I'm head of intellectual property and head of the China office. I have day-to-day responsibility for managing one of the largest and most successful IP teams in the UK. As an IP litigator I also manage a full workload of patent and trade mark litigation.
Tel: +44 (0)870 730 2853
Services: Intellectual Property
Best brains in ...
Engineering and high-tech patent litigation. National expert on patent entitlement cases. Trade mark and comparative advertisement litigation, handled by the two leading cases in the UK in this area.
Highlight of your career so far?
In terms of client work, the best jobs I have done so far are my two excursions into the European Court of Justice (ECJ), first in the now famous case of Veng v Volvo in 1988 and more recently in a case between two mobile telephone companies - currently on its way to the ECJ for resolution. In terms of Wragge & Co, the highlight would have to be masterminding the merger with Needham & Grant that led to the opening of our offices in Waterhouse Square and the start of our march on the City.
Most challenging job you've ever done?
Cinpres v Melea - the longest running dispute in the English Patents Court - started with proceedings dating back to 1991 and still not resolved 16 years later. A difficult and, at times, highly personal battle between the industry leaders in gas injection moulding. With multi-jurisdictional patent litigation, anti-trust suits, admissions of perjury, two defamation actions, an asset protection scheme akin to something from a Bond movie, life was definitely never boring!
What about outside the UK?
Establishing our office in Guangzhou is my most recent strategic contribution to the firm's progress. I spend 10% of my working time out of the UK these days.
What's your definition of going the extra mile ....... And when have you done it?
Working in the Far East on a regular basis means that I have to meet clients' needs despite a seven-hour time difference. I pride myself on the fact that most of my clients never realise that I am in Hong Kong or China, even if it means I am sat in an office 34 floors up in Guangzhou at 2am in the morning in order to join a conference call.
Best example of a creative legal solution?
Too many to identify! Finding the basis to re-open the seemingly closed Cinpres case in order to admit new evidence and take the matter forward again was my cleverest move. Other tactics I prefer to keep to myself - you never know when I will want to use them again!
When have you ever given a client a real competitive edge?
There is no replacement for actually going to your client's offices to understand how they work and what drives them. In our field you have to understand every aspect of the business - from the creation of the widget on the shop floor to the management strategy that determines where that widget will be sold in five years' time. Given the chance I could turn my hand to carpet manufacture, conservatory roofing, plastic injection molding or floor board laying.
What's your single greatest contribution to Wragge & Co's corporate responsibility?
I am client partner for Oxfam, a pro bono client of Wragge & Co. I regularly play guitar in a band to raise money for various charities.
What's been written or said about you that you're most proud of?
'Gordon Harris leads an "impressively strong" team.' - Legal 500, 2007. Because it's the award-winning team that I have built since 1995 that I'm the most proud of!
Gordon has led the Intellectual Property (IP) team at Wragge & Co for 16 years, building it from a small regional practice to an internationally renouned market leading team. He has over 25 years of experience in Intellectual Property work, handling some of the leading cases in Europe and the UK including:
- Veng (UK) v AB Volvo  4CMLR 122 - a decision of the European Court of Justice which is still one of the leading cases on the interaction of IP and Anti-trust law in the European system
- Ultraframe v Burnden- Patents County Court 2004 and Court of Appeal 2005 (unreported) - Court of Appeal decision on the detailed construction of engineering patents
- SEB v De 'Longhi  EWCA Civ 952- important case dealing with the construction and validity of engineering patents
- BA v Ryanair  FSR 32 - one of the leading cases in the interaction of IP protection and comparative advertising
- O2 v Hutchison3G  RPC 16 - another leading case in the arena of IP and advertising, with a key judgment from the European Court of Justice
- Cinpres v Melea  All ER (D) 165 - the longest running patent case in recent years, going twice to the Court of Appeal before ultimately resolving the ownership of important injection moulding patents
- Dyson v Samsung  All ER(D) 164 - path clearing litigation to invalidate two patents in cyclonic vacuum cleaner technology
- Virgin Atlantic Airways v Premium & others  EWEA 1062- ground-breaking litigation regarding patent construction in aircraft seat technology, still current with a pending Supreme Court hearing listed
- Virgin Atlantic Airways v Delta Airways  EWHC 3094 (Pat) - Summary judgement application based on detailed construction of engineering patents
- Dyson v various - numerous actions in the Chinese courts to enforce Dyson's patent and design rights in its iconic bladeless fan technology
Gordon joined Wragge & Co in 1982, qualifying into the Intellectual Property team in 1984. He was appointed as a partner in 1989 and took over leadership of the IP team in 1995. He led the firm into London with a merger with niche IP firm in Needham & Grant in 2000, and subsequently created the firms first two overseas offices in China and Germany.
