For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.
Showing posts with label IPEC. Show all posts
Showing posts with label IPEC. Show all posts

Wednesday, 9 July 2014

Retail omerta: Wilko v Buyology

Buyology's suppliers, arriving to court
to hear HHJ Hacon's decision
In a dispute where trade mark infringement and passing-off were admitted. The terms of a settlement having been agreed, the trade mark owner then sought a Norwich Pharmacal order compelling the defendant to disclose the names of suppliers of the infringing goods

Such an order was outside the agreed settlement terms, and so the judge had to consider a couple of questions: (1) Was the settlement agreement so binding as to prevent a party from seeking additional relief outside the agreed scope of settlement? (2) If the claimant could seek an order, should it be granted in this case?


HHJ Hacon refused to grant the order. The case is Wilko Retail Ltd v Buyology Ltd [2014] EWHC 2221 (IPEC) (07 July 2014).

Background
The claimant, Wilko, is a well-known UK retailer which owns several “WILKO” registered trade marks. The defendant, Buyology, bought and re-sold goods bearing infringing WILKO branding. When Wilko complained of infringement and passing-off there were a few rounds of correspondence and litigation was commenced, but the parties then promptly agreed to settle the proceedings. 

The settlement agreement was silent on the issue of disclosing the identities of suppliers, though this had been argued over in correspondence and Buyology steadfastly refused to do so.   

Did the settlement agreement rule out further relief?
The company used to be Wilkinson.
Now it's just Wilko, dude.
Counsel for the claimant, Kathryn Pickard, argued that this settlement (held by the judge to be a binding contract) did not preclude Wilko from applying separately for a Norwich Pharmacal order. Such an order, she contended, could be applied for before, during or after the proceedings proper. For the defendant, Ashton Chantrielle submitted that the settlement agreement drew a line under all claims in the proceedings and that allowing a new application would be contrary to the rule in Henderson v Henderson requiring finality in litigation.

Judge Hacon had some sympathy for Ms Chantrielle's submission but held that while the claim as pleaded in the proceedings had been settled, the dispute over disclosing suppliers’ identities was outside that claim, so that Wilko was not barred from pursuing this issue separately.

Balance of harm
Ultimately, the judge held, it came down to the balance of irreparable harm. Wilko’s evidence on this point centred on the difficulty of preventing a secondary market in infringing goods. The judge found that evidence difficult to assess as it was unclear what other supply chains existed independently of Buyology and its suppliers, and it had to be borne in mind that Buyology would be injuncted from any future supplies of infringing products.

Buyology’s evidence focussed on the reputational damage and lack of trust that might be caused in a tight-knit retail community if it were to make disclosure off its suppliers. The judge agreed this would give rise to irreparable harm, then considered whether this should be discounted on the basis that Buyology only had itself to blame as an infringer. On reviewing Buyology’s conduct, apart from some carelessness in not eliminating infringing sales quickly enough at the outset, he held that the defendant had submitted an “exemplary” defence admitting wrongdoing and had not prevaricated or disputed any element of the settlement offered by Wilko.

As a result the balance of irreparable harm according to the evidence lay in favour of the defendant and therefore HHJ Hacon refused to order Buyology to give up its suppliers. Omerta honoured, case dismissed.

Monday, 7 April 2014

Forging a new path: cost caps and contrary behaviour in cut-price IP court

Today has been one of those English spring days where the warmth of the approaching summer is starting to sneak into an otherwise dull and oppressive London sky, but the truth of the matter is that it's still worth snuggling up against the nearest available radiator It's also more than somewhat damp, as any Kat whose paws have touched the pavement can confidently verify.

If there was a hyperlink somewhere, with the instruction "click for another month in bed, with breakfast provided", Merpel would probably have clicked it -- but for the sudden excitement aroused by her curiosity when a judgment from the Intellectual Property and Enterprise Court (IPEC) plopped roundly into her inbox. Merpel doesn't get out of bed for any IPEC (né Patents County Court) judgment -- but Brundle v Perry [2014] EWHC 979 isn't any IPEC judgment. It involves some exceptional conduct on the part of one of the litigants that suggests it would have been wiser for him to click the "another month in bed, with breakfast provided" option rather than adopt a course of action that could more easily have earned him a month being entertained at Her Majesty's pleasure and a daily dose of porridge.

