Posts Tagged ‘Intellectual Property’
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The court decided that Team Lotus owns the goodwill in the Team Lotus name, but that the trade mark has been revoked because it did not use it for a five year period.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 »
Friday, March 25th, 2011
M&S has purchased ‘interflora’ as an adword (a Google search for Interflora now displays an advertising link to M&S’ flower delivery service). Does M&S’ use of the word infringe Interflora’s trade mark rights?
The Advocate General has now provided an opinion in the case of Interflora v Marks & Spencer stating that a trade mark owner can forbid the use of a trade mark in such circumstances where the advertising link:
- is liable to lead some members of the public to believe that the competitor is a member of the trade mark owner’s commercial network; and/or
- displays or mentions the trade mark and the advertiser thereby attempts to benefit from its power of attraction, reputation or prestige
Surprisingly the Advocate General believes that the advertisement may confuse searchers in to believing that M&S is part of the Interflora network. If the court’s hypothetical searchers are so easily confused then adword purchasers will need to select their adverts very carefully.
Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com
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Rating: 9.3/10 (4 votes cast)
Tags: advertising, advocate general, Brands, Intellectual Property, ip, online advertising, Trade Mark
Posted in Advertising & Marketing, Brands, Intellectual Property | No Comments »
Thursday, March 24th, 2011
The case of Dame Vivienne Westwood v Anthony Knight [2011] EWPCC 008 witnessed the first trial heard by HHJ Birss QC under the new Patents County Court (PCC) procedural rules.
Issues of trade mark infringement, copyright infringement, and passing off aside, the judgment has attracted interest because of Judge Birss’ flexible and streamlined approach to trial management.
In particular, the solicitors for the claimant complimented the new regime stating that it provided a “faster, cheaper way of getting expert justice in IP cases”. As an example, the Court ordered a telephone hearing a few days before trial in order to address issues which would have otherwise taken up valuable time at trial.
The case highlights Judge Birss’ hands-on approach to case management and makes the PCC look very attractive as a faster and cheaper alternative to the High Court, particularly for claimants who feel confident that they can fund their case within the £50,000 costs cap.
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: 10.0/10 (2 votes cast)
Tags: Intellectual Property, ip, patents county court, PCC
Posted in Intellectual Property | No Comments »
Thursday, March 24th, 2011
Some encouragement for science, innovation and enterprise was detected in the budget. There is a doubling of Entrepreneurs’ Relief and an increase in tax credit for SMEs which seek to resolve technological or scientific uncertainties or make technological or scientific advancements. Although not all of James Dyson’s recommendations for encouraging innovation were adopted it is a start. Also for those concerned with the science of space exploration, investment of £100m in new research centres was announced. One additional investment caught our eye. Green Investment Bank launch capitalisation increased to £3bn in 2012. The aim of the Bank is to help investors raise money for clean energy projects. Inventors concerned with green projects which may not otherwise receive funding may gain help from the new bank. We thought there was some encouragement for innovators in this budget but will it be enough to repatriate more manufacturing to these shores as the Chancellor hopes.
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
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Rating: 10.0/10 (3 votes cast)
Tags: budget 2011, clean energy projects, entrepreneurs relief, green investment bank, Intellectual Property, sme tax credit
Posted in Intellectual Property | No Comments »
Tuesday, March 1st, 2011
I was always taught, that a company using intellectual property must necessarily either:
A) Own it; B) Be licensing it (from a third party); or C) Be infringing (a third party’s rights)
A case in the Patents County Court last month however has looked at the question – “if you are using copyright material under licence, but fail to pay the ongoing licence fee – are you therefore infringing the owner’s rights?” The answer was no – it is not necessarily an infringement. Even though you are in breach of the licence, so may be in breach of contract, it does not necessarily follow that you are infringing copyright, or that the licensor has a right to terminate the licence.
From a pure contract law perspective, this isn’t that surprising but is a reminder that if you don’t put express wording in a contract, the courts will not imply it for you (so it is worth getting the wording in at the start).
