This month we report on registrability of movement marks in Sony Ericsson Mobile Communications AB v OHIM, we look at what constitutes infringement in broadcasting in ITV Broadcasting Ltd & Ots v TV Catch Up Ltd (“TVC”) and we look at a high-profile confidential information case concerning a "super-injunction" in Howard Donald v Adakini Ntuli.

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Decisions of the GC (formerly CFI) and CJ (formerly ECJ)


Case   GC
T-131/09
Farmeco AE Dermokallyntika v OHIM; Allergan Inc.
(28.10.10)
  
Application (and where applicable, earlier mark)  

BOTUMAX
- bleaching preparations, cleaning products, soaps, cosmetics, hair lotions (3)
- pharmaceutical and sanitary preparations for medical purposes, food for babies, plasters, disinfectants, fungicides (5)
- printed matter, instructional and teaching material (except apparatus) (16)


BOTOX
- pharmaceutical preparations for the treatment of neurological disorders, muscle dystonias, smooth muscle disorders, autonomic nerve disorders, hyperhydrosis, headaches, wrinkles, sports injuries, cerebral palsy, spasms, tremors and pain (5)

Comment The GC dismissed the appeal from the BoA’s decision to reject the application under Arts 8(1)(b) and 8(5).

The GC concluded that, although it was not possible to compare the marks conceptually, there were visual and aural similarities between the marks at issue. This, coupled with the earlier marks’ reputation in pharmaceutical preparations intended for the treatment of wrinkles, led the GC to find a likelihood of confusion between the marks under Art 8(1)(b) in respect of ‘pharmaceutical and sanitary preparations for medical purposes’ in Class 5.

Taking into account of the strength of the earlier marks’ reputation, the GC concurred with the BoA’s conclusion that there was a risk that consumers would make the necessary  link between the marks under Art 8(5) if they see the mark applied for on Farmeco’s products, despite some of the goods applied for only exhibiting a low degree of similarity with the goods covered by the earlier marks.

The BoA was correct to conclude that (i) the consumer may be led to think the goods applied for in Classes 3 and 5 were as effective as those covered by the earlier marks or that the goods in Class 16 may contain advice against skin aging and consequently there was a risk of unfair advantage; and (ii) the use of the mark applied for was likely to be detrimental to the distinctive character of the earlier marks because, in particular, the word BOTOX was fanciful and with no inherent meaning.

 

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Case   GC
T-35/08
Codorniu Napa, Inc. v OHIM; Bodegas Ontañón SA
(23.11.10)
Application (and where applicable, earlier mark)  


- wines produced and bottled in Napa Valley (California, USA) (33)


 - alcoholic beverages (except beers) (33)

Comment

The GC dismissed the appeal from the BoA’s decision that there was a likelihood of confusion between the marks under Art 8(1)(b).

The GC disagreed with the BoA’s conclusion that the word elements of the two marks constituted the visual dominant elements, since the figurative elements clearly played a part in determining the image of the marks. However, although the figurative elements were significantly different, the strong similarity between the words ‘arteso’ and ‘artesa’ led the GC to conclude that there was a slight visual similarity between the marks.

Phonetically, there was a strong similarity between the marks; the expression ‘napa valley’ in the mark applied for occupied a secondary place and would be disregarded by the relevant public when pronouncing the mark.

The marks did not have any particular semantic connection to enable consumers to establish a difference or similarity between the two signs.

The GC concluded that consumers of wines usually describe and recognise wine by reference to the verbal element which identifies it, in particular in bars and restaurants, and therefore it was appropriate to attach particular significance to the phonetic similarity.

This, coupled with the identity of the goods at issue, led the GC to conclude that there was a likelihood of confusion between the marks.

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Decisions not yet in English


Case  

 GC
T-404/09
T-405/09

Deutsche Bahn AG v OHIM
(12.11.10)

Application (and where applicable, earlier mark)  

 


(each mark described as “a colour mark consisting of the combination of the colours grey and red”)
- transport by rail of persons and goods (39)

Comment

 The GC upheld the BoA’s decisions that the marks were devoid of any distinctive character in relation to the services applied for under Art 7(1)(b).







