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IP/IT Set of the Year 2005, 2007, 2009, 2011 & 2013

Chambers and Partners Bar Awards

“The summit of excellence for IP advice and advocacy”

Chambers and Partners 2015

“An IP powerhouse”

Chambers and Partners 2015

Welcome to 11 South Square

11 South Square is a leading barristers chambers specialising in all areas of intellectual property law. The set is made up of 6 Queen’s Counsel and 10 juniors together with two leading Professors in the area of IP law. Many Members have extensive experience in science and industry enabling them to offer top quality advocacy and advice to their clients.

Our members frequently act in leading cases in the areas of intellectual property, information technology and media and have appeared in courts and tribunals of all levels in the UK and other jurisdictions throughout the world.

 

Notable Cases

  • Jason Rawding -and- Seaga UK Limited [2015] EWCA Civ 113

    Jason Rawding -and- Seaga UK Limited [2015] EWCA Civ 113

    This is a case about whether certain emails had been forged.  The appellant individual appealed against the trial judge’s finding that the appellant had provided a personal guarantee for the debts of a company of which he was, for a period, the majority shareholder.  The guarantee was claimed to have been provided in an exchange of emails between the appellant and the individual controlling the respondent company.  The appellant’s case was that the emails had been forged.  That was the only issue in the case.

    In the appeal, the appellant applied for permission to rely on additional expert evidence from a data recovery specialist, who had analysed back up tapes that had been found after the trial and which it was previously believed could have contained no useful information.  The conclusion of the expert having analysed the tapes was that the appellant did not send or receive any of the emails in issue.  

    The Court of Appeal admitted the evidence, allowed the appeal and ordered that the issue of the authenticity of the emails be referred back to the trial judge for determination in light of the new evidence.  

    Mark Vanhegan QC and Chris Aikens acted for the successful appellant in the appeal.

    [2015] EWCA Civ 113

     

  • G-Star Raw CV v Rhodi Ltd & ors [2015] EWHC 216 (Ch)

    G-Star Raw CV v Rhodi Ltd & ors [2015] EWHC 216 (Ch)

    This was an action for infringement of unregistered UK design right.  The claimant was the well-known fashion brand, G-Star.  The defendants were responsible for the ‘Voi’ brand of jeans and casual clothing.  The case related to the claimant’s pioneering ‘Arc’ jean design.  The claimant said that certain design rights in that design had been infringed by 9 different Voi products.  All the Voi products were manufactured overseas.  There had been a prior set of proceedings between the parties in 2010, also relating to the ‘Arc’ jean.  Those had been compromised in a confidential settlement which included conditions relating to the subsequent conduct of the defendants.  In the present case, the defendants submitted that in light of those earlier proceedings, they would have been foolhardy to risk any further trespass on the claimant’s rights, a fortiori in respect of the ‘Arc’ design.

    The judge held that all 9 of the Voi products were copied from and made substantially to all the ‘Arc’ designs asserted, and that, in light of the earlier proceedings, the defendants knew or had reason to believe that the Voi products were infringing articles.  The personal defendants were held not to be liable as joint tortfeasors.

    Hugo Cuddigan acted for G-Star.

    G-Star Raw CV v Rhodi Ltd & ors [2015] EWHC 216 (Ch)

     

     

  • Fresh Trading Limited -v- (1) Deepend Fresh Recovery Limited (2) Andrew Chappell [2015] EWHC 52 (Ch)

    Fresh Trading Limited -v- (1) Deepend Fresh Recovery Limited (2) Andrew Chappell [2015] EWHC 52 (Ch)

    This case concerned the copyright in the “Dude” logo – the cartoon face with a halo which is used by Innocent Smoothies. The ‘Dude’ was designed by a company called Deepend pursuant to an agreement under which it would be given shares in the company responsible for Innocent. No shares were ever given to Deepend and Deepend later went into liquidation. Some years later, Deepend Fresh Recovery Limited, the sucessor-in-title of Deepend’s rights (if any) in the copyright, brought an action at OHIM seeking to revoke Innocent’s trade marks for the Dude on the basis that it was the owner of copyright. OHIM initially found in Deepend Fresh Recovery Ltd’s favour and Innocent appealed. However, the OHIM proceedings were stayed pending Innocent’s High Court action for a declaration that it  was the owner of copyright in the Dude (in law or in equity), alternatively that any claim against it for infringement was barred due to acquiescence.