When and how contracts can be terminated for breach is an issue we’ll be covering at the next in house lawyers forums on 16th, 29th and 31st March. Please sign up here if you’d be interested in attending.
Posted by Richard Nicholas, who specialises in commercial, IT and outsourcing agreements, complex projects for private and public sector clients, collaboration, distribution & agency contracts, e-commerce and consumer law.
Richard Nicholas
0121 237 3992
rnicholas@brownejacobson.com
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Tags: copyright, Intellectual Property, IT Contracts
Posted in In-house Lawyers, Intellectual Property, IT Contracts | No Comments »
Friday, February 18th, 2011
Hasbro, owner of the modelling material PLAY-DOH, has succeeded in its trade mark infringement action against the manufacturer of “Yummy Dough”. The objection was to the accompanying strap-line “the edible play dough”. Whilst many may consider this phrase descriptive, especially given that “PLAY-DOH” has an inherently low capacity to distinguish the goods of one undertaking from those of another, the court determined that a global comparison was required. A distinction was drawn between home-made and commercial dough, it being shown that commercial traders generally refrained from using “play dough” in their branding. The strength of the brand (with the benefit of its acquired distinctiveness) apparently justified upholding allegations of infringement and passing of and resisting an invalidity attack. It is surprising that this strapline when used alongside the main “Yummy Dough” resulted in a finding of infringement. The case demonstrates however that less inherently distinctive brands may be enforced provided a relevant section of the public identifies the goods as originating from the trade mark owner.
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: edible play dough, Hasbro, Intellectual Property, passing off, play-doh, trade maarks, Yummy Dough
Posted in Brands, Intellectual Property | No Comments »
Thursday, February 3rd, 2011
The Secretary of State for Culture Jeremy Hunt announced that Ofcom will review the feasibility of the blocking powers created by the Digital Economy Act.
This perhaps shows that the Government has recognised that these powers, as currently envisaged, will be extremely difficult to implement and may do little to stem the tide of online copyright infringement.
The Digital Economy Act, and the anti-filesharing agenda of such creative arts trade associations as the BPI that lies behind it, have been on the ropes for some time. In November last year the High Court granted permission to BT and TalkTalk to judicially review the Act.
Meanwhile a pending decision of the European Court of Justice in Scarlet v Sabam could have a significant impact in the way the UK courts interpret the Act.
The fight is far from over yet but for the moment it seems that the filesharers are having the better of the early skirmishes in what will be a long and bloody battle!”
Posted by Nick McDonald, who specialises in intellectual property law including copyright, patents, trade marks, passing off, design disputes, breach of confidence, database rights and IT.
Nick McDonald
0115 976 6198
nmcdonald@brownejacobson.com
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Tags: digital economy act, Intellectual Property, ip, ofcom
Posted in Intellectual Property | 1 Comment »
Thursday, December 23rd, 2010
The General Court of the European Union has dismissed Lindt’s appeal against the examiner’s decision refusing registration of its 3D reindeer, bunny and bell as Community trade marks. Storck’s chocolate mice also suffered the same fate.
Why? Such shapes are devoid of distinctive character as they are the typical chocolate-shaped goods that one finds in their stocking at Christmas or receives as a gift at Easter, thus they fail to meet the requirements for shape protection under the Community trade mark regime. Unfortunately, the red ribbon collar and little silver bell didn’t help the reindeer and bunny leap over the distinctiveness hurdle either.
Was it the right decision? Well, it was certainly consistent with previous case law (think back to Guylian’s seahorse-shaped chocolate). Also, bearing in mind the ultimate purpose of a trade mark, to act as a badge of origin, the decision must be correct.
Posted by Sarah Fellows, who specialises in non-contentious intellectual property, and IT commercial agreements; familiar with a range of sectors, including technology, biosciences, retail and education.
Sarah Fellows
0115 976 6242
sfellows@brownejacobson.com
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Tags: Intellectual Property, Lindt, trade marks
Posted in Intellectual Property | No Comments »
Friday, December 17th, 2010
The Advocate General (AG) has given his opinion on questions referred by the High Court in the trade mark litigation between L’Oreal and eBay.
