24 January 2015

Court of Appeal upholds Birss J in Rihanna's Case

Topshop, Leeds
Photo Wikipedia

In Fenty and Others v Arcadia Group Brands Ltd and another  [2013] EWHC 2310 (Ch), [2013] WLR(D) 310 Mr Justice Birss gave judgment to Robyn Rihanna Fenty (better known as Rihanna) and her corporate licensing companies against Top Shop for selling a t-shirt that reproduced a photo of the singer. The claim was brought not for infringement of copyright since the owner of the copyright in the photograph had licensed the reproduction of his work but for passing off. Rihanna and her companies had claimed that the t-shirt misrepresented authorization or approval of the manufacture and distribution of the garments and that such misrepresentation damaged her commercial activities. I wrote about the case in Passing off - Fenty v Topshop 10 Sept 2013 and readers are referred  to that note for an appreciation of the judgment.

A lot of people were surprised by Mr Justice Birss's decision including me though I was eventually won over by his Lordship's reasoning after re-reading the case several times. However, others were not. Robert Furneaux of Sipara wrote:
"i was reading your review on the case but cant seem to post a comment! my problem with the case is around the finding of misrepresentation. i am no fashion afficiendo but my sense is that few fashion icons produce collections containing pretty basic t-shirts with photos of themselves on. indeed the River Island collection by Rhianna contains nothing like it. i just dont think TS customers would be confused in that way... hope there's an appeal!"
Well there has been an appeal which came on before Lord Justice Richards, Kitchin and Underhill in Fenty and others v Arcadia Group Brands Ltd and another [2015] EWCA Civ 3 (22 Jan 2015) and they upheld the judgment of the judge below.

Top Shop appealed on four grounds which are summarized in paragraphs [25] to [28] of Lord Justice Kitchin's judgment:
"25   First, the judge wrongly proceeded on the basis that there was no difference in law between an endorsement case and a merchandising case. Character merchandising generally serves to provide the products concerned with features of shape or get-up which become part of the make-up of the products themselves. It is not the province of the common law to create or confer exclusive rights in particular categories of product.
26.   Second, the judge properly and correctly acknowledged that the sale of a garment bearing a recognisable image of a famous person does not, in and of itself, amount to passing off. However, the judge fell into error thereafter in failing to proceed on the basis that the law of passing off treats the use on garments of such images as origin neutral. So, Mr Hobbs continues, the claim for passing off in the present case should only have been entertained upon the basis that the market for garments carrying images of Rihanna was, at least in principle, a market which others were lawfully entitled to enter. Further, the injunction granted by the judge is founded upon the proposition that Topshop is answerable for a misrepresentation by omission, that is to say for failing clearly to inform prospective purchasers that the t-shirts were not approved or authorised by Rihanna. Once it is accepted, as it must be, that selling a garment with a recognisable image of a famous person does not, in and of itself, amount to passing off, any claim for misrepresentation by omission should have evaporated.
27.  Third, the judge ought to have recognised and accepted that the absence of an image right is a matter of law and not a matter of fact. Further, he ought to have assessed the claim having regard to the perceptions of those persons for whom the presence of the image of Rihanna on the t-shirt was origin neutral, and not the perceptions of those persons who were liable to regard the presence of the image as an indication of authorisation. Indeed, had the judge assessed the issue from the correct perspective he would have been bound to find that the claim as pleaded and pursued disclosed no sustainable basis for a finding of liability.
28.   Fourth, the judge fell into further error in finding Topshop liable for misrepresentation in the way that he did because Rihanna had never properly alleged or developed a case that the particular image in issue was in any way distinctive as a result of any marketing or promotional activity which she had ever carried out; that there was no admissible evidence that this image was in any way distinctive; and that the evidence upon which the judge relied had no probative value. In this connection Topshop also seeks permission to appeal against the decision and consequential order of the judge at a pre-trial review hearing which took place on 5 July 2013 concerning objections to the admissibility of the evidence contained in six of the witness statements served on behalf of Rihanna, including that of Mrs Perez, a member of Rihanna's management team, who gave the critical evidence upon which the judge relied."
His Lordship, who delivered the lead judgment, considered those arguments one by one.

