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The current edition of the module guide was published in 2017.

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PKP=bìêçéÉ~å=råáçå=äÉÖáëä~íáçå=
Following the referendum held on 23 June 2016, the future
relationship between the United Kingdom and the EU is still uncertain
(including in the area of intellectual property law). Negotiations
between the UK and the other 27 states continue. In the interim, the
laws described in this text will continue to apply as described.

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QKPKN= cáå~ä=áåàìåÅíáçåë=
The module guide emphasises that ‘even a final injunction is
discretionary in nature’ (p.43). A good illustration of the application of
this discretion is provided by Edwards Lifesciences LLC v Boston Scientific
Scimed Inc [2017] EWHC 755 (Pat). In that case, the use of a particular
heart valve in medical procedures was held to infringe a valid patent.
However, if a final injunction on the use of the valve had been granted
immediately, there would have been a risk to the health of a small class
of patients for whom the valve at issue was the only one available for
use. In such circumstances, it was held that the public interest might
not be served by the grant of an immediate final injunction.

`Ü~éíÉê=RW=_êÉ~ÅÜ=çÑ=ÅçåÑáÇÉåÅÉ==
RKRKN= aáëÅäçëìêÉ=áå=íÜÉ=éìÄäáÅ=áåíÉêÉëí=
In Brevan Howard Asset Management LLP v Reuters Ltd [2017] EWCA
Civ 950, the Court of Appeal considered the circumstances in which the
public interest defence would apply in a claim for breach of confidence.
The claimant was a hedge-fund manager and the defendant was a
news agency which planned to publish information originating from
the claimant. The claimant brought proceedings for breach of
confidence and the judge at first instance awarded an injunction
restraining the defendant from disclosing the contested information.
The Court of Appeal upheld Hacon J’s decision, approving his approach
to the public interest defence, which had relied on the Court of
Appeal’s earlier judgment in Associated Newspapers Ltd v HRH Prince of
Wales [2006] EWCA Civ 1776. In HRH Prince of Wales, the Court of

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Appeal had considered the test for the application of the public interest
defence in a claim for breach of confidence (a pure claim for
interference with privacy). It had held that, in considering this issue,
the question was not simply whether or not the information was a
matter of public interest, but whether, in the circumstances, it was in
the public interest to breach the duty of confidence. In Brevan Howard
Asset Management the importance of maintaining confidentiality in
such financial information had been a significant factor for the judge to
take into account in assessing the proportionality of any order to
restrain the disclosure of the information at issue.

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TKNKO=aê~ã~íáÅ=ïçêâ=
The module guide notes that the format for a TV game show was held
not to constitute a dramatic work in Green v Broadcasting Corp of New
Zealand [1989] RPC 700. Green was considered recently in Banner
Universal Motion Pictures Ltd v Endemol Shine Group Ltd [2017] EWHC
2600 (Ch). In Banner, Snowden J held that a ‘format’ for a television
programme might be protected if it had certain characteristics. As a
minimum,
(i) it would have a number of clearly identified features
which distinguish the programme in question from others of a
similar type; and (ii) those distinguishing features would have
to be connected with each other in a coherent framework
which could be repeatedly applied so as to enable the
programme to be reproduced in recognisable form. ([44])
In Banner, it was suggested that the claim in Green did not have these
characteristics and was unsuccessful as a result.

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UKOKQ=`çããìåáÅ~íáçå=íç=íÜÉ=éìÄäáÅ=
In (C-527/15) Stichting Brein v Wullems (‘Filmspeler’), the CJEU
considered the boundaries of the concept of ‘communication to the
public’ once again. You will remember that the Court has already
considered whether ‘linking’ to a copyright work can be considered a
communication to the public in (C-466/12) Svensson and (C-160/14)
GS Media. In Stichting Brein, the Court built on this jurisprudence in
holding that the distribution of a media player with pre-loaded links to
websites that carried infringing materials was itself a communication to
the public for the purpose of the Information Society Directive (Art 3).
This finding extends the scope of the right of communication of the
public because in GS Media the link under consideration was a link to a
specific infringing works. However, in Stichting Brein, the links were to
websites which habitually carried unspecified infringing works.
= =

