IP General QA

Characteristics of the skilled addressee These will vary depending on the field of technology with which the patent is concerned and how advanced the invention is.

(Dyson Appliances Ltd v Hoover Ltd: graduate+experience Genentech HGH:team of Postdoc, access to latest high tech resources RIM : Masters in IT (for hand held devices

Pozzoli Spa VIMP test for inventive step replaces windsurfing int. test Obviousness A patent will be invalid for lack of inventive step if the invention claimed in it would have been obvious to SA

(a) ID "person skilled in the art", (b) ID the relevant knowledge of that person; 2. ID the inventive concept of the claim / construe it; 3. ID differences between state of art and inventive concept 4. without knowledge of invention as claimed, obvious to SA?

Sieckmann purposes for entering sign

(i) define the mark and the scope of protection (ii) allow access to the public and state authorities for inspection and (iii) avoid element of subjectivity in identifying and perceiving the mark.

solution to harmonization problem, proposed by Jacob?

harmonisation down is the right way unless it can be shown that there is a real economic need for this right. The presumption should be against imposing or extending monopolies or like Rs. Only harmonise up if a serious economic case for it is proved. e.g. pharmaceuticals

Developing a law of privacy out of the action for breach of confidence has been a complete waste of time.' Discuss.

'The court has consistently applied a rather haphazard case-by-case basis in judgments on breach of privacy. It held that it can be easier to show a reasonable expectation of privacy where there is a contractual relationship between the parties (McKennitt v Ash) such as where the D is the employee of the C (HRH Prince of Wales v Express Newspapers). A starting point that can be seen in the haphazard approach of the courts is the case of A v B. The court ruled there that those who court publicity will find that their right to privacy is diminished so that in that case, extramarital affairs were published. Similarly in Theakston v MGN, the court refused to restrain the publication of a story concerning the visit to a brothel by the C. The problem that arises here is what is meant by "those who court publicity" and how for their Rs may be diminished. Certainly it cannot be said that all who are in the public spotlight deliberately court publicity, nor should their right to privacy be diminished by virtue of being famous. The court in Campbell v MGN has attempted to restrain the free reign of that principle, so that a newspaper may be entitled to set the record straight but it cannot go too far in doing so. For example, publishing pictures of the C leaving a drug rehabilitation center was taking things too far. However, to court seems to have reverted back to its position of not granting a right to privacy where the C is a role model to young people, and where he had consistently denied allegations of infidelities; the newspaper can set the record straight (Ferdinand v MGN). The problem with such an approach is that the development of the law of privacy is ambiguous, uncertain, and extremely subjective. One can certainly lay down conditions based on past precedent, but it makes it hard to predict the courts' approach, especially in relation to those who "court publicity". The correct approach was that in Von Hannover v Germany, where it held that there is a distinction between information disclosed in the public interest, and where information is of public interest e.g. fodder for gossip and rumour-mongering. The information should thus only be disclosed where it is of public interest, and will only apply to those in an elected office. In Goodwin v MGN, the principle was extended to allow for information on the disgraced head of RBS which had to be rescued by the government using taxpayers' money to be disclosed. This seems acceptable, those in an elected office and relating to the governance of the people especially in a democratic country have a right to learn information about the people they put into office, or where their money was being used for and for whom. This distinction, the distinction between 'in the public interest' and 'of public interest'

PostKantoor ECJ lays conditions for descriptiveness when ist it descriptive?

-assessed against GS applied e..g APPLE -perception -all relevant facts -sufficient that it could be used descriptively -if registered in another EU state irrelevant -public interest requires that descriptiveness be available, so irrelevant if others use -combinations will tend to be descriptive but not necessarily. impression far removed aural+ visual assessment, rejected,DOUBLEMINT , FROOT LOOPS, accepted BABY-DRY imp (words must be loked at separate;y and together, may have different meaning together) -ok if acquired distinctive char, 2ndary meaning

Bellure: key points from ECJ

1. clarified that it is not necessary to show all three types of injury (only 1 of dilution, tarnishment and free riding) 2. use of a sign similar to a mark with a reputation, to freeride in order to benefit from its power of attraction, its reputation and its prestige, and to exploit the marketing effort =>unfairly taken advantage of the distinctive character or the repute of that mark NOTE: A pre-condition to establishing infringement under Article 5(2) is that the relevant public must make a connection between the allegedly infringing sign and the registered mark, or establish a "link" between them Ds witness provided this link

DO:recommendataions Digital Opportunity a review of intellectual property and growth 2011

1. use objective evidence 2. international PCT 3. CR licensing 4.Orphan works. The Government should legislate to enable licensing of orphan work 5.Limits to copyright. Government should firmly resist over regulation of activities which do not prejudice the central objective of copyright, namely the provision of incentives to creators. Government should deliver copyright exceptions at national level to realise all the opportunities within the EU framework, including format shifting, parody, non-commercial research, and library archiving. 6. Patent thickets and other obstructions to innovation (share work for patent reviews, no extensions to tech software, business methods, with international partners to establish a patent fee structure set by reference to innovation and growth goals rather than solely by reference to patent office running costs. renewal fees discourage low value patents 7. Enforcement of IP Rs. The Government should pursue an integrated approach based upon enforcement, education and, crucially, measures to strengthen and grow legitimate markets in copyright and other IP protected fields. 8. SME access to IP advice 9. IP system responsive to change

n some instances, where information has been obtained by unlawful means, the courts have focused on the conduct of the third party acquiring the information cf Malone v Commissioner of Police [1979] Francome v Mirror Group Newspapers [1984

1st case: no duty of secrecy in respect of information obtained when the police intercepted the claimant's telephone calls. 2nd: was an obligation of confidence where information was obtained when the claimant's telephone calls were overheard by a private investigator. NOTE HRA changes this

SmithKline Beecham Plc's similar to General Tire v Firestone e prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee

But the infringement must not merely be a possible or even likely consequence of performing the invention disclosed by the prior disclosure; it must be necessarily entailed. If more than one consequence, cannot invention will infringe. The flag has not been planted on the patented invention, although a person performing the invention disclosed by the prior art may carry it there by accident or (if he is aware of the patented invention) by design. Indeed it may be obvious to do so." Therefore, a disclosure which is capable of being carried out in a manner which falls within the claim, but is also capable of being carried out in a different manner, does not anticipate although it may form the basis of an obviousness attack.

BOC question

COCO v Clark 3 criteria, these are limited by Spycatcher 3 criteria Naomi Campbell v MGN Wainwright Van Hannover v Germany 1 and 2 Douglas v Hello!

McKennitt v Ash [2008]

First, is the information private in the sense that it is in principle protected by article 8? If "no", that is the end of the case. If "yes", the second question arises: in all the circumstances, must the interest of the owner of the private information yield to the right of freedom of expression conferred on the publisher by article 10?

definition of 'design' design right (unregistered designs) (CDPA 1988 s.213(2)

Fulton Co Ltd v Grant Barnett & Co, Electronic Techniques v Critchley Ocular Sciences v Aspect Vision Care

DOUBLEMINT 2004

However, in the DOUBLEMINT case of 2003, the ECJ found that DOUBLEMINT was purely descriptive of chewing gum, stating that just because 'double' and 'mint' in combination gave rise to a variety of possible meanings, this did not automatically mean that the words were not descriptive.

TRIPS domains: Standards

In respect of each of the main areas of intellectual property covered by the TRIPS Agreement, the Agreement sets out the minimum standards of protection to be provided by each Member. Each of the main elements of protection is defined, namely the subject-matter to be protected, the rights to be conferred and permissible exceptions to those rights, and the minimum duration of protection

HRH the Prince of Wales v. Associated Newspapers ([2008]

In that case, the claimant's private travel journals had been disclosed by one of his former employees. In those circumstances, where the information had been received in confidence, it was not enough that the information was "a matter of public interest" (Ibid, [67]); rather, the question was "whether, in all the circumstances, it is in the public interest that the duty of confidence should be breached" (Ibid, [68]). There is a "public interest" in exposing the truth and putting the record straight. This was conceded in Naomi Campbell and accepted as correct by the House of Lords (Campbell v MGN [2004] where the justification put forward for publication of personal information is not that the person concerned has made false factual statements but has been guilty of hypocrisy in advocating a set of standards or aspirations and behaving differently, much will depend on the particular circumstances, including the person's role (for example, whether s/he holds or is a candidate for public office) and to what extent their conduct is truly hypocritical.

l'Oreal v Bellure: CA reaction

May 2010 the English Court of Appeal reluctantly followed the CJ judgment in holding that the comparison lists were clearly free-riding of the sort condemned by the CJ. Lord Justice Jacob said his duty as a national judge was to apply the CJ judgment but he did not agree with or welcome what he said amounted to a "pointless monopoly", muzzling honest and truthful statements about lawful products, preventing consumer choice and restricting competition. In particular he criticized the failure to draw a line between "permissible free-riding" and "impermissible free-riding".

D v H Sedley

Sedley LJ announced that the right of privacy had, at last, arrived in England: [W]e have reached a point at which it can be said with confidence that the law recognises and will appropriately protect a right of personal privacy for two reasons: first, because of the growing recognition of a need for 'private space'. Secondly, in order to give effect to the right to 'respect for family life' provided for by Article 8 of the Human Rs Act of the European Convention on Human Rs. HOWEVER

Sa characetirstics deemed to have looked at and read publicly available documents and to know of public uses in the prior art. He understands all languages and dialects. He never misses the obvious nor stumbles on the inventive. He has no private idiosyncratic preferences or dislikes. He never thinks laterally. He differs from all real people in one or more of these characteristics ... (Lilly Icos Ltd v Pfizer Ltd [2001]

Technograph : no spark of invention Windsurfing international : interested to want to improve on prior art Hallen v Brabantia [1991]expected to try experiments which appear to him Genentech: sufficient time and resources, may be a team, common general knowledge may be worldwide Koninklijke Philips Electronics: determined Dyson Appliances Ltd v Hoover Ltd [2001]: mindset of people in the field, no filters for vauum=> impossible Vericore Ltd v Vetrepharm Ltd: may consult others in the required technical fields HOWEVER : skilled addressee is not to be equated with specialist witnesses called by the C and D to assist the court. The former is meant to be the average technician in the area to which the patent relates. These latter individuals are usually experts in their field.

