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EU Opinion on Use of Cookies

Businesses that have websites will be aware of the regulations that govern the use of 'cookies'. Recently, an opinion of the Advocate General of the European Union on questions referred to the Court of Justice by the Federal Court of Justice in Germany on...

Trade Marks Infringed By Disassembling and Selling Charm Bracelet Links

Is the purchaser of a product sold under a trade mark entitled to take it apart and sell its component parts under the trade mark? The High Court considered that issue in resolving a dispute between rival manufacturers of bracelet charms. An Italian...

Patent Invalid if No Novelty

One of the key requirements for a patent for a technical process innovation to be successfully defended is that there must be something genuinely innovative about the subject matter of the patent. There has to be 'novelty' and an inventive step. On...

Data Storage Dispute Leads to Emergency High Court Injunction

Large companies frequently engage outside contractors to assist with storage of the vast quantities of data they produce. However, as a High Court case showed , a breakdown of such commercial relationships can give rise to urgent privacy and data protection...

Look Before You Leap With Trade Names

The first Intellectual Property Enterprise Court case heard outside London took place recently , when the court sat in Birmingham at the request of both parties involved in the dispute. It concerned an allegation of improper use of a registered trade mark...

This Is Why You Need Professional Support to Protect Your Trade Marks

The validity of trade marks can be challenged post-registration and that is one good reason why it is essential to enlist professional support in protecting them. In a case on point , the Cypriot authorities had their own disorganisation to blame after they...

Trade Marks and the Territorial Limits on the High Court's Jurisdiction

UK and EU trade marks are a highly effective means of protecting your brand – but they are subject to territorial limits. The High Court made that point in ruling that it had no power to entertain infringement proceedings brought by British airline...

ICO Publishes Technology Strategy for Next Three Years

One of the more interesting aspects of the new Technology Strategy document published by the Information Commissioner's Office (ICO) is that it specifically identifies Artificial Intelligence as a data protection risk to individuals and concludes that...

Small Business Data Protection Law Compliance Checklist

The Information Commissioner's Office (ICO) publishes a great deal of useful information for all organisations on data protection and compliance with data protection law. The ICO has recently updated its guidance on exemptions from some of the rights...

Confidential Information Leakage Stopped by Injunction

One of the biggest dangers when a senior employee leaves an organisation is the ease with which they can spirit away confidential information of importance to the business. Data is a critical asset for many businesses, and as well as the sanctions which may...

High Court Stamps on Illicit Live Streaming of Boxing Matches Online

Unauthorised online streaming of major sporting events, depriving organisers of their legitimate revenues, is ever on the increase. However, as a case in which the High Court came to the aid of a boxing match promoter showed, the law is far from powerless...

Failure to Have a Social Media Policy Can be Costly

Firms that do not have a social media policy in place should give consideration to introducing one and taking steps to make it part of the terms and conditions of employment for all staff members. Use of the Internet during working hours can be a...

'No Deal' Brexit - Guidance on Geographical Descriptions of Food and Drink

The Government has commenced issuing a series of guidance notes on how to proceed in the event that a 'no deal' Brexit occurs. Whilst the guidance does not have the status of law and will be replaced by legislation as soon as practicable if...

Debranded Goods Still Protected by Trade Mark Law

Products sell for widely differing prices in different national markets and that creates the opportunity for goods to be transferred from a low-price market to a higher-price one – a practice known as 'grey importing'. This can undermine the...

New Guidance on Transfers of Data Abroad

The Information Commissioner's Office (ICO) has issued new guidance on compliance with the General Data Protection Regulation (GDPR) for organisations that transfer data out of the UK. Because the GDPR protects only data within the EU, it restricts...

£500,000 or £1 Billion? It's Just a Matter of Timing

The recent £500,000 fine for Facebook regarding the transfer of data to Cambridge Analytica was widely criticised as being inadequate (Facebook makes roughly £3.5 million per hour) but it should not be forgotten that the fine was the maximum...

Unitary Patent

Obtaining a patent can be a rather arduous process, and it is therefore not surprising that sometimes thought is not given to the breadth of patent protection that is needed. The Unitary Patent (UP) is intended to solve the problem of having to undertake...

Greetings Cards Company Pays Price for Copyright Infringements

It is only right that those who make commercial use of others' creative ideas without permission should be hit hard in the pocket. Exactly that happened in a High Court case in which a greetings cards company was found to have serially infringed...

Data Protection Latest

You'd have to be living on Mars not to know that the General Data Protection Regulation (GDPR) is now in force. Its strict provisions must be complied with (the penalties for failing are swingeing) and it is practically impossible to run any organisation...

