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IP update
Hello and welcome to the winter edition of our IP
update. An exciting addition to this issue is the
introduction of our IP podcasts. The first of our podcasts is an
introduction to IP by Peter Ellis. The second is a podcast on
Geographical indications by Nicholas McDonald.
Introduction to IP - Peter Ellis
Geographical indications - Nicholas
McDonald
We have a wide range of articles in this edition which you can
find further details on below.
The last few months have been busy for the IP team:
- Emma Dickson, Duncan Hinnells and Richard Roberts all
successfully completed specialist postgraduate diplomas in IP law
from Nottingham law school (in the case of Emma and Duncan) and
from Bristol University (in the case of Richard). Congratulations
to them all
- In June, Declan chaired a round table debate on the London
Olympic Games and Paralympic Games Act 2006, with attendees from
Camelot, BP, London 2012 and the first top tier sponsor Lloyds
TSB
- Peter and Declan attended the annual ITMA conference in Treviso
in September
- Nick and Declan wrote in the September edition of Trade
Mark World on Protected Geographic Indicators
- Richard Nicholas spoke on IP and software at the Softworld
Exhibition at the NEC
- Browne Jacobson hosted the UK-IP Office and a number of other
distinguished guests at our Nottingham office in an event assisting
the UK IPO’s efforts in raising awareness of IP
- Browne Jacobson hosted the ITMA evening seminar on 6 November
at our Birmingham offices with a full house listening to a
discussion on recent IPO decisions
- Browne Jacobson presented a Seminar on 22 November on “Brands,
advertising and marketing law explained – past, present and future”
at the Museum of Brands, Packaging and Advertising in London
If you are interested in attending any of our
future events please email Ped Briggs.
Trade marks (esure v Direct Line)
In esure International Limited v Direct Line Insurance
PLC the High Court denied esure’s application to register a
computer mouse on wheels device mark which has been the main
character in a successful media marketing campaign.
Direct Line had opposed the application on the basis of its rights
and reputation in its red telephone on wheels mark (under sections
5 (2) (b) and 5 (3) of the Trade Marks Act) which has been used for
many years in its advertising.
Click here to read the full
article.
The law of confidence (following Douglas v Hello!)
The House of Lords decision in the case of Douglas
v Hello! (OBG Ltd and others (appellants) v Allan and others
(respondents), Douglas and another (appellants) v Hello and others
(respondents), Mainstream Properties Ltd (appellant) v Young and
others (respondents) [2007] UKHL 21) is a significant
development in the law of confidentiality and has provoked some
heated debate among lawyers.
Click here to read the full
article.
Recent domain name cases
Another interesting development in the "grudge" cases
saga...
Over the past few years, many conflicting decisions have been
rendered concerning “grudge” domain names, sometimes referred to as
the “brandnamesucks” cases.
Click here to read the full article.
Comparative advertising and the recent case involving
beer and champagne
You want to advertise your products.
They are cheaper or better than those of a competitor. Can
you state this in your advertising (and use the competitor's trade
marks for this purpose)?
Click here to read the full
article.
Patents and the recent decision of the Court of Appeal in the
Pozzoli SPA case
In its recent judgement in the case of Pozzoli SPA v (1)
BDMO SA et al [2007] EWCA Civ 588, the Court of Appeal:
reformulated the Windsurfing test in the context of
obviousness; provided guidance as to when overcoming perceived
technical prejudice will give rise to patentability; and gave short
shrift to the appellant’s startling interpretation of the UK’s
obligations under the TRIPS agreement.
Click here to read the full
article.
Successful use of the Proceeds of Crime Act in the struggle
against counterfeiters
In July, the UK music and film industry
secured a significant verdict in its fight against copyright
crime. The UK Record Labels Association, the BPI and FACT
(The Federation Against Copyright Theft) in conjunction with
Hertfordshire Trading Standards, compiled compelling evidence which
led to a successful conviction for money laundering offences
against a family run company, Wendy Fair Markets Limited and two of
its Directors. The approach taken – and successful result –
may prove a useful model and tool for tackling similar cases in
future.
Click here to read the full
article.
A recent decision on the scope of the law of
privacy
The case of David Murray v Big Pictures (UK) Ltd (a
photographic agency) considered whether a child, who is not a
public figure in his own right, is entitled to protection from
being photographed in a public place even where the photograph
shows nothing embarrassing or untoward but is simply a picture of
the child with his parents. The child concerned was the
infant son of J.K. Rowling.
Click here to read the full article.
The scope of prior art in relation to registered designs
Green Lane Products applied to register its
designs of spiky plastic laundry balls for washing, cleaning and
drying equipment. PMS had, for two years prior to this, sold
spiky plastic balls as massage balls.
A preliminary issue before the Court was
whether the massage balls sold by PMS in a different sector meant
that the laundry balls were neither new nor had individual
character.
Click here to read the full
article.
Update on the litigation against online auctioneers
The cosmetics company, L’Oreal, has recently issued proceedings
against eBay in the UK (as well as in Germany, Spain and Belgium),
claiming that the online auction company does not do enough to
prevent the sale of counterfeit goods through its websites.
L’Oreal claims that it has, as a result, suffered losses of several
million dollars.
Click here to read the full article.
Geographic indications
Geographical Indications (GI's) are forms of
protection for the geographical origin of products. The principle
is well-established throughout many countries. Geographical areas
such as Champagne, Parma, Melton Mowbray and Newcastle all have
food products associated with them.
Click here to read the full
article.
News in brief
In this section, we briefly mention two significant
practical developments relating to trade marks and patents.
In relation to the former, we note that there has been much in the
press recently about the fact that UK trade mark applications will
no longer be refused at the examination stage on the basis of
earlier registered rights. This alignment with the CTM and the
national systems in much of Europe has its critics and its
advocates; it remains to be seen whether in fact it will have much
practical effect
Click here to read the full
article.
BJ news
And finally, in this section you can find
out more about Emma Dickson, who joined the IP team in Birmingham
earlier in the year.
Click here to read the full article.
For further information on this edition of IP update, please
contact Peter Ellis or Declan
Cushley.