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Legal Developments in the The Legal 500 UK 2020

What are the best practices to implement around choosing the applicable law for international licens

August 2019 - Intellectual Property. Legal Developments by IR Global.

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The following article discusses session one in the IR Global Virtual Series on 'International IP Licensing - Creating effective contracts'

How do you ensure that rights to IP can be granted effectively in multiple territories?

August 2019 - Intellectual Property. Legal Developments by IR Global.

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The following article discusses session two in the IR Global Virtual Series on 'International IP Licensing - Creating effective contracts'

How can a licensor ensure that territorial rights are respected where multiple licensees exist?

August 2019 - Intellectual Property. Legal Developments by IR Global.

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The following article discusses session three in the IR Global Virtual Series on 'International IP Licensing - Creating effective contracts'

What representations and warranties do you include in an IP contract? Do you negotiate differently?

March 2019 - Intellectual Property. Legal Developments by IR Global.

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The following article discusses session three in the IR Global Virtual Series on 'Dealing in IP: Successfully transacting IP as part of the M&A Process'

What due diligence do you undertake specific to IP during the M&A deal process?

February 2019 - Intellectual Property. Legal Developments by IR Global.

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The following article discusses session one in the IR Global Virtual Series on 'Dealing in IP: Successfully transacting IP as part of the M&A Process'

How do you go about valuing IP? Has this ever changed the pricing of a deal in your experience?

February 2019 - Intellectual Property. Legal Developments by IR Global.

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The following article discusses session two in the IR Global Virtual Series on 'Dealing in IP: Successfully transacting IP as part of the M&A Process'

10% Tax Rate for Intellectual Property Confirmed

December 2011 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 6 December 2011, the UK Government published further details of a lower Corporation Tax rate for IP earnings which will come into force in April 2013.

Human embryonic stem cell inventions – patentable or not?

On 10 March 2011 Advocate General Bot delivered his Opinion in the case of Oliver Brüstle v Greenpeace eV1, a reference to the European Union’s Court of Justice (CJ) from the German Federal Court.

Edwards and KCI make Entitlement to Priority Top Priority

The validity of a patent often hangs on the validity of its priority claim, as the latter determines the effective date for assessing novelty and inventive step.

Valid until proven invalid - PLAY-DOH victorious

On 11 February 2011 the High Court of Justice (Chancery Division) Intellectual Property Community Trade Mark Court handed down judgement in the case of Hasbro Inc and others v 123 Nährmittel GmbH and Marketing and Promotional Services Ltd.

Further progress towards a single Europe-wide patent

Over the last few months, momentum has been gathering within the legal bodies of the EU to address the lack of a community-wide single patent. The Commission has been keen to address this matter for some time, since in their view a lack of a unitary patent across the EU creates artificial barriers in the internal market.

Broccoli and Wrinkly Tomatoes

January 2011 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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- The Enlarged Board of Appeal at the European Patent Office interprets Article 53(b) EPC in broad fashion

New EPO disclosure requirements

January 2011 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 1 January 2011 new Rules 141 and 70(b) EPC come into force at the European Patent Office (EPO). These new rules require applicants claiming priority of a previous application to file a copy of the results of any search carried out by or on behalf of the authority in respect of the previous application.

Some Clarification from the EPO

November 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The European Patent Office (EPO) has now published two further decisions to clarify some of the new rules that were introduced on 1 April 2010.

G1/09 – When is a patent application pending?

October 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Rule 36(1) EPC provides an applicant with the right to file a divisionalapplication relating to any pending European patent application within two yearsof the first substantive communication from the Examining Division (or anobjection of lack of unity raised by the Examining Division) in respect of theearliest application in that family. 

Change in opposition deadlines

October 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Trade Mark Opposition Proceedings and calculating the opposition period – Change of UK Intellectual Property Practice – earlier deadlines

Israel – New options for obtaining trade mark protection

On 1 September 2010 Israel will join the territories that can be designated via a Madrid Protocol application for the protection of trade marks. For those with existing Madrid Protocol applications or registrations Israel can be the subject of a subsequent designation in order to extend protection into this territory. In this case, the rights would date back to the date that the request for a subsequent designation was made rather than the original filing date of the Madrid Protocol application or any priority claim.

