Generated case pages

Search by case title, citation, date, short overview, ratio decidendi summary, or obiter dicta summary.

AI Notice: Any short overview shown on this page is AI-generated, provided only to help users assess potential relevance more quickly, and may be wholly inaccurate. No liability is accepted for the accuracy of any such summary, regardless of any AI confidence rating shown. Users should check the underlying decision and obtain appropriate legal advice rather than relying on any summary.

Automobile Club De L’Ouest (Aco) v Omologato Ltd & Anor [2026] EWHC 2265 (IPEC) 27 July 2026 Automobile Club De L’Ouest (Aco) v Omologato Ltd & Anor ([2026] EWHC 2265 (IPEC)) concerns issues addressed in the judgment. The judgment should be checked directly for the full reasoning and outcome.
Andrew Tipping v Mark Smith [2026] EWHC 1855 (IPEC) 22 July 2026 The Claimant owned copyright in photographs published in Max Power; the Defendant admitted reposting them in 1,432 social‑media posts. The IPEC held the use would be treated as commercial in a hypothetical licence negotiation, fixed a reasonable notional licence at £37.50 per post and awarded damages of £56,850, interest of £19,741.67 and costs of £58,075 (total £134,666.67). The court rejected the Defendant's arguments that the use was non‑commercial or permitted by alleged royalty‑free licences.
Fendi Italia Srl & Ors v Rolo Fashion Limited & Anor [2026] EWHC 1703 (IPEC) 9 July 2026 This was a damages inquiry after default judgment that the defendants sold counterfeit Fendi goods. The court quantified lost profits at £200,000 using substitutive assumptions based on defendants' income and average selling price, applied the user principle to remaining infringing sales to award a minimum royalty of £13,000, and rejected claims for reputational loss and any additional award under Regulation 3. Aggregate damages were set at £213,000.
easyGroup Limited v Cubico (UK) Limited [2026] EWHC 1645 (IPEC) 1 July 2026 easyGroup sued Cubico in a liability-only IPEC trial alleging trade mark infringement (s.10(2) and s.10(3)), passing off, and sought revocation/invalidity of Cubico's registrations, based on Cubico trading as "Easy Bathrooms" and related signs. The Court found Cubico began trading as "Easy Bathrooms" in summer 2013 and later used other signs from mid-2015, but easyGroup failed to prove its pleaded "easy" family of marks and, on the facts (including lengthy parallel use without evidence of confusion and limited goods/services overlap), dismissed all infringement, passing off, revocation and invalidity claims as pleaded. The standalone EASY mark had been revoked post-trial and was removed from the relied marks.
Advance Magazine Publishers Inc. & Anor v Cornucopia Entertainment Limited & Anor [2026] EWHC 1488 (IPEC) 23 June 2026 This was a liability judgment in which Condé Nast (owners/licensee of VANITY FAIR and GQ marks) sued Cornucopia Events and its director Mr Vohra for advertising and offering tickets to invitation-only Vanity Fair and GQ events. The court held the marks had enhanced distinctiveness and reputation for the specified services and that Cornucopia’s public-facing, transactional and misleading use of the identical signs amounted to trade mark infringement (s.10(1), (2) and (3) except for the ‘435 Mark) and to passing off. The court also found Cornucopia had taken unfair advantage of and diluted/tarnished the marks (s.10(3)), and held Mr Vohra jointly liable only for the s.10(3) infringements; remedies and detailed orders were reserved.
Duadata Limited v Tian Cha Le Limited [2026] EWHC 1055 (IPEC) 8 May 2026 This was an inquiry into damages following a default judgment for passing off by Duadata (MOOBOO) against Tian Cha Le (TCL) alleging copying of menu design, products and recipes. The court held Duadata could quantify its loss by reference to a hypothetical franchise for a South Shields store, accepted the pleaded Points of Claim (with statements of truth) as evidential material on the papers, and awarded damages of £14,350 (VAT excluded); costs and ancillary matters were reserved for further submissions.
No Climb Products Limited v Gas Safe Europe Limited [2026] EWHC 908 (IPEC) 22 April 2026 No Climb sued Gas Safe for infringement of EP (UK) 2 265 516 B1, alleging Gas Safe’s DetectaReach and DetectaSmoke products fell within claims 1, 8 and 9. The court construed claim 1 as not requiring the spacer to be telescopically compressible nor permanently fixed, found the patent valid, and held DetectaReach and the supply of DetectaSmoke infringing; Gas Safe’s staple commercial product defence under s.60(3) failed. Remedies and any quantification of relief are not recorded in the notes.
Consorzio di Tutela Della Denominazione di Origine Controllata Prosecco v Prosecco International Ltd & Ors [2026] EWHC 912 (IPEC) 15 April 2026 The Consorzio sued Prosecco International Ltd and two individuals for infringement of the UK certification trade mark PROSECCO and of the Regulation in relation to two websites alleged to target the UK. The defendants sought strike‑out or summary judgment and a stay/transfer, but the court found disputed factual issues (including UK targeting, who controlled the websites, and whether certain wines complied with the PDO) that required trial. The defendants' applications were dismissed and the bulk of the claim will proceed to trial.
Easygroup Limited v Easyfeetstore OÜ & Ors [2026] EWHC 767 (IPEC) 1 April 2026 easyGroup sued Easyfeetstore OÜ, Easyfeet Inc and Mr Klishyn alleging trade mark infringement and passing off based on multiple "easy" marks, and sought invalidation of the EASYFEET registration. The court found no likelihood of confusion under s.10(2) and no link, detriment or unfair advantage under s.10(3), rejected the family-of-marks and enhanced-distinctiveness arguments, and dismissed all claims and the invalidation application. The judge noted Mr Klishyn would have been jointly liable if infringement or passing off had been made out.
Wang Zeng International Limited v Bing Bing Foods Limited & Ors [2026] EWHC 360 (IPEC) 20 February 2026 Wang Zeng International Ltd owned UK trade marks for "Mountain Pear" and "Yu Lu Fragrant Pear" and sued Bing Bing Foods Ltd and others for infringement. The court found Marks 1–4 valid (not descriptive, generic or filed in bad faith) and held BBF liable for infringing Marks 1, 2 and 3; the defendants' invalidity counterclaim failed. The court also found Mr Bingtao Wang jointly and severally liable for BBF's infringement, but did not make Mr Sohi a joint tortfeasor. Remedies (injunction, delivery up/destruction, account/damages, publication, costs) were ordered in principle and to be determined at handing down.
Luxe World Limited v Touch of Vogue Limited & Anor [2026] EWHC 148 (IPEC) 30 January 2026 Luxe World sued for actionable threats under the Registered Designs Act and sought an account of profits as alternative relief while pleading the claim value as unknown to pay a reduced court fee. The defendants applied to strike out the account of profits claim and to require Luxe World to state the claim value or pay the full fee. The court held that an account of profits is not available for an actionable threat of registered design proceedings (a non‑proprietary tort), struck out that remedy, and directed Luxe World to state the value of its claim or pay the higher court fee.
Edozo Limited v Valos (UK) Limited [2026] EWHC 93 (IPEC) 21 January 2026 Edozo and Valos, competitors in property valuation software, disputed whether Edozo had indirectly infringed Valos's computer program copyrights by reproducing the user-facing sequence of interactions ("Valos Steps") without access to Valos's source code. The court held that the Valos Steps form part of the program's functionality and are not expression of the author's intellectual creation in the source code, so reproducing those Steps cannot, as pleaded, amount to indirect infringement of Valos's source code. Accordingly, the parts of Valos's Defence and Counterclaim alleging indirect infringement of the Original and Subsequent Valos Computer Programs and the Valos Coded Prompts were struck out.
Carl Harrison v Andrea Elaine Buchanan & Anor [2025] EWHC 3283 (IPEC) 17 December 2025 This case concerned whether Mr Carl Harrison had a binding agreement to create technical drawings for Andrea and Mr Buchanan and what sum was payable. The judge found an oral agreement made on or shortly after 22 May 2022 and awarded Mr Harrison €15,000 (converted with interest to £13,880) for breach of contract. The defendants' contention that the drawings were unfit for purpose was rejected for lack of evidential basis. No order as to costs.
Prof. Ardemis Boghossian v IOP Publishing Limited & Anor [2025] EWHC 3317 (IPEC) 17 December 2025 Prof Boghossian sued IOP and Dr Djokic claiming she was a joint author of a 2017 paper and that its publication infringed her copyright. The court found she did not prove joint authorship on the balance of probabilities and dismissed her copyright claim; IOP’s Part 20 claim for indemnity against Dr Djokic was therefore dismissed. The court refused to strike out Dr Djokic’s Part 20 defence, gave his absent evidence limited weight, and held that, alternatively, the EPFL mediation terms would have constituted consent to publication.
Dryrobe Limited v Caesr Group Limited [2025] EWHC 3167 (IPEC) 4 December 2025 Dryrobe sued Caesr Group (trading as D‑Robe) for trade mark infringement and passing off. The court found the DRYROBE marks (though descriptive for some robe/clothing goods) had acquired distinctive character, dismissed the defendant's invalidity and revocation challenges (subject to a limited reduction of the ’428 specification for non‑used goods), and held use of the D‑ROBE and Shield signs infringed under ss.10(2) and 10(3) and constituted passing off. The court also found the defendant knew or had reasonable grounds to know of infringing activity by at least September 2023.
QMC Instruments Limited v Celtic Terahertz Technology Limited & Ors [2025] EWHC 3485 (IPEC) 26 November 2025 QMC Instruments Ltd sued Celtic Terahertz Technology Ltd and others over ownership and licence rights in multi‑mesh filters (MMFs) arising from a 1991 acquisition/licence and a 2001 collaboration/licence. The court refused QMCIL's summary judgment application, finding both parties' constructions of the 1991 term arguable, clause 2(c) of the 2001 agreement reads prospectively (referring to rights "acquired or developed") and does not clearly create an automatic extant exclusive licence, and there was insufficient basis to recognise the wide equitable duties QMCIL alleged. The case was stayed for mediation; interim costs payments were ordered.
easyGroup Limited v Jaybank Leisure Limited [2025] EWHC 3077 (IPEC) 21 November 2025 easyGroup sued Jaybank for trade mark infringement over Jaybank's use of EASIHIRE. The judge found the signs aurally and conceptually identical and that, but for a successful non‑use defence, Jaybank's use would infringe easyGroup's black & white EASYHIRE registration. The claim was dismissed because easyGroup failed to prove genuine use of the registered mark for the relied services in the relevant five‑year period and could not rely on use begun within the three‑month proviso. No enforceable injunction or other remedy was granted to easyGroup.
Conrad Lant v Plastic Head Music Distribution Limited & Anor [2025] EWHC 1954 (IPEC) 31 July 2025 This case concerned disputed authorship, ownership and subsistence of copyright in six Venom artworks and two photographs used on the band's merchandise and records. The judge found Mr Bray authored and owned one logo (Venom Logo 1) but rejected his other ownership claims; Mr Lant was held to own five works (Venom Logo 2, Goat Head Lucifer, Sigil of Baphomet, Legions Logo and one more), while the At War with Satan design had no proved author and both parties' claims failed; both photographic counterclaims by Mr Bray were dismissed. Infringement and flagrancy issues were considered but relief (remedies) was reserved for a later hearing; no infringements were found to be flagrant.
Battlekart Europe SA v Chaos Karts 1 Limited & Ors [2025] EWHC 1936 (IPEC) 25 July 2025 This case concerned European Patent 3 304 522 B8, asserted by Battlekart against Chaos Karts and others; the defendants admitted infringement of claim 11 if valid. The court held the skilled addressee for inventive-step purposes is a multidisciplinary team, accepted defendants' evidence that industry tracking/coordination systems (notably BlackTrax) formed part of the common general knowledge, and found claim 11 lacked inventive step over several prior disclosures. The court also construed claim 1(g) and found the patent contained added matter.
Shantell Martin & Anor v Bodegas San Huberto SA & Ors [2025] EWHC 1827 (IPEC) 24 July 2025 This IPEC judgment concerned claims that three wine labels copied a large 2017 wall drawing by Shantell Martin and gave rise to passing off and accessory liability. The court found copyright in the Work (assigned to Found the Found) and that the First Label copied a substantial part of the Work, giving liability findings against GM Drinks (and limited joint liability for others) for the First Label, while rejecting infringement and passing off for the Second and Third Labels. The judge declined to determine moral rights and flagrancy issues not included in the List of Issues, but gave brief alternative views. Remedies and quantum were left for subsequent resolution.
Natasha Courtney-Smith & Anor v The Nottinghill Shopping Bag Company & Ors [2025] EWHC 1793 (IPEC) 18 July 2025 This case concerned ownership and enforceability of a trade mark and related passing off and copyright claims over a bag logo. The court held the 22 March 2023 renewal was void because the original company’s trade mark had vested bona vacantia in the Crown on dissolution, NHBCL never validly became proprietor and lacked standing, the trade mark would be vulnerable to revocation for non‑use, passing off failed for want of goodwill, and while the logo attracted limited artistic copyright NC‑S’s copyright was not infringed. All principal claims against the Defendants were dismissed.
With Wise Limited v Wise Payments Limited [2025] EWHC 1809 (IPEC) 17 July 2025 With Wise Limited sought costs after Wise Payments Limited withdrew a strike-out application that challenged With Wise’s separate 2024 trade mark revocation proceedings. HHJ Hacon had earlier refused permission to With Wise to amend its defence in related 2022 infringement proceedings to add a non‑use revocation plea because of delay and cost/benefit concerns. The strike‑out application was withdrawn after circulation of a draft judgment in the 2022 Proceedings; the court refused to order off‑scale costs immediately and reserved the question of costs of the abandoned application to be determined after trial, giving With Wise leave to renew an application for off‑scale costs then.
Wise Payments Limited v With Wise Limited & Ors [2025] EWHC 1722 (IPEC) 11 July 2025 This case concerned competing businesses trading as "Wise" (formerly TransferWise) and "With Wise", and raised issues of trade mark validity, infringement (s.10(2) and s.10(3)) and passing off. The court narrowed the Claimant's 2018 Class 9 software specifications to software relating to its financial/payment services for lack of adequate justification, found the Wise Logo Mark infringed by the Defendants for identical/similar goods/services (including payroll, invoicing and a downloadable app) but rejected infringement and s.10(3) claims based on the TRANSFERWISE mark, and held the Claimant’s passing off claim failed while the First Defendant succeeded on a passing off counterclaim in respect of payroll and invoice services. Remaining relief and specific orders (including consequences for the 2021 WISE marks) were left for further submissions.
Jeff Gosling Limited v Autochair Limited [2025] EWHC 1687 (IPEC) 8 July 2025 This case concerned whether Jeff Gosling Limited's Apex Assist hoist infringed Autochair's patent claiming stepless adjustments. The court held that claim 1 requires both specified adjustments to be stepless, that the Apex Assist's 10mm-stepped upper extension does not literally infringe, that s.60(2) secondary infringement failed because it was obvious fitters would follow the manufacturer's instructions (so the necessary mental element was absent), and that the doctrine of equivalents claim also failed. A declaration of non-infringement was granted to JGL and Autochair's counterclaim failed.
Leeds Plywood & Doors Limited v Deanta UK Limited [2025] EWHC 1376 (IPEC) 3 June 2025 This case concerns pre-trial applications in a copyright/claim of copying dispute: the defendant sought to strike parts of the claimant’s witness evidence and the claimant sought specific disclosure of documents and native image files. The judge struck out significant portions of the claimant’s witness statement as inadmissible commentary or as unpleaded/insufficiently particularised allegations of serial copying, allowed limited parts of the evidence to remain, refused a broad late specific-disclosure request as disproportionate, but ordered disclosure of a small, specified set of native image files subject to practicability. The defendant may apply if extraction of the ordered native files would be unduly onerous.
Sonia Edwards v Boohoo.com UK Limited & Ors [2025] EWHC 805 (IPEC) 3 April 2025 This case concerned Sonia Edwards' claim that five garment designs were protected by unregistered design right and had been copied by Boohoo group companies; the court examined subsistence (originality), copying, and infringement. The judge found no subsisting right in Design 1, limited subsisting features in Designs 2–5, no persuasive finding of copying for any design, and ultimately dismissed the claim in full. Parties will be heard on consequential relief.
DW Windsor Limited v Urbis Schreder Ltd [2025] EWHC 563 (IPEC) 14 March 2025 This case concerned validity and infringement of two pathway-lighting support patents owned by DW Windsor, challenged by Urbis relying on three prior art items (Woolston, Ueda, Profila). The court construed key claim terms, identified the person skilled in the art as a lighting support/product design engineer (not a rail safety specialist), and found most asserted claims valid with admitted infringement of the valid claims; one claim (Claim 5 of ’509) was held invalid for lack of novelty over Ueda.
Babek International Limited v Iceland Foods Limited & Anor [2025] EWHC 547 (IPEC) 11 March 2025 This case concerned Iceland's summary judgment challenge that Babek's UK trade mark (a gold oval device with embossed "BABEK" and colours claimed as gold and black) was invalid for lack of clarity/precision under the Trade Marks Act 1994. The court held the mark should be assessed as a figurative (2D) mark, that the visual representation together with the verbal description was not inconsistent or ambiguous, and that the absence of precise Pantone hues did not render the registration invalid. Iceland's application for a declaration of invalidity was dismissed and the trade mark was held valid as at the date of registration.
Well Lead Medical Co, Limited v CJ Medical Limited [2025] EWHC 492 (IPEC) 7 March 2025 This was a patent infringement and validity trial about a suction evacuation device for removing stones; Well Lead sued CJ Medical over the Seplou Sheath. The court construed key terms (notably that "the same" diameters means equal within a limited manufacturing tolerance and that a "flexible, deflectable tip" may be actively or passively deflectable) and held claim 1 invalid for lack of inventive step over Wan but upheld claim 3, finding CJ Medical's size 14 product infringed claim 3 (and fell within claim 1), while other sizes did not infringe. Added‑matter and the Art.53(c)/s.4 defence failed.
Prevayl Innovations Limited v Whoop Inc [2025] EWHC 399 (IPEC) 27 February 2025 Prevayl sued Whoop for infringement of GB 2 589 947, a "smart bra" patent claiming that all of the sensor assembly is located in a side region and not in the underband. The court construed "sensor assembly" as the entirety of the sensors used (excluding the electronics module unless claimed), found claims 1–2 novel over US 845 but obvious in light of US 845 combined with PCT 853 and therefore invalid for lack of inventive step, and held that supplying Whoop 4.0 modules would have constituted indirect infringement under s.60(2) had the patent been valid.
Joshua Rinkoff v Baby Cow Productions [2025] EWHC 39 (IPEC) 17 January 2025 This case concerned Joshua Rinkoff's claim that the format of his online series Shambles was a protectable dramatic work and that Baby Cow Productions' Live at the Moth Club (LATMC) infringed it. The court held the pleaded Shambles format was not a dramatic work capable of copyright protection for lack of sufficient specificity, unity and a coherent, repeatable framework; alternatively, even if protected, LATMC did not copy any substantial part. The claim was dismissed; the judge made no definitive final finding on transfer of any New Content rights under the Wildseed agreement.
Alice Limited v Photogram Limited & Ors [2024] EWHC 3256 (IPEC) 17 December 2024 This case concerned Alice Ltd's UK trade mark ALICE (Class 9 and 37) and a counterclaim by Photogram Ltd & others for revocation for non-use. The court found that the claimant had shown genuine use of the mark in the relevant period, dismissed the revocation counterclaim, and held that the First Defendant's use of ALICE and the highly similar "ALICE CAMERA" sign infringed the registration; the other defendants were jointly liable. Remedies were reserved (defendants accepted entitlement if liability upheld).
Wise Payments Limited (formerly Transferwise Limited) v With Wise Limited & Ors [2024] EWHC 3448 (IPEC) 13 December 2024 This case concerned the defendants' application to amend their defence and counterclaim to add a non‑use revocation ground against the claimant’s registered Rectangle Mark. HHJ Hacon dismissed the application because the defendants delayed raising the point after it first became available, the amendment risked overloading a tightly scheduled three‑day trial and no exceptional circumstances or favourable cost/benefit balance justified allowing it. The defendants remain free to bring separate revocation proceedings; the May 2025 trial listing stands.
Simon Barber v Steven Francis Wakefield & Ors [2024] EWHC 3058 (IPEC) 28 November 2024 This case concerned Mr Barber's claim that Ultimate Tools and the Wakefields infringed UK Registered Design No. 4028780 by producing a prototype letter‑box tool said to embody the Accused Design. The court confined issues to exclusions (must‑fit, technical function), overall impression on the informed user, likely configuration, and joint liability, and found the Prototype, in its likely assembled configuration, did not produce a different overall impression from the Registered Design. The court held the private making/use of prototypes was not infringing but granted an injunction restraining commercial marketing of tools of the same or sufficiently similar shape to the Prototype; no damages or costs order was made.
