News & Events

Internet Law – E-Commerce – E-Privacy – Cookies – Directive 2009/136/EC – Data Protection – Privacy Policy - April 2011  

In December 2009 the E-Privacy Directive (2002/58/EC) was amended by Directive 2009/136/EC. This was partly due to the nature of third party cookies and the growing perception that their existence could amount to an invasion of personal privacy.

Need for Consent

According to Recital 66 of Directive 2009/136/EC, website owners can only use cookies if they provide users with “clear and comprehensive information” about their purposes and the user consents. The Recital provides for an exception to this obligation where the use of cookies is “necessary for the legitimate purpose of enabling the use of a specific service explicitly requested by the…user”. An example of this (as already mentioned) is where the use of cookies is necessary to online shopping websites in respect of a user’s shopping cart.More

Intellectual Property – Patents – Generic Products – Pharmaceutical Products – “Clear the way” – English Patents Court - March 2011

The recent decision in the case of Cephalon Inc v. Orchid Europe [2011] may be the first signs that the UK are about to remove the burden on generic pharmaceutical companies to “clear the way” before launching a generic pharmaceutical product.

What is “clearing the way”?

The concept of clearing the way concerns instances where generic pharmaceutical companies are about to launch generic pharmaceutical products and the patent owner seeks to prevent this (usually by injunction).

Those generic pharmaceutical companies are required by the Court to show that they have attempted to clear the way by using the procedures for revocation and/or declaration of non-infringement. This ensures that when the generic product is launched, all the problems of an interim injunction are avoided. Otherwise, the Court is entitled to/may draw adverse inferences.

This differs to the general rule in patent litigation where if a potential defendant anticipates it is about to be sued, there is no obligation upon it to seek a declaration of non-infringement and/or revocation and no adverse inferences will be drawn.

The process of clearing the way is a cumbersome and risky one for generic pharmaceutical companies as they must make the tough commercial decision of either More

 Intellectual Property – Trademarks – Trademark Infringement – Advertising – Comparative Advertising – Malicious Falsehood – Misleading and Comparative Advertising Directive - March 2011

In the recent case of Kingspan v Rockwool [2011], the High Court ruled on whether comparative advertising satisfied the Misleading and Comparative Advertising Directive 2006/114/EC (“MCA”) (implemented by the Business Protection Regulations 2008).  

Comparative Advertising

• Under the Comparative Advertising Directive, lawful comparative advertising does not infringe a registered trade mark and will not amount to trade mark infringement.
• The purpose of the Comparative Advertising Directive is to stimulate competition to the consumer's advantage while prohibiting unfair practices that are detrimental to competitors or consumer choice (Lidl v Vierzon)

Facts

• Kingspan manufacture insulation materials made of plastic foam.
• Rockwool manufacture non-combustible stone wool insulation materials.
• Rockwool’s advertisements showed the performance of the parties’ insulation materials in fire-growth tests in comparative terms. Rockwool’s aim was to demonstrate the difference between combustible and non-combustible insulation products.
• The advertisements took the form of road shows featuring small-scale fire demonstrations to an industry audience and marketing DVDs of footage of large-scale fire tests. More

 

 Intellectual Property - Patents - Invalidity Proceedings - Patent Infringement - February 2011

 In the case of Nokia GMBH and another v IPCom GMBH & Co KG [2011], the Court of Appeal dismissed the defendant’s appeal, ruling that the defendant’s patents were invalid.

The defendant has patents in respect of various mobile phone technology. The defendant and claimant were at one point in  negotiations whereby the  defendant was intending on  granting the  claimant licences for the use of such patents. Negotiations failed as the claimant refused to pay the licence fees.

As a result, the defendant brought an action in Germany for patent infringement against the claimant. The claimant in turn brought revocation proceedings against the defendant's patents in both the UK and Germany. In the UK the claimants commenced revocation proceedings for 15 of the defendant’s patents. There were 2 European patents included (the synch patent and the access rights patent).More

Recent IP Deals 2011

 Trade Mark, Branding, Intellectual Property, Licensing, Brand Acquisition, Software Patents

·       Advising a fast growing arts company on its branding strategy;

·       Advising a start-up media company on its international trade mark filing strategy

·       Advising a product development company on its IP protection and licensing matters

·       Advising in a revocation case in respect of an established trade mark

·       Advising a UK company on the acquisition of a target company’s IPRs

·       Advising a pharmaceutical company on the licensing of its IPRs throughout Europe

·       Advising a UK based broadcaster with its branding strategy in preparation for European launching

·       Advising and assisting a range of companies on commercial and infringement risks in respect of existing IPRs

·       Advising and assisting a range of companies with filing International trade marks under the Madrid Agreement and Protocol;

·       Advising on software patents and the patentability of software programs.