Fulton Co Ltd v Grant Barnett & Co, considered that the design (of an umbrella case) was based on the shape or configuration produced by methods of construction of the design.

The fact that a special method or principle of construction may have been used in order to create an article with a particular shape or configuration, does not mean that there is no design right in the shape or configuration. The law of design right will not prevent competitors using that method or principle of construction to create competing designs ... as long as the competing designs do not have the same shape or configuration as the design right owner's design has.

L'Oréal SA v Bellure facts

The facts of the L'Oréal case concerned so-called "smell-alike" or imitation perfumes and the use of well-known registered marks (TRESOR, MIRACLE, NOA and ANAIS-ANAIS) in price and smell comparison charts. The case also involved infringement under Article 5 (2) of the Trade Marks Directive of L'Oréal's registered marks for bottle shapes and packaging in respect of the defendant's look-alike packaging (which did not incorporate L'Oréal's word marks). The defendants were using the registered trade marks for the purposes of comparing the characteristics, in particular the smell of the goods, in such a way that it did not cause confusion, did not impair sales under the well-known mark, did not jeopardise the essential function of the trade mark as a guarantee of origin, and did not tarnish or blur the registered trade mark. The question was whether this could still amount to the taking of "an unfair advantage". Article 5(2) protects marks with a reputation against three types of injury 1.dilution, tarnishment, 2. detriment to the repute of the mark ("tarnishment" or degradation of the mark); and 3. unfair advantage free-riding L'Oréal sued for trade mark infringement of the word marks under Section 10(1) and infringement of the bottle and box marks under Section 10(3) of the Trade Marks Act 1994. The case reached the Court of Appeal of England and Wales, which referred questions to the ECJ concerning the inter-relationship of the Trade Marks Directive (89/104/EEC) and the Comparative Advertising Directive (97/55/EC) (CAD), where the use was made in a manner that did not cause confusion and did not jeopardise the function of the trade mark as a guarantee of origin, but played a significant role in the promotion of the trader's product. In particular, Lord Justice Jacob sought guidance on the meaning and scope of the concept of "unfair advantage" under Article 5(2) and Article 3a(1)(g) of the Directives respectively.

DOUBLEMINT 2004 conditions to consider NOTE: When this approach was applied to DOUBLEMINT, there was held to be a tangible reference to mint flavour which is doubled in some way and therefore "readily perceived" as such, and the flavour was a prominent feature of the product. Registration was therefore denied. This approach was confirmed in the 2004 case of POSTKANTOOR, where the ECJ stated that if, due to the unusual nature of the combination of words which form a trade mark, the overall impression is sufficiently far removed from the descriptive elements of the words concerned and the combination creates a different impression from the individual words, the mark is registrable. If the new word has established its own meaning, independent of the individual components which make up the mark, then again it is registrable.

What is the relationship between the mark and the product? If the mark to be used is a general description in the particular trade then registration will be refused. How immediately is the message conveyed? If the mark quickly conveys the characteristic of the goods/services it will not be registrable. What is the significance of the characteristics in relation to the product in the consumer's mind? If the characteristics are intrinsic to the product or the consumer's choice of product, then the grounds for refusing registration because of the descriptive element are high.

TRIPS

agreement on trade related aspects of IP rights min standards for WTO members

IPR include

define basic protection of each, and refs or cases patents :PA 1977 exclusive R to use certain inventions CopyR CDPA 1988 TMA 1994 RDA 1949: registered designs URD: in CDPA CL: Passing Off and BOC

5. Consumer protection

informed choices Trademarks=> geography, reliability of source

justification of IPRs 6 grounds all are encapslated in TRIPS

natural Rs: Joh Locke encourage and reward innovation and creation encourage dissemination of info+ideas economic efficiency consumer protection tech transfer

4. Economic Efficiency

promotion of innovation=> efficiency if no protection=> free riders, no investments since once competition copies, no D IPR stimulates investors

Donoghue v Allied Newspapers also Baigent v random house HBHG case

the person who has clothed the idea in form, whether by means of a picture, a play or a book" . owns the copyright. idea/expression dichotomy

define IPRs

various Rs that aford legal protection to innovative and creative endeavour known in business sense as intangibles

TRIPS domains: Dispute Settlement

Agreement makes disputes between WTO Members about the respect of the TRIPS obligations subject to the WTO's dispute settlement procedures.

TRIPS domains

Agreement, which came into effect on 1 January 1995, is to date the most comprehensive multilateral agreement on intellectual property. Standards Enforcement Dispute Settlement

Eli Lilly v HGS speculative patents: protein patent European Patent Convention which, as many readers will be aware, states within Art 52(1) that an invention is only patentable if, among other things, it is "susceptible of industrial application". Art 57 EPC (from which s4 of the Patents Act 1977 derives in the UK) public policy

An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture. Thompson's Application [2005] rejected (engine creating energy without consuming fuel), examiner=> did not work Consistency and policy: the wider picture". Under this heading, Lord Neuberger recounted the intervention of the BioIndustry Association (BIA), which was stated to represent members with an aggregate turnover in 2010 of £5.5 billion. The BIA had argued that if the Supreme Court were to agree with the lower courts' reasoning on the issues then this would "make it appreciably harder for patentees to satisfy the requirement of industrial applicability in future cases." Furthermore, that this would result in UK bioscience companies suffering "great difficulty in attracting investment at an early stage in the research and development process"

BABY DRY 2001

Baby Dry Case the question was if Baby Dry Pamper could be trademarked. The examiner of OHIM and the Court of First Instance said no: The Examiner's decision to refuse registration was sustained by the First Board of Appeal of the OHIM which held that BABY-DRY in relation to diapers, whose purpose was to keep babies dry, consisted exclusively of words " . which may serve, in trade, to designate the intended purpose of the goods" . and that " . it was also devoid of distinctive character," . and thereby unregistrable under Article 7(1)(b) and (c) of Regulation No. 40/94. The Court of First Instance affirmed this decision and agreed that BABY-DRY " . merely conveyed to consumers the intended purpose of the goods but exhibited no additional feature to render the sign distinctive" . . The ECJ overturned this and ruled that it was distinctive, although was descriptive therefore could be held as a Trademark: [D]escriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. Any perceptible difference between the combination of words submitted for registration and the terms used in common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark.

British Airways plc v Ryanair Ltd [2001]

British Airways claimed that Ryanair's advertisements comparing their prices was misleading as it had stated they were 5 times more expensive. However, the Court dismissed the action stating that even if Ryanair's advertisement was misleading, it was not materially misleading given that the point they were trying to make, namely that flying with British Airways was a lot more expensive than flying with Ryanair, was still the same. This decision illustrates the permissive approach of the UK courts in dealing with comparative advertising. Although the approach has been criticised, it is in keeping with pro-competition stance the Court has adopted it has had for so many years.

Post l'Oreal v Bellure effect question unanswered questions. Is it necessary to have a specific intention to "free-ride"?

CA in Whirlpool Corporation v Kenwood Limited [2010] held that there was no intention by Kenwood to ride on the coat-tails of Whirlpool since Kenwood had its own goodwill. Even if a commercial advantage had been obtained as a result of the perceived similarity between the shapes of the mixer, there was no evidence that this was unfair. Although it might be possible for something other than intention to turn an advantage into an unfair one, no other factor had been identified.

IPR subsistence

CR and unregistered DR: auto patents, TM,RD : require registration

Sedley law recognises and will appropriately protect a right of personal privacy ...The reasons are twofold.

. First, EQ and the CL are today in a position to respond to an increasingly invasive social environment by affirming that everybody has a right to some private space. Human Rs Act 1998 requires the courts of this country to give appropriate effect to the right to respect for private and family life set out in Article 8 of the European Convention on Human Rs and Fundamental Freedoms.

Peck v United Kingdom (2003) ECHR

A man suffering from depression attempted suicide by cutting his wrists on the street. CCTV cameras filmed him walking down the street with the knife. The footage was then published as film and as photographs without his consent and without properly concealing his identity. The European Court of Human Rights held that, although the filming and recording of the incident did not necessarily interfere with his privacy, the disclosure of the CCTV footage by the local authority constituted a serious interference with his right to a private life. In this case there were insufficient reasons to justify disclosure of the footage without the man's consent and without masking his identity. Accordingly, disclosure of the material was a disproportionate interference with his private life.

how it is determined whether an alleged infringement falls within the wording of the patentee's claims. law

After the UK Patents Act 1977 the extent of protection conferred by a UK-EPC patent was governed by specific EPC provisions. Article 69 of the EPC, which applies to infringement proceedings for a European patent in the domestic courts of all EPC Contracting States provides:[3] The extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims. "Protocol on the Interpretation of Article 69" reads as follows:[4] Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties.

Douglas v Hello!

Catharine Zeta-Jones and Michael Douglas had sold photograph rights to OK! magazine for a fee of £1 million for their wedding day. All reasonable steps were taken by the claimants to ensure the day would be kept secret from the general media so as to honour their contract with OK!. Before OK! managed to publish the photographs it came to the claimant's intention that another rival magazine had plans to publish the photographs by managing to infiltrate the guest list and took undercover snapshots of the day. The claimants attempted to gain an injunction preventing the Hello! magazine printing the undercover photographs. In considering the action for breach of confidence the court found that as they were willing to openly trade their 'right to privacy' in exchange for money, they failed in their claim for breach of confidence. [46] However at a subsequent trial the claimants succeeded in claiming damages for the publication by Hello!. [47] In the former case the Court of Appeal accepted that the interference by Hello!

industrial property - industry's enemy? Robin Jacob VIMP

Cost benefit analysis; Enforcement; Intellectual property

Paris Convention

Covers unfair competition, article 10 According to Articles 2 and 3 of this treaty, juristic and natural persons who are either national of or domiciled in a state party to the Convention shall, as regards the protection of industrial property, enjoy in all the other countries of the Union, the advantages that their respective laws grant to nationals. In other words, when an applicant files an application for a patent or a trademark in a foreign country member of the Union, the application receives the same treatment as if it came from a national of this foreign country. Furthermore, if the intellectual property right is granted (e.g. if the applicant becomes owners of a patent or of a registered trademark), the owner benefits from the same protection and the same legal remedy against any infringement as if the owner was a national owner of this right.