Laura Thurgood v Danielle Laight & Anor [2024] EWHC 2947 (IPEC) 21 November 2024 This was a one‑day trial of a passing off claim by Laura Thurgood against Danielle Laight and Wash Wiggle & Wag Limited over use of the sign WASH WIGGLE & WAG for mobile dog grooming within about 30 miles of Redditch. The judge found Ms Thurgood had built goodwill in that sign by July 2018–May 2020 and that Ms Laight’s post‑resignation adoption and use of the identical sign for identical services in the same territory was a misrepresentation that diverted customers and caused damage. The court upheld liability for passing off; quantification of damages was reserved.
I-Smart Developments Limited v Currentbody.com Limited [2024] EWHC 2889 (IPEC) 15 November 2024 This case concerns related IPEC proceedings about whether the I‑Smart parties breached an NDA (clause 2.5) by applying for or enforcing design rights and whether those acts were excluded because the designs were "generally known" before the NDA expired. The I‑Smart parties sought strike‑out/summary judgment but the court found multiple contested factual and construction issues (including third‑party enforcement under the Contracts (Rights of Third Parties) Act 1999, the meaning/timing of "generally known", and factual responsibility for disclosures) that required a trial. The strike‑out and summary judgment applications were dismissed and the NDA‑related claims and counterclaims will proceed to trial. The court also noted ISD’s non‑compliance with CPR 24.5, limiting what could properly be decided on paper.
WaterRower (UK) Limited v Liking Limited (t/a Topiom) [2024] EWHC 2806 (IPEC) 11 November 2024 WaterRower sued Liking (Topiom) for copyright in a series of water-resistance rowing machines, relying on an earlier Prototype. The court held the Prototype met EU/InfoSoc originality but none of the claimed Works (including the Prototype) qualified as "works of artistic craftsmanship" under CDPA s.4(1)(c), so copyright did not subsist and WaterRower's claim was dismissed; Liking's counterclaim for a declaratory judgment was refused as unnecessary. The Prototype was treated as adequately pleaded or sufficiently ventilated in evidence.
Abdulhamid Agel J Tanash v HH Sheikh Mohammed Bin Rashid Al Maktoum [2024] EWHC 2602 (IPEC) 11 October 2024 This is a preliminary judgment in Mr Tanash’s copyright and breach of confidence claim against HH Sheikh Mohammed concerning an alleged copy of a project launched in the UAE. The court decided that Sheikh Mohammed was not validly served: the addresses used (a London hotel and the UAE Embassy) were not his usual or last known residence and no permission was obtained to serve out of the jurisdiction. The claim form was set aside because time for valid service expired, and an application for a declaration of invalid service by a state defendant does not itself constitute submission to the court’s jurisdiction under the State Immunity Act 1978.
Equisafety Limited v Woof Wear Limited [2024] EWHC 2478 (IPEC) 25 September 2024 This case concerned whether three specified 2019/2020 equestrian products (a rider's waistcoat, a hat band and a horse neck band) were protected by copyright as works of artistic craftsmanship and, if so, whether the Claimant owned that copyright. The court found that none of the pleaded works met the required originality or reflected the author's personality and therefore no copyright subsisted; alternatively, the Claimant had not proved ownership. The claim was dismissed.
AGA Rangemaster Group Limited v UK Innovations Group Limited & Anor [2024] EWHC 1727 (IPEC) 8 July 2024 AGA Rangemaster sued UK Innovations alleging trade mark and copyright infringement after UK Innovations sold 26 refurbished AGA cookers retrofitted with its "eControl System" while retaining AGA badging and using AGA branding in marketing. The court held the First Defendant infringed AGA's trade marks because exhaustion did not protect the resales given the manner of marketing which created a misleading commercial connection. The copyright claim succeeded on subsistence but was defeated by s.51 CDPA (manufacture of panels to a design of a non-artistic article), and Mr McGinley was not personally liable; the defendants' invalidity counterclaim failed.
Engineer.AI Global Limited v Appy Pie Ltd & Anor [2024] EWHC 1430 (IPEC) 19 June 2024 Engineer.AI sued Appy Pie for trade mark infringement over marks featuring "BUILDER"/"BUILDER.AI" used in relation to no-code/app-builder products; the judge held that the common element "builder" (and variants like "builder.ai") was descriptive/generic in the relevant sector and lacked inherent distinctiveness. The claimant failed to prove acquired distinctiveness or reputation in the UK, so its infringement claims based on website product names and a LinkedIn post were dismissed. The defendants’ counterclaim succeeded: the registered Marks were declared invalid for lack of distinctive character to the extent pleaded. The court also found the LinkedIn post was not targeted at the UK and did not decide further issues such as joint tortfeasorship.
Seraphine Limited v Mamarella GmbH [2024] EWHC 1507 (IPEC) 18 June 2024 Seraphine sued Mamarella in the IPEC for alleged design right infringements and Mamarella sought a stay of the English proceedings pending related proceedings in Munich. The High Court dismissed Mamarella's renewed stay application (including as to four overlapping garments), ordered Mamarella to serve a full Defence by 3 July 2024 and a Reply by 31 July 2024, and reserved any issue as to whether a Munich judgment would have res judicata effect until after such a judgment. Case management directions and a further conference were ordered once pleadings closed.
Morley’s (Fast Foods) Limited v Jeyatharini Sivakumar & Ors [2024] EWHC 1369 (IPEC) 7 June 2024 This is a trade mark dispute in which Morley’s succeeded in part, establishing that Metro’s/KK and several franchisees infringed Morley’s registered marks by using three signs (Sign 1, Sign 2, Sign 3). The court found Sign 1 likely to cause confusion with Morley’s Red and White Mark for a substantial part of the late‑night consumer class, Sign 2 likely to cause confusion with the Triple M Mark when used on menus, and Sign 3 identical to the Triple M Mark; KK was held jointly liable with franchisees and in breach of the 2018 settlement agreement. Morley’s obtained injunctive relief against defendants still using the signs and the defendants’ counterclaim was dismissed.
Well Lead Medical Co Limited v CJ Medical Limited [2024] EWHC 951 (IPEC) 26 April 2024 This is an interim injunction hearing where Well Lead Medical sought to restrain CJ Medical from supplying the Seplou Sheath in the UK for alleged infringement of EP(UK) 3 760 143 B1. The court found there was a serious issue to be tried and that Well Lead is the patent proprietor despite registration discrepancies. However the judge concluded damages would be an adequate remedy for the Claimant, so the interim injunction was refused; the trial is listed for January 2025.
Ocean On Land Technology (UK) Limited & Anor v Richard Land & Ors [2024] EWHC 396 (IPEC) 4 March 2024 This interlocutory judgment addressed contested witness evidence in Ocean On Land Technology (UK) Ltd & Anor v Land & Ors, concerning whether passages in defendants' witness statements were inadmissible without prejudice communications, expert evidence, irrelevant or prejudicial, and whether defendants could serve limited reply evidence. The judge excluded/redacted specified passages, dismissed the defendants' request to reply to paragraph 7 of Mr Cadman's statement and the claimants' conditional request to serve reply evidence, and directed amended witness statements and a draft order with costs reserved to the trial judge.
Seraphine Limited v Mamarella GmbH [2024] EWHC 425 (IPEC) 1 March 2024 This case concerned whether Seraphine could serve proceedings out of the jurisdiction against Mamarella by relying on an exclusive jurisdiction clause in Seraphine's 2021 terms. The judge found Seraphine had a good arguable case that the 2021 terms applied to Mamarella's orders and so permitted service out under CPR 6.33(2B)(b), but rejected Seraphine's attempt to rely on its 2015 and 2019 TradeWeb terms for additional claims for lack of evidential basis and refused permission to amend to plead those claims.
Mechanical-Copyright Protection Society Limited & Anor v Made Television Limited & Ors [2024] EWHC 405 (IPEC) 29 February 2024 This was an application by defendants in licensing-fee proceedings to file an Amended Defence and a Counterclaim in IPEC. The court permitted filing of parts of the Counterclaim that largely replicate matters pleaded in the Amended Defence but struck out or required deletion of unsupported allegations of dishonesty and legally incoherent allegations denying liability and seeking repayment. Directions were given for amendment, filing and costs.
Equisafety Limited v Battle, Hayward and Bower Limited & Anor [2024] EWHC 283 (IPEC) 15 February 2024 This judgment resolves awards of profits, interest and costs following liability and quantum trials in a trade mark and passing off action. The First Defendant was ordered to pay profits of £12,568 and interest of £2,140.92; detailed costs allocations were made giving the Claimant net Liability trial costs of £22,263.15 after set-off, and the First Defendant Quantum costs of £25,000 to be set off against the Claimant. The court accepted that a defendant is in principle entitled to Part 36 costs/interest where the claimant recovers less than the defendant's offer but declined to disapply the IPEC costs cap.
Wise Payments Limited v With Wise Limited & Ors [2024] EWHC 234 (IPEC) 9 February 2024 This case concerned With Wise Ltd's application to add four persons as counterclaim defendants in a trade mark and passing off dispute with Wise Payments Ltd. The court granted joinder of Kristo Käärmann and Taavet Hinrikus (and joined Wise plc by consent) but dismissed the application to join Dean Nash, finding the pleaded case and evidence against him did not disclose reasonable grounds and joinder would fail the IPEC cost‑benefit/case‑management balance.
Cloud Cycle Limited v Verifi LLC & Anor [2024] EWHC 233 (IPEC) 7 February 2024 This case concerned Cloud Cycle Limited's claim for summary judgment of non‑infringement of EP (UK) 1 720 689 and Verifi LLC (with exclusive licensee GCP) seeking an interim injunction for alleged infringement. The judge dismissed CCL's summary judgment application because disputed technical facts, claim construction and equivalence issues required expert evidence, and dismissed the defendants' interim injunction application after finding the balance of irreparable prejudice favoured refusing relief.
Thatchers Cider Company Limited v Aldi Stores Limited [2024] EWHC 88 (IPEC) 24 January 2024 Thatchers sued Aldi for trade mark infringement (s.10(2) and s.10(3)) and passing off over Aldi's Taurus cloudy lemon cider can design. The court treated the Sign as the overall appearance of a single Aldi can, found Thatchers' mark had UK reputation and enhanced distinctiveness, but only low visual similarity between sign and mark. There was a cognitive link but no likelihood of confusion, no unfair advantage or detriment under s.10(3), and no passing off; all claims were dismissed.
PSN Recruitments Limited v Graeme Ludley & Anor [2023] EWHC 3153 (IPEC) 8 December 2023 This case concerns PSN Recruitments Ltd’s claims that former employee Graeme Ludley and colleague misused its client database and that a 27 June 2021 marketing email falsely presenting the defendants’ new business as a rebrand of PSN caused confusion and diverted business. The court found the email caused confusion and diversion, constituting passing off, and assessed damages at £59,579.92. It also held the Claimant’s client list was confidential and that Mr Ludley breached contractual and equitable duties of confidence.
Photobooth Props Limited & Anor v NEPBH Ltd & Ors [2023] EWHC 3478 (IPEC) 21 November 2023 This case concerned a 2019 sale of a photobooth printing business which the Claimants said transferred the whole business and its intellectual property to Lily's Prints for £45,830.11. The Defendants largely failed to participate, and the Court proceeded in their absence, finding that an oral contract existed transferring specified assets and IP, that Mr Michael Quinn made representations which became contractual terms (including a non‑competition term), and that the Defendants infringed copyright in works transferred to the Second Claimant. Remedies and quantum were reserved for a later enquiry; the Claimants were awarded costs and permission to apply to disapply the IPEC costs cap.
EnOcean GmbH v Far Eastern Manufacturing Limited & Anor [2023] EWHC 2615 (IPEC) 24 October 2023 EnOcean sued for infringement of EP (UK) 1 611 663 B3; Defendants pleaded invalidity over GB Harding and EP Goiran. The court construed "an autonomous-power switch" as a distinct switching component and "a spring element" as a physical/mechanical spring, found Claims 1 and 3 obvious over Harding, and revoked the patent. The court also found Claim 3 not obvious over Goiran.
Prysmian Cables & Systems Limited v M/S Apple International & Ors [2023] EWHC 2176 (IPEC) 7 September 2023 This case concerned whether Prysmian succeeded to goodwill in the historical BICC name and whether various defendants’ use of "BICC Components" or the registered BICON mark infringed or was invalid. The court primarily held that goodwill in the BICC name did not pass to Pirelli/Prysmian, so Prysmian lacked the necessary goodwill for a passing off claim, though it said that if goodwill had existed the defendants’ use would amount to misrepresentation and likely cause damage. The court also found no likelihood of confusion between BICON and BICC Components and dismissed claims of trade mark infringement, invalidity and bad faith in registering BICC Components.
Acedes Holdings, LLC & Anor v Clive Sutton Limited & Anor [2023] EWHC 2005 (IPEC) 7 August 2023 This dispute concerned rights to use the sign "Cobra" on cars, with defendants seeking invalidation of the claimants' AC COBRA mark relying on two earlier Ford COBRA registrations and also seeking revocation for non-use. The court held the defendants lacked standing because CSL was never an effective licence-holder of Ford's marks, and also found Ford's earlier marks had been genuinely used and that s.5(2) and s.5(3) grounds failed; both invalidity and revocation applications were dismissed and the claimants' infringement claim had been abandoned.
Crafts Group LLC v M/S Indeutsch International & Anor [2023] EWHC 1914 (IPEC) 26 July 2023 This supplemental judgment explains and expands the Main Judgment concerning the court's jurisdiction under the Trade Mark Regulation after UK exit and the effect of article 132(1) EUTMR. The court held it retained jurisdiction as an EU trade mark court for proceedings begun before IP Completion Day, and that article 132(1) required a stay of the claimant's threats claim (so far as it related to the EU Chevron mark) and related revocation/invalidity proceedings while an EUIPO cancellation was pending. The judge refused permission to appeal and provided expanded reasons and case-management grounds for the stays.
Waterrower (UK) Limited v Liking Limited (t/a Topiom) [2024] EWHC 3049 (IPEC) 24 July 2023 This case concerns the Defendant's late application for relief from sanctions under CPR 3.9 in relation to alleged procedural defects in a Chinese-speaking witness's statement (proxy/electronic signing, translation and late re-service). The court found the procedural breaches but held they were minor and did not cause real prejudice, granted relief to the limited extent necessary, and permitted the Defendant to rely on the witness statement at trial provided the witness confirms his evidence on oath and re-signs the statement when giving evidence.
Equisafety Limited v Battle, Hayward and Bower Limited & Anor [2023] EWHC 1821 (IPEC) 21 July 2023 This is an account of profits following findings that Battle infringed and passed off Equisafety's MERCURY trade mark; the judge accepted Battle's disclosed gross profit for the packaging period (£24,356), excluded 500 repackaged phone holders from the account, allowed deduction of general overheads at 14%, and attributed 60% of post-overhead profit to the infringement, yielding a disgorgeable sum of £12,568 plus interest to be calculated as directed. Parties were ordered to agree the final sums and form of order.
JBC Distributors Inc & Anor v Peter Mudahy trading as Pak Cosmetic Centre & Anor [2023] EWHC 1480 (IPEC) 23 June 2023 JBC sued for trade mark infringement and passing off over 4fl oz "Sunny Isle" Jamaican Black Castor Oil bottles; the Defendants say the bottles were purchased from JBC or its authorised suppliers and dispute genuineness. The court dismissed JBC's application for summary judgment/strike out of the Defence because there is a realistic factual dispute requiring fuller investigation and trial. The Defendants' counterclaim for unjustified threats was permitted to stand, but counterclaims for lost profit on stock and sums for stock returned by Sainsbury's were struck out for lack of particularisation and legal basis.
Crafts Group LLC v M/S InDeutsch International & Anor [2023] EWHC 1455 (IPEC) 16 June 2023 This case concerned whether UK IPEC proceedings should be stayed because the validity of an EU trade mark (the EU Chevron) was already challenged before the EUIPO, in the post‑Brexit context. The court held that Article 67(1)(b) of the Withdrawal Agreement preserves Chapter X of the EU Trade Mark Regulation for proceedings begun before the end of the transition period, so Article 132(1) applied; the court stayed all claims relating to the EU Chevron mark and, in its discretion, stayed the remaining claims pending resolution of the EUIPO cancellation.
KF Global Brands Limited v Lead Wear Limited & Ors [2023] EWHC 1303 (IPEC) 2 June 2023 KF Global alleged UK unregistered design right in BKS-001 cargo trousers and claimed defendants made and sold infringing trousers. The court found BKS-001 was a copy of an earlier Aldi design, with only a minor change (pen loops to a pen pocket) that did not produce an original design right, and dismissed the action for lack of subsistence. No defendants’ products were held infringing and a late amendment to plead a second version of the design was refused.
Hayman-Joyce Property Limited v Hayman-Joyce Broadway LLP & Anor [2023] EWHC 1028 (IPEC) 2 May 2023 This was a liability trial between two Cotswolds estate agents over use of the name "Hayman‑Joyce", raising claims of passing off, trade mark infringement and copyright. The court found the 1999 Partnership Agreement meant the partnership owned the goodwill which passed to the First Defendant for the Broadway business; the Claimant retained goodwill centred on Moreton and a surrounding area. The First Defendant’s local use was largely honest concurrent use, but certain acts (using Claimant testimonials as its own, distributing flyers in the Moreton Patch, and a website claim of a 20‑mile Broadway radius encompassing the Moreton Patch) were misrepresentations giving rise to passing off; the Claimant’s national HAYMAN‑JOYCE trade mark was invalidated to the extent of the specification due to pre‑existing local goodwill, and the copyright claim failed.
Photobooth Props Limited & Anor. v NEPBH Ltd & Ors. [2023] EWHC 755 (IPEC) 25 April 2023 This was an application by the Claimants for an "unless" order striking out the Defendants' defences for failure to pay an interim costs order made at a February 2023 CMC. Deputy Judge Treacy refused the application, finding the IPEC context, Article 6 considerations, the possibility of alternative enforcement and the unclear nature of the Defendants' attempts to seek instalments weighed against imposing a debarring sanction. The interim costs order remains enforceable by ordinary means but the strike-out sanction was not imposed on these facts.
Yours Naturally Naturally Yours Limited v Kate McIver Skin Limited & Anor. [2023] EWHC 890 (IPEC) 20 April 2023 This judgment concerns a dispute over an anti-age serum called "Elixir" between Yours Naturally Naturally Yours Limited (YNNY) and Kate McIver Skin Ltd/the late Kate McIver's estate. The court found that the defendants misrepresented that Ms McIver created the Elixir, establishing passing off and damage to YNNY's goodwill, dismissed claims in malicious falsehood and unlawful means for lack of proven pecuniary loss or intent, and found copyright infringement for defendants' use of YNNY's marketing text after a bare licence ended on 30 November 2018.
Fay Evans v John Lewis PLC & Anor [2023] EWHC 766 (IPEC) 3 April 2023 This was a claim that John Lewis's 2019 Christmas Advert and related book Excitable Edgar infringed copyright in the Claimant's self-published book Fred the Fire-Sneezing Dragon (FFD). The court found FFD contains original literary and artistic works vested in the Claimant but concluded there was no access by the defendants' creative teams and that many similarities were already present in a 2016 agency Outline predating FFD. The claim was dismissed; the defendants' counterclaim succeeded and the court granted a declaration of non-infringement and a publicity order.
Industrial Cleaning Equipment (Southampton) Limited v Intelligent Cleaning Equipment Holdings Co, Ltd & Ors [2023] EWHC 411 (IPEC) 27 February 2023 This was a two-day liability-only trial about trade mark invalidity, infringement and passing off between Industrial Cleaning Equipment (Southampton) Ltd ("C") and members of the ICE Group (D1–D3). The court found D1's 2015 and 2020 ICE trade marks invalid (under ss47/5(2)/5(3)/5(4)(a) and s3(6) as to 2020), held that C had not acquiesced under s48 TMA, and found Killis liable for infringement with D1 jointly liable as a joint tortfeasor (claims against D3 dismissed). Remedies and quantum were reserved.
Marks and Spencer PLC v Aldi Stores Limited [2023] EWHC 178 (IPEC) 31 January 2023 This case concerned whether Aldi's "light-up" gin bottles infringed Marks & Spencer's registered UK designs for decorated gin bottles with integrated base lights. The court held that four of M&S's registrations (UK 78, 80, 82, 84) were infringed because Aldi's bottles did not produce a different overall impression on the informed user. The judge interpreted the photographic registrations objectively (treating two darker images as depicting an integrated light), applied a spirits/liqueurs sector informed-user standard, and rejected Aldi's argument that certain features were excluded by the technical-function rule.
Sergio Mendes Costa v Dissociadid Limited & Anor. [2023] EWHC 49 (IPEC) 16 January 2023 This case concerns Mr Sergio Mendes Costa's application for a wasted costs order against his former counsel and solicitors after the IPEC awarded the defendants their costs for work done after 18 October 2022 (assessed at £10,000) arising from a late jurisdictional argument advanced by Mr Costa. The court held that Mr Costa himself had acted unreasonably in advancing the late jurisdictional point, justifying the costs order against him, but that his former counsel and solicitors had not acted improperly, unreasonably in the stricter sense, or negligently. Mr Costa's applications for a stay and for wasted costs against his lawyers were therefore dismissed and the costs order against Mr Costa remains in force.