Software Company Fails to Lock Out Customer

One aspect of intellectual property (IP) rights that is often not given much thought, but which can be extremely important indeed, is what happens when a licence to use comes to an end. Much computer technology is supplied by licence (it is quite rare for...

Agency Law Gives No Recourse to Dumped Software Reseller

Under law which originated in the EU, agents of firms have considerable protection if their agency is terminated, and can normally be compensated. This reflects the commercial reality that agents frequently make a considerable investment in time and money in...

GDPR - ICO Launches Awareness Campaign for Micro-Businesses

The EU General Data Protection Regulation (GDPR) replaces the Data Protection Act 1998 and comes into force on 25 May 2018. The new law gives individuals more control over how their data is used, shared and stored and requires organisations to be more...

Words, Not Intention, Determine Meaning of Contract

When disputes arise over the meaning of a contract, it is usual for the court to look first at what the wording of the contract means and then at the commercial logic of that wording. In a recent case , the dispute essentially turned on whether two...

Copyright Law Still Applies on the Web

The idea that the Internet is a free-for-all is nothing more than a persistent myth and the consequences of publishing copyright material online without permission can be severe. In one case, a television news broadcaster found itself in hot water after...

Morrisons Held Vicariously Liable for Rogue Employee's Data Leak

In a workplace context, an employer can be found liable for the acts or omissions of its employees, provided it can be shown that they took place in the course of their employment – i.e. where there is sufficient connection between the employee's...

E-Signature Consultation

Under the Law Commissions Act 1965 , the Law Commission is required to submit programmes of law reform to the Lord Chancellor. The latest topics put forward for consideration include a review of the use of 'e-signatures'. These are becoming...

Copyright Claim Success Does Not Necessarily Mean Victory

When a man copied part of a photograph (showing the Welsh poet Dylan Thomas's head) from a website, he probably had the commonly held (but incorrect) view that because the picture was visible on the Internet, reproduction of it would not constitute a...

EU Trade Mark Reforms

On 1 October, changes came into effect across the European Union which broaden the range of things for which trade mark protection can be given. It is no longer necessary for a trade mark to be in visible form. Trade marks can now include sounds, smells or...

EU Proposes Steady as She Goes on IP Rights

In a knowledge-based economy, the protection of intellectual property is often of existential importance to businesses. With Brexit impending, the protection of such rights across Europe has come into focus and the European Union has come up with its ideas...

X Marks the Spot in IP Battle

Trade marks are jealously protected by their owners. A recent case shows how even seemingly uncontroversial trade marks can be found to infringe existing trade marks and proves the need for care in such circumstances. The case involved tyre giants...

Use It or Lose It

Having a trade mark is all well and good, but a recent case should serve as a reminder that failing to use trade marks may lead to them being lost. The case involved a trade mark for a cigarette brand which was registered to a tobacco company in the USA. ...

Do You Know Who Actually Owns the Patents You Depend On?

A great many companies depend on patents for their profitability, and doubts over ownership of intellectual property (IP) rights can put their very survival in jeopardy. This point was illustrated in a case that concerned a number of patents in respect of...

Court Robust in Protection of Motor Giant Trade Mark

Motor giant BMW, challenging a decision over the use of its trade mark with which it disagreed, has won its appeal in the Court of Appeal . The dispute was over the use of BMW trade marks by a small London garage business, Technosport, which repairs and...

Place Name Trade Mark Prevents Confusion

Newspapers periodically contain stories about the restrictions on use of terms that are geographically well known, for example the restriction on the use of the word 'Champagne' to describe sparkling wine. In addition to geographical restrictions, proper...

More than just small print?

Websites offer a fantastic tool that no businesses can afford to ignore.  Set up correctly and maintained well, a website can reach a wide – even global – marketplace and give customers quick and easy access to the products and services they...

Why register your brand

Your brand and reputation are significant business assets that are key to keeping ahead of your competitors and developing your market perspective. When it comes to preventing another business from using or copying your brand, whether or not you have...

Shape Change Not Inventive

For a patent to be valid, it is not sufficient that it is simply something new. There has to be an inventive step over the 'prior art', so that the item or process for which the patent is sought is not an obvious development. This test is at the heart of...

Internet Search Confusion Not Enough for Trade Mark Infringement

Argos is a well-known retailer in the UK and owns its trade name. However, the argos.com web domain is owned by a US company which specialises in computer-aided design and that company uses 'Argos' on its website as well as in its domain name. Argos took...

Pioneering Psychologist Blocks Abusive Use of His Name Online

A recent case in which web searches for a pioneering psychologist led to a website selling shoes and clothes shows the extent to which Nominet, the Internet watchdog, will act to protect the rights that people have in their own names. The psychologist had a...

