Intellectual Property - 1980- 1984

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This page lists 43 cases, and was prepared on 26 February 2010.

Poulton -v- Adjustable Cover and Boiler Block Co [1908] 2 Ch 430
1980 CA	Intellectual Property	Casemap 1 Citers
	The Plaintiff patent holder had obtained judgment, and injunction and damages against the Defendant for infringement despite a defence of invalidity based on prior art. The Defendant then acquired information about other instances of prior art of which they had been unaware. They applied successfully for the revocation of the patent, and went on now to seek to establish that their liability for damages under the earlier order should be nil. Parker J rejected the request: "I think it is obvious on the face of it, that a judgment for the revocation of a Patent would in effect put an end to the injunction, because the question whether a Patent has been infringed or not is a question to be tried at the date of the alleged infringement, and, if there is no Patent at that date because it was revoked, that would not be an infringement; so that in effect an Order for revocation of a Patent would in every case put an end to the injunction." Held: The appeal failed. The Plaintiff's rights under the previous order had merged in the judgment and could not be set aside except on appeal. Therefore, despite the revocation of the patent which was the basis of the previous order, the Plaintiff was still entitled to the benefit of that order as regards damages. The fact that the patent had been held valid in the previous proceedings did not prevent the Defendant from arguing that it was invalid in the revocation proceedings.

Castrol Australia Pty Ltd -v- EmTech Associates Pty Ltd [1980] 51 FLR 184
1980 Roch J	Intellectual Property, Commonwealth	Casemap 1 Citers
	(Australia) The court reviewed the development of the common law rule that no confidence can exist in iniquity. The court rejected a submission that the Trade Practices Commission should be able to use a particular confidential report for the purpose of investigating possible breaches of the Trade Practices Act: “There is accordingly no evidence before the court of a breach of section 53(c). So far as section 55 is concerned, it may be necessary for the prosecution to prove mens rea. I do not decide this point; it is enough in my view at the interlocutory stage that such proof may be necessary. Even if I am wrong in this view, there is still the possibility of a defence on reasonable mistake, or reasonable reliance on information supplied by another person, under section 85(1). Until such a possibility is negatived, or at least shown to be unlikely, I think the court should reject the submission that on the evidence as it now stands there is a prima facie case of an offence under the Trade Practices Act. For similar reasons I do not think that there is such a likelihood of relief being granted in respect of a breach of section 52(1) as to justify the withdrawal of this courts protection of a confidence that has been established on undisputed evidence with reasonable clarity. I do not mean to suggest that if the evidence had shown a breach by the plaintiff of the Trade Practices Act this of itself would excuse the Commission from its obligation of confidence. All I am saying is that the evidence does not show such a breach , with the result that, whatever the position might otherwise have been, the Commission is not excused from its obligation of confidence on this ground.”

Ravenscroft -v- Herbert [1980] RPC 193
1980 ChD Brightman J	Intellectual Property	Casemap 1 Cites 1 Citers
	The plaintiff had written a non-fiction book entitled 'The Spear of Destiny.' He claimed infringement of copyright by the defendant in his book of fiction called 'The Spear'. Both books were centered on a spear exhibited in Vienna, said to have been the lance which pierced Christ's side on the cross. The allegation was that the story spun by the defendant had leant too heavily on the plaintiff's work. Held: The court described the work of the defendant: "One must not underestimate the commercial attraction of the rubbish which I have attempted to describe. The book is written with much inventiveness and a racy flow of language and incident and the numerous scenes of violence exercise a strong appeal to certain readers. The Defendants novels have enjoyed great financial success. Mr Herbert does not think of himself as a serious novelist". The judge went on to discuss the differential analysis of copyright claims involving facts or ideas: Mr. Laddie, for the defendants, rightly says that an author has no copyright in his facts, nor in his ideas, but only in his original expression of such facts or ideas. He submitted that in deciding whether copying is substantial there are four principal matters to be taken into account. First, the volume of the material taken, bearing in mind that quality is more important than quantity; secondly, how much of such material is the subject-matter of copyright and how much is not; thirdly, whether there has been an animus furandi on the part of the defendant . . ." And: "There was a suggestion by Mr. Laddie that some distinction should be drawn in the present case because much of what the defendant copied from The Spear of Destiny was merely information derived by the plaintiff from Dr. Stein. I do not think it matters whether the source of the plaintiff's book was painstaking research into documented history or painstaking recording and recollection of what Dr. Stein had told him. It was also suggested that a distinction should be drawn on the ground that The Spear of Destiny was, since the death of Dr. Stein, the only possible source of certain of the facts brought to light by the meditation of Dr. Stein. It does not, however, seem to me that the paucity of sources of information excuses the defendant from taking the trouble of assembling his own information and making his own selection of material. If that is not practicable, he can always apply to the plaintiff for a licence".

