Legal News

Pfizer Inc v Uniqure Biopharma BV; Uniqure Biopharma BV and another company v CSL Behring Llc [2024] EWHC 2672 ( Pat) What are the practical implications of this case? This decision carries practical consequences for practitioners regarding, particularly: (i) how secondary material bears on inventive step; and (ii) the significance of expert testimony and the way the judge views those experts within proceedings. Secondary evidence The heart of Pfizer’s case was its ‘primary evidence’: that EP 650 lacked an inventive step over prior art— Stafford, a PCT application describing non‑naturally occurring FIX polypeptide mutants with assorted substitutions at position 338—when assessed by the notional skilled team (a gene therapist and a structural biologist). On that footing, they would deem it obvious to employ a modified FIX gene bearing leucine at position 338; on Pfizer’s telling, this followed...

In this issue: Trade marks/passing off Patents General IP Lex Talk®IP: a Lexis®Nexis community Daily and weekly news alerts New and updated content Dates for your diary Trackers Useful information Trade marks/passing off Does You Tube Shorts infringe registrations of SHORTS marks and are those registrations valid? ( Shorts International Ltd v Google Llc) The dispute in Shorts International v Google [2024] EWHC 2738 ( Ch) focused on Google’s You Tube Shorts offering. Shorts International Ltd ( SIL) alleged that Google’s deployment of particular signs for the service infringed SIL’s registered trade marks and amounted to passing off. Google denied both infringement and passing off, arguing instead that SIL’s registrations were invalid or liable to revocation for non‑use. The court found that, at the relevant times, most of SIL’s registrations survived, although the word mark ‘...

What are the characteristics of a 'family' of brands? A family of brands is a set of related trade marks a business employs to build a unified brand presence. Core features include: Shared element — a unifying component (for example, a word, logo, or design cue) appearing across every brand in the family, creating a clear association Consistent brand identity — such families typically carry aligned visual and thematic cues, including colours, typefaces and stylistic choices, which foster cohesion and help each product be recognisable as part of the group Consumer perception — to work effectively, consumers should connect the common element with a particular origin, a certain characteristic, or an expected level of quality Independent yet related brands — while the family maintains a shared identity, each brand should preserve distinct attributes so it can address specific market...

In this issue: Trade marks/passing off Patents Copyright & associated rights Designs General IP Daily and weekly news alerts Dates for your diary Trackers Useful information Trade marks/passing off Supreme Court slices Sky’s trade marks ( Sky v Skykick) The Supreme Court reinstated the ruling of Mr Justice Arnold (as he then was): Sky’s applications for excessively wide trade marks were made in bad faith. Accordingly, the marks were invalid in part wherever Sky lacked a genuine intention to use them. The Court likewise endorsed the High Court’s trimming of Sky’s specification. Skykick’s appeal against the infringement finding, however, did not succeed. This top‑tier decision confirms that an absence of intent to use a mark for listed goods or services can found a bad faith invalidity claim, and it offers guidance on when such bad faith will be made out. By...

Shorts International Ltd v Google Llc [2024] EWHC 2738 ( Ch) What are the practical implications of this case? This decision underscores the challenge of enforcing marks with limited distinctiveness—particularly where parts of a sign, or the sign overall, have become generic in everyday language or entrenched trade usage. Protection for marks containing descriptive matter is tightly confined and, absent significant use leading to acquired distinctiveness, infringement claims will falter even where the impugned sign differs only modestly. The ruling also highlights the decisive role of brand reputation when assessing likelihood of confusion or passing off. Here, You Tube’s renown was so great that the judge held there was no prospect of confusion with SIL, nor of large numbers of consumers being deceived into thinking You Tube Shorts was SIL’s service. What was the background? The defendant, Google, owns and runs the You Tube video...

Motorola Solutions Inc and another company v Hytera Communications Corp Ltd and other companies [2024] EWHC 2891 ( Comm) What are the practical implications of this case? This judgment underscores several practical points for those seeking to enforce foreign judgments that may involve an aspect of ‘multiple damages’: First, practitioners must identify whether the overseas judgment comes within the meaning of ‘multiple damages’. Under the PTIA 1980, this refers to a judgment produced by ‘doubling, trebling or otherwise multiplying’ a compensatory amount for loss or damage. Where the applicable foreign statute compels the multiplication of an award, that situation plainly falls within the statutory prohibition. Conversely, where (as in this case) the foreign court elects—without any requirement—to increase damages on a punitive footing by applying a multiplier, it is similarly probable that the award will be caught by, and therefore offend against, the PTIA 1980......

