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Combination of Small Steps Provides Patent Validity

Air travellers will be familiar with the X-ray scanners used as part of the security measures in airports, and the international market for such systems is massive. One of the leading names in the industry is Rapiscan, whose devices are widely used in many...

Protecting your Intellectual Property Rights post Brexit

Legal safeguards businesses have put in place to protect their trademarks and design rights in the UK may not be valid when we officially exit the European Union, warns Intellectual Property expert Stephen Avila. The solicitor from Essex law firm Birkett...

Symbol Bad, Acronym Good

Bayerische Motoren Werke is known by one and all as BMW and their roundel symbol is recognised worldwide. Unsurprisingly, it is also a trade mark. So when a non-franchised garage put the logo and BMW acronym outside its premises, BMW took action . It...

Brexit - what does it mean for intellectual property owners?

Britain leaving the European Union will not have any effect on domestic national intellectual property rights, such as trade marks, registered designs, patents and copyright, but many UK businesses that previously considered registering intellectual...

Glee as IP Court Rules in Favour of Club Owner

Large international corporations are well known for flexing their financial muscles and attempting to browbeat smaller companies into submission when they are in dispute. Such seemed to be the case when a comedy club owner took on 20th Century Fox over...

Copyright Infringement - Eight Seconds Enough

When a sports website was found to be providing unauthorised video clips of international cricket matches, the England and Wales Cricket Board and Sky UK Limited – to whom certain broadcast rights had been exclusively licensed – took a dim view...

Overheads Not Ignored in Claim for Profits

One of the ways by which a business can obtain recompense for the breach of its intellectual property (IP) rights is to make the infringing organisation account to it for any profit that they have made. This sounds all well and good, but it can be...

Jaguar Land Rover Wins Domain Name Battle

Deciding on a business name and URL for a website can be one of the most important steps a business takes – but it is essential to take professional advice to ensure that you do not step on others' toes in doing so. In one case, a car manufacturer came...

Cases Show Care Needed in Protecting IP

The owners of two emblematic brands have lost their claims to Intellectual Property (IP) protection lately, in cases which highlight the need to exercise careful thought in the formulation of trade mark applications. The first is the well-known London black...

£490,000 Damages Awarded for Racing Brakes Patent Infringement

Intellectual property (IP) rights are fiercely protected by the courts, and the consequences of breaching them can be severe indeed. In one case, a company which profited from infringing a patent in respect of a novel type of calliper used in racing car disc...

Small Businessman Beats BMW in Internet Domain Names Dispute

In the area of intellectual property (IP) law, the small firm has every chance of defeating the megacorporation, especially as regards ownership of domain names. In one case , which underlined the potential costs of failing to register Internet domain...

Data Loss Triggers Fine

The employee of a car rental company who sold personal information relating to 28,000 customers has suffered fines and costs totalling more than £2,800 after pleading guilty to an offence under Section 55 of the Data Protection Act 1998 . Although...

Lack of Research Causes Trade Mark Woe

Recent cases show the importance of being in possession of all the relevant facts and carrying out thorough research before making a trade mark application or taking action to protect your intellectual property rights. In the first , the EU General Court...

Online Pharmacy Fined for Selling Customer Information

In a move that sends out a clear message to other companies that the customer data they hold is not theirs to do with as they wish, the Information Commissioner's Office (ICO) recently fined a Leeds-based online pharmacy company £130,000 under the ...

Borrowed Pictures Cost £6,000

The Internet is a not a free source of material, as a home improvements company found recently to its cost . When the company used photographs which belonged to another company on its website, it was sued by the firm whose images had been used. Although...

Company Directors' Duties - Negligence or Error of Judgment?

Company directors inevitably make errors of commercial judgment now and again, but these rarely amount to a breach of the legal duties which they owe to shareholders, which occurs when decisions are made that are wholly unreasonable. A Court of Appeal case ...

Kit Kat Shape Not a Trade Mark?

The law of intellectual property is seldom simple or without surprises. In 2014, the High Court decided that the 'corrugated' shape of the Kit Kat chocolate bar, whilst unremarkable in itself, had acquired a 'distinctive character' by way of use over time...

Understanding Cyber Security - Free Course

A recent report revealed that 81 per cent of large organisations and 60 per cent of small ones suffered a breach of security in 2014. With cyber attacks on most businesses (at least in the form of emails carrying viruses) now a routine occurrence, it is of...

LinkedIn Plays Part in Design Copying Case

When a manufacturer of ceramics produced a range of products which even a judge in the High Court found it difficult to tell apart from those made by another firm without inspecting them closely, its defence that it had created the design independently...

