Legal News

Au Vodka Ltd v NE10 Vodka Ltd and another [2022] EWHC 2371 ( Ch) What are the practical implications of this case? This decision once more highlights how materially challenging passing off actions can be when they hinge to a significant extent on a product’s get‑up, particularly its form and colouring, and even more so at the interim injunction stage. That difficulty is especially acute where shape and colouring are central to the product’s overall presentation. Where the alleged passing off rests on the product’s ‘get‑up’ (as in the well‑known Jif Lemon matter, Reckitt and Colman Products Ltd v Borden Inc), the judge undertook a careful review of prior authorities. In particular, he examined the reasoning of Mr Justice Jacob (as he then was) in Hodgkinson & Corby v Wards Mobility Services [1995] FSR 169 (not reported by Lexis Nexis®) at...

Safarov v Azerbaijan 885/12 What are the practical implications of this case? In its ruling, the ECt HR held that where domestic courts fail to secure effective protection of intellectual property, there is a breach of human rights—specifically, the right to the peaceful enjoyment of possessions under Article 1 of Protocol No 1 to the ECHR. As to the damages claim grounded in IP rights, the outcome amounts to little more than a Pyrrhic success for the applicant, since the Court granted only a small slice of the sum he had initially sought. Nevertheless, the judgment underscores that copyright violations constitute a deprivation of property and therefore engage human rights. It foregrounds the European human rights architecture for IP and demonstrates the weight IP holds within it. The ECt HR also clarified that states must adopt appropriate steps to safeguard IP even in...

The pioneering role of the gaming industry Virtual goods and digital assets now originate, are bought and exchanged entirely online. They commonly mirror real-world products and services—virtually any item or offering found offline can be conceived in a digital guise. Unlike physical counterparts, however, a virtual item can be upgraded, altered and enriched with fresh functionality. Within gaming, such goods have long appeared as in‑game items: skins, outfits, accessories, gear and weapons for avatars. With blockchain, these assets can be made unique and their allocation or ownership recorded transparently, preventing double sales, enabling trading beyond a single game’s closed economy, and streamlining monetisation by tracking royalties on secondary transactions. Studios are already committing serious resources to tokenised assets. In up‑and‑coming worlds like Decentraland and The Sandbox, players can purchase, sell and develop parcels of virtual land with digital buildings. Ubisoft is rolling out NFTs in its...

Background The UKIPO’s first call for evidence on AI and IP, running from 7 September to 30 November 2020, aimed to gather answers to numerous questions across patents, copyright, trade marks, designs and trade secrets. Feedback to that exercise highlighted concerns about the balance in the copyright regime between safeguarding human-created works and those produced by AI. Regarding patents, participants flagged potential obstacles to innovation as reliance on AI systems grows. For further details on that process, see News Analysis: Call for views on AI and IP—the UK government response. Building on those findings, the UKIPO opened an additional consultation to probe the key matters in greater depth. The resulting government response was issued on 28 June 2022 (see: LNB News 28/06/2022 48), and is considered below. Copyright and computer-generated works ( CGWs) The initial question for government was whether creations generated by a...

Shazam Productions Ltd v Only Fools The Dining Experience Ltd and others [2022] EWHC 1379 ( IPEC) What are the practical implications of this case? This ruling marks a significant first: a UK court has recognised that copyright can inhere in a character, signalling a potential broadening of what qualifies as a protectable work under UK copyright law. The ramifications could be felt widely across sectors that draw on famous characters—advertisers, computer game creators and event organisers—as well as the more established creative spheres of books, plays, musicals, film and television. Prospective users of well-known characters may therefore be more cautious about the risk of infringement, while rights holders may point to the judgment to support claims for increased licensing revenue. It remains uncertain whether the defendants will seek to appeal; the matter was transferred from the High Court to the IPEC in 2020 to...

Neurim Pharmaceuticals (1991) Ltd and another v Generics ( UK) Ltd (trading as Viatris) and another [2022] EWCA Civ 370; Neurim Pharmaceuticals (1991) Ltd and another v Generics ( UK) Ltd (trading as Viatris) and another [2022] EWHC 512 ( Pat) What are the practical implications of this case? This pair of rulings offers useful guidance on the stance the Court of Appeal may adopt when a party is restrained by a final injunction. Although Mylan had signalled an intention to seek permission from the Court of Appeal—permission having been refused by Mr Justice Marcus Smith—it still faced a swift removal from the market. The Court of Appeal responded to the urgency, aiming to ‘hold the ring’ for a short window until a substantive hearing could take place. It indicated that enabling an orderly...

