UK: IP Bulletin - November 2012

Patents

Fees cap of £50,000 in Patents County Court applies to the proceedings, not to each defendant

In the Patents County Court (PCC), His Honour Judge Birss QC has held that the fees cap of £50,000 for PCC scale costs applies to the proceedings as a whole, not as separate caps for each of the two successful defendant companies, each of which had been separately represented. However, HHJ Birss QC makes clear in his judgment that the interaction between cases with multiple defendants and the system of costs capping may give rise to potential difficulties which should be dealt with on a case by case basis.

Liversedge v Owen Mumford Ltd and another [2012] EWPCC 40, 20 September 2012.

At an earlier hearing, HHJ Birss QC held that the defendants' product did not infringe the claimant's patent and that the claimant's patent was invalid. The hearing on 20 September 2012 dealt with costs.

One defendant had incurred scale fees of £36,000 and the other fees of £38,000 in the single set of proceedings. The claimant submitted that an order for him to pay £73,000 costs in total would be a breach of the court rules. Instead the claimant submitted that the most he should be ordered to pay was one set of PCC scale costs, which are capped at £50,000.

The relevant rule, CPR rule 45.42(1) states "..the court will not order a party to pay total costs of more than ...(a) £50,000 on the final determination of a claim in relation to liability...".

The second defendant submitted that the £50,000 cap applied to a "claim" and that although the case was one proceeding, it consisted of two claims. Thus for each claim, the order sought would be within the £50,000 cap. The claimant submitted that the defendants did not need to have incurred separate costs and that there was unnecessary duplication. The latter submission was rejected since the defendants were jointly represented at the case management conference, served a joint statement of case and instructed a single expert.

The first defendant pointed out that in the present case the defendants won (not the same as in Gimex v Chillbag [2012] EWPCC 34 where the claimant won). In a case like Gimex, the winning party had the choice as to how many defendants to join in the proceedings and had the ability to control its costs exposure in that respect; in a case like the present case the opposite is true.

"Why, [counsel for the first defendant] asked rhetorically, should a successful defendant be penalised in costs by being awarded a lower sum than it would ordinarily be entitled to merely because the claimant has chosen to sue other parties in the same proceedings. To construe "total costs" as submitted by Mr Abrahams would put multiple defendants at an unfair and arbitrary disadvantage". [HHJ Birss QC]

HHJ Birss QC, deciding in the claimant's favour, ruled that the word "claim" in CPR rule 45.42(1)(a) meant a single set of proceedings. The concerns raised by the defendants were all issues which could be foreseen at an early stage in proceedings and raised at the case management conference.

"It may be that on some cases the fairest and most cost-effective way to proceed in a multi-defendant case will be to allow the claim to proceed against one defendant alone and stay the action against the other pending the trial. It may be that other approaches will be appropriate. If a claimant appears to be joining a number of defendants into one case in order to try and take unfair advantage of the costs cap when the defendants ought to be in separate proceedings, that is a matter which can be considered. This case and the Gimex case both illustrate that the interaction between cases with multiple defendants and a system of cost capping throws up potential difficulties. They will need to be dealt with on a case by case basis." [HHJ Birss QC]

Comment

As noted by the judge, HHJ Birss QC, cases with multiple defendants and a system of cost capping throws up potential difficulties. They will need to be dealt with on a case by case basis.

Small claims track introduced in the Patents County Court

A new small claims track has been introduced in the Patents County Court ("PCC"). The small claims track should speed up the court process and make it cheaper and easier for small and medium sized businesses to protect their intellectual property rights.

IPO - Small claims track

Copyright, trade mark and unregistered design holders will have the option of pursuing basic intellectual property ("IP") disputes through an informal hearing, without legal representation. It is hoped that this will reduce significantly the cost of pursuing IP infringement cases. Claims allocated to the small claims track will be subject to damages restrictions of £5,000 or less to ensure they are proportionate to what is at stake.

The introduction of the PCC small claims track is the latest reform intended to simplify and streamline court procedures, reducing the costs and complexity of legal proceedings for businesses.

Trade marks

Leofelis loses its appeal concerning damages arising from termination of trade mark licence

The Court of Appeal has upheld the High Court decision striking out Leofelis's claim for damages arising from termination of a trade mark licence agreement between Lonsdale companies and Leofelis SA.