Natural theory and Hegel Personality thoery

Creation extension of person belonging to that creator

British Leyland Motor Corpn Ltd v Armstrong Patents Co Ltd attempt to reach a compromise in respect of spare part protection with the new right, the unregistered design right.

Features of articles that are dictated by the need to fit or interface with each other so that the two together can perform their intended function, e g car mechanical parts such as an exhaust pipe, or which are dictated by the appearance of another part with which it is required to form an integral whole, such as car body parts, are excluded from design right protection. These exceptions were influenced by the 'spare parts exception' as expounded by the HL in

employee inventions. Sections 39-42 of the Patents Act 1977 provide for employee inventions in various ways. In particular there is provision for what is called "compensation" for an employee

Does the United Kingdom system work? How many employees are getting compensation? How much is being paid? I suspect the answers are "few" and "little". Certainly there are few reported cases on the provisions and I can hardly believe that this is because most of the claims are resolved without any formal dispute. Assuming the provisions have failed, does this matter? Is the incentive theory valid? Is more paid in Germany, as I believe it is? What is the effect in research departments in Germany, and particularly are there fights to be named as inventor? What about United States and Japanese company employee inventors? Is the whole theory of the thing a mistake? It is only hard research, not speculation which can begin to answer these questions. Yet they are important. If a system of extra-reward for successful inventions was a real and effective spur to employee inventors then surely, if our existing provisions do not work, they should be made to. if such a system is not effective or is not shown to be so, then let us get rid of it as having been no more than an emotive but ultimately pointless scheme.

CR key cases

Donoghue v Allied Newspapers Ashdown, public interest Yelland, cf HRH Prince of Wales v Associated Newspapers Ltd [2007], current events D

ECJ Bellure and comparative advertising

ECJ held that an advertiser who states either explicitly or implicitly in comparative advertising that the product marketed by him is an imitation of a product bearing a well-known trade mark presents "goods or services as imitations or replicas" within the meaning of Article 3a(1)(h) CAD. Following the ECJ's ruling, the Defendants accepted that the packaging infringed L'Oréal's trade marks, but disputed that the comparison lists fell within Article 5(1)(a) or 5(2) of the Trade Marks Directive and argued in the alternative, that this use complied with the CAD.

MOBIL III/Friction reducing additive [1990]

EPO has further extended this principle to novelty of purpose in non-medical fields here: a new use for a substance previously used as a rust inhibitor.

recent distinctiveness/descriptive cases

EUROHYPO 2008: ECJ ruled that although there was some overlap between the 'distinctiveness' and 'descriptiveness' grounds for refusal to register a trade mark, each ground was independent and required separate examination.BUT EUROHYPO mark lacked distinctive character as the relevant public (in this case, the average German-speaking, reasonably well-informed and observant consumer) understood the sign EUROHYPO as referring to financial services (particularly to M loans paid in euros). The ECJ agreed with the CFI in that the components " . EURO" . and " . HYPO" . were descriptive and the overall concept of " . EUROHYPO" . did not give an overall impression that went beyond the sum of its parts. There was no additional unusual element HOMEZONE for telecom goods: Court also found that the Board had failed to explain that, as the word " . homezone" . was used descriptively by some mobile-network service providers, the trade mark HOMEZONE necessarily involved a reference to a tariff, and was therefore descriptive of a telecommunications service. INSULATE FOR LIFE: found that the relevant public would understand the word sign INSULATE FOR LIFE as "a reference to very long-lasting services related to the use of a particularly durable insulation material, and not as an indication of the commercial origin of those services". Therefore, the sign did not have an unusual or ambiguous character which would lead the relevant public to make an association other than with the services being provided.

Davidoff exhaustion of Rs Court was asked to rule on how consent to first marketing was to be determined in the case of parallel imports coming from outside the EEA. Despite Laddie J's grave doubts about the compatibility of Silhouette with the origin function of trade marks, the Court made the following points in its ruling

First marketing outside the EEA does not exhaust the trade mark owner's Rs. 'Consent' has to be a EU concept and, because of the wording of Article 5 of the Trade Marks Directive, is a decisive factor. Articles 5 to 7 of the Trade Marks Directive are a complete harmonisation of the owner's Rs. Consent must be so expressed that an intention to renounce Article 5 Rs must be unequivocally demonstrated. This will normally be by an express statement. It may be implied but the facts must unequivocally demonstrate that the trade mark owner has renounced his/her right to oppose the placing of the goods on the market within the EEA. Consent may not be implied from the fact that the trade mark owner has not communicated to all subsequent purchasers his/her opposition to the goods being marketed in the EEA, from the fact that a warning notice was not placed on the goods, from the absence of appropriate contractual reservations in any agreement transferring ownership of the goods, nor from the owner's silence. The onus of proof is on the importer to show consent, not on the trade mark owner to show lack of consent. It is irrelevant that retailers/wholesalers did not pass on the trade mark owner's reservations.

Jacob proposal for petty patent system: substantial. So the patent system is not available for these "petty" inventions. The problem is particularly significant for small and medium size companies (SMEs): all too often they find their ideas copied and as a result they cannot find the capital necessary for investment. So what is needed is some lesser right than a full patent, a right which costs less, for instance because there is no examination.

First, consider the position of SMEs. Why should they be the winners if petty patents become possible Europe-wide? Big industry will take these out more readily than small industry--especially if they are cheap. A competent corporate patent department will not only apply for patents to cover the company's products--it will surround the patents with an outer defence wall of petty patents. A small man wishing to innovate will be able to get his petty patent cheaply--but will not know unless it is searched whether it is any good. And if he wants to market his new product he is likely not only to have to search for patents but for petty patents too. And if the latter are unexamined then he will have to take their advice as to their scope and validity. The advice will include the cost of searching. And who will get the best advice--the big company or the little company? You will notice that I have here specifically included the costs of lawyers and patent agents in the costs of the system. They are all, of course, loveable and especially deserving people. But in economic terms they are a compliance cost of the intellectual property system. Industry has to pay for them. So far as I can see compliance costs have not been taken into account at all. RISKS: If this system is imposed on Europe and it turns out to be mistaken, it will be very, very difficult to go back. Petty patents, once granted, will not be removable. in practice copyright in industrial designs operated as a partial petty patent system preventing close copying of industrial artefacts. Again I have a question. What good or harm did the system do? Surely we can have more concrete answers than "it prevented unfair copying". Did the system encourage innovation or investment? Or did it unduly cushion companies into lazy reliance on the protection given so that their need to beat others in the market by novel design was reduced? Are there no ways of finding out by research?

DO: need for IP to adapt Digital Opportunity a review of intellectual property and growth 2011

IP law must adapt to change. Digital communications technology involves routine copying of text, images and data, meaning that copyright law has started to act as a regulatory barrier to the creation of certain kinds of new, internet based businesses. With two thirds of the world's population yet to achieve direct connection to the internet, this digital revolution has by no means run its course

DO: enforcement

IPRs cannot succeed in their core economic function of incentivising innovation if Rs are disregarded or are too expensive to enforce. Ineffective Rs regimes are worse than no Rs at all: they appear to offer certainty and support for reliable business models, but in practice send misleading signals. Widespread disregard for the law erodes the certainty that underpins consumer and investor confidence. In the most serious cases, it destroys the social solidarity which enables the law abiding majority to unite against a criminal minority. These are powerful reasons for supporting effective enforcement of IPRs.

Dyson Ltd v Qualtex ( UK ) Ltd CA accepted propositions set out in the judgment of the trial judge, Mann J. 19 These are as follows

It does not matter if there are two ways of achieving the necessary fit or connection between the subject article and the article to which it fits or with which it interfaces. If the design chosen by the design right owner is a way of achieving that fit or interface, then it does not attract design right no matter how many alternative ways of achieving the same 'fit' might be available. The article with which the subject article is interfacing can be part of the human body. In that case, triggers and a catch were designed to interface with the human finger or thumb. (The judge relied upon the earlier decision of Laddie LJ in Ocular Sciences Ltd v Aspect Vision Care Ltd 20 who had held that the design of contact lenses was excluded from protection because they were designed to fit with the eyeball which was an 'article', albeit living. 2. exception excludes design right even if the relevant part of the design performs some function other than the function described in CDPA 1998 s 213(3)(b)(i).

Bellure comparative advert, response of CA Jacob

Jacob LJ felt that he had no choice but to hold that the comparison list fell within Article 5(1)(a), holding that, according to the ECJ, the use went beyond "purely descriptive" use because it was used for advertising. He concluded that a line was to be drawn between something like a discussion between a would-be seller and his potential customer ("I can supply a diamond cut in the same shape as Spirit sun")—which was apparently not "advertising"—and an "out and out general purpose advertising aid" such as the comparison list. Jacob LJ found that the comparison lists did not fall within the defence provided by the CAD. He concluded that even saying, truthfully, that the Defendant's product had an essential characteristic of the trade mark owner's product amounted to saying that the product was an "imitation or replica" and so fell outside the protection of the CAD. Jacob LJ said that he understood this ruling to mean that the provision should be read as though the word "unfair" was simply not there. He concluded that there was no line between "permissible free riding" and "impermissible free riding". Jacob LJ stated that he did not agree with or welcome this conclusion, which amounted, in his view, to a pointless monopoly. But it was, he noted, his duty to apply it, as there was, by use of the comparison lists, clearly free-riding of the sort condemned by the ECJ.

