Published cases

Games Workshop v Transworld Publishers [1993] FSR 705 (Court of Appeal)

• An appeal against an interlocutory injunction for infringement of trade mark (and passing off) used as the title of a series of books. Issues included whether use as a title of a series of books was use as a trade mark; adequacy of damages in a trade mark infringement case; whether the change of circumstances between the grant of the interlocutory injunction at first instance and the hearing of the appeal and associated with the Plaintiff signing a publishing agreement involving a trade mark licence would cause the interlocutory injunction to be discharged on appeal because any damages due to the Plaintiff thereby became quantifiable or more easily quantifiable (the injunction had been imposed essentially so that the Plaintiff would not lose the opportunity to enter the relevant publishing agreement); whether reasonable royalty rates pursuant to trade mark licences were to be used for the assessment of damages in trade mark infringement disputes in the same way that reasonable royalty rates pursuant to patent licences were used for assessment of damages in patent infringement disputes bearing in mind that trade mark licences were special as they should have involved quality control by the licensor so as to protect goodwill associated with the relevant trade mark.

Valeo Vision v Flexible Lamps [1995] RPC 205 (Patents Court)

• An action between manufacturers of commercial vehicle lamps involving claims based on several causes of action including infringement of copyright in industrial designs, infringement of registered design and breach of confidence. The case involved some issues arising when licences of right may be available for copyrights in industrial designs and some registered designs (registrations to which section 266 CDPA88 may arguably have been relevant); the issue of validity of the registered designs; the issue of the relief available against a defendant who was a third party exploiting confidential information without knowing the information had been disclosed to them in breach of confidence; and for the relief granted on the copyright infringement claim just before 1 August 1994 when industrial design copyright licences-of-right were to become available.

Mercury Communications v Weiner [1997] Sweet & Maxwell's transcripts case number 44754 (Court of Appeal)

• An appeal against refusal of judgment by summary process (RSC Order XIV) in respect of a passing off claim. The appeal was decided essentially as a matter of the evidence before the Court on one of the several claims (all the grounds in the Notice of Appeal being dismissed). There was no order as to costs, to reflect the fact that the only successful ground related to a claim not mentioned or referred to in the Notice of Appeal.

Greatwood & Or v Cheerent Ltd & Ors (Lawtel only) Lawrence Collins J 22/11/01 Trial on construction of an agreement for the sale of a business, particularly relating to the construction of terms relating to use of a name for a transition period after transfer of the business. Alternatively Claimants seeking rectification of the agreement. Claimants won on the construction point and, if this had failed, rectification would have been made. Indemnity costs award made in respect of that issue for a period having regard to Claimants bettering their Part 36 offer they had made.

POLICE TM [2004] RPC 693 (Mr Richard Arnold QC as the Appointed Person, his first judgment in this capacity)

• An appeal against the Office's decision that the mark be revoked in its entirety for non use. Issue was what amounted to "genuine use" in this near de minimis case (on the evidence). Size of undertaking relevant? Quantity of use in certain markets? Standard of review.

Jobserve Ltd v Skillsite Ltd, Hall & Richards [2004] FSR (Lewison J) Committal proceedings relating to breaches of undertakings given relating to database right infringement or breach of contract. As argued, hearing decided on a "construction of the undertakings given" argument as raised by Respondents. Respondents found guilty of contempt. Indemnity costs award in favour of Jobserve.

Sony v Messiah 2 chip D1 defendant Times Law Reports 22 October 2004, [2005] FSR 1 (Laddie J) Playstation2 games have what are alleged to be copyright protection measures which were circumvented by modchipping consoles to introduce Messiah2 chips so overcome regionality (and will play back-ups and counterfeits but such chipped systems not capable of producing either back-ups or counterfeits). Sony brought s296 CDPA88 (old and new form) and s296A,D CDPA88 (as introduced in UK by Information Directive legislation on 31 October 2003) against people in any way allegedly connected with Messiah 2 chip. Acted for first defendant. Summary judgment proceedings brought largely successful except that, as about 9/10ths of D1's sales were to overseas clients, successful argument based on "mens rea" element combined with s27 CDPA88 definition of infringing copies appears to have reduced quantum by perhaps 90% what it might otherwise have been. Other arguments raised but mainly unsuccessful. 95% costs of application for summary judgment against D1 awarded against D1. General permission to appeal given to D1.

Sony v Messiah 2 chip D1 defendant [not yet published] (Pumfrey J) D1 admitted having given a statement of truth in relation to 2 points without honest belief in truth. Sony pursued application r32.14 for permission to bring proceedings for contempt on some 20 heads (of which 2 were the 2 points admitted). Permission given in relation to 4 (including the 2 admitted ones), but not for other 16. Costs reserved to substantive hearing. {Another Counsel appeared on the substantive committal proceedings before Blackburne J. Believe to have been found in contempt on 3 heads. Fine of £2,000 and indemnity costs award for most of the costs of the application for committal and costs award for most of the costs of the application for permission.}

FSA CTM Opposition at Boards of Appeal stage [see OHIM website] FSA's application for a CTM for FSA's trade mark comprising initials FSA and a circle defined by horizontal ribbon curls (an arabesque) was opposed by a Spanish law firm having regard to that firm's Spanish registered trade marks comprising arabesques and alleged similarities of marks and contents of specifications. The opposition succeeded. I settled grounds of appeal for the appeal to the Boards of Appeal. The appeal was successful.

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