Back in March, the IPKat reported on that rarest of cases -- a groundless threats action -- successfully brought against Richard Perry by one F H Brundle.  Mr Brundle [remember that lovely word, a cross between 'bundle' and 'trundle'?] was also successful in relation to Mr Perry's counterclaim for patent infringement. Given Brundle's success, the company was duly entitled to an award of costs. Because Brundle's claim form was dated 12 March 2013, before the new scale costs applied on 1 October 2013, the judge held that it would be the old scale costs that would apply, notwithstanding that, in December 2013, Mr Perry's counterclaim for infringement was dated after 1 October 2013, in December 2013. On this basis the court would respect the legitimate expectations of the parties when Brundle commenced its action. Judge Hacon then said he would award Brundle £34,525, including £15,000 for preparation and attending trial and judgment.

If the cap fits,
wear it ...
"So far, so yawn ..." says Merpel, "but here comes the juicy part." Mr Brundle argued that the costs cap and scale costs in IPEC proceedings should not be applied because of Mr. Perry's unreasonable behaviour in light of CPR44.2(4(2)(a). Mr Brundle argued that Mr Perry used intemperate language and expletives in his pleadings and in his skeleton argument for trial. This language continued in emails that Mr Perry sent to the good judge's clerk. Mr Recorder Meade QC warned Mr. Perry about his language at a hearing of an application but, according to the judgment, Mr Perry had said he had chosen not to heed the warning.

Then things got worse. On 26 March 2014, Mr Perry sent an email to Judge Hacon's clerk, the parties' solicitors and counsel. In that email, Mr Perry stated that he had received a letter purported to come from Judge Hacon himself.  The text of that email was as follows:

Royal Courts of Justice 

Patents County Court
Rolls Building, Fetter Lane 
London 
sales@hmcts.fasteners.co.uk

...

26th March 2014

Claim CC13P00980

Dear Mr Perry,

I have re-considered the case CC13P00980 and upon reflection; your opponents (FH Brundle, Betafence and Britannia Fasteners) having used your name on purchase orders for the infringing goods protected under your patent (which seems to be a fundamental point in the case), have colluded to defraud you of substantial sums of profits you were rightfully entitled to and therefore I have reversed my decision in your favour and award £5,000,000.00 in damages that would settle the claim in full.

I apologise that I did not even question your opponents on this issue or the matters concerning the manipulation of design sheets and copyright dates as at the time I didn’t think it was all that relevant.

I order the claimants and counter defendants to pay the claim in full within 14 days and the claim for unjustified threats is dismissed.

Mr Justice Hacon”
The judge stated that there was no evidence that Mr Perry's name had ever appeared on Brundle's purchase orders and that, in any event, it would make no difference. As regards the forgery, the judge stated, in that very restrained and understated way in which English judges express emotion:
... the best that can be said about this purported letter is that for several reasons no one would take it seriously... A deliberate attempt to influence others by means of a forged letter from a judge would be an extremely serious matter. I think the purported letter circulated by Mr Perry, to my clerk among others, is better characterised as a further example of Mr Perry’s intemperate and eccentric behaviour in the conduct of these proceedings. The question I have to decide is what effect, if any, this behaviour should have on costs".
The costs regime in the IPEC -- both the overall caps and the scale costs -- is mandatory. There are however three exceptions (i) where the party's behaviour amounts to an abuse of process; (ii) when a claim concerns a registered right which has been earlier certified as being valid; (iii) where a party has behaved unreasonably in an application, in which costs of the application would be awarded at the conclusion of the hearing and where those costs are in addition to the other costs subject to the cap.

Tiddles prepares for
his day in court ...
The IPEC still had overall discretion on costs by virtue of the Civil Procedure Rules, CPR 44.3.  But, as held by Judge Birss QC (as he then was) in Henderson v All Around the World Recordings Ltd [2013] EWPCC 19, the exercise of that discretion is conditional on the special rules as to the costs in the then Patents County Court. A judge should only depart from the usual IPEC costs rules in "truly exceptional" cases. Judge Hacon commented that it is open to the court not to apply scale costs for one or more stages of a claim, while still keeping the total award within the overall cap. Another Civil Procedure Rule, CPR 44.2(4)(a), permits the court to consider the conduct of the parties when assessing costs. This being so the judge held that Mr. Perry's conduct had been:
"strikingly unusual but not, in my view, truly exceptional on the scale of unsatisfactory behaviour [which leaves open the fascinating question as to what sort of behaviour one would have to practise in court to exceed the bounds of the merely "strikingly unusual" and enter the realms of the "truly exceptional"]. It is open to me in the present case to take Mr Perry’s conduct into account if this does not give rise to a total award in costs above £50,000."
The judge then awarded Brundle an additional £2,000 in costs, as well as further £2,000 to a third party defendant who had also been sued by Mr Perry. The total costs to be paid by Brundle totalled £49,645 - just under the £50,000 costs cap. Following the Court of Appeal's decision in Samsung v Apple [2012] EWCA Civ 1339 and in light of
"Mr Perry’s tendency towards an unrestrained response to anything he does not agree with, whether coming from the court or his competitors"
the judge also ordered that Mr Perry publish notice of the judgment in Fencing and Landscaping News.

