Intellectual Property Law (LLB Academic Unit)

# Intellectual Property Law (LLB Academic Unit) — Topic Notes

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## 1. Confidential Information & Breach of Confidence

### The Classic Three-Part Test
The cause of action for breach of confidence requires: (1) the information has the necessary quality of confidence; (2) it was communicated in circumstances importing an obligation of confidence; (3) there was an unauthorised use to the claimant's detriment. This test derives from *Coco v AN Clark (Engineers) Ltd* [1969] RPC 41 (Megarry J) — a foundational case not yet indexed in this corpus but universally cited.

### Springboard Doctrine
Where a former employee or competitor has used confidential information to gain an unfair commercial head-start, the court may grant a "springboard injunction" to neutralise that advantage — even after the information has entered the public domain. The injunction lasts only as long as the defendant would otherwise enjoy the springboard benefit.

**AMOB Machinery Ltd v Andrew Smith-Hughes & Ors** [2022] EWHC 1410 (QB): A machine-tool manufacturer sought interim springboard relief against a former employee (Smith-Hughes) and his new employer (VLB Group UK Ltd). The claimant alleged Smith-Hughes copied and removed confidential company documents during his employment. The court examined whether springboard relief, a forensic IT investigation, and delivery-up of documents should be granted against all three defendants. The case illustrates how springboard doctrine operates in a commercial B2B context where confidential technical and client information was allegedly misappropriated.

**Aquinas Education Ltd v Miller & Ors** [2018] EWHC 404 (QB): Recruitment consultants left Aquinas, a specialist teacher-placement agency, and set up a competing business, taking confidential records of schools and teachers. The court considered: (a) the proper approach to interim springboard injunctions; (b) what information was taken and whether it was confidential; (c) how long the springboard benefit persisted. This is a leading modern authority on the springboard doctrine in an employment context.

### Trade Secrets (Enforcement etc) Regulations 2018 (SI 2018/597)
These Regulations (implementing EU Directive 2016/943) create a statutory definition of "trade secret" and dedicated civil remedies including injunctions, damages, and destruction orders. They sit alongside the equitable action for breach of confidence. Key requirement: the information must be secret, have commercial value by reason of its secrecy, and the holder must take reasonable steps to keep it secret.

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## 2. Copyright

### Subsistence and Typographical Arrangement
Copyright under CDPA 1988 s.1 subsists in qualifying works including literary, dramatic, musical, and artistic works, and — separately — in the typographical arrangement of published editions.

**Newspaper Licensing Agency Ltd v Marks and Spencer plc** [2001] UKHL 38: M&S subscribed to a press-cutting service and made further internal photocopies of articles. The House of Lords held that such further copying does **not** infringe the NLA's **typographical arrangement** copyright. The typographical copyright protects the publisher's arrangement of text and images on the page, not the underlying literary works. The decision clarifies that typographical and literary copyrights must be assessed separately. The NLA held typographical copyright; it did not hold or enforce the literary copyrights belonging to individual authors.

### Artistic Works — Sculpture vs Functional Articles
**Lucasfilm Ltd v Ainsworth** [2011] UKSC 39: Ainsworth manufactured the original Imperial Stormtrooper helmets for the 1977 Star Wars film and later sold replicas commercially. The Supreme Court held that the helmet was a "work of artistic craftsmanship" inquiry turned on whether it was primarily utilitarian (a costume/prop) or an independent sculpture. The Court held the helmet was a **prop** — its primary purpose was functional (to be worn as a costume) rather than artistic — and therefore it did not qualify as a "sculpture" or "work of artistic craftsmanship" under CDPA 1988 s.4. Lucasfilm succeeded on US copyright but not UK copyright. The case is the leading authority on the boundary between functional design and artistic copyright in three-dimensional objects.

