Friday fantasies

Have you checked the IPKat's list of Forthcoming Events? There's plenty coming up, as you can see from the side-bar on the IPKat's front page. It gets a bit quiet over Christmas, but January's only just around the corner.


Are you IP-savvy, as fit as a fiddle and always carry an umbrella in case it rains? If so, the United Kingdom's IPO has a job for you as Senior Policy Advisor, International Policy on IP, Public Health and Climate Change. The post is based in London, not Newport, so you can't escape the IPKat's attention by blending in with the local sheep ... Duties include representing the IPO

"... in relevant international meetings for example at the World Health Organis[z]ation and the World Intellectual Property Office [is this a new competitor for the World Intellectual Property Organization, or perhaps a breakaway group of dissidents?]. The job will involve regular lobbying of inter-governmental contacts in Europe and elsewhere, and meeting with key players [it's those pianists again!] from non-governmental organisations and the pharmaceutical industry. It will be particularly important to build good relationships with key stakeholders like the pharmaceutical industry; ...".

The job is yours and the salary ranges from £28,855 to £36,527 (plus a London Weighting Allowance of £3,200). Or you can drive a tube train on the London Underground for £40,000.

A little bird tells the IPKat that, following the ruling of the Court of Justice of the European Communities in the smell-alike trade mark dilution dispute in Case C-487/07 L’Oréal SA, Lancôme parfums et beauté & Cie SNC and Laboratoire Garnier & Cie v Bellure NV, Malaika Investments Ltd, trading as ‘Honey pot cosmetic & Perfumery Sales’ and Starion International Ltd (see the IPKat's comment here; Dirk Visser here; Mats Björkenfeldt here), the case is returning to the Court of Appeal, England and Wales, on 1 or 2 March 2010. The team lined up for this purpose is Lord Neuberger MR, Lady Justice Arden and Lord Justice Sullivan. How exciting, says the IPKat! But I wanted Lord Justice Jacob, wails a distraught Merpel ...

Slightly disconcerted, the IPKat discovers via YouTube that he is not alone. There is, it seems, another IPKat out there, or rather an IPKAT ...

In answer to a question that people keep asking him, the IPKat does not yet know the exact form of the questions which the Court of Appeal, England and Wales, is proposing to refer to the Court of Justice of the European Communities in Nokia v HMRC (see earlier posts here and here), but you can be sure that, once he does know, he'll share the information with all his readers.

The IPKat's informat Joris Peels (Shapeways) has tipped him off, via Edward Tufte, that Microsoft has applied for a US patent for sparklines. Edward -- reputedly the inventor of sparklines, asks, what can I do?


While her enthusiasm for fashion is matched only by her unfathomable depth of knowledge of it, Merpel has never felt sufficiently confident to nominate men's underpants as her special subject for Mastermind. Having said that, she's always willing to learn and found the Guardian's report of a recent Debenhams survey on male under-apparel ("What do men's pants say about them?") quite engrossing.

Right: inexperienced male purchasers of underwear look in vain for designer labels on garments that aren't big enough to have room for them.

The headline itself stopped her dead in her tracks: we now have Intelligent Clothing -- but pants that talk? Do they merely respond to polite inquiries as to the comfort and convenience of their occupant, or do they perhaps initiative dialogue at times of stress or malfunction? Tearing herself away from this speculation, Merpel discovered from the article that

* the average 23-year-old allegedly buys up to 31 pairs a year "of all styles, tightness and colours";

* even 40-year-olds manage a dozen pairs in as many months;

* once a male reaches 44, by which time he will have purchased an estimated 284 pairs, he presumably surrenders or delegates the task to the most appropriate woman in his life.

Statistics like this are incredibly useful for the clothing industry. If nothing else, in a market where suppliers are plentiful and profit margins -- unless you're lucky -- rock bottom, it helps to know how many items to manufacture for your intended market. Pitching a branded product to current loyal customers and future converts can also be improved with this knowledge: 'his and hers' packages might be worth a try for the more mature customer, perhaps. Merpel's not surprised, though, that men buy so many pairs of underpants. They could reduce this number very substantially by the simple expedient of remembering where they last left them.