My Contracts Ltd v 74 Hamilton Terrace Freehold Ltd [2024] EWHC 2896 ( TCC) What are the practical implications of this case? This decision offers a timely reminder of the way time periods are to be construed within construction contracts, and acts as a useful sequel to the judgment in Elements ( Europe) Ltd v FK Building Ltd, which likewise involved a JCT form of contract. At bottom, though, it principally reiterates that the courts will give effect to the contractual text as agreed, and will decline to interpolate wording into a clause that the parties neither drafted nor intended. What was the background? My Contracts Ltd ( MCL) and 74 Hamilton Terrace Freehold Ltd (74HTF) entered into a contract based on the JCT Design and Build Contract 2016 edition, incorporating extensive bespoke amendments and dated 2 March 2023 (the Contract), for the execution of works...

In September 2024, the UPC delivered its inaugural main action decision on a standard-essential patent ( SEP) in Philips v Belkin ( UPC_ CFI_390/2023). The court confirmed the patent’s validity, found infringement by Belkin, and granted a permanent injunction covering eight countries. Strikingly for an SEP matter, no FRAND defence was run, so the first UPC main action decision tackling FRAND questions is still awaited. Of broader interest in this decision is that the court held......

Kwantum Nederland BV v Kwantum België BVVitra Collections AG, Case C-227/23 What are the practical implications of this case? This judgment carries tangible consequences, as it meaningfully reinforces protection for original works of applied art coming from non‑ EU member states within the framework of harmonised EU copyright law. By preventing Member States from invoking, in their national laws, the material reciprocity test (as set out in the Berne Convention), the Court of Justice further curtails national discretion to secure deeper harmonisation of EU copyright. Accordingly, the Court effectively unlocks for numerous creators based outside the Union the ability to advance claims under EU copyright, even where their works are only traded inside the EU yet stem from countries affording lesser protection, or none. The ruling stands as a precedent for applying international copyright norms within the EU. It may yield more uniform...

In this issue: Designs Patents Trade marks/passing off Copyright & associated rights General IP Daily and weekly news alerts New and updated content Dates for your diary Trackers Useful information Designs EU design legislation published in the Official Journal The European Commission’s package to modernise and streamline the design protection framework is edging closer to effect. Regulation ( EU) 2024/2822 of the European Parliament and of the Council of 23 October 2024, which amends Council Regulation ( EC) 6/2002 on Community designs and repeals Commission Regulation ( EC) 2246/2002 (the Amending Regulation), together with Directive ( EU) 2024/2823 of the European Parliament and of the Council of 23 October 2024 on the legal protection of designs (recast) (the Directive), appeared in the Official Journal on 18 November 2024. Both instruments enter into force 20 days after...

Background to the appeal The question on this appeal concerns when a trade union may litigate, as a third party, for breach of an employment contract between employer and worker. Sections 1(1)(b) and 1(3) of the Contracts ( Rights of Third Parties) Act 1999 ( C( RTP) A 1999) create a default rule: where a contractual term grants a benefit to a third party who is expressly identified in the instrument, that third party can enforce the term in its own name. It applies only where the beneficiary is expressly identified within the contract and thereby conferred a benefit. The appeal turns on the proper reading of section 1(2) C( RTP) A 1999, which states that the default position is displaced if, construing the contract correctly, it appears the parties did not intend the term to be actionable by the third party. The...

Dish and Sling v AYLO , Case No. UPC- Co A-188/2024 The Co A, in its ruling, upheld the order issued by the Court of First Instance, Local Division Mannheim. In the substantive proceedings, Dish and Sling commenced infringement proceedings against AYLO. The patent at issue concerned a method for presenting rate‑adaptive streams using a media player. AYLO was said to have indirectly infringed the patent in numerous UPC Member States, including Germany, by offering and supplying both the video files made available for streaming and the media players through which those videos are streamed. Invoking Rule 19.1(a) of the UPC Rules of Procedure, AYLO filed a preliminary objection asking that the infringement action be dismissed for lack of UPC jurisdiction. After that objection was rejected, AYLO brought an appeal against the order of the Local Division Mannheim. It argued that the UPC lacked...

In a significant step for AI oversight, the European AI Office has unveiled the inaugural draft of its General- Purpose AI Code of Practice (the Draft Code). Serving as a linchpin of the EU’s approach to building a sturdy regulatory architecture for AI, it steers providers towards compliance, accountability, and wider societal value. The Draft Code will be scrutinised by close to 1,000 stakeholders and refined through multiple consultation rounds, with the definitive text slated for publication in May 2025. Codes of practice and the EU AI Act The EU AI Act’s codes of practice, set out in Article 56, are not legally binding. Nevertheless, following these codes affords a ‘presumption of conformity’ with the Act’s duties for providers of general-purpose AI models until formal standards are in place. Thus, although participation is voluntary, alignment with the codes can function as proof of meeting...

