is a Partner at Bond Dickinson. Patrick has practiced both in the UK and overseas in contentious and non-contentious intellectual property law for 30 years and is recognized by the Legal 500 and Chambers as an expert and leading individual. Actively engaged in the sector, he sits as a Council Member for the UK for the Licensing Executives Society International, the global technology transfer forum and is also a past chairman of the Parallel Imports Committee of the International Trademarks Association.
For more information, or to contact Patrick, please visit his Firm Profile Page.
The UK Supreme Court recently addressed the extent to which under the European Patent Convention 2000 (“EPC 2000”), a patentee may obtain protection against products or processes that are not covered by the literal meaning of the claims. In doing so, the UKSC modified what had been previously seen as the established approach of the UK courts towards ‘equivalents’. In particular, while not disapproving the test, the Court has chosen to reformulate the three “Improver” questions that, since 1990, have been in common usage for aiding determinations as to what might constitute patent infringement… The UKSC has concluded that subsequent to the Improver decision, which was then reinforced by the judgment in Kirin-Amgen, there has been a tendency by the UK courts to place “..too much weight on the words of the claim…” and what the patentee might have anticipated or intended. Instead, the UK courts should have focused on whether, on a basis of fact and expert evidence, the variant is a true equivalent of the invention as described in the patent.
In a unanimous decision, the Court of Appeal has upheld the High Court’s ruling involving Nestlé’s attempt to register a four-finger bar shape as a trade mark in the United Kingdom, meaning – at least for now – it remains unregistered.
The General Court of the Court of Justice of the European Union (CJEU) has dismissed an appeal from the unsuccessful application by Arrigo Cipriani (Arrigo) to have Hotel Cipriani’s EU trade mark (EUTM) for CIPRIANI, registered for hotel services among other things, declared invalid on the grounds that (i) it was registered in bad faith and (ii) that, under national Italian law, Arrigo had a prior right to that name… The CJEU affirmed the test for bad faith and the principle that extending the protection of a national mark by registering an EUTM is part of an undertaking’s normal commercial strategy. The fact that the Registrant had an earlier, identical national mark, which Arrigo did not oppose or object to, contributed to the finding that there was no bad faith. In any case, bad faith remains a high threshold to prove and if owners have EU national rights, which were never challenged by the invalidity applicant, this could further add to the difficulty of proving bad faith by the registrant.