Mr Paul Joseph

Paul Joseph

Updates

Intellectual Property

Stuck in the middle with (Section) 52
United Kingdom | 08 February 2016

Section 52 of the Copyright Designs and Patent Act 1988 limits the duration of copyright in artistic works that have been industrially exploited with the copyright owner's consent to 25 years (ie, the same maximum protection available for designs). The government intends to revoke Section 52 in light of concerns raised by designers; but following further objections from businesses, controversial new repeal proposals have been drafted.

The future of shape marks
United Kingdom | 16 November 2015

The European Court of Justice recently handed down its preliminary ruling on the registration and validity of shape marks following a referral from the High Court in the well-publicised case between Nestlé and Cadbury. The case, which began as a contested trademark application in 2010, concerned the Kit Kat chocolate bar, the shape of which Nestlé wished to register in Class 30.

Private copying exception deemed unlawful
United Kingdom | 03 August 2015

The High Court has found that the introduction of the exception for private copying of copyright-protected works without a compensation scheme was unlawful. However, the court did not strike out the exception, instead granting the secretary of state three options to rectify the error. Whatever happens next, it is clear that change is required.

Breaking the (supply) chain
United Kingdom | 20 October 2014

Wilko Retail Limited v Buyology Limited considers the availability of a Norwich Pharmacal order for rights owners to obtain the disclosure of the identities of manufacturers and suppliers of infringing goods. In this case the claimant had not obtained the information and had already settled the claim, but the court refused to grant an order as it was not persuaded that the 'balance of irreparable harm' test would justify that grant.

A 'lush' result for cosmetic warriors – but another 'bomb' for Amazon
United Kingdom | 09 June 2014

Following a recent defeat in the High Court relating to a finding of infringement in respect of Cosmetic Warrior Limited's LUSH Community trademark for cosmetics and toiletries, Amazon.co.uk Limited and Amazon EU Sarl have suffered a further blow in their attempt to limit the scope of the court's order.

You've been framed! High Court issues ISP blocking order
United Kingdom | 20 January 2014

The High Court has again shown its support for copyright holders, granting six major film companies blocking orders under the Copyright, Designs and Patents Act 1988 against the six main UK internet service providers (ISPs). This is the latest in a line of cases in which copyright owners have relied on the act to obtain blocking orders against ISPs. However, the case highlighted two remaining uncertainties in this area of law.

Mattel left scrambled without friends in court
United Kingdom | 16 December 2013

Following a recent court defeat in relation to the validity of its three-dimensional tile mark, Mattel has suffered yet another blow as its claims for trademark infringement and passing off against Zynga have been rejected by the High Court and its SCRAMBLE mark has been invalidated.

The Trademark Clearing House – do you need to sign up?
International | 15 July 2013

The initial application process for new generic top-level domain registries has now closed and attention has shifted to how trademark owners can protect against third parties registering their brands as domain names. It is against this background that the Trademark Clearing House (TMCH) recently opened. Brand owners will need to weigh up the pros and cons when considering registration with the TMCH.

Interflora v Marks & Spencer: Interflora prevails with keyword result
United Kingdom | 10 June 2013

Following years of legal wrangling between Interflora and Marks and Spencer in respect of keyword advertising, the High Court recently issued a judgment in favour of Interflora as trademark owner. The decision will be of particular interest to those that base their businesses around bidding on keywords (through services such as Google's AdWord service) which are already protected as trademarks by their competitors.

Cut off the head, but beware that the sub-licence may not die
United Kingdom | 29 April 2013

The High Court recently ruled that a sub-licence is capable of surviving termination of its head licence in certain (albeit fact-specific) circumstances. Licensors concerned by this decision should ensure that where they grant licences permitting sub-licensing, it should be a condition of such permission that the sub-licence include an express provision for automatic termination on termination of the head licence.