As to the first ground he said at paragraphs [45] and [46]:
"45.   In the present case I am entirely satisfied that the judge did have proper regard to the distinction between endorsement and general character merchandising. He began his analysis of the law by reminding himself that to make good any claim in passing off it must be established that the claimant has a goodwill, that the defendant has committed a misrepresentation and that the claimant has, as a result, suffered damage. He then referred to the decision of Laddie J in Irvine and acknowledged that it is not a necessary feature of merchandising that members of the public will think that the products in issue are in any sense endorsed by the celebrity or creator of the character in issue. He continued that it must be shown that the claimant has a relevant goodwill and that the impugned activity involves a false representation that there is a connection between the claimant and the goods in issue of a relevant kind, that is to say that the claimant is materially responsible for their quality. Finally, of course, the belief which this false representation engenders in the minds of the purchasers must play a part in their decision to buy.
46.   With all these principles in mind the judge then approached the facts of present case and made his findings. He considered that the use of this image would, in all the circumstances of the case, indicate that the t-shirt had been authorised and approved by Rihanna. Many of her fans regard her endorsement as important for she is their style icon, and they would buy the t-shirt thinking that she had approved and authorised it. In short, the judge found that the sale of this t-shirt bearing this image amounted to a representation that Rihanna had endorsed it. In my judgment the reasoning of the judge discloses no error of principle of the kind for which Mr Hobbs contends."
In the light of the foregoing the learned Lord Justice dealt with the second ground shortly at paragraph [48]:
"Rihanna has always accepted that she has no right in English law to prevent any use of her image. Further and specifically, she acknowledges that the sale of garments bearing recognisable images of her does not, in and of itself, amount to passing off. However, as Mr Martin Howe QC, who appears with Mr Andrew Norris on her behalf, submits, it does not follow that the image itself must be excluded from the matrix of facts which are said to give rise to an overall representation that she has endorsed the goods to which it has been applied. I am entirely satisfied that the proposition that a famous personality has no right to control the use of her image in general does not lead inexorably to the conclusion that the use of a particular image cannot give rise to the mistaken belief by consumers that the goods to which it is applied have been authorised. Here the judge came to the conclusion that the use of this particular image on fashion t-shirts sold by Topshop amounted to a misrepresentation by Topshop that the garments had been approved or authorised by Rihanna. There is no inconsistency between this finding and the proposition that Rihanna has no absolute right to prevent traders selling garments carrying her image. Nor is the judge's approach undermined by the form of injunction which he ultimately granted. It simply recognises that the vice in the impugned activities lay not in the use of Rihanna's image but in using it in such a way as to cause a misrepresentation. As Mr Howe submits and again I accept, Topshop is in effect contending not for the absence of an image right, but rather for a positive right to market goods bearing an image even if the use of that image in particular circumstances to particular customers gives rise to a misrepresentation. To accede to that submission would be to sanction a trade which results in the deception of the public."
Lord Justice Kitchin considered that the third ground was misconceived.  It would in his Lordship's view require the court both "to shut its eyes to reality and to put on one side well settled principles".  He explained at paragraph [50]:
"In any case of passing off the claimant must establish that he has a goodwill in his business under the name or other feature he is seeking to protect, and that the use of that name or other feature by another trader amounts to a misrepresentation which is calculated to cause deception and so cause damage to his goodwill and his business. The claimant must therefore establish the likelihood of confusion of a substantial number of consumers but not necessarily all of them. Here the t-shirts in issue were being sold through Topshop's stores. It was therefore plainly relevant to consider potential customers who were both fans of Rihanna and prepared to shop in a Topshop store. So also the judge was bound to consider and take into account the activities of Topshop in publicising and promoting its connection with Rihanna over a period of time."
 Turning to the final ground, Lord Justice Kitchin saw no merit in the first limb:
"The statement of claim made clear that Rihanna contended that the image was unauthorised and had been taken whilst she was filming for one of her singles in Northern Ireland. This theme was developed in the statements of those witnesses who gave evidence on her behalf and then, in her opening written argument at trial, there appeared a full exposition of her contentions. She explained that that the image shows her dressed for her video for the single We Found Love from the Talk That Talk album; that the video shoot received lengthy press coverage, partly as a result of the complaints by the farmer upon whose land it was made; and that the image is recognisably her in that music video context."
However, there was more substance in the second. Topshop had objected to the evidence of Mrs Perez on the ground that it amounted to expert evidence for which no permission had been given. Lord Justice Kitchin agreed that Top Shop was entitled to complain that the trial judge had focused upon an expression of opinion by that witness having earlier ruled that it was argument and not something that needed to be cross-examined. However, despite the legitimacy of Topshop's complaint, there was plenty of other evidence upon which Mr Justice Birss coud rely. It followed that the judge was entitled to find that the sale by Topshop of the t-shirt amounted to passing off and that the main appeal should be dismissed and permission to appeal against the judgment of 5 July 2013 refused.

Lord Justice Underhill agreed that the appeal should be dismissed, and that permission to appeal against Birss J's decision of 5 July 2014 should be refused but nevertheless considered that the appeal came close to the border line. He explained at paragraph [63]:
"The judge's conclusion that some members of the relevant public would think that the t-shirt was endorsed by Rihanna is based essentially on two things - her past public association with Topshop (as described by Kitchin LJ at paras. 17-18) and the particular features of the image itself, which is apparently posed and shows her with the very distinctive hairstyle adopted in the publicity for Talk That Talk. I do not believe that either by itself would suffice; in particular, Rihanna's association with Topshop does not seem to me to have been such as to weigh very heavily in the balance. But the judge considered the question very carefully, taking due account of the factors going the other way, and in my view he was entitled to find that the two features in combination were capable of giving rise to the necessary representation."
In other words, as I explained in my previous case note, this case turned on the fact "that Rihanna was no mere clothes horse with a voice but a fashion authority (indeed a designer among other things) and that Topshop had gone out of its way to show a connection with Rihanna." Lord Justice Richards agreed with both Lord Justice Kitchin and Lord Justice Underhill.

Lord Justice Kitchin went out of his way to emphasize that there is in English law no "image right" or "character right" which allows a celebrity to control the use of his or her name or image. If a celebrity wishes to control the use of his or her image he or she must rely upon some other cause of action such as breach of contract, breach of confidence, infringement of copyright or, as in this case, passing off. However, there is one jurisdiction in the British Isles where images rights do exist as I explained in my article on Guernsey's Image Rights Legislation 2 Jan 2013 and as Kate Storey amplified in her guest post on Guernsey's image rights 8 Jan 2013.

I should be amazed if this appeal is not discussed in the seminar on the Law of luxury goods series: intellectual property – how to protect, manage & monetize the know-how & intangible capital of luxury & fashion brands that IALCI (the International Association of Business Lawyers) will hold at the Pullman St Pancras Hotel on 10 Feb 2015. I shall be giving a presentation on the enforcement of intellectual property rights and my friend Alexander Rozycki will discuss John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd [2014] EWHC 3779 (IPEC) (21 Nov 2014) which I discussed in Is this a copy? John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd 11 Dec 2014. If you want to attend that seminar you can book through the form on that website. If you would like to discuss this article or the law of passing off in general, call me in 020 7404 5252 during normal office hours or send me a message through my contact form.

21 January 2015

Car Wars: Enterprise and Europcar

The Rival Logos: Enterprise's to the left and Europcar's to the right

In Enterprise Holdings, Inc v Europcar Group UK Ltd and another [2015] EWHC 17 (Ch) (13 Jan 2015) Enterprise Holdings Inc. ("Enterprise") sued Europcar UK Ltd and its French holding company ("Europcar") for trade mark infringement and passing off.  Enterprise trades under the logo to the left while Europcar had begun to use the sign on the right. The litigation in England iwa part of a global struggle between the two car hire giants over those logos.  According to Mr Justice Arnold there are some 98 trade mark disputes between those parties over Europcar's new logo around the world. 

The Registration
Enterprise alleged infringement of 3 of its UK registered trade Marks and 7 of its Community ones. At trial Enterprise focused its case on CTM  937,4497 ("the CTM") which was registered as of 14 Sept 2010 in respect of  "vehicle rental and leasing services".  The device appears below:

Enterprise contended that Europcar's new logo infringed its registered trade mark under art 9 (1) (b) and (c) of the Community trade mark regulation (Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark OJ 24.3.2009 L78/1).