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`Ü~éíÉê=VW=aÉëáÖåë=
VKRKN=qÜÉ=ÇÉÑáåáíáçå=çÑ=ÇÉëáÖå=êáÖÜí=
As noted in the module guide, the Intellectual Property Act 2014
amended the definition of the protected form in the law of
unregistered designs under the CDPA. The Act removed the reference
to ‘any aspect’ of an article or a part of an article in the definition set
out in s.13. It has been suggested that the distinction between ‘parts’ of
an article (which can be protected) and ‘aspects’ of an article or of part
of an article (which cannot be protected post- Intellectual Property Act
2014) is that ‘parts’ must have a concrete quality and ‘aspects’ are
claims to ‘disembodied’ designs. In Neptune (Europe) Ltd v Devol
Kitchens Ltd [2017] EWHC 2172 Carr J stated that:
This raises the subtle question of the difference between
‘parts’ and ‘aspects’ of a design. In my view, aspects of a
design include disembodied features which are merely
recognisable or discernible, whereas parts of a design are
concrete parts, which can be identified as such. Returning to
the example of Laddie J in Ocular Sciences, aspects of the
design of a teapot could include the combination of the end
portion of the spout and the top portion of the lid, which are
disembodied from each other and from the spout and lid.
They are not parts of the design. ([44])
An interesting question has also arisen as to whether or not the
changes made in the 2014 Act were intended to be retrospective. In
Neptune (Europe) Ltd it was held that the amendment was not
retrospective. Causes of action based on the broader definition of
‘design’ which had accrued prior to the coming into force of the 2014
Act were not extinguished. However, claims of infringement based on
activities taking place after that date were to be assessed under the
revised law, even where a design had been created prior to the
coming into force of the Act (see Neptune (Europe) Ltd [29]–[42].
Negative criteria excluding design right
It has been suggested that the exclusion of ‘methods or principles of
construction’ will be relevant less frequently following the coming into
force of the 2014 Act because designs expressed at a high level of
generality are, in any event, much more likely to be held to fall outside
the definition of ‘design’ as redrafted. However, the exclusion of
methods or principles of construction under s.213(3)(a) is not
completely redundant:
…I do not believe that this approach to the law
renders s.213(3)(a) otiose. There will be rare cases in which
there is only one way to achieve a method and principle of
construction and that is by using the specific design of the
article in relation to which design right is claimed. Bailey (t/a
Elite Angling Products) v Haynes (t/a RAGS) [2007] FSR
10 was an example. It concerned design right in a design of
micromesh which was made into bags to be filled with fish
bait, used by anglers. The claimants claimed design right in
the specific design of their mesh, nothing more. HHJ Fysh QC
SC held that the design right claimed would nonetheless
inevitably cover a method or principle of construction. (Action

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Storage Sys Ltd v G-Force Europe.com Ltd [2017] FSR 18, per
Hacon HJJ)

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In Action Storage Systems Ltd v G-Force Europe.com Ltd [2017] FSR 18
HHJ Hacon considered the appropriate approach to excluded
elements in the assessment of infringement, concluding that:
On balance, it seems to me that the legislature intended the
comparison to be made between those features in the
claimant’s design in which design right subsists and which are
therefore relevant to the second step assessment, and only
those. Features to which s.213(3) applies should be
disregarded when considering infringement
under s.226…Once features are excluded from consideration
under s.213(3) there may arise a question whether what
remains is still a design of the article or the part of an article
as claimed in the pleading. ([77]–[78])
This situation was to be contrasted with the treatment of
‘commonplace’ aspects of an article otherwise protected by design
right:
By contrast, s.213(4) applies to designs as a whole, whether
of an entire article or of part of an article. It is not concerned
with features of a design. If the claimant’s design as a whole
is not commonplace, it is not deprived of design right
protection under s.213(4). This is true irrespective of whether
some or even all the features of the design are individually
commonplace. Therefore infringement should be determined
by reference to the whole design including any commonplace
features. This appears to have been the approach taken by
Aldous J in C&H Engineering v F Klucznik & Sons Ltd (No.1)
[1992] FSR 421, at pp.428–429. Likewise, the assessment
carried out in the second step will take into account not just
original features (in the copyright sense) but also any features
that have been found, or admitted, to lack originality. ([79])

