Post on 27-Apr-2022
© Shepherd and Wedderburn LLP
Top ten IP litigation
developments of
2012/13
In House Lawyers Group 28 May 2013
John MacKenzie, Shepherd and Wedderburn LLP
Asda loses its specs appeal
2 Top ten IP litigation developments of 2012/13
CTM No. 5608385
Specsavers Asda
CTM No. 1321298
“Specsavers”
Specsavers v Asda [2012] EWCA Civ 24
The Pirate Bay
3 Top ten IP litigation developments of 2012/13
• Dramatico Entertainment Ltd v. BSkyB and
others [2012] EWHC 268 (Ch)
• 97A of the Copyright Designs and
Patents Act 1988
• “[w]hile in theory it would be possible to
identify [the users of the site]…, that would
be a costly exercise in itself. It would be
wholly disproportionate to attempt to join or
serve all such users, and there would be no
basis for singling out particular users for
joinder or service. Nor, I suspect, would
most users wish to defend the proceedings
or even make representations.”
Ambush marketing and the Olympic games
4 Top ten IP litigation developments of 2012/13
London Games and
Paralympics Act 2006
• London Olympic
Association Right
““It’s a pity they didn’t put the same energy into the ticketing and
security arrangements for the Games that they put into protecting
their sponsorship revenue streams.” – Paddy Power
Privacy law and the royal family
5 Top ten IP litigation developments of 2012/13
"very different from saying that
it is information which interests
the public – the most vapid
tittle-tattle about the activities
of footballers' wives and
girlfriends interests large
sections of the public but no-
one could claim any real public
interest in our being told all
about it.“
Jameel v Wall Street Journal
[2006] UKHL 44
Public interest is…
Distinctiveness of a trademark
6 Assessing the distinctiveness of a trademark 9 January 2013
Trademark Act 1994
“S(1) Trade marks..
(1)In this Act a “trade mark” means any sign capable of being represented
graphically which is capable of distinguishing goods or services of one
undertaking from those of other undertakings….
s3 Absolute grounds for refusal of registration
(1)The following shall not be registered—
(b)trade marks which are devoid of any distinctive character,
…Provided that, a trade mark shall not be refused registration by virtue of
paragraph (b) …above if, before the date of application for registration, it has in
fact acquired a distinctive character as a result of the use made of it.”
What is distinctive character?
7 Assessing the distinctiveness of a trademark 9 January 2013
• Average consumer
• “reasonably well informed and reasonably observant and
circumspect”
• Judged by reference to:
• Products or services
• Relevant public
• Attention span
• Who is the relevant average consumer?
3D Shapes
8 Assessing the distinctiveness of a trademark 9 January 2013
C-144/06 P Henkel KGaA v OHIM
C-136/02 Mag Instrument v OHIM
T-460/05 Bang & Olufsen A/S v OHIM
C-344/10 P and C-345/10 P Freixenet, SA v OHIM
R 1096/2006-4 Weldebrau GmbH & Co v Kofola Holding
Slogans
9 Assessing the distinctiveness of a trademark 9 January 2013
• Audi AG v. OHIM [2010] ETMR 18
• T 175/08 Paroc Oy AB v. OHIM
“insulate for life”
• T 524/09 Meredith Corp v. OHIM
Acquired distinctiveness
10 Assessing the distinctiveness of a trademark 9 January 2013
Windsurfing Chiemsee Produktions v Boots • the market share;
• how intensive, geographically extent and time of use;
• Investment in promotion
• the proportion of the public who identify goods as originating from the owner of the mark;
• Evidence?
• Statements • chambers of commerce
• Industry
• other trade and professional associations.
• Survey evidence
• T-237/10 Louis Vuitton Malletier v. OHIM
• T-7/10 10 Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ AE v. OHIM
Libertel
11 Assessing the distinctiveness of a trademark 26 November 2012
Libertel Groep BV
v.
Benelux-Merkenbureau
Colour “Orange”
‘[T]he fact that the number of colours actually available is limited means that
a small number of trade mark registrations for certain services or goods
could exhaust the entire range of colours available. Such a monopoly would
be incompatible with a system of undistorted competition, in particular
because it could have the effect of creating an unjustified competitive
advantage for a single trader’
12 Assessing the distinctiveness of a trademark 26 November 2012
Societe des Produits Nestle S.A
v.
Cadbury UK Ltd
Colour: Pantone 2685C
What can be registered?
13 Assessing the distinctiveness of a trademark 9 January 2013
• Criteria should be the same for all types of mark
• Smells
• 3D marks
• Slogans
• Colours
• Perception of the average consumer
• Importance of acquired distinctiveness
Social media
14 Top ten IP litigation developments of 2012/13
Absusive/defamatory Tweets
• Tom Daley
• Cairns v Modi [2012] EWHC 756 (QB)
• Lord McAlpine
Social media in the workplace
• Eagle v Edcomm Pennsylvania DC No.