PIXDENE LIMITED v PADDINGTON AND COMPANY LIMITED [2022] EWHC 2765 (IPEC) 2 November 2022 This case concerns the construction and limited implication of clause 5 (the audit clause) of a 2013 RDA between Pixdene and Paddington, arising from a dispute over the scope and operation of the clause when Pixdene appointed a third-party auditor. The court held clause 5 confers inspection rights only on an independent third-party auditor (not Pixdene), permits one audit per two-year period limited to periods not already audited, allows the auditor to take and retain copies reasonably necessary to prepare its report (at Pixdene's cost), restricts disclosure to Pixdene to what is necessary to report compliance and any underpayment, and permits redaction only of legally privileged material. The judge proposed declaratory relief consistent with those points and to hear submissions on precise wording.
WaterRower (UK) Limited v Liking Limited (T/A Topiom) [2022] EWHC 2084 (IPEC) 5 August 2022 This was a strike-out/summary-judgment application by the defendant to dismiss the claimant’s claim that the WaterRower rowing machine is a "work of artistic craftsmanship" under s.4(1) CDPA. The court refused the applications, holding that the claimant has real prospects of proving the WaterRower is such a work and that material factual issues (including creator intention and recognition by design institutions) remain for trial. No final decision was reached on whether the WaterRower is a work of artistic craftsmanship.
Sergio Mendes Costa v DissociaDID Ltd & Anor. [2022] EWHC 1934 (IPEC) 22 July 2022 This case concerned ownership and licences in YouTube videos created by Mr Costa and DissociaDID (Ms Wilkinson), whether a contract was formed on 16 June 2020, and whether Mr Costa unlawfully caused loss by submitting takedown requests. The court held the "Disclaimer" was authored solely by Ms Wilkinson, no binding contract arose on 16 June 2020, the parties had a revocable bare licence terminated by notice (fixed as eight months ending 23 July 2021), Mr Costa caused unlawful takedowns after 13 March 2021 and the defendants infringed the Joint Works after 23 July 2021. Quantification of loss was adjourned.
ALAN WILLIAMS ENTERTAINMENTS LIMITED & Anor v MICK CLARKE & Ors [2022] EWHC 1798 (IPEC) 13 July 2022 This case concerned ownership and misuse of the band name "The Rubettes" after a 2018 dispute; the court found that Alan Williams Entertainments Ltd (and Mr Williams) owned the relevant goodwill from at least 1983, that the defendants’ use of "the Rubettes" from autumn 2018 constituted passing off and caused damage, and that Mr Clarke’s UK trade mark application was made in bad faith and is therefore invalid. Remedies and whether the defendants’ conduct was flagrant remained to be decided.
Photobooth Props Limited & Anor. v Nepbh Limited & Ors. [2022] EWHC 1634 (IPEC) 27 June 2022 This IPEC judgment concerned whether costs of three interim applications (claimants' summary judgment and defendants' strike out and security for costs) and related CMC costs should be summarily assessed and payable immediately or reserved to trial. The court held that CPR 63.26(1) creates a strong presumption that costs of interim applications in IPEC proceedings are reserved to the conclusion of the trial, displacing the usual PD44 "pay as you go" presumption, and refused the claimants' requests for immediate summary assessment, disapplication of IPEC caps, or uplift for unreasonable conduct. The CMC costs were ordered to be costs in the case.
Vernacare Limited v Moulded Fibre Products Limited [2022] EWHC 2197 (IPEC) 15 June 2022 Vernacare sued Moulded Fibre Products (MFP) for infringement of two patents covering single-use moulded paper pulp washbowls: GB 2446793 (shape/configuration) and GB 2439947 (composition). The court held the 793 Patent valid but not infringed because MFP's product has a continuous ridge rather than inward recesses required by the claim construction, while claims 1, 3, 9 and 12 of the 947 Patent were held valid and infringed by MFP. Obviousness attacks on the 947 Patent over Shimooka and Sugimoto were rejected. Secondary evidence of long-felt want and commercial success did not materially affect the obviousness analysis.
Shazam Production Ltd v Only Fools The Dining Experience Ltd & Ors. [2022] EWHC 1379 (IPEC) 8 June 2022 Shazam Production Ltd sued Only Fools The Dining Experience Ltd and others for copying elements of the BBC sitcom Only Fools and Horses in an interactive dining show. The court held that individual OFAH episode scripts are dramatic works, that the character Del Boy is a protectable literary work, and that the defendants copied a substantial part of OFAH into the September 2019 OFDE script, infringing copyright; Shazam also succeeded in passing off. The defendants' s.30A parody/pastiche/fair dealing defence failed.
Fit Kitchen Limited & Anor. v Scratch Meals Limited & Ors. [2022] EWHC 1525 (IPEC) 26 May 2022 This IPEC judgment records refusals of two claimant applications: Fit Kitchen's request to abandon an account of profits and re-elect for an inquiry as to damages, and its renewed application to strike out the defendants' pleaded allegation of unclean hands. The judge held that an election between alternative remedies is normally final and declined to allow re‑election absent unfairness such as concealment or new evidence, and he refused to strike out the unclean hands defence, leaving it available at quantum. Prior transcript/date errors in an earlier judgment were corrected.
Wirex Limited v Cryptocarbon Global Limited & Ors. [2022] EWHC 1161 (IPEC) 16 May 2022 This judgment disposes of applications following a finding of liability for infringement of the CRYPTOBACK trade mark and Wirex's election for an inquiry as to damages. The court refused permission to appeal to the Supreme Court and refused a stay pending IPO proceedings, declined to allow late acceptance/enforcement of a Part 36 offer, refused relief from sanctions for breach of an unless order, found no basis for an award of moral prejudice, and awarded Wirex capped inquiry costs (£21,900) plus a 25% uplift, court fees (£825) and additional adjournment costs (£3,000).
JO RICHARDS & ANOR. v LASER SAILBOATS LIMITED & ORS. [2022] EWHC 1320 (IPEC) 6 May 2022 The claimants sought compliance with a 4 April 2022 IPEC order requiring the first and second defendants to state the dates on which certain assignment documents were signed. The judge found both defendants in breach for failing to state those dates or to seek timely variation/set-aside, rejected their post hoc contention that the dates could await routine disclosure, and invited submissions on an appropriate remedial order. No final remedial order was recorded in the notes provided.
Daemonlinks Limited v Lucy Marion Brown [2022] EWHC 1154 (IPEC) 4 May 2022 Daemonlinks Limited sought summary judgment declaring it owned copyright in two films created while Lucy Brown was its media manager and alleging infringement. HHJ Hacon found Brown was employed by Daemonlinks and that the films were made in the course of her employment, but refused summary judgment because factual disputes remained about (a) Brown's late assertion of a prior verbal assurance that she would own the work and (b) possible creative involvement by a third party, Andrew Wildey, whose purported rights were later assigned to Brown. The court allowed Brown to amend her defence to plead Wildey's role and dismissed the summary judgment application; further hearing was directed.
Match Group, LLC & Ors v Muzmatch Limited & Anor [2022] EWHC 1023 (IPEC) 4 May 2022 This judgment concerned breaches of an embargo on a draft judgment served under PD40E in Match Group v Muzmatch. The court found that defendants' solicitors had acted appropriately and that limited internal disclosures to employees were permissible, but that supplying an embargoed press release to journalists was a serious breach. The judge accepted the employee's apology, declined to commence contempt proceedings, and reserved decisions on costs and any publicity order for the form of order hearing.
Zoe Evans & Ors. v Anytime Clubs UK Limited & Anor. [2022] EWHC 1142 (IPEC) 29 April 2022 This is a trade mark and passing off claim by the owners of the "Xtreme Gyms" mark arising from a Google advertisement for a Stratford gym. The claim against a local manager, Ms Osbourne, was withdrawn by consent and the franchisee Tribe was substituted as defendant; the claim against master franchisor Anytime UK was struck out for want of any arguable basis that it controlled or approved the advertisement or that Tribe acted as Anytime UK's agent. Costs of £7,000 were awarded to Anytime UK.
Ian Thomas v Luv One All Promotions Limited & Anor. [2022] EWHC 964 (IPEC) 27 April 2022 This is a passing off and trade mark dispute between half‑brothers over use of the band name "Luv Injection" after a 2016 split of the original group (Luv Injection 1). The court held that goodwill in the name at the date of the split was a partnership asset of Luv Injection 1, not owned solely by Ian, and dismissed Ian's claims in passing off and trade mark invalidation. Winston's counterclaim to wind up Luv Injection 1 was adjourned for further directions and notification/joining of interested third parties. No transfer of partnership goodwill to Ian (or his successor group) was found by mere continued performance or appropriation.
LUEN FAT METAL AND PLASTIC MANUFACTORY CO LTD v FUNKO UK LTD [2022] EWHC 951 (IPEC) 27 April 2022 This was a liability-only trade mark infringement case by Luen Fat against Funko over use of "Funtime" on Five Nights at Freddy's character merchandise. The court confined the claimant's proved use to "toys, games and playthings for babies and pre-school children", found the marks had low inherent distinctiveness with only limited enhanced distinctiveness for the UK mark, and dismissed all infringement claims under ss.10(1), 10(2) and 10(3) on the facts. The judge held the defendant's compound names were not identical to the marks, there was no likelihood of confusion in context, and no link or proven detriment/unfair advantage from the mark's limited reputation.
MATCH GROUP, LLC v MUZMATCH LIMITED [2022] EWHC 941 (IPEC) 20 April 2022 Match Group sued Muzmatch for trade mark infringement and passing off over Muzmatch's use of "match" in its name and SEO. The court found the Match marks had substantial reputation and that Muzmatch's use was sufficiently similar to give rise to a likelihood of confusion (s.10(2)), and in any event created a link and took unfair advantage of Match's reputation (s.10(3)); the passing off claim also succeeded. Muzmatch's defences of honest concurrent use and due cause failed.
Fairfax & Favor Limited & Ors. v The House Bruar Limited & Ors. [2022] EWHC 689 (IPEC) 25 March 2022 This case concerned whether three boot designs sold by The House of Bruar infringed Fairfax & Favor’s registered Community design (RCD) and UK unregistered design rights in the "Heeled Regina" knee boot. The court found the Claimant’s full Heeled Regina design to be original and subsisting as an unregistered design and held the RCD valid; Bruar deliberately copied F&F. Versions 1 and 2 were found to infringe both the unregistered design and the RCD; Version 3 was copied but did not infringe either the unregistered design or the RCD because it produced a different overall impression.
Bei Yu Industrial Co v Nuby (UK) LLP & Anor [2022] EWHC 652 (IPEC) 22 March 2022 Bei Yu sued Nuby for infringement of a registered design in respect of a baby bath; Nuby conceded liability and the court held a hearing limited to an account of profits. The judge found Nuby must account for profits but is entitled, on the balance of probabilities, to deduct adjusted direct costs and a proportion of general overheads that would have been incurred selling non-infringing alternatives, using broad-brush apportionment methods (mostly sales-revenue based with a few exceptions). The court disallowed certain overhead items (eg consultancy costs and a bad-debt write-off) and awarded interest at Bank of England base rate.
Tehrani v Bonaduz AG & Ors. [2022] EWHC 1031 (IPEC) 18 February 2022 This was an application by Professor Tehrani to amend claim 1 of her patent after a trial that had found the patent invalid for lack of novelty over Waisel. The proposed amendment (changing “a next breath” to “the next breath” and consequential edits) was held to be an impermissible post‑trial type (c) amendment that would create a new claim and likely provoke a further trial. The application was dismissed as an abuse of process under Henderson v Henderson and inconsistent with the CPR overriding objective; the applicant’s reliance on drafting advice and her current unrepresented status did not excuse the delay.
Gnat and Company Limited & Anor. v West Lake East Limited & Anor. [2022] EWHC 319 (IPEC) 16 February 2022 This case concerns a dispute over the registered trade mark "China Tang" for restaurant-type services and a local takeaway trading under the same name. The court rejected most revocation points but allowed deletion of "self-service restaurants" only; it found infringement under s.10(2) (likelihood of confusion) but not under s.10(3) (no UK reputation, no unfair advantage or detriment), dismissed passing off, and held the defendant director jointly liable with his company.
Nah Holdings Limited & Anor. v KPF Enterprises Limited & Anor. [2022] EWHC 323 (IPEC) 16 February 2022 This is a trade mark dispute where Nah Holdings sues KPF Enterprises/KBF and Mr Fisher for infringement of SLIM SAUCES/SLIM SAUCE marks. The defendants filed a late defence and counterclaim challenging distinctiveness, descriptiveness and non‑use; the court granted relief for lateness, concluded the claimants' documentary evidence prima facie shows genuine use, and saw that the defendants' mark is almost identical to the registered marks but declined to grant summary judgment on the whole claim. The judge invited further submissions on a possible conditional order rather than deciding infringement finally.
CAYMAN MUSIC LIMITED v BLUE MOUNTAIN MUSIC LIMITED & ORS [2022] EWHC 1469 (IPEC) 10 February 2022 Cayman sought declarations that it owns copyright in 83 Bob Marley compositions by virtue of a chain of written assignments; defendants pleaded that several assignments are forgeries and counterclaimed ownership of 77 works. The court refused to strike out the defendants’ forgery allegations as sufficiently particular and arguable. The court held the proceedings unsuitable for IPEC given the number and complexity of disputed factual and credibility issues and transferred the claim and counterclaim to the general Chancery list.
Ahmet Erol v Posh Fashion Limited [2022] EWHC 195 (IPEC) 8 February 2022 This was a design-right infringement claim by Mr Erol in respect of two registered garment designs (a hoody and a T-shirt) featuring a "London+Flag+England" legend. The court found the garments themselves unexceptional, accepted a 1999 Urban Attitude brochure as prior art showing the same legend, and held both registrations invalid for lack of individual character; the infringement claim therefore failed. A late application to rely on a UKIPO decision was refused.
Kieran Hebden v Domino Recording Company Limited [2022] EWHC 74 (IPEC) 19 January 2022 This was an amendment and summary-judgment application arising from Hebden's claim that Domino withdrew his sound recordings ("Masters") and thereby breached continuing release/exploitation obligations and an implied duty of good faith under their 2001 recording agreement. The court granted permission to amend to plead express or implied continuing exploitation obligations and an implied good-faith duty (finding those amendments had sufficient prospects to go to trial) but refused permission to add a restraint-of-trade/copyright-infringement alternative pleading as lacking real prospects and disproportionate. Because amendments were permitted, Domino's summary-judgment application was not decided at that hearing.
GREENCASTLE MM LLP v ALEXANDER PAYNE [2022] EWHC 438 (IPEC) 13 January 2022 This case concerned two defendant applications challenging the claimant’s witness statements (by the claimant’s CEO, Mr Quinlan) for widespread non-compliance with Practice Direction 57AC, alleging speculation, opinion, commentary on documents and argumentative material beyond the witness’s knowledge. The court found the objections broadly well‑founded, withdrew permission for the existing statements and allowed the claimant to serve a fully compliant replacement statement by 19 January 2022 rather than striking the evidence out or requiring oral evidence in chief. The replacement statement must be confined to permissible content and will be open to scrutiny by the defendants.
Fleur Tehrani v Hamilton Bonaduz AG & Ors. [2021] EWHC 3457 (IPEC) 22 December 2021 This case concerned validity and infringement of a ventilator control patent (priority 21 Nov 2003) asserting automated determination of FiO and PEEP for "a next breath" to keep PEEP/FiO within a prescribed range (claim 1) and an extended claim 45 using CO2 and lung mechanics. The judge found the patent invalid overall: claim 1 would have been infringed by the defendant's Intellivent‑ASV but lacked novelty over Waisel, and claim 45 was not infringed and was obvious over Waisel. Hamilton's revocation counterclaim succeeded.
Equisafety Limited v Battle, Hayward and Bower, Limited & Anor. [2021] EWHC 3296 (IPEC) 8 December 2021 This dispute concerned Equisafety’s "Mercury" trade mark for high-visibility equestrian products and Battle’s sale of items labelled "HyVIZ Silva Mercury Reflective" (HVSMR). The court rejected invalidity and bad-faith challenges to the registered mark, found Battle’s signs not identical but sufficiently similar to cause a likelihood of confusion and to take unfair advantage of the mark’s reputation, and held Battle liable for trade mark infringement (s.10(2) and s.10(3)) and for passing off. Claims against Battle’s managing director, Mr Dewey, for joint liability were dismissed.
Nicholas Martin & Anor. v Julia Kogan [2021] EWHC 1242 (IPEC) 19 May 2021 This case concerned the precise public credit to be given on IMDb after the court found Julia Kogan was an author of about 20% of the Florence Foster Jenkins screenplay and ordered the Film Companies to arrange an appropriate credit. The court considered WGA/WGGB guidelines and IMDb practice and concluded the existing IMDb "Written by" credit (Nicholas Martin; Julia Kogan (originally uncredited)) should remain. The Film Companies were found to have complied and no change was ordered.
Claydon Yield-O-Meter Ltd v Mzuri Ltd & Ors (Rev 1) [2021] EWHC 1322 (IPEC) 17 May 2021 The claimant’s patent infringement claim was dismissed following a remote hand-down of judgment on 22 April 2021. The court held that a remote hand-down under the Covid-19 Protocol does constitute the "hearing at which the decision to be appealed was made" for CPR 52.3(2)(a), but there was no automatic or implied adjournment to permit a retrospective permission application. The court therefore had no jurisdiction to grant permission and the 21‑day period for filing an appellant’s notice had expired; any extension must be sought from the Court of Appeal.
FBT Productions, LLC v Let Them Eat Vinyl Distribution Ltd [2021] EWHC 1316 (IPEC) 17 May 2021 FBT Productions sued Let Them Eat Vinyl Distribution for unpaid sums; the court had to decide whether and how much interest to award on damages. The court held interest should be awarded, refused to apply a US borrowing rate despite the claimant being US, and — taking a pragmatic middle course on commencement date and rate — awarded £946.46. The claimant’s conduct did not justify withholding interest.
Claydon Yield-O-Meter v Mzuri Ltd & Anor [2021] EWHC 1007 (IPEC) 22 April 2021 This case concerned Claydon’s claims that Mzuri’s Pro‑Til drill infringed UK Patents 2,400,296 and 2,051,576; Mzuri counterclaimed for revocation. The court found claim 16 of the 296 Patent not novel because a Claydon prototype was publicly used in August 2002, and found claim 1 of the 576 Patent obvious (lacking inventive step) over Claydon’s own PCT application; accordingly the asserted claims were revoked, and the Pro‑Til would only have infringed the 296 Patent if it had been valid. The court also construed key terms: "frame" can include sub‑frames and pivoting components, "alignment" is purposively read as alignment in use (to leave undisturbed strips), and "governed by" denotes a controlling influence.
FBT Productions, LLC v Let Them Eat Vinyl Distribution Ltd [2021] EWHC 932 (IPEC) 20 April 2021 FBT sued Let Them Eat Vinyl (LTEV) for copyright infringement for making/supplying vinyl copies of Eminem's Infinite. The court found LTEV had infringed but rejected FBT's claims that the infringement caused abandonment of a planned vinyl re-issue and that FBT would have granted LTEV a licence; instead damages were awarded on a notional licence of £2.50 per disc for 2,981 copies, totaling £7,452.50 plus interest.
Kwikbolt Ltd v Airbus Operations Ltd [2021] EWHC 732 (IPEC) 25 March 2021 Kwikbolt's patent for a "removable blind fastener" was upheld as valid but was found not to be infringed by Airbus's Centrix Free Spin Fasteners, either literally or under the doctrine of equivalents. The court construed key claim terms (e.g. "removable" as suitable for unit removal without significant damage) and identified the inventive concept as a blind removable fastener that sits substantially flush with the upper workpiece in clamping mode. Airbus was confined to the single version of the E‑Nut pleaded in its amended grounds and its additional prior‑art allegations and evidence did not establish lack of novelty or obviousness.
Wirex Ltd v Cryptocarbon Global Ltd & Ors [2021] EWHC 617 (IPEC) 16 March 2021 Wirex's registered UK trade mark CRYPTOBACK was challenged by the defendants who alleged prior goodwill and bad faith; the court found the defendants' evidence of prior use unreliable and dismissed the invalidity counterclaim. The trade mark was held valid and infringed by the corporate defendants, and Mr Manuel was held personally liable as a joint tortfeasor for infringements by Global and Cryptocarbon UK but not for those by Bee-One.