`Ü~éíÉê=NOW=oÉÖáëíê~íáçå=çÑ=íê~ÇÉ=ã~êâë=
NOKPKO=^ÄëçäìíÉ=ÖêçìåÇëW=ÖÉåÉê~ä=éêçîáëáçåë=
The proviso to s.3(1)
The module guide explains that a mark will not be refused registration
under s.3(1)(a)–(d) where it has acquired distinctiveness through use
before the application date. The circumstances in which distinctiveness
will be acquired have been considered by the CJEU in a number of
cases (see, for example, (C-108/97 & 109/97) Windsurfing Chiemsee
and (C-353/03) Société de Produits Nestlé SA v Mars UK Ltd. This
sequence of cases also includes (C-215/14) Société de Produits Nestlé SA
v Cadbury UK Ltd, in which the Court was concerned with a claim to
register the well-known four-finger shape of a chocolate bar as a trade
mark. The guidance provided by the Court of Justice in that case was
somewhat unclear in some respects and has had to be closely construed
in subsequent proceedings in the domestic courts in England and
Wales. In Société de Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA

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Civ 358, the Court of Appeal provided more detailed guidance on the
approach to acquired distinctiveness; in so doing upholding the
Hearing Officer’s refusal to grant registration to the mark at issue.
Drawing on the CJEU’s jurisprudence, the Court of Appeal held that an
inherently non-distinctive mark will only acquire distinctive character
where a significant proportion of the relevant class of consumers come
to perceive goods designated by the mark as originating from a
particular undertaking. The mark did not have to be used on its own.
Use of the mark could be in conjunction with other marks and signs (as
in this instance), where the four-fingered shape of the bar was not
apparent until the bar’s wrapper was removed. It was not sufficient for
an applicant to show that a significant proportion of the relevant public
recognises the mark and associates it with the applicant’s goods or
services. However, at the other end of the spectrum, it was unnecessary
for an applicant to show that the public has actually come to rely on
the mark as an indication of origin. Nevertheless, such reliance would
clearly indicate that the mark had come to serve to designate goods or
services as originating from a particular commercial source. The Court
of Appeal held that, in the case of the application to register the shape
of the four-fingered Kit-Kat bar, the Hearing Officer had not mis-
directed himself in finding that the shape had not acquired
distinctiveness. The evidence suggested only that the public had come
to associate the mark with the product at issue, rather than to perceive
the shape of the bar as indicating goods from a single trade
undertaking.

NOKQKP=mêáçê=íê~ÇÉ=ã~êâ=êÉÖáëíê~íáçåë=
The meaning of confusion
Where the use of a protected mark gives rise to a risk that an average
consumer could believe that the business of the mark’s proprietor is
connected with the business of the undertaking using the mark,
‘likelihood of confusion’ would be established (‘indirect confusion’ in
the terminology applied in the module guide). In BMW v Technosport
London Ltd [2017] EWCA Civ 779, such indirect confusion was held to
have arisen in practice. The defendants were in the business of
repairing and maintaining cars, predominantly cars manufactured and
distributed by the claimant, BMW. The defendant used the ‘BMW’ word
mark in the course of its business. The Court of Appeal held that the
particular use of that mark in this instance went beyond simple
descriptive use and created a risk that the average consumer would
think that the two businesses were linked.

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NPKPKN=qê~ÇÉ=ã~êâ=ìëÉ==
Consumer perception
In this section, the module guide discusses the problem of Google’s
‘adwords’ programme, under which businesses bid for keywords
(sometimes including marks and signs belonging to their competitors).
The Court of Justice has already provided guidance on the application
of trade mark law in such cases (see (C-236/08) Google France v Louis
Vuitton and (C-323/09) Interflora Inc v Marks & Spencer plc). In
Victoria Plum Ltd v Victorian Plumbing Ltd [2016] EWHC 2911 (Ch),

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Carr J considered a claim of infringement based on the defendant’s bid

on the claimant’s registered trade marks. It was held that the
defendant’s advert did not enable normally informed and reasonable
internet users, or enabled them only with difficulty, to ascertain
whether the goods and/or services advertised originated from the trade
mark’s proprietor (or from a business that was economically linked to
the trade mark proprietor).