Wainwright v Home Office

Lord Hoffmann firmly rejected resisted Sedley LJ's invitation to the privacy party: T]he coming into force of the Human Rs Act 1998 weakens the argument for saying that a general T of invasion of privacy is needed to fill gaps in the existing remedies. Sections 6 and 7 of the Act are in themselves substantial gap fillers; if it is indeed the case that a person's Rs under article 8 have been infringed by a public authority, he will have a statutory remedy. creation of a general T will, as Buxton LJ pointed out in the CA, at [2002] QB 1334, 1360, para 92, pre-empt the controversial question of the extent, if any, to which the Convention requires the state to provide remedies for invasions of privacy by persons who are not public authorities.

Wainwright v Home Office

Lord Hoffmann held that there was no tort for invasion of privacy, because (owing to the experience in America) it was too uncertain. Moreover, a claim under Article 8 of the ECHR, (right to privacy and family life) did not help because the Convention was merely a standard which applied to whatever was currently present in the common law. Common law protection was sufficient privacy protection for the ECHR's purpose. The assertion that there may have been a breach of Article 3 (inhuman and degrading treatment) was completely unfounded In Lord Scott's opinion the way the strip searches were carried out had humiliated and caused distress to both Mrs Wainwright and to Alan, and was "calculated (in an objective sense)" to do so, even if this was not the intention of the prison officers. However, that was not tortious at common law, even if the humiliation and distress were intended.[2] The appeal was dismissed unanimously by the law lords.

how it is determined whether an alleged infringement falls within the wording of the patentee's claims. give an accurate summary of Lord Hoffmann's test in Kirin-Amgen VIMP note IMPROVER test no longer valid:

Lord Hoffmann, as he became, then restated the law again in Kirin Amgen, appearing to return to the test first set out in Catnic. The question to be asked today when there is a difference between the claimed invention and the alleged infringement is 'what would a person skilled in the art have understood the patentee to have used the language of the claim to mean?' case affirmed that: "Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, "the meaning of the words the author used", but rather what the notional addressee would have understood the author to mean by using those words." (Paragraph 32 of the judgement) It is a common misunderstanding that the words of the claims should be understood as what the author used them to mean. This is not the case. Rather, the claims should be understood as what a skilled person (at the date of filing of the application) would have understood the author to be using the words to mean. Additionally, if a claim is intended to cover products or processes which involve the use of technology unknown at the time the claim was drafted, then the patent specification and claims based thereon should be drafted so that a person skilled in the art would understand the description in a way which was sufficiently general to include the new technology.

Campbell v MGN Ltd BOC=> misuse of private info

Lord Nicholls that a cause of action for breach of confidence had moved from the constraint for the need for a prior contractual relationship to the imposing a confidence where a party came into private information which was known to 'be fairly and reasonably regarded as confidential'. [23] Lord Nicholls also asserted that the labelling of the cause of action as a 'breach of confidence' was unhelpful and awkward as the label inferred the need to establish a duty of confidence and in most cases information about someone's private life would not necessarily be confidential but would be more akin to being considered 'private'. [24] Therefore, he sought to establish that as the breach of confidence law evolved in how it protected private information, the way in which it classified and categorised information should be modernised into the tort of misuse of private information to reflect the change in society from protecting confidence to addressing the actual need to protect private information.

Re Ghazilian's Trade Mark Application [2001]

Masterman's Design [1991] RPC 89 - the case of the hairy doll with mimicked male genitalia which was allowed on appeal by Aldous J; this pro-duced the concept of the 'right-thinking member of public' in relation to an objective test of what is con-sidered to be offensive. In Ghazilian the test that emerged, building on Masterman's Design, was that mere offence to a section of the public, in the sense that that section of the pub-lic would consider the mark distasteful, is not enough for section 3(3)(a) to apply. It applies if use of the mark would justifiably cause outrage, or would be the subject of justifiable censure amongst an identifiable section of the public, as being likely significantly to undermine current religious, family or social values.

Farmer Build Ltd v Carier Bulk Handling Materials Ltd [1999]

Mummery LJ explained that the word bears the normal copyright meaning of 'not copied'. He added that section 213(4) entails a two-stage enquiry, namely first, whether the design is original in the copyright sense, and then whether, even if not copied, the design is 'commonplace'

l'Oreal v Bellure Q 5 asked to ECJ Is harm needed for unfair advantage? The court answered the 5th question first. This boiled down to whether there could be unfair advantage under Art.5(2) without (a) confusion or (b) detriment to the earlier mark.

NO . Since only one of the types of harm mentioned in Art.5(2) is needed for there to be infringement, there could be no need for detriment to repute or distinctiveness for unfair advantage to be made out. We can see why the UK Courts might have wanted to introduce a harm to trade mark function requirement in here, but there was no basis for it on the face of the Directive.

10(6) of the TMA states:

Nothing in the preceding provisions of this section shall be construed as preventing the used of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or licensee. But any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark."

Synthon test for novelty

Novelty For a piece of prior art to anticipate a patent that prior art must (1) disclose subject matter which, if performed, would necessarily infringe that claim; and (2) disclose that subject matter sufficiently to enable the skilled addressee to perform it.

Critically discuss the following issues in relation to the United Kingdom law of unregistered designs: (a) the definition of 'design' in s 213(2) of the Copyright, Designs and Patents Act 1988;

Part III CDPA would... In Part (a), the Examiners expected the policy behind the creation of the unregistered design right to be mentioned. The good answer would work systematically through all the requirements of s.213(2) (i.e. 'any aspect', 'shape or configuration', 'article' etc.) with appropriate case law illustrations. Better answers would be able to draw a comparison with copyright, registered designs or the EU unregistered design right.

easier to harmonise up than down i.e. give more Rs, in Germany CR was 70 years, so increase by 20, but what is the impact???

Publishers and copyright owners welcomed the unexpected and undeserved gift. No Rs were taken away in Germany where they already had 70 years so there were no problems there about destruction of existing property. Only the general public lost, not only financially but in other ways too, for instance the reimposition of copyright for another 20 years had serious implications for scholarship. See for instance the powerful criticism8 by a professor of English, Professor Patrick Parrinder, of the Term Directive. He points out how the dead hand of copyright prevents the work of scholars in a variety of ways. Publishers cushioned by entrenched Rs are not interested in annotated editions of correcting mistakes in existing texts: they just go on collecting the money.

Dyson Ltd v Qualtex ( UK ) Ltd 1 must be a limit to the parts argument of a designe

So I turn to the individual points argued, of which this was the first. UDR can subsist in the "design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article". This is extremely wide - it means that a particular article may and generally will embody a multitude of "designs" - as many aspects of the whole or part of the article as can be. What the point was of defining "design" in this way, I do not know. The same approach is not adopted for ordinary copyright where the work is treated as a whole. But even if with this wide definition, there is a limit: there must be an "aspect" of at least a part of the article. What are the limits of that? I put it this way in Fulton v Totes (2004) The notion conveyed by 'aspect' in the composite phrase ... is 'discernible' or 'recognisable

l'Oreal v Bellure, implications of ECJ

TM owner can prevent use not only where the essential function (namely, the guarantee of origin) of the mark is jeopardised but also where any of the mark's other functions are affected, such as the guarantee of quality of the goods or services, and those of communication, investment or advertising. The focus in L'Oréal is on the commercial advantage obtained by the D rather than damage to the trade mark owner's business. Even if no confusion and no harm, the competitor may have still benefitted from the investment which has gone into creating the iconic status or cachet of the well-known brand. TM owner must show D has obtained a commercial advantage from the reputation of his mark by establishing a link with the well-known mark through use of an identical or similar sign. While the goods in L'Oréal were the same, a point to note is that Article 5 (2) applies whether the goods in question are similar or dissimilar. Such TMI similar to UC and, at least for the particular circumstances of this case involving well-known marks used on look-alike or imitation products, goes beyond PO. For those who consider the UK has historically not given adequate protection against UC, for example against supermarket own brands which copy the get-up of the leading brand, the ruling has been welcomed. Others who consider the pendulum has swung too far in the direction of protecting brand owners point out that the prevention of "free-riding" on goodwill, where there is no confusion about origin, no damage of any kind, no blurring and no tarnishment, is wider than, say, US anti-dilution laws.

Trade Marks Directive and the corresponding national legislation (ours is the 1994 Act) have sought to harmonise in part European Trade Mark Law. But at the same time there are many who seem to think that it has also taken trade mark law well beyond anything conventionally recognised as such. Wagamama case well-known Japanese noodle bar. The Ds intended to open an Indian restaurant called "Rajamama." The Cs proved that a significant number of people would think that Rajamama was not only an Indian version of Wagamama but also that it formed part of the same enterprise. So there was passing off.

The Cs proved that a significant number of people would think that Rajamama was not only an Indian version of Wagamama but also that it formed part of the same enterprise. So there was passing off. Laddie J. also held that there was trade mark infringement because Wagamama was a registered mark. went on to consider what the position would be if people thought no more than that Rajamama was a sort of Indian Wagamama but did not think it was commercially connected with it. He said there would be no infringement in those circumstances. He held that the phrase in the Trade Mark Directive: "a likelihood of confusion on the part of the public which includes the likelihood of association between the sign and the trade mark" meant only that a kind of association which led to confusion was an infringement.

NC v MGN Lord Hope , Hale test for privacy

The mind that has to be examined is that, not of the reader in general, but of the person who is affected by the publicity. The question is what a reasonable person of ordinary sensibilities would feel if she was placed in the same position as the C and faced with the same publicity It should be emphasised that the 'reasonable expectation of privacy' is a threshold test which brings the balancing exercise into play. It is not the end of the story. Once the information is identified as 'private' in this way, the court must balance the claimant's interest in keeping the information private against the countervailing interest of the recipient in publishing it. Very often, it can be expected that the countervailing rights of the recipient will prevail.