Change in Google AdWords and AdText Policy

Google has announced that, from 14 September 2010, it will no longer prevent advertisers from selecting a third party's trade mark as a keyword. Instead, trade mark owners will be able to complain abou the selection of their trade mark by a third party if they feel that it leads to a specific ad text which confuses users about the origin of the advertised goods and services. Google will then conduct a "limited investigation" and if it finds that the keyword in combination with a particular ad text is confusing as to the origin of the advertised goods and services, it will remove the ad. However, it will not prevent the use of trade marks as keywords.  

The ECJ's judgement in the case of Monsanto v Cefetra BV and others

On 6 July 2010 the European Court of Justice (ECJ) handed down their judgement in the case of Monsanto Technology LLC v Cefetra BV and Others, a referral to the ECJ from the Rechtbank’s-Gravenhage of the Netherlands. This case is of particular significance for patentees in the biotech industry since it has provided one of the first opportunities for the ECJ to address the scope of gene patents in Europe in light of Directive 98/44/EC (the Biotech Directive).     

Accelerated prosecution of European patent applications

The time from filing to grant of European patent applications has increased in recent years, particularly in certain technical fields such as telecommunications, software and biotechnology. In some areas, this is a result of the number of applications filed, which has risen faster than the number of examiners able to deal with such cases. Also, the volume of PCT applications designating the EPO as International Searching Authority has caused a knock on effect to increase the delays in examination of other applications. Other major patent offices are experiencing similar problems leading to backlogs. 

EPO Board of Appeal allows double-patenting where patentee has "legitimate interest"

In T1423/07 (made available online May 2010), the EPO Board of Appeal allowed a European patent to be granted with claims that were identical to the claims granted in respect of the European priority application.

EPO decision reinforces strict approach to “added matter”

A recent decision (T2017/07, published April 2010) from the Technical Board of Appeal of the EPO highlights how an apparent limitation to a patent claim can actually have the effect of broadening the claim beyond its scope as granted (Article 123(3) EPC). The decision also illustrates how strictly the added matter provisions of European practice are being interpreted by the EPO (Article 123(2) EPC).

A well-known, different star: Daimler AG and Sany Group Company Limited

On 23 October 2009, the UK section of a multinational trade mark dispute between Daimler AG and Sany Group Limited was decided in Sany's favour as it was deemed the two marks in dispute were not similar enough.

The Enlarged Board declares ‘Swiss-type’ claims redundant under EPC 2000

On 19 February 2010, the EPO Enlarged Board of Appeal (EBoA) announced their decision in G2/08, thereby providing important answers to the questions addressing the fate of ‘second medical use’ claims under EPC 2000.  Key aspects of the decision are summarised below.

Back to Nature?

The Enlarged Board of Appeal of the EPO aims to interpret the exclusion from patentability of methods of treatment by surgery.

Google AdWords

October 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Trade mark infringement in relation to online advertising has been a hot topic of late. The question on the legality of the use of keywords corresponding to trade marks has been the subject of several lawsuits throughout the EU. Perhaps the highest profile of these has been the recent group of cases concerning a group of well known brand owners and Google France.

IPO changes for UK trade marks

October 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 1 October 2009 the Intellectual Property Office (IPO) introduced a new service called 'Right Start', as well as changes to its existing fee structure for filing UK trade mark applications. Right Start is aimed at giving applicants an indication of the likely success of their application. The fee changes include a fee reduction for e-filing. The IPO has also changed the costs and practices of filing series marks and has increased the fee for extension of time. It has also temporarily suspended the fast-track examination service.

A one way street to harmony?

On 2 July 2009 the UK Court of Appeal handed down its judgement in Generics (UK) v Daiichi, dismissing the appeal and holding that the patent relates to inventive subject matter. The court endorsed a more balanced approach to assessing obviousness in patent law, wherein factors such as the motive to find a solution to the problem addressed by the patent, the number and extent of alternative avenues of research, the effort involved in pursuing them and the expectation of success should all be considered. This decision reaffirms a recent trend towards harmonising the approach to assessing patentability applied by the UK courts with that of the European Patent Office (EPO) and other national courts in Europe.

