IP Two Minute Monthly – November 2021

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


Private Letters, Misuse of Private Information and Copyright

The Court of Appeal rejected Associated Newspapers’ appeal against the grant of summary judgment against them for copyright infringement and misuse of private information relating to the letter written by the Duchess of Sussex’s father, which was published in the Mail on Sunday and MailOnline. For more details, see our article here (HRH The Duchess of Sussex v Associated Newspapers Ltd [2021] EWCA Civ 1810).

Scope of Protection and UK Registered Designs

The type of product in respect of which a design is registered as a UK registered design can affect its scope of protection, in the sense of identifying the features of the design. In this case, the Appointed Person found that the fact that the design was registered for the shape of a diamond meant that the “sparkle and fire” produced by the diamond was more important than its shape, even though the design was represented merely by a line drawing. The informed user was the purchaser of jewellery which incorporated the cut diamond, rather than the manufacturer, even though part of the cut diamond would not be seen when incorporated into jewellery. This was a very unusual case where the Appointed Person held that the informed user was not the right person to interpret the design, which required expertise relating to cut diamonds – the role of the informed user only comes in when considering the product to which the design is to be applied (in this case, when the diamond had been mounted into a piece of jewellery)( o/821/21 Mr Schmuel Cohen v Utopia Diamonds Ltd).

Technical Function and UK Registered Designs

In an application to invalidate the registered design for a bottle top based on earlier similar prior art, the Comptroller-General refused the application, finding that the two designs gave a different overall impression. Although he found that all the features of both designs were dictated by their function, no application to invalidate based on s.1C(1) Registered Design Act 1949 (features solely dictated by technical function are not protected) had been made. Accordingly, because the extent of design freedom was a factor to consider when assessing the overall impression of a design, those technical features which differed from the prior art could be taken into account, albeit giving them less weight (O/830/21 NH Universal Limited v Captive Closures LLP).

Non-Use, Invalidity and Trade Marks

A defendant unsuccessfully tried to rely on its own use of a mark which it had later bought from a third party in order to demonstrate genuine use of it in support of a counterclaim for trade mark infringement. Only use by the proprietor, or use with the proprietor’s consent, could be relied on to establish genuine use under the Trade Marks Act 1994, whereas here the defendant was trying to rely on its use of the same word before it owned the registered trade mark to show use of the registered trade mark (ABP Technology Ltd v Voyetra Turtle Beach, Inc. and another  [2021] EWHC 3096 (Ch)).

SEPs, Essentiality and Patents

Apple has won the next round in its patent litigation with Optis. Although the Court of Appeal upheld the High Court’s finding that Optis’ patent was valid, it found that it was not essential to the standard in issue in the case, and therefore Apple had not infringed (Optis Cellular Technology LLC and others v Apple Retail UK Ltd and others [2021] EWCA Civ 1619).

FRAND Licences, Stays and Patents

The High Court declined to grant a stay of UK patent proceedings in favour of the determination of a worldwide FRAND licence by the Chinese courts. The judge held that the case related to infringements of UK patents, rather than being a dispute about FRAND terms, and that the circumstances were not of the rare and compelling nature contemplated by the Court of Appeal in Reichhold Norway such that the balance of justice favoured a stay of the FRAND issues before the court (Nokia Technologies OY & Nor v Oneplus Technology (Shenzhen) Co, Ltd and others [2021] EWHC 2952 (Pat).

Wine and Protected Designations of Origin

The CJEU has ruled, in a dispute concerning the use of the sign CHAMPANILLO for tapas bars in Spain and the protected designation of origin for “Champagne”, that Article 103(2)(b) of Regulation (EU) No 1308/2013 covers infringement by “evocation”, without any requirement to show similar goods/services (Comité Interprofessionnel du Vin de Champagne v BG ECLI:EU:C:2021:713).

Simon Clark


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