News and Events 2007

Intellectual Property Law – Community Trade Mark – Distinctive Character of a Trade Mark – EU Law – Advertising Campaigns – Fashion Industry

The case of Benetton Group SpA v G-Stae International BV (Case C-371/06) [2007], concerned questions relating to the distinctive character of a mark for which Community Trade Mark protection was sought. According to Article 3 of First Council Directive (EEC) 89/104, so far as material. For more

Commercial Law – Construction of Contract – Loan Repayment – Banking – Joint Venture – Guarantee – Property Law - July 2007

The case of Wosley Securities Ltd v Abbeygate Management Services (Hampton) Ltd [2007], concerned an action which was brought as a result of the claimant, the defendant and a company (“ASL”) entering into a joint venture agreement (“JVA”) to construct a block of flats. It transpired that the development was unprofitable and ASL went into liquidation. ASL was incorporated for the purpose of carrying out the development and had no assets of its own. For more.

Intellectual Property – Patent Dispute – Pharmaceuticals – Patent Invalidity – Generic Drugs – Patent Revocation - June 2007

The case of Generics (UK) Ltd and Others v H Lundbeck A/S [2007] involved a defendant which was a small research-based pharmaceutical company located in Denmark. It held a European patent (“the Patent”) in respect of an anti-depressant drug, escitalopram. The Patent had a priority date of June 1988.

The drug had been produced by the resolution of a racemate of an existing drug, citalopram, so as to obtain single enantiomers thereof. Accordingly it comprised the pure (+) enantiomer, whereas citalopram comprised both (+) and (-) enantiomers. The Patent comprised seven claims. Claim 1 was a product claim directed to the (+) enantiomer, claim 3 related to a pharmaceutical composition containing the claim 1 compound, and claim 6 related to a method of preparing that compound. The claimants brought proceedings, seeking the revocation of the patent on account of the prior art drug, citalopram. For more

Commercial Law – Contract Construction – ‘Reasonable’ & ‘Best’ Endeavours - June 2007

The recent case of Rhodia International Holdings Limited and Rhodia UK Limited v Huntsman International LLC [2007], provides new guidance on a long-disputed area of contract law. According to the judgment of the High Court, a duty to exercise ‘reasonable endeavours' requires less than 'best endeavours' but can still demand a party to act against its own commercial interests, although the case does not resolve all the uncertainty surrounding the difference between ‘reasonable’ and ‘best’ endeavours.

The case confirms that ‘reasonable endeavours’ is a less stringent obligation than ‘best endeavours’ – a concept which is commonly assumed. The case also confirms that a ‘reasonable endeavours’ obligation may be discharged by exhausting just one of a number of possible solutions, whereas a ‘best endeavours’ obligation requires all avenues to be explored. For more

Intellectual Property – Patent Law - Patent Infringement – Invalidity - Regulatory Law – Pharmaceuticals – Healthcare – Biotechnology – Interim Injunction – Perindopril - March 2007

In the case of Les Laboratoires Servier and Another v KRKA Polska SP.ZO.O. and Another [2006], the claimants made an application for an interim injunction to prevent the marketing and distribution of a drug which they claimed infringed their patent. The claimant companies were in the business of manufacturing and researching pharmaceutical products. The first claimant was the second largest French pharmaceutical company worldwide, and the second claimant was a wholly owned subsidiary that marketed and researched such products within the UK.

The defendants were members of a group of companies involved in the sale and distribution of a large number of generic pharmaceutical products worldwide. For more

Intellectual Property Law - Commercial Law - Database Rights for Sales Agencies - An Agency or Distribution Agreement should include an express Assignment of Database Rights - March 2007

A ruling by the High Court has resulted in new case law governing sales agencies with regard to database rights. Where a sales agency has built up a database of customer details, they will now own a database right in that database in the event that there is not an agreement with another party as to the ownership of that database.

What this means in practice is that it is now important to ensure that agency or distribution agreements include an express assignment of any database rights to the supplier of the information (or principal), rather than relying on a general IP assignment clause. For more

Intellectual Property Law – EU – Commercial Litigation - Patent Infringement in the UK by Defendant based in India – Service outside Jurisdiction - March 2007

The case of Celem SA and Another v Alcon Electronics PVT Ltd [2006] concerned jurisdictional issues relating to patent infringement. The claimant companies were engaged in the manufacture of components for the electrical induction heating market, and were the holders of a European patent in relation to certain capacitors.

The defendant was an Indian company also engaged in the manufacture of products for the electrical induction heating market. The claimants had alleged various breaches of their UK intellectual property rights by the defendant. They argued that the manufacture of certain capacitors by the defendants infringed the UK patent. Furthermore, the claimants' particulars of claims made numerous allegations in relation to the importation and distribution of the infringing articles within the United Kingdom. For more

Commercial Law – Corporate Law – Joint Venture - Contractual Construction of Clause in Joint Venture – Meaning Of ‘Procure’ - March 2007

The case of Nearfield Ltd v Lincoln Nominees Ltd and Another [2006], dealt with the issue of the construction of a contractual term in an agreement. The first defendant was a nominee company of the second defendant. The first defendant was incorporated in the British Virgin Islands.