Merpel is struck by the judge's reasoning on the costs order. She thinks that the judge, in keeping the costs under the £50,000 costs cap, had in his mind the potential floodgates of costs litigation in the IPEC if he were to award costs above the £50,000 cap. This reasoning is not satisfactory. Says Merpel, forging a letter from a judge of the High Court of England and Wales must surely be considered exceptional conduct that would justify ignoring the costs cap. In short, instead of sending IPEC litigants a powerful message that the costs floodgates will not be lightly opened and that cost-capping still apply, this decision basically says "you can behave as inappropriately as you like throughout the proceedings despite warnings. You can even forge a letter from the judge -- but don't worry, your costs will still only be capped at £50,000, however egregious your conduct". This surely is not the reputation that IPEC wants to promote.

But does Merpel's view of the judge's reasoning actually constitute a fair reflection of today's depressing weather? Was he truly constrained by the "truly exceptional" threshold imposed by virtue of the special costs regime? And what would be "truly exceptional" conduct? Readers are invited to supply some truly exceptional suggestions ...

More on porridge here and (courtesy of Jamie Oliver) here
Not truly exceptional conduct, presumably, on the part of Jamie Oliver here

Thursday, 13 March 2014

Calculation of damages: a cautionary tale

If maths was not your strong suit at school, then this blog post is for you. This Kat brings you a cautionary tale from the Intellectual Property Enterprise Court (“IPEC”), England and Wales, where in Lilley v DMG Events Ltd [2014] EWHC 610 (IPEC), 12 March 2014, a significant exaggeration of the damages claimed in respect of a copyright infringement has led to a case being struck out of court. 

Background
To provide brief background information, the original action concerned a claim for copyright infringement made by Mr Victor Lilley against DMG, a company which edits and publishes technical journals, including ‘Speciality Chemicals’ Magazine and ‘Adhesives Technology’ Magazine.  

Mr Lilley entered into a contract with DMG to supply a number of articles which appeared in these publications between 1996 and March 2004.  After the articles had appeared in DMG’s publications, DMG authorised two companies, the Gale Group “Gale” and EBSCO, to publish Mr Lilley’s articles. Mr Lilley alleged that these authorisations constituted an infringement of his copyright in these articles, and claimed damages in the mammoth region of £798,728,820 from DMG. 

Subsequent to this, two applications were put before Judge Hacon by DMG. The first was to strike out those parts of the Particulars of Claim and Reply to Particulars in the IPEC which related to a claim against DMG for “unlawfully resisting the copyright infringement claim” under CPR rule 3.4(2). The second application sought to strike out the Statements of Case of Mr Lilley in their entirety on the grounds that they were an abuse of the court’s process, or was otherwise likely to obstruct the just disposal of the proceedings.

The First Application: “unlawfully resisting the copyright infringement claim”
Those of you who are well versed in the laws of copyright will know that unlawfully resisting the copyright infringement claim” is not recognised as a tort under English Law, and DMG submitted this argument to the court.  Further DMG submitted that the court should follow the example of Roth J who had struck out a previous claim by Mr Lilley on 15 March 2013 based on the same alleged tort in similar proceedings brought by him against the Chartered Institute of Management Accountants ([2013] EWHC 1354 (Ch), at [45]).  The court was told that Mr Lilley had sought permission to appeal this order but was refused by a decision of Floyd LJ. 

What was surprising in this case was Mr Lilley’s response (who was acting as litigant in person) in which he had stated that he made no claim based on a tort of unlawfully resisting the infringement claim.  It was merely a heading he had used for Part 10 of his Particulars of Claim, and the tort he wished to rely on in this part of his Particulars was negligent misstatement. The statements that Mr Lilley stated he relied on came from a letter dated 21 December 2006 from DMG’s solicitors which stated that;
  1. this was a flat fee rather than a royalty fee per publication;
  2. DMG is entitled to provide copies to the distributors; and
  3. Lilley Information Systems Limited (Mr Lilley’s company) is not now entitled to vary the original agreement and claim royalty payments from DMG.
Therefore, the court stated, it should follow that the “unlawfully resisting the copyright infringement claim” part of the Statement of Case should be struck out; however, the new claim of ‘negligent misstatement’ would not be struck out when it had barely been explored. 