Saving Face - Personalised URLs on Facebook - Make sure your marks are protected

Facebook users can now register a personal URL for their profile page on the Facebook website. This raises concerns for brand owners as Facebook users may decide to choose a well known trade mark as their URL. The prospect of[yourmark] could become a reality. Consequently, Facebook has taken measures to reassure rights holders and prevent name squatting.

European Patent Office introduces stricter time limits on divisional applications

On 1 April 2010, a new rule to the European Patent convention comes into effect1 which imposes a stricter time limit on the deadline for filing divisional applications. This new rule will apply to all applications pending on that date. Boult Wade Tennant therefore strongly recommends an early review of existing applications to determine if one or more divisional applications might be required.

European Patent Office introduces mandatory accelerated examination

On 1 April 2010, a series of new rules to the European Patent Convention come into effect1 which are aimed at forcing applicants to bring patent applications into conformity with the requirements of the EPC earlier in the application process. These new rules will affect many applications that are being filed now so should be borne in mind when filing any new European patent application or when entering the European phase of an international application.

European Patent Office announces rule changes to ‘Raise the Bar’

In 2007, the European Patent Office introduced their "Raising the Bar" initiative, striving for better quality patents1. They stressed their ongoing commitment to providing a quality search and examination process, but highlighted what they saw as failings on the part of applicants to enter quality applications into that process. With increasing globalisation, more applications were being received that failed to meet with European specific requirements of clarity and conciseness. In April 2008, a fee of €200 for each claim in excess of fifteen was introduced in an effort to ensure that applicants filed fewer claims. This was supplemented in April 2009 by a fee of €500 for each claim in excess of fifty.2 Further significant changes to the rules have now been announced for April 2010.3

House of Lords finds European approach “sufficient”

Recent months have seen a number of decisions by the UK Courts that explicitly seek to align patent practice in the UK with the approach of the European Patent Office (EPO).  This trend has now been reaffirmed by the House of Lords in the recently-issued judgement in Generics v Lundbeck when considering the concept of sufficiency under UK law.

Protecting designs in China

Companies worried about protecting their intellectual property in China can take heart from a recent decision of the Chinese court. German firm Neoplan Bus GmbH has successfully sued the Chinese automotive group Zonda for infringement of a Chinese registered design relating to a bus. The registration was found valid and Neoplan was awarded nearly US$3 million in compensation. A number of earlier attempts by vehicle manufacturers to enforce registered designs in China had not been so successful. Therefore, this decision provides reassurance that foreign companies can succeed in protecting their IP in China.

The London Agreement update

The cost of obtaining patent protection in Europe has been dramatically reduced thanks to the implementation of the 'London Agreement'.

Inventors awarded £1.5 million compensation for their inventions

On 11 February 2009, the High Court of England and Wales handed down a groundbreaking judgment awarding two inventors compensation totaling £1.5 million. The award was made in view of the benefit derived by the inventors' employer from patents granted for their inventions and this is the first time that any inventor in the UK has successfully made a claim for this sort of compensation.

Impending substantial fee reductions for Community Trade Marks

The cost of obtaining Community trade mark (CTM) registrations is set to be reduced by around 40%.

Important changes to the EPC effective from 1 April 2009

February 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Amendments have been made to the Implementing Regulations of the European Patent Convention, along with the accompanying Rules relating to Fees, that will become effective for applications filed or enterig the European regional phase on or after 1 April 2009. As a result, careful consideration should be given to filing early to avoid the potential fee increases, particularly for applications that are lengthy and/or contain many claims.

New changes to search system for Community Trade Mark applications:

January 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Last year, the Community Office changed its search system.  It became optional for applicants to receive the searches carried out by the national offices for earlier conflicting rights, and if the applicant did wish to receive these search reports there was a fee payable.  Not all countries provided search reports.  There were certain countries which had opted not to take part in the search system.  If the applicant did not opt to receive the national search reports, then the Community Office carried out a search of the Community Register only and notified the applicant of possibly conflicting earlier Community applications and registrations. 