Internet-hosted prior art and proof of publication: UK not bound by EPO level of proof

In a recent hearing concerning a UK patent application, Ranger Services Ltd's application, BL O/362/09, 17 November 2009, Hearing Officer Lawrence Cullen was faced with a question relating to the status of cited prior art which had been obtained from an internet archive. Rejecting the application before him, which was for a system of using an automatic number plate recognition system to detect cloned vehicle number plates, he considered that the current European Patent Office guidelines [see earlier IPKat post here] would suggest that the cited prior art should be taken into account. In doing so, he rejected the applicant's submission that the EPO's guidelines demanded proof beyond reasonable doubt as to the date on which the cited prior art was made available to the public. While it was relevant and appropriate to take note of EPO practice, Dr Cullen said, it wasn't binding in the United Kingdom, where the civil proof merely required that facts be established on the balance of probabilities:

"While it is relevant and appropriate for me to take note of EPO practice in such matters, it does not bind me in the way that UK law does. The maxim of the English Courts in civil matters is that the correct assessment to be made is on the “balance of probabilities”, whereas in criminal matters, it is one of “proof beyond reasonable doubt”. In this case, the recent EPO note would appear to support that this view, despite Mr Hirsz’s argument to the contrary, and I must therefore decide the issue on “the balance of probabilities”" (para.47).

The IPKat notes that, even if the cited prior art had been excluded, the patent application would still have failed under the Patents Act 1077, s.1(2) since the invention concerned the performance of a mental act and/or a computer program as such, both of which are excluded subject-matter everywhere in Europe. Merpel wonders, what is the standard of proof in other jurisdictions? There really should be consistency as between patent-granting regimes and this is just the sort of question where a conveniently arbitrary ruling for all might be handy.

What to do if your vehicle has been cloned here

IP rights "not the driver" for vegetable varieties innovation

While most felines have little affection for vegetation, the IPKat is something of an exception. He has just been perusing "Patents and Vegetable Crop Diversity", a US research paper by Paul J. Heald (Allen Post Professor of Law, University of Georgia School of Law) and his colleague Susannah Chapman of the same university's Department of Anthropology.

According to the abstract:

"The intellectual property system does not seem to drive the rate of innovation in the market for vegetable varieties. Drawing on a unique data set of all plant patents, plant variety protection certificates, and utility patents among 42 vegetable varieties, this short paper examines the relationship between intellectual property rights in vegetable crops and the diversity of commercially available varieties. Three findings are of particular interest:

(1) Only 3.8% of varieties available in 2004 were ever subject to protection under patent law or the Plant Variety Protection Act;

(2) More than 16% of all vegetable varieties that have ever been patented were commercially available in 2004; and

(3) In 2004, approximately 4.5% of protected, or once protected, varieties consisted of inventions that were at least twenty years old.

Although intellectual property rights appear to be an insignificant part of the crop diversity story, they exhibit much higher commercialization rates than expected (the conventional wisdom suggests a 5% rate), and they exhibit a slower rate of obsolescence than expected. Complete data on individual vegetable types are provided, and the sui generis nature of corn is also discussed".

The IPKat doesn't just like vegetables; he also appreciates research using real-world data that flies in the face of the sort of conventional wisdom that lives on the library shelves. Keep it up, Paul and Susannah!

You can get this paper via the SSRN website here

The IPKat's earlier post on Paul and Susannah''s research here

Why cats should eat some vegetables here

Can cats digest vegetables? Click here

The Digital Economy Bill - will it come in time?

Nick McDonald of Browne Jacobson has written to the IPKat with the following:

"Her Majesty in yesterday's Queen's Speech said the following: "My Government will introduce a Bill to ensure communications infrastructure that is fit for the digital age, supports future economic growth, delivers competitive communications and enhances public service broadcasting".

