2011 IP Developments Conference: 4

2010 was a fruitful year for breach of confidence actions, began John Hull (Memery Crystal), and unusually they weren't all employment cases.  John's analysis commenced with a review of Tchenguiz v Imerman, a battle over documentation needed in the course of a divorce settlement. In this decision the Court of Appeal reversed the previous rule that, in divorce proceedings, the parties can obtain and make use of pretty well any information they can get their hands on.  It now seems that the Hildebrand rule does not apply and that confidentiality can exist in a relationship even after it has broken down.

Next John reviewed Veolia v Nottinghamshire City Council, in which the Court of Appeal gave a strange decision on the quality of information as a form of property in which it failed to spot the well-established decision of Boardman v Phipps. This was a strange decision, he said, and looked as though it was wrong.

John then moved on to JN Dairies v Johal Dairies, in which confidential customer information was stolen by a former employee of the claimant, whose actions were recorded on CCTV.  An appeal was lodged on the basis that the trial judge was biased lacking objectivity on the basis that he had allowed the claimant to broaden its submissions from breach of confidence to cover bribery and conspiracy; the defendants said that they were not in a position to cope with this.  In truth there may have been a lapse in terms of case management, but the trial judge's decision was upheld.

Employment cases were covered too: Phoenix Partners v Asoyag and Tullett Prebon v BCG (the case of the eight missing BlackBerries).

Non-disclosure agreements (NDAs) lay at the heart of Jones v Ricoh (UK) Ltd, where two businessmen who were ousted from a business by venture capitalists were entitled to sue them for breach of the NDAs where information disclosed by them was effectively used against them.

John ended with a selection of privacy cases, of which the most significant was JIH v News Group, where both parties agreed to keep the claimant's identity and the subject-matter of the application secret.  The court agreed to keep the subject-matter secret but not the claimant's name, having regard to the interests of the public and third parties.

Closing the session, and bringing a very busy day's conferencing to an end, was Ben Allgrove (Baker & Mackenzie), speaking on the recent England and Wales case law on extended passing off, as featured in the VODKA/VODKAT ruling last year by Mr Justice Arnold, upheld here by the Court of Appeal. Ben ran through the principles involved in protecting terms which, while they might seem quite generic, have some "cachet".

Survey evidence was discussed in this case; it always seems to arise somehow. Here the claimants did not challenge the defendants' request to run a survey, but did attack it once it was submitted.  Here, again, this is a case management issue -- but the claimant was entitled to challenge it once it was completed.

The bottom line is that, on the assumption that actions of this  nature are not anticompetitive, disclaimers and clear flagging of the fact that an alcohol-based drink like VODKAT is not actually vodka should be utilised if a trader wants to avoid the risk of extended passing-off litigation from a user of the "cachet" term.

Ben then discussed the latest England-and-Wales development in trade mark infringement and passing off -- recognition of the notion of "initial interest confusion" -- in light of the OCH-ZIFF ruling.  This could have major repercussions for uses of trade marks as keywords.