The earlier High Court ruling confirmed that a party to a contract (a) may rely upon abreach which subsequently comes to light in order to justify an earlier termination of a contract (if the initial breach relied upon for the termination turns out not to be a breach after all) but (b) such a subsequently discovered breach may not be relied upon in a claim for damages against the Licensor because "..that alleged breach ...cannot be the cause of the termination and thus of the loss that flowed from the termination".

The Trade Mark Licensing Co Ltd and another v Leofelis SA [2012] EWCA Civ 1366

In this pro-longed and complicated dispute (see earlier update here) concerning a trade mark licence agreement (there were in fact two sets of proceedings between the parties), the High Court ruled in March 2012 in favour of the Licensor, part of the Lonsdale group of companies ("Lonsdale"), in summary judgment applications concerning a claim for damages following a number of breaches (some actual, some alleged) by both the Licensor and the Licensee, Leofelis SA ("Leofelis"). Claims were made against each other by the Licensor and the Licensee, including a claim by the Licensee for damages based on a claim (later found to be unjustified) that the Licensor had breached the terms of the licence by obtaining an injunction in 2006 preventing the Licensee from selling the licensed goods in Germany. The Licensee purported to terminate the agreement because the Licensor was in repudiatory breach because of this. The Licensor did not accept it was in breach, but then terminated the agreement as from 2 November 2007 because the Licensee did not pay any royalties. Following this the Licensee found that the Licensor had been in breach of the licence by granting another licence to a third party in January 2007. This breach (the "second breach") was upheld by the court. The Licensee claimed that it was entitled to damages, which included a period extending beyond 2 November 2007 to the expiry of the licence agreement term and its renewal period of six years. No evidence was given by the Licensee as to why the termination as from 2 November 2007 was to be ignored when assessing damages.

The High Court confirmed that a party to a contract may rely upon a breach which subsequently comes to light in order to justify an earlier termination of a contract (if the initial breach relied upon for the termination turns out not to be a breach after all). However, the ruling made clear that such a subsequently discovered breach may not be relied upon in a claim for damages against the Licensor because "..that alleged breach ...cannot be the cause of the termination and thus of the loss that flowed from the termination" [Roth J]. Summary judgment was given in favour of the Licensor on this basis preventing the Licensee recovering damages after the termination date.

Leofelis appealed the part of the High Court ruling concerning damages because the ruling had the effect of depriving Leofelis of a large proportion of the damages sought (i.e. including damages for the balance of the term of the licence agreement). The matter came before the Court of Appeal in July 2012 but was adjourned in order that Leofelis should have the opportunity to prepare a draft amended statement of case formulating its claim to show the termination on 2 November 2012 should be ignored when assessing damages.

The adjourned hearing took place on 11 October 2012. The Court of Appeal then dismissed Leofelis's appeal, ruling that Leofelis had not shown that, in the hypothetical world where there had been no breaches by Lonsdale, Lonsdale would not have sought and obtained the German injunction (i.e. Lonsdale's seeking and obtaining the German injunction appeared to be independent of any breaches). The Court of Appeal has said it will be open to Leofelis to propose other amendments to its statement of case to further its claim, in particular to allege damage on a more limited basis, but that any application for that purpose should be made to the Chancery Division.

Comment

The case is factually complex – but in essence it highlights the need for a party to show when claiming damages for a breach of contract that there is a link between the breach and the damages claimed (and at no material time is that link broken, such that some or all of the damages claimed become due to some other factor).

Copyright

PCC rules copyright in woollen plaid fabric design infringed

The Patents County Court has considered the law on artistic and literary copyright in a case concerning the manufacture and sale of woollen plaid fabrics. HHJ Birss QC concluded that the claimant's design "ticket stamp", a written series of instructions to the production team (consisting of words, letter and numbers) to set up the loom machines (which would then produce a fabric with a specific design in accordance with the instructions), amounted to a literary work and an artistic work. The former was infringed by the defendants' own design ticket stamp and the latter was infringed by the making of the defendants' fabric.

Abraham Moon & Sons Ltd v Thornber and others [2012] EWPCC 37, 5 October 2012

Background

The claimant Abraham Moon & Sons Ltd ("Abraham Moon"), a woollen mill based in Yorkshire, claimed that the defendants infringed the claimant's copyright in a design, entitled Skye Sage, of woollen plaid fabric used in upholstery and furnishings. The defendants denied infringement, saying their design, entitled Spring Meadow, was designed independently of Skye Sage and, additionally, that even if Spring Meadow was a copy, there was no copyright infringement because there was no relevant work in which Abraham Moon could claim copyright .

