Mark Vanhegan KC

easyGroup Limited v Nuclei Limited & or [2023] EWCA Civ 1247

This was an appeal from the decision of Bacon J in [2022] EWHC 901 (Ch) dismissing easyGroup’s claim for infringement of its mark EASYOFFICE under s.10(1) and (2) of the Trade Marks Act 1994 against Nuclei’s use (since 2...

This was an appeal from the decision of Bacon J in [2022] EWHC 901 (Ch) dismissing easyGroup’s claim for infringement of its mark EASYOFFICE under s.10(1) and (2) of the Trade Marks Act 1994 against Nuclei’s use (since 2000) of the sign EASYOFFICES. This appeal was the culmination of an acrimonious and factually complex 23-year-old dispute between easyGroup and Nuclei over the right to use the signs EASYOFFICE / EASYOFFICES in relation to the provision and brokerage of serviced office space.

The appeal was heard by Lord Justices Arnold and Nugee and Sir Christopher Floyd on 10-11 October 2023. In upholding the trial Judge’s findings on infringement and revocation for non-use, Lord Justice Arnold’s judgment addressed several interesting points of trade mark law:

The Court emphasised the fact that use of a sign in (website) advertising for a third party’s services could be held to be use in relation to those services. The relevant question is whether the average consumer would perceive the sign as a badge of origin in relation to those services.
Despite not expressly departing from any of the established authorities on the matter, the Court adopted a very strict approach to the concept of identity in holding that the signs EASYOFFICE and EASYOFFICES are not identical.
The Court reiterated the principle expressed in Muzmatch that absence of instances of actual confusion becomes more relevant the longer the parties have used their signs in parallel.
The case also includes a careful consideration of honest concurrent use as a factor to be relied on for the purposes of likelihood of confusion, as well as a useful summary of the relevant principles of a claim for revocation for non-use.
In upholding the trial Judge’s decision on revocation, the Court confirmed that there is no de minimis threshold for genuine use. The Court also reiterated the fact that, although advertising may undoubtedly constitute use of a trade mark, it will rarely be sufficient on its own to constitute genuine use. This is particularly so where the advertising consists solely of a website, even if it is targeted at the relevant territory.

Mark Vanhegan KC appeared for the Defendants, instructed by Mishcon de Reya LLP.

[2023] EWCA Civ 1247

Facebook Ireland Limited v Voxer IP LLC [2021] EWHC 1377 (Pat)

In Facebook’s first visit to the UK Patents Court, it sought revocation of a telecommunications messaging patent owned by Voxer. The counterclaim raised infringement by the doctrine of equivalents, in response to which...

Neurim v Mylan [2020] EWHC 3270 (Pat)

The Claimants (“Neurim”) alleged infringement of EP(UK) 1,441,702 B1 (the “Patent”), which claims 2mg prolonged release pharmaceutical formulations including the active ingredient melatonin to improve the restorative qua...

Neurim v Generics UK Limited (t/a Mylan) [2020] EWCA Civ 793

This was an appeal from the decision of Marcus Smith J in [2020] EWHC 1362 (Pat) to refuse to grant an interim injunction to prevent Mylan launching a generic prolonged-release melatonin product. Neurim Pharmaceutical...

Neurim v Generics UK Limited (t/a Mylan) [2020] EWHC 1362 (Pat)

Neurim Pharmaceuticals (1991) Limited is the registered proprietor of EP(UK) 1,441,702 B1 (the Patent). Flynn Pharma Limited is registered as an exclusive licensee. The Patent claims prolonged release pharmaceutical form...

Philips v ASUSTEK, HTC et al [2019] EWCA Civ 2230

This was a set of three appeals from Judgments of Arnold J (as he was) concerning mobile telecommunications patents owned by Philips ([2018] EWHC 1224 (Pat), [2018] EWHC 1732 (Pat) and [2018] EWHC 1826 (Pat)). Philips h...

