UK: IP Snapshot: January 2007

Last Updated: 25 January 2007
Article by Nick Beckett, Isabel Davies and Tom Scourfield

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


Roche Products v Kent Pharmaceuticals (Court of Appeal)

The Court of Appeal dismissed an appeal brought by Kent, a parallel importer, against a High Court summary judgment decision to the effect that the presence of a CE mark on a pharmaceutical product did not indicate the manufacturer’s consent to the sale of the product within Europe. The case confirms the difficulty in proving the trade mark owner’s consent to importation and highlights the problems faced by importers who may purchase stock in good faith. However, given that the trade mark owner had expressly provided the goods for a trial in South America, demonstrating consent was never likely to have been easy on these facts.

For the full judgment in this case, click here

Lunan Group Limited v Edwin Co. Limited (High Court)

The High Court has allowed an appeal by the applicant for the trade mark FIORELLI against the hearing officer’s decision to uphold an opposition to the registration of the mark by the proprietor of the registered trade mark FIORUCCI. The deputy judge held that the hearing officer had made an error of principle in refusing to consider evidence that had been placed before him that the two marks had coexisted in the same market, without any confusion, for some years before the application for FIORELLI was made. He had also erred in his assessment of the visual similarity of the marks; the tests to be applied in assessing aural and visual similarity are not the same.

R v Thompson (Stuart George) (Court of Appeal)

The Court of Appeal refused to grant leave to appeal from a conviction under s.92 TMA 1994, and confirmed that unauthorised use of a number of signs on counterfeit mobile phone covers amounted to trade mark use, even though the defendant had claimed that his use of the signs was merely "decorative" and therefore fell outside the scope of s.92. In the course of considering the application, the Court of Appeal confirmed that use of a sign in a decorative manner would not necessarily preclude a finding that such use is also trade mark use.


BSkyB Broadcasting Group plc v Sky Home Services (High Court)

BSkyB was successful in bringing a passing off action against various connected individuals and businesses which passed themselves off as acting with or on behalf of BSkyB in the course of offering to consumers extended warranty contracts and repair services for satellite equipment. The Court confirmed that misrepresentation could take place by conduct as well as by the making of express statements. Further the Court considered that a newcomer to a monopoly market place did have some duty to avoid confusion with the established supplier.


Fisher v Brooker and another (High Court)

The High Court held that Matthew Fisher, who played the haunting organ parts on the Procol Harum record A Whiter Shade of Pale, is entitled to a 40% share of the musical copyright in that work (as opposed to the 50% Mr Fischer claimed, on the basis that his contribution was not as substantial as the first defendant’s). The Court refused the restitution claim, so entitlement to royalties only commenced from the day on which the claim was issued.

For the full judgment in this case, click here

Sociedad General de Autores y Editores de España v Rafael Hoteles SA, (ECJ)

In answering questions referred to it by a Spanish court, the ECJ has confirmed that the transmission by hotel owners of broadcasts through television sets in hotel rooms is a "communication to the public", and could therefore constitute an infringement of copyright under Article 3(1) of the Copyright Directive (2001/29 EC). The court held that the private nature of hotel rooms did not preclude the communication of works in these rooms from being a "communication to the public", since the test was whether a communication had been made to "the public", not whether a communication occurred in a public or private place.

For our full Law-Now on this decision, click here


X & Y v Persons Unknown (High Court)

The High Court rejected an application by various newspapers to dismiss the terms of an ex parte injunction which was served on them to restrict them publishing information about X&Y’s marriage. This case looks to balance the competing interests in Articles 8 and 10 and distinguishes between those people in the public eye and publicity seekers. The court held that the injunction should remain, however, agreed that the terms should be varied to make reference to specific information that was intended to be subject to the restrictions and gave further guidance on injunctions which are intended to be served on non-parties.

For the full judgment in this case, click here

Niema Ash and another v Loreena McKennitt and others 9(Court of Appeal)

This appeal to the Court of Appeal was against an injunction that had been granted to restrain a former friend (Ash) from publishing information about McKennitt’s (a well known Canadian folk singer) private life in Ash’s book. The Court of Appeal rejected Ash’s argument that the information was "shared" as it only related to McKennitt and the information would be the main reason for people buying the book and the appeal was dismissed. The Court of Appeal held that Eady J was right to take note of the decision in Von Hannover and that A v B should not be regarded as authority on the scope of Article 10. The decision also makes it clear that the main case to follow as regards interpretation of Articles 8 and 10 is Von Hannover, which significantly reduces the scope of press using the public interest defence as publication of private information would only be justified as being in the public interest if it contributed to a debate of public interest.

For the full judgment in this case, click here

Helmet Integrated Systems Ltd v Tunnard & Others (Court of Appeal)

An employee was held not to have breached his fiduciary duties (or contract) by taking preparatory steps to market product in direct competition to his employer after resignation. There was no contractual or fiduciary duty to report his own activities. The fact that he was not a director was significant in the decision.

For the full judgment in this case, click here


Procter & Gamble Company v Reckitt Benckiser (UK) Limited (High Court)

In this case involving a registered design for an aerosol spray, the High Court has provided welcome guidance on the interpretation of the Community designs legislation (EC Regulation 6/2000 on Community designs (CDR), including the relevant scope of protection and the nature of the comparison to be carried out by the informed user. On the facts, infringement was established since all of the dominant features of the registered design were present in the infringing item.

For our full Law-Now in this important this case, click here


Halliburton Energy Services Inc. v Smith International (North Sea) Ltd, (Court of Appeal)

The Court of Appeal upheld the decision of Pumfrey J that Halliburton’s drill bit patent was invalid because it was insufficient, contrary to s.72(1)(c) Patents Act 1977/Article 83 EPC. The case serves as a reminder of one of the fundamental principles of patents: that in return for his monopoly, the patentee must give clear teaching as to how his invention works in order to advance the public knowledge.

For the full judgment in this case, click here

Nokia Corporation v InterDigital Technology Corporation (Court of Appeal)

This appeal of a refused interlocutory application is confirmation from the Court of Appeal that the UK Courts have jurisdiction to make declarations as to the essentiality of patents to technical standards. This decision will have an impact on (or open the door to) many future cases, not least those between mobile phone companies scheduled for late 2007.

For the full judgment in this case, click here

Celem SA and another v Alcon Electronics (Patents Court)

The Patents Court ruled that an Indian company must defend a patent infringement action for infringement of a patent relating to power capacitors and provides useful guidance on the rules of joint tortfeasance. The Indian company had met with a UK company and offered sample capacitors and then redesigned a sample when the first sample had not worked properly. This was sufficient involvement in the UK market for the judge to infer that the Indian company was a joint tortfeasor with the UK company. The case demonstrates the UK courts’ willingness to take jurisdiction of a case even where the defendant is domiciled out of the UK, even where the defendants had not actually sold any infringing products. The claimants were helped by the fact that the UK first defendant distributor was co-operative.

For the full judgment in this case, 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 24/01/2007.

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