Licensing Update - IPR in business (June 2006)

Patent Office launches innovation Support Consultation (18/05/06).
It has prepared a draft strategy setting out its role in supporting innovation and seeks the views of stakeholders. The Patent Office has been considering how it can deploy its considerable knowledge, resources and expertise to support innovation in the UK beyond its existing t activities and core statutory functions of granting IP rights, serving as a tribunal and providing advice on IP policy to Ministers. The strategy describes how the Patent Office intends contributing to the Government's innovation support agenda by building on its existing support activities and pursuing new initiatives.

See http://www.patent.gov.uk/about/consultations/support/index.htm

Aston Barrett v Universal-Island records Ltd & 12ORS [2006] EWHC 1009 (Ch).
Aston "Family Man" Barrett has lost his battle to claim $108 million (GBP60 million) in unpaid royalties from the Marley family and Island Records. The claimant and his deceased brother were former band members of the Wailers. The claimant acting on his own behalf and as administrator of the estate of his deceased brother claimed a share of the income generated from certain recordings and copyrights of the performers, Bob Marley and the Wailers. It was held that all the claims brought by the claimant in his personal capacity had been compromised by a settlement agreement. In respect of the claims brought for his deceased brother, claims to authorship or co-authorship of the lyrics of certain songs failed. In respect to rights conferred on a performer, the Copyright, Designs and Patents Act 1988 s.182A and s.182B could in principle, afford a defence to a performer's right claim.

See http://www.hmcourts-service.gov.uk/judgmentsfiles/j4260/barrett_v_island_0506.htm

Apple Corps Ltd v Apple Computer Inc [2006] EWHC 996 (Ch).
The defendant's use of its APPLE marks in relation to its iTunes music download service did not breach the agreement between the parties.

http://www.hmcourts-service.gov.uk/judgmentsfiles/j4226/apple_v_apple_hc03c02428_0506.htm

Massachusetts Institute of Technology Case C-431/04 (05/05/06).
ECJ rules that where there are two components to a product each component must be an "active ingredient" in order to obtain an SPC. This decision restricts the duration of protection. A medicinal product composed of an active ingredient and an excipient did not fall within the definition of a combination of active ingredients found in the EU Regulation governing SPCs (EEC No. 1768/92).

See: http://www2.bailii.org/eu/cases/EUECJ/2006/C43104.html

Norbrook Laboratories Ltd v Bomac Laboratories Ltd [2006] UKPC 25.
Although not deliberately (because it thought information was in the public domain), Distributor breached a secrecy agreement by disclosing confidential information. Norbrook claimed that the New Zealand distributor, Bomac Laboratories had in a telephone conversation and by letter, disclosed the percentage of a chemical coating of one of the product ingredients to a new manufacturer (after the relationship between Norbrook and Bomac had ended) in breach of the secrecy agreement.

Patent Office launches new mediation service (10/04/06)
to help companies and individuals involved in intellectual property disputes. The initiative is aimed at encouraging more use of alternative dispute resolution in IP. The Patent Office will be setting up several measures to facilitate the use of mediation. First of all they will raise awareness by producing guidance notes and new literature on its website. Secondly, if cases have proceeded to litigation, the Patent Office will encourage Hearing Officers to assess hearing requests to determine whether cases could be better dealt with through mediation. Thirdly, they have set up a new Mediation Service team.

http://www.patent.gov.uk/media/pressrelease/2006/0304.htm

Honda Motor Car Limited v Neesam & ORS [2006] EWHC 1051 (Ch).
The case for trade mark infringement could proceed to trial. There was no evidence of consent by the trade mark owner regarding the importation of motorbikes into the EEA. Neesam were traders who had obtained the bikes from the USA, Spain, Australia and Hong Kong, which they claimed had been brought from authorised Honda dealers. Certain of the bikes had a manufacturer's certificate of origin. Honda had imposed restrictions on the sale of the bikes by its dealers and distributors. It was not accepted that a dealer or distributor who had broken its dealership or distribution contract in selling the bikes outside the recognised markets could be allowed to bind Honda. Zino Davidoff SA v A & G Imports Ltd [2002] W.L.R. 321 applied. Even assuming that there had been knowledge by US Honda that the bikes were being exported, such knowledge did not amount to consent by Honda.