Penhallurick v MD5 Ltd [2021] EWHC 293 (IPEC) 15 February 2021 This case concerned ownership of eight Virtual Forensic Computing (VFC) works created by Mr Penhallurick while employed by MD5 and the effect of a November 2008 written agreement (and later agreements) said to assign rights to MD5. The court found the Third to Eighth Works (the VFC versions, GUI and user guide) were created in the course of employment and that MD5 was first owner; alternatively the November 2008 Agreement would have assigned past and future copyright in the VFC software to MD5. Mr Penhallurick’s claim was dismissed and MD5’s counterclaim largely failed except for a declaration of ownership of the Third–Eighth Works. No finding of sabotage or actionable breach by Mr Penhallurick was established on admissible evidence.
Software Solutions Ltd & Ors v 365 Health and Wellbeing Ltd & Anor [2021] EWHC 237 (IPEC) 9 February 2021 The claim concerned whether an XML Schema belonged to the IDEA software framework, who owned rights in it after a 2002 transaction/licence, whether a database right subsisted, and factual matters for additional damages. The court found the XML Schema was integral to the IDEA System, that the First Claimant owns the relevant rights, that the Defendants infringed copyright in BTB v5 and acted flagrantly/recklessly causing benefit and distress, and that no database (sui generis) right subsisted in the XML Schema. Remaining issues relate to remedies and assessment of additional damages.
Cormeton Fire Protection Ltd v Cormeton Electronics Ltd & Anor [2021] EWHC 11 (IPEC) 18 January 2021 This case concerned rights to the name CORMETON after a 2003 business separation and the Claimant’s 2016 registration of the CORMETON trade mark. The court found there was an oral 2003 licence allowing the First Defendant to trade as CORMETON ELECTRONICS and keep the domain for electrical safety equipment, dismissed the Claimant’s copyright claim, rejected the Defendants’ invalidity and revocation challenges, and held that uses outside the 2003 licence (use of CORMETON alone and use in mechanical fire protection) infringed the registered mark and amounted to passing off. Defences of honest concurrent use, estoppel and acquiescence did not succeed.
GRUNDFOS HOLDING A/S v ABCOT UK LIMITED & Anor [2021] EWHC 3779 (IPEC) 18 January 2021 Grundfos sought summary judgment that Abcot infringed its trade marks and/or was liable for passing off by offering eight test‑purchased circulator pumps; Grundfos relied on statutory/regulatory non‑compliance and alterations to the goods to show legitimate reasons under section 12(2) to oppose further commercialisation. The judge found credible evidence of concealed/removed identifiers, missing instructions/declarations, physical alterations and regulatory non‑compliance (including energy‑efficiency issues) for each of the eight pumps and that Abcot had not credibly rebutted that evidence. The judge held that legitimate reasons under section 12(2) existed in respect of all eight test purchases and granted relief limited to those products. The decision did not determine other alleged infringing pumps.
Rothy's Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC) 16 December 2020 This case concerned Rothy's claim that Giesswein's "Pointy Flat" infringed Rothy's registered Community design (RCD) and unregistered Community design (UCD) for a knitted Pointed Loafer. The court found the RCD and UCD valid over earlier designs Allegra K and Bonnibel, held the Pointy Flat infringed the RCD (same overall impression) but did not infringe the UCD because copying was not proved. The defendant's invalidity counterclaim failed.
The Janger Ltd v Tesco Plc [2020] EWHC 3450 (IPEC) 16 December 2020 Janger sued Tesco for infringement of GB 2 552 562 B (claims 1, 4 and 5) relating to a garment hanger. The court found claim 1 anticipated by the prior Jones design and claims 4 and 5 obvious over Jones, and also held that a two-image PDF shown to M&S on 1 October 2013 (the Globalhanger disclosure) was shown under circumstances importing confidence. The judge therefore concluded the challenged claims were invalid on those grounds.
Lifestyle Equities CV & Anor v Hornby Street (MCR) Ltd & Ors [2020] EWHC 3320 (IPEC) 30 November 2020 This case concerned whether claimants who were non‑signatory assignees of trade marks were bound by a 1997 worldwide coexistence agreement containing an arbitration clause chosen to be governed by Californian law. The court held that by their conduct the claimants became parties to the 1997 Agreement (and/or were bound as intended third‑party beneficiaries and by equitable estoppel) and that the arbitration clause, governed by the law chosen in the agreement (California law), was enforceable against them. The High Court granted a stay of the proceedings under s.9 of the Arbitration Act 1996, extended to all defendants, pending arbitration.
Freddy SPA v Hugz Clothing Ltd & Ors [2020] EWHC 3032 (IPEC) 19 November 2020 Freddy SPA sued Hugz Clothing and others alleging patent infringement, unregistered design right infringement, passing off and breach of a 2019 settlement over WR.UP jeans; the defendants did not engage at trial. The court held claim 1 of EP(UK) 2 666 377 B1 valid and infringed by the Second HUGZ Jeans; it found unregistered design rights subsist in the RSP, Inner Parts and JOTO designs (but not the When Worn design) and that those designs were infringed. The court also found the claimant owned goodwill in the "Freddy Get‑Up", that the Second HUGZ Jeans misrepresented a trading connection (including post‑sale confusion) causing damage, and that the defendants breached the settlement; the defendants' counterclaim was struck out.
Communisis Plc v The Tall Group of Companies Ltd & Ors [2020] EWHC 3089 (IPEC) 17 November 2020 This case concerned UK Patent GB2512450B claiming generation of a cheque security code (UCN) by converting personalisation data to a higher base and printing it on cheques. The defendants admitted the acts but denied infringement and challenged validity; the judge construed the claims narrowly to the taught base‑conversion algorithm and found the patent invalid both for lack of inventive step (over Martens, Ehrat and Martin) and as excluded subject‑matter (a mathematical method). The infringement claim was dismissed on normal construction because the defendants’ hashed‑output approach did not fall within the claims as properly construed.
Ukoumunne v The University of Birmingham & Ors [2020] EWHC 2927 (IPEC) 4 November 2020 This case concerned renewed strike-out applications by defendants to dismiss Ms Ukoumunne’s claims that academics plagiarised her draft PhD thesis and that the University failed to investigate properly. The claimant’s "Further Particulars" identified eleven items but the court found them to be general themes or opinions without the necessary identification of confidential factual material or specific use. The court struck out the breach of confidence and related breach of contract claims against all defendants and refused to make a civil restraint order, ordering submissions on costs.
Evans v Trebuchet Design Ltd & Anor [2020] EWHC 3037 (IPEC) 20 October 2020 This was a strike-out hearing in the IPEC concerning claims by Mr Evans for breach of contract, copyright and database right over a yachting guide. The court found that parties concluded a binding without‑prejudice settlement in August 2019 for £3,000, that Mr Evans could not escape that settlement by bringing a fresh claim in his own name, and struck out the later action. The court awarded only the usual small claims court costs to the defendants.
Pliteq Inc & Anor v Ikoustic Ltd & Anor [2020] EWHC 2564 (IPEC) 2 October 2020 This case concerns Pliteq's claims that former distributor iKoustic infringed GENIECLIP and GENIEMAT trade marks and committed passing off by selling competing Mute products and using Pliteq's marks in online listings and ads. The court held that the defendants' use of the marks was generally protected by the exhaustion (re‑commercialisation) defence, except for a single webpage shown at Annex C, so the trade mark infringement claim succeeded only in respect of that page; the passing off claim failed in full. Overall there was no proven "bait and switch" or confusion affecting the trade mark functions.
DPA (London) Ltd v D'Aguanno & Ors [2020] EWHC 2374 (IPEC) 3 September 2020 DPA sued two former contractors and their new firm for copyright infringement and breach of contract, alleging removal and use of 3D models/CGIs and breach of restrictive covenants. The court found Muller had not signed the written contract and was not bound by the covenants, and rejected most allegations of missing files or use; liability was established only for D’Aguanno’s admitted copying/possession of three 3D models. DPA was awarded nominal damages of £1 for those admitted infringements and breaches; all other claims were dismissed.
Fit Kitchen Ltd & Anor v Scratch Meals Ltd [2020] EWHC 2069 (IPEC) 29 July 2020 This case concerned Fit Kitchen Ltd (FKL) claiming trade mark infringement and passing off against Scratch Meals Ltd (SML) over use of the sign FIT KITCHEN, and SML's counterclaim that FKL's trade mark was invalid for bad faith because it was applied for while FKL was dissolved. The judge found the bad faith counterclaim failed, held SML liable for trade mark infringement under s.10(2) but not under s.10(3) (because FKL had not proved reputation by the relevant date), and found FKL established passing off. Licences and later administrative steps to restore the company were recorded but did not change these findings.
British Amateur Gymnastics Association v UK Gymnastics Ltd & Ors [2020] EWHC 1678 (IPEC) 26 June 2020 This was a claim by British Amateur Gymnastics Association (British Gymnastics), the recognised UK national governing body for gymnastics, against UK Gymnastics Ltd and others for using "UK Gymnastics" signs and related get-up. The court found the Defendants used the Word Sign in trade, the Word Sign was of medium similarity to the Claimant's registered "British Gymnastics" marks and there was a likelihood of confusion for lower-attention consumers, so s.10(2) infringement was made out; the marks enjoyed reputation and the Defendants' use took unfair advantage and posed a real risk of detriment, so s.10(3) infringement was made out. The court also found the Claimant had goodwill, the Defendants misrepresented and damage was likely, so passing off was established; the First Defendant was not an NGB.
Thomas v Luv One Luv All Promotions Ltd & Anor [2020] EWHC 1565 (IPEC) 17 June 2020 This dispute concerned ownership of goodwill in the band name "Love Injection"/"Luv Injection" after a 2016 split and related trade mark registrations filed in 2017. The court held that a final UKIPO invalidation decision operated as issue estoppel and that it would be an abuse of process to relitigate those issues, striking out most of the second defendant's passing-off defence and granting summary judgment cancelling the second defendant's LUV INJECTION SOUND registration. Remaining factual issues (notably ownership of dub plates and distribution/winding-up of partnership assets) were preserved for trial and the schedule of issues was revised.
George v Bond [2020] EWHC 3863 (IPEC) 28 April 2020 This case concerns trade mark infringement by Ms Bond, who traded as "The Oven Angels" and later "The Oven Archangel," using device marks similar to Ms George’s registered "Oven Angels" word and device marks for oven-cleaning services. The judge found the defendant’s original and revised word and device marks infringed the claimant’s marks due to high visual, aural and conceptual similarity and identical services, and granted summary judgment for the claimant. Damages were not assessed at this stage; the court will hear submissions on the form of order and an inquiry as to damages (likely on a royalty/user basis).
Natural Instinct Ltd v Natures Menu Ltd [2020] EWHC 617 (IPEC) 20 March 2020 This was a dispute in IPEC between Natural Instinct Ltd (owner of the registered mark NATURAL INSTINCT for pet food) and Natures Menu Ltd, which launched TRUE INSTINCT / NATURES MENU TRUE INSTINCT. The judge found the claimant's mark had acquired high distinctiveness and reputation, the defendant's signs were similar to the mark, and there was a likelihood of confusion; accordingly the defendant infringed under ss.10(2) and 10(3) and the claimant succeeded in passing off. The judge also found the defendant had failed adequately to disclose known adverse documents evidencing consumer confusion.
Trailfinders Ltd v Travel Counsellors Ltd & Ors [2020] EWHC 591 (IPEC) 12 March 2020 Trailfinders sued two former sales consultants, Mr La Gette and Mr Bishop, and Travel Counsellors Ltd (TCL) alleging misappropriation and use of confidential client information. The court found the client data was confidential (class 2), that both former consultants breached implied contractual and equitable duties by copying/using that information after leaving, and that TCL breached an equitable duty of confidence by receiving and using confidential contact lists it knew or ought to have known were Trailfinders' data. Claims that franchisees were TCL employees or agents were not established.
Ukoumunne v The University of Birmingham & Ors [2020] EWHC 184 (IPEC) 5 February 2020 This was a multi-claim case by an unrepresented PhD candidate alleging that the University of Birmingham, four academics and a publisher used substantial parts of her draft thesis in three articles and a book. The court struck out the copyright claim as having no real prospect of success, struck or stayed the breach of confidence claim against the publisher as devoid of merit (with a stay on condition it be bound by any findings against other defendants), and gave the claimant a final unless-order to particularise confidential material against the 1st–4th Defendants (failing which those confidence and related claims will be struck out). Contract claims were struck out as to Defendants 2–5 but the University’s contract claim may proceed if properly particularised; negligence, discrimination and loss of earnings claims were struck out for lack of particularity/real prospect.
Response Clothing Ltd v The Edinburgh Woollen Mill Ltd (Rev 1) [2020] EWHC 148 (IPEC) 29 January 2020 This case concerned whether Response's 2009 "Wave Fabric" attracted copyright and whether fabrics later supplied to The Edinburgh Woollen Mill (EWM) by Visage, Cingo and Bengal Knittex copied it. The court held the Wave Fabric was not a "graphic work" but was a work of artistic craftsmanship, original and owned by Response (by assignment). The Visage, Cingo and Bengal Knittex fabrics were infringing copies; EWM was liable for secondary infringement in relation to those fabrics, though not primarily liable for sales of Visage-made tops because Visage had already issued those copies to the public by sale to EWM.
Adolf Nissen Elektrobau GmbH & Co KG v Horizont Group GmbH [2019] EWHC 3522 (IPEC) 18 December 2019 This is a UK IPEC revocation action in which Nissen challenged Horizont's UK patent for a vehicle‑mounted mobile warning device forming flashing directional arrows and an alternative constant‑colour warning cross. The court construes "mobile warning device" as vehicle‑mounted when in use but not necessarily used while the vehicle is moving, and finds that a UK skilled person would have implemented two‑colour LED spotlights and adapted prior art to display a constant red cross. Claims 1, 4, 5 and 6 were held obvious over DE007 and Nissen's own publicly available board and the patent was declared invalid; Pederson did not render the claims obvious.
Ashley Wilde Group Ltd v BCPL Ltd [2019] EWHC 3166 (IPEC) 21 November 2019 Ashley Wilde sued BCPL for copyright infringement, alleging BCPL's Amore duvet products copied the Evangeline design's pleated scallop motif. The court found copyright in the Evangeline design but concluded the similarities were insufficiently close and material differences plus evidence of independent design defeated any inference of copying. The claimant's expert evidence was rejected and the defendant's evidence of independent design accepted, so the claim was dismissed with no relief granted.
Beverly Hills Teddy Bear Company v PMS International Group Plc [2019] EWHC 2419 (IPEC) 17 September 2019 This case concerned whether unregistered Community design (UCD) protection arises only when the disclosure event occurs within the EU and when novelty for a UCD must be assessed. The judge held that Article 11(1) requires the disclosure event to occur within the territory of the EU for UCD protection to come into being, and that novelty under Article 5(1)(a) is assessed as at the date the UCD comes into being under Article 11. The judge also accepted that an earlier non-EU disclosure that had become known to the relevant EU circles before the EU disclosure could defeat novelty. The judge referred two questions of EU law to the CJEU rather than resolving them finally.
Volumatic Ltd v Ideas for Life Ltd [2019] EWHC 2273 (IPEC) 29 August 2019 This case concerned whether a short signed 5 May 2005 document between Volumatic Ltd and Ideas for Life Ltd creating a three-stage process (development, assignment of IP and supply/royalty) was a legally binding agreement and whether Volumatic could obtain specific performance of an obligation to assign all property rights in a pouch. The court held the document was a non-binding record of the parties' Warwick meeting (alternatively Volumatic was estopped by long conduct from enforcing it), and refused specific performance; Volumatic's claim was dismissed and damages were not determined but likely time-barred on the facts.
Kwikbolt Ltd v Airbus Operations Ltd [2019] EWHC 2450 (IPEC) 31 July 2019 Kwikbolt, a micro-entity patent proprietor, sued Airbus for alleged infringement of a removable blind fastener patent. Airbus sought transfer of the case from the IPEC to the Patents Court, citing complexity, value and risk of commercial prejudice; the judge refused transfer, finding the dispute suitable for IPEC and likely tryable in two to three days despite the parties’ disparity of resources. Airbus indicated an intention to seek permission to appeal.
NXP BV v ID Management Systems [2019] EWHC 1902 (IPEC) 31 July 2019 NXP sued ID Management alleging two sales of counterfeit MIFARE cards (REACT, Aug 2015; Pembrokeshire, May 2016). The court found the REACT cards counterfeit on the balance of probabilities but did not find the Pembrokeshire cards counterfeit; however, NXP had not unequivocally consented to marketing of either batch in the EEA, so NXP succeeded overall. The judge applied a proportionality approach to evidence in this low-value IPEC claim and rejected the defendant's consent defence.
Quinn Packaging Ltd v Linpac Packaging Ltd & Anor [2019] EWHC 2119 (IPEC) 31 July 2019 Quinn sought revocation of two PET food-tray patents owned by Linpac and Faerch. The court held that the sole cited prior art, Ono, disclosed applying adhesive to a peripheral flange (a "bead" which when squashed forms a layer) and thus rendered the asserted claims, including specific thickness ranges and broad adhesive composition claims, obvious. Both patents were held to lack inventive step and Linpac's proposed amendments were refused because they would still lack inventive step.
Claridge's Hotel Ltd v Claridge Candles Ltd & Anor [2019] EWHC 2003 (IPEC) 29 July 2019 This case concerned Claridge's Hotel's claim that Claridge Candles' use of the sign CLARIDGE infringed its UK word mark CLARIDGE'S and amounted to passing off. The judge found CLARIDGE'S to have a very substantial reputation for hotel services and that the defendants' use of CLARIDGE created a link and took unfair advantage (image transfer), establishing infringement under s.10(3) and passing off. The court ordered partial revocation of the '526 mark for certain toiletries and narrowed the fair specification, and held the sole director personally liable for the infringing acts.
Glencairn IP Holdings Ltd & Anor v Product Specialities Inc (t/a Final Touch) & Anor [2019] EWHC 1733 (IPEC) 5 July 2019 Glencairn sued to restrain Virtuoso from acting for Final Touch on the ground that Virtuoso had confidential settlement/mediation information from a prior mediation with Dartington. The court found Virtuoso's Dartington team knew some confidential settlement terms and those terms were relevant, but held the risk of disclosure to the Final Touch team was very low given the firm's information barrier and factual circumstances. Balancing that low risk against the prejudice to Final Touch from losing its chosen solicitors, the court refused to grant an injunction; Glencairn's application was dismissed.
The Kennel Club Ltd v Micro-ID Ltd [2019] EWHC 1639 (IPEC) 25 June 2019 The Kennel Club sued Micro‑ID over alleged breaches of a 2010 Petlog Reunification Database Agreement and related database‑right claims. The court construed key clauses, held limited breaches of the five‑day entry obligation (clause 2.1.3) and that three Agria insurance mailings breached clause 6, rejected database‑right infringement, awarded nominal and buy‑out set‑offs against the Kennel Club's debt, and left precise net figures and interest to be determined.
Prosyscor Ltd v Netsweeper Inc & Ors [2019] EWHC 1302 (IPEC) 22 May 2019 This was a dispute over ownership and breach of confidence relating to PCT Application WO 2013/177687 A1 (a method/system for discriminating website access requests). The court found Mr Erb devised key inventive concepts (including the authentication token/URL-mangling idea) and that creating the software of the type claimed fell within Mr Kite's normal duties so that Netsweeper was entitled to the PCT Application. The court rejected Prosyscor's breach of confidence claim arising from a contested 7 June 2011 disclosure. Netsweeper therefore owns the PCT Application and did not breach the Confidentiality Agreement.
Glass Slipper Ltd & Anor v (Rimson Flower Productions Ltd & Ors [2019] EWHC 1273 (IPEC) 20 May 2019 This case concerned two defendant applications: to strike out a re-filed claim as an abuse of process and to order a non-party (Ms Ann McGuire) to pay the defendants' costs. The court found the First Action had been struck out after Event 1 deliberately failed to pay ordered security despite prior assurances by Ms McGuire that the security could be raised, and held the present proceedings were a revival of that dispute and an abuse of process. The claim was struck out and a non-party costs order was made against Ms McGuire; defendants to serve an itemised costs schedule.
ATB Sales Ltd v Rich Energy Ltd & Anor [2019] EWHC 1207 (IPEC) 14 May 2019 This case concerned Whytes Bikes' claim that Rich Energy's stag-head logo (D1's Device) copied Whytes' long-used stag-head logo (C's Device). The court found D1's Device to be an infringing copy of C's Device (at least a substantial part, and on the judge's view the whole) and held the Second and Third Defendants jointly liable. The claimant was entitled to injunctive relief and a choice of damages or an account of profits; a declaration of invalidity of the related trade mark was appropriate if the finding of infringement stood. Consequential remedies and costs were adjourned.
Asian Business Publications Ltd v British Asian Achievers Awards Ltd & Anor [2019] EWHC 1094 (IPEC) 2 May 2019 This was a passing off claim by Asian Business Publications Ltd, owner of the long-established "Asian Achievers Awards", against British Asian Achievers Awards Ltd and Mr Kumar for running events under the name "British Asian Achievers Awards". The court found the defendants had admitted goodwill and likely damage, and the only live issue was whether their use was a misrepresentation; the judge held that adding the prefix "British" did not sufficiently distinguish the name and that the defendants’ use amounted to passing off. Relief was granted for the claimant consistent with earlier interim injunctions.