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Case  

 GC
T-169/09
Vidieffe Srl v OHIM; Perry Ellis International Group Holdings Ltd
(25.11.10)

Application (and where applicable, earlier mark)  

 GOTHA
- leather and imitations of leather, suitcases, umbrellas, walking sticks (18)
- clothing, shoes, hats (25)


- handbags, backpacks, bags for travel, school bags, suitcases, purses, umbrellas, walking sticks (18)
- clothing, shoes, hats (25)

Comment

 The BoA had found that there was a likelihood of confusion between the marks for all goods except leather and imitations of leather. The GC reversed the BoA’s decision and found that there was no likelihood of confusion between the marks under Art 8(1)(b).

The dominant figurative element in the earlier mark, combined with clear phonetic and conceptual differences, meant that there was no likelihood of confusion between the marks.







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Registrability of movement marks


Sony Ericsson Mobile Communications AB v OHIM (BoA; R-443/2010-2; 23.11.10)


The BoA annulled the examiner’s decision to refuse registration of a movement mark under Articles 4 and 7(1)(a).


Sony Ericsson applied to register a movement mark consisting of a series of 20 stills (reproduced below) for goods and services in Classes 9, 38 and 41.



Sony Ericsson submitted a description to accompany the mark which described the motion as that of trailing ribbon with a liquid-like appearance which flowed around and ultimately into a sphere design. The description also set out the duration of the motion and the timing between stills along with further details of the progression of the motion. The examiner dismissed the application, concluding that the collection of stills were not capable of conveying a tangible movement and the description did not assist greatly in comprehending the movement.


On appeal to the BoA Sony Ericsson submitted, inter alia, the graphic representation of the mark in the form of a flip book of the 20 stills. The BoA concluded that when looking at the representation in that way (which could have been done by the examiner or any interested third party) the progression of the movement became clear.


The BoA went on to hold that, in fact, the movement of the mark was quite clear just from the 20 stills and accompanying description. Therefore the application passed the test under Articles 4 and 7(1)(a) in that a reasonably observant person would be able to understand precisely what the mark consisted of without expending a huge amount of intellectual energy and imagination.


The BoA also made reference to previous movement marks which had been accepted for registration by OHIM and noted that, although examiners are not tied by previous decisions, OHIM should attempt to be consistent in its decision making. Since the number of movement marks applied for was limited, it should not be too difficult for OHIM to be consistent in relation to these marks and therefore considerable significance could be attributed to the registration of the earlier movement marks.


The BoA annulled the decision and remitted the case back to the examiner for further prosecution.









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Comparative advertising and food products


Lidl SNC v Vierzon Distribution SA (CJ; C-159/09; 18.11.10)


Lidl operates a chain of food supermarkets in France. Vierzon Distribution sells everyday consumer goods under the name ‘Leclerc’. Vierzon Distribution placed an advertisement in a local French newspaper which reproduced till receipts listing, using general descriptions, 34 (mainly food) products purchased from Vierzon Distribution and Lidl. The total prices of the products included in the advertisements demonstrated that Vierzon Distribution was cheaper than Lidl. The advertisement also included the slogan ‘Not everybody can be E. Leclerc! Low prices – and the proof is E. Leclerc is still the cheapest’.


Lidl commenced proceedings before the Commercial Court, Bourges claiming, inter alia, infringement of Article L.121-8 of the Consumer Code (the national legislation implementing Article 3a(1) of Directive 84/450 concerning misleading and comparative advertising). Lidl submitted that the products selected by Vierzon Distribution were not comparable, since their qualitative and quantitative differences meant that they did not meet the same needs.


The court stayed proceedings and made a reference to the CJ, asking whether Articles 3a(1)(a) to (c) should be interpreted as meaning that it is unlawful to engage in comparative advertising on the basis of the price of products meeting the same needs or intended purpose (that is to say, products which are sufficiently interchangeable) on the sole ground that, in regard to food products, the extent to which consumers would like to eat those products, or the pleasure of consuming them, is completely different according to the conditions and the place of production, the ingredients used and the experience of the producer. 