The Second Application
The perhaps more interesting part of this story is the second application from DMG to strike out the Statements of Case of Mr Lilley in their entirety under CPR rule 3.4(2)(b), on the grounds that it constituted an abuse of process. The court stated in its judgment that DMG relied in particular on Jameel v Dow Jones & Co Inc [2005] EWCA Civ 75.

In Jameel Lord Phillips MR stated [at 54]:
“An abuse of process is of concern not merely to the parties but to the court. It is no longer the role of the court simply to provide a level playing field and to referee whatever game the parties choose to play upon it. The court is concerned to ensure that judicial and court resources are appropriately and proportionately used in accordance with the requirements of justice.”
Judge Hacon explained that he would “have to make an assessment of the upper limit of damages to which Mr Lilley would arguably be entitled if he were to prove infringement at trial, and must then decide whether that upper arguable limit warrants the commitment of this court’s resources to Mr Lilley’s claim”.

Maximum arguable damages
The court stated in its judgment that the parties did agree that the damages should be assessed according to the principles laid down in General Tire and Rubber Company v Firestone Tyre and Rubber Company Limited [1975] 1 WLR 819.  These principles were summarised into 3 potential approaches to the calculation of damages (conveniently described by the parties as Group 1, 2 and 3):

Group 1    Where the owner of the infringed IP right (“the proprietor”) makes a profit from    the sale of goods or services protected by the IP right which has been infringed, damages are calculated by assessing the loss of profit to the proprietor caused by the redirected sales to the infringer. 

Group 2   Where the proprietor usually grants a licence and/or receives royalties for the exploitation of their IP, damages due are the royalty payments or licence fee that the infringer would have paid to the proprietor had the infringer acted lawfully and taken a licence of the type generally granted.

Group 3    In this case the court objectively assesses what would have been paid by way of a royalty on the hypothesis that the proprietor had been a willing licensor and the infringer a willing licensee.  The courts will look to analogous and the surrounding commercial facts in this situation.

DMG argued that the court should follow the Group 3 approach and calculate damages based on the (1) amount DMG would have paid Mr Lilley for the right to authorise others to publish Mr Lilley’s articles and (2) the royalties which would have been payable to Mr Lilley. Under the Group 3 approach, the maximum quantum of damages that Mr Lilley would have been entitled to was calculated at £83. This was based on the figures which showed the total number of articles from DMG’s publications published by Gale and EBSCO, and how much each of them paid to DMG.

Billion pound Kat
Mr Lilley on the other hand argued that the court should use the Group 2 approach, as he stated that he had licensed the publication of his articles to DMG, and therefore Group 2 was the appropriate stance to take when assessing damages which would total £798,728,820.  However, Judge Hacon did not accept that the licences referred to in Mr Lilley’s Statement of Case were “of a nature to provide any guide to the appropriate damages which DMG would have to pay if found to infringe Mr Lilley’s copyrights by authorising Gale and EBSCO to publish at the time (between two and ten years after first publication) and in the manner they did”.                                               

I'm shocked!
Therefore in the end the court found DMG’s argument to be the more persuasive and, following the Group 3 analysis, stated that if the case were to go to trial, the amount of damages that would have been awarded would be £83, a staggering £798,728,737 below the sums claimed.                                                        
                                                    
In his judgment, Judge Hacon stated that he, “did not believe this would be an appropriate use of the court’s resources when the maximum which could ever be at stake is around £83.  It would be an abuse of the process”.  He also stated that he “must consider other litigants with more serious and possibly more pressing claims, the resolution of which would necessarily be delayed by the hearing of the trial of this action and any preliminary hearings in advance of the trial”.

Now that’s what this Kat calls a ‘slight’ exaggeration of damages.

Wednesday, 22 January 2014

Bocacina v Boca: a costly affair, but who pays for what?

The Intellectual Property Enterprise Court (“IPEC”), which superseded the Patents County Court for England and Wales in 2013, is acclimatising nicely to its new name, though it has been a few months since the first decision to come from the IPEC (Bocacina Ltd v Boca Cafes Ltd [2013] EWHC 3090 (IPEC)) reached the database of the British and Irish Legal Information Institute BAILII: this decision was reported on by Darren Smyth on the IPKat back in October, here.

This Kat is in a particularly reflective and sentimental mood, since the costs decision in this case was published just last week (the costs decision can be read in full on BAILII here). So what was the costs ruling about?