He is currently Chairman of the Wragge & Co Partnership Council.
Gordon specialises in all aspects of IP with particular emphasis on engineering, automotive and mobile telephony patents. He has a wide experience of multi-national patent litigation, but has also handled leading trade mark and design cases.
Gordon is one of the most experienced mediators of IP disputes having handled many mediations across the full range of IP rights.
Automotive, engineering, mobile telephony and design
- Mediator accredited by the Centre for Effective Dispute Resolution (CEDR) and the World Intellectual Property Organisation (WIPO)
- University College, London LLB (Hons) ,1978-1981
- Solihull School, 1970-1978
- Associate Member of the Chartered Institute of Patent Attorneys
- Associate Member of the Institute of Trade Mark Attorneys
- Member of the International Trade Mark Association (INTA)
- Member of the Association International de la Proprieté Industrielle (AIPPI)
- Member of The Intellectual Property Law Organisation (TIPLO)
- Wragge & Co representative of the Intellectual Property Lawyers Association (IPLA)
- Member of the Competition Law Association (CLA)
- Member of the China Britain Business Council (CBBC)
- Member of the WIPO Panel of Arbitrators for Domain Name disputes
- Member of the International Chamber of Commerce IP Committee and working party on "The Future of Intellectual Property"
Publications and presentations:
Gordon is a regular speaker on IP related topics around the world - recent examples include:
- Mediation of IP disputes - the Malaysian Bar Association - 2008
- A Review of IP Protection in Europe - A-Star Institute, Singapore 2008
- Mediation of IP disputes - INTA Mid-Year meeting 2009
- Chinese Patent Law in the High Technology Sector - IBC Conference - 2011
- A Review of Chinese IP law - Birmingham University 2011
- European Anti-trust law and IP in practice - the Guangzhou IP Office and the Shenzhen Patent Bureau 2011
- Franchising - A Legal and Commercial Guide - 1994 (second edition published by National Westminster Bank) 1999)
Gordon prepares a well regarded in depth annual review of patent law cases in the UK and European Courts - copies of the papers listed below are avaialble on request:
- The Age of Reason - 1998
- Another Year in the Patents Court - 1999
- The Empire Strikes Back - 2000
- Carry On Patents! - 2001
- A Bridge Too Far? - 2002
- Mucha Ado About Nothing - 2003
- Man Proposes. The House of Lords Disposes - 2004
- If You Can't Stand the Heat... - 2005
- The Perfection of Reason? - 2006
- When is a Patent not a Patent? - 2007
- "The Waters Had Subsided From the Earth" - 2008
- A Touch on the Tiller 2009
- The End of an Era - 2010
- Never Mind the Quality Feel the Width - 2011
English and limited French
Spring brings news of statutory changes to UK copyright law that will extend protection for iconic designs significantly.
The English Supreme Court has said that temporary copies made automatically when browsing the web should not usually infringe copyright. As the issue is of importance to everyone who uses the internet, the court has referred it to the Court of Justice of the European Union (CJEU).
The ongoing trade mark dispute between Interflora and Marks & Spencer has been the focus of several of our earlier alerts as it has already resulted in a handful of judgments.
In a High Court judgment this month, BDO Unibank, the largest bank in the Philippines, successfully used the 'own name defence' in response to infringement proceedings. The proceedings were brought on behalf of the BDO network of accountancy firms which owns Community trade marks for 'BDO'.
The much anticipated decision of the Supreme Court in Schütz v Werit has now been delivered, and has been followed by the usual frenzy of claims of outright victory and far-reaching consequences.
Yesterday, the High Court made a court order requiring BSkyB, British Telecom, Everything Everywhere, TalkTalk, Telefonica and Virgin Media to block access to three hugely popular peer-to-peer file-sharing web sites: H33T, Fenopy and KAT (all based outside the UK). This is big business.
Designs law is an important way to protect your products from the hands of copycats. Here we examine some of the latest developments in this area.
A recent judgment has highlighted the difficulties involved in enforcing descriptive trade marks. It also gave the English Courts another chance to voice their general disapproval of survey evidence and witness gathering exercises.
In a Judgment of HHJ Birss QC in the Patents County Court handed down last week, Bristan Group has been held to infringe Kohler Mira's UK Unregistered Design Right in its Mira Azora electric shower design.