    The Judge held at trial that Innocent owned the copyright in equity and were thus entitled to an assignment of legal title from Deepend Fresh Recovery Ltd.

    Iain Purvis QC and Anna Edwards-Stuart appeared for Innocent (Fresh Trading Limited). Michael Silverleaf QC and Kathryn Pickard appeared for the Defendants

    [2015] EWHC 52 (Ch)

  • Rihanna & ors v Topshop & ors [2015] EWCA Civ 3

    Rihanna & ors v Topshop & ors [2015] EWCA Civ 3

    This was the trial and subsequent appeal of a complaint made by the world famous singer, Rihanna, that Topshop had infringed her rights by selling a t-shirt with her image on it and that this constituted an act of passing off. There was no claim in copyright because the photo on the t-shirt was taken by an independent photographer, and he had licensed his copyright to Topshop.  This matter has gained much media attention both because of the parties involved and because the claim itself was framed so as to cover any image of Rihanna. 

    At trial, the claimants restricted their claim to a particular complaint about the image used on t-shirt, saying that it reflected particular promotional images from Rihanna’s Talk that Talk album.  They succeeded on that narrower basis.  The Court of Appeal has now upheld the first instance judgment, finding  that, with all the particular factors of the case, the sale by Topshop of the t-shirt did amount to passing off. 

    Hugo Cuddigan acted for Topshop. 

    Rihanna & ors v Topshop & ors [2015] EWCA Civ 3

  • International Stem Cell Corporation v Comptroller General C-364/13 [2014]

    International Stem Cell Corporation v Comptroller General C-364/13 [2014]

    Preliminary ruling of the CJEU in relation to the patentability of methods of producing stem cells from parthenogenetcally-activated human oocytes.  The Court held that such oocytes are not to be regarded as ‘human embryos’ within the meaning of Directive 98/44/EC.

    Piers Acland QC acted for International Stem Cell Corporation

    [2014] EUECJ C-364/13

     

  • Jarden Consumer Solutions (Europe) Ltd v Seb SA & Anor [2014] EWHC 445 (Pat)

    Jarden Consumer Solutions (Europe) Ltd v Seb SA & Anor [2014] EWHC 445 (Pat)

    A patent dispute concerning a device capable of a novel method of frying.  Validity challenged on the basis of anticipation and obviousness.  Infringement denied on the basis that, properly construed, the alleged infringing fryer did not have certain features of the claims.  Held, partially valid and infringed.  Benet Brandreth acted for the successful Claimant, SEB SA and its UK subsidiary, who manufacture and sell devices made to the invention of the patent in the UK under the brand Tefal Actifry.

    [2014] EWHC 445 (Pat)

    An appeal on the issue of construction and validity.  The question of what use may be made of reference numerals in a patent considered.  The appeal was successful on construction and unsuccessful on validity.

    [2014] EWCA Civ 1629

  • Idenix Pharmaceuticals Inc v Gilead Sciences Inc [2014] EWHC 3916 (Pat)

    Idenix Pharmaceuticals Inc v Gilead Sciences Inc [2014] EWHC 3916 (Pat)

    Infringement proceedings brought by Idenix in relation to “Sovalidi”, a drug for treating Hepatitis C virus.  Patent held to be infringed but invalid.