The Digital Economy Bill will:

• Reform the law on online copyright infringement - by creating duties on Ofcom to require ISPs to take action against identified file sharers, and giving Ofcom and/or ISPs the power to disconnect persistent file sharers;
• Introduce "changes to copyright licensing" - the exact detail of which is as yet unclear;
• Give Ofcom powers to appoint and fund Independently Funded News Consortia - essentially aimed at encouraging the proliferation of independent news media;
• Give Ofcom new duties to promote investment in infrastructure and public service media content, and to carry out an assessment of the UK’s communications infrastructure every two years;
• Support investment in next generation technologies through spectrum modernisation - pretty technical; all about bandwidths, how many of them are available, and who owns them;
• Update the regulatory framework to make moves to digital switchover for radio possible by 2015;
• Update Channel 4's functions to encompass public service content on all media platforms - online as well as television;
• Protect children by making age ratings compulsory for all boxed video games designed for those aged 12 or above.

There is no mention of whether the Bill will echo the Government's Digital Britain Report of June 2009 in seeking to "modernise" (Therefore presumably extend) the fair use copyright infringement exceptions.

Clearly, the main IP change will be in relation to tackling file sharing. The No.10 website describes the new legislation being aimed at:

"tackling widespread copyright infringement via a two-stage process. First by making legal action more effective and educating consumers about copyright on-line. Second through reserve powers, if needed, to introduce technical measures, such as disconnection".

There has been a lot of commentary on this issue in the media over the last few years: Is it achievable? Will it work? Is it desirable? Either way, it appears the Government is going to try. It may not solve the problem immediately, but it will certainly strike a major blow against illegal downloading."

The IPKat thanks Nick for his thoughts, but is not sure himself whether the Bill will even come to pass, given that this government has only a few months left to run and is very unlikely to be re-elected. As for "striking a blow against illegal downloading", the IPKat is even less sure. The whole thing seems to be more like an attempt by the music industry to force through some very ill-thought-through legislation that will do more harm than good (if it does any good at all). For more on the issue, the IPKat would like to point his readers to the recent writings of Cory Doctorow and the Open Rights Group, both of whom have a lot more to say on the subject.

More sledgehammers here; more nuts here.

"Would you care for a glass of CANNABIS, Sir?"

Drink and drugs were the main preoccupation of some of Europe's finest legal brains this morning, when the Court of First Instance rendered its decision in Case T‑234/06, Giampietro Torresan v Office for Harmonisation in the Internal Market, Klosterbrauerei Weissenohe GmbH & Co. KG, a decision which some of the IPKat's readers may feel to have been reached while under the influence of one or other of those popular commodities.

Over ten years ago, in February 1999, Giampietro Torresan applied to register as a Community trade mark the word CANNABIS for (i) ‘Beers’ (Class 32); (ii) ‘Wine, spirits, liqueurs, sparkling beverages, sparkling wine, champagne’ (Class 33) and (iii) ‘Providing of food and drink, restaurants, self-service restaurants, public houses, ice cream parlours, pizzerias’ (Class 42). The mark was registered in April 2003. Two months later, Klosterbrauerei applied for a declaration that the mark was invalid as regards the alcoholic beverages in Classes 32 and 33. The Cancellation Division agreed, concluding that CANNABIS was descriptive of the goods in question. In 2005 the Board of Appeal dismissed the appeal: in its view (i) the word ‘cannabis’ designated, in everyday language, either a textile plant or a narcotic substance and (ii) 'cannabis' was, for the average consumer, a clear and direct indication of the characteristics of goods in Classes 32 and 33.

The Court of First Instance dismissed Mr Torresan's appeal.

