UK: IP Snapshot - September 2012


Starbucks (UK) Ltd v British Sky Broadcasting Group Plc & Others [2012] EWHC 1842 (Ch), 29 June 2012

The High Court has refused to grant a stay of proceedings for infringement of a Community Trade Mark under Article 104(1) of the CTM Regulation where there were parallel proceedings before OHIM.  The High Court found that there were special grounds for refusing a stay, in particular as the OHIM proceedings were likely to be prolonged.  Conversely, the Court granted expedition of the infringement claim.  The Court gave special consideration to the fact that the respondent's imminent launch of its rival service under the allegedly infringing trademark would surmount the claimant's goodwill.

For the full text of the decision, click here.

Woolley & anor v Ultimate Products Ltd & anor [2012] EWCA Civ 1038, 26 July 2012

The Court of Appeal has upheld the decision of the High Court, which found that the defendants were liable for passing off their watches as those of the claimants by virtue of use of the name HENLEYS.  This case serves as a useful example of the flexibility of the tort of passing off. Decisions are highly fact dependent making it easier for judges to distinguish previous judgments and hence the court is afforded a broad discretion in such cases.

For the full text of the decision, click here.


R v Anton Benjamin Vickerman [2012] Newcastle Crown Court. Indictment No. T20097188, 14 August 2012

In the latest of a series of cases considering the liability of individuals who operate websites providing links to unauthorised copyright content, the defendant was convicted of two offences of conspiracy to defraud and given two concurrent sentences of four years.  The defendant in this case operated the website 'Surf the Channel', which contained links to films, television programmes and popular music to be downloaded or streamed by internet users.  The vast majority of the content made available through the website infringed copyright.  The sentencing remarks of His Honour Judge John Evans criticise the defendant's actions mainly in relation to the links to films – in March 2009 there were in excess of 5,500 such links.  The defendant's assertion that he believed that what he was doing was lawful was rejected.

For the full text of the decision, click here.


International Stem Cell Corporation BL O/316/12, 16 August 2012

An IPO hearing officer has ruled on the patentability of two inventions relating to the production of human stem cells and corneal tissues from these stem cells.  The hearing officer found that the material used in producing the stem cells fell within the definition of 'human embryo', as identified by the CJEU in the Brüstle v Greenpeace case.  Despite there being no possibility of the biological material in question ever developing into a viable human being, the inventions were not considered patentable on the basis that they constituted use of human embryos for industrial or commercial purposes.

For the full text of the decision, click here.

(1) Virgin Atlantic Airways Limited v Jet Airways (India) Limited and Contour Aerospace Limited; (2) Virgin Atlantic Airways Limited v Delta Airlines Inc and Contour Aerospace Limited; (3) Virgin Atlantic Airways Limited v Air Canada and Contour Aerospace Limited; (4) Contour Aerospace Limited v Virgin Atlantic Airways Limited; (5) Premium Aircraft Interiors Limited v Comptroller General of Patents and Virgin Atlantic Airways Limited [2012] EWHC 2153 (Pat), 27 July 2012

The High Court has given a further judgment in the dispute between Virgin Atlantic Airways, Contour Aerospace (a manufacturer of passenger aircraft seats) and various airline clients of Contour.  In this decision, Floyd J held that the key patent, following amendments required by the EPO, was valid but not infringed by Contour's product, although one of the subsidiary patents would be infringed by further sales (which were unlikely).  The judgment is notable for an in-depth discussion of the circumstances in which the decisions of bodies established by international treaty (such as the EPO) can be challenged in the UK courts.

For the full text of the decision, click here.

Eli Lilly and Company v Human Genome Sciences Inc [2012] EWHC 2290 (Pat), 3 August 2012

The High Court has refused an application by Eli Lilly to make an immediate reference to the CJEU, but stated that Eli Lilly was free to make a further application for a reference in the future once an underlying action between Eli Lilly and HGS in relation to the validity of a patent held by HGS had been resolved.  Eli Lilly had brought the application in light of concerns that HGS would apply for a supplementary protection certificate ("SPC") for the patent in question.  Eli Lilly sought a declaration that if an SPC were granted to HGS based on a marketing authorisation obtained by Eli Lilly for their own product, such SPC would be invalid.  It was considered that the present timing of a reference to the CJEU was not appropriate, rather than that the underlying issues did not warrant a reference.

For the full text of the decision, click here.


WIPO Arbitration and Mediation Center: Neste Oil Oyj v Föringen Greenpeace-Norden, Case No. D2012-0891, 23 July 2012

In a recent decision by the WIPO Arbitration and Mediation Centre, it was held that two "parody sites" set up by Föreningen Greenpeace-Norden criticising the negative environmental impact of Finnish oil refining company Neste Oil Oyj were established for legitimate, non-commercial purposes.  The domain names in question were "" and "".  Although the Panel did find that the websites were confusingly similar to the NESTE OIL trademark, it was held that the predominant aim behind the websites was of "fair-use criticism", and not commercial gain.  The complaint was therefore denied and Greenpeace was permitted to retain the domain names.

For the full text of the decision, click here.

Nominet Dispute Resolution Service: DCM (Optical Holdings) Limited v Sasha Rodoy, Case No. D00011271, 3 August 2012

A complaint filed by DCM (Optical Holdings) Limited with Nominet in relation to the domain name was denied, as the website was not an Abusive Registration.  The Nominet Expert considered that the domain name clearly conferred expressions of critical opinion, which no competent English reader would believe were endorsed by the owner of the trade mark.  Criticism websites remain a fair use of a trade mark, and even suggestions of commercial gain were not sufficient to deem the registration abusive, in contrast with a previous Nominet decision in

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 21/09/2012.

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