Locations
snIPpets – January 2013
Trade Marks
- Court of Appeal restricts the use of witness gathering exercises in trade mark infringement cases
- Warning for owners of trade marks with a "figurative figleaf of distinctiveness"
- Advocate General advises that registering a CTM should not be a defence to infringement
- 3-D Scrabble Tile: not a sign capable of graphic representation
- Use of a different form of trade mark can still be genuine use
- Yoghurt is Yoghurt
- China trade Mark Practice Note – Retail Services
Copyright
- Extra-Time at the High Court
Database rights
- English Court takes jurisdiction over another database infringement case
Designs
- The Informed User can have an imperfect recollection
Internet
- You don't own my email!
Patents
- English Court flexes its muscles on declarations of non-infringement
- Proposal to make clinical trials less risky and online drug sales safer
- Court of Appeal confirms invalidity of patent for EXELON because it was obvious to resolve racemate using standard techniques
Patents / Competition
General
- The MBE Course: Fieldfisher meets budding entrepreneurs
- What to watch out for in 2013
- Other News
In our last edition of SnIPpets, we reported on the Court of Justice of the European Union ("CJEU") decision in Football Dataco v Sportsradar - C173/11. This confirmed that sui generis database rights under Directive 96/9/EC ("Database Rights") might be infringed by operations uploading data onto servers located outside of the jurisdiction, if there is an intention to target the public within the jurisdiction and the database contents are accessed by users there.
The CJEU specifically stated that, where a party uploads data from a protected database onto a web server located in one Member State A and sends that data to a user's computer located in another Member State B, there is an infringing act of "re-utilisation". That act takes place, at least in Member State B, where there is evidence that the act discloses an intention to target members of the public in Member State B.
SMI Group Ltd v. Levy and others [2012] EWHC 3078 (Ch), 9 October 2012.
The English Court recently considered jurisdiction in another dispute involving an alleged infringement of a Database Right. The Claimant company, SMI, arranged worldwide conferences on defence and security issues and operated a password-protected database containing client contact details from its server based in Manchester. SMI claimed that two of its ex-employees had remotely extracted commercially valuable and confidential information from its server and database and used it "extensively" to arrange a competing conference in Singapore at the same time as one organised by SMI.
The defendants claimed that the English Courts did not have jurisdiction to hear the dispute because there wasn't a sufficient connection with the UK, there being no infringement taking place here. SMI claimed that the English Courts should hear the case because the harmful event was occurring in the UK.
Decision
Ms L Anderson QC sitting as a Deputy Judge of the High Court thought the English Court could take jurisdiction of the dispute on the basis that an infringing "extraction" or "re-utilisation" of the database contents might have taken place in the UK.
The decision was given shortly before the CJEU gave its judgment in the Football Dataco case. However, the judge specifically noted the Advocate General's earlier opinion that a database infringement might occur in all places where an act in the chain of re-utilisation occurs. Accordingly, this specifically envisages an infringement in more than one place. In the current case, it was arguable that there was an infringing 'extraction' or 'reutilisation' in England. This was because the server was in the UK and the information was taken from the server in the UK even though the defendants were in Singapore at the time and the information was used there. In line with the Advocate General's opinion, there was also a possibility that the database infringement was occurring elsewhere in the chain of re-utilisation or extraction.
Comment
The facts of SMI are ultimately the reverse of Football Dataco with the server being located in the UK and the information apparently being sent elsewhere. The CJEU specifically noted that each case needs to be determined on its facts. As such, it will be interesting to see how the English Court will apply the CJEU Football Dataco ruling when the substantive case is decided. In particular, this will be an opportunity for the Court to interpret the wording 'at least' and whether there can be an infringing extraction or re-utilisation where the server is located, as well as where the information is targeted.
James Martin, Director and Beverley Potts, Senior Associate (PSL) in the IP protection & enforcement Group at Field Fisher Waterhouse LLP.