L’Oreal argued that in using L’Oreal’s trade marks, eBay (in some cases) directed its customers to infringing goods and that it was involved in the infringements of sellers using its online marketplace.
The AG’s opinion is that on the face of it eBay is not liable for acts of trade mark infringement committed by its customers (since the function of the trade mark should not be affected). However, eBay could become liable, if it was notified of the advertisement or sale of infringing goods, and such infringement by that seller continues or is likely to continue in relation to the same or similar goods.
eBay are said to be pleased with the opinion, though trade mark owners will take comfort from the fact that eBay will have to remove listings for goods of questionable origin and could be liable for future infringement by the same person.
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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Rating: 9.0/10 (1 vote cast)
Tags: Attorney General, Ebay, Intellectual Property, IP Scout, L'Oreal, Trade Mark
Posted in Intellectual Property | No Comments »
Friday, December 17th, 2010
National validation and translation costs currently make the cost of obtaining a patent in Europe around ten times as expensive as obtaining a patent in the USA. In the absence of agreement on proposals for a single EU patent, and in a bid to make the application process cheaper, the European Commission this week presented a proposal for ‘enhanced cooperation’ between some member states. Under the proposal, EU applicants not using English, French or German as their home language can file applications in any other official language of the EU, with the applicant then being reimbursed for the cost of translation into English, French or German. Applicant’s inventions would be protected in all countries participating in the scheme.
Whilst enhanced cooperation may go someway towards reducing costs of applying for patent protection in the EU, this halfway-house measure is likely to detract from the ultimate aim for a fully single European patent.
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: European Commission, Intellectual Property, patent protection, Patents
Posted in Intellectual Property | No Comments »
Friday, December 10th, 2010
Nominet recently considered whether an initially non-abusive domain name registration might become abusive through its later use.
In this case Daniel Stubbs registered a number of spread betting related domain names including worldspreads.co.uk for the purposes of making money through affiliate marketing. The website at the domain initially contained links to generic shopping websites.
WorldSpreads, a well-known provider of financial spread betting services, began trading in the UK two months after the date of Mr Stubbs’ registration and was unable to adduce evidence of prior rights in the UK. The registration was, at that point, legitimate.
Following several approaches by WorldSpreads to purchase the domain, Mr Stubbs changed the content of his website to include links to the websites of WorldSpreads’ competitors.
It was held that, although the initial registration was legitimate, Mr Stubbs’ later use of the domain amounted to abusive use.
This decision will be welcome news to brand owners, and private individuals seeking to profit out of speculative domain name registrations will need to tread more carefully.
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: 9.5/10 (2 votes cast)
Tags: Domain, domain registration, Intellectual Property, Nominet, Trade Mark
Posted in Intellectual Property | No Comments »
Friday, December 3rd, 2010
Last month, in Grimme v Scott, the Court of Appeal considered the test for ‘contributory infringement’ of a patent.
Their interpretation was that someone can infringe simply by supplying “means essential” for using a patented invention if, when supplying, they know (or it is obvious to a reasonable person in the circumstances), that ultimate users will intend to put the invention into effect.
The decision was underlined this week in KCI Licensing v Smith & Nephew. The original judge had found that on the facts it would have been obvious that end users of Smith & Nephew’s wound drainage device might combine it with a clamp, infringing KCI’s patent. The Court of Appeal therefore held that by supplying the device, Smith & Nephew had themselves infringed.
This interpretation of the statute is likely to catch many more ‘indirect’ infringers – companies should be particularly careful when advertising products that they don’t suggest potentially infringing modifications.
Laura Phillips
0115 976 6182
lphillips@brownejacobson.com
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Rating: 9.0/10 (3 votes cast)
Tags: Intellectual Property, patent
Posted in Intellectual Property | No Comments »
Wednesday, December 1st, 2010
The High Court has confirmed that rights infringement of internet hosted material can only occur in the country where the host server is based.