FBT Productions, LLC v Let Them Eat Vinyl Distribution Ltd & Anor [2019] EWHC 829 (IPEC) 2 April 2019 This dispute concerned ownership and alleged infringement of the sound-recording copyright in Eminem’s 1996 album Infinite. The court found FBT owns the sound-recording copyright and that Let Them Eat Vinyl (LTEV) committed primary infringement by pressing vinyl copies. Plastic Head was not liable for secondary infringement because its managing director did not know and had no reason to believe the copies were infringing.
BDI Holding GmbH v Argent Energy Ltd & Anor [2019] EWHC 765 (IPEC) 27 March 2019 This dispute concerned entitlement to European patent application EP 3 011 041, filed by Argent but arising from work BDI carried out designing a biodiesel plant. The key issue was what the inventive concept was (Argent pleaded a product composition; BDI pleaded a preparatory process) and who devised it. The judge held the inventive concept, as the skilled person would perceive it, was the claimed composition (the specific C18 methyl ester profile) and that Mr Scott (for Argent) devised that concept, so Argent is entitled.
Nomination Di Antonio E Paolo Gensini SNC & Anor v Brealey & Anor (t/a JSC Jewellery) [2019] EWHC 599 (IPEC) 13 March 2019 This case concerned Nomination's claim that JSC unlawfully disassembled genuine Nomination bracelets and sold individual branded base links (and used the NOMINATION sign on its own charms), raising issues of trade mark exhaustion and passing off. The court held that Nomination could oppose onward sales of the genuine base links because JSC's low‑quality packaging and presentation were likely to damage the trade marks' reputation, and that JSC's use of NOMINATION in relation to its own charms caused consumer confusion, amounting to trade mark infringement and passing off. Nomination was found to have suffered reputational damage.
Marflow Engineering Ltd v Cassellie Ltd [2019] EWHC 410 (IPEC) 26 February 2019 This case concerned UK Patent No. 2 368 888, which claims a method of installing a fluid-using appliance using a mounting plate with apertures and locking members. The court construed key features (notably what counts as the "fluid pipe" and that a "locking member provided in or on" the plate must be attached to or form part of the plate before and after locking), found the patent valid over Krone and Hubbard, and held that Cassellie's method of installation, when used, fell within claim 1 and infringed.
Bayerische Motoren Werke AG v BMW Telecommunications Ltd & Anor [2019] EWHC 411 (IPEC) 12 February 2019 This case concerned BMW plc's claim that a company incorporating the sign "BMW" (BMW Telecommunications Ltd) misrepresented an association with the claimant and infringed EU trade mark No. 91835. The court found that registration and use of the company name were likely to mislead users of the companies register, supporting passing‑off and infringement under EU trade mark provisions (art.9(2)(b) and (c)). The judge concluded the defendants had no real prospect of successfully defending those claims and granted summary judgment for the claimant. The first defendant later changed its name to BW Telecommunications Ltd, to which the claimant did not object.
Technetix BV & Ors v Teleste Ltd [2019] EWHC 126 (IPEC) 29 January 2019 Technetix sued for infringement of UK Patent No. 2 382 473 B for cable TV tap units; Teleste counterclaimed for revocation. The court construed claim 1, found the amended patent lacked novelty over Rocci (and lacked novelty or inventive step over Toner) so would remain invalid, held Teleste’s Tap Bank was not literally within claim 1 but would fall within it under the doctrine of equivalents (Improver), and (assuming a Formstein-style defence exists) Teleste would be entitled to that defence; no exclusive licence to the Second Claimant was found for the period alleged.
APT Training & Consultancy Ltd & Anor v Birmingham & Solihull Mental Health NHS Trust [2019] EWHC 19 (IPEC) 9 January 2019 The claimants, owners of registered UK and EU word marks "RAID" used for mental-health training, sued Birmingham & Solihull Mental Health NHS Trust for use of "RAID" in relation to a RAID service, training, and the RAID Network. The judge found the Trust had used the sign in the course of trade, that plain word uses were identical to the registered marks (the Trust's stylised sign was not identical but highly similar), and that those uses gave rise to a likelihood of confusion; infringement under the relevant trade mark provisions was declared. Because infringement was found under ss.10(1) and 10(2) TMA / Articles 9(2)(a) and 9(2)(b) EUTMR, the judge did not determine s.10(3) or passing off.
Distinctive Wholesale Litd v Clayton Horsnell Ltd & Ors [2018] EWHC 3742 (IPEC) 18 December 2018 Distinctive Wholesale Ltd (DWL) sued retailer defendants for alleged unauthorised use of its product images and database; Clayton brought third-party claims against Essential (and Mr Nezard) for procuring Clayton’s breach of contract with DWL and for unlawful interference. The court held as a matter of law that Clayton could not maintain a procurement of breach claim based on procurement of its own breach, and consequently the related unlawful interference claim (which depended on the procurement allegation) had no real prospect of success and was struck out. The court also rejected a procedural objection that Part 24 timetable non‑compliance prevented determination, deciding pure points of law could be decided summarily.
Luen Fat Metal And Plastic Manufactory Ltd v Jacobs & Turner Ltd (t/a Trespass) [2019] EWHC 118 (IPEC) 12 December 2018 This case concerned Luen Fat's FUNTIME trade mark registrations (UK and EU) for toys and the defendant's use of "FUN TIME TOYS" on packaging bearing its TRESPASS house mark. The court held FUNTIME was not excluded as descriptive, had acquired distinctiveness in the UK, and that the defendant's use amounted to trade mark use causing a likelihood of confusion — infringing under s.10(2) (and Art 9(2)(b) for the EU mark). The UK mark was also found to have a reputation and the defendant's use took unfair advantage/diluted that reputation in breach of s.10(3); the invalidity counterclaim was dismissed.
KBF Enterprises Ltd v Gladiator Nutrition 3.0Ltd & Ors [2018] EWHC 3041 (IPEC) 9 November 2018 KBF (BodyBuilding Warehouse) sued Gladiator Nutrition and others over use of TWP/The Warrior Project marks. The court found a likelihood of confusion under s.10(2) in relation to the Claimant's WARRIOR and WARRIOR SUPPLEMENTS marks (but not for Warrior Blaze or Warrior Fat Burner), rejected the own-name defence, and held the Claimant had not proved sufficient reputation/goodwill for passing off; the Defendants' counterclaim failed. Mr Gardner was not shown to be jointly liable for the Fourth Defendant. The court directed further submissions on the form of relief.
Coloplast AS v Macgregor Healthcare Ltd [2018] EWHC 2797 (IPEC) 24 October 2018 This case concerned Coloplast's patent for a ready-to-use hydrophilic-coated urinary catheter assembly and MacGregor's challenge to its validity and alleged infringement. The court construed key terms (holding “catheter” covers intermittent and indwelling types, and “prior to use” can include activation during manufacture but excludes a separate sealed ampoule), found the claims novel but invalid for lack of inventive step and for insufficiency, and would have found infringement if the patent had been valid.
Link Up Mitaka Ltd (t/a Thebigword) v Language Empire Ltd & Anor [2018] EWHC 2728 (IPEC) 17 October 2018 This case concerned a Claimant who obtained default judgment for trade mark infringement and passing off after two Defendants ran websites diverting customers. The court found the Defendants engaged in dishonest and obfuscatory conduct at disclosure and during the damages inquiry, and held that this conduct amounted to an abuse of the court's process. As a result CPR 45.30(2)(a) was engaged, the IPEC scale costs scheme was disapplied and indemnity costs were awarded and summary‑assessed (total £99,706.98 including interest).
Link Up Mitaka Ltd (t/a Thebigword) v Language Empire Ltd & Anor [2018] EWHC 2633 (IPEC) 9 October 2018 The claimant, trading as TheBigWord, obtained default judgment for trade mark infringement and passing off against two defendants who operated infringing websites using its sign. At a damages inquiry the court found the websites were live from 1 June 2014 to 31 March 2017, rejected much of the second defendant’s evidence as unreliable, treated the disclosed enquiry list YZ8 as a cherry-picked subset, and extrapolated lost profits. Damages of £142,044 were awarded to the claimant and prior orders for transfer of the domains remain in place.
Shard Financial Media Ltd v Blue Moon Group Ltd & Anor [2018] EWHC 2859 (IPEC) 19 September 2018 This case concerned whether an oral settlement reached on 8 September 2011 required Blue Moon to assign a "Credit Today" trade mark application to Shard. The court found there was a binding oral agreement to settle the oppositions, adequate consideration in reciprocal withdrawal of claims, and an implied term that Blue Moon would take all steps necessary to effect the legal assignment. Summary judgment was granted for Shard, which was held to be equitable owner entitled to require legal assignment.
The Military Mutual Ltd v Police Mutual Assurance Society Ltd & Ors [2018] EWHC 1575 (IPEC) 22 June 2018 This case concerned a passing off claim by The Military Mutual Ltd (MML) that Police Mutual Assurance Society Ltd and related defendants ("Forces Mutual") misrepresented themselves by using the term "mutual" when, MML alleged, the term had a narrow meaning (ownership by customers) and MML had collective goodwill in that meaning. The judge found that in April 2016 the public understood "mutual" only in a broad sense, that MML had not established a recognised narrow class or collective goodwill, and that Forces Mutual fell within the broad meaning (and were part of a mutual group), so MML's passing off claim was dismissed.
MEI Fields Designs Ltd v Saffron Cards And Gifts Ltd & Anor [2018] EWHC 1332 (IPEC) 6 June 2018 This was a copyright dispute where Mrs Mei Fields and her company MFD claimed Saffron Cards (and Mr Paul Steele) copied greeting-card designs. The court found Mrs Fields was the author and first owner (and that a handwritten 10 April 2012 document assigned her copyright to MFD), held certain post-licence-sale Group A cards infringed, found two Group B cards (COU002, COU004) infringed while most others did not, and held Mr Steele jointly and severally liable with Saffron. The defendants’ counterclaim was dismissed.
Dichand v Hydraredox Technologies Holdings Ltd [2018] EWHC 1142 (IPEC) 15 May 2018 This case concerned whether Mr Dichand was fraudulently induced to sign a 13 December 2013 assignment transferring four PCT applications to HTI (later HTHL) and, alternatively, whether the assignment was void or voidable for fiduciary breach, unilateral mistake, lack of consideration or constructive trust. The judge found the delivery and signing circumstances as described by Dr Holasut and Dr Spaziante, concluded Mr Dichand knew what he was signing and was not deceived, and dismissed Mr Dichand’s claims on all pleaded grounds; the unpaid nominal US$1 did not void the assignment.
Martinez (t/a Prick) & Anor v Prick Me Baby One More Time Ltd (t/a Prick) & Anor [2018] EWHC 776 (IPEC) 11 April 2018 This was a passing off claim by Martinez (t/a Prick) that the defendants’ use of "PRICK" for a Dalston cactus shop infringed his goodwill in the name used for a Shoreditch tattoo business and associated visual art. The court found claimant goodwill in signs incorporating "PRICK" extended beyond tattooing to tattoo-related visual art and collaborations, locally limited to Hackney and Tower Hamlets. However, the defendants’ use did not amount to a material misrepresentation to the relevant public and the passing off claim failed for lack of evidence of deception and likely damage.
Student Union Lettings Limited v Essex Student Lets Limited [2018] EWHC 419 (IPEC) 7 March 2018 The claimant (SULETS) sued after the defendant rebranded as "SU LETS". The court found the signs identical or highly similar and held there was trade mark infringement and passing off. The defendant's s.11(3) locality defence failed because the claimant's goodwill extended beyond Leicester. Remedies were to be decided at a further hearing.
The Zockoll Group Ltd & Anor v Mr Handy Ltd & Ors [2018] EWHC 324 (IPEC) 31 January 2018 This was a summary judgment claim by Zockoll and licensee against Mr Handy Ltd and others for infringement of EU registered design 001087217‑0001 (a van topped by an oversized screwdriver) and for passing off; the court granted summary judgment finding the first to third defendants infringed the registered design and granted injunctive relief. The court also held Mr Grainger, the sole owner/director who accepted the photos as accurate, was jointly liable with those companies though not a primary tortfeasor. The claim did not seek damages.
Burgerista Operations GmbH v Burgista Bros Ltd & Ors [2018] EWHC 35 (IPEC) 12 January 2018 This case concerned Burgerista Operations GmbH's EU trade mark BURGERISTA and whether it was invalid as descriptive, and whether use of BURGISTA and related signs by Burgista Bros Ltd/others infringed under EU law. The court held the BURGERISTA mark valid, found UPL's use of BURGISTA and associated signs infringed under Article 9(2)(b) for likelihood of confusion, but found Burgerista did not have the required EU-wide reputation for Article 9(2)(c). An injunction and related relief were granted; the defendants' invalidity counterclaim failed.
Birlea Furniture Ltd v Platinum Enterprise (UK) Ltd & Anor [2018] EWHC 26 (IPEC) 11 January 2018 Birlea sued after the First Defendant sold beds via two Amazon ASIN listings bearing the BIRLEA trade mark. The court found the First Defendant had "used" the BIRLEA sign in the course of trade on the Listings (including from the mark's filing date) and that the Second Defendant was jointly liable as a joint tortfeasor. The Defendants' theory that Amazon retrospectively inserted the Birlea brand into historical records was rejected and key defendant witness evidence was found unreliable. Remedies and quantum were reserved.
Madine (t/a Nico) & Anor v Phillips (t/a Leanne Alexandra) & ors [2017] EWHC 3268 (IPEC) 13 December 2017 This case concerned claims by dress designer Thelma Madine that former employee Leanne Phillips (trading as Leanne Alexandra) and others infringed her unregistered UK design rights in two wedding-dress designs (the Fan Dress and Chenise sketches) and an associated bodice crystal pattern. The court held that design right subsisted in the Fan Dress and the Chenise sketches (including the bodice), that the Defendant's Dress and a Crystal Figurine were made exactly or substantially to those designs and thus infringed, that Leanne authorised manufacture and sale of the figurines, and that Pauline Phillips was not proved to have copied or to be jointly liable. Remedies and quantum were reserved for further hearing.
Martin & Anor v Kogan & Ors [2017] EWHC 3266 (IPEC) 13 December 2017 This judgment determines costs issues after a trial finding the First Claimant authored the Screenplay and no infringement by Claimants. The court decided how Part 36 offers interact with IPEC capped costs: ordinarily raising each stage cap by 25% and the overall cap to £62,500 under r.36.17(4)(b), awarding the additional r.36.17(4)(d) sum outside the caps, and treating Part 20 claims as attracting their own separate IPEC caps. Specific costs awards were made: Ms Kogan to pay Claimants £50,790 plus interest and the Part 20 Defendants £25,820 plus interest.
The National Guild of Removers & Storers Ltd v Central Moves Ltd & Anor [2017] EWHC 3175 (IPEC) 7 December 2017 This appeal concerned a Small Claims Track passing-off decision: NGRS complained that a dissolved member (CMUK) had misrepresented membership via a Loadup directory entry and linked domain; the District Judge found CMUK liable and its controlling mind, Mr Rust, jointly liable, but dismissed claims against a successor company, Central Moves. The High Court dismissed NGRS's appeal, upholding the District Judge’s findings on liability, the assessment of damages by reference to the user principle, and the application of IPEC small-claims costs rules to the earlier period.
The National Guild of Removers And Storers Ltd v Luckes & Ors [2017] EWHC 3176 (IPEC) 7 December 2017 This case concerned reinstated online references to the National Guild of Removers and Storers (NGRS) on (1) the Reallymoving directory and (2) ALS's own website after ALS's membership had ended. The court found the Reallymoving reinstatement was an act controlled by reallymoving.com so the defendants were not liable for that reinstatement, but ALS was liable for passing off via its own website where the misrepresentation appeared under its control; damages of £2,000 were awarded for the ALS website misrepresentation. NGRS's appeal was dismissed; the defendants' cross-appeal succeeded in part insofar as Mr and Mrs Luckes were not jointly liable with ALS for the website misrepresentation.
Abbott & Anor v Design & Display Ltd & Anor [2017] EWHC 2975 (IPEC) 22 November 2017 This judgment resolves post-account disputes between Abbott and Design & Display about which overheads may be deducted from profits attributable to infringing slatted display panels. The court allowed Design & Display to apportion and deduct parts of wages/salaries, related employer NICs and hired/recharged labour as overheads, but rejected deductions for directors' NICs and dividends absent evidence of market-rate remuneration. Design & Display was treated as the successful party on profits and costs; Abbott must pay Design & Display's costs subject to IPEC caps and make a £20,000 interim payment on account of appeal costs, while permission to appeal on the wages/overheads point was refused.
Martin & Anor v Kogan & Ors [2017] EWHC 2927 (IPEC) 22 November 2017 This was a dispute over authorship of the Florence Foster Jenkins screenplay: Mr Martin sought a declaration that he alone authored the final Screenplay used for the Film, and Ms Kogan counterclaimed joint authorship and infringement. The court found that although Kogan made some textual edits (mainly musical jargon/technical wording) and suggested a few non‑textual plot/scene ideas, there was no collaboration on the final Screenplay and her contributions were insufficient to make her a joint author. The declaration of sole authorship for Mr Martin was made and Kogan's counterclaim and the Part 20 claim were dismissed.
Tumber v Independent Television News Ltd (ITN) & Anor [2017] EWHC 3093 (IPEC) 20 November 2017 This case concerns Mr Tumber’s claim for copyright infringement after ITN published his long poem briefly on ITV.com and third parties then linked to or copied it. The court struck out the defendants’ implied‑licence argument insofar as it relied on a telephone exchange (no real prospect), refused to strike out an implied‑licence limb based on custom and practice, accepted discontinuance of the estoppel defence on cost/benefit grounds, retained the fair‑dealing defence for trial, and refused to allocate the claim to the small claims track.
Scomadi Ltd & Anor v R A Engineering Company & Ors [2017] EWHC 3342 (IPEC) 6 November 2017 This case concerned a defendants' application to vary a prior trial order to require corrective publicity after two claimant press releases relating to alleged IP infringement. The judge found the first (30 Oct) press release contained an ambiguity that could suggest infringement but was inadvertent and promptly corrected by a second (2 Nov) release, and the defendants did not prove contempt, abuse of process or malicious falsehood. The court dismissed the defendants' application for the principal publicity and disclosure relief as unnecessary, disproportionate and in parts itself misleading.
Scomadi Ltd & Anor v RA Engineering Co. Ltd & Ors [2017] EWHC 2658 (IPEC) 27 October 2017 This case concerned a contract dispute and design-right claims arising from a broken commercial relationship between Scomadi and Hanway under a Design and Manufacture Agreement (DMA) and a later Supplementary Agreement (SA). The court found the SA to be a binding variation supported by consideration, held that clause 2A and the parties’ conduct estopped Scomadi from denying Hanway’s contributory design ownership, and concluded Hanway validly terminated after Scomadi had effectively “found” a third party by late October 2016. The court upheld validity of RCD1 and RCD2 (RCD3 invalid), found the GT infringed RCD2 but not RCD1, and found GP1 and GP2 did not infringe RCD1 or RCD2.
Scomadi Ltd & Anor v RA Engineering Co. Ltd & Ors [2017] EWHC 2907 (IPEC) 27 October 2017 This judgment concerns whether Scomadi's supplemental agreement and facts supported Hanway's joint contribution and ownership of scooter design elements, and secondary applications about publicity and disclosure relating to a January 2017 termination letter. The court refused permission to appeal the findings on construction and joint ownership, declined to order a publicity notice/link on the claimants' website, but ordered disclosure of the identities and contact details of recipients of the January 2017 letter. Costs were awarded to the defendants with an interim payment on account of £42,000.
Pablo Star Media Ltd v Bowen [2017] EWHC 2541 (IPEC) 13 October 2017 This appeal concerned damages and costs after a default judgment for copyright infringement by Mr Bowen for using a cropped 1937 photograph; the District Judge awarded £250 under the user principle, refused additional/dissuasive damages, and ordered the claimant (Pablo Star Media) to pay the defendant's travel costs because of perceived abusive conduct. The High Court dismissed the appeal, holding the District Judge did not err in assessing a single user-based award for overlapping acts, in refusing aggravated/dissuasive damages given the short, promptly remedied use and minimal benefit, or in taking the claimant's foreign proceedings and threats into account when ordering costs. The appeal was dismissed and no costs were ordered for the appeal.
Coreix Ltd v Coretx Holdings Plc & Ors [2017] EWHC 1695 (IPEC) 11 July 2017 This case concerned Coreix Ltd's claims that defendants' use and registration of CORETX infringed its earlier COREIX mark and amounted to passing off. The court found infringement under s.10(2) (likelihood of confusion) and s.10(3) (reputation, link and detriment), and upheld passing off; it also declared D3's CORETX registration invalid and found the defendants' domain-name use infringed and passed off. Defences of estoppel/acquiescence failed and no finding of infringement/passing off was made against D5 for the short period it used a Coretx-derived name.
