Archive for the ‘Intellectual Property’ Category
Friday, September 23rd, 2011
The European Court of Justice (ECJ) has given its preliminary ruling on the the questions referred to it by MR Justice Arnold concerning the use of a competitor’s trade mark as a keyword.
The ECJ ruled (amongst other points):
- a trade mark proprietor can prevent a competitor from using a keyword identical to their own trade mark to advertise goods or services identical to those covered by their trade mark where such use is liable to have an adverse effect on the functions of the trade mark: the ‘indicating origin’ function of a trade mark will be adversely affected if the advertising displayed as a result of the keyword does not enable an internet user to ascertain whether the goods or services advertised originate from the trade mark proprietor or a third party.
- the proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark where the competitor takes unfair advantage of the distinctive character or reputation of the trade mark or where the advertising is detrimental to that distinctive character.
The first point is unsurprising – its what we’ve been seeing in the national court rulings. However, it will be interesting to see how broadly the second point is interpreted by the English courts.
Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.
Sara McNeill
0121 237 3930
smcneill@brownejacobson.com
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Rating: 7.0/10 (1 vote cast)
Tags: advertising, Brands, browne jacobson, ECJ, European Court of Justice, Intellectual Property, keywords, Marks & Spencer verse Interflora, Sara Mcneill, Trade Mark, trade marks, Trademarked words
Posted in Brands, Intellectual Property | No Comments »
Monday, September 19th, 2011
With its recent acquisition of 1,023 patents from IBM, Google now owns approximately 20,000 patents.
Previously, Google has lagged behind its competitors in developing a substantial patent portfolio and, as a result, has been seen in some quarters as vulnerable to patent infringement litigation. However, following its acquisition of Motorola Mobility in August, and the recent acquisition of patents from IBM, Google has put itself in a position where it could respond to infringement threats with its own ‘cold war’-like threat of mutually assured destruction. Alternatively, Google may be plotting its own infringement claim offensive.
Patents are increasingly the weapon of choice for technology companies looking to maintain a competitive edge. A potentially beneficial result of this is that the need to avoid a competitor’s patents may sometimes promote innovation and create new patentable technologies.
In the meantime, no comfort is given to smaller companies, which may struggle to afford the costs of ensuring that their innovative ideas do not infringe the patent portfolios of the technology “super-powers”.
Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.
Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com
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Rating: 7.5/10 (2 votes cast)
Tags: competitive edge, Google, IBM, infirngement claim, infringement threat, innovation, Motorola Mobility, patent infringement, patent portfolio, patentable technologies, Patents
Posted in Competition, Intellectual Property, IT Contracts, Licensing | No Comments »
Friday, September 16th, 2011
Under recently proposed rules, the police and other authorities may obtain the power to suspend ‘.uk’ domain names, without obtaining a court order, by making a request to Nominet, the UK domain name registry, to prevent ‘serious & immediate consumer harm’.
Whilst Nominet has always held a power of suspension, previously used in cases of incorrect registration, their current regulations do not provide a formal procedure for blocking domain names as a result of criminality.
Some commentators have expressed concern about which agencies will be able to request suspensions, and an appeal process together with a periodic policy review are likely to be required.
It seems likely that new procedures will be introduced, and if so these should provide victims of counterfeiting and copyright infringement with another valuable tool for taking action against online infringers.
Laura MacKenzie
0121 237 3959
lamckenzie@brownejacobson.com
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Rating: 9.5/10 (2 votes cast)
Tags: .uk, counterfeiting and copyright infringement, domain names, Nominet, UK domain name registry
Posted in Intellectual Property | No Comments »
Thursday, August 11th, 2011
Its apparent that social media has been used extensively by those involved in the riots to organise and incite unrest. BlackBerry Messenger (BBM) has been the most popular method of communication with messages then being posted on social network sites like Twitter and Facebook to increase circulation.
Research in Motion, the maker of BlackBerry and a global leader in wireless technology, has committed to assist the authorities ‘in any way it can’ and the police have said they will track down and arrest those who have posted ‘really inflammatory’ messages on BBM and social network sites.
However, its going to be a difficult task due to the number of messages involved, potential resistance from media companies to handover user details and, because BBM messages are usually encrypted when they leave the sender’s phone making tracing calls difficult.