Cadbury-Schweppes Pty Ltd And Others -v- Pub Squash Co Pty Ltd [1981] 1 WLR 193; [1981] RPC 429
13 Oct 1980 PC Lord Wilberforce, Lord Edmund-Davies, Lord Fraser of Tullybelton, Lord Scarman and Lord Roskill	Commonwealth, Intellectual Property	Casemap 1 Cites 1 Citers
	(Australia) The plaintiff had launched and advertised a soft drink. A year later, the defendant launched a similar product using similar names, styles and advertising, but then registered trade marks. The plaintiff sought damages, and for the trade mark to be deregistered. The judge held that there was enough of a difference to keep the defendants innocent of passing off, and though they had sought to ride on the back of the plaintiff's advertising there was no misrepresentation. Held: The get up and style of a product could be used as part of a passing off where it had come to be closely associated with a product, but there was evidence to support the judge's finding that there had been no misrepresentation, and the claim in passing off was not made out. The date which mattered was that date at which the conduct complained of commenced. The judge had correctly used that date, and a mistaken reference to the date of commencement of the hearing did not vitiate the decision. Appeal dismissed.
	Link[s] omitted

Morton - Norwich Products -v- Intercen (No 2) [1981] FSR 337
1981 ChD Graham J	Intellectual Property, Damages	Casemap 1 Citers
	The plaintiffs had alleged patent infringement and now sought to recover the costs of the action it had had to take for discovery as against HM Customs and Excise, which they said had been necessary to discover the extent of the concealed fraud alleged against the defendants. As a result of the concealment the plaintiffs sought in addition damages going back before normal limitation periods, and exemplary damages. Held: The costs claimed were forseeable and recoverable. The limitation period did not commence until the fraud was or could have been dicovered. Exemplary damages were to be seen as exceptional in Patent infringement cases and in this case were not recoverable. Concealed fraud could be established by showing that the defendants had truned a blind eye to the infringing acts of others.
	Patents Act 1949 63 101 - Limitation Act 1939 26

Spelling Goldberg -v- BPC Publishing [1981] RPC 225
1981	Intellectual Property	Casemap 1 Citers
	Taking a copy of even a single frame of a cinematograph film is probably an infringement of copyright.

CBS United Kingdom Ltd -v- Charmdale Record Distributors Ltd [1981] Ch 91
1981 Browne-Wilkinson J	Intellectual Property	Casemap 1 Citers
	The court discussed and exclusive licensee of a copyright: "First, I would not expect a licensee to be treated as having a property interest in the copyright. Under the general law a licensee is a person who enjoys contractual rights as against the property owner. I can find nothing in the Act which conflicts with the principle that the licensee's rights rest in contract and are not proprietary. Under section 19 of the Act an exclusive licensee is given a procedural right of action to sue for infringement. But the section is purely procedural, and, save in the case of interlocutory injunctions, requires the owner of the copyright to be joined as a party. Section 19(4) provides that any defence available against the owner of the copyright shall be available against the licensee, i.e., the licensee is enforcing the proprietary rights of the owner. Section 36(4) gets nearer to enlarging the rights of a licensee into a proprietary right since his licence is made binding on successors in title of the original grantor of the licence. On the other hand, the Act clearly distinguishes between assignees and licensees: see section 36. Indeed, in section 19(2) for procedural purposes a licence is to be treated as though it were an assignment: if, as the plaintiffs contend, under section 49(5) an exclusive licensee has to be treated as owner of the rights, section 19(2) is wholly otiose. Therefore in my judgment the scheme of the Act preserves the normal distinction between assignees who have proprietary rights and licensees whose substantive rights are contractual. Therefore an exclusive licensee cannot show, as the words of section 49(5) require, that he is "entitled to the copyright"."
	Copyright Act 1956

EMI Records -v- Riley [1981] 1 All ER 838; [1981] 1 WLR 923
1981 ChD Dillon J	Intellectual Property, Litigation Practice	Casemap 1 Cites 1 Citers
	The defendant to an action for an injunction by the plaintiff on behalf of the British Phonographic Industry Copyright Society, said that the company did not properly represent the members of the Society. Held: It could be inferred that all relevant members of a copyright society would wish to suppress counterfeit goods, and so they had a sufficient common interest to allow a representative action by the society acting through the plaintiff. Allowing a representative action would avoid substantial and unnecessary complications of each member of the class pursuing a separate action.