Fun Radio - UK Registry guidance on acceptable variations of registered marks

January 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Capital Radio plc had originally applied for registration of the FUN RADIO (& Device) trade mark covering various goods and services in Classes 25, 35, 38 & 41 under No. 2163342. This trade mark was subsequently assigned to Children's Radio UK Limited (CRUK). The registration procedure was concluded on 11 June 1999. On 20 May 2006, Societe d'Exploitation Radio Chic (CHIC) applied to revoke the registration on the ground that it had not been used at all since the date of registration under the provisions of Section 46 (1) (a) and (b) of the UK Trade Marks Act 1994 (Case O-230-08). Revocation was sought in relation to all the goods and services covered by the registration.

Eurohypo AG v OHIM

December 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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In the recent case Eurohypo AG v OHIM (Case C-304/06P), the ECJ handed down a decision pointing out that the grounds of refusal in Article 7(1)(b), (c) & (d) of the Community Trade Mark Regulation (CTMR) each have separate public interests underlying them.  The decision also emphasised the need to consider the correct public interest when making decisions based on these grounds.  Article 7(1)(b) prevents the registration of marks which are devoid of any distinctive character, whilst Article 7(1)(c) prevents the registration of marks which are descriptive of characteristics of the goods or services in relation to which registration is sought.  Article 7(1)(d) prevents the registration of generic marks.

The Latest BUDWEISER Development:

December 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The latest development in the BUDWEISER trade mark dispute between Anheuser-Busch Inc (AB) and Budejovicky Budvar Narodni Podnik (BB) was an appeal to the High Court by BB following an application by AB for a declaration of invalidity of BB's UK trade mark Registration for BUDWEISER. See [2008] EWHC 263 (Ch) Mr Justice Norris Anheuser-Busch Inc (AB) v Budejovicky Budvar Narodni Podnik (BB) re BUDWEISER.

Unregistered Design Right: Scope of Protection

November 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The scope of protection afforded by UK unregistered design right (UDR) was considered in May 2008 by the High Court in Rolawn Limited v Turfmech Machinery Limited. The case emphasises the limitations of unregistered design right and the advantages of registered design protection and patents.

Restoration of UK Patents: The Requirement for Evidence

November 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The Patents Court has recently considered the requirements for obtaining restoration of a lapsed patent in the July 2008 case of Matsushita Electric Industrial Co v. Comptroller General of Patents.

New .TEL Domain Launch

November 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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3 December 2008 sees the opening of the sunrise period for the new .TEL domain launch. .TEL offers an innovative new way to store communications information about your company, and Boult Wade Tennant will offer a comprehensive registration service.

EPO Enlarged Board Asked to Clarify Law on Patents for Computer Programs

November 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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For several years, the UK Intellectual Property Office (UKIPO) and European Patent Office (EPO) have been applying divergent interpretations of essentially identical patent legislation. UK patent law and the European Patent Convention (EPC) both state that certain things are not to be regarded as inventions for which a patent can be granted and that one of those things is “programs for computers”. However, patentability is excluded only to the extent to which the patent application or patent relates to a program for a computer "as such".

Streamlining the application process - new Trade Mark Rules 2008

October 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The process of registering a UK trade mark has been streamlined by the UK Intellectual Property Office (UK-IPO) with the introduction of the Trade Mark Rules 2008, which came into force on 1 October 2008.

Update - UK Court Considers Industrial Application of Genes

October 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 31 July 2008 a decision of the English High Court was handed down by Mr Justice Kitchen in the case of Eli Lilly v Human Genome Sciences Inc (HGS). In it the court addressed for the first time the criteria to be applied for the industrial applicability of biological molecules to be recognised.

Name-calling: Greater protection for Company Names

October 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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New provisions concerning company names came into force on 1 October 2008. These allow companies to better safeguard their company name by giving them remedies against opportunistic registrations that are comparable to those given by the dispute resolution procedures to take action against "cybersquatters" and domain name hijackers

Community Registered Designs: Defining the scope of the prior art

October 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Court of Appeal puts laundry balls registration through the wringer A recent decision by the UK Court of Appeal provides useful guidance on the definition of prior art in Community Registered Design (CRD) cases.

Is comparative advertising unfair?