The police will have to adapt their own policing methods to tackle this use of technology as a means of organising unlawful activities.
Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.
Sara McNeill
0121 237 3930
smcneill@brownejacobson.com
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Rating: 10.0/10 (1 vote cast)
Tags: BBM, BlackBerry Messenger, Facebook, Reasearch in Motion, riots, Social Media, Twitter
Posted in Brands, Data Protection, Intellectual Property | No Comments »
Friday, August 5th, 2011
On 3 August, the Government announced its full support for the recommendations made in the Hargreaves Report on intellectual property and growth.
The Government revealed its goal to “have measures in place by the end of this Parliament” and will prepare more detailed proposals for consultation. The report’s recommendations include:
- the creation of a digital copyright exchange which would assist the buying and selling of digital copyright licences and add up to £2.2 billion to the UK economy by 2020
- allowing copying of data for private purposes or where it does not damage the underlying aims of copyright, which would enable private users to copy media from one format to another (e.g. copying iTunes tracks onto a CD)
- adapting the patent and design frameworks to enable IP law to keep up to date with technology and business practices.
The Government’s response demonstrates a commitment to assist UK businesses in using intellectual property but it remains to be seen how, and whether, such assistance will be given.
Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com
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Tags: copyright, design frameworks, hargreaves report, Intellectual Property, Patents, Vince Cable
Posted in Intellectual Property | No Comments »
Wednesday, August 3rd, 2011
The European Court of Justice has previously held that trade mark proprietors cannot object to pharmaceuticals being repackaged if repackaging is necessary to market the product, it does not affect the products’ condition, the packaging clearly identifies the repackager, is not defective, and the importer gives notice to the trade mark proprietor.
Merck brought two cases complaining that various companies had infringed its trade marks by selling repackaged products which stated the repackaging had been carried out by one company when it had actually been carried out by another company in the same group.
Last week the court held that Merck’s rights were sufficiently protected by the companies marketing the pharmaceuticals putting their name on the packaging and therefore there was no trade mark infringement.
It is also worth noting the court’s previous comments that derogations from free movement of goods will only be permitted to the extent necessary to protect the specific subject matter and the essential function of a trade mark.
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
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Tags: European Court, ip, Merck, pharmaceuticals, trade marks
Posted in Intellectual Property | No Comments »
Thursday, July 28th, 2011
A prop designer engaged by Lucasfilm to manufacture Stormtrooper helmets for the first Star Wars film has recently won his copyright battle to continue selling replicas in the UK.
The first issue addressed by the Supreme Court was to confirm that the Stormtrooper helmet was not a “sculpture” and therefore not an “artistic work”. Under English law, the helmets were therefore protected by design right (which has a shorter term of protection) and not by copyright.
The second issue was whether US copyright could be enforced in the English courts. Overturning the Court of Appeal’s finding on this issue, the Supreme Court held that it could. In a world of prolific cross-border trade and e-commerce this has to be the right decision, giving rights holders increased protection against international piracy.
Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.
Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com
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Tags: copyright, Court of Appeal, designs, international piracy, jurisdiction, Lucasfilm, Star Wars, stormtrooper helmets, Supreme Court
Posted in Intellectual Property | No Comments »
Monday, July 25th, 2011
In its eleventh programme of reform, the Law Commission has announced it will consider reforming the laws relating to groundless threats.
Currently, groundless threats of trade mark, design or patent litigation can be causes of action themselves.
Sabre rattling should obviously be discouraged, particularly as just the threat of infringement can be enough to make customers defect to rightsholders to avoid the threat of litigation.
But businesses harmed by allegations of infringement are often reluctant to bring a claim for groundless threats, particularly as they could be ordered to provide security for the rightsholder’s costs. When claims for groundless threats are brought, the costs can be disproportionate to the damage done by a threat. And in practice, the threats provisions can cause costs to increase, because rather than encouraging a litigant to set out its case clearly (which could result in an early settlement), litigants may seek to artificially narrow their claim to avoid threats actions.
So whilst the rationale behind the threats provisions is admirable, in practice they do not function effectively. Part of the solution may be amendment to the Civil Procedure Rules to allow declarations that threats are unjustified to be brought cheaply and quickly.