ICI -v- Berk [1981] FSR 1
1981	Intellectual Property, Torts - Other	Casemap 1 Citers
	A party wished to assert that a claim in passing off should not proceed because of some illegality. Held: There has to be a nexus between the illegality and the claim for passing off.

Pfizer Inc -v- Eurim-Pharm Gmbh R-1/81; [1981] EUECJ R-1/81; 1 CMLR 406
3 Dec 1981 ECJ	European, Intellectual Property	Casemap 1 Citers
	Europa The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or final user by enabling him to distinguish without any possibility of confusion between that product and products which have another origin. This guarantee of origin means that the consumer or final user may be certain that a trade-marked product which is offered to him has not been subject at a previous stage in the marketing process to interference by a third person, without the authorization of the proprietor of the trade mark, affecting the original condition of the product. Therefore, the proprietor of a trade-mark right may not rely on that right in order to prevent an importer from marketing a pharmaceutical product manufactured in another member state by the subsidiary of the proprietor and bearing the latter ' s trade mark with his consent, where the importer, in re-packaging the product, confined himself to replacing the external wrapping without touching the internal packaging and made the trade mark affixed by the manufacturer to the internal packaging visible through the new external wrapping, at the same time clearly indicating on the external wrapping that the product was manufactured by the subsidiary of the proprietor and re-packaged by the importer. As to the exhaustion of rights in the field of trade marks: "regard must be had to the main function of the trade mark which is to give the consumer or final buyer a guarantee of the identity of origin of the marked product, by enabling him to distinguish this product, with no risk of confusion, from products of a different origin. This guarantee of origin implies that the consumer or final buyer can be sure that any marked product offered to him has not been interfered with by a third party, at an earlier stage of marketing, in any way which has affected the original condition of the product, without the consent of the trade mark owner."
	Link[s] omitted

RCA -v- Pollard [1982] 2 All ER 468
1982 ChD	Torts - Other, Intellectual Property	Casemap 1 Cites 1 Citers

Redwood Music Ltd -v- Chappell & Co Ltd [1982] RPC 109
1982 ChD Robert Goff J	Intellectual Property	Casemap 1 Citers
	It was submitted that an arrangement of an existing musical work only attracted a separate copyright if it involved great skill and labour. After referring to the University of London Press Limited, the court held: "That passage was cited with approval in the House of Lords in Ladbroke (Football) Ltd. v. William Hill (Football) Ltd [1964] 1 W.L.R. 273 at pp. 277-78 per Lord Reid, where he stated that there was no dispute about the meaning of the term "original". It is on this basis, of course, that there may be copyright in works of a comparatively humdrum nature, such as straightforward translations; though of course such copyright may be of little value, because another such work may be produced without difficulty, without recourse to the copyright work. I should add that the decision in Wood v. Boosey, relied on by Mr Bateson, although decided before the Copyright Act 1911 and not therefore decided as a matter of construction of the statutory words "original work", is in my judgement consistent with the test proposed by Peterson J. The case was concerned with the question whether a piano reduction by Brissler of Nicolai's opera The Merry Wives of Windsor attracted a separate copyright in the arrangement, or whether the copyright in the piano reduction belonged to the owner of the copyright in the original opera. In holding that the piano reduction was an independent composition in which the arranger, as author, owned the copyright, the Court of Exchequer Chamber considered the questions whether it was "a new and substantive work in itself", or whether there was "something in the nature of authorship in Brissler" – tests at least consistent with that now adopted in relation to the statutory definition under the Acts of 1911 and 1956."

Leco Investments (UK) Ltd -v- Land Pyrometers [1982] RPC 133
1982 CA Fox LJ, Stephenson LJ	Litigation Practice, Intellectual Property	Casemap 1 Citers
	The defendant appealed a striking out of his defence on a claim for copyright infringement. Held: The appeal succeeded. Leave should have been given. Whether copying was substantial depending in part on quality, which was a matter of degree. The court identified the difficulties in identifying the sorts of evidence which might be admissible in a claim for 3-dimensional copying. Fox LJ said: "I am not satisfied that no further evidence is relevant or admissible."