The biggest change in European patenting practice since the European Patent Convention is happening.
Wragge & Co's head of intellectual property, Gordon Harris, has once again delivered his widely anticipated annual review of developments in patent law in the UK courts. Although this has been a quieter year in the Patents Courts, Gordon found plenty of interest.
There have been a number of significant intellectual property case decisions and a new government IP procedure introduced in China. Wragge & Co's China-based intellectual property experts provide an overview of the cases and analyse the latest situation.
The UK Intellectual Property Office (UKIPO) has launched a consultation to amend the UK Patents Act 1977 (PA) to provide an exemption to patent infringement for activities involved in preparing or running clinical or field trials which use innovative drugs.
In the recent Patents County Court (PCC) case of BOS v Cobra  EWPCC 44, HHJ Birss QC considered how capped costs recovery applied in the PCC when the successful party did not win every issue.
The CJEU has provided guidance on whether use of the content of a database protected by the sui generis database right amounts to 'extraction' or 're-utilisation' for the purpose of assessing infringement. It has also confirmed where that use is to be regarded as having taken place.
The Court of Appeal has handed down its judgment in the dispute between Apple and Samsung over the design of three Samsung Galaxy tablet computers. The court upheld the High Court's decision of 9 July that Samsung's products did not infringe Apple's registered community designs relating to its iPad.
Preliminary injunctions in Germany provide a quick and cost effective tool for owners or exclusive licensees of European or German intellectual property rights.
His Honour Judge Birss QC issued his first "preliminary non-binding opinion" on the merits of an infringement action at a case management conference in the Patents County Court earlier in the year.
The Patents County Court (PCC) has successfully established itself as a forum for litigants seeking a specialist and cost effective determination of intellectual property disputes.
The amendment of UK design legislation is a hot topic within the UK Intellectual Property Office (UK IPO) at the moment with the wide ranging consultation on reforming the UK legal framework for designs launched in July of this year.
Forthcoming changes to the Civil Procedure Rules will expand the range of options available in resolving intellectual property disputes for lower value claims.
The operator of surfthechannel.com (STC), a website providing links to film and TV content, recently received a four-year prison sentence. Anton Vickerman became the first person in Britain to be jailed for running a site linking to pirate material.
The recent case of Bayerische Motoren Werke Aktiengesellschaft v Round & Metal Limited and another has provided a useful interpretation of Article 110(1) of the Community Designs Regulation (the Regulation).
The German Federal Court (Bundesgerichtshof, BGH), the highest civil court of last resort in Germany and so with a similar status to the UK's Supreme Court, has handed down two decisions which preserved the validity of a sub-licence upon the termination of the head licence.
Last Friday, Mr Justice Floyd gave judgment in favour of Contour Aerospace (formerly Premium Aircraft Interiors UK) and its customers in the long-running patent dispute with Virgin Atlantic Airways relating to the Solar Eclipse business class seat.
The Community Trade Mark is a unitary EU wide right. If a Community Trade Mark is not put to genuine use "in the Community" within five years from its registration it may be revoked.
The Court of Justice of the European Union has given judgment in the case of Smart Technologies ULC v Office for Harmonisation in the Internal Market (OHIM) dated 12 July 2012.
The EU appears to be moving closer to finally introducing the long awaited unitary patent and Unified Patent Court (UPC).
His Honour Judge Birss QC has offered and provided his first "preliminary non-binding opinion" on the merits of an infringement action at a case management conference (i.e. before any disclosure of documents or exchange of evidence).
Collecting societies and other copyright relevant businesses are operating large scale enforcement campaigns. Before the end of 2012 the creation of the intellectual property "fast track" may make court proceedings a more cost effective part of such campaigns.
Businesses often enter into Confidentiality / Non-Disclosure Agreements to protect their confidential commercial information and technical trade secrets. Such an agreement was tested in a UK court in a case concerning the design of Formula 1 racing cars.
Is a service that streams free-to-air television programmes via any internet enabled device to subscribers, at virtually the same time as they were being broadcast, but without the consent of the owners of the copyright in the works streamed, infringing copyright?
The Court of Justice of the European Union has, in a case concerning football fixtures lists, provided guidance as to when copyright will subsist in a database under the EU Database Directive.
In the case of Slater v Wimmer, The Patents County Court has examined the copyright ownership provisions of the Copyright, Designs and Patents Act 1988 in the context of film making.
