CIVIL PROCEDURE

Intellectual property - anti-competitive practices - infringement - striking out - trade marks - exhaustion of rights - defence of breach of competition law

(1) Sportswear Co Spa (2) Four Marketing Ltd v Sarbeet Ghattaura (T/A GS3); (1) Sportswear Co Spa (2) Four Marketing Ltd v Stonestyle Ltd (2005): ChD (Mr Justice Warren): 3 October 2005



The claimants (S) applied to strike out parts of the defences in two actions concerning the alleged infringement by the defendants (G) of the trade mark of the first claimant.


The first claimant was the owner of the trade mark and the second claimant was the distributor of its clothing in the UK. G was selling clothing bearing the mark, which had had its labels defaced or cut out, or both. S would have been able to deduce from the garment codes on the labels which of its customers the clothing had originally been sold to. The clothing that G was selling was genuine clothing that had been placed on the market in the European Economic Area by S or with its consent. That would normally have had the result by virtue of section 12(1) of the Trade Marks Act 1994 that S would be deemed to have exhausted its rights to prevent any further circulation of the clothing within the European Economic Area.


S objected to the removal of the labels, and with them the garment codes, and took infringement proceedings to prevent the continued sale of clothing by G. G's defence to S's infringement claim included an allegation that the distribution agreement between the claimants was contrary to article 81 of the treaty establishing the European Community (Nice version). S submitted that for an article 81 defence to succeed as a defence to an action for trade mark infringement, it had to be shown that there was some credible nexus between the relief sought in the action and the alleged breach of article 81, and that as there was no sufficient nexus here, those parts of the defences should be struck out.


Guy Tritton (instructed by Wedlake Bell) for the claimants; Hiroshi Sheraton (instructed by McDermott Will & Emery UK) for the defendants.


Held, there was not a sufficient nexus between article 81 and the trade mark infringement alleged, and the parts of the defence based on article 81 were struck out &150; British Leyland Motor Corp Ltd v Armstrong Patents Co Ltd Times, July 2 1984 applied.


G complained about the enforcement by S of the trade mark in circumstances where the purpose of enforcement was to enable S to trace who had supplied their products to G, with the purpose of preventing further supplies. That might or might not be a breach of community competition law. But whether, when carrying out that purpose, S was party to an agreement that happened to infringe article 81 was not to the point in relation to those arguments. If G were right that there was an artificial partitioning of markets, it might have good defences to the infringement actions under community law, but those would be defences that had nothing to do with article 81. If G did not have good defences under community law apart from article 81, article 81 did not give it any.


On that basis, article 81 was irrelevant to the applicability or otherwise of section 12(2) of the Act, which disapplied section 12(1) where there were legitimate reasons for the proprietor to oppose further dealings in the goods where the condition of the goods had been changed or impaired. It was not easy to see how the garment codes themselves or their use could be contrary to article 81. Nor was the instigation of the litigation itself contrary to article 81 &150; Glaxo Group Ltd v Dowelhurst Ltd (2000) FSR 529 and Intel Corp v VIA Technologies Inc (2002) EWHC 1159 (Ch), (2003) FSR 12 considered. Application granted.




Appeals - case stated - judicial review - Court of Appeal's jurisdiction to hear appeal from High Court decision

Alec Geoffrey Farley v (1) Child Support Agency (2) Secretary of State for Work & Pensions (2005): CA (Civ Div) (Lord Woolf, Lord Chief Justice; Lord Phillips of Worth Matravers, Master of the Rolls): 22 June 2005

The applicant (F) sought determination of the issue as to whether the Court of Appeal had jurisdiction in civil proceedings to hear an appeal from a single judge of the High Court who had heard an appeal by way of case stated from a decision of the magistrates' court.


A magistrates' court made a liability order in respect of child support maintenance against F pursuant to section 33 of the Child Support Act 1991. F appealed by way of case stated to the High Court against that order. A single judge of the High Court dismissed the appeal.


Subsequently, F was granted leave to appeal on a paper consideration of the application. In January 2005, the Court of Appeal allowed the appeal and ordered that the liability order made by the magistrates' court should be set aside and the application of the second respondent secretary of state for a liability order be remitted for further adjudication. The Child Support Agency and the secretary of state were granted leave to appeal to the House of Lords on the substantive question considered by the Court of Appeal. Thereafter, the secretary of state was made aware that in accordance with sections 18 and 28A(4) of the Supreme Court Act 1981 the decision of the single High Court judge was final and so no appeal lay to the Court of Appeal from that decision.


The secretary of state contended that in the light of Lord Mayor and the Citizens of the City of Westminster v Horseferry Road Justices (2003) EWCA Civ 1007, (2004) 1 WLR 195, a decision of the High Court on an appeal by way of case stated was a decision that was final and therefore no appeal lay from that decision to the Court of Appeal.


Richard Drabble QC, David Burrows (solicitor-advocate, of David Burrows & Co) for the applicant; Kenneth Parker QC, Tim Ward (instructed by the Solicitor for the Department for Work and Pensions) for the respondents.