* It noted that cannabis has three meanings: (i) a textile plant the market in which is regulated within the Community framework and the production of which is subject to very strict legislation as regards the content of tetrahydrocannabinol (THC), the active ingredient of cannabis; (ii) a narcotic which is prohibited in a great number of Member States; (iii) the possible therapeutic use of which is under review. Further, when referred to as ‘hemp’, cannabis is used in a non-psychotropic form in the food sector in oils, herbal teas, pasta, bakery and biscuits, alcoholic and non-alcoholic beverages etc.

* The Court then summarised the principles under which a sign is deemed descriptive, i.e. where there is a sufficiently direct and specific relationship between it and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question. The descriptiveness of a sign may be assessed only in relation to the relevant public’s understanding of that sign and in relation to the goods or services in question.

* The relevant public in this case consisted of the average consumer of that type of goods.

* The key question here is whether the average consumer, who is reasonably well informed and reasonably observant and circumspect, may think, merely on seeing a beverage which bears as a trade mark the word sign CANNABIS, and no other additional element, that the mark at issue constitutes a description of the characteristics of the goods in question.

* There is a material link between the sign CANNABIS and certain characteristics of the abovementioned goods. Cannabis is habitually used in the manufacture of numerous foodstuffs, including beer and certain beverages.

* When he sees an alcoholic beverage or a beer bearing the trade mark CANNABIS, the average Community consumer will immediately perceive, without further thought, a description of the characteristics of cannabis, it being one of the ingredients which may be used as a flavouring in its manufacture.

* As the Board of Appeal pointed out, ‘those who purchase a beer bearing the trade mark CANNABIS will very probably do so because they are convinced that it contains cannabis and are attracted by the possibility of obtaining from the beverage the same, or at the very least similar, sensations as they obtain from the consumption of cannabis in another form’. Thus the fact that cannabis is a components of the drink constitutes a characteristic which determines the decision the consumer makes when he effects his purchase and therefore constitutes a fundamental characteristic of the goods for which the mark was registered, which is taken into account when a choice is made by the target public.

The IPKat is a little surprised by all of this. While he is not worldly-wise in the ways of cannabis, he has always enjoyed a good beer or three and greatly appreciates his wines and whiskies too. It would never have occurred to him that the presence of the word CANNABIS on the bottle indicated that its purchase and consumption would contain a promise of the sensation of taking cannabis, any more than it would occur to him that a bottle bearing the words BULLS' BLOOD would offer him the buzz of consuming that particular liquid.

Merpel says, I've occasionally heard people say they fancy a BLUE NUN ...

Why cats don't like cannabis here and here

R'n'D: the biggest spenders

The 2009 EU Industrial R&D Investment Scoreboard gives some interesting facts and figures on the biggest spenders on research & development - R&D that will, hopefully, also lead to some IP.

From the press release:

Worldwide corporate R&D investment increased by 6.9% in 2008, in spite of the economic crisis. With an 8.1% increase, the R&D investment growth of EU companies', defined as companies having headquarters within the EU, is significantly higher than US ones for the second year, at 5.7%, and Japanese ones, at 4.4%. Two EU companies feature in the top ten: Volkswagen in the 3 rd place with an R&D investment of €5.93 billion and Nokia in the 8 th . The world's biggest investor in R&D was Toyota Motor, with €7.61 billion. The report also shows that companies from emerging countries have the highest R&D investment growth.

Two EU companies, Volkswagen and Nokia, are among the top 10 R&D investors; five from the US, including Microsoft, and General Motors, Pfizer; and one from Japan, Toyota, at the top position (see graph above; despite the title, only the 20 largest investors are shown here. Click for enlargement).

US companies have reinforced their leading position in the high R&D intensity sector, by increasing their investments by 35% in the last four years against only 13.6% in the EU companies. While the total US high R&D intensity sector is twice the size of the EU one in terms of R&D investment, EU companies in this sector show similar performance than US competitors in terms of R&D and related indicators.

Have you ever seen two less likely allegedly similar marks?

Although he is generally reluctant to criticise individual IP rights owners for seeking to protect their market position, and equally reluctant to criticise those members of the IP professions who represent them, there are times when the temptation to do so becomes very great.