Art 9 VTM Regulation
Art 9 (1) (b) and (c) provide:
"A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the Community trade mark;
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark."
Claim under art 9 (1) (b)
As to art 9 (1) (b) the judge directed himself at para [112]:
"In order to establish infringement under Article 9(1)(b) of the Regulation, six conditions must be satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public."
In this case there was no dispute as to the first 5 conditions.  This action turned on whether there was a likelihood of confusion.  The judge continued at paragraph [113]:
"The manner in which the requirement of a likelihood of confusion in Article 9(1)(b) of the Regulation and Article 5(1)(b) of the Directive, and the corresponding provisions concerning relative grounds of objection to registration in both the Directive and the Regulation, should be interpreted and applied has been considered by the Court of Justice of the European Union in a considerable number of decisions ..."
He summarized the principles derived from those decisions as follows:
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."
His Lordship reminded himself at paragraph [116] that the Court of Justice had defined "the likelihood of confusion" as "the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings" in Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] CEC 920, [1998] EUECJ C-39/97, [1998] ECR I-2655, [1998] All ER (EC) 934, [1999] FSR 332, [1998] ECR I-5507, [1999] 1 CMLR 77, [1999] RPC 117, [1999] ETMR 1. Also, that in determining whether there is a likelihood of confusion under art 9 (1) (b) of the CTM regulation, the court must take into account the precise context in which the sign has been used.

At paragraph [172] he identified "the average consumer" in this case as
"an ordinary member of the public who rents a vehicle. As noted above, the evidence is that people who rent vehicles are more likely to be male, aged 17-54 and from the ABC1 social groups. As explained above, many consumers of vehicle rental services in the UK are resident abroad, in particular elsewhere in Europe and in North America."
He found that such a person "does not always display that level of attention throughout their interaction with vehicle rental companies."  He added:
"On the contrary, in various circumstances, many consumers are stressed, in a hurry and relatively inattentive. This is particularly the case when they are collecting and returning vehicles in locations such as airports. But it may also be the case when collecting and returning vehicles in other locations."
The judge compared the Europcar sign with the CTM visually and conceptually and concluded at paragraph [202]:
"Overall, it seems to me that there is some similarity between the two logos, but not a great deal. The similarity is not such that anyone who was able to compare the two logos would mistake them. Nor would someone who had a clear mental image of one logo be likely to mistake the other for it. But I consider that someone who only had an imperfect recollection of the Enterprise logo, and then saw the Europcar logo, could mistake the latter for the former, at least in the absence of any differentiating context. In particular, someone who recalled the concept of the Enterprise logo as I have described it could, when they saw the e-moving logo, see it as conveying a very similar concept. As is well known, the human eye is not an accurate recorder of detail and has a tendency to see what it expects to see."
 The services in relation to which the Europcar sign had been used were identical to those for which the CTM had been registered. There was evidence of actual confusion which the judge attributed to the Europcar logo.

Claim under art 9 (1) (c)
At paragraph [119] of his judgment Mr Justice Arnold directed himself that:
"in order to establish infringement under Article 9(1)(c) of the Regulation, nine conditions must be satisfied: (i) the trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party within the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor of the trade mark; (v) it must be of a sign which is at least similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a "link" between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause."
In this case there was a dispute as to the CTM's reputation,  the existence of a link between the sign and the trade mark in the mind of the average consumer and whether there had been detriment to the distinctive character of the trade mark or unfair advantage had been taken of the distinctive character or repute of the CTM.

On the first point, the judge conclude at paragraph [219] that the CTM had acquired a reputation in the UK in the form in which it had been used, that is to say in the colours green and white. Given the size of the UK market for, and the transnational character of, vehicle rental services, he considered that was sufficient to constitute a reputation in the EU. Although the similarity between Europcar's logo and the CTM was relatively low, he considered that the similarity was sufficient, having regard to the reputation of the CTM and the paucity of other 'e' logos in the field of vehicle rental services, for the use of the Europcar sign to bring the CTN to the mind of the average consumer, but not strongly so. However, he was not persuaded that there was any evidence of detriment or unfair advantage.

Passing off
At paragraph [156] the judge referred to the three elements of an action for passing off expounded by Lord Oliver in Reckitt and Colman Products Ltd v Borden Inc and others [1990] 1 WLR 491, [1990] RPC 341, [1990] WLR 491, [1990] 1 All ER 873, [1990] UKHL 12:
"(1) the claimant's goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indication;
(2) the defendant has used, or threatens to use, a name, mark or other indication which has led, or is likely to lead, the public to believe that goods or services offered by the defendant are goods or services of the claimant, or connected with it, and thus to a misrepresentation by the defendant (whether or not intentional); and
(3) the claimant has suffered, or is likely to suffer, damage as a result of the erroneous belief engendered by the defendant's misrepresentation."
In his Lordship's view the facts that gave rise to a claim under art 9 (1) (b) also gave rise to an action for passing off.

The upshot is that the judge found for Enterprise on its claim under art 9 (1) (b) of the CTM regulation and passing off but not on its claim under art 9 (1) (c). This case does not create any new law (except perhaps on the question of whether, "where the claimant does have a business and goodwill in England and Wales, it can rely upon deception of customers who are resident abroad, and in particular deception of customers who became aware of the claimant's business and trade mark in their home country and then encounter the defendant's sign in this country" which he decided in the affirmative) but it is like all of Mr Justice Arnold's judgments great revision on the relevant law. The painstaking way in which he compared the defendant's sign to the registered trade mark should be followed by judges and hearing officers in other cases.

Further Information
Should anyone wish to discuss this case or trade mark law in general, he or she should not hesitate to call me on 020 7404 5252 during normal office hours or use my contact form.

12 January 2015

Patents: the Difficulties of Designing Around a Patent: Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc #2

In Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2013] EWHC 3768 (Pat) (3 Dec 2013) the claimant sued the defendant telecommunications company for infringing two of its European patents:
  • EP 2,259,495 adaptive DSL margin and band control using historical operational data ("495"); and
  • EP 1,869,790 DSL state and line profile control ("790").
Mr Justice Birss held that 495 was valid but had not been infringed and that 790 was valid and had been infringed. Both sides appealed to the Court of Appeal. In Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2014] EWCA Civ 1462 (11 Nov 2014) the Court of Appeal allowed the claimant's appeal against the finding of non-infringement of 495 and dismissed the defendant's appeal against the finding of infringement of 790.

Following Mr Justice Birss's judgment BT attempted a redesign by replacing  loop software with an equation. BT argued that that was enough to take its system outside claims 1 and 13 of 790. The claimant disagreed and argued that the equation operated in exactly the same way as had been claimed. BT applied for a declaration of non-infringement under s.71 of the Patents Act 1977. The judge gave directions for the resolution of the issue. It came before him as Adaptive Spectrum And Signal Alignment Inc v British Telecommunications Plc #2 [2014] EWHC 4194 (Pat) (18 Dec 2014). BT also proposed some further modifications arguing that even if its equation system infringed the further modified system would not. His Lordship therefore had two issues to determine, namely whether the original redesigned system infringed the patent and if it did whether the further redesigned system did so also.