Supreme Court clarifies what constitutes 'making' a patented product
United Kingdom | 25 March 2013

The Supreme Court recently issued its decision in the long-running case of Schütz v Werit. The decision is of particular importance to the producers of replacement parts for consumer goods, and in relation to the delicate (and blurred) line between making a patented article (which amounts to infringement) and simply repairing a product (which does not).

Court of Appeal rules on account of profits in IP infringement actions
United Kingdom | 28 January 2013

It is rare for an English court to be asked to determine an account of profits in an IP infringement action and even rarer for an account of profits to be determined by the Court of Appeal. A recent Court of Appeal decision, which largely overturned an earlier Patents County Court decision, provides useful guidance on the determination of an account of profits.

ECJ rules on trademark class description: further translation required?
European Union | 06 August 2012

In a long-anticipated judgment, the Court of Justice of the European Union has ruled, perhaps unsurprisingly, that when applying for a trademark, it is necessary to identify the goods and services for which protection of the trademark is sought with sufficient clarity and precision.

Transferring proceedings between the English High Court and Patents County Court
United Kingdom | 28 May 2012

In two recent cases the English courts have provided helpful guidance on the application of the procedural rules governing the transfer of IP proceedings to and from the Patents County Court. They are reminders of the rules that judges and applicants must follow, and of the common pitfalls that applicants would do well to avoid.

High Court rules on copyright licensee's Norwich Pharmacal order in file-sharing case
United Kingdom | 21 May 2012

A recent case shows that robust evidence of potential copyright infringement is needed in support of an application for a Norwich Pharmacal order, and that the court will not look favourably on threats in letters of claim to slow down a potential infringer's internet connection. However, the judge did not condemn speculative invoicing as a method of seeking redress for infringement.

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.

ECJ judgment in Interflora: keyword advertisers beware
United Kingdom | 03 October 2011

The European Court of Justice has delivered its judgment in Interflora v Marks & Spencer plc. The ruling appears to be a victory for trademark owners that wish to restrict the use of their brands as keywords. The court has set out at least three grounds of attack: prejudice to the guarantee of origin, prejudice to the so-called 'investment function' and "riding on the coat-tails" of the registered mark.

Jimi Hendrix clarifies the purple haze of the Enforcement Directive
United Kingdom | 25 October 2010

In one of the first examples of a reported damages assessment under the EU IP Enforcement Directive, the High Court has applied the principles set out in the directive to assess the damages payable by the publishers of The Sunday Times following an infringement of copyright in respect of a Jimi Hendrix concert.

Competition law arguments and unlawful parallel trade: worthy of a defence?
United Kingdom | 06 September 2010

A number of traders importing products from outside the European Economic Area without the rights holders' consent have raised competition law defences in response to trademark infringement actions, arguing that the claimants are acting anti-competitively in enforcing their rights. A recent Court of Appeal decision suggests that such defences may require fuller consideration, potentially by the European Court of Justice.

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.

Tech, Data, Telecoms & Media

You've been framed! High Court issues ISP blocking order
United Kingdom | 21 January 2014

The High Court has again shown its support for copyright holders, granting six major film companies blocking orders under the Copyright, Designs and Patents Act 1988 against the six main UK internet service providers (ISPs). This is the latest in a line of cases in which copyright owners have relied on the act to obtain blocking orders against ISPs. However, the case highlighted two remaining uncertainties in this area of law.

The Trademark Clearing House – do you need to sign up?
International | 16 July 2013

The initial application process for new generic top-level domain registries has now closed and attention has shifted to how trademark owners can protect against third parties registering their brands as domain names. It is against this background that the Trademark Clearing House (TMCH) recently opened. Brand owners will need to weigh the pros and cons when considering registration with the TMCH.

Nominet finds critical website not an abusive domain name registration
United Kingdom | 30 October 2012

Nominet, the organisation that manages the '.uk' top level domain, has refused to order the transfer of the domain name 'opticalexpressruinedmylife.co.uk' to the owners of Optical Express DCM (Optical Holdings) Limited, finding that the domain name was not an abusive registration, since its purpose was the genuine criticism of Optical Express.