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
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Tags: designs, groundless threats, Intellectual Property, Law Commission, Patents, trade marks
Posted in Intellectual Property | No Comments »
Monday, July 25th, 2011
The dispute between broadcasters ITV, Channel 4 and Five and online streaming company TV Catchup has been referred to the European Court of Justice (ECJ).
TVCatchup provides a quasi-live service, relaying free-to-air TV channels to UK members. ITV (etc) claimed that this infringed their copyright by “communicating to the public”, by electronic transmission, their films and broadcasts. TVCatchup argued that the relevant legislation had been amended improperly and was therefore invalid.
The judge provisionally found that the transmissions were “communicating to the public”, although he thought that they only reproduced a substantial part of ITV’s films, not of their broadcasts; also, for some reproductions TVCatchup may have a defence of “incidental” copying. However, he felt these issues needed clarification from the ECJ.
A final judgment may be years away allowing TVCatchup in the meantime to continue profiting from its services and must surely be a bitter pill to swallow for the broadcasters.
Laura Phillips
0115 976 6182
lphillips@brownejacobson.com
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Tags: copyright, copyright infringement, incidental copying, Intellectual Property, online streaming, TV Catchup
Posted in Intellectual Property | No Comments »
Monday, July 4th, 2011
The heat looks set to intensify in the telecoms industry as it was announced last week that a consortium of six telecoms companies including Apple, Microsoft, Sony, Research In Motion, Ericsson, and EMC successfully bid against Google and Intel to acquire a portfolio of more than 6,000 patents and patent applications relating to wireless and networking technology, including 4G, from bankrupt Canadian telecoms giant Nortel Networks. The final sale price was at least twice that anticipated.
Google began the bidding, expressing an interest in the portfolio as valuable protection for disputes, particularly relating to Smartphone technology and also Google’s android technology, already the subject of a $6.1bn damages claim from Oracle.
The deal still requires approval from the US and Canadian courts but with the consortium members having a reputation for an aggressive approach to patent litigation no doubt this portfolio will quickly find its way to court with hefty damages claims being asserted.
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
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Tags: Apple, EMC, Ericsson, Google, Microsoft, networking technology, patent applications, Patents, Research in Motion, Sony
Posted in Intellectual Property | No Comments »
Friday, June 24th, 2011
The Government has issued its second consultation on its ‘Patent Box’ scheme which aims to cut the tax rate on profits generated from patents held by UK businesses to 10%.
Qualifying patents are patents granted by the UK Intellectual Property Office and the European Patent Office only. However the scheme will apply to worldwide income earned by UK businesses as well as income from the sale of qualifying patents.
The Government has acknowledged that its initial proposal that the Patent Box would only apply to all qualifying patents first commercialised after 29 November 2010 is not a workable option and has proposed as an alternative phased in transition which extends the benefits of the scheme to all qualifying patents.
These proposals are encouraging but there are still some issues around how the profits attributable to qualifying patents will be calculated. UK organisations must review the proposals carefully within the context of their own business and feedback any issues before the deadline of 2 September 2011.
Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.
Sara McNeill
0121 237 3930
smcneill@brownejacobson.com
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Tags: European patent Office, Patent box, Patents, UK businesses, UK Intellectual Property Office
Posted in Intellectual Property | No Comments »
Friday, June 24th, 2011
Science has long grappled with the problem of three buses coming at once. Amazingly, the new PCC rules provide a solution.
Temple Island (TI) owns the copyright in a photograph of a bus near Westminster and is suing New English Teas (NET) for using a similar photograph.
In court, TI applied to amend their claim to refer to another photograph which they said was even more similar to NET’s photograph, claiming it could have been ‘clandestinely’ or ‘subconsciously’ copied .
The court applied the cost-benefit test from the Civil Procedure Rules governing the Patents County Court. This says that material will only be admitted if the court is satisfied that the value of material in resolving issues justifies the cost of dealing with it.
The judge said that allowing the amendment would introduce a jungle of issues into an otherwise straightforward matter and would not help the Claimant’s case – so the amendment was refused.
Litigants will be pleased to see active case management which narrows issues and save costs.