Held, in accordance with the decision in Horseferry, the Court of Appeal did not have jurisdiction to hear an appeal from a single judge of the High Court who had heard an appeal by way of case stated from a decision of the magistrates' court, Horseferry applied. However, the court would have had jurisdiction if there had been an application for judicial review and the single judge of the High Court had given his decision, not on an appeal by way of case stated, but on an application for judicial review.


In regarding this case as highly exceptional, and accepting F's undertaking to apply for judicial review, the court would treat that application as having been made, and waive any procedural requirements as to the form of the application. The application would then come before the court as an application for permission to apply for judicial review. Sitting as a court of first instance, the court would grant that permission but refuse the application.


F would then undertake to make an application for permission to appeal from that decision to the instant court. Sitting as an appeal court, the application would be granted and a declaration granted in terms of the January 2005 decision that the Court of Appeal had originally made. Accordingly, F would have a declaration in his favour from the Court of Appeal that overrode the decision of the single High Court judge. That would enable the secretary of state to issue a fresh petition to the House of Lords, to seek leave to appeal to it in respect of the original January 2005 decision made by the Court of Appeal.


In taking that course, if the House of Lords decided to grant leave, the correctness of the reasoning of the instant court, given in its January 2005 judgment, could be examined by the House of Lords and approved or disapproved as appropriate. If leave were refused, the January 2005 Court of Appeal judgment would be available for future guidance for those who had to litigate in that area and who had responsibility for adopting the appropriate practice as to how matters should proceed.


If the January 2005 decision were quashed on the ground that it had been made without jurisdiction, it would nevertheless result in considerable confusion. Rule 52.17 of the Civil Procedure Rules (CPR) 1998 gave the court jurisdiction to take appropriate steps to enable the House of Lords to consider the merits of that judgment. Given the unusual and exceptional circumstances of the case, it was appropriate to reopen the appeal and adopt the ingenious use of procedure. Application granted.






INTELLECTUAL PROPERTY


Foreign proceedings - patents - revocation - validity - invalidity - imposing streamlined procedure set out in Patents Court Guide - direction for speedy trial

Research in Motion UK Ltd v (1) Inpro Licensing Sarl (2) Lextron Systems Inc (2005): PCC (Mr Justice Laddie): 16 June 2005


The applicant (R) applied for the imposition of the streamlined procedure set out in the Patents Court Guide and for a direction for a speedy trial in its claim for the revocation of the UK designation of the same patent as was the subject of German proceedings.


R supplied BlackBerry wireless handheld computers. The defendant Luxembourg company, D, held a patent that it said was infringed by BlackBerry computers.


D commenced infringement proceedings against T-Mobile, which sold BlackBerrys in Germany and in the UK. In Germany, the issues of infringement and validity were determined in separate proceedings before different courts. R had intervened in the German proceedings and intended to commence invalidity proceedings there. R wanted the English court to rule on invalidity before the German court ruled on infringement so that the German infringement proceedings could be stayed or adjourned until after the invalidity proceedings in Germany.


D submitted that the application was premature and that there was no justification for expedition or imposition of the streamlined procedure.


David Kitchin QC, Thomas Hinchcliffe (instructed by Lovells) for the claimant; Guy Burkill QC, James Mellor (instructed by Decherts) for the defendants.


Held, it was a proper exercise of the discretion to impose a streamlined procedure in the instant case. The streamlined procedure set out in the Patents Court Guide was an attempt to implement, in the patent context, the overriding objective of the CPR. Once a party asked for a streamlined procedure, the court should proceed on the basis that such a procedure was appropriate, save in those cases where there was a convincing reason to the contrary.


R had shown on the material before the court that the technology involved in the issue of validity was not complex. The court would direct a two-day timetable for the hearing of the trial with one day's pre-reading for the judge. It should not be necessary to increase that time estimate even if issues of infringement and amendment were introduced by D.


There should be no automatic disclosure and no experiments. The parties were given seven days to agree provisions for suitably limiting the duration of the oral testimony and oral submissions to be made at trial. The trial should be fixed to commence within six months.


The fact that issues of infringement would be determined speedily in Germany was itself a reason why the issue of validity for essentially the same patent should also be dealt with speedily in the UK. That was not a matter of trying to trump the German court, but it would be fairer if R's ability to sell BlackBerrys, and in particular the risk of it being held to have infringed a valid patent, should be determined rapidly rather than slowly. Application granted.






PENOLOGY


Life prisoners - measure of damages - reasonable time - reasons - return to custody - right to liberty and security - importance of giving full and prompt reasons - delay - measure of damages for delay

R (on the application of John Hirst) v (1) Secretary of State for the Home Department (2) Parole Board (2005): QBD (Admin) (Mr Justice Crane): 21 June 2005

The claimant (H), a life prisoner who had been released on licence, sought judicial review of several aspects of his recall to prison.