THE EUROPEAN COURT OF JUSTICE (ECJ) IS IN THE midst of considering questions referred to it by the UK courts in three separate cases that should clarify the law regarding comparative advertising. This type of advertising, particularly when it identifies a competitor or a competitor’s goods or services by referring to a registered trade mark, is of particular concern to trade mark owners as their competitors normally seek to make unfavourable comparisons with their own goods or services, or to take advantage of being associated with the market leader’s brand.

A step towards uniformity in Europe

In January 2007, courts in England and the Hague handed down conflicting
decisions on the validity of the same European patent, giving rise to
concerns over the inconsistency of outcomes between European
jurisdictions. The House of Lords has now overturned the English courts'
earlier decisions and agreed with the Dutch court's findings. The decision
clarifies the way in which obviousness should be interpreted under English
law and marks a step towards a more uniform approach in the way the
national courts in Europe consider the validity of European patents.

UEFA Victorious in EURO 2008 Trade Mark Challenge

UEFA, the European football body behind EURO 2008 and previous European Football Championships, has successfully fought off a challenge to the registration of its EURO 2008 trade mark.

World Cup Willie - Jules Rimet Cup Limited v The Football Association Limited - High Court Decision

This is a case in which the court looked at the IP issues in a dispute over the World Cup Willie trade marks filed by Jules Remit and attacked by the FA. The decision included a finding that the FA still had residual goodwill in their 1966 mascot sufficient for passing off and that Jules Rimet had filed in bad faith despite having taken legal advice.

The falling cost of European and UK patent litigation?

IN A RULING OF THE COURT OF APPEAL HANDED down on 19 March 2008, recognising the urgent need for reform of the patent litigation system in Europe, Jacob LJ commented:

‘[This case] illustrates yet again the need for a one-stop patent shop (with a ground-floor department for first instance and a first-floor department for second instance) for those who have Europe-wide businesses.'

Internet advertising: can keyword searches lead to trade mark infringement?

RECENTLY, IN WILSON v YAHOO! UK LTD & ANOR [2008] (the Mr Spicy case), the UK courts ruled on whether search engines using keyword advertising to produce sponsored results can constitute trade mark infringement. This article reviews this landmark decision and the past UK case law on banner advertisements, and considers what impact these will have on businesses wishing to use keywords as part of their advertising strategy on the internet.

New rights for brand owners under the Companies Act 2006

In October 2006, the Companies Act 2006 (the 2006 Act) will add to brand owners’ intellectual property armouries by enabling them to take actions against companies that incorporate names that use their trade mark.

Format shifting: UK proposals for a limited ‘private copying’ exception

On 8 January 2008 the UK Intellectual Property Office (IPO) announced a consultation aimed at ensuring that the UK’s copyright laws are fit for the digital age. One of the most high-profile of the proposed amendments to the law surrounds the issue of private copying, or so-called ‘formatshifting’. It is often unappreciated by consumers that the practice of copying a CD for use on an iPod or other MP3 player is an infringement of copyright, even though such a practice is widespread.

Where are we now with lookalike products?

Lookalikes have been described by the British Brands Group (an organisation that since 1994 has operated as a lobbyist on behalf of brand owners collectively) as products where ‘distinctive features of a brand’s packaging are hijacked in order to trick shoppers into buying something they believe to be that brand, made by the brand manufacturer or sharing the reputation of that brand’. In submissions made by the Group to the Gowers Review (see below) it asserted that lookalike products had caused a 20% decline in sales of branded products, and an increase of 55% in own-label share compared to own-label products in dissimilar packaging.

Are your advertisements compliant with the advertising standards codes?

Advertising and marketing are essential tools for any business in today’s crowded marketplace. The shifting habits of consumers, the advent of new technologies and developments in the law are changing the advertising landscape at an unprecedented rate. Public interest in the impact that advertising has on children and issues surrounding the appropriateness of promoting alcohol and gambling have brought the spotlight firmly on to how these areas are regulated. It is therefore more important than ever to ensure that advertising is legally compliant.