### Copyright in Artistic Works — Authorship and Employment
**ATB Sales Ltd v Rich Energy Ltd & Anor** [2019] EWHC 1207 (IPEC): ATB Sales, a bicycle manufacturer, owned copyright in a stag's head logo designed in December 2008 by its employees Farrant and Morgan **in the course of their employment** (CDPA 1988 s.11(2)). Rich Energy's logo used a near-identical stag's head device commissioned from a design agency. The court held that copyright subsisted in ATB's logo as an original artistic work, that ATB (as employer) was the owner, and that Rich Energy's logo was a reproduction of a substantial part. Infringement was found under CDPA 1988 ss.17, 18, and 20 (reproduction, issuing copies, and communication to the public through website use and the Formula 1 branding). The case also addresses **secondary infringement** via the F1 car livery.

### Copyright in GUI and Software
**THJ Systems Ltd v Sheridan** [2023] EWHC 927 (Ch) (affd [2023] EWCA Civ 1354): Mitchell, sole director of THJ, wrote options-trading software (OptionNET Explorer) whose graphical user interface (GUI) and on-screen displays were declared by the court to be original **artistic works** in which copyright subsisted, with Mitchell as author and THJ as owner. The Court of Appeal upheld this, addressing the threshold of originality for computer-generated visual displays. The case is important for IP overlapping software functionality and artistic copyright.

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## 3. Passing Off

### The Classic Trinity
Passing off requires proof of three elements (the "classic trinity"): (1) **goodwill** — an established business reputation in the jurisdiction; (2) **misrepresentation** — a false representation (deliberate or not) likely to deceive the public into thinking the defendant's goods/services are those of the claimant; (3) **damage** — actual or likely damage to the goodwill. The foundational authority is *Reckitt & Colman Products Ltd v Borden Inc* [1990] 1 WLR 491 (HL) ("Jif Lemon"), confirmed as the three-part test by the House of Lords.

**Laura Thurgood v Laight & Anor** [2024] EWHC 2947 (IPEC): Ms Thurgood claimed passing off by her former groomer (Ms Laight) who set up a dog-grooming business under the same name "Wash Wiggle & Wag" near Birmingham. The court dismissed the claim because: (a) Ms Thurgood had **not traded sufficiently** under the name to establish goodwill in it (having also used other trading names such as "Scruffy2Fluffy" and "Doggy Style"); (b) it was Ms Laight who had built up personal reputation with clients in the territory. The case demonstrates that goodwill is the threshold element — without it, no passing off can succeed regardless of misrepresentation.

### Extended Passing Off
Where a claimant is a producer within a defined class of goods associated with a distinctive characteristic (e.g., a geographical origin), all producers sharing that goodwill may sue together.

**Diageo North America Inc v Intercontinental Brands (ICB) Ltd** [2010] EWHC Ch 17: Diageo sought to prevent ICB from marketing "Vodka-K" (a cheap vodka) in a bottle design and under branding that allegedly created a misrepresentation that it was a premium vodka. The court addressed, for the first time, whether premium vodka producers could bring an **extended passing off** claim analogous to the champagne, sherry, and advocaat cases. The court considered whether "premium vodka" constitutes a sufficiently defined class with shared goodwill to support extended passing off — exploring the outer limits of the doctrine.

### Trade Mark Infringement and Passing Off — Own-Name Defence
**Bayerische Motoren Werke AG v BMW Telecommunications Ltd** [2019] EWHC 411 (IPEC): BMW AG sued a one-person telecoms contractor who had incorporated a company called "BMW Associates Limited" — claiming "BMW" stood for "Benjamin Michael Whitehouse." The court found **trade mark infringement and passing off**, rejecting the own-name defence. The defendant's name was identical to the claimant's registered mark; despite his good faith, the use was in the course of trade and caused confusion. The case illustrates that the own-name defence (TMA 1994 s.11(2)(a)) applies to an individual's personal name, not necessarily to a company name incorporating those initials where confusion results.