The Spring Meadow fabric was sold to retailers by a firm called "Art of the Loom" based in Clitheroe in Lancashire. The four partners in Art of the Loom were Andrew Thornber, Stephen Thornber, Andrew Slipper and Susan Munns, the first four defendants. Spring Meadow was woven by the fifth defendant, NB Fabrics Ltd, based in Huddersfield in Yorkshire.

Skye Sage was designed by Martin Aveyard, Abraham Moon's design director, in October 2004. The design was first sold in January 2005 as part of a range of furnishing fabric called the Heritage Collection (all designs with a Scottish theme, one of which was Skye. Each design was available in various colourways. For Skye, one of the colourways was called Sage).

In 2010 Abraham Moon discovered that Art of the Loom were selling a furnishing fabric called Spring Meadow. The fabric was available at one of Abraham Moon's best customers, the John Lewis Partnership. Abraham Moon believed that Spring Meadow was a copy of Skye Sage and infringement proceedings ensued.

Decision

HHJ Birss QC held that the defendants' manufacture and sale of Spring Meadow fabric infringed Abraham Moon's copyright. In his ruling, Judge Birss considered the originality of both parties' designs, whether Spring Meadow was a copy of Skye Sage, whether the work on which the claimant relied amounted to a copyright work (literary or artistic), whether infringement had occurred and whether the defendants were entitled to the defences available under sections 51 and 97 of the Copyright Designs and Patents Act 1988 (the "1988 Act").

Originality

In order to qualify for copyright protection, a literary, dramatic, musical or artistic work must be original. This means that the work must have been created by the author through his own skill, judgment and individual effort (and not copied from other works).

In reaching his decision, Judge Birss considered the origin of both designs as issues of primary fact to be resolved on the evidence. Concerning Skye Sage, Judge Birss concluded that Mr Aveyard did not draw a sketch of the Skye Sage design as part of his design process and he did not use a CAD system. He made the design using his extensive experience and skill as a fabric designer by first creating a "mood board" of influences which contained pictures of relevant images and swatches of colour and fabric. The mood board itself was not kept but Mr Aveyard gave evidence that it reflected the fact that Abraham Moon wanted a Scottish influence for the design. A picture of St Andrews, pictures of Scottish castles, and swatches of colour and designs were included on the mood board. Next Mr Aveyard decided upon the initial combinations of threads and numbers of threads for each colour and recorded this on a "ticket stamp" which formed an instruction to the production team as to how to set up the loom machines in order to produce the required design. The ticket had two pages, the first dealing with the warp and weft counts for the various threads (12 threads of colour 1, 2 threads of colour 2, etc.) and the second page dealing with colourways. The ticket for the Skye plaid design was submitted in evidence.

The defendants challenged the originality of the Skye Sage design, contending that the Skye pattern was the same as that of the Armstrong tartan (see above illustrations of Skye Sage, Spring Meadow and Armstrong tartan) and that a swatch of Armstrong tartan must have been on Mr Aveyard's mood board. Mr Aveyard said in evidence that there were no tartan patterns on the board because the claimant did not want the design to look like a traditional tartan as so many tartans were already on the market. Judge Birss accepted Mr Aveyard's evidence that there were no tartan fabrics on his mood board and accepted his evidence that he was not aware of the Armstrong tartan when he created the Skye plaid.

"In my judgment the fact that the lines and blocks of the Skye pattern correspond to the lines and blocks of Armstrong is most likely simply a reflection of the fact that they are both large scale multi-colour check patterns. ... I find that the Skye pattern was designed by Mr Aveyard himself as part of his overall design process. He did not create it by copying. ...In my judgment considerable artistic skill, labour and judgment was employed by Mr Aveyard to produce the Skye Sage design. It is his original work. It is his own intellectual creation." [HHJ Birss QC]

Inference of copying

Although the legal burden of proof to prove copyright infringement rests with the claimant, an inference of copying may be drawn from considering the similarities between the two works, the nature of the similarities and whether the defendant had access to the claimant's work. In such event, the evidential burden shifts to the defendant to rebut the inference, by establishing that its design was produced independently (following Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416).

