RARE DEFENCE FAILS AGAIN; SUNRISE, SUNSET FOR .EU

Knight on the tiles

Forticrete Ltd v Lafarge Roofing Ltd is yet another decision by newly-appointed Patents Court judge Mr Justice Kitchin, issued on Friday and trailed on Butterworths' All England Direct online service.

Forticrete, who had a patent for roof tiles, sued Lafarge for infringement by making and selling its Duoplane tile. Lafarge wished to amend its defence, arguing that it was allowed to carry on its allegedly infringing acts in reliance on the defence of the Patents Act 1977, s.64(1) ("Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention (a) does in good faith an act which would constitute an infringement of the patent if it were in force, or (b) makes in good faith effective and serious preparations to do such an act, has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this right does not extend to granting a licence to another person to do the act"). Lafarge said its Duoplane tile was based on an earlier design which it had made, kept and used in the UK before the priority date of Forticrete's patent.

Forticrete argued that Lafarge's defence had no real prospect of success since the evidence in support of its contentions did not establish that Lafarge had made ‘effective and serious preparations’ to do an act ‘which would constitute an infringement of the patent if it were in force’ in relation to the earlier design of tile. Forticrete added that, that if such preparations were proved to have been done, Lafarge had not established that they were undertaken in respect of the Duoplane tile.

Kitchin J refused to allow Lafarge to amend its defence. He held that the overriding requirement of s 64 was that a defendant had to establish that the activity which he sought to undertake was substantially the same as the activity it had undertaken prior to the priority date, or that it had made effective and serious preparations to do such an act. In this case, while there was an arguable case that the design of the Duoplane tile had been based on an earlier design, the chain of causation was insufficient to attract the protection of s 64 of the Act. This was because the Duoplane tile was neither identical nor similar to the earlier design. Lafarge, accordingly, had failed to establish that it had a real prospect of success under the section.

The IPKat notes that s.64 is raised successfully as a defence only rarely. The narrow circumstances in which its criteria are fulfilled demonstrates why this is so.


Sunrise, here we come

The IPKat's friend Ian Lowe reminds us that phase 1 of the sunrise period for dot.eu domain name applications starts on 7 December 2005. Dot.eu domain names are European Community based and all applicants must be resident, have their registered office or principal place of business, or be established, within the European Community.

Phase 1 sunrise applicants must also

* be the holder (or licensee) of a valid registered Community trade mark or national trade mark of a member state and
* apply to register a domain name that corresponds to the trade mark in question.

If you wish to take full advantage of phase 1 of the sunrise period, you must arrange to file an application through one of the 500 accredited dot.eu domain name registrars in advance of 7 December. A list of registrars is available on the EURid website at www.eurid.eu. Each registrar will file applications in the order in which they are received.

An applicant whose application is the first to be received at the EURid registry for a particular name on or after 7 December will then have 40 days to validate rights to the registration by lodging evidence with EURid's validation agent. If the validation fails then the name will be offered to the next applicant in line for the same name.

Phase 2 of the sunrise period starts on 7 February 2006 when holders of other prior rights including unregistered trade marks or company names may apply. The sunrise period closes on 7 April 2006 and applications will then be accepted on a first-come-first-served basis.

The IPKat is trying really hard to get excited about this, but with little success. He wonders how popular dot.eu names will be with anyone (except EU institutions) in its earliest phases. Merpel says, isn't it a shame that dot.eu has taken so long. Where was it ten years ago, when it would really have appealed to commercial entities (and to cybersquatters...)?

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