indemnity, Public Sector, Social Care | No Comments »
Friday, February 15th, 2013
Well after all the waiting the new Rules are now available on the legislation website.
We now have the details on qualified one-way costs shifting (QOCS) in the new Part 44. There are new rules encouraging parties to look at settlement under Part 36 with new additional payments payable in appropriate circumstances. The detail is there on cost management with some amendments to the previous draft and a new section on cost capping. There are some new, interesting developments on case management generally with the judges taking a much more pro-active role and with far less scope for parties in default of orders to gain relief from sanction. Parties to litigation will be expected to scope out disclosure far more carefully. And we have new rules on proportionality which place further restrictions on the recovery of costs. We now await the Practice Directions for a little more detail…
Posted by Nichola Evans, who specialises in commercial dispute resolution, litigation funding issues including ATE insurance and third party funding; experienced litigator on high value complex litigation claims.
Nichola Evans
0161 242 1306
nevans@brownejacobson.com
Tags: civil procedure rules, CPR, Nichola Evans
Posted in Commercial dispute resolution, Commercial Litigation, employer/public liability, Employers & Public Liability, Health, In-house Lawyers, Insurance, Litigation, Local Authorities, NHS, Professional Indemnity, Public Sector, Social Care | No Comments »
Friday, February 8th, 2013
The EU General Court has dismissed an appeal against the OHIM Board of Appeal’s decision to allow opposition against registration of a figurative mark consisting of the words METRO KIDS COMPANY on the grounds that there is a likelihood of confusion with an earlier trade mark METRO.
The court agreed while the ‘metro’ element of the proposed mark was distinctive the additional wording “kids company est. 1989” was not sufficiently distinctive, the figurative element was mainly decorative and aurally customers would tend to abbreviate the mark to ‘metro’. The word ‘metro’ was considered to be the dominant element of the proposed mark and was similar to the earlier mark, leading to a likelihood of confusion.
Ultimately, this is the right decision. Trade mark owner’s rights ought to be protected against others who attempt to take advantage of an existing mark by adding ‘token’ images or words. When applying for a mark it is important to ensure that the mark is distinctive when considered as a whole.
Lauren Millward
0115 908 4864
lmillward@brownejacobson.com
Tags: European Court, Lauren Milward, Trademarks
Posted in Brands, Intellectual Property, Litigation, Retail | No Comments »
Tuesday, January 29th, 2013
The Court of Appeal has upheld the decision that a patent for an animal flea treatment was invalid on grounds of sufficiency due to its broad formulation.
It was found that the patent, required a skilled team to formulate a combination of active ingredients to achieve the claimed result, however, it contained no examples to guide the formulation process. The patent “provided no real practical assistance over and above the common general knowledge”.
As the trial judge stated, the very broad formulation was not “sufficient description to enable the skilled person to arrive at a formulation within the claims without undue effort.”
While there is no requirement for a patent to include specific examples, and this was not in itself fatal in this case, it was this lack of example combined with an inadequate specification which led to the insufficiency finding. This decision is a good reminder that patents which do not easily enable construction of an invention without reference to other sources may be at risk.
Posted by Paula Dumbill, who specialises in non-contentious intellectual property, particularly trade marks and copyright, advising in particular on IP exploitation and collaboration agreements and trade mark portfolio management.
Paula Dumbill
0115 976 6059
pdumbill@brownejacobson.com
Tags: Court of Appeal, Patents, Paula Dumbill
Posted in Intellectual Property, Technology | No Comments »
Tuesday, January 29th, 2013
The most arresting case arising from the Costs Budgeting pilots must be Henry v News Group Newspapers. Master Hurst refused to allow C. £300,000 of the successful claimants costs because her solicitors failed to update their budget. Despite finding that this might well have been allowed on assessment. This appeared to set a ‘firm but fair’ foundation ahead of the much stricter post April 2013 CPR regime.
However, the Court of Appeal allowed the Claimant to recover, stating that there was ‘good reason’ to depart from the budget in this instance. However, the pilot differed in important respects from the upcoming rules when a greater emphasis is expected on the responsibility of the parties and the Court to keep budgets under review and spending under control.
This should not be seen as a sign that budgeting post April will be less onerous than expected and prudent practitioners and litigants should not feel reassured by the decision when preparing costs budgets in the future.
Posted by James Arrowsmith, who specialises in high value personal injury claims, extensive experience of claims relating to head injuries and serious bodily injury, psychiatric damage and injuries to children.
James Arrowsmith
0121 237 3981
jarrowsmith@brownejacobson.com
Tags: civil litigation reforms, costs budgeting, Court of Appeal, CPR, Henry v NGN, jackson, james arrowsmith
Posted in Commercial Litigation, employer/public liability, Insurance, Litigation, Local Authorities, NHS | No Comments »
Friday, January 11th, 2013
The Government has published a summary of responses to its consultation on the Reform of the UK Designs Legal Framework. The proposed reforms include improving the enforcement regime to promote better understanding of rights, resolving uncertainties around the scope of protection, simplifying laws and improving the provision of information.
Responses indicate that many involved in product design struggle to understand the current UK/community registered and unregistered design rights regime, choosing to rely on the unregistered design right (UDR) and unregistered Community design right (UCD) rather than registered protection. The majority of respondents were in favour of simplifying and harmonising UDR and UCD including chanaging the UDR qualification requirements to match those for UCD.
The responses show the need to simplify and harmonize the design regime as a whole and, as between the different UK and community design right rights, so that designers can select the best type of protection based on their design and business requirements.
Lauren Millward
0115 908 4864
lmillward@brownejacobson.com
Tags: Browne Jacobson LLP, community designs, design protection, Intellectual Property, intellectual property framework, Lauren Millward, registered designs, Retail
Posted in Intellectual Property, Retail | No Comments »