77 Ltd v Ordnance Survey Ltd & Ors [2017] EWHC 1501 (IPEC) 15 June 2017 77 Ltd (an SME) sought to keep its intellectual property claim in the IPEC to benefit from its costs cap; Ordnance Survey applied to transfer the claim to the Chancery Division. The court refused transfer, finding that 77 Ltd could not practically afford the risk of uncapped adverse costs in the High Court and that this practical inability to fund High Court litigation justified retention in IPEC. The judge was not satisfied that the trial could not be case-managed to fit within IPEC’s three-day limit and left open the possibility of revisiting transfer at the CMC.
Mermeren Kombinat AD v Fox Marble Holdings Plc [2017] EWHC 1408 (IPEC) 14 June 2017 This case concerned the validity of the EU trade mark SIVEC for marble, challenged by Fox as descriptive/geographical and otherwise invalid. The court found "Sivec" was not inherently perceived by the EU specialist average consumer as a geographical indication, and that by the filing date (9 Aug 2013) and by 7 Mar 2016 the mark had acquired distinctiveness through use by Mermeren. The registration was held valid and Fox's invalidity and revocation counterclaims failed.
Jadebay Ltd & Ors v Clarke-Coles Ltd (t/a Feel Good UK) [2017] EWHC 1400 (IPEC) 13 June 2017 This case concerned trade mark infringement under s.10(2) TMA 1994 and passing off where the defendant listed its own flagpoles against the claimants’ Amazon listings displaying "by DesignElements". The court held the defendant’s use of "DesignElements" on those listings was use in the course of trade and was aurally/conceptually identical and visually similar to the registered mark, producing a likelihood of confusion for post‑registration sales (s.10(2)). The s.10(3) claim failed for lack of demonstrated reputation, but the court found passing off for pre‑registration use and awarded damages (£25,359.75) and an injunction.
Curt G. Joa, Inc v Fameccanica Data SpA [2017] EWHC 1251 (IPEC) 24 May 2017 This case concerned Joa's challenge to EP(UK) No. 1 355 604 and FDS's conditional and unconditional applications to amend the patent. The court construed the amended claims to require ultrasonic bonding that creates holes in all three layers of the side panel, found the proposed amendments to introduce added matter and to be unclear, and dismissed FDS's applications to amend, leaving the patent to be revoked. The judge also held that, had the amendments been allowable, they would have been novel and inventive over the cited prior art Coslett.
Editions Musicales Alpha S.A.R.L. v Universal Music Publishing Ltd & Ors [2017] EWHC 1058 (IPEC) 10 May 2017 This case concerned AMI's claim against Mr Dorset for indemnity after AMI paid £33,600 to settle EMA's copyright claim in respect of the song "Alright". The court found Mr Dorset had represented that Satellite owned the copyright and/or had given an implied warranty of title, AMI relied on that representation in entering the Satellite Assignment, and AMI is entitled to reimbursement of the settlement and its costs of defending EMA's action. AMI's claim for future lost royalties was rejected.
Abbott & Anor v Design & Display Ltd & Anor [2017] EWHC 932 (IPEC) 26 April 2017 This IPEC remitted two issues after findings of patent validity and infringement concerning Abbott's patent for snap‑in resilient‑metal inserts: (1) what proportion of Design & Display's panel sales incorporating or sold with infringing inserts must be included in Abbott's account of profits, and (2) what proportion of general overheads may be deducted. The judge identified the inventive concept (a snap‑in resilient‑metal insert engaging a panel slot), held Abbott was entitled to the whole profit on infringing inserts and 10% of profit on panels where the insert/slot embodiment was the essential feature, and allowed a proportionate deduction of general overheads apportioned by sales revenue while disallowing director emoluments without proportional evidence.
Perry v F H Brundle & Ors [2017] EWHC 678 (IPEC) 30 March 2017 This case concerns the grant of a two‑year general civil restraint order (GCRO) against Mr Perry after the expiry of an extended CRO (ECRO), following a pattern of repeated, wide‑ranging threats to issue further proceedings that the court found to be totally without merit. The IPEC held it had jurisdiction to grant a GCRO and concluded, on the material before it, that an ECRO would not be sufficient because there was a real risk Mr Perry would persist in issuing meritless claims; a GCRO was imposed from 27 March 2017.
Azumi Ltd v Zuma's Choice Pet Products Ltd [2017] EWHC 609 (IPEC) 24 March 2017 Azumi Ltd, owner of ZUMA trade marks for high-end restaurants, sued Zuma's Choice Pet Products Ltd and its sole director Ms Vanderbilt for trade mark infringement over the use of ZUMA, DINE IN WITH ZUMA, a DIWZ device and the domain dineinwithzuma.com in connection with pet food. The court found the Marks had a substantial reputation, that the defendants' use in the course of trade created a link and risked tarnishment of the Marks, and granted injunctive relief; the own-name defence failed and Ms Vanderbilt was jointly liable with ZCPP. Claims by Ms Vanderbilt for unjustified threats succeeded only to the limited extent that Azumi had no entitlement to force ZCPP to change its company name; no damages were awarded.
Epoch Company Ltd v Character Options Ltd [2017] EWHC 556 (IPEC) 22 March 2017 This was a patent infringement and validity trial concerning polyhedral water-soluble fusible beads said to be "transparent" and used in a tray. The court construed "transparent" functionally (visible increased brilliance under illumination), found claim 1 (as granted) infringed by Character Options' Beados Gems, but held the patent (claims 1–3 and 7 and the proposed amended claims) invalid for lack of inventive step over prior use Bindeez Aquadots. Had the patent been valid, the amended claim would also have been infringed.
Ogunkoya v Harding [2017] EWHC 470 (IPEC) 10 March 2017 This case concerned a claim that the defendant's 2016 book copied a substantial part of three draft chapters of an unfinished manuscript sold by the claimant in 2010. The judge found no copyright infringement and no breach of confidence, concluding the similarities were largely explicable by the parties' use of the same public historical sources and that no enforceable obligation of confidence had been imposed. The claimant's account was disbelieved on key factual points and the claim was dismissed.
Starbuck v Patsystems (UK) Ltd [2017] EWHC 397 (IPEC) 8 March 2017 This case concerned whether a 1999 Assignment transferred copyright in all versions of the NSA software (including v3.1) to Patsystems, whether later modifications were owned by Starbuck, and whether Patsystems proved that Starbuck’s ACE software infringed any NSA copyright. The court held the Assignment (read with background knowledge) covered all NSA versions including v3.1, that Starbuck did not establish ownership of the 2001 modifications, and that Patsystems failed to prove ACE reproduces protected expression of NSA so its infringement counterclaim failed.
AP Racing Ltd v Alcon Components Ltd [2017] EWHC 248 (IPEC) 15 February 2017 This Second Action concerned whether eight Alcon brake caliper models infringed claim 1 of UK Patent No. 2,451,690, focusing on construction of “profiling”, what constitutes a “peripheral stiffening band” (PSB) and the required asymmetry. The court held “profiling” means shaping (not necessarily material removal); a PSB is a distinct band of material appreciably beyond ordinary limb material that stiffens and interconnects outer lateral end regions; asymmetry is assessed visually against the specification and figures rather than by strict measurement. Applying that construction, one model (CAR 9549Y73) infringed and the other seven did not.
Jushi Group Co, Ltd v OCV Intellectual Capital, LLC [2017] EWHC 171 (IPEC) 6 February 2017 This case concerned the validity of European Patent 1 831 118 in light of prior art Neely and whether two imported fibreglass products infringed it. The court rejected Jushi’s attacks that claim 1 (and dependent claims) lacked novelty or inventive step over Neely (examples, Table IV and Table VI) and concluded that part of the claimed subject-matter is a valid selection invention. The Patent was held valid and infringement was threatened in respect of Product 2 (Product 1 conceded to fall outside the Patent).
Azumi Ltd v Zuma's Choice Pet Products Ltd & Anor [2017] EWHC 45 (IPEC) 16 January 2017 Azumi Ltd sued over trade mark use of ZUMA; Ms Vanderbilt (defendant) sought recusal of the judge, permission for her McKenzie Friend (an indefinitely suspended solicitor) to have rights of audience, and summary judgment on threats/counterclaim. The judge refused recusal, refused to grant rights of audience to the suspended solicitor, dismissed Ms Vanderbilt’s summary judgment application (finding an arguable defence for Azumi), and ordered costs against Ms Vanderbilt (with the claimant’s recoverable costs capped at £3,000).
77M Ltd v Ordnance Survey Ltd [2017] EWHC 39 (IPEC) 13 January 2017 This case concerns 77M Ltd's confidentiality objections to admitting two HMSO officials into a confidentiality club so they can review Annex 16 and related material, because HMSO must be consulted under the Crown Rights Agreement before Ordnance Survey decides whether to bring a counterclaim. The court held HMSO realistically needs to see the confidential documents to make an informed decision, found no real risk of misuse if they are admitted under club protections, and ordered their admission and a short extension for service of any defence and counterclaim.
Spire Healthcare Holdings v E-Spire Group Ltd & Ors [2017] EWHC 493 (IPEC) 12 January 2017 Spire Healthcare sued recruitment businesses trading as "ESpire" for trade mark infringement. The court found the marks to be visually, aurally and conceptually very similar and the defendants' services to be identical or extremely similar to the claimant's registered services, concluding there was a likelihood of confusion under section 10(2). Summary judgment was entered for the claimant on infringement and the sole director, Mr Bolton, was held potentially jointly liable absent evidence to the contrary; relief was to be constrained and determined later.
Bhayani & Anor v Taylor Bracewell LLP [2016] EWHC 3360 (IPEC) 22 December 2016 This case concerned whether Ms Bhayani personally owned goodwill to found a passing off claim against her former firm Taylor Bracewell LLP, and whether Taylor Bracewell's registered trade mark should be revoked under s.46(1)(d) Trade Marks Act 1994. The court held Ms Bhayani had no realistic prospect of establishing personal ownership of the relevant goodwill and entered summary judgment for Taylor Bracewell on passing off. The judge found the 2014 Partnership Agreement and related clauses meant goodwill generated while Ms Bhayani worked for the firm belonged to the LLP. The claim for revocation of the registered trade mark under s.46(1)(d) was allowed to proceed to trial.
The National Guild of Removers And Storers Ltd v Bee Moved Ltd & Ors [2016] EWHC 3192 (IPEC) 13 December 2016 The National Guild of Removers and Storers (NGRS) sued BeeMoved Ltd and its two directors for passing off based on online statements implying BeeMoved was an NGRS member. The court held that a BeeMoved webpage checklist stating customers should "use a removal company who is a member of the National Guild of Removers and Storers" implied BeeMoved itself was a member and, being untrue, amounted to passing off; all three defendants were liable. A separate ReallyMoving directory entry stating "Member of NGRS" was held not to found liability because the defendants showed they lacked knowledge, intention, agency or authorisation for that third‑party republication. The claimant’s unpleaded contractual argument about the ReallyMoving entry was rejected.
Action Storage Systems Ltd v G-Force Europe.Com Ltd & Anor [2016] EWHC 3151 (IPEC) 7 December 2016 Action Storage sued FECL and G‑Force alleging their SuperTuff lockers copied Action Storage's eXtreme locker designs and that unregistered design right subsisted in the eXtreme lockers and parts. The court found the eXtreme design as a whole and several parts (notably exterior and most interior door features except moulded hinges) were original, that certain features (top/bottom stacking faces) were excluded as "must fit" interface features, and that the defendants had copied and made articles substantially to the protected designs, giving rise to primary and secondary infringement (with secondary liability established after 27 June 2014). Some pleaded features were rejected as non‑original or excluded.
MHCS Societe En Commandite Simple & Anor v Polistas Ltd & Ors [2016] EWHC 3114 (IPEC) 2 December 2016 This case concerned whether Polistas Ltd and related defendants had consent to use Veuve Clicquot trade marks under a series of annual email agreements for the Veuve Clicquot Gold Cup (2007–2010), and whether their out‑of‑period sales and certain garments infringed the UK/EU trade marks and/or amounted to passing off. The court found the parties had annually negotiated consents limited to the VCGC period (a six‑week period ending on Finals day) and limited shop/advertising use, that the consents were terminable on reasonable notice with termination effective 11 December 2012, that specified sales/manufacture/promotions outside those consents infringed the marks and amounted to passing off, and that Mr Lynn and the defendant companies were jointly liable; damages of £125,000 were awarded and an injunction granted in principle.
Phonographic Performance Ltd v Hagan & Ors (t/a Lower Ground Bar and the Brent Tavern) [2016] EWHC 3076 (IPEC) 30 November 2016 PPL sued Hagan for unlicensed public performance of sound recordings; judgment found Hagan knowingly and flagrantly infringed and earlier liability and injunction had been entered. The court awarded additional damages of £2,000 under s.97(2) CDPA, applied old Part 36 consequences (indemnity costs from 25 Oct 2013, interest at 4% above base rate from that date, and a 10% uplift of £1,338), and specified interest rates for other periods; PPL to draft final order and costs schedule.
AMS Neve Ltd & Ors v Heritage Audio S.L. & Anor [2016] EWHC 2563 (IPEC) 18 October 2016 The claimants (AMS Neve and BW Trustees) alleged Heritage Audio and its director sold goods in the UK under signs infringing two UK trade marks and an EU trade mark and committed passing off. The court held there was a good arguable case that Heritage Audio targeted/advertised/offered for sale in the UK so English courts have jurisdiction over the UK trade mark and passing off claims (including against the director as joint tortfeasor). The court concluded it lacked jurisdiction under the Trade Mark Regulation for the EU trade mark (Heritage being established only in Spain), so that claim was dismissed for want of English jurisdiction.
George East Housewares Ltd v Fackelmann Gmbh & Co KG & Anor (Rev 1) [2016] EWHC 2476 (IPEC) 11 October 2016 This was a passing-off claim by George East (successor to Taylor Law) against Fackelmann and Probus alleging the defendants copied the get-up of Tala Cook's Dry Measure cups (excluding the Tala name). The court held the claimant had not established goodwill in the pleaded get-up (without the trade name) by early 2013, and alternatively that the defendants' cups would not have caused actionable misrepresentation or shown resulting damage. The claim was dismissed.
Oran Pre-Cast Ltd v Oranmore Precast Ltd & Anor [2016] EWHC 1846 (IPEC) 21 July 2016 This case decided whether a Compromise Agreement of 17 May 2013 (the Oran Release) barred Oran Pre-Cast's trade mark infringement and passing off claims against Oranmore Precast Ltd and another. The court held the Release operated as a wide commercial release covering known and foreseeable claims (including future ones) connected with Richard Burke's departure and the founding/trading of Oranmore, and that a release of one joint tortfeasor also released other joint tortfeasors. As a result Oran's claims were precluded and dismissed; the judge added that, had the Release not applied, he would have found infringement of the registered mark and passing off.
Raft Ltd v Freestyle of Newhaven Ltd & Ors [2016] EWHC 1711 (IPEC) 13 July 2016 This case concerned Raft's claim that Freestyle and associated parties infringed Raft's UK unregistered design right in a "wide‑arm" Loft sofa and related passing off allegations; Freestyle admitted making infringing wide‑arm Loft copies which the court found Raft owned and which were infringed, with Highly Sprung liable for secondary infringement and Mr Horsnell jointly liable. Raft's claims in respect of a "skinny‑arm" Loft variation and for passing off failed, and the defendants' counterclaim based on the Combi design was dismissed for lack of proven ownership (and the Manhattan sofa was found sufficiently different).
Ross v Playboy Enterprises International, Inc [2016] EWHC 1379 (IPEC) 13 June 2016 This case concerned Mr Ross's challenge to a UDRP panel decision ordering transfer of the domain playboy.london to Playboy Enterprises International (PEI) and his separate claims seeking declarations of non‑infringement, non‑passing off and relief under s.21 TMA 1994 for unjustified threats. The judge held the court had no jurisdiction to overturn the UDRP decision, found no error in the panel's reasoning, rejected Mr Ross as a "person aggrieved" under s.21 given his pleaded non‑commercial use and undertakings (alternatively finding PEI's letter unjustified on the evidence), and concluded registration of the domain would amount to passing off. The claim was dismissed and all declarations and reliefs refused; the UDRP decision remained in force.
Skyscape Cloud Services Ltd v Sky Plc & Ors [2016] EWHC 1340 (IPEC) 8 June 2016 Skyscape sought a declaration that its use of the sign "Skyscape" for cloud services to UK public sector bodies did not infringe five Sky trade marks; the court refused to entertain Skyscape's overly broad and late-served drafts of a DNI but, on a narrowed issue (use of "Skyscape" for email services vs the SKY mark), found infringement and/or a prohibited "link" under EU trade mark arts.9(1)(b) and 9(1)(c). The judge dismissed Skyscape's DNI application and emphasised strict case-management and precision requirements for DNIs.
Saertex France SAS v Hexcel Reinforcements UK Ltd [2016] EWHC 966 (IPEC) 4 May 2016 Saertex sued Hexcel for infringement of EP 1 781 455 B1, and Hexcel counterclaimed invalidity; Hexcel admitted its product fell within claim 1 as granted. The court found the patent invalid both as granted and as amended: claim 1 as granted lacked novelty over Cytec and "Working with Fibreglass" and lacked inventive step over Crystic, claim 2 as granted likewise failed, and the conditional amended claims also lacked inventive step. The judge held that had the patent been valid, Hexcel would have infringed.
Bayerische Motoren Werke AG v Technosport London Ltd & Anor [2016] EWHC 797 (IPEC) 13 April 2016 BMW sued Technosport London Ltd (TLL) and its director Mr Agyeton for trade mark infringement and passing off arising from TLL's use of the BMW word mark, the BMW Roundel, and the BMW M logo in relation to garage/repair services. The court found infringement of the Roundel and the M Logo and established passing off for those marks, but found no infringement of the BMW word mark; there was no valid consent by BMW and Mr Agyeton was held jointly liable with TLL.
OOO Abbott & Anor v Econowall UK Ltd & Ors [2016] EWHC 660 (IPEC) 23 March 2016 This case concerned whether Abbott's late and partially unsigned service of a claim form should be treated as effective and whether the dispute should be stayed to arbitration under a Licence Agreement. The court deemed the copy unsigned claim form served on 6 July 2015 to be good service under CPR 6.15, granted retrospective permission to serve particulars by 25 November 2015, struck out the claim against Smithbrewer for lack of pleaded grounds, and refused the defendants' application to stay proceedings in favour of arbitration. The judge construed the Licence Agreement as giving English courts exclusive jurisdiction and an arbitration clause that was permissive rather than mandatory.
Bapco Closures Research Ltd & Anor v Selpac Europe Ltd [2016] EWHC 550 (IPEC) 18 March 2016 This case concerned construction of terms in European Patent (UK) No. 1 656 306 and whether eight accused foil closures (Marks 1–8) sold by the defendant infringed claims 1 and 14. The court construed "spout" as a pipe‑like conduit implying axial length, held that the foil itself can serve as the claimed "frangible region", and construed "peninsula" as an isolated/distinguished portion of the removable part not necessarily protruding. Applying those constructions, the accused closures lacked a spout (being essentially flat) and nothing was mounted on a spout to perform the pushing‑device feature of claim 14, so the court found no infringement.
Ultrasoft Technologies Ltd v Hubcreate Ltd [2016] EWHC 544 (IPEC) 16 March 2016 This dispute concerned Hubcreate copying three Ultrasoft database program files onto its server in 2009–2010 and whether restoration/hosting of those files amounted to issuing/communicating copies to the public or extracting/re‑utilising substantial parts of the databases. The judge found only UBC (and those who obtained access via UBC) had system‑administrator access to the copied files, accepted Hubcreate’s Part 36 admission of copying and retention, struck out speculative allegations of wider exploitation, and held there was no further infringement by Hubcreate beyond the admitted copying and retention.
Grenade (UK) Ltd v Grenade Energy Ltd & Anor [2016] EWHC 877 (IPEC) 10 March 2016 This was a summary judgment claim by Grenade (UK) Ltd that Grenade Energy Ltd infringed its EU trade marks and passed off energy drinks using the same name/logo, and that the company's sole director Mr Chawla was jointly liable. Defendants admitted infringement and misrepresentation; the judge found that damage to the claimant's goodwill was inevitable from that admitted misrepresentation and granted summary judgment for passing off. The judge also held that, as sole director/shareholder who did not identify others responsible, Mr Chawla had actively procured and intended the company's torts and was jointly liable; summary judgment on joint tortfeasance was therefore entered.
PeCe Beheer BV & Anor v Alevere Ltd & Ors [2016] EWHC 434 (IPEC) 3 March 2016 Clinics counterclaimed in negligence over malfunctioning Utrilog ultrasound machines used under the Alizonne Therapy sublicences and sought to join Dr Claudia van der Lugt as a defendant for negligent misstatement, alleging she gave technical advice and assumed personal responsibility. The court held the joinder test under CPR 19.2(2)(b) is analogous to the strike-out/summary judgment approach and, on the evidence (notably emails), found the clinics had a real prospect of establishing a special relationship and negligent advice, so joinder was permitted. The court also held the sublicence "entire agreement" clause did not bar third‑party tort claims. No final determination on negligence or liability was made.