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## 4. Trade Marks

### Registration and Infringement — Google AdWords
**E-Accounting Solutions Ltd v Global Infosys Ltd** [2023] EWHC 2038 (Ch): Advance Track held registered trade marks for "Advance Track" in Class 35 (accountancy outsourcing services). The defendant's marketing consultant added "advancetrack" as a Google keyword and inadvertently included it in live adverts. The court analysed: (a) keyword use as a "use in the course of trade" under TMA 1994 s.10; (b) the impact of the Retained EU Law (Revocation and Reform) Act 2023 on how EU-derived trade mark law (including Google AdWords caselaw) should be applied post-Brexit; (c) the distinction between deliberate keyword selection and inadvertent inclusion in ad text. Important for online infringement and post-Brexit TM analysis.

### Acquiescence — Section 48 TMA 1994
**Industrial Cleaning Equipment (Southampton) Ltd v Intelligent Cleaning Equipment Holdings Co Ltd** [2023] EWCA Civ 1451 (on appeal from [2023] EWHC 411 (IPEC)): ICE (Southampton) held registered UK trade marks for "ICE" in relation to cleaning equipment. The defendant (ICE Holdings, part of an international group) used "ICE" for floor cleaning machines. The Court of Appeal addressed **statutory acquiescence** under TMA 1994 s.48: the proprietor of an earlier mark cannot challenge a later mark's registration or use after five years of acquiescence. The principal issue was when the five-year clock starts running. The appeal raised important questions affecting businesses in competition with similarly-acronymed competitors.

### Well-Known Marks — MERCK Dispute
**KGaA v Merck Sharp & Dohme Corp** [2020] EWHC 1273 (Ch): Following remittal from the Court of Appeal, the court determined whether Merck US had used the word mark "MERCK" in the UK "in the course of trade" in relation to pharmaceutical goods so as to infringe Merck KGaA's UK registered mark No. '545. The case involves parallel brand co-existence in different jurisdictions (Merck KGaA uses MERCK in UK/Europe; Merck US uses MSD), and turns on whether use in the UK was more than de minimis. Relevant to well-known marks, infringement under TMA 1994 s.10, and post-trial quantum of damages.

### Trade Mark + Passing Off + Registered Designs — BMW Alloy Wheels
**BMW v Round & Metal Ltd** [2012] EWHC 2099 (Pat): BMW claimed that R&M's replica alloy wheels (sold as spare parts) infringed BMW's Community Registered Designs under Art. 110(1) of Council Regulation 6/2002 (the repair clause) and also infringed BMW's Community Trade Marks and amounted to passing off. The court's analysis of the **repair/spare parts** exception to design right infringement and the simultaneous TM and passing-off claims is a valuable example of overlapping IP rights.

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## 5. Patents

### Patent Validity — Novelty and Inventive Step
**Technetix BV v Teleste Ltd** [2019] EWHC 126 (IPEC): Technetix held UK Patent No. 2 382 473 B for cable TV signal-splitting equipment. Teleste counterclaimed for revocation on grounds of **lack of novelty** and **lack of inventive step** over cited prior art. Technetix amended the patent unconditionally; the trial was conducted on the amended claims. The IPEC judgment is a clean, accessible illustration of how novelty and obviousness are assessed in a technical patent dispute, including claim construction and the skilled addressee test.

**Facebook Ireland Ltd v Voxer IP LLC** [2021] EWHC 1377 (Pat): Voxer claimed Facebook's "Live" broadcast feature infringed EP(UK) 2 393 259 for telecommunications/multimedia management. Facebook sought revocation for invalidity. The patent was a divisional application; the court addressed: claim construction; added matter on amendment; novelty and inventive step over prior art; and the partial validity jurisdiction under PA 1977 s.63. The case is a modern, high-profile illustration of patent litigation in the tech/software sector including amendment practice.

### Patent Validity — New Use of Known Substance
**Neurim Pharmaceuticals Ltd v The Comptroller-General of Patents** [2011] EWCA Civ 228: Neurim patented specific melatonin formulations for the treatment of primary insomnia. The Court of Appeal considered whether a patent for a **new medical use** of a known, naturally-occurring substance (melatonin) could be valid — despite melatonin itself being unpatentable. The court upheld the patent as valid, affirming that a new therapeutic application of a known compound can satisfy novelty and inventive step requirements, particularly through a second medical use claim. Relevant to pharmaceutical patents and the exclusion under PA 1977 s.4A.

