UK: IP Snapshot - August 2008


esure Insurance Limited v Direct Line Insurance Plc (Court of Appeal)

The Court of Appeal rejected an appeal from the High Court and upheld the opposition by Direct Line to an application by esure Insurance Limited to register a three-dimensional mark, consisting of a computer mouse on wheels, for insurance and financial services. The Court of Appeal reinstated the original finding of the Hearing Officer that there was a likelihood of confusion between the mouse-on-wheels and Direct Line's telephone-on-wheels. The Hearing Officer was entitled to come to this conclusion even in the absence of direct evidence, since the goods in question were directed toward the general consumer market. The Court of Appeal was also strongly critical of the evidence of "brand experts" in this case, noting that since the critical issue was one of confusion, it was difficult to see what was gained from expert evidence where the tribunal was in a position to form its own view. If more cogent evidence of customer perception was needed, the traditional method of consumer surveys was to be preferred.

For the full text of the decision, click here.

L & D SA v Julius Sämann Limited (ECJ)

The ECJ dismissed an appeal against the CFI's finding that there was a likelihood of confusion between two figurative marks featuring the silhouette of a fir tree for use on air fresheners. The case is an important reminder that one trade mark may acquire distinctive character through use of a further trade mark in which it is incorporated.

For the full text of the decision, click here.


Karen Murphy v Media Protection Services Limited (High Court)

Following on from the High Court's reference to the ECJ in the case of Premier League v QC Leisure, which involved the importation and use of foreign decoder cards to access Premier League football matches (as featured in July's IP Snapshot), the High Court referred a case to the ECJ involving a pub landlady's alleged criminal liability for using such a device. The ECJ's guidance was sought on whether the criminal provisions in the Copyright, Designs and Patents Act were compatible with the EC Treaty and the 'Conditional Access Directive'. The High Court intends the two cases to be joined and heard together by the ECJ.

For the full text of the decision, click here. For our analysis of Premier League v QC Leisure click here.

Lucasfilm Ltd and others v Andrew Ainsworth and another (High Court)

The High Court found against (on all but one issue) the claimant production and licensing companies behind the original Star Wars films, in a complex and multi-jurisdictional copyright action brought against the defendants for the production of replica star wars uniforms. As the uniforms in issue could not be described as either sculptures or works of artistic craftsmanship, and furthermore had been exploited on an industrial scale, they were not amenable to copyright protection in the UK. The claimants also failed in their passing off and reverse passing off action. The default judgment obtained against the defendants in the US was not enforceable as they had not submitted to the jurisdiction of the US courts. The Court did, however, find it was right to determine the US copyright claim, and in doing so found against the defendants. The case illustrates that in some circumstances, UK courts will hear cases for infringement of foreign IP rights.

For the full text of the decision, click here.


Smith International Inc. (IPO)

The Hearing Officer found a computer programme containing a design for the manufacture of a drill bit to be patentable, primarily because of the manufacturing element involved. As the design of a drill bit will invariably be the prelude to making drill bits according to that design, it is intimately linked with the process of industrial manufacture, which goes to the heart of the patent system. The application was remitted to the examiner for further amendment.

For the full text of the decision, click here.

Zipher Limited v Markem Systems Limited (High Court)

The High Court held that an undertaking which Zipher had given to the court in previous entitlement proceedings, to the effect that it would limit the extent of the claims if it were successful, precluded it from subsequently amending the claims to be broader than the limitation. The Court also confirmed that changes brought in by the Patents Act 2004 limited the discretion of the Court to refuse amendments due to the patentee's conduct. Ultimately the court invalidated all of the claims of the patents for insufficiency; the test applied by the judge was whether the patent imposed an undue burden on the skilled reader to arrive at a workable prototype of the invention.

For the full text of the decision, click here.

Eli Lilly v Human Genome Sciences (High Court)

The High Court held that a patent for a gene sequence and protein was invalid for lack of industrial applicability, as well as insufficiency and obviousness. The patent, which claimed a protein and the nucleotide sequence coding it, did not disclose a practical use or information on its likely effects and its application was merely speculative. The case stresses the need for biotech companies to find a practical application with a real prospect of exploitation before applying to the IPO to seek protection for their latest protein or nucleotide sequence.

For the full text of the decision, click here.


MoD v Benjamin Griffin (High Court)

The High Court agreed to the continuation of an interim injunction, on application by the MoD, against a former Special Forces employee in order to prevent further disclosure of information in breach of a confidentiality agreement. There was a set procedure to be followed if the former employee wished to 'clear' the information, failing which an application for Judicial Review could be made. The MoD had a contractual right to make a judgment about any proposed disclosure before deciding whether to grant permission.

For the full text of the decision, click here.


Directmedia Publishing GmbH v Albert-Ludwigs-Universität Freiburg (AG's Opinion)

The Attorney General's Opinion looked at the issue of whether the word 'extraction' within the Database Directive pre-supposed the physical copying of data. The Attorney General decided that 'extraction' should be viewed broadly. The key issue was whether the extraction, in whatever manner it took place, affected the whole or a substantial part of the contents of a database and hence damaged the investment made to create the original database. It was irrelevant whether the extraction happened by copying the contents of the original database or by reproducing them following on-screen consultation of the database.

For the full text of the decision, 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 18/08/2008.

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