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
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Rating: 8.0/10 (1 vote cast)
Tags: civil procedure rules, copyright, New English Teas, patents county court, Temple Island
Posted in Intellectual Property | No Comments »
Friday, June 24th, 2011
Richard O’Dwyer, a 23 year old computer science student, faces extradition proceedings at the hands of US Immigration and Customs Enforcement (ICE) in relation to allegations of copyright infringement. Mr O’Dwyer is accused of creating and running a website which allowed users to view and download copyrighted material.
Given that the website was created and hosted in the UK it seems strange that ICE is so keen for Mr Dwyer to be charged in the US. The findings of HHJ Ticehurst in the TV-Links case back in February 2010 may have provided Mr O’Dwyer with a defence in the UK, whereas charges in the US legal system may be much more difficult to defend, particularly given the lack of state legal aid.
Given the furore over the UK’s extradition rules resulting from the US’ attempts to extradite hacker Gary McKinnon it will be interesting to see the approach taken by the UK courts in this case, which appears to relate to considerably less serious allegations.
Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com
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Rating: 9.0/10 (1 vote cast)
Tags: copyright, copyright infringement, extradition proceedings, Gary McKinnon, HHJ Ticehurst, Richard O'Dwyer
Posted in Intellectual Property | No Comments »
Tuesday, June 21st, 2011
IP Minister Baroness Wilcox launched the UK’s six month Peer to Patent pilot on 1 June. The project is aimed at encouraging experts within the community to assist with the review of patent applications (initially in the field of computing) and to research and upload relevant prior art for consideration. The hope is that this will lead to weaker patents being sifted out earlier and those patents that are granted being stronger.
Though there have been concerns that peer review could be negative with competitors attacking rival applications, earlier trials in the US and Australia appear to have been largely successful and so there is little reason to suspect that results in the UK will be significantly different. The real test may, however, come later when we see whether the project can be extended to other fields of technology.
Posted by Emma Tuck, who specialises in Intellectual property disputes relating to patents, trade marks, designs and copyright; non-contentious intellectual property matters including advising on licensing, assignment, confidentiality and collaboration agreements
Emma Tuck
0121 237 3908
etuck@brownejacobson.com
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Tags: baroness wilcox, Intellectual Property, patent applications, peer to patent, prior art
Posted in Intellectual Property | No Comments »
Thursday, June 16th, 2011
The long standing dispute between the creators of Miffy and Hello Kitty’s companion Cathy has finally been settled.
Miffy, a small white female rabbit, was created in 1955 by Dick Bruna. Cathy, also a small white female rabbit, was created by Sanrio in 1976.
In 2010 Mercis Media BV (Mr Bruna’s copyright management firm) brought trademark and copyright infringement proceedings against Sanrio. Why it took Mr Bruna 34 years to bring proceedings is unclear…
Sanrio was ordered to stop production, sale and marketing of Cathy character goods in the Netherlands, Belgium and Luxembourg and to pay €25,000 per day if it did not comply, up to a maximum of €2m.
Sanrio appealed and filed a counter claim seeking the Miffy trade mark be removed from the register.
The matter has now been resolved, with Sanrio agreeing to no longer use the Cathy character. Both parties have also agreed to donate €150,000 jointly to the victims of the Japan earthquake. A very commendable settlement indeed.
Oliver Laing
0115 908 4854
olaing@brownejacobson.com
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Tags: Brands, copyright, copyright infringement, hello kitty, Intellectual Property, ip, miffy, Trade Mark
Posted in Brands, Commercial dispute resolution, Commercial Litigation, Intellectual Property | No Comments »
Friday, June 10th, 2011
The English High Court has handed down its judgement in the legendary trade mark dispute between Team Lotus and Group Lotus.
The court decided that Team Lotus owns the goodwill in the Team Lotus name, but that the trade mark has been revoked because it did not use it for a five year period. This means that Team Lotus can still enforce its unregistered rights in the name. The court also found that Team Lotus is entitled to register new trade marks for Team Lotus. Team Lotus was also found not to have infringed the Group Lotus trade marks.
However, Team Lotus could not prevent Group Lotus from racing in Formula 1 using the JPS black and gold livery, and it was found to have breached an earlier licensing agreement entered into with Group Lotus.
