Webinar
Intellectual Property update
Intellectual Property update
In this webinar, we will provide an update on the current state of affairs in the UK and EU intellectual property offices and the UK courts and what we might expect to see as the lockdown continues to ease.
We will also select a handful of recent decisions to give a flavour of current intellectual property issues and how they may be relevant to your business.
You can view past webinars at SHMA®ON DEMAND or read the latest news and views from us.
Please do let us know of future topics that you are interested in, or for more information about our webinars please contact us.
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Webinar transcript
(Please note this is auto-generated and un-edited)
0:01
I welcome to today's webinar on Dan Goodall, an associate and the intellectual property team. And I'll be talking firstly about how the IP registries and courts are coping during the current pandemic, and then I'll move on to discuss some recent cases and how they may be relevant to your businesses.
0:22
So, even with the UK and EU Intellectual property office, doors closed and staff working remotely, the majority of their services remain unaffected. Many findings are carried out online. So you can carry on finding applications and progressing substantive matters. As you were before, an automatic extensions to deadlines were granted where possible, with those for ag rights having already ended, and the UK IPO extensions next being reviewed on the 22nd of June.
0:54
I only the minimum notice period, before things up and running, again, off two weeks, And we expect the registries to be very busy, and therefore, is the extension has come to an end, having had to adapt to new ways of working like everybody else. So, it's fair to expect things to take a little bit longer. And, with a potential said, in new publications, now may be a good time to write Sonia's, to sign up to watching services if they haven't done so already, just to make sure they don't miss out on any third party applications that they should be challenging.
1:28
Hearings is still taking place, but remotely via telephone or video conferencing. No physical hearings are currently being listed.
1:37
It will be interesting to see how effective these remote hearings are. Particularly in terms of cross-examination of witnesses from their own homes or offices.
1:45
But if they do work well, this could potentially be good news for clients in terms of convenience and cost savings.
1:53
So the UK IP Courts have been working hard to limit disruption at the same time as minimizing risks to its staff and the public they already use online filing. So new claims and applications can be issued as normal.
2:08
Potential claimants will need to be very mindful of limitation, periods at the moment, just to make sure that they don't miss out on the opportunity to issue their claims at all.
2:18
And service of claims and documents may be causing some extra headaches, particularly where the parties are overseas, and even domestically, e-mail service is only possible by agreement or order the core, which may not always be appropriate.Â
2:33
The courts have adapted very quickly to the Super Mike hearings where possible, and the Lord Chief Justice has already confirmed that they're here to stay. So, maybe part of the new, normal or into new abnormal. As our CEO, Sarah Walker Smith describes in her letter to business leaders, understandably, parties have been requesting stays and extensions as a result of covered nine team related disruption. And a rule on parties agreeing extension between themselves has been temporarily relaxed.
3:05
And one recent decision, the court stated that its recognize that things do take longer for remote working, but existing deadlines shipping that where possible. More we expect that legal professionals and how they use modern technology. And also the courts will be reluctant to grant extensions, which result in the loss of a trial date.
3:29
Now, in an IP specific case, the claimant suggested that the trial should go ahead last year on paper with a series of written submissions and short hearings focused on specific issues using video conferencing with limited cross-examination. And the High Court appreciated the suggestion. But, again, that trial, in any case, that's the approach, just wasn't an out by the rules and the Court guidance. So, maybe this and highlight some of the issues with remote hearings in IP cases and, often with cross-examination, of multiple witnesses and experts.
4:05
Now, in terms of timings in new and ongoing proceedings, it would be sensible to ask the court to build in more time into case management orders and particularly with the parties and experts, remote working remotely and often in multiple countries as well.
4:21
Now, as always, parties should be considering the possibility of settlement throughout the proceedings, as it's usually quicker and cheaper than mitigation. And mediations are certainly capable of being capable of being held remotely.
4:37
Now, moving on to the recent decisions, starting with patents. I haven't put the case references in the slides, but if you do want next case that, let me know and I'll be happy to.
4:49
So, on the whole, it does appear to be a good time to be a UK patent owner. We've seen the courts in a number of cases continue to grapple with the landmark decision of the Supreme Court, in ..., and Eli Lilly, which effectively broadened the scope of protection of UK patterns by introducing a doctrine of equipments infringement test.
5:13
The doctrine of equivalence takes climate adaptation, the UK's preexisting and generally more literal interpretation of the patent claims to include immaterial variations from the invention or equivalents. one way of limiting the scope of equivalence is preventing the patent owner from asserting that the patent covers by equivalents, aspects that were amended out during the defining stage.
