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IP Snapshot – March 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.

Lifestyle Equities CV and another v Amazon UK Services Ltd and others

This appeal concerns whether the marketing for certain products offered for sale on the Amazon US website is targeted at UK consumers and therefore constitutes an infringement of UK trade marks.

The relevant sales by Amazon took place in the US and title to the goods and the risk of loss passed to the purchaser on delivery to the carrier in the US.  Further, the purchasers of the goods acted in a purely personal capacity and not in the course of trade.

The Supreme Court affirmed as correct the principles set out in Merck:

–       First, in determining whether an advertisement of goods bearing a trade mark on the website of a foreign trader constitutes use of the trade mark in the UK, it is necessary to assess whether the advertisement is targeted at consumers in the UK and in that way constitutes use of the mark in relation to goods in the course of trade in the UK.

–       Secondly, the mere fact that a website is accessible from the UK is not a sufficient basis for concluding that an advertisement displayed there is targeted at consumers in the UK.

–       Thirdly, the issue of targeting is to be considered objectively from the perspective of average consumers in the UK. The question is whether those average consumers would consider that the advertisement is targeted at them. Conversely, however, evidence that a trader does in fact intend to target consumers in the UK may be relevant in assessing whether its advertisement has that effect.

–       Fourthly, the court must carry out an evaluation of all the relevant circumstances. These may include any clear expressions of an intention to solicit custom in the UK by, for example, in the case of a website promoting trade-marked products, including the UK in a list or map of the geographic areas to which the trader is willing to dispatch its products. But a finding that an advertisement is directed at consumers in the UK does not depend upon there being any such clear evidence. The court may decide that an advertisement is directed at the UK in light of some of the non-exhaustive list of matters referred to by the Court of Justice in Pammer at paragraph [93]. Obviously the appearance and content of the website will be of particular significance, including whether it is possible to buy goods or services from it. However, the relevant circumstances may extend beyond the website itself and include, for example, the nature and size of the trader’s business, the characteristics of the goods or services in issue and the number of visits made to the website by consumers in the UK.”

and in Argos

–       the mere fact that a website is accessible from anywhere in the world, and therefore may attract occasional interest from consumers there when this is not intended, should not give rise to any liability.

–       These passages [from Merck] make it clear that evidence of subjective intention is a relevant, and possibly (where the objective position is unclear or finely balanced) a determinative consideration in deciding whether the trader’s activities, viewed objectively from the perspective of the average consumer, are targeted at the UK. Subjective intention cannot, however, make a website or page (or part of a page) which is plainly, when objectively considered, not intended for the UK, into a page which is so intended.

–       It is important to note that the summary of principles in [Merck] relates to the example of an advertisement for goods, where the role of the average consumer will be to determine whether the advertisement is targeted at him or her. In each case it will be necessary to look at the acts which are asserted to be use of the trade mark, and to focus on whether those acts are targeted at the UK. The scope of the enquiry will vary from case to case, as will the factors which are relevant to its determination. To that extent, I am prepared to accept that the role of the average consumer on the issue of targeting may differ from case to case.”

The Supreme Court conducted its appraisal of the marketing and offer for sale of goods and concluded that “viewed from the perspective of the average UK consumer, they are from start to finish in their encounter with the USA website being told that they will be shown goods (including the US branded goods) available for delivery to them in the UK, and that those goods will indeed be delivered there if they choose to make an online purchase of them from the USA website.”

The Supreme Court dismissed the appeal, finding that the UK trade marks had been infringed.

Lidl Great Britain Ltd & Anor v Tesco Stores Ltd & Anor

In this long (for an appeal judgment) and detailed decision the Court of Appeal dismissed the appeals against the first instance judge’s findings of trade mark infringement, bad faith registration of the trade marks and passing off.

The finding of passing off was said by the Court to be a “somewhat surprising one” at first sight. The misrepresentation was not that the defendant was passing its goods off as the claimant’s, but that a substantial number of customers would be misled by the defendant’s signs into thinking that the defendant’s Clubcard prices were the same or lower than the claimant’s – in effect passing its prices off as someone else’s.

However, the claimant fell at the last hurdle when the Court of Appeal overturned the first instance finding of copyright infringement because the defendant had not copied what was original to the work said to have been infringed.

Hill v Touchlight Genetics Ltd & Ors

The Claimant in this Case Management Conference failed to persuade the Court that a single Scientific Adviser should be appointed to assist the Court with technical issues, rather than the usual arrangement of the parties exchanging expert evidence.