Concerning the origin of Spring Meadow, Judge Birss considered that the similarities between the fabrics coupled with the overall circumstances raised a strong inference of copying. He inferred that the later in time fabric (Spring Meadow) was produced by copying the earlier (Skye Sage). Judge Birss rejected the suggestion that design constraints might explain the similarity in patterns. Skye Sage was on the market and could have been copied by someone interested in selling upholstery fabric in the UK in 2010. Although the defendants said Spring Meadow was derived independently of Skye Sage, Judge Birss concluded that the defendants' evidence was not sufficient to rebut the inference of copying and that all defendants were involved in and responsible for the copying of Skye Sage.

Having concluded that Spring Meadow was a copy of Skye Sage, HHJ Birss went on to consider whether any infringement of copyright had taken place.

Copyright infringement (the Skye ticket stamp as a literary work)

Considering each of the works relied upon by Abraham Moon, he concluded that the Skye "ticket stamp" was a literary work within section 3 of the 1988 Act and that it was an original work of Mr Aveyard's own creation. He found that the key information in the Spring Meadow ticket stamp was derived from the Skye ticket stamp. He likened the relationship between the two ticket stamps as the translation of a text from one language to another. He concluded:

"I think the Spring Meadow ticket reproduces a substantial part of the literary work embodied in the Skye Ticket Stamp. It was made by (indirectly) copying the literary work. ... I find that the Spring Meadow ticket is an infringing copy of the claimant's literary copyright in the Skye Ticket Stamp".

Judge Birss then considered whether copyright in a literary work was infringed by the making of an article (such as a fabric) from the series of instructions contained in the ticket stamp. He rejected the claimant's argument that the Spring Meadow fabric was an infringing copy of the Skye ticket stamp and concluded:

"At this stage of the case I am concerned with literary copyright. As a literary work the Skye Ticket Stamp embodies a series of instructions which define how to make something. In my judgment it is just not accurate to say that this Spring Meadow fabric is a reproduction of this literary work. It is not a copy of the instructions. Although the Spring Meadow ticket is an infringing copy of the Skye Ticket Stamp, I find that the Spring Meadow fabric is not."

Accordingly, as regards the Sky stamp as a literary work, Judge Birss concluded that the Spring Meadow ticket stamp was an infringing copy of the Skye ticket stamp but that the Spring Meadow fabric was not.

Copyright infringement (the Skye ticket stamp as an artistic work)

Could the Skye ticket stamp amount to an artistic work? Yes. The fact that the Skye ticket stamp was not produced by drawing lines was irrelevant. The ticket was produced by someone with sufficient artistic skill to record the visual appearance intended to be created albeit in the form of numbers and letters. It did not matter that there was no sketch because the artist did not need to draw one in order to record the visual image he wanted to create and fix in a material form. Concerning fixation, Judge Birss said that 'fixation' is an important aspect of literary and artistic copyright and the ticket stamp acts as a record of the image. In addition, artistic copyright must relate to the content of the work of the artist and not the medium in which it is recorded (it is 'content' copyright and not 'signal' copyright). Accordingly, Judge Birss concluded that the Skye ticket stamp was an artistic work within section 4 of the 1988 Act, and was best described as a "graphic work". Although the ticket stamp could be considered to be an unusual sort of graphic work, it was a record of a visual image.

Concerning infringement, counsel for the defendants submitted that there was no visual resemblance between the Spring Meadow fabric and the Skye Ticket Stamp. Judge Birss said:

"That is true in the sense that, as a lay person looking at them, one is a plaid design of fabric while the other is a collection of words, letters and numbers. However I rely again on the impact of the evidence of [two of the witnesses]. To someone who can see the fabric design from looking at the ticket (or vice versa) the one has a clear visual resemblance to the other. In my judgment the appearance of Spring Meadow reproduces the whole or a substantial part of the appearance of Skye Sage and thus is a reproduction of the whole or a substantial part of artistic work embodied in the Skye Ticket Stamp within the meaning of s17 of the 1988 Act. Making Spring Meadow fabric involves an act of copying that artistic work and is an act of infringement."

Accordingly, Judge Birss concluded that making Spring Meadow fabric involved an act of copying of Abraham Moon's artistic work (the Skye ticket stamp) and was an act of copyright infringement.

