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IP/IT Set of the Year 2005, 2007, 2009, 2011, 2013 & 2016

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“The first port of call for IP cases due to the expertise and efficient service on offer”

Legal 500 2017

“Very impressive set of fantastic barristers”

Chambers and Partners 2018

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 5 Queen’s Counsel and 11 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

  • AMS Neve Ltd & Ors v Heritage Audio SL & Anor [2018] EWCA Civ 86

    AMS Neve Ltd & Ors v Heritage Audio SL & Anor [2018] EWCA Civ 86

    AMS Neve appealed the Judgment of HHJ Hacon ([2016] EWHC 2563 (IPEC)),  that the Court of England and Wales had no jurisdiction to hear an EU trade mark infringement action concerning alleged offers for sale and advertising on a website, based on Art. 97(5) (now Art. 125(5) EU Trade Mark Regulation. The decision turned on the meaning of the concept of “the Member State in which the act of infringement has been committed“. It was common ground that the only relevant alleged activity took place in Spain, the place of the Defendant’s domicile, since that was where decisions about the Defendant’s website were made. The CJEU, in Case C-360/12 Coty Germany GmbH v First Note Perfumes NV [2014] ETMR 49, ruled that that concept referred to active conduct by a defendant so “the linking factor … refers to the Member State where the act giving rise to the alleged infringement occurred or may occur, not the Member State where that infringement produces its effects.”

    At the Court of Appeal hearing the Claimant alleged that HHJ Hacon’s decision was wrong. The Court of Appeal decided to refer questions to the CJEU, as it doubted that the decision was correct, and because although there was a decision of the Bundesgerichtshof (German Supreme Court) which supported the Defendants’ arguments, and which should be given respect, there was no decision of the CJEU directly on this point in relation to the EU Trade Mark Regulation.

    Jacqueline Reid acts for the Defendants

    [2018] EWCA Civ 86

     

  • PulseOn OY v Garmin (Europe) Limited [2018] EWHC 47 (Ch)

    PulseOn OY v Garmin (Europe) Limited [2018] EWHC 47 (Ch)

    In this case PulseOn sued Garmin for infringement of both unregistered UK design right and registered community design.  The claim related to the use of photoplethysmography in wearable heart rate monitors.   Garmin was alleged to have infringed the rights in issue through the distribution of a wide range of wrist mounted fitness watches.  The unregistered design claim was abandoned after the  oral evidence from Garmin’s witnesses.  The judge held that the registered designs had a narrow scope of protection in light of the applicable design constraints.   As a result, none of the Garmin products was held to  infringe and the claim was dismissed.  Hugo Cuddigan acted for Garmin.

    [2018] EWHC 47 (Ch)

  • W3 Ltd v Easygroup Ltd & Anor [2018] EWHC 7 (Ch)

    W3 Ltd v Easygroup Ltd & Anor [2018] EWHC 7 (Ch)

    This was a complex trade mark dispute, the core of which was whether W3 Ltd had infringed any valid EU trade mark of easyGroup Ltd by use of the sign “EasyRoommate” as the name of an online flat-sharing service.  The case involved a large number of issues principally arising out a long period of concurrent trading by the parties, including on the date of assessment of an infringement claim, acquiescence, validity, revocation and chain of title to goodwill.  The Court held that easyGroup’s trade mark for the word EASY is and always was invalidly registered in relation to ‘advertising’ and ’temporary accommodation’ services because EASY was descriptive of those services and had not acquired distinctiveness through use of that mark or any other mark containing “easy”.  As for the eight other EU trade marks relied on by easyGroup, the Court held that none of them had been infringed on either of the two pleaded bases.  There was no likelihood of confusion with “EasyRoommate” in any of the forms in which that sign had been used and those of easyGroup’s EU trade marks which had been shown to have a reputation at the relevant dates (easyJet and easyHotel) had not suffered any of the actionable injuries (unfair advantage or detriment to distinctive character or repute).  easyGroup’s claim for passing off also failed.

    Had it been necessary to do so, the Court would have dismissed W3’s defence of statutory acquiescence inter alia because easyGroup’s letters before action had been sufficient to stop time running for the purposes of acquiescence, although the court considered that this was a point of law that needed to be determined by the CJEU.  W3’s statutory claim for groundless threats of proceedings for trade mark infringement was also dismissed on the ground that easyGroup’s threats had been only in relation to the supply of services.

    Mark Vanhegan QC and Chris Aikens successfully represented W3.

    [2018] EWHC 7 (Ch)

  • Fisher & Paykel Healthcare Ltd & Anor v ResMed Ltd & Anor [2017] EWHC 2748 (Ch)

    Fisher & Paykel Healthcare Ltd & Anor v ResMed Ltd & Anor [2017] EWHC 2748 (Ch)

    This was a claim for a declaration of invalidity and/or non-infringement of three patents, each of which was concerned with features of masks to be used with continuous pressure airway pumps for the treatment of sleep apnea. Shortly before trial the patentee consented to revocation of two of the patents. The trial of the third patent involved consideration of construction and the doctrine of equivalence in the light of the recent Actavis judgment in the Supreme Court.  Richard Meade QC, sitting as a Deputy High Court judge, held that the patent was invalid for lack of inventive step.

    Iain Purvis QC and Benet Brandreth acted for the Claimants. Piers Acland QC and Tom Alkin acted for the Defendants.

