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IP Snapshot – January & February by Tom Carver

Every case is interesting to someone and no case is interesting to everyone, and so we provide snapshots of each intellectual property decision reported by bailii.org (British and Irish Legal Information Institute) from the Patents Court (which deals with all registered rights), the Intellectual Property Enterprise Court (for smaller or simpler claims), and the appeal courts, and a contents table so that you can see quickly whether there is anything interesting to you.

Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor

The judge at first instance did not consider that a significant proportion of the public would confuse the allegedly infringing Sign with the Mark. The Court of Appeal found that the judge had erred by allowing his eye to be conditioned by the side-by-side comparison of the Sign and the Mark as a graphic image. As a result he had failed to consider the impact of the Sign as affixed to footwear upon consumers who had never seen the graphical representation of the Sign.

The Court of Appeal found a likelihood of confusion on the part of a significant proportion of customers in the post-sale context. When the Sign is affixed to footwear consumers might only see the Sign while looking down, and therefore at an angle, and in those circumstances the appearance of the sign would appear shortened and much more similar to the Mark than in a frontal graphical image. The Court found that there is nothing artificial or unrealistic about this comparison but that it is a realistic and representative scenario for assessing the post-sale impact of the use of the Sign upon the perception of the average consumer.

Crafts Group LLC v M/S Indeutsch International & Anor

This case has a complex procedural background but in summary it started life as an action by Crafts claiming remedies for damage caused by unjustified threats of trade mark infringement by way of Amazon takedown notices filed by the trade mark proprietor. The trade mark proprietor counterclaimed for infringement of two EU trade marks and their UK clones, and Crafts counter-counterclaimed for invalidity or revocation of one of those trade marks (both the EU and UK parts of that trade mark).

The Intellectual Property Enterprise Court stayed the whole action on 1) the erroneous basis that the EU Trade Mark Regulations applied and that actions in relation to unjustified threats qualified as actions which must be stayed pending resolution of EU invalidity actions relating to the same mark, and 2) exercise of case management discretion. The trade mark proprietor then discontinued its infringement action based on the EU trade marks, but continued to argue that the stay should remain.

The Court of Appeal held that the discontinuance of the EU TM infringement actions had fundamentally changed the complexion of the case such that the judge’s exercise of his discretion with respect to case management could no longer stand. The Court of Appeal then decided that it could re-exercise the discretion itself rather than remitting the matter back to the court of first instance, and applied the reasoning of the IPCom guidelines (more normally used to decide applications for stays in patent cases with co-pending actions at the EPO) to allow the appeal by Crafts and set aside the first instance judge’s order.

AstraZeneca UK Ltd v Tesaro Inc

The Court of Appeal allowed an appeal on the interpretation of a licence. The Court explained that in principle the scope of a licence and the royalty obligation should be coextensive with the scope of the claims of the patent, but in practice there are a number of reasons why either or both need not be so.  For example, the scope of the claims may be unclear, the claims may turn out to be not valid, patent coverage may vary between territories and expire at different times. For these reasons the scope of agreed licences may sometimes extend beyond what the licensee strictly requires to avoid patent infringement. In all cases the scope of the royalty obligation is what is actually agreed between the parties.

Marks and Spencer PLC v Aldi Stores Ltd

The Court of Appeal dismissed the appeal. The first instance judge made no error of principle in his assessment of infringement, comparing the overall impressions of the products with the Registered Designs.

Legal points determined in the judgment include:

–        the overall impression of Registered Designs should be assessed as at the priority date.

–        the grace period (from s. 1B of the 1949 Act) is to protect the designer from adverse consequences of any disclosure by him (or a successor in title) during the grace period of (a) the registered design or (b) any design which does not produce a different overall impression to that of the registered design.

–        The “Indication of Product” in the Registered Design Register can be relied on to resolve ambiguity and in that sense to assist in the interpretation of the design.

Flitcraft Ltd & Ors v Price & Anor

The Court of Appeal dismissed the appeals in what must surely be the last instalment of this long running battle.  We are grateful to the Master of the Rolls for his emphasis, added “just in case the heinous nature of what Mr Price and Mr Middleton have done is lost in the meticulous detail of the two main judgments above. It appears from what the judge found that a) Mr Price deliberately instigated a false claim in the High Court founded on an allegation that he was the proprietor of the patents, when he was not, and b) Mr Middleton deliberately supported that false claim. The court takes a very serious view of dishonest conduct of this kind. It undermines the integrity of the justice system.

…

That was why the judge was right to order Mr Price to pay Flitcraft’s costs on the indemnity basis, and penalise Supawall in costs for Mr Middleton’s false evidence.  The court will take every appropriate step to deter those who contemplate bringing false claims, and thereby practising an intolerable deception on the court itself.”

