Posts Tagged: "England and Wales Court of Appeal"

The England and Wales Court of Appeal this morning said that Optis Cellular Technology is entitled to an injunction before a lower court has set fair, reasonable and non-discriminatory (FRAND) terms for a license to Optis’ standard essential patents (SEPs) if Apple refuses to take a court-determined FRAND license. But in a post script to the ruling, Lord Justice Arnold said both Apple’s appeal and Optis’s cross-appeal “illustrate yet again the dysfunctional state of the current system for determining SEP/FRAND disputes” and that the European Telecommunications Standards Institute (ETSI) and other standards development organizaitons (SDOs) should “make legally-enforceable arbitration of such disputes part of their IPR policies” to curb the problem.

The England and Wales Court of Appeal has upheld lower rulings that two patent applications designating an artificial intelligence called DABUS as the inventor were deemed to be withdrawn. (Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374.) However, the three judges were split, with the two patent specialists on the panel taking different views. Dr. Stephen Thaler filed two UK patent applications in October and November 2018 for a “Food Container” and “Devices And Methods For Attracting Enhanced Attention” respectively. Parallel applications have been filed in many other jurisdictions, as reported previously by IPWatchdog.

Followers of European trademark developments will be familiar with the Sky v SkyKick litigation, in which the UK courts and the Court of Justice of the EU have addressed questions concerning trademark invalidity (see IPWatchdog report here). In the latest twist, the England and Wales Court of Appeal has reversed one of the main first instance findings. In its judgment, the Court allowed Sky’s appeal against a finding that its asserted trademarks for SKY were partially invalid due to lack of intention to use amounting to bad faith. The Court ruled that it was essential to determine whether the parts of the trademark registrations which were relied on were or were not applied for in good faith.

One of the specialist IP judges in the England and Wales Court of Appeal, Lord Justice Floyd, retired on February 10, 2021. He had been a Lord Justice of Appeal since 2013 and was previously a judge in the High Court for six years. Lord Justice Floyd wrote many significant judgments in IP cases during his career, and will also be familiar to many readers due to his contributions to events such as the Fordham IP Conference, which he often attended.

The Court of Justice of the European Union (CJEU) has ruled that an EU trade mark (EUTM) proprietor may bring an infringement action in an EU Member State where advertising or offers for sale are directed or located, in a case concerning alleged infringement of an EUTM in the United Kingdom by a Spanish defendant. The judgment in Case C172/18 AMS Neve Ltd, Barnett Waddingham Trustees, Mark Crabtree v Heritage Audio SL, Pedro Rodríguez Arribas addresses questions concerning jurisdiction, in particular in cases involving Internet sales. This litigation concerned infringement proceedings brought regarding an EUTM for “1073” in the UK Intellectual Property and Enterprise Court.