The CJ firstly noted that the conditions listed in Article 3a(1) must be interpreted in the sense most favourable to permitting advertising which objectively compare the characteristics of goods/services while ensuring that such advertising is not used anti-competitively and unfairly or in a manner which affects the interests of consumers.


Article 3a(1)(b)
The CJ concluded that Article 3a(1)(b) should be interpreted as meaning that the fact alone that food products differ in terms of the extent to which consumers would like to eat them and the pleasure to be derived from consuming them (by reference to the factors set out in the question referred) cannot preclude the possibility that the products compared meet the same needs or are intended for the same purpose as required under Article 3a(1)(b), that is to say that they display a sufficient degree of inter changeability.


In reaching this conclusion, the CJ noted that:


(i) when considering whether a comparison can be made lawfully for food products which are not identical and which inevitably vary as to the extent to which consumers like to eat them, unlike Article 3a(1)(c), Article 3a(1)(b) does not deal with or prejudge the angle from which the comparison may lawfully be made or the characteristics concerned to which the comparative advertising may refer. Earlier judgments involving this Article were delivered in cases involving advertising in relation to food products;


(ii) the key element of comparative advertising is the identification of a ‘competitor’ of the advertiser or the goods/services. Whether undertakings are competing depends upon the substitutable nature of the goods/services. In order to determine whether there is a possibility of substitution, an individual and specific assessment of the products concerned is necessary. Such an assessment falls within the jurisdiction of the national courts; and


(iii) there was nothing in Article 3a(1)(b) to prohibit comparative advertisements of food products. A decision that two food products cannot be regarded as comparable unless they are identical would rule out the possibility of comparative advertising for an important category of consumer goods and would run counter to settled case-law that the conditions of comparative advertising must be interpreted in the sense most favourable to it.


Article 3a(1)(a)
The CJ concluded that Article 3a(1)(a) should be interpreted as meaning that an advertisement may be misleading if, in particular, it is found that:


(i) in the light of all the relevant circumstances of the particular case, in particular the information contained in or omitted from the advertisement, that the decision to buy by a significant number of consumers may be made in the mistaken belief that the selection of goods made by the advertiser is representative of the general level of his prices as compared with those charged by his competitor and that such consumers will therefore make savings of the kind claimed by the advertisement by regularly buying their everyday consumer goods from the advertiser rather than the competitor, or in the mistaken belief that all of the advertiser’s products are cheaper than those of his competitor; or


(ii) for the purposes of a comparison based solely on price, food products were selected which, nevertheless, have different features capable of significantly affecting the average consumer’s choice, without such differences being apparent from the advertising concerned.


Article 3a(1)(c)
The CJ limited its ruling under this Article to the question of the requirement of verifiability and held that in the case of an advertisement which compares the prices of two selections of goods, it must be possible to identify the goods in question on the basis of information contained in the advertisement. It was for the referring court to verify whether the advertisement at issue was sufficiently clear to enable the consumer to identify the products for the purpose of checking the accuracy of the prices shown in the advertisement.



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Refusal of an application based on an earlier mark registered for limited goods should have been allowed save in respect of those limited goods


Giorgio Armani SpA v Sunrich Clothing Ltd* (Mann J; [2010] EWHC 2939 (Ch); 16.11.10)


Armani succeeded in part in its appeal from the Hearing Officer’s decision to reject its application to extend the protection of its International Registration of the word mark AX to the UK for all goods in Class 25. The application was refused under Section 5(2)(b) on the basis of Sunrich’s earlier AXE mark registered for men’s and boy’s clothing in Class 25.


Mann J upheld the finding of the Hearing Officer in relation to the substantive merits of the opposition. The Hearing Officer had been right to decide that AX was visually and aurally similar to AXE and that the goods were identical, such that there was a likelihood of confusion. Furthermore, the Hearing Officer had properly considered the conceptual similarity of the marks and was therefore entitled to conclude that the marks had similar conceptual similarity (that of an axe as a hand tool). The Judge found that there was insufficient evidence before the Hearing Officer to demonstrate that the public would perceive AX as an acronym.