5:40
Then, ..., the Supreme Court, said that the reference to the patent file would only be appropriate. Where either the point at issue is truly unclear if looking at the specification and claims of the patent alone and the contents of the file resolve the point unambiguously. Or, there would be contrary to the public interest for the contents of the file to be ignored.
6:04
So the bar on reference to the prosecution history was therefore set quite high. And in another case, the following year, the same Supreme Court judge this time sitting in the Court of Appeal, declined to refer to the file in a case concerning ice rink technology.
6:20
However, in the recent decision of Akiba therapeutics and five region, the High Court found circumstances where it was appropriate to refer to the patent file on public policy grounds and pointed out that it would be contradictory for the claimant's on the one hand, to amendment claim down, particularly to save its validity over some prior art. And yet at the same time, as the scope of protection of the amendment claims extends well beyond what it was narrowed down to during prosecution.
6:50
So whilst the High Court applied the decision in that tell you this, as it's bound to do, its interpretation somehow failed. The Bar on reference to the fall may not be quite so high. But even so, and with the doctrine of Equivalent still not applicable to the question of novelty, there is scope for UK patent owners to assert a wide degree of protection.
7:12
So the next case is about interim injunctions, which are often sought in intellectual property cases and the recent Patents Court decision, and hopefully set out the principles routinely applied by the Court. So an interim injunction is a strong remedy effectively preventing defendants from carrying out the allegedly infringing acts before the court has determined the outcome of the substantive case.
7:39
So the court needs to decide where the balance of convenience lines between ongoing harm courts to the applicant, and the harm to the defendant, if it turns out that the injunction was wrongly granted.
7:51
And the first stage of this process is whether there is a serious issue to be tried based on the supporting evidence provided by the applicant.
8:00
Now, preparing evidence can involve some intense activity over a very short period of time.
8:08
So after this stage, the Court considers whether damages would be sufficient to compensate the claimant and if they would be interim relief won't be granted even if the underlying claim is very strong.
8:20
Now, if damages aren't an appropriate remedy, then the court will next consider whether a cross undertaking in damages would be adequate to protect the defendant.
8:32
And applicants should seriously consider the risk of paying the defendant insignificant, or potentially significant compensation, under cross-examine, angler cross undertaking to defend them. If that substantive case later lost, an injunction was wrongly granted.
8:48
If it's still unclear, it not point where the balance of convenience lies the court can take into account the relevant strengths of each party's case on the basis of soul and evidence, but they will avoid trying to conduct a trial within a trial.
9:03
Finally, on interim injunctions, another point to remember if the applications without notice to the other party, require full and frank disclosure by the applicant of the relevant facts and legal principles, and that includes any weaknesses in the applicant's n-case. And an application, for interim relief, has been turned down recently, on the basis that disclosure wasn't frank info.
9:28
So, whilst interim injunctions can be a very powerful tool, just remember that they do come with risks attached Yes, I'm moving on now to trademarks. And you may have seen trademarks mentioned in the news, amongst the reporting of Prince Harry and Megan Meghan Markle stepping down the senior Royals. And there's a few learning points here that I'd just like to, just like to share with you, may help you with your own trademark strategies.
9:56
Say: UK Trademark applications were filed in June 20 19, and for Sussex Roil, Sussex role the foundation of the Duke and Duchess of Sussex.
10:09
So, first thing to say really is when considering a new brand. Be aware that certain words, images and emblems may be prohibited from registration is trademarks or they may have specific limitations applicable to them. And Royal, it's one of these restricted terms. So this might explain why it took approximately six months after that amongst OK through the examination phase.
10:34
Is also advisable to file applications before the new brand is announced. As trademark squatters may try to get him with an application first, and then hold you to ransom.
10:46
And the Duke and Duchess of Sussex had set up the Sussex ... dot com website two months prior to finding the marks, so it does seem like some risk may have been taken there.
10:57
And ultimately the prospect of having to challenge the squatters applications or at worst dropping the new brand is best and easily avoided with any findings of your own. Since trademarks or territorial rights, and squatting is a global phenomenon. Unsurprisingly various applications were filed for Sussex Royal across the world. And, according to reports, one of these applications with specifically made with the intention of teaching the Duke and Duchess a lesson about how trademarks work. They didn't really need that lesson because they filed international applications claiming priority from the UK application. So they benefited from the protection date of the application, and I know that was necessary.
11:46
And so when it comes to your starting your own strategies, remember to cover your key territories, and remember that you can claim priority from earlier applications. And now as it turns out, in February, the Duke and Duchess of Sussex dropped the word evolved from their brand. They say the trademark applications were withdrawn.