Wragge & Co's head of intellectual property, Gordon Harris, has delivered his widely anticipated annual review of developments in patent law in the UK courts. As usual, he expressed strong opinions on a range of issues.
In a case regarding the extraction of data from mobile phones, Arnold J has provided valuable guidance as to when copyright in databases will not subsist. The UK judge has also provided useful guidance relating to the sui generis database right.
In a case concerning a photo of Natascha Kampusch taken before her kidnapping in 1998 the Court of Justice of the European Union has considered the breadth of copyright protection for portrait photographs.
Hard on the heels of Professor Hargreaves' 'Review of Intellectual Property' comes a government consultation on reforming copyright law in the UK. A White Paper with proposals for legislation is to follow in Spring 2012.
HHJ Colin Birss QC has helped resolve two trade mark issues in the High Court.
Last week, new draft regulations were published, controlling advertising in the vicinity of Olympic venues. Brands should take note that contrary to the impression media coverage may have given, the regulations are not just a crackdown on streakers.
In one of its first rulings on substantive Community design law the Court of Justice of the European Union (CJEU) provides guidance on some of the key issues surrounding Registered Community Designs.
Interflora Inc and another v Marks and Spencer plc and another: Court of Justice of the European Union in case C-323/09 - 22 September 2011
In our earlier analysis about the introduction of .xxx domain names we indicated that there was likely to be a Sunrise period in which action could be taken to block such registrations.
Since China still operates a "first to file" system for trade marks and patents, foreign companies with an eye on the Chinese market should apply promptly to register their IP. Added to this, if the need arises, they should be prepared to enforce it.
In July 2011 the English High court ruled that the largest UK Internet Service Provider (BT) should be subject to an order (under section 97A of our 1988 Copyright Act).
In Lucasfilms & Others v Ainsworth the Supreme Court concluded that Stormtrooper masks were not sculptures and did not therefore qualify for copyright protection in the UK as artist works.
The German Federal Supreme Court has held that a Google Adword use by a competitor of the trade mark bananabay did not infringe the trade mark proprietor's rights.
The Court of Justice of the European Union has handed down its judgment in the case of L'Oréal v eBay, and overall it is good news for brand owners.
The Patents County Court judgment in Albert Packaging Limited and others v Nampak Cartons & Healthcare Limited demonstrates that pre-existing designs can assist a defendant significantly in defending an infringement action, so a register of past designs should be maintained.
This year, the first domain names ending .xxx will be made available for "adult" websites. A "sunrise" period, planned to start in early September and to last around 30 days, will allow applicants in the adult industry to secure domain names based on their existing domain names or trade marks.
The Court of Appeal has indicated that referring to infringing acts other than affixing, importing or supplying services under the mark, during without prejudice negotiations to settle a trade mark infringement dispute may constitute an actionable threat.
The UK Patents County Court has been operating under its new rules and under the helm of HHJ Colin Birss QC for more than six months now. The new judge has now heard and given judgment on his second full trial and first summary cost assessment under the new rules.
The European Court of Human Rights (ECHR) handed down its judgment today in the case brought by Max Mosley, former president of the International Automobile Federation.
Yesterday the Court of Justice of the European Union provided some clarification on the wide reach of the Community Trade Mark (CTM).
The Advocate General of the Court of Justice of the European Union (CJEU) has given an opinion which suggests he thinks Marks & Spencer infringed Interflora's trade mark by using it as a Google AdWord.
The Court of Justice of the European Union (CJEU), sitting as a full court, has decided today that the proposed European Patents Court is incompatible with the European Union.
A judgment that was handed down on 11 February 2011, in the high-profile case of Hasbro v 123 Nährmittel and another, is good news for the owners of marks of this nature.
There is still controversy in the patent community over the 2007 decision in Unilin v Berry. Should a company that has been found to infringe a patent which, in later proceedings is found to be invalid, still have to pay the damages ordered in respect of the infringement finding?
The Court of Justice of the European Union (CJEU) has held that Lego's long-contested Community Trade Mark based on the shape of its Lego brick is invalid under Article 7(1)(e)(ii) of the Trade Marks Regulation.
Specsavers has successfully established that Asda infringed its community trade mark for the word "SPECSAVERS" by Asda's use of the tag line "Be a real spec saver at Asda" during its 2009 campaign to promote its in-store opticians.
Many of the proposals to reform the junior Intellectual Property Court of England and Wales (the Patents County Court) put forward by the Intellectual Property Court Users Committee last year will come into effect on 1 October 2010.
