High Court: Intellectual Property Enterprise Court judgments, 2016

Goodwill generated by a solicitor’s work in the course of employment or partnership ordinarily belongs to the employing firm or partnership, not to the…

Passing off requires goodwill or reputation, a misrepresentation, and damage. A trade association may sue to protect goodwill in its trading name.…

UK unregistered design right protects the specific design embodied in an article or part of an article, rather than an abstract concept or general method of…

Trade mark consent must be proved by the alleged user and must be unequivocally demonstrated. Silence or delay by the proprietor does not establish consent.…

Additional copyright damages under Copyright, Designs and Patents Act 1988, s.97(2), require particular regard to the flagrancy of the infringement and the…

For national intellectual property rights, jurisdiction under art.7(2) of Brussels I may arise in the Member State where the right subsists, provided there is…

Passing off requires goodwill or reputation associated with the relevant get-up, a misrepresentation, and consequential damage. Product shape or decoration may…

A general release must be construed in its documentary, factual and commercial context. Where the commercial purpose is to achieve a clean slate between…

Design right subsists where a designer has contributed sufficient skill and effort to create an original design, even though the designer was influenced by…

A court cannot use ordinary declaratory jurisdiction to overturn or indirectly suspend a decision made under the UDRP. A registrant seeking relief under…

A declaration of non-infringement is discretionary and should be granted only where it serves a useful purpose and the underlying issue is sufficiently clearly…

A patent claim is not an impermissible free-beer claim merely because it uses a functional feature, provided the feature reliably enables the skilled person to…

Use of a vehicle manufacturer’s mark by an independent repairer is lawful where it accurately describes the vehicles serviced and does not affect the mark’s…

Under CPR 6.15, the court may deem an earlier step good service where, considering all the circumstances, there is good reason to do so. The defendant’s…

Patent claims must be construed purposively through the eyes of the skilled reader. Where a pre-characterising clause is based on identified prior art, it will…

Copyright and database-right infringement claims based on access to stored software files require proof that the relevant acts made the files available to the…

For summary judgment, the court must decide whether the defence has any real prospect of success. In a passing-off claim, admitted goodwill and…

For an application to join a new defendant under CPR 19.2(2)(b), the court ordinarily applies the test applicable to striking out a pleaded claim under CPR…

For the purpose of the Intellectual Property Enterprise Court costs cap, “claim” means the single set of proceedings, rather than only those issues finally…

In patent-threat proceedings based on a published application, the court may adjourn the threats claim where grant is imminent and the claims have become…

Damages for patent infringement are assessed by identifying the sales caused by the infringement and the profits that would have been earned in the…

A passing-off claimant relying on packaging get-up must prove goodwill in the pleaded combination of features, not merely a reputation in the product name or…