NO HIDING PLACE

No hiding place

Judge Michael Fysh QC, sitting again in the Chancery Division of the High Court for England and Wales, gave a pretty helpful ruling for IP owners on Wednesday in KK Sony Computer Entertainment and another v Pacific Game Technology (Holding) Ltd [2006] EWHC (Ch) 2509 (reported here on BAILII).

Sony and its UK subsidiary marketed its latest PSP PlayStation console in over 100 countries, including the countries that form the European Economic Area. These PlayStations were protected by five Community trade marks, a UK registered trade mark, a UK registered design and a Community registered design and copyright in computer programs, menu icons, surface design and the user manual.

Pacific, a Hong Kong company, ran a website on which it offered various video games, consoles and accessories, video games and so on. Pacific also offered genuine Sony PSP consoles that were intended for sale in Japan only. According to Sony, by targeting customers in the UK and elsewhere in the EEA Pacific infringed its phalanx of IP rights. Sony went to court, seeking delivery up, disclosure of names, and an enquiry as to damages or an account of profits and costs. After Pacific earlier failed to persuade the court to refuse to hear the application on the ground of forum non conveniens, the court had to consider (i) whether Sony had agreed to the sale of those PSPs in the EEA - in which case its IP rights would have been exhausted - and (ii) whether Pacific, by offering the goods for sale on its website, had committed any infringing acts.

Judge Fysh QC allowed Sony's application for relief. In his view, the offer for sale had taken place not in Hong Kong but in the EEA. It was also plain that the offer had been made without Sony’s consent. The fact that the offer to sell was made via the intermediary of a website did not mean that the offer had not been made within the EEA:

"... It would make no sense if intellectual property rights in the EEA could be avoided merely by setting up a website outside the EEA crafted to sell within it" (para.27).

The IPKat agrees. It's hard to imagine that Sony had consented to the sale within the EEA of products that bear a label "FOR SALE AND USE IN JAPAN ONLY", in the absence of pretty cogent evidence to the contrary. Merpel says, that's all very well - but WHY can't I buy legitimate PlayStation and other Sony goods from whomsoever I want? Try selling the concept of non-global exhaustion of rights in a world which is now a global village.


No hiding place 2

Sweet & Maxwell's Lawtel subscription service picked up Celem SA and Celem Passive Components Ltd v Alcon Electronics Pvt Ltd, an extempore judgment of Mr Justice Warren in the Chancery Division yesterday.

Alcon supplied capacitors in India. Celem, who made premium high quality capacitors for which it had European patent protection, sued Alcon for patent, unregistered design right and copyright infringement by selling, offering to sell and importing allegedly infringing products into the UK. After Celem obtained permission to serve the proceedings on Alcon in India, Alcon applied to discharge that order: it maintained that permission to serve outside the jurisdiction should not have been granted on the grounds that (i) Alcon had never kept, sold, offered for sale or imported any product in the UK and (ii) the Indian courts were the forum conveniens (on which see the preceding item) for determining Celem's claim.

Warren J refused the application. Celem had shown that there was a serious issue to try: its intellectual property rights were in the UK and, if an English court did not deal with the patent infringement claim, an Indian court would be unlikely to do so. On this basis, if the patent infringement action was not the subject of resolution in the UK, Celem would have no redress.

The IPKat says this must surely be right. If it were not, then businesses trading outside the UK could nibble away at the commercial expectations of UK intellectual property rights holders without fear of reprisal. Merpel's a little surprised that Alcon even tried it on - surely this was settled a long, long time ago.

Celem here (earplugs needed); Alcon here
How capacitors work here