The judge found for the claimant on both issues. 

As to the original redesign his Lordship held that the only difference between the original and the redesigned system was that a loop was replaced by an equation. The point of the loop was to find a profile with a maximum rate above but closest to the safe rate. The equation achieved that directly.  He explained at para [79]:
"Standing back it seems to me that the NGA Equation system infringes claim 1. In the circumstances considered at trial, such as using the green downstream logic, the NGA Equation system, like the original NGA system itself, operates by having isolated out from the overall set of all profiles in which a line is capable of operating, a set of possible profiles ranked by priorities which exist independently of line conditions and then choosing from that set the highest priority feasible profile. The other aspects of the claim concerning feasibility (sub-rules etc.) are satisfied. The process works as a whole because for a given starting profile the possible profile transitions and the priorities are indicated in the Service Profile Table. That table is a profile state transition matrix. The final profile is selected from that matrix. The fact an equation is used instead of a loop makes no difference, the NGA Equation system infringes claim 1 just the same."
 Similarly the judge was not persuaded that the further redesign availed BT because it also included a threshold table. As the claimant relied on the use of threshold tables in the non-infringement proceedings but not in the original proceedings BT argued that it was barred from raising the new point by the rule in Henderson v. Henderson (1843) 3 Hare 100 as amplified by the House of Lords in Johnson v. Gore Wood & Co. [2000] UKHL 65; [2001] 1 All ER 481; [2001] 2 WLR 72 (14 Dec 2000). Mr Justice Birss was having none of that. There was simply no reason for the claimant to refer to the threshold table. As the judge observed at [93]:
"The crucial point is that the system alleged to infringe at trial was one thing whereas the system being considered now is another different one."
He added:
"ASSIA established that the original NGA system infringed. That was not a warrant that a different system did not. If the infringement case at trial had been concerned only with distinct and clearly separable adjunct to the NGA system and, after a finding of infringement by that adjunct, the defendant removed it, then I can see that a defendant in such a case might have grounds to complain about abuse of process if the patentee turned round and said for the first time - oh well the system without the adjunct still infringes. But that is a long way from the facts of this case."
That must surely be right.

As there was no dispute that the claims should be construed in accordance with the principles established by the House of Lords in Kirin-Amgen Inc and Others  v Hoechst Marion Roussel Ltd and Others [2005] RPC 9, [2004] UKHL 46, [2005] 1 All ER 667, (2005) 28(7) IPD 28049, [2005] RPC 169 and the Court of Appeal in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062, [2010] RPC 8 the case hung on the construction of the claims and its own facts. Consequently, the only issue for which this case may be remembered is the issue estoppel point and even then it is hard to argue that it made new law.

I decided to discuss this case because of the maths.  If anyone is similarly interested he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.

06 January 2015

Injunctions against ISPs Part VIII: Cartier International AG and Others v British Sky Broadcasting Ltd and Others

Bond Street
Photo Wikipedia

In Cartier International AG and Others v British Sky Broadcasting Ltd and Others [2014] EWHC 3354 (Ch), [2014] WLR(D) 464 three of the subsidiaries of Compagnie Financière Richemont SA applied to Mr Justice Arnold for injunctions against the five largest internet service providers ("ISPs") in the UK in the following terms:
"1. In respect of its residential fixed line broadband customers to whose service the system known as … is applied, the … Defendant shall within 15 working days in relation to the initial notification (and thereafter, within 10 working days of receiving any subsequent notification) adopt the following technical means to block or attempt to block access to the Target Websites, their domains and sub-domains and any other IP address or URL notified to the …. Defendant whose sole or predominant purpose is to enable or facilitate access to a Target Website. The technology to be adopted is:
(i) IP blocking in respect of each and every IP address from which each of the Target Websites operate and which is:
(a) notified in writing to the … Defendant by the Applicants or their agents; and
(b) in respect of which the Claimants or their agents notify the … Defendant that the server with the notified IP address does not also host a site that is not part of a Target Website.
(ii) IP address re-routing in respect of all IP addresses that provide access to each and every URL available from each of the Target Websites and their domains and sub-domains and which URL is notified in writing to the … Defendant by the Claimants or their agents; and
(iii) URL blocking in respect of each and every URL available from each of the Target Websites and their domains and sub-domains and which is notified in writing to the … Defendant by the Claimants or their agents.
2. For the avoidance of any doubt paragraphs 1(i), 1(ii) and 1(iii) are complied with if the … Defendant uses the system known as … to implement the steps required by those paragraphs.
3. The Claimants or their agents will notify the … Defendant should any IP address and/or URL which has already been notified to the … Defendant under the terms of this Order cease to enable or facilitate access to a Target Website (in which case the … Defendant shall no longer be obliged to block that IP address and/or URL). For the avoidance of doubt, the …. Defendant is wholly reliant on the Claimants accurately identifying the IP addresses and/or URLs from which the Target Websites operate and which should be blocked under the terms of this Order.
4. The … Defendant shall not be in breach of paragraphs 1(i), 1(ii) and/or 1(iii) if it temporarily suspends … or the addition of IP addresses or URLs thereto with the consent of the Claimants or their agents.made
5. The proceedings shall be stayed, save for the purposes of any application to give effect to the terms of this order and save that the parties have permission to apply on notice in the event of any material change of circumstances including, for the avoidance of doubt but without limiting the generality of the foregoing, in respect of the costs, consequences for the parties and effectiveness of the aforesaid technical means from time to time.
6. The operators of the Target Websites (as defined in the Schedule to this Order) and the operators of any other website who claim to be affected by this Order, are to have permission to apply on notice to vary or discharge this Order insofar as it affects such an applicant, any such application to be on notice to all the parties and to be supported by materials setting out and justifying the grounds for the application. Any such application shall clearly indicate the status of the applicant and indicate clearly (supported by evidence) that it is the operator of any website which is the subject of such application.
7. There be no order for costs."
The "Target Websites" were websites that offered for sale counterfeit copies of the claimants' goods.