Registered design Subject to official examination at Designs Registry Registrable at Designs Registry. Must be novel. Infringement does not require copying. Maximum term 25 years RDA 1949 as amended In general the Rs granted can overlap with unregistered right

Unregistered design Arises automatically subject to qualification not registerable Need not be novel but a requirement of 'original' creation; must be created independently and not be 'commonplace' INF requires copying 15 years max Governed by Part III of CDPA 1988

requirement of graphic representation; discuss

The requirement of graphic representation is set out in S1(1) of the Trade Mark Act 1994 as part of the preliminary requirement of a mark being registered as a trade mark. The policy of S1(1) is to set out the type of signs a trade mark may consist of (Postkantoor). It is the minimum requirement of registrability (Nichols v Registrar) and the list in S1 is not exhaustive (Shield Mark v Joost Kist). The definition of sign is very broad, covering anything that conveys information (Philips v Remington) which can be perceived by human senses (Sieckmann v Deutsches). Words are plainly included (British Sugar v James Robertson) but it need not be visual (Shield Mark). The applicant must then enter the sign into an 8 x 8 cm space in the TM3 Form. The purposes of doing so, as stated in Sieckmann, are to (i) define the mark and the scope of protection (ii) allow access to the public and state authorities for inspection and (iii) avoid element of subjectivity in identifying and perceiving the mark. Given the broad identification of sign, how then can the applicant fulfill this requirement? The European Court of Justice (ECJ) sets out the rules and criteria in Sieckmann: (i) a mark does not have to be capable of being perceived visually, as long as it can be represented graphically, and (ii) the representation should be clear, objective, precise, self-contained, durable, intelligible and easily accessible. The above guidelines are applicable to all types of sign. But for nonstandard marks, difficulties may occur. For registering smell as trade mark, ECJ held in Sieckmann it was insufficient to represent it by word description, sample and chemical formula. Because of the flaw in Art 267 TFEU, the ECJ did not provide a general guidance on this matter, so in Eden v OHIM, the smell of ripe strawberry cannot be represented by the picture of strawberry nor the word description. For sound mark, a tune can be represented by musical notation (Shield Mark). But other sound is not capable to be represented by word description, sound recording nor spectrograph. As for colour, it is acceptable to use the Pantone system or other internationally recognised system (Heidelberger). But the colour orange cannot be represented by the sample of the colour (Libertel v Benelux). Refractive index is not sufficiently clear neither (Ty Nant Spring Water). Regarding shape mark, it is not ok to represent by word description, but a picture is alright (Swizzels Matlow). From the above we can see it is still uncertain as to how some nonstandard marks (e.g. smell, sound) can be graphically represented. And even if they can pass this hurdle, they may fail in S3 as lacking the ability to perform the trade mark function.'

tradmark distinctiveness

Within the European Union, Trade Mark law is regulated by a Trade Marks Directive which has become law in each member state and a Community Trade Mark Regulation. Under Article 3 of the Directive, trade marks that lack distinctive character or serve in the trade to designate the characteristics of the goods or services for which registration is sought cannot be registered. Under Article 7 of the Regulation, marks which consist exclusively of signs or indications which designate the type or other characteristics of the goods cannot be registered. The approach of the European Courts on the distinctiveness of trade marks has fluctuated over time. EU case law has laid down guidelines for distinctiveness which require consideration of the goods and services in respect of which registration is sought, as well as the understanding which the relevant public has of the trade mark.

A v B plc and Theakston v MGN Ltd

although the courts appear to have eliminated the requirement of a pre-existing relationship, the fact that only one party wishes to keep the information private and confidential deprived the plaintiffs in A v B plc and Theakston v MGN Ltd of the protection under the law of confidence. The requirement of an agreement to keep the information confidential therefore renders actions for breach of confidence inadequate for the purposes of protecting an individual against invasion of privacy by unwanted publicity

1. 'The fact that there is no general concept of unfair competition in the United Kingdom is indefensible.' Critically discuss.

although there is no discrete law of unfair competition in the UK, as a member of the Paris Convention it is obliged to provide effective protection against unfair competition. critically analyse the way in which the law of passing off and breach of confidence provide de facto protection against unfair competition, and commented upon its' effectiveness. Reference was made by such candidates to key cases such as Reckitt and Coleman v Borden (the Jif Lemon case) and Coco v Clarke.

Critically discuss (a) the requirement of graphic representation;

answer, having established the context in which graphic representation appears in the Directive and/or TMA, would set out the reasons given in Sieckmann for the requirement together with the criteria. It would also use effective case law illustrations of the application of Sieckmann and would evaluate critically the outcome in the case itself. requirement of graphic representation is set out in S1(1) of the Trade Mark Act 1994 as part of the preliminary requirement of a mark being registered as a trade mark. The policy of S1(1) is to set out the type of signs a trade mark may consist of (Postkantoor). It is the minimum requirement of registrability (Nichols v Registrar) and the list in S1 is not exhaustive (Shield Mark v Joost Kist). The definition of sign is very broad, covering anything that conveys information (Philips v Remington) which can be perceived by human senses (Sieckmann v Deutsches). Words are plainly included (British Sugar v James Robertson) but it need not be visual (Shield Mark). The applicant must then enter the sign into an 8 x 8 cm space in the TM3 Form. The purposes of doing so, as stated in Sieckmann,... Given the broad identification of sign, how then can the applicant fulfill this requirement? The European Court of Justice (ECJ) sets out the rules and criteria in Sieckmann: discuss non standard marks and cases

Electronic Techniques v Critchley

as design right is concerned with the protection of the design not the article itself, the design could well be applied to other articles example is given handle for a spoon which could equally be applied to a fork

registrability of either aural (sound) marks or gustatory (taste) marks;

aural: Shield Mark BV v Joost Kist gustatory: Eli Lilly's Trade Mark Application (The Taste of Artificial Strawberry Flavour)

impact of modernisation on IPR

biotech, IT , drugs communication, entertainment, are all knowledge based, image Rs , character merchandising require much more protection in this century. in Industrial Rev, industrial property was important, but this has now changed. pressing issue is IPR in digital age

'Developing a law of privacy out of the action for breach of confidence has been a complete waste of time.' Discuss.

breach of confidence in Coco v Clark and could describe the judicial attitudes to privacy before and after the implementation of the Human Rs Act, pivotal judgment of Sedley LJ in Douglas v Hello! Equally, many were able to describe the outcome in Campbell v MGN , set out Lord Hope's test for when there has been a misuse of personal information, list the factors to be taken into account from Murray v Express Newspapers. In addition cases: McKennitt v Ash HRH Prince of Wales v Express Newspapers A v B Theakston v MGN Campbell v MGN Von Hannover v Germany 1,2 (Ferdinand v MGN) Goodwin v MGN

BOC v misuse of private information difference in scope

breach of confidence only seeks to protect the information which was protected either by the secret nature of the information or the subject to a confidentiality clause. Whereas the tort of the misuse of private information focuses much boarder to include that information which the defendant has published or is intending to publish this can be considered an intrusion into an individual's private life. note however in many instances the courts have allowed the publication of stories so long as they do not contain any falsehoods about the individuals concerned. Rather than taking the alternative approach of preventing an entire publication the approach of the courts has been to prevent the specific offending part of an article. Similarly in the Douglas cases referred to above, when an individual has or has intended to make public the private information they will not be able to benefit from the protection of the right to privacy.

Paramount Foods Inc ('Paramount') is the registered proprietor of the trade mark WONDERFUL, which was first registered as a United Kingdom trade mark in 2001 in respect of foodstuffs in Class 30. The company specialises in the supply of pre-packaged crisps, nuts and other forms of snack to the hotel trade. For several years its products were very successful but since 2007 no sales have been made due to a long-running contractual dispute with one of Paramount's principal suppliers of raw ingredients. That dispute has now been resolved and Paramount is in the process of negotiating a lucrative contract to supply the Best Eastern hotel chain, hoping to re-launch its products later in 2012. Paramount consults you as it has been notified of the following trade mark applications which have recently been advertised in the Trade Marks Journal: (i) WONDERFILL for frozen yoghurt; (ii) IT'S A WONDERFUL LIFE for biscuits; (iii) WONDERFUL for cleaning preparations. Advise Paramount: (a) whether it should oppose these pending applications; and (b) if so, on what grounds it could do so.

brought under s.46(1)(b) not s.46(1)(a) as many argued. The key issues of genuine use and proper reasons for non-use should have been debated using CJEU case law, not UK cases. Even where the cases were mentioned, they were poorly applied to the facts (can it really be said that a five year contractual dispute over the supply of ingredients for crisps and snacks is a proper reason for non-use of the mark beyond the control of its owner?) Few considered whether WONDERFUL was at risk of being declared invalid 'complementary goods' under the Canon test. Many candidates appeared never to have heard of s.5(3) TMA (identical or similar mark for dissimilar goods). Deal with the following issues: first, whether the mark was liable to a counterclaim for revocation or invalidity. In the case of revocation, had the mark been put to genuine use (as defined by the CJEU in Ansul) or were there proper reasons for non-use (as defined by the CJEU in Armin Häupl v Lidl)? In the case of invalidity, did the mark breach s.3 TMA (descriptive?) and if so, was there sufficient postregistration use to confer acquired distinctiveness under Windsurfing Chiemsee? Next, each junior mark should have been systematically assessed under s.5(1), s.5(2) and s.5(3) TMA in turn, with the criteria and relevant cases for each element of each sub-s clearly stated and applied. EXTRACT '(6a) This essentially concerns if it is safe for the trade mark (TM) owner to oppose as he may find his mark revoked in an opposition action. Any one can bring such an action (S46(4) TMA 1994). Paramount ("P") has not used the mark since 2007 and there have been 5 years [non-use]. Pursuant S46(1)(b), such non-use for 5 years is a ground for revocation (the onus is on P to prove use of the mark (s6A TMA)). This requires genuine use as defined in Ansul v Ajax. Clearly there has been no use. On the facts, P has been negotiating a contract. But it may not be genuine use as it is not to create/preserve outlets for the products (Ansul). Granting a licence is just a preparation to use and not use itself (Philosophy v Ferretti). But P may give proper reason for non-use, (Magicball; Armin v Lidl). Such reason should be related to obstacles independent of the will of the TM owner which jeopardise the appropriate use of the TM. On the facts, it is quite probably that the contract dispute is independent in P's will which affect the use of the TM, so it is safe for P to oppose these applications. In addition, if P's TM is held to be revoked, the effect is prospective only (S46(6)). P may also be careful if its TM will be declared invalid under S47. The biggest opposition will be under S47(1) and S3(1) that the mark is descriptive. By the test in Doublemint, a mark will be descriptive if one of its possible meanings describes a characteristic of the product, now or in the future, saying 'wonderful' about a snack. May be caught as it could be the consumer's feeling after the eating the snack. But overall, the TM has been used for years and not objected. It is up to the opponent to rebut the presumption of validity (S72). So, it is quite safe in P's case this will not be so.' Comment on extract Although not reaching the correct conclusion on whether there were proper reasons for non-use of the mark, the candidate has dealt with revocation and invalidity of the mark in a concise manner with appropriate use of case law and therefore reached the standard of an upper second. Their answer to Part (b) (too long to repeat here) dealt with the grounds of opposition systematically with good application to the facts.