Koninklijke Philips NV v Asustek Computer Incorporation & Ors [2018] EWHC 1826 (Pat)

Philips alleged infringement by HTC and ASUS of three Patents, which it had declared essential to the European Telecommunications Standards Institute (ETSI) Universal Mobile Telecommunications System (UMTS) standards, in...

Philips alleged infringement by HTC and ASUS of three Patents, which it had declared essential to the European Telecommunications Standards Institute (ETSI) Universal Mobile Telecommunications System (UMTS) standards, in particular the sections that relate to High Speed Packet Access (HSPA/3.5G). This was the second technical trial, concerning the validity and infringement of the 511 Patent.

The 511 Patent (with priority date 3 May 2003) concerns a novel form of fast power control. The conventional approach in CDMA telecoms systems at the priority date (such as UMTS Release 5) was for transmission power to be increased in poor channel conditions and decreased in good channel conditions. This ensures that the received power is approximately equal for all users (irrespective of, for example, the distance of each user’s mobile phone from the base station). The 511 Patent subverts this known, conventional approach, instead reducing data transmission power during bad channel conditions and increasing it should channel quality improve on an intra-data block timescale (i.e. the timescale on which transmission power is conventionally adjusted using transmission power commands to deal with fast fading caused by multipath interference).

The Defendants argued non-infringement on the basis that the construction of the term “data transmit power” ought to include the power of all transmissions, and in particular that of control signals as well as data signals. The Judge rejected that argument and held that the 511 Patent is infringed by the power control of the physical data channels in UMTS Release 6, as specified in Technical Specification (TS) 25.214.

The Defendants also contended that the 511 Patent was obvious over the Physical Layer Standard for cdma2000 Release 0 version 3.0 dated 15 June 2001 (“C.S0002”), the other two cited pieces of prior art having been abandoned by the Defendants shortly before trial. Arnold J held the 511 Patent valid over C.S0002, rejecting the Defendants’ submissions regarding the disclosure of that prior art to the Skilled Person and the steps that it would have been obvious for the Skilled Person to have taken, having read it with interest.

Mark Vanhegan QC and Adam Gamsa were instructed by Bristows for Philips

[2018] EWHC 1826 (Pat)

Koninklijke Philips v Asustek and HTC [2018] EWHC 1732 (Pat)

Philips alleged infringement by HTC and ASUS of three Patents, which it had declared essential to the European Telecommunications Standards Institute (ETSI) Universal Mobile Telecommunications System (UMTS) standards, in...

Philips alleged infringement by HTC and ASUS of three Patents, which it had declared essential to the European Telecommunications Standards Institute (ETSI) Universal Mobile Telecommunications System (UMTS) standards, in particular the sections that relate to High Speed Packet Access (HSPA/3.5G). This was the second technical trial, concerning the validity of the 659 Patent.

At the Priority Date (12 November 2003), the high-speed downlink shared channel of HSDPA required a separate, associated downlink dedicated channel, (with associated channel code), to be set up for each user. There are a limited number of channel codes available to the base station for downlink transmission. The invention of the 659 Patent proposes a fractional dedicated channel for HSDPA with a single channel code shared by a number of mobiles. In this way, only a single code is used by the fractional dedicated channel for multiple users rather than a code for each user and code channel resources are saved. Unlike common general knowledge dedicated channels, the fractional dedicated channel of the 659 Patent comprises only power control commands, (i.e. it does not include dedicated pilot bits). Dedicated pilots bits were known to be required for UE-specific beamforming and closed-loop transmit diversity with antenna verification. They were also used as part of power control, synchronisation and demodulation, although not technically required for those purposes.

HTC and ASUS accepted infringement but contended that the ’659 Patent is obvious over a single piece of prior art (having dropped their arguments over two separate prior art documents during the course of trial): a cross-referenced pair of temporary documents submitted by Nortel to 3GPP WG1 meetings #32 and #34 in May and October 2003, respectively. The Nortel TDocs decribe a fractional dedicated channel, but all configurations of that channel include dedicated pilot bits.

Arnold J held the 659 Patent to be invalid over the pleaded prior art. He held that omitting the dedicated pilot bits from the dedicated channel was a technically obvious choice notwithstanding the impact on backwards compatibility.