Similarity of Name Proves Costly for Home Furnisher

When companies operating in the same field use similar names, the result can be legal fireworks. That was certainly so in the case of rival furniture retailers, one of which was found by the High Court to have caused public confusion . The Sofa Workshop...

BYOD Data Risk Complacency Revealed

Leading anti-virus supplier Kaspersky has carried out a survey which revealed that among small and medium-sized businesses there is a very considerable degree of complacency about the risks of losing sensitive data. Two thirds of respondents admitted that...

Counterfeit Goods Couple to Forfeit £1.5 Million

To many people, buying or selling a 'knock-off copy' of a branded item may seem a relatively minor matter but, given that brand owners invest billions of pounds annually in promoting their brands, it is unsurprising that the law which protects their rights...

Flooring Company Can't Use 'Champagne' Name

A trade association representing Champagne producers has come down hard on a British flooring company which hoped to bask in the glory of the sparkling wine by registering trade marks which incorporated the name 'Champagne'. The company had applied to...

Do you own your website?

At Birkett Long we regularly advise clients who have become embroiled in disputes over the ownership of their website. Unfortunately, people believe that because they paid for the website, they own it. This is not always the case. Copyright and other...

Sky Wins Battle of the Communication Brands

A judgment that generated a lot of column inches but had little practical effect was decided recently by the General Court of the European Union , when Skype (Skype Ultd) was denied the ability to register its name as a trade mark on the ground of its...

Cost of Brand Investment Not Reasonable, Rules Court

An intellectual property decision which surprised some when it was made in 2014 has been reversed by the Court of Appeal . It involved the importer and distributor of a branded pharmaceutical product which had an exclusive licence to use the product's...

Failing to Dot i's and Cross t's Leads to Court Appearance

It is often tempting to press on with things and not worry about details, but a recent case shows how much trouble can be caused when i’s are not dotted and t’s not crossed. The High Court was asked to grant a declaration that Fresh Trading...

Copying of Design Proves Expensive

Copying the design of another company's product can prove expensive, as a manufacturer of ice cream vans found out to its cost recently. Although it may be considered that ice cream vans are all similar to one another, a company which has been making them...

Too Similar Trade Mark Proves Costly

To regular renters of cars, the stylised 'e' in the logo of Europcar will be readily recognisable. With its brand reinforced by an extensive recent television advertising campaign, the Enterprise Rent-a-Car 'e' logo will also be familiar to many. The...

Deluxe Not Distinctive

Lidl has had an application to have 'Deluxe' registered as a Community Trade Mark rejected on the ground that it is not sufficiently distinctive in character to warrant trade mark protection. The trade mark itself emphasised the word 'deluxe': the...

Computer Program Patent Application Turned Down by Court of Appeal

It is exceedingly difficult to patent computer programs, although the code of a program is subject to copyright. The reason for this is that Section 1 of the Patents Act 1977 does not allow patent protection for computer programs. In order for a...

Company Data Breaches Lead to £150,000 Fine

A company which failed to take adequate steps to secure its website against hackers has been hit with a £150,000 financial penalty after a malicious fraudster managed to download personal data relating to its customers, including more than a million...

Trade Marks - Similar Name Application Prevented

When there is a risk of confusion on account of the registration of a trade mark name similar to yours, prompt action is advised. Recently, well-known double glazing firm Anglian Windows noted that an application had been made by an unrelated company, which...

Injunctions Given in Counterfeit Web Sales Case

A recent decision is good news for the proprietors of brands that suffer from the trepidations of counterfeit copies of their goods being sold over the Internet. The High Court ruled that the owner of a variety of luxury brands that suffered this problem...

Broad Brush Needed in Family IP Dispute

Disagreements between family members are often bitter, and this can lead to time, effort and expense being incurred which is disproportionate to the importance of the dispute when it concerns a family business, as a recent case illustrates . Two brothers...

BYOD Guidance

Guidance from the Centre for the Protection of National Infrastructure and the UK's National Technical Authority for Information Assurance highlights some of the aspects organisations must consider when adopting a 'Bring Your Own Device' (BYOD) approach,...

Copyright Dispute Racks Up Mammoth Legal Bill

A former couple engaged in an acrimonious copyright dispute in respect of trading software which lay at the heart of their phenomenally successful business have run up £19 million in legal bills. The husband, a mathematician and computer programmer,...