    Piers Acland QC acted for Idenix

    [2014] EWHC 3916 (Pat)

     

  • Merck KGaA v Merck Sharp & Dohme Corp & Ors [2014] EWHC 3867 (Ch)

    Merck KGaA v Merck Sharp & Dohme Corp & Ors [2014] EWHC 3867 (Ch)

    A preliminary issue was ordered in the context of a trade mark and contract dispute between Merck KgaA and Merck Sharpe and Dohme and others.  The parties had entered into a co-existence agreement that was silent as to the proper law governing the agreement.  Applying the common law authorities to the agreement (because it dated from before the Rome Conventions) the Court held that the proper law of the contract was German law.  That was the system of law with which the transaction had its closest and most real connection.  Henry Carr QC and Benet Brandreth acted for the successful party Merck KgaA.

    [2014] EWHC 3867 (Ch)

  • Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2014] EWCA Civ 1462

    Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2014] EWCA Civ 1462

    This was an appeal in a patent infringement action brought by ASSIA, a US corporation specialising in ADSL broadband technology, against BT in relation to the Dynamic Line Management System which controls their broadband services in the United Kingdom. At first instance, Birss J held that BT infringed one of ASSIA’s patents (the 790 patent) in the operation of its ‘Infinity’ broadband service. He held that another of ASSIA’s patents (the 495 patent) was not infringed. On appeal, in a judgment handed down on 11 November 2014, Floyd LJ, Patten LJ and Sir Stanley Burnton upheld the judgment on infringement of the 790 patent. They further held that, contrary to the Judge’s finding, the 495 patent was infringed as well. Iain Purvis QC appeared for ASSIA. Hugo Cuddigan appeared for BT

    [2014] EWCA Civ 1462

  • Interflora Inc & Anor v Marks and Spencer Plc [2014] EWCA Civ 1403

    Interflora Inc & Anor v Marks and Spencer Plc [2014] EWCA Civ 1403

    The Interflora v M&S saga goes on … and on … and on.

    On 5 November 2014 the Court of Appeal gave judgment on Marks and Spencer’s appeal from the judgment of Arnold J in May 2013 that M&S’s Google Adword bidding on Interflora was an infringement of Interflora’s trade mark registration.  Arnold J had decided that M&S’s advertising triggered in response to searches for Interflora did not enable reasonably well-informed and reasonably attentive internet users to ascertain whether the products and service offered in the advertisements were being offered as part of the Interflora network.  He accordingly held that M&S had infringed Interflora’s trade mark.

    The Court of Appeal decided that Arnold J had been wrong in his analysis of the legal test laid down by the CJEU in its decision in Google France and elaborated in its decision on the reference in this case in 2011.  It also decided that he had been wrong to find that initial interest confusion forms part of UK and European trade mark law.  However, it held that he had been correct in his assessment of the nature of the average internet user and correct to find that a conclusion that significant proportion of consumers were led incorrectly to believe that M&S’s delivery service was part of the Interflora network was sufficient to reach a finding of infringement.

    In the light of the legal errors in Arnold J’s judgment the Court of Appeal was unable to determine whether he would have found that there was infringement had he applied the correct legal tests.  Consequently the Court decided that it would have to remit the action for a retrial on the issues and factual questions arising in that determination applying the correct legal tests.

    We will update this post when the date and terms of the retrial have been fixed.

    [2014] EWCA Civ 1403

  • Les Laboratoires Servier v Apotex Inc & ors [2014] UKSC 55

    Les Laboratoires Servier v Apotex Inc & ors [2014] UKSC 55

    The latest instalment in the long-running Servier v Apotex case reached the Supreme Court. In a ruling handed down on 29th October the Court upheld the decision of the Court of Appeal that Apotex’s claim for damages under a cross-undertaking was not barred as a matter of law by the principle ex turpi causa non oritur actio (the ‘illegality defence’).

    Although Apotex’s claim was based on acts which would have been an infringement of Servier’s Canadian patent, this was not an act of sufficient turpitude to engage the defence. However, the majority of the Supreme Court rejected the reasoning of the Court of Appeal that the application of the defence required an intense analysis of the surrounding circumstances to find a ‘just and proportionate response’ to the illegality. They confirmed that the defence was a strict rule of law. Iain Purvis QC appeared for Servier.

