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IP Snapshot – January 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.

Thatchers Cider Company Ltd v Aldi Stores Ltd

The claimant appealed against the first instance decision in relation only to s.10(3) Trade Mark Act:

“A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which is identical with or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”

The requirements for a s.10(3) claim are:

1. the trade mark must have a reputation in the UK;
2. there must be use of a sign by a third party within the UK;

• the use must be in the course of trade;

1. it must be without the consent of the proprietor of the trade mark;
2. it must be of a sign which is identical or similar to the trade mark;
3. it must be in relation to goods or services;

• it must give rise to a “link” between the sign and the trade mark in the mind of the average consumer;
• it must give rise to one of three types of injury, that is to say,
  1. unfair advantage being taken of the distinctive character or repute of the trade mark,
  2. detriment to the distinctive character of the trade mark (often referred to as “dilution”) or
  3. detriment to the repute of the trade mark (often referred to as “tarnishment”); and

1. it must be without due cause

It is not necessary for the trade mark proprietor to establish a likelihood of confusion, and the claimant submitted that the judge at first instance fell into error by failing to distinguish between an intention to deceive and an intention to take advantage of the reputation of the trade mark.

The Court of Appeal found that the defendant did intend the Sign to remind consumers of the Trade Mark and that this can only have been in order to convey the message that the defendant’s product was like the claimant’s product, only cheaper.  To that extent, the defendant intended to take advantage of the reputation of the Trade Mark in order to assist it to sell its product.  The fact that the defendant did not intend consumers to be deceived, or even confused, as to the trade origin of its product does not detract from this.  The Court of Appeal also found that at least some consumers received the intended message “loud and clear”, and the defendant was able to achieve substantial sales of its product in a short period of time without spending a penny on promoting it.  It is a legitimate inference that the defendant thereby obtained the advantage from the use of the Sign that it intended to obtain, and the appeal on s.10(3) therefore succeeded.

Merck Serono SA v Comptroller-General of Patents, Designs, and Trade Marks (Rev1)

The Court of Appeal dismissed the appeal against a decision refusing an application for a Supplementary Protection Certificate based on a second medical use patent, holding that the first marketing authorisation for the compound was the relevant one.

The Court reviewed the CJEU and English case, as well as its own ability to depart from either of those bodies of case law, and found that it was bound by its own previous case law (Newron), which had followed the CJEU case Santen.

The Court also found that even if it had been open to it to depart from Santen it would not have done so, believing that the decision in Santen to be correct, and the decision in Neurim had confused the law on SPCs, and noting that Parliament had not amended the SPC Regulation and it therefore remained harmonised with the relevant EU law.

Alcatel Lucent SAS v Amazon Digital UK Ltd & Ors

The Court of Appeal granted the defendant permission to amend its Particulars of Counterclaim and its Defence and Counterclaim to include a claim for an interim licence and an order for specific performance that the claimant enter into the interim licence, in light of the decision in Panasonic v Xiaomi which we reported here and in which the court granted a declaration that an interim licence was FRAND.

Pfizer Ltd v GlaxoSmithKline Biologicals SA & Anor

This is the decision on costs in the case reported in our 2024 Michaelmas Term update.  There was no dispute on the law and the judge ordered the overall unsuccessful party (the defendant) to pay 70% of the overall successful party’s costs of £6.312 million.

The judge also refused permission to appeal.

Hill v Touchlight Genetics Ltd & Ors

The claimant’s claim to be jointly entitled to various inventions and consequent registration as a proprietor and financial relief failed on the facts.  There was no argument as to the law.  The claimant’s memory was accepted by her counsel to be poor and not credible.  The judge therefore relied solely on the documentary evidence, which did not support the claimant’s case.

Celltrion Inc v Genentech, Inc & Anor

This decision contains a useful discussion of English law on anticipation by an equivalent.  The claimants argued that the scope of a patent claim must be the same when assessing validity and infringement, that the scope of a claim in relation to infringement includes equivalents, and therefore equivalents should also be considered when assessing validity.  This position has been rejected in previous cases and this rejection leads to the apparent injustice that a claim for infringement by equivalence might cover a product available to the public before the priority date, but the problem is resolved by the Formstein defence which the judge in this case concludes has become part of English law subject to a ruling to the contrary by the Court of Appeal or the Supreme Court.

The judge draws attention to the potential point of confusion in the application of the Formstein defence.  The correct approach is to consider the prior art as disclosed and compare that against the claim plus equivalents, as opposed to considering the prior art as disclosed plus equivalents of the prior art and comparing that broadened disclosure with the invention as claimed.

The patent is held not anticipated and also survives attacks on inventive step, sufficiency and added matter.

Rinkoff v Baby Cow Productions Ltd

The similarities between the original and the subsequent works were held not to be due to copying in this copyright case, and in any event the format of the TV show was held not to be a work capable of being protected by copyright as a dramatic work.  No storylines had been identified by the claimant, and the setting of the show and its basic premise of blending fictional scenes with live stand-up were described in terms which were too broad to lead to copyright protection.  Furthermore, the eight features of the format on which the claimant relied to support its claim for copyright (i.e. the setting, various filming techniques, etc) did not all feature in every episode.  This suggested to the judge that the format is not a ‘work’, or does not have a fixed form of expression, or both.