Mr Justice Arnold had made several such orders against ISPs since 2011 under s.97A of the Copyright, Designs and Patents Act 1988. That section provides:
"97A Injunctions against service providers
(1) The High Court (in Scotland, the Court of Session) shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.
(2) In determining whether a service provider has actual knowledge for the purpose of this section, a court shall take into account all matters which appear to it in the particular circumstances to be relevant and, amongst other things, shall have regard to--
(a) whether a service provider has received a notice through a means of contact made available in accordance with regulation 6(1)(c) of the Electronic Commerce (EC Directive) Regulations 2002 (SI 2002/2013); and
(b) the extent to which any notice includes--
(i) the full name and address of the sender of the notice;
(ii) details of the infringement in question.
(3) In this section "service provider" has the meaning given to it by regulation 2 of the Electronic Commerce (EC Directive) Regulations 2002."
This section had been inserted to give effect to art 8 (3) of the Information Society Directive (Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society OJ L 167, 22.6.2001 P10-19). There is no similar provision in the Trade Marks Act 1994 or any other intellectual property statute. The question for Mr. Justice Arnold was whether the Senior Courts of England and Wales already had jurisdiction to make such an order under their inherent jurisdiction or under art 11 of the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights OJ L 157 30.3.2004).

Mr Justice Arnold said at paragraph [6] of his judgment that he had been informed by counsel that, so far as they and their professional and lay clients were aware, this was the first occasion on which an application for a website-blocking order against ISPs in order to combat trade mark infringement has been made anywhere in the EU, with the possible exception of the Danish case of Home A/S v Telenor A/S (Retten på Frederiksberg, 14 December 2012). "It is a test case", said the judge, "which, if successful, is likely to be followed by other applications by Richemont and other trade mark owners, both here and in other countries."

This being a test case the judge summarized the issues that he had to decide at paragraph [2]:
"First, does this Court have jurisdiction to make an order of the kind sought? Secondly, if the Court has jurisdiction, what are the threshold conditions, if any, which must be satisfied if the Court is to make an order? Thirdly, are those conditions satisfied in the present case? Fourthly, if those conditions are satisfied, what are the principles to be applied in deciding whether or not to make such an order? Fifthly, applying those principles, should such orders be made in the present case?"
His Lordship decided that he did have jurisdiction and that it was right for him to make the orders sought in the circumstances of this case.

As to the first issue, the judge noted that s.37 (1) of the Senior Courts Act 1981 provides:
"The High Court may by order (whether interlocutory or final) grant an injunction or appoint a receiver in all cases in which it appears to the court to be just and convenient to do so."
After reviewing the authorities and in particular Lord Scott's speech in Fourie v Le Roux and Otherts [2007] 1 WLR 320, [2007] 1 All ER 1087, [2007] BusLR 925, [2007] WLR 320, [2007] UKHL 1, [2007] UKHL 01, [2007] Bus LR 925 and the Court of Appeal's judgment in  Samsung Electronics (UK) Ltd v Apple Inc  [2012] EWCA Civ 1339 the judge concluded at paragraph [111] that the English courts did have jurisdiction to make website blocking orders of the kind sought by the claimants. If he was wrong on that point the judge concluded at paragraph [132] that s.37 (1) had to be interpreted in accordance with art 11 of the Enforcement Directive which required EU member states to "ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC."

Having decided that he had jurisdiction  to make blocking orders in trade mark disputes the judge turned to the conditions for the making of such orders and concluded that they must be consistent with the other provisions of the Enforcement Directive and other provisions of EU law. He listed these at paragraph [141]:
"First, the ISPs must be intermediaries within the meaning of the third sentence of Article 11. Secondly, either the users and/or the operators of the website must be infringing the claimant's trade marks. Thirdly, the users and/or the operators of the website must use the ISPs' services to do that. Fourthly, the ISPs must have actual knowledge of this."
The first three conditions were clear from the wording of the art 11. As for the fourth condition His Lordship said:
"The fourth condition is not contained in Article 11, but in my view it follows from Article 15 of the E-Commerce Directive and by analogy with Articles 13 (1) (e) and 14 (1) (a) of the E-Commerce Directive. If ISPs could be required to block websites without having actual knowledge of infringing activity, that would be tantamount to a general obligation to monitor. It is also difficult to see that such a requirement would be consistent with the requirements of Article 3(1) of the Enforcement Directive. As to what constitutes "actual knowledge" in this context, I see no reason to interpret this requirement differently to the manner in which I interpreted it in the section 97A/Article 8(3) context: see 20C Fox v BT at [114]-[157]."
Mr Justice Arnold decided that each of those conditions had been satisfied and that it was right to make blocking orders in this case.

A few weeks later the claimants found evidence of other websites that offered counterfeit goods for sale and returned to court with applications for orders to block those sites. In Cartier International AG v British Sky Broadcasting Ltd and others [2014] EWHC 3915 (Ch) (26 Nov 2014) Mr Justice Arnold made the requested orders.

None of the orders made by Mr Justice Arnold or other judges in the earlier cases has ever been appealed successfully and it is unlikely that anyone will appeal or apply to vary this order. As His Lordship reasoned that his jurisdiction derived from s.37 (1) of the Senior Courts Act 1981 there is no reason why blocking should not be made in support of other intellectual property rights such as passing off and registered designs.

If anyone wants to discuss this case, he or she should not hesitate to call me on 020 7404 5252 during office hours or use my message form.

01 January 2015

Patents: Court of Appeal allows the appeal in Jarden

In  Jarden Consumer Solutions (Europe) Ltd v SEB SA and Another [2014] EWHC 445 (Pat) (28 Feb 2014) Jarden Consumer Solutions (Europe) Ltd ("Jarden") sued SEB SA ("SEB") for the revocation of its European patent number 2.085,003 ("the patent") for deep fryer with automatic fat coating. SEB counterclaimed for infringement of the patent by importing and selling the Breville Halo Health fryer. The action came on for trial before Mr Justice Arnold who found that 3 of the claims of the patent were invalid but 3 others were valid and had been infringed. Jarden appealed against the judge's construction of the patent and his finding of infringement. The appeal was heard by Lord Justices Vos and Burnett and Sir Timothy Lloyd in Jarden Consumer Solutions (Europe) Ltd v SEB SA and Another [2014] EWCA Civ 1629 (17 Dec 2014),

The Patent
The invention  for which the patent was granted is was summarized by Lord Justice Vos at paragraph [4] by reference to the following drawings: 