    [2017] EWHC 2748 (Ch)

  • Generics (UK) Ltd v Yeda Research and Development Co [2017] EWHC 2629 (Pat)

    Generics (UK) Ltd v Yeda Research and Development Co [2017] EWHC 2629 (Pat)

     

    Generics (UK) Ltd v Yeda Research and Development Co[2017] EWHC 2629 (Pat): these patent proceedings concerned a dosage regimen for glatiramer acetate (“GA”) a treatment for Multiple Sclerosis, sold by Teva under the brand name “Copaxone”.

    The Claimants sought revocation of EP (UK) No 2,949,335, which covered a thrice weekly dosage regimen of 40mg GA . As divisional patent applications were in the pipeline, they  also sought a declaration that use of their 40mg GA product would have been obvious as at the priority date. Yeda, the patentee proprietor, and Teva, its exclusive licensee, counterclaimed for infringement.

    One of the pieces of prior art relied upon, Pinchasi, taught use of 40mg GA in an every other day regimen. Arnold J held that the patent was invalid for obviousness over Pinchasi and, in addition, that one of its claims lacked plausibility and was therefore invalid for lack of inventive step and insufficiency. Whilst Arnold J found that the dosage regimen taught by Pinchasi was technically equivalent to that of the patent, he held that, as a matter of law, it was not possible to anticipate by equivalents. Whilst he found that use of the Claimants’ 40mg GA product in a thrice weekly regimen was obvious at the priority date, he declined to grant Arrow relief.

    Mark Vanhegan QC and Kathryn Pickard appeared for the Claimants.

  • Scomadi Ltd & Anor v RA Engineering Co. Ltd & Ors [2017] EWHC 2658 (IPEC)

    Scomadi Ltd & Anor v RA Engineering Co. Ltd & Ors [2017] EWHC 2658 (IPEC)

    Hanway (an additional counterclaimant) agreed with Scomadi (the claimants) to manufacture Lambretta-style scooters.  Hanway’s involvement in the design of those scooters turned out to be greater than had been anticipated, which was reflected in a variation to the agreement.  After the relationship broke down, Scomadi sued for registered and unregistered design right infringement seeking to prevent the continued manufacture and sale of the Defendants’ Lambretta-style “Royal Alloy” scooters.  Hanway and its UK distributor, Moto GB, counterclaimed for declarations of non-infringement alternatively invalidity of the designs relied upon.

    An expedited trial was ordered at which the principal issues concerning interpretation of the agreement and the matters relating to the registered designs were determined.  The court found that the agreement as varied provided Hanway with a licence over Scomadi’s designs and held accordingly that Moto GB and Hanway were permitted to manufacture and sell the Royal Alloy scooters.  The newer ‘GP’ models of the Royal Alloy range were held not to infringe the registered designs in any event, and one of the three registered designs relied upon was further found to be invalid.

    Hugo Cuddigan QC and Christopher Hall appeared for the defendants and Hanway.

    [2017] EWHC 2658 (IPEC)

  • Koninklijke Philips NV v Asustek Computer Incorporation & Ors [2017] EWCA Civ 1526

    Koninklijke Philips NV v Asustek Computer Incorporation & Ors [2017] EWCA Civ 1526

    This was an appeal from the decision of Arnold J [2016] EWHC 2220 (Pat) in respect of a preliminary issue in a three standard-essential patent infringement action.  Philips alleges that ASUS and HTC infringe the patents by implementing high speed packet access (HSPA) technology in mobile telecommunications networks.  The preliminary issue decided by Arnold J was whether a covenant not to assert patents in an agreement between Philips and Qualcomm Inc. provided a defence for HTC.

    Arnold J had held that Philips’ covenant not to assert its “CDMA Technically Necessary Patents” against nominated customers of Qualcomm did not extend to HSPA patents on the grounds that: (1) HSPA is not within the scope of the definition of “CDMA Wireless Industry Standards” in the Qualcomm agreement, properly construed according to the governing law, California Law; (2) the proviso to the covenant carved out hybrid CDMA/TDMA technologies, including HSPA, in any event; and (3) the covenant did not extend to HTC’s products that incorporated third-party (i.e. non-Qualcomm) chipsets.

    HTC appealed, contending that the judge had misconstrued the Qualcomm agreement by wrongly applying California law, including in respect of the admissible extrinsic evidence under California law.  HTC argued inter alia that HSPA, being a subsequent release of the proposed ETSI UMTS standard, was included within the scope of the covenant.

    Arden, Kitchin and Floyd LLJ dismissed HTC’s appeal.  They held that California law takes a holistic attitude to interpretation of a contract and that the relevant extrinsic evidence includes the strength of the parties’ patent positions with regard to CDMA and TDMA.  Philips had a much stronger position in TDMA than Qualcomm and they agreed with the Judge that HSPA is not within the scope of the definition of “CDMA Wireless Industry Standards” in the Qualcomm agreement, including because the absence of a royalty is a powerful indicator in favour of Philips’ construction.  They also agreed with the Judge that equipment implementing HSPA is TDMA equipment, so the proviso carved out HSPA from the scope of the covenant.  Finally, they dismissed HTC’s appeal in respect of HTC’s products that include third-party chipsets because the result contended for by HTC would be contrary to the interests of both Qualcomm and Philips, as the Judge had held.

    Mark Vanhegan QC and Adam Gamsa appeared for Philips.

    [2017] EWCA Civ 1526
     

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