UK: IP Snapshot May 2011

Bringing you regular news of key developments in intellectual property law.


R (on the application of British Telecommunications plc and another) v The Secretary of State for Business, Innovation and Skills [2011] EWHC 1021 (Admin), 20 April 2011

The High Court has passed down judgment in relation to a judicial review brought by two of the UK's largest Internet Service Providers, relating to the legality and proportionality of the Digital Economy Act. The Court ruled that the Act was legal and proportionate. The decision paves the way for the Government to press ahead with its plans to prevent and punish illicit peer-to-peer downloading of content which breaches copyright laws. The Court also ruled that the Government's costs order, which sought to establish that ISPs should bear 25% of all of the costs associated with the scheme, was unlawful.

For the full text of the decision, click here

Archive Media Publishing Limited v Mechanical Copyright Protection Society, CT 116/10, 3 May 2011

The Copyright Tribunal have held that the Mechanical Copyright Protection Society is entitled to vary the terms of its DVD licence scheme depending on the size and financial standing of the licensee. In appropriate circumstances it would be fair for the MCPS to discriminate between licensees, and in particular not to extend the same credit terms to all licensees.

In this particular case, the Tribunal held that MCPS had not unfairly discriminated against AMP in requiring 'pay as you go' terms. A small company represents an inherently different and greater financial risk than a large company, even with satisfactory bank references. The decision in BPI v MCPS [1993] EMLR 86 was relied on.

For the full text of the decision, click here


Virgin Enterprises Ltd v Casey [2011] EWHC 1036 (Ch), 20 April 2011

The High Court upheld the hearing officer's decision which rejected an opposition filed by Virgin Enterprises Limited under sections 5(2)(b) and 5(3) of the Trade Marks Act 1994 against an application for CARBON VIRGIN in class 35.  Norris J confirmed that appeals of this nature took the form of a review rather than a rehearing.  While there was a visual and phonetic similarity between the marks, the word "Virgin" had a subtly different meaning within each mark, resulting in different concepts being created in the mind of the average consumer.

For the full text of the decision, click here

A & E Television Networks LLC and another v Discovery Communications Europe Ltd [2011] EWHC 1038 (Ch), 20 April 2011

The High Court allowed the claimant to conduct a public survey to assist it in its claim of trade mark infringement and passing off in relation to the History Channel's use of the mark Discovery History. The court used the discretion afforded to it to determine that the proposed survey should be allowed and could be adduced in evidence and also in determining the scope and methodology of the proposed survey.

For the full text of the decision, click here

CheapFlights International Ltd v OHIM, General Court, T-460/09, 5 May 2011

The General Court has annulled a decision of OHIM's Board of Appeal that ruled that in relation to an opposition to the grant of a figurative CTM based on a prior figurative mark, the low degree of similarity between the signs and the low degree of distinctiveness of the earlier marks excluded any likelihood of confusion on the part of the relevant public, even though the services at issue were in part identical and in part similar. In particular, the Court was critical of the Board's general conclusion that the earlier mark was descriptive of a diverse range of goods and services, which had been an influential factor informing the Board's decision.

For the full text of the decision, click here.


UKIPO hearing – BL O/046/11: Pilot Drilling Control Limited v Smith International Inc, 23 Feb 2011

In entitlement proceedings before the UKIPO a hearing officer has refused a request by both parties that the proceedings should be kept confidential, relying on the general rule that, except in the case of very strong reasons of confidentiality, there should be no general limitation on the public's right to information about patents and patent proceedings.

For the full text of the decision, click here

H Lundbeck A/S v Norpharma SpA [2011] EWHC 907 (Patents Court), 14 April 2011

A European patent concerning a method of making a compound (5-cbx) used in the manufacture of the anti-depressant drug citalopram was found to be invalid for obviousness as a result of a paper published by a United States chemist.

Had it been valid, the patent would have been infringed by certain processes performed by the claimant company and its subsidiaries, although the consequent remedies in costs and damages would have been limited, since there was a delay in registering the patent's assignment.

For the full text of the decision, click here


Memorandum of Understanding on reducing sales of counterfeit goods online, 4 May 2011

In a European Commission initiative, a number of brand owners and internet platforms have entered into a non-binding Memorandum of Understanding ("MoU") intended to assist the industry to address the problem of online sales of counterfeit goods more effectively.

Signatories to the MoU include online service providers such as Amazon, eBay and Microsoft, referred to in the MoU as "Internet Platforms", and brand owners including Procter & Gamble, Unilever, Mattel, LVMH, Lego, Lacoste and Burberry.

For the full text of the memorandum, click here

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to

Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.

The original publication date for this article was 23/05/2011.

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