One such occasion when the temptation became fairly strong was today, however, when on reviewing the recent crop of appeals to the Court of First Instance of the European Communities regarding Community trade mark law he came across Case T‑162/08, Frag Comercio Internacional, SL v Office for Harmonisation in the Internal Market, Tinkerbell Modas LTDA.

Tinkerbell applied to register as a Community trade mark the sign on the right. Frag opposed, citing a likelihood of confusion with the mark on the left, on account of their similarity and the identity or similarity of its goods to the goods and services for which Tinkerbell had applied to register its mark. If you look very carefully you can just about see the words "by missako" in a scribbly sort of script at the bottom of Tinkerbell's sign.

The Opposition Division, the Board of Appeal and the Court of First Instance were all united in considering that the respective sign and mark were not hugely similar. The miracle is that it took the Court some 22 paragraphs of patient, formulaic judgment to explain that the marks were dissimilar.

The IPKat has seen some dissimilar marks touted as being similar over the years, but he doesn't think he has ever seen so egregious a case of dissimilarity as this. In case he was mistaken, he took the trouble of showing the pair of them to some friends and colleagues, each of whom was totally puzzled as to how anyone could have thought them similar. Merpel adds, what's also annoying is that Frag applied to the court to reject the application for registration, even though this plea has been ruled inadmissible in a string of cases going back many years. She feels that this exercise was a waste of someone's time, effort and money and hopes that futher appeals to the Court of Justice, the United Nations and the Celestial Tribunal will not be forthcoming.

Leo v Sandoz - follow the instructions or lose the case

According to UK and European patent law, an invention in a patent claim is not new if what is claimed has been made available to the public before the priority date of the application. There may, for example, be a clear statement in a prior published document that describes a chemical compound and how to make it, which would make a claim to that particular compound not novel. If, however, there is some doubt about whether the actual form of compound claimed would result from the described process, it needs to be determined whether following the process would inevitably arrive at the claimed compound.

This was the situation in Leo Pharma v Sandoz EWCA Civ 1188, which was decided by Lords Justice Jacob and Patten yesterday (17 November), on appeal from Floyd J's decision in the High Court earlier this year ([2009] EWHC 996 (Pat)). The case related to the chemical compound calcipotriol, a vitamin D analogue used for the treatment of skin conditions. Sandoz had been attempting to invalidate Leo's patent EP0679154 for calcipotriol monohydrate, which the patent claimed was "a new crystalline form of calcipotriol - with superior technical properties e.g. in the manufacture of crystal suspension formulations, and with superior stability properties". Whether these particular advantages were true or not was not in issue. What was in issue (among other things) was whether this crystalline form would be the inevitable result of following the instructions for making calcipotriol found in a previously published document, WO8700834.

Sandoz's task seemed therefore to be straightforward (at least to this untrained Kat): simply follow the instructions in the document and show that calcipotriol monohydrate would result. Unfortunately, this is not what Sandoz did. Instead of using the starting materials that were specified in the document, Sandoz used a material supplied by Teva that was developed only after the document was published, and instead of ensuring a seed-free environment Sandoz seeded the reaction with monohydrate crystals. These differences were sufficient to at least sow some seeds of doubt as to whether, if the instructions had been followed to the letter, the claimed compound would actually result.

Although Sandoz bravely argued that the changes would not make any difference because monohydrate crystals would be produced anyway, the judge at first instance was not convinced and found that the claimed invention was not anticipated. As only points of law were on the table for discussion at the court of appeal, Sandoz were unable to get any new decision on the facts, and failed to persuade the appeal judges that Floyd J had made any error in law. Jacob LJ summarised the situation as follows:

"One would have thought that the task of proving this would be undertaken in a straightforward way. I set it out when at first instance in Synthon's Patent [2003] RPC 33 at [57]:

'Given the "inevitable result" branch of the law of anticipation (see below) one might have thought (a) that a team of ordinary ability might have been engaged (one is concerned with the ordinary skilled man or team, not world champions) and (b) that the team concerned would simply have been given the Synthon patent and asked to carry out its teaching to make paroxetine mesylate crystals.'