Background

Just to recap, the trial judgment, delivered on 14 October 2013, involved a successful passing off claim by the claimant, who owned a restaurant/café in Bristol called ‘Bocabar’, against the defendant who opened up another café called ‘Boca Bistro Café’ in close proximity to the claimant’s restaurant. The court held that a significant number of members of the public would be likely to be confused into believing that the two cafes were connected, given their close proximity and the common use of the word ‘Boca’ in their respective names. Accordingly, a successful claim for passing off was established, and the defendant’s registration for the word mark BOCA BISTRO CAFÉ was held to be invalid. 

Costs judgment

The “raison d’etre” of the IPEC is to provide a cost-effective alternative to IP litigation. Daniel Alexander QC stated in his judgment that 

‘the object of this court is, however, not only to decide cases more efficiently and cheaply but also to help SMEs resolve disputes without the need for a trial. Quite often, the biggest obstacle to early resolution in such cases is costs….one of the ways in which this court can achieve this aim is to take account of reasonable admissible offers made to settle a case at an early stage of proceedings in determining what costs should be paid, if an action is pressed to trial in the face of such offers.’

It is also worth reminding ourselves that under the Civil Procedure Rules CPR Rule 44.(2)(4), in deciding what order (if any) to make about costs, the court will have regard to all the circumstances, including –

(a) the conduct of all the parties;

(b) whether a party has succeeded on part of its case, even if that party has not been wholly successful; and

(c) any admissible offer to settle made by a party which is drawn to the court’s attention, and which is not an offer to which costs consequences under Part 36 apply.

In this case, the claimant claimed £23,460 worth of costs. Both parties put forth their submissions in relation to costs (although the defendant’s submissions were 21 days late), and the defendant asked the court to pay particular attention to an offer that was put forward in December 2012, just after the Particulars of Claim were served.  In its offer the defendant had proposed 

(1) to change its name to a name which didn’t include the word ‘Boca’,  

(2) that it would not use the name Boca as part of its trading style in Bristol or the surrounding areas, and  

(3) that it would surrender its UK trade mark registration. The defendant had then asked for 9 months to implement these proposals. 

The claimant rejected the proposal, arguing in its skeleton that the offer made no contribution to costs incurred in the case and that, in relation to the timing issue, the defendant ”demanded” a “wholly unreasonable 9 months” in which to re-brand, when all that needed to be done was repaint the signage, reprint menus and update the restaurant websites’. 

Daniel Alexander QC did agree that there was some merit to the claimant’s arguments, but ultimately found that the offer that had been made by the defendant was not materially worse than the sums which the claimant eventually received in the first judgment.  In its final decision, the court stated that the approach it should take would be for the claimant to have 

‘(1) 100% its costs relatively generously assessed (by IPEC standards) down to the date of the Defendant’s offer in December 2012, (2) ... a reasonable proportion of its costs, but not all of them, after the date of that offer’. 

(In the court's assessment, this was 50% of their costs from that date). Additionally the claimant should not have to bear any of the defendant’s costs.’ Some of the factors the court took into consideration included the well reasoned case put forth by the claimant in its Particulars of Claim, the defendant’s 2012 offer, and ‘striking the balance between providing a fair level of recovery of costs for meritorious claimants, while encouraging early resolution of proceedings without a trial.’

The court awarded the final amount of £10,750 in costs to the claimant. In his judgment, Daniel Alexander QC added: 

‘... overall, the sum I am awarding provides a reasonable sum by way of costs to the Claimant (it is about 50% of its total costs ignoring photocopying) but it does not unjustly penalize the Defendant by awarding full costs against it, having regard to their offer’.  

This Kat believes this was a reasonable and fair approach to take and one which was wholly in the spirit of the new remit of the IPEC.

Wednesday, 25 December 2013

IPEC anagram competition: at long, long last -- a winner

The ethos of the IPEC:
every effort is being made to
accommodate small litigants
Rather a while ago, this Kat -- tickled by the renaming of the Patents County Court in England and Wales as the Intellectual Property Enterprise Court (the 'IPEC'), decided to run a little competition to find the best anagram of this sweet, good-natured and seemingly swift and cost-effective bit of the British legal machinery. It seemed like a good idea at the time but, like all good ideas, it didn't seem such a good one after the Kat remembered that he'd have to read through all the entries to the competition and decide which one was the winner.  The volume of entries rather suggested that the period immediately following the launch of the competition was either a period in which many blog readers were enjoying public holidays, or it might have been a time when there was just, well, a bit less work to do. Anyway, there were lots of entries, a small and no doubt unrepresentative batch of them are listed below.

