IP Two Minute Monthly – May 2021

This is our summary of developments and cases in the world of IP from May which should take you no more than two minutes to read:


Similarity, Passing Off and Trade Marks

Lifestyle Equities failed in their trade mark and passing off infringement claims against various defendants because the court held that the respective logo marks were not sufficiently similar. The Claimant’s mark showed a polo player swinging a mallet above the words Beverly Hills Polo Club, whereas the Defendants’ logo featured two polo players above the words Greenwich Polo Club (Lifestyle Equities CV and another v The Copyrights Group Ltd and others [2021] EWHC 1212).

Films, Credits and Copyright

Following the main judgment in the case we reported here, the Judge decided that the correct credit for Julia Kogan for the film Florence Foster Jenkins was the current one which had been corrected after the main judgment on the iMDb film website, namely “Nicolas Martin (written by), Julia Kogan (written by)(originally uncredited)”. In doing so, the Judge suggested that the order in which names on credits appear can suggest the size of the respective contributions, which is discussed in more detail here (Martin and another v Kogan [2021] EWHC 1242 (IPEC)).

Accessories, Joint Liability and Account of Profits

In another case involving Lifestyle Equities, the Court of Appeal upheld the trial judge’s ruling that accessories should only be liable to account for profits actually made by them from their wrongful acts, rather than profits made by the principal (Lifestyle Equities CV and another v Ahmed and another [2021] EWCA Civ 675).

Doctrine of Equivalents and Patents

Although he did not have to decide the issue, a judge sitting in the High Court has ruled that the defence laid down in the German case of Formstein should be applied to the doctrine of equivalents under UK law. This would mean that if a defendant’s device would have fallen outside of the wording of a claim but would have infringed under the doctrine of equivalents and was obvious over the prior art, the correct approach would not be to invalidate the patent (Facebook v Voxer [2021] EWHC 1377).

Band Names, Issue Estoppel and Passing Off

The Court of Appeal overturned an IPEC decision to strike out parts of a defence in a dispute between two former band members concerning who owns the rights in the band name Love Injection or Luv Injection. In IPO proceedings relating to trade marks incorporating the names filed by the defendant, the IPO had found that the claimant could rely on passing off rights and bad faith to challenge those marks. When the defendant sought to claim that he owned the goodwill in the names in the present proceedings, the claimant applied to strike out that defence on the basis that the IPO had already decided the issue. The Court of Appeal overturned the strike out decision on the basis that it was not convinced that the IPO decision had created issue estoppel since it was based on two separate grounds (passing off and bad faith) and there were special circumstances allowing the defendant to claim passing off in his own name rather than as being owned by the former partnership (Thomas v Luv One Luv All Promotions Ltd and another [2021] EWCA Civ 732).

Sound Recordings, Broadcasts and Performances

The Copyright and Performances (Application to Other Countries) (Amendment) Order 2021 introduced various changes to the 2016 Order, including extending the protection of works to those originating from additional jurisdictions.

Descriptive Words and Trade Marks

The High Court rejected an appeal against an IPO decision that the word FOOTWARE was descriptive of software, hardware and related services regarding footwear (Puma SE v Nike Innovate CV [2021] EWHC 1438).

Simon Clark


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