Experience shows that some parties attacking patents simply do not follow this straightforward path. Instead they depart from the prior art. Then, as here, an argument starts about the nature of the departure and whether it mattered. For the life of me I cannot understand why they do this. It inflates the costs and time, and seldom if ever does the defendant any good" (paragraphs 17-18).

Sandoz's attempts at having the finding of lack of anticipation overturned therefore failed, and the appeal was dismissed.

The IPKat wonders how, given the long-running nature of this case (see the IPKat's previous posts here and here), Sandoz had failed to find the time and resources to run an experiment that simply followed the instructions correctly. The IPKat can see why, if the experiment had been run properly and had not shown the desired result, Sandoz would not want to make this known, but cannot understand how they could have thought that altering the experiment in a way that made it look as if it was fixed to get the result they wanted (by seeding with crystals of the type required) would actually succeed in getting past the critical eye of a patent judge. As Jacob LJ suggested, all this merely seems to have had the effect of further inflating costs, which presumably Sandoz will now have to pay for.

Wednesday whimsies

Official Proclamation: for the sake of consistency and the avoidance of confusion, the IPKat and Merpel do hereby decree that the round-up features that appear on this weblog on Mondays, Wednesdays and Fridays shall henceforth be known and described as 'Monday Miscellany', 'Wednesday Whimsies' and 'Friday Fantasies' respectively. Until they next either forget or change their minds, that is ...


Only six days to go till this year's Copying Without Infringing conference (click here for details). IPKat team member Jeremy is in the chair and there are some star performers on offer. If you've never been to one of these events before, do give it a try: the mixture of up-to-date information, stimulating speakers, enthusiastic debate and a decent lunch have proved very popular on previous occasions and organisers CLT look forward to doing the same again.

The IPKat solemnly thanks his good friend Ruth Soetendorp for drawing his attention to this article, written by the comedian Dave Schneider in last weekend's Sunday Times on the subject of Joke Theft. Some examples of stolen humour appear here [IPKat Advisory: not all these jokes are suitable for sensitive readers; Merpel Advisory: not all these jokes are funny ...]. On a more serious note, Ruth wonders what the test of theft/infringement is. Good point: does one indulge in a side-by-side review? A global comparison, perhaps? Or does one ask if the later joke takes the pith and marrow of the earlier one?

The IPKat's datonomite friend Rosie Burbidge informs him that the appeal for cookie recipes for the Datonomy data protection weblog is progressing nicely. Recipes are arriving from locations as disparate as Anglesey and Australia: the total received so far is 9. If you'd like to have your cookie considered for inclusion in the Datonomy Cookie Cookbook, please email Rosie here.

Though he doesn't often post items from The Onion, the IPKat has a tendency to find them quite amusing, particularly when they have an intellectual property flavour to them -- like this treatment of the Yankees Suck theme. The Kat thanks his good friend Miri Frankel (Beanstalk) for yet another great lead!


A press release from WIPO yesterday announced the launch by that organisation of an enhanced online patent information service that promises to improve public access to information on patents filed and granted around the world. This enhancement relates to PATENTSCOPE, which currently hosts data on more than 1.6 million international patent applications and which has now been extended to include several collections of national and regional patent information.


Recently published: the November 2009 issue of the Journal of Intellectual Property Law and Practice has been out for a week or so. You can read the editorial ("Community design and design community") here, check out its contents on the JIPLP official website or browse the value-added benefits of the recently-launched weblog.

Taking umbrage with Umbro, or a strange way to license a sports brand

It's amazing how you can go for ages without coming across a good case involving brand licensing issues, then suddenly two come along in quick succession. Having only recently reviewed the logo sponsorship deal in Force India v Etihad (see earlier post here), the IPKat finds himself perusing Hudson Bay Apparel Brands LLC v Umbro International Ltd [2009] EWHC B28 (Ch), a Chancery Division (England and Wales) decision of Deputy Judge Mark Herbert QC, dating back to 4 November 2009.

