What I have been doing recently
As end January 2023
I will update this 1-2 times a month.
Trade mark litigation: issue as to infringement in the face of a non-using trade mark owner, extent of goodwill in a passing off case and repute in a trade mark case; question of whether it is infringement to be a motor specialist. Ex-employee dispute – active litigation: extent of damage in damage part of passing off cause of action and issue of whether information actually confidential. Copyright: copyright in computer software, issue of extent of ownership and subsistence. Patents: mechanicals, Comptroller’s opinion. Data: another data breach. Trade Marks: opposition, virtually identical goods, to what extent does the interdependence principle apply? Passing off: lots of traders using non-descriptive trade name; is it a common indication or is it a case of jointly owned goodwill? Trade Marks: ex parte before the Registrar concerning the scope and definition of the typical consumer. Data Protection: scope of data subject access request and the age old problem of company names being sufficient to identify an individual. Trade Marks: series marks and scope of proving the repute needed for a 10(3) case. Registered Designs: furniture wars continue and settle (finally). Registered Designs: novelty destroying disclosures and medical device design. Trade Marks: opposition, to what extent can a descriptive senior mark oppose the registration of a similar junior one? Trade Marks: Black Cabs and Land rovers revisited – to what extent can a ‘descriptive’ shape be registered – representing an applicant in opposition proceedings. Data: can a data subject make a data subject access request in relation to information which will be disclosed in short order, but in the course of proceedings (answer: it depends).
First CJEU appearance since Brexit… in French (case won). Confidential Information misuse: issue as to particularity. Filming location contracts: gone wrong, asked to pick up the pieces for a film location owner. AI: more contracts on ontological lists (basically an AI programme (not program) comparing what some people call something, like a leg, and others call the same thing, like a lower limb). Registered Designs: enforcement and contempt. Chattels: getting (high value) stuff back. Trade Marks: advising and representing client in trade mark case where there is no clear overlap between fields of activity, 10(3) and passing off. Medical Devices: advising on whether a device which had different modes of use constituted one or several devices; was the certificate of conformity adequate? Designs: registered and unregistered designs; representing client in relation to skip accessories – ensuring pleadable case is fit for trial. Medical devices: advising client on generic registrability of one product in a number of models.
Passing off and trade mark infringement: advising and representing client in relation to similar (but not identical) fields of activity. Data: advising data controller as to what extent is a national security issue relevant to a failure to answer an information notice issued by the Information Commissioner. Passing off: advising client on not quite spot-on fields of activity.
Medical Devices: advising on whether a refusal to grant marketing authorisation on the basis that the device was not a medical device at all was a matter which the applicant could complain about. Trade Marks: advising on registrability of a trade mark in the UK, EU and the Channel Islands. Patent exploitation: advising on purchase and licensing of IP rights (incl patent rights) relating to means of consolidating terminologies across allied areas (both in medical journals and the defence sector) – ontological lists. Contract: IP exploitation agreement and basis for termination. Data: to DP or FoIA, that is the question; representing client subject to both kinds of notice and identifying any common issues. Registered Designs: infringement trial with issue on novelty as a defence.
Patents: liability of software commissioner for infringement of the software author in telecommunications. Trade marks: demarcation agreement. Employee inventions and entitlement: advising employee on forming breakaway start-up and scope of duty to invent in an immunology setting. IP crime: fashion case; counterfeiting and money laundering (value circa £1m). Patents and UK Registered Design: advising on mechanicals and design of mechanicals. Data: advising on consequences of breach and misdirected emails; advising on whether to report the matter to the Information Commissioner.