The Court of Appeal has upheld the High Court judgment that Intercontinental Brands (ICB) passed off its VODKAT product as vodka and this caused, or was likely to cause, damage to Diageo, manufacturer of the SMIRNOFF brand of vodka.
The Patents Court has considered Yeda Research Development Ltd's appeal from the Comptroller who refused to grant it Supplementary Protection Certificates (SPCs) in respect of its combination treatment for tumours.
Does the sale of a perfume tester bottle bearing the perfume house's trade mark but also a notice that it is "not for sale" infringe the relevant trade mark?
So, the World Cup is almost over. Spain or the Netherlands will be the victors on the pitch, but who has triumphed in marketing terms? The official sponsors, which have paid many millions for the privilege? Or, the companies seeking to develop an unofficial connection by ambush marketing?
The Court of Justice of the European Union (CJEU) handed down its decision on the scope of protection to be afforded to DNA sequence patents.
There has been a dispute concerning whether Medeva BV was entitled to obtain supplementary protection certificates for its whooping cough vaccine.
The US Supreme Court gave judgment on Monday 28 June 2010 in the long awaited Re Bilski case concerning the patentability of business methods.
Numatic was successful in its claim of passing off against Qualtex in respect of Qualtex's vacuum cleaners which mimicked the basic Henry model shape and black bowler hat lid but not its surface decoration (smiley face and red colour ways).
The Court of Appeal has today handed down its long-awaited decision in L'Oreal v Bellure. The decision implements the responses given by the European Court of Justice (ECJ) (as it then was) in June 2009 to questions referred to it by the Court of Appeal.
Floyd J decision in Schütz (UK) Ltd v Werit UK Ltd & Another.
The European Court of Justice (ECJ) has given judgment in four cases concerning alleged trade mark infringement via Google's adwords internet advertising service.
A leading edge patent law hot potato is patents for DNA sequences. It appears that the protection offered by such patents in the EU may be more restrictive than many anticipated.
In the Cipriani SRL & Ors v Cipriani (Grosvenor Street) Ltd & Others case, the English Court of Appeal has provided guidance on what is required for a business located elsewhere to have goodwill in England which is sufficient enough to base a passing off action on.
The ECJ's ruling in the Opel v Autec toy cars case in January 2007 was a landmark in European trade mark law. The case is always referred to whenever the question of whether "trade mark use" is required to establish trade mark infringement arises.
In the Diageo North America, Inc r v Intercontinental Brands case the owners of the famous 'Smirnoff' brand of vodka have succeeded in establishing extended passing off against InterContinental Brands in respect of its Vodkat alcoholic beverage.
The Court of Appeal has found in Eli Lilly and Company v Human Genome Sciences Inc that HGS' patent for a protein called by HGS "Neutrokine-a", antibodies to it and the polynucleotide sequence encoding for it was invalid for lack of industrial application.
A dealer in infringing grey goods sought to have a trade mark proprietor's ability to enforce its rights suspended.
A new Digital Economy Bill is being debated in the UK. It contains provisions designed to tackle online copyright infringement which are proving to be very controversial.
In a judgment, in which he found valid and infringed a mechanical EP(UK) patent relating to foil used in packaging, an English High Court judge has also provided guidance as to establishing infringement or a threat to infringe by way of a test purchase
The Court of First Instance (CFI) has upheld a invalidity finding in relation to CANNABIS as a community trade mark for beer and other goods in classes 32 and 33.
A trade mark infringement claim will often provoke a counterclaim for revocation for five years non-use.
In an opinion which many may find quite political, Advocate General Poiares Maduro has delivered his views to the European Court of Justice (ECJ) in the Google AdWords references.
Microsoft filed a lawsuit against a do-it-yourself PC vendor Beijing Strong Well Future Technology Development in Zhongguancun, accusing it of using pirated Microsoft software.
In this case concerning counterfeit Louis Vuitton bags, the defendants were a couple called Lin Yizhong and Wu Beiwen and Zhong Wen was their trading company.
The European Court of Justice has provided guidance to the national Austrian court on the factors to be considered when determining whether a registration applied for in the knowledge that other very similar marks were being used in the Community.
The Japan Patent Office has reported that the Chinese trade mark authorities, responding to a request from Tokyo, rejected applications to register eight prefectural names in Japan as brands for agricultural and other products.
Guangzhou passes the Measures on Protection of Intellectual Property Rights at Exhibitions in the city's 87th Executive Session of the 13th Administration.
Vestergaard Frandsen A/S and the other claimants (VF) are in the business of the manufacture and sale of mosquito nets under the name PermaNet. They had developed a database relating to the manufacture of these nets referred to as the "Fence" database.