"the Patent concerns an apparatus for frying food, particularly chips, that involves the use of only a small quantity of oil, by automatically stirring and turning (or "mingling" in the terminology of the Patent) the food so as to coat it in a thin film of oil or fat and cooking it (at least in the preferred embodiment) by a directed flow of heat. The main features of the apparatus that accomplish this, which are relevant to this case, according to the Patent, are:-
i) "the main body 2" which is provided with a "lid 2C", forming a closed box in co-operation with "the side skirt 2B", and "the base 2A";
ii) "a receiver means 5" or receptacle, which is substantially sealed against liquids, designed to contain both the food and the fat;
iii) "a stirrer means 6" with "a blade 16" designed to move with respect to the receiver means, so as to mingle and stir the food and fat;
iv) "a main heater means 24" to generate a "flow of heat 25" orientated so as to strike the food directly."
The Appeal
Jarden contended that the judge misinterpreted the term "the main body" as including the lid of the fryer. It argued that the judge had wrongly made use of identifying numerals in the patent to construe its meaning. It submitted that its Halo fryer did not infringe the patent when properly construed because the Halo's heater was entirely located in the lid, whereas the specification shows only the ducts directing heat in the lid. Jarden also contended that the judge was wrong to hold that claims 10, 11, 13 and 15 were not obvious over German Patent no. P 21 02 062.2 entitled "Method and device for cooking food" filed on 16 Jan 1971 and published on 27 July 1971 ("Vogt").  Jarden alleged that its fryer did not infringe, because claim 3 (and thus claims 10, 11 and 13) required that "the lid together with the main body form a substantially sealed chamber" whereas the Halo fryer has a 2.3 mm gap around its circumference between the body and the lid, and was therefore not "substantially sealed". 

The Issues
At paragraph [31] Lord Justice Vos summarized the issues as follows:
"As the case was ultimately argued, only two main issues arose. The first was whether the words "mounted on the main body" in claim 9 should or should not be construed as including the lid, and the second was whether the judge ought to have held that claims 10, 11, 13 and 15 were obvious over Vogt. The second issue would not arise if Jarden were right as to construction, so that claim 9 did not cover a fryer where the main heater means was not mounted on the lid."
Rules on Construction
Lord Justice Vos referred to the following extract from Lord Justice Jacob's judgment in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062, [2010] RPC 8 for the rules of construction in relation to the use of reference numerals:
"The task for the court is to determine what the person skilled in the art would have understood the patentee to have been using the language of the claim to mean. An abbreviated version of [the principles] is as follows:
(i) The first overarching principle is that contained in Article 69 of the European Patent Convention.
(ii) Article 69 says that the extent of protection is determined by the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context.
(iii) It follows that the claims are to be construed purposively - the inventor's purpose being ascertained from the description and drawings.
(iv) It further follows that the claims must not be construed as if they stood alone - the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims.
(v) When ascertaining the inventor's purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.
(vi) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol - a mere guideline - is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee's territory.
(vii) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements.
(viii) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context.
(ix) It further follows that there is no general 'doctrine of equivalents.'
(x) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context.
(xi) Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge."
His Lordship cited art 69 of the European Patent Convention and rule 43 (6) and (7) of the Implementing Regulations and para [17] of Lord Justice Jacob's judgment in Virgin Atlantic:
"In particular, we do not think that numerals should influence the construction of the claim at all – they do not illustrate whether the inventor intended a wide or narrow meaning. The patentee is told by the rule that if he puts numerals into his claim they will not be used to limit it. If the court subsequently pays attention to the numbers to limit the claim that is simply not fair. And patentees would wisely refrain from inserting numbers in case they were used against them. That is not to say that numbers are pointless. They help a real reader orient himself at the stage when is trying to get the general notion of what the patent is about. He can see where in the specific embodiment a particular claim element is, but no more. Once one comes to construe the claim, it must be construed as if the numbers were not part of it. To give an analogy, the numbers help you get the map the right way up, they do not help you read it to find out exactly where you are."
The Court of Appeal allowed the appeal on the construction point, and declared that the claims that Mr Justice Arnold had found to be valid were not infringed by the Halo fryer.  The Lord Justices had no doubt that Mr Justice Arnold fell into legal error by allowing the reference numerals to influence his construction of the claim. In their view the trial judge was not simply using the reference numerals to identify which parts in fig 2 were being referred to in the claims or the specification, but was relying on the use of the particular identifiers "2", "2A", "2B" and "2C" (referring to the main body, the base, the side flank and the lid respectively) to conclude that the lid was to be regarded as part of the main body.

The Lord Justices then proceeded to construe the patent following Lord Justice Jacob's rules set out above and came to a very different conclusion at para [40] from that of the trial judge:
"First, claim 3 says that the "lid together with the main body form a substantially sealed chamber". If the lid were construed to be part of the main body, that formulation would have been different. Claim 4 then provides that the hinge is "for connecting the lid and the main body". If it had been intended to communicate to the skilled reader that the lid was to be regarded as part of the main body, the Patent would have used separate words to describe the body without the lid on the one hand and the body with the lid on the other hand. Moreover, all parties accept that the term "main body" has to have a uniform meaning throughout the Patent, though [SEB's counsel] submits that it only includes the lid where there is a lid on what is being described."
It followed that Mr Justice Arnold had been wrong to conclude that the main heater means mounted on the main body referred to in the claims could include a "main heater means" mounted in the lid.  As that was sufficient to dispose of the appeal it was unnecessary to consider the second ground of appeal. However, their Lordships seemed to think that the judge below was justified in his conclusion.

It is not often that Mr Justice Arnold is successfully appealed. His judgments are well documented and well argued which us why they are so long and detailed. Should anyone wish to discuss this case or patent law generally he or she should call me on 020 7404 5252 during office hours or get in touch through my contact form.

27 December 2014

Designs in Ice Cream Vans: Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others

There are often a lot of cases brought by the fashion trade or toy or novelty manufacturers in the run up to Christmas. There don't seem to have been all that many this year judging by the Chancery Division cause list and the Patent Court and Intellectual Property Enterprise Court ("IPEC") diaries. However, there has been a case about ice cream or rather ice cream vans. In Whitby Specialist Vehicles Ltd. v Yorkshire v Yorkshire Specialist Vehicles Ltd [2014] EWHC 4242 (Pat) the biggest manufacturer of ice cream vans in the UK sued one of its competitors or unregistered Community design, design right and trade mark infringement.

The trial took place in the Patents Court on the 10, 12-14, 20 Nov 2014 and judgment was delivered on the 17 Dec 2014. Usually actions of this kind proceed in IPEC where trials are limited to two days and costs are capped at £50,000 for the trial on liability and £25,000 for the account or inquiry. Those not in the case have to wonder why that did not happen in this case. A possible explanation is that the claimant had  no incentive to limit costs that it confidently expected to recover from the other side and the defendants did not know about IPEC because they had no legal representation for much of the litigation. If that is what happened, it is an object lesson that while lawyers may be expensive not having a lawyer can be even more expensive - indeed sometimes ruinously expensive. Even if this case was unwinnable it could still have been settled. The costs of an early settlement would almost certainly have been less than those of a lengthy trial in the Patents Court.