12:08
Now the next case is very interesting and in-depth. And the Court of Justice of the European Union and the High Court decisions confirmed that descriptions of goods and services that lack clarity and precision not sufficient in themselves to wholly or partially invalidate a registered trademark.
12:31
And but an application made without any real intention to use, the mark is sufficient to invalidate on grounds.
12:40
And this is quite significant, because there are concerns for brand owners. That many existing trademark registrations containing broad terms would be wiped from existence, following the earlier opinion of the EU attorney general.
12:55
Now, just to give an example of a broad term, And in this case it was computer software, which can obviously cover a huge array of different types of software, and there'll be many, many trademarks out there with list and computer software.
13:09
And the decision also serves as a warning to organizations that seek to use trademarks as a weapon by casting the net protection over the white.
13:20
Now, in this, in this case, Sky won its trademark infringement case. And but only afterwards registrations will narrow down to a fraction of what they once were on the basis of bad faith.
13:32
The court decided that skies applications were made in bad faith because they clearly didn't intend to use the mark for all the goods and services lifted. And they also fall for impossibly broad Categories. Now, just give you an example. And Sky had applied for a wider range of goods and services, including bleaching, preparations and whips.
13:57
Now skycap wanted the court to find, the bad faith in respect to some of the goods and services should take, the whole sky. It's registrations. Meaning, the holes, skies registrations would be invalidated. And because of the earlier result, the other decision in the CJA EU skies marks are only partially invalidated. And the high court found that was enough for infringement of the marks and that surviving form.
14:27
So I think the take home points here really are paths.
14:32
Land grabbing basically, you know, using trademarks as a weapon won't be tolerated by the courts, and but also in multiple. Fortunately for trademark proprieties specifications, lacking clarity and precision won't be invalidated on that basis alone. And prices may still expect them to be challenged and potentially narrowed based on monies if reporting them against the parties.
15:01
So, moving on to them in Bentley, this is an example of how strong the registered trademark can be for brand awareness.
15:06
And the claimants were the owners, an exclusive licensee of three longstanding. UK register trademarks containing the Word Bentley for various clothing and headgear items, and the defendants with a well-known bendy motors who had been moving into selling clothing and headgear.
15:26
Now there's a history between the parties and bedding clothing having made itself known to Bentley Motors in 19 98. And subsequently, Bendy Motors had tried to clear a path for itself by challenging Bentley Clothings registered trademarks. Since they haven't succeeded in counseling or monks Bentley, clothing Sue for infringement.
15:47
And although Bentley Motors was using Bentley as part of a combination mark with the links logo which I've put on the slide there, the court found that the average consumer would have seen this as two separate marks as this is how Bentley had been using them beforehand.
16:03
So in perhaps a David and Goliath moment, bending back his competitors extensive reputation to the modest reputation, authentic clothing and argued that consumers would only think of Ben Motors when seeing clothing barinas combination mark.
16:19
However, this wasn't relevant in the case because trademarks can be infringed in different ways. And the owner of a registered trademark doesn't have to use it to an extent sufficient to create a likelihood of confusion in the marketplace, and the court went on to find an infringement on this basis.
16:37
The fact that the marks had coexisted for awhile and there was no evidence of actual consumer confusion didn't make any difference to the outcome. And then the motors was entitled to carry on setting jackets and ties, and caps and scarves, and based on some of its prior use, but that's probably a little constellation when, you know, announced to expand further.
17:04
So it's another example of the shear strength of a registered trademark, irrespective of the respective cached commercial strength of the parties.
17:15
OK, so moving on to the case this interesting to me personally. It's Video Gamer. Many Knighted has sued the publisher and developer of the Popular Football Manager Game.
17:26
Trademark case itself is slightly unusual since there's not only an allegation of infringement based on unauthorized use of the word Manchester United and but also infringement of the trademark for the Monday night crest logo by not having used it, and instead having replaced it with a simplified red and white stripes logo.
17:47
So many nights had argued that came as expect to see the club crest alongside its name. details and say, the defendants deprived magnitude of its right to license and control.
17:58
and exploitation of Israel trademark and related video games. And so, therefore infringed this very interesting argument. But sadly, not the subject matter of this particular hearing, so we'll have to wait and see how that one goes. And the recent hearings. Interesting, insane, right? Because it concerned an application to amend the pleadings to hold the defendant's jointly liable for patches developed by third parties, which effectively. And our game is to put the Manchester United logo back in and independently of the publisher and the developer. So Monday night, it had relied on a provision which is really designed to prevent preparatory X, which aid infringement effectively. And so examples are creating packaging with marks on labels that are attached to the goods.
18:52
But even in this case, even if the patches were prepared to act, the the ultimate use of the monks would be by game as in their personal capacities. And so the game has some sales wouldn't be infringing the marks. And the court therefore rejected the application as the defendants couldn't possibly be infringing on the spaces that can possibly be live on this basis.