Skilled addressee and prior art

common general knowledge held by the skilled addressee is plainly a critical issue in an assessment of both obviousness and insufficiency. In general terms with obviousness, the more extensive the knowledge base of the skilled addressee then the greater likelihood of a patent claim being found to be obvious. In the case of insufficiency, where the skilled addressee has a greater knowledge base, this can often increase the chances of the patent being found to provide a sufficient description of the invention and the method by which it is to be performed result :SA assumed to have read ALL available prior art anywhere in the world

Jacob 1997, droit de suite What have artists themselves to say about droit de suite ? Some are in favour. But have they really thought the thing through? The right sounds nice--more money for artists. But can that really be shown? How much would go to agents anyway--you can't make cash inalienable.

conclusion is simple: the case for droit de suite is not made out. There has been nowhere near enough research or economic analysis. There ought to have been. One should not go about making Community-wide monopoly or like Rs without proper in depth economic and quantitative studies. The Commission should go back to the drawing board. It should be looking at abolishing droit de suite --at harmonising down or simply leaving things as they are. It is a nice emotional idea, but in practice it may be worse than useless.

TRIPS attempts to address these 6 points balance between

conflicting interest of society in eco/cultural dev individual to secure fruits of labour

discuss: the treatment accorded to descriptive trade marks;

consider the context in which the objection to descriptive marks occurs (the absolute grounds in Article 3/s.3). It would discuss the CJEU decisions in BABY DRY and DOUBLEMINT as well as explaining how the objection can be overcome with evidence of acquired distinctiveness. basic of the TMA holds that a descriptive character can not be a Trademark; however there have been certain Trademarks that have been descriptive but capable of being a Trademark. This is because the rules under the EU Council Directive 89/104/EEC which is incorporated in the TMA does not rule out Trademarks of description exclusively, there is the allowance that if the Trademark is distinctive in nature then it will be awarded Trademark status. This has caused confusion because what is excluded and what is not, i.e. what is distinctive.

skilled addressee is used by the judges to:

construe the claims wrt description of the invention and any drawings novelty inventive step, whether the description of the invention is sufficient (sufficiency) determine whether an invention has been the subject of an impermissible amendment, so that it is liable to revocation for having extended the description or claims infringement not literally within words of the claim

TRIPS domains: Enforcement

domestic procedures and remedies for the enforcement of intellectual property rights. The Agreement lays down certain general principles applicable to all IPR enforcement procedures. In addition, it contains provisions on civil and administrative procedures and remedies, provisional measures, special requirements related to border measures and criminal procedures, which specify, in a certain amount of detail, the procedures and remedies that must be available so that right holders can effectively enforce their rights.

(Beloit Technologies v Valmet Paper Machinery [1995]:

e. It is the technical background against which the prior art is considered. "This is not limited to material he has memorised and has at the front of his mind..." it includes "...readily available trade literature which a man in the art would be expected to have at his elbow and regard as basic reliable information"

natural Rs: Joh Locke

effort should => Natural R to creation. Labour thoery: everyone has a Property R in labour ofhis body, he who sows shall also reap recognized in Universal Declaration of Human Rs art 27 R of protection from scientific, literary or artistic

Question 2: law of IP has pivotal role in provifding incentive and security

explain define IP rationale for granting statutory monopolies how can existing regime work better

TRIPS

international protection in WTO

discuss : the ability of the trade mark owner to object to the parallel importation of goods coming from a non-EEA Member State.

explain how exhaustion of Rs operates as a defence to trade mark infringement in the case of EEA goods, but would then explain how the CJEU in Silhouette, Sebago and Davidoff denied the availability of international exhaustion as a defence in EU law. The better answer would discuss in some detail what the CJEU said in Davidoff about the issue of consent and link this with the origin function of trade marks. patents, copyright and designs, but most of the case law involves trade marks. The doctrine of exhaustion arose because the ECJ had to reconcile the territorial effect of intellectual property Rs with the concept of the internal market as established under the Treaty of Rome. Article 7 of the Directive (section 12 of the TMA). Articles 34 and 36 TFEU (you will find them in your statute book). Remember that EU law is supreme over national law and that Article 34 TFEU has been held to have direct effect Article 34 has been accorded a very broad interpretation, effectively prohibiting 'all trading rules enacted by Member States, which are capable of hindering, directly or indirectly, actually or potentially, intra-EU trade difference between parallel and infringing imports is essentially a question of fact, requiring the following question to be answered: 'Who first put these goods into circulation in the EEA?' If first marketing was by the intellectual property owner or another person acting with their consent (e.g. a subsidiary, licensee or distributor) then those goods are parallel imports and intellectual property Rs in the Member State of import cannot be used to object to further dealings in those goods If the goods were first marketed by an unconnected third party (a competitor or counterfeiter) then the intellectual property owner can always rely on national Rs to prevent their importation and sale. Stopping imports of infringing products falls within the 'protection of industrial and commercial property' within the first sentence of Article 36 TFEU: Case C-317/91 Deutsche Renault AG v Audi AG [1993] ECR under EU law, there is no international doctrine of exhaustion of Rs, so that if goods are first put on the market outside the EEA, national intellectual property Rs may be used to prevent their importation and sale. This means that a further preliminary question needs to be put: 'Where were these goods first put on the market?'

how it is determined whether an invention possesses novelty;

explain novelty in the context of s.2 Patents Act and state clearly how the claims are to be compared with the prior art to decide whether there has been anticipation. The Synthon requirements of disclosure and enablement would be clearly stated, as would the role of the skilled addressee.

discuss requirement that an invention must be capable of industrial application;

explain what industrial applicability means with case law illustrations. Better answers would discuss what the Supreme Court said in Eli Lilly v HGS about speculative patents and how precise the patentee has to be when identifying possible uses of the invention. The role of the skilled addressee in determining the issue had to be mentioned.

Tech transfer

facilitate foreign investment, joint ventures, licensing

Ok claim against Hello Lord Hoffmann, for the majority, was of the opinion that the breach of confidence claim by OK! did not depend on the inherent nature of the information, but rather on the fact that it was subject to control by the Douglases

fact that the information happens to have been about the personal life of the Douglases is irrelevant. It could have been about anything that a newspaper was willing to pay for. What matters is that the Douglases, by the way they arranged their wedding, were in a position to impose an obligation of confidence. They were in control of the information."8 Where an individual is in a position to control personal information, such as images of an event that can be kept secret from the outside world,9 he will be able to treat that information as a "conventional" trade secret10 and protect it using the doctrine of breach of confidence.

discuss : c) the meaning given to the phrase 'take unfair advantage of' in sections 5(3) and 10(3) of the Trade Marks Act 1994;

focus on the requirement of harm to the mark and explain the different treatment accorded by Bellure to dilution, tarnishing and taking unfair advantage. Better answers would discuss the article by Gangjee & Burrell referred to by the CA when Bellure returned from Luxembourg.

How can unfair advantage be proved?

global assessment factors : which include strength degree distinctive character of the mark, similarity of TM proximity of the goods or services more strength+distinctive=> easier to find detriment also more strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them

The European Court of Justice (ECJ) sets out the rules and criteria in Sieckmann:

i) a mark does not have to be capable of being perceived visually, as long as it can be represented graphically, and (ii) the representation should be clear, objective, precise, self-contained, durable, intelligible and easily accessible

DO: IP importance to grwoth Digital Opportunity a review of intellectual property and growth 2011

investment by UK business in intangible assets has outstripped investment in tangible assets: by £137 billion to £104 billion in 2008. Global trade in IP licences alone is worth more than £600 billion a year: five per cent of world trade and rising. Small and young innovative firms are of crucial importance in terms of growth and jobs but proliferating use of IP Rs can push up IP transaction costs and block these new players from entering markets.

