What I have been doing recently
As of end September 2023
I will update this 1-2 times a month.
Various trade mark oppositions and appeals. Trade Marks: advising on manner and means of co-ownership (joint tenant vs tenant in common); deceased co-owner. Trade Marks: infringement – real issue: similarity of goods and ‘link’ in 5(3) cases. IT: breach of IT contract (running to 370 pages) entitlement to terminate; remedies post termination including copyright infringement injunction. Procedure: security for costs; indigent claimant & stifling. Procedure: mismatch between IPEC pleaded case and case on the evidence – relevance of Marflow. Trade mark opposition: scope and interference between specifications. Trade Mark appeal: to appeal to the Appointed Person (or not); issue being upon reserved words. AI: contracts concerning access to client’s patents by academic institutions. Trade Marks settlement: demarcation dispute relating to activities in education and training sectors. Trade Marks: foreign infringement, UK actionability. Design Right, professional negligence: whether prior representatives acted properly; whether a professional of duty issue arising. Patent: infringement of enzyme patent – markush formulae – identifying infringement – selection of experts. Confidential information and unregistered design right: information concerning recycling and treating light hydrocarbons (cooking oil). Trade Marks: cross border infringement dispute; can we sue them here for what they have done there? High value IT contract concerning arbitrable dispute over breach and degree of cooperation necessary to resolve the matter. Copyright in a database and database rights: large financial information provider; provision of bespoke information products and derivative information and speciality processing; who owns what? Patents in lateral flow technologies; joint ventures and unclear exploitation agreement, again, who owns what?
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 common fields of activity.