Top System SA v Belgium Case C-13/20 What are the practical implications of this case? Practitioners already recognise that software licensing terms cannot bar decompilation where it is indispensable to obtain information needed to secure interoperability between computer programmes, provided the conditions in the relevant Software Directive are satisfied. Beyond this (limited) carve‑out, it was commonly thought that decompilation could be prohibited by a software licence (see the Opinion of AG Szpunar of 10 March 2021, point 82). Indeed, the Copyright, Designs & Patents Act 1988 ( CDPA 1988) states that copyright is not infringed when a programme is copied or altered, so long as those steps are necessary for the licensee’s lawful use and are not excluded by contract ( CDPA 1988, s 50C). In practice, software licences often expressly ban decompilation. Yet the Court of Justice held that...

Mars Capital Finance Ltd v Hussain and others [2021] EWHC 2416 ( Ch) What are the practical implications of this case? This ruling underlines that, after a transfer of land has been entered on the register, any prior defects in the enforceability of the underlying contract for that transfer cease to matter. Accordingly, earlier formal shortcomings cannot be used to unsettle a completed, registered disposition. That principle is clear and decisive here. In addition—though not essential to the outcome—the judge endorsed the position that sections 43 and 44 of the Companies Act 2006 permit three mechanisms for a company to enter a written contract (by the company or on its behalf). This contrasts with the interpretation that, for the purposes of the Law of Property ( Miscellaneous Provisions) Act 1989, only two methods exist, and it departs from Lewison J’s approach in Redcard Ltd v...

Galer v Mond (administrator of SFPL Ltd) and another [2021] EWHC 1952 ( Ch), [2021] All ER ( D) 110 ( Jan) What are the practical implications of this case? Several elements of this ruling turn on the precise wording of the facility agreement and the deed of assignment, so its broader relevance is limited. Even so, the court set out helpful general guidance: in the absence of any evidence of misconduct, it is wholly improper to imply that a particular administrator will fail to fulfil their duties properly. The judge made plain that one cannot obtain a declaration that an administrator’s appointment is invalid by relying on what he described as 'a smokescreen of general allegations'... What was the background? SFPL Ltd ( SFPL) was incorporated in August 2016 as a vehicle for the acquisition and development of a property in London. There were a number of...

‘ CV- Online Latvia’ SIA v ‘ Melons’ SIA Case C-762/19 What are the practical implications of this case? Across the EU, when a website or online database provides a search tool that automatically draws into its results information sourced from third-party databases, this will typically infringe database right. There can, however, be circumstances where the practice is lawful if it can be shown that using data from those third-party databases does not prejudice the maker’s investment—for instance, where the data is deployed in a wholly unrelated market that the maker neither foresaw nor competes in. Nonetheless, in most situations it will be necessary to obtain permission from the maker of any third-party databases employed to produce an aggregated search result. What was the background? A jobs website ( Melons) offered a search engine that queried several websites hosting job...

FBT Productions, LLC v Let Them Eat Vinyl Distribution Ltd, [2021] EWHC 1316 ( IPEC) What was the background? FBT Productions, LLC maintained it was entitled to interest under section 35A of the Senior Courts Act 1981, or, in the alternative, by virtue of the court’s inherent jurisdiction. It also contended that interest ought to be calculated by reference to US borrowing benchmarks, for example the US prime rate, or a margin of about 2.5% above the three-month US LIBOR, accruing from the date the infringing copies were delivered to the distributor. Let Them Eat Vinyl submitted that no award should be made......

Software Solutions Ltd and others v 365 Health and Wellbeing Ltd and another [2021] EWHC 237 ( IPEC) What are the practical implications of this case? For practitioners advising on software, this judgment carries weight for several reasons, notably its treatment of copyright and database right in relation to XML. It clarifies that while XML schemas can attract literary copyright, they will not qualify as a ‘database’ under the Copyright and Rights in Databases Regulations 1997 (the Database Regulations) unless they amount to a ‘collection of independent data’. The decision also offers useful guidance on the courts’ approach to awarding additional damages for copyright infringement under section 97(2) of the Copyright, Designs and Patents Act 1988 and under Regulation 3 of the Intellectual Property ( Enforcement, etc) Regulations 2006 ( SI 2006/1028), which implements Article 13 of the Enforcement Directive. It includes a...

Introduction On 31 December 2020, the Withdrawal Agreement’s transition phase (discussed here) concluded. From 1 January 2021, relations between the UK and EU are currently regulated partly by the remaining Withdrawal Agreement (as further discussed in this Twitter thread) and partly by the Trade and Cooperation Agreement ( TCA) formally agreed between the EU and the UK themselves. ( There are also two other agreed treaties, on security information and nuclear cooperation, as well). Basic legal issues The EU and UK have agreed to apply the TCA provisionally and temporarily (a common practice in international law). This arrangement runs until 28 February 2021, though the parties may change that date via the Partnership Council (composed of representatives of both contracting parties). This is intended to give the European Parliament sufficient time to examine the treaty in detail before deciding whether to give its consent. By...