11-4303
Samsung v Apple
15 Top ten IP litigation developments of 2012/13
"Infringement of a registered
design does not involve any
question of whether there
was copying: the issue is
simply whether the accused
design is too close to the
registered design according
to the tests laid down in the
law. So this case is all
about, and only about,
Apple's registered design
and the Samsung products."
Samsung v Apple [2012] EWHC 889 (Ch)
Copyright and the internet
The Public Relations Consultants Association v Newspaper Licensing
Agency and others [2013] UKSC 18, 17 April 2013
• The operation of the internet
• The Information Society Directive
• EU Case law
• Premier League (FAPL v QC Leisure)
• Murphy v Media Protection
• Infopaq II
• Findings:
• Temporary/transient
• Purpose of exemption plain
• Technical and lawful purpose
• Copying had no independent economic significance
• Reference to EU
16 27 April 2012 Top ten IP litigation developments of 2012/13
Interflora v Marks & Spencer
i) The origin function of a trade mark is adversely affected by keyword advertising triggered by
the trade mark if the advertisement does not enable reasonably well-informed and
reasonably observant internet users, or enables them only with difficulty, to ascertain
whether the advertised goods or services originate from the trade mark proprietor (or an
economically-connected undertaking) or from a third party.
ii) The onus lies upon the advertiser to ensure that the advertisement does enable such users to
ascertain this without difficulty and hence that there is no real risk of such users being
confused.
iii) It is not sufficient to establish an adverse effect that some internet users may have difficulty in
grasping that the advertised goods or services are independent of the trade mark proprietor.
Confusion on the part of ill-informed or unobservant internet users must be discounted.
iv) If the advertisement causes a significant section of the relevant class of persons wrongly to
believe that the advertised goods or services are connected to the trade mark proprietor, that
does establish an adverse effect. Thus there is no single meaning rule.
v) In the context of the present case, it is relevant to consider whether the reasonably well-
informed and reasonably observant internet user is aware that M & S's flower delivery
service is not part of the Interflora network and, if not, whether M & S's advertisements
enable such a user to ascertain this.
17 27 April 2012 Top ten IP litigation developments of 2012/13
The starting point for assessing Interflora's claims in the present case is
that, as is common ground, keyword advertising is not inherently or
inevitably objectionable from a trade mark perspective. On the contrary,
the case law of the CJEU in this field recognises that, as a general rule,
keyword advertising promotes competition: see in particular Google France
at [69] and Interflora (CJEU) at [58]. The question is whether, on the
specific facts of the present case, Interflora have established that M & S
has infringed the Trade Marks.
Next, as is again common ground, I must consider M & S's advertisements
in context from the perspective of the reasonably well-informed and
reasonably observant internet user, initially as at 6 May 2008. As
discussed above, it follows that I must discount the possibility of confusion
on the part of ill-informed or unobservant internet users. As counsel for
Interflora submitted, it also follows that I must be careful not to consider
the issues in this case from my own perspective, namely that of an
experienced and technically literate internet user who knows precisely how
Google AdWords operates and is aware of the issues. The average
reasonably well-informed and reasonably observant internet user is not
particularly technically literate, does not know precisely how AdWords
operates and is not aware of the issues.
18 27 April 2012 Top ten IP litigation developments of 2012/13
More specifically, counsel for Interflora submitted that the evidence
showed that many internet users in the UK do not appreciate the
distinction between the natural search results and the paid
advertisements on Google's SERPs. In my view, this is something that is
likely to have changed over time. As the Ofcom reports show, as a
general proposition, internet literacy has steadily increased over the last
five years. Counsel for M & S submitted, and I agree, that many internet
users learn by doing. In general, I consider that internet users are more
likely to be aware both that there is a distinction and the broad nature of
the distinction now than they were in May 2008. Considering all the
evidence, however, I conclude that, even now, a significant proportion of
internet users in the UK do not appreciate that, unlike the natural search
results, the advertisements appear on the SERP because the advertisers
have paid for the advertisements to be triggered by a keyword consisting
of or related to the search term entered by the user.
19 27 April 2012 Top ten IP litigation developments of 2012/13
Onus and burden of proof
Lord Mansfield's dictum in Blatch v Archer (1774) 1 Cowp 63 at 65 which was cited by
Lord Bingham of Cornhill in Fairchild v Glenhaven Financial Services Ltd [2002]
UKHL 22, [2003] 1 AC 32 at [13]:
"It is certainly a maxim that all evidence is to be weighed according to the proof which
it was in the power of one side to have produced, and in the power of the other to
have contradicted."