Tread with caution: rebranding considerations for franchisors and licensors

Licensors and franchisors should ensure that they give careful consideration to all the relevant implications of a compulsory rebranding of their licensed/franchised business. It is easy to look solely at the investment cost to the licensor-franchisor and the expected benefits of launching a new product or service. However, difficulties can arise quickly if proper thought is not given to the potential economic impact on licensee-franchisees, as well as the accuracy of any trade mark registration programme implemented to protect the new brand.

What is ‘local’ reputation in the European Union?

The Community trade mark (CTM) has become a useful tool for businesses within the European market. It was created to further the EU ‘single market’ agenda, which aims to implement one procedural system under which uniform protection can be given to trade marks in the Community. Nevertheless, the EU recognises that pre-existing trade marks and earlier rights within EU member states also require protection. The Community Trade Marks Regulation (CTMR)1 provides various mechanisms for owners of these rights to oppose CTMs which would otherwise infringe upon those rights.

UK trade mark actions - should the unjustifiable threats provisions be maintained?

Businesses and their professional advisers should exercise caution when writing threatening letters for perceived breaches of their trade mark rights. A badly drafted letter before action can lead to a potential claimant being counter-sued or becoming a defendant in an unjustifiable threats action. The UK threats provisions allow anyone aggrieved by threats of infringement proceedings, even if they are only implied, to bring proceedings against the writer of the letter or other persons making the threat.

The dangers of added subject matter

The date of filing or deemed filing of a patent application is critical. It establishes the so-called priority date for the patent and it is the state of known technology at that date against which the patent is measured to assess whether it meets the two fundamental requirements of being both novel and inventive. After the application is filed the applicant may wish to amend the application, for example to deal with objections raised by the Patent Office. If the application is amended during the application process, there is a danger that the subsequently granted patent may be invalid on the basis of ‘added subject matter', as Document Security Systems Inc recently found to its cost.

Some recent changes in US patent law

No patent strategy would be complete without some consideration of the US market. Two recent US Supreme Court decisions will have a significant impact upon the patent environment in the US.

IP in the UK - some recent surveys

A recent survey by the Economist Intelligence Unit has found that knowledge-based companies are increasingly reliant on intellectual property in their business. According to the research, the proportion of those surveyed who said that intellectual property rights (IPR) were critical to their business has increased by 50% over the past two years. Now, more than one-half of all businesses feel that IPR are critical. Businesses, including those in the telecoms sector, are increasingly turning to their IPR to generate revenue. However, just 5% of the income in the telecoms sector derives from IPR, so it still has some way to go to catch up with the life sciences sector, which gets 18% of its income from IPR.

Patenting software: discrepancies between the EU and US systems

European Companies and voters are told by their governments and the EU that their future prosperity lies in developing technology-driven economies. They are told that these economies rely heavily on intellectual property, and that one of the key manifestations of intellectual property protection is the patent.

Legal name clearance searches in the EU

There are a number of reasons why it may become necessary for a company to adopt a new name. The most common examples relate to the launch of a new product or service, and the merger of existing organisations resulting in the creation of a new entity. Whatever the commercial imperative behind the decision, it is essential, before the launch of the new mark, that linguistic and cultural checks are carried out to avoid the embarrassment of adopting an inappropriate mark. Skinabebe may have been perfectly acceptable as a name for a topical skin treatment for children in Japan, but is it suitable for the UK?

Faking IT: internet counterfeiting knows no bounds

Counterfeiting costs the global economy more than $100bn (£51bn) every year and puts our health and safety at risk, according to the latest information published by the World Intellectual Property Organisation (WIPO). Counterfeit and pirated goods are sold in almost every country in the world and European Union customs officials estimate that at least two-thirds of the counterfeit goods they seize originate from China. The internet is increasingly being used by those who deal in counterfeit and pirated goods as a fast and effective way of advertising and conducting their business.

It’s patent litigation – but not as we know it

The costs of patents in the UK and Europe have recently been receiving much attention, and various proposals have been made for ways to reduce the costs. As reported in the October issue (IHL144, p72) there are a number of, arguably competing, initiatives to reduce the costs of acquiring and enforcing patents in the UK and Europe. Since October there have been a number of developments.