Having been released on life licence after almost 25 years in prison, H had displayed a number of serious behavioural difficulties, resulting in verbal and written warnings, a notice of eviction from his probation hostel and a police warning. About two months after his release, H had been recalled to prison under section 32(1) of the Crime (Sentences) Act 1997. On arrest, he had been told simply that he was being recalled.


The secretary of state aimed to provide a recalled lifer with a dossier of reasons for recall within three days, but in this case it was delayed. No further information was provided until at least eight days after detention. The dossier was not ready until ten days after detention, and then went astray within the internal post, causing a further delay of 14 days. H submitted that an executive decision to recall and to detain was unlawful because, properly construed, the words in article 5(1)(c) of the European Convention on Human Rights 1950 &150; 'when it is reasonably considered necessary to prevent his committing an offence'&150; caused article 5(3) to become applicable, so that a judicial hearing was required promptly after detention; his right under article 5(2) to prompt reasons for his delivery to custody had not been met.


K Krause (instructed by AS Law) for the claimant; K Grange (instructed by the Treasury Solicitor)for the first defendant. K Stern (instructed by the Treasury Solicitor) for the second defendant.


Held, the scheme under section 32 of the 1997 Act was compatible in principle with article 5 of the convention, since article 5(1)(c) and article 5(3) had to be read together. The latter referred to a forthcoming trial, which did not appear to include a hearing such as that before the parole board, and the former was not designed to cater for the circumstances of this case.


Eight days for the giving of reasons could not possibly be described as prompt and it was not established that the reasons were, in any event, adequate. Accordingly, there had been a breach of article 5(2). Reasons for a recall to custody had to be given, even when they were obvious. Reliance on alleged past knowledge of misbehaviour was a dubious basis for dispensing with the giving of adequate reasons, Fox v United Kingdom (A/182) (1991) 13 EHRR 157 distinguished.


The word 'speedily' in article 5(4) had no fixed definition and was to be determined on a case-by-case basis &150; E v Norway (A/181-A)~ (1994) 17 EHRR 30, Noorkoiv v Secretary of State for the Home Department (2002) EWCA Civ 770, (2002) 1 WLR 3284, and R (on the application of C) v Mental Health Review Tribunal (2001) EWCA Civ 1110, (2002) 1 WLR 176 considered.


There was a breach of article 5(4), to the limited extent that there had been a failure to proceed speedily with the early part of the process by which H could obtain a decision as to whether his recall was justified. A period of 14 days was the fair period that could be regarded as breaching article 5(4).


With regard to the assessment of damages, a finding that there had been a breach of article 5(2) was, on the facts, adequate recompense. In relation to the breach of article 5(4), H's claim amounted to the distress of being ignorant to some extent of the reasons for his return to custody, and to a release date of around two weeks later than it would otherwise have been. On the authorities, a modest award of £1,500 was appropriate. Application granted.






PLANNING


Caravans - committal orders - enforcement notices - green belt - injunctions - mobile homes - travellers - gypsies

South Bedfordshire District Council v Price & ors (2005): QBD (Mr Justice Bean): 23 September 2005

The applicant local authority applied for suspended committal orders against the defendants (P) for breach of an injunction, and P applied to discharge or vary the injunction.


P were members of a large family who were living in mobile homes and caravans on a green-belt site in breach of planning control. After an appeal against an enforcement notice had been dismissed, the local authority had obtained an injunction ordering P to cease residential use of the land, to remove the caravans and mobile homes and other structures from the land and to restore the land to grassland.


James Pereira (instructed by Sharpe Pritchard) for the claimant; Alan Masters (instructed by Bramwell Browne Odedra) for the defendants.


Held, P were in contempt because there had been a deliberate and prolonged failure to comply with the injunction.


The local authority was entitled to a presumption that the injunction had been properly granted unless and until P showed otherwise. The court was not hearing an appeal from the judge and could not go back to the start and consider whether it would have made the injunction in the circumstances, least of all where the original material was not before it. There were no grounds for discharging the injunction on the basis of non-disclosure or otherwise.


The defendants' prospects of obtaining planning permission for the site were remote. To suspend the injunction after P had ignored the enforcement notice for four years and the injunction for ten months would be extraordinary. The fact that the local authority accepted the need to increase sites for travellers in the area in the foreseeable future did not mean that the local authority could not enforce planning control against travellers, where a court order had been obtained on the basis that the injunction should be suspended until alternative provision had been made &150; Mid-Bedfordshire DC v Brown (2004) EWCA Civ 1709, (2005) 1 WLR 1460 applied. P's family circumstances did not justify suspending the injunction.


Cases in which the court would decline to impose a sanction for prolonged and deliberate breach of an injunction would be rare. This case was not one in which no sanction should be imposed. P had not made exhaustive efforts to relocate &150; Guildford BC v Smith (1994) JPL 734 distinguished.


The order in the case of each defendant was committal to prison for 12 months, suspended on terms that the defendant leave the site within two months and that the mandatory orders to restore the site were complied with within a further month. Application granted.