“Interflora made two attempts to adduce direct evidence as to consumer reaction to M
& S's keyword advertising. First, Interflora attempted to adduce witness statements
from witnesses selected from the respondents to two pilot surveys. The Court of
Appeal rejected this on the ground that the evidence was of no real value: Interflora
(CA I). Secondly, Interflora attempted to adduce witness statements from 13
witnesses identified from IBU's own customer records and from a questionnaire as
having seen M & S's advertisements after having searched for "interflora". Again, the
Court of Appeal rejected this on the ground that the evidence was of no real value:
Interflora (CA II). “ [para 292]
20 27 April 2012 Top ten IP litigation developments of 2012/13
Onus and burden
M & S made no attempt to adduce any direct evidence of consumer reaction to its
keyword advertising. As counsel for Interflora pointed out, this is despite the fact that
M & S was well placed to do so. M & S has records of all the customers who have
purchased flowers from its website. As discussed above, M & S regularly conducts
consumer surveys seeking better to understand its customers' behaviour. As Mr
Bond agreed, it would have been possible for M & S to ask a statistically
representative sample of customers who purchased flowers from its website whether
they had done so after searching Google for "interflora" (or one of the variant terms),
and if so, why. So far as the evidence goes, M & S did not do so. Thus M & S had
made no attempt to prove that customers who search for, say, "interflora.co.uk" (and
thus are clearly looking for the Interflora website), but click through from of one M &
S's advertisements and end up ordering flowers from M & S, do so because they
have been persuaded by the advertisement to order flowers from what they
appreciate is a competitive service. M & S's failure to adduce such evidence does not
mean that it should be inferred that the evidence would have assisted Interflora; but it
does mean that M & S cannot rely upon such evidence to rebut the conclusions
which Interflora say should be drawn from the evidence which is before the court.
[para 293]
21 27 April 2012 Top ten IP litigation developments of 2012/13
EU Patent Court
22 Top ten IP litigation developments of 2012/13
Draft Agreement on a Unified
Patent Court
• Role of the CJEU?
• Timetable for
implementation?
• Politics…
Keep watching this space!
Top ten IP litigation developments of 2012/13
Patents County Court
Top ten IP litigation developments of 2012/13
Patents County Court
Procedure:
Dame Vivienne Westwood OBE v Anthony Edward Knight [2010] EWPCC
16, 19 November 2010
Statements of Claim
Statement on pre-action conduct
Statements of truth
Restriction on evidence
Overall cost benefit test
HHJ Colin Birss QC?
Top ten IP litigation developments of 2012/13
Patents County Court
Limit on value of claims - £500,000
Cost Capping Regime
Dame Vivienne Westwood OBE v Anthony Edward Knight [2011] EWPCC
11, 11 May 2011
“Before they embark on litigation to enforce their intellectual property
rights (or defend themselves) the potential users of the Patents
County Court system need to be able to make a prediction in advance
as to their likely costs exposure. Their legal advisers need to be able
to say with confidence that the costs capping provisions can be relied
on.“
Top ten IP litigation developments of 2012/13
Patents County Court
Stage of a claim Maximum amount of costs
1 Particulars of claim £6,125
2 Defence and counterclaim £6,125
3 Reply and defence to counterclaim £6,125
4 Reply to defence to counterclaim £3,000
5 Attendance at a case management conference £2,500
6 Making or responding to an application £2,500
7 Providing or inspecting disclosure or product/process description £5,000
8 Performing or inspecting experiments £2,500
9 Preparing witness statements £5,000
10 Preparing experts' report £7,500
11 Preparing for and attending trial and judgment £15,000
12 Preparing for determination on the papers £5,000
Top ten IP litigation developments of 2012/13
Patents County Court
Ref. Sum
incurred
Summary
assessment
Limit in Table
A
Sum due
Costs incurred in High Court £33,069 £25,000 - £25,000
Defence (considering defences) 2 £11,325 £8,000 £6,125 £6,125
CMC 5 £8,783 £6,500 £2,500 £2,500
Application to amend Particulars of Claim
(Red Planet Westwood)
6 £2,837 £2,000 £2,500 £2,000
Preparing witness statements 9 £26,009 £20,000 £5,000 £5,000
Application to amend Particulars of Claim (Too
fast to live)
6 £3,411 £2,500 £2,500 £2,500
Defendant's pre trial applications 6 £2,983 £2,500 £2,500 £2,500
Trial and judgment 11 £25,116 £20,000 £15,000 £15,000
Totals £113,533 £86,500 £36,125 £60,625
Top ten IP litigation developments of 2012/13
Patents County Court
Key features:
“Very” active case management
Common sense and commercial reality
Expertise in IP litigation
The “small claims” of IP Litigation
2013/14
What to look out for?
29 27 April 2012 Defamation Online
Three to watch
ASDA v Specsavers
Generics v proprietary v national interests
Novartis and Glivec
ST KILDA and marks with a geographic element
30 8 February 2012 Property Seminar - Arbitration (Scotland) Act 2010
Questions?
31 Top ten IP litigation developments of 2012/13
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