HANDBAG COPYIST BAGGED; WHEN PATENT DAMAGES AND COSTS ARE WITHHELD; LATEST IP REVIEW

1 Only Connect!

The IPKat's trawl of IP news today took him to the excellent All England Direct subscription service once again, where he found French Connection Ltd v Fresh Ideas Fashion Ltd - another Chancery Division decision from new boy on the bench Mr Justice Kitchin.

Fashion retailers French Connection owned and extensively used two Community trade marks: the word marks FCUK and FRENCH CONNECTION, both being registered for trunks, travelling bags, handbags and hold-alls (Class 18). They objected that Fresh Ideas had made and sold handbags that bore their word marks and used a similar type font, suing both them and their sole director for trade mark infringement and passing off. French Connection pressed for summary judgment; the defendants did not show up in court and were not represented.

Kitchin J allowed the application and granted summary judgment. No defendant could withstand such an application unless it could show some chance of successfully defending the claim at trial. That chance had to be ‘real’, meaning that it could not be false, fanciful or imaginary and had to be more than merely arguable. On the evidence, the defendants had no realistic prospect of successfully defending the proceedings at trial.

Left: this lightbulb illustrates a non-original idea -- copying someone else's trade marks

The IPKat wonders whether the court reporter turned up in case Kitchin J had anything controversial or exciting to say about the validity of the FCUK trade mark, upon which Mr Justice Rattee had cast aspersions, obiter, in French Connection v Sutton. [2000] ETMR 341. There was certainly nothing in the note on this decision to suggest that there was going to be anything of interest to the IP world at large. Merpel adds, why does a company that copies someone else's trade marks want to call itself Fresh Ideas?

2 Badly drawn patent claim, but not bad enough ...

Another case to stray the IPKat's way today was the Court of Appeal's patent decision in Unilin Beheer BV v Berry Floor NV [2005] EWCA Civ 1292, found on free judgment service BAILII.

After Unilin applied for a patent for a floor covering, it became aware of some prior art that required it to narrow the scope of its main claim. Once the patent was granted, Unilin sued three businesses for infringement. The defendants counterclaimed for revocation, raising a fresh and hitherto uncited piece of prior art. The trial judge (David Young QC, sitting as a Deputy Judge) found that, while the first 19 claims of the patent were invalid, claims 20 and 21 were both valid and infringed, in a judgment that was affirmed by the Court of Appeal in 2004. Unilin then pressed for damages and costs. The defendants contended that, since the amendments previously made to the patent showed that the specification had not been framed with reasonable skill and knowledge, neither damages nor costs should be awarded under the Patents Act 1977, s.63(2). David Young QC held that the specification as a whole was drafted with reasonable skill and that Unilin was entitled to its costs.

The defendants appealed, arguing that there had been so much absence of care that the patent could not be said to have been framed with reasonable skill. By a respondent’s notice, the claimant contended that in finding that two passages were not framed with reasonable skill and knowledge, the judge had been taking into account irrelevant matter.

The Court of Appeal (Mummery, Jacob and Neuberger LJJ) dismissed the appeal. Under section 63(2), what mattered was relevant skill and knowledge: that which was necessary to do the job of compliance with the European Patent Convention and to provide accurate technical information. If some irrelevant but harmless matter remained within the specification, it was still drafted with reasonable skill and knowledge. It made no sense to hold that reasonable skill and knowledge should extend to matter which was irrelevant.

In this case there was no nexus between the reasons for the amendment and the alleged lack of reasonable skill and knowledge. With all its faults, the patent was still not in any way misleading. The trial judge had found that, taking the specification as a whole, that error had not amounted to a lack of reasonable skill, and that was the sort of assessment with which an appeal court should not interfere unless it was plainly wrong.

This interpretation of s.62(2) must be correct, the IPKat feels. Statutory provisions that limit damages and costs that a successful party would otherwise be awarded are exceptions to the norm and, like all exceptions, should be construed narrowly. Merpel concurs and adds: this is unusual - a Court of Appeal in which all three judges have IP experience, two indeed as former Patents Court judges.

3 IP Review

Issue 12 of CPA's quarterly IP Review may have been out for a little while, but it has only just reached the top of the pile of papers on the IPKat's desk. This issue's cover story is a step-by-step guide to .eu domain name registration by PWC's Wim Van den Bossche and Bart Lieben. Other items in this issue include "Tracking Caterpillar", on the trail of a celebrated and imaginative brand, an introduction to OHIM procedures for the first crop of Community trade mark renewals in 2006 and a review by the effervescent Charlotte Presse of Barcelona's Brand Management Forum.