    [2014] UKSC 55

  • Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch)

    Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch)

    A test case concerning the ability of Trade Mark proprietors to seek orders against ISPs requiring them to block counterfeiter’s websites.  The Court gave consideration to whether it had jurisdiction to make such orders under Section 37 of the Senior Courts Act and Article 11 of the Enforcement Directive and held that it did.  The Court then considered the factors applicable to the grant of such orders as a question of discretion.  The Court held it would make orders against the ISPs in respect of a number of counterfeiters’ websites.  The orders would be subject to a “sunset” clause.

    [2014] EWHC 3354 (Ch)

  • Teva Pharmaceutical Industries Ltd v LEO Pharma [2014] EWHC 3096 (Pat)

    Teva Pharmaceutical Industries Ltd v LEO Pharma [2014] EWHC 3096 (Pat)

    A claim for revocation by TEVA of two patents covering LEO’s fixed combination of calcipotriol and betamethasone for the dermal treatment of psoriasis.   

    The invention overcame differing pH dependent stabilities of the two actives by using polyoxypropylene-15-stearyl ether as a solvent in a non-aqueous formulation.  Polyoxypropylene-15-stearyl ether was not part of the skilled formulator’s common general knowledge. TEVA nevertheless asserted that the invention was obvious over prior art (Turi) disclosing its use as a solvent for betamethasone alone.   

    Interestingly, Birss J found that the invention was not obvious if Turi was taken as a starting point for further development, but was obvious if Turi was held back until the step of solvent selection in an otherwise common general knowledge formulation programme.  He held the patents invalid on this latter basis.  He accepted when considering permission to appeal that this approach raised an important point of principle on obviousness.

    Henry Carr QC and Tom Alkin acted for Leo.

     [2014] EWHC 3096 (Pat)

  • Lambretta T-132/12 and T-51/12

    Lambretta T-132/12 and T-51/12

    In case T-132/12 the General Court upheld an appeal from the Board of Appeal of OHIM in an application for revocation for non-use.  The GCEU considered the scope of the examination that the Board of Appeal was required to perform.  It held that the Board of Appeal was obliged to consider even matters not raised by the party bringing the appeal as a specific ground of appeal.

     

    In case T-51/12 the General Court upheld an appeal from the Board of Appeal of OHIM in an application for revocation for non-use.  It held that OHIM had created a legitimate expectation that registrations made before 21 June 2012 by reference to the class heading were registered for all goods or services in that class.  Accordingly, in the particular case the Board of Appeal had failed to considered whether partial revocation was appropriate for a subset of goods within Class 12.

  • Compact GTL Ltd v Velocys PLC & ors [2014] EWHC 2951 (Pat)

    Compact GTL Ltd v Velocys PLC & ors [2014] EWHC 2951 (Pat)

    Velocys brought an action in the High Court for infringement of two patents relating to structured catalysts for use in the ‘Fischer-Tropsch’ gas-to-liquid conversion process in the petrochemical industry. Compactgtl denied infringement and counterclaimed for revocation.

    The patents were held valid and infringed. An amendment to both patents was permitted which corrected an ‘obvious error’ in the claims.

    Iain Purvis QC acted for Velocys.

    [2014] EWHC 2951 (Pat)

     

  • Weatherford Global Products v Hydropath Holdings Ltd & ors [2014] EWHC 2725 (TCC)

    Weatherford Global Products v Hydropath Holdings Ltd & ors [2014] EWHC 2725 (TCC)

    A breach of contract claim brought by Weatherford in respect of electronic fluid conditioners for use in the oil and gas industry against the supplier of the devices, Hydropath.  Weatherford alleged that the devices breached the warranties supplied because they created sparks in conditions of foreseeable misuse.  The claim was denied both as to the allegations that the devices were not safe and as to the extent of the contractual obligations.

    The claim was also met by a counterclaim from Hydropath for breach of confidence and contract.  As part of that counterclaim Hydropath sought to make additional allegations against its former directors who were now working with Weatherford.  These directors were alleged to have induced the breaches of confidence and contract and to have acted in breach of their fiduciary duty.

