Brexit and IP

Brexit finally came into effect on 1 January 2021 following the end of the transition period after the UK had left the EU on 31 January 2020. UK courts are no longer bound by decisions of the CJEU, but don’t expect any sudden changes to UK law. Legislation was passed to bring into effect the UK-EU trade and co-operation agreement which includes minimum standards provisions relating to IP, having been agreed on Christmas Eve. Some last minute legislation was also passed to make changes to laws relating to trade marks and agricultural, food and drinks products.

Joint Authors and Copyright

Following the Court of Appeal’s judgment last year in Martin v Kogan, where the Court laid down various principles to be applied when considering issues of joint authors of copyright works, the case was referred back to IPEC for a re-trial before a different judge. That judge has now concluded that Julia Kogan was entitled to a 20% share in the copyright in the screenplay for the film Florence Foster Jenkins, which included non-textual contributions she made to characterisation, musicality, choice of historical incident and musical terminology. For a more detailed summary, see our article here.

Knowledge and Confidential Information

The Court of Appeal has given guidance on when a recipient of confidential information is under a duty of confidence. While each case will be very fact dependent, where a reasonable person would have made enquiries as to whether the information was confidential, failure to do so may give rise to an obligation of confidence (Travel Counsellors Ltd v Trailfinders Ltd [2021] EWCA Civ 38).

Jurisdiction and Passing Off

In upholding a decision to grant permission to serve proceedings out of the jurisdiction, the High Court held that passing off fell within Article 6 of Rome II, relating to acts of unfair competition, rather than Article 8 which deals with IP claims (Lyle & Scott Ltd v American Eagle Outfitters, Inc [2021] EWHC 90 (Ch)).

Validity, Infringement and Patents

In finding 4 out of 5 patents concerning DNA sequencing to be valid and infringed, the UK Patents Court considered the application of the Regeneron Supreme Court judgment to method claims, as well as the identification of the skilled addressee of the patents, infringement and the “collocation” validity challenge made against one of the patents. For further details see here (Illumina Cambridge Ltd v Latvia MGI Tech SIA and Others [2021] EWHC 57 (Pat)).

Online Sales and Trade Marks

The UK High Court ruled that sales of goods that take place outside the UK/EU but to consumers in the UK/EU, which are not preceded by targeted offers for sale or advertisements, do not amount to “use in the course of trade” within the UK/EU and therefore cannot constitute infringements of UK/EU trade marks (Lifestyle Equities C.V. and Another v Amazon UK Services Ltd and Others [2021] EWHC 118).

Absolute Grounds and Trade Marks

Objections under s.3(3) Trade Marks Act 1994 (namely that a trade mark shall not be registered if it is “… (b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or services)” only relate to absolute rather than relative grounds, so do not include deception as to who is providing the goods or services under the mark. The same applies to the grounds for revocation under section 46(1)(d) (Cormeton Fire Protection Ltd v Cormeton Electronics Ltd [2021] EWHC 11).