The words 'Intellectual Property Enterprise Court' are promising material for anagrams, particularly when compared with other courts. 'Court of  Justice of the European Union' has lots of letters, but anyone who has ever had that frustrating experience of playing Scrabble and sitting there with a row of 'u's will instantly spot that the letter 'u' crops up a full four times there.  And as for 'Bundesgerichtshof', well, one can only despair.  But 'Intellectual Property Enterprise Court' is replete with possibilities. And yes, you can get the words "patent troll' out of it too.

So, which entries were most deserving of mention?
* Sean Gilday (Page Hargrave) started well, but ran into trouble at the end, with his "Elite Patents County Court: re perp, I'll rep". Merpel wonders whether he couldn't have made a bit more of the three 'p's, three 'r's, three 'e's and two 'l's as well as an 'i': words such as 'peril', 'leper', 'leer' and 'peer' are all there for the taking, if only something can be done with them.

* "Procure purely all-IP interest centre? OTT"  Suggests Christina Michalos (Barrister, 5RB), which is really good, though Merpel is concerned that some good folk might think that 'OTT' stood for something other than "over the top": "off their trolley", for example.

* "Let recurrences pollute patent priority" pronounces the IPKat's talented Portuguese friend Pedro Malaquias, the recurrences in question presumably referring to some item that keeps on being disclosed within the prior art.

* You'll know there are 35 letters -- and I got to 34 of these with "IPEC: cute pet? Lonely reptile? Or star turn?" So says trade mark attorney Sally Cooper, who ingeniously asks the Kats to consider "Impossibility Theorem" which she bravely and imaginative reframes as follows:
"(1) you take on a maths challenge for your PhD - you get to the end of the numbers - you get the PhD;
(2) you take on a maths challenge for your PhD - you fail to get to the end of the numbers - you don't get the PhD;
(3) you take on a maths challenge for your PhD - you fail to get to the end of the numbers - BUT you also prove that no-one else can get to the end of the particular set of numbers - so you get your PhD.
Maybe (1) or (3) ...?"
Good try, Sally, but Merpel -- who has recently learned to count using both paws -- says "no".

* "Cruel corrupt patent troll – yes, I repent!" is the offering from fellow blogger and highly transactional IP solicitor Mark Anderson, of the firm that bears his name.  Trolls can be cruel, indeed, but is not "cruel" itself an anagram of something else that trolls are noted for, and indeed motivated by: "lucre"?

* Another troll-based submission comes from Alex Robinson (Dehns), with "Troll, I? Play cute; I protect entrepreneurs".

* "Top entrepreneurial testicle curry plot" is the most exotic of a curious set of propositions from Brian Stevens (Senior IP Consultant, Danfoss), no doubt reflecting the testosterone-charged encounters between leading counsel for the litigant adversaries. Merpel, who has already found some recipes for testicle curry (here and here), has decided not to be so adventurous and to stick to fish balls ...

* "Court interprets pole picture eternally" is the somewhat cryptic offering from Rebecca E. Campbell, who will have endeared herself to fellow Kat Birgit by attaching the explanatory picture on the right.  But this entry is nowhere near as cryptic as ...

* ..."Proprise Lectually Entorter Plenitert" and "Enter Lectuour Prise in Pertel Procynil" from Iñaki Gil, who excuses himself on the basis that English is not his first language.  To this Kat, who has no science background, "pertel procynil" sounds the sort of thing that SPCs are made of, while "entorter plenitert" might be an obscure Latin tag.

* Ever competitive, Mary Smillie (Rouse) came up with "Ee, lone ruler pet can’t purr, copy?, its litter" (this works best with a Yorkshire accent, she explains [if your device is equipped for sound and people don't mind listening to you laugh, you can hear what Michael McIntyre has to say about Yorkshire accents here]). Other entries from the same source include "Rule: It’s one pet – copycat purr, leer ‘n letter", "In copy rule on letter, pelt ‘ere, cat purrs", "Tap, enter, copy little, precious rent ruler" (is this influenced by economists?) and the thoroughly cryptic "Clue: True IP interest or can tell top perry?"

* Alexandre Kampouris offers a medley of zany suggestions, including but not limited to "Nuttier patent trolls cry: Copier! entitle 'ur Rupee!", "Purple patentee ruttily cries: Cloner! Rot!" and "Truly purple IT-patentee cries: Cloner! Rot!" where, Alexandre explains, "IT" is pronounced "Eye-Tee", as in "Information Technology".