High Court Keeps Commercially Sensitive Product Information Secret

Litigation often requires disclosure of highly sensitive commercial details. However, as one intellectual property case concerning a mapping database showed , the courts do have sophisticated means of keeping such information under wraps. A company had...

Developing Others' Ideas Can Itself Be Novel and Inventive

Patents that merely repeat pre-existing ideas are invalid – there has to be something novel about an invention to secure patent protection. However, that does not mean that developments based on the work of others cannot themselves be novel and...

Customer Details Email Leads to Fine for Ex-Employee

When an employee left her recruitment agency employer, she took the dubious step of emailing to her private email address the personal data of about 100 of her clients and contacts. She subsequently used the data to contact them in connection with her new...

Business Sales and Domain Rights

Buying and selling a business can be a complex matter and engaging a professional to make sure that deals are watertight and all the necessary actions are taken is a sound investment. In one case where that did not happen , a costly dispute developed...

Branded Goods Sold Without Authority Can Lead to Prosecution

It is well known that the sale of counterfeit goods is a criminal offence and prosecutions are by no means unusual. A recent case looked at the position in which goods protected by a registered trade mark are offered for sale with the brand owner's...

Backups Not For Sale

Backup copies of software are made routinely, and the sale of software no longer used is also commonplace, despite the fact that in many cases the software licence is not legally transferable. However, what would the position be if the original purchaser...

Shape Must Convey Brand to Create Goodwill

Many household objects are of a similar shape and even where the shape of an object made by a manufacturer has a particular style, the existence of intellectual property rights in that style will depend on it being unique to the point that potential...

Trade Mark Validity - It All Depends

A recent ruling by the Court of Justice of the European Union (CJEU) has implications for the owners of trade marks which are only used in part of the EU. The nub of the ruling is that if a court in the EU finds that an EU trade mark may cause confusion...

TalkTalk's Fine for Data Protection Breaches - What it Means for You

The recent fine levied on TalkTalk by the Information Commissioner shows the great importance of having an effective data protection regime in operation in any business. TalkTalk was fined £400,000 – the largest ever fine of its type –...

How to deal with Restrictive Covenants

Whether you are considering building a new extension, a single house or developing a large site for multiple properties, best practice is to first check the deeds of the property for restrictive covenants.  Restrictive covenants may appear on the legal...

Renault Squashes Internet Entrepreneur in Web Domain Dispute

Building brands is a lengthy and very costly process and it is hardly surprising that brand owners take a very dim view of others benefiting from their goodwill. In one case, car manufacturer Renault came down hard on a businessman who used its name and well...

IP Investment Exceeds Physical Investment

Anyone doubting the importance of intellectual property (IP) in the modern economy will be surprised by the contents of a recent report from the Intellectual Property Office that investment in research and development, software and design in 2014 was, at...

Brexit's affect on UK laws - business as usual!

Whilst the government has suffered the recent set back of loosing a court case requiring parliament to vote on the triggering of Article 50 it remains committed to starting the process of leaving the EU by no later than the 31 March 2017. But what does this...

Brexit's effect on UK laws - business as usual!

Whilst the government has suffered the recent set back of loosing a court case requiring parliament to vote on the triggering of Article 50 it remains committed to starting the process of leaving the EU by no later than the 31 March 2017. But what does this...

Online Trader Price Fixing Leads to £160,000 Fine

A company which deals in sports and entertainment products such as posters and stickers has pleaded guilty to breaching competition law by creating a cartel through collusion on pricing to ensure that it did not undercut the prices offered by an online...

Fake BMW Goods Lead to Jail

Recent jail terms for the counterfeiting of goods, after a financial investigation by the Intellectual Property Office, show clearly the dangers of dealing in goods which are counterfeit or breach the trade marks or other intellectual property (IP) rights of...

EU General Data Protection Regulation

In the UK, the Data Protection Act 1998 sets out the principles of data protection in compliance with European legislation. The more recent approval of the EU General Data Protection Regulation (GDPR) has imposed some changes on the operation of UK data...

Protecting your Intellectual Property Rights post Brexit

Birkett Long’s Intellectual Property expert says that the legal safeguards businesses have used to protect trademarks and design rights in the UK might not be valid when the exit from the European Union becomes a reality. He says the way businesses...

Web Knock-Offs - Stopping the Rot

The Internet is a market for all sorts of goods – including 'knock-off' copies of well-known brands. These are widely available through e-commerce websites around the world. In 2011, the UK brought in legislation which allows Internet service...

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...