Jail Sentence Confirmed for Counterfeit Goods Trader

In a warning to traders that those who deal in counterfeit goods are at risk of losing their liberty, a market stall holder who was caught offering for sale fake Apple mobile phone chargers and USB leads has failed in an appeal against a 13-month prison...

Plastic Milk Bottle Producers in Patent War

A company which produces plastic milk bottles – tens of millions of which are used in the UK every day – has landed a strategic blow on a trade rival in the midst of a bitterly-fought patent dispute. Company A had accused company B of infringing...

Guide to Changes in Design Law

The Intellectual Property Office has published a guide to changes in the law relating to designs . These were introduced by the Intellectual Property Act 2014 , which received the Royal Assent on 14 May 2014 and comes into effect on 1 October 2014. The...

Spamming Fine Quashed

A case that made headlines recently, when a sender of spam emails was fined £300,000 by the Information Commissioner's Office, has come back to court. The somewhat surprising result is that the Upper Tribunal (UT) decided that the actions of the...

Premises: perils and opportunities

Whatever your health-related or social care business or undertaking, your premises may give you the opportunity of revenue from sharing or subletting space to other occupiers.  This can provide useful and in some cases vital income streams. ...

The New Intellectual Property Act 2014 strengthens rights for UK Businesses

The new Intellectual Property Act came into force in October 2014 and will help businesses in the UK better protect their intellectual property rights both here and abroad. The Act modernises the existing laws relating to designs and patents and has...

.uk Domain Names Launched

In June, the '.uk' top-level domain was launched. The .uk extension indicates an organisation in the UK, as opposed to the '.co.uk' one, which has been used for many years to indicate a commercial organisation in the UK. Most countries have domain suffixes...

Same Functionality Does Not Mean Software Copyright Breach

Just because a new software product produces the same results, operates in a similar fashion or looks similar to pre-existing software does not mean that the copyright in the original software has been infringed. When the owner of a sophisticated business...

'Greek' is a Geographical Term, Not a Style

The Court of Appeal has concluded that a product description which contains a geographical term can constitute 'passing off' if the product does not in fact come from the place named. The description of a product as 'Greek' (in this case Greek yoghurt)...

Slogan Fails Distinctiveness Test

Trade marks are a fairly difficult area in law and challenges to the registration (or, if registration is granted, the validity) of trade marks are common. Words and/or logos can be trade marks, but to be acceptable for registration a trade mark must be...

What is an Agent?

We often find that clients are confused about what constitutes an agent. Essentially, an agent is an intermediary involved in the making of a contract between one party, known as the principal and that principal's customer. Under English law, an agent...

Whose Data is it Anyway?

When a publisher and the firm managing its subscription database fell out over the database manager's quality of service, the publisher gave the database manager a month's notice to terminate the contract. In response, the database manager refused to release...

Patent Dispute that Reaches High Court has far Reaching Implications

When intellectual property rights are not the subject of proper agreements, the likelihood of a dispute arising is increased. When the responsibilities and rights of employees are not precisely stipulated, there is also possibility for disagreement. A ...

Design Law to Make Copying a Crime

One of the less well reported changes contained in the Intellectual Property Act 2014 is that the commercial exploitation of a registered design without the design owner’s permission will become a criminal offence, with a maximum term of five...

Court Fight Increases Cost of Copyright Violation

A photographer who had taken a picture of pop stars Ke$Ha and LMFAO has received a settlement of £20,000 after the Patents Court ruled that his copyright had been infringed . When he discovered that the picture was being used in promotional material...

Web Content - Can Do and Can't Do

It is commonly, but erroneously, thought that if content is on the Internet it is free to copy. However, this is not the case as copyright belongs to the creator of the content as soon as it is created. Unlike a trade mark or a patent, copyright does not...

Ex-Couple's Trade Mark War Ends in Stalemate

Mixing business and personal relationships can produce additional complications if a break-up occurs, as evidenced by the stalemate reached by a warring former couple who are at loggerheads over the future of their deadlocked business and its intellectual...

When is Ideal Not Ideal?

When the publisher of Ideal Home (IH) magazine brought a legal action for infringement of its trade mark against the Ideal Home Show (IHS), the response was a counterclaim by IHS that IH's trade mark was invalid. Both brands had successfully traded alongside...

Economic Loss Essential in Trade Mark Dispute, Rules CJEU

The Court of Justice of the European Union (CJEU) has issued an important judgment relating to trade marks , overturning an earlier decision. The dispute related to the use of a wolf's head as a trade mark. A community trade mark application was filed in...

