Legal News

Damages inquiry in trade mark infringement—economic benefits approach preferred over comparables analysis ( Merck KGa A v Merck Sharp & Dohme LLC) Merck KGa A v Merck Sharpe & Dohme LLC and other companies [2025] EWHC 2376 ( Ch) What are the practical implications of this case? Most IP disputes conclude once liability is resolved, meaning the High Court seldom addresses the mechanics of damages. This decision offers useful direction for those advising on quantification in trade mark infringement, notably when choosing between a comparables methodology and an economic benefits analysis for determining a hypothetical licence fee. Evidential standards for comparables analysis The court dismissed the claimant’s comparables methodology because expert scrutiny showed it rested on an unreliable study that failed to produce statistically meaningful findings. Although fact-sensitive, it underscores a clear point for practitioners: any comparables exercise must be grounded in robust, defensible...

US District Judge William Alsup described the agreement as 'fair' and sufficient for preliminary approval, while cautioning that implementing the settlement could bring difficulties. The authors' certified class action alleges Anthropic unlawfully exploited their copyright-protected works to build its flagship large language model, Claude. It sits among numerous lawsuits asserting that LLM makers have violated copyright-protected material to train their systems. The dispute forms part of a broader wave of claims targeting how the technology is trained on protected texts. At a hearing in San Francisco federal court on 25 September 2025, plaintiffs' counsel, Justin Nelson of Susman Godfrey LLP, hailed the accord as a 'historic settlement'. Judge Alsup also observed that the deal contains an 'abort clause' if a substantial proportion of the class elects to opt out, adding that the exact threshold is confidential. He floated a...

J Mac Safety Systems Ltd v Q Deck Safety Systems Ltd [2025] EWHC 2241 ( Pat) What are the practical implications of this case? Practitioners should frame pleadings and assemble proof on originality squarely around the ‘designer’s intellectual creation’ criterion. Pleadings and evidence should be tightly aligned with that yardstick. Infringement, viewed in the same way, turns on whether that intellectual creation has been taken; it is the taking of the creative contribution that renders a product infringing. Copying purely commonplace or trite elements will rarely breach a design right. That does not mean uninventive aspects are irrelevant. Originality can lie in the constellation of features. And, even where originality resides elsewhere, matching unoriginal elements sitting beside original ones can bolster an inference that copying occurred. Practitioners must also consider how to meet the intellectual creation standard where the claimant cannot reach the...

Lifestyle Equities v Sports Direct.com Retail [2025] EWHC 1417 ( Ch) Background This dispute arises from protracted litigation pitching Lifestyle Equities CV (owner of the marks) and its exclusive licensee, Lifestyle Licensing BV, against Sports Direct. In 2018, the High Court held Sports Direct responsible for infringement and for inducing a breach of a licence agreement, thereby opening the door to an inquiry into damages... Summary judgment application Sports Direct applied for summary judgment aiming to bar from the damages inquiry any losses claimed by trade mark sub-licensees, contending that: the sub-licensees had not been added as parties to the claim— Sports Direct relied upon section 30(6A) of the Trade Marks Act 1994 ( TMA 1994), which states that where the proprietor of a registered trade mark issues infringement proceedings, a licensee who has suffered loss may intervene in those proceedings to obtain...

In this issue: Trade marks/passing off Designs General IP Daily and weekly news alerts New and updated content Dates for your diary Trackers Useful information Trade marks/passing off Premier Inn rest easy after High Court rules no trade mark infringement in easy Group claim (easy Group v Premier Inn) The High Court rejected easy Group’s trade mark infringement action against Premier Inn, which objected to Premier Inn’s use of ‘ Rest easy’ in branding introduced during an April 2021 rebrand. easy Group advanced claims under sections 10(2) and 10(3) of the Trade Marks Act 1994 ( TMA 1994) and also sought declarations invalidating the Premier Inn series trade mark. The court found no infringement under TMA 1994, s 10(2), noting ‘ Rest easy’ is a commonplace English phrase and that easy Group had not shown sufficient consumer confusion. The TMA 194, s 10(3) allegation also failed, with the judge concluding there was...

What challenges is the consultation seeking to solve? The consultation aims to update the UK design protection regime, streamline the framework for unregistered designs, and enhance the procedures for enforcing and evidencing the validity of registered designs as a whole. What are the key proposals that people are being asked to comment on? Search and examination At present, the rules provide no route for the registrar to conduct a prior art search during examination or object where a design lacks novelty. Inevitably, this results in a portion of UK design registrations being invalid, and it is believed that at least some were lodged in bad faith or for anti-competitive ends. The consultation proposes either granting the registrar authority to run searches, or creating a partial registration model under which unsearched designs would be unenforceable. A partial registration regime, in practice, would be the strongest tool to deter...

easy Group Ltd v Premier Inn Hotels Ltd [2025] EWHC 2229 ( Ch) What are the practical implications of the case? This ruling delivers a clear exposition of the usefulness and admissibility of survey evidence in trade mark infringement actions, offering several concrete takeaways for advisers and litigants. The foremost point, for surveys adduced in trade mark and passing off disputes, is the need for strict adherence to the Whitford Guidelines, set down by Whitford J in Imperial Group Plc v Philip Morris Ltd [1984] R. P. C. 293. Those guidelines require, among other things, full disclosure and precise recording of every answer, the avoidance of leading questions, and a sample of adequate size to permit meaningful statistical evaluation. Although the surveys advanced in this case were held to accord with the Whitford Guidelines, the judgment underlines the centrality of compliance and...