Defence to infringement under section 51 of the 1988 Act

Section 51 of the 1988 Act provides that it is "not an infringement of any copyright in a design document....to make an article to the design or to copy an article made to the design" where "design" means "the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration, and design document means any record of a design whether in the form of a drawing, a written description, a photograph, data stored on a computer or otherwise...".

As to whether the defendants had a defence to infringement under section 51 of the 1988 Act (the defendants had argued that the Skye ticket stamp was a design document within the meaning of section 51 and that, therefore, there was no infringement by making the Spring Meadow fabric to the design recorded in the Skye ticket stamp), Judge Birss concluded that no such defence was available. Applying Lambretta Clothing v Teddy Smith [2003] RPC 41, Judge Birss concluded that the "design" of Skye Sage was surface decoration, the design decorates the surface of the fabric even though the colours run all the way through the fabric. As surface decoration, the Skye Sage design was excluded from the definition of design within section 51 and accordingly the section 51 defence was not available to the defendants.

In summary, Judge Birss ruled that all the defendants were liable for copyright infringement:

  • the making of Spring Meadow fabric by NB Fabrics Ltd, the fifth defendant, was an act of primary copyright infringement of Abraham Moon's copyright;
  • Art of the Loom, as the entity that put Spring Meadow fabric onto the market and issued copies to the public, was liable for copyright infringement under section 18 ofthe 1988 Act;
  • Art of the Loom and NB Fabrics Ltd were jointly liable for copyright infringement, because they acted in concert with one another pursuant to a common design to do so by copying; and
  • the sales of Spring Meadow by Art of the Loom constituted acts of secondary infringement of copyright.

Defence to damages under section 97 of the 1988 Act

Judge Birss held that none of the defendants was entitled to the defence to damages available under section 97 of the 1988 Act because there was insufficient cogent evidence to establish that at the time of the infringement the defendant(s) did not know and had no reason to believe that copyright subsisted in the work to which the action related).

Comment

The case provides a useful consideration of the law concerning literary and artistic copyright works and infringement. However what is particularly unusual is the conclusion that a written series of instructions (in this case to set up loom machines to make a fabric of a specific design) can amount to a literary work and an artistic work. (The former was infringed by the defendants' own design ticket stamp (i.e. series of instructions) and the latter was infringed by the making of the defendants' fabric).

Designs

Court of Appeal dismisses Apple's appeal against High Court registered design infringement ruling

On 18 October 2012, the Court of Appeal dismissed Apple's appeal against Judge Birss's "cool" July judgment in the Apple / Samsung registered design dispute and concluded that the German court did not have jurisdiction to grant interim relief to Apple since the UK court had already granted a Europe-wide final declaration of non infringement to Samsung.

Apple was ordered to display a notice detailing non-infringement by Samsung on Apple's website. However, it came to the Court's attention that the notice displayed by Apple was not entirely in line with that ordered by the Court of Appeal. Both parties re-appeared in Court on 1 November 2012 and an altered notice has now been displayed on Apple's UK website amid much publicity. The case serves to illustrate that when applying for an order for a publicity statement, it is important to ensure that the terms of the order are entirely clear as to content, prominence and timing.

Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA 1339

Background

In July 2012, the High Court ruled that three designs of Samsung Galaxy tablet computers did not infringe Apple's Community Registered Design. (See here for more information.) Apple appealed this decision and a subsequent decision requiring Apple to publicise the first judgment in specified publications and on the Apple website. The first judgment was given by HHJ Birss QC on 9 July 2012. Samsung was granted a Europe-wide declaration of non-infringement. It was on 18 July 2012 that HHJ Birss QC ruled that Apple should publish a notice detailing the matter of non-infringement by Samsung. Apple was concerned about the order and applied to the Court of Appeal for the order to be suspended pending an appeal of the first judgment.

In Europe, Apple continued its challenge of Samsung before the German courts and, in August 2012, a German court ruled that one of Samsung's designs did infringe Apple's Community registered design. The German court granted a Europe-wide injunction preventing sales of Samsung's tablet in Europe.

