Included in this issue: IPEC dismisses defendants' Russian doll arguments in copyright claim; European Court provides guidance on re-packaging of medical devices; High-heeled shoes paint the town red in trade mark dispute.


IPEC dismisses defendants' Russian doll arguments in copyright claim  

  • Claim of copyright infringement in relation to greeting cards designs
  • Multiple arguments from defendants that claimant did not own the relevant designs
  • Consideration of the presumption that if a work names someone as the author, then that person owns the copyright in question

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European Court provides guidance on re-packaging of medical devices

  • Claim from manufacturer of medical dressings that a parallel importer's re-packaging of its goods infringed its trade mark
  • CJEU considered application of principles in cases of Bristol-Myers Squib and Boehringer Ingelheim which dealt with re-packaging of pharmaceutical products
  • CJEU's ruling may give certainty to parallel importers that affixing certain types of labels to packaging will not lead to a finding of trade mark infringement

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Court of Appeal unmoved by Bee Moved appeal

  • Statement made on a third party website that a business was a member of a trade body
  • Business itself unaware of the existence of the statement
  • Can a business be said to have 'made' a representation on a webpage for which it has no responsibility?  

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A FRAND-ly ruling towards the English Courts in patent dispute

  • Owner of global patent portfolio for mobile phone technology claims infringement by Chinese-based manufacturer
  • Manufacturer argues that as the portfolio is comprised mainly of Chinese patents, that China is the appropriate place for a claim to be heard
  • Does the English court have jurisdiction to hear a claim for the infringement of UK patents where the relief sought is a global FRAND licence?

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Court finds that the feeling's not "mutual"

  • Use of the word 'mutual' in a business' trading name in connection with the sale of financial services products
  • Claim of passing off on the basis that the business was not a mutual entity
  • Does 'mutual' indicate a distinct type of entity thus creating goodwill?

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High-heeled shoes paint the town red in trade mark dispute

  • Claim that the trade mark protecting the famous red sole of Christian Louboutin high-heeled shoes should be declared invalid
  • Consideration of the rule that signs consisting exclusively of a shape cannot be validly registered as a trade mark
  • Analysis of a trade mark consisting of a colour applied to the sole of a shoe

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Website blocking orders: the final chapter

  • Previously established that Courts can grant website blocking orders against internet service providers
  • Who should meet the costs of implementation?
  • Supreme Court has final word

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Computer says "no": high court refuses permission to serve Google out of the jurisdiction in copyright infringement proceedings

  • Copyright infringement and breach of contract claims against Monaco Telecom and California-based Google LLC
  • Case involves "hotlinking" and highlights the difficulty of bringing effective copyright claims when content is stored on different servers in different jurisdictions
  • High Court refused permission to serve out of the jurisdiction on Google LLC

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Arguments put to bed around use of trade marks within online listings

  • Defendant sold beds on Amazon using listings that contained the claimant's registered trade mark
  • Defendant claims that it did not know that the trade mark was used in the listing
  • Was the defendant's director also liable for the infringement?

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Not so easy for easyGroup

  • easyGroup brings claims against W3 in respect of the latter's use of the 'EasyRoommate' name and logo
  • easyGroup's 'EASY' trade mark held to be invalid in respect of advertising and temporary accommodation services
  • easyGroup's claims of trade mark infringement and passing off failed

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Court of Appeal interprets terms of IP assignment agreement

  • Parties in dispute over what intellectual property each of them acquired during the administration of a business
  • Court of Appeal required to analyse unclear terms of assignment agreements
  • How important is it to use commercial common sense when interpreting an agreement?

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Sky v Skykick UK - Trade Mark invalidity questions referred to CJEU

  • The High Court has requested guidance from the European Court of Justice (CJEU) on the question of determining whether an EU or national trade mark registration should be declared invalid
  • Is it possible to have an EU or national trade mark registration declared invalid on the basis that the specification of goods/services covered by the registration is not sufficiently clear and precise for the scope of protection to be determined?
  • Does it also constitute bad faith when the owner of an EU or national trade mark application files an application with no genuine intention to use the trade mark on all of the goods/services covered by the application?

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Centring on a technicality in relation to an EU registered design

  • Parties in dispute over validity of an EU Registered Design
  • Defendant argues that the registration is invalid on the basis that its features are solely dictated by its technical function
  • If there are alternative designs that fulfil the same technical function, does this mean that the design in question is not dictated solely by its technical function?

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Key contact

Emma Armitage

Emma Armitage

Partner, Dispute Resolution, Intellectual Property
London, UK

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