In the case of Football Dataco Limited and others v Sportradar, the claimants ran a site which exploited certain data relating to English and Scottish football matches. Sportradar ran a similar site hosted on webservers in Germany and Austria. Dataco argued that when the British public viewed Sportradar’s site, this infringed Dataco’s UK copyright and database rights. The High Court disagreed.
Whilst this decision does clarify the law on this point, it does not particularly assist in aiding the prevention of online infringement. In fact it may influence some operators to host infringing data on servers in selectively sourced countries…thereby making the protection of intellectual property rights in relation to the internet even more difficult than it already is.
Holly Mitchell
0115 908 4886
hmitchell@brownejacobson.com
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Rating: 5.5/10 (2 votes cast)
Tags: copyright, Intellectual Property, ip, ip infringement, online infringement
Posted in Commercial Litigation, Intellectual Property | 1 Comment »
Wednesday, December 1st, 2010
The Chancellor George Osborne has confirmed that, as part of plans to make Britain more business-friendly and tax-competitive, a new 10% rate of corporation tax will be introduced on profits from certain products developed in the UK.
From 1 April 2013 this reduced rate of corporation tax will apply to profits from patents, but not from other intellectual property. Consultations surrounding the so-called ‘Patent Box’ will now take place. This corporation tax rate change is just one measure unveiled as part of the government’s ‘Corporation Tax Reform’. Others include changing the rules on controlled foreign companies which, by the Chancellor’s own admission are ‘outdated and complex’.
An increasing number of companies are leaving or considering leaving the UK, citing high tax rates, uncertain/complex tax rules and tax red tape among their motivators for so doing. These changes alone may not stem the exodus, but at least it’s a start.
Posted by Beth Dowson, who specialises in taxation aspects of a wide range of property, corporate and commercial matters; provides taxation support to other internal departments.
Beth Dowson
0115 976 6186
bdowson@brownejacobson.com
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Tags: corporation tax, Intellectual Property, Patents
Posted in Tax | No Comments »
Thursday, November 25th, 2010
Following on from our opinion earlier in the year, Nominet (the UK domain name registry) will make available certain single character and two letter domain names.
From 1 December 2010 until 17 January 2011, owners of registered trade marks which match their desired “short” domain name will have the first option to apply, upon providing evidence that they have used their trade mark in the UK before 1 January 2008.
Following this will be a second sunrise period for owners of relevant unregistered marks and then a landrush period before a general release (dates to be confirmed).
Rights holders might be tempted to apply immediately on 1 December. Nominet expects fierce competition for the domain names, but beware! Applications will be published, and rival applications will proceed to an auction. Applicants should consider the potential commercial advantages of filing closer to 17 January, since Nominet has confirmed that where there are rival applications, no priority will be given to the earliest application.
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: domain registration, Intellectual Property, intellectual property law, ip, Nominet, short domain names, short trade marks, Trade Mark
Posted in Intellectual Property | No Comments »
Friday, November 12th, 2010
Earlier this month the Prime Minister announced an independent six-month review of the Intellectual Property system in the UK (the “Technology Blueprint”). He said “…the Government can help make Britain the most attractive place in the world to start and invest in innovative technology companies.” However, much of the discussion around IP neglects the value of trade marks and good branding. Of course protecting creative ideas and expressions by copyright or patent is important, don’t forget the value of a good well protected brand. A trade mark as a badge of origin is important but the mark also indicates an investment in reputation, added value and creativity. When thinking about your IP don’t forget the value of a good brand.
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
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Rating: 8.0/10 (1 vote cast)
Tags: Brands, copyright, Intellectual Property, ip, technology blueprint, trade marks
Posted in Intellectual Property | No Comments »
Friday, October 29th, 2010
JK Rowling and her publisher Bloomsbury have failed to get summary judgment against the estate of Adrian Jacobs who is claiming that the Harry Potter novels infringe copyright in Jacobs’ Willy the Wizard novels by copying that book’s plot and themes.
