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Intellectual Property Newsletter – Autumn 2013

We are pleased to present Autumn IP update from the Clarke Willmott IP team.

As always, this newsletter will provide a brief overview of some of the key developments in the IP field over the last quarter. We hope that you enjoy it!

If there are any issues you wish to discuss further, please contact Roy Crozier or Susan Hall.

Trade mark

IPO’s response to IP translator

The UK IPO has provided some useful guidance on what indications of goods and services are too vague to use in a trade mark application.

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Passing off

Rihanna Victorious in Top Shop Passing Off Claim

The High Court has confirmed in a recent judgment that the sale by international clothing group Topshop of t-shirts bearing a photograph of the well-known pop star Rihanna without her approval amounted to passing off. Although this has prompted a mass of press coverage about whether this heralds a new “image right” for celebrities, the case when examined closely is squarely in line with the existing law of passing off.

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A further blow to counterfeiters

A new and improved regime to tackle the importation of counterfeit goods in the EU has been introduced. The regime for dealing with suspected counterfeit and pirated goods at the EU border is changing with a new Customs Enforcement Regulation. The new regulation came into force on 19 July 2013, although its substantive provisions will not take effect until 1 January 2014.

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Consequences of not staying concurrent patent proceedings: can damages be recovered when the patent is revoked?

Despite previous authorities, a recent Supreme Court decision in Virgin Atlantic Airways Limited -v- Zodiac Seats UK Limited avoided the potentially absurd result of a defendant having to pay damages for infringing a patent whose relevant claims were invalidated subsequently. The Court found that the defendant did not have to pay damages where the patent was revoked.

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Confidential Information

False start costs Force India

In a recent case the Court of Appeal considered the extent of breach of confidence (both contractual and equitable) and the level of damages that could be claimed by a Formula 1 team for the misuse of its confidential information. Force India could only obtain a very small award of damages compared to the vast sums of money which are spent in Formula 1. However, the Court stressed that this was not as a result of a general restriction on the recovery of damages, as it was more due to the way that the claim was drafted. The Court also looked closely at the contractual clauses which it was reluctant to depart from as the parties had freedom to contract.

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Information Technology

Is BYOD a disaster waiting to happen?

Europe is rapidly outstripping the US in bring your own device (BYOD) take-up where employees are encouraged to use their own smartphones, tablets and other IT equipment for business purposes. However, businesses may be exposing themselves to serious risks by rushing into BYOD without fully considering the legal and commercial implications, especially with regard to data security.

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