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There is no defence of ‘honest concurrent use’ under either the Trade
Marks Directive or the Regulation. However, according to Carr J in
Victoria Plum Ltd v Victorian Plumbing Ltd [2016] EWHC 2911 (Ch),
‘any rational system of registered trade marks has to cater for the
situation where two traders have co-existed, using trade marks which
have caused confusion, for many years.’ He noted that this had been
confirmed by the CJEU in Budejovicky Budvar NP v Anheuser-Busch Inc
(C-482/09); [2012] RPC 11 and summarised the principles arising
from that, and subsequent, cases:
(i) Where two separate entities have co-existed for a long
period, honestly using the same or closely similar names, the
inevitable confusion that arises may have to be tolerated. (ii)
This will be the case where the trade mark serves to indicate
the goods or services of either of those entities, as opposed to
one of them alone. In those circumstances, the guarantee of
origin of the claimant’s trade mark is not impaired by the
defendant’s use, because the trade mark does not denote the
claimant alone. (iii) However, the defendant must not take
steps which exacerbate the level of confusion beyond that
which is inevitable and so encroach upon the claimant’s
goodwill. ([74])
On the facts of Victoria Plum Ltd itself, the defendant could not take
advantage of any ‘honest concurrent use’ principle because it had been
using the claimant’s mark, rather than its own mark, in bidding for
keywords.

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NTKPKN=`çãéÉåë~íáçå=ïÜÉêÉ=íÜÉ=ÉãéäçóÉê=çïåë=íÜÉ=é~íÉåí=
The Patents Act 1977 provides that an employee may, in certain
circumstances, be awarded compensation for a patented invention of
which he or she is the inventor but not the owner (as a consequence of
the operation of s.39(1)). Under s.40(1) such compensation is to be
paid where the invention, or the patent for the invention, is of
‘outstanding benefit’ to the employer and where it is just for an award
of compensation to be made. In Shanks v Unilever plc [2017] EWCA Civ
2, the Court of Appeal considered (i) the calculation of the benefit
arising to the employer and (ii) the meaning of ‘outstanding’ in this
context. On (i), the Court of Appeal stated that neither the ‘time value
of money’ (i.e. the fact that the benefit is received some years before
the hearing into an award of compensation) nor the fact that any
financial benefit applicable to the patent or invention is taxed in the
employer’s hands, should be taken into account in assessing the sum of
the employer’s ‘benefit’ for the purpose of s.40(1). On (ii), the Court

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held that the Hearing Officer who decided the case in the first instance
had not erred in law in concluding that the benefit that Unilever had
received from Professor Shanks’s invention (£24.5 million) was not
‘outstanding’ in this instance. It was clear that considerable significance
had been placed on the size and nature of the employer’s business.
However, the Hearing Officer had, nevertheless, applied a
multifactorial approach, as required under the statute. He had not
applied a simplistic ‘too big to pay’ approach in seeking to establish
whether Unilever had gained an ‘outstanding benefit’ from the
invention. This case further illustrates the considerable difficulties
which employees (particularly employees of large corporations) face in
seeking compensation under s.40. As acknowledged by Briggs LJ in his
judgment in Shanks:
…[T]his does appear to be a case in which the sheer size of
the employer’s undertaking was, at the end of a careful and
balanced analysis by the hearing officer, the key factor in his
conclusion that the benefit which Unilever derived from
Professor Shanks’ invention was not ‘outstanding’ within the
meaning of that word in s.40(1) of the 1977 Act. It may be
going too far to say that Unilever was simply ‘too big to pay’,
but there is no escaping the fact that Professor Shanks might
well have succeeded had his employer had a much smaller
undertaking than did Unilever.

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NUKR=fåíÉêéêÉí~íáçå=çÑ=é~íÉåí=Åä~áãë=
bëëÉåíá~ä=êÉ~ÇáåÖ=
Cases: Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48; Catnic
Components v Hill & Smith [1982] RPC 185; Improver v Remington
[1990] FSR 181; Daily v Berchet [1992] FSR 533; Wheatley (Davina) v
Drillsafe Ltd [2001] RPC 133; Kirin Amgen Inc and others v Hoechst
Marion Roussel Ltd [2005] 1 All ER 667.
Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48
This important judgment of the Supreme Court revisited the
methodology to be applied by United Kingdom courts in the
interpretation of patent claims in cases of alleged patent infringement
through the manufacture or use of a variant of the invention. The
materials on the interpretation of patent claims are to be found in 18.5
of the module guide. In that section, it is explained that the approach
to the interpretation of claims must take into account the Protocol to
Art.69 of the European Patent Convention. As amended by EPC 2000,
this Protocol reads:
Article 1
General principles
Article 69 should not be interpreted as meaning that the
extent of the protection conferred by a European patent is to
be understood as that defined by the strict, literal meaning of
the wording used in the claims, the description and drawings
being employed only for the purpose of resolving an
ambiguity found in the claims. Nor should it be taken to mean