Global Flood Defence Systems Ltd & Anor v Johan Van Den Noort Beheer BV & Ors [2016] EWHC 189 (IPEC) 5 February 2016 This was an IPEC trial deciding three issues: threats (adjourned), misrepresentation (claimants lost), and a defendants' counterclaim for royalties (defendants succeeded). The defendants sought immediate summary assessment of their costs subject to IPEC caps; the court held that costs assessment must be adjourned until all issues in the proceedings, including the outstanding threats allegation, are finally determined. No immediate costs award was made; any entitlement to costs remains subject to the IPEC caps and required set-off.
Global Flood Defence Systems Ltd & Anor v Johann Van Den Noort Beheer BV & Ors [2016] EWHC 99 (IPEC) 1 February 2016 This case concerns licence and threats disputes over BV's Self Closing Flood Barrier (SCFB). Claimants sued defendants for unjustified threats of patent infringement based on a pending EP application and for negligent misrepresentation inducing the 23 November 2010 Licence Agreement; the court adjourned the threats claim for later hearing but rejected the misrepresentation claim and upheld BV's counterclaim for unpaid royalties. The judge found the operative licence terms defined the Patent Rights (the PCT application) and displaced inconsistent prior statements, and treated the threats issue as sensitive to whether patent claims had become fixed by a decision to grant.
AP Racing Ltd v Alcon Components Ltd [2016] EWHC 116 (IPEC) 28 January 2016 This is the damages inquiry after the Court of Appeal restored validity of AP Racing’s UK patent and ordered account or inquiry against Alcon for infringing calipers supplied via BPI. The court rejected Alcon’s s.69(3) defence (because the relied external search material was not admitted and citation of prior art did not necessarily show no reasonable expectation of grant), found 735 relevant infringing calipers, awarded lost profits on those calipers (£217,928) and convoyed‑goods profits (£276,636), and declined a user‑principle royalty for other sales, giving total damages of £494,564 (plus interest to be fixed).
Gama Healthcare Ltd v PAL International Ltd [2016] EWHC 75 (IPEC) 20 January 2016 Gama Healthcare sued PAL International for passing off, alleging PAL's Medipal flow-wrap packaging copied the Clinell flow-wrap get-up. The court found Gama had goodwill in the Clinell name but had not proved distinct goodwill in the pleaded colour-block get-up by the Sept 2013 relevant date, partly because industry colour conventions (green for disinfectant, yellow for detergent) reduced distinctiveness. PAL had "lived dangerously" by referencing Gama's packaging but there was only a small risk of deception among professional purchasers, so no passing off was established.
Caspian Pizza Ltd & Ors v Shah & Anor [2015] EWHC 3567 (IPEC) 9 December 2015 This case concerned competing claims over the use of the name CASPIAN for restaurants and whether defendants infringed two UK trade marks (a CASPIAN word mark and a device mark) or committed passing off. The judge rejected the claimants' evidence of a franchise/licence and found local Worcester goodwill dating back to 2002–2004, declared the CASPIAN word mark invalid under s.5(4) (art.4(4)(b)) because of that earlier local right, upheld the device mark, and dismissed the defendants' liability for trade mark infringement or passing off. Certain named defendants (Mr Shah and Malvern Hills) were found not to have material involvement after November 2013 and were not liable.
Henry Hadaway Organisation Ltd v Pickwick Group Ltd & Ors [2015] EWHC 3407 (IPEC) 25 November 2015 This case concerned ownership and licence of sound recordings called "The Shows Collection" made 1991–1997, and whether Pickwick 2 infringed HHO's rights by releasing overlapping recordings in 2009–2010. The court found GLPL (via producer Gordon Lorenz) was the author/first owner subject to contract; the 1992 agreement gave Pickwick 1 an exclusive licence but did not assign copyright, a December 2008 document assigned specified recordings to HHO, and HHO therefore held rights (exclusive licence in some titles, ownership in others). Pickwick 2's releases infringed and it had no valid consent defence.
The Comptroller-General of Patents, Designs and Trade Marks & Anor v Intellectual Property Agency Ltd & Anor [2015] EWHC 3256 (IPEC) 10 November 2015 This case concerned the Intellectual Property Office (IPO) suing Intellectual Property Agency Ltd (IPAL) and its sole director Mr Jonasson over "Reminder" renewal forms that customers confused with official IPO communications. The court found IPAL liable for passing off and for trade mark infringement of the IPO's registered sign, held Mr Jonasson jointly liable as a joint tortfeasor, and awarded an account of profits capped at the IPEC maximum of £500,000.
Helme & Ors v Maher & Anor [2015] EWHC 3151 (IPEC) 2 November 2015 This case concerned whether Mrs Helme had licensed the Defendants to use the Hidden Gem trade name, logo and a photograph, and whether an NEC meeting constituted accord and satisfaction. The judge found Mrs Helme had granted a broad, terminable licence to use those assets to advance the joint enterprise, that the licence persisted until at least 9 April 2010 and covered the complained-of acts (including sub-licences via intermediaries), and that there was no accord and satisfaction at the NEC meeting. The claim for passing off and copyright infringement was dismissed.
T & A Textiles and Hosiery Ltd v Hala Textile UK Ltd & Ors [2015] EWHC 2888 (IPEC) 23 October 2015 This case concerned claims by T & A Textiles that Hala Textile and others infringed copyright in bed-linen designs (notably "Chantilly" and "Manhatten"), a registered design for packaging, and that defendants made unlawful threats. The judge found Manhatten not an original work, Chantilly original, but rejected copying/infringement because defendants proved relevant products were imported before the claimant's creation dates. The registered design was invalidated for prior public availability, and the threats claim succeeded in part (letters to third parties and a solicitors' follow-up about an eBay VeRO notice).
Glass & Ors v Freyssinet Ltd [2015] EWHC 2972 (IPEC) 21 October 2015 This case concerned UK Patent No. 2 426 008 for a hybrid two‑phase cathodic protection method and a discrete anode product. The court construed claim 1 as requiring the long‑term phase to be sacrificial (dissolution of sacrificial metal), found claim 1 valid but not infringed, and held claim 12 invalid for lack of inventive step. Freyssinet’s marketing/draft materials did not amount to offers or to indirect infringement in the UK.
Perry v F H Brundle & Ors [2015] EWHC 2737 (IPEC) 2 October 2015 This judgment concerns Mr Perry, proprietor of UK patent No. 1 390 104, whose patent infringement claim about a "Nylofor" beam bracket was struck out as totally without merit after earlier litigation had already rejected his case and his appeals. The judge found Mr Perry had persistently issued wholly unmeritorious claims and applications (including multiple post-bankruptcy applications) and granted an extended civil restraint order (CRO) to prevent further abuse of process. The court held that an IPEC judge may make an extended CRO and that, given the pattern of conduct, an extended CRO was proportionate.
NOCN (Formerly National Open College Network) v Open College Network Credit4Learning [2015] EWHC 2667 (IPEC) 25 September 2015 This dispute concerned whether the Claimant owned goodwill or valid trade mark rights in the letters "OCN" and whether the Defendant's use of "OCN", "OCN Credit4Learning" and a device logo infringed those rights or amounted to passing off. The court held "OCN" by itself is a descriptive acronym, not subject to goodwill and its registration is invalid and to be revoked; the Claimant's "Swoosh" device marks were valid and the Defendant's logo infringed them, and passing off succeeded only in relation to the Defendant's logo. The Claimant's NOCN mark was not infringed and many of the Defendant's other defences failed.
Absolute Lofts South West London Ltd v Artisan Home Improvements Ltd & Anor (No. 2) [2015] EWHC 2632 (IPEC) 17 September 2015 This judgment refuses Absolute Lofts’ application to reopen or reconsider the earlier IPEC judgment that had awarded £300 in compensatory damages and £6,000 under the Enforcement Directive. Absolute Lofts sought to admit a missing page of a Shutterstock licence as fresh evidence bearing on replacement-image costs; the court applied the Ladd v Marshall principles (as moderated by Vringo) and concluded Absolute Lofts failed to show reasonable diligence in not having that material at trial, so the reconsideration was dismissed and the original awards stood.
Absolute Lofts South West London Ltd v Artisan Home Improvements Ltd & Anor [2015] EWHC 2608 (IPEC) 14 September 2015 This case concerned Artisan’s admitted copying of 21 Absolute Lofts photographs from the claimant’s website. The court awarded £300 as the user-principle (a realistic notional licence fee informed by the low-cost substitutes Artisan actually procured) and a further £6,000 under either s.97(2) CDPA or Article 13(1) of the Enforcement Directive to reflect unfair profits/non‑economic loss given the defendant’s knowledge. The claimant could rely on whichever head yielded the greater relief; the awards were not cumulative beyond those two sums.
Atelier Eighty Two Ltd v Kilnworx Climbing Centre CIC & Ors [2015] EWHC 2291 (IPEC) 30 July 2015 This case concerned ownership of copyright in logos created in August 2011 by a designer (Purple Penguin/Rik Kirk) for Kilnworx. The court found there was an oral commission with an implied term that Kilnworx should own the copyrights; Purple Penguin therefore held the legal title on trust for Kilnworx and Atelier’s later assignment took the legal title subject to Kilnworx’s equitable interest. Kilnworx was entitled to an assignment from Atelier and the defendants were not held liable for infringement in respect of the logos.
The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a the United Kingdom Ukulele Orchestra) [2015] EWHC 1772 (IPEC) 2 July 2015 This dispute concerned UOGB's CTM for THE UKULELE ORCHESTRA OF GREAT BRITAIN, claims of trade mark infringement, passing off and copyright against operators of "The United Kingdom Ukulele Orchestra", and a contested strike-out over redacted disclosure. The court held the CTM was descriptive and therefore invalid because acquired distinctiveness had not been established across all relevant Member States (despite evidence of distinctiveness in the UK and Germany), dismissed the trade mark claims as a result, upheld passing off against Yellow Promotion, and rejected the copyright claims. The strike-out application failed because the redactions did not preclude a fair trial and oral evidence was required.
VPG Systems UK Ltd v Air-Weigh Europe Ltd [2015] EWHC 1862 (IPEC) 1 July 2015 This patent case concerned EP(UK) 2,099,626 B1 claiming an on-board weighing system using an inclinometer/accelerometer mounted on a single suspension component to indicate vehicle loading. The court construed "suspension component" purposively to include non‑chassis/body/drive‑train parts that change angle under load (including a non‑rotating hub part) and held that Rothoff disclosed substantially the same idea, so claims 1 and 7 lacked inventive step and were invalid. AEL had admitted infringement if the patent were valid, so invalidity disposed of VPG's claim on those claims.
The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC) 29 June 2015 This case concerns two Community trademarks (SOFA WORKSHOP) owned by Sofa Workshop and challenged by Sofaworks for revocation (non-use) and invalidity for being descriptive; Sofa Workshop also brought passing off and infringement claims. The court revoked the CTMs for non-use outside the UK, found the marks descriptive under art.7(1)(c) absent Community-wide acquired distinctiveness (which was only shown in the UK), and held that Sofa Workshop succeeded in a passing off claim in England and Wales; had the CTMs remained valid the court would also have found infringement.
Minder Music Ltd & Anor v Sharples [2015] EWHC 1454 (IPEC) 20 May 2015 This case concerned competing claims to copyright in the song "Touch Sensitive" and whether (a) a 2013 Settlement Agreement granting Mr Sharples one‑third of publishing was voidable, (b) an alleged 1999 oral "Canalot Agreement" had been made by a person with authority, and (c) Mr Sharples was a joint author of the Album Version. The court refused to set aside the 2013 Settlement Agreement for unconscionability, found no concluded Canalot Agreement nor authority in Mr McMahon to bind the writers, and held that Sharples did not co‑author the lyrics but did make an original musical contribution (strings) warranting a limited share of the music copyright (about 20%, not one third). The court declined the precise declarations sought and indicated it would hear submissions on consequential relief.
Lumos Skincare Ltd v Sweet Squared Ltd & Ors [2015] EWHC 1313 (IPEC) 19 May 2015 This case concerns an account of profits after the Court of Appeal found a likelihood of confusion (passing off) by defendants selling nail products under the LUMOS mark. The judge held the supplier (Second Defendant) liable to account for profits attributable to a common design to pass off, excluded non‑UK sales from the account, accepted certain manufacturing costs and specific allowed deductions, and disallowed general trade‑show/catalogue overhead allocations. Net disgorgement ordered: First/Third Defendants £24,461.48 (jointly and severally) and Second Defendant £17,842.66.
Alfrank Designs Ltd v Exclusive (UK) Ltd & Anor [2015] EWHC 1372 (IPEC) 18 May 2015 This is an IPEC damages inquiry following Alfrank's claim that Exclusive sold infringing tables (Modena/Opus copies of Alfrank's Canberra/Strasbourg). The judge rejected an alleged oral China deal with retailer Harveys, found that 20% of Exclusive's infringing table sales caused Alfrank to lose one-for-one table sales (with associated convoyed goods recoverable in the pleaded proportions), and awarded a reasonable royalty of £100 per table for the remaining 80% of infringing sales. Parties were left to agree the arithmetic.
AP Racing Ltd v Alcon Components Ltd [2015] EWHC 1371 (IPEC) 15 May 2015 AP Racing sued Alcon for patent infringement and, after judgment on liability, issued a second action alleging infringement by seven additional Alcon calipers that had been publicly available before the first action. Alcon applied to strike those claims as an abuse of process; the court found AP Racing could probably have discovered the calipers earlier but that resolving them at the post‑liability inquiry would have been quick and not require additional evidence. The strike‑out application was dismissed and the court will invite submissions on appropriate procedural steps.
Bodo Sperlein Ltd v Sabichi Ltd & Anor [2015] EWHC 1242 (IPEC) 8 May 2015 This case concerned Bodo Sperlein Ltd's claim that Sabichi copied its Red Berry tableware design when Sabichi produced and sold a Red Blossom range. The court found that Sabichi's Red Blossom designs (as sent to the manufacturer in 2008) were indirect copies of BSL's Red Berry work, that the copying was of a substantial part, and that Sabichi infringed BSL's copyright by importation and sale. The court ordered an account of profits, assessing recoverable profits at £31,703.01 and awarding interest.
Everseal Stationery Products Ltd v Document Management Solutions Ltd & Ors [2015] EWHC 842 (IPEC) 1 April 2015 This case concerns UK Patent No. 2,340,073 for a dry self-sealing non-tacky contact-adhesive mailer and whether three defendant mailers fell within claims 1 and 7 and whether the claims were valid. The court found Mailer 1 would infringe claim 1 (but not claim 7) if the patent were valid, but Mailers 2 and 3 did not infringe. On validity the court held claim 1 invalid for lack of novelty (over the Viking Mailer) and for lack of inventive step (over Faltin and Johnsen), and held claim 7 invalid for lack of inventive step (though not novel over Viking).
Vertical Leisure Ltd v Poleplus Ltd & Anor [2015] EWHC 841 (IPEC) 27 March 2015 This case concerned passing off via 12 domain names registered by Mr Bowley that incorporated X‑Pole/SILKii. The court held Poleplus liable with Mr Bowley, rejecting a common‑design basis but finding vicarious liability and that Bowley acted as Poleplus’s agent in registering the domains. Summary judgment against Mr Bowley for passing off remained part of the procedural history.
Akhtar vBhopal Productions (UK) Ltd & Ors [2015] EWHC 154 (IPEC) 3 February 2015 This judgment concerns the claimant's failed attempt to amend his Particulars of Claim in a copyright action about the film "Bhopal: A Prayer for Rain" and the court's costs decisions arising from the claimant's unreasonable pleading conduct. The amendment application was dismissed as the proposed Amended Particulars were unsatisfactory, the claimant was found to have acted unreasonably, and the defendants were awarded the maximum IPEC stage costs of £3,000 (payable within 14 days); leave to re-plead was not barred but subject to a strict timetable.
Uwug Ltd & Anor v Ball [2015] EWHC 74 (IPEC) 22 January 2015 This was a damages and costs judgment arising from Uwug Ltd & Anor v Ball concerning copyright infringement damages and the consequences of competing Part 36 offers. The court awarded agreed damages of £2,859.20 (with interest) and held that a withdrawn Part 36 offer could still be taken into account when assessing costs; because the claimant should have accepted an earlier Part 36 offer, the claimant only recovered costs up to 19 September 2013 and was ordered to pay net costs of £9,710 to the defendant. Interest on damages and on costs was also determined (1% on damages from mid-point of sales until interim payment; 8% on net costs from 14 days after the Order).
Uwug Ltd & Anor v Ball (t/a Red) [2014] EWHC 4019 (IPEC) 9 December 2014 This was a damages inquiry after a finding that Mr Ball infringed UWUG’s design right by selling frames to third parties. The claimant failed to prove UWUG would have bought further frames from Mr Ball, so lost-profit claims were rejected; instead damages were awarded on the user (royalty) principle at 10% of Mr Ball’s selling price for each infringing frame sold. Parties were ordered to calculate the total and return for an interest hearing.
DKH Retail Ltd v H. Young (Operations) Ltd [2014] EWHC 4034 (IPEC) 8 December 2014 DKH sued H Young for copying parts of DKH's "Academy" gilet, claiming UK unregistered design right and unregistered Community design in (1) the front central portion plus hood and (2) the hood alone. The court found those claimed features to be original designs (not commonplace), that ownership had vested in DKH by relevant assignments, and that H Young imported and sold gilets made substantially to those designs, infringing DKH's rights (UK rights from 14 days after the letter before action and the Community designs while subsistent). The court declined to award additional damages under art.13/regulation 3.
John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd [2014] EWHC 3779 (IPEC) 21 November 2014 This was a dispute where John Kaldor alleged that a Lee Ann dress fabric (LA Fabric) copied his JK2926 fabric sample supplied to Lee Ann, raising copyright and unregistered Community design claims. The court found only a prima facie possibility of copying but accepted Mrs Vance’s account of independent design and therefore concluded there was no copying. Because copying was not established, the questions of substantial part (copyright) and overall impression (design) did not arise and both claims were dismissed.
Omnibill (Pty) Ltd vEgpsxxx Ltd & Anor [2014] EWHC 3762 (IPEC) 17 November 2014 This case concerned copies of the claimant's photographs from a South African escort site being reproduced on www.escortgps.xxx and whether those reproductions were communications to the public in the UK and whether the director, Mr Carter, was personally liable. The judge found the Escortgps site (including its South African sub‑domain) was targeted at the UK (site terms, structure and UK visitor proportions) and that the first defendant infringed UK copyright. The judge also held Mr Carter personally liable by authorisation and as a joint tortfeasor given his control, instructions and intention for the site to operate and be communicated to the public. The first defendant had entered liquidation and ceased participation.
The National Guild of Removers and Storers Ltd v Statham & Ors [2014] EWHC 3572 (IPEC) 5 November 2014 This was a damages inquiry after summary judgment for the National Guild of Removers and Storers Ltd (NGRS) for passing off by the Stathams, who had continued to describe themselves as NGRS members on directory listings after membership ended. The issue was the appropriate damages under the "user principle"—what licence fee would have been agreed in a hypothetical negotiation—and whether contractual post‑termination provisions (a £200/week figure) or the limited exposure of the listings were determinative. The court found the proper hypothetical licence was for full NGRS membership for three years, assessed annual membership at £1,800, and awarded £5,400 plus interest, with further submissions ordered on interest.
Henderson v All Around the World Recordings Ltd [2014] EWHC 3087 (IPEC) 3 October 2014 This was a damages inquiry after the court held that Henderson owned performer’s rights in the vocal on “Heartbroken” and that All Around the World unlawfully copied and released it without licence. The judge modelled a hypothetical licence and awarded £30,000 as user-principle (6% artist royalty) and a further £5,000 under Regulation 3/Article 13(1)(a) for unfair profit/promotional loss, for a total of £35,000. Claims for an account of profits, broader moral prejudice, PPL amendment and additional damages under s.191J(2) were refused or struck out. The judge rejected an account of the defendant’s profits and limited awards for non-economic harm.
Cranford Community College v Cranford College Ltd [2014] EWHC 2999 (IPEC) 19 September 2014 Cranford Community College (CCC), a state secondary school trading also as "Cranford College", sued Cranford College Ltd (CCL), a private post‑school provider, for passing off and sought revocation/assignment of CCL’s trade marks, company and domain names. The court found "Cranford College" prima facie descriptive and held CCC had not shown the name had acquired the necessary secondary meaning (goodwill) by February 2011, nor that CCL’s use amounted to a misrepresentation or bad faith. The claim was dismissed and there was no revocation or assignment of CCL’s marks, company name or domains.