Fletcher Challenge Ltd -v- Fletcher Challenge Pty Ltd (1982) FSR 1
1982 Powell J	Commonwealth, Intellectual Property, Company	Casemap 1 Cites 1 Citers
	(Supreme Court of New South Wales) The plaintiff company was formed from three companies well-known in New Zealand. The defendant company were formed anticipating being sold to the plaintiffs at a substantial profit. Defence Counsel told the judge that the defendants had not traded and offered undertakings that they would not trade without making it clear that they were not associated with the plaintiffs, and that therefore the defendants would not make a misrepresentation which could found a passing-off action. Held: The judge considered each of the characteristics of passing-off set out in the Warnink case. If the defendants started trading, they would be associated with or treated as part of the plaintiffs and that could affect the plaintiffs' reputation. He granted injunctions preventing passing-off and requiring the name to be changed. The name of the company was an instrument of fraud as its use would mean that passing-off would result.

Exxon Corp -v- Exxon Insurance Consultants International Ltd [1982] RPC 69
1982 CA Stephenson LJ	Intellectual Property	Casemap 1 Cites
	Single letter commands used within a computer program, and those with longer names, even if clearly recorded in the source code, are unlikely to be entitled to a copyright.

RCA Corporation -v- Pollard [1982] 3 All ER 771; [1983] 1 Ch 135
1982 CA Oliver and Slade LJJ	Intellectual Property, Torts - Other	1 Cites 1 Citers
	The illegal activities of bootleggers who had made unauthorised recordings of concerts, diminished the profitability of contracts granting to the plaintiffs the exclusive right to exploit recordings by Elvis Presley. Held: The defendant's appeal succeeded. The performer might have had an action, but the Act was directed to his rights, not those of the plaintiff distributor. Oliver LJ discussed the tort of wrongful interference by the practice of a fraud on a third party: "It also has to be proved by a plaintiff who seeks to rely on this tort, as Mr Beveridge conceded for Lonrho, that the unlawful act was in some sense directed against the plaintiff or intended to harm the plaintiff. The origin of those phrases is the oft quoted passage in the speech of Lord Watson in Allen v Flood [1898] AC 1,96, which was applied by the majority of this court (Buckley and Kennedy LJJ) in National Phonograph Co. Ltd v Edison-Bell Consolidated Phonograph Co. Ltd [1908] 1 Ch 335. In that case the fraud was clearly directed against the plaintiff. "
	Dramatic and Musical Performers' Protection Act 1958 1

Schering Chemicals Ltd -v- Falkman Ltd [1982] QB 1
1982 CA Lord Denning (dissenting)	Intellectual Property	Casemap 1 Citers

Catnic Components Ltd & Another -v- Hill & Smith Ltd [1983] FSR 512; [1982] RPC 183
1982 HL Lord Diplock	Intellectual Property, Damages	Casemap
	The plaintiffs had been established as market leaders with their patented construction, had ample production capacity and stocks, but had never granted any licence under their patent. The defendants had not been in business in this field at all, entered the market at the expense of the plaintiffs using an infringing version of the plaintiffs' patented construction. Held: The proper damages were on the assumption that the plaintiffs would have made, with their patented lintels, those sales made by the defendants with the infringing lintels save as shown otherwise. An invention involves an inventive step if it is not obvious "to a person skilled in the art" being a person likely to have a practical interest in the subject matter of the invention. The approach to construction exemplified in Prenn and in Reardon-Smith is to be applied also to the construction of patents claims: "A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge." and "Both parties to this appeal have tended to treat 'textual infringement' and infringement of the 'pith and marrow' of an invention as if they were separate causes of action, the existence of the former to be determined as a matter of construction only and of the latter upon some broader principle of colourable evasion. There is, in my view, no such dichotomy; there is but a single cause of action and to treat it otherwise…is liable to lead to confusion."
	Patents Act 1977 3

CBS Inc -v- Ames Records & Tapes Ltd [1982] Ch 91
1982 Whitford J	Intellectual Property
	A record library lent out records and simultaneously offered blank tapes for sale at a discount. Held: The defendant library had not authorised the infringement of copyright in the records. Whitford J said: "Any ordinary person would, I think, assume that an authorisation can only come from somebody having or purporting to have authority and that an act is not authorised by somebody who merely enables or possibly assists or even encourages another to do that act, but does not purport to have any authority which he can grant to justify the doing of the act." and "you can home tape from bought records, borrowed records, borrowed from friends or public libraries, from the playing of records over the radio, and indeed, at no expense, from records which can be obtained for trial periods on introductory offers from many record clubs who advertise in the papers, who are prepared to let you have up to three or four records for a limited period of trial, free of any charge whatsoever."