The judge commented that he was unaware that this issue had ever arisen before and explained that a Scientific Adviser is generally only appointed by way of supplement to the expert evidence.  He concluded that he should proceed on the basis that he should not appoint a Scientific Adviser unless satisfied that no technical disputes of any significance will arise at trial, because if issues were to arise then expert evidence would be required.

This being a patent case, it is likely that there will be technical disputes and he therefore ordered the usual exchange of expert evidence, but with the unusual variation that the exchange should be sequential and that the role of the experts was also to assist in educating the court on the technology.

Interdigital Technology Corporation & Ors v Lenovo Group Ltd & Ors

The defendants applied for permission under CPR rule 31.22(1)(b) to use confidential documents and information disclosed in proceedings A in proceedings B between the same parties. It was common ground that the defendants had already breached the terms of confidentiality agreed for proceedings A and the application was therefore retrospective.

The breach was said to be inadvertent and there had been no leak of any information with real commercial significance, but the judge said that any non-permitted use was nevertheless extremely serious and was compounded by, inter alia, the defendant’s failure to inform relevant third parties promptly or at all.

The defendant was granted the retrospective permission on the grounds that there was no substantial prejudice to the claimant or to any third parties, had the application been made timeously then it would have been granted, and the documents would inevitably be disclosed in proceedings B in any event.  Given the serious nature of the breaches, and to emphasise the importance of compliance with CPR31.22, the defendant was ordered to bear the costs of the claimant on the indemnity basis.

Bayer Intellectual Property GmbH & Ors v Aspire Pharma Ltd & Ors

The Court granted an interim injunction to cover a short period (9-10 days) between the expiry of an SPC covering a compound and the date judgment was to be handed down in an action relating to a dosage patent for the same compound.  The American Cyanamid guidelines were followed, in particular preservation of the status quo.

The judgment notes that if the Court had been aware of the consequences of not handing the dosage regime patent judgment down before the expiry of the SPC (i.e. that the patentee would be compelled to apply for an interim injunction), it could have given priority to the dosage patent case and the application could have been avoided.

Seraphine Ltd v Mamarella GmbH

The defendant applied for service of the claim to be set aside. The claim had been served firstly by post, without seeking the Court’s permission, pursuant to the 1928 Convention between His Majesty and the President of the German Reich regarding Legal Proceedings in Civil and Commercial Matters.  Unfortunately the Court did not need to decide whether that service was valid because the claim was served again under the Hague Convention via the Foreign Process Section, again without seeking the Court’s permission.  The question to be decided was whether the claimant was entitled to serve the proceedings out of the jurisdiction without the permission of the Court.

The claimant relied on 6.33(2B)(b): “The claimant may serve the claim form on a defendant outside of the United Kingdom where, for each claim made against the defendant to be served and included in the claim form – (b) a contract contains a term to the effect that the court shall have jurisdiction to determine that claim;”

The Court found on the facts that the claimant had a good arguable case on the basis of the 2021 terms document between the parties and was entitled to serve the claim without seeking the permission of the court in relation to claims based on that document, but did not and was not so entitled based on earlier 2015 and 2019 documents between the parties.

Ocean On Land Technology (UK) Ltd & Anor v Land & Ors

This is a case management decision which reiterates the importance of the cost benefit analysis required in the IPEC and includes a useful recap of some of the exceptions to the law of privilege. The claimants were alleged to:

i)  be using the without prejudice rule to cloak ‘unambiguous impropriety’;

ii)   have waived the protection of the rule for surrounding documents by putting a particular document in issue; and

iii)  some or all of the material fell within the ‘interpretation exception’ (Oceanbulk Shipping).

The judge summarised the rule on unambiguous impropriety, and we paraphrase:

–       the public policy rationale which underpins the without prejudice rule requires broad protection for statements made when seeking to settle a dispute and narrow application of any exceptions.

–       inconsistencies between materials covered by the without prejudice rule and those which are not are insufficient to remove the protection of the rule.

–       conduct or statements which do not go beyond the bounds of what is to be expected in negotiation are not within the scope of the exception.

On waiver:

–       if a party deploys without prejudice material in its pleadings or evidence to advance its case on the merits then the waiver exception can apply to those documents and comments on those documents.

On the interpretation exception:

–       objective facts which emerge during the course of WP negotiations which form part of the factual matrix relevant to the correct interpretation of a contract can in certain circumstances be admitted.

None of the exceptions applied, on the facts of the case.