Ice cream vans generally consist of a chassis and cab manufactured by a commercial van manufacturer onto which a body designed and manufactured by a specialist supplier such as Whitby Specialist Vehicles Ltd. ("Whitby") is added. The conversion can be done by starting from a bare commercial van chassis or a complete commercial van and adding the body and interior fittings which are commonly made of moulded glass reinforced fibreglass panels ("GRP").

In 2006 Whitby designed a new model ice cream van, known as the Whitby Mondial, based on a Mercedes Sprinter chassis.  Photos of the Mondial appear above. No design drawings were created apart from rough sketches which were not retained. Instead Whitby created wooden "plugs" from which moulds were made for the creation of the GRP panels. In addition to those panels, Whitby designed certain mechanical components, in particular a stand for a soft ice cream making machine and a drive mechanism leading from the engine to the machine. Whitby registered the design of the Mondial and representations of the front, rear and side elevations of the registered design appear with those photos.

The defendant company, Yorkshire Specialist Vehicles Ltd. ("Yorkshire"), manufactured the Millennium van which is also shown in the photographs above. At trial the second and third defendants, who ran Yorkshire, admitted that they had used panels from a Mondial as plugs to produce moulds for GRP panels for the Millennium vam and that they had also copied the mechanical components for their product. Much of the trial was about whether and how far the fourth defendant, who was the second and third defendants' father, had participated in the copying.

Between paras [17] and [30] Mr Justice Arnold directed himself on the relevant provisions of the Designs Directive (Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs OJ L 289 , 28/10/1998 P. 0028 - 0035), the Registered Designs Act 2001 and the case law. He identified the "informed user" as an ice cream van operator. From the perspective of such a user he considered photos of ice cream vans that had been supplied by the parties in their pleadings or on disclosure. He listed the common features of ice cream van design and the constraints on design freedom which he took to be cost, regulatory, practical and commercial requirements. He compared features of the registered design with the common features that he had identified and concluded at para [37] that the registered design possessed individual character and was therefore valid though he noted the Whitby's concession at para [38] that the registered design afforded a "relatively narrow scope of protection" which was right given that the Registered Design did not represent a significant departure from the design corpus and the constraints on the designer's freedom mentioned above. He compared features of the registered design with the Millennium van in a table and concluded at para [40] that the Millennium van did not produce a different overall impression and that it therefore infringed the registered design,

As usual, his Lordship analysed the legislation and case law thoroughly and accurately. The case is worth reading and following for that analysis alone. However, in the last few paragraphs he appears to have conflated the exercise of determining validity with that of deciding whether the registered design had been infringed. For instance, he compared features of the Millennium with the registered design at paragraph [36] before he had determined whether the registered design had individual character and was therefore valid. When construing a patent it is usual to consider the claims without reference to the alleged infringement. Once the specification is understood and the scope of the monopoly has been determined the judge decides whether the defendant's product or process falls within that monopoly. While there may be nothing in the legislation and authorities to mandate a similar approach in design law it is logical to do so. Because copying in this case was so obvious and was eventually admitted a different approach would have reached the same result. Nevertheless, there may be other cases when it would be safer to determine validity and infringement in separate exercises.

The judge next considered Whitby's claim for infringement of unregistered design right. Between paras [40] and [53], he set out the legislation and case law including the changes to the definition of "design" which I had discussed in my article "What is the definition of "design" in s.213 (2) of the Copyright, Designs and Patents Act 1988 following the deletion of "any aspect of" from the sub-section" 13 Dec 2014. In DKH Retail Ltd v H. Young (Operations) Ltd [2014] EHWC 4034 (IPEC) at [10]-[18] it was agreed that the amendment to s.213 (2) of the Copyright Designs and Patents Act 1988 by s.1 (2) of the Intellectual Property Act 2014 was fully retrospective,
"with the potential consequence that an act committed prior to 1 October 2014 which was an infringement of design right as the law then stood retropectively ceased to have been an infringement."
Mr Justice Arnold had some doubts as to whether that was correct though it did not matter for the purposes of the case. He found that some aspects of the design were commonplace, others fell within the "must fit" and "must match" exceptions and that there were differences between the Mondial and the Millennium but nonetheless concluded that the defendants' van was substantially to the design of the claimant's van and drive mechanism. Accordingly, Whitby's unregistered design rights had been infringed.

The drive shaft cover of Whitby's drive shaft bore its trade mark WHITBY MORRISON. In copying the drive shaft of Yorkshire also copied those words. By making and selling drove shafts bearing that marl Yorkshire infringed s.10 (1) of the Trade Marks Act 1994.

Although he denied copying there was evidence that the fourth defendant had funded the purchase of a Mercedes van, its conversion by Whitby and the conversion by the other defendants of other vans. There was also evidence that the fourth defendant knew how to fit GRPs. The judge concluded that the fourth defendant had participated in the copying, conversion and sale of a vehicle that he knew to be an infringing article and that he was therefore jointly and severally liable in the registered design, design right and trade mark infringement with the other defendants.

This has been an expensive exercise for the defendants and there is more expense to come if Whitby seeks an inquiry as to damages or an account of profits but in one respect they have got off lightly. Had they carried out their activities after 1 Oct 2014 they might have been prosecuted under s.35ZA of the Registered Designs Act 2014 which carries a maximum penalty of 10 years imprisonment, an unlimited fine or both.

Should anyone wish to discuss this case or indeed registered design, design right or trade mark law in general, he or she should call me after the Christmas holidays on 020 7404 5252 or use my contact form. I can also be reached through Facebook, G+, Linkedin, twitter or Xing.

20 December 2014

Is Infringement of a Foreign Patent akin to Highway Robbery?

Patents: Les Laboratoires Servier and another v Apotex Inc and others [2014] UKSC 55, [2014] 3 WLR 1257, [2014] WLR(D) 452, [2014] BUS LR 1217, UK Supreme Court

In Everet v. Williams (1893), 9 L.Q. Rev. 197, the highwayman John Everet sued his partner in crime Joseph Williams "for discovery, an account, and general relief" for dealing "with several gentlemen for divers watches, rings, swords, canes, hats, cloaks, horses, bridles, saddles, and other things" which they acquired "at a very cheap rate". The court dismissed the action on the ground that no action arises from a disgraceful act ("ex turpi causa non oritur actio"), fined the claimant's solicitors and ordered them to pay the defendant's costs. They got off lightly. Their client and the defendant were arrested, brought to trial for their "dealings" and hanged. You can find out more about the case in The Highwayman's Case.