To the surprise of many, Morgan Stanley has just announced a new US$250 million intellectual property securitisation for Vertex Pharmaceuticals, a large US bio-tech company.
Proposals have been put forward by the Working Group set up by the Intellectual Property Court Users Committee to reform the cost regime and procedures of the English Patent County Court.
Sichuan Baijia Food Company, one of the largest instant noodle manufacturers in China, has filed a lawsuit against OKAI Import Export GmbH with the Munich District Court in Germany, asking the court to cancel OKAI's trade mark application.
Six years after its settlement over a trade mark dispute with Hong Kong Crocodile, French designer Lacoste has launched another offensive. The company recently brought a trade mark infringement case before the Beijing No.2 Intermediate People's Court.
IPR2, together with the Ministry of Commerce, will launch a new search tool for IP-related legal texts called China IP Law Search.
Danfoss, a leading player in refrigeration and air conditioning equipments and parts, alleged in court that a refrigeration equipment company in Zhejiang was making products labelled with the Danfoss trade mark.
Search engine giant Google began its formal use of Chinese name (Guge) in 2006 when it established Chinese subsidiary Google China. Just one hour later, a company named Beijing Guge Technology (led by Tian) obtained government approval to be in business.
In an appeal concerning the validity of a patent for an enantiomer of a racemic mixture and a Supplementary Protection Certificate based on that patent and marketing authorisation, the Court of Appeal found both the patent and SPC valid.
In yet another trade mark dispute resulting from Google's AdWord service, the UK High Court has decided to refer a "comprehensive" list of questions to the European Court of Justice before the hearing of the main trial.
In a dispute concerning downmarket fragrances intended to be smell-a-likes for several of L'Oreal's famous perfumes, the European Court of Justice (ECJ) has provided guidance to the UK Court of Appeal which will be welcomed by many brand owners.
In L'Oreal v eBay, the English High Court has held that eBay was not jointly liable for the trade mark infringements committed by several users of its website (named in the action as the fourth to tenth Defendants).
The Stockholm District Court has issued its decision on case B13301-06 regarding the infamous Pirate Bay website. It concerns not only criminal breaches of copyright but also the E-Commerce Directive (2000/31/EC) safe harbour provisions.
Advocate General Sharpston has given her view on the question of whether a community trade mark which had been proven to have a reputation but only in Austria could be considered to have a "reputation in the Community".
Alison Brimelow, President of the European Patent Office (EPO), has entered the fray on the vexed subject of the patentability of software and has referred various questions to the Enlarged Board of Appeal.
A first glance through the Budget - and the 222 pages of notes produced by the Treasury - didn't look promising.
The European Court of Justice (ECJ) has provided guidance, which strengthens the ability of luxury trade mark owners to maintain and enforce a selective distribution network for branded goods.
The English High Court has sought guidance from the European Court of Justice (ECJ) relating to the validity of a Supplementary Protection Certificate.
The US Court of Appeals for the Second Circuit has allowed an appeal by Rescuecom that Google's use of Rescuecom's trade mark could amount to "use in commerce".
Many IP agreements include a clause which specifies certain consequences if material breaches are not remedied after a period of notice. More clarity on this issue has now come from the English High Court.
The right to prohibit extraction and re-utilisation of a substantial part of a protected database was established more than a decade ago by Directive 96/9/EC. The European Court of Justice has only provided guidance on its interpretation in three cases.
The European Court of Justice has confirmed that where a proprietor of a mark affixes that mark to free items that it gives to purchasers of its goods, it does not make genuine use of that mark in respect to the class related to the items.
Mr Justice Lewison has today handed down his judgment in two appeals from the Patent Office. The cases raised similar issues about excluded subject matter.
The House of Lords has today handed down its opinions in the patent revocation battle between Generics and Lundbeck relating to Lundbeck's patent for the (+) enantiomer of citalopram, a leading anti-depressant drug.
The European Court of Justice has ruled on The Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH, 22 December 2008 (C-276/05).
The UK High Court has granted its first-ever award of compensation under section 40 of the Patents Act 1977.
In January 2009, China's National People's Congress finally approved the third amendment of China's Patent Law after more than two years' deliberation.
Advocate General Mengozzi of the European Court of Justice (ECJ) has delivered his opinion on the dispute between L'Oreal and Bellure relating to "smell-a-like" perfumes and "look-a-like" packaging.
