Mr David Cran

David Cran

Updates

Company & Commercial

No loss of confidence – establishing causation in confidential information claims
United Kingdom | 03 November 2014

Richmond Pharmacology Ltd v Chester Overseas Ltd is an example of a claim for breach of confidence where, although liability was established, only nominal damages (£1) were awarded to the claimant. It illustrates the importance of a claimant in such cases valuing its claim properly and establishing the causal link between the breach committed by a defendant and the loss suffered by the claimant.

Intellectual Property

Comic Enterprises feeling gleeful after Court of Appeal upholds trademark infringement
United Kingdom | 14 March 2016

In the latest instalment of the trademark dispute between Comic Enterprises and Twentieth Century Fox, the Court of Appeal upheld the 2014 High Court decision that use of the sign 'Glee' by Twentieth Century Fox in respect of its well-known television programme infringed a series of registered trademarks owned by Comic Enterprises Ltd, which runs a collection of comedy clubs named 'Glee' across the United Kingdom.

Asos 'supreme' – but what will a change in the law mean?
United Kingdom | 31 August 2015

​Following the Court of Appeal decision in the Assos v Asos trademark dispute, there have been two interesting developments which affect it. First, the Supreme Court has refused permission to appeal the Court of Appeal decision; second, the European Commission has set out plans to change the law so that the 'own name' defence will no longer apply to corporations.

UK goodwill reigns supreme
United Kingdom | 06 July 2015

The key question faced by the Supreme Court in a recent case was whether a claimant in a passing-off action must have actual customers in the United Kingdom or whether it is sufficient to demonstrate that it has a reputation in the United Kingdom and internationally. The case centred on a dispute over Sky's use of the name 'NOW TV' for its internet television service.

'As seen at the Court of Appeal' – split decision on 'own name' defence in Assos v Asos
United Kingdom | 11 May 2015

The Court of Appeal has held that use of the 'ASOS' brand by well-known online clothing retailer Asos created a likelihood of confusion with and damaged the distinctive character of the earlier ASSOS Community trademarks owned by Assos, the specialist cycle clothing retailer, but that Asos could nonetheless rely on the 'own name' defence to avoid trademark infringement.

An enterprising look at survey evidence
United Kingdom | 23 February 2015

The recent judgment in Enterprise Holdings Inc v Europcar Group UK Limited provides useful guidance on the use of survey evidence in trademark infringement disputes. The case concerned car rental company Europcar's use of a stylised 'e' logo which Enterprise (another heavyweight in the car rental market) claimed infringed its figurative UK and Community trademarks.

Court of Appeal confirms Rihanna's image protected under 'umbrella' of passing off
United Kingdom | 09 February 2015

The Court of Appeal has dismissed fashion retailer Topshop's appeal in Fenty v Arcadia Group, confirming that its unauthorised use of an image of pop star Rihanna amounted to passing off. While the decision reaffirms that there are no image rights per se under English law, it appears that protection under the law of passing off will most likely be afforded to individuals who already have their own merchandising lines.

Vestergaard – creating another buzz
United Kingdom | 22 December 2014

The long-running Vestergaard case has reached its finale – a High Court decision on the assessment of damages. As might be expected from a case which has piqued interest over the course of first-instance, Court of Appeal and Supreme Court proceedings, the judgment following the inquiry as to damages also provides interesting points in respect of the calculation of damages.

No copyright in software functionality: SAS v WPL, the final chapter
United Kingdom | 13 January 2014

The Court of Appeal has issued its decision in the lengthy SAS Institute Inc v World Programming Limited litigation concerning the status of copyright in computer functionality. The court reached the same conclusion as the High Court, but disagreed with the High Court's reasoning in a number of key areas. The decision is a useful reminder of the perils of sharing computer program functionality in literature associated with the program.

Rihanna's image protected under 'umbrella' of passing off
United Kingdom | 23 September 2013

The High Court recently held that Topshop's unauthorised use of pop star Rihanna's image amounted to passing off. While previous cases have established that passing off can be used to prevent or compensate for the unauthorised use of a celebrity's image in false endorsement cases, this is the first English decision in which the principle has been extended to the unauthorised use of a celebrity's image in merchandising.

Guarding trade secrets – Supreme Court rules in Vestergaard
United Kingdom | 29 July 2013

The Supreme Court recently ruled that an ex-employee could not have misused confidential information if she had not known about the confidential information or the fact of its misuse. The judgment illustrates that if businesses think that their confidential information has been misused, they should think carefully about whom to pursue for this misuse.

High Court reaffirms no copyright protection for computer program functionality
United Kingdom | 04 March 2013

In what should be the final instalment in a long-running case, a decision was recently issued in SAS Institute Inc v World Programming Ltd following the referral back to the High Court from the European Court of Justice. For the software industry as a whole, this final judgment is likely to be welcomed as bringing certainty to the area of protecting computer programs with copyright.

OMEGA v OMEGA: watch out for co-existence agreements
United Kingdom | 18 February 2013

A recent High Court case highlights the perils of two companies using identical trademarks for different goods and seeking to co-exist. However amicable the relationship may start out, there is often room for the arrangement to sour. This makes the careful drafting and 'future-proofing' of co-existence agreements essential, as the parties in this case discovered to their cost.

