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Articles, Case Notes, Presentations and In-depth Discussion of IP and Technology Law.

Updated: 2017-06-22T03:34:45.517+01:00


Cakes and Copyright


Jane Lambert According to the BBC, the US food blogger Elizabeth  LaBau has brought proceedings against the publishers of The Food Network for copyright infringement (see "US food blogger sues Food Network over snow globe cakes"  3 June 2017). Copyright infringement falls within the jurisdiction of the federal courts in the USA so I looked up recent filings in the US District Court

Resolving IP Disputes at Trade Fairs


Jane Lambert The European IPR Helpdesk, an EU-funded collaboration between Infeurope SA, Eurice GmbH and L'Institut de la Propriété Intellectuelle Luxembourg to provide free, first-line advice and information on intellectual property, has recently published two fact sheets on IP and trade fairs. The first, which is entitled Intellectual property management at trade fairs, is

Trade Marks - The KitKat Appeal: How does a Shape Mark acquire Distinctiveness?


Jane Lambert Société Des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358 (17 May 2017) Unregistered design right subsists for no more than 15 years. A design registration for only 25. But a trade mark registration can last forever. That no doubt explains why La Société des Produits Nestlé S.A ("Nestlé") has persevered with this case despite losing to Cadbury UK Ltd ("

Protecting FinTech Innovation


An early form of FinTech Photo HBSource Wikipedia Jane Lambert A lot of money is going into FinTech (financial services technology) in this country and overseas nowadays including accelerator programmes promoted by our central bank and one of our major clearers (see the Bank of England's FinTech page and the Barclays Accelerator as well as details of the other

Intellectual Property (Unjustified Threats) Bill


Houses of Parliament Source Wikipedia Jane Lambert The action arising from groundless threats has been one of the most perplexing features of our intellectual property law both for foreign owners of IPR in this country and their legal advisors (see Prince Plc v Prince Sports Group Inc [1998] FSR 21) and even non-specialist lawyers in the United Kingdom (see Brain v Ingeledew

General Civil Restraint Orders in IPEC - Perry v Brundle


Royal Courts of Justice Photo Michael ReeveCreative Commons Licence Jane Lambert Perry v F H Brundle and Others [2017] EWHC 678 (IPEC) (30 March 2017) Para 1 of the Part 3C Practice Direction, which is made pursuant to CPR 3.11, enables the court to make a range of orders known as "civil restraint orders" against a party which has issued claims or made applications

Court of Appeal upholds Birss J in Unwired Planet v Huawei


Jane Lambert Court of Appeal Unwired Planet International Ltd v Huawei Technologies Co Ltd [2017] EWCA Civ 266 (12 April 2017) Lords Justices Gross and Floyd and Mr Justice Arnold  In Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others [2015] EWHC 3366 (Pat) (23 Nov 2015), Unwired Planet sued Huawei, Samsung and Google for patent infringement. The patent in

Other Articles of Interest


CIPA's York Meeting IP Yorkshire 10 April 2018 I was one of the speakers at CIPA's York meeting at the Principal Hotel. The others were Louise Edwards of Mazars, David Bloom of Safeguard IP and Kalim Yasseen of the IPO. Tony Rollins chaired the meeting. I spoke about litigation after 28 March 2017 when the EU treaties will cease to apply and considered the litigation framework we are likely

Falling to BITs: the Eli Lilly and Philip Morris Cases


Jane Lambert In anticipation of our departure from the European Union. Her Majesty's government and businesses in the United Kingdom have been exploring the possibility of developing new markets for British goods and services overseas. Only this week, the Prime Minister visited Saudi Arabia and Jordan (see Prime Minister's visit to Saudi Arabia and Jordan: April 2017 4 April 2017 HMG's

Case Note: Jushi Group Co Ltd v OCV Intellectual Capital LLC


Strands of Glass Fibres Author NoiseDSource WikipediaCreative CommonsLicence  Jane Lambert Jushi Group Co Ltd v OCV Intellectual Capital LLC [2017] EWHC 171 (IPEC) (06 Feb 2017)  This was a claim by the Jushi Group Co. Ltd. ("Jushi") for declarations of invalidity and non-infringement and the revocation of European patent number 1 831 118 for glass

Patents: Wobben v Siemens - Blowing in the Wind


Offshore Wind Farm Photo Anke HueperSource WikipediaCreative Commons Licence Jane Lambert Wobben Properties GmbH v Siemens Public Ltd Company and Others [2017] EWCA Civ 5 (19 Jan 2017) The claimant company, Wobben Properties GmbH is the registered proprietor of European patent  EP0847496 for a method of operating a wind power station.  The invention is described as

Case Note: Bhayani v Taylor Bracewell LLP - Goodwill generated by a Partner or Employee


Jane Lambert Bhayani and Another v Taylor Bracewell LLP [2016] EWHC 3360 (IPEC) (22 Dec 2016) In Reckitt and Colman Products Ltd v Borden Inc, and Others, [1990] 1 WLR 491, [1990] RPC 341, [1990] 1 All ER 873, [1990] WLR 491, [1990] UKHL 12 discussed the elements of an action for passing off. The first of those elements was  "a goodwill or reputation attached to the goods or

Just where does Mrs May's Speech leave the Unified Patent Court?