However, the Hearing Officer had not taken into account the limited scope of the registration for the earlier mark, which was not registered for all goods in Class 25.  It was clear from Article 13 that where grounds for refusal of registration exist for only some of the goods applied for, it is only those goods which should be refused. Accordingly, Armani’s application should have been allowed in relation to all goods in Class 25 save for clothing for men and boys.








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COPYRIGHT AND DATABASE RIGHT


Partial assignment of copyright not required to be for a fixed, certain and known term


Crosstown Music Company 1, LLC v Rive Droite Music Ltd, Mark Taylor & Paul Barry*  (Mummery LJ, Morgan J and Sir Paul Kennedy; [2010] EWCA Civ 1222; 02.11.10)


Crosstown did not succeed in its appeal from the High Court’s decision ([2009] EWCA 600 (Ch), reported in the CIPA Journal, April 2009) that Mark Taylor’s and Paul Barry’s (the “Writers”) copyright had automatically reverted to them in accordance with a term in the agreements assigning the UK and foreign copyright in their songs to Rive Droite (who subsequently sold its rights to Crosstown.) The Judge drew no distinction between the UK and foreign copyrights.
 
The relevant term provided that if Rive Droite were in material breach of the agreements, which it failed to remedy upon receipt of a “cure notice” from the Writer, “all rights assigned to [Rive Droite] shall forthwith revert to the Writer”.  The Writers served cure notices on Rive Droite, copied to Crosstown and Crosstown sought a declaration that the copyright had not reverted to the Writers.


Automatic Reversion
Crosstown appealed on the basis that it was not possible at common law or under Section 90(2)(b) CPDA (which permits copyright to be assigned for part of the copyright term) to make a valid assignment of copyright for a period that is not fixed, certain or known at the date of the assignment. Accordingly, the automatic reversion term was merely a contractual obligation to re-assign the copyright.


Mummery LJ (giving the lead judgment) rejected Crosstown’s submission and held that the relevant term was couched in the language of automatic vesting rather than of a future covenant to re-assign. Furthermore, there was nothing in the wording of Section 90(2)(b) which required a partial assignment of copyright to be for a fixed, certain and known term, nor was there any support in the authorities or relevant considerations of principle or policy. Morgan J added that as long as there was a written assignment expressed in language which satisfied the test of certainty in the general law of contract, that would be enough to meet the requirements of Section 90(2)(b). It was clear that Section 90(2)(b) contemplated a legal process whereby, in certain circumstances, the assignee of the copyright would be divested of the copyright, which would be re-vested in the assignor without any further steps being taken, including without the execution of a written re-assignment.


Justiciability of foreign copyright disputes
Crosstown also contended that the issue of foreign copyright subsistence, of which ownership was a feature, was not justiciable by the English Courts following the Court of Appeal decision in Lucasfilm ([2009] EWCA Civ 1328, reported in the CIPA Journal, January 2010). Accordingly, Mann J should not have granted a declaration covering title to the foreign copyright.


Mummery LJ held that Lucasfilm did not go that far. Where there was a contract that purported to deal with universal copyright and contained English governing law and exclusive jurisdiction provisions, the contract which was binding on the question of the appropriate jurisdiction and applicable law as between the parties and their successors in title. Accordingly, Mann J was entitled to make a declaration as to ownership of foreign copyright. 


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Copyright can subsist in newspaper headlines


The Newspaper Licensing Agency Ltd (“NLA”) & Ots v Meltwater Holding BV & Ots (Proudman J; [2010] EWHC 3099 (Ch); 26.11.10)


The NLA, an organisation which manages the intellectual property rights of its members by licensing and recovering fees in relation to those members’ newspaper publications, was successful in its claim that end users (who were represented in the action) of Meltwater’s online news monitoring service infringed its members’ copyright. As such, those end users required an end-user licence from the NLA.