* "Otter-puller copy entertains IP lecturer" ("a presumptuous yet amusing patent case, concerning trawlers, m'Lud"), suggests patent and trade mark attorney Paul Wolff (Paul Wolff Consulting), no doubt appealing to this Kat's academic side.

* "Prior art letter clue, pretty uncle opines", announces Stephen R Postle (Executive Director, Intellectual Property Assets, Sun Chemical Corporation). Who is this pretty uncle, wonders Merpel, who has visions of those beautiful Thai ladies who, on closer inspection, turn out not to be ladies at all ...

* Back to reality, and looking at copyright rather than the registered rights, here comes "Retinue interpret all copy-protect rules", this being the suggestion of Nabil Asaad (Kempner & Partners).


* Combining the feline with the fictional, "Tell cat to purr ‘prosecute entire Renly IP" is the instruction given by Suzanne Bushnell-Watson (Head of Commercialisation & Assistant Director of Research, Innovation Services Research and Innovation Services, The University of Sheffield).  The IPKat was a bit baffled by this, but Merpel was able to explain to him that "Renly" was not a newly-minted adjective, as in "I didn't come to work today: I had ten pints of beer last night and when I woke up I was feeling quite renly".  Rather, this was a literary allusion to Renly Baratheon (one of the Baratheons of Game of Thrones fame).

* Finally, “A recently erupt toll procure interest” is an entry that comes all the way from Spain, or from Barcelona at any rate, courtesy of Guillermo Hinarejos (J. Isern Patentes y Marcas).
So who's the winner? It's a tough choice but, on balance, the prize goes to Mark Anderson, who will receive the prize -- a fresh copy of the 11th edition of the Butterworths Intellectual Property Law Handbook  -- some time early in the New Year when this Kat is back in his office and can pop it into the post.  Well done, Mark; well done, everybody!

Tuesday, 12 November 2013

A New Captain of the Enterprise: Richard Hacon officially announced as new IPEC judge

Yet another IP judge called Richard :
Richard Hacon - the new IPEC judge
The rumors were true.   This morning, after months of speculation and gossip, it was officially announced that the Queen has appointed
Richard David Hacon (11 South Square) as the next judge of the recently re-named Intellectual Property Enterprise Court (IPEC) formerly known as the Patents County Court (PCC).  

Hacon, who was called to the Bar in 1979 after earning a Bachelors of Science in Microbiology from the University of Leeds, has big shoes to fill.  His predecessor, Mr Justice Birss, was elevated to the High Court in May of this year, leaving a 3-year legacy of high quality decisions (whether you agree with them or not) and proactive case management hearings in his wake.  

Since May, while the Judicial Appointments Commission were busy reviewing the applications to fill Mr Justice Birss' shoes, the court has been staffed with Recorders and Special Guest judges, including, this term, Mr Justice Arnold.  This sitting rota is likely to continue for the next few weeks as Hacon's appointment will not take effect until Tuesday, 3 December 2013.  

Hacon is a bit of an unknown entity to the AmeriKat.  Having examined his CV, most of his recent reported cases revolve around the world of soft IP.  His recent cases include Community trade marks, registered design and enforcement issues in Starbucks (HK) Ltd v British Sky Broadcasting plc and Samsung Electronics (UK) Ltd v Apple Inc  (and here).  Around this time last year he found himself in the Court of Appeal in  Hollister Inc v Medik Ostomy Supplies Ltd - an account of profits case that reversed His Honour Judge Birss QC's (as he then was) decision (see AmeriKat's report on the appeal here).  The 2014 edition of Chambers & Partners states that "...he has a solid commercial appreciation of what's involved in a case".  But, unlike his predecessors, Hacon has never taken silk, something that Alan Johnson of Bristows is reported in the World Intellectual Property Review as saying he "never understood".  

The AmeriKat understands from various unconfirmed but trustworthy reports, that the selection committee was looking for a candidate who had experience in soft IP - of which cases historically populated the PCC - but who also had a strong patent law background.  This added string to the new judge's bow apparently shrunk an already small candidate pool ["What do you expect", sneers Merpel, "when most IP QCs earn a magnitude more than the advertised salary o£140,000?"].  Hacon, with willingness, a scientific background and no stranger to the Patents Court or the EPO (where he has represented Biogen, Genentech and Novartis), quickly became the heir apparent for the empty post.    