Damian Avid is a famous footballer with the Zedchester United Football Club. He applies to register the name AVID as a trade mark for various items of leisure wear. Advise him in the following circumstances: i. There exists on the trade mark register an earlier trade mark, DAVID, registered by Mr David Douglas in respect of hand-made suits. ii. He receives a letter from a man introducing himself as Denzil Avid, from Birminghampton. Denzil Avid maintains that he has traded in second-hand clothing in the area of Birminghampton for the past 17 years, using the unregistered name 'Avid Seconds'. iii. The makers of RAVID products for removing stains from clothing, object that consumers of their products would be confused if Damian Avid were allowed to register and use the AVID trade mark for clothing. The manufacturers of AVID TIME aftershave complain that Damian Avid is seeking to exploit the reputation of their well-known trade mark and that, since Avid is an unpopular and ill-tempered footballer, the registration and use of the AVID trade mark for leisure wear would be detrimental to the repute of their own trade mark.

i) absolute and relative grounds+ case law ii)s.5(4)(a) relative grounds iii)

principles from recent BOC cases Naomi D v H AvB Theakston v MGN Shelley films v Rex

if person can reasonably expect his privacy to be respected then that intrusion will be capable of giving rise to liability in an action BOC unless the intrusion can be justified. The bugging of one's home or the use of other surveillance techniques, such as a long lens, are examples of such an intrusion. It is unnecessary to show a pre-existing relationship of confidence where Pinfo is involved. A duty of Conf will arise whenever the party subject to the duty is in a situation where he either knows or ought to know that the other person can reasonably expect his privacy to be protected. The existence of a relationship such as may create a duty of confidence may, and in personal confidence cases commonly will, have to be inferred from the facts. An injunction may be granted to restrain the publication of photographs taken surreptitiously in circumstances such that the photographer is to be taken to have known that the occasion was a private one and that the taking of photographs by outsiders was not permitted. Equity may intervene to prevent the publication of photographic images taken in breach of confidence. If, on some private occasion, the prospective claimant makes it clear, expressly or impliedly, that no photographic images are to be taken of him, then all those who are present will be bound by the obligation of confidence created by their knowledge (or imputed knowledge) of that restriction. The action for breach of confidence generally seeks to preserve confidentiality and the trust that the plaintiff has reposed in the confidant; it does not endeavour to protect individuals from emotional distress and embarrassment caused by an infringement of his privacy. A number of difficulties therefore arise when a plaintiff relies on this action to afford a remedy for unwarranted infringement of privacy.

the registrability of immoral and deceptive trade marks;

immoral (Ghazilian's Trade Mark Application [2001] RPC 654) , FCUK, JESUS and deceptive (Kraft Jacobs Suchard Ltd's Application [2001] Section 3 (3)(a) provides that: A trade mark shall not be registered if it is ...contrary to public policy or accepted principles of morality.

Fulton Co Ltd v Totes Isotoner (UK) Ltd followed in ocular sciences v Aspect Vision Care

infringement may be established in part only of the design, even though the infringing article, when looked at as a whole, could not be regarded as a reproduction of the protected design. That case related to the design of a fabric umbrella case with a slit at the top of one corner of the case.

Digital Opportunity a review of intellectual property and growth 2011 (DO) motivation

intellectual property framework, especially with regard to copyright, is falling behind what is needed. Copyright, once the exclusive concern of authors and their publishers, is today preventing medical researchers studying data and text in pursuit of new treatments. Copying has become basic to numerous industrial processes, as well as to a burgeoning service economy based upon the internet. The UK cannot afford to let a legal framework designed around artists impede vigorous participation in these emerging business sectors.

introduction of design right was also intended to represent a commercial comPromise from the prior law of design copyright, which reached its apotheosis in LB (Plastics) Ltd v Swish Products Ltd 1 with the unnecessarily long 50 year plus life term of protection for purely functional designs and the then 15 years from the date of first marketing term of protection for aesthetic designs capable of registration under the RDA.

intention behind the new right was threefold: 1. to provide a relatively easy means of design protection; to provide 2 for a term of protection not exceeding 15 years from the date of first marketing; 3. compromise in respect of the protection of spare parts following British Leyland Motor Corpn Ltd v Armstrong Patents Co Ltd. 2

3. Dissemination of Info and ideas

justification given for patents

'Swiss form claim

known substances having a second medical use are patentable now enacted in section 4A(4), novelty residing in the subsequent (unexpected) therapeutic use. While this used to have to be worded as a 'Swiss form claim', for example, 'use of x for the manufacture of a medicament for the treatment of y', which was a process claim, it suffices today if it is worded as 'substance x for use in treatment of disease y' which again is a purpose limited product claim.

IPR cf land

land: tangible, scarce, impossible of sharing duplication justification of Rs over information and data which can be replicated. intangible property: ideas, information, knowledge not easily owned by 1 person or group. Ability to exclude arises from legal

British Patent Office held a Symposium in 1994 on legal protection for software related innovation

majority in favour of patents for computer programs the reasons for the majority view remain essentially assertion of benefit rather than proof. Some may intuitively feel that the computer program industry has in no way needed a patent incentive to encourage innovation. It has and continues to blossom at an astonishing rate. And the problem of properly defining claims and searching prior art might (as Archer C.J. suggests) prove to be a mighty hindrance to the industry. Likewise the combination of protection with the adoption of standards (e.g. the increasing dominance of Windows) may suggest that the anti-monopolists--the anti-trust brigade--should step in.

D v H dissent, and argument against Lord Walker, in his dissenting opinion, voiced concern that "it is not obvious why a claimant should be able to invoke the law's protection for the confidentiality of his or her private life (this claim being based on the high principle of respect for human autonomy and dignity) and also to invoke its protection for the commercial confidentiality of the same or similar material, as a trade secret, until it is to be disclosed for profit at a time of his or her own choosing."14 This, however, is the net effect of Douglas v Hello! in the Court of Appeal and the House of Lords

may initially seem contradictory, but it is arguably no different from the rights that can be exercised by holders of intellectual property or more "traditional" property. The owner of a copyright work or of a plot of land is entitled to prevent other parties using the copyright work or the land without his consent, but he is also entitled, simultaneously, to grant rights to authorised parties to use the copyright work or the plot of land, on terms acceptable to him. As Lord Hoffmann stated: "being a celebrity or publishing a celebrity magazine are lawful trades and I see no reason why they should be outlawed from such protection as the law of confidence may offer

Wyeth/Schering's Applications methods of treatment, the patenting of substances used in methods of treatment, and first and second medical use patents. VIMP

methods of treatment are not patentable under section 4A(1) new substances (and equipment) used in such treatments are patentable (section 4A(2)) known substances having a first medical use are patentable under section 4A(3), novelty being found in the new use (this would be have to be in the form of a 'purpose limited product claim', for example, 'substance x for use as a treatment for y')

Scott Kieff and Rob Kundstat have suggested,2 in an article entitled "It's Your Turn, but My Move

novel athletes' moves (leading for instance to being able to pitch a baseball 10 per cent faster) are patentable. They argue that there is no difference in principle between this and any other innovation--particularly, in the case of sports, innovations in equipment. They also suggest that copyright may have a part to play in sports--regarding movements as something like choreographed movements of dance.

A v B plc [2002]

obligation of confidence is discharged once the subject matter of the obligation has been destroyed, even though the destruction was the result of a wrongful act committed by the person under the obligation.19 But private facts or photographs of an individual which have already been published in breach of his privacy may, on re-publication, cause him further distress, embarrassment and frustration. The law of breach of confidence is solely concerned with unauthorised disclosures. It offers no relief when the infringement does not involve, or result in, a disclosure. An intrusion into private premises or surveillance using an aural or visual device is probably not actionable as a breach of confidence.

discuss non standard marks and cases

occur. For registering smell as trade mark, ECJ held in Sieckmann it was insufficient to represent it by word description, sample and chemical formula. Because of the flaw in Art 267 TFEU, the ECJ did not provide a general guidance on this matter, so in Eden v OHIM, the smell of ripe strawberry cannot be represented by the picture of strawberry nor the word description. For sound mark, a tune can be represented by musical notation (Shield Mark). But other sound is not capable to be represented by word description, sound recording nor spectrograph. As for colour, it is acceptable to use the Pantone system or other internationally recognised system (Heidelberger). But the colour orange cannot be represented by the sample of the colour (Libertel v Benelux). Refractive index is not sufficiently clear neither (Ty Nant Spring Water). Regarding shape mark, it is not ok to represent by word description, but a picture is alright (Swizzels Matlow). From the above we can see it is still uncertain as to how some nonstandard marks (e.g. smell, sound) can be graphically represented. And even if they can pass this hurdle, they may fail in S3 as lacking the ability to perform the trade mark function

Q1: Analyze justifications for the existence of IP protection

outline, John Lock labour therory, UNiversal Declaration of Human Rights 27 Hegel theory Economic justification, Utilitarian theory TRIPS

Douglass v Hello! case history summary Douglas & Zeta-Jones v Hello! Ltd [2001]

paparazzo enters wedding and, within 24 hours, sold six of his unauthorised photographs of the wedding to Hello!. Hello! had earlier been unsuccessful in its bid for the exclusive rights to publish the wedding photographs of the happy couple, =>OK!, £1million. application by the Douglases and OK! for an injunction to prevent publication by Hello! was rejected by the Court of Appeal and both OK! and Hello! published their wedding editions the following day. (No BOC, cannot be since they were willing to sell private info, cannot expect privacy in 250 peron wedding) sought damages from Hello! for breach of privacy, while OK! sought compensation for the loss of its exclusive right to publish. The Douglases were successful in the High Court and in the Court of Appeal. OK! had the award of damages in its favour overturned in the CA appeals. 3-2 majority favour of OK! reinstates award. According to the majority, publication of the unauthorised photographs by Hello! breached OK!'s right of confidentiality in the authorised pictures and simultaneous publication by OK! of those authorised had not put the unauthorised images in the public domain and out of the reach of this action

DO: patents and designs

patenting boom is leading to problems of patent office backlogs and the emergence of so called "patent thickets", which obstruct entry to some markets and so impede innovation. International cooperation is the key to addressing backlogs and thickets, possibly through a coordinated adjustment of fee structures to weed out lower value patents. Action is also called for with regard to the UK's important and growing design sector - the largest source of intangible investment in the economy. Designers believe a patchwork of intellectual property right (IPR) provision puts them at a disadvantage in comparison with sectors fully covered by copyright law.