Mark Vanhegan QC and Adam Gamsa were instructed by Bristows for Philips

[2018] EWHC 1732 (Pat)

Koninklijke Philips v Asustek and HTC [2018] EWHC 1224 (Pat)

Philips alleged infringement by HTC and ASUS of three Patents, which it had declared essential to the European Telecommunications Standards Institute (ETSI) Universal Mobile Telecommunications System (UMTS) standards, in...

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 cas...

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 und...

Signature Realty Ltd v Fortis Developments Ltd [2016] EWHC 3583 (Ch)

The Claimant, Signature Realty, is a property development company which, in 2013, commissioned architects to draw up plans in order to apply for planning permission to develop two office buildings in Sheffield into stude...

The Claimant, Signature Realty, is a property development company which, in 2013, commissioned architects to draw up plans in order to apply for planning permission to develop two office buildings in Sheffield into student accommodation. At the time the permission was granted, the Claimant did not own the buildings, and they were subsequently purchased from the landowner by the First Defendant, Fortis Developments. Following the purchase of the site, the Defendants together developed it into student accommodation.

The Claimant alleged that the Defendants had obtained its planning drawings from the Sheffield City Council planning website and infringed copyright in them in a variety of ways, including by: (i) using the planning drawings and altered copies thereof to market and sell units of student accommodation “off-plan” to investors before construction had commenced, and for construction tendering purposes; (ii) copying them in an altered form in order to create plans for the purpose of obtaining amendments to the existing planning permission; and (iii) constructing a building in accordance with the amended planning permission drawings.

At an interim hearing on 15th January 2016 the Claimant obtained summary judgment in respect of a number of the drawings in issue on several defences, in particular: (i) that the Claimant was estopped from asserting its copyright against the Defendants because it had allegedly stood by while the Defendants started building on the site; and (ii) that the Defendants had the benefit of an implied licence originally granted by the Claimant or the Claimant’s architects to the landowner and/or the Defendants.

At trial the Defendant challenged subsistence and infringement, and the Claimant’s entitlement to injunctive relief and additional damages. The Court held that copyright did subsist in the Claimant’s plans, and that the Defendants had infringed it in particular by creating and using identical copies of the Claimant’s plans for marketing and tendering purposes, and creating and using altered copies of some of the Claimant’s plans (including by constructing the buildings in question), but that it was not entitled to additional damages or to injunctive relief.

Mark Vanhegan QC and David Ivison appeared for the Claimant.

Signature Realty Ltd v Fortis Developments Ltd [2016] EWHC 3583 (Ch)

Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors [2016] EWHC 94 (Pat) Trial B

This was the second technical trial in the mobile telecommunications patent case between Unwired Planet and Huawei & Samsung, concerning Unwired Planet’s patent portfolio, most of which it had obtained from Ericsson....

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 h...

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 brea...

Collingwood Lighting Ltd v Aurora Ltd [2014] EWHC 228 (Pat)

Action for infringement of patent by the sale of fire-rated LED downlighters. The judge held that the invention was simple but not obvious and that the defendant's products infringed. The defendant's 'innocence defence...

Nestec SA & Ors v Dualit Ltd & Ors [2013] EWHC 923 (Pat)

In this action it was alleged by Nestec that supplying compatible coffee capsules for Nespresso machines infringed two patents covering machines which used them. It was accepted by Nestec that the capsules were not nove...

Apple v Samsung

Mark is acting for Samsung in this patent dispute relating to mobile telephone technology. Trial listed for Autumn 2012.

Hollister v Medik Ostomy [2012] EWCA Civ 1419

Acted for the Claimants/Appellants before the Court of Appeal in considering whether the Court of Justice’s decision in Boehringer v Swingward [2007] ETMR 1164 provided for a new Community wide rule to be applied when a...

PMS International Group Plc v Magmatic Limited [2016] UKSC 12

This is the first Community Registered Design case to reach the Supreme Court, and in it the Court has made a landmark decision as to the proper interpretation of Community Registered Designs. In this case, Magmatic, the...