19:19
Now, some interesting arguments have been raised by counsel for Monday night teacher in the hearing, including that many gamers are now acting commercially.
19:27
And this is true because many gamers to stream their gameplay online for advertising revenue revenue. And so, a streamer using the patch displaying Manchester united's trademarks could potentially be infringing.
19:40
But, unfortunately, for the applicant, since it wasn't reflected in their draft amended pleadings, the application failed. But, I think we might expect, and there might be another application.
19:54
So moving on to copyright designs, and as my colleague Malraux Pion I discussed recently in his webinar, of course across the EU is starting to apply the ....
20:04
You use decision and cut them out and G-Star raw, and if you haven't seen the webinar, the outcome of the customer decision was that the only requirement for copyright to subsist in a work in the EU, is originality. In the sense that it's the result of the author's own intellectual creation.
20:22
National goals shouldn't impose additional requirements such as esthetic or artistic value, since the approach in the UK.
20:31
So therefore, an interesting time for copyright, as it appears to me, extend copyright protection to you to determine designs, at least as far as the UK is concerned. And this blurring of the lines between copyright and designs is significant, because of a much longer period of protection of copyright works.
20:49
So we may therefore see claimants' adding copyright claims to what would have more traditionally been patent infringement cases.
20:56
And unless the copyright claim really doesn't add anything, it's procedurally difficult. Or without significant cost it seems to be nothing to lose in doing so.
21:06
And this is probably even more likely following the CJA EU's decision last week in the Brompton bicycles case.
21:15
So in a referral from the Belgian court concerning the shape of the Brompton Bicycles, the CJA EU was asked whether works whose shape is necessary to achieve the technical results. So effectively, functional function functional articles can be protected by copyright.
21:32
In assessing this, the referring court was asked also asked whether the existence of earlier patents and the intention of the infringer were relevant.
21:43
So in February, we had the non binding opinion if the attorney, the advocate general, that there should be no copyright protection for products with an industrial application. Shape is exclusively dictated by their technical function. In his view, copyright protection of functional designs could potentially undermine the patent and design systems. And CJ, he is now determined that the question is really just about whether the author is able to reflect their own personality in the relevant work as an expression of free and creative choices.
22:18
So provided that, any technical considerations, don't completely restrict those creative choices, which would only seemed to apply, and very few circumstances and copyright can subsist in functional articles.
22:31
The intention of the alleged infringer is completely irrelevant, and the existence of an earlier patent is relevant, but only to the extent that it shed light on the creative choices available to the creator at the time.
22:44
So this does get back to the point on overlapping intellectual property rights. As has always been the case, intellectual property rights are not mutually exclusive. So it's always worth considering the bigger picture before taking action against infringers. And each IP right will be considered on its own, merits, and will have its own requirements for subsistence.
23:05
It will be interesting to see how the case law develops in this area, with cough from our already having been applied to a shop layout in Italy. In particular, will the UK carry on down this path once we no longer subject to EU law. And, in my view, that the advocate general's concerns about copyright protection of functional articles undermining the patent and design systems seem justified. And if you'd like to hear more about this subject, Matter discusses Coffer Mount and its recent application by the UK codes in more detail in his webinar, which is available on our website.
23:41
OK, so, last but not least, and the recent application for strike count. The Court has given a useful indication of the availability of injunctions and damages in breach of confidence claims.
23:53
And so in this case concerning the defendant's access, to the claimant's IT systems, the defendant had applied to strike out the claim on the basis that they could only be liable for misuse of confidential information if they knew that its use or retention was not authorized by the claimant, which they said was not the case. And also, this knowledge must be depleted by the claimant, which it hadn't done.
24:19
So having reviewed all the case law, the Court found that for damages to be available, the defendants had to have sufficient knowledge that they lacked the authorization from the claimant to act as they did.
24:32
Whereas it wasn't a requirement for injunctive relief. And since the claimant hadn't actually pleaded knowledge of the defendant, the damages claim was doomed and was struck out although the claim for an injunction was not.
24:45
And so it might be re-assuring that injunctions may be innovative or without having to show the defendant's knowledge of wrongdoing.
24:53
And also, in IP cases, it's important to remember that the most valuable remedy is often the injunction.
25:01
That's not to say that financial remedies aren't important because they are. But it's the injunctive relief. That will help protect your market share and your brand from further damage. So that brings us to the end of this webinar, and I hope you found that useful. If you would like any further information, or if you've got a specific query on any matter that you'd like to discuss, please do let me know, and I'll be happy to help.
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