RCA Corporation -v- John Fairfax & Sons Ltd [1982] RPC 91
1982 Kearney J	Intellectual Property, Commonwealth
	(High Court of Australia) Kearney J considered what amounted to the authorisation of an infringement of a copyright work and approved a statement by Laddie that: "a person may be said to authorise another to commit an infringement if the one has some form of control over the other at the time of infringement or, if he has no such control, is responsible for placing in the other's hands materials which by their nature are almost inevitably to be used for the purpose of infringement."

Rotocrop International Ltd -v- Gembourne Ltd [1982] FSR 241
1982 Graham J	Torts - Other, Intellectual Property	1 Citers
	When sued for patent infringement, the defendants challenged the validity of the patent for obviousness. Held: There was novelty in the patent for a compost bin with removable panels and a rival manufacturer who made and sold infringing bins in parts with assembly instructions was a joint tortfeasor with his customers.

Kalman -v- PCL Packaging (UK) Ltd [1982] FSR 406
1982	Intellectual Property
	A patents Act was not infringed by a sale of goods because the property in the goods had already passed before they arrived in this country.
	Patents Act 1977

My Kinda Town Ltd -v- Soll [1982] FSR 147; (1983) RPC 15
1982 QBD Slade J	Damages, Intellectual Property	Casemap 1 Citers
	Although there was no acquiescence on the part of the plaintiffs, such as to have destroyed their rights, the court was not persuaded that, nevertheless, they should be deprived of an injunction.

CBS United Kingdom -v- Lambert [1982] 3 WLR 746; [1982] 3 All ER 237
1982 CA Lawton LJ	Intellectual Property, Litigation Practice
	The defendant had over a long period created infringing copies of works whose copyright was owned by the claimants. On investigation, large numbers of items were discovered, and the defendant had put the proceeds into readily identifiable assets. The plaintiff sought orders for their delivery up. Held: The possibility of sefl-incrimination by the defendant was no bar to an order for their delivery up. The court set out guidelines for such actions saying: 1) There should be clear evience of the defendant's intention to dispose of the assets, but there should also be evidence that the assetss had been acquired as a result of the defendant's wrongful actions, and 2) Items for the use by the defendant in his ordinary daily life or lawful business should not be delivered up, but furnishings being objets d'art purchased to hide the proceeds could be claimed. Lawton LJ: “On the facts put before us this was not a case of a Plaintiff seeking to freeze a Defendant's assets pending trial in anticipation of getting judgment. It was one, which seemed to us to show that the first Defendant was conducting his affairs with intent to deprive anyone who got judgment against him of the fruits of victory. “

Machinery Market Ltd -v- Sheen Publishing Limited [1983] FSR 431
1983 ChD Walton J	Intellectual Property	Casemap
	A newspaper replished advertisements which were in fact copied from a competitor. They blamed their printers. Held: The plaintiff did own the copyright in the advertisements, and was entilted to an injunction and an account of profits. It was not a defence to blame the printers.
	Copyright Act 1956 15

Sillitoe -v- McGraw-Hill Book Co [1983] FSR 545
1983 HH Judge Mervyn Davies QC	Intellectual Property, Damages	Casemap 1 Citers
	The court considered whether the lack of acknowledgement of the source of a quote made the use unfair. As to whether a use was in breach of import provisions so as to give rise to additional damages: "What the defendants have done here and knowing of the plaintiffs' comments and the facts on which the complaints were based, was to take the risk of finding their legal advice wrong. If a person takes a deliberate risk as to whether what he is doing is wrong in law, I do not see that he can say later that he did not, at the time, know that what he was doing was wrong, if in the event his actions are held to be wrong."

Murray -v- King (1983) 2 IPR 99
1983	Intellectual Property	Casemap 1 Citers

Lego System Aktieselskab -v- Lego M. Lemelstrich Ltd [1983] FSR155
1983 ChD Falconer J	Intellectual Property	Casemap 1 Citers
	An association was claimed between irrigation equipment supplied by the defendant and plastic toy bricks made by the plaintiff. Held: When looking for the likelihood of confusion in a passing off action between parties whose activities lie in different fields must depend mainly on the scope of the "field of recognition" of the name in question, and not merely on the disparity between their fields of activity.