Decision

On 18 October 2012, the Court of Appeal dismissed Apple's appeal against Judge Birss's "not as cool" first judgment. The legal test for infringement – the scope of protection – is set out in Article 10 of the Community Design Regulation EC 6/2002:

Article 10 Scope of protection

1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

Whilst Apple accepted that the informed user has a number of "attributes" following PepsiCo v Grupo Promer (C-281/10P) [2012] FSR 5 at paragraphs 53 to 59; Grupo Promer v OHIM [2010] ECDR 7, (in the General Court from which PepsiCo was an appeal); and Shenzhen Taiden v OHIM, case T-153/08, 22 June 2010, BAILII: [2010] EUECJ T-153/08, Apple submitted that Judge Birss was wrong in his assessment of a different overall impression to the informed user in that he approached the design corpus wrongly and failed properly to consider the designs as a whole. In particular, Apple submitted that the Judge went about the comparison exercise piecemeal, feature by feature, and failed to have regard to the overall impression of the registered design as compared with any of the items of prior art contained within the design corpus.

In the Court of Appeal, Sir Robin Jacob concluded that Judge Birss was entirely aware of the need to consider the overall impression of the design as it would strike the informed user bearing in mind both the design corpus and the extent of design freedom – in fact Judge Birss had indicated so at the outset and at the conclusion of his judgment:

"what really matters is what the court can see with its own eyes (per Jacob LJ in Dyson v Vax [2012] FSR 4 at paragraphs 8 and 9, .... The most important things are the registered design, the accused object and the prior art and the most important thing about each of these is what they look like" [paragraph 31];

"while the exercise is a visual one, judgments have to be written and reasons necessarily expressed in words.... I must bear in mind that it is the overall impression which counts and not a verbalised list of features.." [paragraph 32]; and

"Having gone through the various features individually it is necessary to pull it all together and consider the overall impression of the Apple design on an informed user. " [paragraph 178]

Examining some of the features identified by Apple for Judge Birss to consider in his analysis, Sir Robin Jacob considered that Judge Birss had not made any material error. His overall conclusion, arrived at using his own eyes and taking into account the design corpus and the extent to which there was design freedom, was the conclusion which Sir Robin Jacob himself would have formed and for the same reasons. Sir Robin Jacob said:

"I would add that even if I were forming my own view of the matter, I would have come to the same conclusion and for the same reasons. If the registered design has a scope as wide as Apple contends it would foreclose much of the market for tablet computers. Alterations in thickness, curvature of the sides, embellishment and so on would not escape its grasp. Legitimate competition by different designs would be stifled."

Concerning the German court's decision, Sir Robin Jacob considered that the court did not have jurisdiction to grant interim relief for a number of reasons, namely that (i) the German court was not "first seized" of the claim for a declaration of non infringement; (ii) there was no basis for an interim injunction because the UK High Court had already granted a final declaration of non-infringement; (iii) the UK High Court declaration of noninfringement was binding because Judge Birss was sitting as a Community design court, not as a purely national court; (iv) the fact that the party before the German court was the Korean Samsung Electronics Company (SEC) rather than the UK subsidiary did not mean that SEC was liable for the subsidiary's actions – they were all one "undertaking". Finally, the German court did not consider Judge Birss's ruling in any detail. Reasoning on the merits was sparse, a matter of regret for the Court of Appeal.

Finally, concerning the publicity order, the Court of Appeal concluded that the court had jurisdiction to grant a publicity order in favour of a non-infringer who has been granted a declaration of non-infringement, although the power to do so should be exercised only where it was proportionate. The test to be applied was whether there was a need to dispel commercial uncertainty. Taking into account the massive publicity surrounding the first judgment of HHJ Birss QC and the subsequent German decision, real commercial uncertainty was thereby created. A consumer might very well consider that it would be wrong to buy a Samsung tablet if it may not be supported in future or if the consumer might get into trouble before the German courts.

Concluding, the Court of Appeal ruled that Judge Birss's publicity order would be affirmed insofar as it applied to newspapers but that publication on Apple's website homepage could be via a link from the home page to the notice itself, thus varying the order concerning the website. The publicity order was stipulated as follows: "On 9th July 2012 the High Court of Justice of England and Wales ruled that Samsung Electronic (UK) Limited's Galaxy Tablet Computers, namely the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe Apple's registered design No. 0000181607-0001. A copy of the full judgment of the High court is available from [link].

That Judgment has effect throughout the European Union and was upheld by the Court of Appeal on 18 October 2012. A copy of the Court of Appeal's judgment is available from [link]. There is no injunction in respect of the registered design in force anywhere in Europe."