Meltwater provided an online news monitoring service to its customers. In order to provide this service, Meltwater monitored a wide range of news websites and used ‘spider’ programs to ‘scrape’ the content, which was then indexed. A customer would then select certain search terms and Meltwater would provide a report of relevant content called ‘Meltwater News’. Each Meltwater News report would contain the following three items:


(i) the headline of the article which also served as a hyperlink to the article as it appeared on the publisher’s website;


(ii) the opening words of the article; and


(iii) an extract from the article containing the search term and the words before and after it to give the reader context.


During the case, Meltwater entered into a licence with the NLA to allow it to provide its media monitoring activities. The issue at trial was therefore whether the end-users required a licence from the NLA to receive and use Meltwater News. The NLA submitted that by receiving and reading Meltwater News, and by clicking on the hyperlink, the end user was making an unauthorised copy of the copyright works contained within Meltwater News. Furthermore, where the end-user forwarded Meltwater News to its own customers, this was an unauthorised distribution of a copy of the work to the public.


Proudman J held that some of the headlines were capable of being independent literary works and so protected by copyright. The Judge applied Infopaq (C-5/08, reported in the CIPA Journal, August 2009) which was concerned with the copyright status of extracts from newspaper articles. In Infopaq, the ECJ (now CJ) held that there should be no distinction between the part and the whole, provided that the part contained ‘elements which are the expression of the intellectual creation of the author’. As certain headlines involved considerable skill in devising they fell within the Infopaq test and copyright subsisted in them as independent works. Those headlines which did not involve the requisite skill did not qualify for separate copyright protection but were nevertheless protected as part of the whole article.


Also following Infopaq, Proudman J held that the text extracts could constitute a substantial part of the articles for the purposes of copyright infringement provided that the extract expressed the author’s intellectual creation. In most cases, the Judge found that the extracts were not merely isolated words without meaning but rather provided the tone of the article and served to draw the reader into the work as a whole. Accordingly, those extracts were protected by copyright.


Having found that certain headlines and extracts were capable of being protected by copyright, Proudman J held that there was prima facie infringement when an end user received an email containing Meltwater News and when the end user viewed it on screen, as copies of the works were made on the recipient’s computer. There was also an infringement when an end user clicked on the hyperlink, as a copy of the article from the publisher’s website was made on the end user’s computer. The ‘temporary copying’ defence did not apply as the copies were not incidental or transient. The forwarding of the link also infringed, as a further copy was being made and distributed to the public. Proudman J rejected the end users’ submission that, as the licence between the NLA and Meltwater allowed Meltwater to provide the service, there was an implied licence for the end-users to receive those services.


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Section 20 CPDA does not require the infringing transmission to be a “broadcast”


ITV Broadcasting Ltd & Ots v TV Catch Up Ltd (“TVC”)* (Kitchin J; [2010] EWHC 303 (Ch); 25.11.10)


Kitchin J dismissed TVC’s application for summary judgment on ITV’s claim that TVC had infringed the copyright in its broadcasts under Section 20 CPDA.


TVC operated a website through which the public could watch live television by selecting a channel and being taken to a new page on which TVC provided a stream of the programme being broadcast on that channel at that time.  ITV accepted that TVC’s transmissions were not broadcasts within the meaning of Section 6, and were not made available to the public in such a way that the public could access them at a place and time chosen by them. Nevertheless, ITV contended, TVC’s transmissions did involve communication to the public by electronic transmission for the purposes of Section 20.


TVC contended that Section 20 required that the relevant transmission itself be a broadcast, and therefore have the characteristics of a broadcast, namely transmission for simultaneous reception by multiple members of the public (“one-to-many”).  As TVC’s broadcast was “one-to-one”, it did not have the necessary characteristics to infringe under Section 20.


