But we settled that! (Brands & IP Newsnotes - Issue 2)
28 March 2016
Parties will understandably often be relieved to sign on the dotted line of that “full and final” settlement agreement. But two decisions of the High Court earlier this year may give pause for thought. What is the practical effect of such a settlement and is it really what the parties want?
A stretch too far?Stretchline, a clothing manufacturer, and H&M, a clothing retailer, resolved a patent infringement dispute by entering into a full and final settlement agreement. When further infringing items came to light Stretchline pursued a claim for breach of contract and patent infringement, seeking an injunction and an account of profits. Things might have unravelled for H&M. But it was Stretchline who came unstuck. First, the Court of Appeal ruled that the settlement agreement had settled all claims in the proceedings, including all claims for patent infringement, meaning any future claim would be for breach of the agreement. Secondly, the High Court ruled that while an injunction and account of profits may be standard remedies in IP infringement claims, they are very much the exception in breach of contract claims. And this was a breach of contract claim. So no injunction and no account, potentially putting Stretchline in a much less favourable position. But at least it had a remedy in damages.
Silentnight…but no relief
Bed and mattress manufacturer, Silentnight, was not so lucky. It failed to convince the Court that it should be entitled to any relief or proceed to a trial in respect of various breaches of a settlement agreement. Although the Court found that competitor, Silent Sleep, had not complied with a number of settlement terms, including failing to assign certain trade mark applications and failing to transfer a domain name, it was not convinced that any serious harm had been suffered. Interim relief was therefore inappropriate and it would be a waste of the Court’s time if the case went to trial.
This article was published in the Brands & IP newsnotes publication - issue 2.
The lesser spotted shape mark (Brands & IP Newsnotes - Issue 2)28 March 2016
A picture says a 1000 words or so the saying goes. So what about a shape? Several recent decisions have underlined the difficulties that can arise in trying to use shapes to protect a brand.
‘Glee’ less than happy after trade mark strife (Brands & IP Newsnotes - Issue 2)28 March 2016
We’re all familiar with the classic trade markdispute. But can you sue for trade markinfringement if the brand using your name is actually more famous than your own? In February, the Court of Appeal said you could.
Trading secrets safely in Europe (Brands & IP Newsnotes - Issue 2)28 March 2016
In December 2015, while most of us were busy wrapping presents and eating mince pies, the representatives of the European Parliament and Council agreed the text of the Trade Secrets Directive.
Stop monkeying around (Brands & IP Newsnotes - Issue 2)28 March 2016
A judge in California has put a stop to all the monkey business surrounding the idea that animals can own copyright, in California at least.
Play those bars again and end up behind… bars (Brands & IP Newsnotes - Issue 2)28 March 2016
The High Court has handed down a custodial sentence of 28 days for breach of an injunction against copyright infringement, albeit suspended for a period of 18 months. Two points rang out.
To register or not to register… that is the question (Brands & IP Newsnotes - Issue 2)28 March 2016
Just because you can register your intellectual property, it doesn’t mean that you should. Sometimes attempts to register can have unintended consequences, as YouTube stars, the Fine Brothers, recently found out.
Kylie v Kylie (Brands & IP Newsnotes - Issue 2)28 March 2016
It isn’t often that trade mark oppositions receive mainstream media attention. Kylie Minogue has bucked that trend by filing an opposition to reality TV star Kylie Jenner’s trade mark application for ‘Kylie’ in the US.