In April 2002, the claimant company entered into a joint venture agreement (“the JVA”) for the redevelopment of a certain property. Under clause 4.1 of the JVA, the claimant was under an obligation to advance a loan of £3,000,000 to the first defendant. According to clause 5.1.3, the duration of the loan would be for three years from the date of the loan. After three years, the second defendant would 'procure' the payment of the loan together with all outstanding interest on written demand by the claimant. For more

Commercial Law – Employment Law – Interpretation of Terms of Employment Contract Re Designing a Product which was not part of Employees Duties – Employee doing Work in his own Time - Breach of Contract - Competition Law – Commercial Litigation - March 2007

The case of Helmet Integrated Systems Ltd v Tunnard and Others [2006], involved a dispute over what actions could be allowed under the terms of an employment contract. The claimant (“HISL”) produced and sold protective equipment. In 1993, it commissioned a new helmet design which was successfully marketed especially to the London Fire Brigade. The defendant was a senior salesman with the claimant.

Whilst in the claimant’s employment, the defendant had the idea for a new modular helmet. He believed that his employers were not interested in developing a new helmet, particularly on the European market, where he perceived there to be a gap for such a product to gain a foothold. For more

Intellectual Property Law – Copyright Infringement – Trade Mark Law – Trade Mark Infringement - Registered Designs – Infringement of Registered Designs – Internet Law - Sale to Other Jurisdictions - Playstation - March 2007

The case of KK Sony Computer Entertainment and Another v Pacific Game Technology (Holding) Ltd [2006], concerned the infringement of copyright in computer games systems under the name of ‘PlayStation’. The first claimant was a Japanese company and the second claimant was its UK subsidiary. Both claimants were corporate incarnations of the well known Japanese electronics group, Sony.

One of Sony's products was the latest version of its highly successful family of computer game systems marketed under the name 'PlayStation' which the second claimant marketed and sold in over 100 countries, including countries within the European Economic Area (“EEA”). In respect of those computer game systems Sony owned...For more

Data Protection – Government Intends to Impose Tougher Penalties for Misuse of Personal Data - February 2007

The Department for Constitutional Affairs (National) issued a press release on 7 February 2007, stating that the courts will now be able to imprison anyone who trades in or deliberately mis-uses individual’s personal data.

This decision follows a public consultation which looked at whether or not the existing penalties for deliberately and willfully mis-using personal data were suitable.

As a result of a consultation, the Government’s new stance is that current penalties (a fine) under section 55 (4-8) of the Data Protection Act 1998 (“the DPA”), are not acting as a strong enough deterrent. For more

Intellectual Property Law – Trade Mark – Landmark Ruling – Test for Invalidity – Opposition Proceedings - Disputes proceeding in the Trade Mark Registry can be heard in the Courts - February 2007

In Special Effects Limited v L’Oreal & International Trademark Association (Intervener) [2007] EWCA Civ 1, the Court of Appeal overturned the decision of the Chancery Division of the High Court. The case concerned an opposition to a trade mark registration. The Court in the first instance held that there was no relevant difference between the practice and procedure of the Trade Mark Registry in opposition proceedings under s 38(2) of the Trade Marks Act 1994 and invalidity proceedings under s 47(1) of the Act. The issues in dispute in the two sets of proceedings were identical. For more

Employment Law – Race Discrimination Two-Stage Test – Race Relations Act – Court of Appeal - February 2007

The recent case of Brown v Croydon London Borough Council and Another [2007], concerned a section of the Race Relations Act 1976 (“the Act”). The employee presented an originating application to an employment tribunal alleging that he had been discriminated against on the grounds of his race. As there was no actual comparator, he had to rely on a hypothetical comparator. His claims were dismissed, and he appealed to the Employment Appeal Tribunal (EAT). He contended that the tribunal had not applied the two-stage test required by s.54A of the Act. This provision had been inserted into the Act in order to give effect to Council Directive (EC) 2000/43 and therefore implementing the principle of equal treatment between persons irrespective of racial or ethnic origin. For more

Intellectual Property Law – Copyright Infringement – Computer Software - February 2007

The case of Point Solutions Ltd v Focus Business Solutions Ltd and Another [2007], which was heard in the Court of Appeal, involved a claimant who carried on business as a provider of computer software services, and in particular software for the creation and use of electronic application forms for provision to the financial services sector.