 

Pharmaceutical Law, Regulatory Law, Due Diligence 

•  Advising SME  on risks associated with the import/export of certain medicines;
• Advising SMEs on Marketing authorisations;
• Advising SMEs on patent infringement;

 

 2010

Commercialisation

·         Advising on the commercialisation of new products

 

 

Trade Mark; Invalidity Proceedings, Licensing Intellectual Property, Patents, Software Patents, Software, Copyright, Freedom to operate searches

 

·         Advising a range of SME's on IP rights including: copyright, trade marks, registered designs, patents and know how as well as brand value enhancement

·         Advising on Community trade mark strategies for European based group companies

·         Drafting, filing and prosecuting trade mark applications for a variety of clients

·         Advising a company owning a reputable brand in a valuable passing off action

·         Advising and assisting a number of other clients in passing off actions

·         Advising and assisting clients in trade mark invalidity actions with regards to their trade mark rights

·         Advising clients on disputes arising out of ownership/joint ownership of copyright

·         Advising and assisting clients in trade mark revocation actions

·         Filing and prosecuting International Trade Mark Applications

·         Acting for a celebrity artist in protecting and managing the celebrity's intellectual property portfolio

·         Advising and assisting a UK company in the European protection and exploitation of its software

·         Advising an SME on the merits of commencing invalidity proceedings in the UK Trade Marks Registry in relation to the SME’s trade mark registration;

·         Conducting patent evaluation for SME;

·         Acting on behalf of an independent film company to secure rights in a feature film

·         Acting for an International company in the licensing of its IPRs to a foreign company

·         Advising companies on their IP rights, patent protection and branding

·         Advising numerous start-ups and SME's on the various options, IP and agreements required within their industry

·         Advising numerous online businesses on IP protection, terms of business of commercialization of opportunities

·         Advising a number of franchisors on franchise models and particularly on the protection and exploitation of their IPRs

·         Drafting numerous assignments of intellectual property rights in software and website contents

·         Drafting copyright licences for exploitation of copyright works

·         Negotiating copyright clearances for the use of written lyrics from numerous chart hits for a prominent author

·         Conducting patent evaluations for clients in various industry sectors

·         Conducting patent evaluations for a global client in the generic drugs sector

·         Advising on the legal and commercial aspects of distribution of IPRs  between UK, Europe and USA

·         Conducting freedom to operate searches for a number of clients in a range of industry sectors

 

Sale and Purchase of Assets (IPRs)

 

·         Advising and assisting in the sale and purchase of the assets of businesses in particular their IPRs

 

Pharmaceutical and Regulatory Law, Proceeds of Crime, Unauthorised Use of Trade Mark, Counterfeit Drugs, Advertising of Pharmaceutical Products

 

·         Advising a large Pharmaceutical Company on the grounds upon which to challenge a Traditional Herbal Registration;

·         Advising SME on marketing authorisation in relation to its electronic cigarettes;

·         Conducting due diligence for SME and advising SME in relation to Dealing in counterfeit goods, Proceeds of Crime and offence under the Trade Marks Act (unauthorised use);

·         Advising SME on the import of veterinary products into the UK, obtaining the necessary licences and marketing authorisation for veterinary medicinal products;

·         Conducting technical due diligence in relation to the import/export of certain medicines;

·         Conducted a evaluation of patents to determine whether a product would be classed as a medicinal product under the EC Directive and whether a marketing authorisation would be required to sell the product in the UK and the rest of Europe.

·         Acting for a subsidiary of a large European Pharmaceuticals company in the acquisition of pharmaceutical products

·         Advising on the setting up of on-line pharmacies and associated risks

·         Assisting clients with regulatory compliance issues surrounding on-line pharmacies

·         Conducting due diligence in respect of structuring of online pharmacies

·         Assisting clients with legal issues surrounding advertising pharmaceutical products, especially on the Internet

·         Advising clients on setting up pharmaceutical wholesale entities, assisting clients with obtaining pharmaceutical wholesale licences

·         Advising clients on setting up pharmaceutical wholesale entities, assisting clients with obtaining pharmaceutical wholesale  and marketing authorisations

·         Advising companies on the barriers to entry into the UK pharmaceutical and medical device sectors 

 

Internet Law; Internet Dispute

 

·         Advising SME on regarding the use of its name by third parties on the internet and, in particular, the fact that Google is providing the terms 'fraud' and 'scam' as suggested names when you type the SME’s name in the Google box as part of its suggested tool

• Commenced Proceedings for two separate cases in the High Court to recover damages in an Internet law case in respect of breach of contract and wrongful retention of data and database. The case was successfully settled
• Advising and assisting a number of online businesse 

 

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