My Kinda Town Ltd -v- Soll [1983] RPC 407
1983 CA Oliver LJ	Intellectual Property	Casemap 1 Cites 1 Citers
	The appeal succeeded. Where there is already a substantial potentiality for confusion of two businesses simply by reason of their being engaged in the same trade, a trader cannot legitimately build on and increase that potentiality in such a way that confusion becomes worse confounded. This would amount to passing off. Oliver LJ said: "The question to be asked is, no doubt, in all cases the same - is the get-up, or the method of training" (sic, presumably this is a misprint for `trading') "or the use of a particular trading name by the defendants calculated to lead to the belief that their business is the plaintiff's business? But it becomes an extraordinarily difficult question to answer where there is already a substantial potentiality for confusion of the two businesses, simply by reason of their being engaged in the same trade. That does not mean, of course, that a defendant is legitimately entitled to build on and increase that potentiality in such a way that confusion becomes worse confounded, but it does mean that where evidence of actual confusion is tendered it has to be approached ... with the caveat that there may well be reasons why it occurs which involve no question of legal liability at all."

Hindley -v- Higgins and News Group Newspapers Ltd Unreported, 24 August 1983; CAT No. 830 of 1983
24 Aug 1983 CA	Intellectual Property	Casemap 1 Citers
	Fair dealing in copyright

Ferdinand M.J.J. Duijnstee -v- Lodewijk Goderbauer R-288/82; [1983] EUECJ R-288/82; [1983] ECR 3663
15 Nov 1983 ECJ	European, Insolvency, Intellectual Property	Casemap 1 Cites 1 Citers
	A liquidator sought to recover a patent from an employee of the company, a claim held not to be excluded from the Convention. Europa 1. The Convention of 27 September 1968, which seeks to determine the jurisdiction of the courts of the contracting states in civil matters, must override national provisions which are incompatible with it. 2. Article 19 of the Convention of 27 September 1968 requires the national court to declare of its own motion that it has no jurisdiction whenever it finds that a court of another contracting state has exclusive jurisdiction under article 16 of the convention, even in an appeal in cassation where the national rules of procedure limit the court ' s reviewal to the grounds raised by the parties. 3. The term "proceedings concerned with the registration or validity of patents "contained in article 16 ( 4 ) of the convention of 27 september 1968 must be regarded as an independent concept intended to have uniform application in all the contracting states. 4. The term "proceedings concerned with the registration or validity of patents" does not include a dispute between an employee for whose invention a patent has been applied for or obtained and his employer, where the dispute relates to their respective rights in that patent arising out of the contract of employment.
	[ Bailii ]

Duijnstee -v- Goderbauer C-288/82; [1983] ECR 3663
15 Nov 1983 ECJ	European, Intellectual Property	Casemap 1 Citers
	There was a dispute between an inventor and the liquidator of a company concerning ownership of patents. The liquidator's claim was that under Dutch law the inventions had been made on terms that the patents ought to belong to the company. He demanded that the inventor should be ordered to transfer not only the Dutch patent, but also the corresponding patents in 22 other countries, including five which had adhered to the Brussels Convention. Held: To make the order would not violate Article 16(4) of the Convention. The validity of the patents was not being challenged. Nor was the conduct of the various national authorities whose business it was to keep the patent registers. Nor was the liquidator seeking an order directing those authorities to rectify their registers in the light of Dutch law. Instead, the liquidator was asking for an order which would have required the inventor himself to apply to rectify the registers: an order in personam.
	Link[s] omitted

Francome -v- Mirror Group Newspapers Ltd [1984] 1 WLR 892
1984 CA Sir John Donaldson MR	Intellectual Property, Media	Casemap 1 Citers
	The defendant had acquired illegal tapes of telephone conversations which it said implicated the plaintiff. He sought to restrain publication of the material pending forthcoming discliplinary charges at the Jockey Club. Held: The court had to find a balance of justice. The court spoke of the media and the public interest. “The media, to use a term which comprises not only the newspapers, but also television and radio, are an essential foundation of any democracy. In exposing crime, anti-social behaviour and hypocrisy, and in campaigning for reform and propagating the views of minorities, they perform an invaluable function. However, they are peculiarly vulnerable to the error of confusing the public interest with their own interest. Usually these interests march hand in hand, but not always. In the instant case, pending a trial, it is impossible to see what public interest would be served by publishing the contents of the tape which would not equally be served by giving them to the police or to the Jockey Club. Any wider publication could only serve the interests of the Daily Mirror.” The public interest may better be served by passing information to the police than publishing it. If it turns out that the suspicions are without foundation, the confidence can then still be protected.