NOW that's what I call a stay under Article 104(1)
United Kingdom | 12 November 2012

The Court of Appeal has upheld two decisions relating to separate trademark infringement actions brought by Starbucks and EMI against Sky concerning Community trademarks for NOW. The court allowed a stay in one, but refused a stay in the other, providing useful guidance as to when a court should allow a stay of infringement proceedings where there is a related invalidity action.

Threats provisions: time for a change?
United Kingdom | 23 July 2012

In essence, any person aggrieved by a threat to issue proceedings in the United Kingdom for infringement of certain IP rights - whether it is the direct recipient of the threat or an affected party, such as a supplier - may take action against the person making the threat. The Law Commission has recently launched a project to consider whether to repeal, reform or extend the relevant provisions.

No copyright protection for computer program functionality
United Kingdom | 16 July 2012

A long-awaited decision of the Court of Justice of the European Union establishes that functionality in a computer program is not protected by copyright. This almost certainly puts suppliers of certain established software programs at a disadvantage, but should encourage third-party innovation. The decision also seems to remove a potential liability risk for insurers in the technology industry.

Rise in patent grants sheds light on companies' IP strategies
United Kingdom | 10 April 2012

A rise of nearly 30% in the number of UK-originating patent applications granted in the United Kingdom appears to reflect successful research and development and the importance of the UK market to international, IP-dependent companies. Three changes to the UK patent regime could stimulate greater investment in research and development in future.

Football Dataco: no database copyright protection for fixture lists
United Kingdom | 12 March 2012

A ruling that database copyright will protect a database only where "the selection or arrangement of the data... amounts to an original expression of the creative freedom of its author" is good news for bookmakers and sports news providers, and perhaps for information publishers in other fields. Commercial entities that make money by creating and distributing data must now consider how to protect their business model.

Specsavers shows Asda the perils of living dangerously
United Kingdom | 05 March 2012

Specsavers' long-running dispute with Asda provides an example of the problems that marketers may face when they try to create a campaign that is based on a competitor's brand, but differs just enough from the original idea to avoid claims of infringement - a tactic referred to in this case as "living dangerously". Even without customer confusion, such tactics may amount to taking unfair advantage of a competitor's trademark.

Take notice: court orders parallel importer to account for half of its profits
United Kingdom | 13 February 2012

It is rare for an English court to be asked to determine an account of profits in an IP infringement action. A recent case provides a useful reminder of the benefits of an account of profits over a claim for damages in cases where there has been a technical infringement, but it is difficult for the rights holder to prove losses.

Bad date in court for US matchmaking website
United Kingdom | 21 November 2011

The High Court has ruled that in order to demonstrate goodwill in the United Kingdom for the purposes of a trademark invalidity action, a foreign web-based business must show evidence of actual UK customers, rather than relying on hits or visits to its website from the United Kingdom.

BT ordered to block access to copyright-infringing website
United Kingdom | 19 September 2011

Rights holders have previously made successful claims against infringing websites. However, Newzbin2 is the first UK case in which rights holders have forced an internet service provider to block access to an infringing website. The leading Hollywood film distributors that brought the case can afford to pursue such websites aggressively, but the position is less satisfactory for other rights holders.

Protecting rights in databases
United Kingdom | 20 June 2011

The collection and exploitation of data and databases is increasingly important, particularly to internet and digital media businesses. After the Court of Appeal revisited the question of how data and databases are protected in Football DataCo Ltd/Brittens Pools, and again referred questions to the Court of Justice of the European Union, the IP community must consider the protection available for databases.

Unlocking keyword disputes?
United Kingdom | 14 June 2010

Those who thought that the European Court of Justice decision in Louis Vuitton v Google, as interpreted in Die BergSpechte v Günter, had resolved the trademark infringement issues of keyword advertising will be disappointed by the High Court's recent consideration of the issues in the context of Interflora v Marks & Spencer.

Litigation

Unlocking keyword disputes?
United Kingdom | 15 June 2010

Those who thought that the European Court of Justice decision in Louis Vuitton v Google, as interpreted in Die BergSpechte v Günter, had resolved the trademark infringement issues of keyword advertising will be disappointed by the High Court's recent consideration of the issues in the context of the dispute between Interflora and Marks & Spencer.

High Court considers unenforceable exclusion clauses in IT contracts
United Kingdom | 01 June 2010

It is common practice for information technology suppliers to seek to exclude or limit their liability within their standard terms and conditions. However, such provisions are enforceable under English law only to the extent that they are "reasonable". A recent High Court decision highlights the possible pitfalls when suppliers seek to rely on standard exclusion clauses.

Tech, Data, Telecoms & Media

High Court reaffirms no copyright protection for computer program functionality
United Kingdom | 05 March 2013

In what should be the final instalment in a long-running case, a decision was recently issued in SAS Institute Inc v World Programming Ltd following the referral back to the High Court from the European Court of Justice. For the software industry as a whole, this final judgment is likely to be welcomed as bringing certainty to the area of protecting computer programs with copyright.

No copyright protection for computer program functionality
United Kingdom | 17 July 2012

A long-awaited decision of the Court of Justice of the European Union establishes that functionality in a computer program is not protected by copyright. This almost certainly puts suppliers of certain established software programs at a disadvantage, but should encourage third-party innovation. The decision also seems to remove a potential liability risk for insurers in the technology industry.