Hacon has his work cut out for him, of course.  With so many practitioners and users of the PCC applauding Mr Justice Birss for "turning the Court around", he will undoubtedly be faced with a higher standard of continuing and improving the reputation of the court as being an efficient, user-friendly and less expensive alternative to enforcing intellectual property rights than that of his predecessor.  But because his clients have spanned the entire spectrum of litigants - from the Goliaths to the Davids - all of whom who have been eagerly using the new and improved court, Hacon is expected to quickly make himself at home.  

The AmeriKat and the members of the IPKat team wish Richard the best of luck in his new role and look forward to pawing at his first decision in the new IPEC. 

Tuesday, 15 October 2013

First Decision by an Enterprise Judge to hit BAILII - IPEC in Action!

Something is going very wrong with the universe, because your humble moggy almost never gets excited about trade mark cases sufficiently to blog about them, and yet here, lo and behold, he is posting twice in a row about trade mark matters, first from Korea, and now from the fresh, new and exciting Intellectual Property Enterprise Court.

The launch of IPEC was discussed by the blogmeister on the IPKat.  The name has attracted much comment.  Mr Justice Birss entertained the assembled multitudes at the CIPA President's dinner on 3 October, just two days after the new court sprang into existence, explaining how the new name had been chosen, and speculating on the names that had been considered and discarded (best of all, the "IPKat Court").  But this Kat had not previously noticed that the judge of the freshly minted court was going to be called an Enterprise Judge!  Does that not sound wondrous to the ear.  This Kat will refrain from the obvious puns and visual metaphors in order to avoid lynching by his colleagues.

The unfortunate timing of the change in status and name of the PCC to the IPEC after the elevation of Mr Justice Birss (as he now is) to the High Court but before the appointment of his successor means that there is as yet no full time Enterprise Judge.  So for this auspicious judgment Mr Daniel Alexander QC has stepped up to hear the matter.  The case is Bocacina Ltd v Boca Cafes Ltd [2013] EWHC 3090 (IPEC) (14 October 2013) and you can read the judgment in full on BAILII here.  (Note also the new neutral citation system to be applied in such cases.)

It is typical PCC, sorry, IPEC, stuff: a passing off matter, with the defendants represented by the second defendant (Dercio de Souza Junior) in person and having filed no skeleton argument or evidence and indeed not being present when the case was called on, but only appearing after a delay of a few hours.  The question was whether 'the defendants who, until recently, operated a restaurant and bar in Bristol under the name "Boca Bistro Café" are liable for passing off, having regard to the claimant's earlier use of the mark "Bocabar" for an earlier bar and restaurant in Bristol and "Boca" for some of the goods and services provided there'.  The answer, turning very much on geographical proximity it seems, was "yes", and the defendants' UK trade mark registration no. 2594410 was consequently declared invalid.

In an interesting procedural point illustrating the flexibility of the PCC (now IPEC) HH Judge Birss QC (as he then was) had previously in April 2013 given a preliminary non-binding indication that the defendants' defence was not meritorious and that the claim was likely to succeed. In the event, that is what happened.

Monday, 14 February 2011

More on the IPEC

Can anyone guess why Welsh law firm Clarke & Hartland opted for IPEC as the name for its IP enforcement service?
The Intellectual Property Enforcement Coordinator (IPEC) was featured quite a lot on this weblog in the past (see eg posts here and here). The Kat's silence during 2011does not, however mean that he has lost interest in this tantalising topic.

Inderprastha Engineering College
International
Pharmaceutical
Excipients Council
* The excellent post on Intellectual Property Watch by William New ("New White House IP Advisory Committees Elevates IP Enforcement To Highest Level") did not go unnoticed by the IPKat.  Bill explains that US President Barack Obama used an executive order last week to create two government advisory committees on IP enforcement. These committees, he notes, put IP rights at the highest interagency level possible and have the stated aim of promoting innovation through the protection of such rights.The first of these consists the cabinet-level heads of nine major departments of the US government -- including Treasury, Commerce, Justice, Agriculture and Trade. The second consists of agencies directly involved in IP enforcement, including the US Patent and Trademark Office, Department of Homeland Security, State Department, and Health and Human Services. IPEC Victoria Espinel will chair them both.

* The very same Ms Espinel filed her first Annual Report, covering 2010, last week.  The report covers 86 pages, which sounds quite daunting -- but the reality isn't so bad.  Nearly three pages are just the list of acronyms and there are a few blanks thrown in too.  You can download the report here.

* IPKat team member Jeremy is looking forward to participating in this year's annual Fordham Intellectual Property Conference (28 to 29 April: further details awaited), at which he has been asked to speak on the topic, giving a European perspective and reporting on the [lack of] progress towards establishing an IP coordinating function within the old continent.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':