As outlined in the editorial note to the Guide, this seventh edition is a comprehensive overhaul and reflects developments since the previous edition, including: the roll-out of electronic working and filing in the Central Office of the Queen’s Bench Division at the Royal Courts of Justice, through the CE- File digital court file and management system amendments to CPR 53 and CPR PD 53 relating to the Media and Communications List changes arising from Brexit and the close of the transition period under the UK Withdrawal Act revisions to the contempt regime updates to the enforcement regime For more information, see: What are the key changes? The following summarises the principal changes practitioners should note: Electronic filing The revised Guide introduces a brand-new Chapter 3 addressing electronic filing and codifying the compulsory use of CE- File for legally...

Hanger Holdings Ltd v Perlake Corp SA and another [2021] EWHC 81 ( Ch) What are the practical implications of this case? This decision marks the first time a UK court has expressly recognised domain names as intangible personal property. In OBG Ltd v Allan [2007] UKHL 21, Lord Hoffmann indicated he saw no obstacle to treating domain names as intangible property, though those observations were merely obiter. HHJ Hacon’s reasoning on why domain names amount to intangible personal property was brief, but he drew support from Lord Hoffmann’s remarks and was influenced by judicial statements in other jurisdictions, including Canada. Domain names are obtainable through accredited registrars, typically requiring registrants to agree to terms and conditions in a registration service agreement. Ongoing renewal charges are paid to keep the domain and any ancillary registrar services in place, as well as any...

Martin and another v Kogan and others [2021] EWHC 24 ( Ch) What are the practical implications of this case? The judgment represents the latest chapter in the parties’ protracted litigation. At the retrial, Mr Justice Meade applied the Court of Appeal’s formulation of joint authorship in Kogan v Martin and others [2019] EWCA Civ 1645. He likewise examined the legal framework for evaluating witness testimony, including the overall approach to the dependability of witnesses’ recollections and the comparative weight to be placed on memory as opposed to contemporaneous records. In that context, he addressed the effect of Gestmin SGPS SA v Credit Suisse ( UK) Ltd [2013] EWHC 3560 ( Comm), [2013] All ER ( D) 191 ( Nov). He further considered how the balance of the remaining evidence should be assessed where a portion of a witness’s account is rejected as untrue. In...

For data protection specialists, the EU– UK TCA brings encouraging developments. Unrestricted data movement between the EEA and the UK will carry on beyond the close of 2020 ( Article FINPROV.10A(2) also confirms flows from Iceland, Lichtenstein and Norway to the UK). That outcome is warmly welcomed. Recent studies indicated that implementing substitute transfer tools might have set UK firms back £1.6bn. Such a sum reflects funds businesses could otherwise have directed to areas like new kit, staff or procedures, yet would instead be siphoned off to compliance spend or higher prices for goods and services due to interruptions to EU– UK data transfers. Data may likewise keep moving freely for law enforcement transfers. That is essential. Maintaining the sharing of data to prevent and detect crime is vital to protecting people on both sides of the Channel. Without this...

What is the WTO government procurement agreement ( GPA)? The WTO GPA is a voluntary, plurilateral pact that obliges its parties to grant one another access to their respective government contracting and public purchasing markets on a reciprocal basis. Through its EU membership, the UK participated in the WTO GPA; the EU constitutes one of the 20 current participants. The UK has now sought independent accession to the GPA in its own right, and a further 22 jurisdictions hold observer status. Signatories are not free to design procurement systems without constraint; foundational principles are embedded within the Agreement and, indeed, many of these shaped the drafting of the current EU procurement rules. What are the key features of the regime? As noted, the GPA is more than a minimal framework. It comprises the Agreement’s main body together with members’ coverage schedules. While the Agreement...

One Plus Technology ( Shenzhen) Co, Ltd and other companies v Mitsubishi Electric Corp and another company [2020] EWCA Civ 1562 What are the practical implications of this case? Courts acknowledge that, in confined and exceptional situations, a party’s internal commercial staff should have their access curtailed. Judging whether disclosed material warrants a confidentiality club for case management is a taxing call for lawyers representing clients with sensitive interests. Clients often urge their teams to apply the most stringent ‘external eyes only’ tier, a stance that is not invariably defensible. This ruling identifies significant (though not exhaustive) factors to steer the treatment of confidential disclosure, including: the burden rests on the disclosing side to show that the ‘external eyes only’ label is justified preventing the opposing client from seeing particular records will be unusual and hinge entirely on the case’s specific...

What is the relevance of UK data protection law to the creation or sharing of deepfakes? Is a deepfake likely to be personal data? Neither the General Data Protection Regulation, Regulation ( EU) 2016/976 ( EU GDPR), nor the Data Protection Act 2018 ( DPA 2018) expressly addresses deepfakes. The real question is whether deepfakes fall within the scope of data protection rules, and in particular the DPA 2018. Personal data covers any information linked to an identified or identifiable living individual, which can include a person’s image or voice. In this setting, creating deepfakes involves training an artificial intelligence ( AI) system on the target individual’s facial features and vocal characteristics, enabling those elements to be placed into material featuring another person; doing so necessarily relies on a person’s audio and/or video recordings. Consequently, even if someone were to argue that the...