Umbro, an English company [owned by Nike] which enjoyed the fruits of an international licensing business based principally on football products, owned the UMBRO and 'double diamond' brands (see illustration, above right). Umbro's Delaware-based subsidiary handled its business in the United States. Hudson Bay, a small US company, made and sold branded apparel. In 2006-7 Umbro granted two separate licences, one to Dick's Sporting Goods -- a major retail company -- and the other to Hudson Bay. These licences permitted the licensees to sell soccer-based clothes. Hudson Bay was licensed to sell 'off-field' leisurewear for spectators, while Dick's was licensed to sell 'on-field' clothing for use by fans on the field of play. Neither Hudson Bay nor Dick's was licensed to sell 'teamwear' for use by actual teams in competitive matches, since Umbro handled teamwear itself, without the intervention of licensees. The licensees apparently enjoyed a large degree of freedom in terms of being able to design their own products, which were then submitted to Umbro for its approval.

In these proceedings Hudson Bay sued Umbro for specific performance, alleging that Umbro was in breach of the terms of an exclusive licence granted to it by by permitting Dick's to market certain 'off-field' items and had hindered it from exploiting its 'off-field' licence in breach of an implied duty of co-operation which, Hudson Bay claimed, Umbro owed it. Umbro said it had acted within its rights under the licensing contract and that the material marketed by Dick's had only been 'on-field' wear. Umbro also counterclaimed that it was actually Hudson Bay that was in breach by marketing 'on-field' wear in the form of 'pocketless soccer basics' -- shirts and shorts made without pockets but which resembled items used on the field of play as 'teamwear'.

The Deputy Judge ruled as follows:

* Rather than ask what the parties intended, the proper approach was to try to identify objectively what a reasonable person, having regard to all the background knowledge which the parties had, would have understood them to have intended when using the language of the licence itself.

* In the licence, 'field of play' meant the actual field of play in a game of soccer, including informal and practice games. On this basis, clothes specifically intended for that sort of use were the clothes excluded from Hudson Bay's licence.

* On the evidence, by letting Dick's market certain garments that fell within the scope of 'off-field' wear, Umbro was in breach of the exclusive licence. However, the 'pocketless soccer basics' (which crossed the line between off-field and on-field wear) were not 'off-field' wear per se and the parties' agreement did not authorise Hudson Bay to market them. Any permission to sell the 'pocketless soccer basics' would have required rewriting the licence.

* Umbro might have inadvertently granted exclusive licences to Hudson Bay and Dick's which covered the same descriptions of goods; if that was so, since Umbro did not have authority to grant an exclusive licence for overlapping products and would be in breach of the warranty under the agreement.

* There was an implied term of cooperation to the effect that Umbro could not refuse to consider products submitted for approval and Umbro were in breach of that term by refusing, albeit temporarily, to approve Hudson Bay's new range.

* Umbro was not expressly required under the licence to provide guidance and direction to Hudson Bay for the purposes of product development, however sensible it would be in business terms to do so; Umbro's actions or inertia couldn't stop Hudson Bay submitting designs and materials for approval did not therefore constitute breaches of any implied term.

* It was difficult to understand why Hudson Bay sought specific performance of the agreement when it already had an exclusive licence to sell goods bearing the Umbro brands. A more specific order relating to the breach of the agreement is what was actually needed. Accordingly (i) declaratory relief was granted to the effect that Umbro was in breach of the agreement and (ii) an order was made for damages to be assessed.

The IPKat hates to sound repetitive, but in the cold light of day and with the benefit of hindsight there surely must have been a better way for Umbro to exploit the power of its brand without generating enmity between itself and a licensee in this manner.

Cats playing football here

The greatest footballing cat here

Soccer cat commercial here