Estate Agents Win Website Dispute

It is as well to remember that the Internet can be a threat, as well as a boon, to businesses, as is shown by a dispute involving a woman who registered a confusingly titled domain name and then used it to air her criticisms of a firm of estate agents. ...

Repackaging Setback for Pharmaceutical Vendor

The law on 'grey' or 'parallel' importing, especially of products that are sold under different names (such as many pharmaceuticals) has a balancing act to perform. On the one hand, it must protect the interests of the consumer by preventing unfair...

Inadvertence Defence Defeats Trade Secrets Claim

During the course of an employment, it is common for employees to become aware of the ‘trade secrets’ of their employer’s business. If they subsequently use this knowledge for their own gain, they can find themselves facing a claim for...

Courts Show Value of Registration of Trade Marks

The economic value of a well-known brand having a registered trade mark is illustrated by two recent court cases involving British Sky Broadcasting (BSkyB), US IT giant Microsoft and free Internet phone service Skype. Microsoft launched a cloud-based data...

Geography Not Exclusive

A recent intellectual property case has again illustrated the principle that the courts are unlikely to accept that geographical terms ‘belong’ to a particular business. It involved the launch of a publication called ‘The Southern...

Failed Patent Infringement Threats Cost Accuser

When a threat is made to bring a patent infringement action against another company, the result of the mere threat may be to cause damage to the threatened company. It may, for example, cease selling or making the item(s) that allegedly infringe the patent...

Court Gives Trade Mark Owner Frosty Reception

When a Canadian company decided to make a new attempt to enter the British market in 2008 with its range of washroom products, it registered its trade marks (carrying the name ‘Frost’) under the relevant classes of trade mark. Another business,...

Corporate Minnow Breaks Monte Carlo Casino

In a case which proves that even corporate minnows can successfully fight off trade mark infringement actions brought by much larger operators, a small party gaming company has inflicted a stinging defeat on the owners of the world-renowned Casino de Monte...

Potential Trade Mark Confusion Leads to Injunction

When an attempt is made to challenge the validity of a trade mark, the first issue to resolve is whether or not the trade mark is ‘distinctive’ – in other words, whether or not it is capable of distinguishing the goods or services to which...

Social Networking and Data Protection

If social networking is part of your firm’s marketing activity, you should be aware of the data protection implications. The Data Protection Act 1998 applies in such cases because the exemption which applies when personal data is ‘processed by...

LinkedIn Tug of War Resolved

When key staff left a publisher and set up in competition, the High Court was called upon to consider the question of who should have control over the LinkedIn groups they had created – the former employees or their erstwhile employer. The question...

Place Names Must Be Available to All

The UK Intellectual Property Office has refused an application by Chanel to register the word ‘Jersey’ as a trade mark on the ground that, as a geographical term, it would not be appropriate to deny its availability to other businesses seeking...

Cloud computing - draft EU data protection regulations create hazy horizons

Cloud Computing Service Providers ( CSPs ) have altered the way in which data is stored, transferred and accessed on a global scale and the number of CSPs is on the rise.  Cloud computing is the delivery of information technology services through a...

Data Protection and Old Computers

A recent case serves as a reminder to organisations that handle personal data of the importance of following appropriate procedures when the need arises to destroy information held on computers that are no longer required. Under the Data Protection Act...

Anti-Counterfeiting Made Simpler

The counterfeiting of products has always been a significant issue, especially with regard to high value products sold in areas with high levels of indirect taxation, such as the UK. For items such as cigarettes, perfume, whisky and luxury goods,...

Interflora Nips Keyword Ads in the Bud

A case concerning the use of a competitor’s name in ‘keyword’ marketing for Internet searches has now been decided and the ruling has implications for those who use such practices. The dispute involved Marks & Spencer (M&S) and...

Valid Community Trade Mark Not Full Protection Against Action

You have a registered trade mark – so you think there’s no risk of having an action brought against you for trade mark infringement. But would you be right? A recent case heard by the Court of Justice of the European Union (CJEU) suggests not....

Coffee Capsule Patent Claim Fails

Coffee-making machines using disposable ‘capsules’ of raw ingredients are becoming increasingly popular, so a row between two manufacturers of such systems was always on the cards. In the dispute, Nestec (a subsidiary of Nestlé) claimed...

BYOD - Data Controllers' Obligations

The Data Protection Act 1998 (DPA) requires data controllers to take appropriate technical and organisational measures to prevent unauthorised or unlawful processing of personal data and against accidental loss or destruction of, or damage to, personal...