Abbott Diabetes Care Inc & Ors v Dexcom Incorporated & Ors

This judgment included a great deal of technical detail but not much law.

The patentee relied heavily on submissions that the defendant’s argument was tainted by hindsight, quoting a passage in the CIPA Guide which bears requoting:

“A classic warning against unintended but inevitable hindsight appears in a book by Diane Vaughan, The Challenger Launch Decision (University of Chicago Press, 1996) at 69-71. It is referred to, inter alia, by Roy Marsh, “The Continuing PSA debate” [2010] CIPA 59. Professor Vaughan explains that a problem that was ill-structured becomes well-structured after an event (in that instance a disaster, but equally the making of an invention), as people look back and reinterpret information ignored or minimised prior to the event that afterward takes on new significance. Information strung together in post-event accounts can present a coherent set of signals that was not characteristic of the situation as it existed prior to the event. The result can be a systematic distortion of history that obscures the meaning of events and actions as it existed and changed for the participants in the situation at the time the events and actions occurred. Making an invention is by definition an ill-structured problem whereas the task of examination of a patent application or deciding on an objection of lack of inventive step against a granted patent is a well-structured problem because the invention has become known. There is the same risk of deriving a coherent set of signals where none existed prior to the invention. Even the selection of a primary reference maybe a product of hindsight and risks distorting history in the manner suggested by Professor Vaughan.”

The judge found that EP627 would have been infringed if valid but was anticipated by one of the two cited prior art documents. Somewhat unusually, he found that the skilled term would have simply set the other prior document on one side as of no interest or application to their circumstances. He cited Laddie J who explained that “the more distant a prior art document is from the field of technology covered by the patent, the greater the chance that an intelligent but uninventive person skilled in the art will fail to make the jump to the solution found by the patentee”.

EP223 was found to be obvious, anticipated and not infringed. EP159 and EP539, a divisional of EP159, were admitted to be infringed and alleged to be no more than common sense. Both were found to be anticipated by two prior art references and obvious over the same two and two further references.

Thatchers Cider Company Ltd v Aldi Stores Ltd

The judge found that while the claimant has a reputation in the UK in the Mark, the Sign complained of has a low degree of similarity to the Mark and there is no likelihood of confusion.  Furthermore, while the Sign complained of does cause a link in the mind of the average consumer between the Sign and the Mark, the use of the sign does not take unfair advantage of and is not detrimental to the repute of the Mark. There is no passing off.

There was quite a lot of evidence about the design process and how the defendant had used the claimant’s Mark as a benchmark, and the impact of distinctive and non-distinctive elements, but in the end the judgment was that the defendant had “appreciated the risk of confusion and has endeavoured to adopt a sign which is a safe distance away.”.

Cloud Cycle Ltd v Verifi LLC & Anor

The judge refused to grant an interim injunction on the basis that the balance of convenience favoured the defendant. The risk to the claimant if there is no injunction is not very great and does not represent a threat to its ability to continue in business. By contrast the risk to the defendant if an injunction is granted is more likely to be an existential threat.

An application for summary judgment was also dismissed on the basis that expert evidence would be required to interpret various technical issues.

Wise Payments Ltd v With Wise Ltd & Ors

The defendants applied to join four additional parties to the claim. One of those parties did not contest the application. Two of those parties contested the application on case management and proportionality grounds. The last party contested the application on case management, proportionality and also an additional substantive ground relating to his role within the claimant’s business.

The judge held that the exercise of his discretion in relation to case management and proportionality involved assessing whether the IPEC cost benefit test was met.  The judge held that the inclusion of the new parties would require a three day trial rather than the usual two day trial, but that this was the most efficient way of dealing with the issues between the parties.

The judge held that the exercise of his discretion in relation to the substantive ground involved asking whether the case against the party to be joined has a real, as opposed to fanciful, prospect of success.  The judge found that the pleading against the individual was not sufficient to provide a factual basis for the allegation of joint tortfeasorship.

Equisafety Ltd v Battle, Hayward and Bower Ltd & Anor

This is a decision on costs, reiterating that the circumstances in which the IPEC cap may be lifted are limited to truly exceptional cases or where there is an abuse of process. Neither was the case here.

Mechanical-Copyright Protection Society Ltd & Anor v Made Television Ltd & Ors

The Claimants objected to the Defendants’ proposed Counterclaim on the basis that it had no real prospect of success. The judge applied the IPEC cost/benefit analysis and found that giving permission to file the Counterclaim insofar as the points overlapped with points in the Defence would add nothing or virtually nothing to the costs of getting to trial. It would require a Defence to Counterclaim with the potential for a Reply to Defence to Counterclaim, and therefore the potential to cause some delay but on balance the judge granted permission.

The judge did not grant permission for those parts of the Counterclaim which did not overlap with the Defence.