Identity crisis: white label agreements and passing off

When the consumers of a product do not know, or even care about, its true origin, the law of passing off still protects the originator of the product against any unauthorised exploitation of the goodwill it generates. But what happens to goodwill when the originator expressly allows a third party to rebrand and market its product as its own, under what is known as a ‘white label' arrangement? Is there a limit to the extent that the goodwill can be exploited? The High Court grappled with this issue in the recent case of ScanSafe Ltd v MessageLabs Ltd in the context of internet security services.

Trade mark applications: it’s all relative, but not for much longer

The UK system for trade mark registration has always been seen as strong and reliable. However, the perceived value of a UK trade mark registration may not be as high after October 2007.

A single European patent – European Patent Office to the rescue?

The cost of obtaining and enforcing patents in Europe is expensive when compared, for example, with the US. Accordingly, there has long been a desire for a single European patent, but enormous difficulties (particularly relating to language) have hindered steps towards such a goal. Things may, however, be changing.

Ultraframe: the price of patent infringement

Only a small proportion of patent disputes proceed as far as a court judgment; the vast majority are resolved well before that stage. In cases where the decision is in favour of the patentee, the next stage is to assess the compensation to be paid by the infringer. The successful patentee can choose to recover either the profits made by the infringer (account of profits), or the loss it suffered (damages) as a result of the infringement. If the quantum cannot be agreed, the matter returns to the judge (the damages inquiry).

Hughes v Paxman: the dangers of co-owning patents

The recent case of <em>Hughes v Paxman </em>has highlighted the dangers of co-ownership of a patent.

Exploiting intellectual property for international expansion

At some stage in the development of every successful business, strategy turns towards expansion. The first option considered is usually corporate growth, making use of the resources within the company to expand. But there are other options, and this briefing explores the potential role that intellectual property can play in providing one such (popular) alternative.

Making the business of brands work for you

Brands have become key components of corporate value. Protecting them is a sophisticated business, particularly across the US and Europe, which are key markets for their exploitation. Brands are unique in their ability to distinguish one company from the next, even in the most competitive of markets. A successful brand will invariably end up becoming the single most important asset on a company's balance sheet because it encourages repeat sales.

BlackBerry – German and UK litigation

This article discusses the issues raised by the recent BlackBerry patent infringement litigation in the US, the UK and Germany, including: the emergence of patent trolls; the nature of litigation proceedings in the UK; the Gowers Review of IP rights; and, finally, the question of expert witnesses.

What's your domain name strategy?

Have you lost track of what domain names you own? Have you had problems with crucial domain names being lost to cybersquatters due to a failure to renew the domain? You are not alone. New Top Level Domains (TLDs) are constantly being introduced, and so as a company grows it becomes increasingly hard to maintain control over a domain name portfolio. A first step in the right direction is to create a well-thought-out strategy which should be reassessed regularly. Set out below are some of the most relevant issues that your strategy should contain, a brief update on the latest TLDs you need to consider and an analysis of the remedies available to combat cybersquatting.

HISL v Tunnard: competing businesses and unregistered design right infringement

A recent judgment in the Patents County Court has provided useful guidance on the duties owed by an employee wishing to set up a business in competition with their employer, and what constitutes ‘surface decoration', a feature that is not protected by unregistered design right.

The Gowers Review: a fresh look at intellectual property in the wider economy

Andrew Gowers, former editor of the Financial Times, has been commissioned by the Chancellor to lead a review of the UK intellectual property (IP) framework. While the review will no doubt address many topical IP issues, and this article looks at some of them, it can be expected to focus on broader issues, and in particular on the contribution that the IP framework in the UK could make to the future success of the UK in the global knowledge economy. That is no doubt why the Treasury has commissioned the review rather than the DTI or the Patent Office, and why Mr Gowers has been chosen to lead it. The scope for radical change in IP law is, however, limited by the UK’s international obligations.

Freedom of Information and copyright material

2005 witnessed a major legal development in the rapidly burgeoning field of information law. New Year?s Day 2005 heralded the much anticipated Freedom of Information Act 2000 (FOIA). If you have somehow failed to notice FOIA, you are in the minority ? the recognition level among the general public is currently up to around 80%. It is nevertheless fair to say that the private sector remains largely indifferent to the opportunities and threats embodied by the new rules.