DO: position on CR

permit copying where it does not trade on the underlying creative and expressive purpose on which traditional Rs holders in music, publishing, film and television rely (Chapter 5). The copyright regime cannot be considered fit for the digital age when millions of citizens are in daily breach of copyright, simply for shifting a piece of music or video from one device to another. People are confused about what is allowed and what is not, with the risk that the law falls into disrepute

no clear consensus among the judges in Campbell in respect of the crucial question of what constitutes 'private information.' Lord Nicholls expresses a strong preference for a test

person in question had a reasonable expectation of privacy Lord Hope reasonable expectation of privacy' is a threshold test which brings the balancing exercise into play. It is not the end of the story. Once the information is identified as 'private' in this way, the court must balance the claimant's interest in keeping the information private against the countervailing interest of the recipient in publishing it. Very often, it can be expected that the countervailing rights of the recipient will prevail.

Ocular Sciences v Aspect Vision Care

pleading unregistered design infringement, not merely in the design as a whole but in 'cropped' or 'trimmed' parts of the design. This, undoubtedly, had the unjust effect of a D not being able to evaluate the merits of the claim against it nor of establishing whether the D's design infringes until the claim against it is fully pleaded or at the least fully set out in an initial demand letter.

Floyd J confirmed in H.Lundbeck A/S v Norpharma SpA [2011] E

prior disclosure includes implicit disclosures. On the other hand, he held that matter may be contained in a prior art document but so submerged in it as to not form a disclosure (i.e. if special knowledge is required for the matter to be understood, such that it would not be understood by a skilled person utilising their common general knowledge).

IPR 3 features

property Rs intangible protect and reward innovation and creative activity TRIPS and local laws require min criteria for that form of property must be met

Professor Hargreaves: Digital Opportunity a review of intellectual property and growth 2011

proposes a clear change of strategic direction for IP in UK, to ensure that IP framework suited to supporting innovation and growth. 10 recommendations that the UK EU Patent Court receives endorsement, should try to achieve this goal. encorcement: should setup a Patent protection in Ciounty Courts for small claims

D v H protection of private info court of appeal

protected information was the photographs of the Douglases' wedding. CA concluded that these were worthy of protection as private information in respect of the Douglases: "Applying the test propounded by the House of Lords in Campbell v MGN, portrayed aspects of the Douglases' private life and fell within the protection of the law of confidentiality, as extended to cover private or personal information. Thus, where the information in question features the private life of the individual or constitutes personal information, it will be protected against invasion by unauthorised parties through the doctrine of privacy. action by the Douglases was based on privacy and their article 8 ECHR rights

skilled addressee

r. Judges themselves (or juries in the days when juries decided such questions) could not be experts in all the fields of science and technology involved. They were, therefore, invariably reliant upon expert evidence in the particular field to prove what was 'obvious' at the relevant date and what was not; what involved in 'inventive step' and what did not. It would defeat the purpose of the Act if the applicable test were to be expressed in terms of what was obvious, as such, to a jury, to a judge or even to a reasonable person test for obviousness has been described as "an objective one which does not turn on the insights gained or lacked by any particular individuals"4 . However, the aim of the parties in any patent dispute is obviously to provide a real-life skilled addressee whose actual experience and qualifications closely match that of the hypothetical person. If the Court feels sufficiently impressed by the qualifications, evidence and demeanour of the real person, then it is likely the Court will adopt the witness's views and opinions as reflecting those of the objective skilled addressee Sometimes different skills are required to make an advance in the art, i.e. inventive step, as opposed to determining the sufficiency of the description in the patent. With insufficiency, the test is whether the complete specification as a whole contains such instructions as will enable all those to whom the specification is addressed to produce something within each claim by following the directions of the specification without any new invention or additions of their own level of skill which the skilled addressee has is a critical consideration. It is axiomatic that if the level of skill is pitched too highly then it may be that every so-called inventive step will be obvious. Conversely, pitching the level of skill too low will virtually ensure that the patent will be found to contain an inventive step. It is generally true to say that with pharmaceuticals and veterinary compositions, the expectation is that the addressee or team will have PhD qualifications in a relevant field of science and this is expressly recognised in the cases24. Members of the skilled team may have different levels of academic qualification and practical experience A decidedly complicating factor is that in highly technical fields, a degree of inventiveness, ingenuity or initiative is a pre-requisite for being involved in the field in the first place. This can cause real tension when laid alongside the requirement that the addressee be incapable of a scintilla of invention. In Boehringer Mannheim26 Aldous J noted the requirement that the skilled addressee not have the imagination required to invent but observed "in practice it is unlikely that such persons exist, and none of the witnesses called to give evidence were incapable of invention"27. Where one or more expert witnesses possess inventiveness, the Court must perform the difficult task of discounting those aspects of the witness's evidence which portrayed or involved inventiveness. Genetech : resources required regarded it as "beside the point" to consider such matters as how long the hypothetical team would have been allowed for their work or what money from what source would have been available to finance them29. He took it as accepted that there were no such constraints. Mustill LJ30 was prepared to regard the hypothetical team as having "the best available equipment to see whether, so equipped, they could have found their way to a solution ...". It seems therefore that the team must be credited with sufficient time and the best available equipment. If the evidence shows that a skilled team at the priority date sub-contracted certain work to outside workers or an outside laboratory, then this too may need to be factored into the skill level or resources of the team31 . common general knowledge possessed by the skilled addressee common general knowledge held by the skilled addressee is plainly a critical issue in an assessment of both obviousness and insufficiency. In general terms with obviousness, the more extensive the knowledge base of the skilled addressee then the greater likelihood of a patent claim being found to be obvious. In the case of insufficiency, where the skilled addressee has a greater knowledge base, this can often increase the chances of the patent being found to provide a sufficient description of the invention and the method by which it is to be performed

Sir Hugh Laddie's "Copyright--Over Strength Over Regulated and Over Rated

regarded copyright as having gone too far entry into the control of industrial design, vast period of copyright protection of 50 years from the death of the author to the extraordinary remedies of additional damages to the danger then threatened of the government regarding the very laws of the land as being property to be charged for, and to the low level of originality required by our law. indicated his own considerable unease at the present scope of copyright.

Theakston v MGN Ltd

relationship between a prostitute in a brothel and the customer was not confidential in nature and the fact that sexual activity had taken place did not, of itself, create a relationship of confidentiality",thus there was no breach of Article 8. The judgment was based on the notion that he was a 'role model', "given that T was a presenter of television programmes aimed at younger viewers, there was an element of public interest in some of the material being published

JESUS (Basic Trademark SA's Trade Mark Application [2005]

section (3)(3)(a) should be interpreted and applied consistently with Article 10 of the European Convention on Human Rights (ECHR) which gives the right to freedom of expression (including 'com-mercial' expression) subject only to whatever is neces-sary 'for the prevention of disorder or crime, for the protection of health or morals...' This therefore pro-vides the broadest legal context for dealing with 'anti-social branding.' Consequently, in the paraphrasing of Richard Arnold, 'It follows that registration should be refused only where this is justified by a pressing social need and is proportionate to the legitimate aim pursued. Furthermore, any real doubt as to the appli-cability of the objection should be resolved by upholding the right to freedom of expression and thus by permitting the registration.' Another principle established in this case is that different considerations apply to different categories of marks that offend sec-tion 3 (3)(a).

role of the skilled addressee in patent law

skilled addressee is a judicial construct, a legal fiction. S/he is not a real person, but a hypothetical creature through whose eyes various issues in patent law are determined. The reason for having such a person is to impart objectivity (Lilly Icos Ltd v Pfizer Ltd

SA Common General Knowledge General Tire v Firestone [1972]

standard texts or material accepted without question by those in that line of work. Common general knowledge, however, does not include prior patents Raychem Corporation's Patent [1998:technical background of the notional man skilled in the art Rockwater Ltd v Technip France SA: 'good background technical knowledge (Beloit Technologies v Valmet Paper Machinery [1995]:

(b) how it is determined whether a United Kingdom unregistered design has been infringed

stating the difference between the tests for infringement in Designers Guild and Klucznik Further detail about the statutory provisions and how they differ from those for copyright would be given.

The question is what a reasonable person of ordinary sensibilities would feel if she was placed in the same position as the claimant and faced with the same publicity" (Murray v Express Newspapers [2009] factors to take into account test is the same as in NC

the attributes of the claimant; the nature of the activity in which the claimant was engaged; the place at which it was happening; the nature and purpose of the intrusion; the absence of consent and whether it was known or could be inferred that consent was absent; the effect on the claimant; the circumstances in which and the purposes for which the information came into the hands of the publisher.

key point in cases such as Wagamama

what can be proved as a practical matter for both sides? In particular I suggest that the extended view of trade mark protection favoured by some theorists requires justification as a practical matter. The extension of monopoly Rs by assertion of damage without proof will not do. Purely theoretical or abstract arguments have no place in forming the rules of intellectual property.

NOVELTY: Synthon BV v Smithkline Beecham plc [2006] VIMP enabling disclosure=> breaks novelty

whether information in the prior art was accessible (potentially rather than actually) by any member of the public (even one person) without any fetter of confidentiality and if so whether that information anticipated the invention, that is, did it contain an enabling disclosure such that the skilled addressee, armed with the prior art, could perform the invention. claims are reference for prior art. Hoffmann sought to separate the concepts of disclosure and enablement. On disclosure he summarised the law as follows: namely, that the matter relied upon as prior art must disclose subject matter which, if performed, would necessarily result in an infringement of the patent. He defined enablement as meaning that the ordinary skilled person would have been able to perform the invention which satisfies the requirement of disclosure. Consequently, when applying this two tier analysis to the facts, Lord Hoffmann stated that on disclosure there was no doubt that the Synthon application disclosed the existence of paroxetine methanesulfonate crystals of 98% purity and claimed they could be made. Their existence and their advantages for pharmaceutical use were clearly disclosed and carrying out the invention would produce crystalline paroxetine methanesulfonate. Even if the skilled person reading the patent did not think he was going to infringe it because of the incorrect IR data, he would inevitably do so. On enablement, Lord Hoffmann referred to the finding by the trial judge that the skilled man would have tried some other form of solvent from the range mentioned in the Synthon application or forming part of his common general knowledge and would have been able to make paroxetine methanesulfonate crystals within a reasonable time.