Kitchin J held that TVC’s contention confused the protected work and the restricted act. The protected work, the broadcast, was the transmission of visual images, sounds and other information for reception by members of the public. The restricted act under Section 20 was the communication to the public by electronic transmission of all those images, sounds and other information. Section 20 was intended to implement Article 3 of the Information Society Directive (Directive 2001/29/EC) and accordingly had to be interpreted broadly so as to cover all communication to members of the public who were not present at the place where the communication originated. There was no requirement that the copy must itself be a broadcast.


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Place where act of “Making Available” occurs


Football Dataco Ltd & Ots (“FDC”) v Sportradar GmbH & Anr (together “Sportradar”)* (Floyd J; [2010] EWHC 2911 (Ch); 17.11.10)


In a challenge to jurisdiction by Sportradar, Floyd J held that the English Court had jurisdiction solely in respect of whether Sportradar had authorised, or was jointly liable for, the acts of reproduction, extraction and re-utilisation of a substantial part of FDC’s Football Live database. In reaching this conclusion, Floyd J held that “making available to the public” by online transmission was committed, and committed only, where the transmission took place.


Background
FDC exploited data relating to English and Scottish football matches. This data, which included goals, goal scorers, red and yellow cards, penalties and substitutions was compiled in a database known as “Football Live”. Sportradar provided live scores, results and other statistics relating to football and other sports to customers via the internet (“Sports Live Data”). The Sports Live Data was stored on web servers in Germany and Austria but could be accessed via links from elsewhere, including the UK.  Sportradar’s customers included Bet365 and Stan James, both of whom provide online betting services to customers located in the UK.


FDC issued proceedings in April 2010 alleging infringement of UK copyright and database right by Sportradar. Sportradar challenged the jurisdiction of the English Court to hear the action on the basis that they were not committing any acts of infringement in the UK and were domiciled in Germany and Switzerland. In July 2010, Sportradar issued proceedings in Germany seeking a declaration that its activities did not infringe FDC’s intellectual property rights.


Jurisdiction
Jurisdiction was governed by the Judgments Regulation in relation to the German company and the Lugano Convention in relation to the Swiss company. The Judge was first required to examine what claims were made in the UK Particulars of Claim since the German Court would be first seized of any claim of which the English Court was not seized. Accordingly, the Judge held that the Particulars of Claim contained claims for authorising and joint liability for copyright infringement and database right infringement. The Court was then required to decide whether FDC could show a "good arguable case" for each claim.


Copyright
Floyd J found that there was no primary infringement by reproduction of Football Live by Sportradar but there was a good arguable case for authorisation by Sportradar of copyright infringement by its users.


Database right
Floyd J found that although Sportradar had not itself extracted the data in the UK, at least some of its customers’ downloading could be described as systemic and repeated extraction and as such FDC had a good arguable case that Sportradar was authorising its customers’ acts of extraction.


With respect to the act of re-utilisation, the Judge took the view that the definition in Article 7(2)(b) of the Database Directive raised a question of law as to where the act of “making available” occurred. The answer to this question, the Judge held, was that the act of making available to the public by online transmission was committed and committed only where the transmission took place.  Whilst the placing of data on a server in one country could make that data available to the public of another country, that did not mean that the party who had made the data available had committed the act of making available by transmission in the country of reception. The better construction of the provisions was that the act only occurred in the country of transmission. Accordingly, Sportradar’s “making available over the internet” took place in Austria and Germany, where its servers were based. Thus, Sportradar had not committed acts of re-utilisation in the UK. There was, however, a good arguable case that Sportradar had authorised, or was jointly liable with, its customer’s (Bet 365’s), acts of re-utilisation.


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CONFIDENTIAL INFORMATION


Howard Donald v Adakini Ntuli* (Master of the Rolls, Maurice Kay and Sedley LJJ; [2010] EWCA Civ 1276; 16.11.10)


This was an appeal from a decision of Eady J to grant an anonymised claimant (Mr Howard) a “super-injunction” restraining the anonymised defendant (Ms Ntuli) from doing ‘specified but un-publishable things’ and restraining publication of the fact that the injunction had been sought and obtained. The Court of Appeal dismissed Miss Ntuli’s appeal and Mr Donald’s cross-appeal in relation to the substantive injunction but allowed Ms Ntuli’s appeal for the order for anonymisation of the parties and the non-disclosure of the application for and existence of the injunction to be discharged.