( Modernatx, Inc v Pfizer Ltd and other companies [2025] EWCA Civ 1032) What are the practical implications of this case? Selection from lists and classes in prior art The Court of Appeal reaffirmed that prior art only anticipates a claim where it contains an individualised description of the very invention asserted. Merely assembling elements from two or more enumerations—such as a roster of modified nucleosides alongside a set of percentage substitutions—will not strip novelty unless the earlier disclosure unmistakably directs the reader to that precise pairing. This approach, consistent with EPO Boards of Appeal jurisprudence and domestic authorities including Dr Reddy’s Laboratories v Eli Lilly, is of particular significance for those drafting or contesting patents in areas where inventions are characterised by combinations of known attributes. Applying that test, the court found the UPenn application canvassed a wide spectrum of modified...

The country's design system is ready for reform but reviews of this sort may cause needless hold-ups for parties seeking to enforce their intellectual property rights in practice for users across the system in the UK. Likewise, outlawing computer-generated designs could be a knee‑jerk reaction to a supposed surge of AI applications that is not arriving. According to Max Thoma, a partner at Mathys & Squire LLP, alterations along these lines would fundamentally alter how users interact with the registered design system. The UK Intellectual Property Office ( UKIPO) has unveiled a comprehensive plan to review Britain’s design protection framework and is inviting expert responses on its preferred proposals to reform the current regime. This UKIPO consultation is the latest step in the government’s ongoing drive to overhaul the design system, following a striking 1154.9% rise in design applications since 2015. Since 2022, the...

In this issue: Designs Trade marks/passing off General IP Daily and weekly news alerts New and updated content Dates for your diary Trackers Latest Q& A Useful information IPO launches consultation on modernising UK design protection system The UK Intellectual Property Office ( IPO) has begun consulting on reforming design protection to modernise the regime and back the £100bn design industry. Views are sought from independent designers, luxury brands, tech companies and legal practitioners on overlapping rights, design theft and post- Brexit challenges. Plans include simplifying procedures, easing access to justice for small businesses, and updating rules for digital developments such as CAD files and AI-generated designs. Closes 27 November 2025. See: LNB News 04/09/2025 16 and News Analysis: IPO weighs protection for AI-generated designs. Court of Justice says experts not needed to weigh design rights in Lego Law360, London: In LEGO A/ A v Pozitív Energiaforrás Kft, Case C-211/24, Europe’s highest court ruled on 4...

What is the Riyadh Design Law Treaty? The treaty was settled and concluded at the World Intellectual Property Organization ( WIPO) Diplomatic Conference held in Riyadh, Saudi Arabia on 22 November 2024. That outcome triggered a twelve‑month period during which states may add their signatures. On 11 July 2025, the UK joined as the 15th signatory. In essence, the treaty seeks to ease the process for designers and companies to file and keep a registered design across numerous jurisdictions. It does so by streamlining procedures and introducing common standards across systems. In summary, it is intended to harmonise how designs are protected in multiple countries. What are the next steps in the ratification process? After signing, the UK Intellectual Property Office ( IPO) will commence engagement with stakeholders and progress towards the treaty’s formal ratification. The IPO will consult and prepare the measures required for...

Courtenay- Smith and another company v The Notting Hill Shopping Bag Company Ltd and others [2025] EWHC 1793 ( IPEC) What are the practical implications of this case? This ruling has significant day-to-day effects for businesses, especially those that hold and administer IP via company structures: management of IP rights when a company is dissolved—the judgment underlines the danger of forfeiting valuable IP, including trade marks and goodwill, on dissolution. If rights aren’t secured or assigned, they can vest in the Crown as bona vacantia and be irretrievably lost, even if the entity is later restored. Always complete transfers before dissolution, or seek swift recovery through the Bona Vacantia Division valid renewal of trade marks—the renewal was found invalid because it was filed by someone without title (the mark had vested in the Crown). Registry acceptance is not decisive; a court may...

The UKIPO stated that the existing regime safeguards certain computer-generated designs lacking a human author. In theory, this seems to extend to outputs made by AI, yet the courts have not pronounced on the matter, it added. Parliament’s clear aim was to spur investment in AI by embedding protection for computer-generated designs in the Copyright, Designs and Patents Act 1988, the office noted. Nonetheless, there is little proof that these rules ‘are used or are valuable’. In light of recent progress in generative AI, the government’s favoured approach is therefore to abolish the present pathway to protection for computer-generated designs. The UKIPO indicated it may keep the provisions if it receives evidence demonstrating that the regime materially boosts investment in generative AI over the longer term significantly......