KJM Superbikes Ltd v Hinton  EWCA Civ 1280 was an appeal by KJM Superbikes Limited against a decision by Sir Andrew Park in the High Court in which he denied KJM permission to bring proceedings for contempt of court against Mr Anthony James Hinton.
Budejovický Budvar, národní podnik v Office of Harmonization in the Internal Market - with intervener Anheuser Busch Inc. Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06: Decision of the Court of First Instance - 16 December 2008).
In Copad v Dior the Advocate General (AG) has advised the European Court of Justice (ECJ) on whether a licensee's failure to comply with provisions in a trade mark licence may prevent the exhaustion of the owner's rights in the mark.
The Enlarged Board of the European Patent Office has held Wisconsin Alumni Research Foundation's patent application to be contrary to morality for the purposes of Article 53(a) of the European Patent Convention.
The European Commission has delivered its preliminary report on the findings from the Pharmaceutical Sector Inquiry launched in January 2008.
In 2003 the CPDA was amended so as to substantially remove the exemption under which pubs and similar establishments had been publically playing background music via broadcasts without the need for a licence relating to the broadcast sound recordings.
In the case of Automotive Latch Systems Limited v Honeywell International Inc, the Commercial Court provided some guidance on the courts' view on the interpretation of common clauses found in many collaboration agreements relating to inventions.
The Advertising Standards Authority has made it clear that a product or brand name (i.e. ZV Snore Solution Spray) can in itself be misleading and, its use in marketing materials, be in breach of the Committee of Advertising Practice Code.
The German Federal Government has published proposals for reform which have the potential to drastically alter the nature of patent invalidity litigation in Germany.
The Court of First Instance has upheld the opposition by Aventis Pharma SA against Nycomed GmbH's application for the Community trade mark PRAZOL (Case T-95/07).
Against the backdrop of a number of recent European-wide negative decisions in which the validity of Supplementary Protection Certificates (SPC) was in contention, Daiichi's SPC for its Levofloxacin patent has been upheld.
In July this year, Wragge & Co's IP team reported on the German Appeal Court decision on Eli Lilly's patent for the anti-psychotic drug olanzapine.
On 9 October 2008, Servier was ordered to pay generics company Apotex £17.5 million under a cross-undertaking in damages given by Servier, in exchange for the grant of an injunction.
What can you do if you find out a third party has registered a UK company with a name that is identical or similar to your brand name?
Following a preliminary reference from the German courts, the European Court of Justice has given further guidance relating to the Database Directive.
Can charities and other non-profit making organisations safely keep hold of their registered trade marks when they don't use them on any goods they sell or in respect of any services they provide for payment? Are such marks at risk of being revoked?
An interesting development has just hit the European Patent Office (EPO). It concerns the situations in which the EPO will now hear oral witness evidence concerning an alleged prior use.
In a case concerning the costumes of Star Wars characters, the High Court has provided guidance on what articles can amount to "works of artistic craftsmanship" and/or "sculptures".
On 20 June 2001, Cristina Ricci's predecessor in title applied to register the device mark "Stradivari 1715" (the opposed mark) as a Community Trade Mark for goods in classes 14, 16 and 18.
In Eli Lilly v Human Genome Sciences, the English Patents Court sets out guidelines for the first time on the industrial application criteria for patentability (the EPC equivalent to the US "utility" requirement).
The House of Lords has delivered a patent law decision which is likely to be welcomed by innovative companies throughout the UK and the pharmaceutical industry in particular.
In Germany, applications for interim injunctions to prevent alleged patent infringement have until now been rejected by the infringement court if the patent in suit has been revoked by the Federal Patents court at first instance.
There has been a lot of "noise" on the net suggesting that due to the latest criminal case relating to an alleged mod chips related offence.
If a narrow construction of a patent has been made by a court in earlier proceedings, does this mean an infringement action which requires a wider construction to succeed is doomed?
China's State Council released its Compendium of China National Intellectual Property Strategy in June 2008. This is likely to lead to significant changes to the IP system in China.
The European Court of Justice (ECJ) has declined to follow the opinion of Advocate General Mengozzi.
Should applications for trade marks at EU member state registeries all be treated equally? The European Court of Justice will shortly have to consider this issue. Graf von Westphalen have put together an analysis of this important development.
The long-awaited Court of Appeal judgment in the Actavis UK Ltd v Merck & Co Inc patent case has been handed down.
Within its judgment in Generics v Lundbeck, the Court of Appeal has provided important guidance on the judgment of the House of Lords in Biogen v Medeva regarding the enabling disclosure the specification must provide to support the claims in the patent.