General Court backs Glenmark over COPD inhaler trade mark The General Court has backed the UK based Glenmark Pharmaceuticals Europe Ltd in its successful opposition to the trade mark owned by Boehringer Ingelheim Pharma Gmb H & Co. KG concerning an inhaler for chronic obstructive pulmonary disease, a disorder that leads to breathing difficulties. According to the judgment, the German company’s sign is composed solely of elements required to achieve a technical outcome. As a result, it cannot function as a valid trade mark under the EU’s intellectual property framework, the court noted. An earlier European Union Intellectual Property Office......

In this issue: Trade marks/passing off Copyright & associated rights Patents Designs Daily and weekly news alerts New and updated content Dates for your diary Trackers Useful information Trade marks/passing off Supreme Court rules Sky filed trade marks in bad faith ( Sky Kick UK Ltd v Sky Ltd) The Supreme Court has aligned with the High Court in holding that Sky pursued certain trade mark applications in bad faith, and that the approach taken at first instance was not unfair, thereby overturning the Court of Appeal’s conclusions. However, it also agreed with the Court of Appeal that, in light of the narrowed list of goods and services, Cloud Migration, Sky Kick’s email migration product and service, does not infringe Sky’s trade marks. The judgment further clarifies that Regulation ( EU) 2017/1001 (the EU Trade Mark Regulation) retains direct effect for proceedings that were already pending before a UK court designated as an EU trade mark court...

The General Court determined that appellate officials at the European Union Intellectual Property Office ( EUIPO) properly rejected the State Border Guard Service of Ukraine’s bid to register the slogan, concluding it is merely a political statement expressing solidarity with Ukraine during the Russian invasion. The judgment explains that the phrase has been used heavily in a non-commercial setting tied to Russian aggression and, for the relevant public, will be closely and inevitably linked to that context. In view of the breadth of media coverage, the court said, the wording will be associated with a recent historical moment, one well known to the average EU consumer. Consequently, buyers will not see the sign as indicating commercial origin or as pointing to any particular brand, company, or organisation; they will perceive it only as a political message. The State Border Guard Service of...

What are the practical implications of this case? The judgment offers insight into how the UK Patents Court currently treats plausibility. Applying the approach articulated by Lord Sumption in Warner‑ Lambert v Actavis [2018] UKSC 56, and restated by Mr Justice Meade, the touchstone is that there must be a substantive basis to consider the claimed effect credible, not mere conjecture. Absent such a reason, plausibility fails. On that test, the judge held the Patents were not plausible. Nonetheless, he accepted that, in some instances, the necessary “positive reason” might flow solely from the skilled person’s common general knowledge ( CGK). He cautioned, however, that this is more likely in mechanical arts than within the life sciences, and particularly not in the context of second medical use claims—the very scenario considered by the Supreme Court in Warner‑ Lambert. In any case, an example of that kind would be a...

Sky Kick UK Ltd and another ( Appellants) v Sky Ltd and others ( Respondents) [2024] UKSC 36 Background In this litigation, the respondents ( Sky) alleged that the appellants ( Sky Kick) had infringed five of their registered trade marks (collectively the ‘ SKY marks’) by using the sign Sky Kick, or slight variants of it, for their email and cloud storage products and services. Sky relied upon four EU trade marks and one UK trade mark as the foundation of the claim. The infringement allegations concerning the EU marks extended across the entire EU, while those relating to the UK mark were, by necessity, restricted to the UK. Sky Kick denied infringement and contested the validity of the SKY marks. Through four judgments, and following a reference to the Court of Justice of the European Union, the High Court determined that Sky had...

In a keenly awaited ruling, the High Court decided that Water Rower ( UK) Ltd could not press infringement actions against competing rowing machine manufacturer Liking Ltd, as it lacked any copyright in its own design in this dispute. The court found that the prototype Water Rower devised by John Duke might qualify as an original work for the purposes of EU law, yet it did not amount to a work of ‘artistic craftsmanship’ within the meaning of the UK’s Copyright, Designs and Patents Act 1988. Deputy Judge Campbell Forsyth stated that Mr Duke applied his expertise to build the prototype and that it possesses visual appeal, but concluded that, in doing so, he did not act with the attributes of an artist craftsman. Advisers from Gunnercooke, who represented Liking in the dispute, hailed the decision as ‘one of the most...

In this issue: Copyright & associated rights Trade marks/passing off Patents General IP Lex Talk®IP: a Lexis®Nexis community Daily and weekly news alerts New and updated content Dates for your diary Trackers Useful information Copyright & associated rights IPO confirms approach for foreign artists’ public performance rights The Intellectual Property Office ( IPO) has released its response to an early‑2024 consultation on how best to ensure overseas performers and producers receive the public performance rights ( PPR) payments due when their sound recordings are broadcast or played in public in the UK. Historically, UK law’s treatment of this right did not fully mirror the nation’s international commitments. After the consultation and engagement with industry stakeholders, the government has chosen Option 0A. Under this approach, targeted adjustments will be made to the criteria for foreign...