Background
Mr Donald is a member of the band “Take That”. Between 2000 and 2009, Mr Donald had a relationship with Ms Ntuli. In March 2010, Ms Ntuli sent Mr Donald a text stating, “Why shud I continue 2 suffer financially 4 the sake of loyalty when selling my story will sort my life out?”. Ms Ntuli then entered into negotiations with the News of the World. Mr Donald sought a super-injunction restraining the disclosure of inter alia “any intimate, personal or sexually explicit details about the relationship … including any facts of a sexual nature”.


“Other information”
Whilst accepting that some form of restraint was appropriate in relation to sexually explicit details, Ms Ntuli contended that Eady J was wrong to grant an injunction prohibiting the disclosure of other types of information. Ms Ntuli contended that the Judge had erred by assuming that Mr Donald was entitled to a reasonable expectation of privacy in relation to such “other information”, rather than evaluating whether this was in fact the case. Ms Ntuli submitted that Mr Donald did not have a reasonable expectation of privacy for reasons including that: he was a public figure whose other relationships had received media coverage; he had previously been open about his sexual activity; and he had never sought to extract a promise of non-disclosure from Ms Ntuli. Further, Ms Ntuli’s “need” to tell her story was the exercise of her Article 8 ECHR right of self-development and autonomy and her Article 10 right to freedom of expression. Maurice Kay LJ (giving the lead judgment), did not accept that Eady J had failed to have regard to any of these matters and accordingly held that the Judge had come to the correct conclusion on “other information”.


The terms of the injunction
Ms Ntuli contended that the meaning of the word “intimate” was unclear and thus the injunction was not sufficiently clear and precise. Maurice Kay LJ accepted that although there was overlap between the words “intimate, personal and sexually explicit”, that did not necessarily establish ambiguity or a lack of clarity. Nor did the Lord Justice consider that the word “intimate” had an essentially sexual connotation; it was clear from paragraph 17 of Eady J’s judgment that the intended protection extended to “any facts communicated by the Defendant of a sexual nature or other intimate personal details about their past relationship.” Thus, the terms of the injunction did not lack clarity.


Cross-appeal
Mr Donald contended that the injunction should have restrained disclosure of the existence of the relationship pending trial. Eady J’s refusal to do so was founded on Section 12(3) Human Rights Act 1998 and on Lord Nicholls’s guidance on the approach to Section 12(3) in Cream Holdings Ltd v Banerjee ([2004] UKHL 44), which provides that the Court should not grant an interim injunction under Section 12(3) unless it is satisfied that the applicant will probably (more likely than not) succeed at trial unless, exceptionally, the case is one where a lesser degree of likelihood will suffice for example where the adverse consequences of disclosure are grave.  Mr Donald contended that this was such an exceptional case since at no time since the relationship ended had there been reference to it in the media. However, Maurice Kay LJ considered that disclosure of the mere fact of the past relationship did not carry with it particularly grave consequences and dismissed Mr Donald’s cross-appeal.


Maintenance of the super-injunction
Maurice Kay LJ held that although Mr Donald was entitled to expect that the Court would adopt procedures to ensure that any ultimate vindication of his Article 8 rights were not undermined by the way in which the Court had processed the interim applications and the trial itself, the principle of open justice required that any restrictions were the least that could be imposed. In this case, the Lord Justice was not persuaded that restrictions as to the fact of the proceedings or anonymity of the parties was necessary as there was nothing in the judgment that was significantly invasive of Mr Donald’s private or family life. Accordingly, Ms Ntuli’s appeal in relation to the super-injunction and anonymity succeeded.


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Katharine Stephens, Zoe Fuller and Gina Brueton


Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Trevor Cook, Nick Boydell, Tom Snaith, Victoria Poyer and Claire Barker.


The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the CJ’s decision can be found at http://curia.europa.eu/jcms/jcms/j_6/home

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