    After a ten day trial involving six expert witnesses and extensive cross-examination the claim was upheld and the counterclaim dismissed.  Indemnity costs were awarded in respect of the counterclaim; reflecting the Court’s view that those allegations should not have been made or maintained. 

    Hugo Cuddigan and Mark Vanhegan QC acted for Weatherford.

    Benet Brandreth acted for the directors.

    [2014] EWHC 2725 (TCC)

    Following the trial, the parties sought and obtained a Non-Party Costs Order against the Principal of the Defendant and Third Party in respect of the costs of their unsuccessful counterclaim.

    [2014] EWHC 3243 (TCC)

     

  • Generics (UK) Ltd (t/a Mylan) v Richter Gedeon Vegyeszeti Gyar RT [2014] EWHC 1666 (Pat)

    Generics (UK) Ltd (t/a Mylan) v Richter Gedeon Vegyeszeti Gyar RT [2014] EWHC 1666 (Pat)

    The patent in suit was for a dosing regimen for use in emergency contraception, comprising 1.5 mg levonorgestrel taken as a single dose. The prior art disclosed the interim results of a clinical trial in which such a regimen was used but mistakenly referred to the dose as 1.5 g (not mg). The Court held that it would have been immediately apparent to the skilled person that there was a mistake and it would have been obvious to consult the author of the prior art or one of the presenters of the interim data to find out the correct dose. Furthermore it was obvious from the interim data that the claimed dosing regimen could be investigated with a reasonable or fair expectation of success. The patent in suit was therefore invalid.

    Piers Acland QC appeared for the Claimant. Michael Silverleaf QC appeared for the Defendant.

    [2014] EWHC 1666 (Pat)

  • Philips v Nintendo [2014] EWHC 1959 (Pat)

    Philips v Nintendo [2014] EWHC 1959 (Pat)

    Brian acts for Nintendo in this multi-patent dispute about virtual reality, user interfaces and Nintendo’s Wii and Wii U game systems. Of particular interest is the Court’s consideration of the proper approach to skilled team: accepting Nintendo’s submissions that the skilled person was different for the patent in suit and the prior art. The Court’s judgment on the proper approach to the construction of “for” in computer apparatus claims is also of note.

    [2014] EWHC 1959 (Pat)

  • Cayman Music (Bob Marley) v Blue Mountain [2014] EWHC 1690 (Ch)

    Cayman Music (Bob Marley) v Blue Mountain [2014] EWHC 1690 (Ch)

    High Court trial in relation to the Copyright in Bob Marley’s song ”No Woman No Cry” as well as other musical works. There was also a claim for an account of sums mistakenly had and received by the Defendant from copyright collecting societies in respect of the works.

    [2014] EWHC 1690 (Ch)

     

  • Magmatic Ltd v PMS International Ltd [2014] EWCA Civ

    Magmatic Ltd v PMS International Ltd [2014] EWCA Civ

    The maker of the Trunki ride-on suitcase for children brought a claim against PMS for infringement of Community Registered Design, UK unregistered design right and copyright against the seller of the Kiddee Case, which is also a ride-on suitcase for children. In July 2013, Arnold J held that the claim succeeded in relation to the Community Registered Design, four of the six pleaded UK unregistered designs and the copyright in the safety notice on the Trunki packaging.  PMS appealed the finding of Community Registered Design infringement.

    PMS’s appeal was allowed.  The Court of Appeal held that the judge had made two errors in interpreting the Community Registered Design in issue.  The judge also erred in failing to take into account the surface decoration on the designs alleged to infringe.  Having carried out its own comparison of the respective overall impressions created on the informed user, the Court found that the Kiddee Case does not infringe the Community Registered Design.

    Mark Vanhegan QC and Chris Aikens appeared for PMS.

    Magmatic Ltd v PMS International Ltd [2014] EWCA Civ

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