Rowling and Bloomsbury claimed that Jacobs’ claim should be dismissed summarily, as (a) Rowling had not read Willy the Wizard, and (b) the plot and themes she had allegedly copied were too abstract to be protected by copyright.
The allegations of copying were complex, and the defendants had not disclosed Rowling’s drafts or of her agent’s diaries. Similarly, the judge strongly inclined to the view that no copyright subsisted in the plot and themes, but on neither point was the case clear enough to be suitable for summary judgment.
The matter may roll on to court – but with three firms of solicitors and six barristers involved, the loser could face a very large bill, and hopefully common sense will allow the matter to settle.
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: 7.0/10 (3 votes cast)
Tags: Bloomsbury, copyright, Harry Potter, Intellectual Property, JK Rowling, Wizard Willy
Posted in Intellectual Property | 1 Comment »
Wednesday, October 27th, 2010
The Olympics, Paralympics and London Olympics Association Act 2006 introduced draconian powers that will have serious implications for UK companies that wish to take advantage of the London Games.
The act created the ‘London Olympic Association Right’ which gave the London Organising Committee (LOCOG) substantial powers to prevent unauthorised association between a business’ goods or services and the London 2012 Olympic Games.
The Government has now introduced further Regulations The Olympics, Paralympics and London Olympics Association Rights (Infringement Proceedings) Regulations 2010 (SI 2010/2477) which come into force on 8 November 2010 and give the High Court the power to order the erasure, removal, obliteration or destruction of any offending representations. LOCOG may apply to the court for the delivery up of infringing goods or articles, which may then be destroyed.
The Regulations illustrate what a huge battleground the London 2012 Olympics will become and companies will need to understand the parameters clearly before embarking upon related advertising campaigns.
Posted by Nick McDonald, who specialises in intellectual property law including copyright, patents, trade marks, passing off, design disputes, breach of confidence, database rights and IT.
Nick McDonald
0115 976 6198
nmcdonald@brownejacobson.com
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Tags: Intellectual Property, LOCOG, London Games, Olympic Games
Posted in Intellectual Property | No Comments »
Wednesday, October 20th, 2010
The Chancellor of the Exchequer has announced that the Department of Business, Innovation and Skills will have its administration budget cut by 25 per cent.
In view of the Government’s desire to promote science and innovation at both the corporate and personal level it is crucial that these cost savings do not inhibit intellectual property development.
Costs and time involved in securing protection can still inhibit invention and innovation especially for smaller companies and the taxation of IP and R&D should allow for the time and costs taken to create new IP.
There should also be greater investment in the education of small business about how to identify, protect and exploit the intellectual property which the Government is encouraging.
The UK IPO which is part of the BIS should be properly funded and new ways of expediting applications for registration of rights both in the UK and Europe should be explored.
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
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Rating: 4.5/10 (2 votes cast)
Tags: comprehensive spending review, Intellectual Property, Public Sector
Posted in Comprehensive Spending Review, Intellectual Property | No Comments »
Thursday, October 14th, 2010
Nominet has ordered the transfer of the domain name ihateryanair.co.uk from Robert Tyler to Ryanair.
Robert Tyler registered the domain name and used it for his anti-Ryanair website, which was devoted to criticism of the airline.
Nominet ordered the transfer not because the domain name pointed to a protest site, but because Mr Tyler derived advertising revenue from that site totalling £322 – hardly a fortune.
But maybe Mr Tyler has had the last laugh – he has moved his website to here and has removed the commercial advertisements. Interestingly, at the time of this posting, the domain name ihateryanair.co.uk still points to Mr Tyler’s website.
Conversely a victory for free speech then! Brand owners should beware of the limitations of the Nominet dispute resolution process in relation to criticism websites. If you are looking to manage online content about your brand consider also whether the content is defamatory, or whether your trade mark has been infringed.
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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Rating: 7.0/10 (1 vote cast)
Tags: domain name, Intellectual Property, Nominet, Robert Tyler, Ryanair
Posted in Intellectual Property | 2 Comments »