Rt. Hon. Theresa May MP Author: Home officeSource: WikipediaCreative Commons Licence Jane Lambert In her Lancaster House speech of the 17 Jan 2017 (the transcript of which can be found on The Independent's website) the Prime Minister acknowledged that "Britain might at times have been seen as an awkward member state" However, there is one policy upon which we have always



Victoria Plums Author RasbakSource WikipediaCreative Commons Licence Victoria Plum Ltd (t/a Victoria Plumb) v Victorian Plumbing Ltd and Others [2016] EWHC 2911 (Ch) (18 Nov 2016)  Mr Justice Henry Carr In this case, Victoria Plum Ltd. had registered the words VICTORIA PLUMB as a UK trade mark in relation to a range of goods and services in classes 11, 20 and 35

Where can you sue for trade mark infringement or passing off: AMS Neve v Heritage Audio


Author NuclearVaccumSource WikipediaCreative Commons Licence AMS Neve Ltd and Others v Heritage Audio S.L. and Another [2016] EWHC 2563 (IPEC) Mark Vallance Crabtree and Barnett Waddingham Trustees Limited are the registered proprietors of three trade marks for sound recording and processing equipment that are used by AMS Neve Ltd. in its business. Two of those are UK

The Pregabalin Appeal: Generics v Warner Lambert


Author AcdxSource WikipediaCreative Commons Licence Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2016] EWCA Civ 1006 (13 Oct 2016) This was an appeal against two of Mr Justice Arnold's judgments. The first was his decision in Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 2548 (Pat) which I discussed in The Pregabalin Trial: Generics

Trade Secrets: Kerry Ingredients v Bakkavor Group


Kerry Group's Headquarters in Tralee Author: Hajotthu Source: WikipediaCreative Commons Licence Kerry Ingredients (UK) Ltd v Bakkavor Group Ltd and Others [2016] EWHC 2448 (Ch) (7 Oct 2016) Mr Justice Newey The issue in this case was whether a food manufacturer that had received secret information on the manufacture of edible infused oils from its supplier for health

The Cialis Litigation - Actavis Group PTC EHF and Others v Icos Corp and Another


A wife complaints to the Qadi about her husband's impotence Artist: Hamse-i Atai (18th century Ottoman miniature) Source Wikipedia Mr Justice Birss: Actavis and Others v Eli Lilly and Another [2016] EWHC 1955 (Pat) (10 Aug 2016)  Although it is not spelt out anywhere in the 492 paragraphs and annexes to Mr Justice Birss's judgment, this complicated

Tripping: TripAdvisor v Handsam


Handsam Ltd. describes itself as "a leading provider of online management systems, consultancy services and advice to both the business and education sectors." Its specialisms include health and safety management, policy writing and advice in all areas, security, fire, training and data protection. It has recently extended its online services to include a school trip planning system. Its systems

Injunctions against ISPs: The Cartier Appeal


Cartier Watch Author Noop1958 Creative Commons Licence Source Wikipedia Cartier International AG and Others v British Sky Broadcasting Ltd and Others [2016] EWCA Civ 658 (6 July 2016)  In  Cartier International AG and Others v British Sky Broadcasting Ltd and Others [2015] ETMR 1, [2015] 1 All ER 949, [2014] EWHC 3354 (Ch), [2015] RPC 7, [2014] WLR(D) 464, [2015] 1 All ER (Comm)

The Trade Secrets Directive


The adoption by the Council and European Parliament of Directive (EU) 2016/943 of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure (OJ 15.6.2016 L 157/1) ("the Trade Secrets Directive") seems to have been overlooked in the furore over Brexit. The directive lays down rules on the

What Sort of IP Framework do we need after Brexit and what are we likely to get?


The UK and the remaining Member States of the EU Source Wikipedia There was a bad reason for voting to leave the European Union and a good one. The bad reason, which was probably the one for which most leavers voted, was that art 45 of the Treaty of the Functioning of the European Union stimulated competition in the labour market. The good reason, of which I was and

Sometimes a Euro-Defence does work: Samsung v Ericsson


European Commission Author: Amio Cajander Source Wikipedia Creative Commons Licence A Euro-defence is an answer to a claim for the infringement of an intellectual property or other right under national law based on the primacy of European Union law. In the early days of our membership of what used to be called the European Economic Community such defences were

The IP (Unjustified Threats) Bill


Minister for Intellectual Property Crown CopyrightOpen Government Licence On 19 May 2016 Lady Neville-Rolfe, the Minister for Intellectual Property, introduced the Intellectual Property (Unjustified Threats) Bill into the House of Lords. The purpose of the Bill is to reform the law relating to unjustified threats of IP infringement. The need for reform is illustrated

Up the Spout: Bapco Closures v Selpac


In Bapco Closures Research Ltd and Another v Selpac Europe Ltd [2016] EWHC 550 (IPEC) (18 March 2016), His Honour Judge Hacon had to decide a very short but very interesting point of claim construction. The patent in suit was European patent (UK) No 1, 656, 306 B1 which had been granted to Bapco Closures Research Ltd ("Bapco") for an opening device for a foil closure (that is to say, a ring pull