At the material time the defendants had for a number of years been the dominant supplier in that market. In April 2001, the claimant and the defendants entered into an outsourcing agreement under which the claimant carried out work for the defendants, work which included a review of a module in the defendants’ Goal software. In order to carry out that work, the claimant was provided with three modules of the defendant’s Goal software. For more

Employment Law – Court of Appeal Landmark Decision - Test for Proving Sex Discrimination – Burden of Proof - February 2007

This is a landmark decision regarding the test that has to be applied in a sex discrimination case to prove sex discrimination against an employee. This is the case of Madarassy v Nomura International Plc [2007], involved the interpretation of the Sex Discrimination Act 1975 (“the Act”). For more

Commercial & Corporate Law – EU Law - Proposed Cross Border Trade Laws – Detrimental for UK Companies? - February 2007

According to the UK's most powerful business body, the Confederation of British Industry's (CBI), the proposed new cross-border trade laws by Brussels will ‘bog companies down in a legal quagmire’, as well as damage on-line businesses and undermine the UK's financial services sector. The CBI deputy director-general John Cridland has called on EU policy-makers to urgently review the proposed contract legislation, known as Rome I.

Under the proposed trade laws, a UK firm selling its goods and services to consumers across the European Commission (‘EU’) would no longer be principally governed by English law. Instead it would have to navigate an assault course of up to 27 different (and often conflicting!) legal regimes. The CBI believes that the more likely option for most UK businesses will be simply to not trade outside of the UK.

The businesses which are likely to be particularly affected are the financial and legal services firms because they will lose the right to decide which country's law applies to a contract with a foreign company. In the event of a dispute a court could override a business’ choice of legal jurisdiction and rule that a different legal system applies. As an example, a London firm which now sells its products to a customer in Venice under English law would find itself liable under Italian law for any complaint. Any court case would be heard in an Italian court, under Italian law with the proceedings in Italian. The same situation could also when the company accepts an order from another EU country. For more

Intellectual Property Law – Patent Law – Invalidity for Obviousness - January 2007

In the case of Conor Medsystems Inc v Angiotech Pharmaceuticals Inc and Another [2007], It was also held that sometimes the commercial success of an invention could demonstrate that the idea was particularly good, whereas in other situations the fact that the idea may have been ‘obvious to try’ could come into an assessment. The most important factor however was the nature of the invention. For more

Employment Law: Constructive Dismissal – Procedure – Complaint Handling – Employment Act 2002 - January 2007

The case of Plummer v DMC Business Machines Plc [2007], addressed the issue of what form a grievance raised by an employee in accordance with s.32(2) and para.6 of Schedule 2 of the Employment Act 2002 should take, before an employee is able to bring a claim before an employment tribunal. The employee in this case, initiated proceedings for constructive dismissal and won. The employer appealed to the Employment Appeal Tribunal (EAT). The employer argued that the employment tribunal had no jurisdiction to hear the claim due to the fact that the employee had not lodged a grievance in writing. According to s.32(6)(b) of the Employment Act 2002, a tribunal is prevented from considering a complaint where s.32(2) has not been complied with, but only if the tribunal is satisfied that the breach was brought to their attention by the employer raising the issue of non-compliance with s.32(2). The appeal was dismissed by the EAT. For more

Comment: This is an employment decision, which raises the issues of an employee bringing a grievance and the procedures that have to be followed both by the employee and employer, especially when the case is brought before an employment tribunal.

Forthcoming

Property Law - Home Information Packs - Coming into effect 1 June 2007

From 1 June 2007, all home owners in England and Wales will have to prepare a Home Information Pack before putting their home on the market for sale.

The Government’s new Home Information Packs will be compulsory for anyone marketing a home for sale from 1 June 2007, and according to the Government this will allow essential information to be made available to potential buyers up front. It is envisaged that the Home Information Packs will make selling a home simpler and both sellers and buyers would benefit from the changes to the system.

The Law Society is unhappy about the recent consultation document issued by the Government on 25 January 2007. See Press Release from Law Society http://www.lawsociety.org.uk/newsandevents/pressreleases/view=newsarticle.law?NEWSID=318414. For more

Intellectual Property – Copyright Certification Legislation – Educational Recording Agency – to take effect April 2007

Under the Copyright (Certification of Licensing Scheme for Educational Recording of Broadcasts) (Educational Recording Agency Limited) Order 2007 (‘SI’), Educational Recording Agency Limited will have the right to run a licensing scheme for the granting of licences to educational establishments for the recording by them of broadcasts, other than television programmes broadcast on behalf of the Open University which are the subject of a separate licensing scheme (SI 2003/187)...For more

The 4th Annual Clinical Trial Performance Metrics Summit - Mon 29 Jan 2007 - Thu 01 Feb 2007

Dr Rosanna Cooper will be speaking at the 4th Annual Clinical Trial Performance Metrics Summit on will open its doors in January 2007 to address how pharmaceutical companies can use performance metrics to improve processes, maximise efficiencies and optimise productivity both internally and in partnership with a CRO. For more details visit http://www.iir-events.com/IIR-conf/LifeSciences/EventView.aspx?EventID=764

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