Recent developments and comment

Following the above ruling on 18 October 2012, Apple appeared to be reluctant to post the ordered public statement on its website. The statement that appeared on the website by 26 October (the "Contested Notice") did not comply with the order of the Court of Appeal (the statement contained added matter, some of which was inaccurate and all of which appeared to try to mitigate some of the effects of the ordered notice, for example by referring to certain foreign proceedings in Germany even though the conflicting provisional order in Germany had been (or should have been) discharged by the time the publicity notice was posted). Samsung took issue and decided to take the matter back to the Court of Appeal on 1 November 2012, whereupon an altered statement was published on the website, in the form ordered by the Court of Appeal, within 48 hours. The Court of Appeal held that Apple's added matter was false and misleading and ordered that costs should be awarded against Apple on an indemnity basis (such a basis may be awarded as a mark of the court's disapproval of a party's conduct, particularly in relation to its respect for an order of the court). The Court of Appeal considered that Apple's conduct warranted such an order. See Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) for the judgment of 1 November 2012.

The case serves to illustrate the importance of ensuring that, when applying for an order for a publicity statement, the terms of the order are entirely clear as to content, prominence and timing. In addition, the Court of Appeal's comments concerning the German court's decision helpfully address the German court's lack of jurisdiction in a clear and concise manner - the German court was not first seized of the claim for a declaration of non-infringement and the UK court had in any case already granted a final declaration of non-infringement which was binding throughout the Community.

Other matters of interest in brief

The Unitary Patent – reasons for concern?

See here for more on the Unitary Patent

The Max Planck Institute for Intellectual Property and Competition Law has outlined its reasons for concern about the proposed Unitary Patent package (which includes a Regulation and Agreement on a Unified Patent Court).

The criticisms are that the package adds to complexity, is unbalanced and lacks legal certainty. The Institute is concerned that the proposal represents a backwards step in terms of patent law quality and legal viability and misses the opportunity for Europe to modernize its system of patent protection. The Institute would like to reconsider the content of the package afresh.

CJEU confirms meaning of "informed user" under Community Designs registration

Herbert Newman, Andoni Galdeano del Sel and OHIM v Jose Manuel Baena Grupo, SA, Joined cases C 101/11 P and C-102/11 P, 18 October 2012

In PepsiCo v Grupo Promer Mon Graphic SA, Case C-281/10 P, the Court of Justice of the European Union ("CJEU") handed down a detailed analysis of the term "informed user". The CJEU has now confirmed and followed this guidance in Herbert Neuman, Andoni Galdeano del Sel and OHIM v José Manuel Baena Grupo, SA, Joined Cases C-101/11 P and C-102/11 P, 18 October 2012, rejecting appeals concerning the validity of a registered Community Design.

Under the Community Designs Regulation, in order to be registered as a Community Design, a design must be new and have individual character (Article 4). A design has "individual character" if the overall impression it gives to the "informed user" differs from the impression given by a design which was made available to the public before the filing or priority date of the design for which protection is sought (Article 6). A Community design could be declared invalid if it does not satisfy the requirements for protection.

The CJEU has confirmed that an informed user is a user of above-average attention, who is particularly observant, either because of his personal experience or his extensive knowledge of the relevant sector, who is also one who would make a direct comparison between designs (although such a comparison might be impracticable or uncommon in the relevant sector).

The question of obviousness – observations from the Court of Appeal

Medimmune Ltd v Novartis Pharmaceuticals UK Ltd and another [2012] EWCA Civ 1234, 10 October 2012

In Medimmune Ltd v Novartis Pharmaceuticals UK Ltd and another [2012] EWCA Civ 1234, 10 October 2012, the Court of Appeal has upheld a decision of the High Court thata patent relating to antibody phage display was obvious and invalid because it was notentitled to the claimed priority.

Lord Justice Lewison, Court of Appeal, added some observations on the question of obviousness and in particular the proper approach to interpretation of the statutory provisions sections 1 and 3 of the Patents Act 1977 (paragraph 177 to 189 of the ruling). He said that the patent profession too often ignored the fact that the statutory question was whether the invention was obvious at the priority date and not whether it was obvious to try:

"These sentiments seem to have been largely ignored by the profession. It cannot be said too often that the statutory question is: was the invention obvious at the priority date? It is not: was it obvious to try? In my judgment too much elaboration of the statutory question has been attached to it."

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Charles Russell's Intellectual Property Group
 
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Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.