This is the first Community Registered Design case to reach the Supreme Court, and in it the Court has made a landmark decision as to the proper interpretation of Community Registered Designs. In this case, Magmatic, the maker of the Trunki ride-on suitcase for children brought a claim against PMS for infringement of its Community Registered Design against PMS, the seller of the Kiddee Case, which is also a ride-on suitcase for children. In July 2013, Arnold J interpreted the Community Registered Design was for shape of a suitcase alone and held that it had been infringed by the Kiddee Case.

The Court of Appeal allowed PMS’s appeal, holding that the judge had made a number of errors in interpreting the Community Registered Design. Having carried out its own comparison of the respective overall impressions created on the informed user, the Court found that the Kiddee Case did not infringe the Community Registered Design.

Magmatic appealed to the Supreme Court, arguing that the Court of Appeal’s interference with the decision of Arnold J was misplaced and requesting the restoration of the original finding of infringement. In the alternative, Magmatic contended that the case involved points of EU law which should be referred to the CJEU. The request for a reference was supported by the Comptroller General of Patents, Designs and Trademarks who was given permission to intervene.

The Supreme Court dismissed the appeal and declined to make a reference to the CJEU. The Court of Appeal’s reconsideration was justified. In the leading judgment given by Lord Neuberger, the Court held that the overall impression created by the Community Registered Design is that of a horned animal and this was reinforced by the absence of decoration on the surfaces of the suitcase. Moreover, Arnold J had erred in failing to take into account the contrast in tone between its different parts. The Court of Appeal’s finding of infringement therefore stood. In addition whilst expressly stating that its decision on this aspect was obiter the Court expressed the very strong view that absence of decoration may as a matter of principle be a feature of a registered design and that feature may be depicted on a CAD image. Having decided the matter in this way, the Supreme Court considered that the appeal did not raise any issue which should be referred to the CJEU.

Mark Vanhegan QC and Chris Aikens appeared for PMS. Brian Nicholson appeared for the Comptroller General of Patents, Designs and Trademarks.

[2016] UKSC 12

Mark Vanhegan KC

Recent & Notable Cases

easyGroup Limited v Nuclei Limited & or [2023] EWCA Civ 1247

Facebook Ireland Limited v Voxer IP LLC [2021] EWHC 1377 (Pat)

Neurim v Mylan [2020] EWHC 3270 (Pat)

Neurim v Generics UK Limited (t/a Mylan) [2020] EWCA Civ 793

Neurim v Generics UK Limited (t/a Mylan) [2020] EWHC 1362 (Pat)

Philips v ASUSTEK, HTC et al [2019] EWCA Civ 2230

Koninklijke Philips NV v Asustek Computer Incorporation & Ors [2018] EWHC 1826 (Pat)

Koninklijke Philips v Asustek and HTC [2018] EWHC 1732 (Pat)

Koninklijke Philips v Asustek and HTC [2018] EWHC 1224 (Pat)

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

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

Signature Realty Ltd v Fortis Developments Ltd [2016] EWHC 3583 (Ch)

Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors [2016] EWHC 94 (Pat) Trial B

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

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

Collingwood Lighting Ltd v Aurora Ltd [2014] EWHC 228 (Pat)

Nestec SA & Ors v Dualit Ltd & Ors [2013] EWHC 923 (Pat)

Apple v Samsung

Hollister v Medik Ostomy [2012] EWCA Civ 1419

PMS International Group Plc v Magmatic Limited [2016] UKSC 12

Magmatic Ltd v PMS International Ltd [2014] EWCA Civ

Bailey v Graham (AKA Levi Roots) [2012] EWCA Civ 1469

Jones v Ricoh Ltd [2012] EWHC 348 (Ch)

Tarbs Europe SA v Republic of Macedonia, Makedoneska Radio Televzija [2012] EWHC 1691 (Comm)

Ate My Heart Inc v Mind Candy [2011] EWHC 2741 (Ch)

What the Directories say