### Infringement and Interim Relief
**Neurim Pharmaceuticals Ltd v Generics UK Ltd (t/a Mylan)** [2020] EWHC Patents 1362 (also [2020] EWHC 3270 (Pat)): Neurim sought an interim injunction to restrain Mylan from launching a generic melatonin insomnia product pending a full trial on validity and infringement. The court refused interim relief, applying the *American Cyanamid* balance of convenience test. The case also involved off-label use — where a pharmaceutical is sold under a label not tied to the patented indication. Important for pharmaceutical patent practice and the intersection of regulatory approval and patent rights.

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## 6. Designs

### Community Registered Designs — Repair Clause
**BMW v Round & Metal Ltd** [2012] EWHC 2099 (Pat): (see above, Trade Marks). R&M relied on the **repair/spare parts exception** under Art. 110(1) of the Community Designs Regulation 6/2002, which allows use of a design to restore the original appearance of a complex product (a motor car). The court's analysis of this defence is the primary UK authority on the repair clause prior to Brexit, and remains instructive given that the UK has retained a domestic version post-Brexit via the Registered Designs Act 1949 as amended.

### Post-Brexit Divergence
Post-Brexit, the UK no longer participates in the EU-wide registered Community design right (RCD). UK designers must now file separately with the UKIPO. The UK has retained a domestic unregistered design right (UDR) under CDPA 1988 Part III (protecting shape or configuration, not surface decoration) alongside a UK supplementary unregistered design right (SUDR) which mirrors the old EU unregistered design right, for a transitional period. The Lucasfilm case [2011] UKSC 39 remains relevant to the boundary between copyright in three-dimensional artistic works and design rights.

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## 7. Overlap Scenarios

A single artefact (e.g., a logo, a product shape, a brand name) may simultaneously attract protection under:
- **Copyright** (if an original artistic work, CDPA 1988 s.1)
- **Registered trade mark** (if distinctive and registered, TMA 1994)
- **Passing off** (if goodwill has been established, regardless of registration)
- **Registered design** (shape or appearance, Registered Designs Act 1949)
- **Unregistered design right** (functional shape, CDPA 1988 Part III)
- **Confidential information** (pre-disclosure of a design)

**ATB Sales v Rich Energy** [2019] illustrates copyright + trade mark overlap in a logo context.
**BMW v Round & Metal** [2012] illustrates registered design + trade mark + passing off in a product-shape context.
**Industrial Cleaning Equipment v Intelligent Cleaning Equipment** [2023] illustrates trade mark infringement + passing off + acquiescence.

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## 8. Key Statutes

| Statute | Principal IP Area |
|---|---|
| Copyright, Designs and Patents Act 1988 | Copyright, moral rights, unregistered design right, performers' rights |
| Trade Marks Act 1994 | UK registered trade marks, infringement, defences (ss.10-11), acquiescence (s.48) |
| Patents Act 1977 | Patentability, grant, infringement, validity |
| Registered Designs Act 1949 (as amended) | UK registered designs |
| Trade Secrets (Enforcement etc) Regs 2018 | Trade secrets |
| Intellectual Property Act 2014 | Design law reforms |

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*Cases cited: [2022] EWHC 1410 (QB); [2018] EWHC 404 (QB); [2001] UKHL 38; [2011] UKSC 39; [2019] EWHC 1207 (IPEC); [2023] EWHC 927 (Ch); [2023] EWCA Civ 1354; [2024] EWHC 2947 (IPEC); [2010] EWHC Ch 17; [2019] EWHC 411 (IPEC) (BMW TM); [2023] EWHC 2038 (Ch); [2023] EWCA Civ 1451; [2020] EWHC 1273 (Ch); [2012] EWHC 2099 (Pat); [2019] EWHC 126 (IPEC); [2021] EWHC 1377 (Pat); [2011] EWCA Civ 228; [2020] EWHC Patents 1362.*