Fast forward to 2008.  In  Les Laboratoires Servier and another v Apotex Inc and others  [2008] EWHC 2347 (Ch), [2009] FSR 3 (9 Oct 2008) Mr Justice Norris awarded the Apotex companies ("Apotex") £17.5 million upon the Servier group ("Servier")'s cross-undertaking in damages because the Apotex had been prevented from importing perindopril erbumine tablets from Canada and selling them in the United Kingdom by an interim injunction that was subsequently discharged (see my case note Interim Injunctions: Les Laboratoires Servier v Apotex Inc 10 Oct 2008).  However, the manufacturer of those tablets in Canada by the defendants had become unlawful when Madam Justice Snider held in Les Laboratoires Servier and others v Apotext Inc, and another 67 CPR (4th) 241; [2008] FCJ No 1094 (QL); 332 FTR 193 that such manufacture infringed a patent for the drug that had been granted to one of the Servier companies. Servier had asked Mr Justice Norris for permission to amend their points of defence in the inquiry proceedings to plead Madam Justice Snider's decision but the judge refused to allow them to do so on the grounds that they had applied for permission too late. Servier appealed to the Court of Appeal which allowed the amendment (Les Laboratoires Servier and another v Apotex Inc and others [2010] EWCA Civ 279).

By the time the appeal was heard Apotex had already received the £17.5 million that had been awarded to them by Mr Justice Norris. The effect of the Court of Appeal's decision was that those moneys had to be treated as an interim payment.  The question
"whether a patentee who has obtained an interim injunction from this court to restrain infringement of a European patent (UK) which is subsequently held invalid should compensate the defendant for losses sustained as a result of being prevented by the injunction from selling goods manufactured by the defendant in infringement of a valid foreign patent owned by the same group of companies"
came before Mr Justice Arnold in  Les Laboratoires Servier and another v Apotex Inc and others [2011] RPC 20, [2011] EWHC 730 (Pat). His Lordship held that it should not and because such claim was barred by the ex turpi cause rule and he ordered Apotex to repay the £17.5 million that they had been awarded by Mr Justice Norris. Apotext appealed to the Court of Appeal which allowed the appeal (Les Laboratoires Servier and another v Apotex Inc and others [2012] EWCA Civ 593, [2012] WLR(D) 138, [2013] RPC 21, [2013] Bus LR 80. One of the reasons why the Court of Appeal allowed the appeal was that Apotex had agreed to give credit in the English litigation for any damages that might be awarded against them in Canada. Servier appealed to the Supreme Court.

The issue before their Lordships was whether the rule that had prevented one highway robber from claiming an account from another also prevented the defendants from claiming damages for being prevented from infringing a patent in Canada.  The point was summed up neatly by Lord Sumption at paragraph [9] of his judgment:
"(1) Does the infringement of a foreign patent rights constitute a relevant illegality ("turpitude") for the purpose of the defence?
(2) If so, is Apotex seeking to found its claim on it?
(3) Is Servier entitled to take the public policy point having given an undertaking in damages?"
Another way of putting it might be "is foreign patent infringement akin to highway robbery?"

The Court's first task was to determine what is meant by turpitude? At paragraph [25] of his judgment Lord Sumption said:
"The ex turpi causa principle is concerned with claims founded on acts which are contrary to the public law of the state and engage the public interest. The paradigm case is, as I have said, a criminal act. In addition, it is concerned with a limited category of acts which, while not necessarily criminal, can conveniently be described as "quasi-criminal" because they engage the public interest in the same way. Leaving aside the rather special case of contracts prohibited by law, which can give rise to no enforceable rights, this additional category of non-criminal acts giving rise to the defence includes cases of dishonesty or corruption, which have always been regarded as engaging the public interest even in the context of purely civil disputes; some anomalous categories of misconduct, such as prostitution, which without itself being criminal are contrary to public policy and involve criminal liability on the part of secondary parties; and the infringement of statutory rules enacted for the protection of the public interest and attracting civil sanctions of a penal character, such as the competition law considered by Flaux J in Safeway Stores Ltd v Twigger [2010] 3 All ER 577."
There were some cases that suggested that the principle might be wider than that but apart from those decisions
"the researches of counsel have uncovered no cases in the long and much-litigated history of the illegality defence, in which it has been applied to acts which are neither criminal nor quasi-criminal but merely tortious or in breach of contract."
His Lordship reasoned:
"In my opinion the question what constitutes "turpitude" for the purpose of the defence depends on the legal character of the acts relied on. It means criminal acts, and what I have called quasi-criminal acts. This is because only acts in these categories engage the public interest which is the foundation of the illegality defence. Torts (other than those of which dishonesty is an essential element), breaches of contract, statutory and other civil wrongs, offend against interests which are essentially private, not public. There is no reason in such a case for the law to withhold its ordinary remedies. The public interest is sufficiently served by the availability of a system of corrective justice to regulate their consequences as between the parties affected."
He added, at paragraph [29]  that there may be "exceptional cases where even criminal and quasi-criminal acts will not constitute turpitude for the purposes of the illegality defence." In his Lordship's opinion
"the illegality defence is not engaged by the consideration that Apotex's lost profits would have been made by selling product manufactured in Canada in breach of Servier's Canadian patent. A patent is of course a public grant of the state. But it does not follow that the public interest is engaged by a breach of the patentee's rights. The effect of the grant is simply to give rise to private rights of a character no different in principle from contractual rights or rights founded on breaches of statutory duty or other torts. The only relevant interest affected is that of the patentee, and that is sufficiently vindicated by the availability of damages for the infringements in Canada, which will be deducted from any recovery under Servier's undertaking in England. There is no public policy which could justify in addition the forfeiture of Apotex's rights."
Having decided that point, the other two issues listed at paragraph [9] of Lord Sumption's judgment did not arise.

Lord Mance agreed with Lord Sumption that the appeal should fail on the simple basis that the manufacture and supply of product in breach of the Canadian patent would not have involved turpitude such as to engage the maxim ex turpi cause action non oritur. 

Lord Toulson thought that Servier was attempting to extend the doctrine of illegality beyond any previously reported decision in circumstances where he could see no good public policy reason to do so.

The conclusion of the Supreme Court was that infringing a foreign patent is not like highway robbery. If anyone wants to discuss this fascinating case, public policy, interim injunctions or patent law in particular, he or she should not hesitate to call me on 020 7404 5252 during office hours or message me through my contact form.