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that the claims serve only as a guideline and that the actual
protection conferred may extend to what, from a
consideration of the description and drawings by a person
skilled in the art, the patent proprietor has contemplated. On
the contrary, it is to be interpreted as defining a position
between these extremes which combines a fair protection for
the patent proprietor with a reasonable degree of legal
certainty for third parties.
Article 2
Equivalents
For the purpose of determining the extent of protection
conferred by a European patent, due account shall be taken of
any element which is equivalent to an element specified in
the claims.
In a series of cases (see 18.5.5), United Kingdom courts have
considered the impact of the Protocol (both before and after the
amendment of the Protocol under EPC 2000). In Kirin Amgen Inc v
Hoechst Marion Roussel Ltd [2005] 1 All ER 667 (HL) Lord Hoffmann
examined the question of claim interpretation in detail. He suggested
that courts should focus only on assessing what a person skilled in the
art would have understood the patentee to have meant in using the
language of the claim. In essence, under this approach, the task of
claim interpretation is viewed purely as an issue of linguistic
interpretation. Everything else, including the Protocol to Art.69 and the
Improver/Protocol questions, simply provided guidance to a judge
attempting to make that assessment. In Kirin Amgen, Lord Hoffmann
made it clear that, in interpreting patent claims, decision-makers in the
United Kingdom should not apply a ‘doctrine of equivalents’ (that is, a
doctrine under which a variant outside the wording of the patent claim
could nevertheless be held to infringe that claim on the basis that it is
‘equivalent’ to the claim). In Actavis UK Ltd v Eli Lilly & Co, Lord
Neuberger, with whom the other Justices of the Supreme Court agreed,
moved away from this approach, holding that its single-minded focus
on linguistic interpretation was too narrow and took too little account
of Art.2 of the amended Protocol to Art.69 of the EPC 2000.
Actavis UK Ltd v Eli Lilly & Co concerned a Swiss-type claim for a drug
patent (see ‘Methods of treatment’ in 16.2.2). Eli Lilly held a
European patent for the use of a particular compound, pemetrexed
disodium (with vitamin B12), in the manufacture of a medicament for
the treatment of cancer. The claimant (Actavis), which is a supplier of
generic pharmaceuticals, brought proceedings for a Declaration that it
would not commit direct infringement of this patent (under s.60(1)
Patents Act 1977) in marketing products containing other pemetrexed
compounds. Under an approach based purely upon linguistic
interpretation, it was difficult to see how there could be direct
infringement of a claim which made such specific reference to the
particular compound in this instance. It was therefore not surprising
that, in relation to direct infringement, both Arnold J at first instance
and the Court of Appeal, in following Kirin Amgen, had found no
infringement.

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In reversing this conclusion, Lord Neuberger held that, in considering

an allegation of infringement by a variant, two successive questions
should be considered. In both instances, these questions were to be
considered through the eyes of the notional skilled addressee. First, it
was necessary to ask whether the variant infringed the claim at issue as
a matter of interpretation. If it did not, it was then necessary to ask
nevertheless whether the variant infringed because it varied from the
claimed invention in a way or ways which were not material (or, in
other words, because the variant was equivalent to the claimed
invention). In approaching this second question, Lord Neuberger held
that the Improver/Protocol questions that had previously been
employed by United Kingdom courts remained useful, but required
slight amendment. As adjusted, the questions required a decision-
maker to consider (i) whether the variant has a material effect on the
way in which the invention works; (ii) whether the notional addressee,
on being told what the variant does, would consider it obvious that it
achieved substantially the same result in substantially the same way as
the invention; and (iii) whether the notional addressee would have
understood from the language of the claim that the patentee intended
that strict compliance with the primary meaning was an essential
requirement of the invention. On this approach, Actavis’s product was
not held to infringe at stage one. However, it was held to infringe at
stage two. On this basis, it was held that the claimant’s activities would
infringe Eli Lilly’s patent.
In confirming a doctrine of equivalents or variants in accordance with
Art.2 of the Protocol, Actavis UK Ltd v Eli Lilly & Co brings the United
Kingdom much more closely in line with other members of the EPC
2000. At the risk of sowing some uncertainty, the judgment will
provide an expansion in the scope of patent protection that will be
welcomed by right-holders.