Anheuser-Busch -v- Budejovicky Budvar [1984] FSR 413
1984 Whitford J, Oliver LJ	Intellectual Property	Casemap 1 Citers
	The parties disputed the use of the name Budweiser for the beers which each sold. Held: Neither party was entitled to an injunction. neither AB nor BB was disentitled to use the name Budweiser since in 1979 there was a dual reputation and neither had achieved the reputation improperly and neither was making a misrepresentation. He recognised that some degree of confusion might result, but he said that this was true in the case of marks used in pursuance of registration under section 12(2) of the 1938 Act.
	Trade Marks Act 1938 12(2)

Moorgate Tobacco Co Ltd -v- Philip Morris Ltd (No 2) (1984) 156 CLR 414
1984 Deane J	Intellectual Property, Commonwealth	Casemap 1 Citers
	The court approved “.. the adaptation of the traditional doctrine of passing off to meet new circumstances involving the deceptive or confusing use of names, descriptive terms or other indicia to persuade purchasers or customers to believe that the goods or services have an association, quality or endorsement which belongs or would belong to goods or services of, or associated with, another or others.”

International Flavors & Fragrances Inc [1984] OJ EPO 309
1984 EPO	Intellectual Property	Casemap 1 Citers
	A patentee who wishes to complain of dealings in a product made by his patented process must rely on his process claim and article 64(2). The United Kingdom is the only Member State of the EPC which accepted product-by-process claims. The EPO will only accept a claim to a product defined in terms of its process of manufacture when the product is new in the sense of being different from any existing product in the state of the art but the difference cannot be described in chemical or physical terms: "This may well be the only way to define certain natural products or macromolecular materials of unidentified or complex composition which have not yet been defined structurally."

Anheuser-Busch Inc v Budejovicky Budvar [1984] FSR 413; (1984) 4 IPR 260
1984 CA Oliver LJ	Intellectual Property	Casemap 1 Citers
	The plaintiff sold the well-known 'Budweiser' beer in the US, but it was not generally available in the UK, being sold in American military bases and in a few duty-free shops. However, the beer was widely known throughout the UK because of the plaintiff’s publicity efforts as well as tourist and business traffic between Europe and the US. The defendant sold its own beer under the same name. The right to a trade mark was challenged. Held: Neither side was making a false representation; there was a dual reputation in the mark and name "Budweiser." Oliver LJ said that the plaintiff could “legitimately claim . . a reputation as the [brewer] of a beer, Budweiser, with a substantial section of the public”. The question for the court, then, was “whether this reputation associated with a beer which, for practical purposes, nobody could buy [in the UK], constituted . . goodwill in any relevant sense” and asked whether the plaintiff’s name could be said to be an attractive force for custom in the UK.He answered no, saying: "[O]ne asks oneself “what custom in this country in 1973 was brought in by the knowledge of members of the indigenous British public of the [plaintiff’s] Budweiser beer?” And the answer must be that there was none, because however attractive [the British public] may have found the idea of drinking the [plaintiff’s] beer, they could not get it. In so far, therefore, as anyone was misled by the defendants’ use of the name “Budweiser,” the [plaintiff] could suffer no damage either by loss of sales, for there were none at that time and none were contemplated, nor by loss of reputation, because if there was any such loss (which seems highly improbable) the reputation was quite unconnected with either an ability or a willingness to supply."

Kleeneze Ltd -v- DRG (UK) Ltd [1984] FSR 399
1984	Intellectual Property	Casemap 1 Citers
	However strikingly original is a work, copyright law alone will not prevent others expressing the same idea themselves, even if the result is similar.

Faccenda Chicken -v- Fowler [1984] ICR 589; [1985] 1 All ER 724
1984 Goulding J	Employment, Intellectual Property	Casemap 1 Citers
	The court was asked to restrain a former employee making use of information acquired during his employment which information the employer claimed to be confidential. Held: Classes of such information which might receive protection include: "information which the servant must treat as confidential (either because he is expressly told that it is confidential or because from its character it obviously is so) but which once learned necessarily remains in the servant's head and becomes part of his own skill and knowledge applied in the course of his master's business." and "specific trade secrets so confidential that, even though they may necessarily have been learned by heart and even though the servant may have left the service, they cannot lawfully be used for anyone's benefit but the master's."

