Included in this issue: Who has jurisdiction to hear groundless threats case concerning Community design rights?; Operative clauses trump oral representations; Bags of guidance on Community Registered Designs and more...


Who has jurisdiction to hear groundless threats case concerning Community design rights?
  • Court finds that Logitech Europe S.A made a groundless threat to bring proceedings against Tech 21 UK Limited for infringement of design rights in an iPad protection case
  • Test for groundless threats confirmed as an objective test, based on whether the threat suggests that infringement proceedings would be brought in the UK immediately or at some point in the future
  • High Cout had jurisdiction to hear the groundless threat claim but not to make a declaration of non-infringement of the relevant Community unregistered designs

You can read further details here

Operative clauses trump oral representations
  • Claim that a party to a licence agreement was the victim of a misrepresentation as to the nature of the licensed patent rights
  • The operative clauses of the agreement portray the true picture
  • Reminder of the importance of checking that the licence terms match what was promised

You can read further details here

Bags of guidance on Community Registered Designs
  • EU General Court rejects invalidity proceedings for Community Registered handbag design
  • Court examines key elements of a Community Registered Design (CRD)

You can read further details here

The perils of disclosing patent details in the internet age
  • Latest in a series of patent cases involving global telecoms giants
  • Accusation that patent was invalid through lack of novelty
  • If information is published on the internet on the same day as claiming priority (but available in some time zones on the previous calendar day) can this amount to a disclosure of prior act?

You can read further details here

Account of Profits for patent infringement
  • Rare guidance from the Court of Appeal on how to assess an account of profits
  • Is the infringer liable for the whole of the profits made where the infringing items are sold as part of a larger product?
  • Is the infringer allowed to deduct any part of their general overheads?

You can read further details here

Co-existing in the internet age
  • Co-existence agreement dating back to the First World War upheld by court
  • Use of the trade mark on the internet accessible from the prohibited territory
  • Irrelevant that only certain territories targeted by the website

You can read further details here

Putting groundless threats to bed
  • Owner of rights in bed linen and packaging designs claims infringement by a competitor
  • Use of eBay's VeRO programme to assert rights
  • Can this amount to a groundless threat?

You can read further details here

A case of registered design infringement
  • Final word from the Supreme Court on the design infringement battle between Trunki and the Kiddee Case
  • Court must form an "overall impression" of a design when considering infringement
  • Trunki's "horned animal" different from the "inset with antennae" or "animal with ears" of the Kiddee Case

You can read further details here

Licences and joint ventures: why contract terms should be "crystal clear"
  • Court finds a jewellery business did licence its partners in an informal joint venture to use some of its intellectual property
  • Licence was not written down so some uncertainty over its scope
  • Court clear that although an unwritten licence is revocable, the intention to terminate must still be clearly communicated

You can read further details here

Article 28 - European Union trade mark owners must review the scope of protection of their registrations
  • Owners of European Union trade mark registrations filed before 22 June 2012 need to review the scope of protection of those trade marks that have been filed for the individual Class Headings of the Nice Classification, to ensure that they still accurately reflect the scope of protection required
  • Where the normal meaning of the wording of the Class Headings does not accurately describe the scope of protection being claimed, a request should be filed under Article 28 EUTMR 2015/2424 to declare exactly what goods and services are to be covered by the registration
  • This process is not compulsory, but any request must be filed before 24 September 2016

You can read further details here

Strictly Japanese
  • Accusation that Defendant was in breach of a settlement agreement
  • Settlement agreement more restrictive than was argued in the original passing off case
  • High Court follows rule that words should be given their ordinary and natural meaning

You can read further details here

Re-branding by parallel importers
  • High Court holds that the re-branding by parallel importer has infringed the pharmaceutical trade mark of the proprietor
  • No exhaustion of rights: drugs not previously placed on the market in the EU by the Claimant

You can read further details here

Keeping a lid on patent litigation costs
  • Defendant seeks permission to attend its Defence and Counterclaim
  • Defendant claims that the Claimant had disclosed patent information prior to the priority date
  • Permission refused by both IPEC (the Intellectual Property Enterprise Court) and the High Court

You can read further details here

Key contact

Emma Armitage

Emma Armitage

Partner, Dispute Resolution, Intellectual Property
London

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