Perhaps the proof of the pudding is in the eating – both teams can continue to line up at this season’s Grand Prix with the names and liveries they were using before the judgment!
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
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Tags: Intellectual Property, lotus, mark daniels, passing off, trade marks
Posted in Intellectual Property | No Comments »
Tuesday, May 24th, 2011
Mr Justice Tugendhat recently held that “the court does not grant injunctions which would be futile”.
But yesterday, Tugendhat refused to remove the anonymity granted to the claimant in CTB v News Group Newspapers even though his identity had been disclosed in parliament.
The judge said that the question that had been asked in parliament about it and the “tens of thousands of people” that named the claimant strengthened the claimant’s claim to need protection, and the order remains in place to protect him from “taunting and other intrusion and harassment in the print media”.
The courts held in the Spycatcher case that confidentiality is destroyed by public dissemination – but the purpose of a privacy injunction is not just to keep a matter secret – it is also there to prevent intrusion and harassment. The decision is courageous and well reasoned – but it must rather grate with businesses that are told that they cannot prevent continued misuse of their confidential information once it has become public.
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
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Tags: CTB v News Group Newspapers, Mr Justice Tugendhat, privacy injunction, spycatcher, superinjunction
Posted in Intellectual Property | No Comments »
Thursday, May 19th, 2011
A review of the UK’s intellectual property framework has urged that IP laws should be changed to promote economic growth and adapt to internet-based businesses.
Some key suggestions include:
- establishing a digital copyright exchange, enabling automated licensing
- allowing licensing of ‘orphan’ works (with no identifiable author)
- incorporating into UK law a number of copyright ‘exceptions’ including for, private copying/‘formatshifting’ (e.g. from CD to mp3 player), parody and non-commercial research for all copyright works
- protecting exceptions from being overridden in contracts
- introducing a small claims track in the Patents County Court
In reality, many of the ‘exceptions’ proposed simply reflect what the public expects in the internet age, by removing the confusion caused by rights which it is impossible or impractical to enforce. However, rights holders will be pleased to note that calls for a broader ‘fair use’ defence were rejected.
Laura Phillips
0115 976 6182
lphillips@brownejacobson.com
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Tags: copyright, digital copyright exchange, intellectual property framework, patents county court
Posted in Intellectual Property | No Comments »
Monday, May 16th, 2011
The Advocate General (AG) has advised the ECJ to dismiss Pepsico’s appeal against an invalidity ruling concerning a design for promotional discs known as “pogs”.
Pepsico’s design was challenged on the basis that it did not have individual character having regard to an earlier CRD. A design has individual character if it creates a different overall impression on the informed user than designs which were available to the public before the filing date of the design. When assessing individual character, the degree of freedom of the designer in developing the design is considered.
The AG recommended dismissing the appeal on the grounds that assessing individual character and design freedom are questions of fact, which can only be re-considered by the ECJ in the case of distortion.
Because “overall impression” can only be subjectively assessed, and cases will almost always turn on their facts, litigants are likely to find it extremely difficult to appeal cases to the ECJ.
Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.
Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com
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Tags: advocate general, ECJ, indvidual character, Pepsico, pogs
Posted in Intellectual Property | No Comments »
Friday, May 13th, 2011
In a beautifully ironic twist, the secret confidentiality agreement imposed by Wikileaks (described as being “at the forefront of anti-censorship” on its own website) on its employees has been leaked to the press.
The confidentiality agreement states that any significant breach of its terms will result in a loss to Wikileaks of £12,000,000, which it would then attempt to recover from whichever employee dared to leak information to the outside world. Luckily for the employees, it seems unlikely that this monumental figure is a genuine and reasonable pre-estimate of loss, meaning that the courts would be very unlikely to allow Wikileaks to claim such a sum.
The agreement also gives examples of how such loss may be caused to Wikileaks, the first listed being “loss of opportunity to sell the information to other news broadcasters and publishers”. It seems unlikely that the sources who risk their livelihoods to provide information to the public would be happy for it to be commercialised in this way.
Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com
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Tags: anti-censorship, confidentiality agreement, employment, Wikileaks
Posted in Employment, Intellectual Property | 1 Comment »