White Horse Distillers Ltd -v- Gregson Associates Ltd (1984) RPC 6l
1984 Nourse J	Intellectual Property	Casemap 1 Cites 1 Citers
	Complaint was made that the defendants were assisting traders in Ecuador in passing off their products as those of the plaintiff. Held: "He [defence counsel] submitted that there can never be a tort where the English exporter exports nothing but the malt whisky, that being something which is susceptible of being used innocently in the foreign country. It seems to me that Mr Cochrane's submission cannot be correct. Suppose, for example, a case where the English exporter has told the foreign importer exactly how to set up deceptive sales of the admixture. It cannot be the law that the English exporter will escape liability simply because he does nothing except export the Scotch Whisky. If he exports it with the intention that the admixture shall be sold in a deceptive manner, it is immaterial that he has been responsible neither for the printing and production of the deceptive labels and cartons, nor for their actual implication in the sale of the liquor in the foreign country. In that state of affairs the whisky, being intended to facilitate the deceptive sales, is itself, if you like, an inchoate instrument of deception."

Sport International Bussum BV -v- Inter-Footwear Ltd [1984] 1 WLR 776
2 Jan 1984 HL Lord Templeman	Contract, Intellectual Property, Equity	Casemap 1 Citers
	A contractual licence was granted to use names and trademarks for sports shoes. An earlier action between the parties had been stayed on the terms scheduled to a Tomlin order, which provided for Inter-Footwear to pay a sum in instalments and to have a licence (partly exclusive and partly non-exclusive) to use the names and marks. If any instalment was not paid on the due date, the whole unpaid balance became due at once and the licensor could determine the licence. There was a delay in payment of the second instalment and the licensor terminated the licence. Held: Relief was not available against the forfeiture of a mere contractual licences. As to the discussion of proprietoty or possessory right in Scaptrade: "Mr Wilson submitted that in the present case the licences to use the trade marks and names created proprietary and possessory rights in intellectual property. He admits, however, that so to hold would be to extend the boundaries of the authorities dealing with relief against forfeiture. I do not believe that the present is a suitable case in which to define the boundaries of the equitable doctrine of relief against forfeiture. It is sufficient that the appellants cannot bring themselves within the recognised boundaries and cannot establish an arguable case for the intervention of equity. The recognised boundaries do not include mere contractual licences and I can see no reason for the intervention of equity."

In Re American Greetings Corporation's Application [1984] 1 WLR 189
26 Jan 1984 HL Lord Diplock, Lord Fraser of Tullybelton, Lord Scarman, Lord Bridge of Harwich and Lord Brightman	Intellectual Property	Casemap 1 Cites
	The applicant owned an American Trade Mark in the name 'Holly Hobbie". They sought to register the same mark here. Objection was made that the applicant intended to license the use of the mark to others, rather than use it itself, and would this be trafficking in the mark. Held: The appeal against refusal of registration failed. The intended trade would not seek to identify the mark with its owner, but rather to make money from mere ownership of the mark by licensing its use to third parties unconnected with the applicant. This would be an abuse of the trade mark system. The mere attempt to seek quality control over the goods was not enough to remove the suspicion of trafficking.
	Trade Marks Act 1938 28(6)
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Hydrotherm Gerätebau gmbh -v- Compact del Dott Ing Mario andreoli & c Sas [1984] ECR 2999; C-170/83; R-67/67; [1984] EUECJ R-67/67
12 Jul 1984 ECJ	European, Intellectual Property, Commercial	Casemap 1 Citers
	Europa In competition law, the term ' undertaking ' must be understood as designating an economic unit for the purposes of the subject-matter of the agreement in question even if in law that economic unit consists of several persons, natural or legal. Regulation nr 67/67 of the commission on the application of article 85 (3) of the treaty to categories of exclusive dealing agreements must be applied even if several legally independent undertakings participate in the agreement as one contracting party provided that those undertakings constitute an economic unit for the purposes of the agreement. In those circumstances competition between the persons participating together, as a single party, in the agreement in question is impossible. Regulation no 67/67 is applicable where the obligations entered into cover not only a defined area of the common market but also countries outside the community. Article 3 (b) (1) of regulation no 67/67 must be interpreted as excluding an agreement from block exemption only if it is clear from the actual terms of the agreement or from the conduct of the parties that they intend to use, or are in fact using, an industrial property right in such a way as to prevent or impede, with the aid of that right, parallel imports into the territory covered by the exclusive dealership. The fact that an agreement does not contain any provision to prevent abuse of an industrial property right is not in itself a sufficient reason for excluding that agreement from the application of regulation no 67/67.
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