The referring court The Court of Justice ruled that the ‘informed user’ assessing whether a product produces a different overall impression from a protected design need not study the design to the tiniest detail where overlapping features are functional rather than aesthetic. After a complaint from Lego, Hungarian tax and customs authorities seized toy sets being imported by Pozitív Energiaforrás. A protracted back‑and‑forth then unfolded over whether the order should remain in place and also whether the rival products were infringing the rights of the Danish toy maker, ultimately prompting the Budapest High Court to seek some pointers from the Court of Justice......

Law360 delivers a brisk summary of several major IP milestones to date in what is fast becoming a standout year for intellectual property law in the UK. One prominent case is outlined below. Dream Pairs v Iconix The nation’s highest court decided—likely the year’s most significant trade mark judgment—that real-world proof of shoppers mistaking one mark for another ‘out in the wild’ suffices to establish infringement. In a much-awaited June 2025 decision, the UK Supreme Court unanimously held that brand owners can base their case on observations of bystanders viewing a product when assessing whether it breaches a trade mark. Joel Smith, partner at Simmons & Simmons LLP, hailed it as a watershed ruling that unequivocally embraces post‑sale confusion and will prompt litigants to cast the net wider for evidence bearing on a likelihood of confusion. Consequently, parties are expected to seek proof from a wider array of...

Courtenay- Smith & another v The Notting Hill Shopping Bag Company Ltd & others [2025] EWHC 1793 ( IPEC) (18 July 2025) The claims This IPEC ruling by Master Kaye delivers important lessons for those working across the creative industries and retail. The dispute centres on a range of IP rights in a logo splashed across tote bags much loved by visitors and residents in London’s Notting Hill. Both the original product and the item said to infringe are sold shoulder to shoulder at tourist destinations such as Portobello Road market. The claimants advanced allegations of trade mark infringement, passing off, and copyright infringement, with the competing signs reproduced at paragraph [31] of the judgment. Ultimately, however, the court’s conclusion did not hinge on how alike the bags appeared, but on shortcomings in how the claimants had managed and recorded their IP rights. The...

Peter Dunn v Kostas Kazolides [2025] EWHC 2212 ( Ch) Mr Dunn, a former chartered accountant and insolvency practitioner, brought a claim for almost £9m against Mr Kazolides. The High Court held that Mr Kazolides (represented at trial by Dov Ohrenstein of Radcliffe Chambers and Canfields Law Solicitors) had given a guarantee in relation to a Cypriot company that owed substantial sums to Mr Dunn, yet the claim was dismissed. How could Mr Kazolides nevertheless prevail in his defence and avoid any liability to pay under the guarantee? By way of background, under a joint venture agreement, Mr Dunn advanced funds to the company to finance the development and sale of seven villas in Cyprus. The agreement stipulated that the loan became repayable upon ‘the insolvency of the company’ and, as the judge found, it also contained a guarantee from Mr...

In this issue: Copyright & associated rights Trade marks/passing off Patents IP and AI 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 UK music collective succeeds in stopping mass claim over ‘black box’ royalties. MLex: Judges at the Competition Appeal Tribunal ( CAT) have decided that a planned mass claim accusing a UK music copyright collective of unfairly distributing royalty income cannot proceed to trial. David Rowntree, Blur’s drummer, had sought compensation from the Performing Rights Society ( PRS) on behalf of thousands of songwriters concerning ‘black box’ royalties—funds that cannot be matched and paid to the correct artist. See: UK music collective wins action to halt mass claim over ‘black box’...

Michael Tappin KC, serving as a Deputy High Court Judge, concluded that Bayer AG had not promised to yield its own profits when it agreed to compensate Sandoz AG for any losses linked to the postponed 2024 roll-out of its generic medicine. Tappin J dismissed Sandoz’s demand for Bayer’s profits, finding the claim doomed to fail. The court considered the reach of Bayer’s undertakings during the interim injunction to be unmistakable. As Tappin J explained, Bayer agreed to comply with whatever order the court might issue to make good any loss Sandoz suffered because of the injunctions, and to be jointly and severally responsible for any monetary sum the court awarded for that purpose. Bayer was not undertaking to......

A proposed collective claim against a UK music copyright collective over allegedly unfair sharing of royalty payments has been stopped from proceeding to trial, judges at the CAT ruled on 27 August 2025. In refusing to certify the claim for trial, the UK specialist antitrust court concluded that the PRS had succeeded in a summary judgment application, which brings a case to an end before trial where it has no realistic prospect of success. Claim leader David Rowntree—the drummer from British rock band Blur—sought compensation from the PRS for thousands of songwriters. The claim targets ‘black box’ royalties: sums that cannot be matched and paid to the correct artist because of administrative and clerical issues, including missing or incorrect data. Rowntree contends that the PRS’s approach to handling these royalties has produced unfair...