The UK High Court has been asked to consider whether by offering keywords to advertisers which are the same as or similar to another's trade mark, Yahoo infringed that mark.
The publisher of the original Dr Who books has been unsuccessful in its claims of copyright infringement against the BBC for its publication of a Dalek Survival Guide. To learn more about the High Court judgment, read our expert analysis.
The rules on charging VAT on electronic services are changing.
After banning its ninth Ryanair advert in just two years, the Advertising Standards Authority (ASA) has referred Europe's largest budget airline to the Office of Fair Trading.
In the context of pan-European patent litigation relating to BlackBerry mobile devices, the Court of Appeal has provided some useful guidance.
Three intellectual property alerts and analyses from Wragge & Co's Intellectual Property team.
In Alfredo Nuno v. Leonci Franquet, the ECJ was asked to consider the provisions of the Trade Marks Directive 89/104/EEC of 21 December 1988 which deal with the effect of an earlier unregistered mark on a subsequent trade mark registration.
Two alerts today, both relating to patents. The first is a reminder of the changes to the UK Patent Act, which will take effect on 13 December in order to implement the EPC 2000. The other concerns a novelty for the UK courts.
Wragge & Co has increased its international IP offering with the appointment of Dr. Caroline Cichon as a new partner in Munich. Caroline joins the firm from Bird & Bird.
Wragge & Co's IP team has triumphed again in the Patents County Court (PCC), this time advising Kohler Mira on a design infringement case against Bristan Group.
Wragge & Co has strengthened its international credentials with the appointment of Munich-based director Ina Gerstberger from Gerstenberg Rechtsanwälte.
Wragge & Co's intellectual property experts have won two high-profile patent disputes in one week.
Wragge & Co's Intellectual Property team has secured victory for two clients, Contour Aerospace Limited and Delta Air lines, Inc in a complex and long-running battle with Virgin Atlantic Airways Limited.
Wragge & Co has appointed Claire O'Brien as new director in its Intellectual Property team. An IP litigator with experience of working in China and Hong Kong, Claire will play a key role in enhancing the team's international presence.
Wragge & Co's IP team has secured a significant Supreme Court result for Contour Aerospace in its high-profile patent case against Virgin Atlantic. The court has awarded Contour the right to appeal a Court of Appeal decision which found it infringed the patent of Virgin's upper class aircraft seat.
Wragge & Co has boosted its international credentials with the appointment of director Tom Carver from Howrey LLP. An experienced IP litigator, Tom will play an integral role in developing the firm's office in Guangzhou, China.
Wragge & Co's Intellectual Property (IP) team has secured a significant victory for global design and engineering business Dyson in a high-profile design rights case.
Wragge & Co's Intellectual Property (IP) team has secured a winning judgment for US airline carrier Delta Air Lines Inc in a high-profile patent case.
Wragge & Co LLP has appointed a new intellectual property partner. Dr. Alexander Bayer becomes a partner in the firm's Munich office on 1 May, taking the total number of partners in Wragge & Co's international IP practice to 10.
Wragge & Co LLP has been named Employment Team of the Year at the Lawyer Awards 2009. The firm triumphed over competition from Cloisters, DLA Piper, Freshfields Bruckhaus Deringer, Linklaters, Osborne Clarke and Russell Jones & Walker to secure the win.
Wragge & Co LLP Intellectual Property (IP) team has been named European High-Tech Law Firm of the Year by Managing Intellectual Property.
Wragge & Co LLP Intellectual Property (IP) team has secured its second victory in one week in the Dyson Technology Limited v Samsung Gwangju Electronics Co., Limited High Court case.
Wragge & Co LLP has been named one of Europe's most innovative law firms in the Financial Times' survey of innovation in the legal profession. The firm was ranked in seventh place in the FT Law 50.
Wragge & Co LLP has boosted its intellectual property practice with the appointment of Alexandra Brodie and Dr Luke Kempton as partners.
Wragge & Co LLP Intellectual Property team has been ranked in the top tier for contentious trade mark work in Managing Intellectual Property's global survey.
Wragge & Co LLP IP team has secured a hard-fought Court of Appeal victory for Cinpres in the long-running Cinpres Gas Injection Ltd v Melea Ltd case.
There are relatively few statutory restrictions on the names that can be used by businesses in the UK. This is certainly true in comparison with the large number of names that cannot be used because they are protected by intellectual property rights.
Never has the commercial value of patents been so well understood in the business community as in recent years.