OOO Abbott & Anor v Design & Display Ltd & Anor [2014] EWHC 2924 (IPEC) 4 September 2014 This judgment records an account of profits after Birss J previously found the Claimants' patent valid and infringed by Design & Display. The judge held that the inventive concept is largely embodied in the insert and that the account extends to panels incorporating those inserts; permitted deductions were a 10% scrap allowance for incorporated inserts and a £7,018 direct labour deduction for cutting slots, while apportioned general overheads and a proposed further 10% discount were disallowed. Design & Display was not permitted to rely on s.62(1) where that defence was raised late and not proven.
William Mark Corporation & Anor v Gift House International Ltd [2014] EWHC 2845 (IPEC) 22 August 2014 This case concerned two UK patents for a neutrally buoyant flying fish toy and related tail/weight control features; the defendant admitted sales but denied infringement and challenged validity. The judge found all claims of GB 2482275 valid and that the defendant's product infringed claim 1 (the court accepted the defendant's plastic strips as an "elastic element"). For GB 2483597, claims 1, 3 and 4 were held invalid for lack of inventive step but claim 2 was valid, and the defendant's product fell within the scope of claim 2. Outstanding issues about remedies and licence period were left for further argument.
Ifejika v Ifejika & Anor [2014] EWHC 2625 (IPEC) 31 July 2014 Victor sued Charles Ifejika for infringement of an unregistered design right in the undercut feature of an AMO contact-lens product; the judge found infringement limited to that undercut and estimated about 510,000 infringing units were sold. From estimated gross and net profits the court apportioned 2% to the infringing feature and awarded Victor £15,800 (after a modest deduction for packing); the possibility of a licence of right did not reduce that award.
Harman v Burge [2014] EWHC 2836 (IPEC) 29 July 2014 This was a damages inquiry after admissions of passing off and unlawful interference when the defendant took control of the claimant's holiday business website and disrupted access. The court found short-term and some limited continuing harm but rejected the claimant's multi-year loss model as speculative, awarding lost profits and mitigation costs for the year to 31 August 2011 (with a 50% temporal discount) and a total judgment of £39,701 including interest. A late amendment to plead public policy (ex turpi causa) was refused.
A Khan Design Ltd v Horsley & Anor [2014] EWHC 3019 (IPEC) 21 July 2014 This judgment concerns post-trial non-compliance after a May 2012 liability judgment in a registered designs action. The claimant failed to comply with orders for disclosure and to elect between an inquiry as to damages or an account of profits, then left the post‑judgment matters largely unattended for about two years, blaming lack of insurer funding. The court found the delays and failures were serious and constituted an abuse of process, struck out the claimant’s further pursuit of costs and the inquiry as to damages, and rejected the insurer‑funding explanation.
Wilko Retail Ltd v Buyology Ltd [2014] EWHC 2221 (IPEC) 7 July 2014 Wilko Retail Ltd sued Buyology Ltd for trade mark infringement and passing off; Buyology admitted infringement and the parties agreed a consent order based on a 6 November 2013 draft. The court held that the letters exchanged formed a binding settlement to the terms of that draft order and that settlement did not automatically bar Wilko from seeking Norwich Pharmacal disclosure. On the merits the court declined to order disclosure of Buyology's suppliers after balancing irreparable harm.
SDL Hair Ltd v Next Row Ltd & Ors [2014] EWHC 2084 (IPEC) 3 July 2014 This was a damages inquiry after certain letters and an email were held to be groundless threats of patent infringement concerning SDL's Ego Boost product. The court had to decide which losses were caused by those threats and how to quantify them. The judge found a substantial lost chance of QVC TSV sales and awarded QVC-related losses of £40,500 against Next Row and RMG (interest also ordered), but rejected claims tied to Alan Howard and other letters/emails and rejected joint liability of Cloud Nine and Gavin Rae for the SDL and QVC Letters.
Orvec International Ltd v Linfoots Ltd [2014] EWHC 1970 (IPEC) 18 June 2014 Orvec sued Linfoots claiming Linfoots had impliedly granted it an exclusive perpetual licence in photographs and that supplying images to Intex amounted to passing off. The judge found any implied licence was at most a simple non-exclusive licence (probably perpetual) and did not imply general exclusivity, and Orvec failed to establish passing off in respect of the images complained of. Accordingly Orvec's claims for breach of licence and passing off failed.
Kohler Mira Ltd v Bristan Group Ltd [2014] EWHC 1931 (IPEC) 13 June 2014 This case concerned damages after a liability judgment that found Bristan had infringed Kohler’s UK unregistered design rights in three shower models. Bristan sought to raise the s.233(1) “innocence” defence for the first time at the damages inquiry but the court refused leave and, on the merits, found the defence failed. Kohler’s lost-profits claim was held speculative and the court awarded damages by way of a reasonable royalty of 6.7% of the retail price on all 63,204 infringing units; claims for extra promotional costs and a 10% moral-prejudice uplift were rejected.
Future New Developments Ltd v B & S Patente Und Marken GmbH [2014] EWHC 1874 (IPEC) 9 June 2014 This case concerned whether the IPEC had jurisdiction over Future New Developments Ltd's entitlement claim to a UK-registered patent against B & S Patente Und Marken GmbH under the Brussels I Regulation. The court held Article 5(3) did not apply because the claim was for entitlement, not a tort; Article 23(1)(b) did not apply; but the UK IPO was a "court of a Member State" and B&S's conduct there amounted objectively to entering an appearance, so Article 24 gave the IPEC jurisdiction and the defendant's jurisdictional challenge was dismissed.
Vertical Leisure Ltd v Poleplus Ltd [2014] EWHC 2077 (IPEC) 2 June 2014 This is a summary judgment hearing where Vertical Leisure (trading as X-Pole and maker of SILKii) sued over domain names incorporating X-Pole and SILKii. The judge found the claimant had goodwill in X-Pole and some in SILKii by 12 April 2013, and entered summary judgment against Mr Bowley, holding his registration of the domains and offer to sell them amounted to a misrepresentation and instrument of fraud giving rise to passing off. Summary judgment was refused against Poleplus Limited, which was permitted to defend because joint tortfeasance and vicarious liability were not properly pleaded and there was an arguable case that its director was unaware of the registrations. The court indicated transfer of the disputed domains to the claimant should be considered and encouraged settlement/Part 36 offers to manage costs risk.
Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC) 29 May 2014 Moroccanoil Israel Ltd (MIL) claimed passing off against Aldi for selling "Miracle Oil" in packaging evoking MIL's "Moroccanoil". The court found MIL had goodwill and that Aldi had deliberately evoked Moroccanoil, but held there was no actionable misrepresentation because consumers would not be likely to take Miracle Oil to be Moroccanoil or to believe in a trade connection, and no damage was shown. The passing off claim was dismissed; related CTM proceedings were stayed.
Yellow Van Company Ltd v Driver [2014] EWHC 2135 (IPEC) 27 May 2014 This is an application by Edward Peter Rayner to set aside a default judgment and injunction obtained by Yellow Van Company Ltd alleging passing off, trade mark and copyright infringement. The defendant applied under CPR 13.3 but his application was significantly delayed and relied on limited, largely self‑serving materials; the judge found no real prospect of successfully defending the claim. The application to set aside was dismissed for delay and for absence of a compelling or corroborated defence.
Data Marketing & Secretarial Ltd & Anor v S & S Enterprises Ltd [2014] EWHC 1499 (IPEC) 16 May 2014 This case concerns the registered JUMPSTAR trade mark and claims that the defendants imported and sold battery chargers under that name. The defendants argued the mark was invalid under Art 3(1)(c) and 3(1)(b), that the application was made in bad faith (Art 3(2)(d)), and that their use was permitted under Art 6(1)(b); they also counterclaimed for groundless threats under s.21. The judge rejected the invalidity and bad faith challenges, declined the Art 6(1)(b) defence, found the trade mark valid and infringed, and found no actionable threat.
Environmental Defence Systems Ltd v Synergy Health Plc & Ors [2014] EWHC 1306 (IPEC) 1 May 2014 This was a preliminary-trial judgment on whether claims 1, 6 and 9 of EP 2 393 989 involved an inventive step when the known method of making water‑absorbent pads was used to make flood‑defence “barrage units”. The court held the skilled person should be drawn from the flood‑defence/barrage‑unit field with common general knowledge of that field, and that it would have been obvious to use the known pads and to arrange them in a porous bag as claimed. The judge found claims 1, 6 and 9 lacked inventive step and decided for the defendants on the preliminary issue.
The National Guild of Removers and Storers Ltd v Derek Milner (t/a Intransit Removals and Storage Ltd) [2014] EWHC 1117 (IPEC) 10 April 2014 This case concerns the National Guild of Removers and Storers' claims of trade mark infringement, copyright infringement and passing off against Derek Milner trading as Intransit Removals, which the court rejected, while the defendant's counterclaim succeeded in full for some registered trade marks and largely for another. The court held the defendant to be the overall winner and awarded costs to him, applying a single overall 40% discount to those costs rather than a stage‑by‑stage reduction. Permission to appeal was refused. Directions were given for filing a detailed costs schedule and an agreed Minute of Order.
Brundle v Perry [2014] EWHC 979 (IPEC) 2 April 2014 This case concerns costs, damages and a publicity order following Brundle’s successful groundless threats claim, Perry’s counterclaim, and a third‑party infringement claim by Betafence. The court applied transitional provisions so Brundle’s claim (issued before 1 Oct 2013) attracted the old Table A, while Betafence’s later Part 20 claim attracted the new Table A; overall costs of £49,645 were awarded (keeping under the £50,000 IPEC cap). The court refused to award damages for threats for lack of evidence of loss, but ordered a publication/dissemination notice to dispel commercial uncertainty, to be paid for by Mr Perry (stay pending any appeal). The court took account of Mr Perry’s particularly intemperate and improper conduct when adjusting costs.
The National Guild of Removers and Storers Ltd v Milner (t/a Intransit Removals and Storage) & Ors [2014] EWHC 670 (IPEC) 18 March 2014 This case concerned whether Mr Milner (former member of the National Guild of Removers and Storers Ltd, "NGRS") was liable for third‑party publications (a Salisbury directory advert by Thomson and a BT‑created website) that used an NGRS logo and name after his membership ended, and whether several NGRS trade marks were vulnerable to invalidity or revocation. The court found Mr Milner did not consent to, authorise, procure or otherwise incur liability for the third‑party uses and dismissed NGRS’s infringement, passing off and copyright claims against him. The court partially upheld Mr Milner’s counterclaim: two marks (TM 351 and TM 710) were revoked for non‑use and TM 722 was revoked except in Class 39; other invalidity and non‑use challenges failed.
Lilley v DMG Events Ltd [2014] EWHC 610 (IPEC) 12 March 2014 Mr Lilley, a litigant in person, sued DMG for unauthorised republication of 37 articles and sought very large damages; DMG applied to strike out the case. The court struck out the Particulars of Claim as an abuse of process because the maximum arguable damages (on the judge’s assessment) were negligible relative to the court resources the case would consume. The judge also struck out any pleaded tort of "unlawfully resisting the infringement claim" but declined at this stage to strike out negligent‑misstatement allegations.
FH Brundle (A Private Unlimited Company) v Perry [2014] EWHC 475 (IPEC) 6 March 2014 This case concerns groundless threats of patent infringement made by Mr Perry to FH Brundle in three letters and whether Brundle was a person aggrieved, plus whether Brundle's supplied Nylofor Beam bracket infringed claim 1 of Mr Perry's patent. The court held the October, November and December 2012 letters amounted to threats and that Brundle was a person aggrieved, so Brundle's threats claim succeeded. On claim construction and a feature-by-feature factual comparison, the Nylofor Beam bracket did not fall within claim 1 (failing multiple specified claim features for both mesh and wooden fence uses), so Mr Perry's counterclaim and Part 20 claim were dismissed.
MB Garden Buildings Ltd v Mark Burton Construction Ltd & Anor [2014] EWHC 431 (IPEC) 28 February 2014 This case concerns MB Garden Buildings Ltd's application for retrospective validation or extension of time for service of proceedings on Mark Burton after contested attempts at service and an earlier order recording Burton “was not served.” The court rejected MBGB’s applications under CPR 7.6, 3.9, 6.15 and 6.27, finding insufficient evidence of promptness and that all reasonable steps had been taken, and declined to overturn or neutralise the earlier finding that Burton was not served. The claimant’s requests for alternative or retrospective service were dismissed and the application refused.
Cranford Community College v Cranford College Ltd [2014] EWHC 349 (IPEC) 17 February 2014 This case concerned whether the CPR 31.5 requirement to serve disclosure reports applies in the IPEC and whether the court could strike out a Defence for failing to serve one. The court held CPR 31.5 does not apply in the IPEC and there is no obligation to serve disclosure reports there. The claimant’s application for an unless order striking out the Defence for failure to serve a disclosure report therefore failed.
Elsworth Ethanol Company Ltd & Anor v Hartley & Ors [2014] EWHC 99 (IPEC) 3 February 2014 This case concerned ownership of patent rights derived from GB 890 and whether Professor Hartley, Dr Yazdi and Dr Javed were de facto directors of the 2002 Company who breached fiduciary duties or were contractually obliged to ensure the 2002 Company was named as applicant. The judge found the meetings were project discussions, not company board meetings, the individuals were not de facto directors, and there was no concluded contract obliging the 2002 Company to be the applicant. The claim against Ensus failed on both fiduciary and contractual grounds; earlier settlements resolved claims against the individuals.
Bocacina Ltd v Boca Cafes Ltd & Ors [2014] EWHC 26 (IPEC) 20 December 2013 This judgment concerns costs following a passing-off victory for Bocacina Ltd, where the court addressed late-filed defendants' costs submissions, an earlier December 2012 settlement offer by defendants that omitted costs, and the reasonableness/proportionality of claimed costs under IPEC limits. The court admitted the late submissions but treated non-compliance as adverse conduct, assessed stage-by-stage reductions (disallowing exceptional photocopying claims and capping certain items), and treated the early offer as justifying recovery at 100% for costs up to the offer and 50% thereafter. The judge awarded Bocacina a total of £10,750, to be paid by the defendants within 28 days, jointly and severally.
Malcolm -Green v And So To Bed Ltd [2013] EWHC 4016 (IPEC) 16 December 2013 The claimant photographer issued proceedings for copyright infringement but failed to serve the claim form within the four‑month period. A district judge granted a without‑notice extension, but the High Court set that extension aside and struck out the claim because no good reason or exceptional circumstances justified late service and the defendant would be deprived of a limitation defence. The court noted service of correspondence notifying issuance does not substitute for formal service of the claim form.
IPC Media Ltd v Media 10 Ltd [2013] EWHC 3796 (IPEC) 6 December 2013 This case concerned competing long-standing uses of the sign "Ideal Home" by IPC Media (magazine and some retailing) and Media 10 (the Ideal Home Show and related retailing). Media 10 challenged IPC's registration and IPC sued for trade mark infringement by use of "Ideal Home Show." The court held the registration valid (the mark had acquired distinctiveness for the sector) but dismissed Media 10's section 5(4) passing-off attack and IPC's infringement claims on the facts: concurrent historical use and overlapping reputation meant the registration stood but did not support restraint of the other's middle-spectrum retail activities or establish actionable infringement.
Phonographic Performance Ltd v Hamilton Entertainment Ltd & Anor [2013] EWHC 3801 (IPEC) 3 December 2013 This judgment corrects an earlier error about which fixed-costs scale applied: the pre-1 October 2013 Patents County Court (PCC) scales govern this action by virtue of CPR Update 66 paragraph 25, not the post-1 October 2013 IPEC scales. The parties agreed a revised costs table under the PCC scales, the court accepted reductions to specific awards and removed a separate court-fees award, and the corrected sum payable by the defendants to the claimants is £42,316.29 to be paid within 14 days.
Taylor v Maguire [2013] EWHC 3804 (IPEC) 3 December 2013 This IPEC judgment concerned a papercutting artist's claim that a Facebook seller copied several of her works and her recognisable "topiary" style. The court found the Claimant's papercut works to be original and owned by her, that the Defendant had created the contested works with prior access to the Claimant's images, and that the similarities amounted to copying of a substantial part in respect of each pleaded work. The Defendant's s32 educational defence failed; the Claimant was awarded an injunction, destruction of infringing works, modest damages and costs.
Niche Products Ltd v MacDermid Offshore Solutions LLC [2013] EWHC 3540 (IPEC) 14 November 2013 This case concerns Niche Products' malicious falsehood claim against rival MacDermid arising from a June 2012 rebuttal letter which described Niche's comparative technical report as "misleading and erroneous." The court refused to strike out the malicious falsehood claim in whole, holding it was at least arguable that MacDermid's statements targeted Niche's business material, but struck out pleaded heads of damage for reputational loss and wasted management time while leaving loss of sales of Pelagic 100 as a tenable pecuniary head. The claimant was ordered to amend particulars to remove certain formulations and to particularise the mechanism of pecuniary loss.
Redcrier Publications Ltd & Anor v Redrup Publications Ltd (t/a Complete Care Training) & Anor [2013] EWHC 3481 (IPEC) 14 November 2013 This case concerned Redcrier's claim that Complete Care Training (CCT) copied and sold its care-home training manuals and used a photograph from Redcrier's materials in marketing; CCT admitted infringement of the manuals while Mr Redrup's personal liability was reserved for trial. The court ordered interim payments under CPR 25.7 against CCT only — £750 to Mr Seville for the photograph and £36,700 to Redcrier for lost sales and updates — and awarded provisional costs of £18,029.95 to the claimants. Issues of Mr Redrup's liability and libel arising from a flyer were left for trial.
Utopia Tableware Ltd v BBP Marketing Ltd & Anor [2013] EWHC 3483 (IPEC) 12 November 2013 Utopia sued BBP claiming that BBP's Aspire beer glass copied Utopia's Aspen glass, asserting UK unregistered design rights and UK registered design no. 4021276. The court found that design-right subsists in several pleaded features, that Utopia owns the rights, that the registered design is new and has individual character, and that BBP's Aspire infringed the unregistered design in the external profile feature and infringed the registered design. Two Claimant witnesses admitted fabricating emails, leading to a contempt referral, but this did not prevent the court finding for the Claimant on subsistence, ownership and infringement. Prior-art attacks by the Defendants were largely unsuccessful.
Phonographic Performance Ltd v Hamilton Entertainment Ltd & Anor [2013] EWHC 3467 (IPEC) 11 November 2013 PPL sued for public performance of sound recordings; the claim was transferred to the IPEC and was settled shortly before trial by the defendants' acceptance of a Part 36 offer. The court conducted a paper summary assessment of costs, applying IPEC/PCC costs rules and current CPR stage limits, disapplying the IPEC cap only for costs relating to a disclosure application where the defendants behaved unreasonably, and reducing trial-stage costs to two thirds because the trial did not take place. The claimant was awarded £44,967.79.
Manvers Engineering Ltd & Anor v Lubetech Industries Ltd & Ors [2013] EWHC 3393 (IPEC) 7 November 2013 This case concerned whether Lubetech's Site Mat frames combined with its Smart Liner liners infringe Manvers' patent for a portable oil-collecting mat comprising an impermeable base layer with fixed, self-supporting oleophilic walls. The court found the patent valid but not infringed: the liners alone and the assembled products did not meet the claimed integers (notably a self-supporting oleophilic wall "comprising a layer of oleophilic material" and an impermeable base, many versions of which had perforations). Attacks based on anticipation (Chwala), obviousness and added matter all failed.
Powell v Turner [2013] EWHC 3484 (IPEC) 24 October 2013 This judgment records refusal of the Defendant's renewed application for permission to appeal on the validity/bad faith issue in a dispute over ownership and use of a band name. The judge refused permission because any arguable legal error about treating bad faith separately from legal ownership was immaterial given the primary finding that the Claimant was the actual legal owner of the goodwill and honestly and reasonably believed himself to be sole owner. Permission to appeal was refused.
Powell v Turner [2013] EWHC 3242 (IPEC) 24 October 2013 This case concerned ownership and use of the band name WISHBONE ASH: Powell owned CTM No. 742684 and claimed Turner’s use of "Martin Turner's Wishbone Ash" and related domain names infringed Arts 9(1)(b) and 9(1)(c) CTMR. The court found Powell’s CTM application was not made in bad faith, that Powell was sole owner of the goodwill as at February 1998, and that Turner’s signs were similar and caused a likelihood of confusion, infringing under Arts 9(1)(b) and 9(1)(c). Turner’s counterclaims for revocation for bad faith and for an account of profits were dismissed.
Bocacina Ltd v (Boca Cafes Ltd (Rev 1) [2013] EWHC 3090 (IPEC) 14 October 2013 This case concerned Bocacina Ltd's claim that defendants trading as Boca Bistro Café in Bristol were passing off the Bocabar/Boca goodwill and that the defendants' UK trade mark BOCA BISTRO CAFE should be invalidated. The judge found Bocacina had substantial (primarily local) goodwill, that the defendants' use was likely to mislead a significant number of people and therefore constituted passing off, and declared the registration invalid. Provisional injunctive relief was drafted and directions given for further submissions on relief and costs.

No cases matched your search.